Community Trade Mark Regulation (EC) No 207/2009: A Commentary 9781472561770, 9781849463621

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Foreword The Community Trade Mark (CTM) is now widely recognised as a very important tool helping entrepreneurs both large and small to gain full access to the European single market while protecting their IP rights. When OHIM was founded two decades ago, few would have predicted the popularity that the CTM enjoys today. Right from the start demand exceeded expectations and as the Office and the CTM celebrate their 20th year, the statistics speak for themselves. Total applications from CTMs now top 1.3 million, and the Office has in the region of 350,000 users in almost 200 countries. Demand has continued to grow even through the current financial crisis. But, in spite of the success and economic importance of the CTM, to date there is only a small body of literature dealing with this EU-level right which is aimed at the needs of IP professionals. Under the editorship of Professor Hasselblatt, the current book, and a companion volume on the Registered Community Design (RCD) set out to address this gap in the market by providing comprehensive pan-European commentaries in English, covering the entire text of the relevant legislation for Community trade marks and designs, ‘provision by provision’. The volume on the CTM has been prepared against a background of considerable change in Intellectual Property Rights in the EU as the European Commission, Council and Parliament finalise the details of the new Trade Mark Package, which seeks to modernise and further harmonise the Regulation and the Directive. These changes also reflect the increasingly international nature of business and the high value put by industry on IP rights. While two-thirds of CTM applications come from within the EU, one-third of them are made by companies from elsewhere, eager to trade within the single market. The value of IP rights was confirmed by a recent study on the economic contribution of IPR-intensive industry, carried out by OHIM through the European Observatory on Infringements of Intellectual Property Rights, in partnership with the European Patent Office, and with the help of a number of other authorities. The study, which for trade mark data examined CTMs and International Registrations, shows that 39 % of total economic activity in the EU – that is E 4.7 trillion of GDP ($6.3 trillion) – is provided directly by industries that use IP rights intensively. Approximately 26 % of all employment in the EU directly depends on the IPRintensive industries and another 9 % of jobs rely indirectly on these industries and they also account for 90 % of external trade. The study shows a strong inter-dependence of IP rights, since they are often used in combination, but trade marks emerge as being the IP right that is most relied upon. The CTM, and its companion design right, the RCD, along with the Unregistered Community Design, are part of a two-tier system of trade marks and design rights. Consequently, OHIM works in close partnership with National IP Offices to provide a choice of national or EU-wide rights to entrepreneurs, depending on their business needs. This relationship has been reinforced by the success of the European Trade Mark and Design Network, which is building shared IT tools to modernise the trade mark and design system, and working to converge practices. Against this background, it is refreshing to see the increased interest in providing detailed analysis of the legislation underpinning these important IP rights. V

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Foreword Professor Hasselblatt is a well-known and highly respected figure in the IP world. A partner in the Cologne office of CMS Hasche Sigle, he is also adjunct professor at both the McGeorge School of Law, Sacramento, as well as the Chicago-Kent College of Law, and he is a member of GRUR’s expert committee for trade mark and unfair competition law. In addition to authoring a number of commentaries personally, Professor Hasselblatt has assembled for both volumes an impressive list of co-authors including leading figures in European Intellectual Property law drawn from a wide spectrum of law firms, faculties and authorities. The commentaries are written ‘by practitioners for practitioners’, and as such are a very welcome and useful addition to the canon of literature on IP, deserving a place on the bookshelf of any professional or student interested in the Community trade mark and design system. I commend him and his fellow authors for the scale and ambition of the work and am particularly pleased to see that the intention is to update both volumes regularly to keep pace with changes in legislation and practice. Anto´nio Campinos President, OHIM

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Preface The international market for books in the field of intellectual property is largely saturated. There is, however, a noticeable void in the area of pan-European commentaries in the English language on both the Community Trade Mark Regulation (CTMR) and the Community Design Regulation (CDR). In fact, the low density of the available English language literature is in striking contrast to the commercial importance of the Community trade mark and the Community design. The present Commentary and the parallel work on the CDR aim to make a contribution to filling this gap. This Commentary has been written by ‘practitioners for practitioners’, with a focal point on the application, registration and enforcement practice regarding Community Trade Marks. The authors of this work come from all walks of life and are all true trade mark experts; the band of authors encompasses practising lawyers, legal scholars, judges and OHIM officials. Suffice to say that the Commentary reflects the personal views of the authors and should not be attributed to their respective law firms and clients or particular cases. In the case of OHIM agents and officials, the views and opinions expressed do not necessarily reflect those of the Office. Instead of reflecting the legal conception of one or a few Member States, the Commentary endeavours to interpret the CTMR from a European perspective, focusing on the plethora of decisions rendered by OHIM, the GC and the CJ, supplemented by important decisions handed down by the Community Trade Mark Courts, namely where such decisions were rendered in ‘landmark cases’. The format corresponds to that of a ‘traditional’ German commentary, dealing with the entire text of the CTMR on an article by article basis. As far as possible, the commentaries on the individual articles are for the most part structured identically so as to enhance the user-friendliness of the work. In addition, by way of cross references, the reader’s attention is called to systematics not only in the CTMR, but also to similarities or differences in terms of the CDR. Where appropriate, the authors explain the practical implications of the provisions contained in the CTMIR and the CTMFR. The CTMR commentary under A. obviously constitutes the main part of the present work. However, the CTMR does not regulate all of the proprietor’s rights but limits itself to the right to injunctive relief and to the claim for reasonable compensation under Article 9 (3) CTMR. The Regulation remains silent about all other claims. Under Art. 101 CTMR, the courts are to apply their national law on all matters not covered by the CTMR. This holds true, amongst others, to many remedies in infringement actions. Therefore, in order to achieve the quite ambitious goal of a ‘unitary character’ throughout the EU, it is of paramount importance to establish and maintain uniform standards for the enforcement of the CTMR in all EU Member States. At the same time, it has to be ensured that, as far as it is possible, these standards will be uniformly applied by the courts. In this respect, the Enforcement Directive (2004/48/EC) has proven to be quite valuable, as it provides for a harmonized body of law. As it is crucial for the proprietors of CTM rights to be familiar with said legal framework, under B. this Commentary deals with those measures and remedies that are not regulated in the CTMR. Furthermore, under C. the Commentary includes a section explaining the enforcement of intellectual property rights under the national laws in each of the 28 Member States. This entails the assertion of the proprietors’ IP rights out of court as well as in litigation in summary and main proceedings. All of these ‘country reports’ are written by experts from the respective EU jurisdiction and follow a uniform structure. VII

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Preface The Commentary is rounded off by supplementary rules, such as implementing regulations and examination guidelines under D., followed by a Table of Cases under E., reflecting the decisions cited throughout this Commentary. Most recently, the Commission’s reform plans have triggered lively discussions, which are also dealt with in this Commentary. Certainly it is safe to say that, all in all, the CTMR has stood the test of time. Even after some 20 years its foundations remain perfectly valid. Nonetheless, it appears to be time to adapt the current system to the technological, commercial and political developments that have taken place over the past 25 years. Therefore, the Commission rightfully deems it necessary to modernise the EU trade mark system by making it more effective, efficient and consistent. The Commission submitted far-reaching reform proposals on 27 March 2013, which are aimed at a well-targeted modernization rather than a major overhaul of the current regime. At the time of printing the present Commentary, it could not be foreseen when and to what extent the proposals for a revision of the CTMR and a recast of the TMDir – seen by the Commission as one package – were going to mature into legal force. Owing to its importance, the Commission’s reform efforts are discussed in detail in the present Commentary under Art. 1 CTMR mn. 42–60; moreover, individual aspects of the 27 March 2013 reform proposals are examined in the comments on the provisions concerned. The authors, the publisher and the editor would be very appreciative of readers’ comments and suggestions. Please send any feedback and criticism to [email protected]. Gordian N. Hasselblatt Cologne, February 2015

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List of Authors Vladimir Anohin, Latvian and European Patent Attorney, Agency TRIA ROBIT, Riga Emmanuel Baud, Avocat a` la Cour, Cabinet Jones Day, Paris

Latvia

Michel Be´jot, Docteur en Droit, Avocat a` la Cour, Bernard Hertz Be´jot, Paris

Art. 45; France

Anne Bekema, Advocaat, Houthoff Buruma, Amsterdam

Artt. 13, 110 and 111 (together with Wolter Wefers Bettink)

Matthias Berger, LL.M. (Golden Gate University, San Francisco), Rechtsanwalt, Fieldfisher, Hamburg

Art. 81

Wolter Wefers Bettink, Advocaat, Houthoff Buruma, Amsterdam

Artt. 13, 110 and 111 (together with Anne Bekema)

Alexandra von Bismarck, Prof., Dr., Rechtsanwa¨ltin, Fieldfisher, Hamburg, Professorin, German Graduate School of Management & Law, Heilbronn He´loı¨se Bock, Avocat a` la Cour, Arendt & Medernach, Luxembourg

Artt. 40–42 (together with Sven Jacobs)

Rudolf Bo¨ckenholt, Dr., LL.M., Rechtsanwalt, BOEHMERT & BOEHMERT, Bremen

Artt. 75–80

Thies Bo¨sling, Dr., LL.M. (San Diego), Rechtsanwalt, Harte-Bavendamm, Hamburg

Artt. 145–161

Artt. 11, 18 (together with Edouard Fortunet)

Luxembourg

Andrej Bukovnik, Lawyer, PETOSEVIC, Ljubljana

Slovenia

Louise Carey, Solicitor and Trade Mark Attorney, Tomkins & Co., Dublin

Ireland

Claus Barrett Christiansen, LL.M. (Kings College London) Lawyer, BechBruun, Copenhagen/Aarhus

Art. 109; Denmark

Lee Curtis, Trade Mark Attorney, HGF Limited, Manchester

Artt. 10; 14

Magnus Dahlman, LL.M. (University of Lund), Advokat, Setterwalls Advokatbyrå, Malmo¨

Sweden

Frank Dittschar, Dr., Rechtsanwalt, Kapellmann & Partner, Du¨sseldorf

Artt. 36, 37 (together with Andrea LensingKramer)

Julia Do¨nch, M.A., Rechtsanwa¨ltin, BDO Legal, Hamburg

Germany

Andreas Ebert-Weidenfeller, Dr., Rechtsanwalt, Meissner Bolte & Partner, Bremen

Artt. 12; 112–114

Egon Engin-Deniz, Dr., Rechtsanwalt, CMS Reich-Rohrwig Hainz, Vienna Edouard Fortunet, Avocat a` la Cour, Cabinet Jones Day, Paris

Artt. 82–84; Austria

Blas Alberto Gonzalez Navarro, Abogado, Cuatrecasas, Gonçalves, Pereira, Madrid

Spain

Simon Gray, BBS, DipLS, MITMA, Trade Mark Attorney, Tomkins & Co., Dublin

Artt. 46–49

Antje Gruneberg, Dr., LL.M. (Dresden/London), Rechtsanwa¨ltin, CMS Hasche Sigle, Du¨sseldorf

Artt. 29–35 (together with Thomas Manderla)

Steffen Hagen, Advocaat, VanEps Kunneman VanDoorne, Oranjestad

Artt. 38, 39

Alexis Hallemans, LL.M. Eur. (Saarbru¨cken), LL.M. (Brussels), Advocaat, CMS DeBacker, Antwerp

Artt. 163–166

Artt. 11, 18 (together with Emmanuel Baud)

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List of Authors Gordian N. Hasselblatt, Prof., Dr., LL.M. (McGeorge School of Law, Sacramento), Rechtsanwalt, Professor of Law University of the Pacific, Professor of Law Chicago-Kent College of Law, CMS Hasche Sigle, Cologne ˇ KA ZELENY´ Michal Havlı´k, Dr., Advokat, Associated Law Offices VSˇETEC ˇ ´IK KALENSKY´ and Partners, Praha SˇVORC

Artt. 1; 3; 6, 7

Tom Heremans, LL.M. (UCLA), Advocaat, CMS DeBacker, Brussels

Artt. 50, 51; 162; 167; Belgium

Sven Jacobs, Rechtsanwalt, Norton Rose Fulbright, Frankfurt

Artt. 40–42 (together with Alexandra von Bismarck)

Andrea Jaeger-Lenz, Dr., Rechtsanwa¨ltin, Harte Bavendamm, Hamburg

Art. 8 (1)–(4)

Philipp von Kapff, DESS (Lyon), Member of the Boards of Appeal, OHIM, Alicante

Artt. 138–144

Urmas Kauler, Lawyer, Patendibu¨roo TURVAJA, Tallinn David Kipping, Dr., LL.M. (Cologne/Paris), Maıˆtre en droit (Universite´ Paris I – Panthe´on-Sorbonne), Rechtsanwalt, CMS Hasche Sigle, Cologne

Czech Republic

Estonia Artt. 25–28

Mariusz Kondrat, Ph.D., Rzecznik Patentowy, Adwokat, KONDRAT & Partners, Warsaw Peter Kruzˇliak, Mgr., Advoka´t, BRICHTA & PARTNERS, Bratislava ´ ron La´szlo´, Dr., U ¨ gyve´d, Oppenheim U ¨ gyve´di Iroda, Budapest A

Poland

Andrea Lensing-Kramer, Dr., Rechtsanwa¨ltin, Freshfields Bruckhaus Deringer, Du¨sseldorf

Artt. 36, 37 (together with Frank Dittschar)

Manuel Lopes Rocha, Lawyer, PLMJ, Lisbon

Portugal

Inga Lukauskiene˙, Advokate˙, METIDA Law Firm of Reda Zaboliene, Vilnius

Art. 44, Lithuania (together with Reda Zˇaboliene˙)

Thomas Manderla, Dr., CMS Hasche Sigle, Du¨sseldorf

Artt. 29–35 (together with Antje Gruneberg)

Ruxandra Manea, Legal Assistant in 5th Board of Appeal, OHIM, Alicante

Artt. 2; 124–135

Mary-Rose McGuire, Prof., Dr., M. Jur. (Go¨ttingen) University of Mannheim, Mannheim

Artt. 16, 17; 19–24

Carsten Menebro¨cker, Dr., LL.M. (NYU, New York), Rechtsanwalt, CMS Hasche Sigle, Cologne

Artt. 94–99; Artt. 100– 103 (together with Sabine Stier)

Max W. Mosing, Mag., Dr., LL.M. (Vienna), LL.M. (Strathclyde), Rechtsanwalt, GEISTWERT Rechtsanwa¨lte, Vienna

Artt. 85, 86

Iliana Muhibian, Trade Mark and Design Attorney, J. Varbanov & Partners, Sofia

Bulgaria (together with Julian Varbanov)

Axel Nordemann, Prof., Dr., Rechtsanwalt, Honorary Professor at the University of Konstanz, Boehmert & Boehmert, Berlin Kim Parviainen, LL.M. (Helsinki), Lawyer, Castre´n Snellman Attorneys Ltd, Helsinki

Artt. 15; 66–74

Tanja Rajic, LL.M. (The John Marshall Law School, Chicago, IL), Lawyer, PETOSEVIC, Zagreb

Croatia

Luigi A. Sansone, Dr., LL.B. (Hons.), LL.D., Advocate, SALOMONE SANSONE, Valletta

Malta (together with Francesca Warrington)

Grigoris Sarlidis, LL.M. (King’s College London, London), L.P.C. (The College of Law, London), Advocate, Pamboridis, Nicosia

Cyprus

Gregor Schneider, Litigator, OHIM, Alicante

Artt. 4; 136, 137

Tom Scourfield, Solicitor Advocate, CMS Cameron McKenna, London

Artt. 92, 93; United Kingdom

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Slovakia Hungary

Artt. 58–64; Finland

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List of Authors Ewa Skrzydło-Tefelska, Dr. (hab.), University Maria Curie-Skłodowska, Lublin, radca prawny (legal advisor) Sołtysin´ski Kawecki & Szle˛zak, Warsaw

Art. 8 (5); Art. 9 (together with Mateusz Zˇuk)

Dirk Smielick, Dr., Rechtsanwalt, CMS Hasche Sigle, Cologne

Art. 5

Dimitris Spiliotis, Lawyer, Bahas Gramatidis & Partners, Athens

Greece

Gabriela Staber, Dr., LL.M. (King’s College, London), LL.M. (Suffolk University, Boston), Rechtsanwa¨ltin, Attorney at law (MA, NY), CMS Reich-Rohrwig Hainz, Vienna

Artt. 87–91

Sabine Stamm, LL.B., Rechtsanwa¨ltin, Odenthal

Artt. 115–123

Sabine Stier, Rechtsanwa¨ltin, CMS Hasche Sigle, Cologne

Artt. 100–103 (together with Carsten Menebro¨cker); Artt. 104–108

Tankred Thiem, Rechtsanwalt & Avvocato, LGV Avvocati, Milan

Italy

Valeska To¨belmann, LL.M. (Dresden/Exeter), Rechtsanwa¨ltin, CMS Hasche Sigle, Cologne

Art. 65; Enf. Dir.

Julian Varbanov, Lawyer, J. Varbanov & Partners, Sofia

Bulgaria (together with Iliana Muhibian)

Raluca Vasilescu, Trade Mark Attorney, Cabinet M. Oproiu, Bucharest

Art. 43; Romania

Gregor Vos, LL.M. (Amsterdam/London), Advocaat, Klos Morel Vos & Reeskamp, Amsterdam

Artt. 52–57; The Netherlands

Francesca Warrington, Dr., LL.B., LL.D., Advocate, SALOMONE SANSONE, Valletta Reda Zˇaboliene˙, Advokate˙, METIDA Law Firm of Reda Zaboliene, Vilnius

Malta (together with Luigi A. Sansone)

Mateusz Zˇuk, Prawnik, Sołtysin´ski Kawecki & Szle˛zak, Warsaw

Art. 9 (together with Ewa Skrzydło-Tefelska)

Art. 44, Lithuania (together with Inga Lukauskiene˙)

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List of Abbreviations acc. ............................................... ACRR .......................................... AIPPO ......................................... All E.R. ........................................ AnwBl ......................................... approx. ........................................ BGB ............................................. BGH ............................................. BoA .............................................. BT ................................................ C&D ............................................ CD ................................................ CDFR .......................................... CDIR ........................................... CDPA (UK) ............................... CDR ............................................. cf. .................................................. Ch D ............................................ ch. ................................................. CJ ................................................. CJEU ............................................ cl. .................................................. COM ............................................ Com. ............................................ Common Regulations .............. CTM ............................................ CTMDir ...................................... CTMFR ....................................... CTMIR ........................................ CTMR ......................................... DDir ............................................ Dec. .............................................. Dir. ............................................... diss.op. ........................................ Drs ............................................... Duke LJ ....................................... E.C.D.R. ...................................... e. g. ............................................... EnforcementDir ........................ E.I.P.R. ........................................ E.T.M.R. ...................................... ECHR .......................................... ECR .............................................. EEA .............................................. EIPR ............................................ ELJ ............................................... EPC .............................................. EPLA ........................................... EPO ............................................. EuR .............................................. EuZW ..........................................

according to (Polish) Act on Copyright and Related Rights International Association for the Protection of Intellectual Property All England Reporter Anwaltsblatt (German law journal) approximately Bu¨rgerliches Gesetzbuch (German Civil Code) Bundesgerichtshof (German Federal Court of Justice) Board of Appeal Bundestag (German Federal Parliament) cease and desist Community Design Community Design Fees Regulation Community Design Implementation Regulation Copyright, Designs and Patents Act Community Design Regulation (EC) 6/2002 of 12 December 2001 on Community Designs confer (consult; see) Chancery Division (UK) chapter(s) Court of Justice Court of Justice of the European Union clause Proposed legislation and other Commission communications to the Council and/or the other institutions, and their preparatory papers. Commission documents for the other institutions Commission Common Regulations under the 1999 Act, the 1960 Act and the 1934 Act of the Hague Agreement Community Trademark Community Trade Mark Directive Community Trade Mark Fees Regulation Community Trade Mark Implementing Regulation Community Trade Mark Regulation Design Directive Decision Directive dissenting opinion Drucksache (printed matter of the German Parliament) Duke Law Journal European Copyright and Design Reports exempli gratia (for example) Directive on the enforcement of intellectual property rights European Intellectual Property Review European Trade Mark Report European Convention on Human Rights Report of cases before the European Court of Justice and the General Court European Economic Area/European Economic Agreement European Intellectual Property Review European Law Journal European Patent Convention of 1973 European Patent Litigation Agreement European Patent Office Europarecht (German law journal) Europa¨ische Zeitschrift fu¨r Wirtschaftsrecht (German law journal)

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Abbreviations EWCA ......................................... ExaminationGuidelines ........... Fed. .............................................. fn. ................................................. FS ................................................. FSR ............................................... GC ................................................ GCA ............................................. GDA ............................................ Geneva Act ................................. GRUR .......................................... GRUR Int. .................................. GRUR Prax ................................ GRUR-RR ................................... i. e. ................................................ ibid. .............................................. ICA .............................................. id. ................................................. IEHC ........................................... IIC ................................................ INID ............................................ INTA ........................................... Invalidity Guideline ................. IP .................................................. IPC ............................................... IPL ............................................... IPLR ............................................. IPR ............................................... IR .................................................. J .................................................... lit. ................................................. LOC ............................................. loc. cit. ......................................... Madrid Agreement ................... MarkenG .................................... Mitt. ............................................. mn./mns. .................................... MPI .............................................. Nice Agreement ........................ nyp ............................................... NZI .............................................. OAPI ........................................... ¨ bl ............................................... O OECD .......................................... Office ........................................... OGH ............................................ OHIM .......................................... OJ ................................................. para./paras. ................................. Paris Convention ...................... PatG ............................................. PCT ..............................................

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Court of Appeal for England and Wales Guideline for the Examination of Community Designs by OHIM Federal footnote Festschrift (liber amicorum) Fleet Street Reports: Cases on Intellectual Property Law (UK) General Court German Copyright Act German Design Act Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs Gewerblicher Rechtsschutz und Urheberrecht (German law journal) Gewerblicher Rechtsschutz und Urheberrecht – Internationaler Teil (German law journal) Gewerblicher Rechtsschutz und Urheberrecht, Praxis im Immaterialgu¨ter- und Wettbewerbsrecht (German law journal) Gewerblicher Rechtsschutz und Urheberrecht – Rechtsprechungsteil (German law journal) id est in the same place Italian Copyright Act idem, the same High Court of Ireland decisions International Review of Intellectual Property and Competition Law Internationally agreed Numbers for the Identification of Data International Trademark Association Guideline for the Proceedings Relating to a Declaration of Invalidity of a Registered Community Design by OHIM Intellectual Property (Italian) Industrial Property Code (Polish) Industrial Property Law Act Intellectual Property Law Reports Intellectual Property Rights International Registration Judge letter; littera Locarno Classification in the place cited Madrid Agreement Concerning the International Registration of Marks of 14 April 1891 Markengesetz (German Act on the Protection of Marks and Other Designations) Mitteilungen der deutschen Patentanwa¨lte (German law journal) margin number/margin numbers Max-Planck-Institut Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 not yet published Neue Zeitschrift fu¨r Insolvenzrecht (German law journal) African Intellectual Property Organisation ¨ sterreichische Bla¨tter fu¨r gewerblichen Rechtsschutz (Austrian law O journal) Organisation for Economic Cooperation and Development Office for Harmonization in the Internal Market Oberster Gerichtshof (Supreme Court of Austria) Office for Harmonization in the Internal Market Official Journal paragraph(s) Paris Convention for the Protection of Industrial Property of 20 March 1883 Patentgesetz (German Patent Act) Patent Cooperation Treaty

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Abbreviations PI .................................................. Protocol ...................................... pub. .............................................. R ................................................... RBC ............................................. Rc. ................................................ RCD ............................................. Reg. .............................................. RenewalGuidelines ................... Rope ............................................. RPC .............................................. RTM ............................................ RTMA ......................................... s. ................................................... SCT .............................................. SEA .............................................. Sec. ............................................... SME ............................................. Stat. .............................................. Swiss IPRG ................................. TEC .............................................. TEU ............................................. TFEU ........................................... TM ............................................... TMR ............................................ TMDir ......................................... TRIPS .......................................... TRT .............................................. U.S. .............................................. U.S.C. .......................................... UCD ............................................ UDRP .......................................... UKHL .......................................... UKSC .......................................... UNCITRAL ................................ USPTO ........................................ v .................................................... VAT ............................................. WIPO .......................................... WM ............................................. WRP ............................................ WTO ........................................... Yb ................................................. ZfRV ............................................ ZGE ............................................. ZUM ............................................ ZUR .............................................

preliminary injunction Protocol Relating to the Madrid Agreement of 27 June 1989 publication rule (WIPO) Revised Berne Convention recital Registered Community Design Regulation Registered Community Design Renewal Guidelines by OHIM Rules of Procedure Reports of Patents, Designs and Trade Mark Cases Registered Trade Mark Registered Trade Mark Attorney see The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications Single European Act section Small and medium sized enterprise Statute(s) Bundesgesetz u¨ber das Internationale Privatrecht (Swiss law on conflicts of law) Treaty of the European Community Treaty on European Union Treaty on the Function of the European Union Trademark Trademark Report Directive (EC) 2008/95 of 22 October 2008 to approximate the law of the Member States relating to Trade Marks Agreement on Trade-Related Aspects of Intellectual Property Rights Trademark Registration Treaty United States Reports US Supreme Court cases Unregistered Community Design Uniform Domain-Name Dispute-Resolution Policy UK House of Lords UK Supreme Court (decided cases) United Nations Commission on International Trade Law U.S. Patent and Trademark Office versus Value Added Tax World Intellectual Property Organization Wertpapier-Mitteilungen (German law journal) Wettbewerb in Recht und Praxis (German law journal) World Trade Organisation Yearbook Zeitschrift fu¨r Europarecht, Int. Privatrecht & Rechtsvergleichung (German law journal) Zeitschrift fu¨r Geistiges Eigentum (German law journal) Zeitschrift fu¨r Urheber- und Medienrecht (German law journal) Zeitschrift fu¨r Umweltrecht (German law journal)

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General Bibliography Marco Alcala´/Luis Alberto, Las Causas de la denegacio´n de registro de la marca comunitaria, Valencia 2001; Ruth Annand/Helen Norman, Blackstone’s Guide to the Community Trade Mark, London 1998; Ju¨rgen Basedow/Josef Drexl/Annette Kur/Axel Metzger, Intellectual Property in the Conflict of Laws, Tu¨bingen 2005; Friedrich K. Beier/Gerhard Schricker/Matthias Eck, Neue Wege zum Schutz der Formgebung, Cologne 1993; Achim Bender, Europa¨isches Markenrecht, Cologne/Berlin/Munich 2008; Franco Benussi, Il marchio communitario, Milano 1996; Daniel R. Bereskin, International Trade Mark Dilution, Toronto 2014; Georg Hendrik Christiaan Bodenhausen, Pariser Verbandsu¨bereinkunft zum Schutz des gewerblichen Eigentums, Cologne/Berlin/Bonn 1971; Magaret Briffa/Lee Gage, Design Law, London 2004; Ulrich Bru¨ckmann/Philipp Gu¨nther/Helmut Beyerlein, Kommentar zum Geschmacksmustergesetz, Frankfurt am Main 2007; Alexander Bulling/Angelika Lango¨hrig/Tillmann Hellwig, Geschmacksmuster, 3. ed., Cologne 2011; Ursula Bumiller, Durchsetzung der Gemeinschaftsmarke in der Europa¨ischen Union, Munich 1997; Jan Busche/Peter-Tobias Stoll/Andreas Wiebe, TRIPs – Internationales und europa¨isches Recht des geistigen Eigentums, 2. ed., Cologne 2012; Wolfgang Bu¨scher/Stefan Dittmer/Peter Schiwy, Gewerblicher Rechtsschutz, Urheberrecht, Medienrecht, Cologne 2011; Dennis Campbell/Susan Cotter, International Intellectual Property Law, New York 1996; ~o, Comentarios a los reglamentos sobre la marca comunitaria, 2. ed., Madrid 2000; Alberto Casado Cervin ~o, El sistema communitario de marcas: normas, jurisprudencia y pra´ctica, Alberto Casado Cervin Valladolid 2000; Tobias Cohen Jehoram/Constant van Nispen, European Trademark Law, Alphen aan den Rijn 2010; Denis Cohen, Le droit des dessins et mode`les, 3. ed., Paris 2014; William Rodolph Cornish, Intellectual Property: Omnipresent, Distracting, Irrelevant?, Oxford 2006; William Rodolph Cornish/David Llewelyn/Tanya Aplin, Intellectual Property: Patents, Copyrights, Trademarks & Allied Rights, London 2014; Paul Craig/Gra´inne De Bu´rca, EU Law, 5. ed., Oxford 2011; Salvo Dell’Arte, I marchi d’impresa nella Comunita` europea, Forli` 2005; Josef Drexl/Annette Kur, Intellectual Property and Private International Law, Oxford 2005; Andreas Ebert-Weidenfeller, Marque communautaire, London 2000; Martin Ebner, Markenschutz im internationalen Privat- und Zivilprozessrecht, Cologne 2004; Helmut Eichmann/Annette Kur, Designrecht, Baden-Baden 2009; Helmut Eichmann/Roland Vogel von Falckenstein, Geschmacksmustergesetz, 4. ed., Munich 2010; Gu¨nther Eisenfu¨hr/Detlef Schennen, Gemeinschaftsmarkenverordnung, 4. ed., Cologne 2014; Friedrich Ekey/Diethelm Klippel/Achim Bender, Markenrecht, vol. 1, 2. ed., Heidelberg 2009; Willi Erdmann/Sabine Rojahn/Olaf Sosnitza, Handbuch des Fachanwalts Gewerblicher Rechtsschutz, 2. ed., Cologne 2011; European Max Planck Group, Conflict of Laws in Intellectual Property, Oxford 2013; James J. Fawcett/Paul Torremans, Intellectual Property and Private International Law, Oxford 2011; Carlos Ferna´ndez-No´voa, El sistema comunitario de Marcas, Montecorvo 1995; Carlos Ferna´ndez-No´voa, Fundamentos de derecho de marcas, Madrid 1984; Karl-Heinz Fezer, Markenrecht, 4. ed., Munich 2009; Karl-Heinz Fezer, Lauterkeitsrecht: UWG, vol. 1, 2, 2. ed., Munich 2010;

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General Bibliography Mario Franzosi, European Community Trade Mark, Commentary to the European Community Regulation, Den Haag/London/Boston 1997; Mario Franzosi, European Design Protection, Den Haag 1996; Eric Gastinel, La marque communautaire, Paris 2000; Eric Gastinel, Legal aspects of the Community trade mark, Den Haag/London/Boston 2001; Daniel Gervais, The TRIPS Agreement: Drafting History and Analysis, 4. ed., London 2012; Charles Gielen/Verena von Bomhard, Concise European Trade Mark and Design Law, Alphen aan den Rijn 2011; François Greffe/Pierre Greffe, Traite´s des dessins et mode`les, 8. ed., Paris 2008; Franz Hacker, Markenrecht, 3. ed., Cologne 2013; Henning Hartwig, Designschutz in Europa/Design Protection in Europe, vol. 1, Cologne 2007, vol. 2, 2008, vol. 3, 2009, vol. 4, 2012; Gordian N. Hasselblatt, Mu¨nchener Anwaltshandbuch Gewerblicher Rechtsschutz, 4. ed., Munich 2012; Frauke Henning-Bodewig/Annette Kur, Marke und Verbraucher. Funktionen der Marke in der Marktwirtschaft, vol. 1, Weinheim 1988, vol. 2, 1989; Ulrich Hildebrandt, Harmonised Trade Mark Law in Europe, Case-Law of the European Court of Justice, 2. ed., Cologne/Berlin/Munich 2008; Reinhard Ingerl, Die Gemeinschaftsmarke, Stuttgart/Munich/Hannover/Berlin/Weimar/Dresden 1996; Reinhard Ingerl/Christian Rohnke, Markengesetz, 3. ed., Munich 2010; Francisco Jose´/Alonso Espinosa, El nuevo Derecho de Marcas, Granada 2002; Toshiyuki Kono, Intellectual Property and Private International Law: Comparative Perspectives, Oxford 2012; Helmut Ko¨hler/Joachim Bornkamm, Gesetz gegen den unlauteren Wettbewerb, 32. ed., Munich 2014; Guido Kucsko/Christian Schumacher, marken.schutz, Vienna 2013; Guido Kucsko, Geistiges Eigentum, Vienna 2003; Annette Kur/Thomas Dreier, European Intellectual Property Law, Cheltenham, Northampton, 2013; Paul Lange, Marken- und Kennzeichenrecht, 2. ed., Munich 2012; Stefan Leible/Ansgar Ohly, Intellectual Property and Private International Law, Tu¨bingen 2009; Matthias Leistner/Estelle Derclaye, Intellectual property overlaps: A European perspective, Oxford 2011; Manuel Lobato Garcı´a-Mijan, La Marca Communitaria. Aspectos procesales y de Derecho Internacional Privado del Reglamento sobre la marca communitarian, Bologna 1997; Spyros M Maniatis/Dimitris Botis, Trade Marks in Europe: A Practical Jurisprudence, 2. ed., London 2010; Paul Mathe´ly, Le nouveau droit francais des marques, Paris 1994; Hector MacQueen/Charlotte Waelde, Contemporary Intellectual Property Law and Policy, 2. ed., Oxford 2008; James Mellor/David Llewelyn/Thomas Moody-Stuart/David Keeling/Iona Berkeley, Kerly’s law of Trade Marks and Trade Names, 15. ed., London 2011; Amanda Michaels/Andrew Norris, A practical Guide to Trade Mark Law, 5. ed., Oxford 2014; Christopher Morcom/Ashley Roughto/Simon Malynicz, The Modern Law of Trade Marks, 3. ed., London 2008; Jan Bernd Nordemann/Axel Nordemann/Anke Nordemann-Schiffel, Wettbewerbsrecht Markenrecht, 11. ed., Baden-Baden 2012; Ansgar Ohly/Theo Bodewig/Thomas Dreier/Horst-Peter Go¨tting/Maximilian Haedicke/Michael Lehmann, Perpektiven des Geistigen Eigentums und des Wettbewerbsrechts, Munich 2005; Jeremy Phillips,Trade Mark Law, Oxford 2002; Jeremy Phillips/Ilanah Simon, European Trade Mark Reports, London 2013; Andre´ Pohlmann, Verfahrensrecht der Gemeinschaftsmarke, Munich 2012; Oliver Ruhl, Gemeinschaftsgeschmacksmuster, 2. ed., Cologne 2010; Elke Schaper, Durchsetzung der Gemeinschaftsmarke, Cologne 2006; Gerhard Schricker/Eva-Marina Bastian/Roland Knaak, Gemeinschaftsmarke und Recht der EU-Mitgliedstaaten, Munich 2006; Roger Staub/Allesandro L. Celli, Designrecht, Zu¨rich 2003;

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General Bibliography Maximiliane Sto¨ckel, Handbuch Marken- und Designrecht, Berlin 2013; David Stone, European Union Design Law, Oxford 2012; Paul Stro¨bele/Franz Hacker, Markengesetz, 11. ed., Cologne 2015; Robert M. Stutz, Individualita¨t, Originalita¨t oder Eigenart? Schutzvoraussetzungen des Design, Bern 2002; David Tatham/William Richards, ECTA Guide to E.U. Trade Mark Legislation, London 1998; Louise Thorning/Solvår Winnie Finnanger, Trademark Protection in the European Union with a Scandinavian View, Copenhagen 2010; Guy Tritton, Intellectual Property In Europe, 4. ed., London 2014; Paul van der Kooij, The Community Trade Mark Regulation- An Article by Article Guide, London 2000; Alexander von Mu¨hlendahl/Dietrich Ohlgart/Verena von Bomhard, Die Gemeinschaftsmarke, Munich 1998; Detlef von Schultz, Kommentar zum Markenrecht, 3. ed., Frankfurt am Main 2012.

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A. Commentary COUNCIL REGULATION (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (Text with EEA relevance)

THE COUNCIL OF THE EUROPEAN UNION, Having regard to the Treaty establishing the European Community, and in particular Article 308 thereof, Having regard to the proposal from the Commission, Having regard to the opinion of the European Parliament1, Whereas: (1) Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark2 has been substantially amended several times3. In the interests of clarity and rationality the said Regulation should be codified. (2) It is desirable to promote throughout the Community a harmonious development of economic activities and a continuous and balanced expansion by completing an internal market which functions properly and offers conditions which are similar to those obtaining in a national market. In order to create a market of this kind and make it increasingly a single market, not only must barriers to free movement of goods and services be removed and arrangements be instituted which ensure that competition is not distorted, but, in addition, legal conditions must be created which enable undertakings to adapt their activities to the scale of the Community, whether in manufacturing and distributing goods or in providing services. For those purposes, trade marks enabling the products and services of undertakings to be distinguished by identical means throughout the entire Community, regardless of frontiers, should feature amongst the legal instruments which undertakings have at their disposal. (3) For the purpose of pursuing the Community’s said objectives it would appear necessary to provide for Community arrangements for trade marks whereby undertakings can by means of one procedural system obtain Community trade marks to which uniform protection is given and which produce their effects throughout the entire area of the Community. The principle of the unitary character of the Community trade mark thus stated should apply unless otherwise provided for in this Regulation. (4) The barrier of territoriality of the rights conferred on proprietors of trade marks by the laws of the Member States cannot be removed by approximation of laws. In order to open up unrestricted economic activity in the whole of the internal market for the benef.it of undertakings, trade marks should be created which are governed by a uniform Community law directly applicable in all Member States. (5) Since the Treaty has not provided the specific powers to establish such a legal instrument, Article 308 of the Treaty should be applied. 1

OJ C 146 E, 12.6.2008, p. 79. OJ L 11, 14.1.1994, p. 1. 3 See Annex I, OJ L 78 of 24.3.2009, p. 38. 2

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CTMR

Community Trade Mark Regulation

(6) The Community law relating to trade marks nevertheless does not replace the laws of the Member States on trade marks. It would not in fact appear to be justified to require undertakings to apply for registration of their trade marks as Community trade marks. National trade marks continue to be necessary for those undertakings which do not want protection of their trade marks at Community level. (7) The rights in a Community trade mark should not be obtained otherwise than by registration, and registration should be refused in particular if the trade mark is not distinctive, if it is unlawful or if it conflicts with earlier rights. (8) The protection afforded by a Community trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. The protection should apply also in cases of similarity between the mark and the sign and the goods or services. An interpretation should be given of the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection. (9) It follows from the principle of free movement of goods that the proprietor of a Community trade mark must not be entitled to prohibit its use by a third party in relation to goods which have been put into circulation in the Community, under the trade mark, by him or with his consent, save where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods. (10) There is no justification for protecting Community trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used. (11) A Community trade mark is to be regarded as an object of property which exists separately from the undertakings whose goods or services are designated by it. Accordingly, it should be capable of being transferred, subject to the overriding need to prevent the public being misled as a result of the transfer. It should also be capable of being charged as security in favour of a third party and of being the subject matter of licences. (12) Administrative measures are necessary at Community level for implementing in relation to every trade mark the trade mark law created by this Regulation. It is therefore essential, while retaining the Community’s existing institutional structure and balance of powers, to provide for an Office for Harmonisation in the Internal Market (trade marks and designs) which is independent in relation to technical matters and has legal, administrative and financial autonomy. To this end it is necessary and appropriate that that Office should be a body of the Community having legal personality and exercising the implementing powers which are conferred on it by this Regulation, and that it should operate within the framework of Community law without detracting from the competencies exercised by the Community institutions. (13) It is necessary to ensure that parties who are affected by decisions made by the Office are protected by the law in a manner which is suited to the special character of trade mark law. To that end provision is made for an appeal to lie from decisions of the examiners and of the various divisions of the Office. If the department whose decision is contested does not rectify its decision it is to remit the appeal to a Board of Appeal of the Office, which is to decide on it. Decisions of the Boards of Appeal are, 2

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The Council of the European Union

CTMR

in turn, amenable to actions before the Court of Justice of the European Communities, which has jurisdiction to annul or to alter the contested decision. (14) Under the first subparagraph of Article 225 (1) of the EC Treaty the Court of First Instance of the European Communities has jurisdiction to hear and determine at first instance the actions referred to in particular in Article 230 of the EC Treaty with the exception of those assigned to a judicial panel and those reserved in the Statute to the Court of Justice. The jurisdiction which this Regulation confers on the Court of Justice to cancel and alter decisions of the Boards of Appeal should accordingly be exercised at first instance by the Court. (15) In order to strengthen the protection of Community trade marks the Member States should designate, having regard to their own national system, as limited a number as possible of national courts of first and second instance having jurisdiction in matters of infringement and validity of Community trade marks. (16) Decisions regarding the validity and infringement of Community trade marks must have effect and cover the entire area of the Community, as this is the only way of preventing inconsistent decisions on the part of the courts and the Office and of ensuring that the unitary character of Community trade marks is not undermined. The provisions of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters4 should apply to all actions at law relating to Community trade marks, save where this Regulation derogates from those rules. (17) Contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought on the basis of a Community trade mark and parallel national trade marks. For this purpose, when the actions are brought in the same Member State, the way in which this is to be achieved is a matter for national procedural rules, which are not prejudiced by this Regulation, whilst when the actions are brought in different Member States, provisions modelled on the rules on lis pendens and related actions of Regulation (EC) No 44/2001 appear appropriate. (18) In order to guarantee the full autonomy and independence of the Office, it is considered necessary to grant it an autonomous budget whose revenue comes principally from fees paid by the users of the system. However, the Community budgetary procedure remains applicable as far as any subsidies chargeable to the general budget of the European Communities are concerned. Moreover, the auditing of accounts should be undertaken by the Court of Auditors. (19) Measures necessary for the implementation of this Regulation should be adopted, particularly as regards fees regulations and an Implementing Regulation, in accordance with Council Decision 1999/468/EC of 28 June 1999 laying down the procedures for the exercise of implementing powers conferred on the Commission5, HAS ADOPTED THIS REGULATION:

4 5

OJ L 12, 16.1.2001, p. 1. OJ L 184, 17.7.1999, p. 23.

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TITLE I GENERAL PROVISIONS Article 1 Community trade mark 1. A trade mark for goods or services which is registered in accordance with the conditions contained in this Regulation and in the manner herein provided is hereinafter referred to as a ‘Community trade mark’. 2. 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. Rc. 2, 3, 4, 6, 7, 11, 12, 16–18 Bibliography: Arpan Banerjee, ‘Non-origin infringement – has trade mark law gone too far?’, IIC 2012, 555, 567; Friedrich-Karl Beier, ‘The development of trade mark law in the last twenty-five years’, IIC 1995, 769–781; Friedrich-Karl Beier, in Gerhard Schricker/Eva-Maria Bastian/Florian Albert (ed.), Die Neuordnung des Markenrechts in Europa [1997], Von der EWG-Marke zur Gemeinschaftsmarke – Teil I, p. 59–79; Tobias Cohen Jehoram, ‘The function theory in the European trade mark law and the holistic approach of the CJEU’, TMRVol. 102, 1243–1253; Karl-Heinz Fezer, ‘Der Wettbewerb der Markensysteme’, GRUR 2013, 1185–1195; Karl-Heinz Fezer, Handbuch der Markenpraxis, Vol. 1 Gemeinschaftsmarkenverfahren, 2007; De´sire´e Fields/Hiroshi Sheraton, ‘European Commission proposesreform of European trade mark system’, EIPR 2013, 563–566; Mario Franzosi (ed.), European Community Trade Mark, Commentary to the European Regulations, The Hague/The Netherlands, 1997; Gordian N. Hasselblatt, ‘The Community Trademarks’, in Dennis Campbell (ed.), International Intellectual Property ¨ ber Sinn und Law1997, p. 145–170; Gordian N. Hasselblatt/Inga George, ‘Quo Vadis Markenrecht? U Unsinn der geplanten Reformen auf Gemeinschaftsebene’, IPRB 2013, 205–209; Gordian N. Hasselblatt/ David Kipping, ‘Die ‘neue’ Markenfunktionenlehre im Lichte der ju¨ngeren Spruchpraxis des EuGH’, KSzW 2010, 236–241; Ludwig Heydt, Der ‘Benutzungszwang im Vorentwurf eines Abkommens u¨ber ein Europa¨isches Markenrecht’, GRURInt 1973, 540–550; Roland Knaak, ‘Grundzu¨ge des Gemeinschaftsmarkenrechts und Unterschiede zum nationalenMarkenrecht’, GRURInt 2001, 665–673; Albrecht Krieger, ‘Intellectual and industrial property under the aspect of international development’, IIC 1973, 155–178; Paul Maier, ‘OHIM’s role in the European trademark harmonisation: past, present and future’, 23 Fordham Intell. Prop. Medium & Ent. LJ, 688–729; James Mellor/David Llewelyn/Thomas MoodyStuart/David Keeling/Iona Berkeley (ed.), Kerly’s Law of Trade Marks and Trade Names, 15th ed., London, 2011; Alexander v. Mu¨hlendahl, ‘The future Community trade mark system’, IIC 1989, 583–594; Alexander v. Mu¨hlendahl, in Gerhard Schricker/Eva-Maria Bastian/Florian Albert (ed.), Die Neuordnung des Markenrechts in Europa [1997], Von der EWG-Marke zur Gemeinschaftsmarke – Teil II, p. 81–103; James Nurton/Simon Crompton, ‘Welcome to the European trade mark’, Managing Intellectual Property 2013 (229), 1–9; William Robinson/Giles Pratt/Ruth Kelly, ‘Trademark law harmonisation in the European Union: 20 years back and forth’, 23 Fordham Intell. Prop. Medium & Ent. LJ 732–770; Martin Ro¨ttger, ‘Gedanken zur Schaffung einer EWG-Marke’, GRUR 1959, 329–334; Yves Saint-Gal/Martin Ro¨ttger, ‘Das Problem der Schaffung einer EWG-Marke’, GRURInt 1960, 500–502; Rolf Sack, ‘Kritische Anmerkungen zur Regelung der Markenverletzungen in den Kommissionsvorschla¨gen fu¨r eine Reform des Europa¨ischen Markenrechts’, GRUR 2013, 657–665; Valeska To¨belmann, ‘Mehr Rechtssicherheit fu¨r Markenanmelder – Anmerkung zu EuGH “Schwabenpost”’, GRUR 2009, 1007–1009.

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Community trade mark

Art. 1 CTMR

Content A. Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 1. Importance of effective trade mark protection. . . . . . . . . . . . . . . . . . . . . . . . 1 2. Community trade mark facts and figures. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5 3. Important amendments to the CTMR after 1996 . . . . . . . . . . . . . . . . . . . . 9 a) EU enlargement (2004, 2007 and 2013). . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 b) Accession to the Madrid Protocol (2004) . . . . . . . . . . . . . . . . . . . . . . . . . . 12 II. Historical overview: the way to the Community trade mark . . . . . . . . . . 15 1. Initial steps towards a unified European trade mark system (1959) 16 2. Preliminary Draft of a Convention for a European Trade Mark (1964/1973). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18 3. Memorandum on the Creation of an EEC Trade Mark (1976) . . . . 21 4. Commission Proposal (1980). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30 5. Amended Commission Proposal (1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34 6. Trade Mark Directive (1988) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 37 7. Community Trade Mark Regulation (1993). . . . . . . . . . . . . . . . . . . . . . . . . . . 41 III. Proposals for a revision of the CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 42 1. Aim of the reform proposals . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43 2. Study by the Max Planck Institute (2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 45 3. Proposal for an amended CTMR (2013). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47 4. Comment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48 a) Adaptation of terminology . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50 b) Streamlining of procedural provisions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51 c) Deletion of requirement of ‘graphic representability’ . . . . . . . . . . . . 55 d) Proposed changes to the wording of Art. 9 CTMR. . . . . . . . . . . . . . . 56 e) Further amendments aimed at increasing legal certainty. . . . . . . . 59 B. Community trade mark protection at a glance. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 61 I. Advantages of Community trade marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 62 II. Disadvantages of Community trade marks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 77 C. Main features and principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82 I. Registration principle, Artt. 1 (1), 6 CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82 II. Principle of autonomy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 83 1. Autonomous and self-contained framework for CTMs . . . . . . . . . . . . . 83 2. Complementary application of national law . . . . . . . . . . . . . . . . . . . . . . . . . . 86 3. National decisions re similar/identical marks not binding . . . . . . . . . . 89 4. Criminal sanctions under national laws of the Member States. . . . . 94 III. Principle of coexistence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95 IV. Principle of unity, Art. 1 (2) CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99 1. Unitary character . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100 2. Equal effect throughout the Community . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 106 3. Ownership, transfer, surrender, etc., only in respect of whole Community. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 108 4. Limitations, exceptions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 109 V. Territorial scope of protection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 111

A. Introduction I. General 1. Importance of effective trade mark protection To try to explain the importance of effective trade mark protection to modern world 1 entrepreneurs is a bit like carrying coals to Newcastle. Successful business people know by heart that a powerful trade mark encapsulates the essential values of a brand. In today’s Gordian N. Hasselblatt

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highly competitive markets, trade marks serve as communicators between the businesses on the one hand and the courted clientele on the other. Positive communication about the product or service in question is entered into with the customer, providing the impulse for the buying decision. This is where trade marks come into play. If used and developed strategically, trade marks may prove to be the most effective marketing tools of successful companies. The market success of powerful brands may go hand in hand with cutting edge technology, appealing product design, copyright protection, and so forth. Not every product, however, is patented, design- or copyright-protected, whereas almost any commodity is offered under a trade mark. Therefore, oftentimes the trade mark is – metaphorically speaking – the business card to commercial success. 2 Whatever industry sector businesses are active in, or want to expand into, they will be manoeuvring in an already ‘crowded field’. In such a competitive environment, at the national level and even more so in the international arena, it is crucial to build on trade marks that allow customers to find their way to the right source. But it is not only this pilot function, which is to guarantee to consumers the origin of goods or services, that makes trade marks so valuable. Also their other functions, in particular that of guaranteeing a certain quality and communication, investment and advertising,1 should not be underestimated from the marketing perspective. Nowadays, trade marks do not merely serve the purpose of distinguishing one source from another. In fact, they may convey important messages and as such can be employed as multitasking instruments that are perceived by the consumer as a seal of quality, a symbol of innovation, enhanced functionality or cool design, an equivalent for a certain image, an aura of luxury2 or even an emotional flair, and so on. Last but – certainly – not least because of those various functions, trade marks can be used as essential marketing tools for modern business.3 3 A well-balanced and functioning trade mark protection system serves the needs of all kinds of trade mark users, including consumers. First of all, it merits particular mention that the benefits of successful branding are by no means reserved for wealthy corporations;4 small and medium-sized companies, start-ups and individuals may profit from effective trade mark protection in equal measure. As rightly stated on OHIM’s website:5 Great brands start small. In other words, being able to monetise the value of trade marks is not a matter of the size of a company. Smart entrepreneurs develop and protect their IP protection scheme from day one onwards. In order to compete successfully, businesses do not have to be big; they ‘just need to know how to grow’.6 Thus, in a world of increasing consumer sophistication, branding can assist undertakings of all sizes in their quest for innovation and entry into new markets.7 1 Rightfully stressing those ‘other functions’ – which seem to have fallen into oblivion in more recent decisions – CJ Case C-487/07 L’Ore´al S.A. v Bellure N.V. [2009] ECR I-05185, mn. 58 et seq.; CJ Joined Cases C-236/08 and C-238/08 Google France v LouisVuitton [2010] ECR I-02417, mn. 77; CJ Case C-323/ 09 Interflora v Marks & Spencer [2011] ECR I – 08625, mn. 38; s. in detail on the ‘new’ function theory of the CJ, Cohen Jehoram, TMR Vol. 201, 1243 et seq. and Hasselblatt/Kipping, KSzW 2010, 236–241; skeptical in respect of ‘non-origin’ infringement based on the other functions of trade marks, Banerjee, IIC 2012, 555, 557 et seq. 2 CJ Case C-59/08 Copad S.A. v Christian Dior couture [2009] ECR I – 03421, mn. 24. 3 S. also Commission Staff Working Paper, Impact Assessment of 27.3.2013, SWD (2013) 95 final, p. 5. 4 Critical in this respect Robin Jacob in his foreword to Kerly’s Law of Trade Marks and Trade Names, p. VI. 5 S. oami.europa.eu/ohimportal/en/brands; as an excellent example of a ‘garage brand’ that is now one of the most valuable trade marks in the world, OHIM cites the famous Apple® mark, s. oami.europa.eu/ ohimportal/en/value. 6 S. https://oami.europa.eu Õ trade marks Õ trade mark basics Õ value. 7 Stressed in the Commission Staff Working Paper, Impact Assessment of 27.3.2013, SWD (2013) 95 final, p. 5.

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Finally, a functioning trade mark protection scheme offers benefits to the demand- 4 side as well. As the Commission stated in its famous ‘Memorandum on the Creation of an EEC Trade Mark’ in 1976, to make the right choice, the consumer ‘needs to be able to identify and distinguish goods according to their origin and to recognize a connection between a particular product, its quality and its reputation’;8 there is nothing to add except that the same holds true with regard to services. Thereby, trade marks enable consumers to recognize a product/service as one which they have liked, or disliked, in the past and therefore ‘allow them to make an informed choice when making the purchase or asking for a service’.9

2. Community trade mark facts and figures Since 1996, it has been possible to file an application for registration of a CTM within 5 the framework of the CTMR with the ‘Office for Harmonisation in the Internal Market (Trade Marks and Designs)’, otherwise known by the acronym OHIM,10 and in all likelihood soon to be renamed ‘European Union Trade Marks and Designs Agency’.11 It is safe to say that the creation of the Community trade mark system is a true success story. Since its inception in 1996, more than one million CTMs have been registered.12 The enormous popularity of the CTM does not come as a surprise. The Community 6 trade mark – as the name indicates – enjoys EU-wide validity and thus enables ‘the products and services of undertakings to be distinguished by identical means throughout the entire Community, regardless of frontiers’.13 With its now 28 Member States, the EU covers a single market of more than 500 million consumers14 and hence is one of the most important economic spheres world-wide.15 It is therefore no wonder that business and trade have long since recognized the value of the Community trade mark – last but not least because of this geographical reach. The CTM is well-established in cross-border protection scenarios and has its firm place in almost any supranational trade mark portfolio. The CTM has been well received right from the outset, but its popularity seems to still be picking up momentum. A reading on this can be taken from statistical data: whereas in the year 1996 some 40,000 applications were filed with OHIM, this number almost trebled up to 2013.16 The broad acceptance of the Community trade mark is also confirmed by the origin 7 of the applicants. All in all, 350,000 companies from 170 countries have registered

8 Memorandum on the Creation of an EEC Trade Mark, IIC 1976, 367, 370; s. the more detailed remarks below, mn. 21–29. 9 Rightfully stated in the Commission Staff Working Paper, Impact Assessment of 27.3.2013, SWD (2013) 95 final, p. 5. 10 And the equivalents in the – besides English – other four official languages (Art. 119 (2) CTMR), i. e. French = OHMI, German = HABM, Italian = UAMI and Spanish = OAMI. 11 S. the modified version of Art. 2 (1) of the proposal for a regulation amending the CTMR, Commission document of 27.3.2013 COM(2013), 161 final, 2013/0088 (COD). 12 1996–2014: 1,013,171 CTMs have been registered; during the same time period 1,164,323 CTM applications were published (as of 7.4.2014); s. statistics of Community trade marks, available via the website https://oami.europa.eu Õ statistics of Community trade marks 2014. 13 Rc. 2 Preamble CTMR. 14 S. OHIM website under https://oami.europa.eu Õ about OHIM Õ Who we are Õ the Office. 15 S. in comparison the figures at the outset in 1996, with its then 15 Member States with 350 million inhabitants; Hasselblatt, in Campbell (ed.), International Intellectual Property Law 1997, p. 145, mn. 10.1. 16 1996: 43,705 CTM applications; 2013: 114,465 applications; s. statistics of Community trade marks available via the Office’s website under https://oami.europa.eu Õ statistics of Community trade marks (until 03/2014).

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CTMs, ranging from large multinationals to small and medium-sized enterprises.17 Nearly 30 % of the more than 100,000 CTM applications/year in 2012 and 2013 came from non-EU countries,18 most of the applications, in turn, coming from North America and Asia, first and foremost USA, followed by Switzerland, Japan, Canada, the People’s Republic of China, Australia, Hong Kong and the Republic of Korea.19 At the same time, the proportion of applications from non-EU countries has steadily increased over the past few years. From the beginning, however, the majority of CTM applications have come from EU countries; in recent years, these countries have accounted for slightly more than 70 % of the total applications. Among the Member States, applicants from Germany, UK, France, Italy and Spain are the top filers;20 but countries like the Netherlands, Austria, Sweden, Belgium, Denmark and Portugal have also proved to be particularly application-friendly. 8 In sum, the Community trade mark makes a very modern, strong and territorially expansive legal instrument available. The costs for securing CTM protection are relatively low, especially when compared with the costs that would be incurred if, alternatively, several national trade mark registrations in various Member States were pursued. Obviously, the fee reductions instituted by OHIM in 2005 and 2009 had an additional positive effect on demand for the CTM.21

3. Important amendments to the CTMR after 1996 9

Since its entry into force, the CTMR has undergone significant changes, further enhancing the attractiveness of the Community trade mark.

a) EU enlargement (2004, 2007 and 2013). The Community trade mark has equal effect throughout the Community. Since 1996, the number of EU Member States has increased to 28. With effect from 1 May 2004, 1 January 2007 and most recently from 1 July 2013,22 a total of 13 further countries have acceded to the EU. The CTMR has been amended in the course of these EU enlargements in order to warrant the unitary character of the Community trade mark. 11 Community trade marks that came into existence after 1 July 2013 enjoy protection in all 28 Member States. Pursuant to Art. 165, the protection of Community trade marks protected or applied for before the new Member States joined the EU was extended to the territory of those Member States automatically and without involving additional costs with effect as of the respective accession date.23 10

17 Stressed in the Commission Staff Working Paper, Impact Assessment of 27.3.2013, SWD (2013) 95 final, p. 13, mn. 3.1.4. 18 2012: total 107,963 CTM applications, out of which 31,416 came from non-EU countries (= 29,09 %). 2013: total 114,465 CTM applications, out of which 34,046 came from non-EU countries (= 29,7 %); s. statistics of Community trade marks Õ breakdown per country/territories (EU, other states), s. https:// oami.europa.eu. 19 Statistics of Community trade marks, broken down by country/territory, s. https://oami.europa.eu. 20 Commission Staff Working Paper, Impact Assessment of 27.3.2013, SWD (2013) 95 final, p. 13, mn. 3.1.4. 21 S. Study on the Overall Functioning of the European Trade Mark System, submitted by Max Planck Institute on 15.2.2011, p. 41–42, in relation to the 2005 fee reduction. 22 The date of accession for the following countries is 1 May 2004: Czech Republic, Republic of Estonia, Republic of Cyprus, Republic of Latvia, Republic of Lithuania, Republic of Hungary, Republic of Malta, Republic of Poland, Republic of Slovenia and Slovak Republic; the date of accession of Bulgaria and Romania is 1 January 2007; the date of accession of Croatia is 1 July 2013, s. OJ L 236/17 of 23.9.2003, s. Annex II – 4. Company Law – C. Industrial Property Rights; OJ L 157/11 of 21.6.2005, s. Annex III – 1. Company Law – Industrial Property Rights, relating to the accession of Bulgaria and Rumania; s. AccessionTreaty, concerning the accession of the Republic of Croatia, Brussels, 7.11.2011 (OR en), 14409/11, Annex 3, 2. 23 S. detailed discussion below, Hallemans, Art. 165, mn. 1 et seq.

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b) Accession to the Madrid Protocol (2004). With effect from 1 October 2004, the 12 EU acceded to the Protocol related to the Madrid Agreement concerning the international registration of marks.24 The long-awaited linkage of the two protection systems had already been envisaged by the Commission in 1996; years of negotiation followed in the attempt to reach a political consensus in the Council on the necessary legal action to be taken. On 27 October 2003 the Council decided on the legislative measures required to create the connection between the Community trade mark and the Madrid Protocol.25 The international registration system under the Madrid Agreement (and the Protocol thereto) are complementary.26 The Madrid Agreement and Protocol create an international registration system through which trade mark protection can be obtained in a number of states and/or intergovernmental organisations by means of a single international application, filed in one language,27 triggering fees to be paid in one currency. This offers the opportunity to file for international registration on the basis of a CTM or a CTM application under Art. 146 et seq., and to designate the Community in an application for international registration according to Art. 151 et seq.28 Over the past 20 years, the number of signatories to the Madrid Agreement and/or the 13 Protocol has grown significantly. Since the year 2000, more than 30 countries and intergovernmental organisations have joined the Madrid system, including such large economies as Japan (2000),the US (2003), the EU (2004), Mexico and India (both 2013), to name just a few. In the meantime, the territorial reach of the Madrid System comprises 92 contracting States.29 The linkage between the CTM system and the international registration system opens up 14 the opportunity to combine the advantages of both systems, particularly to make the administration of large trade mark portfolios more efficient and – last but not least – to reduce costs. According to official statements made by OHIM, all necessary steps have been taken to warrant speedy processing. Active use – in both directions –30 has already been made of the combination of the CTM and the IR protection system; today, every seventh CTM application is already likely to be filed as part of an IR mark.31 This trend is likely to continue and is not surprising because the Madrid Protection System has lately been considerably upgraded by a number of important signatories, not least by the EU itself. 24 S. Council Regulation (EC) No 1992/2003 of 27.10.2003 amending Regulation (EC) No 40/94 on the Community Trade Mark to give effect to the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks adopted at Madrid on 27 June 1989, OJ L 296 of 14.11.2003, p. 1 et seq.; Commission Regulation (EC) No 782/2004 of 26.4.2004 amending Regulation (EC) No 2868/95 to give effect to the accession of the European Community to the Madrid Protocol, OJ L 123 of 27.4.2004, p. 88 et seq.; Commission Regulation (EC) No 781/2004 of 26.4.2004 amending Commission Regulation No. 2869/95 on the fees payable to OHIM, OJ No L 123 of 27.4.2004, p. 85 et seq. 25 Council Decision of 27.10.2003 (2003/793/EC), OJ L 296 of 14.11.2003, p. 20–21: Council Decision approving the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks adopted at Madrid on 27 June 1989. 26 S. the detailed analysis on the international registration on the basis of a CTM (application), and international registrations designating the European Community, below Bo¨sling, Art. 145 et seq. 27 English, French or Spanish. 28 S. in detail Bo ¨ sling, Art. 146 respectively Art. 151 et seq. 29 Status on 15 April 2014: http://www.wipo.int/madrid/en/members Õ list of members (signatories to the Madrid Agreement and/or the Madrid Protocol). 30 I.e. international registrations on the basis of a CTM (application) as well as designation of the EU in an IR application; in detail below Bo¨sling, Art. 145 et seq; further Karow, in Hasselblatt (ed.), Mu¨nchener Anwaltshandbuch Gewerblicher Rechtsschutz, § 37. 31 S. OAMI statistics: international registrations as a percentage of CTM applications – 15,6 % of total applications 2010–2011; 14,9 % of total applications in 2011–2012; s. oami.europa.eu Õ Annual Report 2012, p. 12 (table 2).

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II. Historical overview: the way to the Community trade mark 15

The CTMR was enacted on 20 December 1993 and became operational on 1 April 1996.32 The CTM thus looks back on a history of some 20 years and, with that said, appears to be an almost seasoned, and certainly a well-established intellectual property right. It is safe to say that, despite the necessity of reforms of the current system,33 the CTM has successfully mastered its first attempts to walk. But some of the salient features of the Community system we have grown accustomed to over the past two decades were far from self-evident when the preceding drafts were negotiated. With hindsight, characteristics of the CTM – such as their Community-wide effect or the principle of coexistence – have to be seen as milestones on the way to a modern, balanced and functioning European trade mark law. To fully appreciate the benefits of the Community trade mark regime and to grasp the dimension of the achievement of having one trade mark with uniform protection throughout the Community instead of a multitude of national rights, it is worth taking a closer look at the drafting history of the CTMR. A brief overview of the most important steps towards the Community trade mark is given below, not least because of the purposive interpretation methodology employed by the CJ.34

1. Initial steps towards a unified European trade mark system (1959) 16

Analysing the almost 35-year-long drafting history that led to the CTMR inevitably entails a tour d’horizon of the development of the EU itself. The first efforts made towards setting up a unitary trade mark system for the common market were sparked by the Commission in 1959; the European Economic Community and the European Atomic Energy Community had just emerged – as of 1 January 1957 – from the former European Coal and Steel Community,35 the EEC Treaty having been in force for less than two years.36 The original six founding members were France, (West)Germany, Italy and the Benelux countries. When the CTMR became operational – as of 1 April 1996 – the EU37 had already grown in the size to 15 members, now covering almost the

32 This date was fixed by the Administrative Board upon recommendation of the President of the Office under Art. 143 (3) of Reg. 40/94 (old version); applications for CTMs filed within three months preceding that date (i. e. between 1.1. until 31.3.1996) were accorded the filing date of 1.4.1996 as well, as they were ‘deemed to have been filed on that date’ (Art. 143 (4) of Reg. 40/94 (old version)); this was done in order to avoid a deluge of applications on 1.4.1996. 33 As to the reform proposals by the Commission of 27.3.2013, s. below mn. 42–61. 34 S. instead of many, CJ Case C-306/05 Sociedad General de Autores y Editores de Espana v Rafael Hotels [2006] ECR I – 11519, mn. 31: ‘It should be noted that the need for uniform application of Community law and the principle of equality require that where provisions of Community law make no express reference to the law of the Member States for the purpose of determining their meaning and scope (…), they must normally be given an autonomous and uniform interpretation throughout the Community’, and at mn. 34: ‘According to settled case-law, in interpreting a provision of Community law it is necessary to consider not only its wording, but also the context in which it occurs, and the objectives pursued by the rules of which it is part’. 35 Founded as of 18.4.1951. 36 Treaty establishing the European Economic Community of 25.3.1957, date of entry into force: 1.1.1958. 37 The European Economic Community was renamed into European Community in 1993 (a Treaty on European Union [Maastricht Treaty] of 7.2.1992, date of entry into force: 1.11.1993) and the European Union in 2009 (Treaty of Lisbon of 13.12.2007, which entered into force on 1.12.2009).

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whole of Western Europe. Since 1996, a further 13 countries have joined the EU,38 including the historic expansion on 1 May 2004, marking ‘the re-unification of Europe after decades of division’.39 The initial attempt to improve trade mark protection at European level dates back to 17 1959 when the then six Member States set up working groups to explore harmonisation opportunities in the field of patent, trade mark and design law. Following an initiative by the Commission on 31 July 1959, the Trade Mark Working Group, which was given the task of drafting a European trade mark system, began its work at the end of 1961.40 Amazingly fast, in April 1964, the Working Group submitted a Preliminary Draft of a Convention for a European Trade Mark, commonly referred to as the 1964 Draft, according to which the European trade mark was supposed to exist alongside national trade marks in the EEC countries within the framework of an independent, integrated trade mark system with a central registration and examination authority.41 As in the field of patent law, however, the work on trade mark law came to a grinding halt due to the general EEC crisis arising at that time, with the result that, for the time being, the 1964 Draft remained unpublished.42

2. Preliminary Draft of a Convention for a European Trade Mark (1964/1973) The Preliminary Draft of a Convention for a European Trade Mark from 1964,43 18 which was not released until 1973, comprised a comprehensive scheme for the protection of European trade marks in the common market and formed an important basis for subsequent drafts.44 The mere fact that the Trade Mark Working Group handed down its finished draft of a European Trade Mark Convention as early as 1964 is remarkable in itself, since around the same time the Industrial Design Working Group handed down its reports stating that, because of the vast differences between the national design laws, harmonisation would be inconceivable.45 This was different in the realm of trade mark law. It was the clear majority opinion 19 among legal scholars and practitioners alike that the needs of a truly unified market called for the creation of a trade mark protection system at Community level.46 This school of thought, most notably the observations by the French Saint-Gal and the German Ro¨ttger,47 clearly inspired the ensuing work on the 1964 Draft.48 38 EU enlargements between 1957 and 1996: 1.1.1973 – Denmark, Ireland and the UK; 1.1.1981: Greece; 1.1.1986: Spain and Portugal became members; 1.1.1995: Austria, Finland and Sweden; after 1996: the largest enlargement so far as of 1.5.2004: ten new countries join the EU – Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovakia and Slovenia; 1.1.2007: Rumania and Bulgaria; 1.7.2013: Croatia joins the EU. 39 S. http://ec.europa.eu/enlargement/policy/from-6-to-28-members/index_en.htm. 40 Under the chairmanship of the former president of the Dutch Octrooiraad, Dr. De Haan. 41 S. Memorandum on the Creation of an EEC Trade Mark, IIC 1976, 367, 368; Krieger, IIC 1973, 155, 171. 42 Krieger, IIC 1973, 155, 171; Memorandum on the Creation of an EEC Trade Mark, IIC 1976, 367, 368; Beier, in Schricker/Bastian/Albert (ed.), Die Neuordnung des Markenrechts in Europa, p. 59, 63. 43 Department of Trade and Industry: ‘Proposed European Trade Mark: Unofficial Translation of a Preliminary Draft of a Convention for a European Trade Mark’, published by HMSO, 1973; analysed and summarized by Beier, in Schricker/Bastian/Albert (ed.), Die Neuordnung des Markenrechts in Europa, p. 59 et seq. 44 Memorandum on the Creation of an EEC Trade Mark, IIC 1976, 367, 369. 45 Report from 1962; s. the overview regarding the steps to the Community design by Hasselblatt, in Hasselblatt (ed.), CDR, Art. 1 CDR, mn. 12–32. 46 Instead of many s. Ro ¨ ttger, GRUR 1959, 329–334; Saint-Gal/Ro¨ttger, GRURInt 1960, 500–502; Finnis/Croon/Heydt, GRURInt 1960, 337 et seq.; Heydt, GRURInt 1973, 540 et seq., with a focal point on the use obligation. 47 Ro ¨ ttger, GRUR 1959, 329–334; Saint-Gal/Ro¨ttger, GRURInt 1960, 500–502. 48 Beier, in Schricker/Bastian/Albert (ed.), Die Neuordnung des Markenrechts in Europa, p. 59, 60.

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The main features of the 1964 Draft, which were already widely recognized in the early 1960 s, can be summarised as follows:49 – creation of a uniform EEC mark for the entire territory of the common market; – application/registration through a European Trade Mark Office; – wide notion of marks that are eligible for registration, including get-ups and threedimensional marks; – protection of service marks; – ex-officio examination with regard to absolute grounds for refusal with subsequent publication; – examination of earlier rights in opposition proceedings, whereby not only Community marks would be recognised as earlier rights, but also national marks and international registrations with protection in one of the Member States, and vice versa; – far-reaching restriction of injunctive relief with regard to ‘parallel imports’ (which later turned into the EU-wide exhaustion principle); – revocation because of non-use for a continuous period of five years.

3. Memorandum on the Creation of an EEC Trade Mark (1976) In 1973, the Commission resumed its work on the creation of an EEC trade mark. As a first step, the 1964 Draft was published in order to obtain reactions from public and trade entities. Numerous statements from various national and international organisations were submitted, all emphasising the need for a trade mark protection scheme at Community level. A special working party was set up by the Commission,50 which led to the publication of the rightly highly regarded Memorandum on the Creation of an EEC Trade Mark in 1976.51 The approach envisaged in this Memorandum already reflects material characteristics of the later CTMR. 22 The Memorandum used the quintessential features of the 1964 Draft as a startingpoint, but did not endeavour to provide a concrete text proposal. Its primary aim was to lay the groundwork for the creation of a Community system of trade mark law, taking into account inter alia the first enlargement of the Community in 1973,52 substantial changes in some of the Member States’ trade mark laws,53 and the continued development of Community policy and law, particularly as a result of recent decisions by the CJ.54 23 The methodological approach pursued in the Memorandum is in some ways both down-to-earth and visionary, the former by strictly evaluating the status quo, including commercial and legal realities, the latter by envisaging and outlining the indispensable prerequisites for a trade mark protection scheme at Community level without neglecting the national systems. 24 Three aspects of the comprehensive analysis contained in the Memorandum merit particular mention. First, the Memorandum is based on the premise that the assessment of the need for a Community trade mark and the determination of its legal form must 21

49 1964 draft published (unofficial translation) by HMSO, 1973; summaries by Beier, ibid, p. 59, 63 and Krieger, IIC 1973, 155, 171. 50 Formed in September 1974, comprising officials of the Commission and experts from the academic world, industry sectors and private practice (Mr. Beier, Director of the Max Planck Institute, Munich; Mr. Thrierr, Deputy Director-General of the Union des Fabricants, Paris; Mr. Burrell, Queen’s Counsel, London). 51 Published in IIC 1976, 367–406. 52 By three new Member States, namely Denmark, Ireland and the UK. 53 In the Benelux countries, France, Germany and the UK. 54 1976 Memorandum, mn. 5–7.

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be in line with the objectives of the Community. This entails not only promoting ‘throughout the Community harmonious development of economic activities (and) a continuous and balanced expansion’, but also includes ‘the abolition, as between Member States, of obstacles to freedom of movement for goods and services and the institution of a system ensuring that competition in the common market is not distorted’.55 These fundamental principles56 are now enshrined, in parts almost identically worded, in recital 2 of the Preamble to the CTMR. Owing to the differences in Member States’ national laws, however, the (then) existing legal framework reflected the economic functions of trade marks only at the level of the individual states. The Memorandum thus concludes that the time was ‘ripe for the creation, alongside existing national systems of trade mark law, of an autonomous and modern Community system for the protection of trade marks enabling undertakings to market their products throughout the territory of the common market under the same trade mark’.57 At the same time it was recognized that, due to the principle of territoriality of national trade marks, internal borders could not be surmounted by a mere approximation of the Member States’ national protection regimes. Although it was not seen as an acceptable alternative to the creation of a uniform and Union-wide protection system, harmonisation of national trade mark law was recommended because of its important complementary function.58 Second, acknowledging the need for a supranational trade mark right to surmount 25 internal borders within the Community, the drafters of the Memorandum briefly analysed whether international registrations under the Madrid Agreement of 1891 or the Trademark Registration Treaty (TRT), which was signed in 1973 but had not yet entered into force,59 could be viable alternatives. This was rightfully rejected, as both – in the case of the TRT contemplated – systems provided only for the acquisition of a bundle of national trade mark rights via a single application.60 Interestingly, as early as 1976, the envisaged Community trade mark- and the Madrid system were described as compatible protection means that ‘may usefully complement one another’.61 As is widely known, it took another 28 years before the EU indeed acceded to the Protocol related to the Madrid Agreement in 2004.62 The third aspect of the Memorandum’s analysis deserving special mention is the 26 tenacity in promoting the unitary and autonomous character of the intended EEC mark. The Memorandum emphasises the redeeming qualities of uniform trade mark protection throughout the Community for industry, commerce and consumers alike,63 and at the same time enhances competition in the common market. Whereas national trade marks naturally stimulate predominantly national trade, a Community trade mark would go further and promote expansion in inter-state trade to a greater extent than national trade marks.64 Especially the latter aspect – relating to the pro-competitive side effect, which from today’s point of view is almost trivial – needs to be stressed, as this approach was anything but normal at the time. 55

1976 Memorandum, mn. 8 and 9. Enshrined in Artt. 2, 3 EEC (repealed); now these objectives are regulated in Artt. 2, 3 TFEU. 57 Memorandum, mn. 22, 25, s. in comparison rc. 2 third sentence Preamble CTMR. 58 Memorandum, mn. 35–38, s. also Knaak, GRURInt 2001, 665, 666. 59 S. the remarks on the TRT by Krieger, IIC 1973, 155, 170, 171. 60 Memorandum, mn. 40–43. 61 Memorandum, mn. 43. 62 S. above mn. 12–14. 63 Consumers could obtain goods or services throughout the Community which are of the same origin, quality and character, and bearing Community-wide the same trade mark; manufacturers, distributors and dealers could use trade marks which are effective throughout the territory of the Community and which universally enjoy equal protection; s. Memorandum mn. 14–18. 64 Memorandum mn. 20. 56

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This praise of trade marks as devices that actually stimulate competition has to be seen against the backdrop of a number of decisions handed down by the CJ in the 1960 s and 70 s showing a – to put it mildly – sceptical attitude towards trade marks, which was shared by the Commission. According to this view, the exercise of trade mark rights ‘tends to contribute to the partitioning off of the markets and thus to affect the free movement of goods between Member States, all the more so – unlike other rights of industrial and commercial property – it is not subject to limitations in point of time’.65 Luckily, these misgivings as well as the ‘misguided’66 doctrine of ‘common origin’ developed in Hag I, were put to rest by later decisions,67 but only well after the Memorandum was drafted. The notion pursued back then by the Court and the Commission was based on a misinterpretation of the provisions on the elimination of quantitative restrictions under Artt. 30, 36 on the one hand and Art. 85 EEC Treaty on the other.68 This ill-conceived view was based on the assumption that Art. 36 ‘cannot limit the field of application of Art. 85’.69 In fact, precisely the opposite is true. Restrictions of trade are just the flipside of the coin when exclusive intellectual property rights are being (successfully) enforced, as the infringer is prevented from unauthorised use (of a trade mark-protected sign, a copyrighted work, a patented invention, etc.). Thus, every exclusive IP right is tantamount to a state-granted monopoly, and necessarily entails restrictions for third parties. This simply reflects the subject matter of trade marks, designs, patents, and so forth. The drafters of the Rome Treaty were well aware of that, as they provided a solution (originally) contained in Artt. 30, 36 of the Rome Treaty (EEC Treaty). 28 Prohibitions or restrictions in respect of importation, exploitation or transit resulting from the exercise of industrial property rights were expressly exempted from day one on under Art. 36 1st sentence of the Rome Treaty. Therefore, except for cases of arbitrary discrimination or disguised restriction on trade in the meaning of Art. 36 2nd sentence, there was and is no need for recourse to Art. 85 whenever trade mark rights are exercised. It is gratifying to note that, at the latest since the Hag II decision70 of 1990, it is, as far as can be seen, universally accepted that trade marks are ‘an essential element in the system of undistorted competition which the Treaty seeks to establish and maintain’. 29 The far-sighted vision expressed in the Memorandum recognized these pro-competitive effects of trade marks long before it became common ground.71 27

4. Commission Proposal (1980) 30

The next step in the evolution of the CTMR was the Proposal for a Council Regulation on Community trade marks, submitted by the Commission in November 65

CJ Case C-192/73 Hag I [1974] ECR 00731, mn. 11 (emphasis added). Beier, IIC 1995, 769, 771. 67 S. CJ Case C-10/89 Hag II [1990] ECR I-03911, mn. 13; s. also CJ Case C-317/91 Deutsche Renault AG v Audi AG ‘quattro’[1993] ECR I-06227, mn. 19 et seq; CJ Case C-9/93 Ideal Standard [1994] ECR I02789, mn. 33 et seq. 68 The numbering of the respective provisions a few times; Artt. 85, 86 of the EEC Treaty (Rome Treaty) were renumbered under The Amsterdam Treaty (TEC) to Artt. 81, 82 and were again re-named under the TFEU (Lisbon Treaty); Artt. 30, 36 of the EEC Treaty shared a similar fate. 69 S. CJ Joined Cases C-56 and 58/64 Consten and Grundig v Commission [1966] ECR 0424, p. 345. 70 CJ Case C-10/89 Hag II [1990] ECR I-03711, mn. 13; also stressed in later decisions, e. g. CJ Case C104/01 Libertel [2003] ECR I-03793, mn. 48. 71 S. the detailed discussion of the former position of the CJ under mn. 26–34 of the 1976 Memorandum. 66

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1980,72 concurrently with the adoption of a proposal for a trade mark directive addressed to the Member States.73 The Commission Proposal was clearly inspired by the 1976 Memorandum. All of the 31 fundamental concepts and principles contemplated in the Memorandum are reflected in the Commission’s draft regulation. The latter, in turn, for the most part contains the principal characteristics of the later CTMR.74 The salient features of the current CTM legal framework – such as uniform character 32 and equal effect throughout the Community, broad concept for signs eligible for protection, registration requirements, ex officio examination of absolute grounds for refusal, limitation of the exhaustion principle to the Community and so forth – are already enshrined in the Commission Proposal. Many of the deviations from the CTMR are of a merely linguistic nature75 and do not affect the substantive essence of the respective provisions in terms of their content. Unlike in the field of Community design law, there were no hotly debated material issues concerning Community trade marks.76 Despite the many congruities between the Commission Proposal and today’s regula- 33 tion, there are nevertheless some significant differences. Art. 86 of the Commission Proposal provided for the registration of guarantee marks, which is not mirrored by the CTMR, but is now under discussion again.77 Another substantial difference relates to the coexistence of national trade mark rights in the Member States and CTMs. Art. 81 of the Commission Proposal78 essentially provided for a prohibition of double protection of identical and even similar marks, as, upon registration of the CTM, the national mark were to ‘be suspended for as long as the Community trade mark produces its effects’. To the benefit of the existing system, this proposal was not carried through into the CTMR as eventually enacted.

5. Amended Commission Proposal (1984) Then, in 1984, an amended proposal for a Council regulation on the Community 34 trade mark followed.79 In terms of content, the draft regulation remained essentially the same and only minimally revised the previous proposal from 1980. The provisions dealing with absolute and relative grounds for refusal are now drafted in a somewhat more detailed fashion; in relation to the use requirement, the wording has changed to ‘genuine use’,80 and so forth.81 Furthermore, the amended proposal still provides for the ‘suspension approach’, which, at the end of the day, prohibits double protection of the 72

Submitted on 25.11.1980, OJ C of 31.12.1980, p. 1–5. Submitted on the same day, Proposal for a first Council Directive to approximate the laws of the Member States relating to trade marks, OJ C of 31.12.1980, p. 1–5. 74 S. in the main features of Community trade mark law the overview by v. Mu ¨ hlendahl, in Schricker/ Bastian/Albert (ed.), Die Neuordnung des Markenrechts, p. 82 et seq. 75 For example, ‘identical effect’ in Art. 1 (2) of the Commission Proposal instead of ‘equal effect’, ‘serious use’, (Art. 13 (1) of the proposal) instead of ‘genuine use’ under Art. 15 (1) CTMR, different structure, but essentially the same concept of exhaustion under Art. 11 of the proposed regulation and Art. 13 CTMR respectively, etc. 76 Such as ‘the spare parts dilemma’ or the novelty-criterion, s. Hasselblatt, in Hasselblatt (ed.), CDR, Art. 1 CDR, mn. 22–27. 77 S. as to the certification marks as foreseen in the proposal for an amended CTMR of 27.3.2013 below mn. 61. 78 And likewise Art. 81 of the amended proposal from 1984, submitted on 9.8.1984, OJ C 230 of 31.8.1984, p. 1, 2. 79 Submitted by the Commission on 9.8.1984, COM (84) 470 final, OJ C of 31.8.1984, p. 1–55. 80 Art. 13 of the amended proposal. 81 The provisions dealing with observations by third parties, limitation in consequence of acquiescence, examination of application were revised (Artt. 33, 44 and 47 respectively), etc. 73

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same mark at Community and national level. Substantively, however, there are no really significant differences between the 1980 and 1984 proposals. 35 What both draft regulations remain silent about, are two issues of a rather political nature that remained unresolved for over a decade, thereby considerably delaying the entry into force of the CTMR. Although the negotiations on the draft CTMR had practically ended in late 1987, the Member States did not manage to agree on the location of the Office and its languages.82 36 The seat of the Office remained unclear until the early 90 s, in fact until October 1993, when the governments of the Member States decided that the Office should be located in Spain, in a town to be determined by the Spanish government, which, in turn, designated Alicante.83 In the years before, all Member States except Denmark and Portugal had submitted equally meritorious bids out of which the Commission compiled a short list consisting of London, Madrid, Munich and The Hague.84 Therefore, the announcement of Alicante as the seat for the Office was somewhat unexpected. The debate regarding the language regime was equally controversial and ranged from proposals to agree on one language only to the ‘worst case scenario’ of equal treatment of all Member State languages. Obviously, it was especially financial considerations, but also practical aspects, that certainly tipped the scale in favour of limiting the number of official languages and allowing for translations with regard to the other languages.85 The language regime, according to which the languages of the Office shall be English, French, Italian and Spanish, Art. 119 (2), was ultimately agreed upon at a special summit in October 1993.86 A mere two months later, on 20 December 1993, Regulation No 40/94 was enacted.

6. Trade Mark Directive (1988) On 21 December 1988, the Directive to approximate the laws of the Member States relating to trade marks was enacted,87 codified as Directive 2008/95/EC. It requires the Member States to adopt minimum standards for the national protection of trade marks. The legislators deemed it unnecessary to undertake a full-scale approximation of the trade mark laws of the Member States; in fact, it was seen as sufficient ‘if approximation is limited to those national provisions of law which most directly affect the functioning of the internal market’.88 38 The TMDir does not cover procedural aspects; provisions on sanctions, remedies and enforcement of trade mark rights are also left to national law.89 But also from a substantive point of view, by far not all trade mark-specific aspects are covered by the TMDir. First, it should be noted that the Directive does not deal with trade mark rights acquired through use. As explicitly stated in the Preamble, the Directive does not deprive the Member States of the right to continue to protect trade marks acquired through use.90 Second, the Directive does not exclude the application to trade marks of 37

82 S. the detailed and informative view on both of these political issues by v. Mu ¨ hlendahl, IIC 1989, 583, 585–587. 83 Meeting of representatives of the Member States, Head of State and Government level, on 29.10.1993, OJ L 11 of 14.1.1994, p. 36; s. the details commentary on the Office’s seat, below Manea, Art. 2. 84 S. v. Mu ¨ hlendahl, IIC 1989, 583, 585. 85 v. Mu ¨ hlendahl, IIC 1989, 583, 586. 86 v. Mu ¨ hlendahl, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 119 CTMR, mn. 1. 87 Council Directive 89/104/EEC, OJ L 40 of 11.2.1989, p. 1 et seq.; s. also Commission Proposal regarding the TMDir of 25.11.1980, OJ C of 31.12.1980, p. 1–5. 88 Rc. 4 Preamble TMDir. 89 S. rc. 6 Preamble TMDir. 90 Rc. 5 Preamble TMDir.

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national provisions relating to unfair competition, civil liability or consumer protection.91 Moreover, with regard to registered marks, the Member States should remain free to establish the procedural rules concerning registration, revocation and invalidity; it is also left to the discretion of the Member States to determine the effects of revocation or invalidity of national trade marks. The greatest merit of the TMDir, which is of considerable practical importance, has 39 to be seen in the harmonisation of substantive terms that are also characteristic of the Community trade mark. As it is expressly mentioned in recital 8 of the Preamble, one of the main objectives of the approximation of the national laws is that the conditions for obtaining and continuing to hold a registered trade mark should generally be identical in all Member States.92 This is true, for example, for signs which a trade mark may consist of, absolute and relative grounds for refusal or invalidity, rights conferred by a mark, use of trade marks, the exhaustion of the rights conferred by a mark, etc. Accordingly, these harmonised terms are to be identically interpreted on an EU-wide basis both under the TMDir and also under the CTMR. The harmonisation under the TMDir was certainly a major step in the right direction 40 some 25 years ago. However, there have been no substantial revisions to the regime since then, despite the fact that the business environment has changed significantly during this time.93 Furthermore, the harmonisation efforts have been concentrated on a limited number of substantive rules, with procedural regimes remaining mostly nonharmonised. All this has led to substantial divergences that are rightly perceived as jeopardising the intended complementary relationship between the CTM and national trade mark systems.94 It is thus not surprising that recent evaluations have revealed considerable incoherence between the trade mark systems in the Member States, encompassing inefficient procedures, inappropriate practices and outdated tools and instruments. Such shortcomings negatively affect the access to trade mark protection, as well as the legal certainty of this system in general. The Commission is therefore right in noting an urgent need for modernisation and streamlining of the European trade mark system, both at community and national level.95

7. Community Trade Mark Regulation (1993) Shortly after the last open political issues regarding the seat of the Office and the 41 language regime were resolved after years of controversial discussions, the CTMR was adopted on 20 December 1993.96 As a regulation, pursuant to Art. 288 TFEU, the CTMR

91

Rc. 7 Preamble TMDir. Rc. 8 first sentence Preamble TMDir; the CJ has repeatedly stressed, that attainment of the objectives at which the approximation of the laws of the Member States is aiming requires that the conditions for obtaining and continuing to hold a registered trade mark be, in general, identical in all Member States, e. g. CJ C-307/10 IP Translator [2012] (not yet published in ECR – full text available at http:// curia.europa.eu), mn. 41; also emphasised in earlier decisions, e. g. CJ Case C-273/00 Sieckmann [2002] ECR I-11737, mn. 36; CJ Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau ECR [2004] I-01619, mn. 22. 93 Fields/Sheraton, EIPR 2013, 563. 94 Fields/Sheraton, ibid, 563 et seq. 95 Stressed in the Commission Staff Working Paper, Impact Assessment of 27.3.2013, SWD (2013) 95 final, p. 8, mn. 1.3; as to the reform proposals of 27.3.2013 s. below mn. 42 et seq. 96 Council Regulation (EC) No 40/94 of 20.12.1993 on the Community Trade Mark, OJ L 11, 14.1.1994, p. 1 et seq. 92

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does not require implementation by the Member States through national law. The CTMR entered into force on 15.3.199497 and became operational as of 1 April 1996.98

III. Proposals for a revision of the CTMR 42

There is broad consensus that the present system, generally speaking, is functioning well. All in all, the CTMR has stood the test of time. Its foundations remain perfectly valid even after some 20 years, so that there is no need for a major overhaul.99 At the same time, as far as can be seen, it seems to be the unanimous view that the time is ripe for reforms. It has to be borne in mind that at the time the TMDir was adopted, the Berlin wall had just come down, consumers were starting to own home computers, the World Wide Web was about to take shape along with the introduction of the CTM, Yahoo!® and Google® were still ‘dots on the horizon’, and YouTube® and Twitter® not yet in sight.100 In light of this deluge of innovation and globalisation, the existing legal framework has coped amazingly well; it nonetheless appears to be time to adapt the current system to the technological, commercial and political developments over the past 25 years.101 The Commission rightfully deems it necessary to modernise the EU trade mark system by making it more effective, efficient and consistent as a whole, but also by adapting it to the Internet era.102

1. Aim of the reform proposals 43

The reform proposals submitted by the Commission on 27 March 2013 are aiming at a well-targeted modernisation rather than a major overhaul of the current regime.103 The present legislative framework based on the TMDir and the CTMR, as its two main components, needs to be adapted to changed conditions and cleared of inefficient procedures, legal uncertainty and other shortcomings. The proposals for a revision of the CTMR and a recast of the TMDir, seen by the Commission as one package, have as their main common objective the fostering of economic growth and innovation by making trade mark protection in the EU ‘more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security’. These adaptations are to be dovetailed with measures to safeguard coexistence and complementarity between the EU and national trade mark systems.104 97 S. Art. 143 of Reg. 40/94 (which later became Art. 160), the regulation entered into force 60 days following its publication. 98 The first applications could be filed with OHIM as of 1.1.1996, which were accorded the filing date of 1.4.1996. 99 Statement from Commissioner Barnier, s. press release of the Commission of 27.3.2013 (IP 13/287), p. 1; Barnier also rightfully states: ‘Trademarks were the EU’s first success in intellectual property rights. The harmonisation of Member States’ laws in 1989 and the creation of the Community trade mark in 1994 paved the way for other tools for intellectual property protection, such as design protection and the unitary patent’. 100 Stressing these developments Robinson/Pratt/Kelly, 23 Fordham Intell. Prop. Medium & Ent. LJ 731, p. 732, 733. 101 Generally praising the current system, but also stressing the need for reforms, e. g. Fields/Sheraton, EIPR 2013, 563–566; Robinson/Pratt/Kelly, 23 Fordham Intell. Prop. Medium & Ent. LJ 732, 733, 751 et seq; Nurton/Crompton, Managing Intellectual Property 2013 (229), p. 1 et seq. 102 Communication of the Commission of 24.5.2011, ‘A Single Market for Intellectual Property Rights’ COM(2011) 287; s. also rc. 7 of the proposed new Preamble of the CTMR, Commission Proposal of 27.3.2013, COM(2013) 161 final, p. 1, 2. 103 To that end, press release of the Commission of 27.3.2013, IP 13/287, available at http://europa.eu/ rapid/press-release Õ IP – 13–287. 104 Explanatory Memorandum, mn. 1.2, p. 2, of the Proposal for a regulation amending Reg. no 207/ 2009 Community Trade Mark, COM (2013) 161 final of 27.3.2013.

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– – – –

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The main areas of the proposed changes can be summarised as follows:105 44 adapting terminology to the Lisbon Treaty and provisions to the common approach on centralised agencies (inter alia changing ‘Community trade mark’ to ‘European trade mark’ and renaming OHIM ‘European Union Trade Marks and Designs Agency’);106 streamlining procedures for applying for and registering a CTM (‘European trade mark’ according to the terminology of the reform proposal); increasing legal certainty by clarifying provisions and removing ambiguities; establishing an appropriate framework for cooperation between OHIM and national offices in order to enhance convergence of practices and developing common tools; alignment of some of the proposed provisions, conferring powers on the Commission in order to adopt certain rules to Art. 290 TFEU.

2. Study by the Max Planck Institute (2011) Along with the submission on the proposal to amend the CTMR and the recast of the 45 TMDir, the Commission presented its impact assessment,107 which was preceded by an extensive evaluation and consultation process. The centrepiece of this evaluation, which started with a ‘consultation on trade marks’ in 2008,108 was a comprehensive Max Planck Institute study tasked by the Commission and carried out between November 2009 and February 2011.109 The purpose of the MPI Study was to provide the Commission with an in-depth assessment of the overall functioning of the trade mark system in Europe as a whole, both at Community and national level. It was based on a non-exhaustive list of evaluation questions grouped around two interrelated tasks: assessment of the links and interfaces between the CTM system and the national trade mark systems, and an analysis of the functioning of the CTM system including its administration by OHIM. The MPI Study, in turn, was complemented by further surveys, including an online survey among users of the CTM system, and statements of user organisations.110 It is obviously beyond the scope of this commentary to summarise the plethora of 46 well-reasoned observations put forward in the 278-page study submitted by the MPI, let alone to embark on a more in-depth assessment of it. It must suffice here that, based on solid fact-finding and a profound legal analysis, the MPI study revealed that the CTM system is currently working well and that a majority of users favour retaining most of the existing CTM procedural rules, but along with a full array of adjustments that appear to be called for.111 In many respects, the Commission Proposal is based on the MPI study and – for example with regard to measures for more far-reaching harmonisation – goes even further than what was considered appropriate in the MPI study.112 On 105

Explanatory Memorandum, ibid, mn. 1.2 in conjunction with mn. 5.1–5.5. Furthermore, a new Art. 123 b CTMR would be inserted, defining all the Office’s (or, under the terminology of the Commission Proposal, the ‘Agency’s’) tasks, including those which stem from other legal acts and are not related to the EU trade mark system; s. draft proposal of 27.3.2013, COM (2013), 161 final, p. 10, 37. 107 Commission Staff Working Paper – Impact Assessment, 27.3.2013 SWD(2013) 95 final. 108 Carried out via the European Business Test Panel, available at http://ec.europa.eu/yourvoice/ebtp/ consultations/2008_en.htm. 109 ‘Study on the Overall Functioning of the European Trade Mark System’, submitted on 15.2.2011 by the MPI, available at http://ec.europa.eu/internal_market/indprop/tm/index_en.htm. 110 E. g. economic analysis of certain aspects of the CTM system carried out by INNO-tec, the online survey was performed by the Allensbach Institut, s. part II. chapter 3 and 4 of the MPI Study. 111 Re. the evaluation of the CTM system and OHIM’s performance s. MPI Study p. 39, mn. 3.2 and p. 40, mn. 3.7; s. also the conclusions in part VII, p. 251 et seq. 112 Nurton/Crompton, Managing Intellectual Property, 2013 (229): 8, p. 6. 106

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the other hand, the Commission Proposal disregards recommendations set out in the MPI study, such as giving a full account of the functions performed by trade marks in the Preamble to the CTMR and the TMDir without blurring the contours of legal provisions determining the ambit of trade mark law,113 which would have to be welcomed.

3. Proposal for an amended CTMR (2013) 47

The Commission submitted its proposal for various amendments of the CTMR on 27 March 2013, along with a proposed recast of the TMDir and a detailed working paper on the impact assessment.114 The Commission regards the parallel proposals for a revision of the CTMR and a recast of the TMDir as one package. The grounds for the initiative, its objectives and the general context are outlined in the explanatory memorandum and the impact assessment.115 The reform proposals were originally conceived to be adopted in spring 2014. Owing to controversial discussions regarding some of the amendments, both reform proposals were put on hold. At the time of the editorial deadline of this commentary, there was no fixed time frame for the legislative procedure.

4. Comment The Commission proposals contain a plethora of changes to both the CTMR and the TMDir.116 The proposed changes to the TMDir are even more far-reaching than those related to the CTMR. All in all, the proposed changes to the CTMR, especially those aimed at modernisation of procedural aspects, are generally to be welcomed. Other suggested amendments, most notably stripping trade marks of their ‘other functions’ are to be rejected. Furthermore, some areas analysed in the MPI study seem to have been ignored in the Commission proposal, such as measures to increase the consistency of decision-making by OHIM.117 49 The suggested amendments will be discussed in this commentary where appropriate, particularly those affecting CTMR provisions.118 Some of the most important CTMR amendments as envisaged in the Commission Proposal will be briefly analysed below: 48

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a) Adaptation of terminology. The proposed change of terminology from ‘Community trade mark’ to ‘European trade mark’ must be rejected. Not all the European countries are members of the European Union, so the designation ‘European trade mark’ is incorrect and misleading. The term ‘European Union trade mark’ would be accurate and thus better suited, and would soon become known by the abbreviation EU trade mark, as the CTM, in fact, is already commonly referred to. Regarding the name of the agency, the recommended change to ‘European Union Trade Marks and Designs Agencies’ is acceptable. The same holds true for the insertion of Art. 123 b), defining the tasks of the Agency. 113

S. MPI Study, p. 95–105, mn. 2.145–2.187. Proposal for a Regulation of the European Parliament and of the Council amending Reg (EC) No 207/2009 on the Community Trade Mark of 27.3.2013, COM (2013) 161 final; Commission Staff Working Paper – Impact Assessment, accompanying document to the proposals for amendments of the CTMR and the TMDir, 27.3.2013, SWD (2013) 95 final; s. also press release of the same day, IP/13/287. 115 S. explanatory Memorandum, as part of the proposal for an amended CTMR, ibid, mn. 1.2 (p. 1–11 of COM (2013) 161 final); Working Paper-Impact Assessment, SWD (2013) 95 final; as to the aims above mn. 43–44. 116 S. the solid overviews on the changes as to the TMDir and the CTMR, Fezer, GRUR 2013, 1185 et seq., and Sack, GRUR 2013, 657–665, and Hasselblatt/George, IPRB 2013, 205–209. 117 Likewise, Fields/Sheraton, EIPR 2013, 563, 565. 118 The amendments in relation to Art. 7 and Art. 8 will be discussed under the respective provisions, s. below Hasselblatt and Jaeger-Lenz, Artt. 7, 8. 114

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b) Streamlining of procedural provisions. The proposed procedural changes are, for the most part, to be welcomed. Indeed, as more than 96 % of the applications are now directly filed though OHIM’s filing system, it does make sense to abolish the option for filing CTM applications at the national offices.119 Also the linkage of the filing date to the payment of the application fee, as provided for in the revised Art. 27, is acceptable as it avoids the opportunity for applicants to file ‘test applications’, i. e. not to pay the application fee if a deficiency or objection is raised by the Office.120 Therefore, it does make sense for the obligation to pay the application fee to be triggered when the application is filed, regardless of whether the application is withdrawn within one month. This proposed change has meanwhile become a reality. As of 24 November 2014, OHIM has been examining trade mark applications and dealing with requests related to them after payment has been effectuated.121 This linkage of the examination of an application to its payment is to be welcomed, as it avoids processing files that will never be paid for. The Commission further proposes making drastic changes to Art. 38 and Art. 155 and abolishing the current search regimes entirely. This would speed up procedures and take account of the fact that the present regimes on searches provide neither a reliable clearance tool nor a fully comprehensive monitoring of the register. Moreover, more reliable, faster and relatively inexpensive search alternatives are readily available, so applicants show very little interest in obtaining results of national searches from those offices taking part in the optional system anyhow.122 It should be noted, though, that according to the MPI study very few users expressed support for changing the mandatory search for earlier CTMs into an optional service;123 to say nothing of their appreciating the abolition of the search system altogether. Departure from the present search regime would have the positive side effect of reducing the duration and complexity of the registration procedure, as it would be possible to abolish the current one-month period between the Office’s notifying the applicant of the search reports and publication of the application.124 The upside is that the proposed amendment of Art. 40 would facilitate the submission of observations by third parties. The deletion of the publication date of the CTM application in question would streamline proceedings as third parties could file observations as soon as they became aware of an application.125

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54

c) Deletion of requirement of ‘graphic representability’. The prerequisite that signs 55 must be capable of ‘being represented graphically’ is outdated and creates legal uncertainty. This would be remedied by the language proposed by the Commission, according to which signs must be capable of ‘being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor’.126 This modernised wording enhances legal certainty, most notably with regard to non-traditional marks, and would have the 119

Amendment of Art. 25, according to which applications then would have to filed at the agency (only). S. Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, explanatory memorandum p. 6, proposal for revised language of the provision, p. 16. 121 S. OHIM News of 27.10.2014, https://oami.europa.eu/ohimportal/en/news/-/action/view/1593085. 122 S. Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, explanatory memorandum p. 6, proposal for revised language of the provision, p. 19, 51. 123 MPI Study of 15.2.2011, p. 40, mn. 3.7. 124 S. Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, explanatory memorandum p. 6, proposal for revised language of the provision, p. 19 re. amendment of Art. 39. 125 S. Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, explanatory memorandum p. 6, proposal for amended CTMR, p. 19, 20. 126 Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, explanatory memorandum p. 7, proposal for revised language of the provision, p. 9. 120

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greatest impact on sound marks, as the applicant would no longer have to submit ‘silly sonograms that no one could read’.127 The subject matter of sound marks can be more precisely identified and represented by a sound file rather than by means of graphic representation. Whether the proposed changes to the definition of a CTM under Art. 4 will also have an impact on other non-traditional marks, such as olfactory marks, remains to be seen. d) Proposed changes to the wording of Art. 9 CTMR. The Commission proposes significant changes to Art. 9, which deserve support only in some cases. The insertion of the words ‘without prejudice to the rights of the proprietors acquired before the filing date of the priority date of the CTM’ under the revised version of Art. 9 (2) is to be welcomed, as it clarifies that infringement claims are without prejudice to earlier rights.128 57 In contrast, the proposed changes to Art. 9 (1)(a) and (b), putatively intended to ‘clarify’ that in cases of ‘both double-identity and similarity it is only the origin function which matters’,129 are to be rejected outright. It might well be that the recognition of additional trade mark functions ‘has created legal uncertainty’, as stated in the explanatory memorandum, probably meant as an attempt at explanation. Indeed, the case law developed by the CJ – according to which the functions of a trade mark include not only the essential function which is to guarantee the origin of the goods or services to consumers, ‘but also its other functions, in particular, guaranteeing the quality of the goods or services in question and communication, investment or advertising’,130 – has not been entirely consistent. It would be erroneous, however, to throw these valuable principles overboard, even if they may not have matured into a solid platform of consistent decision-making. Instead, the CJ, as the ultimate arbiter, should be given the opportunity and time to further develop the case law on the ‘other functions’ of trade marks, as they are of paramount importance for a modern trade mark concept. Moreover, there is no legal justification for stripping trade marks of their ‘other functions’, which is particularly obvious in the double identity scenarios. As enshrined in the Preamble, in cases of double identity of the conflicting signs, protection afforded by the CTM ‘should be absolute’,131 and according to Art. 16 (1) 2nd sentence TRIPs the likelihood of confusion ‘shall be presumed’.132 Furthermore, as is conceded by the Commission in its working paper, trade marks are essential marketing tools for modern business.133 As such, trade marks nowadays go far beyond the scope of the traditional notion of a source identifier. Therefore, instead of limiting infringement cases to 56

127

Nurton/Cromptom, Managing Intellectual Property 2013 (229), p. 5, citing v. Bomhard. S. Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, explanatory memorandum p. 8, proposal for revised language of the provision, p. 11. 129 Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, explanatory memorandum p. 8 (emphasis added). 130 CJ Case C-487/07 L’Ore ´al S.A. v Bellure N.V. [2009] ECR I-05185, mn. 58; CJ Case C-48/05 Adam Opel v Autec [2007] ECR I-1017, mn. 21; CJ Case C-245/02 Anheuser-Busch [2004] ECR 1–10989, mn. 59; CJ Case C-206/01 Arsenal Football Club [2002] ECR I-10273, mn. 51; s. detailed analysis on the ‘new’ function theory of the CJ by Hasselblatt/Kipping, KSzW 2010, 236, 237 et seq., and below SkrzydloTefelska/Zuk, Art. 9 mn. 276 et seq. 131 Rc. 8 Preamble to the CTMR. 132 Irrespective of whether the presumption under Art. 16 (1) second sentence TRIPs is rebuttable or non-rebuttable, this provision was the result of a compromise at the international level; in any event, this provision does not form a basis to reduce double-identity scenarios to cases that actually lead to a confusion as to the source; Art. 16 (1) second sentence TRIPs was clearly meant to provide broader protection for double-identity cases, and not the other way round; rightfully stressed by Fezer, GRUR 2013, 1185, 1192. 133 Commission Staff Working Paper – Impact Assessment, 27.3.2013, SWD (2013) 95, final, p. 5. 128

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scenarios in which the origin function is affected, the other functions should be emphasised and addressed in the Preamble, as suggested in the MPI Study.134 The further proposed changes regarding Art. 9, and the insertion of Artt. 9 (a) and 9 58 (b), on the other hand, are to be noted with satisfaction. Indeed, not only traditional usage of a sign as a trade mark, but also the use of a sign as (a part of) a trade or company name may constitute an infringement.135 Furthermore, consignments from commercial suppliers should be seen as a trade mark infringement even where the goods located outside the EU have been sold, offered, advertised and shipped to private consumers.136 This would certainly have a deterring effect on commercial suppliers and discourage the ordering and sale of counterfeit goods over the Internet.137 e) Further amendments aimed at increasing legal certainty. The Commission 59 acknowledges that the Philips/Nokia judgment138 has placed an ‘inappropriately high burden of proof on right holders, and (is) hindering (the) fight against counterfeiting’.139 It is therefore gratifying to see that under the proposed Art. 9 (5), right holders would be able to prevent unauthorized parties from bringing goods into the customs’ territory bearing essentially identical trade marks, regardless of whether they are released for free circulation. Likewise, it is to be welcomed as a viable contribution to combatting counterfeiting that under the revised Art. 9 certain preparatory acts, such as use of the protected trade mark on get-up, packaging or other means, would be regarded as infringing acts. The transformation of the IP Translator-decision,140 according to which goods and 60 services need to be identified with sufficient clarity and precision, would be a positive move.141 Finally, the introduction of European certification marks (proposed Artt. 74 (b)–74 (k)) appears to be sensible, as some public and private bodies do not fulfil the requirements for obtaining collective trade marks. There is thus a need for the protection of such certification marks at EU-level.142

B. Community trade mark protection at a glance The CTMR sets the framework for a stand-alone system for the registration of 61 unitary trade mark rights with equal effect throughout the EU, alongside and linked to the national trade mark systems of the Member States. Certainly, it can be said that the CTM has proven to be successful, and the EU trade mark system has stood the test of time.143 As is widely known, however, there are far-reaching reform proposals under134

S. MPI Study, p. 95–105, mn. 2.145–2.187. Proposed amendment of Art. 9 (3)(d) CTMR. 136 S. proposed insertion of Art. 9 (4) CTMR. 137 Rightly emphasized by Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, explanatory memorandum p. 8, proposal for revised language of the provision, p. 9. 138 CJ Joined Cases C-446/09 and C-495/09 Philips/Nokia [2011] ECR I-12435. 139 Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, explanatory memorandum p. 8, proposal for revised language of the provision, p. 9. 140 CJ Case C-307/10 IP Translator, not yet published in the ECR – available at http://curia.europa.eu. 141 S. Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, explanatory memorandum p. 10. 142 S. Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, explanatory memorandum p. 10, proposal for revised language of the provision, p. 25–27; s. also Art. 86 of the 1980 Commission Proposal which provided for the registration of guarantee marks, proposal submitted by the Commission on 25.11.1980, OJ C of 31.12.1980, p. 1 et seq. 143 To that end, s. press release of the European Commission of 27.3.2013 (IP/13/287), p. 1. 135

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way.144 Although the foundations of the framework remain solid, the system is in need of streamlining and modernization. The ups and – comparatively few – downs of the current system are summarised below.

I. Advantages of Community trade marks 62

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Community trade marks offer many advantages, not least in comparison with the other international protection options.145 The major advantages of the Community trade mark are presented briefly below: – The CTM is unitary in nature and has equal effect throughout the entire area of the Community. The CTM is an exclusive right enabling the proprietor to prohibit any third parties from using the sign in their commercial or industrial activities. – Compared with several – with regard to the entire EU up to 26146 – national trade mark registrations, it is considerably more efficient and thus at the same time less expensive to pursue a single application and registration procedure; in doing so, the applicant is given the opportunity, via the choice of languages, of having a say in what language is to be used in any later procedures before the Office. – OHIM offers e-filing which is already widely used; a total of over 95 % of CTM applications received by the Office are lodged through e-filing.147 – Similar to the design field, where the Office provides a fast-track design option to its users, which – under certain conditions – allows for registration within two working days,148 as of 24 November 2014 there has been an accelerated CTM registration procedure. Under this fast-track procedure, which is free of charge, the application is published in half the time or less, compared to regular applications. For an application to qualify for – and remain in – the fast track, applicants amongst other things need to select the goods/services from OHIM’s harmonised database and pay at the end of the application process or immediately after submission.149 – A CTM applicant can claim the priority of an identical national or international registration filed for the same goods and services during a period of six months from the date of filing of the first application and thereby benefit from the effects of the earlier filing date. If the first application is a CTM, it can also be used to file later identical marks in other countries claiming the priority of the earlier CTM (application). – The seniority of national trade marks and international registrations having effect in a Member State can be claimed by the (same) proprietor for CTMs, provided that the marks and the goods or services are identical; senior national trade marks can thereby 144

S. mn. 42–61 above. S. ‘10 reasons for choosing the CTM’: http://test2qaoami.europa.eu/ows/rw/pages/CTM/tenReasons.en.do. 146 The Benelux countries maintain a regional trade mark protection regime (Belgium, Netherlands, Luxembourg); additionally, there are the national protection systems of the further 25 EU Member States. 147 OHIM Annual Report 2012, p. 12: e-filing; 2010–94 %, 2011–95 %; 2012–96,3 %; s. explanatory memorandum to the proposal for regulation amending the CTMR, COM (2013) 161 final of 27.3.2013, p. 5. 148 The applicant must have a current account with OHIM, use e-filing, either not claim priority or attach priority documents, use Eurolocarno for product designation and classification, and both owner and representative must use a pre-existing OHIM ID Number in application, s. OHIM Annual Report 2012, p. 15; as to the fast-track design option under the CDR, s. Hasselblatt, in Hasselblatt (ed.), Community Design Regulation, Art. 1 CDR mn. 43, and in more detail, George, in Hasselblatt (ed.), Community Design Regulation, Art. 35 CDR, mn. 7. 149 OHIM News of 27.10.2014, s. https:/oami.europa.eu/ohimportal/eu/news/-/action/views/1593085. 145

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be ‘embedded’ in identical CTMs; the need to maintain national trade marks to the same extent is thus eliminated after the Community trade mark has been registered. In the event of an (imminent) loss of trade mark protection at Community level because the CTM application is refused, withdrawn or deemed to be withdrawn, or the CTM ceases to have effect, the filing or priority date and, where appropriate, seniority can be claimed by converting the CTM (application) into national trade mark applications.150 The CTM constitutes an EU-wide monopoly right, even if it has been put to genuine use in only one part of the Community, for example only in a few Member States or in just one (larger) Member State.151 Consequently, the obligation of use is relatively easy to meet. It should be noted, though, that the position voiced in the Joint Statement by the Council and the Commission of 20 December1993 according to which genuine use of a CTM within the meaning of Art. 15 CTMR in one Member State is regarded as sufficient for use ‘in the Community’ is under scrutiny; several Member States are calling for revision of this position, as it is no longer congruent with the actual dimensions of the Community market; in fact, the threshold for a positive finding of ‘genuine use’ should be raised in order to strengthen the national systems and to maintain their perception of coexistence.152 CTMs constitute prior rights vis-a`-vis all subsequent trade marks and other conflicting rights in all EU Member States, which allows proprietors not only to protect their exclusive rights at Community level but also to prevail over later national rights in the Member States. The rights conferred by a CTM can also be enforced against parallel imports from non-EU countries; the principle of ‘international’ exhaustion is expressly no longer applicable in this respect, as the exhaustion principle is limited to EU-wide exhaustion.153 In many cases, gaps in an international trade mark protection scheme can be closed sensibly only by Community trade marks; furthermore, the CTM can be combined with the international protection options provided for under the Madrid system, since the EU joined the international registration system with effect of 1 October 2004. Furthermore, the Community trade mark offers procedural advantages as well: in an infringement action, the claimant may choose whether to litigate before a Community trade mark court having jurisdiction for the entire Community (Art. 97 (1) to (4), Art. 98 (1)) or before the Community trade mark courts having jurisdiction 150

S. the detailed analysis on conversion below by Ebert-Weidenfelder, Artt. 112–114. Dec. of 2.12.2008 – R 1295/2007-4 – Wilhelm Barthlott v BAYKAN Moda Tekstil Ltd. Sti, mn. 21: genuine use in the meaning of Art. 15 (1) by use of the mark LOTUS only in Germany and the Netherlands; OHIM Dec. of 20.6.2012 – R 564/2010-4 – STORM Products Inc. v Sun 99 Limited, mn. 22: genuine use of the CTM STORM by use only within the territory of the Czech Republic; it should be noted that the joint declaration by the Council and the Commission, according to which ‘use which is genuine within the meaning of Art. 15 in one country constitutes genuine use in the Community’ is not part of the legal text and without prejudice to the interpretation of Art. 15 by the CJ; emphasised by the CJ in Case C-149/11 Leno Merken BV v Hagelkruis Beheer B.V., not yet published in ECR – available at http://curia.europa.eu mn. 37–58; the CJ stresses that genuine use ‘in the Community’ in the meaning of Art. 15 (1) has to be determined irrespective of borders of the territory of the Member States; however, at the same time it cannot be ruled out that use of a CTM in a (larger) Member State can constitute genuine use of the CTM in question (mn. 50); s. the detailed discussion below by Nordemann, Art. 15. 152 S. the detailed discussion in the ‘Study on the Overall Functioning of the European Trade Mark System’, submitted by the Max Planck Institute on 15.2.2011, p. 45–47; s. also Nordemann, below Art. 15. 153 S. the detailed analysis below by Nordemann, Art. 15; s. also H. Goddar/A. Ebert-Weidenfeller, in Franzosi (ed.), European Community Trade Mark, p. 223–224 ’International exhaustion: the European dimension’. 151

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where the infringement has been committed or threatened (Art. 97 (5) in conjunction with Art. 98 (2)); the ‘forum shopping’ that makes this possible benefits the plaintiff. 75 – The provisions that apply to the Community trade mark adhere closely to the legal framework that applies to the national trade mark systems harmonised by the Trade Mark Directive, so anyone familiar with (harmonised) national trade mark law of the Member States – at least in substance – will find himself on charted ground. 76 – When there is further enlargement of the EU, all existing CTM applications and registrations will be automatically extended to the new territories, thereby limiting the possibility of attacking them on grounds that become applicable merely as a result of the enlargement.154

II. Disadvantages of Community trade marks 77 78

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The many advantages of the Community trade mark system are set against a few disadvantages, the most important of which are named below: – As an indispensable corollary of the unitary character of the CTM and its equal effect throughout the Community, the CTM cannot be divided up territorially.155 It also follows from the unitary character of the CTM that registration must be refused if absolute grounds for refusal or relative grounds for refusal obtain in only part of the Community.156 – Despite assurances to the contrary and sustained endeavours by the Office, the length of time needed for registration is to be criticised; the procedure up to registration – especially in the event of opposition proceedings – takes approximately nine to twelve months at best/least.157 – The search system provided for in Art. 38 is unreliable and inefficient,158 and thus should be abolished altogether, as envisaged in the reform proposals of 27 March 2013. – Only some of the rights to which the proprietor is entitled (e. g. injunctive relief pursuant to Art. 9 (1), (2), reasonable compensation under Art. 9 (3) 2nd sentence) are comprehensively regulated in the CTMR, whereas the other remedies depend on the relevant national laws of the Member States.159

154 S. Art. 165 CTMR; s. also ‘10 reasons for choosing the CTM’: http://test2qaoami.europa.eu/ows/rw/ pages/CTM/tenReasons.en.do. 155 However, the unitary character of the CTM does not rule out to grant territorially-restricted licences. 156 It should be noted, though, that if it is more difficult for an economic operator to obtain the registration of a sign as a CTM than to obtain the registration of the same sign as a national trade mark, that ‘is merely a corollary of the uniform protection enjoyed by a Community trade mark throughout the territory of the Community’, emphasised by GC Case T-6/01 Matratzen Concord v OHIM [2002] ECR II04335, mn. 59. 157 S. ‘Study on the Overall Functioning on the European Trade Mark System’, presented by Max Planck Institute on 15 February2011, p. 39 (mn. 3.4): the time needed to issue oppositions was seen as ‘unsatisfactory’ (according to 40 % of the agents that participated in the underlying study); v. Kapff, in Fezer (ed.), Handbuch der Markenpraxis, Vol. 1 Gemeinschaftsmarkenverfahren, mn. 2. 158 Likewise Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 38, mn. 5, 17; in that direction also Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 38 CTMR, mn. 1; s. Hagen, Art. 38 below. 159 S. detailed analysis below by To ¨ belmann on measures under the Enforcement Directive 2004/48/EC.

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C. Main features and principles I. Registration principle, Artt. 1 (1), 6 CTMR Under many protection systems of the various jurisdictions in the world, trade mark 82 rights may be obtained by registration and through mere use of the sign in the course of business. The same holds true for most of the trade mark regimes in the Member States. This is different under Community trade mark law. As stressed in recital 7 of the Preamble to the CTMR and is made clear by Art. 1 (1), Art. 6, a CTM should not be obtained otherwise than by registration.160

II. Principle of autonomy 1. Autonomous and self-contained framework for CTMs The CTMR is an autonomous and complete system that deals with – in principle – all 83 substantive and procedural aspects of the Community trade mark, with its own set of objectives and rules peculiar to it.161 In order to strengthen the internal market and make it function smoothly, the lawmakers’ goal was to establish the legal conditions for trade marks enabling the products and services of undertakings to be distinguished by identical means throughout the entire Community, regardless of frontiers.162 For the purpose of pursuing said objective, the CTMR creates ‘one procedural system’ to obtain trade mark rights with uniform protection throughout the Community.163 As such, the CTMR is designed to be a self-contained framework that principally regulates all aspects relating to a CTM. The CTMR is supplemented by the CTMIR, the CTMFR and the rules of procedure 84 of the BoAs,164 which are based on the CTMR.165 As a matter of course, general principles and rules of Community law apply to the CTM system. Other legislative acts of EU law, however, do not take precedence over the CTMR, apart from certain provisions of the TEU, e. g. in relation to the free movement of goods,166 as well as the provisions (especially Artt. 13 and 14) of the regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs,167 as expressly stated in Art. 164 CTMR. A further expression of the principle of autonomy is that proceedings regarding 85 validity, ownership and infringement of CTMs are conclusively regulated in the CTMR. Once the CTM has been registered, until and unless successfully attacked, CTM courts 160 S. detailed discussion below, Hasselblatt Art. 6 mn. 1–4, also with regard to protection of wellknown marks within the meaning of Art. 6bis of the Paris Convention. 161 GC Case T-322/03 Telefon & Buch Verlagsgesellschaft v OHIM (WEISSE SEITEN) [2006] ECR II00835, mn. 30; GC Case T-32/00 Messe Mu¨nchen v OHIM (electronica) [2000] ECR II-3829, mn. 47. 162 Rc. 2 of the Preamble to the CTMR. 163 Rc. 3 of the Preamble to the CTMR. 164 Commission Regulation (EC) No. 216/96 of 5 February 1996 laying down the rules of procedure of the BoAs of the Office, OJ L 28 of 6 February 1996, p. 11, amended by Commission Regulation No. 2082/ 2004 of 6 December 2004, OJ L 360 of 7 December 2004, p. 8. 165 S. e. g. Art. 162 CTMR re. Community implementing provisions (CTMIR, CTMFR). 166 Art. 28 TEU (ex Art. 23 TEC) et seq., especially Art. 36 (ex Art. 30 TEC). 167 Council Regulation (EC) No. 510/2006 of 20 March 2006; s. detailed analysis by Hallemans, Art. 164 below.

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and national courts have to treat the mark as valid. The only means to attack a CTM are those enshrined in the CTMR; there are no national mechanisms to invalidate a CTM.168

2. Complementary application of national law Generally speaking, therefore, the CTMR contains the basic legislation establishing the CTM system determining inter alia who is entitled to apply for a CTM, what signs can be registered, what rights are conferred by a CTM, grounds for revocation and invalidity, without need for further national legislation.169 The CTMR thus applies independently of any national system.170 National law of the Member States, or in the case of Art. 3 the terms of the law governing the legal entity in question,171 applies only if and to the extent that the CTMR contains an explicit or implied reference to that effect. As there are quite a few sections providing for the complementary application of national law, the autonomous approach enshrined in the CTMR is sometimes referred to as the principle of relative autonomy.172 87 Probably the most important references to national law are the earlier national rights under Art. 8 and Art. 53, respectively, on which relative grounds for refusal and invalidity can be based. Another prominent example is the application of national law, including the respective private international law, in infringement proceedings according to Art. 14 (1)2ndsentence, and Art. 101 (2). The only substantive sanctions for an infringement of a CTM that are dealt with in the CTMR are the injunctive relief under Art. 9 (1), (2), Art. 102 (1) and the claim for reasonable compensation pursuant to Art. 9 (3) in respect of infringing acts occurring between the date of publication of a CTM application and the date of registration. With regard to all other measures and sanctions, such as the right to be informed as to the scope and duration of the infringing activity, damages, destruction of the infringing goods, and so forth, the national laws of the Member States apply, meanwhile harmonised by the so-called Enforcement Directive 2004/48/EC.173 88 Furthermore, the national laws of the Member States apply when it comes to legal transactions in relation to the CTM as an object of property. In this respect, CTMs, as prescribed by Art. 16 (1), are to be dealt with – in their entirety and for the whole area of the Community – as national marks. The same holds true for CTM applications, Art. 24. Moreover, national law is applicable for the purpose of prohibiting the use of a CTM pursuant to Artt. 110, 111. 86

3. National decisions re similar/identical marks not binding 89

With regard to the substantive registrability of CTMs, the question whether the autonomous character of the CTMR means that OHIM and the GC/CJ must take decisions of national courts involving identical or similar marks into account or, on the contrary, are hindered from doing so is subject to divergent interpretation. According to one legal 168

Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 1, mn. 14. Mellor/Llewelyn/Moody-Stuart/Keeling/Berkeley (ed.), Kerly’s Law of Trade Marks and Trade Names, mn. 6-0003. 170 GC Case T-322/03 Telefon & Buch Verlagsgesellschaft v OHIM (WEISSE SEITEN) [2006] ECR II00835, mn. 30; GC Case T-32/00 Messe Mu¨nchen v OHIM (electronica) [2000] ECR II-3829, mn. 47. 171 S. Hasselblatt, Art. 3, mn. 7–9 below. 172 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 1, mn. 4. 173 Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights, OJ L 195/ 16 of 2 June 2004; detailed analysis below by To¨belmann. 169

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commentary, in a harmonised EU trade mark system the mark should, as a matter of principle, receive the same treatment, and similar cases should be dealt with in the same fashion in all jurisdictions.174 Others warn that taking into account earlier national registrations could lead to cementation of national peculiarities of some of the Member States, which would be irreconcilable with the harmonisation objectives of the CTMR.175 The truth seems to lie somewhere in the middle. It is wholly consonant with the 90 harmonisation objectives to consider the registration or refusal of registration of identical/similar trade marks as having indicative value for the purposes of assessing the distinctive character of a CTM where the national marks have been registered on the basis of harmonised legislation.176 The goal must be to combine two sometimes conflicting elements which both have 91 significant value. Within the boundaries of harmonised EU law, consistency in decisionmaking has to be safeguarded. In other words, the harmonised terms, for example as regards the distinctiveness of a trade mark, have to be given the same interpretation under both the TMDir and the CTMR. On the other hand, earlier decisions of national courts or offices cannot, and should not, be binding per se, but only if and insofar as they correctly reflect the requirements provided for in Art. 3 TMDir and Art. 7 CTMR. Moreover, it should be noted that the same is true for decisions handed down by OHIM itself. The legality of the decisions of the Office has to be assessed solely on the basis of the CTMR, and not on the basis of its previous decision-making.177 In other words, OHIM is not even bound by its previous decisions which may, however, be of indicative value. In this context, the CJ has rightfully been criticised for its statement that ‘the fact that 92 a trade mark has been registered in one Member State for certain goods or services can have no bearing on the examination by the competent trade mark registration authority of another Member State’.178 In its generality, this view is not convincing, even if one acknowledges that this observation by the CJ was made in relation to similar marks registered for similar goods and services, and not in respect of identical registrations covering identical goods/services.179 Moreover, it should be noted that in more recent decisions the CJ seems to deviate from this position, reaching a conclusion that – metaphorically speaking – combines the best of two worlds, although the explanations provided by the court remain somewhat ambiguous. In the joined cases Volks.Handy and Schwabenpost, the CJ rightfully stressed that the national authority must take earlier decisions/registrations of other Member States relating to identical/similar marks into account.180 The CJ is, however, also right in saying that such decisions cannot be binding per se.181 No-one can invoke a misapplication of the law in favour of another in 174 v. Mu ¨ hlendahl, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 1, mn. 1 a). 175 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 1, mn. 16. 176 S. the Commission’s view submitted in the Henkel decision, summarized by the CJ in Case C-218/01 [2004] ECR I-1725, mn. 56, 57. 177 GC Case T-417/10 Corte ´s del Valle Lo´pez v OHIM (not yet published in the ECR, decision only available in French and Spanish; available at http://curia.europa.eu), mn. 27; likewise OHIM Dec. of 1.6.2012 – R 254/2012-2 – HNI Technologies Inc. (CURVE 100), mn. 31. 178 CJ Case C-218/01 Henkel [2004] ECR I-1725, mn. 64; heavily criticized by v. Mu ¨ hlendahl, in Gielen/ v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 1, mn. 1 b); sceptical also Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 1, mn. 15–17. 179 CJ Case C-218/01, ibid, mn. 64; likewise CJ (decision of the same date) C-363/99 Postkantoor [2004] ECR I-1619, mn. 42–44. 180 CJ Joined Cases C-39/08 Volks.Handy and C-43/08 Schwabenpost [2009] ECR I-00020 summary publication (full text available at http://curia.europa.eu), mn. 17; consenting To¨belmann, GRUR 2009, 1007, 1008. 181 CJ Case C-218/01 Henkel, ibid, mn. 62.

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order to bring about an identical decision.182 Accordingly, registrations of earlier (identical or similar) trade marks cannot be taken into account if they do not fully comply with the substantive requirements under Art. 3 TMDir, Art. 7 CTMR.183 93 What the court failed to expressly emphasise in those decisions but what should be borne in mind is, conversely, the indicative value of earlier registrations of/decisions concerning identical/similar marks that fulfil the material requirements under harmonised EU trade mark law.

4. Criminal sanctions under national laws of the Member States 94

As a member of WTO, the EU is bound by TRIPs.184 Hence, the CTMR must be compliant with the minimum protection relevant to trade marks, including criminal sanctions. Art. 61 TRIPs prescribes that Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trade mark counterfeiting. The CTMR, however, does not contain provisions dealing with any criminal sanctions for trade mark infringements. Therefore, although the CTMR does not contain an express or implied reference to that end, the national laws of the Member States dealing with criminal remedies for trade mark infringement apply.185

III. Principle of coexistence The principle of coexistence is rightfully described as one of the core elements in European trade mark law.186 As expressly stated in recital 6 of the Preamble, the CTMR does not replace the trade mark laws of the Member States. In fact, the CTMR is a trade mark protection system of equal rank to the national regimes. The CTM coexists with national trade marks, including unregistered trade mark rights, as well as other signs that may be protected under the Member States’ trade mark, civil law and unfair competition regimes. 96 The equal rights’ structure of trade marks at Community and national levels forms an inherent part of the coexistence model between the respective trade mark systems. As a consequence of this coexistence, CTMs can be invoked as earlier rights against the registration of national trade marks,187 and likewise national trade mark rights can establish relative grounds for refusal or invalidation of later CTMs.188 The guiding maxim for resolving collisions between trade mark rights at EU and national levels is the priority principle.189 It is up to the applicant to freely choose between a CTM or national trade marks, or to maintain both forms of protection for one and the same 95

182

CJ Cases C-39-08 Volks.Handy and Schwabenpost C-43-08, ibid, mn. 18. CJ Cases C-39/08 Volks.Handy and Schwabenpost C-43/08, ibid, mn. 18, 19. 184 Member since 1.1.1995, s. http://www.wto.org/english Õ WTO membership Õ members and observers. 185 Knaak, GRURInt 2001, 665, 667; under German trade mark law the criminal sanctions for infringement of CTMs are contained in § 143 a German Trade Mark Act (MarkenG), in conjunction with § 143 (2)(6) MarkenG. 186 S. the ‘Study on the Overall Functioning European Trade Mark System’ of the Max Planck Institute, submitted on 15.2.2011, p. 45. 187 S. Art. 4 (2)(a)(i) TMDir; earlier CTMs may be pleaded in opposition to any subsequent application to register a (national) trade mark which infringes their protection, even if it does so only in part of the Community, GC Case T-418/03 La Mer Technology Inc. v OHIM [2007] ECR II-00125 (summary publication), mn. 105. 188 Art. 8 (2)(a), Art. 53 (1)(a) in conjunction with Art. 8 (2) CTMR. 189 MPI Study of 15.2.2011, p. 45. 183

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sign. Nothing in the CTMR prohibits double protection.190 In fact, a sign, for example a figurative mark, may be protected as a national and a Community trade mark and, as the case may be, enjoy design and copyright protection, provided that the substantive requirements are met. There is broad consensus that well-balanced coexistence is of vital importance for the 97 functioning of the European trade marks system.191 This should not be taken for granted, however, and still has to be regarded as a milestone achievement. Whereas the predecessors of the CTMR, the Commission Proposals submitted in 1980 and 1984, accepted the notion that Community law relating to trade marks should not replace national trade mark law in the Member States,192 they did not provide for simultaneous existence of one and the same mark. In fact, under Art. 81 of both proposals upon publication of the registration of an identical or similar CTM, the effects of a national trade mark should be suspended for ‘so long as the Community trade mark produces its effects’.193 It is therefore to be welcomed that this ‘suspension approach’, which, at the end of the day, prohibited double protection of the same mark at EU and national levels was not pursued further by the lawmakers and transformed into real coexistence. It follows from the coexistence of CTMs and national trade marks that judicial review 98 in respect of absolute grounds for refusal falls within the sphere of competence of the respective EU and national authorities/courts.194 Consequently, the validity of a national trade mark may not be called into question in proceedings for CTM registration, but only in cancellation proceedings in the Member State concerned.195 Conversely, judicial review with regard to the validity of CTMs does not fall within the jurisdiction of the national trade mark offices/courts. Of course, this does not hinder the respective courts and offices, but, in fact, needs to be taken into account as one of the factors for global appreciation of the likelihood of confusion, to assess the strength or weakness of the conflicting marks in opposition, invalidity or infringement proceedings. This may entail a finding that a mark is largely descriptive and has only weak distinctive character, which is not equivalent to denying its distinctive character entirely.196

IV. Principle of unity, Art. 1 (2) CTMR Art. 1 (2) regulates the principle of unity, which forms the backbone of the Community 99 trade mark. It is only through a unitary trade mark protection system that the require190 V. Mu ¨ hlendahl, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 1 CTMR, mn. 1 b); expressly emphasised by the MPI Study of 15.2.2011, p. 45, under 1.1. 191 MPI Study of 15.2.2011, p. 45, mn. 1.1–1.4. 192 S. recital 4 of the Commission Proposals submitted in 1980 and 1984, proposal for a Council Regulation on Community Trademarks, submitted on 25.11.1980, OJ C 351, 31.12.1980, p. 5, 6 and amended proposal for a Council Regulation on the CTM (COM (84) 470 final), submitted on 9.8.1984, 84/C 230/01, OJ C 230, 31.8.1984, p. 1, 2. 193 S. Art. 81 of 1980 proposal and 194 amended proposal (OJ C 351 of 31.12.1980, p. 24 and OJ C 230 of 31.8.1984, p. 41, respectively). 194 CJ Case C-196/11 Formula One Licensing BV v OHIM [2012] (not yet published in ECR – available at http://curia.europa.eu) mn. 40–42. 195 GC Case T-269/02 PepsiCo, Inc. v OHIM [2005] ECR II-01341, mn. 26; GC Case T-7/04 Shaker v ~ana y Botella [2008] ECR II-3085, mn. 26. OHIM – Limin 196 This, in turn, would be tantamount to calling the validity of the respective mark into question which is impermissible because of the coexistence of the CTM and the national trade mark systems; s. CJ Case C-196/11 Formula One Licensing BV v OHIM [2012] (not yet published in ECR – available at http:// curia.europa.eu) mn. 40–42; s. the critical remarks by Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 1, mn. 50 et seq.

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ments of the common market can be properly met.197 However, even this elementary principle permits exceptions; according to Art. 1 (2) 3rdsentence CTMR the principle of unity and its implications shall apply ‘unless otherwise provided in this Regulation’.

1. Unitary character Community trade marks have a unitary character. Unlike an international trade mark under the Madrid Agreement, the Community trade mark is not a mere bundle of national trade mark rights. Rather, it is one trade mark right having uniform effect throughout the entire territory of the Community to be obtained on the basis of a single application. This relatively simple but – in substance and territorially – farreaching statement may sound almost self-evident after almost 20 years’ experience in dealing with the Community trade mark, but compared with the status quo prior to the entry into force of the CTMR, it signifies immense progress. 101 Prior to the introduction of the CTMR, there were substantial differences between Member States’ trade mark laws, which negatively influenced and distorted competition. Trade mark protection or other nationally circumscribed exclusive rights could be granted in one Member State, whereas in others protection could have been partially or completely refused. This significantly exacerbated cross-border trade with products bearing one and the same trade mark. Harmonisation of the substantive requirements imposed on the legal protection of trade marks by the Trade Mark Directive198 has contributed to remedying this situation to a certain degree. 102 Still, the proprietors had to deal with a large number of applications for the various jurisdictions, national offices and procedures with correspondingly high costs and administrative expense. The CTMR intends to alleviate this administrative and financial burden to a certain extent. Furthermore, as rightfully pointed out in the Preamble to the CTMR, the barrier of territoriality of the rights conferred on proprietors of trade marks by the laws of the Member States cannot be removed by mere approximation of national laws.199 It is thus one of the clearly defined objectives of the regulation to provide a trade mark protection system at Community level whereby undertakings, by means of one procedural system, can obtain Community trade marks to which uniform protection is given and which produce their effects throughout the entire area of the Community.200 103 To achieve this goal of unitary character of the Community trade mark, the EU legislators deem the territory of the Community to be a unitary market.201 Only this unity facilitates preventing trade mark protection from being limited to the territory of the individual Member States, whether or not their laws are approximated, because beyond the borders of the Member States the CTM claims validity in the entire internal market. For this reason, the Community trade mark, like the Community design, is the instrument par excellence for trade without borders in the internal market. 100

197

Memorandum on the Creation of an EEC Trade Mark, IIC 1976, p. 367, 383, mn. 61. Council Directive 89/104/EC of 21 December 1988 to approximate the laws of the Member States related to trade marks, OJ L 40, 11.2.1989, p. 1, now codified in Dir 2008/95/EC; s. Annex 1 in this commentary. 199 S. rc. 4 of the Preamble to the CTMR. 200 Rc. 3 of the Preamble to the CTMR. 201 This is clear by the wording in recitals 2 and 3 of the Preamble to the CTMR, which makes explicit mention of the creation of ‘a market of this kind and make it increasingly a single market, not only must barriers to free movement and services be removed and arrangements be instituted which insure that competition is not distorted, but, in addition, legal conditions must be created which enable undertakings to adapt their activities to the scale of the Community, whether in manufacturing and distributing goods or in providing services’ (emphasis added); s. in relation to the Community design, Ruhl, Gemeinschaftsgeschmacksmuster, Art. 1 CDR, mn. 4. 198

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As a corollary of the unitary character enjoyed by a CTM throughout the EU, protection 104 has to be refused if grounds for non-registrability exist in only part of the Community, as expressly made clear in Art. 7 (2) for absolute grounds for refusal. Although Art. 8 does not contain a provision similar to Art. 7 (2), the GC hasrightfully inferred from the principle of the unitary character of the CTM embedded in Art. 1 (2) that registration must be refused if relative grounds for refusal exist in only part of the Community.202 In light of the principle of unity, the EU enlargement has obviously created a 105 ‘considerable challenge’.203 This holds true especially in light of the enlargement as of 1 May 2004, not (only) because of the large number of countries (ten) acceding to the EU, but because it was the first time an enlargement took place when Community trade marks and designs were already in existence. Not only did the pre-existing rights in the new Member States have to be fully respected, but it also had to be ensured that the unitary character of the Community trade mark and design was maintained.204 This was achieved by, among other things, an automatic extension of earlier Community trade marks to the territory of the new Member States. Art. 165 therefore reiterates the principle of unity as enshrined in Art. 1 (2) by stating that, as from the date of accession of the ‘new Member States’, a CTM registered or applied for prior to the respective date of accession shall automatically be extended to the territory of those Member States in order to have equal effect throughout the Community.

2. Equal effect throughout the Community Community trade marks have equal effect throughout the Community. Accordingly, 106 the rights conferred by the Community trade mark under Art. 9 exist EU-wide. Therefore, the right to injunctive relief, for example, generally encompasses the entire territory of the Community. With regard to refusal, revocation, invalidation, surrender or transfer, there are no 107 exceptions to the rule of ‘equal effects’ of the CTM throughout the Community.205 As regards the prohibition of use of the CTM, however, there are a number of limitations of this principle. Under Artt. 110 and 111, the use of a later CTM may be prohibited because of pre-existing national rights within a certain territory or a ‘new Member State’ within the meaning of Art. 165 (5). Furthermore, the limited extent of jurisdiction for the Community trade mark courts in infringement actions in accordance with Artt. 97 (5), 98 (2) merits mention in this context. Although those provisions provide for certain limitations regarding the use of the CTM, they leave the unitary character of the CTM, as such, ‘intact’.

3. Ownership, transfer, surrender, etc., only in respect of whole Community The Community trade mark may not be registered, transferred or surrendered or be 108 the subject of a decision declaring it invalid, nor may its use be prohibited, save in respect of the whole Community. In short, what this means is that ownership and legal 202 GC Case T-418/03 La Mer Technology Inc. v OHIM [2007] ECR II-00125 (summary publication of operative part of the judgment), mn. 105; GC joint cases T-83/03, T-82/03 and 103/03 Mast Ja¨germeister AG v OHIM [2006] ECR II-5409, mn. 76; GC Case T-355/02 Muelhens GmbH & Co. KG v OHIM [2004] ECR II-00791, mn. 35, 36; GC Case T-119/03 New Look v OHIM [2004] ECR II-3471, mn. 34; GC Case T-185/03 Vincenzo Fusco v OHIM [2005] ECR II-00715, mn. 33. 203 Communication 5/03 of the President of the Office of 16 October 2003, OJ OHIM 2004, 69. 204 Communication 5/03 of the President of the Office, OJ OHIM 2004, 69. 205 Likewise v. Mu ¨ hlendahl, in Gielen/v. Bomhard (ed.), Concise European Trade Mark Design, Art. 1, mn. 3.

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validity are always territorially unitary for the entire Community. Consequently, for example, the ownership of a Community trade mark cannot be divided up territorially. If the trade mark is transferred, such transfer necessarily relates to the territory of the whole Community. This also holds true if the CTM is transferred only in respect of some of the goods or services for which it is registered under Art. 17 or the CTM application is divided under Art. 44 by declaring that some of the goods or services included in the original application will be the subject of one or more divisional applications.206 Such partial transfer of the CTM or the division of the CTM application does not affect the unitary character of the original CTM at all. However, the unitary character and the EU-wide effect of the CTM do not rule out that licences that are limited in terms of territory can be granted, also to different licensees.

4. Limitations, exceptions The principle of unity is not unrestrictedly applicable. Art. 1 (2) 3rd sentence expressly admits exceptions, in that it states that this principle and its implications ‘shall apply unless otherwise provided in this Regulation’. As mentioned above, it is left to the discretion of the proprietor of a Community trade mark to grant licences that are limited to certain Member States or regions, also to various licensees. 110 Other exceptions can be found in the limited jurisdiction under Artt. 97 (5), 98 (2), as well as the (rare) scenarios in which the owner of an earlier right (acquired or applied for in good faith before the accession date) in a new Member State may oppose the use of a Community trade mark within that state, Art. 165 (5).207 Finally, the proprietor of a CTM may have identical national trade mark rights. In such cases of coexistence of Community and national trade mark rights, the proprietor may decide to invoke only the national rights. 109

V. Territorial scope of protection The Community trade mark enjoys protection throughout the (enlarged) Community, Art. 1 (2), Art. 165. At first glance, what is meant by the territorial reach of the ‘Community’ appears to be obvious. In fact, however, it is worth taking a closer look, notably with regard to overseas countries and territories having special relations with some of the Member States. 112 The provisions governing the territorial reach of the treaties, i. e. the Treaty on European Union and the Treaty on the Functioning of the European Union,208 have recently been subject to various amendments (and not surprisingly ‘re-numbered’). Taking into account the most recent accession to the EU of the Republic of Croatia with effect as from 1 July 2013, the following picture emerges under Artt. 1, 52 (1) TEU, Artt. 288, 349, 355 TFEU (ex Art. 299 (2), ex Art. 299 (3) – (6) TEC)209 with regard to the territorial reach of the Community design: 113 As a regulation, the CTMR has general application andthus shall be binding in its entirety and directly applicable in all Member States, Art. 288 (2) TFEU. Accordingly, the Community trade mark is uniformly applicable in all Member States of the EU (Art. 52 TEU), thus, the Kingdom of Belgium, the Republic of Bulgaria, the Republic of 111

206

S. Rule 13 a CTMIR, inserted by Commission Regulation (EC) No. 1041/2005 of 29.6.2005. S. a detailed discussion below, Hallemans, Art. 165. 208 S. Art. 1 (3) TEU, OJ C 326/16 of 26.10.2012. 209 OJ C 115/197 of 9.5.2008. 207

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Croatia,210 the Czech Republic, the Kingdom of Denmark, the Federal Republic of Germany, the Republic of Estonia, Ireland, the Hellenic Republic (Greece), the Kingdom of Spain, the French Republic, the Italian Republic, the Republic of Cyprus (with the exception of the Turkish-occupied part of the island),211 the Republic of Latvia, the Republic of Lithuania, the Grand Duchy of Luxembourg, the Republic of Hungary, the Republic of Malta, the Kingdom of the Netherlands, the Republic of Austria, the Republic of Poland, the Portuguese Republic, Rumania, the Republic of Slovenia, the Slovak Republic, the Republic of Finland, the Kingdom of Sweden and the United Kingdom of Great Britain and Northern Ireland. The territorial scope of the Community (Art. 355 (1) TFEU) also encompasses: 114 Guadeloupe, French Guiana, Martinique, Re´union, Saint-Barthe´lemy, Saint-Martin, the Azores, Madeira and the Canary Islands.212 Furthermore, with effect from 1 January 2014 Mayotte (France) became an outermost region within the meaning of Artt. 349, 355 (1) TFEU.213 The territorial reach of the Community in this sense does not extend (Art. 355 (5) 115 TFEU) to: the Faeroe Islands, the Channel Islands and the Isle of Man. Furthermore, the uniform effect of the Community design does not extend to certain 116 overseas countries and territories, the most important of which are listed below:214 Greenland, French Polynesia, Aruba, Netherlands Antilles, Anguilla, Cayman Islands, Falkland Islands, Montserrat, Saint Helena, Turks and Caicos Islands, British Virgin Islands, Bermuda.

Article 2 Office An Office for Harmonisation in the Internal Market (trade marks and designs), hereinafter referred to as the Office’, is hereby established. Content I. II. III. IV. V.

Name, logo and seat of the OHIM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 OHIM as an EU agency . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 Tasks of OHIM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8 Communication with OHIM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 Contact information . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

I. Name, logo and seat of the OHIM Council Regulation EC No 40/94 of 20 December 1993 on the Community trade 1 mark and with it this Article came into force on 15 March 1994. On 1 September 1994, 210 S. Accession Treaty, concerning the accession of the Republic of Croatia, Brussels, 7.11.2011 (OR en) 14409/11. 211 S. also Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 1, mn. 87. 212 In accordance with Art. 349 TFEU, taking account of the structural social and economic situation of those regions. 213 Council Decision 2014/419/EU of 11 July 2012 amending the status of Mayotte with regard to the European Union, OJ L 204, 31.7.2012, p. 131. 214 S. the full list in Annex II, OJ C 326 of 26.10.2012, p. 336.

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2

3

4

5

Community Trade Mark Regulation

the Office took up its duties, and the Administrative Board determined 1April 1996 to be the date when the first CTM applications were to be received1. Initially the Office was to be simply called ‘European Trade Mark Office’. Its current, broader denomination was chosen in order to maintain the option to also place the Community Design, which was still in planning at that time, under the Office’s responsibility. Today, the Office, otherwise known under the acronym OHIM2, is a true tool for the harmonisation of trade mark and design issues, not only within the European Union, but also worldwide. The Cooperation Fund programmes (in particular the development of the multilateral European Trade Mark and Design Network), the annual Users’ Group meetings at representative and industry level and OHIM’s cooperation with the USPTO and the Japanese Patent Office, that started as the ‘Trilateral’ in 2001 and has meanwhile evolved into the ‘TM5 group’ linking OHIM also with the Korean Intellectual Property Office and the State Administration for Industry and Commerce of China, are just a few examples of the Office’s IP harmonisation enterprises. According to the Commission’s proposal for a reform of the CTMR still under discussion3, the Office could change its name to ‘European Union Trade Marks and Designs Agency’, or, as favoured by the European Parliament, to ‘European Union Intellectual Property Agency’. The Office’s logo combines the symbol for ‘the registration of trade marks, the sun of Alicante, the blue of the Mediterranean Sea’ and also reflects the Office’s affiliation to the European Union4. By decision of the governments of the Member States the Office should have its seat in Spain, in a town to be determined by the Spanish government, which, in turn, designated Alicante5.

II. OHIM as an EU agency Art. 2 entrusts the tasks to be carried out under the CTMR to the Office. The legal framework on the Office is contained in Title XII (Artt. 115 et seq.) of the CTMR, and is complemented by Rule 100 CTMIR. OHIM is a non-profit body of the European Union which has legal personality, and is represented by its President6. It is however not an EU institution. It falls under the authority of DG MARKT; the Commission exercises legal control over the acts of the Office. 7 The Office is independent in relation to technical matters and has legal, administrative and financial autonomy7. accordingly it fixes the fees at such a level as to ensure that the revenue in respect thereof is in principle sufficient for the budget of the Office to be balanced. As it is widely known, this goal is more than being achieved. 6

1 Decision of the Administrative Board No CA-95-19 of 11 July 1995 in OHIM Official Journal, October 1995. 2 And the equivalents in the – besides English – other four official languages (Art. 119 (2) CTMR), i. e. French = OHIM, German = HABM, Italian = UAMI and Spanish = OAMI. 3 The Commission’s proposal is EU Trademarks and Design Agency, while the Parliament prefers EU Intellectual Property Agency – S. http://www.europarl.europa.eu/RegData/bibliotheque/briefing/2014/ 140745/LDM_BRI%282014%29140745_REV1_EN.pdf. 4 Jean-Claude Combaldieu in ‘Das große Abenteuer bei der Schaffung des Harmonisierungsamtes fu ¨r den Binnenmarkt’ in Festschrift fu¨r Alexander von Mu¨hlendahl, 2005, p. 402. 5 Meeting of the representatives of the Member States (Head of State and Government level) on 29.10.1993, OJ L 11 of 14.1.1994, p. 34. 6 Art. 115 CTMR; s. the detailed discussion by Stamm. 7 Regulation No CB-3-09 of the Budget Committee of the Office of 17.7.2009 in OHIM Official Journal, November 2009 and rc. 12 of the Preamble to Reg. No 207/2009 (CTMR).

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III. Tasks of OHIM Currently, OHIM is the European agency responsible for the administration of the 8 Community trade mark and the registered Community design. It is well conceivable that the Office will assume further tasks in the future. In fact, as of June 2012, the European Observatory on Infringements of Intellectual Property Rights, following a Commission proposal and backed by the European Parliament and the Council, was fully entrusted to OHIM, including financial responsibility for the Observatory’s activities8. Under the CTMR, the following tasks, all related to CTMs, are entrusted to the 9 Office: application procedure for CTMs (Title III), registration procedure (Title IV), surrender, revocation and invalidity of CTMs (Title VI), appeals (Title VII), administering the register for CTMs in the form of an electronic database, periodical publication of the Community Trade Marks Bulletin, administrative cooperation as well as exchange of publications with the courts and authorities of the Member States (Title IX, Section 3). Moreover, the Office’s task are further defined by the remaining CTM related legal texts, such as the CTMIR9, the CTMFR10 as well as by the RP BoA11.

IV. Communication with OHIM One of the fundamental objectives of the CTMR is to provide access to registered trade 10 marks at minimum cost and difficulty to applicants, so as to make CTM protection readily available also to small and medium-sized businesses as well as individual designers. To that end, the CTMIR is designed to ensure the ‘smooth and efficient operating of trade mark proceedings before the Office’. Indeed, OHIM has managed to live up to this goal to a very far-reaching degree and 11 continues to work towards its aim of promoting a ‘paperless office’. Various services are available online12, such as the application for a CTM (simple five-step application as well as an advanced application), the filing of an opposition, the renewal and conversion of CTMs, recordal requests as well as requests for inspection of files and change of representative. The forms made available free of charge, which are downloadable from the website13, 12 further facilitate communication with OHIM. The forms relevant to CTMs include those for the purpose of: – application for a CTM; – filing a notice of opposition; – filing a request for invalidity and revocation; – filing a notice of appeal; – requesting further administrative actions such as renewal, conversion, inspection of files or entry on the list of professional representatives. 8 Information on the Observatory is available from the Office’s website: http://oami.europa.eu/ohimportal/en/web/observatory/home. 9 Commission Regulation (EC) No 2868/95 of 13 December 1995, last amended 31 March 2009, OJ EC No L 109 of 30.4.2009, p. 3. 10 Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the OHIM, last amended 31 March 2009, OJ EC No L 109 of 30.4.2009, p. 3. 11 Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the OHIM, last amended 6 December 2004, OJ EC No L 360 of 7.12.2004, p. 8. 12 https://oami.europa.eu/ohimportal/en/online-services. 13 https://oami.europa.eu/ohimportal/en/forms-and-filings.

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Forms are available in all official languages14 of the Union, Art. 83 (3) CTMIR. What deserves special mention is the generally high expertise of the staff, first and foremost the examiners and the members of the BoAs. Since they are all fluent in several languages, on a practical note, discussing – and resolving – legal issues related to the application or remedy in question by phone is often equally constructive and fruitful.

V. Contact information OHIM can be reached as follows: Office for Harmonization in the Internal Market (Trade Marks and Designs) Avenida de Europa, 4 E –03008 Alicante Spain fon +34 965 139 100 (general information) +34 965 139 400 (E-business support line) fax +34 965 131 344 email [email protected] [email protected] www.oami.europa.eu

Article 3 Capacity to act For the purpose of implementing this Regulation, companies or firms and other legal bodies shall be regarded as legal persons if, under the terms of the law governing them, they have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued. Content I. II. III. IV.

General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Material scope of application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Applicable law; production of evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Requirements under Art. 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Companies, firms and other legal bodies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Capacity to have rights and obligations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Capacity to make contracts or accomplish other legal acts . . . . . . . . 4. Capacity to sue and be sued . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Examples . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Legal consequences . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 4 7 10 11 16 19 22 25 30

14 English, French, German, Italian and Spanish were decided to be the official languages of the Office by decision of the governments of the Member States at the same occasion when Spain as the country for its seat was chosen, see footnote 5 above.

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I. General This provision deals with the capacity of ‘companies or firms and other legal bodies’ to 1 be a party to legal proceedings, or – as it is described in the heading of Art. 3 – the capacity to act before the Office. Art. 3 has to be read in conjunction with Art. 5 according to which the proprietor of a CTM must be either a natural or a legal person, including authorities established under public law. Other entities lacking such legal personality could neither be proprietors of a CTM under Art. 5 nor act before the Office. As a consequence, countless associations around the globe, partnerships, European Economic Interest Groupings, and so forth, could not own CTM rights although they actively participate in today’s legal and commercial life. This rather unacceptable situation is remedied by Art. 3, which extends the capacity to act before the Office, and more importantly to be entitled to be the owner of a CTM, to certain entities which, although in the strict sense they lack legal personality, ‘shall be regarded as legal persons’. The Community trade mark system is designed to be ‘accessible to all, without any 2 requirement of reciprocity, equivalence and/or nationality’, in order to encourage trade in the world market.1 But also after the 2004 reforms of the CTMR, which abolished, among other things, the previously applicable requirement of reciprocity under Art. 5 (2) in the old version,2 legal personality remains a prerequisite for using the CTM system – for good reason. Decisions rendered by the Office or the CTM courts establish rights and obligations, and it is thus necessary to identify the entity able to exercise these rights or against whom the obligations may be enforced vis-a`-vis OHIM or the courts.3 This is where Art. 3 comes into play. Obviously the Office cannot grant the required legal personality to entities that do not have legal personality of their own under the applicable national law. By virtue of Art. 3, however, certain entities are assimilated in status to legal persons. This is achieved through recourse to the law governing the entity in question. According to Art. 3, a company, firm or other legal body can be regarded as a legal 3 person if, under the laws of the respective country, it has the capacity in its own name – to have rights and obligations of all kinds, – to make contracts or accomplish other legal acts, and – to sue and be sued.

II. Material scope of application The sole purpose of Art. 3 is, under certain requirements to be assessed in accordance 4 with relevant national law, to put ‘companies, firms or other legal bodies’ without legal personality on an equal footing with ‘legal persons’. The CTMR refers to the capacity of the ‘legal person’ in a number of provisions. In addition to the question of who – as defined in Art. 5 – the proprietor of a Community trade mark can be, this applies to 1

Recital 3 of Reg. (EC) No. 422/2004 of 19.2.2004, amending the CTMR, OJ L 70 of 9.3.2004, p. 1. Required until 2004 for nationals of countries that were neither members of the Paris Convention nor of the WTO; Art. 5 (2) deleted by Reg. (EC) No. 422/2004 of 19.2.2004, OJ L 70, of 9.3.2004, p. 1. 3 v. Mu ¨ hlendahl, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 3 CTMR, mn. 1; Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 3, mn. 6: those entities that do not have the capacity to sue or be sued shall not be entitled to enforce CTM rights vis-a`-vis OHIM, the CJ or the CTM courts. 2

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third parties being permitted under Art. 40 to submit observations to the Office, to the filing of an application for revocation under Art. 56 (1)(a) and in relation to the general principles of representation in Art. 92 (2), (3). Furthermore, the provision gains importance in those cases in which the proprietors of earlier rights as defined in Art. 8 do not have legal personality and can therefore derive their capacity to act only under Art. 3, so as to be regarded as legal persons. 5 Essentially, the main role of Art. 3 can be reduced to the practically very important question of who can be a proprietor of a CTM according to Art. 5. Art. 66 (1), second sentence, contains a provision comparable to Art. 3 for associations of manufacturers, producers, suppliers of services or traders that may apply for Community collective marks.4 6 All in all, there are only very few decisions that deal in detail with the requirements of Art. 3 – and the consequences in the case of their non-existence or subsequent disappearance.5 This can be explained by stating that, in the overwhelming majority of cases, the legal personality of the applicant and/or of the other parties involved is unproblematically certain. Moreover, since the 2004 reforms, it no longer has to be examined ex officio whether the applicant can be the proprietor of a CTM under Art. 5, as was previously prescribed by Art. 37 (old version), which was deleted by Regulation (EC) 422/2004.6 That does not, however, relieve the Office of its responsibility to examine ex parte CTM applications as to whether the prerequisites under Artt. 3, 5 are met.7

III. Applicable law; production of evidence Art. 3 states the parameters that have to be fulfilled by companies, firms or legal bodies in order to be regarded as a legal person. Whether these prerequisites (s. mn. 3 above) are fulfilled does not, however, have to be assessed under the provisions of the CTMR, but under the terms of the national law governing the entity in question. 8 As the CTM system is accessible to ‘all’, without any requirements of nationality,8 OHIM and/or the courts theoretically might have to deal with domestic laws from any jurisdiction in the world. It is the responsibility of the ‘legal body’ under scrutiny to produce clear and convincing evidence that it possesses, and can exercise, the capacities listed in Art. 3. In this regard, any document or reference may be submitted that illustrates that the legal body at issue, although under the respective governing law not endowed with legal personality, may have rights and obligations, make contracts, accomplish other legal acts and sue and be sued in its own name. 9 Documents that may prove to be helpful in this respect may include: commercial contracts concluded by the respective legal body in its own name, including lease agreements; deeds evidencing property owned by the legal body concerned; articles of association according to which contracts may be entered into, rights exercised and/or obligations accepted, all in the entity’s own name; judgments in favour of and, as the 7

4

S. detailed analysis below by Nordemann, Art. 66. OHIM Dec. of 28.7.1999 – R 195/1998-1 – Nauta-Dutilh v OHIM, mn. 13, 14; OHIM Dec. of 29.7.2010 – R 575/2010-1 – El Corte Ingle`s, S.A. v 4 Wheels Winners, mn. 11–13; s. also the communication from the Office in relation to UK partnerships, OAMI News 3-1998. 6 Along with the grounds for revocation and invalidity under the old versions of Artt. 50 (1)(d) and 51 (1)(a), respectively, for non-compliance with Art. 5, deleted by Regulation (EC) 422/2004 of 19.2.2004, OJ L 70, 9.3.2004, p. 2 and 4. 7 v. Mu ¨ hlendahl, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 3 CTMR, mn. 3. 8 Recital 3 of Reg. (EC) No. 422/2004 of 19.2.2004, OJ L 70 of 9.3.2004, p. 1. 5

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case may be, against the entity in question; further proof that the legal body can, itself, act as a plaintiff or defendant in legal proceedings; certificates of trade mark and other IP right registrations from the ‘home country’, and the like.9

IV. Requirements under Art. 3 Art. 3 lists the parameters, to be analysed under the laws of the relevant country, 10 under which companies, firms or other legal bodies are to be regarded as legal persons. Some of the criteria appear to be redundant to a certain extent. It is worth noting that the requirements listed in Art. 3 have to be fulfilled cumulatively.

1. Companies, firms and other legal bodies It is clear from the syntax and the word ‘other legal bodies’ that the ‘companies or firms’ mentioned in Art. 3 are used as examples that fall under the broader term of ‘legal bodies’. This becomes even more evident if one compares the English version with the text versions of the other four languages of the Office.10 The insertion of the word ‘firms’ is contained only in the English text, whereas the other four versions simply refer to ‘companies and other legal bodies’.11 The additional mention of ‘firms’ in the English text must not be interpreted as a material deviation of the other language versions, but is merely designed to take into account the special characteristics of the law in Englishspeaking jurisdictions. Under English law, the word ‘firm’ is used as a synonym for a partnership,12 and hence the designation of a legal entity recognized in the UK and in various forms under other common law jurisdictions. It follows that companies as well as firms have to be seen as entities that fall under the wider concept of legal bodies. In any case, the terms overlap to a large degree as they are meant to cover the various legal bodies established under the laws of the countries anywhere in the world.13 The term ‘legal bodies’ is to be broadly construed14 and encompasses companies, associations, federations, clubs, and so forth, which – unlike legal persons referred to inter alia in Art. 5 – have no legal personality in the strict sense. It should be stressed in this context – although it is (almost) self-evident – that Art. 3 does not demand that the legal body in question under the law governing it is endowed with legal personality.15 If the legal bodies concerned were required to have legal personality, it would be nonsensical that they ‘shall be regarded as legal persons’ under the conditions laid down in Art. 3. As rightly pointed out by the 1st BoA,16 this is indirectly confirmed by the terms of the regulation on the European Economic Interest Grouping (EEIG).17 Art. 1 (2) of that 9 S. further examples of evidence produced by the appellant in OHIM Dec. of 28.7.1999 – R 195/1998-1 – Nauta Dutilh v OHIM, mn. 10. 10 Art. 119 (2): English, French, German, Italian and Spanish. 11 French: ‘les socie ´te´s et les autres entite´s juridiques’; German: ‘Gesellschaften und andere juristische Einheiten’; Italian: ‘le societa` e gli altri enti giuridici’; Spanish: ‘las sociedades y dema´s entidades juridicas’. 12 OAMI News 3-1998; s. Sect. 4 (1) of the UK Partnership Act 1890, which reads as follows: ‘Persons who have entered into partnership with one another for the purposes of this Act called collectively a firm, the name under which their business is carried on is called the firm name’. 13 OAMI News 3-1998. 14 Likewise v. Kapff, in Ekey/Klippel (ed.), Heidelberger Kommentar zum Markenrecht, Art. 3 CTMR, mn. 3. 15 OHIM Dec. of 28.7.1999 – R 195/1998-1 – Nauta Dutilh v OHIM, mn. 17. 16 OHIM Dec. of 28.7.1999 – R 195/1998-1 – Nauta Dutilh v OHIM, mn. 17. 17 Reg. (EEC) No. 2137/85 of 25.7.1985, OJ L 199 of 31.7.1985, p. 2 (emphasis added).

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regulation, which introduced the language partially adopted by Art. 3 CTMR, states that ‘a grouping so formed shall (…) have the capacity, in its own name, to have rights and obligations of all kinds, to make contracts or accomplish other legal acts, and to sue or be sued’. Art. 1 (3) of Regulation 2137/85 provides that ‘the Member States shall determine whether or not groupings (…) have legal personality’. Thus, while the capacities that have to be established under Art. 3 CTMR (‘if they have the capacity’) are presumed to be vested in EEIGs (‘shall have the capacity’ under Art. 1 (2) Reg. 2137/85), it is still left to the discretion of the Member States to decide whether or not EEIGs shall have legal personality. 15 Consequently, legal bodies in the meaning of Art. 3 need not be endowed with legal personality under the law governing them. The yardstick for the assessment under Art. 3 is thus not the unrestricted legal capacity; the determining factor is that the body in question has the legal capacity which enables it to achieve its purpose.18

2. Capacity to have rights and obligations The legal body must have the capacity in its own name to have rights and obligations of all kinds. The decisive factor therefore is that, under the relevant national law, the legal body can be subject to rights and obligations. For that, a certain gaining of independence vis-a`-vis the members or the shareholders is necessary.19 It does not come down to the members or shareholders possibly having rights and obligations, which, for instance, must always be assumed in the case of natural persons. As the wording ‘in their own name’ makes clear, this has to be based on the independent obligation and authority of the relevant legal body. 17 The decisive question is whether the rights and obligations exist in the name of the legal body concerned, as distinct from the members of whom it is made up of. The rights must be vested in and the legal obligations assumed by the company itself. They typically depend on the type of business carried on by the company, and the customs and usages of the business in question.20 18 It can be seen as a clear pointer that the legal body has the capacity to have rights and assume obligations in its own name if it is established under a separate set of laws (e. g. a company act), which contains explicit references and provisions dealing with property assets, funds, etc. owned by and liabilities of the company at issue, as rights and obligations that are distinct from those of its members. By way of example, sect. 10 of the UK Partnership Act 1890 deals with the liability of the firm for wrongs, sect. 20 with partnership money and pursuant to sect. 21, unless the contrary intention appears, property bought with money belonging to the firm is deemed to have been bought on account of the firm. All this clearly illustrates that these rights and obligations exist in the name of the firm.21 16

3. Capacity to make contracts or accomplish other legal acts 19

Furthermore, the legal body must have the capacity to make contracts or accomplish other legal acts in its own name. According to an opinion held by legal scholars, the word ‘or’ is legally flawed and correctly should read ‘and accomplish other legal acts’.22 18

In this direction also OHIM Dec. of 28.7.1999 – R 195/1998-1 – Nauta Dutilh v OHIM, mn. 17. Likewise v. Kapff, in Ekey/Klippel (ed.), Heidelberger Kommentar zum Markenrecht, Art. 3 CTMR, mn. 4. 20 For partnerships under the UK Partnership Act 1980, s. OAMI News 3-1998. 21 Rightly pointed out in OAMI News 3-1998. 22 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 3, mn. 1. 19

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The fact that the criteria mentioned in Art. 3 must be cumulatively fulfilled argues in favour of this opinion. However, an argument against this view is that the last part of the wording of Art. 3 was copied verbatim from Art. 1 (2) of Regulation 2137/85 on EEIGs,23 and neither the Preamble to the CTMR nor that of Reg. 2137/85 lends support to the view that the word ‘or’ should be construed to mean ‘and’. To the end, this distinction appears to be of a largely academic nature, as an entity that can conclude contracts almost always has the capacity to accomplish other legal acts, and vice versa. Hence there is an overlap to a great extent. With regard to the capacity to have rights and obligations as well, however, the 20 wording of Art. 3 is somewhat redundant, because oftentimes rights are acquired and obligations assumed through legal transactions. The decisive criterion is that the contracts and other legal acts have binding effect for the legal body concerned. The entity in question must be bound in its own name, whereas for the assessment under Art. 3 it is irrelevant whether by the same contract or legal transaction the members are jointly and severally liable as well. Therefore, the power to bind the legal body as a collective, and not only the individual shareholders or members, clearly demonstrates that the entity is capable of making contracts and accomplishing other legal acts in its own name.24 Whether this power to bind the legal body is that of a member or an authorised representative is of no relevance. For example, under sect. 6 of the UK Partnership Act 1890, not only partners, but any person thereto authorised, whether a partner or not, may execute acts or legal instruments in the firm’s name with binding effect for the firm and all the partners. Evidence that may be produced by the entity in question includes copies of all kinds 21 of contracts and other legal instruments, signed and executed in the company’s name, underlining the binding effect for the legal body as such (in relation to company assets, property, tenancy agreements, bank accounts in the name of firm, and the like).

4. Capacity to sue and be sued Finally, the legal body must have the capacity to sue and be sued. Entities that lack 22 this capacity are not entitled to enforce CTM rights vis-a`-vis OHIM, the CJ or the CTM courts;25 neither can they invoke earlier rights under Art. 8 in opposition proceedings before the Office. Both ‘forms’ of legal standing – on the plaintiff’s and the defendant’s side, as is clear by the words ‘and be sued’ – are required. The capacity to sue and be sued can be demonstrated by submitting copies of 23 judicial decisions, in which the legal body concerned is identified as a party to the proceedings, preferably both as a plaintiff or a defendant. Obviously, the legal body in question does not have to engage in litigation in order to be in a position to provide evidence as to its capacity to sue and be sued. It suffices to produce court decisions of the same ‘type’ of company, firm or other legal body as a party involved in court proceedings.26 The legal standing of a particular legal body can also be deduced from court rules that may be in place in certain jurisdictions27 or court decisions of a more 23

OJ L 199 of 31.7.1985, p. 2; s. in this context also the remarks above mn. 14. S. in relation to UK partnerships, OAMI News 3-1998. 25 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 3, mn. 6. 26 S. OHIM Dec. of 28.7.1999 – R 195/1998-1 – Nauta Dutilh v OHIM mn. 10, 15, where the Dutch appellant submitted various decisions handed down by Dutch courts, which involved not only the legal body itself (a Dutch ‘maatschap’), but other ‘maatschappen’ as well, either as a plaintiff or as a defendant. 27 Rule 1 of Order 81 of Rules of the Supreme Court (UK), for partners of a partnership to sue or be sued in the name of the firm; OAMI News 3-1998. 24

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general nature, holding that certain legal bodies do have the capacity to sue or be sued, although they lack legal personality.28 24 Viewed abstractly and regardless of the court decisions relating to individual cases, the ability to sue and be sued can be deduced from various factors closely connected with the other criteria in Art. 3. In fact, these parameters are to a large degree mutually interdependent. If a legal body is capable of having rights and obligations, it will regularly also make contracts and will be able to accomplish other legal acts. If, as a result of participating in legal transactions, it is able to establish rights and obligations, however, it will attain legal capacity (without reaching the status of legal personality). What follows as an almost indispensable corollary is that a legal body that can have rights and obligations, can conclude contracts and assume obligations in its own name, is endowed with the legal capacity to enforce (sue) and defend (be sued) those legal positions, if need be, in its own name as a party in court.29

V. Examples 25

26

27

28 29

The CTM system is readily available to natural and legal persons as well as legal bodies (complying with the requirements laid down in Art. 3) from all over the world. For the analysis under Art. 3 the laws governing the legal body in question is decisive. In light of this, it would go far beyond the scope of this commentary to embark on a journey through the over 200 different jurisdictions worldwide. Neither does it appear sensible to focus on only a few jurisdictions.30 Rather, it is essential to analyse the parameters laid down in Art. 3 (s. above mn. 7 to 24). under the respective national law. The following examples have been chosen because they provide some guidance as to the application of the requirements listed in Art. 3, to be assessed under the various national laws: – UK partnerships under the UK Partnership Act of 1890,31 which may prove to be valuable for the analysis of similar partnerships established under the regimes of other common law jurisdictions such as Australia, Canada, South Africa or the US. – Dutch maatschap; OHIM confirmed the capacity to act under Art. 3 in relation to a Dutch law firm.32 – German Gesellschaft bu¨rgerlichen Rechts (GbR); no legal personality, but confirmed capacity to have rights and obligations, to conclude contracts and assume obligations and to sue and be sued, all in its own name.33

28 S. for example BGH Case II ZR 331/00 NJW 2001, 1056–1061, confirming (for the first time ever) that a German Gesellschaft bu¨rgerlichen Rechts (GbR), i. e. a private partnership under the German Civil Code, can be a party to court proceedings. 29 Well worth perusing in this context, because of the precise and profound analysis, but also the ‘historic’ background, in the decision rendered by BGH Case II ZR 331/00 NJW 2001, 1056 et seq. (only in the German language). 30 Overviews as to a number of examples, mostly not in a CTM context, are provided by Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 3, mn. 7–17, and v. Kapff, in Ekey/ Klippel (ed.), Heidelberger Kommentar zum Markenrecht, Art. 3, mn. 7–20. 31 OAMI News 3-1998. 32 OHIM Dec. of 28.7.1999 – R 195/1998-1 – Nauta Dutilh v OHIM, mn. 12–17; skeptical insofar Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 3, mn. 19. 33 BGH Case II ZR 331/00 – NJW 2001, 1056–1061 (decision in the German language).

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VI. Legal consequences If the requirements under Art. 3 are met, the legal body concerned will be regarded as a legal person. As such, it is entitled to own CTM rights and has the capacity to act before the Office and the courts. Where a CTM application is filed on behalf of an applicant that neither is a natural or a legal person nor satisfies the conditions under Art. 3 (in conjunction with the applicable national law), it has to be rejected. The applicant must be established from the outset or, at the minimum, able to be clearly identified according to objective criteria. If the CTM application is invalid because the ‘applicant’ lacks legal personality and cannot be regarded as a legal person in the sense of Art. 3, a transfer of the (invalid) application to a natural person behind the ‘applicant’ does not come into consideration.34 The applicant has to submit sufficient information identifying the proprietor. If the application fails to meet this requirement, the deficiencies may be remedied within two months of receipt of the respective notification from the Office. If the deficiencies are not remedied before the time limit expires, the application will not be dealt with as a CTM application.35 On the other hand, if only formal requirements are not complied with, e. g. regarding the proper name of the legal body, the Office will invite the applicant to remedy the deficiencies noted within a specified time period.36 It would be a different scenario if the application for registration of the CTM were validly filed (or the CTM validly registered) initially, but the applicant/proprietor subsequently ceased to exist. In such a case, where the applicant ceased to exist and no successor in title claimed any rights to the application thereafter, OHIM held that the application for the CTM ‘must be deemed to have ceased to exist or to have been abandoned’.37 34 Rightfully pointed out by Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 3, mn. 24. 35 Any fees paid by the applicant shall be refunded; s. Rule 9 (1)(a)(i), (2) CTMIR. 36 S. Rule 9 (3), (4) CTMIR. 37 OHIM Dec. of 29.7.2010 – R 575/2010-1 – El Corte Ingles, S.A. v 4Wheels Winners, mn. 12, 13; in the particular case the applicant ceased its activities in June 2008 and was removed ex officio from the French Corporate Register in September 2008.

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TITLE II THE LAW RELARING TO TRADE MARKS SECTION 1 Definition of a Community trade mark and obtaining a Community trade mark Article 4 Signs of which a Community trade mark may consist A Community trade mark may consist of any signs 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. Rc. 2 Bibliography: Achim Bender, ‘Die grafische Darstellbarkeit bei den neuen Markenformen, in: Verena v. Bomhard/Jochen Pagenberg/Detlef Schennen (Hrsg.)’, in Harmonisierung des Markenrechts, FS v. Mu¨hlendahl, 2005; Bettina Ellias, ‘Do Scents Signify Source: An Argument Against Trademarks Protection for Fragrances’, 82 Trademarks Rep., 475; Alberto de Elzaburu/Jesu´s Go´mez Montero, ‘New Types of Marks – Is the ECJ living up to Expectations?’, in FS v. Mu¨hlendah, 2005, 171; Gordon Humphreys, ‘Non-conventional trade marks: an overview of some of the leading case law of the Boards of Appeal’, E.I.P.R 32 (9) (2010), pp. 437; Maximilian Schenk, Die markenrechtliche Schutzfa¨higkeit von Zeichen aus empirischer und sprachwissenschaftlicher Sicht, 2006; Wolfgang Sekretaruk, Faben als Marke, 2005; Karl Sessinghaus, Geruchs- und Geschmacksmarken – Innovation im Markenrecht, 2004.

Content I. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Requirements for registrability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Sign . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Distinctiveness in the abstract . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Graphical representation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Eligible categories of signs. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Single letters, numerals, words and word combinations. . . . . . . . . . . . 2. Figurative elements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Shapes . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Holograms . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Moving images . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Colours . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Single colours . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Formless and shapeless combination of two or more colours. . 7. Sounds. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8. Scents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9. Taste . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10. Touch. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11. Position. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12. Design of a retail store . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Indication of the category of trade mark and subsequent changes in the description of the category . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Obligatory indication. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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2. Ambiguous and contradictory descriptions incoherent with the nature of the sign. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 57 3. Re-categorization of the sign.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 59

I. General The provision of Art. 4 describes the types of sign which are eligible for registration 1 (see Art. 6) as Community trade marks. Whether such sign, defined in the abstract, will finally be registered for specific goods or services depends on the examination against absolute (Art. 7) and relative grounds for refusal (Art. 8). Art. 7 (1)(a) refers back to Art. 4 and imposes the refusal of registration if the sign applied for does not comply with the requirements of Art. 4. Compliance with the requirement of a graphical representation is necessary for obtaining a filing date (Arts. 27 and 26 (1)(d)). Art. 4 copies the wording of Art. 2 of the Trade Mark Directive thereby ensuring a 2 harmonized approach vis-a`-vis the laws of the Member States. It takes up the broad trade mark concept introduced by the Commission in its memorandum of 1976 by which no category of signs was to be excluded ab initio from trade mark protection. This line of reasoning was supported not only by international developments in the field of trade mark law at this time but also by two additional arguments: First, if the definition of the Community trade mark were more narrowly drawn than the definition in some Member States, the Community trade mark system would be less attractive. Second, a wider definition would guarantee a greater degree of legal certainty: ‘it would provide an inducement to register distinguishing characteristics, such as get-up, which it has not hitherto been possible in some Member States to protect through registration and which would thus be available in the public register for inspection by third parties’1. It is for sure that the broad definition of eligible signs has contributed to the success 3 and popularity of the Community trade mark, thus confirming the legitimacy of the Commission’s argument. The number of applications for non-traditional trade marks has grown ever since the Office in Alicante opened its doors and can be expected to continue to grow as brand owners continually seek new ways to stand apart from the crowd of advertising. It is not clear, however, whether the trend towards a higher degree of legal certainty that the Commission predicted, took place. While registration of all kind of signs is promoted, it is, in many cases, not clear which scope of protection must be attributed to those types of marks. While the register allows perceiving the existence of a registered right, it is only in the course of opposition or infringement proceedings that the scope of many non-traditional trade mark rights can truly be understood.

II. Requirements for registrability Art. 15 TRIPS declares any sign that is capable of distinguishing the goods or services 4 of one undertaking from those of other undertakings, a protectable subject matter. An obvious definition, given that a trade mark is a sign the primary purpose of which is to 1 European Commission, Memorandum on the creation of an EEC trade mark adopted on 6 July 1976, SEC(76)2462, mn. 73.

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distinguish the goods or services of one undertaking from those of another2. Art. 4 adds to the latter the requirement of graphical representation and conceives the Community trade mark as a triadic structure constituted of a sign or tangible symbol, its graphical representation and its capability to refer to commercial origin. This is explained by the Court of Justice as follows: ‘First, it must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings’3.

1. Sign Art. 4 itself does not provide a definition of the concept of ‘sign’. Semiotics, the science of signs, defines the concept of ‘sign’ broadly as ‘something which stands to somebody for something in some respect or capacity’4. Consequently, a sign consists at least of two elements: a ‘signifier’ (the perceptible form of the sign, e.g: the letter sequence ‘book’), and a ‘signified’ (the meaning to which that perceptible form of the sign or symbol refers, e. g. the idea of a book). Many of the semiotics scholars add a third element, the interpretant or referent, which is the sign as decoded in the context of its use, the collateral meaning created by the observer (e. g. a concrete tangible book)5. 6 According to the Court of Justice, ‘the concept of a ‘sign’…covers any message which may be perceived by one of the five senses’6. By referring in its definition to the aspect of transmission of a ‘message’, the Court also adopts a triadic model of sign. There is the ‘signifier’, the ‘signified’ and the ‘message’ which, in semiotics, would correspond to the referent. However, not any kind of message is acceptable in trade mark terms. Only if the relevant sign can, in the abstract, transfer a message about commercial origin, it is protectable substance matter under Art. 4. The purpose of the sign must be to distinguish the goods or services of one undertaking from those of another. 7 If the purpose of a trade mark is to communicate to the consumer a commercial origin, such process can take place, in principle, through any organ the consumer uses to perceive the outside world. Any message, capable of perception by the sense of sight, hearing, touch, smell or even taste, can constitute an origin indication for the consumer and can be a sign fulfilling the distinguishing function of a trade mark. From the outset there is no reason why trade marks should not be created by messages which differ from those capable of perception by the eye7. 8 However, for that a perceptible signifier creates a message (here: about commercial origin), there must be a gap between the signifier and the signified. There must be a distance between the signifier and its semiotic object that can create a meaning which refers to something different than the signified. In legal terminology, one could say: the sign must be ‘independent’ from the goods. Such independence does not mean that the 5

2 Opinion of Advocate General Ruiz-Jarabo Colomer, in CJ Case C-273/00 Sieckmann [2002] ECR. I11737, ECLI: eU: c:2002:748, mn. 16 3 CJ Case C-321/03 Dyson Ltd. [2007] ECR I-687, ECLI: eU: c:2007:51, mn. 28. 4 Charles Sanders Peirce, Collected Papers of Charles Sanders Peirce, mn. 228 (Charles Hartshorne, Paul Weiss eds., 1934). 5 Cf. Barton Beebe, The semiotic account of trade marks doctrine and trade marks culture, in: Greame B. Dinwoodie, Mark D. Janis, Trademarks Law and Theory: A Handbook of Contemporary Research, 2008, p. 44 et seq.; Maximilian Schenk, Die markenrechtliche Schutzfa¨higkeit von Zeichen aus empirischer und sprachwissenschaftlicher Sicht, p. 62 et seq. 6 CJ Case C-321/03 Dyson Ltd. [2007] ECR I-687, ECLI: eU: c:2007:51, mn. 30. 7 Opinion of Advocate General Ruiz-Jarabo Colomer, in CJ Case C-273/00 Sieckmann [2002] ECR. I11737, ECLI: eU: c:2002:748, mn. 23.

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sign may not be part of the product or even be the product itself. However, the sign must create an ‘intelligible surplus’8 which does not need to be a ‘capricious addition’9. The independence of the sign from the product is often referred to in the context of 9 assessing the concrete distinctiveness of a three dimensional sign applied for10. It is held that the consumer is not used to understand the shape of the goods as an indicator of commercial origin. However, if registration of a three-dimensional sign is refused on the grounds that it is seen as merely a variant of the usual shape of the product, such argument seems to indicate that there is no sign at all. If a shape does not create a distance between the signifier and the signified, there is no sign. It must be taken into account that the purpose of the requirement of the existence of 10 a ‘sign’ is in particular to prevent the abuse of trade mark law in order to obtain an unfair competitive advantage11. Consequently, if the subject-matter of the trade mark registration applied for would extend to a multiplicity of different objects, such design idea does not constitute a sign. The abstract feature of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner, for example, covers all conceivable shapes of a transparent collecting bin and can therefore not be registered12. The holder of a trade mark relating to such a non-specific subject-matter would obtain an unfair competitive advantage, contrary to the purpose of the relevant provisions of the Directive and the Regulation, 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 shape13.

2. Distinctiveness in the abstract A sign only constitutes a sign if it is capable of creating a message. This message must 11 be, under the third requirement of Art. 4, capable of hinting to the commercial origin of the relevant goods and services. Thus, from the point of view of semiotics, the first and third requirements are essential one: The potential of hinting towards commercial origin will convert the perceptible signifier into a sign. The concept of distinctiveness is the hinge on which trade mark law turns. Notwith- 12 standing its functional importance, distinctiveness has never been adequately theorized14. The distinctiveness referred to in Art. 4 is considered distinctiveness in the abstract15. It is different from the concept of distinctiveness of a sign for specific goods and services. If one was to follow the definitions of source distinctiveness and differential distinctiveness16, Art. 4 would refer to the first category. As source distinctiveness one would describe the vertical relation between signifier and signified which 8 Christian Hauer refers to ‘intellektueller U ¨ berschuss’ in: Kuscko/Schumacher (Eds.), marken.schutz, p. 34 referring to judgments of the German courts; Gu¨nther Eisenfu¨hr, in Eisenfu¨hr/Schennen: Gemeinschaftsmarkenverordnung, Article 4 mn. 10, refers to the concept of ‘Zutat’. 9 CJ Case C-299/99 Philips ECR [2002] I-5475, ECLI: eU: c:2002:377Philips/Remington C-299/99, mn. 50. 10 E. g. GC Case T-85/13 K-Swiss, Inc. v OHIM ECLI: eU:T:2014:509, mn. 40: The sign at issue must also be independent of the appearance of the product it designates in order, in particular, not to be perceived by the relevant public merely as a decorative element. 11 CJ Case C-49/02 Heidelberger Bauchemie ECR [2004] I-6129 ECLI: eU: c:2004:384, mn. 24. 12 CJ Case C-321/03 Dyson Ltd. [2007] ECR I-687, ECLI: eU: c:2007:51, mn. 19, 20, 35 and 37. 13 CJ Case C-321/03 Dyson Ltd. [2007] ECR I-687, ECLI: eU: c:2007:51, mn. 38. 14 Barton Beebe, The semiotic account of trade marks doctrine and trade marks culture, in: Greame B. Dinwoodie/Mark D. Janis, Trademarks Law and Theory: A Handbook of Contemporary Research, p. 52. 15 Philipp v. Kapff, in Gielen/v. Bomhard: Article 4, mn. 3; Gu ¨ nther Eisenfu¨hr in: Schennen, Gemeinschaftsmarkenverordnung, Article 4, mn. 14. 16 Barton Beebe, idem.

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creates a meaning that can vehicle information about commercial origin. The second one describes the extent to which a trade mark’s signifier is distinctive from other signifiers and signifiers in the trade mark system and ultimately defines its scope of protection17.

3. Graphical representation 13

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Under Art. 4 it is not sufficient for signs to be ‘capable of distinguishing the goods or services of one undertaking from those of other undertakings’. In addition, they must be capable of being ‘represented graphically’. This requirement, which was not part of the trade mark laws of all Member States prior to harmonization by the Directive18, aims at legal certainty. A registered trade mark grants to the owner a monopoly the scope of which must be precisely defined. By inspecting the register of trade marks, it must be possible to know, to the full extent of the public nature of registers, the nature and scope of the signs registered as trade marks19. The register must be intelligible to those persons having an interest in inspection, i. e. competing manufacturers or consumers. A sign not capable of being represented graphically will be barred from registration as a Community trade mark under Art. 7 (1)(a) CTMR. ‘It is not necessary expressly to exclude certain signs from legal provisions regarding trade marks. They exclude themselves, because they are unable to comply with the requirements of trade mark law.’20 It has been clearly established by case-law that a graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, and that the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (the so-called ‘Sieckmann criteria’)21. The Court of Justice repeatedly underlined that a sign must always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. The object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective. Under Art. 26 CTMR, a request for the registration of a Community trade mark must include a representation of the trade mark. In principle, this representation cannot be replaced by a description of the mark. If the applicant fails to file a representation, a filing date will not be accorded. Provided that the deficiency is not remedied, such a mark should not be refused but rather deemed not filed22. Only what is disclosed in the representation can be taken into account to judge the distinctiveness of a sign; a description may only serve as an additional reference23. The applicant is not permitted to file an application with the aim of claiming features of a mark as combined ‘in every conceivable form’24, or to claim that the graphic representation merely constitutes an example for a three-dimensional object, or to claim any 17

Barton Beebe, idem. For example, it did not exist in Spain or in Austria. 19 Opinion of Advocate General Ruiz-Jarabo Colomer, in CJ Case C-273/00 Sieckmann [2002] ECR. I11737, ECLI: eU: c:2002:748, mn. 36. 20 Opinion of Advocate General Ruiz-Jarabo Colomer, in CJ Case C-273/00 Sieckmann [2002] ECR. I11737, ECLI: eU: c:2002:748, mn. 45. 21 CJ Case C-273/00 Sieckmann [2002] ECR. I-11737, ECLI: eU: c:2002:748, mn. 46-55, and CJ Case C104/01 Libertel [2003] ECR. I-3793, ECLI: eU: c:2003:244, mn. 28-29. 22 Guidelines, Part B, Examination, Section 2, Examination of Formalities, paragraph 8. 23 GC Case T-15/05 Wim De Waele v OHIM (Shape of a Saussage) [2006]ECR II-1511 ECLI: eU:T:2006:142, mn. 36. 24 CJ Case C-49/02 Heidelberger Bauchemie ECR [2004] I-6129 ECLI: eU: c:2004:384, mn. 34. 18

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Art. 4 CTMR

perceivable forms of such an object, so that the subject-matter of the trade mark registration would extend to a multiplicity of different objects25. While Art. 4 requires the signs for which registration is sought to be ‘capable of being represented graphically’, the Commission Proposal for an amended CTMR26 envisages the replacement of this requirement by the prerequisite that signs must be capable of ‘being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor’. The new wording makes sense as it consolidates a development that has already taken place by way of an overly broad interpretation of the term ‘graphic representation’ under the current wording. The accepted representation of a sound mark by way of MP3 file is certainly not a ‘graphic’ representation but rather an aural representation while a musical notation or a sonogram can certainly be classified as graphic descriptions but not as exact representations of the relevant sign. OHIM guidelines anticipate the legislative change in this respect: ‘If the sign by its own nature is not graphically representable, a description can be sufficient provided that this description is clear, precise, self-contained, easily accessible, intelligible, durable and objective. Therefore, sound marks can be registered on the basis of a description’27 Doing away with the requirement of graphical representation in order to facilitate the registration of non traditional marks that can be represented by technological means will probably create new questions for the courts to decide. However, the requirements concerning clarity, durability and intelligibility of the registry entry established by the Court of Justice in the Sieckmann case will certainly remain valid and will continue to be the basis of future court decisions. It is interesting to note that the Court has used the terminology developed in the context of Art. 4 also in the context of defining clarity requirements for drafting the list of goods and services28. It could be argued that the refusal of a trade mark application based on the lack of clarity of the list of goods and services should equally be based on Art. 4 as an expression of the principle whereby the public register must allow for efficient inspection in relation to the scope of the monopoly granted. Such interpretation of Art. 4 as a vehicle provision would allow the Office to address concerns of clarity in respect of the list of goods and services in the context of cancellation procedures29. However, it is suggested that the wording of the provision cannot be stretched to this extent.

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III. Eligible categories of signs. Art. 15 (1) of the TRIPS Agreement provides that ‘members may require, as a 22 condition of registration, that signs be visually perceptible’. Obviously, the acceptance for registration of non-visible signs depends on the actual capacity of trade mark offices to receive, process and publish such applications. In particular, the use of electronic filing contributes to facilitate the work of Offices in relation to non-visible signs30. 25 CJ Case C-321/03 Dyson Ltd. [2007] ECR I-687, ECLI: eU: c:2007:51, mn. 19, 20, 35 and 37; OHIM Dec. of 29/4/2010 R 437/2009-4 ‘Oase Living Water’. 26 Proposal of 27.3.2013 COM (2013) 161 final, p. 9. 27 Examination Guidelines of 1.2.2014, Section IV, 2.1.1. 28 CJ Case C-307/10 Chartered Institute of Patent Attorneys (IP Translator) ECLI: eU: c:2012:361. 29 At present there is no explicit legal basis for canceling a trade mark on the basis of an unclear list of goods and services; cf. Gu¨nther Eisenfu¨hr, in: Eisenfu¨hr/Schennen: Gemeinschaftsmarkenverordnung, Article 4, mn 17. 30 SCT 19/2/mn. 59 et seq.

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Community Trade Mark Regulation

In his opinion in the Sieckmann case, the Advocate General refers to another distinction, the distinction, made in neurophysiology, between ‘mechanical’ and ‘chemical’ senses. The first group consists of touch, sight and hearing and allows for comprehensible description of perception31. The second group consists of the senses of taste and smell and is more problematic, due to the absence of precise rules for determining the content of this kind of sensory perception.

1. Single letters, numerals, words and word combinations Single letters, numerals and words are, by the wording of Art. 4, eligible for registration as are combinations of words. Slogans, defined as short, memorable group of words used in advertising campaigns as means of drawing attention to one distinctive feature of a product, are equally an eligible category of signs32. Once the combination of words surpasses the size of a memorable group of words, it is, however, doubtful whether it can still function as a sign with the purpose of distinguishing the commercial origin33. 25 The Office accepts as word marks typewritten marks using the alphabet from any official EU language34. This means that word marks in Greek or Cyrillic are acceptable while a word in Arab script will not be considered a work mark but a figurative mark. The categorization as a figurative mark, however, will not prevent the Office from analysing its contents for the purpose of an eventual refusal based on public policy35. A mark consisting of text written across more than one line will also be categorised as a figurative mark36. 24

2. Figurative elements A figurative mark is a mark consisting of exclusively figurative elements or combinations of verbal and figurative or otherwise graphical elements. But also verbal elements in non-standard fonts, in colour or written in non-EU alphabets are considered figurative marks37. Similar to oversize text, complex figurative elements or ornamentations risk losing their eligibility for registration for not being able to function as a sign. 27 If a figurative trade mark is accompanied by a colour claim, the graphical representation must show this colour. For example, if a black and white representation of the mark is filed accompanied by the colour claim for ‘silver’, a deficiency will be raised allowing the applicant to waive the colour claim. In the absence of such waiver, the application will be refused due to the inherent contradiction between the graphic representation and the colour claim38. 26

3. Shapes 28

Shapes (including the shape of the product itself), containers and packaging are eligible for registration as three-dimensional marks. They are more established than 31 Opinion of Advocate General Ruiz-Jarabo Colomer, in CJ Case C-273/00 Sieckmann [2002] ECR. I11737, ECLI: eU: c:2002:748, mn. 25. 32 See CJ Case C-398/08P Audi AG vs OHIM (Vorsprung durch Technik) [2010]ECR I-535, ECLI: eU: c:2010:29. 33 Gu ¨ nther Eisenfu¨hr, in: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Article 4, mn. 14. 34 Guidelines for Examination, Part B, Section 2, 9.1., p. 16. 35 Cf. OHIM Dec. in Cases R 174/2004-2 and R 176/2004-2 Bin Laden. 36 Guidelines for Examination, Part B, Section 2, 9.1., p. 16. 37 Guidelines for Examination, Part B, Section 2, 9.1., p. 17. 38 OHIM Dec. of 29/11/2006 R 364/2006-4 Loudspeaker Cabinet.

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Art. 4 CTMR

other categories of non-traditional marks and addressed in international trade mark law, namely the Trade marks Law Treaty 1994 and the Singapore Treaty on the Law of Trade marks 2006, covering issues of representation of the sign39. As regards the CTM system, the graphic or photographic representation may consist of up to six perspectives of the same shape (Rule 4 (4) CTMIR) which must be submitted in one single JPEG file in the case of e-filed applications or on one single A4 sheet in the case of paper-filed applications. While up to six perspectives may be filed, a single view of the shape is sufficient where the shape to be protected can be ascertained from that single view40. If the applicant files different perspectives of a three-dimensional object on several sheets of paper (e. g. one page per picture/perspective), a deficiency will be raised, setting a two-month time limit for the applicant to indicate which of the representations filed should be used as the representation of the CTM application41. Under Rule 3 (4) CTMIR, in the case of three-dimensional marks, the application must contain an indication to that effect. If no mark type is indicated and only one view of the object has been provided and the mark description – if any – does not say that the mark filed is three-dimensional, the Office will treat it as a figurative trade mark42. As explained above, the means of graphic representation must be unequivocal and objective43. If the application is unclear as to whether the graphic representation depicts two perspectives of the three-dimensional object or two different objects, it lacks the necessary clarity and precision. The Board held that it cannot be affirmed that the two parts of the representation in the application are two different perspectives of the same ordering machine, inasmuch as the base on which the machine stands is entirely different in the two parts represented. As the applicant did not disclaim this part of the shape, the Board refused the application on the basis of Art. 7 (1)(a) in conjunction with Art. 444 on the grounds that the mark applied for is not represented with clarity and precision.

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4. Holograms The hologram gives the figurative mark a three-dimensional character and eventually 33 adds movement. Holograms optically store and retrieve an image in three dimensions, while the image might change depending on the angle chosen by the viewer (movement). The latter feature makes a hologram difficult to capture on a paper reproduction. However, holograms have been accepted by OHIM when presented in one or a number of images, giving a clear impression of the different views and combined with a description45.

5. Moving images Movement marks comply with the requirements with respect to graphic representa- 34 tion if they are depicted by a sufficient number of stills to clearly represent the flow of the movement, together with a precise and detailed textual description of the progression, thus leaving no doubt as to the concept of the movement mark46. 39

Cf. Report of the SCT/19/2, p. 4. See also Recommendations of the SCT, 18th session, on Non-Traditional Marks. 41 Guidelines for Examination, Part B, Section 2, 9.1., p. 18. 42 Guidelines for Examination, Part B, Section 2, 9.1., p. 19. 43 See CJ Case C-273/00 Sieckmann [2002] ECR. I-11737, ECLI: eU: c:2002:748, mn. 52–54 44 OHIM Dec. of 12/7/2012 in Case R-1631/2011-1. 45 OHM Dec. of 23/9/2001 in Case R-772/2001. 46 OHIM Dec. of 23/09/2010 R 443/2010 2 – ‘RED LIQUID FLOWING IN SEQUENCE OF STILLS. 40

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Community Trade Mark Regulation

In cases where a sign is defined by both a graphic representation and a textual description, in order for the representation to be sufficiently clear, precise, intelligible, and objective, the description must coincide with what can be seen in the graphic representation. A movement mark may be refused registration under Art. 4 when a ‘reasonably observant person has to make particularly high intellectual efforts to perceive what the movement mark is’47. 36 No limit has been set up in relation to the number of stills used to depict the movement. However, what is said about word combinations is also applicable here. If the mark is not memorable, due to its length, it cannot function as a sign. 35

6. Colours 37

Industry deliberately and consistently uses colours and colour combinations, not only for their products and packaging, but also in advertising and for the design of their sales outlets. Colour per se and combinations of colour without delineated contours are considered as part of the category of non-traditional marks and accepted in many jurisdictions for registration48.

a) Single colours. The representation of a colour per se must consist of a representation of the colour(s) without contour. International colour codes (codes from matching systems such as Pantone, RAL, HKS) are accepted as additional information in the colour indication, but they should never replace the description of the colour in words49. 39 In the Libertel judgment50, the Court ruled in the context of the Directive that a graphical representation by sample was not sufficient as colour samples may fade over time and that the colour must be defined by an ‘internationally recognized colour code51. However, given the colour stability of the electronic files, OHIM does not consider colour codes compulsory. 40 It is interesting to note that the Court of Justice acknowledges a public interest in not unduly restricting the availability of colours for competing companies who offer for sale goods or services of the same type as those in respect of which registration is sought52. It is difficult to locate this argument systematically. It could be read as a normative argument in favour of lack of abstractive distinctiveness. However, there is no further development of this argument in the subsequent case law. 38

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b) Formless and shapeless combination of two or more colours. Where there is more than one colour, the proportion of each colour must be specified in the description of the mark. If this has not been done in the application, the Office will raise a deficiency53. The formless and shapeless combination of two or more colours ‘in every conceivable form’, does not exhibit the qualities of precision and uniformity required by Art. 454 Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the 47

Idem. SCT/19/2, mn. 23. 49 Guidelines for Examination, Part B, Section 2, 9.5., p. 22. 50 CJ Case C-104/01 Libertel [2003] ECR. I-3793, ECLI: eU: c:2003:244. 51 Libertel, mn. 38. 52 Libertel, mn. 55 and 60. 53 Guidelines for Examination, Part B, Section 2, 9.5., p. 22. 54 CJ Case C-49/02 Heidelberger Bauchemie ECR [2004] I-6129 ECLI: eU: c:2004:384, mn. 34 48

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Signs of which a Community trade mark may consist

Art. 4 CTMR

protection afforded to the proprietor of the trade mark. Accordingly, a graphic representation consisting of two or more colours, designated in the abstract and without contours must be systematically arranged by associating the colours concerned in a predetermined and uniform way55.

7. Sounds Sounds, either pre-existing or specially commissioned for the purposes of branding, 42 may constitute signs eligible for trade mark registration. Such sound marks may also consist of non-musical sounds, either existing in nature (e. g., animal sounds or sounds produced by meteorological or geographical features) or produced by machines and other man-made devices56. Given the powerful memory sense of sound, sound branding is increasingly becoming popular for conveying a memorable message to targeted consumers. Short distinctive melodies (sonic logos) are used to enforce the recognition of brands (e. g. the 20th Century Fox Fanfare or the Nokia ringtone). But also nonmelodic sounds can serve as badge of origin (e. g. the roar of the MGM lion or the sound of the V-twin engine by Harley Davidson). Even if the legislator does not explicitly mention sound marks, in their joint 43 statements, the Council and the Commission did not rule out the possibility of registering sounds as Community trade marks57. When it comes to acceptable forms of graphical representation, the description of the sound must be clear, precise and selfcontained, thus allowing understanding the scope of protection. In particular, the description must 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 scope of protection of the trade mark58. If a sound mark consists of music, the Office will accept only traditional musical 44 notation (musical notes on a stave) as a graphic representation of the sound applied for. Even if such a representation is not immediately intelligible, the fact remains that it may be easily intelligible59. However, where the mark consists of a non-musical sound, a graphic representation consisting of an oscillogram or sonogram will be acceptable provided that it is accompanied by a corresponding sound file submitted via e-filing60.

8. Scents There is currently no means of graphically representing smells in a satisfactory way. 45 There is no generally accepted international classification of smells which would make it possible, as with international colour codes or musical notation, to identify an olfactory sign objectively and precisely through the attribution of a name or a precise code specific to each smell61 As regards a chemical formula, few people would recognise the odour in question in such a formula. Moreover, a deposit of an odour sample would not constitute a graphic representation for the purposes of Art. 4 CTMR, as an odour sample is not sufficiently stable or durable. A description by words or pictures (‘balsamic-fruity with a 55

Heidelberger, mn. 33. SCT/19/2 mn. 42. 57 Joint Statements of 20 December 1993 B(4)(a). 58 CJ Case C-283/01 Shield Mark [2003] ECR. I-14313, ECLI: eU: c:2003:641, mn. 61. 59 Shield Mark, mn. 63. 60 See decision of the President EX-05-3 of 10/10/2005. 61 GC Case T-305/04 Eden SARL/OHIM, Smell of ripe strawberries [2005] ECR II-4705 ECLI: eU:T:2005:380, mn. 34. 56

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Community Trade Mark Regulation

slight hint of cinnamon’62 or ‘smell of ripe strawberries’ or the picture of a strawberry63), on the other hand, does not eliminate all elements of subjectivity in the process of identifying and perceiving the sign claimed64. Consequently, the requirements of graphic representation of an olfactory mark 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 elements65. 46 The argument referring to the subjectivity, however, is somewhat flawed as the perception of any sign is accompanied by an element of subjectivity. The interpretational process, the construction of meaning depends on the individual and its sociocultural context. Moreover, the Court has accepted methods of description which equally involve an important element of subjectivity such as the notation system. While a notation system cannot represent the pitch, warmth and other quality of the sound, it was deemed acceptable because it allows understanding the ‘essential parameters’ of a sound and thus is a ‘faithful representation’ of the sign66. 47 OHIM and other jurisdictions, however, have accepted scent marks. For example, OHIM’s Third Board accepted the fragrance of raspberries for fuels67. In the United States, a scent trade mark was first recognised in 1990, described as a high impact, fresh, floral fragrance reminiscent of plumeria blossoms, applied to sewing thread. In the UK, registrations for tires with ‘a floral fragrance/smell reminiscent of roses’ and darts with ‘the strong smell of bitter beer’ can be found. Thus, it cannot be ruled out that in the future an olfactory sign might possibly be the subject of a representation which satisfies all the requirements laid down by Art. 4 CTMR68. 48 Assuming that, in the future, a sufficiently precise description is possible and that a product’s fragrance functions as an origin-identifier, the manufacturer seeking to protect that mark from infringement must be able to demonstrate that similar scents will create a likelihood of confusion69. It is difficult to imagine what kind of proof can be considered sufficiently objective to serve as evidence in court proceedings. Thus, the impossibility of enforcement advocates against the registration of scent marks.

9. Taste 49

The arguments in relation to scents above under paragraph VIII are applicable in a similar way for taste marks. The description of a taste cannot eliminate all elements of subjectivity in the process of identifying and perceiving the sign claimed with the consequence that there seems to be no means of graphically representing tastes in a satisfactory way. The attempt of pharmaceutical company to register the taste of artificial strawberries was rejected with even more fundamental arguments aiming at the abstract distinctiveness of tastes to function as a trade mark70: Any manufacture is entitled to add the flavour of artificial strawberries to those products for the purpose of disguising any unpleasant taste that they might otherwise have or simply for the 62

CJ Case C-273/00 Sieckmann [2002] ECR. I-11737, ECLI: eU: c:2002:748. GC Case T-305/04 Eden SARL/OHIM, Smell of ripe strawberries [2005] ECR II-4705 ECLI: eU:T:2005:380. 64 Smell of ripe strawberries, mn. 33. 65 Sieckmann, mn. 69-73. 66 Sieckmann, mn. 61–62. 67 OHIM Decision of 5/12/2001 in Case R 711/1999-3 – The scent of raspberries. 68 GC Case T-305/04 Eden SARL v OHIM, Smell of ripe strawberries [2005] ECR II-4705 ECLI: eU:T:2005:380, mn. 28. 69 See, Bettina Ellias, Do Scents Signify Source: An Argument Against Trademarks Protection for Fragrances, 82 Trademarks Rep. 475 (479) 70 See OHIM Dec. of 04/08/2003 R 120/2001-2 – The taste of artificial strawberry flavour. 63

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Art. 4 CTMR

purpose of making them pleasant to taste. Moreover, the taste is unlikely to be perceived by consumers as a trade marks; they are far more likely to assume that it is intended to disguise the unpleasant taste of the product. Finally, it is difficult to understand how taste can act as a trade marks when consumers only taste goods after purchase.

10. Touch It is possible to manufacture products in a way that the product or its packaging have 50 a particular sensation to the touch. This sensation might derive from the texture of the product surface (e. g. velvet covering of a bottle of wine71) or a particular shape which is incorporated into the product (car seat button in the shape of a car seat72). Such tactile or sensory marks will be difficult to describe precisely. It is not clear to which extent the tactile impression must be described and whether in all cases a description of the texture of the product (e. g. velvet) or the contour of the incorporated shape (dimension and structure) is sufficient. It is clear however, that a mere picture of the felt material does not constitute a valid graphical representation73.

11. Position The particular and distinctive location of a sign in relation to a product may constitute a trade mark and is recognized as position mark in various jurisdictions74. A position mark is a figurative element which is placed on a definite part of a product at the same position in constantly identical shape and size. The protection shall not include the shape of the object on which the sign is positioned. Even if the figurative element is in itself not distinctive, it may gain distinctiveness when attached to a product in a particular position. The Court has implicitly accepted the position mark as a separate category of trade marks, applies, however, the criteria for three-dimensional trade marks consisting of the shape of the product or a part of it. Consequently, the distinctiveness and registrability of the sign will depend on whether the sign departs significantly from the norm or customs of the sector. The decisive factor governing the applicability of the case-law on three-dimensional marks is not the classification of the sign as figurative, three-dimensional or other, but the fact that the sign is indistinguishable from the appearance of the product designated75. To the extent to which average consumers are not in the habit of making assumptions as to the commercial origin of goods on the basis of signs which are indistinguishable from the appearance of the goods themselves, such signs will be distinctive only if they depart significantly from the norm or customs of the sector. Like in the case of three-dimensional trade marks, only one representation with one single view of the sign is required. The representation of the sign must nevertheless allow the Office to clearly define the object for which protection is claimed. To this end, the applicant may use dotted or broken lines to indicate the part of the object for which protection is not claimed or provide a written description defining the location of the sign (label, pocket, button, stripe, etc.) in relation to the product.

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US trade mark registration No. 3 155 702. Judgment of the German Federal Court (Bundesgerichtshof) BGHZ 73/05. 73 OHIM Dec. of 30/10/2007 R 1174/2006-1. 74 See SCT 19/2 p. 9. 75 GC Case T-547/08 X Technology Swiss GmbH v OHIM (Orange colouring of the toe of a sock) [2010] ECR II-2409, ECLI: eU:T:2010:235, mn. 26. 72

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12. Design of a retail store 55

Retail spaces, in particular when they form part of a retail chain, are not only designed to create the best positive environment in order to entice the consumer to purchase goods. The design of a retail store can also serve to tell the brand’s story and philosophy (flagship store) and, ultimately, indicates commercial origin. Thus, the representation of the layout of a retail store may be registered as a trade mark. The Court of Justice went even so far as to allow the graphical representation by a design alone, that is by an integral collection of lines, curves and shapes, without indicating the size or the proportions of the store’s interior76. Having regard to the case law concerning colour combinations, it could be argued that such exclusively visual representation has a level of abstraction that covers a multiplicity of retail spaces and might therefore constitute an abuse of trade mark law in order to obtain an unfair competitive advantage77. The Court emphasized however, that the general eligibility of the store design to be registered does not mean that this sign necessarily has distinctive character.

IV. Indication of the category of trade mark and subsequent changes in the description of the category 1. Obligatory indication 56

In the application form, the applicant must identify the type of trade mark applied for. OHIM’s application form contains boxes for the following types: ‘word mark’, ‘figurative mark’, ‘and three-dimensional mark’, ‘colour per se’, ‘sound mark’ and ‘other’. The latter must be further specified, e. g. ‘position mark’. The explicit categorization of marks serves several functions. Firstly, it complies with a legal requirement in relation to certain types of marks (see Rule 3 CTMIR). Secondly, it helps the Office to understand what the applicant is seeking to register and, thirdly, it facilitates research in the relevant data bases. If the applicant does not indicate the type of mark, the Office will, based on the representation provided and any mark description, accord the appropriate mark type and inform the applicant in writing, setting a two-month time limit for observations. If no observations are received, the change of mark type will be deemed to have been accepted78.

2. Ambiguous and contradictory descriptions incoherent with the nature of the sign 57

A description which is ambiguous or contradictory will not be accepted. Moreover, the description must be coherent with the nature of the sign as indicated by the applicant. In case T-293/10, the trade mark applied for was a ‘colour mark per se’. The representation showed seven squares of different colours. The attached description, however, described the external appearance of a cube: ‘Six surfaces being geometrically arranged in three pairs of parallel surfaces, with each pair being arranged perpendicularly to the other two pairs characterised by: (i) any two adjacent surfaces having different colours and (ii) each such surface having a grid structure formed by black borders dividing the surface into nine equal segments’. 76

CJ C-421/13 Apple Inc. v Deutsches Patent- und Markenamt ECLI: EU: c:2014:2070. Cf. CJ Case C-49/02 Heidelberger Bauchemie ECR [2004] I-6129 ECLI: EU: c:2004:384, mn. 24. 78 Guidelines Part B, Section 2, p. 16. 77

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Art. 5 CTMR

The Court held that a sign so defined was not a colour mark per se but a three- 58 dimensional mark, or figurative mark, which corresponds to the external appearance of a particular object with a specific form. Even if the description had been clear and easily intelligible – which it was not – it contained in any event an inherent contradiction in so far as concerns the true nature of the sign and had to be refused on the basis of Art. 7 (1)(a) and Art. 479.

3. Re-categorization of the sign. The categorization of the sign has an impact on its scope of protection. For example, 59 a colour mark, with its degree of abstraction, will provide a broader scope of protection then a figurative trade mark showing stripes of colour. If the indication of the type of mark is not in coherence with the submitted graphical representation, this can lead to an objection by the office and, eventually, the rejection of the application (see above). In assessing the distinctiveness of the sign, the Office must respect the indication of the category by the applicant and is not allowed to interpret the graphic representation for the purpose of re-categorizing the sign. In case T-245/12, the Board had argued that the contested mark was not a colour mark per se, but rather a two-dimensional figurative mark made up of colours in a specific frame, order and representation, namely in the form of a pin. By doing to, the Board misperceived the nature and characteristics of the mark at issue80.

Article 5 Persons who can be proprietors of Community trade marks Any natural or legal person, including authorities established under public law, may be the proprietor of a Community trade mark. Bibliography: Georg Hendrik Christiaan Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967, 1969; Kindler, Internationales Privatrecht, Internationales Wirtschaftsrecht, Einfu¨hrungsgesetz zum Bu¨rgerlichen Gesetzbuch, in volume 11: Mu¨nchener Kommentar zum Bu¨rgerlichen Gesetzbuch, 5th edition, Munich 2010; Streinz, EUV/AEUV – Vertrag u¨ber die Europa¨ische Union und die Arbeitsweise der Europa¨ischen Union, 2nd edition, 2012.

Content I. Owner of a CTM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Specific requirements pursuant to the CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Domiciled, principle place of business, commercial establishment 2. Nationality. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Art. 29 CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 4 5 7 8

I. Owner of a CTM Art. 5 regulates who can be the proprietor of a Community trade mark. In this 1 regard, Art. 5 is to be read in conjunction with Art. 3 stating that companies or firms and other legal bodies are to be regarded as legal persons if, under the terms of the law 79 GC Case T-293/10 Seven Towns Ltd/OHIM, (Representation of seven squares of different colours) ECLI: eU:T:2012:302, mn. 64 and 66. 80 GC Case T-245/12 Gamesa Eo ´ lica, SL/OHIM (Blended shades of green) ECLI: EU:T:2013:588.

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Community Trade Mark Regulation

governing them, they have capacity to act in terms of Art. 3.1 Thus, any natural person as well as any legal body in terms of Art. 3 may be the proprietor of a Community trade mark. According to the OHIM guidelines, this therefore also encompasses a legal body in the course of formation, for example.2 2 Thus, the CTMR no longer contains any restrictions regarding suitability as the proprietor of a Community trade mark like they were still contained in the original rule in Art. 5 of the predecessor regulation (EC) No. 40/94 until 2004.3 Furthermore, as can be concluded by implication from the rule in Art. 5, nor is the abstract suitability as the proprietor of a Community trade mark of an applicant dependent on other prerequisites. For example, the applicant is not required to perform any business activity or to intend to do so.4 Nor is it relevant if the applicant does not intend at all to use the CTM or if the sign applied for as a CTM is not protected as a trade mark in the applicant’s home country. The latter does not apply, however, in the event of application for an IR trade mark on the basis of an application for a CTM or a CTM via Art. 146 because this requires a basic trade mark in the country of origin pursuant to Art. 2 of the Protocol. In such case, the proprietor must thus be the applicant for or proprietor of a CTM at the same time.5 3 The fact that Art. 5 separately mentions authorities established under public law is likely to be of clarifying significance only in terms of most cases in practice because in our assessment they are already to be ascribed to the legal bodies in terms of Art. 3, this already being indicated by the wording of Art. 5 (‘including’). What legal bodies are authorities established under public law is subject, in turn, to the national law applicable to them.6 It must be observed in this regard that the relevant authority established under public law must satisfy the requirements regarding capacity to act under Art. 3 because only in this case is it able to act as a legal personality vis-a`-vis the Office.

II. Specific requirements pursuant to the CTMR 4

Irrespective of Art. 5, the CTMR contains some further provisions according to which the utilisation of particular rights under the CTMR is conditional on special personal prerequisites of the applicant. In this regard, the CTMR notably takes domicile (Art. 92) as well as domicile and nationality (Art. 146 in conjunction with the Protocol) as a basis, which is why this will be further elaborated on here. According to Rule 1 (1) b) 1

For details s. Hasselblatt, Art. 3, mn. 7 et seq. Guidelines for Examination in the Office for Harmonization in the Internal Market (Trademarks and Designs) on Community Trade Marks, Part B, Section 2, 7.1. 3 The rule in the original Art. 5 Regulation (EC) No. 40/94 contained restrictions regarding nationality and domicile of a proprietor of a Community trade mark because only nationals of or persons domiciled in a Member State of the EC, the Paris Convention or a state with regard to which reciprocity had been determined could be proprietors of a Community trade mark. The rule was modified in 2004 by Art. 1 Regulation (EC) No. 422/2004 whereby it already corresponded to the wording of the current Art. 5. At the same time, the then rules in Art. 36 (1) b), Art. 39, Art. 51 (1), Art. 52 (1) a) and the corresponding rules of the then CTMIR were adjusted and Art. 37 was deleted. The corresponding changes to Regulation (EC) No. 40/94 have been applicable since 11 March 2004. 4 View shared by Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 5, mn. 6, who, giving some examples, pointed out in this connection that the first CTMs were applied for by organisations that had no profit motive. 5 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 146, mn. 38 et seq. 6 Under German law, authorities established under public law, such as the state of Germany as such, regional authorities like cities, districts and municipalities or universities, are also numbered among the legal bodies. 2

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Art. 5 CTMR

CTMR, the application for a CTM has to inter alia include the nationality of the applicant and the State in which he is domiciled or has his seat or an establishment, which is examined by the Office according to Art. 36 (1)(b). Furthermore, only associations of manufacturers, producers, service providers or traders attributed legal capacity under Art 3 and legal persons organised under public law may be proprietors of a collective mark (Art. 66 (1)).7

1. Domiciled, principle place of business, commercial establishment Pursuant to Art. 92 (2), persons not having either their domicile or their principal 5 place of business or a real and effective industrial or commercial establishment in the EU must be represented in their acts before the Office by a representative admitted in accordance with Art. 93 – with the exception of filing an application for a CTM. If an application for an IR trade mark is filed with the OHIM in accordance with Art. 146 on the basis of an application for a CTM or a CTM, it is required pursuant to Art. 2 (1)(ii) of the Protocol that the person in whose name that CTM application or CTM registration stands is either a national of the EU, or is domiciled, or has a real and effective industrial or commercial establishment in the EU.8 The terms ‘domiciled’, ‘principle place of business’ and ‘real and effective industrial or 6 commercial establishment’ make reference to Art. 3 Paris Convention, according to which nationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of the Union shall be treated in the same manner as nationals of the countries of the Union. Since the EU is a member of TRIPS and the Paris Convention is binding on the EU through Art. 2 (1) TRIPS, said terms have to be construed in accordance with Art. 3 Paris Convention. Whether a natural person has his domicile in the EU is assessed under the relevant national law of the Member State of the EU in which the potential domicile is located. As a rule, an only temporary abode in the relevant Member State does not suffice for this. In addition, the domicile must actually exist,9 with the result that a post office box – even if set up on a permanent basis – is not sufficient. It is possible, however, for a natural person to have more than one domicile. The principle place of business of a legal person is usually determined by its articles of association and/or by the statutory provisions governing it. The term of ‘real and effective industrial or commercial establishment’ also covers merely commercial branches. In this connection, it is not required that it is the establishment of a legal person10 to the effect that, for example, also an establishment of a one-man business is covered. Due to lack of decisions handed down by CJ in that regard, it remains unclear as to how the term ‘establishment’ has to be construed under the CTMR regime. However, according to the CJ’s judgements dealing with said term in relation to Regulation (EC) no. 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (‘Brussels Regulation’), it seems very likely that the CJ will generally apply the same principles as with regard to the Brussels Regulation. That means that the branch has to feature at least a minimum of independency, that, however, not go too far,11 as well as a 7 Regarding the details, reference is made in this regard to the comment by Nordemann, Art. 66, mn. 9–14, 8 Refer to Bo ¨ sling, Art. 146, mn. 15–17 in that regard. 9 Also Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 5, mn. 14. 10 Also Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 5, mn. 16. 11 CJ Case C-14/76 de Bloos v Bouyer [1976] ECR 01497, mn. 20; CJ Case C-139/80 Blankaert and Willems v Trost [1981] ECR 008ng, mn. 9. See also Leible/Mu¨ller, Der Begriff der Niederlassung im Sinne von Art. 82 Abs. 1 Alt. 2 GGV und Art. 97 Abs. 1 Alt. 2 GMV, WRP 2013, 1, 3, mn. 10.

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CTMR Art. 5

Community Trade Mark Regulation

certain level of human and material resources, facilitating its participation in the course of trade.12 On the other hand, the different essence and purpose of e. g. the former Art. 5 no. 5 Brussels Regulation (Art. 7 no. 5 of Regulation (EU) no. 1215/2012 of 12 December 2012) which is the protection of the claimant, should not entirely be disregarded. Thus, unlike under the regime of the Brussels Regulation,13 merely bogus establishments or even letterbox companies should not suffice.14 Nor is it sufficient if it is only a branch of a third party – for example, a commercial agent, acting on behalf of the person.15

2. Nationality 7

The nationality of a natural person is also subject to national law.16 For example, with regard to Germany, Art. 116 of the German Basic Constitutional Law (Grundgesetz) specifies what natural persons are accorded German nationality. With regard to legal persons, the question of nationality (personal statute) is disputed and generally either follows the incorporation theory or real seat theory, the latter approach prevailing in continental Europe.17 According to Schennen, the OHIM follows the principles of the TFEU18 and the rulings of the CJ to the effect that the nationality of a legal person is usually not determined on the basis of the incorporation theory, but of the real seat theory; the same applies to international organisation.19 A corporation based in Germany would, therefore, have to be considered as a German company, which, however, renders the question of nationality irrelevant, since a legal person based in Germany would generally already have its ‘principle place of business of a legal person’ in Germany. Against the background of the latter and in view of the fact, that the principle of nationality forms another alternative for the application of Art. 2 (1) of the Protocol in order to secure protection through an international registration, which would have no area of application in practice if a legal person being a ‘national’ of a specific state would require it having its principle place of business in this state, it cannot, however, convince to apply the real seat theory within Art. 146 in combination with Art. 2 (1) of the Protocol. Instead, the incorporation theory should be applied, which would also ensure the consonance with the principles having to be applied with regard to natural persons (where there is also a difference in practice between the nationality of a natural person and where it is domiciled, so that a natural person could be the national of one state while being domiciled in another). To the opinion here, this does not conflict with Art. 54 (1) TFEU, since said provision concerns the different aspect of freedom of establishment and it is only applicable 12

CJ Case C-33/78 Somafer v Saar-Ferngas [1978] ECR 02183, mn. 12. Refer to CJ Case C-218/86 SAR Schotte v Parfums Rothschild [1987] ECR 04905, mn. 16. 14 See also Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967, Art. 3 (d), page 34 (available under www.wipo.int/ treaties/en/ip/paris/), who points out that the requirement of a ‘real and effective’ establishment was included by the Additional Act to the Paris Convention adopted by the Revision Conference of Brussels in 1987–1990 in order to prevent abusive claims to application of the Paris Convention. 15 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 5, mn. 16. See also Leible/Mu¨ller, Der Begriff der Niederlassung im Sinne von Art. 82 Abs. 1 Alt. 2 GGV und Art. 97 Abs. 1 Alt. 2 GMV, WRP 2013, 1, 3, mn. 10. 16 CJ Case C-369/90 Mario Vicente Micheletti v Delegacio ´ n del Gobierno en Cantabria [1992] ECR I04239, mn. 10. 17 Informative Kindler, in Mu ¨ nchener Kommentar zum Bu¨rgerlichen Gesetzbuch, volume 11, mn. 351 et seq. 18 In particular, Art. 54 (1) TFEU stipulates that companies or firms formed in accordance with the law of a Member State and having their registered office, central administration or principal place of business within the Union shall (for the purposes of the chapter of the TFEU that Art. 54 (1) TFEU forms part of, be treated in the same way as natural persons who are nationals of Member States. 19 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 5, mn. 9. 13

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Art. 6 CTMR

on companies established under the law of a member state of the EU. The latter would not make any sense with regard to Art. 146 in connection with Art. 2 (1) of the Protocol. Further, the regulations of the Protocol have to prevail regarding Art. 146. Apart from that, Artt. 49 TFEU do not decide in favour of a particular theory of private international law20 and the CJ does at least neither strictly follow the real seat theory anyway.21

3. Art. 29 CTMR Pursuant to Art. 29 (1), only those persons who have duly filed an application for a trade 8 mark in, or in respect of, any state that is party to the Paris Convention or to the WTO (or their successors in title) are entitled to a right of priority, subject to Art. 29 (4). Eisenfu¨hr/ Schennen assume in this regard that it must be required in addition as a further prerequisite that the previous applicant is a member of a state that is party to the Paris Convention or to the WTO.22 However, this view cannot be shared. This view is opposed already by the wording of Art. 29 (1) that precisely does not establish any personal requirements of the applicant regarding nationality or domicile. Apart from that, the essence and purpose of the provision in Art. 2 Paris Convention, to which Eisenfu¨hr refers,23 is to prevent members of one state that is a party to the Convention/Agreement from being at a disadvantage compared to the members of another state that is a party to the Convention/Agreement. This principle of national equal treatment constitutes a minimum protection that must not be undercut by the states that are parties to the Paris Convention. Consequently, Art. 2 Paris Convention applies only if the national law of a state that is a party to the Convention/Agreement falls behind the protection arranged for by Art. 2 (1) Paris Convention. The Paris Convention does not prohibit the states that are parties to it, however, from establishing provisions exceeding the protection arranged for by the Paris Convention. It would be wrong already in the early stages to want to derive from Art. 2 the necessity of restricting the scope of application of Art. 29 (1) (and accordingly (5)) and to interpret the provision there – contrary to its wording – as containing an unwritten criterion to the effect that the previous applicant has to be a member of a state that is a party to the Convention/ Agreement. In its Art. 29, the CTMR simply exceeds the requirements of the Paris Convention and makes the use of a priority right only subject to the fact that the previous application was filed in or in respect of any state that is a party to the Paris Convention, to the WTO or to a state with established reciprocity.

Article 6 Means whereby a Community trade mark is obtained A Community trade mark shall be obtained by registration. Rc. 2, 4, 6, 7, 8, 11 Bibliography: Annette Kur, ‘Not prior in time, but superior in right – How trade mark registrations can be affected by third-party interests in a sign’, IIC 2013, 790–814.

20

Streinz, EUV/AEUV, Art. 54 AEUV, mn. 15. ¨ berseering BV v Nordic Construction Company Baumanagement See for example CJ Case C-208/00 U GmbH (NCC) [2002], in particular mn. 80 et seq. 22 Schennen and Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 5, mn. 17 and Art. 29, mn. 8 respectively. 23 Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 29, mn. 8. 21

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Community Trade Mark Regulation Content

I. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Constitutive effect of registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Exclusive rights upon registration. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Registration procedure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. CTM application as a title of property . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Owner of the CTM (application) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Binding effect of registration. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Limitations of binding effect . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 5 5 6 7 8 11 15

I. General This provision deals with a fundamental principle of Community trade mark law. According to Art. 6, Community trade mark rights can be acquired only through registration. 2 Community trade mark law differs in this respect from the trade mark regimes of some of the Member States1 according to which trade mark protection, in addition to registration, can be obtained by mere use of the mark in the course of business, if the mark has acquired secondary meaning within the relevant sectors of the public concerned. Neither does Community trade mark law accept the notion of granting protection to marks that are well known within the meaning of Art. 6bis of the Paris Convention. The ‘well-known marks’ mentioned in Art. 8 (2)(c) CTMR refer to a mark that is well known in a particular Member State, so it has to be seen as protection of a national mark in one of the countries that are signatories to the Paris Convention. There is, however, as recently emphasised by OHIM, no ‘well-known Community trade mark’ in the meaning of Art. 6bis of the Paris Convention.2 This merits particular mention because, as a Member of WTO, the EU is bound by TRIPS,3 and Art. 2 (1) TRIPS prescribes that Members must comply with Artt. 1–12 of the Paris Convention. In light of this, but also with regard to the Joint Recommendation on protection of wellknown marks,4 from a policy point of view it might convey the right message to the trading partners of the EU to grant full protection to well-known marks, whether or not they are registered, also under the current system.5 3 There is thus no protection of non-registered trade marks under Community trade mark law, nor are any intentions in that direction foreseeable de lege ferenda. Although such CTM protection as a result of intensive use of a mark over a longer period of time cannot be entirely ruled out for the future, given the unitary character of the CTM such protection would include some highly problematic aspects, especially in view of the 1

1 E. g. Austria: injunctive relief for unregistered trade marks under prevailing case law on § 9 (3) of the Austrian Act against Unfair Competition, s. Hauer in Lange (ed.), International Trade Mark and Signs Protection (Handbook), Chapter 1 – Austria, mn. 35; Germany: protection under § 4 No. 2 of the German Trade Mark Act; UK: protection under the law of passing off in the UK, s. Johnson, in Lange (ed.), ibid, Chapter 14 – UK, mn. 5182. 2 OHIM Dec. of 22.1.2013 – R 1182/2001-4 – Crown Melbourne Limited v Novomatic AG, mn. 14. 3 Member since 1.1.1995, http://www.wto.org/englishÕ WTO membership Õ members and observers. 4 Which was unanimously accepted by the assemblies of WIPO and the Paris Union in 1999, s. http:// www.wipo.int Õ Joint Recommendation concerning provisions on the protection of well-known marks. 5 Kur, IIC 2013, 790, 800, acknowledging that the WIPO Joint Recommendations are to be seen as nonbinding soft law; however, granting full protection to well-known, reputed marks could send out the right ‘signal’ from the EU to its trading partners, showing that the WIPO Recommendation are taken seriously.

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Art. 6 CTMR

CTMs equal effect throughout the Community under Art. 1 (2). Therefore, under the current system a CTM for a reduced territory of the EU is not conceivable.6 The territorial reach of the registered CTM7 encompasses the entire Community. The 4 CTM is either registered with equal effect throughout the EU or denied protection in its entirety because of absolute or relative grounds for refusal.8 There is no exception to this general rule, which also holds true in light of the restrictions contained in Artt. 110, 111 and Art. 165 (5). Those provisions leave the CTM as such ‘intact’ and provide only for geographical limitations as to the use of a junior CTM because of pre-existing national rights.9

II. Constitutive effect of registration 1. Exclusive rights upon registration Pursuant to Art. 6, a CTM is obtained by registration. As a consequence, the exclusive 5 rights conferred by the CTM come into legal existence on the effective date of the registration, and not upon the later date of its publication.10 Therefore, upon registration the CTM can be transferred, may be given as security or licensed for some or all of the goods or services, etc.11 The publication date of the registration is, however, of relevance for the enforcement of the mark. Under Art. 9 (3), 1st sentence the rights conferred by a CTM prevail against third parties only as of the date of publication of the registration.

2. Registration procedure The application for a CTM must comply with the conditions laid down in both the 6 CTMR and the CTMIR, Artt. 26, 36. The requested list of goods and/or services must be in conformity with the system of classification under the Nice Agreement, Art. 28 CTMR, Rule 2 CTMR. Ex officio the application is examined as to absolute grounds for refusal and is denied protection insofar as the trade mark is ineligible for registration in respect of some or all of the goods and services covered, Art. 37. Where no opposition based on earlier rights has been filed, or any opposition has been finally disposed of, e. g. by withdrawal or rejection, the mark applied for is recorded in the Register and the registration published in the CTM Bulletin, Rule 23 CTMIR. It should be noted that as of 1 May 2009 registration is no longer subject to payment of the previously required registration fee.12

3. CTM application as a title of property Even though the CTM comes into existence only upon registration, the application 7 itself is endowed with legal effect. Oppositions may be based on a CTM application, 6 Likewise Eisenfu ¨ hr/Eberhardt, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 110, mn. 1. 7 Since CTMs can only be obtained through registration, the term registered CTM is ‘tautological’; rightly pointed out by v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 6 CTMR, mn. 1. 8 S. above Hasselblatt, Art. 1, mn. 100–107. 9 S. detailed discussion below by Bettink, Artt. 110, 111 and Heremans/Hallemans, Art. 165, respectively. 10 OHIM Dec. of 21.10.2008 – R 1299/2007-2 – Adolfo Christianini v Ghibli S.p.A., mn. 45, 47. 11 Artt. 16–23 CTMR. 12 Rule 23 CTMIR, amended by Commission Regulation (EC) No. 355/2009 of 31.3.2009, OJ L 109 of 30.4.2009, p. 3, applicable as of 1.5.2009.

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Community Trade Mark Regulation

subject to their later registration.13 Moreover, Art. 24 (in conjunction with Artt. 16–23) recognises the application for a CTM as an object of property. Furthermore, depending on the subsequent registration of the CTM, reasonable compensation may be claimed for infringing acts occurring between the date of publication of the application and the publication of the registration of the trade mark, Art. 9 (3), 2nd sentence.14 Finally, pursuant to Artt. 29, 32 the CTM application may serve as the basis for priority claims for later applications for the same mark in respect of goods/services which are identical with or contained within those covered by the application. On this account, the application itself is rightly regarded as a title of property.15

III. Owner of the CTM (application) Unlike in the case of other intellectual property rights – for instance, vis-a`-vis the inventor in patent law or the author in copyright law – in trade mark law there is no allocation of the CTM to the person who has created or who uses the mark. Moreover, the ‘creator’ of the CTM, unlike the designer of a Community design under Art. 18 CDR, has no right to be cited as such before the Office and in the register. In fact, the CTM is registered in the name of the person who applied for its registration. 9 This principle undergoes an exception in Community trade mark law and a number of breakthroughs in the form of absolute and relative grounds for invalidity.16 The exception is created by the so-called ‘agency mark’ to which not the applicant, but the actual proprietor – often referred to as the ‘principal’ – is entitled. Where a CTM is registered in the name of the agent or representative of the proprietor of that mark, without authorisation or justification, the proprietor is entitled to request the assignment of the CTM (application) in his favour, Artt. 18, 24, and oppose the use of this mark, Art. 11. In addition, by way of opposition under Art. 8 (3) or of declaration of invalidity according to Art. 53 (1)(b), the proprietor can defend itself against registration of the ‘agency mark’. 10 Furthermore, Artt. 52, 53 contain different absolute and relative grounds for invalidity. Although the CTM is registered in the name of the applicant in those cases, the mark can still be attacked on the basis of personality or other intellectual property rights. If the applicant acted in bad faith,17 this constitutes an absolute ground for invalidity, Art. 52 (1)(b). Furthermore, a CTM is to be declared invalid, either in an action vis-a`-vis the Office or by way of a counterclaim in infringement proceedings, where the use of such trade mark can be prohibited on the basis of earlier rights under EU or national law, in particular a right to a name, a right of personal portrayal, a copyright or an industrial property right, Art. 53 (2)(a)–(d).18 8

13 Art. 8 (2)(a)(i), (b); in this respect also Art. 29 (3) re. the right of priority which may be based on a regular national filing, ‘whatever may be the outcome of the application’, Art. 29 (3). 14 S. detailed analysis by Skrzydlo-Tefelska/Z ˇ uk, below Art. 9. 15 ECHR Dec. of 11.1.2007 (relating to Portuguese trade mark application No. 73049/01), AnheuserBusch Inc. v Portugal, mn. 37; v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 6 CTMR, mn. 3. 16 S. also Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 6, mn. 6–10. 17 There is no universally accepted understanding as to what exactly constitutes ‘bad faith’, so that it has been described as a ‘magnificently imprecise concept that could mean different things to different people’, s. Keeling, in Gielen/v. Bomhard (ed.), Concise European Trademarks and Design Law, Art. 52, mn. 5 a); s. also Kur, IIC 2013, 790, 808. 18 S. detailed discussion below, Vos, Art. 52 as to bad faith, and Art. 53 regarding ‘earlier rights’.

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Art. 6 CTMR

IV. Binding effect of registration The registration of the CTM has binding effect. Until and unless successfully attacked, either in a separate action vis-a`-vis OHIM or by a counterclaim for revocation or declaration of invalidity, the CTM is presumed to be validly registered pursuant to Art. 99 (1). The national courts dealing with an action relating to a CTM have to treat the trade mark as valid as well, Art. 107. The registration of the mark, as reflected in the register, is decisive for the subject matter of the CTM, both in terms of the representation of the mark and the classification of goods and/or services covered by the CTM. The registration must identify the CTM with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.19 As of the time a filing date is assigned to it, the CTM forms an ‘unchangeable unit’20 whose content and boundaries are to be determined on the basis of the information contained in the application. A subsequent expansion of the CTM as regards the covered goods/services or changes to its representation are impermissible, except for an alteration of name and address of the proprietor included in the CTM, which does not substantially affect the trade mark as originally registered, Art. 48 (2). It follows from the taxonomy of the CTMR – in particular, the registration principle under Art. 6 – that registration can only take place on the basis and within the limits of the application for registration submitted to the Office.21 Each CTM has to be assessed on its own merits solely based on its representation in the application; circumstances of actual or intended use are of no relevance, as they are not part of or reflected in the application.22 In accordance therewith, features of the mark that are not included in the application and the accompanying documents, for instance aspects concerning the mark’s distinctiveness, are not to be taken into account.23 Accordingly, OHIM and the GC, in assessing the distinctive character of a three-dimensional mark consisting of a black and white representation of a glass bottle, rightly disregarded certain colour effects that may result from the use of a form mark in connection with the intended content of the translucent container (e. g. soft drinks in hues varying from brown to green), as those asserted effects were not reflected in the application and were thus irrelevant for the registration.24 Declarations by the applicant vis-a`-vis the Office prior to the registration of the CTM that affect the trade mark itself, elements thereof and/or its representation, once registered, will form part of the binding effect of the CTM. This holds true for the indication that registration is sought for a three-dimensional mark or a colour mark along with the submission of a photographic reproduction or (graphic) representation 19 Stressed by the CJ in relation to the goods and services, for which the protection of the trade mark is sought, Case C-307/10 IP-Translator [2012] (not yet published in ECR, available at http://curia.europa.eu), mn. 64; in that direction already CJ Case C-273/00 Sieckmann [2002] ECR I-11737, mn. 49–51. 20 OHIM Dec. of 17.11.1999 – R 301/1999-3 – BPW Bergische Achsen KG v OHIM, mn. 10 (‘unvera¨nderliche Einheit’; in the original decision, handed down in the German language). 21 S. e. g. OHIM Dec. of 3.5.2013 – R 1077/2012-4 – RED SHACKLE PIN, mn. 8, stressing that the distinctiveness of a mark must be ‘judged on the basis of the representation as filed’. 22 V. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 2 d). 23 GC Case T-12/04 ‘Almdudler-Limonade’ A. & S. Klein v OHIM, mn. 42 (decision only available in the German language; summary at [2005] ECR II – 21). 24 GC Case T-12/04, ibid, mn. 41, 42; s. also OHIM Dec. of 17.11.1999 – R 301/1999-3 – BPW Bergische Achsen KG v OHIM, mn. 10.

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Community Trade Mark Regulation

of the mark.25 Likewise, a disclaimer filed by the applicant at its own motion or upon request of the examiner, which will be published together with the application/registration, determines in a binding manner that the proprietor has no exclusive right as to the non-distinctive element of the mark in question.26 Accordingly, the disclaimer has to be taken into account when assessing the scope of protection of the mark, Art. 37 (2); the non-distinctive and thus disclaimed element of the CTM does not benefit from the presumed validity of the mark under Art. 99 (1). It should be kept in mind that disclaimers are restricted to elements of the CTM which are not distinctive in the meaning of Art. 37 (2). Consequently, disclaimers in relation to distinctive parts of the mark in question will be disregarded by the Office.27

V. Limitations of binding effect The CTM registration can be revoked or declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings because of the grounds laid down in Art. 51 et seq. Moreover, in the actions referred to in Art. 96 (a) and (c) the defendant may submit a plea relating to revocation or invalidity, without the need to file a counterclaim, for lack of use of the CTM or on account of earlier rights of the defendant, Art. 99 (3). 16 The binding effect of the CTM registration is, however, subject to further limitations. Most notably, the binding effect of the registration does not relate to the scope of protection of the mark. In fact, in both opposition and infringement proceedings, the scope of protection of the earlier mark has to be determined by the competent authorities/ courts as part of the global appreciation of the signs in question. Consequently, findings regarding the distinctive character of a mark established in the registration procedure are not binding for the evaluation of the scope of protection in subsequent opposition or infringement proceedings based on the same mark. For example, even if the graphic presentation of a figurative mark consisting of the letter ‘a’ (in lower case) against a black background were found to be of particular importance for the analysis of its distinctive character and registrability, this would not necessarily entail limiting the scope of protection of the mark to virtually identical marks also consisting of the letter ‘a’ in lower case against a dark background with the exact same calligraphic details.28 17 Thus, the weak distinctive character of an earlier mark does not reduce the likelihood of confusion to cases of a complete reproduction of the earlier sign by the later mark, irrespective of the degree of similarity between the signs in question. This would give undue importance to the distinctive character and disregard the ‘similarity of marks’ factor.29 This also applies to cases where concerns in terms of distinctive character initially expressed by the Office have had to be surmounted because the findings in registration 15

25 Rule 3 (4), (5) CTMR; in the latter case the colours making up the mark have to be indicated, a reference to a recognized colour code is optional but recommendable. 26 Detailed analysis below by Lensing-Kramer/Dittschar, Art. 37. 27 OHIM Dec. of 3.5.2013 – R 1077/2012-4 – RED SHACKLE PIN, mn. 9. 28 GC Case T-115/02 Aves Inc. v OHIM [2004] ECR II-02907, mn 20, 21, where the court rightly found that it was not bound by the findings re. distinctive character of the senior CTM established in the registration procedure (OHIM Dec. of 28.5.1999 – R 91/1998-2), and concluded that the conflicting figurative marks ‘a’ were confusingly similar. 29 Emphasised in CJ Case C-171/06 T.I.M. E. ART v OHIM, operative part published [2007] ECR I-41 (full text available at http://curia.europa.eu), mn. 41, with regard to an earlier national mark; GC Case T134/06 Xentral LLC v OHIM [2007] ECR II-5213, mn. 70; GC Case T-112-03 L’Oreal v OHIM – Revlon [2005] ECR II-949, mn. 61.

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Absolute grounds for refusal

Art. 7 CTMR

proceedings with regard to this trade mark are not binding in subsequent proceedings.30 That does not, of course, rule out but in fact requires taking the inherent weakness or strength of a mark into account as one of the relevant factors for global appreciation of the likelihood of confusion of the conflicting signs. In other words, the mere fact that the earlier sign has been registered as a national or international mark does not prevent it from being largely descriptive, or having only a weak intrinsic distinctive character in relation to the goods and services it covers.31 It should be noted, however, that the characterization of a sign as merely descriptive or generic is tantamount to denying its distinctive character. It follows from the coexistence of CTMs and national (and international) marks that the validity of the latter may not be called into question in CTM registration proceedings, but only in cancellation proceedings in the respective Member State.32

Article 7 Absolute grounds for refusal 1. The following shall not be registered: (a) signs which do not conform to the requirements of Article 4; (b) trade marks which are devoid of any distinctive character; (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 service; (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; (e) signs which consist exclusively of: (i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; (iii) the shape which gives substantial value to the goods; (f) trade marks which are contrary to public policy or to accepted principles of morality; (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; (h) trade marks which have not been authorised by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the ‘Paris Convention’; (i) trade marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the competent authority to their registration has been given; (j) trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin; 30

GC Case T-115/02 Avex Inc. v OHIM [2004] ECR II-2907, mn. 20, 21. GC Case T-10/09 Formula One Licensing v OHIM [2011] ECR II-00427, mn. 46. 32 CJ Case C-196/11 Formula One Licensing BV v OHIM [not published yet in ECR – available at http:// ~ana y Botella [2008] ECR II – 3085, curia.europa.eu), mn. 40–45; GC Case T-7/04 Shaker v OHIM – Limin mn. 26; GC Case T-269/02 PepsiCo, Inc. v OHIM [2005] ECR II-1341, mn. 26, 27. 31

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CTMR Art. 7

Community Trade Mark Regulation

(k) trade marks which contain or consist of a designation of origin or a geographical indication registered in accordance with Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs1 when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication. 2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. 3. Paragraph 1 (b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it. Rc. 2, 7, 8, 12, 13, 16, 19 Bibliography: Achim Bender, ‘Die Reformvorschla¨ge der Kommission zum nationalen Markenrecht und zur Europa¨ischen Marke’, MarkenR 2013, 129–139; Achim Bender, ‘Luxemburg wird anspruchsvoll – Die Entwicklung der Gemeinschaftsmarke in Rechtsprechung und Praxis im Jahr 2011 – Teil 1 – Die absoluten Schutzversagungsgru¨nde’, MarkenR 2012, 41–53; Helmut Eichmann, ‘Rechtsdemoskopie’, in Hasselblatt (ed.), Mu¨nchener Anwaltshandbuch Gewerblicher Rechtsschutz (4th ed., 2012); Bernd Fabry, ‘Sehen – Ho¨ren – Fu¨hlen: Marken fu¨r alle Sinne’, Mitt. 2008, 160, 170; Karl-Heinz Fezer, ‘Der Wettbewerb der Markensysteme’, GRUR 2013, 1185–1195; Allison Firth/Ellen Gredley/Spyros M. Maneatis, ‘Shapes as trade marks: public policy, functional considerations and consumer perception’, EIPR 2001, 86–99; Arnaud Folliard-Monguiral/David Rogers, ‘The protection of shapes by the Community trade mark’, EIPR 2003, 169–179; Mario Franzosi (ed.), European Community Trade Mark, Commentary to the European Regulations, The Hague/The Netherlands, 1997; Charles Gielen, ‘Substantial Value Rule: How it Came into Being and Why it Should be Abolished’, EIPR 2014, 164–169; Franz Hacker, Der ‘Vorschlag der EU-Kommission fu¨r eine Neufassung der MarkenRL’, WRP (Die Erste Seite) 2013, Nr. 10; Gordian N. Hasselblatt, ‘The Community trade mark’, in Dennis Campbell (ed.), International Intellectual Property Law 1997, pp. 145–170; Gordian N. Hasselblatt, ‘Quo Vadis, Werbeslogan?’, IPRB 2010, 87– 90; Gordian N. Hasselblatt/Inga George, ‘Dauerbrenner: Markenschutzfa¨higkeit von Buchstaben, Zahlen und Kombinationen’, IPRB 2011, 131–134; Gordian N. Hasselblatt/Inga George, ‘Quo Vadis Marken¨ ber Sinn und Unsinn der geplanten Reformen auf Gemeinschaftsebene’, IPRB 2013, 205–209; recht? U Alexandra Heise, ‘Positionsmarke und Disclaimer’, GRUR 2008, 286–291; Astrid Ho¨lk, ‘Ho¨r-, Geruchsund Fu¨hlmarken’, in Festschrift fu¨r Eike Ullmann (2006); Robin Jacob, United Kingdom Jurisprudence after the Directive, MarkenR 2000, 7–9; David Kappos/Stefan Vo¨lker, ‘Colour marks in the United States and the European Union: history, landmarks and evolution’, WTR 2014, 49–53; Annette Kur, ‘Alles oder nichts im Formmarkenschutz?’, GRURInt 2004, 755–761; Annette Kur, ‘Formalschutz dreidimensionaler Marken – neue Aufgaben fu¨r die Markenabteilung des Deutschen Patentamts’, DPMA (ed.), Festschrift 100 Jahre Markenamt (1994), 175–196; James Mellor/David Llewelyn/Thomas Moody-Stuart/David Keeling/Iona Berkeley (ed.), Kerly’s Law of Trade Marks and Trade Names, 15th ed., London, 2011; Carsten Menebro¨cker/Johanna Haesemann, ‘Die ‘Flagship Store Marke’ und ihr Schutzumfang – effektiver Investitionsschutz fu¨r die Gescha¨ftsraumgestaltung?’, WRP 2014, 1267–1273; Alexander von Mu¨hlendahl/Dietrich Ohlgart, Die Gemeinschaftsmarke, 1998; Jochen Pagenberg, ‘Trade dress and the three-dimensional mark – the neglected children of trade mark law?’, IIC 2004, 831–843; Jeremy Phillips, ‘Trade mark law and the need to keep free – intellectual property monopolies have their limits’, IIC 2005, 389–401; Christian Rohnke, ‘Die Rechtsprechung des EuGH im Markenrecht – Schwerpunkte, Tendenzen, Systematik’, Markenrecht 2006, 480–486; Natalie Schober, ‘The function of a shape as an absolute ground for refusal’, IIC 2013, 35–60; David Slopek/Daniel Napiorkowski, ‘Fiktive Marken und deren Schutzfa¨higkeit’, GRUR 2012, 337–342; Valeska To¨belmann, ‘Mehr Rechtssicherheit fu¨r Markenanmelder – Anmerkung zu EuGH “Schwabenpost”’, GRUR 2009, 1007–1009; Johan Verbruggen, ‘Baby-Dry – The origin function “revisited”’, GRURInt 2002, 213–221.

1

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Absolute grounds for refusal

Art. 7 CTMR

Content A. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Role of the provision. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Reform proposals of 27 March 2013 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Parting from ‘graphic representability’. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Protection of geographical indications and traditional terms. . . . . . . 3. Trade marks in a foreign language or script . . . . . . . . . . . . . . . . . . . . . . . . . . III. Main principles for analysis of absolute grounds . . . . . . . . . . . . . . . . . . . . . . . 1. Public interest . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Exhaustive enumeration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Specific goods and services. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Relevant public. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Relevant point in time . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Ex officio examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7. Full-fledged examination process . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8. No binding effect of national decisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Non-registrability in only part of the Community . . . . . . . . . . . . . . . . . . . . . . 1. Uniform effect of the CTM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. ‘Part’ of the Community . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Conversion into national trade mark application . . . . . . . . . . . . . . . . . . . . B. Absolute grounds for refusal, Art. 7 (1) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Signs which cannot constitute a trade mark (lit. a) . . . . . . . . . . . . . . . . . . . . . 1. Abstract distinctiveness. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Graphic representation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Lack of distinctive character (lit. b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Role and importance of the provision. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Reference to specific goods/services and relevant public’s perception . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Minimum distinctiveness. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. A priori examination apart from actual use. . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Same criteria for all categories of marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Overall impression decisive; no linguistic or artistic creativity needed. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7. Compound marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Descriptive indications (lit. c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Role and importance of the provision. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Reference to specific goods/services and relevant public’s perception . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Direct and specific association between CTM and goods/services. 4. General aspects for assessment of descriptiveness. . . . . . . . . . . . . . . . . . . . 5. Characteristics listed in lit. (c). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Special case: geographical names. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7. One-word marks, combinations of words, neologisms . . . . . . . . . . . . . . 8. Misspellings, omissions and sound-alikes . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Customary indications (lit. d) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Shape marks (lit. e). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Role and importance of the provision. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Public interest underlying lit. (i) to (iii) . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Different protection of shapes under design and trade mark law. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Art. 7 (3) not applicable . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Art. 7 (1)(e) as preliminary obstacles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. General aspects for assessment of shape marks. . . . . . . . . . . . . . . . . . . . . . . a) Signs consisting ‘exclusively’ of shape of goods. . . . . . . . . . . . . . . . . . . b) Average consumer’s perspective not decisive. . . . . . . . . . . . . . . . . . . . . . 3. Shape resulting from the nature of the goods. . . . . . . . . . . . . . . . . . . . . . . . . 4. Shape necessary to obtain a technical result . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Shape giving substantial value to the goods . . . . . . . . . . . . . . . . . . . . . . . . . . .

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CTMR Art. 7

Community Trade Mark Regulation

a) Ratio legis unclear; narrow interpretation . . . . . . . . . . . . . . . . . . . . . . . . . b) No clear guidance by CJ/GC . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Obstacle under lit. (e)(iii) inconsistent with Art. 96 CDR and Art. 26 (2) TRIPs. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Criterion of giving ‘substantial value to the goods’ . . . . . . . . . . . . . . VI. Signs contrary to public policy and accepted principles of morality lit. (f) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VII. Deceptive trade marks (lit. g) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VIII. Armorial bearings, flags and other State emblems (lit. h) . . . . . . . . . . . . . 1. General; objective of Art. 6ter PC . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Equal application to service marks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Official emblems covered by Art. 6ter (1)(a) and (b) PC. . . . . . . . . . . 4. Criteria for assessment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IX. Other emblems or escutcheons of public interest (lit. i). . . . . . . . . . . . . . . X. Geographical indications for wines/spirits (lit. j) . . . . . . . . . . . . . . . . . . . . . . . 1. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Historical background; TRIPs compliance . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Protected geographical indications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Scope of protection for PGIs/PDOs. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Same type of products; comparable products . . . . . . . . . . . . . . . . . . . . . . . . 6. Broad application of lit. (j) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . XI. Geographical indications under Reg. No 1151/2012 lit. (k). . . . . . . . . . . 1. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Protected geographical indications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Scope of protection for PGIs/PDOs. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Same type of products; comparable products . . . . . . . . . . . . . . . . . . . . . . . . 5. Broad application of lit. (k) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Individual types of signs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Word marks, letters and numerals. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Advertising slogans. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Figurative marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Tracer marks, pattern marks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Position marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. 3D marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VII. Colour marks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VIII. Sound marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IX. Olfactory marks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . X. Taste marks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . XI. Tactile marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . XII. Other types of signs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D. Acquired distinctiveness, Art. 7 (3) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Role and importance of the provision. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Goods and services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Relevant point in time . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Claiming acquired distinctiveness. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Relevant territory . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Sign must be perceived as a trade mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VII. Relevant factors; evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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Absolute grounds for refusal

Art. 7 CTMR

A. General I. Role of the provision Nowadays it is generally accepted2 that trade marks constitute an essential element in 1 the system of undistorted competition,3 which is emphasised in the Preamble to the CTMR.4 The rights and powers conferred by trade marks must be considered in the light of that objective.5 Given the exclusive nature of trade mark rights and the fact that their protection terms can be renewed indefinitely, proprietors may monopolise signs in relation to certain goods and services for an unlimited period. The possibility of registering trade marks may, however, be restricted for reasons relating to the public interest.6 For precisely this reason, Art. 7 establishes absolute bars to registration, because it is in the interests of the public that certain categories of signs and indications are excluded from trade mark registration per se, although the underlying motivation for these restrictions varies from ground to ground. Whereas the most relevant grounds for refusal contained in Art. 7 (1)(b) to (d)7 are, in practice, designed to prevent certain signs and designations from being monopolised by individual undertakings in order to safeguard that they can be freely used by all,8 other obstacles pursue different objectives which are also in the public interest, such as the exclusion of marks that are deceptive or contrary to public policy, and so forth. Art. 7 seeks to strike a balance between the individual interests of (potential) 2 proprietors in registering a putative trade mark and the public interest justifying the respective obstacle. The various absolute grounds for refusal must therefore be interpreted in the light of the public interest underlying each of them.9 Unlike the relative grounds for refusal under Art. 8, based on individually owned earlier rights, the bars in Art. 710 are absolute as they serve the interests of all. Each of the grounds for refusal set out in Art. 7 (1) has to be examined independently 3 on its own merits. The grounds for non-registrability contained in lit. (b) – (d) may be overcome through acquired distinctiveness under Art. 7 (3).11 It has to be borne in mind, though, that even in scenarios where an innate lack of distinctiveness has been remedied through intensive and long-lasting use, the sign may still be barred from registration on the basis of a different ground.12 2

S. on the development of the case law leading to this understanding above Hasselblatt, Art. 1, mn. 27–29. Which seemed to have fallen into oblivion by the CJ from the 1960ies until 1990, when the Hag II decision was handed down, CJ Case C-10/89 Hag II [1990] ECR I-3711, mn. 13. 4 Rc. 2 Preamble CTMR. 5 CJ Case C-104/01 Libertel Groep BV v Benelux-Markenbureau [2003] ECR I-03793, mn. 48. 6 CJ Case C-104/01 Libertel, ibid, mn. 49, 50. 7 And to a large extent also the absolute bars set out in Art. 7 (1)(e)(i) and (ii), whereas the ground for refusal contained in lit. (e)(iii) pursues a slightly different objective; s. below mn. 107, 108. 8 CJ Case C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, mn. 25, CJ Joined Cases C-53/01 to C55/01 Linde, Winward, Rado [2003] ECR I-3161, mn. 73. 9 CJ Case C-299/99 Philips v Remington [2002] ECR I-5475, mn. 77; CJ Case C-104/01 Libertel [2003] ECR I-3793, mn. 48. 10 And likewise in Art. 3 TMDir. 11 S. detailed analysis below mn. 313 et seq. 12 E. g. a shape of a product mark that has become distinctive through use may be barred because of its functional shape in the meaning of Art. 7 (1)(e), s. CJ Case C-48/09 P Lego Juris A/S v OHIM [2010] ECR I-08403, mn. 43 et seq.: refusal of registration of the Lego brick, which has become distinctive in consequence of the use which has been made of it and therefore capable of distinguishing the proprietor’s goods from those of a different origin, under Art. 7 (1)(e)(ii) s. below mn. 112. 3

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CTMR Art. 7

Community Trade Mark Regulation

II. Reform proposals of 27 March 2013 4

The reform proposal submitted by the Commission on 27 March 2013,13 aimed at a well-targeted modernization of the current European trade mark regime, would also entail amendments of Art. 7, which are briefly presented below.14

1. Parting from ‘graphic representability’ Art. 4 prescribes that CTMs must be ‘capable of being represented graphically’. Under the Commission proposal, this requirement of graphic representation will be replaced by the prerequisite that signs must be capable of ‘being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor’.15 6 Such an amendment of Art. 4 is to be welcomed, as the requirement of graphic representation is too restrictive and outdated and has created a great deal of legal uncertainty in relation to certain non-traditional marks.16 Indeed, sound marks, for example, may be more precisely represented by a sound file17 than by graphical means, such as a sonogram. The proposed new definition opens the door to representing audible and other signs by technological means, which permits an exact identification of the mark in question (e. g. acoustic marks, holograms) and thereby enhances legal certainty. 5

2. Protection of geographical indications and traditional terms The current regime under Art. 7 (1)(j) and (k) deviates from Artt. 13 and 14 of Reg. No 1151/2012,18 Artt. 102 and 103 of Reg. No 1308/201319 and Art. 16 of Reg. No 110/2008,20 and does not offer the same level of protection to geographical indications. 8 The proposed amendments to the respective grounds for refusal21 have to be seen as an appropriate step towards providing the full effect of the protection of geographical 7

13

S. brief overview on the amendments of the CTMR above, Hasselblatt Art. 1, mn. 42–60. At the time of the editorial deadline of this commentary there was no fixed time-line for the legislative procedure yet, so it remains to be seen when and in what ultimate version changes to the CTMR can be expected. 15 Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, proposal for revised language of Art. 4 (b), p. 9. 16 S. explanatory memorandum of 27.3.2013, COM (2013) 161 final, p. 7; likewise opinion of GRUR, published in GRUR 2011, 990, 991; s. analysis on the prerequisite of graphic representability, below mn. 55–58. 17 It should be noted, though, that OHIM already accepts MP3 files as a means of representing sound marks, provided they are filed together with a sonogram; s. OHIM press release CP/07/01 of 5.11.2007 ‘Tarzan’s trade mark yell’. 18 Reg. (EU) No 1151/2012 of 21.11.2012 on quality schemes for agricultural products and foodstuffs, OJ L 343, 14.12.2012, p. 1. 19 Reg. (EU) No 1308/2013 of 17.12.2013 establishing a common organisation of the markets in agricultural products, OJ L 347, 20.12.2013, p. 671; it should be noted that under Art. 230 of Reg. 1308/ 2013 the previous framework under Reg. No 1234/2007 is repealed. 20 Reg. (EC) No 110/2008 of 15.1.2008 on the protection of geographical indications of spirit drinks, OJ L 39, 13.2.2008, p. 16. 21 Replacement of the current Article 7 (1)(j) and (k) and insertion of a new ground for refusal under lit. (l) with regard to trade marks which contain or consist of an earlier variety denomination registered in accordance with Reg. (EC) No. 2100/94 of 27.7.1994 on Community Plant Variety Rights with respect to the same type of product. 14

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indications, designations of origin and traditional terms for wine and traditional specialties also in CTM registration proceedings.

3. Trade marks in a foreign language or script Furthermore, under the Commission proposal, Art. 7 (2) would be rephrased to 9 provide that signs are to be refused registration notwithstanding that the grounds of non-registrability apply ‘only where a trade mark in a foreign language or script is translated or transcribed in any script or official language of a Member State’. According to this mechanism, a designation taken from a foreign language or script has to be translated into the official languages of the Member States and then scrutinised under the grounds of refusal in Art. 7 (1), which is of particular relevance to the absolute bars listed in (b) – (d). This proposal is obviously a reaction to the infamous consequences of the registration of marks that are entirely descriptive in the language of one Member State, but unknown – and thus not considered to be devoid of any distinctive character and/or descriptive – in another Member State. Such a scenario led to the Matratzen Concord decision according to which the word ‘Matratzen’ was accepted as a valid trade mark in Spain for mattresses although it is fully descriptive for mattresses in the German language, because the absolute grounds for refusal contained in Art. 3 (1)(b), (c) TMDir22 ‘do not preclude the registration in a Member State, as a national trade mark, of a term borrowed from the language of another Member State in which it is devoid of any distinctive character or descriptive of the goods or services in respect of which registration is sought, unless the relevant parties in the Member State in which registration is sought are capable of identifying the meaning of the term’.23 This has to be seen against the backdrop that because of linguistic, cultural, social or economic differences, it is possible that a trade mark which is devoid of distinctive character in one Member State is not so in another Member State.24 Indeed, such a revision of Art. 7 (2) would remedy the unfortunate consequences of 10 the Matratzen Concord judgment. It is doubtful, however, whether such an extension of the absolute grounds for refusal, basically to all (script) languages worldwide, will ever mature into binding legislation. The proposed revision of Art. 7 (2), along with the new formulation of Art. 4 (2)(b) of the recast TMDir, has been heavily criticised, not least because of the repercussions on the registration procedure.25 Such a global language check is seen as impractical and unnecessary, as the tremendous disadvantages for applicants and offices alike are not outweighed by any viable justification.26 Moreover, it is feared that this global language check will cause significant delays in the examination process and could ultimately lead to an erosion of the national trade mark regimes of the Member States.27 According to other legal scholars, the practical difficulties appear to be solvable, given today’s technological and electronic means.28 According to this view, it is at least arguable whether there are any legitimate individual interests in monopolising generic and descriptive terms borrowed from a foreign language via trade mark protection in the EU.29 22

Those absolute bars are mirrored in Art. 7 (1)(b), (c) CTMR. CJ Case C-421/04 Matratzen Concord v Hukla [2006] ECR I-2304 (emphasis added). 24 CJ Case C 238/06 P Develey v OHIM [2007] ECR I-09375, mn. 58. 25 S. opinion of GRUR, in GRUR 2013, 800, 802, mn. 2.2.5; Bender, MarkenR 2013, 129, 133. 26 S. the opinion of GRUR, in GRUR 2013, 800, 802, mn. 2.2.5. 27 Bender, MarkenR 2013, 129, 133, with regard to the equivalent proposal for an amendment of the TMDir. 28 Fezer, GRUR 2013, 1185, 1191. 29 Fezer, GRUR 2013, 1185, 1191; Hacker,WRP 2013, Nr. 10. 23

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III. Main principles for analysis of absolute grounds 11

Before analysing each of the grounds for non-registrability separately, it is worth portraying the common features and general principles that are applicable to all absolute bars laid down in Art. 7 (1).

1. Public interest Like virtually all trade mark protection regimes, the law governing Community trade marks – and likewise the national trade mark systems of the Member States harmonised under the TMDir – considers certain grounds for refusal mandatory. This system of absolute bars to trade mark protection is, as far as can be seen, universally accepted as one of the fundamental cornerstones of European trade mark law.30 The notion that absolute grounds for refusal form an indispensable corollary of a functioning trade mark regime seems to be so self-evident that the EU legislator did not even deem it necessary to enshrine this principle in the Preambles of the CTMR or the TMDir.31 13 The grounds for refusal listed in Art. 7 (1) are independent of each other and call for a separate examination.32 Furthermore, the various grounds for refusal must be interpreted in the light of the public interest underlying each of them.33 The necessity to scrutinise the various obstacles to registration set out in Art. 7 (1) separately stems from the simple fact that, despite obvious similarities between the absolute grounds for refusal in lit. (b) to (d), they differ considerably from one another. The same holds true for the respective objectives pursued by each of them. Although it is largely the public interest, albeit in varying degrees, that forms the underlying rationale for the various absolute grounds for refusal, this is not necessarily the sole reason. For example, the absolute bar in Art. 7 (1)(a) in conjunction with Art. 4, which requires, inter alia, the graphic representability of the mark, is mainly driven by the interests of legal certainty.34 With regard to Art. 7 (1)(b) it becomes even clearer that this ground for refusal is not merely based on public interest. Signs that are devoid of any distinctive character simply lack the capacity to fulfil the essential function of a trade mark as they are not capable of identifying a particular source.35 Conversely, it could be argued that precisely this is where the public interest lies, namely in barring signs from trade mark protection which do not enable the consumer or end user to distinguish, without any possibility of confusion, goods and services from one source from others which have a 12

30 Somewhat sceptical, though, Phillips, IIC 2005, 389, 401, who concludes his thorough analysis of the need to keep certain signs free for general use with the statement that ‘we should therefore consider whether we would be better off without it’. 31 Rightfully pointed out by Phillips, IIC 2005, 389, 390. 32 CJ Joined Cases C-53/01 to C-55/01 Linde, Winward, Rado [2003] ECR I-3161, mn. 67; CJ Case C363/99 Koninklijke KPN Nederland N.V. v Benelux-Merkenbureau (POSTKANTOOR) [2004] ECR I03793, mn. 67. 33 CJ Case C-299/99 Philips v Remington [2002] ECR I-5475, mn. 77; CJ Joined Cases C-53/01 to C-55/ 01 Linde, Winward, Rado [2003] ECR I-3161, mn. 71, CJ Case C-104/01 Libertel [2003] ECR I-03793, mn. 51; CJ Case C-363/99 Postkantoor [2004] ECR I-03793, mn. 68; CJ Case C-329/02 P SAT.1 v OHIM [2004] ECR I-08317, mn. 25. 34 Obviously, legal certainty, in turn, lies in the public interest as well. 35 In that direction also Phillips, IIC 2005, 389, 391, doubting that ‘there is any general interest in maintaining in the public domain signs which are incapable of identifying the commercial origin of the goods or services which they designate’.

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different origin.36 This view seems to be shared by the CJ, as it stressed that the notion of general interest underlying Art. 7 (1)(b) is indissociable from the trade mark’s essential function.37 As each of the grounds for refusal is independent of the others, it follows that ‘the 14 fact that a mark does not fall within one of those grounds does not mean that it cannot fall within another’.38 The public interest that has to be taken into account when examining the various grounds for refusal must reflect different considerations, depending upon which obstacle is at issue.39 This applies, in particular, to the bars set out in Art. 7 (1)(b) to (d) which show a 15 clear overlap between the respective scope of those absolute grounds for refusal.40 Signs that are devoid of any distinctive character may also be descriptive in relation to the goods and services for which registration is sought in the sense of Art. 7 (1)(c). This, however, has to be assessed separately for each of those grounds for refusal. As regards the overlap between descriptive indications on the one hand and customary indications on the other, the CJ rightly pointed out that marks covered by (d) are denied registration not because they are descriptive, ‘but on the basis of current usage in trade sectors covering trade in the goods or services for which the marks are sought to be registered’.41 The scope of Art. 7 (1)(d) should thus not be limited solely to trade marks that describe the properties or characteristics of the goods and services concerned.

2. Exhaustive enumeration The absolute grounds for refusal of a CTM are enumerated conclusively in Art. 7 (1). 16 The exhaustive character of the list of absolute grounds for refusal is expressly emphasised in the Preamble of the harmonisation directive with regard to the largely identical list of absolute grounds for refusal in Art. 3 (1) TMDir.42 These grounds for non-registrability are neither interdependent nor mutually exclusive of each other and call for separate examination.43 As a consequence, a CTM application has to be refused registration if the criteria of one of the obstacles contained in Art. 7 (1) are fulfilled. Conversely, a CTM application cannot be refused registration based on absolute 17 grounds other than those listed in Art. 7 (1). In this context, the cross-references in Art. 7 (1)(h) and (i) to Art. 6ter Paris Convention, and in lit. (k) to Reg. No 510/2006 have to be obeyed. The list of absolute grounds for refusal in Art. 7 (1)(a) to (h) mirrors almost iden- 18 tically the absolute bars set out in Art. 3 (1)(a) to (h) of the TMDir, which is to be welcomed in the interests of a uniform application and interpretation of the terms under 36 CJ Case C-104/01 Libertel [2003] ECR I-03793, mn. 62; CJ Case C-517/99 Merz & Krell [2001] ECR I-06959, mn. 22; v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 5 a). 37 CJ Case C-304/06 P Eurohypo AG v OHIM [2008] ECR I-03297, mn. 56. 38 CJ Case C-363/99 Postkantoor [2004] ECR I-03793, mn. 69; CJ Joined Cases C-53/01 to C-55/01 Linde, Winward, Rado [2003] ECR I-3161, mn. 68. 39 CJ Case C-304/06 P Eurohypo AG v OHIM [2008] ECR I-03297, mn. 55; CJ Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317, mn. 25. 40 CJ Case C-517/99 Merz & Krell GmbH & Co. [2001] ECR I-06959, mn. 35; CJ Case C-304/06 P Eurohypo AG v OHIM [2008] ECR I-03297, mn. 54. 41 CJ Case C-517/99 Merz & Krell GmbH & Co. [2001] ECR I-06959, mn. 35, in respect of the equivalent provisions of Art. 3 (1)(c) and (d) TMDir. 42 S. rc. 8 of the Preamble to the TMDir. 43 CJ Cases C-363/99 Koninklijke KPN Nederland N.V. v Benelux-Merkenbureau/Postkantoor [2004] ECR I-03793, mn. 67; C-53/01 to C-55/01 Linde, Winward, Rado [2003] ECR I-3161, mn. 67; C-304/06 P Eurohypo AGv OHIM [2008] ECR I-03297, mn. 54; s. also v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 1.(a).

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both the CTMR and the directive. Except for these congruencies, the two legal instruments differ considerably. Of the four absolute grounds for refusal set out in Art. 3 (2) TMDir, whose implementation is left to the discretion of the Member States, only the special protection of badges, emblems and escutcheons other than those covered by Art. 6ter Paris Convention and which are of public interest has found an equivalent in Art. 7 (1) lit. (i), whereas the other three optional grounds for non-registrability contained in Art. 3 (2) TMDir do not find a respective counterpart in the CTMR. Furthermore, the obstacles in Art. 7 (1)(j) to (k) CTMR go beyond the scope of the directive, as they have no matching equivalent in Art. 3 (1) or (2) TMDir.

3. Specific goods and services The grounds for refusal have to be analysed specifically by reference to the goods or services seeking protection.44 This almost trivial observation merits special mention because of its significant practical implications. 20 A sign can be entirely descriptive with regard to certain goods/services, and thus barred from registration, and at the same time be perfectly eligible for trade mark protection in other fields. Consequently, the distinctive character of a trade mark in respect of certain goods or services cannot be denied simply because the sign is descriptive of the characteristics of other goods or services, even where registration is claimed with regard of those goods or services as well.45 Therefore, it must be examined individually in relation to each of the goods and services that none of the grounds for refusal listed in Art. 7 (1) applies to the mark seeking protection, which may lead to different results depending upon the goods and services concerned.46 The only exception to this rule concerns Art. 7 (1)(a) in conjunction with Art. 4, as those signs lack the capacity to serve as a trade mark per se, either because they cannot be represented graphically or – inherently – cannot fulfil the essential function of a trade mark,47 irrespective of the goods and services claimed in the application. 21 The precise examination of the grounds for refusal in relation to the goods and services covered by the application is crucial, as it may tip the scales between registrability and non-registrability of the mark in question. The examination of absolute grounds can be problematic when the mandatory list of goods and services48 contains ambiguities or broad language. As prescribed by Rule 2 (2) CTMIR, the goods and services have to be described in such a way as to clearly indicate their nature. As rightly stressed by the CJ, the goods and services for which protection is sought have to be identified with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.49 This is of particular relevance with regard to the grounds 19

44 CJ Case C-363/99 Koninklijke KPN Nederland N.V. v Benelux-Merkenbureau/Postkantoor [2004] ECR I-03793, mn. 71; CJ Case C-304/06 P Eurohypo AGv OHIM [2008] ECR I-03297, mn. 67; CJ Case C307/10 IP Translator [2012] published in ECR – available at http://curia.europa.eu), mn. 43. 45 In such a situation the CTM would have to be refused as regards the goods or services in relation to which the sign lacks descriptiveness or is descriptive, whereas in respect of the other goods/services protection would not be barred by (b) or (c). 46 CJ Case C-363/99 Koninklijke KPN Nederland N.V. v Benelux-Merkenbureau/Postkantoor [2004] ECR I-03793, mn. 72, 73, with regard to Art. 3 (1) TMDir. 47 Either those signs cannot be represented graphically or are not capable of distinguishing goods and services of one source from those of another; s. Art. 4. 48 As a required element of the CTM application, s. Art. 26 (1)(c) CTMR. 49 CJ Case C-307/10 IP-Translator [2012] (not yet published in ECR – available at http://curia.europa.eu), mn. 64.

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for refusal or invalidity set out in Art. 7 (1).50 In cases of doubt, the list of goods and services as published in one of the five languages of the Office in which the application was filed51 must be authentic. Remaining uncertainties as to the scope of the goods and services embraced by the application are to the detriment of the applicant.52 In this context it should be noted that it is no longer admissible to register marks for certain goods and services subject to the condition that they do not possess a certain characteristic, as it used to be common practice in some of the national offices of the Member States.53 This practice was rejected by the CJ as it could lead to legal uncertainty as to the scope of protection afforded by the mark.54 If the list of goods and services denotes class headings of the Nice Classification, the 22 consequences of the IP-Translator judgment have to be taken into account. First, use of the general indications of the class headings to identify the goods and services is not precluded, provided that such identification is sufficiently clear and precise. Second, an applicant who uses all general indications of a particular class heading of the Nice classification must specify whether the application for registration is intended to cover all the goods or services included in the alphabetical list of the class or only of some of those goods or services. In the latter case, the applicant has to specify which of the goods or services in that class are intended to be covered.55

4. Relevant public Whether a sign is barred from registration does not have to be assessed only in 23 relation to the goods and services claimed in the application, but also by reference to the perception of the relevant public.56 The relevant public, in turn, is so to speak predefined by the goods and services in question.57 This is particularly obvious with regard to the grounds for refusal contained in lit. (b) to (e), but is also true, to varying degrees, in respect of the other obstacles contained in Art. 7 (1), again with the exception of Art. 7 (1)(a) in conjunction with Art. 4.58 By way of example, to determine whether a sign is distinctive, descriptive, customary or deceptive59 necessarily entails how it is perceived by the public in relation to the specific goods and services for which protection is sought. 50 Emphasised by the CJ in relation to the absolute grounds for refusal laid down in Art. 3 (1) of the TMDir, CJ Case C-307/10 IP Translator [2012] (not yet published in ECR – available at http:// curia.europa.eu), mn. 43. 51 Either as the first or the second language of the application, Art. 120 (3) first and second sentence, respectively. 52 V. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 3 (a). 53 S. CJ Case C-363/99 Koninklijke KPN Nederland N.V. v Benelux-Merkenbureau/Postkantoor [2004] ECR I-03793, mn. 106, where the national court raised the question whether the designation ‘Postkantoor’ – the Dutch word for post office – could be registered e. g. for services such as direct-mail campaigns or the issuance of postage stamps ‘provided they are not connected with a post office’. 54 CJ Case C-363/99 Koninklijke KPN Nederland N.V. v Benelux-Merkenbureau/Postkantoor [2004] ECR I-03793, mn. 115. 55 CJ Case C-307/10 IP Translator [2012] (not yet published in the ECR – available at http:// curia.europa.eu), mn. 57, 64. 56 CJ Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, mn. 33; CJ Case C-25/05 P Storck v OHIM [2006] ECR I-5719, mn. 25; CJ Case C-304/06 P Eurohypo AG v OHIM [2008] ECR I-03297, mn. 67. 57 Likewise v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 3 (b). 58 Those signs lack trade mark capacity regardless of the goods and services covered by the application: either those signs cannot be represented graphically or are not capable of distinguishing goods and services of one source from those of another; Art. 4. 59 In the sense of Art. 7 (1)(b), (c), (d) and (g).

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Each of the absolute grounds for refusal must therefore be examined from the viewpoint of the targeted public. 24 Where the goods and services embraced in the application are addressed to all consumers,60 the relevant public is deemed to mean the average consumer who is reasonably well-informed and reasonably observant and circumspect.61 It has to be borne in mind that the level of attention of the relevant public varies depending on the category of goods or services in question.62 With regard to everyday consumer goods, the average consumer’s level of attention is lower than that paid to durable goods or goods of a higher value or for more exceptional use.63 If the relevant public is composed of professionals, or in any event is one with experience in the sector of the goods and services in question, this has to be taken into account, as it can be expected that a higher level of attention is displayed.64 25 The perception of the relevant public may change over time. Consumers nowadays are used to paying attention not only to traditional trade marks, but may also recognise colour-combinations, a certain shape of a product or mere get-ups as source-identifying elements. Such developments of consumer expectations and their modified discernment have to be taken into consideration when assessing absolute bars to refusal.65 Unfortunately, OHIM and the courts alike seem to be hesitant to take such developments in the public’s perception into account for the normal scrutiny of the absolute grounds for refusal, and not only as one factor, if proved, of acquired distinctiveness under Art. 7 (3).66 26 It should be noted that there is one exception to this general rule that the obstacles contained in Art. 7 (1) must be examined from the relevant public’s point of view. With a view to a possible application of the ground for refusal under Art. 7 (1)(e)(ii), the presumed perception of the shape mark by the target consumer is not a decisive element and may, at most, be a relevant criterion for the identification of the essential characteristics of this sign in question. The reason for this is that the target consumer may not have the technical knowledge necessary to assess the functionality of the essential characteristics of a specific shape.67 According to recent jurisprudence of the GC/CJ, this applies also to the other bars contained in Art. (7)(1)(e),68 which at least seems to be arguable with regard to (e)(iii), as the assessment whether the shape of a product gives substantial value to that particular product does not require special expertise.69 60

CJ Case C-329/02 P SAT.1 v OHIM [2004] ECR I-08317, mn. 24. CJ Case C-342/97 Lloyd Schuhfabrik Meyer v Klijsen Handel [1999] ECR I-3819, mn. 26; CJ Case C299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. [2002] ECR I-05475, mn. 63; CJ Case C-104/01 Libertel [2003] ECR I-3793, mn. 46; CJ Joined Cases C-53/01 to 55/01 Linde, Winward, Rado [2003] ECR I-03161, mn. 41; CJ Joined Cases C-456/01 P and C-457/01 P Henkel KGaA v OHIM [2004] ECR I-05089, mn. 50; CJ Case C-329/02 P SAT.1 v OHIM [2004] ECR I-08317, mn. 24; interestingly enough, the notion of the average consumer was originally developed in a case related to marketing standards for eggs, CJ Case C-210/96 Gut Springenheide [1998] ECR I-4657, mn. 31. 62 CJ Case C-342/97 Lloyd Schuhfabrik Meyer v Klijsen Handel [1999] ECR I-3819, mn. 26; GC Case T305/02 Nestle´ Waters France v OHIM [2003] ECR II-5207, mn. 34; GC Case T-358/04 NEUMANN v OHIM (form of a microphone head grill) [2007] ECR II-03329, mn. 40. 63 GC Case T-460/05 Bang & Olufsen v OHIM [2007] ECR II-04207, mn. 33; GC Case T-358/04 NEUMANN v OHIM (form of a microphone head grill) [2007] ECR II-03329, mn. 40. 64 CJ Case C-37/03 P BioID AG v OHIM [2005] ECR I-07975, mn. 68; OHIM Dec. of 16.12.2009 – R 178/2008-4 – IQNet (European Emblem), mn. 19; v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 3 (b). 65 S. in more detail below mn. 49 et seq. 66 S. e. g. CJ Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-05089, mn. 38. 67 CJ Case C-48/09 P Lego Juris A/S v OHIM [2010] ECR I-08403, mn. 68 et seq., 76, summarising the GC’s point of view under mn. 25. 68 S. e. g. GC Case T-508/08 Bang & Olufsen vOHIM [2011] ECR II-06975, mn. 71 (and the case law cited). 69 S. in detail the commentary below, mn. 119. 61

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5. Relevant point in time Art. 7 (1) lists the absolute grounds for refusal without indicating the decisive date for the assessment. This gives rise to the question whether the date of the application or rather that of the registration of the mark is the relevant point in time for the ascertainment of the grounds for non-registrability. This is of particular relevance for the obstacles contained in Art. 7 (1)(b) to (d), i. e. those bars that can be overcome by intensive use under the conditions laid down in Art. 7 (3). As regards the acquired distinctiveness under Art. 7 (3), the very wording of that provision and more particularly the use of the verbs in the past tense70 leave no doubt that the mark must, at the time of filing of the CTM application, already have acquired distinctive character through prior use.71 In contrast, recourse to the date of registration would lead to the nonsensical situation in which the chances that a mark’s distinctiveness acquired through use will be taken into account increase the longer the registration procedure takes.72 On a practical note, considering the duration of registration procedures based on acquired distinctiveness,73 this aspect is not of mere academic nature. The wording of Art. 7 (1) does not, however, provide any indication of the relevant point in time for the examination of the absolute grounds for refusal. In fact, the provision in Art. 52 (2) seems to support the view that the date of registration should be decisive, as it prescribes that CTMs registered in breach of Art. 7 (1)(b), (c) or (d) may nevertheless not be invalidated if they acquired distinctiveness in consequence of use after registration of the mark.74 This could justify the conclusion that this rationale has to apply a fortiori to marks that acquire distinctiveness between the date the application was filed and the date of registration, so that the latter should be determinative for the assessment under Art. 7 (1).75 Such a reasoning, however, cannot be seen as convincing as it is incompatible with the logic of the system of absolute and relative grounds for refusal. According to the regime, as enshrined in the CTMR, the filing date determines the priority of one mark over another.76 As a consequence, the filing date is the relevant point in time for the examination of the absolute grounds for refusal under Art. 7 (1). To hold otherwise would deprive the taxonomy, which is based on the priority principle, of its effectiveness, without any procedural need, let alone substantive basis. If trade marks were allowed to gain distinctiveness during the registration procedure, applications for CTMs that are non-registrable at the filing date could be used as a relative ground for refusal in opposition or invalidity proceedings against a second mark whose filing date is after that of the first mark. This would be particularly unacceptable when the second mark already possesses distinctive character at the time of filing, whereas the first has not yet acquired it through use.77 70 S. the phrases ‘the mark has become’ and ‘in consequence of the use which has been made of it’, Art. 7 (3) CTMR (emphasis added). 71 CJ Case C-542/07 Imagination Technologies Ltd v OHIM [2009] ECR I-04937, mn. 42; GC Case T247/01 eCopy Inc v OHIM [2002] ECR II-05301, mn. 38. 72 GC Case T-247/01 eCopy Inc v OHIM [2002] ECR II-05301, mn. 39. 73 S. as to the production of evidence to prove acquired distinctiveness below mn. 326 et seq. 74 In that direction apparently Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 32. 75 V. Mu ¨ hlendahl/Ohlgart, Gemeinschaftsmarke, p. 27, mn. 10. 76 CJ Case C-542/07 Imagination Technologies Ltd v OHIM [2009] ECR I-04937, mn. 51, s. also CJ Case C-332/09 P OHIM-Flugbo¨rse [2010] ECR I-00049 (summary publication only, full text available at http:// curia.europa.eu), mn. 52; v. Mu¨hlendahl/Ohlgart, ibid, mn. 11. 77 Rightly stressed by CJ Case C-542/07 Imagination Technologies Ltd v OHIM [2009] ECR I-04937, mn. 52; CJ Case C-332/09 P OHIM-Flugbo¨rse [2010] ECR I-00049 (summary publication only, full text available at http://curia.europa.eu), mn. 52, stressing that otherwise the applicant of a trade mark which is

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Lastly, recourse to the filing date as the relevant point in time for the examination of the absolute grounds for refusal is perfectly consistent with Art. 52 (1)(a), (2). This is justified by reason of legitimate expectations of the proprietor based on the fact that the CTM has been registered, and the proprietor, proceeding on those expectations, may have made significant investments in the period between registration of the mark and the action for invalidity under Art. 52. Such legitimate expectations evidently do not exist at the time when a CTM application is filed.78

6. Ex officio examination Each CTM application is examined ex officio as to absolute grounds for refusal.79 Unlike in proceedings relating to relative grounds for refusal, the examiners are not restricted to facts, evidence and arguments provided by the parties, but must explore of their own motion the relevant facts that could lead to an absolute ground for refusal.80 If the applicant is notified that according to the examiner’s analysis the registration would be refused for absolute grounds, it is up to the applicant to provide specific and substantiated information to demonstrate that the mark in question is eligible for registration, for example, that it has either intrinsic distinctive character or acquired distinctiveness and so forth.81 As a general observation, the examiners at OHIM are, in general, indeed keen to investigate the underlying facts at their own initiative. On a more practical note, the applicant should try to work with rather than against OHIM. In this respect, the generally high degree of expertise of the examiners and the members of the BoAs proves to be helpful. As they are all fluent in several languages, discussing – and resolving – factual and legal issues on the phone often proves to be equally constructive and fruitful. 33 The assessment of a CTM takes place on the basis and within the limits of the application for registration, including the list of goods and services and the representation of the mark as submitted to the Office.82 Circumstances of intended or actual use of the mark are of no relevance.83 Accordingly, asserted effects resulting from the use of a translucent shape mark in connection with the intended content were rightly disregarded by OHIM and the GC in assessing the distinctive character of a three-dimensional mark, as they were not reflected in the application.84 It should be noted, though, that the CJ seems to allow deviations from this strict rule that the assessment of a CTM must be based solely on the sign as applied for. In its SPECSAVERS decision the Court held that in infringement proceedings based on a CTM registered in black white, but where the proprietor had made extensive use of the sign in a particular colour or 32

devoid of any distinctive character at the filing date would be privileged without any justification if it was possible to rely on distinctiveness acquired after the date of filing the application; likewise, v. Mu¨hlendahl/ Ohlgart, ibid, p. 27, mn. 10, 11; disagreeing Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 31–33. 78 CJ Case C-542/07 Imagination Technologies Ltd v OHIM [2009] ECR I-04937, mn. 55. 79 Art. 37 CTMR, Rule 11 CTMIR. 80 S. Art. 76 (1) CTMR; stressed by CJ Case C-265/09 P OHIM v Borco-Marken-Import Matthiesen [2010] ECR I-08265, mn. 57. 81 To that end, CJ Case C-238/06 P Develey v OHIM [2007] ECR I-09375, mn. 49, 50; CJ Case C-265/09 P OHIM v Borco-Marken-Import Matthiesen [2010] ECR I-08265, mn. 57–59. 82 S. e. g. OHIM Dec. of 3.5.2013 – R 1077/2012-4 – RED SHACKLE PIN, mn. 8, stressing that the distinctiveness of a mark must be ‘judged on the basis of the representation as filed’; as to the limiting effect of the application s. in more detail Hasselblatt, above, Art. 6 mn. 12–14. 83 V. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 2 (b). 84 GC Case T-12/04 ‘Almdudler-Limonade’ A. & S. Klein v OHIM, mn. 42 (decision available only in the German language; summary available at [2005] ECR II-21; s. also OHIM Dec. of 17.11.1999 – R 301/ 1999-3 – BPW Bergische Achsen KG v OHIM, mn. 10.

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combination of colours, the fact that the alleged infringer used similar colours or colour combinations in her/his sign should be relevant in the global assessment of the likelihood of confusion or taking unfair advantage under Art. 9 (1)(b) and (c).85 Such an interpretation is hardly reconcilable with the basic principle that the registration must identify the CTM with sufficient clarity and precision to enable the competent authorities and the competitors, on that basis alone, to determine the extent of the protection conferred by the mark.86

7. Full-fledged examination process The analysis as to absolute bars must be a stringent and full examination in order to 34 prevent trade marks from being improperly registered.87 As is mandated by reasons of ‘legal certainty and good administration’, it has to be ensured that trade marks whose use could be successfully challenged are not registered.88 This evidently requires a thorough examination prior to registration, and not a review a posteriori.89 In fact, the latter is occasionally voiced in light of Art. 12. The limitations of the 35 effects of CTMs contained therein, according to this opinion, ‘neutralise’ the risk that undertakings might appropriate certain signs which ought to remain available, which in turn would necessitate only ‘a minimal review’ of the grounds for refusal.90 This notion of a liberal91 registration policy is to be rejected outright for a number of 36 reasons. First, nothing in the regulation suggests that the scrutiny of absolute grounds for refusal should be minimal; on the contrary, the large number and detailed nature of the obstacles contained in Art. 7 (1) point in the opposite direction. Furthermore, the limitations contained in Art. 12 do not run counter to the objectives of Art. 7 (1), nor do they have a decisive bearing on the interpretation of that provision.92 Second, such a liberal approach would be tantamount to shifting the responsibility to scrutinise the mark in question from the registration procedure to infringement proceedings.93 In the meantime, a sign that should not have been registered in the first place because of absolute grounds for refusal could be used as a basis for opposition and invalidity actions against other marks with a junior filing date. In addition, a non-registrable but nonetheless registered mark has in itself a deterring effect on competitors, and not every alleged infringer would challenge the mark when it is enforced. The registration and 85 CJ Case C-252/12 Specsavers et al. v Asda Stores [2013] (not yet published in the ECR – available at http://curia.europa.eu, mn. 41. 86 Stressed by the CJ in relation to the goods and services, for which the protection of the trade mark is sought, Case C-307/10 IP Translator [2012] (not yet published in the ECR – available at http://curia.europa.eu), mn. 64; s. as to the binding effect of the registration above, Hasselblatt, Art. 6, mn. 12–14. 87 CJ Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-03793, mn. 59; CJ Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau(POSTKANTOOR) ECR [2004] I01619, mn. 123; CJ Case C-265/09 P OHIM v Borco-Marken-Import Matthiesen [2010] ECR I-08265, mn. 45. 88 CJ Case C-265/09 P OHIM v Borco-Marken-Import Matthiesen [2010] ECR I-08265, mn. 45; CJ Case C-39/97 Canon [1998] ECR I-5507, mn. 21. 89 CJ Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-03793, mn. 59. 90 S. the Commission’s line of arguments put forward in the Libertel-case, as summarised in CJ Case C104/01, ibid, mn. 58. 91 S. CJ Case C-64/02 P OHIM v Expo Mo ¨ belwerk GmbH (Das Prinzip der Bequemlichkeit) [2004] ECR I-1003, mn. 45, where the applicant argued that at least ‘in cases of doubt’ trade mark protection should be granted, which was rightly rejected by the court. 92 Rightly pointed out by the CJ (in relation to the equivalent situation under Art. 6 (1) of the TMDir on the one hand and the absolute grounds listed in Art. 3 (1) TMDir on the other): Joined Cases C-108/ 97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-03297, mn. 28. 93 CJ Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-03793, mn. 58, 59.

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(possible) use of trade marks that are in fact unregistrable could thus lead to both a misuse of registered trade mark rights and a distortion of competition. Third, and certainly not least, the relatively few limitations provided for in Art. 12 do not mirror the full spectrum of absolute grounds for refusal contained in Art. 7 (1), so that the ‘neutralisation’ argument is to no avail.

8. No binding effect of national decisions The CTMR establishes an autonomous and self-contained system, with its own objectives and rules peculiar to it, that applies independently of national protection regimes.94 The registrability of a sign as a CTM must therefore be examined solely within the framework of the relevant Community rules. Consequently, OHIM and the Community judicature are not bound by decisions rendered in a Member State or a third country according to which the sign seeking protection as a CTM is registrable as a national mark.95 That is even the case if such a decision was issued under national legislation harmonised under the TMDir or in a state belonging to the linguistic area in which the respective (word) sign originated.96 Furthermore, the legality of the Office’s registration practice is not based on previous decisions, including those of OHIM, but must be assessed solely on the basis of the CTMR, so that earlier registrations of similar marks do not set binding precedents.97 38 Even though decisions of national courts or authorities cannot, and should not, be binding in the strict legal sense, earlier national registrations of identical or similar marks may be of indicative value.98 Lastly, it should be kept in mind that OHIM and the national offices must strive for a coherent examination and registration policy, and as such must take earlier decisions/registrations of other Member States relating to identical/similar marks into account.99 Hence, it makes sense for the applicant to refer to such earlier registrations/decisions of national offices vis-a`-vis OHIM when applying for an identical/similar CTM, even though such decisions are not binding in the strict sense. 39 Furthermore, it has to be borne in mind that the Office is under a duty to exercise its powers in accordance with the general principles of EU law, particularly the principle of equal treatment and the principle of sound administration. As a consequence, OHIM must, when examining a CTM application, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should 37

94 GC Case T-32/00 Messe Mu ¨ nchen v OHIM (electronica) [2000] ECR II-3829, mn. 47; GC Case T322/03 Telefon & Buch Verlagsgesellschaft v OHIM (WEISSE SEITEN) [2006] ECR II-00835, mn. 30; s., for details, remarks on the principle of autonomy above, Hasselblatt Art. 1, mn. 83 et seq. 95 GC Case T-322/03 Telefon & Buch Verlagsgesellschaft v OHIM (WEISSE SEITEN) [2006] ECR II00835, mn. 30; GC Case T-417/10 Corte´s del Valle Lo´pez v OHIM (not yet published in the ECR, decision available only in French and Spanish; available at http://curia.europa.eu), mn. 27; likewise OHIM Dec. of 1.6.2012 – R 254/2012-2 – HNI Technologies Inc. (CURVE), mn. 27. 96 GC Case T-106/00 Streamserve v OHIM [2002] ECR II-723, mn. 47; GC Case T-19/04 Metso Paper Antomation v OHIM (PAPERLAB) [2005] ECR II-0000, mn. 37; GC Case T-322/03 Telefon & Buch Verlagsgesellschaft v OHIM (WEISSE SEITEN) [2006] ECR II-00835, mn. 30. 97 GC Case T-417/10 Corte ´s del Valle Lo´pez v OHIM (not yet published in the ECR, decision available only in French and Spanish; available at http://curia.europa.eu), mn. 27; OHIM Dec. of 1.6.2012 – R 254/ 2012-2 – HNI Technologies Inc. (CURVE), mn. 31. 98 S. thorough analysis with regard to the Joined Cases C-39/08 VolksHandy and C-43/08 Schwabenpost [2009] ECR I-00020 (summary publication) above, Hasselblatt Art. 1, mn. 89–93; s. also To¨belmann, GRUR 2009, 1007, 1008. 99 CJ Joined Cases C-39/08 VolksHandy and C-43/08 Schwabenpost [2009] ECR I-00020 (summary publication, full text available at http://curia.europa.eu), mn. 17; v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 2 (d).

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decide in the same way or not. The principles of equal treatment and sound administration must, however, be consistent with legality. As a consequence, a person who files a CTM application cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else.100

IV. Non-registrability in only part of the Community 1. Uniform effect of the CTM Community trade marks, as is made clear by Art. 1 (2), have equal effect throughout 40 the Community and, as a consequence, ‘shall not be registered (…) save in respect of the whole Community’.101 To achieve this principle of unity, which forms the backbone of the CTM, the EU lawmakers deem the territory of the Community a unitary market.102 As a corollary of this uniform and Union-wide effect of the CTM, an obstacle to registration in only parts of the single market affects the registrability of a CTM as a whole. Art. 7 (2) takes account of this very principle, aptly described as the ‘all or nothing 41 rule’.103 If a ground for refusal exists in only part of the Community, the sign in question is excluded from registration as a CTM. A special approach was chosen in Art. 165 (2) to deal with the accession of the new 42 Member States, paying tribute to both the unitary character of the CTM and the enlargement of the EU. CTMs that were already applied for at the date of accession could not be refused on the basis of any of the absolute grounds for refusal in Art. 7 (1) if these grounds became applicable merely because of the accession of the new Member State.

2. ‘Part’ of the Community The EU now comprises 28 Member States and covers a single market of more than 43 500 million consumers104 with different linguistic, cultural, social and economic backgrounds. This means that, due to these different backgrounds, a sign may be perceived as devoid of distinctive character, deceptive or contrary to principles of morality in one part of the EU, but perfectly registrable in others because in the latter countries the meaning of a term is not understood in its true sense but regarded as imaginary term and hence considered to be distinctive.105 The ratio legis of Art. 7 (2) has to be seen against this multilingual and multicultural 44 backdrop and put into systematical context with the nature of the CTM as a Community-wide exclusive right. The Preamble and the CTMR itself remain silent as to what is meant by ‘part of the Community’. This raises the question as to a sound yardstick for assessing when an absolute bar ‘obtains in only part of the Community’. 100 CJ Joined Cases C-39/08 and C-43/08 Bild digital and ZVS [2009] ECR I-20 (summary publication, full text available at http://curia.europa.eu), mn. 18; CJ Case C-51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I-01541, mn. 73–76. 101 S. detailed analysis of the principle of unity above, Hasselblatt Art. 1, mn. 99–110. 102 S. recitals 2 and 3 of the Preamble of the CTMR, which make express mention of the creation of ‘a market of this kind and make it increasingly a single market’. 103 V. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 15 (a). 104 S. OHIM website under https://oami.europa.eu Õ about OHIM Õ who we are Õ the office. 105 S. to that effect CJ Case C-421/04 Matratzen Concord [2006] ECR I-2303, mn. 25; CJ Case C-238/06 P Develey v OHIM [2007] ECR I-09375, mn. 58.

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Language skills, social or buying habits and the like are not bound to certain territories. They can be exactly the same across the EU and can at the same time, as the case may be, differ from state to state, or even vary within the boundaries of one Member State.106 It is thus widely accepted that the term ‘part of the Community’ is not tied to state borders,107 although a ‘part of the EU’ may, in some circumstances, mean a single Member State.108 46 The decisive factor is how the sign – and hence the obstacle – in question is perceived by the relevant public. This, in turn, depends on the absolute ground for refusal in question which so to speak ‘predetermines’ the target public. Most of the obstacles listed in Art. 7 (1) relate to the meaning of a certain word or indication in a particular language. Consequently, the perception of the language-related obstacles may differ from one linguistic area to another. If the mark for which registration is sought consists of a word or is composed of elements taken from a particular language, the relevant public is the linguistic area in which this language is spoken or at least understood. Therefore, OHIM and the courts rightly determined the target public by reference to which the obstacle in question must be assessed to be the Romanian-speaking general public with regard to a word taken from the Romanian language,109 the Greek consumer with regard to the word ‘kali’ taken from the Greek language,110 the respective language area as regards the word ‘Appel’ in those parts of Northern Germany, the Netherlands and the Dutch-speaking part of Belgium in which this particular dialect is spoken,111 and so forth. This is different with regard to signs taken from or composed of terms of the English language, as English, as the leading business language, is known practically everywhere, so that the English-speaking general public is not limited to the territories of the UK, Ireland and Malta.112 The general public, whose perception of the sign is decisive, is not necessarily bound to linguistic areas even if the mark in question stems from a particular language, as long as the term in question is understood even without a strong command of the respective language.113 47 There are no rigid guidelines with regard to the size, geographical spread and/or the number of consumers that the ‘part of the Community’ in the meaning of Art. 7 (2) must comprise. In this context, two aspects have to be borne in mind. First, with regard to the sheer size of the single market, and thus the reach of the CTM, the part of the Community 45

106 S., for instance, OHIM Dec. of 11.10.1999 – R 298/1999-3 – APPEL, mn. 18, with regard to the word ‘Appel’ in a dialect spoken in the Northern parts of Germany and parts of Belgium and the Netherlands (the proper German word for ‘apple’ is ‘Apfel’). 107 Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 259; v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 15 (b). 108 OHIM Dec. of 1.6.2012 – R 254/2012-2 – CURVE, mn. 12; s. also OHIM Dec. of 4.3.1999 – R 147/ 1998-2 – KALI, mn. 11 et seq. regarding the Greek transliteration of the word ‘Kali’. 109 S. OHIM Dec. of 1.6.2012 – R 244/2012-2 – CURVE, mn. 11 et seq.: ‘curve’ is apparently a very offensive Romanian word in plural, meaning ‘sluts, whores, prostitutes’. 110 OHIM Dec. of 4.3.1999 – R 147/1998-2 – KALI, mn. 14, holding that the word ‘kali’, which in Greek means ‘good’, would not be seen as laudatory and thus descriptive, because according to the BoA’s view there would need to be a degree of imagination employed on the part of the – Greek speaking – purchaser in order to arrive at the word ‘kali’, which removes the trade mark at least one step away from being simply a non-distinctive and laudatory sign. 111 OHIM Dec. of 11.10.1999 – R 298/1999-3 – APPEL, mn. 18. 112 CJ Case C-104/00 P DKV Deutsche Krankenversicherung v OHIM (COMPANYLINE) [2002] ECR I0756, mn. 40; GC Case T-339/05 MacLean Fogg Co. v OHIM (LOKTHERAD) [2007] ECR II-00061 (summary publication, full text available at http://curia.europa.eu), mn. 40, 41. 113 S. e. g. GC Case T-236/12 Airbus v OHIM (NEO) [2013] (not yet published in ECR, full text available at http://curia.europa.eu), mn. 29: in relation to the Greek word ‘neo’, with the meaning ‘new’, the court found that ‘the relevant consumers, Greek consumers at least, will immediately perceive this term as having a directly descriptive and laudatory meaning, namely that the goods and services in question are new’.

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in which the obstacle in question applies must not be – relatively speaking – totally insignificant.114 Second, the underlying rationale of Art. 7 (2) must be obeyed. It is in the public interest that CTMs, which by definition have Union-wide reach, may not be registered if they are perceived by parts of the Community in such a way that they cannot fulfil the essential trade mark function (because they lack distinctiveness), are descriptive or consist of customary indications or are contrary to accepted principles of morality. In light of this, the threshold should not be too high. Irrespective of geographic boundaries, OHIM considered, and rightly so, a linguistic area – spread over Northern Germany, the Netherlands and Belgium – comprising 21 million citizens of the EU to be sufficiently relevant and hence to be a ‘part of the Community’ in the meaning of Art. 7 (2).

3. Conversion into national trade mark application If the CTM is refused registration or invalidated because of absolute grounds for 48 refusal that apply only in part of the Community under Art. 7 (2), the applicant may request the conversion of the CTM application into national trade mark applications under Art. 112. According to Art. 112 (2)(b), conversion is impermissible with regard to such Member States in which the absolute grounds for refusal exist.115 If the CTM has been refused or invalidated on absolute grounds by reference to the official language of a Member State, conversion may not take place in respect of all the Member States in which that language is one of the official languages.116

B. Absolute grounds for refusal, Art. 7 (1) CTMR The absolute grounds for refusal set out in Art. 7 are analysed separately below. Some 49 of the individual types of signs, such as advertising slogans, position marks, 3D marks, colour marks, sound marks, olfactory marks and the like, pose specific problems. Hence, in the interest of greater clarity, special features of the most important types of signs will be presented separately under C.

I. Signs which cannot constitute a trade mark (lit. a) According to Art. 7 (1)(a), signs may not be registered which ‘do not conform to the 50 requirements of Art. 4’. In that regard, the wording of this absolute bar differs from that of the respective provision of the TMDir,117 although the meaning is exactly the same. Art. 4, in turn, contains two different requirements.118 114 S. the example put forward by Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 259: the name of a small village, tucked away somewhere in the mountains, is less likely to be known by a relevant part of the Community than a big European city; s. also CJ Joint Cases C108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR-I 779, mn. 31–33, according to which the absolute ground for refusal of Art. 7 (1)(c) should not be applied in cases where marks consist of names designating unknown geographical areas. 115 S. detailed commentary on conversion below Ebert-Weidenfeller, Artt. 112–114. 116 Rule 45 (4) CTMIR. 117 Art. 3 (1)(a) TMDir provides that ‘signs which cannot constitute a trade mark’ shall not be registered or, if registered, shall be liable to be declared invalid. 118 S. CJ in relation to the equivalent provision to Art. 7 (1)(a), namely Art. 3 (1)(a) of the TMDir, Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. [2002] ECR I-05475, mn. 38: ‘Accordingly, Art. 3 (1)(a) of the Directive, like the rule laid down by Art. 3 (1)(b), (c) and (d)

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Community Trade Mark Regulation

1. Abstract distinctiveness According to Art. 4 (a) CTM may consist of any signs that are ‘capable of distinguishing the goods or services of one undertaking from those of other undertakings’.119 It follows from the taxonomy of the CTMR that Art. 4 refers to the abstract distinctiveness of signs. This becomes clear by the interaction of the absolute grounds for refusal set out in Art. 7 (1)(a) and (b), whereby the former absolute bar – in conjunction with Art. 4 – refers to the abstract distinctive character of signs and the latter to signs that ‘are devoid of distinctive character’ in respect of the goods and services covered by the application (concrete or specific distinctiveness).120 Only this interpretation ensures that the provision of Art. 7 (1)(a) is not deprived of any independent meaning or that the reference in (a) to Art. 4 is not reduced to the ‘capability of being represented graphically’.121 52 The issue of abstract distinctiveness does not play a role in practice, because no signs can per se be denied the capability of having distinctive character.122 Thus, as regards distinctiveness, a sign could be refused only if its distinctive character would have to be denied abstractly for all goods and/or services, and not only those (specifically) denoted in the application. This is inconceivable, however, because even such signs that are entirely descriptive in respect of certain goods or services can of course be distinctive with regard to other goods or services. Hence, the practical significance of a lack of abstract distinctiveness is virtually zero.123 53 The CJ appears to lean in this direction as well, albeit it takes a different path, at least with regard to the terminology used. The starting point of the consideration of the CJ is based on the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product to the consumer or end-user by enabling him to distinguish, without any possibility of confusion, the product or service from those which have a different origin. In order to fulfil its essential role in the system of undistorted competition, a trade mark must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality.124 In this context, it has to be borne in mind that signs may, through use, require a distinctive character which they initially lacked,125 although 51

precludes in the registration of signs or indications which do not need one of the two conditions imposed by Art. 2 of the Directive’ (= Art. 4 CMTR, emphasis added). 119 S. as to the broad definition of signs of types and the non-exhaustive character of the definition (which is made clear by the word ‘particularly’) above, Schneider, Art. 4. 120 Hasselblatt, The Community Trade Mark (1997), 143, 149; likewise v. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke (1998), p. 23, mn. 5. 121 If the latter had been intended by the lawmakers, Art. 7 (1)(a) would have read as follows: ‘(1) The following shall not be registered: (a) signs which are not capable of being represented graphically’. 122 Particularly clear in CJ Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. [2002] ECR I-05475, mn. 38 and 39: ‘38. (…) requiring signs to be capable of distinguishing the goods or services of one undertaking from those of other undertakings; 39. It follows that there is no class of marks having a distinctive character by their nature or by the use made of them which is not capable of distinguishing goods or services (…)’ (with regard to the equivalent provisions of Art. 3 (1)). 123 This view is apparently shared by OHIM, which pointed out that the distinctiveness under Art. 7 (1)(a) CTMR is to be judged in abstracto, i. e. without reference to the goods and services for which registration is sought; after establishing the design that may constitute a trade mark in the abstract, the further requirements of Art. 7 CTMR have to be examined and the distinctive character must be assessed by reference to the goods and services in respect of which registration is claimed; OHIM Dec. of 7.6.2012 – R 2451/2011-2 – SHAPE OF A GRILL (3D MARK), mn. 43. 124 CJ Case C-349/95 Loendersloot [1997] ECR I-6227, mn. 22, 24; CJ Case C-39/97 Canon [1998] ECR I-5507, mn. 28; CJ Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. [2002] ECR I-05475, mn. 30. 125 CJ Case C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, mn. 44.

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the CJ does not distinguish between inherent and acquired distinctiveness. Starting from this basis, the CJ comes to the conclusion, logically, that there is ‘no class of marks having a distinctive character by their nature or by the use made of them which is not capable of distinguishing goods or services’.126 In other words, also this perspective confirms that a sign must have abstract distinctiveness; otherwise it cannot function as an indication of origin. It is true that the CJ does not use the term ‘abstract distinctiveness’, but simply refers to the ‘distinctiveness’ of a mark or the distinctive character that is vital for the capability of a sign to be registered as a trade mark.127 This different conceptional grounding is of merely academic or terminological nature, 54 as there are no categories of signs that lack distinctiveness per se. Whether such signs that are capable of constituting a trade mark possess concrete distinctiveness in respect of the goods and services embraced by the application has to be assessed with reference to the absolute bars set out in (b) to (d).128

2. Graphic representation According to the further requirement laid down in Art. 4, the sign seeking protection 55 must be ‘capable of being represented graphically’. This requirement of graphic representability, which has been rightly criticised as outdated especially with regard to the presentation of non-traditional trade marks,129 is intended to ensure that the precise subject matter of the CTM is accurately reflected in the register to enable both the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the respective mark.130 This prerequisite proves to be completely unproblematic in practice in respect of most signs, such as word marks, combinations of letters, numbers and/or graphic elements; it does, however, create to date a significant and in some cases insurmountable hurdle for some nontraditional marks such as olfactory marks, tactile marks and the like.131 Signs that are not visually perceptible fulfil this criterion only if they can be represented graphically, particularly by means of images, lines or characters, and the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.132 The fact that virtually any sign may constitute a trade mark in the abstract, does not, 56 however, allow the conclusion that the subject matter of any trade mark application 126 Within the meaning of Art. 2 TMDir and Art. 4 CMTR, respectively; with regard to Art. 2 TMDir, s. CJ Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. [2002] ECR I-05475, mn. 39 (author’s emphasis). 127 This differentiation between ‘abstract distinctiveness’ under Art. 4 on the one hand and the (concrete) distinctiveness under Art. 7 on the other was recently emphasised by OHIM Dec. of 7.6.2012 – R 2451/ 2011-2 – SHAPE OF A GRILL (3D MARK), mn. 43: the BoA points out that after establishing a sign that may constitute a trade mark in the abstract, the further requirements of Art. 7 CTMR have to be examined and the distinctive character must be assessed by reference to the goods and services in respect of which protection is sought. 128 S. e. g. CJ Case C-204/01 Libertel [2003] ECR I-03793, mn. 27; s. also GC Case T-173/00 KWS SAAT v OHIM [2002] ECR II-03843, mn. 26: ‘However, the fact that a category of signs is, in general, capable of constituting a trade mark does not mean that signs belonging to that category necessarily have distinctive character for the purposes of Article 7 (1)(b) of Regulation No 40/94 in relation to a particular product or service.’ 129 S. in more detail, also as to the revised version proposed by the Commission, above mn. 5, 6. 130 S. to that extent CJ Case C-273/00 Sieckmann [2002] ECR I-11737, mn. 41, and – with the focal point on this sufficiently clear and precise identification of the goods and services – CJ Case C-307/10 IPTranslator [2012] (not yet published in ECR – available at http://curia.europa.eu), mn. 64. 131 S. the detailed analysis in relation to those signs below under C, mn. 300 et seq. 132 S. CJ Case C-273/00 Sieckmann [2002] ECR I-11737, mn. 55.

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Community Trade Mark Regulation

necessarily constitutes a sign within the meaning of Art. 4.133 In addition to the capability of being represented graphically, the subject matter of the sign as reflected in the CTM application must be specific. Given the exclusive character inherent in trade mark rights, the holder of a trade mark relating to a non-specific subject matter would obtain an unfair competitive advantage.134 Therefore, representations of the trade mark claiming protection that are equivocal and thus not specific are impermissible. A representation of a mark in all conceivable forms135 or a subject matter capable of taking on a multitude of different appearances136 is not specific. Applications that are not specific have to be refused under Art. 7 (1)(a), Art. 4. 57 With a view to the graphic representability: CTMs accepted by OHIM, also with a view to their graphic representation:

58

Type

Nice Classes

Mark

Case Number/CTM

Authority

Olfactory

28

The smell of fresh cut grass

R 156/1998-2

OHIM (BoA)

Sound

30, 35

Haribo jingle

9460403

OHIM (Examiner)

Sound

9, 12

Sound of an engine (Renault)

10654523

OHIM (Examiner)

Sound

29, 30, 35, 39, 43

Jingle (Nestle´)

10573368

OHIM (Examiner)

Hologram

3, 5

Hologram (Bio-Active)

1787456

OHIM (Examiner)

Movement

9, 28, 38, 41

Animation of two hands reaching out for each other (Nokia)

3429909

OHIM (Examiner)

Signs refused because of non-compliance with the requirements as to the graphic representability: Type

Nice Classes

Tactile

21

Mark

Case Number

Authority

R 479/2012-5

OHIM (BoA)

133 In that direction also CJ Case C-321/03 Dyson Ltd. v Registrar of Trade Marks [2007] ECR I-00687, mn. 33 with regard to Art. 2 of the TMDir; as to the assessment of the distinctiveness within the scope of Art. 7 (1)(a) CTMR in abstracto, s. OHIM Dec. of 7.6.2012 – R 2451/2011-2 – SHAPE OF A GRILL (3D MARK), mn. 43. 134 CJ Case C-49/02 Heidelberger Bauchemie [2004] ECR I-6129, mn. 24; CJ Case C-321/03 Dyson [2007] ECR I-00687, mn. 34, 38. 135 OHIM Dec. of 4.9.2013 – R 1187/2012-4 – Solar Kollektor, mn. 18. 136 CJ Case C-321/03 Dyson [2007] ECR I-00687, mn. 37, where the transparency of the collecting bin of vacuum cleaners allows for the use of various colours.

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Art. 7 CTMR

Absolute grounds for refusal Type

Nice Classes

Tactile

12

Sound

9, 25, 28, 38, 41, 42

Olfactory

Mark

Case Number

Authority

R 1174/2006-1

OHIM (BoA)

Tarzan yell

R 708/2006-4

OHIM (BoA)

3, 16, 18, 25

The smell of ripe strawberries

T-305/04

GC

Gustatory

5

The taste of artificial strawberry flavour

R 120/2001-2

OHIM (BoA)

Sound

9, 16, 35 ff.

‘Kukelekuuuuu’ (an onomatopoeia suggesting, in Dutch, a cockcrow and ‘Fu¨r Elise’, by Ludwig van Beethoven

C-283/01 ‘Shield Mark/ Kist’

CJ

Olfactory

35, 41, 42

The smell of cinnamon

C-273/00 ‘Sieckmann’

CJ

Olfactory

4

The smell of raspberries

R 711/1999-3

OHIM (BoA)

II. Lack of distinctive character (lit. b) 1. Role and importance of the provision Art. 7 (1)(b) sets an absolute bar for trade marks which are devoid of any distinctive 59 character. In terms of the practical importance of the bars to registration listed in Art. 7 (1), the absolute ground for refusal contained in lit. (b) is the most significant. Signs that are devoid of any distinctive character cannot fulfil the essential function of a trade mark as they are not capable of identifying the goods and services in respect of which protection is sought as originating from a particular undertaking, and thus of distinguishing those goods and services from those of other undertakings.137 Therefore, this obstacle goes ‘right to the heart’ of trade mark protection,138 as signs that lack (concrete) distinctiveness in respect of the goods and services denoted in the application cannot serve as a guarantee of origin. As rightly observed by the CJ, the public interest underlying Art. 7 (1)(b) is manifestly indissociable from the essential function of the trade mark.139 The inherent lack of distinctiveness can be remedied under the conditions set out in 60 Art. 7 (3), if the mark has become distinctive in relation to the goods or services for which registration is requested resulting from intensive and long-standing use.140

137 CJ Case C-64/02 P OHIM v Erpo Mo ¨ belwerk [2004] ECR I-10031, mn. 42; CJ Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, mn. 32; CJ Case C-304/06 P Eurohypo v OHIM [2008] ECR I-3297, mn. 66. 138 Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 40. 139 CJ Case C-329/02 P SAT.1 v OHIM [2004] ECR I-08317, mn. 27. 140 S. detailed presentation on acquired distinctiveness below mn. 313.

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Community Trade Mark Regulation

2. Reference to specific goods/services and relevant public’s perception 61

As is made clear by the taxonomy of Art. 7 (1),141 the distinctive character must be determined in relation to the specific goods and services covered by the application, because otherwise the sign would be barred already based on the general criteria set out in Art. 4.142 The CJ has meanwhile rendered several judgments to this effect. It is now established case law that the distinctive character of a mark must be assessed in relation to the goods or services for which protection has been requested.143 Furthermore, the distinctive character of a sign must be determined by reference to the relevant public’s perception of the mark.144 If goods and services specified in the application are intended for all consumers, the relevant public means the average consumer who is reasonably well-informed and reasonably observant and circumspect. Depending on the type and goods or services in question, the relevant public’s level of attentiveness can vary.145

3. Minimum distinctiveness 62

It can be concluded from the wording of Art. 7 (1)(b)146 that a low level of distinctiveness is sufficient to overcome this obstacle. The requirements for a finding of distinctive character should therefore not be too strict. It suffices that the mark immediately enables the relevant public to distinguish the goods or services bearing the mark from those of competing undertakings.147 Whereas the CJ initially left open the issue as to whether a minimal level of distinctiveness is sufficient to overcome the obstacle set out in lit. (b),148 it has meanwhile expressly confirmed that it suffices that

141

And likewise the systematics of the equivalent provision of Art. 3 (1) TMDir. Hasselblatt, in Hasselblatt, International Intellectual Property Law (1997), pp. 145, 149, mn. 10.5; s. also the instructive observations in GC Case T-173/00 KWS SAAT v OHIM [2002] ECR II-03843, mn. 26: ‘However, the fact that a category of signs is, in general, capable of constituting a trade mark does not mean that signs belonging to that category necessarily have distinctive character for the purposes of Article 7 (1)(b) of Regulation No 40/94 in relation to a particular product or service.’ 143 As far as it can be seen, this was held by the CJ for the first time in its Merz & Krell judgment, where it is stressed that the issue of whether a particular sign or indication possesses distinctive character cannot be considered in the abstract and separately from the goods or services those signs or indications are intended to distinguish, CJ Case 517/99 [2001] ECR I-06959, mn. 29; confirmed by later decisions, e. g. CJ Case C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, mn. 33; CJ Case C-25/05 P Storck v OHIM [2006] ECR I-5719, mn. 25; CJ Case C-144/06 P Henkel v OHIM [2007] ECR I-109, mn. 34; CJ Case C-64/02 P OHIM v Erpo Mo¨belwerk [2004] ECR I-10031, mn. 67. 144 CJ Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-05089, mn. 50; CJ Joined Cases C-53/01 to 55/01 Linde, Winward, Rado [2003] ECR I-03161, mn. 41; CJ Case C-299/99 Koninklijke Philips v Remington [2002] ECR I-05475, mn. 63; CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 34. 145 As to the relevant public in general and the average consumer’s perception in particular, s. above mn. 23–25. 146 Which reads ‘(b) Trademarks which are devoid of any distinctive character’ (emphasis added). 147 CJ Case C-329/02 P SAT.1 v OHIM [2004] ECR I-08317, mn. 41; CJ Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-09165, mn. 50. 148 Expressly left open in CJ Case C-104/00 DKV Deutsche Krankenversicherung AG v OHIM [2002] ECR I-0756, mn. 20: ‘In that regard, it is sufficient to observe, with respect to the first part of the first plea, that the dispute before the Court of First Instance concerned the refusal to register the sign ‘Companyline’ on the ground that that lacked distinctiveness. The Court of First Instance was therefore entitled to confine itself to considering that question, and was under no obligation to rule on the possible dividing line between the concept of lack of distinctiveness and that of minimum distinctiveness’ (emphasis added). 142

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the mark possesses a minimum degree of distinctiveness in order to defeat the absolute ground for refusal under Art. 7 (1)(b).149

4. A priori examination apart from actual use The assessment of whether or not a mark is devoid of any distinctive character must 63 have regard to all relevant facts and circumstances. It merits particular mention that the criteria for distinctiveness have to be scrutinised in the context of an a priori examination apart from any actual use of the sign for the purposes of Art. 7 (3). This provision would indeed be redundant if a mark fell to be registered in accordance with Art. 7 (1)(b) by reason of its having become distinctive in consequence of the use made of it. Therefore, a finding of distinctive character does not require that consumers have become accustomed to the sign through the use made of it; the crucial question is whether the sign in question is capable of distinguishing, in the eyes of the public to which it is addressed, the products or services referred to from those of a different origin, where the public will be called upon to make its choice in commerce.150

5. Same criteria for all categories of marks The criteria for the assessment of distinctive character are the same for the various 64 categories of marks.151 It has to be borne in mind, stereotypically repeated by the CJ in this context, that in applying those criteria it may become apparent that the relevant public’s perception is not necessarily the same in relation to each of those categories; as a consequence, it may prove more difficult to establish distinctiveness for some categories of marks than for others.152 This turns out to be problematic especially in respect of some types of non-traditional marks, such as three-dimensional signs consisting of the shape and colours of the product itself or laudatory advertising slogans. Indeed, the relevant public’s perception may not necessarily be the same in relation to those marks as it is in relation to a word or figurative mark, as average consumers are typically not in the habit of making assumptions about the origin of products on the basis of their shape or on the basis of promotional formulas.153 Difficulties in establishing the distinctiveness of certain categories of signs do not, however, justify laying down specific criteria supplementing or deviating from the criterion of distinctiveness as such, so that the sign seeking protection must enable the relevant public to distinguish, without any 149 GC Case T-441/05 IVG Immobilien v OHIM [2007] ECR II-01937, mn. 42; GC Case T-88/00 Mag Instrument v OHIM [2002] ECR II-00467, mn. 34, confirmed by CJ Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-09165, mn. 34; likewise Rohnke, MarkenR 2006, pp. 480, 482. 150 CJ Case C-136/02 Mag Instrument v OHIM [2002] ECR II-00467, mn. 50; GC Case T- 87/00 Bank fu¨r Arbeit und Wirtschaft v OHIM [2001] ECR II-01259, mn. 40; somewhat unclear in this regard CJ C398/08 Audi v OHIM [2010] ECR I-00535, mn. 53, 54, where the reasoning of the court insinuates that the registration of the slogan ‘Vorsprung durch Technik’ (Advance through technology) was based on acquired distinctiveness, as it is stated that this promotional formula ‘is a widely known slogan which Audi has been using for years to promote the sale of its motorvehicles’; s. the detailed analysis of this decision Hasseblatt, IPRB 2010, 87 et seq. 151 CJ Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-1725, mn. 38; CJ Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, mn. 36; CJ Case C-398/ 08 Audi v OHIM [2010] ECR I-00535, mn. 37. 152 CJ Case C-64/02 P OHIM v Erpo Mo ¨ belwerk [2004] ECR I-10031, mn. 34; CJ Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, mn. 36; CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 37. 153 CJ Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-1725, mn. 38; CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 37.

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CTMR Art. 7

Community Trade Mark Regulation

possibility of confusion, the products or services covered by the CTM application from others which have another origin.154 65 This starting point seems to be widely, if not unanimously, accepted.155 No less important than this theoretical basis, according to which the same criteria apply to all categories of marks, is the application in practice. Although it is thus a generally accepted view that minimum distinctiveness suffices for all types of marks to overcome the obstacle set out in Art. 7 (1)(b), restrictive tendencies can be observed in recent case law in respect of certain categories of signs. This holds true, in particular, for 3D marks, advertising slogans and other non-traditional marks.156 Court rulings are not always consistent in this respect; many of them exhibit a strict approach, but there have also been more generous decisions.157 There is thus reason to emphasise that, as regards the assessment of the distinctive character of marks, it is inappropriate to apply to any category of signs criteria which are stricter than those applicable to other types of signs.158

6. Overall impression decisive; no linguistic or artistic creativity needed For the assessment of whether a trade mark is capable of having distinctive character, the overall impression the mark produces on the relevant public is decisive. In order to analyse whether a sign possesses distinctiveness, it is necessary to take account of all relevant elements linked to the specific circumstances of this individual case.159 For the assessment of the distinctiveness of a sign, it is worth keeping in mind the public interest which Art. 7 (1)(b) aims to protect, that is, to guarantee the identity of the origin of the designated product or service.160 In light of the minimum degree of distinctiveness, not much is needed to overcome the obstacle under (b). The requirement is simply that the sign for which registration is requested is endowed with a distinctive element that is perceived by the relevant public as an indication of the commercial origin of the goods or services bearing that mark, and not as a reference to their properties.161 In other words, any feature suffices that allows the sign in question to fulfil the source-identifying function of a trade mark. If the products and services bearing the mark are addressed to the general public, it has to be taken into account that the average consumer perceives marks without conducting an analytical examination and without paying particular attention.162 67 A sign’s concrete capability of transmitting information that indicates the origin of products and services can be the result of very different factors. Word signs, for 66

154 CJ C-37/03 P BioID v OHIM [2005] ECR I-07975, mn. 72; CJ Case C-64/02 OHIM v Erpo Mo¨belwerk [2004] ECR I-5173, mn. 34; CJ Joined Cases C-456/01 P and C-457/01 P Henkel KGaA v OHIM [2004] ECR I-05089, mn. 38. 155 S. e. g. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 56 et seq.; v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 5 (b), (c). 156 S. the detailed presentation on the various types of signs below mn. 217–310. 157 S. the overview tables below regarding the various absolute grounds for refusal below, e. g. mn. 98, 99, 235, 236. 158 GC Case T-138/00 Erpo Mo ¨ belwerk v OHIM [2001] ECR II-03739, mn. 32, and CJ Case C-398/ 08 Audi v OHIM [2010] ECR I-00535, mn. 37, both in relation to advertising slogans. 159 S. CJ Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-09165, mn. 48. 160 CJ Case C-304/06 P Eurohypo v OHIM [2008] ECR i-03297, mn. 59. 161 In that direction, CJ Joined Cases C-456/01 P and C-457/01 P Henkel KGaA v OHIM [2004] ECR I05089, mn. 48; CJ Case C-304/06 P Eurohypo v OHIM [2008] ECR i-03297, mn. 66; GC Case T-399/02 Eurocermex SA v OHIM (Shape of a bottle of beer) [2004] ECR II-01391, mn. 17, confirmed by CJ Case C286/04 P Eurocermex SA v OHIM [2005] ECR I-05797; OHIM Dec. of 11.2.1999 – R 125/1998-3 – Transeuropa, mn. 2. 162 CJ Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-09165, mn. 32.

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example, may be found distinctive because of the use of terms that do not have a particular meaning in respect of the specific goods/services, such as Apple®163 for consumer electronics or Opium®164 for perfume, etc. Furthermore, the distinctiveness of a sign may stem from a grammatically incorrect or semantically unusual linking of words and/or syllables, such as safetytech®165 for certain packaging industry facilities. Moreover, an advertising slogan, even if it has a laudatory connotation, may be found distinctive because of its thought-provoking meaning, for instance ‘Think of later earlier!’166 for investment advice and financial services. Finally, an addition of figurative elements that are in themselves distinctive gives the sign as a whole distinctive character. The same may be found as a consequence of an unusual or colourful representation of the sign and so forth. Despite the low degree of distinctiveness required to overcome the obstacle in (b), the 68 rule must be obeyed that the sign in question must contain information that permits the public to identify the goods and services bearing the mark as to their source. Whether this minimum distinctiveness is given depends on the individual circumstances of the sign in question. A pure description of the goods or services for which protection is requested in words, images or three-dimensional forms is by no means sufficient. Only slight modifications of words that are purely descriptive, such as a change in typeface, representation in italics or in a form that can be achieved by way of the simplest means of modern advertising graphics are to no avail. OHIM thus rightly rejected the distinctiveness of the composition of the (descriptive) abbreviation ‘BioID’ and figurative elements, namely the typographical characteristics of that abbreviation, and the two graphic elements consisting of a full stop and the ® symbol.167 The sufficient level of distinctiveness must be scrutinised with regard to the specific 69 sign seeking protection and in relation to the goods/services embraced by the application. As a rule of thumb, however, it can generally be observed that the following modifications of an otherwise non-distinctive element do not by themselves suffice to endow the mark with distinctiveness: – use of standard typefaces, even in the form of different type faces;168 – different stylisation;169 – laudatory expressions;170 – arrangement of word elements in vertical and/or horizontal order; – addition of colours;171 – simple graphic forms/squares (addition of squares, rectangular and the like);172

163

S. e. g. CTM No 009783978 and 002592855. S. e. g. CTM No 008839359. 165 S. e. g. CTM No 000072033. 166 Translation of the advertising slogan in the German language ‘Fru ¨ her an spa¨ter denken!®’, s. CTM No 000267781. 167 CJ Case C-37/03 P BioID AG v OHIM [2005] ECR I-07975, mn. 68–71. 168 OHIM Dec. of 9.1.2014 – R 1475/2013-5 – I’M SMART (decision available only in the Italian language), mn. 10 et seq. with regard to the sign seeking protection ‘i’m SMART’. 169 OHIM Dec. of 9.1.2014 – R 1475/2013-5, ibid. 170 OHIM Dec. of 13.1.2014 – R 1702/2013-2 – SIMPLY EXPRESS (decision available only in the French language), mn. 21 et seq., where the BoA rightly found that expression ‘simply express’ would be perceived as a laudatory statement telling the relevant public that the goods and services are readily available and the like. 171 S. e. g. OHIM Dec. of 1.8.2013 – R 221/2013-1 – IL PROFUMO (decision available only in the Italian language), mn. 12 et seq. 172 S. e. g. CJ Case C-37/03 P BioID v OHIM [2005] ECR I-07975, mn. 68–71. 164

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– simple misspellings or grammatical errors, e. g. ‘maxxi’ instead of ‘maxi’, ‘!magine’ instead of ‘imagine’, ‘profvmo’ instead of ‘profumo’,173 and so forth; – mere combination of descriptive terms.174 70 In this context, however, it has to be stressed that a sign does not have to display imaginativeness, create surprise or make a striking impression in order to possess the minimal level of distinctiveness required under Art. 7 (1)(b).175 Conversely, a lack of distinctive character cannot be assumed simply because the mark for which registration is requested is neither unusual nor striking.176 Registration of a CTM does not require a finding of a specific level of linguistic or artistic creativity.177 Furthermore, whether a sign enjoys copyright protection under national copyright laws has no bearing for the assessment of its distinctive character as a mark.178

7. Compound marks Many marks are composed of various elements, such as combinations of words, numerals, pictorial devices, and the like. For the assessment of the distinctive character of those compound marks, the impression created by the sign as a whole is crucial. Distinctiveness is found if only one of the elements of a composite mark is in itself distinctive. As long as the mark contains a sufficiently distinctive component which already renders the mark distinctive, it does no harm if the other elements are nondistinctive. It is obvious and should be kept in mind that the exclusive rights conferred by the registration of such signs would be limited to the distinctive element. 72 Signs that are composed of elements which are individually devoid of distinctive character may, when these elements are combined, give the mark as a whole distinctive character. The mere fact that each of those elements, analysed separately, lacks distinctive character does not necessarily mean that their combination cannot have such character.179 In general, however, the mere combination of non-distinctive elements does not render such a sign distinctive. Therefore, the combined word mark EUROHYPO, seeking protection for monetary services in class 36, was rightly refused registration, as its components EURO and HYPO are current and usual terms in the financial 71

173 S. e. g. OHIM Dec. of 1.8.2013 – R 221/2013-1 – IL PROFUMO, decision available only in the Italian language, mn. 16, 17, because the consumers are used to such usage of the letter ‘v’ instead of ‘u’, as it is also used in trade marks such as BVLGARI®. 174 CJ Case C-304/06 P Eurohypo v OHIM [2008] ECR I-03297, mn. 68, 69; s. also the rejection of the non-distinctive and descriptive components ‘Map & Guide’, requesting protection for computer software and related services, CJ C-512/06 P PTVPlanung Transport Verkehr v OHIM [2007] ECR I-00148 (summary publication, decision in the German language only – available at http://curia.europa.eu); s. also refusal of the combination of the non-distinctive abbreviation ‘BioID’ with non-distinctive elements, CJ Case C-37/03 P BioID v OHIM [2005] ECR I-07975, mn. 66–75; s. in this regard the POSTKANTOOR formula developed by the CJ, below mn. 72. 175 CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 39, GC Case T-138/00 Erpo Mo ¨ belwerk v OHIM [2001] ECR II-03739, mn. 44, confirmed CJ Case C-64/02 P OHIM v. Erpo Mo¨belwerk [2004] ECR I-10031; GC Case T-136/99 Taurus-Film v OHIM [2001] ECR II-00397; GC Case T- 87/00 Bank fu¨r Arbeit und Wirtschaft v OHIM [2001] ECR II-01259. 176 GC Case T-441/05 IVG Immobilien v OHIM [2007] ECR II-01937, mn. 49; GC Case T- 87/00 Bank fu¨r Arbeit und Wirtschaft v OHIM [2001] ECR II-01259, mn. 39. 177 CJ Case C-329/02 P SAT.1 v OHIM [2004] ECR I-08317, mn. 41. 178 Although this aspect may be taken into account when analysing the distinctiveness of a sign, s. GC Case T-73/06 – Cassegrain v OHIM [2008] ECR II-00228 (summary publication, full text of the decision – which is available in the French language only – under http://curia.europa.eu), mn. 32 in relation to a handbag. 179 CJ Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau(POSTKANTOOR) ECR [2004] I-01619, mn. 99, 100; CJ Case C-265/00 Campina Melkunie [2004] ECR I-1699, mn. 40; CJ Case C-37/03 P BioID v OHIM [2005] ECR I-07975, mn. 29.

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sector, and their mere combination did not add anything unusual or result in a word creation with its own meaning.180 Such a sufficient distinctiveness as a result of the combination of two non-distinctive elements was, for example, found with regard to the word mark EUROPREMIUM.181 In such scenarios, the formula introduced by the CJ in its POSTKANTOOR decision proves to be a useful tool, although originally developed for the absolute bar set out in lit. (c). Under this formula, marks consisting of a word composed of descriptive elements are in themselves descriptive, unless there is a perceptible difference between the word and the mere sum of its parts.182 This rationale may be employed by way of analogy with regard to the obstacle contained in lit. (b).183 Following this rationale of ‘one plus one equals more than two’, a composite mark possesses distinctive character if the combination in itself results in more than the sum of its non-distinctive parts, for example, because of the unusual nature of the combination in relation to the goods or services covered by the CTM application. On a practical note, in such scenarios, it is useful to first analyse the various elements of the marks in question, followed by an evaluation of the overall impression of the compound mark as perceived by the relevant public in respect of the protected goods and services.184

III. Descriptive indications (lit. c) 1. Role and importance of the provision Art. 7 (1)(c) sets an absolute bar for trade marks that consist ‘exclusively of signs or 73 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’. This fairly long list of direct or indirect designations of the goods/services in question, or certain characteristics thereof, is commonly condensed to descriptive indications. Art. 7 (1)(c) prevents such descriptive designations from being monopolised through registration as trade marks by a single proprietor to the detriment of (all) other economic operators.

180 CJ Case C-304/06 P Eurohypo v OHIM [2008] ECR I-03297, mn. 68, 69; s. also the rejection of the non-distinctive and descriptive component ‘Map & Guide’, requesting protection for computer software and related services, CJ Case C-512/06 P PTVPlanung Transport Verkehr v OHIM [2007] ECR I-00148 (summary publication, decision in the German language only – available at http://curia.europa.eu; s. also refusal of the combination of a non-distinctive abbreviation ‘BioID’ with non-distinctive elements, CJ Case C-37/03 P BioID v OHIM [2005] ECR I-07975, mn. 66–75. 181 In relation to goods and services of classes 16, 20, 35 and 39, GC Case T-334/03 Deutsche Post EURO EXPRESS v OHIM(EUROPREMIUM) [2005] ECR II-00065, scrutinised under Art. 7 (1)(c), mn. 34 et seq. 182 The word mark POSTKANTOOR was composed of the descriptive terms POST and KANTOOR (the Dutch word for ‘office’), the combination of which was rightly seen as descriptive for services such as direct-mail campaigns or the issuance of postage stamps, despite the attempt by the applicant to restrict the goods and services by the disclaimer ‘provided that they are not connected with a post office’; CJ Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau(POSTKANTOOR) [2004] ECR I01619, mn. 99, 100; s. also the refusal of the word mark BIOMILD by the decision of the same day, CJ Case C-265/00 Campina Melkunie [2004] ECR I-01699. 183 Likewise v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 5 (e). 184 CJ Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-09165, mn. 31; CJ Case 173/04 P Deutsche SiSi Werke v OHIM [2006] ECR I-00551, mn. 30, 32 (referring to the ‘wider sectors’ that have to be taken into consideration); s. the detailed remarks on shape and 3D marks below, mn. 107–136 and mn. 264 et seq.

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The provision thus pursues the important goal in the public interest, which requires that such signs and indications may be freely used by all.185 74 As is made clear by the words ‘or other characteristics of the goods or services’, the list contained in (c) is not exhaustive. A sign seeking protection must thus be refused as descriptive if it has a meaning in relation to any characteristic which is immediately perceived by the target public as providing information in relation to the goods/services applied for.186 Furthermore, the word ‘exclusively’ is not to be construed literally; rather, the meaning has been eroded by OHIM and the courts to a certain extent. It suffices for the obstacle laid down in Art. 7 (1)(c) to apply to a sign that there is a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of the characteristics of the goods and services.187 75 The grounds for refusal contained in lit. (c) are subject to a stringent and full examination in order to prevent trade marks from being improperly registered.188 This holds true also in light of the provision of Art. 12 (b), under which the proprietor of a CTM is not entitled to prohibit third parties’ use of descriptive indications. The limitations of the effects of CTMs laid down in Art. 12 do not allow, as it is occasionally suggested, a liberal registration policy, as the risk that undertakings might appropriate certain signs which ought to remain available would be ‘neutralised’ by Art. 12 (b), which in turn would necessitate only a ‘minimal review’.189 Such a liberal registration practice is to be rejected outright, as explained in detail above.190 As rightly emphasised by the CJ, the limitations laid down in Art. 12 do not run counter to the objectives of Art. 7 (1), nor do they have a decisive bearing on the interpretation of that provision.191 76 The absolute grounds for refusal contained in (b) can be overcome by acquired distinctiveness as a consequence of intensive and long-standing use of the sign in question for the respective goods or services under Art. 7 (3).192

2. Reference to specific goods/services and relevant public’s perception 77

For the obstacles under lit. (c) it is indispensable to refer to the specific goods and services embraced by the application; without such reference to the concrete goods and services, the assessment of the descriptiveness of the sign for which protection is sought would be inconceivable. The provision makes even explicit mention of ‘the goods’ and ‘the service’, which leaves no doubt that the descriptiveness must be determined in concreto. 185 Instead of many, CJ Case C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, mn. 20; GC Case T334/03 DEUTSCHE POST EUROEXPRESS v OHIM (Europremium) [2005] ECR II-0005, mn. 23; GC Case T-106/00 Streamserve v OHIM (Streamserve) [2002] ECR II-00723, mn. 36. 186 Likewise, OHIM Guidelines for Examination, part B, section 4 absolute grounds for refusal, p. 36, mn. 2.3.1.1. 187 GC Case T-19/04 Metso Paper Automation v OHIM (Paperlab) [2005] ECR II-02383, mn. 25; GC Case T-311/02 Lissotschenko and Hentze v OHIM (LIMO) [2004] ECR II-02957, mn. 30. 188 CJ Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-03793, mn. 59; CJ Case C363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau (POSTKANTOOR) ECR [2004] I-01619, mn. 123; CJ Case C-265/09 P OHIM v Borco-Marken-Import Matthiesen [2010] ECR I-08265, mn. 45. 189 S. the Commission’s line of arguments put forward in the Libertel-case, as summarised in CJ Case C104/01, ibid, mn. 58; s. also CJ Case C-64/02 P OHIM v Expo Mo¨belwerk GmbH (Das Prinzip der Bequemlichkeit) [2004] ECR I-1003, mn. 45, where the applicant argued that at least ‘in cases of doubt’ trade mark protection should be granted, which was rightly rejected by the court; obviously leaning in that direction, Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 183–191. 190 S. above mn. 34–36. 191 S. CJ Case C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, mn. 28. 192 S. detailed presentation on acquired distinctiveness below mn. 313–335.

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Furthermore, the descriptive character of the sign in question must be assessed by 78 reference to the perception of the relevant public. If the products are addressed also to end-consumers, the relevant public would be the average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect.193 If the sign in question contains, for example, words in the English language, the decisive view would then be that of average English-speaking consumers.194

3. Direct and specific association between CTM and goods/services The objective pursued by the obstacle contained in lit. (c) is that no exclusive rights 79 should exist for purely descriptive terms which other traders might wish to use as well. It is, however, not necessary to demonstrate that the signs and indications making up the mark are actually in use at the time of the application.195 Neither is it necessary to show that there is a real, current or serious need to keep a sign free. The notion of the so-called ‘Freihaltebedu¨rfnis’ (‘need to keep free’), formerly applied under German case law, has thus no bearing in European trade mark law.196 As a consequence, the number of competitors that could be affected by trade mark protection granted for a particular sign is irrelevant. For the purposes of Art. 7 (1)(c) it suffices to consider, on the basis of a given meaning of the sign in question, whether from the point of view of the intended public there is a sufficiently direct and specific association between the sign and the categories of goods and services denoted in the application.197 It follows that if a sign is descriptive in its ordinary and plain meaning, the obstacle under (c) cannot be overcome by demonstrating that the applicant is the only one who actually uses that mark; this applies particularly to marks composed of words.198

4. General aspects for assessment of descriptiveness When assessing the distinctive character of a sign, one should bear in mind that the 80 underlying goal pursued by the obstacle contained in lit. (c) is twofold. As mentioned above, it serves the aim to keep the signs and indications referred to in lit. (c) freely available for general use. At the same time, however, the designations referenced in Art. 7 (1)(c) are signs regarded as being incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, and thus enabling the consumer who acquired the product or service to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition.199 As it is rightly stated in the OHIM Examination 193

S. above the detailed remarks on the target public, mn. 23–26. GC Case T-173/03 Anne Geddes v OHIM (NURSERYROOM)[2004] ECR II-04165, mn. 18; GC Case T-136/07 Colgate/Palmolive v OHIM (VISIBLE WHITE) [2008] ECR II-00304 (summary publication, full text available at http://curia.europa.eu), mn. 36. 195 CJ Case C-363/99 Koninklijke KPN Nederland v Benelux Merkenbureau (POSTKANTOOR) [2004] ECR I-01619, mn. 97; GC Case T-226/07 Prana House v OHIM (PRANAHOUSE) [2008] ECR II-00184, mn. 36. 196 CJ Case C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, mn. 16, where the Landgericht Mu¨nchen described the ‘Freihaltebedu¨rfnis’, which was rejected by the CJ, mn. 35; now established case law, s. e. g. GC Case T-358/00 DaimerChrysler v OHIM (TRUCKCARD) [2002] ECR II-01993, mn. 28; as to geographical indications, where the current or future association of a particular geographical name with certain goods/services s. below mn. 90 and 91. 197 GC Case T-358/00 DaimerChrysler v OHIM (TRUCKCARD) [2002] ECR II-01993, mn. 29. 198 OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 36, mn. 2.3.1.1. 199 GC Case T-136/07 Colgate/Palmolive v OHIM (VISIBLE WHITE) [2008] ECR II-00304 (summary publication, full text available at http://curia.europa.eu), mn. 31; GC Case T-219/00 Ellos v OHIM (ELLOS) [2002] ECR II-00753, mn. 28. 194

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Guidelines, if a mark is descriptive, it is also non-distinctive.200 There is thus considerable overlap between the obstacles contained in lit. (b) and (c). The latter aspect, namely the inherent lack of descriptive indications to function as a source indicator, is, however, of no relevance for the assessment under lit. (c). For a sign to fall within the scope of lit. (c), only its (potential) descriptiveness is decisive. 81 A sign must be barred from registration because of its descriptiveness if it is perceived by the target public as an indication to designate, either directly or by reference to one of their essential characteristics, the goods or services covered by the application.201 The link between the sign in question and the goods and services must be sufficiently direct and concrete to enable the relevant public to immediately perceive it, without further thought or reflection, as conveying information about the goods and services in question or one of their characteristics.202 Where a term has multiple meanings, the sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned; this holds true particularly for word signs.203 82 In contrast, signs that are only suggestive or allusive in respect of certain characteristics of the goods/services, Art. 7 (1)(c) does not apply. Typically, these signs are not entirely clear and unambiguous, but rather vague, and are thus also referred to as vague or ambiguous signs.204 The Office initially appeared to lean towards a more liberal application practice, which did not necessarily bring about adverse consequences. Quite a few of such signs were registered because of such vagueness.205 This liberal approach has yielded to a tendency to rule more restrictively.206 83 Applicants intending to register suggestive marks should equip the sign at least with a certain degree of vagueness or ambiguity, an element of surprise or a striking or unusual aspect to ensure that the mark is not caught by the obstacle under lit. (c). Although such a display of imaginativeness and the like is by no means required, it certainly helps to overcome the obstacles set up under lit. (b) and (c).207

5. Characteristics listed in lit. (c) 84

The non-exhaustive list contained in lit. (c) refers to the goods and services themselves as well as their characteristics and properties. Signs that are descriptive are also non-distinctive, so that many of the marks that are barred from registration fall within the scope of both lit. (b) and lit. (c). To avoid repetition, reference is therefore 200 OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 36, mn. 2.3.1.1; Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenrecht, Art. 7, mn. 192. 201 CJ Case C-383/99 P Procter & Gamble v OHIM [2001] ECR I-06251, mn. 39. 202 GC Case T-334/03 Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM) [2005] ECR II00065, mn. 25; GC Case T-173/03 Anne Geddes v OHIM (NURSERYROOM)[2004] ECR II-04165, mn. 20; GC Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-02383, mn. 25; GC Case T-323/05 The Coffee Store v OHIM (THE COFFEE STORE) [2008] ECR II-00129, mn. 31. 203 CJ Case C-191/01 P OHIM v Wrigley [2003] ECR I-12447, mn. 32; GC Case T-136/07 Colgate/ Palmolive v OHIM (VISIBLE WHITE) [2008] ECR II-00304 (summary publication, full text available at http://curia.europa.eu), mn. 34. 204 OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 36, mn. 2.3.1.1, also referred to as ‘indirect references to the goods/services’. 205 E. g. OHIM Dec. of 27.7.1999 – R 129/1999-3 – BASIC; OHIM Dec. of 30.06.1999 – R 185/1998-3 – alltravel; OHIM Dec. of 22.9.1998 – R 36/1998-2 – Oilgear. 206 GC Joined Cases T-367/02 to T-369/02 Wieland-Werke v OHIM [2005] ECR II-00047, mn. 35 et seq.; GC Case T-387/03 – Proteome v OHIM [2005] ECR II-00191, mn. 25 et seq.; CJ Case T-173/03 Geddes v OHIM (NURSERYROOM) [2004] ECR II-04165, mn. 21–23; GC Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-02383, mn. 25 et seq. 207 As regards distinctiveness, no linguistic or artistic creativity is needed, s. above mn. 66–70.

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made to the more detailed analysis under lit. (b).208 Furthermore, reference is made to the chart below that lists marks that were found not to be descriptive and signs that were caught under lit. (c).209 The descriptive nature of the sign in question may relate to any of the characteristics 85 mentioned in Art. 7 (1)(c), be it in relation to the goods and services themselves,210 a reference to the quality of the goods,211 or as a designation of the intended purpose.212 By way of example, the word TRUCKCARD was refused in relation to goods/services in classes 9, 36–39 and 42, because, taken as a whole, it was regarded as being capable of designating both the kind and the quality of the goods/services,213 the sign VISIBLE WHITE was refused because at least one of its possible meanings designated the goods concerned (toothpaste and mouthwash, class 3)214 and the term NURSERYROOM was found to be descriptive of goods such as ‘books, stationary cards’ in class 16, ‘plates and cups’ (class 21), etc., because it did not create an impression sufficiently far removed from the meaning produced by the mere juxtaposition of the words ‘nursery’ and ‘room’.215 The latter decision, in particular, illustrates the at times overly restrictive registration practice by the Office and the courts.

6. Special case: geographical names Of the various characteristics explicitly mentioned in lit. (c), the indication of 86 geographical origin occupies a special position. As stressed by the CJ, it is in the public interest that indications which may serve to designate the geographical origin 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 taste by associating the goods with the place that may give rise to a favourable response.216 Unlike in the cases of special protection provided for designations of origin and geographical indications under Art. 7 (1)(j) and (k), under lit. (c) the test is – as with all other descriptive terms – whether the geographic term describes objective characteristics of the goods and services in question. In respect of such general – i. e. not specially protected designations of origin, etc. – 87 geographic indications it is crucial to precisely ascertain in a normative way how the geographical term is understood by the relevant public. If the term is simply perceived as a fanciful or mere suggestive term, such usage in a sign is not to be barred under lit. (c). For instance, the fruit juice bearing the trade mark Capri-Sun®,217 the ice cream marketed under the brand Capri® or likewise the Ford Capri®, will not be associated by the public with the small island Capri. Similarly, the use of famous city names for goods 208

S. above mn. 39–72. S. below mn. 98, 99. 210 GC Case T-230/05 Golf USA v OHIM (Golf USA) [2007] ECR II-00023 (summary publication, full text available at http://curia.europa.eu), mn. 36, where the court rightly found that there was a direct link between the component ‘golf’ of the mark applied for and the goods ‘golf equipment in class 28) from the point of view of the consumers of those goods and services, namely golf players. 211 S. e. g. GC Case T-16/02 Audi v OHIM (TDI I) [2013] ECR II-05167, mn. 34. 212 E. g. GC Case T-163/98 – Procter & Gamble v OHIM (Baby Dry) [1999] ECR II-02383, mn. 23; GC Case T-19/04 Metso Paper Automation (Paperlab) [2005] ECR II-02383, mn. 31 regarding the intended use. 213 GC Case T-358/00 DaimerChrysler v OHIM (TRUCKCARD) [2002] ECR II-01993, mn. 33 et seq. 214 GC Case T-136/07 Colgate/Palmolive v OHIM (VISIBLE WHITE) [2008] ECR II-00304 (summary publication, full text available at http://curia.europa.eu), mn. 34 et seq. 215 CJ Case T-173/03 Geddes v OHIM (Nurseryroom) [2004] ECR II-04165, mn. 21, 22. 216 CJ Case C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, mn. 26, 27. 217 CTM 000138271 Capri-Sun (protected for goods in class 32). 209

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CTMR Art. 7

Community Trade Mark Regulation

and services unrelated to the fame of the respective city – such as ‘Hollywood’ for chewing-gum or ‘Port Louis’ for textiles – does not fall within the scope of lit. (c).218 88 Conversely, where the geographical term is perceived as having informational value about the place of origin or production, it has to be determined whether the mark applied for ‘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’.219 In the latter case, regard must be had to the degree of familiarity amongst the relevant public with that name, with the characteristics of the place designated by the name and with the goods or services concerned.220 In principle, Art. 7 (1)(c) does not preclude registration of geographical names which are unknown to the relevant public or of names in respect of which, because of the type of place they designate (for example, a mountain or lake), the target public is unlikely to believe that the goods/services concerned have their origin there.221 89 The perception of the public, following these principles developed by the CJ, largely depends on the goods and services in relation to which the geographical term is used. For example, the city of ‘Milano’ is well known for its fashion industry, so the use of the geographical term Milano would have to be refused for goods in class 25.222 As regards services, the understanding of geographical terms by the relevant public will vary depending on the industry sector; by way of example, Frankfurt and London are known for financial services, Zurich for insurance, Islas Canarias for touristic services, and so forth; thus, for those services the use of geographical terms has to be refused.223 It has to be borne in mind for the analysis that also those geographical terms are barred from registration under lit. (c) regarding which it is reasonable to assume that they will be associated with the goods/services in question in the future. For such a reasonable assumption of a future association, there must be objective indicia or clear pointers in that direction. For example, as regards the mark Alaska® to be used for mineral waters and other goods in class 32, the mere fact that Alaska is certainly a region that has an abundance of natural waters is in itself not enough to reasonably assume that the designation ‘Alaska’ will be associated with the marketing of spring waters and the like in the European Union.224 For the connection to be made between the name of the place and the goods/services in question, however, it is not necessary that the target public knows whether the name actually designates the true geographical origin of the goods; it suffices that the sign is perceived as an indication of the geographical origin of the goods/ services, as opposed to a fanciful or merely suggestive term.225 It thus has to be assessed in the individual case whether the geographic term in question is understood by the relevant public to refer to the place of (actual or future) production or the place where certain services are already or can be reasonably expected to be rendered in the future.226 218 GC Case T-230/06 REWE Zentral v OHIM (Port Louis) [2008] ECR II-00256 (summary publication, full text available at http://curia.oami.eu), mn. 40–44 in respect of the designation ‘Port Louis’ seeking protection for textiles, etc.); OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 45, mn. 2.3.2.6. 219 CJ Case C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, mn. 31 (emphasis added). 220 CJ Case C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, mn. 32. 221 CJ Case C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, mn. 33, 37. 222 OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 45, mn. 2.3.2.6. 223 Examples taken from OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 45, mn. 2.3.2.6. 224 GC Case T-226/08 Mineralbrunnen Rho ¨ n Sprudel v OHIM (Alaska) [2009] ECR II-00112 (summary publication, full text available at http://curia.oami.eu), mn. 30 et seq. 225 GC Case T-295/01 Nordmilch v OHIM (Oldenburger) [2003] ECR II-04365, mn. 43. 226 OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 45, mn. 2.3.2.6.

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Art. 7 CTMR

Absolute grounds for refusal

Examples of marks that contain geographic terms and were not barred under Art. 7 90 (1)(c) are shown below: Type

Nice Classes

Mark

Case Number/CTM

Authority

Word

18, 24, 25

Port Louis

T-230/06

GC

Word

32

Alaska

T-226/08

GC

Word

3, 25, 35

New Yorker

004807897

OHIM (Examiner)

Word

32

Capri-Sun

000138271

OHIM (Examiner)

Figurative

29, 30

French Fries

002042133

OHIM (Examiner)

Conversely, a few signs that were barred under lit. (c) are depicted below: Type

Nice Classes

Mark

Case Number/CTM

Authority

Word

29, 30, 32

Oldenburger

T-295/01

GC

Word

25, 28, 35

Golf USA

T-230/05

GC

Word

16, 20, 35, 39

Europremium

T-334/03

GC

Word

multiple classes

Germany 2006

R 1457/2005-1

OHIM (BoA)

91

7. One-word marks, combinations of words, neologisms The assessment of one-word marks does not present any specific challenges. Such signs 92 have to be refused as descriptive if they are immediately perceived by the relevant public as providing information relating to the goods/services themselves or concerning their characteristics. For example, the signs PRIMA and LITE were found to be descriptive, as they designate desirable features of the goods/services concerned.227 Laudatory statements may, however, be registrable if they convey only a vague positive connotation. For example, the word mark BRAVO was accepted as it remained unclear who would say ‘bravo’ to whom and what is being praised,228 although this remains arguable. In light of the more restrictive practice in recent years, nowadays the mark BRAVO might well have been refused because of both descriptiveness and lack of distinctive character. Many signs are composed of several words, most of the time by mere juxtaposition of 93 two words. For the assessment of the descriptiveness of such word combinations, the impression created by the sign as a whole is decisive. For such signs to be regarded as descriptive within the meaning of lit. (c), it is not sufficient that each of the word elements may be found to be descriptive; the word combination itself must be found to be so. In these scenarios, the POSTKANTOOR formula provides some guidance. Under this formula, signs consisting of descriptive elements are as a whole descriptive, unless there is a perceptible difference between the word and the mere sum of its parts.229 227 OHIM Dec. of 22.3.2000 – R 83/1999-2 – PRIMA, mn. 11; GC Case T-79/00 REWE-Zentral v OHIM(LITE) [2002] ECR II-00705, mn. 35. 228 CJ Case C-517/99 Merz & Krell (BRAVO) [2001] ECR I- 06959, mn. 17 et seq., although in relation to lit. (d). 229 The word mark POSTKANTOOR was composed of the descriptive terms POST and KANTOOR (the Dutch word for ‘office’), the combination of which was rightly seen as descriptive for services such as direct-mail campaigns or the issuance of postage stamps, despite the attempt by the applicant to restrict the goods and services by the disclaimer ‘provided that they are not connected with a post office’; CJ Case

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CTMR Art. 7

Community Trade Mark Regulation

Following this formula of ‘one plus one equals more than two’, a composite word mark is not descriptive if it creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts.230 In light of this, the combined word mark EUROHYPO, requesting protection for monetary services in class 36, was rightly refused registration, as the mere combination of its descriptive components EURO and HYPO did not add anything unusual or result in a word creation with its own meaning.231 At times it seems to be difficult to draw the fine line, as the word mark EUROPREMIUM – despite its laudatory connotation – was found to be sufficiently distinctive and not descriptive.232 94 Precisely the same rationale applies to neologisms, i. e. word signs that are composed of syllables and/or words in order to create an unusual structure. Such ‘lexical inventions’ are often used for the composition of suggestive marks. It does not suffice that each of the components of such neologisms is descriptive for the obstacle under (c) to apply; the word itself must be found to be descriptive. Such word creations do not fall within the scope of (c), similar to the POSTKANTOOR approach, if the combination of the descriptive elements gives the mark its own – non-descriptive – meaning.233

8. Misspellings, omissions and sound-alikes Deliberate misspellings and omissions of letters do not necessarily deprive a sign of its descriptive character. In modern language – both spoken and written – such ‘modifications’ are common and do not render a sign distinctive and non-descriptive. Despite the misspelling, for example, the signs Xtra and Xpert were refused because of their descriptiveness.234 96 The same holds true for word creations that are also referred to as sound-alikes. An example of such a sign is BioGeneriX, which was refused registration in respect of biotechnologically produced pharmaceutical products (class 5) and services related to such biotechnologically manufactured goods in classes 35, 40 and 42.235 The components of the mark Bio and GeneriX are clearly descriptive in relation to the goods/ services covered by the application. Furthermore, the term ‘bio generics’ is a descriptive indication commonly used in the pharmaceutical sector.236 The replacement of the consonants ‘cs’ by the letter ‘X’ at the end of the sign was to no avail; the court rightly held that the mark was phonetically identical to the descriptive term.237 97 Likewise, replacements of letters by symbols, such as ‘@’ instead of ‘a’, ‘!’ instead of ‘i’ or ‘E’ instead of the letter ‘e’, do not by themselves change the descriptive character, if any, of a sign, as the consumers will understand the meaning of the word without any further 95

C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau (POSTKANTOOR) [2004] ECR I01619, mn. 99, 100; s. also the refusal of the word mark BIOMILD by the decision of the same day, CJ Case C-265/00 Campina Melkunie [2004] ECR I-01699. 230 CJ Case C-363/99 Koninklijke KPN Nederland v Benelux Merkenbureau (POSTKANTOOR) [2004] ECR I-01619, mn. 99, 100; see in relation to neologism, GC Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-02383, mn. 27. 231 CJ Case C-304/06 P EUROHYPO v OHIM [2008] ECR I-03297, mn. 68, 69. 232 In relation to goods and services in classes 16, 20, 35 and 39, GC Case T-334/03 Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM) [2005] ECR II-00065, mn. 34 et seq. 233 S. e. g. GC Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-02383, mn. 27, denying protection. 234 OHIM Dec. of 27.5.1998 – R 20/1997-1 – Xtra, mn. 16; OHIM Dec. of 27.7.1999 – R 230/1998-3 – Xpert, mn. 17. 235 GC Case T-47/07 ratiopharm v OHIM (BioGeneriX) [2008] ECR II-00179, mn. 16 et seq. 236 GC Case T-47/07 ratiopharm v OHIM (BioGeneriX) [2008] ECR II-00179, mn. 22–24. 237 GC Case T-47/07 ratiopharm v OHIM (BioGeneriX) [2008] ECR II-00179, mn. 31.

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Art. 7 CTMR

Absolute grounds for refusal

reflection. Such modifications of an otherwise descriptive term are helpful only if they render the sign as a whole distinctive, which can be assumed when they are arbitrary, surprising, striking or even change the meaning of the word element or require some mental effort from the consumer in order to grasp the meaning of the respective term.238 CTMs accepted as being distinctive and non-descriptive: 98 Type

Nice Classes

Mark

Case Number

Authority

Position mark

25

Red sole of a shoe

R 2272/10-2

OHIM (BoA)

Slogan

9, 12, 14, 16, 18, 25, 28, 35–43 and 45

Vorsprung durch Technik (Advance through Technology)

C-398/08 P

CJ

Word

32

ALASKA

T-226/08

GC

Word/figurative

32

ALASKA pictured with polar bear

T-225/08

GC

Figurative

Multiple classes

MADRIDEXPORTA

T-180/07

GC

Word

18, 24, 25

PORT LOUIS

T-230/06

GC

Letter/figurative

35, 36, 37, 39, 42, 43

Letter I

T-441/05

GC

Word

16, 20, 32, 39

Europremium

T-334/03

GC

Slogan

35

‘Mehr fu¨r Ihr Geld’ (More for your Money)

T-281/02

GC

Word

Multiple classes

SAT.2

C-329/02 P

CJ

Figurative

24

Selvedge

R 174/2002-2

OHIM (BoA)

Word

39

Multibox

R 205/2002-3

OHIM (BoA)

Position mark

8

Red Point

R 983/2001-3

OHIM (BoA)

Word

3

COLLECTION

R 708/2001-3

OHIM (BoA)

Word

35

Data Intelligence Group

R 173/2001-4

OHIM (BoA)

Word

36

EASYBANK

T-87/00

GC

Position mark

25

Stripes on a shoe

R 938/2000-1

OHIM (BoA)

Word

2

MULTIMIX

R 367/2000-1

OHIM (BoA)

Word

14, 16, 18, 21, 25, 38, 41

SEM

R 312/2000-3

OHIM (BoA)

Word

3

ESSENTIALS

R 202/2000-3

OHIM (BoA)

Figurative

36, 39

Triangles

R 37/1999-3

OHIM (BoA)

Word

6, 16

Cine Comedy

T-136/99

GC

Word

6, 16

Cine Action

T-135/99

GC

238

OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 42, mn. 2.3.2.3.

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CTMR Art. 7

99

Community Trade Mark Regulation

Type

Nice Classes

Mark

Case Number

Authority

Word

12, 36, 37, 39, 41, 42

SMART

R 618/1999-2

OHIM (BoA)

Word

35, 37, 39

Inhouse-Outsourcing

R 57/1999-3

OHIM (BoA)

Sound

9, 38, 41, 42

‘Roar of a lion’

R 781/1999-4

OHIM (BoA)

Word

36

CareService

R 388/1999-3

OHIM (BoA)

Word

16, 39, 42

Megatours

R 295/1999-3

OHIM (BoA)

Word

42

ProBank

R 248/1999-2

OHIM (BoA)

3D

29, 30, 32

Granini-Bottle

R 139/1999-1

OHIM (BoA)

Word

11

BASIC

R 129/1999-3

OHIM (BoA)

Word

1, 9, 11

Enviro-Chem

R 87/1998-1

OHIM (BoA)

Word

9, 16

Portfolio

R 71/1998-3

OHIM (BoA)

Figurative

7, 12

Oilgear

R 36/1998-2

OHIM (BoA)

Slogan

3, 42

Beauty isn’t about looking young but looking good

R 73/1998-2

OHIM (BoA)

Word

38, 42

Alltravel

R 185/1998-3

OHIM (BoA)

Word

12

Hyperlite

R 163/1999-3

OHIM (BoA)

Slogan

36

Fru¨her an spa¨ter denken! (Think of later earlier!)

R 153/1998-2

OHIM (BoA)

Word

3

Kali

R 147/1998-2

OHIM (BoA)

Word

16, 35, 39, 41, 42

TRANSEUROPA

R 125/1998-3

OHIM (BoA)

Word

20, 37

Leicht

R 120/1998-1

OHIM (BoA)

Word

7,8

Safetytech

R 119/1998-3

OHIM (BoA)

Signs refused either as non-distinctive and/or descriptive: Type

Nice Classes

Mark

Case Number

Authority

Word

10

RESTORE

C-21/12 P

CJ

Word

39

NORWEGIAN BREAKAWAY

T-514/12

GC

Word

10

MEDIGYM

T-33/12

GC

Word

28, 41

SLIM BELLY

T-61/12

GC

Word

7, 12, 39

NEO

T-236/12

GC

Word

9, 41, 42

Workflow Pilot

T-475/12

GC

Word

41

VELORES DE FUTURO

T-428/12

GC

Multiple classes

medi

T-470/12

GC

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Art. 7 CTMR

Absolute grounds for refusal Type

Nice Classes

Mark

Case Number

Authority

Word

35, 39, 43

fluege.de

T-244/12

GC

Word

39

NORWEGIAN GETAWAY

T-513/12

GC

Word

3, 5, 44

BIODERMA

T-427/11

GC

Word

12

PURE POWER

T-248/11

GC

Word

9, 11

PREMIUM L; PREMIUM XL

Joined Cases T-582/11 and T-583/11

GC

3D

30

Gold Bunny

C-98/11 P

CJ

Colour

39

Combination of grey and red

C-45/11 P

CJ

Figurative

Multiple Classes

BEST BUY

C-92/10 P

CJ

Word

9, 28

MEMORY

C-269/10 P

CJ

Word

32, 33, 42

CANNABIS

C-5/10 P

CJ

Word

33

TXAKOLI

T-341/09

GC

Slogan

16, 35

Better homes and gardens

T-524/09

GC

Slogan

9

Wir machen das Besondere einfach

T-523/09 (confirmed by: C-311/11 P)

GC

Word

45

Patentconsult

C-80/09 P

CJ

3D

28

LEGO-Brick

C-48/09 P

CJ

Slogan

16, 35

Insulate for life

T-157/08

GC

Word

9, 16, 35, 41, 42

MANPOWER

C-553/08 P

CJ

Word

9, 16, 35

PRANAHAUS

C-494/08 P

CJ

Word

3

Color Edition

C-404/08 P

CJ

Word

36, 41, 44

Deutsche BKK

T-289/08

GC

Figurative

18, 25, 31

Silhouette of a dog and a horse

T-385/08

GC

Word

11, 30

Golden Toast

T-163/08

GC

3D

5, 29, 30

Shape of a chocolate bar

T-28/08

GC

Slogan

16, 18, 25

BUILT TO RESIST

T-80/07

GC

3D

29, 30, 43

Shape of an arrangement of sausages

T-449/07

GC

Word

11

HONEYCOMB

T-256/06

GC

Figurative

3

Representation of a red and white rectangular tablet with an oval blue centre

C-144/06 P

CJ

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CTMR Art. 7

Community Trade Mark Regulation

Type

Nice Classes

Mark

Case Number

Authority

3D

29, 30, 32

Shape of a plastic bottle

C-238/06 P

CJ

Word

9, 16, 35, 36, 38, 42

suchen.de

T-117/06

GC

Slogan

32, 33

Vom Ursprung her vollkommen

T-28/06

GC

Word

9, 41, 42

map&guide

C-512/06 P

CJ

Word

36

Eurohypo

C-304/06 P

CJ

Figurative

30

Shape of a sweet wrappers

C-25/05 P

CJ

Figurative

33

Device of a pentagon

T-304/05

GC

Word

21

TWIST&POUR

T-190/05

GC

3D

3

Square white tablets with coloured floral design

Joined cases T-241/05, T262/05 to T264/05, T-346/ 05, T-347/05, T-29/06 to T31/06

GC

3D

18, 29, 30

Shape of a sausage

T-15/05

GC

3D

16, 25, 32, 42

Shape of a long-neck bottle in the neck of which a slice of lemon has been plugged

C-286/04 P

CJ

3D

34

Shape of a lighter

T-262/04

GC

Word

9, 38, 42

Bio ID

C-37/03 P

CJ

Word

9, 16, 41, 42

WEISSE SEITEN

T-322/03

GC

Word/Slogan

36

Live richly

T-320/03

GC

Word

9, 16, 42

DigiFilm and DigiFilmMaker

Joined Cases T-178/03 and T-341/03

GC

Word

9, 16, 42

Bioknowledge

T-387/03

GC

Word

16, 18, 21, 25, 28

Nurseryroom

T-173/03

GC

Word

3, 5, 30

Doublemint

C-191/01

CJ

Slogan

18, 25, 30

Das Beste geben (Doing your best)

R 232/2001-3

OHIM (BoA)

Word

29, 30, 32

OLDENBURGER

T-295/01

GC

Word

16, 35, 36, 38, 42

TOTAL RISK PROFILING

R 256/2000-1

OHIM (BoA)

Word

36

Companyline

C-104/00

CJ

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Art. 7 CTMR

Absolute grounds for refusal Type

Nice Classes

Mark

Case Number

Authority

Colour

7

Combination of colours orange and grey

R 477/2000-1

OHIM (BoA)

3D

21

Shape of a toothbrush

R 406/2000-3

OHIM (BoA)

3D

30

Schogetten-Stu¨ck (piece of chocolate)

R 203/2000-3

OHIM (BoA)

Word

36

TravelCare

R 24/1999-3

OHIM (BoA)

Olfactory

4

Scent of strawberries

R 711/1999-3

OHIM (BoA)

Word

11

¨ MPFER COMBI-DA

R 54/1999-3

OHIM (BoA)

Word

9, 16, 42

clinicware

R 87/1999-3

OHIM (BoA)

3D

30

crisps in the shape of a wafer

R 565/1999-1

OHIM (BoA)

Word

12

EASY ENTRY

R 631/1999-2

OHIM (BoA)

Numeral

12, 28, 32

7

R 63/1999-3

OHIM (BoA)

Word

inter alia: class 22

Easy Cover

R 120/1999-3

OHIM (BoA)

Word

1, 9

Toxalert

R 172/1998-3

OHIM (BoA)

Word

3

Natural Beauty

R 40/1998-3

OHIM (BoA)

IV. Customary indications (lit. d) Under Art. 7 (1)(d), trade marks are barred from registration which ‘consist 100 exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade’. Signs or indications that have become customary as generic terms to designate certain goods and services may not be registered because they lack the capacity to fulfil the essential function of a trade mark.239 Equally importantly, this absolute ground for refusal safeguards that such generic terms remain freely available in the public domain, which is also of general interest.240 Generic signs and indications may be – and often are – descriptive as they typically 101 designate characteristics of the goods and services concerned. There is thus a clear overlap between the grounds for refusal laid down in lit. (c) and those laid down in lit. (d). Marks to which the latter obstacle applies are, however, excluded from registration not because of their descriptiveness, but on the basis of current usage in trade sectors covering trade in the goods or services in question.241 A good example for such a sign

239

CJ Case C-517/99 Merz & Krell GmbH & Co. [2001] ECR I-06959, mn. 37. A separate and self-contained component of the public interest as the underlying rational for the obstacle contained in lit. (d); likewise v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 7 (a). 241 CJ Case C-517/99 Merz & Krell GmbH & Co. [2001] ECR I-06959, mn. 35; GC Case T-322/03 Telefon & Buchverlagsgesellschaft v OHIM (WEISSE SEITEN) [2006] ECR II-00835, mn. 51. 240

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CTMR Art. 7

102

103

104

105

Community Trade Mark Regulation

that initially had no apparent meaning is the designation Bateaux Mouches, which over the years developed into the generic term for a certain type of tourist boats in France.242 Signs and indications that were registered despite their generic character have to be invalidated under Art. 52 (1)(a) in conjunction with Art. 7 (1)(d), unless they have acquired distinctiveness in the meantime as a consequence of their use by the proprietor. On the other hand, signs that were not descriptive and/or customary at the time of their registration may, due to the inactivity of the trade mark owner, develop into generic terms over time. It is in the interest of the proprietor of such a mark, and solely his responsibility, to prevent such a metamorphosis of an initially validly registered mark into a generic term, either by enforcing the trade mark rights against generic or descriptive use by third parties and/or notices on websites, in advertisements, etc., to the effect that the sign ‘XYZ’ is a registered trade mark and should not be used generically. If traders are involved in the distribution of the products bearing a trade mark, the proprietor should ensure that the sellers of the respective product inform their customers that the sign in question has been registered as a trade mark (e. g. by making sure that the sign is always used with the ® symbol). The mere fact that the traders themselves are aware of the fact that a sign is a protected trade mark does not preclude revocation of the mark if the sign has lost its distinctive character from the point of view of the end-users. This was confirmed by the CJ in relation to the trade mark KORNSPITZ registered as a trade mark for bread rolls because the sign was perceived by consumers as the generic term for that type of bread roll and were not aware of the fact that those rolls were made using a baking mix supplied under the trade mark KORNSPITZ by a particular undertaking. The mere fact that the sellers were aware of the existence of that mark and of the origin which it indicated did not prevent the metamorphosis of an originally distinctive sign into a common name.243 The lack of distinctiveness of a sign because of its generic nature in the sense of (d) can be overcome by acquired distinctiveness under Art. 7 (3). As a consequence of intensive and long-standing use, terms and indications that used to be customary in the current language or the bona fide and established practices of the trade may eventually be recognised by the relevant public as a sign that only identifies one commercial source, so that such signs lose their customary nature which is requisite to fulfil the essential function of a trade mark.244 In practice, the obstacle contained in (d) is of limited independent significance, as most generic terms are at the same time descriptive and, consequently, already barred from registration under (c). Whether a sign or indication has become a customary designation for certain goods or services has to be assessed on the basis of established practices in the trade circles concerned. A clear pointer that a designation has become generic is the usage of the term by various traders without any further explanation as to its meaning.245 In contrast, the rather arbitrary character of a designation indicates that such signs or indications have not (yet) become customary in the current language or in the bona fide 242 GC Case T-365/06 Compagnie des Bateaux Mouches v OHIM [2008] ECR II-00310, mn. 27: originally protected as a mark in 1950, the sign turned into a generic term over the next decades and hence lost its capacity to exercise the functions of a trade mark (decision available only in the French language). 243 CJ Case C-409/12 Backaldrin O ¨ sterreich The Kornspitz Company v Pfahnl Backmittel (KORNSPITZ) [2014] (not yet published in the ECR, decision available in the English language at http://curia.europa.eu), mn. 23–30. 244 As to acquired distinctiveness in detail below mn. 313–335. 245 GC Case T-322/03 Telefon & Buchverlagsgesellschaft v OHIM (WEISSE SEITEN) [2006] ECR II00835, mn. 60, holding that the term ‘WEISSE SEITEN’ was already customary on the market for telephone directories not only in Austria, but also in Belgium and France (‘PAGES BLANCHES’) in Italy (‘PAGINE BIANCHE’), in Romania (‘WHITE PAGES’), etc.

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Absolute grounds for refusal

and established practices of trade. For a finding of such arbitrariness, it is not enough to demonstrate that the very sign is not commonly used in writing. It suffices that the term is a normal and customary designation in the oral language of the trade sector concerned, such as Caipi as the usual abbreviation for the cocktail Caipirinha.246 For the assessment of the customary nature of signs and indications in the current language of the trade sector concerned, it is of no or only little relevance that the respective signs are used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by the mark.247 Nor is it decisive that terms are commonly used in everyday language; what is central is whether the sign or indication has become customary as a generic reference for the particular goods or services concerned.248 Trade marks not caught by Art. 7 (1)(d): 106 Type

Nice Classes

Mark

Case Number

Authority

Word

9, 42

MY WAY

R 1310/2008-1

OHIM (BoA)

Word

25

SERAFINO (customary term for a certain type of polo shirt)

R 715/2008-1

OHIM (BoA)

Word

31

VESUVIA

R 1743/2007-1

OHIM (BoA)

Word

9, 18, 25, 41

TAE BO

R 803/2004-1

OHIM (BoA)

Signs found to be customary in the meaning of Art. 7 (1)(d): Type

Nice Classes

Mark

Case Number

Authority

Word

42

MARKETINGCLOUD

R 1854/2013-1

OHIM (BoA)

Word

3

Original Eau de Cologne

R 2064/2012-4 (appealed)

OHIM (BoA)

Word

16, 35, 41

CFO

R 1758/2007-1

OHIM (BoA)

Word

9, 16, 41, 42

WEISSE SEITEN

T-311/03

GC

Word

30, 35, 38, 42

BRUSCHETTA

R 328/2002-2

OHIM (BoA)

Word

9

OBERON

R 4/1999-2

OHIM (BoA)

246 Registration of the sign Caipi was rightfully rejected for alcoholic beverages in class 33, s. GC Case T-405/04 Borco Marken-Import Matthiesen v OHIM [2007] ECR II-000135, mn. 33 (summary publication, full text available at http://curia.europa.eu, decision available only in the German language). 247 CJ Case C-517/99 Merz & Krell GmbH & Co. [2001] ECR I-06959, mn. 39, 40, where the court stresses that also advertising slogans, indications of quality, etc., are not excluded per se from trade mark protection by virtue of such use. 248 For example, the laudatory term Bravo for writing implements, CJ Case C-517/99, mn. 34 et seq.; s. also GC Case T-133/06 TIM & TTV v OHIM [2008] ECR II-00231, mn. 51, 55 (summary publication, full text available at http://curia.euopa.eu; v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7, CTMR mn. 7 (b).

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V. Shape marks (lit. e) 1. Role and importance of the provision a) Public interest underlying lit. (i) to (iii). Art. 4 CTMR, like Art. 2 TMDir, expressly lists the ‘shape of goods or of their packaging’ as signs that are suitable for trade mark protection.249 Most of these shape marks, registered or applied for, request registration in three-dimensional form.250 According to the express will of the lawmakers, however, registration of shape marks is subject to far-reaching restrictions. Therefore, Art. 7 (1)(e), like Art. 3 (1)(e) TMDir, singles out certain shape of product signs by listing specific grounds for refusal. According to the obstacles set out in lit. (e), signs are barred from registration that consist exclusively of a shape which (i) results from the nature of the goods themselves, (ii) is necessary to obtain a technical result or (iii) gives substantial value to the goods. 108 These absolute grounds for refusal ultimately pursue the common objective of keeping certain product shapes freely available for general use, whereby each of those obstacles is justified by considerably different public interests. The prohibition of shapes under (e)(i) that result exclusively from the nature of the goods themselves is aimed at preventing monopolisation of entire product categories by one proprietor.251 The absolute bar set out in (e)(ii), in turn, intends to establish a healthy and fair system of competition that is not obstructed by exclusive trade mark rights in functionality-based product shapes. The idea is to prevent trade mark law from granting an undertaking a monopoly on technical solutions as to the functional characteristics of a product. Whereas trade mark rights can exist for an unlimited period of time, patented technical solutions are protected for only a limited period, so that after expiration of their protection term they come into the public domain and can be freely used by all market participants. This objective would be thwarted if, for instance, after its expiration the patent protection could be perpetuated via trade mark law, which would considerably and permanently reduce the opportunity for other economic operators to use that technical solution.252 Yet another objective is pursued by the – heavily criticised253 absolute bar enshrined in lit. (e)(iii), which is intended as a tool to avoid a situation in which design and copyright protection, being limited in time, could be bypassed by trade mark law.254 107

109

b) Different protection of shapes under design and trade mark law. From all this it follows that the famous phrase ‘form follows function’255 works fine, in general, in the design field, but may prove to be a bumpy road or even lead to a dead end in the trade mark realm. This should be borne in mind when considering the various means of protection for two- or three-dimensional shapes that are clearly inspired by the form and/or functionality 249 There is thus no doubt that form-of-the-product marks, most commonly referred to as shape marks, may enjoy trade mark protection. 250 S. detailed analysis of 3-D marks below mn. 264 et seq. 251 Likewise v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 8 (a). 252 CJ Case C-48/09 P Lego Juris v OHIM [2010] ECR I-08403, mn. 43–46. 253 S. the detailed criticism put forward by Eisenfu ¨ hr in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 7, mn. 219–222. 254 CJ Case C-205/13 Hauck v Stokke (adjustable children’s chair), ECLI:EU:C:2014:2233, mn. 19; OHIM Dec. of 10.9.2008 – R 497/2005-1 – Bang & Olufsen, mn. 20; v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 8 (a). 255 Under this principle, the shape of an object should be based primarily on its intended purpose or function; s. http://en.wikipedia.org/wiki/form_follows_function.

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of a certain product. If the shape – to be protected as a trade mark and/or a design – merely follows the contours of the product itself, trade mark protection will be prohibited under lit. (e)(i) and barred under lit. (e)(ii) if the product’s overall appearance is determined largely by functional considerations. This is different under design law. In these instances, the shape of a product may be prohibited from trade mark registration, but eligible for design protection. The reason for this is grounded in the two (almost) diametrically opposed starting 110 points under both regimes with regard to protection of shapes of products. By definition, designs show a direct product-relatedness and therefore necessarily depict the visual appearance of the whole or a part of a product,256 whereas from the trade mark perspective it is safe to say that the closer – typically three-dimensional – shape marks come to the form in which the goods concerned will most probably appear or that is technically predefined, the more can it be expected that this form would be refused registration based on Art. 7 (1)(e)(i) and/or (ii).257 The picture would look considerably different under the design regime with regard to the two potential stumbling blocks, namely the inspiration by the product’s form on the one hand and the functionality-driven aspect on the other. First, as long as features are chosen, ‘at least to some degree, for the purpose of enhancing the product’s visual appearance’, the design is eligible for design protection.258 Furthermore, there is no objection to granting design protection even to shapes of products whose overall appearance is determined largely, but not solely, by functional considerations.259 These differences have to be taken into account to optimise the applicant’s filing 111 strategy as regards trade mark protection on the one hand and (simultaneous) design protection on the other. It merits particular mention in this context that one and the same shape of a product may enjoy trade mark and design protection, which holds true even in light of the provision of Art. 7 (1)(e)(iii).260 c) Art. 7 (3) not applicable. The obstacles contained in Art. 7 (1)(e) may not be 112 overcome by virtue of Art. 7 (3). Natural or functional shapes and shapes giving substantial value to the goods are thus incapable, by express intention of the lawmakers, of acquiring distinctiveness through the use made of them.261 Consequently, if one of the absolute grounds for refusal set out in (e) applies, trade mark protection is excluded. This even applies in scenarios where – prior to the application for registration – the sign had already acquired attractiveness as a result of its recognition as a distinctive sign due to intensive use and promotional activities.262 It is therefore crucial to clearly differentiate between the various grounds for refusal, because only those set out in Art. 7 (1)(b) to (d) can be remedied by acquired distinctiveness. Many shape marks encounter not only 256 Except for very limited exceptions, most notably ornamentations; s. the detailed analysis of the product-relatedness of the term ‘design’ by Hasselblatt, in Hasselblatt (ed.), Community Design Regulation, Art. 3 CDR mn. 9–13, regarding the special case of ‘ornamentation’, Art. 3 CDR, mn. 14–16. 257 S. e. g. CJ C-299/99 Philips v Remington [2002] ECR I-5475, mn. 81–84; CJ Case C-136/02 Mag Instrument Inc. v OHIM [2004] ECR I-9165, mn. 31. 258 S. OHIM Dec. of 22.10.2009 – R 690/2007-3 – Lindner Reyclingtech GmbH v Franssons Verksta ¨ dter AB, mn. 36. 259 S. OHIM Dec. of 22.10.2009 – R 690/2007-3 – Lindner Reyclingtech GmbH v Franssons Verksta ¨ dter AB, mn. 33, in respect of the design of such a highly technical device as chaff cutters. 260 Regarding the obstacle under lit. (e)(iii), s. below mn. 126–134; s. the detailed analysis on ‘form follows function’ by Hasselblatt, in Hasselblatt (ed.), Community Design Regulation, Art. 3 CDR, mn. 32–35. 261 CJ Case C-73/06 Benetton v G-Star [2007] ECR I-07709, mn. 28 with regard to the identically worded Art. 3 (1)(e) TMDir; s. also OHIM Dec. of 10.9.2008 – R 497/2005-1 – Bang & Olufsen/ LOUDSPEAKER, mn. 18, 19; v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 8. 262 CJ Case C-73/06 Benetton v G-Star [2007] ECR I-07709, mn. 28; OHIM Dec. of 10.9.2008 – R 497/ 2005-1 – Bang & Olufsen/Loudspeaker, mn. 19.

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Community Trade Mark Regulation

difficulties with the hurdles set out in lit. (e), but may face difficulties in establishing distinctiveness and not being descriptive. As the latter obstacles can be overcome by Art. 7 (3), it is well conceivable263 that signs which are clearly distinctive (through acquired distinctiveness) are still prohibited trade mark registration under lit. (e). d) Art. 7 (1)(e) as preliminary obstacles. The CJ has repeatedly held that the specific grounds set out in Art. 7 (1)(e) and the corresponding provision of Art. 3 (1)(e) of the Directive constitute a preliminary obstacle liable to prevent certain signs consisting of the shape of a product from being registrable.264 This observation has to be seen in light of the fact that the hurdles laid down in lit. (e) lead to refusal of registration irrespective of actual use of the sign or even acquired distinctiveness. Thus, indeed, it appears to be only logical to assess those obstacles first, and to turn to the other bars contained in Art. 7 (1) only if none of the grounds for refusal set out in lit. (e)(i) to (iii) apply. Such a preliminary analysis of the absolute bars under lit. (e) would enhance the registration process and at the same time avoid superfluous and lengthy proceedings in which an application has successfully overcome a lack of distinctiveness first put forward by OHIM in a separate set of proceedings, only to be confronted – probably years later in respect of the same mark – with an obstacle under lit. (e)(iii).265 114 Even though the prior examination of a shape mark as to lit. (e) appears to be logical where several of the absolute grounds for refusal set out in Art. 7 (1) may apply, there is no obligation to do so.266 113

2. General aspects for assessment of shape marks 115

a) Signs consisting ‘exclusively’ of shape of goods. Art. 7 (1)(e) refers to signs which consist ‘exclusively’ of the shape of the goods, without providing any further guidance. It is clear, however, from the systematics/taxonomy of the law that the essential characteristics of the sign in question must clearly reflect the attributes of the shapes referred to in lit. (i) to (iii). Art. 4 CTMR, like Art. 2 TMDir, expressly mentions the ‘shape of goods or of their packaging’ as signs that are generally eligible for trade mark protection, provided that they are capable of fulfilling the essential trade mark function. In light of this, it would be inconsistent to generally exclude form marks from registration as soon as they show a certain relatedness to the shape of the respective goods. Any ‘shape of goods’ almost inevitably267 relates to the nature of the goods themselves; moreover, any ‘shape of goods’ is to a certain extent functional. The lawmakers were duly aware of this apparent friction between the deliberately broad scope of signs that may constitute a trade mark under Art. 4 on the one hand and the bars listed in Art. 7 (1) on the other, and hence limited this ground for refusal to signs that consist ‘exclusively’ of the shape of goods embodying the characteristics provided in lit. (i) to (iii). 263 And actually happens in practice; s. the famous Lego® brick that was found to be distinctive, but barred from registration under Art. 7 (1)(e)(ii), CJ Case C-48/09 P Lego Juris v OHIM [2010] ECR I08403, mn. 40 et seq. 264 CJ Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. [2002] ECR I-05475, mn. 76; CJ Joined Cases C-53/01 to 55/01 Linde AG and Winward Industries v Rado Uhren GmBH [2003] ECR I-03161, mn. 65; GC Case T-460/05 Bang & Olufsen v OHIM [2007] ECR I-04207, mn. 42. 265 S. the somewhat unfortunate history of the shape of a loudspeaker in GC Case T-460/05 Bang & Olufsenv OHIM (SHAPE OF A LOUDSPEAKER) [2007] ECR II-04207, annulling OHIM’s decision based on Art. 7 (1)(b), followed by the Office’s Dec. of 10.9.2008 R 497/2005-1, refusing registration on the basis of lit. (e)(iii), confirmed by the GC Case T-508/08 Bang & Olufsen vOHIM [2011] ECR II-06975, mn. 28 et seq. 266 Expressly observed in GC Case T-508/08 Bang & Olufsen v OHIM [2011] ECR II-06975, mn. 44. 267 This is, at least with regard to the starting point, different for liquid products, as they ‘follow’ the form of the container/packaging.

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Art. 7 CTMR

It would be wrong, however, to conclude from this taxonomy that the absolute 116 grounds for refusal laid down in lit. (e) have to be narrowly construed. On the contrary, with regard to the obstacles under lit. (e)(i) and (ii), the contrary seems to be imperative. Like all absolute grounds for refusal, also those contained in lit. (e) have to be interpreted in light of the underlying public interest, which aims – in respect of lit. (e)(i) and (ii) – to prevent trade mark-based monopolies for entire product categories or purely functional product shapes for an unlimited period of time. Furthermore, in this context it has to be kept in mind that the scope of trade mark protection is not restricted to prevent others from using the same shape, but also from using similar shapes.268 As a consequence, a significant number of alternative – similar – shapes might therefore become unusable for all other economic operators. Thus, despite the use of the word ‘exclusively’, the ratio legis and the underlying public interest seem to necessitate a strict interpretation of the absolute grounds set out in Art. 7 (1)(e)(i) and (ii). Fears that a somewhat stricter interpretation of the obstacles contained in Art. 7 (1)(e) 117 might lead to excessive restrictions would appear exaggerated. If a sound yardstick is used, the resulting limitations would simply mirror the underlying interest of those absolute bars. Admittedly, this has to be seen differently in respect of lit. (e)(iii).269 It is up to the applicant to give the shape mark sufficient individuality which ensures both that the sign has distinctiveness and that the obstacles under (e) are avoided. Depending on the sign in question, it might suffice to add decorative or imaginative modifications and/or include significant non-functional elements, provided that those elements play an important or essential role based on the overall impression produced by the sign in question.270 b) Average consumer’s perspective not decisive. As pointed out above, the question 118 as to whether a sign is barred from registration because of absolute grounds generally has to be assessed by reference to the perception of the relevant public.271 This is different for the analysis under Art. 7 (1)(e), which requires a differentiated view. For the assessment as to the functionality of the essential characteristics of a shape under lit. (e)(ii), the perception of the target consumer is not relevant. This analysis usually requires technical knowledge which the consumer may not have. Instead, the essential characteristics of a shape must be determined objectively on the basis of its graphic representation and any descriptions submitted with the application for the CTM. The presumed perception of the shape by the target consumer may, however, be of relevance in determining non-functional aspects of the shape, such as decorative or imaginative elements, incorporated in the shape in question.272 In respect of aesthetic considerations, the public’s perception may thus be of indicative value. Whether shapes giving ‘substantial value’ to the goods in question in the meaning of 119 lit. (e)(iii) have to be assessed in an objective way or from the relevant public’s point of view has not yet been determined by the courts. In its Lego judgment, the CJ held that the average consumer’s presumed perception is not decisive ‘when applying the ground for refusal under Art. 7 (1)(e)(ii)’, without generally extending this observation to the other obstacles contained in lit. (e).273 Consequently, this finding with regard to 268

Rightly emphasised by CJ Case C-48/09 P Lego Juris v OHIM [2010] ECR I-08403, mn. 56. S. below mn. 126–134. 270 To that effect s. CJ Case C-48/09 P Lego Juris A/S v OHIM [2010] ECR I-08403, mn. 59, 72; likewise CJ Case C-205/13 Hauck v Stokke (adjustable children’s chair), ECLI:EU:C:2014:2233, mn. 22. 271 S. above mn. 23–25, and the case-law cited there. 272 CJ Case C-48/09 P Lego Juris A/S v OHIM [2010] ECR I-08403, mn. 70–76, confirming the GC’s view; likewise v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 8 (b); Schober, IIC 2013, 35, 41. 273 CJ Case C-48/09 P Lego Juris v OHIM [2010] ECR I-08403, mn. 76 (emphasis added). 269

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Community Trade Mark Regulation

lit. (e)(ii) has no bearing on (e)(iii); it is therefore erroneous to infer from the Lego decision that the perception of the target public ‘cannot be imposed in the context of paragraph (1)(e)’, as stated by the GC in its (second) Bang & Olufsen judgment.274 As the so-called ‘aesthetic functionality’ does not require any technical understanding, unlike in the situation covered by the absolute ground for refusal under lit. (e)(ii), the obstacle under lit. (e)(iii) must take the perception of the target public into account.275 This is seen differently by the CJ, according to which the presumed perception of the average consumer may, at most, be a relevant criterion in identifying the essential characteristics of the sign.276

3. Shape resulting from the nature of the goods Art. 7 (1)(e)(i) excludes the shape resulting from the nature of the goods themselves from registration as a trade mark. With that said, it is by no means the case that all signs in which the specific shape of the relevant goods is displayed are denied registrability. What is in fact relevant is whether the chosen shape is imperatively predetermined by the nature of the goods. The ‘nature’ of the goods means the relevant category. Shapes cannot be registered as form marks that exhibit the intrinsic characteristics of a generic product of the respective category; for instance, using a knife as an example, its handle and its blade are accounted for by the ‘nature of the goods’; a fork necessarily incorporates fork tines, etc.277 Accordingly, it must be asked whether, from the perspective of the public, the shape – of the category of goods – is feasible in only that specific embodiment or whether there are appropriate alternatives.278 It follows that the criteria for this obstacle are not satisfied if the shape in question is – also – characterised by aesthetic aspects that deviate from those features that are necessarily linked to the nature of the goods themselves. This can be achieved by an inclusion of decorative279 or any otherwise distinctive elements.280 Thus, the more closely the shape for which registration is sought resembles the shapes most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character under Art. 7 (1)(e),281 and the greater the likelihood that the sign in question would be barred under lit. (e)(i) as well. 121 This ground for refusal first of all covers those cases where the specific shape is imperatively predetermined by the category of the goods without any varying element. The obstacle under lit (e)(i) is not to be construed too narrowly in order to protect the underlying public interest. It is thus not limited to signs which consist exclusively of shapes which are indispensable to the function of the goods in question. Rather, also shapes with essential characteristics which are inherent to the generic function or functions of such goods and which consumers may be looking for in competitors’ 120

274 This citation by the GC is thus inaccurate, s. GC Case T-508/08 Bang & Olufsen v OHIM [2011] ECR II-06975, mn. 71. 275 In that direction also Eisenfu ¨ hr in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 222. 276 CJ Case C-205/13 Hauck v Stokke (adjustable children’s chair), ECLI:EU:C:2014:2233, mn. 34. 277 Eisenfu ¨ hr in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 215. 278 V. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 32, § 4 mn. 32, 33. 279 S. for instance the three-dimensional shape with certain non-functional creative design elements, OHIM Dec. of 4.8.1999 – R 109/1999-1 – THREE-DIMENSIONAL MARK (GRANINI-BOTTLE) (decision available only in the German language), mn. 13, 14; s. on the other hand OHIM Dec. of 21.3.2001 – R 537/1999-2 – Galliano Bottle, mn. 16, 17, stressing that simple ornamental design elements do not suffice if the shape of a bottle is predominantly predetermined by functionality. 280 Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 215. 281 CJ Case C-136/02 Mag Instrument Inc. v OHIM [2004] ECR I-9165, mn. 31.

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products must, in general, be barred from registration.282 However, any aesthetic or otherwise idiosyncratic modifications not predetermined by the nature of the goods suffice in order to overcome this obstacle, those additional provided elements playing an important or essential role in the sign applied for and not being inherent to the generic function of the goods at issue.283 For the purposes of applying lit. (e)(i), the intrinsic shape of the goods in question is 122 determinative. Not all goods, such as liquids, possess an intrinsic shape; instead, the chosen packaging imposes its shape on the goods. In those circumstances, for the purposes of examining an application for registration of a shape mark, the packaging must be assimilated to the shape of a product. This applies, for instance, to goods which, because of their very nature, lack a shape of their own, such as granules, powder or liquids.284

4. Shape necessary to obtain a technical result Art. 7 (1)(e)(ii) excludes from registration those signs that consist exclusively of a 123 shape which is necessary to obtain a technical result. The purpose of this provision is to prevent the granting, indefinitely, of exclusive rights relating to technical solutions under trade mark law.285 With this general interest in mind, the obstacle under lit. (e)(ii) is not being interpreted too narrowly. Admittedly, the wording of the law – signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result – could indicate that trade mark protection would have to be refused only if, assessed objectively, there were virtually no reasonable and equivalent alternatives.286 In fact, the prerequisite of ‘necessity’ (to obtain a technical result) does not mean that the shape concerned has to be the only one allowing the technical result in question to be obtained. Instead, the terms ‘exclusively’ and ‘necessary’ ensure that only shapes of goods which exclusively incorporate a technical solution, whose registration as a trade mark would thus actually impede the use of that technical solution by other economic operators, are refused registration. This does not mean that the shape in question must be the only one capable of obtaining a particular technical functionality. The fact must be taken into account that registration of a purely functional product shape would allow the proprietor to prevent others not only from using the same shape, but also from using similar shapes. This would create the risk that numerous alternative shapes would be unusable for the trade mark proprietor’s competitors.287 This applies a fortiori where the solution incorporated in the shape of goods concerned is the technically preferable solution for the category of goods concerned.288 Therefore, the mere existence of alternative shapes does not preclude the application of Art. 7 (1)(e)(ii).289 In light of all this, the absolute obstacle contained in lit (e)(ii) must be broadly construed, which clearly follows from the rationale of the provision and its underlying public interest, as well as the strict parameters set out by the CJ in its Philips- and Lego-judgments. That entails that not only those signs, the essential characteristics of which perform the 282

CJ Case C-205/13 Hauck v Stokke (adjustable children’s chair), ECLI:EU:C:2014:2233, mn. 22–27. CJ Case C-205/13 Hauck v Stokke (adjustable children’s chair), ECLI:EU:C:2014:2233, mn. 22. 284 CJ Case C-218/01 Henkel [2004] ECR I-01725, mn. 33. 285 CJ Case C-48/09 P Lego Juris v OHIM [2010] ECR I-08403, mn. 43–46. 286 As suggested by legal scholars in the earlier literature, s. v. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 32, § 4 mn. 32; Bender, MarkenR 2000, 118, 128. 287 CJ Case C-48/09 P Lego Juris v OHIM [2010] ECR I-08403, mn. 53–57; v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 8 (f). 288 CJ Case C-48/09 P Lego Juris v OHIM [2010] ECR I-08403, mn. 60. 289 S. the detailed analysis on so-called hybrid shapes and the relevance of alternative shapes, Schober, IIC 2013, 35, 43 et seq. 283

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technical function of the goods in question, are barred, but also signs consisting of shapes whose characteristics are the result of that function. This important aspect was overlooked by the GC in its recent Simba Toys v OHIM judgment in respect of a shape consisting of a black and white image of a three-dimensional puzzle, widely known as the Rubik’s Cube.290 The mark was registered for the goods ‘three-dimensional puzzles’ and contained a graphic representation from three different perspectives of a cube, each surface of which showed a grid structure formed by black borders dividing the surface into nine equal square elements and arranged in a three by three grid.291 In its illconceived reasoning, the court left aside the fact that the black lines – the grid structure – were the consequence of a technical function, namely the rotating capability of the individual elements of the cube in question, apparently based on the assumption that the mark was registered for 3D puzzles in general, without being restricted to those that have a rotating capability.292 The mere circumstance, however, that the goods covered by the mark were not limited to certain types of three-dimensional puzzles does not alter the fact that the grid structure is attributable to the necessary rotatability of each of the nine cube elements in respect of 3D puzzles of the Rubik’s Cube type. With regard to the latter, the essential characteristics of the contested mark are the indispensable corollary to the functionality of this particular type of 3D puzzle and hence ’necessary to obtain a technical result’ in the meaning of lit. (e)(ii). It would have been up to the proprietor to specifically carve out those puzzles in the classification of goods, in relation to which the depicted shape is clearly attributable to a technical result. Indeed, in relation to other ‘three-dimensional logic games except for puzzles of the Rubik’s Cube type’ - and only in respect of those - the mark might be registrable. 124 As a general rule, it is to be deemed a clear indication that the sign seeking protection has to be barred under lit. (e)(ii) if the technical solution embodied therein was previously – or still is – protected by patents.293 An example par excellence for this can be found in the Rubik’s Cube decision handed down by the GC.294 The CTM in question consisted of the shape of a 3D-puzzle that had previously enjoyed patent protection; the (formerly patented) logic game known as the Rubik’s Cube, in turn, consisted of 27 cube-like elements, arranged in two twistable directions at angles of 90 , 180 , 270 or 360 .295 The indispensable prerequisite for the functionality of this threedimensional logic game, and consequently at the same time determinative for the functionality embodied in the patent, is the rotatability of the individual cube elements over two axes, whereby nine cube elements make up one side. This necessarily results in the fact that narrow shadow gaps are created between the cube elements which set themselves off darkly against the cube surfaces, as can be seen both in the graphic representations of the three-dimensional Rubik’s Cube-CTM and the images filed under the Hungarian patent as the following juxtaposition shows.

290

CG Case C-450/09 Simba Toys v OHIM (Rubik’s Cube) ECLI:EU:T:2014:983, mn. 50 et seq. CG Case C-450/09 Simba Toys v OHIM (Rubik’s Cube) ECLI:EU:T:2014:983, mn. 44. 292 CG Case C-450/09 Simba Toys v OHIM (Rubik’s Cube) ECLI:EU:T:2014:983, mn. 50, 55. 293 Likewise v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 8 (f). 294 CG Case C-450/09 Simba Toys v OHIM (Rubik’s Cube) ECLI:EU:T:2014:983. 295 Hungarian Patent No. 170062, issued in the name of Erno Rubik, applied for on 30.01.1975. 291

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Absolute grounds for refusal

Art. 7 CTMR

Representations for Hungarian Patent No. 170062 (applied for 30.01.1975)

Representation of CTM No. 162784

The grid structure thus necessarily ensues from the implementation of the functional doctrine effected in the patent, which has come into the public domain (since 1995). Granting trade mark protection to aforementioned grid structure in relation to threedimensional puzzles of the Rubik’s Cube-type would be tantamount to a perpetuation of the patent protection which has already lapsed for some 20 years, and as such diametrically opposed to the public interest underlying the obstacle contained in Art. 7 (1)(e)(ii). In its unfortunate Simba Toys v OHIM decision the GC entirely failed to take this crucial aspect into account. The – rightly so – strict CJ viewpoint should not lead to the registration of product 125 shape marks being excessively restricted.296 Careful attention should therefore be paid in advance on the part of the applicant, and then by the Office, as to whether the essential characteristics of a shape seeking protection are not limited to a technical solution. To overcome the obstacle contained in lit. (e)(ii), significant non-functional elements have to be included, such as decorative or imaginative ornamentation and so forth.297 What matters is that the additional element is in itself distinctive.298 Such shapes are commonly referred to as hybrid shapes as they combine functionalitydriven elements with essential non-functional characteristics.299 In such scenarios, what should be kept in mind is, that the scope, of the protected subject matter of 296 S. the sceptical remarks by Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 218, although his warning seems to be a bit exaggerated that an excessive interpretation of the Philips- and Lego-judgments could be ‘fatal’. 297 S. e. g. CJ Case C-48/09 P Lego Juris v OHIM [2010] ECR I-08403, mn. 59, 72. 298 Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 214. 299 S. in detail on the protectability of such hybrid shapes, Schober, IIC 2013, 35, 43 et seq.

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Community Trade Mark Regulation

hybrid shapes does not refer to the functionality aspect, but solely to the distinctive non-functional characteristics of the sign.300

5. Shape giving substantial value to the goods a) Ratio legis unclear; narrow interpretation. Under lit. (e)(iii), those signs are excluded from trade mark protection that consist exclusively of a shape which gives substantial value to the goods. Indeed, this heavily criticised provision is, to say the least, ‘unfortunately worded’.301 It remains unclear what is meant by ‘substantial value’, and even the objective pursued by this obstacle is far from obvious. The provision is therefore rightly described as suffering from lack of clarity and a legally convincing basis.302 It can only be assumed that this absolute ground for refusal is intended to avoid an abuse of trade mark law through which the protection term for copyrightable works or design rights could be – theoretically – extended eternally.303 It should certainly not be overlooked that there is a public interest in avoiding the extension of intellectual property rights that are limited in time – such as designs and copyrights – by rights, such as trade marks, of unlimited duration.304 Such a limitation of the concurrence of protection under trade mark law and under copyright or design law is, however, not reflected in the wording of Art. 7 (1)(e)(iii). If the Community lawmakers had intended to prohibit the registration of marks containing elements that are protected as copyrightable works or as designs, they would not have merely referred to shapes giving ‘substantial value to the goods’, but would have inserted in the wording of lit. (e)(iii) more specific language in this respect, and would not have limited this obstacle to shapes. Furthermore, as is made crystal clear by Art. 96 CDR,305 trade marks and designs do not only coexist peacefully, but one and the same sign may enjoy protection under the trade mark, copyright and design regimes, provided that the substantive requirements are met.306 127 Therefore, it can only be hoped that this absolute ground for refusal will be abolished in the not too distant future.307 Such a deletion of Art. 7 (1)(e)(i) CTMR and the equivalent provision contained in Art. 3 (1)(e)(iii) TMDir is also recommended by the Max Planck Institute in its comprehensive Study on the overall functioning of the European Trade Mark System.308 For the time being, the obstacle contained in lit. (e)(iii) – if applied at all – certainly must be narrowly construed, because otherwise it would be nothing else but ‘punishing good design’.309 126

128

b) No clear guidance by CJ/GC. To date, only a few cases have been decided on the basis of the ill-conceived provision of lit. (e)(iii). In its Benetton v G-Star judgment, the 300

In the same direction, Schober, IIC 2013, 35, 47 et seq. Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 219; s. also the criticism by Kur, in Festschrift 100 Jahre Markenamt, 175, 192. 302 S. the detailed criticism as to the ‘substantial value’ obstacle by Gielen, EIPR 2014, 164 et seq. 303 In that direction Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 219; v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 8 (g). 304 Gielen, EIPR 2014, 164, 166, with regard to the underlying idea to limit the cumulation of trade mark rights and design rights or copyrights under the former Benelux law; s., to that effect, also CJ Case C-205/13 Hauck v Stokke (adjustable children’s chair), ECLI:EU;C:2014:2233; mn. 31. 305 S. in this regard the comprehensive analysis by Nordemann, in Hasselblatt (ed.), Community Design Regulation, Art. 96 CDR mn. 7 et seq. 306 Likewise v. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 32, 33, § 4, mn. 36. 307 Gielen, EIPR 2014, 164, 169. 308 Presented on 15.2.2011, mn. 2.34, p. 73. 309 V. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 8 (g); similarly Gielen, EIPR 2014, 164 et seq. 301

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Absolute grounds for refusal

Art. 7 CTMR

CJ did not seize the opportunity to shed more light on the interpretation of the criterion of ‘giving substantial value to the goods’ in the meaning of the third indent of Art. 3 (1)(e) TMDir, which is the equivalent provision to Art. 7 (1)(e)(iii) CTMR, mainly owed to the fact that the request presented to the CJ by the Hoge Raad contained ambiguities.310 Probably because of this imprecise wording of the first questions for a preliminary ruling, the CJ simply held that the obstacle under lit. (e)(iii) cannot be overcome by acquired distinctiveness.311 This, however, can already be directly derived from the clear wording of Art. 3 (3) TMDir and Art. 7 (3) CTMR, which limits the scope of this provision to the absolute grounds for refusal contained in lit. (b) to (d). Similarly fruitless are the observations in the (second) Bang & Olufsen decision 129 rendered by the GC.312 This decision starts already from a wrong premise in relying on the Lego rationale according to which the perception of the target public would not be decisive ‘in the context of paragraph (1)(e) of that article’,313 ignoring the fact that the Lego judgment was limited to ‘applying the ground for refusal under Art. 7 (1)(e)(ii)’.314 Although the GC wrongly concludes that the perception of the target public was irrelevant, it still relies on the consumer’s point of view, stating that ‘it must be noted that, for the goods at issue, the designs and element which will be very important in the consumer’s choice even if the consumer also takes other characteristics of the goods at issue into account’.315 The GC considers the obstacle under lit. (e)(iii) to apply because, apparently from the consumer’s point of view, ‘design is an essential element of its branding and increases the appeal of the product at issue, that is to say, its value’.316 This rationale would lead to the nonsensical result that valueless designs could be protected as trade marks whereas fine design would be barred under lit. (e)(iii). It is thus quite apparent that the competent authorities are struggling with the proper 130 interpretation of this provision.317 This may be the reason why the forerunning decision in the hard-fought registration battle regarding the shape of the Bang & Olufsen loudspeaker concludes in an almost apologetic manner that it was the legislature’s choice to ‘cut trade mark protection of shapes that give substantial value to the sign at the roots’.318 The BoA poses the right question itself: ‘Why deprive the owner of a design that is recognised as a trade mark due to its distinctive character the easy tool of trade mark protection, at least during the term of design or copyright protection?’319 This is certainly a legitimate question which, however, cannot be answered on the basis of Art. 7 (1)(e)(iii), because it boils down to the formula ‘good design = unregistrable as a trade mark’ and ‘bad design = registrable as a trade mark’. This, in turn, would have had to be reflected in the wording of lit. (e)(iii), which is not the case. 310 CJ Case C-73/06 Benetton Group v G-Star International [2007] ECR I-07709, mn. 20 (for the full text of the questions presented by the Hoge Raad der Nederlanden). 311 CJ Case C-73/06 Benetton Group v G-Star International [2007] ECR I-07709, mn. 28. 312 GC Case T-580/08 Bang & Olufsen v OHIM [2011] ECR II-06975. 313 GC Case T-580/08 Bang & Olufsen v OHIM [2011] ECR II-06975, mn. 71. 314 CJ Case C-48/09 P Lego Juris v OHIM [2010] ECR I-08403, mn. 76: ‘The presumed perception of the sign by the average consumer is not a decisive element when applying the ground for refusal under Art. 7 (1)(e)(ii)’ (emphasis added). 315 GC Case T-580/08 Bang & Olufsen v OHIM [2011] ECR II-06975, mn. 73. 316 GC Case T-580/08 Bang & Olufsen v OHIM [2011] ECR II-06975, mn. 74. 317 As rightly observed by legal scholars, this provision ‘results in a lot of uncertainty’, Gielen, EIPR 2014, 164. 318 S. OHIM Dec. of 10.09.2008 – R 497/2005-1 – Bang & Olufsen v OHIM(LOUDSPEAKER 3DMARK), mn. 38. 319 S. OHIM Dec. of 10.09.2008 – R 497/2005-1 – Bang & Olufsen v OHIM(LOUDSPEAKER 3DMARK), mn. 37.

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Community Trade Mark Regulation

c) Obstacle under lit. (e)(iii) inconsistent with Art. 96 CDR and Art. 26 (2) TRIPs. In addition, as already mentioned out above, such a differentiation would be irreconcilable with Art. 96 CDR.320 Furthermore, such an approach would hardly be in line with the requirements under Art. 26 (2) TRIPs, which allows only limited exceptions to the protection of industrial designs provided that such exceptions ‘do not unreasonably conflict with a normal exploitation of protected industrial design and do not unreasonably prejudice the limited interest of the owner of the protected design’. An interpretation that allows bad designs to be registered as a trade mark, whereas valuable design would be barred from registration, would not be justified by legitimate interests of third parties and thus not in compliance with the TRIPs requirements.321 132 Even though, by its nature, the Agreement establishing the World Trade Organisation, including its annexes and hence TRIPs, ‘is not susceptible to be directly invoked in Community or Member State courts’,322 the competent authorities would be well advised not to rely on this obstacle until the legislature has had a chance to revisit this issue and revise the provision with sufficient clarity. 131

d) Criterion of giving ‘substantial value to the goods’. For the time being, the determinative question for the analysis under lit. (e)(iii) remains, from the perspective of the targeted consumer323, whether the aesthetically particularly distinctive form of the goods constitutes their actual value or, conversely, the goods would be valueless in an (arbitrarily) different form. The mere evocation of positive associations by dint of a particular design of the shape of a product does not mean that a substantial value is thereby bestowed upon it.324 Likewise, it does not suffice by itself that the shape seeking protection as a trade marks incorporates unusual and appealing – and hence valueincreasing – elements which may lend the branded product considerable weight as a selling argument.325 134 Examples of shape marks that successfully passed the bar under Art. 7 (1)(e) are depicted below: In general, it is irrelevant for the assessment of ‘substantial value’ in the sense of lit. (e)(iii) whether the shape incorporated in the trade mark applied for enjoyed – or still enjoys – design or copyright protection. However, if the design or copyright protection is exclusively based on the form for which trade mark protection is sought, a bestowal of substantial value upon the product by the shape in question must be identified therein, and trade mark protection denied.326 Otherwise, the protection term for designs and copyrights limited by statute could be perpetuated forever. Indeed, copyrightable works and designs that have come into the public domain because their protection term lapsed must remain in the public domain and must not be monopolised by a single trade mark owner. It is unfortunate that this clearly justified objective is not reflected in the wording of the law. 133

320 S. in this regard the comprehensive analysis by Nordemann in Hasselblatt (ed.), Community Design Regulation, Art. 96 CDR mn. 7 et seq. 321 The European Union being a member of TRIPs (as of 1.1.1995), the interpretation of EU law must be TRIPs-compliant; s. http://www.wto.org/english Õ home Õ members and observers. 322 CJ Case C-238/06 P Develey Holding v OHIM [2007] ECR I-09375, mn. 5–7. 323 It should be kept in mind that the CJ has a different view on that, according to which the presumed perception of the sign by the average consumer is not decisive in itself, but may, at most, be of relevance in identifying the essential characteristics of the sign seeking protection, CJ Case C-205/13 Hauck v Stokke (adjustable children’s chair), ECLI:EU:C:2014:2233, mn. 34. 324 In that direction Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 219 et seq. 325 Decided differently by GC Case T-580/08 Bang & Olufsen v OHIM [2011] ECR II-06975, mn. 74, 75, merely because of the ‘pure, slim and timeless design’ embodied in the shape of the goods at issue (the quite unique form of a loudspeaker). 326 V. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 32, § 4 mn. 36.

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Art. 7 CTMR

Absolute grounds for refusal

Shape marks in accordance with Art. 7 (1)(e): Type

Nice Classes

3D

135

Mark

Case Number

Authority

28

R 1462/2007-4

OHIM (BoA)

3D

7

R 1198/2005-4

OHIM (BoA)

3D

3

R 877/2002-3

OHIM (BoA)

3D

30

R 565/1999-1

OHIM (BoA)

Examples of marks which have been barred under Art. 7 (1)(e) are reflected in the 136 following chart: Type

Nice Classes

Figurative

15

Mark

Case Number

Authority

Reason

R-942/2012-5

OHIM (BoA)

7 (1)(e)(iii)

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CTMR Art. 7 Type

Nice Classes

3D

Community Trade Mark Regulation Mark

Case Number

Authority

Reason

16, 28, 35

R-679/2008-1

OHIM (BoA)

7 (1)(e), 7 (1)(e)

3D

6, 8, 20

T-164/11

GC

7 (1)(e)(ii)

3D

28

C-48/09 P

CJ

7 (1)(e)(ii)

3D

5, 29, 30

T-28/08327

GC

7 (1)(e)(ii)

3D

9, 20

T-508/08

GC

7 (1)(e)(iii)

327 Published in [2009] ECR II-00106 *Summary publication, re. OHIM Dec. of 23.10.2007 – R 1325/ 2007 – Shape of chocolate confectionery (3D mark).

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Absolute grounds for refusal

Art. 7 CTMR

VI. Signs contrary to public policy and accepted principles of morality lit. (f) Pursuant to Art. 7 (1)(f), signs are excluded from trade mark protection that are 137 contrary to public policy or accepted principles of morality. These bars mirror those contained in Art. 6quinquies of the Paris Convention, which prohibit registration of trade marks that are ‘contrary to morality or public order’. The terms ‘public policy’ and ‘accepted principles of morality’ overlap significantly. A clear distinction between the two concepts is not necessary from the legal point of view, as the consequences – as indicated by the word ‘or’ – are the same. Art. 7 (1)(f) establishes an absolute bar to registration as a trade mark, but does not 138 relate to the issue of whether such immoral signs can be used in commerce. Refusal of registration under lit. (f) does not necessarily mean that the use of this sign would be impermissible, which is essentially left to the national laws of the Member States. Conversely, the mere fact that a sign of dubious taste has been registered as a CTM does not allow the conclusion that it cannot be prohibited in the Member States, for instance under the laws on obscenity. Art. 110 (2) explicitly prescribes that the use of a CTM may be prohibited under the civil, administrative or criminal law of the Member States. The underlying rationale of the absolute ground for refusal in Art. 7 (1)(f) is thus not to filter out signs whose commercial use must be prevented by all means. Rather, the purpose of this provision is to prevent signs which are contrary to public policy or accepted principles of morality from enjoying the privileges of trade mark registration.328 As rightly stated by the Grand Board, the organs of government and public administration should not positively assist people who wish to pursue their business objectives by means of trade marks that are contrary to certain basic values of civilised society.329 The terms public policy and accepted principles of morality have to be seen as 139 Community law concepts, to be construed from the EU perspective.330 This does not mean, however, that the assessment of whether or not a sign is contrary to public policy or morality would be the same throughout the Community. On the contrary, due to the different linguistic, cultural and social backgrounds of more than 500 million EU citizens,331 a sign may be found to be contrary to principles of morality in one part of the EU, but perceived as perfectly harmless in others. This is of particular relevance with regard to signs that are based on terms or indications that have a specific meaning in languages or dialects that are understood only in certain linguistic areas.332 This is where Art. 7 (2) comes into play. The obstacle set out in Art. 7 (1)(f) does not require a breach 328 OHIM Dec. of 6.7.2006 (Grand Board) – R 495/2005-G – SCREW YOU, mn. 13; s. also GC Case T140/02 Sportwetten GmbH v OHIM [2005] ECR II-03247, mn. 35: therefore, an application for invalidity concerning the trade mark ‘Intertops’ under (f) was rightly rejected because the alleged breach of public policy – in the case in question the alleged lack under German law of the necessary permission to operate games of chance – had no influence on the assessment of whether the sign itself was contrary to public policy or accepted principles of morality. 329 S. Grand Board, ibid. 330 Likewise v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 9 (b) 331 S. OHIM website under https://oami.europa.euÕ about OHIM Õ who we are Õ the office. 332 OHIM Dec. of 1.6.2012 – R 254/2012-2 – CURVE, mn. 12, concerning a word taken from the Romanian language; s. also OHIM Dec. of 4.3.1999 – R 147/1998-2 – KALI, mn. 11 et seq. regarding the Greek transliteration of the word ‘Kali’; as to the relevance of dialects spoken only in parts of the EU (northerm parts of Germany and parts of Belgium and the Netherlands), although in the context of the obstacle contained in Art. 7 (1)(b), OHIM Dec. of 11.10.1999 – R 298/1999-3 – Appel, mn. 18.

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CTMR Art. 7

Community Trade Mark Regulation

of Community-wide accepted principles of morality and public policy;333 it suffices that the obstacle obtains in only a relevant part of the Community.334 Consequently, highly offensive or racist signs have rightly been refused registration, although their true meaning – and thus the violation of morality and public order – was understood only in certain language areas.335 140 The absolute ground for refusal in lit. (f) is very broadly worded and hence allows a great deal of room for interpretation. Its judicious application inevitably entails balancing the right of traders to freely choose images and words they want to include in the signs to be registered against the right of the public not to be confronted with offensive, racist, insulting or even threatening trade marks.336 If the provision is construed too widely, so as to cover anything that could be perceived by a section of the public as disturbing or abusive, commercial freedom of expression could be unduly curtailed.337 In this context, it is necessary to have regard to Art. 10 of the European Convention for the Protection of Human Rights and Fundamental Freedoms (ECHR), which guarantees freedom of expression to ‘everyone’, no distinction being made whether the type of aim pursued is profitmaking or not. Therefore, information of purely commercial nature is also covered by Art. 10 ECHR.338 Although it is true that a refusal to register the sign as a trade mark is not a severe intrusion on the right of freedom of expression, as traders could still use signs in commerce without registering them as trade marks, it still represents a restriction of freedom of expression in the sense that economic operators might be unwilling to invest in large-scale promotional activities for signs which are barred from registration because they are regarded as immoral in the eyes of the public.339 The freedom of expression, however, is subject to limitations. Art. 10 (2) ECHR expressly provides that the exercise of freedom of expression, since it carries with it duties and responsibilities, may be subject to restrictions prescribed by law which are necessary in a democratic society, inter alia in the interests of the prevention of disorder or the protection of morals. Therefore, the wording and general objective of the absolute ground for refusal set out in Art. 7 (1)(f) is perfectly consonant with Art. 10 ECHR. 141 On the other hand, the obstacle under lit. (f) must not be construed too narrowly so as to refuse registration only to those signs that violate criminal laws. Such an interpretation would effectively abrogate the Office’s responsibility to secure that the privileges of trade mark protection are not extended to signs which are strongly offensive, disgusting or potentially capable of causing outrage, but whose usage is not actually prohibited under national law. This would be inconsistent with the spirit of the provision. As is made clear by the reference to ‘accepted principles of morality’, the absolute bar contained in lit. (f) clearly imposes an obligation on the examiner to exercise a degree of moral judgment in assessing the eligibility of signs seeking trade mark registration.340 142 The Office therefore has to draw the sometimes fine line between signs that are merely distasteful or irreverent and those that are seriously abusive or deeply offensive. The 333

V. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 9 (b). S. above mn. 39–46. 335 S. OHIM Dec. of 1.6.2012 – Case R 244/2012-2 – CURVE, mn. 11 et seq.: ‘curve’ is apparently a very offensive Romanian word in plural, meaning ‘sluts, whores, prostitutes’; GC Case T-526/09 PAKI Logistics v OHIM [2011] ECR II-00346 (summary publication, full text available at http://curia.europa.eu), mn. 15, 37: the racist meaning of the word ‘paki’ was understood by the English-speaking consumers, and thus in a relevant part of the Community in the sense of Art. 7 (2). 336 OHIM Dec. of 6.7.2006 (Grand Board) – R 495/2005-G – SCREW YOU, mn. 14. 337 Grand Board, ibid, mn. 15. 338 European Court of Human Rights, Dec. of 24.2.1994, 18 EHRR 1 (application No. 15450/89), mn. 35, 36. 339 OHIM Dec. of 6.7.2006 (Grand Board) – R 495/2005-G – SCREW YOU, mn. 15. 340 OHIM Dec. of 6.7.2006 (Grand Board) – R 495/2005-G – SCREW YOU, mn. 18. 334

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Art. 7 CTMR

former category of signs may not have to be refused, whereas CTMs which comprise manifestly vulgar language or display gross obscenity have no place on the register. It cannot be negated that the task to ascertain whether a sign crosses the boundary from being morally questionable to violating accepted principles of morality can be extremely difficult and obviously depends on the point of view of the observer. Some people are easily offended, whereas others are absolutely unshockable. OHIM must examine CTM applications by reference to standards and values of ordinary citizens who fall between those two extremes. The yardstick thus to be used is the perception of a reasonable person with normal levels of sensitivity and tolerance.341 Consequently, signs are not to be refused which only offend a small minority of exceptionally puritanical people; conversely, signs should not be registered simply because they would not upset the equally small minority at the other end of the spectrum that even tolerate gross obscenity and the like. Furthermore, the context in which the sign is likely to be encountered has to be taken into account. It does make a difference whether, for example, a mark is supposed to be used for goods that are sold in sex shops as opposed to signs that are likely to be promoted on prime-time television or displayed in a prominent fashion in shop windows on open streets, etc. In the latter case, a stricter approach may be appropriate, whereas in the former scenarios signs depicting a sexually explicit content such as DICK & FANNY342 or SCREW YOU may be registrable.343 Offensive or blasphemous signs like insults or racist illustrations are excluded from 143 registration as being contrary to accepted principles of morality.344 Likewise, the sign Bin Ladin was rightly deemed to be a violation of public policy because it glorifies terrorism by lacking respect towards the victims of a terrorist.345 Similarly, swear words of a derogatory nature are barred by lit. (f).346 If a sign consists of a word that exhibits a deeply offensive and degrading character 144 from the perspective of the English-speaking public, a violation of public morals or public policy must be assumed even if use that is not offensive is conceivable.347 The CTM as applied for has to be the basis for assessing whether the sign is in contravention of public policy or accepted principles of morality. An overall reading of the various obstacles contained in Art. 7 (1) shows that they refer to the intrinsic qualities of the sign applied for and not to circumstances related to the conduct of the person applying for the trade mark.348 Therefore, the absolute bar in lit. (f) does not cover the situation in which the trade mark applicant acts in bad faith.349 341

OHIM, Grand Board, ibid, mn. 19–21. OHIM Dec. of 25.3.2003 – R 111/2002-4 – DICK & FANNY, despite the fact that in English colloquial language this word combination describes the human genitals. 343 OHIM Dec. of 6.7.2006 (Grand Board) – R 495/2005-G – SCREW YOU, mn. 19, 21, 30: The sign SCREW YOU was consequently allowed registration in respect of ‘condoms, contraceptives, sex toys (vibrators, dolls)’ and ‘artificial breasts’ and ‘breast pumps’ in class 10, provided that the specification of goods is limited to those types that are normally sold exclusively in sex shops. 344 E. g. GC Case T-526/09 PAKI Logistics v OHIM [2011] ECR II-00346 (summary publication, full text available at http://curia.europa.eu), mn. 15, regarding the sign PAKI, which is a denigratory designation for Pakistani people in the English language. 345 OHIM Decisions of 29.9.2004 – R 176 and 177/2004-2 – Bin Ladin (both decisions in the Spanish language) regarding the trade mark Bin Ladin in Latin and Arabic letters; both decisions have been appealed to the EC (Cases T-487 and 488/04, but the CTM applications were withdrawn before the GC could adjudicate). 346 E. g. OHIM Dec. of 1.6.2012 – R 244/2012-2 – CURVE, mn. 11 et seq.: apparently, ‘CURVE’ is a very offensive Romanian word in plural, meaning ‘sluts, whores, prostitutes’. 347 GC Case T-526/09 PAKI Logistics v OHIM [2011] ECR II-00346 (summary publication, full text available at http://curia.europa.eu), mn. 15 et seq. 348 GC Case T-140/02 Sportwetten GmbH v OHIM [2005] ECR II-03247, mn. 27, 28. 349 GC Case T-224/01 Durferrit v OHIM [203] ECR II-01589, mn. 76. 342

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Community Trade Mark Regulation

The sign as applied for has to be assessed as a whole. As a consequence, the CTM ETA Earth to Air Systems, seeking protection for specific heating and cooling units in class 11, was not denied registration, although the abbreviation ‘ETA’ is proscribed as a terrorist organisation by Spanish authorities, the EU, the US and the UN; in light of the English words ‘earth to air systems’ the consumer understands that ‘ETA’ in that particular case refers to the words ‘earth to air’, which are included in the sign below the abbreviation ‘ETA’; therefore, the relevant (Spanish) consumer is likely to recognise the choice of the letters ‘ETA’ in the composite mark as unfortunate, but not as offensive, shocking or abusive.350 The CTM has to be assessed in relation to the goods and services covered by the application. OHIM accepted the mark Fucking Hell as not being contrary to public policy or accepted principles of morality inter alia in respect of clothing (cl. 25) and beer (cl. 32), as the word ‘hell’ is an abbreviated designation for pale beer. Furthermore, the word combination ‘fucking hell’ is not perceived as sending someone to hell, but rather as an interjection which expresses disapproval of something without making clear about what and against whom.351 146 A brief overview of signs that were scrutinised under (f) is shown below: CTMs not contrary to public policy or to accepted principles of morality: 145

147

Type

Nice Classes

Figurative

Mark

Case Number

Authority

9, 16, 41

R 1224/2011-4

OHIM (BoA)

Figurative

11

R 74/2009-2

OHIM (BoA)

Figurative

25, 32, 33

R 385/2008-4

OHIM (BoA)

Word

9, 10, 25, 28, 33

SCREW YOU

R 495/2005-G

OHIM (BoA)

Word

9, 16, 25

Dick & Fanny

R 111/2002-4

OHIM (BoA)

Signs contrary to public policy or to accepted principles of morality: Type

Nice Classes

Mark

Case Number/Application Number

Authority

Word

25, 32, 33, 43

FICKEN

T-52/13

GC

Figurative

25, 32, 33, 35

T-54/13

GC

350

OHIM Dec. of 29.1.2009 – R 74/2009-2 – Earth to Air Systems v OHIM, mn. 9, 10. OHIM Dec. of 21.1.2010 – R 285/2008-4 – Fucking Hell, mn. 5, 10; the BoA also took into account that ‘Fucking’ is the name of a town in Austria. 351

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Art. 7 CTMR

Absolute grounds for refusal Type

Nice Classes

Mark

Case Number/Application Number

Authority

Word

11

CURVE 100

R 254/2012-2

OHIM (BoA)

Slogan

9, 41, 45

HOW TO MAKE MONEY SELLING DRUGS

R 2052/2011-5

OHIM (BoA)

Word

6, 20, 37, 39

PAKI

T-526/09

GC

Word

9, 16, 25, 38, 41

CRIME PAYZ

010975217

OHIM (Examiner)

Word

10

AIRCURVE

012042487

OHIM (Examiner)

VII. Deceptive trade marks (lit. g) Pursuant to Art. 7 (1)(g), trade marks are excluded from registration which are of 148 such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services covered by the application. Deceptive usage of a trade mark by its proprietor or a third party can be successfully attacked by competitors as a misleading advertisement under the unfair competition regimes of the Member States. The underlying objective of the ground for refusal laid down in lit. (g) sets in earlier: such signs are barred from registration whose deceptive nature arises already objectively from the trade mark itself in respect of the goods/services seeking protection. In other words, the obstacle contained in lit. (g) presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived.352 In order to fall foul of the law under lit. (g), the sign must contain an objective indication of characteristics of the goods or services that is clearly in contrast to the classification contained in the CTM application, assuming that the mark would be used as filed for the goods and services claimed.353 This ground for refusal is not applicable, however, if and insofar there is a possible non-deceptive way of usage for a category of goods/ services embraced by the application.354 This obstacle is applicable, on the other hand, if the mark applied for clearly contradicts the list of goods and services as reflected in the application.355 In assessing the deceptive nature of a CTM for which protection is sought, tribute has to be paid to the perception of the targeted public. In light of these principles, intrinsic deceptiveness was confirmed for the sign WINE 149 OH! in relation to the goods ‘mineral and aerated waters and other non-alcoholic drinks’, although the BoA emphasised that the term ‘OH!’ only reinforces the contradiction on account of which it is deceptive, namely that a product that is not wine is presented to the consumer as wine.356 For similar reasons, the sign Tea by The´ in 352 CJ Case C-259/04 Elizsabeth Florence Emanuel v Continental Shelve 128 Ltd. [2006] ECR I-03089, mn. 47. 353 OHIM Dec. of 7.3.2006 – R 1074/2005-4 – WINE OH!, mn. 19. 354 OHIM Dec. of 7.3.2006 – R 1074/2005-4 – WINE OH!, mn. 19. 355 OHIM Dec. of 13.9.2000 – R 422/1999-1 – Titan, mn. 18; OHIM Dec. of 7.3.2006 – R 1074/2005-4 – WINE OH!, mn. 19. 356 OHIM Dec. of 7.3.2006 – R 1074/2005-4 – WINE OH!, mn. 22–24; the mark was already, however, found not to be deceptive in respect to goods and services claimed in classes 9, 25 and 43.

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CTMR Art. 7

Community Trade Mark Regulation

relation to goods not containing any tea was denied registration.357 Likewise, the deceptiveness of the mark International Star Registry was affirmed in relation to goods and services in classes 9, 16 and 41 ‘relating to astronomy and related topics’, as the sign is likely to mislead consumers into believing that the organisation which uses the mark is an authoritative body empowered to give names to stars.358 150 In contrast, if and insofar as non-deceptive use of the sign is conceivable, intrinsic deceptiveness has to be denied. Consequently, a trade mark consisting of a name of a fashion designer who originally personified the goods bearing that mark was not found to be liable to deceive the public, because the name in itself could not be regarded as being of a deceptive nature. The fact that the sign might be used in a fraudulent manner, and such conduct might be prohibited under unfair competition laws, does not affect the trade mark itself and, as a consequence, its prospects of being registered.359 Similarly, the aptitude of an actual deceit or a sufficiently serious risk of such deceit was rejected with regard to the sign E´cole du Ski Français as the sign in itself does not necessarily convey the message that the ski school in question is under the control of an official French authority.360 Furthermore, if the target public recognises subtle irony contained in a sign, the mark may be registered although – pursuant to its literal meaning – the sign could be potentially perceptive. Hence, the sign Metal Jacket was found eligible to be registered as a trade mark for (non-metallic) jackets.361 151 An overview of the registration practice of OHIM and the courts concerning the obstacles contained in lit. (g) is presented below: CTMs not found to be deceptive:

152

Type

Nice Classes

Mark

Case Number

Authority

Word

25

RUGBY

R 39/2012-2

OHIM (BoA)

Figurative

25, 28, 41

T-41/10

General Court

Case Number

Authority

R 426/2012-5

OHIM (5th Board of Appeal)

Signs refused because of deceptiveness: Type

Nice Classes

Figurative

30, 32

Mark

357

OHIM Dec. of 13.6.2012 – R 426/2012-5 – Tea by The´, mn. 16. OHIM Dec. of 4.4.2001–R 468/1999-1 – International Star Registry, mn. 24, 25; the sign was, however, considered eligible for registration in respect of advertising services in class 35. 359 CJ Case C-259/04 Elizabeth Florence Emanuel v Continental Shelves 128 Ltd. [2006] ECR I-03089, mn. 20, 50. 360 GC Case T-41/10 E ´ cole du Ski Internationale v OHIM [2011] ECR II-00126 (summary publication, decision available – only in the French language – at http://curia.europa.eu), mn. 49, 50. 361 OHIM Dec. of 23.10.2002 – R 314/2002-1 – Metal Jacket; agreeing Eisenfu ¨ hr in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 244. 358

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Absolute grounds for refusal

Art. 7 CTMR

Type

Nice Classes

Mark

Case Number

Authority

Word

32

WINE OH!

R 1074/2005-4

OHIM (4th Board of Appeal)

Word

9, 16, 41

INTERNATIONAL STAR REGISTRY

R 468/1999-1

OHIM (4th Board of Appeal)

VIII. Armorial bearings, flags and other State emblems (lit. h) 1. General; objective of Art. 6ter PC Under Art. 7 (1)(h), trade marks which have not been authorised by the competent 153 authorities are barred from registration and are to be refused pursuant to Art. 6ter of the Paris Convention. By reference to Art. 6ter PC, armorial bearings, flags and other State emblems, as well as official signs and hallmarks indicating control and warranty, are excluded from registration. The most important text passages of Art. 6ter PC, which are of relevance to the obstacles contained in Art. 7 (1)(h) and (i), read as follows: (1)(a) The countries of the Union agree to refuse or to invalidate the registration, and to 154 prohibit by appropriate measures the use, without authorization by the competent authorities, either as trade marks or as elements of trade marks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view. (b) The provisions of subparagraph (a), above, shall apply equally to armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations of which one or more countries of the Union are members, with the exception of armorial bearings, flags, other emblems, abbreviations, and names, that are already the subject of international agreements in force, intended to ensure their protection. (c) No country of the Union shall be required to apply the provisions of subparagraph (b), above, to the prejudice of the owners of rights acquired in good faith before the entry into force, in that country, of this Convention. The countries of the Union shall not be required to apply the said provisions when the use or registration referred to in subparagraph (a), above, is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization. (2) Prohibition of the use of official signs and hallmarks indicating control and warranty shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or a similar kind. (3)(a) For the application of these provisions, the countries of the Union agree to communicate reciprocally, through the intermediary of the International Bureau, the list of State emblems, and official signs and hallmarks indicating control and warranty, which they desire, or may hereafter desire, to place wholly or within certain limits under the protection of this Article, and all subsequent modifications of such list. Each country of the Union shall in due course make available to the public the lists so communicated. Nevertheless such communication is not obligatory in respect of flags of States.

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CTMR Art. 7

Community Trade Mark Regulation

(b) The provisions of subparagraph (b) of paragraph (1) of this Article shall apply only to such armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations as the latter have communicated to the countries of the Union through the intermediary of the International Bureau. (…) (8) Nationals of any country who are authorized to make use of the State emblems, signs, and hallmarks, of their country may use them even if they are similar to those of another country.362 (…) The underlying objective of the absolute bar to registration set out in lit. (h) is twofold. First, it safeguards the right of the respective States to control the use of the symbols of their sovereignty. Second, it prevents that the public is misled as to the origin of the goods or services for which such signs are used.363 By virtue of Art. 6ter (1)(b) PC, this protection is extended to armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations. 156 The essential functions which may be attributed to a State emblem differ considerably from those of trade marks. Official emblems and escutcheons serve the purpose of identifying a State and representing its sovereignty and unity, whereas the essential function of a trade mark is to guarantee the identity of the origin of the marked product or service to the consumer or end-user. The absolute bars laid down in Art. 6ter PC, incorporated into Art. 7 (1) CTMR by reference, pay tribute to this discrepancy between the essential function of trade marks and those of State emblems.364 Those differences between trade marks and State emblems – most notably that the latter cannot be declared invalid, the duration of their protection is not limited and their proprietor cannot be deprived of his rights – have to be borne in mind when applying the various grounds of refusal referred to in lit. (h). For example, even if authorization of the competent authority is given and thus the sign can be registered as a trade mark, the owner does not obtain exclusive rights as to the element containing the official emblem, as can be inferred from Art. 6ter (8) PC.365 155

2. Equal application to service marks 157

The provision of Art. 7 (1)(h) applies in equal measure to trade mark application for goods and services. This seems to be self-evident, but merits particular mention. Indeed, various provisions of the Paris Convention distinguish between ‘trade marks’ which, as is apparent from Art. 7 PC, are registered for goods and as ‘service marks’. Art. 6ter PC, referenced in Art. 7 (1)(h) CTMR, refers only to trade marks, i. e. marks for goods. In fact, based on this wording, the GC concluded that the prohibition of registration and use established by Art. 6ter PC would not affect service marks.366 The CJ rightly took a different view. It emphasised that the body of relevant Community law does not distinguish, in general, between trade marks for goods and service marks. Furthermore, the mere fact that some obstacles contained in Art. 7 (1), such as the 362

The full text of Art. 6ter Paris Convention is available at the website www.wipo.org. GC Case T-127/02 Concept v OHIM (ECA) [2004] ECR II-01113, mn. 39. 364 CJ Joint Cases C-202/08 P and C-208/08 P American Clothing v OHIM (MAPLE LEAF) [2009] ECR I-06933, mn. 39 et seq. with a quite informative analysis. 365 Rightfully stressed by v. Kapff, in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 11 (b). 366 GC Case T-215-06 American Clothing v OHIM [2008] ECR II-00303, mn. 26–33 (decision annulled by CJ). 363

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Absolute grounds for refusal

Art. 7 CTMR

grounds for refusal laid down in lit. (e), (j) and (k), restrict their scope of application to certain types of goods cannot call into question that the provisions of the CTMR as a whole apply without distinction to trade marks for goods and service marks. It follows that such a finding must apply to the obstacle contained in lit. (h), which does not contain any express limitation of the marks covered by it. This reading is not contradicted by the wording of Art. 6ter PC, as the reference in Art. 7 (1)(h) is intended solely to determine the type of signs which must be refused registration and not to restrict the scope of the provision.367 That interpretation of the bar in lit. (h) finds further support by the wording of Art. 7 (1)(i), whose scope of application is analogous to that of lit. (h), and which applies to trade marks for goods and service marks alike.368

3. Official emblems covered by Art. 6ter (1)(a) and (b) PC The types of signs that are barred from registration under Art. 7 (1)(h) CTMR are 158 listed in Art. 6ter PC. Art. 6ter protects the armorial bearings, flags, and other official emblems of States that are parties to the Paris Convention, as well as official emblems, abbreviations and names of international intergovernmental organisations (IGOs), against unauthorised use as trade marks. Although there is a considerable overlap between the two types of protected flags, State emblems and abbreviations, there are important differences. Art. 6ter (1)(a) PC is designed to prevent registration and use of marks which are identical to State emblems or display a particular similarity to them. Under Art. 6ter (1)(b) PC, this protection is extended to armorial bearings, flags, other emblems of IGOs, including abbreviations and names. This special protection is not ‘automatic’. Instead, for the flags and symbols of 159 international IGOs and be protected under Art. 6ter (1)(b) PC, they must be communicated to the International Bureau of WIPO and incorporated in ‘The List of State Emblems’.369 Information for States and international IGOs wishing to avail themselves of Art. 6ter PC is available on WIPO’s website.370 WIPO maintains a special database for the numerous signs that enjoy protection under Art. 6ter PC. The signs for which this special Art. 6ter protection is sought are published twice a year via the WIPO express database.371

4. Criteria for assessment The protection of emblems under Art. 6ter PC is very broad. As is made clear by its 160 wording, the provision of Art. 6 (1)(a) PC does not prohibit the registration and use of a State emblem only as a trade mark, but also as an element of a trade mark. Moreover, the last part of this provision reinforces the broad protection granted to State emblems that forbids (heraldic) imitations of the emblem in addition to prohibiting its exact 367 CJ Joint Cases C-202/08 P and C-208/08 P American Clothing v OHIM (MAPLE LEAF) [2009] ECR-I 06933, mn. 71–78; OHIM Dec. of 16.12.2009 – R 178/2008-4 – IQNet (EUROPEAN EMBLEM), mn. 12, 13. 368 CJ Joint Cases C-202/08 P and C-208/08 P American Clothing v OHIM (Maple Leaf) [2009] ECR-I 06933, mn. 79, 80. 369 OHIM Examination Guidelines, part B, section 4 (absolute grounds for refusal and Community collective marks), p. 23, mn. 2.8.1.2.; s. also the unequivocal wording of Art. 6ter (3)(b) PC. 370 S. http://www.wipo.int/article6ter/en Õ procedure for states and Õ procedure for IGOs, respectively. 371 Signs can be searched and downloaded via the straight forward and instructive WIPO database, http://wipo.int/article6ter/en Õ Article 6ter Express Database.

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CTMR Art. 7

Community Trade Mark Regulation

replication.372 There are thus, strictly speaking, four different scenarios that may lead to a refusal of a trade mark under Art. 7 (1)(h) CTMR in conjunction with Art. 6ter PC: (i) identical reproduction of an official emblem (ii) display of the heraldic expression of a State emblem, (iii) the mark seeking protection includes as an element an identical replication of an official emblem or (iv) the mark incorporates an imitation of a protected emblem, abbreviation or name. 161 Consequently, the obstacle under lit. (h) applies if a single element of the mark in question represents an emblem or an imitation thereof from a heraldic point of view. For that assessment, it is not necessary to examine the overall impression produced by the mark.373 It is therefore irrelevant that the mark at issue contains word elements, additional images and/or abbreviations as this does not preclude the application of Art. 6ter PC.374 The decisive question is thus simply whether the mark in question contains an element that may be seen as a protected State emblem or ‘any imitation from a heraldic point of view’, Art. 6ter (1)(a) PC.375 In order to determine whether the trade mark contains, possibly as a part of a compound mark, an imitation from a heraldic point of view, the heraldic description of the emblem in question must be taken into account.376 A mere geometric description, on the other hand, is not decisive, so slight discrepancies between the trade marks applied for and the protected emblem do not suffice. 162 Graphic conformity from a heraldic perspective does not require an exact reproduction of the State emblem in question.377 As a consequence, a trade mark which does not identically reproduce a State emblem can nevertheless be barred by Art. 7 (1)(h) CTMR where it is perceived by the relevant public as imitating such an emblem. Regard must be had to the fact that differences that might be detected by a specialist in heraldic art between the trade mark applied for and the State emblem in question will not necessarily be perceived by the average consumer.378 The perception of the relevant public plays a decisive role in the examination of the absolute ground for refusal under Art. 7 (1)(h).379 Obviously, if the category of goods and services in question is targeted to professionals, the relevant consumer or end-user can be expected to be more knowledgeable than the general public at large.380 372 Stressing this broad scope of protection of States emblems, e. g. CJ Joint Cases C-202/08 P and C208/08 P American Clothing v OHIM (MAPLE LEAF) [2009] ECR-I 06933, mn. 48; GC Case T-215-06 American Clothing v OHIM [2008] ECR II-00303, mn. 60; GC Case T-413/11 WELTE WENU v OHIM [2013] (not yet published in the ECR, decision available in the German language at http://curia.europa.eu), mn. 36. 373 OHIM Dec. of 6.3.2013 – R 1296/2011-4 – EU v 3D Music (EUROPEAN DIAMONDS), mn. 19. 374 GC Case T-41/10 E ´ cole de ski internationale v OHIM [2011] (published in the ECR, decision available at http://curia.europa.eu), mn. 21; GC Case T-413/11 WELTE WENU v OHIM [2013] (not yet published in the ECR, decision available in the German language at http://curia.europa.eu), mn. 36; CJ Joint Cases C-202/08 P and C-208/08 P American Clothing v OHIM (MAPLE LEAF) [2009] ECR-I 06933, mn. 47, 48; OHIM Dec. of 6.3.2013 – R 1296/2011-4 – EU v 3D Music (European Diamonds), mn. 19. 375 As the deliberations of the Conference of Lisbon held in 1958 for the purpose of a revision of the Paris Convention reveal, it was discussed whether the confinement of the protection granted by Art. 6ter (1)(a) to imitations ‘from a heraldic point of view’ should be abandoned, which, however, never materialised; s. Acts of the Conference of Lisbon, pp. 129, 131, 139–140; GC Case T-215/06 American Clothing v OHIM [2008] ECR II-00303, mn. 38. 376 E. g. GC Case T-127/02 Concepts v OHIM (ECA) [2004] ECR II-01113, mn. 42 et seq. 377 CJ Joint Cases C-202/08 P and C-208/08 P American Clothing v OHIM (Maple Leaf) [2009] ECR-I 06933, mn. 48–50; GC Case T-413/11 WELTE WENU v OHIM [2013] (not yet published in the ECR, decision available in the German language at http://curia.europa.eu), mn. 37, 38; GC Case T-127/02 Concepts v OHIM (ECA) [2004] ECR II-01113, mn. 44. 378 CJ Joint Cases C-202/08 P and C-208/08 P American Clothing v OHIM (Maple Leaf) [2009] ECR-I 06933, mn. 51. 379 As to the relevant public, s. above mn. 23–26. 380 OHIM Dec. of 16.12.2009 – R 178/2008-4 – IQNet (European Emblem), mn. 19.

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For the assessment from the heraldic perspective, it is irrelevant whether the trade mark seeking protection differs from the protected emblem in its dimensions, proportions and/or colours, as long as the relevant public recognises the mark as an imitation of the respective emblem.381 As regards emblems that are notified in a certain colour combination, it should be kept in mind that such emblems are often reproduced in black and white.382 Likewise, differences in inscriptions in the armorial bearings in question are of no relevance, as long as they do not endow the trade mark seeking protection with a different heraldic meaning.383 Where the heraldic description, as it is often the case, does not provide detailed particulars regarding the design and the specific element which constitutes the emblem, many artistic interpretations of one and the same emblem are possible.384 By way of example, on many occasions trade marks were caught by the obstacle in lit. (h) as they were found to be imitations of the European Emblem,385 despite graphic differences and/or additional elements contained in the respective applications (displayed below in the chart under mn. 170).386 The starting point of the analysis was the heraldic description of the symbol of the Council of Europe, i. e. ‘on an azure field a circle of twelve golden mullets, their points not touching’. In all of the rejected CTMs, the representation of the sign in question – the circle of twelve mullets – was perfectly recognizable, with all the mullets pointing upwards, having the same size and being uniformly spaced.387 Consequently, despite noticeable differences, those signs were seen as imitations from a heraldic point of view. Conversely, as OHIM held in another decision involving the European emblem, the mere fact that one of the letters of the word/device mark IQNet was constructed from stars, especially without any further emphasis or colour effects (by usage of the azure colour or similar blue hues), is not enough to create an imitation of the European emblem (depicted below mn. 169).388 Because of its position in the compound mark and its graphic representation, the relevant public would perceive the star motif in the sign IQNet as the letter ‘Q’ rather than a replication or imitation of the circular star design of the European emblem, so that the mark does not imitate the emblem from a heraldic point of view.389 For the assessment of an imitation of the heraldic connotation, it has to be borne in mind that armorial bearings and other State emblems frequently comprise common 381

GC Case T-127/02 Concepts v OHIM (ECA) [2004] ECR II-01113, mn. 46–49. GC Case T-127/02 Concepts v OHIM (ECA) [2004] ECR II-01113, mn. 46, with regard to the azure background and the golden colour of the stars of the European emblem. 383 S. OHIM Dec. of 23.7.2009 – R 1361/2008-1 – Ernst August von Hannover v OHIM, mn. 17 et seq. (confirmed by GC Case T-397/09 Ernst August Prinz von Hannover v OHIM [2011] ECR-II-00159), where the mark of the applicant, consisting of his family’s armorial bearing, contained the words ‘Suscipere et finire’, whereas the protected emblem contained the saying ‘Honi soit qui mal y pense. Dieu et mon droit’. 384 GC Case T-215-06 American Clothing v OHIM [2008] ECR II-00303, mn. 71. 385 Regarding the flags and symbols relating to the EU, the most relevant are protected by the Council of Europe, e. g. 6ter No: QO188 and 6ter No: QO 189; various symbols containing the E symbol are protected by the European Central Bank, i. e. 6ter No: QO 852 and QO 867; available at the WIPO website www.wipo.int Õ Article 6ter Structured Search. 386 S. e. g. GC Case T-127/02 Concepts v OHIM (ECA) [2004] ECR II-01113; GC Case T-334/03 Deutsche Post EURO EXPRESS v OHIM [2005] ECR II-00065. 387 S. e. g. OHIM Dec. of 6.3.2013 – R 1296/2011-4 – EUROPEAN DIAMONDS, mn. 15 et seq., mn. 20, where only eleven mullets were visible; considering, however, that those were set in the same position, spaced regularly in a circle, the missing mullet was most certainly hidden behind the word incorporated in the sign which began in the middle of the circle and thus covered one mullet. 388 OHIM Dec. of 16.12.2009 – R 178/2008-4 – IQNet (European Emblem). 389 OHIM Dec. of 16.12.2009 – R 178/2008-4 – IQNet (European Emblem), mn. 22. 382

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163

164

165

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CTMR Art. 7

Community Trade Mark Regulation

symbols, such as an eagle, a lion, unicorns,390 the sun or stars, like in the European emblem. Art. 7 (1)(h), in conjunction with Art. 6ter PC, does by no means prohibit the use of such symbols per se. The use of such elements and symbols is forbidden only if such usage reproduces the heraldic characteristics of the emblem concerned; as a general rule, however, the symbol as such – the stars, unicorns, the shape of a leaf,391 etc. – may be freely used in the composition of trade marks. It is thus up to the applicant to secure sufficient modifications of the pictorial symbols in question, which is key to trade mark registrability.392 167 It is important to note the difference in the scope of protection of the bars set out in lit. (a) and (b) of Art. 6ter (1) PC. The former provides for protection that is absolute in that it is not subject to the condition that there be a possibility of error on the part of the public concerned as regards the origin of the goods and services designated by the mark applied for,393 whereas the inclusion of signs protected for IGOs under Art. 6ter1 (b) PC is prohibited only if such usage/inclusion in the mark at issue insinuates the existence of a connection between the user/applicant and the respective organisation.394 The scope of protection afforded by Art. 6ter (1)(a) PC is thus broader than that provided for under lit. (b). Office practice therefore rightly tends to be strict in this respect. To illustrate this, a figurative sign which is nearly identical with a national emblem (of the United Kingdom) was deemed unregistrable although it could be proven that, historically, the emblem was derived from the trade mark applicant’s family code of arms.395 168 As the protection is absolute under Art. 6ter (1)(a), it is not necessary to refer to goods and services embraced by the CTM application in question.396 In contrast, for the assessment under Art. 6ter (1)(b) in conjunction with the second sentence of Art. 6ter (1)(c) PC the goods and services covered by the application have to be taken into account, as they are decisive for determining the target public.397 Under the second sentence of Art. 6ter (1)(c) PC, the inclusion of emblems of IGOs is eligible for registration of a mark if the sign is not of such a nature as to suggest to the public that a connection exists between the organisation concerned and armorial bearings, flags, emblems, abbreviations and names or if such registration is probably not of such a nature as to mislead the public as to an existence of a connection between the user and the organisation.398 This, in turn, leads to the following two possible scenarios: if the CTM applied for merely consists of the protected emblem protected for an intergovern390 OHIM Dec. of 23.7.2009 – R 1361/2008-1 – Suscipere et finire (figurative mark in colour), mn. 19, confirmed by GC Case T-397/09 Ernst August Prinz von Hannover v OHIM [2011] ECR-II-00159, mn. 5 et seq., with regard to the family code of arms of the applicant’s clan. 391 In the Maple Leaf decisions of the GC and CJ, the applicant’s taking of the Canadian State emblem was considered to be too close, GC Case T-215-06 American Clothing v OHIM [2008] ECR II-00303, mn. 38 et seq.; CJ Joint Cases C-202/08 P and C-208/08 P American Clothing v OHIM (Maple Leaf) [2009] ECR-I 06933. 392 S. e. g. OHIM Dec. of 16.12.2009 – R 178/2008-4 – IQNet (European Emblem), mn. 5 et seq.; another example of sufficient modifications can be found in the Dec. of OHIM of 28.6.2006 – R 1444/2005-2 – Device of a Shield (figurative mark); s. further examples in the overview below, mn. 169. 393 GC Case T-215-06 American Clothing v OHIM [2008] ECR II-00303, mn. 77; OHIM Dec. of 23.7.2009 – R 1361/2008-1 – Suscipere et finire (figurative mark in colour), mn. 15. 394 As is made clear by the second sentence of Art. 6ter (1)(c) PC; s. GC Case T-215-06 American Clothing v OHIM [2008] ECR II-00303, mn. 77; OHIM Dec. of 23.7.2009 – R 1361/2008-1 – Suscipere et finire (figurative mark in colour), mn. 15; s. also v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 11 (g). 395 GC Case T-397/09 Ernst August Prinz von Hannover v OHIM [2011] ECR II-00159, mn. 21 et seq. 396 OHIM Dec. of 23.7.2009 – R 1361/2008-1 – Ernst August von Hannover v OHIM, mn. 15. 397 S. in detail on the relevant public the remarks above mn. 23–26. 398 Using this ‘test’ as a starting point for the analysis under Art. 6ter (1)(b), (c) PC, s. GC Case T-127/ 02 Concepts v OHIM (ECA) [2004] ECR II-01113, mn. 63.

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Art. 7 CTMR

Absolute grounds for refusal

mental organisation, or an imitation thereof, without any further elements, it is almost inevitable that the public will either be misled as to the origin of the goods/services bearing that mark, or at least assume that a connection exists between the organisation and the applicant; this may be different in composite marks, which are composed of various elements. In the latter scenario it has to be assessed whether it is likely that the relevant public would be confused as to the origin of the goods/services or whether a connection between the intergovernmental organisation in question and the applicant is suggested. Word or figurative elements of a compound mark that suggest an ‘official’ meaning such as ‘Euro’ or ‘European’ are likely to reinforce the existence of such a connection rather than preventing confusion on the part of the public. Therefore composite marks with the additional text ‘ECA’, ‘European Diamonds’ or ‘Member of E euro experts’ were rightly refused protection because they aroused associations with European institutions.399 The following is a non-exhaustive list of examples of signs that were barred under lit. 169 (h) and those that were not rejected: Trade marks not violating Art. 6ter Paris Convention: Type

Nice Classes

Figurative

Mark

Case Number/CTM

Authority

21

R 2075/2013-4

OHIM (BoA)

Figurative

42

R 178/2008-4

OHIM (BoA)

Figurative

9, 16, 25, 41

005639984

OHIM (Examiner)

Signs in violation of Art. 6ter Paris Convention: Type

Nice Classes

Figurative

9, 16, 35, 36, 39, 41–45

Mark

170 Case Number

Authority

T-3/12

GC

399 GC Case T-127/02 Concepts v OHIM (ECA) [2004] ECR II-01113, mn. 46 et seq.; OHIM Dec. of 6.3.2013 – R 1296/2011-4 – EU v 3D Music (European Diamonds), mn. 15 et seq.; OHIM Dec. of 5.10.2011 – R 1804/2010-2 – Member of E euro experts (confirmed by GC Case T-3/12), mn. 37 et seq.

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CTMR Art. 7 Type

Nice Classes

Figurative

Community Trade Mark Regulation Mark

Case Number

Authority

9, 41, 42

T-127/12

GC

Figurative

7, 12

T-413/11

GC

Figurative

32, 35, 41, 43

R 1296/2011-4

OHIM (BoA)

Figurative

Multiple classes

R 1361/2008-1 (confirmed by T-397/09)

OHIM (BoA)

IX. Other emblems or escutcheons of public interest (lit. i) The special protection for armorial bearings, flags and other State emblems or abbreviations and names under Art. 7 (1)(h) CTMR, in conjunction with Art. 6ter (1)(a) and (b) PC, respectively, is reserved to contracting parties of the Paris Convention. By virtue of Art. 7 (1)(i) CTMR, however, badges, emblems or escutcheons other than those covered by Art. 6ter PC that are of particular public interest are barred from registration unless the consent of the competent authority has been given. 172 Art. 7 (1)(i) does neither expressly prescribe by its wording nor through reference to Art. 6ter PC that the protection is limited to identical replication of the badges, emblems or escutcheons in question, but also extends to imitations thereof. In order not to deprive the obstacle in lit. (i) of essentially all substance, this absolute ground for refusal is to be interpreted as also encompassing marks which incorporate modifications of the underlying emblem that have to be regarded as imitations ‘from a heraldic point of view’, similar to the analysis under lit. (h) in conjunction with Art. 6ter (1)(a), (b) PC.400 It 171

400 To that extent s. GC Case T-3/12 Heinrich Kreyenberg v OHIM (Member Of E euro experts), mn. 34, with regard to the Euro sign E.

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Absolute grounds for refusal

Art. 7 CTMR

should be noted, though, that this view is apparently not shared by the Office. At least in the current version,401 the OHIM Examination Guidelines on absolute grounds for refusal state that under Art. 7 (1)(i) protection of the emblem in question will be afforded only when the symbol is identically reproduced or included in the CTM application, so that – according to this view – no protection is given to heraldic imitations.402 Furthermore, the word ‘include’ in Art. 7 (1)(i) indicates, similar to the wording in 173 Art. 6ter (1)(a) PC, that this obstacle is not restricted to trade marks which consist solely of the protected emblem in question, but also extends to the inclusion of the protected badges, emblems or escutcheons, or imitations thereof, as elements of a compound mark. Only such a broad interpretation of Art. 7 (1)(i) is consonant with the ratio legis of this provision, which is to ensure the most comprehensive scope of protection for the respective emblems.403 In light of this public interest, there is no need for a narrow application of the provision. Only identical replications or imitations of badges, emblems or escutcheons which are 174 of ‘particular public interest’ are barred from registration. It is almost impossible to gauge precisely what degree of heightened interest must be established for an emblem not covered by Art. 6ter PC to enjoy protection under Art. 7 (1)(i). In this respect, a sound yardstick that reflects the objective of the provision and the importance of the emblem in question is to be used. Sufficient public interest was, by way of example, found in relation to the Maltese Cross of the Order of Malta, which maintains diplomatic relations with more than 100 states and exchanges ambassadors with the EU.404 Likewise, internationally recognised signs such as the Red Cross or the Euro sign are protected under lit. (i).405 Another example of a symbol of particular public interest is the Olympic symbol, consisting of five interlaced rings in the colours blue, yellow, black, green and red, arranged in that order from left to right. Conversely, the recycling symbol was not considered to be protected under lit. (i) because it serves merely commercial purposes.406 The protection of badges, escutcheons and emblems under lit. (i) is not granted 175 without limitations. The wording itself does not provide any express restrictions. The taxonomy of the various obstacles contained in Art. 7 (1) CTMR, however, seems to indicate that the scope of protection under lit. (i) may not exceed that under lit. (h) in conjunction with Art. 6ter (1)(b) PC in relation to emblems, abbreviations and names of intergovernmental organisations. Therefore, the restriction contained in the second sentence of Art. 6ter (1)(c) PC has to be taken into account for the analysis under lit. (i) as well.407 It should be assumed that if the Community legislature wished to grant a 401 Over the course of 2014, the current Manual will be converted into Examination Guidelines and the Manual will cease to exist; it remains to be seen whether this particular aspect will be amended; s. examination, part B, absolute grounds for refusal, https://oami.europa.eu/ohimportal/en/manual/of/trade/ mark/practice, last visited on 10.6.2014. 402 OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 38. 403 Rightly pointed out by GC Case T-3/12 Heinrich Kreyenberg v OHIM (Member of E euro experts) [2013] (not yet published in the ECR, available at http://curia.europa.eu, available only in the German language), mn. 35. 404 S. OHIM Dec. of 21.6.2012 – R 863/2011-1 – Malta Cross International Foundation (figurative mark)/Maltese Cross (figurative mark), mn. 16 with further information on ‘The Sovereign Military and Hospitaler Order of Saint John of Jerusalem, of Rhodes and of Malta’. 405 With regard to the E sign, s. GC Case T-3/12 Heinrich Kreyenberg v OHIM (Member of E euro experts) [2013] (not yet published in the ECR, available at http://curia.europa.eu, available only in the German language), mn. 10, 32 et seq.; v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 12. 406 OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, mn. 2.8.3., p. 35. 407 Explicitly emphasising this, GC Case T-3/12 Heinrich Kreyenberg v OHIM (Member Of E euro experts), mn. 37, 38; in that direction CJ Joint Cases C-202/08 P and C-208/08 P American Clothing v OHIM(Maple Leaf) [2009] ECR I-06933, mn. 80.

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Community Trade Mark Regulation

different level of protection to emblems, etc., under lit. (h) on the one hand and badges and escutcheons, etc., under lit. (i) on the other, this would have been reflected in the formulation of both provisions. Consequently, the inclusion of badges, emblems and escutcheons of public interest (or imitations thereof) is impermissible only if the CTM applied for is likely to mislead the public as to the existence of a connection between the applicant and the organisation in question. 176 The absolute ground for refusal under lit. (i) does not apply if the relevant authority has given its consent to the registration of the CTM incorporating the protected emblem. Although it should be self-evident, it has to be made sure that the authorisation from the truly competent authority has been obtained and submitted to OHIM.408 177 The following are – by no means exhaustive – examples of CTMs that were either registered or rejected upon scrutiny under lit. (i): CTMs accepted by OHIM:

178

Type

Nice Classes

Figurative

Figurative

Mark

Case Number/CTM

Authority

8, 11, 12

R 315/2006-1

OHIM (BoA)

21

8918328

OHIM

Case Number

Authority

Signs refused under Art. 7 (1)(i): Type

Nice Classes

Mark

Figurative

35, 36, 45

R 863/2011-1

OHIM (BoA)

Figurative

35, 36

R 190/1999-3

OHIM (BoA)

408 Interestingly enough, in an application regarding the registration of a CTM depicting inter alia the Maltese Cross, the applicant had submitted a copy of a written approval from the wrong – and hence incompetent – authority, s. the interim decision of OHIM of 21.6.2012 – R 863/2011-1 – Malta Cross International Foundation (figurative mark)/Maltese Cross (figurative mark), mn. 2, 10–21.

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Absolute grounds for refusal

Art. 7 CTMR

X. Geographical indications for wines/spirits (lit. j) 1. General Art. 7 (1)(j) sets an absolute bar for registration of CTMs that contain or consist of 179 geographical indications identifying wines or spirits ‘not having that origin’. The provision covers both protected geographical indications (‘PGI’) and protected denominations of origin (‘PDO’). The protection provided for under lit. (j) is absolute as this obstacle applies irrespective of whether the false geographical indication in question is ‘of such a nature as to deceive the public’.409 The obstacle under lit. (j) aims to secure the special protection for PGIs and PDOs 180 under Regulations No 1308/2013410 and No 110/2008. As regards PGIs/PDOs formerly protected under Reg. No 1234/2007, it should be noted that that regulation has been repealed and replaced by Reg. (EU) No 1308/2013 of 17 December 2013, establishing a common organisation of the markets in agricultural products.411 References to the repealed regulation No 1234/2007 are to be construed as references to Reg. 1308/2013.412 The absolute ground for refusal under lit. (k) forms the equivalent for PGIs/PDOs that enjoy special protection for products other than wines and spirits under Reg. No 1151/2012.413 As pointed out above (mn. 13–15), the absolute grounds for refusal listed in Art. 7 (1) 181 are independent of each other and thus must be examined separately. For the scrutiny of CTM applications that consist of or contain protected geographical indications, due consideration must be given to the other obstacles contained in Art. 7 (1). A CTM which consists exclusively of a PGI/PDO for wines or spirits, applied for as an individual trade mark, must be refused under Art. 7 (1)(c) as it can be registered only as a collective mark. Furthermore, a sign which has a recognisable geographical connotation in relation to the goods/services covered by the application, but which does not enjoy special protection granted by specific legislation on PGIs/PDOs or other international agreements must be refused because of deceptiveness under (g) if it is applied for in relation to products that do not come from the place identified by the geographical term in question. For example, a CTM application for a sign containing the term ‘ZURICH’ for watches manufactured in any country other than Switzerland would be objectionable, as the relevant public might make its commercial choice in the erroneous belief that the marked goods were either of Swiss origin or incorporated Swiss technology.414

2. Historical background; TRIPs compliance The CTMR was adopted in its original version on 20 December 1993. Only a few 182 months later, on 15 April 1994, the TRIPs Agreement was signed in Marrakech and approved by Council Decision 94/800/EC of 22 December 1994. Art. 23 (2) of the 409 Expressly emphasised in the 4th recital of the Preamble of Reg. (EC) No 3288/94 of 22.12.1994, by which the obstacle contained in lit. (j) was added to the list of absolute grounds for refusal under Art. 7 (1), OJ L 349/83 of 31.12.1994. 410 Reg. (EU) No 1308/2013 of 17.12.2013 establishing a common organisation of the markets in agricultural products, OJ L 347, 20.12.2013, p. 671; it should be noted that under Art. 230 of Reg. 1308/ 2013, the previous framework under Reg. No 1234/2007 was repealed and replaced by Reg. No 1308/2013. 411 OJ L 347, 20.12.2013, p. 671 et seq. 412 S. Art. 230 (2) of Reg. 1308/2013, in accordance with the correlation table set out in Annex 14 of Reg. 1308/2013. 413 S. in detail the analysis as to Art. 7 (1)(k) below mn. 200 et seq. 414 OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal and Community collective marks, p. 13, mn. 2.7.3.

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CTMR Art. 7

Community Trade Mark Regulation

TRIPs Agreement provides for the refusal or invalidation of trade marks which contain or consist of false geographical indications for wines and spirits. In light of this special protection for geographical indications for wines and spirits, a new absolute ground for refusal was added to Art. 7 (1) as lit. (j).415 183 Art. 23 (1) of the TRIPs Agreement requires its members to prevent use of geographical indications for wines or spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as ‘kind’, ‘type’, ‘style’, ‘imitation’ or the like. Under Art. 23 (2) TRIPs the registration of trade marks which contain or consist of false geographical indications with respect to wines or spirits must be ex officio refused or invalidated. Art. 23 (3) TRIPs extends protection also to homonymous geographical indications under certain conditions. 184 This comprehensive protection of geographical indications for wines and spirits has to be taken into consideration for the analysis under lit. (j). It is true that the provisions of the TRIPs Agreement, as an Annex to the WTO Agreement, are not such as to create rights upon which individuals may rely directly before the courts by virtue of Community law.416 Since the Community is a party to the TRIPs Agreement, however, it is required to interpret its trade mark legislation, as far as possible, in light of the wording and purpose of that agreement.417 As a consequence, OHIM is obliged to apply the obstacle contained in lit. (j) in a manner which is consistent with the protection provided under the TRIPs Agreement, but also with specific EU regulations and international agreements governing protected geographic indications or protected denominations of origin. The Office must, to the extent possible, directly apply the relevant provisions of the specific regulations, taking into account the principle of lex specialis derogat legi generali. As regards Reg. (EC) No 1151/2012 on quality schemes for agricultural products and foodstuffs, which superseded Reg. No 509/2006,418 this rule of lex specialis derogat legi generali is expressly enshrined in Art. 164 CTMR.

3. Protected geographical indications 185

Unlike most of the other absolute grounds for refusal under Art. 7 (1), the special protection provided for by the obstacle contained in lit. (j) relates only to geographical indications identifying wines or spirits. As regards wines, the so-called ‘E-Bacchus’ database,419 which comprises a register of designations of origin and geographical indications protected in the EU in accordance with Reg. No 1308/2013, proves to be a helpful tool;420 this database also lists non-EU countries’ geographical indications and 415 The introduction of the obstacle under lit. (j) as a consequence of Art. 23 (2) of the TRIPs Agreement is explicitly mentioned in the fourth recital of Council Regulation (EC) No 3288/94 of 22.12.1994, amending the CTMR (EC) No 40/94, for the implementation of the agreements concluded in the framework of the Uruguay Round, OJ L 349/83 of 31.12.1994. 416 CJ Joint Cases C-300/98 and C-392/98 Diorand Others [2000] ECR I-11307, mn. 42–44; GC Case T237/08 Abadı´a Retuerta v OHIM (Cuve´e Palomar) [2010] ECR II-01583, mn. 66. 417 CJ Case C-245/02 Anheuser-Busch v Bude ˇjovickyˆ Budvar [2004] ECR I-10989, mn. 42; GC Case T237/08 Abadía Retuerta v OHIM (Cuvée Palomar) [2010] ECR II-01583, mn. 65, 67. 418 Regulation (EU) No1151/2012 of the European Parliament and of the Council of 21.11.2012 on quality schemes for agricultural products and foodstuffs, OJ of 14.12.2012 No L 343, 1 et seq.; s. Art. 58 (1) re. repealed regulations 509 and 510/2006; under Art. 58 (2) references to the repealed regulations shall be construed as references to Regulation 1151/2012. 419 The E-Bacchus database is available at http://ec.europa.eu/agriculture/markets/wine/e-bacchus. 420 Reg. (EU) No 1308/2013 of 17.12.2013 establishing a common organisation of the markets in agricultural products, OJ L 347, 20.12.2013, p. 671; it should be noted that under Art. 230 of Reg. 1308/ 2013, the previous framework under Reg. No 1234/2007 has been repealed and replaced by Reg. No 1308/ 2013.

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Absolute grounds for refusal

Art. 7 CTMR

names of origin protected in the EU in accordance with bilateral agreements on trade in wine concluded between the EU and the respective non-EU countries, and finally contains the traditional terms protected in the EU in accordance with Reg. No 1308/ 2013.421 The geographical indications for spirits are listed in Annex III of Reg.(EC) No 110/ 186 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks.422 Moreover, the European Commission maintains an online database for geographical indications protected in the EU for spirits originating in the Member States and third countries, known as E-Spirit Drinks.423

4. Scope of protection for PGIs/PDOs As mentioned above, Art. 7 (1)(j) must be read in light of the relevant provisions of 187 Community law on determining and protecting geographical indications relating to wines and spirits.424 The EU regulations governing the conflicts between trade marks and PGIs and PDOs are directly applicable and have immediate effect.425 Therefore, as regards wines, the provisions of Art. 102 (1) and 103 (2) of Reg. No 1308/2013 and, in respect of spirits, Art. 23 (1) in conjunction with Art. 16 of Reg. No 110/2008 apply. The protection regimes and the systematic approach under both pieces of legislation are virtually the same and in parts even identically worded. The relevant provisions regarding geographical indications for wines read as follows: 188 Art. 102 (1) of Reg. No 1308/2013: Relationship with trade marks 1. The registration of a trade mark that contains or consists of a protected designation of origin or a geographical indication which does not comply with the product specification concerned or the use of which falls under Article 103 (2), and that relates to a product falling under one of the categories listed in Part II of Annex VII shall be: (a) refused if the application for registration of the trade mark is submitted after the date of submission of the application for protection of the designation of origin or geographical indication to the Commission and the designation of origin or geographical indication is subsequently protected; or (b) invalidated. Art. 103 of Reg. No 1308/2013: Protection 1. A protected designation of origin and a protected geographical indication may be used by any operator marketing a wine which has been produced in conformity with the corresponding product specification. 2. A protected designation of origin and a protected geographical indication, as well as the wine using that protected name in conformity with the product specifications, shall be protected against: 421 The establishment and maintenance of an electronic register for PGIs/PDOs is expressly provided for in Art. 104 of Reg. No 1308/2013. 422 OJ L 39 of 13.2.2008, p. 16 et seq., amended on several occasions, inter alia on the occasion of the accession of Croatia, OJ L 112 of 24.4.2012, p. 10. 423 Available at http://ec.europa.eu/agriculture/spirits. 424 With regard to geographical indications relating to wines, s. GC Case T-237/08 Abadı´a Retuerta v OHIM (Cuve´e Palomar) [2010] ECR II-01583, mn. 74, as to geographical indications relating to spirits s. CJ Joint Cases C-4/10 and C-27/10 Bureau National Interprofessionnel du Cognac (Cognac) [2011] ECR I06131, mn. 40, 41. 425 CJ Joint Cases C-4/10 and C-27/10 Bureau National Interprofessionnel du Cognac (Cognac) [2011] ECR I-06131, mn. 40; OHIM Decision of 2.12.2013 – R 1299/2013-1 – VANA TALLINN (Authentic ESTONIAN LIQUEUR), mn. 15.

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CTMR Art. 7

Community Trade Mark Regulation

(a) any direct or indirect commercial use of that protected name: (i) by comparable products not complying with the product specification of the protected name; or (ii) in so far as such use exploits the reputation of a designation of origin or a geographical indication; (b) any misuse, imitation or evocation, even if the true origin of the product or service is indicated or if the protected name is translated, transcripted or transliterated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’, ‘flavour’, ‘like’ or similar; (c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the wine product concerned, as well as the packing of the product in a container liable to convey a false impression as to its origin; (d) any other practice liable to mislead the consumer as to the true origin of the product. 3. Protected designations of origin and protected geographical indications shall not become generic in the Union within the meaning of Article 101 (1). 189

The special provisions that prohibit the registration of trade marks which conflict with PGIs/PDOs for spirits are inserted below: Art. 23 of Reg. No 110/2008: Relation between trade marks and geographical indications 1. The registration of a trade mark which contains or consists of a geographical indication registered in Annex III shall be refused or invalidated if its use would lead to any of the situations referred to in Article 16. 2. With due regard to Community law, a trade mark the use of which corresponds to one of the situations referred to in Article 16 which has been applied for, registered, or established by use, if that possibility is provided for by the legislation concerned, in good faith within the territory of the Community, before either the date of protection of the geographical indication in the country of origin or before 1 January 1996, may continue to be used notwithstanding the registration of a geographical indication, provided that no grounds for its invalidity or revocation exist as specified by First Council Directive 89/104/ EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks426 or Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark.427 3. A geographical indication shall not be registered where, in the light of a trade mark’s reputation and renown and the length of time it has been used in the Community, registration is liable to mislead the consumer as to the true identity of the product.

190 Art. 16 of Reg. No 110/2008:

Without prejudice to Article 10, the geographical indications registered in Annex III shall be protected against: (a) any direct or indirect commercial use in respect of products not covered by the registration in so far as those products are comparable to the spirit drink registered under that geographical indication or insofar as such use exploits the reputation of the registered geographical indication; 426 OJ L 40, 11.2.1989, p. 1, TMDir amended several times, codified version as Directive 2008/95/EC of 22.10.2008, OJ L 299 of 8.11.2008, p. 25. 427 OJ L 11, 14.1.1994, p. 1, CTMR, amended on several occasions, codified version as Reg. No 207/ 2009 of 26.2.2009, OJ L 78/1 of 24.3.2009.

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Absolute grounds for refusal

Art. 7 CTMR

(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or the geographical indication is used in translation or accompanied by an expression such as ‘like’, ‘type’, ‘style’, ‘made’, ‘flavour’ or any other similar term; (c) any other false or misleading indication as to the provenance, origin, nature or essential qualities on the description, presentation or labelling of the product, liable to convey a false impression as to its origin; (d) any other practice liable to mislead the consumer as to the true origin of the product. It should be noted that, generally speaking, the priority principle applies. Under 191 Art. 102 (1)(a) of Reg. No 1308/2013, registration of trade marks which are in conflict with PGIs/PDOs under that regulation are only refused registration if the trade mark in question was submitted after the date of submission of the application for the respective PGI/PDO. A similar provision is contained in Art. 23 (2) of Reg. No 110/2008, with an exception for trade marks that were applied for in good faith either before the date of protection of the geographical indication in question or before 1 January 1996. Consequently, where a CTM application contains a protected geographical indication 192 and its use would lead to any of the situations referred to in Art. 103 (2) of Reg. No 1308/2013 regarding wines or under Art. 16 of Reg. No 110/2008 with regard to spirits, registration must be refused. The same reasoning applies with regard to protection accorded to PGIs/PDOs under international agreements concluded between the EU and non-EU countries. To determine the precise scope of protection under such international arrangements, OHIM must take into account the specific provisions thereof.428 The explanations below relate only to the protection accorded under the aforementioned EU regulations. The specification of wines and spirits, respectively, in the CTM application must be 193 restricted to the precise geographical origin concerned. By way of example, if the application contains, amongst accompanying distinctive features, the word BORDEAUX and has been applied for in respect of wines (i. e. without further specification as to the exact region), an objection must be raised by OHIM. This objection can be overcome by restricting the list of goods to: ‘wines in conformity with the specifications of the protected designation of origin Bordeaux’.429 Provided that such a specification as to the exact origin is reflected in the list of goods seeking protection, CTMs that comply with the specifications of the PGI/PDO in question may be registered. If the sign in question consists exclusively of the PGI/PDO and the specifications of the respective PGI/PDO are met, the CTM can be registered only as a collective mark.

5. Same type of products; comparable products The absolute ground for refusal under lit. (j) does not apply only to applications that 194 cover the same wines and spirits protected by the PGI/PDO in question, but also where the CTM application covers ‘comparable products’ to those protected under the respective PGI/PDO. In respect of wines, protection of comparable goods is restricted to those contained in Annex Xl Part II of Reg. No. 1308/2013,430 which lists the various categories of ‘grapevine products’, including different types of wines, liqueur wines, sparkling wines and wine-based products, e. g. vinegar and must. The latter are clearly 428 OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal and Community collective marks, p. 40, mn. 2.9.1. 429 OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal and Community collective marks, ibid, p. 4. 430 It should be noted that Annex VII Part II of Reg. No 1308/2013 replaces the equivalent provisions of the previously applicable (now repealed) Annex XIb of Reg. No 1234/2007.

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CTMR Art. 7

Community Trade Mark Regulation

comparable to wines as they are also vineyard products. Consequently, a CTM that conflicts with a PGI/PDO for wines must be refused registration for vinegar (class 30) or must (class 32). 195 With regard to CTM applications containing, consisting of or evoking the geographical name of a PGI/PDO, it must be analysed whether the dissimilar products are comparable to the spirit drink in the meaning of Art. 16 (a) of Reg. No 110/2008. In this respect, the Cognac decision provides some guidance. The CJ deems it reasonable that several non-cumulative indications must be taken into account in order to assess whether the goods (not covered by the geographical indication in question) are comparable and the obstacle contained in (j) thus applies: (i) ‘spirit drinks’ include drinks which have common objective characteristics, such as the use of the same raw materials, the method of elaboration, etc., (ii) ‘spirit drinks’ also encompass products which are consumed, from the point of view of the relevant public, on largely identical occasions and (iii) furthermore, ‘spirit drinks’ include goods that are frequently distributed through the same channels and are subject to similar marketing rules.431 Accordingly, spirits and spirit-based mixtures are comparable products;432 likewise, following the Cognac criteria, vodka and liqueurs, liqueur-based cocktails and drinks have been rightly regarded as comparable.433 Conversely, spirits and fruit juices are not comparable products, so that an apple-based brandy (Calvados) and, for instance, apple juice cannot be considered comparable.434

6. Broad application of lit. (j) The absolute ground for refusal under lit. (j) is to be broadly applied. This follows from the clear and unconditional wording of Art. 16 (b) Reg. No 110/2008 and Art. 103 (2)(b) of Reg. No 1308/2013, which cover not only identical use of the protected geographical indication, but expressly encompass imitations or evocations. Furthermore, as is made clear by both provisions, the mention of the actual origin of the product or the use of the geographical indication in translation, or the addition of expressions such as ‘like’, ‘type’, ‘style’, etc., are to no avail. It is thus established case law that refusal under Art. 7 (1)(j) does not require an assessment of whether the trade mark as a whole is deceptive.435 197 The concept of evocation is to be construed broadly. It covers situations in which the term used to designate a product incorporates part of a protected designation, so that when a relevant consumer is confronted with the name of the product, the image triggered in her/his mind is that of the product whose designation is protected.436 Obviously, the obstacle under lit. (j) applies to the different spelling of a protected 196

431 CJ Joint Cases C-4/10 and C-27/10 Bureau National Interprofessionnel du Cognac (Cognac) [2011] ECR I-06131, mn. 54. 432 OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal and Community collective marks, ibid, p. 40. 433 OHIM Decision of 2.12.2013 – R 1299/2013-1 – VANA TALLINN (Authentic ESTONIAN LIQUEUR), mn. 25, 26. 434 OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal and Community collective marks, ibid, p. 40. 435 S. GC Case T-237/08 Abadı´a Retuerta v OHIM (Cuve ´e Palomar) [2010] ECR II-01583, mn. 120; s. also OHIM Decision of 11.12.2002 – R 1220/2000-2 and R 1221/2000-2 – DUQUE VILLENA and DUQUE PENAFIEL, mn. 6; OHIM Decision of 26.9.2005 – R 635/2005-1 – Old Ports, mn. 11; s. also the fourth recital of Reg. No 3288/94 of 22.12.1994, OJ L 349/83 of 31.12.1994, by which the obstacle contained in lit. (j) was added. 436 CJ Joint Cases C-4/10 and C-27/10 Bureau National Interprofessionnel du Cognac (Cognac) [2011] ECR I-06131, mn. 56, and the cases cited therein.

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Absolute grounds for refusal

Art. 7 CTMR

geographic indication contained in a CTM. For instance, ‘Pro Secko’ for wine is evocative of the Italian PDO ‘Pro Secco’,437 ‘Konjack’ for brandy is evocative of the French geographic indication ‘cognac’, and so forth. The notion of evocation, however, goes further. It would clearly clash with the objective of protecting geographical indications for wines and spirits if only those marks were denied registration that contain or consist of virtually identically terms. It suffices that the mark applied for contains elements which enable the geographical indication in question to be identified with sufficient certainty. Therefore, the omission of the definite or indefinite articles which may possibly form a part of the respective PGI/PDO is not sufficient; hence, the mark CUVE´E PALOMAR was rightly found to be evocative the geographical indication El Palomar; the omission of the article ‘el’ did not have a decisive influence, as the geographical indication could still be identified with certainty, namely by the word of ‘palomar’.438 This must be seen differently where a word element is of rather descriptive nature, such as the word ‘port’ in ‘Old Port’, provided that the mark applied for does not evoke the impression that the marked product stems from a region protected under a PGI/PDO.439 Following the same line of argument, OHIM regarded the term ESTONIAN LIQUEUR as evocative of the protected geographical indication ESTONIAN VODKA.440 Without any doubt, vodka and liqueur are comparable spirits. Furthermore, the element ‘Estonian’ is the distinctive part of the protected geographical indication, as vodka refers to the generic term. In this particular case, however, this reasoning seems to be debatable, as it would lead to the consequence that registrations of trade marks for any other spirit or comparable goods that actually come from Estonia would be barred as well if they contained the – correct – designation ‘Estonian …’. The chart below lists signs that were not found to be evocative of protected PGIs/ 198 PDOs and thus not rejected under Art. 7 (1)(j): Type

Nice Classes

Mark

Protected PGI/ PDO Dossier Number

Case Number/ CTM

Authority

Word

33

CASTEL

‘Castello´’ PGI-ES-A1173

T-320/10

GC

Figurative

33

‘Oporto’ PDO-PT-A1540

R 635/ 2005-1

OHIM (BoA)

437 OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal and Community collective marks, p. 59, mn. 2.10.2.2. 438 GC Case T-237/08 Abadı´a Retuerta v OHIM (Cuve ´e Palomar) [2010] ECR II-01583, mn. 124, 129; s. also the examples in mn. 123, ‘Beaux de Provence’ or ‘Clos Vougeot’ would be evocative of the geographical indications for the quality wines ‘les Baux de Provence’ or ‘Clos de Vougeot’, respectively. 439 S. OHIM Decision of 26.9.2005 – R 635/2005-1 – Old Ports, mn. 11–14, despite the fact that the term ‘port’ designates wine from the Oporto region of Portugal; the BoA followed the applicant’s argument that the term ‘port’ as part of the compound word/device mark ‘OLD PORT’ would convey the association within the natural meaning of the words, i. e. of a town or place near navigable water with facilities for the loading and unloading of ships, which is arguable; s. OHIM, ibid, mn. 13. 440 OHIM Decision of 2.12.2013 – R 1299/2013-1 – VANA TALLINN (Authentic ESTONIAN LIQUEUR), mn. 11 et seq.

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CTMR Art. 7

199

Type

Nice Classes

Figurative

33, 35, 43

Word

33

Community Trade Mark Regulation Mark

CHAMPAGNE CUVEE VICTOIRE

Protected PGI/ PDO Dossier Number

Case Number/ CTM

Authority

‘Bordeaux’ PDO-FR-A0821

CTM 002751485

OHIM

‘Champagne’ PDO-FR-A1359

CTM 003730751

OHIM

The chart below lists a few examples of word marks that were found to be evocative of the protected PGIs/PDOs and hence registration was refused under Art. 7 (1)(j): Type

Nice Classes

Mark

Protected PGI/ PDO Dossier Number

Case Number

Authority

Word

33

Lembergerland

Tulbagh whether or not followed by Lemberg (The designation of origin is not protected under the regulation but by agreement because of its geographical situation outside the EU in South Africa: OJ L 028, 30.01.2002, p. 4)

R 566/ 2013-1

OHIM (BoA)

Word

32, 33

La Croix des Papes

‘Chaˆteauneufdu-Pape’ PDOFR-A0144

R 51/20131

OHIM (BoA)

Word

33

CUVE´E PALOMAR

El Palomar as area of the registered ‘Valencia’ PDO-ES-A0872

T-237/08

GC

XI. Geographical indications under Reg. No 1151/2012 lit. (k) 1. General 200

With effect of 10 March 2004, the catalogue of absolute grounds for refusal under Art. 7 (1) was supplemented by lit. (k).441 At the time, the special protection related to Council Regulation 2081/92, which was replaced by Reg. No 510/2006, which is still referenced in Art. 7 (1)(k). It should be noted that Reg. No 510/2006 has been repealed and replaced by Regulation (EU) No 1151/2012 of 21 November 2012 on quality schemes for agricultural products and foodstuffs.442 References to the repealed Reg. No 441

Reg. (EC) No 422/2004 of 19.2.2004 amending the CTMR, OJ of 9.3.2004 L 70, p. 1, 2, 7. Reg. (EU) No 1151/2012 of the European Parliament and of the Council of 21.11.2012, OJ of 14.12.2012, L 343, p. 1–29; at the same time Reg. (EC) No. 509/2006 was repealed and replaced; for CTM 442

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Absolute grounds for refusal

Art. 7 CTMR

510/2006 are to be construed as references to Reg. No 1151/2012.443 Thus, the reference in lit. (k) to Reg. No 510/2006 must be read as a reference to Reg. No 1151/2012. The obstacle under lit. (k) relates to trade marks for agricultural products and 201 foodstuffs which clash with a PGI/PDO protected under Reg. No 1151/2012. The mechanism enshrined in lit. (k), in conjunction with the protection provided for by Reg. No 1151/2012 for PGIs/PDOs for products other than wines and spirits is similar to the approach under lit. (j). Hence, the same basic rules apply. Accordingly, the practice regarding Art. 7 (1)(k) closely reflects that applied under lit. (j) concerning wines and spirits.444 Similar to the situation under lit. (j), the scrutiny under lit. (k) is without prejudice to 202 the application of other grounds for refusal contained in Art. 7 (1). Particular regard must be had to the obstacles contained in lit. (c) and (g).445 CTMs applied for which consist exclusively of a PGI/PDO for agricultural products or foodstuffs, for example the word mark Feta, can be registered only as a collective mark.446

2. Protected geographical indications The obstacle contained in lit. (k) is designed to ensure that the registration of trade 203 marks, the use of which contravene Art. 13 (1), Art. 14 of Reg. No 1151/2012 is refused or, if registered, invalidated. The special protection is granted only to protected PGIs/ PDOs. The protected geographical indications of PGIs/PDOs for agricultural products and foodstuffs can be found in the Database of Origin and Registration database, which is known under its acronym DOOR.447 The DOOR database includes product names for foodstuffs registered as PDOs and PGIs, as well as names for which registration has been applied for. This database thus proves to be a helpful tool for searches.

3. Scope of protection for PGIs/PDOs The absolute ground for refusal under lit. (k) must be read in accordance with the 204 relevant provisions of Reg. No 1151/2012. The scope of protection provided under this regulation was afforded similarly to that for wines and spirits under Reg. Nos 1234/2007 and 110/2008, respectively. The wording of the respective provisions is largely identical. The relevant provisions regarding agricultural products and foodstuffs read as 205 follows: Art. 14 (1) of Reg. No 1151/2012: Relations between trade marks, designations of origin and geographical indications 1. Where a designation of origin or a geographical indication is registered under this Regulation, the registration of a trade mark the use of which would contravene Article 13 (1) and which relates to a product of the same type shall be refused if the application for applications or cancellation actions that were filed before the entry into force of Reg. No 1151/2012 of 21.11.2012, i. e. at a time when the earlier regulation was still in force, the ‘old’ regulation (No 110/2006) has to be applied; OHIM Dec. of 27.3.2013 – R 1200/2013-5 – Colombiano Coffee House, mn. 16. 443 S. Art. 58 (2) of Reg. No 1151/2012. 444 OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal and Community collective marks, ibid, p. 63, mn. 2.10.2.2. 445 S. above mn. 73 et seq., mn. 148–152. 446 OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal and Community collective marks, ibid, p. 13, mn. 1.1.1.5.4. 447 The DOOR database is available at http://ec.europa.eu/agriculture/quality/door/list.hml; this database is maintained by the European Commission Department for Agriculture and Rural Development.

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CTMR Art. 7

Community Trade Mark Regulation

registration of the trade mark is submitted after the date of submission of the registration application in respect of the designation of origin or the geographical indication to the Commission. Trade marks registered in breach of the first subparagraph shall be invalidated. Art. 13 (1), (2) of Reg. No 1151/2012: Protection 1. Registered names shall be protected against: (a) any direct or indirect commercial use of a registered name in respect of products not covered by the registration where those products are comparable to the products registered under that name or where using the name exploits the reputation of the protected name, including when those products are used as an ingredient; (b) any misuse, imitation or evocation, even if the true origin of the products or services is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’ or similar, including when those products are used as an ingredient; (c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product that is used on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin; (d) any other practice liable to mislead the consumer as to the true origin of the product. Where a protected designation of origin or a protected geographical indication contains within it the name of a product which is considered to be generic, the use of that generic name shall not be considered to be contrary to points (a) or (b) of the first subparagraph. 2. Protected designations of origin and protected geographical indications shall not become generic. Again, it should be noted that lit. (k) relates only to CTM applications filed after the date of submission of the application in respect of the designation of origin or the geographical indication to the Commission. Registration of a CTM is to be refused if one of the situations referenced in Art. 13 (1)(a) to (d) of Reg. No 53/2012 occurs. The obstacle contained in Art. 7 (1)(k) hence does not cover only signs that consist of or contain the PGI/PDO in an identical fashion, but also any misuse, imitation or evocation, even if the true origin of the product is indicated. 207 Furthermore, translations of the PGI/PDO are covered. Similar to the reach under lit. (j), accompanying expressions such as ‘style’, ‘type’, ‘method’, etc., are to no avail.448 206

4. Same type of products; comparable products CTMs that consist of or contain a PGI/PDO protected under Reg. No 1151/2012 and relate to a product of the same type, i. e. agricultural products or foodstuffs, can be registered only if the goods embraced by the CTM application fully comply with the specifications of the PGI/PDO. 209 The obstacle under lit. (k) does not, however, apply only to trade marks seeking protection for the ‘same type of products’,449 but is applicable to CTM applications for comparable products as well. To find otherwise would deprive Art. 13 of Reg. No 1151/ 2012 of virtually all substance, which, in turn, would be contrary to the spirit of lit. (k). Furthermore, Art. 13 (1)(a) makes explicit mention of direct or indirect commercial use of a registered name ‘in respect of products not covered by the registration where those 208

448

S. the analysis regarding lit. (j) above mn. 179 et seq. In that direction apparently v. Kapff in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 14 (e). 449

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products are comparable to the products registered under that name’.450 The criteria for the examination of what kind of products have to be regarded as comparable in aforementioned sense is the same as in the analysis under lit. (j) with regard to PGIs/ PDOs for wines and spirits. As pointed out above, several non-cumulative indications must be taken into account to conclude that the goods in question are comparable. In this context, the criteria developed by the CJ in the Cognac decision prove to be very helpful.451 For example, pairs of products that must be seen as comparable goods are cheese and butter, butter and margarine, olive oils and olives, ham and pork, and so forth.452 Conversely, following the Cognac criteria developed by the CJ, butter and olive oil cannot be regarded as being comparable just because they may both be consumed with bread or used for frying.453

5. Broad application of lit. (k) Similar to the application of lit. (j), the obstacle under lit. (k) is to be broadly construed.454 For the obstacle contained in lit. (k) to apply to a sign in conjunction with Art. 13 of Reg. No 1151/2012, it suffices that the sign contains terms or elements which are ‘evocative’ of the respective PGI/PDO. CTMs that contain or consist of the PGI/PDO for the same goods registered under that name are registrable only if the appropriate limitation is made with reference to the relevant PGI/PDO. For instance, the classification could be worded as follows: ‘Olive oil in conformity with the specification of the protected geographical indication Chianti Classico’. Registration must be refused for trade marks the use of which would constitute commercial use of a protected indication in respect of products which do not comply with the PDO’s specifications. The absolute ground for refusal under lit. (k) also applies where the trade mark itself consists of or contains a term or a sign which is to be qualified as a misuse, limitation or evocation of the PGI/PDO. This concept is to be broadly interpreted and even covers geographical sub-denominations where they are protected by the PGI/PDO specifications. For example, ‘Cafe´ de Medellı´n’ for coffee should be refused registration on the basis of the PGI ‘Cafe´ de Colombia’, as Medellin is a specified denomination of this protected geographical indication.455 The notion of evocation covers a situation where the term used to designate a product incorporates part of a protected designation, so that when the consumer is confronted with the name of a product, the image triggered in her/his mind is that of the product whose designation is protected.456 Assessing whether a trade mark evokes an earlier PGI/ PDO, the visual, phonetic and conceptual similarities must be taken into account.457 For 450

Author’s emphasis. CJ Joint Cases C-4/10 and C-27/10 Bureau National Interprofessionnel du Cognac (Cognac) [2011] ECR I-06131, mn. 54; s. the more detailed analysis in relation to lit. (j), above mn. 179–199. 452 S. OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal and Community collective marks, ibid, p. 64, mn. 2.10.2.3. 453 OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal and Community collective marks, ibid. 454 Likewise v. Kapff, ibid, Art. 7 CTMR, mn. 14 (f). 455 OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal and Community collective marks, ibid, p. 44, mn. 2.9.2.2. 456 CJ Case C-87/97 Cambozola/Gorgonzola [1999] ECR I-01301, mn. 25, 26; CJ Case C-132/05 Commission v Germany/Parmesan Parmigiano Reggiano [2008], mn. 44; OHIM Dec. of 9.1.2014 – R 426/2013-1 – Azienda Olearia del Chianti, mn. 23. 457 CJ Case C-132/05 Commission v Germany/Parmesan Parmigiano Reggiano [2008], mn. 47, 48; OHIM Dec. of 9.1.2014 – R 426/2013-1 – Azienda Olearia del Chianti, mn. 24. 451

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210

211

212

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instance, displaying the distinctive portion of a PGI/PDO in the trade mark seeking protection in bold letters and a significantly larger type face is likely to emphasise the mark’s overall impression and thus to be evocative of the PGI/PDO.458 214 For this assessment, generic elements of the PGI/PDO have to be disregarded. This is made clear by Art. 13 (1), second subparagraph, of Reg. No 1151/2012, which expressly provides that where a PGI/PDO contains within it the name of a product which is considered to be generic, the use of that generic name is not to be considered in the context of conflict situations under Art. 13 (1)(a) or (b). Such a generic nature was denied in respect of the word ‘grana’, and hence the PDO ‘Grana Padano’ seen as an obstacle to registration of the trade mark ‘Grana Biraghi’;459 this finding seems to be questionable as ‘grana’ translates into ‘grain’ and is thus generic; the distinctive element of the PDO ‘Grana Padano’ is the word ‘padano’. 215 The chart below depicts CTMs that were not refused registration under lit. (k):

216

Type

Nice Classes

CTM

Protected PGI/ PDO Dossier Number

Case Number

Authority

Word

29, 30, 32, 33

Dresdner StriezelGlu¨hwein

‘Dresdner Christstollen/ Dresdner Stollen/Dresdner Weihnachtsstollen’ DE/PGI/0005/ 0704

R 1825/ 2012-4

OHIM (BoA)

Figurative

29, 35, 39

‘Sierra de Cazorla’ ES/PDO/0005/ 0137

R 1731/ 2012-2

OHIM (BoA)

Below are a few examples of CTMs that were found to be evocative of the respective PGI/PDO and thus barred under Art. 7 (1)(k): Type

Nice Classes

CTM application

Word

29

Grana Biraghi

Figurative

29, 39

Case Number

Authority

PDO ‘Grana Padano’ T/PDO/ 0017/0011

T-291/03

GC

PDO ‘Chianti Classico’ IT/PDO/0005/ 0108

R 426/ 2013-1

OHIM (BoA)

458 Rightly emphasised by OHIM Dec. of 9.1.2014 – R 426/2013-1 – Azienda Olearia del Chianti, mn. 26. 459 GC Case T-291/03 – Consorzio per la tutela del formaggio Grana Padano v OHMI [2007] ECR II03081, mn. 75 et seq.

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Absolute grounds for refusal Type

Nice Classes

Figurative

29, 30

Word

16, 18, 21, 25, 29, 30, 43

CTM application

NUERNBERGA

Art. 7 CTMR Case Number

Authority

PDO ‘Prosciutto di Parma’ IT/PDO/0117/ 0067

R 659/ 2012-5

OHIM (BoA)

PGI ‘Nu¨rnberger Bratwu¨rste; Nu¨rnberger Rostbratwu¨rste’ DE/PGI/0005/ 0184

R 1331/ 2011-4

OHIM (BoA)

C. Individual types of signs There are no limitations as to the variety of trade mark types. As is made clear by the 217 broad language of Art. 4, all conceivable signs can be registered as trade marks as long as they are capable of distinguishing the goods or services of one undertaking from those of other undertakings.460 The absolute bars laid down in Art. 7 (1) have already been described in detail above (mn. 49–216). Some types of trade marks, however, trigger specific problems that are, to a certain degree, linked to the nature of the respective signs, which should be analysed below:

I. Word marks, letters and numerals By far the largest group of CTM applications/registrations in practice are signs that 218 are made up of words, letters, numerals or combinations of these. They are likely to account for 80 per cent of all applications/registrations. If one includes marks that consist of combinations of words and images, they probably account for far more than 90 per cent of the total number of applications/registrations. It should be noted that according to the terminology used by the Office, OHIM classifies signs as ‘figurative marks’ already if the mark contains only slight variations, such as depicting verbal elements in non-standard fonts, in colour or on more than one line, and so forth.461 This has to be kept in mind when looking at the statistical data according to which word marks account for only 60 per cent.462 In comparison, other types of marks are – relatively speaking – of minor practical importance, such as 3D marks (0.62 per cent), colour marks (0.08 per cent), etc. It is thus safe to say that, in practical terms, signs that consist of or contain words, letters and/or numerals form the most important group of trade marks. 460 The use of the word ‘undertaking’ in Art. 4 is, strictly speaking, incorrect, as trade marks cannot only be registered by ‘undertakings’, but by any natural or legal persons including authorities established under public law, Art. 5; thus, the words ‘other undertakings’ in Art. 4 are to be understood to mean ‘other proprietors’ or ‘other commercial origin’. 461 OHIM Guidelines for Examination, part B, sect. 2 formalities, p. 17, mn. 9.2. 462 S. statistical data available at http://oami.europa.eu Õ about OHIM Õ statistics of Community trade marks Õ applications broken down by type of mark: 1.4.1996 to date (6.5.2014): 59,90 %.

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Generally speaking, marks consisting of words, letters and/or numbers or a combination thereof, do not present specific challenges. Such signs are undoubtedly eligible for registration; in particular, there are no reservations for marks made up of letters and/or numerals (or combinations); this merits particular mention because that used to be different under some of the former trade mark regimes of the Member States before harmonization by the TMDir.463 For example, under the ‘old’ German Trade mark Act, which was in force until 31 December 1994, ‘letters as such were generally excluded from registration unless they were so imaginatively designed in their overall impression that the character of the letters receded into the background’.464 This picture changed considerably after the (partial) approximation of the Member States trade mark regimes. 220 The most significant difficulties for the registration of these signs are presented by the absolute grounds for refusal contained in Art. 7 (1)(b) to (d), which means at the same time that those obstacles, if they apply, can be overcome by acquired distinctiveness under Art. 7 (3). As the graphic representability of those signs is unproblematic, the absolute bar under lit. (a) is of no relevance in this context. Of course, the obstacles under lit. (f) to (l) apply to these types of signs, but do not trigger specific problems. Thus, reference is made to the detailed analysis of the various absolute grounds for refusal.465 221 The registration of mere word marks does not pose any particular problems. Of course, the rule must be obeyed that it suffices that the word has, for example, a descriptive meaning only in part of the Community, so that the sign – such as the word Neo from the point of view of the relevant public with a command of modern Greek – has to be refused under Art. 7 (1)(c) in conjunction with Art. 7 (2).466 Furthermore, it must be borne in mind that for the purpose of applying Art. 7 (1)(b) to (d), deliberate misspellings – such as FRESHHH instead of ‘fresh’467 – or grammatically incorrect juxtaposition of certain terms – such as RELY-ABLE instead of ‘reliable’468 – where the word mark consists of a combination of word elements that are non-distinctive or descriptive in relation to the goods/services embraced by the application, the formula developed by the CJ in its POSTKANTOOR decision provides useful guidance. According to this formula, marks that consist of a word or word combination composed of descriptive elements are in themselves descriptive (and non-distinctive) unless there is a perceptible difference between the words and the mere sum of their parts.469 In applying those POSTKANTOOR factors, the GC rightly refused registration of the mark 219

463 Council Directive 89/104/EEC of 21.12.1988 to approximate the laws of the Member States relating to trade marks, OJ L 40, 11.2.1989, p. 1. 464 Referring to the legal position under the former Warenzeichengesetz (in force until 31.12.1994), BGH GRUR 2002, 1077, 1078 BWC. 465 S. above mn 49–216. 466 GC Case T-236/12 Airbus v OHIM [2013] (not yet published in the ECR, decision available at http://curia.europa.eu), mn. 40, 41. 467 GC Case T-147/06 En Route Internationale v OHIM [2008] ECR II-00288 (summary publication, full text available at http://curia.europa.eu), mn. 19. 468 GC Case T-640/11 Boehringer Ingelheim International v OHIM [2013] (not yet published in the ECR – available at http://curia.europa.eu), mn. 20, 31 not generally conducive to overcoming refusal of registration stemming from the fact that the content of the sign is immediately comprehensive as laudatory or descriptive. 469 The word mark POSTKANTOOR was composed of the descriptive terms POST and KANTOOR (the Dutch word for ‘office’), the combination of which was rightly seen as descriptive for services such as direct-mail campaigns or the issuance of postage stamps, despite the attempt by the applicant to restrict the goods and services by the disclaimer ‘provided that they are not connected with a post office’; CJ Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] ECR I-01619, mn. 99, 100; s. also the refusal of the word mark BIOMILD by the decision of the same day, CJ Case C-265/00 Campina Melkunie [2004] ECR I-01699.

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STEAM GLIDE in respect of ‘electric irons, electric flat irons’, etc., as the sign does not produce an impression which is sufficiently far removed from that produced by the mere combination of meaning lent by those words, with the result that the expression does not amount to any more than the sum of its parts.470 Obviously, as pointed out above, the distinctiveness and the potential descriptiveness 222 of a sign must be assessed first by reference to the goods/services concerned and second by reference to the presumed perception of the relevant public.471 As regards the assessment of mere word marks (especially) under the bars set up in lit. (b) and (c), the current decision-making practice is all in all consistent and hence predictable, which is to be welcomed in the interest of legal certainty. As a rule, signs are barred from registration if their meaning is (too) closely related to the goods/services denoted in the CTM application, which is impossible to reconcile with the public interest that requires that such signs and indications may be freely used by all.472 Consequently, and rightly so, word marks such as College,473 Restore,474 Smartbook,475 fluege.de,476 and Lean Performance Index477 were found to be non-distinctive and/or descriptive. Conversely, although composed of two non-distinctive elements, the word mark EUROPREMIUM478 and Bioderma479 were regarded as distinctive and non-descriptive. The same criteria are to be employed for the assessment of abbreviations and 223 combinations of abbreviations and numbers. Hence, the sign TDI in relation to, inter alia, car engines480 would be perceived in the automotive sector as the abbreviation for ‘Turbo Direct Injection’ or ‘Turbo Diesel Injection’ and thus descriptive; likewise, the sign tds was rejected as being descriptive, ‘td’ being the common abbreviation for ‘Turbodiesel’ and the mere addition of the letter ‘s’ not being unusual, not least because the abbreviation ‘ds’ is commonly used as a reference to ‘diesel’.481 Conversely, where the relevant public does not recognise the potential meaning of an abbreviation, the sign is eligible for registration. Accordingly, the designation NAI – Der Natur-AktienIndex was granted trade mark protection in relation to goods in class 16 and financial services, etc. (classes 36 and 42), as its intended meaning (short for ‘Natur-Aktien470 GC Case T-544/11 Spectrum Brands v OHIM [2013] (not yet published in the ECR, available at http://curia.europa.eu), mn. 19 et seq., 35–37. 471 S. above mn. 19–26. 472 CJ Case C-191/01 P OHIM v Wrigley [2003] ECR I-12447, mn. 31; GC Case T-208/10 Cree v OHIM (truewhite) [2011] (not yet published in the ECR, available at http://curia.europa.eu), mn. 12; GC Case T244/12 Unister v OHIM [2013] (not published in the ECR, available at http://curia.europa.eu), mn. 16. 473 GC Case T-165/11 Stichting Regionaal Opleidingencentrum van Amsterdam v OHIM [2012] (not published in the ECR, available at http://curia.europa.eu), mn. 16, 33. 474 CJ Case C-21/12 P Abbott Laboratories v OHIM [2013] (not published in the ECR, available at http://curia.europa.eu), mn. 71, 72. 475 GC Case T-123/12 Smartbook v OHIM [2013] (not published in the ECR, available at http:// curia.europa.eu), mn. 48 et seq. 476 GC Case T-244/12 Unister v OHIM [2013] (not published in the ECR, available at http:// curia.europa.eu), mn. 47. 477 GC Case T-598711 MPDV Mikrolab v OHIM [2013] GC Case T-244/12 Unister v OHIM [2013] (not published in the ECR, available at http://curia.europa.eu), mn. 50. 478 In relation to goods and services of classes 16, 20, 35 and 39, GC Case T-334/03 Deutsche Post EURO EXPRESS v OHIM(EUROPREMIUM) [2005] ECR II-00065, scrutinised under Art. 7 (1)(c), mn. 34 et seq. 479 GC Case T-427/11 Laboratoire Bioderma v OHIM [2013] (decision available only in the French language, not yet published in the ECR, available at http://curia.europa.eu), mn. 63, limited however to goods in class 5 (refused in respect of goods in classes 3 and 44). 480 And other goods in class 7, as well as technical oils and lubricants (class 4) and repair services, etc. (class 37), GC Case T-174/07 Volkswagen v OHIM [2009] ECR II-00013 (summary publication), mn. 8, 35, 46, 77. 481 OHIM Dec. of 15.12.2000 – R 294/1999-2 – tds, mn. 17 (for goods of classes 12 and 28).

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Index) neither appeared in dictionaries nor would it be understood by the relevant public. As a consequence, the word mark Natur-Aktien-Index was refused registration,482 whereas the abbreviation NAI was accepted.483 224 An abbreviation that is in itself descriptive and non-distinctive may be brought out of the scope of refusal if combined with other elements which make the sign as a whole distinctive and non-descriptive. An example of such a sign that was successfully registered is the CTM Lpc-37 in relation to, inter alia, ‘cultures of micro-organisms’. Taking into account the awareness of the relative public and the nature of the goods at issue, the letter combination ‘Lpc’ would be understood as referring to ‘lactobacillus paracasei’, whereas in combination with ‘37’ the sign is neither an invitation to purchase of a general nature nor a generally comprehensible technical term, which renders the sign as a whole protectable.484 225 In principle, as is made clear by the broad wording of Art. 4, single letters and numerals are eligible for trade mark protection. The fact that a category of signs is, in general, capable of constituting a trade mark for the purposes of Art. 4 does not, however, mean that those signs necessarily have distinctive character for the purposes of the analysis under Art. 7 (1)(b) in respect of the goods and services in question.485 The establishment of distinctiveness of single letters or numerals proves to be very difficult in practice; furthermore, it must be examined whether the letter or the individual number, as the case may be, is not descriptive in the meaning of lit. (c). That assessment must be undertaken in each individual case, taking into account the factual circumstances of the particular case by reference to the concrete goods/services covered by the application and the perception of the relevant public.486 In other words, the question of whether a ground for refusal applies to the sign in question cannot be answered abstractly or by general observations, but must be determined in concreto. Therefore, an abstract reasoning according to which – for example – a sign consisting of the single number ‘7’, without any unusual or fanciful feature, would be per se deprived of any distinctive character is impermissible, since this number belongs in the public domain and forms part of the store of signs available to all traders.487 While it is true, similar to the situation of trade mark protection for colour signs (which are not spatially limited), that regard must be had to the public interest in not unduly restricting the availability of single letters and numerals for other economic operators, the lack of distinctive character (and, as the case may be, the descriptiveness) of a sign has to be established on the basis of the circumstances of the individual case. Having said that, the establishment of distinctiveness in respect of single letters or numerals, similar to signs seeking protection for a colour per se, without any prior use is hardly conceivable save in exceptional circumstances.488

482

OHIM Dec. of 26.5.2008 – R 525/2007-4 – Natur-Aktien-Index. OHIM Dec. of 15.10.2009 – R 1630/2008-4 – NAI Der Natur-Aktien-Index, mn. 11–14. 484 OHIM Dec. of 4.6.2012 – R 1995/2011-2 – Lpc-37, mn. 14 et seq. (as regards the obstacle under lit. (c)) and mn. 27 et seq. regarding Art. 7 (1)(b). 485 GC Case T-23/07 Borco Markenimport Matthiesen v OHIM [2009] ECR II-00887, mn. 31, confirmed by CJ Case C-265/09 P OHIM v BorcoMarkenimport Matthiesen (a) [2010] ECR I-08265, mn. 44 et seq. and 55 et seq.; GC Case T-173/00 KWS Saat v OHIM (Shade of orange) [2002] ECR II-3843, mn. 26. 486 CJ Case C-51/10 P Agencja Wydawnicza Technopol sp. z o.o. v OHIM(1000) [2011] ECR I-01541, mn. 77. 487 OHIM Dec. of 22.6.1999 – R 63/1999-3 – Numeral ‘7’, mn. 13–15. 488 In that direction, GC Case T-23/07 Borco Markenimport Matthiesen v OHIM [2009] ECR II-00887, mn. 50–54, confirmed by CJ Case C-265/09 P OHIM v BorcoMarkenimport Matthiesen (a) [2010] ECR I08265, mn. 28 et seq. 483

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In some respects, following the leading cases handed down by the CJ in respect of the 226 signs ‘a’489 and the number ‘1000’,490 the restrictive registration practice has shown certain liberal tendencies in recent years. It may be seen as an achievement in itself that OHIM is now aware that, when examining single letter or numeral trade marks, generic and unsubstantiated arguments such as those relating to the availability of signs, given the limited number of letters/numerals, do not suffice in and by themselves; rather, the examination of such signs must be thorough and stringent and requires careful assessment of whether a given letter/numeral can be considered inherently distinctive having regard to the goods/services at issue.491 These more recent principles developed by the CJ are to be welcomed because they impose stricter assessment standards for the lack of distinctive character or the assumption of a public interest in not unduly restricting the availability of letters/numbers on the examiners. If, however, the numbers or letters for which protection is sought are perceived by the relevant public immediately without further thought as a description of the properties of the specific goods/ services and, thus, not as an indication of the commercial origin, they fail to fulfil the essential function of a trade mark to serve as a source identifier. To sum up, registering single letter or numeral marks will remain – metaphorically 227 speaking – an uphill battle. Distinctiveness must be established in relation to the concrete goods/services. As regards descriptiveness, in order for a sign which is composed exclusively of numerals to be refused on the basis of Art. 7 (1)(c), it must be reasonable to believe that, in the mind of the relevant class of persons, the quantity indicated by those numerals characterises a property of the goods/services in question.492 The same applies to letter marks, as they may also relate to certain characteristics of the goods/services in question.493 It might be advisable to add figurative or other elements that are in themselves distinctive. However, a minor graphic stylisation or embellishment does not normally suffice to overcome the obstacles under lit. (b) and (c), particularly if the (non-distinctive and or descriptive) letter and/or number element dominates the mark.494 By way of example, the mere figures ‘7’,495 ‘90’,496 the number ‘1000’497 and the slightly stylised, blue-coloured letter ‘I’498 were denied registration under Art. 7 (1)(b) and/or (c). On the other hand, the slightly stylised letter ‘J’, for example, was accepted in respect of goods/services in classes 12, 25 and 41,499 and the

489 CJ Case C-265/09 P OHIM v BorcoMarkenimport Matthiesen (a) [2010] ECR I-08265, mn. 28 et seq.; s. detailed analysis of this decision by Hasselblatt/George, IPRB 2011, 131, 133. 490 CJ Case C-51/10 P Agencja Wydawnicza Technopol sp. z o.o. v OHIM(1000) [2011] ECR I-01541, mn. 29 et seq.; s. detailed analysis of this decision by Hasselblatt/George, IPRB 2011, 131, 133. 491 OHIM Guidelines for Examination, part B, sect. 4 absolute grounds for refusal, p. 20, mn. 2.2.5.1. 492 CJ Case C-51/10 P Agencja Wydawnicza Technopol sp. z o.o. v OHIM(1000) [2011] ECR I-01541, mn. 52–54. 493 Such descriptive nature denied in relation to the letter ‘E’, GC Case T-302/06 Paul Hartmann v OHIM (E) [2008] ECR II-00132 (summary publication), mn. 31 et seq. 494 Likewise Bender, MarkenR 2012, 41, 45; minor stilisation of the letter ‘I’ and presentation in the colour blue was regarded to be insufficient to overcome the hurdles under lit. (b)/(c), s. OHIM Dec. of 28.5.2008 – R 559/2004-1 – I, mn. 13, 16, 25, following the decision GC Case T-441/05 IVG Immobilien v OHIM [2007] ECR II-01937, mn. 47 et seq. 495 OHIM Dec. of 20.6.1999 – R 63/1999-3 – 7, mn. 14 et seq. 496 OHIM Dec. of 2.12.1999 – R 197/1999-2 – 90, mn. 11, 12. 497 CJ Case C-51/10 P Agencja Wydawnicza Technopol sp. z o.o. v OHIM(1000) [2011] ECR I-01541, mn. 29 et seq. 498 GC Case T-441/05 IVG Immobilien v OHIM [2007] ECR II-01937, mn. 47 et seq.; following this decision the case was referred back to OHIM, which held that the letter ‘I’ was descriptive despite minor stilisation and presentation in blue colour, mn. 13, 16, 25. 499 OHIM Dec. of 10.7.2001 – R 480/1999-2 – J, mn. 14.

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letter W was accepted in relation to services in classes 39 and 43.500 For the sake of clarification, it should be mentioned that, considering the well-known W® hotel chain, the aforementioned decision was not based on acquired distinctiveness.

II. Advertising slogans Advertising slogans play an important role in the modern communication world. It is thus no wonder that they have their firm place in the plethora of marketing tools for today’s businesses. As a natural consequence of this, the registration of advertising slogans has been experiencing a boom over the last twenty years, although – to be more precise – a closer inspection reveals that the registration practice can be broken down in smaller waves. Until the mid-nineties of the last century, many national trade mark regimes of the Member States did not generally accord protection to advertising slogans.501 After introduction of the broad notion of signs of which a trade mark may consist (by Art. 2 of the TMDIR),502 the initially hesitant standpoint was given up quickly, followed by a number of applications for and registrations of advertising slogans, both on the national level and the EU level.503 229 Whereas around the turn of the millennium the registration practice of advertising slogans seemed to be more generous, this trend almost turned into the opposite over the following years.504 It is particularly to be welcomed that the CJ clarified in its much noted decision Vorsprung durch Technik® (Advance through Technology) that no stricter criteria applied to the assessment of the distinctiveness of slogans, nor is any special creativity necessary to defeat the bar of Art. 7 (1)(b).505 The ‘state of shock’,506 however, triggered by aforementioned ‘landmark decision’ seems to have lasted only a brief time, until OHIM and the GC returned to their previous restrictive practice. Indeed, it is perfectly right that commonplace, banal phrases such as Better homes and gardens,507 Expect great measures,508 Sound quality approach,509 Food should taste good,510 or The 228

500

OHIM Dec. of 30.9.2010 – R 1008/2010-2 – W, mn. 12 et seq. For example, the strict case law in Germany under the ‘old’ Warenzeichengesetz did not extend trade mark protection to slogans, which changed considerably after the harmonised trade mark law (the German Markengesetz) entered into force on 1.1.1995; s. with regard to this development Hasselblatt, IPRB 2010, 87 et seq. 502 Council Directive 89/104/EEC of 21.12.1988 to approximate the laws of the Member States relating to trade marks, OJ L 40, 11.2.1989, p. 1. 503 From the German perspective, s. decisions of the German Federal Court of Justice BGH Dec. of 8.12.1999 – Case I ZB 2/97 – Radio von hier, and BGH Dec. of 8.12.1999 – Case I ZB 21/97 – Partner with the best, GRUR 2000, 321 et seq.; GC Case T-138/00 Erpo Mo¨belwerk GmbH v OHIM [2001] ECR II03739, mn. 44; confirmed by CJ Case C-64/02 P OHIM v. Erpo Mo¨belwerk GmbH [2004] ECR I-1003; it should be noted that OHIM found the slogan ‘Das Prinzip der Bequemlichkeit’ (English translation: The principle of comfort) to be devoid of any distinctive character; both the GC and CJ found the slogan to be sufficiently distinctive. 504 S. the chart below at mn. 235 and mn. 236 regarding slogans that were seen as sufficiently distinctive and those that were refused registration. 505 CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 39; s. the detailed discussion of this ‘landmark’ decision by Hasselblatt, IPRB 2010, 87 et seq. 506 Bender, MarkenR 2012, 41, 45. 507 GC Case T-524/09 Meridith v OHIM [2011] ECR II-00258 (summary publication, available at http://curia.europa.eu), mn. 18, 21, 26. 508 OHIM Dec. of 14.3.2014 – R 1857/2012-4 – Expect great measures, mn. 18 et seq. 509 OHIM Dec. of 31.3.2014 – R 1557/2013-2 – Sound quality approach, mn. 31 et seq. 510 OHIM Dec. of 22.1.2012 – R 671/2013-1 – Food should taste good, mn. 18, 25, 28 et seq. 501

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real world511 were refused registration under Art. 7 (1)(b); it is incomprehensible why the following slogans, all of which possess a certain originality and could thus function as a source indicator, were seen as non-distinctive and thus barred from registration: e. g. Passion To Perform,512 insulate for life513 or Wir machen das Besondere einfach.514 In light of these decisions, most of which quote the Audi case, but apparently do not properly apply the principles developed by the CJ, it seems to be sensible to have a closer look at this leading case. Unlike OHIM and the GC, the CJ found the slogan Vorsprung durch Technik (which 230 can be translated into ‘Advantage through technology’) to be distinctive, and thus protectable as a trade mark.515 This judgment deserves full support in view of both the dogmatic deduction and the consequence of its application. The CJ resolutely opposed the view expressed by the previous instances that advertising slogans are not to be considered distinctive if they are perceived by the relevant public as advertising slogans with respect to the goods or services in question.516 The Court reiterated that an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptional tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Art. 7 (1)(b).517 Furthermore, the mere fact that a mark is perceived as a promotional formula, and that, because of its laudatory nature, it could be used by other undertakings, is in itself not sufficient to support the conclusion that the mark is devoid of distinctive character. The laudatory connotation of a word mark does not mean that such a sign cannot be seen as a badge of origin of the goods or services which it denotes. Therefore, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of the covered goods and services. All in all, the fact that a slogan is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character.518 It merits special mention that the GC had based its finding that led to the refusal of the mark, that the mark Vorsprung durch Technik can have a number of meanings, or constitutes a play on words or can be perceived as imaginative, surprising and unexpected and thus be easily remembered. The CJ, in contrast, held that although the existence of such characteristics is not a necessary condition for establishing an advertising slogan’s distinctiveness, as a rule the presence of those features is likely to endow the mark with distinctive character.519 Furthermore, the CJ rightly held that the fact that the slogan Vorsprung durch 231 Technik is an objective message to the effect that technological superiority enables the 511 GC Case T-515/11 Delphi Technologies v OHIM [2013] (not yet published in the ECR, available at http://curia.europa.eu), mn. 29, 30; confirmed by CJ Case C-448/13 P Delphi Technologies v OHIM [2014] (not yet published in the ECR, full text available at http://curia.europa.eu), mn. 36, 37. 512 GC Case T-291/12 Deutsche Bank v OHIM [2014] (not yet published in the ECR, available at http:// curia.europa.eu), mn. 22. 513 GC Case T-157/08 Paroc v OHIM [2011] ECR II-00137, mn. 44, 50. 514 GC Case T-523/09 Smart Technologies v OHIM [2011] ECR II-00127 (summary publication), confirmed by CJ Case C-311/11 P (not yet published in the ECR, available at http://curia.europa.eu), both confirming the previous OHIM Dec.; very critical, rightfully so, Bender, MarkenR 2012, 41, 45. 515 CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 39; s. the detailed discussion of this ‘landmark’ decision by Hasselblatt, IPRB 2010, 87 et seq. 516 GC Case T-70/06 Audi v OHIM [2008] ECR II-00131 (summary publication, available at http:// curia.europa.eu), mn. 24 et seq. 517 CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 39, citing CJ Case C-64/02 P OHIM v Erpo Mo¨belwerke GmbH [2004] ECR I-1003, mn. 31, 32; s. also CJ Case C-392/02 P SAT.1 v OHIM [2004] ECR I-8317, mn. 41. 518 CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 43, 45. 519 CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 47.

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232

233

234

235

Community Trade Mark Regulation

manufacturer and supply better goods and services would not create a hindrance to registration. Neither it is detrimental for the purposes of descriptiveness in the sense of Art. 7 (1)(c) that slogans convey an objective message, even a simple one, as long as they fulfil the function as indicia of commercial origin. This, in turn, may be particularly the case where marks do not merely express 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 mind of that public’.520 As regards the slogan Vorsprung durch Technik, the CJ found that the aforementioned objective message conveyed by the sign does not follow obviously from the slogan in question. Rather, the Court shared the proprietor’s point of view that the combination of the words Vorsprung durch Technik suggests only a causal link and accordingly requires a measure of interpretation on the part of the public; thus, the slogan exhibits a certain originality which makes it easy to remember.521 It is to be welcomed that the CJ provided profound guidance in its Vorsprung durch Technik decision. It is to be hoped that this sound yardstick will help to increase legal security in the assessment of the distinctiveness of advertising slogans. The bar is not set too high, and certainly no stricter criteria are to be applied for this analysis than in respect of other types of marks. All in all, slogans do not have to be particularly imaginative or make a striking impression to establish the minimum level of distinctiveness. On the other hand, applicants and their advisers should keep in mind that it may prove useful in practice to pay special attention to characteristics such as ambiguity, imaginativeness or an element of surprise, because the presence of such features readily endows the slogan with the necessary distinctiveness. The charts below show examples of slogans that were accepted by the Office and others that were found not to be distinctive: Slogans registered as CTMs: Type

Nice Classes

CTM

Case Number/ CTM Number

Authority

Slogan

32

Impossible becomes possible

R 9/2013-2

OHIM (BoA)

Slogan

35, 41

Passion for people

R-103/2012-2

OHIM (BoA)

Slogan

Multiple classes

Vorsprung durch Technik (Advance through Technology)

C-398/08

CJ

Slogan

36

Fru¨her an Spa¨ter denken! (Think of later earlier!)

R 153/1998-2

OHIM (BoA)

Slogan

30

merci for being you

001751932

OHIM

Slogan

11, 41

Led’s light up your world

002688007

OHIM

Slogan

9

ALL BUILT IN, ALL THE WAY DOWN

003999571

OHIM

Slogan

3, 5, 32

The Yin & Yang of Vitamin E

004645628

OHIM

Slogan

9, 16

Think different

000671321

OHIM

520 521

160

CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 57 (emphasis added). CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 58, 59.

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Art. 7 CTMR

Absolute grounds for refusal Type

Nice Classes

CTM

Case Number/ CTM Number

Authority

Slogan

25, 28, 41

Impossible is nothing

003049756

OHIM

Slogan

35, 41, 43

I’m lovin’ it

003196581

OHIM

Slogans found to be not distinctive and/or descriptive:

236

Type

Nice Classes

Mark

Case Number

Authority

Slogan

35, 36

BUILT FOR THESE TIMES

R 570/2013-5

OHIM (BoA)

Slogan

multiple classes

INSPIRED BY EFFICIENCY

T-126/12

GC

Slogan

41, 42

CARE TO CARE

T-68/12

GC

Slogan

35, 36, 38, 41, 42

PASSION TO PERFORM

T-291/12

GC

Slogan

25, 32, 33, 41

TRINKEN HILFT (Drinking helps)

R 1648/2012-1

OHIM (BoA)

Slogan

7, 9, 10, 12

INNOVATION FOR THE REAL WORLD

T-515/11 (appealed: C-448/ 13 P)

GC

III. Figurative marks Figurative marks, without which today’s marketing communications and branding 237 strategies could hardly be imagined, have always been counted among the classical trade marks. As such they play a vital role in modern brand communication across nearly all industry sectors. It is thus no wonder that statistically figurative marks account for well over 40 per cent of all registered CTMs.522 This high percentage, however, is owed to a large extent to the fact that according to the Office’s practice, a sign is classified as a ‘figurative mark’ if it includes any graphic element or stylization appearing in the sign, such as the addition of colour, the use of a particular typeface, font size, italics or a certain arrangement of words, letters and/or numeral. Even mere word signs are considered for formality purposes as figurative trade marks if the signs are represented in languages other than Latin, Greek or Cyrillic.523 According to the OHIM Guidelines for Examination, a figurative mark is a sign 238 consisting of – exclusively figurative elements, – the combination of verbal and figurative or otherwise graphical elements, – verbal elements and non-standard fonts, – verbal elements in colour,

522 S. the statistical data available at OHIM’s website http://oami.europa.eu Õ about OHIM Õ Statistics of Community Trade Marks Õ breakdown by type of mark: 2012 – 42.93 %, 2013 – 43.69 %, 2014 (until May 2014) – 44.79 %. 523 OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal, p. 55, mn. 2.3.3 and p. 56, mn. 2.3.4.1.

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CTMR Art. 7

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– – – –

239

240

241

242

verbal elements on more than one line, letters from non-EU alphabets, signs that cannot be reproduced by a keyboard, combinations of the above.524 Archetypes of ‘pure’ figurative marks are, by way of example, the famous Ferrari® horse, the Rolex crown® or the Audi rings®, to name only a few. Very often, however, signs are composed of various elements, especially a combination of words and/or letters and numerals, modified by colours and/or any figurative elements in aforementioned broad sense. With a view to the absolute grounds of refusal, especially under Art. 7 (1)(b), (c) or (d), the inclusion of non-distinctive, descriptive or generic components will have no detrimental effect on the registration of the sign in question if the sign as a whole, due to its stylization and/or its graphical features, may serve as a trade mark in respect of the goods/services covered by the application. In other words, even if non-distinctive or descriptive elements are contained in the mark, a sign may be brought out of the scope of a refusal if used in combination with other elements that endow the sign as a whole with the minimum level of distinctiveness.525 Therefore, the presence of a figurative element that is distinctive on its own may render a sign eligible for trade mark protection even if it consists of descriptive and/or non-distinctive elements. As explained above,526 the obstacles contained in Art. 7 (1)(b) to (d) have to be analysed by reference as to the goods or services seeking protection and by reference to the perception of the relevant public. As a consequence, a sign may be non-distinctive, descriptive and/or customary in relation to certain goods/services, e. g. a stylised apple in relation to fruits, but – such as the world-renowned Apple®logo for consumer electronics and the like – clearly distinctive and non-descriptive with regard to other goods/services. Although it is impossible to generalise, simply put, there are three different scenarios to be distinguished for the scrutiny of figurative marks as to absolute grounds for refusal: (i) where the sign consists of just the figurative element, obviously the analysis under Art. 7 (1) is limited to that element; (ii) if the sign is a complex mark and contains word elements that are – in themselves and as part of the composite mark – distinctive and non-descriptive, such as family or company names that have no (direct or indirect) meaning in respect of the goods/services denoted in the CTM application, this alone brings the sign as a whole beyond the minimum level of distinctiveness and ensures that the mark is not barred under lit. (b) to (d), even if the mark applied for contains other verbal elements that are descriptive, customary or generic, as the case may be; (iii) lastly, there are the countless cases of compound marks composed of elements that are clearly not registrable because of their lack of distinctiveness, their descriptiveness, their generic character and the like, so that the sign as a whole can pass the obstacles under Art. 7 (1) solely because of the presence of figurative elements, which may give distinctive character to a sign consisting of a descriptive and/or nondistinctive word, slogan, abbreviation, and the like. In the scenario described under (ii), registrability of the sign does not present any significant challenges. It has to be borne in mind, however, that the non-distinctive, descriptive, customary and/or generic elements do not form part of the protected subject matter of the CTM in question. Similarly, if a figurative element that is in itself

524 OHIM Examination Guidelines, part B, section 2, Formalities, p. 17, mn. 9.2, also with examples of each of these types. 525 OHIM, Examination Guidelines, part B, section 4, absolute grounds for refusal, p. 56, mn. 2.3.4.1. 526 S. above mn. 19–26.

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Absolute grounds for refusal

Art. 7 CTMR

distinctive is added to a complex mark, and this mark is registrable solely because of this distinctive/non-descriptive pictorial device, the other components of the mark do not participate in the substantive trade mark protection. The applicant is well advised to keep that in mind before applying for marks that contain elements that are not only weak, but simply not protectable at all. For the purposes of the scrutiny under Art. 7 (1) of figurative elements contained in a 243 sign, the scenarios described above under (i) and (iii) are largely comparable. A figurative element that is registrable on its own will generally remain eligible for registration as a CTM if ‘added’ to an otherwise non-registrable sign, provided that the device element is – because of its size and position – clearly recognisable in the sign as a whole.527 The test is whether the figurative element – either by itself or as component of a complex mark – equips the sign with the capability to function as a trade mark, first of all to serve as an indicator of commercial origin. A clear pointer in this direction is given if the figurative element is, in relation to the goods/services embraced in the application and from the perspective of the relevant public, – unusual and/or arbitrary and/or clearly departing from industry norms and standards, if any, and/or striking and/or surprising and, thus, – capable of creating in the targeted clientele’s mind a lasting and immediate memory of the sign (and, where it is a part of a complex mark, by diverting their attention from the non-distinctive/descriptive message conveyed by the latter).528 Marks containing or consisting of figurative elements are not subject to criteria 244 which are stricter than those applicable to other types of signs.529 This entails that, for example, the figurative element in question does not have to be particularly imaginative or capricious, nor is any artistic creativity needed in order to defeat the absolute bar contained in Art. 7 (1)(b). What is crucial is that the sign must be capable of fulfilling the source-identifying function of a trade mark and is not descriptive or customary with regard to the goods/services covered by the application.530 In this context, it must be kept in mind that the ‘addition’ of colours, the use of simple geometric forms or typographical symbols, and so forth, may be perceived by the relevant public as having a merely functional or aesthetic purpose rather than an origin function.531 Against this backdrop, signs composed of – or containing as the sole potentially 245 distinctive element – basic geometric figures will usually not be perceived as an indication of commercial origin. Consequently, simple geometric forms such as circles,532 lines,533

527 S. the example of a clearly descriptive term (‘tissue deluxe’ for goods in class 24), which contained a red device appearing on the letter ‘i’, which was hardly recognisable in the overall mark, and thus rightfully objected to, as also the typeface was not found to be distinctive, CTM No 11 418 605; s. OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal, p. 56, mn. 2.3.4.1. 528 Similar, OHIM, Examination Guidelines, part B, section 4, absolute grounds for refusal, p. 57, mn. 2.3.4.1. 529 CJ Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-1725, mn. 38; CJ Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, mn. 36; CJ Case C-398/ 08 Audi v OHIM [2010] ECR I-00535, mn. 37; s. above, mn. 61, 62. 530 S. in detail as regards the general criteria applicable for the scrutiny under Art. 7 (1)(b)-(d), above mn. 56 et seq. 531 E. g. GC Case T-304/05 Cain Cellars v OHIM [2007] ECR II-00112 (summary publication, available at http://curia.europa.eu). 532 S. with regard to a device of four identically sized circles, OHIM Dec. of 9.10.2012 – R 412/2012-2 – Device of four identically sized circles. 533 S. in respect of the representation of the half of a ‘smiley smile’, GC Case T-139/08 The Smiley Company v OHIM [2009] ECR II-03535.

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parallelograms,534 rectangles,535 an angle,536 or a common pentagon537 were rightly found to lack distinctive character.538 246 The same fate is shared by commonplace figurative elements, i. e. symbols or graphics that are commonly used in relation to certain products/services and may consequently often be found to be devoid of any distinctive character and/or descriptive. The representation of a vine leaf, without any further (distinctive) modifications, lacks distinctiveness for wine (and related products), the representation of a cow lacks distinctiveness for milk products, and so forth.539 247 Likewise, typographical symbols are typically not seen by the relevant public as an indication of commercial origin. The GC thus rightly held in respect of an exclamation mark that the relevant consumer would see this sign as a merely laudatory expression or something to catch the eye rather than a badge of commercial origin. Such punctuation marks without special additional features are frequently used in business and commonplace signs in advertising; they thus lack the necessary distinctiveness.540 The same reasoning applies to signs that consist of frequently used symbols, such as the percentage sign, even where modified with simple geometric figures such as circles and the like. Such a mark merely conveys the message that the goods marked in this way are sold at a reduced price; the consumer will therefore not perceive such a sign as an indication of origin.541 248 Similarly, commonly used pictograms, even when they show slight modifications, are in principle not perceived as a means of identifying commercial origin. Pictograms, mostly in the form of unembellished symbols, are usually regarded as having purely informational or instructional value in respect of certain goods or services. For example, pictograms may encapsulate widely understood messages, such as a knife and fork in relation to provision of food, the white letter ‘P’ on a blue background to designate a parking lot, a stylised bed under a roof as an indication of overnight accommodation, and so forth.542 The public views such pictograms, which consumers encounter everywhere (e. g. in supermarkets, petrol stations, airports, banks, etc.) as practical information, but not as a sign that serves to distinguish goods and services as originating from a particular undertaking.543 The same rationale applies to commonplace labels or similar means of ornamentation that merely show banal and ordinary facets of a non-

534 GC Case T-159/10 Socie ´te´ Air France v OHIM [2011] ECR II-00109 (summary publication, full text available at http://curia.europa.eu). 535 GC Case T-499/09 Evonik Industries v OHIM [2011] ECR II-00225 (summary publication, full text available at http://curia.europa.eu). 536 GC Case T-202/09 Deichmann v OHIM [2011] ECR II-00098 (summary publication, full text available at http://curia.europa.eu). 537 GC Case T-304/05 Cain Cellars v OHIM [2007] ECR II-00112 (summary publication, full text available at http://curia.europa.eu). 538 S. on the other hand, for example, CTM 10 948 222, which was accepted by OHIM: the sign consists of two overlapping triangulars, creating an overall impression that is far more complex than that of a simple geometric form. 539 OHIM, Examination Guidelines, part B, section 4, absolute grounds for refusal, p. 24, mn. 2.2.8. 540 GC Case T-75/08 JOOP! GmbH v OHIM (’!’) [2009] ECR II- 2009 II-00189 (summary publication, full text available at http://curia.europa.eu), mn. 20–29. 541 OHIM Dec. of 16.10.2008 – R 998/2008-1 – Lidl Stiftung v OHIM (Percentage sign), mn. 19 et seq. 542 For further examples s. OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal, p. 26, mn. 2.2.10. 543 S. e. g. GC Case T-414/07 Euro-Information v OHIM [2009] ECR II-02505, finding that a stylised hand holding a card with three triangles to be devoid of any distinctive character, mn. 36 et seq.

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Art. 7 CTMR

distinctive nature. Such signs typically do not provide any specific information or precise message as to the commercial origin of goods or services.544 Figurative marks may also encounter difficulties under Art. 7 (1)(c) because of their descriptiveness. For instance, true-to-life portrayals of animals, even where slightly stylised, are commonly used to indicate for what type of animal the goods/services are intended. Therefore, the GC rightly found such true-to-life depictions of a dog and a horse, respectively, in relation to goods in classes 18 and 31 (including dog accessories, food for domestic animals, etc.) to merely indicate essential characteristics of the goods concerned and hence descriptive.545 It would be wrong, however, to conclude from this reasoning that it would be generally impossible to use figurative elements that are suggestive with regard to the goods/services claimed. It is the applicant’s responsibility to present a sufficiently modified image that significantly differs from true-to-life portrayals and the like.546 Occasionally, applicants attempt to overcome the hurdle set up by lit. (c) by embellishing or otherwise modifying purely descriptive terms. Popular methods are the ‘addition’ of colours, the use of different font effects such as ‘bold’ or ‘italics’, or other means of stylisation. Most of these attempts are to no avail. Typically, the relevant public will not regard such visual elements as conferring on the sign the function of indicating origin.547 Such visual modifications of otherwise descriptive terms (in respect of the goods/services concerned) are typically not likely to create an immediate and lasting memory on the part of the target public or to distinguish the proprietor’s goods/ services from those of others.548 All in all, as a rule it can be said that the addition of and/or combination with banal figurative elements, geometric or not, do not endow an otherwise descriptive, nondistinctive or generic sign with distinctive character. In other words, signs that contain descriptive word elements (which, in themselves, are not distinctive) are registrable only if and insofar as the figurative arrangement of the sign is capable of diverting the consumer’s attention from the descriptive/non-distinctive message conveyed by the sign as a whole. In these scenarios, it is crucial to pay tribute to the individual circumstances and, not least, to properly examine the visual impact of the figurative element in relation to the word elements.549 In order to ensure the registrability of figurative marks, it should therefore be observed by the applicant that the sign seeking protection possesses a certain degree of individuality or originality in respect of the specific goods/services raised by the application. Although figurative marks do not have to be particularly artistic or capricious,550 the obstacles (especially) contained in Art. 7 (1)(b) to (d) can be easily 544 For example, OHIM Dec. of 15.1.2013 – R 444/2012-2 – Device of a label in colour yellow, mn. 23; s. also OHIM Dec. of 22.5.2006 – R 1146/2005-2 – LABEL SHAPE (3D MARK), mn. 15 in relation to a stylised label (black and white) which was rightly found to be devoid of any distinctive character. 545 S. the judgments of the same day, GC Case T-385/08 Trautwein v OHIM (Representation of a dog) [2010] ECR II-00138 (summary publication, full text available at http://curia.europa.eu), mn. 18–30, and GC Case T-386/08 Trautwein v OHIM (Representation of a horse) [2010] ECR II-00139 (summary publication, full text available at http://curia.europa.eu), mn. 25–40. 546 S. the example in OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal, p. 56, mn. 2.3.3, showing the image of the black and white silhouette of a stylised head of a cat and, in the background, a white head of a dog, against a black circle with a white human hand over the heads, CTM 844. 547 OHIM Dec. of 7.5.2008 – R 655/2007-1 – FoamPlus, mn. 16 et seq. 548 CJ Case 37/03 P BioID v OHIM [2005] ECR I-07975, mn. 68–71; GC Case T-559/10 Laboratoire Garnier v OHIM (Natural beauty) [2012], mn. 26; GC Case T-464/08 Zeta Europe v OHIM (Superleggera) [2010] ECR II-00097 (summary publication, full text available at www.curia.eu), mn. 33 et seq. 549 OHIM Examination Guidelines, part B, section 4, absolute grounds for refusal, p. 59, mn. 2.3.4.3. 550 S. the detailed remarks above mn. 59, 63 et seq.

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249

250

251

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overcome by figurative or otherwise graphical elements that are in themselves distinctive and non-descriptive in relation to the goods/services covered by the application. Where a logo is based on heraldic devices, flags, national emblems, escutcheons, etc., attention should be paid to the absolute grounds for refusal laid down in Art. 7 (1)(h) and (i) in conjunction with Art. 6ter of the Paris Convention. Generally speaking, unless authorised by the competent authority, no use should be made in figurative marks of official emblems and escutcheons that enjoy special protection under lit. (h) and (i).551 If a sign applied for is supposed to be reminiscent of a specific country, region or place of origin, for example, the national colours of a flag in sufficiently modified form or typical structures may be used, e. g. windmills to symbolise the Netherlands, a high-rise skyline as a symbol of New York and so forth. 253 In order to illustrate the registration practice regarding figurative marks, the following charts show signs that were successfully registered and a few examples of marks that were refused, predominantly based on (b) and (c): Registered figurative marks: Type

Nice Classes

Figurative

CTM/Case Number

Authority

9, 16, 25, 28, 41

R 1122/2013-2

OHIM (BoA)

Figurative

9, 11, 35, 36, 38, 41, 42

R 698/2012-2

OHIM (BoA)

Figurative

28

R 512/2007-2

OHIM (BoA)

Figurative

6, 9, 11, 19, 20, 35

R 1345/2006-4

OHIM (BoA)

Figurative

35, 37, 42

000038752

OHIM

Figurative

3, 11, 16, 21, 24, 26, 27, 28

001198514

OHIM

551

166

Mark

S. in detail as to these grounds for refusal above mn. 153–178.

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Absolute grounds for refusal

Signs devoid of distinctive character and/or descriptive: Type

Nice Classes

Figurative

Mark

254 Case Number

Authority

33

T-194/11

GC

Figurative

5

T-492/11

GC

Figurative

multiple classes

T-159/10

GC

Figurative

6, 7, 8, 9, 20

R 444/2012-2

OHIM (BoA)

Figurative

25

R 1463/2012-2

OHIM (BoA)

IV. Tracer marks, pattern marks Another type of signs are so-called tracer marks. Such marks are less well-known 255 than other categories of signs, but are of vital importance for certain industry sectors. Tracer marks are coloured lines or threads applied to certain products. This type of marks is popular in the textile industry, but also has its firm place as a means of identifying commercial origin of ropes, hoses or cables. There is no separate category for tracer marks; as they consist of ornamental – oftentimes coloured – elements and may occur in two- and three-dimensional form, they bear a resemblance with figurative marks, 3D marks and position marks.552 As such signs may generally serve as a badge of commercial origin and can be represented graphically without further ado, the registration of tracer marks does not pose any particular challenges.553 Although not mandatory, the mark description should preferably contain the indication ‘tracer mark’; if any colours are claimed, they must be indicated in words,554 sensibly accompanied by an internationally recognised identification code (RAL, Pantone). Many tracer marks have meanwhile been accepted by the Office, such as – classified as figurative marks – a selvedge with stripes which was rightly deemed to possess distinctive character,555 thin 552 Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 4, mn. 47; OHIM Examination Guidelines, part B, section 2 Formalities, p. 28, mn. 9.8.3. 553 Likewise Eisenfu ¨ hr, in Eisenfu¨hr/Schennen(ed.), Gemeinschaftsmarkenverordnung, Art. 4, mn. 47; OHIM Examination Guidelines, part B, section 2 Formalities, p. 28, mn. 9.8.3. 554 OHIM Examination Guidelines, part B, section 2 Formalities, p. 28, mn. 9.8.3. 555 OHIM Dec. of 1.8.2002 – R 174/2001-2 – Webkante.

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black horizontal lines set at an equal distance apart on pipes, tubes or extruded profiles556 and waived lines on tubes and pipes, to name only a few.557 256 Pattern marks, as already indicated by the name, depict a recurring pattern. Figurative trade marks can be considered a ‘pattern’ mark if they consist of a set of elements which are repeated regularly.558 Such signs play an important role in the fashion and luxury goods industry. One need only think of the famous Louis Vuitton® or Burberry® patterns.559 Pattern marks do not present particular difficulties under Art. 7 (1). However, if the respective pattern is commonplace, traditional and/or typical in relation to the goods/services claimed, it may be found to be devoid of distinctive character.560 The same holds true for basic/simple designs, as they usually do not convey any message as to the commercial origin.561 Interestingly, the same may apply to patterns which are composed of extraordinarily complex designs. In such scenarios, the complexity of the overall design may not allow the design’s individual details to be committed to memory; instead, in these instances, the relevant public might perceive the pattern in question as a merely decorative element.562 Conversely, if the pattern is unusual, fanciful and/or arbitrary, departs from the norm or customs of the particular industry sector and, generally speaking, is capable of being easily memorised by the targeted consumers, it usually possesses the necessary distinctiveness.563

V. Position marks 257

A relatively recent phenomenon are so-called position marks, also referred to as positional marks.564 A position mark can be described as a sign consisting of a particular element of a specific part of a product which is always placed in the same position and size, typically in combination with a colour, texture or material contrasting with the product itself.565 According to the Office’s examination guidelines, a positional mark is a sign ‘positioned on a particular part of a product in a constant size or particular proportion to the product’.566 Consequenty, the protected subject matter of positional marks consists of the combination of the sign itself and its – always identical – position on a specific part of a product. This type of trade mark used to lead a rather ‘shabby

556 E. g. CTM 7 332 315; golden band incorporated into a light-coloured functional band for curtains and the like, s. CTM 3 001 203. 557 S. e. g. OHIM Dec. of 16.1.2006 – R 613/2005-4 – regarding a tracer mark for sanitation tubes, OHIM Dec. of 4.12.2007 – R 247/2007-1 – regarding longitudinal striations on pipes. 558 OHIM Examination Guidelines, part B, section 4 absolute grounds for refusal, p. 31, mn. 2.2.13. 559 S. e. g. CTM 0 015 602 or CTM 7 190 929. 560 E. g. GC Case T-326/10 Light grey, dark grey, beige, dark red and brown coloured checked pattern [2012] (not yet published in the ECR, available at http://www.curia.eu) and GC Case T-329/10 Black, grey, beige and dark red coloured checked pattern (not yet published in the ECR, available at http:// www.curia.eu); s. also OHIM Dec. of 9.10.2012 – R 412/2012-2 – Device of four identically sized circles. 561 OHIM Examination Guidelines, part B, section 4 absolute grounds for refusal, p. 32, mn. 2.2.13. 562 GC Case T-36/01 Texture of glass surface [2002] ECR II-03887. 563 OHIM Examination Guidelines, part B, section 4 absolute grounds for refusal, p. 33, mn. 2.2.13. 564 In the German language also known under the term Ausstattungsmarke; s. on this type of trade mark Heise, GRUR 2008, 286 et seq. 565 S. the attempt to come up with a definition for position marks by OHIM Dec. of 20.11.2002 R 983/ 2001-3 – Roter Punkt, mn. 22. 566 OHIM Examination Guidelines, part B, section 2, Formalities, p. 25, mn. 9.8.2.

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existence’ in practice,567 but a relatively high number of rulings rendered on position marks in recent years seems to indicate that this type of mark is now taking shape.568 There is no specific category of positional marks, which is of course without relevance 258 to the registrability of said signs, given the non-exhaustive nature of the list of signs capable of constituting CTMs.569 In fact, as position marks usually consist of twodimensional or three-dimensional items always attached to the same place of the product in question, such signs are in this respect similar to figurative marks and 3D marks.570 This type of marks includes signs such as ornamental seams in graphic designs on textile materials,571 colours, geometric forms e. g. in the heal of shoes,572 three-dimensional drainage holes in flower pots,573 or buttons in the ear of plush toys574 and so forth. If such signs are sufficiently distinctive and are capable of being represented graphically, they are undoubtedly capable of being registered as trade marks. Whereas the graphic representation of position marks should not present major problems, it may prove to be extremely difficult to overcome the obstacle under (b), as many of the signs applied for cannot be regarded as intrinsically distinctive. The representation of the sign must show the precise position and size of the mark 259 on the respective product, by way of technical drawings or photos. As protection is sought for the placement or position of the mark, an exact description detailing its positioning is a formal requirement. The mark description must also contain an indication that the sign in question is seeking protection as a ‘position mark’. Where a representation in colour is filed, the colour(s) must be indicated in words; it is sensible to also state the number of an internationally recognised indication code (RAL, Pantone). If the positioning is ambiguous or remains unclear, the applicant will be given two months to amend the application. The application must be limited to such goods for which the positioning is clear, and will be rejected to those goods in relation to which the positioning is doubtful or even impossible.575 It is the applicant’s responsibility to sufficiently identify the part/position of the product for which trade marks protection is sought. The Office’s practice in this regard is quite strict and formalistic, for good reason, as the scope of protection of a position mark, as a 567

Heise, GRUR 2008, 286. GC Case T-434/12 – Margarethe Steiff v OHIM (Knopf im Ohr mit Fa¨hnchen) [2014] (not yet published in the ECR, available at http://curia.europa.eu); GC Case T-433/12 – Margarethe Steiff v OHIM (Knopf im Ohr) [2014] (not yet published in the ECR, available at http://curia.europa.eu); Dec. of 16.6.2011 – R 2272/2010-2 – Semelle rouge; CJ Case C-429/10 P Xtechnology Swiss v OHIM [2011] ECR I-00076 (summary publication, full text available at http://curia.europa.eu); CJ Joined Cases C-344/10 P and C-345/10 P Freixenet SA v OHIM [2011] ECR I-10205; OHIM Dec. of 15.2.2007 – R 1176/2005-1 – Darstellung einer Uhr; OHIM Dec. of 18.4.2007 – R 781/2006-1 – Runder Fleck auf Injektionsspritze, OHIM Dec. of 6.4.2005 – R 153/2004-4 – Form einer Farbspritzpistole; OHIM Dec. of 17.4.2004 – R 458/ 2004-2 – Loch (Positionsmarke); OHIM Dec. of 20.11.2002 – R 983/2001-3 – Roter Punkt. 569 GC T-547/08 Xtechnology Swiss v OHIM (positional mark orange) [2010] ECR II-02409, mn. 19, 26, confirmed by CJ Case 429/10 P Xtechnology Swiss v OHIM (positional mark orange) [2011] ECR I-00076 (summary publication, decision available at http://curia.europa.eu). 570 Likewise Eisenfu ¨ hr in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 4, mn. 45, Art. 7, mn. 139 et seq. 571 Registrability denied (from the perspective of a figurative mark, not a ‘positional mark’) for orthopedic shoes showing a triangular shape stitching, GC Case T-202/09 Deichmann v OHIM [2011] ECR II-00098 summary publication. 572 OHIM Dec. of 16.6.2011 – R 2272/2010-2 – Semelle rouge. 573 OHIM Dec. of 17.4.2004 – R 448/2004-2 – Loch (Positionsmarke), protection denied. 574 GC Case T-434/12 – Margarethe Steiff v OHIM (Knopf im Ohr mit Fa ¨ hnchen) [2014] (not yet published in the ECR, available at http://curia.europa.eu); GC Case T-433/12 – Margarethe Steiff v OHIM (Knopf im Ohr) [2014] (not yet published in the ECR, available at http://curia.europa.eu), protection in both decisions denied. 575 OHIM Examination Guidelines, part B, section 2 Formalities, p. 25, mn. 9.8.2. 568

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registered right, depends on the representation of the mark as depicted in the register. In this context it must be observed that the (required) description of the mark must match the representation of the sign. Where technical drawings are used, it is highly recommendable to employ identifiers, such as dotted lines or boundaries to surround and features of the mark for which protection is (not) claimed.576 All in all, for a position mark to be capable of being represented graphically, it suffices that the element showing the positioning demonstrates its suitability to distinguish the mark in respect of the goods in question relative to the product specific environment in the specifically fixed position.577 260 Furthermore, a position mark is, of course, subject to the ‘normal’ scrutiny as to the obstacles contained in Art. 7 (1). Oftentimes, the sufficient degree of distinctiveness proves to be an insurmountable hurdle for position marks.578 As a rule, whether a position mark is distinctive depends largely on whether the sign seeking protection blends with the product in question itself or not; it will be capable of being registered as a trade mark only if it does not. In other words, it is necessary to determine whether the mark applied for is indistinguishable from the appearance of a designated product or whether, on the contrary, it is independent thereof.579 The test is similar to that developed in relation to three-dimensional trade marks consisting of the appearance of the product itself or the packaging of goods, such as liquids, which are packaged in trade for reasons linked to the very nature of the product.580 Whereas it is generally recognised/accepted that the criteria for assessing the distinctive character of any type of signs – be they three-dimensional marks or position marks – are no different from those applicable to other categories of marks, the relevant public may not be in the habit of making assumptions about the origin of products on the basis of two- or three-dimensional signs that occur in specific places of products and/or their packaging. It can therefore prove more difficult to establish distinctiveness in relation to some position marks.581 Many position marks seeking protection can thus not be regarded as being intrinsically distinctive save in exceptional circumstances, since they are indistinguishable from the appearance of the goods and are thus, generally speaking, not perceived as a means of identifying commercial origin. 261 Similar to the analysis concerning 3D- and/or product shape marks, if there are norms or usages in a certain product sector, these are to be considered; the more the position mark in question differs from any existing industry sector practice, the more likely it is that the mark will be found to be distinctive.582 576 S. for instance CTM 9 045 907 and CTM 6 900 898, which show examples of position marks that were accepted by OHIM; s. OHIM Examination Guidelines, part B, section 2 Formalities, p. 26. 577 Likewise Heise, GRUR 2008, 286, 291. 578 Protection denied because of lack of distinctive character: OHIM Dec. of 15.2.2007 – R 1176/2005-1 – Darstellung einer Uhr; OHIM Dec. of 18.4.2007 – R 781/2006-1 – Runder Fleck auf Injektionsspritze; OHIM Dec. of 17.4.2004 – R 458/2004-2 – Loch (Positionsmarke); protection granted, on the other hand, e. g.: OHIM Dec. of 20.11.2002 – R 983/2001-3 – Roter Punkt; OHIM Dec. of 16.6.2011 – R 2272/2010-2 – Semelle rouge. 579 GC T-547/08 Xtechnology Swiss v OHIM (positional mark orange) [2010] ECR II-02409, mn. 27, confirmed by CJ Case 429/10 P Xtechnology Swiss v OHIM (positional mark orange) [2011] ECR I-00076 (summary publication, decision available at http://curia.europa.eu). 580 CJ Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, mn. 27, 29; CJ Case C 144/06 P Henkel v OHIM [2007] ECR I-8109, mn. 36, 38; CJ Joint Cases C-344/10 P and C-345/10 P Freixenet v OHIM [2011] ECR I-10205, mn. 45 et seq. 581 Applying the criteria developed in relation to three-dimensional trade marks, CJ Joint Cases C-344/ 10 P and C-345/10 P Freixenet v OHIM [2011] ECR I-10205, mn. 46–50. 582 GC T-547/08 Xtechnology Swiss v OHIM (positional mark orange) [2010] ECR II-02409 mn. 53–59, confirmed by CJ Case 429/10 P Xtechnology Swiss v OHIM (positional mark orange) [2011] ECR I-00076 (summary publication, decision available at http://curia.europa.eu); CJ Joint Cases C-344/10 P and C-345/ 10 P Freixenet v OHIM [2011] ECR I-10205, mn. 47–50.

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Absolute grounds for refusal

Position marks accepted by the Office: Type

Nice Classes

Position

Mark

262 Case Number

Authority

25

R 2272/2010

OHIM (BoA)

Position

25

R 51/2006-4

OHIM (BoA)

Position

8

R 983/2001-3

OHIM (BoA)

Refused position marks: Type

Nice Classes

Position

263 Mark

Case Number

Authority

28

T-434/12

GC

Position

28

T-433/12

GC

Position

25

T-208/12 (appealed: C-521/ 13 P)

GC

Position

25

C-429/12

CJ

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VI. 3D marks Three-dimensional marks play a vital role in today’s filing practice. At times, almost every hundredth CTM applied for was a 3D mark. Over the past years, the number of 3D marks have steadily remained in the range of 0.5 per cent of all CTM applications.583 However, the big ‘boom’ appears to have meanwhile subsided,584 which may be to a large degree attributable to the fact that most of the 3D CTM applications were refused, which holds true in particular to (pure) product shape marks. It remains to be seen whether 3D marks will regain popularity after the CJ recently held that the representation by a design alone, without indicating the size or the proportions, of the layout of a retail store may be registered as a CTM provided that the sign is sufficiently distinctive.585 265 In principle, the registration of three-dimensional marks is feasible as long as the signs in question are capable of functioning as indicia of origin, are not descriptive and not barred because of their basic or functional shape under Art. 7 (1)(e)(i), (ii). As a general observation, however, it must be noted that the protectability of 3D marks is inextricably intertwined with the closeness of the sign in question to the goods (and to a lesser degree, also services) in relation to which protection is sought. If there is no or only a remote resemblance between the marks applied for and the shape of goods covered by the application (or the shape of their packaging), the registration does not pose significant challenges. Classic examples of such three-dimensional marks are the Michelin Man®586 or the Rolls Royce® radiator mascot ‘Flying Lady’.587 Conversely, the closer the mark resembles the shape of the goods in question, the more likely it is that the threedimensional sign will be refused registration under Art. 7 (1)(c) and/or (e), respectively. 266 The graphic representability of a three-dimensional mark does not pose any challenges. According to Art. 3 (4) CTMIR, the application must contain an indication to the effect that registration of a 3D mark is requested. If no mark type is indicated and only one (two-dimensional) view has been provided in the application, OHIM will treat this sign as a figurative mark.588 The photographic or graphic representation of the sign may contain up to six different perspectives of the mark (Art. 3 (4) CTMIR), to be submitted in one single JPEG filed in the case of e-filing or on one single A4 sheet in the 264

583 S. statistical data available on OHIM’s website at https://ohim.europa.eu Õ about OHIM Õ Statistics of Community Trademarks Õ applications – breakdown by type of mark, 2012 0.49 %, 2013 0.46 %, 2014 0.50 %; as of 1.4.1996 to date: 0.62 %. 584 Bender, MarkenR 2012, 41, 47; the highest peak of the boom, also amongst legal scholars, was around the turn of the millennium, s. e. g. Firth/Gredley/Maniatis, EIPR 2001, 86 et seq.; FolliardMonguiral/Rogers, EIPR 2003, 169; Pagenberg, IIC 2004, 831 et seq. 585 CJ Case C-421/13 Apple v DPMA [2014] (not yet published in the ECR, available at http:// curia.europa.eu), mn. 15 et seq.; s. on this decision also above Schneider, Art. 4, mn. 55. 586 The Michelin Man is often referenced as a classic example of three-dimensional marks that are independent of the shape of the goods (in concreto: tires), s. Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7 mn. 110, likewise v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR mn. 8 (c); interestingly enough, as far as can be seen, the Michelin Man is registered only as a two-dimensional figurative mark, e. g. CTM 009914763, IR 392 056, IR 571 170. 587 The Rolls Royce® radiator mascot ‘Flying Lady’ (the so-called Emily) is also referenced as a typical example of the three-dimensional mark, s. Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 110, as far as can be seen, however, although the ‘Emily’ could certainly be registered as a 3D mark, and likewise the jumping jaguar of the Jaguar cars, it has not been registered as a three-dimensional mark yet, registered in two-dimensional form as CTM 00002667; another example of a 3D mark, which is totally unrelated to the goods/services covered as CTM 010942316, which shows the mascot of the soccer club 1. FC Ko¨ln®. 588 OHIM Guidelines for Examination, part B, sect. 2, formalities, p. 18/19, mn. 9.3.

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case of paper-filed applications. Where the shape seeking protection can be ascertained from a single view, it is sufficient to file only one view of the shape in question.589 In principle, three-dimensional marks can be classified in three categories, namely (i) shapes that are unrelated to the goods and services seeking protection, (ii) marks that consist of a shape of the goods themselves or part of the goods and (iii) signs comprising the shape of packaging or containers of the goods in question.590 The registration of 3D marks belonging to aforementioned group (i) is generally completely unproblematic, as shapes which are unrelated to the goods or services themselves are usually intrinsically distinctive. Moreover, such signs generally do not encounter problems under Art. 7 (1)(e). In contrast, registration of 3D marks belonging to aforementioned categories (ii) and (iii) proves to be extremely difficult. Signs that consist of the goods themselves, or a part thereof, or incorporate the shape of the packaging of the goods claiming protection, usually lack the required distinctive character and/or are seen as natural or functional shapes under lit. (e) and/or, although less often, may be found to be descriptive.591 With a view to the scrutiny of such 3D marks that consist of the shape of the goods themselves under Art. 7 (1), the assessment should be carried out in three steps. In an initial step, it should be examined whether one of the absolute bars set out under Art. 7 (1)(e) applies.592 Unlike the absolute grounds for refusal contained in lit. (b) to (d), the obstacles under lit. (e) cannot be overcome by acquired distinctiveness and are thus rightly regarded as preliminary obstacles.593 Although there is no strict obligation to do so on the part of OHIM,594 the prior examination of 3D marks under lit. (e) appears to be logical where several of the absolute bars laid down in Art. 7 (1) may be applicable to a CTM application.595 Regarding the examination of three-dimensional marks consisting of shapes resulting from the nature of the goods, functional shapes and those that give substantial value to the goods, the above-described principles apply (s. above mn. 107– 136). In this context, it should be noted that the registration practice, especially with regard to the bars under lit. (e)(i) and (ii), is very restrictive. This is justified by the underlying public interest aimed at keeping certain product shapes fully available for general use. Allowing trade mark protection for (three-dimensional) shapes resulting from the nature of the goods themselves could lead to a monopolisation of entire product categories by one proprietor.596 Similarly, granting trade mark protection, theoretically for an unlimited period of time to functionality-based product shapes would jeopardise a healthy and fair system of competition and thus restrict commercial freedom excessively, particularly in an entrepreneurial environment where technical progress is based on a process of ongoing improvement of earlier innovations.597 In light of this, the absolute 589

OHIM Guidelines for Examination, part B, sect. 2, formalities, p. 18, mn. 9.3 Likewise OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 28, mn. 2.2.12.1. 591 S. as to descriptive shapes that are barred under Art. 7 (1)(c), Folliard-Monguiral/Rogers, EIPR 2003, 169, 171. 592 Such an initial examination of the absolute grounds for refusal under Art. 7 (1)(e) is also suggested by the OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 28, mn. 2.2.12.3. 593 S. e. g. CJ Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. [2002] ECR I-05475, mn. 76; CJ Joined Cases C-53/01 to 55/01 Linde AG and Winward Industries v Rado Uhren GmbH [2003] ECR I-03161, mn. 65; GC Case T-460/05 Bang & Olufsen v OHIM [2007] ECR I-04207, mn. 42. 594 Explicitly stated in GC Case T-508/08 Bang & Olufsen v OHIM [2011] ECR II-06975, mn. 47. 595 S. above mn. 113, 114. 596 Likewise v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trademarks and Design Law, Art. 7 CTMR, mn. 8 (a). 597 S. in detail as to the public interest underlying the obstacles contained in lit. (e)(i) to (ii) mn. 107, 108; s. also Schober, IIC 2013, 35, 36. 590

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268

269

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grounds for refusal particularly under lit. (e)(i) and (ii) are – rightly – rigorously applied.598 By way of example, signs to which Art. 7 (1)(i) or (ii) applies range from the famous Lego® brick599 and the head of an electric shaver600 to the shape of a bottle which was predominantly predetermined by functionality.601 271 Second, where the 3D mark consisting of the shape of the goods themselves or of shapes related to the goods or services is not caught by one of the obstacles under Art. 7 (1)(e), it should be assessed whether the sign seeking protection contains elements – such as words, labels or figurative features – that are in themselves distinctive. As a rule, any element which is in itself distinctive will endow the three-dimensional mark as a whole with distinctive character. As a consequence, even standard shapes of a product are registrable as 3D marks if distinctive elements that remain clearly visible are incorporated in the sign.602 It should be kept in mind, however, that in such scenarios only the distinctive element forms part of the protected subject matter of the composite 3D mark, so that, strictly speaking, the shape as such does not enjoy trade mark protection. 272 As a third step where the CTM applied for is not barred under lit. (e) and does not possess any element that is in itself distinctive, it has to be examined whether the 3D shape as such possesses the required distinctiveness. The obstacle contained in lit. (b) creates the biggest problems for 3D marks consisting of the shape of the goods or shapes related to the goods or services in question and oftentimes proves to be an insurmountable hurdle. In this respect, it should be recalled at the outset that, according to established case law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself or, for that matter, its packaging, are no different from those applicable to other categories of marks.603 Thus, 3D marks are not subject to criteria which are stricter than those applicable to other types of signs; rather, it suffices that the sign in question possesses a minimum degree of distinctiveness in order to overcome the bar contained in Art. 7 (1)(b).604 In assessing those criteria, however, regard must be had to the fact that the perception of the relevant public is not necessarily the same in relation to a three-dimensional mark consisting of the shape of the product itself as it is in relation to verbal or figurative signs which are independent of the appearance of the product it denotes. Where the shape relates to everyday consumer goods addressed to end consumers, the relevant public is the average consumer who is reasonably well informed and reasonably observant and circumspect.605 Average consumers are, however, typically not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the 598

As to the criticism of the obstacle under Art. 7 (1)(e)(iii), s. above mn. 126–132. CJ Case C-48/09 P Lego Juris v OHIM [2010] ECR I-08403, mn. 40 et seq. 600 Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. [2002] ECR I-05475, mn. 76. 601 OHIM Dec. of 21.3.2001 – R 537/1999-2 – Galliano Bottle, mn. 16, 17 (despite additional – fairly simple – ornamental design elements). 602 Rightly emphasised in OHIM Guidelines for Examination, part B, sect. 4 absolute grounds for refusal, p. 28, mn. 2.2.12.3; rightly denied for a non-distinctive addition (the word ‘fun’ which was seen as descriptive in relation to the goods in question) for merely descriptive elements in combination with a standard shape, GC Case T-137/12 FunFactory v OHIM (Shape of a Vibrator) [2013] (not yet published in the ECR, decision available – in the German language only – at http://curia.europa.eu), mn. 34–36. 603 CJ Joined Cases C-344/10 P and C-354/10 P Freixenet v OHIM [2011] ECR I-10205, mn. 45; GC Case T-178/11 Voss of Norway v OHIM [2013] (not yet published in the ECR, available at http:// curia.europa.eu), mn. 41. 604 S. the detailed remarks on the minimum degree of distinctiveness and the criteria applicable for all categories of marks, above mn. 59–62. 605 CJ Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, mn. 33; CJ Case C-25/05 P Storck v OHIM [2006] ECR I-5719, mn. 25; GC Case T-178/11 Voss of Norway v OHIM [2013] (not yet published in the ECR, available at http://curia.europa.eu), mn. 40. 599

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absence of any verbal or graphic elements, and it can therefore prove more difficult to establish distinctive character in relation to such 3D marks than in relation to a verbal or figurative mark.606 The CJ concludes from this that only those 3D marks (consisting of the appearance of 273 the goods themselves or the shape of their packaging) possess the distinctive character required under Art. 7 (1)(b) that ‘departs significantly from the norm or customs of the sector and (therefore) fulfils the essential function of indicating origin’.607 This requirement of a ‘significant departure’ from the norm or customs of the economic sector concerned seems to be too strictly applied in some cases and, as a consequence, irreconcilable with the notion that the general, and no stricter, criteria must be applied for the examination of the distinctiveness of 3D marks.608 Because of this rigorous regime, criticism is being voiced that the (allegedly) equal evaluation criteria applicable to 3D marks stereotypically reiterated by the CJ would be mere lip service.609 One must agree with the CJ’s assessment, however, that the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product (or its packaging) in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Art. 7 (1)(b).610 Of course, the distinctive character of the sign for which registration is requested 274 must be assessed in concreto by reference to the goods/services in question and the perception of the relevant public.611 The proof of distinctive character in no way requires that the shape of the good in respect of which protection for the sign is being sought must include some capricious addition.612 However, although such capricious modification or a (non-functional) embellishment of the 3D mark in question is not necessary, it is certainly helpful to overcome the obstacle under Art. 7 (1)(b). Consequently, especially in product sectors where different product shapes are already customary, the relevant public might perceive the 3D mark in question as an indication of commercial origin because of its capricious form, if and to the extent that it sets itself apart from those product shapes offered by other commercial operators.613 Furthermore, in applying the general criteria under Art. 7 (1)(b) to three-dimensional 275 marks, account must be taken of the norms and customs in the respective product segment(s). This entails that the perception of the relevant public may differ from one product sector to another. It may be true that, for example, the average consumer may usually not perceive a particular shape of a product as a badge of origin. However, this varies strongly within the various industry sectors and thus has to be determined in concreto. For example, in the perfume sector there has long been a familiarisation on the 606 CJ Joined Cases C-344/10 P and C-354/10 P Freixenet v OHIM [2011] ECR I-10205, mn. 46; GC Case T-178/11 Voss of Norway v OHIM [2013] (not yet published in the ECR, available at http:// curia.europa.eu), mn. 42. 607 CJ Case C-25/05 P Storck v OHIM [2006] ECR I-05719, mn. 28 (emphasis added); recently confirmed, in relation to a 3D mark for the layout of retail stores in the electronic sector, CJ Case C421/13 Apple v DPMA [2014] (not yet published in the ECR; ECLI No-EU: C:2014:2070), mn. 20. 608 Stressing this aspect that no stricter criteria are applicable for 3D marks, CJ Joined Cases C-53/01 to 55/01 Linde Winward Rado [2003] ECR I-03161, mn. 37; likewise CJ Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-09165, mn. 30. 609 Rohnke, MarkenR 2006, 480, 482. 610 CJ Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-09165, mn. 31, stressing – in the following sentence of the same paragraph – that only a mark which departs significantly from the norm or customs of the industry sector concerned may fulfill its essential function of a source indicator. 611 Established case law, s. most recently CJ Case C-421/13 Apple v DPMA [2014] (not yet published in the ECR; ECLI No-EU: C:2014:2070), mn. 22. 612 CJ Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. [2002] ECR I-05475, mn. 49, 50. 613 German Federal Court (BGH) Case I ZB 38/00 GRUR 2004, 328, 330 – Ka ¨ se in Blu¨tenform.

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Community Trade Mark Regulation

part of the public to the effect that consumers perceive the shape of perfume flacons with particular attentiveness. Therefore, in the cosmetic industry, but also in some other product sectors, the general rule developed – and stereotypically repeated – by the CJ according to which the consumer usually fails to recognise (three-dimensional) product designs as an indication of origin has long since been reversed. 276 As mentioned above, the distinctive character of a 3D mark consisting of a shape of the goods themselves or their packaging must be assessed in concreto.614 Basic shapes or combinations of shapes that are common in the particular product sector do not, by themselves, endow the 3D mark with distinctiveness.615 Likewise, it does not suffice for the establishment of distinctiveness to deviate slightly from common shapes, especially in an area where a huge diversity of designs exist.616 Consequently, various attempts to register three-dimensional marks for ‘washing or dish-washing preparations in tablet form’ failed, as the shapes consisted of rectangular tablets, which is a basic and obvious shape for such goods.617 Conversely, a distinctive character is deemed to exist if the shape in question is (also) characterised by aesthetic elements that deviate from those features that are necessarily linked to the nature of the goods themselves, which can be achieved by inclusion of decorative or any other distinctive elements.618 An example of such a (clearly) distinctive 3D mark may be found in the well-known triangular shape of the Toblerone® chocolate bars.619 277 As Art. 4 draws no distinction between the various types of signs, it is generally conceivable to register 3D marks consisting of the shape of a building complex, as long as the sign seeking protection is capable of distinguishing the goods or services of one undertaking from those of others. In this respect, however, it has to be taken into consideration that the relevant public does not usually perceive buildings, and parts thereof, as indicia of commercial origin. Therefore, OHIM refused registration of a 3D mark for the so-called ‘Smart Tower’ because consumers would not associate an ultra large product showcase with a particular undertaking.620 It merits particular mention in this context that the CJ recently held that the three-dimensional representation of the layout of a retail store, without indicating the size or the proportions, may be registered

614 CJ Case C-421/13 Apple v DPMA [2014] (not yet published in the ECR; ECLI No-EU: C:2014:2070), mn. 22. 615 E. g. GC Case C-286/04 P Eurocermex v OHIM [2005] ECR I-05797, mn. 30 with regard to the shape of a (beer) bottle; GC Case T-30/00 Henkel v OHIM (Tabs-Square/Red/White) [2001]ECR II-02663, mn. 27 et seq. 616 CJ Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-09165, mn. 32, in respect of the threedimensional shape of a torch; s. also OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 28, mn. 2.2.12.3. 617 GC Case T-30/00 Henkel v OHIM (Tabs-Square/Red/White) [2001] ECR II-02663, mn. 44 et seq. 618 E. g. the 3D shape of a glass bottle showing creative design elements, OHIM Dec. of 4.8.1999 – R 109/1999-1 – THREE-DIMENSIONAL MARK GRANINI-BOTTLE (decision only available in the German language), mn. 13, 14; another example of a shape of a glass bottle that was not regarded as commonplace is that of the famous Coca-Cola® bottle the appearance of which the BoA was rightly found to be striking and easy to remember, OHIM Dec. of 31.3.2014 – R-525/2013-2 – The Coca-Cola Company v OHIM (SHAPE OF A BOTTLE/THREE-DIMENSIONAL MARK), mn. 26, 27; Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverorndnung, Art. 7, mn. 215. 619 CTM 00505461, also depicting the word mark Toblerone®, and thus registered without the need to rely on Art. 7 (3). 620 OHIM Dec. of 7.7.2004 – R 1/2003-4 – ‘SMART TURM I’ (THREE-DIMENSIONAL MARK), mn. 13 et seq.; the applicant did not overcome the obstacle under Art. 7 (1)(b) by acquired distinctiveness under Art. 7 (3); furthermore, the applicant could not successfully ‘rely’ on national registrations of the same mark in Macedonia, Estonia, Lithuania and Turkey (s. mn. 20), not least because such national registrations have no binding effect on OHIM decision-making.

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Art. 7 CTMR

Absolute grounds for refusal

as a trade mark for services if the sign is sufficiently distinctive.621 It can only be assumed that the referring court, the German Federal Patent Court, will answer the latter question in the affirmative, as it already indicated that the three-dimensional trade mark in question ‘has features that distinguishes it from the usual layout of retail stores in the electronic sector’.622 Above-referenced criteria apply mutatis mutandis to the shape of bottles or contain- 278 ers for the goods and their packaging which is linked to the very nature of the product in question. Such three-dimensional signs can be considered to have distinctive character only if they may be perceived right away as an indication of origin of the goods concerned, i. e. without conducting an analytical or comparative examination without paying particular attention.623 Accordingly, the two-dimensional representation in perspective of a sweet in a gold-coloured wrapper with twisted ends624 and the gold wrapping of a bunny-shaped chocolate with a red ribbon were refused registration, as those features – both individually and cumulatively – were devoid of distinctive character for products in the concerned industry.625 An excellent example of a threedimensional mark that consists of the packaging of the goods and is clearly distinctive may be found in the McDonald’s® container for various goods in classes 29 and 30, claiming the colours red and gold, and showing the so-called ‘golden arches’.626 The lack of distinctiveness of a three-dimensional mark under lit. (b), and likewise 279 any descriptiveness under lit. (c), can be overcome by virtue of Art. 7 (3).627 It should be noted in this context that the obstacles under Art. 7 (1)(e) cannot be remedied by acquired distinctiveness. Examples of registered shape marks are shown below: 280 Type

Nice Classes

3D

30

Mark

CTM/Case Number

Authority

000784389

OHIM

621 CJ Case C-421/13 Apple v DPMA [2014] (not yet published in the ECR; ECLI No-EU: C:2014:2070), mn. 15 et seq. 622 CJ Case C-421/13 Apple v DPMA [2014] (not yet published in the ECR; ECLI No-EU: C:2014:2070), mn. 13, summarising the point of view of the Bundespatentgericht, s. the detailed analysis of this decision above by Schneider, Art. 4, mn. 55. 623 GC Case T-15/05 De Wale v OHIM (shape of a sausage) [2006] ECR II-01511, mn. 33, and the cases cited therein. 624 CJ Case C-25/05 P Storck v OHIM [2006] ECR I-05719, mn. 54, stressing that such a wrapping is not unusual in the marketing of confectionary. 625 CJ Case 98/11 P Chocoladefabriken Lindt & Spru ¨ ngli v OHIM (shape of a bunny made of chocolate with a red ribbon) [2012] (not yet published in the ECR, available at: http://www.curia.europa.eu), mn. 44–47. 626 Registered as CTM 002467074, mark description: container/packaging for goods; obviously registered without the need to prove acquired distinctiveness. 627 S. as to acquired distinctiveness below, mn. 313–334.

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281

Type

Nice Classes

3D

3D

Community Trade Mark Regulation Mark

CTM/Case Number

Authority

29, 30, 32

R 139/1999-1

OHIM (BoA)

33

000335984

OHIM

Of the many shape marks that were refused registration, a few examples are depicted in the following chart: Type

Nice Classes

3D

Case Number

Authority

9, 11

C-136/11

CJ

3D

18

T-410/10

GC

3D

29, 30, 32

C-238/06 P

CJ

178

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Absolute grounds for refusal Type

Nice Classes

3D

9

Mark

Case Number

Authority

T-358/04

GC

VII. Colour marks Colours and colour combinations have become an indispensable part of today’s 282 marketing and, hence, trade mark schemes. The increasing use of colours, not only in relation to the products themselves and the packaging, but also in online and offline advertising and sales outlets, is intended to create a uniform appearance in the marketplace that identifies the company and its products alike. As such, colours form an integral part of the corporate identity of the countless companies and are, as such, of profound economic importance.628 This considerable commercial significance of colours and colour combinations is not adequately reflected in the filing figures over the past years. Statistically, colour marks make up only 0.03 per cent of all CTM applications.629 This extremely low figure is owed to OHIM’s practice according to which CTM applications that contain other matter, such as words, letters, numerals or images, are not classified as colour marks, but seen as figurative marks. This explains why the contingent of figurative marks is fairly strong and totals almost 45 per cent.630 The relatively low percentage of applications for colour marks therefore relates to, as it is referred to by the Office, only ‘colour per se marks’.631 In fact, looking at trade marks that contain colour elements in one form or the other, the total is probably in the range of 15 to 20 per cent. The remarks below, following the terminology of the Office, relate to only CTMs that claim protection of a colour or colour combination per se, as those applications encounter certain challenges, especially under Art. 7 (1)(a) to (c). In contrast, where word marks are registered in the ‘corporate colours’ of the proprietor, e. g. the item® red,632 or in any other colour,633 the use of colours in such composite marks is unproblematic (according to the Office’s terminology, such ‘coloured’ word marks are classified as ‘figurative marks’). Until the late nineties of the last century, trade mark protection for colours as such, in 283 an abstract, undelineated manner, was not possible under most of the Member States’ 628 Kappos/Vo ¨ lker, WTR 2014, 49 et seq., also on the history and evolution of colour mark protection in the US and the EU. 629 S. OHIM’s website under https://oami.europa.eu Õ About OHIM Õ Statistics of Community Trade Marks Õ break down by type of mark (last visited on 6.5.2014). 630 S. OHIM’s website under https://oami.europa.eu Õ About OHIM Õ Statistics of Community Trade Marks Õ break down by type of mark (last visited on 6.5.2014), in 2014 44.79 %, after a total of 43.69 % in 2013. 631 OHIM Examination Guidelines, part B, section 2 Formalities, p. 22, mn. 9.5. 632 S. CTM 004213484, also depicted on the company’s website www.item24.com. 633 S. e. g. a figurative mark PRADA® in white letters against red background, CTM 1061531; another example may be found in the figurative mark Fissler®, also in white letters against the Fissler red background, CTM 99457.

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Community Trade Mark Regulation

trade mark regimes. In special circumstances, some sort of protection was granted to colours or colour combinations after intense and long-standing use, either by trade dress or unfair competition protection.634 Meanwhile it is generally accepted that colour marks per se, even if the sign consists of only one colour and is not spatially limited, may enjoy trade mark protection; it should not be overlooked, however, that the CJ rightly sets high standards as to the registrability of colours per se, trying to strike a balance between the individual interest in having certain colours or colour combinations protected as trade marks and the public interest in not unduly restricting the availability of colours for other economic operators.635 284 The general registrability of colour marks refers to both single-colour and multi-colour signs. According to a joint declaration of the Council of the EU and the Commission, ‘a combination of colours or a single colour may be registered as a trade mark, provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings’.636 Obviously, this joint declaration is, as explicitly stated in the declaration itself, ‘without prejudice to the interpretation of that text by the CJ’.637 Despite the non-binding character of said declaration, the CJ shared the point of view expressed therein and affirmed that an abstract colour mark, without contours, is in principle capable of being registered as a trade mark, subject to three conditions: (i) the mark must be a sign, (ii) it can be represented graphically and (iii) it is suitable to distinguish goods/ services of one undertaking from those of a different origin.638 Especially the latter criterion, the necessary degree of distinctiveness, oftentimes creates an insurmountable obstacle for the registration of single colour marks, as colours may be capable of conveying certain associations of ideas and of arousing feelings, but possess little inherent capacity to serve as an indication of origin. The possibility that a colour per se may in some circumstances serve as a badge of origin, however, cannot be ruled out.639 The same holds true, although to a lesser degree, with regard to the registrability of colour combinations. 285 Out of the three criteria established by the CJ,640 only the third one, the required distinctiveness of the sign seeking protection, poses major difficulties. First, the colour or colour combination in question must constitute a sign. A colour is usually a mere feature or characteristic of objects, or, in other words, ‘a simple property of things’.641 It can be considered a sign or brand, however, if the colour is used as a reference to goods or services.642 Furthermore, the sign in question must be capable of being represented graphically, which is unproblematic as long as the sign can be represented by way of figures, lines or characters in such a way that it can be precisely identified.643 With a 634 S. from the German perspective, German Federal Patent Court Case 30 W (pat) 132/95 GRUR 1996, 881, 882 et seq. – Farbmarke. 635 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 52–56; CJ Case C-49/02 – Heidelberger Bauchemie (blue/yellow) [2004] ECR I-6129, mn. 41; v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7, mn. 5 (l); Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 107, mn. 102 et seq.; Kappos/Vo¨lker, WTR 2014, 49. 636 Joint declaration of the EU and the Commission, OHIM OJ No 5/96, p. 607 (emphasis added). 637 Joint declaration of the EU and the Commission, OHIM OJ No 5/96, p. 607; stressed by the CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 25. 638 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 23; reiterated by the CJ in its recent decision on the protection of the ‘layout of a retail store’, CJ Case C-421/13 Apple [2014] (not yet published in the ECR, available at http://curia.europa.eu), mn. 17. 639 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 40, 41. 640 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 23. 641 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 27. 642 CJ Case C-104/01 – Libertel [2003] ECR I-03793, ibid. 643 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 28, 29, citing CJ Case C-273/00 Sieckmann [2002] ECR I-11737, mn. 46, mn. 47–55.

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view to the possible life cycle of a trade mark, the submission of a mere sample of the colour in question does not suffice, as the sample may deteriorate with time so that the exact shade of the colour cannot be protected from the effects of the passage of time.644 It is therefore necessary to represent the single colour by a sample on a flat surface, accompanied by a description in words of the colour and/or an internationally recognised identification code (such as RAL or Pantone).645 The representation of the colour must show the sign (i. e. the colour) without contours.646 It should be noted in this context that an initially insufficient application for a colour mark, for example because the representation of the sign lacks precision or durability, can be remedied by adding a colour designation from an internationally accepted identification code.647 It should be kept in mind that international colour codes are accepted as additional information, but cannot replace the description of the colour in words.648 Where the sign consists of two or more colours, claimed in the abstract and without 286 contours, the application must include a systematic arrangement associating the colours concerned in a predetermined and uniform way.649 As a consequence, the mere juxtaposition of two or more colours without shape or contours, or a reference to two or more colours ‘in every conceivable form’, does not exhibit the necessary precision and uniformity, and is thus impermissible.650 By far the biggest problem relating to the registration of colour marks is the required 287 distinctiveness, but also the public interest in maintaining a system of undistorted competition that does not create an unjustified competitive advantage for a single trader by monopolising the use of certain colours in entire product/industry sectors.651 Both of these aspects are in fact to a certain degree interrelated. The fact that colour marks are in general suitable to constitute a trade mark does not mean that they necessarily possess distinctive character for the purposes of Art. 7 (1)(b). Rather, a colour mark’s distinctiveness must be assessed in relation to the goods or services embraced by the application from the perspective of the relevant section of the public.652 Although no distinction is made in Art. 7 (1)(b) between different types of signs, the perception of the relevant public is not necessarily the same in the case of a sign consisting of a colour per se as it is in the case of a word or figurative mark consisting of a sign that bears no relation to the appearance of the goods it denotes. While the public is accustomed to perceiving word and/or figurative marks instantly as badges of origin, the same is not necessarily true when the sign forms part of the look or get-up of the goods in respect of which a registration is sought. As – in this context rightfully – stereotypically repeated by the courts, consumers 644 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 31, 32; CJ Case C-273/00 Sieckmann [2002] ECR I-11737, mn. 53. 645 CJ Case C-273/00 Sieckmann [2002] ECR I-11737, mn. 30; OHIM Examination Guidelines, part B, section 2 Formalities, p. 22, mn. 9.5. 646 OHIM Examination Guidelines, part B, section 2 Formalities, p. 22, mn. 9.5. 647 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 38. 648 OHIM Examination Guidelines, part B, section 2 Formalities, p. 22, mn. 9.5. 649 CJ Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-06129, mn. 33, 42. 650 CJ Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-06129, mn. 34; s. also OHIM Dec. of 13.12.2006 – R 1004/2006-2 – PURPLE WHITE(colour mark), mn. 2, 17, where the applicant stressed in the description of the mark that the sign ‘is not limited to the particular proportions nor the configuration of colours shown in the representation attached to the application’ which was rightly refused by the examiner and confirmed by the BoA. 651 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 54; CJ Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-06129, mn. 41. 652 S. the detailed analysis as to the specific goods and services and the relevant public above, mn. 19– 26; as regards colour marks s. GC Case T-234/01 STIHL v OHIM (COMBINATION OF ORANGE AND GREY) [2003] ECR II-2867, mn. 30; GC Case T-316/00 Viking-Umwelttechnik v OHIM (juxtaposition of green and grey) [2002] ECR II-3715, mn. 26.

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are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging. This is so because in current marketing and communication practice, colours are not used as a means of identification but rather for their appeal in order to advertise and market goods or services, without any specific message. Consequently, a colour per se is ‘not normally inherently capable of distinguishing the goods of a particular undertaking’.653 Therefore, according to settled case law, distinctiveness of a colour per se without any prior use of the sign is inconceivable save in exceptional circumstances. This might be different in cases where the goods or services claimed by the mark are very limited and the relevant market very specific.654 288 Generally speaking, colours – and also, although to a lesser degree, combinations of a limited number of colours – are not perceived as an indication of origin, but rather as part of the decoration or the design of a product or its packaging, a means to draw attention to the dangerous part of tools (with regard to the colour orange),655 or simply as colours that are commonly used in relation to certain goods, such as the colour green for lawn mowers, hedge clippers and other garden utensils.656 289 The assessment of whether or not a colour mark is devoid of distinctive character for the goods or services claimed by the application must take into account all relevant circumstances of the case, including any use which has been made of the sign in question. As part of this examination, regard must be had to the public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought.657 Colours are commonly and widely used in virtually all industry sectors, as they may convey certain associations of ideas, arouse feelings, or be simply used as a means of ornamentation or decoration. Such wide-spread usage for purposes other than identifying the commercial source of products/services leads to the consequence that the target public does not perceive colours as a badge of origin, which, in turn, leads to the inherent lack of distinctiveness of colours per se, i. e. colour signs that are not spatially limited. In this context, the fact has to be taken into account that the number of colours actually available is limited, so that a small number of trade mark registrations could exhaust the entire range of the available colour spectrum. Thus, such an extensive monopoly would be incompatible with a system of undistorted competition.658 290 The innate lack of distinctiveness of a sign consisting of a single colour or a colour combination can of course be overcome as the result of the use made of those signs in relation to the goods or services claimed.659 For the establishment of acquired distinctiveness under Art. 7 (3), it is of paramount importance to limit the application/ registration to those goods/services in relation to which the initial lack of distinctive character has been overcome through long-standing, intensive use. The applicant may

653 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 65; CJ Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-06129, mn. 37, 38. 654 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 66; CJ Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-06129, mn. 39. 655 In relation to ‘motor saws’, ‘mechanical cutting-off machines’ and the like contained in class 7, s. GC Case T-234/01 STIHL v OHIM (combination of orange and grey) [2003] ECR II-2867, mn. 33. 656 GC Case T-316/00 Viking-Umwelttechnik v OHIM (juxtaposition of green and grey) [2002] ECR II3715, mn. 29 et seq.; likewise v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 5 (l). 657 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 52–56; CJ Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-06129, mn. 41. 658 CJ Case C-104/01 – Libertel [2003] ECR I-03793, mn. 54; CJ Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-06129, mn. 41. 659 S. the detailed remarks on acquired distinctiveness under Art. 7 (3) below mn. 313 et seq.

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file such a limitation of the goods/services covered by the application during the registration procedure.660 The aforesaid applies, to a lesser extent, also to signs that consist of colour composi- 291 tions. As a rule, the more colours are contained in a colour mark, the more likely it is that the sign will be found to have distinctive character. Again, the distinctiveness of a particular colour combination must be assessed in respect of the goods or services for which protection is claimed. Court rulings concerning colour compositions are still restrictive. The registration of the horizontal combination of the colours grey and red, for example, was refused because these colours were seen as common decorative elements in relation to the services for which protection was sought (transportation of passengers and goods by train).661 Likewise, the registration of a colour mark that consisted of a combination of 24 coloured boxes (with varying colours), arranged in six columns and four rows, was refused. Owing to the specific form, it would be difficult for the public to remember the overall impression produced by the mark because of the chosen graphic design; as a result, the relevant public would perceive the sign applied for to have only a decorative function, but not as an indication of origin.662 This decision may serve as proof of how restrictive the registration practice is with respect to colour combinations, as the arrangement of the particular sign consisting of 24 square colour boxes might just as well have been found to be distinctive. Examples of registered colour marks: 292 Type

Nice Classes

Mark

Case Number/CTM Authority

Colour

33

Orange

R 158/2004-2 ‘Veuve Cliquot’

OHIM (BoA)

Colour

38, 42

Magenta

CTM 000212753

OHIM (Examiner)

A few examples of refused colour marks are depicted below:

293

Type

Nice Classes

Mark

Case Number

Authority

Colour

Products used in the building trade (decision upon order for reference)

Blue and yellow

C-49/02 ‘Heidelberger Bauchemie’

CJ

Colour

18, 20, 21, 28, 31

Purple and white

R-1004/2006-2

OHIM (BoA)

Colour

7

Orange and grey

T-234/01

GC

Colour

7

Green and grey

T-316/00

GC

660 S. e. g. OHIM Dec. of 26.4.2006 – R 158/2004-2 – Veuve Cliquot v OHIM (colour orange), mn. 18 et seq., where the applicant limited the goods to ‘champaign’, in relation to which it was able to establish acquired distinctiveness through use. 661 CJ Case C-45/11 P Deutsche Bahn v OHIM (not yet published in the ECR, available – in the German language only – athttp://curia.europa.eu), mn. 35 et seq. 662 GC Case T-400/07 Gretag Macbeth v OHIM [2008] ECR II-00257 (summary publication, full text available at http://curia.europa.eu), mn. 16 et seq.; s. also OHIM Dec. of 13.12.2006 – R 1004/2006-2 – PURPLE WHITE (COLOUR MARK), mn. 11 et seq.

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Community Trade Mark Regulation

VIII. Sound marks In our modern world, sound marks have their fixed place as a communicator between businesses and the courted clientele. As of today, some 230 sound marks have been applied for as CTMs.663 As the filing of sound marks does not (any longer) present significant challenges, it can be assumed that registration of acoustic signs will pick up further momentum over the next years.664 Examples of sound marks are the well-known chord progressions of Intel Inside®, MGM’s Roar of a Lion®665 or the famous Tarzan’s yell sound®.666 The Tarzan yell, for example, has been licensed by the trade mark owner to enterprises to be used as ring-tones on mobile phones and to a motion picture company,667 which illustrates the recognition of this type of mark as a commercially viable intellectual property right. 295 Under Art. 7 (1)(a) in conjunction with Art. 4, a sound mark claiming protection must be, first of all, capable of being represented graphically. It should be noted in this context that the requirement of graphic representation has created a great deal of legal uncertainty in relation to certain non-traditional marks and is thus under scrutiny; under the Commission Proposal of 27 March 2013 to amend the CTMR, this requirement will be replaced by the prerequisite that signs must be capable of ‘being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor’.668 296 But also under the current legal framework provided for by Art. 4, the required graphic representability does not cause major problems. As the CJ held with regard to a sound mark in its often-quoted Shield Mark judgment, trade marks 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 its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.669 The subject matter of a sound sign must be specific; the representation of the mark contained in the application must precisely determine the subject and scope of the acoustic sign seeking protection. A description of the sound in words is not sufficient;670 nor does it suffice to submit a simple onomatopoeia or to merely indicate that the sign consists of the cry of an animal.671 Furthermore, the mere reproduction of musical notes 294

663 Statistical data available on OHIM’s website http://oami.europa.eu Õ about OHIM Õ Statistics of Community Trade Marks Õ Breakdown by type of mark (last visited on 6.5.2014). 664 In the past few years, sound marks made up a total of only 0.03 % of all filings; s. OHIM’s website http://oami.europa.eu Õ about OHIM Õ Statistics of Community Trade Marks Õ Breakdown by type of mark (last visited on 6.5.2014). 665 S. OHIM Decision of 25.8.2003 – R 781/1999-4 – Roar of a lion. 666 Registered as a trade mark in the US under No 2 210 506, and as CTM 003673308 (musical notation) and CTM 005090055 (sonograph + MP3 sound file); s. in this regard also OHIM’s Press Release CP 07/01 of 5.11.2007. 667 OHIM Decision 27.9.2007 – R 708/2007-4 – Tarzan Yell (Sound mark), mn. 10. 668 Commission Proposal for an amended CTMR, 27.3.2013 COM (2013) 161 final, proposal for revised language of Art. 4 (b), p. 9; s. above mn. 5, 6. 669 CJ Case C-283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 60–64; as to the requirement of graphic representability s. above mn. 54, 55. 670 CJ Case C-283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 64; OHIM Examination Guidelines, part B, section 2 Formalities, p. 21, mn. 9.4. 671 In the SHIELD MARK case, two of the signs consisted of the denomination Kukelekuuuuu (an ononomatopoeia suggesting, in Dutch, a cockcrow; one mark was described as a ‘cockcrow’, accompanied by the words ‘sound mark, the trade mark consists of a cockcrow as described’; s. CJ Case C-283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 18, 19, mn. 64.

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without further explanation is not enough because such indication is neither clear and unambiguous nor self-contained and, in particular, does not determine the pitch and length of the notes; essential parameters for the recognition of the melody and therefore for the precise identification of the mark itself are thus absent.672 The requirement of graphic representability is satisfied, on the other hand, 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.673 Therefore, sound marks that consist of a melody – sometimes referred to as ‘music 297 signs’ or ‘jingles’ – can be represented graphically by filing musical notations alone. An electronic sound file may be attached, but is not mandatory. Any sound file must be in MP3 format; it must be observed that the optional submission of a sound file is possible only in e-filings. The size of the MP3 file must not exceed two megabytes.674 OHIM does not accept the filing of an electronic sound file by itself, since the graphical representation in form of music notation or a sonograph is required. Sounds that are not music in the traditional sense, such as the Roar of a lion, can also be registered as CTMs.675 Over the past ten years, OHIM has registered over 40 such sound marks.676 Where such signs cannot be filed as applications for a musical notation,677 the applicant has to submit a sonograph accompanied by a sound file.678 In these cases, submission of an electronic sound file is mandatory, since OHIM cannot deduce the sound from the sonograph alone. Colours used in a sonograph do not form part of the mark applied for as a sound mark. Thus, any colour indications contained in the application would be deleted by the Office.679 Unlike sonographs accompanied by a sound file, so-called spectrograms do not allow a 298 sufficiently clear and intelligible representation of the sign and are thus inadmissible. The reason for this is that on the basis of the spectrogram alone, without any technical means, it is impossible to reproduce the sound; in other words, it is not enough that spectrogram images can unambiguously and individually represent a given sound, as long as it is not possible to retransform the image into the specific sound seeking protection.680 Nor does it suffice that a graphic representation of the sign by way of the coloured image (the spectrogram) is accompanied by a circumscription that refers to the sign in question, such as a description ‘this corresponds to the sound of a motorbike’.681 Furthermore, oscillograms and spectrums are unsuitable for representing sound marks graphically.682 Therefore, the ideal means to represent a sound mark which does not consist of classic music notations is by submission of a sonogram, whereby it has to be warranted that the sonogram includes a horizontal time indication and a vertical frequency indication.683 672

CJ Case C-283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 61, 64. CJ Case C-283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 62. 674 OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 11, mn. 2.1.2.3. 675 E. g. OHIM Dec. of 25.8.2003 – R 781/1989-4 – Roar of a lion; Eisenfu ¨ hr in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung Art. 7, mn. 135, 136. 676 OHIM Press Release CP 07/01 of 5.11.2007 ‘Tarzan’s Trade Mark Yell’. 677 S. e. g. the Tarzan Yell® as applied for, a musical notation was accepted by the Office and registered as CTM 003673308. 678 S. e. g. CTM 8116337 or CTM 9199134 (sonographs accompanied by sound files). 679 OHIM Guidelines for Examination, part B, sect. 4, absolute grounds for refusal, p. 20, mn. 9.4.3. 680 OHIM Dec. of 27.9.2007 – R 708/2006-4 – Tarzan Yell (sound mark), mn. 20–28. 681 OHIM Dec. of 27.9.2007 – R 708/2006-4 – Tarzan Yell (sound mark), mn. 24. 682 OHIM Dec. of 25.8.2003 (corrected on 29.9.2003) – R 781/1999-4 – Roar of a lion (sound mark), mn. 23–25. 683 OHIM Dec. of 25.8.2003 (corrected on 29.9.2003) – R 781/1999-4 – Roar of a lion (sound mark), mn. 26, second subparagraph, emphasizing that the use of sonograms is actually superior to that of musical notations, since more nuances and sound characteristics are depicted. 673

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Community Trade Mark Regulation

Thus, sounds such as the ‘role of thunder’, the sound of a ‘heart beat’ in a car manufacturer’s commercial or the unmistakeable sound of starting the engine of a Harley Davidson® can be represented graphically by means of sonograms. 299 Furthermore, the sound mark applied for must possess distinctive character and must not be descriptive within the meaning of the obstacles under Art. 7 (1)(b) and (c). Whereas it seems to be unanimous opinion that chord progressions or background noises can of course take over the function of identifying goods and services as to their origin,684 the distinctiveness of the sound sign in question must be assessed in relation to the goods/services embraced by the application. The same holds true as to a potential descriptiveness in the sense of lit. (c). For instance, the sound of the engine of a motorbike may be seen as an indication of characteristic properties of motor vehicles and other goods contained in class 12. Consequently, in order to assess a sound mark’s distinctive character and its potential descriptiveness, all relevant elements and specific circumstances of the individual CTM seeking protection must be taken into account.

IX. Olfactory marks 300

On various occasions, the attempt has already been made to register olfactory marks as CTMs. All of these attempts have hitherto been unsuccessful.685 At the same time, there can be no question about the abstract capability of a scent to serve as an indication of origin for products and services. For a start, there can be no doubt that the broad definition of trade marks under Art. 4 encompasses olfactory marks if, in fact, they have the effect of identifying origin. From an abstract point of view, olfactory marks are generally suitable for trade mark protection.686 The concrete distinctiveness of the odour in question must be examined in relation to the specific goods/services claiming protection. Although the criteria for the examination of distinctive character are the same for the various categories of marks, including non-traditional signs such as acoustic marks, tactile signs and smell marks,687 the relevant public’s perception may, however, not necessarily be in the same relation to those marks as it is in relation to a word or figurative mark, as average consumers might not be in the habit of making assumptions about the origin of products on the basis of their olfactory features. In light of this, the (concrete) distinctive character of the smell of raspberries was denied in respect of inter alia ‘fuels, including motor spirit’ (class 4), as the consumer would 684 CJ Case C- 283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 41; OHIM Dec. of 25.8.2003 (corrected on 29.9.2003) – R 781/1999-4 – Roar of a lion (sound mark), mn. 26 et seq.; OHIM Dec. of 8.9.2005 – R 295/2005-4 – Hexal, mn. 11 et seq.; Eisenfu¨hr in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 135, 136. 685 Strictly speaking, there has been one successful attempt with regard to the olfactory mark ‘The smell of fresh cut grass’, where the graphic representation consisted of the aforementioned description of the sign for which protection was sought by the words ‘the smell of fresh cut grass’, s. OHIM Dec. of 11.2.1999 R 176/1998-2, mn. 13 et seq.: following the finding of the BoA that said description would ‘give clear enough information’ to those reading ‘the description to walk away with an immediate and unambiguous idea of what the mark is when used in connection with tennis balls’, which does not really sound persuasive; subsequent to this decision the mark was registered as CTM 000428870, but expired without renewal in 2006. 686 OHIM Dec. of 5.12.2001 – R 711/1999-3 – The smell of raspberries, mn. 26. 687 OHIM Dec. of 5.12.2001 – R 711/1999-3 – The smell of raspberries, mn. 40; s. in general as to the same requirements for the various categories of marks: CJ Joint Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-1725, mn. 38; CJ Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, mn. 36; CJ Case C-398/08 Audi v OHIM [2010] ECR I-00535, mn. 37; s. in detail the analysis above mn. 59 et seq.

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perceive the smell of raspberries as an attempt to improve the bad odour of those goods rather than a sign identifying the origin of the supplier.688 As a rule, registration is refused because of the lack of graphic representability that 301 can only be assumed in the interest of legal certainty, if the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.689 A reproduction of a chemical formula, its description in words, the registration of a sample of the odour or a combination of these elements does not meet the requirements for graphic representation.690 The registration of a chemical formula is not sufficiently intelligible; moreover, the chemical formula does not represent the odour of a substance, but the substance itself; it also lacks the necessary clarity and preciseness. Nor is a description of the odour in written words sufficiently clear, precise and objective. For example, the description ‘smell of ripe strawberries’ could refer to several varieties and consequently to several distinct smells; such a description is thus neither unequivocal nor accurate and does not eliminate all elements of subjectivity in the process of identifying and perceiving the sign claiming protection.691 Furthermore, the submission of an image of e. g. a ripe strawberry does not suffice as the graphic representation of an olfactory mark must represent the odour whose registration is sought, and not the product emitting that odour; therefore, the photo of a strawberry – accompanied by the words ‘smell of a ripe strawberry – was rightly rejected as a sufficiently precise graphical representation of the olfactory sign.692 Finally, the deposit of an olfactory sample does not constitute a valid graphic representation of the smell for which protection is sought due to the lack of required stability and durability.693 The OHIM’s current practice – fearing the anathema of the CJ – hardly permits the 302 successful registration of an olfactory mark. Criticism of the strict criteria developed by the CJ for graphic representability of olfactory marks, which are practically impossible to satisfy, has become loud.694 As the CJ is pursuing a modern, comprehensive trade mark concept, according to this opinion, no insurmountable obstacles should be set up as to the requirement of graphic representability, which fails to pay tribute to the fact that marks that cannot be perceived visually permit only an indirect graphic – thus visually perceptible – representation.695

688 OHIM Dec. of 5.12.2001 – R 711/1999-3 – The smell of raspberries, mn. 43; s. on the other hand OHIM Dec. of 11.2.1999 – R 156/1998-2 – The smell of fresh cut grass, mn. 14, confirming the sourceidentifying function of such an olfactory sign in relation to ‘tennis balls’. 689 CJ Case C-273/00 Sieckmann [2002] ECR I-11737, mn. 42–55; as to the strict requirements for colour marks s. CJ Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-03793, mn. 29 et seq.; as to sound marks CJ Case C- 283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 42, especially mn. 64. 690 OHIM Examination Guidelines, part B, section IV, absolute grounds for refusal, p. 9, mn. 2.1.2.1; s. also GC Case T-305/04 Eden v OHIM [2005] ECR II-04705, mn. 35 et seq. 691 GC Case T-305/04 Eden v OHIM [2005] ECR II-04705, mn. 30–33; likewise, OHIM Examination Guidelines, part B, section IV, absolute grounds for refusal, p. 9, mn. 2.1.2.1; as far as can be seen, the only decision that came to a different result (i. e. the BoA accepted a written description of the smell in question has been sufficiently objective, clear and precise) s. OHIM Dec. of 11.2.1999 – R 156/1998-2 – The smell of fresh cut grass, mn. 8, 14; the smell of ripe strawberries may vary depending on the type of strawberry used or the particular taste buds of the consumer, as rightly pointed out by OHIM Dec. of 12.3.2013 – R 479/2012-5 – Procter & Gamble v OHIM (TACTILE MARK), mn. 19. 692 GC Case T-305/04 Eden v OHIM [2005] ECR II-04705, mn. 39–40. 693 CJ Case C-273/00 Sieckmann [2002] ECR I-11737, mn. 56 et seq., especially 69–71; very critical towards this restrictive view of the CJ, Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 4, mn. 57–60. 694 Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 4, mn. 58, 59. 695 Eisenfu ¨ hr, ibid, mn. 58–60.

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CTMR Art. 7 303

Community Trade Mark Regulation

On the other hand, it has to be taken into account that in the interest of legal certainty, but also with a view to subsequent infringement proceedings, a clear and precise assessment of the scope of protection of an olfactory mark must be warranted. Here, the applicant and its advisers are also called on to explore goal-oriented paths, for example, by providing the chemical formula and depositing an olfactory sample and a gas chromatographic analysis, in combination with an exact description of the smell for which protection is sought. However, it is safe to say that the bar is high after the CJ’s Sieckmann decision.696 The practical consequences of this – rightly – strict regime are rather limited. According to the statistical data available at OHIM’s website, to date only seven olfactory marks have been applied for.697

X. Taste marks 304

For the same reasons, taste marks are barred from registration. As far as can be seen, there has only been one single attempt to register such a ‘taste sign’ as a CTM.698 Such signs encounter the major difficulty of varying perceptions of the relevant public, which, in turn, inevitably leads to legal uncertainty. For instance, the smell of ripe strawberries may vary depending on the type of strawberry and/or the particular sense of taste of the respective consumers.699 Moreover, for the time being, the requirement of a sufficiently objective and precise graphic representation seems to constitute an insurmountable obstacle for such signs.700 As in the case of olfactory signs, also in respect of gustatory marks the requirement of graphic representability is not satisfied by a mere description in written words.701

XI. Tactile marks 305

Given the broad definition of signs that may constitute a trade mark under Art. 4, there can be no denial that a haptically perceivable form, particularly the surface of objects, is generally capable of being registered as a trade mark.702 As far as can be seen, only very few attempts have been made to register tactile marks.703 Such signs present significant challenges with regard to their graphic representability and the necessary distinctiveness in order to function as a source identifier. 696 CJ Case C-273/00 Sieckmann [2002] ECR I-11737, mn. 30 et seq.; s. OHIM Examination Guidelines, part B, section 2, Examination, p. 23, mn. 9.7: smell or olfactory marks are not currently acceptable as they cannot be graphically represented; such applications will not be rejected but rather deemed not filed. 697 S. https://oami.europa.eu Õ Statistics of Community trade Marks Õ breakdown by type of mark (last visited on 6.5.2014). 698 OHIM Dec. of 4.8.2003 – R 120/2001-2 – The taste of artificial strawberry flavour. 699 OHIM Dec. of 12.3.2013 – R 479/2012-5 – Procter & Gamble v OHIM (tactile mark), mn. 19. 700 Likewise OHIM Examination Guidelines, part B, section IV, absolute grounds for refusal, p. 10, mn. 2.1.2.1 701 OHIM Dec. of 4.8.2003 – R 120/2001-2 – The taste of artificial strawberry flavor, mn. 12; the mark was, however, barred from registration under Art. 7 (1)(b), confirming a public interest in not unduly restricting the availability of flavours for other traders who offer for sale goods or services of the same type as those in respect of which registration is sought. 702 Likewise Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 4, mn. 61. 703 OHIM Dec. of 30.10.2007 – R 1174/2006-1 – DaimlerChrysler v OHIM (decision available only in the German language); OHIM Dec. of 12.3.2013 – R 479/2012-5 – Procter & Gamble v OHIM (tactile mark).

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First of all, the sign requesting protection as a tactile mark must be capable of being 306 represented graphically, particularly by means of images, lines or characters, and its representation must be sufficiently clear and precise to allow an exact identification of the sign in question. Such a valid graphic representation has been denied by OHIM in respect of the tactile impression of the handle of a button for the adjustment of a car seat, although the applicant had submitted two-dimensional images of said handle, a sample and a precise description. The Office rightly held that the application did not contain all elements that were relevant for the tactile feel, such as the dimension of the mark and the characteristics of the materials used.704 Accordingly, it is necessary to submit sufficient information especially with regard to the size of the tactile subject matter, including the dimensions of the elements of the sign relative to each other, and in respect of the materials used, which typically influence the haptic sensation.705 Apart from the significant challenges that tactile marks present in terms of their 307 graphic representability, the other major difficulty encountered is the required degree of distinctiveness under Art. 7 (1)(b). In order to assess a trade mark’s distinctive character, all relevant elements linked to the specific circumstances of the case must be taken into consideration. As mentioned before,706 the scrutiny under lit. (b) makes no distinction between different categories of marks. It is thus inappropriate to apply to any category of signs criteria which are stricter than those applicable to other types of signs.707 What counts is the sign’s capacity to identify the products or services covered by the application as coming from a particular source and thereby to distinguish them from those from other sources. The relevant public may not, however, be in the habit of making assumptions as to the origin of products on the basis of the touch or feel in the absence of any graphic or word element fixed to those goods, and it may consequently prove more difficult to establish distinctiveness in relation to tactile marks than in relation to word or figurative marks.708 In light of this, OHIM rightly found that the feel of a manual toothbrush handle grip would not be perceived by the relevant consumers as an indication of its commercial origin.709 The mark in question, constituted by the touch or feel of (part of) a product, must permit the average consumer of this product (and constituent part) to distinguish the product part concerned from those of other undertakings without conducting an analytical examination and without paying particular attention.710 If the aforementioned hurdles can be overcome by the applicant, the subject matter 308 of the tactile mark must be determined. The protection relates to the haptic sensation created by mechanical stimuli produced by the sign in question. Such a sensation can be achieved by means such as different surface textures, contours, size and/or the physical state of (part of) a product. Occasionally, words written in braille are mentioned as examples of tactile marks.711 This seems to be arguable, as embossed printing is nothing 704 OHIM Dec. of 30.10.2007 – R 1174/2006-1 – DaimlerChrysler v OHIM (decision available only in the German language), mn. 16 et seq. 705 In the same direction, Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 4, mn. 61. 706 S. above mn. 61, 62. 707 GC Case T-138/00 Erpo Mo ¨ belwerk v OHIM [2001] ECR II-03739, mn. 32, and CJ Case C-398/ 08 Audi v OHIM [2010] ECR I-00535, mn. 37, both in relation to advertising slogans; with regard to tactile marks OHIM Dec. of 12.3.2013 – R 479/2012-5 – Procter & Gamble v OHIM (tactile mark), mn. 17. 708 OHIM Dec. of 12.3.2013 – R 479/2012-5 – Procter & Gamble v OHIM (tactile mark), mn. 24 and the cases cited. 709 OHIM Dec. of 12.3.2013 – R 479/2012-5 – Procter & Gamble v OHIM (tactile mark), mn. 29 et seq. 710 OHIM Dec. of 12.3.2013 – R 479/2012-5 – Procter & Gamble v OHIM (tactile mark), mn. 28. 711 Ho ¨ lk, in Festschrift fu¨r Eike Ullmann (2006), 239, 249; Fabry, Mitt. 2008, 160, 168.

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else but a script for the visually impaired. Therefore, the trade mark UNDERBERG®, written in braille, was rightly accepted as a German trade mark.712 It goes without saying that distinctive trade marks, represented in braille such as UNDERBERG® in the aforementioned example do not present any difficulties in terms of their graphic representability and/or distinctiveness. 309 At times, tactile marks are referred to as signs ‘which are as such not visually perceptible’.713 Strictly speaking, this is incorrect. In cases where the haptic effect is produced by the form, contours and/or three-dimensional elements such elevations and depressions are visually discernible. This visual perceptibility, however, does not form part of a subject matter of the tactile mark in question.

XII. Other types of signs There are other special trade mark forms that have hitherto played a comparatively subordinate role. For example, as mentioned above, gustatory marks are just as likely to fail to overcome the obstacles of graphic representability as (currently) olfactory marks.714 311 A relatively recent phenomenon is the registration of so-called animated signs, also referred to as movement marks, whereby protection for a motion sequence – of two- or three-dimensional images – is claimed. There is only limited experience with such marks on the basis of OHIM decisions. The graphic representability of such signs does not present insurmountable hurdles. The mark representation must be accompanied by a description explaining the animation; the representations – the number of which is practically unlimited as long as they are all on one single A4 sheet in the case of paper filings or in one single JPEG document in the case of e-filing – together with the mark description must clearly explain the movement that is to be protected.715 Where the movement cannot be perceived and/or it is impossible to understand what the movement would look like, a deficiency notice will be issued and the mark ultimately rejected unless the representations and/or description of the movement are clarified by the applicant within two months.716 The test is whether a reasonably observant person with normal levels of perception and intelligence would, upon consulting the CTM register, be able to understand precisely what the mark consists of, without investing a huge amount of intellectual energy and imagination.717 Quite a few of such movement marks have meanwhile been registered.718 In comparison to what can be achieved by registra310

712 German trade mark No 30259811, applied for on 5.12.2002 for goods of classes 32 and 33; interestingly enough, this mark was originally classified as a 3D mark by the German PTO. 713 OHIM Dec. of 30.10.2007 – R 1174/2006-1 – DaimlerChrysler v OHIM (decision available only in the German language), mn. 16 et seq. 714 OHIM Dec. of 4.8.2003 – R 120/2001-2 – The taste of artificial strawberry flavor, mn. 12; the mark was, however, barred from registration under Art. 7 (1)(b), confirming a public interest in not unduly restricting the availability of flavours for other traders who offer for sale goods or services of the same type as those in respect of which registration is sought. 715 OHIM Examination Guidelines, part B, section 2 Formalities, p. 24, mn. 9.8.1. 716 OHIM, Cancellation Dec. of 24.5.2011 regarding CTM application No 009382946 – pwc, where even upon very close scrutinisation it was almost inconceivable for the viewer that the the depicted frames differ from one each other; s. also OHIM Examination Guidelines, part B, section 2 Formalities, p. 24, mn. 9.8.1. 717 OHIM Dec. of 23.9.2010 – R 443/2010-2 – Red Liquid Flowing in Sequence of Stills (movement mark), mn. 18–20. 718 E. g. CTM No 8 553 133, CTM 5 338 629; s. also the successful appeal relating to CTM application No 8 581 977, OHIM Dec. of 23.9.2010 – R 443/2010-2 – Red Liquid Flowing in Sequence of Stills

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tion of a mere figurative mark, the scope of protection of such signs is not too significant and in any event limited to the particular movement in question. Furthermore, of the infinite number of conceivable forms of trade marks, holograms 312 merit particular mention. In principle, the distinctive character of such marks is not likely to be much of a problem; their graphic representability, however, may present significant challenges.719 Holograms are particularly difficult to be submitted in a sufficiently clear and precise form, as a paper representation does not allow the image in question to ‘change’ as it would naturally on holographic paper. With a clear description of a mark and enough views of a sign, a hologram can be registered. As regards the application for a hologram seeking protection as a CTM, more than one representation of the sign can be filed provided all different views are on one single A4 sheet in the case of paper filings, or in one single JPEG file in the case of e-filing.720

D. Acquired distinctiveness, Art. 7 (3) CTMR I. Role and importance of the provision Signs that lack distinctive character cannot fulfil the essential function of a trade 313 mark as they are not capable of distinguishing goods and services of one proprietor from those of other commercial origin. As a result of intensive and long-standing use, however, signs that are inherently non-distinctive can eventually be perceived by the relevant public as indicia of origin. Art. 7 (3) takes this phenomenon of so-called acquired distinctiveness into account. Under Art. 7 (3), the absolute bars contained in Art. 7 (1)(b) to (d) do not preclude registration ‘if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it’. Art. 7 (3) thus constitutes a major exception to the rule that protection is to be refused in relation to trade marks which are devoid of any distinctive character, descriptive marks, and marks which consist exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade.721 Art. 7 (3) requires intensive use of the sign in question, but actually goes beyond a 314 mere use of a mark. The use of the sign in question must have led to the result that a sign that was devoid of distinctive character acquired distinctiveness in consequence of such use.722 In other words, the mark in question is actually perceived by the relevant public as an indication of the commercial origin of a product or service as the result of the economic effort made by the applicant. That justifies putting aside the publicinterest considerations underlying the obstacles in (b) to (d), which have the objective that the signs referred to in those provisions may be freely used by all in order to avoid (movement mark), mn. 22, also in attempts of consistent decision-making in light of earlier, similar marks that were accepted by the Office, although the BoA rightfully stressed that it could not give decisive weight to earlier registrations. 719 S. in this respect from a German perspective Stro ¨ bele/Hacker/Kirschneck, Markengesetz, § 3 MarkenG mn. 73, who considers the deposit by means of a limited number of pictures from various perspectives sufficient, e. g. holograms on checque. 720 OHIM, Examination Guidelines, part B, section 2 Formalities, p. 23, mn. 9.6. 721 CJ Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-03297, mn. 45; CJ Case C-108/05 Bovemij Verzekeringen v Benelux Merkenbureau (EUROPOLIS) [2006] ECR I-07605, mn. 21. 722 OHIM Dec. of 21.4.2009 – R 595/2008-4 – Longevity Health Products v Performing Science, mn. 38.

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granting an unjustified competitive advantage to a single trader.723 As Art. 7 (3) is an exception to the general rules laid down in Art. 7 (1)(b) to (d), the provision is not to be construed broadly.724 315 Signs that have been registered on the basis of acquired distinctiveness because of their intense use do not endow the trade mark with a particular strength or reputation in inter partes proceedings, as the mark may only barely have passed the threshold of registrability.725 316 Only the obstacles contained in (b) to (d) can be overcome by acquired distinctiveness. It is thus well conceivable, and actually happens in practice, that signs that have acquired distinctiveness are still barred from registration because of other grounds for refusal, for example under lit. (e).726

II. Goods and services 317

Acquired distinctiveness must be established for each of the goods and services in relation to which the sign would otherwise be barred under Art. 7 (1)(b) to (d).727 Where the CTM application denotes class headings or entire classes, and acquired distinctiveness can be shown only with regard to particular goods or services, the bars laid down in Art. (b) to (d) will be overcome only in respect of those very goods and/or services.728

III. Relevant point in time 318

The absolute grounds for refusal are listed in Art. 7 (1) without stating the decisive date for the assessment, which could give rise to the question whether the date of the application or that of the registration of the mark is the relevant point in time for the analysis of the absolute bars. As pointed out above, this is particularly relevant to the bars laid down in Art. 7 (1)(b) to (d) as those can be overcome through use under Art. 7 (3).729 The very wording of Art. 7 (3) and especially the use of the verbs in the past tense leave no doubt that the mark must, at the time of filing of the CTM application, already have acquired distinctive character through prior use.730

723 GC Case T-323/00 SAT.1 v OHIM [2002] ECR II-2839, mn. 36; GC Case T-399/02 Eurocermex v OHIM (Shape of a bottle of beer) [2004] ECR II-01391, mn. 41. 724 CJ Case C-108/05 Bovemij Verzekeringen v Benelux Merkenbureau (EUROPOLIS) [2006] ECR I07605, mn. 21, 22: the scope of the provision must be interpreted in light of a ground for refusal contained in Art. 7 (1)(b)-(d). 725 Rightly pointed out by v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 16 (a). 726 For example, the famous Lego® brick was found to be distinctive, but refused registration under Art. 7 (1)(e)(ii), CJ Case C-48/09 P Lego juris v OHIM [2010] ECR I-08403, mn. 40 et seq. 727 Likewise v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 16 (g). 728 OHIM Dec. of 26.4.2006 – R 148/2004-2 – Veuve Clicquot Ponsardin (Couleur/Orange), mn. 1, 37: the CTM application covered all goods of classes 32 and 33; distinctiveness was proven in relation to ‘champagne’, so the mark was registered just for ‘champagne’. 729 S. above mn. 27–31. 730 CJ Case C-542/07 Imagination Technologies Ltd v OHIM [2009] ECR I-04937, mn. 42; GC Case T399/02 Eurocermex v OHIM (Shape of a bottle of beer) [2004] ECR II-01391, mn. 45; GC Case T-247/01 eCopy Inc v OHIM [2002] ECR II-05301, mn. 38.

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IV. Claiming acquired distinctiveness The fact that the time of filing is the decisive date for the assessment of the acquired 319 distinctiveness does not mean that the intention to rely on Art. 7 (3) must be indicated in the application itself. Instead, acquired distinctiveness may be claimed at a later point in time during the administrative procedure before OHIM. In principle, acquired distinctiveness may be claimed for the first time in the appellate proceedings before the BoA.731 For procedural reasons, Art. 7 (3) cannot be invoked for the first time before the GC.732 The BoA is required to take account of evidence which may be relevant for the scrutiny of whether distinctiveness has been obtained through use only if the applicant produced that evidence during the procedure before OHIM.733 As the Office may disregard facts or evidence not submitted in due time under 320 Art. 76 (2) as belated, it is highly advisable to claim acquired distinctiveness during the initial examination procedure.

V. Relevant territory For the assessment of the acquisition of distinctiveness of a sign, tribute must be paid 321 to the unitary character of the CTM. CTMs have equal effect throughout the Community (Art. 1 (2)). Accordingly, the rights conferred by the CTM under Art. 9 exist EUwide. This fundamental principle is reflected by the taxonomy of the CTM regime, also with regard to the absolute grounds for refusal, as is made crystal clear by Art. 7 (2). According to that provision, a CTM must be refused if the grounds of non-registrability obtain in only part of the Community. As a consequence, acquired distinctiveness must be established in those parts of the 322 Community where the mark did not, ab initio, have such character.734 As regards word marks, due to the different linguistic, cultural and social backgrounds of the more than 500 million consumers735 residing in the Community, a sign may be perceived as devoid of distinctive character or descriptive in one part of the EU, but not understood in its true sense and hence considered to be a distinctive imaginary term.736 Consequently, where the ground for refusal – particularly in respect of marks consisting of one or more words of an official language of a Member State – exists only in one of the linguistic areas of the Community, acquisition of distinctive character through use must be established throughout that linguistic area.737 731 GC Case T-163/98 The Procter & Gamble Company v OHIM (Baby Dry) [1999] ECR II-02383, mn. 44. 732 GC Case T-269/06 Rautaruukki v OHIM [2008] ECR II-00273, mn. 21; v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 16 (c). 733 GC Case T-399/02 Eurocermex v OHIM (Shape of a bottle of beer) [2004] ECR II-01391, mn. 52, upheld on appeal by CJ Case C 286/04 P Eurocermex v OHIM [2005] ECR I-5797; GC Case T-269/06 Rautaruukki v OHIM [2008] ECR II-00273, mn. 21. 734 CJ Case C-98/11 P Chocoladefabriken Lindt & Spru ¨ ngli v OHIM [2012] (not published yet in the ECR, available at http://curia.europa.eu), mn. 62; CJ Case C-108/05 Bovemij Verzekeringen v Benelux Merkenbureau (Europolis) [2006] ECR I-07605, mn. 22, 28. 735 S. OHIM website under https://oami.europa.eu Õ about OHIM Õ who we are Õ the Office. 736 S. to that effect CJ Case C-421/04 Matratzen Concord [2006] ECR I-2303, mn. 25; CJ Case C-238/06 P Develey v OHIM [2007] ECR I-09375, mn. 58. 737 CJ Case C-108/05 Bovemij Verzekeringen v Benelux Merkenbureau (Europolis) [2006] ECR I-07605, mn. 28.

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In the case of non-word marks – such as shape marks or signs consisting of generally intelligible abbreviations –738 unless there is concrete evidence to the contrary, it can be assumed that the perception of distinctiveness and non-descriptiveness of their character will be the same throughout the Community. It follows that such marks must have become distinctive through use in the entire Community to be registrable under Art. 7 (3).739 As long as the evidence produced by the applicant is persuasive and thus demonstrates acquisition of distinctive character throughout the EU, it is not necessary to establish proof of such acquisition for each individual Member State.740

VI. Sign must be perceived as a trade mark Signs that inherently fall foul of Art. 7 (1)(b) to (d) lack the capability of serving as a trade mark. They are perceived as non-distinctive, descriptive or generic designations, and therefore not understood as an indication of commercial origin. Although it sounds almost trivial, distinctive character acquired through use means that the mark in question, as a consequence of the use made of it, is capable of distinguishing goods and services of one undertaking from those of another. Thus, the applicant invoking Art. 7 (3) has to establish that the sign in question is perceived, by the relevant public, as a trade mark as a result of the use of the sign, which makes it capable of distinguishing the goods/services concerned from those of other undertakings.741 These signs have gained a new significance and are no longer perceived as purely descriptive or non-distinctive, and this justifies their registration as a trade mark.742 325 It is not necessary that the relevant public is aware of the actual commercial origin; it suffices that the specific goods or services bearing the sign in question are perceived to stem from the same or related trade origins.743 324

VII. Relevant factors; evidence 326

In assessing whether a sign has become distinctive through use, various factors must be taken into account. These include the market share held by the mark, how intensive, geographically wide-spread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark; the proportion of the relevant public who, because of the mark, identify goods/services as originating from a particular undertaking. Appropriate evidence in this respect includes statements from Chambers of Commerce and Industry or other trade and professional associations and opinion polls.744 738 An example of such a shape mark can be found in GC Case T-399/02 Eurocermex v OHIM (Shape of a bottle of beer) [2004] ECR II-01391, mn. 47; regarding abbreviation found to be descriptive in the entire Community, s. GC Case T-16/02 Audi v OHIM (TDI I) [2003] ECR II-05167, mn. 38 et seq. 739 GC Case T-399/02 Eurocermex v OHIM (Shape of a bottle of beer) [2004] ECR II-01391, mn. 47. 740 CJ Case C-98/11 P Chocoladefabriken Lindt & Spru ¨ ngli v OHIM [2012] (not published yet in the ECR, available at http://curia.europa.eu), mn. 62; s. in more detail below mn. 326, 332. 741 CJ Case C-299/99 – Philips v Remington [2002] ECR I-05475, mn. 64; CJ Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-03297, mn. 46, 47. 742 CJ Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-03297, mn. 47. 743 V. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 16 (h). 744 CJ Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-03297, mn. 51; CJ Case C-299/99 – Philips v Remington [2002] ECR I-05475, mn. 60; CJ Case C-25/05 P August Storck v

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As a preliminary remark, establishing distinctive character acquired through use is a difficult endeavour that has to be meticulously prepared. The applicant is well advised to allow ample time to plan ahead. Obviously, where the obstacle applies in only a smaller part of the EU or even just in one Member State, the task is less burdensome. Especially where acquisition of distinctiveness has to be established for the entire Community, comprehensive and diligent preparation is key to success. This includes careful selection of trade associations and Chambers of Commerce to be contacted for the submission of statements, the selection of a highly regarded and accredited research institute and the like. It should be borne in mind that the Office rightly imposes high standards on an applicant who wants to rely on Art. 7 (3). Of the several hundred cases in which acquired distinctiveness was claimed, only a small number was successful.745 The requirement for registration of a CTM under Art. 7 (3) is satisfied if a significant proportion of the relevant public identifies the goods/services bearing the mark as originating from a particular undertaking. There is, however, no fixed percentage to measure the significance of the market recognition.746 As a rule, it can be said that this threshold is met if the recognition rate exceeds 50 per cent.747 In this connection, a certain interdependence might have to be observed in such a way that the requirements will be higher where a strictly descriptive sign or a sign lacking any distinctiveness is involved, whereas in cases that are less blatant a lower recognition rate may suffice. In the former case, the applicant must show that the use of the mark – both long-standing and intensive – is particularly well established.748 The market share held by the mark is a relevant factor for the purposes of assessing whether the mark has acquired distinctive character through use.749 In the rare scenarios where a trader has been the only supplier of particular goods to the market, this does not by itself prevent the application of Art. 7 (3) if it can be shown that the sign in question is perceived as an indication of the commercial source as a result of extensive use.750 If registration is sought for a product shape which does not depart significantly from the norm or customs of the respective sector, acquisition of distinctive character can only be found if, following the use which is made of it, the products which bear it have more than a negligible share of the market in the products at issue.751 It is in the obligation of the applicant to provide precise information as to the market share and as to amounts invested in advertising campaigns and other promotional activities.752 The information must relate exclusively to the goods bearing the mark in question. Data concerning the amounts invested in advertising and promotions that include other products and/or inadequate documentation will be disregarded by the examiner.753 The same holds true with regard to turnover and sales figures, which are OHIM [2006] ECR I-05719, mn. 75; GC Case T-399/02 Eurocermex v OHIM (Shape of a bottle of beer) [2004] ECR II-01391, mn. 44. 745 S. the overview by Eisenfu ¨ hr/Fo¨rster, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 7, mn. 277, 278. 746 CJ Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-03297, mn. 52. 747 S. e. g. OHIM Dec. of 11.1.2006 – R 1/2005-4 – HILTI-KOFFER, mn. 37; v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 16 (f). 748 In relation to a name already familiar as an indication of geographical origin for a certain category of goods, CJ Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-03297, mn. 50. 749 CJ Case C-25/05 P August Storck v OHIM [2006] ECR I-05719, mn. 76. 750 CJ Case C-299/99 Philips v Remington [2002] ECR I-05475, mn. 65. 751 CJ Case C-25/05 P August Storck v OHIM [2006] ECR I-05719, mn. 76. 752 GC Case T-399/02 Eurocermex v OHIM (Shape of a bottle of beer) [2004] ECR II-01391, mn. 50; CJ Case C-25/05 P August Storck v OHIM [2006] ECR I-05719, mn. 79. 753 GC Case T-262/04 BIC v OHIM (Shape of a lighter) [2005] ECR II-05959, mn. 71; likewise GC Case T-399/02 Eurocermex v OHIM (Shape of a bottle of beer) [2004] ECR II-01391, mn. 50.

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327

328

329

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of probative value only if they specifically relate to the mark in question. Likewise, publicity material is helpful only if it forms a sufficiently reliable basis to draw any firm conclusions as to their dissemination in terms of their geographical spread and/or longstanding use of the particular mark. Where registration of a shape mark is requested, images that are accompanied by verbal and/or figurative elements are to no avail.754 To be of any value, the promotional material must relate to products bearing the mark and contain information as to the dates and places where those goods were marketed and where such material was used. Moreover, they must illustrate that the target public perceives the mark seeking protection to be an indication of the commercial origin of those goods/services.755 331 Another means of establishing acquired distinctiveness are third-party statements. In order to assess the probative value of such declarations, it is vital to check the plausibility and truthfulness of the information they contain. Regard must be had inter alia to the origin of the statement, the circumstances of its preparation and to whom it is addressed, and whether it seems from the content to be sensible and reliable.756 Statements coming from distributors, customers or even subsidiaries are of limited value, given the significance of the commercial links between the applicant and the declarant. Such declarations are at best indicative and must be corroborated by other proof. Furthermore, the sheer number of statements is in itself irrelevant, especially where the statements comprise a pre-set text which has been translated verbatim into several languages or even simply photocopied with blank spaces to be filled in by the declarant.757 Thus, it is preferable to limit the number of statements to documents that are meaningful and stem from reliable sources such as trade organisations, Chambers of Commerce and so forth. 332 Surveys and public polls are very helpful tools to establish acquisition of distinctiveness and are thus regarded as the most reliable direct evidence of consumer perception.758 Independent market surveys constitute particularly valuable means of evidence concerning the examination of acquired distinctiveness, because opinion polls are not a matter of arbitrary empirical analyses, but of the application of scientific findings; public polls carried out by independent institutes generally offer a guarantee that the individuals taking part in the poll were representatively selected and that the surveys were conducted in an appropriate manner, so that an indication of the opinion of the relevant public in its totality can be identified from the results obtained in the representative survey.759 Such surveys are, on the other hand, not required in order to establish acquired distinctiveness; nor are there any predetermined percentages to be met.760 It should be kept in mind that conducting public polls is quite cost-intensive. Moreover, a solid preparation – including drafting of the questionnaire and company documents – can be time-consuming. Reputable and experienced research institutes 754 GC Case T-262/04 BIC v OHIM (shape of a lighter) [2005] ECR II-05959, mn. 77; GC Case T-399/ 02 Eurocermex v OHIM (Shape of a bottle of beer) [2004] ECR II-01391, mn. 51. 755 GC Case T-164/06 Col Art/Americas v OHIM (Basics) [2007] ECR II-00116 (summary publication, full text available at http://curia.europa.eu), mn. 50, 51. 756 GC Case T-303/03 Lidl Stiftung v OHIM (Salvita) [2005] ECR II-1917, mn. 42; GC Case T-262/04 BIC v OHIM (shape of a lighter) [2005] ECR II-05959, mn. 78. 757 GC Case T-262/04 BIC v OHIM (Shape of a lighter) [2005] ECR II-05959, mn. 79. 758 V. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 16 (i). 759 OHIM Dec. of 11.1.2006 – R 1/2005-4 – HILTI-KOFFER, mn. 32. 760 CJ Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-03297, mn. 52; s. the detailed and comprehensive analysis of public polls in the legal field by Eichmann, in Hasselblatt (ed.), Mu¨nchener Anwaltshandbuch Gewerblicher Rechtsschutz,§ 9, mn. 1 et seq., especially mn. 68–71 (regarding Art. 7 (3) CTMR).

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Absolute grounds for refusal

Art. 7 CTMR

can be of invaluable assistance in that regard. Especially where acquired distinctiveness has to be established for the entire Community, a public poll covering all 28 Member States can cost – metaphorically speaking – a fortune. In light of this, it is to be welcomed that it seems to be generally accepted that ‘it would be unreasonable to require proof of acquired distinctiveness for each individual Member State’.761 Representative surveys form a solid basis, employing the principles of empirical legal research, for drawing a conclusion as to the market recognition of a sign, provided that the number of people that are interviewed is representative and the consultation is carried out adequately and objectively.762 The question should be presented by an ‘open’ and by no means in a ‘leading’ manner.763 As already mentioned, the survey does not have to be conducted in all Member States. The results of a public poll conducted in only part of the EU can be extrapolated to other parts, provided that the market conditions, etc., are the same in those regions.764 It is advisable to combine various means of evidence to establish acquired 333 distinctiveness. Furthermore, as regards the right timing, the brand awareness can be increased on a short-term basis, if, for example, in the months preceding a public poll a comprehensive marketing campaign is carried out (using multiple communication channels). This will, however, have no immediate effect on other factors such as the market share. The bar to establish acquired distinctiveness is set high. What counts at the end of the day is the preponderance of evidence, to be examined by the Office under Art. 76 (1). Examples of the very few CTMs registered because of acquired distinctiveness are 334 shown in the chart below: Type

Nice Classes

3D

35

Mark

Case Number

Authority

R 361/2013-5

OHIM (BoA)

761 CJ Case C-98/11 P Chocoladefabriken Lindt & Spru ¨ ngli v OHIM [2012] (not published yet in the ECR, available at http://curia.europa.eu), mn. 62; OHIM Dec. of 11.1.2006 – R 1/2005-4 – HILTIKOFFER, mn. 37. 762 OHIM Dec. of 11.1.2006 – R 1/2005-4 – HILTI-KOFFER, mn. 37; v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 16 (i). 763 In that direction also GC Case T-262/04 BIC v OHIM (shape of a lighter) [2005] ECR II-05959, mn. 84. 764 OHIM Dec. of 11.1.2006 – R 1/2005-4 – HILTI-KOFFER, mn. 32–38: the BoA – based on a number of more than 15 Member States – held that a market recognition of 59 % and 66 % for Germany and Austria, respectively, would allow the conclusion that the market acceptance in the entire EU would be at least over the 50 % threshold; likewise v. Kapff, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 7 CTMR, mn. 16 (i).

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335

Type

Nice Classes

3D

6, 21, 32

Word

9, 16, 38, 41, 42, 45

Word

Community Trade Mark Regulation Mark

Case Number

Authority

R 525/2013-2

OHIM (BoA)

EUROPE DIRECT

R 232/2010-2

OHIM (BoA)

18

KEEPALL

R 999/2008-2

OHIM (BoA)

Word

3, 5

NO MORE TEARS

R 858/2005-2

OHIM (BoA)

Colour

33

Orange (Veuve Cliquot)

R 148/2004-2

OHIM (BoA)

Of the many signs not meeting the criteria of Art. 7 (3), a few examples are listed below: Type

Nice Classes

Figurative

Mark

Case Number

Authority

39, 41, 43

T-553/12

GC

3D

32, 42

C-286/04 P

CJ

3D

34

T-262/04

GC

SHAPE OF A LIGHTER

Article 8 Relative grounds for refusal 1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: (a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected; (b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. 198

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Art. 8 CTMR

2. For the purposes of paragraph 1, ‘earlier trade marks’ means: (a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks: (i) Community trade marks; (ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property; (iii) trade marks registered under international arrangements which have effect in a Member State; (iv) trade marks registered under international arrangements which have effect in the Community; (b) applications for the trade marks referred to in subparagraph(a), subject to their registration; (c) trade marks which, on the date of application for registration of the Community trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention. 3. Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action. 4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign: (a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. Bibliography: Wolfgang Berlit, ‘Schutz und Schutzumfang von Warenformmarken am Beispiel des Schokoladen-Osterhasen’, GRUR 2011, 369; George Bonet, ‘Proprie´te´ industrielle. Le risque de confusion’, Revue trimestrielle de droit europe´en 2000, p. 108; Michele Boote, ‘What’s in a name? Claude Ruiz Picasso v. OHIM’, European Intellectual Property Review 2004, p. 349; Jean-Sylvestre Berge´, ‘L’entre-deux aˆges des droits intellectuels au temps communautaire’, Europe, fe´vrier 1998, chron. no. 2, p. 4; Jan Eichelberger, ‘BAINBRIDGE – Das Ende der noch unbekannten Markenfamilie im Gemeinschaftsmarkenrecht?’, MarkenR 2008, 7; Thomas Fechner, ‘Armer Picasso – Die ‘Neutralisierungslehre’ des EuG’, MarkenR 2005, 377; Karl-Heinz Fezer, ‘Erste Grundsa¨tze des EuGH zur markenrechtlichen Verwechslungsgefahr – oder: “Wie weit springt die Raubkatze?”’, NJW 1998, 713; Carlos Ferna´ndez-Novoa, ‘El elemento determinante de la impresio´n general per una marca’, Jurisprudencia comunitaria sobre marcas 2007, no. 24, p. 131; Elisabeth Fink, ‘Der begriffliche Zeichenvergleich mit Gemeinschaftsmarkenrecht’, in: Festschrift 50 Jahre Bundespatentgericht, 2011, p. 791; Paola A. E. Frassi, ‘The European Court of Justice rules on likelihood of confusion concerning composite trade marks: moving towards an analytical approach’, International Review of Intellectual Property and Competition Law 2006, p. 438; Michael Goldmann, ‘Die mittelbare Verwechslungsgefahr unter dem Gesichtspunkt des Serienkennzeichens’, GRUR 2012, 234; Gu¨nther, ‘Verfahrensbesonderheiten, Schutzumfang von Schwarz-Weiß-Eintragungen und Warena¨hnlichkeit bei Gemeinschaftsmarken’, GRUR-RR 2009, 409; Hye-Knudsen/Schafft, ‘Territorial unterschiedlichen Verwechslungsgefahr bei Gemeinschaftsmarken’, MarkenR 2004, 209; Keller/Glinke, ‘Die “MEDION”-Entscheidung des EuGH’, WRP 2006, 21; Roland Knaack, ‘Die Kennzeichnungskraft im Gemeinschaftsmarkenrecht’, GRURInt 2007, 801; Alexander von Mu¨hlendahl, ‘Territorialita¨t und Ein-

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CTMR Art. 8

Community Trade Mark Regulation

heitlichkeit im europa¨ischen Markenrecht’, in Festschrift fu¨r Schricker, 2005, p. 853; Anne Niedermann, ‘Surveys as Evidence in Proceedings before OHIM’, IIC 2006, 260; Carola Onken, ‘Was pra¨gt Barbara Becker oder kommt es darauf gar nicht an?’, MarkenR 2011, 141; R. P. Raas, ‘Drie strepen en de bescherming van bekende merken en Europees verband’, Nederlands tijdschrift for Europees recht 2000, p. 256; Christian Rohnke, ‘Die Pra¨getheorie nach “Thomson Life”’, GRUR 2006, p. 21; Gregor Schneider, ‘Erfahrungssa¨tze zur Wahrnehmung unterschiedlicher Zeichenkategorien im europa¨ischen Markenrecht’, in: Festschrift 50 Jahre Bundespatentgericht, 2011, p. 883; David E.-F. Slopek, ‘Wiederholungsmarken im Gemeinschaftsmarkensystem’, GRURInt 2013, 101 et seq.; Olaf Sosnitza, ‘Ein weiterer Baustein der Gemeinschafts-Serienmarke – Besprechung von EuGH, Urt. v. 16.6.2011 – C-317/10 P – Uni’, GRUR 2011, 867; Paul L. C. Torremans, ‘The likelihood of association of trade marks: An assessment in the light of recent case law of the Court of Justice’, Intellectual Property Quarterly 1998, p. 713; Jo¨rg Weberndo¨rfer, ‘“Post-Sale” confusion and the parameters of Opposition Decisions’, in Festschrift v. Mu¨hlendahl, 2005, p. 254; Wouter Wefers-Bettink, ‘Puma, Sa`bel en het verwarringsgevaar’, Nederlands tijdschrift voor Europees recht 1998, p. 150; Gerd Wu¨rtenberger, ‘Schutzumfang bei Warenformmarken’, GRUR 2003, 671.

Content A. B. C. D. E.

Historical background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 General overview . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Reform proposals for Art. 8 (1) to Art. 8 (4) CTMR . . . . . . . . . . . . . . . . . . . . . . . 10 Procedural matters . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 Earlier rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16 I. Types of rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17 II. ‘Earlier’ . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21 III. Other grounds. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24 F. Double identity, Art. 8 (1)(a) CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25 I. Identical signs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28 II. Identical goods or services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33 G. Likelihood of confusion, Art. 8 (1)(b) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 40 I. General principles and methodology . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43 1. Relevant standard for assessment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44 2. Relevant territory . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48 3. Relevant facts and law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51 4. Relevant point of time . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 52 5. Relevant approach of OHIM. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 54 II. Comparison of goods and services. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 55 1. Nice Classification and class headings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 57 2. Determination of goods and services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 65 3. Similarity factors . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 68 4. Relationship between similarity factors. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 79 5. Specific sectors of the economy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82 III. Comparison of signs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 83 1. General principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 86 2. Aural comparison. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90 3. Visual comparison . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 101 a) Word mark in conflict with word mark . . . . . . . . . . . . . . . . . . . . . . . . . . . 102 b) Word mark and figurative mark with word element in conflict with figurative mark with word element . . . . . . . . . . . . . . . . . . . . . . . . . . 105 c) Word mark or figurative mark with word element in conflict with figurative mark without word element . . . . . . . . . . . . . . . . . . . . . . 108 d) Purely figurative mark in conflict with purely figurative mark 109 e) Comparison of 3D marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 111 f) Sound and smell marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 115 g) Comparison of abstract colour marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 117 4. Conceptual comparison. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 120 a) The concept behind words . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 126 b) Conceptual meaning of parts of words . . . . . . . . . . . . . . . . . . . . . . . . . . . . 128 c) The conceptual meaning of figurative signs, shapes and colours 131 d) Procedural issues relevant for conceptual comparison . . . . . . . . . . 132

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Art. 8 CTMR

IV. Distinctiveness . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Assessment of the distinctive character of a trade mark . . . . . . . . . . . . 2. Weak distinctive character . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Coexistence of trade marks on the market . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Enhanced distinctiveness . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Relevant point of time . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Relevant goods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Dominant character. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Pure word marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Trade marks consisting of verbal and figurative elements . . . . . . . . . . 3. Descriptive elements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. The notion of independent distinctive role. . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Relevant public and degree of attention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VII. Global assessment and appreciation. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Particular trade mark related factors for the global assessment of similarity. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Long signs/short signs. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Names and surnames . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Series marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Particular product related factors for the global assessment . . . . . . . . a) Specific marketing aspects . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Impact of the method of purchase of goods . . . . . . . . . . . . . . . . . . . . . . . 3. Particular factors relating to the distinctiveness of the marks . . . . . . 4. Incidences of actual confusion as factor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Prior decisions involving the same or similar trade marks . . . . . . . . . H. Trade mark filed by an agent, Art. 8 (3) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Specific literature . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Historical background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Reform proposal. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Purpose of the provision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Agent or representative relationship. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Opposing party is proprietor of the earlier mark . . . . . . . . . . . . . . . . . b) Agent or representative . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Nature of relationship. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Form and territorial scope of agreement . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Application in the agent’s name . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Without the proprietor’s consent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Without justification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Applicability to similar signs and/or similar goods or services. . . . . I. Non registered and used earlier rights, Art. 8 (4) CTMR. . . . . . . . . . . . . . . . . . . I. Specific literature . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Historical background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Reform proposal. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Signs used in the course of trade . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Use in the course of trade. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Proprietor. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Kinds of signs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Non-registered trade marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Other business identifiers. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Trade names . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Corporate names. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . e) Domain names . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . f) Titles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . g) Geographical indications. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . h) Passing-off . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Of more than mere local significance . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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CTMR Art. 8

Community Trade Mark Regulation

1. Significance . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Of more than mere local . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Use in a part of a member state . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Acquisition of right prior to the CTM application . . . . . . . . . . . . . . . . . . . . . VII. Rights arising from the sign relied on . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VIII. National regulations in the member states . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IX. Procedural challenges . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . J. Article 8 (5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Historical background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Earlier trade marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Reputation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Link . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Types of injury . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Blurring . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Tarnishment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Taking unfair advantage . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Due cause . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

302 306 309 311 312 317 318 321 322 329 332 347 356 358 366 371 380

A. Historical background Art. 8 CTMR governs the relative grounds of refusal. These are earlier rights that may be invoked against the registration of a CTM application. Relative grounds of refusal and oppositions against new trade mark applications have been known in practiced under most trade mark laws in the European Union member states prior to the adoption of the Council Directive No 89/104/EEC to approximate the laws of the member states relating to trade marks of 21 December 1988.1 2 With the intention to streamline to some extent the procedures for obtaining and maintaining trade mark protection, the TMD has, amongst others, stipulated in Art. 4 – besides Art. 3 – further grounds of refusal or invalidity concerning conflicts with earlier rights. Art. 4 of the TMD is the immediate predecessor norm of Art. 8 CTMR and is almost identical in its wording2, but left it open to the member states in which procedural way 1

1 Hereinafter: ‘TMD’, amended and codified version of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the member states relating to trade marks. 2 Article 4, Further grounds for refusal or invalidity concerning conflicts with earlier rights (1) A trade mark shall not be registered or, if registered, shall be liable to be declared invalid: (a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected; (b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark. (2) ‘Earlier trade marks’ within the meaning of paragraph 1 means: (a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks; (i) Community trade marks; (ii) trade marks registered in the Member State or, in the case of Belgium, Luxembourg or the Netherlands, at the Benelux Office for Intellectual Property; (iii) trade marks registered under international arrangements which have effect in the Member State; (b) Community trade marks which validly claim seniority, in accordance with Council Regulation (EC) No 40/94 (5) of 20 December 1993 on the Community trade mark,

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Relative grounds for refusal

Art. 8 CTMR

relative grounds of refusal should be considered within the application or registration procedures for new trade marks. For further details on the genesis of the TMD and the CTMR it is referred to the annotations on Art. 13 in this book.

from a trade mark referred to in (a)(ii) and (iii), even when the latter trade mark has been surrendered or allowed to lapse; (c) applications for the trade marks referred to in points (a) and (b), subject to their registration; (d) trade marks which, on the date of application for registration of the trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention. (3) A trade mark shall furthermore not be registered or, if registered, shall be liable to be declared invalid if it is identical with, or similar to, an earlier Community trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier Community trade mark is registered, where the earlier Community trade mark has a reputation in the Community and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier Community trade mark. (4) Any Member State may, in addition, 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: (a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark; (b) rights to a non-registered trade mark or to another sign used in the course of trade were acquired prior to the date of application for registration of the subsequent trade mark, or the date of the priority claimed for the application for registration of the subsequent trade mark, and that nonregistered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark; (c) the use of the trade mark may be prohibited by virtue of an earlier right other than the rights referred to in paragraph 2 and point (b) of this paragraph and in particular: (i) a right to a name; (ii) a right of personal portrayal; (iii) a copyright; (iv) an industrial property right; (d) the trade mark is identical with, or similar to, an earlier collective trade mark conferring a right which expired within a period of a maximum of three years preceding application; (e) the trade mark is identical with, or similar to, an earlier guarantee or certification mark conferring a right which expired within a period preceding application the length of which is fixed by the Member State; (f) the trade mark is identical with, or similar to, an earlier trade mark which was registered for identical or similar goods or services and conferred on them a right which has expired for failure to renew within a period of a maximum of two years preceding application, unless the proprietor of the earlier trade mark gave his agreement for the registration of the later mark or did not use his trade mark; (g) the trade mark is liable to be confused with a mark which was in use abroad on the filing date of the application and which is still in use there, provided that at the date of the application the applicant was acting in bad faith. (5) The Member States may permit that in appropriate circumstances registration need not be refused or the trade mark need not be declared invalid where the proprietor of the earlier trade mark or other earlier right consents to the registration of the later trade mark. (6) Any Member State may provide that, by derogation from paragraphs 1 to 5, the grounds for refusal of registration or invalidity in force in that State prior to the date of the entry into force of the provisions necessary to comply with Directive 89/104/EEC, shall apply to trade marks for which application has been made prior to that date. 3 Commentary by Hasselblatt, Art. 1, mn. 37 et seq.

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CTMR Art. 8

Community Trade Mark Regulation

B. General overview 3

4

5

6

7

8

An opposition against the registration of a CTM application based on relative grounds of refusal can be filed within three months following the publication of a CTM application, Art. 41 (1) CTMR. The legislator of the CTMR has decided in favour of an opposition procedure (in addition to an invalidity procedure) to take place prior to the registration of a CTM upon individual request of a proprietor of an earlier right, as opposed to legislations were the opposition proceeding may be initiated only after the registration of the trade mark.4 Also, earlier rights are not considered ex officio by OHIM, as still is the case in a number of national jurisdictions of the European Union5. If an opposition is brought against it, the registration of a CTM may be postponed for many years. This delays the enforceability of a CTM for a long period of time. However, oppositions are only brought against less than 20 % of all applications,6 an estimated half of which is settled in the cooling-off period or during the suspension of opposition proceedings. Alternatively, relative grounds of refusal can be raised against a registered CTM by way of an application for the declaration of invalidity, Art. 56 in connection with Art. 51 to 53 CTMR, which is not subject to any deadline, but, from a timely perspective, has to be filed within the boundaries of forfeiture of rights under Art. 54 CTMR, or in an infringement proceeding by way of a counter claim, Art. 100 CTMR. Opposition proceedings based on relative grounds of refusal are directed against the registration of a CTM application and are to be filed at OHIM. As opposed to that, Art. 9 CTMR governs the claims resulting from the infringement of a registered CTM through use of a conflicting sign. Relating to this, claims for injunction are to be filed, as a rule, at the competent Community trade mark court under Art. 96 et seq. CTMR. Both in Art. 8 (1)(a) and (b) CTMR and in Art. 9 (1)(a) and (b) CTMR, the success of the opposition or infringement action is contingent on there being either double identity between the earlier right and the younger trade mark or sign in use, or on the likelihood of confusion between the earlier trade mark and the younger trade mark application or sign in use. The concept of double identity and likelihood of confusion as relevant for the determination of oppositions against CTM applications will be discussed further below hereunder in F. and G. of this commentary. As opposed to that, the function theory that the CJ has developed in relation to likelihood of confusion will be discussed within the commentary on Art. 9 CTMR7. Art. 8 CTMR is structured as follows: Art. 8 (1) CTMR provides for relative grounds of refusal based on identity or likelihood of confusion with earlier registered trade marks. This paragraph is subdivided into Art. 8 (1)(a) CTMR regulating cases, in which the earlier trade mark and the goods or services of the earlier trade mark are identical to the CTM application and identical with the goods or services, for which the CTM application claims protection, which is the so called ‘double identity’. Art. 8 (1)(b) CTMR governs the cases, in which there is either identity or similarity between the 4

Such as in Germany, Denmark, Finland, Latvia, Lithuania or Poland. Such as in Denmark, Estonia, Finland, Greece, Ireland, Malta, Poland or Slovakia. 6 See ‘Study on the Overall Functioning of the European Trade Mark System’ submitted on 15.2.2011 by the MPI, at 4.199, available at http://europa.eu/internal-market/intprop/tm/index-en.htm (last visited 23 May 2014). 7 See commentary of Skrzydlo-Tefelska below at Art. 9 CTMR. 5

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Relative grounds for refusal

Art. 8 CTMR

earlier trade mark and the CTM application, and identity or similarity between the goods or services, for which the earlier trade mark claims protection and the goods or services, to which the CTM application extends, which is the so called ‘likelihood of confusion’, including the likelihood of association. Art. 8 (2) CTMR defines the term ‘earlier trade marks’ addressed in Art. 8 (1) 9 CTMR. Art. 8 (3) CTMR and Art. 8 (4) CTMR are designed for cases, in which an opposition cannot be based on an earlier registered trade mark, or in which there is no earlier right in the sense of Art. 8 (2) CTMR at all: Art. 8 (3) CTMR deals with situations, in which an agent or representative of the proprietor of a trade mark has applied for the CTM in his own name; Art. 8 (4) CTMR governs cases, in which the opposition is based on an earlier non-registered trade mark or another sign used in the course of trade of more than local significance. Finally, Art. 8 (5) CTMR deals with disputes, in which there is an earlier trade mark of repute, but there is no similarity between the goods or services of the earlier trade mark and those of the CTM application.8

C. Reform proposals for Art. 8 (1) to Art. 8 (4) CTMR Given the length of opposition proceedings and the non-enforceability of a trade 10 mark during that period, the Max-Planck-Institute, in its study of 20119 has contemplated to replace the pre-registration to a post-registration opposition. However, given an Allensbach survey among users of the CTM system, there was very little support for such accelerated registration procedure similar to that existing in some member states. Thus, no proposals were made to change the current procedural situation, which distinguishes between opposition and invalidity proceedings. The proposal for an amended CTMR of 201310 does not foresee any changes with 11 regard to Art. 8 (1) and (2) CTMR. Changes are foreseen for Art. 8 (3) and Art. 8 (4) CTMR only and will be discussed further below under H. and J. respectively.

D. Procedural matters Oppositions based on relative grounds of refusal can be filed either against CTM 12 applications or International registrations designating the European Community11 by filing a notice of opposition at OHIM. From a procedural point of view, the opposition is governed by Art. 41, 42 CTMR and Rules 15 to 22 CTMIR.12 The OHIM provides users with a summary of its trade mark opposition practices used by OHIM’s examiners, the so called Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part C – Opposition (formerly 8

Art. 8 (5) CTMR will be commented in a separate section by Skrzydlo-Tefelska below. ‘Study on the Overall Functioning of the European Trade Mark System’ submitted on 15.2.2011 by the MPI, at 4.221 et. seq. 10 Proposal for a Regulation of the European Parliament and of the Council amending Reg. (EC) No 207/2009 on the Community Trade Mark of 27.3.2013, COM (2013) 161 final. 11 For specific guidelines see OHIM, The Manual Concerning Proceedings before the OHIM, Part M, 3.5 at https://oami.europa.eu/en/manual-of-trade-mark-practice (last visited on 15 April 2014). 12 For details on the opposition procedure see the annotations of von Bismarck on these provisions in this commentary. 9

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CTMR Art. 8

Community Trade Mark Regulation

called: ‘The Manual’, now ‘Guidelines’, except for the parts on Art. 8 (3) and Art. 8 (4) CTMR, which are still titled ‘The Manual’)13. It is highly advisable for parties in opposition proceedings to be familiar with these Guidelines. 13 Oppositions under Art. 8 (1) and Art. 8 (5) CTMR can be filed by the proprietors of earlier rights or their licensees.14 In oppositions under Art. 8 (3) and Art. 8 (4) CTMR only the proprietor of the earlier right is eligible to file the opposition, not the licensee.15 14 Different from individual national regimes such as in Germany, several earlier rights can be invoked against a CTM application in one single opposition according to Rule 15 (1) CTMIR, without any increases for the fee payable. However, for each CTM application that is targeted by an opposition, even if resulting from one and the same earlier right, a separate opposition has to be filed.16 15 In case of ‘direct’ CTM applications, the deadline for an opposition is three months after publication of the application, Art. 41 (1) CTMR. In the case of International registrations that are extended into the Community as CTM, the opposition, according to Art. 156 (2) CTMR, is to be filed with OHIM directly (not with WIPO) within three months, this period starting six months following the date of the republication pursuant to Art. 152 (1) CTMR, which is the date of publication of the registration of a mark designating the European Community pursuant to Art. 3 (4) MP or the date of the subsequent designation of the European Community pursuant to Art. 3ter (2) MP, which, in effect, is nine months after the first republication of the International registration.17

E. Earlier rights 16

Earlier trade marks as relative grounds of refusal under Art. 8 CTMR are defined in Art. 8 (2) CTMR.

I. Types of rights Under Art. 8 (2) CTMR, the term ‘earlier trade marks’ comprises CTMs, national trade marks registered in a member state or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property, trade marks registered under international arrangements having effect in a member state (in particular under the Madrid Agreement or Madrid Protocol), and trade marks registered under international arrangements which have effect in the Community (i. e. Community designations of International registrations), including applications of all of the aforementioned trade marks subject to their later registration. 18 In case of an opposition based on an International registration with protection in several countries of the EU, the opponent has to state, on which national designation the opposition is based.18 17

13 To be downloaded at https://oami.europa.eu/ohimportal/en/manual-of-trade-mark-practice (last visited on 15 April 2014), last update by Decision No. EX-15-5 of the President of the Office of 4 December 2013, entered into force on 1 February 2014. 14 Bender, in: Fezer, Handbuch der Markenpraxis, 2nd ed., I, 2. Teil, Kapitel 2, B, mn. 1006. 15 Bender, in: Fezer, Handbuch der Markenpraxis, 2nd ed., I, 2. Teil, Kapitel 2, B, mn. 1006. 16 Bender, in: Fezer, Handbuch der Markenpraxis, 2nd ed., I, 2. Teil, Kapitel 2, B, mn. 1008 et seq. 17 For details on the procedure see the annotations of Bo ¨ sling on Art. 152 and 156 in this commentary. 18 Bo ¨ sling, GRUR 2012, 570, 575; see also commentary on Art. 145 CTMR, mn. 16, and Art. 151 CTMR, mn. 13, in this book.

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Relative grounds for refusal

Art. 8 CTMR

Besides that, in each case of an enlargement of the Community, Art. 165 (3) CTMR 19 provides for an additional option to file an opposition: In case a CTM is applied for six months prior to the date of accession of a new member state of the European Union, an opposition can be filed based on an earlier right protected under the laws of that new member state as earlier right in the sense of Art. 8 CTMR, if that earlier right was acquired in good faith and if the date of application or priority is before the date of application of the CTMA.19 Even where the earlier right that is asserted against the CTM or the CTM application 20 is an earlier national right, the registration of the CTM is denied in its entirety, i. e. not only for the respective member state, in which the earlier right is valid.20 This follows from the unitary character of the CTM as stipulated under Art. 1 (2) CTMR according to which the CTM has a unitary effect for the entire European Union and can only be registered or transferred for the Community in its entirety. In such constellations, the owner of a CTM application can, keeping the priority of the application, pursue its conversion into national trade marks under Art. 112 CTMR in those member states, for which no earlier right was asserted.

II. ‘Earlier’ The part ‘earlier’ of earlier trade marks refers, as far as CTMs are concerned, to 21 Art. 27 CTMR, according to which the date of filing of the CTM application is defined as the date on which the documents containing the application under Art. 26 (1) CTMR are filed, subject to payment of the application fee within one month as of filing. For the determination of ‘earlier’, the hour and minute of filing is not taken into account.21 Thus, where CTM applications are filed on the same date, even if one of them is earlier in terms of the hour and/or minute of filing, this does not give rise to relative grounds of refusal under Art. 8 (1) CTMR. The priority of a CTM over a CTM application can also be established via a seniority 22 claim of an earlier national mark for the purposes of the application for registration of the CTM application under Art. 34 (1) CTMR. Given that the seniority claim under this rule is accepted for a CTM, this leads to a CTM with a later date of filing than a CTM application, against which opposition is filed, to be considered an earlier right with regard to the territory, for which the seniority was accepted, even if the national trade mark, whose seniority was claimed, had been allowed to lapse.22 A trade mark will be considered ‘earlier trade mark’ under Art. 8 CTMR, if, even if 23 filed on later date than the CTM application, it benefits from a priority under the Paris Convention or the WTO Agreement according to Art. 29 (1) CTMR.

19 Communication No 2/06 of the President of 19 June 2006 and No 5/03 of 16 October 2003, both published at https://oami.europa.eu/ohimportal/en/decisions-and-communications-of-the-president (last visited 14 April 2014). 20 GC Cases T-81/03, T-82/03 and T-103/03 Mast-Ja ¨ germeister AG v OHIM [2006] ECR II-05409, mn. 76; GC Case T-6/01 Matratzen Concord v OHIM [2002] ECR II-4335, mn. 59; GC Case T-185/03 Fusco v OHIM [2005] ECR II-00715, mn. 33. 21 CJ Case C-190/10 Genesis Seguros Generalis v Boys Toys SA [not published in the ECR], mn. 54. 22 GC Case T-103/11 Tiantian Shang v OHIM [not published in the ECR], mn. 17.

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III. Other grounds 24

For the avoidance of ambiguity, absolute grounds of refusal cannot be invoked within the framework of an opposition under Art. 8, Art. 41 CTMR. If the potential opponent is of the opinion that the CTM application should not have been allowed to publication because of absolute grounds of refusal being present under Art. 7 CTMR, it can file, upon publication of the CTM application, third party observations according to Art. 40 (1) CTMR, in which case OHIM has the option to reopen the examination. In case of an opposition procedure pending against a CTM application at the same time as the examination is reopened, this can be suspended until such point by which the presence or absence of absolute grounds is finally determined.23

F. Double identity, Art. 8 (1)(a) CTMR A relative ground of refusal under Art. 8 CTMR requires the existence of a conflicting right. A CTM applied for is, under Art. 8 (1)(a) CTMR, excluded from registration upon opposition by the proprietor of an earlier trade mark which is identical with the trade mark applied for, and the goods or services, for which the registration is applied, are identical with the goods or services, for which the earlier trade mark is protected. Accordingly, this rule requires identical colliding trade marks on the one hand and identical colliding goods or services on the other hand. In such case, the earlier trade mark is to prevail without any further requirements such as likelihood of confusion.24 26 Considering the purpose of the protection afforded to a trade mark, in particular the origin function of the trade mark, the protection of an earlier trade mark in cases of double identity of trade marks and goods or services is absolute25, as it is also mentioned in the Eighth Recital of the CTMR. Cases in which a sign identical with an earlier trade mark is used for identical goods, also a written notice that the goods are not ‘official products’ of the trade mark owner is not sufficient.26 A case, in which not both colliding trade marks and, at the same time, the relevant goods or services are identical, is to be examined under Art. 8 (1)(b) CTMR, or possibly under Art. 8 (5) CTMR. 27 Whether there is double identity is a legal finding to be established based on a direct comparison of the two conflicting signs and the goods or services in question.27 In oppositions dealing with Art. 8 (1)(a) CTMR as the only ground claimed, if identity between the signs and/or the goods/services cannot be established, OHIM will still examine the case under Art. 8 (1)(b) CTMR.28 25

23 Bender, in: Fezer, Handbuch der Markenpraxis, 2nd ed., I, 2. Teil, Kapitel 2, B, mn. 1012 et seq.; GC Case T-255/08 Eugenia Montero Padilla v OHIM [2010] ECR II-02551, mn. 36. 24 Though cases, in which – given double identity – the absence of likelihood of confusion are virtually inconceivable, at least in opposition proceedings, where considerations such as dual use of trade marks or of lack of trade mark-wise use are of no issue. 25 CJ Case C-291/00 LTJ Diffusion v Sadas Vertbaudet [2003] ECR I-02799, mn. 49. 26 CJ Case C-206/01 Arsenal Football Club plc v Matthew Reed [2002] ECR I-10273, mn. 57. 27 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 1, 2.1. 28 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 1, 2.1.1.

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Art. 8 CTMR

I. Identical signs Due to the absolute protection conferred by Art. 8 (1)(a) CTMR, the requirement ‘identical signs’ has to be interpreted strictly.29 The definition of identity implies that the two signs should be the same in all respects. There is, therefore, identity between the trade marks where the CTM application reproduces, without any addition or modification, all the elements of the earlier trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by the average consumer.30 A difference between two marks may be considered insignificant if a reasonably observant consumer will note the difference only upon careful inspection of the marks side by side; but – as the perception of identity between two signs cannot be the result of a direct comparison between the sign and the trade mark – differences are considered insignificant if they go unnoticed by the average consumer.31 Marks that differ in elements that are exclusively descriptive will still be held similar and not identical.32 Also, signs are not considered identical if they are identical in the word part but differ in a pictorial element.33 On the contrary, signs are considered identical if they have identical letters but differ only in whether the letters are written in upper or lower case.34 Where words differ in but one letter, or have an added dash, they are considered identical.35 Where the trade marks under comparison dispose of exactly the same letters, and are both are written in logotype, the logotype only differing in minor elements, the marks are considered identical.36 On the question, whether an earlier trade mark in black and white and/or greyscale can be considered identical to the same trade mark in colour, the parties to opposition proceedings will have to carefully consider the Common Practic37 According to the Common Practice on relative grounds, a trade mark in black and white or greyscale is only identical to the same trade mark in colour, if the differences in colour are insignificant, meaning that the differences between the marks are only noted by an observant consumer upon side by side examination. It follows that trade marks are only considered identical, if the second trade mark disposes of very similar shades of black and white or grey, or – if applied for in colours while the earlier trade mark is black and white – the dark colour used in the CTM disposes of a shade of that colour that is so dark that it borders on the black. Accordingly, where the aforementioned criterion is not met, an earlier trade mark in black and white is not considered identical to a CTM application of that same device if applied for in colours. To some extent this 29

CJ Case C-291/00 LTJ Diffusion v Sadas Vertbaudet [2003] ECR I-02799, mn. 50 et seq. OHIM, Guidelines for Examination in the Office, Part C, Section 2 Chapter 3, 2.2.; CJ Case C-291/00 LTJ Diffusion v Sadas Vertbaudet [2003] ECR I-02799, mn. 50 et seq., but not in a case of partial identity, as Arthur v Arthur et Felicie, which has to be examined under Art. 8 (1)(b) CTMR. 31 CJ Case 291/00 LTJ Diffusion v Sadas Vertbaudet [2003] ECR I-02799, mn. 52 et seq. 32 OHIM Dec. of 24/11/2011 – R 0696/2011-1 – Millenium (not identical to Millennium Insurance Company Limited). 33 OHIM Dec. of 18/12/2008 – R 0807/2008-4 – Individual (not identical to Individual with ‘I’ logo). 34 GC, Case T-129/09 Bongrain SA v OHIM [2011] ECR II-00117, mn. 21. 35 GC Case T-391/06 Arcandor AG v OHIM [2009] ECR II-00169, mn. 40 et seq. 36 OHIM Dec. of 28/2/2013 – B 2031741 – XTEP (quasi identical logos, one being slightly more italic than the other). 37 Common Communication on the Common Practice of the Scope of Protection of Black and White Marks of 15 April 2014, issued by OHIM and the trade mark offices ofthe European Union within the European Trade Mark and Design Network. 30

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is adeparture from the earlier trade mark dogma that a black and white mark is protected in all colours and against infringement in all colours.

II. Identical goods or services 33

34

35

36

37

In opposition proceedings before OHIM, it is necessary to compare all the goods and services claimed by the trade mark applied for, and all those goods and services for which the earlier trade mark has been registered, both to the extent they are within the scope of opposition as indicated by the opponent on the notice of opposition. In cases, where the applicant has decided to limit the list of goods or services claimed in the application in accordance with Art. 43 (1) CTMR, only the limited list of goods or services is subject to the examination. In cases, where the owner of the earlier right was requested to prove use of his mark, only those goods or services of the earlier trade mark are to be taken into consideration, for which proof of use will be established.38 No judgment has been handed down yet regarding the concept of ‘identical goods’ under Art. 8 (1)(a) CTMR. As, however, the concepts of ‘identical goods’ under Art. 8 (1)(a) CTMR and under Art. 8 (1)(b) CTMR are the same, the case law for the assessment of this factor under Art. 8 (1)(b) CTMR can be referred to. According to Collins, English Dictionary, ‘identical’ means ‘being one and the same’ or ‘exactly alike, equal or agreeing’. Bearing that in mind, identity must be assessed on the basis of the wording of the relevant part of the lists of goods and services. Identity is obviously given where the terms under comparison are exactly the same. Identical goods or services are also assumed where synonyms are used, such as drinks on the one hand and beverages on the other hand in class 32, or health spa services and wellness services.39 As opposed to that, where identical terms are used but the goods are proper to different classes, they are not identical, such as coffee grinders in class 7 (being electric) and coffee grinders in class 21 (being hand operated). But identity does not only exist when the goods and services completely coincide (i. e. the same terms or synonyms are used)40, but also when and in so far as the contested trade mark’s goods or services fall within the broader category of the earlier mark41, or, when and in so far as – conversely – a broader term in the list of the contested mark includes the more specific goods or services of the earlier mark. There might also be identity when two broad categories under comparison coincide partially. Hence, a distinction can be made between cases of ‘full identity’ and ‘partial identity’.42 Case law examples for this situation are the earlier goods components and spare parts for land vehicles and the contested goods vehicle seats, the coinciding part of which was seats for land vehicles43, or bread as earlier good and long-life bakery products as contested goods, the coinciding identical part was long-life bread.44 Where the goods covered by the earlier mark include the goods covered by the later trade mark, those goods are considered to be identical.45 38

GC, Case T-23/06, Case Editorale el Tiempo v OHIM [2008] ECR II-00063, mn. 27. Example from OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 2, 2.2. 40 Books are identical to books. 41 Books are identical to printed matter. As opposed to that, if printed matter in the application is restricted to printed matter, namely magazines, the goods are no longer identical. 42 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 2, 2.1 with further practical examples. 43 GC Case T-363/06 Honda Motor v OHIM [2008] ECR II-02217, mn. 22. 44 GC Case T-336/09 Ha ¨ fele GmbH & Co. KG v OHIM [2011] ECR II-00004, mn. 34. 45 GC Case T-95/07 Aventis Pharma v OHIM [2008] ECR II-00229, mn. 35. 39

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Art. 8 CTMR

In cases where the earlier goods are included in the goods of the contested 38 application, the latter being a general indication in a class heading, the goods are considered identical, as it is impossible for OHIM to filter these goods from the general category and to dissect ex officio the broad category of the applicant’s goods.46 The impact of the judgment IP Translator of the CJ47 on OHIM practice assessing 39 the identity or similarity of goods and services for the purposes of opposition proceedings will be discussed further below under G. II.

G. Likelihood of confusion, Art. 8 (1)(b) CTMR Cases of double identity under Art. 8 (1)(a) CTMR are extremely rare and thus of 40 little practical relevance.48 Contrary to that, cases based on Art. 8 (1)(b) CTMR are of immense practical relevance, as the overwhelming part of oppositions is based on this relative ground of refusal.49 Art. 8 (1)(b) CTMR stipulates that upon opposition by the proprietor of an earlier 41 trade mark, the trade mark applied for shall not be registered, if because of its identity with or similarity to the earlier trade mark, and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory, in which the earlier mark is protected; the likelihood of confusion includes the likelihood of association with earlier mark. If these requirements are met for a CTM application, for all or part of the goods or services applied for, it shall not proceed to registration. For cases, in which a CTM has been registered contrary to such relative ground of refusal of likelihood of confusion with an earlier trade mark, the parallel rule to Art. 8 (1)(b) CTMR is Art. 53 (1)(a) CTMR, according to which a CTM shall be declared invalid on application to OHIM or on the basis of a counter claim in infringement proceedings, where there is an earlier trade mark as referred to in Art. 8 (2) CTMR and the conditions set out in (1) or (5) of that article are fulfilled.50 Likelihood of confusion is one of the key terms in trade mark law, including CTM 42 law. Ever since the first CTM was applied for on 1 April 1996, OHIM and the European courts have continuously worked at developing and defining the criteria that are relevant and decisive for the determination of likelihood of confusion, which is why the general principles and methodology governing the assessment of the presence of likelihood of 46

OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 2, 2.3. CJ Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks [not published in the ECR], on its impact see Richard Ashmead, IP Translator and trade mark registration goods/services scope, Journal of Intellectual Property Law and Practice 2012, p. 844 et seq. 48 They are, however, of immense relevance in infringement proceedings, in particular in cases in which a competitor is using the trade mark of a proprietor as keyword for his own goods or services on the internet, CJ Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmu¨ller GmbH v Gu¨nter Guni and another [2010] ECR I-02517; in cases of application of trade marks and other merchandise, for example toy cars, CJ Case C-48/05 Adam Opel AG v Autec AG [2007] ECR I-01017, within comparative advertisement; for the use of trade marks in the unauthorized distribution of merchandising articles, or in reimport cases. 49 Estimated at 90 % according to Hasselblatt, in: Hasselblatt (ed.) Gewerblicher Rechtsschutz (4th ed.), § 38, mn. 107. 50 Art. 8 (1)(b) and Art. 52 (1)(a) CTMR both go back to Art. 4 (1)(b) of the Council Directive No. 89/ 104/EEC to approximate laws of the member states relating to trade marks of 21 December 1988 in the amended and codified version of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the member states relating to trade marks (‘TMD’). 47

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Community Trade Mark Regulation

confusion in a conflict between a CTM application and an earlier right asserted as relative ground of refusal will be further examined below.

I. General principles and methodology 43

Due to the unitary, EU wide scope of protection of the Community trade mark, the term likelihood of confusion is to be interpreted autonomously by Community trade mark law.51 This follows both from the requirements of the uniform application of Community law and the principle of equality between Community trade mark law and the trade mark laws of the member states. Also, Community trade mark law makes no express reference to the laws of the member states for the purposes of determining its meaning and scope. Accordingly, it must be given an autonomous and uniform interpretation throughout the Community, which takes into account the context of the provision and the purpose of the legislation in question. National trade mark law considerations can therefore be referred to only to the extent that these are in accordance with Community trade mark law. In the last instance, the competent authority for the interpretation and final determination of the criteria for assessing a collision under the rules of the CTMR is the Court of Justice of the European Union (CJ).52

1. Relevant standard for assessment Virtually the first judgment handed down from the CJ on Community trade mark law comprehensively deals the concept and assessment of likelihood of confusion.53 In this decision, generally referred to as Sabe`l, the CJ was required to consider what precisely likelihood of confusion means, as there were different views on the interpretation of ‘likelihood of confusion’ and ‘likelihood of association’ as referred to in Art. 8 (1)(b) CTMR. In this decision, the CJ found that likelihood of association is not an alternative to likelihood of confusion but merely serves to define its scope.54 45 As far as the concrete meaning of the term likelihood of confusion is concerned, this has been further clarified by the CJ to be the risk that the public might believe that the goods and services in question come from the same undertaking or, as the case may be, from economically linked undertakings.55 This relates, taking into consideration the essential function of Community trade marks to guarantee the identity of the origin of the marked product56, to a violation of the origin function of a trade mark.57 44

Hasselblatt, in: Hasselblatt (ed.) Gewerblicher Rechtsschutz (4th ed.), § 38, mn. 109. CJ Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003] ECR I-02439, mn. 26, 27; CJ Case C23/01 Robelco NV v Robeco Groep NV [2002] ECR I-10913, mn. 27, 31, allowing for certain exceptions only to the extent that the issue on hand is not covered by a rule harmonizing laws in the member states. 53 CJ Case C-251/95 Sabe `l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191. 54 CJ Case C-251/95 Sabe `l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191, mn. 18; different from, for example, national perceptions of trade mark laws at the time before the Sabe`l judgment was rendered, for example in German law, where ‘likelihood of association’ is referred to as ‘Gefahr des gedanklichen Inverbindungbringens’ or ‘mittelbare Verwechslungsgefahr’ and was considered as an alternative to ‘likelihood of confusion’ in cases where signs were not similar enough to be confused, Goldmann, GRUR 2012, 234 et seq. 55 CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1998] ECR I-05507, mn. 29, 30, also generally referred to as Canon. 56 CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1998] ECR I-05507, mn. 28. 57 For further discussions of the trade mark functions see Skrzydlo-Tefelska on Art. 9 CTMR. 51 52

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Art. 8 CTMR

The CJ in Sa`bel has also stipulated the criteria for assessing likelihood of confusion. It 46 deducted, from the Tenth Recital in the preamble of the TMD, that the appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association which can be made with the used or registered sign, on the degree of similarity between the trade mark and the sign and on the degree of similarity between the goods or services identified.58 The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case. These factors are to be weighed in interdependence with each other, i. e. the factors outlined by the Court – degree of recognition of the trade mark on the market, degree of similarity between the trade mark and the sign, and degree of similarity between the goods or services – have to be assessed individually and weighed against each other.59 In this assessment of the interdependence of factors, a lesser degree of similarity between goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy a broader protection than marks with a less distinctive character. It follows that there may be a likelihood of confusion notwithstanding a lesser degree of similarity between the trade marks, where the goods or services covered by them are very similar and the earlier mark is highly distinctive.60 According to these principles, the various elements to be taken into account for the 47 assessment of likelihood of confusion will, after clarification of the relevant paradigms (under below 2. to 5.) within which the elements have to be assessed, be further examined below, starting out with the comparison of goods and services (II.), moving then on to the comparison of signs (III.), taking into account how to assess the degree of distinctiveness of a sign (IV.) and how to determine dominant elements within a sign (V.). All these factors have to be weighed in the light of the relevant public and its degree of attention (VI.), as it is decisive, which impression the relevant marks make on the average consumer of these kinds of goods or services.61 Finally, the criteria developed by OHIM and the European courts, for global assessment and appreciation of likelihood of confusion will be looked at (VII.).

2. Relevant territory For the purposes of opposition proceedings, the territory, for which such assessment 48 of likelihood of confusion is to be made, is determined by the earlier rights, upon which an opposition (or, as the case may be, invalidity proceeding or a counter claim) is based. If the earlier trade mark is a national trade mark (or, for that reason, an International trade mark with extension of protection into a particular member state of the European Union), the relevant territory is the member state, in which the earlier trade mark is protected. If the earlier trade mark is a CTM, the relevant territory is the entire European Community. 58

CJ Case C-251/95 Sabe`l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191, mn. 18. CJ Case C-251/95 Sabe`l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191, mn. 19; CJ Case C-342/97 Lloyd Schuhfabrik Meyer & Co. v Klijsen Handel [1999] ECR I-03819, mn. 19 et seq.; CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1998] ECR I-05507, mn. 17 et seq. 60 CJ Case C-251/95 Sabe `l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191, mn. 24; CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1998] ECR I-05507, mn. 17 et seq.; CJ Case C-342/97 Lloyd Schuhfabrik Meyer & Co. v Klijsen Handel [1999] ECR I-03819. 19 et seq. 61 CJ Case C-251/95 Sabe `l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191, mn. 23. 59

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Community Trade Mark Regulation

As a result of the unitary character of Community trade marks according to Art. 1 (2) CTMR, an earlier CTM has identical protection in all member states. Therefore, earlier Community trade marks can challenge any subsequent application for a trade mark prejudicing their protection, even if this is true only in relation to the perception of consumers in parts or a part of the European Community.62 Thus, it is sufficient for a relative ground of refusal under Art. 8 (1)(b) CTMR to be given if there is likelihood of confusion only for a part of the public in the territory in which the earlier CTM is protected. In other words, in order to reject an opposition, it must be established that there is no likelihood of confusion on any part of the public anywhere in the territory of the European Community.63 Therefore, in a case where an opposition is based on national trade marks and/or Community trade marks, OHIM or the European courts cannot confine themselves to rejecting an opposition if they find that there is no likelihood of confusion with respect to the territory of one of the national trade marks invoked without taking account of the perception of the consumers in the other territories to which the earlier rights relate.64

3. Relevant facts and law Establishing likelihood of confusion is a question of law, i. e. the CTMR and relevant case law and legal principles established for the CTMR. This relates also to determining the relevant factors for establishing likelihood of confusion. However, certain requirements that are met or given in the determination of the relevant factors may be questions of fact. If one takes, for example, the factor ‘similarity of goods and services’ relevant for the assessment of likelihood of confusion, one of the requirements for finding similarity is the intended purpose of the products. This, along with other criteria for establishing similarity of goods and services, is a question of fact. Within the relevant factor similarity of signs for establishing likelihood of confusion, the question, whether a word has any meaning with regard to the relevant public is a question of fact. 51 According to Art. 76 (1), sentence 2 CTMR it is up to the parties in opposition proceedings to submit the facts and provide evidence for them, as the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. In particular as far as the factor enhanced distinctiveness of a sign is concerned, its determination will strongly rely on the factual evidence provided thereto by the opponent. The parties to opposition proceedings cannot rely on research and investigation of the factors by OHIM itself. 50

4. Relevant point of time 52

The relevant moment for assessing likelihood of confusion is the point of time when opposition decision is taken. It follows from this that the conditions for enhanced distinctiveness of an earlier mark, or, on the contrary, a reduced scope of protection of the earlier mark, must (still) be fulfilled at the time of decision.65

5. Relevant approach of OHIM 53

Resulting from the standard of global assessment of interdependent factors for determining likelihood of confusion, OHIM, in examining an opposition filed based 62

CJ Case C-514/06 P Armacell Enterprise v OHIM [2008] ECR I-00128, mn. 57. GC Case T-249/08 Coin S.p.A. v OHIM [2010] ECR II-00059, mn. 24. 64 GC Case T-249/08 Coin S.p.A. v OHIM [2010] ECR II-00059, mn. 25, 26. 65 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 1, 4.1. 63

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Relative grounds for refusal

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on earlier rights, follows a set sequence for the determination of likelihood of confusion, starting out with an assessment of the similarity of the goods and services, followed by an assessment of the similarity between the signs, thereafter and in relation to the aforementioned determining the distinctive and dominant elements of the conflicting signs, focusing then on the distinctiveness of the earlier mark and the relevant public, to conclude with a global assessment and appreciation. In cases, where the opponent was put to prove use of his mark, the decision sets out 54 by evaluating the proof of use material submitted in order to determine the goods and services that are identical or similar, as this factor is a conditio sine qua non in order to find for likelihood of confusion. In case of no relevant evidence of use of the mark for the earlier goods, or if there is no degree of similarity between the goods or services found, the examination will be terminated at this point, without a further discussion of similarity of signs and the other factors. If the examination proceeds to the comparison of signs, in case the signs are considered dissimilar, the examination is terminated at this point. Otherwise, the examination continues with the other factors mentioned above.66

II. Comparison of goods and services Following the logic of examination of oppositions under Art. 8 (1)(b) CTMR by the 55 Opposition Division of OHIM, this commentary shall first explain how goods and services are compared as element for the assessment of likelihood of confusion. For this assessment, only the goods which are claimed by the CTM application and identified by the opponent in the opposition are relevant, not any goods, for which such application may already be used. Also, as far as the earlier mark is concerned, only those registered goods or services, on which the opposition is based, are relevant for the assessment; in cases, where the success of the opposition is contingent upon proof of use of the earlier mark, only those goods within the list of goods or services of the earlier mark are relevant, for which there is evidence of use. The same applies to the comparison of goods and services for the purposes of invalidity proceedings before the Office. Only in infringement proceedings it is relevant, for which goods or services the younger sign is actually used. Likewise, the assessment of similarity or dissimilarity of goods is crucial for 56 determining, whether a mark has been properly put to use for the registered goods or services. It is also relevant for determining, to which goods or services any enhanced distinctiveness or reputation of the mark under Art. 8 (5) CTMR relates, and for which goods or services an earlier non-registered sign was used under Art. 8 (4) CTMR.

1. Nice Classification and class headings All goods and services imaginable are categorized according to the Nice Classifica- 57 tion, which goes back to the Nice Agreement on the International Classification of Goods and Services of 15 June 1957.67 66 Comprehensive guidance on the examination principles and methodology of the Office can be found in the Guidelines for Examination in the Office, Part C, Section 2, Chapter 1. 67 Revised in Stockholm on 14 July 1967, Geneva on 13 May 1977 and changed in Geneva on 28 September 1979. The Nice Classification is regularly revised in time spans of five years, the latest edition (10th edition) having been issued on 1 January 2012, now valid in its ‘Version 2014’ as of 1 January 2014.

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According to Rule 2 (4) CTMIR, the Nice Classification serves purely administrative purposes and does not in itself provide a basis for drawing conclusions as to the similarity of goods and services. The fact that respective goods or services are listed in the same class of the Nice Agreement is not, by itself, an indication of a similarity; neither is the listing of the respective goods or services in different classes under the Nice Classification by itself an indication of dissimilarity.68 59 The OHIM is building up a database on the comparison of goods and services as an internal search tool to support the work of the examiners of the Opposition Division. It is not available to the public yet. However, the principles of OHIM for comparing goods and services are laid out in OHIM’s Guidelines for Examination, Part C, Opposition, Section 2, Identity and likelihood of confusion, Chapter 2, Comparison of goods and services.69 60 The Nice Classification is divided, for each class of goods and services, into general indications, the so called class headings, and the alphabetical list of goods and services under each class heading for each class of goods and services. The TMD (and, for that reason, the CTMR) require the goods and services for which protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision in order to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought by the trade mark.70 This requirement does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services with sufficient clarity, provided that such identification is sufficiently clear and precise to allow others to determine the scope of protection.71 61 This is relevant not only for applications of Community trade marks, but also for the determination of the goods or services, on which an opposition is based, in such cases, in which the list of goods and services of the earlier mark uses the general indications of the class headings only. In such cases, in an effort to implement the judgment of the CJ in IP Translator OHIM72, together with the trade mark offices of the member states of the European Union73, have held that an applicant of a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought, must specify, whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class, or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered. 58

68 Examples: Coffee in class 30 is held dissimilar from sauces in class 30, OHIM Decision of 27/9/2013 – B 2069659, Kicks v Picks, p. 6, but coffee in class 30 is held similar to non-alcoholic beverages in class 32, see OHIM Decision of 25/7/2013 – B 2016916 – Kentes v Kentos, p. 3. 69 Valid as of 1 February 2014 in its version according to decision No. EX-13-5 of the President of the Office of 4 December 2013, https://oami.europa.eu/ohimportal/en/decisions-and-communications-of -the-president (last visited 15 April 1 2014). 70 CJ Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trademarks [not published the in ECR], mn. 49, on its interpretation see Viefhues/Bogatz, Wie ist ‘IP-Translator’ zu u¨bersetzen?, GRUR-Prax 2012, 338 et seq.; Farache, Ange´lique: Protection par la marque: ne´cessite´ de pre´cision et de clarte´ lors de l’identification, Revue Lamy droit des affaires 2012, No. 75, p. 22. 71 CJ Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trademarks [not published in the ECR], mn. 56. 72 By Communication No. 2/12 of the President of the Office of 20 June 2012, https://oami.europa.eu/ ohimportal/en/decisions-and-communications-of-the-president (last visited on 15 April 2014). 73 By Common Communication on the implementation of IP Translator of 20 November 2013, https:// oami.europa.eu/ohimportal/en/decisions-and-communications-of-the-president (last visited on 15 April 2014).

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As regards CTM applications filed before 21 June 2012 (which marks the day following 62 the Communication of the President of OHIM on the implementation of IP Translator), OHIM considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made.74 Consequently, in opposition cases against a CTM application claiming, for the list of goods and services, the class headings of the Nice Classification without any further specification, the Opposition Division will compare the goods of the earlier mark with both (i) the general indications specified and (ii) any items in the alphabetical lists that do not fall within the natural and usual meaning of these general indications.75 As for an earlier mark that was filed before the Common Communication claiming the entire class headings, the general indications in these class headings will be interpreted following a literal approach which seeks to give those indications their natural and usual meaning.76 This can lead to rather grotesque constellations: An opposition, in which identical 63 class headings of the respective marks collided and that was filed before IP Translator and the implementing Communications of the Offices, would have been successful all the way. On the contrary, an opposition based on an earlier national mark and a later CTM with identical conflicting class headings can fail in part due to different lists of goods as interpreted by OHIM in accordance with the Communications. In one of the earliest decisions that had been taken following the implementing 64 Communications to IP Translator, the earlier mark had been a national Portuguese mark, whereas the CTM application had been filed before 21 June 2012. In the determination of the relevant goods, OHIM had, for the CTM application claiming class headings only, added to the list of goods such goods that appeared in the alphabetical listing for those class headings but which, according to the opinion of OHIM, it did not at the same time equal the actual meaning of the class headings. As far as the earlier mark was concerned, it had not made these additions but interpreted the class headings according to their meaning in a narrower way. This way, OHIM has come up with a list of goods as claimed by the application which was only in part identical to the list of goods of the earlier mark and thus, for those remaining goods which it did not consider similar to the goods of the earlier mark, denied likelihood of confusion.77 The – absurd – result was that the CTM 74 Communication No. 2/12 of the President of the Office of 20 June 2012, https://oami.europa.eu/ ohimportal/en/decisions-and-communications-of-the-president (last visited on 15 April 2014). 75 OHIM Dec. of 2/10/2013 – B 2006792 – Terra y mar, p. 3. 76 Common Communication on the implementation of IP Translator of the European Trade Mark and Design Network, published on 2 May 2013. 77 OHIM Dec. of 2/10/2013 – B 2006792 – Terra y mar, p. 2 et seq., where this played out, for goods in class 29, as follows: ‘The goods on which the opposition is based are the following: Class 29: meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; oils and edible fats. The contested goods are the following: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; edible oils for roasting. The contested CTM application seeks protection for the entire class headings of class 29 of the Nice classification. It was filed on 19/12/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012 as regards Community trade mark applications filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of Nice classification in force at the time when the filing was made, in this case the ninth edition. Consequently, in order to take account of the entire alphabetical list in class 29 of the contested CTM application, the Opposition Division will compare the goods of the earlier mark with both (i) the general indications specified and (ii) any items in the alphabetical lists that do not fall within the natural and usual meaning of these general indications. In the case of class 29,

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application that had been opposed was later on registered with certain goods, which did not appear literally in the original application but were the result of OHIM’s interpretation of the list of goods in the opposition proceeding. It remains to be seen whether this practice will stand the test of examination by the CJ at some point.

2. Determination of goods and services Before embarking on the comparison of goods and services, the correct wording of the goods and services as in the list of the respective trade mark has to be identified. Usually, this is not an issue that has to be addressed separately. It can, however, occur in situations, in which, for Community trade marks, discrepancies are found between the translation of the wording of the list of goods and services as published and the original wording as filed, or between different language versions of a list of goods and services as published. In such cases, the relevant version is the list of goods and services in the first language of OHIM as published in the Community trade marks bulletin. 66 For opposition cases, only the text of the list of goods or services is relevant, not any actual or intended use of the goods not stipulated in the list of goods or services.78 67 Where, following a term of a good or service, it is followed by ‘in particular’ and an enumeration of other goods or services, this means that these are only examples and, for the purposes of comparison, only the general term in front of the ‘in particular’ is relevant.79 On the contrary, if the term ‘namely’ is used, this restricts the list of goods or services to that or those particular terms only of the specifically listed goods. Only these need to be compared with the goods/services of the other mark. 65

3. Similarity factors Following the determination of the goods or services to be compared, their actual comparison has to be made. As far as identity is concerned, this is discussed at above D I. 69 Two items are defined as being similar, when they have some characteristics in common.80 70 The term ‘similarity of products’ is a new legal term introduced by the TMD81 which, due to its indetermination by the TMD, required interpretation.82 The answer has been 68

the Opposition Division has identified the following items in the alphabetical lists covered by the contested CTM application that do not fall within the natural and usual meaning of these general indications: Class 29: alginates for food; edible birds nests, pectin for food; pollen prepared as food stuff; protein for human consumption; rennet; weed extracts for food. Therefore, as regards these goods, both the general indications specified and the items listed above will be compared. The earlier Portuguese trade mark registration No 474818 is registered for the entire class headings of class 29 of the Nice classification. It was filed on 16/11/2010. In accordance with the Common Communication on the implementation of IP Translator of the European Trade Mark and Design Network, published on 02/05/2013, the general indications in these class headings will be interpreted following a literal approach, which seeks to give those indications their natural and usual meaning.’ The result was that the goods of the earlier mark were not considered similar with the goods that the OHIM added to the list of goods of the CTM application on its own account, namely alginates for food; edible birds nests; pectin for food; protein for human consumption; rennet; weed extracts for food and that the CTMA proceeded to registration for the goods that, as one may assume, the applicant of the CTMA certainly did not have in mind when filing for the CTMA. 78 GC Case T-487/08 Kureka Corp. v OHIM [2010] ECR II-00111. 79 GC Case T-224/01 Durferrit v OHIM [2003] ECR II-01589, mn. 41. 80 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 2, 3.1.1. 81 Art 4 (1)(b) TMD. 82 For example, in German trade mark law prior to implementation of the TMD the relevant criterion was called ‘Warengleichartigkeit’, which can roughly be translated with ‘likeness of services’.

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given by the CJ in one of its first judgments on likelihood of confusion, the so-called Canon decision.83 While the CJ did not provide for an exact definition of similarity of products, in literature the term has been defined as the factual circumstances, which, in the eyes of the addressed consumer, let the goods or services to be compared appear to be economically related so closely that they are to be considered similar in the legal sense, because they are apt to lead to a likelihood of confusion of the younger sign with an older trade mark, or contribute to it.84 According to the relevant case law85 in order to find for likelihood of confusion in the overall assessment, an – even if remote – minimal degree of similarity is required between the relevant goods or services, even in cases, in which there is identity with the trade mark, whose distinctiveness is particularly enhanced.86 This means that in cases, where no similarity between the respective goods or services is found, the examination of the opposition under Art. 8 (1)(b) CTMR stops, and there is room only for a determination under Art. 8 (5) CTMR. The CJ has addressed the factors which are relevant and to be taken into account in order to determine the similarity of goods and services. These factors, named after one of the parties to the litigation, are called Canon factors. These factors include, inter alia, the nature of the goods or services, their end users, their intended purpose, their method of use and whether they are in competition with each other or are complementary.87 By the use of the term inter alia the CJ has indicated that these factors are not to be understood as being exhaustive. Additional factors that are taken into consideration by OHIM are the distribution channels88, the relevant public and the usual origin of the goods or services.89 In order to determine similarity of goods or services, an objective – as compared to abstract – approach has to be taken, i. e. it is necessary to consider the reality of the relevant market and customs in the sector of industry or commerce, in particular as regards the use and customer circles addressed by the products and their complementary or competitive character as compared to the conflicting goods. As this is a question of facts, and the examiner may not be aware of the facts in the relevant sector, it is up to the parties of an opposition procedure to substantiate and provide evidence for their contentions in this regard. What does not follow from the evidence submitted or is not commonly known, cannot be stipulated by OHIM or extensively investigated ex officio.90 As far as the nature of the products to be compared is concerned, the fact that the goods or services to be compared belong to the same class of goods and services may serve as a certain indication for assuming a minimum degree of similarity, whereas the affiliation to the same class is by no means required.91

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CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc.[1997] ECR I-02125. Eisenfu¨hr/Sander, Gemeinschaftsmarkenverordnung, 4th ed., Art. 8, mn. 114. 85 CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc.[1997] ECR I-02125, mn. 22; GC Case T-169/03 Sergio Rossi v OHIM [2005] ECR II-00685, mn. 53; GC Case T-150/04 Mu¨lhens GmbH & Co. KG v OHIM [2007] ECR II-02353, mn. 34. 86 CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1997] ECR I-02125, mn. 22. 87 CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1997] ECR I-02125, mn. 23. 88 GC Case T-48/06 Astex Therapeutix Ltd. v OHIM [2008] ECR II-00161, mn. 38. 89 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 2, 3.1.1. 90 GC Case T-222/09 Ineos Healthcare v OHIM [2011] ECR II-00183, mn. 31 et seq. 91 Hasselblatt, in: Hasselblatt (ed.), Gewerblicher Rechtsschutz, 4th ed., § 38, mn. 27; Eisenfu ¨ hr/Schennen/Sander, Gemeinschaftsmarkenverordnung, 4th ed., Art. 8, mn. 119; GC Case T-202/03 Alecansan SL v OHIM [2006] ECR II-00019, mn. 38; GC Case T-430/07 Bodegas Montebello v OHIM [2009] ECR II00049, mn. 22. 84

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It is not necessary or decisive that the goods or services are addressed to identical consumers.92 The possibility or likelihood of licensing in the respective product areas does per se not lead to a similarity of goods.93 However, in such cases where licensing between different product segments has become a commercial usage, this can lead to a familiarization of the consumers with such practices which has to be considered in the appreciation of similarity.94 76 If goods are used in combination with each other, they are not complementary; it means that they are used together, which may lead to aesthetic complementarity, such as between handbags and clothing. Aesthetic complementarity between goods may give rise to a degree of similarity. This must involve true aesthetic necessity, in the sense that one product is indispensable or important for the use of the other, and consumers consider it ordinary and natural to use those products together. Aesthetic complementarity is subjective and determined by the habits and preferences of the consumers, to which the producers’ marketing strategies or simple fashion trends may give rise.95 But the mere existence of aesthetic complementarity between the goods is not sufficient to conclude that there is a similarity. Rather, consumers must consider it usual that the goods are sold under the same trade mark, which usually implies a commercial habit in the relevant trade sector.96 Such aesthetic complementarity was denied between shoes on the one hand and leather goods and handbags on the other hand.97 77 The nature of a product addresses its essential qualities and characteristics, goods being by their nature generally dissimilar to services, which are – different from goods – not tangible. The intended purpose of a product is the reason for which something is done, created or exists. The method of use determines the way in which the goods or services are used to achieve their purpose. If the respective products have a close connection between them in the sense that one is essential or significant for the use of the other, the goods or services are considered complementary.98 78 When goods are used in support of other goods, they are considered ancillary, which is also different from being complementary and usually does not lead to similarity. When goods are in competition with each other, they can substitute the other, meaning that they serve the same purpose and are interchangeable. The distribution channel addresses the way in which consumers have access to the goods or products, i. e. the particular sales outlet.99 The relevant public addresses the actual and potential customers of the goods or services in question. The usual origin of a product100 determines who is responsible for the manufacturing of the good or for providing the service.101 75

92 Hasselblatt, in: Hasselblatt (ed.), Gewerblicher Rechtsschutz, 4th ed., § 38, mn. 27 by referring, e contrario, to GC Case T-169/03 Sergio Rossi v OHIM [2005] ECR II-00685, mn. 56. 93 Hasselblatt, in: Hasselblatt (ed.), Gewerblicher Rechtsschutz, 4th ed., § 38, mn. 127 referring to GC Case T-150/04 Mu¨lhens GmbH & Co. KG v OHIM [2007] ECR II-02353, mn. 23, in which decision it was not sufficient for similarity between leather articles and perfume goods that companies in fashion generally grant trade mark licenses for the distribution of perfume goods. 94 Hasselblatt, in: Hasselblatt (ed.), Gewerblicher Rechtsschutz, 4th ed., § 38, mn. 127. 95 GC Case T-39/10 El Corte Ingles, SA v OHIM [not published in the ECR], mn. 74, appeal pending at the CJ under C-578/12. 96 GC Case T-39/10 El Corte Ingles, SA v OHIM [not published in the ECR], mn. 75. 97 GC Case T-169/03 Sergio Rossi v OHIM [2005] ECR II-00685, mn. 56 et seq. 98 GC Case T-74/10 Flaco Gera ¨ te GmbH v OHIM [2011] ECR II-00130, mn. 40. 99 GC Case T-164/03 Ampafrance SA v OHIM [2005] ECR II-01401, mn. 53. 100 Factor addressed by GC Case T-388/00 Institut fu ¨ r Lernsysteme GmbH v OHIM [2002] ECR II04301, mn. 55. 101 See on the definition of the factors and practical examples along with application of these factors by the OHIM in assessing oppositions, Guidelines for Examination in the Office, Part C, Section 2, Chapter 2, 3.2.1 to 3.2.8. The OHIM assessments on similarity of goods and services, as a rule, tend to be very

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4. Relationship between similarity factors While the CJ in Canon enumerated the relevant criteria for assessing similarity of 79 goods or services, it did not provide any hierarchy, weight or order between them. Just as the finding of likelihood of confusion, the finding of similarity of goods is the result of an assessment of the relevant factors outlined above as a consequence of an individual evaluation of the various factors to be considered. According to OHIM examination standards, the factors cannot be considered independently, since some criteria are interrelated and some criteria are more important than others. As a result of weighing all these factors in accordance with their respective impor- 80 tance in relation to the goods or services at issue, any similarity may differ in degree.102 The OHIM considers the factors usual origin of products, purpose of products, nature, complementarity and being in competition with each other to be generally stronger and more important factors than method of use, distribution channels and relevant public.103 There is, however, no case law from the CJ yet on the criteria for weighing the individual Canon factors for the purposes of an assessment of similarity. The generally strong factors are considered to have a stronger impact on a possible 81 confusion as to the origin than the generally weaker factors. As a rule of thumb, similarity will not be assumed, if only the less important factors (same method use, same distribution channels, same relevant public) are met without any of the generally strong factors.104

5. Specific sectors of the economy Specific questions on the similarity of goods and services for particular products and 82 industries along with examples for similarity and dissimilarity are answered, according to the case law developed for this by OHIM and the European courts, in the Guidelines.105

III. Comparison of signs The term ‘similarity of signs’ is neither defined in the CTMR nor in the TMD. It is 83 one of the decisive factors in the assessment of likelihood of confusion, with which the scope of protection of existing trade mark rights are extended beyond the cases of mere identity between signs.106 According to the Office’s practice for determining the similarity of signs for the 84 purposes of an assessment of likelihood of confusion under Art. 8 (1)(b) CTMR, the comparison of signs is conducted as a so called objective comparison, meaning that all elements of the signs are taken into account, irrespective of their distinctiveness thorough and thoughtful, as compared to, for example, the rather cursory appraisals undertaken by the German Patents and Trade Marks Office. 102 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 2, 3.3. 103 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 2, 3.3.2. 104 By way of example coffee and wine have the same method of use (they are being drunken), they have the same distribution channels (sold in retail stores and/or supermarkets) and are directed at the same relevant public (the public at large). Still, they are not considered similar, see OHIM Dec. of 21/3/2013 – B 1945552 – Rubinello, p. 5. 105 In particular Annex II of Guidelines for Examination in the Office, Part C, Section 2, Chapter 2. 106 Eisenfu ¨ hr/Sander, Gemeinschaftsmarkenverordnung, 4th ed., Art. 8, mn. 63.

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or dominance.107 This means that other factors that are often mixed in the assessment of similarity of signs, namely the general impression that the signs evoke for the addressed consumer, the distinctiveness of the signs and the dominance of certain elements within the signs, are disregarded within the objective comparison of signs. The factors of distinctiveness of the marks as such and dominance of their component parts are individually evaluated and taken into consideration at a later stage. All elements are then considered within the context of the global assessment of likelihood of confusion. 85 Even if the results of such assessment should, as a matter of principle, not vary depending on whether the comparison of signs is made apart, objectively, without taking into consideration the distinctiveness of a sign and the dominance of certain elements, or whether this determination is mixed with the consideration of similarity of signs, it is important to know this different methodological approach of OHIM in order to better understand the structure of decision making at OHIM and to draft submissions in opposition proceedings along this structure in order for the arguments to be properly taken into consideration.

1. General principles Two marks are similar when, inter alia, from the point of view of the relevant consumer, they are at least partially identical as regards one or more relevant aspects.108 For objective comparison of the aspects, signs are always compared on three levels, namely aurally, visually and conceptually, as these are the three ways in which signs can be perceived, as a rule. In cases in which it is not possible to compare on one level, for example the signs do not evoke any image or concept, this aspect will be left out, and the similarity of signs will be determined without considering this aspect. 87 A similarity of signs is given, if a resemblance is found in only one of the three categories.109 As a logical consequence from the requirement to determine likelihood of confusion, taking into consideration all relevant factors in their interdependence, a finding for a similarity of signs will not of necessity lead to a finding for likelihood of confusion. 88 The final finding on comparison of signs, i. e. whether the signs are similar or not, is a question of law, whereas the considerations taken when comparing the signs aurally, visually and conceptually are a matter of fact. For the purposes of opposition and invalidity proceedings based on earlier rights as relative ground of refusal, as opposed to infringement proceedings under Art. 9 CTMR, only the signs in the form in which they are registered or applied for is relevant, not their actual use.110 89 The comparison must cover the signs in their entirety, meaning that certain elements of the signs cannot be skipped in the comparison just because they are considered to be not dominant or non-distinctive.111 This is a consideration that has to be discussed within the assessment of distinctiveness of the signs and taken into consideration within 86

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OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 1.2.1. GC Case T-6/01 Matratzen Concord GmbH v OHIM [2002] ECR II-04335, mn. 30; GC Case T-281/ 07 ecoblue AG v OHIM [2008] ECR II-00254, mn. 26. 109 Which principle is not applied consistently, however. In cases where similarity is found only in the conceptual aspect, the signs may eventually not be found similar, as is evident from the case examples below under E. III. dd. 110 Which may of course become relevant if the opponent is put to prove actual use of his mark as registered. 111 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 1.2.1. 108

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the global assessment.112 If a sign under comparison contains a disclaimer pursuant to Art. 37 CTMR, this element has to be discussed in the comparison of signs but has the effect that the element, to which the disclaimer applies, must be considered nondistinctive.113 The requirement to compare the signs in their entirety includes that even negligible elements may not be skipped from the outset, but only after having taken due notice of them and after having analyzed why they are to be disregarded.114

2. Aural comparison An aural comparison can, by definition, only be made for word marks or device 90 marks that contain a word element. In the aural comparison, account must be taken of the phonetic impression produced by the earlier trade mark and the sign, against which the opposition is targeted. Depending on the scope of protection of the earlier sign, where it is a CTM registration or application, account must be taken of all the possible pronunciations of the signs by the relevant consumers in all official languages of the member states. In cases where the earlier mark is a national mark, only the pronunciation of the signs at issue by the language or languages dominant in the territory of protection of the earlier right are to be considered.115 For reasons of procedural economy, in cases where the earlier right is a CTM or CTM application, it is permissible for OHIM to consider the aural examination only according to the language that is most relevant for the case or focus on only a part or parts where there is likelihood of confusion.116 In cases where – judging by the language that is relevant for the assessment – the 91 average consumer will have to pronounce a word from a foreign language in his own language, it may not be pronounced in the same manner as in the original language. A correct pronunciation as in the original language requires not only knowledge of that pronunciation, but also the ability to pronounce the word in question correctly. If it is to be stipulated, that the consumer in the language at issue will pronounce the foreign language word in its original pronunciation, it will be necessary to establish that a majority of the relevant public has that ability.117 A dictionary for the languages of the relevant public may, as a rule, be taken into consideration in that respect, even if not brought forth by the parties, because the languages are considered to be known facts. The dictionary provides the relevant indication of the correct pronunciation of the word in question in the relevant language of the consumer, although there is no guarantee that that pronunciation is the one actually used in everyday speech.118 If the sign is an invented term which does not correspond to any existing word in a Community language, it can only be a matter of its likely pronunciation by the public concerned.119 The key factors for determining aural similarity are primarily the number of 92 syllables120 and the sequence of vowels, as these determine the phonetic impression of 112 CJ Case C-334/05 P Shaker di L. Laudato & C. Sas [2007] ECR I-04529, mn. 41, 42; GC Case T-61/ 09 MeicaAmmerla¨ndische Fleischwarenfabrik Fritz Meinen GmbH & Co. KG v OHIM [2011] ECR II00445, mn. 46. 113 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 4, 2.2.2.3. 114 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 3.3. 115 GC Case T-388/00 Institut fu ¨ r Lernsysteme GmbH v OHIM [2002] ECR II-04301, mn. 71. 116 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 3.5.1. 117 GC Case T-57/03 Socie ´te´ Provencale d’achat et de gestion v OHIM [2008] ECR II-00287, mn. 58. 118 GC Case T-57/03 Socie ´te´ Provencale d’achat et de gestion v OHIM [2008] ECR II-00287, mn. 59. 119 GC Case T-402/07 Kaul GmbH v OHIM [2009] ECR II-00753, mn. 78. 120 GC Case T-35/09 Procaps SA v OHIM [2010] ECR II-00103, mn. 57.

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the word.121 In such cases, where vowels are combined with differentiating and strong, meaning strongly influencing the aural impression, consonants, this can proportionately reduce the phonetic similarity of the signs at issue. On the contrary, the sequence of vowels can be of minor importance, where, with equal syllables and length, the consonants are identical.122 It has long been a rule of thumb in the determination of similarity, that equal beginnings of words play a larger role, whereas endings and – for longer signs – middle parts of signs weigh less in the general impression123, which means that the similarity or difference between the first part of the words is an important factor for assessment. However, this does not apply in all cases.124 The validity of that argument has to be assessed dependent on the facts particular to the case, in particular taking note of the specific characteristics of the signs at issue.125 In respect of word marks which are relatively short, the central elements are as important as the elements at the beginning and at the end of the sign.126 Also, it has been decided that there is no principle that the consumer generally is more attentive to the beginning of a word mark than to the end.127 In cases where the ending or the middle part of a word consist of particularly characteristic elements with impact on the general impression of the signs, there can also be a similarity with differing beginnings, in particular if only the first letters diverge but the remainder of the words are equal.128 Examples from case law, where word marks were deemed aurally similar: GC Case T-505/10 Ho¨gana¨s BV v OHIM [not published in the ECR], mn. 35 et seq. (CASTALOY v HASTE LLOY); GC Case T-467/11 Colgate-Palmolive Company v OHIM [not published in the ECR], mn. 62 (Sonic Power v 360 Sonic Energy); GC Case T-374/09 Lorenz Shoe Group AG v OHIM [not published in the ECR], mn. 43 et seq. (Ganter v Ganeda); GC Case T-63/13 Three-N-Product Private Ltd. v OHIM [not published in the ECR], mn. 45 (Ayus v Ayur); GC Case T-155/12 Hans Gerd Schulze v OHIM [not published in the ECR], mn. 44 et seq. (NKL-Klassiklotterie v Klassiklotterie]; GC Case T-328/12 Mundipharma GmbH v OHIM [not published in the ECR], para. 50 et seq. (Oxygesic v Maxigesic). Examples from case law, where figurative marks with word elements were deemed aurally similar: GC Case T-410/12 Vitaminaqua Ltd. v OHIM [not published in the ECR], mn. 55 (Vitamin Water (device) v Vitamin Aqua (device)); GC Case T-378/12 Capitalizaciones Mercantiles Ltda v OHIM [not published in the ECR], mn. 60 (X (device) v X (device)); GC Case T-555/11 tesa SE v OHIM [not published in the ECR], mn. 40 et seq. (TACK Ceys (device) v tesa TACK (device)). Examples from case law for word and device marks that were deemed aurally different: GC Case T-437/11 Golden Ball Ltd. v OHIM [not published in the ECR], mn. 39 (Ballon d’Or v Golden Balls); GC Case T-42/09 A. Loacker SpA v OHIM [not published in the ECR], mn. 25 et seq. (Loacker Quadratini v Quadratum); GC Case TEisenfu¨hr/Sander, Gemeinschaftsmarkenverordnung, 4th ed., Art. 8, mn. 88. GC Case T-95/07 – Aventis Pharma SA v OHIM [2008] ECR II-00229, mn. 48. 123 Eisenfu ¨ hr/Sander, Gemeinschaftsmarkenverordnung, 4th ed., Art. 8, mn. 89; GC Case T-129/01 Jose´ Alejandro SL v OHIM [2003] ECR II-02251, mn. 47, 48; GC Case T-186/02 BMI Bertollo Sre v OHIM [2004] ECR II-01887, mn. 50; GC Case T-146/06 Sanofi-Aventis SA v OHIM [2008] ECR II-00017, mn. 49. 124 GC Case T-158/05 Trek Bicycle v OHIM [2007] ECR II-00049, mn. 70. 125 GC Case T-228/09 United States Polo Association v OHIM [2011] ECR II-00102, mn. 37. 126 GC Case T-95/07 Aventis Pharma SA v OHIM [2008] ECR II-00229, mn. 43. 127 CJ Case C-599/11 P TofuTown.com GmbH v OHIM [not published in the ECR], mn. 31. 128 Eisenfu ¨ hr/Sander, Gemeinschaftsmarkenverordnung, 4th ed., Art. 8, mn. 89; GC Case T-388/00 Institut fu¨r Lernsysteme GmbH v OHIM [2002] ECR II-04301, mn. 66. 121 122

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39/10 El Corte Ingles, SA v OHIM [not published in the ECR], mn. 62 (Emilio Tucci v Pucci); GC Case T-566/10 Jutta Ertmer v OHIM [not published in the ECR], mn. 38 (CAT v ercat); GC Case T-295/11 Duscholux Iberica, SA v OHIM [not published in the ECR], mn. 72 (Duscho Harmony (device) v duschi (with whale device)); GC Case T488/08, Galileo International Technology, LLC v OHIM [2011] ECR II-00350, mn. 44 (Galileo International (device) v GSS Galileo Systemas y Servicios (device)). As to the importance of beginnings of marks: For illustration, varying decisions 98 depending on the particular beginnings of the signs at issue are listed below. Decisions in which the first part of the mark was considered of greater importance: 99 GC Case T-50/12 AMC – Representacoes Texteis Lda v OHIM [not published in the ECR], mn. 14 (Metro (device) v Metro Kids Company (device)); GC Case T-34/10 Hairdreams HaarhandelsgmbH v OHIM [not published in the ECR], mn. 28–30 (Magic life (word) v Magic Light (word)); GC Case T-42/09 A. Loacker SpA v OHIM [not published in the ECR], mn. 28 (Quadratini (word) v Quadratum (word)); GC Case T366/11 Bial – Portela & Ca, SA v OHIM [not published in the ECR], mn. 25–27 (Cebinix (word) v Cebexir (word)); GC Case T-460/11 Scandic Destilleries SA v OHIM [not published in the ECR], mn. 40 (Bu¨rgerbra¨u (word) v Bu¨rger (device)). Decisions in which the first part of the mark was not considered to be of a greater 100 importance: GC Case T-553/10 Biodes, SL v OHIM [not published in the ECR], mn. 54; CJ Case C-599/11 P TofuTown.com GmbH v OHIM [not published in the ECR], mn. 31 (Curry King (word) v TofuKing (word)); GC Case T-537/11 Cultafors Group AB v OHIM [not published in the ECR], mn. 41 (Kickers (word) v Snickers (device)); GC Case T-247/11 FairWild Foundation v OHIM [not published in the ECR], mn. 33 et seq. (Wild (word) v fAIRWILD); GC Case T-502/07 IIC – Intersport Internation Corp. GmbH v OHIM [not published in the ECR], mn. 36 (McKinley v McKenzie (word)); GC Case T-433/09 TTNB v OHIM [not published in the ECR], para. 62 (CARMENMARCH (word) v Tila March).

3. Visual comparison For the visual comparison of signs, the factors to be taken into consideration depend 101 on the kind of signs that are subject of the comparison. a) Word mark in conflict with word mark. The visual similarity of word marks is the 102 consequence of an accordance between the words due to letters configured in a similar way.129 The configuration of letters has to take account, in particular, of the length of the marks, the letters constituting them and the order, in which these letters are placed.130 If two word marks have the same number of letters, this is not per se of any particular 103 significance for the public targeted by those marks, even for a specialized public. Since the alphabet is made up of a limited number of letters, which are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them. But this cannot per se lead to visual similarity.131 As the public is not generally aware of the exact number of letters in a word mark, it will not necessarily notice that two conflicting marks have the same number of letters.132 On the contrary, what is relevant is rather the presence of several letters in each of them in the same order.133 129

GC Case T-35/04 Athinaiki Oikogeniaki Artopoiia AVEE v OHIM [2006] ECR II-00785, mn. 54. GC Case T-525/10 Azienda Agricola Colsaliz di Faganello Antonio v OHIM [not published in the ECR], mn. 41. 131 GC Case T-402/07 Kaul v OHIM [2009] ECR II-00753, mn. 81. 132 GC Case T-402/07 Kaul v OHIM [2009] ECR II-00753, mn. 82. 133 GC Case T-402/07 Kaul v OHIM [2009] ECR II-00753, mn. 83. 130

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Word marks are protected as such, not in their concrete written form. Therefore, it is irrelevant whether the word mark or part of it is represented in upper or lower case letters.134 The average consumer generally perceives the signs as a whole and does not proceed to analyze their various details. Thus, small differences in letters are, depending however on the total length of the marks under comparison, not sufficient to exclude a finding of a visual similarity, particularly when the signs have a common structure.135 The mere inversion of elements of a mark cannot allow the conclusion to be drawn that there is no visual similarity.136

b) Word mark and figurative mark with word element in conflict with figurative mark with word element. Visual similarity can also be found between a word mark and a figurative mark containing a word element, since the two types of marks have graphic forms capable of creating a visual impression.137 For the visual assessment also the usual typographics have to be considered, such as the hand written style of a mark which may coincide visually, even if the letters of the word as such differ to a larger extent.138 When figurative marks with word elements and word marks are compared visually, what matters is whether the signs share a significant number of letters in the same position and whether the word element in the figurative sign is highly stylized or not. Similarity may be found despite the fact that the letters are graphically represented in different type faces, in italics or bold, in upper or lower case or in colour. In principle, when the same letters are depicted in the same sequence, any variation in stylization has to be high in order to find a visual dissimilarity.139 Given similar words per se, it is likely that the marks are considered visually similar when there is no high stylization in the word element of the figurative marks.140 On the contrary, in cases where the word elements per se have accordance as far as the letters are concerned, the marks can still be found visually dissimilar in case of a high stylization of one of the signs.141 106 When figurative signs with word elements on each side are compared, as far as the word elements go, the same principles as for comparison between word marks on the one hand and word and device marks with word elements on the other hand apply, depending on whether the word elements in the figurative marks with a word element are stylized or not. Besides that, the signs are visually similar, if their figurative elements match and/or if they share words and/or letters that share a significant number of letters in the same position and are written in the same or similar type face or one that is not highly stylized or in the same manner.142 105

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OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 3.4.1. OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 3.4.1. 136 GC Case T-407/08 MIP Metro Group Intellectual Property GmbH & Co. KG v OHIM [2010] ECR II02781, mn. 38. 137 GC Case T-537/11 Hultafors Group AB v OHIM [not published in the ECR], mn. 34. 138 See CJ Case C-292/00 Davidoff & Cie SA and Zino Davidoff SA v Gofkind Ltd. [2003] ECR I-00389, mn. 12. 139 OHIM, Guidelines for Examination in the Office, Part C, Chapter 3, Chapter 3, 3.4.1.2. 140 GC Case T-591/11 Przedsiebiorstwo Handlowy Medox Lepiarz Jarosare Lepiarz Alicja s p.j. v OHIM [not published in the ECR], mn. 49 et seq. (Superglue (word) v Super.glue (device)); GC Case T-361/12 Premiere Polish Co. Ltd. v OHIM [not published in the ECR], mn. 31 ff, (Ecoforte (device) v Ecoforce). 141 GC Case T-487/12 Eckes–Granini Group GmbH v OHIM [not published in the ECR], mn. 32 et seq., (Granini v Panini (device)); GC Case T-394/10 Elena Grebenshikova v OHIM [not published in the ECR], mn. 25 (Volvo v Solvo (device)); GC Case T-377/10 Preparados Alimenticios, SA v OHIM [not published in the ECR], mn. 37 et seq. (Jumbo Cube (device) v Jumbo Africa). 142 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 3.4.2.; example for similarity: GC Case T-417/12 SFC Jardribric v OHIM [not published in the ECR], S.A., mn. 63 et seq. (Vaqua Flow (device) v Aquaflow (device)); example for dissimilarity: GC Case T-374/08 Aldi Einkauf GmbH & Co. OHG v OHIM [2011] ECR II-00219, mn. 49 et seq. (Krafft (device) v Top Craft (device)). 135

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Recent case law on word and device marks that are deemed visually different: GC 107 Case T-444/10 Esge AG v OHIM [not published in the ECR], mn. 28 (Bamix (word) v KMIX (word)); GC Case T-344/09 Hearst Communications, Inc. v OHIM [not published in the ECR], mn. 51 (Cosmo, Cosmotest (word) et. al. v Cosmobelleza); GC Case T-295/11 Duscholux Iberica, SA v OHIM [not published in the ECR], mn. 59 et seq. (Duscho Harmony (device) v Duschi (and whale device)); GC Case T-32/10 Ella Valley Vineyard (Adulam) Ltd. v OHIM [not published in the ECR], mn. 50 et seq. (ELLE (device) v Ella Valley Vineyards (device)). c) Word mark or figurative mark with word element in conflict with figurative 108 mark without word element. When purely figurative marks are to be compared with figurative marks with a word element, they are considered similar if they share an element that is perceived in an identical or similar way visually or if any of their figurative elements match.143 The impact of the additional word element in the overall assessment depends on the separate assessment of the distinctive and dominant elements of the marks. d) Purely figurative mark in conflict with purely figurative mark. In cases of purely 109 figurative signs without word elements in conflict with another, the signs may be visually similar, when they closely resemble each other144, in particular when they have a similar contour.145 In the absence of the possibility of an aural comparison between purely figurative signs, the assessment must of necessity rely on the visual and conceptual aspects. Given also that, even if the signs may be conceptually identical in that they depict the same motive, there can be no protection of motives per se by trade marks. Thus, the comparison of purely figurative signs must of necessity rely on a close comparison of the visual aspects, taking into consideration the style of representation, the number of objects depicted in the respective marks and additional graphical elements, or their absence.146 In the visual comparison between a black and white earlier figurative trade mark 110 and a coloured CTM application, the Common Practice147 will have to be taken into account. According to the Common Practice, an earlier black and white trade mark of a particular device is not identical to a CTM application of that same device, unless the corresponding dark colours in the CTM application border on the black. Therefore, the identical device applied for in colours is at best similar to the earlier black and white trademark. As a logical consequence from the Common Practice, the degree of colour deviation between the earlier black and white trade mark impacts on the degree of visual similarity. Accordingly, the degree of similarity between a black and white earlier trade mark and a CTM application of the same device in, for example, blue is higher than as compared with a CTM application of that same device in bright yellow. In the ultimate consequence, taking the element of distinctiveness into consideration additionally, this may in cases of extremely simple devices lead to a finding of no likelihood of confusion, even for identical goods, between – contourwise – identical signs in diverging colours. 143 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 3.4.2.3.; example of similarity: GC Case T-81/03, T-82/03 and T-101/03 Mast-Ja¨germeister AG v OHIM [2006] ECR II-05409 (device of a stag v device of a stag with ‘Venado’); example of dissimilarity: OHIM Dec. of 30/5/2002 – B 134900 (device of am screw vdevice of a screw with ‘S-Lock’). 144 OHIM Dec. of 12/12/2013 – C-7691 – Stardevices, mn. 2. 145 OHIM, Guidelines for Examination in the Office, Part C, Section 27, Chapter 3, 3.4.2.1. 146 GC Case T-424/10 Dosenbach-Ochsner Schuhe und Sport v OHIM [not published in the ECR], mn. 25 et seq. 147 Common Communication of OHIM and the trade mark offices of the European Union of 15 April 2014, issued within the European Trade Mark and Design Network.

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e) Comparison of 3D marks. For the comparison of 3D marks, the same principles as for the comparison of purely figurative marks apply, i. e. they have to be examined as to visual details of the respective shapes and similar contours. The visual details of shapes are important as there can be no monopolies on particular archetypic shapes or elements of a 3D mark. Colours and words applied in addition to the 3D trade mark are taken into consideration for the visual comparison.148 In such cases where 3D trade marks also dispose of word elements, they will be taken into consideration for an additional aural and conceptual comparison.149 The impact of such additional elements will depend on the separate assessment of distinctive and dominant elements of the respective marks. In relation to 3D trade marks, it must be considered that the average consumer is quite capable of perceiving the shape of the packaging of the goods concerned as an indication of their commercial origin, in so far as that shape presents characteristics which are sufficient to hold his attention, which is, however, not the case for basic geometrical shapes.150 112 Similarity assumed: OHIM Dec. of 9/11/2010 – R 806/2009-4 – Goldhase, mn. 18 et seq. (low similarity between golden rabbit – shapes with red necklace, and no likelihood of confusion); OHIM Dec. of 11/7/2012 – B 1828642 – Bottle in the shape of a football, p. 2 et seq. (similarity, and likelihood of confusion); OHIM Dec. of 4/6/2012 – B 1770182 – Bottle shapes, one with ‘Ole´’, p. 2 et seq. (similarity, but no likelihood of confusion); OHIM Dec. of 28/2/2012 – B 1720823 – Blue gin bottles, p. 4 (similarity, but no likelihood of confusion). 113 No similarity assumed: OHIM Dec. of 17/7/2008 – R 1166/2007-1 – Twisted shape of a beer bottle, mn. 25; OHIM Dec. of 8/4/2013 – R 1110/2013-2 – Perfume bottle, mn. 23 et seq. 114 Generalizing on the case law of OHIM regarding oppositions and invalidity cases involving 3D marks, one can say that the fact that marks are found similar to some degree is generally not sufficient, and most cases fail due to diverging word or graphical elements which are considered more distinctive in the overall assessment than the shape as such. 111

f) Sound and smell marks. As far as smell marks are concerned, there can, due to the nature of the marks, be neither aural nor visual nor conceptual comparison, but only an olfactoric one, considering the smell of the signs at issue. There is, however, no case law evident for conflicts between smell marks. 116 For acoustic marks, due to the nature of the sign at issue, only an aural comparison can be made. But there is no case law available on conflicts between sound marks either.151 115

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g) Comparison of abstract colour marks. In comparing abstract colours with each other, OHIM and General Court take into account the opinion of the CJ that consumers do not generally tend to distinguish goods as to their origin by their colour or the colour of their wrapping without graphical or other word elements that point to the origin of goods, and that colours per se do not generally dispose of the faculty to distinguish the goods of one company from another.152 The CJ stresses the 148

See OHIM Dec. of 18/4/2013 – C-5743, mn. 21. OHIM Dec. of 6/6/2012 – B 1779182 – bottle shape ‘Ole´’, p. 2 et seq., even though similarity existing between a bottle shape and quasi identical bottle shape with ‘Ole´’, no likelihood of confusion assumed; OHIM Dec. of 11/7/2012 – B 1828642 – Football shaped bottle, similarity and likelihood of confusion between football-shaped and coloured bottles. 150 OHIM Dec. of 14/2/2012 – R 2492/2010-2 – Shapes of teabags, mn. 46. 151 CJ Case C-283-01 Shield Mark BV v Joost Kist [2003] ECR I-14313, being essentially a case on the protectability and registrability of sound marks. 152 CJ Case C-104/01 Libertel Groep B.V. v Benelux-Merkenbureau, mn. 65. 149

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need to keep colours free for competition as being in the public interest.153 For that reason, abstract colours have in practice been awarded only a narrow scope of protection, which leads to an evaluation of similarity under European case law which considers only close variations as similar, taking into account particular shades of colours and also the order of colours on the respective signs. Generally speaking, in case of abstract colour marks similarity will only be assumed 118 between colours of more or less the same shade154, taking into consideration that in cases of abstract colour combinations the differences in each shade of the combination may be somewhat larger than for single colours.155 Where the colour or colour combination is not protected irrespective of contour, but in a concrete graphic configuration, either in a defined area or defined shape, these parameters have to be taken into consideration for the assessment of similarity as well. Against this background, different shades of green and yellow have been held dissimilar.156 It has to be noted, that due to the scarcity of registered abstract colour marks, and 119 due to the procedural difficulties that these marks present, in particular as far as the requirement to prove use of the trade marks goes, there is only scarce case law on this issue.

4. Conceptual comparison Two marks are deemed to be conceptually similar when they evoke the same idea or the same concept, which results from the perception as having the same or an analogous semantic content.157 The semantic content of a mark is what it means, evokes or what it represents.158 The conceptual comparison of the signs at issue is of great practical importance, as, in OHIM and European court practice, even if goods are identical and marks are aurally and visually similar, a conceptual dissimilarity can tip the scales against a likelihood of confusion.159 The theory behind this is the assumption that a clear and distinct meaning of one of the signs under comparison neutralizes the otherwise existing similarity, as such clear and distinct meaning can be grasped by the relevant consumer without further reflection.160 Where a mark consists of various elements, the concept of each of the elements has to be defined. This does not apply, however, if the various elements make up one concise meaningful expression that is relevant as opposed to the individual meanings of the various elements. The conceptual comparison is determined by the earlier marks relevant in the case. Only if the sign at issue has a semantic content according to the language and understanding of the relevant consumer, it has to be taken into account. This means that, if a word which is part of a trade mark at issue does not have any meaning in the 153

CJ Case C-104/01 Libertel Groep B.V. v Benelux-Merkenbureau, mn. 54, 56. Eisenfu¨hr/Sander, Gemeinschaftsmarkenverordnung, 4th ed., Art. 8, mn. 106. 155 Eisenfu ¨ hr/Sander, Gemeinschaftsmarkenverordnung, 4th ed., Art. 8, mn. 106, referring to German infringement jurisprudence, BGH Case I ZR 23/01 GRUR 2004, 151 – Farbmarkenverletzung I. 156 OHIM Dec. of 20/10/2010 – R 0755/2009-4 – Abstract colour combinations, mn. 18 et seq., in particular 22. 157 CJ Case C-251/95 Sabe `l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191, mn. 24. 158 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 3.6.1, p. 27. 159 CJ Case C-361/04 P Picasso v OHIM [2006] ECR I-00643, mn. 20, 27; GC Case T-336/03 Les Editions Albert Rene´ v OHIM [2005] ECR II-04667, mn. 80. 160 CJ Case C-361/04 P Picasso v OHIM [2006] ECR I-00643, mn. 20, 27; GC Case T-336/03 Les Editions Albert Rene´ v OHIM [2005] ECR II-04667, mn. 80; CJ Case C-206/04 P Mu¨lhens GmbH & Co. KG v OHIM [2006] ECR I-02717, mn. 35 et seq. 154

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relevant language but in another language, this meaning in another language has to be disregarded for the conceptual comparison.161 124 Generally, the conceptual comparison shall not be influenced by the relevant goods or services. Only in cases, where the trade marks may have several meanings, and the meaning for the consumer depends on the kind of goods, for which the marks have or seek protection, the goods influence the conceptual comparison.162 125 Whether indeed a sign has such a clear and distinct meaning for the relevant consumer, is a question of fact that has to be carefully examined and cannot be assumed in cases, where the mark alludes to several concepts or where the semantic meaning is ambiguous, as otherwise the scope of protection of marks, in particular wellknown marks, would be unduly reduced.163 a) The concept behind words. When a mark consists of a word, the meaning of this word has to be looked up in the language of the relevant territory to determine its content. As a general rule, the relevant public is presumed to understand only the official languages of the relevant territory.164 If, however, the word is highly similar to the ‘correct’ word in the relevant territory, the meaning of the ‘correct’ word is taken as the semantic content of the word. 127 As far as English expressions are concerned, English is presumed to be understood in all member states at least for the very basic words of the English language.165 A general knowledge of the English language is assumed for the general public of the Scandinavian countries, the Netherlands and Finland.166 As opposed to that, the Spanish consumer is presumed not to speak much English.167 However, as the Spanish user is familiar with the use of computers, he has sufficient knowledge of English to understand the meaning of the word ‘work’ and ‘works’.168 Most European consumers are presumed not to know the Greek alphabet.169 As German speakers are presumed to be familiar with certain French expressions, such as ‘mon cherie’ designating certain goods marketed in Germany, it is likely that they understand the ‘mon’ as ‘mein’.170 The Cypriot consumer is presumed to understand Turkish.171 The Baltic consumer (i. e. from Estonia, Latvia and Lithuania) is expected to understand Russian.172 126

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b) Conceptual meaning of parts of words. While the average consumer is held normally to perceive a mark as a whole and does not proceed to analyze its various details, it is still assumed that the consumer will break a verbal sign down into elements, if these suggest to him a concrete meaning, or if they resemble words known to him.173 Whether the consumer is assumed to break a word down into elements, and 161

OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 3.6.1, p. 27. OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 3.6.1, p. 27. 163 Hasselblatt, in: Hasselblatt (ed.), Gewerblicher Rechtsschutz, 4th ed., § 38, mn. 121. 164 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 3.6.1.1., p. 28. 165 Such as: ‘cats’ as opposed to ‘tidy’ for the French and Portuguese consumer, OHIM Dec. of 9/7/2013 – B 2007485 – Fresh & Tidy, p. 3. 166 GC Case T-435/07 New Look Ltd v OHIM [2008] ECR II-00296, mn. 23; GC Case T-60/11 Kraft Foods Global Brands LLC v OHIM [not published in the ECR], mn. 50. 167 GC Case T-555/11 Tesa SE v OHIM [not published in the ECR], mn. 45. 168 GC Case T-352/02 Creative Technology Ltd v OHIM [2005] ECR II-01745, mn. 49. 169 GC Case T-204/06 Vivartia ABEE Proionton Diatrofis Kai Ypiresion Estiasis v OHIM [2009] ECR II00072, mn. 43. 170 GC Case T-164/03 Ampafrance SA v OHIM [2005] ECR II-01401, mn. 67. 171 GC Case T-534/10 Organismos Kypriakis Galaktokomikis Viomichanias v OHIM [not published in the ECR], mn. 38. 172 GC Case T-357/10 Kraft Foods Schweiz Holding GmbH v OHIM [not published in the ECR], mn. 34. 173 GC Case T-256/07 Mundipharma AG v OHIM [2007] ECR II-00449, mn. 57; CJ Case C-23/09 ecoblue AG v OHIM [2010] ECR I-00007, mn. 17. 162

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where this is not presumed, even where different parts of the word suggest a concrete meaning, is a matter of individual assessment by the examiner depending on the specific circumstances of the signs at issue.174 In cases where words or parts of words are not spelt correctly according to the 129 relevant language, whether they will be taken into consideration for conceptual comparison depends on the degree to which the consumer will grasp the meaning of the word nonetheless, also depending on the relevant sector of the industry.175 Where names are concerned, the fact that the two marks to be compared both 130 embody a name does not lead to conceptual similarity per se. A conceptual similarity is found only, if one of the marks represents a name which is a variation of the other.176 As far as geographical names are concerned, the relevant public is assumed to be familiar with the names of capitals and bigger cities or well-known travel destinations, but not smaller or lesser known geographical places, in particular where they are not located in the relevant territory of assessment. The results may vary depending on the consumer addressed. While certain opaque places may not be known to the general public, if particular well-known products are manufactured there, they may be known and embody a concept to the specialized trade. c) The conceptual meaning of figurative signs, shapes and colours. The semantic 131 meaning of figurative signs, shapes and colours is determined by what is depicted in them and what they represent or reproduce, as in the case of colours. d) Procedural issues relevant for conceptual comparison. In the assessment of 132 conceptual similarity, it first has to be determined whether any or both signs relevant in the case related to a concept. If neither sign embodies any concept, similarity can only be assessed based on the visual and aural comparison. When only one of the signs has a semantic meaning, the signs will be held conceptually dissimilar.177 Where trade marks are aurally and visually similar, they are similar overall, unless there are important conceptual differences.178 Such differences may counteract the aural and visual similarities, provided that at least one of the signs, from the point of view of the relevant public, has a clear and specific meaning, so that the public is capable of grasping it immediately.179 Where trade marks are deemed aurally and/or visually different, a conceptual identity or similarity may in theory lead to a finding of a similarity per se, but it is hardly conceivable that conceptual similarity alone will lead the signs to be deemed similar, or, in the overall assessment at a later stage to a finding of likelihood of confusion. When two signs refer to the same concept, they will be considered conceptually 133 identical or similar, depending on whether they refer to the same or a similar concept. However, the fact that two signs refer to the same broad category of items does not lead to a conceptual similarity.180 174

Examples can be found in OHIM’s Guidelines, Part C, Section 2, Chapter 3, 3.6.1.2, p. 30. GC Case T-501/08 NEC Display Solutions Europe GmbH v OHIM [2011] ECR I-00316, where ‘C More’ was perceived to be understood by Danish and Finnish consumers in relation to computer goods as meaning ‘see more’, mn. 47. 176 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 3, 3.6.1.4., p. 33 with further case examples. 177 GC Case T-172/12 Brauerei Beck GmbH & Co. KG v ALDI Einkauf [not published in the ECR], Beck’s vBe(x) Lite, mn. 36. 178 Which is not quite logical, considering the principle marks are similar overall if they are similar in at least one aspect. 179 CJ Case C-234/06 P Il Ponte Financiaria SpA v OHIM [2007] ECR I-07333, mn. 34. 180 Example: A car and a plane are both vehicles for transportation but are not considered conceptually similar. 175

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Examples of cases where trade marks were deemed conceptually similar: GC Case T-467/11 Colgate-PalmoliveCompany v OHIM [not published in the ECR], mn. 36 (Sonic Power v 360 Sonic Energy); GC Case T-282/12 El Corte Ingles v OHIM [not published in the ECR], mn. 45 (Freestyle v Free Your Style); GC Case T-498/10 David Mayer Naman v OHIM [not published in the ECR], mn. 93 et seq. (Daniel & Mayer Made in Italy v David Mayer). Examples of cases where conceptual similarity was found but overall similarity was denied: GC Case T-174/10 ara AG v OHIM [2011] ECR II-00314, mn. 33 et seq. (A (word) v A (device)); GC Case T-243/08 Ravensburger AG v OHIM [2010] ECR II00095, mn. 42. (Memory (word) v Educa Memory Game (device)). Examples of cases where trade marks were deemed conceptually different: GC Case T-172/12 Brauerei Beck GmbH & Co. KG v OHIM [not published in the ECR], para. 36 (Beck’s v Be(x) Lite); GC Case T-378/09 Spar Handelsgesellschaft v OHIM [not published in the ECR], mn. 51 et seq. (Spar v Spa Group). Examples of cases where the trade marks were aurally and visually similar but deemed different overall due to their conceptual differences: CJ Case C-361/04 Picasso v OHIM [2006] ECR I-00643, mn. 20, 27 (Picasso v Picaro); GC Case T-278/10 Wesergold Getra¨nkeindustrie GmbH & Co. KG v OHIM [not published in the ECR], mn. 45 et seq. (Wesergold v Westerngold); GC Case T-586710 Aktieselskabet af 21 November 2001 v OHIM [2011] ECR II-00438, mn. 30 et seq. (Only v Only Givenchy); GC Case T-88/05 Quelle AG v OHIM [2007] ECR II-00008, mn. 70 (Mars v Nars); GC Case T-336/03 Les Edition Albert Rene´ v OHIM [2005] ECR II-04667, para. 80 (Obelix v Mobilix). Examples of cases where the trade marks were aurally and visually similar and were deemed similar overall despite their conceptual differences: GC Case T-338/09 Mu¨llerBore´ & Partner Patentanwa¨lte Rechtsanwa¨lte v OHIM [not published in the ECR], mn. 62 (ip_law@mbp v MBP); GC Case T-220/09 ERGO Versicherungsgruppe AG v OHIM [2011] ECR II-00237, mn. 37 et seq. (ORGO v ERGO); GC Case T-514/08 Laboratorios Byly, SA v OHIM [2010] ECR II-00055, mn. 57 et seq. (Byly v Billy’s) – all in the essence because the conceptual dissimilarity was not considered strong enough to outweigh the aural and visual similarities. Examples of cases where the trade marks were aurally and visually different and deemed different despite conceptual similarity: GC Case T-437/11 Golden Balls Ltd. v OHIM [not published in the ECR], mn. 58 et seq. (Ballon d’Or v Golden Balls); GC Case T-265/09 Enrique Serrano Aranda v OHIM [not published in the ECR], mn. 45 et seq. (El Lancero (device) v Le Lancier); GC Case T-295/11 Duscholux Iberica, SA v OHIM [not published in the ECR], mn. 59 et seq. (Duscho Harmony v Duschi (with whale device). Example of a case where the trade marks were aurally and visually different but were deemed similar overall due to their conceptual similarities: GC Case T-10/03 Jean-Pierre Koubi v OHIM [2004] ECR II-00719, mn. 59 (Flex v Contorflex, as the part which was conceptually similar, ‘flex’, was considered to be of major importance when analyzing the marks as a whole).

IV. Distinctiveness 141

According to the Eighth Recital of the preamble of the CTMR – in accordance with the Eleventh Recital of the TMD – in assessing the likelihood of confusion in particular the distinctive character of the earlier trade mark and its reputation must be taken 232

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into account. Therefore, the third element in the determination of likelihood of confusion after similarity of goods and services and similarity of signs is that of the distinctiveness of the earlier mark, being at the same level of importance within the global assessment as the other factors.181 The distinctiveness, which is to be evaluated concretely for each individual case, of the earlier mark at the same time determines the scope of protection of the mark and is thus an inalienable condition and basis for determining likelihood of confusion, which has been confirmed in the first decisions of the CJ on harmonized trade mark law.182 As a rule, the more distinctive the earlier mark, the greater the risk of confusion.183 142 Thus, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy a broader protection than marks with a less distinctive character.184 It follows that there may be a likelihood of confusion, not withstanding a lesser degree of similarity between the trade marks, where the goods or services covered by them are very similar and the earlier mark is highly distinctive.185 It has to be noted that in recent case law OHIM has shown a tendency to only formally 143 observe the distinctiveness of an earlier mark and occasionally ceases to treat it as an equal criterion within the global assessment on likelihood of confusion at the same level as the other elements. Rather, it appears that, in current OHIM practice, where conceptual dissimilarity is found, this overrules all other elements found which speak in favour of likelihood of confusion.186 This ‘two-dimensionality’ of recent trade mark practice is reprimanded, also at the level of the General Court, by other commentators.187 It is attributed to the step-by-step methodology employed by the Office, keeping the objective assessment of the similarity of the signs separate from the assessment of distinctiveness of the marks,188 but could also be resulting from an undue overstatement of other elements of likelihood of confusion to the detriment of the distinctiveness of the earlier mark. Whether the step-by-step approach is taken or whether the distinctiveness of the various elements of the marks are weighed at the same time as assessing the similarity of signs, should, at least in principle, not affect the ultimate finding of likelihood of confusion. Thus, it is generally correct to assess the impact of the distinctiveness of the earlier mark only within the global assessment as advocated by the General Court.189

Hasselblatt, in: Hasselblatt (ed.), Gewerblicher Rechtsschutz, 4th ed., § 38, mn. 128. CJ Case C-251/95 Sabe`l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191, mn. 24; CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayr Inc. [1998] ECR I-05507, mn. 18. 183 CJ Case C-251/95 Sabe `l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191, mn. 24; CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayr Inc.[1998] ECR I-05507, mn. 18; CJ Case 342/ 97 Lloyd Schuhfabrik Meyer & Co v Klijsen Handel [1999] ECR I-03819, mn. 19. 184 CJ Case 342/97 Lloyd Schuhfabrik Meyer & Co v Klijsen Handel [1999] ECR I-03819, mn. 20; CJ Case C-235/05 P L‘Oreal SA v OHIM [2006] ECR I-00057, mn. 36. 185 CJ Case 342/97 Lloyd Schuhfabrik Meyer & Co v Klijsen Handel [1999] ECR I-03819, mn. 21. 186 OHIM Dec. of 5/11/2012 – B 1898942 – A-eroplane, but overruled in favour of likelihood of confusion by OHIM Dec. of 16/12/2013 – R 62/2013-2; OHIM Dec. of 16/12/2013 – B 2068073 – Jelly Shot, where no likelihood of confusion was found despite aural and visual similarity, identity of goods and enhanced distinctiveness of the earlier right because of an alleged conceptual dissimilarity in one element of the conflicting signs (appeal pending). 187 Hasselblatt, in: Hasselblatt (ed.), Gewerblicher Rechtsschutz, 4th ed., § 38, mn. 129. 188 Hasselbatt, in: Hasselblatt (ed.), Gewerblicher Rechtsschutz, 4th ed., § 38, mn. 129. 189 GC Cases T-5/08 – T-7/08 Socie ´te´ des Produits Nestle´ S.A. v OHIM [2010] ECR II-01177, mn. 65; GC Case T-243/08 Ravensburger AG v OHIM [2010] ECR II-00095, mn. 27. 181 182

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1. Assessment of the distinctive character of a trade mark In determining the distinctive character of a mark, OHIM must make an overall assessment on the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish the goods or services from those of other undertakings.190 In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark including the fact whether it does or does not contain an element descriptive of the goods or services for which it has been registered.191 145 Therefore, the first aspect that the Office examines is whether or not the earlier mark or its components are descriptive, laudatory or otherwise non-distinctive. The purpose is to determine whether the common parts in the signs are the (most) distinctive elements or not. The evaluation is incidental to examining, as the first level of distinctiveness, the inherent distinctiveness of the earlier mark. Prerequisite for the examination is to determine the language and the consumers at issue, and whether, in that language, the relevant public recognizes the semantic content of the mark at issue, which is essentially the same assessment as carried out in the conceptual comparison of signs. 146 At a second stage, it is examined whether or not any semantic content as perceived is related to and/or commonly used in the relevant trade in relation to the goods or services found identical or similar.192 147 Where the earlier mark is a CTM, account has to be taken of the unitary character of the CTM. Therefore, the distinctiveness cannot be assessed limited to certain territories only, but has to be determined for the entire territory of the European Union. Where, for example, an earlier sign being composed of parts with Latin origin may be of weak distinctiveness in territories with Romanic languages spoken, the finding may be different for other territories in wich Germanic, Finno-Ugrian, Slavic or other languages prevail.193 The criteria applied to examining the inherent distinctiveness of a sign or component of a sign are the same as the relevant principles applied when examining marks on absolute grounds.194 Where a CTM is found to be not descriptive or otherwise non-distinctive in relation to the identical or similar goods or services in part of the territory of the European Union, it is found to have a normal degree of inherent distinctiveness. 144

2. Weak distinctive character 148

A weak distinctive character may be afforded to a sign or parts thereof for various reasons. The mark may be considered to be descriptive.195 The laudatory character of components of marks may also be the reason for disregarding elements within the comparison of signs.196 Where components are neither descriptive nor laudatory, they 190

CJ Case C-342/97, Lloyd Schuhfabrik Meyer & Co v Klijsen Handel [1999] ECR I-03819, mn. 22. CJ Case C-342/97, Lloyd Schuhfabrik Meyer & Co v Klijsen Handel [1999] ECR I-03819, mn. 23. 192 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 4, 2.2.1., p. 9 et seq. 193 GC Case T-331/08 REWE-Zentral AG v OHIM [2010] ECR II-00011, mn. 21 et seq. 194 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 4, 2.2.1, p. 8; see in this commentary § 7 CTMR. 195 GC Case T-514/08 Laboratorios Byly, S.A. v OHIM [2010] ECR II-00055, mn. 29 (Byly v Billy’s Products, the element ‘products’ not being distinctive enough to be taken into consideration); GC Case T490/08 CM Capital Markets Holding, SA v OHIM [2010] ECR II-02579, element ‘Capital Markets’ in both not considered distinctive, mn. 59 196 GC Case T-363/06 Honda Motor Europe Ltd. v OHIM [2008] ECR II-02217, mn. 77 (SEAT v MagicSeat, Magic considered to be perceived by the relevant public as a simple qualifier); GC Case T-479/ 191

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may be considered allusive with regard to the relevant goods or services. Allusive components are such that are not immediately descriptive but merely suggestive, which means they are afforded a somewhat higher degree of distinctiveness than components devoid of distinctiveness.197 As far as one letter signs, numerals and short signs are concerned, they are in principle of a low degree of inherent distinctiveness.198 They can only be considered devoid of distinctiveness, if there are specific circumstances of the case, such as the letter ‘S’, indicating ‘small’, for clothing. Common place elements, such as figurative elements, consisting of simple geometrical shapes are considered to be lacking distinctiveness as well.199 Where a mark contains a disclaimer according to Art 37 CTMR, the respective element is considered to be lacking distinctiveness.200 Where components of conflicting signs are considered to be of weak, low or no distinctiveness, they will be weighed appropriately in the global assessment of likelihood of confusion and accordingly be either weighed little or not at all. Despite the need for OHIM to assess the distinctiveness of a sign, it cannot question the validity of a national trade mark as such that is basis of the opposition.201 Also, the finding of a weak distinctive character for the earlier mark does not prevent the finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered.202 The weak distinctive character of an element of a complex mark does not necessarily imply that the element cannot constitute a dominant element within the sign in particular, if due to its position within a sign it may visually impact on the consumers and may be remembered by them. To that extent, in the global assessment ultimately to be undertaken for the finding of likelihood of confusion, the impact of a weak distinctive character of an earlier mark cannot be overstated to the detriment of the other factors. The result would be that where the earlier national mark is only of weak distinctive character, a likelihood of confusion would exist only if there is a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between in signs in question. Such result would not be consistent with the very nature of the global appreciation which the competent authorities are required to undertake.203 OHIM has recently summarized its approach for the determination of the impact of non-distinctive or weak components of a trade mark on the global assessment of 08 Nicolas Wessang v OHIM [2010] ECR II-00082, mn. 52 (Star Snacks v Star Foods, the element ‘Star” disregarded due to its laudatory character). 197 GC Case T-325/04 Citi Group v OHIM [2008] ECR II-00029, mn. 68 (conflict Link vWorld Link, holding that the element ‘Link’ is not immediately descriptive for banking services, finding for likelihood of confusion due the directly descriptive element ‘World’). 198 CJ Case C-265/09 P OHIM v Borko-Marken-Import Matthiesen GmbH & Co. KG [2010] ECR I08265 – ‘K’, affording a single letter at least a minimum degree of distinctiveness. 199 OHIM Dec. of 5/10/2011– R 1929/2010-2 – Arch device, mn. 43 (simple arch above a word). 200 Details on the effect of disclaimer see OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 4, 2.2.2.3. 201 CJ Case C-196/11 P Formula One Licensing v OHIM [not published in the ECR], mn. 38 et seq. 202 GC Case T-115/02 Avex v OHIM [2004] ECR II-02907, mn. 20; GC Case T-134/06 Xentral LLC v OHIM [2007] ECR II-05213, mn. 54; GC Case T-283/11 Fon Wireless Ltd v OHIM [not published in the ECR], mn 72. 203 CJ Case C-171/06 OHIM v T.I.M. E. Art Uluslararasi Saat Ticareti ve dis Ticaret [2007] ECR I00041, mn. 41; CJ Case C-42/12 P Vaclav Hrbek v OHIM [not published in the ECR], mn. 62.

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likelihood of confusion by Common Communication of 20 October 2014204 in the following way: – The distinctiveness of an earlier mark has to be assessed as a whole while acknowledging a certain, if minimal, degree of distinctiveness. – At the same time, the distinctiveness of all components of the marks have to be assessed, prioritizing on the coinciding components. – For assessment of distinctiveness, the same criteria as in the absolute grounds examination apply for the relative grounds examination. – If the common element is found to be weak, focus is to be laid on the impact of the non-coinciding components on the overall impression. – Coincidence in a weak element will not normally lead on its own to likelihood of confusion. But it may exist, if (i) other components are even weaker or at least equally weak or of insignificant visual impact, and if (ii) the overall impression of the signs is similar, or the overall impression is highly similar or identical. – The latter applies to marks sharing elements with no distinctiveness, except that such coincidence only does not lead to likelihood of confusion. But when marks contain also other elements which are similar, there will be likelihood of confusion in the overall impression if the marks are highly similar or identical. Examples of cases where likelihood of confusion was found despite a low distinctive character of earlier mark: GC Case T-508/10 Seba Dis Ticaret ve Nakliyat AS v OHIM [not published in the ECR], mn. 57 (Tradition (device) v Tradition (device)); GC Case T-220/11 TeamBank AG Nu¨rnberg v OHIM [not published in the ECR], mn. 45 et seq. (Fercredit v Faircredit); GC Case T-260/08 Indo Internacional Sa v OHIM [not published in the ECR], mn. 43 et seq. (Visual v Visual map). Examples of cases in which likelihood of confusion was not found due to low level distinctiveness of common element of the mark: GC Case T-60/11 Kraft Foods Global Brands LLC v OHIM [not published in the ECR], mn. 55 et seq. (Premium (device) v Swiss Premium (device)); GC Case T-596/10 Almunia Textil SA v OHIM [not published in the ECR], mn. 44 (Basket (device) v Eurobasket (word)). In a case in which the applicant finds the distinctiveness of an earlier right invoked against his CTM application to be lacking, he has the option to – if the earlier right is registered – file an invalidity action on absolute grounds under the laws and procedures of the law governing the earlier right. Where the earlier right is a CTM, he can file an invalidity request under Art. 52 CTMR. In that case, OHIM can suspend opposition proceedings under Rule 20 (7)(c) CTMIR until the invalidity action against the earlier right has been finally determined.205 Where the earlier right is a CTM application, the applicant can file observations under Art. 40 (1) CTMR. Should, following these, OHIM reopen examination on absolute grounds, the opposition will be suspended pending the final outcome of the examination.206

3. Coexistence of trade marks on the market 157

The fact that, beside the CTM application at issue in the opposition proceeding, other conflicting marks coexist with the earlier mark on the market in the same territory is 204 Common Communication on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (impact of non-distinctive/weak elements on the assessment among 25 EU and 3 non-EU offices) of 2 October 2014. 205 Bender, in: Fezer (ed.), Handbuch der Markenpraxis, 2nd ed., mn. 1012; GC Case T-186/02 BMI Bertollo Srl v OHIM [2004] ECR II-01887. 206 Following the logic of GC Case T-255/08 Eugenia Montero Padilla v OHIM [2010] ECR II-02551.

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a factor that is often brought forth in proceedings as an argument for a low degree of distinctiveness of the earlier mark, which is why this point is discussed here within the distinctiveness of the earlier mark rather than with in the comments on the global assessment below under E. VII. The OHIM assesses this argument as a further factor to be taken into account within the global appreciation of likelihood of confusion.207 At whichever point of the examination this is considered, should not have an effect on the outcome of the global assessment. The coexistence argument usually comes up in two different contexts. Either the CTM applicant argues that the two marks involved in the opposition have been coexisting, or the CTM applicant has researched similar marks other than the two marks involved in the opposition which are used by competitors and coexist for similar goods or services in the territory. In both cases the argument is aimed to diminish the scope of protection of the earlier mark in order to preserve the CTM application. In the first scenario, the coexistence of parallel marks identical to the marks at issue in the opposition or invalidity proceeding may influence the likelihood of confusion, as the possibility cannot be ruled out that the coexistence of two marks on a particular market will, with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public.208 In the second scenario, the coexistence of earlier marks in the market together with the earlier mark in the proceeding may reduce the likelihood of confusion that is found between two conflicting marks.209 Coming back to the first scenario, in order for the coexistence to be taken into consideration, the CTM applicant has to prove that the coexistence was based upon the absence of any likelihood of confusion on the part of the public and thereby provide evidence that identical or at least comparable conditions as present in the opposition have been prevailing. In particular, the coexisting marks have to be identical to those involved in the opposition proceeding210 and cover the same goods and services as those in the present conflict.211 The coexistence has to concern the countries relevant in the case.212 Besides that, only an actual coexistence in the market place can be taken into account, meaning that the CTM applicant has to prove that the trade marks were not only registered, but actually used.213 Where the opposition against the CTM application is based on an earlier CTM and the coexistence of that earlier trade mark with a trade mark identical to the trade mark applied for is relied on for there being no likelihood of confusion between the signs at issue, it is for the party relying on that coexistence to establish proof of it throughout the European Union. If the likelihood of confusion exists potentially throughout the European Union due to the Community-wide scope of the earlier mark, the absence of the likelihood of confusion as a result of the coexistence of the marks identical to the mark must, in turn, be proven throughout the European Union.214 The period of coexistence must be sufficiently long to influence the perception of the relevant public.215 Precisely how long, has not been decided by the European Courts 207

OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 7, 7.1. CJ Case C-498/07 P Aceites del Sur-Cousur SA v OHIM [2009] ECR I-07371, mn. 82. 209 GC Case T-31/03 Grupo Sada, pa, SA v OHIM [2005] ECR II-01667, mn. 86. 210 GC Case T-31/03 Grupo Sada, pa, SA v OHIM [2005] ECR II-01667, mn. 86. 211 OHIM Dec. of 30/3/2010 – R 1021/2009-1 – Eclipse, mn. 14. 212 GC Case T-40/03 Julian Murua Entrena v OHIM [2005] ECR II-02831, mn. 85. 213 OHIM Dec. of 13/4/2010 – R 1094/2009-2 – Royals, mn. 34; OHIM Dec. of 5/9/2002 – R 0001/ 2002-3 – Chitos, mn. 22. 214 GC Case T-505/10 Ho ¨ gana¨s v OHIM [not published in the ECR], mn. 49. 215 GC Case T-505/10 Ho ¨ gana¨s v OHIM [not published in the ECR], mn. 51. 208

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yet. In any event, the period of only four months is obviously too short.216 One may contemplate taking the period of forfeiture of rights under Art. 54 CTMR, namely five years, as a guidance, even though account has to be taken of the particular circumstances of the market for the goods or services in question, in particular whether the market is moving rapidly (such as for IT goods and services, or for fashion items) or slowly (for example hardware machinery). The absence of likelihood of confusion may be inferred only from the peaceful nature of coexistence of the marks at issue, which is not the case, when the conflict has been dealt with before the national courts or trade mark offices.217 163 To the extent that there are coexistence agreements involved between the parties to the opposition proceeding, no explicit rule of the CTMR nor any case law is evident. The OHIM’s policy is that, generally, a contract between the parties will not be taken into account in an opposition unless there is an agreement between the parties in OHIM proceedings about its meaning, or there is a decision of a national court about its meaning. Where the agreement is disputed, it will not be taken into account. If there are pending court proceedings, OHIM will decide whether to suspend the opposition proceedings.218 164 In general, a coexistence agreement does not preclude the opponent from filing an opposition against the CTM application, even if such action is interdicted by the coexistence agreement. The OHIM is prevented from taking this into consideration as a venire contra factum proprium, as contradictory behavior is not within the scope of the assessment of likelihood of confusion as foreseen in Art. 8 (1)(b) CTMR, and also the defense of forfeiture of rights under Art. 54 CTMR is not available.219 Rather, if an applicant as party to an opposition proceeding holds an opposition to be in breach of a coexistence agreement, it could, obviously depending on the law governing the coexistence agreement, contemplate filing an action in the competent court for breach of contract with the goal to obtain a judgment interdicting the opponent from filing the opposition or ordering him to withdraw the opposition in order to remedy the breach of contract. It could then file evidence of the filing of such law suit with OHIM and ask for suspension of the opposition proceedings pending the outcome of the civil litigation on this issue. 165 Moving on to the second scenario, i. e. the CTM applicant arguing that the earlier mark or one of its components has a low distinctive character by virtue of any trade marks consisting of, or including, the element in question, the mere presentation of the existence of several trade mark registrations for similar marks for similar goods and services is not per se conclusive. As in the first scenario, the information is taken into account by the Office only, if the applicant brings forth evidence that the trade marks have effectively been used. Also, the mere fact that the proprietor of an earlier mark does not react to the use by a third party of an identical or similar trade mark will not, by itself, within opposition proceedings lead to the conclusion that there is no likelihood of confusion.220 The evidence filed must therefore demonstrate that consumers have been exposed to wide spread use of, and become accustomed to, trade marks that include the element in question in order to prove that is has weak distinctive 216

GC Case T-185/03 Vicenzo Fusco v OHIM [2005] ECR II-00715, mn. 64. CJ Case C-498/07 P Aceites del Sur-Cousur SA v OHIM [2009] ECR I-07371, mn. 82; GC Case T-29/ 04 Castell blanch SA v OHIM [2005] ECR II-04891, mn. 74; GC Case T-346/04 Sadas SA v OHIM [2005] ECR II-04891, mn. 64. 218 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 7, 3.1. 219 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 7, 3.1. 220 GC Case T-101/06 Castell del Remei SL v OHIM [2007] II-00153, mn 78. 217

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character221, as in the first scenario throughout the territory, in which the earlier right claims protection, in case of a CTM i. e. in all part of the European Union. In a nutshell, the threshold for the coexistence of trade marks on the market to be 166 considered within the assessment of likelihood of confusion, either within the determination of the distinctiveness of the mark, or within the global appreciation of likelihood of confusion, is extremely high. This is the reason for this argument so far consistently having been rejected by the CTM decision making instances, mainly on the grounds that it was not proven that the coexistence of the marks resulted in an absence of likelihood of confusion.222

4. Enhanced distinctiveness According to the CJ, the likelihood of confusion is the higher, the stronger the distinctiveness of the earlier mark.223 Thus, it is recognized that trade marks that dispose of distinctiveness per se or which dispose of an enhanced distinctiveness in the market due to their well known character are afforded a broader protection than trade marks with a lower distinctiveness.224 Thus, after having examined the inherent distinctiveness of a trade mark, the next step for OHIM is to analyze whether the earlier mark has acquired enhanced distinctiveness. However, this point is only taken into consideration, if the opponent has expressly claimed enhanced distinctiveness. If it does so, the opponent has to prove that the enhanced distinctiveness is present at the time of filing (or priority date) of the contested CTM application, as a consequence of the use that the opponent has made of it.225 The evidence of enhanced distinctiveness of the earlier trade mark has to relate to the trade mark as registered. To the extent that the evidence material relates to variations of the trade mark, this can be taken into account if the variations of the trade mark would still be considered suitable evidence for a proper use of the trade mark by the standards of a proof of use assessment. In evaluating the material on enhanced distinctiveness, account should be taken in particular of the market share held by the mark, how intensive, geographically widespread and long-standing the use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking, or statements from chambers of commerce or industry or other trade and professional associations.226 It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the 221

OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 7, 3.1. GC Case T-19/12 Fabryka Lozysk Tocznych-Krasnik SA v OHIM [not published in the ECR], mn. 57; GC Case T-505/10 Ho¨gana¨s v OHIM [not published in the ECR], mn. 52 et seq.; GC Case T-204/ 10 Lancome parfums et beaute´ & Cie v OHIM [not published in the ECR], mn. 46 et seq.; GC Case T-460/ 11 Scandic Distilleries SA v OHIM [not published in the ECR], mn. 61; GC Case T-376/09 Glenton Espana, SA v OHIM [2011] ECR II-00141, mn. 57; GC Case T-228/09 United States Polo Association v OHIM [2011] ECR II-00102, mn. 57. 223 CJ Case C-251/95 Sabe `l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191, mn. 24; CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayr Inc. [1998] ECR I-05507, mn. 18; CJ Case 342/ 97 Lloyd Schuhfabrik Meyer & Co v Klijsen Handel [1999] ECR I-03819, mn. 19. 224 CJ Case 342/97 Lloyd Schuhfabrik Meyer & Co v Klijsen Handel [1999] ECR I-03819, mn. 20. 225 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 4, 2.3; OHIM Dec. of 9/ 11/2010 – R 1033/2009-4 – bebe, mn. 31. 226 CJ Case C-342/97 Lloyd Schuhfabrik Meyer & Co v Klijsen Handel [1999] ECR I-03819, mn. 23. 222

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relevant section of the public, when a mark has a strong distinctive character.227 It cannot be excluded that a compilation of evidence supplied by the opponent makes it possible to establish a highly distinctive character of a trade mark, whereas each of the elements, considered separately, would not be capable of proving its distinctive character.228 Therefore, a decision making body has to carry out an overall assessment of the evidence submitted in its entirety.229 The existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market requires that at least a significant part of the relevant public can be assumed to be familiar with it, without the mark necessarily having to dispose of a reputation within the meaning of Art. 8 (5) CTMR.230 The threshold for a trade mark with reputation under Art. 8 (5) CTMR in its degree of distinctiveness is higher than the threshold for enhanced distinctiveness to be taken into consideration for the assessment under Art. 8 (1)(b) CTMR. The recognition of a trade mark by the public may serve to enhance the distinctiveness of marks with little or no inherent distinctiveness in order to raise them to be recognized as being of average distinctiveness, or enhance the distinctiveness of such marks, which are already inherently distinctive. From a practical point of view, proving enhanced distinctiveness – and even more so proving reputation under Art. 8 (5) CTMR – in an opposition procedure generally becomes a battle of material, where the principle governs ‘more helps more’. As far as trade mark awareness is concerned, a suitable piece of evidence is a consumer survey taken, ideally dated from a point of time close to the filing of the contested application.231 Regarding percentages, any particular percentage of consumers that has to be reached for enhanced distinctiveness cannot be defined in the abstract.232 Thus, there is no generally applicable threshold of when a mark is considered to be recognized by the public. However, the higher the percentage shown in a survey, the easier it will be to accept enhanced distinctiveness. The market share held by the goods or services offered or sold under the mark should ideally be established by data provided by independent market research institutes (such as AC Nielsen). The same goes for sales volumes and turnover generated for products distributed under the trade mark, which alternatively can be provided by statements such as affidavits by employees of the trade mark owner. In order to put the market share attained by the mark into perspective, it is helpful to provide OHIM with figures on the general size of the market. The larger the relevant market, the more conclusive also relatively small market shares can be.233 Figures on advertising expenditures can either be provided by market survey companies or by affidavits of employees from the trade mark owner. Further evidence for advertising expenditures and the exposure of the mark to the public to advertising under the trade mark can be delivered by way of samples of TV or radio commercials and/or 227

CJ Case C-342/97 Lloyd Schuhfabrik Meyer & Co v Klijsen Handel [1999] ECR I-03819, mn. 24. CJ Case C-108/07 P Ferrero Deutschland v OHIM and Cornu Fontaine [2008] ECR I-00061, mn. 36. 229 CJ Case C-108/07 P Ferrero Deutschland v OHIM and Cornu Fontaine [2008] ECR I-00061, mn. 37. 230 GC Case T-332/04 Sebiran v OHIM [2008] ECR II-00033, mn. 48. 231 For details on surveys as evidence in proceedings before the OHIM see Niedermann, IIC 2006, 260. 232 Which is contrary to the approach, for example, of the German Patents and Trade Marks Office which as a standard threshold requires a degree of 50 % for proving secondary meaning of a trade mark, CJ Cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubeho¨r Walter Huber und Franz Attenberger [1999] ECR I-02779, mn. 52; CJ Case 342/97 Lloyd Schuhfabrik Meyer & Co v Klijsen Handel [1999] ECR I-03819, mn. 25; GC Case T-500/10 Dorma GmbH & Co. KG v OHIM [2011] ECR II-00411, mn. 52. 233 OHIM Dec. of 21/4/2010, R 1054/2007-4 – Mandarino, mn. 59 et seq. 228

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advertisements in newspapers or magazines. All such evidence should be accompanied by figures on the time of emission of the advertisement and numbers regarding the coverage reached (in the case of TV or radio commercials) or the extent of the edition over certain periods of time in case of newspapers and magazines. Press articles serve to prove the media coverage of the products marketed under the trade mark.234 In order to stress the importance of the trade mark, it is also helpful to provide, along with the evidence, an outline on the date of creation of the trade mark, the development of its advertisement, the brand history and dates of launch of the trade mark in different territories. Even though enhanced distinctiveness has to be demonstrated to be present at the time of filing of the contested CTM application, such brand history and evidence on the longevity is conclusive in that this makes the familiarization of the consumer with the mark more likely, and any loss of reputation of the earlier mark prior to the filing or priority date of the CTM application or thereafter would have to be proven by the applicant.235 Furthermore, it should be demonstrated, how the mark is used for products by displaying the various packages of products or products as such, on or by which the trade mark has been used over time (for example by excerpts from the Mintel database), or in the case of services, by displaying various leaflets, catalogues or product brochures over the years, on which the trade mark was communicated to the consumer. What should not be neglected is evidence of the presence of the earlier mark in social media, such as Facebook, which becomes increasingly important for the promotion of all kinds of products and services. When presenting the evidence, it should be borne in mind that all evidence should display dates of publication and information on the territory, to which they relate, as otherwise it will not be possible for the decision making body to determine the relevance of the material.236 All judgments obtained earlier by the trade mark holder and various jurisdiction may have indicative value for the enhanced distinctiveness of the trade mark.237 But OHIM is not bound to any such decisions. As regards documents which come from the trade mark owner himself, in order to assess the evidential value of such documents, regard should be had first and foremost to the credibility of the account it contains and the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether on its face, the document appears sound and reliable.238 Where data supplied appear not to be objective, they are not taken into account by the decision making body.239 Examples of cases, in which enhanced distinctiveness was not accepted: GC Case T500/10 Dorma GmbH & Co. KG v OHIM [2011] ECR II-00033, mn. 44 et seq. (applicant had not supplied evidence of market share, geographical spread and long standing use of the marks nor amounts invested in promoting the marks; press articles mentioned applicant’s expertise but made no reference to the goods or services covered by the earlier marks; documents came from the applicant’s own website but without a 234 CJ Case C-100/11 P, Helena Rubinstein SNC and L’Ore ´al SA v OHIM [not published in the ECR], mn. 53. 235 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 5, 3.1.2.5, p. 16. 236 OHIM Dec. of 15/3/2010 – R 0055/2009-2 – Bravia, mn. 27, 28. 237 The closer they are to the relevant date, the better; a judgment of 1972 was not able to prove enhanced distinctiveness for the time of filing of a CTM on 20 October 2006, OHIM Dec. of 9/11/2010 – R 1033/2009-4 – bebe. 238 GC Case T-500/10 Dorma GmbH & Co. KG v OHIM [2011] ECR II-00411, mn. 52. 239 GC Case T-500/10 Dorma GmbH & Co. KG v OHIM [2011] ECR II-00411, mn. 50; As the type of evidence to be provided for enhanced distinctiveness is essentially the same as for reputation, further details can be found below in the annotations by Skrzydlo-Tefelska on Art. 8 (5) CTMR, at III.

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specific information as to the goods or services covered by the earlier marks; data provided by the opponent itself were not considered objective); GC Case T-553/10 Biodes, SL v OHIM [not published in the ECR], mn. 62 et seq. (internet excerpt did not contain a reference to the earlier mark or its use; individual catalogue provided was not dated; consumer survey was taken three years before relevant point of time; only ten percent of one thousand persons asked knew the trade mark at issue). 180 Examples of cases in which enhanced distinctiveness was accepted: GC Case T-274/ 09 Deutsche Bahn AG v OHIM [2011] ECR II-00268, mn. 96 et seq. (documents demonstrating that mark has been widely marketed for services for fourteen years; opponent’s virtual monopoly for services under the mark; well known character is a matter of common knowledge; mark appearing in a number of German dictionaries); GC Case T-580/09 PJ Hungary Szolgaltato kft v OHIM [2011] ECR II-024323, mn. 89 et seq. (table indicating publicity investments in territory and indicating sales; attestations of the Spanish chambers of commerce and decisions of Spanish courts); CJ Case C-108/ 07 P Ferrero Deutschland GmbH v OHIM [2008] ECR I-00061, mn. 52 et seq. (trade mark known to eighty percent of German consumers; market study according to which products commercialized under the mark occupy thirty of the fifty first places in a list of a hundred confectionery products most sold in the German market; significant sales values of products sold under sub-brand and earlier mark as umbrella brand, product wrapping with the brand); GC Case T-332/04 Sebiran v OHIM [2008] ECR II-00033, mn. 50 et seq. (certificate from the regulatory counsel of the qualified denomination of origin ‘Rioja’ attesting longevity of the mark and significant notoriety in Spain; several decisions of Spanish courts; development of sales over several years).

5. Relevant point of time 181

The inherent distinctiveness of the signs (or their components) should be assessed at the time of the decision. The enhanced distinctiveness of the earlier mark should be proven for the time of filing of the contested CTM application, or the relevant priority date, and still has to be present at the time of the decision.240

6. Relevant goods The assessment of the inherent distinctiveness of the signs or their components is carried out in respect of the goods or services which have been found to be identical or similar to the contested goods or services. 183 Where an assessment of the enhanced distinctiveness of the earlier mark is carried out, this has to relate only to the goods or services protected by the sign and for which the enhanced distinctiveness is claimed against the perception of the relevant public for these goods and services.241 182

V. Dominant character 184

Besides similarity of goods and services, similarity of the signs, distinctiveness of the earlier mark, distinctive elements of the conflicting signs, the overall assessment on likelihood of confusion weighs in also the dominant elements of the conflicting signs. This takes account of the fact that the overall impression created in the mind of the 240 241

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OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 4, 2.1.4. OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 4, 2.1.5.

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relevant public by a complex trade mark may, in certain circumstances, be dominated by one or more of its components.242 Therefore, the first step to determining the dominant elements is to identify the various components of which a sign consists.243 By definition, where a trade mark consists only of one identifiable component including word marks consisting of only one word, there is no room for an assessment which component is dominant. When assessing the dominant character of one or several given elements of a complex trade mark, account should be taken, in particular, of the inherent characteristics of each of the elements by comparing them to those of the other elements.244 An assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In that context, account should be taken in particular of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services, for which the mark has been registered.245 Also, the relative position of the various components within the arrangement of a compound mark should be taken in consideration.246

1. Pure word marks The OHIM restricts the determination of dominant elements exclusively to mean 185 ‘visually outstanding’. This is not entirely convincing in that a word mark comprised of two components can dispose of an aurally outstanding element to the extent that one part of the word’s sound may recede in the aural perception, while another element may stand out also from an aural perspective, e. g. in cases of very unusual words or verbal elements in the perception of the addressed consumer or very long but descriptive words. Further, according to OHIM’s practice, word marks are considered to have no dominant element because by definition they are written in standard type face. This is not entirely conclusive either, as also within word marks certain components may stand out from a visual point of view, e. g. due to their unusual writing against grammatically regular words. However, this examination practice should not impact on decisions, as the unusual character of a word marks from an aural or visual perspective is likely to be considered within the assessment of the distinctiveness of word marks and their components.

2. Trade marks consisting of verbal and figurative elements Where a sign consists both of verbal and figurative elements, the former are, in 186 principle, considered more distinctive than the latter because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark.247 Yet there are exceptions to this rule. The presence of figurative elements set out in a specific and original way can have the effect that the overall impression conveyed by each mark is different.248 242

CJ Case C-193/06 P Socie´te´ des Produits Nestle´ S.A. v OHIM [2007] ECR I-00114, mn. 42. Methodology followed by OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 5, 2. 244 GC Case T-242/06 Miguel Cabrera Sanchez v OHIM [2007] ECR I-00175, mn. 47; GC Case T-6/01 Matratzen Concord GmbH v OHIM [2002] ECR II-04335, mn. 35. 245 GC Case T-242/06 Miguel Cabrera Sanchez v OHIM [2007] ECR I-00175, mn. 51. 246 GC Case T-242/06 Miguel Cabrera Sanchez v OHIM [2007] ECR I-00175, mn. 47. 247 GC Case T-205/06 NewSoft Technology v OHIM [2008] ECR II-00078, mn. 54. 248 GC Case T-112/06 Inter-Ikea Systems BV v OHIM [2008] ECR II-00006, mn. 56: trade marks at issue were ‘Ikea’ (device) and ‘Idea’ (device consisting of fifteen squares forming a rectangle with rounded 243

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Particularly large figurative elements will be considered dominat in relation to word elements in smaller typeface.

3. Descriptive elements In general, the public will not consider a descriptive element forming part of complex mark to be the distinctive and dominant element in the overall impression conveyed by that mark, it being sufficient if the descriptive character of that element is perceived in part of the Community.249 The same applies to elements which have a general meaning or laudatory character attributable to a large range of different goods or services.250 188 Still, it is possible that due to its position within the sign or its size an element of weak distinctive character can constitute a visually dominant element.251 The assessment of similarity can be performed purely on the basis of the dominant element only, if the other elements of the mark are clearly negligible. Therefore, it is contrary to the law if – where a complex trade mark is composed of both verbal and figurative elements, and the figurative element is as important or even slightly more important visually than the verbal element – the appreciation of the visual similarity is established solely on the basis of the similarity of the verbal elements.252 187

4. The notion of independent distinctive role As a rule, in those cases, where the respective goods or services are at least similar and the earlier mark is included entirely in the contested application, likelihood of confusion is generally assumed in the overall assessment253, unless the part taken over within the contested application is not dominant or melts, with the other component, into a new compound term.254 190 However, the CJ has determined that there shall be an exception made in cases, in which the part taken over within the contested application is not dominant, but, within the new sign created, retains an independent distinctive role and is thus not negligible (the so called Thomson Life decision255), as it is quite possible that in a particular case an earlier mark used by a third party within a composite sign including the name of the company of the third party still has an independent distinctive role in that composite sign, without it necessarily constituting the dominant element.256 In such case, the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be estab189

corners, one of the corners tilted outside), the verbal element of the contested sign was not considered dominant. 249 GC Case T-434/05 Gateway, Inc. v OHIM [2007] ECR II-00163, mn. 47. 250 GC Case T-356/02 Vitakraft-Werke Wu ¨ hrmann und Sohn GmbH v OHIM [2004] ECR II-03445, mn. 52. 251 GC Case T-210/05 Nalocebar-Consultores e Servicos v OHIM [2008] ECR II-00245, mn. 39 et seq.; GC Case T-153/03 Inex SA v OHIM [2006] ECR II-01677, mn. 32. 252 CJ Case 193/06 P Socie ´te´ des Produits Nestle´ S.A. v OHIM [2007] ECR I-00114, mn. 46. 253 GC Case T-129/01 Jose ´ Alejandro, SL v OHIM [2003] ECR II-02251; GC Case T-286/02 Oriental Kitchen SARL v OHIM [2003] ECR II-04953; GC Case T-022/04 Reemark Gesellschaft fu¨r Markenkooperation mbH v OHIM [2005] ECR II-01559. 254 GC Case T-194/03 Il Ponte Finanziaria SpA v OHIM [2006] ECR II-00445, mn. 110, 112. 255 CJ Case C-120/04 Medion AG v Thomson Multimedia Sales Germany and Austria GmbH [2005] ECR I-08551, mn. 30. 256 CJ Case C-120/04 Medion AG v Thomson Multimedia Sales Germany & Austria GmbH [2005] ECR I-08551, mn. 30.

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lished.257 In cases, in which it is difficult to decide, which of the components is dominant, this may be an indication that there is no dominant element. As a consequence of the Thomson Life decision of the CJ, the finding that there is a 191 likelihood of confusion is not subject to the condition that the overall impression conveyed by the composite sign is dominated by the part of it represented by the earlier mark.258 On the other hand, a coincidence in a weak or visually negligible element will usually not result in likelihood of confusion. For the analysis, whether, in a conflict between a one word sign and a composite sign, the common elements play an independent distinctive role, the level of distinctiveness of this element is of significance. Cases, where an independent distinctive role was assumed: GC Case C-120/04 192 Medion AG v Thomson Multimedia Sales Germany & Austria GmbH [2005] ECR I08551, mn. 32 (common element ‘life’); prior to Thomson Life, but same considerations, GC Case T-169/02 Cerveceria Modelo, SA de CV v OHIM [2005] ECR II-00505, mn. 36 et seq. (Modello v Negra Modello); GC Case T-29/04 Castellblanch SA v OHIM [2005] ECR II-05309, mn. 31, 67 (Cristal v Cristal Castellblanch) – only for part of the relevant public. Cases, in which an independent distinctive role was denied: GC Case T-434/05 193 Gateway, Inc. v OHIM [2007] ECR II-00163 (Gateway v Activy Media Gateway); GC Case T-366/07 The Procter & Gamble Company v OHIM [2010] ECR II-00194 (Prestige v P&G Prestige Beaute).

VI. Relevant public and degree of attention Likelihood of confusion between two conflicting trade marks is not assessed on the 194 basis of an abstract comparison of the conflicting signs and the relevant goods or services covered by them. Rather, it must be made based on the perception which the relevant public has of the signs and the goods and services at issue.259 The perception of the relevant public does not impact only on the comparison of the signs as such, but also on the comparison of the goods and services and of the distinctive and dominant elements of the sign as well as the distinctiveness of the earlier mark.260 Therefore, properly identifying the public concerned by the conflicting trade marks is crucial for the assessment of likelihood of confusion.261 As far as the relevant signs are concerned, the relevant public is, in cases of national 195 trade marks, composed of the public of this particular country, or, in cases of Community trade marks, the public in the Community as a whole.262 It is also the language of the relevant consumer which determines which elements of the conflicting signs will be considered as distinctive or not. Still, the average consumer of the relevant territory normally perceives a mark as a whole and does not proceed to determine its various details.263 Also, the average consumer only rarely has the chance to make a 257 CJ Case C-120/04 Medion AG v Thomson Multimedia Sales Germany & Austria GmbH [2005] ECR I-08551, mn. 31. 258 CJ Case C-120/04 Medion AG v Thomson Multimedia Sales Germany & Austria GmbH [2005] ECR I-08551, mn. 32; CJ Case C-57/08 Gateway, Inc. v OHIM [2008] ECR I-00188, mn. 52. 259 GC Case T-408/09 ancotel GmbH v OHIM [2011] ECR II-00151, mn. 29. 260 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 6, 1.1. 261 GC Case T-408/09 ancotel GmbH v OHIM [2011] ECR II-00151, mn. 31. 262 See above at E. I. 2. 263 CJ Case C-334/05 OHIM v Shaker di L. Laudato & C SaS [2007] ECR I-04529, mn. 41; CJ Case C193/06 Socie´te´ des Produits Nestle´ S.A. v OHIM [2007] ECR I-00114, mn. 34 et seq.

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direct comparison between the different marks but must place his trust on the imperfect picture of them that he has kept in his mind.264 As for the goods and services covered by the earlier mark and by the mark applied for, the relevant public is composed of users in that territory likely to use both the goods and services covered by the earlier mark and the contested mark.265 When the goods or services covered by one of the conflicting trade marks are included in the larger list of goods or services covered by the other trade mark, the relevant public is defined in relation to the more specific wording of the list of goods or services.266 196 As far as enhanced distinctiveness is concerned, it is – in the case of a national trade mark as earlier mark – the consumer of that territory, according to whose perception the mark has to be recognized. Where the earlier mark is a CTM, it is, due to the unitary character of the CTM and due to fact, that likelihood of confusion is sufficient to persist in only a part of the European Community, sufficient if the distinctiveness of the earlier mark is enhanced only for the relevant consumers in the relevant part of the European Community territory267, the territory of one member state, even if a smaller one, being sufficient.268 197 Looking at the level of attention of the relevant consumers, the principle rules that where the goods or services are intended for all consumers, the relevant public must be deemed to be composed of the average consumer, reasonably well-informed and reasonably observant and circumspect269, considering, however, that the average consumer’s level of attention is likely to vary according to the category of goods or services in question.270 So where it is established that the relevant goods are purchased by the average consumer only after a particularly careful examination, it is important to take into account this fact, which may reduce the likelihood of confusion between marks relating to such goods.271 198 Examples of goods or services, for which the average consumer displays a low level of attention: Inexpensive goods purchased on a daily basis, such as basic food stuffs.272 As far as pharmaceuticals are concerned, the level of attentiveness of the average consumer is to be determined on a case by case basis, in light of the particular circumstances of the case and, in particular, the therapeutic indications of the goods concerned273, with a higher level of attention for more serious disorders and products available on prescription only and a minor level of attention, but still reasonably observant, for pharmaceuticals

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CJ Case C-342/97 Lloyd Schuhfabrik Meyer & Co v Klijsen Handel BV [1999] ECR I-03819, mn. 26. GC Case T-408/09 ancotel GmbH v OHIM [2011] ECR II-00151, mn. 38. 266 GC Case T-408/09 ancotel GmbH v OHIM [2011] ECR II-00151, mn. 39. 267 Decided for reputation under Art. 8 (5) CTMR by CJ Case C-301/07 Pago International GmbH v Tirol Milch registrierte Genossenschaft mbH [2009] ECR I-09429, mn. 29, 30. 268 CJ Case C-301/07 Pago International GmbH v Tirol Milch registrierte Genossenschaft mbH [2009] ECR I-09429, mn. 29, 30; but doubtful, whether the jurisprudence will persist, considering the decision of the CJ Case C-149/11 Leno Merken BV v Hagelkrus Beheer BV [not published in the ECR]. 269 CJ Case C-342/97 Lloyd Schuhfabrik Meyer & Co v Klijsen Handel BV [1999] ECR I-03819, mn. 26; CJ Case C-412/05 P Alcon Inc. v OHIM [2007] ECR I-03569, mn. 62. 270 CJ Case C-342/97 Lloyd Schuhfabrik Meyer & Co v Klijsen Handel BV [1999] ECR I-03819, mn. 26; CJ Case C-361/04 P Claude Ruiz Picasso and others v OHIM [2006] ECR I-00643, mn. 38 – higher level of attention for cars. 271 CJ Case C-361/04 P Claude Ruiz Picasso and others v OHIM [2006] ECR I-00643, mn. 40. 272 OHIM Dec. of 2/7/2010 – R 664/2009-4 – GAZI, mn. 33 for milk and milk products; OHIM Dec. of 27/1/2011 – R 1032/2010-1 – LONG, mn. 15. 273 GC Case T-487/08 Kureha Corp. v OHIM [2010] ECR II-00111, mn. 69; GC Cases T-439/07, T-26/ 08 and T-27/08 GlaxoSmithKline SpA and others v OHIM [2009] ECR II-00175, mn. 55. 265

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sold without prescription.274 The fact whether a pharmaceutical is available only on prescription may serve as an indication for a higher degree of attention.275 Examples of goods, for which the consumer displays a high level of attention: 199 Cars,276 Jewelry composed of precious stones,277 financial services,278 real estate services,279 tools, equipment and instruments with high safety relevance,280 baby food,281 or products inspiring brand loyalty, such as tobacco products.282 Certain goods or services are intended for professionals only. Where this is the case, 200 the relevant public must be deemed to be composed solely of professionals.283 The specialist consumer is considered to display a higher level of attention than the average consumer when selecting the goods or services in question.284 Where goods or services are intended both for professionals and end consumers, the 201 relevant public must be deemed to be composed of both categories. This is the case for pharmaceutical products, where the public is composed of healthcare professionals and patients alike285 or for goods in the construction and repair sector, which are directed to do-it-yourselfers and qualified skilled workers alike.286

VII. Global assessment and appreciation Having examined the various elements that flow into the global appreciation of 202 likelihood of confusion as stipulated by the CJ, namely the similarity of goods or services, the similarity of signs, the distinctiveness and dominance of the trade marks and their elements involved and the relevant public and degree of attention, the global appreciation as such undertaken by the decision making bodies shall now be examined, together with the factors that may be relevant to the circumstances of the case and that have not been subject to separate consideration earlier. The essential principle ruling the global appreciation is that evaluating likelihood of confusion implies the interdependence between the relevant factors, and, in particular, the similarity between the marks and between the goods or services, bearing in mind, in particular, their distinctive and dominant components and taking into account all the factors relevant to the circumstances of the case depending on numerous elements and in particular the degree of recognition of the mark on the market287 and that a low degree reached in one element 274

OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 6, 3.1.3. GC Case T-256/04 Mundipharma AG v OHIM [2007] ECR II-00449, mn. 46: higher level of attention for products for respiratory illnesses; OHIM Dec. of 14 September 2010, R 1581/2009-2 – Tezalvo: for an above average level of attention for cerebral disorders. 276 CJ Case C-361/04 P Claude Ruiz Picasso and others v OHIM [2006] ECR I-00643, mn. 39. 277 OHIM Dec. of 9/12/2010 – R 900/2010-1 – Leo Marco, mn. 22. 278 OHIM Dec. of 3/2/2011 – R 719/2010-1 – F@ir Credit, mn. 15; GC Case T-563/08 CM Capital Markets Holdings SA v OHIM [2010] ECR II-02605, mn. 33, 61. 279 OHIM Dec. of 17/2/2011 – R 817/2010-2 – First The Real Estate, mn. 21. 280 GC Case T-486/07 Ford Motor Company v OHIM [2011] ECR II-00058, mn. 41. 281 GC Case T-221/06 Hipp & Co. KG v OHIM [2009] ECR II-00149. 282 OHIM Dec. of 26/2/2010 – R 1562/2008-2 – Victory Slim; OHIM Dec. of 25 April 2006 – R 61/ 2005-2 – Gran Ducato, both for cigarettes. 283 GC Case T-389/03 Dainichiseika Colour & Chemicals Mfg. Co. Ltd v OHIM [2008] ECR II-00058, mn. 56 et seq. 284 GC Case T-106/06 Demp BV v OHIM [2008] ECR II-00009, mn. 30. 285 CJ Case C-712/05 P Alcon Inc. v OHIM [2007] ECR I-03569, mn. 56 et seq. 286 GC Case T-364/05 Saint-Gobain Pam SA v OHIM [2007] ECR II-00757, mn. 91. 287 CJ Case C-251/95 Sabe `l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191, mn. 22; CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayr Inc. [1998] ECR I-05507, mn. 17; CJ Case C171/06 P T.I.M. E. ART v OHIM [2007] ECR I-00041, mn. 31. 275

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may be offset by a high degree reached in another element. The OHIM normally examines the most salient and habitually relevant factors under separate headings before the section on global assessment. However, the assessment can include and weigh in many other factors that are relevant to deciding on likelihood of confusion.288 It shall therefore be examined in the following how the relevant factors are weighed considering the particularities of the case.

1. Particular trade mark related factors for the global assessment of similarity 203

Where similarity between the conflicting marks has been found already in an earlier stage of the examination of the opposition, still certain trade mark related factors may have an additional impact on the global assessment of likelihood of confusion between the signs. These factors result from the nature and specificities of the trade marks at issue.

a) Long signs/short signs. The effect that differences between the signs at issue have on the global assessment may depend on the length of the signs. As a rule of thumb, the shorter signs are, the greater will be the impact of differences between the signs. Even though single letters or single numbers prima facie have at least a minimum degree of distinctiveness,289 they – absent other factors – generally possess a low degree of inherent distinctiveness. Thus, small differences may lead to denying a likelihood of confusion in the overall assessment.290 205 Even when the earlier sign is an individual letter or number protected as a word mark, i. e. per se and not in its written form, there may still be no likelihood of confusion with a CTM application, in which that same individual letter or number is represented in a particular graphic design, if the visual differences are considered to counterbalance the otherwise existing similarity of the sign.291 206 Where signs are comprised of more than one letter or number but still show not more than four letters, the differences between the signs may be somewhat greater than for one letter or number signs.292 204

b) Names and surnames. There are certain particularities to consider when the trade marks in conflict include names. 208 If a trade mark in conflict includes a business name in combination with other components, this business name may be considered to dispose of an independent distinctive role.293 209 The perception of a first and family name that trade marks may be made of may vary from country to country and depends on the kind of goods or services that are concerned. In determining whether, in a particular country, the relevant public generally attributes greater distinctiveness to the surname than to the forename, the caselaw of that country, although not binding on the Community courts, may provide a 207

288

OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 8, 1. CJ Case C-265/09 P OHIM v Borko-Marken-Import Matthiesen GmbH & Co. KG [2010] ECR I08265, mn. 45. 290 OHIM Dec. of 25/4/2005 – R 459/2004-4 – P, mn. 12 et seq. (for single letter marks involving a ‘P’); OHIM Dec. of 11/9/2003 – R 70/2002-2 – A1, mn. 63 et seq. (for trade marks containing a ‘1’). 291 GC Case T-174/10 ara AG v OHIM [2011] ECR II-00314, mn. 38 (for marks including an ‘A’); OHIM Dec. of 12/6/2007 – R 1418/2006-2 – F, mn. 26 (for trade marks containing an ‘F’). 292 OHIM Dec. of 15/1/2002 – R 512/2000-4 – J&B; GC Case T-388/00 ILS Institut fu ¨ r Lernsysteme GmbH v OHIM [2002] ECR II-04301 (ILS v ELS); Likelihood of confusion in both cited cases assumed. In contrast, no likelihood of confusion: OHIM Dec. of 5/9/2002 – R 437/2001-3 – MGM (device with Mosa Gruppo Media); OHIM Dec. of 7/2/2001 – R 393/1999-2 – TBS. 293 See above point E. V. 4. 289

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useful guideline.294 In the case of Italy, it was held that Italian case-law generally considers that the surname constitutes the heart of a sign made up of a forename and surname295 and even in a case where a surname is present in 179 localities and is well used beyond, it is still held intrinsically distinctive.296 The same may be true for most countries in the European Union, considering that in general the same first names may belong to a greater number of people than the same surname. However, it is important to take account of the factors specific to the case. In a case where the surname concerned is unusual or, on the contrary, very common, this is likely to have an effect on the distinctive character of that name in the overall assessment.297 Account must also be taken of whether the person who requests that his first name and surname, taken together, be registered as a trade mark is well-known, since that factor – even if first name and surname as such may be common place – influences the perception of the mark by the relevant public.298 Further, it must be held that, in a composite mark, a surname does not retain an independent distinctive role in every case solely because it will be perceived as a surname. A finding with respect to such a role may be based only on an examination of all the relevant factors of each case.299 In cases of a conflict between a first name only and an identical first name plus a surname of average distinctiveness, absent other factors to be considered, there will generally be no likelihood of confusion assumed, as consumers will assume that there are many people with that same first name.300 The contrary will apply in cases, where the first name is perceived as more distinctive than the surname.301 In cases, in which the first name only has acquired an enhanced degree of distinctiveness, the addition of a surname of a high distinctiveness as well will not lead away from finding likelihood of confusion.302 The usages in the particular industry come into play as well for the assessment of the relevance of a first name combined with a surname. In a sector such as that of clothing and fashion, it is considered to be common to use marks consisting of first and surname. When very common names appear more frequently than rare names, the consumers will accordingly not believe that there is an economic link between all the proprietors of marks containing the same very common surname, so that the first name may serve as sufficient differentiation.303 Where there is an identity in a surname, the surname being the earlier sign and the contested sign differentiated from it by an additional first name, as a rule of thumb there will be likelihood of confusion.304

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c) Series marks. In an opposition, a CTM or CTM application is generally compared 214 with only one earlier sign by comparing the two marks as they are registered or applied. The same does not apply, where the opposition is based on the existence of several 294

GC Case T-185/03 Vincenzo Fusco v OHIM [2005] ECR II-00715, mn. 52. GC Case T-185/03 Vincenzo Fusco v OHIM [2005] ECR II-00715, mn. 53. 296 GC Case T-498/10 David Mayer Namem v OHIM [not published in the ECR], mn. 78 et seq. (for the surname ‘Mayer’; GC Cases T-336/11 and 337/11 Societa` Italiana Calzature SpA v OHIM [not published in the ECR], mn. 47 (surname ‘Zanotti’). 297 CJ Case C-51/09 P Barbara Becker v OHIM [2010] ECR I-05805, mn. 36, holding that the surname ‘Becker’ is a common surname. 298 CJ Case C-51/09 P Barbara Becker v OHIM [2010] ECR I-05805, mn. 37. 299 CJ Case C-51/09 P Barbara Becker v OHIM [2010] ECR I-05805, mn. 38. 300 OHIM Dec. of 25/1/2002 – R 95/2000-2 – Laura Mercier, mn. 16; GC Cases T-336/11 and 337/11 Societa` Italiana Calzature SpA v OHIM [not published in the ECR], mn. 47 301 OHIM Dec. of 17/3/2009 – R 1892/2007-2 – Amanda Smith, mn. 31 et seq. 302 OHIM Dec. of 14/9/2004 – R 643/2003-1 – Kenzo, mn. 36. 303 GC Case T-169/03 Sergio Rossi SpA v OHIM [2005] ECR II-00685, mn. 83: no likelihood of confusion between Sissi Rossi and Miss Rossi for handbags. 304 OHIM Dec. of 1/9/2011 – R 1918/2010-1 – Vera Bradley, mn. 36 et seq. 295

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trade marks possessing common characteristics which make it possible for them to be regarded as part of a ‘family’ or ‘series’ of trade marks.305 215 There can be said to be a ‘series’ or a ‘family’ of marks, when either those earlier marks reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterized by the repetition of the same prefix or suffix taken from an original mark.306 In such circumstances, a likelihood of confusion according to the global assessment may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of the series where the trade mark applied for displays such similarities to those marks as might lead the consumer to believe that it forms part of that same series and therefore that the goods covered by it have the same commercial origin as those covered by the earlier marks, or a related origin. Such a likelihood of association between the trade mark applied for and the earlier marks in a series, which could give rise to confusion as to the commercial origin of the goods identified by the signs at issue, may exist even where the comparison between the trade mark applied for and the earlier marks, each taken individually, does not prove the existence of a likelihood of direct confusion.307 216 When there is such family or series of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services by the trade mark applied for and considers erroneously that that trade mark is part of that family or series of trade marks.308 But such likelihood of confusion attaching to the existence of a family of earlier marks can be pleaded only if, firstly, the earlier marks forming part of the family or series must be present on the market, and secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series.309 217 As to the first requirement, if the opponent only invokes the registration of the earlier marks of which he is the proprietor, the criterion of a ‘series’ cannot be taken into account failing their proof of use.310 As for the second element, this is not present where the element common to the earlier serial marks is used in the trade mark applied for, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content311, or where the trade mark applied for does not fit into the pattern of the series of earlier marks for other reasons.312 305

CJ Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-07333, mn. 62. CJ Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-07333, mn. 123; GC Case T-287/06 Miguel Torres SA v OHIM [2008] ECR II-03817, mn. 80. 307 CJ Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-07333, mn. 124; GC Case T-287/06 Miguel Torres SA v OHIM [2008] ECR II-03817, mn. 80, in that case the common element in all earlier marks being either the word ‘Torres’ (meaning ‘Towers’ in Spanish) and/or the representation in various forms of number of towers). 308 CJ Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-07333, mn. 62; GC Case T-287/06 Miguel Torres SA v OHIM [2008] ECR II-03817, mn 80. 309 GC Case T-287/06 Miguel Torres SA v OHIM [2008] ECR II-03817, mn. 81; CJ Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-07333, mn. 64; CJ Case C-16/06 P Les E´ditions Albert Rene´ Sarl v OHIM [2008] ECR I-10053, mn. 101. 310 GC Case T-315/06 Ercros SA v OHIM [2008] ECR II-00274, mn. 45. 311 GC Case T-194/03 Il Ponte Financiaria v OHIM [2006] ECR II-00445 mn. 125 et seq.; GC Case T287/06 Miguel Torres SA v OHIM [2008] ECR II-03817, mn. 81, in that case not given for series of marks ‘Torres’, identifying a number of towers, as compared with ‘Torre Al Benice’, identifying only an individual tower, mn. 83. 312 GC Case T-356/12 Debonair Trading Internacional Lda v OHIM [not published in the ECR], mn. 21 et seq., in that case the series of earlier marks being composed of the word ‘SO?’, partly in combination with English expressions, and the CTM application being composed of the word ‘SO’, followed by a 306

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However, the fact that a mark belongs to a series of marks is only relevant if the 218 common element in the marks in question is distinctive. If it is descriptive for the goods or services in question, it is not apt to create a likelihood of confusion.313 A positive finding that the opponent has a family of mark requires the use of at least three marks with the given characteristics.314 Cases, in which a series of trade marks was accepted as criterion: GC Case T-301/09 219 IG Communications Ltd. v OHIM [not published in the ECR], mn. 86 et seq. (for element ‘Citi’); GC Case T-364/05 Saint Gobain v OHIM [2007] ECR II-00757, mn. 105 – PAM (for common element ‘PAM’); OHIM Dec. of 5/3/2009 – R 31/2007-1 – Uni, mn. 43 et seq. (common element ‘Uni-’); OHIM Dec. of 11/9/2008 – R 1514/2007-1 – Fix, mn. 41 (common element ‘Fix’). Cases, in which a series of trade marks was not assumed as criterion: GC Case T- 220 224/01 Durferrit GmbH v OHIM [2003] ECR II-01589, mn. 60 et seq. (common element ‘Tride’ neither used nor distinctive); GC Case T-178/09 Spar Handelsgesellschaft mbH v OHIM [not published in the ECR], mn. 82 (common element ‘Spar’ due to lack of actual presence and low distinctiveness); GC Case T-392/06 Union Investment PrivatFonds v OHIM [2010] ECR II-00065, mn. 47 et seq. (common element ‘Uni’ due to lack of evidence of use); GC Cases T-303/06 and T-337/06 UniCredito Italiano SpA v OHIM [2010] ECR II-00062, mn. 35 et seq. (common element ‘Uni’ due to lack of use); GC Case T-8/07 Miguel Torres v OHIM [2008] ECR II-00343, mn. 78 et seq. (common element ‘Torres’ due to singular of ‘Torre’ as used by applicant).

2. Particular product related factors for the global assessment The specific distribution practices and marketing strategies common to the relevant 221 goods or services may impact on the global assessment of likelihood of confusion together with the other relevant factors. a) Specific marketing aspects. As a rule, the particular circumstances in which the 222 goods in question are marketed are not taken into account because they may vary in time depending on the wishes of the proprietors of the trade mark.315 If certain goods are marketed at a particularly high price, higher than the average goods of that kind, this is a subjective marketing factor not taken into consideration and not altering the assessment of attention of the public to identical or similar goods for the purpose of the global assessment.316 As for the perception of the consumer and its attention, account must be taken of the 223 moment when the purchase is made. If the relevant public is also likely to perceive the marks in circumstances unconnected with any acts of purchase and displays, where appropriate, a lower level of attention on such occasions, the existence of such a possibility does not prevent the taking into account of the particularly high level of attention exhibited by the average consumer when he prepares and makes his choice between different goods in the category concerned.317 It is clear that whatever the goods or marks at issue, there will always be situations in which the public faced with them colon, followed by the element ‘UNIC’ which was, unlike the expressions following the element ‘SO…?’ in the series of earlier marks not an actual English expression, for which reason the CTM application would be understood as a fanciful expression, contrary to the marks belonging to the series. 313 GC Case T-117/02 Grupo El Prado Cervera v OHIM [2004] ECR II-02073, mn. 59. 314 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 7, 5. 315 CJ Case C-171/06 OHIM v T.I.M. E. Art Uluslararasi Saat Ticareti ve dis Ticaret [2007] ECR I00041, mn. 59. 316 GC Case T-101/06 Castell del Remei, SL v OHIM [2007] ECR II-00153, mn. 52. 317 CJ Case C-361/04 P Claude Ruiz Picasso and others v OHIM [2006] ECR I-00643, mn. 41.

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will grant them only a low level of attention.318 The authority called upon to assess whether there is a likelihood of confusion cannot reasonably be required to establish, for each category of goods, the consumer’s amount of attention on the basis of the level of attention which he is capable of displaying in different situations.319 224 Regard is to be had on the relevant sign for the relevant goods at such. Any circumstantial aspects, such as additional information or notices supplied by the owner of the younger sign at issue, for example to the extent that the product is not an original product of the company of the owner of the earlier sign320 is of no relevance in the global assessment of likelihood of confusion within the context of determining the outcome of an opposition procedure. What is relevant is the registration (and use) of that sign as such and whether taken per se it is likely to create the impression that there is a material link in the course of trade between the goods concerned and the proprietor of the earlier mark.321 b) Impact of the method of purchase of goods. The circumstances in which the relevant goods or services are usually bought or ordered are a factor that may impact the global assessment of likelihood of confusion. The way products or services are marketed has to be taken into account when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs.322 226 Depending on the method of purchase, the visual, aural or conceptual similarity may play a greater role in the overall assessment. As far as clothing is concerned, products are generally selected and acquired on sight, i. e. by making primarily a visual assessment and choice of the product. Also, shoes and clothing accessories such as handbags, i. e. items in classes 18 and 25 which are usually sold through shops and boutiques on sight, are generally marked with trade marks. Accordingly, the visual aspect plays a greater role in the global assessment of likelihood of confusion as far as the conflicting trade marks claim protection for these goods.323 Thus, details and differences in the visual aspect, either due to stylization of the marks or additional logos may play a greater role for such products than for other products.324 Even if such items are bought via the internet, the visual impact of the signs will be greater than the aural impact, considering that the items are, just as in shops, being advertised by their look and by displaying the logos of the trade mark owners on the websites. Yet, the greater impact that the visual aspect has in the examination of similarity of signs for such goods does not mean that identical verbal elements will be neglected in the presence of an original or striking figurative element.325 227 A preponderance of the visual impact of signs on the consumer was also assumed for video games, which are recognized to be purchased after a comprehensive examination 225

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CJ Case C-361/04 P Claude Ruiz Picasso and others v OHIM [2006] ECR I-00643, mn. 42. CJ Case C-361/04 P Claude Ruiz Picasso and others v OHIM [2006] ECR I-00643, mn. 43. 320 Presented as defense by the defendant in CJ Case C-206/01 Arsenal Football Club plc v Matthew Reed [2002] I-10273, mn. 57. 321 CJ Case C-206/01 Arsenal Football Club plc v Matthew Reed [2002] I-10273, mn. 56. 322 CJ Case C-342/97 Lloyd Schuhfabrik Meyer & Co. v Klijsen Handel [1999] ECR I-03819, mn. 27. 323 GC Case T-292/01 Phillips-Van Heusen Corp. v OHIM [2003] ECR II-04335, mn. 55; GC Case T502/07 IIC – Intersport International Corp. GmbH v OHIM [2011] ECR II-00138, mn. 50. 324 GC Case T-502/07 IIC – Intersport International Corp. GmbH v OHIM [2011] ECR II-00138, mn. 50; GC Cases T-117/03 to T-119/03 and T-171/03, New Look Ltd v OHIM [2004] ECR II-03471, mn. 50. 325 GC Case T-415/09 New Yorker SHK Jeans GmbH & Co. KG v OHIM [2011] ECR II-00336, mn. 91, where despite a striking logo in which the identical word was only one of several elements still a certain degree of visual similarity with the contested sign was assumed. 319

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of their respective specification and characteristics326 and for ordinary consumer goods that are most commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided more by the visual impact of the mark they are looking for.327 Still, also for products that are bought every day, the phonetic impression cannot be 228 neglected in such cases in particular, in which the merits of certain goods or services are being debated between the consumer and the sales personnel, which may be the case for technical products, computers and electronic accessories.328 Therefore, in the cases where products are seen on shelves in self-service but also an aural discussion of the characteristics of the goods and their marks is likely to take place at the time of purchase and the goods could be advertised aurally, on recommendation or by other consumers, the phonetic similarity between the marks at issue is at least as important as their visual similarity.329 The conceptual comparison between the signs and potential conceptual differences 229 may be more important for such goods, which consumer buy rather upon more intense reflection, such as cars.330 As opposed to that, where products are bought regularly, habitually and without 230 giving greater reflection at the time of purchase, conceptual differences will be less likely to impact the consumer’s decision as he does not spend time on further reflecting the goods or signs.

3. Particular factors relating to the distinctiveness of the marks The more distinctive the earlier mark, the greater will be the likelihood of confusion,331 231 and vice versa. The distinctiveness of the mark is a factor to be discussed within the global assessment of likelihood of confusion. Therefore, the degree of distinctiveness of the mark is a factor that may, in case of a weak distinctiveness of the earlier mark, tip the scales against likelihood of confusion, where either the similarity of signs or of goods and services is low, or, in such cases where an enhanced distinctiveness is found, be decisive for finding in favour of likelihood of confusion. In cases, in which likelihood of confusion can safely be concluded on the basis of similarity of signs and goods and inherent distinctiveness of the earlier sign, OHIM will, for reasons of procedural economy, not assess the distinctive character of the earlier sign where that claim has been made.332 The coexistence of conflicting marks on the market in the same territory is, due to 232 the high threshold for taking this argument into consideration for a claim of weaker distinctiveness of the earlier mark and a lesser distance consequently to be kept by the younger sign333, a factor that is only rarely taken into consideration in practice.

4. Incidences of actual confusion as factor The finding of likelihood of confusion is a question of law and not of fact. Therefore, 233 it is not necessary for the parties to a proceeding to prove or establish the existence of 326 GC Case T-525/09 MIP Metro Group Intellectual Property GmbH & Co. KG v OHIM [2011] ECR II00259, mn. 44. 327 GC Case T-488/07 Cabel Hall Cyprus Ltd v OHIM [2010] ECR II-00056, mn. 44. 328 GC Case T-501/08 NEC Display Solutions Europe GmbH v OHIM [2011] ECR II-00316, mn. 53. 329 GC Case T-446/07 Royal Appliance International v OHIM [2009] II-00146, mn. 60. 330 CJ Case C-361/04 P Claude Ruiz Picasso and others v OHIM [2006] ECR I-00643, mn. 27, 40. 331 CJ Case C-251/95 Sabe `l BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-06191, mn. 24. 332 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 7, 10. 333 See above at E. IV. 3.

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actual confusion.334 Still, evidence of actual confusion is a factor that may weigh in favour of likelihood of confusion, but which is not a decisive factor eventually. The reason for this is that the assessment of likelihood of confusion is normative, and it can never be excluded that individual consumers will be guided by misconceptions for various reasons. Also, it cannot be excluded that in reality there are always certain persons which confuse and misunderstand a number of things.335 234 Allegations and quotes of anonymous persons that may have reported any opinions from hearsay are irrelevant as this cannot be subject to proper evidence.336 Thus, occurrences of actual confusion may influence the finding of likelihood of confusion only if it is proven that such incidences usually accompany the existence of the conflicting trade marks in the market in typical situations in trade involving the goods and/or services concerned.337 A case where this has been successfully established has not been reported yet.

5. Prior decisions involving the same or similar trade marks Earlier decisions involving conflicts between the same or similar trade marks are from time to time introduced by the parties to opposition proceedings as an additional factor that they wish to be taken into consideration for the global assessment. 236 As far as earlier decisions on CTM oppositions are concerned, the legality of decisions of the Opposition Division, the Boards of Appeal the General Court or the CJ is to be assessed purely by reference to the CTMR and not to OHIM’s practice in earlier decisions.338 Consequently, OHIM is not bound by its own previous decisions. However, the Office cannot arbitrarily deviate from earlier decisions. The OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration.339 237 It has been held for CTM applications that OHIM must, when examining such cases, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not.340 This can, however, not be applied in an identical way to opposition proceedings, as, according to Art. 76 (1) CTMR, OHIM is restricted to the examination of the case according to the facts, evidence and arguments provided by the parties in each individual case. Thus, previous decisions can only have indicative value limited to cases which are sufficiently close to the case on hand, the decision may vary dependent on different submissions by the parties and evidence made in the particular case. 238 As far as earlier national decisions and judgments are concerned, it is settled case law that the Community trade mark system is autonomous.341 Therefore, the finding of likelihood of confusion under Art. 8 CTMR just as the finding on the registrability of a sign is to be assessed on the basis of the relevant legislation and the facts and evidence 235

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GC Case T-346/04 Sadas SA v OHIM [2005] ECR II-04891, mn. 69. OHIM Dec. of 10/7/2007 – R 40/2006-4 – SDZ Direct World, mn. 32. 336 OHIM Dec. of 10/7/2007 – R 40/2006-4 – SDZ Direct World, mn. 33; OHIM Dec. of 5/6/2002 – R 993/2005-4 – LA TERRE, mn. 26; OHIM, Dec. of 26/3/2007 – R 630/2007-2, mn. 17. 337 OHIM, Guidelines for Examination in the Office, Part C, Section 2, Chapter 7, 12. 338 GC Case T-281/02 Norma Lebensmittelfilialbetrieb GmbH & Co. KG v OHIM [2004] ECR II-01915, mn. 35; GC Case T-122/99 The Procter & Gamble Company v OHIM [2000] ECR II-00265, mn. 60 et seq.; GC Case T-32/00 Messe Mu¨nchen GmbH v OHIM [2000] ECR II-03829, mn. 46 et seq. 339 CJ Case C-51/10 P Agencja Wydawnicza Technopol sp. z o.o. v OHIM [2011] ECR I-01541, mn. 73. 340 CJ Case C-51/10 P Agencja Wydawnicza Technopol sp. z o.o. v OHIM [2011] ECR I-01541, mn. 74. 341 GC Case T-281/02 Norma Lebensmittelfilialbetrieb GmbH & Co. KG v OHIM [2004] ECR II-01915, mn. 35. 335

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presented by the parties according to Art. 76 para. 1 CTMR alone. Consequently, the decisions of national courts or trade mark authorities, be it from a member state or a state that is not a member to the European Union, are not binding for OHIM.342 Still, the decision making body applying the Community trade mark regulation may take due consideration of any national case law provided by the parties, as it may be capable of providing helpful guidance for the determination of the case as far as certain factors for the global assessment of likelihood of confusion are concerned.343

H. Trade mark filed by an agent, Art. 8 (3) CTMR I. Specific literature Bibliography: Annette Kur, ‘Not Prior in Time, but Superior in Right – How trade mark registrations can 239 be affected by third-party interests in a sign’, IIC 2013, 719; Peter Munzinger, ‘Anmerkungen zur Agentenmarke im deutschen Markenrecht’, in Festschrift fu¨r Pagenberg, 2006, S. 173 et seq.; Hoffmann, ‘Agentenmarke – “Die Zweite”’, MarkenR 2003, 131; Hoffmann, Agentenmarke vs. lokale, inla¨ndische ¨ berlegungen zum Wirkungskreis des § 11 MarkenG. Gescha¨ftsherrenmarke – gesetzessystematische U

II. Historical background In trade mark law, protection is generally subject to the priority principle. The right 240 to file an opposition under Art. 8 (1), (2), (3), (4) and (5) CTMR are based on this concept. The most important exception to the priority principle is Art. 6bis of the Paris Convention which stipulates that trade marks that are known to belong already to a person entitled to the benefits of the Paris Convention must be protected in other member states even without having been registered there.344 Consequently, Art. 6 septies of the Paris Convention grants protection against unauthorized registration of a trade mark by an agent or representative. This rule has been taken over in many national trade mark laws, such as in § 11 241 MarkenG345. However, the TMD does not provide for a provision granting protection against trade marks filed by a nefarious agent. The exceptions to the priority principle as stipulated in the TMD are limited to Art. 3 (2)(d) TMD, according to which 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 the application for registration of the trade mark was made in bad faith by the applicant. Resulting from the need that the provisions in the TMD are to be in complete 242 accordance with the provisions in the Paris Convention, there was the need that member states need to fulfill their obligations resulting from the Paris Convention.346 342 GC Case T-363/08 2 nine Ltd v OHIM [2010] ECR II-00036; GC Case T-207/06 Europig SA v OHIM [2007] ECR II-01961, mn. 42. 343 GC Case T-40/03 Julia ´ n Muru´a Entrena v OHIM [2005] ECR II-02831, mn. 49, where the OHIM took national Spanish decisions on the perception of the surnames Morua and Entrena into considera~o Textil (Inditex), SA v OHIM [2010] ECR II-05119, mn. 84 tion; in GC Case T-292/08 Industria de Disen et seq., the Court considered Spanish decisions regarding the perception of the Spanish consumer of a certain English word, but rejected their relevance for the case on hand due to the difference in the word to be considered. 344 Kur, IIC 2013, 790. 345 German Trade Mark Act. 346 Fezer, Markenrecht, 4th ed., § 11 MarkenG, mn. 4.

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Accordingly, Art. 4 (4)(g) TMD provides that a member state can exclude such trade marks from registration or invalidate the registration if the trade mark can be confused with another mark that was, at the time of application, already used abroad, if the applicant was acting in bad faith at the time of application. This provision facilitated a regulation against trade mark applications of nefarious agents. 243 On this basis, the CTMR provides for the exclusion from registration and invalidation of registered trade marks in two instances. According to Art. 8 (3) CTMR, the fact that a Community trade mark has been applied for by an agent or representative of the proprietor of the trade mark in his own name without the proprietor’s consent constitutes a relative ground of refusal to registration. Secondly, according Art. 52 (1)(b) in connection with Art. 8 (3) CTMR, a non-justified application filed by an agent is declared invalid upon independent invalidation request or upon counterclaim in an infringement procedure. Additionally, Art. 11 CTMR provides for a claim to injunction of the use of a trade mark registered by a nefarious agent, and Art. 18 CTMR provides for a claim of the trade mark proprietor against the agent for transfer of the trade mark applied for or registered by the nefarious agent.

III. Reform proposal 244

In its proposal for an amended CTMR347 the Commission has stated in its twelfth recital that it is appropriate to make the dishonest appropriation of trade marks more difficult by extending the possibilities to uphold European trade mark applications filed in bad faith. Consequently, according to the reform proposal, Art. 8 (3) CTMR shall be amended as follows: § 3 is replaced by the following: ‘3. Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered: (a) Where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s authorization, unless the agent or representative justifies his action; (b) Where the trade mark is liable to be confused with an earlier trade mark protected outside the Union, provided that, at the date of application, the earlier trade mark was still in genuine use and the applicant was acting in bad faith.’

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Thereby, an application of a CTM in bad faith shall become a relative ground that can already be raised prior to the registration of a CTM, whereas currently bad faith gives reason only for an invalidity request under Art. 52 (1) lit. b CTMR.

IV. Purpose of the provision 246

Art. 8 (3) CTMR is designed to prevent the misuse of a mark by the trade mark proprietor’s agent, as the agent may exploit the knowledge and experience acquired during the business relationship with the proprietor and therefore improperly benefit from the efforts and investment which the trade mark proprietor himself made.348 347 Proposal for a Regulation of the European Parliament and of the Council amending Reg. (EC) No 207/2009 on the Community Trade Mark of 27.3.2013, COM (2013) 161 final. 348 GC Case T-6/05 Def-Tec Defense Technology v OHIM [2006] ECR II-02671, mn. 38.

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The main area of application of this provision are cases, in which a company is 247 owner of a trade mark applied for or registered abroad, but does not have trade mark protection in the EU and distributes its products in the European Community market through an agent or representative. In these situations, the proprietor of a foreign trade mark right runs the risk that the agent entrusted by him with distributing a product in the Community or parts of the Community turns out to be illoyal and has the trade mark of his principal registered in the EU, thus enabling him to compete with his principal in the EU and even interdict him to use his trade mark in the territory due to the priority in the EU of his nefarious application.349 However, the scope of application of Art. 8 (3) CTMR is not limited to such cases, in 248 which the trade mark proprietor owns a trade mark right abroad, but applies also to such cases, in which the trade mark proprietor uses his mark in the Community without having registered it, and the agent applies for protection of the trade mark as a CTM.350

V. Requirements For an opposition to succeed based on Art. 8 (3) CTMR, it is necessary, first, for the 249 opposing party to be a proprietor of the earlier mark; secondly, for the applicant of the mark to be or to have been the agent or representative of the proprietor of the mark; thirdly, for the application to have been filed in the name of the agent or representative without the proprietor’s consent and without there being legitimate reasons to justify the agent’s or representative’s action; and, fourthly, for the application to relate, in the essence, to identical or similar signs and goods. These conditions are cumulative.351 The fact that the applicant filed the application in bad faith will not be in itself 250 sufficient for the purposes of Art. 8 (3) CTMR. The protection granted by Art. 8 (3) CTMR is narrower than the one afforded by Art. 52 (1)(b) CTMR because the applicability of Art. 8 (3) CTMR is subject to the fulfilment of the above mentioned additional conditions laid down in this provision so that an opposition will be rejected if it is based exclusively on the bad faith of the applicant.352

1. Agent or representative relationship a) Opposing party is proprietor of the earlier mark. Taking into consideration the 251 purpose of Art. 8 (3) CTMR and the fact that it is, following Art. 6septies of the Paris Convention, an exception to the rule that trade mark protection is subject to the priority principle, the requirement of Art. 8 (3) CTMR that the opposing party must be proprietor of the earlier trade mark is somewhat misleading. The trade mark owner as opposing party under Art. 8 (3) CTMR would not have to resort to this particular remedy, if he were, within the territory of the European Union, owner of a registered trade mark or right under Art. 8 (4) CTMR with an earlier priority date than the applicant of the CTM application, i. e. the agent. Thus, in the absence of any textual restriction in Art. 8 (3) CTMR, the term ‘trade mark’ must be interpreted broadly and Fezer, Markenrecht, 4th ed., § 11 MarkenG, mn. 9. Which is deducted from the fact that neither Art. 3 (2)(d) TMD nor Art. 4 (4)(g) TMD contain a limitation to cross border situations, see motivation of the German Trade Mark Act regarding § 11 MarkenG which is based on Artt. 3 (2)(d) and 4 (4)(g) TMD, BT-Drucks. 12/6581 of 14 January 1994, p. 9. 351 GC Case T-202/09 Safariland LLC v OHIM [2011] ECR II-01629, mn. 61. 352 OHIM, Guidelines for Examination in the Office, Part C, Section 3, 1.2, p. 4. 349 350

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understood as including pending applications, merely used and unregistered marks or well-known marks within the meaning of Art. 6bis of the Paris Convention.353 For these reasons, it is immaterial whether the earlier trade mark rights reside in the European Union or not.354 It is not clear whether the fact that Art. 8 (3) CTMR, due to its being rooted in Art. 6septies of the Paris Convention, results in an implicit restriction of scope to trade mark rights held in a country member to the Paris Convention or the World Trade Organization. There is no case law apparent on this issue. Judging from the relevant OHIM practice concerning oppositions under Art. 8 (3) CTMR355, OHIM does not restrict the entitlement to oppositions under Art. 8 (3) CMTR to rights originating from a country member to the Paris Convention or the WTO. Accordingly, both registered and unregistered trade marks are covered by this provision to the extent that the law of the country of origin recognizes rights of this kind. However, OHIM interprets the express reference to trade marks in a way that Art. 8 (3) CTMR does not apply to mere signs used in the course of trade other than unregistered trade marks.356 As a consequence, an opponent in a proceeding under Art. 8 (3) CTMR has to adduce evidence, where he claims ownership of an unregistered trade mark recognized by the country of origin, that his mark is protected under those laws.357 This is essentially the same requirement as in an opposition under Art. 8 (4) CTMR. But the key difference between Art. 8 (3) CTMR and Art. 8 (4) CTMR regarding the entitlement to file the opposition is the fact that the earlier registered or unregistered trade mark right can be protected under the laws of a country outside of the European Union only.358 This trade mark right must be earlier than the CTM application. The relevant point of time for the calculation of ‘earlier’ is the filing or priority date of the contested CTM application. For earlier unregistered trade mark rights or well-known marks, the right has to have come into existence or have become well-known before the time the CTM application was applied for. In contrast to Art. 41 (1)(a) CTMR, which stipulates that oppositions based on Art. 8 (1) CTMR or Art. 8 (5) CTMR may also be filed by authorized licensees or, if based on Art. 8 (4) CTMR, in contrast to Art. 41 (1)(c) CTMR regulating that the right to file an opposition is also extended to persons authorized by national law to exercise the relevant rights, the right to file an opposition on grounds of Art. 8 (3) CTMR is, according to Art. 41 (1)(b) CTMR reserved only for proprietors of the earlier trade mark. Thus, oppositions filed by licensees or persons otherwise authorized by the relevant national laws will be dismissed as inadmissible.359 The requirement to be the proprietor of a registered or an unregistered trade mark excludes other kinds of intellectual property rights such as copyrights.360 For this reason, design rights, patents, utility models or plant varieties cannot be used as basis in the context of Art. 8 (3) CTMR. 353 OHIM, Guidelines for Examination in the Office, Part C, Section 3, 3.1, p. 5; Fezer, Markenrecht, 4th ed., § 11 MarkenG, mn. 20. 354 OHIM Dec. of 10/1/2011 – 3253 C – MUSASHI, mn. 33; OHIM Dec. of 26/1/2012 – R 1956/2010-1 – Heat Strip, mn. 3, 34. 355 OHIM, Guidelines for Examination in the Office, Part C, Section 3, 3. 2., p. 6 et seq. 356 OHIM, Guidelines for Examination in the Office, Part C, Section 3, 3.1, p. 5. 357 As to the kind of evidence, G IV. on non registered and used earlier rights under Art. 8 (4) CTMR below. 358 GC Case T-262/09 Safariland LLC v OHIM [2011] ECR II-01629, mn. 63. 359 OHIM Dec. of 30 September 2009 – R 1547/2006-4 – Powerball, mn. 5, 14. 360 OHIM Dec. of 8/6/2010 – B 1461948 – Gu Tong Tie Gau, p. 5.

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b) Agent or representative. The opposed application must have been applied for by 257 an agent or representative of the trade mark proprietor. In order to safeguard the legal interests of the trade mark proprietors against the misappropriation of their trade marks by their commercial associates, the terms ‘agent’ and ‘representative’ should be interpreted broadly so as to cover all kinds of relationships based on any business arrangement, whether governed by written or aural contract, where one party is representing another, regardless of how the relationship between the principal on the one hand and the applicant on the other hand is labelled.361 Therefore, it is sufficient for the purposes of Art. 8 (3) CTMR that there be some kind 258 of agreement of commercial cooperation between the parties that gives rise to a fiduciary relationship by imposing on the trade mark applicant – whether expressly or implicitly – a general duty of trust and loyalty as regards the interests of the trade mark proprietor.362 This may also extend, for example, to licensees of the proprietor or authorized distributors of the goods for which the mark in question is used. The burden of proof regarding the existence of an agent/principal relationship lies with the opponent.363 c) Nature of relationship. Whether the nature of the relationship between the trade 259 mark proprietor/principal and the trade mark applicant is such as to qualify as an agency or representation agreement has to be determined on a case by case basis, focusing on whether the contractual link between the opponent and the applicant is limited to a series of occasional transactions (such as occasional sale contracts) or if the nature was such that the cooperation with the proprietor gave the applicant the possibility to get to know and appreciate the value of the mark, inciting him to subsequently try to register the mark in its own name.364 For that reason, if the applicant acts completely independent, without having entered 260 into any kind of relationship with the proprietor, he cannot be treated as an agent for the purposes of Art. 8 (3) CTMR. Thus, as a mere purchaser or client of the proprietor cannot be regarded as an agent or a representative, since such persons are under no special obligation of trust to the trade mark proprietor.365 Also, in a case where the parties, at the time of filing of the CTM, held parallel and independent rights to the mark in different territories,366 or when there was a mere desire to establish a commercial relationship between the parties367 or where the evidence material regarding the kind of commercial link between opponent and applicant is inconclusive368 or where the applicant was a legal representative or manager of the opponent’s company rather than a business associate in the sense of another company369, there is no room for the application of Art. 8 (3) CTMR. Rather, the trade mark proprietor should wait for the application to proceed to registration in order to file an invalidity request against the CTM and invoke Art. 52 (1)(b) CTMR, i. e. the absolute ground of refusal of an application having been filed in bad faith. 361 OHIM, Guidelines for Examination in the Office, Part C, Section 3, 4.1.1, p. 7 et seq; GC Case T-262/ 09 Safariland LLC v OHIM [2011] ECR II-01629, mn. 63. 362 GC Case T-262/09 Safariland LLC v OHIM [2011] ECR II-01629, mn. 64. 363 GC Case T-262/09 Safariland LLC v OHIM [2011] ECR II-01629; OHIM Dec. of 29/2/2012 – B 1818791 – Hovercam, p. 5. 364 OHIM, Guidelines for Examination in the Office, Part C, Section 3, 4.1.1, p. 8. 365 GC Case T-262/09 Safariland LLC v OHIM [2011] ECR II-01629, mn. 67, 68. 366 OHIM Dec. of 16/6/2011 – 4103 C – D‘Angelico, mn. 115. 367 OHIM Dec. of 17/3/2000 – B 26759 – Eastside Mario’s, p. 6. 368 OHIM Dec. of 26/6/2009 – B 955528 – Fusion, p. 9. 369 OHIM Dec. of 20/3/2000 – B 126633 – Harpoon, p. 8.

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d) Form and territorial scope of agreement. The agent or representative relationship, or, speaking more broadly, the fiduciary relationship, between the opponent and the applicant does not need to have been manifested in written form. But, absent such written agreement, it may be difficult to prove the existence of such relationship. Such proof can, however, also be adduced by copies of correspondence between the parties indicating that they had a long and close commercial relationship, according to which the applicant’s company acted as a distributor of the opponent’s goods370 or by means of business letters exchanged between the parties, including by email.371 262 Art. 8 (3) CTMR does not give any indication on the territorial scope that the agent or representative relationship must have covered. However, as the provision deals with oppositions against CTM applications, an inherent limitation to relationships covering the Community as such or member states of the EU is implied. Logically, when the agent or representative agreement does not cover the EU in whole or in parts, the purpose of Art. 8 (3) CTMR is not met. For that reason, also agreements covering a wider territorial scope than the EU or parts thereof are covered by the provision, as long as it extends to one or more member states of the EU.372 263 The fiduciary relationship between the opponent and the applicant must have started in the past. This emanates from the purpose of Art. 8 (3) CTMR.373 This does not mean that the agreement needs to have persisted or still have been in force at the time of filing of the CTM application, the purpose of the rule being to protect the proprietor from harmful applications exploiting the knowledge and experience acquired during the business relationship by the representative and thereby improperly benefitting from it. This requirement is met also in case the relationship has ended at the time of filing. 264 However, this does not protect the trade mark proprietor forever. If he has an interest in the territory covered by the agent or representative agreement, he is under obligation to secure his interests generally by filing an application himself or in another way. The post-contractual fiduciary obligations of the agent or representative are assumed to end no earlier than three months after the expiry of the relationship374 but certainly one year after the termination of the agreement.375 261

2. Application in the agent’s name 265

Whether or not the requirement is met that the application has been filed in the name of the agent or representative of the proprietor can easily be ascertained. Difficulties arise when the agent of representative arranges for the application to be filed by a third party under his control or with whom he connives. To take care of such circumventions, the requirement of ‘application in the agent’s name’ is considered to be fulfilled also in cases, where the application was not filed in the name of the agent’s company but in the name of a natural person that shares the same economic interest, such as its general manager or another person benefitting from such filing.376 In such cases, it lies with the opponent to prove that the filing by the third person is to be 370

OHIM Dec. of 7/7/2003 – R 336/2001-2 – Gordon and Smith, mn. 18. OHIM Dec. of 26/1/2012 – R 1956/2010-1 – Heatstrip, mn. 56. 372 OHIM, Guidelines for Examination in the Office, Part C, Section 3, 4.1.3, p. 10. 373 OHIM Dec. of 19/5/2011 – R 0085/2010-4 – Linghams, mn. 25. 374 OHIM Dec. of 21/2/2002 – B 167926 – Azonic, p. 7 et seq. 375 OHIM Dec. of 19/11/2007 – R 0073/2006-4 – Porter, mn. 25, 27. 376 OHIM Dec. of 21/2/2002 – B 167926 – Azonic, p. 8 (in that case the applicant was the person representing the former licensee as president); OHIM Dec. of 28/5/2003 – B 413890 – Selfood, p. 5 et seq. (in that case, the representative and the company having filed the application were both controlled by the same natural person). 371

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considered as having been filed by the agent or representative himself by adducing relevant facts, circumstances and evidence.

3. Without the proprietor’s consent The fact that the application was filed without the trade mark proprietor’s consent 266 merely needs to be stated by the opponent. He cannot be expected to prove a negative fact. Therefore, it is up to the applicant to establish and provide evidence that consent to the application had been given by the trade mark proprietor prior to the filing.377 The evidence of consent has to relate to the filing as such as well as to the fact that the application was authorized in the name of the agent rather than that of the proprietor.378 The consent for the purposes of the registration of the trade mark in the name of the 267 representative or agent must be clear, specific and unconditional.379 Such consent cannot be assumed, where the trade mark proprietor had declared that he had ‘expressly waived all of the rights to the mark to be registered for Europe’ which was not considered clear, specific and unconditional on the date of the undertaking.380 The mere toleration of an unauthorized application cannot create legitimate expectations or replace a consent to filing of a CTM application.381

4. Without justification As is the case with the requirement ‘without the proprietor’s consent’, also for the 268 condition ‘without justification’ the burden of proof lies with the applicant to establish and provide evidence for a justification on the part of the applicant for the CTM filing. A case where a CTM application was considered to have been filed with a justification by the agent or representative has not yet been decided. According to the OHIM Guidelines382 on this issue, only exceptional circumstances are accepted as justification, such as where the trade mark proprietor causes its agent to believe that it has abandoned the mark, or that it is not interested in obtaining or maintaining any rights in the territory concerned, for example by suspending the use of the mark over a relatively long period of time. The following circumstances have not been considered a valid justification: The applicant’s economic interest and need to protect its investment in setting up a local distribution network and promoting the mark in the relevant territory383, the fact that the agent bore the registration costs that the opponent might have been unwilling to incur384, the interest of the applicant to protect the goodwill of the mark in the Community, which had been established solely as a result of its trading activities385 or certain economic claims of the applicant against the trade mark proprietor and that it should be entitled to some financial remuneration.386 377

OHIM, Guidelines for Examination in the Office, Part C, Section 3, 3.4.3., p. 14. OHIM Dec. of 7/7/2003 – R 336/2001-2 – Gordon and Smith, mn. 18. 379 GC Case T-537/10 Ursula Adamowski v OHIM [not published in the ECR], mn. 23; GC Case T-6/05 Defense Technology v OHIM [2006] ECR II 02671, mn 38, 40, which requirement was not considered to have been kept in a case where the trade mark proprietor merely agreed to the ‘use’ of the ‘original symbol’ and the ‘company designation’ of the company of the representative throughout Europe. 380 GC Case T-6/05 Def-Tec Defense Technology v OHIM [2006] ECR II-02671, mn. 45 et seq., the issue thereafter having been whether the consent had survived the purchase of the assets of the original trade mark proprietor and whether it was still bound by that consent at the time of application. 381 OHIM Dec. of 31/1/2001 – B 140006 – Gordon and Smith, p. 8. 382 OHIM, Guidelines for Examination in the Office, Part C, Section 3, 4.4., p. 16. 383 OHIM Dec. of 7/7/2003 – R 336/2001-2 – Gordon and Smith, mn. 23. 384 OHIM Dec. of 7/7/2003 – R 336/2001-2 – Gordon and Smith, mn. 24. 385 OHIM Dec. of 6/10/2011 – 4443 C – Cello, mn. 31 et seq. 386 OHIM Dec. of 10/1/2011 – 3253 C – Musashi, mn. 47. 378

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Community Trade Mark Regulation

5. Applicability to similar signs and/or similar goods or services In its literal meaning, Art. 8 (3) CTMR applies only to identical signs and goods or services, which can be taken from the wording ‘an agent or representative of the proprietor of the mark applies for registration thereof in his own name’. But, in the same way as it is recognized that it is the interest to protect the proprietor against misappropriation of his mark due to circumvention of the agent or representative by conniving with a different applicant, it is accepted that Art. 8 (3) CTMR must be applied also when the sign applied for by the representative or agent essentially reproduces the earlier mark with slight modifications, additions or deletions, which do not substantially affect its distinctiveness, and when the goods or services in conflict are closely related or equivalent in commercial terms to the goods or services covered by the trade mark of the proprietor.387 270 For closeness of signs, this has been decided so far in such cases, where, though the devices and stylizations of the registration of the proprietor and of the application differed, the word element found distinctive remained identical.388 In a case, in which a word element of the trade mark registration was not identically copied in the application, at least the devices were essentially identical.389 But the standard for the required similarity of signs must, because of the purpose of Art. 8 (3) CTMR and it being an exception from the priority principle, be higher than that for similarity under Art. 8 (1) CTMR. 271 As far as the required closeness of goods and services is concerned, protection is considered not to extend to commercial activities which cannot reasonably be expected from the proprietor390 or when the goods or services are not essentially the same or largely equivalent.391 What counts in this assessment is whether the goods or services of the applicant may be perceived by the public as ‘authorized’ products, the quality of which is somehow ‘guaranteed’ by the opponent.392 It can be concluded from the case law cited above that the standard for assuming closeness of goods or services under Art. 8 (3) CTMR is stricter than the standard for assuming similarity of goods under Art. 8 (1)(b) CTMR. 269

387

OHIM, Guidelines for Examination in the Office, Part C, Section 3, 3.4.5., p. 17 et seq. GC Case T-262/09 – Safariland LLC v OHIM [2011] ECR II-01629, for ‘First Defense’ with differing devices; OHIM Dec. of 3/8/2010 – R 1367/2009-2, for conflicting marks containing ‘Berik’ with similar devices (see also decision of 3/8/2010 – R 1231/2009-2 – Berik); OHIM Dec. of 19/6/1999 – B 3436 – Noraxon (with and without device); Dec. of 26/9/2001 – B 150955 and B 170789 – Apex (with and without device). 389 OHIM Dec. of 3/5/2012 – R 1642/2011-2 – Maritime Montering AS v Maritime Akopafi (both with identical devices). 390 OHIM Dec. of 4/5/2007 – R 0493/2002-4 – First Defense, mn. 19 et seq., for ‘disabling sprays’ which were considered to be sufficiently different from ‘side arms’ and ‘ammunition’. 391 OHIM Dec. of 3/5/2012 – R 1642/2011-2 – Maritime Akopafi, according to which ‘installation of marine accommodation’ was considered to be fundamentally different from ‘scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software’; OHIM Dec. of 3/8/2010 – R 1367/2009-2 – Berik, mn. 30 et seq, according to which ‘clothing goods’ in class 25 could not be considered closely related or equivalent in commercial terms to ‘leather and imitation leather’. 392 OHIM Dec. of 27/2/2012 – B 1302530 – Geoweb v Neoweb. 388

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I. Non registered and used earlier rights, Art. 8 (4) CTMR I. Specific literature Bibliography: Michael Goldmann, Der Schutz des Unternehmenskennzeichens, 3rd edition, 2014; Hein, 272 ‘Der Schutz von Handelsmarken unter dem TRIPS-Abkommen’, GRURInt 2005, 545; Eva Ines Obergfell, ‘American Bud II’, MarkenR 2010, 265; Christian Rohnke, ‘Das rechtsverletzende Unternehmenskennzeichen nach dem EuGH-Urteil, Anheuser-Busch/Budvar’, in Festschrift fu¨r Ullmann, 2006, p. 359.

II. Historical background Despite the CTM being a unitary right and the CTMR and its implementing 273 regulations being an autonomous set of law, Community trade mark law is governed by the principles of coexistence, and of equivalence in relation to national trade marks and national trade mark laws.393 This principle has its foundation in the Fourth and Fifth Recitals of the TMD. According to the Fourth Recital, it is not considered necessary to undertake a full-scale approximation of the trade mark laws of the member states. According to the Fifth Recital, the Directive does not deprive the member states of the right to continue to protect trade marks acquired through use but should take them into account only in regard to the relationship between them and trade marks acquired by registration. Emanating from this principle of coexistence, Art. 4 of the TMD stipulates that 274 further grounds for refusal or invalidity of new trade mark applications in conflict with earlier rights are, 1. a trade mark shall not be registered or, if registered, shall be liable to be declared invalid: (a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier mark is protected; (b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark. According to Art. 4 para. 4 of the TMD, any member state may, in addition, provide that a trade mark shall not be registered for or, if registered, shall be liable to be declared invalid, where, and to the extent that (b) rights to a non-registered trade mark or to another sign used in the course of trade were acquired prior to the date of application for registration of the subsequent trade mark, or the date of the priority claimed for the application for registration of the subsequent trade mark, and the nonregistered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark; (c) the use of the trade mark may be prohibited by virtue of an earlier right other than the rights referred to in paragraph 2 and (b) of this paragraph and in particular: (i) a right to a name; (ii) a right of personal portrayal; (iii) a copyright; (iv) an industrial property right. The provisions in the CTMR giving effect to the principle of coexistence of the CTM 275 with rights conferred under national laws of the member states are based on Art. 4 (4)(b) and (c) of the TMD. These provisions are Art. 8 (4) CTMR providing a relative ground of refusal to registration of a CTM application in conflict with an earlier right under the national law of a member state, and Art. 53 (1)(c) CTMR and Art. 53 (2) 393

Schennen, in: Gemeinschaftsmarkenverordnung, Part I, mn. 3.

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CTMR, providing grounds for invalidation of a registered CTM where there is an earlier right as referred to in Art. 8 (4) and the conditions set out in that paragraph are fulfilled, or where there is an earlier right to a name, a personal portrayal, a copyright or an industrial property right under the Community legislation or national law of an member state governing the protection. 276 As a consequence resulting from the principle of coexistence and the acknowledgement of earlier rights protected by the national laws of the member states as relative grounds of refusal against Community trade mark applications, the Office, in deciding an opposition based on Art. 8 (4) CTMR, must apply both the relevant provisions of the CTMR and the national law governing the earlier opposing right, as will be shown in more detail below.

III. Reform proposal 277

In its proposal for an amended CTMR394 the Commission in its thirteenth recital has stated that it is the aim of the Commission to maintain strong protection of rights in designations of origin and geographical indications protected at Union level, and for that it is necessary to clarify that those rights entitle to bring an opposition against a registration of a later CTM, regardless of whether or not they are also grounds for refusal under Art. 7 (CTMR) to be taken into account ex officio by the examiner. In implementation of this aim, Art. 8 (4) CTMR, it is introductory phrase, is to read as follows: ‘4. Upon opposition by the proprietor of non-registered trade mark or of an another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuing to Union legislation providing for protection of designations of origin and geographical indications, or the law of the member state governing that sign:’

278

Thereby, protection of designations of origin and geographical indications are expressly included in the ambit of this provision, which, before that, had been accepted by Community case law already.

IV. Signs used in the course of trade 279

Art. 8 (4) CTMR requires the opponent to substantiate proprietorship of a nonregistered trade mark or other sign used in the course of trade but does not provide further specifics as to how this requirement is to be met.

1. Use in the course of trade 280

The condition ‘sign used in the course of trade’ must be interpreted in the light of Community law.395 A sign is used in the course of trade where that use occurs in the context of a commercial activity with a view to economic advantage and not as a private 394 Proposal for a Regulation of the European Parliament and of the Council amending Reg. (EC) No 207/2009 on the Community Trade Mark of 27.3.2013, COM (2013) 161 final. 395 GC Case T-318/06 to T-321/06 Alberto Jorge Moreira da Fonseca v OHIM [2009] ECR II-00663, mn. 33 et seq.

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matter.396 The ‘use’ as stipulated in Art. 8 (4) CTMR does not concern the ‘genuine’ use of a sign that may have to be proven in support of an opposition under Art. 42 (2) and (3) CTMR. It is not the same as the requirement for proof of genuine use of a trade mark.397 The use of the sign, before filing of the contested CTM application, must have been 281 continuous and uninterrupted until the filing of the opposition, which is specified in Rule 19 (2)(d) CTMIR stating that the opponent must not only provide evidence on the acquisition and scope of protection of the earlier right but also of its continued existence. In a case where, according to the evidence submitted, use in the course of trade of the non-registered trade mark had ceased two years before the date of filing of the (in that case) invalidity request, this requirement was considered not to have been met.398 As for the intensity of the use, which as well is to be interpreted in the light of Community law, even if the national law may not require any use for invoking the earlier right at issue, the opponent still has to substantiate that use has been made and the mere registration cannot be relied upon.399

2. Proprietor Art. 8 (4) CTMR in connection with Art. 41 (1)(c) CTMR conveys the right to 282 opposition based on this provision only to the proprietor of a non-registered trade mark or other sign or the person authorised under national law to exercise the relevant right. Different from oppositions under Art. 8 (1) and (5) CTMR, a licensee of the proprietor does not have a standing to file an opposition under Art. 8 (4) CTMR.400

3. Kinds of signs Art. 8 (4) CTMR identifies as types of rights falling under this provision only ‘non- 283 registered trade marks’ and ‘other signs used in the course of trade’ without further defining what types of rights precisely are stipulated. For Art. 8 (4) CTMR to apply, it is essential that the sign relied on in support of the opposition is used in the course of trade in a function to be used as a distinctive element in that it must serve to identify an economic activity engaged in by its proprietor.401 If that sign is identical to a trade mark that does not mean that the sign is not used in the course of trade. Comparing Art. 8 (4) CTMR with the parallel provision for invalidity proceedings in Art. 53 CTMR, it can be concluded e contrario, in particular given the differentiation that is made regarding the grounds for invalidity under Art. 53 (1)(c) and Art. 53 (2) CTMR, that the rights specifically addressed in Art. 53 (2), i. e. right to a name, the right to a personal portrayal, a copyright, or an industrial property right, do not qualify as ‘signs used in the course of trade’ under Art. 8 (4) CTMR, as otherwise the division between Art. 53 (1)(c) and Art. 53 (2) CTMR would not have been necessary.402 Therefore, the 396

GC Case T-534/08 Granoband BV v OHIM [2010] ECR II-0021, mn. 28. CJ Case C-96/09 P Anheuser-Busch Inc. v OHIM [2011] ECR I-02131, mn. 143. 398 OHIM Dec. of 3/8/2011 – R 1822/2010-2 – Bambolina, mn. 15. 399 OHIM, Guidelines for Examination in the Office, Part C, Section 4, 3.3.2., p. 15 et seq; OHIM Dec. of 7/2/2012 – R 693/2011-2 – Nacional, mn. 20 et seq. 400 Bender, in: Fezer (ed), Handbuch der Markenpraxis, 2nd ed. mn. 1006. 401 CJ Case C-96/09 P Anheuser-Busch Inc. v OHIM [2011] ECR I-02131, mn. 149. 402 GC Case T-255/08 Eugenia Montero Padilla v OHIM [2010] ECR II-02551, mn. 65 stating that copyright cannot constitute a ‘sign used in the course of trade’ within the meaning of Art. 8 (4) CTMR which is attributed to the scheme of Art. 53 CTMR; OHIM Dec. of 7/9/2010 – B 1530875 – Lipsi, p. 3, holding that designs are not signs under Art. 8 (4) CTMR as they are a form of intellectual property dealing with the ornamental or aesthetic aspects of an article’s appearance but no business identifiers and therefore do not qualify. 397

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proprietor of a right identified under Art. 53 (2) lit. (a) to (d) CTMR must, if seeking to prevent the existence of a younger CTM that he sees in conflict with his earlier rights in this respect, wait for the application to register before he can invoke these rights. a) Non-registered trade marks. Non-registered trade marks that are traditionally based on use of the sign exist in the legislations of almost all of the member states.403 Art. 8 (4) CTMR, following Art. 4 (4)(b) TMD, recognizes the existence of such rights in the member states and grants the proprietors of non-registered trade marks the possibility of preventing the registration of a CTM application in cases where they would succeed in preventing use of that CTM application under the relevant national law.404 285 The standard of proof for a non-registered trade mark corresponds to that required under Art. 7 (3) CTMR405, with the modification, however, that non-registered trade mark rights under Art. 8 (4) will usually not be claimed for the entire European Community but for one or more individual countries only, which reduces the burden of evidence at least territorially.406 284

286

b) Other business identifiers. According to OHIM’s Guidelines407 ‘other signs’ cover business identifies such as trade names, corporate names, establishment names, titles of publications or similar works, domain names or geographical indications. The fact that such sign may also be registered in accordance with the requirements of the respective national legislation does not prevent it from being invoked under Art. 8 (4) CTMR, as long as it is not a registered trade mark. In order for a sign to be eligible under Art. 8 (4) CTMR, it must have an identifying function, either serving to identify a business in trade or a geographical origin in trade, which is the reason why the set of rights enumerated under Art. 53 (2) CTMR do not qualify.

c) Trade names. A trade name is a sign or denomination that serves to identify a physical or legal person in the exercise of its commercial activities,408 to be distinguished from trade marks which serve to identify goods or services as produced or marketed by a particular undertaking. A trade name can be, but is not necessarily identical with, a corporate or commercial name of an undertaking. It can be the catch word of that undertaking.409 Pursuant to Art. 8 of the Paris Convention, such trade names enjoy protection without any registration requirement and, by virtue of that same Paris Convention which is in effect in all member states of the European Community trade names are protected as exclusive rights in all member states. 288 The kind of use material that is required to establish the use of the sign in the course of trade is comparable to the use material to be submitted for proof of use of a trade mark, such as price lists of the opponent mentioning the trade name, invoices of the 287

403 For Germany for example ‘Marke kraft Verkehrsgeltung’ under § 4 (2) MarkenG, in Austria § 31 MarkenSchG; but not recognized, for example in Benelux and France. Further details on national legislations in below VII. 404 OHIM, Guidelines for Examination in the Office, Part C, Section 4, 3.2.2., p. 6 citing OHIM Dec. of 17/3/2011 – R 1529/2010-1 – Gladiator as an example, in which a non-registered trade mark in the Czech Republic was, in two instances, successfully invoked against the application of a Community trade mark. 405 GC case T-137/08 BCS SpA v OHIM [2009] ECR II-04047, mn. 71. 406 As for the threshold to be met and evidence material to be submitted it is referred to the commentary for Art. 7 (3) in this book. 407 Part C, Section 4, 3.2.3, p. 7. 408 OHIM Dec. of 16/8/2011 – R 1714/2010-4 – Jamon de Huleva, mn. 34. 409 Example: If the commercial name of an undertaking is ABC GmbH & Co. KG, the catch word or ‘trade name’ by which that undertaking is commonly addressed would be ‘ABC’, i. e. without those parts of the commercial name identifying the type of company.

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opponent mentioning the trade name and displaying what kind of goods or services were marketed in commerce, promotional brochures on the products or services commercialized under the opponent’s trade name, other promotional material such as TV or radio spots displaying or making heard the trade name; pictures of the business premises of the opponent labelled with the trade name, with the exception – as compared to proof of use of a trade marks that the display of actual product – labelled with the trade name is of no relevance. d) Corporate names. The corporate name, or company name, is the official designa- 289 tion of an incorporated undertaking and, in most cases, registered in the competent national commercial register.410 While an extract from the relevant commercial register (along with a translation in the applicable language of the opposition proceedings) may be sufficient for the admissibility of the opposition under Art. 8 (4) CTMR, such evidence, by itself, is insufficient to prove that the company name was used in the course of trade411, as the condition ‘sign used in the course of trade’ must be interpreted in the light of Community law412. Even if the opponent has, in accordance with the law of the member state governing the sign, acquired exclusive rights plainly enforceable against subsequent trade marks on the basis of a registration in the commercial register by itself, this does not exempt it from the burden resulting from Community law of proving that the sign has been used in the course of trade of more than local significance prior to the filing of the contested CTM application under Art. 8 (4) CTMR. In other words, the mere fact that the sign is registered in accordance with the requirements of the respective national law is not as such sufficient for an opposition to succeed under Art. 8 (4) CTMR. The use requirement as stipulated under this provision applies independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a company or commercial name alone.413 e) Domain names. Domain names are combinations of typographical characters 290 corresponding to one or several alphanumeric IP-addresses used to identify a particular website on the internet. In this respect, domain names function as addresses. At the same time, it is recognized in the jurisprudence of most EU member states that domain names may serve as business identifiers414 and have also been recognized by OHIM as signs eligible as earlier rights under Art. 8 (4) CTMR.415 f) Titles. Titles of newspapers, magazines, films, books or comparable categories of 291 work are eligible as signs under Art. 8 (4) CTMR if they are protected as business identifiers under the applicable national law.416 As with other signs used in the course of trade, evidence must be brought forth that the title has been used in the course of trade, which requires, in the first place, that the work to which the title relates must have 410

OHIM, Guidelines for Examination in the Office, Part C, Section 4, 3.2.3.2, p. 8 et seq. OHIM Dec. of 8/9/2011 – R 0021/2011-1 – Marionnaud Parfumeries, mn. 21. 412 GC Case T-318/06 to T-321/06 Alberto Jorge Moreira da Fonseca v OHIM [2009] ECR II-00663, mn. 33 et seq.; GC Case T-485/07 Olive Line International SL v OHIM [2011] ECR II-00280, mn. 50. 413 OHIM Dec. of 8/9/2011 – R 0021/2011-1 – Marionnaud Parfumeries, mn. 23. 414 Jaeger-Lenz/Link, in: Hasselblatt (ed.), Gewerblicher Rechtsschutz, 4th ed., § 32, mn. 165; BGH Case I ZR 65/02 GRUR 2005, 430 – mho.de, for Germany. 415 OHIM Dec. of 7/12/2011 – R 0275/2011-1 – lucky-pet.de, mn. 29 et seq.; OHIM Dec. of 22/7/2011 – B 1719375 – helloresto.fr, p. 6 et seq., which gives a good indication as to what type of evidence is to be brought forth in order for OHIM to accept a domain name as earlier sign on which an opposition under Art. 8 (4) CTMR can be based; negative examples as to how a substantiation should not be made is OHIM Dec. of 7/12/2011 – R 0275/2011-1 – lucky-pet.de. 416 For example in Germany by § 5 (3) MarkenG; GC Case T-435/05 Danjaq LLC v OHIM [2009] ECR II-02097, mn. 42 et seq. 411

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been placed on the market, or in cases where the title relates to a service (such as a television program) that the service must have been made available to the public.417 Further, the opponent has to specify the extent of use of the title in the markets concerned, for example – as in the case of films – by providing programming details of the film, either for cinemas or television, and specifying the length of time over which the film was distributed.418 For the case of newspapers and magazines, according evidence has to be provided by substantiating details on the extent of the circulation figures of copies sold per year, samples and cover pages of such publications over a significant period of time.419 Merely submitting extracts from a website in which the title of work was mentioned or statements of employees of the opponent cannot constitute sufficient evidence to substantiate use of the title in the course of trade.420 Information published on another website regarding turnover of products or services with the title is also insufficient per se as it is too general.421 The evidence material must show, in its totality, that the title has been used as an indicator of the commercial origin of the goods or services and not as an indicator of the artistic origin of the work.422 g) Geographical indications. Geographical indications which provide information on the geographical origin of the goods or services from a particular region or locality are eligible as signs under Art. 8 (4) CTMR as well. They may take the form, more specifically, of ‘appellations of origin’, where there exists a particular link between the geographical origin and the quality or other characteristics of the products or services, or may be – more general – geographical indications, where such a special link between origin and quality or reputation is not present.423 Geographical indications may be protected at European Community level pursuant to specific legislation for the relevant sector, which is most common in the area of wine and sparkling wine424, spirits425 and all types of food stuffs.426 Certain geographical indications of spirit drinks are protected under Regulation (EC) No. 110/2006 of the European Parliament and of the Council of 15 January 2008.427 293 Some member states are party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (‘Lisbon Agreement’).428 Where an appellation of origin has been registered in accordance with the Lisbon Agreement and where the effects of such an appellation of origin have not been declared definitely to be invalid in a state, account must be taken within an opposition under Art. 8 (4) CTMR of the relevant law and the registration made under the Lisbon Agreement without having the power to call into question the fact that the claimed 292

417

OHIM, Guidelines for Examination in the Office, Part C, Section 4, 3.2.3.4, p. 9 et seq. GC Case T-435/05 Danjaq LLC v OHIM [2009] ECR II-02097, mn. 45. 419 OHIM Dec. of 12/1/2012 – R 0181/2011-1 – Art, mn. 30 et seq. 420 GC Case T-435/05 Danjaq LLC v OHIM [2009] ECR II-02097, mn. 45; GC Case T-303/03 Lidl Stiftung & Co. KG v OHIM [2005] ECR II-01917, mn. 42 et seq. 421 GC Case T-435/05 Danjaq LLC v OHIM [2009] ECR II-02097, mn. 45; GC Case T-303/03 Lidl Stiftung & Co. KG v OHIM [2005] ECR II-01917, mn. 42 et seq. 422 GC Case T-435/05 Danjaq LLC v OHIM [2009] ECR II-02097, mn. 25 et seq. 423 OHIM, Guidelines for Examination in the Office, Part C, Section 4, 3.2.4, p. 10 et seq. 424 Regulation 1234/2007. 425 Regulation 110/2008. 426 Regulation 510/2006. 427 And validated under this regulation for the geographical indication ‘Cognac’ by CJ Cases C-4/10 and C-27/10 Buerau National Interprofessionnel du Cognac v Gust.Ranin OY [2011] ECR I-06131. 428 Of 31 October 31, 1958 an as revised at Stockholm on 14 July 1967 and amended on 28 September 1979. 418

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earlier right was correctly registered as appellation of origin.429 Appellations of origin may also be protected under bilateral conventions.430 The legislations of the EU member states and the EU as legislative body provide for 294 various means of protecting geographical indications. In order to be eligible under Art. 8 (4) CTMR, the geographical indication must be vested in a precise class of users that has a proprietorial-type interest in the right to prevent use of that geographical indication.431 The reason for this is the fact that Art. 8 (4) CTMR is a relative ground for opposition comparable to Art. 8 (1) and (3) CTMR, granting the right to opposition to proprietors of marks or earlier rights so that the earlier right in a geographical indication must have the effect of a trade mark right. Therefore, such regulations protecting geographical indications do not come within the meaning of Art. 8 (4) CTMR which are part of the law providing protection of competitors and consumers against unfair or misleading business practices and will provide for a right to prevent the use of a geographical indication in cases where that is misleading to anyone with a standing to sue under this rule, but not to a particular set of proprietors only.432 To the extent such regulations protect general consumer interests as opposed to proprietorial interests, they cannot be invoked under Art. 8 (4) CTMR.433 After the introduction of Council Regulation (EC) No. 5010/2006 of 20 March 2006 295 replacing Council Regulation (EEC) No. 2081/92 of 14 July 1992, the most frequent source of protection of geographical indications is registration via said Council Regulation. Art. 14 of Council Regulation (EC) No. 510/2006 provides that ‘where a designation of origin or geographical indication is registered in accordance with this regulation, the application for registration of a trade mark corresponding to one of the situations referred to in Art. 13 and relating to the same type of product shall be refused, provided that the application for registration of the trade mark was submitted after the date of the publication provided for in Art. 6 (2). Trade marks registered in breach of the first subparagraph shall be declared invalid.’ In its defence to such geographical indication, the applicant of a CTM application 296 may assert that the geographical indication is invalid on the grounds that it has become generic in respect of the goods in question or that the designation of origin does not meet the conditions provided for in the regulation.434

429

GC Case T-225/06 Budeˇjovicky´ Budvar, národní podnik v OHIM [2008] ECR II-03555, mn. 19. Such as the Agreement on the protection of geographic denominations of origin and other geographic designations between Germany and France of 8 March 1960, BGBl. 1961 II, p. 22; Agreement on the protection of geographic denominations of origin and other geographic designations between Germany and Greece of 16 April 1964, BGBl. 1965 II, p. 176; Agreement on the protection of geographic denominations of origin and other geographic designations between Germany and Italy of 23 July 1963; BGBl. 1965 II, p. 156. 431 OHIM, Guidelines for Examination in the Office, Part C, Section 4, 3.2.4.3, p. 12. 432 Such as the geographical indication ‘Solingen’ under the Verordnung zum Schutz des Namens ‘Solingen’ of 16 December 1999, BGBl. I S. 3833, according to which the name ‘Solingen’ may be used only for such cutting ware which has more or less entirely been produced within the area of Solingen, see Piper/Ohly/Sosnitza, Gesetz gegen den unlauteren Wettbewerb, 5. Auflage 2010, mn. 389; or ‘Lu¨becker Marzipan’, which is protected under § 5 German Act against Unfair Competition against being used for this marzipane confectionery products if it has not been produced in Lu¨beck, Piper/Ohly/Sosnitza, Gesetz gegen den unlauteren Wettbewerb, § 5, mn. 381, as long as the indication has not become generic for a particular type of product, now under protected under Council Regulation (EC) No. 510/2006 of 20 March 2006 due to registration in the Register of Geographical Indications of Origins at the Commission. 433 OHIM, Guidelines for Examination in the Office, Part C, Section 4, 3.2.4.1, p. 10 et seq. 434 CJ Case C-478/07 Bude ˇjovicky´ Budvar, národní podnik v Rudolf Amersin [2009] ECR II-07721, ruling 1. mn. 2; GC Case T-291/03 Consorzio per la Tutela del Formaggio Grana Padano v OHIM [2007] ECR II-03081, mn. 58, but not holding this condition to be met for ‘Grana Padano’, mn. 89. 430

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h) Passing-off. A somewhat different type of earlier right which is recognized as earlier right allowing an opposition under Art. 8 (4) CTMR is ‘passing-off’, which is caught under Art. 5 (4) of the British Trade Marks Act 1994 providing that ‘a trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented: a) by virtue of any rule of law (in particular, the law of passingoff) protecting an unregistered trade mark or other sign used in the course of trade’. 298 In order to obtain, by virtue of this earlier right of passing off, the refusal to registration of a contested CTM application, the opponent must establish, in accordance with the legal rules governing actions for passing-off laid down by the laws of the United Kingdom, that three conditions are satisfied: the goodwill acquired; misrepresentation; and damage caused to that goodwill.435 299 The property protected by an action for passing-off is not property in a word or name, which third parties are restrained from using, but the very customer base which is undermined by the usage in question, since the reputation of a trade mark is the power of attraction which brings in customers and the criterion which distinguishes an established business from a new business.436 It follows from these requirements under the British Trade Marks Act that, in order to decide an opposition based on passing-off under Art. 8 (4) CTMR, the Office limits itself to merely a making a formal comparison of the two signs at issue without taking account of the possible existence of an independent reputation for the earlier right.437 297

V. Of more than mere local significance Just as the requirement of ‘earlier right used in the course of trade’, the condition of ‘more than mere local significance’ has to be interpreted in the light of Community law.438 301 The requirement of ‘more than mere local significance’ consists of two components which have to be substantiated, the first component being the ‘significance’ of the use, and the second being ‘of more than mere local’. 300

1. Significance 302

As far as ‘significance’ is concerned, this addresses the economic dimension that the use of the earlier right has taken. It is assessed in view of the length of time for which the sign has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, and the exposure given to the sign, for example, through advertising, also on the internet. This has the rationale to restrict the number of conflicts between signs, by preventing an earlier sign, which is not sufficiently important or significant, from making it possible to challenge either the registration or the validity of a CTM.439 435 GC Case T-303/08 Tresplain Investments Ltd. v OHIM [2010] ECR II-05659, mn. 92 et seq.; in which case an application for a Community trade mark was refused based on passing-off as earlier right. 436 GC Cases T-114/07 and T-115/07 Last Minute Network Ltd. v OHIM [2009] ECR II-01919, mn. 61. 437 GC Cases T-114/07 and T-115/07 Last Minute Network Ltd. v OHIM [2009] ECR II-01919, mn. 101, where it was deemed that OHIM had incorrectly applied the provision. 438 GC Cases T-318/06 to T-321/06 Alberto Jorge Moreira da Fonseca v OHIM [2009] ECR II-00663, mn. 33 et seq.; GC Case T-581/11 Dimian AG v OHIM [not published in the ECR], mn. 23; GC Case T279/10 K-Mailorder v OHIM [not published in the ECR], mn. 17. 439 GC Cases T-318/06 to T-321/06 Alberto Jorge Moreira da Fonseca v OHIM [2009] ECR II-00663, mn. 36 et seq.

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The significance of a sign is not a mere function of the geographical extent, since, if 303 that were the case, a sign whose protection is not merely local could, by virtue of that fact alone and even if of only marginal economical significance and presence, prevent registration of a CTM.440 It follows that, in order to be capable of preventing registration of a new sign for the entire European Union, the sign relied on in an opposition must actually be used in a sufficiently significant manner in the course of trade and account must be taken of the duration and intensity of the use of that sign as a distinctive element vis-a`-vis its addressees, namely purchasers and consumers as well as suppliers and competitors, in advertising and commercial correspondence.441 It is not possible to provide any fixed figures or a guideline on the degree of 304 significance of use that is necessary in order to establish an earlier right under Art. 8 (4) CTMR, as the significance of use must be seen in relation to the concerned market. In the market for ‘all terrain vehicles’ in the Czech Republic, 230 invoices amounting to turnovers of several millions of Czech Kroner was considered sufficient, along with catalogues and magazines and a list of distributors.442 In the market for knives and cutting utensils in France, evidence of a rapid expansion from five employees in 1987 to one hundred employees in 1998 along with sales figures of 4.5 million Euro in 1998 to ten million Euro in 2003 was held, amongst others, to be convincing.443 In a case involving the geographical indication ‘Porto’ for wines of that name, no particular sales figures were taken into consideration, but evidence consisting of printouts from a Portuguese website directly or indirectly advertising port wine, along with extracts of the decree-laws for protecting the geographical indication ‘Port’ and a registration certificate of a company name and appellation of origin spanning over thirty years had been considered sufficient.444 In the UK market for construction equipment and services, a marketing brochure stating activities for over thirty years, three declarations from distributors referring to experience with the sign spanning over more than thirty years, evidence of a country-wide distribution and sales network and one invoice for an amount of 13.200 pounds sterling, taking into consideration also a declaration on the sales figures ranging from five million in 2000 to two million in 2005, was considered enough in the overall assessment.445 In the UK financial services market, evidence of contracts in which the opponent was involved under his sign relating to the acquisition, lease-back and management of nation-wide property portfolios and an equity capital under management in excess of one billion US Dollar as supported by a witness statement was held significant enough.446 In the market for rice in the UK, sales of rice under the earlier mark in a consistent way over a period of eight years prior to the date of application in quantities of between 42 and 84 tons per year were not regarded as totally insignificant.447 However, sales and advertising catalogues are not sufficient, if there is no evidence 305 on the products sold, the turnover and the market position, in particular where there is a gap between the last date of validity of the catalogue and the date of filing of the opposition or invalidity request of several months.448 440 CJ Case C-96/09 P Anheuser Busch v Budejovicky Budvar [2011] ECR I-02131, mn. 158; Goldmann, Der Schutz des Unternehmenszeichens, § 11, A. IV. 2. b. 441 CJ Case C-96/09 P Anheuser Busch v Budejovicky Budvar [2011] ECR I-02131, mn. 159 et seq. 442 OHIM Dec. of 17/3/2011 – R 1529/2010-1 – Gladiator, mn. 24 et seq. 443 OHIM Dec. of 1/6/2011 – R 18/2007-1 – Forge de Laguiole, mn. 56 et seq. 444 OHIM Dec. of 22/7/2009 – B 998510 – Porto, p. 8 et seq. 445 OHIM Dec. of 20/10/2008 – R 66/2008-2 – Bradbury, mn. 21 et seq. 446 OHIM Dec. of 1/4/2011 – R 354/2009-2 – Fortress, mn. 49 et seq. 447 GC Case T-303/08 Tresplain Investments Ltd. v OHIM [2010] ECR II-05659, mn. 112. 448 GC Case T-581/11 Dimian AG v OHIM [not published in the ECR], mn. 26, 39.

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2. Of more than mere local As far as the requirement ‘of more than mere local’ is concerned, this addresses the geographical dimension of the use of the earlier sign. This requirement has to be viewed in conjunction with Art. 111 CTMR, according to which proprietors of rights of a mere local significance retain their exclusive rights under the applicable national law without the right to oppose or seek to invalidate a conflicting CTM of later priority. Where the geographical extent of the protection of a sign is merely local, the sign must indeed be regarded as of mere local significance. It follows that, in order to have the significant effect of preventing the registration of a new sign for the entire Community, the sign relied on in an opposition must – besides actually being used in a sufficiently economically significant manner in the course of trade – in its geographical extent not be merely local. This implies, where the territory in which that sign is protected may be regarded as other than local, the sign must have been used in a substantial part of that territory.449 307 In this assessment, regard must be held also of the particularities of the market concerned. Use in even one city may be sufficient, if that city is the focus point of the major activities in the market and if customers beyond that city are being served from there.450 Art. 8 (4) CTMR requires that the sign concerned be used in the territory in which it is protected and that use in a territory other than that in which it is protected may not suffice, where there is no use at all in the territory of protection.451 308 The condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. The significance of the sign cannot therefore be inferred from a cumulative assessment of the use of the sign in more than one relevant territory.452 For the purposes of Community law, the sign in question is of more than mere local significance in the relevant territory where its impact is not confined to a small part of that territory, as is generally the case with a town or a province. Yet it is not possible to establish a priori, in an abstract manner, in which part of a territory it must be used to prove that a sign is of more than mere local significance. Therefore, the assessment of the sign’s significance in the geographical aspect must be made in concreto, according to the circumstances and market conditions of each case.453 306

3. Use in part of a member state As Art. 8 (4) CTMR is to be interpreted autonomously according to Community law, an earlier right does not need to have been used in the entire member state but a substantial part of it is sufficient even in a case where national law may require the sign to have been used in the entire territory, i. e. Art. 8 (4) CTMR is not to be interpreted in the light of the law of the national member state in this respect.454 310 In a case, in which the owner of the earlier sign had sales amounting to DM 200,000 over a period of four years, with customers in about ten cities across the territory of the 309

449

CJ Case C-96/09 P Anheuser Busch v Budejovicky Budvar [2011] ECR I-02131, mn. 159. See for example London with regard to financial services, considering that London is the seat of nearly all governmental institutions and bodies of the UK and home to the City of London which is one of the leading financial centers of the word, OHIM Dec. of 1/4/2011 – R 0354/2009-2 – Fortress, mn. 49. 451 CJ Case C-96/09 P Anheuser Busch v Budejovicky Budvar [2011] ECR I-02131, mn. 162. 452 CJ Case C-96/09 P Anheuser Busch v Budejovicky Budvar [2011] ECR I-02131, mn. 163. 453 GC Cases T-318/06 to T-321/06 Alberto Jorge Moreira da Fonseca v OHIM [2009] ECR II-00662, mn. 41. 454 GC Case T-507/11 Peek & Cloppenburg KG v OHIM [not published in the ECR], mn. 54. 450

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Federal Republic of Germany, the sign was held to be of more than more local significance455 or in the case in which the opponent provided evidence that the company was operating from sites in various cities in East and West Germany being able to provide the relevant goods (flour) to each location in Germany, which was evidenced by a press release and press clippings from German newspapers, was considered of more than mere local significance.456 In a case, in which evidence was provided of the incorporation of a sign in one particular city, the market being mail order services, and evidence on the distribution of several million printed catalogues were provided, but evidence was lacking on the territorial scope of distribution of these catalogues, as there were no invoices provided directed to customers outside of the region of the seat of the opponent, the requirement was not considered to have been met.457 In a case where an earlier right in Portugal was claimed for optical products and services, evidence of use for the sign to designate a business establishment in the Portuguese town of Vila Nova de Famalicao with 120,000 inhabitants, was not considered to pass the threshold of ‘more than mere local’.

VI. Acquisition of right prior to the CTM application The earlier right on which the opposition under Art. 8 (4) CTMR is based must have 311 been acquired prior to the filing date of the contested CTM application, Art. 8 (4)(a) CTMR. Seniority claims, even if they relate to the member state where the earlier right is claimed to exist, are not relevant.458 For the determination of the priority of the right under Art. 8 (4) CTMR of the opponent, the relevant date of acquisition of the right under the national law as emanating from the evidence provided by the opponent is decisive.

VII. Rights arising from the sign relied of According to Art. 8 (4)(b) CTMR the earlier right must confer on its proprietor the 312 right to prohibit the use of a subsequent trade mark, which must be assessed in particular according to the national rules advanced in support of the opposition and the judicial decisions delivered in the member state concerned.459 The OHIM cannot autonomously determine whether the opponent is owner of the older non-registered right but has to take into consideration and assess, whether the opponent has acquired rights in the sign according to the legal requirements of the member state at issue.460 The burden of proof that the condition is met lies with the opponent before 313 OHIM.461 Accordingly, it is up to the opponent to provide factual evidence on the law of the member state, in which the opponent claims that the earlier right exists to the extent this law confers on the proprietor of the earlier right the right to prohibit use of 455

GC Case T-534/08 Granuband BV v OHIM [2010] ECR II-00212, mn. 20. GC Case T-430/08 Grain Millers, Inc. v OHIM [2010] ECR II-00145, mn. 47, for further details on the evidence material see Opposition Dec. of 29/1/2007 – B 815359 – Grain Millers, p. 6 et seq. 457 GC Case T-279/10 K-Mailorder GmbH & Co. KG v OHIM [2011] ECR II-00283, mn. 27 et seq., in particular 30. 458 OHIM, Guidelines for Examination in the Office, Part C, Section 4, 3.4, p. 24. 459 CJ Case C-96/09 P Anheuser Busch v Budejovicky Budvar [2011] ECR I-02131, mn. 188, 190. 460 GC Case T-304/09 Tilda Riceland v OHIM [not published in the ECR], mn. 28. 461 CJ Case C-96/09 P Anheuser Busch v Budejovicky Budvar [2011] ECR I-02131, mn. 189. 456

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the sign in a subsequent trade mark.462 The law of the member state has, as of recently been treated entirely as a question of fact to be established in inter partes proceedings under Art. 76 CTMR by the parties, and the principle of iura novit curia did not apply to a substantiation of the claim under the law of the member states prohibiting the use of the subsequent trade mark.463 This has changed to some extent now following the decision in the case Representation of a Hand.464 OHIM has now been afforded a limited degree of own competence of the assessment of the relevant national law,465 which has been documented by OHIM by a clarification of its Guidelines for Examination in the Office, Part C, Section 4 as of 1 December 2014. 314 The applicant must still provide particulars showing that he is entitled under the national law applicable to lay claim to that right, not only with details showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking recognition of the earlier sign, in order to be able to have the use of a Community trade mark by virtue of an earlier right, but also particulars establishing the content of that law.466 Where that is done the competent Opposition Division must effectively assess the authority and scope of the particulars submitted by the applicant in order to establish the content and ensure the correct application of the law involved467. The OHIM has the power to verify, by whatever means it deems adequate, the content, conditions governing the application and the scope of the provisions of the applicable law relied upon.468 Thereafter, OHIM may introduce new and/or additional elements if it is of the opinion that the parties’ (or one of the parties’) interpretation or application of the national law was inaccurate. But this does not discharge the opponent from adducing the relevant law in the first place.469 The General Court has jurisdiction to conduct a full review of the legality of OHIM’s assessment of the particulars submitted by an opponent in order to establish the content of the national law whose protection he claims.470 315 The information on the applicable law must allow OHIM to understand and apply the content of the law of the member state, the conditions for obtaining protection and the scope of this proteetion, and allow the applicant to exercise the right of defense. For this, it may be useful to submit evidence of relevant case law, commentaries and jurisprudence interpreting the law invoked.471 316 Accordingly, whereas the European standard and assessment of a requirement under European law applies to ‘in the course of trade’ and ‘of more than mere local significance’, the following requirements are considered as facts that have to be adduced according to the law of the member state of the earlier right by the opponent: the national regulations providing for the protection of the sign, the requirements for obtaining such a protection, the existence of a right or title to the sign; whether the 462

GC Case T-579/10 macros Consult GmbH v OHIM [not published in the ECR], mn. 65. GC Case T-579/10 macros Consult GmbH v OHIM [not published in the ECR], mn. 63 Goldmann, Der Schutz des Unternehmenszeichens, 3rd ed., § 11, mn. 10. 464 GC Case C-530/12 P OHIM v National Lottery Commission [not published in the ECR], mn. 34 et seq. 465 GC Case C-530/12 P OHIM v National Lottery Commission [not published in the ECR], mn. 37. 466 GC Case C-263/09 P Edwin Co. Lid. v OHIM [2011] ECR I-05853, mn. 50; CJ Case 530/12 P OHIM v National Lottery Commission [not published in the ECR], mn. 34. 467 CJ Case C-263/09 P Edwin Co. Lid. v OHIM [2011] ECR I-05853, mn. 51. 468 CJ Case 530/12 P OHIM v National Lottery Commission [not published in the ECR], mn. 44 et seq. 469 OHIM, Guidelines for Examination in the Office, Part C, Section 4, 4.1., p. 27 with reference to OHIM Dec. of 2.6.2014 – R1587/2013-4 – GROUP, mn. 29; OHIM Dec. of30.6.2014 – R2256/2013-2 ENERGY, mn. 26. 470 CJ Case 263/09 PEdwin Co. Lid. v OHIM [2011] ECR I-05853, mn. 52. 471 OHIM, Guidelines for Examination in the Office, Part C, Section 4, 4.1, p. 26. 463

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right has been validly acquired (such as through use or reputation); the conditions of legal protection (e. g. due to misleading use, use of identical or similar signs, likelihood of confusion) and the scope of protection (right to prohibit use etc.).472

VIII. National regulations in the Member States For an overview on the national regulations in the Member States for the protection 317 of signs without registration as a trade mark under the relevant national legislations, a table on national rights that constitute ‘earlier rights’ in the sense at Art. 8 (4) CTMR is provided for information purposes at the end of the Guidelines.473

IX. Procedural challenges On a practical note, it must be stressed that opposition procedures under Art. 8 (4) 318 CTMR present exceptional challenges to the parties, with the effect that hardly any of the relatively few oppositions filed under this rule have so far been successful in cases where the earlier right claimed was a business name protected under national law. In order to substantiate the existence and priority and – thereafter – continuous use 319 of the sign conclusive pieces of evidence have to be adduced, which all have to be translated into the relevant language of proceedings. This applies also and in particular to the legal texts and judgments upon which the argumentation relies that the earlier right under Art. 8 (4) CTMR is protected under national law. Even if the CJ meanwhile has granted OHIM a certain competence and discretion as to the examination of national law474 the opponent still has to provide evidence for the following chain of arguments: – the legal texts allowing for the protection of an earlier name or other right under Art. 8 (4) CTMR according to national law; – the possibility to validate, under national law, claims based on that right through use against younger trade marks, which entails the presentation of relevant case law (ideally earlier national titles for injunction obtained against third parties for infringement of the earlier right in question) and literature of the law of the member state; – the priority and continuous use of the earlier right through use in the relevant business sector for which protection of the earlier right is claimed; – the territorial scope of the use made and – its significance from a commercial point of view, all of this before the filing date of the CTM application; – the particularities under national law relevant for assessing claims and likelihood of confusion.475 472

OHIM, Guidelines for Examination in the Office, Part C, Section 4, 4.1.2., p. 26 et seq. Part C, Opposition, Section 4, Rights under Art. 8 (4) CTMR, in force since 1 December 2014. 474 CJ Case C-530/12 P OHIM v National Lottery Commission [not published in the ECR], mn. 37 et seq., 46. 475 Which, by way of example, may be somewhat different as compared to an assessment of likelihood of confusion under the CTMR, for example the assessment of claims for injunction based on §§ 5, 15 German Trade Mark Act which does not entirely correspond to the evaluation of trade mark claims under § 14 MarkenG or Art. 8 (1) CTMR. 473

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Assembling this kind of evidence will cost considerable time of the relevant personnel in charge at the opponent for collecting the evidence, of the lawyer for assembling the material in a conclusive manner and properly presenting the case, and the costs of the translation for preparing all evidence material in the proper language. Therefore, opponents should carefully assess in advance of filing the opposition whether the high threshold for invoking an earlier right under Art. 8 (4) CTMR can realistically be met.

J. Article 8 (5) 321 Specific Bibliography: A. Bailey, ‘Trade mark functions and protection for marks with a reputation’, JIPLP 2013 8 (11), pp. 868–875; Ch. Gielen, ‘Trademarks Dilution in the European Union’, in D. Bereskin (ed.), International Trademarks Dilution, Thomson West 2013, pp. 203–240; Ch. Gielen, ‘Harmonisation of trade mark law in Europe: the first trade mark harmonisation Directive of the European Council’, EIPR 1992, 14 (8), pp. 262–269; H. Carty, ‘Do marks with a reputation merit special protection?’, EIPR 1997, 19 (12), pp. 684–688; S. Casparie-Kerdel, ‘Dilution disguised: has the concept of trade mark dilution made its way into the laws of Europe?’, EIPR 2001, 23 (4), pp. 185–195; C. Davies, ‘Dilution revisited: a heavy handed approach by the CJ?’, JIPLP 2014, 9 (2), pp. 97–99; J. Davis, ‘To protect or serve? European trade mark law and the decline of the public interest’, EIPR 2003 25 (4), pp. 180–187; V. Di Cataldo, ‘The trade mark with a reputation in EU law – some remarks on the negative condition “without due cause”’, IIC 2011, 42 (7), pp. 833–845; G. Dinwoodie, ‘Dilution as Unfair Competition: European Echoes’, Oxford Legal Studies Research Paper No. 37/2013; K–H. Fezer, ‘Trademarks Protection under Unfair Competition Law’, IIC 1988, pp. 192–215; A. Kur, ‘Trade Marks Function, Don’t They?’, in CJEU Jurisprudence and Unfair Competition Principles, Max Planck Institute for Innovation & Competition Research Paper No. 14–05/2014; S.M. Maniatis, A. Kamperman Sanders, ‘A consumer trade mark: protection based on origin and quality’, EIPR 1993, 15 (11), pp. 406–415; S. Middlemiss, S. Warner, ‘The protection of marks with a reputation: Intel v CPM’, EIPR 2009, 31 (6), pp. 326–336; Ch. Morcom, ‘Extending protection for marks having a reputation: what is the effect of the decision of the European Court of Justice in Davidoff v Gofkid?’, EIPR 2003, 25 (6), pp. 279–282; A. Niedermann, ‘Surveys as Evidence in Proceedings before OHIM’, IIC 2006, 37, pp. 260–276; M. Senftleben, ‘The Trademarks Tower of Babel – Dilution Concepts in International, US and EC Trademarks Law’, IIC 2009, 40 (1), pp. 45–77; I. Simon Fhima, Trademarks Dilution in Europe and the United States, Oxford University Press 2011; I. Simon Fhima, ‘Exploring the Roots of European Dilution’, Intellectual Property Quarterly 2012, pp. 25–38.

I. Historical background The introduction of trade mark protection beyond confusion-based provision is one of the milestones in the development of the EU trade mark law. The extensive trade mark protection can be considered as the main success factor of the system and an achievement of the CTMR drafters, whose aim was to create a system that could be an effective alternative to national trade mark laws. The scope of the extensive protection was influenced by legal systems that provided extensive protection at the time the CTMR was being drafted. 323 From the early stage, in contrast to the TMD draft, the CTMR draft conferred extended protection to trade marks with repute. Although the Commission proposal for regulation476 did not provide for relative ground of registration refusal of a mark encroaching upon an earlier trade mark with reputation, it provided for the following infringement clause: ‘the proprietor shall be entitled to prohibit any third party from 322

476 Proposal for a first Council Directive to approximate the laws of the Member States relating to trade-marks, Proposal for a Council Regulation on the Community trade-mark, presented by the Commission to the Council on 25 November 1980, COM (80) 635 final, Bulletin of the European Communities, Supplement 5/80.

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using in the course of trade, save with his consent 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 Community trade-mark is of wide repute and use of that sign is detrimental to that repute’. The most important change of the European Parliament opinion on the Regulation 324 proposal477 was the extension of the infringement clause to cover the use of the mark that ‘takes unfair advantage of or is detrimental to the distinctiveness or the repute of the trade mark’. Although the basic elements of the standard were developed during works on the regulation, the final contents were settled during the Council works on the directive. This final wording, further applied in CTMR No. 40/94 and, subsequently, in CTMR No. 207/2009, is a combination of the amended proposal of the regulation, the opinion of the European Parliament and new elements introduced during the Council negotiations – the replacement of ‘wide repute’ with ‘reputation’ and the introduction of ‘without due cause’ condition. The result of this closely interconnected legislative process is the analogous contents 325 of protection provisions of the TMD and the CTMR478. As a further consequence, the legislative motives behind the TMD drafting were also transferred to the CTMR. It is worth noting that the main reference point for the drafters was Benelux law since the intention was not to undermine the Benelux trade mark union and to provide for extensive trade mark protection. Benelux law provided for protection of trade marks beyond confusion-based, goods similarity approach that was apparent in the leading case of the Benelux Court of Justice Claeryn/Klarein479, which can be described as a representative tarnishment case (see below Sec. V.2.). In this light, ‘reputation’ is clearly seen as a compromise between extensive protection beyond similarity of goods under Benelux law not conditional on the repute480 and the initially proposed ‘wide repute’ condition that corresponds with US trade mark law and the protection of well-known marks under the Paris Convention. The introduction of negative condition ‘without due cause’ was also determined by the Benelux countries delegations insisting on standards developed under Benelux law481. The expansion of the provision beyond the detrimental effect of applications diluting 326 earlier trade marks and the inclusion of the injury consisting in unfair advantage taken of the distinctive character or the repute of the earlier mark can be interpreted as influence of national laws on unfair competition, in particular of German law as interpreted by the Federal Supreme Court (Bundesgerichtshof) in 1980s482, in particular

477

Official Journal of the European Communities No C 307/44. Explicitly e. g. T-8/03 El Corte Ingle´s v OHIM (EMILIO PUCCI) [2004] ECR II-04297, mn. 67. 479 Benelux Court of Justice judgment of 1 March 1975 in Case A 74/1 Lucas Bols v. Colgate-Palmolive, Jurisprudence of the Benelux Court of Justice 1975, p. 472, cited by AG Jacobs in CJ Case C-408/01 Adidas I [2003] ECR I-12537, mn. 38. 480 However, it was noted that the reputation condition was implied in Benelux law, see S. CasparieKerdel, Dilution disguised: has the concept of trade mark dilution made its way into the laws of Europe?, EIPR 2001, 234), p. 189. 481 H. R. Furstner and M. C. Gueze, Scope of protection of the trade mark in the Benelux countries and EEC harmonisation, ECTA Newsletter (1989) 15, pp. 10–12; Ch. Gielen, Harmonisation of trade mark law in Europe: the first trade mark harmonisation Directive of the European Council, EIPR 1992, 14 (8), pp. 262–269. 482 AG Ja ¨a¨skinen opinion in C-323/09 Interflora [2011] ECR I-08625, mn. 39, I. Simon Fhima, Exploring the Roots of European Dilution, Intellectual Property Quarterly 2012, pp. 25–38. For comprehensive overview of BGH cases see K-H, Fezer, Trademarks Protection under Unfair Competition Law, IIC 1988, p. 192. 478

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Rolls Royce case483, which is a representative case for blurring, and DIMPLE484 that can be considered as a prototype of unfair advantage case. 327 US law was another factor that influenced the drafters. The emergence of the concept of trade marks protection beyond confusion provisions is usually connected with an article of American jurist Frank Schechter485. Basing his concept on the German Odol case, Schechter justified the protection of ‘arbitrary, coined or fanciful marks’ (rather than famous marks) against ‘gradual whittling away or dispersion of the identity and hold upon the public mind’, now known as blurring (see below Sec.V.1). Current dilution provisions of US law486 provide protection only for famous marks that are widely recognized by the general consuming public of the US as a designation of source of the goods or services of the mark’s owner. Two forms of infringement are specified: ‘dilution by blurring’ which means association arising from similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark, and ‘dilution by tarnishment’ which is defined as association arising from similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. Taking into account the legal terms applied in the CTMR, it can be assumed that the system’s main prototype was US trade marks law. However, according to A. v. Mu¨hlendahl (a member of the German delegation to the Council’s Working Party), US law has not significantly affected the drafting of the CTMR487. Besides its terminology, US law had and still has little influence on EU trade mark law. Although US law is sometimes referred to in AG opinions, this kind of references are a part of conceptual analysis, rather than the effect of close examination of current US trade marks practice488. 328 Currently, the standard of protection of trade marks with reputation can be considered as developed and having more and more specific contents, with the extreme example of the Davidoff II case, where the CJ took a purposive approach to the protection of trade marks with reputation disregarding the wording and travaux pre´paratoires489. In recent years, the only significant ‘external’ influence can be traced back to national laws on unfair competition490.

483 BGH judgment of 9 December 1982 in case I ZR 133/80 Rolls Royce, GRUR 1983, 247, cited by AG Jacobs in CJ Case C-408/01 Adidas I, mn. 37, 39. 484 BGH judgment of 29 November 1984 in case I ZR 158/82 DIMPLE, GRUR 1985, p. 550. 485 Frank I. Schechter, The Rational Basis of Trademarks Protection, Harvard Law Review, 1927, p. 813 cited by: AG Jacobs in CJ Case C-408/01 Adidas I, mn. 37, AG Sharpston in CJ Case C-252/07 Intel [2008] ECR I-08823 (with an analysis of the significance of the influence), mn. 30–35, AG Ja¨a¨skinen in CJ Case C-323/09 Interflora, footnote 39. 486 The federal protection of trade marks against dilution was introduced in the Federal Trademarks Dilution Act of 1995 (FTDA) that added a new section 43c) into the Lanham Act (Trademarks Act of 1946). Due to the problems with the FTDA judicial application, the act was extensively amended by Trademarks Dilution Revision Act of 2006. 487 A. von Mu ¨ hlendahl, ECTA Conference of 27 May 1988 ‘The Community Trade Mark – a Conference and Consultations between Legislators and Practitioners’; I. Simon Fhima, Trademarks Dilution in Europe and the United States, p. 11. 488 AG Sharpston in CJ Case C-252/07 Intel [2008] ECR I-08823, mn. 30–35; AG Ja ¨a¨skinen in CJ Case C-323/09 Interflora, footnote 39. 489 CJ Case C-292/00 Davidoff II [2003] ECR I-00389, see below mn. 31. 490 G. Dinwoodie, Dilution as Unfair Competition: European Echoes, Oxford Legal Studies Research Paper No. 37/2013, p. 17, A. Kur, Trade Marks Function, Don’t They? CJEU Jurisprudence and Unfair Competition Principles, 2014, Max Planck Institute for Innovation & Competition Research Paper No. 14– 05, p. 17–20.

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II. Earlier trade marks Pursuant to Art. 8 (5), the registration of a Community trade mark can be opposed 329 on the basis of an earlier national trade mark or earlier Community trade mark. Although the provision refers directly to the meaning of earlier trade mark within Art. 8 (2) CTMR491, it also provides that the junior trade mark shall not be registered for goods or services which are not similar to those for which the earlier trade mark is registered. This leads to a contradiction whether the unregistered well-known trade marks protected under Art. 6bis of the Paris Convention constitute earlier trade marks. Although the Paris Convention provides for the international protection of well- 330 known trade mark only within the limits of the principle of specialization, with no protection for dissimilar goods/services492, in some national laws, such as German or UK, the protection of well-known trade marks is broader, covering also protection against dilution as an effect of use for dissimilar goods/services493. In this perspective, the problem of the scope of protection of well-known trade marks under CTMR is also a problem as to whether the grounds for refusal under the CTMR protect national trade marks in the scope set forth in the relevant national law494 or whether the conflicts between CTMs and national trade marks are resolved autonomously by the CTMR. The first option under which it is claimed that the use of the wording ‘registered’ 331 instead of ‘protected’ results from a drafting error495 and national law should prevail was rejected by the CJ and the GC496. It was held that the Community trade mark regime is an autonomous system which applies independently of any national system and Art. 8 (5) applies only where earlier trade mark is registered. However, while reaching this conclusion, the courts have not conducted a complete interpretation of Art. 8 (5). The word ‘registered’ was directly connected with the basic standard of the Paris Convention and the reference to Art 8 (2) was rather downplayed. It is only implied that mere reference to Art. 8 (2) cannot be interpreted as conferring unregistered well-known trade mark with the extensive protection and Art. 8 (5) constitutes lex specialis to Art. 8 (2)(c) in this respect. All in all, earlier trade mark within meaning of Art. 8 (5) has meaning specified in Art. 8 (2) with exclusion of letter (c) of the provision.

III. Reputation The reputation of a trade mark is the central element of the concept of trade marks 332 protection under Art. 8 (5). It is not only a separate condition of the provision application, the essential element of link test (see below Sec. IV) and tests of all types 491

See A. Jaeger-Lenz above Art. 8. GC Case T-150/04 Mu¨lhens v OHIM (TOSCA BLU) [2007] ECR II-02353, mn. 57. Ibid., mn. 46. 494 As ground for invalidation under Art. 25 (1)(e) Regulation No. 6/2002 on Community designs, pursuant to which a Community design may be declared invalid if ‘a distinctive sign is used in a subsequent design, and Community law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use’. 495 GC Case T-150/04 Mu ¨ lhens v OHIM (TOSCA BLU), mn. 44. 496 CJ Case C-320/07 P Antartica v OHIM [2009] ECR I-00028, mn. 38 confirming GC Case T-150/04 Mu¨lhens v OHIM (TOSCA BLU), mn. 46; later confirmed by GC Case T-255/08 Montero Padilla v OHIM (JOSE PADILLA) [2010] ECR II-02551, mn. 48. 492 493

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of injury (see below Sec. V), but, most importantly, it is the key justification of the institution specified under Art. 8 (5) CTMR. Even if the reputation requirement was introduced as a pragmatic compromise (see above Sec. I) rather than in effect of strict application of prior objectives, reputation should be considered the central justification of the extensive protection under Art. 8 (5). The necessity of its separate and meaningful justification under Art. 8 (5) is determined by the loss of the basic objective of the trade mark law, namely consumer protection, since there is no likelihood of confusion required497. In light of the CJ jurisprudence, reputation can be considered as a result of effective business effort (investment) that is protected against unfair competition498. Although reputation gives rise to extensive exclusive rights for the trade mark proprietor, the exclusivity does not protect against fair business practices encompassing a trade mark use by a junior user (see below Sec. VI). In the General Motors case, the CJ held that the condition of proving reputation implies a certain degree of knowledge of the earlier mark among the public. Trade mark does not have to be known by a given percentage of the public, the degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark499. Therefore, it is implied that the reputation condition has a quantitative nature and qualitative aspects of a trade mark, such as specific image or prestige, are not considered within the reputation test500. However, these factors can be required under Art. 8 (5) if some forms of injury are claimed (see below Sec. V.2. and V.3.)501. Although the test is quantitative, it is only required to meet minimum quantified threshold, but it is not necessary to provide a percentage figure at all. A mark with reputation does not need to be known to the same extent as a well-known mark in the meaning of Art. 6bis of the Paris Convention that provides for an exceptional type of protection afforded to unregistered marks. Thus, although it is justified to require a high standard of recognition in case of a well-known mark, the same does not apply to the protection of trade marks with reputation that are registered502. The public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, in other words, depending on the product or service marketed, either the public at large or a more specialized public, for example traders in a specific sector503. However it should be taken into account that providing a proof only 497 CJ Case C-408/01 Adidas I, mn. 29; J. Davis, To protect or serve? European trade mark law and the decline of the public interest, EIPR 2003 25 (4), pp. 180–187; S. M. Maniatis, A. Kamperman Sanders, A consumer trade mark: protection based on origin and quality, EIPR 1993, 15 (11), pp. 406–415. 498 It is apparent from the definitions of all three forms of risk, in particular in the free riding definition provided in CJ Case C-487/07 L’Ore´al v. Bellure [2009] ECR I-05185, mn. 49–50. 499 CJ Case C-375/97 General Motors (Chevy) [1999] ECR I-05421, mn. 23, 25–26. 500 OHIM, The Manual Concerning Proceedings before the Office, Part C 5, Art 8 (5) CTMR, p. 10. 501 In CJ Case C-197/07 P Aktieselskabet af 21. november 2001 v OHIM [2008] ECR I-0019, mn. 19, 21 assumed that there is a difference in legal meaning between ‘reputation’ and ‘repute’, however, did not explicitly agreed with the claimant that the former simply means that the trade mark is known by a significant part of the relevant public, whereas the latter requires the existence of a particular image of the mark. 502 AG Jacobs opinion in CJ C-375/97 General Motors, mn. 33. Although the CJ did not compare these two standards, the above described definition of reputation should be considered the confirmation of the analysis of AG Jacobs. Explicitly, the standards were compared in GC Case T-420/03 El Corte Ingle´s v OHIM (BoomerangTV) [2008] ECR II-00837, mn. 110, in which it was found that ‘the degree of recognition to be proved regarding marks possessing a reputation within the meaning of Article 8 (5) of Regulation No 40/94 is not as high as that in the case of well-known marks within the meaning of Article 6bis of the Paris Convention’. 503 Ibid., mn. 24.

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for highly specialized specific sector, can make it difficult or even impossible to find a link between the trade marks (see below mn. 344–349). Under Art. 8 (5), Community trade mark must benefit from reputation in the 337 Community and a national trade mark should have reputation in the Member State concerned. In the General Motors case, the CJ held that with respect to territoriality, the reputation condition is fulfilled when the trade mark has reputation ‘in the Member State’. In the absence of any definition of the Community provision in this respect, a trade mark cannot be required to have reputation ‘throughout’ the territory of the Member State – it is sufficient for it to exist in a substantial part of it. With regard to Benelux trade marks, CJ held that it is sufficient that the trade mark has reputation in a substantial part of Benelux, where it acquired reputation in one of the Benelux countries504. By reference to this case, the CJ held in the PAGO case that a Community trade mark with reputation throughout the territory of a Member State, namely Austria, should be considered a trade mark with reputation under the CTMR505. It is however open for debate, whether a territory of any member state, regardless of its population, would constitute a territory sufficient for reputation to be considered as existing ‘in the Community’506. The territorial scope of reputation does not have to be as broad as the territorial scope of genuine use since the requirement of genuine use pursues different objectives than the concept of reputation507. The opponent must show that the earlier mark has acquired reputation by the filing 338 date of the application or of priority date and the reputation has subsisted until the decision on the opposition is taken. In practice, the loss of reputation, which would have to be proven by the applicant, is exceptional since it presupposes a dramatic change of market conditions over a relatively short period of time508. The identification of the relevant point in time determines that all materials filed in order to prove reputation must be dated. In general, the closer to the relevant date the evidence is, the easier it can be proven that the earlier mark had acquired reputation at that time. The evidential value of a particular document is likely to vary depending on how close the period covered is to the filing date. Although reputation of an earlier mark must be established at the filing date of the contested mark, documents bearing a later date cannot be denied evidential value if they enable conclusions to be drawn with regard to the situation on that date509. The requirements as to the time precision depend on the proof. OHIM held that a survey conducted in July 2000 is appropriate for establishing reputation of the earlier mark in December 1999, as recognition is normally the result of a long process in time and generally cannot be built up instantly510. Similarly, market share data in 2003 and 2004 was sufficient for reputation establishment in 2002, since, although there has been an increase in awareness from one year to the next, which is the expression of an increasingly widespread reputation, the increase remained relatively small511. However, it was held by the GC that the photocopies of advertisements that appeared in 1998 504

CJ Case C-375/97 General Motors, mn. 28. CJ Case C-301/07 PAGO International [2009] ECR I-09429, mn. 29, reputation in the UK was found sufficient in GC Cases: T-131/09 Farmeco v OHIM (BOTUMAX) [2010] ECR II-00243, mn. 62, T60/10 Jackson International v OHIM (ROYAL SHAKESPEARE), nyp, mn. 44, in Germany in OHIM Dec. R 2263/2010-1 tosca de FEDEOLIVA (FIG. MARK)/TOSCA et al, mn. 35. 506 I. Simon Fhima, Trademarks Dilution…, p. 33. 507 CJ Case C-149/11 Leno Merken, nyp, mn. 52–53 508 OHIM, The Manual Concerning Proceedings before the Office, Part C 5, Art 8 (5) CTMR, p. 17. 509 GC Joined Cases T-345/08 and T-357/08 Rubinstein and L’Ore ´al v OHIM (BOTOCYL), mn. 52. 510 OHIM Dec. of 23.11.2010 R 240/2004-2 WATERFORD STELLENBOSCH (FIG.)/WATERFORD, mn. 56. 511 GC Joined Cases T-345/08 and T-357/08 Rubinstein and L’Ore ´al v OHMI (BOTOCYL), mn. 63. 505

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were published after the application for registration of the CTM in question (which was filed in 1996) and therefore, are irrelevant512. The CTMR does not provide for a closed catalogue of evidence available to the trade mark proprietor as a proof of reputation. In the General Motors case, the CJ held that all the relevant facts must be considered while assessing the reputation of the earlier mark, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it513. The list is non-exhaustive and not all of the above factors have to be evidenced. Although the condition of intensity was not defined directly by reference to sales figures, in practice, turnover and unit numbers play important part in evidencing this condition. The proof can take the form of invoices, annual reports on economic results, company profiles and other commercial documents514. Although sales data is helpful evidence in the proceedings515, there is no legal requirement to produce an affidavit concerning the turnover achieved under the trade mark for the purpose of proving reputation516. The intensity understood as the level of sales is similar to another factor – market share that is defined as the percentage of total sales obtained by a brand in a particular sector of the market. The result of market share analysis is highly dependent on the scope and structure of specified market517. It is relevant in particular in the sector of luxury goods ‘which many may know, but few can buy’518. A very substantial market share, or a leader position in the market, will usually be a strong indication of reputation, especially if combined with a reasonably high degree of trade mark awareness. Conversely, a small market share will in most cases be an indication against reputation, unless there are other factors which suffice on their own to support such a claim519. Reputation was found in the BOTOX case where the market share 74.3 % was proven520, but also in the TOSCA case where the goods under trade marks had 1.3 % share (ranked eighth) in the German market for ladies fragrance521. The use intensity is also connected with the size of marketing investment. Although lack of expenditure data deteriorates chances for establishment of reputation522, it can be compensated by comprehensive materials evidencing the marketing effort of earlier trade marks proprietor523. The marketing activities and expenditures can be evidenced by sworn or affirmed statements, invoices, advertising and promotional materials524. The activities can take form of classic media advertising (print, radio, television, Internet), other promotional activities such as event sponsorship525. The duration of use is a factor that has little impact when assessed alone, however, it may significantly enhance the evidence of intensity526. OHIM held that the fact that the 512

GC Case T-8/03 El Corte Ingle´s v OHIM (EMILIO PUCCI), mn. 71. CJ Case C-375/97 General Motors, mn. 25, 27. 514 OHIM, The Manual Concerning Proceedings before the Office, Part C 5, Art 8 (5) CTMR, pp. 29–30. 515 GC Case T-8/03 El Corte Ingle ´s v OHIM (EMILIO PUCCI), mn. 71. 516 GC Case T-131/09 Farmeco v OHIM (BOTUMAX), mn. 59; OHIM Dec.: R-970/2006-2 ZEENA/ ERMENEGILDO ZEGNA, mn. 21, R 1797/2008-2 OStCaR/OSCAR, mn. 36. 517 OHIM, The Manual Concerning Proceedings before the Office, Part C 5, Art 8 (5) CTMR, p. 19. 518 Ibid., p. 20. 519 Ibid. 520 GC Joined Cases T-345/08 and T-357/08 Rubinstein and L’Ore ´al v OHIM (BOTOCYL), mn. 63. 521 OHIM Dec. of 29.09.2011 R 2263/2010-1 tosca de FEDEOLIVA (FIG. MARK)/TOSCA et al, mn. 33–34. 522 GC Case T-8/03 El Corte Ingle ´s v OHIM (EMILIO PUCCI), mn. 71. 523 OHIM Dec. of 18.06.2009 R 1797/2008-2 OStCaR/OSCAR, mn. 36. 524 OHIM, The Manual Concerning Proceedings before the Office, Part C 5, Art 8 (5) CTMR, pp. 29–30. 525 CJ Case C-197/07 P Aktieselskabet af 21. november 2001 v OHIM, mn. 21. 526 GC Case T-369/10 BEATLE, mn. 36, OHIM Dec. R 770/2008-2 and R 826/2008-2 EMIDIO TUCCI (FIG. MARK)/EMILIO PUCCI (FIG. MARK), mn. 121. 513

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figurative mark ‘winged hourglass’ was the very first International Registration at WIPO, or a sign very similar to it, and that it has been in use since the 1880 s, has no bearing per se on the assessment of reputation. OHIM held that trade mark use alone, even if for hundreds of years, does not lead to it being reputed. The historical significance of the trade mark does not determine that a trade mark has reputation527. Conversely, the short duration of use should not be considered as excluding reputation as long as in this short term the use is very intensive, for instance, in relatively short term, trade mark of Internet social networks gained reputation due to its intensive publicity and significant turnover from services rendered under such trade mark528. The proof of actual recognition based on market research data is not highly regarded 343 by OHIM and the courts529. In most cases, surveys play only a supporting role and they are not closely analysed. It was held that there is no legal requirement that consumer surveys are mandatory items of evidence for the purpose of proving reputation530. In decisions in which market surveys have been analysed closely, the emphasis is put on the survey’s independence and methodology531. In WATERFORD case, OHIM pointed out that the survey was conducted by an independent and specialized company and the survey was not specifically directed at the opponent’s company or towards its mark. Analysing the methodology, OHIM assesses whether the surveyed group was sufficient and properly chosen, therefore, whether the relevant consumers were targeted in terms of age, geographical distribution and socio-economic profile. Moreover, OHIM assesses questions relevant for proving reputation, i. e. those aiming at surveying spontaneous and prompted awareness. It is analysed whether the questions were accompanied by clear instructions (respectively ‘Do not prompt’ and ‘Prompt any of those listed but not mentioned’) and whether the questions are clear and not slanted or led the respondents to desired response. The data should be accurately reported and all interviews should be duly checked, coded, processed and analysed532. In Pantene Pro-V case, the questions submitted to the participants of a survey were considered as rather suggestive and leading. In addition, they implied legal concepts, such as ‘a prestigious mark’, ‘damaging the image and prestige’ and ‘the negative effect on the perception of the quality of the Pantene Pro-V/Pro-V trade marks’. In addition, it was unclear whether the 1005 people who answered the questionnaire was representative sample of relevant population. As a result, OHIM did not attach any probative value to the opinion poll533. In practice, reputation can be established on the basis of articles in the press or in 344 specialized publications534, certifications and awards535, the surveys of value associated with the mark536. In the BOTOX case, the CJ held that the very existence of articles in a scientific publication or the general-interest press constitutes a relevant factor in 527 OHIM Dec. of 14.09.2012 R 193/2012-5 B (FIG. MARK)/DEVICE OF EXTENDED WINGS WITH A GEOMETRIC DESIGN IN THE MIDDLE (FIG. MARK), mn. 34. 528 OHIM Dec. of 04.02.2014 R 254/2013-2 PAROBOOK (FIG. MARK)/FACEBOOK, mn. 17, of 16.03.2012 R 1074/2011-5 Twitter (FIG. MARK)/TWITTER, mn. 28. 529 A. Niedermann, Serveys as Evidence in Proceedings before OHIM, IIC 2006, 37, p. 260, however, in early OHIM Dec. of 05.06.2000 R 802/1999-1 DUPLO, mn. 21, a survey played a decisive role. 530 OHIM Dec. of 31.08.2007 R 970/2006-2 ZEENA/ERMENEGILDO ZEGNA, mn. 21. 531 OHIM Dec. of 23.11.2010 R 240/2004-2 WATERFORD STELLENBOSCH (FIG.)/WATERFORD, mn. 55. 532 Ibid., mn. 57–60. 533 OHIM Dec. of 17.11.2011 R 94/2011-1 Pro V/PRO-V, mn. 39–40. 534 E. g. Case T-369/10 You-Q v OHIM (BEATLES), nyp, mn. 36, GC Case T-131/09 Farmeco v OHIM (BOTUMAX), mn. 55. OHIM Dec. of 10.11.2010 R 1797/2008-2 OStCaR/OSCAR, mn. 31–35, R 1074/ 2011-5 Twitter (FIG. MARK)/TWITTER, mn. 26–28. 535 OHIM Dec. of 04.08.2011 R 1265/2010-2 MATTONI (FIG. MARK)/MATTONI, mn. 53. 536 OHIM Dec. of 26.03.2009 R 403/2008-1 Emotions Coffe Colla/Coca Cola, mn. 24.

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establishing reputation of the products marketed under the trade mark BOTOX with the general public, irrespective of the positive or negative content of those articles537. The inclusion of a word in a dictionary is the expression of a fair amount of recognition on the part of the public538. Moreover, reputation can be evidenced by record of successful enforcement539, including previous OHIM decisions540, and by number of trade mark registrations541. In the BOTOX case, the CJ held that the decisions of the national trade mark offices related to reputation are facts that may, if relevant, be taken into account despite the CTM owners not being parties in those decisions542. In KENZO cases, OHIM based its assessment of reputation in second and third case on the first case as there was no significant difference in the body of evidence543. 345 The assessment of reputation of the earlier mark is a matter of fact, therefore, since under Art. 256 (1) TFEU and the first paragraph of Art. 58 of the Statute of the CJ, an appeal lies on a point of law only, the GC has exclusive jurisdiction to find and appraise reputation. The appraisal of reputation thus does not, save where the facts are distorted, constitute a point of law subject, as such, to review by the CJ on appeal. The distortion must be obvious from the documents in the court’s file, without there being any need to carry out a new assessment of the facts and the evidence544. 346 Reputation is assessed as a separate condition initiating the test under Art. 8 (5), apart from the situations where the opposed signs are obviously dissimilar to the extent that a consumer could not link them at all, therefore, the opposition can be dismissed already at this stage. Given that reputation is quite hard to prove for trade mark that is not generally well-known or famous, the condition serves as an effective barrier for not well-founded oppositions.

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The essential condition for the registration refusal based on Art. 8 (5) is an establishment of link between a later mark and an earlier trade mark with a reputation. It has to be proven that the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them even though it does not confuse them545. The existence of such a link between the conflicting marks is tantamount to the fact that for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark with a reputation to mind546. Thus, the link can be defined as a mental process above the threshold of consciousness, something more than a vague, ephemeral, indefinable feeling or subliminal influence547. The nature of the link determines that its assessment 537

GC Case T-345/08 and T-357/08 Rubinstein and L’Ore´al v OHIM (BOTOCYL), mn. 54. C-100/11 P Helena Rubinstein and L’Ore´al v OHIM, mn. 55–56. 539 GC Case T-332/10 Viaguara v OHIM (VIAGUARA), nyp, mn. 48; OHIM Dec. of 10.11.2010 R 1797/2008-2 OStCaR/OSCAR, mn. 31. 540 OHIM Dec. of 25.03.2013 R 1364/2012-2 KENZO/KENZO, mn. 24–29. 541 GC Case T-131/09 Farmeco v OHIM (BOTUMAX), mn. 51–53. 542 CJ Case C-100/11 P Helena Rubinstein and L’Ore ´al v OHIM, mn. 78. 543 OHIM Dec. of 25.03.2013 R 1364/2012-2 KENZO/KENZO, mn. 24–29. 544 CJ Case C-294/12 P You-Q v OHIM, nyp, mn. 59–61. Similarly, under Regulation No. 6/2002, an assessment of the overall impression produced by the designs constitutes a matter of fact (EJ Case C-281/ 10 P PepsiCo v Grupo Promer Mon Graphic [2011] ECR I-10153, mn. 45. 545 A term ‘association’ used in CJ Case C-375/97 General Motors, mn. 23 was replaced in CJ Case C408/01 Adidas I, mn. 29 by ‘link’. The terms ‘link’ and ‘association’ are used interchangeably. 546 CJ Case C-252/07 Intel, mn. 63. 547 AG Sharpston opinion in CJ Case C-252/07 Intel, mn. 48. 538

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constitutes a matter of fact, therefore, the GC is the final instance of the assessment without appeal jurisdiction of the CJ548. The first stage of link test is assessment of similarity of the marks that is a common requirement for both Art. 8 (1)(b) and of Art. 8 (5) CTMR. The assessment in both cases is based on the same methods and requires, in particular, assessment of elements of visual, aural or conceptual similarity549. Consequently, the place of the test of marks similarity in the sequence of Art. 8 (5) CTMR test depends on whether the confusion test is carried out. If not, the similarity of marks can be assessed before or after the reputation test since both requirements must be assessed under Art. 8 (5) and the sequence is not regulated550. In practice, the circumstances of the case and the procedural economy decide. However, if the test under Art. 8 (1)(b) is carried out and it leads to the conclusion that the mark are dissimilar, it is justified to find that it is not necessary to take into consideration the reputation of the earlier mark551. Since the reputation of the earlier mark does not fall within the scope of the test of similarity, it cannot serve to increase the similarity between those marks552. On the other hand, if under the confusion test the marks are found similar but not sufficiently to cause a likelihood of confusion, it does not determine the conclusion under Art. 8 (5) CTMR. It is the consequence of fact that the similarity of marks is assessed within the link test under which the confusion does not have to be established and the similarity of marks is only one of the factors relevant for the global assessment. As a result, although the methods of the test are the same, they differ in terms of the degree of similarity required553. If there is only some degree of similarity, even faint, between the marks, it is required to carry out the global assessment of the link554. Like assessment of the likelihood of confusion, the link test must be appreciated globally, taking into account all factors relevant to the circumstances of the case555. In accordance with Intel judgment, those factors include: – the degree of similarity between the conflicting marks; – the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between these goods or services and the relevant section of the public; – the strength of the earlier mark’s reputation; – the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; – the existence of the likelihood of confusion on the part of the public556. The global assessment implies some interdependence between the relevant factors, for instance a low degree of similarity between the marks may be offset by the strong

548

CJ Case C-294/12 P You-Q v OHIM (BEATLES), nyp, mn. 61. CJ Cases C-552/09 P Ferrero v OHIM (KINDER) [2011] ECR I-02063, mn. 52, 54 citing C-408/01 Adidas I, mn. 28 with reference to C-251/95 SABEL [1997] ECR I-6191, mn. 23. For the metods of the assessment see A. Jaeger-Lenz above Art. 8 Sec. G III.1. 550 OHIM, The Manual Concerning Proceedings before the Office, Part C 5, Art 8 (5) CTMR, p. 9. 551 E. g. OHIM Dec. R 996/2012-2 APPLINE/APPLE, mn. 57–58. 552 CJ Cases C-57/08 P Gateway v OHIM [2008] ECR I-00188, mn. 56, C-254/09 P Calvin Klein Trademarks Trust v OHIM [2010] ECR I-0000, mn. 68, C-370/10 P Ravensburger v OHIM [2011] ECR I00027, mn. 49-.50, C-552/09 P Ferrero v OHIM (KINDER), mn. 69. 553 CJ Case C-552/09 P Ferrero v OHIM (KINDER), mn. 53. 554 Ibid., mn. 66. 555 CJ Case C-408/01 Adidas I, mn. 30 with a reference to CJ Case C-251/95 SABEL, mn. 22. 556 CJ Case C-252/07 Intel, mn. 42. 549

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distinctive character of the earlier mark557, dissimilarity of goods may be offset by the strength of the earlier mark’s reputation. 352 The CJ in the Davidoff II case held that protection of trade mark with reputation embraces also the use of the trade marks for identical or similar goods or services558. The judgment is considered as an extreme example of purposive approach of the CJ where there was no basis in wording of reputable trade marks protection or any provision of the act, including preamble559. The judgment contrasts with AG Jacobs opinion who held that the wording of the provision indicates that the legislature intended the likelihood of confusion as ‘the normal criterion for protection’. AG Jacobs found that since the scope of this criterion was significantly extended in the CJ judgments560, there may be a limited area in which a trade mark having a reputation is not protected against the use of identical or similar marks or signs – namely where the products in question are similar and there is no likelihood of confusion561. 353 The Intel case suggests that the analysis of relationship between goods/services within the link test should be dominated by the assessment of relevant public targeted by the goods/services and the analysis of nature of these goods/services has only corrective character. If the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, can be not known at all to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that there will be no link established between these marks562. 354 However, if there is an overlap in relevant public, the distance between goods/services can be balanced by reputation of earlier trade marks that goes beyond the public targeted by that mark563. In this light, the reputation condition of the extensive protection should not be considered as an arbitrary threshold, but the institution explaining the phenomenon how consumers can associate dissimilar goods/services. The extension of the reputation produce results sufficiently beyond the targeted public to the extent that the earlier trade mark is known by consumers of goods/services under a later trade mark. However, it is not required for earlier trade mark to acquire the reputation in sector of goods for which later trade mark is registered564. The significant reputation seems to be decisive factor in cases where goods are dissimilar, however, there is an overlap of relevant public and signs are sufficiently similar565. 557 CJ Case C-552/09 P Ferrero v OHIM (KINDER), mn. 65. The nature of global assessment – the interdependence of factors – was first provided under the TMD in CJ Case C-39/97 Canon [1998] ECR I5507, mn. 17. 558 CJ Case C-292/00 Davidoff II [2003] ECR I-00389, mn. 25–26. 559 In contrast to General Motors case where the meaning of reputation has basis in translation of reputation condition, J. Cornwell, The Davidoff v Gofkid case comment, EIPR 2003, 25 (11), 537–538. 560 CJ Cases: C-251/95 SABEL v Puma, Rudolf Dassler Sport [1997] ECR I-06191, C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer [1998] ECR I-05507, C-425/98 Marca Mode [2000] ECR I04861. 561 AG Jacobs opinion in C-292/00 Davidoff II, mn. 50–51 – the opinion is supported by Ch. Morcom, Extending protection for marks having a reputation: what is the effect of the decision of the European Court of Justice in Davidoff v Gofkid?, EIPR 2003, 25 (6), 279–282. 562 CJ Case C-252/07 Intel, mn. 48–49, followed in GC Case T-32/10 Ella Valley Vineyards v OHIM, nyp, mn. 23–29. 563 CJ Case C-252/07 Intel, mn. 53, followed in GC Cases: T-131/09 Farmeco v OHIM (BOTUMAX), mn. 79, T-332/10 Viaguara v OHIM, nyp, mn. 52. 564 GC Case T-32/10 Ella Valley Vineyards v OHIM (ELLE), mn. 33. 565 CJ Cases C-294/12 P You-Q v OHIM (BEATLES), nyp, mn. 68–69, C-320/07 P Antartica v OHIM (NASDAQ) [2009] ECR I-00028, mn. 51, OHIM Dec. of 10.11.2010 R 1797/2008-2 OStCaR/OSCAR, mn. 45–48, R 1074/2011-5 Twitter (FIG. MARK)/TWITTER, mn. 31–43 (however, without separate link

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A limited similarity between signs can be also balanced by the strong distinctiveness of 355 earlier mark. The distinctiveness of earlier trade mark can be enhanced by existence of family of trade marks566. Since there is a close connection between the distinctiveness acquired through use and the reputation567, the added value of this factor lies mainly in its inherent character, thus, the strong earlier trade marks should be unique or inherently highly distinctive568. If the marks are only slightly similar and the earlier trade mark has only limited inherent distinctiveness, the distance between the trade marks cannot be balanced even by considerable reputation and overlap of relevant public569.

V. Types of injury The existence of the link is not sufficient, in itself, to establish that there is one of the 356 types of injury under Art. 8 (5)570.However, the more immediately and strongly the earlier mark is brought to mind by the later mark (the stronger is the link), the greater the likelihood that the current or future use of the later mark is taking unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark571. The proof of one of the types of injury is necessary since the purpose of Art. 8 (5) is not to prevent registration of any mark which is identical with a mark with a reputation or similar to it, but to eliminate the specifically described risks572. Like the existence of a link between the conflicting mark, the existence of one of the 357 types of injuries must be assessed globally, taking into account once again all factors that have been assessed within the link test573. In order to establish the injury, a proprietor of the earlier trade mark has to prove actual and present injury to its mark or a serious likelihood that such an injury will occur in the future574. Although the standard of proof in blurring cases is qualified, the method of proof is common for all types of injuries. The conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case575.

test), differently e. g. OHIM Dec. of 05.06.2000 R 802/1999-1 DUPLO, mn. 24–26 (requiring inherent distinctiveness) and R 254/2013-2 PAROBOOK/FACEBOOK, mn. 36–43. 566 T-301/09 IG Communications v OHIM (CITIGATE), mn. 106. 567 CJ Case C-104/05 P El Corte Ingle ´s v OHIM (EMILIO PUCCI) [2006] ECR I-00096, mn. 53, GC Case T-60/10 Jackson International v OHIM (ROYAL SHAKESPEARE), nyp, mn. 57. 568 GC Case T-47/06 Antartica v OHIM (nasdaq) [2007] ECR II-00042, mn. 26. In BOTOX cases uniqueness of the trade marks was analyzed not within link test, but at the later stage (GC Case T-131/09 Farmeco v OHIM (BOTUMAX), mn. 99, GC Joined Cases T-345/08 and T-357/08 Helena Rubinstein and L’Ore´al v OHIM (BOTOCYL, BOTOLIST) confirmed in CJ Case C-100/11 P, nyp. 569 GC Case T-32/10 Ella Valley Vineyards v OHIM, mn. 55–56, OHIM Dec. R 1556/2009-2 only givenchy (FIG. MARK)/ONLY (confirmed in GC CaseT-586/10 Aktieselskabet af 21. november 2001 v OHIM (only givenchy) [2011] ECR II-00438). 570 CJ Case C-252/07 Intel, mn. 71. 571 CJ Case C-252/07 Intel, mn. 67, GC Case T-60/10 Jackson International v OHIM (ROYAL SHAKESPEARE), mn. 54, similarly GC Case T-21/07 L’Ore´al v OHIM (SPALINE)[2009] ECR II-00031, mn. 39. 572 GC Cases T-215/03 Sigla v OHIM (VIPS), mn. 46, T-67/04 Spa Monopole v OHIM (SPA-FINDERS), mn. 40. 573 CJ Cases C-252/07 Intel, mn. 68, C-100/11 P Helena Rubinstein and L’Ore ´al v OHIM, mn. 94. 574 CJ Cases C-252/07 Intel, mn. 37–38, C-100/11 P Helena Rubinstein and L’Ore ´al v OHIM, mn. 93. 575 CJ Cases C-100/11 P Helena Rubinstein and L’Ore ´al v OHIM (BOTOCYL, BOTOLIST), mn. 95, C383/12 P Environmental Manufacturing v OHIM, mn. 42–43 – CJ emphasized the conjunction of logical deductions and the analysis of the normal practice in the relevant commercial sector.

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1. Blurring Blurring, also referred to with the general term ‘dilution’, is a form of injury consisting of detriment to the distinctive character of the trade marks. The CJ in the Intel judgment held that the detriment is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. The blurring takes place in particular if the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so576. The CJ definition is clearly based on the dilution concept proposed by American jurist Frank I. Schechter577 as interpreted by AG Jacobs in Adidas I case578. 359 Even broader notion of blurring was provided in the Interflora case by AG Ja¨a¨skinen579 who found the blurring means that the sign perceived by the consumer is acquiring an alternative meaning in his mind. The alternative meaning can either be an ambivalent indication of different goods or services from different sources – in the case of dissimilar goods or services, or that of a generic category of goods or services – in the case of identical (e. g. keyword advertising cases) or highly similar ones. The broadening of the definition is a natural consequence of the CJ jurisprudence under which the broader trade marks protection is also afforded to trade marks with reputation when goods or services are identical/similar580. The blurring in the Intel definition (weakening) and the degeneration are not distinguished on the basis of a degree of harm, but these are two separate phenomena that are linked by its detrimental effect on the distinctive character of earlier trade marks and because of that effect jointly referred to as blurring sensu largo. 360 At the base of the blurring definition is the close connection between blurring and adverse effects of use on the origin distinguishing function of a trade mark. It could be argued that the harm to distinctive character has been present in the confusion-based test and a novelty of reputable trade mark protection flows from the fact that within this regime the harm itself constitutes a separate notion that triggers the protection without a need to prove additional confusion effect581. The detriment to distinctive character cannot be equalled with adverse effects of use on the origin function since a loss of trade marks distinctiveness can lead to the weakening of mark ability to advertise products/ services and the decrease of its economic value as an investment582. However, the above 358

576 CJ Case C-252/07 Intel, mn. 29, earlier defined in GC Case T-67/04 Spa Monopole v OHIM (SPAFINDERS) [2005] ECR II-1825, mn. 43 with a reference to AG Jacobs opinion in C-408/01 Adidas I, mn. 37, later confirmed in C-383/12 P Environmental Manufacturing v OHIM, mn. 35. 577 Frank I. Schechter, The Rational Basis of Trademarks Protection, Harvard Law Review 1927, p. 813. 578 AG Jacobs gave the following example of blurring: ‘you allow Rolls Royce restaurants and Rolls Royce cafeterias, and Rolls Royce pants, and Rolls Royce candy, in 10 years you will not have the Rolls Royce mark any more’ AG Jacobs opinion in Case C-408/01 Adidas I, mn. 37 on the basis of the BGH judgment – see above footnote 8. 579 AG Ja ¨a¨skinen opinion in C-323/09 Interflora, mn. 81–85, the CJ confirmed AG Ja¨a¨skinen reasoning in the judgment, mn. 79–83 by analyzing blurring in the case of identical services in connection with the risk of trade marks degeneration. 580 CJ Cases C-292/00 Davidoff II, mn. 25–26, C-408/01 Adidas I, mn. 19. 581 I. Simon Fhima, Trademarks Dilution…, s. 139, similarly C. Davies, Dilution revisited: a heavy handed approach by the CJ? JIPLP 2014 9 (2), p. 99. M. Senftleben goes one step further questioning preservation of distinctive character as a rationale for the anti-dilution protection, reserving this purpose for protection system concerning confusion. M. Senftleben, The Trademarks Tower of Babel – Dilution Concepts in International, US and EC Trademarks Law, IIC 2009, 40 (1), pp. 64–70. 582 I. Simon Fhima, Trademarks Dilution…, pp. 118–119.

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seems to be not applicable to blurring in double-identity cases assessed under Art. 8 (5) (blurring sensu largo). The CJ in the Interflora case required the proof of the adverse effect solely to the origin function of a trade mark583 (at the same time, specifying other functions under double identity action584). In order to establish the injury, a proprietor of the earlier trade mark has to prove 361 actual and present injury to its mark or a serious likelihood that such an injury will occur in the future585. A first use of an identical or similar mark may suffice to cause actual and present detriment to the distinctive character of the earlier mark or to give rise to a serious likelihood that such detriment will occur in the future586. Another milestone of the Intel judgment is a requirement to evidence a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future587. The Intel requirement sets quite heavy burden of proof on the earlier trade mark 362 proprietor. The first reaction of OHIM to the judgment had been a quite articulate criticism588. Later, OHIM jurisprudence applied condition in line with the CJ judgment with a result of several cases where oppositions were rejected on the basis of the lack of proof589. By now, there is only one OHIM case where the proof has been explicitly established by the following logical deductions: a successful consumer product is often copied and cheaper replicas, under a brand name that brings to mind the famous one then appear on the market; consequently, a part of the public will stay faithful to the ‘original’ product, but another part will trade down and purchase the ‘copy’590. The GC jurisprudence was also rather sceptical as to the requirement. In the first GC post-Intel blurring judgment the requirement was omitted591, in the second only mentioned592, however, in the third it was explicitly rejected593. In appeal decision594, the CJ rejected the GC interpretation of the Intel judgment, under which a change in economic behaviour (Intel, mn. 77) is established by mere proof of conditions of the definition of dilution (Intel, mn. 29) and annulled the GC judgment. The CJ held that it was clearly indicated in Intel judgment that it is necessary to demand a higher standard of proof in order to find detriment or the risk of detriment to the distinctive character of 583 CJ Case C-323/09 Interflora, mn. 81–83. Additionally, although the CJ didn’t use the word confusion, A. Bailey is right to say that the CJ implicitly required confusion, however, he seems to be wrong by referencing this conclusion to blurring in general instead to blurring sensu largo cases solely. A. Bailey, Trademark functions and protection for marks with a reputation, JIPL&P 2013 8 (11), p. 873. 584 CJ Case C-323/09 Interflora, mn. 54–66. 585 CJ Case C-383/12 P Environmental Manufacturing v OHIM, mn. 42–43. 586 CJ Case C-252/07 Intel, mn. 75. 587 Ibid., mn. 77. 588 ‘It is not easy to understand what is meant by a change in the economic behaviour of consumers or why the Court thought that evidence of such a change should be necessary in order to support a claim based on detriment to distinctive character’ OHIM Dec. of 30.04.2009 in R 821/2005-1 CITIGATE/ CITICORP et al., mn. 38 (seems to be indirectly confirmed in the GC Case T-301/09 IG Communications v OHIM (CITIGATE), mn. 114). 589 OHIM rejected several oppositions because opponents did not ‘indicate and enumerate, how and why the use of the younger mark could or would prejudice the distinctive character of its mark’ e. g. OHIM Dec. of 29.09.2011 R 2263/2010-1 TOSCA, mn. 59, R 1038/2011-2 D&C DULCE CAMINO (FIG. MARK)/D&G DOLCE&GABBANA (FIG. MARK), mn. 29, R 1524/2012-2 and R 1609/2012-2 sWaP (FIG. MARK)/swatch (FIG. MARK), mn. 72. 590 OHIM Dec. of 11.01.2010 R 69/2009-1 RED DOG/RED BULL et al., mn. 26–28. 591 GC Case T-131/09 Farmeco v OHIM (BOTUMAX), mn. 100–101. 592 GC Joined Cases T-345/08 and T-357/08 Helena Rubinstein and L’Ore ´al v OHIM (BOTOCYL, BOTOLIST [2010] ECR II-00279, mn. 85. 593 GC Case T-570/10 Environmental Manufacturing v OHIM (Wolf), nyp, mn. 53. 594 CJ Case C-383/12 P Environmental Manufacturing v OHIM, mn. 40–41, 45.

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Community Trade Mark Regulation

the earlier mark, otherwise, overwhelmingly broad protection against blurring could lead to a situation in which economic operators improperly appropriate certain signs, which could damage competition. Moreover, it was emphasized that the condition is relevant in both dissimilar and similar/identical trade mark cases. 363 The change of economic behaviour of the consumer should be logically deducted in the context of the factors forming the global assessment595. The main factor of the assessment is the trade mark distinctiveness that is directly harmed. As regards the degree of distinctive character of the earlier mark, the Court held that the stronger the earlier mark’s distinctive character, the easier it will be to accept that detriment has been caused to it596. In practice, the degree of distinctiveness should be higher than the level of distinctiveness required for a trade marks registration. The distinctiveness is enhanced and the risk increased if earlier trade mark is part of a family of trade marks (such as CITI)597. 364 A special example of highly distinctive trade mark is an unique trade mark understood as a mark that consists of elements that have not been used by anyone for any goods or services other than by the proprietor of the mark for the goods and services it markets. Although it is not necessary for the earlier mark to be unique in order to establish the risk, the more unique the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character598. On the other hand, the risk of dilution is lower if the earlier mark consists of a term which, because of a meaning inherent in it, is very common and frequently used599. The trade mark could lose its distinctiveness required for the opposition action due to overly extensive use. It concerns the licensing for very wide range of goods600 as well as the use without the proprietor’s consent if the infringing activities are not questioned601. 365 The blurring test requires also a reassessment of the link between the mark and of the reputation of an earlier mark. These factors, already established at minimum standard, are once again considered as to the sufficient degree for the injury test. Additionally, the GC held that the risk of the blurring is greater where that later mark will be used in respect of goods intended for a wide public602. 595 ‘Rather than being one factor to be taken into account among others on a global appreciation of the circumstances to determine whether any detriment has been caused, a change in economic behaviour is now what needs to be proved (on a global appreciation). It is not evidence of detriment, but the manifestation of detriment’ S. Middlemiss, S. Warner, The protection of marks with a reputation: Intel v CPM, EIPR 2009, 31 (6), p. 331, similarly I. Simon Fhima, Trademarks Dilution…, p. 151 distinguishes the ‘superfactor’ and factors of the global assessment. 596 CJ Case C-252/07 Intel, mn. 69 with reference to CJ Case C-375/97 General Motors, mn. 30. 597 GC Cases: T-181/05 Citigroup and Citibank v OHIM (CITI), mn. 83, T-301/09 IG Communications v OHIM (CITIGATE), mn. 119, 122. 598 CJ Case C-252/07 Intel, mn. 72, 74, GC Joined Cases T-345/08 and T-357/08 Helena Rubinstein and L’Ore´al v OHIM (BOTOCYL, BOTOLIST), mn. 85. 599 GC Cases T-67/04 Spa Monopole v OHIM (SPA-FINDERS), mn. 44, T-215/03 Sigla v OHIM (VIPS), mn. 38. 600 The opponent claimed that it has licensed its name for more than 2000 products. OHIM held that ‘such an extensive and intensive exploitation of the earlier mark by the opponent might cause the dilution of the distinctiveness of the earlier mark produced by the owner/the band itself, but it does not serve to prove that the use of the mark applied for would also be detrimental to the distinctiveness of the earlier mark’. OHIM Dec. of 29.04.2009 R 266/2008-2 KISS/KISS, mn. 35. 601 ‘The fact that the appellant did not react to other undertakings registering identical trade markss indicates, even if only to a low degree, that it is not too concerned about whether consumers will no longer associate the trade mark only with its product’. OHIM Dec. of 25.04.2001 R 283/1999-3 HOLLYWOOD/HOLLYWOOD, mn. 113, R 240/2004-2 WATERFORD STELLENBOSCH (FIG.)/WATERFORD, mn. 85. 602 GC Case T-131/09 Farmeco v OHIM (BOTUMAX), mn. 100, based on a contrario reasoning to the GC Case Sigla v OHIM (VIPS), mn. 63.

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Relative grounds for refusal

Art. 8 CTMR

2. Tarnishment Another condition for the registration refusal under Art. 8 (5) is the detriment to the repute of the earlier trade mark, usually called ‘tarnishment’. The repute as the subject of the detriment is defined differently than the repute as the first condition of trade marks protection under Art. 8 (5) CTMR. In L’Ore´al v. Bellure, the CJ held that detriment to the repute of the mark is caused when the goods or services, for which the identical or similar sign is used by the third party, may be perceived by the public in such a way that the trade mark’s power of attraction is reduced603. The reputation is considered as the power of attraction604 or image, particularly image of quality, exclusivity, youth, fun, luxury, adventure, glamour or other reputedly desirable lifestyle attributes. These connotations do not necessarily link to the specific features of goods or services, such as their quality, they rather serve as an independent marketing message605. The detriment to the repute as a marketing message arises when a later trade mark used in relation to specific goods has a negative impact on the image of the earlier trade mark – it provokes a reaction of annoyance or displeasure606. The impact can result from the intrinsic nature of the later trade mark goods itself607 or from the incompatibility with the goods for which the earlier mark is reputed608. The detriment may also arise if a word or figurative element of a trade mark is amended or altered in a negative way609. The purely inherent negative character of the trade mark is rarely established, it is rather a matter of higher probability of the incompatibility. In OHIM jurisprudence, the only cases, where the inherent element is evident, concerned tobacco products610. In HOLLYWOOD/HOLLYWOOD, the registration of trade mark for tobacco products was opposed by the proprietor of identical trade mark reputed for chewing gums. OHIM found that there is a general negative attitude to tobacco consumption and that it has been scientifically proven and generally well-known that tobacco is harmful to health611. In conclusion, the BoA rather emphasized the incompatibility – the striking contrast of trade mark images – and held that there is no worse association that can be imagined for a confectionery manufacturer than one with products capable of causing death612. In cases related to alcoholic drinks, the inherent negative element was rejected by the BoA613. Apart from the negative image, the impact potentially could also result from the poor quality of later mark products614. In cases of the incompatibility, it is necessary to compare the connotations of each mark, in relation either to the goods or services covered or to the broader message which they may convey, and to evaluate the damage entailed615. The later mark can 603

CJ Case C-487/07 L’Ore´al v. Bellure, mn. 40. The term ‘power of attraction’ was first used by AG Jacobs in opinion of 10.07.2003 in C-408/01 Adidas I, mn. 38. 605 AG Sharpston opinion of 26.6.2008 in C-252/07 Intel Corporation [2008] ECR I-08823, mn. 8. 606 OHIM Dec. of 03.07.2006 R 334/2005-2 DERBY QUEEN/DERBI, mn. 42, a mere connection between marks is not sufficient, see GC Case T-215/03 SIGLA v OHIM (VIPS)[2007] ECR II-00711, mn. 67. 607 OHIM Dec. of 03.07.2006 R 334/2005-2 DERBY QUEEN/DERBI, mn. 42. 608 For this clear distinction see e. g. OHIM Dec. R 582/2009-1 VERSUS/VERSUS, mn. 57. 609 OHIM Dec. of 25.4.2001 in R 283/1999-3 HOLLYWOOD/HOLLYWOOD, mn. 86–87. 610 Ibid., with more emphasis on the incompatibility – OHIM Dec. of 12.03.2012 R 297/2011-5 KAPPA/ KAPPA, mn. 37–40. 611 OHIM Dec. R 283/1999-3 HOLLYWOOD/HOLLYWOOD, mn. 93–94. 612 Ibid., mn. 95. 613 OHIM Dec. of 02.04.2009 R 677/2008-2 BANANIA BANANIA/BANANIA, mn. 36, R 582/2009-1 VERSUS/VERSUS, mn. 57. 614 OHIM Dec. R 283/1999-3 HOLLYWOOD/HOLLYWOOD, mn. 87. 615 AG Sharpston opinion in C-252/07 Intel Corporation, mn. 81. 604

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CTMR Art. 8

Community Trade Mark Regulation

tarnish the earlier trade mark even if it does not have any inherent negative connotation. In influential Benelux Court of Justice case Claeryn/Klarein616, there were identically pronounced trade marks ‘Claeryn’ registered for a Dutch gin and ‘Klarein’ for a liquid detergent. It was found that the similarity between the two marks might cause consumers to think of detergent when drinking ‘Claeryn’ gin, therefore, the ‘Klarein’ mark was held to tarnish the ‘Claeryn’ mark617. In BoA jurisprudence, the incompatibility of goods was found in CHIVAS/CHIVAS REGAL (pet food and whisky)618 and DERBY QUEEN/DERBI (gambling machines and motorcycles)619. However, no tarnishment was found in MERSI/MERCI (bleaching products and confectionery)620, the case in which the product incompatibility and a resemblance to Claeryn/Klarein case were evident621. It seems that the CTMR conditions are more stringent than the Benelux law (prior the TMD) and a simple fact of the product incompatibility is not sufficient. Firstly, because the prerequisite for the risk test is positive result of the link test. Secondly, the repute as the image should be connected with ‘more elaborate feelings such as, for example, love (because of the red heart), exclusivity (because of the golden letters), gratefulness (because of the word ‘merci’)’ – and the negative impact on the repute. 370 In practice, the establishment of the tarnishment proves to be difficult622, particularly due to the application of an equivalent to image transfer doctrine (see below mn. 371– 373). In Spa Monopole v. OHIM (SPA-FINDERS), the GC found no tarnishment because the goods (publications, travel agency services and, on the other hand, mineral water) were too different623. The judgment is criticized on the basis that the protection against the tarnishment is granted exactly because of the difference of goods (and its connotations) and, since the link between trade marks is established on the earlier stage of the procedure, the difference between the goods should constitute an obstacle within the tarnishment test624.

3. Taking unfair advantage 371

The third form of risk caused by use of a younger sign similar to earlier trade mark with repute is taking unfair advantage of the distinctive character or the repute of the trade mark, also referred to as ‘free-riding’ or ‘parasitism’. Since the concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign, this form of risk can be referred to as dilution only in a broader sense625. In L’Ore´al v. Bellure, the CJ found that the unfair advantage results from use of a sign similar to a trade mark with a reputation that enables a junior user to benefit from reputation of the earlier trade mark by exploitation, 616 Benelux Court of Justice judgment of 1.3.1975 in Case A 74/1 Lucas Bols v. Colgate-Palmolive, Jurisprudence of the Benelux Court of Justice 1975, p. 472. 617 AG Jacobs opinion in C-408/01 Adidas I, mn. 38, later AG Sharpston opinion in C-252/07 Intel Corporation, mn. 33. 618 OHIM Dec. of 26.03.2003 R 165/2002-1 CHIVAS/CHIVAS REGAL, mn. 60. 619 OHIM Dec. of 03.07.2006 R 334/2005-2 DERBY QUEEN/DERBI, mn. 43. 620 OHIM Dec. of 30.07.2009 R 1513/2008-1 MERSI/MERCI, mn. 42. 621 I. Simon Fhima, Trademarks Dilution…, p. 181. 622 E. g. GC Cases: T-417/09 Poslovni Sistem Mercator v OHMI (MERCATOR STUDIOS), nyp, mn. 46, T-67/04 Spa Monopole v. OHIM (SPA FINDERS), mn. 47, T-215/03 SIGLA v OHIM (VIPS)[2007] ECR II-711, mn. 38.mn. 72. 623 GC Case T-67/04 Spa Monopole v. OHIM (SPA-FINDERS), mn. 49, similarly OHIM Dec. of 05.06.2000 R 802/1999-1 DUPLO/DUPLO, mn. 26, R 1202/2011-2 Lamborghini Living/Tonino Lamborghini, mn. 39. 624 I. Simon Fhima, Trademarks Dilution…, p. 186. 625 CJ Case C-487/07 L’Ore ´al v. Bellure, mn. 41.

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Relative grounds for refusal

Art. 8 CTMR

without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expanded by the proprietor of the trade mark with repute626. In order to determine whether the use of a sign takes unfair advantage, it is necessary to undertake a global assessment of factors that are taken into account in the link test. The evidence of change in the economic behaviour of relevant consumer is not required627. In contrast to forms of injury based on a detriment, this injury must be assessed in relation to relevant public formed by consumers of a later trade mark628. Although there is no condition for this type of injury to claim reputation as image629, the significant part of free riding cases constitutes ‘image transfer’ cases where the subject matter of the injury, similarly to tarnishment cases, is reputation defined as an image or power of attraction630. Thus, it is another case where quantified repute is not sufficient to trigger protection under Art. 8 (5). In some cases, both quantified reputation and the quality one (image)631 is assessed, in others, only the advantage of the image is considered632. In L’Ore´al v. Bellure it was held that the infringement provision covers, in particular, cases where there is a risk that the image of the mark with a reputation or the characteristics which it projects is transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation633. In The Beatles case, the GC found that the association between marks can lead to transfer of the values of the earlier marks to the goods bearing the mark applied for. The GC held that the image portrayed by the earlier mark is, even after 50 years of existence, still synonymous with youth and a certain counterculture of the 1960 s, an image which is still positive and which could specifically benefit the goods covered by the mark applied for (wheelchairs). This very positive image could benefit the goods covered by the mark applied for since the relevant public, on account specifically of the disabled people, would be particularly attracted by the image of freedom, youth and mobility associated with the earlier marks634. In the SPA cases, the GC found that the image of the earlier mark and the message that it conveys relate to health, beauty, purity and mineral richness. That image and that message can apply also to the goods in respect of which registration has been sought by the applicant (cosmetics), since they are used to preserve and improve health or beauty635. More controversially, in the BOTOX case, the GC held that the image conveyed by BOTOX mark, which refers to a skin made smooth through the 626

Ibid., mn. 49. Differently OHIM Dec. of 01.08.2013 R 1864/2012-1 X botarin/BOTOX, mn. 35. 628 CJ Case C-320/07 P Antartica v OHIM [2009] ECR I-00028, mn. 46–48. 629 In the following cases quantified reputation (or distinctiveness acquired through use) seems to be sufficient: GC Cases T-60/10 Jackson International v OHIM (ROYAL SHAKESPEARE), mn. 52, 58, OHIM Dec. of 16.03.2012 R 1074/2011-5 Twitter (FIG. MARK)/TWITTER, mn. 40. 630 As in BGH judgment of 29.11.1984 in case I ZR 158/82 DIMPLE, GRUR 1985, 550. 631 GC Case T-301/09 IG Communications v OHIM (CITIGATE), mn. 122 emphasizing the enhanced distrinctiveness of CITI trade markss due to the establishment of trade marks family, OHIM Dec. of 14.12.2010 R 480/2009-2 CAMPARI, mn. 87–89, of 26.01.2010 R 582/2009-1 VERSUS/VERSUS, mn. 45–46. 632 OHIM Dec. of 10.11.2010 R 1797/2008-2 OStCaR/OSCAR, mn. 55–61, R 1364/2012-2 KENZO/ KENZO, mn. 31–33, R 1513/2008-1 MERSI/MERCI, mn. 44. 633 CJ Case C-487/07 L’Ore ´al v. Bellure, mn. 41, confirming GC Cases: T-215/03 Sigla v OHIM (VIPS), mn. 35, 40, T-93/06 Mu¨lhens v OHIM (MINERAL SPA), mn. 43, T-21/07 L’Ore´al v OHIM (SPALINE), mn. 40. 634 GC Case T-369/10 You-Q v OHIM (BEATLES), nyp, mn. 71–72, confirmed by the C-294/12 P, mn. 69. 635 GC Cases: T-21/07 L’Ore ´al v OHIM (SPALINE), mn. 40, T-93/06 Mu¨lhens v OHIM (MINERAL SPA), mn. 43. 627

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CTMR Art. 8

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Community Trade Mark Regulation

elimination of wrinkles, may benefit the bleaching and polishing preparations in Class 3 since the consumer faced with those goods may think that they clean a surface or the laundry as if wrinkles were removed636. In the VIAGRA case, the GC held that the image of the earlier trade mark associated with stimulation of libido was found transferable to alcoholic and non-alcoholic drinks even if the latter has no medical effects637. In the NASDAQ case, the GC held that an image of modernity associated with the financial and stock market listing services can be transferred to sports equipment, and, in particular, to the high-tech composite materials638. Similarly in the CITI case, the GC considered a reputation associated with features of the banking sector, namely, solvency, probity and financial support to private and commercial clients in their professional and investment activities and suggested the transfer of the image to services provided by customs agencies and real estate agents639. However, in the VIPS case, the GC found image associated with fast food chain (speed or availability) cannot be considered to be such as to bring any advantage to computer programming services, even those intended for hotels or restaurants640. In the Martini case, OHIM held that the market sectors are completely different and the images that lamps, on the one hand, and vermouths, on the other, may convey are different as well. Lamps, even designer lamps, are not usually associated with success, glamour, jet set, beautiful people, etc. but comfort, design, architecture. This is because lighting apparatus are not exactly consumer goods, like beverages, but part of the fixed furniture of a house641. In another case, OHIM held that the opponent has not provided any reason to explain why it would be advantageous for a mark relating to paper or olive oil to be associated with a mark known for ladies fragrances642. The image coherence can be insufficient when goods are clearly dissimilar. OHIM held that in the wine sector the image of luxury depends on conditions and factors (such as the winery producing the wine, its geographical indication, its ageing etc.) other than those of the fashion industry (design, high-quality and expensive fabric used, prestige attached to the name of the designer, etc.), apart from the high price which is common to all luxury goods643. The condition of the unfairness of advantage has not been closely analysed by the courts. The main controversy of the L’Ore´al v. Bellure case stems from the CJ statement that it is relevant for injury assessment whether ‘the use of packaging and bottles similar to those of the fragrances that are being imitated is intended to take advantage, for promotional purposes, of the distinctive character and the repute of the marks under which those fragrances are marketed’644. It was argued that the CJ by requiring intention of junior user, defined unfairness as bad faith of junior user645. Even if currently it is more apparent that under Art. 8 (5) unfairness is deemed as long as due cause is not evidenced, it is still necessary to define the condition of unfairness (see below mn. 379– 380).

636

GC Case T-131/09 Farmeco v OHIM (BOTUMAX), mn. 94. GC Case T-332/10 Viaguara v OHIM (VIAGUARA), mn. 67. 638 GC Case T-47/06 Antartica v OHIM (NASDAQ), mn. 60, confirmed in CJ Case C-320/07 P, mn. 19. 639 GC Case T-181/05 Citigroup and Citibank v OHIM (CITI), mn. 81. 640 GC Case T-215/03 Sigla v OHIM (VIPS), mn. 57, 73. 641 OHIM Dec. of 30.07.2007 R 1244/2006-1 MARTINI FRATELLI (FIG. MARK)/MARTINI, mn. 27. 642 OHIM Dec. of 29.09.2011 R 2263/2010-1 tosca de FEDEOLIVA (FIG. MARK)/TOSCA, mn. 51–52. 643 OHIM Dec. of 26.01.2010 R 582/2009-1 VERSUS/VERSUS, mn. 46. 644 CJ Case C-487/07 L’Ore ´al v. Bellure, mn. 46. 645 UK courts jurisprudence cited in I. Simon Fhima, Trademarks Dilution…, pp. 206–207. 637

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Rights conferred by a CTM

Art. 9 CTMR

VI. Due cause Potentially, the due cause defence has broader scope of application within infringe- 380 ment proceedings, thus it is described within the commentary to Art. 9 mn. 324–344646.

SECTION 2 Effects of Community trade marks Article 9 Rights conferred by a Community trade mark 1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (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 and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark. 2. The following, inter alia, may be prohibited under paragraph 1: (a) affixing the sign to the goods or to the packaging thereof; (b) offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; (c) importing or exporting the goods under that sign; (d) using the sign on business papers and in advertising. 3. The rights conferred by a Community trade mark shall prevail against third parties from the date of publication of registration of the trade mark. Reasonable compensation may, however, be claimed in respect of acts occurring after the date 646 Opinion of AG Mengozzi in CJ Case C-487/07 L’Ore ´al v. Bellure, mn. 104–108. However, AG Mengozzi is clearly wrong when he states that ‘where such a trader actually relies on and demonstrates due cause, it can no longer be assumed that the advantage taken of the mark’s reputation is unfair and it is necessary to determine whether or not it is unfair in the light of all the relevant circumstances of the case and the nature of the due cause established’ (mn. 109). Since the conditions of Art. 8 (5) CTMR are cumulative, the establishment of due cause requires to find no injury in the case (and there is no place for additional fairness test). The opinion of AG Mengozzi is cited by AG Kokott in opinion Case C-65/12 Leidseplein Beheer and de Vries, nyp, mn. 36–37 that influenced the CJ in this case, in which the CJ seems to confirm the global test of the free riding and due cause (CJ Case C-65/12 Leidseplein Beheer and de Vries (Red Bull), mn. 53).

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CTMR Art. 9

Community Trade Mark Regulation

of publication of a Community trade mark application, which acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. The court seized of the case may not decide upon the merits of the case until the registration has been published. Rc. 8 Bibliography: A. Bailey, ‘Trade mark functions and protection for marks with a reputation’, JIPLP 2013, 8 (11), pp. 868–875; T. Cohen Jehoram, ‘The Function Theory in European Trade mark Law and the Holistic Approach of the CJEU’, TMR 2012, 102 (6), pp. 1243–1253, Ch. Gielen, ‘Trademark Dilution in the European Union’, in: D. Bereskin (ed.), International Trademark Dilution, Thomson West 2013, pp. 203–240; Ch. Gielen, ‘Harmonisation of trade mark law in Europe: the first trade mark harmonisation Directive of the European Council’, EIPR 1992, 14 (8), pp. 262–269; H. Carty, ‘Do marks with a reputation merit special protection?’, EIPR 1997, 19 (12), pp. 684–688; S. Casparie-Kerdel, ‘Dilution disguised: has the concept of trade mark dilution made its way into the laws of Europe?’, EIPR 2001, 23 (4), pp. 185–195; C. Davies, ‘Dilution revisited: a heavy handed approach by the CJ?’, JIPLP 2014, 9 (2), pp. 97–99; J. Davis, ‘To protect or serve? European trade mark law and the decline of the public interest’, EIPR 2003, 25 (4), pp. 180–187, V. Di Cataldo, ‘The trade mark with a reputation in EU law – some remarks on the negative condition “without due cause”’, IIC 2011, 42 (7), pp. 833–845; G. Dinwoodie, ‘Dilution as Unfair Competition: European Echoes’, Oxford Legal StudiesResearch Paper No. 37/2013; M. Edenborough, T. Elias, Ch. Gielen, in: Ch. Gielen, V. v. Bomhard, (ed.), Concise European Trade Mark and Design Law, Wolters Kluwer 2011, pp. 61–73; K–H. Fezer, ‘Trademark Protection under Unfair Competition Law’, IIC 1988, pp. 192–215; S. Hanne, ‘Case law on pharmaceutical trade marks from the Court of Justice of the European Union’, JIPLP 2011, 6 (1), pp. 43–50; A. Kur, T. Dreider, European Intellectual Property Law, Edward Elgar 2013; A. Kur, ‘Trademarks Function, Don’t They? CJEU Jurisprudence and Unfair Competition Principles’, Max Planck Institute for Innovation & Competition Research Paper No. 14–05/2014; S.M. Maniatis, A. Kamperman Sanders, ‘A consumer trade mark: protection based on origin and quality’, EIPR 1993, 15 (11), pp. 406–415; P. Maeyaert, J. Muyldermans, ‘Likelihood of Confusion in Trademark Law: A Practical Guide based on the Case Law in Community Trade Mark Oppositions from 2002 to 2012’, TMR 2013, 103 (5), pp. 1032–1115, S. Middlemiss, S. Warner, ‘The protection of marks with a reputation: Intel v CPM’, EIPR 2009, 31 (6), pp. 326–336; Ch. Morcom, ‘Extending protection for marks having a reputation: what is the effect of the decision of the European Court of Justice in Davidoff v Gofkid?’, EIPR 2003, 25 (6), pp. 279–282; A. Niedermann, ‘Surveys as Evidence in Proceedings before OHIM’, IIC 2006, 37 (3), pp. 260–276; M. Senftleben, ‘The Trademark Tower of Babel – Dilution Concepts in International, US and EC Trade mark Law’, IIC 2009, 40 (1), pp. 45–77; M. Senftleben, ‘Function Theory and International Exhaustion – Why it is Wise to Confine the Double Identity Rule to Cases Affecting the Origin Function’, 2013 (http://ssrn.com/ abstract=2356772), pp. 1–11, I. Simon Fhima, Trademark Dilution in Europe and the United States, Oxford University Press 2011; I. Simon Fhima, ‘Exploring the Roots of European Dilution’, Intellectual Property Quarterly 2012 (1), pp. 25–38, I. Simon Fhima, ‘The Role of Legitimacy in Trade Mark Law’, Current Legal Problems 2010 (65), pp. 489–527, R. Skubisz (ed.), Prawo własnos´ci przemysłowej. System Prawa Prywatnego 14b, C.H. Beck, pp. 1050–1146.

Content A. Overview and historical background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Overview . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Historical background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. The scope of exclusive rights of a CTM proprietor . . . . . . . . . . . . . . . . . . . . . . . . . I. CTM proprietor. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Negative contents of CTM rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Temporal limitations of the negative contents of CTM rights . . . . . . . IV. Positive contents – an overview . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Limitations of exclusive rights conferred by a CTM – an overview . VI. Justification of exclusive rights conferred by a CTM . . . . . . . . . . . . . . . . . . 1. Consumer protection. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Fair competition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Factual assessment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Points of fact . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Use of a CTM by a third party . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Use without a consent of the CTM proprietor. . . . . . . . . . . . . . . . . . . . . . .

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2. Use in the course of trade. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 40 3. Use on the internal market . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44 4. Use in relation to goods or services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48 III. Relevant consumer of goods or services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 54 1. The place of factor in the normative standards. . . . . . . . . . . . . . . . . . . . . . . 54 2. The identification of the relevant consumer . . . . . . . . . . . . . . . . . . . . . . . . . . 56 3. The identification of the relevant consumer by a level of attention 59 a) General principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 59 b) Specific sectors . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 62 c) Identification of relevant consumer by a territory and a culture 70 IV. Identity, similarity and proximity between goods and services . . . . . . . 72 1. Identity, similarity and proximity. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 72 2. Relevant goods and services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 76 3. Comparison of goods and services – examples . . . . . . . . . . . . . . . . . . . . . . . 78 a) Comparison of goods in Classes 14 and 25. . . . . . . . . . . . . . . . . . . . . . . . 78 b) Comparison of goods in Classes 18 and 25. . . . . . . . . . . . . . . . . . . . . . . . 79 c) Comparison of goods in the Class 25 and services in the Class 35. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 81 V. Identity and similarity between signs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 84 1. The SABEL case and the basic principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 84 2. Overall impression of signs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88 a) Dominant and negligible elements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88 aa) The Matratzen case and the basic principles . . . . . . . . . . . . . . . . . 88 bb) Position . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98 cc) Position associated with other factors. . . . . . . . . . . . . . . . . . . . . . . . . . 106 dd) Distinctiveness of an element . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 109 ee) Non-distinctive elements as negligible elements . . . . . . . . . . . . . 111 ff) Non-distinctive elements as non-negligible elements. . . . . . . . 116 gg) Distinctive graphic elements as dominant elements . . . . . . . . . 125 hh) Non-distinctive elements as dominant elements . . . . . . . . . . . . . 128 b) Elements retaining independent distinctive role . . . . . . . . . . . . . . . . . . 132 aa) The Medion case . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 132 bb) Expansion beyond well-known marks and company names . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 138 cc) The condition of non-negligibility of the element . . . . . . . . . . . 141 dd) The condition of visual and conceptual separateness of the element. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 148 ee) Expansion beyond identity of common element . . . . . . . . . . . . . 150 ff) The result of independent distinctive role. . . . . . . . . . . . . . . . . . . . . 154 3. Comparison of signs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 157 a) Identity and similarity. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 157 b) Visual comparison . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 160 aa) General principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 160 bb) Identical word . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 161 cc) Identical prefix. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 171 dd) Identical suffix . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 174 ee) Graphic elements offset by verbal elements. . . . . . . . . . . . . . . . . . . 180 ff) Verbal elements offset by graphic elements. . . . . . . . . . . . . . . . . . . 184 gg) Similarity in case where both marks are purely figurative . . 199 c) Phonetic comparison . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 203 aa) Basic principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 203 bb) The role of initial syllable . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 205 cc) The inversion of syllables . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 206 dd) Pronunciation. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 208 ee) Mathematical signs. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 213 ff) Mathematical signs and pronunciation . . . . . . . . . . . . . . . . . . . . . . . . 214 d) Conceptual comparison. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 216 aa) Basic principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 216

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Community Trade Mark Regulation

bb) Semantic content of words. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . cc) Semantic content of parts of words. . . . . . . . . . . . . . . . . . . . . . . . . . . . dd) Semantic content of figurative elements . . . . . . . . . . . . . . . . . . . . . . e) The rule of interdependence. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . aa) Visual and phonetic similarity offset by conceptual difference . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . bb) Phonetic similarity offset by visual and conceptual difference . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . cc) Visual difference offset by phonetic and conceptual similarity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D. Distinctive character of a trade mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Family of trade marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Reputation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . E. Normative standards of CTM infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Application of normative standards as a matter of law. . . . . . . . . . . . . . . . II. Use affecting trade mark functions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Origin function. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Early case-law on other trade mark functions. . . . . . . . . . . . . . . . . . . . . . . . 3. Trade mark functions theory . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Trade mark functions theory and the scope of trade mark protection . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Infringement in double identity cases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Infringement in the form of a likelihood of confusion . . . . . . . . . . . . . . . . 1. Identity/similarity of signs and identity/similarity of goods/ services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Likelihood of confusion – the global assessment . . . . . . . . . . . . . . . . . . . . a) The rule of interdependence. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . aa) High similarity of goods offset by weak similarity of signs bb) Weak similarity of signs offset by high similarity of goods cc) Weak similarity of goods offset by high similarity of signs dd) High similarity of signs offset by weak similarity of goods b) The role of distinctiveness . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) The role of family of earlier marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) The role of a relevant consumer . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Infringement of trade mark with reputation . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Link – the global assessment. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Definition of link. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Factors of the global assessment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) The rule of interdependence. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) The role of proximity between goods/services and relevant consumer . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . e) The role of reputation, distinctiveness and family of marks. . . . 2. Forms of infringement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Due cause . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

217 224 232 242 245 251 253 254 256 260 263 263 265 265 266 269 276 279 287 287 288 289 289 292 294 298 299 307 309 314 314 314 315 316 317 319 322 324

A. Overview and historical background I. Overview 1

The success of a trade mark protection system to a large extent derives from the scope of rights conferred by a trade mark. CTMR – besides elements common to most trade mark protection systems that are recognized in TRIPS, such as protection against a likelihood of confusion and its presumption in double identity cases – provides the extensive protection of trade marks with repute beyond similarity of goods and beyond

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a likelihood of confusion. The historical background and influences that determined the scope of the protection are discussed in Sec. a.II of this Commentary. The aim of Sec. B is to locate the infringement provision (Art. 9) in the context of the system of CTMR provisions and to discuss the justification for the scope of rights conferred within the system. The composition of the main content of this Commentary (Sec. C and D) is based on the basic assumption that points of fact should be separated from points of law – the normative standards of infringement – the function theory (Sec. D.II) and the protection under Art. 9 (1)(a), (b) and (c) (Sec. D.III-V). This structure differs from the composition of judgments, within which each legal basis – Art. 9 (1)(a), (b) and (c) – is analysed one by one. The approach is based on the premise that the distinction between points of fact and points of law is extremely important in the practice of trade mark enforcement. This results from the fact that under the procedural law of at least most EU member states only the first instance court has full competence to appreciate facts of cases and further instances mainly control the application of law. Determination by the CJ in the appeal decisions, under which of two categories elements of standard fall, should be taken into account by local courts competent to examine CTM infringement cases. Moreover, the justification of this approach stems from the fact that the methods of comparison of goods or services (Sec. C.IV), comparison of marks (Sec. C.V) and the remaining points of facts are the same under Art. 9 (1)(a), (b) and (c)1 with only difference in the relevance of those factors within each normative standard. For instance: the comparison of marks under Art. 9 (1)(a) is very limited since the marks should be prima facie identical; while the use condition (Sec. C.II) has particular relevance under Art. 9 (1)(a) and reputation of trade mark (Sec. C.VIII) is vital only to the standard under Art. 9 (1)(c). Furthermore, this methodology is inspired by the cases in which the Courts have not properly appreciated the difference between identity of methods of marks comparison (a point of fact) and the role of marks comparison within the normative standards (a point of law)2. This resulted in a conclusion that there is no infringement under Art. 9 (1)(c) since the marks were not sufficiently similar for the purpose of analysis under Art. 9 (1)(b). The proper analysis of the case should lead to a conclusion that although methods of comparison of marks are the same (a point of fact), the required degree of similarity (a point of law) differs under both normative standards. Thus, although marks can be found not sufficiently similar to find infringement under both Art. 9 (1)(b) and Art. 9 (1)(c), this conclusion requires different appreciation within those two normative standards3. Finally, the analysis is based solely on CJ and GC judgments both in the preliminary ruling procedure concerning Art. 9 as well as the principles provided by the Courts in judgments based on Art. 8 that mutatis mutandis should be applied by the courts of the member states before which the infringement actions are initiated.

1

CJ Case C-552/09 P Ferrero v OHIM (KINDER) [2011] ECR I-02063, mn. 54. GC Case T-207/09 El Jirari Bouzekri v OHIM (NC NICKOL) [2011] ECR II-00324, as well as T-448/ 11 Golden Balls V OHIM (GOLDEN BALLS), nyp, mn. 72 and T-437/11 Golden Balls V OHIM (GOLDEN BALLS), nyp, mn. 72 which was set aside in CJ Joined Cases C-581/13 P and C-582/13 P Intra-Presse v Golden Balls, nyp, mn. 74–78). 3 CJ Case C-552/09 P Ferrero v OHIM (KINDER), mn. 54, 66, C-581/13 P and C-582/13 P Intra-Presse v Golden Balls (GOLDEN BALLS), nyp, mn. 74–78. 2

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II. Historical background 7

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The contents of the rights conferred by a trade mark under CTMR was in its main points already established in the Commission’s Proposal for a Council Regulation on Community trade marks (as submitted to the Council on 25 November 1980). However, some changes were introduced in the course of further legislative proceedings, in particular those concerning the protection of trade mark with repute. The 1980 Proposal did not expressly provide that for identical trade marks used for identical goods or services – current Art. 9 (1)(a) – the infringement occurs without necessity to demonstrate a likelihood of confusion on the part of the public. The change in this respect was introduced in the Amended Proposal of 1984. The clause conferring the protection against a likelihood of confusion – current Art. 9 (1)(b)– was already formed at the stage of 1980 Proposal. From the early stage, in contrast to the TMD draft, the CTMR draft conferred extended protection to trade marks with repute. The 1980 Proposal provided for the proprietor’s right to prohibit any third party from using in the course of trade, save with his consent, any sign which is identical with or similar to the CTM in relation to goods or services which are not similar to those for which the CTM is registered, where the CTM is of wide repute and use of that sign is detrimental to that repute. The European Parliament proposed to extend this infringement clause to cover the use of the mark that ‘takes unfair advantage of or is detrimental to the distinctiveness or the repute of the trade mark’. Although the basic elements of the standard were developed during works on the regulation, the final contents were settled during the Council works on the directive. This final wording, further applied in Art. 9 (1)(c) of CTMR No. 40/94 and, subsequently, in CTMR No. 207/2009, is a combination of the amended proposal of the regulation, the opinion of the European Parliament and new elements introduced during the Council negotiations – the replacement of ‘wide repute’ with ‘reputation’ and the introduction of ‘without due cause’ condition. The 1980 Proposal specified a catalogue of use which may be prohibited, including: affixing the sign to goods or packing, putting on the market goods or supplying services under the mark and using the sing on business correspondence or invoices. The list was extended during the legislative process to include explicitly under Art. 9 (2) also offering and stocking goods under the sign, importing and exporting such goods as well as use of the sing in advertising. The contents of Art. 9 (3) was already determined at the stage of 1980 Proposal. The contents of the infringement provision has been heavily influenced by Benelux law under which the extended protection was provided as well as the US law under which the protection against dilution was developed. Although initially not evident, influences from national laws on unfair competition, in particular German law, are currently increasingly emphasized (s. further above Art. 8, mn. 325–327)4.

4 G. Dinwoodie, Dilution as Unfair Competition: European Echoes, Oxford Legal Studies Research Paper No. 37/2013, p. 17, A. Kur, Trade Marks Function, Don’t They? CJEU Jurisprudence and Unfair Competition Principles, 2014, Max Planck Institute for Innovation & Competition Research Paper No. 14– 05, pp. 17–20, I. Simon Fhima, Trademark Dilution in Europe and the United States, Oxford University Press 2011, pp. 198–199.

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B. The scope of exclusive rights of a CTM proprietor I. CTM proprietor Under Art. 9 (3), an entity becomes an initial CTM proprietor – obtains the right to a 12 CTM – in effect of registration by OHIM in the Register of Community trade marks as published in the Community Trade Marks Bulletin. Besides the CTM proprietor, the trade mark rights can also be enforced by a CTM licensee in accordance with Art. 22 (3) and (4) (s. below Art. 22). Additionally, under Art. 72 (1), any person who has authority to use a Community collective mark can bring an action for infringement (s. below Art. 72).

II. Negative contents of CTM rights The exclusivity of trade mark rights means that the basic right of a trade mark 13 proprietor is the right to prevent use – to pursue infringement claims on the basis of one of normative standards of Art. 9. The cessation claim is the only remedy directly prescribed in CTMR that is available for a proprietor against a third party in case of infringement. Although compensatory claims are mentioned in Art. 9 (3), they are not a part of the list of remedies that is usually provided in trade mark protection acts. The comprehensive lists of remedies are provided in the local laws harmonized by the TMD. Similar in its negative nature is the right to oppose later trade mark registrations 14 under Art. 8 (see above Art. 8), which is built upon similar institutions and enables the analogous application of rules established under Art. 8 and Art. 9.

III. Temporal limitations of the negative contents of CTM rights Although the trade mark rights may been enforced against third parties from the date 15 of publication of registration of a CTM, the publication of a CTM application also produces legal effects which are, however, conditional upon subsequent registration of the CTM. These rights are limited to compensatory rights that can be enforced by the CTM proprietor against a third party in respect of acts occurring after the date of publication of a CTM application, which acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. Under the principle of acquiescence (Art. 54 CTMR), where the proprietor of a CTM 16 has acquiesced, for a period of five successive years, in the use of a later CTM in the Community while being aware of such use, he is no longer entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later CTM was applied for in bad faith (s. below Art. 54).

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IV. Positive contents – an overview Trade mark law generally does not provide for a right of the owner to use the trade mark, trade mark rights are primarily negative rights to exclude others5. However, it is fair to say that an implied effect of CTM is the right to use that encompasses all kinds of use that proprietor can prohibit as provided in Art. 9 (2). The right is implied in many provisions of CTMR, in particular in the obligation to put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered (s. below Art. 15). 18 Additionally, the Section 4 of CTMR contains provisions regarding CTMs as objects of property, on the basis of which the following rights of a proprietor can be identified: a right to transfer, a right to license, a right to encumber the trade mark right (s. below Art. 17–22). 17

V. Limitations of exclusive rights conferred by a CTM – an overview The role of limitations of exclusive rights is to protect public interest that could be compromised by too broad trade mark monopoly6. The negative contents of trade mark rights is limited to use in course of trade and the limitations sensu stricto are economic in nature, thus, on-commercial activity should be out of scope of trade mark rights as a matter of a fundamental rule. 20 In the early case-law, the essential theme was to reconcile trade mark rights with free movement of goods and services and freedom of commerce. In accordance with Art. 13 (1), Community trade mark does not entitle a proprietor to prohibit its use in relation to goods which have been put on the internal market under that trade mark by the proprietor or with his consent. The scope of the principle of exhaustion is thoroughly discussed below in the Commentary to Art. 13, in this Commentary to Art. 9 only mentioned in relation to preservation of infringement claims for the purpose of protection of trade mark functions other than the origin guarantee function. For similar, free market reasons, the types of use that are in accordance with honest practices in industrial or commercial matters constitute limitations of trade mark rights as specified in Art. 12 (s. below commentary Art. 12). 21 Apart from Art. 12 and Art. 13 that describe the scope of rights from the outside of the infringement clause, the limitations of the scope are contained in the infringement clause itself. Due cause is the only limitation of exclusive rights expressly mentioned in Art. 9, yet only with regard to protection of trade mark with reputation. Following the Interflora case, the due cause defence is more and more associated with public interest of fair competition that benefits the consumers (see further below mn. 331). 22 Additionally, the scope of rights is limited by the function theory that forms the implicit condition under which infringement can only be found if the functions of trade mark are affected (s. below mn. 268–277). According to A. Kur, the same result as the function theory could be attained by the general clause of fair competition7 (s. below mn. 32). 19

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AG Cruz Villalo´n opinion in CJ Case C-661/11 Martin Y Paz Diffusion, nyp, mn. 90. This relation is particularly emphasized in opinion of Advocates General, for instance AG Colomer opinion in C-206/01 Arsenal Football Club, [2002] ECR I-10273, mn. 60. 7 A. Kur, Trademarks Function, Don’t They? CJEU Jurisprudence and Unfair Competition Principles, Max Planck Institute for Innovation & Competition Research Paper No. 14–05/2014, pp. 23–24. 6

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Currently, the limitation of trade mark rights due to existence of earlier rights is not 23 explicitly contained in Art. 9, however, interpreted from the general rules of seniority of intellectual property rights. The direct reference to the earlier rights was incorporated in the pre-draft of CTMR presented by the Commission in 19778, however, in the 1980 Proposal, this element of the infringement clause did not appear. The proposal submitted by the Commission in 2013 provides a new wording of the infringement clause that contains new Art. 9 (2), under which the trade mark rights are ‘without prejudice to the rights of proprietors acquired before the filing date or the priority date of the European trade mark’.9

VI. Justification of exclusive rights conferred by a CTM 1. Consumer protection Consumer protection is a traditional justification of trade mark system closely 24 associated with the basic standard of protection – protection against a likelihood of confusion on the part of the relevant consumer – and the essential function of trade mark, namely origin guarantee function. Although the traditional justification is sufficient for the purpose of Art. 9 (1)(b), 25 clearly it can not serve as a justification of the protection of trade mark functions other than the essential function under Art. 9 (1)(a) and, even more, as a justification of the protection under Art. 9 (1)(c)10.

2. Fair competition Already on the initial stages of development of the EU trade mark law, it was 26 established that trade mark rights are an essential element in the system of undistorted competition which the EC Treaty (now TFEU) seeks to establish and maintain. Under such a system, an undertaking must be in a position to keep its customers by virtue of the quality of its products and services, something which is possible only if there are distinctive marks which enable customers to identify them11. The notion of undistorted competition served to locate EU trade mark law within the general scheme of the EU law, in particular in relation to free movement of goods and services. Thus, the main area of influence of the notion at this stage was the principle of exhaustion and the limitations of rights conferred by trade mark12, that were established in order to manage the obvious tensions between the exclusive rights – absolute protection under Art. 9 (1)(a) – and public interest of undistorted competition. At this stage, the market competition was not a justification for protection, rather a justification of the scope of protection, its limitation. At the next stage of development of EU trade mark law, a tool for protection of 27 competition was construed on the basis of the function theory (see below mn. 267–273). 8 Pre-draft of the Regulation Relating to the Community Trade Mark. First Part, Working Group Community Trade Mark, Working Document No. 1, III/ex XI/C/268/77-E. 9 COM(2013) 161. 10 J. Davis, To protect or serve? European trade mark law and the decline of the public interest, EIPR 2003 25 (4), pp. 180–187; S. M. Maniatis, A. Kamperman Sanders, A consumer trade mark: protection based on origin and quality, EIPR 1993, 15 (11), pp. 406–415, M. Senftleben, The Trademark Tower of Babel – Dilution Concepts in International, US and EC Trademark Law, IIC 2009, 40 (1), pp. 59–61. 11 CJ Case: C-10/89 Hag [1990] ECR I-3711, mn. 13; C-228/03 Gillette Company and Gillette Group Finland [2005] ECR I-02337, mn. 25. 12 CJ Case: C-63/97 BMW [1999] ECR I-905, mn. 54 and 58 to 63; C-228/03 Gillette Company and Gillette Group Finland, mn. 29, 33.

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At the early stage, it was connected only with the essential function of trade mark that is to guarantee the identity of origin of the marked goods or services to the consumer by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have different origin. The CJ held that for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality13.Similarly, AG Colomer in the Arsenal case provided the justification for the function theory by finding that the trade mark law confers on the registered proprietor a monopoly over the sign registered by him as a trade mark, but that power of exclusive disposition is relative, since it is at the service of a purpose that transcends it. If the general idea is that consumers should be able to select goods and services in the context of an open market, governed by the rules of free competition, the uses which the proprietor of a trade mark is entitled to prevent third parties from are, precisely, those which arise in that context and which are therefore likely to affect that objective14. The significance of the notion of competition as a notion restricting the exclusiveness of rights has increased in effect of the broadening of the absolute protection under Art. 9 (1)(a) (see further below mn. 277–284) and development of case-law on the extended protection under Art. 9 (1)(c) (see further below mn. 307–330). The function theory lost its potential to be a tool balancing competition and trade mark monopoly in result of the L’Ore´al v Bellure judgment as the specification of other functions than the essential function transforms the function theory into a concept that can be used not only against protection but also for protection. Moreover, in the context of protection against unfair advantage, fair competition was also characterised in the positive dimension - as a justification for the trade mark protection rather than its counter-balance.15. The judgment in the Interflora case, although confirming this position, adds the tool that, in association with the function theory, can ensure the balance of the contradictory interests – the notion of fair competition that allows for a restrictive interpretation of use affecting trade mark functions other than the essential function. This ‘new’ tool was developed by the CJ under Art. 9 (1)(c) that inherently provides for the protection beyond a likelihood of confusion – the protection of trade mark functions other than the essential function and, furthermore, is closely related to continental regime of unfair competition16. Under the standard, the risk for competition arising from the broad scope of protection is mitigated by the due cause defence. This is in particular the case if the Interflora case is taken into account, in which the CJ held that due cause for use of trade mark in keyword advertising can be established on the basis of the fact that this form of advertising is compliant with condition of fair competition17. The nature of the due cause defence was further explained by the CJ in the Red Bull case, where the requirement was characterized as a general clause balancing interests of trade mark proprietors and third parties. The balancing is required due to the fact that the protection of a reputable trade mark is broader and the trade mark law should be 13 CJ Case: Case 102/77 Hoffman-La Roche [1978] ECR 1139, mn. 7; C-206/01 Arsenal Football Club, mn. 48. 14 AG Colomer opinion in C-206/01 Arsenal Football Club, mn. 60. 15 See in this vein opinion of AG Mengozzi in CJ Case C-487/07 L’Ore ´al v Bellure, mn. 104–108. 16 E. g. G. Dinwoodie, Dilution as Unfair Competition: European Echoes, Oxford Legal Studies Research Paper No. 37/2013, p. 17. 17 CJ Case C-323/09 Interflora [2011] ECR I-08625, mn. 57.

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provided with the general clause mitigating the extensive rights of a trade mark proprietor. This statement confirms the close relationship between the protection of trade marks and reputation with continental regime of unfair competition18. Similarly, in parallel, A. Kur, influenced by AG Kokott opinion in the Viking Gas 32 case19, proposes to abandon the hermetic language of the function theory and to introduce under Art. 9 (1)(a), a general clause of fair competition20 which in basic features is consistent with the Red Bull appreciation of the due cause defence. It must be however pointed out that the question of limitation is related to negative aspect of scope of rights that was designed to address different facts of infringement cases. Due cause requirement is closely interconnected with reputation requirement and possibility of infringement even if goods or services in question are dissimilar. Consequently, the due cause requirement and the general clause of fair competition cannot be directly applied to the absolute protection under Art. 9 (1)(a) which is significantly narrower in scope in the comparison to the protection under Art. 9 (1)(c). Although the unification of limitations of rights inherent in the infringement clause is a noteworthy project, it should not be construed on the basis of such a wholesale approach that is not able to provide for more transparency of trade mark law. Instead the authors propose a step-by-step approach. The first step is to characterize 33 the function theory as a justification theory rather than as a legal tool that is used in the court proceedings. The theory specified in this way describes the subject matter of trade mark protection as functions of trade marks that are beneficial for the market economy based on fair competition and protection of consumer. It has both positive and negative dimension – provides both for and against trade mark protection. The second step (s. below mn. 276) is to use tools provided in the legal text – forms of infringement in a way that is coherent with its justification. For this purpose, the authors tries to associate the forms of infringement with the functions in a way that is proposed by I. Simon Fhima21. As a third step (s. below mn. 279–380), it is proposed to describe the CJ case-law in double identity cases as providing, apart from protection against presumed confusion, anti-dilution protection for all trademarks, regardless of its reputation, limited to protection against tarnishment. As the task of courts should be to protect fair competition with use of a tools provided in the law, it is proposed to amend art. 9 (1)(a) to protect trade marks against use of signs that is detrimental to its image (that is not necessarily reputed). As a further result, the authors propose to extend L’Ore´al v Bellure interpretation of fair competition in its positive dimension to justify the protection against all three forms of infringement under art. 9 (1)(c) as well as protection against tarnishment under art. 9 (1)(a).

C. Factual assessment I. Points of fact Under the EU Courts procedure, an appeal lies on a point of law only, in result, the 34 GC has the exclusive jurisdiction to conduct the factual assessment of cases. The CJ is 18

CJ Case C-65/12 Leidseplein Beheer and de Vries (Red Bull), nyp, mn. 41–47. AG Kokott in CJ Case C-46/10 Viking Gas [2011] ECR I-06161, mn. 67–68. 20 A. Kur, Trademarks Function, pp. 23–34. 21 I. Simon Fhima, Trademark Dilution in Europe and the United States, Oxford University Press 2011, pp. 118–121, 161–164, 193–194. 19

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competent to assess facts only in case where the facts are distorted, the distortion is obvious from the documents in the court’s file and there is no need to carry out a new assessment of the facts and the evidence. The similar principles are provided in procedural laws of the EU member states. 35 In the case law, the following elements of infringement test were found to constitute a matter of fact: comparison of signs22, comparison of goods23, relevant public24, reputation25. Similarly, as the points of fact, should also be considered use by a third party (apart from the condition of use affecting trade mark function).

II. Use of a CTM by a third party 1. Use without a consent of the CTM proprietor There is no established case-law on the nature of the consent under either the CTMR or the TMD. In the Martin Y Paz Diffusion case, AG Cruz Villalo´n analysed the caselaw on the meaning of the consent and concluded that it is suggested by the Court that the consent requires the (unequivocal) expression of the intention to renounce the trade mark rights26. It is a voluntary legal transaction between the owner and the person receiving the consent. That interpretation is supported by reading the infringement provision in context of the provisions governing licensing (Art. 22). A license is the most common way in which consent to the use of the trade mark in the course of trade is given. The consent can be also implied in the relationship with a third party since under CTMR the license does not require written form. Therefore, the existence of consent should be a subject of court analysis of relationship between parties in the scope related to use of trade mark in the course of trade. The consent should be differentiated from the acquiescence since the first concept requires the expression of an intention to renounce the right and the latter implies passive attitude in the sense of not preventing the use of a later trade mark27. 37 The specific case of the proprietor’s consent is to sell products on the market of the EEA or consent to importation of goods from outside the EEA. In accordance with the principle of exhaustion, the consent in this case leads to extinction of the right with regard to a particular product (see further Commentary to Art. 13). 38 As a voluntary legal transaction between the proprietor and the user of the trade mark the consent is subject to the general principles governing legal transactions. To a large extent those rules will be identical with the rules applicable to the most prominent form of consent, a licence. Consent can thus be given for a determined period of time or without the determination of such a period. According to AG Cruz Villalo´n, termination of the consent is possible even in the latter case, thus, the irrevocable consent is not permissible. Thus, the CTM owner can terminate licenses and grant new ones and rearrange its manufacturing or sale processes. The guarantee of origin would be affected if a party continues using the mark even though it no longer enjoys the consent of the 36

22 CJ Cases C-361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-00643, mn. 18–19, 24–25; C579/08 P Messer Group v Air Products and Chemicals and OHIM [2010] ECR I-00002, mn. 50. 23 CJ Cases C-416/08 P Apple Computer v OHIM [2009] ECR I-00125, mn. 23–26; C-398/07 P Waterford Wedgwood v Assembled Investments (Proprietary) and OHIM [2009] ECR I-00075, mn. 29, 31, 33–35. 24 CJ Case C-294/12 P You-Q v OHIM, nyp, mn. 60. 25 Ibid., mn. 61. 26 AG Cruz Villalo ´ n opinion in CJ Case C-661/11 Martin Y Paz Diffusion, nyp, mn. 58–64. 27 Ibid., mn. 65.

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proprietor of the trade mark. However, in some circumstances, the exercise of the exclusive rights against the person with whom use was shared over an extended period of time both prior and after the registration of the trade marks could be impermissible28. Exercising exclusive rights against a licensee does not require termination of the 39 license, although it is rather usual that the license is terminated due to infringement of licensor’s rights. The proprietor can enforce his rights against a licensee whose actions exceed the given consent and lead to trade mark infringement. Under Art. 22 (2), the proprietor may start infringement proceedings against a licensee only if the licensee is in breach of the licensing contract with regard to: – its duration; – the form covered by the registration in which the trade mark may be used; – the scope of the goods or services for which the license is granted; – the territory in which the trade mark may be affixed; or – the quality of the goods manufactured or of the services provided by the licensee.

2. Use in the course of trade Art. 9 (2) provides for the following non-exhaustive catalogue of kinds of use in the course of trade: – affixing the sign to the goods or to the packaging thereof; – offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; – importing or exporting the goods under that sign; – using the sign on business papers and in advertising. The trade mark is used in the course of trade, if it is used in the context of commercial activity with a view to economic advantage and not as a private matter. In the Arsenal case, the CJ found that selling football club souvenirs and memorabilia should be regarded as selling commercial merchandise, thus, use of the football club trade mark29. The delimitation between commercial and private activity is more difficult in a case of small sales, in particular through online auction websites. In the L’Ore´al v eBay case, the CJ held that when an individual sells a product bearing a trade mark through an online marketplace and the transaction does not take place in the context of a commercial activity, the proprietor of the trade mark cannot rely on his exclusive right as expressed in Art. 9 CTMR. If, however, owing to their volume, their frequency or other characteristics, the sales made on such a marketplace go beyond the realms of a private activity, the seller will be acting ‘in the course of trade’ within the meaning of Art. 9 CTMR30. More controversial is the answer of the CJ to the questions whether a keyword service provider uses trade marks in the course of trade. In such a case, the provider carries out a commercial activity with a view to economic advantage when it stores as keywords, for certain of its clients, signs which are identical with trade marks and arranges for the display of ads on the basis of those keywords. Additionally, the service is not supplied only to the proprietors of those trade marks or to operators entitled to market their goods or services, but is provided without the consent of the proprietors and is supplied to their competitors or to imitators. The CJ in the keyword advertising cases held that although it is clear that the referencing service provider ‘operates in the course of trade’ 28

Ibid., mn. 67. CJ Case C-206/01 Arsenal Football Club [2002], mn. 39–41, 60. 30 CJ Case C-324/09 L’Ore ´al and Others [2011] ECR I-06011, mn. 55. 29

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when it permits advertisers to select, as keywords, signs identical with trade marks, stores those signs and displays its clients’ ads on the basis thereof, it does not follow, however, that that service provider itself ‘uses in the course of trade’ those signs31. Thus, a referencing service provider allows its clients to use signs which are identical with, or similar to, trade marks, without itself using those signs. The fact that the service provider is paid by its clients for the use of those signs was considered as irrelevant. The CJ found that the fact of creating the technical conditions necessary for the use of a sign and being paid for that service does not mean that the party offering the service itself uses the sign.

3. Use on the internal market The requirement of use in the course of trade introduces to the scope of trade mark rights also a territorial dimension which in the context of CTMR should be construed as use on the internal market. So far the two basic territorial issues were considered before the Courts: use in the context of Internet and use in transit. 45 The first problem was a subject of the CJ judgment in the Rolex case. Danish Supreme Court (Højesteret) referred number of questions for a preliminary ruling, inter alia, whether the situation, in which an undertaking enters into an agreement via a website in a third country for the sale and dispatch of goods bearing the trade mark to a private purchaser with an address known to the vendor in the EU member state where the trade mark is registered, constitutes use in the course of trade of a trade mark in the member state. Also, the question was raised whether it is a necessary condition that the goods are the subject, prior to the sale, of an offer for sale or an advertisement targeted at consumers in the member state32. 46 The CJ re-iterated its finding in the eBay case that the mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory33. However, the trade mark rights may be infringed where, even before their arrival in the territory covered by that protection, goods coming from non-member States are the subject of a commercial act directed at consumers in that territory, such as sale, offer for sale or advertising. Moreover, it is not necessary to verify whether such goods were, in addition, prior to that sale, the subject of an offer for sale or advertising targeting the EU consumers34. 47 In accordance with the Class International and Montex Holdings cases, placing nonCommunity goods bearing a mark under a suspensive customs procedure such as that of external transit is not, per se, interference with the right of the proprietor of the mark to control the initial marketing in the Community as it cannot be regarded as use in the course of trade on the internal market. However, a trade mark proprietor can oppose the offering for sale or sale of original goods bearing a trade mark and having the customs status of non-Community goods, when the offering is done and/or the sale is effected while the goods are placed under the external transit procedure or the customs warehousing procedure and this necessarily entails their being put on the market in the Community35. The burden of proof lays with the trade mark proprietor who has to 44

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CJ Case C-236/08 Google France and Google [2010] ECR I-02417, mn. 55. CJ Case C-98/13 Blomqvist, nyp, mn. 22. 33 CJ Cases C-98/13 Blomqvist, mn. 31; C-324/09 L’Ore ´al and Others [2011], mn. 64. 34 CJ Cases C-98/13 Blomqvist, mn. 32; C-299/99 Philips [2002] ECR I-5475, mn. 57. 35 CJ Cases: C-405/03 Class International [2005] ECR I-08735, mn. 61; C-281/05 Montex Holdings [2006] ECR I-10881, mn. 22. 32

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prove the facts which would give grounds for exercising the right of prohibition by establishing either the existence of a release for free circulation of the non-Community goods bearing his mark on the internal market, or of another act necessarily entailing their being put on the internal market36.

4. Use in relation to goods or services CTM rights can be only infringed when a trade mark is used by a third party in relation to goods or services since the essential function of a trade mark is to identify the origin of goods and services. In contrast, the purpose of a company name is not, in itself, to distinguish goods or services, but to identify a company, whereas the purpose of a trade name is to designate a business which is being carried on. Accordingly, where a trade mark is contained in a company name or a trade name and is limited to identifying a company or designating a business which is being carried on, such use is not considered as being in relation to goods or services. In the Ce´line case, this position was further developed from the rule to a principle with evident exception. It was held that there is use ‘in relation to goods or services’ where a third party affixes the sign constituting his company name or trade name to the goods or services which he markets. Furthermore, even where the sign is not affixed, there is use ‘in relation to goods or services’ where the third party uses that sign in such a way that a link is established between the sign which constitutes the company or trade name of the third party and the goods marketed or the services provided by the third party37. Another aspect of the case-law is the issue whether use must be in relation to infringer’s goods or services only or whether the cases of referential use are also covered by the infringement provision38. From the fact that limitations (Art. 11) are applied when infringement is found (Art. 9), it can be presumed that the referential use should be considered as use under Art. 9, otherwise, there will be no need for the limitations provision. In the BMW case, repair services for BMW cars were advertised with materials containing BMW marks by an entity that was not a car dealer authorized by the trade mark proprietor. The advertiser used the BMW mark in order to distinguish goods from any others in respect of which the same services might have been provided. Thus, in the advertisement for repair and maintenance of BMWs, the BMW mark was not used in respect of goods but to describe a service in respect of which the mark has not been registered. Similarly, although more implicitly, in the Gilette case, the CJ found that the third party uses Gilette trade mark when it advertises that exchange blades for Gilette shavers and third party’s shavers are compatible39. A quite different conclusion was reached by the CJ in the very specific context of the Adam Opel case.40 The issue in the case was whether manufacturer of scale models of Opel cars uses Opel trade mark in relation to goods or services, thus, whether this specific case of referential use is covered by the infringement provision. The CJ held the provision covers the use of a sign identical to the trade mark in respect of goods marketed or services supplied by the third party which are identical to those in respect of which the trade mark is registered. With respect to the facts of the case, the CJ found that since Autec does not sell vehicles, there is no use of the Opel logo by Autec as a 36

CJ Case C-281/05 Montex Holdings [2006] ECR I-10881, mn. 26. CJ Case C-17/06 Ce´line [2007] ECR I-07041, mn. 23. 38 A. Kur, T. Dreider, European Intellectual Property Law, Edward Elgar 2013, pp. 199–200. 39 CJ Case C-228/03 Gillette Company and Gillette Group Finland [2005] ECR I-02337, mn. 33–34. 40 CJ Case C-48/05 Adam Opel [2007] ECR I-01017, mn. 28–29. 37

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trade mark registered for motor vehicles. The judgment cannot be seen as providing a general principle under which the use condition is limited to use in relation to infringer’s good or services only. In fact, the rationale of the judgment is very narrow. The judgment can be justified only when it is taken into account that the catalogue of limitations under the EU trade mark law is quite limited and, in contrast to the BMW and the Gilette case, none of limitations could be applied in the case despite the fact that the use was referential. Thus, by finding no trade mark use the CJ provided a quasilimitation under infringement provision and the only case where the result of non-use was not based on the function theory (see below mn. 268–277). 52 Another and more typical case of referential use of trade mark is use in comparative advertising. In the O2 Holdings case41, the CJ observed that an advertisement in which the advertiser compares the goods and services which he markets with those of a competitor is aimed evidently at promoting the goods and services of that advertiser. With such an advertisement the advertiser seeks to distinguish his goods and services by comparing their characteristics with those of competing goods and services. That analysis is confirmed by recital 15 in the preamble to Directive 97/55, in which the Community legislature emphasized that the aim of comparative advertising is to distinguish between the goods and services of the advertiser and those of his competitor. 53 The similar conclusion was also reached in the cases of keyword advertising. In the Google France and the Interflora cases, it was confirmed that incorporating trade mark into keywords in an Internet referencing (keyword advertising) service is use in relation to the advertiser’s goods or services, even where the sign selected as a keyword does not appear in the advertisement itself42.

III. Relevant consumer of goods or services 1. The place of factor in the normative standards As regards Art. 9 (1)(b), in the milestone SABEL v Puma case, the CJ emphasized the wording of the provision (‘there exists a likelihood of confusion on the part of the public’) and held that the perception of marks in the mind of the average consumer of the type of goods or services plays a decisive role in the global appreciation of the likelihood of confusion43. Various types of infringement under Art. 9 (1)(c) CTMR occur only where there is a sufficient reputation of trade mark among certain public (the public relevant for reputation test) so that relevant public makes a link between the trade mark and the sign, which leads to detriment to the trade mark or advantage to the later sign44. Double identity under Art. 9 (1)(a) is a rather objective test with result that there is no need to take into account any particular perspective of relevant consumer. 55 The identification of the relevant consumer has a significant impact on subsequent stages of assessment – it is taken into account for establishment whether the goods or services are similar (see mn. 72–83), whether signs are perceived as similar (see mn. 88– 260), as well as within the global assessment of a likelihood of confusion (see mn. 308– 312), the test of link and an infringement under Art. 9 (1)(c) (see mn. 316–317). 54

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Case C-533/06 O2 Holdings ET O2 (UK) [2008] ECR I-04231, mn. 35. Case C-323/09 Interflora and Interflora British Unit [2011] ECR I-08625, mn. 30–31. Case C-251/95 SABEL v Puma, Rudolf Dassler Sport [1997] ECR I-06191, mn. 23. Cases C-375/97 General Motors, mn. 23, C-408/01 Adidas I [2003] ECR I-1253, mn. 29.

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2. The identification of the relevant consumer It is not necessary to find that the likelihood of infringement exists for the whole 56 relevant public – it is sufficient if it exists for a significant part of that public45. If the relevant public is composed of consumers that pay a different degree of attention to marks, the section of the public having the lower level of attention must be taken into consideration46. The principle should be applied not only under Art. 9 (1)(b), but also to the infringement test under Art. 9 (1)(c). The relevant public for the assessment of a likelihood of confusion is composed of 57 users likely to use both the goods and services covered by both an earlier and a later mark47. As regards the relevant public to be taken into consideration under Art. 9 (1)(c), the 58 CJ held that public varies according to the type of infringement48. The existence of infringement consisting of detriment to the distinctive character or the repute of the earlier mark is assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. As regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, the existence of infringement is assessed by reference to average consumers of the goods or services for which the later sign is used, who are reasonably well informed and reasonably observant and circumspect. In the first case (the infringement in the form of detriment), the relevant public is additionally limited to average consumers of the goods and services for which that mark is reputed. What has not been yet established by the Courts, whether this should effect in significant difference within the link test since, in the case of detriment, the relevant public is limited and the reputation does not explain how this public becomes aware of later trade marks.

3. The identification of the relevant consumer by a level of attention a) General principles. Under the settled case-law, a consumer’s level of attention is 59 likely to vary according to the category of goods or services in question49 since in particular a purchase involvement of professionals and the general public differs and even average consumers purchase some goods only after a particularly careful examination. Another factor that can impact the degree of attention is a type of trade mark due to the fact that the awareness is liable to be relatively low when it comes to purely promotional indications (such as promotional slogans), which well-informed consumers do not see as decisive50. Similarly, it should be said that even if shape or colour mark has a distinctive character, consumer’s the level of attention will be low. 45

GC Case T-569/10 Bimbo v OHIM (BIMBO DOUGHNUTS), mn. 69; upheld in CJ Case C-591/12 P,

nyp. 46 GC Cases T-152/08 Kido v OHIM (SCORPIONEXO) [2010] ECR II-00165, mn. 40; T-220/09 Ergo Versicherungsgruppe v OHIM (ERGO) [2011] ECR II-00237, mn. 21; T-444/10 ESGE v OHIM (KMIX), nyp, mn. 20. 47 GC Cases T-328/05 Apple Computer v OHIM (QUARTZ) [2008] ECR II-00104, mn. 23; T-344/09 Cartoon Network v OHIM (BOOMERANG), nyp, mn. 19; T-505/11 Aldi v OHIM (dialdi), nyp, mn. 29; T221/12 Sunrider v OHIM (SUN FRESH), nyp, mn. 62. 48 CJ Cases C-252/07 Intel Corporation [2008] ECR I-08823, mn. 35–36; C-320/07 P Antartica v OHIM (NASDAQ) [2009] ECR I-00028, mn. 46, 48. 49 CJ Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-03819, mn. 26. 50 By analogy, under Art. 7 (1)(b) CTMR, GC Cases T-130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II-05179, mn. 24, 29; T-320/03 Citicorp v OHIM (LIVE

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It is usually held that professional public has a higher degree of attention since professional consumers are considered to have adequate knowledge and experience in relation to goods or services in their area of activity51. However, according to OHIM, there is no principle under which the degree of attention would depend on whether the relevant public is composed of the general public or a specialized public52. Therefore, it is possible to establish a low level of attention also for professional public with a justification related to a category of goods/services or trade mark. In this perspective, the reason why professional consumers are considered to be more attentive is rather that their purchases require specific knowledge and experience53. This may equally concern the general public, however, in practice the cases where these factors can be relevant are limited. Other, the most frequently applied factors affecting the level of consumer’s attention are: – value of goods (‘serious impact on budget’)54; – durability of goods/frequency of purchase55; – luxurious character of goods56; – technological character of goods57; – serious impact on the health58; – aesthetic appraisal of goods59; – brand loyalty60. 61 Particularly the first four factors are closely associated. Surprisingly, it was held that the involvement of intermediaries, such as physicians, pharmacists61 or jewellery salesperson62, constitute a factor relevant for the consumer’s degree of attention. 60

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b) Specific sectors. The relevant public for pharmaceuticals (Class 5) is in principle composed of medical professionals, namely physicians and pharmacists, on the one RICHLY) [2005] ECR II-03411, mn. 74; GC Case T-515/11 Delphi Technologies v OHIM (INNOVATION FOR THE REAL WORLD), nyp, mn. 27, in which it was held that even if a slogan trade mark has a distinctive character, the level of attention is relatively low. 51 GC Case T-212/07 Harman International Industries v OHIM (Barbara Becker) [2008] ECR II-03431, mn. 24. 52 OHIM, The Manual Concerning Proceedings before the Office, Part C Section 2 Chapter 6, p. 8. 53 Reference to knowledge factor see GC Case T-307/08 Aldi Einkauf v OHIM (4 OUT Living) [2009] ECR II-00202. 54 GC Cases T-307/08 Aldi Einkauf v OHIM (4 OUT Living), mn. 21; T-483/10 The Pukka Luggage v OHIM (PUKKA), mn. 18; GC Case T-460/05 Bang & Olufsen v OHIM (Forme d’un haut-parleur), mn. 33; T-220/09 Ergo Versicherungsgruppe v OHIM (ERGO), mn. 18–19; T-462/09 Storck v OHIM (Ragolizia), mn. 38–39. 55 Loudspeakers – GC Case T-460/05 Bang & Olufsen v OHIM (Forme d’un haut-parleur), mn. 34, furniture; GC Case T-112/06 Inter-Ikea v OHIM (idea) [2008] ECR II-00006, mn. 37; horological goods and jewellery: T-292/08 Inditex v OHIM (OFTEN), mn. 74. 56 GC Case T-139/08 The Smiley Company v OHIM (Repre ´sentation de la moitie´ d’un sourire de smiley) [2009] ECR II-03535, mn. 19. 57 Loudspeakers – GC Case T-460/05 Bang & Olufsen v OHIM (Forme d’un haut-parleur), mn. 34; cars GC Case – T-486/07 Ford Motor v OHIM (CA) [2011] ECR II-00058, mn. 46; lack of it in case of car rental services – GC Case T-36/07 Zipcar v OHIM (ZIPCAR), mn. 47. 58 Pharmaceuticals: GC Cases T-256/04 Mundipharma v OHIM (RESPICUR) [2007] ECR II-449, mn. 44; T-412/08 Trubion Pharmaceuticals v OHIM (TRUBION) [2009] ECR II-239, mn. 28. 59 GC Case T-12/13 Sherwin Williams Sweden v OHIM (AR51), nyp, mn. 53 (prints). 60 For tobacco products see: GC Case T-207/08 Habanos v OHIM (KIOWA) [2011] ECR II-00140, mn. 31, for fashion items see: GC Case T-380/09 Bianchin v OHIM (GASOLINE) [2010] ECR II-00272, mn. 44–45, 52. 61 GC Case T-222/09 Ineos Healthcare v OHIM (ALPHAREN) [2011] ECR II-00183, mn. 43; CJ Case C-412/05 P Alcon v OHIM [2007] ECR I-03569, mn. 61. 62 GC Cases T-292/08 Inditex v OHIM (OFTEN) [2010] ECR II-05119, T-147/03, Devinlec Developpement innovation Leclerc SA v OHIM (Quantum) [2006] ECR II-11, mn. 74.

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hand, and patients, as the end consumers, on the other63. However, in case of pharmaceutical preparations used only in a hospital environment, such as anaesthetics, the relevant public should be composed solely of the professional public64. According to the settled case-law, medical professionals have a high degree of 63 attentiveness when prescribing medicines65. With regard to end consumers, the caselaw is not yet clear whether factors such as whether a medicine is issued only on prescription and severity of the condition are determining for assessment of the degree of attention66. The initial position67, later confirmed68, was that the level of attention should be 64 determined on a case-by-case basis, especially with regard to the therapeutic indications. Under this position, it is possible to hold that patients suffering from serious illness are highly attentive and persons taking medicine without prescription for mere headache may pay only average attention. Even when the goods are determined by a professional intermediary, if they are prescribed, consumers are likely to have a high degree of attentiveness upon prescription of the goods at issue, in the light of the fact that those goods are pharmaceutical products69. In more recent case-law70, medicines, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect. It is a controversial issue to what extent the establishment of degree of attention should serve the purpose of protection of health. The GC held that a heightened degree of attentiveness as a level lower than established in regard to professionals is sufficient to avoid ‘particularly disagreeable consequences’ for health which might result from confusion between two pharmaceutical products71. However, is was stated that the current approach is not sufficient as it results in that marks for pharmaceutical products are closer to each other than marks for other consumer products. It is emphasized that the European Medicines Agency (EMA) in judging the suitability of proposed names for new medicines is rejecting proposed names in more than 50 percent of cases because of their similarity with existing names even though the proposed names have been registered and continue to be registered as trade marks. In that regard, the necessity of a special rule for conflicts involving pharmaceutical products is proposed72. This role should be played by the factor of intermediaries involvement that should offset relatively high purchase involvement of general public. Additionally, the case-law under which therapeutic indications determine even higher attention of relevant public should be overruled for good.

63 GC Cases T-256/04 Mundipharma v OHIM (RESPICUR) [2007] ECR II-449, mn. 44, T-412/08 Trubion Pharmaceuticals v OHIM (TRUBION) [2009] ECR II-239, mn. 28. 64 S. Hanne, Case law on pharmaceutical trade marks from the Court of Justice of the European Union, JIPLP (2011) 6/1, p. 45. 65 GC Cases T-95/07 Aventis Pharma v OHIM (PRAZOL) [2008] ECR II-229, mn. 29–30, 56; T-331/09 Novartis v OHIM (TOLPOSAN) [2010] ECR II-5967, mn. 26–27. 66 S. Hanne, op. cit., p. 46. 67 GC Case T-256/04 Mundipharma v OHIM (RESPICUR) [2007] ECR II-449, mn. 29–30, 32, 42; T483/04 Armour Pharmaceutical v OHIM (GALZIN), mn. 79. 68 GC Case T-493/07 GlaxoSmithKline v OHIM (FAMOXIN), mn. 37. 69 CJ Case C-412/05 P Alcon v OHIM (TRAVATAN) [2007] ECR I-3569, mn. 61; GC Case T-95/07 Aventis Pharma v OHIM (PRAZOL), mn. 29. 70 GC Cases T-95/07 Aventis Pharma v OHIM (PRAZOL), mn. 29; T-412/08 Trubion Pharmaceuticals v OHIM (TRUBION) [2009] ECR II-00239, mn. 28; T-331/09 Novartis v OHIM (TOLPOSAN) [2010] ECR II-5967, mn. 26; T-97/11 Rovi Pharmaceuticals v OHIM (ROVI Pharmaceuticals), nyp, mn. 40. 71 GC Case T-201/08 Market Watch v OHIM (Seroslim) [2010] ECR II-00203, mn. 28. 72 Study on the Overall Functioning of the European Trade Mark System, p. 106.

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Under such broader approach a higher level of attention is also established for sanitary preparations (Class 5)73, veterinary preparations (Class 5)74 and medical devices (Class 10), such as equipment for aesthetic medicine75 or medical devices for use in connection with smoking cessation76. Currently, the discussion as to the degree of attention for goods in Class 5 moved from pharmaceuticals to dietetic preparations and supplements (Class 5). The more developed line provides for higher degree of attention for these goods77 that goods within Class 5 other than pharmaceuticals, such as dietetic preparations, should attract only average attention with reference to standard of consumer of regular foodstuff78. 66 Similarly, health protection concerns determines the level of attention in case of cosmetics (Class 3). It was found that the relevant public consists of average consumers who are reasonably well informed and reasonably observant and circumspect, with the result that the relevant public’s attention cannot be regarded as greater than it would be in relation to everyday consumer goods79. However, in the BOTOX case, the GC held that a level of attention of both professionals and end-consumers will be relatively high80. It is not clear whether high or at least higher degree of attention in fact applies to cosmetics (Class 3)81 or only for pharmaceutical preparations for cosmetic and aesthetic surgery purpose (Class 5)82. 67 As regards food (Classes 29–31), that are considered general consumer goods, the relevant consumer pays average level of attention83 and, in case of frequent, inexpensive purchase even lower degree of attention84. However, the establishment of low degree of attention is rather exceptional since even if a consumer were to make an impulse purchase of sweets in certain circumstances, there is nothing to suggest that that would be the case as a matter of course. The mere fact that the relevant public makes an impulse purchase does not mean that that public’s level of attention is lower than that of an average consumer85. However, since olive oil is a consumer product which is very common in Spain, the level of attention of the average consumer with respect to its external appearance is low86. 68 The average level of attention is also applied to babies food (Class 5) good, since those goods cannot be considered to be products with certain potential hazards, like 65

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GC Case T-288/08 Cadila Healthcare v OHIM (ZYDUS), nyp, mn. 36. GC Cases T-221/12 Sunrider przeciwko OHIM (SUN FRESH), nyp, mn. 64; T-221/12 Cadila Healthcare v OHIM (ZYDUS), mn. 36. 75 GC Case T-142/12 Aventis Pharmaceuticals v OHIM (CULTRA), nyp, mn. 27. 76 GC Case T-580/11 McNeil v OHIM (NICORONO), nyp, mn. 28; however, cushions for medical purposes GC Case T-382/12 T-382/12 Kampol v OHIM (Nobel), nyp, mn. 34. 77 GC Cases T-230/07 Laboratorios Del Dr. Esteve v OHIM (ESTER-E) [2009] ECR II-00105, mn. 39; T412/08, T-517/10, T-221/12 Cadila Healthcare v OHIM (ZYDUS), mn. 36. 78 GC Cases T-220/09 Ergo Versicherungsgruppe v OHIM (ERGO) [2011] ECR II-00237, mn00237, mn. 20; T-484/08 Longevity Health Products v OHIM (Kids Vits) [2009] ECR II-00234, mn. 27. 79 GC Cases T-240/08, mn. 27; T-466/08 Lanco ˆ me v OHIM (ACNO FOCUS), mn. 49; T-204/10 Lancoˆme v OHIM (COLOR FOCUS), mn. 24; T-221/09 Ergo Versicherungsgruppe v OHIM (ERGO Group), mn. 19; T-97/11 Rovi Pharmaceuticals v OHIM (ROVI Pharmaceuticals), nyp, mn. 43. 80 GC Cases T-131/09 Farmeco v OHIM (BOTUMAX), mn. 25; T-363/09 Longevity Health Products v OHIM (RESVEROL), mn. 24. 81 GC Cases: T-167/05 Grether v OHIM (Thailand), mn. 82, 106; T-304/10 dm-drogerie markt v OHIM (caldea) [2011] ECR II-00365, mn. 58. 82 GC Case T-142/12 Aventis Pharmaceuticals v OHIM (CULTRA), mn. 27. 83 GC Cases T-283/04 Georgia-Pacific v OHIM (Motif gaufre ´) [2007] ECR I-0000, mn 41; T-363/04 ~ola) [2007] ECR II-03355, mn. 108. Koipe v OHIM (La Espan 84 The Manual Concerning Proceedings before the Office, Part C Section 2 Chapter 6, p. 8. 85 GC Case T-623/11 Pico Food v OHIM (MILANO ´ WEK CREAM FUDGE), nyp, mn. 34. 86 GC Case T-283/04 Georgia-Pacific v OHIM (Motif gaufre ´) [2007] ECR I-3, mn. 41. 74

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pharmaceutical products, even though some formula milks may be sold in pharmacies. Furthermore, in view of the extensive range of ‘foods for babies and infants’, the group of average consumers for that category of goods will include not only careful parents87. The same average level is applied to dietetic food (Classes 29–30), for instance glutenfree food88, in contrast to dietetic food in Class 5. However, the broader approach was applied to chewing gum having medicinal properties (Class 30), which is targeted to more attentive, health-oriented consumer89. Another special example of general consumers goods are tobacco products (Class 34) consumers of which are highly brand loyal and, as a result, more attentive to trade marks of these products90. Conversely, consumers of alcoholic beverages (Class 33) are not more attentive that average consumers of fast-moving goods91. As a principle, clothing and footwear (Class 25) and leather goods (Class 18) are 69 everyday consumer items frequently purchased and used by an average consumer92. However, the consumer is more attentive to the choice of mark where he or she buys a particularly expensive, luxury goods93. In case concerning item from broad fashion goods sector, namely eyewear (Class 9), the GC found that fashion trends and brand loyalty can also be relevant factor increasing the consumer’s level of attention94. A higher degree of attention is also applied to special categories of clothing, such skiwear due to the fact that a part of the relevant public is composed of consumers who regularly ski or hike and therefore know those goods well. Those consumers will therefore tend to pay particular attention when examining the these goods in order to obtain the best possible protection against the cold and snow, as well as paying attention to their technical qualities for enhanced performance and comfort95. However, minor garment purchases attract lower degree of attention of a consumer96. As regards watches and jewellery (Class 14), which are not purchased regularly and are generally bought through a salesperson, the average consumer’s level of attention is higher than average97. c) Identification of relevant consumer by a territory and a culture. Under jurisdic- 70 tion rules of CTMR, it is a principle that Community trade mark court has jurisdiction in respect of acts of infringement committed or threatened within the territory of any of the Member States. Consequently, not only in opposition proceedings, diverse cultural, including linguistic, backgrounds of the relevant consumers can affect assessment of a likelihood of confusion or injuries to a trade mark with reputation, in particular 87 GC Cases T-221/06 Hipp v OHIM (Bebimil) [2009] ECR II-00149, mn. 40; T-41/09 Hipp v OHIM (Bebio), nyp, mn. 29. 88 GC Case T-505/11 Aldi v OHIM (dialdi), nyp, mn. 37–38. 89 GC Case T-580/11 McNeil v OHIM (NICORONO), mn. 31. 90 GC Case T-207/08 Habanos v OHIM (KIOWA) [2011] ECR II-00140, mn. 30. 91 GC Cases T-81/03, T-82/03 and T-103/03 Mast-Ja ¨ germeister v OHIM (VENADO) [2006] ECR II5409, mn. 82. 92 GC Cases T-455/12 Zoo Sport v OHIM (zoo sport), nyp, mn. 42; T-483/10 The Pukka Luggage v OHIM (PUKKA) [2011] ECR II-00424, mn. 18. 93 GC Joined Cases: T-117/03 to T-119/03 and T-171/03 New Look v OHIM (NLSPORT) [2004] ECR II-03471, mn. 43, T-307/08 Aldi Einkauk v OHIM (4 OUT Living), nyp, mn. 21; T-139/08 The Smiley Company v OHIM (Repre´sentation de la moitie´ d’un sourire de smiley) [2009] ECR II-03535, mn. 19. 94 GC Case T-380/09 Bianchin v OHIM (GASOLINE) [2010] ECR II-00272, mn. 37–38. 95 GC Case T-434/10 Hrbek v OHIM (ALPINE PRO SPORTSWEAR & EQUIPMENT) [2011] ECR II00388, mn. 30. 96 GC Case T-547/08 Technology Swiss v OHIM (Coloration orange de la pointe d’une chaussette) [2010] ECR II-02409, mn. 43. 97 GC Cases T-147/03 Devinlec v OHIM (QUANTUM) [2006] ECR II-11, mn. 63; T-292/08 Inditex v OHIM (OFTEN) [2010] ECR II-05119, mn. 74.

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phonetic and conceptual similarity (see mn. 202–214 and 215–240) as well as the inherent distinctive character of the trade mark (see mn. 253–254). 71 The establishment of relevant consumer in particular culture does not mean that other cultures have no impact on the relevant consumer. It is connected with the globalization and huge influence of Anglo-Saxon culture that English language and other cultural signs are a part of most EU member states cultures. The GC established a basic understanding of the English language by the general public in the Scandinavian countries, the Netherlands and Finland98, as well as at Malta, where English is one of the official languages, and Cyprus99.

IV. Identity, similarity and proximity between goods and services 1. Identity, similarity and proximity Identity of goods or services does not only exist when the goods or services completely coincide, but also when the contested sign’s goods/services fall within the broader category of the trade mark. There might also be identity when two broad categories under comparison coincide partially. Hence, a distinction can be made between cases of ‘full identity’ and ‘partial identity’ in which case trade mark is registered in a broad category and the third party uses the trade mark in the narrower scope100. 73 In accordance with the Canon judgment, in assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia: – nature; – method of use; – intended purpose and relevant public; – competition between goods or services; – complementarity of goods or services101. 74 In addition to the factors identified in the Canon case, the case-law provides also other factors such as distribution channels102. 75 Proximity is a special case of dissimilarity of goods or services, in which there is some kind of connection between goods or services (e. g. similar distribution channels or intended purpose) that enables the relevant consumer to link two categories of goods or services. In the CITI/CITIGATE case, the services in Class 35 (advertising services; marketing services; public relations services; preparation of publicity material and preparation of business reports; promotional services and public agency services; consultancy services relating to brand development; information and advisory services relating to all the aforesaid services) and the services in Class 42 (design services; copywriting, art work design, graphic design services, illustrating services, website design services, brand protection services; information, advisory and consultancy 72

98

GC Case T-435/07 New Look v OHIM (NEW LOOK), mn. 23. GC Case T-307/09 Earle Beauty v OHIM (NATURALLY ACTIVE) [2010] ECR II-00266, mn. 26. 100 By analogy e. g. GC Case T-366/07 Procter & Gamble v OHIM (P&G PRESTIGE BEAUTE) [2010] ECR II-00194, mn. 53. 101 CJ Case C-39/97 Canon [1998] ECR I--5507, mn. 23. ~o original Juan Bolan ~os) [2007] ECR II102 GC Cases T-443/05 El Corte Ingle ˜ AM disen ´s v OHIM (PiraN 2579, mn. 37; see also, to that effect, Case T-169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II-685, mn. 65; upheld on appeal in CJ Case C-214/05 P Rossi v OHIM [2006] ECR I-7057; GC Case T-116/06 Oakley v OHIM (O store v STORE) [2008] ECR II-2455, mn. 45–49. 99

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services relating to all the aforesaid services) were services connected with the business sector, which itself necessarily has links with the banking and financial sector. On this basis, the GC found there is a degree of proximity between those different services.

2. Relevant goods and services The comparison of the goods and services must be based on the wording indicated in 76 the respective lists of goods and/or services. Under Art. 2 (4) of Regulation No. 2868/95, the international classification of goods and services under the Nice Agreement is exclusively for administrative purposes and is not conclusive when assessing the similarity of goods and/or services. Therefore, goods and services should not be regarded as being dissimilar to each other on the ground that they appear in different classes under the Nice Classification. Conversely, goods and services may not automatically be regarded as similar to each other on the ground that they appear in the same class under the Nice Classification103. This is a rule that the scope of the goods and services should be identified with 77 sufficient clarity and precision to enable economic operators to determine the extent of the protection conferred by the trade mark104. The problem arises if the scope of registration is identified with use of the general indications of the class headings of the Nice Classification and the class headings are not sufficiently clear and precise. In this case, in accordance with the CJ judgment in the IP Translator case, a court should interpret the scope of registration in accordance with its natural and usual meaning (see further Commentary to Art. 8, mn. 61 et seq.)105.

3. Comparison of goods and services – examples a) Comparison of goods in Classes 14 and 25. The goods in the Class 25 (clothing, 78 footwear, headgear) and class 14 (in particular jewellery, precious stones; watches) are considered dissimilar. According to the GC case-law106, the nature, intended purpose and method of use of these goods are different and, what follows, they are not in competition with each other. The goods are not considered as complementary, since they are not indispensable or important for the use of the other in a way which could lead the consumer to think that they are manufactured by the same undertaking. The link between such goods is deemed too indirect to claim their complementarity. Although it is accepted that the selection of a specific item from among such goods in class 14 may be influenced by the wish to create a harmonious whole with clothing, the fact remains that, according to the case-law, the search for a certain aesthetic harmony in clothing is a common feature in the entire fashion and clothing sector and is too general a factor to justify, by itself, a finding that all the goods concerned are complementary and, thus, similar’107. In the view of the Court, the relevant public expects watches and jewellery to be marketed in specialist outlets, the staff of which have specific knowledge relating to those goods. Although some fashion brands market the goods in class 14 together with articles of clothing, it is not a commonly applied 103 GC Cases T-259/06 Torres v OHIM (MANSO DE VELASCO) [2008] ECR II-320, mn. 31; T-115/02 AVEX v OHIM (a) [2004] ECR II-2907, mn. 24–27. 104 CJ Cases C-418/02 Praktiker Bau- und Heimwerkerma ¨ rkte [2005] ECR I-5873, mn. 31, 48–52; C307/10 Chartered Institute of Patent Attorneys, nyp, mn. 45. 105 CJ Case C-307/10 Chartered Institute of Patent Attorneys, nyp, mn. 58. 106 GC Case T-364/08 2nine v OHIM (nollie) [2010] ECR II-37, mn. 30–37. 107 GC Cases T-169/03 Sergio Rossi v OHIM (SISSI ROSSI) [2005] ECR II-685, mn. 27; T-116/ 06 Oakley v OHIM (O STORE) [2008] ECR II-2455, mn. 86

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practice and an average consumer does not associate jewellery or watches with clothing, footwear and headwear outlets. Therefore, it cannot be reasonably claimed that the distribution channels of these goods are identical. Additionally, a general rule applies that many different kinds of goods may be sold in department stores or supermarkets, therefore, it is not particularly significant for the consumers that the goods in questions may be found in such channels and such fact is not associated with the same origin of goods108. b) Comparison of goods in Classes 18 and 25. When it comes to comparing goods in Classes 18 and 25, the goods within class 18 are generally divided into two separate categories. The goods in class 25 and goods in class 18 made of leather or imitation and not included in other classes are considered similar in OHIM and CJ practice. The ‘goods in leather and imitations of leather’ include clothing accessories such as bags which contribute, with clothing and other clothing goods, to the external image (‘look’) of the consumer concerned, that is to say coordination of its various components at the design stage or when they are purchased109. The fact that those goods are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and support the impression that the same undertaking is responsible for the production of those goods110. 80 The second category of goods in class 18 consists of products which are not considered as fashion accessories, but which serve more practical purpose. Such goods as ‘trunks and travelling bags; travelling bags; sports bags; sail bags; umbrellas, parasols’ are not similar to the goods in class 25111. 79

c) Comparison of goods in the Class 25 and services in the Class 35. In accordance to settled case-law, retail services of given goods are similar to those specific goods112. This rule was developed on the basis of comparison of goods in class 25 and services of commercial retailing/retailing via global computer networks of articles of clothing, footwear. For such similarity to exist, the goods in question must be specifically indicated in respect to retailing services registered under class 35. As stated by the Court, for the purposes of registration of a trade mark covering services provided in connection with retail trade, it is not necessary to specify in detail the services for which that registration is sought. To identify those services, it is sufficient to use general wording such as ‘bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods’. However, the applicant must be required to specify the goods or types of goods to which those services relate by means, for example, of particulars such as those contained in the application for registration filed in the main proceedings113. 82 When it comes to applying particular similarity tests, the nature of the goods and retail services pertaining to such goods is different, since the former are fungible and the latter are not. Their purpose is also different, since the retail service precedes the purpose served 81

~o original Juan Bolan ~os) [2007] ECR II108 GC Case T-443/05 El Corte Ingle ˜ AM disen ´s v OHIM (PiraN 2579, mn. 30. 109 GC Cases T-569/11 Gitana v OHIM (GITANA), nyp, mn. 42–46; T-498/10 Mayer Naman v OHIM ~o original Juan ˜ AM disen (David Mayer), nyp, mn. 67–71; T-443/05 El Corte Ingle´s v OHIM (PiraN ~os), mn. 49–50. Bolan 110 GC Cases T-569/11 Gitana v OHIM (GITANA); T-96/06 Tsakiris-Mallas v OHIM (exe ¯), mn. 32. 111 GC Cases T-569/11 Gitana v OHIM (GITANA), mn. 39; T-443/05 El Corte Ingle ´s v OHIM ~o original Juan Bolan ~os), mn. 44. ˜ AM disen (PiraN 112 GC Cases T-116/06 Oakley v OHIM (O STORE) [2008] ECR II-2455, mn. 62; T-466/09 Comercial Losan v OHIM (Mc. Baby), nyp, mn. 24. 113 CJ Case C-418/02 Praktiker Bau- und Heimwerkerma ¨ rkte [2005] ECR I-5873 mn. 49–50.

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by the product and concerns the activity carried out by the trader for the purpose of encouraging the conclusion of the sales transaction for the product in question. As an example, an item of clothing is intended in particular to clothe the person who purchases it, whereas a service linked to the sale of clothes is intended, inter alia, to offer assistance to the person interested in the purchase of that clothing. The same applies to their method of use, which for clothes means the fact of wearing them, whereas the use of a service linked to the sale of the clothes consists, inter alia, in obtaining information about the clothes before proceeding to buy them. Retail services are rarely offered in places other than those where the goods are retailed and that consumers need not go to different places to obtain the retail service and the product they buy. In regards to complementary nature of the services and goods in question, the relationship between the retail services of particular goods and the goods in question is close in the sense that the goods are indispensable to or at the very least, important for the provision of those services, which are specifically provided when those goods are sold. It follows that, because the services provided in connection with retail trade, which concern goods identical to those covered by the earlier mark, are closely connected to those goods, the relationship between those services and those goods is complementary114. The activity of selling unspecified goods at retail cannot be related to the production 83 of any given good – the goods listed in the specification of the CTM proprietor will not be considered as mere examples; they will be seen as constituting an exhaustive list of goods subject to the CTM proprietor’s commercial retailing and retailing via global computer networks services in Class 35115.

V. Identity and similarity between signs 1. The SABEL case and the basic principles In the SABEL and the Lloyd Schuhfabrik Meyer cases, the CJ specified a general rule, 84 under which global appreciation of the similarity of the marks involves visual, aural and conceptual comparison that is based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components116. The necessity of taking into account the overall impression stems from the fact that an average consumer normally perceives a mark as a whole and does not proceed to analyse its various details117. Moreover, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind118. On the basis of this rule, the three stages within the test of signs similarity should be 85 identified. Firstly, it is necessary to assess whether the marks in question are composite (complex) marks or are composed of one element. Although most cases concern composite marks, the notion of component has not been yet defined by the Courts119. The following basic types of components can be distinguished – among verbal components – word and meaningful parts of word and among figurative elements – typography, device elements and colour. 114

GC Case T-116/06 Oakley v OHIM (O STORE) [2008] ECR II-2455, mn. 47–56. OHIM Dec. of 30.11.2012 R 1624/2011-2 GG (fig.), mn. 32. 116 CJ Cases C-251/95 SABEL BV v Puma AG [1997] ECR I-6191, mn. 23; C-342/97 Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] ECR I-3819, mn. 23. 117 CJ Case C-251/95 SABEL BV v Puma AG, mn. 23. 118 CJ Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-03819, mn. 26. 119 OHIM, The Manual Concerning Proceedings before the Office, Part C Section 2, Chapter 5, p. 3. 115

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Secondly, if one of marks is a composite mark, it is necessary to assess the overall impression of this mark, thus, it must be assessed whether the overall impression is created by a dominant component (see below mn. 88–131) or whether a component retains independent distinctive role (see below mn. 132–155). If the overall impression is dominated by one element, the mark is compared with the other mark solely on the basis of this component. If there is no dominant component, all elements create the overall impression and should be considered in the comparison of the signs. However, if a non-negligible, yet not dominant, component retains independent distinctive role, this factor should be emphasized within the overall assessment of similarity. 87 Thirdly, the marks are compared in three sub-stages involving visual, aural and conceptual assessment (s. below mn. 201–213 and 214–239) that is subject to the principle of interdependence (s. below mn. 240–251). 86

2. Overall impression of signs a) Dominant and negligible elements. aa) The Matratzen case and the basic principles. The doctrine of a dominant element of a trade mark was developed by the Court in the Matratzen case. It was held that a component has a dominant character where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it120. 89 If a component forms the dominant element within the overall impression created by a complex mark, it is possible to consider the complex trade mark as similar to another trade mark which is identical or similar to the dominant component of the complex mark121. It is established that the concept of dominant character is not contrary to but is determined by the SABEL rule of global appreciation of marks similarity122. Consequently, it does not allow for taking into consideration any component of a complex trade mark and comparing it with another mark. It merely provides that the overall impression created in the mind of the relevant public by a complex mark may, in certain circumstances, be dominated by one or more of its components123. 90 In order to identify dominant and negligible elements of a complex sign the following factors should be considered: – position of an element (at the beginning, in the middle or at the end of a composite word element, central or secondary position within a complex figurative mark); – intrinsic qualities – distinctiveness or at least the unique representation of a nondistinctive element. 88

MATRATZEN

the earlier trade mark

the later trade mark

120 GC Case T-6/01 Matratzen Concord v OHIM [2002] ECR II-04335, mn. 33, upheld in CJ Case C-3/ 03 P [2004] ECR I-03657. 121 Ibid. 122 CJ Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I-03657, mn. 28, as interpreted by AG Jacobs in CJ Case C-120/04 Medion [2005] ECR I-08551, mn. 30–33. 123 GC Case T-6/01 Matratzen Concord v OHIM [2002] ECR II-04335, mn. 34.

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Applying the foregoing to the facts of the case, in relation to the later mark the Courts held that: – the word Matratzen is not descriptive of the goods covered by the later mark. In the case relevant public was mainly Spanish-speaking, and the word Matratzen, which means mattresses in German, has no meaning in Spanish. Furthermore, the word occupy a central position within that arrangement; – the word Concord is not descriptive of the products covered by the later mark and is also centrally positioned within the mark; – the word ‘markt’ occupies a marginal position within the compound trade mark, as compared with the words Matratzen and Concord. As far as the figurative sign contained in the later mark is concerned, it was held that it is descriptive in relation to the goods covered by that mark. However, an element of a complex trade mark which is descriptive of the goods covered by that mark cannot, in principle, be considered to be the dominant element of the latter. It does not mean that a descriptive element cannot be non-negligible and a part of overall impression, or, as an exception, be a dominant element (see mn. 128–131). Neither it means that graphic elements are negligible since, due to their distinctive character and central position, they can be considered as non-negligible elements (see mn. 116–124) or dominant elements (see mn. 125–127). In the conclusion, the GC found that the words Matratzen and Concord can be considered the most important components of the later mark. However, the first word is characterised by a preponderance of consonants with hard pronunciation and, bearing no resemblance to any Spanish word, appears more likely than the second word to be kept in mind by the relevant public. In result, it was held that the word Matratzen is the dominant element of the later mark. The problem of the Matratzen case and subsequent case-law is not the notion of dominance as such (see mn. 89–90 above), but the improper application of its principles (see mn. 91–94 above), in particular its application when the mark contains components that, although less important, are not negligible, thus, should not be neglected in the overall impression of a complex mark. In the Limonchelo case, the CJ emphasized that the overall impression can be dominated by one of its components only when the other components are negligible124. The pronunciation of the mark, even if resulting in the increased importance of the Matratzen word, should not lead to consider the Concord word as negligible element having in mind its normal distinctive character and the central position. According to OHIM, the identification of a dominant element is based on the visual assessment125. However, since the assessment of dominant and negligible elements can be considered as the first stage of assessment of similarity between the marks, it should be subject to general principles of this test. This means in particular that it should be considered on visual, phonetic and conceptual levels. Even if in the most cases the visual assessment will be leading, the remaining factors cannot be disregarded. For instance, the assessment of distinctiveness of components of a mark requires the conceptual analysis (see mn. 215–240) and phonetic assessment can serve for instance to strengthen the argument of dominant position of an element placed in the beginning of a mark (see mn. 204).

124 CJ Case C-334/05 P OHIM v Shaker [2007] ECR I-04529, mn. 42, clearly influenced by AG Kokott opinion in the case, mn. 21. 125 OHIM, The Manual Concerning Proceedings before the Office, Part C, Section 2, Chapter 3 (version dated 2.6.2014), p. 3.

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91

92

93

94

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This was explicitly confirmed by the GC in the NEGRA MODELO case126, in which it was found that the attempt to determine the dominant component inevitably entails an analysis of the meaning which each of those words has for the relevant consumer. 97 Additionally to factors provided in the Matratzen case, in order to establish dominant and negligible elements, other factors can be taken into account, such as on the visual level the size of the elements and the colour composition. The factors provided in the Matratzen case and the foregoing are subject to global assessment, where they are balanced in accordance with the rule of interdependence. 96

98

bb) Position. The position of the element in the mark is an important factor that tends to be overestimated by the Courts.

ARTHUR ET FELICIE

the earlier trade mark

99

the later trade mark

In the ARTHUR ET FELICIE case127, with regard to the earlier trade mark, the GC held that the word element ‘Arthur’ must be considered the dominant element of the earlier mark, since the figurative elements remain secondary – the dot being negligible and the particular typography also not distinctive – giving no indication of the origin of the goods covered independently of the word element. The later mark is made up of the coordinating conjunction ‘et’ and two words, ‘Arthur’ and ‘Felicie’. Nevertheless, given that the trade mark begins with the word ‘Arthur’, that element was considered the dominant element of the later sign. This assessment of the later mark seems controversial due to the fact that the word ‘Felice’ even if less important for the overall impression of the mark in view of its position, should not be considered as negligible. However, the ‘Arthur’ element could be considered as a component that, without dominating the overall impression of the mark, retains independent distinctive role within the later mark.

KINDER

the earlier trade mark

100

the later trade mark

In the TiMi Kinderjoghurt case128, the GC held that in the later mark the word ‘kinder’ is merged with the word ‘joghurt’, which means that they have no specific, independent existence. Not only the words ‘kinder’ and ‘joghurt’ have the same visual significance, but the stylised unevenness of the dancing, undulating font used turns them into a harmonious unit in which the two constituent words have become barely perceptible. This fanciful word ‘kinderjoghurt’ is of only secondary importance as compared with the word ‘timi’. Visually, ‘timi’ is the focus point of the sign since it is 126

GC Case T-169/02 Cervecerı´a Modelo v OHIM (NEGRA MODELO) [2005] ECR II-00505, mn. 32. GC Case T-346/04 Sadas v OHIM (ARTHUR ET FELICIE) [2005] ECR II-04891, mn. 43. 128 GC Case T-140/08 Ferrero SpA v OHIM (TiMi KiNDERJOGHURT) [2009] ECR II-03941, mn. 56, upheld in C-552/09 P. 127

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prominently and centrally placed above the word ‘kinderjoghurt’, and accordingly, attention is drawn first to it. The central positioning largely offsets the fact that the word ‘timi’ is printed in a font of smaller size than that used for the word ‘kinderjoghurt’ and the fact that the printing in white on a dark background might possibly make the word ‘timi’ less legible than the word ‘kinderjoghurt’ placed in the lower part of the sign. Moreover, aurally, it is clear that ‘timi’ is the first word to be pronounced, with the result that consumers attach most importance to it. The foregoing allowed the GC to come to a conclusion that the word ‘kinder’ is therefore overshadowed by the dominant element ‘timi’. Accordingly, the word ‘kinder’ is a negligible element in the overall impression produced by the mark at issue. This analysis is not convincing given how many factors has been offset by merely the position of the ‘timi’ word. It was also not contemplated whether TiMi element will be pronounced at all, having in mind intrinsic qualities and position of KINDERJOGHURT element and tendency of consumers to simplify the structure of marks in pronunciation. On the other hand, in the case involving word marks GIORGIO and GIORGIO 101 BEVERLY HILLS, it was implied that the words BEVERLY HILLS, due to their size (number of letters), are more important in the overall impression than the initial part. The right balance between the position and the size of elements constituting the marks was struck in three following cases.

Carrera panamericana

the earlier trade mark

the later trade mark

In the Carrera panamericana case129 the position of ‘Carrera’ element in the later 102 mark does not allow for a conclusion that it is a dominant element. However, given both visual and phonetic perspective, certainly this element is a more important element than ‘paramericana’ element within the overall impression.

CK CREACIONES KENNYA the earlier trade mark

the later trade mark

In the CK CREACIONES KENNYA case the GC held that the mere position of the 103 group of letters ‘ck’ at the beginning of the later mark is not sufficient to make it the dominant element in the overall impression created by that mark. Although the earlier mark consists of the dominant element ‘ck’, this element in the later mark corresponds to the initial letters of the words ‘creaciones’ and ‘kennya’, thus, by explaining its presence, occupies an ancillary position in relation to the element ‘creaciones kennya’. The overall impression created by the later mark is dominated by the element ‘creaciones kennya’ due to its distinctive character130.

129

GC Case T-600/11 Schuhhaus Dielmann v OHIM (Carrera panamericana), nyp, mn. 23. GC Case T-185/07 Klein Trademark Trust v OHIM (CK CREACIONES KENNYA) [2009] ECR II01323, mn. 44–45, confirmed in CJ Case C-254/09 P. 130

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MAGIC SEAT

the earlier trade mark

the later trade mark

In the MAGIC SEAT case, the position at the beginning was offset by the distinctive character of the SEAT word which, although placed at the end of the later mark, was considered dominant element of the mark.131 105 In principle, the position in isolation should not be a sufficient factor to reach the conclusion that an element is a dominant element of a complex word trade mark. In this sense, the role of the doctrine of a dominant element is not to allow to take shortcuts in the assessment of similarity. Without allowing for the finding that an element is dominant, the position can lead to the conclusion that the element is a nonnegligible element that is more important than other elements in the overall impression. 104

106

cc) Position associated with other factors. The position is a factor that can influence the overall impression in association with other elements such as typography, distinctive character of elements or colour composition, such as in the EDUCA Memory game case132.

MEMORY

the earlier trade mark

107

the later trade mark

The element ‘memory’ in the later mark is strongly linked with the word which follows it, namely the word ‘game’. The words ‘memory’ and ‘game’, the typeface and the size of the characters of which are identical, are placed inside the same rectangle below a red rectangle containing the word ‘educa’ in capital letters. That creates a genuine dichotomy visually and phonetically between the word ‘educa’, on the one hand, and the combination of the words ‘memory’ and ‘game’, on the other. With regard to the conceptual aspect, it was pointed out that ‘memory’ and ‘game’ are two common English words and, taking into account their graphical representation, the elements was held to be easily perceived by the German-speaking public as being distinct from the element ‘educa’ and as forming a logical whole. Furthermore, the words ‘memory game’ will be perceived by a consumer as descriptive element of goods. As a conclusion, the GC found ‘educa’ element is the dominant element since it is a more distinctive element and has a dominant position in the structure and layout of mark. This conclusion is much more convincing than the one in the TiMi Kinderjoghurt case133. This two cases have in common the central position of the first element, however, in the EDUCA Memory game, the position is only one of the relevant factors that are coherently connected in the appreciation of overall impression. 131

GC Case T-363/06 Honda Motor Europe Ltd vs. OHIM [2008] ECR II-02217, mn. 29–32. GC Case T-243/08 Ravensburger AG v OHIM (EDUCA Memory game) [2010] ECR II-00095, mn. 36–38. 133 GC Case T-140/08 Ferrero v OHIM (TiMi KiNDERJOGHURT) [2009] ECR II-03941, mn. 54–57. 132

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the earlier trade mark

the later trade mark

In the Sadia/GRUPO SADA case, although the figurative element in this mark attracts 108 attention because of its size, the pattern is difficult to recall and consequently will not dominate the image of the later mark which the relevant public will keep in mind. In the first place, the pattern is geometrically somewhat complex. In the second place, the figurative element in the design of the mark is set off to the left vis-a`-vis the vertical alignment formed by the two verbal elements, which suggests that it is of negligible significance, of a decorative nature, in the overall impression created by the mark. With regard to the verbal elements, the font and the thickness of the characters of the verbal element ‘sada’ as well as the central position of that element allows for the conclusion that the verbal element ‘sada’ constitutes a dominant element of the mark. This is additionally supported by the fact that the latter term will not be remembered by the consumer who will ascribe to the term only its generic meaning, namely that of a group of companies134. dd) Distinctiveness of an element. In accordance with the Lloyd Schuhfabrik Meyer 109 principle, for the purpose of assessing the distinctive character of an element of a mark, the assessment is made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings135. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all laudatory, allusive or otherwise descriptive of the goods or services for which the mark has been registered136. It was explicitly held by the CJ that it is necessary to distinguish between the notion 110 of the distinctive character of the earlier mark, which determines the protection afforded to that mark, and the notion of the distinctive character which an element of a composite mark possesses, which determines its ability to dominate the overall impression created by the mark. Consequently, while it is true that it is necessary to examine the distinctiveness of an element of a composite mark at the stage of assessing the similarity of the signs in order to determine any dominant element of the sign, the degree of distinctiveness of the earlier mark is an element to be taken into account in the context of the global assessment of the likelihood of confusion. It is therefore not appropriate to take account of what may be a low degree of distinctiveness of the earlier marks at the stage of assessing the similarity of the signs. ee) Non-distinctive elements as negligible elements. In the MATRATZEN case, the 111 Courts rightly considered the figurative elements as decorative and secondary, thus, negligible in the overall impression of the mark. This is often the case with figurative elements – fonts, colours and simple device elements. 134

GC Case T-31/03 Grupo Sada, pa, SA v OHIM (GRUPO SADA) [2005] ECR II-01667, mn. 51–57. CJ Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-03819, mn. 22. 136 E. g. GC Cases T-366/07 Procter & Gamble v OHIM (P&G PRESTIGE BEAUTE) [2010] ECR II00194, mn. 76; T-412/08 Trubion Pharmaceuticals v OHIM (TRUBION) [2009] ECR II-239, mn. 42; T131/09 Farmeco v OHIM (BOTUMAX) [2010] ECR II-00243, mn. 44. 135

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the earlier trade mark

112

the later trade mark

However, in some cases also word elements can be found negligible such as in the involving marks AGATHA RUIZ DE LA PRADA and the representation of a black and white flower. This case should be interpreted as an exception from the general principle that word elements are more important within the overall impression of marks than figurative components137.

Coto de Imaz

the earlier trade mark

113

the later trade mark

For marks in the alcohol (in particular wine) sector, such as Coto de Gomatiz, the GC tends to consider the figurative elements, such as a representation of a vineyard, as descriptive thus negligible138.

LIMONCHELO

the earlier trade mark

the later trade mark

137

GC Case T-522/08 Ruiz de la Prada de Sentmenat v OHIM [2011] ECR II-00275, mn. 42. GC Cases T-276/10 El Coto De Rioja, SA v OHIM (COTO DE GOMARIZ) [2011] ECR II-00386, mn. 33; T-332/04 Sebira´n, SL v OHIM (Coto D’Arcis) [2008] ECR II-00033, mn. 38 and T-460/11 Scandic Distilleries SA v OHIM, nyp, mn. 46. 138

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Similarly, in the Limonchelo case, the figurative component of the later mark consisting 114 of a round plate decorated with lemons, was found not to attract the attention of the average consumers of the goods, who are regularly confronted with images of lemons affixed to lemon-based liqueurs139. The decisive factor is that the relevant consumer usually describes and recognises the goods such as alcoholic beverages by reference to the verbal element disregarding the non-distinctive, decorative elements of marks.

the earlier trade mark

the later trade mark

In another case involving marks in the sector of alcoholic beverages, figurative 115 elements representing labels for affixing to bottle necks consisting of two bands intersecting at an angle with a circular element where the bands cross, which thus has the shape of a lavaliere tie, was held common in the sector, therefore negligible in the overall impression of the later sign which was held to be dominated by the DORATO word element140. ff) Non-distinctive elements as non-negligible elements. In the division of impor- 116 tance of elements between dominant and negligible ones, the third category – namely non-negligible elements – is sometimes omitted by the Courts. It concerns in particular the figurative elements, however, non-negligible verbal elements are also sometimes disregarded by the Courts. In the case involving ECHINACIN and ECHINAID141 marks, the GC held that where 117 a mark is composed of a descriptive element, such as the prefix ‘echina-’, that element cannot be regarded as the dominant element because otherwise a finding of likelihood of confusion could be based only on elements that cannot be protected as marks. In other words, it does not enable the commercial origin of the products to be distinguished. In effect, the endings of the signs at issue, namely ‘-id’ and ‘-cin’, were regarded as dominant elements which attract the attention of consumers. Another example in point is the case involving marks RNAiFect and RNActive142.

MILES

the earlier trade mark

the later trade mark

139 GC Case T-7/04 Shaker v OHIM (Limoncello della Costiera Amalfitana shaker) [2008] ECR II03085, mn. 42. 140 GC Case T-249/13 MHCS v OHIM (DORATO), nyp, mn. 71. 141 GC Case T-202/04 Madaus AG v OHIM (ECHINACIN) [2006] ECR II-01115, mn. 55. 142 GC Case T-80/08 Case CureVac v OHIM (RNAiFect) [2009] ECR II-04025, mn. 40–45.

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In the Biker Miles case, the Miles word element was considered dominant143, although the figurative element, even though not particularly distinctive, due to its position, colour and size should not be considered as negligible. Similarly, even if the ‘Biker’ element is less important than ‘Miles’ word, is non-negligible if its position is taken into account. 119 The highly stylized typography can constitute a non-negligible figurative element. In the DOR/COR case, the typography in Gothic characters emphasizing the initial letter ‘d’ was held sufficiently intrinsic to contribute to the overall impression144. Similarly, in the case involving marks VOLVO and SOLVO, the stylised font was considered a highly distinctive element, that influences to a large extent the overall impression created by the mark, since it characterises its more important word element145. In the NABER/FABER case, the figurative element was found not secondary, since it consisted of an invented construction requiring a conceptual effort of construction. The first letter ‘F’ was highly stylised since it covers, firstly, the whole of the word element in its upper part and secondly the bar of the ‘F’ underlines the word element by passing round underneath it before finishing up against the bar of the final letter ‘R’. Moreover, the ellipse in which that construction is enclosed strongly accentuates its particular figurative aspect146. 118

SAINT-HUBERT 41

the earlier trade mark

120

the later trade mark

In one of early cases regarding device elements, it was found that the device element holds an equivalent position in relation to the word element and, therefore, despite being descriptive, it cannot be regarded as a negligible component.

4EVER

the earlier trade mark

121

the later trade mark

The further case-law is more stricter as to the importance of non-distinctive figurative element. In the case involving 4 EVER and FOREVER marks147, mere position of the device element was not sufficient to find the element contribute to the overall assessment of the later mark.

143 GC mn. 45. 144 GC 145 GC 146 GC 147 GC

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Case T-385/03 Miles Handelsgesellschaft International mbH v OHIM [2005] ECR II-02665, Case Case Case Case

T-342/05 Henkel v OHIM (COR) [2007] ECR II-00052, mn. 44. T-394/10 Elena Grebenshikova vs OHIM (SOLVO/VOLVO), nyp, mn. 37–38. T-211/03 Faber Chimica Srl v OHIM (Naber/Faber) [2005] ECR II-01297, mn. 41. T-528/11 Aloe Vera of America v OHIM (FOREVER), nyp, mn. 61.

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the earlier trade mark

the later trade mark

The figurative element does not to be highly intrinsic or independently meaningful to 122 be non-negligible. It is sufficient that the mark affects the perception of word elements in the way that could not be disregarded. In the case involving marks ELLE and ELLA VALLEY VINEYARDS148, the words ‘ella’ and ‘valley’ were written in the same font and the same colour inside the black rectangle and the word ‘vineyards’ written in black capital letters was placed under the rectangle. It was held that although the word ‘ella’ is larger than ‘valley’ and it is positioned above the latter, the configuration of the later mark is such that those two words cannot be perceived separately. Thus, on account of the contiguity of those two words in the black rectangle, and their identical font and colour, and despite the difference in size, the GC found that the relevant public will perceive the expression ‘ella valley’ as an indissociable whole. The case is somehow striking if contrasted with other cases concerning marks representing etiquettes of wines where large, yet non-distinctive, device elements were held negligible. In the MARS/NARS case, the device element of the earlier mark was found the most 123 important element of this mark in view of its size and colour. It was five times larger than the word element of the marks and its contrasting black and white colours make it stand out clearly, additionally, the element has equivalent position149. In the IKEA/IDEA case150, the figurative element that takes the form of a grid with rounded corners as unusual and held that it possesses a degree of intrinsic distinctiveness which is relatively high. In contrast, the expression ‘idea’ had only limited distinctive character. Each of the letters of the expression ‘idea’ was placed inside one of the small squares making up the figurative element of the contested mark, thus, in the manner that reinforces the dependence of the verbal element on the figurative element151. A figurative element is clearly non-negligible in the inex/‘representation of cowhide’ case, 124 in which the complex mark was comprised of many word and figurative elements from which it was however possible to identify a figurative element that is more important than the others in the overall impression. These elements included the stylised grass at the bottom of the carton, the image of a farm with a little red barn near the top of the carton and the word element ‘inex’. The last element is a word with no obvious meaning, thus, had an average distinctive power. Although the representation of a cowhide was most important visually in the overall impression of the earlier mark, it had allusive character in relation to the goods at issue (milk products), thus, a weak distinctive character prevented the element from being considered as a dominant element152. gg) Distinctive graphic elements as dominant elements. It is a settled case-law that 125 where a trade mark is composed of verbal and figurative elements, the former should, in 148

GC GC 150 GC 151 GC 152 GC 47–49. 149

Case T-32/10 Ella Valley Vineyards v OHIM (ELLA VALLEY VINEYARDS), nyp, mn. 43. Case T-88/05 Quelle vs. OHIM (NARS) [2007] ECR II-00008, mn. 60. Case T-112/06 Inter-Ikea v OHIM (idea) [2008] ECR II-00006, mn. 50. Case T-110/01 Vedial SA v OHIM (HUBERT) [2002] ECR II-05275, mn. 53. Case T-153/03 Inex v OHIM (Representation of a cowhide) [2006] ECR II-1677, mn. 33–37,

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principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods by quoting their name than by describing the figurative element of the trade mark153. However, the figurative elements also can be considered as dominating the overall impression of the mark. 126 The representation of a polo player was considered a dominant element of the later mark that is to say the figurative element, which gives that mark its distinctiveness and which will be the most easily remembered by consumers. By contrast, the verbal element of the later mark, consisting of six words written in relatively small characters which are, because of their position in the roundel, particularly difficult to read, is negligible in the overall impression produced by that mark. In addition, the presence of the verbal element in the form of a roundel only emphasises the figurative element of that mark, with the result that the latter’s dominance is strengthened. The applicant claimed that it would be an unfair and unjustifiable to give a monopoly over the polo player device and to prevent any later application. The GC held that the device of a polo player is intrinsically highly distinctive in relation to the Class 3 goods for which registration of the mark was sought since, in relation to those products, the device of a polo player is an image with high imaginative content. 127 In the Outils Wolf (fig.) case, the analysis of signs conducted by the GC was very limited. It was only implied that the figurative element of the later mark is dominant one and the word elements are negligible. This conclusion is certainly too far reaching154. The Carbonell (fig.) case is another example of a case in which the GC too easily excluded the word element from the overall impression of marks. In this case the position and size of element determined that figurative component is dominant in both marks and the word element does not contribute to the overall impression of the marks155. In the VENADO (fig.) case, both marks displayed figurative elements consisting, in particular, in the representation of a deer’s head facing forward in a circle. The GC found that shared figurative element dominates the conflicting signs on account of its eye-catching appearance and its size156. The conclusion leading to the disregarding Venado element which is easily legible is certainly not obvious. hh) Non-distinctive elements as dominant elements. In the Matratzen case, the Courts established that descriptive elements cannot be in principle dominant. In the Echinaid157 and the Biker Miles case158, significantly more restrictive rule was established, under which descriptive elements are considered negligible. 129 This was clearly overruled in the FLEX/FLEXI AIR case, in which the FLEX element, despite having weak distinctive character, was considered as a dominant element of the later sign159. This conclusion was not necessary for finding similarity between marks. Just as the CJ criticized ‘disregarding the notion of the similarity of the marks in favour of one 128

153 GC Cases T-312/03 Wassen International v OHIM (SELENIUM-ACE) [2005] ECR II-2897, mn. 37; T-205/06 NewSoft Technology v OHIM (Presto! Bizcard Reader) [2008] ECR II-00078, mn. 54; T-412/08 Trubion Pharmaceuticals v OHIM (TRUBION) [2009] ECR II-239, mn. 45. 154 GC Case T-570/10 Environmental Manufacturing v OHIM, nyp, mn. 58–59 (set aside by the CJ in C-383/12 P on the other grounds). ~ola) [2007] ECR II-03355, mn. 9, confirmed in CJ Case 155 GC Case T-363/04 Koipe v OHIM (La Espan C-498/07 P. 156 GC Case T-81/03 Mast-Ja ¨ germeister v OHIM (VENADO avec cadre) [2006] ECR II-05409, mn. 92. 157 GC Case T-202/04 Madaus vs.OHIM (ECHINAID) [2006] ECR II-01115, mn. 51. 158 GC Case T-385/03 Miles Handelsgesellschaft International mbH v OHIM [2005] ECR II-02665, mn. 45. 159 GC Case T-112/03 L’Ore ´al v OHIM (FLEXI AIR) [2005] ECR II-00949, mn. 64, 66. Earlier GC Cases: T-115/02 AVEX v OHIM (a) [2004] ECR II-2907, mn. 20; T-153/03 Inex v OHIM (Representation of a cowhide) [2006] ECR II-1677, mn. 32.

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based on the distinctive character of the earlier mark, which would then be given undue importance’, it could be equally said that the CJ disregarded the notion of dominant character of an element and role of distinctiveness of an element in order to justify the high similarity between marks in the case. This analysis of the CJ indicates the gap between the case-law of dominant element (the Matratzen case – see mn. 88–97) and case law of independent distinctive character (the Medion case – see mn. 132–156), which was issued half a year before the judgment in the FLEXI AIR case. This gap has been subsequently filled within the independent distinctive element line of cases (see mn. 132–156). The Courts tend to avoid finding an element of a mark as dominant at the same time 130 significantly prioritizing the element within the comparison test. Even if an element is found dominant still other elements are not considered negligible and are also assessed among factors that are compared. This can be interpreted as limiting the importance of dominant character of an element with the shift of focus on the assessment of relative importance of non-negligible elements. In the Limonchelo case, identification of weak elements as dominant elements had 131 better basis that in the FLEXI AIR case due to the existence of other factors than the position of the element in a word mark. The GC held that the figurative component, consisting of the representation of the round dish decorated with lemons, occupies a place visually as important as the word ‘limoncello’ in the mark. The words ‘della’, ‘costiera’ and ‘amalfitana’ are placed beneath the word ‘limoncello’ and are written in much smaller yellow letters and, therefore, are clearly secondary in relation to the word ‘limoncello’. The word ‘shaker’, it is only just visible in the mark taken as a whole, as it is located at the bottom of the mark and is written in little blue letters in a frame with a white background. The image of the glass in the letter ‘k’ goes almost unnoticed. Thus, the component ‘shaker’ is negligible in the overall impression created by the later mark. The word which the relevant public will remember is, rather, the word ‘limoncello’, in view of its prominent location and its position in relation to the other components, the fact that it is written in large white letters on a blue background, which makes it stand out from that background, and its size as compared with all the other word components of that composite mark. The GC found that at stage of the assessment of dominant elements, there is no need to rule on the possibly weak distinctive character of the word ‘limoncello’ since the position, size and colour composition are sufficient to conclude that the word is likely to dominate the overall impression created by the later mark in the minds of the relevant public160. b) Elements retaining independent distinctive role. aa) The Medion case. The 132 concept of independent distinctive role was first formulated by the CJ in the Medion case involving LIFE and THOMSON LIFE marks. In the case, the CJ defined the concept by observing that ‘beyond the usual case where the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element’161. The CJ by generalizing the facts of the case held that the concept should be applied 133 where, for example, the owner of a widely-known mark or company name makes use of a composite sign juxtaposing this mark (THOMSON) and an earlier mark which is not 160 GC Case T-7/04 Shaker v OHIM (Limoncello della Costiera Amalfitana shaker) [2008] ECR II03085, mn. 42. 161 CJ Case C-120/04 Medion AG v Thomson multimedia Sales Germany & Austria GmbH [2005] ECR I-08551, mn. 30.

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135

136

137

Community Trade Mark Regulation

itself widely known (LIFE). In these situations, the overall impression would be, most often, dominated by the widely-known mark or commercial name included in the composite sign. The most controversial aspect of the concept is the specification of effects of the concept for the test of similarity of marks and assessment of confusion. According to the CJ, where the element has independent distinctive role, the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established. The finding that there is a likelihood of confusion should not be subject to the condition that the overall impression produced by the composite sign is dominated by the part of it which is represented by the earlier mark. Imposing the condition would lead to the owner of the earlier mark be deprived of the exclusive right even where the mark retained an independent distinctive role in the composite sign but that role. Consequently, the CJ accepted that, in order to establish a likelihood of confusion, it suffices that, because the earlier mark still has an independent distinctive role, the origin of the goods or services covered by the composite sign is attributed by the public also to the owner of that mark162. The judgment is an example of a revolutionary milestone in case-law that is afflicted with serious shortcomings. The essence of the judgment, which was preserved in the subsequent case law, is the creation of a measure that prevents a crude and too far reaching interpretation of the Matratzen case and the concept of dominant element (s. above mn. 88–131). Pursuant to this clearly incorrect approach, in the case the THOMSON word would be considered as a dominant element with no effect of the LIFE element on the overall impression. Following the Matratzen case, the Court tended to qualify too many situations in which one element was relatively more important than the other as a situation where the principle of dominance case can be applied. Due to the division between dominant and negligible elements, non-negligible elements were often omitted. In this light, the concept of independent distinctive role is seen as merely a corrective subprinciple to the concept of the dominant element. However, the effects that the CJ assigned to the common element retaining independent distinctive role can be regarded as a misinterpretation of the SABEL concepts of assessment of similarity based on overall impression and in particular the global assessment of confusion. In the subsequent case-law, the scope of the concept of independent distinctive role was further expanded (see below mn. 150–153, 154–156), but the effects of finding an element retaining such a role adequately limited (see below mn. 153–155), what was clearly analysed by AG Mengozzi in the Bimbo Doughnuts case163.

bb) Expansion beyond well-known marks and company names. The Courts expanded the concept beyond its initial scope and justification by application to the cases where there were no well-known mark or company name that would dominate the overall impression. 139 In the BLUE/ecoblue case, the CJ found that the component ‘blue’, even if having weak distinctive character, to the extent that it constitutes in itself the earlier mark, has an independent distinctive role in the mark ecoblue164. It was not relevant whether ‘eco’ was a company name, well-known mark or even whether there was a risk that the common element would be disregarded due to dominant character of ‘eco’ element. 138

162

Ibid., mn. 36. AG Mengozzi opinion in CJ Case C-591/12 P Bimbo SA v OHIM (BIMBO DOUGHNUTS), nyp. 164 CJ Case C-23/09 P Ecoblue AG v OHIM (Ecoblue) [2010] ECR I-00007, mn. 45. 163

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The evolution of approach is even more evident in the LIFE/LIFE BLOG case.165 In 140 this case, both elements have weak distinctive character, but LIFE element is more important, without being dominant, due to its position. From this perspective it is evident that the concept of independent distinctive element no longer serves only to prevent too far reaching effects of finding a dominant element in the mark (THOMSON in THOMSON LIFE). It is also applied in order to limit the application of the Matratzen case in aspect of identification of dominant element in the mark – this is not necessary to identify the LIFE element in LIFE BLOG mark as a dominant element since the similarity of the marks can be facilitated with the use of the doctrine of independent distinctive role. This conclusion was confirmed in number of the CJ and the GC cases that are described below. cc) The condition of non-negligibility of the element. The Medion case166 indicates that a component that has independent distinctive role does not have to be highly distinctive. It is not the mark that must be distinctive, but its role in the overall impression of a later mark. Apart from certain exceptions, the following case law tends to confer the protection within the concept of independent distinctive role also to marks that have clearly weak distinctive character. In the GATEWAY/ACTIVY Media Gateway case, the ‘ACTIVY’ element was considered dominant due to its position and reproduction in capital letters while the common word ‘Gateway’ was considered negligible, thus, cannot retain independent distinctive role, since it was held highly descriptive of the goods and services167. The degree was distinctiveness was also pointed out by the CJ in the BECKER/Barbara Becker case. A surname does not retain an independent distinctive role in every case solely because it will be perceived as a surname. The finding with respect to such a role may be based only on an examination of all the relevant factors of each case168. Although surnames have, as a general rule, a more distinctive character than forenames, it is appropriate, however, to take account whether the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on that distinctive character. The surname ‘Becker’ was found a common surname in Germany, therefore, it could retain independent distinctive role only if other factors would support that finding which seems not to be the case having in mind the position of the element in word composite mark. The less restrictive approach to the distinctive character seems to have roots not only in the Medion case, but also in the FLEXI AIR case (s. above mn. 129), which it considered by AG Mengozzi as a case of independent distinctive role by an implication169. In this light, the FLEX word should not be considered as a dominant element (with effect of disregarding the AIR element), but as a non-negligible element retaining independent distinctive role. This conclusion could allow the Courts to come to the same conclusion without unnecessary stretching the limits of the doctrine of dominant element. The same alternative solution could be applied in the ARTHUR ET FELICIE case, where the common word element ARTHUR was held dominant with effect that the remaining words were neglected in the comparison170. 165

GC Case T-460/07 Nokia v OHIM (LIFE BLOG) [2010] ECR II-00089, mn. 73. CJ Case C-120/04 Medion AG v Thomson multimedia Sales Germany & Austria GmbH [2005] ECR I-08551, mn. 37. 167 GC Case T-434/05 Gateway v OHIM (ACTIVY Media Gateway) [2007] ECR II-00163. mn. 45, 48. 168 CJ Case C-51/07 Barbara Becker v Harman International Industries Inc. (Barbara Becker) [2010] ECR I-05805, mn. 38. 169 AG Mengozzi opinion in CJ Case C-591/12 P Bimbo SA v OHIM (BIMBO DOUGHNUTS), nyp, mn. 29. 170 GC Case T-346/04 Sadas v OHIM (ARTHUR ET FELICIE) [2005] ECR II-04891, mn. 46–47. 166

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141

142

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In the SPA/SPA THERAPY case, the word ‘spa’ was found to retain independent distinctive role, although it has only average distinctive character with regard to the cosmetic products covered by the marks at issue. The GC found that the term is generic in respect of places for hydrotherapy such as hammams or saunas and is not descriptive in respect of the cosmetic products covered by the later mark171. Therefore, having initial position in later mark, the ‘SPA’ element, without being dominant, retains independent distinctive role. 146 Assessment of distinctive character of an element requires to take into account the relevant public and its cultural background. In the DOGHNUTS/BIMBO DOUGHNUTS172, the GC found that the element ‘bimbo’ in the later mark cannot be considered dominant in the mark, even if the earlier mark is one of best-known trade marks in Spain, since the ‘doughnuts’ element cannot be considered negligible in the overall impression created by the later mark. The for this is that the degree of familiarity of the Spanish public with the English language is generally held to be low and the ‘DOUGHUNTS’ word is not a part of basic vocabulary. Furthermore, that word, although it is positioned after ‘bimbo’, is a word formed of eight letters and is thus longer than the word ‘bimbo’, which is formed of five letters, the word ‘doughnuts’ will attract the Spanish public’s attention since it appears unusual in Spanish owing, in particular, to the sequence of consonants ‘ghn’ which is atypical for the Spanish consumer. Having in mind the foregoing the DOUGHNUTS element was found to retain independent distinctive role. 147 The later sign is divided into two elements, namely the word ‘zero’ and the symbol ‘rh+’ which have different graphic aspects and are in different colours. That division is made more apparent by the colours chosen, namely red and white, which stand in contrast to one another. Furthermore, it was found that the fact that the symbol ‘rh+’ appears in bold letters has little impact on drawing the consumer’s attention, since the difference in graphics is hardly noticeable in so far as the word ‘zero’ is also easy to read. Next, the specific composition of the symbol ‘rh+’, namely two lower case letters and the mathematical symbol ‘+’, is also not sufficient to arrive at the conclusion that the symbol ‘rh+’ is dominant in the later mark since the word ‘zero’ occupies a larger part of the mark and is situated at the beginning of it. As regards the claim that the word ‘zero’ is a common word in many countries of the European Union including in Germany, therefore, have weak distinctive character, the GC held that, even if it is accepted that the intrinsic distinctive character of the word ‘zero’ may be low, its meaning none the less bears no relationship to the goods at issue or their characteristics. It was once again reaffirmed that the mere fact that a number of trade marks relating to the goods at issue contain the word ‘zero’ is not enough to establish that the distinctive character of that element has been weakened because of its frequent use in the field concerned. Consequently, the later mark was found composed of two non-negligible elements from which the common element has independent distinctive role173. 145

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dd) The condition of visual and conceptual separateness of the element. In the case involving VIVA/NATURAVIVA marks174, the GC found that even if the element ‘natura’ is a component of the company name of the intervener and used by the intervener in other marks, the element ‘viva’ will be perceived by the relevant public as a qualifying adjective accompanying the noun ‘natura’ and thus forming with that noun 171

GC Case T-109/07 L’Ore´al SA v OHIM (SPA THERAPY) [2009] ECR II-00687, mn. 25. GC Case T-569/10 Bimbo SA v OHIM (BIMBO DOUGHNUTS), nyp, mn. 75–80. 173 GC Case T-400/06 Zero Industry Srl v OHIM (zerorh+) [2009] ECR II-00150, mn. 46–49. 174 GC Case T-107/10 Procter & Gamble Manufacturing Cologne v OHIM (NATURAVIVA) [2011] ECR II-00338, mn. 43. 172

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the logical unit ‘naturaviva’. For that reason, it cannot be perceived as having an independent distinctive position within the later mark175. More debatable is the BLUE/MOL Blue Card case176, where the GC seems to 149 automatically apply earlier ecoblue case also concerning the same earlier mark. These two cases differ significantly in the role in which the ‘blue’ element plays. While in the earlier case, the role was non-negligible (equivalent to the other element), in this case, ‘blue’ seems to be secondary to the ‘card’ forming a new conceptual unit. In this regard, the case resembles the ACTIVY Media Gateway case, in which the role of ‘Gateway’ element was considered subordinate or secondary to other elements the mark177. ee) Expansion beyond identity of common element. More controversially, the GC departed from the strict interpretation of the doctrine as a specific case of earlier trade mark incorporation. This significant extension of the concept has not been confirmed by the CJ yet. The GC found that in the earlier mark, the figurative element depicting number 1 as well as the laurel wreath serve as decoration and non-distinctive element in the sports sector, however, not entirely negligible due to its position. The importance of the ‘offshore’ word element was strengthened by the repetition of the element. Furthermore, the GC found that ‘offshore one’ element does not constitute one logical unit. With regard to the later mark, it was held that the image of boat is secondary to the ‘offshore’ element and the ‘legends’ is a laudatory term in the sector. As a conclusion, finding ‘offshore’ a non-negligible element was sufficient to establish that the word has independent distinctive role in the later mark without reference to the condition of earlier trade mark incorporation178. The above conclusion was explicitly reaffirmed in the Red mug case, in which the GC found that in the event that the earlier mark is not reproduced identically in the later mark, it is still possible that the signs at issue are similar on account of the similarity between the earlier mark and one element of the later mark which has an independent distinctive role. In this case, the concept allowed the GC to held that the red mug and coffee beans have independent distinctive role within the later trade mark with effect that the marks at issue cannot be regarded as totally dissimilar even if the similarity is low179. Similarly in the Polo player case, it was found that the figurative element representing a polo player cannot be regarded as wholly negligible in relation to the overall impression conveyed by the later mark, and in view of the similarity between that element and the earlier mark, the marks at issue cannot be regarded as entirely dissimilar180.

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ff) The result of independent distinctive role. The implications of a finding that the 154 earlier trade mark retains an independent distinctive role within the later sign are not clearly established in the case-law. The Medion case could be interpreted as a limitation of the SABEL rule of assessment 155 based on the overall impression and global assessment of likelihood of confusion. Moreover, as AG Mengozzi found in the Bimbo Doughnuts case, there are various 175 Similarly e. g. GC Cases: T-140/08 Ferrero v OHIM (TiMi KiNDERJOGHURT) [2009] ECR II-03941, mn. 56; T-243/08 Ravensburger v OHIM (EDUCA Memory game)[2010] ECR II-00095, mn. 42. 176 GC Case T-367/12 MOL v OHIM (MOL Blue Card), nyp, mn. 58. 177 GC Case T-434/05 Gateway v OHIM (ACTIVY Media Gateway) [2007] ECR II-0016, mn. 31, 49. 178 GC Joint Cases T-305/07 and T-306/07 Legends v OHIM [2009] ECR II-00155, mn. 86. 179 GC Case T-5/08 Nestle ´ v OHIM (Golden Eagle) [2010] ECR II-01177, mn. 60; cited in GC Case T569/10 Bimbo v OHIM (BIMBO DOUGHNUTS), nyp, mn. 96. ~a v OHIM (POLO SANTA MARIA) [2011] ECR II-00141, mn. 34. 180 GC Case T-376/09 Glenton Espan

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judgments in which the inference of the independent distinctive role is automatically drawn from such a finding that the two signs at issue are visually similar181. 156 However, a more cautious approach in regard of assessment of confusion is taken by the CJ in the some later cases of the Courts. It was held that a likelihood of confusion cannot be inferred from the mere fact that the earlier mark has an independent distinctive role within the later mark, rather must be established on the basis of global assessment, within which the significance of an element retaining such a role should be balanced with other relevant factors of the assessment182.

3. Comparison of signs a) Identity and similarity. The concept of identity implies that two elements compared should be the same in all respects. There is therefore identity between the sign and the trade mark where the former reproduces, without any modification or addition, all the elements constituting the latter. The criterion of identity of the sign and the trade mark must be interpreted strictly. However, the concept of identity is not contrary to the SABEL principles, thus, the perception of identity must be assessed globally with respect to the relevant public, based on the overall impression of marks. Since the perception of identity between the sign and the trade mark is not the result of a direct comparison of all the characteristics of the elements compared, insignificant differences between the sign and the trade mark may go unnoticed by an average consumer183. 158 Having in mind the imperative to interpret the concept of identity strictly, the GC found that word marks SHE and S-HE are not identical since the hyphen in the later mark is not completely insignificant184. Similarly the following marks were not held identical: 157

IHOTEL

the earlier trade mark

the later trade mark

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The marks are similar where, from the point of view of the relevant public, they are at least partially identical in one or more relevant aspects, that is, visually, phonetically or conceptually185.

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b) Visual comparison. aa) General principles. The visual assessment is the first and the leading stage of comparison of marks. The comparison of marks should be based on the following factors: – design – in case of word elements: words and its sequence as well as sequence of letters and syllables; 181 AG Mengozzi in CJ Case C-591/12 P, nyp, mn. 20, with reference to GC Cases T-5/08 Nestle ´v ~a v OHIM (POLO SANTA MARIA), mn. 34. OHIM (Golden Eagle), mn. 60; T-376/09 Glenton Espan 182 GC Cases T-434/05 Gateway v OHIM (ACTIVY Media Gateway) [2007] ECR II-0016, mn. 34, 49, T-281/07 ecoblue v OHMI (Ecoblue) [2008] ECR II-00254, mn. 37; T-385/09 Annco v OHIM (ANN TAYLOR LOFT) [2011] ECR II-00455, mn. 49–50. 183 CJ Case C-251/95 SABEL v Puma, Rudolf Dassler Sport [1997], mn. 23. 184 GC Case T-391/06 Arcandor v OHIM (S-HE) [2009] ECR II-00167, mn. 51. 185 CJ Case C-251/95 SABEL, mn. 23 and Case T-6/01 Matratzen Concord v OHIM (MATRATZEN), mn. 30.

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– size – in case of word elements: number of letters, syllables, words; – in case of figurative marks – colour composition. bb) Identical word. In the event that one of marks in question is a complex mark, the similarity of the marks can by determined by incorporation of a word element of an earlier mark in a later mark. The comparison is simplified if one of components of earlier or later mark is held dominant and, thus, the component (as an embodiment of overall impression of a mark) is compared with the other mark. In case of complex marks that are composed only of word elements, finding a dominant element is in principle too far reaching conclusion. In the FLEXI AIR case, the position of the FLEX element in the FLEXI AIR mark at the beginning should have not allowed the finding that it is a dominant element, even if non-negligible and more important than other elements. However, the evident differences should have been taken into account. The later mark was composed of eight letters, three syllables and two words, while the earlier mark of only four letters forming monosyllabic word186. In this case and similar one, the doctrine of independent distinctive should be considered (see. above mn. 128 and 142). At the other extreme are the cases where common words elements were held negligible and, in effect, the marks found dissimilar. In the ACTIVY Media Gateway case187, the Gateway element was considered negligible due to its position at the end and weak distinctive character. The more consistent position was to perform the comparison test based on all elements that would reveal considerable differences in number of letters, syllable and words that could not be balanced by an argument of independent distinctive role of the Gateway element due to its weak position and possibly the fact that it is incorporated in a single logical unit (Media Gateway). In result, the marks would anyway be considered as dissimilar. In cases of non-negligible word elements that could not be retain independent distinctive role, the relative position and length of the element are the determining factors for finding the similarity. The position of the common element at the beginning of the mark should allow for finding these elements more important in the overall impression, and thus, the marks considered similar. For instance, in the case involving marks BEYOND RETRO and BEYOND VINTAGE, the common element and similar longevity of marks led the GC to find the marks similar188. Similarly, in the SONIC POWER/360 SONIC ENERGY, the first element of earlier mark could not alter the conclusion the marks are similar in particular due to the central position of the common component189. However, the position at the end of a later mark should not determine the dissimilarity of marks if the common word has the same position in both marks. It is the case of trade marks encompassing name and surname. In the ANTONIO FUSCO/ENZO FUSCO case, the differences were outweighed by the similarity of structure of the marks190. Similarly, in the case involving marks MISS ROSSI/SISSI ROSSI, the first words shared common elements, the three letters ‘iss’. However, the word ‘Sissi’ in the later mark was one letter longer than the word ‘Miss’. The initial letters ‘s’ and ‘m’ and the final letters ‘i’ and ‘s’ also constituted difference. The differences could however be counteracted by the existence of the identical element and similar structure of marks191. 186

GC Case T-112/03 L’Ore´al v OHIM (FLEXI AIR) [2005] ECR II-00949, mn. 64, 66. GC Case T-434/05 Gateway v OHIM (ACTIVY Media Gateway), mn. 46, 49. 188 GC Case T-170/12 Beyond Retro Ltd v OHIM (BEYOND RETRO), nyp, mn. 59. 189 GC Case T-467/11 Colgate-Palmolive Company v OHIM (360\ho SONIC ENERGY), nyp, mn. 43, 61. 190 GC Case T-185/03 Vincenzo Fusco v OHIM (ENZO FUSCO) [2005] ECR II-00715, mn. 55. 191 GC Case T-169/03 Sergio Rossi v OHIM (SISSI ROSSI) [2005] ECR II-685, mn. 65; upheld on appeal in CJ Case C-214/05 P Rossi v OHIM [2006] ECR I-7057. 187

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However, in the GIORGIO BEVERLY HILLS case, the GC held that the later mark is three times longer than the earlier mark GIORGIO and, therefore, the incorporation of the earlier trade mark cannot outweigh the differences between the marks192. This position seems to be too extreme taking into account the significant position of the earlier mark that can be a basis for finding this element as retaining an independent distinctive role. On the other hand, the position of the CK element at the beginning of later mark CK CREACIONES KENNYA could not constitute a basis for finding the similarity since this element was secondary and much shorter to the remaining part193. If the common element is placed at the end of the mark finding the similarity of the marks is harder. In the ANN TAYLOR LOFT, the earlier mark LOFT was incorporated in the later mark behind the longer two word element194. In the NATURAVIVA case, the factor that determined that the later mark is dissimilar to the earlier mark VIVA was difference in longevity of words and the fact the VIVA was incorporated in the single logical unit195. In cases of identical word elements retaining independent distinctive role in the mark that are placed at the beginning of the marks, the effect of establishment of the role is limited to the increase of degree of similarity. For instance in the case involving LIFE/ LIFE BLOG marks, a slight similarity of marks would be established on the basis of its relative position offsetting the difference in the marks longevity. Independent distinctive role of the LIFE element allows to find the mark that marks are similar to average degree. The similar conclusion was reached to the SPA/SPA THERAPY case196. The doctrine of independent distinctive role has more far-reaching effect in cases where common component is placed at the end of a complex word mark. In the leading LIFE/THOMSON LIFE case197 finding the LIFE element as a component retaining independent distinctive role allowed to outweigh the factors of position, difference in length and distinctive character, however, the conclusion was not provided by the CJ due to the procedure under which judgment was given. The similar principles were applied to find similarity of marks DOUGHNUTS and BIMBO DOUGHNUTS198. In the BLUE/ecoblue case, establishment of independent distinctive role was not necessary to find the marks similar but to strengthen this position199. More controversial is the case involving the same earlier mark and MOL Blue Card mark200. The wrong decision to consider the Blue element as having independent distinctive role led the GC to disregard the significant differences in the beginnings of the marks and the longevity of marks (the mark comprised of one word and four letter to the mark composed of eleven letters). This conclusion is inconsistent with the earlier case prestige (fig.)/P&G PRESTIGE BEAUTE201 in which the GC was right to find the marks dissimilar. 192 GC Case T-228/06 Giorgio Beverly Hills, Inc. v OHIM (GIORGIO BEVERLY HILLYS) [2008] ECR II-00308, mn. 28–32. 193 CJ Case C-254/09 P Calvin Klein Trademark Trust v OHIM [2010] ECR I-07989, mn. 22, 56. 194 GC Case T-385/09 Annco v OHIM (ANN TAYLOR LOFT) [2011] ECR II-00455, mn. 27, 38. 195 GC Case T-107/10 Procter & Gamble Manufacturing Cologne v OHIM (NATURAVIVA) [2011] ECR II-00338, mn. 46–47. 196 GC Case T-109/07 L’Ore ´al SA v OHIM (SPA THERAPY) [2009] ECR II-00687, mn. 22, 33. 197 CJ Case C-120/04 Medion [2005] ECR I-08551, mn. 15, 30, 37. 198 GC Case T-569/10 Bimbo SA v OHIM (BIMBO DOUGHNUTS), nyp, mn. 96–97, confirmed in CJ Case C-591/12 P, nyp. 199 GC Case T-281/07 ecoblue v OHMI (Ecoblue) [2008] ECR II-00254, mn. 37, confirmed in CJ Case C-23/09 P [2010] ECR I-00007. 200 GC Case T-367/12 MOL v OHIM (MOL Blue Card), nyp, mn. 58, 62, confirmed in CJ Case C-468/ 13 P, nyp. 201 GC Case T-366/07 Procter & Gamble v OHIM (P&G PRESTIGE BEAUTE) [2010] ECR II-00194, mn. 63–73.

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cc) Identical prefix. In case of word marks consisting only of one element, one of the 171 factors of similarity is identical sequence of letters. This is in particular in the case of common prefix that due to its position at the beginning is a strong argument for similarity of signs. The similarity was found in the following cases: 172 – BOTOX/BOTUMAX202; – VIAGRA/VIAGUARA203; – NICORETTE/NICORONO204; – MUNDICOLOR/MUNDICOR205; – RESPICORT/RESPICUR206. However, in the ECHINACIN/ECHINAID case207, only slight similarity between the 173 marks was found and in the case CHUFI/CHUFAFIT208 the marks were considered dissimilar though the signs shared the prefix ‘chuf’ and a common letter, ‘i’, thus, the signs had, five letters in common, four of which formed their initial part. However, it was found that the competing signs present several visual differences on which the consumer’s attention may focus just as much as on the initial part, in view of the limited length of those signs. The signs are spelt differently and are composed of a different number of letters and thus have a different syllabic structure, the structure of the earlier marks being particularly short. In addition, the central position of the combination of the letters ‘f’, ‘a’ and ‘f’ in the later mark and the presence of the final letter ‘t’ contribute to producing a different visual impression of the later mark in comparison with the earlier marks. Therefore, in the overall visual assessment of the signs, those differences, although slight, were considered none the less sufficient to rule out any visual similarity between the competing signs. dd) Identical suffix. The common letter sequence at the end of marks (suffix) can 174 also lead to a finding of similarity, through this conclusion is usually hard to be reached since the attention of consumer is generally focused at the beginning of a sign. In cases of short common endings, such as CAPOL/ARCOL, in which the first letter 175 of signs is different, the GC tends to find the marks as dissimilar209. The more debatable are the cases in which the final common part is quite significant in particular given the limited longevity of marks. In the BAMIX/KMIX case, different initial letters and the difference between the number of letters constituting those signs outweighed their common characteristics210. Even more controversial is the conclusion in the case involving URION and ATURION marks211 in which two letter beginning and different length of marks counteracted the existence of common five letter suffix and incorporation of earlier sign in the later sign.

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GC Case T-131/09 Farmeco v OHIM (BOTUMAX) [2010] ECR II-00243, mn. 35–37. GC Case T-332/10 Viaguara v OHIM (VIAGUARA), nyp, mn. 36. 204 GC Case T-580/11 McNeil v OHIM (NICORONO), nyp, mn. 67–70. 205 GC Case T-183/02 El Corte Ingle ´s v OHIM (MUNDICOR) [2004] ECR II-00965, mn. 81–85. 206 GC Case T-256/04 Mundipharma v OHIM (RESPICUR) [2007] ECR II-00449, mn. 52–62. 207 GC Case T-202/04 Madaus AG v OHIM (ECHINACIN) [2006] ECR II-01115, mn. 44–45, 54–58. 208 GC Case T-117/02 Grupo El Prado Cervera v OHIM (CHUFAFIT) [2004] ECR II-02073, mn. 46–55. 209 CJ Case C-193/09 P Kaul v OHIM (ARCOL) [2010] ECR I-00027, mn. 44–45, 74. 210 GC Case T-444/10 ESGE v OHIM (KMIX), nyp, mn. 28. 211 GC Cases T-146/06 Sanofi-Aventis v OHIM (ATURION) ECR [2008] ECR II-00017, mn. 46–63; T57/03 Socie´te´ provençale d’achat et de gestion (SPAG) SA v OHIM (HOOLIGAN) [2005] ECR II-00287, mn. 50–69. 203

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However, in the following cases, two-syllable common suffix allowed the GC to find similarity in spite of differences in initial parts of marks LANOXIN/FAMOXIN212; LESTEROL/RESVEROL213. Identity of one syllable suffix associated with similarity of remaining letters can also lead to similarity of signs, such as in the cases concerning marks OBELIX/MOBILIX214 and ASTERIX/STARIX215. 177 The counterargument of dissimilarity of initial parts of the competing signs is significantly weakened if the difference is limited to one letter. For instance it was relatively easy to find similarity of RODA and ODA marks216. The addition of a dash such in the EPILEX/E-PLEX case could not alter the conclusion that the marks were visually similar217. 178 However, in rather exceptional circumstances, the GC held that CURON and EURON218 are dissimilar since the vowel ‘e’ is, in visual terms, sufficiently different from the consonant ‘c’. It was noted that, unlike the consonant ‘c’, the vowel ‘e’ contains a central horizontal line which makes its written form more complex. Consumers will notice the difference between the initial first letters more easily as they normally attach more importance to the first part of words. The first part of the earlier mark is also distinguished by the fact that it is constituted of the juxtaposition of the two letters ‘e’ and ‘u’, which attracts the attention of consumers used to seeing the abbreviation ‘eu’, which usually refers to the European Union. The sequence ‘e-u-r-o’ of the earlier mark immediately attracts the visual attention of consumers. That is due to the multiple repetition, in consumers’ everyday life, of situations in which they are led to perceive various words composed of that sequence of letters, including, in particular, the word ‘euro’, relating to the single currency, or even the words ‘Europe’ and ‘European’. The visual attraction of the sequence in question is instinctive. It does not, therefore, depend on a conceptual analysis of the earlier mark by consumers or on the fact that they attribute a specific meaning to it. The sequence ‘e-u-r-o’ is therefore visually dominant in the earlier mark, particularly because the latter is distinguished from it only by the last letter ‘n’. The corollary to that is that the sequence ‘u-r-o-n’, common to both marks, is not the most attractive component of the earlier mark. It should also be noted that the brevity of the marks at issue enables consumers to better grasp the variations in their spelling. 179 The case contrasts with earlier case concerning ILS and ELS marks, in which the only point of dissimilarity between trade marks was their respective first letters ‘i’ and ‘e’. In this case neither of those signs had an element with a particular visual attraction capable of diverting consumers’ attention from the part which they had in common. By further comparing two cases, the GC found that the marks EURON and CURON have the appearance of a word and not a sign, which makes it easier to remember them and also simplifies their visual recognition. Therefore, the difference between the initial letters plays a more important role in this case than in the ILS (fig.)/ELS case219. 176

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GC Case T-493/07 GlaxoSmithkline v OHIM (FAMOXIN) [2009] ECR II-00175, mn. 67–70. GC Case T-363/09 Longevity Health Products, Inc. v OHIM (RESVEROL) [2010] ECR II-00286, mn. 26–30. 214 GC Case T-336/03 Les E ´ ditions Albert Rene´ v OHIM (MOBILIX) [2005] ECR II-04667, mn. 72–81. 215 GC Case T-311/01 Les E ´ ditions Albert Rene´ v OHIM (Starix) [2003] ECR II-04625, mn. 52–60. 216 GC Cases T-382/09 Ergo Versicherungsgruppe v OHIM (ERGO) [2011] ECR II-00272, mn. 44–60; T149/08 Abbott Laboratories v OHIM (Sorvir) [2010] ECR II-00198, mn. 30–35. 217 GC Case T-161/10 Longevity Health Products v OHIM (E-PLEX) [2011] ECR II-00156, mn. 29–38. 218 GC Case T-353/04 Ontex v OHIM (CURON) [2007] ECR II-00010, mn. 20–27. 219 GC Case T-388/00 Institut fu ¨ r Lernsysteme v OHIM (ELS) [2002] ECR II-04301, mn. 62–74; similarly GC Case T-599/11 Eni v OHIM (IP), nyp, mn. 62–73. 213

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ee) Graphic elements offset by verbal elements. At the stage of marks comparison 180 only non-negligible figurative elements are taken into account. It has to be however borne in mind that the average consumer more readily refers to the majority of goods by citing the name than by describing the figurative element of the trade mark220.

the earlier trade mark

the later trade mark

The difference in (non-negligible) graphic elements can be counteracted by verbal 181 similarity. In case involving OFFSHORE ONE and OFFSHORE LEGENDS marks, the ‘offshore’ element was easily readable and located at the beginning of both marks. Thus, it was found that the consumer will pay greater attention to it, in particular, given an independent distinctive role of ‘offshore’ element. The preponderance of ‘1’ element in the earlier mark and the importance to the two strands of laurels could not invalidate this conclusion. Indeed, it was necessary to consider that, even for products not related to sport, these elements were decorative or relatively trivial, in any case, not particularly distinctive to neutralize any similarity generated by the word ‘offshore’. Similarly, the figurative element representing a stylized boat only reinforced that the word ‘offshore’. In conclusion, it was found that the word element ‘offshore’ leads to a certain similarity between the marks, although the similarity is reduced due to the presence of additional figurative elements221.

the earlier trade mark

the later trade mark

A verbal difference is also capable of outweighing a graphic similarity. In case 182 concerning figurative marks SAHNE TOFFEE LUXURY CREAM FUDGE and MILA´ WEK CREAM FUDGE, the verbal differences determined the overall impression of NO the marks by offsetting the similarity of the significant figurative element. There was certain visual similarity between the signs at issue on account of the presence of a figurative element representing a cow. The slight differences between the representation of the cow were not capable of altering the fact that consumers will remember the image 220 221

´ WEK CREAM FUDGE), nyp, mn. 42. GC Case T-623/11 Pico Food v OHIM (MILANO GC Case T-305/07 Legends v OHIM [2009] ECR II-00155, mn. 91–94.

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of a cow. However, the importance of the common element was weakened due to its allusive character. Although there were certain graphic differences, the decisive factor was counteraction of verbal effects. The signs at issue differed inasmuch as the later contained the word elements ‘milano´wek’, ‘zpc® milano´wek’ and earlier mark is comprised of the expression ‘sahne toffee’ and word ‘luxury’222.

the earlier trade mark

the later trade mark

183

In the case Inex (fig.)/representation of cowhide (fig.), the later mark consisted only of a representation which was perceived, given the goods designated, as a cowhide, while the earlier mark was made up of a number of figurative and word elements other than the mere representation of a cowhide, which contributed significantly to the sign’s overall impression. The word element ‘inex’ had no obvious meaning, thus, had a much higher degree of distinctive character than the cowhide design. Since the ‘inex’ word element contributed in a decisive manner to the overall impression given by the earlier mark, its presence prevented the cowhide design from being a dominant element. In addition, the designs of cowhide differed to the significant degree223.

184

ff) Verbal elements offset by graphic elements. The ability of graphic elements to counteract verbal elements is evident in the cases where there is only one letter difference. The high similarity of word element in these cases is offset by differences resulting from non-negligible figurative elements.

COR the earlier trade mark

185

the later trade mark

In the Dor (fig.)/COR case, the GC held that the consumer normally attaches more importance to the first part of words and the two marks are composed of only three letters, therefore, the difference resulting from the first different letter is sufficient to visually distinguish the two marks. This difference was visually strengthened by the distinctive typography that accentuated the difference in the first letter224.

´ WEK CREAM FUDGE), nyp, mn. 41–42. GC Case T-623/11 Pico Food v OHIM(MILANO GC Case T-153/03 Inex v OHIM (Repre´sentation d’une peau de vache) [2006] ECR II-01677, mn. 41. 224 GC Case T-342/05 Henkel v OHIM (COR) [2007] ECR II-00052, mn. 41–43. 222 223

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Art. 9 CTMR

Rights conferred by a CTM

the earlier trade mark

the later trade mark

In the MARS (fig.)/NARS (fig.) case, the difference in one letter was not sufficient to 186 alter the conclusion that marks are similar. The marks were written in very different fonts, moreover, the graphic element of the earlier mark dominant within the overall visual impression made by the mark was not present in the later mark225.

IKEA

the earlier trade mark

the later trade mark

Similarly, in the case concerning marks IKEA/idea (fig.), it was found that in the case 187 of word elements which are relatively short, even if two marks differ by no more than a single consonant, it cannot be found that there is a high degree of visual similarity between them. The argument was strengthened by the significant graphic element of the later mark that was missing in the earlier mark226.

NABER

the earlier trade mark

the later trade mark

In the cases involving NABER/FABER (fig.) marks, the similarity resulted from the 188 common suffix comprised of four letters ‘aber’. The GC found that the fact that there is an element common to the two marks does not mean that that element is necessarily the most striking in both marks. The assessment of similarity thus depends essentially on how much importance is attached to the first letter, which distinguishes the two marks from one another, in comparison with the last four letters, which they share not only with one another, but also with a large number of other marks present on the Spanish market. Having regard to that latter factor, the balance is not clearly in favour of either view. In conclusion, it was found that there is certain visual similarity between these two signs, but that it does not appear to be particularly decisive. It was the additional figurative element, which was specific to the later mark, was capable of 225 226

GC Case T-88/05 Quelle vs. OHIM (NARS) ECR II-00008, mn. 61–62. GC Case T-112/06 Inter-Ikea v OHIM (idea), mn. 54–55.

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constituting a distinguishing feature sufficient to preclude visual similarity between the signs at issue in the eyes of the relevant public227.

VOLVO

the earlier trade mark

189

the later trade mark

Similarly, in the VOLVO/SOLVO (fig.) case, the dissimilarity of the first letter of the signs at issue together with the stylised font of the later mark gave rise to considerable differences which precluded any visual similarity. The significant difference created by that specific font was held to be reinforced by the presence of the figurative element of the later mark228.

CAIXA

the earlier trade mark

190

the later trade mark

In another notable line of case law, dissimilarity of marks was determined by lack of non-negligible graphics. In the case concerning CAIXA/La Caixa marks, it was found that the conflicting signs share the term ‘caixa’, which is the sole element of the earlier mark and that is entirely incorporated in the later mark. Some similarity due to the presence of the same word ‘caixa’ in the conflicting signs can not be denied. Thus, the later mark is visually distinguished from the earlier mark, in particular its high figurative element, as well as by the presence of the additional element ‘the’ and quotes including the phrase ‘la caixa’229.

JULIUS K9

the earlier trade mark

191

the later trade mark

Similarly, in the K9 (fig)/JULIUS K9 case, the device element – a highly stylised dog with a bone between pointed teeth – was one of factors determining the difference between marks230. 227

GC GC 229 GC 230 GC 228

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Case Case Case Case

T-211/03 Faber Chimica Srl vs OHIM (Naber/Faber) ECR II-01297, mn. 43. T-394/10 Elena Grebenshikova vs OHIM (SOLVO/VOLVO), mn. 34–36. T-255/09 Caixa Geral de Depo´sitos v OHIM (‘la Caixa’), nyp, mn. 57–59. T-231/12 Rocket Dog Brands v OHIM (JULIUS K9), nyp, mn. 24, 28–34.

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the earlier trade mark

the later trade mark

However, the representation of a dog in the HAPPIDOG (fig.)/HAPPY DOG (fig.) 192 case was found to have weak distinctive character and could not constitute a factor counteracting the verbal similarities231.

the earlier trade mark

the later trade mark

Similarly, in Modelo/NEGRA MODELO case, the device element in shape of beer 193 bottle could not determine the dissimilarity of marks since it was clearly a weak element of the mark registered for beer232.

the earlier trade mark

the later trade mark

The graphic element can determine the similarity of marks by offsetting non-negligible 194 verbal differences. In the representation of a polo player (fig.)/ROYAL COUNTY OF BERKSHIRE POLO CLUB (fig.) case, it is certainly the representation of polo player which gives that mark its distinctiveness and which will be the most easily remembered by consumers. By contrast, the verbal element of the later mark, consisting of six words written in relatively small characters which are, because of their position in the roundel, particularly difficult to read, is negligible in the overall impression produced by that mark. In addition, the presence of the verbal element in the form of a roundel only emphasises the figurative element of that mark, with the result that the latter’s dominance is strengthened233. 231

GC Case T-20/02 Interquell v OHIM (HAPPY DOG) [2004] ECR II-01001, mn. 43. GC Case T-169/02 Cervecerı´a Modelo v OHIM (NEGRA MODELO), mn. 39–40. 233 GC Case T-214/04 Royal County of Berkshire Polo Club v OHIM (ROYAL COUNTY OF BERKSHIRE POLO CLUB) [2006] ECR II-00239, mn. 41. 232

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the earlier trade mark 195

Similarly, in the representation of a deer’s head facing forward in a circle (fig.)/ VENADO (fig.) case, both the marks displayed dominant figurative elements consisting, in particular, in the representation of a deer’s head facing forward in a circle. The word elements of the later marks differentiates the conflicting signs visually however were considered much less important. The GC considered that there is significant visual similarity between the conflicting marks234.

the earlier trade mark

196

the later trade mark

the later trade mark

The more complex is the mark, it should be harder to apple the interdependence principle235. In the case concerning figurative marks ‘representation of a mug and coffee beans’ and Golden Eagle (fig.), the competing marks had in common the representation of a red mug with a white inside surface on a bed of coffee beans. Furthermore, in each of those marks the mug handle was pointing to the right, the mug was full with a hot beverage (apparently coffee) and steam is rising from the mug. The background colour of those marks was also similar. The differences in this elements were held minor. However, the common element of the representation of a red mug and coffee beans was considered clearly descriptive. On the other hand, the marks differed significantly in other element – the later mark incorporated the ‘Golden Eagle’ word and the figurative element representing an eagle, which were very distinctive. Nonetheless, the common element was held to retain an independent distinctive role, thus, the marks cannot be regarded as totally dissimilar, even if the similarity was slight236.

234 GC Case T-81/03 Mast-Ja ¨ germeister AG v OHIM (VENADO avec cadre) [2006] ECR II-05409, mn. 92. ~ola) [2007] 235 For very detailed comparison of marks see GC Case T-363/04 Koipe v OHIM (La Espan ECR II-03355, mn. 50–58. 236 GC Joined Cases T-5/08 to T-7/08 Nestle ´ v OHIM (Golden Eagle) [2010] ECR II-01177, mn. 51, 59–61.

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Art. 9 CTMR

Rights conferred by a CTM

the earlier trade mark

the later trade mark

In the representation of a polo player (fig.)/POLO SANTA MARIA (fig.) case237, the 197 signs at issue had in common a figurative element representing a polo player. In addition, in both signs, the horse was in motion and the polo player was holding a mallet. Although the polo players featured in the signs at issue were not seen from the same angle and the positions of both horse and rider are also different, those points of dissimilarity was regarded as minor ones. Having in mind that the figurative element representing a polo player retained an independent distinctive role within the earlier marks, the word differences – the words ‘santa’ and ‘maria’ in the later mark – could not offset the similarity which certainly was not faint.

the earlier trade mark

the later trade mark

In the case involving figurative marks ‘representation of a wolf head’ and Outils 198 Wolf238, the fact that both marks contained the representation of a wolf head determined the conclusion that the marks were similar. Even if the canines represented by the two marks were different, one drawn in detail which has an aggressive quality whereas the second apparently more amiable and less detailed, those differences were held not of such importance that the relevant public could not connect the image of the later mark with that of the earlier mark (similarity sufficient for the link test). The conclusion is consistent with the above case-law, however, the GC did not conduct the proper analysis of importance of word elements in the later marks and did not balance graphic similarities and verbal differences. gg) Similarity in case where both marks are purely figurative. The design and shape of 199 figurative elements is certainly more closely analysed in cases of purely figurative marks.

the earlier trade mark

the later trade mark

~a v OHIM (POLO SANTA MARIA) [2011] ECR II-00141, mn. 30–37. GC Case T-376/09 Glenton Espan GC Case T-570/10 Environmental Manufacturing v OHIM (Repre´sentation d’une teˆte de loup), nyp, mn. 43–44. 237 238

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Community Trade Mark Regulation

In the case involving representations of crossing sickles, the GC found that even if the signs at issue contain elements that intersect, the visual impression created by the mark was quite different. Unlike the thick sickles ending with sharp edges, ribbons of the earlier marks was cut to fit into a rectangular frame. Then, the space between the strips was larger than that between the sickles. In addition, the two elements of the earlier marks created the impression of a harmonious and fluid shape while those of the mark applied give an impression of chunkier and heavier forms. Finally, the tapes of the earlier marks unfolded in length while the shape of the later mark is length and height nearly equal239.

the earlier trade mark

201

the later trade mark

In the case concerning representation of elephant, the GC held that although both representations are seen from profile, those representations none the less differ in significant aspects. The contested mark was composed of white elephants with a black outline, whereas the earlier figurative marks consisted of a black elephant with a white outline. The applicant claimed that the multiplication of an element in the later mark cannot lead to finding dissimilarity. The GC found that the argument could be applied to word marks, however, the repetition of device element obviously creates a different overall impression than an individual repeated element240.

the earlier trade mark

the later trade mark

239 GC Case T-502/11 Sanofi Pasteur MSD v OHIM (Repre ´sentation de deux faucilles entrelace´es), nyp, mn. 47–48. 240 GC Case T-424/10 Dosenbach-Ochsner v OHIM (Repre ´sentation d’e´le´phants dans un rectangle), nyp, mn. 37.

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Similarly, in the shape of a bottle case, although it was evident that the necks of the 202 bottles in the signs at issue were both helically formed and, consequently, can be distinguished from traditional necks, the overall visual impression was determined by various significant differences between the signs at issue. In particular, the bottle represented in the earlier sign appeared to be longer, slimmer, and therefore, more delicate than the one in the later sign, which had a smaller, thicker and more corpulent silhouette which gave a more bulky impression. In addition, in the case of the latter sign the shape of the body of the bottle was irregular because of its curvy form, while that of the earlier sign was straight241. c) Phonetic comparison. aa) Basic principles. Phonetic (or aural) comparison rarely 203 plays a decisive role in the assessment of similarity of marks. Since figurative elements are not assessed within this test, the importance of verbal elements within the test of similarity is strengthened. Factors that are taken into account within the test are: the number of syllables, the 204 sequence of syllables (initial, middle, final), the structure of syllables (vowels and consonants) and the relevant language of pronunciation. bb) The role of initial syllable. Phonetic comparison can support visual comparison 205 emphasizing initial position of an element by the argument that initial syllables are essential to the phonetic perception of marks. This was found for instance in the following cases: FLEX/FLEXI AIR242, MUNDICOR/MUNDICOLOR243, RESPICORT/ RESPICUR244. The argument of common initial syllable can be counteracted by notable phonetic differences for instance in number of syllables, such as in the case involving GIORGI/GIORGIO BEVERLY HILLS245. cc) The inversion of syllables. At the same time, the phonetic comparison strength- 206 ens the argument of similarity in case of inversion of components. In the Kids Vits/ VITS4KIDS case, the elements ‘kids’ and ‘vits’ were pronounced identically in the two marks. Given that the vowel ‘I’, the end elements ‘kids’ and ‘vits’, and the consonant clusters ‘ds’ and ‘ts’ are identical, the phonetic point of view supports argument that the inversion of elements cannot refute the phonetic similarity of the marks246. The GC came to similar conclusion in the case concerning marks BLUMARINE and MARINE BLEU247. However, in the case involving marks SOLFRUTTA and FRUTISOL, the GC noted 207 that even if the signs are phonetically similar to a certain degree because they both contain the syllables ‘frut’ and ‘sol’, the inversion of these elements significantly affects the aural perception of them. The two marks have different first syllables, ‘sol’ as compared with ‘fru’, different last syllables, ‘ta’ as compared with ‘sol’, and a different sequence of vowels, namely ‘u-i-o’ as compared with ‘o-u-a’. Moreover, as noted in the previous paragraph, they do not contain identical, but only similar elements, since one vowel is completely different in each mark and the ‘t’ is doubled in ‘Solfrutta’, leading to 241 GC Case T-24/08 Weldebra ¨ u v OHIM (Forme d’une bouteille a` goulot he´licoı¨dal) [2010] ECR II00933, mn. 25–26. 242 GC Case T-112/03 L’Ore ´al SA v OHIM (FLEXI AIR) [2005] ECR II-00949, mn. 72. 243 GC Case T-183/02 El Corte Ingle ´s, SA v OHIM (MUNDICOR) [2004] ECR II-00965, mn. 83–85. 244 GC Case T-256/04 Mundipharma AG v OHIM (RESPICUR) [2007] ECR II-449, mn. 56. 245 GC Case T-162/01 Laboratorios RTB v OHIM (GIORGIO BEVERLY HILLS) [2003] ECR II-02821, mn. 46. 246 GC Case T-484/08 Longevity Health Products, Inc. v OHIM (Kids Vits) [2009] ECR II-00234, mn. 33. 247 GC Case T-160/12 Adler Modema ¨ rkte AG v OHIM (MARINE BLEU), nyp, mn. 51.

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a difference of pronunciation in some Community languages, notably Italian. Thus, the two marks displayed significant phonetic differences and the residual similarity between them was considered as weak248. The initial syllable argument significantly prevented the possibility of similarity in the case of inversion. dd) Pronunciation. In the OLLY GAN/HOOLIGAN case, the GC provided the principles related to pronunciation of marks. It was found that it is difficult to establish with certainty how the average consumer will pronounce a word originating from a foreign language in his own language. First, it is far from certain that the word will be recognised as being foreign, especially when the spelling has been adapted in line with the host language. Second, even when the word is recognised as being foreign, it may not be pronounced in the same manner as in the original language. A correct pronunciation as in the original language presupposes not only knowledge of that pronunciation, but also the ability to pronounce the word in question correctly. Third, in the assessment of a likelihood of confusion, it will still be necessary to establish that a majority of the relevant public has that ability249. 209 Applying these principles, the GC held that public knew the word because of its associations with football. It was also right to find that the first syllable of the word is generally pronounced as ‘ou’ [English ‘oo’] in French. French consumers were familiar with either the English word ‘hooligan’ and the basic pronunciation associated with it, or the French word ‘houligan’ as found in the French dictionary. By contrast, the section of the relevant French public which is not familiar with the French word and pronounces the English word in a French manner is probably quite small. Accordingly, although the vowel sounds ‘ou’ and ‘o’ [in French] are close, they constitute a phonetic difference between the marks in conflict. However, it was held that the fact that the earlier marks were made up of two words, whereas the later mark was made up of only one word, constituted a further phonetic difference between the marks in conflict. As a result, the marks were phonetically different250. 210 In the case involving marks EURON and CURON, the GC found that notwithstanding some phonetic similarity between the marks owing to the common sequence ‘u-r-on’, the overall pronunciation of the marks differed substantially. That was due to the fact that the respective beginnings of the words in question are pronounced in very different ways. The beginning of the mark EURON is usually pronounced, in the European languages examined, in a supple manner, which contrasts with the hard pronunciation of the beginning of the mark CURON, which is usually pronounced gutturally. This difference in pronunciation of the respective beginnings of the marks at issue is decisive as regards the overall phonetic impression for the targeted consumers. The marks at issue cannot be regarded as being particularly close phonetically when pronounced in English. The likely pronunciation in English would be ‘u-ron’, ‘oyron’, or ‘e-ron’ for the earlier mark. In the case of later mark, the pronunciation would be ‘qron’, ‘coo-ron’ or ‘cu-ron’251. 211 In the SEAT/MAGIC SEAT case, the GC found that the word component of the earlier mark ‘seat’ will be pronounced by the relevant public in two syllables ‘se-at’. As regards the later mark, the word ‘seat’ risks not being perceived by the relevant public, including those consumers who understand English, as the translation of the English word for seat, in so far as the word ‘seat’ immediately triggers an association with the 208

248

GC Case T-331/08 REWE-Zentral AG v OHIM (Solfrutta) [2010] ECR II-00011, mn. 19. GC Case T-57/03 Socie´te´ provençale d’achat et de gestion (SPAG) SA v OHIM (HOOLIGAN) [2005] ECR II-00287, mn. 57–59. 250 Ibid., mn. 60. 251 GC Case T-353/04 Ontex NV v OHIM (CURON) [2007] ECR II-00010, mn. 85–86. 249

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Art. 9 CTMR

name of the well-known Spanish car manufacturer Seat. It is rather pronounced as a Spanish word with two syllables, and not as a monosyllabic English word. The word ‘magic’ will be perceived by the relevant public as a simple qualifier for the word ‘seat’ on account of its resemblance to the Spanish word ‘ma´gico’. The relevant public can pronounce ‘magic seat’ as a Spanish expression even if the word ‘magic’ does not exist in that language. Therefore, it cannot be ruled out that the later mark will be pronounced ‘ma-gic se-at’ by at least a section of the relevant public252. In the CMORE/SEEMORE case, it was held that the terms ‘cmore’ and ‘see more’ are 212 in common use in English and the relevant public will immediately perceive them as being terms from that language. In addition, it is well known that as knowledge of English is widespread in Denmark and Finland, the terms ‘cmore’ and ‘see more’ will be pronounced according to English phonetics. Even if, as the applicant claims, the sign CMORE, owing to the combination of letters, were pronounced according to the Danish and Finnish phonetic rules, that cannot call the preceding conclusion into question, as the letter ‘c’ and the word ‘more’ will be immediately perceived by the relevant public as coming from English terminology253. ee) Mathematical signs. In the case involving mark ZERO and zerorh+, the GC 213 found that although the ‘+’ can be pronounced, the addition of the symbol ‘rh+’ to the later mark is not decisive in the phonetic comparison since, first, it is situated at the end of the word and, second, a significant proportion of the public would probably omit that symbol when pronouncing the verbal element ‘zerorh+’ of the later mark, either because they are unsure as to what it means, or simply to economise on words since the time taken to pronounce that symbol is relatively long and it is easily separable from the rest when being pronounced254. ff) Mathematical signs and pronunciation. In the case involving marks 4 EVER and 214 FOREVER, the GC found that a significant part of relevant public in Portugal has at the very least a basic knowledge of English language which enables it to understand and to pronounce English words as basic and everyday as ‘forever’ or to pronounce numbers in English. Furthermore, the GC acknowledged the very widespread use of the language known as ‘SMS language’ in the course of communication on the Internet by means of instant messaging or e-mail, in Internet forums and blogs or even in online games. In result, the number 4, associated with an English word, will itself generally be read in English and understood as referring to the English preposition ‘for’. The word ‘ever’ in the earlier mark is not part of the vocabulary of the Portuguese language. The part of the relevant public which has some knowledge of the English language, knowledge which does not necessarily have to be extensive, will read and pronounce the earlier mark in the same way as the later mark in so far as the latter uses the English word ‘forever’255. However, in K9 (fig.)/JULIUS K9 case, the GC found the alphanumeric combination 215 K9 will be pronounced according to the national language habits, not necessarily in English language pronunciation, in the same way as the word ‘canine’256. d) Conceptual comparison. aa) Basic principles. In order to compare marks con- 216 ceptually at least one of the marks must have a meaning. This conceptual content does 252

GC Case T-363/06 Honda Motor Europe Ltd v OHIM (MAGIC SEAT) [2008] ECR II-02217, mn. 59. GC Case T-501/08 NEC Display Solutions Europe GmbH v OHIM (CMORE) [2011] ECR II-00316, mn. 42–48. 254 GC Case T-400/06 Zero Industry v. OHIM (zerorh+) [2009] ECR II-00150, mn. 58, similarly GC Case T-321/07 Lufthansa AirPlus Servicekarten v OHIM (A+) [2010] ECR II-00023, mn. 38. 255 GC Case T-528/11 Aloe Vera of America, Inc v OHIM (FOREVER), nyp, mn. 67–69. 256 GC Case T-231/12 Rocket Dog Brands v OHIM (JULIUS K9), nyp, mn. 40. 253

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not have to be clear, it is sufficient that the mark refers by allusion to some concept. The meaning of a mark can be established on the basis of definition from a dictionary or, as a subsidiary, generally known concepts. 217

218

219

220

221

bb) Semantic content of words. The comparison is relatively easy if one mark has clear meaning, while the other is missing the conceptual contents. In the PICARO/ PICASSO case, the word sign PICASSO was particularly well known to the relevant public as being the name of the famous painter Pablo Picasso. The word sign PICARO might be understood by Spanish-speaking persons as referring inter alia to a character in Spanish literature, whereas it has no semantic content for the (majority) nonSpanish-speaking section of the relevant public. Thus, the signs were found dissimilar from the conceptual point of view257. Similarly, in the cases ASTERIX/STARIX258 and OBELIX/MOBILIX259, the GC held that the average consumer will associate the word ASTERIX and OBELIX with the characters in the cartoon series widely known throughout the European Union. This specific representation of a popular character made it extremely unlikely that there could be any confusion in the public mind between words which are more or less similar. Similarly, it is relatively easy to conduct the test if both marks have a meaning and this meaning is dissimilar even if words are visually similar. For instance IDEA and IKEA marks have clearly a different meaning260. More problematic are cases in which the particular stages of similarity test are closely interconnected to such extent that it affects the conceptual similarity. The OLLY GAN/ HOOLIGAN case shows how the later mark essentially derived from the concept of hooligan. However, the words of the earlier mark were considered as not at first sight having any meaning and connoting primarily a first name and a surname. It is only indirectly, and from a strictly phonetic standpoint, that an association might arise in the mind of the relevant public between the earlier marks and the concept of hooligan. However, the visual perception of the earlier marks will immediately put a distance between the concept of hooligan and those marks. Decisive for establishing the meaning of the word was the test balancing between visual and phonetic tests relative to the given market sector. It was held that the purchase of an item of clothing involves a visual examination of the marks and, therefore, visual assessment has to determine the conceptual assessment. Consequently, the marks are different conceptually, one referring to the concept of hooligan, the other to a name and surname261. The conceptual analysis is even more problematic where the interconnection of tests affects the case where earlier mark is incorporated in the later one. The additional hurdle comes from the fact that it is sometimes hard to determine whether the word is incorporated into new conceptual unit with distinct meaning from the word, or whether the new conceptual unit is still similar conceptually to the word. In the SEAT/MAGIC SEAT case, it was found that there is a conceptual likeness to the earlier mark due to the fact that it can be perceived as comprising a mark having a high distinctive character to which the laudatory adjective ‘magic’ is added. The word ‘seat’ constitutes the an acronym for the name of the company which is the proprietor ~ola de Automo´viles de Turismo. In of the earlier trade mark, namely, Sociedad Espan this case, the word became meaningful due to the reputation acquired by the car maker. 257

GC Case T-185/02 Ruiz-Picasso and Others v OHIM (PICARO) [2004] ECR II-01739, mn. 55. GC Case T-311/01 Les E´ditions Albert Rene´ v OHIM (Starix) [2003] ECR II-04625, mn. 58–60. 259 GC Case T-336/03 Editions Albert Rene ´ v OHIM (MOBILIX) [2005] ECR II-04667, mn. 79. 260 GC Case T-112/06 Inter-Ikea v OHIM (idea) [2008] ECR II-00006, mn. 68–71. 261 GC Case T-57/03 Socie ´te´ provençale d’achat et de gestion (SPAG) SA v OHIM (HOOLIGAN) [2005] ECR II-00287, mn. 63–66. 258

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The GC rejected the statement based on phonetic analysis that most Spanish consumers recognise ‘magic’ as an English word and that, although they may find it similar to the Spanish word ‘ma´gico’, they would nevertheless perceive the trade mark MAGIC SEAT, considered as a whole, as an English expression. The earlier mark therefore does not refer to the concept of vehicle seats, but is perceived as a mark comprising the car brand and the laudatory adjective262. In the case involving marks CK (fig.) and ck creaciones kennya, the GC held the 222 words ‘creaciones kennya’, from which the group of letters ‘ck’ is derived, create a conceptual difference compared with the earlier marks. Although the group of letters ‘ck’ in the later mark derives from the words ‘creaciones kennya’, the group of letters ‘ck’ of which the earlier mark consists constitutes a reference to the well-known fashion designer Calvin Klein263. In the case concerning marks GIORGIO and GIORGIO BEVERLY HILLS, the GC found with regard to the later sign that the words ‘Beverly Hills’, which refer to a particular geographical place with which the target public is familiar, apart from being non-descriptive of the goods, have a semantic importance which, combined with that of the man’s first name Giorgio, produces a whole that is conceptually different from the earlier marks264. However, in the case concerning ZERO and zerorh+ (fig.) marks, the GC noted that 223 it is hardly possible that consumers would view the later mark conceptually as a ‘universal blood group compatible with all the other blood groups’. It is also vague that the consumer would understand the reference of the symbol ‘rh+’ to the blood type rhesus positive. In this case, the marks would differ conceptually from the earlier marks to some extent. However, and even more controversially, the GC held that in such case it is still true that those marks would conserve a conceptual link between them, consisting of one common word, namely the word ‘zero’, evoking the cardinal number, which would limit that difference265. cc) Semantic content of parts of words. In accordance with the SABEL principle, the 224 average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. However, the consumer will nevertheless, perceiving a word sign, break it down into verbal elements which suggest a concrete meaning or which resemble words known to him. It is possible to break down a word mark even if only one of its elements is familiar to the relevant consumer. Therefore, the parts of words can also be a carrier of meaning, even if this meaning is not clear, but only allusive and even if the meaningful part and the remaining part together do not have a meaning for the relevant consumer. The necessity of conceptual analysis relativized by the perception of relevant public is 225 evident in the cases concerning marks FEMINATAL/FEMIFERAL266 and FEMIVIA/ FEMIBION267. In the first case the GC found that the relevant Polish consumer cannot prescribe any meaning to the marks since the prefix of the marks does not refer to any meaning in Polish language. The conclusion is rather controversial, since, although in Polish language ‘feminine’ means ‘kobiecy’, there are certain words related to women that 262 GC Case T-363/06 Honda Motor Europe v OHIM (MAGIC SEAT) [2008] ECR II-02217, mn. 37–40, 45–46. 263 GC Case T-185/07 Klein Trademark Trust v OHIM (CK CREACIONES KENNYA) [2009] ECR II01323, mn. 49–51. 264 GC Case T-162/01 Laboratorios RTB v OHIM (GIORGIO BEVERLY HILLS) [2003] ECR II-02821, mn. 49. 265 GC Case T-400/06 Zero Industry Srl v OHIM (zerorh+) [2009] ECR II-00150, mn. 63. 266 GC Case T-110/11 Asa v OHIM (FEMIFERAL), nyp, mn. 36–41; upheld in CJ Case C-354/12 P Asa v OHIM, nyp, mn. 36. 267 GC Case T-324/13 Endoceutics v OHIM (FEMIVIA), nyp, mn. 19, 42–43.

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contain the prefix, such as ‘feminizm’. In the second case, the Spanish consumer could associate the marks with the adjective ‘femenino’ that means ‘feminine’. Not only the language of relevant consumer should be taken into account but also its knowledge. In the BOTOX/BOTUMAX, the prefix could not be considered as descriptive for the consumer since it was not proved that the consumer knows the chemical substance botulinum. There are notable cases in which the GC did not conduct conceptual comparison on the basis of meaningful parts of words substantiating this position by requiring the whole word to have meaning. The prefixes in MUNDICOLOR/MUNDICOR case268 and ALLERNIL/ALLERGODIL269 did not have sufficient ‘conceptual force’ to establish a semantic link between the marks. The most controversial part of case-law related to conceptual similarity based on the parts of words is the one related to non-distinctive prefixes and suffixes. In the ECHINACIN/ECHINAID case270 concerning marks registered for preparations based on echinacea, the GC found that descriptive character of the prefix of marks does not enable the commercial origin of the products to be distinguished. Therefore, the respective endings of the signs, namely ‘-id’ and ‘-cin’, were considered as the distinctive and dominant elements which attract the attention of consumers despite its shortness and position at the end of words. Thus, the GC established that the marks are dissimilar conceptually. However, in the NICORETTE/NICORONO case271, the common element ‘nico’ of the marks was evocative of nicotine. However, the presence of that common evocative element was taken into consideration having regard to the length of that element in each of the marks. The GC held the relevant public will be able to distinguish the element ‘nico’ in the marks and understand its conceptual content, which refers to nicotine and, secondly, that the final parts of each of the marks have no meaning for the relevant public. The marks were thus conceptually similar. In the RESPICORT/RESPICUR case272, the conceptual perception of the opposing marks was different for the two groups making up the relevant public. The professional public, because of its knowledge and experience, was found to be able to understand the conceptual meaning of the terms referred to by the different components of the opposing marks. Thus, by breaking down the two marks into their respective components, they could interpret the later mark as corresponding to a ‘cure for respiratory problems’ and the earlier mark as designating ‘corticoids intended for respiratory illnesses’. Those two interpretations indicate a degree of conceptual divergence, the earlier mark carrying a more specific meaning than the later mark, but they nevertheless share the general idea of being linked to respiratory issues. The patient should also be able to distinguish the component ‘respi’ and to understand its conceptual content, which refers generally to the nature of his health problems. However, patient’s limited knowledge of medical terminology will prevent him from being able to discern the conceptual references of the components ‘cur’ and ‘cort’. The opposing marks thus were considered to be conceptually similar. In the HITRECHOL (fig.)/HYPOCHOL case273, the perception of relevant public also affected the conceptual assessment. Notwithstanding the presence of the suffix ‘chol’, which may be perceived as a reference to cholesterol, the prefix ‘hitre’, placed at the 268

GC GC 270 GC 271 GC 272 GC 273 GC 269

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T-183/02 El Corte Ingle´s, SA v OHIM (MUNDICOR) [2004] ECR II-00965, mn. 90. T-492/09 Meda Pharma v OHIM (ALLERNIL), nyp, mn. 44–47. T-202/04 Madaus AG v OHIM (ECHINACIN), mn. 55. T-580/11 McNeil v OHIM (NICORONO), nyp, mn. 69. T-256/04 Mundipharma AG v OHIM (RESPICUR) [2007] ECR II-449, mn. 69. T-517/10 Pharmazeutische Fabrik Evers vs. OHIM (HYPOCHOL), nyp, mn. 41–44.

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beginning of the word element, had no meaning in German, and the same is true of the term ‘hitrechol’. By contrast, in the case of the later mark, the prefix ‘hypo’ indicated ‘something under, something below normal’. However, that prefix appears as a scientific term which is not commonly used in German and, while it may be understood by health professionals, it is not certain that it would be understood by patients suffering from disorders such as those linked to cholesterol. It is possible that a pharmaceutical preparation identified by the sign HYPOCHOL may create the idea, in the mind of health professionals, of a product designed to lower cholesterol in the blood, that is not necessarily the case in regard to patients who suffer from cholesterol-related disorders. Therefore, so far as health professionals are concerned, even if the word elements of the marks at issue coincide in the common descriptive suffix ‘chol’, it none the less follows from the foregoing that only the later word mark has a meaning, whereas the position is different with regard to the word element of the earlier national mark, which has no meaning. From this it necessarily follows that health professionals will perceive the marks at issue as being conceptually different. That conceptual difference is emphasized yet further by the presence of the figurative elements in the earlier national mark. With regard to patients who suffer from cholesterol-related disorders, for whom, even if the common suffix ‘chol’ appears descriptive, neither of the marks has any clear meaning in that language. Similarly in cases of marks BLEMIL/Bebimil referring to milk274, LANOXIN/FA- 231 MOXIN275 that could be linked with substance digoxin, as well as PROSEPT/PURSEPT276 designating disinfectants, despite their descriptive character, determined the conclusion of conceptual comparison. dd) Semantic content of figurative elements. Figurative elements of the device 232 components have no meaning since they do not represent anything existing in the reality. As it was said above this does not mean that these are mere decorations or negligible elements, since their intrinsic qualities can affect the overall impression. Device elements also not always can be connected with real objects. For instance in the CAIXA/‘La Caixa’ (fig.) case, as regards the figurative element of 233 the later sign, which could be seen as drawing a blue star with additional points of red and yellow, the GC considered that, although the blue star could inter alia be likened to a starfish, it is an abstract drawing with no clear meaning or reference to recognizable objects. This figurative element could also be perceived differently, such as the abstract representation of a palm. It is not obvious, and it has not been established that the relevant public will make an association with the painter Joan Miro´, which could not be decisive in the case. The figurative element added no concrete meaning to the mark, therefore, was conceptually neutral. In this case, the conceptual analysis was based on the verbal elements. Obviously, this could not apply to purely figurative marks that are composed of abstract device element, such as in case concerning representations of crossing sickles case, that can not be analysed conceptually.277

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GC Case T-221/06 Hipp v OHIM (Bebimil) [2009] ECR II-00149, mn. 53–64. GC Case T-493/07 GlaxoSmithkline v OHIM (FAMOXIN), nyp, mn. 70–71, upheld in CJ Case C461/09 P The Wellcome Foundation v OHIM, nyp, mn. 38–40. 276 GC Case T-284/12 Oro Clean Chemie v OHIM (PROSEPT), nyp, mn. 51–63. 277 GC Case T-255/09 Caixa Geral de Depo ´ sitos v OHIM (‘la Caixa’), nyp, mn. 65. 275

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elefanten

the earlier trade mark

the later trade mark

In the case involving the representation of elephant, the later mark referred on a conceptual level to elephants, therefore, there was conceptual identity between the contested mark and the earlier word mark. With regard to the conceptual comparison between the marks, it was obvious that the marks referred to the concept of ‘elephant’. Given the proximity between the concept of ‘elephant’ and that of ‘elephants’ it must be concluded that there was conceptual similarity between the contested mark and the earlier figurative marks.278 235 In the HAPPI DOG/HAPPY DOG case, the differences between the two signs concerning the cans of dog food are barely noticeable, even where the cans are displayed side by side. Thus, the GC found that the conflicting signs do have the same conceptual content in that they suggest to the relevant public that by eating the goods dogs will become happy279. Similarly, in the case involving representation of a deer’s head facing forward in a circle(fig.)/VENADO (fig.), the similarity of concept of deer based on the device element determined the conceptual similarity.280 236 In the Inex (fig.)/representation of cowhide (fig.) case the GC found that there is a conceptual similarity between the marks on account of the fact that they call to mind the idea of a cow known for its milk production. That idea has only weak distinctive character in the light of the goods in question.281 237 In the K9/JULIUS K9 case, the applicant claimed that the marks are conceptually identical on the ground that the alphanumeric combination ‘K9’ is commonly used to refer to certain types of dogs and goods. The applicant referred to an episode of a British highly successful UK television series broadcast in 1977 in which a robotic dog named ‘K-9’ appears for the first time, and claimed that as a result of that use there has been for many years a strong mental association between the term ‘K9’ and the English word ‘canine’. The GC found that, unlike the earlier mark, the later sign does not contain any figurative elements conveying the concept of a dog and the word element ‘K9’ is only featured with another word, ‘julius’, which does not contain any direct or indirect conceptual reference to dogs. It cannot be inferred from the fact that the alphanumeric combination ‘K9’ and the English word ‘canine’ are pronounced in the same way, that that in itself creates a conceptual link with dogs. On the contrary, a consumer when confronted with the combination ‘K9’ in another context, such as in a clothes shop, will not immediately perceive that term as a reference to dogs. According to the GC, the strong mental association that was claimed by the applicant was not proven282. 234

278 GC Case T-424/10 Dosenbach-Ochsner v OHIM (Repre ´sentation d’e´le´phants dans un rectangle), nyp, mn. 52. 279 GC Case T-20/02 Interquell v OHIM (HAPPY DOG) [2004] ECR II-01001, mn. 41–42. 280 GC Case T-81/03 Mast-Ja ¨ germeister AG v OHIM (VENADO avec cadre) [2006] ECR II-05409, mn. 92. 281 GC Case T-153/03 Inex v OHIM (Repre ´sentation d’une peau de vache) [2006] ECR II-01677, mn. 45–46. 282 GC Case T-231/12 Rocket Dog Brands v OHIM (JULIUS K9), nyp, mn. 38–40.

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´In the case concerning SAHNE TOFFEE LUXURY CREAM FUDGE and MILANO WEK CREAM FUDGE marks after reiterating that the signs at issue have a figurative element representing a cow in common, correctly stated that the later mark in addition contains the word element ‘milano´wek’, which is reproduced twice, once in a distinctly visible manner. That element is the name of a town in Poland. The relevant public will therefore either know the name of that town or consider that word element to be an invented term. The similarities between the signs at issue were not sufficient to conclude that there was a conceptual similarity.283 In the representation of a polo player (fig.)/POLO SANTA MARIA (fig.) case, there was some conceptual similarity between the signs at issue owing to the figurative element common to both marks, representing a polo player. Although the two representations of a polo player are not absolutely identical. The later mark also contains word and figurative elements which increase the likelihood that the relevant consumer will associate that mark, conceptually, with polo playing. In particular, the later mark contains figurative elements representing two crossed polo mallets, a horse shoe and the word element ‘polo’. The word element ‘santa maria polo’ introduces an additional distinguishing element by referring to the ‘Santa Maria Polo Club’, a Spanish polo club. It was not proven that the polo club is known to the relevant public284. In the case involving figurative marks ‘representation of a wolf head’ and Outils Wolf, the GC established the conceptual similarity of marks on the basis of figurative element (representation of wolf’s head) disregarding the conceptual content of word ‘Outils’ which was descriptive for goods at issue, meaning tools285. In the highly controversial case of figurative marks ‘representation of a mug and coffee beans’ and Golden Eagle, the lower part of later mark consisted of a red mug, full of coffee, and coffee grains, exactly like the earlier mark. The representation of a red mug on a bed of coffee beans has a low degree of distinctiveness since it is suggestive of the goods. The concept of the eagle was found highly distinctive for the goods in question because it has no connection with them. Despite this strong conceptual element, the GC considered that marks are only slightly similar conceptually286.

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e) The rule of interdependence. In most cases all levels of assessment – visual, 242 phonetic and conceptual – lead to the same conclusion as to the similarity of marks. However, in some cases the results of each stage of assessment differ and it is necessary to balance incompatible partial results in order to come to the final conclusion as to the similarity of marks. The visual, phonetic or conceptual aspects of the marks at issue do not always have 243 the same weight and it is accordingly appropriate to examine the objective conditions under which the marks may be present on the market, since the extent of the similarity or difference between the marks at issue may depend, in particular, on their inherent qualities or the conditions under which the goods or services covered by the marks are marketed. If the goods covered by the mark in question are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the goods, a visual similarity between the signs will as a general rule be more important. If, on the other hand, when they are marketed, the goods are primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs. 283 284

´ WEK CREAM FUDGE), nyp, mn. 48. GC Case T-623/11 Pico Food v OHIM(MILANO ~a v OHIM (POLO SANTA MARIA) [2011] ECR II-00141, mn. 43– GC Case T-376/09 Glenton Espan

45. 285 286

GC Case T-570/10 Environmental Manufacturing v OHIM, nyp, mn. 58. GC Joined Cases T-5/08 to T-7/08 Nestle´ v OHIM (Golden Eagle) [2010] ECR II-01177, mn. 70–75.

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In most cases, the result of visual comparison dominates the assessment of similarity. The reason for that is the way in which the goods are marketed. Generally, the consumer when makes a purchase perceives visually the mark designating those goods287. This is particularly vital in the clothing sector. In other cases, for instance in case of alcoholic beverages as well as pharmaceuticals, the phonetic comparison should be leading in the assessment since these goods are usually ordered orally. However, results from the phonetic assessment may differ with the visual one. In such case, the phonetic assessment although can alter the final degree of similarity by decreasing the degree of similarity, can hardly counteract the result from both visual and conceptual difference. The conclusion from the conceptual analysis can more easily offset the assessment from the visual comparison and, under the conditions specified in the below case law, is able to determine the final conclusion by counteracting the results from the other stages of assessment.

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aa) Visual and phonetic similarity offset by conceptual difference. The conceptual differences which distinguish the marks can counteract the visual and aural similarities if at least one of the marks at issue has, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately. It is sufficient that one of the marks at issue has such a meaning to counteract the visual and aural similarities between the marks288. That view is not invalidated by the fact that that word mark does not refer to any characteristic of the goods in respect of which the registration of the marks in question has been made. That fact does not prevent the relevant public from immediately grasping the meaning of that word mark. The conceptual differences counteracted visual and phonetic similarity in cases involving marks: – OBELIX/MOBILIX289 – PICASSO/PICARO290 – WESERGOLD/WESTERN GOLD291 – STENINGE KERAMIK/STENINGE SLOTT292 In the VITACOAT/VITAKRAFT case, conceptual differences counteracted the visual and phonetic similarities to such extent which did not allow the marks to be found dissimilar, however, the similarity was held so slight that could not lead to the likelihood of confusion even for identical goods.293 The degree of knowledge of meaning among the relevant public must be relatively high. In the case concerning marks EMI and ENI, in which the GC held that it cannot reasonably be claimed that, for the general public of the European Union, the terms ‘eni’ and ‘emi’ are well known, as the painter Pablo Picasso or the comic strip character Obelix.294 The condition of clear and specific meaning is also interpreted quite strictly. In the case involving MUNDICOR and MUNDICOLOR marks the mechanism of counter-

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287 GC Cases T-292/01 Phillips-Van Heusen Corp. v OHIM (BASS) [2003] ECR II-04335, mn. 55; T355/02 Mu¨lhens v OHIM (ZIRH) [2004] ECR II-00791, mn. 51. 288 GC Case T-292/01 Phillips-Van Heusen Corp. v OHIM(BASS) [2003] ECR II-04335, mn. 54. 289 GC Case T-336/03 Les E ´ ditions Albert Rene´ v OHIM (MOBILIX) [2005] ECR II-04667, mn. 80–81. 290 GC Case C-361/04 P Claude Ruiz-Picasso and Others v OHIM (PICASSO) [2006] ECR I-00643, mn. 56–58. 291 GC Case T-499/04 Hammarplast v OHIM (STENINGE SLOTT) [2006] ECR II-00084, mn. 53–57. 292 GC Case T-278/10 Wesergold Getra ¨ nkeindustrie v OHIM (WESTERN GOLD), nyp, mn. 57–59. 293 GC Case T-277/04 Vitakraft-Werke Wu ¨ hrmann & Sohn GmbH & Co. KG v OHIM (VITACOAT) [2006] ECR II-02211, mn. 61–62. 294 GC Case T-599/11 Eni v. OHIM, nyp, mn. 71.

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action could not be applied since neither of the marks had clear and specific meaning. The MUNDICOLOR mark have merely a certain evocative force.295 Moreover, the conceptual difference must be relatively strong. In the RESPICORT/ 250 RESPICUR case, the conceptual difference was too weak since there was certain conceptual similarity between marks resulting from the common prefix which could be perceived as referring to respiratory diseases.296 bb) Phonetic similarity offset by visual and conceptual difference. The conceptual 251 difference can significantly easier counteract the similarities between marks if it is strengthened by visual dissimilarity. Although in the Lloyd Schuhfabrik Meyer case, the CJ found that it is possible that mere aural similarity between marks may create a likelihood of confusion297, this statement proved to have very narrow scope of application. The Courts emphasize that the above statement does not mean there is necessarily a likelihood of confusion every time that mere aural similarity between two marks is established. The phonetic similarity was not sufficient to establish the sufficient degree of 252 similarity between marks in cases where verbal element differed sufficiently, such as in case of ZIRH and SIR mark298 as well as OLLY GAN/HOOLIGAN299. It was the same in the cases where marks IKEA and IDEA300 as well as MARS/NARS301 and KING/LA KINGS302 differed significantly in particular due to non-negligible figurative elements. cc) Visual difference offset by phonetic and conceptual similarity. The conceptual 253 assessment can also be strengthened by the phonetic analysis. In the HAPPIDOG/ HAPPY DOG case, the GC found that since the marks are highly similar phonetically and conceptually, the visual difference resulting from the lack of the non-negligible, however descriptive, figurative element (the representation of dog) in the later sign cannot alter the conclusion that the marks are similar303. Similarly in the Modelo/Negra Modelo case, the visual difference caused by the non-negligible device element (the representation of beer bottle) could not counteract the similarities on the phonetic and conceptual levels304.

D. Distinctive character of a trade mark In accordance with the Lloyd Schuhfabrik Meyer case, in determining the distinctive 254 character of a mark, the assessment is made of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a 295

GC Case T-183/02 El Corte Ingle´s, SA v OHIM (MUNDICOR) [2004] ECR II-00965, mn. 89–90, 94. GC Case T-256/04 Mundipharma AG v OHIM (RESPICUR) [2007] ECR II-00449, mn. 58–62. 297 CJ Case C-342/97 Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] ECR I-03819, mn. 28. 298 GC Case T-355/02 Mu ¨ lhens v OHIM (ZIRH) [2004] ECR II-00791, mn. 50; upheld in CJ Case C206/04 P Mu¨lhens v OHIM [2006] ECR I-02717, mn. 40–45. 299 GC Case T-57/03 Socie ´te´ provençale d’achat et de gestion (SPAG) SA v OHIM (HOOLIGAN) [2005] ECR II-00287, mn. 62. 300 GC Case T-112/06 Inter-Ikea v OHIM (idea) [2008] ECR II-00006, mn. 48–59. 301 GC Case T-88/05 Quelle vs. OHIM (NARS) [2007] ECR II-00008, mn. 70. 302 GC Case T-414/05 NHL Enterprises v. OHIM (LA KINGS) [2009] ECR II-00056, mn. 76. 303 GC Case T-20/02 Interquell v OHIM (HAPPY DOG) [2004] ECR II-01001, mn. 44. 304 GC Case T-169/02 Cervecerı´a Modelo v OHIM (NEGRA MODELO) [2005] ECR II-00505, mn. 39–40. 296

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particular undertaking, and thus to distinguish those goods or services from those of other undertakings305. 255 In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the 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; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

I. Family of trade marks When the action is based on several earlier marks, they can be regarded as forming part of a single ‘series’ or ‘family’ if those marks display some common characteristics. It the case for instance when they reproduce in full a single distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of a single prefix or suffix taken from an original mark, such a circumstance constitutes a relevant factor for the purpose of assessing whether there is a likelihood of confusion306. 257 In order to invoke the existence of family of marks two conditions should be cumulatively satisfied. Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. For there to be a likelihood of the public’s being mistaken as to whether the trade mark applied for belongs to the series, the earlier marks forming part of that series must necessarily be present on the market. Secondly, the later mark must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. That could not be the case where, for example, the element common to the earlier serial marks is used in the trade mark applied for either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content. 258 In the BAINBRIDGE case, it was held that the first of the abovementioned conditions was not satisfied. The only evidence produced by the applicant during the opposition proceedings referred to use of the trade mark THE BRIDGE and, to a lesser extent, of the trade mark THE BRIDGE WAYFARER. Since those two marks are the only earlier marks whose presence on the market the applicant has proved, the argument ‘marks in a series’ was rejected307. The establishment of mark in a series is rather difficult to attain308. 259 However, in the CITI/CITIGATE case, the interveners have succeeded in establishing, as regards a significant part of the European Union, not only very widespread use of 256

305 With regard to Article 9 (1)(b) CTMR – GC Case T-194/03 Il Ponte Finanziaria v OHIM (BAINBRIDGE) [2006] ECR II-445, mn. 123, with regard to Article 9 (1)(c) CTMR – GC Case T-301/09 IG Communications v OHIM (CITIGATE), nyp. 306 GC Case T 194/03 Il Ponte Finanziaria v OHIM (BAINBRIDGE) [2006] ECR II-445, mn. 123. 307 GC Case T 194/03 Il Ponte Finanziaria v OHIM (BAINBRIDGE), mn. 128–129. 308 GC Cases T-16/07 Torres v OHIM (TORRE DE BENI ´TEZ) [2008] ECR II-00344, mn. 78–83, T-356/ ˆ :UNIC), mn, 20–30; T-344/09 Hearst Communications v 12 Debonair Trading Internacional v OHIM (SO OHIM (COSMOBELLEZA), nyp, mn. 84–85, T-580/08 PJ Hungary v OHIM (PEPEQUILLO), nyp, mn. 94–96.

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their CITIBANK mark, but also use of their CITICARD, THE CITI NEVER SLEEPS and CITIGOLD marks, as well as, to a lesser degree, use of their CITIEQUITY, CITIGARANT and CITIBOND marks. Secondly, the signs at issue are visually and aurally similar to at least an average degree and conceptually highly similar. In the circumstances, it was the fact that the marks at issue were conceptually highly similar that is decisive for the purpose of determining whether there is a likelihood of confusion. It was found that it is highly likely that the average consumer encountering the trade CITIGATE mark, whose structure is very similar to that of the earlier marks – that is, consisting of the element ‘citi’, with its unusual spelling, to which is attached a second element, being in this case ‘gate’, the meaning of which is clear – will think that it is a new mark belonging to the CITI family of trade marks309.

II. Reputation The reputation of a trade mark is the central element of the concept of trade mark 260 protection under Art. 9 (1)(c). It is not only a separate condition of the provision application, the essential element of link test (see mn. 309–316) and tests of all types of infringement (see mn. 317–319), but, most importantly, it is the key justification of the institution specified under Art. 9 (1)(c) CTMR. Even if the reputation requirement was introduced as a pragmatic compromise (see 261 Commentary to Art. 8, mn. 322 et seq.) rather than in effect of strict application of prior objectives, reputation should be considered the central justification of the extensive protection under Art. 9 (1)(c). The necessity of its separate and meaningful justification under Art. 9 (1)(c) is determined by the loss of the basic objective of the trade mark law, namely consumer protection, since there is no likelihood of confusion required310. In light of the CJ jurisprudence, reputation can be considered as a result of effective business effort (investment) that is protected against unfair competition311. For the extensive analysis of the contents of the reputation element see Commentary 262 to Art. 8, mn. 332–346.

E. Normative standards of CTM infringement I. Application of normative standards as a matter of law Under the established case-law, it is not necessary to establish the existence of actual 263 confusion, but the existence of a likelihood of confusion, thus, the central idea of infringement under Art. 9 (1)(b) cannot be regard a matter of fact and as a legal standard of infringement should regarded as a matter. The same concerns the legal standards under Art. 9 (1)(a) and Art. 9 (1)(c). More controversial is the issue of whether link requirement under Art. 9 (1)(c) 264 constitute a matter of law. Contrary to what the CJ held in the Beatles case, link as a 309

GC Case T-301/09 IG Communications v OHIM (CITIGATE), nyp, mn. 86–89. CJ Case C-408/01 Adidas I, mn. 29; J. Davis, To protect or serve? European trade mark law and the decline of the public interest, EIPR 2003 25 (4), pp. 180–187; S. M. Maniatis, A. Kamperman Sanders, A consumer trade mark: protection based on origin and quality, EIPR 1993, 15 (11), pp. 406–415. 311 It is apparent from the definitions of all three forms of risk, in particular in the free riding definition provided in CJ Case C-487/07 L’Ore´al v Bellure [2009] ECR I-05185, mn. 49–50. 310

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legal test in nature and tools similar to a likelihood of confusion and not requiring proof of actual link in mind of relevant public, should constitute a matter of law. Similarly, use affecting trade mark functions should be considered as a matter law since it differs significantly from the other feature of use under the case-law, moreover, it determines the issue whether in particular under Art. 9 (1)(a) there is infringement of trade mark rights.

II. Use affecting trade mark functions 1. Origin function 265

Under recital 8, the function of the protection afforded by a Community trade mark is in particular to guarantee the trade mark as an indication of origin. The wording reflects early Hoffmann-La Roche v Centrafarm case, in which the CJ referred to the guarantee of the identity of the origin of the trade-marked product as being the ‘essential’ function of a trade mark312. Furthermore, as emphasized by the CJ in the Arsenal case313 in relation to origin identification function under Article 2 CTMR, a trade mark can only consists of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings.

2. Early case-law on other trade mark functions The protection beyond the origin function was implied in the principle of regional exhaustion. In the Silhouette case, the CJ held that exclusive right of trade mark proprietor are not exhausted where the goods are put on the market outside the EEA and the proprietor does not give his content to importation of the goods into the EEA. It means that the proprietor can enforce his trade mark rights even if goods were produced by the proprietor and use of the trade mark by a third party does not affect the essential function of a trade mark. The justification of the rule of regional exhaustion is mainly based on the trade policy and number of consumer protection concerns, other than protection against consumer’s confusion, thus, is not directly relevant for the trade mark law. Therefore, trade mark law justification must be embodied in the functions of trade mark other than origin function, such as quality function. 267 Trade mark functions, other than origin identification function, was recognized in other early case-law on the regional exhaustion. In the Bristol Myers-Squibb case314, the CJ found the right of a trade mark proprietor to oppose defective, poor quality, or untidy repackaging, which might damage his reputation, thus, arguably recognized that trade-mark law can protect interests other than simply the right to ensure that there is no confusion as to the origin of a product. 268 Similarly, in the Dior v Evora case315, the CJ provided an exception to effect of the principle of exhaustion by stating that where a reseller makes use of a trade mark in order to bring the public’s attention to further commercialization of trade-marked goods, a balance must be struck between the legitimate interest of the trade mark owner 266

312 CJ Case C-102/77 Hoffman-La Roche v Centrafarm [1978] ECR 01139, mn. 7, cited by AG Jacobs in CJ Case C-251/95 SABEL BV v Puma AG, mn. 32. 313 CJ Case C-206/01 Arsenal Football Club [2002] I-10273, mn. 49. 314 CJ Case C-427/93 Bristol-Myers Squibb and Others v Paranova [1996] ECR I-03457, mn. 76, 79. 315 CJ Case C-337/95 Parfums Christian Dior v Evora [1997] ECR I-06013, mn. 44.

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in being protected against resellers using his trade mark for advertising in a manner which could damage the reputation of the trade mark and the reseller’s legitimate interest in being able to resell the goods in question by using advertising methods which are customary in his sector of trade. Additionally, AG Jacobs in influential opinion after observing that ‘[a]lthough the Court has traditionally emphasised the role of trade marks in indicating the origin of products … it has not purported to say that trade mark rights can only ever be relied on in order to uphold that function’, he set out other possible trade mark functions, concluding, moreover, that they are an inherent part or merely derivatives of the essential function: the ‘quality function’ of the mark, in that it ‘symbolise[s] qualities associated by consumers with certain goods or services’ and guarantees that ‘the goods or services measure up to expectations’, and ‘communication’, investment, or advertising functions’, which ‘arise from the fact that the investment in the promotion of a product is built around the mark’ and are, therefore, ‘values which deserve protection as such, even when there is no abuse arising from misrepresentations about either origin or quality’316.

3. Trade mark functions theory In those early cases, recognition of other function helped to limit the effects of the principle of exhaustion. One could not predict that the ‘pro-proprietor’ exceptions can transform into evidently ‘anti-proprietor’ line of case-law referred to as the function theory. In the Ho¨lterhoff case317, the CJ found that interests which Article 5 (1) is intended to protect are not infringed in situation in which reference by a third party to the trade mark cannot be interpreted by the potential customer as indicating the origin of the product. Therefore, the protection is restricted to the origin function of trade mark. The function theory was fully developed in the Arsenal case318, in which the CJ held guarantee of origin is essential function of trade mark with reference to wording of CTMR and the early case-law. Further, the CJ formulated the function theory by stating that the exclusive right in double identity cases is conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions. The exercise of that right must therefore be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods319. Although the function theory does not provide for additional condition of protection, it provides a third party with a quite robust defence320. This firm stance deteriorating the situation of proprietors was slightly weakened by the suggestion that a trade mark can have also other function than are protected under the EU trade mark law. According to AG Mengozzi, this suggestion was articulated even more explicitly in the Adam Opel case321. The functions other than the essential function were finally mentioned in L’Ore´al v Bellure case, in which the CJ held that the functions of a trade mark include not only the 316 AG Jacobs opinion CJ Case C-337/95 Parfums Christian Dior v Evora [1997] ECR I-06013, mn. 42, cited extensively by AG Mengozzi in CJ Case C-487/07 L’Ore´al v Bellure, mn. 51. 317 CJ Case C-2/00 Ho ¨ lterhoff [2002] ECR I-04187, mn. 16–17. 318 CJ Case C-206/01 Arsenal Football Club, [2002] ECR I-10273, mn. 48, 51. 319 Confirmed in CJ Cases C-17/06 Ce ´line [2007] ECR I-07041, mn. 16, 26, C-62/08 UDV North America [2009] ECR I-01279, mn. 42. 320 T. Cohen Jehoram T. Cohen Jehoram, The Function Theory in European Trade Mark Law and Holistic Approach of the CJEU, TMR 2012, 102 (6), p. 1247. 321 CJ Case C-48/05 Adam Opel, mn. 21–25.

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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 advertising322. 273 Further, in the eBay case, it was established that these other functions are relevant in the contemporary business life where trade marks often acquire independent economic value as brands that are used to communicate wider messages than the simple origin of goods or services. In our opinion these developments have been taken into account in order to enable the EU trade mark law to serve a useful purpose323. 274 These functions were further specified in the keyword advertising cases324. A trade mark have trade mark has advertising function since it can serve a proprietor as a factor in sales promotion or as an instrument of commercial strategy in order to persuade consumers. Investment function of a trade mark results from the fact that a trade mark can be used by its proprietor to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty. Investment function may overlap with the advertising function, it is none the less distinct from the latter. Indeed, when the trade mark is used to acquire or preserve a reputation, not only advertising is employed, but also various commercial techniques. 275 According to AG Kokott, the function of guaranteeing the quality of the goods goes hand in hand with the function of guaranteeing its origin325. The trade mark indicates that the goods satisfy the quality standards of the recognisable proprietor of the trade mark. Therefore, as a rule, the function in relation to quality is adversely affected, if goods not attaining those quality requirements are commercialised under the trade mark, for example, by licensees or following impairment by the purchaser. However, cases also exist in which a trade mark indicates the quality of goods without referring to its specific origin. AG Kokott gives an example of a German case, in which an association of mineral water companies was the proprietor of a collective trade mark in the form of a water bottle. That bottle is used by many companies and, thus, cannot indicate the origin of the water. However, it can only be used for mineral water and, thus, signalises that product characteristic. Accordingly, use in connection with table water would adversely affect the function through which quality is guaranteed326.

4. Trade mark functions theory and the scope of trade mark protection 276

Certainly A. Kur is right when she says: ‘Among the most annoying aspects of the functions discussion is the fact that the terminology employed by the Court with its exegesis of the different trade mark functions forces national courts into a scheme of semantics-based reasoning (‘Begriffsjurisprudenz’) that obscures rather than illuminates the actual considerations on which the assessment relies’327. However, the proposed measure – the clause of fair competition within trade mark law – only prima facie can ensure transparency. The general clause of balancing interest of competitors on the market could be in practice as arbitral and hard to apply as the functions theory even if the semantics of theory not as ‘awkward’. 322 CJ Case C-487/07 L’Ore ´al v Bellure, mn. 58. See further R. Skubisz in: R. Skubisz (ed.), Prawo własnos´ci przemysłowej. System Prawa Prywatnego 14b, C.H. Beck, pp. 1078–1083. 323 CJ Case C-324/09 L’Oreal v Ebay [2011] ECR I-06011, mn. 77–79. 324 CJ Cases C-236/08 Google France and Google [2010] ECR I-02417; C-278/08 BergSpechte [2010] ECR I-02517, C-323/09 Interflora [2011] ECR I-08625. 325 AG Kokott in CJ Case C-46/10 Viking Gas [2011] ECR I-06161, mn. 45. 326 Ibid., mn. 47. 327 A. Kur, Trademarks Function, Don’t They?, p. 12.

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More transparency can be attained by less extreme measures than abandonment of 277 the functions theory. The three-step approach is proposed. The first is characterization of the function theory as a justification theory (s. above mn. 33). Second is association of the functions with forms of infringement under Art. 9 (1)(c) and providing them with the proper justification. This is attainable since the protection of functions other than the essential function under this provision does not prove to be controversial. Quite successful in the association of the forms of infringement and the trade mark functions is I. Simon Fhima in her innovative monograph328. The following associations can be established: – detriment to distinctive character of a trade mark (blurring) is closely connected with protection of the essential function of a trade mark, as well as advertising function and investment function; – detriment to repute of a trade mark (tarnishment) can be associated with quality identification function, advertising function as well as investment function; – the function theory as a detriment-based theory cannot explain the protection against unfair advantage taken by a third party from distinctive character or repute of trade mark. However - if transformed into both detriment and advantage theory – could be associated in particular with investment function of a trade mark. As a third step, the authors propose to describe the absolute protection under Art. 9 278 (1)(a) with the forms of infringement under Art. 9 (1)(c) (s. below mn. 277–284). Within Art. 9 (1)(b), the function theory has its proper role as a justification theory rather a new tool or condition of the infringement. As it does not enrich the test of a likelihood of infringement, it however allows to describe the test as a measure that requires essential function to be affected.

III. Infringement in double identity cases The scope of the absolute protection in double identity cases has been changing since 279 the introduction of CTMR. First, the scope was limited by the principle of exhaustion, second, extended by implied protection of quality indication and advertising functions, third, significantly limited by the functions theory and at last extended by CJ judgments in the L’Ore´al v Bellure case and keyword advertising cases, by recognizing quality indication, advertising and investment functions. The basic meaning of the absolute protection is that in contrast to Art. 9 (1)(b), under 280 Art. 9 (1)(a), there is no need to establish a likelihood of confusion. The problem of the meaning of absolute protection appears when it is compared to protection under Art. 9 (1)(c) generally called ‘extended protection’ mainly due to protection beyond the principle of speciality. It is sometimes claimed that protection within the absolute protection of functions other than the essential function leads to the anti-dilution protection without condition of reputation, thus, it leads to disproportionate monopoly of trade mark proprietors. When the protection of these functions is accepted, nothing stands in the way to describe the absolute protection by forms of protection under Art. 9 (1)(c). Certainly, absolute protection is detriment-based, thus the protection against unfair advantage of third party should not be covered by the Art. 9 (1)(a). Furthermore, junior mark cannot be detrimental to senior mark distinctiveness (blurring) – since in double identity cases it could only take form of degeneration which requires that the 328 I. Simon Fhima, Trademark Dilution in Europe and the United States, Oxford University Press 2011, pp. 118–121, 161–164, 193–194.

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senior mark has significant reputation. Therefore, the absolute protection against detriment to functions other than the essential function can only be described as a protection against tarnishment. Since tarnishment is associated with protection of quality and advertising function – the limited antidilution protection is nothing more than what the CJ already held in the early cases Bristol Myers-Squibb and Dior v Evora. 281 Protection against tarnishment (without reputation condition) merely describes in a more transparent manner the standard of protection applied by the CJ in following settled lines of case-law: – principle of regional exhaustion (external dimension) – to allow trade mark proprietors to pursue actions based on Art. 7 (1)(a) against importers of goods first put on the market outside the EEA and imported into EEA without proprietor’s consent (protection of quality indication function)329; – principle of regional exhaustion (internal market dimension) – to allow trade mark proprietors to oppose, based on Art. 9 (1)(a), defective, poor quality, or untidy repackaging, which might damage their image (protection of advertising and investment function)330; – selective distribution – to allow trade mark proprietors to control image of their products on further stages of its commercialization (protection of advertising and investment function)331; – comparative advertising – to allow trade mark proprietors to oppose advertisements that are detrimental to image associated with the trade mark (advertising and investment function)332; – keyword advertising – the CJ accepted that investment function can be affected by use of trade mark as a keyword333. 282 Obviously granting proprietors with protection against tarnishment does mean that in all above situations a court will automatically find infringement. In all those cases proof of use affecting the functions of trade mark is very hard to conduct. In particular, in the first case, introduction of the trade mark functions theory and the Van Doren rule of onus probandi is definitely enough to avoid the disproportionate trade mark monopoly under Art. 9 (1)(a). 283 Protection against tarnishment is not necessary to maintain following settled lines of case-law since in these cases protection of essential function gives sufficient basis to pursue actions based on Art. 9 (1)(a): – counterfeit goods – since obviously they do not originate from the trade mark proprietor334; – repair services and spare parts sale – since under the BMW judgment, a proprietor can oppose use of trade mark only if the trade mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the proprietor335. 329 CJ Cases C-355/96 Silhouette [1998] ECR I-04799 mn. 35; C-173/98 Sebago [1999] ECR I-04103, mn. 21; C-414/99 Zino Davidoff [2001] ECR I-08691, mn. 32–33. 330 CJ Case C-427/93 Bristol-Myers Squibb and Others v Paranova [1996] ECR I-03457, mn. 79. 331 CJ Cases C-337/95 Parfums Christian Dior v Evora [1997] ECR I-06013, mn. 45–47; C-59/08 Dior v Copad [2009] ECR I-03421, mn. 55–56; C-324/09 L’Oreal v Ebay [2011] ECR I-06011, mn. 77–79. 332 CJ Cases C-533/06 O2 Holdings [2008] ECR I-04231, mn. 36–37, 47–51; C-487/07 L’Ore ´al v Bellure [2009] ECR I-05185, mn. 53–54. 333 CJ Cases C-236/08 Google France and Google [2010] ECR I-02417; C-278/08 BergSpechte [2010] ECR I-02517; C-323/09 Interflora [2011] ECR I-08625. 334 CJ Case C-98/13 Blomqvist, nyp, mn. 33–35. 335 CJ Cases C-63/97 BMW [1999] ECR I-00905, mn. 51, 64; C-228/03 Gillette [2005] ECR I-02337, mn. 42–49; C-46/10 Viking Gas [2011] ECR I-06161, mn. 37–42.

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The Commission Proposal to reform CTMR is another attempt of the Commission to 284 restrict the scope of rights under Art. 9 (1)(a) after the unsuccessful intervention in the Interflora case. Under the Proposal, in double identity cases infringement can be found only ‘where such use affects or is liable to affect the function of the European trade mark to guarantee to consumers the origin of the goods or services’336. This draft provision had come under widespread criticism from at least three sides. 285 The trade mark proprietor argued that the introduction of the provision results in the recognition of international exhaustion under the EU law. M. Senftleben criticised the legitimising the function theory, however, supported the limitation of infringement claims to use affecting only the essential function337. A. Kur also disapproved the fact that limitation of trade mark rights are based on highly uncertain theory of trade mark functions and observed that the regional exhaustion line of cases can be maintained by broadening of meaning of the essential function (the ‘superfunction’), which would however lead to even more uncertainly as to the scope of the trade mark rights338. European Parliament in the legislative resolution on the Proposal dated 25 February 286 2014 proposed the deletion of the provision339, which was accepted by the Commission in response to EP opinion dated 20 May 2014340.

IV. Infringement in the form of a likelihood of confusion 1. Identity/similarity of signs and identity/similarity of goods/services It is explicitly provided in the wording of Art. 9 (1)(b) that the conditions of identity/ 287 similarity of signs and identity/similarity of goods/services should be fulfilled cumulatively. It does not mean however that there is a likelihood of confusion in all cases where there is only certain similarity of signs and goods/services since both conditions are subject to the rule of global assessment.

2. Likelihood of confusion – the global assessment Under Recital 8 of the Preamble and the SABEL judgment341, a likelihood of 288 confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection. a) The rule of interdependence. aa) High similarity of goods offset by weak 289 similarity of signs. In the following cases limited similarity between the marks counteracted high similarity of goods/services: 336

COM (2013) 161. M. Senftleben, Function Theory and International Exhaustion – Why it is Wise to Confine the Double Identity Rule to Cases Affecting the Origin Function, 2013 (http://ssrn.com/abstract=2356772), pp. 1–6, 10–11. 338 A. Kur, Trademarks Function, Don’t They?, p. 12–13. 339 European Parliament legislative resolution of 25 February 2014 on the proposal for a regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark (T7-0118/2014). 340 Commission position on EP amendments on 1st reading SP(2014)446. 341 CJ Case C-251/95 SABEL, mn. 9, 22. 337

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– in the ZIRH/SIR case where the goods and services were partly similar (goods in Class 3) and partly identical (goods in Class 3 and services in Class 42)342; – in the SHARK (fig.)/HAI case where goods and services were partly identical (goods in Class 32) and partly similar (goods in Classes 5 and 33 and goods in Class 32)343; – in the shape of bottle case where the goods were identical (the goods in Classes 32 and 33) and very similar (the goods in Class 30 and the goods in Classes 32 and 33)344. 290 In the following cases limited similarity between the marks could not be counteracted by identity of goods/services: – VITAKRAFT/VITACOAT345; – LOFT/ANN TAYLOR LOFT346; – KING/LA KINGS (fig.)347; – CHIANTI CLASSICO (fig.)/F.F.R. (fig.)348; – BALLON D’OR/GOLDEN BALLS349. 291 In two following cases, the controversial analysis of comparison of signs allowed the GC to find no likelihood of confusion despite, in the first case – identical goods, in the second – identical or very similar goods in Classes 1 and 5: – Echinacin/Echinaid350; – RNActive/RNAiFect351. bb) Weak similarity of signs offset by high similarity of goods. In the following cases identity goods or services counteracted weak similarity of signs: – Aygill’s/Agile352; – TRANSFORMERS ENERGON/ENERCON353; – SEIKO/SG SEIKOH GIKEN354; – Pedro del Hierro/PEDRO355; – ZEBINIX/ZEBEXIR356. 293 In the following cases, the fact that the goods were in part identical and in part similar determined there was a likelihood of confusion despite weak similarity of the marks: – AYUR/AYUURI NATURAL357; – Seven/SEVEN SUMMITS358; – CARRERA/Carrera panamericana359. 292

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GC Case T-355/02 Mu¨lhens v OHIM (ZIRH) [2004] ECR II-00791, mn. 55–56. GC Case T-33/03 Osotspa v OHIM (Hai) [2005] ECR II-00763, mn. 46, 66. 344 GC Case T-24/08 Weldebra ¨ u v OHIM (Forme d’une bouteille a` goulot he´licoı¨dal) [2010] ECR II00933, mn. 32. 345 GC Case T-277/04 Vitakraft-Werke Wu ¨ hrmann v OHIM (VITACOAT) [2006] ECR II-02211, mn. 68. 346 GC Case T-385/09 Annco v OHIM (ANN TAYLOR LOFT) [2011] ECR II-00455, mn. 48. 347 GC Case T-414/05 NHL Enterprises v OHIM (LA KINGS) [2009] ECR II-00056, mn. 76. 348 GC Case T-143/11 Consorzio vino Chianti Classico v OHIM (F.F.R.), nyp, mn. 60. 349 GC Case T-437/11 Golden Balls v OHIM (GOLDEN BALLS), nyp, mn. 60 (under appeal C-581/13 P). 350 GC Case T-202/04 Madaus v OHIM (ECHINAID) [2006] ECR II-01115, mn. 66. 351 GC Case T-80/08 CureVac v OHIM (RNAiFect) [2009] ECR II-04025, mn. 53. 352 GC Case T-386/07 Peek & Cloppenburg v OHIM (Agile) [2009] ECR II-00206, mn. 42–44. 353 GC Case T-472/07 Enercon v OHIM (ENERCON) [2010] ECR II-00012, mn. 45. 354 GC Case T-519/10 Seikoh Giken v OHIM (SG SEIKOH GIKEN), nyp, mn. 39–41. 355 GC Case T-38/13 Pedro Group v OHIM (PEDRO), nyp, mn. 62, 89–91. 356 GC Case T-366/11 Bial-Portela v OHIM (ZEBEXIR), nyp, mn. 19, 38–40. 357 GC Case T-313/10 Three-N-Products Private v OHIM (AYUURI NATURAL) [2011] ECR II-00383, mn. 62–65 (confirmed in C-14/12 P). 358 GC Case T-179/11 Sport Eybl & Sports Experts v OHIM (SEVEN SUMMITS), nyp, mn. 62. 359 GC Case T-600/11 Schuhhaus Dielmann v OHIM (Carrera panamericana), nyp, mn. 62. 343

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cc) Weak similarity of goods offset by high similarity of signs. In the following cases the identity of marks counteracted limited similarity of goods: – in the QUARTZ/QUARTZ case, goods in Class 9: ‘Packets of programs for banking’ and services in Class 42: Computer services linked to banking’ were only slightly similar to goods in Class 9: ‘A computer operating system functionality specifically intended for use by IT developers with the aim of improving and accelerating the reproduction of digital images in application programs, except those products intended for the banking sector’360; – in the LIFECYCLE/LIFECYCLE case, electric and motorised bicycles (Class 12) were found similar to the limited extent to machines for physical exercises (Class 28)361. Similarly in the SEROSTIM/Seroslim case, high similarity of marks (one letter difference) offset a low degree of similarity between goods included in Class 3 (soaps, hair lotions and dentifrices) and in Class 5 (sanitary products and disinfectants).362 The similarity based on incorporation of earlier mark in the later mark allowed the GC to find a likelihood of confusion despite only slightly similar goods/services in the following cases: – in the RIOJA/RIOJAVINA case, there was a low degree of similarity between wine in Class 33 and vinegars in Class 30 as well as services in Class 35 (sole agencies, representation services, wholesaling, retailing, export, import, all the aforesaid relating to vinegars)363; – in the free LA LIBERTE´ N’A PAS DE PRIX/FREE case, goods in Class 16 ‘publications, magazines, posters, newspapers, books, photographs except for [the] banking sector’ were found similar to broad selection of services in Classes 35 and 38 (incl. advertising; newspaper subscription services for third parties; electronic mail services and electronic distribution of information).364 In the FERRERO/FERRO case, despite a low degree of similarity between savoury crackers, for which the mark FERRO was applied and FERRERO sweet pralines, high similarity of signs and distinctiveness of earlier sign determined a likelihood of confusion365.

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dd) High similarity of signs offset by weak similarity of goods. In the case-law, a 298 high similarity of signs is rarely offset by weak similarity of goods. In early case involving marks LINDENHOF and LINDERHOF366, the GC found that the dissimilarities between the goods (sparkling wines and non-alcoholic beverages), are greater than the similarities between the signs, so that the average German consumer will not believe that those goods bearing those signs have the same commercial origin. b) The role of distinctiveness. Under the SABEL principle, the more distinctive is the 299 earlier mark, the greater will be a likelihood of confusion367, which means that, what was further provided in the Canon case, marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character368. It was explicitly held by the CJ that it is necessary to distinguish between the notion of the distinctive character of the earlier 360

GC Case T-328/05 Apple Computer v OHIM (QUARTZ) [2008] ECR II-00104, mn. 35–51. GC Case T-379/12 Electric Bike World v OHIM (LIFECYCLE), nyp, mn. 53. 362 GC Case T-201/08 Market Watch v OHIM (Seroslim) [2010] ECR II-00203, mn. 20. ~oz Arraiza v OHIM (RIOJAVINA) [2010] ECR II-02317, mn. 43. 363 GC Case T-138/09 Mun 364 GC Case T-365/09 Michalakopoulou Ktimatiki Touristiki v OHIM (FREE) [2010] ECR II-00239, mn. 22–26. 365 GC Case T-35/04 Athinaiki Oikogeniaki Artopoiia v OHIM (FERRO ´ ) [2006] ECR II-00785, mn. 69–70. 366 GC Case T-296/02 Lidl Stiftung v OHIM (LINDENHOF) [2005] ECR II-00563, mn. 71. 367 CJ Case C-251/95 SABEL, mn. 24. 368 CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer [1998] ECR I-05507, mn. 18. 361

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mark, which determines the protection afforded to that mark, and the notion of the distinctive character that an element of a composite mark possesses, which determines its ability to dominate the overall impression created by the mark369. There are two main positions on the impact of trade mark distinctiveness on the scope of its protection. On one side there is the CJ position in the FLEX/FLEXI AIR case, in which it was held that finding no likelihood of confusion where the earlier has weak distinctive character would effect in ‘disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the later mark, whatever the degree of similarity between the marks in question’370. The CJ identifies the serious risk in that position by stating: ‘If that were the case, it would be possible to register a complex mark, one of the elements of which was identical with or similar to those of an earlier mark with a weak distinctive character, even where the other elements of that complex mark were still less distinctive than the common element and notwithstanding a likelihood that consumers would believe that the slight difference between the signs reflected a variation in the nature of the products or stemmed from marketing considerations and not that that difference denoted goods from different traders’. This position was confirmed by the CJ in the QUANTUM/QUANTIEME case371. On the other side are in particular authors of the Study on the Overall Functioning of the European Trade Mark System who have criticized the position of the CJ as leading to granting too much protection to ‘weak trade marks’ that is contrary to the SABEL rule under which the scope of protection of a mark is determined by the degree of distinctive character of the mark.372 Firstly, the nature of distinctiveness determines that with regard to a specific trade mark it could not be analysed in abstracto, only in relation to a conflicting sign. Secondly, the controversy of the role of distinctiveness within the infringement test can be described as a discussion on whether the rule of global assessment (SABEL, mn. 22) precedes the rule of dependence of scope of protection on the distinctiveness (SABEL, mn. 24). Having in mind the SABEL, mn. 22 and the GC judgment in MPAY case, the importance of taking into account the distinctive character of the earlier mark should vary according to the degree of similarity found between the goods and services concerned and the signs at issue373. The corrective principle of the SABEL, mn. 24 should be applied only if signs or goods/services are only slightly similar. If the earlier mark in that case has only weak distinctive character, there should be no likelihood of confusion. In the case concerning marks FLEX and FLEXI AIR, the signs should be considered similar to average degree taking into account all elements of the marks (without any dominant elements). Having in mind that the goods at issue were in part identical and in part very similar, the weak distinctive character of the earlier mark should not prevent finding a likelihood of confusion. Thus, the conclusion should be similar to the one reached in the IKEA/IDEA and BLUE/ECOBLUE cases374. 369

CJ Case C-235/05 P L’Ore´al v OHIM [2006] ECR I-00057, mn. 43. Ibid., mn. 45. 371 CJ Case C-171/06 P TIME ART v Devinlec and OHIM [2007] ECR I-0000, mn. 41. 372 Study on the Overall Functioning of the European Trade Mark System, p. 106–107. 373 GC Case T-557/08 mPAY24 v OHIM (M PAY) [2010] ECR II-00129, mn. 43. 374 GC Cases: T-112/06 Inter-Ikea v OHIM (idea) [2008] ECR II-00006, mn. 84, T-281/07 ecoblue v OHIM (Ecoblue) [2008] ECR II-00254, mn. 37. 370

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Even if the principle of SABEL, mn. 24 is applied, the possibility that it could 305 determine the final conclusion is rather limited. In only one GC case, distinctive character of earlier mark significantly contributed to the finding a likelihood of confusion. It was in the FERRERO/FERRO case, where low degree of similarity of goods was counteracted by high similarity of signs and significant enhanced distinctiveness or reputation of the earlier sign375. All in all, ‘weak trade marks’ should be protected against a likelihood of confusion to 306 the same extent as ‘strong trade marks’ if the similarity of signs and goods/services is sufficient. As long as this condition is satisfied, the distinctive character of earlier mark should not be relevant. The difference in the extent of protection between ‘strong’ and ‘weak’ trade marks should take place only if similarity of signs or goods/services is limited and should be a result of assessment of distinctive character of earlier mark in connection with other factors of global appreciation. The problem of protection of weak trade marks is mainly a problem of registration (Art. 7) rather than enforcement (Art. 9) and the rule of global assessment excludes the possibility to correct wrong application of Art. 7 under Art. 9. c) The role of family of earlier marks. If the existence of a family of earlier marks is 307 established, as well as similarity of later mark and the earlier marks and identity/ similarity of goods is found, a special type of likelihood of confusion should be found. In this case the relevant consumer might consider that the later mark belongs to the family of marks. Therefore, the serial nature of the earlier marks entails widening the scope of protection of the trade marks forming part of the series, considered individually. In the CITI/CITIGATE case, the GC found that it is highly likely that the average 308 consumer encountering the later trade mark, whose structure is very similar to that of the earlier marks, will think that it is a new mark belonging to the CITI family of trade marks376. d) The role of a relevant consumer. Under the case-law, the identification of relevant 309 consumer can only play significant role in the global assessment of a likelihood of confusion if the other factors of the assessment are not conclusive enough and there is a room for other factors to contribute to the final result. This is the case in particular where the level of attention of relevant public is higher than average, such as in the case of trade marks in health sector (see above mn. 61–63). In the LANOXIN/FAMOXIN case, the goods at issue had only certain similarity and 310 the signs were only slightly similar. Having in mind the higher level of attention of relevant public, the GC came to the conclusion that there is no risk that the public will be led to believe that goods bearing the word mark FAMOXIN come from undertakings which hold the earlier word marks LANOXIN or from an undertaking economically linked to them377. Similarly in the TONOPANT/TOLPOSAN case, the GC took into account the fact that (i) the goods at issue were only slightly similar and the marks had an average degree of similarity and that (ii) the relevant public has a higher degree of attentiveness than average and held that there was no likelihood of confusion between the trade marks378. The more controversial is the conclusion in the OXYGESIC/MAXIGESIC case, where 311 conceptual difference counteracted the visual and phonetic similarities to such extent 375

CJ Case C-108/07 P Ferrero Deutschland v OHIM (FERRO) [2008] ECR I-00061, mn. 58. GC Case T-301/09 IG Communications v OHIM (CITIGATE), nyp, mn. 86–87. 377 GC Cases T-493/07 GlaxoSmithkline v OHIM (FAMOXIN) [2009] ECR II-00175, mn. 75; T-26/08 and T-27/08 Laborato´rios Wellcome de Portugal v OHIM (FAMOXIN), nyp, mn. 75. 378 GC Case T-331/09 Novartis v OHIM (TOLPOSAN) [2010] ECR II-05967, mn. 58–59. 376

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that, having in mind the higher degree of attention of consumers, the GC found that identity of goods cannot offset the differences between the signs379. 312 Equally controversial is the case involving CALSYN and GALZIN marks, in which the GC considered there is a likelihood of confusion since phonetic differences could not offset visual and phonetic similarities and despite limited similarity between the goods (due to different therapeutic indications) and a high level of attention of relevant public380. 313 The more convincing conclusions, in cases where the higher level of attention could not exclude a likelihood of confusion, are drawn on basis of high similarity between signs. In the KRENOSIN/KREMEZIN case, similarity of marks counteracted the higher degree of attention of relevant public381. Similarly, in the case concerning marks CICATRAL and CITRACAL, the differences relating to the ways in which the products are administered and their therapeutic indications could prevail over the nature and the common intended purpose of the goods and high similarity of marks despite higher degree of attention of the relevant public382.

V. Infringement of trade mark with reputation 1. Link – the global assessment 314

a) Definition of link. The essential condition for infringement based on Art. 9 (1)(c) CTMR is the establishment of link between a later mark and an earlier mark with a reputation. It has to be proven that the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them even though it does not confuse them383. The existence of such a link between the conflicting marks is tantamount to the fact that for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark with a reputation to mind384. Thus, the link can be defined as a mental process above the threshold of consciousness, something more than a vague, ephemeral, indefinable feeling or subliminal influence385.

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b) Factors of the global assessment. Like the assessment of a likelihood of confusion, the link test must be appreciated globally, taking into account all factors relevant to the circumstances of the case386. In accordance with Intel judgment, those factors include: – the degree of similarity between the conflicting marks; – the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between these goods or services and the relevant section of the public; – the strength of the earlier mark’s reputation; 379

GC Case T-328/12 Mundipharma v OHIM (Maxigesic), nyp, mn. 63–67 (under appeal C-669/13 P). GC Case T-483/04 Armour Pharmaceutical v OHIM (GALZIN) [2006] ECR II-04109, mn. 79–81. 381 GC Case T-487/08 Kureha v OHIM (KREMEZIN) [2010] ECR II-00111, mn. 80–86. 382 GC Case T-277/08 Bayer Healthcare v OHIM (CITRACAL) [2009] ECR II-00214, mn. 46. 383 A term ‘association’ used in CJ Case C-375/97 General Motors, mn. 23 originated from AG Jacobs opinion in CJ Case C-251/95 SABEL, mn. 39 (which in turn referenced to the English High Court in the case of Wagarruana Ltd v City Centre Restaurants Pic and Another, [1995] F. S. R. 713. The term ‘association’ was replaced by ‘link’ in CJ Case C-408/01 Adidas I, mn. 29. The terms ‘link’ and ‘association’ are used interchangeably. 384 CJ Case C-252/07 Intel Corporation [2008] ECR I-08823, mn. 63. 385 AG Sharpston opinion in CJ Case C-252/07 Intel Corporation, mn. 48. 386 CJ Case C-408/01 Adidas I, mn. 30 with a reference to CJ Case C-251/95 SABEL, mn. 22. 380

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– the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; – the existence of the likelihood of confusion on the part of the public387. c) The rule of interdependence. The global assessment implies some interdepen- 316 dence between the relevant factors, for instance a low degree of similarity between the marks may be offset by the strong distinctive character of the earlier mark388 and dissimilarity of goods may be offset by the strength of the earlier mark’s reputation. d) The role of proximity between goods/services and relevant consumer. In the 317 Davidoff II case the CJ held that protection of trade mark with reputation embraces also the use of the trade mark for identical or similar goods or services389. The judgment is considered as an extreme example of purposive approach of the CJ where there was no basis in wording of reputable trade mark protection or any provision of the act, including preamble390. The judgment contrasts with AG Jacobs opinion who held that the wording of the provision indicates that the legislature intended the likelihood of confusion as ‘the normal criterion for protection’. AG Jacobs found that since the scope of this criterion was significantly extended in the CJ judgments391, there may be a limited area in which a trade mark having a reputation is not protected against the use of identical or similar marks or signs – namely where the products in question are similar and there is no likelihood of confusion392. The Intel case suggests that the analysis of relationship between goods/services within 318 the link test should be dominated by the assessment of relevant public targeted by the goods/services and the analysis of nature of these goods/services has only corrective character. If the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, can be not known at all to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that there will be no link established between these marks393. e) The role of reputation, distinctiveness and family of marks. If there is an overlap 319 in relevant public, the distance between goods/services can be balanced by reputation of earlier trade mark that goes beyond the public targeted by that mark394. In this light, the reputation condition of the extensive protection should not be considered as an arbitrary threshold, but the institution explaining the phenomenon how consumers can associate marks designating dissimilar goods/services. The extension of the reputation produce results sufficiently beyond the targeted public to the extent that the earlier trade mark is 387

CJ Case C-252/07 Intel Corporation [2008], mn. 42. CJ Case C-552/09 P Ferrero v OHIM (KINDER) [2011] ECR I-02063, mn. 65. The nature of global assessment – the interdependence of factors – was first provided under the TMD in CJ Case C-39/97 Canon [1998] ECR I-5507, mn. 17. 389 CJ Case C-292/00 Davidoff II [2003] ECR I-00389, mn. 25–26. 390 In contrast to General Motors case where the meaning of reputation has basis in translation of reputation condition, J. Cornwell, The Davidoff v Gofkid case comment, EIPR 2003, 25 (11), pp. 537–538. 391 CJ Cases C-251/95 SABEL [1997] ECR I-06191; C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer [1998] ECR I-05507; C-425/98 Marca Mode [2000] ECR I-04861. 392 AG Jacobs opinion in C-292/00 Davidoff II, mn. 50–51 – the opinion is supported by Ch. Morcom, Extending protection for marks having a reputation: what is the effect of the decision of the European Court of Justice in Davidoff v Gofkid?, EIPR 2003, 25 (6), pp. 279–282. 393 CJ Case C-252/07 Intel Corporation, mn. 48–49; followed in GC Case T-32/10 Ella Valley Vineyards v OHIM, nyp, mn. 23–29. 394 CJ Case C-252/07 Intel Corporation, mn. 53, followed in GC Cases: T-131/09 Farmeco v OHIM (BOTUMAX), mn. 79, T-332/10 Viaguara v OHIM, nyp, mn. 52. 388

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known by consumers of goods/services under a later trade mark. However, it is not required for earlier trade mark to acquire the reputation in sector of goods for which later trade mark is registered395. The significant reputation seems to be decisive factor in cases where goods are dissimilar, however, there is an overlap of relevant public and signs are sufficiently similar396. 320 A limited similarity between signs can be also balanced by the strong distinctiveness of earlier mark. Since there is a close connection between the distinctiveness acquired through use and the reputation397, the added value of this factor lies mainly in its inherent character, thus, the strong earlier trade mark should be unique or inherently highly distinctive398. If the marks are only slightly similar and the earlier trade mark has only limited inherent distinctiveness, the distance between the trade marks cannot be balanced even by considerable reputation and overlap of relevant public399. 321 The distinctiveness of earlier trade mark can be enhanced by existence of family of earlier trade marks400.

2. Forms of infringement The existence of the link is not sufficient, in itself, to establish that there is one of the types of injury under Art. 9 (1)(c)401. However, the more immediately and strongly the earlier mark is brought to mind by the later mark (the stronger is the link), the greater the likelihood that the current or future use of the later mark is taking unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark402. The proof of one of the types of injury is necessary since the purpose of Art. 9 (1)(c) is not to prevent registration of any mark which is identical with a mark with a reputation or similar to it, but to eliminate the specifically described risks403. 323 Like the existence of a link between the conflicting marks, the existence of one of the types of injuries must be assessed globally, taking into account once again all factors that have been assessed within the link test404. In order to establish the injury, a proprietor of the earlier trade mark has to prove actual and present injury to its mark or a serious 322

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GC Case T-32/10 Ella Valley Vineyards v OHIM (ELLE), nyp, mn. 33. CJ Cases: C-294/12 P You-Q v OHIM (BEATLES), nyp, mn. 68–69, C-320/07 P Antartica v OHIM (NASDAQ) [2009] ECR I-00028, mn. 51, OHIM Dec. R 1797/2008-2 OStCaR/OSCAR, mn. 45–48, R 1074/2011-5 Twitter (FIG. MARK)/TWITTER, mn. 31–43 (however, without separate link test), differently e. g. OHIM Dec.: R 802/1999-1 DUPLO, mn. 24–26 (requiring inherent distinctiveness) and R 254/ 2013-2 PAROBOOK/FACEBOOK, mn. 36–43. 397 CJ Case C-104/05 P El Corte Ingle ´s v OHIM (EMILIO PUCCI) [2006] ECR I-00096, mn. 53, GC Case T-60/10 Jackson International v OHIM (ROYAL SHAKESPEARE), nyp, mn. 57. 398 GC Case T-47/06 Antartica v OHIM (nasdaq) [2007] ECR II-00042, mn. 26. In the BOTOX cases uniqueness of the trade mark was analyzed not within link test, but at the later stage – see GC Case T131/09 Farmeco v OHIM (BOTUMAX), mn. 99 and GC Joined Cases T-345/08 and T-357/08 Helena Rubinstein and L’Ore´al v OHIM (BOTOCYL, BOTOLIST)[2010] ECR II-00279 (confirmed in CJ Case C100/11 P, nyp). 399 GC Case T-32/10 Ella Valley Vineyards v OHIM, nyp, mn. 55–56, OHIM Dec. R 1556/2009-2 only givenchy (FIG. MARK)/ONLY (confirmed in GC Case T-586/10 Aktieselskabet af 21. november 2001 v OHIM (only givenchy) [2011] ECR II-00438). 400 GC Case T-301/09 IG Communications v OHIM (CITIGATE), nyp, mn. 106. 401 CJ Case C-252/07 Intel Corporation, mn. 71. 402 CJ Case C-252/07 Intel Corporation, mn. 67, GC Case T-60/10 Jackson International v OHIM (ROYAL SHAKESPEARE), mn. 54, similarly GC Case T-21/07 L’Ore´al v OHIM (SPALINE) [2009] ECR II-00031, mn. 39. 403 GC Cases T-215/03 Sigla v OHIM (VIPS), mn. 46; T-67/04 Spa Monopole v OHIM (SPA-FINDERS), mn. 40. 404 CJ Cases C-252/07 Intel Corporation, mn. 68; C-100/11 P Helena Rubinstein and L’Ore ´al v OHIM, mn. 94. 396

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likelihood that such an injury will occur in the future405. Although the standard of proof in blurring cases is qualified, the method of proof is common for all types of injuries. The conclusion may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case406. Particular forms of infringement – blurring, tarnishment and free riding – are specified within the Commentary to Art. 8, mn. 356–379.

3. Due cause Under Art. 9 (1)(c), a proprietor of an earlier reputable trade mark can oppose use of a trade mark if use of this trade mark is ‘without due cause’. In principle, the due cause analysis is the last stage of the test of infringement. However, a different analysis sequence seems to be in place in cases of free riding. It was argued by AG Mengozzi that the use cannot be considered fair where no due cause is established, therefore, the unfairness is deemed407. The contents and the nature of the due cause requirement for many years have not been sufficiently specified and, only recently, its scope has been outlined. It is sometimes assumed that the due cause requirement, apart from being a negative condition, can be also considered an equivalent of a defence available for a user of a later mark408 since onus probandi lays with him409. The difficulties with due cause definition compelled OHIM to adopt the following open list of circumstances that could not constitute due cause: (a) the sign is particularly suitable for identifying the products for which it is used; (b) the applicant has already used this sign for these products or similar products within and/or outside the relevant territory of the European Union; or (c) the applicant invokes a right ensuing from a filing over which the filing of the opponent’s trade mark takes precedence410. As the positive contents of the condition the GC held that in order to establish due cause, it is not use per se of the contested trade mark that is required, but a reason justifying the use of that trade mark411. Due cause under Art. 9 (1)(c) means that, notwithstanding the detriment caused to or the unfair advantage taken of the distinctive character or reputation of the earlier trade mark, the use by the another entity of the 405 CJ Cases C-252/07 Intel Corporation, mn. 37–38; C-100/11 P Helena Rubinstein and L’Ore ´al v OHIM, mn. 93. 406 CJ Cases C-100/11 P Helena Rubinstein and L’Ore ´al v OHIM (BOTOCYL, BOTOLIST), mn. 95; C383/12 P Environmental Manufacturing v OHIM, mn. 42–43 – CJ emphasized the conjunction of logical deductions and the analysis of the normal practice in the relevant commercial sector. 407 Opinion of AG Mengozzi in CJ Case C-487/07 L’Ore ´al v Bellure, mn. 104–108. However, AG Mengozzi is clearly wrong when he states that ‘where such a trader actually relies on and demonstrates due cause, it can no longer be assumed that the advantage taken of the mark’s reputation is unfair and it is necessary to determine whether or not it is unfair in the light of all the relevant circumstances of the case and the nature of the due cause established’ (mn. 109). Since the conditions of 9 CTMR are cumulative, the establishment of due cause requires to find no injury in the case (and there is no place for additional fairness test). The opinion of AG Mengozzi is cited by AG Kokott in opinion Case C-65/12 Leidseplein Beheer and de Vries, nyp, mn. 36–37 that influenced the CJ in this case, in which the CJ seems to confirm the global test of the free riding and due cause (CJ Case C-65/12 Leidseplein Beheer and de Vries (Red Bull), nyp, mn. 53). 408 I. Simon Fhima, Trademark Dilution…, p. 228, G. Dinwoodie, Dilution as Unfair Competition: European Echoes, ‘Oxford Legal Studies Research’ Paper No. 37/2013, p. 17. 409 GC Case T-60/10 Jackson International v OHIM (ROYAL SHAKESPEARE), mn. 67; under the TMD see CJ Case C-252/07 Intel Corporation, mn. 39. 410 OHIM Dec.: R 283/1999-3 HOLLYWOOD, R 1142/2005-2 MARIE CLAIRE (fig.), mn. 128 and R 240/2004-2 WATERFORD STELLENBOSCH (FIG.)/WATERFORD, mn. 101. 411 GC Case T-60/10 Jackson International v OHIM (ROYAL SHAKESPEARE), mn. 68.

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mark may be justified, if a) the later user has a specific right for the mark in connection with such goods which takes precedence over the earlier trade mark412, or b) the use has become so necessary that the applicant could not reasonably be required to refrain413. 328 It should be noted that not every right can give rise to a due cause. In OHIM jurisprudence, the least controversial example of due cause based on prior right seems to be the right to family name414. However, the right stemming from business name was held insufficient basis for due cause415 as well as a right to domain name containing an earlier mark416. While the latter is understandable since the domain registration is a form of use rather than an act creating a right, the former should be criticized. The GC based its judgment on genuine use cases417, although the genuine use (use in relation to goods or services) should not be required to establish a prior right since the due cause requirement is not all about use per se, but the proper justification that can be based on completely different conditions than trade mark law. Furthermore, there is no basis to distinguish the situation of right stemming from family name and business name where the family name is used to identify a business. 329 The right giving rise to due cause can have a contractual basis from a trade mark coexistence agreement418. Although it is not excluded that a trade mark coexistence without contractual basis (with assumption of implied consent) can give rise to due cause, the de facto coexistence is hard to prove, since it must be evidenced that: a) the coexistence was based upon the absence of any likelihood of confusion or the absence of any likelihood of a connection being made on the part of the relevant public between marks, b) the marks at issue are identical419 and c) the coexistence took place in specific market sector (coexistence in use for dissimilar and not linkable goods/services is not relevant)420. 330 Other instances of the use that is not justified on the basis of a prior right are based on the necessity of use. Until Interflora and Red Bull cases, the Courts generally tend to define the scope of the due cause requirement narrowly – as a necessity of use rather than merely a simple suitability421. However, the necessity was not interpreted so narrowly to be defined as an absolute imperative rather as a qualified suitability – the suitability in circumstances justifying the use. The justification can potentially have the language nature, for instance, if word trade mark consists of acronym (language necessity)422. However, the most examples of due cause, that are not justified on the basis of a prior right, are based on the market necessity.

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OHIM Dec. of 15.06.2009 R 1142/2005-2 MARIE CLAIRE (fig.), mn. 128. GC Case T-21/07 L’Ore´al v OHIM (SPALINE), mn. 43. 414 OHIM Dec. of 30.07.2007 R 1244/2006-1 M FRATELLI MARTINI (fig.), mn. 34, of 23.1.2009 in R 237/2008-1 and R 263/2008-1 CARLO RONCATO, mn. 66, although differently OHIM Dec. of 09.11.2008 R 348/2008-1 SWAROVSKI, mn. 61. 415 GC Case T-301/09 IG Communications v OHIM (CITIGATE), mn. 126. 416 GC Case T-181/05 Citigroup and Citibank v OHIM (CITI), mn. 85. 417 CJ Case C-17/06 Ce ´line [2007] ECR I-07041, mn. 21; GC Case T-183/08 Schuhpark Fascies v OHIM (jello SCHUHPARK) [2009] ECR II-00059, mn. 21. 418 OHIM Dec. of 30.07.2007 R 1244/2006-1 M FRATELLI MARTINI (fig.), mn. 34. 419 In both GC Case T-301/09 IG Communications v OHIM (CITIGATE), mn. 128–129, OHIM Dec. R 240/2004-2 WATERFORD STELLENBOSCH (FIG.)/WATERFORD, mn. 104 the coexistence was not established. 420 OHIM Dec. of 15.06.2009 R 1142/2005-2 MARIE CLAIRE (fig.), mn. 133. 421 The narrow interpretation is considered influenced by the origin of the due cause requirement from the Benelux trade mark law (prior the TMD) por. Ch. Gielen, Trademark Dilution in the European Union, in D. Bereskin (ed.), International Trademark Dilution, Thomson West 2013, p. 237. 422 GC Case T-47/06 Antartica v OHIM (nasdaq) [2007] ECR II-00042, mn. 63, confirmed in CJ Case C-320/07 P. 413

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Rights conferred by a CTM

Art. 9 CTMR

In the SPA cases423, the GC held that the word SPA on the market of mineral waters 331 could become so necessary to the marketing that the trade mark applicant could not reasonably be required to refrain from use of the mark applied for. However, the generic character of a word has to be analysed in the context of a specific market sector – the generic use in a market of mineral water cannot justify the use on a market of cosmetics products, on which the word has a distinctive character424. The same applies to generic abbreviations (FLEX)425 and commonplace geographical name426. In the light of the keyword advertising Interflora case427, the previous jurisprudence 332 can be regarded as a first stage of interpretation of due cause requirement. Launching the new approach, the CJ found that the keyword advertising is a common online marketing tool which is justifiable if it does not lead to unfair competition428. The key difference with earlier generic words cases is that, in this case, it is not a word that is common, but the online service that uses both common and distinctive words. At the end of a day, the effect of the keyword advertising is hardly distinguishable from the situation in which all ‘keyword trade marks’ are generic429. It is apparent that the CJ not so much expanded understanding of the necessity condition, but the condition was replaced by the fair competition requirement430. This close association of the due cause requirement with a condition of fair competition should be considered as originating from AG Mengozzi remarks (see above mn. 324) regarding the connection between the due cause and the unfair advantage tests. The CJ input is the expansion of AG Mengozzi reasoning to all forms of injuries under Art. 9 (1)(c). The reason for this expansion has been provided by the CJ in the Red Bull case that 333 characterized the due cause requirement as a general clause balancing interests of trade marks proprietors. The balancing is required due to the fact that the protection of a reputable trade mark is broader and the trade mark law should be provided with the general clause mitigating the extensive rights of a senior user431. The CJ even more associated the liability for reputable trade mark infringement with the quasi-tort liability for unfair competition acts by requiring the exclusion of the liability if the junior user acts in good faith432. Presently, the only difference seems to be related to the presumptions related to an earlier trade mark and the special meaning of good faith under Art. 9 (1)(c). The CJ provided the following non-exclusive (and fact-specific) list of factors: (a) 423 GC Case T-21/07 L’Ore ´al v OHIM (SPALINE), mn. 43, OHIM Dec. of 20.04.2007 R 710/2006-2 SPA THERMES, mn. 59 referring to GC Case T-67/04 Spa Monopole v OHIM (SPA-FINDERS), mn. 44. 424 GC Case T-21/07 L’Ore ´al v OHIM (SPALINE), mn. 43. 425 OHIM Dec. of 02.06.2010 R 1000/2009-1 FLEX (fig.), mn. 72. 426 Although not evidenced by an opponent, it was not rejected in OHIM Dec. of 23.11.2010 R 240/ 2004-2 WATERFORD STELLENBOSCH (FIG.)/WATERFORD, mn. 72. 427 CJ Case C-323/09 Interflora develops the CJ reasoning in earlier Joined Cases C-236/08 to C-238/08 Google France and Google [2010] ECR I-02417 and Case C-278/08 BergSpechte [2010] ECR I-2517. 428 CJ Case C-323/09 Interflora [2011] ECR I-08625, mn. 91. 429 Ibid., mn. 82–83 – although the risk of turning the trade mark into a generic term was recognized by the CJ, the final conclusion was left to the national court. 430 Opinion of AG Kokott in CJ Case C-65/12 Leidseplein Beheer and de Vries, mn. 33. 431 CJ Case C-65/12 Leidseplein Beheer and de Vries, mn. 46, confirming AG Kokott opinion, mn. 34, V. Di Cataldo, The trade mark with a reputation in EU law – some remarks on the negative condition ‘without due cause’, 2011, 42 (7), p. 835, similar justification was provided by the CJ to explain the introduction of condition of ‘the change in economic behaviour’ in CJ Case C-383/12 P Environmental Manufacturing v OHIM, mn. 40–41. 432 The intentional element to the infringement test was introduced in CJ Case C-487/07 L’Ore ´al v Bellure, mn. 48, similarly in the field of trade mark rights limitations (art. 12 CTMR), the CJ found the awareness of a third party should be taken into account in the assessment of ‘honest practices in industrial or commercial matters’ CJ Cases: C-245/02 Anheuser-Busch [2004] ECR I-10989, mn. 83, C17/06 Ce´line [2007] ECR I-07041, mn. 34.

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CTMR Art. 10

Community Trade Mark Regulation

how that sign has been accepted by, and what its reputation is with, the relevant public; (b) the degree of proximity between the goods and services for which that sign was originally used and the products for which the mark with a reputation was registered; and (c) the economic and commercial significance of the use for that product of the sign which is similar to that mark. 334 The CJ in cases Interflora and Red Bull in the interpretation of due cause seems to suggest the new definition of the reputable trade mark protection433. Although there is no basis to equate the protection with the continental regime of unfair competition434, the classic definition of intellectual property exclusive right also no longer suits the above judgments.

Article 10 Reproduction of Community trade marks in dictionaries If the reproduction of a Community trade mark in a dictionary, encyclopaedia or similar reference work gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered, the publisher of the work shall, at the request of the proprietor of the Community trade mark, ensure that the reproduction of the trade mark at the latest in the next edition of the publication is accompanied by an indication that it is a registered trade mark Bibliography: Lee Curtis, ‘Will Google become a victim of its own Success’, Admap June 2006, Volume 41 Issue 473, pp. 55–57; Institute of Trade Mark Attorneys and Chartered Institute of Patent Attorneys (ed.), The Community Trade Mark Handbook, 2015, 20–050; James Mellor/David Llewelyn/Thomas Moody-Stuart/David Keeling/Iona Berkeley (ed.), Kerly’s Law of Trade Marks and Trade Names, 14th edition, 2005, 8–10; Wolfgang Sakulin, Trademarks Protection and Freedom of Expression: An Inquiry into the Conflict between Trade marks Rights and Freedom of Expression under European Law (Information Law Series).

Art. 10 is designed to give control to the registered proprietor of a CTM over how the CTM is represented in dictionaries, encyclopaedias or similar reference works and prevent the representation of the CTM in a generic way or in a way which gives the impression that the CTM is a generic term for the goods and services covered by the CTM. 2 The proprietor of the CTM has the power to request the publisher of the work to represent the CTM in the next edition as a registered trade mark under Art. 10. Art. 10 is thus designed to prevent the public via dictionaries, encyclopaedias and similar reference works being incorrectly educated that a CTM is a generic term for the goods and services covered by the CTM when it is not. Some argue that this Article potentially limits freedom of speech1 in that some trade marks have obtained a separate cultural and descriptive meaning beyond the use of the trade mark in commerce. One example, being given is the word ‘barbie’ which is a registered trade mark of Mattel Inc, but has obtained a separate cultural significance of describing a stupid or dumb woman with an over emphasis on her looks. Some argue that a proscriptive imposition to identify a word in this context as a registered trade mark places undue restrictions on the publisher of a text covered by Art. 10 and as a result restricts freedom of expression. However, it seems that such that the mechanism provided by Art. 10 is necessary to enable the proprietor of a CTM to counter any actions which potentially could lead to the CTM being deemed 1

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G. Dinwoodie, Dilution as Unfair Competition…, p. 19. I. Simon Fhima, Trademark Dilution…, p. 290, A. Kur, Trademarks Function…, pp. 17–20. 1 Sakulin, (Information Law Series), pp. 309 and 313. 434

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Prohibition of the use of a CTM

Art. 11 CTMR

generic through no fault of their own and thus potentially leading to a loss of property rights under Art. 51 of the CTMR. This does beg the question as to what actions a publisher must undertake to avoid infringing Art. 10. It seems clear that simply identifying the word concerned as a registered trade mark is sufficient. Such identification could be by way of the use to the phrase ‘registered trade mark’ or appropriate shortened versions of this phrase, including the use of accepted symbols such as ® which identify a phrase as a registered trade mark. Further to avoid undue administrative burdens upon the publisher, the publisher can take a reactive attitude to this provision of the CTMR. It will be noted that this Art. only imposes an obligation on the publisher to identify the term as a registered trade mark in the next edition of the publication. Some dictionaries place qualifications at the beginning of any editions making it clear that the non-identification of a word in the dictionary as a registered trade mark, is not to be taken as evidence that the word is not in fact a registered trade mark. It thus seems that such a qualification is sufficient providing that the publisher acts in correcting any dictionary references in the next edition, correctly identifying the term as a registered trade mark in the next edition. The Article does not apply to non-reference works, and thus it does not appear that Art. 10 gives the trade mark proprietor the right to object to the use of a CTM in works such as newspapers, magazines, online blogs and books in a generic way. Trade mark proprietors therefor have to rely on their ‘traditional efforts’ to police and educate publishers of such works to avoid and correct the use of their CTMs in a generic way.2 There is a question over how the proprietor can enforce the rights granted under Art. 10, as Art. 92 does not explicitly give Community Trade Mark Courts rights to enforce rights under Art. 10. However, the right may well be enforceable by a Community Trade Mark Court under the provision of Art. 102. There are no reported cases on the application of Art. 10, but there is a question over whether a request under Art. 10 might be relevant to an application for invalidity under Art. 51 (1)(b) of the CTMR on the basis that an application under Art. 10 might be relevant to a decision as to whether the registered proprietor of a CTM had at least attempted, and thus was not been inactive, in preventing the CTM from becoming a common name in the trade for a product or service in respect of which it is registered.

Article 11 Prohibition on the use of a Community trade mark registered in the name of an agent or representative Where a Community trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor’s authorisation, the latter shall be entitled to oppose the use of his mark by his agent or representative if he has not authorised such use, unless the agent or representative justifies his action. See commentary on Article 18.

2 Some of the efforts of policing and preventing the ‘generic’ use of their trade marks by major brand owners are detailed in Curtis, Admap June 2006, Volume 41 Issue 473, pp. 55–57.

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CTMR Art. 12

Community Trade Mark Regulation

Article 12 Limitation of the effects of a Community trade mark A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: (a) his own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with honest practices in industrial or commercial matters. Rc. 2 Bibliography: Florian Bottenschein, ‘Markenrecht versus notwendige Bestimmungsangabe’, GRUR 2006, 462–466; Robert Burrell/Dev Gangjee, ‘Trade Marks and Freedom of Expression – A Call for Caution’, IIC 2010, 544–569; Karl-Heinz Fezer, ‘Der Wettbewerb der Markensysteme. Chancen und Risiken der ¨ nderungsvorschla¨ge der EU-Kommission zur Markenrichtlinie und Gemeinschaftsmarkenverordnung’, A GRUR 2013, 1185–1195; Lisa P. Ramsey/Jens Schovsbo, ‘Mechanisms for Limiting Trade Mark Rights to Further Competition and Free Speech’, IIC 2013, 671–701

Content A. B. C. D.

Legal concept . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Relevance of Art. 12 CTMR for other provisions . . . . . . . . . . . . . . . . . . . . . . . . . . . Preconditions for the application of Art. 12 CTMR . . . . . . . . . . . . . . . . . . . . . . . . Defences under Art. 12 CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Own name use defence (Art. 12 (a) CTMR) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Definition of the terms ‘own name’ and ‘own address’ . . . . . . . . . . . . 2. Functioning as a name or address . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Indicative use defence (Art. 12 (b) CTMR). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Indication of the characteristics of the goods or services. . . . . . . . . . . 2. Descriptive use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Possible situations. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Gerolsteiner/Putsch case . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Referential use defence (Art. 12 (c) CTMR). . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Preconditions for the applicability of Art. 12 (c) CTMR . . . . . . . . . . . 2. Indication of the intended purposes of the goods or services. . . . . . a) BMW/Deenik case. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Types of indicative reference . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Necessity of the indicative reference . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Inapplicability of Art. 12 (c) CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . E. Dishonest use test . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. General requirements and definition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Legitimate interests of the trade mark owner . . . . . . . . . . . . . . . . . . . . . . . . 2. Art. 10bis (2) Paris Convention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Comparative advertising . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Cases of dishonest use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. False impression of a commercial connection with the business of the trade mark owner . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Taking unfair advantage of the distinctive character or reputation of a trade mark. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Denigration or discrediting use. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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Limitation of the effects of a CTM

Art. 12 CTMR

4. Presentation of a replica or imitation of the products bearing the trade mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Deliberate attempts to avail oneself of another mark and to create confusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Criteria for the assessment of individual cases . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Cases of inapplicability of the exception rule . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Use ‘as a trade mark’ . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Use as a title of a work which is in the public domain. . . . . . . . . . . . . . V. Objective test. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F. Proposals for reform. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

56 57 59 62 63 65 66 67

A. Legal concept Art. 12 CTMR enables an alleged infringer to rely on this provision as a defence to trade mark infringement and as a hindrance to prevent the trade mark owner from succeeding in an infringement action. It provides for a derogation from the exclusive rights conferred on the owner of a registered CTM according to Art. 9 (1) CTMR. The limitation of trade mark rights according to Art. 12 CTMR sets forth a balancing of divergent interests. Next to the exhaustion principle laid down in Art. 13 CTMR, it is a cornerstone preventing the distortion of competition and it allows the free movement of goods and freedom to provide services.1 It also allows market access for spare part and accessories dealers for products which are must-fit or must-match products of the trade mark owner.2 An unrestrained exercise of trade mark rights is prohibited in certain situations where third party usage is regarded as admissible by way of exception (cf. Rc. 2 CTMR). Thus, the trade mark owner may not control all usage of ‘his’ trade mark by third parties. Art. 12 CTMR is a public interest rule. It balances the exclusive rights conferred on the trade mark owner against the interests of a third party user to refer to his name or address or to certain properties of the goods or services, or to make a specific statement in relation to the registered mark of the owner. The third party user may claim both individual rights (e. g. freedom of expression and rights to his name) or may accomplish rights which in the end are in the general interest (e. g. to promote competition). In summary, it is a kind of fair use defence. As a counterclaim, the trade mark owner may put forward that the exercise of trade mark rights is beneficial for the public as consumer confusion can be prevented. In addressing public interest limitations vis-a`-vis registered trade marks, the CTMR adopts the concept of defining those situations where trade mark rights are to lose practical effect. Clear definitions may provide for greater clarity and predictability. In contrast, common law jurisdictions rather adopt a case by case approach where public policy considerations play a major role.3 The advantage of this system is that it is open to new developments. However, the test of ‘honest practices in industrial or commercial matters’ in Art. 12 CTMR allows that diverging interests can be taken into consideration. 1 Cf. CJ Case C-228/03 The Gillette Company/Gillette Group Finland Oy v LA-Laboratories Ltd Oy [2005] ECR I – 2363, mn. 29; Case C-100/02 Gerolsteiner Brunnen GmbH & Co. v Putsch GmbH – GERRI/KERRY Spring [2004] ECR I – 710, mn. 16; Case C-63/97 Bayerische Motorenwerke AG et al. v Deenik [1999] ECR I – 925, mn. 62. 2 Cf. also Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 12 mn. 3. 3 For a comprehensive comparison of the different legal systems cf. Ramsey/Schovsbo, IIC 2013, 671, 672 et seq.

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CTMR Art. 12

Community Trade Mark Regulation

B. Relevance of Art. 12 CTMR for other provisions Art. 12 CTMR is also applicable for Community collective marks (Art. 66 (3) CTMR). As regards indications of geographical origin, in particular geographical names, Art. 66 (2)(2) CTMR provides for a further barrier regarding the use of such indications with the entitlement to use such designation of geographical origin. Also in this respect, such limitation only holds true if the third party observes the ‘honest practices in industrial and commercial matters’ which is also a prerequisite of the limitation rule of Art. 12 CTMR. 7 Art. 12 CTMR is not applicable in application, opposition and nullity proceedings before OHIM but only in relation to infringement proceedings.4 8 In trade mark application proceedings, the possibility to limit the rights of registered trade marks under Art. 12 CTMR cannot mitigate the criteria for the examination of trade marks on absolute grounds, in particular by arguing that the registration of a nondistinctive or descriptive mark would not deprive third parties of the right to use such a sign as an allowed indication in the sense of Art. 12 (b) CTMR.5 Also, Art. 12 (a) CTMR only allows the use of one’s own name, but this does not mean that the name has to be registered as a CTM.6 In contrast, both Art. 7 (1) CTMR and Art. 12 CTMR, if taken together, underline the principle that signs or indications that solely serve to denote, in the usual way, characteristics of the relevant goods or services, are in the end devoid of distinctive character and should not be allowed to proceed to registration.7 If a trade mark obtains protection although the criteria of Art. 7 (1) CTMR are not met, Art. 12 CTMR may form a practical corrective to the exercise of trade mark rights which were unjustly conferred on the owner.8 9 As regards the use of trade marks in comparative advertising, the aims of the Comp. Adv. Dir. are to make comparative advertising effective (cf. Rc. 14 Comp. Adv. Dir.). Therefore, the use of the owner’s trade mark in accordance with Art. 2 (2a) Comp. Adv. Dir. cannot be seen as an infringement under Art. 9 CTMR, provided that the preconditions of Art. 3 a Comp. Adv. Dir. are met.9 If these provisions are not met, Art. 12 CMTR cannot be used to defend an infringement as such use has to regarded as use which is not in conformity with honest practices in industrial or commercial matters. 6

4 Cf. CJ Case C-3/03 P Matratzen Concord GmbH v OHIM (Hukla Germany (Matratzen)) – MATRATZEN CONCORD [2004] ECR II – 3660, mn. 35. 5 CJ Case C-51/10 P Agencja Wydawnicza Technopol v OHIM – 1000 [2011] ECR I – 1541, mn. 58 et seq.; CJ Case C-64/02 P OHIM v Erpo Mo¨belwerk GmbH – DAS PRINZIP DER BEQUEMLICHKEIT [2004] ECR I – 10051, mn. 45; CJ Case-C-404/02 Nichols plc v Registrar of Trade Marks [2004] ECR I – 8517, mn. 32 et seq.; for opposition proceedings GC Case T-20/02 Interquell GmbH v OHIM – Provimi Ltd./SCA Nutrition Ltd [2004] ECR II – 1004, mn. 55. 6 GC Case T-323/10 Chickmouza Chabou v OHIM (Chalou GmbH) – Chalou/CHABOU [2011] ECR II – 410, mn. 61; GC Case T-397/09 Ernst August Prinz von Hannover Herzog zu Braunschweig und Lu¨neburg v OHIM [2011] ECR II – 159, mn. 29. 7 Cf. CJ Case C-383/99 P Procter & Gamble Company v OHIM – BABY DRY [2001] ECR I – 6279, mn. 37. 8 Besides the possibility of a defence, the third party may instigate an action for the declaration of invalidity (Artt. 52 (1)(a), 56 CTMR). 9 Cf. CJ Case C-487/07 L’Orea ´ l SA/Lancoˆme parfums et beaute´ & Cie. SNC/Laboratoire Garnier & Cie. v Bellure NV/Malaika Investments Ltd/Starion International Ltd [2009] ECR I – 5185, mn. 53 et seq.; s. also Bottenschein, GRUR 2006, 462, 465.

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C. Preconditions for the application of Art. 12 CTMR To apply Art. 12 CTMR, it is a precondition that a registered CTM exists and that an infringement of this trade mark by the third party has been confirmed. It is irrelevant whether the infringement is based on any of the exclusive rights conferred on the trade mark owner under Art. 9 (1)(a), Art. 9 (1)(b) or Art. 9 (1)(c) CTMR.10 As a first step, it is therefore necessary to determine whether the use by the third party can be regarded as a use of a ‘trade mark as such’ in the sense of distinguishing the goods or services as originating from one particular undertaking from those of another undertaking.11 Certain uses of a descriptive term are excluded from the scope of Art. 9 CTMR as this does not affect the rights of the owner with regard to the function of the mark to serve as an indication of origin.12 This may include cases where such use simply reveals certain characteristics of the goods or services in question and will also be understood by the relevant public circles as a purely informational use.13 Under these circumstances, there is no violation of Art. 9 CTMR so that the defence of Art. 12 CTMR is not necessary to justify the acts of the third party. The use of the third party must be ‘in the course of trade’. This carries essentially the same meaning as the requirement in the infringement provision of Art. 9 (1) CTMR.14 To qualify as a use in the course of trade, a commercial activity must be aimed at achieving a profit. This is contrary to a private matter.15 Use in the course of trade is already a prerequisite for applying Art. 9 (1) CTMR so that only random cases are perceivable where ‘use in the course of trade’ requirement of Art. 12 CTMR would have an independent scope of application. It is a necessary condition that the designation or indication used by the third party does not confer on him own prior rights in relation to the registered CTM. For example, if the ‘own name’ defence is based upon the use of a company name and if such company name under national law itself is the object of an own protected IP right, there would be no situation of Art. 9 (1) CTMR, as the CTM owner cannot claim to have a right that is prior to the used designation.16 In these cases, any arguments that may fall into the category of dishonest practices by the user of such designation, would qualify as a bad faith defence if in turn the user of the (prior) business designation takes action against the registered CTM.

10

Cf. CJ Case C-63/97 Bayerische Motorenwerke AG et al. v Deenik [1999] ECR I – 925, mn. 30. Cf. CJ Case C-232/09 Interflora Inc. v Marks & Spencer plc/Flowers Direct Online Ltd [2011] ECR I – 8625, mn. 37 et seq.; Case C-206/01 Arsenal Football Club plc v Reed [2002] ECR I – 10299, mn. 51; Case C-63/97 BMW v Deenik, ibid., mn. 38 et seq. 12 Cf. CJ Case C-206/01 Arsena v Reed, ibid., mn. 54; 13 Cf. CJ Case C-487/07 L’Orea ´ l v Bellure, ibid., mn. 61; Case C-2/00 Ho¨lterhoff v Freiesleben [2002] ECR I – 4210, mn. 16. 14 For further details s. above Curtis Art. 9, mn. 39 et seq. 15 Cf. CJ Case C-17/06 Ce ´line SARL v Ce´line SA – Ce´line [2007] ECR I – 7060, mn. 17; Case C-48/05 Adam Opel AG v Autec AG (Deutscher Verband der Spielwaren-Industrie e. V.) [2007] ECR I – 1034, mn. 18; Case C-206/01, Arsenal v Reed, ibid., mn. 40. 16 Cf. the discussion of the prior rights conferred on a trade name: CJ Case C-245/02 Anheuser-Busch Inc. v Budeˆjovicky´ Budvar, na´rodnı´ podnik [2004] ECR I – 11018, mn. 86–100. 11

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D. Defences under Art. 12 CTMR Art. 12 CTMR provides three defined cases where exceptional circumstances limiting the effect of a registered trade mark apply and function as a bar to such use being prevented. 15 The burden of proof for the existence of one of the defences provided for in Art. 12 CTMR lies on the third party. However, it is the onus of the trade mark owner to prove that the use of the third party is not in compliance with honest practices in industrial or commercial matters. 14

I. Own name use defence (Art. 12 (a) CTMR) 16

According to Art. 12 (a) CTMR the use of the ‘own name or address’ can act as a defence to trade mark infringement.

1. Definition of the terms ‘own name’ and ‘own address’ In the first instance, the ‘own name’ is the name of a natural person. This includes the first name and the family name. However, modifications, alterations or translations of the name of a natural person are not privileged.17 However artists’ names and pseudonyms should also be regarded as privileged as long as the public clearly recognises them as the (substitute) name of the subject person. 18 According to CJ decisions, the own name defence is permissible also in cases where the name is not the name of an individual.18 Also the names of legal persons and names to identify businesses operations may serve as a defence. From the statements in the Ce´line decision it can be taken that the CJ regards company names, trade names and shop names as objects that qualify for the defence.19 Thus, the prevailing view is that the definition of the term ‘own name’ is rather broad, thus including business designations of all kinds, company names, trade names (trading names), and shop names.20 Therefore, not only company names referring to the person of the owner may form a defence but rather also arbitrary and fanciful names used in the business. 19 Also actual addresses are privileged under Art. 12 (b) CTMR. This includes the street name, city/town name, country name or name of the administrative area of location (such as the name of the De´partement, County, Federal State etc.) and other indications which serve in the normal course of trade as identifying the address, such as the name of the office building or the quarter of the city of the location. It has to be noted that only the entire address is privileged so that a use of individual parts thereof cannot form 17

17

Cf. Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 12 mn. 12. CJ Case C-17/06, Ce´line, ibid., mn. 31; Case C-245/02, Anheuser-Busch v Budvar, ibid., mn. 81. 19 CJ Case C-17/06, Ce ´line, ibid., mn. 36. 20 Confirmed for trade names: CJ Case C-245/02, Anheuser-Busch v Budvar, ibid., mn. 81; for trading names and company names: Court of Appeal (Civil Division), Dec. of 24/2/2010 Hotel Cipriani srl v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ. 110, mn. 59–72; High Court of Justice (Chancery Division), Dec. of 4/3/2013 Stichting BDO and others v BDO Unibank, Inc. and others [2013] EWHC 418 (Ch), mn. 178. 18

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a defence.21 However, telephone numbers, including vanity phone numbers, telefax numbers and domain names are not privileged.22

2. Functioning as a name or address To apply the ‘own name’ provision on the name of the business designation in 20 question, it is first of all necessary to decide what the name is. In this respect, indications of the legal form of the business (such as Ltd., B.V., GmbH, SE, sarl etc.) simply do not matter. But also purely non-distinctive additions to the name to explain the geographical scope of business (such as the name of the city or the country where the name owner is located or where he operates) or the object of the business activities (such as indications to state that the name owner is a manufacturer, distributing or servicing entity) can be potentially neglected.

II. Indicative use defence (Art. 12 (b) CTMR) Art. 12 (b) CTMR sets forth a privilege for the use of descriptive designations which 21 serve as an indication of certain characteristics of the relevant goods or services.

1. Indication of the characteristics of the goods or services Art. 12 (b) CTMR sets forth the privileged use of terms that serve as an indication of 22 the characteristics of the goods or services. The provision refers to certain possible types of indicative use, meaning the category, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of the service offered. Use of a third party trade mark as an indicator of origin (and not as a descriptor) can only be privileged in accordance with Art. 12 (c) CTMR. The enumeration of certain types of indications contained in Art. 12 (b) CTMR 23 corresponds with the enumeration contained in Art. 7 (1)(c) CTMR which elements form a bar to registration of the mark. Thus, the absolute grounds for refusal practically limit the potential of conflict cases as purely descriptive designations should not become eligible for registration and thus no indicative use defence is necessary. However, Art. 12 (b) CTMR is still very important because trade marks obtain protection if a descriptive term or a term which is a borderline case of descriptiveness is combined with other distinctive matter so that in an infringement scenario the question may arise whether the Art. 12 (b) CTMR defence is possible vis-a`-vis the use of the respective element within the combined trade mark. Art. 12 (b) CTMR is also of relevance for cases where a registration under Art. 7 (3) CMTR has been obtained. The term ‘intended purpose’ used in Art. 12 (b) CTMR is also contained in Art. 12 24 (c) CTMR. The privileged use under this provision requires that such is a necessary indication of the intended purpose whereas there is no requirement of necessity under Art. 12 (b) CTMR.

21

Cf. Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 12 mn. 13. However, these numbers and designations may coincide with the name of the (natural or legal) person. Therefore, they may form a sort of use of these and, thereby, they may indirectly obtain protection from infringement. 22

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2. Descriptive use 25

There is no distinction between the potential uses of indications that may serve be descriptive, so that a description that uses one of the characteristics of the goods or services is sufficient.23

a) Possible situations. The typical situation relevant for the applicability of Art. 12 (b) CTMR is the third party use of descriptive elements contained in the owner’s trade mark, but the CJ held in Opel/Autec that the provision is not restricted to such type of use.24 The test is rather whether the use as such is apt to qualify as indicative use and is in accordance with ‘honest practices in industrial and commercial matters’.25 27 It is therefore necessary that the respective indication is purely descriptive of the goods or services, so that it may denote some of their characteristics.26 Abbreviations of the designation if understood by the public as direct reference to the descriptive term, are allowable. However, alterations or modifications of a descriptive denominator are thus not privileged.27 If the descriptive term without any modifications is an element of a newly created combined expression and easily recognizable, only then may this combination term not be regarded as modification and therefore be privileged.28 28 If the descriptive term is understood in only certain languages spoken in the EU but not in others, it is questionable whether the Art. 12 (b) CTMR defence is valid across the EU.29 Although the CTM system has a unitary character (cf. Rc. 3 and Art. 1 (2) CTMR), the defence accorded to the third party under Art. 12 (b) CTMR can only be valid if the relevant public circles understand the phrase used in the foreign language to describe the subject. Therefore, a descriptive meaning in one of the EU Member States does not eo ipso form a barrier to infringement. It is therefore a case-by-case decision whether the indicative use defence holds true. If the national court comes to the conclusion that the relevant public circles, under the given circumstances, do not understand the description, the proviso of Art. 12 (b) CTMR is not applicable. 29 The descriptive use must be determined in relation to the concrete goods and services which it is describing. Thus, a use for products for which the descriptive connotation is not relevant cannot be privileged under the headings of Art. 12 (b) CTMR. 26

30

b) Gerolsteiner/Putsch case. The CJ judgment in the Gerolsteiner/Putsch case concerned the use of the term ‘KERRY Spring’ on labels to market soft drinks. The term was in conflict with the trade mark’s owner confusingly similar prior mark. The third party’s defence was to say that the drinks were manufactured and bottled in County Kerry, Ireland, using water from a spring called ‘Kerry Spring’ so that the trade mark 23 Cf. CJ Case C-100/02 Gerolsteiner Brunnen GmbH & Co. v Putsch GmbH – GERRI/KERRY Spring [2004] ECR I – 710, mn. 19. 24 Cf. CJ Case C-48/05 Adam Opel AG v Autec AG (Deutscher Verband der Spielwaren-Industrie e. V.) [2007] ECR I – 1034, mn. 42. 25 Cf. Case C-48/05, Opel v Autec, ibid., mn. 43. 26 Cf. already CJ Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) v Boots- und Segelzubeho¨r Walter Huber/Attenberger – Chiemsee [1999] ECR I – 2810, mn. 28 27 Cf. Bundesgerichtshof, Dec. of 13/3/2003 – Case I ZR 122/00, GRUR 2003, 880, 882 – City Plus; Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 12 mn. 37. 28 Cf. Bundesgerichtshof, Dec. of 27/3/2013 – Case I ZR 100/11, GRUR 2013, 631, mn. 28 – AMARULA/Marulablu; Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 12 mn. 42. 29 Cf. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 12 mn. 38.

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rights were limited and could not be held against such indicative use that referred to the geographical origin of the goods. However, this indication was presented in a highly visible and prominent way on the labels which led the trade mark owner to raise the argument that such use cannot fall under the indicative use defence as any use ‘as a trade mark’ could not form a viable defence per se. Since this provision draws no distinction line between different forms of use, even having trade mark significance, as long as it is an indication concerning one of the characteristics which are privileged, such as an indication of geographical origin, the Court concluded that the only test to be carried out is whether such indication is used in accordance with honest practices in industrial and commercial matters.30

III. Referential use defence (Art. 12 (c) CTMR) Art. 12 (c) CTMR provides a further defence against infringement in cases where the 31 use of the owner’s trade mark is necessary to indicate the intended purpose of a product or service.

1. Preconditions for the applicability of Art. 12 (c) CTMR For the examination of the indicative use defence under Art. 12 (c) CTMR it is 32 essential to acknowledge the interests of the trade mark owner to exploit the trade mark in the sense that it guarantees so that his goods and services can be distinguished from those of other businesses.31 Thus, the essential function of identifying the origin of the goods or services is a strong argument for the trade mark owner when being confronted with a third party use making reference to the trade mark. Art. 12 (c) CTMR limits the rights of the trade mark owner and allows the third party 33 the use of this trade mark provided that such use is necessary and not contrary to honest practices in industrial or commercial matters. In contrast, Art. 12 (b) CTMR only allows the indicative use of a description but not the (direct) use of the owner’s trade mark.

2. Indication of the intended purposes of the goods or services The precondition for the application of Art. 12 (c) CTMR is that the use is necessary 34 to act as indication of the intended purpose of the goods or services as no other criteria are fixed by this provision.32 Art. 12 (c) CTMR mentions accessories and spare parts which can be privileged. a) BMW/Deenik case. The leading case for the spare part and servicing business still 35 is the BMW/Deenik decision of the CJ. The car manufacturer BMW sued Mr. Deenik who ran a garage. He sold genuine second-hand BMW cars and offered the maintenance and repair of BMW cars without being part of the BMW dealer network. He 30 CJ Case C-100/02, Gerolsteiner v Putsch, ibid, mn. 24; the GC treated this issue differently in the Interquell decision (GC Case T-20/02 Interquell GmbH v OHIM – Provimi Ltd./SCA Nutrition Ltd [2004] ECR II – 1004, mn. 56) and the CJ previously in the Windsurfing Chiemsee decision (Joined Cases C-108/ 97 and C-109/97, Windsurfing Chiemsee v Attenberger, ibid., mn. 28). 31 Cf. CJ Case C-228/03 The Gillette Company v Gillette Group Finland Oy v LA-Laboratories Ltd Oy [2005] ECR I – 2363, mn. 26. 32 Cf. CJ Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 31.

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offered his services by stating ‘repairs and maintenance of BMWs’, ‘specialised in BMW’ or ‘BMW specialist’. Although he was experienced in the handling of BMW cars, the car manufacturer claimed infringement of his trade marks. The Dutch Hoge Raad referred several questions in relation to the rights of the trade mark owner and its limitations to the CJ. 36 In the first instance, the CJ confirmed that Mr. Deenik had used the trade mark thus violating the function of the trade mark to distinguish products from one undertaking from those of others. Both in relation to selling cars and in relation to servicing cars, the use of the trade mark BMW was used to identify the source of the goods for which the services were supplied.33 37 In the second instance, the CJ held that the use of the trade mark in relation to BMW cars only was an informative use which was necessary to guarantee the right of resale so that the exhaustion principle of Art. 7 TMDir (= Art. 13 CTMR) applied. However, as regards the advertisement of BMW related services, the exhaustion rule was not applicable as the advertisement did not affect further commercialisation of the cars as such.34 Therefore, it was necessary to consider the limitation of rights under Art. 6 (1)(c) TMDir (= Art. 12 (c) CTMR). But also in this respect, the informative character of such use prevailed as the Court regarded it as a use intended to identify the goods for which the service was provided.35 Such use was regarded as necessary to indicate the intended purpose of the service, as this information could not be communicated in any other way but by referring to the trade mark.36 Finally, the use was regarded as being in accordance with honest practices in industrial and commercial matters as the informative character predominated so that ‘the duty to act fairly in relation to the legitimate interests of the trade mark owner’ was observed by the third party user.37 38

b) Types of indicative reference. The reference in Art. 12 (c) CTMR to accessories and spare parts is only given by way of example and other cases where the third party indicates the intended purpose of the goods or services are also privileged.38 A comprehensive overview on all possible cases where such indication functions as a defence to infringement is not possible. The following third party uses may form a defence: – Accessories: Accessories are useful for the product of the trade mark owner and are made to specifically fit this product, such as covers for smartphones. – Spare parts: Products that are necessary for the repair of the product of the trade mark owner are important for various industries, such as the automotive industries or for kitchen appliances. – Compatible products: The indication of the compatibility of the third party’s products with those of the trade mark owner can form a necessary statement of the purpose of these third party products.39 This affects many industries where the sale of replacement parts forms an important business additional to the sale of the main products. Examples are razor blades fitting special razor handles, refills for pens or toner or ink refills for printers. 33 CJ Case C-63/97 Bayerische Motorenwerke AG et al. v Deenik [1999] ECR I – 925, mn. 38 et seq.; for a discussion of the ‘specific and indissociable link’ s. also CJ Case C-48/05, Opel v Autec, ibid., mn. 27. 34 CJ Case C-63/97, BMW v Deenik, ibid., mn. 56 et seq. 35 CJ Case C-63/97, BMW v Deenik, ibid., mn. 59; s. also Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 33. 36 CJ Case C-63/97, BMW v Deenik, ibid., mn. 60. 37 CJ Case C-63/97, BMW v Deenik, ibid., mn. 61; s. also Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 41. 38 Cf. CJ Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 32. 39 Cf. CJ Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 34.

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– Maintenance or repair services: The link to the goods as protected by the trade mark of the owner may be necessary where the third party clearly indicates that he services the products of the trade mark owner, such as being relevant in the BMW/Deenik case.40 c) Necessity of the indicative reference. Art. 12 (c) CTMR stipulates that the use of 39 the designation in question is necessary to indicate the intended purpose of a good or service. The necessity test is a strict one and requires that the means of communication of the third party is virtually ‘the only means of providing’ the relevant information.41 This requires objective information which is appropriate and a requisite for the intended purpose of conveying product information to the public.42 For example, the use of a (well-known) car producer’s logo in order to offer services in relation to those cars may no longer be regarded as necessary because the (simple) reference to the mark as a word mark may suffice to inform the public.43 d) Inapplicability of Art. 12 (c) CTMR. An indication of the intended purpose is not 40 given in cases of the mere reproduction of original goods bearing the owner’s trade mark by the third party. In the Opel/Autec case, the CJ confirmed that the offer of scale models of original cars that are reproductions of original cars made by the trade mark owner and that also bear the owner’s trade mark cannot be regarded as intending to provide an indication of the characteristics of the scale models but rather has to be seen as an ‘element in the faithful reproduction of the original vehicles’.44 Therefore, the legal implications in these cases cannot be taken from Art. 12 (c) CTMR.

E. Dishonest use test All instances of a preferential third party use under the headings of Art. 12 (a) to (c) 41 CTMR can only form a valid defence against infringement, if such use is ‘in accordance with honest practices in industrial or commercial matters’. The burden of proving that the use made by the third party is dishonest lies with the trade mark owner.

I. General requirements and definition The ‘honest practises’ requirement is an exception to the limitation rule of Art. 12 42 CTMR and, thereby, an exception to this exception. It requires an objective test as to whether the preferred use under the headings of Art. 12 (a) to (c) CTMR is in accordance with ‘honest practices’.45

1. Legitimate interests of the trade mark owner The trade mark owner may put forward that he has a legitimate reason within the 43 meaning of this constraint to exercise his trade mark rights. The third party thus has a 40

Cf. above, mn. 35–37. Cf. CJ Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 35; Oberster Gerichtshof, Dec. of 23/3/ 2011 – Case 17 Ob 2/11 k, GRURInt 2012, 180, mn. 3.2 – VELUX. 42 Cf. Oberster Gerichtshof, Dec. of 23/3/2011 – Case 17 Ob 2/11 k, GRURInt 2012, 180, mn. 3.3 – VELUX 43 Cf. Bundesgerichtshof, Dec. of 14/4/2001- Case I ZR 33/10, GRUR 2011, 1135, mn. 20–27. GROSSE ¨ R ALLE. INSPEKTION FU 44 CJ Case C-48/05, Opel v Autec, ibid., mn. 44. 45 Cf. CJ Case C-100/02, Gerolsteiner v Putsch, ibid., mn. 24. 41

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duty to act fairly in respect of the legitimate interest of the CTM owner.46 The requirement to ‘take account of the legitimate interests’ of the trade mark owner (and other parties) stems from Art. 17 TRIPS Agreement and has essentially to be seen as the same criterion.47 It always requires a detailed analysis and a case by case decision as to whether this exception applies so that the national court has to carry out an overall assessment of all the circumstances of the case in order to apply this condition.48

2. Art. 10bis (2) Paris Convention 44

The term ‘honest practices in industrial or commercial matters’ has to be construed in accordance with the unfair competition provision of Art. 10bis (2) Paris Convention. Although the CTM system is an independent system, it is necessary that the construction of identical terms used in the CTMR must be the same as in the Paris Convention. Rc. 13 TMDir underpins that the provisions of the Directive should be ‘entirely consistent’ with those of the Paris Convention, and the same can be held true for the CTMR.

3. Comparative advertising 45

Comparative advertising may exclude the exclusive rights of the trade mark owner so that no infringement situation in accordance with Art. 9 CTMR exists. Whether a comparative advertising defence is possible for the third party depends on whether the requirements of Art. 3 a (1) Comp. Adv. Dir. are met. The reasoning of this provision can also be taken into account when construing the term ‘honest practices in industrial and commercial matters’. The lawfulness of comparative advertising requires a balancing of interests in a similar way as the defence of Art. 12 CTMR, namely to objectively highlight differences of the mutual products in a fair manner.49

II. Cases of dishonest use Whether an action of third party can be regarded as dishonest requires an overall assessment of all the factors of the subject case. The provision has to be construed as an autonomous rule under Community law. The national judge has to consider all the circumstances of the relevant case, bearing in mind the general concept that protects the legitimate interests of the trade mark owner who brings forward an infringement case.50 47 National law may have developed certain concepts which the national judge takes into account when considering cases of honest use under national law, such as the principle of honest concurrent usage under English law or the ‘identical name’ concept under German law51. However, these national concepts are not directly applicable for 46

46 Cf. CJ Case C-17/06, Ce ´line, ibid., mn. 33; Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 41; Case C-100/02, Gerolsteiner v Putsch, ibid., mn. 23; Case C-63/97, BMW v Deenik, ibid., mn. 61. 47 Cf. CJ Case C-245/02, Anheuser-Busch v Budvar, ibid., mn. 82. 48 Cf. CJ Case C-17/06, Ce ´line, ibid., mn. 35; Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 37, 46, 52; Case C-245/02, Anheuser-Busch v Budvar, ibid. mn. 84; Case C-100/02, Gerolsteiner v Putsch, ibid., mn. 26; for further details of the necessary analysis s. below, mn. 59–61. 49 Cf. CJ Case C-487/07 L’Orea ´ l v Bellure, ibid., mn. 71 et seq.; Case C-44/01 Pippig Augenoptik GmbH & Co. KG v Hartlauer Handelsgesellschaft mbH/Hartlauer [2003] ECR I – 3127, mn. 49. 50 Regarding the general concept to protect the legitimate interests of the trade marks owner s. above, mn. 43. 51 So called ‘Recht der Gleichnamigen’ as developed by precedents.

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the construction of the dishonest use exception of Art. 12 CTMR as this is an autonomous rule.52 In summary, it is not possible to give a comprehensive overview of all possible 48 scenarios for the application of the ‘honest practices’ requirement. However, the following cases represent situations where a legitimate interest of the trade mark owner typically may prevail:

1. False impression of a commercial connection with the business of the trade mark owner If the third party user creates the (wrong) impression that he has a commercial 49 relationship with the trade mark owner, he may not claim the Art. 12 CTMR privilege. In particular, this may be the case in situations where the trade mark owner has established a dealer network, in particular a selective distribution network, and the third party (directly or implicitly) pretends to be part of such network.53 Also other situations are perceivable where it can be argued that the third party sustains the impression that there is a special commercial relationship and a specific link between the two businesses in the sense that the use indicates a link between the goods or services of the third party and the business of the trade mark owner.54 The right to prevent consumer confusion matches the essential function of the trade 50 mark to guarantee the identity of the origin of the goods so that the consumer has the option to distinguish these from goods of others without any possibility of confusion (cf. also Art. 3 a (1)(d) Comp. Adv. Dir.).55

2. Taking unfair advantage of the distinctive character or reputation of a trade mark If the third party uses the trade mark of the trade mark owner in a way that affects its 51 value, it can be argued that such use takes unfair advantage of the distinctive character or reputation of the trade mark (‘free-riding’, ‘parasitism’).56 In this sense, it is not necessary to show that the preconditions of Art. 9 (1)(c) CTMR are met because it concerns the legality of the exception rule under Art. 12 CTMR.57 The CJ emphasized the special object of a trade mark to protect its owner against third parties trying to take unduly advantage of the status and reputation of the mark.58 The exception comes also into operation where the third party use interferes with the 52 ability of the trade mark owner to exploit the reputation of the mark. Thus, the disadvantage to the trade mark owner is caused by the advantage the third party user takes from such use, including the image transfer on the ‘coat-tails’ of a mark with a reputation (cf. also Art. 3 a (1)(g) Comp. Adv. Dir.).59 However, just to ‘lend an aura of quality’60 to the business of the third party by using 53 the trade mark of the owner would not be regarded illegal as such, as this is the 52 Cf. Court of Appeal (Civil Division), Dec. of 24/2/2010 Hotel Cipriani srl v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ. 110, mn. 76. 53 Cf. CJ Case C-63/97, BMW v Deenik, ibid., mn. 51. 54 Cf. CJ Case C-17/06, Ce ´line, ibid., mn. 34; Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 42; Case C-245/02, Anheuser-Busch v Budvar, ibid., mn. 83. 55 Cf. CJ Case C-10/89 SA CNL-SUCAL NV v HAG GF AG – HAG II [1990] ECR I – 3752, mn. 14. 56 Cf. CJ Case C-228/03 Gillette v LA-Laboratories, ibid., mn. 43. 57 Cf. CJ Case C-63/97, BMW v Deenik, ibid., mn. 40. 58 Cf. CJ Case C-63/97, BMW v Deenik, ibid., mn. 52; Case C-10/89, HAG II, ibid., mn. 14. 59 Cf. for the infringement requirements CJ Case C-487/07 L’Orea ´ l v Bellure, ibid., mn. 41. 60 Cf. CJ Case C-63/97, BMW v Deenik, ibid., mn. 53.

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necessary side effect of the allowable use. Therefore, the threshold must be higher to show that the action of the third party is directly aimed at the reputation of the trade mark.

3. Denigration or discrediting use The adverse situation of attempting to take advantage of the reputation of the registered trade mark is a case where the use of the third party is apt to denigrate or discredit the trade mark (cf. also Art. 3 a (1)(e) Comp. Adv. Dir.).61 55 This situation may arise where there is a detriment to the repute of the mark (‘tarnishment’, ‘degradation’) if the trade mark’s power of attraction is reduced, in particular if the low quality of the third party products or some of their characteristics are liable to have a negative impact on the image of the mark.62 A detriment to the distinctive character of the trade mark (‘dilution’, ‘blurring’) may occur when the strength of the trade mark is weakened, in particular when the public no longer recognizes the trade mark of the owner, although at one time it aroused immediate association.63 54

4. Presentation of a replica or imitation of the products bearing the trade mark 56

Where the acts of the third party can be taken as assisting the offer of a replica or imitation of the products protected by the trade mark, also no defence should become possible.64 Thus, the presentation of counterfeit products and replica or imitation products cannot be privileged (cf. also Art. 3 a (1)(h) Comp. Adv. Dir.). This includes situations where the reference, having regard to the overall presentation and economic context, is capable of implicitly communicating such an idea or a replica or imitation to the public at whom it is directed.65 In essence, this represents a dishonest use that cannot sustain a fair use defence.

5. Deliberate attempts to avail oneself of another mark and to create confusion The user of a third party name which conflicts with a prior registered CTM may deliberately create and subsequently use his name in order to come as close to the prior CTM which may harm the CTM owner.66 Specifically, this refers to cases where the third party sets out to cause confusion by using his name mischievously in a misleading way. 58 The third party is under an obligation to take all appropriate measures that are reasonably available to avoid such confusion. For example, this includes the design of the products and their labels to make them distinctive from those of the owner. As regards the reference to the ‘own name’ defence, this may require the use of the full name, consisting of the first and family name, in order to draw a distinction line to the trade mark. 57

61

Cf. CJ Case C-228/03 Gillette v LA-Laboratories, ibid., mn. 44. Cf. CJ Case C-487/07 L’Orea´l v Bellure, ibid., mn. 40. 63 Cf. CJ Case C-487/07 L’Orea ´ l v Bellure, ibid., mn. 39; Case C-252/07 Intel Corporation Inc. v CPM United Kingdom Ltd [2008] ECR I – 8823, mn. 29. 64 Cf. CJ Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 45. 65 Cf. CJ Case C-487/07, L’Orea ´ l v Bellure, ibid., mn. 75. 66 Cf. Court of Appeal (Civil Division), Dec. of 24/2/2010 Hotel Cipriani srl v Cipriani (Grosvenor Street) Ltd [2010] EWCA Civ. 110, mn. 68 et seq.; Court of Appeal (Civil Division), Dec. of 3/3/2004 Reed Executive Plc and others v Reed Business Information Ltd and others [2004] EWCA Civ. 159, mn. 116. 62

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III. Criteria for the assessment of individual cases The necessary case-by-case assessment has to be done by the national court which is 59 called upon to decide on a case of a trade mark infringement. As a result, national law has to be applied, where the CTMR does not provide for specific rules (Art. 101 (2) CTMR) and additionally national procedural law becomes applicable (Art. 101 (3) CTMR). In the first instance, the assessment carried out by the national court requires a full 60 analysis of the factual situation and all the circumstances of the case presented by the parties to the court. This includes all the circumstances of the product presentation, the way the third party refers to the trade mark and possible acts of the third party to distinguish his products from those of the trade mark owner.67 The following criteria are relevant for the overall and comprehensive analysis to be 61 carried out by the national court: – The degree of knowledge of the third party, i. e. to what extent the third party ought to have been aware of the trade mark of the owner.68 This may include the obligation of the third party to take appropriate measures in order to prevent a confusion, for example by adding further elements to his name to distinguish it from the owner’s trade mark. – Whether there are any indications that the third party acted in bad faith, i. e. with the intention of causing harm to the trade mark owner.69 – Whether there is a direct reference to the trade mark owner’s products, e. g. by making statements as regards the same quality of the third party’s products or equivalent properties of the mutual products or by using a similar packaging or label.70 – The reputation that can be claimed by the trade mark owner which may constitute a substantial factor as the third party may profit thereof to market his own goods or services.71 – Are there other possibilities to give a necessary explanation to the public or is the third party use ‘in practice (…) the only means of providing such information’72. In this respect, the existence of technical standards and norms would require that these should be used instead of the registered trade mark if the reference to these standards and norms provides a full and complete description.73 Also, if the third party offers complementary products that match main products of various trade mark owners but only refers to the trade mark of just one owner, this may be a case of dishonesty.74 – Cases of actual confusion in the marketplace are not per se decisive because the application of the ‘honest practices’ is a question of law. Indications of potential confusion have to be taken into account. However, since the Gerolsteiner/Putsch

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Cf. CJ Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 46. Cf. CJ Case C-17/06, Ce´line, ibid., mn. 34; CJ Case C-245/02, Anheuser-Busch v Budvar, ibid., mn. 83. 69 Cf. CJ Case C-245/02, Anheuser-Busch v Budvar, ibid., mn. 76. 70 Cf. CJ Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 48; CJ Case C-487/07 L’Orea ´ l v Bellure, ibid., mn. 47. 71 Cf. CJ Case C-17/06, Ce ´line, ibid., mn. 34; CJ Case C-245/02, Anheuser-Busch v Budvar, ibid., mn. 83. 72 CJ Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 35; s. also CJ Case C-63/97, BMW v Deenik, ibid., mn. 60. 73 Cf. CJ Case C-228/03, Gillette v LA-Laboratories, ibid., mn. 36. 74 Cf. Oberster Gerichtshof, Dec. of 23/3/2011 – Case 17 Ob 2/11 k, GRURInt 2012, 180, mn. 4.2 – VELUX 68

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decision of the CJ indicates that a certain trade mark significance of the third party use has to be tolerated, it can be concluded that a certain degree of confusion has to be accepted.75

IV. Cases of inapplicability of the exception rule 62

The dishonesty constraint is in particular not applicable for the trade mark owner attacking the third party use under the following circumstances:

1. Use ‘as a trade mark’ The mere fact that an indication which falls under the exceptions of Art. 12 CTMR is used in a prominent manner ‘as a trade mark’ does not eo ipso constitute a dishonest use. As regards the ‘own name’ defence, it is natural that the use of the own name in relation to the goods or services can be a way of distinguishing the products as those relating to the bearer of the name and, thus, a trade mark use.76 64 The CJ held that the use of a trade mark is not outside the scope of the honest use exception. In the Gerolsteiner/Putsch case, the Court confirmed this in relation to indications concerning the geographical origin. The argument of the Court also considered ‘political’ implications by saying that in a Community with a great linguistic diversity the chance of a collision with a prior trade mark and an indication of geographical origin was substantial and even would be increased due to the enlargement of the EU.77 This certainly limits the rights conferred on the trade mark owner. The reasoning from this decision should not be overestimated as it has to be taken into account that (i.) the case concerned trade marks which were similar but not identical, and (ii.) indications of geographical origin are per se privileged by the legal protection of those indications. The other indications falling into the scope of Art. 12 (b) CTMR do not itself have an own legal protection and may be seen differently. Therefore, at least the test of a possible dishonest use has to be strict and comprehensive, and the use ‘as a trade mark’ should be seen as one of the cornerstones of an overall assessment.78 63

2. Use as a title of a work which is in the public domain 65

If a work, such as a work of literature or software, is no longer protected by copyright provisions and, thus, is in the public domain, it still may be the case that the title of this work is protected by a trade mark. It still might be possible to use the title of the work to refer to its content. Art. 12 (b) CTMR would form a bar to the trade mark rights of the work title due to the legal nature of the content being in the public domain.79 75 For a discussion of the Gerolsteiner/Putsch case s. above, mn. 30. ‘The amount of confusion which can be tolerated is a question of degree (…)’ (Jacob LJ, in Court of Appeal (Civil Division), Dec. of 3/3/2004 Reed Executive Plc and others v Reed Business Information Ltd and others [2004] EWCA Civ. 159, mn. 129). 76 Cf. Court of Appeal (Civil Division), Dec. of 3/3/2004, Reed Executive/Reed Business Information, ibid., mn. 125. 77 CJ Case C-100/02, Gerolsteiner v Putsch, ibid., mn. 25. 78 In the Gerolsteiner/Putsch case, the CJ mentions the labelling and the packaging of the soft drinks as one of the criteria which have to be considered for the test whether the third party is unfairly competing with the trade mark owner (Case C-100/02, Gerolsteiner v Putsch, ibid., mn. 26); regarding the use of similar packagings s. also CJ Case C-487/07, L’Orea´l v Bellure, ibid., mn. 46 et seq. 79 Cf. Bundesgerichtshof, Dec. of 17/2/2000 – Case I ZB 33/97, GRUR 2000 882, 883 -Bu ¨ cher fu¨r eine bessere Welt; Oberlandesgericht Du¨sseldorf, Dec. of 24/4/2012 – Case I-20 U 176/11, MMR 2012, 760, 761 – Enigma.

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V. Objective test The construction of ‘honest practices’ requires an objective test. Since Art. 12 CTMR 66 refers to the honest ‘practices’ in industrial or commercial matters instead of the honest ‘use’ of the third party, simply the effect of a dishonest practice is sufficient to exclude the third party from this exception.80 For example, the third party may not claim lack of knowledge of the owner’s trade mark registration unless all necessary searches, in particular searches for potentially conflicting trade marks of other parties, have been conducted by the third party before commencing use of the conflicting designation.

F. Proposals for reform The reform proposals for the CTM system submitted by the European Commission 67 on 27 March 2013 provide for some changes to Art. 12 CTMR.81 The proposed new wording82 splits the provision into two paragraphs and reads as follows: ‘Article 12 Limitation of the effects of a European trade mark 1. A European trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: (a) his own personal name or address; (b) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services; (c) the trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of the trade mark, in particular, where the use of the trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts. The first subparagraph shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters. 2. The use by a third party shall be considered not to be in accordance with honest practices, in particular in any of the following cases: (a) it gives the impression that there is a commercial connection between the third party and the proprietor of the trade mark; (b) it takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark without due cause.’ The limitation proposed in Art. 12 (1)(1)(a) would be restricted to cover the use of 68 personal names only. This is in contrast to the present practice according to which the names of business undertakings are also privileged.83 This proposal is a welcomed reform as the ‘own name’ defence, if applicable for arbitrary company names and other names to denote a business establishment, means a strong weapon in the hands of the user so that the trade mark owner would be restricted to argue that the third party use is 80 Cf. Court of Appeal (Civil Division), Dec. of 3/3/2004, Reed Executive/Reed Business Information, ibid., mn. 132 et seq. 81 For a detailed discussion of the reform proposals s. above Hasselblatt, Art. 1, mn. 42–60. 82 Commission Proposal for a Regulation amending Council Regulation No 207/2009 on the Community trade mark, COM(2013) 161 final of 27/3/2013; detailed explanation of proposal for Art. 12 at p. 9. 83 For further details cf. above, mn. 18.

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not in accordance with honest practices in industrial or commercial matters which might be a cumbersome undertaking. Under the proposed wording, the appropriate test would be to ask whether there is an infringement according to Art. 9 CTMR in the sense that the third party use is in conflict with the indication of origin function conferred on the trade mark owner. In this respect, the proposed wording of Art. 9 (3)(d) by way of example, also considers the use of a sign, as a trade or company name or part thereof, as infringing use. Therefore, the rights of the trade mark owner would be strengthened by the reform proposal. The question remains whether the use of a personal name within a company name may remain privileged. This may be answered in the affirmative as long as there is a direct link to the personal name of the (actual and existing) business owner. 69 The proposed wording of Art. 12 (1)(1)(b) limits trade mark owner rights for the use of non-distinctive signs or indications. However, this is only an addendum for reasons of consistency and does not mark a material change in actual practice as present practice covers virtually all types of direct indicative use, so that the use of nondistinctive signs or indications already forms a defence against infringement.84 70 The proposal for Art. 12 (1)(1)(c) would provide for a defence for all cases of identifying or referential use in general. Presently, the ‘indication of the intended purpose’ proviso is construed in a rather broad way so that the focus lies on testing whether the use of the subject indication is necessary.85 It must be noted that the proposed wording no longer focuses on the necessity requirement as this is only mentioned by way of example in relation to ‘indication of the intended purpose’.86 Therefore, the test in the future would be to ask whether the use indeed serves the function of exclusively identifying or referring to the goods or services of the trade mark owner. Thus, it will have to be seen how the new wording will be construed by the courts. Since it is left to the national courts to decide on the Art. 12 CTMR limitation, further referrals to the CJ are to be expected. 71 Finally, a separate paragraph enumerates two examples of dishonest use. However, these examples are already part of the present construction of the term ‘honest practices in industrial or commercial matters’ by the CJ.87 Therefore, the proposed wording just clarifies the present position.

Article 13 Exhaustion of the rights conferred by a Community trade mark 1. A Community trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. 2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market. Rc. 9

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For further details cf. above, mn. 22 et seq. For further details cf. above, mn. 39. 86 Cf. the critical remarks by Fezer who even regards this as an oversight (GRUR 2013, 1185, 1194). 87 For further details cf. above, mn. 49–53. 85

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Bibliography: Gielen/v. Bomhard (ed.), Concise European Trademarks and Design Law, Wolters Kluwer, 2011; Cohen Jehoram, European Trademark Law, Kluwer Law International, 2010; Christopher Stothers, Parallel Trade in Europe: Intellectual Property, Competition and Regulatory Law, Bloomsbury Publishing, 2007; Lazaros G. Grigoriackis, Trade Marks and Free Trade, Springer, 2014; National Economic Research Associates SJ Berwin & Co and IFF Research, The economic consequences of the choice of regime of exhaustion in the area of trade marks, Final Report for DG XV of the European Commission, 1999.

Content A. Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Main features and principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Territory . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Put on the market . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. By the trade mark proprietor. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Consent of the trade mark proprietor. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Transit . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Burden of proof . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VII. Legitimate reasons to oppose further commercialisation of the goods VIII. Reconditioning of goods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IX. Repackaging and relabeling . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . X. Debranding and cobranding. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . XI. Removing batch codes and product numbers . . . . . . . . . . . . . . . . . . . . . . . . . . . XII. Advertising by resellers. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . XIII. Refilling of re-usable branded containers. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . XIV. Other legitimate reasons . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 10 10 13 17 19 25 35 40 42 46 52 55 60 66 68

A. Introduction Exhaustion of trade mark rights occurs if trade marked goods are put on the market in the EU by or with the consent of the trade mark proprietor. Exhaustion implies that the trade mark proprietor cannot use his trade mark rights to oppose the further trading of those goods. The exhaustion principle balances the interests of trade mark protection and the free movement of goods within the Community and finds its basis in Artt. 34 and 36 TFEU. Without exhaustion of rights, the trade mark proprietor could use his trade mark rights to prevent the import of products from one Member State into another, which would be contrary to the principle of the free movement of goods. Since the exhaustion of trade mark rights is fundamental to the functioning of the internal market, complete harmonization occurred regarding this point. The exhaustion doctrine applies to goods as well as to their packaging, if the latter has separate economic value.1 Exhaustion does not only apply to the right to resell the goods under the trade mark but also to the right to use the trade mark in order to bring to the public’s attention the further commercialization of those goods.2 Exhaustion of trade mark rights does not affect the essential function of a trade mark, which is to guarantee the identity of the origin of the trade marked goods or services to the consumer by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin.3 Neither does exhaustion impair the specific subject-matter of a trade mark, which is the guarantee that the 1

CJ Case C-46/10 Viking Gas A/S v Kosan Gas A/S [2011] ECR I-6161, mn. 35. CJ Case C-337/95 Christian Dior S.A. et al. v Evora B.V. [1997] ECR I-6013, mn. 38. 3 Case C 299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2002] ECR 15475, mn. 30. 2

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proprietor has the exclusive right to use that trade mark, for the purpose of putting products protected by the trade mark into circulation for the first time.4 Its exclusive trade mark rights protect the trade mark proprietor against competitors wishing to take advantage of the status and reputation of the trade mark by illegally selling products bearing the trade mark.5 However, it may not be used to prevent the import of trade marked products that have been put on the market by him or with his consent in the EEA, in order to partition off national markets and thereby restrict trade between EEA countries, in a situation where no such restriction is necessary to guarantee the essence of the exclusive right flowing from the trade mark.6 Exhaustion is particularly relevant for (parallel) trade in products such as brand name clothing, shoes and bags, phones and audio/video carriers, spirits and medicines. Because of price differences worldwide the parallel trader can sell the trade marked product in the EU below the customary price. Trade mark rights may be exercised in relation to all goods in respect of which they have not been exhausted. Thus, a trade mark proprietor may use his trade mark right to prevent importation and further trading of goods which bear the trade mark, but were not put on the market by him or with his consent. In this manner, the trade mark proprietor can for instance stop importation of lower priced products from countries outside the EEA. The CJ has ruled that exercise by a trade mark proprietor of its exclusive right to prevent the import of spare parts from Thailand, where the price of such parts is considerably lower than in the EEA, so that the import may result in considerable reductions in price to consumers, for their benefit and the benefit of competition is not contrary to competition law.7 Under exceptional circumstances enforcement of an intellectual property right may constitute a violation of competition law, e. g. in case this amounts to an abuse of a dominant position. A corresponding provision to Art. 13 CTMR is contained in Art. 7 TMDir. Most of the case law of the CJ concerns the interpretation of this clause, but applies equally to Art. 13 CTMR.

B. Main features and principles I. Territory 10

Before the CTMR entered into force EU member states treated the exhaustion principle in different ways. Some countries applied international exhaustion which resulted in products being traded freely around the world after they had been put on the market by or with consent of the trade mark owner anywhere in the world. Although the principle of Community-wide exhaustion had already been established by the CJ8, in its first proposal for the TMDir. the European Commission proposed 4 CJ Case C-16/74 Centrafarm BV et al. v Winthrop BV [1974] ECR I-1183, mn. 7 and CJ Case 10/89 SA CNL-SUCAL NV v HAG GF AG [1990] ECR I-3711, mn. 33. 5 CJ Case C-16/74 Centrafarm BV et al. v Winthrop BV [1974] ECR I-1183, mn. 7. 6 CJ Case C-16/74 Centrafarm BV et al. v Winthrop BV [1974] ECR I-1183, mn. 11. 7 CJ Case C-535/13 Honda Giken Kogyo Kabushiki Kaisha v Maria Patmanidi SA [2014], ECLI: EU: C: 2014: 2123. 8 CJ Case C-16/74 Centrafarm BV et al. v Winthrop BV [1974] ECR 1183, mn. 10 and CJ Case 102/77 Hoffmann-La Roche & Co. AG v Centrafarm Vertriebsgesellschaft Pharmazeutischer Erzeugnisse mbH [1974] ECR I-1139, mn. 14.

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international exhaustion instead.9 After discussions in the Council and at the explicit request of the European Parliament it was decided to adopt the Community exhaustion regime both in the TMDir. and the CTMR.10 Art. 13 CTMR establishes the absolute principle of Community exhaustion. The 11 wording of that provision does not allow Member States to extend this to international exhaustion.11 Therefore, in principle trade mark rights can be invoked to stop the entry of trade marked goods into and further trading thereof within the Community. According to Art. 65 (2) EEA Agreement and Art. 2 of Protocol no. 28 on intellectual 12 property, the EEA countries Norway, Liechtenstein and Iceland shall provide in their national legislation the exhaustion principle laid down in Community law, so that goods in relation to which intellectual property rights are exhausted within the EU may circulate freely within the EEA12. Conversely, the putting on the market of goods in Norway, Liechtenstein or Iceland by or with the consent of the right holder would result in exhaustion of rights for the entire EEA. It is envisaged in the current revision of the CTMR13 that the expression ‘in the Community’ is replaced by ‘in the European Economic Area’.

II. Put on the market14 The requirement that goods are ‘put on the market’ is only fulfilled if the goods have 13 been put at a third party’s disposal within the EEA. In case law, the CJ formulated this negatively: goods are not put on the market where ‘the right to dispose of the goods is not transferred to third parties’, where the proprietor cannot ‘realise the economic value of the trade mark’ and where the proprietor retains his ‘interest in maintaining complete control over the goods bearing his trade mark, in order in particular to ensure their quality’.15 A sale which allows the proprietor to realise the economic value of his trade mark 14 exhausts the exclusive rights conferred by the TMDir, more particularly the right to prohibit the acquiring third party from reselling the goods.16 On the other hand, where the proprietor imports his goods with a view to selling 15 them in the EEA and offers them for sale in his own shops or those of an associated company in the EEA, without actually selling them, he does not put them on the market 9 Proposal for a first Council Directive to approximate the laws of the Member States relating to trademarks. Proposal for a Council Regulation on the Community trade-mark. COM (80) 635 final, 19 November 1980. Bulletin of the European Communities, Supplement 5/80. 10 On the history of this discussion and the adoption of the Community-wide exhaustion principle, see inter alia National Economic Research Associates SJ Berwin & Co and the IFF Research, The economic consequences of the choice of a regime of exhaustion in the area of trade marks, Final Report for DG XV of the European Commission, 8 February 1999, London; Calboli, Reviewing the (Shrinking) Principle of Trademarks Exhaustion in the European Union (Ten Years Later), Intellectual Property Law. Rev. 257, 2012, 16. 11 CJ Case C-355/96 Silhouette International Schmied GmbH & Co KG v Hartlauer Handelsgesellschaft mbH [1998] ECR 1–4799, mn. 31 and CJ Case-173/98 Sebago Inc. and Ancienne Maison Dubois & Fils SA v G-B Unic SA [1999] ECR I-4103, mn. 22. These cases pertain to Art. 7 TMDir which corresponds to Art. 13 CTMR. 12 See also concerning CDR: Art. 21 Exhaustion of rights, mn. 34 and 35. 13 Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark, rec. 15, COM (2013) 161 final. 14 See also concerning CDR: Art. 21 Exhaustion of rights, mn. 14 to 20. 15 CJ Case C-16/03 Peak Holding AB v Axolin-Elinor AB [2004] ECR I-1131, mn. 42. 16 CJ Case C-16/03 Peak Holding AB v Axolin-Elinor AB [2004] ECR I-1131, mn. 31; CJ Case C-244/00 van Doren + Q v lifestyle sports + sportswear Handelsgesellschaft (Stu¨ssy), mn. 40

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within the meaning of Art. 7 (1) of the TMDir.17 Such acts do not transfer to third parties the right to dispose of the goods bearing the trade mark.18 The fact that the goods have not been sold implies that the proprietor has not realised the economic value of the trade mark. In that situation, the proprietor retains his interest in maintaining complete control over the goods bearing his trade mark, in order in particular to ensure their quality.19 16 In the Coty and L’Oreal/E-bay cases20 the CJ considered that perfume testers which were created for demonstration purposes and marked ‘not for sale’ and that remained the property of the trade mark proprietor could not be considered as being ‘put on the market’. The intention of the trade mark proprietor not to sell the tester (evidenced by the ‘not for sale’ notification on the bottles) was decisive.21

III. By the trade mark proprietor The trade mark right is exhausted in relation to goods which the proprietor itself has put on the market in the EEA. This refers to the registered owner of the trade mark right.22 Consent of a company belonging to the same group as the trade mark owner may also lead to exhaustion of trade mark rights.23 In addition, if the goods are marketed by or with consent of a company having economic links with the trade mark proprietor, such as a licensee, this may result in exhaustion.24 Finally, even in situations where the goods in question were first placed on the market in the EEA by a person having no economic link to the proprietor of the trade mark and without his express consent, the intention to renounce the exclusive rights provided for in Art. 5 TMDir may result from that proprietor’s implied consent.25 18 Any contractual restrictions limiting the purchaser in further selling the goods concern only the parties involved and do not affect a third party which has obtained the goods from the purchaser.26 17

17 CJ Case C-16/03 Peak Holding AB v Axolin-Elinor AB [2004] ECR I-1131, mn. 31; CJ Case C-244/00 van Doren + Q v lifestyle sports + sportswear Handelsgesellschaft (Stu¨ssy), mn. 41 18 See also Art. 5 (3)(b) and (c) of the TMDir, relating to the content of the proprietor’s exclusive rights, which distinguish inter alia between offering the goods, putting them on the market, stocking them for those purposes and importing them. This wording confirms that importing the goods or offering them for sale in the EEA cannot be equated to putting them on the market there. 19 CJ Case C-16/03 Peak Holding AB v Axolin-Elinor AB [2004] ECR I-1131, mn. 31; CJ Case C-244/00 van Doren + Q v lifestyle sports + sportswear Handelsgesellschaft (Stu¨ssy), mn. 42 20 CJ Case C-127/09 Coty Prestige Lancaster Group GmbH v Simex Trading AG [2010] ECR I-4965, mn. 33 and CJ Case C-324/09 L’Oreal v E-Bay [2011] ECR I-6011, mn. 72 and 73. 21 CJ Case C-127/09 Coty Prestige Lancaster Group GmbH v Simex Trading AG [2010] ECR I-4965, mn. 43. 22 CJ Case C-16/03 Peak Holding AB v Axolin-Elinor AB [2004] ECR I-1131, mn. 31; CJ Case C-244/00 van Doren + Q v lifestyle sports + sportswear Handelsgesellschaft (Stu¨ssy), mn. 54 and 55. 23 CJ Case C-09/93 IHT Internationale Heiztechnik GmbH and Uwe Danzinger v Ideal-Standard GmbH and Wabco Standard GmbH, ECR I- 2789, mn 34. 24 CJ Case 324/08 Makro Zelfbedieningsgroothandel CV, Metro Cash & Carry BV and Remo Zaandam BV v Diesel SpA [2009] ECR I- 10019, mn 24 25 CJ Case 324/08 Makro Zelfbedieningsgroothandel CV, Metro Cash & Carry BV and Remo Zaandam BV v Diesel SpA [2009] ECR I- 10019, mn 25. 26 CJ Case C-16/03 Peak Holding AB v Axolin-Elinor AB [2004] ECR I-1131, mn. 31; CJ Case C-244/00 van Doren + Q v lifestyle sports + sportswear Handelsgesellschaft (Stu¨ssy), mn. 54 and 55.

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IV. Consent of the trade mark proprietor Neither the CTMR nor the TMDir provides for a definition of consent. The consent of the trade mark proprietor must relate to each individual item of the products in respect of which exhaustion is pleaded.27 Consent cannot be concluded from the fact that the trade mark proprietor has put that type of product or similar products on the Community market.28 The trade mark proprietor’s consent to the putting on the market within the EEA of trade marked goods may be given expressly or implicitly by being inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on a market outside the Community which unequivocally demonstrate that the proprietor has renounced his trade mark rights. Implied consent must be based on evidence capable of positively establishing that the trade mark proprietor has renounced any intention to enforce his exclusive rights.29 Implied consent may not be inferred from a lack of contractual restrictions or from the proprietor’s mere silence, such as30 – the trade mark proprietor not notifying all successive buyers of goods placed on the market outside the EEA of his opposition to the sale thereof within the EEA; – the goods not carrying a notice that sale in the EEA is prohibited; – transferring the title to the trade marked goods without imposing any contractual restrictions, even if under the law governing the contract in the absence thereof the goods may be resold within the EEA. It is irrelevant that the trader who imports the goods is not aware that the trade mark proprietor opposes their being placed on the market in the EEA, or that authorized resellers and wholesalers failed to impose any contractual restriction on their distributors and retailers opposing the sale of the trademarked goods in the EEA, even though they had been informed by the trade mark proprietor of his opposition.31 Consent for making a few trial sales, to examine whether there is a market for the goods in question, does not constitute consent to sell additional quantities of those goods in the EEA.32 Art. 22 (2) CTMR provides that a trade mark proprietor can sue a licensee for infringement where the licensee breaches a term of its license regarding the duration, the form covered by the registration in which the trade mark may be used, the scope of the goods or services for which the license is granted, the territory in which the trade mark may be affixed, or the quality of the goods manufactured or of the services provided by the licensee.33 27 CJ Case-173/98 Sebago Inc. and Ancienne Maison Dubois & Fils SA v G-B Unic SA [1999] ECR I4103, mn. 18 andCJ Case C-355/96 Silhouette International Schmied GmbH & Co KG v Hartlauer Handelsgesellschaft mbH [1998] ECR 1–4799, mn 31 28 CJ Case-173/98 Sebago Inc. and Ancienne Maison Dubois & Fils SA v G-B Unic SA [1999] ECR I4103, mn. 29 CJ Joined Cases C-414/99 to C-416/99 Zino Davidoff SA v A & G Imports Ltd and Levi Strauss & Co. et al. v Tesco Stores Ltd et al. [2001] ECR I-8691, mn. 6 30 CJ Joined Cases C-414/99 to C-416/99 Zino Davidoff SA v A & G Imports Ltd and Levi Strauss & Co. et al. v Tesco Stores Ltd et al. [2001] ECR I-8691, mn. 55, 58, 60. 31 CJ Joined Cases C-414/99 to C-416/99 Zino Davidoff SA v A & G Imports Ltd and Levi Strauss & Co. et al. v Tesco Stores Ltd et al. [2001] ECR I-8691, mn. 66. 32 CJ Joined Cases C-414/99 to C-416/99 Zino Davidoff SA v A & G Imports Ltd and Levi Strauss & Co. et al. v Tesco Stores Ltd et al. [2001] ECR I-8691, mn. 56. 33 CJ Case C-59/08 Copad SA v Christian Dior couture SA et al. [2009] ECR I-3421, mn. 37, in relation to the corresponding Art. 8 (2) TMDir.

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Community Trade Mark Regulation

A licensee who puts goods bearing a trade mark on the market in disregard of such a provision in a licence agreement does so without the consent of the proprietor of the trade mark.34 A contractual prohibition to sell luxury goods to discount stores may be deemed to concern the quality of the goods. In case of luxury goods the quality is not just the result of their material characteristics, but also of the allure and prestigious image which bestows on the goods an aura of luxury. If that aura of luxury is damaged, the quality of the goods may be damaged as well.35 Selling luxury goods outside a selective distribution network may damage the quality of the goods and a provision prohibiting such sales may therefore fall within Art. 8 (2) TMDir and the exclusive list of Art. 22 CTMR.36

V. Transit Goods falling under customs transit arrangements, such as the external customs transit procedure or the customs warehouse procedure have not yet been introduced into the Community and thus have not yet been put on the market.37 The external transit procedure applies to goods originating from outside the Community that are not free in circulation in the Community.38 Customs warehousing enables importers to store goods whose final destination is unknown at the time of their physical entry into the Community.39 If goods falling under such arrangements are offered for sale in countries outside the Community or in countries within the Community where the trade mark proprietor does not hold any rights, or if the final destination of the goods is not yet specified in the customs warehouse procedure, the trade mark proprietor cannot invoke its trade mark rights.40 26 The external customs transit procedure of non-Community goods is based on the legal fiction that they have not entered Community territory and that goods placed under this procedure therefore are subject neither to the corresponding import duties nor to other measures of commercial policy.41 This mere transit does not involve any marketing of the goods in question and is therefore not liable to infringe the specific subject matter of the trade mark.42 27 A trade mark proprietor can prohibit the transit of trade marked goods where it can establish that the goods will be subject to an act by a third party during the external transit procedure which necessarily entails their being put on the market in the transit 25

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CJ Case C-59/08 Copad SA v Christian Dior couture SA et al. [2009] ECR I-3421, mn. 39. CJ Case C-337/95 Dior v Evora [1997] ECR I-6013, mn. 45. 36 CJ Case C-59/08 Copad SA v Christian Dior couture SA et al. [2009] ECR I-3421, mn. 30. 37 CJ Case C-405/03 Class International B.V. v SmithKline Beecham Plc. [2005] ECR I-8735, mn. 50 38 The external Community transit procedure applies to non-Community goods which are transported from one location in the EU to another location in the EU. In order to place the goods under the external Community transit procedure, one has to file a so-called T1 declaration with Customs. The declaration must specify, amongst other things, an office of departure and an office of destination. 39 Customs warehousing allows the owner to hold imported non-Community goods in the Community and to choose when he pays the duties or re-exports the goods. The amount of working or processing allowed on goods held in warehouses is limited, essentially to keeping them preserved with a view to subsequent distribution. However, it is possible to process goods under inward processing or processing under customs control on the premises of a customs warehouse. 40 CJ Case C-405/03 Class International B.V. v SmithKline Beecham Plc. [2005] ECR I-8735, mn. 30 and CJ Case C-281/05 Montex Holdings Ltd. v Diesel SpA [2006] ECR I-10881, mn. 34. 41 CJ Case C-383/98 The Polo/Lauren Company LP v Dwidua Langgeng Pratama International Freight Forwarders [2000] ECR I-2519, mn. 34. 42 CJ Case C-115/02 Rioglass SA and Transremar SL [2003] ECR I-12705, mn. 27. 35

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state. A mere theoretical risk of this happening or the fact that the purchaser of the goods is known as a parallel trader will not suffice.43 It is irrelevant whether the goods originate from an associated state or from a third state or that they were lawfully manufactured in the country of origin.44 Although mere transit trade does not constitute trade mark infringement, the goods involved are not immune from action by the customs authorities under the EU Customs Regulation.45 Customs authorities of the Member States may intercept goods that are suspected to infringe intellectual property rights, even when these goods are declared in transit or the goods are merely transiting the territory of the country in question. In Philips and Nokia46 the CJ dismissed the manufacturing fiction that goods falling under the EU Customs Regulation should be regarded as manufactured in the Member State of the customs action which would make them liable to trade mark infringement action in that state. If there are sufficient grounds for suspecting that goods in transit infringe trade mark rights customs authorities suspend the release of or detain the goods47 That evidence may include the fact that the destination of the goods is not declared whereas the suspensive procedure requested requires such a declaration, the lack of precise or reliable information as to the identity or address of the manufacturer or consignor of the goods, a lack of cooperation with the customs authorities or the discovery of documents or correspondence concerning the goods in question suggesting that there is liable to be a diversion of those goods to consumers in the Community.48 Customs can only stop counterfeit goods if there is a risk of these goods entering into the Community. If counterfeit goods are on route to a third country, customs must let them go, even if there is a risk of these goods being illegally diverted back into the EU. Although such indications warrant the detention of the goods by customs, they are not necessarily sufficient to establish trade mark infringement. The entry, presence and movement of non-EU goods in the customs territory of the EU under a suspensive procedure does, under the existing acquis, not infringe intellectual property rights. The authority competent to take a substantive decision cannot classify goods which a customs authority suspects of infringing an intellectual property right as ‘goods infringing an intellectual property right’ in respect of which, after substantive examination, it is not proven that they are intended to be put on sale in the Community.49 Such goods can only be classified as counterfeit or infringement once there is proof that they are the subject of a commercial act directed at consumers in the Community. Evidence may include the existence of a sale of goods to a customer in the Community, of an offer for sale or advertising addressed to consumers in the Community, or of

43 CJ Case C-405/03 Class International B.V. v SmithKline Beecham Plc. [2005] ECR I-8735 and CJ Case C-281/05 Montex Holdings Ltd. v Diesel SpA [2006] ECR I-10881, mn. 23. 44 CJ Case C-405/03 Class International B.V. v SmithKline Beecham Plc. [2005] ECR I-8735, mn. 31. 45 Regulation (EU) No 608/2013 of the European Parliament and the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003. 46 CJ Cases C-446/09 and 495/09 Koninklijke Philips Electronics N.V. and Nokia Corporation [2011] ECR I-12435, mn. 67. 47 Art. 4 (1) of Regulation (EU) No 608/2013 of the European Parliament and the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003. 48 CJ Cases C-446/09 and 495/09 Koninklijke Philips Electronics N.V. and Nokia Corporation [2011] ECR I-12435, mn. 61. 49 CJ Cases C-446/09 and 495/09 Koninklijke Philips Electronics N.V. and Nokia Corporation [2011] ECR I-12435, mn. 70.

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documents or correspondence concerning the goods in question showing that diversion of those goods to Community consumers is envisaged.50 33 The implications of Philips and Nokia51 have met with strong criticism as placing an inappropriately high burden of proof on trade mark proprietors, and hindering the fight against counterfeiting. In its proposal for a Regulation amending the CTMR the Commission on this issue proposes to entitle trade mark proprietors to prevent third parties from bringing goods in relation to which its trade marks rights are not exhausted into the customs territory of the Community, regardless of whether they are to be released for free circulation in the Community.52 34 For this purpose, the Commission is proposing to insert a new Art. 9 (5) CTMR:53 ‘The proprietor of a European trade mark shall also be entitled to prevent all third parties from bringing goods, in the context of commercial activity, into the customs territory of the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorization a trade mark which is identical to the European trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.’ This forms part of the text of the Regulation adopted by the European Parliament on 25 February 2014.

VI. Burden of proof The question who has the burden of proof of the exhaustion of rights or lack thereof is important, as it is often difficult to provide the required evidence that the goods have (not) been put on the market by or with the consent of the trade mark proprietor. For the parallel trader and his suppliers the risk of having the burden of proof is that this may result in exposing the distributor who supplied the goods, which may lead to the trade mark’s proprietor no longer supplying the distributor in question. 36 In practice, it is often not easy to determine in respect of specific goods whether or not the trade marks rights have been exhausted. It may be difficult to determine whether goods originate from inside or outside the Community, for example if designations indicating the origin have been removed or damaged. 37 The party that relies on the conditions for exhaustion having been fulfilled must provide the evidence thereof.54 This rule applies in respect of all parallel trades in the EU and overrides the Member State’s national law of evidence.55 Thus, parallel importers of trade marked goods carry the burden of proof that the mark holder consented to the importation of such goods within the Community.56 In the case of products originating in a country outside the Community, this may require the trader to 35

50 CJ Cases C-446/09 and 495/09 Koninklijke Philips Electronics N.V. and Nokia Corporation [2011] ECR I-12435, mn. 71. 51 CJ Case C 299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2002] ECR 1-5475 52 Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark, rec. 15, COM (2013) 161 final (12). 53 See also: Proposal for a Directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks, Art. 10 (5), COM (2013) 162 final. 54 Van Doren + Q. GmbH v Lifestyle sports + sportswear Handelsgesellschaft mbH and Michael Orth [2003] ECR I-3051, mn. 42 55 CJ Joined Cases C-414/99 to C-416/99 Zino Davidoff SA v A & G Imports Ltd and Levi Strauss & Co. et al. v Tesco Stores Ltd et al. [2001] ECR I-8691, mn. 65. 56 CJ Joined Cases C-414/99 to C-416/99 Zino Davidoff SA v A & G Imports Ltd and Levi Strauss & Co. et al. v Tesco Stores Ltd et al. [2001] ECR I-8691, mn. 54.

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demonstrate that the goods were originally put on the market in the Community by the trade mark proprietor or with his consent by tracking the goods back along the entire sales chain. If this distribution of the burden of proof may lead to ‘a real risk of partitioning of 38 national markets and thus assist the maintenance of price differences which may exist between Member States’, the burden of proof could be distributed differently.57 This may be the case where the trade mark proprietor markets its products in the Community using an exclusive distribution system.58 The parallel importer will first have to prove that a risk of partitioning of the national 39 markets exists. If he succeeds in that proof, the trade mark proprietor has to prove that the goods were first marketed outside the Community. If satisfactory evidence thereof is furnished, the parallel importer may demonstrate the trade mark proprietor’s consent to the subsequent importation into the Community.59

VII. Legitimate reasons to oppose further commercialisation of the goods Art. 13 (2) CTMR enables the trade mark proprietor to oppose further commercia- 40 lisation of the goods, notwithstanding exhaustion of trade mark rights, provided he has a legitimate reason, especially where the condition of the goods is changed or impaired after they have been put on the market. The ‘condition of the goods’ refers to both the goods themselves as well as the packaging and accompanying documentation, such as an instruction leaflet. The word ‘especially’ indicates that the examples given provide guidance only, and do not constitute an exhaustive list. The finding of a legitimate reason is dependent on the specific facts of the case.60 The trade mark proprietor can as a rule rely on the exclusive rights conferred by trade 41 marks only against economic operators.61 The trade mark proprietor can only invoke his trade mark rights in relation to sale of goods in the course of trade.62 In case an individual (re)sells a product bearing a trade mark through an online marketplace and the transaction does not take place in the context of a commercial activity, the proprietor of the trade mark cannot rely on his trade mark right to oppose the sale, even if the proprietor would otherwise have a legitimate reason.63 If the seller is acting ‘in the course of trade’ depends, inter alia on the volume, the frequency and other characteristics of the sales made by him on such a marketplace.

57 CJ Joined Cases C-414/99 to C-416/99 Zino Davidoff SA v A & G Imports Ltd and Levi Strauss & Co. et al. v Tesco Stores Ltd et al. [2001] ECR I-8691, mn. 54. 58 Van Doren + Q. GmbH v Lifestyle sports + sportswear Handelsgesellschaft mbH and Michael Orth [2003] ECR I-3051, mn. 39. 59 Van Doren + Q. GmbH v Lifestyle sports + sportswear Handelsgesellschaft mbH and Michael Orth [2003] ECR I-3051, mn. 42. 60 CJ Case C-349/95 F.Loendersloot v G. Ballantine and son Ltd [1997] ECR I-6227 and CJ Case C-324/ 09 L’Ore´al SA and Others v eBay International AG [2009] ECR I-6011, mn. 21. 61 CJ Case C-324/09 L’Ore ´al SA and Others v eBay International AG [2009] ECR I-6011, mn. 54. 62 Inter alia, CJ Case C-245/02 Anheuser-Busch [2004] ECR I-10989, mn. 62, and CJ Case C-487/07 l’Ore´al and others [2009] ECR I-5185, mn. 32. 63 CJ Case C-324/09 L’Ore ´al SA and Others v eBay International AG [2009] ECR I-6011, mn. 55.

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VIII. Reconditioning of goods The trade mark proprietor in principle has a legitimate reason to oppose the resale of reconditioned goods bearing the original trade mark as the condition of those goods has changed. The Benelux Court of Justice has ruled that a trade mark proprietor cannot oppose the use of his trade mark on reconditioned goods if they are basically the same as the original product and removal of the trade mark is not possible without an adverse impact on the quality of the product or if it would otherwise be unreasonable (e. g. from an economic prospective) to require such a removal, provided the reseller makes all reasonable efforts to notify to the public that the goods in question are reconditioned and not the original ones.64 43 A legitimate reason is not present if the change or impairment of quality of a product has occurred as a consequence of the passage of time or the normal wear and tear of the product. A legitimate reason could be present in respect of goods that have passed their sell-buy date or in case the sell-by date has been altered. The trade mark proprietor is entitled to oppose such a change since this affects the product’s integrity. The trade mark proprietor did not intend to put the products on the market in this condition. This is detrimental to the guarantee function of the trade mark, since the inferior quality of the goods is wrongfully ascribed to the trade mark of the proprietor. 44 The change or impairment of the good’s packaging also may constitute a legitimate reason for objection, as packaging determines to a significant degree how the public perceives the trade marked product and the trade mark’s image. If the product or its packaging is damaged, the image or reputation of the trade mark or the product may be affected, especially in the case of luxury articles.65 45 A trade mark proprietor can object to further sales of its products if the boxes or outer packaging of the products have been removed, when such removal may affect essential information, such as the identity of the manufacturer or the person marketing the product, or when the removal of the packaging has damaged the image of the product and hence the trade mark’s reputation.66 42

IX. Repackaging and relabeling 46

Some trade marked goods, such as pharmaceutical products, may have different packaging in different Member States. Modification or replacement (‘repackaging’) of the original packaging of imported products is often required in the pharmaceutical sector because of different national regulations concerning, for example, box sizes and languages. Repackaging has often been used to present the imported product as forming part of the products of the importer, by displaying its trade dress. This has resulted in extensive case law.67

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BCJ 6 Nov. 1992 Automotive products/Valeo, NJ 1993, 454, mn. 37. CJ Case C-324/09 L’Ore´al SA and Others v eBay International AG [2009] ECR-6011, mn. 79. 66 CJ Case C-324/09 L’Ore ´al SA and Others v eBay International AG [2009] ECR-6011, mn. 83. 67 Inter alia CJ Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb v Paranova A/S and C.H. Boehringer Sohn et al. v Paranova A/S and Bayer AG et al. v Paranova A/S [1996] ECR I-3457, 27 ECR I-3457; CJ Case C-379/97 Pharmacia & Upjohn SA v Paranova A/S[1999] ECR I-6927, andCJ Case C-143/00 Boehringer Ingelheim v Swingward & Dowelhurst [2002] ECR I-3759. 65

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Repackaging of a product by a third party without the authorization of the trade mark proprietor is likely to create a real risk for the guarantee of origin which is the specific subject matter of the trade mark.68 Repackaging is any act affecting the original packaging, including the modification of the original labels, the addition of new labels, or the use of new packaging, regardless of whether the original trade mark has been reaffixed on the new packaging, and also includes overstickering and reboxing.69 In Bristol-Myers the CJ set out the following cumulative requirements for repackaging to be allowed: – repackaging is necessary in order to market the product in the Member State of importation and reliance on trade mark rights by the proprietor in order to oppose the marketing of repackaged products under that trade mark would contribute to the artificial partitioning of the markets between Member States; – the repackaging cannot affect the original condition of the product inside the packaging; – the new packaging clearly states who repackaged the product as well as the name of the manufacturer; – the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark and of its proprietor; thus, the packaging must not be defective, of poor quality, or untidy; and – the importer gives notice to the trade mark proprietor before the repackaged product is put on sale, and, on demand, supplies him with a specimen of the repackaged product.70 It is up to the parallel trader to prove that all these conditions have been satisfied. The condition that repackaging is necessary relates to necessity as a consequence of statutory requirements71 There is no necessity if the sole purpose of repackaging is to achieve more attractive packaging or labelling.72 The person carrying out the relabeling must use means which make parallel trade feasible while causing as little prejudice as possible to the subject matter of the trade mark right.73 The condition of necessity is satisfied only if a prohibition to repackage, imposed on the importer, would hinder effective access to the market.74 If the parallel trader provides prima facie evidence that the repackaging may not affect the original condition of the goods and that the reputation of the trade mark or its proprietor may not be damaged, the burden of proof may shift to the trade mark proprietor.75 The parallel trader must furnish the proprietor of the trade mark with the information necessary and sufficient to enable him to determine whether the repackaging is 68

CJ Case C-143/00 Boehringer Ingelheim v Swingward & Dowelhurst [2002] ECR I-3759, mn. 29. CJ Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb v Paranova A/S and C.H. Boehringer Sohn et al. v Paranova A/S and Bayer AG et al. v Paranova A/S [1996] ECR I-3457, mn. 27. 70 Inter alia CJ Case C-102/77 Hoffmann-La Roche/Centrafarm [1978] ECR I-1139, mn. 13; CJ Case C232/94 MPA Pharma v Rhoˆne Poulenc [1996] ECR I-3671, mn. 49; CJ Cases C-71/94, C-72/94 and C-73/ 94 Eurim-Pharm v Beiersdorf [1996] ECR I-3603, mn. 34; CJ Joined Cases C-427/93, C-429/93 and C436/93 Bristol-Myers Squibb v Paranova A/S and C. H. Boehringer Sohn et al. v Paranova A/S and Bayer AG et al. v Paranova A/S [1996] ECR I-3457, mn. 27. ECR I-3457; CJ case C-349/95 F. Loendersloot v G. Ballantine and son Ltd [1997] ECR I-622, mn. 78; CJ Case C-379/97 Pharmacia & Upjohn SA v Paranova A/S[1999] ECR I-6927, mn. 17; CJ Case C-143/00 Boehringer Ingelheim v Swingward & Dowelhurst [2002] ECR I-3759, mn. 61; CJ case C-348/04 Boehringer Ingelheim v Swingward & Dowelhurst (II) [2007] ECR I-339, mn. 55and CJ case C-276/05 Wellcome v Paranova [2008] ECR I-10479, mn. 23. 71 CJ Case C-384/04 Boehringer Ingelheim v. Swingward & Dowelhurst(II) [2007] ECR I-3391, mn. 13 72 CJ Case C-379/97 Pharmacia & Upjohn v Paranova [1999] ECR I-6927, mn. 36. 73 CJ Case C-349/95 F.Loendersloot v G. Ballantine and son Ltd [1997] ECR I-6227, mn. 46. 74 CJ Case C-379/97 Pharmacia & Upjohn SA v Paranova A/S [1999] ECR I-6927, mn. 43 75 CJ Case C-348/04 Boehringer Ingelheim v Swingward & Dowelhurst(II) [2007] ECR I-3391, mn. 53. 69

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necessary in order to market it in the relevant Member States. The failure of the trader to give prior notice to the trade mark proprietor constitutes an infringement of its trade mark rights.

X. Debranding and cobranding Some resellers remove the trade mark from the goods and replace it with a label bearing their name (debranding) or add a label with their own name or trade mark (cobranding). Debranding and co-branding potentially can damage the reputation of a trade mark, such that the trade mark proprietor could oppose the further marketing of goods that had first been put on the market in the Community by it or with its consent.76 53 Where a reseller, without the consent of a trade mark proprietor affixes his own trade mark, with the result that the trade mark of the manufacturer of the goods is entirely concealed, the trade mark proprietor has a legitimate reason to oppose the use of its trade mark to advertise the sale of those goods.77 The CJ considers that in such a case, damage is caused to the essential function of the trade mark to guarantee the origin of the goods, and the consumer is prevented from distinguishing the goods originating from the proprietor and those originating from the reseller or other third parties.78 54 If the original trade mark remains visible in case of co-branding, this does not alter the condition of the goods by masking their origin and does not constitute a legitimate reason to oppose the further marketing of the goods.79 52

XI. Removing batch codes and product numbers Batch codes perform both a tracking function and a consumer safety function, often in addition to facilitating distribution by the manufacturer. In parallel trade, batch codes, product codes, and other identification numbers or signs may be removed to hide that the products were first put on the market outside the Community or to hide a leak in the distribution network of the trade mark proprietor within the Community. 56 The conditions for repackaging set out in Bristol-Myers apply to the removal of batch codes, product codes, and other identification numbers, as this might affect the guarantee of origin function of the trade mark.80 This function serves to assure that the consumer or end user is certain that a trade marked product has not been subject to interference by a third party in a previous marketing stage without the trade mark proprietor’s authorization. 57 Affixing identification numbers for products may be necessary in connection with statutory labelling obligations or legitimate EU law purposes, such as the recall of defective products and combating counterfeiting.81 The removal of identification signs 55

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CJ Case C-348/04 Boehringer Ingelheim v Swingward & Dowelhurst(II) [2007] ECR I-3391, mn. 17. CJ Case C-558/08 Portakabin Ltd. v Primakabin B.V. [2010] ECR I-6963, mn. 69. 78 CJ Case C-349/95 F.Loendersloot v G. Ballantine and son Ltd [1997] ECR I-6227; CJ Case C-348/04 Boehringer Ingelheim v. Swingward & Dowelhurst (II) [2007] ECR I-3391, mn. 14. 79 CJ Case C-46/10 Viking Gas A/S v Kosan Gas A/S [2011] ECR I-6161, mn. 35. 80 CJ Case 102/77, Hoffman-La Roche v. Centrafarm [1978] ECR I-1139; CJ Case 1/81, Pfizer v. EurimPharm [1981] ECR I-2913, mn. 8 and CJ Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb v Paranova A/S and C.H. Boehringer Sohn et al. v Paranova A/S and Bayer AG et al. v Paranova A/S [1996] ECR I-3457, mn. 48. 81 CJ Case C-349/95 F.Loendersloot v G. Ballantine and son Ltd [1997] ECR I-6227, mn. 12. 77

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Art. 13 CTMR

may render it impossible for trade mark proprietors to trace and/or recall product batches from the market in the event of a defect in the product. If identification signs have been affixed for these legitimate purposes and the trade mark proprietor invokes his trade mark rights, to prevent a third party from removing and then reaffixing or replacing labels bearing his trade mark to remove those identification signs, this does not constitute an artificial partitioning of the markets of the Member States.82 Clumsy removal or replacement of the packaging constitutes a legitimate reason for 58 opposition if the condition of the goods is thereby affected. If the packaging is impaired this may affect the trade mark’s reputation. With regard to medicines, high standards regarding the quality and integrity of the product must be observed and are expected by customers. If the product or its packaging appears manipulated or appears to have been handled by others, this could undermine the user’s confidence in the trade marked product. In the case of luxury articles, where it is important that the goods retain their aura of luxury this may be the case if the packaging or the product appears untidy or looks as if it has been altered by third parties. If the parallel trader has instructed or incited an authorised reseller to remove or 59 deface identification numbers or signs, thereby breaching his reseller agreement, this may constitute a tort if the trader thereby deliberately profits from such a breach.

XII. Advertising by resellers Trade marked goods that have been put on the market by or with the consent of the 60 trade mark proprietor and to which the exception of Art. 13 (2) does not apply, may be further marketed and services regarding such goods can be offered for sale in the Community. Use of the trade mark for such goods is justified to the extent that this is customary in selling those goods, provided that the reseller does not act unfairly in relation to the justified interests of the trade mark proprietor.83 Requirements are similar to those that apply to resellers using the trade mark of another party to indicate the intended purpose of their goods or services as provided in Art. 6 (l)(c) CTD.84 The use of the trade mark must be in accordance with honest practices in trade and commerce. In case of prestigious goods, the reseller should endeavour to prevent his advertising 61 from affecting the value of the trade mark by detracting from the allure and prestigious image of the goods in question and from their aura of luxury. The trade mark proprietor can object to such trade mark use if he demonstrates that this ‘seriously damages’ the reputation of its trade mark. This may for instance be the case if the advertising may seriously detract from the image the trade mark proprietor has succeeded in creating around the mark.85 The sale of luxury goods by a licensee to third parties outside the selective distribu- 62 tion network, such as to discount stores, could affect the quality of such goods.86 In such a case the national courts have to balance the legitimate interest of the trade mark proprietor and that of the discount store. If the sale by the licensee to a third party is 82

CJ Case C-349/95 F.Loendersloot v G. Ballantine and son Ltd [1997] ECR I-6227, mn. 42. CJ Case C-63/97 Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Ronald Karel Deenik [1999] ECR I-905, mn. 49.; CJ Case 100/02 Gerolsteiner Brunnen [2004] I-0691 and CJ Case 228/ 03 Gillette v LA Laboratories [2005] ECR I-2337, mn. 49. 84 CJ Case C-228/03 Gillette v LA Laboratories [2005] ECR I-2337, mn 41. 85 CJ Case C-337/95 Parfums Christian Dior SA v Evora B.V. [1997] ECR I-6013 and CJ Case C-63/97 Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Ronald Karel Deenik [1999] ECR I-905, mn. 49. 86 CJ Case C-59/08 Copad SA v Christian Dior couture SA et al. [2009] ECR I-3421, mn 53. 83

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likely to undermine the quality of the luxury goods, it should be assessed whether further commercialisation of the goods by the third party, using methods customary in its sector of trade, damages the trade mark’s reputation. The parties to whom the goods are resold and the circumstances in which the goods are put on the market should be taken into account.87 63 A legitimate reason to oppose the use of a trade mark in advertising in relation to these goods may exist only if the advertiser’s use of the trade mark could seriously damage the reputation of the mark. Specialist retailers such as retailers of used products cannot be prohibited from using a mark for the purpose of advertising their resale activities which include the sale of other second-hand goods, unless the selling of other second-hand goods would risk seriously damaging the image or reputation of the mark. 64 It is considered contrary to honest trade practices if the mark is used in a way that creates the impression that there is a commercial connection or relationship between the trade mark proprietor and the third party. This may in particular be the case where that use does not, or only with difficulty enable the normally informed and reasonably attentive customer, to ascertain whether the goods or services referred to by the advertisement originate from the trade mark proprietor or from an undertaking economically linked to it or, on the contrary, from a third party.88 Likewise, the trade mark use suggests that the reseller’s business is affiliated with the trade mark proprietor’s distribution or dealer network or that there is a special relationship between the two undertakings.89 65 If there is no risk that the public will be led to believe that there is a commercial connection between the reseller and the trade mark proprietor, the mere fact that the reseller derives an advantage from using the trade mark because the – correct and loyal – advertisements for the sale of the goods covered by the trade mark lend an aura of quality to his own business, does not constitute a legitimate reason for the trade mark proprietor to oppose this trade mark use.90

XIII. Refilling of re-usable branded containers The sale of a product in a re-usable container, such as beer cans or gas bottles, which have been put on the market in the EU by or with the consent of the trade mark proprietor, also exhausts the trade mark rights in relation to the container where the trade mark is affixed to that container. The refiller must ensure that any labels placed on the bottles as well as the terms and conditions under which the bottles are replaced do not lead the average consumer to assume that there is a link between the two companies or to otherwise consider that a product used for the refilling originates with the trade mark proprietor. 67 Determining whether there is confusion as to the origin of the products contained in a branded container, the court should take into account the practices of the sector, and in particular whether consumers are accustomed to the container being refilled with products from other suppliers. It appears to be reasonable to the CJ to assume that a consumer who goes directly to the trade mark proprietor either to exchange his empty 66

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CJ Case C-59/08 Copad SA v Christian Dior couture SA et al. [2009] ECR I-3421, mn. 31. CJ Case C-558/08 Portakabin Ltd. v Primakabin B.V. [2010] ECR I-6963, mn. 35. 89 CJ Case C-63/97 Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Ronald Karel Deenik [1999] ECR I-905, mn. 64and CJ Case C-558/08 Portakabin v Primakabin [2010] ECR I-6963, mn. 80. 90 CJ Case C-63/97 Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Ronald Karel Deenik [1999] ECR I-905, mn. 53. 88

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Complementary application of national law

Art. 14 CTMR

container for a full one or to have his own container refilled, is more readily in a position to be aware that there is no connection between the trade mark owner and the refiller.91

XIV. Other legitimate reasons A legitimate reason for the trade mark proprietor to oppose the further commercia- 68 lization of trade marked goods may also exist if a serious defect in the goods is discovered after the goods have been put on the market by the trade mark proprietor and further marketing may lead to damage, product liability, or safety risks or if used trade marked products are offered for sale that no longer satisfy the statutory requirements for this type of product, because the requirements have been modified in the interim.

Article 14 Complementary application of national law relating to infringement 1. The effects of Community trade marks shall be governed solely by the provisions of this Regulation. In other respects, infringement of a Community trade mark shall be governed by the national law relating to infringement of a national trade mark in accordance with the provisions of Title X. 2. This Regulation shall not prevent actions concerning a Community trade mark being brought under the law of Member States relating in particular to civil liability and unfair competition. 3. The rules of procedure to be applied shall be determined in accordance with the provisions of Title X. Bibliography: Institute of Trade Mark Attorneys and Chartered Institute of Patent Attorneys, The Community Trade Mark Handbook, 2015, 1-027- 1-033; James Mellor/David Llewelyn/Thomas MoodyStuart/David Keeling/Iona Berkeley (ed.), Kerly’s Law of Trade Marks and Trade Names, 2005, 8–10.

Art. 14 (1) makes it clear that the CTMR is a standalone legal provision. The trade 1 mark laws of the states of the European Union may be harmonised under the provisions of the European Trade Mark Directive and by way of references to the CJ, case law across the European Union is harmonised, but the CTMR is a standalone legal provision and is not directly affected by decisions or case law relating to the national laws of member states of the European Union. This principle has been enshrined in many decision, most notably that of Grupo Sada1. The CTMR co-exists with the national trade mark laws of the European Union, but it 2 is fundamentally an autonomous legal system distinct from the national laws of the European Union. As the Grupo Sada decision made clear, the fact that two trade mark may have co-existed in use and found not to be confusing by a Spanish national court did not mean that the Board of Appeal could not find the trade marks confusing similar. As made clear in Streamserve2 the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it and that it is 91

CJ Case C-46/10 Viking Gas A/S v Kosan Gas A/S [2011] ECR I-6161, mn. 40. GC Case T-31/03 Grupo Sada, v OHIM [2005] ECR II-1667, mn 84. 2 GC Case T-106/00 Streamserve v OHIM [2002] ECR II-723, mn 47. 1

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self-sufficient and applies independently of national systems. Indeed, in the Castillo3 decision, it was made clear that consideration of the BoA of OHIM had to be evaluated solely with regards the wording of the CTMR. Further, Art. 14 (1) is clear that the effect of a CTM is governed solely by the provisions of the CTMR and no other regulation or national law. This means that the protection afforded a CTM cannot extend beyond the rights granted under Art. 9 of the CTMR, most notably to prevent the use of a sign identical or similar to a CTM in the course of trade in relation to identical or similar goods or services or in the case of a reputable CTM dissimilar goods and services. However, Art. 14 (1) is qualified in that the procedure concerning the infringement of a CTM and other related actions will follow the procedures of the Member State in which the action is brought. Therefore, effectively if there is no mention within the CTMR, then the procedure of the member states in which the action is pursued will prevail. Title X governs the provisions of Artt. 94 through to 108 which governs ‘Jurisdiction and Procedure in Legal Actions relating to Community Trade Marks’ concerning issues such as jurisdiction over infringement and validity of CTMs, Community Trade Mark Courts, International Jurisdiction, Counter-claims and sanctions and in essence govern the procedure for the application of certain parts of the CTMR under national law. Art. 14 (2) makes it clear that actions concerning a CTM dealing with civil liability and unfair competition can be brought under national law. In effect, this provision enables a CTM to be used as a basis of an action solely on the basis of a provision under the law of an individual member state. The most notable example of this would be as a basis of an unfair competition claim under the laws of the Benelux states, unfair competition provisions not being provided for under the rights granted under Art. 9 of the CTMR.

SECTION 3 Use of Community trade marks Article 15 Use of Community trade marks 1. If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non use. The following shall also constitute use within the meaning of the first subparagraph: (a) use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered; (b) affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes. 2. Use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Rec. 10 3

GC Case T-85/02 Pedro Diaz v OHIM [2003] ECR II-4835, mn37.

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Use of Community trade marks

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Bibliography: Aaron/Nordemann, ‘The concepts of use of a Trademark under European Union and United States Trademark Law, 104 TMR 1186–1240 (2014); Bereskin/Alexander/Jacobson, ‘Bona fide intent to use in the United States and Canada’, 100 TMR, p. 709–728 (2010); Cornish/Llewelyn/Apin, Intellectual Property: Patents, Copyrights, Trademarks & Allied Rights (Sweet & Maxwell 2013); Eisenfu¨hr/ Schennen, Gemeinschaftsmarkenverordnung, Kommentar (Carl Heymanns 2014); Jehoram/Van Nispen/ Huydecoper, European Trademarks Law: Community Trademarks Law and Harmonized National Trademarks Law (Kluwer Law International 2010); Nordemann, Wettbewerbsrecht Markenrecht (Nomos 11th ed. 2012); Phillips/Simon, Trademark use (Oxford University Press 2005); Wall, ‘Reconstructing the Soul of Elvis: The Social Development and Legal Maintenance of Elvis Presley as Intellectual Property’, International Journal of the Sociology of Law 1996, p. 117–143.

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Background. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Art. 15 CTMR in its context to other provisions of the CTMR. . . . a) Art. 15 CTMR: Use of Community Trade Marks. . . . . . . . . . . . . . . . . b) Art. 42 CTMR: Examination of opposition . . . . . . . . . . . . . . . . . . . . . . . . c) Art. 51 CTMR: Grounds for revocation . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Art. 57 CTMR: Examination of the application . . . . . . . . . . . . . . . . . . . e) Art. 99 CTMR: Presumption of validity . . . . . . . . . . . . . . . . . . . . . . . . . . . . f) Art. 100 CTMR: Counterclaims . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Aim of the provisions relating to the use requirement . . . . . . . . . . . . . . 4. Checklist for the use requirement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Genuine use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. The relevant period of non-use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Territory of use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Extent of use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Use as a trade mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Use for the good or services it is registered for . . . . . . . . . . . . . . . . . . . . . . . 6. Formal requirements for submitting the proof of use . . . . . . . . . . . . . . . 7. Proper reasons for non-use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8. Bad faith . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Use in a different form . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Use solely for export . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Use with the consent of the proprietor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Relevance for selected proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Application proceedings/registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Renewal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Opposition and infringement proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Cancellation proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 1 3 4 5 6 7 8 9 10 13 14 14 16 21 28 34 39 44 45 46 54 55 58 58 59 60 63

I. General 1. Background Under the roof of the principle of undistorted competition and based upon the CJ 1 case law, Community trade mark protection has grown around the critical development phase of enterprises that still have to achieve economic growth. It is for this reason that the EU has a registration-based protection system. By contrast, the US relies on a usebased system where use is a prerequisite to registration.1 Enterprises seeking Community trade mark protection are not obliged to prove bona fide intent or actual use before filing an application and do not have to submit proof of actual use in commerce before 1 See generally Aaron/Nordemann, 104 TMR 1186 and 1190 (2014); Phillips/Simon, Trademark use, p. 313–321.

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getting the application registered. Non-use of a Community trade mark does not operate as an automatic ground for refusal or invalidity. Rather, if a Community trade mark has not been used in the Community within a period of five years, it is no longer enforceable if the user or owner of a junior mark raises the plea of non-use in an opposition or a court proceeding (Artt. 42 (2), (3), 99 (3) CTMR). Furthermore the registration may be cancelled only upon an application to the office or on the bases of a counterclaim in infringement proceedings (Art. 51 (1)(a) CTMR). It is fundamental in the EU that trade mark applicants be granted a certain period to improve and to establish their business without requiring success of their launch. The European jurisprudence has regularly highlighted that ‘the purpose of that provision is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks’.2 Unlike the US approach3, the EU concept of use reflects this understanding by demanding proof of use only ex post facto.4 2 Trade mark law confers an absolute monopoly upon the owner of a trade mark, allowing him alone to sell the goods or offer the services claimed in the registration under that trade mark. Notwithstanding, preserving a trade mark monopoly at national or at Community level does not confer that monopoly without some obligations on the owner: He has a grace period of five years to put the relevant goods or services under this mark on the market, thereafter, his trade mark will stay enforceable only if genuinely used for the goods or services registered.

2. Art. 15 CTMR in its context to other provisions of the CTMR 3

The requirement of genuine use is the subject of several provisions in the CTMR, i. e. Artt. 15, 42, 51, 57, 99 and 100 CTMR. These articles provide for the following:

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a) Art. 15 CTMR: Use of Community Trade Marks. Art. 15 CTMR is the basic provision providing for the use requirement; it sets forth the general rule, that a Community trade mark which has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered will be subject to sanctions which the CTMR provides for. Non-use may be justified only if there are proper reasons therefore. Art. 15 CTMR also provides that use in a different form which does not alter the distinctive character of the mark, and furthermore a use solely for export purposes qualifies as genuine use. Finally the provision clarifies that use with the consent of the proprietor shall be deemed as use by the proprietor.

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b) Art. 42 CTMR: Examination of opposition. According to Art. 42 (2) CTMR, the opponent has to furnish prove of genuine use in an opposition proceeding if the applicant has raised the plea on non-use and the opposing Community trade mark had been registered for more than five years on the date of publication of the younger Community trade mark application.

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c) Art. 51 CTMR: Grounds for revocation. If an application to the office or a counterclaim in an infringement proceeding for revocation of a Community trade mark based on non-use is filed, the proprietor of the Community trade mark has to prove genuine use according to Art. 51 (1)(a) CTMR for the five years preceding the application or the filing of the counterclaim. If, however, the Community trade mark 2

See in particular GC Case T-325/06, Boston Scientific Ltd. v OHIM, [CAPIO], para. 28. See for more details Aaron/Nordemann, 104 TMR 1186, 1190–1193 (2014). 4 See the discussion of the pros and cons of the concepts of use of a trade mark under European and United States trade mark law by Aaron/Nordemann, 104 TMR 1186, 1238–1240 (2014). 3

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had initially not been used, but put to genuine use during the interval between expiry of the five-year period and the filing of the application or the counterclaim, this will cure the vulnerability of the Community trade mark and it may not be revoked. However, use which has been started or resumed will not count where preparations for the commencement or resumptions occur only after the proprietor becomes aware that the application or counterclaim may be filed, and if the application or counterclaim was filed within three months from this notification. d) Art. 57 CTMR: Examination of the application. If the proprietor of an earlier 7 Community trade mark files an application to declare a younger Community trade mark invalid because it conflicts which his earlier Community trade mark, then, upon raising of the plea of non-use by the proprietor of the younger Community trade mark, the proprietor of the earlier Community trade mark has to furnish proof of use, relating to the period of five years preceding the date of the application, Art. 57 (2) CTMR, as long as the earlier Community trade mark has been registered for more than five years on that date. Additionally, if the earlier Community trade mark had already been registered for more than five years on the date on which the younger Community trade mark application initially had been published, then the proprietor of the earlier Community trade mark must also furnish proof of use, additionally, that the conditions laid down in Art. 42 (2) CTMR were satisfied at that date, namely that he had genuinely used the earlier Community trade mark when the younger one had been published for opposition purposes. e) Art. 99 CTMR: Presumption of validity. Art. 99 (3) CTMR clarifies that the 8 defendant in a Community trade mark infringement action is not urged to claim nonuse of the plaintiff’s Community trade mark by way of a counterclaim only; rather he can also raise the plea of non-use alleging that the plaintiff’s Community trade mark could be revoked for lack of use. f) Art. 100 CTMR: Counterclaims. If in a Community trade mark infringement 9 action the defendant has filed a counterclaim for revocation of the plaintiff’s Community trade mark based on non-use, the plaintiff has to prove genuine use according to Artt. 100 (5), 57 (2) CTMR.

3. Aim of the provisions relating to the use requirement The rules relating to the use requirement seek to balance the different overlapping 10 interests.5 Marks which are not put to genuine use will become free for competing traders as they simply clog up the register and constitute a pointless obstacle for later traders;6 furthermore, and more important in practice, nobody shall be entitled to enforce rights in a Community trade mark which has not been genuinely used at least five years after its registration, be it in opposition, invalidity or infringement proceedings. Furthermore, Recital 9 TMD and Recital 10 CTMR, which both concern the same legal notion of genuine use, make it clear that the primary rationale behind the European genuine use concept is to reduce the total number of trade marks which can only have a justified existence when they are actually used.7 5

See Aaron/Nordemann, 104 TMR 1186, 1195–1196 (2014). GC Case T-174/01, Jean M. Goulbourn v OHIM [Cocoon] [2003] ECR II – 789, mn. 38. 7 See in particular Recital 10 CTMR: ‘There is no justification for protecting Community trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used.’ 6

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In practice, though, these rules do not create a purging system to pull dead marks from the register. The Office does not inquire ex officio whether the earlier mark has been used. It is a fundamental principle of European Community trade mark law that trade marks can be registered without actual use, and are only liable to revocation if no genuine use is made after the lapse of 5 years following registration, but such examination happens only when someone files a request for revocation based on non-use according to Art. 51 (1)(a) CTMR.8 12 If not challenged, unused marks will typically remain in the register until the end of the registration period, and they may be renewed without difficulty. Thus, a non-used Community trade mark is only vulnerable to cancellation; if use is started or resumed the vulnerability for cancellation will be cured unless the proprietor has been threatened with an application for revocation or a respective counterclaim in an infringement proceeding, and the application or counterclaim was filed within three months from such a threat, Art. 51 (1)(a) CTMR. This has made the European concept of use the target of increasing criticism.9 The critics argue that bona fide ‘intent to use’ should be an essential precondition for filing a trade mark application under the CTM system. By failing to exercise authority to require applicants to prove whether they do or intend to use the mark in commerce, the CTMR system would fail to provide adequate measures to protect those enterprises that have already put a lot of time and money into launching a new product or service. The issue is closely connected with the topic of cluttering the registry, an issue judged very differently by representatives of the various stakeholders. It has often been argued that registration-based systems like the European CTM system inevitably lead to an ‘over claiming’ in the registers, since an applicant can register a mark and then allow it to languish indefinitely, or include goods and services in the application that will never see the light of the market.10 The EU is aware of the issue, although no changes in that respect are presently in the works.11 The EU Commission launched a study via the MPI to assess the functioning of the trade mark system in Europe, including the bona fide intent issue.12 The MPI Study addressed these issues, including the difficulties to find conclusive evidence on the cluttering problem, and came finally to the conclusion that there is currently no substantial need for changes concerning the use requirement on the Community level.13 In fact, the outcome was that the introduction of a general requirement of an intent to use of the mark at the time of filing would constitute a breach of fundamental tenets of the present system.14 Such a requirement is seen to be at odds with the efforts to create a single European 11

8 See the discussion of the pros and cons of the concept of use of a trade mark under European and United States trade mark law by Aaron/Nordemann, 104 TMR 1186, 1238–1240 (2014). 9 Bereskin/Alexander/Jacobson, The Trademarks Reporter 2010, 709, 710. 10 Cynthia C. Weber, The U.S. Versus European Trademarks Registration Systems: Could Either Learn from the Other?, available at: http://www.sughrue.com/files/Publication/7f3ad2e7-4832-49e7-a8b905c81a6693c1/Presentation/PublicationAttachment/02155b81-c202-4c2d-9d27-0be4253df914/ECTA2005 (1).pdf (last visited November 10, 2014). 11 See the discussion of the pros and cons of the concept of use of a trade mark under European and United States trade mark law by Aaron/Nordemann, 104 TMR 1186, 1238–1240 (2014). 12 Study on the Overall Functioning of the European Trade Mark System [MPI Study], p. 88, available at: http://ec.europa.eu/internal_market/indprop/docs/tm/20110308_allensbach-study_en.pdf (last visited November 10, 2014). 13 Study on the Overall Functioning of the European Trade Mark System [MPI Study], p. 34, available at: http://ec.europa.eu/internal_market/indprop/docs/tm/20110308_allensbach-study_en.pdf (last visited November 10, 2014). 14 Study on the Overall Functioning of the European Trade Mark System [MPI Study], p. 88, available at: http://ec.europa.eu/internal_market/indprop/docs/tm/20110308_allensbach-study_en.pdf (last visited November 10, 2014).

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market that is attractive to investment and that serves Member States with varying legal and commercial traditions15; according to the Max Planck Institute, the EU system must be appraised as an element forming part of a system which is more strongly geared towards fast and cost-efficient procedures than its American counterpart16. The EU does acknowledge intent in its prohibitions against ‘bad faith’ registrations (see below mn. 45), but the role of intent is a minor one in the overall system.17

4. Checklist for the use requirement If it comes to prove genuine use, the following points have to be checked: 1. use must have taken place within a five-year period preceding the relevant date(s) Õ mn. 14–15 2. use must have taken place within the Community Õ mn. 16–20 3. the Community trade mark must have been used in normal commercial activity Õ mn. 21–27 4. it must have been used as a trade mark Õ mn. 28–33 5. and for the goods or services it is registered for Õ mn. 34–38 6. proof of use must be furnished with a proper documentation Õ mn. 39–43 7. non-use may be justified by proper reasons Õ mn. 44 8. a repeat application may be seen as an act in bad faith Õ mn. 45

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II. Genuine use 1. The relevant period of non-use Art. 15 (1) CTMR provides, that the proprietor has to put the Community trade 14 mark to genuine use within a period of five years following registration, or, at a later time, that he must not have suspended such genuine use during an uninterrupted period of five years. Therefore, the owner of a Community trade mark generally has a five-year ‘grace-period’ to either put the Community trade mark to genuine use for the first time, or to start re-using it after ceasing such genuine use. In terms of the relevant time period for which genuine use has to be established, the 15 examination whether use of the trade mark is genuine must not be based on an absolute criterion;18 the necessary time period interacts with the level of quantitative limits of the trade mark use.19 This is because the use of the trade mark has to be based on the one 15 Study on the Overall Functioning of the European Trade Mark System [MPI Study], p. 53, available at: http://ec.europa.eu/internal_market/indprop/docs/tm/20110308_allensbach-study_en.pdf (last visited November 10, 2014). 16 Study of the Max Planck Institute, p. 53 et seq. 17 Study on the Overall Functioning of the European Trade Mark System [MPI Study], p. 88, available at: http://ec.europa.eu/internal_market/indprop/docs/tm/20110308_allensbach-study_en.pdf (last visited November 10, 2014). 18 Nordemann, Wettbewerbsrecht, Markenrecht, mn. 1299. 19 Case C-259/02 La Mer Technology Inc v Laboratoires Goemar SA [La Mer Technology] [2004] ECR I01159, mn. 22.

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hand on qualitative criteria such as the circumstances in the case and the characteristics of the goods or services in question in the economic sector concerned and for the purpose of preserving or creating market share for the goods or services protected by the mark.20 Consequently, even minimal use can therefore be sufficient.21 On the other hand, it is therefore not possible to determine a priori and in abstract a quantitative threshold. Yet, Art. 15 (1) CTMR is tied on two different time periods during which genuine use of the trade mark must be proven: First of all, the proprietor must have put the trade mark to genuine use within a period of five years following registration. Or at a later stage, if the trade mark is registered for more than 5 years, the trade mark proprietor may not have suspended such use during an uninterrupted period of five years. Thus, the obligation to use the mark is open-ended. Even if use commenced during the initial five years after registration, that does not mean that the mark can never be revoked. Both cases refer to the acts of use within the relevant five-year time period; Art. 15 (1) CTMR does not in any way require the trade mark holder to establish continuous use of the trade mark;22 rather, it is sufficient that a trade mark has been put to genuine use during a part of the five-year-period.23 The proprietor does not have to show that he has used the mark during a substantial part of the five years. The General Court has established that even a short period of only four and a half months of the five-year period can be sufficient;24 on the same line, the CJ has regarded a period of 11 and a half months to be sufficient as well.25 In addition, the overall assessment suggests that use-related activities before and after the time period could be used as indicators for assessing the genuine use.26

2. Territory of use 16

Art. 15 (1) CTMR provides that the Community trade mark has to be put to genuine use in the Community. The unitary character of the CTM corresponds to the concept of the Community as a unitary territory with a single market. This also applies to the territorial aspects of trade mark use in the EU. Beyond the overriding social advantages of contributing to the goal of a single internal market and the harmonization process within the EU, the CTM use concept provides substantial advantages when it comes to the question of where and to what extent the enterprise in question has to use the sign. As a matter of principle, the mark has to be used in the relevant geographical area where it is registered, as in case of CTMs the territory of the EU. The CTMR, however, does not specify the geographical scope of use necessary, it just states that the CTM has to be used ‘in the Community’, Artt. 15 (1), 42 (2) and 51 (1)(a) CTMR. But considering the European Union’s continued expansion – Croatia just joined the EU as the 28th Member State – it becomes clear that the existing framework of the CTM and the relevant rules concerning the use requirement must always be interpreted and adjusted in a manner that takes into account the large and significantly expanding internal market. Thus, while use in a remote corner of one Member State would not be necessarily sufficient to warrant protection throughout the EU, it would be too 20

CJ Case C-416/04 P, The Sunrider Corp. v OHIM [VITAFRUIT] [2006] ECR I-04237, mn. 26. CJ Case C-259/02, La Mer Technology Inc v Laboratoires Goemar SA [La Mer Technology] [2004] ECR I-01159, mn. 57–58. 22 CJ Case C-234/06 P, Il Ponte Finanziaria v OHIM [BAINBRIDGE] [2007] ECR I-07333, mn. 74. 23 GC Case T-203/02, The Sunrider Corp. v OHIM [VITAFRUIT] [2004] ECR II – 02811, mn. 45. 24 GC Case T-334/01, MFE Marienfelde GmbH v OHIM [HIPOVITON] [2004] ECR II – 02787, mn. 48–50. 25 GC Case T-203/02, The Sunrider Corp. v OHIM [VITAFRUIT] [2004] ECR II – 02811, mn. 46. 26 Eisenfu ¨ hr/Schennen/Eisenfu¨hr/Holderied, GMV, Art. 15 mn. 53. 21

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restrictive if the mark must be used in every single state of the currently existing 28 Member States in the Community. Otherwise, this would lead to discrimination between big and small businesses operating on the European market and would be contrary to the aim pursued by the CTMR to establish a barrier-free economic market for any kind of business. This interpretation has not remained uncontested. In fact, national intellectual property offices challenged that interpretation of the CTMR, holding that requiring only national use, rather than use in a substantial portion of the EU, will result in narrowed options for enterprises when assessing their trade mark needs, which could be particularly damaging to small and medium enterprises.27 Criticism is coming from beyond the European borders as well. It has been claimed that CTMR protection is weighted too much in favour of easy protection of trade marks throughout the whole of the EU by not relating the scope of protection to the geographical extent of genuine trade mark use.28 However, applying the principle of the unitary character of the CTM, boundaries of Member States should not play a part in assessing genuine use within the EU single market. OHIM continues to support the traditional approach. According to the Joint Statements by the Council and the Commission,29 use in one Member State constitutes genuine use in the Community. The Trade Mark Department of the Office has shown in common practice that it accepts the Statement of the Commission.30 The CJ had already decided that in granting the extended protection for trade marks 17 with a reputation per Artt. 8 (5) and 9 (1)(c) CTMR, reputation in a single EU Member State suffices and will be deemed a substantial part of the European Community even if reputation has been shown only for a rather small Member State such as Austria.31 One therefore could have expected the same approach also with respect to the genuine use of Community trade marks, namely that use in one – even small – Member State would suffice to keep the Community trade mark ‘alive’. The CJ has finally provided guidance with the long-awaited decision in the case Leno 18 Merken on what factors should be considered when determining the necessary territorial extent of use of Community trade marks.32 The Court is clearly referring to both the traditional and extensive approach by stating: ‘Whilst there is admittedly some justification for thinking that a Community trade mark should – because it enjoys more extensive territorial protection than a national trade mark – be used in a larger area than the territory of a single Member State in order for the use to be regarded as ‘genuine use’, it cannot be ruled out that, in certain circumstances, the market for the goods or services for which a Community trade mark has been registered is in fact restricted to the territory of a single Member State. In such a case, use of the Community trade mark on that territory might satisfy the conditions both for genuine use of a Community trade mark and for genuine use of a national trade mark.’33

27 See Benelux Office for Intellectual Property (BOIP), 15 January 2010, No. 2004448 (Leno MerkenBV/ Hagelkruis Beheer BV) (Neth.); Hungarian Patent Office (HPO), 11 February 2010, No. M0900377. 28 Bereskin/Alexander/Jacobson, The Trademarks Reporter 2010, 709, 710. 29 Joint Statements by the Council and the Commission of 20 October 1995, No B. 10, OJ OHIM 1996, 615. 30 OHIM Opposition Guidelines [2004], Part 6, Proof of use, p. 13. 31 CJ Case C-301/07, PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH [PAGO International] [2009] ECR I-09429, mn. 27. 32 CJ Case C-149/11, Leno Merken BV. v Hagelkruis Beheer BV [Leno Merken]. 33 CJ Case C-149/11, Leno Merken BV. v Hagelkruis Beheer BV [Leno Merken], mn. 50.

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Following this ruling it becomes clear that the territorial borders of the Member States should not be regarded decisive in the assessment.34 Rather, assessing whether genuine use is given requires an individual assessment aiming at the entire Common Market of the EU and focusing on the relevant market for the relevant product. All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark, and the territorial extent and the scale of the use, as well as its frequency and regularity. At the end, it is for the referring courts to assess on a case by case basis whether the conditions are met, taking account of all the relevant facts and circumstances, particularly the characteristics of the market concerned. However, although not yet decided in that respect by the CJ a Community trade mark that is used in all of a larger territory of the EU, e. g. a larger country like Germany, France, Italy, Spain, Poland, or the UK, should definitely fulfil the territorial requirements necessary to satisfy the use requirement. In view of the PAGO decision of the CJ, one must even consider that also the use in a smaller territory35 may be sufficient to establish genuine use in the Community. This would not be contradictory to the Leno Merken decision where the CJ has highlighted that in fact it is possible that use in one single Member State might satisfy the conditions both for genuine use of a Community trade mark and for genuine use of a national trade mark.36 However, and more clear, a cross-border use not limited to a single Member State but covering two or more Member States like Holland and Belgium, or Belgium and France, or Spain and Portugal, or Germany and Austria should definitely satisfy the conditions for genuine use of a Community trade mark because such use would go beyond boundaries of a single Member State and thus be more clearly in the Community. 20 Furthermore, due to the German-Swiss Agreement of 1892, use in Switzerland is equivalent to use in Germany (and vice versa); the requirements set out in § 26 (1) of the German Trade Mark Act could also be satisfied if the trade mark owner did not use the trade mark in Germany but rather in Switzerland.37 It therefore follows that German trade mark owners using the trade mark in Germany can also acquire trade mark rights in the entire European Community and Switzerland: use of the Community trade mark in Germany satisfies the territorial requirement for genuine use, and at the same time trade mark use in Germany qualifies as genuine use of a national Swiss trade mark. However, the CJ has recently ruled that the concept of genuine use has been harmonized so it is exhaustively and exclusively governed by EU law with the consequence that the territorial validity of a Community trade mark cannot be governed by national law allowing the German-Swiss Agreement to apply.38 Therefore, use of a trade mark in Switzerland will be for the benefit of establishing genuine use also of a corresponding national German trade mark, and vice versa, but not of a CTM.39 19

3. Extent of use 21

Art. 15 (1) CTMR does not contain any special conditions with respect to the extent of use; it only specifies, that the use the Community trade mark has to be put to must be 34 See analogously to the territorial aspects for trade marks having a reputation within the meaning of Article 5 TMD, CJ Case C-301/07, PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH [PAGO International] [2009] ECR I-09429, mn. 27. 35 CJ Case C-301/07PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH [PAGO International][2009] ECR I-09429, mn. 27. 36 CJ Case C-149/11 Leno Merken BV. v Hagelkruis Beheer BV [Leno Merken], mn. 50. 37 BGH Case I ZR 114/97, decision dated on 15 December 1999, GRUR 2000, 1035 – Playboy. 38 CJ Case C-445/12 P Rivella International AG v OHIM [Rivella/OHIM], mn. 47–49. 39 CJ Case C-445/12 P Rivella International AG v OHIM [Rivella/OHIM], mn. 47–49.

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genuine. Generally, use that qualifies as genuine pursuant to Art. 15 (1) CTMR is established when the trade mark is used in normal commercial activity; in other words, used in a manner that is objectively considered to be customary in the industry and economically justified.40 The use must also match the description of goods and services in the registration. Genuine use can be established for a trade mark if the scale and frequency of use of that mark were capable of demonstrating that it was present on the market in a manner that is effective, consistent over time and stable in terms of the configuration of the sign.41 Internet advertisements intended to generate sales42 qualifies as genuine use, as does use as a particular designation in pharmaceutical registration proceedings,43 but not token use that occurs within the company in question or within companies that have no relationship to the other commercial activities of the trade mark owner.44 According to CJ jurisprudence, a trade mark must be used substantially in accordance 22 with the primary function of the trade mark, in such a way as to guarantee the identity of the origin of the goods or services for which it is registered in order to create or preserve an outlet for those goods or services, which excludes merely token use of the trade mark for the sole purpose of preserving the rights conferred by the trade mark registration.45 It appears that there is no minimum requirement of quantity of use in the EU. The 23 law does not define a specific quantitative threshold; even minor use suffices as long as it is not simply fictitious use or use of a token character.46 Accordingly, the demands that the CJ places on the scope of genuine use are modest.47 The ground-breaking CJ decision VITAFRUIT validated as genuine use the use of a national Spanish trade mark within the Spanish national market during a period of one year within the relevant 5year period with a scope of approximately 300 crates each containing 12 bottles of concentrated fruit juice made from various fruits which corresponded to sales of only EUR 4,800.48 In the case La Mer Technology the proprietor of the mark LABORATOIRE DE LA 24 MER had a registration for the mark in connection with cosmetics and had made only a small volume of sales worth some hundreds of Pounds Sterling to a Scottish agent.49 The evidence failed to show whether any of the goods were actually exposed for sale or sold to members of the public. The question was whether the proprietor of the mark had made ‘minimum use’ of it. The CJ highlighted that the use of the trade mark has to be based on the circumstances in the case and the characteristics of the goods or services in question. The size of the relevant market matters. The question is whether the use is justified for the purpose of preserving or creating market share; consequently, even 40 CJ Case C-234/06 P Il Ponte Finanziaria v OHIM [BAINBRIDGE] [2007] ECR I-07333, mn. 72; CJ Case C-416/04 P The Sunrider Corp. v OHIM [VITAFRUIT] [2006] ECR I-04237, mn. 70; GCCase T-191/ 07 Anheuser-Busch v OHIM – Budeˇjovicky´ Budvar [Budweiser] [2009] ECR II – 00703, mn. 100 et seq. Anheuser-Busch v Budvar subsequent CJ Case C-214/09 P [2010] ECR I-07665, mn. 29. 41 CJ Case C-141/13 P, Reber Holding GmbH & Co KG v OHIM [Walzertraum], para. 29; CJ Case C259/02, La Mer Technology Inc v Laboratoires Goemar SA [La Mer Technology] para. 27; CJ Case C-40/01, Ansul BV v Ajax Brandbeveiliging BV [Ansul], para. 43. 42 CJ Case C-40/01 Ansul BV vAjax Brandbeveiliging BV [Ansul] [2003] ECR I-02439, mn. 37. 43 See, inter alia, the judgment of the BGHCase I ZR 136/95 decision dated on 26 November 1997, GRUR 1998, 570, 571, 572 et seq. – Sapen, making explicitly reference to the uniform interpretation of the genuine use concept under European Community trade mark law. 44 CJ Case C-416/04 P The Sunrider Corp. v OHIM [VITAFRUIT] [2006] ECR I-04237, mn. 70; CJ Case C-40/01 Ansul BV vAjax Brandbeveiliging BV [Ansul] [2003] ECR I-02439, mn. 36. 45 CJ Case C-416/04 P The Sunrider Corp. v OHIM [VITAFRUIT] [2006] ECR I-04237, mn. 70. 46 CJ Case C-416/04 P The Sunrider Corp. v OHIM [VITAFRUIT] [2006] ECR I-04237, mn. 72 and 75. 47 BPatG Case 33 W (pat) 205/01, decision of 15 January 2008, BeckRS 2008, 05316 – GALLUP II. 48 CJ Case C-416/04 P The Sunrider Corp. v OHIM [VITAFRUIT] [2006] ECR I-04237, mn. 19, 69–76. 49 CJ Case C-259/02 La Mer Technology Inc v Laboratoires Goemar SA [La Mer Technology] [2004] ECR I-01159, mn. 11.

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minimal use can suffice.50 No a priori abstract minimum threshold exists – each case will be decided on its merits.51 The CJ has confirmed these principles in other cases, notably in the VITAFRUIT judgment.52 Concerning the LABORATOIRE DE LA MER cosmetics, the use of the mark by a single client who imported the marketed products was found to indicate genuine use.53 25 Similarly, the German Federal Patent Court decided that the free distribution of two periodical magazine publications with a monthly circulation of up to 500 copies as well as the subsequent free distribution of more than 800 copies of 4 books to potential customers mainly for marketing purposes – a use which besides being related to the commercial operations of the trade mark owner, generated few sales with a volume of under EUR 300 during the relevant use period – sufficed to establish genuine use of a national German trade mark registered for magazines and printed works.54 26 The CJ VITAFRUIT decision overrode older decisions by German courts that placed more significant demands on the minimum quantitative use of a trade mark. For example, the supply of snacks to the Munich Olympic Stadium alone with weekly average sales of EUR 1,10055 would now have to be considered sufficient to qualify as genuine use of a national German trade mark. Correspondingly, the Federal Supreme Court has since accepted the sale of between 300–420 high-quality kitchen appliances at a per piece price of EUR 1,100 in the years between 2002 and 2004 as sufficient to establish genuine use.56 This rather generous approach has, however, been only recently inquestioned. The CJ in Walzertraum has confirmed the assessment of the GC that the sale of between 40 and 60 kilograms per year of hand-made pralines locally only in a cafe´ in the small city of Bad Reichenhall near the Austrian border did not constitute genuine use of a national German trade mark registered for ‘goods made of chocolate’57 This is surprisingly strict because neither the Community nor the national German trade mark systems provide for a ‘local’ trade mark; only EU- or nation-wide trade marks are available. Thus, trade mark protection for SME’s trading only locally would be inquestioned if this decision does not remain singular58. 27 According to the jurisprudence of the CJ, use which neither did nor will increase market share for the trade mark owner – for example, when the trade mark is used only for free goods that are distributed with other goods – is not accepted as genuine use. The trade mark WELLNESS, used to identify a beverage that was given away for free in connection with the purchase of clothing, was not accepted as genuine use of the trade mark registered for beverages because the beverages were advertising materials which were intended to increase sales of the clothes, and the trade mark owner did not gain market share for beverages and did not appear to attempt to do so.59 However, use of a 50 CJ Case C-259/02 La Mer Technology Inc v Laboratoires Goemar SA [La Mer Technology][2004] ECR I-01159, mn. 21. 51 CJ Case C-259/02 La Mer Technology Inc v Laboratoires Goemar SA [La Mer Technology][2004] ECR I-01159, mn. 25. 52 CJ Case C-416/04 P The Sunrider Corp. v OHIM [VITAFRUIT] [2006] ECR I-04237, mn. 70. 53 CJ Case C-259/02 La Mer Technology Inc v Laboratoires Goemar SA [La Mer Technology] [2004] ECR I-01159, mn. 24. 54 BPatG Case 33 W (pat) 205/01 decision of 15 January 2008, BeckRS 2008, 05316 – GALLUP II. 55 BGH CaseI ZR 293/00, decision dated on 28 August 2003, GRUR 2003, 1047, 1048 – Kellog’s/Kelly’s. 56 BGH Case I ZR 142/07, decision dated on 19 November 2009, GRUR 2010, 729, 730, mn. 15 – MIXI. 57 CJ Case C-141/13 P, Reber Holding GmbH & Co. KG v OHIM [Walzertraum], paras. 21 and 33–36. See also mn. 35. 58 The opponent had raised this argument, however, without success. See CJ Case C-141/13 P, Reber Holding GmbH & Co. KG v OHIM [Walzertraum], paras. 49–57. 59 CJ Case C-495/07 Silberquelle GmbH v Maselli Strickmode GmbH [Silberquelle] [2009] ECRI-00139, mn. 17.

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trade mark by a not-for-profit organization, while not an attempt to generate profit, still generates activity in the marketplace. Fundraising, for example, which in turn increases or maintains fundraising market share, has been found to qualify as genuine use.60

4. Use as a trade mark Use which is by virtue of Art. 15 CTMR prevents the CTM from being held invalid 28 and indicates therefore the nature of maintaining a right. In fact, genuine use requires the CTM to be used for the goods or services for which the trade mark is registered, and as a trade mark, not as a descriptive term. Any other use than to distinguish these particular goods or services cannot fulfil the genuine use requirement. In a market of competitors, if an infringer uses another’s registered mark as a trade mark to indicate the source of goods or services not only will the proprietor lose out but consumers will not be able to trust the marks they see and possibilities of product differentiation will disintegrate. Preventing such direct harm remains the prime object not only in defining infringement but also in maintaining the genuine use concept on the European Community level.61 It is therefore of crucial importance to differentiate between use that interferes with 29 rights and of the owner of the other mark use that seeks to maintain genuine trade mark rights. This problem is particularly posed by composite or combined trade marks containing purely descriptive parts. According to established case law of the CJ, such combined marks may gain distinctive character.62 This should, however, not apply to the descriptive meaning of such signs, as this may result in severe restriction of the freedom of expression of third parties. For instance, a chocolate producer is not entitled to invoke its composite ‘Kinder’ trade mark right in order to prohibit other parties from using the word ‘Kinder’ in an advertisement which is directly addressed to children. Since ‘Kinder’ stands in German for ‘kids’ and is therefore descriptive for chocolate for children, this descriptive word remains available for third parties to use the sign in relation to similar products.63 The question as to whether trade mark use was needed to find infringement has been 30 decided by the CJ in Arsenal Football plc v Reed.64 The case concerned the sale of unofficial merchandise of Arsenal FC, a British football club, by a trader having no contractual or commercial connection with the club which has earned considerable income through licensing its marks for use on clothing and other goods. Arsenal FC sued him for trade mark infringement and passing off. The High Court rejected the claim in the terms of passing of. It was mentioned by the High Court that the products sold by the defendant company were not noticed as original by his customers because of the disclaimer notices on his stall so that no-one could believe from the use of the marks on the goods that this was official merchandise.65 However, the Court submitted the question to the CJ as to whether such non-trade mark use amounted to infringement. The CJ was not particularly concerned with the issue of ‘trade mark use’ and rather considered the essential function of a trade mark, stating the following: 60 CJ Case C-442/07, Verein Radetzky-Orden v Bundesvereingigung Kameradschaft ‘Feldmarschall Radetzky’ [Verein Radetzky-Orden] [2008] ECR I-09223, mn. 16–24. 61 See Recital 10 TMB: ‘(…) the function is in particular to guarantee the trade mark as an indication of origin’. 62 CJ Case C-353/03 Socie ´te´ des produits Nestle´ SA v Mars UK Ltd. [Nestle´] [2005] ECR I-06135, mn. 49. 63 See the case of the German Supreme Court: BGH Case I ZR 6/05, decision dated on 20 September 2007, GRUR 2007, 1071 – Kinder II, mn. 57. 64 CJ Case C-206/01 Arsenal Football Club plc v Matthew Reed [Arsenal] [2002] ECR I-10273. 65 CJ Case C-206/01 Arsenal Football Club plc v Matthew Reed [Arsenal] [2002] ECR I-10273, mn. 16–19.

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‘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. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality.’66 31 The CJ further differentiated such use to descriptive use which could not form a trade mark infringement: ‘The proprietor may not prohibit the use of a sign identical to the trade mark for goods identical to those for which the mark is registered if that use cannot affect his own interests as proprietor of the mark, having regard to its functions. Thus certain uses for purely descriptive purposes are excluded from the scope of Art. 5 (1) of the Directive because they do not affect any of the interests which that provision aims to protect, and do not therefore fall within the concept of use within the meaning of that provision.’67 32 The CJ found on that basis that the defendant was using a sign in the course of trade which was identical with the trade mark registered by Arsenal FC and that the use of Arsenal’s trade marks was liable to affect the origin function of the mark, because the use of the sign ARSENAL FC on the scarfs was such as to create the impression that there is a material link in the course of trade between the goods concerned and the trade mark owner, so that trade mark infringement was found.68 33 Consequently, also when determining genuine use of a CTM, the CJ has later confirmed that the trade mark must have been used by its owner according to the essential functions of a trade mark, namely 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; mere descriptive uses cannot meet this function, and therefore also not fulfil the requirements to establish genuine use.69

5. Use for the goods or services it is registered for Art. 15 (1) CTMR provides that the owner has to put the Community trade mark to genuine use in connection with the goods or services in respect of which it is registered. This raises two questions. First, does use on similar goods count as a relevant use? And second, what is meant by use in relation to goods and services? These questions must be answered for registrants because where a specification is broader than the uses that have been demonstrated, the court can cancel the mark with respect to the goods for which it has not been used.70 35 With respect to the first question, use on any other goods or services, even if they are similar, is irrelevant71 by the plain language of the law. Rather, genuine use has to be proven exactly for the goods or services the registration covers. If the CTM has been used for special goods falling under a more general term, then it will usually have been genuinely used also for the more general term if the registration covers it.72 However, 34

66

CJ Case C-206/01 Arsenal Football Club plc v Matthew Reed [Arsenal] [2002] ECR I-10273, mn. 48. CJ Case C-206/01 Arsenal Football Club plc v Matthew Reed [Arsenal] [2002] ECR I-10273, mn. 54. 68 CJ Case C-206/01 Arsenal Football Club plc v Matthew Reed [Arsenal] [2002] ECR I-10273, mn. 56. 69 CJ Case C-416/04 P The Sunrider Corp. v OHIM [VITAFRUIT] [2006] ECR I-04237, mn. 70. 70 Art. 13 CTMR. 71 British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 288. 72 See inter alia GCCase T-126/03Recklitt Benckiser (Espana), SL v OHIM [ALADIN] [2005] ECR II – 02861, mn. 44–46. 67

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under certain circumstances use for special goods which fall under a broader term may be subject to examination whether use for them constitues genuine use of the broader term if the mark is registered only for the broader term without mentioning the special goods it was used for. In Walzertraum the CJ has confirmed a respective approach by the GC assessing the use of the opposition mark for ‘hand-made pralines’ only in view of the broader term ‘goods made of chocolate’ the mark was registered for73 which would make it more difficult to reach genuine use, and may urge the opponent to timely limit the specification to the more special term.74 The second question raises the issue, whether the use of the mark on promotional items 36 is a use in connection with the promotional items or only in connection to the goods which are being promoted, or neither. The OHIM position is illustrated by the decision in Henrique & Oliveira v Twelve Islands Shipping.75 It found that the use of the mark on promotional material for other goods can normally not be considered as sufficient evidence of use within the meaning of trade mark law for the type of promotional items on which they are or have been used. Giving away articles of clothing such as T-shirts and baseball caps at promotional events with the purpose of marketing a certain other product, such as a drink, cannot be considered as genuine use in connection with the beverages. The CJ decided a similar case in Silberquelle GmbH v. Maselli Strickmode GmbH. 37 Only the promotional items differ – in this case, drinks. Maselli Strickmode GmbH had a registered trade mark in Austria – WELLNESS for clothing and for non-alcoholic drinks. The company handed out drinks in bottles bearing the mark to consumers of its clothing, but did not use its mark for drinks sold separately. Silberquelle, which sells drinks, applied to cancel the mark concerning the drinks.76 As the clothing had been sold on the market, the remaining question was whether the distribution of the drinks could create genuine use for covering drinks. As in the decisions before,77 genuine use required a commercial exploitation of the mark on the goods in the registration, so that the CJ came to the conclusion that the mark WELLNESS for drinks had not been put to genuine use because affixing the mark to promotional items did not contribute to creating an outlet for those items or to distinguishing, in the interest of the consumer, those items from the goods of other undertakings.78 Are OHIM and the CJ too harsh? Advertising and market communication are two of 38 trade marks’ most important functions. The promotional items feature the same mark applied to the main product, acting as an identifier of the commercial origin of the primary goods or services.79 Furthermore, if the owner would be allowed to extend the scope of genuine use and claim trade mark protection for every good that may be in some way related to the primary one, then competitors and ultimately consumers would suffer unfairly. To ensure this balance between the different parties – the consumer and the trade mark owner – it is important to define genuine use always from the point of view of the average consumer rather than focusing on the proprietor’s purpose.80 73

CJ Case C-141/13 P, Reber Holding GmbH & Co. KG v OHIM [Walzertraum], paras. 40–42. See also Vo¨lker, 2014 EuZW 830, 831. 75 Decision No. 374/2001 (14 February 2001). 76 CJ Case C-495/07 Silberquelle GmbH v Maselli Strickmode GmbH [Silberquelle] [2009] ECR I-00139, mn. 7–10. 77 In particular CJ Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV [Ansul] [2003] ECR I-02439; CJ Case C-259/02 La Mer Technology Inc v Laboratoires Goemar SA [La Mer Technology] [2004] ECR I01159. 78 CJ Case C-495/07 Silberquelle GmbH v Maselli Strickmode GmbH [Silberquelle] [2009] ECR I-00139, mn. 21–22. 79 Cornish/Llewelyn, Intellectual Property, p. 623. 80 Tiffany & Co v Emballages Mixtes et Plastiques Sarl, R1018/2000-3 (3 December 2002). 74

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6. Formal requirements for submitting the proof of use Unlike in the US81, it is not necessary to file evidence of use with the OHIM after a certain period after the registration. Instead, the European trade mark use concept only requires proof when the junior applicant requests it82 so that the institution of proof of use can be seen as a defence plea of the junior applicant.83 Having passed the five-year period without the hassle of showing bona fide intention, at this stage the successful applicant of a CTM registration must yet prepare for attacks from any side possible, including the proprietor of an earlier mark or any other third person. Whereas the substantive law on genuine use strikes a low threshold for the CTM applicant, now as far as means of evidence are concerned, proof of genuine use needs to be as specific and detailed as possible. The exact requirements are laid down in Art. 22 CTMIR. 40 Rule 22 (1) CTMIR states that the Office gives the opponent two months to submit proof of use or show that there are proper reasons for non-use which correspond to the provision of Art. 15 (1) CTMR; with respect to proper reasons for non-use see mn. 44. 41 Evidence to prove genuine use shall, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Art. 76 (1)(f) CTMR. However, this means that the opponent is obliged not only to indicate, but also to prove each of these requirements. Since Rule 22 (2) CTMIR obliges the proprietor to indicate and to adduce evidence, both the indication and evidence required in order to fulfill the proof of evidence must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services. Consequently, a mere reference to the mark in invoices or declarations, without showing the exact representation of the mark as used in the market, is insufficient in this respect.84 The pieces of evidence submitted must have at least a degree of reliability; the Office considers materials produced by third parties in general as of a higher probative value than materials produced by the owner or his representative.85 Under German practice, the most popular means to demonstrate genuine use has been an affidavit provided and signed by either the trade mark owner or a person in his company being familiar with the use of this trade mark.86 However, OHIM and the General Court do not give such affidavits the same probative value as it is done by the German Patent and Trade marks Office and the German Federal Patent Court.87 Nevertheless, in general, they are to be considered as true written statements as referred to in Art. 78 (1)(f) CTMR with a full evidentiary value. Furthermore, questioning the probative value of an affidavit is not justified as long as there are no indications justifying any doubts.88 However, such affidavits of course should consist of indications concerning the place, time, extent and nature of use of the trade mark, the exact the goods and services in respect of which it is registered and for which they have been used, and further evidence in support of the statements in the affidavit such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and other documents illustrating the use. 39

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See Aaron/Nordemann, 104 TMR 1186, 1237–1328 (2014). Art. 43 (2) CTMR. 83 OHIM Opposition Guidelines [2004], Part 6, Proof of use, p. 37. 84 See BoA Case R 1076/2009-2 decision of 8 June 2010 [Euro Cert]. 85 OHIM Opposition Guidelines [2004], Part 6, Proof of use, p. 37. 86 BPatG Case 28 W (pat) 102/08, decision of 18 march 2009, BeckRS 2009, 18240. 87 See GC Case T-581/11 Dimian v OHIM [BABY BAMBOLINA], mn. 47 et seq. 88 BoA Case R-1153/2009-1, decision of 27 May 2010 – LYCRA/RO ¨ WA LEGRA. 82

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Although it is not enough to rely on probabilities or supposition, and what has to be 42 demonstrated is solid and objective evidence of effective and sufficient use of the mark in the relevant market, the General Court has made it clear that the formal requirements of genuine use do not go so far as to review the proprietor’s economic strategy; it is still genuine use that is required and not commercial success.89 As in the majority of cases involving trade mark use, the Courts approach is a holistic 43 one based on an overall assessment of all the relevant evidence and of the market for the relevant goods or services.90 However, the formal demands on the requirements of the proof of use should not be too high, especially in view of the rationale for the use requirement according to the CTMR. In its CENTROTHERM decision, the General Court outlined the objective of the use requirement in stressing that the rationale for the requirement that a mark must be the subject of genuine use in order to be protected under EU law is that OHIM’s register cannot be compared to a strategic and static depository granting an inactive proprietor a legal monopoly for an unlimited period; rather, in accordance with Recital 10 CTMR, that register must faithfully reflect what companies actually use on the market to distinguish their goods and services in economic life.91 Taking this into account, the objective of the use requirement – and at the same time of the requirement to prove the use – is to exclude an unjustified monopoly of a sign over a longer time where the proprietor does not make any use of the sign in relation to the goods it was registered for92. The proprietor of the trade marks is required to demonstrate and to furnish proof to an extent which enables the Office to exclude that the trade marks is held by an inactive proprietor constituting an unjustified legal monopoly in relation to the trade marks concerned, namely by indicating the place, the time, the extent and nature of use of the trade marks for the goods and services in respect of which it is registered, in order to demonstrate that the mark is not registered as an unused sign.

7. Proper reasons for non-use Art. 1 (1) CTMR mentions the concept of proper reasons for non-use which governs 44 cases in which the proprietor can demonstrate a reasonable justification for not having used his registered trade marks. It must be stated that Art. 15 (1) CTMR does not contain any indication of the nature and characteristics of the proper reasons of which it refers. This provision must be interpreted in the light of Art. 19 of the TRIPS Agreement according to which these grounds must include reasons which are related to obstacles to use arising independently of the will of the proprietor. In practice, the European courts have gone further than this stating that these are the only reasons which will be regarded as proper in order to reduce the total number of the trade marks registered and thus to avoid to confer a too broad scope of the proper reasons concept.93 The reasons justifying non-use of the mark must arise independently of the will of the proprietor of the trade mark and constitute an obstacle to the use of the sign, i.a. reasons referring to circumstances which hinder the normal functioning of the owner’s enterprise such as import restrictions or other government interventions.94 Bureaucratic 89 GC Case T-427/09 Centrotherm Clean Solutions v OHIM [CENTROTHERM] [2011] ECR II – 06207, mn. 26. 90 GC Case T-324/09 J & F Participaço ˜ es v OHIM [Friboi] [2011] ECR II – 00024, mn. 69. 91 GC Case T-427/09 Centrotherm Clean Solutions v OHIM [CENTROTHERM] [2011] ECR II – 06207, mn. 24. 92 See Aaron/Nordemann, 104 TMR 1186, 1187–1189 and 1193–1196 (2014). 93 CJ Case C-246/05Armin Ha ¨ upl v Lidl Stiftung & Co KG [Ha¨upl] [2007] ECR I-04673, mn. 51. 94 CJ Case C-246/05 Armin Ha ¨ upl v Lidl Stiftung & Co KG [Ha¨upl] [2007] ECR I-04673, mn. 54.

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procedures which merely impede the implementation of a business strategy do not fall within that category of exemption.95

8. Bad faith 45

The CTMR differs profoundly from US trade mark law in that it creates monopoly rights over certain signs without any requirement of use or even bona fide intention to use. Nevertheless, according to Art. 5 (1)(b), the CTM is liable to be declared invalid if the applicant was acting in bad faith when he filed the application. Yet, neither the CTMR nor the TMD contain a definition of bad faith. There is no generally accepted principle of bad faith applicable to mere non-use, but non-use coupled with an ulterior motive for registration may bring the principle to bear. Since bad faith can be understood as ‘dishonest intention’ according to OHIM’s understanding96, the case of the applicant who has applied for registration of a CTM without intending to use it and whose sole objective is to prevent a third party from entering the market can be seen as acting in bad faith.97 Even if an earlier trade mark has not been used in a long time, the filing of an identical application by a third party can be in bad faith if the old, non-used mark still enjoys reputation among the relevant trade circles, the third party knew about the existing (non-used) earlier rights and wanted to ‘free-ride’ on the reputation of the earlier mark98. Furthermore, a CTM application which simply repeats a previous CTM application to circumvent the use requirement 5 years after the registration of the previous CTM, or after a 5-year period of continuous non-use of such a CTM will usually be deemed as a bad faith application being subject to a declaration of invalidity according to Art. 51 (1)(b) CTMR.99 However, especially in cases where a slight modification or modernization of a logo has been filed, the fact that the differences between the signs at issue are so insignificant as not to be noticeable by the average consumer cannot alone establish that the younger CTM application has been made in bad faith; insofar, the interests of the applicant to even slightly modernize a logo must be taken into account, and furthermore that the evolution over time of a logo constitutes normal business practice.100 Thus, to establish bad faith in connection with a repeat application must take into account all relevant factors specific to the particular case at hand, especially a possible justification for the repeat application brought forward by the applicant.101

III. Use in a different form 46

Artt. 15 and 43 CTMR require that the trade mark must be used in the registered form. This means that the use of a trade mark must substantially reflect the appearance of the mark in the registration. In reality, of course, design and packaging of products constantly change to keep up with the taste and style that are currently in vogue. For this, trade mark owners must make significant investments of time and resources. The 95

CJ Case C-246/05 Armin Ha¨upl v Lidl Stiftung & Co KG [Ha¨upl] [2007] ECR I-04673, mn. 32. BoA CaseR 582/2003-4[EAST SIDE MARIO’S]. 97 CJ Case C-529/07 Chocoladefabriken Lindt & Spru ¨ ngli AG v Franz Hauswirth [Goldhase] [2009] ECR I-04893, mn. 44. 98 GC Case T-327/12 Simca Europe Ltd. v OHIM [SIMCA], para 45–63. 99 GC Case T-136/11pelicantravel.com s.r.o. v OHIM [PELIKAN], mn. 27; see also CJ Case C-529/07 Chocoladefabriken Lindt & Spru¨ngli AG v Franz Hauswirth [Goldhase] [2009] ECR I-04893, mn. 44. 100 GC Case T-136/11 pelicantravel.com s.r.o. v OHIM [PELIKAN], mn. 33–36. 101 GC Case T-136/11 pelicantravel.com s.r.o. v OHIM [PELIKAN], mn. 22–27. 96

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same applies when ‘upgrading’ the appearance of trade marks. EU trade mark law makes explicit reference to that102 and allows this practice to some extent. Variations from the form as registered are accepted if the mark as used differs from the mark as registered only in elements not affecting its distinctive character, Art. 15 (1)(a) CTMR.103 How far trade mark variations may be acceptable also depends on the strength of the distinctive character of the mark.104 Additional elements in the mark are more likely to affect the distinctive character of marks of limited distinctiveness.105 The CJ has clarified over the course of a number of decisions what constitutes use of 47 a trade mark in situations where the mark as used differs from the mark as registered, or where it is used only as part of a more complex trade mark. In Nestle´, the CJ allowed that the phrase ‘Have a break’ could have acquired distinctiveness for the purposes of being registrable under Art. 7 (3) CTMR, although it had been used only as a part of the slogan ‘Have a break…Have a Kit-Kat’106 The Court enumerated the usual factors for proving this, such as the market share held by the mark and how intensive, geographically widespread and longstanding the use of the mark had been.107 More recently, both the General Court and the Court of Justice have issued some 48 remarkable decisions relating to genuine use of a trade mark differing from its registered form. In Fruit of the Loom, the General Court dealt with the issue whether use of the composite trade mark FRUIT OF THE LOOM constituted genuine use of the trade mark FRUIT alone. Fruit of the Loom, Inc. was holding the trade mark FRUIT and had only used goods bearing the trade mark FRUIT OF THE LOOM, but not FRUIT. Although the constituent FRUIT was a dominant element of the composite mark, the further constituent LOOM was equally important. As a result, the Court held that the owner of the FRUIT OF THE LOOM mark was not capable of establishing genuine use of the word FRUIT.108 Similarly, the General Court considered in the E.TUCCI case, that use of EMIDIO TUCCI can only be seen as genuine use of EMIDIO TUCCI but not in relation to its second trade mark E.TUCCI.109 In PROTI, the CJ dealt with the question as to whether a trade mark owner is precluded from relying, in order to establish genuine use of his trade mark, on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark.110 This had been unclear since the Bainbridge decision of the CJ of 13 September 2007,111 where the CJ had decided that a trade mark owner could not prove genuine use of a trade mark which was a variation of the registered mark if the mark used was also registered itself.112 The CJ clarified in the PROTI decision that the trade mark owner indeed is not precluded from relying, in order to establish genuine use, on the fact that his trade mark is used in a form which differs from the form in which it was registered, if the distinctive character of the trade mark is 102

See Article 15 (2)(a) CTMR. GC Case T-514/10 Fruit of the Loom Inc. v OHIM [FRUIT], mn. 17. 104 OHIM Opposition Guidelines [2004], Part 6, Proof of use, p. 23. 105 See the discussion of the pros and cons of the concepts of use of a trade mark under European Union and United States trade mark law by Aaron/Nordemann, 104 TMR 1186, 1218 (2014). 106 CJ Case C-353/03 Socie ´te´ des produits Nestle´ SA v Mars UK Ltd. [Nestle´] [2005] ECR I-06135, mn. 31. 107 CJ Case C-353/03 Socie ´te´ des produits Nestle´ SA v Mars UK Ltd. [Nestle´] [2005] ECR I-06135, mn. 31. 108 GC Case T-514/10 Fruit of the Loom Inc. v OHIM [FRUIT], mn. 33. 109 GC Case T-39/10 El Corte Ingle ´s v OHIM [PUCCI], mn. 37. 110 CJ Case C-553/11 Bernhard Rintisch v Klaus Eder [PROTI], mn. 18. 111 CJ Case C-234/06 P Il Ponte Finanziaria v OHIM[BAINBRIDGE] [2007] ECR I-07333. 112 CJ Case C-234/06 P Il Ponte Finanziaria v OHIM[BAINBRIDGE] [2007] ECR I-07333, mn. 86. 103

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not altered, even though that different form is itself registered as a trade mark.113 Thereafter the German Federal Supreme Court decided that the trade mark PROTI (word) was not substantially used through the following signs:

and

,

because the further constituents 4-K and PLEX in these signs were distinctive and there were no hints that the relevant public could see the constituent PROTI in these signs as a separate mark.114 However, with respect to the following two forms of use which were also registered separately as trade marks, the German Federal Supreme Court held that they could count as genuine use of the mark PROTI:

and

,

because the further constituents PLUS and POWER were only descriptive so that the relevant trade circles would regard PROTI as the main part of the mark indicating the commercial origin.115 49 The latest case from the CJ on genuine use, Specsavers,116 clarified how the use of a composite trade mark can still include genuine use of a separately registered mark that forms only one of the components of that composite mark. The CJ ruled that the use of a composite word and device mark, in which the word element is superimposed over the device element, as follows:

113

CJ Case C-553/11 Bernhard Rintisch v Klaus Eder [PROTI], mn. 30. BGH Case I ZR 84/09, decision dated on 10 January 2013, GRUR 2013, 840, 842, mn. 19–25 – PROTI II. 115 BGH Case I ZR 84/09, decision dated on 10 January 2013, GRUR 2013, 840, 842, paras. 26–38 – PROTI II. 116 CJ Case C-252/12 Specsavers International Healthcare Ltd & others v Asda Stores Ltd [Specsavers]. 114

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can constitute genuine use of a CTM registration for the device element alone, as follows:

provided that the differences between the form in which the trade mark is used and the form in which the device element is registered do not change the distinctive character of the CTM registration for the device element.117 This judgment is in line with the previous decision adopted exactly three months earlier in LEVIS,118 where the CJ has clarified that the use of a registered mark as part of a composite mark or together with another mark must be considered as use of the registered mark when the relevant public perceives this mark as a distinct and independent mark.119 Use of such a mark as registered must be affirmed even if the composite mark, or the combination of the two marks together, is also separately registered as in the case of Levi Strauss which has used its registered Community trade mark only in conjunction with it’s other registered national mark. The Community trade mark contains a disclaimer for form and colour of the pocket, 50 and is represented as follows:

The Community trade mark had been used in the following form, which is separately registered as a German national mark. This mark differs from the Community trade mark in that the flag bears the designation LEVI’S:

Again, the evaluation of whether or not the differences alter the distinctive character 51 will depend on a case by case analysis, however, irrespective of the fact that the variation is also registered as a trade mark. Moreover, also the case law of OHIM provides endless examples where the modified form did or did not affect the appreciation of the 117 CJ Case C-252/12 Specsavers International Healthcare Ltd & others v Asda Stores Ltd [Specsavers], paras. 24–26. 118 CJ Case C-12/12 Colloseum Holding AG v Levi Strauss & Co. [LEVIS]. 119 CJ Case C-12/12 Colloseum Holding AG v Levi Strauss & Co. [LEVIS], mn. 35.

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registered mark. Whereas the Office considered the change of the overall appearance of a figurative mark as an affection of the distinctive character120, changes of figurative elements, like in the Tiffany case,121 have been considered by the Office as such alterations that do not affect the distinctive character of marks that also contain word elements. 52 It has long been common practice that a figurative trade mark registered in black and white may be enforced against a third party using the trade mark in any colour or set of colours. According to established jurisprudence of the GC, a Community trade mark registered as a black and white logo does not mean that the Community trade mark in respect of which registration is sought designates the colours black and white; rather it does not designate any specific colour.122 However, it follows from Specsavers that the use of such a trade mark registered in black and white in a particular colour or combination of colours will be taken into account when assessing infringement, because the perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion.123 Consequently, the colour or combination of colours in which the trade mark is used affects how the average consumer of the goods at issue perceives the trade mark, and it is, therefore, liable to increase the likelihood of confusion or association between the earlier trade mark and the sign alleged to infringe it.124 Furthermore, OHIM has clarified that a trade mark registered in black and white will be accepted as being genuinely used (in colour), as long as the word and figurative elements coincide and are the main distinctive elements, the contrast of shades is respected, the colour or combination of colours does not have distinctive character in itself, and colour is not one of the main contributors to the overall distinctiveness of the mark125. 53 In any event, just as in cases of what constitutes minimum use, whether the used version is sufficiently in line with the inherent concept of the registered mark must be evaluated on a case by case basis, since the distinctive character may vary from one trade mark to another. The CTM case law does not allow us to derive any general rules here either.

IV. Use solely for export 54

The European legislator has taken note of branding mechanisms which only consist of export activities constituting a market by itself, the export market, and accorded them a high degree of significance by providing a separate provision. It is the provision of Art. 15 (1)(b) CTMR that renders the possibility to use a trade mark solely for export activities. Thus, a trade mark is deemed to be used in the European Community when it is affixed for goods or their packaging within the Community solely for export outside the Community even though when the trade mark proprietor is putting it on goods

120

OHIM, Opposition Guidelines [2004], Part 6, Proof of use, p. 26. Tiffany & Co v Emballages Mixtes et Plastiques Sarl, R1018/2000-3 (3 December 2002). 122 GC Case T-3781l1, Langguth Erben v OHIM [MEDINET], para. 23. 123 CJ Case C-252/12 Specsavers International Healthcare Ltd & others v Asda Stores Ltd [SPECSAVERS], para. 35. 124 CJ Case C-252/12 Specsavers International Healthcare Ltd & others v Asda Stores Ltd [SPECSAVERS], para. 37. 125 Common Communication of the European Trade Mark and Design Network on the Common Practice of the Scope of Protection of Black and White (‘B&W’) Marks of 15 April 2014, para. 5.4. 121

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which are immediately thereafter going to be sent outside the European Union and will never see the European Union market. The rationale behind this provision has to be seen in relation to the main function performed by a trade mark which is to guarantee the identity of the 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 service from others.126 In order for use of a trade mark to qualify as such, and therefore to be considered genuine, use must also, given what a trade mark is and the functions it performs, be public and external, directed at the outside world.127 The mark must by the use made of it be present in the market for the goods or services that it represents.128 The point beyond which commercial use of the trade mark may be considered appropriate and genuine is directly related to the type of goods or category of service. Accordingly, there will be genuine use not only where the goods are being sold or the services supplied, but also where the trade mark is being used for export only. The reason for that is the need to protect undertakings whose main activity is export and who would otherwise run the risk of forfeiting their marks for non-use because they do not put them to use in the internal market.129

V. Use with the consent of the proprietor A key feature of trade marks, playing a determinative role in their extensive use and 55 corresponding modern economic importance, is trade mark licensing. The relatively recent development of widespread interest in television personalities and similar characters has created a demand for products connected with these characters and has thereby provided a fruitful market for entrepreneurs in a wide variety of fields.130 Under a trade mark licensing arrangement, a party contracts with a trade mark 56 owner for the use of the trade mark, often in consideration for royalty payments which is advantageous to both parties.131 Under the European Community trade mark regime as in the case of many jurisdictions, use of the trade mark by an authorized licensee inures to the benefit of the licensor. This is because Art. 15 (2) CTMR expressly provides that genuine use of a trade mark is the use made of that by the proprietor or with his consent, and use with consent is use based upon an agreement, in most cases a license agreement. This means that the licensee’s use of a trade mark is considered to be no different than use of the trade mark owner. Furthermore, this is also of benefit to the licensee because the licensee may join infringement proceedings that the licensor may initiate against infringers.132 Most importantly, such a license agreement allows a trade mark owner to fully exploit 57 its intellectual property in markets it may not have been able to enter on its own. 126 See inter alia CJ Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer [Canon] [1998] ECR I-05507, mn. 28; CJ Case C-517/99 Merz & Krell GmbH & Co. [2001] ECR I-06959, mn. 22. 127 GC Case T-174/01 Goulbourn v OHIM – Redcats [Silk Cocoon] [2003] ECR II – 00789, mn. 99. 128 For a more detailed approach to the relevant market see Jehoram/van Nispen/Huydecoper, European Trademarks Law, p. 419. 129 CJ Case C-40/01 Ansul BV vAjax Brandbeveiliging BV [Ansul] [2003] ECR I-02439, mn. 43. 130 D. Wall, in International Journal of the Sociology of Law, 117 [1996], who refers to the Elvis Presley trade marks. 131 The memorandum on the Community trade mark defines a license as a contractual agreement giving a third party the right to use the trade mark, see European Commission, Memorandum on the Creation of an EEC trade mark adopted by the Commission on 6 July 1976 SEC (76) 2462 final, no. 149. 132 Art. 41 CTMR expands the circle of possible opponents to licensees and other authorized persons, depending on the nature of the earlier right invoked.

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Considering this enormous economic importance of the practical approach of many industries and the economic advantages for the trade mark owner, the EU concept of genuine use does not provide as in the case of other jurisdictions133 that the license agreement has to be recorded with OHIM before the licensee’s use can inure to the benefit of the licensor.134 The only requirement is that the owner must have given his consent prior to the use of the mark by the third party. The CJ has clarified in this context that even without specific evidence of consent such consent can be also derived from the circumstances in the particular case.135 For clarification purposes and to make a license relationship public, the license may be entered into the Register for Community trade marks and published, Art. 22 (5) CTMR; however, this is not a condition for the validity of a license.

VI. Relevance for selected proceedings 1. Application proceedings/registration 58

The European spirit of creating a barrier-free Union also hovers over the realization of trade mark related rights and its application procedure. An easily manageable CTM application system where one single application for protection has Community-wide effect throughout all currently existing 28 Member States is a manifestation of this spirit. The application and registration procedure for Community trade marks is governed by Artt. 25 until 49 CTMR. Applications are filed at the OHIM,136 at the central industrial property office of an EU Member State or at the Benelux Office for Intellectual Property.137 Community trade mark law does not know a quality control requirement; however, if the license agreement contains quality conditions, then the trade mark owner may sue his licensee even for trade mark infringement (and not only for breach of the license agreement) if the goods or services do not meet the quality requirements set forth in the agreement, Art. 22 (2)(e) CTMR. OHIM will examine whether the application meets the formal requirements (Art. 26 CTMR) and whether there are any absolute bars to protection (Art. 37 CTMR). However, these rules do not require the Office to assess whether the trade mark has been put to genuine use, and no statements in this respect have to be made by the applicant.138

2. Renewal 59

A CTM registration is valid for 10 years from the date of filing of the application and can be renewed indefinitely for further 10 year periods thereafter.139 As in the application proceedings, actual use is not required to renew a registration, and no statements in this respect have to be made when renewing a CTM.140 Although the renewal process 133 Registered user systems can be found in China, Taiwan, Korea, Thailand, Indonesia, Brazil, Ecuador, Paraguay and Colombia, see: INTA Committee Position Paper on Elimination of Mandatory trade mark License Recording Requirements [1995]. 134 Art. 22 (4) CTMR. 135 CJ Case C-416/04 P The Sunrider Corp. v OHIM [VITAFRUIT] [2006] ECR I-04237, mn. 70. 136 Art. 25 (1)(a) CTMR. 137 Art. 25 (1)(b) CTMR. 138 See, for the situation under US trademark law in contrast hereto, Aaron/Nordemann 104 TMR 1186, 1202–1205 (2014). 139 Artt. 46, 47 CTMR. 140 See, for the situation under US trademark law in contrast hereto, Aaron/Nordemann 104 TMR 1186, 1205–1206 (2014).

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can be a costly endeavour, the CTMR also provides the possibility of claiming the seniority of a national trade mark.141 The effect of seniority is that once the Community trade mark is registered, it is possible to allow the earlier national trade mark to lapse due to non-payment of the renewal fees. In fact, the European Community trade mark regime allows a strategy of folding multiple national trade mark registrations into Community trade marks which can reduce renewal fees and administrative time processing renewals while at the same time preserving established rights.

3. Opposition and infringement proceedings Trade mark rights cannot be enforced or defended if the trade mark has not been put 60 to genuine use within the five-year period preceding the assertion of the claims (Art. 42 (2) CTMR): No one should be able to enforce trade mark rights for a mark that could be cancelled as a result of non-use during the preceding five years.142 This limitation as a result of non-use is not administered by OHIM but must be positively pleaded both in legal proceedings and in opposition proceedings (the so-called ‘plea of non-use’143).144 During opposition proceedings, genuine use must be proven for the period of five 61 years preceding the date of publication of the disputed Community trade mark application, provided that the opposing trade mark is registered for more than 5 years on that date, and provided that the applicant has raised the plea of non-use.145 Should the requirement of use of the opposing trade mark only commence after the publication of the Community trade mark application, it will not be possible to employ the defence of non-use even if the opposing party clearly has not used the opposing trade mark; in this situation the trade mark applicant can only file a separate request for cancellation of the opposing trade mark due to non-use, parallel to the opposition proceedings, for example, per Art. 51 (1)(a) CTMR (or the corresponding national laws in the case of national opposing trade marks), whereupon OHIM will suspend the opposition proceedings (Rule 20 (7)(c), Implementing Regulation CTMR). Once the plea of non-use has been raised, the office will grant a deadline to the opponent to furnish proof of use, Art. 42 (1) and (2) CTMR. If the opponent should not furnish any proof of use within this deadline, then the opposition will be rejected, Art. 42 (2) CTMR. If, however, the proof of use furnished relates only to part of the goods or services the opposition mark is registered for, then the office will take only those goods and services into account for which genuine use has been established, Art. 42 (2), (3) CTMR, without, however removing the non-used goods or services from the opposition mark. In principle, these deadlines are rather strict: On the one hand, in opposition proceedings the office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, Art. 76 (1) CTMR. On the other hand, the office may disregard facts or evidence which are not submitted in due time by the parties concerned, Art. 76 (2) CTMR. Consequently, if the opponent does not file any proof of use at all within the deadline set by OHIM, then according to Rule 22 (2) of the Implementing Regulation CTMR, the opposition will be rejected without mercy.146 However, OHIM has discretion if the opponent has submitted evidence to prove 141

Artt. 34, 35 CTMR. Recital 10 CTMR; Recital 12 Trademarks Directive 2008/95/EC. 143 Artt. 15 (1), 42 (2), 99 (3) CTMR. 144 See, for the situation under US trademark law, Aaron/Nordemann, 104 TMR 1186, 1206–1207 (2014). 145 Art. 42 (2) CTMR. 146 See, in confirmation of this Rule CJ Case C-621/11 P New Yorker SHK Jeans GmbH & Co. KG v OHIM [FISHBONE], mn. 28. 142

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genuine use of the opposition mark within the first time limit set by OHIM and files additional evidence to clarify or support genuine use at a later stage during the proceedings, because Art. 76 (2) CTMR only provides that OHIM may disregard facts or evidence which are not submitted in due time by the parties concerned and is therefore in no way prohibited from taking into account facts and evidence submitted later than within the first deadline granted.147 Nevertheless OHIM and its Boards of Appeal have to take into account under which circumstances and why the additional evidence has been filed late and may therefore nevertheless decide that such circumstances preclude the additional evidence to be taken into account.148 Although it is thereafter possible that OHIM takes evidence to prove genuine use which is filed at a later stage than within the first deadline set into account, it is nevertheless strongly recommended to file complete and clear evidence in support of genuine use within the first deadline set by OHIM because the taking into account of additional evidence filed later remains at the discretion of OHIM according to Art. 76 (2) CTMR. OHIM may disregard the plea of non-use which has been raised by the applicant only if it rejects the opposition anyway for other reasons; if the plea of non-use was raised and is disregarded by OHIM, this forms an error in law.149 62 Use that legally qualifies as genuine use must be proven during infringement proceedings before the regular courts either for the 5-year period preceding the filing of the action, if the disputed trade mark at that point in time was governed by the requirement of use (Art. 51 (1)(a) CTMR) or for the period of five years preceding the end of the oral hearing, if the 5-year period of non-use only ends after the filing of the action (§ 25 (2) of the German Trade mark Act). The CTMR does not distinguish between those deadlines in legal actions, and so per Art. 99 (3) CTMR the defence of non-use can be filed at any time during which the Community Trade mark is governed by the requirement of use and thus could be revoked due to non-use.

4. Cancellation proceedings 63

Cancellation proceedings based on non-use are never initiated by the Office itself.150 The initiative lies with the applicant for cancellation. The Community Trade Mark Regulation provides for two types of procedure that come under the generic term of cancellation proceedings.151 These include the possibility to revoke the rights of the proprietor of a Community trade mark on the one hand, and on the other hand, a Community trade mark can be declared invalid. The difference is that revocation applies as from the date of the request,152 whereas a declaration of invalidity removes the registration from the Register with retroactive effect.153 One of the grounds for revocation relates to non-use. According to Art. 51 (1)(a) CTMR the mark may be revoked on the ground that the trade mark has not been put to genuine use, within a continuous period of 5 years, in the Community in connection with the goods or services in respect of which it is registered, and when there are no proper reasons for non-use. The application for revocation can be filed with OHIM or brought forward as a counter claim in an infringement proceeding, Art. 51 (1) CTMR. If an application is 147

See CJ Case C-621/11 P New Yorker SHK Jeans GmbH & Co. KG v OHIM [FISHBONE], mn. 30. See CJ Case C-621/11 P New Yorker SHK Jeans GmbH & Co. KG v OHIM [FISHBONE], mn. 34. 149 GC Case T-445/12, Koscher + Wu ¨ rtz GmbH v OHIM [K W SURGICAL INSTRUMENTS], para. 34. 150 See, for the situation under US trademark law, Aaron/Nordemann 104 TMR 1186, 1207–1208 (2014). 151 See Artt. 51–57 CTMR. 152 Art. 55 (1) CTMR. 153 Art. 55 (2) CTMR. 148

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filed to OHIM, any natural or legal person or any group or body set up for the purpose of representing the interest of manufactures, producers, suppliers of services, traders or consumers which under the terms of the law governing it has the capacity in its own name to sue and be sued, may seek for the revocation, Art. 56 (1)(a) CTMR. This person, however, must not show any own interest in the trade mark attacked since Art. 56 (1)(a) CTMR provides an unambiguous personal scope of application for the cancellation proceedings and authorizes any person to lodge an application for a declaration of invalidity.154 Consequently, invalidity proceedings based on non-use of the contested CTM is an actio popularis not requiring there to be an actual or potential economic or legal interest in cancellation of the contested mark; in the end, the declaration of invalidity of Community trade marks which have never been put to genuine use or which have not been genuinely used for a period of 5 years or longer is a common interest.155 If an application for revocation of a CTM based on non-use has been filed, then OHIM together with serving the cancelation request to the owner of the contested CTM will grant a deadline to furnish proof of use. If no proof of use is filed at all, then OHIM will revoke the contested CTM. If proof of use has been filed within the deadline set by OHIM, then OHIM will grant the parties further deadlines to respond and reply, Art. 76 (1) CTMR. Although the owner of the contested CTM in principle has to file a full proof of use within the first deadline granted, OHIM may take into account also additional evidence which has been filed at a later stage of the proceedings, Art. 76 (2) CTMR.156 Insofar, OHIM treats the proof of use and the proceedings in the same way as in opposition proceedings, see above mn. 39 et seq. If the owner of the contested CTM is able to prove genuine use only for a part of the goods and services it is registered for, then the contested CTM will be revoked only for those goods or services for which genuine use has not been established, Art. 51 (3) CTMR. It has to be noted furthermore that the owner of a CTM which has not been used during a consecutive 5-year period may cure its revocability by starting to use or resuming use of the trade mark, Art. 51 (1)(a)(2) CTMR. The CTM will then also keep its initial priority. However, if use is started or resumed within a period of three months preceding the filing of the application for revocation or the counterclaim in infringement proceedings this will be disregarded if preparations for the start of the use or the resumption occurs only after the owner of the CTM becomes aware that the application for revocation or the counterclaim may be filed, Art. 51 (1)(a)(3) CTMR. Consequently, if a CTM has not been used, the potential applicant for revocation or filer of a counterclaim has to observe this 3-months ‘deadline’ in order to prevent the owner of the CTM to cure the non-use before the filing of the application for revocation or the counterclaim.

154 The CJ has addressed this issue in his judgment of 25 February 2010 in Case C-408/08 P Lanco ˆ me v OHIM [Lancoˆme] [2010] ECR I-01347, mn. 39. 155 See, with respect to the ‘sister’ provision of an application for a declaration of invalidity of a CTM which has been registered contrary to Art. 7 CTMR (absolute grounds for refusal), where the right to file the application is also governed by Art. 56 (1)(a) CTMR, CJ Case C-408/08 P Lancoˆme v OHIM [Lancoˆme] [2010] ECR I-01347, mn. 41–43. 156 See CJ Case C-621/11 P New Yorker SHK Jeans GmbH & Co. KG v OHIM [FISHBONE], mn. 30 and 34.

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SECTION 4 Community trade marks as objects of property Article 16 Dealing with Community trade marks as national trade marks 1. Unless Articles 17 to 24 provide otherwise, a Community trade mark as an object of property shall be dealt with in its entirety, and for the whole area of the Community, as a national trade mark registered in the Member State in which, according to the Register of Community trade marks: (a) the proprietor has his seat or his domicile on the relevant date; (b) where point (a) does not apply, the proprietor has an establishment on the relevant date. 2. In cases which are not provided for by paragraph 1, the Member State referred to in that paragraph shall be the Member State in which the seat of the Office is situated. 3. If two or more persons are mentioned in the Register of Community trade marks as joint proprietors, paragraph 1 shall apply to the joint proprietor first mentioned; failing this, it shall apply to the subsequent joint proprietors in the order in which they are mentioned. Where paragraph 1 does not apply to any of the joint proprietors, paragraph 2 shall apply. Rec. 3, 4 Bibliography: Hans-Ju¨rgen Ahrens/Mary-Rose McGuire, Model Law on Intellectual Property, AIPPI, ‘The Impact of Co-Ownership of Intellectual Property Rights on their Exploitation’, Q 194, Yearbook 2007/II, 445; AIPPI, ‘The Impact of Co-Ownership of Intellectual Property Rights on their Exploitation’, Q 194 b, Yearbook 2009/II; Torsten Bettinger/Dorothee Thum, ‘Territorial Trade marks Rights in the Global Village – International Jurisdiction, Choice of Law and Substantive Law for Trademarks Disputes on the Internet’, IIC 2000, 162; Lorin Brennan/Jeff Dodd, ‘A concept proposal for a model intellectual property commercial law’, in: De Werra (Ed.), Research Handbook on Intellectual Property Licensing (2013), 257; Jan Busche/Peter-Tobias Stoll/Andreas Wiebe (eds.), TRIPs: Internationales und europa¨isches Recht des geistigen Eigentums, 2nd edition, James Fawcett/Janeen Carruthers, Geoffrey Chevalier Cheshire/Peter North: Private International Law, 14th edition, James Fawcett/Paul Torremanns, Intellectual Property and Private International Law, 2nd edition, Richard Fentiman, ‘Choice of Law in Intellectual Property’, in Drexl/Kur (eds.). International Property and Private International Law – Heading for the Future, 129; Daniel Gervais, The TRIPS Agreement: Drafting History and Analysis, 3rd edition, London 2012; Michael Gru¨nberger, ‘Das Urheberrechtsstatut nach der Rom-II-VO’, ZvglRWiss 2009, 134; W. A. Hoyng, ‘Transfer and Licence’, in: Franzosi (ed.), European Community Trade Mark, 273; Annette Kur, ‘Intellectual Property and the Reform of Private International Law – Sparks from a Difficult Relationship’, IPRax 2007, 284; Toshiyuki Kono/Paulius Jurcys, ‘General Report’, in: Intellectual Property and Private International Law: Comparative Perspectives, Matthias Leistner/Estelle Derclaye, Intellectual property overlaps: A European perspective, Hector MacQueen/Charlotte Waelde, Contemporary Intellectual Property Law and Policy, 2nd edition, Oxford 2008; Peter Mankowski, ‘Contracts Relating to Intellectual or Industrial Property Rights under the Rome I Regulation’, in: Leible/Ohly (eds.), Intellectual Property and Private International Law, 42; Dieter Martiny, ‘Internationales Vertragsrecht im Schatten des Europa¨ischen Gemeinschaftsrechts’, ZEuP 2001, 317; Mary-Rose McGuire, ‘Die Funktion des Registers fu¨r die ¨ bertragung von Gemeinschaftsmarken’, GRUR 2008, 1; Mary-Rose McGuire, ‘Kurechtsgescha¨ftliche U mulation und Doppelschutz’, GRUR 2011, 767; Mary-Rose McGuire, ‘Intellectual Property Rights: Property or Right?’, in: Faber/Lurger (eds.), Rules for the Transfer of Movables – A Candidate for European Harmonization or National Reforms?, 2007; Axel Metzger, ‘Transfer of Rights, Licence Agreements, and Conflicts of Laws: Remarks on the Rome Convention of 1980 an the Current ALI Draft’, in: Basedow/Drexl/Kur/Metzger (eds.) Intellectual Property in the Conflict of Laws, 67; Axel Metzger, ‘Community Rights & Conflicts of Laws: Community Trademarks, Community Design,

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Community Patent – Applicable Law for Claims of Damages’, in: Drexl/Kur (eds.), International Property and Private International Law – Heading for the Future, 129; Yuko Nishitani, ‘Contracts Concerning Intellectual Property Rights’, in Ferrari/Leible (eds.), Rome I Regulation – The Law Applicable to Contractual Obligations in Europe, 74; Ansgar Ohly, ‘Areas of Overlap between Trade marks Rights, Copyrights and Design Rights in German Law’, GRURInt 2007, 704; Ivo E. Schwartz, ‘The Rationale of the Approximation directive and the Regulation on Community Trade Marks’, IIC 1981, 319; Paul Torremanns, ‘Choice of Law Problems in International Industrial Property Licences’, IIC 1994, 390; Benedetta Carla Angela Ubertazzi, ‘Licence Agreements Relating to IP-Rights and the EC Regulation on Jurisdiction’, IIC 2009, 912.

Content I. Introductory remarks on Section 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Complying with international standards. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. A conflict of laws approach. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. The rules establishing the framework for contractual exploitation 4. Preventing secondary fragmentation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Introductory remarks on Art. 16 CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Dealing with CTMs as a national trade mark. . . . . . . . . . . . . . . . . . . . . . . . . 2. Regulatory technique. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Scope of application. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Lex loci protectionis . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Interplay with contract law. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Relation to infringement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Procedural issues. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Determination of applicable trade mark law . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Registration of current proprietor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Alteration of connecting factor. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7. Practical relevance of default rule. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Comments on individual rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Seat or domicile (para. 1 a). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Establishment (para. 1 lit. b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Default rule in favour of Spanish law (para. 2) . . . . . . . . . . . . . . . . . . . . . . . 4. Joint proprietors (para. 3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 1 5 11 14 16 16 19 24 24 29 32 33 37 40 43 44 45 45 46 48 49

I. Introductory remarks on Section 4 1. Complying with international standards This section is part of the second title on substantive trade mark law and contains the 1 rules necessary in order to lay the foundation for the contractual exploitation of CTMs. At the same time it ensures that the CTMR is in line with international standards, in particular those of the TRIPS agreement. Accordingly, the starting point is the preamble of the TRIPS agreement, which established that intellectual property rights are private property. Particularly with regard to trade marks Art. 21 TRIPS further sets the standard that – although possibly subject to some additional requirements – trade marks can not only be licensed but also may be assigned with or without the transfer of the business to which the trade mark belongs.1 This concept of free transferability is adopted by the CTMR, subject to the condition that it will not mislead the public.2 Thus, one function of Artt. 16–23 is to flesh out a framework for contractual exploitation and insofar is comparable to the rules on contractual exploitation, which may be found in other Community instruments and national trade mark law. 1 2

Gervais, TRIPS Agreement (2012), Art. 21 2.288. Recital 10.

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The categorization as private property that may be held by an individual or a business at the same time matches Art. 17 Charta of Fundamental Rights, which guarantees the protection of intellectual property rights and in turn is an emanation of the general principle already acknowledged under the ECHR.3 3 A further purpose of this section is to tackle the tension between the fact that on the one hand the CTM according to Art. 1 (2 has a unitary character throughout the European Union, but that on the other hand Community law remains incomplete as it does not provide an adequate infrastructure for all relevant legal issues.4 This in particular holds true for the interface between IP-law and private law. Just as national trade mark law only sets the frame for the contractual exploitation, which is then filled by the rules of general private law, also the CTMR cannot provide a comprehensive rule on all private law matters, which may arise in the course of contractual exploitation. However, as the EU different from its Member States so far has not enacted principles or rules on private law that can be applied to the assignments, security interests or licences in a trade mark, the CTMR thus must fill this gap by recourse to the national law of the Member States. 4 The consistent application of the principle that the country of protection governs the mandatory rules on all issues relating to requirements, scope of protection and the rights conferred would actually necessitate the application of the rules of all Member States, which together constitute the ‘protecting country’.5 However, this would not only be tiresome in practice, but also affect the idea of a genuine Community trade mark – even more so as the Trade Mark Directive has omitted many of the issues relevant in the present context and has restrained itself to a rule on licensing.6 Accordingly, it only had very limited harmonizing impact on the scheme of contractual trade mark exploitation. The rules in Art. 16 et seq. which spell out the most important rules and appoint a single Member State as ‘country of origin’,7 thus also serve the purpose to preserve the unitary character.8 2

2. A conflict of laws approach Academics and practitioners alike have criticized that the rules in Artt. 16–24 remain incomplete and do rather hint at a contractual scheme than actually provide it. Some have stated that the rules are restricted to such necessary to preserve the unitary character. Even though it may be desirable to have full harmonization on contractual exploitation of CTMs it must be emphasised that the scheme at a second glance appears to be perfectly consistent as it respects the accepted distinction between the lex loci protectionis, the lex contractus and the lex loci delicti comissi in international private law 6 The basic rule for intellectual property rights naturally is the lex loci protectionis. Its underlying concept is well established under European Community Law,9 explicitly provided for in many Member States10 and widely acknowledged by academic scholars 5

3

v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 16 mn. 4. Ingerl, Die Gemeinschaftsmarke, p. 108. 5 Metzger, in Kur/Drexl (eds.), International Property and Private International Law, 215, 217. 6 But see the current proposal to streamline the directive with Art. 16 et seq. CTMR, Draft Trade Mark Regulation March 013, COM (2013) 162 final, 5.2. 7 Ohlgart/v. Bomhard, in v Mu ¨ hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 71. 8 Ohlgart/v. Bomhard, in v Mu ¨ hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 71. 9 Cf. CJ C 427/93 – Bristol Myers Squibb, mn. 22 et seq.; CJ C-3/91 – Exportur, mn. 12 and CJ C-192/ 04, mn. 46 – Lagarde´re Active Broadcast v SPRE and GVL. Also compare the current reiteration by Rome II Regulation, Recital No. 26. 10 For example § 34 Austrian PIL Act, Art. 93 Belgian PIL Act and Art. 54 Italian PIL Act; also compare the more recent Art. 110 Swiss PIL. 4

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and doctrine.11 As state-granted rights the accrual of trade marks, the required formalities, their scope and limitation of their protection must be governed by the law of the state for which protection is sought. As the rules on whether and by what means trade marks may be exploited flesh out the scope and nature of the right conferred the same must apply with regard to the admissibility of contractual exploitation as such, i. e. their transferability, the conditions for the validity of a transfer or licence and all issues concerning third party effects of these transactions including the requirements of their registration.12 The scope of the lex loci protectionis is further illustrated by the comparison to the lex rei sitae, i. e. the entirety of rules which govern the property as such and its effect against third parties.13 By contrast the lex contractus will govern the relation inter partes, which subject to 7 overriding public interests may be freely determined by the parties.14 Accordingly, it is generally acknowledged that private autonomy comprises the right to choose the applicable law as such. Therefore contracts relating to CTMs as an object of property will be governed either by the law chosen by the parties or – lacking such choice – by the law which the legislator assumes the parties would have chosen, namely the most proximate law. In order to determine the most proximate law the habitual residence or seat of the party promising the characteristic performance has been established as main connecting factor. With regard to CTMs it may be assumed that the characteristic performance of the contract is executed by the person who transfers the CTM, grants a right in rem or a licence. If by way of exception this obligation does not constitute the characteristic performance, which in particular may the case if the disposition of the trade marks is only an element of a mixed contract, the law with which the contract is most closely connected must be assessed by other relevant factors, such as formation and interpretation of the contract, performance, payment of royalties, consequences of a breach of contract and the ways of discharging the contractual obligation.15 With regard to the lex delicti comissi the CTMR can again rely on a well established 8 general rule, namely that issues in tort are governed by the law of the place of the wrong.16 In case of a trade mark this it the place where the infringement was committed.17 This rule safeguards the balance of interests of the proprietor, their competitors as potential infringers and the public at large. The overriding necessity to safeguard predictability and legal certainty does neither allow to pick and choose one set of national rules for the entire Community nor make the application dependent on a connecting factor that would favour the proprietor. Lacking a uniform set of rules on infringement the CTMR therefore had to resort to the traditional fragmentation (‘mosaic approach’) and apply national law with respect to any acts committed in the respective territory (Art. 101). Keeping this distinction in mind it becomes obvious that in fact Artt. 16–24 establish 9 the lex protectionis as they cover exactly those questions which are governed by the 11 De Miguel Asensio, in De Werra (ed.), Research Handbook, 312, 313 et seq. A similar rule may be found in American Law Institute, Intellectual Property: Principles Governing Jurisdiction, Choice of Law and Judgments in International Disputes, § 301. Territoriality. 12 For details and further references see Ahrens/McGuire, Model Law on Intellectual Property, § 24 Book 1. 13 Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 16 mn. 8. 14 Hacker, in Stro ¨ bele/Hacker (eds.), § 27 MarkenG, mn. 64. 15 De Miguel Asensio, in De Werra (ed.), Research Handbook, 312, 315 et seq. 16 Fentiman, in Kur/Drexl (eds.), International Property and Private International Law, 129; also compare Art. 3 Rome I Regulation. 17 See Art. 8 para. 1 Rome II Regulation: ‘The law applicable to a non-contractual obligation arising from an infringement of an intellectual property right shall be the law of the country for which protection is claimed.’

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mandatory law of the country of protection and – as a general rule – omit both all genuinely contractual issues, which are left to the general conflict of laws rules, and the issues of infringement, which are subject to the specific conflict of laws rules contained in Art. 14 (1) in conjunction with Art. 101. 10 However, in the interest of legal certainty two further subjects are tackled by the provisions: first formal requirements, which cannot be left to the general rules, because the formal requirements have to interlock with the administrative rules on registration, second some procedural matters, which both spare discussions on qualification and avoid circumvention by a choice of court agreement. The first exception concerns the requirements on formal validity of a transfer (Art. 17 (3)). Applying the general conflict of laws rule to formal requirements would lead to the alternative application of either the lex contractus or the law of the country where the contract is concluded.18 This liberal approach – also known as favour contractus – however does not quite match the concept of a strong register that is supposed to contain reliable information on the rights in the CTM and thereby foster legal certainty. Further it appears inconsistent to allow an oral contract for validity as such, but demand a written agreement for recordal.19 In order to avoid all doubts on the proprietor of a CTM the legislator therefore has replaced the favour contractus by a strict and mandatory formal requirement. The second exception relates to a bundle of procedural matters (Artt. 20, 21) that would naturally be governed by the law of the respective forum, which applying the general rules on international jurisdiction may be the court of a Member State or a Non-Member State. As the position conferred on a person will heavily rely on its ability to enforce the right and thus has repercussions on the attractiveness of dealing with a CTM the CTMR with regard to some questions sets minimum standards by means of uniform law, with regard to other questions confines itself to ensure the application of the procedural law of a Member State.

3. The rules establishing the framework for contractual exploitation The rules on the CTM as an object of property set out the framework for contractual exploitation. In Artt. 17–23 they contain substantive rules, which as uniform law take precedence over any national law rules referred to by Art. 16.20 Looking not at their formal characterization but at their substance their common denominator is that they on the one hand safeguard the unitary character and on the other serve legal certainty and transparency with regard to the existence and enforcement of all rights vested in a CTM. The rules apparently provide a workable framework, which is hardly affected by the current reform proposal. Leaving aside the proposed deletion of Art. 17 (4) (see below Art. 17 mn. 27) and the mere clarification that recordals may be altered or deleted on request of the parties, the upcoming recast of the CMTR does not propose any substantial reform.21 12 The basic rule in Art. 16 is a genuine conflict of laws rule. By its very nature it thus does not contain any substantive provision. Instead it provides that the law of one single 11

18

See for example Art. 11 Rome I Regulation. For this reason some Member States have previously held that formal requirements regarding IPRs are subject to the mandatory law of protection, which prevails over general contract law, cf. Beier, IIC 1982, 162, 179 and Torremanns, IIC 1994, 390, 395 with further references. 20 On the notion of priority of uniform law over conflict of laws rules see Cheshire/North, Private International Law, 10 et seq. 21 Cf. Draft Community Trade Mark Regulation, 27 March 2013, COM (2013)161 final, amendments 18–24. 19

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Member State will apply to the CTM in its entirety, i. e. throughout the territory of all Member States, and sets out the rules on how to determine the respective legal order. Art. 17 on the transfer of CTMs enacts the general principle that trade marks are transferable with or without the business to which the CTM belongs. It clearly states that a geographical division is prohibited as inconsistent with the unitary character of a CTM and sets out further details on formal requirements and the registration process including its procedural effects. Art. 18 on agent’s trade mark translates the international standard set by the Paris Convention and TRIPS into Community law and accordingly grants the original trade mark holder a right to claim transfer of a registered CTM in case an agent or other representative has registered a corresponding CTM without permission. Art. 19 allowing the grant of rights in rem implements the course taken in Art. 17 by clarifying that CTMs as any other fully transferable property can be the object of both security interests and other rights in rem, but aside from this basic rule leaves the details to the national law of the Member State to be determined according to Art. 16. As a natural consequence of allowing CTMs to be used as security interests Art. 20 on levy of execution states that they in case the right holder does not discharge his debts in due time can be attached and seized. The unitary character is preserved by the procedural caveat that the courts of the Member State whose law applies according to Art. 16 will have exclusive jurisdiction to adjudicate enforcement measures. Art. 21 contains the corresponding provision in case of insolvency, thereby stating that a CTM will be part of the debtor’s estate, and thus again sets the framework for compulsory enforcement. A complementary rule allocating exclusive jurisdiction preserves the unitary character of the CTM, which would be at risk if courts of different Member States could issue orders on the status or proprietorship. Art. 22 contains a rule on licences and clarifies that their scope may be tailored to the parties’ interests, without affecting the unitary character of the CTM as such. In addition it provides a general framework for the mutual rights and obligations of proprietors and licensees. Art. 23 on the effect of registration establishes the basic rule that dispositions regarding a CTM will only take effect vis-a`-vis third parties if they have been duly entered into the register and thereby acknowledges the core function of the register for the purpose of contractual exploitation. Two exceptions ensure that the system can neither be short-changed in bad faith nor undermined in case of a universal succession. Art. 24 on CTMs filed for registration at last widens the scope of application of the rules set out above to apply not only to registered CTMs, but also to applications, thereby extending the possibilities of contractual exploitation. Although not expressly mentioned in this section the same rules also apply to collective CTMs (cf. Art. 66 et seq.). Although the registration of transactions is not codified in a single rule but instead 13 spread over all of the preceding articles it should be mentioned that this section also interlocks the trade mark register (Artt. 87 et seq.) with the rules on the CTM as object of property. The highly developed registration system of course enhances legal certainty and reliability. Due to its user friendly set up it appears as an important building brick for a reliable infrastructure for contractual exploitation of trade marks.

4. Preventing secondary fragmentation As may be taken from this overview the CTMR does contain fundamental guidelines 14 on contractual exploitation of CTMs but restricts itself to such of capital importance. Mary-Rose McGuire

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The restriction to questions governed by the country of protection these on the one hand serve the purpose of sufficient flexibility, which is inevitable in order to ensure that the uniform rules of the CTMR and those of the various different national legal orders can interact and complement one another. On the other hand the coarsely meshed structure bears the risk that practitioners see the rules through nationalcoloured glasses and read concepts they are familiar with from national trade mark law into the CTMR rules. This risk of a secondary fragmentation is particularly vivid with regard to questions of contractual exploitation because these will be adjudicated not by the Office (and the Court of First Instance or the Court of Justice overlooking the latter) but instead can come before any national court of any Member State. So far hardly any (published) national judicature tackling the rules of Artt. 16–24 is available, the CJ so far has been only consulted once22 and thus did not yet have the chance to put some flesh to the frame set out in the regulation. 15 Against this background it is of imminent importance to take head of the legislator’s intention to restrict the application of national law to those areas where it ‘is seen to be unavoidable’23 and accordingly interpret the rules as a self-standing framework and fill actual or supposed gaps in the spirit of the rules. Not every deviation from national trade mark law hints at a gap, it may well be that the legislator deliberately has chosen to remain silent. Rather than turning to national law the interpretation of the rules should be assisted by recourse to other genuinely European sources. Such may on the one hand be found in the Community Trade Mark Implementing Regulation (CTMIR), which contains some detailed rules on the registration of the transactions provided for in Artt. 17 et seq.; on the other hand it suggests itself to take a look at corresponding rules in other drafts – such as the Community Patent Convention, CPVR, the CDR and the recent EU Patent Regulation – which have either been the model for the CTMR or have taken the latter as their model. In the course of a systematic interpretation finally other Community instruments, in particular such covering the related areas of conflicts of laws and jurisdiction can assist the informed interpretation. This autonomous interpretation should be preferred over an interpretation informed by the respective national law.24

II. Introductory remarks on Art. 16 CTMR 1. Dealing with CTMs as a national trade mark 16

Although the general concept of the CTMR is to provide a comprehensive regulation on all relevant issues its structure and content largely mirror national trade mark law and – as the latter – therefore have to rely on the additional application of general rules of private law and procedure. As the EU so far does not have a uniform private law at its disposal it – as all other community IPRs – has chosen to pro forma treat the CTM similar to a national trade mark. This fiction of course is only a second best solution, because it in its effect means that the rights conferred by a CTM may differ depending on which national law steps in, but is a real improvement as compared to a bundle of national trade marks. Even though the substantive rules may differ, with regard to one particular CTM it is always just one single legal order which applies to the individual 22

Cf. CJ Case-C 661/11 Martin y Paz Diffusion. Memorandum on the Creation of an EEC trade mark, SEC (76) 2462. 24 But see Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark Law, Art. 16 mn. 3. 23

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CTM and thus allows for a uniform commercial exploitation, where the transaction concerning bundle rights would have take heed of various different rules. This reduces complexity, the costs of information and – quite often – some unforeseen pitfalls, such as deviating formal requirements. In addition the application of a single residual national law reduces the legal costs for enforcement and most likely makes procedures faster.25 Despite the fact that the CTMR has to rely on national law the Artt. 17–24 at the 17 same time clearly indicate that it was the intention to solve the most important questions by autonomous rules – thereby preventing possible gaps of national law26 – and only leave such questions to be governed by the respective national law where a uniform rule would either perturb related areas or would exceed the competence of the Community legislator. The internal relationship of joint proprietors as a standard problem of private law procedural rules on compulsory execution or insolvency law may serve as an example. Of course mere technicalities, such as local jurisdiction, are referred to national law as a uniform rule would unnecessarily impose on the latter. This said it should be kept in mind that the conflicts of laws rule will step in only as far as the subsequent articles do not provide autonomous substantive or procedural rules. A glance at current case law shows that the concept is workable, as the application of national law seems to be only of minor practical relevance. The default rule in Art. 16 is modelled after Art. 38 of the Community Patent 18 Convention27, which was the forerunner of today’s Art. 7 Regulation on European Patent with Unitary Effect (EU Patent Regulation).28 Similar provisions can be found in Art. 27 CDR and Art. 22 CPVR. Insofar Art. 16 makes use of a well established regulatory technique. Despite this familiarity attention should be paid to the fact that there is one important deviation from both the original model as from other more current versions. The standard rule is a static reference to the legal order of the Member State where the applicant at the time of application has his seat for the entire duration of protection and thereby puts the emphasis on legal security and reliability. The same rule was contained in the draft CTMR29 but was later altered and today makes a reference not to the original, but to the current registered proprietor. This undoubtedly has the clear advantage for the proprietor that the same national law applies to all his CTMs, but does not come without the – often overlooked – disadvantage that the transfer may have severe impacts on other rights vested in the trade marks, in particular security interests. Inconsistencies between the law under which they were granted and the law under which they are enforced provoked by a subsequent transfer will have to be solved by applying the conflicts of law doctrines of adaptation and substitution to correct any occurring inconsistencies.

2. Regulatory technique Art. 16 solves the problem which law should apply insofar as the subsequent Artt. 19 17–24 do not contain any substantive rules. The unitary character implies that only one national regime can apply.30 To this end it states that a CTM pro forma will be treated 25

Metzger, in Kur/Drexl (eds.), International Property and Private International Law, 215, 221. Tritton, Intellectual Property Law in Europe, 2-094. 27 Council Agreement 89/695/EEC relating to Community Patents, 30 December 1989, OJ L 401, 1 28 Regulation (EU) No. 1257/2012 of 17 December 2012, implementing enhanced cooperation in the area of the creation of unitary patent protection, OJ L 361, 1. 29 Draft Proposal on a Community Trade Mark Regulation, 30 December 1980, OJ C 351, p. 1. 30 Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.3. 26

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as a national trade mark of one of the Member States and sets out the rules which of the 28 national legal orders applies. The fiction that one particular Member State serves as the country of origin leads to the application of the standard rules of national property law as they would apply to national trade marks. This preserves the unitary character, but also substantially facilitates the application for both contracting parties and adjudicating courts. The fact that Art. 16 strives to compensate the lack of a uniform legal order of the ‘country of protection’ at the same time explains why Art. 16 is a mandatory rule and not open to a choice of law. 20 The technique used for this reference to national law is that of a so-called ‘voie directe’ Art. 16 directly refers to the substantive rules, e. g. the respective trade mark act, civil code or applicable case law, i. e. a renvoi is excluded. This is a substantial difference to Art. 101 (2), which explicitly refers to the national law ‘including its private international law’, but must be welcomed as the more straightforward and modern approach, which in the mean time may even be called the European standard, as both the Rome I and the Rome II convention follow the same technique.31 21 Concerning the scope of application of the rules contained in title 2 it has been criticized that the term ‘as object of property’ used in the heading remains unclear and leaves some uncertainty in how far it refers to property law.32 However, it should be noted that although the heading implies that trade marks are an object of property, the rule does not refer to property law, but instead to national trade mark law in its entirety. The relevant characterization under national law, in particular whether the private law rules on rights or on property apply thus is subject to the respective legal order.33 For example German private law has a narrow concept of property that only covers tangible things and thus strictly distinguishes between property and rights34, whereas English law naturally includes intangibles into its general concept of property.35 Yet the terminology used in the CTMR is not at fault as it is a general phenomenon that terms in a conflict of laws context have a broader meaning that the respective terms in private law.36 This is necessary in order to make way with a limited number of categories in order to reduce complexity. Too sophisticated conflict rules would quite often result in the application of several different legal orders to a single case, with all the detrimental consequences, such as problems of characterization, depeçage and inconsistency. Accordingly terms in conflict of laws rules in general have to be interpreted more broadly than those of private law. The interpretation of the notion of contracts under the Brussels Regulation,37 which will encompass both reciprocal agreements and unilateral declarations as long as the resulting obligation results from the respective parties’ free will,38 may serve as a good example for this difference and evenly must be applied in the present context. 22 This said all other uncertainties can be settled by the well established doctrine of conflict of laws which with regard to property clearly distinguishes between three different laws, namely property law (lex rei sitae), contract law (lex contractus) and tort 31

Cf. Art. 20 Rome I Regulation, Art. 24 Rome II Regulation. v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 16 mn. 1, 8 in particular in respect of the German translation of ‘property’ as ‘Vermo¨gen’. 33 McGuire, in Faber/Lurger (eds.), Rules for the Transfer of Movables – A Candidate for European Harmonization or National Reforms?, 2007. 34 §§ 90, 398, 413 German Civil Code. 35 This is expressly provided for in Art. 22 UK TMA; a similar provisio may be found in Art. 26 Irish TMA. 36 Kegel/Schurig, Internationales Privatrecht (2004), p. 313 et seq. 37 Council Regulation 44/2001, recast 2015/2012 of December 12, 2012, OJ 351, 1 in force as of 10 January 2015. All references are to the 2012 version as amended, old numbering in brackets. 38 CJ 20 January 2005, C 27/02 – Engler/Janus. 32

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law (lex loci delicti commissi). Applying exactly the same scheme to CTMs we thus have to deal with trade mark law (lex loci protectionis), contract law statute (lex contractus) and the rules on infringement (lex loci delicti commissi) respectively. In line with this method Art. 16 determines the lex loci protectionis which for lack of a natural country of origin has to be substituted by the law of one Member State. By contrast, the rules determining contract law in general are left to Artt. 3, 4 Rome I, the determination of the rules applicable in case of infringement (and other extra contractual obligations) to Artt. 14, 101 or Artt. 8 and 13 Rome II respectively (see below mn. 29 and 32). Further Art. 16 is by its very nature a residual rule which does not displace more 23 specific rules that regulate the respective issues. Such may not only be contained in the subsequent articles of this section, but throughout the entire CTMR and its implementing regulation.39 The CTM system thus in its entirety takes precedence over national law, because the reference to national law is only intended to fill remaining gaps and is not applied by its own virtue.

3. Scope of application a) Lex loci protectionis. The fact that Art. 16 puts the CTM on equal footing with a 24 national trade mark of the Member State whose law applies at the same time is an important indicator for the scope of application, namely for all issues which are governed by the principle of territoriality. Although not explicitly provided for in the CTMR40 it is in fact an important building brick for European IP legislation.41 According to this century-old and well established principle intellectual property rights are characteristically territorial and therefore confined to the territory of the sovereign or legal entity which grants such rights.42 In the context of conflict of laws the territoriality principle translates to the country of protection principle – sometimes also referred to as country of origin-principle. The country of protection in the first place governs the requirements and – if 25 applicable – the procedure for the grant of a trade mark. As the actus contrarius it is similarly responsible to the requirements and consequences of revocation and invalidation. From this it can be derived that it will also determine the nature of the right conferred, the permission to dispose of it by contract and the effect such disposition will have on third parties. Already a quick glance at the subsequent articles proves that these exactly are the questions which the legislator had in mind. With regard to contractual exploitation, i. e. transfer, security interests or the 26 creation of other rights in rem and licences, this leads to the distinction between the relationship of the contracting parties inter partes and those questions that have an impact on third parties or public interests. Only the second category, including such aspects as to whether – and if so – what types of contractual exploitation are permissible, their formal requirements and effects vis-a`-vis third parties are governed by the lex loci protectionis, which naturally is mandatory, exactly because it also concerns public and third party interests. 39 As examples Art. 66 et seq. on collective marks and Art. 55 para. 3 b) on the effects of nullity may be counted within such prevailing rules. 40 But see Recital 4. 41 It is the starting point of the Memorandum on the Creation of an EEC trade mark, SEC (76) 2462 mn. 35 and implied by Recital 4. On its general acceptance as a standard of international and Community law see Fawcett/Torremanns, Intellectual Property and Private International Law (2011), 13.104 et seq., 13.114; Gru¨nberger, ZVglRWiss 2009, 134, 160 et seq.; Ahrens, WRP 2011, 945, 948. 42 Fentiman, in Kur/Drexl (eds.), International Property and Private International Law, 129, 132.

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Discerning the exact delineation between these two types of issues appears clear at first blush but may raise difficult questions of characterization43 insofar as contracts have the power to affect third party interests. This in particular concerns formal and registration requirements but also the third party effect of licence contracts: On the one hand the question formal validity of a contract naturally would be qualified as contractual, which is underlined by the fact that the Rome I Regulation does contain a specific rule on contract formation. On the other hand all transactions on a CTM can be entered into the register in order to have effect vis-a`-vis third parties. The formal requirements for registration are laid down in the implementation regulation which as a standard rule provides that the documents for proof of a transaction have to be signed by both parties. This shows how closely related rules on formal validity are related to the rules on the administration of the register, which naturally are governed by the lex protectionis. Fortunately the CTMR spares us this complicated decision by an autonomous rule on the most important questions, namely the formal requirements of a transfer and the requirement of registration of rights in rem and licences for any third party effect (Art. 19 (2), Art. 22 (5)). A second stumbling block with regard to characterization is the issue of protection of prior rights (sometimes referred to as ‘protection against succession’). Although it is well established in the national legal orders of many Member States to protect licences in the event of a transfer of a trade mark,44 it may not be hastily taken for granted, as the availability and requirements of such protection strongly vary even between Member States.45 Some countries either deny protection against succession to trade marks altogether, some restrict it to specific types of licences or make it dependent on formal requirements, such as registration. Against this background the CTMR – as all other Community IPRs – has wisely chosen to include an autonomous rule, which takes precedence over all national rules and as part of the lex loci protectionis has mandatory character (see Art. 23 mn. 17). 28 This said it may be added that the problem of drawing an exact line between the lex loci protectionis and the lex contractus is not a result of any fault of the CTMR, but to a large extent is attributable to the fact that national law does not provide for a corresponding model. In many national systems there remains a traditional gap between regulatory IP-law and general contract law. Whereas IP law focuses on grant, recognition and enforcement of the property right, it by and large lets contractual matters untouched and insofar relies on general commercial or private law. Standard contract law, however, does not specifically address IP matters. Yet the differentiation is of utmost importance both because the applicable conflict laws differ and because IPlaw focuses on regulatory issues making it mandatory, whereas contract law has a neutral or descriptive manner and rather than to restrict intends to enable private autonomy.46 It therefore comes as no surprise that this gap has been criticized and first proposals how to fill it have been published and discussed.47 For the time being the most important foundations are coined by the CTMR itself and – as mentioned above (see above mn. 14) should be interpreted as a self-standing consistent scheme, avoiding a secondary fragmentation by too generous application of national law. 27

43

Kur, IPRax 2007, 284, 288; de Miguel Asensio, in De Werra (ed.), Research Handbook, 312, 315. See country reports on AIPPI, Yearbook 2006/I, p. 311 et seq. 45 See Summary of AIPPI reports, Yearbook 2006/I, p. 631 et seq. 46 Cf. Brennan/Dodd, in de Werra (ed.), Research Handbook, 257. 47 See the draft of an envisaged Model Intellectual Property Commercial Law, Brennan/Dodd, in De Werra (ed.), Research Handbook, 257, 269 et seq. 44

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b) Interplay with contract law. The content of the respective contracts and in 29 particular what rights and obligations they confer on the contracting parties is governed by the principle of private autonomy. As Art. 16 leaves not doubt that it does not determine the contract law applying to a transaction dealing with a CTM48 the latter will either be determined by a choice of law or by the default rule in accordance with the rules on international private law. Synchronization of the law applicable under Art. 16 and the law governing the contract are recommendable as it spares some difficult issues of delineation. Despite the fact that the freedom of choice of law in contractual matters is widely 30 accepted attention should be paid to the fact that whether a choice of law is admissible and subject to which requirements depends on the applicable private international law. In cases concerning a CTM this will most likely but not necessarily be the Rome I Regulation,49 because the applicable conflict rules will be those of the lex fori. It therefore has to be kept in mind, that neither the jurisdictional rules of the CTMR nor the Brussels Regulation can bind the courts of a Non-Member-State. Therefore it is possible that a court of a non-Member State will adjudicate on a contract concerning a CTM and in this course will naturally apply its own conflict of laws rules. If for example the proprietor of a CTM has his seat in Switzerland, his contracting partner could according to Artt. 2 or 5 Lugano Convention50 bring a law suit for performance before a Swiss court, which will then determine the applicable contract law in line with the Swiss PIL Act.51 Further it should be noted that a choice of law – such as under Art. 3 Rome-I – will 31 not displace any rules protecting the internal market or affecting national ordre public. Accordingly freedom of contract may be considerably restricted by internationally mandatory rules of the forum on the one hand (cf. Art. 9 Rome I) and competition law (Art. 6 Rome II) on the other. Rules protecting the licensee, franchisee or employee as the supposedly weaker party may serve as examples for the first group, provisions controlling distribution agreements or the contractual prohibition contained in a licence contract to bring nullity actions52 for the second. c) Relation to infringement. Naturally Artt. 16 et seq. do not apply with regard to 32 requirements or consequences of infringement as the applicable law in this respect is determined by a separate conflict of law rule contained in Artt. 14, 101. In practice there are however two points of contact, where delineation between the lex loci protectionis and lex loci commissi may be an issue. The first is the coexistence of contractual and non contractual claims of the proprietor against a licensee transgressing his licence (see below Art. 22 mn. 18 et seq.), the second is the controversial issue whether and in which capacity a licensee may enforce the CTM in case of infringement. Both are governed by Art. 22 but may have to be supplemented by the law applicable to infringement (Art. 14) and the lex fori in infringement proceedings (Art. 101) respectively. This said no conflicts between Art. 16 and Art. 14 are apparent. Yet, the fact that both are conflict of laws rules and are meant to be complementary should be kept in mind. The principle 48

Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 16 mn. 1. Regulation (EC) No. 593/2008 of 17 June 2008 on the law applicable to contractual obligations (Rome I), OJ L 177, 6. 50 Revised Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial matters, 30 October 2007, OJ L 339. 51 Federal Act on Private International Law of 18 December 1987 (IPRG/Swiss PIL), AS 1988 1776. 52 CJ 25 February 1986, C 193/83 – Windsurfing International; also compare Art. 5 1 b Regulation (EU) No 316/2014 of 21 March 2014 on the application of Art. 101 (3) TFEU to categories of technology transfer agreements. 49

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of systematic interpretation thus suggests that both the technique in general and the interpretation of the terms used should be accorded. d) Procedural issues. In order to fully grasp the context and reason for the inclusion of some procedural issues in the subsequent articles on CTMs as object of property one further delineation should be tackled, namely between the CTMR and procedural law. It is a generally accepted proposition – reiterated in Art. 101 (1) and (2) – that every civil court will first and foremost apply its own procedural law and conflict of lawa rules (lex fori principle)53 and only insofar as the one or the other refers the court to a foreign legal system will be willing to apply the rules of another legislator, be it intellectual property, contract or tort law. 34 As seen above the CTMR is deeply routed in and interacts with other Community instruments. Its smooth and easy application thus to a large extent will rely on also being adjudicated by courts familiar with Community law. As a natural consequence the CTMR therefore seeks to ensure that CTM-related matters will be brought before the courts of the Member States. Accordingly, title X provides rules on jurisdiction. Building on the system of the Brussels Regulation (Art. 94) it contains more detailed rules on infringement matters conferring exclusive jurisdiction to Community trade mark courts (Art. 96 et seq.) and in Art. 106 provides that for all other cases relating to a CTM – including contractual matters – the rules for disputes on national trade marks apply mutatis mutandis. But it restricts the reference to the general rules insofar as the Brussels Regulation confers jurisdiction on the courts of a Member State. For all remaining disputes Art. 107 (3) contains a fall back clause in favour of Spanish courts. With regard to the issues covered by title 4 this system – workable in general – however poses two difficulties. The first is, that Art. 24 no. 5 Brussels Regulation with regard to compulsory enforcement provides exclusive jurisdiction to the court where the measures have been applied for, but does not ensure that only one court can be seized with regard to a particular piece of property. The second is that the Brussels Regulation does not cover insolvency matters (cf. Art. 1 2 b Brussels Regulation). 35 Remaining gaps are filled by procedural rules contained in section 4. By supplementing the substantive rules with rules on exclusive jurisdiction in favour of the courts of the Member States whose law is applicable by virtue of Art. 16 et seq. they ensure that only courts of Member States may conduct compulsory enforcement and insolvency proceedings and thereby preserve the unitary character. Of course the CTMR cannot prescribe its own application by foreign courts nor can it ensure that they will apply the same conflict of laws rule, but the rules on jurisdiction are quite effective as their disregard by the court of a Non-Member-State may preclude recognition and enforcement within the Community and in particular will not be implemented by the Office. 36 With regard to contractual CTMR-related matters the general rules of the Brussels Regulation remain in place. In case of concurring trade mark claims attention should be paid to the fact that Art. 101 also refers to the law of Member States. Of course it will ease and speed up adjudication if the same courts are entrusted with contractual matters. It therefore is recommended to include a choice of court clause into contracts and appoint a Community Trade Mark Court, which will be able to adjudicate all questions with the necessary expertise.54 33

53 On the lex fori principle see Kono/Jurcys, Intellectual Property and Private International Law (2012), p 139; Ubertazzi, IIC 2009, 912, 935; Gru¨nberger, ZvglRWiss 2009, 134, 136 et seq. 54 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 16 mn. 33.

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4. Determination of applicable trade mark law As a general rule the applicable law depends on the location of the seat, domicile or 37 establishment of the registered proprietor, but if the connecting factor refers to a NonMember State this will be replaced by a default rule in favour of Spanish law as the seat of the Office. All connecting factors – domicile, seat and establishment – are well-known concepts used in many other Community instruments, in particular in Art. 4 Rome-I, Art. 4 (2) Rome-II and Artt. 2, 59 and 60 the Brussels Regulation55 and should be interpreted accordingly.56 In this respect it is particularly noteworthy the Brussels Regulation provides a workable solution for the concept of ‘domicile’ and the European Insolvency Regulation includes a definition of ‘establishment’ as ‘any place of operations where the debtor carries out a non-transitory economic activity with human means and goods’(Art. 2 lit. h Insolvency Regulation). Using these definitions can avoid inconsistencies which may result if the court or authority approached instead to apply their own law.57 The cascade of connecting factors contains a basic rule, which will apply to the bulk 38 of cases, and alternatives, which provide a residual rule in case the prior indicator does not point towards any legal order. However, independent of which head applies to a particular CTM the legal order referred to by definition is only one and that of a Member State. The relevant date is the date when the transaction has been concluded,58 i. e. satisfies all requirements stated either by the CTMR or the applicable national law. By contrast neither the date of application to, nor the date of actual recordal in the register will be decisive. It should be noted that Art. 16 contains a dynamic reference. Although astounding in 39 the light of a comparison with other community IPRs (see above mn. 18) and with other conflict of law rules the clear wording in para. 1 b at the end ‘on the relevant date’ leaves no doubt that the applicable law will be determined for each transaction at the point of time such transaction takes place. Accordingly, in case the proprietor relocates his domicile or business this may – if registered – lead to a change of the applicable law. Similarly a transfer under Art. 17 to a party who has its domicile or seat in another state may imply a change of the applicable law. This shift of applicable law may raise some difficult legal questions, such as to the rules governing a security interest which do not correspond to the types of formal requirements of the state which later may govern the enforcement by virtue of Art. 19.

5. Registration of current proprietor Practical problems determining the applicable law under Art. 16 most likely will be 40 rare, as Art. 16 refers to the registered domicile, seat or establishment, which according to Art. 87 is publicly available. This at the same time will solve the problem, which may occur if a proprietor has several locations, as in general only one will be registered (rule 1 1 b CTMIR). But even if several locations are registered, the spirit of the rule suggests to refer to the first location mentioned. 55 See CJ 19 July 2012, C 33/78 – Somafer v Saar-Ferngas, mn. 12; CJ 27 September 1986, C 218/86 – SAR Schotte v Parfums Rothschild. 56 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 16 mn. 16. 57 This solution has been suggested by Renck, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 16 mn. 3 (establishment). 58 Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.3.2.

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Despite the fact that the wording – at least with regard to para. 1 a – clearly refers to the registered seat and domicile there has been some confusion on whether the actual or the registered seat will be decisive. Whereas some authors state that for the sake of legal certainty the relevant factor in this context is the respective entry in the register,59 others hold that it is not the address on the CTM register, but rather where the proprietor is registered with the local administration.60 According to the latter opinion the connecting factor cannot necessarily be established by merely providing a copy from the register. Therefore the burden of proof is supposed to lie with the proprietor who relies on the law of another Member State.61 However, it appears doubtful whether it is permissible to rely on an actual seat which has not been registered, as this will undermine the reliability of the register. In addition the concept of negative publicity established by Art. 23 militates against such interpretation. Against this background it appears more convincing to strictly adhere to the seat, domicile or establishment registered and – with the exception of manifest abuse – determine the applicable law according to the record of the register. 42 In order to avoid all uncertainties every proprietor therefore is well advised to ensure the accuracy of the register. As an incentive to register the current data the implementing regulation provides that a mere change of name or address will be entered without fees falling due (Rule 26 (3) CTMIR), in case of a transfer the registration of the disposition even is a formal requirement for the new proprietor to administrate his right (see Art. 17 (5)-(8)). 41

6. Alteration of connecting factor 43

As mentioned above Art. 16 (1) deviates from both the draft CTMR62 and other comparable conflict of law rules such as Art. 39 (2) of the Luxemburg Patent Convention 197563) as it does not refer to the original but the current registered proprietor. Consequently the application of the rule may lead to a change of the applicable law in case either the proprietor relocates his business or the CTM is transferred to another right holder. This concept has been welcomed by many authors and interpreted as giving more weight to the respective right holder than to steadiness and has been underlined with the argument, that a trade mark which can be transferred freely and without being bound to a particular business entity would be thwarted by a perpetual link to the jurisdiction of the applicant or first right holder.64 However, on second glance this concept seems less convincing, as in case of several transactions each is governed by different national law. In order to scrutinize whether a transfer has taken place and at what time it has been effected the parties therefore may have to struggle with various national rules. Whereas this is a well-known problem which may also arise in the case of a bundle of national trade marks, the fact that the applicable law may change during the life cycle of a trade mark appears more severe. In particular with regard to security interests and other rights in rem this appears problematic, as the national laws considerably differ on the question which rights in 59 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 16 mn. 1; Jehoram/van Nispen/Huydecoper, European Trademark Law, 16.3.2.; Hacker, in Stro¨bele/Hacker (eds.), Markengesetz, § 27 MarkenG, mn. 65. 60 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 16 mn. 2; Schennen, in Eisenfu¨hr/Schennen (eds.), GMVO, Art. 16 mn. 4. 61 Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 16 mn. 4. 62 Draft Proposal on a Community Trade Mark Regulation, 30 December 1980, OJ C 351, p. 1. 63 See also its successor in Art. 7 European Patent Regulation 2012, Art. 27 CDR and Art. 22 CPVR. 64 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 16 mn. 14.

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rem are available, which requirements for a valid grant apply and how they are enforced. It is easy to imagine a case that a security interest lawfully granted in one country but unknown in the country whose law applies subsequently may cause severe difficulties, such as priority with regard to subsequent rights granted or with regard to the applicable enforcement measures. Such frictions then have to be settled by applying the intricate conflict of laws concepts of coordination (adaptation and substitution65). This supposedly may hamper the use of CTMs as securities altogether.

7. Practical relevance of default rule Taking heed of the advice to interpret the rules of Artt. 17–23 as self-standing rules 44 and only rely on the residual application of national law in case it is inevitable leads to the question, whether the determination of the applicable law under Art. 16 is worth while from a practical perspective. In fact the unsuccessful endeavour searching for relevant case law may imply that the default rule is of minor practical importance. However, the amount of court cases can only serve as an indicator for problems which have occurred in the past, but does not provide reliable information on how proprietors could secure the best legal infrastructure for their CTMs which apparently are valuable assets. From the perspective of contract planning in particular two remaining gaps in the scheme provided by the CTMR seem relevant: the relationship of several joint proprietors and the types of available security interests. Against this background it appears as a relevant information that the rule provided in Art. 16 is mandatory, but that in practice an applicant and prospective proprietor can ‘choose’ the law by determining who will file the application or in case of several proprietors who will be first in the list of proprietors. This recommends to rethink the current reported practice to decide which of several daughter companies or joint proprietors files an application solely based on tax issues.

III. Comments on individual rules 1. Seat or domicile (para. 1 a) In line with Art. 5, which clarifies that any natural or legal person may be the 45 proprietor of a CTM, para. 1 lit. a declares the domicile of a natural person or the seat of a business entity to be the decisive connecting factor. Attention should be paid to the fact that not the actual, but the registered seat or domicile of the proprietor is relevant. So in case a change of seat or domicile has occurred, but has not yet been registered it must be assumed that the registered address will remain decisive.

2. Establishment (para. 1 lit. b) In case the proprietor – or in case of several registered proprietors none of them (see 46 para. 3) – does not have a seat or domicile in the Community para. 1 lit. b in the alternative refers to the law of the state where there is an establishment. The term establishment for reasons of consistency should be interpreted in accordance both with 65 Substitution allows a requirement for a legal consequence to be replaced by a similar requirement which has occured abroad; adaptation allows a requirement for a legal consequence to be deemed fulfilled by an equivalent requirement under a foreign legal order that serves a similar purpose.

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Art. 92 (2) CTMR66 Art. 97 CTMR67 and Art. 2 lit. h Insolvency Regulation and means a branch office rather than a separate legal entity. This rule serves the interest of the proprietor, as it may be assumed that if he has an establishment within the internal market and operates its business from such establishment he will be familiar with the legal system of the respective country. 47 The wording of para. 1 lit. b leaves some doubts whether reliance on an establishment requires its registration. Sentence 1 in conjunction with para. 1lit. a refers to the registered seat and domicile. Para. 1 lit. b then states that in case 1 lit. a does not point towards the law of the Member State instead the establishment shall be decisive. Being truthful to the wording this would allow that the registered seat or domicile in a nonMember State would not automatically point to the application of Spanish law, in case the proprietor has an unregistered establishment in another Member State.68 However, this interpretation would undermine the reliability of the registration system and its purpose to ensure legal certainty, which is further underlined by the fact that according to rule 1 1 (b) CTMIR the application for a CTMR shall contain the ‘State in which [the applicant] is domiciled or has his seat or an establishment‘[emphasis added]. For reasons of consistency para. 1 lit. b therefore should be construed as a reference to a registered establishment only.

3. Default rule in favour of Spanish law (para. 2) 48

If none of the registered proprietors has a domicile, seat or establishment in the Community, i. e. there is absolutely no connecting factor pointing towards a presence in the Community, the CTMR will with regard to all questions concerning its treatment as object of property and not autonomously regulated by Artt. 17–23 be governed by the law of the seat of the Office for Harmonization in Alicante, i. e. national Spanish trade mark – or general private – law. According to current statistics of the OHIM this rule is applicable to about 30 % of CTMs and in particular concerns applications from the Switzerland, the US and Japan.69 But attention should be paid to the fact, that it may well be that the proprietor has his main seat in a non-Member State but a (registered) establishment within the EU and thus the default rule in para. 2 will be preceded by para. 1 b (see above mn. 46 et seq.).

4. Joint proprietors (para. 3) 49

Para. 3 deals with the situation that the trade mark is held by two or more proprietors and these joint proprietors have their seat, domicile or establishment in different states. In case several persons are mentioned in the register and the connecting factors of these point to different jurisdictions the order of entry in the register will be decisive. If the first mentioned does not have a connecting factor to the EU, the analysis according to para. 1 a and 1 b will be conducted for the second, third and so forth.70 This technique at the same time reduces the likelihood that the default rule in para. 2 66

See commentary on Art. 92. Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 16 mn. 3. 68 Schennen, in Eisenfu ¨ hr/Schennen (eds.), Art. 16 mn. 4. But see Jehoram/van Nispen/Huydecoper, European Trademark Law, 16.3.2. and Hacker, in Stro¨bele/Hacker (eds.), Markenrecht, § 27 MarkenG, mn. 65, who seems not to draw such distinction between the register and the establishment. 69 OHIM, Statistics of Community Trade Marks, 2 June 2014, SSC 009. 70 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 16 mn. 5; But see Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.3.2. who take the position that if the first mentioned proprietor has no connecting factor to the EU Spanish law will apply. 67

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applies, as it is sufficient if one of the proprietors has his domicile, seat or establishment in one of the 28 Member States. The reference to national law apparently may be of some significance, as co-ownership 50 may result form inheritance, joint venture, labour relations, co-realization of an intellectual creation or from agreements.71 Although with very few exceptions co-ownership in a trade mark is allowed, the details on the legal entitlement of co-owners varies greatly between Member states. From a comparative perspective there are at least three different concepts, namely co-ownership in undivided shares, shared ownership or joint ownership.72 Relevant practical differences in particular may concern the question, first whether the simultaneous use by several independent joint owners may create a risk of deception73 and thus make the trade mark vulnerable to cancellation,74 and second whether or not an individual co-owner is allowed to contractually exploit the IP and enforce it on his own accord.75 Whereas most countries do not provide particular rules on joint ownership of trade 51 marks but apply the general rules of private law,76 an exception must in particular be made for Spanish law, which in Art. 46 Spanish Trade Mark Act covers this issue.77 The default rule is that the individual co-owner may grant licences and use the trade mark independently provided that the majority of co-owners has agreed. According to Art. 398 Spanish Civil Code consent of the majority is also necessary with regard to all administrative acts. For both questions the majority is calculated by shares rather than by numbers.

Article 17 Transfer 1. A Community trade mark may be transferred, separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered. 2. A transfer of the whole of the undertaking shall include the transfer of the Community trade mark except where, in accordance with the law governing the transfer, there is agreement to the contrary or circumstances clearly dictate otherwise. This provision shall apply to the contractual obligation to transfer the undertaking. 3. Without prejudice to paragraph 2, an assignment of the Community trade mark shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment; otherwise it shall be void. 4. Where it is clear from the transfer documents that because of the transfer the Community trade mark is likely to mislead the public concerning the nature, 71

See AIPPI Report on Q 194, Yearbook 2007/II, p. 415 et seq. For a comparative analysis on the general private law rules see Study Group on a European Civil Code, Acquisition and Loss of Ownership of Goods (2011), Art. 1.205 on the notion of co-ownership. With regard to the complications of co-ownership for contractually exploiting IPRs or enforcing an IP-right in infringement proceedings see AIPPI report Q 194, Yearbook 2007/II, p. 415 et seq. and Q 194 b (2009). 73 See for example Art. 27 Irish TMA, which requires that the joint owners are connected in the use of trade. 74 AIPPI, Yearbook 2007/II, p. 415 et seq., question 2 b which arrives at the conclusiont hat coownership in IPRs will often lead to debate on the validity of the IPR. 75 AIPPI, Yearbook 2006/I, p. 631 et seq. 76 AIPPI, Report on Q 194 b (2009). 77 AIPPI, Yearbook 2007/II, p. 415 et seq., question 1. Express rules also may be found in Art. 23 UK TMA and Art. 27 Irish TMA. 72

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5. 6. 7.

8.

Community Trade Mark Regulation

quality or geographical origin of the goods or services in respect of which it is registered, the Office shall not register the transfer unless the successor agrees to limit registration of the Community trade mark to goods or services in respect of which it is not likely to mislead. On request of one of the parties a transfer shall be entered in the Register and published. As long as the transfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the Community trade mark. Where there are time limits to be observed vis-a`-vis the Office, the successor in title may make the corresponding statements to the Office once the request for registration of the transfer has been received by the Office. All documents which require notification to the proprietor of the Community trade mark in accordance with Article 79 shall be addressed to the person registered as proprietor. Rec. 2, 7, 11

Bibliography: AIPPI, ‘Report on Q 85: Community Trademarks (and the draft Regulations)’, Yearbook 1985/II, 64; Rainer Klaka, ‘Die Markenteilung’, GRUR 1995, 713; Martin Senftleben, ‘The Trademarks Tower of Babel – Dilution Concepts in International, US and EC Trade marks Law’, IIC 2009, 45; ¨ bertragbarkeit’, GRURInt 1999, Adriano Vanzetti, ‘Die Funktion der Marke in einem System der freien U 205; Nadia Zorzi, ‘Die Verkehrsfa¨higkeit der Marke im italienischen Recht und in der Gemeinschaftsmarkenverordnung’, GRURInt 1997, 781.

Content I. Introductory remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Principle of free transferability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. The concept of transfer . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. The law applicable to the contract or other causa for transfer . . . . II. Comments on individual rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Free transferability (para. 1). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Presumption of business transfer to include CTM (para. 2) . . . . . . . 3. Formal requirements (para. 3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Refusal to register transfer due to misleading character (para. 4) . 5. Registration of transfer (para. 5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Effect of registration (para. 6). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7. Compliance with time-limits (para. 7). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8. Service of documents (para. 8). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 1 4 6 9 9 17 21 25 28 37 38 39

I. Introductory remarks 1. Principle of free transferability 1

Art. 17 coins the principle of free transferability and establishes the CTM as a self standing economic good.1 What seems quite natural today when enacted back in 1994 was a milestone in trade mark development as it put an end to the controversial discussion of inseparability, which for a long time had divided the Member States and for exactly this reason also has been omitted from the Trade Mark Directive. In the meantime all Member States have given up the more restrictive approach in order to accord with the TRIPS standard (see above Art. 16 mn. 1). In fact adhering to the principle of accessoriness would have been anachronistic, as the CTMR follows the 1

Ohlgart/v. Bomhard, in v.Mu¨hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 71.

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modern approach and does neither make the existence of a business establishment nor a tangible proposal of use a requirement for application (see Artt. 5, 15).2 The acceptance that trade marks are transferable objects brings trade mark law in line 2 with other Community IP-rights and at the same time evidences a shift of the concept of trade mark functions. Although the CJ also in current judicature has repeatedly referred to the fact that a trade mark is intended to indicate the origin and quality of a good or service and thereby give guidance to the consumers, who in general assume that all products using the same trade mark stem from the same business entity or group.3 This concept at the same time inspired the detailed rules in the original draft that subjected a transfer (or even a licence) to an ex ante scrutiny requiring that the use of the CTM by its new owner (or licensee) would not be likely to deceive the public about the essential qualities of the goods.4 Some Member States provide for similar restrictions.5 The fact that these restrictions have been dropped underlines the liberal approach towards transfer of trade marks adopted by the CTMR, but at the same time weakens the concept of trade marks functions.6 Yet, before moaning a treat of inconsistency it should be kept in mind that even trade mark laws adhering to the principle of ‘accessoriness’ had to make some exceptions, because it is a natural event that a business may be separated from its founder, be it by means of merger and acquisition or by handing down family enterprises to the next generation. Further it should be noted that even though the age of a company may play an important role in building good will and reputation consumers will most likely only expect consistency with regard to current use. The mere fact that a trade mark is used by a business entity that has acquired the trade mark as such thus cannot be held to be deceptive. However, the picture may change in case it is not the earned reputation, but rather the word or sign of the trade mark itself which indicates a quality standard to which the new proprietor cannot live up to. Consequently, para. 4 sets a limit to such transactions which the Office may reject. Free transferability of CTMs enlarges the potential use of trade marks and in 3 particular enhances flexibility as it allows the proprietor who has by his market performance created reputation and good will, to exploit this as a self-standing good. As a consequence this flexibility naturally generates the need of a legal framework. In addition to formal and registration requirements that secure legal certainty (Art. 17) the fact that a trade mark is an asset further requires to spell out the consequences of such transfer. These may be procedural if the proprietor at the time of transfer is entangled in legal disputes before the office or courts (see Rule 73 CTMIR), or substantive, if third parties have acquired vested rights in a trade mark before the transfer (Art. 23). If a trade mark is an asset and may be utilized as a credit security this implies that the creditor must have the possibility to attach the CTM if the debt remains unsettled. The same applies in case of the proprietor’s insolvency. Accordingly the rule on transfer has to be accompanied by such on compulsory enforcement (Art. 20) and insolvency (Art. 21).

2. The concept of transfer As a comparative perspective displays that the term ‘transfer’ is used in quite 4 different meanings it seems apt to clarify that Art. 17 has a rather restricted scope of application. The CTMR – as all other Community IPR regulations – does not use 2 Cf. Fezer, Markenrecht, Part F. Gemeinschaftsmarkenrecht, mn. 38.; Ohlgart/v. Bomhard, in v Mu¨hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 71. 3 Memorandum on the Creation of an EEC trade mark, SEC (76) 2462, mn. 11 et seq. 4 Memorandum on the Creation of an EEC trade mark, SEC (76) 2462, Nr. 143. 5 See for example Art. 23 (4) Italian TMA and Art. 47 (2) Spanish TMA. 6 Cf. Senftleben, IIC 2009, 45, 47 et. seq.

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transfer as a generic term but merely as a synonym for a full reallocation of ownership. The decisive negative test for the concept of transfer is whether the original proprietor of the trade mark will after the transfer still have proprietary rights of his own. Thus the term – and hence the scope of application of Art. 17 – does neither include the grant of rights in rem nor licenses which are solely governed by Artt. 19 and 22 respectively.7 This said the mandatory rule of Art. 17 mainly clarifies that a transfer is admissible and provides a comprehensive rule on the formal requirements of such transfer, but apart from this basic rule leaves all questions regarding the validity of the causa for such transfer to the law applicable to the respective transaction. This may either be a contract or a universal succession. 5 By virtue of reference the same rule applies to an application for a CTM (Art. 24) and to collective CTMs (Art. 66).

3. The law applicable to the contract or other causa for transfer Insofar as the basis for the transfer is a contract its validity and interpretation will in general – but see the exception for interpretation in para. 2 and regarding formal validity in para. 3 – follow the contractual statute (see above Art. 16 mn. 29). It is determined by the conflict of laws rules, which between the EU Member States have been harmonized and laid down in the Rome I regulation. Under the Rome I Regulation any contract will as a general rule be governed by the law the parties have chosen explicitly or by implication in accordance with Art. 3 Rome I. Devoid of a choice of law clause the contract will be governed by the law of the state in which the party who promises the characteristic performance has its seat (Art. 4 (2) Rome II). In the case of transfer of a CTM this will regularly be the seat of the transferor.8 The same applies in case of transfer of an entire business.9 The fact that the general connecting factor under Art. 4 Rome I is the seat of the transferor will usually lead to a synchronisation of the lex contractus with the lex protectionis under Art. 16, but attention should be paid to the fact that none of them will preclude the application of internationally mandatory rules of the forum or overrule any restraints imposed by cartel or competition law.10 7 For the sake of clarification it should be added that despite the notion of universal application laid down in Art. 2 Rome-I the regulation as such is a unilateral conflict of laws rule. Accordingly universal means that a court of any Member State will apply it to all cross-border cases, i. e. irrelevant of whether the other state concerned is a Member State of the EU or not. However, the European legislator can of course not prescribe any conflict of laws rules for Non-Member States. As CTMs according to Art. 5 may be held by residents of Non Member States and naturally can also be transferred by or to such it is well conceivable that court proceedings may take place in third countries. In this case the court of such third country will apply its own conflict of laws rules (lex fori principle).11 That this situation is not particularly unusual can be demonstrated by a simple example. Assuming that a Swiss proprietor of a CTM disputes the validity of a 6

7

Tritton, Intellectual Property Law in Europe, 2–100. Thorn, in Rauscher (ed.), EuZPR/EuIPR, Rome I Regulation, Art. 4 mn. 124; Fawcett/Torremans, Intellectual Property and Pirvate International Law, mn. 14.63. 9 Martiny, ZEuP 2001, 308, 317. 10 Torremanns, IIC 1994, 390, 393; v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 16 mn. 26. 11 See above Art. 16 mn. 33. 8

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transfer to an English transferee the latter may according to Art. 2 Lugano Convention12 sue the proprietor before the Swiss courts. In determining which law is applicable to the transaction the Swiss court will accept that the rules of the CTMR (including their reference to Spanish law under Art. 16) are applicable as the lex protectionis, but will determine the applicable contract law according to its own conflict of laws provisions (cf. Art. 1 b Swiss IPL). Insofar as the transfer results from merger, acquisition or other restructuring of a 8 company it will be determined by the company law statute13 which again may be that of a EU Member State or a third country. Of course, the transfer may also be the result of the proprietor’s death leading to a universal succession governed by the inheritance law statute. However, these cases will be rare in number, not only because CTMs most likely are held by business entities, but also because in case of a succession under inheritance law the transfer will in general be closed by the decision of a judicial authority. In this case the formal requirements will be replaced by the judgement, restricting the practical relevance of Art. 17 to the requirements and effects of registration.

II. Comments on individual rules 1. Free transferability (para. 1) Para. 1 codifies the general rule that the CTM as an object of property is freely 9 transferable independently of the underlying business or undertaking. This is an autonomous rule, accordingly it is irrelevant whether the national law applicable under Art. 16 takes the same liberal approach.14 The term transfer includes both the transfer by individual assignment of the CTM and by way of legal succession, such as an acquisition of a business or inheritance. A transfer will also occur if a company is restructured in a manner that creates a new legal entity. Whether this is the case will depend on the applicable corporate law. The relevant test for the delineation between a mere change of name and a transfer 10 is whether the restructuring measure leads to a full reallocation of ownership. If the latter, for instance in the case of a merger, provides (or rather pro forma declares) that the involved legal entities are considered to remain the same15 then from the perspective of the CTMR this will not qualify as a transfer under Art. 17, but merely as a change of name. Although it should of course be registered (for details see Art. 16 mn. 40 and rule 26 CTMIR), it is not subject to the further requirements of paras. 2–8.16 In case the restructuring measure also has administrative repercussions, such as a change of seat or establishment, it should be kept in mind that this may similarly necessitate recordal in the register and lead to a change of the applicable law under Art. 16 CTMR (see above Art. 16 mn. 18, 39). As the second part of the sentence points out a divisional transfer is permissible. In 11 this case the transfer only covers some of the goods or services for which it is registered. 12 Convention on Jurisdiction and Enforcement of Judgments in Civil and Commercial Matters, 30 October 2007, OJ L 339, 3 et seq., which attributes jurisdiction in disputes connected to the EU (without Denmark) on the one hand and Switzerland, Norway or Iceland on the other. 13 See the reference to the law governing legal persons in Art. 3 CTMR. 14 Of other opinion v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 11. 15 Cf. OHIM, Manual for Proceedings before OHIM Part E 3 1, 2 with references to specific national rules. 16 Cf. Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 1.

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12

13

14

15

Community Trade Mark Regulation

By contrast, other limitations and in particular a geographical division are not permissible, because a transfer for part of the Community would violate the unitary character and split the Community up into individual markets.17 Contracting parties aiming at exclusive use of the CTM in different parts of the internal market, e. g. in different Member States, of course are free to agree on an exclusive licence under Art. 22. A divisional transfer will lead to a full division of the trade mark. From the point of registration of the transfer there will be two separate CTMs that share the same filing or priority date respectively, but relate to different classes of goods and services. The two specifications of course may neither be broader than the original specification, nor may they overlap (Rule 32 CTMIR).18 With regard to the transferred partition a new file is set up (Rule 32 (4) CTMIR) and the transferee is entered into the register as its proprietor. The registration of a divisional transfer (for details see para. 5) will have substantive and procedural effects. First of all the national law applicable by virtue of Art. 16 will of course depend on the seat, domicile or establishment of the new proprietor (see above Art. 16 mn. 39). Insofar as proceedings concerning the original CTM are pending the transferee will ex officio become party to such proceedings. For all procedural steps taken after the relevant date the procedural fees will fall due for each of the partitioned CTMs. Whereas the consequences are clear from a legal perspective it should be noted that – unless both proprietors belong to the same group of companies or the division is the result of attempt to resolve a dispute19 – from an economic perspective a divisional transfer may imply considerable risks for the proprietor.20 The fact that both CTMs will have the same priority at the same time means that neither proprietor will have any trade mark claims against the other even if they are used for alike products.21 In case of further development of the product portfolio this may lead to market confusion. In this respect attention must be paid to the fact that a friendly settlement22 between the proprietors of the now separate CTMs will not qualify as a licence contract under Art. 22 CTMR23 and thus not profit from the protection of priori rights under Art. 23 CTMR. If one of the two proprietors thus decides to transfer its trade mark to a third party the latter will not be bound by any restrictions imposed by contractual obligations. Any transfer requires that the CTM concerned is clearly indicated,24 which usually is done by quoting the registration number.25 It is recommendable to actually refer to the registration number in the contract document itself as there has been some concern that the reference to an appendix listing all IPRs covered by the contract may not fulfil the formal requirements under para. 3.26 In case of corresponding national trade marks these of course don’t have to be transferred alongside, as both rights are fully 17

Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.5.2. Cf. Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 2. 19 Ohlgart/v. Bomhard, in v Mu ¨ hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 73. 20 V. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 15. 21 Ohlgart/v. Bomhard, in v. Mu ¨ hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 73 with the advice that a licence may be a practicable alternative. 22 Cf Art. 57 para 4. 23 Elmenhorst, WRP 2012, 1356, 1357 with reference to German Federal Cour of Justice (BGH), decision of 13 April 2000, I ZR 220/97 – Subway/Subwear; also compare the Guidelines on the CTMIR which defines ‘A licence refers to a situation where the rights of the licensee in the CTM arise from a contractual relationship with the proprietor. The proprietor’s consent to, or tolerance of, a third party using the trade mark does not amount to a licence.’ 24 OHIM, 2nd Board of Appeals, 21 June 2002, R 769/200-2 – Miss Intercontinental mn. 18 et seq. 25 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 5. 26 Ingerl, Die Gemeinschaftsmarke, p. 110; Fezer, Markenrecht, Part. F. Gemeinschaftsmarkenrecht, mn. 38. 18

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independent. Accordingly, the agreement to transfer a CTM will as a general rule not extend to parallel national trade marks. However, it should be noted that CTM and national trade marks also may block each other and if held by different proprietors even may raise issues of invalidity or revocation.27 For the sake of clarity it may be mentioned that a transfer disregarding these 16 limitations, i. e. either contains a territorial limitation or an overlap of similar classes will be null and void ab initio28 unless under the applicable law the non-conformance can be cured by ordinary means of contract construction. Of course the office in such case will dismiss the application for entry into the register.

2. Presumption of business transfer to include CTM (para. 2) Para. 2 states the presumption that unless otherwise agreed the transfer of an 17 undertaking shall automatically include the transfer of all CTMS held by such undertaking. Sentence 2 clarifies that the underlying contract should be interpreted accordingly. Strictly speaking this rule exceeds the scope of the lex protectionis and intrudes on the domain of applicable contract law, as it apparently is a rule of supplementary contract construction.29 However, it was held to be necessary in order to take heed of those national private laws which – such as for example Austria, Estonia, Germany and Greece – strictly differentiate between the obligation to transfer on the one hand and the agreement effecting the transfer on the other hand. The ratio of the rule is that even though the CTMR accepts the concept of a trade mark being an independent asset in the usual course of business its main function is to indicate the origin of particular goods and services. Accordingly, the transferee who acquires the business that markets these goods or services will usually intend to continue with the use of the trade marks. This suggests that the general rule is still that trade marks go with the business, whereas the separation of trade mark and production facilities remains the exception.30 As the second part of the sentence puts it such agreement to the contrary must not 18 necessarily be mentioned expressly but may also be derived from the context of the transaction. However, the phrase ‘circumstances which clearly dictate otherwise’ does not only set a rather strict standard of interpretation, but also suggests that it is the original owner who bears the burden of proof that he did not intend to transfer the CTMs alongside the business entity.31 It is a logical consequence of the nature of a presumption that the transfer of CTMs 19 encompassed by the transfer of an entire business will not depend on any particular formal requirement.32 The pre-conditional valid transfer of the undertaking will be determined by the applicable rules of private law or company law respectively and if valid will simultaneously effect the transfer of the CTMs. The practical relevance of this exception lies in cases of transfer or restructuring of large (groups of) companies where in the course of the transaction there may be some doubts on the exact contents of the trade mark portfolio.33 27

Cf. McGuire, GRUR 2011, 767, 770. Cf. Austrian Supreme Court (OGH) 16.12.2010, 17 Ob 18/10 m; Zorzi, GRURInt 1997, 781, 791. 29 Zorzi, GRURInt 1997, 781, 792. 30 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 11. 31 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 11. 32 Cf. High Court of Justice, My Fotostop Ltd (in administration) v Fotostop Group Ltd (UK), where the court held that because the CTM will follow the business the requirement of being in writing does not apply. 33 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 22. 28

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Despite the presumption it is highly recommended – and accepted standard practice – not to rely on para. 2, but instead to accurately mention the registration numbers of all CTMs covered by the transfer.34 In order to assure that no trade mark is left out by accident the parties can ask the office to supply a list of all trade marks currently registered in favour of the transferor (cf. Rule 90 CTMIR).

3. Formal requirements (para. 3) Para. 3 on formal requirements makes a reservation in favour of transfer ordered by court judgment, a general legal succession or the transfer of an entire undertaking and thereby in its essence states that a contractual assignment of individual CTMs has to be made in writing. As the reference to acts of transfer for which this formal requirement does not apply is explicit and exhaustive the term ‘assignment’ refers to all other acts of transfer including transactions, which under the applicable law may be qualified as unilateral, such as a (testamentary) donation.35 The CTMR – in line with the law of many Member States36 – sets the standard that a transfer of proprietorship has to be in writing. There has been an argument that the text is inconsistent, because the formal requirements concern the transfer as such, whereas the signatories are referred to as ‘contracting parties’.37 However, it must be kept in mind that national private law differs as to whether such transfer is effected by the contract itself or by a separate transfer agreement.38 It may be added that even where the applicable national law does differentiate between the contract establishing the obligation to transfer and a separate agreement on the transfer both will regularly be combined in a single document rendering the subtle differentiation of minor significance. In the rare case that there are two documents, a contract and a subsequent transfer, the spirit of the rule requires that both are in writing.39 22 Although clear from its wording in this respect the rule has spiked the discussion whether it merely sets a minimum standard and thus merely displaces more lenient rules, but leaves room for national law to impose additional formalities40 or contains full harmonisation. The predominant opinion holds that additional formal requirements of the law applicable under Art. 16, such as a certificate of a public notary41 or the requirement established by German judicature that the document has to contain all relevant contract terms and both signatures have to be on the same document42, will 21

34

v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 11. Of other opinion v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 21, who states that the wording is too broad and has to be corrected by interpretation. 36 Art. 24 (3) UK TMA, Art. 38 (3) Irish TMA, Art. 163 in conjunction with Art. 67 Polish Industrial Property Law; Art. 2.31 Benelux CIP, Art. L714-1 French Code de la Proprie´te´ Intellectuelle. 37 Ingerl, Die Gemeinschaftsmarke, 109; Fezer, Markenrecht, Part F. Gemeinschaftsmarkenrecht, mn. 38. 38 This distinction is unknown under legal systems which follow the so called consensual system, such as Artt. 711, 1138, 1583 French Code Civile or Artt. 1462–1464 Spanish Codigo Civil. For further details see Study Group on a European Civil Code, Principles of European Law, Transfer of Title in Moveables (2011), 410. 39 Hacker, in Stro ¨ bele/Hacker (eds.), Markenrecht, § 27 MarkenG mn. 65. For the contrary opinion see Fammler, WRP 2006, 534, 536. 40 Cf. Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 1 and 3; v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 20 and Schennen, in Eisenfu¨hr/ Schennen (eds.), GMVO, Art. 17 mn. 18. 41 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 4. 42 Cf. German Federal Court of Justive (BGH) 23 June 1992, X ZR 98/90 – Magazinbildwerfer, GRUR 1992, 692 with regard to the parallel rule in Art. 72 EPC. 35

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apply and may similarly render the transaction void.43 However, this interpretation appears questionable. As a general rule an IP contract can be formed like any other contract under the law applicable to the contract. Yet, some national trade mark laws require a transfer to be in writing, in some countries similar rules may require writing for other types of IP contracts, such as security interests or licenses. So far no uniform rule has been established. The issue is further complicated by the notion of favour contractus, which – roughly stated – provides that contracts will be held to be valid if they comply either with the law applicable to the contract or to the law of the state where the contract has been concluded.44 It is quite obvious that this rule intends to preserve the validity of contract against pitfalls resulting from a lack of uniformity, but also to protect a party from the opposing party to in bad faith free itself from obligations incurred by invoking formal flaws of a contract.45 This rule – without doubt appropriate for contracts in general – however appears insufficient for the present context. Already the mere fact that the rules on formal requirements may differ from country to country appears troublesome, even more so as they may not necessarily be statutory but perhaps have been developed by case law and thus may easily be overlooked by parties from other Member States. In addition strict or vague requirements may have severe repercussions on the trade mark system as such, as the lack of formal validity will not only nullify the present transaction, but may have a similar impact on subsequent transactions, whether or not they have been registered. Accordingly, there is a public interest in a clear-cut and easy to handle rule. Taking into account the context of the rule, which without doubt provides a comprehensive rule with regard to the events of transfer mentioned in para. 2, the principle of autonomous interpretation strives for uniformity and militates against the interpretation as minimum standard. Accordingly, the writing requirements sets a uniform standard that will prevail over both more lenient and stricter standards of national trade mark or contract law.46 Unless the assignment is stated in a written document and signed by both transferor 23 and transferee the transfer will be void. The rule in its essence resembles those of comparable international47 or Community instruments48 and smoothly interlocks with the registration requirements, as the application for an entry into the register similarly requires a written declaration and can be complied with by an excerpt copy of the transfer agreement (Rule No. 31 (1d) in conjunction with para. 5 c CTMIR) As mentioned above the last sentence of para. 3 adds a further exception from the 24 writing requirement for a transfer effected by a judiciary decision, which as the more severe form naturally will replace the writing requirement. With regard to the term of ‘judicial decision’ it suggests itself to interpret it in line with the definition of Art. 2 a Brussels Regulation.49 Next to ordinary courts it will also include administrative bodies, which for instance may issue the heir’s certificate or render similar decisions. Whether this also should apply to arbitral awards50 by contrast appears questionable, as they 43 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 4.; Ohlgart/v. Bomhard, in v. Mu¨hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 74. 44 See for an example Art. 11 Rome I Regulation. 45 Fawcett/Torremanns, Private International Law, 14.175 et seq. 46 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 24. 47 Art. 74 EPC. 48 Cf. Art. 23 CPVR. 49 It reads: ‘For the purpose of this Regulation: ‘judgment’ means any judgment given by a court or tribunal of a Member State, whatever the judgment may be called, including a decree, order, decision or writ of execution, as well as a decision on the determination of costs or expenses by an officer of the court.’ 50 But see v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 23, who suggest to apply the same rule to arbitral awards.

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neither fulfil the required standard from a formal nor from a substantive perspective. Accordingly it is not the award but rather the recognition of such award which will substitute the written form.

4. Refusal to register transfer due to misleading character (para. 4) Para. 4 confers the discretion on the office to refuse the entry of a transfer into the register in case it would mislead the public concerning the nature, quality or geographical origin of the goods or services in respect of which it is registered, unless the successor agrees to avoid deception by limiting the registration to goods or services. The rule apparently is inspired by some national models51, but – as the wording and in particular the possible sources of dilution show – corresponds to both Recital 7 and Artt. 7, 51 (1c) CTMR.52 Accordingly, its main function appears to be an effective prevention against circumvention of the latter rule, as otherwise a person who would be unable to register a CTM from the outset could reach the same result by having an agent – or straw man – filing an application and then obtain it by transfer. Although it appears fully consistent to refuse the transfer of a CTM in case the application by the transferee would be refused under Art. 7 CTMR – and this caveat to free transfer is explicitly referred to as on overriding interest in the recitals53 – the rule has spiked much criticism.54 Some have challenged whether it is the duty of the office to act as the guardian of competition and consumer interests.55 In addition it is argued that even the sole example given in the memorandum preparing the CTMR, namely the transfer of an indication containing a geographical indication to a transferee, who has his seat beyond the indicated region,56 would not per se qualify as misleading in the meaning of Art. 7, because the person of the proprietor as such does not indicate the prospective use. It may well be that he will not use the CTM himself, but license it to a person – for instance the former proprietor – who produces the relevant goods in the respective region. As long as there is an admissible possibility of prospective use the office should exercise restraint, as it is beyond the office’s duty to speculate on prospective forms of use.57 Further it is pointed out that the rule is obsolete as in case the actual later use is misleading the CTM can be revoked under Art. 50 (1c). However, even if it is convincing to postulate that the office should exercise its discretion with restraint there may be some rare cases, where it is justified to apply the rule. As mentioned above the rule further is necessary to assure consistency with Artt. 7 and 51, insofar the criticism seems exaggerated. 26 This said it must be admitted that there is some lack of clarity regarding the legal consequences of a refusal of registration, which seems to be a consequence of the controversy on the effects of registration under para. 5 (see below mn. 29), but is also fuelled by a misleading statement in the preparatory materials.58 Some hold that the 25

51 See for example Art. 23 (4) Italian TMA (for details see Zorzi, GRURInt 1997, 218 et seq.), Art. 47 (2) Spanish TMA and Art. 27 (2) Irish TMA. 52 Cf. Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 5. Also note the express reference in the Manual for Proceedings before OHIM Part E 3 1, 3.6.1. to Art. 7 para. 1 g CTMR. 53 Recital 11 emphasises that a trade mark should be transferred, subject only ‘to the overriding need to prevent the public being misled as a result of the transfer’. 54 Cf. AIPPI Q 85, Resolution on Art. 17. 55 Ingerl, Die Gemeinschaftsmarke, p. 111. 56 Draft Proposal on a Community Trade Mark Regulation, 30 December 1980, OJ C 351, p. 1. 57 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 35. 58 Memorandum on the Creation of an EEC trade mark, SEC (76) 2462, mn. 144, 147 which on the one hand states states that the transaction will be invalid if likely to deceive the public, but on the other that registration is not a requiement for validity inter partes.

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Transfer

Art. 17 CTMR

transfer is valid but the CTM will be forfeited if it turns deceptive.59 The predominant opinion seems to be that the transfer as such is valid,60 but the CTM may in case of actual misleading use by the transferee be declared void on application.61 Even though similar rules may be found in national trade mark law,62 both results remain unsatisfactory. The first because it is to harsh. If not the CTM as such, but only the transfer is the source of deception then there is no need to cancel the CTM and thereby destroy a potentially valuable asset. The second avoids this consequence, but poses significant dogmatic and practical problems, as it is both disturbing that a person who could not have obtained the CTM is the lawful proprietor and that the transaction takes place outside the register – with a deadlock resulting from paras 5–7 and Art. 23 (see below mn. 30). Against this background it appears more convincing to hold that a transfer which causes the risk of deception as such is invalid ab initio63 and the refusal by the office only ascertains the invalidity. This is in line with the practice established under the previous version of Art. 5, in case the transfer failed due to the lack of capacity to become proprietor64 and the current practice in case of inadmissible divisional transfer (see above mn. 16). Accordingly, the refusal would result in the original proprietor retaining the CTM.65 The transferor – unable to fully perform the contract – would remain entitled to exercise the rights arising under Art. 9, thus the deadlock which occurs under the prevailing opinion would be prevented. Keeping the purpose of the rule in mind this consequence seems adequate, as it both secures the public interest expressed in Art. 7 (1)(g) and does not overly burden the parties.66 Although the impediment appears to be of very restricted practical relevance67 it in any case appears recommendable to take precautions by a condition subsequent or a right of rescission.68 For example, the parties may provide that the transfer is not effective until it is executed by both parties and approved or registered by the Office. Despite the fact, that the discussion on para. 4 sheds some light on the interpretation 27 of para. 5 there apparently is a significant between the effort of its accurate interpretation and the practical relevance. Insofar the current reform proposal to delete para. 469 seems adequate. 59

This was the original rule in Art. 112 of the 1964 Draft. Ohlgart/v. Bomhard, in v. Mu¨hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 74; Fezer, Markenrecht, F. Gemeinschaftsmarkenrecht, Introduction mn. 118; Schennen, in Eisenfu¨hr/Schennen (eds.), GMVO, Art. 17 mn. 62; Ingerl, Die Gemeinschaftsmarke, p. 111; v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 36; Fammler, WRP 2006, 534, 536. 61 Fezer, Markenrecht, F. Gemeinschaftsmarkenrecht, mn. 38; similar v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 36 and Fammler, WRP 2006, 534, 536. 62 For a comparative analysis see Kur, GRUR 1997, 241, 250 et seq. 63 See Memorandum on the Creation of an EEC trade mark, SEC (76) 2462, mn. 143 et seq., which expressly states that it is a requirement for the validity of the assignment that the use by the new owner is not likely to deceive the public. 64 On the consequences of incapactiy under Art. 5 before amended see v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art 17 rmn. 32. 65 Hoyng, in Franzosi (eds.), European Community Trade Mark, 273, 274. 66 The obvious advantage of this approach it that is assures consistency with Art. 7, cf. McGuire, GRUR 2008, 11, 17; Zorzi, GRURInt 1997, 782, 785, 790 et seq. 67 Cf. Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 5.; Ohlgart/v. Bomhard, in v. Mu¨hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 14; v. Kapff, in Ekey/ Klippel (eds.), Markenrecht, Art. 17 Rdnr. 35. 68 This was proposed by Ohlgart/v. Bomhard, in v. Mu ¨ hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 75. 69 Draft Community Trade Mark Regulation 27 March 2013, COM(2013)161 final. 60

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5. Registration of transfer (para. 5) Para. 5 provides for the recordal of all transfers in the register. It applies independent of the reason for transfer, i. e. whether it is a result of contractual agreement or an order form a court or other competent authority. It should be noted that with regard to the latter para. 2 disposes of the writing requirement, whereas the rules of paras. 5–7 regarding registration remain unaltered. 29 The rule simply states that on request of the parties the transfer shall be entered in the register and published, but does not provide any further indication on the effects of such registration or on the validity of the transfer. Neither is this gap filled by paras. 6 and 7 as they only cover the requirement of registration as pre-condition for standing before the office. Inspired by the wording that leaves it to the parties to seek registration the unanimous opinion states registration is not mandatory70 or – differently put – not constitutive.71 Yet it is held that registration is not only highly recommendable, but that a transferee lacking registration will not be entitled to enforce any rights arising from registration of his trade mark.72 The predominant opinion therefore assumes that a transfer without registration will lead to a temporary split of formal and substantive legal position:73 The former transferor is devoid of any substantive claims including all remedies from infringement, the transferee due to a lack of registration is not yet entitled to exercise his procedural rights.74 A similar problem arises under Art. 23: the transferor still entered as proprietor in the register will be able to transfer the CTM, grant rights in rem or licence it out to a third party who – good faith provided – will validly obtain the promised legal position. By contrast, the transferee, supposedly the lawful proprietor, cannot apply for recordal of any dispositions he takes in favour of his contracting partners, which accordingly will not obtain protection under Art. 23. The full picture of the legal situation between the transfer agreement and registration thus displays, that neither the transferee nor the transferor would enjoy the protection under Art. 9: the transferor for lack of substantive entitlement, the transferee due to lack of registration. 30 This phenomenon has been accurately described as a deadlock or grey-zone75, but naturally raises some doubts whether the proposition that the transfer takes full effect without registration, is correct.76 At the same time it is particularly striking that the lack of registration may favour the infringer.77 A probable explanation of the dissonance is the proposition that the CTMR as far as not explicitly stated otherwise follows the same rules as national trade mark law. But as a matter of fact a comparative law analysis78 shows that there are three entirely different approaches to the effects of registration: 28

70

Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 6. Ingerl, Die Gemeinschaftsmarke, p. 110; Fammler, WRP 2006, 534, 536; also cf. Schennen, in Eisenfu¨hr/Schennen (eds.), GMVO, Art. 17 mn. 22 et seq.; Fezer, Markenrecht, § 28 MarkenG, mn. 5; v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 25; Engin-Deniz, Markenschutzgesetz, § 11 mn. 3. 72 Expressly Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 17 mn. 23; Ohlgart/v. Bomhard, in v. Mu¨hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 75. 73 Fezer, Markenrecht, F. Gemeinschaftsmarkenrecht, mn. 38. 74 Fezer, Markenrecht, F. Gemeinschaftsmarkenrecht, mn. 38; Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 17 mn. 22 et seq. 75 Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 17 mn. 25. 76 See the argument that such a state of uncertainty contradicts the principle of procedural efficiency for the comparable situation under German law, where the court held that someone must be entitled to maintain proeedings, German Federal Patent Court (BPatG) 9.11.2004, 27 W (pat) 192/02. 77 Compare Juris Classeur Fasc. 7404: Cession de Marcque, No. 4 with reference to Cass. Ass. Ple ´n., July 16, 1992); Bouvier/Ravon, Propriete industrielle no 12, 2012, form. 4. 78 For details see McGuire, GRUR 2008 11, 12 et seq. with further references. 71

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The first – which for example is represented by German law – is that the transfer as such takes places outside the books, any registration will be merely declaratory.79 If all requirements of the transaction prescribed by private law are fulfilled the transferee has obtained the full legal position, whether or not he has been entered into the register. Therefore the transferor as the previous proprietor is unable to further dispose of the trade mark and the nemo dat rule applies. A subsequent transfer of the trade mark, grant of a right in rem or a licence to a third party will be invalid, whether or not the transaction has been registered. At the same time the transferee can exercise all his rights arising from the trade mark, including contractual exploitation and enforcing his right. Although it may well be that the substantive (private law) and formal (registration) position diverge this is of limited effect, as registration primarily serves legal efficiency of administrative proceedings, namely to spare the office the scrutiny of who is the lawful proprietor. The second – which for example may be found in Austrian law80 – is that registration is mandatory and a requirement of a valid transfer. Accordingly the transfer agreement of the parties will only generate the obligation to transfer, but the effect of the transfer requires entry into the register. Prior to registration the transferor – although he is under an obligation to the first transferee not to – remains able to take a contrary disposition. If he disposes of his trade mark, be it that he transfers it to another party, grants a right in rem or a licence agreement, the later (former/prior?) disposition will take priority, provided that it is entered first. By contrast, all dispositions taken by the transferee before the registration will not have any effect unless he later is registered. As registration is constitutive for the validity of the transaction the register by definition is correct. Naturally registration of the transaction thus is also a requirement for standing before the office in an administrative proceedings and the court in infringement proceedings respectively. The third – which is commonly referred to as the French81 – system with regard to validity of a transfer clearly distinguishes between the relationship of the contracting parties on the one hand and the relationship vis-a`-vis third parties on the other.82 The transfer is valid inter partes immediately as soon as all required steps, usually the conforming declarations of intent delivered in the required form, have taken place. In order to validate the transaction with effect against third parties (opposabilite´ aux tiers83) there is the additional requirements of registration. In the mean time, i. e. between the transfer agreement and registration, the transferor may not but can validly effect contrary dispositions. Only a mala fide third party may not rely on a lack of publicity as the provisions requiring validation by registration in their essence serve the protection of bona fide third parties. Next to establish protection of good faith registration of course also serves the simplicity of administrative proceedings. This brief analysis displays that the predominant opinion on the function of the 31 CTM register is inconsistent as it mixes the legal consequences of the different system 79

Cf. German Federal Court of Justice (BGH) 23.6.1992, X ZR 98/90 – Magazinbildwerfer, GRUR 1992,

692. 80

Cf. § 28 Austrian TMA in conjunction with § 43 Austrian Patent Act. Cf. Art. L 714–7 (1) French Code de la Proprie´te´ Intellectuelle reads: ‘Any transfer or modification of right under a registered trade mark shall only be opposable to third parties if entered in the trade mark register.’ Similar rules may inter alia also be found in Belgian (Art. 2.33 BCIP), Italian (art. 139.1 Codice della proprieta industriale) and Spanish trade mark law (Art. 46 Ley de Marcas). In effect the same applies under Art. 25 (3) UK TMA. 82 Thereby the standard solution of French private law (cf. Art. 711, 1138 und 1583 Code Civil) is evenly applied to trade marks. 83 Juris Classeur F Transferts mn 456 et seq. 81

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without giving account for this presumption. The statement that transfer takes place independent of the registration matches the German system, the concept that the transferee lacking registration is not entitled to bring enforcement proceedings would be in line only with the Austrian system, the assessment of bona fide acquisition follows the French rule.84 32 As the travaux preperatoires85 but also – and more importantly – the wording of Art. 23 and the concept of the strong registration system display the CTMR has adopted a rule resembling the French and Benelux system. Accordingly, is not a prerequisite for the validity of the transfer inter partes.86 Thus as soon as the succession in title takes place it as such rids the transferee of his power to further dispose (nemo dat), but as long as the transfer has not been recorded any contradicting disposition will be protected under Art. 23 provided that the third party is in good faith. The lengthy discussion whether or not registration is declaratory or constitutive misses the point as it cannot denote the differentiation between validity inter partes and effect vis-a`-vis third parties. In fact the transferee will neither enjoy full protection under private law nor be able to stand before the office unless registered. 33 Whether registration is a requirement for enforcing claims arising from infringement depends on the notion of ‘third party’. Extending the third party effect to infringers of course would be an additional incentive to ensure immediate registration, but at the same time would allow an infringer to profit from a lack of registration.87 He would not be liable for the consequences of his acts which occurred between the transfer and actual registration, even though the damage he has caused is not dependent on the person entitled. Further Art. 23 both from its systematic context as from its clear wording only relates to the CTM as object of property, i. e. contractual exploitation.88 Thus there is no apparent reason why registration of the transfer is a requirement for instituting infringement proceedings. As the prevailing opinion holds that registration is not a requirement for validity for the transfer, it can neither be one for enforcing the CTM, as Art. 9 entitles the proprietor as such.89 If the courts follow the opposite line of argument and would give up the distinction between validity inter partes and third party effect – a clear cut and easy to handle rule – the transferor would be still entitled to claim compensation under Artt. 9, 101 et seq. CTMR.

84 In fact the Benelux Trade Mark Act 1971 has had a strong influence on the development of the CTMR, see Beier, in Schricker/Beier, Die Neuordnung des Markenrechts in Europa, 1997, p. 59 et seq. The latter originally comprised a similar rule in Art. 11 para. 3, which today may be found in Art. 2.31 Benelux CIP. Memorandum on the Creation of an EEC trade mark, SEC (76) 2462 and the Draft Proposal 1980, COM(80), 635 final 2. 85 Memorandum on the Creation of an EEC trade mark, SEC (76) 2462, mn. 147. 86 Memorandum on the Creation of an EEC trade mark, SEC (76) 2462, mn. 147; OHIM 3rd Board of Appeal, 4 July 2000, R 482/1999-3, mn. 13 et seq. Also cf. OHIM, Manual for Proceedings before OHIM Part E 3 1, Introduction. 87 But compare Art. 25 (4) UK TMA for an intermediate solution balancing interests by the general requirement of recordal, subject to the exeption that registration has not been ‘practical’. The similar rule in Art. 29 (4) Irish TMA provides for an addditional grace period of 6 months after the transaction for registration. 88 See the Manual Concerning Proceedings before OHIM, Part E, Section 3, Chapter 1 Introduction and Schennen, in Eisenfu¨hr/Schennen (eds.), GMVO, Art. 23 mn. 2. A German regional court has explicitly confirmed that registration is only relevant with regard to conflicting contractual dispositions, see LG Bremen 24 April 2008, 9 O 2228/07. 89 This interpretation will correspond to Artt. 11C, 13 former Benelux Trade Mark Act (which was later replaced by the current Art. 2.21, 2.33 Benelux CIP), cf. Benelux Court of Justice (BCoJ) 28 February 2003, NJ 2003, 284 – P Zoontjens Beheer v Kijlstra Beton.

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Transfer

Art. 17 CTMR

In case infringement proceedings have been instituted by the transferor before the 34 transaction took effect the procedural consequences will be governed by the applicable civil procedure law on the effects of a transfer of the objet in controversy in the course of litigation. The formalities of registration are closely set out in rule 31 for transfers and rule 32 35 CTMIR for partial transfers respectively. Registration requires an application that can be filed either by the transferor or the transferee. Whether any additional documentation is required depends on who applies to the office. Rule 32 para. 5 CTMIR sets out three different possibilities to provide proof that a transfer has actually taken place: (a) In case the transferor and transferee apply an application duly signed by both will suffice; (b) Application solely by the transferee must be accompanied by a signed declaration of the registered proprietor that he agrees to registration; (c) In the alternative the application by one of the parties can be supplemented by the transfer document. If the transfer is the result of a transfer of the entire business, of a universal succession or of a judgment, the respective documents have to be provided. However, the parties instead can use standard recordal application forms available online, which – depending on the content of the contract – may be recommendable, as all documents will be part of the publicly available file. Independent of which documents have to be filed there are no particular formal 36 requirements, thus a mere copy will be sufficient. Whereas the CTMR originally provided that the applicant for registration of a transfer had to pay a fee of EUR 200 per CTM (or a maximum of EUR 1,000 for combined applications regarding several CTMs), the reform of 2004 has abolished the fee for recordal of transfer. As soon as all requirements are met the transfer will be recorded in the register and published in the CTM Bulletin. With regard to CTM applications the transfer will be recorded in the application file. In case the Office refuses recordal an appeal lies against such decision. The details on registration procedure and possible remedies follow the general rules for all recordals (see below Art. 23 mn. 12).

6. Effect of registration (para. 6) Para. 6 concerns the effects of (lacking) registration. It is beyond doubt that it 37 applies to all administrative procedures before the Office and consequently also with regard to the European courts in case a decision of the latter is challenged in appellate proceedings.90 The predominant opinion further holds that the transferee unless registered will not be entitled to enforce the CTM before the ordinary courts. This is in fact would correspond to the predominant opinion in many Member States, but hardly matches the structure and systematic position of the present rule (cf. above mn. 33), but also neglects the difference of wording between Art. 9 on the one hand and Art. 17 (6) on the other. Whereas the first refers to exercising the rights from the CTM as such, the present rule refers to the rights resulting from ‘registration’ of the CTM. Accordingly para. 6 should be construed narrowly to apply only to the standing in administrative proceedings.

7. Compliance with time-limits (para. 7) Whereas para. 6 states the general rule that the Office will only deal with a registered 38 proprietor para. 7 provides for an exception in favour of the transferee. Insofar as this 90

Ingerl, Die Gemeinschaftsmarke, p. 110.

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CTMR Art. 18

Community Trade Mark Regulation

is necessary to observe time limits vis-a`-vis the office the transferee will be heard before the Office even though not formally recorded in case his request for registration has been received by the Office. The applicability of para. 7 therefore is restricted to the duration of the registration proceedings, which usually only take a few days, but of course may be prolonged in case the formalities of the application are either defective or the Office raises some doubts whether the transfer is admissible under para. 4. The opportunity of the transferee to ensure compliance with time limits may be of practical relevance both with regard to opposition proceedings and application for renewal of a CTM. However, attention should be paid that all notifications by the Office – for instance on impending expiration of the CTM – according to para. 8 will only be sent to the registered proprietor, i. e. the transferor, even after the application for recordal has been received.91 Therefore the transferee will have to observe any pending time-limits of his own accord. The rule at the same time implies that time limits per se are not interrupted by the transfer, although the Office on receipt of a request for recordal of a transfer may issue a letter suspending opposition proceedings.92

8. Service of documents (para. 8) 39

As soon as a CTM is registered the Office is under the duty to inform the registered proprietor of relevant events and administrative issues, in particular with regard to deadlines, fees or new applications which bear a potential for conflict.93 Para. 8 clarifies that the Office will discharge this duty by sending the respective notifications to the person who is registered as the current proprietor. Accordingly, the failure to register a transfer will deprive the transferee of this service.

Article 18 Transfer of a trade mark registered in the name of an agent Where a Community trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor’s authorisation, the latter shall be entitled to demand the assignment in his favour of the said registration, unless such agent or representative justifies his action. Bibliography: Tobias Cohen Jehoram, Constant van Nispen & Tony Huydecoper, European Trademarks Law, Wolters Kluwer 2010, 489, 503; Marina Couste/Amaury de Saint Amand, ‘La fraude au de´poˆt des marques en droit français et communautaire: tel est pris que croyait prendre…’, Propriété industrielle, June 2004, No 6 Etude 10, para. 41.

Content I. Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Importance and role of the provisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. General remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Requirements for the application of Artt. 11 and 18 CTMR . . . . . . . . . 1. Definition of the ‘proprietor of that trade mark’ . . . . . . . . . . . . . . . . . . . . a) Proprietor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Trade mark. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 1 5 7 7 7 9

91 But see the criticism and the deviating proposal of Ohlgart/v. Bomhard, in v. Mu ¨ hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 76. 92 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 8. 93 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 9.

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Transfer of a TM registered in an agent’s name

Art. 18 CTMR

2. Definition of ‘agent’ or ‘representative’ of the trade mark proprietor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Nature of the relationship . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Form of the relationship . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Relevant points in time . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Application filed in the name of the agent . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Absence of proprietor’s authorisation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Application related in essence to identical or similar signs . . . . . . . . . 6. Use not authorized by the proprietor of the trade mark . . . . . . . . . . . . 7. Possible justification by the agent or representative of his action . III. Enforcement of Artt. 11 and 18. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

12 12 16 17 19 20 24 26 28 31

I. Introduction 1. Importance and role of the provisions Artt. 11 and 18 CTMR originate from Art. 6septies of the Paris Convention for the 1 Protection of Industrial Property which was introduced into the Convention by the Revision Conference of Lisbon in 19581 and sets forth that: ‘(1) If the agent or representative of the person who is the proprietor of a mark in one of the countries of the Union applies, without such proprietor’s authorisation, for the registration of the mark in his own name, in one or more countries of the Union, the proprietor shall be entitled to oppose the registration applied for or demand its cancellation or, if the law of the country so allows, the assignment in his favour of the said registration, unless such agent or representative justifies his action. (2) The proprietor of the mark shall, subject to the provisions of paragraph (1), above, be entitled to oppose the use of his mark by his agent or representative if he has not authorized such use’. [emphasis added] Artt. 11 and 18 CTMR govern the situation where a registration is filed in the name 2 of an agent or representative of a trade mark proprietor and/or used without his authorisation. These provisions set forth the conditions under which the proprietor of the trade mark may oppose the use of its trade mark (Art. 11 CTMR) or request its assignment in his favour (Art. 18 CTMR). The rationale underpinning such provisions lays in the necessity to prevent, notably – 3 and often – after a contractual relationship has ceased, ‘the misuse of a mark by the trade mark proprietor’s agent, as the agent may exploit the knowledge and experience acquired during its business relationship with the proprietor’, business relationship which was limited in time. Such agent would thus, for an unlimited period of time, ‘improperly benefit from the effort and investment which the trade mark proprietor himself made’2. As outlined by Opposition Guidelines issued by the OHIM, ‘the unauthorized filing of the owner’s trade mark by his agent or representative is contrary to the general obligation of trust underlying commercial co-operation agreement of this type’. In this respect, Artt. 11 and 18 CTMR follow the same goal as Art. 8 (3) and 1 It shall be reminded that Artt. 11 and 18 CTMR implement such provision only to the extent it gives the rightful owner the right to prohibit the use of the trade mark and to demand the transfer of the registration to his own name. The other elements of Article 6septiesare implemented by Artt. 8 (3) (right to oppose the registration) and Art. 52 (1)(b) (right to demand the cancellation of the registered trade mark). See Opposition Guidelines, Part 3, Unauthorized filing by agents of the TM owner (Art. 8 (3) CTMR). 2 GC Cases T-537/10 and T-538/10 Ursula Adamowski v OHIM, available at www.curia.eu Õ search Case law mn. 22; Case T-6/05, DEC-TEC Defense TEchnology v OHIM [2006] ECR II-02671, mn. 38.

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Art. 52 (1)(b) CTMR3 and aim at sanctioning the breach of a fiduciary or a bona fide obligation imposed on contractual or post contractual partners. 4 In this respect, two main differences shall be pointed out between such provisions: – unlike Artt. 52 (1)(b) and 8 (3) CTMR, Art. 11 CTMR entitles a proprietor to request not only the cancellation but also that a competent court prohibits the use of the trade mark at stake; – unlike Artt. 52 (1)(b) and 8 (3) CTMR, Art. 18 CTMR offers a proprietor the ability to obtain, instead of the cancellation of the trade mark at stake, that such trade mark be assigned to him – hence benefiting notably from the earlier application date.

2. General remarks Case-law and administrative practice are more elaborated in connection with Art. 8 (3) CTMR than Artt. 11 and 18 CTMR. Given the common objective sought by such provisions and the similarities between their wordings, we will refer to case-law rendered in application of Art. 8 (3) CTMR – by analogy -, when applicable or necessary. 6 In this respect, the main – cumulative – conditions laid down in Artt. 11 and 18 CTMR may be found in the General Court decision dated 13 April 20114 rendered on the basis of Art. 8 (3) CTMR: – the opposing party – the claimant – must be the proprietor of the earlier mark; – the applicant must be or have been the agent or representative of the proprietor of the mark; – the application must be filed (i.) in the name of the agent or representative, (ii.) without the proprietor’s consent and (iii.) without legitimate reasons; and – the application must relate in essence to identical or similar signs and goods. 5

II. Requirements for the application of Artt. 11 and 18 CTMR 1. Definition of the ‘proprietor of that trade mark’ a) Proprietor. As a preliminary remark, the reference to ‘proprietor of that trade mark’ is, to say the least, imprecise. From a legal standpoint, the agent or representative having registered the trade mark in question is arguably the ‘proprietor of that trade mark’. Instead, by ‘proprietor of that trade mark’, Artt. 11 and 18 CTMR refer to the person who should, but for his agent’s or representative’s illegitimate behaviour, have been the natural proprietor of the trade mark at stake. 8 So as to establish his quality of ‘proprietor of that trade mark’ the Judges accept that an opponent relies upon copies of the registration certificates – and documents attesting the assignment to his benefit – of prior trade marks registered in other countries5. The proprietor may also evidence that he qualifies as a ‘proprietor of that trade mark’ on the basis of the rights of his predecessor in title6. 7

3 Art. 52 (1)(b) CTMR entitles the owner of a trade mark to request the cancellation of the trade mark registered by an applicant acting in bad faith. It constitutes the expression of the general principle that commercial transactions must be concluded in good faith. It shall be noted that Artt. 11 and 18 CTMR grant a narrower and more specific protection since they are subject to the fulfillment of a number of additional conditions. 4 GC Case T-262/09 Safariland LLC v OHIM [2011] ECR II-01629, mn. 61. 5 OHIM, Opposition Division 23 July 2003, No 1483/2003, Laurence E. Gordon Gayle Gordon v Sotorock. Decision rendered on the basis of Article 8 (3) CTMR. 6 OHIM, Opposition Division 19 June 1999, Noraxon USA v Hebert Schachinger, No 401/1999. Decision rendered on the basis of Art. 8 (3) CTMR.

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Art. 18 CTMR

By contrast, claims initiated in the name of third persons, be they licensees or otherwise authorised by the relevant national laws, will be dismissed as inadmissible due to lack of entitlement7. b) Trade mark. The notion of ‘trade mark’ on which the proprietor may rely shall be 9 given a broad acceptation. It shall cover a registered trade mark, a pending trade mark application, as well as an unregistered trade mark or a well-known trade mark – to the extent that the law of the country of origin recognizes it. However, Artt. 11 and 18 CTMR do not refer to any other rights than a trade mark. Hence, such articles do not apply to other distinctive signs used in the course of trade8. In addition, the proprietor shall evidence that his trade mark is older than the one 10 applied for by the agent or representative – taking into account the filing date or, when applicable, the priority date or the time when the sign was used (when relying upon an unregistered trade mark). However, it is irrelevant whether the trade mark of the proprietor is protected within 11 or outside the Community9. Such solution enables the owners of trade marks protecting a sign outside the Community to protect their rights against fraudulent registrations of Community trade marks.

2. Definition of ‘agent’ or ‘representative’ of the trade mark proprietor a) Nature of the relationship. The notions of ‘agent’ and ‘representative’ are to be 12 given a wide interpretation. They may cover all kinds of relationships, based on contractual arrangement, where one party is representing the interests of the other, regardless of the nomen juris of the contractual relationship10. The burden of proof regarding the existence of an agent-principal relationship lies with 13 the proprietor11. In practice, it is sufficient for the proprietor to establish that there exists ‘some agreement of commercial co-operation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the trade mark owner’12. By way of example, OHIM held that a distributor should be considered as an agent or representative. The same shall apply to franchisees, licensees, trade mark agents, attorneys13. This being reminded, a minimum threshold is imposed by the Judges. Some kind of 14 agreement must exist between the parties. An applicant having acted completely independently shall not be considered as an agent or representative of the proprietor. On this basis, it was held that a mere purchaser or client of the proprietor of the trade mark cannot be regarded as an ‘agent’ or as a ‘representative’, since such person is under no specific obligation of trust to the trade mark proprietor14. 7 OHIM, Opposition Division, 30 January 2013, Kyung Jin Corporation v Innovacases, No B 1 926 461. Decision rendered on the basis of Art. 8 (3) CTMR. 8 See by analogy, the analysis applicable to Art. 8 (3) in Opposition Guidelines, page 6. 9 See by analogy, the analysis applicable to Art. 8 (3) in Opposition Guidelines, page 7. 10 SEE by analogy, the analysis applicable to Article 8 (3) in Opposition Guidelines, page 8. 11 OHIM, Opposition Division, 28 March 2013, opposition No B 1 126 715. Decision rendered on the basis of Art. 8 (3) CTMR. 12 OHIM, Second Board of Appeal, 14 September 2004, Case No 460/2003-2, Nu Science Corporation v Basic Fashion Oy. Decision rendered on the basis of Article 8 (3) CTMR. 13 See OHIM, Opposition Division, 21 February 2002, No 174/2002, Jim O’Neal Distributing Inc. v Mark Costahaude pertaining to an agreement covering Japan. Decision rendered on the basis of Article 8 (3) CTMR. 14 GC Case T-262/09 Safariland LLC v OHIM [2011] ECR II-01629, mn. 64; OHIM, Opposition Division, 31 January 2012, No B 2 148 610, Xiantao Hongxiang Non-woven Co. Ltd. V Allied International Trading Limited. Decisions rendered on the basis of Article 8 (3) CTMR.

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In addition, the legal representative or the manager of the proprietor shall not qualify as an ‘agent’ or ‘representative’15. Such solution is in line with the objective sought by Artt. 11 and 18 CTMR, namely, the protection of the proprietor from infringing acts committed by his business partners – as opposed to persons within his company.

16

b) Form of the relationship. There does not exist any requirement as to whether the relationship shall be formalized or not. The relationship between the proprietor and his agent or representative may be formalized in an agreement, result from exchanges or stem from oral discussions. In the absence of a formal agreement, the proprietor of the trade mark may rely upon commercial correspondence, invoices, other documents exchanged or witness statements.

c) Relevant points in time. The commercial co-operation relationship must be established prior to the filing date of the trade mark. Thus, Artt. 11 and 18 CTMR do not apply to prospective agents or representatives – unless the proprietor can evidence that an agreement was entered into after the filing date of the trade mark, but that such agreement is the result of some form of commercial co-operation between the proprietor and his agent or representative which took place before the date of execution of the agreement. 18 This being reminded, it is irrelevant whether the relevant agreement, if any, between the proprietor and his agent or representative is in force at the filing date by the agent or representative of the trade mark – provided that a limited period of time has elapsed since the termination or expiration of the agreement so that one may not argue that the obligation of trust and confidentiality has disappeared. It was for instance ruled that a proprietor is entitled to rely upon the obligation of trust and confidentiality owed by the applicant when a trade mark was filed two months after the ending of their contractual relationship16. 17

3. Application filed in the name of the agent 19

Artt. 11 and 18 CTMR apply to the registrations filed, in his own name, by an agent or representative of a trade mark proprietor. In cases where agents or representatives arrange to have the application filed by a third party, controlled by them, OHIM may rely upon the concept of ‘same economic interest’ between the agent or representative of the proprietor and the applicant to apply Artt. 11 and 18 CTMR. Such concept may e. g. apply when the applicant is an affiliate, a sister company or the legal representative of the agent or representative of the proprietor. Such stance better protects the proprietor against the alleged fraud. Therefore, an apparent discrepancy between the name of the agent or representative and the name of the applicant is not, per se, sufficient to exclude the application of Artt. 11 and 18 CTMR. Instead, in such situation, a case-by-case analysis of the relationships (if any) between the agent or representative and the applicant shall be performed.

4. Absence of proprietor’s authorisation 20

The proprietor must evidence that he never authorized his agent or representative to file the trade mark application in its own name. Yet, requiring from the proprietor that he 15

See by analogy, the analysis applicable to Art. 8 (3) in the Opposition Guidelines, page 9. See OHIM, Opposition Division, 21 March 2002, No 722/2002, Defense Technology Corporation of America v DEF-TEC Defense Technology Gmbh. Decision rendered on the basis of Art. 8 (3) CTMR. 16

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proves the existence of a negative fact (absence of consent) would lose the momentum of Artt. 11 and 18 CTMR. Consequently, the OHIM takes the stance that a statement from the proprietor that 21 the filing was made without his consent is generally considered as sufficient, thus reversing the burden of proof. It is therefore for the applicant to justify that he received an authorisation from the proprietor to apply for the registration of the trade mark in his own name. In other words, if the applicant cannot evidence the existence and scope of the authorisation granted to him, the absence of authorisation should be presumed17. The word ‘authorisation’ shall be interpreted such as the word ‘consent’ which has 22 been previously defined by the CJ as follows: ‘consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated’18. Accordingly, the authorisation must be clear, specific and unconditional19. By way of example, the consent of the proprietor to the mere filing, by the agent or representative, of the trade mark is insufficient. The authorisation must cover the fact that the trade mark can be registered, by his agent or representative and in his name. The authorisation must also clearly identify the trade mark at stake20. By way of example, in a case where the representative of the proprietor relied upon a 23 document stating that the proprietor agreed to the use of his original symbol and his company designation throughout Europe as well as the reservation of that symbol, the Judges considered that such provision could be perceived as meaning that the proprietor did not object to the representative operating under the trade name concerned and using, at most on an exclusive basis, the associated mark in the course of its business. However, such document was found insufficient to evidence the existence of the proprietor’s consent granted to the agent or representative to file an application for registration of the sign at stake as a Community trade mark21.

5. Application related in essence to identical or similar signs Since the wording of Artt. 11 and 18 CTMR refer to ‘that trade mark’, i. e. the trade 24 mark of the proprietor, it could be read as requiring that the trade mark registered by the agent or representative be the same – i. e. identical – that the earlier trade mark of the proprietor. However, the OHIM interprets broadly the concept of ‘that trade mark’. Such stance 25 is in line with the Opposition Guidelines on Art. 8 (3) CTMR, which sets forth that such provision shall be applied ‘not only where the respective signs are identical, but also where the sign applied for by the representative or agent essentially reproduces the earlier mark with slight modifications, additions or deletions, which do not substantially affect its distinctiveness’22. Such solution shall be approved as it provides for a better protection of the proprietor of a trade marks, preventing their agents or representatives from

17

See by analogy, the analysis applicable to Art. 8 (3) in the Opposition Guidelines, page 13. CJ Cases C-414/99 and C-416/99 Zino Davidoff v A&G Imports Ltd and Tesco Stores Ltd v Levi Strauss & Co, mn. 45. OHIM, Second Board of Appeal, 7 July 2003, Case R 336/2001-2, Sotorock Holding Limited v Laurence E. Gordon and Gayle Gordon. Decision rendered on the basis of Art. 8 (3) CTMR. 19 GC Case T-537/10 Ursula Adamowski v OHIM, mn. 23; Case T-6/05 DEC-TEC Defense Technology v OHIM – Defense Technology, mn. 40. 20 For an example of consent fulfilling such requirements, see the decision of the General Court in the DEF-TEC Defense Technology v OHIM case: GC Case T-6/05 DEF-TEC Defense Technology v OHIM , mn. 45 to 48. 21 GC Cases T-537/10 and T-538/10, ursula Adamowskiv OHIM, mn. 24 to 28. 22 See by analogy, the analysis applicable to Art. 8 (3) in Opposition Guidelines, page 15. 18

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attempting to circumvent Artt. 11 and 18 CTMR by slightly modifying the sign of the proprietor or the goods and/or services covered23.

6. Use not authorized by the proprietor of the trade mark In addition to the above mentioned requirement, Art. 11 CTMR (as opposed to Art. 18 CTMR) specifies that the proprietor may oppose the use of his trade mark by his agent or representative provided he has ‘not authorized such use’. Hence, Art. 11 provides for a ‘double absence of authorisation’ requirement. Not only must the agent or representative have registered the trade mark without authorisation, he must also use it without authorisation. 27 In other terms, Art. 11 CTMR shall not apply in cases where a proprietor did not consent to the registration but has allowed his agent or representative to use his trade mark. 26

7. Possible justification by the agent or representative of his action Pursuant to Artt. 11 and 18 CTMR, even in absence of the proprietor’s authorisation to file the trade mark application in the name of the agent or representative, the latter may obtain that the trade mark not be cancelled provided he may appropriately justify the reason for having so acted. Such circumstances shall, however, be strictly interpreted and apply in exceptional circumstances only. 29 Two examples of such justifications may be found in the Opposition Guidelines24. The first one concerns the case of tacit consent deducted from failure for the proprietor to react within a reasonable period of time after having been informed by the applicant that he intends to file and register a Community trade mark identical or similar to the proprietor trade mark in his own name. The second one relates to the case where the proprietor makes his agent believe that he has abandoned the trade mark, for example by suspending the use of the mark for a long period of time. 30 By contrast, the applicant cannot rely upon the fact that the proprietor does not intend to apply for registration by himself, for any reason (e. g. lack of money); neither can the applicant argue that it filed the trade marks in prevention of the filing of trade marks applications by third parties that could obstruct the distribution agreement it signed as well as the urge to benefit from efficient and appropriate tools to act against counterfeited goods, nor can the applicant argue that the economic interest related to the necessity to protect his investment may justify the filing of the trade mark25. 28

23 See OHIM 23 July 2003, Opposition Division, No 1483/2003, Laurence E. Gordon Gayle Gordon v Sotorock, Marina Couste et Amaury de Saint Amand, ‘La fraude au de´poˆt des marques en droit français et communautaire: tel est pris que croyait prendre…’, Propriété industrielle, June 2004, No 6 Etude 10, paragraph 41. 24 See by analogy, the analysis applicable to Article 8 (3) in Opposition Guidelines, page 14. 25 See OHIM, Opposition Division 23 July 2003, No 1483/2003, Laurence E. Gordon Gayle Gordon v Sotorock. Decision rendered on the basis of Article 8 (3) CTMR; OHIM Opposition Division, 28 March 2013, No B 1 126 715, Jiangling Motor Holding Co. Ltd v LWMC Ltd OHIM and Opposition Division, 26 September 2001, No 2310/2001, Apex Medical Corporation v Sorbie Research International (Medical) Limited. Decisions rendered on the basis of Art. 8 (3) CTMR.

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Rights in rem

Art. 19 CTMR

III. Enforcement of Artt. 11 and 18 Unlike Art. 8 (3) CTMR, which is enforceable only before the Opposition Division of 31 the OHIM in course of registration proceedings, Art. 11 CTMR may be enforced by Community trade mark courts established in the Member States. Indeed, Art. 96 (a) CTMR, which recognize to the Community trade mark courts an exclusive jurisdiction for all infringement actions, shall apply to all legal actions aimed at prohibiting the use of a Community trade mark – such as a claim under Art. 11 CTMR. The same reasoning does, however, not apply to Art. 18 CTMR, which is not per se 32 an infringement action but amounts to an action per which the proprietor of the trade mark claims back the ownership of a trade mark. It shall be noted that the enforcement of Art. 18 CTMR is not precisely defined in the CTMR. It can nonetheless be considered that the relevant jurisdictions for the enforcement of Art. 18 CTMR could arguably be national courts other than Community trade mark courts, pursuant to Art. 106 CTMR. It is in this respect noteworthy that Art. 18 of the Proposal for a regulation of the European Parliament and of the Council amending the Regulation grants jurisdiction to the OHIM (referred to as ‘Agency’ under the proposal) in relation to an application for a declaration of invalidity based on Art. 53 CTMR or to Community trade mark courts (referred to as ‘European trade mark courts’ under the proposal) in relation to a counterclaim for a declaration of invalidity based on Art. 100 CTMR26.

Article 19 Rights in rem 1. A Community trade mark may, independently of the undertaking, be given as security or be the subject of rights in rem. 2. On request of one of the parties, rights mentioned in paragraph 1 shall be entered in the Register and published. Rec. 4, 11 Bibliography: AIPPI, ‘Report on Q 190: Contracts regarding Intellectual Property Rights (assignments and licenses) and third parties’, Yearbook 2006/I; Michael Fammler, ‘Die Gemeinschaftsmarke als Kreditsicherheit’, WRP 2006, 534; Gordon Humphreys, ‘Rights in Rem, Levy of Execution and Bankruptcy: The CTMR “Feel Bad” Factor’, E.I.P.R. 2001, 281.

Content I. Introductory remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 II. Comments on individual rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 1. Community trade mark as a security interest (para. 1). . . . . . . . . . . . . . 4 2. Registration of security interests (para. 2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

26 Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) no 207/2009 on the Community Trademarks, COM/2013/0161 final – 2013/0088 (COD), Art. 18.

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Community Trade Mark Regulation

I. Introductory remarks The concept that the CTM is a fully transferable asset under private law allows it to be charged by proprietary rights. To this end Art. 19 explicitly states that a CTM may be given as security or charged by a right in rem. Together with the reliability of recordals provided by the registration system this fosters the proprietor’s possibilities to contractually exploit his CTM in order to finance business ventures.1 Keeping the considerable value of many trade marks in mind, which in fact may exceed the value of the business entity as such,2 this tool appears as a valuably competitive advantage in comparison to many national trade mark systems.3 2 Although the rule is reduced to the ‘bare minimum’4 and appears to lack substance as it de facto refers all practical issues to the applicable national law it does contain an important systematic commitment, which results from the strict distinction between rights in rem in Art. 19 and licences in Art. 21.5 The clear predefinition that a licence is not characterized as conferring a property interest is underlined by the language of Recital 11 and the systematic order of the subsequent Artt. 20 and 21 on levy of execution and insolvency, as both rules concern the commercialization of CTMs in case the proprietor defaults. 3 By virtue of reference the same rule applies to an application for a CTM (Art. 24) and to collective CTMs (Art. 66). 1

II. Comments on individual rules 1. Community trade mark as a security interest (para. 1) The essence of the rule is to clarify that it is admissible to grant a right in rem. The fact that a right in rem confers an ownership interest at the same time has the consequence that it will cover the CTM as such, whereas a restriction or division – e. g. with regard to geographical scope – is inadmissible.6 Similarly a right in rem cannot relate only to particular goods and services in an undivided CTM,7 but would require prior division of the application or CTM under Art. 44 or Art. 49 respectively. 5 The alternative reference to ‘security interest or right in rem’ in the English language version seems odd at first sight because the generic term ‘right in rem’ usually would cover the different types of security interests,8 but can easily be corrected by consultation of other language versions, which rather state ‘security interest or other right in rem’.9 The explicit mentioning of security interests thus apparently refers to the most likely type that will be used to guarantee the fulfilment of another obligation, the addition of the latter giving room to national laws, which may differ with regard to 4

1

AIPPI, Report Q 190, 1. Fammler, WRP 2006, 534. 3 Cf. Fammler, WRP 2006, 534. 4 Hoyng, in Franzosi (ed.), European Community Trade Mark, 273, 275. 5 Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 22 mn. 6; also see Humphreys, EIPR 2001, 281 et seq. 6 Humphreys, EIPR 2001, 281, 282. 7 Humphreys, EIPR 2001, 281, 282. 8 See also Humphreys, EIPR 2001, 281. 9 Humphreys, EIPR 2001, 281 et seq. 2

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Art. 19 CTMR

categorization. That the laws of the Member States in fact provide for a variety of different concepts can already be seen from the difficulties that the translation of the two terms has spiked. The German language version which has translated ‘security interest’ into ‘Pfandrecht’ (pledge) for instance appears to narrow in comparison to ‘security interest’, which under English law does not denote a specific category but will comprise inter alia the CTM to be deposited or pledged.10 The term right in rem literally translates into ‘the right in a thing’ and refers to a right, which is vested in the CTM itself, i. e. a property interest not restricted to a personal claim against the current proprietor.11 The relevant test therefore is that the beneficiary has a direct claim to use or commercialize the CTM if the requirements are met, without being dependent on further consent of the proprietor. Apparently this distinction is common to many Member States, the dichotomy of ‘personal rights’/ ’property rights’ under English law, ‘droits personel’/’droit re´el’ under French law and ‘dingliche’/’obligatorische’ Rechte under German law may serve as examples. As a common denominator all rights in rem are restricted rights, i. e. will not affect the proprietorship of the CTM as such. Therefore the proprietor remains entitled to use and enforce the trade mark.12 Lacking a genuinely European infrastructure the CTMR has to import the different concepts from national law. Whether a particular right granted qualifies as a right in rem in the meaning of Art. 19 will be decided according to the applicable national law. Which security interests are available therefore will depend on the law applicable to the CTM by virtue of Art. 16. Proprietors and creditors therefore have to be aware of the fact that availability and flexibility of rights in rem which can be granted with regard to a CTMR considerably differ between the Member States. As a general rule there will be two different types of rights in rem, such which serve as a guarantee for fulfilment of an obligation and such that grant a right of use. In the first case, which is commonly referred to by the generic term of security interests, the beneficiary accordingly will regularly be a bank or other financial institution who has lent the proprietor money, but could also be a supplier of goods. The most important right in rem conferring a right of use appears to be the usufruct. The main advantage of a right of usufruct (or similar right to use under national law) as compared to a licence is that it as a right in rem confers an ownership interest, which will remain unaffected in case of a seizure of the asset under Art. 20 or bankruptcy under Art. 21.13 Yet, a right of usufruct will rarely be an alternative to a licence as it encumbers the right as such and cannot be limited in terms of territory or goods and services.14 The questions has been raised whether a party resident in a Non Member State can be the beneficiary of a right in rem. As neither the system nor the wording of Art. 19 imply any limitation, also a third-country in rem right holder can validly obtain and record his right.15 However, attention should be paid to the fact that the application of the law determined in line with Art. 16 is mandatory. Therefore the parties may choose the contract law under which the obligation to grant a right in rem is formed, but will not have the power to determine the applicable property law. Accordingly, also the right in rem granted to a resident of a Non Member State will be always governed by the law of a EU-Member State. 10

Cf. Humphreys, EIPR 281. v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 19 mn. 2. 12 Fammler, WRP 2006, 534, 536. 13 Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.6. 14 Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.6. 15 Humphreys, EIPR 2001, 281, 282. 11

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Community Trade Mark Regulation

In order to determine whether rights in rem have validly been granted a two-step approach is necessary. First the law applicable according to Art. 16 has to be determined.16 This law will provide which rights in rem are available.17 In a second step the agreement then will have to be scrutinised whether it is in line with the relevant national rules regarding formal requirements,18 and content including assignment and termination, which will be governed by national trade mark or property law respectively.19 As a general rule the legal effects of such rights in rem, in particular the priority against other security interests and the means of its commercialization – such as whether a public auction is required – similarly will be governed by these national rules.20 However, it must be noted that any registration requirements and their effects vis-a`-vis third parties under national law are overruled by Art. 23, which at the same time is mandatory (cf. para. 2).

2. Registration of security interests (para. 2) Para. 2 provides that the grant of a right in rem may be recorded in the register. With regard to administrative proceedings the most important consequence appears to be that a registered creditor will have to consent in case the proprietor declares to surrender his CTM (Art. 50 (3) CTMR). The registration with the Office serves the purpose to give notice of the existence of such right to the world at large and is the basis for – actual or constructive knowledge – of the third party under Art. 23, which prevents that the right to be compromised by a subsequent transfer, i. e. a bona fide acquisition unburdened by prior rights. 12 Some authors have held that registration is also a requirement for enforcement of a right in rem.21 However, this position appears questionable and will turn on the question what is meant by the term ‘enforcement’. If the proprietor does not discharge the secured debt on time then the creditor will rely on this security, which – depending on the applicable law – entitles him either to request the transfer of the CTM as such or to have the latter attached and publicly commercialised and in turn obtain the proceeds from the public sale up to the limit of his claim. As this right apparently is exercised against the proprietor and not any third party it is not apparent why it should depend on registration. The same holds true with regard to the claim for preferential satisfaction as compared to a competing creditor, who in the course of a levy of execution or insolvency proceedings22 intends to commercialize the charged property.23 With regard to other rights in rem, which as a usufruct may for instance allow the beneficiary to use the CTM, it should be recalled that a right in rem by definition is a legal 11

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Schennen, in Eisenfu¨hr/Schennen (eds.), GMVO, Art. 19 mn. 3. Schennen, in Eisenfu¨hr/Schennen (eds.), GMVO, Art. 16 mn. 9. 18 It is noteworthy that many Member States which have a mandatory writing requirement for transfer of trade marks extend this to the grant of rights in rem, see for example Art. 24 (4) UK TMA and Art. 28 (4) Irish TMA. 19 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 19 mn. 1. 20 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 1; Hoyng, in Franzosi (ed.), European Community Trade Mark, 273, 275. 21 Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.7. 22 Cf. Art. 5 No. 1 Insolvency Regulation: The opening of insolvency proceedings shall not affect the rights in rem of creditors or third parties in respect of tangible or intangible, moveable or immoveable assets – both specific assets and collections of indefinite assets as a whole which change from time to time – belonging to the debtor which are situated within the territory of another Member State at the time of the opening of proceedings. 23 Reutter, in De Werra (ed.), Research Handbook, 281, 305 with further references. 17

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Art. 20 CTMR

position which concerns the CTM as such as opposed to a personal claim. Therefore again the valid grant of a will vest the beneficiary with the respective legal position. If for instance the proprietor disregards the right in rem and prevents the agreed use by the beneficiary the latter will under the respective private law be entitled to enforce his right against the proprietor. If the proprietor by contrast compromises the beneficiary’s right by conflicting subsequent dispositions, the lack of registration may in fact lead to the result that a subsequent transfer or grant of a congruent right in rem will take precedence and the unregistered right will either be narrowed in its scope or lapse. Therefore it in line with the interpretation of Art. 17 (5)-(8) and Art. 23 is more convincing to restrict the effect of registration to administrative proceedings on the one hand and competing contractual dispositions on the other hand (see above mn. 37). By contrast the entitlement to invoke the right against the proprietor or a third (noncontracting) party should not depend on recordal of the right in rem (see above mn. 33). The right in rem can be registered either by the proprietor or the beneficiary. As it 13 is the latter who will benefit from the protection provided by registration it is most likely that he will file the application. However, in case the beneficiary is not a resident of a Member State he would have to appoint a representative to act for him (Art. 92 (2)). In this case it may be easier to ensure already in the contract that the proprietor who either has his seat/domicile in the EU or already has appointed a representative will file the respective application (Rule 33 (2b) CTMIR). The formal requirements for recording, amending or cancelling a right in rem are 14 closely regulated by Rules 33, 35 CTMIR. The deficiency in the original version, which did not require the beneficiary to provide any proof that the right has been granted24 has in the meantime been corrected. The applicant will usually file a form and provide proof of the grant of the right in rem, which can be either done by submission of a copy of the relevant contract or deed by which the right in rem was created or a respective signed declaration of the parties. In addition a registration fee of currently EUR 200 (Rule 22 CTMFR) has to be paid. If application and fees have been received by the office and all requirements are met the competent department, the Administration and Trade Marks and Legal Division, will register the security interest without scrutiny of its substantive validity. The same administrative rules apply for a transfer or cancelation of the security interest. The rules with regard to the consequences of a deficient application and the 15 remedies against a decision of the Office follow the same scheme as provided for recordal of transfer or licences (see Art. 23 mn. 10 et seq.).

Article 20 Levy of execution 1. A Community trade mark may be levied in execution. 2. As regards the procedure for levy of execution in respect of a Community trade mark, the courts and authorities of the Member States determined in accordance with Art. 16 shall have exclusive jurisdiction. 3. On request of one of the parties, levy of execution shall be entered in the Register and published. Rec. 4, 11 24

For criticism on this rule and the risk of malevolent recordal see Humphreys, EIPR 2001, 282, 284.

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CTMR Art. 20

Community Trade Mark Regulation

Bibliography: AIPPI, ‘Report Q 190: Contracts regarding Intellectual Property Rights (assignments and licenses) and third parties Report’, Yearbook 2006/I; Gordon Humphreys, ‘Rights in Rem, Levy of Execution and Bankruptcy: The CTMR “Feel Bad” Factor’, E.I.P.R. 2001, 281

Content I. Introductory remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Comments on individual rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Admissibility of levy of execution (para. 1). . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Enforcement procedure (para. 2). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Registration of enforcement procedure (para. 3). . . . . . . . . . . . . . . . . . . . .

1 4 4 7 9

I. Introductory remarks Art. 20 is a natural consequence of the concept of free transferability1 and a necessary supplement of Art. 19 allowing the CTM being used as a security interest, as the latter would be useless unless it is permissible to actually seize the CTM in order to satisfy a debt if it is not repaid timely. In case such failure has materialised into a judgement or other title the beneficiary of a right in rem may seek compulsory enforcement against the CTM. The main proposition of this provision lies in the fact that it is possible to seize the CTM as such, i. e. without the business entity. Although feasible from a legal point of view this in practice will rarely be promising, at least if the trade mark is used by a running company which uses it to mark its products or services.2 2 Whether the beneficiary of a right in rem granted in accordance with Art. 19 is entitled to apply for compulsory enforcement will be determined by the law applicable by virtue of Art. 16. The comments on the interaction of lex contractus, lex protectionis and lex fori therefore apply mutatis mutandis (see above Art. 16 mn. 5 et seq.). The essence of Art. 20 is to supplement this concept by the practical and sensible solution to establish the jurisdiction of the courts of the same Member State and thereby ensure that the courts will apply their own law.3 3 By virtue of reference the same rule applies to an application for a CTM (Art. 24) and to collective CTMs (Art. 66). 1

II. Comments on individual rules 1. Admissibility of levy of execution (para. 1) Para. 1 states the general rule that a levy of execution or compulsory enforcement is permissible. The possibility to seize a CTM follows directly from the CTMR and is not dependent on the applicable national law to provide for a similar rule with regard to national trade marks. As a consequence of the unitary character of the CTM and the general prohibition of partial transfer any enforcement measure always has to relate to the CTM as a whole and thus apply for the entire territory of the Community. 5 The qualification whether the application brought forward by the creditor is a levy of execution has to be conducted according to the applicable national (procedure) law. The 4

1

Fezer, Markenrecht, Part F. Gemeinschaftsmarkenrecht, mn. 43. v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 20 mn. 1. 3 Hoyng, in Franzosi (ed.), European Community Trade Mark, 273, 276. 2

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Art. 20 CTMR

term ‘levy of execution’ has been criticised as it is not familiar even in the English speaking parts of the Community.4 In fact other Community instruments5 and even the CTMIR6 rather use the term ‘enforcement’. But in substance there cannot be any doubt that it refers to any compulsory proceedings in which a court or other authority orders that the CTM as an asset will be seized in order to secure performance of a contractual or statutory duty. If a CTM is seized in satisfaction of such duty it will be made to money in order to cover unsettled debts of its proprietor. The relevant test therefore is whether it is an application based on either an enforceable contractual stipulation or a title issued by a court or competent authority which mandate compulsory enforcement of its content by state authorities. By contrast Art. 20 is not applicable in case the claim of the creditor is not that of an unsettled debt, but instead directed to a transfer of the CTM as such, which may be the case if the proprietor has promised to transfer the CTM according to Art. 17, but has not discharged his contractual obligation. A claim for transfer and a corresponding judgment ordering such transfer will be governed by the respective rules of procedure law of the adjudicating court. Neither does Art. 20 cover compulsory enforcement of infringement proceedings, such as measures enjoining further use or impending infringement. The enforcement procedure lies in the competence of the respective national courts. 6 The Office (and other European authorities) are only involved as far as an order for enforcement may be entered in the register and – subsequent to successful commercialisation – the transfer to a new proprietor may be recorded according to Art. 17 para 5.

2. Enforcement procedure (para. 2) Para. 2 provides for an exclusive jurisdiction of the courts of the Member States 7 whose law is applicable by virtue of Art. 16. It is a self standing rule which on the one hand takes precedence over the jurisdictional venue in Art. 24 no. 5 Brussels Regulation (formerly Art. 22 No. 5), on the other hand does not depend on any additional requirements such as a sufficient connecting factor to the competent Member States or similar.7 In effect it ensures a comprehensive exclusive jurisdiction of the courts of one Member State for the entire European Union. Accordingly, measures of enforcement can only be issued by the courts of the respective Member States. In case other (incompetent) courts take measures concerning a CTM they are void by virtue of Art. 19 and of course neither can be recorded into the CTM-register.8 As Art. 20 only determines the international jurisdiction, the local and functional 8 competence will be left to the procedural law of the competent Member State.9 The local law will further govern the procedure (lex fori),10 including any restrictions for compulsory enforcements, such as rules protecting the private sphere of the debtor. With regard to trade marks such may in particular result from copyrights or personality rights relating to the sign protected as CTM.11 4

Humphreys, EIPR 2001, 281, 285. See for example Regulation No. 1215/2012 (Brussels Regulation), Art. 36 et seq.; Directive 2004/48 on the Enforcement of Intellectual Property Rights. 6 Cf. Rule 33 CTMIR. 7 Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 16 mn. 10. 8 Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 16 mn. 10. 9 Cf. order of the Regional Court of Vienna (LG Wien) 24.5.2005. 10 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 19 mn. 2. 11 See Joint Statement of the Council and the Commision on the event of entry into force of the CTM, 20 December 1993, No. 11. 5

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CTMR Art. 21

Community Trade Mark Regulation

3. Registration of enforcement procedure (para. 3) Para. 3 clarifies that the institution of enforcement proceedings may be recorded in the register. This rule is necessary to ensure the smooth application of national procedure law as some Member States – such as Spain12 – provide for a mandatory registration. But even if it is not necessary for the measures to take effect it may be of interest in case the enforcement proceedings are prolonged, for instance if there is a dispute on the validity of the title or the entitlement of the registered proprietor to the CTM, as it gives notice to the Office and by the notice as such avoids any reliance in good faith. This said the effects of such registration will be determined by the applicable national law (Art. 23 (3)), as Art. 23 (1) and (2) only refer to the transactions mentioned in Artt. 17, 19 and 22, which in turn of course have to be respected in case of compulsory enforcement. 10 The formal requirements for recording the notice that enforcement procedures are pending are provided for by rule 33 CTMIR. Both parties, the creditor or debtor may file a respective request, whereas neither the CTMR nor the administrative rules mention the possibility that entrance is sought by the adjudicating court. The applicant will usually file a form and provide proof by a copy of the relevant enforceable title or court order. In addition a registration fee of currently EUR 200 (Rule 23 CTMFR) has to be paid. If all requirements are met and the fees have been received by the office the competent Administration of Trade Marks and Legal Division will register the notice and publish it in the CTM Bulletin. The same administrative rules apply for modification or cancellation. The rules with regard to the consequences of a deficient application and the remedies against a decision of the Office follow the same scheme as provided for recordal of transfer or licences (see below Art. 23 mn. 10). 9

Article 21 Insolvency proceedings 1. The only insolvency proceedings in which a Community trade mark may be involved are those opened in the Member State in the territory of which the debtor has his centre of main interests. However, where the debtor is an insurance undertaking or a credit institution as defined in Directive 2001/17/EC of the European Parliament and of the Council of 19 March 2001 on the reorganisation and winding-up of insurance undertakings (1) and Directive 2001/24/EC of the European Parliament and of the Council of 4 April 2001 on the reorganisation and winding up of credit institutions (2), respectively, the only insolvency proceedings in which a Community trade mark may be involved are those opened in the Member State where that undertaking or institution has been authorised. 2. In the case of joint proprietorship of a Community trade mark, paragraph 1 shall apply to the share of the joint proprietor. 3. Where a Community trade mark is involved in insolvency proceedings, on request of the competent national authority an entry to this effect shall be made in the Register and published in the Community Trade Marks Bulletin referred to in Article 89. Rc. 4, 11 12

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Art. 21 CTMR

Bibliography: AIPPI, Report on Q 241: IP licensing and insolvency, 2014; AIPPI, ‘Report on Q190: Contracts regarding Intellectual Property Rights (assignments and licenses) and third parties’, Yearbook 2006/I; Gordon Humphreys, ‘Rights in Rem, Levy of Execution and Bankruptcy: The CTMR “Feel Bad” Factor’, E.I.P.R. 2001, 281; Mark Reutter, ‘Intellectual property licensing agreements and bankruptcy’, in de Werra (ed.), Research Handbook on Intellectual Property Licensing, 281.

Content I. Introductory remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 II. Comments on individual rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 1. Administration by a single insolvency proceeding (para. 1) . . . . . . . . 6 2. Joint proprietorship (para. 2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 3. Registration of insolvency procedure (para. 3). . . . . . . . . . . . . . . . . . . . . . . . 13

I. Introductory remarks As private property a CTM will in case of its proprietor’s distress or insolvency be part of the debtor’s estate. At the time the CTMR was first enacted there was no corresponding Community instrument harmonizing the framework for insolvency proceedings. Therefore the CTMR in its original version merely sought to ensure that the CTMR will be covered by insolvency proceedings. To preserve the unitary character and in line with the fiction assimilating the CTM with the law of a single Member State the CTMR therefore in Art. 21 CTMR 19941 installed the rule that the CTM will be included in insolvency proceedings in that Member State in which such proceedings are first brought. After the ongoing harmonization of procedural law in 2001 has emanated in a separate European Insolvency Regulation harmonizing jurisdiction and applicable law throughout the EU the legislator then decided to streamline the CTMR with the aforesaid regulation. Accordingly, the original exclusive jurisdiction in favour of the first seized courts has been replaced by a reference to the Insolvency Regulation or other sector specific regulations for the winding up of insurances and credit institutions respectively. At the same time the formal principle of priority was replaced by a qualitative criterion, namely the centre of main interest.2 The fact that insolvency law has been harmonized eases the interpretation of Art. 21 as many of the terms used, such as insolvency, debtor etc., are accurately defined in the respective instruments and may be interpreted accordingly. The definition of insolvency in Art. 1 para. 1 Insolvency Regulation may serve as an example, as it defines the term insolvency proceedings as ‘collective proceedings, which entail the partial or total divestment of a debtor and the appointment of a liquidator.’ Which national proceedings will be covered by this concept is set out for each Member State by Annex A to the regulation. As Art. 21 refers to the regulation such improvements achieved by the harmonization of insolvency law also simplify the interpretation of the CTMR. Yet, the current version of Art. 21 appears to be at fault. On the one hand it to some extend is obsolete, because the Insolvency Regulation is applicable by its own virtue, on the other hand it remains fragmentary as it neglects the limited territorial scope of the European insolvency scheme, which is not even applicable throughout the entire 1 The original version reads: ‘Until such time as common rules of the Member States in this field enter into force, the only Member State in which a Community trade mark may be involved in bankruptcy or like proceedings shall be that in which proceedings are first brought in the meaning of national law or conventions applicable in this field.’ 2 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 21 mn. 6.

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CTMR Art. 21

Community Trade Mark Regulation

Community.3 Further the regulatory technique appears unnecessarily complicated as the fragmentation of the rules on insolvencies into different Community instruments spills over into the CTMR. Remaining uncertainties and gaps thus have to be cured by careful interpretation. 5 By virtue of reference the same rule applies to an application for a CTM (Art. 24) and to collective CTMs (Art. 66).

II. Comments on individual rules 1. Administration by a single insolvency proceeding (para. 1) Taken literally, para. 1 in its essence states that a CTM may only be involved in an insolvency or like proceedings, which is instituted in line with harmonized European insolvency law and thus clarifies that even if there are numerous separate insolvency proceedings against the proprietor the CTM will only be entangled in the main proceeding. 7 Currently there are three separate Community instruments, which differ with regard to the type of debtor covered. The most important of them is the European Insolvency Regulation, which has created a uniform scheme for all undertakings save for insurance undertakings, credit institutions, investment undertakings providing services involving the holding of funds or securities for third parties and collective investment undertakings (Art. 1 para. 2 Insolvency Regulation). For these excluded undertakings the Directives 2001/17/EC and 2001/24/EC contain more specific rules which ensure that for undertakings requiring a specific authorisation for taking up and pursuing business the insolvency proceedings will be coordinated with the respective administrative proceedings of the supervisory authority. This is particularly important as there is a public interest to preserve the financial soundness and to prevent the winding up of essential undertakings as such. Accordingly the regulatory rules are accompanied by specific rules on jurisdiction, which are implemented into national law either on insurances or credit institutions respectively or regulated in the context of national insolvency law, but are of minor importance in the present context. It suffices to mention that the three Community instruments have to be interpreted to the effect that all remaining business entities, which are not covered by the more specific rules on insurances or credit institutions will be governed by the Insolvency Regulation. 8 Despite the differences in standard of harmonization all three instruments provide that with regard to a debtor who has his domicile or seat in the Community the main insolvency proceedings will take place in the Member State where the debtor has his centre of main interests or has been authorised respectively. In the case of a company or legal person, the place of the registered office shall be presumed to be the centre of its main interests in the absence of proof to the contrary (Art. 3 para. 1 Insolvency Regulation). With regard to proprietors this as a general rule, but not necessarily, will coincide with the registered seat or domicile of the proprietor as determined under Art. 16. A notable difference however, may in particular result from the fact that the insolvency rules refer to the actual and not to the registered seat or domicile (see above Art. 16 mn. 41). 9 The rule of Art. 21 is not only mirrored by Art. 3 para. 1 Insolvency Regulation but also supplemented by Art. 12 Insolvency Regulation, which explicitly rules out the involvement of community IPRs in secondary insolvency proceedings conducted in 6

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Art. 21 CTMR

another state than that of the centre of main interest referred to in Art. 3 para. 1 Insolvency Regulation. For the sake of clarity it may be added that the applicable substantive law in case of 10 insolvency will not be determined by Art. 16, but instead by the autonomous rule contained in Art. 4 Insolvency Regulation. This in particular is important with regard to the appraisal of the entitlements of the debtor’s contracting partners. Whereas rights in rem in the meaning of Art. 19 will be protected by virtue of Art. 12 Insolvency Regulation, i. e. independent of the question in which Member State insolvency proceedings are instituted, the rights of a licensee will first of all derive from the applicable insolvency law.4 The law of the forum will according to Art. 4 para. 2 e) Insolvency Regulation govern the administrators related specific powers to interfere with running contracts. Keeping in mind that the general goal of insolvency is to realize and liquidate all the debtor’s assets and distribute the proceeds amongst all creditors, it may be necessary to reject contracts which are burdensome or without expected future benefit. As the existence of a licence may either as such hamper the commercialisation of the CTM or the continuing obligations from a license contract may be onerous the administrator in many Member States will be entitled to terminate the licence in a CTM.5 As long as there is no uniform rule6 on this issue in the Community the licensee will only have certainty about the protection of his right in case of insolvency after such proceedings have been instituted as only then the lex fori and consequently the applicable insolvency law can be determined.7 Insofar the current situation is far from what could be called a reliable legal infrastructure, contracting parties have to be alive to the risks and uncertainties entailed in the concept of licensing. The main problem, however, is that the aforesaid regulations are only applicable to a 11 debtor who has a main centre of interest within the European Union. Deviating from the original rule provided for in the 1994 regulation the current version does not indicate what should apply in case the debtor is a resident either of Denmark,8 which is excluded from the scope of application or of a Non Member State. With regard to Denmark it is held that para. 1 first sentence contains a self-standing rule,9 reducing the gap to proprietors resident in Non Member States. Taking into account that up to 30 % of CTMs are held by proprietor’s from Non Member States it is barely imaginable that the legislator wanted to rule out that they are commercialized in the course of insolvency proceedings.10 On the other hand leaving it to national law would jeopardize the unitary character of the CTM. Accordingly, it is suggested to fill this gap by applying Art. 16 by analogy, which will lead to the exclusive jurisdiction of Spanish courts, but above all has the imminent advantage that compulsory enforcement and insolvency will be administrated by the same courts under the same applicable law. Insofar as the court of a Non Member State adjudicates on the status of a CTM in the course of insolvency proceedings taking place at the centre of main interest of a non resident it would accordingly be left to Spanish procedure law to recognise and enforce such decision. In case of recognition the Spanish title will then replace the decision of a Member State foreseen by para. 1 and may be the basis of recordal of any resulting transaction by the Office. 4

Reutter, in De Werra, Research Handbook, 281, 282. A most helpful country by country overview can be found in the reports on AIPPI Question Q 241 (2014). 6 In fact most Member States at present do not provide for specific rules on the effects of insolvency on IP rights, cf. AIPPI, Yearbook 2006/I, p. 311 et seq. 7 Cf. Hoyng, in Franzosi (ed.), European Trademarks Law, 273, 279. 8 Insolvency Regulation, Recital 33. 9 Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 21 mn. 16. 10 Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 21 mn. 21. 5

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CTMR Art. 22

Community Trade Mark Regulation

2. Joint proprietorship (para. 2) 12

Para. 2 extends the rule laid down in para. 1 to the case that the debtor in insolvency is not the sole proprietor, but only holds a share in the CTM. In this case similarly the CTM can only be invoked in insolvency in the country in which the debtor has his centre of main interests or has been authorised respectively. In the unlikely event that several joint proprietors have their main centre of interests in different states and file for insolvency at the same time, the respective shares will thus be treated by separate insolvency proceedings.

3. Registration of insolvency procedure (para. 3) In case a CTM is involved in insolvency proceedings this fact may be registered with the office and published in the CTM bulletin. Differing from Art. 20 it is not the parties, but the authorities who are entitled to file such application. However, the effect of registration is rather limited as Art. 23 para. 4 refers to the national law applicable to bankruptcy proceedings. The latter will as a general rule only require a court order opening insolvency, but not make the effects reliant on registration. As with Art. 20 the registration therefore rather serves information purposes and insofar is truly facultative. 14 Even though devoid of any substantive effect under Community law the registration is recommendable. The main practical effect of recordal appears to be that the office will, once informed, refuse to record any further transactions regarding the CTMR unless the competent insolvency administrator or court authorises it and thereby prevents difficult questions that may result from a lack of coordination of national insolvency law with the rules on bona fide acquisition under Art. 23. Further the office upon recordal of insolvency will ensure that deadlines are stopped and pending proceedings will be halted (Rule 73 CTMIR). 15 The rules on the recordal, including the consequences of a deficient application and the remedies against a decision of the Office follow the same scheme as provided for recordal of transfer or licences (see below Art. 23 mn. 10). 13

Article 22 Licensing 1. A Community trade mark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the Community. A licence may be exclusive or non-exclusive. 2. The proprietor of a Community trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to: (a) its duration; (b) the form covered by the registration in which the trade mark may be used; (c) the scope of the goods or services for which the licence is granted; (d) the territory in which the trade mark may be affixed; or (e) the quality of the goods manufactured or of the services provided by the licensee. 3. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a Community trade mark only if its 488

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proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period. 4. A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in infringement proceedings brought by the proprietor of the Community trade mark. 5. On request of one of the parties the grant or transfer of a licence in respect of a Community trade mark shall be entered in the Register and published. Rc. 9, 11, 36 Bibliography: Hans-Ju¨rgen Ahrens/Mary-Rose McGuire, Model Law on Intellectual Property, AIPPI, ‘Reporton Q 190: Contracts regarding Intellectual Property Rights (assignment and licenses) and third parties’, Yearbook 2006/I; AIPPI, ‘Report on Q 194: The Impact of Co-Ownership of Intellectual Property Rights on their Exploitation, Q 194’, Yearbook 2007/II; AIPPI, ‘Report on Q 194b: The Impact of CoOwnership of Intellectual Property Rights on their Exploitation’, Yearbook 2009/II; AIPPI, ‘Report on Q190: Contracts regarding Intellectual Property Rights (assignments and licenses) and third parties’, Yearbook, 2006/II; Frauke Asendorf, ‘A Piece of (the) Cake – Damages for Proprietor and Licensee Due to Infringement of Community Trade Marks’, GRURInt 2011, 802; Friedrich-Karl Beier, ‘Conflict of Law Problems of Trade marks License Agreements’, IIC 1982, 162; Sandrine Bouvier-Ravon, ‘Subrogation du cedant dans les droits du cessionaire, dans un contract de cession de brevaet, de marque ou de dessin et mode`le’, Proprie´te´ industrielle no. 12/2012, form. 4; Lorin Brennan/Jeff Dodd, ‘A concept proposal for a model intellectual property commercial law’, in De Werra (ed.), Research Handbook on Intellectual Property Licensing (2013), 257; Pedro Alberto de Miguel Asensio, ‘The law governing international intellectual property agreements’, in De Werra, Research Handbook on Intellectual Property Licensing (2013), 312; Lucas Elmenhorst, ‘Die Beendigung markenrechtlicher Abgrenzungsvereinbarungen’, WRP 2012, 1356; Markus Fallenbo¨ck, ‘Zur kollisionsrechtlichen Anknu¨pfung von Immaterialgu¨terrechtsvertra¨gen nach dem Europa¨ischen Vertragsrechtsu¨bereinkommen’, ZfRV 1999, 98; Michael Fammler, ‘Die Gemeinschaftsmarke als Kreditsicherheit’, WRP 2006, 534; James Fawcett/Paul Torremanns, Intellectual Property and Private International Law, 2nd edition, Richard Fentiman, ‘Choice of Law in Intellectual Property’, in Drexl/Kur (eds.). International Property and Private International Law – Heading for the Future, 129; Daniel Gervais, The TRIPS Agreement: Drafting History and Analysis, 3rd edition, Michael Gru¨nberger, ‘Das Urheberrechtsstatut nach der Rom-II-VO’, ZVglRWiss 2009, 134; Willem Hoyng, ‘Transfer and Licence’, in Franzosi (ed.), European Community Trade Mark, 273; Gordon Humphreys, ‘Rights in Rem, Levy of Execution and Bankruptcy: The CTMR “Feel Bad” Factor’, E.I.P.R. 2001, 281; Robert Kazemi, ‘Rechtswirkungen von Regisereintragungen im Marken und Geschmacksmusterrecht’, MarkenR 2007, 149; Toshiyuki Kono/ Paulius Jurcys, ‘General Report’, in Intellectual Property and Private International Law: Comparative Perspectives, Annette Kur, ‘Die Harmonisierung der europa¨ischen Markengesetzt: Resultate – offene Fragen – Harmonisierungslu¨cken’, GRUR 1997, 241; Annette Kur, ‘Intellectual Property and the Reform of Private International Law – Sparks from a Difficult Relationship’, IPRax 2007, 284; Paul Lagarde, ‘The European Convention on the Law Applicable to Contractual Obligations: An Apologia’, 22 VA. J Int’l L. 1998, 91, 97; Matthias Leistner/Estelle Derclaye, Intellectual property overlaps: A European perspective, Hector MacQueen/Charlotte Waelde, Contemporary Intellectual Property Law and Policy, 2nd edition, Peter Mankowski, ‘Contracts Relating to Intellectual or Industrial Property Rights under the Rome I Regulation’, in Leible/ Ohly (eds.), Intellectual Property and Private International Law, 42; Dieter Martiny, ‘Internationales Vertragsrecht im Schatten des Europa¨ischen Gemeinschaftsrechts’, ZEuP 2001, 317; Mary-RoseMcGuire/ Jens ‘Kunzmann, Sukzessionsschutz und Fortbestand der Unterlizenz nach “M2Trade” und “Take Five” – ein Lo¨sungsvorschlag’, GRUR 2014, 28; Mary-Rose McGuire, ‘Die Funktion des Registers fu¨r die re¨ bertragung von Gemeinschaftsmarken’, GRUR 2008, 1; Mary-Rose McGuire, Die Lizenz: chtsgescha¨ftliche U eine Einordnung in die Systemzusammenha¨nge von BGB und Zivilprozessrecht (2012); Mary-Rose McGuire, ‘Kumulation und Doppelschutz’, GRUR 2011, 767; Mary-Rose McGuire/Christian Donle/Katja Grabienski/ Adriana Grau/Ralf Hackbarth/Franz Hacker/Anke Nordemann-Schiffel, ‘Schadensersatz fu¨r Verletzung, Fa¨lschung und Piraterie von Marken (Q 203)’, GRURInt 2008, 923 = AIPPI Report, Yearbook 2008/II, 155– 177; Axel Metzger, ‘Community Rights & Conflicts of Laws: Community Trade marks, Community Design, Community Patent – Applicable Law for Claims of Damages’, in Drexl/Kur (eds.), International Property and Private International Law – Heading for the Future, 129; Axel Metzger, ‘Transfer of Rights, License Agreements and Conflicts of Laws: Remarks on the Rome Convention of 1980 and the Current ALI Draft’, in Basedow/Drexl/Kur/Metzger, Intellectual Property in the Conflict of Laws, 61 et seq.; Yuko Nishitani, ‘Contracts Concerning Intellectual Property Rights’, in Ferrari/Leible (eds.), Rome I Regulation – The Law Applicable to Contractual Obligations in Europe (2009), 74; Ansgar Ohly, ‘Areas of Overlap between Trade

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CTMR Art. 22

Community Trade Mark Regulation

marks Rights, Copyrights and Design Rights in German Law’, GRURInt 2007, 704; Jens Petry/Dorothea Schilling, ‘Der Schadensersatzanspruch des Lizenznehmers im Markenrecht’, WRP 2008, 1197; Mark Reutter, ‘Intellectual property licensing agreements and bankruptcy’, in Jacques de Werra, Research Handbook on Intellectual Property Licensing, 281; Joanna Schmidt-Szalewski, ‘La marque communautaire’, La Semaine Juridicque Entreprise et Affaires no. 31, 1994, 379; Ivo E. Schwartz, ‘The Rationale of the Approximation and the Regulation on Community Trade Marks’, IIC 1981, 319; Ulrike Stimmel, ‘Die Beurteilung von Lizenzvertra¨gen unter der Rom-I-Verordnung’, GRURInt 2010, 783; Karin Stumpf, ‘Die Eintragung von Lizenzen im Markenregister’, MarkenR 2005, 425; Paul Torremanns, ‘Choice of Law Problems in International Industrial Property Licences’, IIC 1994, 390; Benedetta Carla Angela Ubertazzi, ‘Licence Agreements Relating to IP-Rights and the EC Regulation on Jurisdiction’, IIC 2009, 912; Nadia Zorzi, ‘Die Verkehrsfa¨higkeit der Marke im italienischen Recht und in der Gemeinschaftsmarkenverordnung’, GRURInt 1997, 781.

Content I. Introductory remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Relevance of licences for the trade mark system. . . . . . . . . . . . . . . . . . . . . 2. The framework for CTM-licences. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. An autonomous concept of CTM-licences. . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. The law applicable to licence contracts. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Comments on individual rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Right to licence (para. 1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Delineation between contractual and trade mark infringement (para. 2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Standing to sue (para. 3). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Claim for damages (para. 4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Registration of licences (para. 5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 1 3 7 10 13 13 19 29 39 47

I. Introductory remarks 1. Relevance of licences for the trade mark system Licenses are of considerable practical relevance, in particular because a business entity often does not market its products throughout the entire internal market, be it because it is unable to do so for logistical reasons or a restriction of product capacity, be it because a business decides to concentrate itself on a core market. In this case a trade mark licence is a common means of involving others in the exploitation and further development of trade marks. From an economic perspective the advantage for the proprietor is that he can capitalise the CTM and recoup often substantial investments, but remains in control of his right. At the same time he may benefit from the marketing by a licensee increasing the good will and accordingly participate in a further rise of value. From the perspective of the licensee a trade mark licence eases the market entrance as it may relieve him from the necessity of upfront investments in extensive marketing while his products may profit from the image and reputation the proprietor has already created. A further advantage of a licence as opposed to an own new CTM-registration is that the licensee enjoys the priority of the proprietor’s trade mark and thereby – in particular after the deadline for opposition1 or acquiescence2 has expired – obtains a more reliable legal position. Thus it comes as no surprise that licences enjoy considerable popularity and are a well established building brick of international distribution arrangements. 2 From a legal perspective a licence is the right to use someone else’s trade mark and therefore naturally is in some tension with the concept of denoting origin. After all 1

1 2

Cf. Art. 41 para. 1 (3 months). Art. 54 para. 1 (5 years).

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trade marks are not protected for their own sake, but for the purpose of guaranteeing the origin of goods and services.3 The European legislator originally intended to follow a restrictive approach as the fact that another business entity would use an established trade mark was conceived as potentially misleading the consumer with regard to the origin of the products or services. Accordingly, the original draft in line with a requirement familiar to some national trade mark laws4 foresaw that both the proprietor should be obliged to exercise control over the licensee and the latter to indicate the products as produced under a licence.5 On its route through the different law making bodies6 the draft, however, took onto the view that the protection of a trade mark’s quality function is in the genuine interest of the proprietor, who for his own sake will ensure that his trade mark is only used for products or services that live up to his quality standards or the established reputation respectively. On this basis the CTMR has adopted a liberal approach whereby the proprietor has the power to exercise control over his licensee, but is not obliged to do so (see above Art. 17 mn. 1). Art. 22 on licenses contains a rule of imminent importance both from an academic and a practical perspective. Its core content is the clarification that a license is not characterized as a right in rem and geographical limitations of a licence accordingly will not affect the unitary character of the CTM as such. In addition it provides a general framework for the mutual rights and obligations of proprietors and licensees.

2. The framework for CTM-licences The framework for such licence contracts is set out by Art. 22 and by virtue of reference 3 also apply to an application for a CTM (Art. 24) and to collective CTMs (Art. 66). To avoid misunderstanding, however, it has to be emphasised that this rule regulates not the licence contract, but merely the licence, i. e. the contractual right to use someone else’s CTM.7 This on the first hand captious distinction is of some importance as it draws the line between the ‘licence’ as a right, governed by the CTMR as the lex protectionis, and the ‘contract’ governed by the contract statute, i. e. the applicable national contract law. In fact Art. 22 does not intrude on the latter. This said the advantage of a licence in a CTM as compared to a bundle of national trade marks may not be underestimated. Whereas parallel national trade marks lead to a fragmentation which cannot be overcome by even a very detailed contract as the mandatory lex protectionis will differ,8 the CTMR allows for a uniform multistate licence. As far as the complaint has been uttered that Art. 22 does not provide a comprehen- 4 sive set of rules on licence contracts9 attention should be drawn to the fact that it does 3 CJ Case C-102/77 – Hoffmann-La Roche v Centrafarm, mn. 7; CJ Case C-10/89 – HAG [1990] ECR I03711, mn. 14; CJ Case C-661/11 – Martin y Paz Diffusion, not yet published in the ECR, available at www.curia.eu Õ search Case law mn. 58. 4 See for example Art. 23 (2) Irish TMA, Art. 23 (4) Italian TMA and Art. 163 (4) Polish Industrial Property Law. 5 Memorandum on the Creation of an EEC trade mark, SEC (76) 2462, mn. 149 et seq. 6 On the relevant changes see Schwartz, IIC 1981, 319, 330. 7 See the definition of a licence in the Manual Concerning Proveedings before the OHIM, Part E, Section 3 Objects of Property, Chapter 2 Licences: ‘A trade mark licence is a contract by virtue of which the proprietor of a trade mark (the licensor), whilst retaining his proprietorship, authorises a third person (the licensee) to use the trade mark in the course of trade, under the terms and conditions set out in the contract. A licence refers to a situation where the rights of the licensee in the CTM arise from a contractual relationship with the proprietor. The proprietor’s consent to, or tolerance of, a third party using the trade mark does not amount to a licence.’ 8 On this and related problem see de Miguel Asensio, in De Werra (ed.), Research Handbook, 312 et seq. 9 Cf. v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 22 mn. 4.

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CTMR Art. 22

Community Trade Mark Regulation

not contain any rules on licence contracts at all. In particular Art. 22 neither determines the common content of a licence contract nor its limits. The CTMR in general does not interfere with the contractual statute determined in accordance with the conflicts of law rules (cf. Art. 16 mn. 7). Different from the rule on transfer in Art. 17 it does not even contain any formal requirements for the licence contract.10 A sole exception has to be made for Art. 55 para. 3 lit. c on the effects of nullity, which are mandatory and will prevail over both a deviating contractual agreement and a default rule under national contract law. For the sake of clarity it should be stated that of course the formalities required for the validity of the contract are governed by the lex contractus (cf. Artt. 4, 11 Rome-I). By contrast the validity of the grant of the licence traditionally is a matter for the lex protectionis. However, under the CTMR a licence is a contractual right arising under the contract and cannot be separated from the contract. Consequently there is no need for a separate requirement with regard to the grant of a licence and no gap which would have to be filled by falling back on national law. 5 In its essence Art. 22 provides the basic rule that licences may be granted and with regard to type and scope may be tailored to the parties’ needs (para. 1). Further it clarifies that the mere existence of a licence as such will not displace the proprietor’s claims under trade mark law, which at the same time establishes an important means of control (para. 2). In addition the rule comprises some fundamental statements on the relationship between the licensee and third parties (para. 3). Although not explicitly mentioned by Art. 22 the provision also covers the grant of sub-licences11 as otherwise Rule 34 (1)(b) CTMIR on the registration of sub-licences would be obsolete. 6 The framework largely corresponds to the rules established by the Trade Mark Directive and therefore should – at least in their main features – resemble what is well known from national trade mark law. Attention should however be drawn to the fact that the harmonization achieved by Art. 22 (4) with regard to some details exceeds that of the corresponding directive. This in particular concerns the right to sue under para. 3, which has been omitted by the directive and the corresponding entitlements of the licensee to institute opposition proceeding (Art. 42 (1) CTMR) or file an action for revocation (Art. 56 (1)(b)).

3. An autonomous concept of CTM-licences 7

This said it however must be emphasised that the CTM with regard to the concept of licence does not make any express reference to national law and therefore had to be given an independent and uniform interpretation.12 Thus the framework in Art. 22 sets up an autonomous concept of community law and designs the licence as a specific right to use that substantially differs from other types of rights, which – depending on the applicable law – may be granted according to Art. 19. Therefore caution must be taken not to read familiar national concepts into the terms used in the CTMR. This in particular holds true for the notion of licence as such, as a comparative law analysis displays that the concept of licence considerably differs across national law.13 10 These will be governed by national trade mark law determined in accordance with Art. 16. It is noteworthy that many Member States have a writing requirement either for all (cf. Art. 28 (1) UK TMA, Art. 32 (3) Irish TMA) or for exclusive licenses (Art. L 714–1 French Code de la Proprie´te Intellectuelle). 11 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark Law, Art. 16 mn. 1. 12 CJ Case C-376/11 Pie Optik SPRL/Bureau Gevers SA, available at www.curia.eu Õ search Case law mn. 33. 13 CJ Case C-533/07 Falco Privatstiftung und Rabitsch [2009] ECR I-03327; for details see AIPPI Report Q 190.

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In most common law countries contractual exploitation relies on a threefold 8 categorization consisting of full transfer, exclusive and simple licences,14 whereby exclusive licences often take a mid-position between assignment and mere right to use and accordingly are treated as akin to a partial assignment.15 Under such system an exclusive licence may be understood as conferring an ownership interest, which is of particular relevance for the question who may enforce the granted IP rights by way of an infringement action. By contrast, most continental systems draw the line between full transfer on the one hand and licenses – whether exclusive, sole or simple – on the other hand. The latter are as a general rule treated as contractual obligations.16 Accordingly, even if the licensee has standing to sue for infringement he will not enforce his own property interest, but act in the interest of the proprietor.17 It is against this background that the Enforcement Directive leaves it to the national legislator whether and to which extent the remedies for infringement are available for a licensee (cf. Art. 4 b Enforcement Directive). Both a systematic interpretation of Section 4 in its entirety and the fact that the 9 CTMR follows a uniform concept of licences,18 however, show that the CTMR follows the second concept, which is the predominant approach in the European Union19 and in particular may be found in the Benelux Trade Mark Act20 in many respects serving as a model for the CTMR. In this respect it is particularly noteworthy that even in those legal systems, which traditionally grant a strong position to the (exclusive) licensee – Germany and England may serve as examples – it is well established trade mark law doctrine that a licence does not confer a right in rem but rather is a particular contractual obligation.21 That only rights in rem confer a property interest, whereas a licence will be a personal claim, is further underlined by the rule on surrender. According to Art. 50 (3) CTMR the surrender of the trade mark proprietor requires the consent of any person who holds a registered right in the CTM, whereas with regard to a licensee a mere information will be sufficient. This point of view is further underlined both by the Guidelines on the Implementing Regulation and the headings in the parallel regulations on other Community IPRs which explicitly refer to licences as contractual right of use.22 The grant of a CTMR licence thus does not imply any partial assignment of the CTMR in the meaning of Artt. 17 and 19,23 but is a contractual right of use. Accordingly, the proposition that the CTMR similar to German law distin14

Cf. the definition of Brennan/Dodd, in de Werra (ed.), Research Handbook, 257, 269. See for example Art. 31 (1) UK TMA, which confers a position on an exclusive licensee ‘as if the licence had been an assignment’, provided that it is unlimited in scope. 16 Wilkof/Burkitt, Trade Mark Licensing, 10–16. 17 Hacker, in Stro ¨ bele/Hacker (eds.), Markengesetz, § 30 MarkenG, mn. 121; Zorzi, GRURInt 1997, 781, 793; Petry/Schilling, WRP 2009, 1197 et seq.; also compare German Federal Court of Justice (BGH) 19 June 2007, I ZR 93/07 – Windsor Estate. 18 Hacker, in Stro ¨ bele/Hacker (eds.), Markengesetz, § 30 MarkenG, mn. 122; Zorzi, GRURInt 1997, 781, 787 et seq. 19 For a comparative analysis see Kur, GRUR 1997, 241, 251 with further references; also see McGuire, Die Lizenz, 489 with exemplary analysis of Community law and Austrian, English and German law. 20 Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.9.1. 21 On the predominant opinion under English law see Chancery Division, 8 December 1994, Northern Shell Plc. v. Conde´ Nast & National Magazines Distributors Ltd., [1995] R. P. C. 117, 120 et seq.; Kitchin/ Llewelyn et al, Kerly’s Law of Trademarks, 13–081. 223; Cornish/Llewelyn, Intellectual Property, 7–17, 12– 11 et seq.; for Dutch law see Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.9.1 with further references; for Germany see German Federal Court of Justice (BGH) 19 June 2007, I ZR 93/07– Windsor Estate; Hacker, in Stro¨bele/Hacker (eds.), MarkenG, § 30 mn. 25, 122. 22 Art. 27 CPVR and Art. 19 Draft CPR 2000, COM(2000)412 final. 23 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 3.; Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 22 mn. 5; also see Humphreys, EIPR 2001, 281 et seq. 15

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Community Trade Mark Regulation

guishes between an exclusive licence, which is characterized as a right in rem and a simple licence, qualified as a contractual right to use24, must be rejected.25

4. The law applicable to licence contracts As mentioned above Art. 22 sets out the mandatory framework (lex protectionis) and leaves the contractual issues to (general) contract law (see above Art. 16 mn. 7). Unfortunately, the question how the applicable contract law is to be determined is a keenly contested issue.26 Leaving aside the possibility of a choice of law clause the starting point to determine the law applicable to a licence contract is Art. 4 Rome-I Regulation.27 Art. 4 Rome I provides a three-step test. First, it determines the connecting factor for all contracts listed in para. 1. For all other contracts para. 2 states that the characteristic performance is the relevant connecting factor. Para. 3 then contains an escape clause in case the contract obviously displays a significantly closer connection to another state. Para. 4 finally contains a default rule on the general basis of the closest connection. 11 As Art. 4 (1) Rome-I does not provide an explicit rule for contracts concerning intellectual property rights the general rule provided in para. 2 will be applicable. Accordingly the relevant connecting factor is the habitual residence of the party that promises the characteristic performance. As the characteristic performance in general is determined by the obligation that gives a contract its name28 – or differently put does not merely involve the payment of a sum of money – this would naturally point towards the proprietor granting the licence.29 This straightforward result, however, has been repeatedly challenged with the argument that the exclusive licensee often is obliged to exercise the licence and his counter performance thus goes far beyond mere payment. On this basis it has been suggested that there is no general rule for licence contracts as such, but rather the applicable law has to be determined on a case by case basis.30 This result, however, is hardly satisfactory for dogmatic and practical reasons, which in a nutshell may be put as follows:31 First, the essence of the contract is the trade mark which enables and limits the activity of the licensee. By contrast the corresponding duty to exercise the licence is not the purpose of the contract, but usually rather a means of ensuring the duty of regular and adequate payment.32 Second, the fact that the question whether such obligation to exercise the licence actually exists will in turn depend on the 10

24 Fezer, Markenrecht, F. Gemeinschaftsmarkenrecht, mn. 40; Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 22 mn. 5 et seq. 25 For details see McGuire, Die Lizenz, p. 488 et seq. 26 For an overview on the different approaches and their origin see Torremanns, IIC 1994, 390 et seq. 27 With regard to the implied restrictions of the scope of application of Rome-I-Regulation see above Art. 16 mn. 30. 28 Lagarde, 22 VA. J Int’l L. 1998, 91, 97. 29 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 16 mn. 28. Also compare the American Law Institute, Intellectual Property: Principles Governing Jurisdiction, Choice of Law and Judgments in International Disputes, § 315. (2) Transfer of Title and Grants of Licenses. ‘The contract is presumed to be most closely connected to the State in which the assignor or the licensor resided at the time of the execution of the contract.’ 30 Beier, IIC 1982, 160, 180 et seq.; Fallenbo ¨ ck, ZfRV 1999, 98, 101; Stimmel, GRURInt 2010, 780, 785 et seq.; Metzger, in Basedow/Drexl/Kur/Metzger (eds.), Intellectual Property in the Conflict of Laws, 61, 64 with further references. 31 de Miguel Asensio, in de Werra (ed.), Research Handbook, 312, 320. 32 de Miguel Asensio, in de Werra (ed.), Research Handbook, 312, 326; also see the opinion of Advocate General Trstenjak, 3.5.2012, C 376/2011 – Bureau Gevers, mn. 34, where in the context of giving a proper definition of a licence contract it is explicitly stated, the the obligation to use the right is not relevant.

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governing law is a valuable argument against using is as a criterion to determine the applicable law.33 Third, the starting point of many arguments in favour of a case by case approach is the former version of the Rome Convention and does not yet give credit to the fact that the latter in the course of transformation into a regulation has undergone substantial changes. This in particular holds true for Art. 4 Rome-I, as the legislator has decided to prioritize legal certainty over proximity.34 This conceptual change has found its expression not only in Recital 16, but also by the scheme of strict rules in Art. 4 (1) and (2), mirrored by the fact that the escape clause is – as the wording ‘manifestly more closely connected’ indicates – formulated as an exceptional device.35 This aim of legal certainty militates against the proposition that a type of contract as such will not be governed by the general rules, but instead determined on a case by case basis.36 As far as this result is challenged on the basis that the travaux pre´paratoires of the Rome I Regulation had contained a strict rule for licence contracts, but was deleted in the course of enactment,37 it should be born in mind that on the one hand the main objection against this rule was brought forward with regard to copyright law,38 whereas the rule was not opposed with regard to trade mark law, and on the other hand that para. 2 is not a rigorous dogma, but open to a correction by virtue of para. 3 if exceptional circumstances so require. Finally, this opinion is in line with the judicature of the CJ regarding Art. 5 Brussels Regulation, where it was argued that ‘a licence agreement is a reciprocal contract, under which, in essence, the person granting the licence confers on the licensee the right to use particular intellectual property rights and, in exchange, the licensee pays licence fees to the licensor.’39 Provided that the CTM proprietor has his seat in a Member State of the European 12 Union therefore the connecting factor under Art. 4 (2) Rome I will be the actual habitual residence of the proprietor and most likely will correspond to the registered seat or domicile as connecting factor under Art. 16 (1). Where this is not the case, as in particular where the proprietor is a resident of a Non Member State (or if the contract is for a sub-licence) it may be considered, whether the synchronisation should not be achieved by a choice of law under Art. 3 Rome-I. This would avoid many difficult questions of characterization and delineations between lex contractus and lex protectionis (see above Art. 16 mn. 27).

II. Comments on individual rules 1. Right to licence (para. 1) Para. 1 states that a CTM may be licensed and clarifies that the parties are free to 13 determine the scope of the licence, for instance with regard to the goods or services covered, the geographical territory of use or the type of licence. This possibility to tailor a licence to the specific purpose of the parties is not an exception from the unitary 33

de Miguel Asensio, in de Werra (ed.), Research Handbook, 312, 326. Stimmel, GRURInt 2010, 780, 785 et seq. 35 de Miguel Asensio, in de Werra (ed.), Research Handbook, 312, 322. 36 de Miguel Asensio, in de Werra (ed.), Research Handbook, 312, 321. 37 Ubertazzi, IIC 2009, 912, 930. 38 Cf. Torremanns, IIC 1994, 390. 39 Advocate General Trstenjak, 27 January 2009, C-533/07 – Falco Privatstiftung and Rabitsch, mn. 48, 51; CJ 23 April 2009, C 533/07 – Falco Privatstiftung and Rabitsch, mn. 30 seq.; a similar definition may be found in the opinion of Advocate General Trstenjak, 3 May 2012, C-376/2011 – Bureau Gevers, mn. 33. But see the criticism on this supposedly too narrow definition by Ubertazzi, IIC 2009, 912, 930 et seq. 34

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character,40 but in fact underlines the clear distinction between the licences under Art. 22 opposed to both a full transfer under Art. 17 and rights in rem under Art. 20 CTMR respectively, which by definition have to cover the entire CTM (see above Art. 17 mn. 20, Art. 19 mn. 2). 14 Attention should be paid to the fact that Art. 22 (1) only states that such restriction is permissible under the lex protectionis – and will limit the effects of exhaustion41 under para. 2 –, but leaves the question whether (and if so subject to which conditions) these can be validly agreed upon to the applicable contract law. Although such determinations of scope are common practice the contract law may impose restrictions. The duration of the licence contract may serve as an example. If the parties agree that the licence is irrevocable this may contradict the rule that parties to a long-term contract must have the possibility of an ordinary termination with prior notice. Whether a contrary term will render the entire contract void, may be replaced by mandatory rule on termination or may even be converted into a full transfer is left to the applicable contract law.42 15 Although the terms exclusive and non-exclusive apparently are reciprocal they do raise some doubts regarding their definition, because the text does not clearly state whether the term ‘exclusive’ refers to the number of licences granted or the number of lawful users. This raises the question whether a sole licence will qualify as an exclusive licence, because it is the only licence for the scope covered, or as a non-exclusive licence, because the right holder with regard to the scope covered by the licence remains entitled to parallel use of the CTM.43 The predominant opinion apparently holds that a sole licence will come under the heading of non-exclusive licences.44 This is underlined by the rules implementing registration proceedings which define the exclusive licence as ‘An exclusive licence is a licence which excludes any person other than the licensee from using the mark, even the proprietor itself.’45 This is particularly convincing against the background of para. 5, as the narrow interpretation of the ‘exclusive licensee’ ensures that his standing to sue is restricted to the situation that he is the only person entitled to use the respective CTM. 16 Whether a particular licence granted is an exclusive or a non-exclusive licence has to be determined by interpretation of the contract, but will most likely not cause any particular problems as it is common practice to explicitly state the type of licence, even more so as Rule 34 CTMIR allows for the recordal of the type of licence in the register. The CTMR neither contains rules on the content of a licence contract nor any formal requirements.46 Whether such rules apply will be determined by the applicable contract law, which of course may be altered by mandatory anti-trust law.47 In addition, it should 40

But see v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 16 mn. 6. Cf. Art. 13 CTMR. 42 Cf. v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 22 mn. 15. 43 For details on this discussion and the different types of definition see McGuire, Die Lizenz, p. 487 et seq. with further references. 44 Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 22 mn. 12; Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 22 mn. 1. But see Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.9.2 and v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 22 mn. 9, who states that an exclusive licence ‘may’ exclude the proprietor himself. 45 Manual Concerning Proceedings before OHIM, Part E (Trade Marks as Objects of Property), Section 3 (Licenses), 2.4.c): ‘An exclusive licence is a licence which excludes any person other than the licensee from using the mark, even the proprietor itself (emphasis added).’ 46 It is noteworthy that many Member States have a writing requirement, see for example Art. 28 (1) UK TMA, Art. 32 (3) Irish TMA and Art. L 714–1 French Code de la Proprie´te Intellectuelle, Art. 163 in conjunction with Art. 76 Polish Industrial Property Law. 47 At present there are not specific block exemption regulations with regard to trade marks. However, if a trade mark is covered by a broader licence or similar agreement it may come under the scope of application of other block exemptions, in particular on distribution agreements (regulation (EU) No. 330/ 41

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be kept in mind that the CTMIR de facto sets a minimum standard as the rules on registration of a licence require the clear determination of the CTM concerned and invite to record the type and scope of the licence, which in turn requires written consent of the proprietor (cf. Rule 34 CTMIR). The CTMIR explicitly mentions the possibility to transfer a licence. However, from 17 this it cannot be assumed that a licensee is per se entitled to transfer his contractual rights and obligations. Whether it is possible to assign a licence rather will depend both on the contract and the underlying national law, which – as a comparative analysis displays – will vary from a full prohibition (Bulgaria), over the distinction whether it is personal to the licensee (Belgium, UK) and consent of the licensor is required (majority of Member States) to a presumption of transferability with regard to exclusive licenses (Germany).48 Difficult questions may arise in case of double protection on Community and 18 national level. On the one hand each trade mark is a separate absolute right and governed by different rules. On the other hand it is practically impossible to use a CTM without at the same time encroaching on a parallel national trade mark. Accordingly, it is recommended to treat parallel trade marks as tandem, i. e. ensuring that any licence covers all existing trade marks for the relevant sign and territorial scope and ensure that also the terms of use etc. correspond.49 But this recommendation at the same raises the question on the legal consequences if the parties have not taken heed of it. This has spiked the discussion whether a licence contract explicitly covering only a CTM will extend to a parallel national trade mark or vice versa. It has been held that a licence contract on a national trade mark will implicitly include a corresponding licence regarding the CTM, because the proprietor under the contract is obliged to allow the use of the protected sign.50 However, it appears questionable whether this may serve as a general rule and in particular whether the licensee can on the basis of a licence contract regarding a national trade mark apply for registration to the office. The problem becomes more obvious if the explicit licence is granted with respect to the CTM as – at least if there is no territorial limitation – the consistent application of this proposition may lead to a tacit licence for all 28 Member States. Against this background it may be more convincing to leave the question whether a CTM licence will extend to parallel national trade marks to the interpretation of the contract and in case this cannot solve the problem bar any action resulting from a parallel national trade marks either on the basis of an analogy to Art. 109 or on the basis of bad faith.51

2. Delineation between contractual and trade mark infringement (para. 2) The mentioning of the term ‘licence contract’ in the opening sentence of para. 2 has 19 fostered the misunderstanding that para. 2 sets a framework for the provisions contained in a licence contract.52 However, the terms of the licence are solely between the contracting parties and will not be regulated by para. 2 nor investigated by the Office. The substance of the rule rather relates to tort law – or, differently put the law of trade mark infringement – as it states that a licensee exceeding the scope of the licence will not only commit a violation of contract, but actually infringe the CTM as such. This is 2010) or technology transfer agreements (Regulation (EU) No. 316/2014), for details see Keeling, Intellectual Property Rights in Europe I: Free Movement and Competition Law, p. 352 et seq. 48 AIPPI, Yearbook 2006/I, p. 631 et seq. 49 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 22 mn. 45. 50 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 22 mn. 45. 51 On the problem of parallel actions also see comments on Art. 109 CTMR. 52 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 22 mn. 2.

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of particular importance as it prevents the application of the doctrine of exhaustion. According to this rule developed by the CJ in early days and today laid down in Art. 13 the proprietor of a trade mark is not entitled to prohibit a third party from using the marked goods lawfully marketed.53 The relevant test under the doctrine of exhaustion (Art. 13) is whether the marked products have been put onto the market with the consent of the proprietor.54 This at the same time enables the proprietor to exercise effective control over the use of his trade mark and is an important means of ensuring the quality function of trade marks (see above mn. 2). This background at the same time explains the importance of the subsequent enumeration, which clarifies which excess of the scope of a licence will in addition to constituting a contractual infringement also render the respective products illegitimate and – at each stage of the distribution channel – give rise to all measures provided for under Art. 102 et seq. The enumeration in lit. a to e depicts that scope in the present context refers to the terms regarding duration of use, the CTMs concerned, the goods and services covered, the territory of use, and the quality of goods and services. As lit. a) explicitly mentions duration the use of the CTM after lapse or (premature) termination of the licence will constitute infringement. Unless national contract law provides otherwise (cf. above mn. 13) a licence may be granted for a fixed period or an indefinite period of time. However, according to recent case law of the CJ attention should be paid to the fact that, that irrevocable consent is not permissible.55 Therefore even in case an ‘irrevocable’ licence has been granted the trade mark proprietor will by virtue of Community law be able to withdraw his consent, but has to respect the legitimate expectations of the licensee and therefore may require reasonable notice or an equivalent.56 Whether or not termination violates contractual duties and which consequences follow therefrom will then be for the national contract law to decide. Attention should be paid to the fact that a premature termination of the contract may not only occur as a result of a breach of contract, but also in case of insolvency, as many insolvency laws allow the insolvency administrator to choose whether or not he will continue performance or terminate the contract. Whether or not this is the case will depend on the applicable insolvency law, i. e. the lex fori of the court administrating insolvency proceedings (cf. above Art. 21 mn. 10). Different from other important economies such as the US and Japan the Member States of the EU so far have not yet enacted particular a protection for licence contracts in insolvency.57 If due to the proprietor’s default the CTM forms part of the insolvency estate under Art. 21 and the administrator terminates the contract any further use of the licence will according to para. 2 lit. a) constitute trade mark infringement and may give rise to a claim for damages. The justification for the mention of the form covered by the registration may be found on the obligation to use a CTM under Art. 15 para. 2. It clarifies that use with the consent shall be deemed to constitute use by the proprietor and gives rise to the legitimate interest of the proprietor to ensure that the licensee uses the trade mark in a form that suffices to protect the CTM against revocation for lack of use (Art. 51 para. 1). This requires that the used trade mark by and large corresponds to the registered CTM and does not impair the distinctiveness. At the same time the inaccurate or deceptive use can constitute a ground for revocation of its own. 53

See comments on Art. 13 CTMR. Cf. Recital 9. 55 Opinion of Advocate General Cruz Villalo ´ n, 18 April 2013, C 661/11 – Martin y Paz Diffussion SA v. David Depuydt, mn. 66. 56 CJ Case C–661/11 Martin y Paz Diffussion SA v. David Depuydt, mn. 56 et seq. 57 Cf. the current Report of AIPPI, Q 241 on IP-licensing and insolvency. 54

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With regard to the goods and services the licence may cover all or any of those the CTM is registered for. In case the licence is restricted to particular (classes of) goods or services the respective limitation can be entered in the register (rule 34 c CTMIR). In order to allow for such recordal it accordingly is recommendable to ensure that the terms of the licence delineation correspond to the classes the CTM is registered for.58 According to lit. d) the territory to which the trade mark may be affixed may be limited by the licence contract. This may be one or several Member Sates or an administrative region of such states.59 Such geographical restriction similarly can be entered into the register. Attention should be paid that the restriction refers to the place where the mark is affixed,60 not where the respective goods later are marketed. This wording is deliberate and necessary to ensure the principle of Communitywide exhaustion as otherwise licence contracts could be (mis-)used to direct distribution channels and divide the internal market.61 The reference to the quality of goods in lit. e) is essential as it allows the proprietor to exercise control over the licensee with regard to quality and thereby preserve the acknowledged quality function, which although primarily in the interest of the proprietor also is of public interest (see above mn. 2). Of course the application naturally requires that quality standards have been agreed upon in the first place. The list of restrictions in para. 2 is enumerative. The failure to observe other limitations or terms of the contract will only expose the licensee to contractual remedies, but will not have any consequences under trade mark law. At the same time this rule implies that whenever a conduct amounts to a breach of contract and a ground for an action for infringement or misappropriation the proprietor may base its claims against the licensee transgressing the limits of the licence both on contract and on tort law. In this case it is both in the best interest of the parties and public interest of procedural efficiency to avoid parallel proceedings and combine all claims in a single law suit. Attention therefore should be drawn to the fact that competence to adjudicate the claims arising under the CTMR are regulated by specific rules comprised in Title X CTMR (see above mn. 16, 34) and will prevail over the general rules of the Brussels Regulation (Art. 94 para. 1). Keeping in mind that the rules on jurisdiction differ with regard to contractual claims (Artt. 94, 106 CTMR) as opposed to trade mark infringement (Artt. 94, 96 CTMR), it is strongly recommended to include a choice of law clause62 in favour of the Community trade mark courts (Art. 95 CTMR) into the licence agreement.63

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3. Standing to sue (para. 3) Para. 3 sets out the requirements under which the licensee is entitled to enforce rights 29 arising from the CTM and must be read in conjunction with para. 4 which allows him to participate in proceedings instituted by the licensor. The terseness of the rules has given rise to much speculation about what may be read in between the lines and in particular 58

v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 22 mn. 11. Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 19 mn. 1. 60 Hacker, in Stro ¨ bele/Hacker (eds.), Markengesetz, § 30 MarkenG, mn. 48 and 113; Ohlgart/v. Bomhard, in v. Mu¨hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 79; but see for the opposite opinion Schennen, in Eisenfu¨hr/Schennen (eds.), GMVO, Art. 22 mn. 14–15 and Zorzi, GRURInt 1997, 781, 793. 61 Cf. Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.8. 62 The reference to the Brussels Regulation at the same time implies that the parties, subject to the reservations made by Art. 20 para. 2 and Art. 21 para. 1 may conclude a choice of court agreement. 63 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 16 mn. 33. 59

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on the concept of a license as such (see above note 8 et seq.). Some authors have even gone so far to interpret the fact that the licensee has standing to sue as an indication that a licence confers a property interest.64 This, however, would have far reaching consequences as conferring a material position on the licensee would evoke the risk of parallel proceedings being brought by the proprietor and the licensee against the same potential infringer.65 This would not only overly burden an infringer, who may find himself approached by several sets of proceedings concerning the same infringement and increase his legal costs, but also bears considerable risk of overcompensation.66 The problem is enhanced by Art. 13 Enforcement Directive, which allows the right holder to choose between actual loss, adequate licence fees and unfair profits earned by the infringer. It is generally accepted that the claimant has the free choice, but may not combine the different methods with regard to the same damaging event and that with regard to calculation by a fixed amount the infringer only has to pay once.67 If proprietor and licensee independently are entitled to enforce substantive claims this generates a need for a specific coordination mechanism, as otherwise there is a risk that both demand compensation corresponding to the same loss (double recovery). Further if proprietor and licensee would be entitled to take independent actions, these may be instituted before different courts in different Member States.68 If the CTMR had intended to confer a selfstanding claim on the licensee it would have had to follow either the model of the English and Irish TMA69 or the Benelux TMA70 and provide for the coordination of parallel or subsequent proceedings. Keeping in mind that Community law in general (cf. Art. 29 et seq. Brussels Regulation) and the CTMR (cf. Art 109) in particular intend to prevent parallel proceedings makes this interpretation highly unlikely. 30 As the interpretation allowing that two separate persons may bring a law suit with regard to the same subject matter as such contradicts procedural efficiency it appears questionable why it is supported by many, in particular German, academics. The arguments repeatedly brought forward in support of this proposition are first that para. 4 sets out a substantive claim and second para. 3 otherwise would be redundant as the admissibility of standing to sue would result from general procedural law.71 Leaving aside the criticism spiked by the too generous application of national trade marks doctrine to the CTM (see above mn. 8) and the discussion whether para. 4 confers a substantive right (see below mn. 34), with regard to the interpretation of para. 3 in particular two things should be born in mind: First, that para. 3 is a genuinely procedural rule and therefore as such cannot confer any substantive claim on the licensee,72 second 64 Cf. Asendorf, GRURInt 2011, 802, 803 et seq.; Plaß, GRUR 2002, 1029, 1031; Ohlgart/v. Bomhard, in v. Mu¨hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 80. This solution is also favoured by Hoyng, in Franzosi (ed.), European Community Trade Mark, 273, 278. 65 Asendorf, GRURInt 2011, 802, 806. 66 For details on this discussion see McGuire, Die Lizenz, 324, 347 et seq. 67 Asendorf, GRURInt 2011, 802, 805. 68 Asendorf, GRURInt 2011, 802, 811. 69 Such for example is provided by Art. 31 UK TMA and Artt. 35, 36 Irish TMA, which both provide, that a licensee can only bring his claim without consent of the proprietor, if the latter is joined as claimant or defendant. In addition specific rules ensure that either the proprietor holds the proceeds for the licensee or the latters damages are deduced from the damage awarded. 70 See Art. 11 D Benelux TMA which provided that a licensee is competent to claim damages only if he joins the proceedings of the proprietor; the current version in Art. 2.32 Benelux CIP corresponds to Art. 22 CTMR. 71 Besken, Die Rechsstellung des Markenlizenznehmers (2008), 32; Engels, Die Rechtsnatur der Markenlizenz (1999), 106; Plaß, GRUR 2002, 1029, 1030; Steinbeck, GRUR 2008, 110, 113. 72 Hacker, in Stro ¨ bele/Hacker (eds.), Markengesetz, § 30 MarkenG, mn. 121; Stumpf, MarkenR 2005, 425, 427; Zorzi, GRURInt 1997, 781, 793;

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that the argument that the rule must have some particular meaning as it would otherwise be redundant,73 should be used with care. Redundancy can only occur in case the ‘natural’ rule is natural from the perspective of every single Member State – an assumption which should not be embraced with levity,74 taking into account that civil procedure law so far has not been the object of major harmonizing efforts of the EU. A closer look however reveals that an agreement on standing to sue for example is not allowed in Austria, France and Italy.75 Finally it is worth mentioning that here again the Benelux system apparently was the model for the rule, as exactly the same provisions are contained in Art. 2.32 BTIP. It is well established doctrine that in this case the licensee acts as the formal party, but the trade mark proprietor remains to be the material party.76 This restriction to a formal position is convincing both because it cures exactly the two main problems mentioned: if the licensee can only sue in place of the proprietor this bans both the risk of double recovery and of inconsistent judgments.77 Therefore the materials and a comparative analysis display that the essence of the rule is to state that an contractual agreement conferring the right to sue on the licensee must be accepted by the courts in all Member States. This is of some importance as the national requirements for standing to sue on behalf of another differ across the Union. Some countries even disapprove the concept and thus restrict the admissibility unless there is an explicit statutory provision to the contrary.78 But also with regard to such procedural codes which are familiar with the concept of standing to sue para. 3 would not be redundant as it overrules any further preconditions – such as proof of a legitimate interest – which otherwise may be apply under national civil procedure law. The introductory phrase ‘without prejudice’ to the contract clarifies that sentence one merely contains a default rule which may be displaced by a deviating contractual term.79 Whether the licensee is entitled to sue therefore will depend on the terms of the licence contract, which may for example provide in which cases the licensor is obliged to consent. Of course, it is similarly possible that the proprietor declares his consent ex ante by a respective contract term. Including an explicit term on this issue may be helpful as it invites the parties also to decide on who will cover the procedural expenses and what will happen with the proceeds in case the infringement action proves successful. Taking into account that the rule is genuinely procedural at the same time allows a consistent interpretation of the second sentence, which strengthens the position of an exclusive licensee. The introductory phrase ‘however’ implies that this rule is mandatory80 and thus independent of a respective contractual agreement. It should also be noted that the second sentence does not contain an independent rule, but by the wording ‘such proceedings’ refers back to the first sentence. Accordingly, the proceedings brought by the exclusive licensee are similar in type as those brought by an exclusive or non-exclusive 73

Hoyng, in Franzosi (ed.), European Community Trade Mark, 273, 278. This for example is the case in Austria, cf. the leading case Austrian High Court of Justice (OGH) July 2nd, 1969, JBl 1970, 198 according to which a contractual agreement on the standing to sue is not permissible; Stumpf, MarkenR 2005, 425, 427. 75 Cf. Art. 411 French Code de Procedure Civile, Art. 81 Italian Codice di Procedure Civile; for Austria see above previous footnote. 76 Jehoram/van Nispen/Huydecoper, European Trade Mark Law, 16.9.5 with reference to the Benelux Court of Justice, 7 June 2002, NJ 2003, 426 – Marca v Adidas. 77 Cf. Recital 16. 78 See references above in footnote 74 and 75. 79 Ohlgart/v. Bomhard, in v.Mu ¨ hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 80. 80 Cf. Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 23 mn. 4 ‘non-derogable’ 74

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licensee under sentence 1. This said there cannot be any doubt that also sentence 2 in its essence is nothing but a statutory standing to sue. Its main purpose is to provide a coordination mechanism and ensure procedural efficiency.81 The licensee’s standing to sue on behalf of the proprietor entitles him to enforce the proprietor’s rights arising under Artt. 9, 101 et seq. CTMR against the infringer.82 The fact that he in substance enforces a claim of the proprietor is of particular relevance with regard to the subject matter of the claim as it implies that it covers all rights arising from the CTM as such and is not restricted to the scope of the respective licence.83 The formal notice has the main purpose to inform the proprietor before the action is instituted. This takes into account that usually the proprietor will be obliged under the license contract to ensure the licensee’s undisturbed use. Accordingly the licensee will usually call on the proprietor to institute enforcement proceedings.84 This is of particular importance if there – in line with para. 1 – are several excusive licensees of limited geographical or substantive scope as the action of one will not necessarily take full heed of the interests of others. In addition, any action for infringement may give rise to a counter-attack, such as a challenge of validity, and therefore the proprietor has a legitimate interest to decide whether or not to bear such risk. Finally a formal notice is indispensable as proceedings brought by the licensee are brought on the proprietor’s behalf and necessarily will block parallel proceedings by the latter. The CTMR is silent on what may be considered as formal notice. In mind of its purpose and the likely need to prove in the course of subsequent proceedings that it has been received by the proprietor suggest that it must be in writing and should be delivered to the proprietor in a manner which provides sufficient evidence in case of a later dispute. If the proprietor does not respond to this formal notice he will accordingly waive his right to bring infringement proceedings himself and will instead have to rely on the licensee’s respective effort to succeed, but of course may join proceedings in support as provided by the respective lex fori. Similarly the appraisal what appears to be an appropriate period raises some difficulty, as it seems impossible to narrow it down to a specific time frame. It must seek to balance the conflicting interests of the right holder to decide whether to take action and of the licensee who is worried about the impact of the infringement. It has been suggested to determine the appropriate length on a case by case basis and in particular take account of what is necessary to prevent further damage.85 Depending on the circumstances the appropriate period was suggested to reach from anything between two days and a month or longer.86 Perhaps guidance may be sought by recourse to Art. 28 (3) English Trade Mark Act 1938 which supposedly was the model87 and similar rules in other countries that provide for a period of 2 or 3 months to be appropriate.88 There has been some discussion whether the entitlement to exercise his rights under para. 3 requires that the licensee is registered with the office, which in fact is an 81

Zorzi, GRURInt 1997, 791, 795. Cf. Higher Regional Court (OLG) Karlsruhe, 23 June 2010, 6 W 21/10, WRP 2010, 1279, which explicitly states that the licensee enforces the rights confered on the proprietor by Art. 9 CTMR; a similar approach may be found on Kitchin/Llewelyn et al., Kerly’s Law of Trademarks (2005)14, 13–081. 83 Hoyng, in Franzosi (ed.), European Community Trade Mark (1997), 273, 278. 84 Cf. the corresponding rules in Art. 30 UK TMA and Art. 35 Irish TMA. 85 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 22 mn. 42. 86 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 22 mn. 3; Hoyng, in Franzosi (ed.), European Community Trade Mark (1997), 273, 278. 87 Zorzi, GRURInt 1997, 791, 794 with further references. 88 Cf. the national reports on AIPPI, Yearbook 2006/I, p. 311 et seq., where with regard to EU Member States in particular Spain (Additional Provision 1: three months) and Czech Republic (Art. 18 Czech TMA Two months) are mentioned. 82

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undisputed rule under national trade mark law in a number of Member States.89 However, a systematic interpretation militates against such a restriction.90 As pointed out above the rights enforced arise under Art. 9 CTMR, whereas the effect of registration regulated in Art. 23 is part of the rules on contractual exploitation of CTMs.91 Accordingly, the current proprietor should be entitled to enforce his rights independent of whether or not he is registered92 (see above Art. 17 mn. 32). With regard to the licensee there is an additional argument, namely that the licensee does not enforce his own right, but derives his right to sue from the (registered) proprietor (see above mn. 31). Thus the registration as a licensee should not be a requirement under para. 3.93

4. Claim for damages (para. 4) Para. 4 covers the situation that the infringement of the CTM has detrimental effects 39 on the licensee. In fact this situation may either occur in case the infringer’s market entrance leads to a shift of sales volume from the licensee to the infringer, but even independent of such competition also may be the result of an act impairing the repute of the CTM. The clarification that damages of a licensee have to be compensated is of utmost 40 importance as it prevents the situation that the infringer can avoid financial responsibility for his acts relying on the fact that a right holder, who has licensed out his CTM instead of using it himself, may not have suffered any direct financial damage from infringement.94 In this respect it must be emphasised that this gap cannot be bridged by the rules on calculating damages that are not provided for by the CTMR, but will apply by reference to national law, albeit harmonized by the Enforcement Directive. The latter only provides methods for calculating a damage that has actually occurred and thus requires the right holder first to state and prove that he has suffered a verifiable damage. Only on this basis the alleviation with regard to calculation of damages will be applicable. In case the right holder himself did not market any goods using the trade mark this problem therefore may be overcome by the statement of the licensee, who ‘for the purpose of obtaining compensation for damage suffered by him’ is entitled to intervene in infringement proceedings brought by the proprietor of the CTM. It has been argued that the rule allowing intervention implies the substantive 41 entitlement of any licensee to claim damages independently from the proprietor.95 Based on this assumption some authors even go further and derive that the licensee is granted a legal position which in relation to a third party infringer is fully independent of the right holder. Practical consequences of this conclusion include the right of the 89 Cf. Art. 25 (4) UK TMA and Art. 28 (4) Irish TMA, which both require registration unless it was ‘not practicable’. Also compare Art. L 714–4 (3) French Code de la Proprie´te´ Intellectuelle which states tthat a licensee may intervene in proceedings brought by the proprietor independent of whether or not he is registered. From this rule it is inferred that he may only institute proceedings in his own name if the license has been recorded. 90 Manual on the Proceedings before OHIM, Part. E.3.2., 1 a reads: ‘In all other respects, the holder of a licence concerning a CTM which is not entered in the Register may avail himself of the rights that the CTMR confers on CTM licensees, in particular the rights referred to in Article 22 (3) and (4) CTMR.’ 91 Asendorf, GRURInt 2011, 802, 807. 92 Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 22 mn. 3. 93 Higher Regional Court (OLG) Du ¨ sseldorf, 8 November 2005, 20 U 110/04. This interpretation further is in line with Art. 4 para. 2 WIPO Joint Recommendation concerning Trade Mark Licences, where it is held that the recordal should not be a requirement for a licencee to join infringement proceedings. 94 Petry/Schilling, WRP 2009, 1197, 1198. 95 Asendorf, GRURInt 2011, 802, 806 et seq. with further references; Hoyng, in Franzosi (ed.), European Community Trade Mark (1997), 273, 278.

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licensee to enforce his damage in a separate, i. e. additional set of proceedings in parallel or subsequently to the right holder’s law suit, and accordingly to exercise all procedural rights, such as the right to choose between the different methods of calculating damages, as of his own right. However, this far reaching deduction seems to be strongly influenced by the respective national discourse on the parallel situation under national trade mark law and thus has to be treated with care, even more so, as national rules on this issue show a broad deviation and have so far been omitted form European harmonization (see Art. 8 TMD). It therefore appears even more important to follow the imperative of autonomous interpretation and to recollect the historic and systematic context of the rule. Starting point is Art. 9 which clearly states that it is the proprietor of the trade mark who is entitled to all the remedies. Thus in case of use of a mark which is in the course of application it is the applicant who may claim compensation, after registration it is the registered proprietor who may seek relief in case of infringement. That para. 4 is an exception with regard to damages, but does not imply that a licence confers a position akin to the proprietor is further underlined first by the fact that the rule does not differentiate between non exclusive and exclusive licence, second that para. 4 only refers to damages, but does not cover any other remedies, such as seeking an injunction. As provided by Art. 102 the right holder can apply to the court to enjoin any third party, who is not entitled to use his CTM, from further use. With regard to all other remedies Art. 102 para. 2 refers to the national law of the Member State in which the infringement has occurred (ex loci delicti). As only the law of a Member State can be called to govern the remedies for infringement and this issue has been largely harmonized by the Enforcement-Directive, the right holder in addition to prohibiting further use can at least claim damages and the recall of goods from the market channels. As mentioned above the fact that the proprietor has granted a licence may either result in a reduction of his direct damages or – in particular circumstances – even could lead to the proprietor being unable to prove damages at all, which in particular may occur in case the remuneration for the licence is not dependent on the licensee’s turnover. This problem is cured by para. 4 which states that the licensee may intervene in the infringement proceedings instituted by the proprietor and rely on the damage he has suffered to substantiate either the fact that damage has occurred or to ensure that the actual damage is adequately calculated.96 The rule, however, neither indicates the procedural standing of the licensee nor does it distribute the damages between proprietor and licensee. With regard to the term ‘intervene’ it has to be emphasised that it is used as a generic term and does not imply a clear distinction between intervention and joinder, which is drawn in some national procedure codes, but not familiar to all Member States. This is underlined by the fact that different language editions show a variance. Accordingly the licensee’s right to ‘intervene’ may not be interpreted as a specific procedural concept with a defined technical meaning. Taking into account that the requirements for intervention are quite different in the Member States will also prevent the hasty conclusion that the rule may be redundant (see above mn. 27.)

5. Registration of licences (para. 5) 47

Para. 5 resembles Art. 17 para. 5 and 19 para. 3 and allows registration of the licence. As mentioned above the registration system is quite refined and does not merely allow 96

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Cf. German Federal Court of Justice (BGH), 19 June 2007, I ZR 93/04 – Windsor Estate.

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Effects vis-a`-vis third parties

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the entry that a licence has been granted, but gives room to register more precisely the type and scope of the licence (see above mn. 12 and rule 34 CTMIR). Commentators have repeatedly stated that the registration is not constitutive,97 meaning that it is not a requirement for formal validity of the grant of licence. Therefore even if unregistered the licence will constitute consent to use the CTM and thus rule out infringement. However, as discussed in the context of Art. 17 para. 5 the registration will decide on whether and from what point in time the licence will have effect vis-a`-vis third parties (see Art. 23 mn. 8).98 This rule is of particular relevance for licensees as the protection of their prior right in case of subsequent transfer or grant of irreconcilable further licences against the respective assignee or licensee will depend on either actual or constructive knowledge, the latter being achieved by said registration. If by contrast the third party may rely on the clear register the licence will lapse, the continued use accordingly will be unlawful and entitle the new proprietor to infringement remedies. The licensee in turn will be reverberated to contractual claims against the (former) proprietor. The protection rendered under Art. 23 para. 1 as such is part of the mandatory lex protectionis and therefore not open to contractual disposition. Insofar as parties wish to exclude the protection afforded to the licensee they can for instance include a clause into the contract which allows the proprietor to terminate the contract in the event of a transfer of the CTM. The termination of the licence contract then will of course ensure that the mechanism provided in Art. 23 is de facto rendered ineffective. In the alternative the parties may agree not to enter the licence into the register, which will have a similar effect provided that the transferee is in good faith regarding the non-existence of the licence. By contrast a contractual clause in which the licensee waives his protection under Art. 23 however would be void as is runs contrary to mandatory community law. The formal requirements for recording a licence are provided for by rule 33–35 CTMIR. Both proprietor and licensee may apply for entry into the register. The applicant will usually file a form and provide proof by either a separate signed document containing the parties’ consent or a (redacted99) copy of the licence agreement. In addition a registration fee of currently 200 E (Rule 23 CTMFR) has to be paid. If all requirements are met and the fees have received by the office the competent division will register the notice and publish it in the CTM Bulletin. The same administrative rules apply for modification or cancellation. The rules on the recordal, including the consequences of a deficient application and the remedies against a decision of the Office follow the same scheme as provided for recordal of transfer or rights in rem (see below Art. 23 mn. 10 et seq.).

Article 23 Effects vis-a`-vis third parties 1. Legal acts referred to in Articles 17, 19 and 22 concerning a Community trade mark shall have effects vis-a`-vis third parties in all the Member States only after entry in the Register. Nevertheless, such an act, before it is so entered, shall have effect vis-a`vis third parties who have acquired rights in the trade mark after the date of that act but who knew of the act at the date on which the rights were acquired. 97

Ingerl, Die Gemeinschaftsmarke, p. 112. See Ingerl, Die Gemeinschaftsmarke, p. 112, who states that the lack of registration does not prevent the consideration of the licensee’s use under Art. 15 CTMR. 99 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 23 mn. 5. 98

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2. Paragraph 1 shall not apply in the case of a person who acquires the Community trade mark or a right concerning the Community trade mark by way of transfer of the whole of the undertaking or by any other universal succession. 3. The effects vis-a`-vis third parties of the legal acts referred to in Article 20 shall be governed by the law of the Member State determined in accordance with Article 16. 4. Until such time as common rules for the Member States in the field of bankruptcy enter into force, the effects vis-a`-vis third parties of bankruptcy or like proceedings shall be governed by the law of the Member State in which such proceedings are first brought within the meaning of national law or of conventions applicable in this field. Rc. 4, 11, 13 Bibliography: Frauke Asendorf, ‘A Piece of (the) Cake – Damages for Proprietor and Licensee Due to Infringement of Community Trade Marks’, GRURInt 2011, 802; Sandrine Bouvier-Ravon, ‘Subrogation du cedant dans les droits du cessionaire, dans un contract de cession de brevet, de marque ou de dessin et mode`le’, Proprie´te´ industrielle no. 12/2012, form. 4; Michael Fammler, ‘Die Gemeinschaftsmarke als Kreditsicherheit’, WRP 2006, 534; Gordon Humphreys, ‘Rights in Rem, Levy of Execution and Bankruptcy: The CTMR “Feel Bad” Factor’, E.I.P.R. 2001, 281; Robert Kazemi, ‘Rechtswirkungen von Regisereintragungen im Marken und Geschmacksmusterrecht’, MarkenR 2007, 149; Mary-Rose McGuire, ¨ bertragung von Gemeinschaftsmarken’, GRUR ‘Die Funktion des Registers fu¨r die rechtsgescha¨ftliche U 2008, 1; Mary-Rose McGuire/Jens Kunzmann, ‘Sukzessionsschutz und Fortbestand der Unterlizenz nach “M2Trade” und “Take Five” – ein Lo¨sungsvorschlag’, GRUR 2014, 28; Joanna Schmidt-Szalewski, ‘La marque communautaire’, La Semaine Juridique Entreprise et Affaires no. 31, 1994, 379; Karin Stumpf, ‘Die Eintragung von Lizenzen im Markenregister’, MarkenR 2005, 425.

Content I. Introductory remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. The function of the register in the context of contractual exploitation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Resolving conflicting transactions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Registration formalities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Comments on individual rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Effect vis-a`-vis third parties (para. 1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Lack of estoppel in case of universal succession (para. 2) . . . . . . . . . . 3. Effect of registration of compulsory enforcement measures (para. 3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Effect of registration of bankruptcy (para. 4). . . . . . . . . . . . . . . . . . . . . . . . .

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I. Introductory remarks 1. The function of the register in the context of contractual exploitation 1

As mentioned above (see above Art. 16 mn. 13) the CTMR has deliberately chosen to implement a strong registration system and make use of it not only for the purpose of accrual of trade marks and search for their existence, but also to foster legal certainty with regard to contractual exploitation of CTMs. It alerts third parties – potential transferees, lenders and users – of all rights existing with regard to registered trade marks and it has been repeatedly mentioned that it is exactly this register which is a competitive advantage in comparison to many national trade mark systems. In fact it seems to be of particular importance with regard to credit securities and (exclusive) licenses.1 1

Cf. Fammler, WRP 2006, 534.

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The register provides a consistent scheme based on the concept of negative publicity. It on the one hand allows the entry of detailed information on both the persons holding rights in the CTM and the scope of their entitlement and on the other hand penalize failure to register relevant transactions by denial of third-party effect. With regard to a bona fide third party it is deemed that what has not been registered has not taken place.2 By this means the register can compensate the lack of control regarding IPRs, as a transferee or other contracting partner of the proprietor has no possibility to otherwise ensure what previous transactions have been conducted.3 The possibility to rely on a clear register, i. e. the lacking registration is not dependent on whether or not the respective party has actually consulted the register (formal publicity). Yet, it does not go so far to protect a mala fide third party. A person who has actual knowledge of existing prior rights at the time of concluding a transaction in his favour can neither subsequently claim to have been ignorant of such rights nor rely on the lack of registration. The register does not afford positive publicity, the fact that someone is entered into the register will not make him the proprietor, beneficiary or licensee, if he lacks the respective substantive claim.4 If for instance a transfer is registered in favour of a transferee, but in fact void ab initio, because in violation of cartel law, then despite the recordal the new transferee will not validly obtain the CTM. By virtue of reference the same rules apply to an application for a CTM (Art. 24) and to collective CTMs (Art. 66). Of course with regard to a CTM application all references to the register have to be read as reference to the file.

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2. Resolving conflicting transactions Although similar rules on bona fide acquisition may be found in many national laws5 6 and therefore remind us of familiar rules attention has to be paid to the particular legal consequences. Apparently the rule has spiked a controversy on how conflicts between conflicting transactions should be resolved and in particular whether a person who is still registered as a proprietor but in the meantime has transferred the CTM to another, can validly transfer the CTM to a bona fide third party.6 Whereas some authors hold that exactly this capacity of the former registered proprietor is the essence of the rule,7 others have disputed it under the nemo dat doctrine.8 However, the question seems wrongly put and the problem can easily be resolved by focussing on whether the third party can validly obtain the CTM instead of asking whether the (former) proprietor is able to transfer it. Because in fact a person registered as, but no longer the proprietor cannot transfer the CTM (nemo dat). Yet, the third party may obtain the legal position by virtue of a bona fide acquisition under Art. 23. So far as even this proposition has been questioned despite the clear wording, this seems rather provoked by the fact that from a comparative perspective there are

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Hacker, in Stro¨bele/Hacker (eds.), Markengesetz, § 27 MarkenG, mn. 70. McGuire, GRUR 2008, 11, 14. 4 Cf. OHIM Dec. of 15.12.2004 R 638/2003-4 – White Party. 5 For a comparative analysis see Study Group on a European Civil Code, Transfer of Title in Moveables (2011), 949 et seq. 6 For details see Fammler, WRP 2006, 534, 537 with further references. 7 Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 17 mn. 7. 8 See for example Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 23 mn. 8 et seq.; Schultz, Kommentar zum Markenrecht, § 28 mn. 17 et seq. 3

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different mechanisms to ensure bona fide acquisition9 or because some national trade mark systems follow a different concept. Against this background it comes as no surprise that the interpretation has been particularly put to doubt by German authors, as Germany apparently is on of the few Member States who do not rely on the register to resolve conflicting transactions but instead follow a strict priority rule.10 7 With regard to both transfer and rights in rem the protection by registration in essence results in an affirmation of the priority rule. As a result it decides which of several conflicting rights will prevail, a legal consequence well known under many national systems which does not raise an particular problems. In case of double transfer to two different parties equally in good faith the first transaction registered, i. e. becomes effective against third parties, prevails. That a bona fide second transferee registered first will become the lawful proprietor in the meantime has also been confirmed by the Court of First Instance, which has dismissed the claim of the first transferee against the second to agree to the recordal of his name as rightful proprietor accordingly.11 8 With regard to licences the issue however is more difficult. As mentioned above the rules of the CTMR literally only refer to the ‘licence’ and not to the ‘licence contract’. In line with this delineation Art. 23 accordingly orders that a registered prior licence will remain unaffected by a subsequent transfer or further licence of the CTM. In addition, a prior licence will bind a later transferee if the transferee had actual knowledge at the relevant point in time. Similarly, in case of conflicting licences the first one will prevail only if registered or known to the subsequent licensee, but otherwise on registration of the latter will be restricted or terminated as far as irreconcilable. 9 This raises the question what impact this will have on the licence contract, i. e. whether licence and licence contract can be separated or whether the protection of the licence in fact will extend to the licence contract. Apparently, the question has not yet been discussed in detail. It is suggested that the CTMR follows the second solution to transfer the contract as such,12 which is preferable from the perspective of all three parties concerned. This proposition in a nutshell is based on the following arguments:13 First because Art. 22 (2) and (3) CTMR by their explicit wording are based on the assumption that a licence is accompanied by a contractual relationship between proprietor and licensee;14 second, because any excess in duration of the licence contract will constitute an infringement. Third a transferee of a trade mark, who unexpectedly has incurred the obligation to allow use by a prior licensee otherwise would not even be entitled to collect the respective licence fees.

9 For an overview on the different national approaches on ‘Good Faith Acquisition from a person not entitled to transfer ownership’ see Study Group on a European Civil Code, Transfer of Moveables, Art. 3:101 (General Rule) and Art. 3:102 (Good Faith Acquision of Ownership free of Limited Proprietary Rights), available at www.sgecc.net (last visited 15 May 2014). 10 According to a current AIPPI report the predominant system is that effect vis-a `-vis third parties requires registration or both a transfer and assignment, cf. AIPPI, Yearbook 2006/I, p. 631 et seq. Only Slovenia and Germany are mentioned as Member States which have no such requirement. 11 GC Case T-83/09 [2011] ECR II-00267 – Chalk/OHIM. 12 v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 rnn 37. 13 For a detailed analysis see McGuire/Kunzmann, GRUR 2014, 28, 30 et seq. 14 Also cf. the current statement of the CJ 19.7.2012, C 376/11, mn. 47, where the strong relation of contract and licence was emphasised: ‘Consequently, it must be concluded that, by granting a licence, the proprietor of a trade mark confers on the licensee, within the limits set by the clauses of the licensing contract, the right to use that mark for the purposes falling within the area of the exclusive rights conferred by that mark’.

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Art. 23 CTMR

3. Registration formalities The competence to administer the CTM register lies with the Office, more precisely with the Administration of Trade Marks and Legal Division (Art. 133). The registration formalities for all recordals under this section are set out in detail in the Community Trade Mark Implementing Regulation (CTMIR). The relevant rules may be found in Rule 31 et seq. CTMIR and are structured according to the order of Artt. 17–23. All requests can be made in any of the five official languages of the office (Rule 95 a CTMIR). Whereas the facts to be provided naturally differ depending on the kind of transaction or event to be recorded, the administrative procedure is more or less streamlined. This in particular concerns issues such as entitlement to apply for registration including the appointment of a representative, fees due and the consequences of non-payment, service of documents and finally the means of appeal against a decision of the Office. Who is entitled to apply for registration is provided for in the separate articles and may comprise the parties to the transaction and the court conducting insolvency proceedings respectively. A common rule however is established with regard to parties who have their registered seat, domicile or establishment in a Non Member State. Such persons have to appoint either a legal practitioner, an approved OHIM professional representative or an employee of an establishment located in the EU for all proceedings before the Office other than that of initial application for a CTM (Art. 92). With regard to formal requirements and scrutiny it goes without mention that all applications for recordal have to comprise the CTM registration number, name, address and citizenship of natural persons or the law under which a legal person was established and the scope of the transaction (see Rule 11 b CTMIR). Additional information, such as on the geographical scope and type of licence is not mandatory, but may be filed if entry into the register is desired. In addition the applicant will have to file a document which establishes that the transaction to be recorded has taken place15 and that the registered proprietor, who may be affected by the recordal, has consented to registration. This said the office will neither require particular formalities, i. e. a mere copy of the respective documents will suffice, nor will it examine whether the purported transaction is valid under the applicable law, but instead will be satisfied by a request signed by both parties. Whereas the registration of a mere change of name or of a transfer under Art. 17 is exempted from administrative fees, such must be paid for recordals concerning a right in rem, levy of execution, insolvency or a licence. A registration fee will fall due for all entries, be it accrual, alteration or termination of rights or facts to be recorded or deleted respectively. A failure to pay the appropriate recordal fees will lead to the request being deemed not filed and the applicant will be notified accordingly. All other deficiencies will be similarly notified and have to be remedied within two months, otherwise the application for registration will be refused (Rule 31 para. 6 CTMIR). The CTMIR provides for detailed rules on service of documents (cf. Rule 61 CTMIR et seq.). Attention however should be paid to the fact that according to Art. 17 (8) all relevant information will be sent only to the registered proprietor but not to an applicant, even after application has been received by the Office.

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As a general rule all decisions of the Office are subject to appeal.16 With regard to the Administration of Trade Marks and Legal Division, which is in charge of administrating the register, any person adversely affected by their decision can file an appeal (Art. 59) within two months from the date of notification of the decision (Art. 60). Provided that the fee has been paid the Division will then consider whether the reasons for contesting the decision are sound – and if so – rectify it of its own accord (Artt. 61 para. 1 and 62 para. 1). If the decision is not rectified it will be remitted to the Board of Appeals (Artt. 61 para. 2, 62 para. 4). The board of appeal may either decide itself or remit the case back to the competent Division (Art. 64). However in practice very few appeals have been brought as the parties instead can re-file their application, which is both timeand cost efficient.17

II. Comments on individual rules 1. Effect vis-a`-vis third parties (para. 1) Para. 1 concerns the requirements under which a party may invoke its rights against third parties and thus again a genuine question of the country of protection (see above Art. 16 mn. 6). Sentence 1 clearly states the general rule that a transfer, right in rem or licence will have effects vis-a`-vis third parties only after entry in the register. Sentence 2 then makes an exception and declares the general rule is inapplicable with regard to any party who had actual knowledge of the fact that the register is inaccurate, because a disposition has taken place in the meantime. In its essence the rule allows a bona fide third party to obtain the promised legal position unburdened of conflicting prior rights (see above mn. 2). 17 To avoid misunderstandings it may be emphasised that the rule is mandatory and comprehensive, i. e. it is the only protection vis-a`-vis third parties afforded. A transferee, beneficiary or licensee of an unregistered right therefore cannot fall back on more favourable rules, which may be contained in the national law applicable under Art. 16.18 First there is no genuine gap to be filled and second application of additional national rules would impair the unitary character.19 18 First it is important to note that sentence 1 makes the registration a formal prerequisite of effect vis-a`-vis third parties without reference to whether or not the parties have consulted or actually relied on the register. The register insofar appears as a means of constructive or imputed knowledge,20 which under sentence 2 can be destroyed by positive actual knowledge. Second, the rule implies that it is irrelevant whether the third party should have known. In line with this allocation of risk it is not the reliant third party, who has to establish its good faith, but rather the party who has failed to register will have the burden of proof for a lack of good faith. 19 Despite this concise concept the somewhat unfortunate wording21 of the rule has given rise to two points of discussion. The first focuses on the meaning of the phrase ‘in all Member States’, which has been read as restricting the parties entitled to rely on 16

Recital 13; cf. OHIM 4th Board of Appeals, 22 July 2005, R 650/2005-4 – Recordal Fee. Humphreys, EIPR 2001, 281, 285. 18 Schennen, in Eisenfu ¨ hr/Schennen (eds.), GMVO, Art. 16 mn. 14, Art. 23 mn. 12. 19 But cf. Stumpf, MarkenR 2005, 425, 428, who apparently holds that it is possible to fall back on a more favourable national law. 20 Renck, in Gielen/v. Bomhard (eds.), Concise European Trademark Law, Art. 23 mn. 1. 21 See the criticism Fammler, WRP 2006, 534, 538. 16 17

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Effects vis-a`-vis third parties

Art. 23 CTMR

sentence 1 to residents of Member States.22 However, the ratio of the rule militates against this interpretation, as there is no apparent justification why residents of Non Member States should be treated differently. It would lead to the necessity to determine the validity of a transaction differently with regard to different categories of third parties. If with regard to EU-residents and non residents different persons would be held to be the lawful proprietor of the CTM this would impair the unitary character of the CTM. In addition this interpretation would run contrary to the aim to provide an accurate register as a reliable infrastructure for contractual exploitation. This suggest that the phrase ‘in the Member States’ does not refer back to the ‘parties’, but rather refers to the effect and thus is nothing more than a synonym for the doctrine of the country of protection.23 The fact that para. 1 is framed in terms which refer to a Community context therefore should not restrict is scope of application.24 A further argument concerns the question whether the phrase ‘effects vis-a`-vis 20 third parties’ relates only to other contracting parties or any third party, in particular such encroaching on the CTM. Some authors have argued in favour of a broad understanding and on this basis concluded that the transferee will not be entitled to enforce his rights under Art. 9, 101 et seq. CTMR (see above Art. 17 mn. 33). Similarly it has been held that a licensee unless registered is not entitled to bring a law suit under Art. 22 (3).25 Whether this opinion is correct will again turn on two points which have been discussed previously in the context of transfer and licence respectively, namely on the scope of application of the rules of the entire Section 4 and whether the licensee sues in his own right or rather enforces the claims of the proprietor. Based on the assumption that the rules of this section only refer to third parties who have some kind of entitlement with regard to the CTM as object of property (cf. Art. 17 mn. 32, 37) and the concept that the licensee by virtue of Art. 22 (3) is conferred a standing to sue in place of the right holder (see above Art. 22 mn. 26 et seq.), registration for both reasons is not a requirement for instituting infringement proceedings. The latter will be governed only by Artt. 9, 101 et seq. and the reference to national law respectively.

2. Lack of estoppel in case of universal succession (para. 2) Para. 2 complements para. 1 second sentence and provides for a further exception 21 from the dependency of any effect vis-a`-vis third from registration. It states that the general rule shall not apply in the case of a person who acquires the CTM or a right concerning the CTM by way of transfer of the whole of the undertaking or by any other universal succession. It is a natural consequence of the fact that in case of a universal succession there is no explicit transaction regarding the CTM which could serve as the basis of bona fide reliance.26 Despite its somewhat misleading wording the essence of the rule is to clarify that a person who by virtue of a universal succession finds himself in the shoes of the prior proprietor will be bound by all his dispositions whether or not they have been registered.27 The successor therefore by definition will obtain exactly the 22

Cf. v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 17 mn. 3. Fammler, WRP 2006, 534, 538; Humphreys, EIPR 2001, 281, 283 24 For a detailed discussion and similar recommendation see Humphreys, EIPR 2001, 281, 283 et seq. 25 Fezer, Markenrecht, Part F. Gemeinschaftsmarkenrecht, mn. 42; Tritton, Intellectual Property in Europe, 3–242. 26 Fammler, WRP 2006, 534, 537 27 Humphreys, EIPR 2001, 281, 283; Schmidt-Szalewski, Semaine Juridique Entreprise et Affaires n 31, 1994, 379, B21. 23

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CTMR Art. 23

Community Trade Mark Regulation

same legal position as his predecessor had, even existent good faith reliance on a register would not be protected.28 As far as the opposite interpretation has been favoured, namely that the transfer to the new proprietor by means of a universal succession will have third party effect independent of registration,29 two additional arguments may be brought forward: first, if the universal succession would be fully valid irrespective of registration there is no rule to cure the resulting discrepancy between the register and the actual legal status and second, such rule may provoke abusive practices as the proprietor by transferring his business could relieve himself from charges, such as unpublished security interests.

3. Effect of registration of compulsory enforcement measures (para. 3) 22

Para. 3 merely clarifies the scope of application of paras 1 and 2, which explicitly refer to transactions under Artt. 17, 19 and 22, and raises the question what effect registration of compulsory enforcement measures may have. However, as the substantive effects of enforcement are so closely connected to the applicable procedural law, the CTMR with regard to such wisely refers to the national law of the Member State determined in accordance with Art. 16. In order to ensure consistency the same then must apply to the effects of registration. Apart from supplementing Art. 20 the main function of para. 3 therefore is twofold. First it alerts parties to the possibility of recording enforcement measures, second it ensures that a mandatory national registration requirement applicable by virtue of Art. 16 will be discharged by recordal in the CTM register.

4. Effect of registration of bankruptcy (para. 4) Para. 4 has a similar purpose as para. 3. It clarifies that whether or not insolvency proceedings have to be registered in order to preserve rights vis-a`-vis third parties is not governed by paras 1 and 2, but instead by the law applicable to insolvency proceedings. Again the main function is to draw the attention of beneficiaries of such measures to the fact that a recordal is possible and to provide for the necessary infrastructure in case the applicable national law does make the effects of such measures dependant on registration. A reference in national (trade mark) law requiring registration of insolvency measures therefore is discharged by recordal in the CTM register. 24 This said it should be mentioned that the wording of the rule is at fault as the legislator in the course of the 2004 reform (see above Art. 21 mn. 4) obviously failed to adapt it to the new version of Art. 21. This does not only concern the heading, which should have been changed from ‘bankruptcy’ to ‘insolvency’ proceedings, but more importantly the determination of the applicable law. As Art. 21 by reference to the European Insolvency Regulation has replaced the priority principle by the exclusive jurisdiction of the Member State where the debtor has his centre of main interest, the same must naturally apply with regard to registration requirements. 23

28

Ohlgart/v. Bomhard, in v.Mu¨hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke, p. 76. See for example v. Kapff, in Ekey/Klippel (eds.), Markenrecht, Art. 23 mn. 7; Renck, in Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law, Art. 23 mn. 2. 29

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The application for a community trade mark

Art. 24 CTMR

Article 24 The application for a community trade mark as an object of property Articles 16 to 23 shall apply to applications for Community trade marks. Rc. 11 Bibliography: Sven Stu¨rmann/Gordon Humphreys, ‘Umwandlung von Marken im Gemeinschaftsmarkenrecht’, GRURInt 2007, 112; Thomas Schafft, ‘Rechtsschutz aus Gemeinschaftsmarken zwischen Anmeldung und Eintragung’, WRP 2005, 968.

Whereas a CTM registered with the OHIM is considered a full fledged intellectual property right and subject to the standard rules of national property law, a trade mark application would rather be characterised as an entitlement to such a property right to accrue. Against this background Art. 24 strengthens the applicant’s legal position and his possibilities to contractually exploit his CTM to come. Instead of setting out detailed rules for trade mark applications, which would have led to many repetitions, the legislator understandably uses the regulatory technique of reference. However, the rules on CTMs of course can only be applied mutatis mutandis. The right of the licensee to sue an infringer and claim damages (Art. 22 (3) and (4)) may serve as an example. The entitlement naturally can only apply with regard to the compensation under Art 9 (3). Two further important differences must be kept in mind: First, of course all references to the register must be replaced by a reference to the application files1 and the language for all recordals has to be the first or second language of application (Rule 95 b CTMIR).2 Second, in case the application for a CTM is finally refused by the Office all transactions concerning the CTM application will similarly be automatically rendered void ab initio.3 In case the application leads to a registered CTM all rights in the application will continue in the CTM. Whether the same rule applies in case they are converted into a national trade mark (Art. 112 et seq.), i. e. can be interpreted to extend to such national trade marks is a matter of both contract and national trade marks law.4 1

Schennen, in Eisenfu¨hr/Schennen (eds.), GMVO, Art. 24 mn. 4. For details see Manual for Proceedings before OHIM Part E 3 1, 3.1. 3 Ingerl, Die Gemeinschaftsmarke, p. 114. 4 Cf. German Federal Patent Court (BPatG) 9 November 2004–27 W (pat) 192/02. 2

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TITLE III APPLICATION FOR COMMUNITY TRADE MARKS SECTION 1 Filing of applications and the conditions which govern them Article 25 Filing of applications 1. An application for a Community trade mark shall be filed, at the choice of the applicant: (a) at the Office; (b) at the central industrial property office of a Member State or at the Benelux Office for Intellectual Property. An application filed in this way shall have the same effect as if it had been filed on the same date at the Office. 2. Where the application is filed at the central industrial property office of a Member State or at the Benelux Office for Intellectual Property, that office shall take all steps to forward the application to the Office within two weeks after filing. It may charge the applicant a fee which shall not exceed the administrative costs of receiving and forwarding the application. 3. Applications referred to in paragraph 2 which reach the Office more than two months after filing shall be deemed to have been filed on the date on which the application reached the Office. 4. Ten years after the entry into force of Regulation (EC) No 40/94, the Commission shall draw up a report on the operation of the system of filing applications for Community trade marks, together with any proposals for modifying this system. Rc. 7, 12 Bibliography: OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part A, Section 1 (Means of Communication, Time Limits).

Content I. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Filing an application at the Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. e-filing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Filing by telecopier/telefax. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Paper filing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Filing an application via a national office. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Filing an application via an international registration . . . . . . . . . . . . . . . . .

1 4 6 10 14 17 21

I. General 1

An application for a Community trade mark may be filed either directly with the Office or through the intermediary of a national office of an EC Member State,

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Filing of applications

Art. 25 CTMR

including the Benelux Trademarks Office. A third filing option, which is not indicated in Art. 25, is the designation of the European Community in an international trade mark registration pursuant to Art. 151 (1) CTMR. Art. 25 is to be read in conjunction with 2 – Rule 5 CTMIR (filing of the application), – Rules 79 through 82 CTMIR (means of communication), and – Rule 83 (1)(a) CTMIR (application form). Further guidance can be taken from the Office’s publicly available ‘Guidelines for 3 Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks’, Part A, Section 1 (Means of Communication, Time Limits)1. These guidelines have been drawn up by OHIM to ‘reflect its practice in the most frequent scenarios’. They are not legislative texts and, therefore, are not legally binding.

II. Filing an application at the Office An application at the Office can be filed either 4 – via the ‘e-filing’ service on the Office’s Internet website (Rule 82 CTMIR in conjunction with Decision No EX-11-3 of the President of the Office), – by telecopier/telefax transmission to the Office’s telefax number (Rules 79 (b) and 80 CTMIR) or – by post, private delivery service, personal delivery, ‘or by any other means’ (Rule 79 (a) CTMIR); The wording ‘or by any other means’ must be construed restrictively. In particular, 5 the following means of communication are inadmissible for filing an application: email2, telex or telegram3, and any form other than the written form, e. g. oral declarations in person or by phone, voice messages, video recordings.

1. e-filing As approximately 95 % of all CTM applications received by the Office4 are being filed 6 online, e-filing is by far the most common means of communication. Rule 82 (1) CTMIR provides that ‘the President of the Office shall determine whether, to what extent and under what technical conditions communications may be sent to the Office by electronic means.’ This option was first implemented by a Decision of the President in 20025 and later replaced by a new Decision in 20116. On 26/11/2013 the President of the Office issued a new Decision No EX-13-2 named ‘Basic Decision on Electronic 1

www.ohim.eu Õ Law & Practice Õ Current Trade Mark Practice. Whereas Art. 3 (1)(b) of Decision No EX-11-3 of the President of the Office vaguely allowed the electronic filing of batches of applications ‘in a form other than by individual transmission’ (which alluded to an e-mail transmission of such batch), the now current Decision EX-13-2 no longer includes such provision. 3 Rule 82 CTMIR initially provided for application by telex or telegram, but this provision was abrogated in 2005 by Commission Regulation (EC) No 1041/2005. 4 This figure relates to the applications received direct by OHIM only and it thus leaves aside the 15 % of the total number of applications that reach the Office indirectly via a designation within an international registration. 5 Decision No. EX-02-2 of 07/11/2002 of the President of the Office, amended by Decision No EX-04-3 of 26/11/2004 (amendments concerning attachments and file formats) and Decision No EX-05-3 (amendment concerning sound files). 6 Decision No. EX-11-3 of 18/04/2011 of the President of the Office. 2

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CTMR Art. 25

Community Trade Mark Regulation

Communication’7 which repeals the previous Decision No EX-11-3 and which was later amended by Decision No EX-15-1 of 29 January 2015. 7 Strictly speaking, the issuance of Decision No EX-13-2 created a lacuna as in this latest decision there is no provision dedicated to the e-filing of a CTM application. By contrast, Chapter 3 (Art. 8 et seq.) of the repealed Decision No EX-11-3 explicitly dealt with ‘Electronic filing of CTM applications’ in greater detail. In the absence of any guidance from the now current decision, it seems safe to assume that the repealed provisions of 2011 are de facto still applicable. 8 In order to use the e-filing system, the applicant (or its representative) imperatively has to create a user account on OHIM’s website. The creation of a user account is not limited to professional representatives but open to any natural or legal person8. The application process is a step-by-step automated web form which is available both as a basic and as an advanced form9. A signature is not required for the application as the indication of ‘the name of the sender shall be deemed to be equivalent to the signature’, Rule 82 (3) CTMIR. 9 If the mark contains graphical elements (figurative marks, figurative marks containing word elements or three-dimensional marks), the graphic representation shall be filed as an attachment in .jpeg data format10. For three-dimensional marks, the attachment may consist of up to six representations of the shape (from different views), but these multiple representations have to be filed as one single .jpeg file. If the mark is a sound mark, a single attachment in .mp3 data format may optionally be filed in addition to the mandatory graphical representation of the sound.11 Documents in support of a priority claim or a seniority claim may be filed either in .jpeg or in .pdf data format12. Size limits for the attachments (.jpeg, .mp3, .pdf) do apply, but currently only a size limit for .mp3 files (max. 2MB) is published in OHIM’s FAQs.13

2. Filing by telecopier/telefax Telefax as a means of communication has lost most of its importance, as today only 2.5 % of all CTM applications are filed by fax. Applications can be filed by telefax to OHIM’s fax number +34 965 131 344. Subsequent confirmation of the telefax transmission by regular mail –a so-called ‘confirmation copy’– is not necessary. The reason is that no original signature is required for an application by telefax, since Rule 80 (3) CTMIR provides that the faxed application is ‘considered to be duly signed if the reproduction of the signature appears on the printout produced by the telecopier’. What is more, if the application is sent by computer telefax, the application does not need to be signed at all but the mere ‘indication of the name of the sender’ on the electronic form is equivalent to a signature, Rule 80 (3), second sentence. 11 In many cases it is technically impossible to file proper depictions of the mark by telefax (e. g. figurative marks, colour marks). In these cases, pursuant to Rule 80 (1) 10

7 Supplemented by a document named ‘Terms and conditions concerning electronic communication with and by the office within the user area as established in Decision No. EX-13-2’. 8 Art. 1 (3) of Decision No EX-13-2 of 26/11/2013. 9 www.oami.eu Õ Trade Marks Õ Apply now. 10 Cf. Art. 9 (2) of the repealed Decision No EX-11-3 of 18/04/2011 of the President of the Office. 11 For more details on the requirements of the graphical representation of the sound see commentary below Art. 26 mn. 31. 12 Cf. Art. 9 (4) of the repealed Decision No EX-11-3 of 18/04/2011 of the President of the Office. 13 Art. 9 (5) of the repealed Decision No EX-11-3 of 18/04/2011 of the President of the Office provided for a size limit of two Megabytes per attachment and a maximum size of five Megabytes for all attachments combined, but it is unclear whether these values are still current.

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Filing of applications

Art. 25 CTMR

CTMIR the proper reproduction suitable for publication shall subsequently be submitted to the Office as a paper document. Rule 3 (2) through (6) CTMIR stipulates further formal requirements for the paper document to be submitted. The paper document containing the proper reproduction must be received by the Office at the latest one month after the filing of the initial application by telefax. If this time limit is met, the entire application maintains the time rank of the filing date of the telefax application, Rule 80 (1), second sentence. There is, however, no provision on the consequences of failure to meet this deadline, i. e. whether the application is then considered abandoned or whether the filing date of the entire application is then shifted to the date when the reproduction reached the Office. As Rule 80 (2), second sentence CTMIR, which deals with illegible applications (see below), does provide that any belated communication will be ignored, one can draw the argumentum e contrario from the absence of such provision in Rule 80 (1) CTMIR that belated receipt of the reproduction by the Office will not be ignored. Rather, the wording of Art. 26 (1) CTMR (‘The date of filing of a Community trade mark application shall be the date on which documents containing the information specified in Article 26 (1) CTMR are filed with the Office by the applicant…’) and the rationale of Art. 25 (3) CTMR shows that, in the event of belated receipt of the reproduction, the filing date of the entire application shall be shifted to the date of actual receipt of the reproduction at the Office. If the telefax application is incomplete or illegible, or if the Office has reasonable 12 doubts as to the accuracy of the transmission, the Office will inform the sender accordingly and will invite him, within a period to be specified by the Office, to retransmit the original by telecopy or as a paper document, Rule 80 (2), first sentence CTMIR. If the documents are refiled within this time limit, the legal consequences are contained in the somewhat incomprehensible provision of Rule 80 (2), second sentence CTMIR14, which provides that ‘where this request is complied with within the period specified, the date of the receipt of the retransmission or of the original shall be deemed to be the date of the receipt of the original communication, provided that where the deficiency concerns the granting of a filing date for an application to register a trade mark, the provisions on the filing date shall apply’. In concreto, this means that if the illegibility or inaccuracy in the initial fax transmission concerned one of the filing date requirements contained in Art. 26 (1) CTMR15, then the filing date of the entire application is shifted from the date of the initial transmission to the later date of receipt of the proper retransmission. If, however, all elements of the filing date requirements provided in Art. 26 (1) CTMR were legible and accurate already in the initial fax transmission (i. e. the illegibility only concerned other non-essential elements such as for instance documents in support of a priority claim), then the date of the initial fax transmission remains the valid filing date. In the event that the applicant files the proper retransmission after expiry of the time- 13 limit set by the Office for the re-transmission, Rule 80 (2), third sentence CTMIR provides that ‘the communication shall be deemed not to have been received’. The Office will thus examine the application only on the basis of the incomplete or illegible information in the initial telefax application. Only if the legible part of the application contains enough pieces of information that allow the processing of the application, will the Office proceed with the examination process on the basis of this restricted information. 14 N.b.: Even the Office’s supplementary ‘Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks’, Part A, Section 1, mn. 3 is not much clearer on these legal consequences. 15 Which in this context is to be read in conjunction with the provision on the filing date in Art. 27 CTMR.

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CTMR Art. 25

Community Trade Mark Regulation

3. Paper filing A CTM application may also be filed by regular mail service, courier service or personal delivery, though today only 1 % of all applications are filed this way. The proper addressee is Office for Harmonization in the Internal Market, Avenida de Europa, 4, E03008 Alicante, Spain. Delivery may be made during opening hours from 8:30 to 13:30 or from 15:00 to 17:00.16 It must be borne in mind that Spanish official holidays may interfere with delivery. Official holidays are published on the Office’s website17. 15 Delivery (other than by post) must be made at the Office’s reception desk. Handing over of the documents to any other Office agent, to security guards or at any other of the Office’s premises is not admissible.18 16 Unlike applications by e-filing or telefax, paper applications must by duly signed in the original. In the absence of an original signature, the Office will invite the applicant to correct the irregularity within a specified time limit. If the document is not signed within that period, the respective application will be declared inadmissible. 14

III. Filing an application via a national office Under Art. 25 (1)(b), a CTM application may also be filed at the central industrial property office of a Member State of the EC or at the Benelux Office for Intellectual Property. This option is of a merely historical nature, as Art. 75 of the European Patent Convention served as a model provision. The rationale of this option – facilitating paper filings and safeguarding the importance of the national offices – has become obsolete in times of telefax transmission and e-filings. As the practical relevance of this filing method is fading, it seems advisable to re-evaluate and scrap this provision de lege ferenda. 18 Two important aspects must be borne in mind if an application is to be filed through one of the national offices. First, the actual application is the only communication that can be filed through the national offices. No other communication in connection with an application can be routed through the national offices, but any such communication would instead be sent back to the sender by the national office. Second, the application fee must imperatively be paid to the Office itself and not to or via the national office of choice.19 If the applicant encloses a cheque with the application to the national office, the national office is held to return this cheque to the sender. Thus, the application fee must imperatively be paid directly to the Office within one month of the actual receipt of the application by the national office. 19 Art. 25 (2), second sentence CTMR allows the national offices to charge the applicant an additional fee for the service of forwarding the application to the Office. A large number of national offices have made use of this possibility with fees ranging from EUR 15 to EUR 80 per forwarded application. 20 Pursuant to Art. 25 (2), first sentence CTMR, the national office ‘shall take all steps to forward the application to the Office within two weeks after filing’. However, failure of the national office to comply with this two-week time-limit does not have any 17

16

Art. 1 of Decision No ADM-95-23 of the President of the Office. Currently Decision No EX-13-7 of 16/12/2013 of the President of the Office, renewed each December for the following calendar year. 18 Concerning belated receipt of a statement of appeal: OHIM Dec. of 06.04.2005 R 636/2003-4 – SIMPLETECH, mn. 10 et seq. 19 Communication No 2/97 of 03/07/1997 of the President of the Office. 17

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Conditions with which applications must comply

Art. 26 CTMR

detrimental effect upon the application. The only hard time-limit is contained in Art. 26 (3) CTMR, which provides that applications via national offices ‘which reach the Office more than two months after filing shall be deemed to have been filed on the date on which the application reached the Office’. The detrimental consequence of such belated forwarding of the application by the national office is thus the loss of the initial filing date and its shifting to the date of actual receipt of the forwarded application by the Office.

IV. Filing an application via an international registration A further option to bear in mind is the filing of a CTM application by way of an 21 international trade mark registration designating the EU. In practice, this option is quite important as approx. 15 % of all CTM applications are, in fact, IR designations. This option does, however, require the existence of a basic trade mark registration that serves as a basis for the international registration. The individual fees for the designation of the EU in an international registration currently amount to CHF1,111 (Swiss francs) for an individual mark in up to the three classes (CHF 192 for each additional class) or CHF 2,070 for a collective mark in three classes (CHF 383 for each additional class). Unlike applications routed through national offices (see II. above), all communica- 22 tions related to the application and the payment of the fees have to be sent to the World Intellectual Property Organization (WIPO).

Article 26 Conditions with which applications must comply 1. An application for a Community trade mark shall contain: (a) a request for the registration of a Community trade mark; (b) information identifying the applicant; (c) a list of the goods or services in respect of which the registration is requested; (d) a representation of the trade mark. 2. The application for a Community trade mark shall be subject to the payment of the application fee and, when appropriate, of one or more class fees. 3. An application for a Community trade mark must comply with the conditions laid down in the Implementing Regulation referred to in Article 162 (1), hereinafter referred to as the ‘Implementing Regulation’. Rc. 7, 12 Bibliography: OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Desings) on Community Trade Marks, Part A, Section 3 (Payment of Fees, Costs and Charges); Part B, Section 3 (Classification).

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 II. Filing date requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5 1. Request for registration (Art. 26 (1)(a) CTMR) . . . . . . . . . . . . . . . . . . . . . . 6 2. Information identifying the applicant (Art. 26 (1)(b) CTMR) . . . . . 8 3. List of the goods or services in respect of which the registration is requested (Art. 26 (1)(c) CTMR) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

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CTMR Art. 26

Community Trade Mark Regulation

4. Representation of the trade mark (Art. 26 (1)(d) CTMR). . . . . . . . . . a) General observations. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Indication of the type of trade marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Word marks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Figurative marks (with or without word elements) . . . . . . . . . . . . . . e) Three-dimensional marks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . f) Sound marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . g) Colour marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . h) Olfactory marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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I. General The provisions of Art. 26 CTMR must always be read in conjunction with Artt. 27 and 36 CTMR. Only from this ‘bigger picture’ does it become clear that Art. 26 in fact stipulates two different categories of conditions for any CTM application. The first category is the requirements for according a filing date (hereinafter also referred to as ‘filing date requirements’). These are composed of the conditions laid down in Art. 26 (1) CTMR and of the supplemental requirement of the payment of the application fee within one month of the initial filing. This supplemental requirement of due payment is commented on below under Art. 27.1 2 The second category is the ‘secondary’ conditions mentioned in Art. 26 (3), which refers to the formal requirements laid down in the CTMIR and which is to be read in conjunction with Art. 36 (1)(b), (2), and (4) – (7) CTMR. These conditions are of ‘secondary’ nature because their nonfulfillment does not affect the important according of a filing date pursuant to Art. 27 CTMR. A further ‘secondary’ condition is the payment of the class fees, if applicable2, which – unlike the payment of the application fee – is also not a filing date requirement.3 3 Hereinafter, comments are made only on the filing date requirements in Art. 26 (1). The conditions laid down in Art. 26 (2) are commented on under Art. 27. The conditions of Art. 26 (3) are commented on by Lensing-Kramer/Dittschar under Art. 36. 4 In the international context, Art. 26 CTMR is in line with the WIPO-administered Trade marks Law Treaty of 1994 (‘TLT’), which was signed by the EU on 30 June 1995 and which establishes a system under which the ratifying jurisdictions agree to standardize procedural aspects of the trade marks registration process. This Treaty limits the formal conditions that a contracting party may require for a trade marks application, Art. 3 TLT. In particular, Art. 5 (1) TLT corresponds to the conditions laid down in Art. 26 (1) CTMR and Art. 5 (2) TLT allows the supplementary condition of the payment of the application fee as stipulated in Art. 26 (2) and 27 CTMR. 1

II. Filing date requirements 5

The four filing date requirements stipulated in Art. 26 (1) are cumulative, so that a deficiency in only one condition entails the refusal of the according of a filing date. These mandatory filing date requirement are commented separately below.

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See Art. 27 mn. 12 et seq. below. I.e. if the application covers more than three Nice classes of goods and services. 3 See commentary by Lensing-Kramer/Dittschar below Art. 36 mn. 27. 2

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Conditions with which applications must comply

Art. 26 CTMR

1. Request for registration (Art. 26 (1)(a) CTMR) Most importantly, although the Office makes available a complete application form 6 sheet that may be used for CTM applications filed on paper or by telefax (Rule 83 (1) CTMIR), the use of such specific form sheet is not mandatory. Thus, the applicant may use proprietary forms or just plain paper for the application as well. This, in turn, entails the risk that there may be ambiguities about the applicant’s 7 intent to seek registration of a CTM. This may be the case if the applicant does not use the word ‘trade marks’ at all, but only submits a logo, requesting the Office to ‘please register this logo for product category XYZ’, as this may also be understood as a Community design application. Other critical scenarios include communications that leave the recipient in doubt as to whether the sender is seeking to unconditionally file an application or whether the communication is just a preparatory inquiry. If the will to file a trade marks application is not clear, the Office will (have to) refuse the according of a filing date.

2. Information identifying the applicant (Art. 26 (1)(b) CTMR) As a general rule, the application shall contain the name, address and nationality of 8 the applicant and the State in which he is domiciled or has his seat or an establishment, Rule 1 (1)(b), first sentence CTMIR. Names of natural persons shall be indicated by the person’s family name and given name(s), Rule 1 (1)(b), second sentence CTMIR. Names of legal entities shall be indicated by their official designation and include the legal form of the entity, which may be abbreviated in a customary manner, Rule 1 (1)(b), third sentence CTMIR. The telephone numbers, fax numbers, electronic mail address and details of other communications links under which the applicant agrees to receive communications may optionally be given. Nevertheless, it is worth noting that the aforementioned rules are directory provisions 9 and that non-compliance with these rules of the CTMIR does not necessarily result in refusal to accord a filing date. Rather, Art. 26 (1)(b) CTMR more generally speaks of ‘information identifying the applicant’. This must be read in conjunction with Art. 5 of the Trade marks Law Treaty (‘TLT’), which provides that the only admissible requirements for the according of a filing date include – indications allowing the identity of the applicant to be established (Art. 5 (a)(ii) TLT) and – indications sufficient to contact the applicant or his representative, if any, by mail (Art. 5 (a)(iii) TLT). Thus, for the mere according of a filing date, it is sufficient if the application contains 10 enough pieces of information to allow establishment of the applicant’s name. These may include common abbreviations of a company’s name, the company name without indication of its legal form, or the indication of a natural person’s name with an initialized first name. The same applies to the indication of an address, as it is sufficient to enable the office to contact the applicant by mail. It may thus suffice to indicate the applicant’s name and the city of residence (without a street name or number), provided that regular mail sent to that shortened address will in fact reach the applicant. Further, nothing in these provisions stipulates that the official address of the applicant must be indicated. Rather, Art. 5 (a)(iii) TLT makes it clear that it suffices to indicate the representative’s address as the mailing address (e. g. applicant’s name c/o representative’s name and address).

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CTMR Art. 26 11

Community Trade Mark Regulation

The aforesaid is, of course, limited to according a filing date. After according the filing date, the Office may and will request the applicant to submit all identity details stipulated in Rule 1 (1)(b) CTMIR.4

3. List of the goods or services in respect of which the registration is requested (Art. 26 (1)(c) CTMR) The wording of Art. 26 (1)(c) CTMR makes it clear that the only filing date requirement as to the indication of the goods and services for which the application seeks protection is the inclusion of a ‘list of the goods and services’ in the application. This must not be confused with the further, more thorough ‘secondary’ requirement that the list of goods and services must comply with the Nice classification system, as stipulated in Artt. 28, 36 (1)(b) CTMR in conjunction with Rule 1 (1)(c) and 2 CTMIR. In other words: For the according of a filing date, it is not required that the goods and services indicated in the application are in any way classified or do comply with the Nice classification. Once the filing date is accorded, the Office will, of course, examine the list of goods and services and – if necessary – will request the applicant to make proper modifications to bring the list in line with the Nice classification.5 13 For the according of a filing date, it is therefore sufficient if the application contains a verbalisation of the goods and services, even if that verbalisation contains imprecise or non-classifiable indications. 14 In practice, this filing date requirement creates problems in some instance where the application contains references rather than individual goods or services. These scenarios can be summarized as follows: – It is possible to refer to the list of goods and services of an existing CTM registration, which shall identically become the list for the application, Rule 1 (1)(c) CTMIR.6 It follows from this precise wording of the CTMIR that – by argumentum e contrario – a reference to the list of goods and services of a national trade mark registration or of an international registration that does not designate the EU is inadmissible. – Until 1 December 2013, claiming entire Nice classes by using the indication ‘all goods/services in Classes x, y and z’ was admissible. The Office formerly interpreted this indication as a claim to all class headings of the official Nice classification and ex officio replaced this general indication with the Nice class headings. This practice was abandoned as of 2 December 2013.7 Since that date, the goods and services have had to be listed explicitly and individually.8 An application containing the indication ‘all goods/services in Classes x, y and z’ would thus no longer be accorded a filing date. – It is – and already was before 2 December 2013 – inadmissible to make overly general claims such as ‘for everything’ or ‘for any good or service’ without indication of the Nice classes. Such indication would be too vague, as it does not allow scrutiny of the actual scope of the intended protection. An application containing such vague indication would thus not be accorded a filing date. 12

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See commentary by Lensing-Kramer/Dittschar below Art. 36 mn. 7 and 26. See commentary below Art. 28 mn. 4 et seq. 6 This possibility was introduced in 2005 by Commission Regulation (EC) No 1041/2005 of 29 June 2005. 7 See Communication No 1/13 of the President of the Office of 26/11/2013, Part II. Sect. ii, and OHIM’s Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade marks, Part B, Section 3, mn. 4.2.3.. 8 For further details on the modifications of the Office’s classification practice, see commentary Art. 28 mn. 36 et seq. below. 5

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Conditions with which applications must comply

Art. 26 CTMR

4. Representation of the trade mark (Art. 26 (1)(d) CTMR) a) General observations. As a general rule, only such marks can be the object of a CTM application that can be represented graphically, particularly by means of images, lines or characters and the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.9 While these criteria in practice are only crucial in cases of alternative trade marks such as colour marks, olfactory marks or sound marks, any type of trade marks must fulfil these requirements. It is important to apprehend the interdependence between the filing date requirement in Art. 26 (1)(d) CTMR and the absolute grounds for refusal in Art. 7 (1)(a) in conjunction with Art. 4 CTMR. Both relate to the graphic presentability of the trade mark and both provisions aim to safeguard the precise definition of the object of protection. However, their respective rationale is not fully congruent. Metaphorically speaking, throughout the application process Art. 26 (1)(d) CTMR serves a ‘coarse filter’ that tests the minimum requirements of the representation, whereas Art. 7 (1)(a) in conjunction with Art. 4 CTMR is the subsequent ‘micro filter’ that – via the full examination under Art. 37 CTMR – ensures full compliance of the application with the requirement of Art. 4 CTMR. Thus, an application may well pass the initial test of Art. 26 (1) (d) CTMR and get accorded a filing date, but then be refused registration at the following stage of full examination under Artt. 37, 7 (1) (a), 4 CTMR. In light of these distinct roles of both provisions, the criteria to be applied at the stage of the filing date test of Art. 26 (1)(d) CTMR should not be rigorous. This liberal approach is in line with the Trade marks Law Treaty (‘TLT’), which in the context of the according of a filing date speaks of a ‘sufficiently clear reproduction of the mark whose registration is sought’, Art. 5 (1)(a)(iv) TLT. This criterion of ‘sufficient clarity’ corresponds to the predominant requirement that the subject matter of the applied-for trade mark must not be altered after the moment of initial filing. In other words, in order to meet the filing date requirement of Art. 26 (1)(d) CTMR, the reproduction of the mark must possess a degree of clarity and unambiguousness that unequivocally ensures that the subject matter of the trade marks cannot subsequently be altered.10 This aforementioned requirement is, for example, not fulfilled if the representation is provided as a mere example so that the subject matter of the application is capable of taking on a multitude of different appearances.11 In another matter, OHIM rightfully refused registration of a mark that contained placeholders for some elements of the mark and which – according to the description added in the application – are supposed to be replaced by varying, undefined elements (the description inter alia reads ‘the product name and product description in six languages can vary’, whereas the figurative mark contained placeholders for both, the product name and the product description)12. If, however, the applicant files a single representation that, in itself, consists of multiple depictions – e. g. showing a series of the same mark in different languages or in different colours – this does not deprive the representation of the required clarity. However, the mark is then treated as not claiming protection for each of the individual 9 CJ Case C-273/00 Sieckmann [2002] ECR I-11737, mn. 55; CJ Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-03793; GC Case T-173/00 KWS SAAT v OHIM [2002] ECR II-03843. 10 For German national trade marks law based on the CTMD see German Federal Court, BGH Case I ZB 15/98 GRUR 2004, 502 – Gabelstapler II. 11 CJ Case C-321/03 Dyson v OHIM, [2007] ECR-I-00687, mn. 35 to 39; in the instant case ‘all the conceivable shapes of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner’. 12 OHIM Dec. of 29/04/2010 – R 437/2009-4 – OASE LIVING WATER, mn. 20 to 25.

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CTMR Art. 26

Community Trade Mark Regulation

depictions, but in fact only for the entire representation as it was filed. This, in turn, makes such registration useless as the mark does not provide protection against unauthorized third-party use of just one out of the multiple depictions. The intended registration of a series of marks would thus have required the filing of one application for each variation. b) Indication of the type of trade marks. The according of a filing date does not per se require the indication of the type of trade marks (word, figurative, 3D, sound mark etc.) that the applicant seeks to register. While in most cases the type of trade marks is evident from the representation itself, ambiguities can arise inter alia in cases of (a) figurative trade marks consisting of a perspectival depiction of an object, which could be either a figurative mark or a three-dimensional mark, or (b) a mark consisting of a stave, a clef and musical notes, which could be either a figurative mark or a sound mark. 21 Pursuant to Rule 3 (3) CTMIR, an application for a trade marks that is not a word mark shall contain an indication to that effect. Further, Rule 3 (4) CTMIR provides that an application for a three-dimensional trade marks shall contain an indication to that effect. Yet, these provisions are not filing date requirements13, which follows from Rule 9 (3)(a) CTMIR. Rather, in line with Art. 5 (1 a)(iv) TLT, the indication of a type of trade marks is not an integral part of a ‘sufficiently clear representation’ of the mark. Hence, as a general rule, the applicant may submit a clarifying statement on the type of trade marks – e. g. upon notification by the Office pursuant to Art. 36 (2) CTMR in conjunction with Rule 9 (3), last sentence CTMIR – without detrimental effect to the according of the initial filing date. 22 It should be noted, however, that the CJ on one occasion held that ‘a sign cannot be registered as a sound mark where the applicant has failed to state in the application for registration that the sign in question must be understood as being a sound sign’14, which, at first glance, may contradict the above comments, yet this decision was the first ever to acknowledge the registrability of sound signs, so that this citation may be out of context today. 23 Nonetheless, there should be limits to the general possibility to subsequently clarify the type of trade marks, which result from the aforementioned principle that the subject matter of the applied-for trade mark may not be altered after the moment of initial filing. First, if the applicant indicated an incorrect type of trade mark in the application, he should be precluded from subsequently switching to another type of trade mark by way of filing a corrective statement. Possible scenarios of inadmissible changes include the subsequent switching (a) from a two-dimensional figurative mark to a three-dimensional mark15 or (b) from a figurative mark in colour to a monochrome mark. Second, the type of trade mark determined in the applicant’s clarifying communication may not contradict the pure depiction in the application. For instance, it would be inadmissible to file a stylised logo containing verbal elements and to later clarify that this is supposed to be a word mark. 20

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c) Word marks. Word marks ‘shall be reproduced in normal script, as for example, by typing the letters, numerals and signs in the application’, Rule 3 (1), first sentence CTMIR. The use of small letters and capital letters is permitted and it will be followed by the Office, Rule 3 (1), second sentence CTMIR. Word marks are still the most important type of mark as 55 % of all CTM applications are word marks. 13

On the distinction between filing date requirements and secondary requirements see above mn. 1 et seq. CJ Case C- 283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 58. 15 See for German trade marks law based on the CTMD: BGH Case I ZB 3/98, GRUR 2001, 239 – Zahnpastastrang. 14

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Conditions with which applications must comply

Art. 26 CTMR

d) Figurative marks (with or without word elements). Applications for figurative 25 marks (with or without word elements) should contain the indication clarifying the type of trade mark, Rule 3 (3), first sentence CTMIR. Figurative marks represent approx. 45 % of all applications, which shows the importance of this type of mark. Unless the application is submitted by e-filing, a trade mark that contains figurative elements shall be reproduced on a sheet of paper separate from the sheet on which the text of the application appears, Rule 3 (2), first sentence CTMIR16. If such figurative marks are submitted by fax (which does not allow high resolution or colour depictions), pursuant to Rule 80 (1) CTMIR the proper reproduction suitable for publication shall subsequently be submitted to the Office as a paper document within one month after the initial filing date.17 If the figurative mark is to be in colour, (a) the representation must be in colour and 26 (b) the colours making up the mark are also to be indicated in words and a reference to a recognized colour code may be added (Rule 3 (5), second sentence CTMIR). From this, it follows that it is inadmissible to file a monochrome representation with an indication that this mark is to be protected in a certain colour. Further, it should be noted that the indication of the colour(s) in words is mandatory, whereas the further indication of a colour code (e. g. Pantone or HKS) is optional. It would thus not be admissible to just indicate a Pantone colour number without adding a verbalization of that colour. In any event, the indication of the colour in words (and optionally as a colour code) is not a filing day requirement.18 e) Three-dimensional marks. If the applicant intends to protect the submitted 27 representation as a three-dimensional mark, the application must contain an indication to that effect. In practice, only 0.5 % of all CTM applications are three-dimensional marks. Unlike other types of marks, in an application for a three-dimensional mark the submitted representation may contain up to six perspectives of the mark. To be precise, the up to six depictions are not multiple representations, but the multiple depictions form one single representation.19 For the filing day requirement of Art. 26 (1)(d) CTMR, it is not mandatory to file a 28 representation that shows more than one perspective, yet it is highly recommended to submit more than one perspective as in the case of a single-perspective representation of a threedimensional mark, the subject matter and – consequently – the scope of protection of that mark would be limited to the visible elements of that single perspective, which jeopardizes both the test for absolute grounds for refusal and the protection against infringements. If the applicant files more than one depiction for the representation of a three- 29 dimensional mark, the choice and arrangement of the depictions is of paramount importance. In this context, the precise wording of Rule 3 (4), third sentence is decisive: ‘The representation may contain up to six different perspectives of the mark’. All perspectives must therefore show the exact same mark in the same state, e. g. photographs from the front, rear, top, side etc. This involves the risk of contradicting depictions. As a general rule, contradictions between the depictions do not lead to a reduction of the subject matter of the mark to the ‘lowest common denominator’, which would mean that the 16 Rule 32 CTMIR contains further directions on the characteristics of the graphic representation in paper form. 17 For further details see commentary Art. 25 mn. 11 above. 18 On the distinction between filing date requirements and secondary requirements see mn. 1 et seq. above. 19 Technically, applications for three-dimensional marks submitted by e-filing may not consist of (up to) six .jpeg files but rather of a single .jpeg file that may show up to six perspectives of the subject matter of the mark, also see commentary above Art. 25 mn. 9.

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CTMR Art. 26

Community Trade Mark Regulation

subject matter is only defined by those elements that are visible – free from contradictions – in each of the depictions and the ‘contradicting surplus’ would be disregarded. Rather, each element in each depiction must be taken into account without differentiation since each detail forms an integral part of the unitary subject matter or ‘representation’ of the mark. This problem cannot not be overcome by submitting a description to the application that attempts to clarify the differences or to specify which visible elements are supposed to constitute the subject matter of the mark. Therefore, any contradiction inevitably results in the finding that the depictions do not show one and the same subject matter. 30 This finding, in turn, is an obstacle to the according of a filing date, as such contradicting depictions do not meet the CJ’s condition of a clear, precise, selfcontained, easily accessible, intelligible, durable and objective representation of the mark20. Typical scenarios of relevance can be summarized as follows: – Depicting the same three-dimensional object in different contexts or surroundings is inadmissible.21 The use of multiple depictions showing the same object ‘in use’, i. e. in combination with one or more products that are supposed to be branded with that mark would create a stark contradiction. – It is also inadmissible to depict the subject matter of the application in different states (open/closed, assembled/disassembled, turned on/turned off, folded/spread), in different colours or in different languages. – The use of a partial close-up (depiction that shows an enlargement of only a portion of the object for the purpose of showing more details) may be admissible as long as (a) it becomes clear from the depiction or an added description which part of the overall object is being display and (b) the part shown in close-up does not contradict the depiction of the same part in the other depictions. f) Sound marks. Although sound marks represent only about 0.03 % of all CTM applications, this type of mark is nonetheless well-established in the trade mark system. In its ‘Shield Mark’ decision the CJ held that the application for a sound mark is only admissible if 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’22. Meanwhile, the Office now also accepts applications that consist of a sonograph instead of a musical notation, provided that the sonograph is filed together with an electronic sound file of the mark since the Office and third parties cannot deduce the sound from the sonograph alone.23 The use of simple musical notes24, of solmization, of onomatopoeia25, or of verbal descriptions of a sound26 is not admissible.27 32 Pursuant to Rule 3 (6), first sentence CTMIR, if the application is filed by e-filing, it may be accompanied by an electronic file containing the sound. This file can only be 31

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See case-law cited above under mn. 15. It is worth noting that it is in any event highly recommended not to use a depiction of the intended subject matter of the mark ‘in use’, i. e. the actual 3D mark on a product, on a packaging, or on a stand etc. Even if such depictions are free from contradictions, the detrimental effect is that the entire context (product, packaging, stand) becomes an integral part of the mark and therefore affects the mark’s scope of protection. 22 CJ Case C- 283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 62 et seq. 23 OHIM Guidelines for Examination, part B. sect. 4, absolute grounds for refusal, mn. 9.4.3; see commentary by Hassellblatt Art. 7 mn. 297 above. 24 CJ Case C- 283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 61. 25 CJ Case C- 283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 64. 26 CJ Case C- 283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14313, mn. 64. 27 Though it is worth noting that the use of such elements would not affect the according of a filing date, as these elements can be proper representations, but it is rather an issue of Art. 7 (1)(a) CTMR, see commentary by Hasselblatt Art. 7 mn. 294 et seq. above. 21

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Conditions with which applications must comply

Art. 26 CTMR

submitted in .mp3 format, yet the sound file does not replace the graphical representation of the sound, but merely complements the representation in order to facilitate the perception of the mark. Consequently, a sound that cannot be represented graphically may not become registrable by way of submitting a sound file. In the event that the graphical representation and the sound file are contradictory (i. e. the sound played on the .mp3 file is not in line with the underlying graphical representation), the graphical representation prevails and the sound file must be disregarded. g) Colour marks. An application for a colour mark (colours per se or colour combinations) must contain a representation of the colour(s) and the colour(s) making up the mark shall also be indicated in words, Rule 3 (5) CTMIR. In practice, colour marks only represent about 0.04 % of all CTM applications. There has been some debate on whether the indication of a colour code (referring to a commonly accepted colour classification) is also mandatory. In its Libertel decision, the CJ held that ‘where a sample of a colour, together with a description in words, does not satisfy the conditions laid down in Article 2 of the Directive in order for it to constitute a graphic representation because, inter alia, it lacks precision or durability, that deficiency may, depending on the facts, be remedied by adding a colour designation from an internationally recognised identification code’.28 This wording makes it clear that such indication of a colour code is only mandatory if the graphic representation ‘lacks precision or durability’. In response to this judgment, the Office issued a communications clarifying that ‘the representations of all trade marks, except word marks, are scanned and stored electronically. The question of durability addressed by the Court does not, therefore, arise in respect of Community trade marks. Nevertheless, the Office would recommend that where registration for a colour mark per se is applied for, the indication of the colour required under Rule 3 (5) CTMIR should where possible include a designation from an internationally recognised identification code’.29 Nevertheless, this Office communication only addresses the issue of durability and omits the further issue of lack of precision. The electronic scan may be durable, but in practice lacks precision. Full precision would require that both the input device (scanner) and the output device (screen or printer) are correctly colour calibrated. Even if the Office is capable of ensuring proper calibration on the input side, colour calibration on the output side is practically limited to highly professional work environments (professional printers, publishing houses etc.). As access to such colour calibrated output devices is therefore very limited, the mere electronic scan – contrary to the Office’s practice – does not meet the CJ’s requirement of an easily accessible and objective representation. Therefore, as the very precise colour is of the utmost importance for the perception and assessment of any colour mark, the indication of a colour code should be considered mandatory. This allows anybody to scrutinize the very precise colour rendition by means of printed colour charts (which are widely available as printed books or fans) or on a calibrated output device. Currently, the Office accepts in its efiling form the colour code systems Pantone, RAL, hexadecimal triplets and RGB triplets, though other systems (such as HKS) should be acceptable, as well. Concerning the issue of according a filing date, it seems safe to assume that currently the Office accepts that a mere reproduction of the colour(s) on paper or as a .jpeg file fulfils the condition of Art. 26 (1)(d) CTMR. In any event, the Office will examine the

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CJ Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-03793, mn. 38. Communication No 6/03 of the President of the Office of 10/11/2003 concerning colour marks, OJ 1/ 2004, page 89. 29

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CTMR Art. 27

Community Trade Mark Regulation

secondary requirement of a verbalization of the colour(s) in the description of the mark with the recommended option to submit one or more colour codes for the pertinent colour(s). 37 However, for the reasons laid out above, de lege ferenda it would be desirable if the legislator, the Office and/or the European Court changed this practice and requested that, for the according of a filing date, the colour code(s) mandatorily have to be indicated in the application. 38 The further problems that are often discussed in cases of colour marks, in particular the question of the systematic arrangement of two or more colours, are not filing date requirements but issues of absolute grounds for refusal under Art. 7 (1)(a) and (b), 37 (1) CTMR.30 39

h) Olfactory marks. Although the theoretical admissibility of the registration of an olfactory mark is generally acknowledged, to date no technical solution for the graphical representation of a scent has been found. The CJ in its Sieckmann decision held that neither the indication of the chemical formula nor a verbalized description of the scent can be adequate graphical representations.31 Accordingly, although a total of seven applications for olfactory CTMs have been filed over the years, all of them have been denied registration.

Article 27 Date of Filing The date of filing of a Community trade mark application shall be the date on which documents containing the information specified in Article 26 (1) are filed with the Office by the applicant or, if the application has been filed with the central office of a Member State or with the Benelux Office for Intellectual Property, with that office, subject to payment of the application fee within a period of one month of filing the abovementioned documents. Rc. 7, 12. Bibliography: OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part A, Section 3 (Payment of Fees, Costs and Charges).

Content I. II. III. IV.

General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Receipt of application documents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Remedy of deficient filing documents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Receipt of payment of the application fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Applicable fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Means of payment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

30

1 3 8 12 14 17

See commentary by Hasselblatt Art. 7 mn. 282 et seq. above. CJ Case C-273/00 Sieckmann [2002] ECR I-11737; see also GC Case T-305/04 The smell of ripe strawberries [2005] ECR II-04705. 31

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Date of Filing

Art. 27 CTMR

I. General The date of filing of a trade mark application is a criterion of paramount importance. 1 Unless the application validly claims a priority of another trade marks registration, the date of filing is the decisive date for that CTM’s temporal priority, i. e. its ability to be invoked as an earlier trade marks vis-a`-vis later CTM applications (Art. 8 CTMR) or later national trade marks applications (Art. 4 (2)(a)(i) CTMR). Further, the date of filing is the decisive date for the assessment of that mark’s registrability, in particular for the assessment of an acquired distinctiveness (Art. 7 (3) CTMR)1 or of any other absolute grounds for refusal contained in Art. 7 (1) CTMR2. In essence, the date of filing is dependent upon two elements. First, the date of receipt 2 of all documents containing the mandatory requirements for according a filing date pursuant to Art. 26 (1) CTMR. Second, the basic application fee must be paid to OHIM at the latest within one month of the initial filing. Consequently, the according of a filing date is not dependent on (a) compliance with ‘secondary’ formal requirements, i. e. the conditions laid down in the CTMIR3, or (b) the payment of the additional class fees (if the application covers more than three classes)4.

II. Receipt of application documents The actual requirements for according a filing date are commented on under Art. 26 3 and the possible means of communication are commented on under Art. 25, so that the following comments only cover the issue of receipt of the pertinent documents. The decisive date for the determination of the filing date is the date of actual receipt 4 of the CTM application at the Office or – as the case may be – at the central industrial property office of a Member State of the EC5. Only the date of the actual and complete receipt of the application is of relevance. The date of dispatch, the date of a post mark, or the date of commencement of a transmission are irrelevant. The date of receipt may be any calendar day, including Saturdays, Sundays, or public holidays. Only the calendar day of the complete receipt is of relevance, not the precise hour or 5 minute of receipt, though the very precise time may be determinable in cases of e-filing or telefax transmissions. If multiple colliding applications are filed on the same day but at different hours, all marks share the identical date of filing. As a consequence, none of the applications takes temporal priority over the other and all trade mark applications filed on the same day are bound to coexist.6 1

CJ Case T-247/01 eCopy Inc v OHIM [2002] ECR II-5301, mn. 36. CJ Case C-332/09 P OHIM v Frosch Touristik GmbHet al., mn. 41. 3 Concerning the consequences of non-compliance with these ‘secondary’ requirements See commentary by Lensing-Kramer/Dittschar below Art. 36 mn. 26. 4 Concerning the consequences of a deficient payment of the class fees see commentary by LensingKramer/Dittschar below Art. 36 mn. 27. 5 Concerning the possibilty of filing a CTM application via national offices see above Art. 25 mn. 17. 6 CJ Case C-190/10 Ge ´nesis v Boys Toys SA, not yet published in the ECR – available at: www.curia.eu Õ search Case law, mn. 63; this judgment deals with a collision between a CTM and a national trade mark application in a Member State filed on the same day. The court holds that the hour and minute must not be taken into account for determining the temporal priority of the CTM, even if the national trade marks law in the pertinent country does take the precise time into account for the filing date of the national mark. 2

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If in the case of e-filings over the Internet or telefax applications, the transmission process commences on one day (e. g. shortly before midnight) but is only completed on the following day (after midnight), the decisive date is the later date of completion of receipt of data at the Office. 7 The burden of proof for establishing the date of actual receipt at the Office lies with the applicant, though the Office has a secondary obligation to take reasonable steps to pursue internal investigations.7 6

III. Remedy of deficient filing documents In the event that the application documents are incomplete, the consequences and the possible remedies will depend on the type of the deficiency. 9 If the deficiency lies in the fact that the applicant cannot file proper depictions of the mark by telefax (e. g. figurative marks, colour marks), the applicant may transmit a proper original depiction to the Office within one month after the initial filing without detrimental effect on the accorded filing date.8 10 If the deficiency concerns the CTMA’s non-compliance with the requirements for according a filing date pursuant to Art. 26 (1) CTMR (i. e. request for registration as a CTM, the applicant’s identity, representation of the mark, and a list of goods and services), then the date of receipt of the incomplete CTMA will not be accorded as the filing date and there is no remedy to this non-compliance that would allow maintaining the initial date of receipt as the filing date, Art. 36 (3) CTMR and Rule 9 (1)(a) CTMIR. However, the Office will notify the applicant of this deficiency and the applicant may then, within two months of receipt of such notification, remedy the deficiencies by (re)filing the missing elements of the CTMA. If that time limit is met, then the date in which all communications containing the remedies are received at the Office will be accorded as the new, shifted filing date of the entire application, Art. 36 (3), second sentence CTMR and Rule 9 (2), first sentence CTMIR. If, however, the applicant does not remedy the deficiencies (by filing no remedies at all, or not within the two-month time-limit after the notification), then the entire application will be dismissed and any previously paid application fee will be refunded, Art. 36 (3), first sentence CTMR and Rule 9 (2), second sentence CTMIR. 11 If the deficiency lies only in non-compliance with ‘secondary’ formal requirements (beyond the Art. 26 (1) CTMIR requirements), then the legal consequences are regulated in Art. 36 (4) through (7) CTMR and Rule 9 (3) through (8) CTMIR.9 8

IV. Receipt of payment of the application fee Assuming that all the requirements resulting from Art. 26 (1) CTMR are fulfilled, Art. 27 stipulates a further requirement in that the according of the filing date is ‘subject to payment of the application fee within a period of one month of filing’ of the application documents. 13 Provisions on the amount of fees as well as on payment methods are contained in EC Regulation 2869/95 of 13/12/1995 on the fees payable to the Office for Harmonization 12

7

OHIM Dec. of 14/12/2009 – R 1269/2009-4 – Goldsmith Group, mn. 17. For further details see above Art. 25 mn. 11. 9 See commentary by Lensing-Kramer/Dittschar below Art. 36 mn. 26. 8

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Date of Filing

Art. 27 CTMR

in the Internal Market (hereinafter: CTMFR). Further guidance can be drawn from the Office’s publicly available ‘Guidelines For Examination In The Office For Harmonization In The Internal Market’, Part A, Section 3 (Payment of Fees, Costs and Charges).

1. Applicable fees It is noteworthy that only the application fee must be paid within this one-month 14 deadline, not the additional classes fees (if applicable).10 The applicable fees are legally determined in Art. 2 CTMFR and can be summarized 15 as follows: – Basic fee for the application for an individual mark: EUR 1,050 – Basic fee for the application for an individual mark by e-filing: EUR 900 – Fee for each class of goods and services exceeding three for an individual mark: EUR 150 – Basic fee for the application for a collective mark: EUR 1,800 – Fee for each class of goods and services exceeding three for a collective mark: EUR 300. All payments must be made in euros, Art. 6 CTMFR. Payments in other currencies 16 are inadmissible and will be reimbursed.

2. Means of payment The admissible means of payment are bank transfers, debits from current accounts held at the Office and – for applications by e-filing only – credit cards. Cash payments at the Office’s premises and cheques are not accepted. The Office does not issue invoices, but it will issue a payment receipt at the request of the applicant. Debit or credit card payments are only possible in case of e-filing over the Internet.11 The Office accepts Visa, MasterCard and Discover. Unlike debits from OHIM current accounts, the credit card will be charged immediately (and not delayed at the end of the one-month time-limit for the payment). Payment by direct debit from an OHIM current account requires the existence of such current account, which may be opened by filing a request with the Office, Art. 5 (2) CTMFR.12 If the applicant opts for payment by direct debit from a current account the application fees (and class fees) will automatically be debited from the current account indicated in the application on the last day of the one-month time limit set for payment of the fee. However, the applicant may instruct the Office to debit the account already upon receipt of the CTM application. An immediate debit is advisable if the applicant wants to accelerate the examination process, as the Office recently altered its practice and will now only process and examine the application after the fee is paid. Payment by bank transfer is the most risky method of payment as the applicant runs the risk that the payment will be received late or incorrectly at the Office, thereby jeopardizing the according of a filing date. In case of payment by bank transfer, a number of particulars – which are provided in Art. 7 CTMFR with further guidance in 10 Concerning consequences of the belated payment of additional class fees see commentary by Lensing-Kramer/Dittschar below Art. 36 mn. 27. 11 See Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part A, Section 3, mn. 2.2.2. 12 See Decision No. Ex-96-1 of the President of the Office of 11/01/1996 concerning the conditions for opening current accounts at the Office as amended in 1996, 2003 and 2006; Communication No 5/01 of the President of the Office of 29/06/2001 concerning the availability of current accounts statements on the Office internet site; Communication No. 11/02 of the President of the Office of 11/10/2002 concerning the opening of another bank account.

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Paras 2.1 et seq. of the Office’s Guidelines13 – must be indicated with the payment. As a general rule, in order to meet the one-month payment time-limit, the payment by bank transfer is deemed to have been made on the date on which the amount is credited to the Office’s bank account. Of course, this imposes a substantial risk on the applicant as in case of international transfers the transfer times may be volatile. Therefore, the CTMFR contains an exception to this rule: Under certain, narrowly defined conditions, the payment time-limit is deemed to be met if the applicant can provide evidence that before expiry of the time-limit he duly gave an order to a banking establishment in a Member State of the EC to transfer the amount of the fees to the Office, Art. 8 (3)(a) CTMFR. Nevertheless, as a further requirement, the applicant must imperatively add a surcharge of 10 % (but not exceeding EUR 200) to the payable fee if the transfer order was placed with such bank less than 10 days before the expiry of the time-limit, Art. 8 (3)(b) CTMFR. 21 If the one-month time limit for the payment of the application fees is not met, then the date of receipt of the initial application will not be accorded as the filing date and there is no remedy to this non-compliance that would allow maintaining the initial date of receipt as the filing date, Art. 36 (3) CTMR and Rule 9 (1)(b) CTMIR. However, the Office will notify the applicant of this deficiency and the applicant may then, within two months of receipt of such notification, remedy the deficiency by paying the application fees. If that time-limit is met, then the date of receipt of the belated payment at the Office will be accorded as the new, shifted filing date of the entire application, Art. 36 (3), second sentence CTMR and Rule 9 (2), first sentence CTMIR. The same applies if the payment reaches the office after expiry of the initial one-month time-limit but before the Office has notified the applicant of this outstanding payment. 22 If the applicant does not pay the application fees within the extended time-limit determined in the Office’s notification, then the entire application will be dismissed, Art. 36 (3), first sentence CTMR and Rule 9 (2), second sentence CTMIR.

Article 28 Classification Goods and services in respect of which Community trade marks are applied for shall be classified in conformity with the system of classification specified in the Implementing Regulation. Rc. 7, 12. Bibliography: OHIM’s ‘Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks’, Part B, Section 3 (Classification).

Content I. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Procedural aspects . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Amendments of the classification and addition of classes. . . . . . . . . . 2. Punctuation. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Use of adverbs (namely versus in particular). . . . . . . . . . . . . . . . . . . . . . . . . III. The Nice classification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 4 6 8 9 10

13 See OHIM’s publicly available Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part A, Section 3 (Payment of Fees, Costs and Charges), available on the office’s website.

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Classification

Art. 28 CTMR

IV. The problematic role of the Nice class headings . . . . . . . . . . . . . . . . . . . . . . . . 1. Description of the practical problems and the previous practice of OHIM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Non-exhaustive class coverage by the Nice class headings . . . . . . b) Lack of clarity and precision in the Nice class headings. . . . . . . . . 2. The CJ’s landmark decision ‘IP Translator’ . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Development of the offices’ practices after the ‘IP Translator’ decision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Initial reactions by the offices. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) The Convergence Programme and the now current practice . . . V. The new taxonomy and its class scopes . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Background and purpose of the creation of the taxonomy . . . . . . . . . 2. Composition of the taxonomy and its class scopes . . . . . . . . . . . . . . . . . . a) The taxonomy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) The class scopes . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Advantages and disadvantages of the use of the class scopes in trade mark applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Non-acceptable general indications of the Nice class headings . . . . . . . 1. Goods made from certain base materials . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Machines. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Imprecise service indications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Retail and wholesale services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

13 13 15 22 24 29 29 32 41 42 44 46 50 55 58 60 63 65 69

I. General Art. 28 CTMR contains the general requirement that lists of goods and services must 1 be classified. As commented on under Art. 26, the obligation to classify is not a filing date requirement; theoretically, the applicant may submit in its application an unsorted list of goods and/or services without providing class numbers.1 The Office will then, during the examination process, urge the applicant to correct any irregularities/confusion in the initially submitted list.2 Art. 28 also makes it clear that the regulation of the system of classification with 2 which the final list of goods and services must comply is left to the specifications in the CTMIR. This refers to Rule 2 CTMIR, which stipulates that the list of goods and services (a) must comply with the Nice classification (Rule 2 (1) CTMIR), (b) must ‘be worded in such a way as to indicate clearly the nature of the goods and services and to allow each item to be classified in only one class of the Nice Classification’ (Rule 2 (2) CTMIR), and (c) must be grouped according to the Nice classes and each group must be preceded by the number of the Nice class (Rule 2 (3) CTMR). Art. 28 CTMR in conjunction with Rule 2 CTMIR complies with Art. 3 (1)(a)(xv), 3 Art. 6, Art. 9 (1) and Art. 9 (2) of the WIPO-administered Trade Mark Law Treaty of 1994 (‘TLT’).

II. Procedural aspects The procedural aspects of the Office’s assessment of any CTM application’s list of 4 goods and services are laid out in the Office’s ‘Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community 1 2

S. commentary above Art. 26, mn. 11 et seq. For the examination procedure see below mn. 4.

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Trade Marks,’ Part B, Section 3. In short, the Office will examine any application in order to make sure – in line with Rule 2 (2) CTMIR – (a) that each of the goods and services is clear and precise enough and (b) that each term is proper to the Class in which it is applied for.3 5 The proper classification and attribution of the pertinent Nice class number is the sole responsibility of the applicant, Rule 2 (3) and 9 (3)(a) CTMIR. If the Office’s examination reveals that the application’s list of goods and services does not meet the requirements of proper classification, then the Office will notify the applicant and invite him to remedy these deficiencies within a specified period, Rule 9 (3) CTMIR. Though the Office may make suggestions for a correction of the classification, it will never ex officio alter the list of goods and services. If the applicant does not remedy the notified deficiency within the time limit specified by the Office, the application will be rejected. Such rejection may concern the entire application (if the deficiency concerns the entire classification) or just parts of it. If, for example, the deficiency concerns only one out of multiple classes, the Office may reject that deficient class only and allow the remaining classes to proceed to registration.

1. Amendments of the classification and addition of classes An application may be amended after its filing, upon request of the applicant, provided that such correction does not extend the list of goods or services, Art. 43 (2) CTMR. According to the Office’s handbook, two basic requirements must be met in order to make an amendment acceptable: – the new wording must not in fact constitute an extension of the list of goods and services, and – the restriction must constitute a valid description of goods and services and the restriction must apply only to goods or services that appear in the original application.4 In light of these conditions, only such changes are admissible that constitute a restriction of the initially filed list of goods and services. 7 It may also be acceptable to add a class to the initial classification. Since this must not result in an extension of the initial scope of protection, such addition of a class is only admissible where the goods or services detailed in the original application were clearly included in the wrong class or when a good or service has been clarified and needs to be classified in new class(es).5 This ‘moving’ of a good or service to a new, proper class may, however, trigger the obligation to pay an additional class fee for the added class(es), if the new number of classes exceeds the basic fee coverage of three classes. 6

2. Punctuation 8

Utmost care must be applied to the proper use of punctuation in a list of goods and services. The use of commas serves to separate items within a similar category or expression. The use of a semi-colon means a separation between expressions. The separation of terms by incorrect punctuation can thus lead to changes in meaning and

3 S. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, mn. 1. 4 S. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, mn. 5.3. 5 S. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, mn. 5.4.

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Classification

Art. 28 CTMR

possibly to an incorrect classification.6 An example from class 30 could be the following: ‘flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder’ must be interpreted that the terms ‘honey and treacle’ are independent from the other terms and do not form part of the ‘preparations made from…’ indication.7

3. Use of adverbs (namely versus in particular) Although the use of adverbs in a list of goods and services is admissible in most cases, 9 their proper use is crucial in order to achieve the intended scope of protection.8 The terms ‘in particular’, ‘for example’, ‘such as’, ‘including’ (or other equivalent) indicate that the ensuing goods/services are only examples of items included in the category, and that protection is not restricted to them.9 In other words, these terms introduce a nonexhaustive list of examples. By contrast, use of the words ‘namely’ or ‘being’ must be understood as a restriction of the preceding category to the specific goods and services which are listed thereafter. For instance, ‘dairy products, namely butter’ limits the scope of protection to ‘butter’ whereas ‘dairy products, including butter’ covers any kind of dairy product, with ‘butter’ merely being an example.

III. The Nice classification The Nice Agreement Concerning the International Classification of Goods and Services 10 for the Purposes of the Registration of Marks was concluded at the Nice Diplomatic Conference on 15 June 1957, last revised in Geneva on 13 May 1977 and amended on 28 September 197910 (‘the Nice Agreement’). The Nice classification is maintained by the World Intellectual Property Organisation (WIPO). Since 1 January 2002, the list of classes of that classification contains 34 classes of products and 11 classes of services. The Nice classification is revised every five years by a committee of experts in which each of the 84 contracting parties is represented.11 The now current tenth edition of the Nice classification entered into force on 1 January 2012. It is worth noting that the tenth edition was since altered three times, as new versions are published yearly on 1 January. The most recent version is the ‘Tenth Edition, version 2015’. The Nice classification is conceived as a structure consisting of 11 – a list of classes in which each class is designated by one or more general indications – commonly referred to as ‘class headings’ – which indicate in a general manner the fields to which the goods and services in principle belong, Art. 1 (2)(i) of the Nice Agreement, and – an alphabetical list of goods and services (‘the alphabetical list’) with an indication of the class into which each of the goods or services falls, Art. 1 (2)(Ii) of the Nice Agreement. In the now current tenth edition of the Nice classification, the alphabetical list contains approximately 12,000 entries. 6 S. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, 4.1.4. 7 S. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, 4.1.4. 8 For further details s. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, 4.1.2. 9 GC Case T-224/01 Durferrit GmbH v OHIM – ‘Nu-tride’ [2003] ECR II-1589, mn. 41; GC Case T-87/ 07 Scil proteins GmbH v OHIM – Affilene/Affilin [2008] ECR II-00251, mn. 37 to 41; GC Case T-504/09 Vo¨lkl GmbH & Co. KG v OHIM – Vo¨lkl/Vo¨lkl [2011] ECR II-08179, mn. 119. 10 United Nations Treaty Series, Vol. 1154, No I 18200, p. 89. 11 Art. 3 of the Nice Agreement.

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Pursuant to the logic of the CTMIR, which makes it clear that any imaginable good or service must necessarily be classified into one of the Nice classes, the above structure must be understood as being complemented by a third, unofficial category, which comprises – any good or service that falls outside of the scope of the alphabetical list.

IV. The problematic role of the Nice class headings 1. Description of the practical problems and the previous practice of OHIM As a matter of fact, applicants have a strong inclination to seek protection for ‘all’ goods or services in the Nice class(es) of their choice, rather than limiting the list of goods and services of their application to those items which are of actual or potential relevance for their intended use of the mark. The apparent reason is that applicants want to ‘get the most out of their trade mark registrations’, either because they want to make sure that the mark ensures enough flexibility to cover future, unknown offerings that may be branded with that mark or because of a more defensive approach, i. e. they want to protect their mark more broadly than would be necessary for their actual offerings in an attempt to proactively fend off any competing or diluting use of that mark. 14 This inclination to cover ‘all’ goods or services in a particular class for a long time implicated that the applicant simply copied the entire Nice class headings into the trade mark applicant’s list of goods and services. This common practice created a number of problems, which are commented below and which over the last few years have been subject to substantial changes in the practice not only of OHIM, but also of the various national offices in the EC Member States. 15 a) Non-exhaustive class coverage by the Nice class headings. The first major problem results from the fact that the Nice class headings as such do not necessarily ‘cover’ all of the goods or services that fall into their respective class. In order to comprehend this finding, it is important to recall the structure of the Nice classification laid out above: the source for any classification is not primarily the class headings, but the alphabetical list of goods and services that builds the core of the Nice classification system. Since this list comprises approximately 12,000 entries for the 45 classes altogether, it was necessary to create ‘headings’ for each class. Yet nothing in the Nice Agreement – or in the EC legislations for that matter – stipulates that these ‘class headings’ provide an exhaustive coverage of all individual items that fall into a particular class. In fact, the Nice Agreement does not even use the term ‘class headings’, but merely speaks of ‘a list of classes, together with, as the case may be, explanatory notes’, Art. 1 (2)(i) of the Nice Agreement. These ‘class headings’ are thus rather meant to provide a general guidance in order to facilitate the practical use of the classification system. 16 This non-exhaustive character of the class headings results in a whole number of lacunae, i. e. items that appear in a specific class’s alphabetical list but which are not covered by that class’s ‘headings’. For example, a few notable lacunae include the following: – Until the entry into force of the tenth edition of the Nice classification on 1 January 2012, the Nice class headings for class 9 did not include the all-important ‘computer software’, though the alphabetical list of class 9 comprised ‘computer programmes’ ever since the third edition of the Nice classification of 1981. – The class headings of class 42 do not cover ‘translation services’, which undoubtedly fall into that class.12 13

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– The class headings for class 35 do not cover the increasingly important ‘wholesale and retail services’, though their acceptance as a distinct service is a rather new, but nonetheless highly important development.13 While, generally speaking, the existence of such lacunae in the Nice class headings has been obvious for a long time, the consequences of this finding divided the practice of the numerous trade mark offices – OHIM an national offices in the EC Member States – into two groups. The larger group of eighteen national offices14 followed the ‘means-what-it-says’ approach under which any term in a list of goods and services will be taken to cover no more than what would fit within its description. Practically, this means that the use of the Nice class headings of a specific class does not per se equal a claim for all goods/ services that fall into that class’s alphabetical list, let alone for such goods that do fall into that class but which are not part of the alphabetical list of the Nice classification. Consequently, the use of the class headings of a specific class excludes from that trade mark’s scope of protection any goods or services that do not fit within the verbatim meaning of the class headings. If the applicant nonetheless aims to cover an entire Nice class, the only remedy is to include that class’s entire alphabetical list of the Nice classification into the application’s list of goods and services. The smaller group of nine European offices15 – including OHIM – for a long time took a contrary stance, which is often described as ‘class-heading-covers-all’ approach. Loosely speaking, these offices considered that the use of the Nice class headings in a trade mark’s list of goods and services equals protection for all goods and services within that class. This more liberal approach did not attach any consequences to the existence of the lacunae described above. To be more precise, this group of offices was in itself divided into two sub-groups. One sub-group16 considered that the use of the headings of a specific Nice class provided coverage for any and all goods/services that could fall within that class, i. e. all of the items listed in the Nice alphabetical list plus any other goods or services that are not contained in that list but which belong to that class. The second sub-group’s17 approach was slightly more restrictive, since it considered that only the items listed in the Nice alphabetical list at the trade mark’s time of filing are covered, but not the other goods/services that belong to that class without being included in the Nice alphabetical list. This former standing – but now abandoned – practice of OHIM was confirmed in Communication No 4/03 of the President of the Office of 16 June 200318: ‘The 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class.’ This office practice was approved by the General Court, both before and after the Court of Justice’s ‘IP Translator’ decision (which is commented below).19

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S. commentary on ‘wholesale and retail services’ below Art. 28, mn. 69 et seq. Austria, Benelux, Croatia, Cyprus, Czech Republic, Denmark, Estonia, France, Germany, Ireland, Latvia, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden and United Kingdom. 15 OHIM, Bulgaria, Finland, Greece, Hungary, Italy, Lithuania, Malta, Romania. 16 OHIM, Bulgaria, Finland, Greece, Italy, Malta. 17 Hungary, Lithuania, Romania. 18 Communication No 4/03 of the President of the Office of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, Sect. IV., para. 1. 19 GC Case T-186/02 BMI Bertollo Srl v OHIM – Dieselit/Diesel [2004] ECR II-01887, mn. 42; GC Case T-66/11 Present-Service Ullrich GmbH & Co. KG v OHIM, mn. 49 et seq., available at: www.curia.eu Õ search Case law. 14

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The Office’s reasoning becomes even more apparent in its further explanation that dealt with the then-existent ‘software lacuna’20: Furthermore, where it may not be obvious under which of several general indications particular goods or services fall, there is nevertheless a classification-based reasoning for the proper classification. For example, ‘computer software’ is included in class 9 because of the presence of the general indication ‘data processing equipment and computers’ in that class, because computer software is seen as directly related to the corresponding apparatus or equipment. Therefore, when a specification contains ‘data processing equipment and computers’ as a general indication, this will be considered as embracing also computer software. On the other hand, where a specification lists general indications in class 9 but not ‘data processing equipment and computers’, computer software will not be considered as falling within the specification’21. In practice, this position held by OHIM entailed that the office even accepted CTM applications whose list of goods and services simply claimed protection for ‘all goods and services in classes [followed by the Nice class number(s)]’. During the examination process, the Office did ex officio replace such indication in a CTM application with the Nice class headings of the claimed classes, which then appeared in the CTM registration. This practice has also been abandoned by OHIM.22

b) Lack of clarity and precision in the Nice class headings. The use of the Nice class headings in trade mark applications entails the further problem that some of the terms used in these headings lack the clarity and precision that is mandatory for the proper determination of the scope of protection of a trade mark registration. Thus, some national offices in the EC Member States have for a long time objected to the use of some of these imprecise class headings by requesting clarifying amendments to the lists of goods and services during the examination process. The evolving position of OHIM23 and the details on these imprecise headings24 are commented below. 23 Prior to the CJ’s decision ‘IP Translator’ (commented below), the Office’s practice was to negate the existence of such lack of clarity and precision and to accept the use of the Nice class headings in CTM applications without any clarifying amendments. Communication No 4/03 of the President of the Office of 16 June 2003 read: ‘It constitutes a proper specification of goods and services in a CTM application if the general indications or the whole class headings provided for in the Nice Classification are used. The use of these indications allows a proper classification and grouping. The Office does not object to the use of any of the general indications and class headings as being too vague or indefinite, contrary to the practice which is applied by some national offices […].’25 22

2. The CJ’s landmark decision ‘IP Translator’ 24

The pivotal point for the divergent practices of the various offices in the EC was the CJ’s landmark decision ‘IP Translator’ of 19 June 2012.26 It is widely assumed that this 20 S. above mn. 16, the then-current Nice class headings for class 9 did not comprise the all-important good ‘software’, which belongs into that class. 21 Communication No 4/03 of the President of the Office of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, Sect. IV., 3rd para. 22 S. commentary below Art. 28, mn. 38. 23 S. commentary below Art. 28, mn. 29 et seq. 24 S. commentary below Art. 28, mn. 58 et seq. 25 Communication No 4/03 of the President of the Office of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, Sect. III., para. 2. 26 CJ Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trademarks, available at: www.curia.eu Õ search Case law.

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case was ‘made-up’ by the protagonists in order to elicit a clarifying and – hopefully – unifying decision from the CJ on these controversial practices. The plaintiff in this case (the UK-based ‘Chartered Institute of Patent Attorneys’) had 25 applied for a UK word mark ‘IP Translator’ in Nice class 41, using the Nice class headings for their list of goods and services. As commented above27, ‘translation services’ is one of the lacunae of the Nice class headings, i. e. this services falls into Nice class 41 but the Nice class headings for that class – if understood verbatim – do not cover that service. The British registrar objected to this application as being descriptive and refused registration. The applicant argued that the mark could not be descriptive since – in line with the ‘means-what-it-says’ approach followed by the UK Office – the mark did not claim protection for translation services. What is odd is that the registrar, in its rejecting decision, expressly referred to OHIM’s Communication No. 4/03 (cited above28) and considered that the use of the Nice class headings by the applicant equalled a claim to all goods in that Nice class 41, thus including translation services. This was striking because that communication had no legal effect whatsoever on UK trade mark law, which fuels the speculations that this case was in fact ‘madeup’.29 Then, upon appeal lodged by the applicant, the second instance court stayed the proceedings and referred a number of questions to the CJ. Concerning the issue of the lack of clarity and precision of the Nice class headings30, 26 the CJ held ‘that some of the general indications in the class headings of the Nice Classification are, in themselves, sufficiently clear and precise to allow the competent authorities to determine the scope of the protection conferred by the trade mark, while others are not such as to meet that requirement where they are too general and cover goods or services which are too variable to be compatible with the trade mark’s function as an indication of origin.’31 Based on this finding, the Court concludes that Community trade mark law ‘does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise to allow the competent authorities and economic operators to determine the scope of the protection sought.’32 Though the Court did not specify which of the Nice class headings are ‘too variable’ to be used in a trade mark application, it became clear from this ruling that the then-current practice of OHIM to accept any Nice class heading in a CTM application could no longer be upheld. On the other major issue of the diverging interpretation given by the offices to the use 27 of the Nice class headings and their non-exhaustive class coverage33, the Court emphasized that these contradictory approaches ‘may lead to a difference in the extent of the protection of a national trade mark if it is registered in several Member States, but also of the protection of the same mark if it is also registered as a Community trade mark’.34 Consequently, the Court holds that ‘in order to respect the requirements of clarity and 27

S. commentary above Art. 28, mn. 15. S. commentary above Art. 28, mn. 19. 29 S. also the observation submitted by OHIM in these CJ proceedings, who considered this preliminary ruling to be inadmissible on the ground that it is ‘artificial’, CJ Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trademarks, mn. 30 et seq., available at: www.curia.eu Õ search Case law. 30 S. commentary above mn. 22 and below mn. 57. 31 CJ Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trademarks, mn. 54, available at: www.curia.eu Õ search Case law. 32 CJ Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trademarks, mn. 56, available at: www.curia.eu Õ search Case law. 33 For a detailed description of this issue s. commentary above mn. 14 et seq. 34 CJ Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trademarks, mn. 59, available at: www.curia.eu Õ search Case law. 28

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precision […], an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered’.35 28 Overall, the ‘IPTranslator’ judgment was somewhat enigmatic in that the Court did not actually side with either the ‘means-what-it-says’ or the contradicting ‘class-heading-covers-all’ approach. Rather than giving a clear guidance for the future practice of the offices, the Court seems to have shied away from taking a more far-reaching decision which would have upset the longstanding practices of either of the groups of offices. At least the judgment made it clear that both groups – regardless of their respective approach to this issue – would have to re-think and adapt their practices.

3. Development of the offices’ practices after the ‘IP Translator’ decision a) Initial reactions by the offices. One day after the publication of the CJ’s ‘IP Translator’ decision, OHIM published ‘Communication No 2/12 of the President of the Office of 20/06/2012 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations’. This communication clarified that for CTMs registered or applied-for before the date of this communication, the former ‘class-heading-covers-all’ approach will still apply.36 For CTM applications filed after the date of that communication, the Office then offered two options: If the application contains ‘all the general indications of a particular class heading of the Nice Classification, [applicants] must expressly indicate whether or not their intention is to cover all the goods or services included in the alphabetical list of the particular class concerned or only some of those goods or services in that class’.37 To this end, the Office provided on its website a dedicated form sheet with which the applicant could declare its intent to cover the entire Nice alphabetical list for the claimed class(es). If such declaration was filed, the Office ascertained that the register would reflect this intent to cover all goods/services in the alphabetical list.38 In the absence of such express declaration in the application, the Office would henceforth consistently apply the ‘means-what-it-says’ approach in all proceedings before the Office.39 30 As regards the issue of the lack of clarity of some of the Nice class headings, the Communication clarified that ‘the Office will continue to accept the use of the general indications of the class headings but on a case-by-case basis’.40 At the same time, the OHIM announced that ‘the Office, together with the EU National Offices, will work within the framework of the Convergence Programme towards a common practice with regard to the acceptability of each of the general indications of the Nice Classification class headings’.41 31 As for the opposite group of offices that had followed the ‘means-what-it-says’ approach prior to the IP Translator decision, the question arose as to whether or not 29

35 CJ Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trademarks, mn. 61, available at: www.curia.eu Õ search Case law. 36 Communication No 2/12 of the President of the Office of 20/06/2012, Sect. V. and VI. 37 Communication No 2/12 of the President of the Office of 20/06/2012, Sect. VII., insertion in brackets added. 38 Communication No 2/12 of the President of the Office of 20/06/2012, Sect. VIII, last para. 39 Communication No 2/12 of the President of the Office of 20/06/2012, Sect. VIII. 40 Communication No 2/12 of the President of the Office of 20/06/2012, Sect. III. 41 Communication No 2/12 of the President of the Office of 20/06/2012, Sect. III., para. 3.

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they would henceforth have to accept that applications cover entire Nice classes if such applications contain the class headings and an express declaration to the effect that these headings should cover the entire class. For example, both WIPO for International Registrations and the German PTO42 for national applications made it clear that they saw no necessity to deviate from their longstanding practice. b) The Convergence Programme and the now current practice. Already before the ‘IP Translator’ judgment, OHIM and the national trade mark offices of the EC Member States commenced setting up what is today named the ‘European Trade Mark and Design Network’ (‘Europeantmdn’). According to its self-presentation, the Europeantmdn ‘is the hub that connects the European IP Offices, working together to achieve a true trade mark and design system in the EU in which common practices, services and tools are focused on the needs of IP professionals and rights holders.’43 One important field of activity of this network is the so-called ‘Convergence Programme’, which was established in June 2011. In an attempt to harmonise the practice of the participating offices, five projects were launched under the umbrella of that programme, two of which deal with the ‘Harmonisation of Classification’ and with the ‘Convergence of Class Headings’.44 Obviously accelerated by the ‘IP Translator’ landmark decision, these programmes have meanwhile yielded the first results. Concerning the issue of imprecise and unclear Nice class headings, the Europeantmdn on 20 February 2014 published a ‘Common Communication on the Common Practice on the General Indications of the Nice Class Headings (v1.1)’ and a further ‘Common Communication on the Common Practice on the Acceptability of Classification Terms (v1.0)’.45 In short, these communications contain a list of the Nice class headings that are henceforth considered to lack the necessary clarity for classification, and they describe possible amendments that an applicant may include in its list of goods and services as a remedy to these imprecisions. These communications are commented in greater detail below.46 Concerning the diverging approaches of the offices related to the scope of protection of trade marks containing entire Nice Class headings filed before and after the ‘IP Translator’ judgment, the second project resulted in a ‘Common Communication on the Implementation of ‘IP Translator’ (v1.2)’, also published on 20 February 2014.47 With the exception of four countries48, all other offices – including OHIM – commit to henceforth apply the ‘means-what-it-says’ approach to all trade marks filed after the publication of the ‘IP Translator’ judgment. Another important aspect of this project is the creation of a so-called ‘taxonomy’ of goods and services based on the Nice classification. The details of this taxonomy are commented in greater detail below.49 In line with these Common Communications, OHIM issued ‘Communication No 1/ 13 of the President of the Office of 26/11/2013 concerning a new administrative tool for classification purposes (taxonomy) and the use of class headings of the Nice Classifica42

Communication No 16/12 of the President of the German PTO of 28/10/2012. Source: www.tmdn.org Õ What is the Europeantmdn? 44 The other projects cover ‘Absolute Grounds – Figurative Marks’, ‘Scope of Protection of B&W Marks’ and ‘Relative Grounds – Likelihood of Confusion’. 45 Available for download on OHIM’s website alongside the Office’s Guidelines under www.oami.euÕ Law & practice Õ Current Trade Mark Practice. 46 S. commentary below Art. 28 mn. 57 et seq. 47 Available for download on OHIM’s website, s. mn. 45. 48 Hungary, Italy, Lithuania and Romania, who follow the approach that the use of class headings covers the literal meaning of the class headings plus the alphabetical list of the edition of Nice at the time of filing. 49 S. commentary below Art. 28 mn. 41. 43

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tion’. In this communication, OHIM makes it clear that the aforementioned Common Communications by the Europeantmdn on class headings that are not sufficiently clear and precise will henceforth be implemented into the Office’s guidelines and that these indications will no longer be accepted during the application process.50 The recently published Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Section 3.’ now reflect those changes. As far as an applicant’s intention to cover an entire Nice class in an application is concerned, OHIM substantially changed its policy in issuing this aforementioned communication. The Office declares that ‘if the applicant intends to protect all goods or services included in the alphabetical list of a particular class, it must, according to paragraph IV of Communication No. 2/2012, expressly indicate this intention by designating all these goods and services explicitly and individually. In order to assist applicants, use of the hierarchical structure [i. e. the taxonomy] is encouraged. A general statement, by which the applicant declares its intention to cover all the goods or services included in the alphabetical list of this class, will not be accepted’.51 This wording is somewhat uncandid to a certain degree as the reference ‘according to paragraph IV of Communication No. 2/2012’ does not seem appropriate. Nothing in that prior communication stated that such intention would need to be indicated ‘by designating all these goods and services explicitly and individually’. On the contrary, the interim practice of the Office after ‘IP Translator’ had in fact been to request a general statement from the applicant as to whether the use of the Nice class headings equals the intention to cover the entire class. In any event, it is important to note that such general declarations will no longer be accepted by OHIM. As a further consequence, the Office will no longer accept lists of goods and services that just claim protection for ‘All goods and services in classes XYZ’. Contrary to the Office’s previous practice, such indication will henceforth not even meet the filing date requirement contained in Art. 26 (a)(c) CTMR.52 This change of the Office’s practice also gives rise to the question of intertemporal treatment of trade mark applications and registrations. In other words: How will the Office treat trade mark applications and registrations that have been filed under the old ‘class-heading-covers-all’ regime? In this context, the Office has made it clear that CTMs that were registered or applied for before 21 June 2012 and whose lists of goods and services contain entire Nice class headings will be treated as covering ‘all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made’53. Thus, the legitimate interest of the holders of CTMs that were filed under the old regime will be protected in that these CTMs will enjoy the same class coverage perpetually. CTM applications that were filed on or after 21 June 2012 will, however, be construed under the new ‘means-what-it-says’ regime.54 This intertemporal problem is also relevant in the context of how OHIM treats the scope of protection of national trade mark registrations. This question may, for instance, arise whenever an opposition against a CTM application is based on a national trade mark registered in one of the EC Member States. Though the Office’s official 50

Communication No 1/13 of the President of the Office of 26/11/2013, Part II. Sect. i. Communication No 1/13 of the President of the Office of 26/11/2013, Part II. Sect. ii, insertion in brackets added. 52 S. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Section 3, mn. 4.2.3. 53 Communication No 2/12 of the President of the Office of 20/06/2012, Sect. V. (for registrations) and VI. (for applications). 54 Communication No 2/12 of the President of the Office of 20/06/2012, Sect. VII. 51

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communications do not deal with this issue, the Office has made it clear that for national trade marks filed before the ‘IP Translator’ judgment, OHIM will accept the filing practice of that pertinent country.55 This means that if the national office in that country applied the ‘means-what-it-says’ approach already before 21 June 2012, then OHIM will treat that national mark in the same way. If, however, that national office applied the ‘class-heading-covers-all’ approach, then such national mark that contains full class headings will enjoy the same perpetual full coverage of the Nice alphabetical list56 as CTMs that were filed under the old regime.57

V. The new taxonomy and its class scopes As part of the Europeantmdn’s Convergence Programme, the participating offices – 41 including OHIM – have created a new instrument called the ‘taxonomy’ of goods and services. In short, the taxonomy is a new hierarchical structure of goods and services which uses the Nice classification as a base.

1. Background and purpose of the creation of the taxonomy The background of the creation of the taxonomy was apparently the awareness that the 42 Nice classification – consisting of the Nice class headings and the underlying Nice alphabetical list – is as such not properly suited for the creation of lists of goods and services for a particular trade mark application. As commented in greater detail above, the Nice class headings (a) do not comprehensively cover all of the goods/services that fall into a particular class58 and (b) contain several indications which as such are not sufficiently clear and precise to be used in a trade mark application59. A further concern results from the fact that the Nice alphabetical list is (a) not hierarchical, which makes it difficult to identify the best suited indication(s) and (b) not comprehensive, as it lacks several indications that are commonly used by applicants and accepted by the offices. Prior to the creation of the taxonomy, the participating offices had already set up a ‘common harmonised database’ with all the indications of goods and services that are accepted by the offices and which contains substantially more entries than the Nice alphabetical list. The taxonomy intends to remedy these disadvantages of the Nice classification by 43 creating a new hierarchical structure, using the Nice classification as a base and expanding this with terms from the common harmonised database, with broader terms on top and more specific terms below.60 One important element of this taxonomy is the so-called ‘class scopes’. According to the Convergence Programme’s self-presentation, the class scope is a group of terms based on the taxonomy which, collectively, designates 55 S. Europeantmdn’s ‘Common Communication on the Implementation of ‘IP Translator (v1.2)’, p. 8, published on February 20, 2014, available for download on OHIM’s website alongside the Office’s Guidelines under: www.oami.eu Õ Law & practice Õ Current Trade Mark Practice. 56 Though it is important to note that the Office will interpret such application as only covering the alphabetical list of the Nice edition in force at the time of filing, but not as covering any and all goods in that class (and that are not contained in the alphabetical list). 57 S. publication cited under mn. 55. 58 S. commentary above Art. 28 mn. 14 et seq. 59 S. commentary above Art. 28 mn. 22 et seq., 27 et seq. 60 S. publication ‘Principles of the new common practice – Convergence Programme – CP 2. Convergence of Class Headings’, p. 6, available for download on OHIM’s website under www.oami.europa.eu/ knowledge/pluginfile.php/14550/mod_resource/content/2/principles_of_the_common_practice-en.pdf, last visited on 10/03/2015.

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all known goods and services within a class. It is supposed to be ‘broad enough to cover all classifiable terms in a class, whilst being specific enough for classification’.61 As the Nice class headings ‘are not sufficiently inclusive to be used to describe all goods and services in all classes’, ‘the class scopes were therefore created with a view to allowing applicants to get the protection they need by filing shorter lists of goods and services’.62 In other words, the class scopes are intended to become the new ‘gold standard’ for the applicants’ wording of comprehensive lists of goods and services.

2. Composition of the taxonomy and its class scopes The taxonomy is a logical structure where goods and services are categorised in a hierarchical tree, with general groups at the top and more specific ones at the bottom.63 According to the Convergence Programme’s self-presentation, each class contains at least one further level which brings together terms sharing the same characteristics into one or more groups, each of them having a group title. Terms are allocated based on them fitting within the meaning of the group title. The top level group titles have been defined independently of the Nice Class Headings, but they might coincide. The taxonomy has general groups at the top and more specific ones at the bottom (sub-groups). Depending on the complexity of the class, a group can have one or more sub-groups below it, though many non-complex groups do not contain any sub-groups. All terms in the common harmonised database were taken into account when the structure was created. This follows a bottom-up approach, which implies that all the goods and services classified in the lower levels of the hierarchy are effectively included in the higher levels.64 45 It is important to bear in mind that this taxonomy structure is supposed to strictly follow the ‘means-what-it-says’ approach, unlike the Nice class headings. Thus, each group title and sub-group title is supposed to be worded in such a way as to safeguard that, by means of a verbatim interpretation, it covers all of the individual goods or services that are grouped beneath it. 44

a) The taxonomy. The tree-like hierarchy of the taxonomy for each of the 45 Nice classes consists of the following: – Multiple group titles for each class (top level). – Optionally and depending on the complexity of the group title, a group title may contain sub-groups (second level). Each sub-group contains its own sub-group titles. – The numerous individual terms from the common harmonised database that fall into that class are then ‘allocated’ either directly to one of the top level groups or to one of the second level sub-groups – if any exist. If a group does contain sub-groups, the individual term may be allocated to either of both levels (rather than necessarily being attached to a sub-group). 47 Following the ‘means-what-it-says’ approach, the use of one of the group titles in a trade mark’s list of goods and services is supposed to cover (a) all of the sub-group titles of that group (if any) and (b) all of the individual terms that are allocated either to the top level group title itself or to one of that group’s second level sub-groups. The use of one of the sub-group titles in a list of goods and services is supposed to cover only those individual terms that are allocated to that sub-group. 46

61

S. publication cited in fn. 60, Sect. 4.2, first question. S. publication cited in fn. 60, Sect. 4.2, second question. 63 S. publication cited in fn. 60, p. 10. 64 These explanations are a slight revision of a text taken from the Convergence Programme’s presentation, s. publication cited in fn. 60, p. 11. 62

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In any event, it is important to note that not all top level group titles are per se 48 acceptable for classification.65 This means that some group titles do not meet the Office’s requirement of clarity and precision that is mandatory for any list of goods and services. The practical consequences of this finding is commented below in relation to the class scopes. Though the aforesaid may appear complicated in theory, in practical use the proper 49 selection of group titles, sub-group titles and individual indications is largely facilitated by the fact that the taxonomy is provided as an electronic database. If a CTM is applied for through e-filing, the taxonomy can be ‘browsed through’ and the group titles, sub-group titles and individual terms of choice can be selected by ticking checkboxes. If a group title is not as such acceptable for classification, it is greyed out and cannot be ticked. b) The class scopes. The so-called class scopes66 are a logical result of the taxonomy 50 structure. The class scope is a group of terms collecting all goods and services of a given class at a given moment in time. ‘It is broad enough to cover all classifiable terms in a class, whilst being specific enough for classification’.67 The concept is thus that the class scopes are supposed to safeguard comprehensive coverage of any and all goods/services in a particular class, as they must ‘always cover the scope of sub-groups which in turn will encompass all individual terms below’68. Following the mere theory of the taxonomy, assembling the class scopes for a 51 particular Nice class would simply imply stringing together all of the taxonomy’s top level group titles for that class. Yet, as commented above, not all group titles are as such admissible for classifications as some of them lack the required clarity and precision. Hence, assembling the class scopes is in fact a more complicated task, which is described in the Convergence Programmes presentation: – In a first step, ‘the highest level group titles of the taxonomy structure that are acceptable for classification will be part of the class scope’69. Such group titles of that highest level which are not acceptable for classification will not be part of the class scope.70 – In a second step, in order to substitute the non-acceptable group titles, it will be necessary to go down in the taxonomy’s hierarchical tree to the sub-groups, until acceptable and comprehensive sub-group titles are reached. Those will then be part of the class scope. In that sense, once an acceptable and comprehensive sub-group title has been reached, there is no need to continue going down in the hierarchy.71 For many of these non-acceptable group titles, the practical solution is to include all 52 of the sub-group titles of that top level group. For example, the group title ‘IT services’ in class 42 is not as such acceptable, but it is admissible to cover all individual terms that are allocated beneath that top level group by including all of that group’s sub-group titles by way of a ‘namely’ link: ‘IT services, namely software development, programming and implementation72, … [followed by the other sub-group titles]’. By doing so, the class scope achieves comprehensive coverage of any and all individual services that are allocated to the group title ‘IT services’. 65

S. publication cited in fn. 60, p. 11, last sentence. For the full list of the current class scopes see comments under mn. 54. 67 S. publication cited in fn. 60, Sect. 4.2, first question. 68 S. publication cited in fn. 60, p. 25. 69 S. publication cited in fn. 60, p. 16. 70 S. publication cited in fn. 60, p. 17. 71 These explanations are a revised version of a text taken from the Convergence Programme’s presentation, s. publication cited in fn. 60, p. 17. 72 ‘Software development, programming and implementation’ is one of the sub-group titles of the top group title ‘IT services’. 66

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In other cases of non-acceptable group titles, it is necessary to amend that title with further specifications. For instance, the class 40 group title ‘treatment and transformation of materials’ is not acceptable as such, which is also the case for the corresponding Nice class heading ‘treatment of materials’. The reasoning given by the Europeantmdn reads: ‘The nature of the treatment is unclear, as are the materials to be treated. These services cover a wide range of activities performed by different service providers on materials of different characteristics requiring very different levels of technical capabilities and knowhow, and may relate to different market sectors’.73 In order to remedy this imprecision, the class scope for class 40 contains a number of titles that describe common types of the general Nice class service ‘treatment of materials’. However, that class scope also contains the broader indication ‘treatment and transformation of materials [to be specified by user]’. The addition of the ‘[to be specified by user]’ makes it clear that in order to achieve the broadest possible coverage of that class, the applicant must amend this title with further specification of the type of treatment (e. g. ‘treatment of materials by laser beam’) or the materials to be treated (e. g. ‘treatment of crude mineral oil’). 54 The class scopes can be viewed on a class-by-class basis in the Office’s online application and classification tool. Furthermore, a comprehensive list of the class scopes can be taken from OHIM’s publication ‘Taxonomy changes for version 2015’.74 53

3. Advantages and disadvantages of the use of the class scopes in trade mark applications The creation of the taxonomy and – more importantly – the class scopes is supposed to fill the gap that resulted from the recent EU-wide adoption of the ‘means-what-itsays’ approach in the interpretation of a trade mark’s list of goods and services. Since the ‘class-heading-covers-all’ approach does not apply to trade mark applications filed after 20 June 201275, an applicant who just copies the Nice class headings into an application’s list of goods and services runs the risk that this list does not actually cover the entire class. By using the new class scopes in lieu of the Nice class headings, the applicant may thus (try to) achieve the most complete class coverage. Though OHIM does not make any statement on that purpose of the class scopes, the German PTO, for instance, explicitly recommends the use of the class scopes in order to achieve ‘maximum protection for a particular class’ which provides coverage for ‘practically any and all currently known goods and services’.76 However, these advantages should not be seen without any scepticism. 56 Despite the broad support for the use of the class scopes by OHIM and the national offices, one must bear in mind that this top-down coverage concept is not legally binding. Nothing in the European community trade mark law or in the Nice Agreement attributes any direct legal effect to the use of the taxonomy or its class scopes. Rather, this concept purely relies on the ‘means-what-it-says’ approach and the careful wording of the (sub-)group titles, the combination of which is supposed to logically imply that terms 55

73 S. Europeantmdn’s ‘Common Communication on the Common Practice on the General Indications of the Nice Class Headings (v1.1)’, p. 7, available for download on OHIM’s website alongside the Office’s Guidelines under: www.oami.eu Õ Law & practice Õ Current Trade Mark Practice. 74 See p. 27 et seq. of the publication ‘Taxonomy changes for version 2015’, available for download at https://www.tmdn.org/network/documents/10181/a4838224-764b-4470-b7d1-f82fef755a00 (last visited on 11/03/2015). 75 Communication No 2/12 of the President of the Office of 20/06/2012, Sect. VII. 76 http://www.dpma.de/marke/markenschutz/klassifikation/classscopes/index.html (last visited on 28 May 2014)

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grouped under the same title are covered by that title’s logical meaning.77 While the participating offices have declared that they are bound by the taxonomy, neither the European Courts (GC, CJ) nor the national courts of the EC Member States are legally bound by the taxonomy. There is thus no legal certainty that the use of the class scopes in a trade mark application will provide the expected completeness of protection in opposition or infringement proceedings. Another disadvantage that may arise from the use of the class scopes is the uncertainty 57 whether offices outside the EU (a) will accept the class scopes for classification and (b) whether they will attribute the same completeness of coverage to the use of class scopes. Practical experience shows that in many jurisdictions outside the EC the offices strictly adhere to the Nice class headings and the Nice alphabetical list. Further, it must be assumed that many offices outside the EC will continue adhering to the ‘class-headingcovers-all’ regime. These aspects may become a problem in cases where the applicant uses the class scopes for an initial application in the EC, which will later serve as a basis for an international registration or for a claim to that initial mark’s priority date. Both scenarios imply that the list of goods and services of the initial application – which is composed of the class scopes – will be ‘carried over’ to the foreign application(s) outside the EC. This may result in the foreign offices (a) objecting to the list of goods and services, because it is not in line with the Nice class headings or the Nice alphabetical list and/or (b) attributing a less-than-complete class coverage to that list of goods and services. Therefore, in cases where a CTM application is intended to later serve as a basis for an international registration or a priority claim outside the EC, it may be advisable (a) to ascertain beforehand whether the offices in the target jurisdiction accept the taxonomy and its class scopes and (b) in case of doubt to compose the initial application’s list of goods and services in the most comprehensive way by stringing together both the Nice class headings and the class scopes. While this may make the list of goods and services appear highly redundant, it makes sure that the Nice class headings may be used as a ‘fallback position’ in jurisdictions outside the EC.

VI. Non-acceptable general indications of the Nice class headings As commented above78, the ‘IP Translator’ decision also marked a pivotal point in 58 the assessment of imprecise Nice class headings. The CJ made it clear that not all of the Nice class headings are sufficiently precise to be included in a trade mark’s list of goods and services. However, the Court did not go into further detail by identifying those indications that it considers too imprecise. After the ‘IP Translator’ judgment, OHIM could no longer uphold its previous practice of accepting any of the Nice class headings for classification, which was based on the office previously denying the existence of any imprecision.79 The current end point of the alteration of OHIM’s practice results from the Europeantmdn’s Convergence Programme, or more precisely from its ‘Common Communication on the Common Practice on the General Indications of the Nice Class Headings (v1.1)’ of 20 February 2014.80 In this document, the participating offices identified 11 general 77

S. publication cited in fn. 60, para. 4.1.2. (p. 15), last sentence. S. commentary above Art. 28 mn. 22 et seq., 27 et seq. 79 Concerning the previous office practice, s. commentary above Art. 28 mn. 23. 80 S. Europeantmdn’s ‘Common Communication on the Common Practice on the General Indications of the Nice Class Headings (v1.1)’, available for download on OHIM’s website alongside the Office’s Guidelines under: www.oami.eu Õ Law & practice Õ Current Trade Mark Practice. 78

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indications out of the total of 197 general indications of all Nice class headings which are henceforth considered lacking the necessary clarity that is a prerequisite for classification. 59 In a further Communication of the same day, the Europeantmdn published further guidance on the acceptability of classification terms, which lays out the factors that can add sufficient clarity and precision. It reads: ‘A description of goods and services is sufficiently clear and precise when its scope of protection can be understood from its natural and usual meaning. If this scope of protection cannot be understood, sufficient clarity and precision may be achieved by identifying factors such as characteristics, purpose and/or identifiable market sector. Elements that could help to identify the market sector may be, but are not limited to, the following – consumers and/or sales channels – skills and know-how to be used/produced – technical capabilities to be used/produced.’81 These Europeantmdn communications have also been implemented into the Office’s handbook.82 Since many of the 11 general indications that are considered too imprecise are identical or very similar in the reasons of their inclusion in that list, they can be grouped into the following categories:

1. Goods made from certain base materials The majority of the imprecise indications (6 out of 11) are characterised by their claiming protection not for precise goods but rather globally for any goods made from certain base materials. This concerns – goods of common metal not included in other classes (Nice class 6), – goods in precious metals or coated therewith (Nice class 14), – goods made from these materials [paper and cardboard] (Nice class 16), – goods made from these materials [rubber, gutta-percha, gum, asbestos and mica] (Nice class 17), – goods made of these materials [leather and imitations of leather] (Nice class 18), – goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics (Nice class 20). 61 The reasoning that the Convergence Programme’s communication gives for each of these six general indications reads alike: ‘In light of the need for clarity and precision, this term does not provide a clear indication of what goods are covered as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, that may require very different levels of technical capabilities and know-how to be produced and/or used, could be targeting different consumers, be sold through different sales channels, and therefore relate to different market sectors.’83 60

81 S. Europeantmdn’s ‘Common Communication on the Common Practice on the Acceptability of Classification Terms (v1.0)’, page 5 et seq., available for download on OHIM’s website alongside the Office’s Guidelines under: www.oami.eu Õ Law & practice Õ Current Trade Mark Practice. 82 S. OHIM’s Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, part B, Section 3, mn. 4.1. 83 S. Europeantmdn’s ‘Common Communication on the Common Practice on the General Indications of the Nice Class Headings (v1.1)’ (see above fn. 79), page 5 et seq.; S. also OHIM’s Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Section 3, mn. 4.2.1.

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It is therefore necessary to specify the actual goods or categories of goods that are 62 made of the respective material and that are supposed to be protected by that trade mark. To this end, it is admissible to use the ‘imprecise’ class heading and to amend it with the limiting specification ‘goods made from …, namely …’. Further guidance can be taken from the new class scopes, which contain the taxonomy’s group titles that rather broadly cover different categories of products that can be made from a certain base material.

2. Machines The Nice class heading ‘machines’ is henceforth considered unfit for classification 63 because ‘in light of the need for clarity and precision, the term ‘machines’ does not provide a clear indication of what machines are covered. Machines can have different characteristics or different purposes, they may require very different levels of technical capabilities and know-how to be produced and/or used, could be targeting different consumers, be sold through different sales channels, and therefore relate to different market sectors’.84 It is therefore necessary to narrow down the broad term ‘machines’ to such machines 64 that serve a certain purpose. Examples given by the Europeantmdn include ‘agricultural machines’, ‘machines for processing plastics’, ‘milking machines’.85 Here again, further guidance can be taken from the class scopes, which contain a number of broad group titles such as ‘machines and machine tools for treatment of materials and for manufacturing’.

3. Imprecise service indications The remaining four class headings that the Office henceforth considers too imprecise 65 for classification are service indications that very generally describe an activity, but not the subject matter towards which that activity is geared. This concerns – repair services (Nice class 37), – installation services (Nice class 37), – treatment of materials (Nice class 40) and – personal and social services rendered by others to meet the needs of individuals (Nice class 45). Since the reasoning given in the Europeantmdn’s communication very much reads 66 alike, only that for ‘repair services’ merits a citation: ‘In light of the need for clarity and precision, this term does not provide a clear indication of the services being provided, as it simply states that these are repair services, and not what is to be repaired. As the goods to be repaired may have different characteristics, the repair services will be carried out by service providers with different levels of technical capabilities and know-how, and may relate to different market sectors.’86 84 S. Europeantmdn’s ‘Common Communication on the Common Practice on the General Indications of the Nice Class Headings (v1.1)’ (see above fn. 79), page 5; S. also OHIM’s Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Section 3, mn. 4.2.1. 85 S. Europeantmdn’s ‘Common Communication on the Common Practice on the Acceptability of Classification Terms (v1.0)’, (see above fn. 80), page 6. 86 S. Europeantmdn’s ‘Common Communication on the Common Practice on the General Indications of the Nice Class Headings (v1.1)’ (see above fn. 71), page 6 et seq.; S. also OHIM’s Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Section 3, mn. 4.2.1.

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For the first three indications (repair, installation, treatment of materials) the recommended solution to ascertain a sufficient degree of clarity is to amend that indication with the subject matter towards which the service will be geared. Examples given by the Europeantmdn include ‘shoe repair’, ‘installation of doors and windows’ and ‘treatment of toxic waste’.87 68 The last of these four indications (‘personal and social services rendered by others to meet the needs of individuals’) is special insofar as this service indication has always been meant to be a catch-all element that encompasses any service that does not actually fit into any other class. Its lack of clarity and precision was therefore inherent in the indication itself. It is therefore indispensable to include the very precise service for which protection is sought. Examples given by the Europeantmdn include ‘personal background investigations’, ‘adoption agency services’.88 The class scopes for class 45 contain 18 other common indications that fall within the scope of personal and social services, but this list is far from exhaustive. 67

4. Retail and wholesale services Though the indication ‘retail and wholesale services’ (Nice class 35) is not part of the Nice class headings, it must be mentioned among the non-acceptable general indications as it is the only indication aside from the 11 non-acceptable indications commented above that is part of the new class scopes. In the class scopes, it is expressly noted that this indication also requires a further specification in order to be suitable for classification. 70 In its ‘Praktiker’ judgment89 of 7 July 2005 the CJ ruled on the registrability of retail services. It has held that services provided in connection with retail trade in goods constitute ‘services’ for which a trade mark can be registered.90 Furthermore, it held that ‘for the purposes of registration of a trade mark for such services, it is not necessary to specify in detail the services in question. However, details must be provided with regard to the goods or types of goods to which those services relate.’91 71 In a subsequent communication of its President, OHIM made it clear that ‘it has to be observed that the judgment does not require an exact specification of the goods to be sold, but merely the provision of details concerning the goods or types of goods. The Office will therefore accept any reference to the goods expressed in broad categories, regardless of whether they could be properly classified as goods under the goods classes. The reasoning is that the protection for marks claiming retail services is exactly not conferred to the actual act of sale of those goods. Indications such as ‘retail trade in building, home improvement and gardening tools for the do it yourself sector’ (…), foodstuff, or any other general category of goods, as long as the type of goods is readily ascertainable, are acceptable. It is equally acceptable to refer to class headings. However, it is not acceptable to refer to goods falling into a particular class or into a 69

87 S. Europeantmdn’s ‘Common Communication on the Common Practice on the Acceptability of Classification Terms (v1.0)’, (see above fn. 80), page 6 et seq. 88 S. Europeantmdn’s ‘Common Communication on the Common Practice on the Acceptability of Classifica-tion Terms (v1.0)’, (see above fn. 72), page 7. 89 CJ Case C-418/02 Praktiker Bau- und Heimwerkerma ¨ rkte AG, available at: www.curia.eu Õ search Case law. 90 CJ Case C-418/02 Praktiker Bau- und Heimwerkerma ¨ rkte AG, mn. 34 and 39, available at: www. curia.eu Õ search Case law. 91 CJ Case C-418/02 Praktiker Bau- und Heimwerkerma ¨ rkte AG, mn. 49 et seq., available at: www. curia.eu Õ search Case law.

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Right of priority

Art. 29 CTMR

number of classes, for example “retail services in respect of goods falling in class 9” or “retail services in respect of goods in classes 7, 9, 12, and 16”’.92 The Office has further specified the criteria for an acceptable indication of the retail 72 and wholesale services in its handbook. If the nature of the place in which the goods are sold in is sufficiently specific to allow the recognition of the category of the goods, this will also be accepted (for example ‘retail services relating to clothes shops/garden centres/bakers’). However, if the place of the wholesale/retail service is not in itself specific enough to identify the goods that are being sold there, such indication is not acceptable (for example ‘retail services of a supermarket/of a department store’).93 If the mandatory specification of the service is made by defining the goods for sale, 73 the Office will generally accept broad product categories. However, following the new practice on non-acceptable Nice class headings, the Office will no longer accept wholesale/retail services for non-acceptable general indications of the class headings. For instance, ‘retail services for machines’ (without further specification of the type of machines) is no longer acceptable.94 Furthermore, there are other categories of goods that the Office considers too broad or vague to serve as a specification of the retail/ wholesale service. These include ‘merchandising articles’, ‘fair-trade goods’, ‘lifestyle accessories’, ‘gift articles’, ‘souvenirs’ and ‘collectors’ articles’.

SECTION 2 Priority Article 29 Right of priority 1. A person who has duly filed an application for a trade mark in or for any State party to the Paris Convention or to the Agreement establishing the World Trade Organization, or his successors in title, shall enjoy, for the purpose of filing a Community trade mark application for the same trade mark in respect of goods or services which are identical with or contained within those for which the application has been filed, a right of priority during a period of six months from the date of filing of the first application. 2. Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements shall be recognized as giving rise to a right of priority. 3. By a regular national filing is meant any filing that is sufficient to establish the date on which the application was filed, whatever may be the outcome of the application. 4. A subsequent application for a trade mark which was the subject of a previous first application in respect of the same goods or services, and which is filed in or in respect of the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing of the subsequent application, the previous application has been withdrawn, abandoned 92

Communication No 7/05 of the President of the Office of 31/10/2005, Para. 4. S. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Section 3, Annex 1, p. 33. 94 S. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Section 3, Annex 1, p. 34. 93

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or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority. 5. If the first filing has been made in a State which is not a party to the Paris Convention or to the Agreement establishing the World Trade Organization, paragraphs 1 to 4 shall apply only in so far as that State, according to published findings, grants, on the basis of a first filing made at the Office and subject to conditions equivalent to those laid down in this Regulation, a right of priority having equivalent effect. Bibliography: Gu¨nther Eisenfu¨hr/Detlef Schennen (ed.), Gemeinschaftsmarkenverordnung, 4th edition, Cologne, 2014; Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design Law, Alphen aan den Rijn, London, 2011; Gordian N. Hasselblatt (ed.), Mu¨nchener Anwaltshandbuch Gewerblicher Rechtsschutz, 4th edition, Munich, 2012; Alexander v. Mu¨hlendahl/Dietrich C. Ohlgart/ Verena v. Bomhard, Die Gemeinschaftsmarke, Munich, 1998.

Content A. General remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Prerequisites for claiming priority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Person who can invoke priority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Specifics of trade mark application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Filing giving rise to a right of priority. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) First filing in state which is member to PC or WTO. . . . . . . . . . . . b) Sufficient to establish a date of filing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Application for identical trade mark. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Invoking several rights of priority. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Six-month time limit. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Right of priority for filings outside PC or WTO . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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A. General remarks The right of priority establishes a major principle in Intellectual Property Law that equally applies to all registered rights, e. g. patents, utility models, designs and trade marks. It can be dated back to 1883 when the contracting states of the Paris Convention for the protection of Industrial Property agreed in Art. 4 that ‘Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trade mark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority’. The right of priority ensures equality as regards the assessment of registered rights. In accordance with the ‘first come, first serve’ principle it is the trade mark application which has been filed and/or registered first, that will prevail. According to Art. 29 the date of priority shall count as the date of filing of the Community trade mark application for the purpose of establishing which rights take precedence.1 2 A registrant who has properly filed a trade mark application in a state member to the Paris Convention or WTO2 may secure for a period of six months from the date of filing3, the priority gained for a subsequent Community trade mark application. In any 1

1

S. OHIM Dec. of 26.6.2013 – Opposition No. B 2144791 – TAROTTV.COM v MIX TAROTTV, p. 2. For states outside PC or WTO s. below C, mn. 26–28. 3 This period cannot be extended and also applies if the request for granting priority is filed via a national trade mark office, s. OHIM Dec. of 13.8.2010 – R 619/2010-2 mn 14. 2

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Right of priority

Art. 29 CTMR

case, the time rank determines priority.4 The date of filing determines the date of priority for the subsequent Community trade mark application5, while, without invoking the right of priority, the day when the application was filed determines its time rank according to Art. 27. Non-registered trade marks, however, cannot form the basis of an applicant’s right of priority.6 The right of priority stated in Art. 29 and especially the six-months-period for 3 subsequent filings derive from the principle of Union Priority stipulated in Art. 4 PC. Since the European Union is not a member of the Paris Convention, Art. 4 PC does not automatically apply to trade mark applications within the EU. It has to be noted that the EU, formerly the EC is, however, a member of the TRIPS Agreement and is bound by Art. 2 (1) TRIPS and, thus, Art. 1 to 19 PC which have been incorporated. Thus, any application filed in a PC member state or a member of the WTO enjoys the right of priority laid down in Art. 29. Exceptions to the right of priority may apply according to the applicable national law. 4 Trade marks can be subject to forfeiture, deletion because of non-use or because of absolute grounds for refusal. Further exceptions to the right of priority are determined as regards geographical 5 indications and designations of origin for agricultural products and foodstuff7; with regard to geographical indications and designations of origin for wine8, as well as with regard to geographical indications for spirits9 and registered names for agricultural products and food stuff as traditional specialties guaranteed10.

B. Prerequisites for claiming priority I. Person who can invoke priority Art. 29 (1) stipulates that the applicant, namely any person who has duly filed an 6 application for a trade mark in or for any State party to the Paris Convention or to the Agreement establishing the World Trade Organization or his successors in title shall enjoy a right of priority for a period of six months from the date of filing of the first application. The person that can be proprietor of a Community trade mark is laid down in Art. 5. This is generally any natural or legal person, including authorities established under public law.11 4 S. CJ Case C-245/02 Anheuser-Busch Inc v Bud jovicky ´ Budvar, na´rodnı´ podnik [2004] ECR I-11051, mn. 98. 5 S. Hasselblatt, in Hasselblatt (ed.), Mu ¨ nchener Anwaltshandbuch Gewerblicher Rechtsschutz, § 38, mn. 265. 6 S. OHIM Dec. of 27.3.2013 – Opposition No. B 2017203- PAULUSHOF v PAULUS, p. 7. 7 S. Council Regulation (EC) No. 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, OJ L 93, p. 12. 8 S. Council Regulation (EC) No. 1234/2007 of 22 October 2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation), OJ L 299, p. 1. 9 S. Regulation (EC) No. 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89, OJ L 39, p. 16. 10 S. Council Regulation (EC) No. 509/2006 of 20 March 2006 on agricultural products and foodstuffs as traditional specialities guaranteed, OJ L 93, p. 1. 11 S. Smielick above, Art. 5 mn.1 et seq.].

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CTMR Art. 29 7

Community Trade Mark Regulation

The person who is invoking priority does not necessarily have to be identical to the applicant of the first filing. Also, the legal successor may claim priority since he has received the right to the registration by transfer of the registration. One may also transfer the right of priority without transferring the right to the registration e. g. filing from the application.12

II. Specifics of trade mark application 1. Filing giving rise to a right of priority 8

The priority claim can be based on a filing for registering a national trade mark in a state member to the PC or WTO. Furthermore, such filing has to meet the respective national requirements for adjudicating a date of filing.

9

a) First filing in state which is member to PC or WTO. The person claiming priority can only invoke the priority right for a first filing which took place in a State party to the Paris Convention or the WTO, so-called ‘state of origin’. Although not explicitly mentioned, the right of priority can in general only be invoked for first filings because only these filings can be subject to a priority right. Therefore, subsequent applications for the identical trade mark for identical goods and services or previous applications cannot serve as a basis for invoking the right of priority. An exception may apply to subsequent filings that were subject of a first application if that previous application has been withdrawn, abandoned or refused in accordance with Art. 29 (4). Further, one of the preconditions of Art. 29 (4) is that the previous application was not open for public inspection.13

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b) Sufficient to establish a date of filing. The first filing has be sufficient to establish a date of filing according to the national law of the respective Member State. According to Art. 29 (3), the first filing has to satisfy the applicable regulations as regards the determination of the date of filing. It is therefore not of interest how this trade mark application has been handled by the national office after the filing.14 Thus, it may not be considered relevant whether or not the applicant has paid the application fees for the first filing to the national office since this does not affect the adjudication of a filing date. In Germany, for example, a filing date is adjudicated even though the applicant decides not to pay the respective application fee. The trade mark application will, in this case, be considered as withdrawn. This, however, is not considered by OHIM since the withdrawal of the national trade mark application solely concerns the outcome of the application.15

2. Application for identical trade mark 11

Priority can only be invoked if the filing of a Community trade mark application is taking place for the same trade mark in respect of goods or services which are identical to or contained within those for which the application has been filed. With regard to the goods and services, the subsequent Community trade mark application could comprise 12 S. v. Mu ¨ hlendahl/Ohlgart/v. Bomhard, Die Gemeinschaftsmarke, § 13, mn. 45; Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 29, mn. 15. 13 S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 29 CTMR, mn. 7. 14 S. OHIM Dec. of 8.6.2007 – R 846/2006-4 – 800 Flowers, mn. 31; OHIM Dec. of 16.3.2011 – Opposition No B 873010- TAURUS v TAURUS, p. 2. 15 S. OHIM Dec. of 13.6.2007 – R 788/2007-4 – CROSSRACER, mn. 18.

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Right of priority

Art. 29 CTMR

fewer or more goods and services than the first filing. It has to be noted that the right of priority, however, can only be invoked for the part of the application that corresponds with the first filing. Further, priority can also be claimed from two or more applications to the extent that the goods or services intersect.16 Priority can only apply to trade mark registrations which fulfil the triple identity 12 criterion, i. e. that a subsequent Community trade mark application and the priority documents contain the same trade mark, referred to the same applicant or its legal successor and have at least one good or service in common. The trade mark applied for must be identical17 to the first filing. Only a de minimis 13 or insignificant difference between the trade marks under comparison can retain the identical character thereof.18 Thus, minimal differences such as variations in font, capitalization or lower case letters of word marks which do not change the character of the trade mark are accepted.19 The Office also stated that using a word mark in a different typeface than registered, doesn’t affect the validity of the registration and also does not reduce the extent of protection of the mark, as far as the distinctiveness of the word mark is not influenced.20 In the decision ‘>en.’ the differences of the signs resulting from the use of different typefaces were classified by the Office as minimal and without influence on the priority claim.21 The addition or change of letters in a word mark or a word and device mark may, however, not suffice the criterion of identity. In the decision ‘TELEYE’, the claim for priority was not considered appropriate since the first trade mark application filed in the US for ‘TELEEYE’ could not be considered identical to the subsequent Community trade mark application ‘TELEYE’.22 The Board of Appeal stated that only obvious mistakes that do not substantially change the trade mark can be corrected.23 However, the GC decided that if the spelling of a mark in an application, in which a priority is claimed, is false, the correction of the spelling is permitted in accordance to Art. 43 (2), because of the fact that Art. 29 (1) requires the identity of the marks and because of the clear intention of the applicant to register the same mark and because of the nature of the error.24 The GC therefore negated a substantial change of the trade mark in the decision ‘TELEYE’.25 Priority cannot be invoked based on a first filing in black and white for a CTM 14 application consisting of the same word and device elements but with different colours.26 Amendments, according to Art. 43 (2), based on the argument that the priority claim contains an obvious mistake compared to the case ‘TELEYE’, are not 16 S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 29 CTMR, mn. 3. 17 Although Art. 29 (1) CTMR expressly states ‘[…] same trade mark […]’ this is meant to be understood in the sense that the signs have to be identical, s. CJ Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2833, mn. 50. 18 S. OHIM Dec. of 27.10.2011 – R 291/2011-2 – SOLAR FRONTIER, mn. 32. 19 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 29, mn. 4; OHIM Dec. of 12.3.2003 – R 432/2002-3 – AIRail, mn. 20–30. 20 S. OHIM Dec. of 23.5.2001 – R 288/2000-2 – >en, mn. 19; also s. Art. 5 C II PC. 21 S. OHIM Dec. of 23.5.2001 – R 288/2000-2 – >en, mn. 18. 22 S. OHIM Dec. of 24.3.1999 – R 219/1998-1 – TELEYE, mn. 13–15; different: GC Case T-128/99 Signal Communications Ltd v OHIM [2001] ECR II – 3289–3292, mn. 37–47, 50. 23 S. OHIM Dec. of 24.3.1999 – R 219/1998-1 – TELEYE, mn. 13–15. 24 S. GC Case T-128/99 Signal Communications Ltd. v OHIM [2001] ECR II-3292, mn. 50; similar: OHIM Dec. of 23.11.2005 – R 539/2005 – ALTERFIND, mn. 17. 25 S. GC Case T-128/99 Signal Communications Ltd. v OHIM [2001] ECR II-3292, mn. 50; different because of linguistic reasons: OHIM Dec. of 12.12.2005 – R 484/2005 – IMVAMUN/IMVAMUNE, mn. 17–22. 26 S. OHIM Dec. of 16.10.2008 – R 61/2008-1- BIMBO, mn. 17; OHIM Dec. of 31.8.2009 – R 1607/ 2007-4 – Cheapflights, mn. 12–14; appealed: GC Case T-461/09 Cheap Flights International Ltd. v OHIM [2011] ECR II-00123; OHIM Dec. of 2.12.2009 – Case R 914/2009-2 – MAKE UP FOR EVER, mn. 17;

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15

16

17

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Community Trade Mark Regulation

generally possible.27 When invoking priority, changing the type font e. g. use of italics or bold formation, is not an obstacle.28 In addition, it cannot be considered an obstacle for invoking priority if the subsequent application comprises any additions that can be considered insignificant such as symbols like ®, 2, .29 When considering coloured marks, the applicant has to ensure that the colours of the subsequent Community trade mark application are identical to the first filing.30 Furthermore, a priority claim is also possible on the basis of a series of trade marks in regard to the one reproduction which is identical to the Community trade mark application.31 As regards the identity of the goods and services, priority only exists for goods and services which are identical to or contained within the trade mark application which serves as basis for the priority claim.32 Thus, the applicant of the subsequent Community trade mark application needs to ensure that there is at least one corresponding good or service in the list of the subsequent application that can also be found in the first filing of that trade mark. Differences in the wording of the goods or services (e. g. different terminology) will not be an obstacle when considering priority if the content of both terms can be considered identical.33 When assessing the identity of the goods and services where different terminology has been used, the Office will generally take a practical and economical approach. However, it is advisable to make use of the official class headings of the Nice Classification in both the first filing and the subsequent Community trade mark application. A subsequent change of the list of goods and services of a Community trade mark application can also affect the priority right invoked for this application. In the decision ‘VORTEX’, the list of services of a Community trade mark was extended after filing the Community trade mark application by mistake.34 The GC stated that priority can only be claimed for the goods and services that are partially or wholly identical to the goods and services of its first application.35 Since the subsequent changes of the list of services of the Community trade mark application are not part of its first application, priority cannot be claimed for these services.36 If the Community trade mark application contains the same goods or services as the first filing but also other goods or services that are not included in the first filing, only a OHIM Dec. of 27.10.2011 – R 291/2011-2 – SOLAR FRONTIER, mn. 42; OHIM Dec. of 7.11.2011 – R 290/2011-2 – SHOWA SHELL, mn. 42. 27 S. OHIM Dec. of 27.10.2011 – R 291/2011-2 – SOLAR FRONTIER, mn. 45; OHIM Dec. of 7.11.2011R 290/2011-2 – SHOWA SHELL, mn. 45. 28 S. Part B, Section 2, 14.8.2 of the Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks (02/01/2014). 29 S. Hasselblatt, in Hasselblatt (ed.), Mu ¨ nchener Anwaltshandbuch Gewerblicher Rechtsschutz, § 38, mn. 269. 30 S. OHIM Dec. of 16.10.2008 – R 061/2008-1 – BIMBO, mn. 3, 16. 31 S. the examples of priority claims based on series marks in Part B, Section 2, 14.8.4 of the Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks (02/01/2014). 32 S. OHIM Dec. of 20.1.2011 – R 407/2010-1 – CHRYSTAL ROCK, mn. 20; OHIM Dec. of 24.9.2012 – R 2379/2011-5 – CRYSTAL ROCK, mn. 15. 33 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 29, mn. 7; OHIM Dec. of 7.5.2002 – R 517/2001 – SOUNDEQUITY, mn. 9–16. 34 S. GC Case T-104/12 Verus Eood v OHIM not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 1–17. 35 S. GC Case T-104/12 Verus Eood v OHIM not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 15. 36 S. GC Case T-104/12 Verus Eood v OHIM not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 15, 36–47.

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Right of priority

Art. 29 CTMR

partial priority can be claimed.37 It has to be noted that there is no distinction in the trade mark register or in the registration certificate between partial or full priority. The extent of a priority claim does not become apparent from the register or register certificates.38 The scope of the priority claim can be, however, identified by assessing the first filing or by reviewing the priority documents after the Community trade mark was published.39 Finally, the identity of the owner has to be ensured. Priority can only be claimed by 19 either the applicant who has also filed the first application for which priority is claimed or by its successor in title. However, in the latter case, such transfer must have taken place before filing the subsequent Community trade mark application.40 ‘Identity of the owner’ is fulfilled if the applicant is considered to be the identical natural or legal person who initiated the first filing. Affiliation to a parent company does not suffice.41 However, a mere change in the applicant’s name, e. g. the applicant filing the subsequent Community trade mark application under his new name, is considered to be identical.

3. Invoking several rights of priority Generally, several priority rights can be invoked for the filing of the Community 20 trade mark application. This is of relevance in member states in which only single class applications are possible. In case there are several applications for one trade mark regarding each class of goods or services, all priorities regarding these applications can be invoked for the subsequent Community trade mark application. Invoking, however, priority rights for a combined word-/device mark in such a way 21 that the right of priority is claimed for the filing of the word element and the filing of the device element separately, is not possible. The combination of a national word mark and a national device mark combined in a word-/device mark has to be considered an independent trade mark.

III. Six-month time limit According to Art. 29 (1) and in accordance with Art. 4 c (1) PC, the time limit for 22 claiming priority is six months from the date of the first filing. Thus, any subsequent Community trade mark application claiming priority from a first filing has to be filed within this time limit. Priority can only be invoked from the first filing if, according to the applicable national legislation, a date of filing can be allocated to this application.42 When calculating the time limit for filing the subsequent Community trade mark 23 application, one has to refer to Commission Regulation (EC) No 2868/95 (CTMIR). According to Rule 70 (4) CTMIR, the six-month time limit expires, since it is a period 37 S. OHIM Dec. of 27.5.1999 – R 220/1998-2 – BELSANTE, mn. 8; OHIM Dec. of 5.10.2004 – R 523/ 2003-1 – NOUVO/NOUVEAU, mn. 1. 38 S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 29 CTMR, mn. 3. 39 S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 29 CTMR, mn. 3. 40 S. Part B, Section 2, 14.2.3 of the Guidelines for Harmonization in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks (02/01/2014). 41 S. Hasselblatt, in Hasselblatt(ed.), Mu ¨ nchener Anwaltshandbuch Gewerblicher Rechtsschutz, § 38, mn. 271; Part B, Section 2, 14.2.3 of the Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks (02/01/2014). 42 S. OHIM Dec. of 20.2.2011 – R 217/2000-3 – MICROJACK, mn. 18–21.

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Community Trade Mark Regulation

expressed as a certain number of months, in the relevant subsequent month on the day which has the same number as the day on which the said event occurred. Where the day on which the said event occurred was the last day of a month or if a relevant subsequent month has no day with the same number, the period shall expire on the last day of that month. Therefore, the six months time limit can, in fact, be shorter.43 24 If unable to comply with this six-month time limit vis-a`-vis the Office, the applicant has the opportunity for the reinstatement of the priority claim according to Art. 81 (restitutio in integrum)44. It has to be noted that, according to the official communication of OHIM, restitution in integrum does not apply to the six-month time limit for filing an application for claiming priority but to the time limit of three months for indicating file number and filing a copy of the respective national application.45 25 When claiming reinstatement, the application is required to file in writing the application for restitution in integrum within two months from the removal of the obstacle to compliance and to complete the omitted act within the two months period, Art. 81 (2). Restitutio in integrum can only be requested within the year that immediately follows the expiry of the unobserved time limit according to Art. 81 (2). According to Art. 82 (2) a continuation of the proceedings in terms of Art. 82 (1) is not possible in case of Artt. 29 (1), 30.

C. Right of priority for filings outside PC or WTO The right of priority stipulated in Art. 29 and Art. 4 PC can generally only be invoked for first filings in a state member to the PC or the WTO. However, in accordance with Art. 29 (5), first filings made in a member state that is neither party to the PC nor to the WTO can be taken into consideration if priority is invoked from these filings. 27 By way of reciprocity, the Office assesses whether the state in question provides a right of priority for the applicant of a trade mark equal to that right granted to a Community trade mark. In accordance with Rule 101 CTMIR, the President of the Office shall request the Commission to assess whether the reciprocity which is mentioned in Art. 29 (5) applies with regard to a specific state. Should the Commission agree that the specific state has an equivalent right of priority, this is published in the Official Journal of the European Union. Up to now the Commission has declared that Taiwan46 and Andorra47 grant such reciprocity. For the Cayman Islands reciprocity was declined.48 28 According to the Guidelines of OHIM, a priority claim based on filings in one of the following states or entities not member to PC, WTO or a reciprocity agreement, have to be rejected: Afghanistan, Aruba, Cape Verde Islands, Cook Islands, Eritrea, Ethiopia, Kiribati, Marshall Islands, Micronesia, Nauru, Palau, Somalia, Tuvalu, Western Samoa, Abkhazia, American Samoa, Anguilla, Bermuda, Falkland Islands, Guernsey, Isle of 26

43

Regarding time limits s. Rules 70, 72 CTMIR. S. OHIM Dec. of 7.6.2011 – R 2175/2010/2 – CONNECTED CAR, mn. 20–24; OHIM Dec. of 7.6.2011 – R-2234/2010-2 – CONNECTED CAR, mn. 24; according to Art. 81 (5) only time limits set out in Art. 41 (1), (3) and 82 are exempted. However, according to Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 29 CTMR, mn. 2 restitutio in integrum does not apply to Art. 29. 45 S. OHIM Manual Concerning Proceedings Part A, General Rules, Section 8, Restitutio in integrum mn. 2.3. 46 S. OJ C 351, 18.11.1998, p. 3. 47 S. OJ C 359, 11.12.1999, p. 31–32. 48 S. OJ C 149, 19.5.2001, p. 21–22. 44

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Claiming priority

Art. 30 CTMR

Man, Jersey, Montserrat, Pitcairn Island, Saint Helena, Somalia, Turks and Caicos Islands and (British) Virgin Islands.49

Article 30 Claiming priority An applicant desiring to take advantage of the priority of a previous application shall file a declaration of priority and a copy of the previous application. If the language of the latter is not one of the languages of the Office, the applicant shall file a translation of the previous application in one of those languages. Content I. Priority declaration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Copy of previous application. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Translations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 4 8

I. Priority declaration Substantial part of a Community trade mark application is the priority claim.1 1 Whether or not the applicant invokes priority, determines one of the most crucial properties of the Community trade mark application as registered right, namely which registered trade mark will prevail. According to Rule 1 CTMIR, the priority declaration should be included in the Community trade mark application and, thus, should generally be filed with the subsequent Community trade mark application for the trade mark for which priority is claimed.2 In case the priority declaration is not submitted with the subsequent Community trade mark application, the applicant may file the priority declaration later but not later than two months after the filing date of the Community trade mark application according to Rule 6 CTMIR. When claiming priority, the applicant shall indicate the date on which and the country 2 in or for which the previous trade mark application was made as well as the file number and the filing date. The priority declaration is part of the official OHIM form which can be downloaded from the OHIM website under the following link: https://oami.europa.eu/ tunnel-web/secure/webdav/guest/document_library/contentPdfs/trade_marks/fees_and_payment/application_ctm_en.pdf (last visited 13 June 2014). Furthermore, the applicant has to ensure that payment of the application fee for the 3 Community trade mark application is received by OHIM within one month from the date of filing of the application in order to secure the filing date which, in this case, is the priority date. Otherwise the priority claim will be rejected.3

49 S. Part B Section 2 of the Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks (02/01/2014): https://oami.europa.eu/ tunnel-web/secure/webdav/guest/document_library/contentPdfs/trade_marks/Guidelines/04_part_b_examination_section_2_formalities_en.pdf (last visited 13 June 2014). 1 S. GC Case T-104/12 VerusEoos v OHIM [2013], mn. 8. 2 S. also OHIM Dec. of 16.10.2013 – Opposition No. B 2082983 – XYLA v XYLA, p. 2. 3 S. OHIM Dec. of 22.3.2013 – R 1876/2012-5 – GRAZIA, mn. 18. Art. 81 (Restitutio in integrum) did not apply.

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CTMR Art. 30

Community Trade Mark Regulation

II. Copy of previous application An applicant desiring to take advantage of the priority of a previous application shall file a copy of that application within three months from the filing date of the subsequent Community trade mark application. If the applicant claims priority subsequent to the filing of the application, he needs to state the date of the previous application and the country in which the application took place within two months according to Rule 6 (2) CTMIR. The copy of the application shall then be submitted to OHIM within three months from receipt of the declaration of priority. 5 Contrary to the requirements laid down in Rule 6 (1) CTMIR, the copy of the previous application does not have to be certified and it is not requested to provide to OHIM a certificate issued by the national authority and stating the date of filing of the previous application.4 The documents for claiming priority can be filed in original or in the form of an accurate photocopy.5 OHIM can choose not to request the file number, the filing date, the name of the applicant or proprietor, the representation of the mark and the list of goods and services, as long as this information is available on the Internet Website of some of the central industrial property offices of States of the PC or the WTO.6 6 If the priority claim does not satisfy the requirements, the applicant will be asked to remedy the deficiency or to make observations within two months in accordance with Rule 9 (3)(c); otherwise the priority claim is lost.7 OHIM will inform the applicant about the loss of right according to Rule 54 (19) and will set to the applicant a two month-time limit for requesting a formal, appealable decision on the loss of the right. 7 If any priority documents are missing, OHIM will search on the website of the respective National Office for the relevant information first. If the information cannot be found, OHIM will request the documents within two months. There is no possibility of extending this time limit. 4

III. Translations 8

A translation of the documents is only necessary if the previous application is not written in one of the languages of OHIM (Spanish, German, English, French, or Italian). In this case, the translation needs to be filed within three months. An extension of the time limit is possible for up to two months.

4

S. Decision No. EX-03-5 of the President of the Office of 20 January 2003, OJ OHIM 2003, p. 869. S. Decisions No. EX-96-3 of the President of the Office of5 March 1996, OJ OHIM 1996, p. 394 and Decision No. EX-03-5 of the President of the Office of 20 January 2003, OJ OHIM 2003, p. 869. 6 As stated by the Decision No. EX-05-5 of the President of the Office of 1 June 2005, OJ OHIM 2005, p. 1083. 7 And, thus, not be considered to have been applied for, s. OHIM Dec. of 13.2.2012 – R 67/2011-4 – LUCEA LED/LUCEO, mn. 14 (current Appeal: GC T-186/12 Copernicus-Trademarks v OHMI). 5

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Equivalence of Community filing with national filing

Art. 32 CTMR

Article 31 Effect of priority right The right of priority shall have the effect that the date of priority shall count as the date of filing of the Community trade mark application for the purposes of establishing which rights take precedence. Art. 31 stipulates the effect of the priority right. The filing date of the subsequent 1 Community trade mark application will, in case priority is claimed, be dated back to the filing date of the previous national application. This has consequences as regards the time rank for Community trade mark applications which have been filed before the subsequent Community trade mark application but after the identical national application from which priority is claimed. Protection for such Community trade mark applications will be refused due to the colliding earlier right. The applicant, thus, needs to consider that the time rank for Community trade mark applications based on the filing date is relative. In addition, it has to be noted that the claimed priority is only relevant with regard to 2 the time rank as regards the filing date of colliding identical or similar trade marks. As regards deadlines and other administrative or material regulations, however, only the actual filing date of the subsequent Community trade mark application is relevant.

Article 32 Equivalence of Community filing with national filing A Community trade mark application which has been accorded a date of filing shall, in the Member States, be equivalent to a regular national filing, where appropriate with the priority claimed for the Community trade mark application. Rc. 3, 17 Bibliography: Gu¨nther Eisenfu¨hr/Detlef Schennen (ed.), Gemeinschaftsmarkenverordnung, 4th edition, Cologne, 2014; Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design Law, Alphen aan den Rijn, London, 2011.

Content I. Introductory remarks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Particulars of acknowledgement of Community trade mark application by national trade mark offices . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2

I. Introductory remarks Art. 32 has to be considered if the owner of a Community trade mark requests the 1 conversion of this Community trade mark or the application thereof into a national trade mark or an application thereof, in accordance with Art. 112.1 In this case, Art. 32 sets out the general principle of the unitary character of a Community trade mark. In 1

S. Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 32, mn. 1.

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CTMR Art. 32

Community Trade Mark Regulation

fact, in addition to Art. 1 (2)2 which states that a Community Trade marks shall have equal effect throughout the Community, Art. 32 clarifies that a Community trade mark shall be acknowledged with regard to its date of filing, respectively with regard to the priority claimed, in each Member State.3

II. Particulars of acknowledgement of Community trade mark application by national trade mark offices According to Art. 32, the national trade mark offices of the Member States are bound to uniformly acknowledge the priority date for the Community trade mark application as if the respective trade mark has been filed in that Member State. Furthermore, the national trade mark office has to observe Community regulations as regards the determination of the date of filing. According to the Court of Justice, the date of filing shall only be determined by the date of the filing day, whereas hour and minute of the filing of the application must not be taken into account.4 Member States that usually determine the date of filing by hour and minute may not do so as regards Community trade mark applications since the Regulation on the Community trade mark is an autonomous text and national trade mark offices are bound by its interpretation through Community authorities.5 This, undoubtedly, can lead to a different or even contradicting handling of Community trade mark applications and national trade mark applications. In order to ensure unitarity, national trade mark offices may have to adopt the Community rule into their national trade mark system. This conclusion may also be based on recital 17 according to which contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought on the basis of a Community trade mark and parallel national trade marks. 3 Art. 32 further clarifies that priority can also be claimed for subsequent (national) filings of a trade mark which has been first filed as a Community trade mark. In this case, the general requirements for claiming priority apply: Within a period of six months from the date of filing of the Community trade mark application, priority of this application can be claimed for national trade mark registrations of the same trade mark within the EU or a Member State of the Paris Convention. Further subsequent priority rights can, however, not be claimed since the priority is only acknowledged for the first filing of the respective trade mark.6 2

2

S. Hasselblatt above, Art. 1, mn. 99–107. S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 32 CTMR, mn. 1. 4 S. CJ Case C-190/10 Ge ´nesis v Toy Boys SA available at www.curia.eu Õ search Case law, mn. 48; s. Kipping above, Art. 27, mn. 5. 5 S. CJ Case C-190/10 Ge ´nesis v Toy Boys SA available at www.curia.eu Õ search Case law, mn. 62. 6 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 32, mn. 2. 3

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Exhibition priority

Art. 33 CTMR

SECTION 3 Exhibition priority Article 33 Exhibition priority 1. If an applicant for a Community trade mark has displayed goods or services under the mark applied for, at an official or officially recognized international exhibition falling within the terms of the Convention on International Exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972, he may, if he files the application within a period of six months from the date of the first display of the goods or services under the mark applied for, claim a right of priority from that date within the meaning of Article 31. 2. An applicant who wishes to claim priority pursuant to paragraph 1 must file evidence of the display of goods or services under the mark applied for under the conditions laid down in the Implementing Regulation. 3. An exhibition priority granted in a Member State or in a third country does not extend the period of priority laid down in Article 29. Bibliography: Gu¨nther Eisenfu¨hr/Detlef Schennen (ed.), Gemeinschaftsmarkenverordnung, 4th edition, Cologne, 2014; Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design Law, Alphen aan den Rijn, London, 2011; Gordian N.Hasselblatt (ed.), Mu¨nchener Anwaltshandbuch Gewerblicher Rechtsschutz, 4th edition, Munich, 2012; Alexander v. Mu¨hlendahl/Dietrich C. Ohlgart/Verena v. Bomhard, Die Gemeinschaftsmarke, Munich, 1998.

Content A. General remarks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 B. Officially recognized exhibition. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 I. Definition. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 II. Practical remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 C. Claiming exhibition priority. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7 I. Particulars of the priority claim. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8 II. Determining the priority date . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 III. Priority declaration and OHIM practice. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

A. General remarks Art. 33 stipulates, in addition to Art. 29, the prerequisites regarding the priority 1 claim. The applicant cannot only claim ‘convention priority’ for an earlier trade mark application but also for a Community trade mark which has been displayed at an officially recognized international exhibition. Art. 33, thus, implements Art. 11 PC, whereby the Community has to provide a priority right for a trade mark displayed at international exhibitions.1 The relevance of this provision is, however, rather low and has no significant economic importance.2 1

S. v. Mu¨hlendahl/Ohlgart/Bomhard, Die Gemeinschaftsmarke, § 13, mn 65. S. v. Mu¨hlendahl/Ohlgart/Bomhard, Die Gemeinschaftsmarke, § 13, mn. 65; Hasselblatt, in Hasselblatt (ed.), Mu¨nchener Anwaltshandbuch Gewerblicher Rechtsschutz, § 38, mn. 267; this may also be a reason why OHIM does currently not recognise international exhibitions to fall whithin the Convention on 2

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CTMR Art. 33 2

Community Trade Mark Regulation

The requirements for claiming ‘exhibition priority’ are identical to those set out in Art. 29. The triple identity criterion of mark, applicant and lists of goods and services have to be fulfilled. Exhibition priority can be claimed for the displayed Community trade mark within six months from the first display.

B. Officially recognized exhibition 3

Officially recognized exhibitions are only those which are recognized to be international exhibitions according to the Convention signed in Paris on 2 November 1928 and supplemented by the Protocols of 10 May 10 1948, 16 November 1966, 30 November 1972 and the Amendment of 24 June 241982 and the Amendment of 3 May 1988 (Convention on International Exhibitions).

I. Definition Exhibition priority can be claimed for international exhibitions which, regardless of their title, have as their principal purpose the education of the public, e. g. one may exhibit the means at man’s disposal for meeting the needs of civilization, or demonstrate the progress achieved in one or more branches of human endeavour, also prospects for the future. The exhibition is deemed international when more than one state take part in it. Due to this considerably very old definition, only a few exhibitions are actually meeting the requirement of Art. 1 of the Convention on International Exhibitions. 5 The body which regulates such exhibitions is the Bureau International des Expositions (BIE), website www.bie-paris.org. The incentive for an applicant to exhibit his trade mark and claim exhibition priority instead of claiming convention priority may be to avoid the costs of filing a priority application.3 However, since priority is usually claimed when applying for a Community trade mark, claiming priority generally does not incur further costs. 4

II. Practical remarks 6

The OHIM regularly notifies the public about international exhibitions that fall within the Convention on International Exhibitions. According to the latest communication No. 1/08 of the President of the Office of 24 January 2008, the International Exhibition ‘Water and Sustainable Development’ from 14 June to 14 September 2008 in Zaragoza (Spain) and the World Exposition ‘Better City – Better Life’ from 1 May to 31 October 2010 in Shanghai (China) fall within the terms of the Convention of International Exhibitions as defined above.

International Exhibitions with regard to Design Rights (s. Communication No. 1/03 of the President of the Office of 27 January 2003, OJ OHIM 2003, p. 881). 3 S. Hall in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 33 CTMR, mn. 1.

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Exhibition priority

Art. 33 CTMR

C. Claiming exhibition priority In accordance with Art. 29 on Convention priority, exhibition priority has to be 7 claimed within six months from the date of the first display of the goods or services under the mark applied for. In addition, the triple identity criterion as regards mark, applicant and goods/services has to be fulfilled.4

I. Particulars of the priority claim First, priority can only be claimed for an identical trade mark application for 8 identical goods and/or services. Thus, the trade mark as well as the goods and services displayed at the exhibition have to be identical to the trade mark and the goods and services for which priority shall be claimed.5 The person displaying the goods and services under the trade mark at the interna- 9 tional exhibition has to be identical to the applicant of the Community trade mark application.6 The display of the goods by an independent sales representative or commercial agent, therefore, cannot be attributed to the applicant. The display of the goods or services by sales agents on behalf of the applicant does not fulfil this criterion. Further, it has to be noted that there is no provision within the regulation that allows a successor in title to claim exhibition priority. Therefore, the person claiming exhibition priority has to be the person who first displayed the goods and services under the respective mark at an internationally recognized exhibition.7

II. Determining the priority date The date from which exhibition priority can be claimed is the date of the first display 10 of the goods or services under the mark for which the Community trade mark application has been filed.8 From that date onwards, the applicant can claim a right of priority within the meaning of Art. 31. To clarify, the rights to the registration can only be claimed from the date of filing.9 Convention priority under Art. 29 and exhibition priority under Art. 33 may be 11 determined for the same date if the first filing of a trade mark and the first display of a (similar or identical) trade mark fall on the same day. Thus, both priority claims may run in parallel. The date of first display of the goods and services under the respective mark does not 12 necessarily have to be the date of the beginning of the exhibition. Art. 33 only refers to the date of first display. Further, exhibition priority which may have been granted in a Member State or in a third country, does not extend the period of convention priority as 4

As to the criteria on triple identity s. Manderla/Gruneberg above, Art. 29, mn. 9 et seq. S. Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 33, mn. 3. 6 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 33, mn. 3. 7 S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 33 CTMR, mn. 2. 8 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 33, mn. 3. 9 S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 33 CTMR, mn. 2. 5

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CTMR Art. 34

Community Trade Mark Regulation

there is no cumulated priority period. Correspondingly, the OHIM will accept the exhibition priority determined by a national trade mark office and generally will presume that the findings determining the exhibition priority are valid.10

III. Priority declaration and OHIM practice Exhibition priority has to be claimed within six months after the first display of the goods or services under the respective trade mark. Where exhibition priority has been claimed in the application for a Community trade mark, evidence of the display must be filed within three months from the filing date. Generally, there is no particular form or format required for the declaration of exhibition priority. The applicant simply informs the OHIM that he wishes to claim exhibition priority by stating the name of the exhibition and the date of the first display of the goods and services according to Rule 1 (g) CTMIR. 14 Where the applicant wishes to claim an exhibition priority subsequent to the filing of the application, the declaration of priority indicating the name of the exhibition and the date of first display of the goods or services must be submitted within a time limit of two months from the filing date in accordance with Rule 7 (2) CTMIR. Claiming exhibition priority outside this time limit, e. g. during an opposition procedure, cannot be considered relevant.11 15 If exhibition priority is claimed in the Community trade mark application, the applicant shall, in accordance with Rule 7 (1) CTMIR, file a certificate issued at the exhibition by the authority responsible for the protection of industrial property at the exhibition. The certificate must state that a mark was in fact used for the goods or services, the opening date of the exhibition and where the first public use did not coincide with the opening date of the exhibition, the date of the first public use. In addition, the certificate must be completed by an identification of the actual use of the mark, duly certified by the authority. Claiming exhibition priority can be implicit12, submitting the exhibition priority documents within the time limit of two months will automatically be construed as a declaration of priority. 16 As regards the language, there are no specifications as to the language in which the priority documents have to be submitted to OHIM. In case the certificate is composed in a language which is not an official procedural language of OHIM, the applicant shall supply a translation into the language of the proceedings. 13

SECTION 4 Claiming the seniority of a national trade mark Article 34 Claiming the seniority of a national trade mark 1. The proprietor of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, who applies for an identical trade 10 S. OHIM Dec. of 28.2.2006 – Opposition No. 743817 – WITH v WITH, p. 3; upheld by the First Board of Appeal: OHIM Dec. of 25.8.2006 – R 0596/2006-1 – WITH, mn. 12–14. 11 S. OHIM Dec. of 9.10.2007 – Opposition No. B 883910- novapet v NOVOPET, p. 6. 12 S. OHIM Guidelines for Examination in the Office, Part B, Examination No. 15.

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Claiming the seniority of a national trade mark

Art. 34 CTMR

mark for registration as a Community trade mark for goods or services which are identical with or contained within those for which the earlier trade mark has been registered, may claim for the Community trade mark the seniority of the earlier trade mark in respect of the Member State in or for which it is registered. 2. Seniority shall have the sole effect under this Regulation that, where the proprietor of the Community trade mark surrenders the earlier trade mark or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered. 3. The seniority claimed for the Community trade mark shall lapse if the earlier trade mark the seniority of which is claimed is declared to have been revoked or to be invalid or if it is surrendered prior to the registration of the Community trade mark. Rc. 2, 3, 6, 17 Bibliography: Gu¨nther Eisenfu¨hr/Detlef Schennen (ed.), Gemeinschaftsmarkenverordnung, 4th edition, Cologne, 2014; Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design Law, Alphen aan den Rijn, London, 2011; Herbert E. Meister, ‘Seniorita¨t oder die sogenannte Beanspruchung des Zeitranges einer identischen nationalen Marke’, WRP 1997, p. 1022–1041; Miriam U. Reinartz, ‘Die Seniorita¨t im Gemeinschaftsmarkenrecht, ihre Folgen und ihre Entwicklung’, GRURInt 2012, p. 493–503; Detmar Scha¨fer, ‘EG-Richtlinienvorschlag – Ausgesuchte Probleme der Auswirkungen im deutschen Markenrecht und im Gemeinschaftsmarkenrecht’, GRUR 1998, p. 350–354.

Content A. Introductory remarks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Definition of seniority. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Prerequisites for claiming seniority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Triple identity criterion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Person who can invoke seniority. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Identity of the signs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Identity of the goods and/or services. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. At the time of the Community trade mark application . . . . . . . . . . . . . . . . III. Procedural aspects of seniority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Opposition proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Invalidity or revocation of the Community trade mark for which seniority is claimed. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Additional remarks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Lapse of claimed seniority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D. Seniority examination by OHIM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Content of seniority claim before OHIM. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Supporting evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Seniority examination deficiencies. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 4 7 11 12 14 16 18 19 19 22 25 26 27 28 30 32

A. Introductory remarks By claiming seniority of an earlier national or Benelux trade mark, the trade mark 1 proprietor decides for the integration of his national trade mark rights into the Community trade mark system. Art. 34 serves to strengthen this Community trade mark system – one may argue – at the cost of the trade mark systems of the Member States. In fact, the main obstacle for such a seniority claim is the creation of a Common Market since the EU would allow, without any material examination, for national rights to be incorporated in this autonomous system.1 The Community trade mark allows to 1 The creation of a single market is still not achieved entirely, s. Max Planck Institute for Intellectual Property and Competition Law Munich (MPI), Study on the Overall Functioning of the European Trade

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CTMR Art. 34

Community Trade Mark Regulation

‘replace’ prior national rights without neglecting their roots and time rank. This may be particularly attractive for the trade mark proprietor since costs and time for administering various national trade mark rights can be reduced significantly.2 2 The possibility to claim seniority for national trade mark rights remains without a previous model. There are no international rules that would stipulate the incorporation of such a rule into the Community trade mark system. This is a main distinction one has to make when considering seniority on the one hand and priority on the other. 3 In contrast to the right to priority, claiming seniority allows Community trade mark proprietors to bundle their prior national rights under the ‘roof’ of a Community trade mark without suffering any detriment that might follow the giving up of their earlier national registrations.3 In fact, the seniority claim only becomes effective once the trade mark proprietor surrenders the earlier trade mark rights or allows such rights to lapse, Art. 34 (2).4 Thus, the right to seniority might not be of particular relevance to trade mark proprietors that decide to secure trade mark rights nationally although there is the option to apply for trade mark protection Community-wide.5

B. Definition of seniority Seniority, according to Artt. 34 and 35, can only be defined with regard to the respective national right upon which the trade mark proprietor wishes to base the seniority claim. Seniority of a trade mark is merely connected to its time rank compared to the respective identical Community trade mark – the national trade mark right is ‘senior’ or ‘older’ than the time rank of the Community trade mark. 5 Seniority may appear to be similar to the right to priority.6 This can be considered true at first glance, in the latter case, the trade mark proprietor also claims an earlier time rank for identical (national or international) trade marks. A priority claim, however, affects the time rank of a Community trade mark in its entirety. The earlier filing date of the national trade mark will be adopted for the respective Community trade mark. In contrast, claiming seniority only affects the time rank of the Community trade mark in respect of the particular Member State in which the earlier trade mark enjoys protection. The seniority claim, thus, is territorially restricted.7 6 The seniority claim is not restricted by a time limit.8 In fact, the time rank that can be claimed based on seniority can be dated back to a period of more than six months 4

Mark System, 15.2.2011, GRURInt 2012, p. 197, available: 2012 Seite http://ec.europa.eu/internal_market/ indprop/docs/tm/20110308_ allensbach-study_en.pdf (last visited 13 June 2014). 2 S. Reinartz, GRURInt 2012, p. 493; OHIM also points out that it is a major advantage of the Community trade mark to be more attractive for trade mark proprietors, s. OHIM Dec. of 17.10.2001 – R 1219/2000-3 – MANEX, mn. 17; OHIM Dec. of 15.5.1998 – R 5/97-1 – VICEROY, mn. 29. 3 S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 34 CTMR, mn. 1; s. also Reinartz, GRURInt 2012, p. 493. 4 S. OHIM Dec. of 28.11.2008 – R 45/2008-2 – BECO/BBEKOX, mn. 37; OHIM Dec. of 15.3.2004 – R 671/2001-4 – Exakta – mn. 19; OHIM Dec. of 17.10.2001 – R 1219/2000-3 – MANEX, mn. 20. 5 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 4. 6 This seems to be confusing for some trade mark owners, s. OHIM Dec. of 8.6.2012 – R 2377/2010-4 – ˜ A ALBERDI/VILLA ALBERT, ALVA/ELVEA, mn. 9; OHIM Dec. of 9.7.2013 – R 1190/2011-4 – VIN mn. 42. 7 S. OHIM Dec. of 11.5.2001 – C 000013185/1, LSK 2002, 090083; OHIM Dec. of. 20.3.2009 – R 239/ 2007-4 – House Doctor, mn. 31. 8 Seniority can, of course, only be claimed as long as the respective national right is valid, see OHIM, Dec. of 4.12.2012 – R 2603/2011-2 mn. 27 – BARISTA.

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Art. 34 CTMR

which is the time limit for a priority claim counted from the filing date of the Community trade mark application.9 In addition, by claiming seniority, the respective national right is incorporated into the Community trade mark and, thus, will no longer be an independent national right. The national trade mark, thus, shares the legal destiny of the Community trade mark, i. e. in case the Community trade mark becomes or is declared invalid, the national trade mark for which seniority was claimed, will also perish unless the trade mark proprietor asks for conversion of the Community trade mark into national trade marks.10

C. Prerequisites for claiming seniority Seniority can be claimed based on an earlier national trade mark, an earlier trade mark registered in the Benelux countries as well as an earlier trade mark which is internationally registered. In any case, the triple identity criterion has to be fulfilled, i. e. same mark, same owner and same goods or services. Seniority can either be claimed according to Art. 34 when applying for a Community trade mark or, according to Art. 35, at any time after the Community trade mark application has been filed or the Community trade mark has been registered. Claiming seniority when applying for a Community trade mark may have the positive effect that trade mark owners of colliding national trade mark rights may not consider to file an opposition since the seniority will be published in the Community trade mark registration.11 One has to consider, however, that the seniority claim only becomes effective if the earlier trade mark on which seniority is based, has to be allowed to lapse or to surrender. Since it is not clear at such an early stage if the Community trade mark will be registered, claiming seniority may be disadvantageous. Since the destiny of the Community trade mark is at the same time the destiny of the earlier trade mark, in such cases any revocation or invalidation of a Community trade mark also has an effect on the earlier national rights which have been incorporated in the trade mark based on seniority. The rights deriving from a national trade mark registration may be broader in some member states than those rights deriving from a Community trade mark registration. For example, in Ireland, U.K., Spain, Hungary and Greece, a national trade mark application provides a prima facie defence to an infringement action whereas this is not necessarily the case for the Community trade mark registration.12 It may also be the case that a national trade mark registration has an extraterritorial effect as for example in the United Kingdom. The trade mark proprietor of a trade mark in the U.K. may have advantages regarding the registration of that trade mark in countries outside the EU formerly ruled by the U.K.13 There are also different requirements for the genuine use of a trade mark in various Member States. According to Art. 34, seniority must be claimed in the Community trade mark application or within two months from the filing date of the Community trade mark application at the latest. Seniority can be claimed implicitly e. g. if the applicant submits documents 9

S. Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 3, 5. S. Meister, WRP 1997, p. 1022. 11 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen(ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 9, 28. 12 S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 34 CTMR, mn. 12. 13 S. http://ipo.gov.uk/pro-policy/policy-information/extendukip.html (last visited 13 June 2014). 10

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CTMR Art. 34

Community Trade Mark Regulation

concerning earlier registrations within two months from the filing date of the Community trade mark application, the OHIM will construe this as a seniority claim.14

I. Triple identity criterion 11

The applicant for a Community trade mark can only claim seniority if the triple identity criterion is fulfilled. Thus, the proprietor of the trade mark, the signs and the goods or services of the earlier national registration and the Community trade mark application have to be identical. Generally, the applicant has to make sure that these requirements are met by the date of filing the Community trade mark application.15

1. Person who can invoke seniority Both the proprietor of the earlier national trade mark registration and the applicant for the Community trade mark have to be identical. Full personal identity is necessary.16 By the date of filing17, proprietor and applicant have to be the same entity, claiming an affiliation only does not suffice.18 Formal changes in names before the date of filing are, however, not relevant if the proprietor of the earlier trade mark registration and the applicant of the Community trade mark registration are actually the same legal entity just bearing different names.19 Any changes to the applicant or the proprietor after the date of filing will be disregarded by OHIM.20 13 The identity of proprietor and applicant has to be considered, as a matter of fact, in the actual case. ‘Reality must prevail over appearance’21 and, thus, seniority can be claimed by the actual proprietor of both the earlier national trade mark right and the Community trade mark application. The claim for seniority is not limited to the registered proprietor since the recordal of the owner in the trade mark register only raises a presumption that this is the actual owner.22 12

2. Identity of the signs 14

The respective sign is identical to the earlier registered sign ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’23. Any deviation of a Community trade mark application from the prior national trade mark registration may, thus, jeopardize seniority. 14

S. OHIM, Guidelines for examination in the office, part B, No. 16. S. OHIM Guidelines for examination in the office, part B, No. 16.2; Eisenfu¨hr, inEisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 13. 16 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 17. 17 One has to note that the OHIM will consider the seniority claim as soon as the supporting documents have been filed. In fact, OHIM will accept the seniority claim based on the current status at the time of submitting the supporting documents. This is not necessarily the date of filing, s. OHIM, Dec. of 15.5.1998 – R 5/97-1 – VICEROY, mn 39. 18 S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 34 CTMR, mn. 7. 19 S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 34 CTMR, mn. 7. 20 S. OHIM Dec. of. 15.5.1998 – R 5/97-1 – VICEROY, mn. 13. 21 S. OHIM Dec. of. 15.5.1998 – R-5/97-1 – VICEROY, mn. 37. 22 S. OHIM Dec. of. 15.5.1998 – R-5/97-1 – VICEROY, mn 37. 23 S. CJ Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2833, mn. 54; GC Case T-103/11 Tiantian Shang v OHIM [2012], mn. 16. 15

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Art. 34 CTMR

OHIM, however, generally accepts seniority claimed for a word mark which has been 15 written in lower case based on a word mark containing the same wording but written in capitals.24 It is crucial that there is no doubt as regards which earlier national trade mark serves as the basis for a seniority claim.25 Adding descriptive elements such as ® or an indication of the company name is not significant.26 It is also considered identical, if identical words forming a compound, whether written as one word or separately.27 Adding or subtracting a single letter in a word mark, however, is sufficient for the marks not to be considered identical. As regards figurative marks, a difference in the appearance of the marks will also be a reason to object the seniority claim.28 Differences in colour and type face also preclude identity.29

3. Identity of the goods and/or services Seniority can only be claimed based on the earlier national registration for goods and/ 16 or services which are identical to those for which the Community trade mark is applied. The applicant may wish for the Community trade mark to claim seniority only partially for the goods and/or services of the respective earlier national trade mark. If the list of goods and services of the Community trade mark application is broader than the list for the national trade mark registration, seniority can be claimed for the entire earlier national registration.30 The earlier trade mark registration can, in this case, be allowed to lapse in order to trigger the effect of Art. 34 (2). If the earlier trade mark registration has not been put to genuine use for some of the 17 goods and services after the five-year grace period has passed and if the trade mark was declared to have been revoked in relation to these goods and services, the seniority claim does lapse to that extent (Art. 34 (3)).31 It is not necessary to specify the goods or services for which seniority is claimed. The applicant may state in general that seniority is claimed for all the goods which are found in the earlier mark to the extent that they are also found in the CTM application.32

II. At the time of the Community trade mark application The seniority claim can only be based on earlier trade mark registrations. Thus, by 18 the date of filing of the Community trade mark application, the earlier trade mark has to be registered.33 If this is not the case, seniority can be claimed according to Art. 35. 24

S. OHIM, Guidelines for examination in the Office, part B No. 16.3. S. Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 19. 26 S. OHIM Dec. of 2.4.2009 – R 813/2007-1 – STILOLINEA, mn. 12. 27 S. OHIM Dec. of 15.7.1998 – R 10/1998-2 – THINKPAD, mn. 14. 28 S. GC Case T-103/11 Tiantian Shang v OHIM available at www.curia.eu Õ search Case law, mn. 17; GC Case T-378/11 Franz Wilhelm Langguth Erben GmbH & Co. KG v OHIM not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 50–54; GC Case T-103/11 Tiantian Shang v OHIM [2012], mn. 19–23. 29 S. OHIM Dec. of 7.5.2010 – R 1157/2009-1 – HELLY HANSEN, mn. 16 et seq.; OHIM Dec. of 7.5.2010 – R 1158/2009-1 – HELLY HANSEN, mn. 16 et seq.; OHIM, Dec. of 7.5.2010 – R 1159/2009-1 – HELLY HANSEN, mn. 20; GC Case T-378/11 Franz Wilhelm Langguth Erben GmbH & Co. KG v OHIM [2013], mn. 21. 30 S. Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 34 CTMR, mn. 7. 31 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 22. 32 This is the so-called generic seniority claim, s. OHIM Guidelines for examination in the Office, Part B No. 16.4. 33 S. Communication No. 1/97 of the President of the Office of 17 June 1997, OJ OHIM 1997, p. 750. 25

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CTMR Art. 34

Community Trade Mark Regulation

III. Procedural aspects of seniority 1. Opposition proceedings The Community trade mark applicant may consider claiming a prevailing trade mark right by claiming seniority in opposition proceedings with regard to the Community trade mark application. In that regard, however, one has to bear in mind that (i) claiming seniority does not affect the filing date of the Community trade mark application for which seniority is claimed, (ii) the seniority claim is restricted to the territorial extent of protection of the earlier trade mark registration and (iii) the seniority claim only becomes effective if the national trade mark is allowed to lapse or has been surrendered, Art. 34 (2). Thus, the seniority claim will only be successful if the opponent based the opposition on national trade mark rights in a territory that is affected by the seniority claim. 20 The Community trade mark proprietor who may wish to base an opposition on seniority, should do so by claiming seniority of the Community trade mark registration.34 One may argue that opposition should be based on the respective national trade mark on which seniority is based since Art. 34 (2) seems to simulate the existence of such rights even after it has been surrendered. This, however, would allow the opponent to base opposition proceedings on no longer existing national trade mark rights. In fact, the national right is incorporated into the Community trade mark and, thus, does not in itself exist as a right. The national trade mark right is inseparably linked to the destiny of the Community trade mark and, therefore, cannot serve as a valid ground for opposition proceedings. The Community trade mark proprietor has to base the opposition in the Community trade mark.35 21 Due to the territorial limitation of the seniority claim, any opposition based on the Community trade mark enjoying seniority has to be filed before the respective national court(s).36 19

2. Invalidity or revocation of the Community trade mark for which seniority is claimed The declaration of invalidity or the revocation of a Community trade mark does affect the national trade mark rights on which seniority is based if these rights do no longer exist. The applicant for a Community trade mark should, therefore, thoroughly consider if and when seniority is claimed and if and when the earlier trade mark right should be allowed to lapse or should be surrendered. 23 In case the Community trade mark is declared invalid or is revoked, the proprietor may consider a conversion of the Community trade mark into national trade mark rights according to Art. 112 (3). Since the material existence of the earlier trade mark right does not change by incorporating that right into a Community trade mark, the time rank of the national trade mark right revives and enjoys the same protection as the Community trade mark in the respective national territory would enjoy. Even though 22

34

S. Reinartz, GRURInt 2012, 493, 499. S. Reinartz, GRURInt 2012, 493, 499. This also is the current legal position of the German courts, s. BPatG Dec. of 5.3.2013 Case 27 W (pat) 43/12, GRUR 2014, 302 – IPSUM; BPatG Dec. of. 20.9.2005 Case 27 W (pat) 106/04, GRUR 2006, 612 – Seniority. 36 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 25; Meister, WRP 1997, 1022, 1039; GC Case T-90/05 OMEGA SA v OHIM [2007], mn. 46. 35

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Art. 34 CTMR

the national trade mark has in the meantime stopped existing, by conversion of the Community trade mark the national trade mark right is revived.37 Furthermore, it needs to be noted that claiming seniority does not assure that the 24 Community trade mark will be registered or that the Community trade mark won’t be declared invalid. The fact that a trade mark was registered in a Member State is not binding for OHIM.38 OHIM can, therefore, reject a Community trade mark application based on absolute grounds for refusal, even though the same trade mark was registered in a Member State.39

3. Additional remarks The advantage of claiming seniority and incorporating national trade mark rights 25 into a unique Community trade mark can have the positive effect that the administration of the various trade mark rights can be handled simpler. The extension of protection of national rights can simply be done by extending the Community trade mark. In addition, claiming a seniority can also have a positive effect as to the five-year grace period for putting a trade mark to use. This period restarts at the time of the registration of the Community trade mark provided that the period has not expired at the time the seniority claim becomes effective.40

IV. Lapse of claimed seniority Seniority lapses according to Art. 34 (3) if the earlier trade mark on which seniority is 26 based is declared to have been revoked or to be invalid or if it is surrendered prior to the registration of the Community trade mark. In fact, if the trade mark proprietor does not renew the earlier trade mark, this is not considered to be a revocation or a declaration of invalidity according to Art. 51 and 53 nor is it a surrender according to Art. 50.41

D. Seniority examination by OHIM In order to take advantage of the seniority of an earlier national trade mark 27 registration, seniority should be claimed by filing a seniority declaration. According to Rule 1 (1)(h) CTMIR, seniority can be claimed for one or more earlier trade marks and shall be claimed at the time of application or, according to Rule 8 (2) CTMIR, within two months following the filing date. OHIM will, once seniority is claimed, only examine whether the marks on which seniority is based are the same.42 37

S. Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 31. S. GC Case 129/04 Develey Holding GmbH & Co. Beteiligungs KG v OHIM [2006] ECR II-826, mn. 31 ff., 36 ff.; CJ Case 238/06 Develey Holding GmbH & Co. Beteiligungs KG v OHIM [2007] ECR I9404, mn. 68 ff. 39 S. GC Case 129/04 Develey Holding GmbH & Co. Beteiligungs KG v OHIM [2006] ECR II 826, mn. 31 ff., 36 ff.; CJ Case 238/06 Develey Holding GmbH & Co. Beteiligungs KG v OHIM [2007] ECR I9404, mn. 68 ff. 40 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 28; The proof of use as regards the former national trade mark right does not, however, become obsolete, e. g. in opposition proceedings, see OHIM Dec. of 31.3.2011 – R 977/2010-1 – NATURAL VISCO/VLISCO mn. 26 41 S. OHIM Dec. of 22.2.2010 – R 881/2009-4 – CROMAFLEX, mn. 14. 42 S. OHIM, Guidelines for examination in the Office, Part B, No. 16.2. 38

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Community Trade Mark Regulation

1. Content of seniority claim before OHIM According to Rule 1 (1)(h) CTMIR, a valid claim for seniority should indicate the Member State(s) in which the earlier trade mark is registered as well as the filing date of the relevant registration(s), the number of the relevant registration(s) and the goods or services for which seniority is claimed. Further, OHIM will examine whether the earlier trade mark was registered at the time the Community trade mark application was filed and that the earlier registration had not lapsed. OHIM considers the earlier national trade mark to be non-existing if the earlier trade mark has not been renewed at the renewal date although the national trade mark law might allow a six months grace period for renewal.43 Until renewal is made, OHIM considers an expired trade mark as non-existing. 29 The seniority claim has to be filed in accordance with Rule 95 (a) CTMIR in the language used for the filing of the application for the Community trade mark or in the second language that the applicant indicated in his application. 28

2. Supporting evidence The claim for seniority must be supported by a copy of the relevant registration. It is advisable to ensure that the registration copy shows the filing dates, any priority dates as well as the registration dates. In addition, according to Rule 8 (1) CTMIR, the copy must be certified by a competent authority to be an extract of the relevant registration.44 In accordance with the decisions of the President of the Office also accurate photocopies or extracts and printouts from official publications or databases are admissible.45 If the supporting evidence is not sufficient, OHIM will investigate, if the relevant information is available online46 and if not, OHIM will issue a deficiency letter and notify the applicant to request evidence supporting the seniority claim. Such evidence must consist of a copy of the registration and/or renewal certificate or extract from the register or an extract from the relevant national gazette or an extract or printout from an official database.47 Extracts and printouts from private databases as for example DEMAS, Marquesa, Compuserve, Thomson, Olivia, Patlink or Kompumark, Saegis are not accepted.48 31 The supporting evidence can be sent to OHIM by telefax. OHIM can, however, request the original documents according to Rule 80 (2) CTMIR. If the earlier trade mark registration is registered in colours, the original document has to be provided.49 As regards the language of the supporting evidence, OHIM may request a translation in one of the procedural languages.50 30

43 S. OHIM, Guidelines for examination in the Office, Part B, No. 16.2.; Hall, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 34 CTMR, mn. 10. 44 OHIM states in the Guidelines for examination in the Office, Part B, No. 16.2 that OHIM will check the website of the national offices to determine if the relevant information can be found online and if the supporting evidence cannot be found will ensure a deficiency letter to the applicant. It may therefore not be necessary to provide a certified copy of the relevant registration; also s. Decision No. EX-05-5 of the President of the Office of 1 June 2005, OJ OHIM 2005, p. 1083. 45 S. the Decision No. EX-03-5 of the President of the Office of 20 January 2003, OJ OHIM 2003, p. 869 and the Decision No. EX-05-5 of the President of the Office of 1 June 2005, OJ OHIM 2005, p. 1083. 46 S. Part B, Section 2, 16.2. of the Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks (02/01/2014); s. Decision No. EX-05-5 of the President of the Office of 1 June 2005, OJ OHIM 2005, p. 1083. 47 S. the Decision No. EX-03-5 of the President of the Office of 20 January 2003, OJ OHIM 2003, p. 869. 48 S. OHIM, Guidelines for examination in the Office, Part B, No. 16.2. 49 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 42. 50 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 34, mn. 42.

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Claiming seniority after registration

Art. 35 CTMR

3. Seniority examination deficiencies In case of deficiencies of the seniority claim and the supporting evidence, OHIM will 32 investigate, if the relevant information is available online and if not, OHIM will inform the applicant accordingly and requests to remedy the deficiencies within a set time limit. In case the deficiencies are not remedied, OHIM informs the applicant that seniority with regard to that application shall be lost in accordance with Rule 9 (7) and 54 CTMIR. OHIM will then notify the applicant and the applicant may wish to apply for a decision on the matter by the office in accordance with Rule 54 (2) CTMIR.

Article 35 Claiming seniority after registration of the Community trade mark 1. The proprietor of a Community trade mark who is the proprietor of an earlier identical trade mark registered in a Member State, including a trade mark registered in the Benelux countries or of an earlier identical trade mark, with an international registration effective in a Member State, for goods or services which are identical to those for which the earlier trade mark has been registered, or contained within them, may claim the seniority of the earlier trade mark in respect of the Member State in or for which it was registered. 2. Article 34 (2) and (3) shall apply. Rc. 2, 3, 6, 17 Bibliography: Gu¨nther Eisenfu¨hr/Detlef Schennen (ed.), Gemeinschaftsmarkenverordnung, 4th edition, Cologne, 2014; Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design Law, Alphen aan den Rijn, London, 2011.

Content I. General remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Particulars of seniority claim . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 5

I. General remarks Seniority can be claimed at any time after registration of the Community trade mark. The substantive and formal requirements for claiming seniority under Art. 35 are identical to those laid down in Art. 34. In fact, the triple identity criterion (same mark, same proprietor, same goods/services) has to be fulfilled at the time the seniority claim is made before OHIM. The seniority claim can be based upon national trade mark registrations which have been registered after the respective Community trade mark application was filed. It has to be noted, however, that seniority can only be claimed for national trade marks that have been registered at the date of the seniority claim. Seniority claimed according to Art. 35 will lapse if the earlier trade mark has been revoked, surrendered or declared to be invalid. Art. 35 (2) refers insofar to Art. 34 (3). It also has to be noted that the mere intention of claiming seniority according to Art. 35 does not confer, by itself, any rights.1 To plead in an appeal relating to 1

S. OHIM Dec. of 8.1.2002 – R 360/2000-4 – NO LIMITS, mn. 8, 11, 15.

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Community Trade Mark Regulation

opposition proceedings that seniority will be claimed, if the Community trade mark application is allowed to proceed to registration, cannot be taken into consideration by the Appeal Board.2

II. Particulars of seniority claim As regards the particulars of the seniority claim, Rule 28 CTMIR has to be observed. The Community trade mark proprietor can claim seniority for more than one earlier trade mark. The seniority claim should contain – the registration number of the Community trade mark for which seniority is claimed, – the name and address of the proprietor of the Community trade mark, – the indication of the Member State(s) in which the earlier national trade mark(s) is/ are registered, – the number and the filing date of the respective registration(s), – the goods and/or services for which the earlier mark is registered, – an indication of the goods and services in respect of which seniority is claimed and – a copy of the relevant registration.3 6 The supporting evidence for the seniority claim has to be filed together with the seniority claim.4 There is no subsequent time limit for filing supporting evidence after the seniority claim is made.5 7 The examination of the seniority claim by OHIM only comprises the identity of the respective marks. In case of deficiencies in the seniority claim, OHIM will notify the applicant accordingly and request remedy of the deficiencies, Rule 28 (2) CTMIR. In case the deficiencies are not remedied, OHIM will reject the application. This, however, does not have any effect on the validity of the seniority claim which can be repeated at any time.6 8 Should the EU be enlarged seniority can be claimed as regards national trade mark registrations in that new Member State even though the Community trade mark registration which is already existing predates the respective national trade mark. This is due to the fact that a Community trade mark registration which is already existing becomes effective in the new Member State with the date of its accession. Therefore, national trade mark registration in that Member State are considered to be earlier than the Community trade mark registration which becomes effective at the accession date. 5

2

S. OHIM Dec. of 8.1.2002 – R 360/2000-4 – NO LIMITS, mn. 8, 11, 15. Rule 28 (1)(f) CTMIR states that such copy has to be certified as an exact copy of the relevant registration. This, however, is no longer necessary according to Art. 3 of the Decision No. EX-03-5 of the President of the Office of 20 January 2003, OJ OHIM 2003, p. 869. 4 As to the formal requirements of the evidence to be submitted to OHIM s. Manderla/Grunebergabove, Art. 34, mn. 28, 29. 5 S. Hall, in Gielen/v. Bomhard (ed.), Concise EuropeanTrade Mark and Design Law, Art. 35 CTMR, mn. 2. 6 S. Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 35, mn. 7. 3

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TITLE IV REGISTRATION PROCEDURE SECTION I Examination of applications Article 36 Examination of the conditions of filing 1. The Office shall examine whether: (a) the Community trade mark application satisfies the requirements for the accordance of a date of filing in accordance with Article 27; (b) the Community trade mark application complies with the conditions laid down in this Regulation and with the conditions laid down in the Implementing Regulation; (c) where appropriate, the class fees have been paid within the prescribed period. 2. Where the Community trade mark application does not satisfy the requirements referred to in paragraph 1, the Office shall request the applicant to remedy the deficiencies or the default on payment within the prescribed period. 3. If the deficiencies or the default on payment established pursuant to paragraph 1 (a) are not remedied within this period, the application shall not be dealt with as a Community trade mark application. If the applicant complies with the Office’s request, the Office shall accord as the date of filing of the application the date on which the deficiencies or the default on payment established are remedied. 4. If the deficiencies established pursuant to paragraph 1 (b) are not remedied within the prescribed period, the Office shall refuse the application. 5. If the default on payment established pursuant to paragraph 1 (c) is not remedied within the prescribed period, the application shall be deemed to be withdrawn unless it is clear which categories of goods or services the amount paid is intended to cover. 6. Failure to satisfy the requirements concerning the claim to priority shall result in loss of the right of priority for the application. 7. Failure to satisfy the requirements concerning the claiming of seniority of a national trade mark shall result in loss of that right for the application. Bibliography: Annand/Norman (eds.), Guide to the Community Trade Mark (1998); Eisenfu¨hr/Schennen (eds.), Gemeinschaftsmarkenverordnung (4th 2014); Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law (2011); Meister, Herbert E., ‘Seniorita¨t oder die sogenannte Beanspruchung eines Zeitranges einer identischen nationalen Marke’, WRP 1997, 1022; Morcom, Roughton and St. Quinn (eds.), The Modern Law of Trade Marks (2012); Pohlmann, Andre´, Verfahrensrecht der Gemeinschaftsmarke (2012); von Mu¨hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke (1998)

Content A. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Interpretation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Application requirements, Art. 36 (1) CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Requirements for the accordance of a date of filing . . . . . . . . . . . . . . . . . 2. Conditions laid down in CTMR and CTMIR. . . . . . . . . . . . . . . . . . . . . . . . .

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a) Mandatory formal requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . aa) Entitlement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . bb) Name and address of the applicant. . . . . . . . . . . . . . . . . . . . . . . . . . . . cc) Name and address of a representative . . . . . . . . . . . . . . . . . . . . . . . . dd) Language. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ee) Signature . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ff) Classification/List of goods and services . . . . . . . . . . . . . . . . . . . . . . gg) Representation of the mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Optional formal requirements. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . aa) Description of the mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . bb) Signed authorization of representative . . . . . . . . . . . . . . . . . . . . . . . . cc) Information about means of communication . . . . . . . . . . . . . . . . dd) Disclaimer . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Payment of class fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Consequences of deficiencies regarding the application requirements 1. Deficiency letter, Art. 36 (2) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Deficiencies relating to the requirements for the accordance of a date of filing, Art. 36 (3) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Deficiencies relating to conditions laid down in CTMR and CTMIR, Art. 36 (4) CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Deficiencies relating to the payment of appropriate class fees, Art. 36 (5) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Priority and seniority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Examination of the requirements concerning the claim to priority, Art. 36 (6) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Priority. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Exhibition priority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Examination of the requirements concerning the claim to seniority, Art. 36 (7) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

6 6 7 8 9 10 12 13 17 18 19 20 21 22 23 24 25 26 27 28 29 29 32 35

A. General Title IV (Artt. 36 to 45 CTMR) provides rules for the registration procedure, starting with the examinations of the conditions of filing pursuant to Art. 36 CTMR. The objective of Art. 36 CTMR is to establish the legal framework for the examination of the conditions of filing by OHIM and the consequences of the applicant’s failure to satisfy the relevant requirements. 2 The legal framework set by Art. 36 CTMR is supplemented by provisions of the CTMIR, the CTMFR and OHIM’s Examination Guidelines1. OHIM’s current Examination Guidelines came into force in the course of 2014 and partly in February 2015. OHIM’s former Proceedings Manual for sections which were not covered by OHIM’s former Examination Guidelines has been converted into OHIM’s current Examination Guidelines, and has thus ceased to exist, so all of OHIM’s practice is now contained in its Examination Guidelines2. 1

1 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities. 2 See https://oami.europa.eu/ohimportal/en/manual-of-trade-mark-practice.

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B. Interpretation I. Application requirements, Art. 36 (1) CTMR Pursuant to Art. 36 (1) CTMR, OHIM shall examine three application requirements: 3 – satisfaction of the requirements for the accordance of a date of filing in accordance with Art. 27 CTMR; – compliance with the conditions laid down in the CTMR and with the conditions laid down in the CTMIR; and – where appropriate, payment of the class fees within the prescribed period.

1. Requirements for the accordance of a date of filing Any CTM application must meet the requirements for the accordance of a date of 4 filing in accordance with Art. 27 CTMR. Pursuant to Artt. 27, 26 (1) CTMR and Rules 1, 2, 3, 9 (1)(a) CTMIR, the necessary documentation for a CTM application includes – a request for registration of the mark as a CTM; – information identifying the applicant; – a list of the goods and services for which the CTM is to be registered; and – a representation of the mark. Further, the application fee (‘basic fee’) must be paid within a period of one month of filing the documents, Art. 27 CTMR, Rules 9 (1)(b), 4 (a) CTMIR and Art. 2 (1), (3) CTMFR. If the CTM application meets the abovementioned requirements, then OHIM will give it a filing date, which is decisive for the priority of the application. For details, see Kipping above Art. 26 mn. 5 et seq.

2. Conditions laid down in CTMR and CTMIR Among the conditions laid down in the CTMR and in the CTMIR, a distinction can 5 be made between mandatory formal requirements and optional formal requirements. a) Mandatory formal requirements. aa) Entitlement. OHIM’s examination of for- 6 mal requirements includes the examination of whether the applicant is entitled to apply for a CTM pursuant to Artt. 3 and 5 CTMR. The application may be filed by any natural or legal person, including authorities established under public law, irrespective of their nationality or domicile.3 bb) Name and address of the applicant. Further, OHIM examines whether the 7 applicant provided sufficient information regarding its name, address, nationality and the state in which it is domiciled or has its seat or an establishment, Art. 36 (1)(b) CTMR, Rules 9 (3)(a), 1 (1)(b) CTMIR. Names of natural persons shall be indicated by their surname and given name(s). Names of legal entities, as well as bodies falling under Art. 3 CTMR, shall be indicated by their official designation and include the legal form of the entity (which may be abbreviated in a customary manner). The applicant’s address should contain, if possible, the street, street number, city/town or state/county, postal code and country. The applicant should indicate only one address, but if there are 3 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 2.1.

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several, the first one listed will be recorded as the address for service, unless the applicant specifically designates a different one.4 8

cc) Name and address of a representative. If the applicant has its domicile, principal place of business or a real and effective industrial or commercial establishment in the EU, there is no obligation to be represented, but, of course, representation is possible. If the applicant does not have its domicile, principal place of business or a real and effective industrial or commercial establishment in the EU, then, regardless of its nationality, representation must be sought to act on its behalf in all proceedings except the filing of the CTM application and the payment of the application fee, Art. 92 (2) CTMR.5 Pursuant to Art. 93 (1) CTMR, representation of natural or legal persons before the Office may only be undertaken by: – any legal practitioner qualified in one of the Member States and having his place of business within the Community, to the extent that he is entitled, within the said State, to act as a representative in trade mark matters; – professional representatives whose names appear on the list maintained for this purpose by OHIM. In case of representation, the representative’s name and address of his place of business must be indicated in the CTM application, Art. 36 (1)(b) CTMR, Rules 9 (3)(a), 1 (1)(e) CTMIR. Alternatively, the representative’s name and an ID number issued by OHIM may be used.6 According to the exception mentioned in Art. 92 (2) CTMR, any CTM application that lacks necessary representation is nevertheless effective and forms the basis for a corresponding filing date. However, for any further proceeding, the applicant must ensure that a representative is then appointed.7

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dd) Language. A CTM application may be filed in any of the official languages of the EU, irrespective of the applicant’s nationality, and must indicate a second language which has to be chosen from the five official OHIM languages (German, English, French, Italian and Spanish), Art. 119 (1)-(3) CTMR. All information on the application form must be in the first language. The second language serves as a potential language for opposition and cancellation proceedings.8 In accordance with OHIM’s practise, the first and the second language must not be identical.9 The choice of the first and the second language is binding and cannot be changed once filed.10 If the language that the applicant has chosen as the first language is one of the five official OHIM languages, then this language will be used as the correspondence language, i. e. the language used in correspondence between OHIM and the applicant during the examination proceedings until registration of the mark.11 If the first language chosen by the applicant is not one 4 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 7.1. 5 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 7.2. 6 Von Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 117 mn. 10; Annand/Norman, Guide to the Community Trade Mark, p. 66. 7 OHIM BoA Dec. of 23/2/2005 – R 568/2001-4 – PAVIS/MAVIS, mn. 20 et seq.; OHIM BoA Dec. of 10/6/2003 – R 995/2001-2 – JB, mn 15–19. 8 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 6.1. 9 OHIM BoA Dec. of 19/3/1999 – R 65/98-3 – KIK; Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 104 mn. 78. 10 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 6.1. 11 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 6.2.

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of the five official OHIM languages, then this language shall be used for the examination and registration proceedings, but OHIM may send written communications to the applicant in the second language indicated by the applicant in his application, Art. 119 (4) CTMR, thus one of the five official languages (see above). The list of goods and services and all the multilingual elements of the application are translated into all of the official languages of the EU. The source language for translations is defined the reference language. If the first language of the application is one of the five official OHIM languages, then it will always be the reference language. If the applicant has provided a translation of the goods and services in the second language, then the reference language will be the second language.12 ee) Signature. Pursuant to Art. 36 (1)(b) CTMR, Rules 9 (3)(a), 1 (1)(k) CTMIR, the 10 signature of the applicant is required in accordance with Rule 79 CTMIR. Generally, applications filed by fax, post, private delivery service or personal delivery must be signed either on the application form itself or in an accompanying letter. Even though OHIM’s application form provides for the applicant to sign at the bottom of page 1, the signature can also be placed at the beginning of the document.13 The signature may be that of the applicant or its representative. If an application is not signed, OHIM invites the applicant to remedy the deficiency within a two-month time limit before the application is rejected.14 If an application is filed electronically, by means of an electronic telecopier or electronic filing, the indication of the name of the sender is deemed to be equivalent to a signature, Rules 80 (3), 82 (3) CTMIR. A question that has been discussed for some time is whether a signature that only 11 consists of the name of a law firm is acceptable. Pursuant to a part of OHIM’s former Proceedings Manual that, however, recently became outdated as its provisions were converted into OHIM’s current Examination Guidelines, this was approved.15 Nevertheless, OHIM’s Boards of Appeal had already decided some time ago that signing with the ‘commercial title of a law firm […] does not concur with the obligation laid down in Rule 79 CTMIR’16. However OHIM’s current Examination Guidelines no longer contain any indication that a signature consisting of the name of a law firm is acceptable. Thus, it is advisable to make sure that the application contains the name and signature of a physical person entitled to represent before OHIM. ff) Classification/List of goods and services. The presence of a list of goods and 12 services is one of the requirements for a filing date to be granted (see mn. 4 above). Pursuant to Rule 1 (c) CTMIR, a reference to the list of goods and services of a previous CTM application is possible. In any event, the classification must be in accordance with Art. 28 CTMR, Rule 2 CTMIR. Rule 2 (1) CTMIR provides that the common classification referred to in Art. 1 of the Nice Agreement, as revised and amended, shall be applied. The list must be worded in such a way as to indicate clearly the nature of the goods and services and to allow each item to be classified in only one class of the Nice classification, Rule 2 (2) CTMIR. Furthermore, the goods and services must be grouped according to the categories of the Nice classification, each group being preceded by the number of the category and presented in the order of the categories laid down in the 12 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 6.3. 13 GC Case T-418/07 –, LIBRO Handelsgesellschaft mbH v OHIM, mn. 28; OHIM BoA Dec. of 7/3/2005 – R 672/2004-2 – GLOBAL INTERCOM/INTERKOM, mn. 9. 14 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 5. 15 OHIM, The Manual Concerning Examination of Formalities, Part B.2 no. 4 (outdated). 16 See, for example, OHIM BoA Dec. of 30/1/2004 – R 914/2001-2 – Cigar, mn. 13.

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Nice classification, Rule 2 (3) CTMIR. In this context, OHIM allows the use of general indications of the class or category headings of the Nice classification. However, OHIM’s former practice, according to which the use of all the general indications listed in a category heading constituted a claim to all goods or services falling under that category, was abandoned in June 2012, following the judgment of the CJ in the case ‘IP Translator’.17 All goods or services covered by a CTM application – including general indications of the class headings – are now interpreted by OHIM on the basis of their natural and usual meaning.18 For details, see Kipping above Art. 28 mn. 24 et seq. gg) Representation of the mark. Pursuant to Art. 36 (1)(b) CTMR, Rules 9 (3)(a), 1 (1)(d), 3 CTMIR, a CTM application must include a due representation of the mark, which cannot be replaced by a description of the mark (see mn. 18 below). If the applicant fails to graphically represent its mark, OHIM will send a deficiency letter and a filing date will not be recorded.19 If the applicant does not wish to claim any specific feature or colour, the mark must be represented in normal script (e. g. by typing letters, numerals and signs) in the application, Rule 3 (1) CTMIR. Pursuant to Rule 3 (2) CTMIR, all other mark types have to be reproduced on a sheet of paper in DIN A4 size separate from the sheet on which the text of the application appears (save where the application is filed by electronic means), and the quality of the reproduction has to be good enough to enable the reproduction to be reduced or enlarged (by scanning) for publication in the Community Trade Mark Bulletin. 14 As regards three-dimensional (3D) marks, the representation must consist of a photographic reproduction or a graphic representation of the mark, just as other picture marks, and it may contain up to six different perspectives of the mark, Rule 3 (4) CTMIR. 15 Where registration of a colour mark is applied for, the representation of the mark must be in the relevant colour(s). The colour(s) making up the mark shall also be indicated in words as precisely as possible and a reference to a recognized colour code (such as, e. g., Pantone or RAL) may be added20, cf. Rule 3 (5) CTMIR, and it is advisable to allow interpretation of the scope of protection. This applies not only to colour marks per se, but also to marks that contain coloured verbal and/or coloured figurative elements21. 16 If registration of a sound mark is applied for, the representation must consist of a graphical representation of the sound, in particular a musical notation. Where the application is filed electronically, it may be accompanied by an electronic file (such as, e. g. MP3) containing the sound, Rule 3 (6) CTMIR. 13

17

b) Optional formal requirements. Further, CTMR and CTMIR contain formal requirements which do not effect the validity of the registration, but can contribute to an improved examination process.

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aa) Description of the mark. Pursuant to Rule 3 (3) CTMIR, the application of a CTM under Rule 3 (2) CTMIR may contain a description of the mark. Where appropriate, a short and clear description can support the clarification of the subject 17 CJ Case C-307/10 – IP Translator; see Communication No. 2/12 of the President of the Office of 20/ 06/2012 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations. 18 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 3: Classification, no. 1. 19 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 9. 20 See CJ Case C-307/10 – Libertel, mn. 37 et seq. 21 OHIM BoA Dec. of 26/3/2008 – R 90/2008-4 – WHISTLES, mn. 8.

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matter of the mark. The description has no influence on the scope of protection, but merely serves a clarification purpose.22 A description that contradicts the graphical representation of the mark must be deleted by the applicant upon request, in order to avoid a rejection of the application.23 bb) Signed authorization of representative. The applicant may file a signed author- 19 ization of his representative for insertion in OHIM’s files. He is obliged to do so if OHIM expressly requires such filing, Rule 76 (1) CTMIR. Usually, OHIM refrains from requesting an authorization in the course of the formal examination under Art. 36 CTMR.24 cc) Information about means of communication. Pursuant to Rule 1 (1)(b) CTMIR, 20 the applicant (or his representative, Rule 1 (1)(e) CTMIR, as the case may be) may give additional information about his telephone numbers, fax numbers, electronic mail address and details of other data communication links where he can be contacted. Where several addresses are indicated, only the address mentioned first is taken into account, except where the applicant designates one of the given addresses as business address. dd) Disclaimer. The applicant may include a disclaimer in his application if the mark 21 contains an element which is not distinctive, and where the inclusion of that element in the mark could give rise to doubts as to the scope of protection for the mark. In doing so, the applicant must disclaim any exclusive right to such an element. OHIM may request such disclaimer as a condition for registration of the mark, Art. 37 (2) CTMR. However, in practice, OHIM usually refrains from requesting a disclaimer.25 Disclaimers may also be added to the trade mark application at a later stage, if appropriate (e. g. if the application is being opposed and the parties agree on a disclaimer to reach a settlement).26 For further details regarding disclaimers, see Lensing-Kramer/Dittschar below Art. 37 mn. 31 et seq.

3. Payment of class fees Pursuant to Article 36 (1)(c), OHIM will examine whether the applicant has paid the 22 appropriate class fees. If the application covers more than three classes, then an additional class fee is payable for each additional class, Rule 4 (b) CTMIR. The fee for each additional class currently is EUR 150 for an individual mark, Art. 2 (2) CTMFR, and EUR 300 for a collective mark, Art. 2 (4) CTMFR. If the number of classes changes during the classification process, class fees may be subsequently requested or refunded.27

II. Consequences of deficiencies regarding the application requirements Art. 36 (2)–(5) CTMR deals with the consequences of deficiencies in the application 23 requirements set out in Art. 36 (1)(a)–(c) CTMR. Art. 36 (2) CTMR establishes OHIM’s obligation to request the applicant ‘to remedy the deficiencies or the default in payment 22

Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 36 mn. 23. OHIM BoA Dec. of 27/1/2001 – R 1374/2010-2 – Jaune et vert, mn. 14. 24 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 36 mn. 24. 25 Also sharing this view: Pohlmann, Verfahrensrecht der Gemeinschaftsmarke, p. 92 mn. 77 26 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 13. 27 See Communication No. 5/96 of the President of the Office of 8/8/1996 concerning current accounts, no. III.2. 23

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within the prescribed period’. Art. 36 (3)–(5) CTMR states the consequences of the applicant’s omission to remedy the particular deficiency.

1. Deficiency letter, Art. 36 (2) CTMR 24

On the basis of Art. 36 (2) CTMR, OHIM shall write to the applicant informing him as to why his CTM application does not satisfy the requirements set by Art. 36 (1) CTMR, and it shall further give the applicant the opportunity to remedy the deficiencies within ‘the prescribed period’, i. e. within a time period to be specified by the examiner on the basis of the CTMIR and OHIM’s practice.

2. Deficiencies relating to the requirements for the accordance of a date of filing, Art. 36 (3) CTMR 25

If a CTM application does not meet the requirements and a date of filing is not granted (see mn. 4 above), OHIM will send a deficiency letter requesting the applicant to provide the missing item within a time limit of two months from receipt of the letter, Rule 9 (2) CTMIR. This time limit is not extendable.28 Should the applicant fail to remedy the deficiency, then the CTM application will be ‘deemed not filed’29 and all fees already paid will be refunded, Art. 36 (3) CTMR, Rule 9 (2) CTMIR. If the deficiency is remedied within the prescribed time limit, the filing date will be changed to the date used on all mandatory information, including the fee payment.30

3. Deficiencies relating to conditions laid down in CTMR and CTMIR, Art. 36 (4) CTMR 26

As regards deficiencies concerning the conditions laid down in the CTMR and CTMIR (see above mn. 5 et seq.), OHIM will invite the applicant to remedy the deficiencies noted within such period as it may specify, Rule 9 (3)(a) CTMIR. Pursuant to Rule 71 (1) CTMIR, a period to be specified by OHIM shall, when the party concerned has its domicile or its principal place of business or an establishment within the EU, be not less than one month, or, when those conditions are not fulfilled, not less than two months, and no more than six months. Usually, examiners will set a time limit of two months from receipt of the deficiency letter to remedy deficiencies relating to conditions laid down in the CTMR and CTMIR.31 An extension of a period specified by the OHIM is possible if deemed appropriate by the examiner under the circumstances given, if such extension is requested by the party concerned and the request is submitted before the original period expired, Rule 71 (1) CTMIR. According to Art. 36 (4) CTMR, Rule 9 (4) CTMIR, failure to remedy the deficiencies within the specified time limit results in a refusal of the application, which will be recorded in the register. If the deficiencies concern only some of the goods and services, OHIM will refuse the application only in so far as those goods and services are concerned, Rule 9 (8) CTMIR. 28 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 4.1. 29 Gielen/v. Bomhard, Concise European Trade Mark and Design Law, p. 127. 30 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 4.1. 31 See, e. g., OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 5, where a two-month time limit is mentioned for the correction of irregularities regarding the signature on the application; see also Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 36 mn. 26.

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4. Deficiencies relating to the payment of appropriate class fees, Art. 36 (5) CTMR Also with regard to deficiencies relating to the payment of appropriate class fees (see 27 above mn. 22), OHIM will invite the applicant to remedy the deficiencies noted within such period as it may specify, Rule 9 (3)(b) CTMIR (see above mn. 26 for details regarding the specified period). Generally, the applicant can expect to be set a time limit of two months by OHIM for the outstanding class fee payment.32 Pursuant to Art. 36 (5) CTMR, Rule 9 (5) CTMIR, failure to remedy the deficiencies within the prescribed time limit results in the application being considered to have been withdrawn (which will be recorded in the register) unless it is clear which categories of goods or services the amount paid is intended to cover. In the absence of other criteria to help determine which classes are intended to be covered, OHIM will take the classes in the order of the classification (starting with the lowest); the application will be deemed to have been withdrawn with regard to those classes for which the class fees have not been paid in full.33

III. Priority and seniority The applicant for a CTM is entitled to claim priority, exhibition priority or seniority, 28 as the case may be, for the application according to the Artt. 29 to 35 CTMR. In this context, OHIM examines whether the applicant complied with the requirements pursuant to Art. 36 (1)(b), (6), (7) CTMR, Rules 9 (3)(c) and (d), (6) and (7), 1 (f), (g) and (h), 6, 7, 8 CTMIR.

1. Examination of the requirements concerning the claim to priority, Art. 36 (6) CTMR a) Priority. Pursuant to Art. 29 (1) CTMR, a person who has duly filed an application 29 for a trade mark in or in respect of any state party to the Paris Convention or to the Agreement establishing the WTO, or its successors in title, can claim a right of priority with regard to its CTM application for the same trade mark for goods or services which are identical or contained within those for which the application has been filed. Priority must be claimed within a period of six months from the date of filing of the first application. The CTM applicant has to file a declaration claiming priority, stating the date on which 30 and the country in or for which the previous application was filed, Rule 1 (f) CTMIR. The declaration can either be submitted together with the CTM application or be submitted to OHIM subsequently within two months from the filing date, Rule 6 (1)(2) CTMIR. Pursuant to Rule 6 (1) CTMIR, the applicant must further provide OHIM with the file number and a certified copy of the previous application accompanied by a certificate stating the date of filing of the previous application within three months from OHIM’s receipt of the declaration of priority (unless the previous application is a CTM application, in which case OHIM will ex officio include a copy in the file of the new CTM application).

32 See, e. g., OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 3.3, where a two-month time limit is expressly mentioned. 33 Morcom, Roughton/St. Quinn (ed.), The Modern Law of Trade Marks, p. 908 no. 29.2

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However, pursuant to a decision by OHIM’s President34 in accordance with Rule 6 (4) CTMIR, certified copies are not necessary, an accurate photocopy is sufficient.35 31 OHIM’s examination of the priority claim relates to formal and material aspects, the latter including a ‘triple identity check’, which means that OHIM will check that the CTM application and the priority documents contain the same mark, refer to the same applicant and have at least one good or service in common.36 In general, the ‘triple identity check’ is limited to obvious deficiencies.37 The formal aspects that are examined by OHIM include, in particular, the requirement of a duly submitted declaration of priority and priority evidence (see above). If the priority claim satisfies all requirements, the CTM application will be given the desired priority date. If not, OHIM will invite the applicant to remedy the deficiency or make observations within two months.38 If the deficiency is not remedied in due time, this results in the loss of the right of priority for the CTM application, Art. 36 (5) CTMR, Rule 9 (6) CTMIR. However, if the deficiency only concerns some of the goods and services, the priority right is lost only in so far as those goods and services are concerned, Rule 9 (8) CTMIR. If the priority documents are not submitted with the CTM application, OHIM will check on the website of the relevant national office to determine whether the relevant information can be found online. If the information to grant the priority claim cannot be found online, OHIM will sent a deficiency letter and will give the applicant a two month time limit to remedy the deficiency; as a rule, this time limit will not be extended.39 b) Exhibition priority. Exhibition priority (Art. 33 CTMR) means claiming as priority date of the CTM application the date on which goods or services covered by the CTM application were displayed at an officially recognised exhibition under the mark as filed. 33 The applicant can claim exhibition priority within six months of the first display. It must provide a declaration of exhibition priority indicating the name of the exhibition and the date of first display of the goods or services, Rules 1 (g) CTMIR. If the declaration of exhibition priority is not filed together with the CTM application, it has to be submitted within two months of the filing date, Rule 7 (2) CTMIR. Within three months of OHIM’s receipt of the declaration of exhibition priority, the applicant must provide OHIM with a certificate issued at the exhibition by the authority responsible for the protection of industrial property at the exhibition. The certificate must state that the mark was in fact used for the goods and services, the opening date of the exhibition and, where the first public use did not coincide with the opening date of the exhibition, the date of the first public use. It must be accompanied by an identification of the actual use of the mark, duly certified by the authority, Rule 7 (1) CTMIR. 32

34

Decision of the President of the Office of 20/1/2003 – no. EX-03-5 – Art. 1. See, e. g., OHIM, Guidelines for Examination in the Office for Harmonization (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, no. 14.4. 36 See, e. g., OHIM, Guidelines for Examination in the Office for Harmonization (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, no. 14.2. 37 v. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 126 mn. 62. 38 See, e. g., OHIM, Guidelines for Examination in the Office for Harmonization (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, no. 14.3. 39 See, e. g., OHIM, Guidelines for Examination in the Office for Harmonization (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, no. 14.4. 35

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As regards OHIM’s examination of the exhibition priority claim, it will (like the 34 examination of a ‘normal’ priority claim) include the checking of formal and material aspects. In particular, OHIM will perform the ‘triple identity check’ (see mn. 31 above). If the exhibition priority claim satisfies all requirements, the CTM application will be given the desired priority date. If not, the same rules apply as described for the ‘normal’ priority claim (see mn. 31 above).

2. Examination of the requirements concerning the claim to seniority, Art. 36 (7) CTMR Pursuant to Art. 34 (1) CTMR, the proprietor of an earlier trade mark registered in a 35 member state, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a member state, who applies for an identical trade mark for registration as a CTM for goods or services which are identical with or contained within those for which the earlier trade mark has been registered, may claim the seniority of the earlier trade mark for the CTM in the member state in which it is registered. Seniority has the sole effect that where the proprietor of a CTM surrenders the earlier trade mark or allows it to lapse, it shall be deemed to continue to have the same rights as it would have had if the earlier trade mark had continued to be registered, Art. 34 (2) CTMR. Seniority can be claimed together with the application or subsequently within two 36 months of the filing of the CTM application, Art. 34 CTMR, Rule 8 (1)(2) CTMIR (or even after registration of the CTM, Art. 35 CTMR, Rule 28 CTMIR). If seniority is claimed together with the application, the declaration of claiming seniority must state the member state(s) in which the earlier mark is registered, the date from which the relevant registration was effective, the number of the relevant registration and the goods and services for which the mark is registered, Rule 1 (h) CTMIR. In support of the claim, the applicant has to submit evidence of the relevant registration within a period of three months from OHIM’s receipt of the declaration of claiming seniority, Rule 8 (1)(2) CTMIR. Pursuant to a decision of OHIM’s President40 in accordance with Rule 8 (4) CTMIR, certified copies, as mentioned in Rule 8 (1) CTMIR, are not necessary; an accurate photocopy is sufficient. If the applicant fails to submit the relevant registration documents, OHIM will check on the website of the relevant national office to determine whether the relevant information can be found online. If this is not the case, it will send a deficiency letter and invite the applicant to remedy the deficiency within a set time limit.41 Materially, an earlier trade mark registration must exist and the applicant must 37 comply with the triple identity requirement (identity of the marks, identity of the owners and (partial) identity of the list of services and goods). However, OHIM will only examine the identity of the marks, whereas it is for the applicant to make certain that the further requirements are also met.42 If the seniority claim complies with the relevant requirements, OHIM will accept it and – once the CTM application has been registered – inform the Benelux Trade Mark Office

40

Decision of the President of the Office of 20/1/2003 – No. EX-03-5 – Art. 3 (1)(e). Decision of the President of the Office of 1/6/2005 – No. EX-05-05 – Artt. 5 and 6; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 16.2. 42 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 16.3. 41

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or the office of the Member State concerned of the seniority claims, Rule 8 (3) CTMIR. The seniority effect sets in when the earlier trade mark is surrendered or allowed to lapse.43 Failure to satisfy the abovementioned requirements results in loss of the right of seniority for the CTM application, Art. 36 (7) CTMR.

Article 37 Examination as to absolute grounds for refusal 1. Where, under Article 7, a trade mark is ineligible for registration in respect of some or all of the goods or services covered by the Community trade mark application, the application shall be refused as regards those goods or services. 2. Where the trade mark contains an element which is not distinctive, and where the inclusion of that element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, the Office may request, as a condition for registration of said trade mark, that the applicant state that he disclaims any exclusive right to such element. Any disclaimer shall be published together with the application or the registration of the Community trade mark, as the case may be. 3. The application shall not be refused before the applicant has been allowed the opportunity of withdrawing or amending the application or of submitting his observations. Bibliography: Annand/Norman (eds.), Guide to the Community Trade Mark (1998); Eisenfu¨hr/Schennen (eds.), Gemeinschaftsmarkenverordnung (4th ed. 2014); Gielen/v. Bomhard (eds.), Concise European Trade Mark and Design Law (2011); Morcom, Roughton and St. Quinn (eds.), The Modern Law of Trade Marks (2012); Niedermann, Anne, ‘Surveys as Evidence in Proceedings Before OHIM’, IIC 2006, 260; Pohlmann, Andre´, Verfahrensrecht der Gemeinschaftsmarke (2012); v. Mu¨hlendahl/Ohlgart (eds.), Die Gemeinschaftsmarke (1998)

Content A. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Interpretation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Examination as to absolute grounds for refusal, Art. 37 (1) CTMR . 1. Examination procedure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) General principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . aa) Reasoned objection. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . bb) Dialogue with the applicant. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . cc) European criteria . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . dd) Irrelevant criteria . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . (1) Term not used. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . (2) Need to keep free . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . (3) Factual monopoly . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . (4) Double meaning. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . aa) Objections on the goods and services . . . . . . . . . . . . . . . . . . . . . . . . . bb) Irrelevance of earlier national registrations. . . . . . . . . . . . . . . . . . . cc) Various grounds for refusal. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . dd) Objection letter . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Relevant timing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Timing of examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Timing of objection. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43

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3. Acquired distinctiveness. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Evidence of use. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Disclaimer, Art. 37 (2) CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Requirements. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Element of the mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Non-distinctiveness of the element . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Doubts as to the scope of protection of the trade mark . . . . . . . . . 3. Effects of the disclaimer . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Proceeding regarding disclaimers . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Recent discussions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Rights of the applicant, Art. 37 (3) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

21 21 25 31 31 33 34 35 37 38 42 45 49

A. General Art. 37 CTMR provides the legal framework regarding the examination of a CTM 1 application by OHIM as to absolute grounds for refusal pursuant to Art. 7 CTMR and regarding the possibility for OHIM to request (and for the applicant to submit) a disclaimer. The provision is supplemented by Rule 11 CTMIR and OHIM’s Examination Guidelines1. OHIM’s former Proceedings Manual has been converted into OHIM’s current Examination Guidelines in the course of 2014, and has thus ceased to exist, see Lensing-Kramer/Dittschar above Art. 36 mn. 2. Art. 37 (1) CTMR should be read in light of Art. 40 CTMR, as the latter allows, 2 following the publication of a CTM, any natural or legal person and any group or body representing manufacturers, producers, suppliers of services, traders or consumers (without being parties to the proceedings before OHIM) to submit to OHIM written observations, explaining on which grounds under Art. 7 CTMR, in particular, the trade mark concerned shall not be registered ex officio. Art. 37 (2) CTMR provides rules for disclaimers regarding a particular element of the mark. Contrary to what one would expect from the fact that the disclaimer provision is included in Art. 37 CTMR, disclaimers have no influence when assessing whether a mark ca be registered, but shall remove doubts as to the scope of protection of the mark, an issue that arises when conflicts must be judged at a later point in time. However, the requirements of both provisions, Art. 37 (1) and (2) CTMR, are assessed by the examiner during the examination process. Art. 37 (3) CTMR stipulates that the application shall not be refused before the applicant has been allowed the opportunity of withdrawing or amending the application or of submitting his observations. Thus, the provision reflects the general principles laid down in Art. 75 CTMR, i. e. that OHIM’s decisions shall state the reasons on which they are based and that they shall be based only on reasons or evidence which the parties used to present their comments.

1 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal.

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B. Interpretation I. Examination as to absolute grounds for refusal, Art. 37 (1) CTMR 1. Examination procedure 3

a) General principles. aa) Reasoned objection. A refusal of a CTM application pursuant to Art. 37 (1) CTMR can only be based on absolute grounds for refusal according to Art. 7 CTMR. For details regarding the relevant absolute grounds for refusal, see Hasselblatt above Art. 7 mn. 49 et seq. Where the examiner finds that an absolute ground for refusal exists, a reasoned objection must be issued which specifies all the individual grounds for refusal identified and provides clear and distinct reasoning for each ground separately. Piecemeal objections (so called step-by-step objections) should be avoided. Even in cases in which the grounds for refusal overlap (e. g. distinctiveness and descriptiveness), each ground of refusal must be given its own reasoning. Although it is sufficient for the refusal of a CTM application if only one of the grounds mentioned in Art. 7 CTMR exists in only some parts of the EU, examiners are encouraged to list all grounds for refusal which they deem applicable.2

4

bb) Dialogue with the applicant. During the examination process, the examiners should seek dialogue with the applicants and should carefully consider, of their own motion, also all facts or arguments that plead in favour of an acceptance of the mark, as well as any observations submitted by the applicant.3 Since 2006, OHIM has been following a ‘one-file-one-examiner’ approach, pursuant to which each file shall be examined by the same examiner in one step, in order to increase efficiency. Before, a file had to pass through a fixed order, with often several examiners being involved. Pursuant to the concept of a dialogue with the applicant, the examiner must notify the applicant at any stage of the proceedings about possible objections. This may lead to the situation that the examiner issues several orders and the applicant has the opportunity to submit several observations, if the examiner regards the ongoing dialogue as being beneficial for the procedure or if the applicant’s observations raise new reasons for objections.4 However, this does not mean that OHIM must enter into an open-ended dialogue with the applicant.5 Although one might regard it as a burden for the applicant to be involved in an ongoing dialogue with the examiner, such dialogue must at the same time also be seen as a chance for the applicant to achieve acceptance of his mark.

5

cc) European criteria. Art. 7 (1) CTMR, dealing with the absolute grounds for refusal, as a European provision, has to be interpreted on the basis of a common European standard, as it would be incorrect to apply different standards of distinctiveness, based on different national traditions, or to apply different (i. e. more lenient or 2 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.1. 3 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.2. 4 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn 8. 5 Hall in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, p. 130.

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stricter) standards on the breach of public order or morality, depending on the country concerned.6 However, pursuant to Art. 7 (2) CTMR, a CTM application can be excluded from registration if a ground for refusal pertains to only part of the EU. The GC has e. g. ruled in its ‘Espetec’ judgment that a mark will be refused if it is descriptive in any language, as long as that language is understood in part of the EU.7 dd) Irrelevant criteria. OHIM’s Examination Guidelines list specific criteria that applicants often advance as arguments, but which have already been declared irrelevant by the courts and will thus be rejected.8 The said list (which cannot be regarded as conclusive) covers in detail: (1) Term not used. The fact that a descriptive use of the term applied for as a CTM cannot be ascertained is irrelevant. Examination of Art. 7 (1)(c) CTMR must be made by means of prognostics, it is sufficient that the mark ‘may serve’ to designate characteristics of the goods and services.9 (2) Need to keep free. Any argument that other traders do not need the term applied for, can use more direct and straightforward indications or have synonyms at their disposal to describe the respective character of goods and/or services is also irrelevant. Although there is a public interest underlying Art. 7 (1)(c) CTMR which says that descriptive terms should not be registered as a trade mark so as to remain freely available to all competitors, it is not necessary for OHIM to show that there is a present or future need or concrete interest of third parties to use the descriptive term applied for.10 (3) Factual monopoly. The fact that the applicant is the only person offering the goods and services which the mark describes is irrelevant for Art. 7 (1)(c) CTMR. However, in this case the applicant may consider if he can establish acquired distinctiveness pursuant to Art. 37 (3) CTMR.11 (4) Double meaning. A frequent argument of applicants that the terms applied for have more than one meaning, one of them not being descriptive of the goods and/or services, will not be accepted by OHIM. It is sufficient for a refusal under Art. 7 (1)(c) CTMR if at least one of the possible meanings of the term is descriptive in relation to the relevant goods and services.12 Since the examination must focus on the goods and/or services covered by the application, other possible meanings of the word(s) making up the requested trade mark, which are unrelated to the goods and/or services concerned, 6 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.3. 7 GC Case T-72/11 – Espetec, mn. 35, 36. 8 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.4. 9 CJ Case C 191/01 – Doublemint, mn. 33; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.4.1. 10 CJ Case C-108/97 – Windsurfing Chiemsee, mn. 35; CJ Case C-363/99 – Postkantoor, mn. 61; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.4.2. 11 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.4.3. 12 CJ Case C 191/91 – Doublemint, mn. 32; CJ Case C-363/99 – Postkantoor, mn. 97; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.4.4.

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are irrelevant. Equally, if the mark is a composite word mark, what matters for examination purposes is the meaning, if any, associated with the sign as a whole, and not the possible meanings of its individual elements considered separately.13 For details regarding Art. 7 (1)(c) CTMR, please see Hasselblatt above Art. 7 mn. 73 et seq. b) Examination. aa) Objections on the goods and services. Almost all absolute grounds for refusal, and in particular the most pertinent ones of distinctiveness, descriptiveness, specificity and deceptiveness, have to be assessed with respect to the goods and services actually claimed. In OHIM’s practice, the first step – before entering into the real examination process – is a language check, pursuant to which it is investigated for each of the 22 languages of the EU whether the mark has a semantic meaning. If a semantic meaning can be found, then OHIM will examine whether that meaning is relevant for the application’s list of goods and services.14 Further, OHIM ensures the correct classification of the CTM application pursuant to Art. 28 CTMR before the application is sent for such of language check (Art. 38 CTMR), in order to avoid incurring translation expenses for a trade mark that is refused before registration.15 12 If an objection is raised, the examiner must specifically state which ground(s) for refusal apply in relation to each claimed good or service.16 It is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services, while a homogenous category is considered to be a group of goods and/or services which have a sufficiently direct and specific connection to each other. In this respect, the mere fact that the relevant goods or services belong to the same class of the Nice Classification is not decisive, as the goods or services within one class are often quite different and thus lacking a direct and specific connection.17 Where the same ground for refusal is given for a category or group of goods or services, OHIM may restrict itself to giving only general reasoning for all of the goods and/or services concerned.18 An objection regarding descriptiveness applies not only to those goods or services for which the term(s) making up the mark is/are directly descriptive, but also to the broad category which contains an identifiable subcategory of specific goods or services for which the mark is directly descriptive (e. g. ‘Eurohealth’ is to be refused for ‘insurances’ as a whole and not only for ‘health insurances’19).20 11

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bb) Irrelevance of earlier national registrations. As an argument supporting their request to register a CTM, applicants sometimes refer to earlier registrations of their mark in member states of the EU and/or in other national jurisdictions. In some earlier decisions, OHIM’s BoA held that the existence of registrations in non-member countries may be taken into account by the examiner when assessing the request, provided there is some evidence that similar standards exist in the countries con13 CJ Case T-315/03 – Rockbass, mn. 56; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.4.4. 14 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 7. 15 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 4. 16 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.5. 17 GC Case T-118/06 – Ultimate Fighting Championship, mn. 28. 18 CJ Case C-239/05 – Kitchen company, mn. 38. 19 GC Case T-359/99 – Eurohealth, mn. 33. 20 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.5.

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cerned.21 Pursuant to OHIM’s recent practice, the existence of earlier national registrations for the mark (regardless of whether such national registrations pertain to member states of the EU or to jurisdictions outside the EU) is not relevant for the examination of a CTM application. Examiners are geared to the judgments issued by OHIM’s BoA, the CJ and the GC, pursuant to which OHIM’s decisions regarding Art. 7 CTMR are subject solely to an interpretation of the CTMR by the EU judiciary, and not subject to an alleged or actual decision practice by OHIM.22 Further, both the CJ23 and the GC24 have ruled that the principle of not taking into account the existence of earlier national registrations for the mark does not interfere with the principle of equal treatment, because no one may rely, in support of his claim, on prior unlawful acts. Also irrelevant for the examination of a CTM application are allegedly similar trade marks that have been registered by OHIM.25 The same will apply to allegedly similar national trade marks. cc) Various grounds for refusal. If a CTM application is subject to more than one 14 absolute ground for refusal pursuant to Art. 7 (1) CTMR, then the examiner must list in his objection all the absolute grounds for refusal and use separate headings to avoid any confusion, in particular where there is an overlapping of grounds (e. g. between Art. 7 (1)(b) and Art. 7 (1)(c) CTMR). Under the headings, each ground for refusal will be given its own reasoning.26 If several grounds for refusal are raised, the applicant must overcome all of them, since even the existence of one ground is sufficient to justify a refusal.27 The differentiation between the grounds for refusal is also important with a view to Art. 7 (3) CTMR (acquired distinctiveness), pursuant to which Art. 7 (1)(b), (c) and (d) CTMR are not applicable if the mark has become distinctive in relation to the goods and services for which registration is requested because of the use which has been made of it. dd) Objection letter. Where, pursuant to Art. 7 CTMR, the trade mark may be 15 ineligible for registration including all or any part of the goods or services stated on the application, OHIM will notify the applicant of the grounds for refusing registration and specify a time limit within which the applicant may withdraw or amend the application or submit his observations, Rule 11 (1) CTMIR. The time limit set by OHIM will usually be a two-month time period28, which can be extended pursuant to Rule 71 (1) CTMIR. In line with the principle of ‘Reasoned Objection’, the objection letter should contain a specific, detailed, clear and distinct reasoning regarding each ground for refusal under separate headings (see above mn. 3). The applicant may overcome the ground(s) for refusing registration by convincing the 16 examiner, through his observations, that the objection is unjustified, or by limiting the list of goods and services of his application to an appropriate extent, so the reason for 21 Morcom/Roughton/St. Quintin, The Modern Law of Trade Marks, p. 910 No. 29.6, with reference to OHIM BoA Dec. of 21/7/1998 – R 68/1998-3 – POLY PADS, OHIM BoA Dec. of 8/7/1998 – R 29/1998-3 – Enamelize and OHIM BoA Dec. of 27/5/1998 – R 20/1997 – XTRA. 22 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 15, with reference to CJ Dec. of 15/9/2005 – C-37/03 – BioID, mn. 47 and GC Dec. of 14/6/2007 – T-207/06 – Europig, mn. 40. 23 CJ Case C-39/08 – Volkshandy, mn. 14, 18. 24 GC Case T-123/04 – Cargo Partner, mn. 68 et seq. 25 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 16. 26 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.8. 27 CJ Case C-104/00 – Companyline, mn. 28. 28 Annand/Norman, Guide to the Community Trade Mark, p. 77; v. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 136.

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objection no longer applies. In the latter case, the applicant may, e. g., delete certain goods and/or services for which the mark is purely descriptive. According to the general principle of dialogue with the applicant (see above mn. 4), the examiner has to assess all observations submitted by the applicant and also, ex officio, all other facts or arguments that favour accepting the mark. Against this background, observations that are received after the set time limit can be considered by the examiner, if he has not yet issued a decision.29 17 If the applicant fails to overcome the ground(s) for refusing registration within the time limit set by OHIM (and provided that the examiner has not found any reason of his own that might change his view), then the application will be refused in whole or in part, Rule 11 (3) CTMIR. The notification of the refusal will contain the statement that the application is hereby refused, and contain a notice on the availability of an appeal. The final decision must not be limited to a refusal for ‘the reasons given in the objection’. If the applicant contests the reasons given in the objection letter, the refusal has to provide the original reasoning given, and then address the arguments of the applicant. Where the examiner needs to provide new facts or arguments to sustain a refusal, the applicant must be given the opportunity to comment on this before a final decision is taken. If the applicant, after having received an objection, amends the list of goods and services in such way that a new ground for refusal becomes relevant, the examiner will raise this new ground in another objection letter.30 This may occur, e. g., where the applicant restricts the list of claimed goods and services in such way that the mark becomes misleading.31 A specification of goods and services that is restricted by a condition that the goods or services do not possess a particular characteristic is not possible.32 For example, a specification claiming ‘books, except books about theatre’ will not be accepted by OHIM, while restrictions that are worded in a positive way are usually accepted, such as ‘books about Chemistry’.33

2. Relevant timing a) Timing of examination. Pursuant to OHIM’s former practice, the relevant point in time regarding the examination of a CTM application as to the establishment of absolute grounds for refusal was the filing date as well as the registration date (which coincides with the decision of the examiner), since it was held that a CTM should be protected both at the time of application and at the time of registration.34 19 However, that practice has changed due to the CJ’s ‘Flugbo¨rse’ decision, in which it was expressly stated that, with regard to the assessments of absolute grounds for refusal, solely the situation on the filing date shall be relevant.35 Although the decision relates to Art. 52 (1)(a) CTMR (formerly, when the decision was granted, Art. 51 (1)(a) CTMR), i. e. concerning the point in time that is relevant for a cancellation on the basis of (alleged) registration contrary to the provisions of Art. 7 CTMR, it naturally also affects 18

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Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 7. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.2. 31 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.8. 32 CJ Case C-363/99 – Postkantoor, mn. 114 33 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.2. 34 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 20. 35 CJ Case C-332/09 P – Flugbo ¨ rse, mn. 41, confirming GC, Case T-189/07 – Flugbo¨rse. 30

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Art. 37 CTMR and the examination of absolute grounds for refusal during the registration procedure. Critical voices disapprove of the decision, referring to the wording of Art. 52 (1)(a) CTMR (‘where the Community trade mark has been registered contrary to the provisions of Article 7’) and the context with Art. 52 (2) CTMR as well as to the general principle that OHIM must not register a trade mark which would have to be cancelled only shortly after because of Art. 52 (1)(a) CTMR (‘dolo agit qui petit quod statim redditurus est’).36 Besides referring to two of its earlier decisions, the CJ has reasoned its decision in particular by pointing out that only an interpretation of Art. 52 (1)(a) CTMR in which solely the situation on the filing date is relevant can avoid a loss of the registrability of the mark becoming more and more likely the longer the registration procedure takes.37 Further, the CJ holds that the possibility of a revocation of a CTM pursuant to Art. 51 CTMR (formerly Art. 50 CTMR) already constitutes a mechanism that sanctions a loss of registrability of a CTM after its application, and thus serves the public interest and allows for accommodating developments that can occur during the registration procedure.38 b) Timing of objection. Objections should be raised by the examiner as early and as 20 completely as possible. However, in rare cases, OHIM will reopen ex officio the examination procedure if the mark had clearly been accepted by mistake or if according to new case-law the same conclusions apply to a mark that had been accepted previously. In the case of CTM applications, this can happen at any time before registration, i. e. even after publication. In case of international registrations designating the EU, this can happen as long as the period during which an opposition can be raised (six months after republication) has not started, Rule 112 (5) CTMIR, and any interim status declaration previously sent would be revoked. OHIM can also reopen the examination procedure (including consultation of the applicant) as a result of third party observations pursuant to Art. 40 CTMR.39

3. Acquired distinctiveness a) General. Pursuant to Art. 7 (3) CTMR, the absolute grounds for refusal provided 21 by Art. 7 (1)(b)(c) and (d) CTMR are not applicable to a trade mark, if it has become distinctive in relation to the goods and services for which registration is requested as a consequence of the use which has been made if it (‘acquired distinctiveness’). A trade mark is distinctive in this sense if, owing to the use made of it on the market, the relevant public has come to see it as identifying the goods and services claimed in the CTM application as originating from a particular undertaking.40 The following remarks focus on the influence acquired distinctiveness has on the registration procedure. For further details regarding acquired distinctiveness pursuant to Art. 7 (3) CTMR, see Hasselblatt above Art. 7 mn. 313 et seq. The applicant may raise the argument of acquired distinctiveness during the whole 22 registration procedure and also during an appeal against a refusal decision issued by 36

Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 23. CJ Case C-332/09 P – Flugbo¨rse, mn. 47. 38 CJ Case C-332/09 P – Flugbo ¨ rse, mn. 50 et seq. 39 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.6. 40 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination; Section 4: Absolute Grounds for Refusal, no. 2.6.1. 37

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OHIM.41 In this respect, it is not sufficient if the applicant only refers to a use of the mark, he also has to clearly and unambiguously express his view that the use of the mark has led to acquired distinctiveness.42 Thus, it is advisable for applicants to explicitly refer to Art. 7 (3) CTMR when claiming acquired distinctiveness. 23 A claim to acquired distinctiveness will not cause OHIM to examine ex officio whether the relevant requirements are fulfilled. Rather, it is solely the responsibility of the applicant to prove that his claim to acquired distinctiveness is justified.43 This means that the applicant has to provide OHIM with sufficient evidence of the use which is to be assessed in order to judge whether that use has produced a situation where the mark, which would otherwise have to be refused on one or several grounds listed in Art. 7 (1)(b)(c) and (d) CTMR, has become distinctive. The use must be of the trade mark and not of a significantly different variation, and it must relate to the goods and services that are subject of the CTM application44 (while it is possible for the applicant to limit the list of goods and/or services, if necessary, in light of the actual use). OHIM does not state any particular input requirements, but leaves the acquisition and compilation of evidence completely to the applicant. Further, applicants should not rely on any indications given by an examiner relating to the types of evidence of use which might be considered, because such indications cannot be interpreted as a covenant that the submission of such evidence will lead to an acceptance of the claim to acquired distinctiveness.45 24 Acquired distinctiveness is a frequently submitted observation in accordance with Art. 37 (3) CTMR, once an objection letter has been sent. The claim to acquired distinctiveness can be raised alternatively, in addition to seeking registration on the basis of original distinctiveness of the mark. If the applicant solely claims acquired distinctiveness from the very beginning (thereby implicitly acknowledging that his trade mark lacks original distinctiveness), OHIM nevertheless has to examine first whether the mark has original distinctiveness, and must only enter into examination of acquired distinctiveness if original distinctiveness has to be negated.46 b) Evidence of use. The applicant is free to choose any type of evidence of how a product is used to prove acquired distinctiveness of his mark, which may be different in the relevant member states. The mark must have acquired distinctiveness at the time of filing of the CTM application47, and the distinctiveness must still be present when the decision on whether to register a product (or service) is being taken. However, evidence that was collected after the filing date can be accepted if such evidence is sufficient to prove that acquired distinctiveness already existed at the time of filing. 26 The evidence of use must prove acquired distinctiveness of the mark for those parts of the EU in which grounds for refusal exist. If the reason for refusal concerns a language which, in relation to the goods and/or services in question, is well understood throughout the EU (e. g. English for goods/services in the computer field), the objection 25

41 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn 50, with reference to GC Case T163/98 – Baby-Dry, mn 43. 42 OHIM BoA Dec. of 21/3/2007 – R 1032/2006-4 – Farbmarke: Rot, mn. 26, 27. 43 GC Case T-028/08 – Bounty-Riegel, mn. 87. 44 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination; Section 4: Absolute Grounds for Refusal, no. 2.6.8.8 and no. 2.6.5. 45 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 53, with reference to GC Case T016/02 – TDI, mn. 77 et seq. 46 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 49, with reference to OHIM BoA Dec. of 2/4/2008 – R 150/2008-4 – Gelb/Schwarz, mn. 10. 47 CJ Case C-542/07 – Pure Digital, mn. 42; GC Case T-247/01 – Ecopy, mn. 36.

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will likely extend to the whole EU. The same would apply if the reason for refusal concerns words that are almost universally understood irrespective of their language source (e. g. ‘extra’ or ‘vino’). Where the reason for refusal only concerns part of the EU, in accordance with Art. 7 (2) CTMR, the evidence of use merely needs to relate to that area. In any case, the evidence must relate to all the relevant territorial markets which are affected by the grounds for refusal. Further, the evidence of use has to relate to the (part of the) public to which the mark is addressed. In this respect, the list of goods and services included in the CTM application has to be taken into consideration. Unless the goods and/or services are, by their nature, addressed to specialists or to a limited public, they will be taken in their ordinary meaning and generally be assessed as addressed to the public. Art. 78 (1) CTMR contains a list of the types of evidence accepted in such cases, which is, however, not exhaustive. Examiners must be prepared to accept, e. g., – opinion polls and market surveys by independent and well-recognised institutes, – statements from trade and consumer organisations, – articles and brochures, – samples, – evidence of turnover and advertising and other types of promotion, – evidence of successful prosecution of infringers, and – evidence of trade mark registrations obtained. The evidence must also demonstrate that a sufficiently large part of the addressees is aware that the sign in question is a trade mark.48 The circumstances in which that requirement may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages.49 However, one should consider that in case of opinion polls, at least 50 % of the addressees have to perceive the sign as a trade mark, because otherwise the majority of addressees would not have this perception.50 When dealing with opinion polls and market surveys, OHIM will determine the probative value by the status and degree of independence of the entity conducting the poll/survey, by the relevance and accuracy of the information it provides and by the reliability of the applied method.51 The evidence should show examples of how the mark is used, and also demonstrate the duration and continuation of use, i. e. when use commenced and that it has not been interrupted subsequently. The examiner, when deciding on whether or not the submitted evidence of use is sufficient to prove acquired distinctiveness of the mark, will take into consideration the nature of the trade concerned, the manner in which the goods and services are provided to the relevant public, and will weigh the extent to which the mark is, on its face, lacking distinctiveness against the evidence of use. If the mark is accepted for registration (in whole or in parts) on the basis of Art. 7 (3) CTMR, then this information must be published pursuant to Rule 12 (i) CTMIR. In practise, the publication in the CTM Bulletin is done by using the INID Code 521 without any further indication or explanation.52 If, in spite of the submitted evidence of use, the

48 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination; Section 4: Absolute Grounds for Refusal, no. 2.6.7. 49 CJ Case C-108/97 – Windsurfing Chiemsee, mn. 52; Niedermann, IIC 2006, 260. 50 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 57. 51 Niedermann, IIC 2006, 260, 267. 52 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part B: Examination; Section 4: Absolute Grounds for Refusal no. 2.6.9.

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examiner determines that the CTM application still falls foul of Art. 7 (1) CTMR because the evidence was not convincing, then a refusal letter will be send, which must explain why the mark falls foul of any of the grounds mentioned in Art. 7 (1) CTMR, plus separate reasoning as to why the applicant’s claim as to the acquired distinctiveness of the mark failed, and a statement on the availability of an appeal.53

II. Disclaimer, Art. 37 (2) CTMR 1. General Art. 37 (2) CTMR provides that OHIM may (depending on certain requirements), as a condition for the registration of the trade mark, request a statement from the applicant that he disclaims any exclusive right to a particular element of the mark. The provision is supplemented by Rule 11 (2) CTMIR, which obliges OHIM to notify the applicant if the registration of the CTM is subject to a disclaimer, thereby stating the reasons, and to invite the applicant to submit the required disclaimer within a specified time period (usually two months). An effective disclaimer can only be submitted for the CTM as a whole and not for single goods and/or services only.54 Similarly, a statement not to use the mark in some areas of the EU is not sufficient. In OHIM’s practise, disclaimers are requested only on rare occasions.55 32 A disclaimer may also be submitted voluntarily by the applicant together with the CTM application, Rule 1 (3) CTMIR. Such voluntary disclaimer, even if quite common in other jurisdictions, does not seem advisable56, since it would remain part of the records even if the examiner does not consider a disclaimer necessary and the applicant would thus limit the scope of protection of his mark without it being necessary to do so. 31

2. Requirements 33

Pursuant to Art. 37 (2) CTMR, OHIM is only entitled to request a disclaimer if – an element of the mark is concerned, – which is not distinctive, and if – the inclusion of that element could give rise to doubts as to the scope of protection of the trade mark.

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a) Element of the mark. A CTM suitable for registration consists of one or more elements. If a mark only consists of one element, then a disclaimer is not possible, as there has to be an element that makes the trade mark eligible for protection.57 If the mark consists of several elements, the disclaimer can refer to only one or to multiple elements, but not to a combination of elements. Further, it is neither possible to submit an effective disclaimer for marks or descriptive terms that differ from the CTM

53 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.2. 54 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 30. 55 Hall in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, p. 128; Pohlmann, Verfahrensrecht der Gemeinschaftsmarke, p. 92. 56 Annand/Norman, Guide to the Community Trade Mark, p. 79. 57 GC Case T-295/01 – Oldenburger, mn. 64.

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application, nor is it possible to effectively disclaim the use of a mark in a specific colour if the mark is graphically represented in black and white (no ‘negative colour claim’).58 b) Non-distinctiveness of the element. OHIM may request a disclaimer only with 35 regard to elements which are not distinctive. Elements which designate the kind, quality, quantity, value or geographical origin of goods or services do not need to be disclaimed. The same applies to ordinary words which would be common to many marks (‘the’, ‘of’, etc.).59 Where a mark consists of a combination of elements, each of which in itself is clearly not distinctive, then there is no need for a disclaimer of the separate elements (e. g. pursuant to OHIM’s Examination Guidelines, ‘Alicante Local and International News’ as trade mark of a periodical would not require separate disclaimers for the individual elements; however, one may ask whether this particular mark – as a word mark – could be registered at all).60 Pursuant to OHIM’s Examination Guidelines, (voluntary) disclaimers of distinctive 36 elements ‘must be refused by the examiner, since they would result in a trade mark with an unclear scope of protection’.61 However, in contrast, OHIM’s former Proceedings Manual stated that Art. 37 (2) CTMR does not prohibit OHIM from accepting (voluntary) disclaimers over distinctive elements, and thus ‘applicants may also disclaim any exclusive right to any distinctive element in the trade mark’.62 Since OHIM’s former Proceedings Manual has been converted into OHIM’s current Examination Guidelines in the course of 2014 (see mn. 1 above), and the passage cited above has not been transfered into the Guidelines, it can be assumed that such view is no longer to be expected. Further, the view expressed in OHIM’s current Examination Guidelines is convincing, because (apart from the fact that a voluntarily disclaimer over a distinctive element of the mark is generally not advisable for applicants and will thus only occur in rare cases anyway) it seems reasonable to establish a practice where, as a rule, examiners should consistently refuse disclaimers over distinct elements, in order to avoid any confusion with regard to the scope of protection of the mark. c) Doubts as to the scope of protection of the trade mark. When assessing whether 37 the inclusion of a non-distinctive element could give rise to doubts as to the scope of protection of the trade mark, OHIM applies a restrictive approach and does not take into account any elements that are obviously not distinctive or typical elements or ordinary common words (see mn. 35 above). The requirement might be fulfilled in cases where the descriptive character of a particular element of the mark is not obvious or where the descriptive element optically overshadows the distinctive element.63

58

Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 30. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination; Section 2: Formalities no. 13. 60 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal and Community Collective Marks no. 1.7; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 13. 61 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.7. 62 OHIM, The Manual Concerning Proceedings Before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part B: Examination; Section 4: Absolute Grounds for Refusal and Community Collective Trademarks no. 1.4.4 (outdated). 63 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 33. 59

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CTMR Art. 37

Community Trade Mark Regulation

3. Effects of the disclaimer A disclaimer pursuant to Art. 37 (2) CTMR has the effect that the proprietor of the mark is prevented from referring to the distinctiveness of the disclaimed element.64 Or, in other words, as used by the GC, the use of disclaimers is a method ‘to make apparent the fact that the exclusive rights of the proprietor of a mark do not extend to the nondistinctive elements of that mark’, so ‘applicants may know that the non-distinctive elements of a registered mark in respect of which a disclaimer is made remain available for use’.65 Accordingly, there will be no likelihood of confusion with a mark that coincides only in a disclaimed element.66 39 In this respect, the disclaimer serves to define the scope of protection of the mark. If, e. g., a figurative mark contains two words and both are disclaimed, then the scope of protection of the mark is reduced to the precise manner and sequence in which the two words are combined.67 In contrast, the disclaimer regarding a particular element of the mark does not help to overcome a lack of distinctiveness of the overall mark in cases where all individual elements as well as their combination are not distinctive.68 40 With a view to opposition proceedings, the disclaimer is binding for OHIM and has the compulsory effect that the element in question must be considered lacking distinctiveness, even if upon independent analysis it appears to be distinctive.69 Thus, if a disclaimer has been made for the earlier mark, the proprietor of that mark is prevented from successfully invoking rights in the disclaimed element. If a disclaimer has been made for the later CTM application, then it is of no relevance for the opposition, as the proprietor of the CTM application cannot unilaterally reduce the scope of protection of the earlier mark.70 41 The legal rationale for allowing disclaimers has been the difficulty of judging conflicts between marks consisting of elements which as such would not be registered. However, although the provision regarding disclaimers is included in Art. 37 CTMR, a disclaimer has no impact on the protection of the mark, because a disclaimer cannot protect a mark that is descriptive or lacks distinctiveness.71 The disclaimer only confirms that the relevant element to which it refers is not distinctive, and OHIM will only refuse registration of the mark if it is lacking distinctiveness in its entirety. 38

64 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C: Opposition, Section 2: Likelihood of Confusion, Chapter 4: Distinctiveness no. 2.2.2.3. 65 GC Joined Cases T-425/07 and T-426/07 – 100/300, mn. 19. 66 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C: Opposition, Section 2: Likelihood of Confusion, Chapter 4: Distinctiveness no. 2.2.2.3. 67 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C: Opposition, Section 2: Likelihood of Confusion, Chapter 4: Distinctiveness no. 2.2.2.3. 68 OHIM BoA Dec. of 26/10/1998 – R 45/1998-1 – Display Ware, mn. 14. 69 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C: Opposition, Section 2: Likelihood of Confusion, Chapter 4: Distinctiveness no. 2.2.2.3. 70 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C: Opposition, Section 2: Likelihood of Confusion, Chapter 4: Distinctiveness no. 2.2.2.3. 71 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 33.

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Examination as to absolute grounds for refusal

Art. 37 CTMR

4. Proceeding regarding disclaimers If the examiner takes the view that a disclaimer is necessary, he will notify the 42 applicant accordingly and invite him to submit the required disclaimer within a specified time period, Rule 11 (2) CTMIR (which will usually be a two month time period72). During that time, in accordance with Art. 37 (3) CTMR, the applicant is free to withdraw or amend his application, or he can submit his observations as to why he deems a disclaimer not to be necessary. Should the applicant fail to convince the examiner and not submit the required disclaimer in time, the examiner will refuse the application, Rule 11 (3) CTMIR. If the applicant duly submits the required disclaimer, then the disclaimer will be published together with the granting or the registration of the CTM, as the case may be, Art. 37 (2) CTMR, Rules 84 (2)(l), 85 (2) CTMIR. The examiner is not obliged to request a disclaimer (Art. 37 (2) CTMR reads ‘the 43 Office may request’).73 Accordingly, the examiner’s omission to request a disclaimer cannot be the basis for an annulment of a refusal. This already follows from the principle that a disclaimer cannot protect a non-protectable mark (see mn. 41 above). Disclaimers may also be added to the trade mark application at a later stage, upon 44 receipt of a corresponding statement by the applicant, if appropriate (e. g. if the application is being opposed and the parties agree on the use of a disclaimer to reach a friendly settlement).74

5. Recent discussions A change in the CTM regime regarding the use of disclaimers has been discussed 45 recently following a proposal by the Com. for an amendment of the CTMR, pursuant to which Art. 37 (2) shall be deleted.75 This proposal (which would not lead to a complete abolition of disclaimers in the CTM system, because it would not affect the option for applicants to submit a voluntary disclaimer) has been subject to diverging opinions. The German Association for the Protection of Intellectual Property (GRUR) has 46 supported the proposal for a deletion of the disclaimer provision in Art. 37 (2) CTMR76. Further, also MARQUES (a European association representing the interests of trade mark owners) has expressed its agreement with the Com.’s proposal in this regard.77 Already in 2011, in its ‘Study on the Overall Functioning of the European Trade Mark System’, the Munich based Max Planck Institute for Intellectual Property and Competition Law (MPI) had suggested deleting Art. 37 (2) CTMR as well as the rules in the CTMIR relating to the request of disclaimers, and setting out instead in the Preamble of the CTMR that a finding of a likelihood of confusion, cannot be based on elements which are not distinctive or otherwise not eligible for protection.78 72 Annand/Norman, Guide to the Community Trade Mark, p. 79; Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 37 mn. 40. 73 GC Case T-295/01 – Oldenburger, mn. 64; Morcom/Roughton/St. Quintin, The Modern Law of Trade Marks, p. 909 No. 29.4. 74 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 2: Formalities, no. 13 75 Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark, COM (2013) 161 final, Art. 1 no. 35. 76 GRUR, Opinion on the Proposal of the EU Commission for an Amendment of the Community Trade Mark Regulation, as of 1/7/2013 p. 14 no. 3.6. 77 MARQUES, Comments on EU Commission Proposals for Amendments of the EU Trade Mark System, as of 19/4/2013, p. 11. 78 MPI Munich, Study on the European Trade Mark System, as of 15/2/2011, p. 76 et seq. no. 2.49.

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CTMR Art. 37

Community Trade Mark Regulation

By contrast, some groups have opposed the proposal of a deletion of Art. 37 (2) CTMR. The European Communities Trade Mark Association (ECTA) has argued that ‘the use of disclaimers is to the benefit of the legal certainty of third parties’ and that the Com. ‘rather than proposing to eliminate this possibility, should insist the Office to make more use of it’.79 The European Brands Association (AIM) has also endorsed the use of disclaimers as ‘a useful means to limit the scope of protection for trade marks and thus provide an upfront possibility to avoid potential conflicts’.80 In the same sense, the Colegio Oficial de Agentes de la Propriedad Industrial (COAPI) has suggested that OHIM ‘should make better use of the mechanism of disclaimers to make the real scope of protection of registered trade marks more transparent for applicants and for third parties’, which would ‘facilitate taking decisions concerning which trade marks should be opposed and […] screening new trade marks to be used and/or registered through searches’.81 48 The benefit of a disclaimer when judging the overall impression of the conflicting marks should not be overestimated. Further, it has to be borne in mind that the disclaimer is only visible in the CTM register, while the public, to which the marks are addressed, is usually entirely unaware of its existence.82 Against this background, the current disclaimer provision and its (reluctant) application by OHIM appear dispensable and it seems to be sufficient to leave the possibility for applicants to add disclaimers on a voluntary basis at any point in the lifetime of a CTM. 47

III. Rights of the applicant, Art. 37 (3) CTMR Pursuant to Art. 37 (3) CTMR, the CTM application shall not be refused before the applicant has been allowed the opportunity of withdrawing or amending the application or of submitting his observations. Rule 11 (1) CTMIR substantiates OHIM’s obligation to warrant the applicant’s right to be heard before a decision is rendered by determining that the applicant must be notified of the grounds for refusing registration and be given a specific time period within which he may withdraw or amend the application or submit his observations. 50 The applicant’s right to be heard during the examination process has to be seen in conjunction with Art. 75 CTMR, pursuant to which OHIM’s decisions shall state the reasons on which they are based. OHIM’s decisions shall be based only on reasons or evidence about which the parties concerned have had an opportunity to present their comments. This opportunity must be respected with regard to every ground for refusal that is raised by the examiner during the examination process. Accordingly, separate clear and detailed reasoning must be given by the examiner in the objection letter with regard to each ground for refusal, in order to enable the applicant (and/or his advisor(s), as the case may be) to challenge the validity of the examiner’s arguments. The examiner 49

79 ECTA, Preliminary comments on the Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark, as of 24/6/2013, p. 6 no 4. 80 MPI Munich, Study on the European Trade Mark System, as of 15/2/2011, Annex IV: Statements of User Organizations, p. 20. 81 COAPI, Observations on the document from the European Commission ‘Study on the overall functioning of the Trade Mark system in Europe (MARKT/2009/12/D) dated 22/07/2009’, as of 11/3/ 2010, p. 12 No. 5.2 (5), published in Annex IV to MPI Munich, Study on the European Trade Mark System, as of 15/2/2011. 82 MPI Munich, Study on the European Trade Mark System, as of 15/2/2011, p. 76 no. 2.44.

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Examination as to absolute grounds for refusal

Art. 37 CTMR

must determine an appropriate time period within which the applicant’s response has to be submitted (usually two months). Apart from obvious and generally known facts, the examiner in his reasoning has to provide the applicant with all pieces of information on which his objection is based, e. g. search results from Internet websites83, to give the applicant a chance to prepare a substantive response. If the applicant holds the view that the mark should be registered as applied for and thus disagrees with the examiner’s reasoning in the objection letter, he is free to submit his observations and to present his deviating view on the factual and legal assessment of the mark. These observations may include a claim of acquired distinctiveness (Art. 7 (3) CTMR) through use of the mark, which can also be used as an argument, as distinct from seeking registration on the basis of original distinctiveness, supplemented by the necessary evidence of use84. At all stages of the proceedings, the examiner has to carefully consider the observations submitted by the applicant as well as, of his own motion, new facts or arguments that plead in favour of acceptance of the mark85 (see above mn. 4, 16). If the examiner, after having received the applicant’s observations, takes the view that another ground for refusal is at hand, then he is not prevented from shifting his assessment to that new ground. However, in such circumstances, the examiner is obliged to inform the applicant about this shift and the new ground for refusal, and he has to give his detailed reasoning regarding the new ground for refusal and must, once more, specify an appropriate time period for the applicant to submit observations. In many cases, objections raised by the examiner can be overcome by amending the application with regard to the list of goods and services. If the objection relates, e. g., to descriptiveness regarding only some of the goods and services, the applicant can overcome the objection by deleting those goods and services. If the applicant is successful in convincing the examiner that the mark is eligible for registration, and provided that all formal requirements are met and the classification is acceptable, then OHIM will send a comfort letter regarding the protection of the mark. In the comfort letter, OHIM usually informs the applicant about the translations and searches still to be conducted, and also points out that a subsequent objection due to absolute grounds for refusal is possible. A subsequent objection can occur at any time prior to the registration of the mark, even after its publication.86 Pursuant to Art. 37 (1) and (3) CTMR, Rule 11 (3) CTMIR, the application will be refused if the applicant fails to overcome the ground(s) for refusing registration The refusal of the mark can be in whole or in part, and must be accompanied by OHIM’s reasoning and a notice on the possibility of filing an appeal within two months from notification of OHIM’s decision, Rule 52 CTMIR. In cases where an absolute ground for refusal exists for only some of the goods and/or services of the CTM application, the refusal will be limited to those goods and/or services. If the applicant wishes to appeal such partial refusal, but also desires a quick publication of the approved part of the CTM application, there is then the possibility of dividing the application in accordance with Art. 44 CTMR. Although a refusal of registration and a withdrawal of the application have the same legal consequence, i. e. the failure to achieve registration of the trade mark, a withdrawal 83

CJ Case C-447/02 – KWS/Orange, mn. 44; GC Case T-242/02 – TOP, mn. 61. Morcom/Roughton/St. Quintin, The Modern Law of Trade Marks, p. 909 no. 29.4. 85 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B: Examination, Section 4: Absolute Grounds for Refusal no. 1.2. 86 GC Dec. Of 8/7/2004 – T-289/02 – Telepharmacy Solutions, mn. 60. 84

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CTMR Art. 38

Community Trade Mark Regulation

may bring about an economic or strategic advantage. The applicant might have an interest in preventing the publication of a refusal of registration regarding his mark, e. g. with a view to the eligibility for registration of the mark in other jurisdictions or to arguments against the strength of alleged (possibly unregistered) rights in the mark.87 Accordingly, the applicant may consider at any time, in particular after having received OHIM’s objection letter(s), to withdraw his application in whole (or in parts as to certain goods and/or services).

SECTION 2 Search Article 38 Search 1. The date of filing of an application for a registered Community design shall be the date on which documents containing the information specified in Article 36 (1) are filed with the Office by the applicant, or, if the application has been filed with the central industrial property office of a Member State or with the Benelux Design Office, with that office. 2. By derogation from paragraph 1, the date of filing of an application filed with the central industrial property office of a Member State or with the Benelux Design Office and reaching the Office more than two months after the date on which documents containing the information specified in Article 36 (1) have been filed shall be the date of receipt of such documents by the Office. Content A. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Allocation of a filing date . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2

A. General 1

The allocation of a filing date is of great significance to the applicant as, above all, it determines the time rank of the RCD vis-a`-vis third parties, which is relevant not only for the examination of its novelty/individual character1 in the course of a potential invalidity proceeding, but also for its enforcement in a potential infringement action. Besides, the applicant may use the filing date of the RCD to establish a right of priority for subsequent design applications according to Art. 41 or Art. 4 of the Paris Convention.2 Also, the filing date is determinative for the term of protection of the RCD according to Art. 12.

87

Hall in Gielen/v. Bomhard, Concise European Trade Mark and Design Law, p. 130. S. above Artt. 5 and 6. 2 S. below von Bismarck/Jacobs, Art. 41 et seq. 1

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Publication of the application

Art. 39 CTMR

B. Allocation of a filing date As a general rule, the filing date of an RCD application is the day on which it is 2 received by OHIM or the respective national office (for the following, the Benelux Design Office shall be considered a national office for simplification purposes), provided that the filing date requirements as set forth by Art. 36 (1) in conjunction with Art. 10 (1), 4 (1)(d) and (e) CDIR are met, i. e. that the application contains (i) a request for registration, (ii) information identifying the applicant as well as (iii) a representation of the design suitable for reproduction, or – alternatively to the representation and where applicable – a specimen.3 An exception of this general rule applies, however, where the application was filed at 3 a national office,4 but is received by OHIM more than two months after its initial filing. In this case, the filing date is the date on which the application is actually received by OHIM, Art. 38 (2), regardless of the reason for the delay. Even though Art. 35 (2) provides that the national office has to take all necessary steps to forward the application to OHIM within two weeks, the applicant has no control as to the timely forwarding of his application. Nor does the CDR provide for any sanctions vis-a`-vis the national office or claim for recourse in favour of the applicant. Therefore, this rule constitutes one of several disadvantages that the filing at a national office entails.5 Where the application does not comply with the requirements as set forth in Art. 36 4 (1), OHIM will issue an examination report requesting the applicant to remedy the indicated deficiency within a time limit of two months, Art. 46 (1) in conjunction with Art. 10 (2) CDIR. In this case, the filing date will be the date on which the deficiencies are remedied, Art. 46 (2). With respect to the special case of filing by way of fax transmission and the subsequent sending of a confirmation copy, see Art. 35 mn. 9.

SECTION 3 Publication of the application Article 39 Publication of the application An application for a registered Community design which has been accorded a date of filing shall, in the Member States, be equivalent to a regular national filing, including where appropriate the priority claimed for the said application. According to Art. 39, an RCD application has the same effect as a regular national 1 filing in one of the EU member states. The provision corresponds with Art. 32 CTMR. In light of the fact that the CDR system does not provide for the possibility to convert an RCD application into single national design applications (as provided for CTMs under Art. 112 CTMR), the practical relevance of Art. 39 seems rather doubtful, however.1 If at 3 For details see above Art. 36, mn. 4 et seq. In contrast to the CTM system, the payment of fees is not a filing date requirement with respect to an RCD application. 4 See above Art. 35 for further details on the alternative filing system. 5 S. above Art. 35, mn. 2. 1 Likewise Ruhl, Gemeinschaftsgeschmacksmuster, Art. 39, mn. 1.

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CTMR Art. 40

Community Trade Mark Regulation

all, it may be relevant with respect to priority claims according to Art. 4 (2) of the Paris Convention,2 or where the single Member States allow infringement proceedings on the basis of a design application (and the RCD has not yet been registered).3 However, since the RCD registration process has accelerated considerably over the last years4 the latter scenario is likely to be of practical relevance only in extremely rare cases.5

SECTION 4 Observations by third parties and opposition Article 40 Observations by third parties (1) Following the publication of the Community trade mark application, any natural or legal person and any group or body representing manufacturers, producers, suppliers of services, traders or consumers may submit to the Office written observations, explaining on which grounds under Article 7, in particular, the trade mark shall not be registered ex officio. They shall not be parties to the proceedings before the Office. (2) The observations referred to in paragraph 1 shall be communicated to the applicant who may comment on them. Bibliography: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition 2014; Gielen/v. Bomhard, Concise European Trade Mark and Design Law, 2011; v. Kapff, ‘Anmerkungen eines Dritten aus der Praxis’, MarkenR 2006, 261; Schramek, ‘Bemerkungen Dritter’ in der Praxis’, MarkenR 2006, 150.

Content I. Scope . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Standing to submit observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Submission of the observations. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Language of an observation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Observations occurring in addition to a notice of opposition . . . . . 3. Enclosure of supporting evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Timing of an observation. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Grounds of observation. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Legal consequences . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 4 5 6 8 10 11 15 16

I. Scope 1

Art. 40 [ex. Art. 41] enables interested third parties to intervene in the registration procedure without becoming a party directly involved in the registration procedure by drawing the attention of the Office to the existence of grounds for refusal, which should 2 Gonza ´lez-Bueno/v. Bomhard, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 39; Ruhl, Gemeinschaftsgeschmacksmuster, Art. 39, mn. 1; Stone, European Union Design Law, mn. 14.82. 3 As suggested by Stone, European Union Design Law, mn. 14.83. 4 The regular timespan up to registration is ten working days (provided all mandatory requirements are met), see Sec. 2.7.1 of the OHIM Guideline for the Examination of RCD Applications. Where the applicant makes use of OHIM’s fast track design option, the registration process takes only two working days, see above Art. 35 mn. 7 for details/requirements. 5 Likewise Stone, European Union Design Law, mn. 14.84.

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Observations by third parties

Art. 40 CTMR

have led to the rejection of the application instead of its publication.1 Aside from the action for invalidity pursuant to Artt. 56 et seq.2, the observations by third parties according to Art. 40 constitute the only remedy available to third parties after registration of a Community trade mark.3 The indirect participation by third parties thus constitutes a complementary action to the official examination,4 assisting the examiner and providing additional information. Third party observations are being brought for in about 200 instances per year5 and 2 led to the re-examination and refusal of a Community trade mark application in many cases.6 They are of particular importance with regard to descriptive trade marks.7 The Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing 3 Council Regulation (EC) No 40/94 on the Community trade mark (as amended)8 (‘CTMIR’) does not contain any specific provision on the application of Art. 40,9 but nonetheless provides guidance in certain aspects. The practice of the Office with regard to third party observations is stated in Communication No 2/09.10

II. Standing to submit observations Pursuant to Art. 40 (1) any natural or legal person11 and any group or body 4 representing manufacturers, producers, suppliers of services, traders or consumers12 may submit written observations to the Office. Therefore, Art. 40 (1) gives third parties standing to submit observations irrespective of any specific interest or need for legal relief. The only natural or legal person excluded is the applicant of the Community trade mark.

III. Submission of the observations Even though Rule 83 CTMIR does not provide a specific form for the submissions of 5 observations, pursuant to Rule 79 CTMIR all communications addressed to the Office, 1 Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 40, No. 1, p. 134. 2 See below Vos, Art. 56, mn. 1 et seq. 3 ‘The publication of a trade mark is not a final decision that concludes the preceding examination procedure, but merely an interim order which does not create a finalised legal position. A CTM applicant must always be prepared for the possibility that registration may be refused due to the existence of absolute grounds, even after publication’, OHIM Dec. of 19.9.2001 – R 826/2000-3 – OLDENBURGER, mn. 15. 4 Which the Office is obligated to do ex officio pursuant to Artt. 37 (1), 76 (1), see above LensingKramer/Dittschar, Art. 37, mn. 2 and Bo¨ckenholt, Art. 76, mn. 5 et seq. 5 Schennen, in: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 40, mn. 4. 6 Numerous examples given by Schramek, MarkenR 2006, p. 150 et seq. 7 With 23 official languages and many more dialects and regional languages spoken, third parties necessarily have to assist the Office, see OHIM, Dec. of 12.11.2010 – R 312/2010-2 – ESPETEC. 8 OJ L 123, 27.4.2004 p. 85–87. 9 Nonetheless the rules of the Implementation Regulation regarding proceedings before the Office do also apply. 10 Communication No. 2/09 of the President of the Office of 9.11.2009 concerning observations under Art. 40 of the Community trade mark Regulation, OJ OHIM 2009, No. 12. 11 With regard to the capacity to act for legal persons see above Hasselblatt, Art. 3, mn. 11. 12 For definition of ‘any group or body representing manufacturers, producers, suppliers of services, traders or consumers’ see Art. 56 (1)(a) and Art. 66 (1) sentence 2.

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CTMR Art. 40

Community Trade Mark Regulation

including observations, shall be submitted in writing and can be accompanied by the appropriate means of evidence. Nevertheless, as stated above, the submission of observations does not start a separate procedure and the party does not join in the proceedings before the Office, which remain purely ex parte.

1. Language of an observation Since observations have to be related to a Community trade mark application, which must be filed in one of the five languages of the Office, namely Spanish, German, English, French or Italian, observations in these five languages are accepted by the Office. The Office concluded in Communication No 2/09 that observations by third parties can additionally be submitted in a language in which the Community trade mark application was filed. 7 This does not constitute an unreasonable disadvantage and is also consistent with the wording of Art. 40 (2) providing merely for the transmission of the observations to the applicant for comments.13 The applicant, thus, does not have to respond to the observations by third parties, but only to the official letters by the Office, which are sent in the application language of the Community trade mark. 6

2. Observations occurring in addition to a notice of opposition It is also possible for an opponent pursuant to Artt. 41, 42 to file third party observations in addition to the opposition proceeding.14 These two different procedures will be examined by the Opposition Division on the one hand and an examiner on the other. 9 As opposition proceedings can only be based upon the six grounds listed in Art. 41 (1)15, an opponent having filed an opposition pursuant to Artt. 41, 42 has to submit separate statements for the grounds of a third party observation pursuant to Art. 40.16 Even though observations by third parties should not blur the line between absolute and relative grounds for refusal, it is considered sufficient to just make the statements regarding relative grounds for refusal clearly stand out.17 8

3. Enclosure of supporting evidence 10

Observations by third parties should be clear and explain the grounds for refusal and, if necessary, provide appropriate evidence in support of the grounds relied upon.18

13 Disagreeing Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 40, p. 134, stating that, once submitted, ‘the observations become part of the proceedings between the Office and the applicant and it is reasonable to assume that they should be filed in one of the two languages of the proceedings’. 14 Arguments relating to absolute registrability of CTMs made in opposition proceedings are not admitted. Therefore where the opponent wishes to raise grounds relating to the registrability of theses trade marks as such, he must do so on a separate submission pursuant to Art. 40, Communication No 2/09. 15 See Artt. 41 (1), 132. 16 Communication No 2/09; Schennen, in: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 40, mn. 9; CJ Case C-224/01 Nu-Tride/Tufftride [2003] ECR I-10239. 17 See OHIM, MittdtPatA 2006, p. 464 – M&M Minis/Smarties; v. Kapff, MarkenR 2006, 261; disagreeing Schennen, in: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 40, mn. 9. 18 See below Bo ¨ ckenholt, Art. 78, mn. 38 et seq. for greater detail.

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Observations by third parties

Art. 40 CTMR

4. Timing of an observation Pursuant to Art. 40 (1) observations can be made by third parties once an application has been published19 and until the Community trade mark has been registered. The Office accepts observations received within the opposition period pursuant to Art. 42 (three months from the date of publication)20 or filed before pending oppositions are concluded.21 The Office will, for information purposes only, communicate any observations received after the expiry of this period to the applicant, indicating that they have been received late.22 Since information provided regarding the Community trade marks is available to third parties prior to the publication on CTM-Online, it may occur that third parties raise objections pursuant to Art. 40 (1) even before the publication date of a Community trade mark. Due to the ex officio examination principle, the examiner is nonetheless obliged to take into account even those observations having been filed before the mark’s publication date. Such premature observations will be treated as admissible, since there is no reason for third parties to wait for the official publication.23

11 12

13

14

IV. Grounds of observation Art. 40 refers in particular to absolute grounds for refusal pursuant to Art. 7. In 15 addition, third parties can base their observations on a violation of Art. 5 regarding the ability to be a proprietor of a Community trade mark as well as the specific requirements for collective marks, Artt. 69, 68.24 Not admissible, however, are observations concerning relative grounds for refusal pursuant to Art. 8 or the performance of a formal requirement (such as mandatory representation).25

V. Legal consequences All observations are forwarded to the applicant, who may submit comments where 16 appropriate. The Office issues a receipt to the observer confirming that the observations have been received and forwarded to the applicant. Failure to forward observations received by the Office to the applicant is, however, irrelevant in order to determine the admissibility of the observations if the applicant is not prejudiced by such failure. 19 The term ‘publication’ is interpreted broadly, so as to cover any systematic public disclosure by the office of particulars of Community trade mark applications, Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 40, No. 1, p. 134. 20 Previously it was the OHIM’s practice to grant a four months’ period, due to the time gap between the end of the opposition period and the collection of the registration fee. With the discontinuation of the registration fee respectively its reduction to zero there is no longer such a gap and the CTM is registered immediately once the opposition period has lapsed without oppositions filed. 21 If opposition proceedings have been initiated, this means that observations can be filed up until the closing of the opposition proceedings, which can extend even up to the closing of an appeal case that has followed an opposition decision. 22 Communication No. 2/09. 23 Schramek, MarkenR 2006, p. 150, 152. 24 For observations by third parties with regard to collective marks see below, Nordemann, Art. 69, mn. 1. 25 Schennen, in: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 40, mn. 2.

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CTMR Art. 41

Community Trade Mark Regulation

Since the observer is not a party to the proceedings, the Office does not inform him of any proceedings.26 Otherwise the observer, even though being merely a third party to the proceedings, could again submit observations, reacting to the arguments by the Office or the applicant, resulting in a procedure contrary to the inter-partes-provisions in Art. 40. The observer can, however, consult CTM-Online in order to check the status of the relevant Community trade mark application, especially by way of an inspection of the files pursuant to Art. 88.27 18 The Office considers whether observations submitted are well founded, that is, whether a ground of observation as mentioned above exists. If so, the Office issues an objection and may refuse the Community trade mark application pursuant to Art. 37 (1) if the objection is not overcome by the applicant’s comments or by restriction of the list of goods and services. The Office shall specify a period within which the applicant may withdraw or amend the application or submit his observations.28 19 The examination usually concludes within one month after receiving the observations. The final decision for an objection rests solely with the examiner. If an objection is not granted by the examiner there is no remedy for a third party, in particular no right to appeal nor appeal proceedings corresponding to Artt. 58, 59.29 Rather, the observer has to wait for registration of the trade mark and can then bring forward an application for the invalidity of the trade mark. 20 The faulty rejection of observations by a third party cannot be considered a procedural defect,30 as there is no obligation by the Office to take the arguments by the observer into account. 17

Article 41 Opposition (1) Within a period of three months following the publication of a Community trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Art. 8: (a) by the proprietors of earlier trade marks referred to in Art. 8 (2) as well as licensees authorized by the proprietors of those trade marks, in respect of Art. 8 (1) and (5); (b) by the proprietors of trade marks referred to in Art. 8 (3) (c) by the proprietors of earlier marks or signs referred to in Art. 8 (4) and by persons authorised under the relevant national law to exercise these rights. (2) Notice of opposition to registration of the trade mark may also be given, subject to the condition laid down in paragraph 1, in the event of the publication of an amended application in accordance with the second sentence in Art. 43 (2). (3) Opposition must be expressed in writing and must specify the grounds on which it is made. It shall not be treated as duly entered until the opposition fee has been paid. Within a period fixed by the Office, the opponent may submit in support of his case facts, evidence and arguments. Bibliography: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition 2014; Doepner-Thiele, ¨ LKL”’, GRUR-Prax ‘Benutzungsnachweis im Widerspruchsverfahren erfordert konkrete Belege – “VO 2012, 28; Gielen/v. Bomhard, Concise European Trade Mark and Design Law, 2011; v. Kapff, ‘Fishbone: 26

Unlike previous practice by the Office. See below Staber, Art. 88, mn. 39 et seq. 28 Schennen, in: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 40, mn. 13 et seq. 29 See also CJ Case C-224/01 Nu-Tride v Tufftride [2003] I-10239. 30 Schennen, in: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 40, mn. 17. 27

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Opposition

Art. 41 CTMR

Erst die Gra¨ten, spa¨ter das Fleisch’, GRUR-Prax 2013, 371; Kapnopoulou, ‘Die Problematik der verspa¨teten Zahlung der Widerspruchsgebu¨hr in der Entscheidungspraxis des Harmonisierungsamts fu¨r den Binnenmarkt’, MarkenR 2000, 160.

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Filing of opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Notice of opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Opposition deadline. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Payment of opposition fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Standing to oppose . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Language. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Grounds of opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Earlier trade mark registrations or applications . . . . . . . . . . . . . . . . . . . . . . 2. Earlier trade mark registration or applications with a reputation. . 3. Earlier well-known trade marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Agent’s mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Earlier non-registered marks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Earlier signs used in the course of trade . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Opposition of amended applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Admissibility of opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Revision and changes of procedural practice in opposition proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Introductory remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Absolute admissibility requirements. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Identification of the contested Community trade mark . . . . . . . . . b) Identification of the earlier marks/rights . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Earlier trade mark registration or applications with a reputation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Earlier well-known mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . e) Agent’s mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . f) Earlier non-registered marks and earlier signs used in the course of trade. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . g) Earlier rights that are not earlier . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . aa) Opposition based on a mark/right that is not earlier. . . . . . . . bb) Opposition based on both earlier and non-earlier marks/ rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Identification of grounds . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Relative admissibility requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Dates . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Representation of earlier mark/sign. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Goods and services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Earlier mark with a reputation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . e) Indication of the opponent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . f) Company name rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . g) Inadmissible opposition. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Optional indications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Extent of the opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Reasoned statement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Cooling-off period. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Commencement of opposition proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Extension of cooling-off period . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Expiry of cooling-off period . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Settlement during cooling-off period . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Settlement after the cooling-off period. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Suspension. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VII. Particular procedural issues. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Multiple opponents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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CTMR Art. 41

Community Trade Mark Regulation

2. Change of parties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Transfer of earlier Community trade mark . . . . . . . . . . . . . . . . . . . . . . . b) Transfer of earlier national registrations . . . . . . . . . . . . . . . . . . . . . . . . . . c) Transfer of the contested Community trade mark application d) Change of names . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . e) Change of representatives. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Multiple oppositions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VIII. Substantiation of the opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Proof of existence and validity of earlier rights . . . . . . . . . . . . . . . . . . . . . . 2. Translations of evidence and trade mark registration. . . . . . . . . . . . . . . 3. Proof of renewal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Substantiation of well-known marks, claims of reputation, agents trade marks and earlier signs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Well-known marks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Marks with a reputation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Mark filed by an agent or representative . . . . . . . . . . . . . . . . . . . . . . . . . . d) Non-registered mark or other signs used in the course of trade. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Sanction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Opposition against international trade marks . . . . . . . . . . . . . . . . . . . . . . . .

85 86 89 93 95 96 97 100 103 108 111 113 113 114 115 116 117 118

I. General Artt. 41 and 42 govern opposition proceedings which enable third parties to prevent the registration of trade marks interfering with their prior rights. Thus, within a period of three months following the publication of a Community trade mark application, Art. 39, the owner of older trade marks or other earlier rights can file for an opposition based on relative grounds of refusal according to Art. 8. 2 A detailed overview of the opposition proceedings, Art. 41, and the evidence of use, Art. 42 (2) and (3), can be found in Rules 15–22 CTMIR1 and a general outline of the opposition proceeding was former given in The Manual Concerning Opposition, Part I: Procedural matters.2 The Office has now transformed its current Manuals and Guidelines into a new set of Guidelines and on 1 February 2014 Work Package 1 of the updated Guidelines came into force.3 The following explanations are based on these Guidelines.4 1

1 Commission Regulation (EC) No. 2868/95 of 13 December 1995, amended by Commission Regulation EC No 355/2009 of March 2009 (OJ EC No. L 109 of 30.4.2009, p. 3, applicable as of 1 May 2009), https://oami.europa.eu/tunnelweb/secure/webdav/guest/document_library/contentPdfs/law_and_practice/ ctm_legal_basis/2868_codified_en.pdf. 2 The Manual Concerning Opposition, Part 1: Procedural Matters, https://oami.europa.eu/tunnel-web/ secure/webdav/guest/document_library/Help_Pdfs/faqs/trade_marks/partc_procedural_matters_en.pdf. 3 OHIM, The Guidelines for Examination in the Office for Harmonization in the Internal market (Trademarks and Design) on Community trade marks, Part C: Opposition, Section 1: Procedural Matters are now the source of reference for the Office’s practice,https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/trade_marks/Guidelines/07_part_c_opposition_section_1_procedural_matters_en.pdf, (downloaded on 09. April 2014). On 1 August 2014 the other part of the updated Guidelines (Work Package 2) came into force, https://oami.europa.eu/tunnelweb/secure/webdav/guest/document_library/contentPdfs/law_and_practice/decisions_president/ex14-01_en.pdf, (downloaded on 12. November 2014). https://oami.europa.eu/tunnelweb/secure/webdav/guest/document_librarycontentPdfs/trade_marks/Draft_ Guidelines_WP_2/23_examination_of_applications_for_registered_community_designs_en.pdf. 4 Hereafter to be referred to as Guidelines, WP1. When an opposition is filed against an International registration designating the EC, any reference in the Guidelines, WP1, Part C Opposition, Section 1, must be read to include International registrations designating the EC.

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Opposition

Art. 41 CTMR

The opposition procedure is essentially a written procedure resembling civil litigation 3 between private parties, rather than a contentious administrative procedure. Opposition proceedings are contradictory proceedings. However, the Office has to ensure that each party is given fair opportunity to present its case. Even though Artt. 76 (1) sentence 2, (2), 77 do stipulate oral hearings, such hearings are generally not practiced by the Office.5 Responsible for taking decisions in opposition proceedings are the Opposition Divisions pursuant to Artt. 130 (b), 132. The decisions of the Opposition Divisions shall be taken by three-member groups, Art. 132 (2). Only in certain specific cases, the decisions shall be taken by a single member, Art. 132 (2) sentence 2.6 The Office is restricted to examine the opposition in the light of the facts, evidence and arguments submitted by the parties and of the relief of sought, Art. 76 (2).

II. Filing of opposition The provisions for filing an opposition can be found in Art. 41 and Rule 15 (1) CTMIR. 4

1. Notice of opposition The Notice of opposition has to be filed in written form within the opposition 5 period according to Art. 41 (1) and (3). Filing an electronic opposition is also possible.7 The applicant receives a copy of the Notice of opposition and of any document 6 submitted by the opponent for information according to Rule 16 (a) CTMIR. If the opposition is based on a Community trade mark, the applicant is informed that he can access any information about earlier Community trade marks via CTM-Online, available on the OHIM’s website.

2. Opposition deadline According to Art. 41 (1) the Notice of opposition has to be filed within a period of 7 three months following the publication of a Community trade mark application, Art. 39. In the interests of legal certainty the restitutio in intergrum, Art. 81 (5)8, and the continuation of proceedings, Art. 82 (2)9, are excluded, when the opposition deadline for filing the opposition was missed.

3. Payment of opposition fee The opposition fee in the amount of Euro 350, Art. 2 No. 5 CTMFR10, has to be 8 received by the Office within the opposition period, Art. 41 (3), Rule 18 (1) CTMIR.11 5 Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 42, No. 1, p. 139. 6 See further details in Rule 100 CTMIR. 7 OHIM, Guidelines, WP1, Part C, Section 1, No. 2.1, p. 7. 8 See below, Berger, Art. 81, mn. 132 et seq. 9 See below, Engin-Deniz, Art. 82, mn. 15. 10 Commission Regulation (EC) No. 2869/95 of 13 December 1995, amended by Commission Regulation(EC) No 335/2009 on 31 March 2009, https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/ctm_legal_basis/286995_cv_en.pdf. 11 For general rules of payment see Guidelines, WP1, Part A, General Rules, Section 3, Payment of fees, costs and charges, https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/ trade_marks/Guidelines/02_part_a_general_rules_section_3_payment_of_fees_costs_and_charges_en.pdf.

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If the opposition fee has not been paid within the opposition period or was received after the expiry of the opposition period, the opposition shall be deemed to not have been entered, Art. 41 (3) and Rule 17 (1) CTMIR. The Office will refund the opposition fee and – if appropriate – a surcharge according to Art. 8 (3) CTMFR. However, if the payment was received by the Office within the opposition period but the notice of opposition was received late, the opposition is inadmissible, Rule 17 (2) CTMIR. The opponent must be notified and has two months to comment on the findings of the inadmissibility. The opposition fee will be kept by the Office. 10 In case the opponent or his case representative hold a current account at the Office, the payment is considered effective on the day the Office receives the opposition. 9

4. Standing to oppose 11

12

13

14

15 16

The opposition can only be directed against one single Community trade mark application. If the opposition is directed against different Community trade mark applications, the opposition is inadmissible. A single opposition can be filed on the base of one or more of the grounds provided in Art. 41. However, according to Rule 15 (1) CTMIR, multiple opponents must file separate oppositions, unless such oppositions are based on co-owned prior rights. Licensor and licensee can thus jointly file for an opposition if they both rely on the same prior rights. Multiple opponents, filing a single opposition based on rights separately owned, shall be invited by the Office to appoint only one opponent who shall continue the proceedings. Failure to identify the residual opponent with the prescribed term will result in the dismissal of the opposition with respect to all those grounds of opposition that are not based on co-owned rights.12 According to Rule 15 (1) CTMIR, it is not necessary that all co-owners join in the opposition for the admissibility of the same. The opposition can be based on one or more older trade marks, Art. 8 (2), and/or one or more other earlier rights, Art. 8 (4), if all older trade marks or rights belong to the same owner/owners. If a trade mark and/or an earlier right belongs to several owners, one, more or all owners can file the opposition. The opposition can be addressed against all goods and services covered by the indication or can be restricted and addressed only against parts of the indicated goods and services.13 After expiry of the opposition deadline, no additional grounds of opposition can be submitted.14 According to Art. 41 (1)(a), the opposition must be filed by the proprietor of earlier rights referred to in Art. 8 (2) and can as well be filed by licensees or authorized by the proprietors of those marks, pursuant to, Art. 8 (1) and (5). However, licensees of nonregistered trade marks or other signs used in the course of trade do not have standing to oppose, unless this is specifically permitted by the national laws governing such rights and the conditions set out by such laws are met.15 Art. 41 does not make a distinction between exclusive and non-exclusive licensees as they are both entitled to oppose if authorised by the licensor, and in that this differs from the provision of Art. 22 (3) that permits the exclusive licensee to bring proceedings for trade mark infringement if the 12 OHIM Dec. 11.10.2000 – R 623/1999-1, Yule Catto & Co. plc, Revertex Ltd.Yule Catto Group Ltd and Harlow Chemical Company Ltd v Exxon Corporation, mn. 16. 13 OHIM Dec. of 9.9.2010 – R 848/2009-1 – OMEGA.INFO/OMEGA, mn. 22. 14 OHIM Dec. of 11.4.2011 – R 1589/2010-4 – TAVOLAVERDE/Vinho Verde, mn. 12. 15 Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 41, No. 2, p. 136.

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proprietor of the trade mark, after formal notice of the infringement given by the licensee, does not himself take action.16 An opponent having his domicile in a State other than a Member State or otherwise 17 falling within Art. 92 (2), must be represented by a professional representative in accordance with Art. 93 (1).17

5. Language The opposition has to be filed in one of the five official languages of the Office 18 according to Art. 119 (5).18 If one of the languages chosen by the opponent is identical with the language chosen by the applicant, said language will then be the language of the opposition proceedings. Are the languages different, the opponent is obligated to file a translation in one of the two languages indicated in the application, within a deadline of one month after the expiry of the opposition deadline.19 If this deadline has passed, the opposition is inadmissible according to Rule 17 (3) CTMIR. If the opposition is not filed in one of the languages of the Office, the opposition is inadmissible. According to Rule 19 (3) CTMIR, all facts, evidence and arguments filed by the 19 opponent to complete his file must be in the language of the proceedings. If the submissions have not been filed in the language of the proceedings, they must be translated within the time limits specified for submitting the original document according to Rules 19 (3) and (4) and Rule 20 (1) CTMIR.

III. Grounds of opposition According to Art. 41 (1)(a) to (c), an opposition can be based on six types of earlier 20 rights, all listed as relative grounds for refusal in Art. 8: – Earlier trade mark registrations or applications – Earlier trade mark registration or applications with a reputation – Earlier well-known marks – Agent’s mark – Earlier non-registered trade marks – Earlier signs used in the course of trade

1. Earlier trade mark registrations or applications Earlier trade mark registrations or applicants pursuant to Artt. 41 (1)(a), 8 (2)(a) and 21 (b) and Rule 15 (2)(b) CTMIR are Community trade mark registrations or applications, International registrations designating the EU, national or Benelux trade mark registrations or applications and International registrations under the Madrid Agreement or Protocol having effect in a Member State.20

16

Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 41, No. 2, p. 136. Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 41, No. 2, p. 136. 18 See below, Stamm, Art. 119, mn. 19. 19 Rule 16 (1) CTMIR displacing as lex specialis Rule 96 (1) CTMIR. 20 OHIM, Guidelines, WP1, Part C, Section 1, No. 2.4.1.2, p. 14 – for the definition of earlier marks see Jaeger-Lenz, Art. 8, mn. 21. 17

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2. Earlier trade mark registration or applications with a reputation 22

According to Artt. 41 (1)(a), 8 (5) and Rule 15 (2)(c) CTMIR, oppositions can be based on a registered mark with reputation. Trade marks having a reputation can be used to oppose applications for similar trade marks filed in respect of similar but also of dissimilar goods and/or services. These trade marks must have a certain degree of knowledge among the relevant public21 in a substantial part of the Community.22

3. Earlier well-known trade marks 23

Art. 8 (2)(c) protects well-known trade marks which are ‘well-known’ within the meaning of Art. 6bis of the Paris Convention.23 It is not enough that the mark be well known only in a portion of the territory of the Member State.24 Due to the national interpretation of well known trade mark from one jurisdiction to another within the European Union being very different, and that there is no Community definition, this category is highly controversial. What appears to be undisputed is that a well known trade mark does not have to be registered to be protected as such, unless protection is sought in respect of dissimilar goods and services under Art. 8 (5).25

4. Agent’s mark 24

An agent’s mark is a mark for which the opponent claims that the applicant who has or had a business relationship with him (his agent or his representative) applied for this mark without his consents26 and thus in bad faith. The opponent can file an opposition against the Community trade mark application of an unfaithful agent according to Artt. 41 (1)(b), 8 (3) and Rule 15 (2)(b)(i) CTMIR.

5. Earlier non-registered marks 25

Non-registered trade marks being used to a relevant extent in each Member State can give rise to enforceable rights in that State. These non-registered trade marks can therefore be relied upon to oppose a Community trade mark application if they are of more than local significance according to Artt. 41 (1)(c), 8 (4), Rule 15 (2)(b)(iii) and Rule 17 (2) CTMIR.

6. Earlier signs used in the course of trade 26

Pursuant to Artt. 41 (1)(c), 8 (4), Rule 15 (2)(b)(iii) and Rule 17 (2) CTMIR this category consists of registered earlier signs, for example company names, trade names, business signs, ensigns, titles of protected library/artistic work and the rights to a sign under passing off. The use of the signs in the course of trade in one or more Member States may give rise to enforceable rights under the laws of the same. Depending on the 21

CJ Case C-375/97, General Motors Corporation v Yplon [1999] ECR I-5447, mn. 31. For greater detail below, von Bismarck/Jacobs, Art. 42 (2), mn. 26. 23 See Artt. 41 (1)(a), 8 (2)(c), Rule 15 (2)(b)(i) and (ii) and Rule 17 (2) CTMIR. ~o v Leonci Monlleo´ Franquet [2008], ETMR 12, mn. 17. 24 CJ Case C-328-06, Nieto Nun 25 Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 41, No. 3, p. 137. 26 OHIM, Guidelines, WP1, Part C, Section 1, No. 2.4.1, p. 15. 22

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underlying law of the respective Member State titles of protected literary/artistic works can serve as grounds for opposition.27

IV. Opposition of amended applications In case a Community trade mark gets amended according to Art. 41 (2), the amended 27 application gets published a second time. Art. 43 (2) provides that admissible amendments can only be a correction of the name or address of the applicant, errors of wording or of copying or obvious mistakes but not a substantial change of the trade mark, especially not an amendment of its indication of goods and services.28 According to Art. 41 (2), the second publication starts a new three-month opposition period. However, amended publications can now be opposed only on grounds which were not available at the first time of its publication. Since the possibilities to amend a Community trade mark application are very limited, especially since the indication of goods and services cannot be amended, but only restricted, it will be very seldom that an amended Community trade mark application, being published a second time, will be opposed by a third party. The new opposition deadline is only the possibility for opposing goods and services, which have not been part of the first publication.

V. Admissibility of opposition 1. Revision and changes of procedural practice in opposition proceedings As described above the Office has transformed its current Manuals and Guidelines 28 into the Guidelines, WP 1.29 The following main changes have been introduced: – If an opposition is based on an earlier mark that is not earlier, this issue will be dealt with at admissibility level and not any longer at substantiation level.30 – In case an opposition is directed only against parts of the goods and services of the Community trade mark application, the opponent no longer receives two rounds to determine, which goods and services the opposition will be directed against.31 – The notification informing the parties that the opposition is admissible can from now on be appealed together with the final decision on the case according to Art. 58 (2).32 – Evidence of the existence of the converted Community trade mark needs to be filed at the substantiation stage.33

2. Introductory remarks According to Art. 41 (3), notice of opposition must be in writing and must specify 29 the grounds of opposition. Furthermore, the opposition fee has to be paid until the expiry of the opposition period at the latest. It is recommended to use the form of 27

OHIM Dec. of 07/08/2002 – R 543/2001-2, Disney Enterprises Inc. v Pogola S.A, mn. 22. See below, Vasilescu, Art. 43 (2), mn. 14. 29 See above, von Bismarck/Jacobs, Art. 41, mn. 2. 30 OHIM, Guidelines, WP1, Part C, Section 1, No. 2.4.1.2, p. 14. 31 OHIM, Guidelines, WP1, Part C, Section 1, No. 2.4.2.2, p. 20. 32 CJ Case C-402/11 P Jager Polacek GmbH v. OHIM [2012], not published in the ECR, mn. 75. 33 OHIM, Guidelines, WP1, Part C, Section 1, No. 4.2.2.2, p. 34. 28

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Community Trade Mark Regulation

notice of opposition, provided by OHIM, although its use is not mandatory. It is also recommendable to use the e-opposition form, to be found on OHIM’s website, to submit the opposition electronically.34 Beside the aforesaid conditions according to Art. 41 (3) sentence 1 and Rules 15 to 17 CTMIR additional requirements must be met by the opponent, namely absolute admissibility requirements and relative requirements. Absolute requirements are indications and elements that must be presented in the notice of opposition or furnished by the opponent on his own initiative within the opposition period and are laid down in Rule 15 (1), (2)(a) – (c) CTMIR. Relevant deficiencies can be remedied after the expiry of the opposition period. The Office invites the opponent to remedy the deficiencies within two months from the receipt of the notification of these deficiencies. Only if the opponent remedies the deficiencies, the opposition is admissible. Otherwise, it will be rejected on the grounds of inadmissibility. Relative requirements are laid down in Rule 15 (2)(d) – (h) CTMIR. A notice of opposition can also include indications and elements as stated in Rule 15 (3) CTMIR. However, these indications and elements are merely optional and they determine the scope of the opposition, but do not result in a finding of non-admissibility. According to Rule 16 (a) CTMIR, any notice of opposition and any documents submitted by the opposing party as well as any communication addressed to one of the parties by the Office prior to the commencement of the cooling-off period under Rule 18 CTMIR, shall be send to the other party by the Office for the purposes of information.35 The adversarial part of the opposition proceedings will not commence before the expiry of the cooling-off period according to Rule 18 (1) CTMIR. Until then, there will be no decision on costs according to Rule 18 (4) CTMIR. Furthermore, the notification of the opposition to the applicant does not start any deadline. Deadlines to the applicant are first set in motion after the expiry of the cooling-off period and after the opponent has substantiated his opposition, Rule 20 (2) CTMIR. Before the two-months coolingoff period commences, the Office conducts an admissibility check of the opposition which comprises both, absolute and relative requirements.36 The admissibility check is undertaken ex officio. Only the opponent is directly involved in this non-contradictory proceeding, however, the applicant is invited to comment on the admissibility of the opposition. If the applicant restricts the indication of goods and services of his application before the start of the cooling-off period, the opponent will be notified and given the opportunity to decide whether he wishes to maintain or withdraw the opposition. If all goods and services against which the opposition is directed have been deleted by the applicant, the Office will issue an order declaring that there is no need to adjudicate.37 If the applicant decides to completely withdraw his application, the opposition proceedings are closed and the opposition fee will be reimbursed to the opponent. If the opposition is closed during the cooling-off period, no order as to costs is issued by the Office.38 The opposition can only be admissible to its full extent or be inadmissible. If the opposition is based on more than one earlier right and only one of them has been 34

Opposition form of OHIM, http://oami.europa.eu/pdf/forms/opposition_en.pdf. OHIM, Guidelines, WP1, Part C, Section 1, No. 2.5, p. 29. 36 OHIM, Guidelines, WP1, Part C, Section 1, No. 2.4, p. 12. 37 Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 41, No. 5, (c), p. 138. 38 Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 41, No. 5, (c), p. 138. 35

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correctly identified according to Rule 15 (2)(b)–(g) CTMIR, the examination of admissibility can proceed based on that earlier right.

3. Absolute admissibility requirements Absolute admissibility requirements are laid down in Rule 15 (1), (2)(a)–(c) CTMIR. 37 a) Identification of the contested Community trade mark. Mandatory for identify- 38 ing the contested Community trade mark are the application number and the name of the applicant, Rule 15 (2)(a) and Rule 17 (2) CTMIR. Only one Community trade mark can be contested in one notice of opposition. b) Identification of the earlier marks/rights. Each earlier mark/right has to be clearly 39 identified according to Rule 15 (2)(b) and Rule 17 (2) CTMIR, Art. 8 (2). Earlier trade mark registrations or applications have to be identified by their registration/application number.39 Further, it must be indicated whether the earlier mark is registered or merely applied for and the Member State, where the earlier mark is registered/applied for or – and if applicable – the indication that it is a Community trade mark, must be included.40 c) Earlier trade mark registration or applications with a reputation. Rule 15 (2) 40 CTMIR makes a clear distinction between registered/not registered trade marks and trade marks with a reputation. The reputation is now a stand-alone and additional ground of opposition.41 For earlier trade mark registrations or applications with a reputation, the same identification requirements apply as for registered marks invoked under Art. 8 (1)(b): namely number and Member State of protection.42 d) Earlier well-known mark. According to Rule 15 (2)(b)(i), (ii) and Rule 17 (2) 41 CTMIR, absolute indication elements are the indication of Member States where the mark is well-known. In addition, if the mark is registered, the registration number and the Member State where the mark is registered or, in case of a non-registered mark43, a representation of the mark, e. g. with regard to word marks, the word depicting the mark and with regard to figurative or other marks, the representation of the mark as it is used and claimed to be well-known must be furnished. For non-registered well-known marks the same identifications requirements apply as 42 for a non-registered national mark.44 e) Agent’s mark. An agent’s mark must be identified according to the same criteria 43 as earlier trade mark registrations or applications. In case the earlier mark of the proprietor is a non-registered mark, the representation of the mark must be given, for word marks an indication of the word that marks up the mark, for figurative or other marks the representation of the mark as it is used and claimed by the proprietor must be furnished. 39

GC Case T-186/04 Spa Monopole v. OHIM [2005] ECR II-2352, mn. 49. OHIM, Guidelines, WP1, Part C, Section 2, No. 2.4.1.2, p. 14. 41 Schennen, in: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 42, mn. 50. 42 OHIM, Guidelines, WP1, Part C, Section 2, No. 2.4.1.2, p. 14 – The indication where or for which goods/services the mark is reputed is a relative admissibility requirement according to Rule 15 (2)(g) CTMIR. 43 The well-known trade mark could also be a non-registered trade mark based on Art. 6bis of the Paris Convention. 44 Schennen, in: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 42, mn. 53. 40

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f) Earlier non-registered marks and earlier signs used in the course of trade. For earlier non-registered marks and earlier signs used in the course of trade an indication of the kind or nature of the right must be filed which determines the scope of the opposition, for example trade name, company name, business sign, passing off, titles of protected library/artistic work. Furthermore, an indication of the Member State where the rights is claimed needs to be filed and a representation of the earlier mark.45 45 For all these rights it is mandatory to submit the reproduction of the trade mark within the opposition period: e. g. for a figurative trade mark, the representation of the picture; for a trade mark in colour, the representation of the colour. If the representation is missing, the opposition is inadmissible.46 44

46

g) Marks/rights that are not earlier. If the opposition is based on one or two marks or other rights that are not earlier than the Community trade mark, within the meaning of Art. 8 (2), two cases have to be distinguished:

47

aa) Opposition based on a mark/right that is not earlier. The Office will notify the parties that it will refuse the opposition, after the expiry of the cooling-off period, based on the finding that the ‘earlier’ right on which the opposition is based is not actually an earlier right within the meaning of Art. 8 (2). The opponent will be given two months to react to this letter and either to withdraw its opposition during the cooling-off period or file arguments contesting the findings of the Office.47

48

bb) Opposition based on both earlier and non-earlier marks/rights. In case the opposition is based on more than one right, one being an earlier right and one or more are not earlier, the Office will notify the admissibility of the opposition as usual and will not mention the fact to the parties that one or more marks/rights are not earlier. This issue will then be dealt within the adversarial part of the opposition, namely in the decision of the Office upon the opposition.

4. Identification of grounds Relevant for the admissibility of the opposition is only the indication of the grounds of opposition in the notice of opposition. This means that only the grounds on which the opposition is based have to be indicated in the notice of opposition according to Rule 15 (2)(c) and Rule 17 (2) CTMIR. 50 However, all facts, evidence and arguments to support the opposition have to be submitted in the adversarial part of the proceedings according to Rule 19 (1) CTMIR. 51 With regard to the indication of grounds of opposition, pursuant to Rule 15 (2)(c) CTMIR, merely the provisions of Art. 8 (1), (3) to (5) have to be fulfilled. 49

5. Relative admissibility requirements 52

Relative admissibility requirements are laid down in Rule 15 (2)(b) – (h) CTMIR. According to Rule 17 (4) CTMIR, the Office invites the opponent to remedy the deficiency within a deadline of two months from the receipt of the notification of these deficiencies.

53

a) Dates. Relative admissibility requirements are: filing date and registration date of opposition trade mark, Rule 15 (2)(d) CTMIR, and priority date of the earlier mark. 45

OHIM, Guidelines, WP1, Part C, Section 1, No. 2.4.1.2, p. 17. Schennen, in: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 42, mn. 60 et seq. 47 OHIM, Guidelines, WP1, Part C, Section 1, No. 2.4.1.2, p. 14. 46

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b) Representation of earlier mark/sign. Rule 15 (2)(e) CTMIR requires to file a 54 representation of the mark if the earlier mark is an earlier national or International trade mark application or registration, an earlier well-known mark, an earlier mark with a reputation or a mark filed by an agent. If the earlier mark is a Community trade mark, a representation is not required but is 55 available for the Office from its own databases. If the mark is a word mark, an indication of the word is sufficient, figurative or 3-D 56 marks or other trade marks should be filed with a representation of the trade mark as applied for or registered in colour if applicable. A colour presentation of the mark is not mandatory if the national mark was not published (for technical reasons) in colour, as is the practice, for example in Cyprus, Latvia and Hungary. In these cases neither a colour representation nor a translation of the colour indication is necessary.48 c) Goods and services. The Notice of opposition shall contain an indication of the 57 goods and services on which the opposition is based in the language of the proceedings according to Rule 15 (2)(f) and Rule 17 (4) CTMIR. This applies to all types of earlier rights. In case the opposition is only based on parts of the goods and services for which the earlier mark is registered/applied for, these goods and services need to be listed in the language of the proceeding. An indication of the relevant Class number(s) will also be accepted by the Office, 58 provided that a registration certificate or extract from an official source is attached. The registration certificate or extract must then either be in the language of the proceedings or translated in the language of the proceedings or make use of national codes or INIDcodes, so as to clearly identify the relevant Class number(s).49 d) Earlier mark with a reputation. For marks with a reputation within the meaning 59 of Art. 8 (5), an indication of the Member States in which and also the goods and services for which the mark has a reputation must be provided according to Rule 15 (2)(g) CTMIR. e) Indication of the opponent. The opponent can either be a natural or legal person 60 and has to be indicated by his name and address in accordance with Rule 1 (1)(b) and Rule 15 (2)(h)(i) CTMIR. In case the opposition is filed by a licensee or a person authorized under national 61 law according to a Rule 15 (2)(h)(iii) CTMIR a proof of the authorization to file an opposition has to be presented to the Office. f) Company name rights. If the opposition is based on company name rights 62 according to Artt. 41 (1)(c), 8 (4) instead of an indication of goods and services, details on the field of business operations respectively of the sector have to be filed.50 g) Inadmissible opposition. In case the opposition is inadmissible, the Office will reject 63 the opposition as inadmissible according to Rule 17 CTMIR. The applicant gets notified but without any cost decision, since the opposition proceedings have not started yet, before the commencement of the cooling-off period according to Rule 18 (4) CTMIR.

6. Optional indications a) Extent of the opposition. The opposition may contain an indication of the goods 64 and services against which the opposition is directed. 48

OHIM, Guidelines, WP1, Part C, Section 1, No. 2.4.2.2, p. 19. OHIM, Guidelines, WP1, Part C, Section 1, No. 2.4.2.3, p. 21. 50 Schennen, in: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 42, mn. 79. 49

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b) Reasoned statement. According to Rule 15 CTMIR, the opposition must contain the basis of the opposition, namely the earlier right invoked which must be properly identified and the indication of the grounds of the opposition according to Rule 15 (2)(c) CTMIR. 66 However, a reasoned statement with an indication of arguments, facts or evidence in support of the opposition is optional at the stage of filing the opposition, Rule 15 (3)(b) CTMIR. If the reasoned statement is not already filed together with the notice of opposition, it can be furnished after expiry of the cooling-off period, Rule 19 (1) CTMIR51, since it concerns the substance but not the admissibility of the opposition. 65

VI. Cooling-off period 1. Commencement of opposition proceedings When the admissibility check has been concluded by the Office, the parties are given two months for ‘cooling-off’ before the proceedings officially start. This gives the parties time to find an amicable solution without the burden of any costs. 68 When the Office finds the opposition to be admissible, it sends a communication to the parties informing them that the opposition proceedings will start two months after receipt of the communication, Rule 18 (1) CTMIR. The notification of admissibility, send on to the opponent, includes an Annex that advises him about the nature of the information he should submit to the Office to substantiate the earlier rights that he claims, Rule 19 CTMIR.52 69 Furthermore, the cooling-off period will be set, which expires two months from the notification date – even if this date is a day on which the Office is not open, e. g. a Saturday or Sunday. 67

2. Extension of cooling-off period According to Rule 18 (1)(2) CTMIR, the cooling-off period can be extended up to a total of 24 months if both parties submit a request for such an extension before the cooling-off period expires. The request can be filed as one joint request or in form of two separate requests, filed by both parties. No reasons need to be stated for the extension. The request must be filed in the language of the proceedings and received by the Office before the expiry of the cooling-off period. 71 The Office will grant an extension of 22 months, irrespective of what length of the extension is requested.53 A further extension of the cooling-off period is not possible. But when the parties invoke on-going negotiations, they could file a request for a suspension of the opposition proceedings after the expiry of the cooling-off period. If the mutual request or at least the request of one party is filed after the expiry of the cooling-off period, the request will be rejected. The parties can then again ask for an extension of a time limit or for a suspension of the proceedings. 72 The cooling-off period can be brought to an end by any party if one of the parties opts out before expiry of the extended cooling-off period.54 The Office will sent out a notification and the cooling-off period will expire two weeks after a said notification. 70

51

OHIM, OHIM, 53 OHIM, 54 OHIM, 52

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Part C, Part C, Part C, Part C,

Section 1, Section 1, Section 1, Section 1,

No. 2.4.3.2, p. 29. No. 3.1, p. 30. No. 3.1, p. 30. No. 3.2, p. 32.

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The adversarial part of the proceedings will start the day after. Within the same 73 notification, new deadlines will be set for the substantiation of the opposition and the reply of the applicant. The new deadline shall be two and four months from the end of the cooling-off period.

3. Expiry of cooling-off period The Office will invite the opponent to complete the file and the opponent will be 74 given a two months period after the expiry of the cooling-off period to submit all relevant facts, evidence or arguments in accordance with Rule 19 CTMIR to support his opposition. Within the same period, the opponent shall also file the proof of the existence and continuous validity of the earlier rights, Rule 19 (2) CTMIR.55 The period for submitting such additional material will be set at four months from the date of notification. The opponent must be aware that the period for submitting such material is not a period of two months beginning after the cooling-off period has expired but a period of four months from the notification. The applicant will be given an additional period of two months for replying to the opposition in accordance with Rule 20 (2) CTMIR. This period for replying to the opposition will be set at six months from the day of the start of the cooling-off period. However, the deadlines can be modified during the proceeding. When the opponent 75 files the additional materials to complete his opposition at the end of the four months deadline, given to him, the Office has not enough time to forward the additional materials to the applicant within the period set for the opponent. The additional materials will then be forwarded to the applicant with a new two months deadline for replying to the opposition. This new two months deadline will run from the date of the receipt of the notification of the additional material in order to ensure that the applicant always has a full period of two months for preparing his reply.56

4. Settlement during cooling-off period If the application is withdrawn or restricted to goods and services against which the 76 opposition is not directed, or if the Office is informed about a settlement between the parties, the opposition proceedings shall be closed. The same applies if the application is rejected in parallel proceedings, Rule 18 (2) CTMIR. No decision on costs will be taken, Rule 18 (4) CTMIR. If the applicant restricts the application by deleting some of the goods and services 77 against which the opposition is directed, the opposing party will be invited to state towards the Office whether the opposition is maintained and if so against which of the remaining goods and services. In case the opposing party withdraws the opposition in view of the restriction, the opposition proceedings will be closed. No decision on costs will be taken according to Rule 18 (4) CTMIR. According to Rule 18 (5) CTMIR, the Office shall refund the opposition fee if the opposition proceedings are closed following a withdrawal or restriction of the application or pursuant to Rule 18 (3) CTMIR. In case the application is rejected in parallel proceedings, the opposition shall be 78 closed according to Rule 18 (2) and Rule 21 (3) CTMIR without a decision on costs. The Office shall refund 50 % of the opposition fee to the opponent according to Rule 21 (4) CTMIR. 55 56

OHIM, Guidelines, WP1, Part C, Section 1, No. 3.2, p. 31. OHIM, Guidelines, WP1, Part C, Section 1, No. 3.2, p. 31.

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5. Settlement after the cooling-off period After expiry of the cooling-off period, the parties can still settle the opposition during the appeal proceedings or the proceedings before the Court of First Instance, Rule 20 (5) and Rule 18 (3), (4) CTMIR. 80 However, once the opposition proceedings are concluded after expiry of the coolingoff period, the Office shall take a decision on costs except the parties inform the Office explicitly that they have already agreed on costs and that a decision on costs is not necessary, Art. 85 (5). 81 In no case, the opposition fee shall be refunded with the exception that the application gets rejected in parallel proceedings. In that case, the Office will refund 50 % of the opposition fee according to Rule 21 (3) CTMIR even after expiry of the cooling-off period. 79

6. Suspension 82

According to Rule 20 (7)(a) to (c) CTMIR, the Office may suspend opposition proceedings, for example where the opposition is based on a CTM application or national trade mark application until a final decision is taken, Rule 20 (7)(a) CTMIR. A request to suspend opposition proceedings can be filed by one of the parties before commencement of the adversarial part of the proceedings and even during the cooling-off period based on the grounds, mentioned in Rule 20 (7)(a) and (b) CTMIR. If both parties request a suspension, the first request will be given for a period of one year – regardless the period requested by the parties. If one of the parties opts out, the suspension will end forty days after informing the parties thereof.

VII. Particular procedural issues 1. Multiple opponents In two situations, an opposition can be filed by two or more separate persons (either natural or legal) as multiple opponents, namely if they are co-owners of the earlier mark or right or if the opposition is filed by the owner or co-owner of an earlier right or mark together with one or more licensees of these earlier marks or rights, Rule 15 (1) and Rule 75 (1) CTMIR. 84 As evidence of co-ownership of an earlier right, the opponents shall submit a copy of the registration certificate, showing the co-ownership. 83

2. Change of parties 85

Pursuant to Art. 17, a transfer of an earlier right or assignment is a change of ownership of this right57. When a transfer is made during opposition proceedings, several situations can be given. If the opposition trade marks are earlier Community trade mark registrations or applications, the new owner can only become party of the proceedings (or file observations58) once the request for registration of the transfer has reached the Office. Whereas the opposition trade marks are earlier national registrations or applications it 57 For further information see OHIM, Manual, Part E, Register Operations, Section 3, CTMs as objects of property, Chapter 1. 58 See above, von Bismarck/Jacobs, Art. 40, mn. 4.

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suffices that the new owner files evidence of the transfer. As a basis principle, the new owner substitutes the old owner in the proceedings. a) Transfer of earlier Community trade mark. According to Art. 17 (6), the successor 86 in title may not invoke the rights arising from the registration of the Community trade mark registrations or applications as long as the transfer has not been entered in the Register but the new owner can already make statements to the Office with a view to observing time limits in the period between the date of reception of the request for registration of the transfer and the date of registration of the transfer59. If an opposition is based on one earlier Community trade mark only, and if this Community trade mark has been transferred during the opposition proceedings, the new owner becomes the new opponent and substitutes the old owner. The old or the new owner have to inform the Office that the opposition trade mark has been transferred and a request for registration of the transfer must be filed. As soon as the request is received by the Office, the new owner may already make statements but he only becomes party of the proceedings, once the transfer is registered. The same principles apply to partial transfers of one part of the earlier Community 87 trade mark on which the opposition is based. The part that is not transferred to the new owner remains with the original owner. In case the opposition is based on more than one earlier Community trade mark, the 88 aforesaid applies if these trade marks are or have been transferred to the same new owner during the opposition proceedings. However, in case only one of the earlier Community trade marks is/has been transferred, the new owner may also become an opponent and the opposition proceedings will continue with two opponents, but the opposition will be kept as one.60 b) Transfer of earlier national registrations. In case the opposition trade mark is one earlier national registration which will be transferred during the opposition proceedings, the new owner also becomes the new opponent and will substitute the old owner. Either the old or the new owner must inform the Office on the transfer of the opposition trade mark and must file evidence thereof, i. e. the deed of transfer. He has no obligation to submit a copy of the request to register the transfer with the national Office. The same principles apply to partial transfers and for transfer of only one or more national registrations on which the opposition is based.61 If the opposition is based on more than one earlier national registration, the same principles apply as described for oppositions based on more than one earlier Community trade mark. This applies also when an opposition is based on one or more Community trade mark registrations and on one or more national registrations at the same time and one of these marks are/have been transferred to the same new owner during the opposition proceedings. The opposition will be continued with two opponents, but the opposition will be kept as one. It is important to note that the fact that the earlier registrations have been transferred will never justify the granting of any time limit for submitting observations or any other documents.

89

90

91

92

c) Transfer of the contested Community trade mark application. In case the con- 93 tested Community trade mark application is/has been transferred during the opposition proceedings, the opponent is informed of the transfer and the proceedings will continue with the new owner of the Community trade mark application and the opponent. 59

OHIM, Guidelines, WP1, Part C, Section 6, No. 6.5.1.2, p. 82. OHIM, Guidelines, WP1, Part C, Section 6, No. 6.5.1.2, p. 83. 61 OHIM, Guidelines, WP1, Part C, Section 6, No. 6.5.1.3, p. 84. 60

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95 96

Community Trade Mark Regulation

But if the contested Community trade mark is only transferred partially, the Office has to create a separate file for the new registration (application) with a new registration (application) number. Once the transfer is recorded in the Register, the Office also has to create a new opposition file against the new Community trade mark application, since it is not possible to deal with one opposition against two separate Community trade mark applications.62 d) Change of names. A change of name does not imply a change of ownership. e) Change of representatives. In case of a change of representative during the opposition proceedings, the other party needs to be informed by sending the other party a copy of the letter and of the authorization. If a representative resigns during the proceedings, the proceedings will continue with the opponent or applicant themselves when they are from the EU. In case the party whose representative resigns is from outside the EU, a new representative has to be appointed.63

3. Multiple oppositions When different oppositions are filed against the same Community trade mark, Rule 21 CTMIR, some additional factors must be considered, e. g. some special obligations for notification may occur, multiple oppositions may cause suspension for reasons of economy proceedings or a restriction made by the applicant in one of the proceedings may have consequences for other oppositions and it may be practical to take the decisions in a certain order.64 Under certain circumstances Rule 21 (1) CTMIR allows the Office to deal with multiple oppositions in one set of the proceedings. 98 When there are multiple oppositions and the applicant restricts the goods and services is one of the opposition proceedings and the restriction concerns contested goods of services of other oppositions, all other opponents will be informed by the appropriate letter. 99 It is also important to take account of possible multiple oppositions that are pending against the same Community trade mark application if an opposition reaches the decision stage. Before the ruling, the stage of proceedings of the multiple oppositions must be analysed if a decision may be taken or the opposition must be suspended.65 97

VIII. Substantiation of the opposition Within two months after the expiry of the cooling-off period, the opponent may file additional facts, evidence and arguments in support of his opposition66 according to Rule 19 (1) CTMIR. Furthermore, the opponent also has to prove the existence and validity of the earlier rights invoked. The opponent has to file evidence proving his earlier trade mark registration, evidence of reputation and evidence of the existence and the scope of protection of his earlier rights according to Rule 19 (2)(a) to (e) CTMIR. 101 All evidence must be filed in the language of the proceeding or be accompanied by a translation. It is important that the translation is furnished within the time limit for 100

62

For greater details see Rule 32 (4) CTMIR. For implicit appointment or change of a Professional representation. 64 OHIM, Guidelines, WP1, Part C, Section 1, 65 OHIM, Guidelines, WP1, Part C, Section 1, 66 OHIM, Guidelines, WP1, Part C, Section 1, 63

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furnishing the original, since the Office will not take into account documents and parts thereof that have not been submitted or have not been translated into the language of the proceedings within the time limit set by the Office. Evidence shall be presented in two copies, one being for the transmission to the other 102 party, unless submitted by fax transmission.67 If the opponent has not proven the existence of at least one earlier right, the Office will refuse the opposition as unfounded.

1. Proof of existence and validity of earlier rights In the case the earlier mark is a Community trade mark, no documents regarding the 103 substantiation have to be submitted. To prove the validity of trade mark registrations or applications that are not Community trade marks, namely national trade marks or International trade marks, the Office will accept the following documents: – Certificates issued by the appropriate official body, for example issued by a national Office or by WIPO. – Extracts from official databases, i. e. the official database of one of the national Offices or WIPO. Officially accepted are for example the following databases: – TM view (for Community trade marks and International registrations and trade marks applied for or registered with the participating Offices)68 – BENELUX-MERKEN (for Benelux trade marks) – DPINFO (for German trade marks) – SITADEX (for Spanish trade marks) – OPTICS and extracts from UKPO website (for UK trade marks) – S.A.R.A., on-line from the UIBM website and Telemaco from the Italian Chambers of Commerce (for Italian marks) – ROMARIN (for International registrations). Not accepted are: Extracts from Commercial (private) databases like for example COMPUSERVE, THOMSON, OLIVIA, PATLINK, SAEGIS, COMPUMARK, DEMAS, MARQUESA. – Extracts from official bulletins of the relevant national trade mark Offices and WIPO. – The extracts from an official database must show: – the issuing authority – the filing and/or registration numbers – filing, priority and registration dates – the territorial extent for International registration – the goods and services covered – a representation of the sign as filed or registered and an indication that it is a figurative mark or was filed in colour – the owner – the expiry date of the registration (if contained) – any other inscriptions, affecting the legal or procedural status of the scope of protection of the mark (disclaimers, restrictions, renewals, transfers, pending actions, the fact that the mark was acquired due to distinctiveness through use etc.)69 If the opposition trade mark is a coloured trade mark, the image of the mark needs 104 to be filed in colour. A certificate in black and white is not sufficient enough.

67

OHIM, Guidelines, WP1, Part C, Section 1, No. 4.2.3.2, p. 35. For greater details see http://www.tmview.europa.eu/tmview/welcome.html. 69 OHIM, Guidelines, WP1, Part C, Section 1, No. 4.2.3.5, p. 39. 68

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As regards figurative Spanish trade marks, the opponent needs to file an additional document/page showing the image since SITADEX extracts do not show on the same page the image when the mark is figurative. 106 When English is the language of the proceedings and Portuguese trade marks are concerned, INPI will also provide an English version of the Portuguese trade mark extract. So in principle, no translation would be necessary. Nevertheless regarding the list of goods and/or services, the extract itself only gives the Class headings along with a warning indicating that this reference to the Class heading does not necessarily reflect the goods and/or services protected under the trade mark. Therefore, the opponent must file the original list in Portuguese (from an official source) and if the Class heading is missing, an accurate translation into English.70 107 Beside the term of protection, the certificate of registration must show the duration of the trade mark. The term of protection and renewal must extend beyond the time limit to submit evidence. The opposition trade mark must be registered for the opponent. Otherwise, the opponent has to prove evidence of the transfer and, if already available, the registration of the transfer in the relevant register71. If the opponent is a licensee, he has to demonstrate to the Office that he is authorized by the trade mark owner to bring an opposition. So far, there is no practice on what evidence needs to be filed to support an authorization of the licensee to file an opposition but any authorization or licensee contract that authorizes the licensee to act in defence of the mark should be deemed sufficient.72 105

2. Translations of evidence and trade mark registration According to Rule 19 (3) and (4) CTMIR, all information and evidence in support of the opposition shall be filed in the language of the proceeding or be accompanied by a translation. 109 The translation must reproduce the structure in contents of the original document, Rule 98 (1) CTMIR, so that the entire document must be translated and follow the structure of the original document. It is acceptable that no translation of the information headers in the extract/certificate is needed, provided that they also identify using standard, INID-codes or national codes.73 There is only one exception from the principle that the entire document must be translated and follow the structure of the original document, namely in case the entire original document is in the language of the proceedings, except for the list of goods and services. In this case, it is sufficient that only the goods and services on which the opposition is based have been translated separately in the Notice of Opposition, documents attached thereto or submitted later within the time limit to substantiate the opposition. This is also applicable to extracts/certificates which make use of INID-codes or national codes. The only information which still needs to be translated into the language of the proceedings is the list of goods and services.74 110 According to Rule 98 (1) CTMIR, the Office accepts simple translations, drawn up by anybody. A declaration that the translation is due to the original is generally not required but can be requested by the Office according to Rule 98 (1) sentence 2 CTMIR. 108

70

OHIM, Guidelines, WP1, Part C, Section 1, No. 4.2.3.2, p. 36. See above, von Bismarck/Jacobs, Art. 41, mn. 85 et seq. 72 OHIM, Guidelines, WP1, Part C, Section 1, No. 4.2.3.7, p. 40. 73 The list of INID-codes and their explanations are attached as Appendix 1 to Standard ST.60 – Recommendation Concerning Bibliographic Data Relating to Marks, available on WIPO’s website, http:// www.wipo.int/export/sites/www/standards/en/pdf/03-60-01.pdf. 74 OHIM, Guidelines, WP1, Part C, Section 1, No. 4.3.1, p. 44. 71

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3. Proof of renewal If the earlier registration on which the opposition is based is due to expire before the 111 expiry of the two months substantiation period according to Rule 19 (1) CTMIR, the opponent must file a renewal certificate in order to prove that the term of protection of the trade mark extends beyond the time limit or an extension thereof given to him to substantiate his opposition. Relevant is the date on which the registration would expire and not the possibility to renew the mark within the six months grace period under the ¨ .75 Paris convention, Art. 5bis PVU The renewal certificate must contain all necessary data that determines the scope of 112 protection of the earlier mark. Only in that case it will suffice to file the renewal certificate without a copy of the registration certificate. Regarding German renewals and sometimes Spanish renewals, the renewal certificate alone is insufficient to determine the scope of the protection of the earlier mark.76 If the opponent does not file proper evidence of renewal, the earlier registration will not be taken into account (when there are other earlier rights that have been substantiated) or the opposition will be rejected as not substantiated.77

4. Substantiation of well-known marks, claims of reputation, agents trade marks and earlier signs a) Well-known marks. An earlier well-known trade mark according to Art. 8 (2) is a 113 ¨ . Such a mark can be trade mark that is well-known in a Member State, Art. 6bis PVU unregistered but it may also be registered. ‘Well-know’ marks are very often confused with marks with a reputation pursuant to Art. 8 (5). To show that an earlier trade mark has become well-known in the relevant territory for the goods and services on which the opposition is based, the opponent has to submit evidence of use and of the mark being well-known according to Rule 19 (2)(b) CTMIR. b) Marks with a reputation. To base an opposition on an earlier trade mark that has a 114 reputation, Art. 8 (5), the opponent has to submit evidence of reputation. According to Rule 19 (2)(c) CTMIR, the opponent has to further allege and demonstrate that the use of the mark which is the subject-matter of the contested Community trade mark application would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark or to indicate that this is probable in the ordinary course of events. c) Mark filed by an agent or representative. The real proprietor can oppose the 115 registration, filed by an agent or representative according to Art. 8 (3). According to Rule 19 (2)(e) CTMIR, the opponent has to prove his ownership of the trade mark and the time of acquisition of that mark. In case of a non-registered trade mark, the opponent has to submit evidence of registration somewhere in the world or evidence of acquisition of rights through use and he also has to submit evidence of an agent/ representative relationship. d) Non-registered mark or other signs used in the course of trade. For these rights, 116 the Office applies the protection provided by the relevant national law. Not all rights under Art. 8 (4) are unregistered, since in some countries company and commercial names are registered. To prove a registered right, a copy of the registration or renewal 75

See below, Gray, Art. 47 (3), mn. 1. OHIM, Guidelines, WP1, Part C, Section 1, No. 4.2.3.6, p. 39. 77 OHIM, Guidelines, WP1, Part C, Section 1, No. 4.2.3.6, p. 40. 76

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certificate needs to be filed. Unregistered marks or signs must be proved by providing evidence of the acquisition of the earlier right and evidence that it is of more than local significance. The opponent must file evidence proving use of his sign and he needs to prove that his own rights have been used prior to the filing or priority date of the contested Community trade mark. The opponent also needs to state on which national law he bases his case and to make out his case under this law.

5. Sanction 117

If the opponent has not proven the existence, validity and scope of protection of his earlier mark or earlier rights, as well as his entitlement to file the opposition, the opposition must be rejected immediately after expiry of the two-month substantiation period, without waiting for the reply of the applicant. The Office is in no case required to inform the parties which facts or evidence could be or have not been submitted, Rule 20 (6) CTMIR.

6. Opposition against international trade marks An opposition can also be filed against International trade marks designating the European Community, pursuant to Art. 156, Rules 114 to 116 CTMIR and Art. 13 CTMFR. 119 The opposition procedure differs especially with regard to the opposition deadline, the notification of the opposition to the owner of the International trade mark and in the proceedings of the refusal of the protection of an International registration based on absolute grounds. Otherwise the same requirements apply to the opposition proceedings as to the opposition proceedings against a Community trade mark, pursuant to Rules 15 to 22.78 118

Article 42 Examination of opposition (1) In the examination of the opposition the Office shall invite the parties, as often as necessary, to file observations, within a period set them by the Office, on communications from the other parties or issued by itself. (2) If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services. 78 Schennen, in: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 42, mn. 227 et seq. For further information of the opposition proceedings of the International trade marks, see below, Bo¨sling, Art. 156, mn. 3.

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Art. 42 CTMR

(3) Paragraph 2 shall apply to earlier national trade marks referred to in Article 8 (2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community. (4) The Office may, if it thinks fit, invite the parties to make a friendly settlement. (5) If examination of the opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the Community trade mark application has been made, the application shall be refused in respect of those goods or services. Otherwise the opposition shall be rejected. (6) The decision refusing the application shall be published upon becoming final. Bibliography: Ebert-Weidenfeller/Noth, ‘Benutzungsnachweis fu¨r Marken im deutsch-schweizerischen Verha¨ltnis’, GRUR-Prax 2013, 415; Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th ed. 2014; Gielen/v. Bomhard, Concise European Trade Mark and Design Law, 2011; v. Kapff, ‘Fishbone: Erst die Gra¨ten, spa¨ter das Fleisch’, GRUR-Prax 2013, 371; Slopek, ‘Wiederholungsmarken im Gemeinschaftsmarkensystem’, GRURInt 2013, 101.

Content I. Scope . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Request for proof of use by the applicant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Time of request . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Form and content of the request. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Reaction by the Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Submission of proof of use by the opponent . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Means of evidence. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Language. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Genuine use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Principles of the Court of Justice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Standard of proof applied by the Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Place, time, extent and nature . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Place of use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Time of use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Extent of use. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Nature of use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Justification of non-use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Decision on substance by the Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 3 5 7 10 13 15 18 20 21 22 24 26 27 29 30 32 38

I. Scope Pursuant to Art. 42 (1) the Office shall invite the parties during the examination of 1 the opposition to file observations as often as necessary,1 within a period to set them by the Office, on communications from the other parties or issued by the Office. The applicant can defend the application with detailed legal submissions, factual 2 claims2 or a request for proof of use. If the applicant submits no observations, the Office shall base its ruling on the evidence before it according to Rule 20 (3) CTMIR. As mentioned in Art. 41, the following explanations are based on the guidelines of the Office.

1 However, additional briefs exchanged are granted only as an exception, Schennen, in: Eisenfu ¨ hr/ Schennen, Gemeinschaftsmarkenverordnung, Art. 42, mn. 151. 2 Schennen, in: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 42, mn. 149 argues that only weakening by similar third-party signs should be taken into consideration.

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CTMR Art. 42

Community Trade Mark Regulation

II. Request for proof of use by the applicant According to Art. 42 (2) genuine use of an earlier trade mark shall be shown only if the applicant requests proof of use (‘defence plea of the applicant’),3 the issue of genuine use will not be addressed by the Office ex officio. The Office, thus, may neither inform the applicant that he could request proof of use nor invite him to do so. In view of the Office’s impartial status in opposition proceedings it is left to the parties to provide the factual basis and to argue and defend their respective position.4 4 The request to furnish proof of use is only valid if the earlier mark is subject to the use requirement, e. g. if it had been registered for not less than five years. 3

1. Time of request Pursuant to Rule 22 (1), a request for proof of use pursuant to Art. 42 (2) shall be admissible only if the applicant files the plea within a time period specified by the Office. Such request must thus be made within the first time limit for the applicant to reply to the opposition according to Rule 20 (2) CTMIR.5 6 If the request for proof of use is submitted during the cooling-off period or during the two-month period given to the opponent for filing or amending facts, evidence and arguments, it is forwarded to the opponent without delay. 5

2. Form and content of the request The applicant’s request is a formal declaration with important procedural consequences, therefore, it has to be explicit, unambiguous and unconditional.6 8 A request of proof consists of two elements: A procedural element, requiring the Office to issue an invitation pursuant to Rule 22 (2), and a substantive law element, disputing the use of the earlier mark. In general, the request for proof of use must be expressed in positive wording. Mere observations or remarks by the applicant are not sufficiently explicit and do not constitute a valid request for proof of genuine use.7 Even though Art. 42 (2) is generally not applicable when the opponent, in its own motion, submits material relating to use of the invoked earlier mark, an implicit request can nevertheless be accepted when the opponent spontaneously sends evidence of use before the applicant’s first opportunity to file arguments and, in its first reply, the applicant challenges the evidence of use filed by the opponent.8 7

3 See OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community trade marks (in the following ‘Guidelines, WP1’) Part C: Opposition, Section 6: Proof of Use, No. 3.1, p. 57.The legislative framework for a request for proof of use consists of Art. 15, stipulating the basic substantive requirement for the obligation to use registered trade marks, Art. 42, stipulating the consequences of a lack of use in opposition proceedings, Rule 20 and Rule 22 CTMIR as well as Art. 10 Trade Marks Directive as implemented in the national law of the Member States. 4 See Art. 76 (1) sentence 2. 5 The matter of timing to request proof of use was subject of heated debate since the CTMIR did not specify a time limit for it until the amendment introduced by Commission Regulation (EC) No 1041/ 2005, see Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 42, No. 3, p. 141. 6 OHIM, Guidelines, WP1, Part C, Section 6, No. 3.1.2, p. 58. 7 GC Case T-112/03 L’Ore ´al SA v OHIM [2005] ECR II-954, mn. 24. See also Guidelines, WP1, Part C, Section 6, No. 3.1.2, p. 58 and the examples listed. 8 OHIM, Guidelines, WP1, Part C, Section 6, No. 3.1.2, p. 59; disagreeing Schennen, in: Eisenfu ¨ hr/ Schennen, Gemeinschaftsmarkenverordnung, Art. 42, mn. 158.

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The applicant may limit the request for proof of use with regard to trade mark 9 Classes or the proof of use for one of many earlier trade marks. However, the request must still comply with the requirement of certainty and cannot be split in an admissible and a non-admissible part.9

III. Reaction by the Office The reaction by the Office depends upon the validity of the request for proof of use 10 filed by the applicant. The Office will immediately terminate the proceedings if the request is completely 11 invalid. Due to its impartial position in adversarial proceedings the Office must, however, not indicate that the sufficiency of the evidence is doubtful.10 Nevertheless, the Office forwards a request for proof of use but advises both parties of the invalidity of the request. The Office can extend the time limit established in accordance with Rule 20 (2) CTMIR if such an invalid request for proof was received before expiry of the time limit set for the applicant but was not dealt with by the Office until after expiry thereof.11 If the request is only partly invalid regarding the earlier rights on which the opposition is based, the Office expressly limits the invitation to the opponent to submit proof of use.12 If the applicant’s request for proof of use is valid, the Office issues an express 12 invitation to the opponent to submit proof of genuine use or to show that there are proper reasons for non-use.13 The opponent may request an extension of the deadline in accordance with Rule 71 CTMIR.14

IV. Submission of proof of use by the opponent According to Art. 42 (2) and (3) following a valid request for proof of use the opponent, 13 as alleged proprietor of an earlier trade mark who has given notice of opposition, is obligated to provide evidence of a genuine use of the earlier trade mark within the last five years. The purpose of this requirement is to limit the likelihood of conflict between two 14 trade marks by protecting only trade marks which have actually been used.15 It is, however, not the purpose of Art. 42 (2) and (3) to asses commercial success or to review the economic strategy of an undertaking, not is it to restrict trade mark protection to only large-scale commercial us of trade marks.16 9

Schennen, in: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 42, mn. 169. OHIM Dec. of 1.5.2007 – R 0201/2006-4 – OCB/O.C.B., mn. 19. 11 OHIM, Guidelines, WP1, Part C, Section 6, No. 3.2, p. 60. Because refusal of the request for proof of use after expiry of the time limit will disproportionately harm the interests of the applicant, the Office extends the time limit only by the number of days that were left when the party submitted its request, Guidelines, WP1, Part C, Section 6, No. 3.1.4, p. 59. 12 OHIM, Guidelines, WP1, Part C, Section 6, No. 3.1.4, p. 59. 13 Taking a decision on use in the absence of an explicit invitation by the Office to submit proof of use constitutes a substantive procedural violation, even if the applicant’s request is clear, the opponent understands it and submits the requested evidence of use, OHIM Dec. of 19.9.2000 – R 0733/1999-1 – Affinite´/Affinage. 14 Schennen, in: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 42, mn. 172. 15 GC Case T-174/01, Jean M. Goulbourn v OHIM [2003] ECR II-791, mn. 38. 16 GC Case T-334/01 Marienfelde v OHIM [2004] ECR II-2791, mn. 32; Case T-203/02 Sunrider v OHIM [2004] ECR II-2815, mn. 38. 10

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CTMR Art. 42

Community Trade Mark Regulation

1. Means of evidence Pursuant to Art. 78 in any proceeding before the Office, the means of giving or obtaining evidence shall include hearing the parties, requests for information, the production of documents and items of evidence, hearing witnesses,17 opinions by experts18 or statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up19. With regard to a request for proof of use pursuant to Art. 42 the evidence shall, according to Rule 22 (4) CTMIR, be filed in accordance with Rules 79 and 79 a CTMIR and shall, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues,20 invoices, photographs, advertisements,21 and statements in writing22 as referred to in Art. 78 (1)(f).23 16 Submitted evidence must also be provided in a structured manner. The Office recommends to include the corresponding file number, the statement of the total number of pages and page numbering as well as to not exceed 110 pages among other key aspects of a structured presentation.24 17 Evidence of use may be of an indirect/circumstantial nature,25 such as evidence about the share in the relevant market, turnover figures, the import of the relevant goods, the supply of the necessary raw material or packaging to the owner of the mark, or the expiry date of the relevant goods.26 15

2. Language 18

As stated above, in general, pursuant to Art. 119 (2), (5) an opposition must be filed in one of the five languages of the Office (English, French, German, Italian and Spanish).27 Pursuant to Rule 19 (3) CTMIR information and evidence to an opposition needs to be submitted in the language of the proceedings or accompanied by a translation, reproducing also the structure and content of the original document and not being confined to excerpts that the opposing party deems relevant. If information or 17 Since oral hearings are the exception, witnesses’ testimony is given by way of affidavits or equivalent instruments, Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 42, No. 2, p. 140. 18 An expert report can be challenged only by filling another expert report reaching opposite conclusions or by highlighting inconsistencies or deficiencies that emerge from the content of the report, Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 42, No. 2, p. 140. 19 See below Bo ¨ ckenholt, Art. 78, mn. 38 et seq. for greater detail. 20 OHIM Dec. of 1.12.2010 – R 0566/2010-2 – CATAMARAN, mn. 31, 32. 21 Use in advertising will generally be considered as amounting to genuine use if there is a sufficient volume of advertising and a relation can be established between the trade mark and the goods and services for which the trade mark is registered, CJ Case C-40/01 Ansul [2003] ECR I-2458, mn. 37. 22 The standard applied when assessing evidence in form of print-outs from the internet is no stricter than when evaluating other forms of evidence, see OHIM Dec. of 20.12.11 – R 1809/2010-4 – SHARP, mn. 33; GC Case T-355/09 Reber v OHIM [2013], Judgment of 17.1.2013, mn. 47 (appeal pending under C-141/13 P); Case T-387/10 Goutier v OHIM [2012], Judgment of 2.2.2012, mn. 39, 40; OHIM Dec. of 31.3.2011 – R 1464/2010-2 – Skunk funk, mn. 21. 23 However, evidence given exclusively by way of written statements may be considered insufficient, particularly when the written statement has been drawn up by the opponent himself, see GC Case T-202/ 03, Salvita [2005], mn. 41, 42. 24 See OHIM, Guidelines,WP1, Part C, Section 6, No. 3.3.2.1, p. 61 for more details. 25 Indirect/circumstantial evidence can, under certain conditions, also be suitable for proving genuine use even on its own, OHIM, Guidelines, WP1, Part C, Section 6, No. 3.7.3, p. 68. 26 OHIM, Guidelines, WP1, Part C, Section 6, No. 2.2, p. 10. See also CJ Case 30/09 Engelhorn v OHIM [2010] ECR II-03803, mn. 42 et seq. 27 Parties to an opposition may agree upon a different language of the European Union as the language of the proceedings pursuant to Art. 119 (7) and Rule 16 (2) CTMIR.

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evidence has not been submitted or not been translated within the time limit set by the Office, it will not be taken into account, pursuant to Rule 19 (3) and (4) CTMIR.28 With regard to the request for proof, pursuant to Rule 22 (6) CTMIR the Office may 19 require the opposing party to file a translation of the evidence in the language of the opposition proceedings if the evidence submitted is not in that language. A time period for submission is specified by the Office, in general the opponent is granted a period of two months. Whether the opponent has to provide a translation is left to the discretion of the Office, balancing the interests of both parties of the proceedings.29

V. Genuine use Neither the CTMR nor the CTMIR defines what is to be regarded as ‘genuine use’. 20 There are however principles laid down by the Court of Justice respectively standards applied by the Office.30

1. Principles of the Court of Justice According to the Court of Justice31 genuine use has to be actual use consistent with 21 the essential function of the trade mark. Mere token use, serving solely to preserve the rights conferred by the mark is not sufficient. Use of a trade mark has thus to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or maintain an outlet for those goods or services. The assessment of the genuine nature of the use of a trade mark must take into account all relevant facts and circumstances surrounding such use, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark. Consideration needs therefore to be given, inter alia, to the nature of the products and services, the characteristic of the market, the scale and the frequency of the use, the production and marketing capacity of the trade mark owner.32 Use of the mark by a single client can be sufficient to demonstrate that use is genuine; a de minimis rule cannot be laid down.

2. Standard of proof applied by the Office Since the Office cannot determine ex officio the genuine use of earlier marks,33 22 making a merely prima facie case is not sufficient; proof must thus consist of solid and objective evidence of effective and efficient use.34 28

For greater detail see above von Bismarck/Jacobs, Art. 41. mn. 19. Even though a translation might be extremely costly and burdensome, the applicant has a legitimate interest to be informed about the content of the evidence filed, Guidelines, WP1, Part C, Section 6, No. 3.6, p. 66 et seq. 30 The remarks regarding proof of use follow the Guidelines, WP1, Part C, Section 6. See the description there for further details. 31 For the principles stated in this paragraph see GC Case C-40/01 Scan Office Design v Commission [2002] ECR II-5046, mn. 35–39; CJ Order C-259/02 La Mer Technology v Laboratoires Goemar [2004] ECR I-1159, mn. 22–25. 32 See also Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 42, No. 3, p. 141. 33 See OHIM, Guidelines, WP1, Part C, Section 6, No. 2.2, p. 9 for more details. 34 CJ Case T-382/08 Advance Magazine Publishers v OHIM [2011] ECR II-0002, mn. 22. 29

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CTMR Art. 42 23

Community Trade Mark Regulation

Even though mere token use of a mark is not considered sufficient, hence excluding a use serving solely to preserve the rights conferred by the trade mark, even minimal use of the trade mark can establish genuine use, when it serves a real commercial purpose.35

3. Place, time, extent and nature In addition to the principles by the Court of Justice and the standard of proof applied by the Office, pursuant to Rule 22 (3) CTMIR, the indications and evidence for the furnishing of proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based. 25 These requirements of proof of use are cumulative,36 however, the Office has to evaluate the evidence submitted in an overall assessment. A separate assessment of the various relevant factors, each considered in isolation, is not suitable.37 In addition, the principle of interdependence applies, meaning that weak evidence with regard to one relevant factor might be compensated by solid evidence with regard to another factor.38 24

26

a) Place of use. An earlier Community trade mark must be used ‘in the Community’ pursuant to Art. 42 (2) as well as Art. 15 (1).39 By interpreting the wording ‘in the Community’ the territorial borders of the Member States should be disregarded when assessing whether a Community trade mark has been put to genuine use in the Community,40 thus, the appropriate approach is not that of political boundaries but of markets.41 It is, however, impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not.42 All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods and services protected by the trade mark and the territorial extent and scale as well as its frequency and regularity.43 The Office must determine on a case-by-case basis whether the various indications and evidence can be combined for the purpose of assessing the genuine character of use, the geographical dimension of which is only one of the aspects to be considered.44 The Court of Justice did, however, not establish any guidelines or relevant criteria in its judgement, leaving the final assessment to the competent Courts in the Member States. If the earlier trade mark is a national mark with effect in one of the Member States of the European Union, pursuant to Art. 42

35 GC Case T-409/07 Cohausz v OHIM [2009] ECR II-0173, mn. 35. Nonetheless, even if inter alia a very modest amount of use can suffice in certain circumstances, proprietors should adduce comprehensive evidence of use, see Guidelines, WP1, Part C, Section 6, No. 2.2, p. 9. 36 CJ Case T-92/09, Strategi Group v OHIM [2010] ECR II-0217, mn. 43. 37 CJ Case T-324/09 J & F Participaço ˜ es v OHIM [2011] ECR II-0024, mn. 31. 38 OHIM, Guidelines, WP1, Part C, Section 6, No. 3.7.3, p. 68. 39 With regard to the determination of ‘genuine use’ the European requirements or standards are applicable (i. e. the conditions of Art. 15) and not national standards or practices applied to Community trade marks, OHIM, Guidelines, WP1, Part C, Section 6, No. 2.4.2, p. 18. 40 ‘… the territorial scope of the use is only one of several factors to be taken into account in the determination of whether the use is genuine or not’, CJ Case C-149/11 Leno Merken [2012], Judgment of 19.12.2012, mn. 30 and 44. The Court further indicated that use of the mark in non-EU territories cannot be taken into account. 41 OHIM, Guidelines, WP1, Part C, Section 6, No. 2.4.2, p. 18. 42 CJ Case C-149/11 Leno Merken [2012], Judgment of 19.12.2012, mn. 55. 43 CJ Case C-149/11 Leno Merken [2012], Judgment of 19.12.2012, mn. 58. 44 OHIM, Guidelines, WP1, Part C, Section 6, No. 2.4.2, p. 19.

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(3) the mark must have been genuinely used in the country where it is protected. Use in part of the Member State, provided it is genuine, may be considered sufficient.45 b) Time of use. In accordance with Art. 42 (2), the obligation to provide proof of 27 use requires that the earlier registered mark has, at the date of publication of the Community trade mark application, been registered for not less than five years. If the earlier mark is a Community trade mark the decisive date for establishing is, 28 according to Art. 15 and Art. 42 (2), the registration date of the earlier Community trade mark. If the earlier mark is a national mark, it is necessary to determine the date that is equivalent to the registration date for Community trade marks.46 Thus, the decisive date for calculating the beginning of the 5-year period is ‘the date of the completion of the registration procedure’.47 If the earlier mark is an International registered trade mark designating Member States the designated offices have a period of 12 or 18 months from the date of notification of the designation to issue provisional refusals48. For International registrations designating the European Union, Art. 160 provides that for the purposes of applying Art. 42 (2), the date of publication pursuant to Art. 152 (2) shall take the place of the date of registration. c) Extent of use. To determine whether the extent of use of a trade mark is sufficient 29 to be considered as genuine use it has to be evaluated if, in view of the market situation in the particular industry or trade concerned as deduced from the material submitted, the owner has seriously tried to acquire a commercial position in the relevant market.49 The purpose of Art. 42 (2) and (3) is not to assess the commercial success of a certain product or service, or its range, or the strategy of an undertaking since protection is not restricted to trade marks used on a large commercial scale.50 The trade mark has to be used for goods and services already marketed or about to be marketed and for which the preparations by the undertaking to secure customers are under way51 by taking into account: the commercial volume of all the acts of use, the duration of the period in which those acts occurred as well as the frequency of those acts.52 The assessment of the acts of use entails a degree of interdependence between

45

CJ Case C-416/04 P Sunrider v OHIM [2006] ECR I-4237, mn. 60, 66, 76. In this regard it has to be taken into account that there are national trade mark systems which have an opposition procedure after registration, OHIM, Guidelines, WP1, Part C, Section 6, No. 2.5.1.2, p. 20 et seq. 47 Art. 10 (1) of Directive 2008/95. 48 Art. 5 (2)(a) and (b) of the Madrid Protocol. See also Guidelines, WP1, Part C, Section 6, No. 2.5.1.3, p. 21 for an overview table. 49 OHIM, Guidelines, WP1, Part C, Section 6, No. 2.6.1, p. 24. 50 Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 42, No. 3, p. 142. Guidelines, WP1, Part C, Section 6, No. 2.6.2 and 2.6.3, p. 26–28. For examples of insufficient use see: OHIM Dec. of 9.7.2009 – R 0623/2008-4 – WALZERTRAUM, mn. 32 et seq.; GC Case T-131/06 Sonia Rykiel creation et diffusion de mode`les v OHIM [2008), ECR II-0067; OHIM Dec. of 27.2.2009 – R 0249/2008-4 – AMAZING ELASTIC PLASTIC and Dec. of 9.2.2012 – R-0239/2011-1 – Golf World; Dec. of 20.5.2011 – R 2132/2010-2 – SUSURRO (fig.). For examples of sufficient use see: CJ Case T-308/ 06 Buffalo Mike Automotive Polishing Products v OHIM [2011] ECR II-7881, mn. 68; GC Case T-325/06 Boston Scientific v OHIM [2008] ECR II-0174, mn. 48 and 60; GC Case T-418/03 La Mer Technology v OHIM [2007), ECR 2007 II-125, mn. 87–90; Case T-191/07 Anheuser-Busch v OHIM [2009] ECR II-0703; CJ Case C-416/04 P Sunrider v OHIM [2006] ECR I-4237, mn. 68–77; Case 30/09 Engelhorn v OHIM [2010] ECR II-03803, mn. 42, 43; OHIM Dec. of 27.7.2011 – R 1123/2010-4 – Duracryl; Dec. of 1.2.2011 – B 1 563 066 – IALUNA. 51 GC Case C-40/01 Scan Office Design v. Commission [2002] ECR II-5046, mn. 37. 52 GC Case T-334/01 MFE Marienfelde v OHIM [2004] ECR II-2787, mn. 35. 46

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Community Trade Mark Regulation

these criteria,53 and needs also to take the characteristics of the market in question into account54; a de minimis rule, however, cannot be laid down.55 d) Nature of use. ‘Nature of use’ of a sign refers to its use as a trade mark in the course of trade, which obliges the opponent to establish a clear link between the use of the mark and the relevant goods and services. 31 Genuine use requires that use is made as a trade mark and not for purely illustrative purposes or on purely promotional goods or services56 as well as in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered.57 The mark must be used publicly and outwardly in the context of commercial activity58 with a view to economic advantage for the purpose of ensuring an outlet for the goods and services it represents.59 Mere preparation to use the mark is internal use and, therefore, not use in the course of trade for the present purposes.60 30

4. Justification of non-use According to Art. 42 (2) an opposition is not dismissed if an opponent can invoke justifiable reasons for non-use of an earlier trade mark. Legitimate reasons for non-use are circumstances arising independently of the will of the owner of the trade mark that constitute an obstacle to the use of the trade mark as being abnormal in the industry or marketplace, that make the use of the mark impossible or unreasonable.61 As an exception to the obligation of use, the concept of proper reasons for non-use is to be interpreted rather narrowly.62 33 ‘Bureaucratic obstacles’ are not sufficient in this regard, unless they have a direct relationship with the trade mark, so much that its use depends on the successful completion of the administrative action concerned.63 Neither are ‘financial difficulties’ due to an economic recession or a cyclical crisis, as part of the risk of business, considered a proper justification of non-use, even if they are beyond the control of the will of the owner and make use of the mark impossible or unreasonable64. ‘Defensive’ registrations, i. e. signs not intended to be used in trade on account of their purely defensive function in relation to another sign which is being commercially exploited, do also not constitute a proper reason for non-use.65 Justified reasons for non-use are not the equivalent to actual use, but merely exclude the period of justified non-use in calculating the grace period of five years.66 32

53

GC Case T-203/02 Sunrider v OHIM [2004] ECR II-2811, mn. 42. GC Case T-334/01 MFE Marienfelde v OHIM [2004] ECR II-2787, mn. 51. CJ Order C-259/02 La Mer Technology v Laboratoires Goemar [2004] ECR I-1159, mn. 24 et seq. 56 OHIM, Guidelines, WP1, Part C, Section 6, No. 2.3.2, p. 11. 57 GC Case C-40/01 Scan Office Design v Commission [2002] ECR II-5046, mn. 43. 58 Mere use of the mark on promotional material for other goods cannot normally be considered as sufficient evidence of genuine use, see CJ Case C-495/07 Silberquelle v Maselli-Strickmode [2009] ECR I0137, mn. 22. 59 GC Case T-174/01 Goulbourn v OHIM [2003] ECR II-0789, mn. 39; GC Case T-131/06 Sonia Rykiel creation et diffusion de mode`les v OHIM [2008), ECR II-0067, mn. 38. 60 GC Case C-40/01 Scan Office Design v. Commission [2002] ECR II-5046, mn. 37. 61 See Art. 19 (1) of the TRIPS agreement. 62 OHIM, Guidelines, WP1, Part C, Section 6, No. 2.11, p. 54. 63 OHIM, Guidelines, WP1, Part C, Section 6, No. 2.11, p. 54. 64 OHIM Dec. of 14.52008 – R 0855/2007-4 – PAN AM, mn. 27; GC Case T-162/01 Laboratorios RTB v OHIM [2003] ECR II-2821, mn. 41. 65 GC Case T-194/03 Il Ponte Finanziaria v OHIM [2006] ECR II-0445, mn. 46. 66 OHIM, Guidelines, WP1, Part C, Section 6, No. 2.11.5, p. 57. 54 55

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Examination of opposition

Art. 42 CTMR

Government or Court intervention might be considered sufficient justifications for 34 non-use.67 Import restrictions, including a trade embargo affecting the goods protected by the trade mark, and other requirements by the government, including a State monopoly impeding any kind of use or a State prohibition for reasons of health or national defence,68 are explicitly mentioned in the second sentence of Art. 19 (1) of the TRIPS agreement of proper reasons for non-use. With regard to Court proceedings or interim injunctions the mere threat of litigation or a pending cancellation action against the earlier mark does, in general, not exempt the opponent from the obligation to use its trade mark in the course of trade.69 On the other hand, an interim injunction or a restraining court order in insolvency proceedings, imposing a general prohibition of transfers or disposals on the trade mark owner, can be a proper reason for non-use because it obliges the opponent to refrain from using the mark in the course of trade.70 Further justifiable reasons for non-use are cases of force majeure.71 Decision by the Office with regard to proof of use: Pursuant to Rule 22 (2) CTMIR 35 the Office will reject the opposition if the opposing party does not provide sufficient proof of use within the time limit given.72 Thus, the Office, in principle, shall reject the opposition without having any discretionary powers in that regard.73 The Office will then give a decision based on the evidence before it.74 Alternatively, as it is the applicant who sets in motion the respective procedure, it is in the applicant’s discretion to end this part of the proceedings by formally withdrawing the request for proof of use.75 In cases where the evidence might suffice, the Office forwards the observations to 36 the applicant. The applicant, in general, is allowed two months to reply. The Office must not indicate to the opponent that the sufficiency of the evidence is doubtful, or even invite the opponent to file further evidence in such cases.76 Afterwards, the opponent is entitled to reply.77 Additional evidence is only taken into consideration where new factors emerge, even if such evidence is adduced after expiry of the time limit.78 Eventually, the Office makes its own evaluation of the probative value of the evidence submitted independently of the observations submitted by the applicant in this respect. Assessment of the relevance, pertinence, conclusiveness and efficacy of evidence lies within the discretion and power of judgment of the Office, not the parties, and falls outside the adversarial principle which governs inter partes proceedings.79

67

OHIM, Guidelines, WP1, Part C, Section 6, No. 2.11.2, p. 55. Typical cases are clinical trials and authorisation for new medicines or the authorisation of a Food Safety Authority, which the owner of the trade mark has to obtain before offering the relevant goods and services on the market, see OHIM, Guidelines, WP1, Part C, Section 6, No. 2.11.2, p. 55. 69 See OHIM, Guidelines, WP1, Part C, Section 6, No. 2.11.2, p. 55 and 56. 70 OHIM, Guidelines, WP1, Part C, Section 6, No. 2.11.2, p. 56. 71 OHIM, Guidelines, WP1, Part C, Section 6, No. 2.11.4, p. 57. 72 OHIM, Guidelines, WP1, Part C, Section 6, No. 3.4.1, p. 65. See also GC Case T-50/09 Ifemy’s v OHIM [2011] GRURInt 2011, 523, mn. 63. 73 GC Case T 214/08 Rehbein v OHIM [2012] OJ C 138, p. 14. 74 GC Case T-202/03 Lidl Stiftung v OHIM [2005] ECR II-1917, mn 79. 75 Guidelines, WP1, Part C, Section 6, No. 3.4.4, p. 66; OHIM Dec. of 21.4.2004 – R 0174/2003-2 – Sonnengarten, mn 23. 76 Such acts would be against the impartial position of the Office in adversarial proceedings, see OHIM Dec. of 1.5.2007 – R 0201/2006-4 – OCB/O.C.B., mn. 19. 77 The Board of Appeal has regarded failure to allow the opponent to comment in such a case as a substantial procedural violation, Guidelines, WP1, Part C, Section 6, No. 3.5, p. 66. 78 OHIM, Guidelines, WP1, Part C, Section 6, No. 3.5, p. 66; GC Case T-334/01 MFE Marienfelde v OHIM [2004] ECR II-2787, mn. 56. 79 Guidelines, WP1, Part C, Section 6, No. 3.7.1, p. 67. See also OHIM Dec. of 1.5.2007 – R 0201/2006-4 – OCB/O.C.B., mn. 19; OHIM Dec. of 15.9.2008 – R 1404/2007-2 – FAY, mn. 26 et seq. 68

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CTMR Art. 43 37

Community Trade Mark Regulation

In addition, pursuant to Art. 42 (4) the Office may invite the parties to make a friendly settlement to the dispute. However, due to the generic language of the paragraph as well as the impartial position of the Office in adversarial proceedings, a request for conciliation is, in general, not applied by the Office.

VI. Decision on substance by the Office The decision to put an end to the proceedings must be in writing and motivated in accordance with Art. 75.80 Pursuant to Art. 42 (5) if the examination of the opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the Community trade mark application has been made, the application shall be refused in respect of those goods or services. Otherwise the opposition shall be rejected. If either the opposition of the application against which the opposition is directed is withdrawn or an agreement is reached by the parties, the Office will end the proceedings by an order acknowledging that there is no need to adjudicate on the matter. 39 Pursuant to Art. 42 (6) the decision refusing the application shall be published upon becoming final. The Office will also issue an order for cost.81 38

SECTION 5 Withdrawal, restriction, amendment and division of the application Article 43 Withdrawal, restriction and amendment of the application 1. The applicant may at any time withdraw his Community trade mark application or restrict the list of goods or services contained therein. Where the application has already been published, the withdrawal or restriction shall also be published. 2. In other respects, a Community trade mark application may be amended, upon request of the applicant, only by correcting the name and address of the applicant, errors of wording or of copying, or obvious mistakes, provided that such correction does not substantially change the trade mark or extend the list of goods or services. Where the amendments affect the representation of the trade mark or the list of goods or services and are made after publication of the application, the trade mark application shall be published as amended. Rc. 11 Bibliography: Black’s Law Dictionary, 8th edition, 2004 West Law; Napoleonic Code – Internet, http:// www.napoleon-series.org, Title I, Chapter III, article (357) 537 (last visited 4 February 2014).

80 Jacobacci, in: Gielen/v. Bomhard, Concise European Trade Mark and Design Law, Art. 42, No. 5, p. 142. 81 See below, Mosing, Art. 85, mn. 10 for more details.

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Withdrawal, restriction and amendment

Art. 43 CTMR

Content I. Purpose and scope . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Historic development . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Interpretation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Meaning. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Impact. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Withdrawal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Restriction. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Amendments . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Relationship with the publication . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Withdrawal, restriction or amendments occur before publication of the application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Withdrawal, restriction or amendments occur after publication of the application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Procedure. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Specific case law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 3 5 5 7 7 11 14 17 19 21 24 26

I. Purpose and scope Art. 43 applies exclusively to applications. 1 The purpose of Art. 43 is to regulate three kinds of voluntary modifications that the 2 applicant is entitled to make in respect to the application: withdrawal which has effect on the application as a whole; restriction which has effect on the list of goods or services and amendments for the purpose of correction of mistakes that produces effects in respect to a part of the application.

II. Historic development Withdrawal, restriction and amendments of an application constitute part of the right 3 the applicant has in respect to his application to register a trade mark. The trade mark itself as an object of property is included in the category of intangible rights. The modern conception regarding property in most western countries is clearly influenced by the Napoleonic Code, according to which1 ‘private persons have the free disposition of the property belonging to them, subject to the modifications established by the laws’. Madrid Agreement, one of the oldest international treaties, provides as early as 1934 4 the conditions in respect to renunciations, and other changes made in the entry of the mark in the national register, if such changes also affect the international registration.2 Madrid Protocol – adopted in 1989 – thus earlier than CTMR, extends to the applications many of the provisions of the Agreement that were applicable only to registrations and provides that, if the basic application or registration has been withdrawn before the expiry of five years from the date of the international registration, the protection resulting from the international registration may no longer be invoked. It stems from the above that the procedure of withdrawal of an application was available at that date in the member states signatories of the Protocol.3

1

Title I, Chapter III, Art. (357) 537. Art. 9. 3 Art. 6 (3). 2

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CTMR Art. 43

Community Trade Mark Regulation

III. Interpretation 1. Meaning Withdrawal and restriction are forms of renunciation of the right of the applicant. One of the meanings of the word ‘withdrawal’ is renunciation or the act of taking back or taking away,4 and applies to the application as a whole, whereas one of the meanings of the word restriction is limitation,5 that is a partial renunciation, in this case applying to a part of the goods or services of the application. 6 Amendment of an application usually occurs for the purpose of correction of obvious mistakes. In order to fall within the scope of this article, there are two conditions: the correction shall not substantially change the trade mark (the sign) and the correction shall not extend the list of goods or services. 5

2. Impact a) Withdrawal. Withdrawal of an application usually occurs either following an examination as to absolute grounds of refusal, pursuant to Art. 37 and respectively Rule 11 or when the applicant wishes to avoid conflict with an earlier right, either in the opposition stage (Rule 18) or as a result a threat of opposition. 8 Withdrawal of an application in case of an opposition directed against it can be done before the commencement of opposition proceedings, the effect being that the opposition proceedings shall be closed, and the opposition fee refunded, pursuant to Rule 18 (2) and respectively Rule 18 (5). 9 Art. 43 does not concern explicitly the cases when the application is deemed withdrawn, by failure of the applicant to comply with certain requirements (Artt. 36 (5), 45, Rule 9 (5). However, this commentary shall include this situation as well, having in view that the effects are the same. 10 When an application is withdrawn or deemed to be withdrawn, the rights of the applicant in respect to the application are lost unless he requests conversion of the Community trade mark application within three months after the date on which said application has been withdrawn or deemed to be withdrawn, pursuant to Art. 112. In case conversion is sought, the applicant shall no longer have a pending Community trade mark application, but a number of national applications to be treated according to national law of the Member States specified in the request for conversion. 7

b) Restriction. When the applicant requests restriction of the list of goods or services of the application, the effect is that he surrenders his rights in respect to obtaining a Community trade mark for those goods or services that were excluded following the restriction. 12 Restriction of the list of goods or services can also be requested following an examination as to absolute grounds of refusal (Art. 37, Rule 11) when the mark is considered ineligible for registration in respect to some goods or services. To overcome the refusal, the applicant can restrict the list of goods or services, or argue against the grounds of refusal or combine both actions. 13 In opposition proceedings, restriction of the list of goods shall be done only before the commencement of said proceedings, during the cooling-off period provided by Rule 11

4 5

Black’s Law Dictionary, p. 1632. Black’s Law Dictionary, p. 1341.

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Withdrawal, restriction and amendment

Art. 43 CTMR

19 (1). If the applicant restricts the application by deleting some of the goods or services, OHIM asks the opponent whether he maintains the opposition; in case the opposing party withdraws the opposition in view of the restriction the proceedings are closed and the opposition fee refunded, pursuant to Rule 18 (2) and respectively 18 (5). In case restriction does not lead to withdrawal of the opposition, opposition proceedings shall continue in respect to the remaining list of goods or services after restriction. c) Amendments. Amendments are accepted with the sole purpose of correcting 14 elements of the application that do not have impact on the distinctive character of the trade marks and do not extend the list of goods or services for the purpose of having the record as accurate as possible. Therefore their impact is only in respect to the correctness of the information. Having in view that there are many types of possible amendments, OHIM verifies if 15 the requirements governing the amendment are fulfilled and, in case they are not, requests the applicant to remedy them within a specified period, pursuant to Rule 13 (3). Failure to remedy the deficiency has as result the rejection of the application for amendment. The following deficiencies are most frequently encountered: 16 – When the correction of the list of goods or services leads to an extension of said list, by using inadequate wording. (E. g. by replacing bread by bakery products). – When the representation of the mark used at the moment of filing is unclear and when the applicant provides a better representation (as amendment) that alters the distinctive character of the mark as filed (e. g. by changing the colour from dark red to orange).

3. Relationship with the publication According to Art. 9 (3) CTMR the rights conferred by a Community trade mark shall 17 prevail against third parties from the date of publication of the trade mark. When dealing with withdrawal, restriction and amendments, both paragraphs of 18 Art. 43 treat the two possible situations, namely when request for modification is lodged before or after the publication of the application. a) Withdrawal, restriction or amendments occur before publication of the applica- 19 tion. In case withdrawal, restriction or amendments occur before the publication of the application, they do not affect third parties in any way. In case of withdrawal, there will be no publication, since this procedure applies only to applications for Community trade mark that satisfy the conditions set in Art. 39. When restriction is sought, the publication shall be made with the new, limited list of goods and services. When correction of a mistake was requested before publication, the application shall be published in the already amended form. According to Rule 13 (6), amendments can include the corrections to the name of 20 business address of the representative of the applicant, the procedure being the same as in the case of the other amendments. b) Withdrawal, restriction or amendments occur after publication of the applica- 21 tion. In case withdrawal or respectively restriction occurs after the publication of the application, that is the one made pursuant to the provisions of Art. 39 CTMR, the withdrawal or restriction shall also be published.

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CTMR Art. 44

Community Trade Mark Regulation

Neither CTMR, nor its Implementing Regulation contain specific provisions regarding the publication of the withdrawal, restriction or amendment if they occur after the initial publication, consequently general rules regarding publication of the applications apply. 23 Rule 13 (4) provides that, where the amendment is published pursuant to Art. 43 (2) of the Regulation, Rules 15 to 22 (related to the procedure for opposition and proof of use) shall apply mutatis mutandis. 22

IV. Procedure There are no specific rules of procedure for withdrawal or for restriction. A request is to be submitted to OHIM following general rules of correspondence. 25 Amendments of an application are dealt with in Rule 13. 24

V. Specific case law Art. 43 is quite straightforward, hence there is little room for interpretation and case law is not abundant. 27 There are two related cases6 under the old CTMR7. In both cases the applicant has attempted to use his right of restriction in respect to the list of goods of the application in the proceedings before the Board of Appeal as an alternative only if the Board of Appeal were minded to reject the application in respect to all goods. According to the decision of the Court of First Instance8 ‘the withdrawal in whole or in part of an application for Community trade mark or the restriction of the list of goods or services it contains must be made expressly and unconditionally. Account cannot therefore be taken in case of a step by which the applicant suggests, in the appeal against the rejection of a trade mark application, restriction of the list of goods covered by the application to just a part of them only in the alternative, that is, only if the Board of Appeal were minded to reject that application in respect of all the goods covered by it’. 28 The teaching of the case law is that both the restriction and the withdrawal must be made expressly and unconditionally. 26

Article 44 Division of the application 1. The applicant may divide the application by declaring that some of the goods or services included in the original application will be the subject of one or more divisional applications. The goods or services in the divisional application shall not overlap with the goods or services which remain in the original application or those which are included in other divisional applications. 2. The declaration of division shall not be admissible: (a) if, where an opposition has been entered against the original application, such a divisional application has the effect of introducing a division amongst the goods or services against which the opposition has been directed, until the 6

GC Cases T-396/02 and T-402/02 August Storck KG v OHIM [2004], mn 27. Community Trade Mark Regulation (EC) No 40/94. 8 Paras 19–20 for case GC Case T-396/02 and paras 33–34 for GC Case T-402/02. 7

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Division of the application

3. 4. 5. 6.

7.

Art. 44 CTMR

decision of the Opposition Division has become final or the opposition proceedings are finally terminated otherwise; (b) during the periods laid down in the Implementing Regulation. The declaration of division must comply with the provisions set out in the Implementing Regulation. The declaration of division shall be subject to a fee. The declaration shall be deemed not to have been made until the fee has been paid. The division shall take effect on the date on which it is recorded in the files kept by the Office concerning the original application. All requests and applications submitted and all fees paid with regard to the original application prior to the date on which the Office receives the declaration of division are deemed also to have been submitted or paid with regard to the divisional application or applications. The fees for the original application which have been duly paid prior to the date on which the declaration of division is received shall not be refunded. The divisional application shall preserve the filing date and any priority date and seniority date of the original application. Rc. 1, 11 Content A. Historic development. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Main features of divisional application, Art. 44 (1) CTMR . . . . . . . . . . . . . . . . C. Inadmissibility, Art. 44 (2) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Division of application during opposition proceedings . . . . . . . . . . . . . . . . II. Division during other specific periods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. The filing date yet not granted . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. The opposition period is not over . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D. Provisions of CTMIR, Art. 44 (3) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Requirements for a declaration of division . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. The form, language and filing of declaration of division. . . . . . . . . . . . . . . III. Remedy of deficiencies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Forming of new file and publication . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . E. Fee subject to CTMFR, Art. 44 (4) CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F. Date of recording and effect of the divisional application, Art. 44 (5–7) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 4 9 11 12 13 14 16 16 18 21 22 25 26

A. Historic development The multi-class CTM application system implies the possibility of refusing or 1 granting the trade mark only partially. However the Council Regulation (EC) Nr. 40/ 94 did not provide for the possibility to divide an application. The necessity of Art. 44 CTMR (initially Art. 44 a CTMR) originated from Trade marks Law Treaty (TLT) of 27 October 19941 Art. 7 (1)(a) (Division of Application and Registration) which provides for that ‘any application listing several goods and/or services (hereinafter referred to as ‘initial application’) may, (i) at least until the decision by the Office on the registration of the mark, (ii) during any opposition proceedings against the decision of the Office to register the mark, (iii) during any appeal proceedings against the decision on the registration of the mark, be divided by the applicant or at his request into two or more applications (hereinafter referred to as ‘divisional applications’) by distributing among 1

http://www.wipo.int/treaties/en/text.jsp?file_id=294357.

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CTMR Art. 44

Community Trade Mark Regulation

the latter the goods and/or services listed in the initial application. The divisional applications shall preserve the filing date of the initial application and the benefit of the right of priority, if any.’ 2 Following to Art. 7 (1)(b) TLT the contracting parties were free to establish requirements for the division of application, including payment of fees. 3 Therefore taking into account the provisions of TLT as far as need to improve the system and with a view to simplifying and facilitating the procedure set out in CTMR for users and for the Office, the possibility of submitting an application to divide an application has been added to CTMR by the Council Regulation (EC) No. 422/2004 of 19 February 20042.

B. Main features of divisional application, Art. 44 (1) CTMR The right referred to in the Art. 44 (1) CTMR confers the applicant the possibility to divide an application into few divisional applications. The division of application is an alternative to the partial transfer of an application (Art. 17 CTMR), however it is different from the partial transfer of an application as in the latter case the divided applications remain as the ownership of the same initial owner. A division of a trade mark application is particularly useful in order to isolate a disputed trade mark for certain goods or services and maintain the application for the remainder, also to avoid the delay in registration procedure in a case an opposition or refusal is filed against one of the classes or against specific goods within the same class for which the trade mark has been filed.3 5 Division is not available for an international registration under the Madrid Protocol designating the EU. The register of international registrations is exclusively kept at WIPO and OHIM does not have the authority to divide an international registration designating the EU. 6 The Art. 44 (1) CTMR sets strict rule as to the scope of the division – ‘the goods or services in the divisional application shall not overlap with the goods or services which remain in the original application or those which are included in other divisional applications’. The purpose of this restriction is to avoid multiplication of the same application and to ensure that the division of application serves only for dividing of application into separate and independent applications. 7 The list of goods or services in the divisional application and list of goods or services in remaining application must be divided in accordance with explanations of CJ4 which requires ‘the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark’ and Common communications: on the Implementation of ‘IP Translator’,5 on the Common Practice on the General 4

2 OJ L 070 9.3.2004, p. 0001–0007, amended by Commission Regulation (EC) No. 207/2009 of March 24, 2009, OJ L 078 24.3.2009, p. 0001. 3 Mira, International Review of Intellectual Property and Competition Law 2003, 168, 175 4 CJ Case C-307/10, Chartered Institute of Patent Attorneys v Registrar of Trade Marks, mn 65. 5 S. OHIM website http://oami.europa.euÕLaw & practice Õ Decisions & Communications of the PresidentÕTools & documents:Common Communication on the implementation of IP Translator

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Division of the application

Art. 44 CTMR

Indications of the Nice Class Headings6 and on the Common Practice on the Acceptability of Classification Terms.7 The division of application is not allowed as regards the division of the mark applied 8 for.

C. Inadmissibility, Art. 44 (2) CTMR The Art. 44 (2) CTMR and Rule 13 a CTMIR sets two groups of situations where for 9 the procedural economy or to safeguard third party rights the application for a division of trade mark application is deemed to be inadmissible: (a) opposition has been entered against the original application; (b) during other specific periods laid down in CMTIR. Where the Office finds, that the declaration of division is inadmissible it shall refuse 10 the declaration of division. The declaration of division will be refused immediately since the legal provisions cited above have to be interpreted as not requiring a prior hearing of the applicant.

I. Division of application during opposition proceedings During the pendency of an opposition, only those goods and services against which 11 an opposition is not directed may be divided off. The Office interprets the legal provisions cited above as not only excluding a division in the sense that some of the opposed goods are divided off, with the effect that the opposition proceedings have to be split, but also in the case where the opposed goods are to be divided off. However, in this case, the applicant will be given the opportunity to amend the declaration of division by dividing the other goods and services off, i. e. those which are not opposed8. This is exactly the aim of the provision: that the applicant can register the uncontested goods quickly without having to wait for the outcome of a lengthy opposition procedure.

II. Division during other specific periods After Part 3 (c) in the Rule 13 a of CTMIR (the period after the date of issue of the 12 notification to pay the registration fee referred to in Rule 23 (1)) was deleted by Commission Regulation (EC) No 355/2009 of 31.3.2009 there are two specific periods during which the division of application is not admissible: (1) the period before a date of filing has been accorded; (2) the period of three months following the publication of the application provided for in Art. 41 (1) CTMR. 6 S. OHIM website http://oami.europa.eu ÕLaw & practice Õ Decisions & Communications of the PresidentÕTools & documents:Common Communication on the Common Practice on the General Indications of the Nice Class Headings 7 S. OHIM website http://oami.europa.eu ÕLaw & practice Õ Decisions & Communications of the PresidentÕTools & documents:Common Communication on the Common Practice on the Acceptability of Classification Terms 8 OHIM, The Manual Concerning Proceedings Before the Office, Part B: Examination, p. 14.

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CTMR Art. 44

Community Trade Mark Regulation

1. The filing date yet not granted 13

Division is excluded in the period before a filing date has been accorded. That does not necessarily coincide with the first month following filing9 as follows from Artt. 25 (3), 26 and 27 CTMR and Rule 9 (1) CTMIR. Depending on the fulfilment of the requirements for an application this period may take up to 3–4 month.10

2. The opposition period is not over Division is excluded during the three months following publication of the application, this being the opposition period. Allowing a division in this period would counteract the aim of not splitting an opposition procedure, and frustrate third parties who must rely on the CTM Bulletin to know what they are going to oppose. Even if the division of an application must be published (see mn. 23–24 below), such publication may occur after the opposition filing date and accordingly allowing the division of application during opposition period would make the confusion as regards the scope of the opposition as far as the identity of the application opposed (see mn. 15 below). 15 When the opposition period is over, the division of application should be admissible if no oppositions are entered against CTM application or where the division does not concern the goods or services opposed (see mn. 14 above). 14

D. Provisions of CTMIR, Art. 44 (3) CTMR I. Requirements for a declaration of division The requirements for a declaration of division are set out in the Rule 13 a of CTMIR11: a declaration of the division of the application shall contain: (a) the file number of the application; (b) the name and address of the applicant; (c) the list of goods and services which shall form the divisional application, or, where the division into more than one divisional application is sought, the list of goods and services for each divisional application; (d) the list of goods and services which shall remain in the original application. 17 Only if all the indicated information is provided the application for a division of application can be granted. If there are any deficiencies, the Office shall invite the applicant to remedy them (see mn. 21 below). 16

9

OHIM, The Manual Concerning Proceedings Before the Office, Part B: Examination, p. 14. The filing date is accorded after one month and payment of the fee, provided the application fulfils all equirements. If any of the requirements are not met, a deficiency letter will be sent out requesting the applicant to provide the missing item within a time limit of two months from notification of the deficiency letter. 11 Inserted by Commission Regulation (EC) No 1041/2005 of June 29, 2005 (OJ EC No L 172 of 5.7.2005, p. 4) 10

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Division of the application

Art. 44 CTMR

II. The form, language and filing of declaration of division The application can be made in the first or the second language indicated by the 18 applicant in the CTM application.12 The declaration of division is filed in a form of Recordal application found at Form 19 and Filings section on OHIM’s web-site www.oami.europa.eu.13 The application can be filed in any means of communication accepted by OHIM: fax, 20 through e-filing or by post, service or personal delivery.14

III. Remedy of deficiencies Where the Office finds that the requirements indicated above (see mn. 16–20 above) 21 are not fulfilled or the list of goods and services which shall form the divisional application overlap with the goods and services which shall remain in the original application, it shall invite the applicant to remedy the deficiencies noted within such period as it may specify. If the deficiencies are not remedied before the time limit expires, the Office shall refuse the declaration of division.15

IV. Forming of new file and publication If the declaration of division is accepted, the Office shall establish a separate file for 22 the divisional application, which shall consist of a complete copy of the file of the original application, including the declaration of division and the correspondence relating thereto. The Office shall assign a new application number to the divisional application.16 This file will also contain all future correspondence for the new application. Inspection of this file will be unrestricted under general rules. If the declaration of division concerns a CTMA which is not yet published, both the 23 divisional and the original application will be published separately and in the normal way, and without an express reference to each other.17 Where the declaration of division relates to an application which has already been 24 published pursuant to Art 39 CTMR, the division shall be published in the Community Trade Marks Bulletin. The publication shall contain the indications and elements referred to in Rule 12 CTMIR. The publication does not open a new period for the filing of oppositions.18

12 On March 12, 2012, the Office envisaged a change of practice in respect of the use of the first and second languages. However, as this issue is still under discussion, the current practice, as indicated above, is maintained. 13 S. OHIM website http://oami.europa.eu ÕHome Õ Forms and Filings. 14 Rules 79, 79 a, 80 and 82 CTMIR. 15 Rule 13 a (2) CTMIR. 16 Rule 13 a (5) CTMIR. 17 OHIM, The Manual Concerning Proceedings Before the Office, Part B: Examination, p. 16. 18 Rule 13 a (6) CTMIR.

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CTMR Art. 44

Community Trade Mark Regulation

E. Fee subject to CTMFR, Art. 44 (4) CTMR 25

Whereas a partial transfer is free of charge but involves a change of proprietorship, the request for division of a trade mark application in the hands of the same proprietor is subject to a fee of EUR 250.19 If the fee is not paid, the request is deemed not to have been filed.

F. Date of recording and effect of the divisional application, Art. 44 (5–7) CTMR 26

27 28

29

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31

The division shall take effect on the date on which it is recorded in the files kept by the Office concerning the original application. This means that if the Office accepts the declaration of division, a new application is created as of the date of acceptance and not retroactively as from the date of the declaration. The new application keeps the filing date as well as any priority or seniority dates. In fact, the seniority effect will then become a partial one. All requests and applications submitted and all fees paid with regard to the original application prior to the date on which the Office receives the declaration of division are deemed also to have been submitted or paid with regard to the divisional application or applications. The fees for the original application which have been duly paid prior to the date on which the declaration of division is received shall not be refunded. The practical effects of this provision can be exemplified as follows: – where an application for registration of a license was made, and at the same time the fee for registration of a license was paid, before the Office received the declaration of divi-sion, the request is valid for both applications. The license will be recorded for both applications, and no further fees need be paid; – where a CTMA claiming six classes is to be divided into two applications of 3 classes each, no class fees are payable as from the date the Office receives the declaration of division. However, any fees paid prior to that date cannot be refunded. Where the division is not accepted, the old application remains unchanged. It does not matter whether: – the declaration of division was deemed not to have been filed in the absence of the fee; or – the declaration was refused because it failed to comply with the formal requirements; or – the declaration was found inadmissible because it was filed on a day falling in one of the periods during which division is excluded. If the declaration of division is not accepted, this will never have consequences for the original application. Later the applicant may repeat the declaration of division which will be subject to a new fee payment.20

19 Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs), Art. 2. 20 OHIM, The Manual Concerning Proceedings Before the Office, Part B: Examination, p. 15.

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Registration

Art. 45 CTMR

SECTION 6 Registration Article 45 Registration Where an application meets the requirements of this Regulation and where no notice of opposition has been given within the period referred to in Article 41 (1) or where opposition has been rejected by a definitive decision, the trade mark shall be registered as a Community trade mark, provided that the registration fee has been paid within the period prescribed. If the fee is not paid within this period, the application shall be deemed withdrawn. Rc. 7 Content I. II. III. IV.

Preliminary remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 Conditions of the registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Consequences of the registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8 Amendments to the registration procedure – forecast . . . . . . . . . . . . . . . . . 11

I. Preliminary remarks* The CTMR No. 207/09 dated 26 February 2009 is implemented by the CTMIR 1 No. 2868/95, as amended on 31 March 20091. On 31 March 2009, the Rule 23 detailing how to enforce Section 45 of the CTMR No. 207/09 has been amended and no longer refers to a registration fee. Indeed, the registration fee has been abolished by the 2009 fee reduction when its level was set at EUR 0. Since then, the simplified fee structure has been implemented with the payment of an application fee only, as provided in Section 27 of the CTMR No. 207/09. As a result, the references, in Section 45 of the CTMR, to a registration fee, as well as 2 to the consequence of the lack of payment, have become redundant, insofar as the Rule 23 of the CTMIR No. 2868/95 does now provide that: ‘1. Where no opposition has been entered or where any opposition entered has been finally disposed of by withdrawal, rejection or other disposition, the trade mark applied for and the particulars referred to in Rule 84 (2) shall be recorded in the Register of Community trade marks. 2. The registration shall be published in the Community Trade Marks Bulletin.’

* The commentary to this section has been prepared by Michel Be ´jot, Partner at the Paris-based law firm Bernard-Hertz-Be´jot, toghether with Caroline Bouvier, Senior Associate at Bernard-Hertz-Be´jot. 1 The CTMIR No 2868/95 has been amended by the Commission Regulation (EC) No 355/2009 of 31 March 2009 available at http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri= OJ: l:2009:109:0003:0005: EN: pDF; see in particular Article 2.

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CTMR Art. 45

Community Trade Mark Regulation

II. Conditions of the registration 3

4

5 6

7

The application for a trade mark registration must evidently comply with all rules provided by the CTMR, for instance the requirements set forth in Section 4 of the CTMR, in particular the rule according to which the ‘signs are capable of distinguishing the goods or services or one undertaking from those of other undertakings’. Further, the CTMR allows any third party having an interest to oppose a trade mark’s registration. As a result, a trade mark can only be registered once an opposition, if any, has been rejected, or if the time limit to file such an opposition elapsed (Section 41 et seq. CTMR). Finally, the application fee (Section 27 CTMR) must have been paid, but there is no longer a registration fee. According to Section 27 CTMR, the payment of the application fee has to be made within a period of one month of the filing of the trade mark application. The rule on the payment of the application fee is related to the question of the minimum requirement for obtaining a filing date2. Indeed, the CTMR does allow the applicant to obtain a filing date without paying the application fee and to maintain the filing date if the application fee is paid within one month from the date of the receipt of the application. Therefore, if the applicant misses the one-month deadline to pay the application fee, the application will not be refused by the OHIM, but the filing date will no longer be the date of receipt of the application but the date of receipt of the payment.

III. Consequences of the registration Insofar as ‘the Community trade mark shall be obtained by registration’ (Section 6 CTMR), the trade marks once registered becomes an object of property (Section 16 CTMR). 9 The OHIM records the CTM in the Register of the Community Trade Marks and the registration of the CTM is published in the Community Trade Mark Bulletin (in all official languages of the European Community). The publication is free of charge and aims at officially informing the third parties of the existence of the CTM. Indeed, the rights conferred by a CTM only prevail against third parties as from the date of publication of the registration in the Community Trade Mark Bulletin. 10 A Certificate of Registration is also issued by the OHIM and the registration runs its effects back to the date of the filing of the trade mark application with the OHIM as defined in paragraphs 6 and 7 above, for a ten year-period. But the CTM can be indefinitely renewed (Section 47 CTMR). 8

IV. Amendments to the registration procedure – forecast 11

Section 45 CTMR should be amended in order to reflect the aforementioned current registration procedure, in particular the fact that there is no longer a registration fee. 2 ‘Study on the Overall Functioning of the European Trade Mark System’ presented by Max Planck Institute for Intellectual Property and Competition Law, Munich; February 15, 2011, p. 163

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Registration

Art. 45 CTMR

On 27 March 2013, the European Commission adopted proposals for a revision of the CTMR and for a recast of the Directive approximating the laws of the Member States relating to trade marks3. In particular, the new Section 45 would no longer refer to any registration fee: ‘Where an application meets the requirements of this Regulation and where no notice of opposition has been given within the period referred to in Article 41 (1) or where opposition has been rejected by a final decision, the trade mark shall be registered as a European trade mark. The registration shall be published’ (draft of a new Section 45.1). In addition, the proposed new Section 45 provides for electronic registration certificates (draft of a new Section 45.2). Finally, the proposed amendments intend to implement the right, for the trade mark owners, to use a symbol right next to the trade mark attesting that the trade mark is registered. The symbol shall be decided by the President of the OHIM (drafts of new Sections 45.3 and 45.4). In its comments on the EU Commission Proposal for Amendments to the EU Trade Mark System, issued in April 2013, the Study Task Force of the association MARQUES, does considers that ‘it is to be hoped that the symbol will be ®, so as to be consistent with the rest of the world’.4 But in its opinion issued on 1 July 2013, the GRUR5 sees no need for such a symbol, particularly since it is not clear what consequences are to be linked to the use or non-use of the symbol. The GRUR also considers that a provision of this kind should be the subject matter of normal legislation and in any event not left to a decision by the President of the OHIM. Despite the need for the revision of Section 45 of the CTMR, the aforementioned amendments remain to mature into legal force. 3 ‘Proposal for a Regulation of the European Parliament and of the Council amending the Council Regulation (EC) No 207/2009 on the Community trade mark’, available at http://eur-lex.europa.eu/legalcontent/EN/ALL/?uri=CELEX:52013PC0161. 4 ‘Comments on the EU Commission Proposal for Amendments to the EU Trade Mark System’, available at http://www.marques.org/positionpapers/default.asp. 5 Opinion issued by the German Association for the Protection of Intellectual Property (GRUR) on the Proposal of the EU Commission for an Amendment of the Community Trade Mark Regulation, available at http://www.grur.org/uploads/tx_gstatement/2013-07-01_GRUR_Opinion_Recast_CTM_Regulation_Final. pdf.

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TITLE V DURATION, RENEWAL, ALTERATION AND DIVISION OF COMMUNITY TRADE MARKS Article 46 Duration of Registration Community trade marks shall be registered for a period of 10 years from the date of filing of the application. Registration may be renewed in accordance with Article 47 for further periods of 10 years. A CTM once registered is valid for a period of 10 years from the date of application. Once the initial 10 year period has lapsed a registration must be renewed in order to remain valid. A registration can be renewed indefinitely, in theory. The renewal period is calculated from the date of application irrespective of whether the registration has a valid claimed priority date or a seniority date. 2 The initial 10 year registration period and successive 10 year renewal periods facilitates linking the CTM and International Registration system under the Madrid Protocol. 3 Where a CTM is designated under the International Registration system of the Madrid Protocol, the term of protection expires with the International Registration. This is irrespective of whether the CTM was designated at the time of filing of the International Registration or as a subsequent designation after the date of filing. An International Registration is renewed centrally with WIPO, indicating the countries for which renewal is to be effected and subject to the appropriate renewal fee paid for each country indicated1. 1

Article 47 Renewal 1. Registration of the Community trade mark shall be renewed at the request of the proprietor of the trade mark or any person expressly authorised by him, provided that the fees have been paid. 2. The Office shall inform the proprietor of the Community trade mark, and any person having a registered right in respect of the Community trade mark, of the expiry of the registration in good time before the said expiry. Failure to give such information shall not involve the responsibility of the Office. 3. The request for renewal shall be submitted within a period of six months ending on the last day of the month in which protection ends. The fee shall also be paid within this period. Failing this, the request may be submitted and the fees paid within a further period of six months following the day referred to in the first sentence, provided that an additional fee is paid within this further period. 1 Art 7 Protocol of the Madrid Agreement concerning to the International Registration of Marks, as amended 12 November 2007.

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Renewal

Art. 47 CTMR

4. Where the request is submitted or the fees paid in respect of only some or the goods or services for the which the Community trade mark is registered, registration shall be renewed for those goods or services only. 5. Renewal shall take effect from the day following the date on which the existing registration expires. The renewal shall be registered. Content A. Renewal period . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Notice of renewal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Request for renewal. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Goods and services. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Fees payable . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Deficiencies. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D. Expiration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . E. Restoration – restitutio in integrum . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 8 8 12 14 21 22 27

A. Renewal period A CTM registration must be renewed every ten years from the date of application in 1 order to maintain the validity of the registration.1 The proprietor of a CTM can hold an infinite right, in theory, provided the registration is renewed in a timely fashion every 10 years. The effective date of renewal is the day following the date on which the registration would expire.2

B. Notice of renewal At least six months before the expiration of a CTM registration, OHIM is required to 2 send notification of the requirement to renew a CTM to the proprietor of the CTM or to any person having a registered interest in the CTM,3 such as a licensee or the holder of a security interest. This is one of the reasons why it is important for the holder of a right in a CTM to register their interest on the CTM Register, so that they will be notified of the need to renew a CTM and to ensure that the CTM is maintained through timely renewal, to protect the interest they have in the registration. OHIM will not be considered responsible for any loss of right in a CTM if not 3 renewed, due to the failure of OHIM to notify a proprietor or other interested parties of the need to renew a registration. The failure of OHIM to provide appropriate notification to the relevant parties may be the basis for seeking the restoration of a CTM, if not renewed, under restitutio in integrum.4 However unless there are exceptional reasons as to why notification was not issued by OHIM in a timely fashion or to the correct entity, it can be difficult to obtain restoration of a registration due to the non renewal of same. One such exceptional circumstance was identified in a decision of the General Court in 4 Brain lab AG.5 Here one of the issues considered relevant to justification for an order for 1

Art. 46 CTMR. Art. 47 (5) CTMR. 3 Art. 47 (2) CTMR. 4 Art. 81 CTMR. 5 GC Case T-326/11 Brainlab AG v Office for Harmonisation in the Internal Market, available at www.curia.eu Õ search Case law. 2

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CTMR Art. 47

Community Trade Mark Regulation

restitutio in integrum was the failure of OHIM to notify the professional representative of a trade mark proprietor of the need to renew the registration. Due to an error by OHIM the details of the representative of a registration was removed from the register. Accordingly notification of the requirement to renew was not sent to the representative. Under Rule 67 of the Implementing Regulations if a representative is appointed, all notifications must be sent to them and not to the proprietor. Since OHIM had failed to issue notification of renewal to the representative of the proprietor, the procedures established by the representative for the renewal of a registration was not activated and so the registration was not renewed. This was held by the General Court to be significant as it had been established with a degree of likelihood bordering certainty that if notification had been received by the representative their procedures for renewal would have been activated and the proprietor of the registration would have given instructions to renew. An order for restitutio in integrum was granted under these circumstances. The court however emphasised that while OHIM’s error had contributed to the loss of right in the registration, such action did not give rise to liability on the part of OHIM. 5 A request for renewal of a CTM cannot be made prior to six months before the expiration date. The request must be made in the six month period prior to the expiration of the CTM. The six month period expires at the end of the month in which the registration expires.6 For example, for a CTM which expires on 15 May in a given year, the CTM can be renewed up to 31 May of that year, the end of the month in which the CTM expires. 6 If the request for renewal of a CTM is not submitted within the required six month period a late request for renewal can be filed within six months after the expiration date. The six month period starts on the day following the month in which the CTM expires, and accordingly the period ends on the last day of the month, six months after the renewal deadline. An additional fee is payable in respect of the late renewal of a CTM.7 7 In some case a trade mark application may not have matured to registration by the tenth anniversary of the filing date. This can be due to a number of causes, such as pending opposition proceedings. If a mark is not registered until after the ten year anniversary it must be renewed in order to remain in force. OHIM addressed this unusual circumstance whereby when an application becomes ready for registration the Office will request the payment of the renewal fee prior to the completion of the application for registration.8 Previously a registration fee had to be paid in order to complete the registration of a mark. At the time of the official request for payment of the registration fee, a request for payment of the renewal fee would also be issued. Both fees had to be paid within two months. However the requirement to pay a registration fee for the completion of an application has been waived and so now a request to pay the renewal fee will only be issued prior to registration of an application where registration will occur after the tenth anniversary of the filing of the application. If the renewal fee is not paid within the two month period set to do so, a notification affording the Applicant a further two month period to pay the fee will be issued. If the renewal fee is not paid after this period, the Office will register the Community trade mark but immediately afterwards issues a notice that the registration has expired.

6

Art. 47 (2) CTMR. Art. 47 (3) CTMR. 8 Communication No. 5/05 of the President of the Office of 27 July 2005. 7

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Renewal

Art. 47 CTMR

C. Request for renewal I. Requirements An application for renewal must be filed with OHIM in writing, by facsimile or online. Any renewal request filed must contain:9 (1) Name of the person making the renewal request (2) Registration Number of the CTM (3) Indication of the goods or services for which renewal is sought. If only some of the goods or services of the registration are to be renewed, they must be clearly and precisely identified in their correct Nice Classification.10 (4) Appropriate fees paid. There is no requirement to prove use of a mark for the goods or services for which the mark has been registered for in order to renew a registration. Where a renewal request is filed by a person other than the proprietor of the registration an authorisation will have to exist in favour of the third person filing the request. The authorisation need not be filed with OHIM, unless in exceptional circumstances OHIM requests proof of authorisation.11 A licence recorded on the Community Trade Mark Register does not demonstrate in itself the necessary level of authorisation required to renew a registration. In Jurado Hermanos12 an exclusive licence was recorded on the register. Notification of renewal was issued to the licensee and proprietor by OHIM. The licensee claimed it had never received the notification which had led to the failure to renew the registration. The licensee applied for restitutio in integrum to re-establish their rights in their registration. The licensee claimed that as an exclusive licensee it was entitled throughout the duration of the licence to seek the renewal of the trade mark, if the proprietor of the trade mark does not do so. The wording of Art. 47 (1) of the CTMR provides that authorisation must be express. As such the recordal of a licence in itself was insufficient to establish the required level of express authorisation to allow for the renewal of the registration by the licensee, as it was not a party to the proceedings and, in consequence, could not seek the re-establishment of its rights in the registration.

8

9 10

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II. Goods and services A CTM can be renewed for all goods and services for which registration has been 12 obtained or for only some of the goods and services covered by the registration.13 If a CTM is renewed for only some of the goods and services, the registration will only be valid for these goods and services. The remaining goods and services of the CTM for which the renewal is not sought will be cancelled. 9

Rule 30 (1) CTMIR. Art. 47 (4) CTMR. 11 Communication No. 8/05 of the President of the Office of 21 December 2005 concerning the renewal of Community trade marks, para A. (2). 12 GC Case T-410/07 Jurado Hermanos, SL v Office for Harmonisation in the Internal Market [2009] II-01345. 13 Art. 47 (4) CTMR. 10

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Community Trade Mark Regulation

If specific goods and services are reclassified under the Nice Classification system, it is not necessary to reclassify them within a CTM on renewal.

III. Fees payable 14

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The required fees must be paid prior to the expiration date of the CTM for a renewal request to be effective. The current fees payable are: – EUR 1,500 – for up to three classes in a single registration. (If a renewal is applied for electronically, a reduced fee of EUR 1,350 is payable) – EUR 400 – for each additional class in a single registration beyond three classes14 For collective marks the fees payable for renewal are higher: – EUR 3,000 – for up to three classes in a single registration. – EUR 800 – for each additional class in a single registration beyond three classes If a registration is renewed after the expiration date a surcharge of 25 % is payable for the late renewal. If the payment of a renewal fee, by bank transfer, reaches the Office which contains the name of the payer, the registration number of the CTM and the indication ‘renewal fee’, this constitutes a valid renewal request and no further formalities are required to be meet for the registration to be renewed.15 The renewal fee does not have to be paid by the same person who has filed the renewal request. For instances, the proprietor of a CTM can request that the renewal of a CTM while a licensee or other third party with an interest in the registration can pay the official fee for renewal, provided they are authorised to do so. Where the renewal fee is insufficient to cover all of the classes of goods and services of a registration for which renewal is sought, unless it is clear from the renewal request which classes of goods and services the fees pertain to, OHIM shall allocate the fees to the classes in the order of classification according to the Nice Classification system.16 Where the fees for the renewal of a CTM have been paid but the renewal was not completed, the fees shall be refunded in full.17 Commission Regulation No. 1687/2005 has abolished cheques and cash payments as admissible means of payment. This applies to the payment of renewal fees also.18

IV. Deficiencies 21

If a renewal request filed within the six month period prior to the expiration date or the six month period after the expiration date, does not include all of the requirements for renewal, such as failure to clearly identify the registration to be renewed or failure to pay the required fee, OHIM will notify the proprietor of the CTM of the deficiencies and afford them an opportunity to remedy the deficiencies. If the deficiencies are not

14

Rule 30 (2) CTMIR. Communication No. 8/05 of the President of the Office of 21 December 2005 concerning the renewal of Community trade marks, para A. (3). 16 Rule 30 (5) CTMIR. 17 Rule 30 (7) CTMIR. 18 Communication No. 8/05 of the President of the Office of 21 December 2005 concerning the renewal of Community trade marks, para B. (3). 15

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Renewal

Art. 47 CTMR

rectified before the expiration of the six month period allowed for the late renewal of a registration after the expiration date, the registration will be cancelled by OHIM.19

D. Expiration A CTM registration will expire where: (a) A request for renewal is not submitted by the end of the month in which the CTM expires or by the end of the month of the additional six month period allowed for late renewal: or (b) The renewal fees, and any possible late fees payable, are not paid within the defined period; or (c) Any deficiencies in the renewal request are not rectified within the required period.20 OHIM will notify the proprietor of the CTM and any person with a recorded interest in the CTM of the expiry of a registration and will advise them of the right to appeal against the decision, within two months of the expiration. When the determination of OHIM is final, the registration will be cancelled, which takes effect from the day following the date on which the registration expired.21 It is possible to apply for the conversion of a CTM which has expired due to nonrenewal, in to a series of national applications.22 Where there are pending proceedings in relation to a CTM registration, and the proceedings are terminated due to the non-renewal of a the CTM, the proprietor of the expired CTM must bear the costs and fees incurred by the other party or parties to the proceedings.23 In the United Kingdom and Ireland, there are public interest provisions in their respective legislations, whereby an expired national trade mark, CTM or International Registration, must be taken into consideration for a period of 12 months following the expiry of the registration, for the purpose of determining the registrability of a later filed national trade mark in either country.24 This provision is a reflection of the common law tradition of each country, as it aims to protect residual goodwill in a trade mark which may exist due to use. If it can be shown that there was no bona fide use of the expired trade mark for a period of two years immediately preceding the expiration of the trade mark registration, the expired registration will not be taken into account for the purposes of determining the registrability of a later filed national trade mark. This provision however does not apply to opposition proceedings filed by third parties. An opponent cannot rely on an expired registration as a basis for opposing an application.

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E. Restoration – restitutio in integrum Where a CTM has expired and notification of cancellation has been sent to the 27 proprietor of the CTM or any party with a recorded interest in the registration, an application can be filed to restore the registration under restitutio in integrum, within 19

Rule 30 (4) and Rule 30 (5) CTMIR. Rule 30 (4) CTMIR. 21 Rule 30 (6) CTMIR. 22 Art. 112 CTMR. 23 Art. 85 (3) CTMR. 24 United Kingdom: Sec 6 (3) Trade Marks Act, 1994/Ireland@ Sec 11 (3) of the Trade Marks Act, 1996 20

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two months of the date of cancellation of the CTM.25 In order for such an application to be considered the renewal fee and any possible surcharges due for late renewal, must be paid within the two month period also. For an application for restitutio in integrum to be granted the situation justifying the restoration of rights must be abnormal or exceptional; the act was omitted because of unforeseeable circumstances that were beyond the proprietor’s control, even if all due care was taken ‘Thai Express’.26 For professional representatives the standard of care required to avoid the loss of rights is generally higher, as such representatives are expected to organise their work so a loss of rights due to failure to observe time limits is generally excluded. In Protection Technology Co. v OHIM27 a claim of an isolated instance of human error by the renewals and accounts departments of the professional representative of the proprietor of a CTM was not considered exceptional or an unforeseeable event ‘which cannot be predicted from experience’, ‘Aurelia’28; ‘Cook’s’29. A proprietor appoints a professional representative to act on their behalf in the expectation that they will act with all due care. As the representative of the proprietor of the trade mark act on behalf of and in the name of the proprietor, their actions must be regarded as the proprietor’s actions. The General Court has held concerning the remission of custom duties, the negligence of the representative is to be taken into account in the same way as that of the interested party.30 Accordingly in Video Research USA31 the proprietor of a trade mark registration, their US attorney and their representatives before OHIM were considered to constitute a single entity for the purposes of the proceedings before OHIM and the failure to comply with the requirement to exercise due care incumbent on the representatives must be considered to be the failure of the proprietor for the purpose of the proceedings. Accordingly the lack of due care of the representative was the direct cause for the failure to renew the registration, but the issue as to whether the proprietor or their US representative displayed all the diligence required in order to mitigate the errors of the representative was not relevant from the perspective of the legality of the decision not to order restitutio in integrum to allow for the renewal of the registration. In normal circumstances human or technical error leading to the failure to renew a CTM, is not viewed as justification for the restoration of a right, as it is not considered an ‘exceptional or unforeseeable event’, Video Research USA ‘VR Logo’32; Brainlab33. In case for restitutio in integrum the degree of duty of care which parties must demonstrate in order to have their rights re-established must be determined in light of all the relevant circumstances.34 As such each action will be considered on the basis of the circumstances and merits of each case, and whether the necessary level of due care was exercised by all parties to the proceedings.

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Art. 81 CTMR. OHIM Dec. of 30 June 2000 – R 235/2000-3 Thai Express 27 OHIM Dec. of 10 April, 2013 R 2071/2012-5 Protection Technology Co. v OHIM. 28 GC Case T-136/08 Aurelia finance v OHIM [2009] II-01361, mn. 28. 29 CG Case T-314/10 Constellation Brands v OHIM, available at www.curia.eu Õ search Case law, mn. 28. 30 GC Case T-382/04 Heuschen & Schrouff Oriental Foods v Commission [2006] II-00094, mn. 94. 31 GC Case T-267/11 Video Research USA, Inc. v Office for Harmonisation in the Internal Market, available at www.curia.eu Õ search Case law. 32 GC Case T-267/11 Video Research USA, Inc. v Office for Harmonisation in the Internal Market. 33 GC Case T-326/11 Brainlab AG v Office for Harmonisation in the Internal Market. 34 GC Case T-326/11 Brainlab AG v Office for Harmonisation in the Internal Market, mn. 56. 26

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Alteration

Art. 48 CTMR

In cases where the right of a proprietor is restored under restitutio in integrum, and 33 the original decision to refuse the renewal of a registration is overturned, the proprietor of the registration cannot rely on their rights restored against a third party who, in good faith, put goods on the market or supplied services under a mark which would otherwise infringe the CTM during the period the rights in the registration were loss, prior to restitution.35 The third party can challenge the decision to re-establish the rights in question within two months from the date of publication of the re-establishment of rights.

Article 48 Alteration 1. The Community trade mark shall not be altered in the Register during the period of registration or on renewal thereof. 2. Nevertheless, where the Community trade mark includes the name and address of the proprietor, any alteration thereof not substantially affecting the identity of the trade mark as originally registered may be registered at the request of the proprietor. 3. The publication of the registration of the alteration shall contain a representation of the Community trade mark as altered. Third parties whose rights may be affected by the alteration may challenge the registration thereof within a period of three months following publication. The amendment of a CTM is generally not permitted.1 However one exception is 1 allowed; where a CTM includes the name and address of the proprietor, the name and/ or address of the proprietor can be altered, provided the alteration ‘does not substantially affect the identity of the trade mark as originally registered’.2 There is no clear definition within the regulations as to what would be deemed an alteration which substantially affects the identity of a trade mark, and each alteration application is judged on its own merits. In an appeal to the Board of Appeal of OHIM Metso Corporation3 applied to amend 2 the representation of its registered trade mark METSO POWDERMET by the removal of the term METSO, which referenced the company name of the proprietor. The registration had been assigned to a third party, so that it was argued that inclusion of the company name METSO within the mark was now deceptive. Further it was argued that the remaining element of the mark POWDERMET was a syntactially unusual juxtaposition of ‘powder’ and ‘melt’ and so was distinctive on its own, whereas METSO was only an indication of the company who produced and sold the product. The application to amend the registration was refused by OHIM as it was considered to contain a significant amendment to the mark as a whole and so was contrary to Art 48 (2) of the CTMR. An appeal against this decision was heard by the Fourth Board of Appeal. The Board considered that the application to amend the mark METSO POWDER- 3 MET by the removal of the term METSO was not an alteration of the representation but rather an elimination of ‘METSO’. An alteration requires both the name (and address) 35

Art 81 (6) CTMR. Art 48 (1) CTMR. 2 Art 48 (2) CTMR. 3 OHIM Dec. of 25/5/2012 – R 2136/2011-4 Metso Corporation. 1

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CTMR Art. 49

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of the proprietor included within the mark is to be changed to the name (and address) of the proprietor as changed. To remove ‘METSO’ from the mark was to eliminate the word rather than alter the name of the proprietor. It substantially altered the distinctive character of the mark as registered and changed the overall impression of the mark. The appellant had also made reference to a comparable decision by the Swedish Trade marks Office to amend the representation of a registered mark. The Board found that ‘alleged practice of national offices in proceedings regarding changes in registrations is not binding or otherwise indicative as the Office is only bound to apply the Community law and is not required to follow national decisions (Order of 12 February 2009, C-39/08, ‘Volkshandy’, para. 13) as the relevant norms are not harmonised and the Trade Mark Directive does not contain provisions regarding changes in registrations’. An application for alteration of a CTM must contain the following4: (a) Registration number of the CTM; (b) Name and address of the proprietor; (c) Name and address of the proprietor’s representative (if applicable); (d) An indication of the element of the mark to be altered and the proposed amended version of the element; (d) Representation of the amended version of the CTM (e) Payment of the prescribed fee of EUR 2005 An application for alteration of a CTM is not deemed to have been filed until the required fee has been paid.6 Any deficiency in the filing of an application for alteration of a CTM, including not having the required fee or not having paid the fee in full, will be communicated to the applicant, and a set period will be laid down, normally two months, within which the deficiencies must be rectified.7 If a deficiency is not rectified within the defined period OHIM will reject an application for alteration in its entirety. A single application can be filed for the alteration of two or more CTMs provide the required fees are paid for each registration.8 Once an application to alter a CTM is filed, the alteration must be published in the CTM Bulletin and the application is open to challenge by any third party whose rights may be affected by the alteration.9 Any challenge made must be filed within three months of the date of publication of the alteration in the CTM Bulletin. The normal procedure for filing opposition against a CTM applies thereafter.10

Article 49 Division of the registration 1. The proprietor of the Community trade mark may divide the registration by declaring that some of the goods or services included in the original registration will be the subject of one or more divisional registrations. The goods or services in the divisional registration shall not overlap with the goods or services which remain in the original registration or those which are included in other divisional registrations. 4

Rule 25 CTMIR. Art. 2 (25) Commission Regulation (EC) No. 2869/95. 6 Rule 25 (2) CTMIR. 7 Rule 25 (3) CTMIR. 8 Rule 25 (5) CTMIR. 9 Art. 4 (3) CTMR. 10 Rule 25 (4) CTMIR. 5

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Division of the registration

Art. 49 CTMR

2. The declaration of division shall not be admissible: (a) if, where an application for revocation of rights or for a declaration of invalidity has been entered at the Office against the original registration, such a divisional declaration has the effect of introducing a division amongst the goods or services against which the application for revocation of rights or for a declaration of invalidity is directed, until the decision of the Cancellation Division has become final or the proceedings are finally terminated otherwise; (b) if, where a counterclaim for revocation or a declaration of invalidity has been entered in a case before a Community trade mark court, such a divisional declaration has the effect of introducing a division amongst the goods or services against which the counterclaim is directed, until the mention of the Community trade mark court’s judgment is recorded in the Register pursuant to Article 100 (6). 3. The declaration of division must comply with the provisions set out in the Implementing Regulations. 4. The declaration of division shall be subject to a fee. The declaration shall be deemed not to have been made until the fee has been paid. 5. The division shall take effect on the date on which it is entered in the Register. 6. All requests and applications submitted and all fees paid with regard to the original registration prior to the date on which the Office receives the declaration of division shall be deemed also to have been submitted or paid with regard to the divisional registration or registrations. The fees for the original registration which have been duly paid prior to the date on which the declaration of division is received shall not be refunded. 7. The divisional registration shall preserve the filing date and any priority date and seniority date of the original registration. A CTM may be registered for a broad range of goods and services. Circumstances may occur where it is advantageous for the proprietor of a CTM to divide out a registration so instead of holding a single registration, the proprietor can hold two or more registrations divided out from the original registration. For example where a CTM registration is the subject of cancellation proceedings for non-use or a declaration of invalidity is filed against specific goods and services, it may be preferable to separate out the uncontested goods and services into a separate registration to secure the rights held in these goods and services. The goods and services of a divisional registration cannot overlap with the goods and services retained in the original registration or other possible divisional registrations so as to avoid duplication of rights held in each registration.1 A declaration of division will not be deemed admissible if the goods and services to be included in a divisional registration are the subject of pending contentious proceedings.2 Where an application for revocation for non-use or a declaration of invalidity is filed before the Cancellation Division of OHIM, if the declaration for division has the effect of dividing the goods or services against which the revocation action or declaration on invalidity are directed, the declaration of division will not be granted until the decision of the Cancellation Division has been issued or the proceedings otherwise terminated. Similarly, where a counterclaim for revocation or for a declaration of invalidity is before a Community trade mark court, again if a declaration of division will divide the goods or services against which the action before the court has been taken, the 1 2

Art. 49 (1) CTMR. Art. 49 (2) CTMR.

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CTMR Art. 49

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declaration of division will not be admissible until the judgement is delivered by the court3 or the proceedings are otherwise terminated. These provisions are to prevent the proprietor of a CTM from frustrating the actions of the Cancellation Division of OHIM or a Community trade mark court, by trying to separate out some or all of the goods or services against which a revocation action or a declaration of invalidity has been directed, into a divisional registration, separate from the original registration against which the proceedings may be addressed. In such circumstance until the proceedings are concluded a declaration of division will not be granted. If the declaration of division does not include goods and services which are the subject of pending proceedings as identified previously, then the divisional registration will be allowed. A declaration of division must comply with the provisions set out in the CTMIR to be effective4: (a) Registration number of the CTM to be divided. (b) The name and address of the proprietor of the CTM (c) The list of goods and services which shall form the divisional registration or where the divisional declaration includes more than one divisional registration, the list of goods and services for each divisional registration. A declaration of division is subject to payment of a fee in the amount of E 250.00.5 If the required fee is not paid or is not paid in full the declaration is deemed to be deficient. Where there is a deficiency in one of the requirements for a divisional declaration or the list of goods and services overlap with the goods and services to be retained in the original registration, the applicant for the declaration of division will be advised of the deficiencies and afforded a period of time to remedy the deficiencies.6 If the deficiencies are not remedied within the specified period OHIM shall refuse the declaration of division. A declaration of division, if granted, shall take effect from the date of entry on the Register.7 Prior to the granting of a declaration of division ‘all requests and applications’ submitted and fees paid in respect of the original registration shall be deemed to have been submitted or paid for the divisional registration or divisional registrations.8 Accordingly the application fees paid or any renewal fees paid against an original registration will apply to the divisional registration. Any amendment or transaction recorded against an original registration will be applied to the divisional registration also. Furthermore the renewal of an original registration prior to the filing of a declaration of division will be effective against a divisional registration, so that the divisional registration will be deemed valid. Once a declaration of division has been granted, it is a separate registration to the original registration and must be renewed separate from the original registration in order to remain a validly registered CTM. Any fees paid in respect of an original registration prior to the declaration of division will not be refunded. A divisional registration will maintain the filing date and any priority and seniority date of the original registration, in respect of the goods and services of the divisional registration.9 3

Art. 100 (6) CTMR. Rule 25 a (1) CTMIR. 5 Art. 2 (22) Commission Regulation (EC) No. 2869/95. 6 Rule 25 a (2) CTMIR. 7 Art 49 (5) CTMR. 8 Art. 49 (6) CTMR. 9 Art. 49 (7) CTMR. 4

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Division of the registration

Art. 49 CTMR

Once a divisional registration is granted OHIM will assign a new registration number 12 to it, and will establish a separate file for the registration, which consists of a full copy of the file for the original registration.10 10

Rule 25 a (4) CTMIR.

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TITLE VI SURRENDER, REVOCATION AND INVALIDITY SECTION 1 Surrender Article 50 Surrender 1. A Community trade mark may be surrendered in respect of some or all of the goods or services for which it is registered. 2. The surrender shall be declared to the Office in writing by the proprietor of the trade mark. It shall not have effect until it has been entered in the Register. 3. Surrender shall be entered only with the agreement of the proprietor of a right entered in the Register. If a licence has been registered, surrender shall be entered in the Register only if the proprietor of the trade mark proves that he has informed the licensee of his intention to surrender; this entry shall be made on expiry of the period prescribed by the Implementing Regulation. Bibliography: Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law (Wolters Kluwer Law & Business 2011)

Content I. II. III. IV. V. VI.

Surrender in respect of some or all of the goods or services. . . . . . . . . . Surrender by the proprietor of the trade mark . . . . . . . . . . . . . . . . . . . . . . . . . Effects of the surrender . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Surrender and conversion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Legitimate interest in other proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Art. 50 CTMR after the revision of the European Trade Mark system

1 4 11 15 20 25

I. Surrender in respect of some or all of the goods or services The proprietor of a Community trade mark is entitled to reduce the scope of his trade mark by restricting the goods and services for which his mark is registered. For these goods and services, the trade mark will be surrendered. 2 The trade mark may be surrendered in respect to some or to all of the goods (Art. 50 (1)). In case of a partial surrender, the trade mark will subsist for the remaining goods or services. In case of a complete surrender, the trade mark ceases to exist. The proprietor loses all his trade mark rights and can no longer exercise his rights in infringement actions or oppositions. 3 The proprietor may decide to surrender his trade mark for some goods or services, for instance because the trade mark is no longer being used for those goods or services, or because another trade mark owner threatens to challenge the Community trade mark for particular goods and services that are of less importance to the proprietor of that mark. 1

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Surrender

Art. 50 CTMR

II. Surrender by the proprietor of the trade mark Obviously, only the proprietor of the Community trade mark may surrender his trade mark. He must do so by filing a written declaration with the Office. Rule 36 CTMIR provides how the surrender must be operated in practice. The declaration of surrender pursuant to Art. 50 CTMR shall contain: (a) the registration number of the Community trade mark; (b) the name and address of the proprietor in accordance with Rule 1 (1)(b);1 (c) (deleted) (d) where surrender is declared only for some of the goods and services for which the mark is registered, the goods and services for which the surrender is declared or the goods and services for which the mark is to remain registered. Rule 36 (2) CTMIR further provides that ‘where a right of a third party relating to the Community trade mark is entered in the register, it shall be sufficient proof of his agreement to the surrender that a declaration of consent to the surrender is signed by the proprietor of that right or his representative. Where a licence has been registered, surrender shall be registered three months after the date on which the proprietor of the Community trade mark satisfies the Office that he has informed the licensee of his intention to surrender it. If the proprietor proves to the Office before the expiry of that period that the licensee has given his consent, the surrender shall be registered forthwith.’ If the requirements governing surrender are not fulfilled, the Office shall communicate the deficiencies to the declarant, who can remedy the deficiencies within the period specified by the Office. If the deficiencies are not remedied within that period, the Office shall reject the entry of the surrender in the Register.2 To surrender a Community trade mark, the proprietor or his representative can use the online surrender form in the user area of the Office’s website or he can also send his request to the Office by fax. The request must be in clear and unambiguous terms. No new registration certificate will automatically be issued after the surrender. The proprietor can only restrict the scope of the goods and services of his Community trade mark. He cannot increase the scope.

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III. Effects of the surrender The surrender will have effect as soon as it is entered in the Register (Art. 50 (2)). It 11 has no retroactive effect and there is no reimbursement of any fees.3 The surrender of the Community trade mark by the proprietor will have effects for 12 other parties who own rights in the trade mark, such as creditors. Art. 50 (3) provides that the surrender requires ‘the agreement of the proprietor of a right entered in the Register.’ 1 Rule 1 (1)(b) CTMIR refers to the name, address and the State in which the applicant is domiciled or has his seat or an establishment. Names of natural persons shall be indicated by the person’s family name and given name(s). Names of legal entities, as well as bodies falling under Article 3 of the Regulation, shall be indicated by their official designation and include the legal form of the entity, which may be abbreviated in a customary manner. Only one address shall, in principle, be indicated for each applicant. Where several addresses are indicated, only the address mentioned first shall be taken into account, except where the applicant designates one of the addresses as an address for service. 2 Art. 50 (3) CTMR. 3 Keeling in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Artt. 50, 154.

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CTMR Art. 50

Community Trade Mark Regulation

The rights entered into the Register can be the following: (a) Rights in rem: a Community trade mark may be given as a security or be subject of rights in rem in accordance with Art. 19. If the security or right in rem is recorded in the Register, the beneficiaries must agree with the surrender requested by the proprietor of the Community trade mark. (b) Levy of execution: a Community trade mark may be levied in execution of a court order in accordance with Art. 20. A creditor who seized a Community trade mark in satisfaction of a debt of the proprietor must agree with the surrender requested by the proprietor of the Community trade mark. (c) Insolvency proceedings: where a Community trade mark is involved in insolvency proceedings, on request of the competent national authority in the Member State in the territory the proprietor has his centre of main interests, an entry can be made in the Register in accordance with Art. 21. In this case, the national authority will have to agree with the surrender requested by the proprietor of the Community trade mark. 14 The surrender of the Community trade mark by the proprietor will also have effects for licensees. The surrender of the Community trade mark does not, however, require the agreement of the licensee. Art. 50 (3) merely requires that the proprietor of the trade mark proves that he has informed the licensee of his intention to surrender. Unlike the parties who own rights in the trade mark, a licensee must not agree with the proposed surrender and he can therefore not prevent the mark from being surrendered. 13

IV. Surrender and conversion Art. 112 (1)(b) CTMR provides that the applicant or the proprietor of a Community trade mark may request the conversion of his mark into a national trade mark application to the extent that the Community trade mark ceases to have effect. Because the surrender means that the mark ceases to have effect in the whole Community, the proprietor requesting the surrender has the possibility to obtain the conversion of his trade mark into multiple national trade mark applications. The request for conversion must be filed within three months after the date on which the Community trade mark ceases to have effect as a result of the surrender being recorded.4 16 Because the surrender is possible at any time, the proprietor of a Community trade mark may in the course of legal proceedings surrender the Community trade mark and request the conversion into multiple national trade mark applications. This will relocate the litigation to the national forum and multiply it, which may appear abusive.5 17 With regard to revocation for non-use of the Community trade mark during 5 years pursuant to Art. 51 (1)(a) CTMR, the proprietor who risks to lose his trade mark rights may during the revocation proceedings surrender his Community trade mark and apply for conversion in all or some of the EU Member States. As a result of the conversion, the proprietor should receive a bundle of national trade marks with new registration dates. This would allow the proprietor to benefit from trade mark protection in the chosen Member States for another period of five years without any use… 18 Since January 2014, OHIM does no longer accept the surrender in such cases. The Guidelines for examination in the OHIM on Community Trade Marks provide that when there is a surrender of a CTM that is subject to cancellation proceedings, the 15

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Art. 112 (5) CTMR. Keeling in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 50, 155.

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Surrender

Art. 50 CTMR

Office will suspend the registration of the surrender and, in parallel, the Cancellation Division will notify the cancellation applicant of the surrender, inviting him to submit observations within two months and to indicate whether he wishes to continue the proceedings or whether he agrees to the closure of the proceedings without a decision on the substance.6 If the applicant requests the continuation of the cancellation proceedings, those 19 proceedings will continue until there is a final decision on the substance. After the decision on the cancellation has become final, the surrender will be recorded only for the goods and/or services for which the contested CTM has not been revoked or declared invalid, if any. In other words, the surrender will not be recorded if the mark has been revoked or declared invalid and as a result, the proprietor cannot apply for the conversion.

V. Legitimate interest in other proceedings Pursuant to Art. 50 (1), the surrender will have effect as soon as it is entered in the Register. This does not mean, however, that all pending proceedings with regard to the surrendered trade mark lose their purpose as a result of the surrender. The effects of a surrender and those of a declaration of revocation or of a declaration of invalidity, for instance, are not the same. Whereas a Community trade mark that has been surrendered ceases to have effects only as from the registration of that surrender, a Community trade mark that has been declared revoked will be deemed, in accordance with Art. 55 (1) CTMR, not to have had any effects as from the date of the application for revocation, with all the legal consequences that such revocation implies. A Community trade mark that has been declared invalid will be deemed, in accordance with Art. 55 (2), not to have had any effects as from the outset. In the case of Ferrero v Tirol Milch, the Court of Justice had to decide whether Ferrero still had a legitimate interest to obtain a decision on the declaration of invalidity after the surrender of the Community trade mark TiMi KiNDERJOGHURT by Tirol Milch. The Court pointed out that ‘the interest in bringing proceedings – a condition of admissibility – must continue up until the Court’s ruling on the substance. According to the case-law of the Court, such an interest exists as long as the appeal may, if successful, procure an advantage for the party bringing it (Case C-550/07 P Akzo Nobel Chemicals and Akcros Chemicals v Commission [2010] ECR I-0000, paragraphs 22 and 23). (…) The surrender by Tirol Milch of the Community trade mark TiMi KiNDERJOGHURT is not, in itself, capable of rendering the appeal lodged by Ferrero devoid of purpose. Ferrero retains an interest in the present appeal in so far as – as Ferrero argued at the hearing – the effects of a surrender and those of a declaration of invalidity are not the same. That is to say, whereas a Community trade mark which has been surrendered ceases to have effects only as from the registration of that surrender, a Community trade mark which has been declared invalid will be deemed (…) not to have had any effects from the outset, with all the legal consequences that such invalidity implies.’7 In a case where the proprietor surrendered his trade mark in the course of a cancellation action before the Office because of non-use as meant in Art. 51 (1)(a) CTMR, the Board of Appeal considered that ‘there is a legitimate interest to continue 6 OHIM, Guidelines for examination in the OHIM on Community Trademarks, Part D, Cancellation, Section 1, Proceedings, 16. 7 CJ Case C-552/09 Ferrero v. OHIM (Kinder) [2011] ECR I-02063, mn. 39–43.

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CTMR Art. 51

Community Trade Mark Regulation

the proceedings on the request of the cancellation applicant following the total surrender of the contested CTM, on the grounds that the surrender of the contested CTM has only ex nunc effect, whereas the requested declaration of revocation would lead to it being expunged from the Register with (limited) ex tunc effects, i. e. as from the date of the application for revocation. In this procedural situation the legitimate interest of the cancellation applicant rests in the interest of obtaining a finding that the contested CTM had no effect in the interval (see, to that reasoning, the decision of 22 October 2010, R 463/2009-4, Magenta, para. 27)’8

VI. Art. 50 CTMR after the revision of the European Trade Mark system According to the proposals by the European Commission and the European Parliament, the abovementioned case law would be inserted in Art. 50 of the new European (Union) Trade Mark Regulation. 26 The new Art. 50 proposed by the European Commission is therefore as follows, with the amendments made by the Parliament indicated in bold: ‘1. A Community trade mark may be surrendered in respect of some or all of the goods or services for which it is registered. 2. The surrender shall be declared to the Agency in writing by the proprietor of the trade mark. It shall not have effect until it has been entered in the Register. The validity of the surrender of a European Union trade mark which is declared to the Agency subsequent to the submission of an application for revocation or for a declaration of invalidity of that trade mark pursuant to Article 56 (1) shall be conditional upon the final rejection or withdrawal of the application for revocation or for a declaration of invalidity. 3. Surrender shall be entered only with the agreement of the proprietor of a right entered in the Register. If a licence has been registered, surrender shall be entered in the Register only if the proprietor of the trade mark proves that he has informed the licensee of his intention to surrender; this entry shall be made on expiry of a period of three months after the date on which the proprietor of the trade mark satisfies the Agency that he has informed the licensee of his intention to surrender it.’ 25

SECTION 2 Grounds for revocation Article 51 Grounds for revocation 1. The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor’s rights in a Community trade 8

BoA Dec. of 7/8/2013, R-2264/2012-2, Shakey’s International Ltd v Shakey’s USA Inc.

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Grounds for revocation

Art. 51 CTMR

mark should be revoked where, during the interval between expiry of the fiveyear period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed; (b) if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered; (c) if, in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. 2. Where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods or services only. Rc. 10 Bibliography: Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law (Wolters Kluwer Law & Business 2011).

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Revocation for non-use during 5 years . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Revocation of a trade mark that has become a common name. . . . . . . 1. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. A common ‘name’ and other signs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Common in the trade. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. The acts or inactivity of the proprietor . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Geographical scope. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Revocation when a trade mark is liable to mislead the public . . . . . . . . V. Revocation for limited goods or services . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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I. General The rationale of the grounds for revocation is to limit the number of registered trade 1 marks to those marks that are actually being used, that serve the main function of a trade marks (i. e. to designate the origin of products and services) and that are not misleading. In other words, if a Community trade mark has not been put into genuine use within a continuous period of five years, if it has become the common name for a product or a service or if it is liable to mislead the public, it may be revoked and its rights may cease to exist. These three causes of revocation are provided in Art. 51 (1)(a) to (c) CTMR. Revocation always occurs as a result of something that fails to happen or happens, 2 after registration.1 Revocation differs from the expiration of a trade mark registration after ten years, where the mark will automatically be removed from the register if it is not renewed. 1

Keeling in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 51, 155.

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A trade mark will never be revoked ex officio. Revocation needs to be obtained through an application with the OHIM or through a counterclaim filed with Community trade mark courts in the course of legal proceedings. With the revocation mechanism, the European legislature offers the possibility to reduce the total number of registered trade marks, creating more freedom to use particular signs in the course of trade. The revocation of trade marks is, on the other hand, also in the interest of consumers, given that the capacity of a trade mark to perform its essential function, and in particular that of identifying the origin of the goods or services, must continue to exist during the trade mark’s lifetime. The trade mark must at all times enable the consumer who acquired products or services under the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition2. If a trade mark is no longer able to indicate the origin of goods or services, it does no longer deserve the protection of the Community trade mark Regulation. It is important to distinguish the grounds for revocation of Art. 51 (1)(a) to (c) CTMR from the grounds to declare a Community trade mark invalid on either absolute or relative grounds under Art. 52 respectively Art. 53 CTMR. Some grounds are the same, but others only exist as absolute grounds, for instance the invalidity of a Community trade mark that has been registered contrary to the provision of Art. 7 (1)(f) referred to in Art. 52 (1)(a): ‘trade marks which are contrary to public policy or to accepted principles or morality.’ Such trade marks cannot be revoked if they were not offensive at the time or registration, but became offensive later on. By virtue of Art. 110 (2) CTMR, however, their use can be prohibited under the national law of the Member States or under Community law.3 The consequences of a revocation and a declaration of invalidity are also different: a revocation applies as from the date of the request (‘ex nunc’), whereas a declaration of invalidity removes the registration from the Register with retroactive effect (‘ex tunc’). A trade mark that is validly registered can be revoked because of circumstances that occurred after the registration. A trade mark that is subject to a declaration of invalidity should not have been registered in the first place: the circumstances that lead to the declaration of invalidity existed already at the time of registration. Because the legal grounds and the consequences are different for revocation and for a declaration of invalidity, it cannot be excluded that both cancellation actions are initiated in relation to the same Community trade mark. The OHIM Guidelines for examination provide that if the same Community trade mark is subject to both revocation and invalidity proceedings, the Office has the power of discretion to decide in each case, taking into account the principles of economy of proceedings and administrative efficiency, whether one of the proceedings has to be suspended until the other is terminated or in which order the proceedings should be decided.4 If it is first decided that the Community trade mark is invalid, the parallel revocation proceedings will be automatically closed since they no longer have any object. Each party will usually have to bear its own costs. When it is first decided, however, that the Community trade mark should be revoked, the applicant may demonstrate a sufficient legal interest in obtaining a declaratory invalidity decision, in which case the proceedings will continue.

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Grounds for revocation

Art. 51 CTMR

II. Revocation for non-use during 5 years The 10th recital of the Community Trade Mark Regulation provides that ‘there is no justification for protecting Community trade marks (…), except where the trade marks are actually used.’ The requirement of use is also reflected in the 9th recital of the Trade Mark Directive, stating that ‘In order to reduce the total number of trade marks registered and protected in the Community and, consequently, the number of conflicts which arise between them, it is essential to require that registered trade marks must actually be used or, if not used, be subject to revocation.’ The CTMR therefore provides in Art. 15 (1) CTMR that if, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, the Community trade mark shall be subject to the sanctions provided for in the Regulation, unless there are proper reasons for non-use. The same rule applies if such use has been suspended during an uninterrupted period of five years. The main sanction for non-use of the trade mark is its revocation according to Art. 51 (1)(a) CTMR, the wording of which is similar – but not identical – to the wording of Art. 15 (1). While Art. 15 (1)(a) also takes into account the situation where the use of a Community trade mark has been suspended during an uninterrupted period of five years, Art. 51 (1)(a) does not directly refer to a suspension, but it nevertheless includes the situation of suspended use by providing the sanction of revocation for any trade mark that has not been put into genuine use ‘within a continuous period of five years.’ Also, where Art. 51 (1)(a) does not specify when the period of five years starts running, Art. 15 (1) indicates that the five year period starts running following registration. Consequently, an application or counterclaim for revocation on the basis of non-use is only admissible if at the date of filing of the request the CTM has been registered for more than five years. There is no time limit for filing an application for revocation. Art. 51 (1)(a) contains a detailed set of rules that govern the situation where the use of a trade mark started or resumed after five years. If no interested party has claimed the revocation of the trade mark, the commencement or the resumption of use after five years of non–use results in the re-establishment (‘Heilung’) of the trade mark rights. Indeed, Art. 51 (1)(a) provides that no person may claim that the proprietor’s rights in a Community trade mark should be revoked where, during the interval between expiry of the five year period and the filing of the application or counterclaim, genuine use of the trade mark has been started or resumed. Art. 51 (1)(a) further provides that from the moment that such an application or counterclaim is filed, the commencement or resumption of use within a period of three months preceding such application or counterclaim will be disregarded if the preparations for the commencement or resumption occurred after the trade mark proprietor became aware that the application or counterclaim would be filed. The notion preparations for the commencement or resumption of use is not defined in the CTMR and is thus open for interpretation. Clearly, some concrete action such as commissioning an advertising campaign or tooling up for a production run must have been taken. Mere discussions or vague plans about using the mark will not suffice.5 5 Example taken from Keeling in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 51, 157.

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CTMR Art. 51

Community Trade Mark Regulation

In practice, an applicant for a revocation will write to the trade mark proprietor, alleging that the trade mark was not put to genuine use during the five preceding years. The applicant will claim the revocation for non-use unless the proprietor of the trade mark is able to show genuine use. Since such a claim may trigger the trade mark proprietor to commence or resume the use of his trade mark, such triggered use will not be taken into account, provided that the applicant effectively files the application or counterclaim within three months. If the use was not triggered by the letter of the applicant for revocation, because preparations were already made beforehand, such use, if genuine, will preclude revocation. 15 Regarding the further interpretation of genuine use of a trade mark and the burden of proof, we refer to the commentary of Art. 15 CTMR.

III. Revocation of a trade mark that has become a common name 1. General A Community trade mark is subject to revocation if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered. The rights to a trade mark cease to exist if that mark is no longer a sign that is capable of distinguishing the goods or services of one undertaking of those from other undertakings, as required by the definition of a trade mark in Art. 4 CTMR. A trade mark that does no longer fulfil the essential function of designating the origin of goods or services may therefore be revoked. This happens when a sign is no longer used to refer to a good or service of a particular undertaking (a species), but rather to a category of goods or services (a genus). 17 Legal scholars often illustrate the notion of ‘genericism’ by quoting examples such as ASPIRIN, ESCALATOR, LINOLEUM, KLEENEX or CELLOPHANE, all famous brands that were once protected as trade marks, but later became the common name for the goods they were used for, at least in one or more territories. Another example of a trade mark that became generic is WALKMAN, a trade mark used by Sony in relation to the portable, personal stereo that it had developed in 1979. The product became so successful that other undertakings brought competing stereos on the market, using the word WALKMAN. When a competitor in Austria used the words ‘walkman with or without radio’ for its products, Sony filed suit for trade mark infringement, but the Austrian Supreme Court rejected its claim.6 The Court ruled that the word WALKMAN had become the common word to designate portable stereos in Austria and it revoked Sony’s trade marks. The Court found, amongst others, that a main German dictionary defined the word without referring to the trade mark of Sony, which had not opposed the entry. This decision remains limited to Austria. The word WALKMAN remains a valid Community trade mark of Sony Corporation. 18 Art. 51 (1)(b) CTMR only applies where the trade mark was distinctive when it was registered, but lost its distinctive character throughout its life. If a trade mark lacks distinctiveness ab initio, it can be invalidated on the basis of the absolute ground of Art. 7 (1)(d) CTMR, which provides that trade marks consisting exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade shall not be registered. If such a trade mark was registered inadvertently, it shall be declared invalid according to Art. 52 (1)(a) CTMR. 16

6 Oberster Gerichtshof (Austria) 29 January 2002, 4Ob269/01 i, http://www.ris.bka.gv.at (last visited on 1 May 2014).

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Grounds for revocation

Art. 51 CTMR

The absolute ground for invalidity of Art. 7 (1)(d) does not require that the trade mark has become customary as a consequence of the acts or inactivity of the proprietor of that mark. Moreover, the reference in Art. 7 (1)(d) CTMR to ‘signs or indications which have become customary’ seems larger than the notion of ‘common name’ used in Art. 51 (1)(b). Art. 51 (1)(b) therefore seems to have a smaller scope of application than Art. 7 (1)(d) CTMR.7

2. A common ‘name’ and other signs Because Art. 51 (1)(b) refers to ‘the common name in the trade’, the Regulation 19 creates the impression that only word marks can become a generic name. In Levi Strauss & Co v. Casucci, however, the Court of Justice dealt with the revocation of a graphic mark known as ‘mouette’ (seagull), a design represented by a double row of overstitching curving downwards in the middle, placed in the centre of a pentagonal pocket, in respect of clothes of class 25 (jeans). Levi Strauss sought cessation of a similar sign used by Casucci.8 The mark and sign are represented as follows: Trade mark of Levi Strauss

Sign used by Casucci

Without specifically addressing the question whether the graphic mark of Levi 20 Strauss can become the common name in the trade, the Court came to the conclusion that this is possible. The court held that ‘it is not appropriate to order cessation of the use of the sign in question if it has been established that the trade mark has lost its distinctive character, in consequence of acts or inactivity of the proprietor, so that it has become a common name within the meaning of Article 12 (2) of Directive 89/104 [the equivalent of Article 51 (1)(b) CTMR], and the trade mark has therefore been revoked.’9 It is thus possible that the common name in the trade does not include words, but 21 consists of other signs, such as a certain colour on the packaging of a pharmaceutical product, the shape of a bottle or aspects of computer-user interfaces such as icons.10 In the Netherlands, the Supreme Court (Hoge Raad) confirmed that device marks, such as those representing Dr. Bach for herbal medicines, can become generic.11

7 Cohen Jehoram/van Nispen/Huydecoper, Industrie ¨le eigendom – Deel 2 Merkenrecht (Kluwer 2008) 492. 8 CJ Case, C-145/05, Levi Strauss & Co v Casucci SpA [2006] ECR I – 3717. 9 CJ Case, C-145/05, Levi Strauss & Co v Casucci SpA [2006] ECR I – 3717. 10 Bently/Sherman, Intellectual Property Law (Oxford University Press 2008), 908. 11 Dutch Supreme Court (Hoge Raad) 20 January 2012, case 10/02536 (ECLI: nL: hR:2012: bU7244), Bach Flowers Remedies Ltd. v Healing Herbs Ltd., www.rechtspraak.nl, last visited on 1 May 2014.

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Community Trade Mark Regulation

Art. 51 (1)(b) refers to a sign that has become the common name in the trade and may therefore suggest that the sign must be the only or at least the main common name for particular goods or services, but this is not correct. It has been held to suffice if the sign has become a common name amongst others for goods or services.12

3. Common in the trade The Regulation does not provide what common in the trade means. Which is the relevant class of persons whose views must be taken into account for assessing whether a trade mark has become the common name for goods or services? Does the relevant class of persons comprise operators who deal with the product commercially or does it comprise the consumers or end-users? This question was addressed by the Court of Justice in two cases. 24 In Bostongurka, the Court of Justice examined the wording of Trade Marks Directive N 89/104/EEC in different languages and came to the conclusion that the expressions used in the English and Finnish versions refer to trade circles alone, while those used in the other languages refer both to consumers and end users as well as to the operators who distribute the product.13 The case regarded the revocation of the trade mark BOSTONGURKA in relation to chopped pickled gherkins in Sweden. Because the notion ‘in the trade’ is not restricted in the majority of the language versions to those in the trade alone and given the general scheme and the objectives of the Directive, the Court concluded that the perception of consumers or end users plays a decisive role to answer the question whether a trade mark became generic. According to the Court, ‘the whole aim of the commercialisation process is the purchase of the product by those persons and the role of the intermediary consists as much in detecting and anticipating the demand for that product as in increasing or directing it. Accordingly, the relevant classes of persons comprise principally consumers and end users.’ The court did, however, leave room for discussion in exceptional cases where, ‘depending on the features of the product market concerned, the influence of intermediaries on decisions to purchase, and thus their perception of the trade mark, must also be taken into consideration.’14 25 Ten years later, the Court of Justice had the possibility to revisit the issue of genericism in the trade in the Kornspitz case.15 In this case, Backaldrin had registered the word mark KORNSPITZ for a baking mix which it supplies primarily to bakers. They turn that mix into a bread roll which is oblong in shape and has a point at both ends. Backaldrin consented to the use of that trade mark by those bakers and the foodstuffs distributors supplied by them. Backaldrin’s competitors and the majority of bakers know that the word KORNSPITZ has been registered as a trade mark, but end users perceive it as the common name for the typical bread rolls. That perception is explained, inter alia, by the fact that the bakers using the baking mix provided by Backaldrin do not generally inform their customers either that the sign KORNSPITZ has been registered as a trade mark or that the bread rolls are produced using that mix. 26 The Court of Justice assessed the question whether a trade mark is liable to revocation if that mark has become the common name, not according to the perception 23

12

Bently/Sherman, Intellectual Property Law (Oxford University Press 2008) 908, footnote 101. CJ Case, C-371/02, Bjo¨rnkulla Fruktindustrier AB v Procordia Food AB(Bostongurka), [2004] ECR I – 524, mn. 17. 14 CJ Case, C-371/02, Bjo ¨ rnkulla Fruktindustrier AB v Procordia Food AB (Bostongurka), 24–25. 15 CJ Case, C-409/12, Backaldrin Osterreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH [2014] not yet published in the ECR, but available at www.curia.eu. 13

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Art. 51 CTMR

of the sellers of the finished product, but according to the end users of the product. Backaldrin argued that even if consumers have ceased to be aware of the existence of a trade mark, the fact that bakeries and food retailers are aware of the term’s status as a trade mark prevents it from developing into a generic name. The Court disagreed and held that a trade mark is liable to revocation in respect of a product for which it is registered if that trade mark has become the common name for that product ‘from the point of view solely of end users of the product.’ According to the Court, this interpretation does not differ from Bostongurka, where it was held that the perception of consumers or end users plays a decisive role.16 The CJ specified that the fact that the sellers are aware of the existence of the trade mark and of the origin which it indicates cannot, on its own, preclude revocation. Advocate General Cruz Villalo´n had clearly pointed out that, in cases involving a trade 27 mark’s transformation into a generic name, account is to be taken only of the trade mark’s essential function as an indication of origin.17 Art. 51 (1)(b) does not serve to protect the other trade mark functions which have been previously recognised by the Court and which allow the trade mark proprietor to rely on his exclusive right if there is an adverse effect on the quality, communication, investment or advertising function of the trade mark.18

4. The acts or inactivity of the proprietor A trade mark may only be revoked because it became generic ‘in consequence of acts 28 or inactivity of the proprietor. ‘Art. 51 (1)(b) thus places a duty on the trade mark proprietor to defend his trade marks against inappropriate use in the marketplace and the media. A trade mark will be exempt from revocation, even though it has become de facto generic, if the proprietor can show that he took all reasonable steps to defend its status as a trade mark.19 Multiple steps are possible, as illustrated below.20 The Court of Justice stated in Levi Strauss & Co v. Casucci that there is ‘a 29 requirement of vigilant conduct’21 which includes the duty to initiate legal proceedings to prevent third parties from using signs in respect of which there is a likelihood of confusion with the trade mark, since the purpose of such proceedings is precisely to preserve the distinctive character of the mark.22 The requirement of vigilant conduct further includes that the proprietor must abstain 30 from using his trade mark in such a way that it will be perceived by the relevant public as a generic name of the goods or services concerned, rather than as the indication of origin. If a new product or service has been developed and put on the market under a trade mark, the proprietor of that trade mark should also propose a generic name for his product or service, to distinguish it from the trade mark. Apple, for instance, informs the public on its website that the generic word for its iPad or iPod products is ‘mobile digital device’ and that the words iPad and iPod are registered trade marks.23 16 See above, CJ Case, C-371/02, Bjo ¨ rnkulla Fruktindustrier AB v Procordia Food AB(Bostongurka) [2004] ECR I – 5811. 17 Opinion of A-G Cruz Villalo ´ n 12 September 2013, C-409/12, Backaldrin Osterreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH, 39. 18 CJ Cases C-236/08 to C-238/08, Google France SARL and Google Inc. v Louis Vuitton Malletier SA e.a., [2010] ECR I – 02417, 77; CJ Case, L’Ore´al SA e.a. v Bellure NV e.a., ECR I – 05421, mn. 58. 19 Keeling in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 51, 157 20 See examples proposed by Groen, ‘Verwording tot soortnaam’, BMM-Bulletin 2011, 188–191. 21 CJ Case, C-145/05, Levi Strauss & Co v Casucci SpA, mn. 30–31. 22 CJ Case, C-145/05, Levi Strauss & Co v Casucci SpA, mn. 34–35. 23 Apple Trademarks List, http://www.apple.com/legal/intellectual-property/trademarks/appletmlist.html, last visited on 1 May 2014.

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Obviously, the proprietor of a (successful) trade mark that is liable to become generic, should inform the public that the mark is protected, by adding the (R) or TM signs to the mark, by explaining in advertising materials, on the website or on the packaging of products, that the mark is a registered trade mark, by using the mark with capital letters or in a particular font or design, etc. In the Kornspitz case, the Court of Justice revoked the trade mark because the proprietor had not encouraged the sellers of the bread rolls made with the KORNSPITZ bakery mix to inform their customers that the KORNSPITZ sign used to designate the product was registered as a trade mark.24 32 Finally, reference must be made to Art. 10 CTMR which provides that if a Community trade mark is reproduced in a dictionary, encyclopaedia or similar reference work, which gives the impression that the mark constitutes the generic name of the goods or services for which the trade mark is registered, the trade mark proprietor should request the publisher to accompany the reproduction of the trade mark in the next edition of the publication by an indication that it is registered as a trade mark. 33 According to some scholars, however, the use of trade marks in dictionaries and the media, including social media, is a poor barometer of the consumer’s perception in a commercial context.25 Trade marks are often used as ‘hybrid terms’, performing a variety of functions, ranging from the provision of pure commercial or source related information to the provision of pure generic or product-category information, at the same time. Different consumers may understand a trade mark to mean different things and a single consumer may apply multiple meanings to the same trade mark, depending on the context. When determining whether a term is generic, the courts should focus on the primary significance of the term to the consumer in a commercial context and should give little weight to evidence of use outside that context.26 31

5. Geographical scope 34

Although Art. 51 (1)(b) does not specify the territory where the trade mark must become generic in order to be liable to revocation, Art. 7 (2) CTMR can be applied by analogy and consequently, it will be sufficient if the trade mark has become the common name in the trade ‘in only part of the Community’.27 Reference can be made to the case of August Storck where the Court of Justice held that the wording ‘in only part of the Community’, in relation to Art. 7 (2), may refer to a single Member State.28

IV. Revocation when a trade mark is liable to mislead the public 35

Art. 51 (1)(c) provides that a Community trade mark may be revoked if, in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. 24 CJ Case 2014, C-409/12, Backaldrin Osterreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH [2014] not yet pusblished in the ECR, but available at www.curia.eu, mn. 34. 25 Desai/Rierson, ‘Confronting the genericism conundrum’, Cardozo Law Review 2007, Vol. 28:4, 1836. 26 Desai/Rierson, ‘Confronting the genericism conundrum’, Cardozo Law Review 2007, Vol. 28:4, 1836, referring to Folsom/Teply, ‘Trademarksed Generic Words’, Yale Law Journal 1980, 1339. 27 Keeling in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 51, 158. 28 CJ Case, C-25/05 P, August Storck KG v.OHIM [2006] ECR I – 5719, mn. 81–83.

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Grounds for revocation

Art. 51 CTMR

The provision of Art. 51 (1)(c) is the counterpart of Art. 52 (1)(a) juncto Art. 7 (1)(f) CTMR regarding the absolute grounds for invalidity. Revocation of a misleading trade mark according to Art. 51 (1)(c) implies that the concerned mark was not misleading at the time of registration, but became misleading later, while invalidating a trade mark because it is liable to mislead the public implies that it was already misleading per se at the time of registration. When a trade mark is liable to mislead the public as to the quality of goods or services, the notion quality refers to a characteristic or attribute, not to a degree or standard of excellence.29 It its Manual concerning proceedings before the Office, OHIM gives some examples of trade marks that may be liable to mislead the public. A CTM which contains the words GOATS CHEESE and is registered for goats cheese will be liable to be revoked if it is used for both goats and sheep’s cheese. Likewise, a distinctive figurative CTM containing the words PURE NEW WOOL which is registered for clothing, may be misleading the public if it is used for clothing manufactured from artificial fibres. The Manual adds that the onus of proof that a trade mark has become misleading rests with the applicant or counterclaimant for revocation.30 As it is the case for revocation of a mark that became generic according to Art. 51 (1)(b), the behaviour of the trade mark proprietor will be key in the assessment: the proprietor must have made misleading use of the trade mark himself, or allowed a third party to make misleading use of it, before the mark becomes liable to revocation. The proprietor who is granting a licence to use his trade mark should ensure in the licence agreement that the licensee does not misuse the mark in a way that might mislead the public and jeopardize the mark’s viability.31 In Cambozola, the Court of Justice offered guidance in determining when the public is liable to be misled. The Court requires the existence of actual deceit or of a sufficiently serious risk that the consumer will be deceived.32 In that case, the term CAMBOZOLA was registered and used in relation to blue cheese. Although it is for the national court to decide whether the conditions for revocation are met, the Court held that the use of the term CAMBOZOLA which evokes the designation of the famous GORGONZOLA cheese, can alone not be deemed liable to deceive the public as to the nature, quality or origin of the product. In Elizabeth Emanuel33, a British fashion designer bearing this name had sold her company, including goodwill, and subsequently objected to the use of a word mark containing her name by the assignee of her former business. Mrs. Emanuel argued that consumers could perceive the trade marks ELIZABETH EMANUEL as if she was involved in the design process of the clothing, which was no longer the case. The Court of Justice held that even if the average consumer might be influenced in his act of purchasing a garment bearing the trade mark ELIZABETH EMANUEL, by imagining that this designer was involved in the design of the garment, the characteristics and the qualities of that garment remain guaranteed by the undertaking that owns the trade mark. Therefore, the Court held that the name Elizabeth Emanuel cannot be regarded in itself as being of such nature as to deceive the public of the nature, quality 29 Manual concerning proceedings before the Office for Harmonization in the Internal Market, part D, Cancellation, section 2, Substantive provisions, 4. 30 Manual concerning proceedings before the Office for Harmonization in the Internal Market, part D, Cancellation, section 2, Substantive provisions, 4. 31 Bently/Sherman, Intellectual Property Law (Oxford University Press 2008), 911. 32 CJ Case, C-87/97, Consorzio per la Tutela del Formagio Gorgonzola v Ka ¨ serei Champignon Hofmeiser GmbH&Co, Kg and Eduard Bracharz GmbH, [1999] ECR I – 1301, mn. 41. 33 CJ Case, C-259/04, Elizabeth Florence Emanuel v Continental Shelf LTd [2006] ECR I – 03089.

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Community Trade Mark Regulation

or geographical origin of the product it designates, ‘in particular where the goodwill associated with that mark has been assigned together with the business making the goods to which the mark relates.’34 43 An interesting case was decided by the OHIM Board of Appeal in relation to a trade mark that was allegedly misleading as to the geographical origin of the goods.35 The Swiss company Mo¨venpick Holding registered the trade mark MOVENPICK OF SWITZERLAND in respect of chocolate confectionery, pastry, biscuits and the like. Because several goods of Mo¨venpick Holding were not produced in Switzerland, but in Germany, two Swiss associations representing the biscuits and confectionary industry and the producers of chocolate filed an application for the revocation of the CTM registration. The trade mark proprietor replied that no deceit was likely on the part of the consumers because the geographical origin of the goods (‘Made in Germany’) was clearly identified on the packaging and because the proprietor was the Swiss entity responsible for the quality of the products. The Board of Appeal, however, held that ‘a trade mark composed of, or containing, a geographical indication will as a rule be perceived by the relevant public as a reference to the place from where the goods originate. The only exception to that rule is where the relationship between the geographical name and the products is manifestly so fanciful (…) that consumers will not establish such connection.’ The Board held that the public will logically understand that the goods are made in Switzerland, and consequently, the message conveyed to the public does not reflect the reality and a misleading effect takes place. Also, the Board of Appeal held that the reference ‘Made in Germany’ might make that the packaging as a whole is not misleading, but the trade mark is.36

V. Revocation for limited goods or services Art. 51 (2) CTMR provides that where the grounds for revocation of rights only exist in respect of some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods and services only. 45 This provision implies that Courts will need to asses for each good or service of the registration which is subject to revocation, whether the trade mark has been genuinely used. 44

34 CJ Case C-259/04, Elizabeth Florence Emanuel v Continental Shelf Ltd. [2006] ECR I – 03089, mn. 48–51. 35 BoA Dec. of 12/02/2009, R 697/2008-1, Biscosuisse – Chocosuisse v Mo ¨ venpick Holding. 36 BoA Dec. of 12/02/2009, R 697/2008-1, Biscosuisse – Chocosuisse v Mo ¨ venpick Holding, mn. 17–19.

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Absolute grounds for invalidity

Art. 52 CTMR

SECTION 3 Grounds for invalidity Article 52 Absolute grounds for invalidity 1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where the Community trade mark has been registered contrary to the provisions of Article 7; (b) where the applicant was acting in bad faith when he filed the application for the trade mark. 2. Where the Community trade mark has been registered in breach of the provisions of Article 7 (1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. 3. Where the ground for invalidity exists in respect of only some of the goods or services for which the Community trade marks is registered, the trade mark shall be declared invalid as regards those goods or services only. Bibliography: Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design Law, 2011; CIPA, ITMA Community Trade marks Handbook; Gu¨nther Eisenfu¨hr/Detlef Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 2010; Tobias Cohen Jehoram/Constant van Nispen/Toon Huydecoper, Industrie¨le eigendom 2, 2008.

Content A. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Ratio. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Assessment of invalidity of OHIM decisions by OHIM. . . . . . . . . . . . . . . . III. The relevant date . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Registrations contrary to Art. 7 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Bad faith filing. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. European concept . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Absolute character of bad faith cancellation ground. . . . . . . . . . . . . . . . . . . . III. No intention to use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. The concept of bad faith . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Burden of proof – presumption of good faith . . . . . . . . . . . . . . . . . . . . . . . . . . . D. Acquired distinctiveness after registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 1 2 6 7 8 8 10 15 16 35 36

A. General I. Ratio Invalidation serves as a means to rectify mistakes at the examination and opposition1 1 stage. Trade marks can be wrongly rejected on absolute and relative grounds (in opposition proceedings) and can be wrongly accepted. For wrongful rejections there 1 Keeling, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design law, Art. 52 CTMR mn. 1; Cohen Jehoram/Van Nispen/Huydecoper, Industrie¨le eigendom 2, mn. 12.7.

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exists an elaborate system of appeals that ensures that these can be set aside. Artt. 52 and 53 provide a solution for trade marks that are wrongfully accepted.

II. Assessment of invalidity of OHIM decisions by OHIM The fact that the invalidation must be dealt with by OHIM, indicates that OHIM, through the Cancellation Division, must be able to assess its own previous decisions, whether deriving from the Examination, Opposition division or Board of Appeal. Earlier the Cancellation Division held that cancelation proceedings would only provide a means for rectification of clear mistakes and that they would not allow OHIM to make another decision with possibly a different result. Only when it could be shown that OHIM at examination would have overlooked substantial criteria and that thus in its discretionary decision to accept the mark would have been made on insufficient basis, the Cancellation Division could invalidate a registered trade marks2. 3 The Board of Appeal rectified this position in the decision in the Playing Cards matter3. In this decision the Board held: 2

‘The role of the Cancellation Division is to assess the merits of the case made before it. It should not consider its discretion as being fettered in any way either by the examiner who took the decision to allow the trade mark, by the Opposition Division, where an opposition has been considered, or by a Board of Appeal which has dealt with proceedings leading to the registration of the CTM.’4 In the Board’s view, the appreciation by the Cancellation Division of its function or jurisdiction was misconceived and had no basis in law. The Cancellation Division has the same scope of discretion as the Examination or Opposition Divisions. In cancellation proceedings the Cancellation Division will apply the same criteria and precedents as the Examination Division, but if the same arguments are put forward as in examination proceedings they can have a different outcome5. 5 Although both examination and cancellation are dealt with by OHIM, the nature of these cancellation proceedings differs. Cancellation proceedings are never initiated by OHIM itself. The initiative lies with the applicant for cancellation, also in cases based on absolute grounds of invalidity6. In examination, the CTM proprietor only has to face the Examination Division, whereas in cancellation proceedings there is a third party that challenges the CTM’s validity. That party is in a better position than the third-party observer under Art. 40 CTMR, since in cancellation proceedings he will be a full party to those proceedings. Moreover, this party will be able to obtain more and better information as to the trade mark’s invalidity than an examiner can ever get because of his examination on the ground of Art. 76 (1) CTMR7. 4

2 OHIM Dec. of 31.9.2001 – 6C 000172734/1 – Cahill May Roberts Ltd. v Medicine Shoppe International (Mortar & Pestle), mn. 23. 3 OHIM Dec. of 28.2.2002 – R 766/2000-2 – Socie ´te` France Cartes v Naipes Heraclio Fournier. 4 OHIM Dec. of 28.2.2002 – R 766/2000-2 – Socie ´te` France Cartes v Naipes Heraclio Fournier, mn. 15. 5 GC Case T-237/01 Alcon v Dr Robert Winzer Pharma GmbH [2003] ECR II-00411, mn. 35. 6 Guidelines for Examination in the Office, Part D, Cancellation, mn. 1.2. 7 Keeling, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design law, Art. 52 CTMR mn. 3.

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Absolute grounds for invalidity

Art. 52 CTMR

III. The relevant date The material date for the examination of invalidity is the date of the filing the 6 application for registration of the CTM8. This means that if the trade mark has become generic after the date of filing, it cannot be cancelled under Art. 52 (1)(a), but must be revoked under Art. 51 (1)(b) CTMR.

B. Registrations contrary to Art. 7 Art. 52 (1)(a) provides the possibility for a full review of OHIM’s earlier decision to 7 accept a CTM in a setting that all interested parties can submit their opinion. Materially the review does not differ from the examination by OHIM, but the possibility of third parties now being able to submit their opinion obviously gives this review a whole different dynamics than the single sided OHIM examination. Moreover, now that the application for invalidity can also be made in a counterclaim before a (national) CTM Court, the review can also take place before a different body than OHIM with different procedural rules to adhere to.

C. Bad faith filing I. European concept Before getting to the meaning and application of the concept of bad faith, it should first 8 be noted that ‘bad faith’ is an autonomous concept of European Union law which must be given an uniform interpretation in the European Union9. According to the case law of the CJ, the CTM regime is an autonomous system with its own set of objectives and rules peculiar to it, it applies independently of any national system10. The CTMR, which supplements EU trade mark legislation by creating a Community regime for trade marks, pursues the same objective as the TMDir, namely the establishment and functioning of the internal market. The CJ has held that in the light of the need for harmonious interaction between the two systems of Community and national marks, it is necessary to interpret the concept of ‘bad faith’ within the meaning of Art. 4 (4)(g) TMDir11 in the same manner as in the context of the CTMR. Such an approach ensures a coherent application of the various trade mark rules in the legal order of the European Union. It should be noted that there is a striking difference between the manner bad faith is 9 dealt with in the CTMR and TMDir. The TMDir provides that the member states can apply bad faith as a ground of refusal for both refusing registration and for invalidating 8 CJ Case C-192/03 Alcon v Dr Robert Winzer Pharma GmbH [2004] ECR I-8993, mn. 40; CJ Case C529/07 Chocoladefabriken Lindt & Spru¨ngli AG v Franz Hauswirth GmbH [2008] ECR I-8823, mn. 35. 9 CJ Case C-320/12 Malaysia Dairy Industries Pte. Ltd v Ankenævnet for Patente rog Varemæker [2013] ECR I-0000, mn. 29. 10 CJ Case C-482/09 Bude ˇjovicky´ Budvar [2011] ECR I-0000, mn. 29. 11 CJ Case C-320/12 Malaysia Dairy Industries Pte. Ltd v Ankenævnet for Patente rog Varemæker [2013] ECR I-0000, mn. 35.

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a trade marks. The CTMR, on the other hand, only applies bad faith for invalidation. At the same time, the CJ has held that under the CTMR, the relevant time for determining whether there was bad faith on the part of the applicant, is the time of filing the application for registration. This means that also under the CTMR, the factual situation before and at the time of application is crucial for solving a bad faith issue.

II. Absolute character of bad faith cancellation ground 10

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The CTMR considers bad faith only as an absolute ground for the invalidity of a CTM, to be relied on either before OHIM or by means of a counterclaim in infringement proceedings. Therefore, bad faith is not relevant in examination or opposition proceedings12. It has been remarked that there is something fundamentally illogical about the treatment of bad faith as an absolute ground of invalidity13. An issue about a filing in bad faith is in essence a conflict between two parties as to who is the rightful owner of the trade marks, which looks more as a relative than as an absolute issue. It should be noted that e. g. in the Benelux, the concept of bad faith is indeed treated as a relative issue14. The categorization of bad faith as an absolute ground of refusal has relevant legal effects. First of all, Art. 76 (1) CTMR states that in general in proceedings before it, OHIM shall examine the facts of its own motion. However, in proceedings relating to relative grounds of refusal of registration, OHIM shall be restricted in its examination to the facts, evidence and arguments provided by the parties. It seems illogical to treat the by nature more relative ground of bad faith differently than the properly named relative grounds of Art. 53. As more often happens in EU law, in practice things are not so bad as they present themselves at first. In practice, OHIM rarely investigates facts of its own motion in invalidity proceedings, regardless whether they are based on absolute or relative grounds15. The relative nature of the absolute ground of bad faith makes that OHIM more relies on facts, evidence and arguments presented by the parties. The evidence that regards bad faith is more similar to the evidence relating to other relative grounds than to absolute grounds. Therefore, although bad faith is defined as an absolute ground of invalidation, it acts and is treated more as a relative ground. Another legal consequence of the fact that bad faith is qualified as an absolute ground of invalidity rather than a relative ground, is that the scope of persons who can invoke that ground is much wider than for relative grounds. Art. 56 (1)(a) states that the claim for cancellation on absolute grounds can be made by any natural or legal person and any trade or consumers association, whereas Art. 56 (1)(b) states that relative grounds can only be invoked by those that can also file for opposition (Art. 41 (1)).

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OHIM, Guidelines for Examination in the Office, Part D, Cancellation, mn. 3.3. Keeling, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design law, Art. 52 CTMR mn. 5 (b). 14 Cohen Jehoram/Van Nispen/Huydecoper, Industrie ¨le eigendom 2, mn. 6.2.1; Folmer, in Intellectuele Eigendom, Art. 2.28 (1) BTIP, mn. 1. 15 Clegg, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design law, Art. 76 CTMR mn. 1. 13

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Absolute grounds for invalidity

Art. 52 CTMR

III. No intention to use Contrary to e. g. the UK trade marks system, the CTM system has no ‘intention to 15 use’ requirement. This means that under the European system, as a rule, it is legitimate for an undertaking to seek registration of a mark, not only for the categories of goods and services which it markets at the time of filing the application, but also for other categories of goods and services which it intends to market in the future16.

IV. The concept of bad faith Bad faith is a concept that defies clear definition. No one knows exactly what it is and what it entails. What means bad faith for one, means honest business practice for the other17. The concept of bad faith is not defined, delimited or even described in any way in the legislation, but some guidance may be derived from its place in the scheme of that legislation. A registered mark may be declared invalid, inter alia, on absolute or relative grounds. Bad faith of the applicant at the time of the application is an additional absolute ground. In addition, the holder of an earlier right may not seek the invalidation or oppose the use of a CTM if he has acquiesced in the use of that mark for at least five consecutive years, unless the mark was applied for in bad faith, (Art. 54). Bad faith therefore appears as an inherent defect in the application (rather than in the trade mark), which fundamentally vitiates the registration regardless of other circumstances. Much the same overall pattern is found in the Trade Marks Directive18. One way to describe bad faith is ‘conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices’19. The CJ has held that the assessment of whether the holder of the trade marks has been acting in bad faith must be the subject of an overall assessment, taking into account all the factors relevant to the particular case20. From the CJ case law (and most notably the Lindt and Malaysia Diary Company decisions, a non-exhaustive list of such factors can be deducted. First of all, the CTM allegedly registered in bad faith must be identical or confusingly similar to the sign to which the invalidity applicant refers. Also, and this follows from the fact that the sign must be ‘confusingly’ similar, the product for which the earlier mark was pre-used, must be identical or similar to those for which the CTM is 16 GC Case T-33/11 Peeters Landbouwmachines BV v AS FORS MW(BIGAB) [2012] ECR I-0000, mn. 24. 17 Opinion Advocate General Sharpston 12.3.2009 Case C-529/07 Chocoladefabriken Lindt & Spru ¨ ngli AG v Franz Hauswirth GmbH [2008] ECR I-8823, mn. 35: ‘Like a banker, bad faith is no doubt easier to recognise than to define. It is a concept with which not merely lawyers but philosophers and theologians have grappled without quite achieving mastery. It is likely, indeed, that bad faith cannot be defined at all in the sense of determining its precise limits.’ 18 Opinion Advocate General Sharpston 12.3.2009 Case C-529/07 Chocoladefabriken Lindt & Spru ¨ ngli AG v Franz Hauswirth GmbH [2008] ECR I-8823, mn. 36–43. 19 Opinion Advocate General Sharpston 12.3.2009 Case C-529/07 Chocoladefabriken Lindt & Spru ¨ ngli AG v Franz Hauswirth GmbH [2008] ECR I-8823, mn. 60; Guidelines for Examination in the Office, Part D, Cancellation, mn. 3.3.2. 20 CJ Case C-529/07 Chocoladefabriken Lindt & Spru ¨ ngli AG v Franz Hauswirth GmbH [2008] ECR I8823, mn. 37.

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registered. This means that it is not possible to claim bad faith on the basis of use for dissimilar goods or services, no matter how well known the unregistered trade marks may be21. Secondly, the holder of the trade mark knew or must have known that a third party was using, in at least one Member State, an identical or confusingly similar sign for an identical or similar product capable of being confused with the sign for which registration is sought. With regard to the expression ‘must know’, the CJ has held that a presumption of knowledge, by the holder of the trade marks, of the use by a third party may arise, inter alia, from general knowledge in the economic sector concerned of such use, and that knowledge can be inferred, inter alia, from the duration of such use22. The more that use is long-standing, the more probable it is that the applicant will, when filing the application for registration, have knowledge of it23. However, the fact that the applicant knows or must know that a third party has long been using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought is not sufficient, in itself, to permit the conclusion that the applicant was acting in bad faith. From this it follows that in order to determine whether there was bad faith, consideration must also be given to the applicant’s intention at the time when he files the application for registration. The applicant’s intention at the relevant time is a subjective factor which must be determined by reference to the objective circumstances of the particular case24. This means that the intention to prevent a third party from marketing a product may, in certain circumstances, be an element of bad faith on the part of the applicant. That is in particular the case when it becomes apparent, subsequently, that the applicant applied for registration of a sign as a CTM without intending to use it, his sole objective being to prevent a third party from entering the market. The CJ held that in such a case, the mark would not fulfil its essential function, namely that of ensuring that the consumer or end-user can identify the origin of the product or service concerned by allowing him to distinguish that product or service from those of different origin, without any confusion25. The fact that a third party has long used a sign for an identical or similar product capable of being confused with the mark applied for and that that sign enjoys some degree of legal protection, is one of the factors relevant to the determination of whether the applicant was acting in bad faith. In such a case, the applicant’s sole aim in taking advantage of the rights conferred by the CTM might be to compete unfairly with a competitor who is using a sign which, because of characteristics of its own, has by that time obtained some degree of legal protection. 21 Unregistered marks that are so well known that they qualify as ‘well-known’ marks within the meaning of Art. 6bis Paris Convention can serve as a relative ground of refusal, Art. 53 (1)(a). Although Art. 6bis PC itself only relates to similar goods and services, Art. 16 (2) TRIPs Treaty causes Art. 6bis also to apply on dissimilar goods and services. It is strange that if a unregistered mark is well-known it is qualified a the ‘lesser’ relative ground, whereas if that mark is less known it can benefit from the ‘better’ absolute grounds. 22 It is interesting to see that in the Lindt decision the CJ focuses on the duration of the use. Another solution could have been to apply the concept of ‘normal use’, as for instance the Benelux legislator has done in Art. 2.4 (f) Benelux Treaty Intellectual Property (BTIP). 23 CJ Case C-529/07 Chocoladefabriken Lindt & Spru ¨ ngli AG v Franz Hauswirth GmbH [2008] ECR I8823, mn. 39. 24 CJ Case C-529/07 Chocoladefabriken Lindt & Spru ¨ ngli AG v Franz Hauswirth GmbH[2008] ECR I8823, mn. 40–42. 25 CJ Case C-529/07 Chocoladefabriken Lindt & Spru ¨ ngli AG v Franz Hauswirth GmbH [2008] ECR I8823, mn. 43–45.

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Absolute grounds for invalidity

Art. 52 CTMR

However, because the stress is now on the applicant’s intention at the time of application, the CJ has also held that even in such circumstances, and in particular when several producers were using, on the market, identical or similar signs for identical or similar products capable of being confused with the sign for which registration is sought, it cannot be excluded that the applicant’s registration of the sign may be in pursuit of a legitimate objective. That may in particular be the case where the applicant knows, when filing the application for registration, that a third party, who is a newcomer in the market, is trying to take advantage of that sign by copying its presentation, and the applicant seeks to register the sign with a view to preventing use of that presentation26. Even the nature of the mark applied for may be relevant to determining whether the applicant is acting in bad faith. In a case where the mark consists of the entire shape and presentation of a product, the fact that the applicant is acting in bad faith might more readily be established where the competitors’ freedom to choose the shape of a product and its presentation is restricted by technical or commercial factors, so that the trade mark proprietor is able to prevent his competitors not merely from using an identical or similar sign, but also from marketing comparable products27. Normally shape marks are treated less equal than other marks, but in the context of bad faith, for once, they seem to benefit from their non-traditional nature. Further, the CJ has held that the reputation of the relevant mark can be a relevant factor for the assessment of bad faith28. The extent of the reputation of the mark might justify the applicant’s interest in ensuring a wider legal protection for his sign. The reputation of the mark would then colour the applicant’s intention into one of good faith. The history between the parties can also play a role. The existence of a direct or indirect relationship between the parties prior to the filing of the CTM, for example a pre-contractual, contractual or post-contractual (residual) relationship, can be an indicator of bad faith on the part of the CTM owner29 Another example of a situation which may be taken into account in order to assess whether the proprietor acted in bad faith is where a CTM owner tries to artificially extend the grace period for non-use, for example by filing a repeat application of an earlier CTM in order to avoid the loss of a right as a result of non-use30. This case needs to be distinguished from the situation in which the CTM owner, in accordance with normal business practice, seeks to protect variations of its sign, for example, where a logo has evolved. For the assessment of bad faith, account may also be taken of the origin of the relevant sign and its use since its creation, and of the commercial logic underlying the filing of the application for registration of that sign as a Community trade mark. In a matter regarding the application of the word mark BIGAB, the GC considered relevant the circumstances that the trade mark owner had used its mark since 1991 (as opposed to other party’s use since 1996) and the fact that at the date on which the application was filed that sign had never been registered. According to the GC those circumstances show that the mark was neither created nor used by the trade marks 26 CJ Case C-529/07 Chocoladefabriken Lindt & Spru ¨ ngli AG v Franz Hauswirth GmbH [2008] ECR I8823, mn. 46–49. 27 CJ Case C-529/07 Chocoladefabriken Lindt & Spru ¨ ngli AG v Franz Hauswirth GmbH [2008] ECR I8823, mn. 50. 28 CJ Case C-529/07 Chocoladefabriken Lindt & Spru ¨ ngli AG v Franz Hauswirth GmbH [2008] ECR I8823, mn. 51. 29 GC Case T-291/09 Carrols Corp v Giulio Gambettola [2012] ECR II-0000, mn. 85–87. 30 GC Case T-136/11 pelicantravel.com s.r.o. v Pelikan Vertriebsgesellschaft mbH & Co. KG [2012] II-0000, mn. 27.

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owner with the deliberate intention of creating confusion with the existing sign and, in that way, of competing with the proprietor of that sign in an unfair manner31. 33 According to the GC, it is understandable, from a commercial point of view, that the mark owner wished to extend the protection of his mark by registering it as a Community trade mark. During the period which preceded the filing of the application for registration, the number of Member States in which the trade marks owner generated turnover from goods marketed under the mark BIGAB increased. That was a plausible incentive for filing an application for the registration of a Community trade mark. 34 Also, if there is a ‘commercial trajectory’, such as the registration of a CTM after registration of the mark in a Member State, there will be no bad faith32. Similarly there is no bad faith, if there is evidence of the CTM owner’s intention to develop its commercial activities, for example by means of a licensing33.

V. Burden of proof – presumption of good faith 35

The burden of proof for the facts from which bad faith is claimed to follow, lies with the cancellation applicant34. This is in line with the general principle that good faith is to be presumed.

D. Acquired distinctiveness after registration Under Art. 7 (3) CTMR, the absolute ground for refusal laid down in Art. 7 (1)(b) CTMR does not preclude registration of a mark if, in relation to the goods for which registration has been requested, that mark has become distinctive in consequence of the use which has been made of it. Likewise, Art. 52 (2) CTMR provides, inter alia, that where the CTM has been registered in breach of the provisions of Art. 7 (1)(b) CTMR, it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. 37 Thus, the CTM proprietor has to prove that the mark has acquired distinctive character either before the mark’s filing date or between the date of registration and the application for a declaration of invalidity in relation to the goods for which it is registered35. 38 Art. 165 (4) CTMR states that a CTM shall not be declared invalid pursuant to Art. 52 if the grounds for invalidity became applicable merely because of the accession of a new Member State. Thus, the CTM proprietor has to prove that the mark has acquired distinctive character either before the mark’s filing date or between the date of registration and the application for a declaration of invalidity in relation to the goods for which it is registered on account of the use which had been made of it in the European Union, as composed at the time of its filing date36. 36

31 GC Case T-33/11 Peeters Landbouwmachines BV v AS FORS MW(BIGAB) [2012] ECR I-0000, mn. 22. 32 GC Case T-291/09 Carrols Corp v Giulio Gambettola [2012] ECR II-0000, mn. 58. 33 GC Case T-291/09 Carrols Corp v Giulio Gambettola [2012] ECR II-0000, mn. 67. 34 GC Case T-137/08 Deere & Company v BCS SpA [2009] ECR II-4047, mn. 71. 35 GC Case T-365/06, Compagnie des bateaux mouches v Jean-Noe ¨l Castanet [2008] ECR II-310*, mn. 37; OHIM Dec. of 11.12.2012 – R 513/2011-2 – Nestle´ v Cadbury, mn. 51. 36 OHIM Dec. of 11.12.2012 – R 513/2011-2 – Nestle ´ v Cadbury, mn. 59.

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Relative grounds for invalidity

Art. 53 CTMR

Further, according to the case law of the CJ, evidence of the use of a mark which is 39 adduced subsequent to the date of filing the application, can be taken into account if it enables drawing conclusions on the use of the mark as it was on that date37. Evidence in support of the acquired distinctiveness, such as surveys, that took place after the filing date of the application for the declaration of invalidity, do not necessarily diminish their supporting probative value. Data contained in surveys do not measure the immediate effect produced by specific action, but results from a market development process. If the time between that relevant date and the survey period is relatively short, such subsequent surveys can be held to be relevant38.

Article 53 Relative grounds for invalidity 1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings: (a) where there is an earlier trade mark as referred to in Article 8 (2) and the conditions set out in paragraph 1 or paragraph 5 of that Article are fulfilled; (b) where there is a trade mark as referred to in Article 8 (3) and the conditions set out in that paragraph are fulfilled; (c) where there is an earlier right as referred to in Article 8 (4) and the conditions set out in that paragraph are fulfilled. 2. A Community trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Community legislation or national law governing its protection, and in particular: (a) a right to a name; (b) a right of personal portrayal; (c) a copyright; (d) an industrial property right. 3. A Community trade mark may not be declared invalid where the proprietor of a right referred to in paragraphs 1 or 2 consents expressly to the registration of the Community trade mark before submission of the application for a declaration of invalidity or the counterclaim. 4. Where the proprietor of one of the rights referred to in paragraphs 1 or 2 has previously applied for a declaration that a Community trade mark is invalid or made a counterclaim in infringement proceedings, he may not submit a new application for a declaration of invalidity or lodge a counterclaim on the basis of another of the said rights which he could have invoked in support of his first application or counterclaim. 5. Article 52 (3) shall apply. Bibliography: Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design law, 2011; CIPA, ITMA Community Trademarks Handbook; Gu¨nther Eisenfu¨hr/Detlef Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 2010.

37 CJ Case C-259/02, Laboratoire de la mer [2004] ECR I-1159, mn. 31; CJ Case C-192/03 Alcon v Dr Robert Winzer Pharma GmbH [2004] ECR I-8993, mn. 40. 38 OHIM Dec. of 11.12.2012 – R 513/2011-2 – Nestle ´ v Cadbury, mn. 66.

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Community Trade Mark Regulation Content

I. II. III. IV.

General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Earlier rights same as in opposition proceedings . . . . . . . . . . . . . . . . . . . . . . . Grounds under Art. 53 (2) – other earlier rights . . . . . . . . . . . . . . . . . . . . . . . A right to a name and right of personal portrayal . . . . . . . . . . . . . . . . . . . . . 1. A copyright . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Other industrial property right . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Non-exhaustive list of earlier rights. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Consent to registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. One application only. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VII. Facts to be examined. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 6 8 10 12 13 14 15 16

I. General 1

Art. 53 CTMR enables proprietors of earlier rights to apply for a declaration of invalidity of a CTM on a range of relative grounds. Some of these ground are the same as in opposition proceedings, but there are also additional grounds based on another earlier right. As in opposition proceedings, the proprietor of the contested CTM may require the invalidity applicant to submit prove of genuine use of its earlier trade marks. Also, the CTMR includes a number of provisions which can be invoked by the CTM proprietor against the invalidity application, depending on the type of invoked earlier rights.

II. Earlier rights same as in opposition proceedings Art. 53 (1) provides for invalidity the same grounds as those that can be invoked in opposition proceedings. Art. 53 (1) is therefore an important safeguard for owners of earlier rights.1 First of all, it implies that there is no obligation to file opposition proceedings for the owner of an earlier right. If the owner of the earlier right fails to file an notice of opposition within three months under Art. 41 CTMR, they can still apply for invalidity, either with OHIM or in an counterclaim in national proceedings. Especially for national systems where prior to 1996 there was no opposition proceedings, such as in the Benelux, and where earlier rights could only be invoked against younger registrations through invalidity proceedings, this is a relevant notion. Secondly, it provides the owner of the earlier right with several options to invoke its earlier rights against a younger registration. The CTMR explicitly leaves open the possibility to file for invalidity proceedings also if previous opposition proceedings had not been successful. 3 The relative grounds for invalidity that are the same as in opposition proceedings are: – earlier trade marks within the meaning of Art. 8 (2) that identical of similar to the contested CTM and which covers identical or similar goods and services or has a reputation; – a trade marks which has been filed without authorisation by an agent of representative of its proprietor; – non-registered trade marks or other sign used in the course of trade can invalidate a CTM registration if national laws allow the proprietor of the earlier sign to prohibit the use of the CTM registration. 2

1 Keeling, in Gielen/v. Bomhard (ed.), Concise European Trademarks and Design law, Art. 53 CTMR mn. 1.

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Relative grounds for invalidity

Art. 53 CTMR

In those matters where the owner of an earlier trade marks wants to invoke well 4 known trade marks protection, he must prove that its earlier right has acquired enhanced distinctiveness or reputation at the filing date of the contested CTM. In addition, the reputation or enhanced distinctive character of the earlier mark must still exist when the decision on invalidity is taken. In opposition proceedings this generally poses no problems, due to the short timespan between the filing of the CTM application and the opposition decision. In opposition proceedings it is normally presumed that the enhanced distinctiveness or reputation of the earlier trade marks still exists at the time of the decision. However, in invalidity proceedings, a considerable amount of time can lapse between the filing of the proceedings and the decision. The trade marks proprietor must be able to show that its earlier right continues to enjoy enhanced distinctive character or reputation at the time the decision of the invalidity is taken. If the ground for invalidity is based on Art. 53 (1)(c) in conjunction with Art. 8 (4) 5 CTMR, the owner of the earlier right must show the earlier signs used in the course of trade of more than local significance by the filing date of the contested CTM and that the use continued over time. In invalidity proceedings, the owner also has to prove that the sign was used in the course of trade of more than local significance at the time of filing of the invalidity request. Art. 53 (1)(c) CTMR states that a CTM shall be declared invalid ‘where there is an earlier right as referred to in Art. 8 (4)’. Once the existence of the earlier right is proven at the time of filing of the invalidity request, this requirement is considered to still be fulfilled at the time the decision on invalidity is taken, unless there is evidence to the contrary.

III. Grounds under Art. 53 (2) – other earlier rights Art. 53 (2) provides a number of additional grounds of invalidity which can be based 6 on both Community and national legislation. Art. 53 (2) provides four examples of such grounds, but it should be noted that this is a non-exhaustive list. Art. 53 (2) applies only where the invoked rights are of such nature that they are not considered typical rights to be invoked in cancellation proceedings under Art. 53 (1). The reason that is given for the additional nature of these invalidity grounds is that 7 opposition would be intended to be fast proceedings in which complex legal issues of national law should not be dealt with. Of course, in opposition proceedings it is possible to invoke earlier non-registered trade marks and other signs used in the course of trade of more than mere local significance, but generally they pose less problems than the rights mentioned in Art. 53 (2).

IV. A right to a name and right of personal portrayal Not all member states protect the right to a person’s name or portrayal. The exact 8 scope of protection of the right will follow from national law. The invalidity applicant will have to provide the necessary national legislation in force and put forward a clear line of argument as to why it would succeed under specific national law in preventing the use of the contested mark. A mere reference to the national law will not be considered sufficient. Rule 37 CTMIR of the implementing regulation provides that the cancellation 9 applicant must provide particulars showing that he/she in entitled under the national law applicable to lay claim to that right. That rule requires the cancellation applicant to Gregor Vos

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Community Trade Mark Regulation

provide OHIM not only with particulars showing that he/she satisfies the necessary conditions in accordance with the national law of which he/she is seeking the application, in order to be able to have the use of a CTM prohibited by virtue of an earlier right, but also particulars establishing the content of that law. Where an application for an CTM to be declared invalid is based on an earlier right protected by rule of national law, OHIM must first assess the authority and scope of the particulars submitted by the cancellation applicant in order to establish the content of that rule.2

1. A copyright In its Guidelines, OHIM states that as yet there is no uniform Community copyright, nor is there a full scale harmonisation of copyright laws of the member states.3 According to OHIM this implies that the invalidity applicant will have to provide the necessary national legislation in force and put forward a cogent line of argument as to why it would succeed under specific national law in preventing the use of the contested mark. 11 Although it is true that there is as yet no Community copyright law, nor a full harmonisation of national copyright laws, it should also be noted, that the past years the CJ has rendered several decisions in which it has defined the most crucial aspects of copyright law, most notably as to what constitutes a copyright.4 There are national decisions in which it already has been held that since the notions of copyright have been interpreted on a European level, it can be held that these notions are now already harmonised.5 In these decisions, the courts have taken the approach that there is now one European concept of copyright. As such, it would not make sense to provide particulars as to national law as to what constitutes a copyright, but rather this should be tested under the European concept as stated by the CJ. 10

2. Other industrial property right 12

Other industrial property rights and prior works at national of Community level, such as a registered community design (RCD) maybe invoked. In case of an RCD there is no need to prove what protection is given under the law. The cancellation division will apply the standards of the RCD.

3. Non-exhaustive list of earlier rights 13

As noted above, the list of earlier rights as stated in Art. 53 (2)(a) to (d) is not exhaustive. This follows from the words ‘and in particular’. Any earlier right may be invoked, as long as the national law on which it is grounded provides the option to prohibit the use of the CTM. Such other rights could for instance be the right of passing off as it exists in the UK6 or an appellation of origin7. 2

CJ Case C-263/09 Edwin Co. Ltd v Elio Fiorucci [2011] ECR I-05853, mn. 51. OHIM, Guidelines for examination in the office, part D, Cancellation, Section 2 (version 1.0, 2.1.2014), mn. 4.3.2. 4 CJ Case C-302/10 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569; CJ Case C-145/10 Eva-Maria Painer v Standard Verlags GmbH and Others [2011] ECR I-12533. 5 See e. g. Court of Appeal The Hague 13.8.2013, ECLI: nL: gHDHA:2013:3356, Bang & Olufsen v Loewe. 6 OHIM Dec. of 30.11.2010 – R 0381/2009-4 – Handi–Craft Company v B Free World Ltd. 7 OHIM Dec. of 9.7.2001 – 1645/2001 – Budejovicki Budvar, MP v Anheuser-Busch Inc.; OHIM Dec. of 10.7.2001 – R 1646/2001 – Budejovicki Budvar, MP v Anheuser-Busch Inc.; OHIM Dec. of 10.7.2001 – R 1647/2001 – Budejovicki Budvar, MP v Anheuser-Busch Inc. 3

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Art. 54 CTMR

V. Consent to registration Art. 53 (3) makes it clear that the owner of an earlier right may not use his earlier 14 right to contest a CTM if he expressly has consented to registration of that CTM. The consent may be oral, but obviously for evidentiary reasons consent in writing has more strength.

VI. One application only Art. 53 (4) makes it clear that the proprietor of an early right can only make one 15 attempt to have the younger mark declared invalid. Once he has made an application for a declaration that a CTM is invalid he may not submit a new application for a declaration of invalidity, also not on the basis of another earlier right. That right he could have invoked in support of his first application and when he has failed do so he cannot repair that omission.

VII. Facts to be examined Art. 76 (1) CTMR states that, contrary to other proceedings, in proceedings relating 16 to relative grounds of refusal, OHIM shall be restricted in its examination to the facts, evidence and arguments provided by the parties.

Article 54 Limitation in consequence of acquiescence 1. Where the proprietor of a Community trade mark has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Community while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade marks has been used, unless registration of the later Community trade mark was applied for in bad faith. 2. Where the proprietor of an earlier national trade mark as referred to in Article 8 (2) or of another earlier sign referred to in Article 8 (4) has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith. 3. In the cases referred to in paragraphs 1 and 2, the proprietor of a later Community trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later Community trade mark. Gregor Vos

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CTMR Art. 54

Community Trade Mark Regulation

Bibliography: Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design law, 2011; CIPA, ITMA Community Trademarks Handbook; Gu¨nther Eisenfu¨hr/Detlef Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 2010.

Content I. II. III. IV. V. VI.

General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 The four conditions of Art. 54. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Knowledge can be transferred . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8 No acquiescence as to the rights of Art. 53 (2) . . . . . . . . . . . . . . . . . . . . . . . . . 9 Burden of proof of acquiescence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 Acquiescence in respect of the goods or services for which the later trade marks has been used . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 VII. Co-existence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

I. General Art. 54 limits the enforcement of CTMs and earlier national trade marks and earlier signs against younger CTMs both invalidity and infringement actions, provided the registration of the later CTM was not applied for in bad faith. 2 The rule governing limitation in consequence of acquiescence provided in Art. 54 was established for reason of legal certainty. Acquiescence within the meaning of Art. 54 is a concept of EU law, the meaning and scope of which must be identical throughout the EU and in all member states. The same concept of ‘acquiescence’ is used in Art. 9 (1) TMDir. 1

II. The four conditions of Art. 54 It is apparent from the wording of Art. 54 that four conditions must be satisfied before the period of limitation in consequence of acquiescence starts running. First of all, there must be use of a later CTM which is identical with an earlier trade marks, or confusingly similar, or where this use is for goods or services which are not similar to those for which the CTM is registered, where the latter has a reputation in the Community and where use of that sign, without due course, takes unfair advantages of, or is detrimental to, the distinctive character or the repute of the CTM.1 4 The condition that there must be a later CTM, seems to indicate that the later mark must have been registered as a CTM. For Art. 1 CTMR defines a CTM as a trade marks which is registered in accordance with the conditions contained in the CTMR. Registration of the mark in the EU therefore constitutes a necessary condition of Art. 54. The period of limitation in consequence of acquiescence cannot therefore start 3

1 CJ Case C-482/09 Budejovicky-Budvar, Narodni Podnik v Anheuser-Busch Inc [2011] ECR I-08701. In the Budweiser case, the CJ referred, in mn. 53, to only use of the later trade marks which is identical with the earlier trade marks or confusingly similar. This seems to indicate that the CJ holds that use of the later trade marks for dissimilar goods and services would fall outside the scope of Art. 54. This interpretation seems false, since Art. 54 only speaks of the use of a later CTM as such and explicitly states that the limitation in consequence of acquiescence only applies to use of the later trade marks in respect of the goods or services for which the later trade marks has been used. This clearly leaves open the option of acquiescence in relation to use for dissimilar goods or services. This view seems to be corroborated by the Benelux legislator, which in its national application of Art. 9 TMDir explicitly has included the option of use for dissimilar goods or services (Art. 2.24 Benelux Treaty of Intellectual Property).

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Limitation in consequence of acquiescence

Art. 54 CTMR

to run from the date of mere use of a later trade marks, even if the proprietor of the that mark subsequently has it registered. However, it should be noted, that the use of CTMs which already have been applied for but have not yet been registered, also falls under the scope of Art. 54.2 Secondly, the application for registration of the later trade marks must have been 5 made by its proprietor in good faith. It is presumed that one reason for this exclusion for bad faith registrations, is that bad faith is treated as an absolute ground for invalidity under Art. 52.3 Another reason is the balance of interest between the owner of the later CTM and that of the prior right. Thirdly, the proprietor of the later trade marks must use his trade marks in the 6 Community for a period of five successive years. This means that the proprietor of the earlier right must have had knowledge of the use of the CTM for five successive years. This means on the one hand that the CTM must indeed have been used continuously during those five years. Fourthly, the proprietor of the earlier trade marks must be aware of the registration 7 of the later trade marks and of the use of that trade marks after its registration. The requirement that the proprietor of the earlier trade marks must be aware also of the registration of the later trade marks and not just the use of that trade marks, does not follow from Art. 54 itself. This was held by the CJ in the Budweiser-case.4 The CJ has held that it follows from the text of the TMDir, and more specific its 11th recital, that acquiescence requires that the proprietor of the earlier trade marks must have ‘knowingly tolerated’ the use of a trade marks subsequent to its own for a substantial length of time, in other words ‘intentionally’, ‘in full knowledge of the facts’. This seems to require a level of knowledge that the proprietor of the CTM not only knows of the use of the CTM, but also knows that it concerns a CTM, therefore a registered CTM.

III. Knowledge can be transferred It is assumed that if the CTM is transferred during the period of five years, the 8 knowledge of the predecessor is to be considered to be equivalent to that of the successor in title.5

IV. No acquiescence as to the rights of Art. 53 (2) Art. 54 does not apply to the rights of Art. 53 (2) CTMR. The CTMR deviates in this 9 issue from Art. 9 (2) TMDIR which provides the option to member states of providing for 2 CJ Case C-482/09 Budejovicky-Budvar, Narodni Podnik v Anheuser-Busch Inc [2011] ECR I-08701. It should be noted that the CJ in the Budweiser-case came to this decision on the grounds of Art. 4 (2)(c) which explicitly refers to applications of (inter alia) CTMs. The CTMR as such does not have a similar provision and therefore in a literal sense the CTMR does not provide for the option of applications of CTMs to fall within the scope of Art. 54. However, since acquiescence constitutes a concept of EU law, Art. 54 must be interpreted within the general sense of EU law, which means that the interpretation of the TMDir also applies to the CTMR. This means that what the CJ has held in the Budweiser-case for Art. 4 (2)(c) also applies to the CTMR. 3 Keeling in Gielen/v. Bomhard (ed.) Concise European Trademarks and Design Law. Art. 54, CTMR mn. 5.(b). 4 CJ Case C-482/09 Budejovicky-Budvar, Narodni Podnik v Anheuser-Busch Inc [2011] ECR I-08701, mn. 58. 5 Keeling in Gielen/v. Bomhard (ed.) Concise European Trademarks and Design Law, Art. 54 CTMR mn. 5.

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CTMR Art. 55

Community Trade Mark Regulation

such rights to be subject to acquiescence against a later national trade marks. The issue is addressed in Art. 110 CTMR, as far as use is concerned. From a structural point of view, it would have made more sense to deal with this issue under the realms of Art. 54.

V. Burden of proof of acquiescence 10

The burden of proof of the knowledge of the registration and use of the later CTM, lies with the proprietor of the CTM. The acquiescence ends when the proprietor of the CTM acts against the use of the later CTM within the period of five years. The acts against this use must be serious. If the proprietor of a CTM after acquiescence of four years since the cease and desist letter as to which the owner of the later CTM does not reply and the proprietor of the CTM subsequently does not address the situation for 1.5 years, then it is not likely that the proprietor of CTM after that period can still act against the use of the later CTM.

VI. Acquiescence in respect of the goods or services for which the later trade marks has been used 11

Acquiescence only applies to the use for goods and services of which the proprietor of the CTM had knowledge. If the proprietor of the CTM had no knowledge of use of the later CTM for other goods or services, then acquiescence does not apply to those other goods or services. In other words, the proprietor of the CTM can then still act against the use for those other goods or services.

VII. Co-existence 12

If the proprietor of a community trade marks has acquiesced his right to act against the registration and use of a later community trade marks, this does not mean that the proprietor of that later CTM can act against the proprietor of the older CTM. Art. 54 (3) explicitly states this principle. This means that if the proprietor of a CTM has acquiesced his right to act against the use of a later CTM, the two marks will have to co-exist.

SECTION 4 Consequences of revocation and invalidity Article 55 Consequences of revocation and invalidity 1. The Community trade mark shall be deemed not to have had, as from the date of the application for revocation or of the counterclaim, the effects specified in this Regulation, to the extent that the rights of the proprietor have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties. 696

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Consequences of revocation and invalidity

Art. 55 CTMR

2. The Community trade mark shall be deemed not to have had, as from the outset, the effects specified in this Regulation, to the extent that the trade mark has been declared invalid. 3. Subject to the national provisions relating either to claims for compensation for damage caused by negligence or lack of good faith on the part of the proprietor of the trade mark, or to unjust enrichment, the retroactive effect of revocation or invalidity of the trade mark shall not affect: (a) any decision on infringement which has acquired the authority of a final decision and been enforced prior to the revocation or invalidity decision; (b) any contract concluded prior to the revocation or invalidity decision, in so far as it has been performed before that decision; however, repayment, to an extent justified by the circumstances, of sums paid under the relevant contract, may be claimed on grounds of equity. Bibliography: Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design Law, 2011; CIPA, ITMA Community Trademarks Handbook; Gu¨nther Eisenfu¨hr/Detlef Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 2010.

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Consequences of revocation and invalidity. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Exceptions to retroactive effect. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 4

I. General Art. 55 deals with the consequences of reification and invalidity. Art. 55 (1) deals with 1 the effects of revocation and Art. 55 (2) with the consequences of invalidity. For both revocation and invalidity Art. 55 refers to the effect specified in the CTMR. It has been noted1 that the effects of revocation and invalidity have a wider scope than just the CTMR. The effects of revocation and invalidity of a CTM also extends to the TMDir. If a CTM would be cancelled, it can, of course, also not be used to oppose a national trade marks application or to cancel a national trade marks. The effects of a revocation and invalidity therefore have a wider scope than follows from a literal interpretation of Art. 55.

II. Consequences of revocation and invalidity If a CTM will be revoked, it will cease to have an effect as from the date of the 2 application for revocation or of the counterclaim. Before the application for revocation the CTM was valid and still had a legal effect. This means that even if a CTM will be revoked, it can still have an effect because of its validity prior to the application for revocation or the date on which the counterclaim was filed. The authority that renders the decision of revocation, the OHIM or a national CTM court in a member, can, at the request of one of the parties, decide on an earlier date on which one of the grounds for revocation occurred. 1 Keeling in Gielen/v. Bomhart (ed.) Concise European Trademarks and Design law, Art. 55 CTMR mn. 1.

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CTMR Art. 56 3

Community Trade Mark Regulation

In the event of invalidity, the CTM is deemed to have had no effect at all. The logic behind this full retroactive effect is obvious, its trade marks is invalid, it must be considered to not have been a trade marks at all.

III. Exceptions to retroactive effect Art. 55 (3) provides some exceptions to the retroactive effect of revocation and invalidity. The ration of Art. 55 (3) is to provide legal certainty. The idea behind these exception are that judgments and contracts which have been validly executed before the revocation or invalidity should not be altered by the revocation or invalidity. For instance, if in infringement proceedings damages have been awarded, and the judgment has been enforced, the infringer of the now invalid CTM should not be able to recover the money that he has then paid from the (former) CTM proprietor. The same applies to sums of money that have been paid under contracts made before the revocation or invalidity. 5 To ensure legal certainty, Art. 55 (3) even provides an exception to the exception. The deciding body can take into account national provisions relating either to claims for compensation for damage costs by negligence or lack of good faith or to unjust enrichment. 4

SECTION 5 Proceedings in the Office in relation to revocation or invalidity Article 56 Application for revocation or for a declaration of invalidity 1. An application for revocation of the rights of the proprietor of a Community trade mark or for a declaration that the trade mark is invalid may be submitted to the Office: (a) where Articles 51 and 52 apply, by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the law governing it has the capacity in its own name to sue and be sued; (b) where Article 53 (1) applies, by the persons referred to in Article 4 (1); (c) where Article 53 (2) applies, by the owners of the earlier rights referred to in that provision or by the persons who are entitled under the law of the Member State concerned to exercise the rights in question. 2. The application shall be filed in a written reasoned statement. It shall not be deemed to have been filed until the fee has been paid. 3. An application for revocation or for a declaration of invalidity shall be inadmissible if an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on by a court in a Member State and has acquired the authority of a final decision. Bibliography: Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design Law, 2011; CIPA, ITMA Community Trademarks Handbook; Gu¨nther Eisenfu¨hr/Detlef Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 2010.

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Application for revocation/declaration of invalidity

Art. 56 CTMR

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Interested parties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Requirements cancellation application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Language. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Content cancellation application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Avoidance of duplication of proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 7 11 11 13 18 21

I. General This article provides for the filing of an application for revocation under Art. 51 CTMR or for a declaration of invalidity under Art. 52 (absolute grounds) and Art. 53 (relative grounds). The proceedings must be initiated by filing the cancellation application stating the reasons. From Art. 56 (2) CTMR it follows that an administrative fee is payable in advance. The Office will examine the application as soon as the fee is paid. If it does not comply with Art. 56 CTMR and Rule 37 or any other provisions of the CTMR or Rules, the applicant is notified and given a period in which it may correct the deficiency. The application will be inadmissible and rejected by the Office if the deficiency is not corrected within the given period. As soon as the Office has received payment, it will inform the proprietor of the trade marks in question of the application for revocation and/or invalidity. When the Office has concluded that the application is admissible (an if applicable as soon the applicant has rectified all deficiencies in the application) it will give the trade marks proprietor a certain term, usually three months, to submit observations. This first round of written arguments will usually be followed by a second written round. More than two rounds are unusual but the Office may grant as many rounds as is deems necessary. These proceedings do not provide for oral hearings. In case the proprietor of the trade marks does not submit any observations there will not be a second round and the Office will decide on the basis of the cancellation application. OHIM can either dismiss the claim or award the claim fully or in part. The Office may also invite the parties to reach an amicable settlement (Art. 57 (4) CTMR). In case the proprietor of the CTM has a non-EU representative, the notification is sent to the rights holder and a copy is sent to the non-EU representative. The Office will ask the proprietor to appoint a representative within the EU.

1

2

3

4

5 6

II. Interested parties Art. 56 CTMR sets out which parties may initiate a claim. 7 A claim for revocation or invalidation on the basis of absolute grounds can be 8 initiated by any natural person or legal entity, as well was by any group or body set up for the purpose of representing interests of consumers, manufacturers, producers, suppliers that is authorized to act in law in its own name. A claim for invalidation based on relative grounds set out in Art. 53 (1) CTMR can be 9 initiated by the trade marks proprietors referred to in Art. 41 (1) CTMR.

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CTMR Art. 56 10

Community Trade Mark Regulation

In case the claim for invalidation is based on the relative grounds set out in Art. 53 (2) CTMR, the claim can be initiated by the proprietor of the earlier trade marks right.

III. Requirements cancellation application 1. Fee From Art. 56 (2) CTMR it follows that the application must be accompanied by a fee in order to be allowable. If the Office has not received payment, the applicant will be notified and the Office will set a payment period. The applicant will have to show evidence of payment to the Office and pay a surcharge because of the delayed payment. In the Nexor case1, 18 November 2005, the appellant filed the evidence that it had made payment within the term set by the Office but failed to pay the surcharge. As the required surcharge was not paid in due time, the appeal fee was deemed not paid in time and therefore the appeal was deemed not filed. 12 The fee is EUR 700 no matter the number of grounds invoked in the cancellation application. Absolute and relative grounds may be combined in one request for invalidity. Since 2004 it is no longer possible to combine an application for revocation and an application for a declaration of invalidity in one single application. The applicant must file two applications and pay two fees: one for invalidity and one for revocation. 11

2. Language 13 14

15

16

17

Cancellation applications are only admissible if filed in one of the official languages of OHIM (English, Spanish, French, German and Italian). The applicant can choose from two the languages in which the CTM registration in question registered. If the first language of the CTM registration is not an official language of the Office, the second language of the registration must be used. The applicant and the proprietor of the trade marks may agree on another official language. If the applicant failed to file the application in the correct language, the Office grants the applicant one month of the date on which the application for invalidity is filed to submit a translation in the correct language. The application will be rejected as inadmissible if the applicant fails to file the translation within this period. These language conditions also apply on evidence submitted in support of the cancellation application. In case any evidence is not filed in the language of the proceedings, a translation thereof must be submitted within two months of the date on which the application is filed. Contrary to opposition proceedings there is no inherent sanction for failure to comply with the two-month deadline. Therefore, the request can only be declared inadmissible when the Office has clearly communicated to the parties that the application does not comply with the applicable rules and that the deficiency should be remedied within two months.

3. Content cancellation application 18

The cancellation application must contain: – the registration number of the challenged registration; – the name and address of the proprietor of the challenged CTM and of the application for cancellation; 1

OHIM Dec. of 18.11.2005 – R 477/2005-1 – XPLAB s.a.s. di CA Perani v Nexor Ltd, mn. 19.

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Application for revocation/declaration of invalidity

Art. 56 CTMR

– a statement of the goods and/or services in respect of which cancellation is sought; – a statement of the grounds on which the application is based if the application is filed pursuant to Art. 51 or 52; – particulars of the earlier right where the application is brought pursuant to Art. 53 (2) together with particulars showing that the applicant is the proprietor of the earlier right of that it is entitled under the applicable national law to lay claim to the right; – an indication of the facts, evidence and arguments which are relied on; – in case a right on which the application is based is due for renewal during the cancellation proceedings, proof of the renewal; – in case of a well-known mark or an earlier trade marks with reputation, the Member State in which it is claimed that the mark is well known/has a reputation must be identified and evidence showing that it is well known/has a reputation must be filed. From the TELESIS case, 29 March20072 it follows that all grounds on which the 19 applicant wishes to base the cancellation proceedings should be brought forward in the cancellation application. In this case the cancellation proceedings were introduced by the applicant exclusively on the grounds of Art. 52 CTMR, which deals with the relative grounds for invalidity. At the appeal stage, the applicant tried to widen the scope of the proceedings by claiming the invalidity on absolute grounds under Art. 51 CTMR as well. The Board of Appeal ruled that this argument had to be considered as a new and different ground because the applicant did not mentioned it in its cancellation application in accordance with Rule 37 (b) CTMIR. According to the Board of Appeal it follows from Artt. 57 to 62 CTMR that a re-examination of the case in light of the additional legal grounds is not what is envisaged in appeal proceedings3. The Board’s competence is limited to the content of the original cancellation application and therefore this argument could not be taken into account in the proceedings. However, since there is no time limit for filing a request for declaration of invalidity on absolute grounds of invalidity, this argument could still be invoked when filed as a new request for cancellation under Art. 51 CTMR. Something similar happened in the Mega Bloks case, 30 July 20044. The applicant 20 introduced a new ground of invalidity during the proceedings. The Cancellation Division refused to consider whether addition grounds could be introduced into the pending proceedings.

IV. Avoidance of duplication of proceedings From Art. 56 (3) CTMR it follows that an application is not admissible is a court in a 21 Member State has already decided on an application for revocation or a declaration of invalidity and this decision has become final. This rule will only apply if the application relates to (1.) the same subject matter, (2.) 22 the same cause of action and (3.) involves the same parties as the decision of a court of a Member State and (4.) the decision has already become final. This rules applies also with regard to an earlier decision of the Office itself. All four requirements must be met for this rule to have effect. We can assume that the first requirement ‘the same subject matter’ is not met when 24 the grounds on which the national court gave judgment are different from those invoked before the Office. For example, when the invoked trade marks are in fact the 2 OHIM Dec. of 29.3.2007 – R 252/2006-1- Telesis Entwicklungs-und Management GmbH v Telesis Communications Frans SARL (Telesis). 3 GC Case T-364/05 Saint-Gobain Pam SA v OHIM [2007] ECR II-757, mn. 18–19. 4 OHIM Dec. of 30.07.2004 – 63C 000107029/1 – Mega Bloks Inc. v Kirkbi A/S, mn. 32.

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CTMR Art. 57

Community Trade Mark Regulation

same, but the invoked registrations are not (national trade marks v CTM). Or, what if the facts on which the case was build have changed over time. We must assume that only in case the applicant can clearly point out that the factual circumstances have indeed changed this requirement will most likely not apply and the application. 25 Requirement number two ‘same course of action’ refers to the type of action. This requirement is met when the application concerns the same claim as the previously adjudicated claim by the court on between the parties an on the same subject matter. 26 Requirement three ‘same parties’ is met when the parties are identical in terms of legal entities involved. This requirement should also apply when parties in question are successors in title.

Article 57 Examination of the application 1. On the examination of the application for revocation of rights or for a declaration of invalidity, the Office shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Office, on communications from the other parties or issued by itself. 2. If the proprietor of the Community trade mark so requests, the proprietor of an earlier Community trade mark, being a party to the invalidity proceedings, shall furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his application, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. If, at the date on which the Community trade mark application was published, the earlier Community trade mark had been registered for not less than five years, the proprietor of the earlier Community trade mark shall furnish proof that, in addition, the conditions contained in Article 42 (2) were satisfied at that date. In the absence of proof to this effect the application for a declaration of invalidity shall be rejected. If the earlier Community trade mark has been used in relation to part only of the goods or services for which it is registered, it shall, for the purpose of the examination of the application for a declaration of invalidity, be deemed to be registered in respect only of that part of the goods or services. 3. Paragraph 2 shall apply to earlier national trade marks referred to in Article 8 (2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community. 4. The Office may, if it thinks fit, invite the parties to make a friendly settlement. 5. If the examination of the application for revocation of rights or for a declaration of invalidity reveals that the trade mark should not have been registered in respect of some or all of the goods or services for which it is registered, the rights of the proprietor of the Community trade mark shall be revoked or it shall be declared invalid in respect of those goods or services. Otherwise the application for revocation of rights or for a declaration of invalidity shall be rejected. 6. A record of the Office’s decision on the application for revocation of rights or for a declaration of invalidity shall be entered in the Register once it has become final.

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Art. 57 CTMR

Bibliography: Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design Law, 2011; CIPA, ITMA Community Trademarks Handbook; Gu¨nther Eisenfu¨hr/Detlef Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 2010.

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Genuine use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Relevant criteria . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Proof of use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Proper reasons for non-use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Office’s decision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Paragraph 5. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Paragraph 6. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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I. General As soon as the Office has received payment, it will inform the proprietor of the trade marks in question of the application for revocation or invalidity. When the Office has concluded that the application is admissible it will give the trade marks proprietor a certain term, common practise of the Office is three months, to submit its observations. If there are any deficiencies in the application, the applicant will be given a certain period to remedy the deficiencies and after the applicant has done so, the Office will invite the CTM proprietor to file observations (and when applicable proof of use). The deadlines are communicated in official letters from OHIM to the proprietor, the applicant or their representative. There are no specific rules that allow for suspensions in these proceedings. However, in practice the Office applies the same criteria for ordering suspension as in opposition proceedings. The first round of written arguments will usually be followed by a second written round. More than two rounds are not common, but Art. 57 (1) provides that the Office may grant as many rounds as is deems necessary. Additional rounds may be granted in exceptional cases, particularly in cases in which additional relevant evidence which could not have been filed beforehand is filed in the last round. It is the Office’s practice to give the parties a time limit of two months to file their observations, except for the first submission of the CTM proprietor. These proceedings do not provide for oral hearings. There is no obligation for the proprietor to file observations. In case the proprietor of the trade marks does not submit any observations, evidence and/or indicates that it has nothing more to comment, there will not be a second round and the Office will directly proceed to closure of the adversarial part of the proceedings and take a decision on the basis of the documents and evidence which is available to it. The exception to this is in a non-use revocation action under Art. 51 (1)(a) CTMR. If the proprietor does not file proof of genuine use from which it follows beyond doubt that genuine use of the trade marks has been made in the relevant period, this will result in revocation of the CTM in question. In the case the proof of use is requested with regard to invalidity on relative grounds the failure of filing proof of use will result in an additional procedural stage. The applicant will get the opportunity to respond to the proof of use issue and the proprietor may reply to the proof of use response. OHIM can either dismiss the claim or award the claim fully or in part. As a result of the unitary character of a CTM any decision of invalidity has equal effect throughout the EU. Gregor Vos

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The Office may also invite the parties to reach an amicable settlement and may suggest the basis for such a settlement (Art. 57 (4) CTMR). It is very rare that the Office takes this opportunity. 9 In the event that an application for invalidity is filed and subsequently withdrawn, the proceedings will be terminated1. 8

II. Genuine use 1. Relevant criteria A trade marks registration can be revoked if, within a continuous five-year period, the trade marks has not been put to genuine use in the EU in connection with the goods and services for which it is registered and there is no proper reason for this non-use. 11 In several important cases the CJ has explained the meaning of ‘genuine use’ in the context of requests of proof of use. In the Ansul case2, the Court decided that genuine use must be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark. It follows that genuine use of the mark entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned. Use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns. Finally, when assessing whether there has been genuine use of the trade mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark. Use of the mark need not always be quantitatively significant in order to be genuine. 12 These principles were developed further in La Mer Technology3. The Court held that the assessment of maintaining or creating a market share must be considered on a caseby-case basis, and depends on several factors, namely the characteristics of the goods and services in question, the frequency or regularity of the use of the mark, and whether the mark is used to market some or all of the proprietor’s goods and services. 13 In practice this means that when the applicant for invalidity files evidence in response to a proof of use request from the proprietor, it must satisfy the provisions of rules 22 (2), (3) and (4) CTMIR, which apply not only to opposition proceedings but also on invalidity proceedings. These rules require the submission of indications and evidence concerning four criteria, the place, the time, extent and nature of the use in respect of the goods and services in question should be satisfied in accordance to the key principles that follow from the case law mentioned above. Paragraph four of Art. 22 CTMIR gives a nonexhaustive list of items, which can constitute evidence. OHIM’s opposition guidelines on proof of use provide a full analysis of the Office’s criteria on this point. It is recommended to consult these guidelines. 10

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OHIM Dec. of 5.11.2001 – 55C 000142158/1 – Groupe Sepcom SA v Ziff Davis Publishing Holdings, Inc. CJ Case C-40/01 Ansul v Ajax [2003] ECR I-2439, mn. 36–42. 3 CJ Case C-259/02 La Mer Technology Inc v Laboratoires Goemar SA [2004] ECR I-1159, mn. 27. 2

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Art. 57 CTMR

2. Proof of use Art. 57 (2) introduces an examination with two potentially relevant dates regarding the use of an earlier trade marks. This examination only applies to earlier trade marks and not with earlier rights, which might be relied upon in the application. The article provides that on request of the proprietor of the CTM, the proprietor of an earlier trade marks which is asserted in invalidity proceedings must furnish proof that during the five years preceding the date of the application for a declaration of invalidity, the earlier trade marks on which the application is used has been out to genuine use in the EU in connection with the goods and services it is registered for provided that the earlier trade marks has, as of the date of the application, been registered for less than five years. If the CTM on which the application is based has been registered for more than five years, the proprietor of the earlier trade marks must also prove that the trade marks has been to genuine use as of that date of publication. The proprietor has to show that as of the date of publication of the trade marks application the proprietor of the earlier trade marks could have initiated opposition proceedings and evidence of genuine use of his right. This last requirement makes it necessary to consider whether there has been genuine use as of the date of publication of the trade marks application if the earlier trade marks has been registered for more than five years. The underlying thought for having two relevant dates for proof of use is to ensure that the proprietor of the earlier trade marks who could not enter into opposition proceedings against a trade marks application because he was at that time not making genuine use of his own trade marks, does not initiate genuine use of this earlier trade marks after publication of the trade marks application and then base an application for a declaration of invalidity of that trade marks on his subsequent use of his trade marks. However, the use of an earlier mark does not need to have been continuous as long as there was genuine use of the earlier trade marks as of both the date of the publication of the trade marks application in question and the date of the application for a declaration of invalidity. To the extent that the trade marks has not been put to genuine use in this period and where there are no proper reasons for non-use the earlier trade marks will be disregarded in the invalidity proceedings. This does not mean that the trade marks itself is cancelled since this would require a separate revocation action to be filed. Art. 57 (2) sets out these provisions specifically in relation to CTM trade marks and paragraph 3 of this article provides that the same applies for national registrations in Member States. In the absence of proof of genuine use for the relevant periods, an application for a declaration of invalidity must be rejected. If the earlier trade marks has been used in relation to only part of the goods and services it is registered for, it will in respect of these proceedings, be deemed to be registered for these specific goods and services only.

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3. Proper reasons for non-use What ‘proper reasons’ for non-use are is not specified in the relevant texts. However, 19 we might think of a situation that requires obtaining specific authorisations or certificates to be able to market a certain product of service and any failure of the CTM proprietor to obtain the necessary documents. However, it must be taken into account that any reason which results from the failure of internal organisation of the CTM proprietor will not constitute proper reasons for non-use. Furthermore, concerns about potential infringement actions are insufficient to constitute as proper reasons for non-use. However, if an infringement action has already been initiated against the Gregor Vos

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CTM proprietor and he has therefore ceased the use of his trade marks, this will be considered as a proper reason for non-use.

III. Office’s decision 1. Paragraph 5 Once all comments and observations have been taken, the Cancellation Division will give judgement. In this regard, the Office must restrict its examination of the matter to the facts, evidence and arguments submitted by the parties. 21 In case the Office decides that the trade marks registration is not invalid or revocable, it will reject the application. In case the CTM registration is revocable or invalid for all the goods and services it covers, the trade marks registration shall be declared invalid or revoked in full. In case the registration is found to be invalid or revocable for only part of the goods and services it is registered for, the invalidity or the revocation will only have effect on that specific part. The Office’s decision can be appealed (Art. 58 CTMR). 20

2. Paragraph 6 22

Under Art. 57 (6) CTMR the Office must enter a record of any decision it makes in favour of an applicant in the trade marks register.

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TITLE VII APPEALS Article 58 Decisions subject to appeal 1. An appeal shall lie from decisions of the examiners, Opposition Divisions, Administration of Trade Marks and Legal Divisions and Cancellation Divisions. It shall have suspensive effect. 2. A decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows separate appeal. Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 II. Decisions subject to appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 III. Suspensive effect. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

I. General Art. 58 provides that the decisions of the OHIM are generally subject to appeal before 1 the OHIM Boards of Appeal. The OHIM is one of the ‘bodies, agencies or offices’ or the European Union capable of producing decisions that bind third parties. Art. 263 of the post-Lisbon Treaty on the Functioning of the European Union specifically requires that the decisions of such offices can be appealed to the Court of Justice of the European Union.1 It is characteristic for these offices that they also provide an internal appeals system, 2 which must be exhausted before further judicial appeal can lie to the Union courts. These systems typically involve a first-stage revision review by the original first-instance decision-maker (in the case of the OHIM, pursuant to Artt. 61 and 62 CTMR) before the actual appeals examination (Art. 63 CTMR). In the case of the OHIM, appeals are made to the Boards of Appeal. Each appeal is 3 allocated to one of the five Boards of Appeal for examination. The Boards of Appeal examine the matters before them de novo, i. e., by carrying out a new, full examination on the merits, in terms both of law and of fact.2 This has a number of consequences for the appeals examination. Since the earliest days of the OHIM there has been discussion as to whether appeals proceedings before the OHIM and its Boards of Appeal should be considered administrative or judicial in nature. The then-Court of First Instance was in fact called on to 1 Even before the Lisbon Treaty, however, the right to appeal these decisions was considered a general principle of Union law. See, e. g., Case T-411/06 Sogelma – Societa´ generale lavori manutenzioni appalti Srl European Agency for Reconstruction (EAR) [2008] ECR II-02771, para. 37. 2 CJ Case C-29/05 P OHIM v Kaul GmbH – Bayer AG [2007] ECR I-02213, para. 44. Regarding the scope of the review conducted by the Boards of Appeal, see also the discussion in connection to Art. 63.

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take a position on the nature of the Boards of Appeal in Baby-Dry, one of the earlier Community trade mark cases.3 It is by now settled law that the appeals procedure before the Boards of Appeal is administrative in nature and forms part of the same overall (e. g., application) procedure as the first-instance proceedings before the OHIM. While, in the words of the court, the Boards of Appeal enjoy a wide degree of independence in carrying out their duties, they constitute a department of the OHIM responsible for controlling the activities of the other departments of the administration to which they belong.4 The Boards of Appeal of the OHIM are in other words not tribunals or courts of law. Parties to proceedings before the Boards therefore strictly speaking cannot rely on the right to a fair hearing before the Boards.5 Parties do, however, as a matter of both trade mark law and general Union law have the right to be heard before the Boards.6 The general rule in the case-law of the European courts is that there is a ‘functional continuity’ between the first-instance decision-making instances of the OHIM and the Boards of Appeal. This concept of ‘continuity’ between the internal decision-making tiers at the OHIM has frequently been deployed by the EU courts to delineate the powers and jurisdiction of the Board of Appeal. One aspect of the ‘continuity’ between the first-instance decision-maker and the Boards of Appeal is that the Board’s role is not merely to review to legality of the decision below, but to conduct a full re-examination of the decision being contested on a de novo basis.7 In practice, the EU trade mark system provides for very extensive appeals in comparison with many of the member states. The substantive merit of an, e. g., application can be reviewed by the first-instance decision-maker twice (once originally and once as part of the revision process under Art. 61 or 62 CTMR, depending on whether the procedure is ex parte or inter partes), then by a Board of Appeal (Artt. 63–64 CTMR), then by the General Court and finally by the Court of Justice (Art. 65 CTMR).

II. Decisions subject to appeal The decisions of all OHIM first-instance decision-makers, i. e., the examiners, the Opposition Divisions, the Cancellation Divisions and the Administration of Trade Marks and Legal Division can be appealed.8 The Administration of Trade Marks and Legal Division decides, e. g., on applications to be entered into the OHIM’s list of representatives and other administrative matters.9 These decisions are also generally subject to appeal. 10 While the OHIM is no longer internally administratively organised into the above divisions, the Union courts and the case-law refer to the divisions by these names, as the terminology is enshrined in the CTMR and implementing regulations. 9

3 GC Case T-163/98 Procter & Gamble Company v OHIM [1999] ECR II-02383, subsequently affirmed in CJ Case C-383/99 P Procter & Gamble Company v OHIM [2001] ECR I-06251. 4 GC Case T-163/98 Procter & Gamble Company v OHIM [1999] ECR II-02383, para. 21. 5 GC Case T-163/98 Procter & Gamble Company v OHIM [1999] ECR II-02383, par. 23. 6 GC Case T-237/11 Lidl Stiftung & Co. KG v OHIM – Lactimilk, SA (not yet published), paras. 23–24. The fact that the Boards are not courts or tribunals of course does not mean that fundamental administrative procedural requirements would not apply. 7 For further discussion on the nature of the appeals proceedings before the Boards of Appeal and the examination before them, see discussion in connection to Art. 63. 8 See Art. 130 CTMR for a list of competent OHIM decision-makers. 9 Art. 133 (3) CTMR.

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Art. 59 CTMR

Under Art. 58 (2) CTMR, decisions which do not terminate the proceedings with 11 respect to one party are not subject to appeal unless so specifically ordered. Objection letters, procedural communications and similar are thus not subject to separate appeal, but must be appealed as part of the appeal against the final decision of the first-instance decision-maker. This is also true of, e. g., first-instance decision-makers declining to rectify decisions pursuant to Art. 61 or Art. 62. This clearly serves the interest of procedural economy in limiting the length and complexity of the overall appeals proceedings. The principle is therefore that all final decisions by the OHIM first-instance decision- 12 makers are subject to appeal, provided that the other conditions for appeal, e. g., under Art. 59 CTMR are met. Pursuant to Rule 52 (2) CTMIR, any decision subject to appeal must be accompanied by 13 written instructions on how to appeal. In the vast majority of cases, there therefore is little practical need for parties to analyse whether appeal lies against a particular decision or not.

III. Suspensive effect According to the final sentence of Art. 58 (1) CTMR, appeals have suspensive effect. 14 Filing an appeal within the time limit provided for in Art. 60 CTMR prevents the contested decision from being put into effect. A trade mark will, in other words, remain registered even if a cancellation decision has been entered against it for as long as the appeals procedure is on-going. This effect is not limited to the OHIM-internal appeals procedure. Under Art. 64 (3) CTMR, further appeals from the Board of Appeal to the General Court and then onwards to the Court of Justice also prevent the decision from becoming effective. For the idea of the appeal having suspensive effect to be effective, the logical corollary to this rule is that the decision also cannot be effective before the appeals period expires.10 The appeals period thus also generally has suspensive effect. The first-instance decision therefore becomes effective only when (a) the appeals period expires with no appeal having been filed (taking into account the possibility of restitutio in integrum under Art. 81); or (b) all appeals are finally rejected.

Article 59 Persons entitled to appeal and to be parties to appeal proceedings Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right. Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 II. Parties entitled to appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 1. Requirement to be a party to the first-instance proceedings . . . . . . . 6 2. Requirement to be adversely affected . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 III. Other parties as of right. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20 IV. Joinder of appeal proceedings and cross appeals . . . . . . . . . . . . . . . . . . . . . . . . 22 10 GC Case T -120/03 Synopharm GmbH & Co. KG v OHIM [2004] ECR II-00509, para. 21. As regards appeals against decisions of the Boards to the Union courts, this is provided for explicitly in Art. 64 (3).

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Art. 59, firstly, limits the subjective scope of possible appellants. Secondly, Art. 59 provides that any other parties to the first-instance proceedings also are parties to the appeal proceedings as of right.

II. Parties entitled to appeal The first sentence of Art. 59 provides that parties to the proceedings who are adversely affected by the first instance decision can appeal a decision against them. 3 The requirements set out in the first sentence are cumulative.1 In other words, the appellant must be both party to the first-instance proceeding and adversely affected by it. In practice, the Union courts’ review of these two criteria is somewhat intertwined. 4 As discussed in greater detail in connection to Art. 60 CTMR, the applicant must file an appeal meeting all relevant requirements within certain time limits. The appellant must first file a notice of appeal within two months of the contested decision being notified to him or her and, second, file a statement of grounds for the appeal within four months of the decision begin notified. 5 Having standing to appeal is a formal condition for the appeal to be admissible. As the relevant time limits for filing the documents meeting these formal requirements also cannot be extended, it follows that the appellant within the four-month time limit must be able to show that he or she has standing to appeal under Art. 59.2 This may become relevant, e. g., where the mark at issue is assigned to a new proprietor who within this deadline must be able to prove that the assignment has taken place to have standing to appeal. 2

1. Requirement to be a party to the first-instance proceedings In order to appeal a first-instance decision the appellant must have been a party to those proceedings. In most cases it is of course an obvious and straightforward issue to determine whether the appellant in fact was party to the proceedings. 7 The question of status as a party to the proceedings is sometimes raised in connection to conversion requests pursuant to Art. 112 CTMR. The question can arise, e. g., where an opposition defendant files a conversion request in response to the opposition. The opponent may in these cases try to prevent the conversion of the mark into national trade mark applications. 8 Since, however, conversion requests are essentially ex parte proceedings between the party requesting conversion and the OHIM, the original opponent in these cases generally fails to meet the ‘party’ requirement under Art. 59 and is consequently unable to appeal the conversion on, e. g., the grounds that it failed to meet the requirements provided for in Art. 112 CTMR.3 6

1 GC Case T-457/12 Stromberg Menswear Ltd v OHIM – Leketoy Stormberg Inter AS (no yet published), para. 36. 2 CJ Case C-53/11 P OHIM v Nike International Ltd – Aurelio Munoz Molina, paras. 52–54. 3 See, e. g., GC Case T-457/12 Stromberg Menswear Ltd v OHIM – Leketoy Stormberg Inter AS (no yet published).

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Art. 59 CTMR

Another context where this question may arise is in connection to the assignment of 9 a trade mark against which, e. g., an opposition has been filed. If the mark is assigned to a new proprietor after the opposition is filed, the new proprietor will need to show his standing in order to file an appeal against a decision that is adverse to his or her newly acquired trade mark.4 As noted above, the new proprietor will need to be able to prove that that assignment has taken place within the four-month time limit for filing the statement of grounds for the appeal.5

2. Requirement to be adversely affected The second requirement for the appeal to be admissible is that the appellant be ‘adversely affected’ by the decision he or she is attacking. In order for the appellant to meet this requirement it must have a ‘legal interest’ in the contested first-instance decision be annulled.6 In practice, this means that overturning the first-instance decision must be capable of having legal consequences for the appellant.7 The decision must be one that brings about a distinct change in the legal position of the appellant. Conversely, the annulment of such a decision would reverse this change. In order for the appellant to be deemed adversely affected by the first-instance decision, the legal interest claimed by the appellant must be vested and present8 on the day which the notice of appeal was filed.9 If the appellant’s legal rights aren’t immediately prejudiced by the contested decision, i. e., the appellant is relying on a future legal interest, the future prejudice to the appellant must be a ‘certain’ consequence of the contested decision at the date the notice of appeal is filed.10 An applicant therefore cannot rely on future and uncertain situations to justify its interest in applying for annulment of the contested decision. This would be the case, e. g., if the prejudice to the appellant’s legal interests were contingent on some future legal examination before they become effective. In the context of, e. g., conversion proceedings this means that the holder of a prior right cannot be held to be ‘adversely affected’ merely on the fact that a Community trade mark has been converted into national applications, since the relevant national offices will examine the respective national applications before granting the national trade marks. When the conversion is applied for or made, it is not yet ‘certain’ that the national marks will be granted. Indeed, the holder of the prior right may be able to oppose registration at the national level. The question of adverse effect can also arise where, e. g., the Opposition Division corrects its decision pursuant to Rule 53 CTMIR. This rule entitles the OHIM to correct – either on its own motion or at the request of a party to the proceedings – linguistic errors, transcription errors and obvious mistakes in decisions. 4

CJ Case C-53/11 P OHIM v Nike International Ltd – Aurelio Munoz Molina, paras. 52–54. As regards the requirement to file a statement of grounds for the appeal, see the discussion in connection to Art. 60. 6 See, e. g., GC Joined Cases T-480/93 and T-483/93 Antillean Rice Mills and Others v Commission [1995] ECR II-2305, para. 59 7 CJ Case 53/85 AKZO Chemie v Commission [1986] ECR 1965, para. 21. See also GC Case T-342/02 Metro-Goldwyn-Mayer Lion Corp. v OHIM – Moser Grupo Media SL [2004] ECR II-03191, para. 44, applying AKZO, NBV and Torre (cited below) to the context of an appeal against a decision of the Opposition Division. 8 GC Case T-138/89 NBV and NVB v Commission [1992] ECR II-2181, para. 33. 9 See GC Case T-159/98 Torre and Others v Commission [2001] ECR-SC I-A-83 and II-395, para. 28. 10 GC Case T-138/89 NBV and NVB v Commission [1992] ECR II-2181, para 33. 5

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To the extent such a correction does not materially change the decision it may not adversely affect the parties.11 Rule 53, however, only concerns minor ‘clerical’ errors. At least in those cases where the OHIM has corrected a decision beyond what is permissible under Rule 53, there may be an adverse effect. An incorrect ‘Rule 53 correction’ itself does not necessarily, however, start a new appeals period.12 It may therefore be necessary for the parties to file an appeal as a precaution in order to retain the ability to contest the matter.13 It should also be noted that a decision by the first-instance examiner to accept registration of a trade mark based on acquired distinctiveness rather than inherent distinctiveness may also not be subject to appeal as the application is considered granted and there therefore being no adverse effect against the applicant. In these types of cases, the applicant would want to ask for an interim refusal subject to appeal. A similar situation arises where an opposition based on multiple earlier rights is upheld based only on one of these rights. Since the opposition is upheld, the end result sought by the opponent is achieved. Thus, the opponent would not for the purposes of Art. 58 be adversely affected, even if the Opposition Division fails to uphold some of the relative grounds for refusal pleaded by the opponent.14 If the applicant’s sole complaint against the first-instance decision is it reasoning rather than its actual end result, there generally would be no relevant change in the appellant’s legal situation. Thus, there also generally would not be any adverse effect.

III. Other parties as of right Under the second sentence Art. 59, the other parties to the first-instance proceedings are also parties to the appeals proceedings ‘as of right’. 21 The Board will firstly communicate the notice of appeal to the other parties. After the Board has received the appellant’s statement of grounds, it will communicate this to the other parties and invite them to file their observations in response. Pursuant to Artt. 63 (2) CTMR and 8 (2) ROP the Board will invite the parties to exchange written observation to the extent it deems necessary.15 20

IV. Joinder of appeal proceedings and cross appeals In the event several appeals are filed against the same first-instance decision, these appeals are to be considered as part of the same proceedings.16 23 As noted above, however, the Board always hears the matter before it de novo. Since the Board is required to review the decision in its entirety the Board is also required to 22

11 See, e. g., GC Case T-36/09 dm-drogerie markt GmbH & Co. KG v OHIM – Distribuciones Mylar, SA [2011] ECR II-06079 and in particular the OHIM’s argument at para. 33. The court nevertheless seems to reject the argument that only changes to the operative part of the decision can have adverse effects, see para. 75. 12 GC Case T-36/09 dm-drogerie markt GmbH & Co. KG v OHIM – Distribuciones Mylar, SA [2011] ECR II-06079 13 GC Case T-36/09 dm-drogerie markt GmbH & Co. KG v OHIM – Distribuciones Mylar, SA [2011] ECR II-06079, para. 115. 14 GC Case T-342/02 Metro-Goldwyn-Mayer Lion Corp. v OHIM – Moser Grupo Media SL [2004] ECR II-03191. 15 For more detailed comments, see discussion in connection to Art. 63. 16 Art 7 (1) ROP.

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take all of the appeals defendant’s arguments into full account regardless of whether they immediately relate to the appeal and its scope. The defendant is therefore entitled to contest the decision being appealed on any point of law or fact, even if not raised by the appellant at all. Simply by virtue of its status as a defendant, it is allowed to challenge the validity of, e. g., the Opposition Division’s decision.17 The defendant need not therefore file a separate (cross) appeal against the contested decision in the strict sense, since the defendant can raise the same grounds for annulling the decision below in his or her defence. This logical outcome of the nature of the Boards’ de novo examination has also since 2004 been provided for in rules of procedure of Boards of Appeal.18 Thus, simply by virtue of its status as appeals defendant, the defendant can fully challenge the original first-instance decision on any point, regardless of whether that point was raised in the appellant’s appeal.19 This right is also unaffected by whether the defendant itself could have appealed on the point in question.20 In order to be able to appeal a decision a party must normally be ‘adversely affected’ by that decision. It follows, however, from the above and from the de novo nature of the Board’s examination, that there is no such requirement in order for the defendant to raise new points of appeal before the Board. The ROP do, however, provide that any submission by the defendant seeking to have the first-instance decision set aside on the basis on a point not raised in the appeal itself shall cease to have effect should the appellant discontinue the proceedings.

Article 60 Time limit and form of appeal Notice of appeal must be filed in writing at the Office within two months after the date of notification of the decision appealed from. The notice shall be deemed to have been filed only when the fee for appeal has been paid. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed. Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Notice of appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Content of the notice of appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Payment of the appeal fee. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Statement of grounds . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Calculation of time limits for the notice of appeal and the statement of grounds . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. The role of the registrar in the admissibility examination . . . . . . . . . . 6. Restitutio in integrum . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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17 GC Case T-84/08 Intesa Sanpaolo SpA v OHIM – MIP Metro Group Intellectual Property GmbH & Co. KG [2011] ECR II-01511, para. 23. 18 Art. 8 (3) ROP, introduced by Commission Regulation (EC) No 2082/2004 of 6 December 2004 amending Regulation (EC) No 216/96 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs). 19 GC Case T-84/08 Intesa Sanpaolo SpA v OHIM – MIP Metro Group Intellectual Property GmbH & Co. KG [2011] ECR II-01511, para. 23. 20 Id.

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I. General Appeals against decisions by the OHIM must be filed within two months of the decision having been notified to the party. 2 The appeal filing takes place in two stages: first, the filing of a notice of appeal, wherein the appellant primarily identifies the contested decision and the points he or she seeks to have changed, and second, the filing of the statement of grounds, where the appellant fully sets out his or her case and arguments. 3 The OHIM will notify the appeals respondent of the notice of appeal having been filed, but will not ask the appeals defendant to reply until appellant has filed its statement of grounds. 1

II. Notice of appeal 1. Content of the notice of appeal 4

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There are a number of requirements for the notice of appeal. Failure to observe some of these (referred to below as the ‘strictly’ required elements) will result in the appeal automatically being found inadmissible pursuant to Art. 49 (1) CTMIR, whilst others can be remedied within an additional time limit set by the Board of Appeal pursuant to Art. 49 (2) CTMIR. Even if the appeal automatically is found inadmissible for failure to provide the strictly required information, the appellant can still recover the situation by remedying the relevant deficiencies within the original two-month time limit.1 The fact that the appellant has filed a rejected notice during the time limit does not, in other words, preclude the appellant from remedying the relevant defects as long has he or she within the time limit can be deemed to have filed a notice meeting all the strictly required elements. At the expiry of the two-month time limit for filing the notice, it must in any event have been remedied to meet all the strictly necessary requirements. The other ‘less strict’ kinds of requirement for notices of appeal do not automatically lead to the appeal automatically being rejected as inadmissible. If all the strictly required elements are present, the application will not be rejected automatically; the Board can instead set an additional time limit for meeting all the ‘less strict’ requirements.2 Failure to meet this additional time limit will, however, lead to the notice ultimately being rejected and the appeal being found inadmissible. In other words, filing a notice with all the ‘strictly required’ information is, as a starting point, sufficient for the appellant to be deemed to have filed a timely notice, i. e., to have met the two-month time limit provided for in Article 60 CTMR. Under the Rule 48 CTMIR, the notice of appeal must contain the following information: (a) the name and address of the appellant in accordance with Rule 1 (1)(b) CTMIR; (b) where the appellant has appointed a representative, the name and the business address of the representative in accordance with Rule 1 (1)(e) CTMIR; (c) a statement identifying the decision which is contested; and 1 Rule 49 (1) CTMIR, providing that the appeal shall be rejected as inadmissible ‘unless each deficiency has been remedied before the relevant [two-month] time limit’. 2 Rule 49 (2) CTMIR.

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(d) the extent to which amendment or cancellation of the decision is requested, e. g., whether the appellant seeks to have the contested decision annulled in its entirety. Rule 48 CTMIR also requires that the notice be filed in the same language as that of the decision being contested. Of these requirements only two are ‘strict’ in the sense that failure to meet them within the two-month time limit automatically leads to the appeal being rejected as inadmissible, without any further time limits set by the Board of Appeal. These are (i) the requirement to identify the decision being contested, and (ii) the requirement to file the notice of appeal in the required language.3 If these requirements are not met within the two-month time limit the appeal is inadmissible. Due to the fact that many appeals are filed fairly close to the deadline, these defects often turn out to be fatal for the appeal. Furthermore, the notice must pursuant to Rule 48 CTMIR ‘strictly’ comply with certain more substantive requirements, namely, the requirements under Artt. 58–60 CTMR. This is of course logical: the appellant cannot remedy the decision not being subject to appeal (Article 58), not having standing to appeal (Art. 59) and not having met the two-month time limit itself (Art. 60). The OHIM provides a form for the notice of appeal.4 Use of the form is not mandatory but for the above reasons of course to be recommended to avoid the notice containing any unnecessary defects. Indeed in practice many of the decisions of the Boards of Appeal concern various formal defects in the appeals documents. Merely paying an amount of money corresponding to the appeal fee (see below regarding the requirement to pay the appeal fee) – even if referring to the relevant trade mark in the reference field of the transfer – does not meet the requirements for a valid notice of appeal;5 a notice meeting the minimum requirements must be filed. It is not possible to widen the scope of the appeal after the relevant time limit has expired. The appellant therefore cannot generally seek to have the entire contested decision set aside if it in its notice of appeal has indicated a more limited scope for the appeal. As discussed in connection to Article 59, the appeals defendant, however, is entitled to raise any relevant issue of fact or law in response to the appeal, even if it is outside the scope of the appeal (without filing his or her own appeal).6 The appellant naturally must take the above into account when considering the scope of its appeal. The mere fact that the appellant limits its appeal to some particular point and other party does not file its own appeal, in other words, does not as a practical matter limit what the appeals defendant may plead before the Board of Appeal. This naturally makes the procedure before the Board somewhat more difficult to predict for the appellant. It is possible for the appellant to attach a statement of grounds setting out the appellant’s full argument as to law and fact to the notice of appeal itself. If the appellant does not do so, the appellant must provide its statement of grounds within four months from the contested decision having been notified (see below). The OHIM generally does not submit the contested decision to the original firstinstance decision-maker for revision review pursuant to either Art. 61 or Art. 62 before the full statement of grounds is received from the appellant. If there is a plausible case

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for revision (particularly in connection to ex parte matters) the appellant therefore can expedite the matter considerably by submitting its statement of grounds as an annex to the notice of appeal.

2. Payment of the appeal fee 19 20

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The appellant must also pay the appeal fee provided for in the Community trade mark fees regulation.7 At the time of writing the fee is EUR 800.8 According to the wording of Art. 60, the notice is deemed to have been filed only when the fee for appeal has been paid.9 Under Art. 8 (1)(a) CTMFR, payment by bank transfer is deemed to have been made on the day the payment was actually entered into the OHIM’s bank account. Even if payment did not reach the OHIM’s bank account within the time limit, the appellant can still pursuant to Art. 8 (3) CTMFR offer evidence that he or she, in an EU Member State, duly gave an order to a banking establishment to transfer the amount of the payment. Payment of a surcharge may be required.10 If the payment was not entered into the OHIM’s bank account and the appellant fails to prove that he or she did give a banking establishment an order to transfer the payment, the appeal will be considered as not having been filed.11 An appeal fee paid after the expiry of the time limit will be returned to the payer if the appeal is deemed not to have been filed.12 Mere payment of an amount corresponding to the appeal fee – even if referring the relevant trade mark in the reference field of the transfer – does not meet the requirements for a valid notice of appeal;13 a notice meeting the minimum requirements must be filed (see above for the requirement to file a notice of appeal).

3. Statement of grounds Under Art. 60 CTMR, the appellant is required to provide the Board of Appeal with a written statement setting out the grounds for its appeal within four months of the contested decision having been notified to him or her. The requirement to provide a statement of grounds is not satisfied merely by filing the notice of appeals14 or indicating the decision being appealed and the applicant’s wish to have the decision annulled.15 25 It should be noted that filing a valid statement of grounds is a condition for the appeal to be admissible.16 Filing a statement of grounds that fails to meet the relevant requirements is, in other words, not something that can be dealt with as part of the examination of the appeal by, e. g., filing additional follow-up observations. Filing an 24

7 Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) 8 Art. 2 (18) CTMFR. 9 Note that this is different from payment of the filing fee for a trade mark application, where the applicant has one month to effect payment. See Art. 27 CTMR. 10 Under Art. 8 (3)(b) a surcharge of ten per cent of the relevant fee (but not more than E 200) is payable if the relevant requirements were met within ten days of the time limit. 11 Rule 49 (3) CTMIR. 12 Id. 13 GC Case T-373/03 Solo Italia Srl v OHIM – Nuova Sala Srl. [2005] ECR II-01881, para. 58. 14 See, e. g., GC Case T-71/02 Classen Holding KG v OHIM – International Paper Co. [2003] ECR II03181, para. 54. 15 GC Case T-145/08 Atlas Transport GmbH v OHIM – Atlas Air, Inc. [2011] ECR II-02073, para. 40. 16 GC Case T-145/08 Atlas Transport GmbH v OHIM – Atlas Air, Inc. [2011] ECR II-02073, para. 44.

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insufficient statement of grounds will lead to the appeal being found inadmissible without formal examination as to substantive merit. In its statement of grounds the appellant must set out in writing and sufficiently clearly what matters of law and/or facts the request to annul and/or amend the decision being contested is based on.17 The appellant should also provide the evidence he or she wishes to adduce before the Board. The OHIM and the Boards of Appeal have somewhat detailed practical instructions on the statement of grounds and in how many copies it and its attachments should be submitted. While the appellant of course should state its legal argument, it is not required that the appellant expressly indicate the each specific article or provision the appellant relies on.18 Parties are not required to expressly indicate the provision on which they rely, under the condition that their arguments are sufficiently clear as to allow the other parties and the OHIM to identify this rule19 and to understand why the decision is being contested.20 It is enough for the subject of that party’s appeal and the main elements of fact and law on which it is based to be set out sufficiently clearly in the appeal.21 It is not, however, sufficient to state one’s argument so tersely that the OHIM must ‘infer’ the grounds of the appeal.22 The Union courts have also explicitly rejected the argument that anything going over the minimum requirements for the notice of appeal must be deemed sufficient for the statement of grounds.23 The statement of grounds must be filed in the language of the contested decision. Under Rule 96 (1), however, the appellant may file its statement of grounds in any language of the OHIM. If the appellant choses to do so, it must still file a translation of its grounds with the Board within one month of the submission of the original document. It should be noted that the appeal, pursuant to Art. 61 or Art. 62, will be sent to the first-instance decision-maker for revision prior to being examined by the Board. Unlike the Board, the first-instance decision-maker is not entitled to contact the appellant to remedy formal defects in the appeal. Even comparatively minor formal defects in the appeals document will therefore prevent revision pursuant to Art. 61 or Art. 62.24 Since procedure before the Boards of Appeal primarily is written, with the Boards only very rarely holding oral hearings, the appellant should fully develop its legal argument in its statement of grounds. The appellant should not reserve any arguments for oral hearing.

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4. Calculation of time limits for the notice of appeal and the statement of grounds As noted above, the time limit for filing the notice of appeal is two months from the 32 date the contested decision was notified to the appellant, and the time limit for the statement of grounds four months from that same date. Under Rule 70 (1) CTMIR the time limit shall run from the date the recipient 33 received the notification of the decision. Under Rule 70 (4) CTMIR, in turn, time limits 17

GC Case T-145/08 Atlas Transport GmbH v OHIM – Atlas Air, Inc. [2011] ECR II-02073, para. 46. OHIM, R 40/2011-1 RealFiction ApS v Dream Property GmbH, para. 21 and the case-law cited there. 19 See, e. g., GC Case T-191/08 JOOP! GmbH v OHIM [2009] ECR II-00191, para. 17 and the case-law cited there. 20 GC Case T-145/08 Atlas Transport GmbH v OHIM – Atlas Air, Inc. [2011] ECR II-02073, para. 41. 21 GC Case T-451/11 Gigabyte Technology Co. Ltd v OHIM – Haskins (not yet published), para 28. 22 GC Case T-145/08 Atlas Transport GmbH v OHIM – Atlas Air, Inc. [2011] ECR II-02073, para. 41. 23 GC Case T-145/08 Atlas Transport GmbH v OHIM – Atlas Air, Inc. [2011] ECR II-02073, para. 43. 24 For further details, see discussion in connection to, in particular, Art. 61. 18

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set in months – such as the ones at issue here – expire on the day of the relevant month having the same number as the day from which the time limit is calculated. In other words, the time limit for the notice of appeal expires two (and for the statement of grounds, four) calendar months after the decision was received by the appellant, on the day having the same number as the day on which the decision was received. The time limit does not expire the day after the day having the same number despite Rule 70 (1) CTMIR mentioning that calculations of time limits start the day following the day on which the relevant event occurred.25 Where the relevant month does not have a day with the same number, the time limit expires on the last day of the month.26 If the last day of the time limit falls on a day during which the OHIM is not open for receipt of documents or during which ordinary mail is not delivered to the OHIM, the time limit expires on the next day during which the OHIM is open.27 For the notice or statement to be timely, the notice or statement must have reached the OHIM prior to midnight OHIM local time on the last day of the time limit.28 Notably, it is not sufficient for the notice or grounds to have been sent within the time limit.29 The time limit for filing the notice of appeal and the statement of grounds cannot be extended as they are provided for directly in the CTMR.

5. The role of the registrar in the admissibility examination Under Art. 5 (3) ROP, the Registrar shall ensure that time limits and other formalities for the appeal are observed by the parties. 39 If the registrar becomes aware of an issue with the appeal that is liable to make the appeal inadmissible, the Registrar must send a reasoned statement to this effect to the chairman of the relevant board. The chairman can then ask the Board to rule on the admissibility issue or reserve judgment on the admissibility of the appeal for the decision to end the proceedings before the Board of Appeal.30 38

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While the time limit cannot be extended per se, it may be possible for the appellant to have his or right re-established pursuant to the rules on restitutio in integrum under Article 81 CTMR.

Article 61 Revision of decisions in ex parte cases 1. If the party which has lodged the appeal is the sole party to the procedure, and if the department whose decision is contested considers the appeal to be admissible and well founded, the department shall rectify its decision. 25 GC Case T-360/11 Fercal - Consultadoria e Serviços, Ld\ha v OHIM – Parfums Rochas SAS (not yet published). 26 Rule 70 (3) CTMIR. 27 Rule 72 (1) CTMIR. 28 See, e. g., case R 636/2007-2 Playdale Playgrounds Limited. 29 GC Case T-360/11 Fercal - Consultadoria e Serviços, Ld\ha v OHIM – Parfums Rochas SAS (not yet published). 30 Art. 8 (1) ROP.

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2. If the decision is not rectified within one month after receipt of the statement of grounds, the appeal shall be remitted to the Board of Appeal without delay, and without comment as to its merit. Bibliography: OHIM, OHIM Manual of Current Trade Mark Practice, Part A, section 7.

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 II. Revision procedure in ex parte cases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 III. Scope of relief that can be granted by revision . . . . . . . . . . . . . . . . . . . . . . . . . . 12

I. General Revision of decisions forms an integral (if not always practically significant) part of the OHIM appeals system. The OHIM is one of the ‘bodies, agencies or offices’ of the European Union capable of producing decisions that bind third parties within the meaning of Art. 263 of the post-Lisbon Treaty on the Functioning of the European Union. It is characteristic for these offices that they also provide an internal appeals system, which must be exhausted before further judicial appeal can lie to the Union courts. These systems also typically involve a first-stage revision review by the original decision-maker before the actual appeals examination. In the CTMR, the revision process is regulated in both Art. 61 – with respect to revision in ex parte cases, i. e., where there is only one party to the matter before the OHIM – and in Art. 62, with respect to inter partes issues where there is more than one party to the same matter. The rationale for having the revision procedure in place is of course to limit the number of needless appeals that reach the Boards of Appeal, where the OHIM itself recognises the need to revise the decision. It is significant to note the difference between the revision procedure under Artt. 61 and 62 on the one hand and revocation of the decision under Art. 80 CTMR (due to obvious procedural errors) and corrections of decisions under Rule 53 CTMIR (due to linguistic errors, transcription errors and obvious mistakes) on the other hand. The role of the revision procedure under Art. 61 and Art. 62 is not, as such, to remove mistakes in decisions, but to enable the OHIM to grant the appellant the relief he or she seeks without the need for a full re-examination before a Board of Appeal. The general features of the revision review are the same for both ex parte and inter partes matters.

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II. Revision procedure in ex parte cases Once the appellant has filed its statement of grounds within four months of the first- 6 instance decision having been notified to him or her, the registrar of the Board of Appeal will send the contested decision back to the first-instance decision-maker for revision review. If the first-instance decision-maker finds the appeal both admissible and well-founded he or she may rectify the decision. It is significant to note that the first-instance decision-maker conducts his or her own 7 assessment of the admissibility of the appeal, independently of any such assessment by the Board of Appeal. This includes verifying that the appeal fee has been paid within the Kim Parviainen

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two-month time limit, that the language of the appeal is the correct one and that all other formalities are complied with.1 Unlike the Board of Appeal, the first-instance decision-maker cannot ask (even orally) the appellant to remedy any formal defects in his appeal. This also includes cases where a relevant signature or authorisation may be missing. If the first-instance decision-maker finds that the appeal is inadmissible he or she must remit the case back to the Board of Appeal without delay. The first instance decision-maker then has one month from receipt of the statement of grounds to consider the matter and to rectify the decision is he or she considers it appropriate. The decision cannot be revised after the one-month time limit has expired. If the decision is not rectified within a month, the first-instance decision-maker must remit the decision back to the Board. He or she may not in any way comment on the decision or its correctness when remitting the appeal back to the Board. This means, in practice, that the first-instance decision-maker never formally takes a decision to deny revision. The fact that the first-instance decision-maker chooses to not grant revision is thus also not a decision that is subject to separate appeal.

III. Scope of relief that can be granted by revision 12

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The first-instance decision-maker cannot grant partial revision. The appellant must, in other words, overcome every objection raised at first instance for revision to be possible. This can be the case, e. g., where the first-instance decision-maker has objected to a list of goods and services but the appellant at revision manages to overcome the objection only as regards some of the objected to goods or services. This is also the case where the first-instance decision-maker refused registration for lack of distinctiveness and the applicant at appeal pleads acquired distinctiveness, but would need to adduce additional evidence in support of such a claim. In these cases, revision cannot be granted and the first-instance decision-maker must remit the appeal back to the Board for examination. Where the first-instance decision-maker grants revision he or she can also order that the appeals fee be reimbursed pursuant to Rule 51 CTMIR.

Article 62 Revision of decisions in inter partes cases 1. Where the party which has lodged the appeal is opposed by another party and if the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision. 2. The decision may be rectified only if the department whose decision is contested notifies the other party of its intention to rectify it, and that party accepts it within two months of the date on which it received the notification. 3. If, within two months of receiving the notification referred to in paragraph 2, the other party does not accept that the contested decision is to be rectified and makes a declaration to that effect or does not make any declaration within the period laid 1

For details on the formalities for the appeal, see discussion in connection to Art. 60.

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down, the appeal shall be remitted to the Board of Appeal without delay, and without comment as to its merit. 4. However, if the department whose decision is contested does not consider the appeal to be admissible and well founded within one month after receipt of the statement of grounds, it shall, instead of taking the measures provided for in paragraphs 2 and 3, remit the appeal to the Board of Appeal without delay, and without comment as to its merit. Bibliography: OHIM Manual of Current Trade Mark Practice, Part A, section 7.

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Differences between ex parte and inter partes revision . . . . . . . . . . . . . . . . .

1 4

I. General Revision of decisions forms an integral part of the OHIM appeals system. Due to the 1 similarities between revision in ex parte cases and inter partes cases, the reader is asked to review the comments to Article 61. Originally, the CTMR only provided for revision in ex parte cases. By an amendment 2 in 20041 a new Art. 60 a (now Art. 62) was introduced to allow revision in inter partes cases as well. The Commission’s intention was to reduce the number of appeals before the Boards of Appeal.2 It is questionable whether this was successful. Since revision in inter partes matters 3 requires the express consent of the appeals defendant (see below), revision is rarely available. The practical significance of Art. 62 is therefore limited.

II. Differences between ex parte and inter partes revision The most significant difference between ex parte and inter partes revision is that 4 revision in inter partes cases3 is only available where the appeal defendant consents to rectification. The first-instance decision-maker will, if it considers the appeal admissible and well- 5 founded, notify the appeal respondent of its intention to rectify the decision. If the appeals defendant consents to the rectification within two months of having been notified of the intention to rectify, the rectification can be made. Otherwise no rectification can made and the first-instance decision-maker must remit the appeal back to the Board of Appeal. It is significant to note that the appeals defendant’s consent must be express. There 6 can be no implied or ‘silent’ consent.

1 Council Regulation (EC) No 422/2004 of 19 February 2004 amending Regulation (EC) No 40/94 on the Community trade mark. 2 See COM(2002) 767 final, p. 6 3 These comprise opposition proceedings (including decisions by which the opposition is rejected as inadmissible), proceedings concerning applications for revocation or declaration of invalidity, and certain proceedings concerning inspection of files.

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Article 63 Examination of appeals 1. If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable. 2. In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself. Content I. II. III. IV. V. VI.

General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Nature of examination by the Board . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Procedure before the Board . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Defendant’s right to raise new arguments . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Introducing new evidence before the Boards of Appeal . . . . . . . . . . . . . . . Oral hearings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 3 14 25 30 38

I. General The examination of appeals before the Boards of Appeal is in principle a two-step procedure. The Board, first, examines whether the appeal is admissible, and, second, whether the appeal is well founded on its merits. Under Art. 63 (2), the Board should invite the parties to file observations to the extent necessary to fully examine the matter. In inter partes proceedings, Art. 8 (3) ROP provides a model for the exchange of observations between the parties. The Board can, however, deviate from this model to the extent it finds this necessary (see below). 2 The Board’s authority to examine the appeal as to substantive merit is conditioned on the appeal being found admissible.1 The Board cannot, in other words, review the substantive merit of the appeal unless it complies with all the relevant formal admissibility requirements. These formal requirements are set out in Artt. 58–60 CTMR and Rule 48 CTMIR.2 1

II. Nature of examination by the Board Since the earliest days of the OHIM there has been debate about the nature of the Boards of Appeal and the examination conducted by them. On the one hand, the Boards enjoy independence in relation to the rest of the OHIM, but on the other hand they constitute one of the departments of the overall OHIM. 4 Part of this debate is the question of whether the examination conducted by the Boards is to be considered judicial or administrative in nature. It is by now, however, settled law that the nature of the Boards and their examination essentially is administrative in nature (although sometimes in practice referred to as ‘quasi-judicial’). 5 The Boards are thus not tribunals or courts of law; they are a department of the OHIM, a fundamentally administrative agency. The then-Court of First Instance in its 3

1 2

GC Case T-236/12 Airbus v OHIM (not yet published), para. 22. See discussion in connection to Art. 60.

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well-known Baby-Dry judgment discussed the nature of the Boards of Appeal and concluded that there is a functional continuity between the first-instance decisionmakers at the OHIM and the Boards of Appeal. This can also be seen in, e. g., by Art. 64 (1), which provides that the Board of Appeal may exercise any power within the competence of the department which was responsible for the decision appealed. From the administrative, as opposed to the judicial, nature of the Boards’ examination also follows that the parties strictly speaking cannot rely on the right to a fair hearing before the Boards,3 such as enshrined in, e. g., Art. 6 of the European Convention on Human Rights. Parties do, however, as a matter of both trade mark law and general Union law have the right to be heard before the Board.4 Essentially, in other words, proceedings before the OHIM, whether the first-instance department or the Boards, form the one single procedural ‘continuum’ that is, e. g., the CTM application process. The relationship between the Boards of Appeal and the other departments of the OHIM is also illustrated by the fact that the OHIM itself is not entitled to appeal the decisions of the Boards to the Union courts. Nor is the OHIM, however, required to defend the Boards’ decisions before the European courts.5 The concept of the functional continuity between the OHIM first-instance decisionmakers and the Boards of Appeal have been used in a large number of cases before the European Union courts to determine the powers of the Boards of Appeal and the scope of their examination and is a central concept in understanding the role and nature of the Boards of Appeal under the CTMR. From the above also follows that the nature of the examination by the Boards is extensive. The Boards do not exercise a limited judicial review of the first-instance decision but, as part of the functional continuum that is the OHIM, are required to base their decision on all the matters of fact and of law which the parties concerned introduced either in the first-instance proceedings or in the appeal.6 The Boards consequently do not exercise a limited judicial review of the correctness or legality of the decision below, but rather re-examine the facts, their evaluation and any inferences to be drawn from them.7 In other words, the Boards examine the appeals before them de novo. This does not mean that the Board on its own motion must take into account every conceivable relevant issue. In proceedings concerning relative grounds for refusal, the OHIM (of which the Boards are part), pursuant to Art. 76 (1), is restricted to taking into account only the facts, evidence and arguments provided by the parties and the relief they have sought. The fact that the Boards carry out a de novo review of the firstinstance decision, does not, in other words, mean that the Boards’ examination would be inquisitorial in the sense of being unconstrained by the parties’ arguments. In their examination of absolute grounds for refusal the Boards, however, cannot limit their review to the points raised by the parties. The issues of the existence and the

3

GC Case T-63/01 Procter & Gamble Company v OHIM [2002] ECR II-05255, para. 23. GC Case T-237/11 Lidl Stiftung & Co. KG v OHIM – Lactimilk, SA (not yet published), paras. 23–24. The fact that the Boards are not courts or tribunals of course does not mean that fundamental administrative procedural requirements would not apply. 5 See, e. g., GC Joined Cases T-81/03, T-82/03 and T-103/03, Mast-Ja ¨ germeister AG v OHIM – Licorera Zacapaneca SA [2006] ECR II-05409, para. 26 and the case-law cited there. 6 GC Case T-407/05 Socie ´te´ anonyme des eaux mine´rales d’E´vian v OHIM – A. Racke & Co [2007] ECR II-04385, para. 50. 7 The review of the Union courts, in contrast, is restricted to a judicial review of the legality of the Board’s decision. 4

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scope of, e. g., earlier trade marks are therefore not factors which can be left to the free assessment of the parties and must be taken into account by the Board.8

III. Procedure before the Board 14

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Pursuant to Art. 4 ROP, the chairman of the relevant Board will for each appeal appoint a rapporteur who will primarily be responsible for handling the case. The rapporteur will carry out a preliminary review of the appeal and can – subject to the direction of the Board’s chairman – send communications to the parties on behalf of the Board. The rapporteur will also ultimately be responsible for drafting the Board’s decision.9 The CTMR in Title IX provides for a number of procedural rules that must be observed during the examination. Rule 50 (1) CTMIR furthermore provides that the procedure observed before the relevant first-instance department shall apply, mutatis mutandis, to the appeals examination before the Board. Under Art. 63 (2), the Board shall invite the parties to file observations in response to the other party’s observations or issued raised by the Board. The Boards must essentially ensure that the parties’ right to be heard under Artt. 75 and 76 is respected.10 Under Art. 75, the OHIM (including the Boards of Appeal) shall not base its decisions on reasons or evidence on which the parties concerned have not had an opportunity to present their comments. Essentially, Artt. 63 (2), 75 and 76, read jointly, establish, as a matter of Community trade mark law, the ‘right to be heard’.11 This right to be heard does not, however, require that the Boards expressly invite the parties to address, e. g., every earlier mark that was raised in the first-instance proceedings. If, e. g., an opposition was based on two marks, with the Opposition Division upholding the opposition on the basis of one of them, the Board is entitled to find a likelihood of confusion as regards the second opposition mark without specifically alerting the appellant of this fact or inviting him or her to comment.12 Nor do the parties, e. g., need to be given copies of publically available information, such as dictionary pages, in order for the parties to comment on the information.13 The right to be heard also does not imply that the Board is required to give the parties are chance to comment on the final decision it intends to adopt.14 Art. 8 (3) ROP provides that the exchange of observations between the parties to inter partes proceedings takes places by the following: (1.) the appellant’s statement of grounds for the appeal; (2.) the defendant’s response; (3.) the appellant’s reply, lodged within two months of notification of the response; and finally, (4.) the defendant’s rejoinder, lodged within two months of the notification of the reply. In this context it should also be noted that the appellant filing a statement of grounds meeting all the formal requirements is a mandatory condition for the appeal being admissible.15 In this sense, the appellant’s statement of grounds is distinct from the other observations that the parties may file before the Board. 8

GC Case T-277/12 Bimbo, SA v OHIM – Cafe´ do Brasil (not yet published), para. 35. See discussion in connection to Art. 64 for details on the Board’s decision-making procedure. 10 GC Case T-237/11 Lidl Stiftung & Co. KG v OHIM – Lactimilk, SA (not yet published), para. 23. 11 Id. 12 GC Case T-237/11 Lidl Stiftung & Co. KG v OHIM – Lactimilk, SA (not yet published), para. 34. 13 GC Case T-33/12 Elke Piotrowski v OHIM (not yet published), para. 25. 14 GC Case T-273/02 Kru ¨ ger GmbH & Co. KG v OHIM – Calpis Co. Ltd [2005] ECR II-01271, para. 65. 15 For the requirements for the statement of grounds, see discussion in connection to Art. 60. 9

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In ex parte proceedings the Board can in fact most often rule based on the statement of grounds alone, but can also issue communications to the appellant seeking further observations to the extent it deems necessary. Since the time limits for the appellant’s reply and the defendant’s rejoinder are specified directly in Art. 8 (3) ROP, they cannot be extended. In principle the appeal proceedings could be stayed, however. The CTMR, the CTMIR or the ROP do not, however, specify a time limit for the defendant’s first response – generally set at two months – which consequently can be extended. The model provided for in Art. 8 (3) ROP is without prejudice to the right to be heard. If, e. g., Art. 75 requires a more extensive exchange of observations, this must be respected by the Board.

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IV. Defendant’s right to raise new arguments As noted above, the Board’s examination must be a full de novo review of all matters of fact and law. The Board is therefore required to take all of the appeals defendant’s arguments into full account regardless of whether they immediately relate to the appeal and its scope. The defendant is therefore entitled to contest the decision being appealed on any point of law or fact, even if the issue had not been raised by the appellant at all. Simply by virtue of his or her status as a defendant, the defendant is allowed to challenge the validity of, e. g., the underlying Opposition Division’s decision.16 In practice this means that appeals defendants do not need to file their own (cross) appeals. As part of the examination of the appeal, the Board is required to take their arguments into account, and, if well founded, rule in accordance with them. This is also clearly provided for in Art. 8 (3) ROP, under which the defendant may, in his or her response, seek a decision annulling or altering the contested decision on a point not raised in the appeal. The appellant is therefore in a sense always in control of starting and ending the appeals proceedings. It is not, however, in control of what points of law or fact can be raised during the appeals examination. A party appealing a decision therefore takes the risk that the subject-matter of the appeals proceeding will expand beyond that the appellant envisaged.

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V. Introducing new evidence before the Boards of Appeal Historically, there has been divergent case-law on the parties’ right to adduce new or 30 additional evidence before the Boards of Appeal. The Court of First instance has had at least three approaches to the issue: – That it is not possible to introduce new evidence before the Boards if the original time limit to submit the evidence to the first-instance decision-maker has expired.17 16 GC Case T-84/08 Intesa Sanpaolo SpA v OHIM – MIP Metro Group Intellectual Property GmbH & Co. KG [2011] ECR II-01511, para. 23. See further discussion in connection to Art. 59. 17 See, e. g., GC Case T-388/00 Institut fu ¨ r Lernsysteme GmbH v OHIM – ELS Educational Services, Inc. [2002] ECR II-04301.

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– That the Boards have discretion on whether to accept new evidence.18 – That new time limits start running before the Boards of Appeal.19 In its well-known holding in Kaul, the European Court of Justice set as the clear main principle that the Boards are allowed to accept new evidence not adduced at first instance.20 The Board is also not, however, required to take this evidence into account. The main rule is therefore that the Board has discretion in whether to accept new evidence. As regards appeals against decisions of the Opposition Division, this discretion is now also enshrined in the third subparagraph of Rule 50 (1) CTMIR, which provides that the Boards, as a starting point, must limit their examination to the facts and evidence presented at first instance (and within the relevant time limits), but that he Boards may, however, take such evidence into account pursuant to Art. 76 (2).21 Without here going into the details of Art. 76 (2), the Board choosing to accept new evidence would, in the words of the court in Kaul, likely be justified where (1) the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the matter brought before it; and (2) the stage of the proceedings at which that late submission takes place; and (3) the circumstances surrounding it do not argue against such matters being taken into account.22 Failure on one of criteria alone is sufficient to establish that the Board should not take the new evidence into account.23 Should the Board choose to not accept new evidence, it should, however, state the reasons for doing so.24 This discretion to take new evidence into account during the Board’s examination of the appeal is precluded only where there is a peremptory norm or time limit that specifically removes the Board’s discretion.25 The relevant norms depend on the nature of the proceedings before the Board. The Board should, however, generally accept new legal arguments, such as relevant EU Directives that have not been raised at first instance. These concern legal matters that can be put forward at any stage of the proceedings and that, as part of the Union law, should not be disregarded by the OHIM.26 The Board is also entitled to take into account well-known facts, whether raised by the parties or not.27

18 See, e. g., GC Case T-334/01 MFE Marienfelde GmbH v OHIM – Ve ´toquinol AG [2004] ECR II02787. 19 See, e. g. GC Case T-308/01 Henkel KGaA v OHIM – LHS (UK) Ltd [2003] ECR II-03253. 20 CJ Case C29/05 P OHIM v Kaul GmbH – Bayer AG [2007] ECR I-02213. 21 The third subparagraph of Rule 50 (1) CTMIR was not in place when the proceedings in Kaul began. It was, however, in place by the time the matter had reached the Court of Justice. Despite the wording of Rule 50 (1) having a somewhat reverse starting point than the holding in Kaul, AG Sharpston in her opinion to Kaul considered that the amended Rule 50 (1) states essentially the same principle (at paras. 83–86 of her opinion). 22 CJ Case C-29/05 P OHIM v Kaul GmbH – Bayer AG [2007] ECR I-02213, para. 44. 23 CJ Case C-122/12 P Bernhard Rintisch v OHIM – Valfleuri Pa ˆ tes alimentaires SA (not yet published), para. 45. 24 CJ Case C-29/05 P OHIM v Kaul GmbH – Bayer AG [2007] ECR I-02213, para. 43. 25 CJ Case C-29/05 P OHIM v Kaul GmbH – Bayer AG [2007] ECR I-02213, para. 42. See also case T86/05 K & L Ruppert Stiftung & Co. Handels-KG v OHIM [2007] ECR II-04923. 26 GC Case T-413/11 Welte-Wenu GmbH v OHIM (not yet published), para. 33. 27 GC Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler [2004] II-01739, subsequently affirmed in case CJ C-361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-00643.

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VI. Oral hearings The Boards’ examination of appeals before them is primarily written. The Boards 38 may, however, if they consider it useful, decide to hold oral hearings pursuant to Art. 77 CTMR. It is significant to note that Art. 63 (2) does not impose any independent obligation on the Boards to hold oral hearings, such hearings being at the Board’s discretion and subject to Art. 77 CTMR.28 Oral hearings would in practice be extremely rare and parties to appeals proceedings 39 before the Boards of Appeal must not rely on an oral hearing being held as part of the examination of the appeal. Parties to appeal proceedings should therefore fully set out their arguments in their written observations.

Article 64 Decisions in respect of appeals 1. Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. 2. If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. 3. The decisions of the Boards of Appeal shall take effect only as from the date of expiration of the period referred to in Article 65 (5) or, if an action has been brought before the Court of Justice within that period, as from the date of dismissal of such action. Content I. II. III. IV. V. VI. VII.

General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Exercising the competence of the first-instance decision-maker . . . . . . Remitting the case back to the first-instance decision-maker . . . . . . . . . The Board’s decision-making process. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Form and content of the Board’s decision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Appeal fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Suspensive effect of further appeals . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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I. General After the Board has examined the appeal pursuant to Art. 63 CTMR and the 1 procedural provisions in Title IX CTMR, it must decide on the appeal. The Board may not, in other words, withhold judgment on the appeal. It is settled law that there is a ‘functional continuity’ between the first-instance 2 decision-makers at the OHIM and the Boards of Appeal.1 In practical terms, the full 28 1

GC Joined Cases T-299/09 and T-300/09 Gu¨hring OHG v OHIM [2011] ECR II-00017, para. 34. See discussion in connection to Art. 63.

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proceedings before the OHIM, whether at first instance or in appeal, form one single continuum that is the European Union trade mark process. As an element of this continuity between the Boards of Appeal and the first-instance decision-makers at the OHIM, the Boards can, when deciding on the matter, exercise any power that was within the competence of the first-instance decision-maker. The Boards can, in other words, after having examined the appeal, decide on the matter in substance. In the alternative, the Boards can also remit the case back to the first-instance decision-maker for further prosecution. The question of whether to decide the matter itself or remit the case back to the firstinstance decision-maker is at the Board’s discretion. Where all the relevant evidence has already been produced before the Board, it often makes practical (and economic) sense for the Board to decide on the matter directly. This will clearly save parties time and money, where the final outcome of the case is clear. If on the other hand, rendering the final decision for whatever reason will require the parties to submit additional evidence (e. g., where the decision below dismissed the application to procedural grounds before evidence was adduced), it often makes sense to remit the decision back to the first-instance decision-maker, before whom the parties can adduce the relevant additional evidence. Since the Boards are required to carry out a full examination of the merits of the matter, in terms of both law and fact,2 there can be no decisions by default by the Boards. A party to the proceedings failing to respond or file observations therefore cannot as such, on that fact alone, be grounds for taking a decision adverse to that party.3

II. Exercising the competence of the first-instance decision-maker Pursuant Art. 64 (1), the Board can ‘exercise any power within the competence of the department which was responsible for the decision appealed’. Often this is straightforward. 9 An issue that may, however, arise in this connection is the question of whether to take into account the lapse of time between the first-instance decision-maker’s decision and the Board’s new decision. Facts can of course have changed during the proceedings. The earlier right an opposition was based on may, e. g., have expired for some reason or other.4 10 In these cases, the Board must look to the relevant substantive rule as some rules directly (or as a matter of relevant case-law) specify the point in time during which the relevant facts must be have present. 11 The starting point, however, should be that the Board generally is entitled to take into account changes in fact that have occurred during the proceedings.5 In the context of opposition proceedings this means that the Board must take into account the fact that the earlier right which the opposition was based on has expired.6 This is unlike the 8

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See discussion in connection to Art. 63. This is not to say that the parties would be released from proving facts or other allegations they rely on. The appellant filing a statement of grounds is also a required element for the appeal to be admissible, see discussion in connection to Art. 60. 4 This issue must be distinguished from the question of whether the Board can take into account new evidence concerning some pre-existing fact. Regarding this separate issue, please see discussion in connection to Art. 63. 5 GC Case T-191/04 MIP METRO Group Intellectual Property GmbH & Co. KG v OHIM – Tesco Stores Ltd, para. 34. 6 GC Case T-191/04 MIP METRO Group Intellectual Property GmbH & Co. KG v OHIM – Tesco Stores Ltd, para. 34. 3

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General Court, which – as it only reviews the legality of the Board’s decision – generally cannot take such changes into account.7

III. Remitting the case back to the first-instance decision-maker The Board may also elect to remit the case back to the first-instance decision-maker 12 for further prosecution. Insofar as the facts are still the same, the first-instance decisionmaker must base its decision on the ratio decidendi of the Board’s decision. The distinction between ratio decidendi and obiter dicta is not an established feature of 13 the laws of all EU member states.8 The term is also not used other language versions. Consequently, the term should here be understood as an autonomous concept of Union law, which is not necessarily identical to the meaning of the term under member state law.

IV. The Board’s decision-making process Pursuant to Art. 12 ROP, the rapporteur prepares a draft for the decision to be taken. 14 He or she then sends the draft decision to the other members of the Board, who can submit comments within a reasonable time limit set by the rapporteur. If the members of the Board are not of the same opinion, the Board convenes to 15 deliberate on the decision. The deliberations are secret, but the chairman may authorise translators, registrars and other officials to be present. During the deliberations the rapporteur delivers his or her opinion first and the 16 chairman last, unless the chairman also is the rapporteur. If the Board cannot reach unanimity, it will vote in the same order (unless the chairman is the rapporteur, in which case he or she will vote last). Members of the Board cannot abstain from giving their vote.

V. Form and content of the Board’s decision Rules 50 (2) and 50 (3) CTMIR provide requirements for the contents of the Board’s 17 decision. The decision must, inter alia, state the names of the Board members that have taken part in deciding the appeal, contain a statement of the issues raised, the Board’s order (including, where appropriate, a decision as to costs) and the reasons for the decision. The latter is also required under Art. 75 CTMR.

VI. Appeal fee Under Rule 51 (b) CTMIR, the Board may order that the appellant be reimbursed for 18 the appeal fee. The Board can only do so, however, where it considers this ‘equitable by reason of a substantial procedural violation’. 7

GC Case T-161/07 Group Lottuss Corp., SL v OHIM – Ugly, Inc., para. 50. The distinction stems from English common law, where the ratio decidendi of a case, very broadly speaking, is the legal reasoning directly relevant to the outcome of the case, the obiter dicta being other possible remarks, examples, comparisons, comments and similar statements made in the ruling. 8

Kim Parviainen

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CTMR Art. 65

Community Trade Mark Regulation

VII. Suspensive effect of further appeals 19

Art. 64 (3) provides that the decisions of the Board only become effective after the expiry of the two-month period provided for further appeals to the European courts. Should a party appeal to the Union courts, the appeal will have suspensive effect. Assuming that the court does not annul the Board’s decision, the decision becomes effective only after the courts have dismissed the appeals action.

Article 65 Actions before the Court of Justice 1. Actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals. 2. The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power. 3. The Court of Justice has jurisdiction to annul or to alter the contested decision. 4. The action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision. 5. The action shall be brought before the Court of Justice within two months of the date of notification of the decision of the Board of Appeal. 6. The Office shall be required to take the necessary measures to comply with the judgment of the Court of Justice. Bibliography: Andre´ Pohlmann, Verfahrensrecht der Gemeinschaftsmarke, C.H.Beck Munich 2012

Content A. Preliminary remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Appeal before the General Court . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Actionable decision. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Decision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Adverse effect and interest in bringing proceedings. . . . . . . . . . . . . . . . . II. Parties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Applicant. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Defendant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Qualified intervener . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Legal succession. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Universal succession . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Legal transfer of rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Matter in dispute . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Facts introduced for the first time . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Evidence not presented before the Board of Appeal . . . . . . . . . . . . . . . . 3. Exceptions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Restriction of the specification. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Grounds of appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Infringement of the CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Infringement of an essential procedural requirement . . . . . . . . . . . . . . . 3. Misuse of power . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Infringement of the Treaty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Term for an appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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Actions before the Court of Justice

Art. 65 CTMR

VI. The application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. The forms of order sought . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. The facts and the pleas in law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Signature . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Further formal requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Consequences of non-compliance with formal requirements . . . . . . VII. Representation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VIII. The language of the proceedings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Ex parte cases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Inter partes cases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Further use of languages in the proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . IX. The proceedings before the Court . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Written procedure. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Oral proceeding. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Joined cases. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Interim measures . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . X. The decision of the GC. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Judgment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Rejection of appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Annulment of the decision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Alteration of decision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Reformatio in pejus. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Formal requirements. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Consequences of the judgment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Appeal manifestly inadmissible or unfounded . . . . . . . . . . . . . . . . . . . . . . . . 5. Discontinuance, no need to adjudicate. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Judgment by default. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . XI. Costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Costs following a decision on the merits . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Costs following other end to proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Taxation of costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . XII. Legal aid . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Appeal to the Court of Justice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Actionable decision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Parties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Applicants . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Other parties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Intervention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Grounds of appeal. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Lack of competence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Breach of a procedural rule . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Infringement of Union law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Restriction to points of law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Term for an appeal. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. The application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. The forms of order sought . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. The facts and pleas in law. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Further formal requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Representation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VII. Cross appeal. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VIII. Language of the case . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IX. The procedure before the CJ . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . X. The decision of the CJ. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Appeal manifestly inadmissible or unfounded . . . . . . . . . . . . . . . . . . . . . . . . 2. Discontinuance and appeals devoid of subject-matter. . . . . . . . . . . . . . . 3. Judgment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Consequences of the judgment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Correction of errors . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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CTMR Art. 65

Community Trade Mark Regulation

XI. Costs. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Costs following a decision on the merits. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Costs following other end to proceedings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Taxation of costs. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . XII. Legal aid . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

221 222 225 226 228

A. Preliminary remarks 1 2

3

4

5

6

7

8

Art. 65 (1) CTMR provides that decisions of the Boards of Appeal of OHIM may be appealed before the Court of Justice. The Court of Justice of the European Union is the judicial institution of the European Union. It was first established in 1952 under the Treaty for the Foundation of the European Coal and Steel Community (‘ECSC’)1. According to Art. 19 (1) of the EU Treaty, the Court of Justice shall insure that in the interpretation and application of the Treaties the law is observed2. The Institution consists of three courts – the Court of Justice as the highest court (‘CJ’) and the General Court (‘GC’, established 1988) and the Civil Service Tribunal as first instance courts. Under Art. 65 CTMR the CJ has jurisdiction in appeals brought against decisions on the registability of a Community trade mark on absolute grounds according to Art. 7 CTMR and Art. 53 CTMR or on relative grounds, i. e. concerning opposition and cancellation decisions based on Art. 43 CTMR and Art. 52 CTMR. Since Art. 65 (1) CTMR explicitly refers only to ‘decisions of the Boards of Appeal’ and the CTMR furthermore provides a special competence of the (national) Community trade mark courts for infringement cases under Art. 96 it follows that other actions concerning a Community trade mark, including infringement actions, do not fall within the scope of Art. 65 CTMR. Historically, it was planned that the CTMR should also contain a provision on a ‘further appeal in the interest of the law’ which would have allowed the Commission to bring an appeal against a decision of the Boards of Appeal even if none of the parties before the Board of Appeal contest the decision3. This provision has, however, not been taken over into the Regulation. In trade mark matters, there is a two-tier proceeding before the Court of Justice. In the first instance, the GC shall be alone competent to determine the facts of the case and assess the evidence in trade mark matters4. This follows from the first subparagraph of Art. 256 (1) of the EU Treaty (ex Art. 225 EC Treaty) in connection with Art. 263 of the EU Treaty (ex Art. 230 EC Treaty), the Statute of the Court of Justice5 and Recital 14 of the CTMR. The GC is not a full instance for judging the facts. Originally, the proposal for the CTMR provided that the Court of Justice should ‘not question the facts as found by and recorded in the decision of the Board of Appeal’6. This rule has subsequently been 1

Artt. 7, 31 ECSC Treaty. Consolidated Version of the Treaty on European Union, OJ 2012 C 326/13. 3 Proposal for a first Council Directive to approximate the laws of the Member States relating to trademarks – Proposal for a Council Regulation on the Community trade-mark (COM (80) 635 final), Art. 55. 4 E. g. CJ Case C-104/00 – COMPANYLINE, [2002] ECR I-07561, para. 22; Case C-346/12 P – MILRAM/RAM, not yet published in the ECR, para. 41. 5 Statute of the Court of Justice of the European Union(OJ 2012 L 112/21), in the following referred to as ‘Statute’. 6 Proposal for a first Council Directive to approximate the laws of the Member States relating to trademarks – Proposal for a Council Regulation on the Community trade-mark (COM (80) 635 final) Art. 54 2

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Actions before the Court of Justice

Art. 65 CTMR

cancelled and was not part of Art. 63 of the Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trade mark7 which regulated ‘Actions before the Court of Justice’. Nevertheless, since the decisions of the Boards of Appeal are subject to clearly defined rules and not a matter of discretion, the Court’s competence is restricted to a control of the legality of the decisions of the Boards of Appeal8. The review of these decisions must therefore be carried out on the basis of the CTMR as interpreted by the CJ. Within this scope, the GC may review the facts of a case and their assessment by the Boards of Appeal9. Intellectual and Industrial property-cases make up approximately 1/3 of the GC’s cases. The duration of the proceedings have continually decreased and are currently at approximately 20 months. The judgments and decisions of the GC can be appealed to the CJ on questions of law10. Between 2007 and 2011 between 19 % and 23 % of the appealable decisions of the GC in intellectual property matters have been brought before the CJ11. The procedure before GC and CJ is governed by a number of different sources, chiefly among them the respective Rules of Procedure of the Courts12. In addition the Statute13, the Supplementary Rules of the CJ14 as well as the Practice Directions to Parties15, the Instructions to the Registrar of the GC16 and the Decision of the GC of 14 September 2011 on the lodging and service of procedural documents by means of eCuria17 also contain provisions and directions relevant to the procedure before the CJ and the GC. The Rules of Procedure of the CJ were amended extensively in 2012 to adapt to the growing number and the different nature of the cases brought before it. The current version, in force since 1 November 2012, contains a number of significant changes visa`-vis the previous version18. Relevant for proceedings in trade mark matters are in particular the new Title V – ‘Appeals against decisions of the GC’ which in Artt. 167– 190 lays down the specific rules applicable to appeals in trade mark cases as well as the modifications regarding oral proceedings.

para. 2 and Amended Proposal for a Council Regulation on the Community trade mark (COM (84) 470 final), Art. 54 para. 2. 7 OJ 1994 L 11/1. 8 CJ, Case MILRAM v RAM, mentioned in fn. 4, at para. 41. 9 CJ, Case C-16/06 P Mobilix v Obelix [2008] ECR I-10053, para. 39. 10 See Art. 256 Treaty on the functioning of the EU (‘TFEU’; consolidated version OJ 2012 C 326/47) and CJ, case MILRAM v RAM, cited in fn. 4 supra, at paras 41, 42 and the case-law cited. 11 See Annual Report of the CJ 2011, p. 208 http://curia.europa.eu/jcms/upload/docs/application/pdf/ 2012-06/ra2011_statistiques_tribunal_en.pdf 12 Rules of Procedure of the General Court of 2 May 1991 (OJ EU, L 136/1, corr. OJ L193/44 and OJ L317/34, as amended on 19 June 2013, OJ L 173/66); Rules of Procedure of the Court of Justice of 25 September 2012 (OJ 2012 L 265), as amended on 18 June 2013 (OJ 2013 L 173). 13 See above under fn. 5. 14 Rules of Procedure Supplementary Rules of the Court of Justice of Justice (L32/38, 1.2.2014). 15 Practice Directions (OJ L68/23, 7.3.2012) and Corrigendum (OJ 2013 L73/23); Practice directions to parties concerning cases brought before the Court (OJ 2014 L31/1). 16 Instructions to the Registrar of 5 July 2007 (OJ 2007 L 232/1) as amended on 17 May 2010 (OJ 2010 L 170/53) and on 24 January 2012 (OJ 2012 L 68/20). 17 OJ 2011 C 289/07. 18 See, e. g. Press release no. 122/12 of the CJ, http://curia.europa.eu/jcms/upload/docs/application/pdf/ 2012-10/cp120122en.pdf.

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CTMR Art. 65

Community Trade Mark Regulation

B. Appeal before the General Court I. Actionable decision 1. Decision Actionable decisions in terms of Art. 65 (1) and (4) CTMR are any decisions of the Boards of Appeal, which decide upon an appeal. 15 The decisions of an Examiner on the registrability of an application as well as the decisions of the opposition and cancellation divisions of OHIM are not separately actionable before the GC. 16 Likewise, a decision which merely confirms an earlier decision of a Board of Appeal cannot be appealed before the GC if the parties did not contest the earlier Board of Appeal decision within the time limits provided by the CTMR. This would, for example, be the case where a Community trade mark application has been rejected due to absolute grounds of refusal and the Community trade mark applicant has not contested this decision. If he later refiles an identical trade mark for the same goods or services the applicant cannot contest a decision of the Board of Appeal rejecting the refiled mark for the same goods and services as before. Otherwise, the time-limit for contesting the original decision would be revived via a ‘back door’19. 14

2. Adverse effect and interest in bringing proceedings Only decisions, which adversely affect a party can be subject to an action before the GC. An adverse effect in this sense is any negative legal effect on the position of one of the parties before the Boards of Appeal. 18 A party is not adversely affected if the Board of Appeal fully upholds its pleas, even if the Board has assessed only part of the arguments and reasons brought forward by it or has partially rejected these reasons and arguments. Such decisions cannot be subject of an action before the GC because they do not produce an adverse legal effect20. 19 If the contested decision contains an error on the part of the Board of Appeal this error does not necessarily produce an adverse effect on the parties. In accordance with Art. 134 (4) of the Rules of Procedure, where the contested decision does contain an error but this error did not affect the outcome of the case, i. e. if the decision would have been the same without the error committed by the Board21, there is no adverse effect in terms of Art. 65 (1) CTMR. 20 On the other hand, an adverse effect may be given in cases where the Board of Appeal has prima facie upheld an appeal in its entirety, but then remitted the case back to the previous administrative body for a new decision. This would inter alia be the case if the Board of Appeal, before remitting the case back, rules negatively on one of the issues raised by the applicant and this issue will invariably lead to an unfavourable decision from the previous body, which is bound by the Board’s assessment22. What is more, the 17

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GC Case T-157/08 – INSULATE FOR LIFE, [2011] ECR II- 00137, paras 29, 30. ¨ LKL [2011] ECR II-08179, para. 25 et seq.; GC Case T-300/08, Golden GC Case T-504/09, VO Elephant Brand, not published in the ECR, para. 27; Case T-426/11 – ME´DITATION TRANSCENDENTALE, not yet published in the ECR, para. 26 et seq.; Case T-353/09 – mtronix, published in the electronic collection, para. 16. 21 See, to that effect e. g. Case T-71/13 – ANNAPURNA – not yet published in the ECR, para. 22. 22 GC Case ME ´ DITATION TRANSCENDENTALE, mentioned in fn. 20, at para. 19 et seq. 20

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GC has assumed an adverse effect even if the issue which was rejected or resolved unfavourably by the Board of Appeal does not inevitably lead to a negative decision from the previous body, notwithstanding the fact that the new decision could be in the applicant’s favour23. Decisions which do not rule on the merits of a case but nevertheless affect a 21 Community trade mark e. g. by declaring an application implicitly withdrawn if the applicant does not participate in the proceedings before OHIM24, have an adverse legal effect and are also actionable before the Court. According to settled case-law the adverse effect must exist until the final decision of 22 the GC. In other words, the applicant must at any time have an interest in bringing or continuing the proceedings before the Court in the sense that, if successful, the appeal brings the applicant an advantage. If such an interest does not exist at the time at which the appeal is filed or anytime thereafter, there is no need for the court to adjudicate25.

II. Parties 1. Applicant According to Art. 65 (3) CTMR the appeal is open to any party to the proceedings 23 before the Boards of Appeal as long as it is adversely affected by the appeal decision. Parties to the proceedings before the Board of Appeal in terms of Art. 65 (3) CTMR 24 are the CTM applicant, the owner of a contested CTM application or registration, the cancellation applicant or the opponent. The OHIM itself is not a party in the aforementioned sense, since the Boards of 25 Appeal, despite the independence granted to their chairmen and members under Art. 136 CTMR, are part of the Office26. OHIM consequently does not have the capacity to bring an action against the decision of one of its Boards of Appeal27. Up until the decision ‘BIOMATE’28 the GC even held that the Office could not support or endorse an applicant’s claim before the GC if it considered the Board of Appeal’s decision as incorrect. This position has since, however, been given up. Settled case-law now provides that the Office is not obliged to always defend the decisions of its Boards of Appeal or to request a rejection of a claim for annulment of a Board decision to the full extent29. The Office may now either support the applicant’s claims or leave a decision to the discretion of the GC. It may, however, not change the subject of the action. Therefore, the Office is still barred from bringing any pleas before the GC ¨ LKL, cited in fn. 20, at para. 28. GC Case VO GC Case T-171/06 – TRENTON v LENTON [2009] ECR II-00547, para. 15 et seq. 25 See e. g. CJ Case C-268/12 P – ZYDUS v ZIMBUS not yet published in the ECR, para. 31; GC Case T117/00 – square green and white tablet [2001] ECR II-002723, at para. 12; Case mtronix, mentioned in fn. 20, at para. 16 and the case-law cited. 26 GC Case T-110/01 – SAINT HUBERT 41 v HUBERT [2002] ECR II-05275, para. 17; GC Joined Cases T-81/03, T-82/03 and T-103/03 – VENADO [2006] ECR II-05409, para. 26; GC Case T-53/05 – CALVO/ CALAVO [2007] ECR II-00037, para. 26. 27 Settled case-law, see inter alia GC Case T-407/08 – METROMEET [2010] ECR II-02781, para. 22; GC, VENADO, fn. 26 supra, at para. 26; GC Case CALVO/CALAVO, fn. 26 supra, at para. 26. 28 GC Case T-107/02 BIOMATE [2004] ECR II-0000, para. 34. 29 See CJ Case C-106/03P, Vedial v OHIM, [2004] ECR I-9573, para. 34; GC, VENADO, mentioned in fn. 26 above, at para. 26; GC Joint Cases T-466/04 and T-467/04 – Geronimo Stilton, information on ECR not available, para. 30; GC Case T-483/04 GALZIN [2006] ECR II-04109, para. 13; GC Case T-186/04 – SPAFORM v SPA [2005] ECR II-02333, para. 18 et seq.; GC Case T-379/03 – Peek & Cloppenburg [2003] ECR II-0000, para. 22; GC Case T-22/04 – Westlife [2005] ECR II-01559, para. 17. 23 24

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which are directed at the annulment or modification of points of the contested Board decision that were not brought forward by the applicant30. This applies both to inter partes and ex parte cases31.

2. Defendant 26

Art. 133 (2) of the Rules of Procedure of the GC32 designates OHIM as the defendant before the GC. Since the Art. 133 (2) does not make a distinction between inter partes and ex partes cases33 OHIM is defendant in all appeals in intellectual property matters before the GC regardless of whether there was another party before the Board of Appeal34.

3. Qualified intervener 27

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Under Art. 134 (1) of the Rules of Procedure, the parties in inter partes cases before the Boards of Appeal besides the applicant may participate in the proceedings before the GC as an intervener. Art. 134 (2) of the Rules of Procedure provides that the intervener has the same procedural rights as the parties. It may support the claims of the main parties, but is, under Art. 134 (3), additionally granted the right to seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application and to put forward pleas in law which have not been raised in the appeal35. Under Art. 134 (3) second subparagraph these rights are, however, linked to the main action and shall cease to have effect if the applicant discontinues the proceedings. The position accorded to interveners in intellectual property cases surpasses the rights of a normal intervener before the GC in terms of Artt. 115, 116 of the Rules of Procedure. Interveners are – in almost everything but in name – treated as parties to the proceedings. This is a logical result of the fact that even though it is not a party to the proceedings before the Court, the intervener has a direct interest in the outcome of the case before the GC, having been a party to the original proceedings. And even if the other party before the Board of Appeal does not participate in the appeal, the judgment of the GC will be binding upon it as well. Moreover, in allowing the intervener to bring forward arguments and pleas in law that were not raised by the main parties, the Rules of Procedure contain an exception from the appeal deadlines. A party before the Board of Appeal, who has previously decided not to contest the Board of Appeal’s decision, can in a sort of unofficial cross appeal challenge the Board’s decision on additional points, which are not subject of the main appeal. In line with the rights accorded interveners, the other parties before the Board of Appeal are not only informed of the lodging of an appeal, but they are also officially served with the appeal as laid down by Art. 133 (1), (2) of the Rules of Procedure. The deadline for responding to the application in terms of Art. 135 (1) of the Rules of Procedure as well as the further deadlines to be observed in the proceedings also apply to interveners. 30

See e. g. case-law cited in fn. 26. GC Case CALVO v CALAVO, mentioned in fn. 26, at para. 28. 32 The Rules of Procedure of the GC will be referred to as ‘the Rules of Procedure’ under Section II. 33 GC Case SAINT HUBERT 41 v HUBERT, fn. 25 supra, at para. 18; Case METROMEET, fn. 27 supra, at para. 24. 34 See in this regard also GC Case SAINT HUBERT 41 v HUBERT, fn. 26 supra, at para. 18. 35 Cf. CJ Case C-609/11 P – CENTROTHERM, not yet published in the ECR, paras 38, 43; GC Joint Cases T-160/02 – T-162/02, Naipes Heraclio Fournier v OHIM, [2005] ECR II-01643, para. 17; GC Case T-437-11 – GOLDEN BALLS, not yet published in the ECR, para. 66, and the case-law cited. 31

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4. Legal succession If there is a change in ownership of a trade mark before or during the proceedings 33 before the GC, the question arises if and under which circumstances the new owner becomes entitled to commence or continue proceedings before the GC. a) Universal succession. In case of a universal succession, where after the death of a 34 natural person or the dissolution of a legal person all the rights and obligations of the former owner are conferred upon a new owner, the new trade mark owner automatically obtains the right to bring proceedings before the Court36. Where the trade mark concerned is a Community trade mark or an application for a Community trade mark it is not necessary that the transfer has already been recorded in the CTM register at the time the appeal is filed. It is sufficient if the request to register the new owner has been lodged with OHIM37. If, at the time the change in ownership occurs, an appeal is already pending before 35 the GC the new trade mark owner automatically becomes a party to the proceedings38. An automatic substitution shall also take place in cases where a whole business is transferred and the transferee ipso jure takes the place of the former owner according to the relevant national law39. b) Legal transfer of rights. In cases of a legal transfer of rights in the trade marks, the question whether the new owner can replace the previous owner in proceedings depends on the stage of the proceedings in which the individual transfer occurs. A change of ownership during the proceedings before the Board of Appeal will lead to the new owner automatically substituting the original holder in the proceedings before the Board under the condition that he proves the change in ownership and his title. Where the mark concerned is a national mark such proof consists e. g. of a copy of the certificate of the respective trade marks office confirming him as a new owner or equivalent documents evidencing the transfer in title. For Community trade marks and Community trade mark applications the new holder must, due to Art. 17 (6) CTMR, at least have filed a request to record the change of ownership with OHIM40. Once this proof has been provided, the substitution of parties takes place and consequently the new owner is a ‘party before the Board of Appeal’ in terms of Art. 65 (1) CTMR. A new owner who acquires the rights after the proceedings before the Board of Appeal are concluded but before an action has been lodged before the GC is also considered ‘a party before the Board of Appeal’ and is entitled to lodge an appeal if he proves his title to the mark concerned41. Where the appeal is already pending before the GC at the time of the transfer the new owner does, however, not automatically replace the former trade marks holder upon proof of the transfer. The Court holds in consistent case-law that a change of parties during the appeal could affect the interests of the previous holder and the other 36 GC Case T-298/10 – Biodanza, not published in the ECR, para. 42; GC Case T-365/09 – FREE [2010] ECR II-00239, para. 20 and case-law cited. 37 See GC Case Biodanza, mentioned in fn. 36, at para. 40. 38 CJ Case C-361/01 P – KIK [2003] ECR I-08283, para. 19; GC Case T-94/02 – Boss [2004] ECR II00813, para. 22 and case-law cited; GC Case FREE, cited in fn. 36, at paras 20, 21. 39 GC Case FREE, cited in fn. 36, at paras 20, 21. 40 Cf. OHIM Guidelines, part E, Section 3.1 -Transfer, 5.2 Transfer and inter partes proceedings; OHIM BoA, Case R 710/2002-2 – TSM v TSM, paras 21, 23 and case-law cited; applicable to appeals by virtue of Rule 50 (1) of the CTMRIR. 41 GC, Case T-301/03 – CANAL Jean [2005] ECR II-02479, paras 19, 20; Case T-361/08 – THAI SILK [2010] ECR II-01207, paras 31–33.

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parties. Therefore, if he wishes to participate in the proceedings, the new owner must apply to replace the prior owner as party or intervener. The GC will rule on the application by order42. In view of the fact that neither the Statute nor the Rules of Procedure contain provisions on the substitution of a party, the Court applies Artt. 115, 116 of the Rules of Procedure in analogy43. The Art. 115 (1)(2) of the Rules of Procedure contain a time limit and formal requirements for bringing the application. The new party or intervener has to accept the proceedings as they are at the time of the substitution, in particular the forms of order sought by the previous party and the legal steps taken by it44. If none of the parties object to the substitution, the new owner will replace the previous holder in the proceedings.

III. Matter in dispute Art. 135 (4) of the Rules of Procedure provides that the submissions of the parties cannot change the matter in dispute before the Boards of Appeal45. Accordingly, only issues which have been discussed before the Boards of Appeal may be subject of an appeal to the GC46. 41 This means that in its’ assessment in inter partes proceedings the Court also has to observe the parameters of Art. 76 (1) CTMR. This article provides that OHIM is restricted ‘to the facts, evidence and arguments provided by the parties and the relief sought’. 40

1. Facts introduced for the first time 42

From the parameters set by Art. 76 (1) CTMR it follows that facts which are introduced for the first time before the GC can only be taken into account by the Court if OHIM would have been required to consider them ex officio47. Thus, in cases concerning relative grounds of refusal, OHIM is largely limited in its assessment of the case to the facts and evidence presented by the parties as provided by Art. 76 (1) CTMR, and cannot determine and/or examine facts on its own motion. Consequently, facts and evidence which the parties did not present before the Board, including an alleged peaceful co-existence of opposing trade marks on the market or an alleged non-use of an earlier mark, cannot be used to contest the Board’s decision before the Court48.

2. Evidence not presented before the Board of Appeal 43

Evidence which has not been presented before the Board of Appeal is regularly considered as being contrary to Art. 135 (4) of the Rules of Procedure, and thus not 42 GC, BOSS, supra fn. 37, at para. 20 et seq.; Case T-131/03 – KERRY Spring [2004] ECR II-03019, para. 8; Case T-527/10 – Gmail, not published in the ECR, paras 11, 12. 43 GC, Case BOSS, para. 27; KERRY Spring, para. 9, mentioned supra fn. 42. 44 GC, Case BOSS, mentioned in fn. 42 above, at para. 28. 45 GC, Case T-423/04 – BK Rods [2005] ECR II-04035, at paras 19, 21; Case T-320/10 – CASTEL, not yet published in the ECR, para. 16; Case METROMEET, mentioned in fn. 27, at para. 16. 46 See also GC Case T-24/00 – VITALITE [2001] ECR II-449, para. 13 and Case T-423/04 – BK Rods [2005] II-04035, paras 19, 21. 47 GC, Case T-600/11 – Carrera Panamericana, not yet published in the ECR, para. 16; Case T-631/11 – B BERG/Christian Berg, not yet published in the ECR, para. 21. 48 Cf. GC, Case T-296/02 LINDENHOF [2005] ECR II-563, para. 31; Case Carrera Panamericana, fn. 47 above at para. 16; Case T-115/03 – GAS STATION/BLUE JEANS GAS [2004] ECR II-02939, para. 13; Case T-146/08 – Redrock v Rock [2009] ECR II-00199 at paras 32, 35.

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admissible before the GC49. This shall, according to the Court even apply if the new evidence merely supports a statement of fact or law already raised before the Board50. In particular, where the applicant offers evidence for the first time at an oral hearing without giving any explanation, this evidence is deemed to be submitted out of time.

3. Exceptions The Art. 48 (2) of the Rules of Procedure contains an exception to the interdiction of 44 new facts and arguments before the GC. According to this provision, ‘facts and evidence’ that have only come to light during the proceedings, i. e. such facts and evidence which are new, may be considered by the Court in its decision. According to the case-law of the GC the parties shall furthermore have the right to 45 submit documents intended to endorse or contest the accuracy of a matter of common knowledge, even if these documents were previously not relied upon before the Board of Appeal51. In addition, both the Court and the parties can take recourse to Community, 46 national or international case-law for the purposes of construing Union law at any point of the proceedings. Such documents are not considered ‘evidence’ in the classical meaning of the word since they are intended to support a claim that the Board of Appeal infringed a provision of the CTMR and do not concern a plea that the Board of Appeal did not consider the facts of a national judgment52. If case-law is, however, submitted for other purposes than supporting a claim that the Board of Appeal breached a rule of law, e. g. to contest the Board’s assessment of similarity between two trade marks, it constitutes new evidence in terms of Art. 135 (4) of the Rules of Procedure and will be rejected as inadmissible53.

4. Restriction of the specification A restriction of the specification of the Community trade mark applied-for after the 47 decision of the Board of Appeal was naturally not subject of the contested decision. It is therefore, in principle, seen as a fact which cannot call into question the legality of the Board of Appeal’s decision54. Restrictions that are effected after the Board of Appeal’s decision are therefore regularly disregarded, at least if the restriction does not concern the complete removal of one or several goods or services from the specification55. 49 CJ, Case C-16/06 P – Mobilix/Obelix [2008] ECR I-10053, para. 136 et seq.; Case C-346/04 – Arthur et Felicie [2005] ECR II-4891, para. 19; GC Case T-128/01 DaimlerChrysler v OHIM (Grille) [2003] ECR II-701, para. 18; GC Case T-23/07 – lettera, [2009] ECR II-00887, para. 9; GC Case T-129/01 – BUDMEN [2003] ECR II-2236, para. 67; GC Case T-139/08 – SMILEY Half-face [2009] ECR II-03535, para. 38; GC Case T-33/11 – BIGAB published in the digital collection, para. 13; GC Case T-451/11 – Gigabyte, not yet published in the ECR, para. 18; GC Case T-307/09 – NATURALLY ACTIVE, not published in the ECR, para. 49; GC Case T-426/11 – ME´DITATION TRANSCENDENTALE, not yet published in the ECR, at para. 36; GC Case T-407/08 – METROMEET [2010] ECR II-02781, at para. 76. 50 GC Case T-320/03 – LIVE RICHLY [2005] ECR II-3411 paras 14, 16; GC Case NATURALLY ACTIVE, supra fn. 49 at para. 12. 51 GC Case T-600/11 – Carrera panamericana, not yet published in the ECR, para. 14 and case-law cited; GC Case T-451/11 – Gigabyte, not yet published in the ECR, para. 22 and case law cited. 52 GC Case T-346/04 – ARTHUR ET FELICIE [2005] ECR II-04891, para. 20; GC Case T-29/04 – CRISTAL CASTELLBLANCH [2005] ECR II-5309, para. 16; GC Case T-277/04 – VITACOAT [2006] ECR II-2211, para. 71; GC Case T-270/06 – LEGO BRICK [2008] ECR II-03117, para. 24; GC Case T-89/12 – Repsol R v Roses R, not yet published in the ECR, para. 22. 53 GC Case T-551/12 – Rebella v Sembella, not yet published in the ECR, para. 60. 54 GC Case T-304/06 – MOZART [2008] ECR II-1927, para. 25 and case-law cited. 55 GC Case T-458/05 – TEK [2007] II-04721, paras 19 et seq.

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Reason is that a restriction, especially the change or removal of one of the characteristics of the goods or services in question, could have an impact on the assessment of the registrability or the likelihood of confusion as carried out by OHIM. Its admission before the GC would therefore amount to an unjustified change of the matter in dispute56. The applicant can, however, partially withdraw the action during the proceedings without changing the matter in dispute. The Court therefore construes a declaration by the applicant that he has deleted some of the goods or services originally covered by the Community trade mark applied-for as an implicit partial withdrawal of the action57. The GC construes the implicit partial withdrawal narrowly. In case Peri v OHIM (forme d’un tendeur a` vis)58 the applicant had requested a restriction of the specification by adding the wording ‘… except spanner nuts’ to the covered goods ‘sheeting and its accessories made from metal’. The GC held that the requested restriction did not cancel goods from the specification in their entirety. The restriction could thus not be taken into account in the appeal.

IV. Grounds of appeal 48

The grounds of appeal are listed in Art. 65 (2) CTMR. They comprise lack of competence, infringement of an essential procedural requirement, infringement of the Treaty and misuse of power as well as an infringement of the CTMR or of any rule of law relating to their application.

1. Infringement of the CTMR 49

The most common reason for appeals is the infringement of the CTMR or of any rule of law relating to its application, and notably an infringement of Artt. 7, 8 CTMR. Rules of law relating to the application of the CTMR include the Implementing Regulation, the Fee Regulation and the Rules of Procedure of the Boards of Appeal as well as the general legal principles of European Union law such as the right to be heard. National law and international treaties can also be relevant rules of law as far as the CTMR expressly refers to them59.

2. Infringement of an essential procedural requirement 50

The plea of an infringement of an essential procedural requirement can be raised in cases where the Board of Appeal’s failure to observe a procedural requirement is relevant to the outcome of the case, and ultimately has a negative impact on the applicant’s interests60. Among the essential procedural requirements is inter alia the Board of Appeal’s obligation laid down in Art. 64 (1) CTMR to decide on the appeal. According to the Court, this obligation must be understood to mean that the Board of Appeal is obliged to rule on each of the forms of order sought in its entirety, either by upholding it, 56 GC Case T-631/11 – B BERG v Christian Berg, not yet published in the ECR, para. 23 and case-law cited. 57 GC Case B BERG v Christian Berg, supra fn. 55, at para. 23 and case-law cited. 58 GC Case T-171/12 Peri v OHIM, not yet published in the ECR, mn. 22 et seq. 59 E. g. in Art. 8 (4)(b) CTMR, which for prior company name rights or trade names refers to national law. 60 See, e. g. GC Case T-382/09 – ERGO v CERGO, [2011] ECR II-00272, para. 15.

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rejecting it as inadmissible or rejecting it as unsubstantiated61. Further essential procedural requirements are contained in Artt. 75–84 CTMR, inter alia the Office’s duty under Art. 75 CTMR to state the reasons on which its decisions are based. Via Art. 83 CTMR the observance of the general principles of procedural law common to the Member States can also be reviewed by the GC. Among the general principles are the principle of equal treatment, legal certainty and the principle of legitimate expectations62. The Court has furthermore held in the case ‘LEMON SYMPHONY’63, in an action 51 brought against a decision of the Community Plant Variety office, that a material procedural defect, such as the failure to observe the minimum notice periods is comparable to, and to be treated in the same way as, an essential procedural requirement. The failure to observe material procedural rules results in the invalidity of the act concerned, irrespective of the actual consequences of the infringement.64

3. Misuse of power The concept of misuse of power has a very specific meaning in the CTMR. It refers to 52 cases where an administrative authority has used its powers, exclusively or at least to a significant degree, for other aims than those for which they were conferred on it65. The consistent case-law of the GC provides that a decision may amount to a misuse of power ‘only it if appears, on the basis of objective, relevant and consistent evidence, to have been taken for purposes other than those stated’66.

4. Infringement of the Treaty The plea of infringement of the Treaty is seldom applied. It regards cases where the 53 applicant claims that provisions of the CTMR or rules of law relating to its application violate the EU Treaty. The allegedly infringing provision must have a direct legal effect on the contested decision or form its basis67. This plea was raised in Case T-120/99 ‘KIK’. The applicant claimed, that Art. 115 54 CTMR which governs the use of languages in proceedings before OHIM infringes Art. 241 of the EC Treaty. In her appeal, the applicant argued that the requirement to indicate a second language for the application, which was not her own, was illegal. This provision could potentially force her to lead proceedings in another language than her own. The Court held that the plea was admissible (but ultimately unfounded) due to the fact that the provision whose illegality the applicant challenged was directly responsible for the decision of the Board of Appeal. The Court furthermore pointed out that the applicant could not have brought proceedings against Art. 115 CTMR herself. 61 CJ Case C-29/05 P OHIM v Kaul [2007] ECR I-2213, paras 56 and 57; G, Case T-437/11 – GOLDEN BALLS, not yet published in the ECR, at para. 69; GC Case ERGO v CERGO, fn. 57, at para. 15; GC Case T-0085/07 – Gabel v Garel [2008] ECR II-823, para. 20; GC Case T-291/07 – Alfonso, not published in the ECR, para. 62. 62 See e. g. GC Case T-101/07 – DADA v DADA [2008] ECR II-00313, para. 23; GC Case T-293/10 – Seven Towns v OHIM, not yet published in the ECR, para. 38. 63 GC Case T-0133/08 – LEMON SYMPHONY, not yet published in the ECR, para. 237 and case-law cited. 64 GC Case T-0133/08 – LEMON SYMPHONY, not yet published in the ECR, para. 237 and case-law cited. 65 GC Case T-19/99 COMPANYLINE [2000] ECR II-1, para. 33; GC Case T-247/01 – ECOPY [2002] ECR II-5301, para. 22; GC Joined Cases T-551/93 and T-231/94 to T-234/94 Industrias Pesqueras Campos and Others v Commission [1996] ECR II-247, para. 168. 66 GC Case T-337/99 Henkel v OHIM (RED AND WHITE ROUND TABLET) [2001] ECR II-2597, para. 66; GC Case ECOPY, fn. 63, at para. 22; GC Case COMPANYLINE, fn. 63 above, at para. 33; GC Case T-434/10 – ALPINE PRO SPORTSWEAR & EQUIPMENT [2011] ECR II-00388, para. 22. 67 GC Case T-120/99 – KIK [2001] ECR II-02235, paras. 24, 25 and the case-law cited.

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V. Term for an appeal 55

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The term for filing an appeal is two months from the delivery of the contested decision to the applicant, Art. 65 (5) CTMR. According to Art. 102 (2) of the Rules of Procedure which applies to all procedural terms, this deadline is extended on account of distance by a single non-extendible period of 10 days. The provisions for calculating deadlines are contained in Art. 101, 102 of the Rules of Procedure. Deadlines comprise Saturdays, Sundays and official holidays68. Where the end of the appeal term falls on a Saturday, Sunday or an official holiday at the seat of the court in Luxembourg, the deadline is extended until the end of the next working day69. The relevant official holidays are published by the Court of Justice in the Official Journal of the European Union70. The decisions of the Boards of Appeal are deemed to be delivered on the date of their transmission to the recipient according to Rule 68 of the CTMRIR in connection with Rule 70 (2) of the CTMRIR. Where delivery is effected via registered mail, Rule 62 (3) CTMRIR provides that the delivery is considered to have taken place 10 days after posting. A transmission of the appeal to the GC via fax or email in advance complies with the time limit according to Art 43 (6) of the Rules of Procedure as long as the original application reaches the court’s registry within 10 days thereafter. If the original does not reach the registry within this term, only the date on which the original has been lodged at the registry is taken into account for determining whether the deadline of Art. 65 (5) CTMR has been met71. The original must furthermore be identical with the advance fax- or electronic copy. In case of divergences between the advance fax- or email transmission and the original, inter alia differences in the signature, again only the date on which the original was received by the registry will be taken into account. If the original reaches the Registry after the expiry of the appeal term, the appeal will not be admissible72. The appeal term is a matter of public policy. According to settled case-law it serves to guarantee legal certainty and to avoid any discrimination or arbitrary treatment in the administration of justice73. As a consequence, except where there are extraordinary circumstances, no exceptions can be made from the appeal term74 and a failure to submit the original application to the court in time leads to the inadmissibility of an application. An exception from the strict application of the appeal deadline provided by law is contained in the rules on legal aid. Provided the request for legal aid has been filed before the lodging of an appeal, an application for legal aid suspends the appeal 68

Art. 101 (1d) Rules of Procedure. Art. 101 (2) Rules of Procedure; GC Case T-241/11 – Cititravel DMC/citibank, not published in the ECR, paras 15, 16. 70 Art. 101 (2) of the Rules of Procedure. 71 Practice directions to the parties before the GC Nos. 6, 7; GC Case T-422/12 – The Future has Zero Emissions, para. 14; GC Case T-63/30 – Yvonne v Ivonne, para. 16; GC Case T-15/03 -Blue/Bilbao Blue, not published in the ECR, para. 12. 72 GC Case T-360/10 – Zapper-Click, not yet published in the ECR, paras 15–17. 73 E. g. GC Case T-422/12 -The future has Zero emissions, not yet published in the ECR, para. 9; GC Case T-63/03 – Yvonne/Ivonne, para. 14; GC Case T-307/11 – ZENTRILOR v XENTRIOR, not published in the ECR, para. 9; CJ Case C-290/10 P – CHAFF CUTTERS DESIGN [2010] ECR I-00109, para. 13. 74 See e. g. GC Case T-98/10 P – CHAFF CUTTERS DESIGN, not published in the ECR, para. 9; CJ Case C-325/03 P, BLUE v BILBAO BLUE, [2005] ECR I-00403, para. 16. 69

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deadline until the applicant is notified of the GC’s decision or until a lawyer has been designated to represent the applicant75. If the Appeal has not been submitted to the GC within the appeal deadline or the 62 original reached the registry too late, restitutio in integrum can be requested in cases of force majeure or unforeseeable circumstances as prescribed by Art. 45 (2) and 53 (1) of the Statutes. Furthermore, the Court has developed the institute of ‘excusable mistake’76. Pursuant to case-law of the European jurisprudence, both ‘force majeure’ and ‘unforeseeable circumstances’ as well as ‘excusable mistake’ are an exception to the strict adherence to appeal terms and have to be construed narrowly. They comprise an objective and a subjective element. The objective component provides that there must have been unusual circumstances present, which lie outside of the sphere of the party who missed the appeal deadline. The subjective component is related to that party’s duty to prepare itself against the consequences of unusual circumstances by taking, without unduly exerting himself, suitable measures77. A restitution is thus not possible if a normally diligent and prudent person would, from an objective point of view, have been able to avoid missing the deadline78. The subjective component in particular requires parties to carefully supervise the course of the appeal procedure, and to apply the necessary care and diligence with regard to deadlines, in particular to post original briefs without delay after an advance fax or email transmission79. A malfunctioning of the party’s internal organization or the organization of its lawyers – e. g. that an employee did not sufficiently stamp the letter containing the original application, can consequently not justify a restitution80.

VI. The application The application is subject to a number of formal requirements which are laid down 63 in Art. 21 of the Statute and in Artt. 43, 44 and 132 of the Rules of Procedure. The Practice Directions to the Parties before the GC also contain a number of formal aspects to be observed by the applicant and the other parties. Non-compliance with these requirements can lead to the application being rejected as manifestly inadmissible or the Court not serving the application until the deficiencies have been put in order.

1. The forms of order sought According to Art. 21 of the Statute and Art. 44 (1)(d) of the Rules of Procedure the 64 application must state the forms of order sought by the applicant. The practice directions request that they are placed either at the beginning or the end of the application. The forms of order sought by the applicant must be sufficiently clear and precise to 65 enable the defendant to prepare its defence and to allow the Court to render a judgment without the need to seek further information or consult additional documents. They 75

Art. 96 (4) Rules of Procedure. GC Case T-358/07 – Publicare, not published in the ECR, para. 16. 77 CJ Case C-325/03 P BLUE v BILBAO BLUE, [2005] ECR I-00403, para. 25 and case law cited; GC Case T-322/03 WEISSE SEITEN [2006] ECR II-00835, paras 17, 21; GC Case T-358/07 – Publicare, not published in the ECR, paras 14 et seq.; GC Case T-422/12 – The Future has Zero Emissions, not published in the ECR, para. 15. 78 GC Case Publicare, fn. 74, at para. 15. 79 GC Case The Future has Zero Emissions, supra fn. 75, para. 16; GC Case WEISSE SEITEN, fn. 75, at para. 19, 20; CJ Case C-426/10 P – Bell & Ross v OHIM [2011] ECR I-08849, para. 47. 80 GC Case Publicare, fn. 74, at para. 16, 17. 76

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must furthermore be accompanied by facts and pleas in law which allow the further parties and the Court to examine their soundness81. 66 The content of the forms of order is determined by Art. 65 (3) and Art. 65 (6) CTMR. Art. 65 (3) CTMR provides that the Court has the power to annul or alter the decisions of the Boards of Appeal. Furthermore, according to Art. 65 (6) CTMR, the OHIM is obliged to take the necessary measures to comply with the judgments of the Community courts. From this settled case-law deduces that the GC does not have the authority to issue directions to OHIM82. The forms of order sought in an appeal must therefore request the Court to annul a decision of the Boards of Appeal in whole or in part83 or to alter that decision. A party can, however, not ask the Court to reject an opposition or a trade mark application, since such claims would amount, ultimately, to seeking the Court to give an order to OHIM. 67 Older case-law of the GC has furthermore in a number of cases rejected as inadmissible claims to annul a decision of the Boards of Appeal and the preceding decision cumulatively. The Court argued that the wording of Art. 63 (1) CTMR was clear on the fact that actions may be brought before the Court only against decisions of the Boards of Appeal. It concluded that it is only pleas directed exclusively against the decision of the Board of Appeal which are admissible in such an action84. This position has, however, never been followed by the GC unanimously and, especially in recent decisions, not been upheld. In this regard, the Court has pointed out the fact that Art. 65 (3) CTMR grants it the jurisdiction to annul or to alter the decisions of the Boards of Appeal. The Boards of Appeal in turn had the power to annul the decision of opposition/cancellation divisions and the examiners, if they consider the appeal well founded. Consequently, the request that the Court adopts a decision which the Boards of Appeal should have taken, is within the scope of the jurisdiction conferred to the Court by Art. 65 (3) CTMR85. 68 In practice, it will not make a difference to the applicant whose’ action is upheld by the court if the Court annuls or alters only the decision of the Board of Appeal or if it also annuls the preceding office decision. According to settled case-law, a judgment annulling a decision of the Boards of Appeal, takes effect ex tunc. This means that the annulled decision will be retroactively removed from the system86. The proceedings are reverted to the state in which they were before the contested decision was taken. The OHIM will, following the annulment of a decision by the Court, be required to take the necessary actions to comply with the Court’s ruling according to Art. 65 (6) CTMR. Since there exists a continuity in terms of their functions between the Board of Appeal and the examiner87, the annulment of the first office decision will, if necessary, inevitably be part of the measures to be taken by OHIM if the applicant succeeds88. It is therefore not necessary to specifically request that the initial office decision is annulled. 81 GC Case T-43/05 BROTHERS by CAMPER [2006] ECR II-00095, para. 19 and the case-law cited; GC Case T-407/08 METROMEET [2010] ECR II-02781, para. 16. 82 See e. g. GC Case T-247/10 deutschemedi.de [2011] ECR II-00354 para. 13 and the case-law cited; GC Case T-423/04 – BK Rods [2005] II-04035, at para. 15; GC Case T-419/07 – OKATECH [2009] ECR II2477 at para. 19 and case-law cited. 83 GC Case T-15/05 Form of a Sausage [2006] ECR II-01511, para. 22. 84 See e. g. Case T-303/03 Salvita [2005] ECR II-1917, para. 59; GC Case T-6/05 FIRST DEFENSE AEROSOL PEPPER PROJECTOR [2006] ECR II-02671, para. 21. 85 E. g. GC Case T-383/12 Sun Park Holidays, not yet published in the ECR, paras 18, 19; GC Case T334/01 – HIPPOVITON, [2004] ECR II-2787, para. 19. 86 GC Case T-262/09 FIRST DEFENSE AEROSOL PEPPER PROJECTOR [2011] ECR II-01629, para. 39 et seq.; GC Case T-402/07 ARCOL/KAPOL [2009] II-00753, para. 21. 87 See e. g. GC Case T-308/01 KLEENCARE v CARCLIN [2003] ECR II-03253, para. 25. 88 GC Case T-106/00 STREAMSERVE [2002] ECR II-723, para. 17; GC Case T-147/03 QUANTUM [2006] ECR II-11, para. 113; GC Case T-407/08 METROMEET [2010] ECR II-02781, para. 49.

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New claims or amendments to the forms of order sought by a party during the 69 course of the proceedings are, if they are not contained either in the application or the responses, precluded – with the exception of cost requests (see mn. 142 below). The Court considers new claims and amendments as an inadmissible change of the subject matter at issue, even if they are brought forward as an alternative to the main claim89.

2. The facts and the pleas in law Art. 21 of the Statute and Art. 44 (1)(c) of the Rules of Procedure require that the application contains a short summary of the facts of the proceedings and the pleas in law. This requirement is a manifestation of the concept of legal certainty and an equal administration of justice. The applicant must therefore, at least in summary, present the main facts and legal background of his case in the application. The statement must be intelligible and comprehensible in such a way that it allows the defendant to prepare his defence and the court to decide on the case based solely on the application, without further information and without recurring to other documents, even if such documents should be annexed to the application90. Use of and reliance on supporting documents and evidence is nevertheless possible as long as the party does not content itself with a general reference to annexes and other documents. Such documents can, according to settled case-law, not replace the applicant’s duty to provide all essential facts of the case in the application91. The main information and facts to be proven by such documents and evidence, even if they have already been submitted before the Board of Appeal, must be contained in the application and be capable of being connected clearly to the pleas in law. An application which does not fulfil these requirements will be rejected as manifestly inadmissible92. It is, however, not harmful to the application if the particular rule of law on which the applicant bases the appeal is not explicitly named in the application, as long as the other parties and the Court can identify the relevant rules of law without difficulty93. The same applies if the applicant repeats, in whole or in part the arguments already put forward before OHIM94. Moreover, pleas and arguments which have already been addressed in the application may later be extended or broadened if the new arguments are closely related to the pleas and arguments in the application95. 89 See for an alternative claim brought at the oral hearing CJ Case C-16/06 P MOBILIX v OBELIX [2008] ECR I-10053, para. 28, 29; GC Case T-24/00 VITALITE [2001] ECR II-449, para. 12. 90 Settled case-law, see inter alia GC Case T-212/10 ID SOLUTIONS [2010] ECR II-00143, para. 5 and case-law cited; GC Case T-123/04CARGO PARTNER [2005] ECR II-03979, paras 26, 27; GC Case T-303/ 08 Golden Elephant Brand [2010] ECR II-05659, paras 37, 38; GC Case T-279/10 MEN’Z v WENZ [2011] ECR II-00283, para. 16; GC Case T-484/09 POWERBALL [2011] ECR II-00409, paras 18, 19; GC Case T262/09 FIRST DEFENSE AEROSOL PEPPER PROJECTOR [2011] ECR II-01629, para. 99. 91 GC Case T-270/02 bestpartner [2004] II-02837, para. 16 and case-law cited; GC Case T-115/02 [2004] ECR II-02907 a/a, para. 11; GC Case T-97/05 MARCOROSSI, not published in the ECR, para. 36; GC Case T320/10 Castel, not yet published in the ECR, para. 34; 92 Settled case-law, see e. g. GC Case T-316/03 MunichFinancia v Services [2005] ECR II-01951, para. 23 and case-law cited; GC Case T-212/10 IDENTIFICATION SOLUTIONS [2010] ECR II-00144, para. 4 et seq.; GC Case T-262/09 FIRST DEFENSE AEROSOL PEPPER PROJECTOR [2011] ECR II01629, at para. 99. 93 GC Case T-415/11 Nutriskin Protection Complex, not yet published in the ECR, para. 11 and the case-law cited; GC Case T-631/11 B BERG v Christian Berg, not yet published in the ECR, para. 15. 94 GC Case T-123/04 CARGO PARTNER [2005] ECR II-03979, para. 29. 95 CJ Case C-412/05 P TRIVASTAN v TRAVATAN [2007] ECR I-03569, para. 40 and the case-law cited; GC Case T-466/08, ECR [2011] ECR II-1831, para. 55 and case-law cited; GC Case T-214/10 DIVINUS, not yet published in the ECR, para. 69.

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3. Signature A handwritten signature of the agent or lawyer must be placed at the end of the application as well as the end of every other statement filed with the court as provided by Art. 43 (1) subparagraph 1 Rule of Procedure. It is, however, sufficient if one of several lawyers acting for a party signs a submission. A signature by proxy or a law firm signature does not fulfil the requirement of handwritten signature. Only in applications which are filed via eCuria, a handwritten signature is not required96. 76 If the original of the application does not bear a handwritten signature the application will be rejected as inadmissible after the end of the appeal deadline97. 75

4. Further formal requirements 77

78 79

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According to Art. 132 (1) of the Rules of Procedure the application shall state the name and address of all parties before the Board of Appeal. In addition, Art. 44 (1) requests that, where appropriate, the appeal should name the nature of any evidence offered in support and the date on which the contested decision was delivered to the applicant. The contested decision must be annexed to the appeal. For any evidence which is to be submitted together with the application the applicant must produce a schedule listing the annexes98. Furthermore, the applicant needs to indicate an address for service in Luxembourg. In addition or alternatively, the application may state that the lawyer or agent agrees that service is to be effected on him by telefax or other technical means of communication (email, e-curia)99. The lawyer representing a party must supply a certificate that he is authorized to practice before a court in a member state or an EEA member state100. Where a party is represented by more than one lawyer, a certificate must be lodged for each of them. It is, however, not necessary for a lawyer to lodge a new certificate in each new case. Under No. 24 of the Practice Directions, he may also refer to a certificate previously lodged at the court. Where the applicant is a legal person governed by private law, he shall also provide a recent document proving its existence in law. Art. 44 (5)(a) Rules of Procedure names inter alia the articles of incorporation or an excerpt from the companies register as proof of the existence in law. The applicant must also provide an authority for his lawyer as well as proof that the authority has been properly conferred upon the representative by someone authorized for the purpose101. Art. 43 (1) Subparagraph 2 Rules of Procedure provides that the application must be accompanied by five certified true copies for the Court as well as one copy for each further party. This means that, in an appeal brought against an ex parte case, the application must be accompanied by six certified true copies of the appeal. Where the appeal concerns an inter partes proceeding before the Board of Appeal, the applicant must supply seven certified true copies of the application, in case the other party before the Board of Appeal decides to join the proceedings as an intervener. 96

Cf. No. 11, 14 of the Practice Directions. CJ Case C-426/10 P Bell & Ross v OHIM [2011] ECR I-08849, at para. 42. 98 Art. 43 (4) Rules of Procedure. 99 Art. 44 (2) Rules of Procedure. 100 Art. 44 (3) Rules of Procedure. 101 Art. 44 (5)(b) Rules of Procedure. 97

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Furthermore, the Practice Directions to the Parties before the GC contain specific requirements for the presentation of the appeal and other procedural documents as well as the length of the pleadings. The application should not exceed 20 pages. In cases which involve complex factual or legal issues authority to exceed the maximum length can, however, be sought from the Court (points 15, 16). According to point No. 9 (a) the application should be explicitly titled as application. The names of all parties including the other party before the Board of Appeal should appear on the first page. The application must contain numbered paragraphs. In addition, the pages must be numbered consecutively. Annexes to the application must also be paginated, either consecutively with the application or separately (points 12 (d) in connection with 59). The Practice Directions furthermore provide that all submissions to the Court must be capable of being processed electronically. This means that briefs should be submitted in A4 format and contain text only on one side of the page. The application and copies should not be bound, stapled or otherwise connected together in a way that would prohibit their easily being disassembled. Special provisions for applications lodged via eCuria, can be found in No. 14 of the Practice Directions.

83

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5. Consequences of non-compliance with formal requirements If an application does not fulfil the formal requirements under the Statute, the Rules 89 of Procedure and/or the Practice Directions, it depends on the nature of the requirement concerned whether the application will be dismissed outright as manifestly inadmissible or whether the deficiency can be remedied by the applicant. The non-observance of essential procedural requirements which serve legal certainty 90 and/or the principle of equal treatment will in principle lead to the rejection of an application as inadmissible. These include in particular conditions set by the Statute as well as the Rules of Procedure. If these requirements are not met, and the Rules of Procedure do not explicitly allow a rectification, the defects can generally not be remedied. In particular hierarchically lower rules of law like the Practice Directions cannot provide a right of the applicant to rectify flaws of essential procedural requirements102. In practice, the Court does, however, regularly also allow the regularization of some of these requirements, if it deems the concrete deficit remediable, inter alia the positioning of the handwritten signature of the representative103. The Rules of Procedure contain a provision on regularization in Art. 44 (6). This rule 91 explicitly permits the regularization of the requirements in Art. 44 (3), (4), (5) Rules of Procedure, e. g. if the authority for the applicant’s lawyer is missing or not in order. Under Art. 44 (6), as long as the formal defect has not been regularized, the application will preliminarily not be served on OHIM and the other party before the Board of Appeal. The Registrar shall set the applicant a reasonable term for remedying the defects. If the applicant does not comply within the time limit, the Registrar is given discretion to decide whether the defects will render the application inadmissible on formal grounds. 102 Argumentum in contrario from Art. 44 (6) Rules of Procedure, cf. also Case Bell & Ross, fn. 95 above, at paras 42 et seq.; CJ Case C-69/12 P ZENTYLOR v XENTRIOR, not yet published in the ECR, para. 24 and the case-law cited. 103 Point no. 63 (b) Practice Directions.

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Requirements which are only contained in the Practice directions, such as the requirement to number the paragraphs of the application, are also capable of being rectified within a time limit set by the Registrar104.

VII. Representation 93

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According to Art. 53 (1), Art. 19 of the Statute, representation is mandatory for all parties before the GC. Parties which are neither member states nor institutions of the EU must be represented by a lawyer who is authorized to practice before a court of a Member State or another State of the European Economic Area105. The two conditions – status as a lawyer and authorization to practice before a court – are cumulative106. Art. 19 (7) of the Statute makes an exception for university professors who are nationals of a member state and whose’ national law accords them a right of audience. They may also act as a representative before the GC. Any other representatives, even if they have the right to appear before national courts – such as patent and trade marks attorneys – are not ‘representatives’ in terms of Art. 19 of the Statute. They may not represent parties before the GC107. A party can furthermore not represent itself before the Court even if it, or in the case of legal persons, one of its directors or employees, are themselves accredited lawyers authorized to appear before a court of law. From the use of the word ‘represented’ in Art. 19 (3) of the Statute, the Court deduces that a representative in terms of Art. 19 (3) and (4) can only be a ‘third person’ which is completely independent of the applicant or intervener108. As far as the Court bases its argumentation on the use of the term ‘represented’ in Art. 19 (3) of the Statute this is not convincing. The Art. 19 uses this term consistently, also for the representation of the Member States and Institutions of the Union, who clearly can be represented by an – internal – agent. However, according to settled caselaw the requirement of employing a third party as a representative is also based on the conception of the lawyer’s role as collaborating in the administration of justice and as ‘being required to provide, in full independence and in the overriding interests of justice, such legal assistance as his client needs’109, and insofar to a legitimate aim. The OHIM, which as an institution of the European Union is normally represented by an agent according to Art. 19 (1) of the Statute, does nevertheless also have the right to choose an external lawyer as representative110.

104

See Chapter D Practice Directions. Art. 19 (3) and (4) of the Statute. 106 GC Case T-453/05 REDEFINING COMMUNICATIONS [2006] ECR II-01877, paras. 11, 12. 107 Cf. GC Case T-14/04 VERAMONTE, [2004] ECR II-0000, para. 9; for German ‘Patentanwa ¨lte’ GC Case T-31/03 – ROCKBASS [2005] ECR II-01981, para. 11 and for British ‘Patent Attorneys’ GC Case T487/07 Factory Finish, information on ECR not available, para. 10. 108 CJ Case C-174/96 P Lopes v Court of Justice [1996] ECR I-6401, para. 11; GC Case T-79/99 EU-Lex [1999] ECR II-03555, para. 27. 109 GC Case EU-Lex, fn. 106, at para. 22. 110 GC Case T-120/99 – KIK [2001] ECR II-02235. 105

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VIII. The language of the proceedings Following the receipt of an appeal the GC determines the language of the proceedings. 98 This language does not necessarily coincide with the language of the proceedings before the Board of Appeal. It is determined from among the official languages in accordance with Art. 131 of the Rules of Procedure in connection with Art. 35 (1) of these Rules. Art. 131 (1) Rules of Procedure allows the applicant to freely choose the language in which he drafts the appeal from among the currently 24 official languages listed in Art. 35 (1).

1. Ex parte cases In ex parte cases, i. e. if the applicant was the only party before the Board of Appeal, 99 the language in which the appeal is submitted always becomes the language of the case according to Art. 131 (2) Rules of Procedure.

2. Inter partes cases In inter partes cases the GC determines the language of the proceedings in accordance with the procedure laid down in in Art. 131 (2) Rules of Procedure. Before serving the appeal, the Registrar requests the parties before the Board of Appeal as well as OHIM to submit observations on the designation of the language of the case within a set period of time. The language of the contested Community trade mark (application) will be designated as language in the appeal proceedings if the parties have an agreement or if the other party before the Board of Appeal either agrees with the language chosen by the applicant or does not object to it within the time limit set by the Registrar. If the other party before the Board of Appeal objects to the language chosen by the applicant, the language in which the contested Community trade mark (application) was filed will become the language of the case before the GC111. The applicant may submit a reasoned request to nevertheless designate the language of the application. This request does, however, require exceptional circumstances. It would be necessary that the use of the language of the Community trade mark application would prevent it from adequately following the proceedings and preserving its interests and that exclusively the use of another language would resolve this situation112. The intervener furthermore has the right to request the determination of another language as the language of the case. For the reasons named in mn. 102 above, such a request will, however, rarely be granted. The need for a translation of procedural documents alone is regularly not considered as preventing the other party from adequately following the proceedings and defending its interests. According to Art. 103 Rules of Procedure any deadlines other than essential procedural terms can be extended, and Art. 136 (4) Rules of Procedure names translation costs as recoverable costs.

˜ OFTAL v KAN-OPHTAL, not yet published in the ECR, para. 24. See, also GC Case T-346/09 BAN One possible scenario could be that a CTM application was filed in language that is not widely known, such as Finnish, and the mark subsequently transferred to a new owner in another country who then brings an appeal before the GC. 111 112

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3. Further use of languages in the proceedings 104

Once the relevant language has been determined, it is used throughout the written and oral proceedings. Art. 131 (3) and (4) Rules of Procedure nevertheless permits the parties and interveners to use another language as long as they provide a certified translation of any pleading into the language of the proceedings. The Registrar will set the parties a reasonable time limit for lodging translations. Under these circumstances, the applicant may continue to use the language of the application and the other parties can choose a language from among those listed in Art. 35 (1) Rules of Procedure. If a party wants to plead in another language at the oral hearing it must, however, inform the Registrar within the period prescribed by Art. 135 a Rules of Procedure. In those circumstances, interpretation into and from the language of the case during the hearing will be ensured by the interpretation service of the Court.

IX. The proceedings before the Court 105

The appeal before the GC consists of two parts according to Art. 20 (1) of the Statute: the written and oral proceedings.

1. Written procedure Art. 20 (3) of the Statute specifies the written procedure. It begins with the filing of the appeal and consists of serving the application onto the parties before the Board of Appeal and OHIM, as well as of communicating any replies and rejoinders or applications, statements of case, defences and observations to the parties. 107 After the language of the case has been determined (see mn. 98 et seq.), the application is served upon the other parties in accordance with Art. 133 (2) second subparagraph of the Rules of Procedure. If the language of the proceedings is not the language of the application, the Registrar will first arrange for a translation of the application into the language of the case as prescribed by Art. 131 (4) Rules of Procedure and then serve the translations onto the parties. Annexes to the application may be taken into account also where they are not in the language of the proceedings. This applies notably to documents to be provided under Art. 44 (3), (5) Rules of Procedure which have to be assessed by the Court ex officio113. 108 The Office and the other party before the Board of Appeal have two months from the date of service to respond to the application114. Under Art. 102 (2) Rules of Procedure these deadlines are also extended on account of distance by a period of 10 days. The replies are subject to the same formal requirements as the application. For details as well as the regularization of deficits reference is made to the margins No. 63 et seq. In case a party fails to observe a time limit set by law or by the GC, it may apply for restitution in integrum (see for details mn. 62). 109 After the service of the responses, Art. 135 (2) Rules of Procedure allows the parties to apply for leave to lodge rejoinders within two weeks. The application must provide the 106

113 This follows in an argumentum in contrario from Art. 131 Rules of Procedure – contrary to Art. 35 (5) of these Rules the special language regime for intellectual property matters in Art. 131 does not request a translation of all supporting documents into the language of the proceedings; see also CJ Case ˜ OFTAL v KAN-OPHTAL, not yet published in the ECR, at paras 30 -33, 35. BAN 114 Art. 135 (1) Rules of Procedure.

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reasons why a party considers a rejoinder necessary to defend its interests such as the handing down of new case-law relevant to the matter at hand or inconsistencies in another party’s pleadings. In practice, the Court will, however, rarely allow further observations. Under Art. 135 (3) Rules of Procedure the parties, do, however, always have the right 110 to submit responses to forms of order sought or pleas in law brought by an intervener for the first time in his response to the application, without first having to apply for leave to reply to such new forms of order or pleas in law. The term for submitting replies to new forms of order or pleas in law raised by an intervener is two months and can be extended by the Court upon reasoned application. Following the service of responses and possible rejoinders upon the parties and 111 interveners, the Court will close the written proceedings.

2. Oral proceeding In principle, the oral phase of the proceedings will follow the written part of the proceedings. The oral proceeding consists of the hearing of all interested parties, such as lawyers, agents, advisers and, if any, of witnesses and experts115. Since an amendment of the Rules of Procedure in 2008, aimed at shortening the duration of appeal procedures, Art. 135 a provides that the Court can, after hearing the parties and the Advocate General, decide to rule on the appeal without an oral procedure, unless one of the parties submits a reasoned application for an oral hearing within one month after the Court closed the written proceedings. In practice, the court almost always makes use of Art. 135 a of the Rules of Procedure and oral hearings have become the exception even where a party submitted a reasoned request for a hearing. If an oral hearing takes place, it serves mainly three purposes – to summarize the parties’ pleadings in law, to clarify arguments put forward during the written procedure and to submit new arguments based on events which took place after the end of the written procedure and to answer questions of the Court116. To prepare for the hearing, the parties will receive a written Report for the Hearing, drawn up by the Judge Rapporteur117. This report is also made available to the public at the day of the hearing118. At the hearing, the Court will accept documents only in exceptional circumstances and after first hearing the parties119. At the end of the hearing the oral procedure will be closed120. According to Art. 62 Rules of Procedure the GC may order the reopening of the oral procedure. A party who can show that it was not properly summoned, and as a consequence was not present at the initial hearing may request a reopening of the oral procedure121.

115

Art. 20 (4) of the Statute. Cf. Point No. 115 of the Practice Directions. 117 Points No. 129, 130 of the Practice Directions. 118 Point No. 132 of the Practice Directions. 119 Point No. 101 of the Practice Directions. 120 Art. 60 Rules of Procedure GC; if an Advocate General has been assigned to the case the oral procedure will only be closed after delivery of his opinion, Art. 61 Rules of Procedure. 121 This follows from GC Case T-132/12 LAMBRETTA II, not yet published in the ECR, mn. 10–12 where the intervener missed an oral hearing; the GC held that the intervener’s request for a new oral hearing was unfounded since the intervener’s lawyer had been served with the summons via fax and the intervener could not provide any facts and evidence that called the proper receipt of the summons by his representative into question; consequently, where a party can show that it was not properly summoned the GC should allow a request to reopen the oral procedure. 116

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3. Joined cases Where two or several cases before the GC concern the same subject-matter they may be joined under Art. 50 Rules of Procedure for the written and/or oral procedure and/or the final judgment by decision of the President. The cases can at a later stage also be disjoined once again. 117 If the CJ and the GC are at the same time concerned with cases in which either (a) the same relief is sought, (b) the same issue of representation is raised or (c) the validity of the same act is called into question, either of the courts may, after hearing the parties, decide to stay the proceedings until the other has decided on the case pending before it122. The Article 77 Rules of Procedure also lists a number of further instances in which the GC can decide to stay the proceedings before it, inter alia in cases of a joint request by the parties. 116

4. Interim measures In cases of urgency, parties may apply to the GC for an interim measure. The request is only possible within the framework of a pending appeal and the requested interim measure must correspond to the matter in dispute in the main appeal123. 119 The party applying for an interim measure is obliged to show cumulatively that it would suffer significant and irreparable harm if the interim measure, such as a stay of enforcement, would not be granted (’urgency’) as well as reasonable grounds for its claim124. The further requirements for interim measures are laid down in Artt. 104–110 Rules of Procedure. The element of ‘urgency’ must be substantiated by the party requesting the measure. A merely monetary disadvantage does not fulfil the requirement since monetary disadvantages can be compensated by a compensatory payment125. 118

X. The decision of the GC 1. Judgment In its decision on the merits of a case, the GC will in accordance with Art. 65 (3) CTMR either annul or alter the contested decision or reject the appeal. The judgment will be delivered in open court126. 121 a) Rejection of appeal. An appeal which is admissible, but not well-founded, will be rejected127. This is the case where the contested decision of the Board of Appeal does not contain an error in law or if it contains an error but this error does not influence the operative part of the contested decision128. 122 b) Annulment of the decision. If the appeal is admissible and well-founded, the GC will, as a rule, annul the contested Board of Appeal decision129 if the case had already reached a stage where it was ready for a decision during the proceedings before the Board of Appeal. 120

122

Art. 77 (a) Rules of Procedure and Art. 54 (3) of the Statute. Cf. GC Case T-410/07 R JURADO [2008] ECR II-00025, paras. 26, 27. 124 Art. 104 (2) Rules of Procedure. 125 CJ Case 5/10 P – R CANNABIS [2010] ECR I-00064, para. 20. 126 Art. 82 Rules of Procedure. 127 See Art. 264 (1) TFEU. 128 GC Case T-71/13 – Annapurna, not yet published in the ECR, para. 24. 129 Art. 264 TEU. 123

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The appeal is well-founded if the contested decision is compromised by at least one 123 of the grounds of appeal enumerated in Art. 65 (2) CTMR. In view of the fact that the purpose of an action before the GC is to review the validity of decisions of the Board of Appeal in terms of Art. 65 CTMR, the scope of the Court’s review is, however, restricted to the factual and legal basis of the case at the time of the Board of Appeal’s decision130. This does nevertheless not mean that the Court is bound by a faulty assessment of facts in the contested decision, if the legality of this specific assessment is part of the matter in dispute before the Court131. On the other hand the Court can – except where permitted by the Statute and Rules of Procedure – neither base its decision on new evidence and facts that were not previously introduced before the Board of Appeal132 nor annul or alter the contested decision if an admissible ground of appeal exists on the date of the GC’s decision, but its conditions were only fulfilled after the Board of Appeal had already taken its decision133. c) Alteration of decision. Instead of merely annulling the contested Board of Appeal 124 decision, the Court also has the power to alter it. An alteration is, however, only possible if the case was ready for adjudication already before the Board of Appeal134. Otherwise, the GC would decide for the first time on the merits of a claim, before the Board of Appeal had a chance to assess this claim. Such an assessment lies outside of the jurisdiction of the Court as provided in Art. 65 (2) and (3) CTMR135. An alteration in the form of a substitution of grounds upon request of a party is, 125 according to the GC’s settled case-law, only possible if this party has a legal interest in a substitution of grounds. A legal interest in this sense has been assumed by the Court where the request for substitution of grounds provides a defence to one of the applicant’s pleas136. Even if none of the parties has requested an alteration of the contested decision, the 126 GC nevertheless also has – if one of the grounds given in the contested decision turns out to be incorrect – the capacity to examine ex officio whether the Board of Appeal’s decision as such was correct for another reason137. d) Reformatio in pejus. It should be noted that the CJ has in ‘Mobilix/Obelix’ 127 explicitly left unanswered the question whether the principle which prohibits a reformatio in pejus can be raised before the GC138. In a later decision139, the CJ has, however, discussed a plea concerning reformatio in pejus without questioning its admissibility. This indicates that the CJ after all does consider this principle applicable before the GC.

130 See e. g. GC Case T-57/03 HOOLIGAN [2005] ECR II-287, para. 17; GC Case T-320/03 LIVE RICHLY [2005] ECR II-3411, para. 16; GC Case T-366/05 BUDWEISER, not published in the ECR, para. 27; GC Case T-458/05 P – TEK [2007] II-04721, para. 20. 131 CJ Case C-16/06 P – Mobilix v Obelix [2008] ECR I-10053 at para. 48. 132 See also under II.4 supra. 133 CJ Case C-416/04 P VITAFRUIT v VITAFRUT [2006] ECR I-4237, para. 55: GC Case TEK, fn. 120, at para. 20; CJ Case 448/09 P Centrixx v sensixx [2010] I-00087, para. 44. 134 CG Case T-0085/07 Gabel v Garel [2008] ECR II-823, at para. 28; GC Case T-382/09 ERGO v CERGO, [2011] ECR II-00272, at paras 23, 24; GC Case T-419/07 OKATECH [2009] ECR II-2477, para. 20. 135 GC Case OKATECH, fn. 124, at para. 20. 136 CJ Case C-558/12 WesternGold v Wesergold, not yet published in the ECR, para. 55 and case-law cited. 137 GC Case T-99/01 Mystery v Mixery [2003] ECR II-00043, para. 36. 138 CJ Case C-16/06 P Mobilix v Obelix [2008] ECR I-10053 at para. 49. 139 Cj C-418/10 P STABILAT v stabilator [2011] ECR I-00043, para. 81.

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2. Formal requirements 128

The formal requirements to be met by the judgment as well as regarding the correction of mistakes are contained in Art. 81 et seq. of the Rules of Procedure.

3. Consequences of the judgment The judgment of the GC becomes binding if it is either not appealed to the CJ or if the CJ has dismissed an appeal against the GC’s decision140. The judgment takes effect ex tunc, i. e. if the appeal is successful the contested decision will be treated as not having come into existence in the first place141. 130 Following the validity of the judgment, OHIM will have to take the necessary measures to comply with the judgment according to Art. 65 (6) CTMR. After an annulment of the contested decision, the original appeal before the Board of Appeal becomes pending once more and OHIM will have to take a new decision on the matter.142 It will be bound in its implementation of the judgment by the legal assessment of the Court. This includes both the operative part of the judgment and – as far as it is necessary to give the judgment full effect – also its grounds143. The new decision may thus, as the case may be, simply set aside the original decision and implement the decision of the GC (e. g. cancel a contested mark or publish it for opposition purposes) or it can also entail a re-examination of the case. 129

4. Appeal manifestly inadmissible or unfounded An appeal which is manifestly inadmissible and/or manifestly unfounded can be rejected by the Court by reasoned order even before the serving of the application onto OHIM and intervener144. 132 The Court will issue an order based on manifest inadmissibility if the essential formal requirements have – where appropriate after setting a term for rectifying deficiencies – not been fulfilled, e. g. if the appeal was lodged at the Court outside of the appeal term145. Since an order based on manifest inadmissibility is regularly issued before service of the appeal onto the other parties, the applicant will in these cases usually only have to bear its own costs. 133 The ground ‘manifest unfoundedness’ applies if it is obvious from the appeal and responses that the plea in law raised by the applicant is not substantiated146. 131

5. Discontinuance, no need to adjudicate 134

An applicant may discontinue the action at any time before the final decision of the GC, either according to Art. 99 Rules of Procedure by one-sidedly withdrawing the appeal in whole or in part or following an agreement with the other party under Art. 98 140

Art. 83 Rules of Procedure GC in connection with Art. 60 (2) and Art. 56 (1) of the Statute. See in this regard GC Case T-262/09 FIRST DEFENSE AEROSOL PEPPER PROJECTOR [2011] ECR II-01629, para. 39 et seq.; GC Case T-402/07 ARCOL v KAPOL [2009] II-00753, para. 21. 142 GC Case T-402/07 ARCOL v KAPOL [2009] ECR II-00753, mn. 23. 143 Case FIRST DEFENSE AEROSOL PEPPER PROJECTOR, fn. 136 above, at paras 41, 42. 144 Art. 111 Rules of Procedure. 145 See e. g. GC Case T-98/10 CENTROTHERM, not published in the ECR. 146 E. g. GC Case T-T-61/03 QUICK-GRIP [2004] ECR II-01587; GC Case T-282/07 LEFT POCKET [2009] ECR II-00044. 141

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Rules of Procedure. In these cases, the Court will order the case to be removed from the register. The decision of the Board of Appeal will become immediately binding. Applicants and interveners should therefore, if they conclude an amicable settlement which includes a restriction of the Community trade mark at issue and/or the withdrawal of an opposition, take care that the appeal is only withdrawn after these acts have been undertaken147. Otherwise, the effect of the agreed measures could be prevented by the validity of the contested Board of Appeal decision. The GC may, ex officio or upon application by one of the parties, discontinue the 135 proceedings if the action before it has become devoid of subject-matter (Artt. 113 and 114 (1) of the Rules of Procedure). In these cases, the applicant no longer has a legal interest in a decision from the GC and there is no need for the Court to adjudicate148. The subject matter of an action will fall away in particular if the subject trade marks cease to exist, e. g. if the Community trade mark application is withdrawn149 or has been finally rejected due to other proceedings (such as an opposition by a third party)150. Likewise, the subject matter of an action will cease to exist if the earlier right(s) upon which an opposition or cancellation request have been based have been finally revoked151 or lapsed during the proceedings before the Board of Appeal152. If, however, an earlier trade mark lapses only after the date of the contested Board of Appeal decision, the action will not be devoid of purpose and the Court will take a decision on the merits153. The withdrawal of the opposition or cancellation request against the Community 136 trade mark applied-for will also remove the applicant’s interest in a decision of the Court154. In this case, the action will be ended by an order of the Court, without a decision on the merits of the case. Where the Court orders that there is no need to adjudicate on an action, the initial 137 decision of OHIM, which is at the basis of the action, does not take effect. This is a consequence of Art. 58 (1) CTMR whereby appeals before OHIM have suspensory effects and Art. 64 (4) CTMR which provides that decisions of the Boards will only become effective if the appeal period has expired or, if an appeal to the CJ has been finally rejected155. It is therefore not necessary that the Court issues an order with regard to the contested Board of Appeal decision.

6. Judgment by default Under Art. 122 Rules of Procedure the applicant can apply for a judgment by default 138 in case the defendant does not lodge a response within the time limit set in Art. 135 (1) of these Rules. The Art. 134 (1) does, however, contain a special provision for trade mark matters. Thereby, even if the defendant OHIM does not submit a response to the 147

Also Pohlmann, Das Verfahrensrecht der Gemeinschaftsmarke, § 6, p. 233. See e. g. GC Case T-589/10 JUKEBOX, not yet published in the ECR, para. 34 and the case-law cited; CJ Case C-268/12 P ZYDUS v ZIMBUS, not yet published in the ECR, para. 31. 149 GC Case T-292/03 HOMETECH [2004] ECR II-01143, paras 2, 3. 150 GC Case T-124/06 metroRED, not published in the ECR, para. 5. 151 GC Case T-549/11 real,- BIO, not published in the ECR, para. 22; GC Case JUKEBOX, fn. 136, at para. 37. 152 See by analogy GC Case ZYDUS v ZIMBUS (fn. 145) at para. 33. 153 See GC Case ZYDUS v ZIMBUS, fn. 136, at para. 33; GC T-218/10 – SERVICEPOINT, not yet published in the ECR, para. 17. 154 GC Case T-10/01 SEDONIUM v PREDONIUM [2003] ECR II-02225, paras 15, 16. 155 See e. g. GC Case SEDONIUM v PREDONIUM, fn.147, at para. 17; GC Case T-549/11 – real,- BIO, not published in the ECR, para. 23; GC Case T-589/10 – JUKEBOX, not yet published in the ECR, para. 36. 148

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application or if its pleadings are inadmissible, a judgment by default can nevertheless not be requested as long as an intervener has submitted an admissible response156.

XI. Costs 139

The provisions on costs are contained in Chapter 6 of the Rules of Procedure and notably in Art. 87. This article determines that a decision on costs shall be contained in the final judgment or in the order which closes the proceedings.

1. Costs following a decision on the merits 140 141

142

143

144

145

146

There are no court fees for appeals before the GC and the CJ. Under the Community trade mark regime, the unsuccessful party or parties generally have to pay the costs of the successful party. For actions before the GC this is provided in Art. 87 (2) Rules of Procedure. A cost award requires that the winning party has requested cost reimbursement. A request for cost reimbursement can be made throughout the whole proceedings before the GC without being considered out of time, even if they are brought for the first time in an oral hearing157. If a party has not made a cost request by the end of the proceedings, it will bear its own costs. The applicant in principle has three possibilities with a view to cost requests: it can either request that only OHIM is ordered to bear the costs incurred by it or only the intervener or both OHIM and the intervener. Accordingly, if the applicant has requested that only OHIM or the intervener should bear the costs, the Court will, if the appeal is successful, order only OHIM158 or the intervener159 to pay the costs of the applicant. If the applicant has requested that both OHIM and the intervener shall bear the costs, the court can decide how the costs are to be shared among them according to Art. 87 (2) second subparagraph Rules of Procedure. Art. 136 (1) of the same Rules furthermore provides that the Court can decide that OHIM bears only its own costs. This provision is based in the fact that in cases concerning relative grounds of refusal, it is in particular the intervener who is affected by the Court’s decision160. Nevertheless, in ‘BASS/PASH’, the Court held that OHIM had contributed to the origination of the case by issuing the contested decision and that therefore, OHIM was to pay 1/3 of the plaintiff’s costs and the intervener 2/3161. Where each party succeeds in part or in exceptional circumstances, Art. 87 (3) of the Rules of Procedure gives the Court discretion to decide that each party bears its own costs. The Court regularly makes use of its discretion where it grants an action only in part. As regards ‘exceptional circumstances’ the Court considered such circumstances present in the case ‘MYSTERY/MIXERY’162. The court rejected the appeal. However, OHIM’s forms of order sought were considered inadmissible and the intervener had not applied for costs. The Court thus ordered each party to bear its own costs. The fact that 156

GC Case T-99/01 Mystery v Mixery [2003] ECR II-00043, at paras 14, 15. GC Joined Cases T-81/03, T-82/03 and T-103/03 VENADO [2006] ECR II-05409, at para. 116; GC Case T-423/04 BK Rods [2005] ECR II-04035, at para. 84 158 e. g. GC Case T-419/07 OKATECH [2009] ECR II-2477, para. 84 159 This can be deduced inter alia from GC Case T-334/01 HIPPOVITON [2004] ECR II-2787, para. 66 160 GC Case T-292/01 BASS/PASH [2003] ECR II-04335, para. 62 161 GC Case BASS/PASH, fn. 148 at para. 62 162 GC Case T-99/01 Mystery/Mixery [2003] ECR II-00043, para. 51 157

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OHIM endorses the applicant’s action does not constitute unusual circumstances in this sense. Therefore, if the applicant is successful and made an according request, OHIM is nevertheless to be ordered to pay the costs163. OHIM and the intervener will regularly request that the applicant shall bear their 147 costs. With respect to the recoverable costs, Art. 136 (2) Rules of Procedure contains a 148 special provision for Intellectual Property matters. It provides that the costs necessarily incurred by parties before the Board of Appeal as well as costs incurred for accurate and true translations of pleadings into the language of the proceedings are recoverable by the successful party. Insofar, the Court’s cost decision is read to include such costs and it is not necessary that the parties explicitly request cost reimbursement for costs of the appeal before OHIM or translations164. The costs incurred by the applicant in the opposition or cancellation action before OHIM are, however, not mentioned in Art. 136 (2) Rules of Procedure. It follows that they are not among the recoverable costs165. The Court does not fix the amount of costs in the judgment. The successful party 149 shall claim costs in the amount it considered necessary for the representation in the proceedings from the unsuccessful party. If the parties do not find an agreement on the amount of costs to be reimbursed they can apply to the Court for a decision (see below XI.3 Taxation of costs).

2. Costs following other end to proceedings Under the first subparagraph of Art. 87 (5) Rules of Procedure, a party who discontinues or withdraws from proceedings shall be ordered to pay the costs if they have been applied for in the observations of the other party on the discontinuance. The second sentence of this provision contains an exception for cases where the other party’s conduct merits that it, and not the party discontinuing the proceedings, should bear the costs upon application166. Should the appeal, however, be withdrawn before the application has been served upon the other parties, the applicant will only bear his own costs since the other parties have not yet incurred costs167. If the parties have made an agreement on the costs and inform the Court thereof, the cost decision will be in accordance with the agreement, Art. 87 (5) second subparagraph. Where a case does not proceed to judgment, for example due to a revocation of the earlier mark, the costs will be in the discretion of the GC according to Art. 87 (6) Rules of Procedure168. If the Community trade mark application at issue is withdrawn, the CTM applicant will regularly have to bear the costs.

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152 153

3. Taxation of costs If the parties do not reach an agreement on the recoverable costs, the successful 154 party can apply to the GC for an order taxing the costs pursuant to Art. 92 (1) Rules 163 GC Case T-504/09 VO ¨ LKL [2011] ECR II-08179, para. 124; GC Joined Cases T-81/03, T-82/03 and T-103/03 VENADO [2006] ECR II-05409, para. 116 164 GC Case T-476/08 BEST BUY [2009] ECR II-00240, paras 11, 12. 165 Settled case-law, see e. g. GC Case T-147/03 QUANTUM [2006] ECR II-11, para. 115; GC Case T-419/ 07 OKATECH [2009] ECR II-2477, para. 23; GC Case T-407/08 METROMEET [2010] ECR II-02781, para. 51; GC Case T-72/08 smartWings v EUROWING, [2010] ECR II-00196, paras 20–23 and case-law cited. 166 Art. 87 (5) was applied e. g. in GC Case T-12/14 YMCMB, information on ECR not available. 167 E. g. GC Case T-98/10 CHAFF CUTTERS DESIGN, not published in the ECR, para. 13. 168 See e. g. GC Case T-589/10 JUKEBOX, not yet published in the ECR, paras 40, 41.

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of Procedure. Before deciding, the Court will hear the other party. The Court order cannot be appealed. 155 According to Art. 91 (b) Rules of Procedure recoverable costs are the ‘expenses necessarily incurred by the parties for the purpose of the proceedings’. As examples, the provision names the remuneration of lawyers, advisors and agents and costs in connection with an oral hearing, namely travel and subsistence expenses. Furthermore, the CJ counts expenses for taxation of costs proceedings as recoverable expenses169. In its case-law the Court especially emphasizes that according to Art. 92 (1) cost reimbursement is restricted to costs that were incurred for the proceedings and which were necessary170. 156 In view of the fact that the European trade mark regime does not provide a schedule of legal fees for actions before the Court of Justice, the GC must make an autonomous assessment of the facts of the case, in particular the purpose and nature of the proceedings, their significance from the point of view of European Union law, the difficulties of the case and the amount of work generated by the proceedings171. The GC does not need to take into account any national provisions on lawyer remuneration or fee agreements between the successful party and its lawyers or advisers172.

XII. Legal aid The provisions on legal aid are contained in Art. 94 et seq. Rules of Procedure. According to Art. 94 (2), legal aid is available to any natural person who, due to its economic situation, is not able to pay the costs involved with an action before the GC. Since the provision mentions expressly only natural persons and there are no comparable rules for legal persons it follows that legal aid shall be available exclusively to natural persons. Companies, regardless of their economic situation are not eligible for legal aid173. 158 Legal aid covers, in whole or in part, the costs for legal assistance and representation by a lawyer before the Court pursuant to Art. 94 (1) second subparagraph of the Rules of Procedure. If the party is later unsuccessful before the Court it may, however, still be ordered to bear the costs of OHIM and/or the intervener. These costs are not covered by legal aid. 159 An application for legal aid does not necessarily need to be made before an action has been brought before the GC. Under Art. 95 (1) Rules of Procedure legal aid can also be requested after the commencement of the proceedings, and the party concerned does not need to employ a lawyer for the application. 160 The application for legal aid must according to Art. 95 (1) first subparagraph be accompanied by suitable documents which allow the Court to assess the applicant’s economic situation174. If the action is not yet pending before the GC the application must also contain a brief statement of the subject-matter, facts and pleas in law175. 157

169

CJ Case C-406/11 P-DEP Atlas Air v Atlas Transport, not yet published in the ECR, mn. 10. See e. g. GC Case T-214/04 DEP ROYAL COUNTY OF BERKSHIRE POLO CLUB, not published in the ECR, para. 13; GC Case T-270/06 DEP LEGO BRICK, not published in the ECR, para. 29; GC Case T298/10 DEP BIODANZA, not published in the ECR, para. 16. 171 GC Case BIODANZA, at para. 18; GC Case LEGO BRICK, fn. 162, at para. 29; GC Case T-446/07 DEP – Centrixx/sensixx, [2011] ECR I-00078, para. 13. 172 GC Case BIODANZA, at para. 17; GC Case Centrixx v sensixx, fn. 158, at para. 12. 173 See, to that effect GC Case T-316/07 easyHotel v EASYHOTEL [2009] ECR II-00043, paras 17, 26–29. 174 GC Case T-206/09 DALLAS DHU, not published in the ECR, para. 5. 175 Art. 95 (1) second subparagraph Rules of Procedure. 170

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C. Appeal to the Court of Justice I. Actionable decision According to Art. 56 (1) of the Statute final decisions of the GC or decisions of this 161 Court disposing of the substantive issues in part only or disposing of a procedural issue concerning a plea of lack of competence or inadmissibility can be appealed before the CJ176.

II. Parties 1. Applicants By virtue of Art. 56 (2) any party who has been unsuccessful before the GC, in 162 whole or in part, can bring an appeal before the CJ. Interveners at first instance other than member states and Institutions of the Union may, however, only appeal a decision of the GC if they are directly affected by it. This means that OHIM can bring an appeal before the CJ as appellant. The Office 163 has already made use of this option in a number of cases, inter alia in ‘DOUBLEMINT’177, ‘LIMONCHELO’178 or ‘Letter a’179. Member states as well as institutions of the EU also have the right to bring an appeal 164 before the CJ, even if they did not intervene in the proceedings at first instance180.

2. Other parties Contrary to the proceedings before the GC there is no respondent in an appeal 165 before the CJ. Rather, Art. 173 Rules of Procedure CJ states that any party to the relevant case before the GC having an interest in the appeal being allowed or dismissed may submit a response. Accordingly, the recital of the CJ’s judgments and orders lists the other parties to the proceedings before the GC with their role in the first instance proceedings as ‘applicant at first instance’, ‘defendant at first instance’ or ‘intervener at first instance’181.

3. Intervention A ‘classical’ intervention is also possible before the CJ in accordance with the general 166 procedural provisions in Art. 129 et seq. Rules of Procedure CJ, which is applicable to appeals via Art. 190 of these Rules. The intervention is ancillary to the main proceedings and is limited to supporting one of the main parties. It will mostly be the Member States who participate as interveners in proceedings before the CJ. In ‘DOUBLEMINT’ for example, Germany and the UK intervened on the side of the appellant OHIM182. 176

CJ Case C-59/09 P Hasbro [2009] ECR I-00126, para. 7. CJ Case C-191/01 P DOUBLEMINT [2003] ECR I-12447. 178 CJ Case C-334/05 P LIMONCHELO [2007] ECR I-04529. 179 CJ Case C-265/09 P Letter a [2010] ECR I-08265. 180 Art. 56 (3) of the Statute. 181 See recently e. g. Case C-422/12 CLOROX v CLORALEX, not yet published in the ECR. 182 CJ Case DOUBLEMINT, mentioned in fn.169 supra. 177

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Representative associations like INTA are, if they establish an interest to participate in a case, also admitted as interveners183.

III. Grounds of appeal 167

Pursuant to the second subparagraph of Art. 256 (1) TFEU and Art. 58 (1) of the Statute, the appeal is limited to points of law. The grounds of appeal are lack of competence of the GC, a breach of procedure which adversely affects the interests of the appellant as well as the infringement of Union law by the GC. An appeal directed exclusively against cost decisions of the GC is not possible according to Art. 58 (2) of the Statute.

1. Lack of competence 168

The ground of appeal based on lack of competence of the GC has next to no practical relevance. Reason is that that Art. 65 (1) and (2) CTMR precisely state the scope of the GC’s jurisdiction and that the GC is held to examine its competence on its own accord (Art. 111 Rules of Procedure GC).

2. Breach of a procedural rule 169

The procedural rules which the GC has to observe, and which can also be subject of an appeal before the CJ, include the Rules of Procedure GC184 and the general principles of procedural law, e. g. the principle of equal treatment (see also mn. 49). The breach of a procedural rule by the GC is only relevant if it has an adverse effect on the appellant185. Breaches of procedural law which do not influence the GC’s decision do not justify an annulment of a judgment or order.

3. Infringement of Union law 170

Infringement of Union law, in particular of the CTMR, is the most common ground of appeal. It also includes an infringement of common legal principles, inter alia the right to be heard. Even though Art. 58 (1) of the Statute explicitly only refers to a breach of Union law by the GC, national and transnational law can also be relevant under this ground of appeal. According to the CJ it has a jurisdiction to examine the findings of the GC with regard to national law to determine whether the wording of national provisions or of case-law and academic writing relating to them has been distorted or if the GC made manifest errors in the assessment of their content or their significance186.

4. Restriction to points of law According to the second subparagraph of Art. 256 (1) TFEU the appeal is restricted to points of law. 172 The Court construes this requirement strictly, to mean that the assessment of facts and evidence by the GC is in principle not a point of law in terms of Art. 58 (1) of the Statute 171

183

CJ Case C-445/13P VOSS OF NORWAY, information on ECR not available, paras. 7, 11. See e. g. for a claim of inadequate reasons: CJ Case C-263/09 P ELIO FIORUCCI [2011] ECR I05853, para. 63. 185 CJ Case C-655/11P SEVEN FOR ALL MANKIND v SEVEN not yet published in the ECR, para. 51. 186 See CJ Case ELIO FIORUCCI, mentioned in fn. 176, at para. 53. 184

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which, as such, is capable of being reviewed on appeal187. It is the standing jurisprudence of the CJ that as long as the facts and evidence have been obtained correctly and their clear meaning has not been distorted, the GC alone has the jurisdiction to determine and evaluate the facts and the evidence relevant to the case188. A claim of distortion of facts or evidence requires that the assessment carried out by 173 the GC is evidently incorrect. Evidently in this sense means that the distortion must be obvious from the contested decision alone and that it is not necessary to resort to new evidence to identify the error.189 An appellant who wants to plead distortion of facts must furthermore name the facts and evidence which were allegedly distorted and the underlying errors committed by the GC in its assessment190. These requirements are necessary to ensure that the appellant does not request the CJ to exchange the assessment of the GC with its own, which is not admissible.191 A point of law thus concerns the question whether legal provisions and principles of 174 Union trade mark law are applicable in the individual case as well as the legal construction of the criteria contained in these provisions and principles. The CJ has assumed as a question of law inter alia a failure to take into account the scope of Art. 8 (1)(b) CTMR by comparing two marks only in visual terms192, the failure to allow for the fact that the earlier mark is a word mark193, the question whether all relevant circumstances have been taken into account in the assessment of likelihood of confusion194, or the question whether the requirement in Art. 42 (2) and (3) CTMR to show genuine use is applicable to IR marks.195 Factual questions, which cannot be reviewed by the CJ, pertain to the determination 175 whether the facts of an individual case fulfil the criteria of a legal provision, e. g. whether the goods covered by opposing trade marks are similar. The actual similarity of two trade marks196 and the assessment of evidence are also factual questions. Also as a question of fact have been regarded: the assessment of the relevant circumstances of an individual case based on the facts197, inter alia the definition of the relevant public198, their

187 See, inter alia, CJ Case C-214/05 P SISSI ROSSI v MISS ROSSI [2006] ECR I-7057, para. 26; CJ Case C-412/05 P TRIVASTAN v TRAVATAN [2007] ECR I-03569, at para. 71 and CJ Case C-234/06 P BAINBRIDGE [2007] ECR I-0733338, para. 38. 188 E. g. CJ Case C-254/09 P CK Creaciones Kennya v CK [2010] ECR I-7989, para. 49; CJ Case C-353/09 P CENTER SHOCK v CENTER [2011] I-00012, para. 40; and CJ Case C-21/12 P RESTORE, not yet published in the ECR, para. 53 and the case-law cited; CJ Case C- 42/12 P Alpine Pro Sportswear v Alpine, not yet published in the ECR, para. 44; CJ Case C-412/05 P TRIVASTAN v TRAVATAN [2007] ECR I03569, at para. 71; CJ Case C-92/10 P Media-Saturn-Holding v OHIM [2011] ECR I-0000, para. 27; CJ Case C-214/05 P Sissi Rossi v Miss Rossi [2006] ECR I-7057, para. 26; CJ Case C-307/11 P Deichmann v OHIM, para. 58; CJ Case C-311/11 P WIR MACHEN DAS BESONDERE EINFACH [2012] ECR I-0000, para. 52. 189 E. g. CJ Case C-481/08 P Duovisc [2009] ECR I-0015, para. 19; CJ Case C-304/06 P EUROHYPO [2008] I-03297, para. 34 and the case law cited. 190 CJ Case C-552/09 P Timi Kinderjoghurt [2011] I-02063, para. 78 and the case-law cited; CJ Case ALPINE PRO SPORTSWEAR & EQUIPMENT, fn. 180 above, para. 22; CJ Case C-406/11 ATLAS v ATLASAIR, not yet published in the ECR, para. 42 et seq. 191 CJ Case C-234/06 P BAINBRIDGE [2007] ECR I-0733338, para. 38; CJ C-379/12 P H. EICH v SILVIAN HEACH, not yet published in the ECR, para. 74. 192 CJ Case C-334/05 P LIMONCHELO [2007] ECR I-04529, at para. 29. 193 CJ Case Timi Kinderjoghurt, see fn. 182, at para. 84. 194 CJ Case C-193/12 P nfon/fon, not yet published in the ECR, para. 52 and the case-law cited. 195 CJ Case C-445/12 P BASKAYA, not yet published in the ECR, para. 34. 196 CJ Case C-254/09 P CK Creaciones Kennya v CK [2010] ECR I-7989, mn. 50; CJ Case C-22/10 P CLINA v CLINAIR [2010] ECR I-135 mn. 43 et seq. 197 CJ Cases nfon/fon, supra fn. 186, at para. 52 and C-353/09 P – CENTER SHOCK v CENTER [2011] I-00012, para. 38. 198 E. g. CJ Case C-481/08 P Duovisc [2009] ECR I-0015 and the case-law cited.

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attentiveness, perception and attitude199, or the question whether facts are commonly known200, the assessment whether the applicant has proven the facts necessary to support its claim201 or the distinctive character of a mark202. 176 In cases where it considers the claims raised by an appellant to concern only factual issues, the CJ regularly also checks whether the claim of distortion of facts may apply, however, in the majority of the cases only to reject this possibility with the notice that the appellant did not claim a distortion of facts203.

IV. Term for an appeal The appeal term is two months from the notification of the decision appealed against, pursuant to Art. 56 (1) of the Statute. As in the proceedings before the GC, Art. 51 Rules of Procedure of the CJ provides for an extension of this period by a single period of 10 days on account of distance. 178 The rules for calculating time limits are laid down in Art. 49 Rules of Procedure CJ. They concur with the rules and methods of calculation applicable before the GC (see in this regard mn. 55 et seq.). 179 A pending application for legal aid will, as before the GC, suspend the appeal term until the appellant is notified of the decision on the request if the application was made before the lodging of the appeal204. 177

V. The application 1. The forms of order sought 180

The forms of order sought by the appeal must, according to Artt. 169 and 170 (1) Rules of Procedure CJ, either request that the decision of the GC is annulled or that the forms of order sought in first instance are upheld205. In particular, the appellant can neither substitute claims brought before the GC for new claims nor extend his requests beyond the original forms of order. The appellant’s claims can thus not change the subject-matter of the appeal.

2. The facts and pleas in law 181

The application must name at least one of the admissible pleas in law as laid down in Art. 58 (1) of the Statute together with a short summary of these pleas as well as the

199 CJ Case C-582/11 P SCOMBER MIX, not yet published in the ECR, para. 51; CJ Case C-21/12 P RESTORE, not yet published in the ECR, paras 71, 72; Case C-84/10 P KIDS VITS v VITS4KIDS [2010] I00131, para. 29. 200 CJ Case C-311/11 P WIR MACHEN DAS BESONDERE EINFACH, not yet published in the ECR, para. 57. 201 CJ Case C-192/03 P BSS [2004] ECR I-08993, para. 33. 202 CJ Case C-104/00 COMPANYLINE, [2002] ECR I-07561, para. 22. 203 See e. g. CJ Case C-131/06 P CRISTAL CASTELLBLANCH [2007] ECR I-00063 at para. 33. 204 Art. 186 (3) Rules of Procedure CJ. 205 See also Point No. 20 of the Practice Directions to Parties.

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legal arguments supporting the claim. Furthermore, the appellant must clearly indicate which parts of the contested decision should be annulled206. All of the aforementioned requirements must be presented coherently and clearly, allowing the Court and the other parties to understand the appellant’s case and to prepare responses if necessary. If the appeal does not satisfy these requirements it will be declared inadmissible207. An appeal does not comply with the obligations to state pleas in law and reasons if it simply repeats the arguments put forward before the GC without identifying any legal errors in the contested decision208, repeats or cites verbatim arguments based on a pleading of facts which the GC had explicitly rejected209 or if the appellant simply states that the decision of the GC is not convincing to him210. Such an appeal does not plead an error in law committed by the GC but in truth seeks the CJ to carry out a new assessment of the case before the GC, which does not fall within the jurisdiction of the CJ211. This does, however, not mean that the pleas in law and supporting arguments which were the subject of the appeal in first instance cannot be subject of the proceedings before the CJ. Otherwise, an appeal would, according to the CJ, be deprived of part of its purpose212. As long as the appellant contests the application of Union law or its interpretation by the GC – to show that the rejection of its pleas infringes Union law – the points of law which were at issue before the GC may be examined again on appeal213. Since the appeal cannot change the subject matter of the proceedings before the GC, the CJ’s review is, however, restricted to the scope of the case argued before the GC. The parties thus can neither present new pleas in law nor submit new evidence for the first time on appeal214. Moreover, all pleas in law which a party wants to assert should be contained in the application and the responses thereto. This applies both to main appeals and cross appeals. New pleas in law which are brought forward by a party for the first time in replies or rejoinders will be rejected as inadmissible in terms with Art. 127, 190 (1) Rules of Procedure CJ215.

206 Settled case-law, see e. g. Case C-234/06 P Bainbridge [2007] ECR I-0733338 at para. 44; CJ Case C406/11 ATLAS v ATLASAIR, not yet published in the ECR, para. 31; CJ Case C-222/11 P 5 HTP [2011] ECR I-00189, para. 24; point No. 20 of the Practice Directions. 207 E. g. CJ Case C-266/12 P Festschrift v FS not yet published in the ECR, para. 24. 208 CJ Case C-222/11 P 5 HTP [2011] ECR I-00189, at para. 24; GC Case T-479/09 KOMPRESSOR PLUS [2010] ECR II-00287, para. 49; CJ Case C-81/11 P RESVEROL v LESTEROL, not yet published in the ECR, para. 32. 209 CJ Case C-406/11 ATLAS v ATLASAIR, not yet published in the ECR, para. 32; CJ Case C-559/08 P Artoz v Atoz [2010] ECR I-00110, para. 41. 210 CJ Case C-87/11 P HALLUX, not yet published in the ECR, paras 48, 62. 211 CJ Case ATLAS v ATLASAIR, fn. 201, at para. 32; CJ Case C-316/11 P VITACHRON FEMALE v VITATHION [2011] ECR I-00132, paras 16, 17; CJ Case C-84/10 P KIDS VITS v VITS4KIDS [2010] I00131, para. 33. 212 See, inter alia, CJ Case C-25/05 P Storck v OHIM [2006] ECR I-5719, para. 48; and CJ Case C-16/ 06 P MOBILIX/OBELIX [2008] ECR I-10053, para. 110; GC Case T-434/10 ALPINE PRO SPORTSWEAR & EQUIPMENT [2011] ECR II-00388, para. 54. 213 CJ Case C-552/09 P Timi Kinderjoghurt [2011] I-02063, paras 73, 74; CJ Case C-488/06 P L & D v OHIM [2008] ECR I-5725, para. 43; Case C-532/10 Archer Mc Lean Mercury, [2011] I-00094. 214 CJ Case C-90/08 P CORPO LIVRE [2009] ECR I-00026, para. 26 and the case-law cited. 215 See also CJ Case C-144/06 P Henkel v OHIM (red and white tablet) [2007] ECR I-08109, para. 50.

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183

184

185

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3. Further formal requirements 187

The formal requirements to be observed by an application are laid down in Art. 168 of the Rules of Procedure CJ and Points No. 20, 21, 34 to 39 of the Practice Directions to Parties.

VI. Representation Representation is mandatory before the CJ. Art. 19 of the Statute and Art. 119 (1) Rules of Procedure CJ, which is applicable to appeals against decisions of the GC by reference in Art. 168 (2) of these Rules, provide that the parties may only be represented by their agents or lawyers. Both agents and lawyers have to provide the Court with an authority to act on behalf of their principals, Art. 119 (2) Rules of the Procedure CJ. 189 The third paragraph of Art. 119 of Procedure furthermore stipulates that the parties’ lawyers are obliged to deposit proof of their authorization to practice before a court of a Member State or of another State which is a party to the EEA Agreement at the Court’s Registry. 190 Under Art. 38 (5)(b) of the previous version of the Rules of Procedure, legal persons organized under private law also had to provide proof that the authority of its representative was issued by a person authorized for the purpose. According to the settled case-law of the CJ, this requirement did, however, not apply to appeals216. The new Art. 119 Rules of Procedure does no longer contain such a requirement or make a distinction between natural and legal persons at all. 188

VII. Cross appeal 191 192

193

194

195

The other parties to the action before the GC besides the appellant are granted the right to file a cross appeal by Art. 176 (1) Rules of Procedure CJ. The cross appeal is dependent in its existence on the main appeal. If the appellant discontinues the main appeal or the CJ rejects it due to manifest inadmissibility, the cross appeal will be deemed devoid of purpose under Art. 183 Rules of Procedure. The cross appeal must be lodged with the CJ within the same time limit as that prescribed for submitting a response to the appeal, consequently within two months of service of the appeal. It must, however, be brought in a separate document, Art. 176 (2) of the Rules of Procedure CJ. A cross appeal which is contained in the response to an appeal is inadmissible217. According to Art. 178 Rules of Procedure CJ, the cross appeal must request that the contested decision of the GC or an express or implied decision relating to the admissibility of the action before the GC are set aside in whole or in part. The arguments and pleas in law in support of the cross appeal cannot be the same as those submitted in response to the appeal218. Where it is unclear whether arguments of a party shall constitute a cross appeal the Court will examine this question taking into account the wording, aim and contest of 216

CJ Case C-222/11 P 5 HTP [2011] ECR I-00189, para. 19 and the case-law cited. CJ Case C-422/12P CLORALEX v CLOROX, not yet published in the ECR, para. 48 et seq; CJ Case ~ola [2009] ECR I-07371, para. 92. C-498/07 P La Espan 218 Art. 178 (3) Rules of Procedure CJ. 217

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the submission219. It should, however, be remembered that a cross appeal which is not submitted separately from the response will be rejected as inadmissible. Provisions on the form and content of the cross appeal are contained in Art. 177 196 Rules of Procedure CJ and Points 23, 34 to 39 of the Practice Directions to Parties.

VIII. Language of the case The proceedings before the CJ will always be conducted in the language of the 197 contested decision of the GC220. Use of this language is mandatory for all parties throughout the written and oral 198 proceedings according to Art. 38 (1) Rules of Procedure CJ, with the exception of member states or other states acting as interveners. Documents annexed to the application and the responses and cross-appeals which are not in the language of the appeal must be accompanied by translations.

IX. The procedure before the CJ The appeal before the CJ consists of a written part and an oral part, Art. 59 of the Statute. After the appeal has been served upon the other parties before the GC, these have a two months period to lodge responses and/or to file a cross appeal. In responses, the forms of order sought are limited to request that the appeal shall be allowed or dismissed. If a cross appeal is filed the appellant and the other party before the GC have another – non-extendable – two months deadline to submit responses. The responses should be restricted to the pleas raised in the cross appeal. Replies and rejoinders are possible both in the main appeal and cross appeal upon request within the framework of Artt. 175 and 180 Rules of Procedure CJ. After the closing of the written procedure, the parties can request an oral hearing by reasoned application. The request should be submitted within three weeks of service of the notice that the written part of the proceedings has been closed, Art. 76 (1) Rules of Procedure. The Court may, however, dispense with the oral part of the proceedings in accordance with the second sentence of Art. 59 of the Statute and Art. 76 (2) Rules of Procedure CJ, unless one of the interested persons named in Art. 23 of the Statute who has not participated in the written part of the procedure requests a hearing221. Interested persons within the meaning of Art. 76 (3) are, in addition to the parties before the GC also the Member States and the Commission. From Art. 76 (3) it follows that a party who chooses not to participate in the written part of the proceedings before the CJ does not forfeit his right to participate in an oral hearing222. On the contrary, by submitting a hearing request this party can even secure that an oral hearing takes place, which the CJ may otherwise have dispensed with. ~ola, fn. 209, at para. 92. Case La Espan Art. 37 (2)(a) Rules of Procedure CJ. 221 Art. 76 (3) of these Rules of Procedure. 222 See, to this effect also Pohlmann, Das Verfahrensrecht der Gemeinschaftsmarke, second chapter, § 7 I at para. 6 and CJ Case C-412/05 P TRIVASTAN v TRAVATAN [2007] ECR I-03569. 219 220

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201

202 203

204

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On the other hand, Art. 83 vests the Court with the right to open or reopen the oral proceedings where it either needs further information in order to take a decision on the case or the decision on the case depends on an argument which the parties did not previously have a chance to discuss223. 207 If several cases pertain to the same subject-matter they can be joined on account of the connection between them according to Art. 54 Rules of Procedure CJ224. 206

X. The decision of the CJ 1. Appeal manifestly inadmissible or unfounded According to Art. 181 Rules of Procedure CJ, an appeal or cross-appeal which is obviously inadmissible or unfounded in whole or in part can be dismissed by reasoned order to the extent it is inadmissible or unfounded225. The same applies under Art. 182 if the appeal or cross appeal is manifestly well founded because the CJ has already decided on an identical question of law. 209 The CJ makes frequent use of Art. 181. In most of the decisions based on this provision, appeals are being rejected as being in part manifestly inadmissible and in part manifestly unfounded.226 A manifest inadmissibility is assumed in particular in cases in which the appellant contests the GC’s judgment on points of fact only227 or fails to comply with the obligations to state pleas in law and reasons by simply repeating the arguments brought before the GC.228 208

2. Discontinuance and appeals devoid of subject-matter The appellant can discontinue the proceedings by withdrawing his appeal, Art. 148 in connection with Art. 190 Rules of Procedure CJ. Following an amicable settlement, the parties may also jointly discontinue the appeal by informing the CJ of the abandonment of their claims. In these cases, the Court will remove the appeal from the register and take a decision as to costs, taking into account agreements between the parties in case of an amicable settlement. 211 It is settled case-law that the appellant’s interest in bringing the proceedings must be in existence up until and including the Court’s decision on the merits of the case. If the appeal becomes devoid of a subject matter during the course of the proceedings, there is no longer a need to adjudicate. In such cases the Court can end the appeal by reasoned order229. The CJ’s definition of this legal interest is the same as that applied by the GC, i. e. an interest is given as long as the appeal, if successful, will bring an advantage for the applicant230. The appellant will thus no longer have an interest in 210

223

Cf. CJ Case C-323/09 Interflora [2011] ECR I-08625 at para. 22 and the case-law cited. See e. g. CJ Order of 10 November 2010 to join cases C-344/10 P and C-345/10 P – matted black and white bottles [2011] I-10205. 225 CJ Case C-325/03 P BLUE v BILBAO BLUE [2005] ECR I-00403, para. 12. 226 See e. g. CJ Case C-342/09 P GALLECS v GALLO [2010] ECR I-00134; GC Case T-300/08 Golden Elephant Brand, not published in the ECR, fn. 15 above; CJ Case C-193/12 P nfon/fon, not yet published in the ECR; CJ Case C-21/12 P RESTORE, not yet published in the ECR. 227 See e. g. CJ Case C-481/08 P Duovisc [2009] ECR I-0015. 228 See e. g. CJ Case C-316/11 P VITACHRON FEMALE v VITATHION [2011] ECR I-00132. 229 Art. 190 Rules of Procedure CJ; CJ Case C-467/11 P TDI, not yet published in the ECR, paras 14, 15. 230 CJ Case C-552/09 P Timi Kinderjoghurt [2011] I-02063, para. 39 and the case-law cited; CJ Case C82/04 P TDI not published in the EC, para. 20. 224

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continuing the proceedings if he is the holder of the contested Community trade mark (application) and he withdraws his trade mark (application)231. Likewise, the withdrawal of the opposition against the Community trade mark applied-for will remove the appellant’s interest in a decision of the Court232. If the appellant was the opponent or cancellation applicant in the original proceedings 212 before OHIM he may, due to the different effects of a withdrawal or a declaration of invalidity, however retain an interest in a decision by the CJ even after the Community trade mark (application) contested by him has been withdrawn by the counterparty233.

3. Judgment The CJ’s judgment is delivered in open court234. The Court will either reject the appeal, if it is not well-founded, or uphold the appeal, if it is well-founded.235 In the latter case, the Court will also annul the contested judgment of the GC in accordance with the first paragraph of Art. 61 of the Statute and the Board of Appeal’s decision which was at the basis of the legal action. The appeal is well-founded if the GC’s decision is vitiated by an error of law and produces an adverse effect on the appellant. An appeal will be unsuccessful despite the fact that the GC committed an error in law, if the error did not have an effect on the operative part of the judgment, e. g. if the decision is nevertheless well founded due to other legal reasons236. The same applies if the error lies only in a ground which the GC included in its judgment purely for the sake of completeness237. Where the state of the proceedings so permits, the CJ will itself give a final judgment on a well-founded appeal.238 The judgment will be binding from the date of its delivery according to Art. 91 Rules of Procedure CJ. OHIM has to take the measures to comply with the judgment. In this it is bound by the legal assessment of the Court. If the state of the proceedings does not allow it to the CJ to give final judgment itself, it will refer the case back to the GC for judgment239 as foreseen by Art. 61 (1) of the Statute. Reasons for referring the case back are inter alia to allow the parties to discuss an issue contradictorily which the GC had previously determined ex officio240 or a need of the GC to make further determinations of fact241. In the majority of cases, the CJ will, however, give a final decision itself. In 2012, only two of 32 cases closed by the CJ in intellectual property matters were referred back to the GC242. 231 CJ Case C-301/05 P ROCKBASS 2007 ECR I-00137; CJ Case C-467/11 P TDI, not yet published in the ECR. 232 GC Case T-75/05 Ngenius/Genius, not published in the ECR. 233 CJ Case Timi Kinderjoghurt, fn. 230, at para. 39; CJ Case C-498/91 NEW BORN BABY [2004] ECR I-11349, para. 11. 234 Art. 88 Rules of Procedure CJ. 235 Art. 61 Rules of Procedure CJ. 236 CJ Case C-64/02 P Das Prinzip der Bequemlichkeit [2004] I-10031, para. 52 and the case-law cited 237 CJ Case C-257/06 P BUD v Bud, information on ECR not available, at paras 211–213. 238 See Art. 61 (1) Rules of Procedure CJ. 239 See inter alia Case DOUBLEMINT, fn. 125 above; CJ Case C-193/06 P QUICKY/QUICKIES [2007] I-00114; Case C-51/09 P Barbara Becker v Becker [2010] ECR I-05805. 240 CJ Case C-530/12 P Mano portafortuna, not yet published in the ECR, para. 64. 241 CJ Case C-317/10 UNIBANCO v UNICREDIT [2011] I-05471, para. 6; CJ Case C-257/06 P BUD v Bud, information on ECR not available, paras 219, 220. 242 See Annual Report of the CJ 2012, pp. 197, 198. http://curia.europa.eu/jcms/upload/docs/application/pdf/201304/192685_2012_6020_cdj_ra_2012_en_proof_01.pdf

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4. Consequences of the judgment Where the CJ has referred a case back to the GC, the case becomes pending before the GC once again243. The further proceedings before the GC are governed by Artt. 118 et seq. of the Rules of Procedure GC. Art. 61 (2) of the Statute prescribes that this Court will be bound by the legal assessment contained in the decision of the CJ. The binding effect does, however, only extend to the points in law which the CJ examined. For the rest, the GC is free in its further assessment of the case. 219 If the CJ has reserved the costs, the GC will have to take a decision on the costs in all of the proceedings in its new decision. 218

5. Correction of errors 220

The CJ can correct clerical mistakes or obvious inaccuracies in its judgment or orders at the request of the parties or of its own motion within two weeks after the delivery244.

XI. Costs 221

For costs, Art. 184 (1) Rules of Procedure CJ refers to the general provisions contained in Art. 137 et seq. whereby a decision on the costs shall be given in the final judgment or order ending a case.

1. Costs following a decision on the merits Under Art. 138 (1) and (2) Rules of Procedure the unsuccessful party or parties will be ordered to bear the costs if they have been applied for in the successful party’s pleadings245. The Court’s decision will comprise the costs before the GC and the Board of Appeal246. 223 The Art. 184 (2) and (4) Rules of Procedure CJ, do, however contain a caveat to this general rule: according to the second paragraph of this provision, the Court will take a decision on costs only in cases in which it gives a final judgment. Consequently, where the Court does not decide on the substance but refers the matter back to the GC, the costs will be reserved247. 224 Moreover, the fourth paragraph of Art. 184 determines that an intervener at first instance may only be ordered to bear the costs if he participated in the written or oral part of the proceedings before the CJ. Nevertheless, even if the intervener took part in the proceedings, the Court may still decide that he shall bear only his own costs. 222

243

Art. 117 Rules of Procedure CJ. Art. 164 Rules of Procedure CJ. 245 CJ Case C-552/09 PTi mi Kinderjoghurt [2011] I-02063; Case T-434/10 ALPINE PRO SPORTSWEAR & EQUIPMENT [2011] ECR II-00388, at para. 88. 246 See e. g. CJ Case C-329/02 P SAT.2 [2004] I-08317. 247 See e. g. CJ Case C-383/12 P HEAD OF A WOLF/WOLF JARDIN, para. 50, not yet published in the ECR; CJ Joined Cases C-337/12 P C-340/12 P SURFACE WITH BLACK DOTS, not yet published in the ECR, para. 69; CJ Case C-196/11 P F1 Live v Formula F1, not yet published in the ECR, para. 59. 244

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2. Costs following other end to proceedings If the case does not proceed to judgment, the costs are in the discretion of the CJ 225 according to Art. 142 Rules of Procedure CJ248. Generally, the costs will be imposed on the party who has set the cause for the case not proceedings to judgment, e. g. by withdrawing the Community trade mark at issue249. Where the appeal is withdrawn or discontinued, Art. 141 Rules of Procedure CJ applies. Under this provision the appellant, with the exception of the rules provided in Art. 141 (2) and (3), has to bear the other parties’ costs if they have applied to impose costs on the appellant.

3. Taxation of costs In case of disputes between the parties on the costs the Court will, upon application 226 of the successful party, and after hearing the other party and the Advocate General, decide on the costs by order, Art. 145 in connection with Art. 184 (1) Rules of Procedure CJ. For the procedure and the recoverable costs Art. 184 Rules of Procedure CJ refers to 227 the general rules on costs applicable to all actions before the CJ. The relevant provisions are contained in Artt. 144 et seq. These provisions and their construction by the CJ250 largely correspond to the taxation of costs before the GC (see mn. 152–154).

XII. Legal aid The parties can, if they are unable to bear the costs involved with an appeal, apply 228 for legal aid, Art. 185 Rules of Procedure CJ. Unlike Art. 94 (2) Rules of Procedure of the GC, Art. 185 does not contain a limitation to natural persons, so that legal aid seems available also to legal persons before the CJ. 248 See with regard to the previous Art. 69 (6) Rules of Procedure e. g. CJ Case C-467/11 P TDI, not yet published in the ECR, paras 14, 15. 249 E. g. CJ Case C-301/05 P ROCKBASS [2007] I-00137. 250 See e. g. CJ Case C-512/04 P-DEP VITAKRAFT [2007] ECR I-00139, paras 18, 19; CJ Case C-406/11 P-DEP Atlas Air v Atlas Transport, not yet published in the ECR, paras 8–10 and the case-law cited; CJ Case C-254/09 P-DEP CK Creaciones Kennya v CK, not yet published in the ECR, paras 20–22.

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TITLE VIII COMMUNITY COLLECTIVE MARKS Article 66 Community collective marks 1. A Community collective mark shall be a Community trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. Associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law, may apply for Community collective marks. 2. In derogation from Article 7 (1)(c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks within the meaning of paragraph 1. A collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name. 3. The provisions of this Regulation shall apply to Community collective marks, unless Articles 67 to 74 provide otherwise. Bibliography: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition 2010; Nair/ Kumar, Geographical Indications, A Search For Identitiy, 2005.

Content I. Background, structure of the norm(s), international context . . . . . . . . . II. Community collective marks (para. 1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Nature of a collective mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Determination in the application. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Capability of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Possible applicants. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Associations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Legal persons governed by public law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Geographical indications (para. 2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Different standard for assessing the distinctiveness . . . . . . . . . . . . . . . . . 2. Exceptions for descriptive use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Other protection forms for geographical indications. . . . . . . . . . . . . . . . a) Registration with the European Commission . . . . . . . . . . . . . . . . . . . . . b) Protection on the national level. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Applicable provisions of the CTMR (para. 3) . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Inherent registrability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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3. Collision with younger individual trade marks . . . . . . . . . . . . . . . . . . . . . . . 31 4. Priority and seniority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35 5. Conversion into national applications. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36

I. Background, structure of the norm(s), international context Collective marks in comparison to individual trade marks have a different back- 1 ground: They are not used by an individual owner, but by the members of an association or a public body, sometimes by the association or the public body itself. Therefore, deviating from the function of an individual trade mark to distinguish the goods or services or the owner of the mark from those of other undertakings, collective marks shall distinguish the goods or services of the member of the association from those of other undertakings. Collective marks are not only protectable on the EU level by the CTMR but protection for collective marks may also be provided under national trade mark law of the Member States. However, insofar Art. 1 TMD leaves to the Member States the possibility to either provide for protection of collective marks, or for guarantee or certification marks. In contrast to collective marks, guarantee or certification marks usually are not owned by a collective body such an association of producers, but by a guarantee or certification authority; furthermore, the users entitled to use the guarantee or certification mark usually will not be a member of the association owning it, but they may be used by anybody who complies with the defined standards.1 However, the definition of a guarantee or a certification mark is not the same in all countries; some indeed provide that only undertakings which have been authorized by the owner of the certification mark may use it.2 Artt. 66–74 CTMR contain special provisions relating to Community collective marks; 2 according to Art. 66 (3) CTMR the provisions of the CTMR shall apply also to Community collective marks unless Art. 67–74 provide otherwise. However, this provision erroneously omits to mention the absolute grounds for refusal as provided for by Art. 7 CTMR, because already Art. 66 (2) CTMR provides for a derogation from this provision and allows geographical indications to register as Community collective marks despite the respective absolute ground for refusal according to Art. 7 (1)(c) CTMR. The special provisions relating to Community collective marks contain the general 3 definition of this special form of a trade mark in Art. 66 (1) CTMR, allows, as stated before, geographical indications to register according to Art. 66 (2) CTMR, provides that regulations governing the use of the Community collective mark must be provided according to Art. 67 (1) CTMR as well as rules relating to their amendment in Art. 71 CTMR, provides for a right of third parties to use a geographical name despite the existence of a Community collective mark if the geographical name is used in accordance with honest practices in industrial or commercial matters, Art. 66 (2)(2) CTMR, which has also to be included in the regulations governing the use of the Community collective mark, Art. 67 (2)(2) CTMR. There are special provisions for the refusal of an application laid down in Art. 68 CTMR, and a right of third parties to file observations based on such special grounds for refusal, Art. 69. Art. 70 clarifies that use of a Community collective mark by any person who has authority to do so will count in favour of its owner. According to Art. 73 CTMR there are special grounds for revoca1 See WIPO Standing Committee on the indications, document SCT/9/4 of 1 October 2 See WIPO Standing Committee on the indications, document SCT/9/4 of 1 October

Law of Trade Marks, industrial designs and geographical 2002, paras 31 and 38. Law of Trade Marks, industrial designs and geographical 2002, para. 39.

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tion, in addition to those laid down in Art. 51; especially, the owner of the Community collective mark has to take reasonable steps to prevent the mark from being used in a manor incompatible with the conditions of use, Art. 73 (a) CTMR. Finally, Art. 74 CTMR provides for special grounds for invalidity going beyond those laid down in Artt. 52 and 53 CTMR, namely, if the special grounds for refusal laid down in Art. 68 CTMR are given, and the owner of the Community collective mark does not amend the regulations governing use to comply with Art. 68 CTMR. 4 To insure that collective marks may be protected and registered in other countries than the home country of the association or public body by which it has been established, Art. 7bis of the Paris Convention provides that collective marks have to be accepted for filing and protection. However, each member country may apply its own conditions of protection and refuse an application for a collective mark if it is contrary to the public interest. The Paris Convention does not include a definition of ‘collective mark’ nor does it specifically address certification marks.3 Collective marks are not specifically mentioned in the TRIPS. However, Art. 2 (1) TRIPS incorporates inter alia Art. 7bis Paris Convention into the TRIPS agreement.

II. Community collective marks (para. 1) 1. Nature of a collective mark 5

The underlying concepts of (individual) trade marks and collective marks are different. According to the jurisdiction of the CJ, the exclusive right in a trade mark is conferred to its proprietor in order to enable him to protect his specific interests as proprietor, namely, to ensure that the trade marks can fulfil its functions, especially its essential function which is to guarantee to consumers the origin of the goods or services by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin by guaranteeing that all the goods or services bearing it have originated under the control of single undertaking which is responsible for their quality4. In contrast hereto, the essential function of a collective mark does not refer to the origin of the products of a certain undertaking. Rather, according Art. 66 (1) CTMR, a Community collective mark must guarantee the collective origin of the goods or services offered and sold under the collective mark, not of a single undertaking.5 Furthermore, according to Art. 66 (2) CTMR especially signs or indications designating the geographical origin of goods or services will constitute a Community collective mark. Thus, in view of the prevailing jurisdiction of the CJ with respect to the essential function of a trade mark as cited before, the essential function of a collective mark which represents a geographical origin is to guarantee to consumers that the products come from an undertaking which is located in the geographical origin and is entitled to use the collective mark,6 thus the geographical 3 See WIPO Standing Committee on the Law of Trade Marks, industrial designs and geographical indications, document SCT/9/4 of 1 October 2002, para. 29. 4 See, inter alia, CJ Case C-609/11P Centrotherm Systemtechnik GmbH v OHIM, para. 71 (Centrotherm); CJ Joined Cases C-202/08P and C-208/08P American Clothing Associates NV v OHIM, para. 40 (maple leaf); CJ Case C-487/07 L’Oreal SA v Bellure NV, para. 58; CJ Case C-48/05 Adam Opel AG v Autec AG, para. 2. 5 BoA, decision of 3 April 2006 in Case R 561/2005-4, Genossenschaft Deutscher Brunnen eG, para. 17 (‘Getra¨nkekasten’=crate). 6 See German Federal Court of Justice (BGH), decision of 30 November 1995 in Case I ZB 32/93 published in 1996 GRUR 270, 271 – MADEIRA.

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origin of the goods and the special qualities inherent in them.7 Finally, typically but not specifically important for their character is the case that regulations governing use of collective marks often contain provisions to certify the quality of the goods and services of the members of the association.8

2. Determination in the application According to Art. 66 (1)(1) CTMR the Community collective mark must be described 6 as such when the mark is applied for. This means that the applicant has to designate the mark as a Community collective mark already in the application.9 If he fails to do so, then the application will be treated as an application for an individual Community trade mark; it is thus not possible to switch later from an application for an individual to a Community collective mark.10 In contrast hereto, it is deemed to be possible to change from an application for a Community collective trade mark to an application for an individual mark, in order to avoid a costly new application for an individual mark.11 However, Art. 43 (2)(1) CTMR allows any changes to a Community trade mark application only with respect to correcting the name and address of the applicant, errors of wording or of copying, or obvious mistakes, provided that such correction does not substantially change the trade mark or extent the goods or services. In view of the different character of an individual Community trade mark, and a Community collective mark, a change from an application for a Community collective trade mark to an application for an individual Community mark application would be substantial change and is thus not exempted from the prohibition to amend a Community trade mark application according to Art. 43 (2)(1) CTMR, and is thus not possible as well.

3. Capability of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings According Art. 66 (1) CTMR, a Community collective mark must guarantee the 7 collective origin of the goods or services offered and sold under the collective mark, not of a single undertaking, and even not that the single undertaking is belonging to the collective marks association.12 This leads to a standard to assess the distinctiveness of a Community collective mark which is not different from the standard to assess the distinctiveness of an individual trade mark. Especially, all absolute grounds for refusal laid down in Art. 7 CTMR are also applicable to Community collective marks. Consequently, an application for a Community collective mark consisting of the two letters GG has been refused for ‘alcoholic beverages (except beers)’ because it stands as an abbreviation for ‘großes Gewa¨chs’ (‘great growth’) indicating an elevated quality for a wine so that the absolute ground for refusal according to Art. 7 (1)(c) CTMR was applicable.13 Furthermore, also the application for a 3-dimensional Community collective mark displaying a crate in blue colour failed because the applicant was unable to substantiate that the crate as such was perceived by the average consumer as an indication of the 7 See, in relation to Art. 8 (4) CTMR, CJ Case C-96/09 P Anheuser-Busch Inc. v Bude ˇjovicky´ Budvar and OHIM, para. 147. 8 See BoA, decision of 10 Mai 2012 in case R 1007/2011-2, European Union, para. 13. 9 See also role 1 (i) CTMR IR. 10 Eisenfu ¨ hr/Schennen, Art. 66 CTMR mn. 32. 11 Ibid. 12 BoA, decision of 3 April 2006 in Case R 561/2005-4, Genossenschaft Deutscher Brunnen eG, para. 17 (‘Getra¨nkekasten‘=crate). 13 GC Case T-298/09 Verband Deutscher Pra ¨ dikatsweingu¨ter e. V. v OHIM, paras 45–58 (GG).

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commercial origin and thus as a trade mark, and not as something technical or functional to carry mineral water bottles.14 8 There is, however, an exception for Community collective marks designating the geographical origin of the goods covered by the application, Art. 66 (2) CTMR (see mn. 15 et seq.). Though, geographical indications are exempted from the absolute grounds for refusal laid down in Art. 7 (1)(c) CTMR only if they in fact are geographical indications; other traditional terms are not exempted and subject to a rejection based on descriptiveness, so decided with respect to Txakoli, designating a type of wine of Basque origin, because only the combination of the word Txakoli with the name of a region or a ´ lava, Txakoli de Bizkaia, or Txakoli de Getaria, and thus specified place like Txakoli de A not the applied for collective mark Txakoli alone, would indicate the actual geographical province of the wine.15 Consequently, the exception for geographical indications provided for by Art. 66 (2) CTMR must not be interpreted broadly, but rather restrictive.16

4. Possible applicants 9

According to Art. 66 (1)(2) CTMR the owners of Community collective marks may be either associations of manufacturers, producers, suppliers of services, or traders, which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law. Those other legal persons governed by public law include, for instance the European Union17, states or municipalities. Simultaneously, it is important to notice that the requirement concerning the conditions for membership under Art. 67 (2) CTMR is not applicable to legal persons governed by public law (for further details see mn. 12 and Art. 67 mn. 3 et seq.).18

10

a) Associations. Art. 66 (1)(2) CTMR explicitly mentions associations of manufactures, producers, suppliers of services, or traders as possible owners of Community collective marks further specifying only that, under the terms of law governing them, they have to have capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued. This means, first of all, that all companies, firms and other legal bodies according to Art. 3 CTMR will qualify as associations within the meaning of Art. 66 (1)(2) CTMR, including associations of natural persons as long as such an association has legal capacity, but not a single natural person.19 In case of doubt the applicant will have to prove that under the laws of the state where it has been established it has legal capacity in the sense of Art. 66 (1)(2) CTMR, namely that it has the capacity in its own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued. An association capable to be the owner of a Community collective mark 14 BoA, decision of 3 April 2006 in Case R 561/2005-4, Genossenschaft Deutscher Brunnen eG, para. 29 (‘Getra¨nkekasten’=crate). 15 GC Case T-341/09 Consejo Regulador de la Denominacio ´ lava, established in ´ n de Origen Txakoli de A Amurrio (Spain), Consejo Regulador de la Denominacio´n de Origen Txakoli de Bizkaia, established in Leioa (Spain), and Consejo Regulador de la Denominacio´n de Origen Txakoli de Getaria, established in Getaria (Spain) v OHIM, paras 23–26 (Txakoli). 16 GC Case T-534/10 Organismos Kypriakis Galaktokomikis Viomichanias v OHIM, para. 49 (Halloumi ´ lava, v Hellim); GC Case T-341/09 Consejo Regulador de la Denominacio´n de Origen Txakoli de A established in Amurrio (Spain), Consejo Regulador de la Denominacio´n de Origen Txakoli de Bizkaia, established in Leioa (Spain), and Consejo Regulador de la Denominacio´n de Origen Txakoli de Getaria, established in Getaria (Spain) v OHIM, para. 35 (Txakoli). 17 See BoA, decision of 10 May 2012 in Case R 1007/2011-2, European Union. 18 See BoA, decision of 22 November 2011 in Case R 828/2011-1, European Union, para. 18 – ‘REACH’. 19 See Eisenfu ¨ hr/Schennen, Art. 66 CTMR mn. 14.

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may have legal persons and also natural persons as members. It may consist of several member associations,20 so that also umbrella organizations may be owners of Community collective marks. It is not necessary that the persons entitled to use the Community collective mark 11 must be a direct member of the association owning it. Rather, membership in the sense of Art. 67 (2) CTMR is not to be understood in the sense of a membership in a club or a shareholder in a company,21 but it means that the regulations governing the use of the Community collective mark have to grant a membership in the collective marks association, which is not the same as the owner of the Community collective mark, but erected by the regulations governing the use. Therefore, the regulations governing the use can either create a membership by joining the collective marks association represented by the regulations, or set up a license scheme whereby members have to conclude license agreements with the legal person owning the collective mark. Consequently, licensees will be deemed to be members of the Community collective marks association. Insofar the regulations governing the use must grant the members in the collective marks association a right to influence changes of the regulations, but not any membership rights in the owner of the Community collective mark or to influence his inner structure.22 The reason for this is mainly that otherwise legal persons governed by public law would in some cases be unable to be an owner of a Community collective mark because of restrictions of law in their membership, or the lacking possibility to become a member of the legal person at all. The regulations governing the use of a Community collective mark therefore e. g. may provide that ‘any person including companies, associations, bodies of individuals, whether incorporated or not, and individuals whose products originate from xyz may become a member of the collective marks association by concluding a license agreement according to the provisions of these regulations.’ In order to create some ‘democratic’ inner structure of the collective marks association, however, the regulations governing the use must provide a possibility to influence changes of the regulations by the licensees. Insofar, the regulations should provide that the licensees must be given a notice of any proposed amendments to the regulations (and their schedules, if any), and that they furthermore must be given an adequate time limit (e. g. three months) to submit observations or comments with respect to proposed amendments to the regulations. Furthermore, in case of umbrella organizations, the persons entitled to use the collective mark may be members of the association being a member of the umbrella organization. b) Legal persons governed by public law. Furthermore, also legal persons governed 12 by public law may be owners of collective marks. Insofar, every legal person governed by the public law of the country where it is located qualifies as the owner of a collective mark. Such countries are not limited to those who are EU Member States. However, the applicant may have to prove how it has been erected under the laws of his home country, and that it has capacity to sue and to get sued; this condition laid down in paragraph 1 is also applicable to paragraph 2, because the owner of a Community (collective) mark must be able to enforce rights based on the mark, and must be subject to legal measures against the application or registration. With respect to legal persons of public law, a special problem lays in Art. 67 (2) 13 CTMR, whereby the regulations governing the use of a Community collective mark 20 See statement 17 of the joint statements by the counsel and the commission of European Communities entered in the minutes of the council meeting at which the regulation on the Community trade mark was adopted on 20 December 1993, OJ OHIM 1996, 607, 613. 21 See Eisenfu ¨ hr/Schennen, Art. 66 CTMR mn. 15. 22 See Eisenfu ¨ hr/Schennen, Art. 66 CTMR mn. 15.

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must authorize any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark. Namely, such legal persons may be erected by law, a parliament or a government decision of their home country, and not offer the possibility to become a member of it by just joining; rather, ‘members’ of such legal persons may be determined by the parliament, the government, or another public body. However, as for associations, also with respect to legal persons governed by public law membership may be created by virtue of the regulations governing the use of the Community collective mark, and by either joining the Community collective marks association created by the regulations as a member, or by concluding a license agreement (see mn. 11). 14 The following legal persons governed by public law in the past were e. g. accepted owners of collective marks: The Spanish ‘Consejos Reguladores de la Denominacio´n de Origen’,23 the Spanish ‘Instituto do Vihno da Madeira’, although it only indirectly had members, because the wine exporters being entitled to use the collective mark were unambiguously determined and they were subject to the rules of the association24, the Municipality of Piesport in Germany, although the membership in the trade marks association was not limited to the members of the municipality, and certainly a municipality does not have members like an association has; the ‘membership’ in a municipality is rather determined by residency,25 or the parastatal Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi.26

III. Geographical indications (para. 2) 1. Different standard for assessing the distinctiveness According to Art. 66 (1)(1) CTMR a Community collective mark must be capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. To a Community collective mark protecting a geographical origin27, however, this cannot be applied literally because every undertaking which offers goods originating from the geographical origin can use the geographical indication, either after becoming a member of the association according to Art. 67 (2)(2) CTMR or by way of the exception granted in Art. 66 (2)(2) CTMR. 16 Furthermore, according to the absolute ground for refusal laid down in Art. 7 (1)(c) CTMR, trade marks which consist exclusively of an indication of a geographical origin shall not be registered. The reason laying behind this absolute ground for refusal is that a Community trade mark consisting of a geographical origin is never capable of distinguishing the goods or services of one undertaking from those of other under15

23 GC Case T-341/09 Consejo Regulador de la Denominacio ´ lava, established in ´ n de Origen Txakoli de A Amurrio (Spain), Consejo Regulador de la Denominacio´n de Origen Txakoli de Bizkaia, established in Leioa (Spain), and Consejo Regulador de la Denominacio´n de Origen Txakoli de Getaria, established in ~oz Arraiza v OHIM (RIOJA v Getaria (Spain) v OHIM (Txakoli); GC Case T-138/09 Fe´lix Mun RIOJAVINA); furthermore, they are explicitly mentioned by the official examination guidelines of OHIM, see Manual Concerning Proceedings Before the Office, Part B, Examination, p. 47. 24 BGH, judgment of 30 September 1995, GRUR1996, 270, 270 – Madeira. 25 BGH, judgment of 3 June 1993, GRUR 1993, 832, 833 – Piesporter Goldtro ¨ pfchen. 26 CJ Case C-393/12 P Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v OHIM (Halloumi v Hellim); GC Case T-534/10 Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v OHIM (Halloumi v Hellim); OLG Du¨sseldorf, judgment of 21 March 2006, I-20 U 229/05, cited according to Juris (Halloumi v (Gazi) Halloumi). 27 See generally Nair/Kumar, Geographical Indications, p. 38.

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takings, because usually more than one undertaking offering the same goods will be located in that certain geographical origin. A geographical indication therefore is per se descriptive, and not distinctive. Furthermore, all undertakings located in the geographical origin may need to identify their goods as originating from the geographical origin. Consequently, Art. 7 (1)(c) CTMR somehow prohibits for a single undertaking to monopolize a geographical indication, e. g. if the goods its offers or the raw materials used can indeed originate from that geographical origin. Contrary to that, Art. 66 (2)(1) CTMR exempts Community collective marks from this absolute ground for refusal with the consequence that this provision explicitly allows Community collective marks to monopolize a geographical indication for the members of an association, or a legal person governed by public law. A Community collective mark according to Art. 66 (2) CTMR therefore may serve especially to designate the geographical origin of goods and services. Such geographical indications are, according to Art. 22 TRIPS, indications which identify a good as originating in the territory of a country, or a region, or locality in that territory.28 This leads to a different standard to assess the distinctiveness of a Community 17 collective mark designating a geographical origin. Following the jurisdiction of the CJ with respect to the essential function of a trade mark as cited before (see mn. 5), the essential function of a collective mark which represents a geographical origin is to guarantee to consumers that the products come from an undertaking which is located in the geographical origin and is entitled to use the collective mark,29 thus the geographical origin of the goods and the special qualities inherent in them.30 Nevertheless, this applies only if the collective mark applied for indeed designates a 18 geographical indication and, since it is an exception from the ground of refusal set out in Art. 7 (1)(c) CTMR, it must be interpreted strictly.31 Consequently, the application for a traditional name like Txakoli designating the type of a wine and its Basque origin, but indicating the actual geographical provenance only together with the name of a further region or a specific place, will not benefit from this exception.32

2. Exceptions for descriptive use Art. 66 (2)(2) CTMR provides for an exception for the descriptive use of geographical 19 names: A Community collective mark protecting a geographical origin will not entitle its owner to prohibit a third party from using a geographical name, provided he uses it in accordance with honest practices in industrial or commercial matters. This exception for descriptive uses is only applicable to the use of a geographical name, not in application or registration proceedings; thus, this exception does not give a right to 28 See Nair/Kumar, Geographical Indications, p. 11, with further reference to the international evolution of geographical indications. 29 See BGH, decision of 30 November 1995 in case I ZB 32/93 published in 1996 GRUR 270, 271 – MADEIRA. 30 See, in relation to Art. 8 (4) CTMR, CJ Case C-96/09 P Anheuser-Busch Inc. v Bude ˇjovicky´ Budvar and OHIM, para. 147. 31 GC Case T-534/10 Organismos Kypriakis Galaktokomikis Viomichanias v OHIM, para. 49 (Halloumi ´ lava, v Hellim); GC Case T-341/09 Consejo Regulador de la Denominacio´n de Origen Txakoli de A established in Amurrio (Spain), Consejo Regulador de la Denominacio´n de Origen Txakoli de Bizkaia, established in Leioa (Spain), and Consejo Regulador de la Denominacio´n de Origen Txakoli de Getaria, established in Getaria (Spain) v OHIM, para. 35 (Txakoli). 32 GC Case T-341/09 Consejo Regulador de la Denominacio ´ lava, established in ´ n de Origen Txakoli de A Amurrio (Spain), Consejo Regulador de la Denominacio´n de Origen Txakoli de Bizkaia, established in Leioa (Spain), and Consejo Regulador de la Denominacio´n de Origen Txakoli de Getaria, established in Getaria (Spain) v OHIM, paras 23–26 (Txakoli).

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third parties to register a geographical name as a trade mark or use it as a constituent of such a mark, the owner of a Community collective mark protecting a geographical origin remains entitled to enforce its intellectual property right against infringement resulting from the registration of a younger Community trade mark.33 The condition to act in accordance with honest practices in industrial or commercial matters constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the owner of the Community collective mark.34 Insofar this exception has no other meaning than in Art. 12 CTMR.35 Especially, the product for which the geographical name is used has to actually originate from the geographical location it designates,36 and the geographical name must not be used in a way that might be regarded as unfairly competing with the owner of the Community collective mark.37 This may be the case if the use of the geographical name is done in a way that it indicates a link between the third party’s goods and the owner of the Community collective mark, or a person authorized to use the mark, or if the Community collective mark enjoys a certain reputation in the EU from which the third party might unduly benefit.38 This means that Art. 66 (2)(2) CTMR merely gives a right to use the geographical name descriptively as an indication of the geographical origin of the products concerned, but not to use the name as a trade mark.39 In general, a sign which exclusively describes the geographical origin of the goods or services can be accepted as long as it is validly applied for as a collective mark and as long as its regulations governing the use grant an authorization within the meaning of Art. 67 (2)(2) CTMR.40

3. Other protection forms for geographical indications 20

In the EU, geographical indications for agricultural products and foodstuffs – besides their possible protection as a collective mark – may be protected on two bases, namely on the EU level by Regulation 1151/2012 or on the national level.

21

a) Registration with the European Commission. As far as agricultural products and foodstuffs are concerned, there is extended protection for indications of geographical origin on the EU level through the Regulation 1151/2012 on quality schemes for agricultural products and foodstuffs,41 which has replaced the earlier CR 510/2006.42 The protection under R 1151/2012 does not relate to simple indications of geographical origin,43 their 33

See GC Case T-138/09 Fe´lix Munoz Arraiza v OHIM, paras 58–60 (Rioja v Riojavina). See, for the conflict of a trade mark and a geographical indication and relating to Art. 6 (1)(b) TMD: CJ Case C-100/02 Gerolsteiner Brunnen GmbH & Co. and Putsch GmbH, para. 24 (Gerolsteiner). 35 See Art. 12 mn. 41 et seq. 36 See for the conflict of a trade mark and a geographical indication and relating to Art. 6 (1)(b) TMD CJ Case C-100/02 Gerolsteiner Brunnen GmbH & Co. and Putsch GmbH, para. 20 (Gerolsteiner). 37 See for the conflict of a trade mark and a geographical indication and relating to Art. 6 (1)(b) TMD CJ Case C-100/02 Gerolsteiner Brunnen GmbH & Co. and Putsch GmbH, para. 26 (Gerolsteiner). 38 See CJ Case C-17/06 Ce ´line SARL v Ce´line SA, para. 34 (Ce´line). 39 See CJ Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) and Boots- und Segelzubeho¨r Walter Huber, Franz Attenberger, para. 28 (Chiemsee). 40 See BoA decision of 5 October 2006 in case R 280/2006-1, Consorzio del Vino Nobile di Montepulciano, paras. 16–17 – ‘VINO NOBILE’; BoA decision of 7 March 2006 in case R 1073/2005-1, Consejo Regulador del Tequila, A. C., para. 15 – ‘TEQUILA’. 41 Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs. 42 Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations for agricultural products and foodstuffs. 43 For a definition of this term, see mn. 3. 34

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protection is reserved for the national legislator.44 Rather, the subject matter of R 1151/ 2012 is solely qualified indications of geographical origin for agricultural products and foodstuffs expressly listed in Annexes I of the regulation, with the exception of wine sector products and spirit drinks, Art. 2 (2) R 1151/2012. The protection arises, as per Art. 13 R 1151/2012, upon registration; the proprietor can, according to Art. 49 (1) R 1151/2012, only be a group who works with the products with the name to be registered. Such a group according to Art. 3 (2) R 1151/2012 means any associations, irrespective of its legal form, mainly composed of producers or processors working with the same product. Furthermore, such group, although not explicitly mentioned, should also include legal persons governed by public law,45 because the Member States my encourage the formation and functioning of groups on their territories also by administrative means, Art. 45 (2) R 1151/2012 which should also be possible by establishing a group by law in the form of a legal person governed by public law. According to Art. 5 R 1151/2012, designations of origin and geographical indications 22 are eligible for protection. A protected designation of origin – or abbreviated PDO – is, according to Art. 5 (1) R 1151/2012, (a) the name of a region, a specific place or, in exceptional cases, a country, which is used to describe an agricultural product or foodstuff which originates in that region, specific place or country, (b) the quality or characteristics of which are essentially or exclusively due to a particular geographical environment, including its inherent natural and human factors and (c) which were produced, processed and prepared in the defined geographical area. In contrast, the protected geographical indication – or abbreviated PGI – is differentiated, under Art. 5 (2) R 1151/2012, from the PDO in that46, in the former, the quality or characteristics are not exclusively or essentially attributable to the geographical conditions, but that the geographical origin is associated with a particular quality, a particular reputation or another characteristic. Furthermore, according to Art. 5 (2) R 1151/2012 at least one of the production steps must have taken place in the defined geographical area. Examples: Parma ham (Prosciutto di Parma),47 Grana Padano,48 the regions (provinces) Alicante and Jijona49 and Habana.50 As mentioned, wine sector products and spirit drinks do not fall within the scope of 23 application of R 1151/2012. They may, however, be protected on the EU level according to Art. 92 et seq. of Regulation 1308/2013 relating to the wine sector, or according to Regulation 110/2008 relating to spirit drinks. Furthermore, they may be protected through specific bilateral treaties and as well as the regulation on quality wines. Examples: champagne51 and Rioja wine.52 If the protected geographical indication (PGI) or the protected designation of origin 24 (PDO) is entered in the Register which the Commission maintains, a relatively extensive 44 CJ Case C-216/01 Bude ˇjovicky´ Budvar [2003] ECR I-13617, para. 74; CJ Case C-312/98 Haus Cramer [2000] ECR I-09187; BGH GRUR 2008, 413, 414 para. 23 et seq. – Bayerisches Bier; BGH GRUR 2002, 160, 161 – Warsteiner III. 45 See mn. 9–10. 46 CJ Case C-3/91 Exportur SA v LOR SA [1992] ECR I-05529 para. 11, 28. 47 CJ Case C-108/01 Consorzio del Prosciutto di Parma and Salumificio S. Rita [2003] ECR I-05121, para. 64. 48 CJ Case C-469/00 Ravil [2003] ECR I-05053, para. 49. 49 CJ Case C-3/91 Exportur SA v LOR SA [1992] ECR I-05529 para. 11, 28. 50 OLG Mu ¨ nchen MarkenR 2001, 218 – Habana. 51 BGH GRUR 2005, 957, 958 – Champagnerbratbirne; BGH GRUR 1988, 453, 455 et seq. – Ein Champagne unter den Mineralwa¨ssern (approx.: ‘A champagne amongst mineral waters’); BGH GRUR 2002, 426, 427, before that: OLG Ko¨ln GRURInt 2000, 796 – Champagne bekommen, Sekt bezahlen (approx.: ‘Get champagne, pay for sparkling wine’). 52 CJ Case C-437/97, GRURInt 2000, 750, 754 Tz. 55 – Rioja-Wein.

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protection under Art. 13 R 1151/2012 is granted against any direct or indirect commercial use of the registered name for products which do not fall under the registration, insofar as these products are comparable with those products registered under the name or insofar as the use of the name exploits of the reputation of the protected name, including when those products are used as an ingredient, Art. 13 (1)(a) R 1151/2012. Furthermore, Art. 13 (1)(b) R 1151/2012 offers protection against every unlawful misuse, imitation or evocation even if the true origin of the product is indicated or if the protected name is used in translation or together with expressions such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’ or similar. This protection exists independent of any likelihood of confusion or deception which might exist53. Moreover, geographical indications and designations of origin are also protected, as per Art. 13 (1)(c) and (d) R 1151/2012, against all other false or misleading indications as to the origin, nature or essential characteristics of the respective products on the inner or outer packaging, advertising material or documents relating to those products as well as against the use of containers which are capable of conveying a false impression as to the product’s origin and finally against all other practices which could mislead the consumer as to the true origin of the product. 25 R 1151/2012 supersedes national law within its scope of application, meaning that a qualified indication of geographical origin, which is entered into the register of the Commission as a geographical indication or designation of origin, is only covered by the protection according to R 1151/2012 and no longer by national provisions protecting geographical indications.54 To clarify the question as to whether Sec. 127 German Trade Mark Act remains applicable, if a registration as per former CR 510/2006 (now R 1151/ 2012) is invalid or a qualified indication of geographical origin has not been filed for registration, the German Bundesgerichtshof referred a matter involving the geographical indication Bayrisches Bier to the CJ.55 However, the CJ did not answer this question because it was of the opinion that the registration on which it was based, namely the designation Bayrisches Bier was validly registered as a geographical indication based on CR 510/2006, so that the answer to the question was irrelevant.56 26 It should also be noted that protection of an indication of geographical origin can also be achieved through bilateral state treaties or for indirect geographical indications of origin which do not contain any geographical name but indicate that the relevant product originates from a region or place within the country of origin.57 27

b) Protection on the national level. In Germany, e. g., the MarkenG recognises two types of geographical indications, namely simple and qualified geographical indications. Simple geographical indications are protected by § 127 (1) MarkenG. These must not be used in the course of trade for goods or services which do not originate from the place, area, region or country identified by the geographical indication of origin if that use leads to a risk of deception with respect to the geographical origin. Simple geographical indications indicate the origin of a product and there is no link between the quality of the product and its origin. Under the MarkenG, consumer deception, with respect to 53 Cf. CJ Case C-87/97 Gorgonzola [1999] ECR I-1301, paras. 25 et seq.; BGH GRUR 2008, 413, 414, para. 17 et seq. – Bayerisches Bier. 54 CJ Case C-87/97 Gorgonzola [1999] ECR I-1301, para. 18; BGH GRUR 2008, 413, 414 para. 23 et seq. – Bayerisches Bier. 55 BGH GRUR 2008, 413, 416 para. 39 et seq. – Bayerisches Bier. 56 CJ Case C-120/08 Bavaria [2010] ECR I-13393, para. 30 et seq. 57 CJ Case C-478/07 Bude ˇjovicky´ Budvar [2009] ECR I-07721, para. 81 et seq.; CJ Case C-216/01 Budeˇjovicky´ Budvar [2003] ECR I-13617 para. 99 et seq.; CJ Case C-3/91 Exportur SA v LOR SA [1992] ECR I-05529 para. 28

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simple geographical indications only, may be avoided by the use of a clarifying notice stating the actual origin of the product.58 This is because there is no connection between the quality of the product and its origin. Qualified geographical indications are protected by § 127 (2) MarkenG. In addition to origin, qualified geographical indications signify that the products to which they are attached have ‘special properties or a special quality’ referable to that origin. Qualified geographical indications may only be used for products that originate in the area in question and which possess the necessary special properties or quality. Clarifying notices do not play a role within the meaning of § 127 (2) MarkenG, because § 127 (2) MarkenG does not provide for protection against deception, but against products which do not have the same quality or the same special properties as the products from the original geographical region have. Thus, in case of qualified geographical indications, if there is no deception within the meaning of § 127 (1) MarkenG because of a clarifying notice and the products in question have the same quality or the same special properties within the meaning of s 127 (2) MarkenG, there will be no infringement. Where a geographical indication enjoys a ‘special reputation’, § 127 (3) MarkenG prohibits the use of that geographical indication with products from a different origin if that use takes unfair advantage of, or is detrimental to, the reputation or distinctive character of the geographical indication, even if there is no risk of deception. However, it follows from § 127 (4) MarkenG that a clarifying notice may well help to avoid taking unfair advantage of or being detrimental to, the reputation or distinctive characters of the geographical indications. Furthermore, geographical indications may also be protected by bilateral treaties. 28 Germany, e. g., has concluded several bilateral treaties, in substantively similar form, with respect to the mutual protection of geographical indications, e. g. with France on 8 March 1960, Italy on 23 July 1963, Greece on 16 April 1964, Switzerland on 7 March 1967; and Spain on 11 September 1970. The contracting parties to these treaties undertake to protect the geographical indications listed in the treaties on a reciprocal basis. Thus, German geographical indications are protected in those other states and vice versa. In this way, the national geographical indications are not protected in their home territory by force of these treaties, but only in the other countries. While their inclusion in the treaties is suggestive of the existence of national or domestic protection, the party claiming the existence of a German geographical indication would nevertheless have to establish the conditions under § 127 of the MarkenG. German geographical indications listed in the treaties are exclusively reserved for products or goods that originate in Germany and may only be used in the territories of the other states on the conditions that apply in Germany.59 The geographical indications listed in the treaties are protected from use in translation, or with an indication of the actual origin, or with additions such as ‘kind’, ‘type’, ‘fashion’, ‘imitation’ or the like.60

IV. Applicable provisions of the CTMR (para. 3) 1. General Art. 66 (3) CTMR declares all provisions of the CTMR applicable also to Community 29 collective marks unless Art. 67–74 provide otherwise. While Articles 67–74 mainly 58 See BGH 1999 GRUR 252 Warsteiner I and 2002 GRUR 160 WarsteinerII; 2002 GRUR 1074 Oettinger. 59 Art 2 of the respective treaties. 60 Art 4 of the respective treaties.

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contain provisions especially attributable to the regulations governing the use of a Community collective mark (Artt. 67 and 71), and special additional grounds for refusal of an application (Art. 68) and grounds for revocation (Art. 73) as well as invalidity (Art. 74)61, the special nature and character of a Community collective mark has to be taken into account when assessing the inherent registrability of a Community collective mark and in cases of collision with younger individual marks.

2. Inherent registrability 30

A Community collective mark according to Art. 66 (1) CTMR must be capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. Generally, the standard to assess the distinctiveness of a Community collective mark is not different from that of an individual trade mark.62 However, there may be cases where a sign is not capable to distinguish the goods or services concerned to originate from a single undertaking, but to have a collective origin.63 It has to be noted, furthermore, that Art. 66 (2)(1) CTMR provides for a further exception for geographical indications which may, in derogation from Art. 7 (1)(c) CTMR, constitute Community collective marks. See mn. 15 et seq.

3. Collision with younger individual trade marks 31

According to settled case-law the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion within the meaning of Art. 8 (1)(b) CTMR.64 The existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case.65 This implies some interdependence between the relevant factors, and in particular the similarity of the marks and that of the goods or services covered, so that a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, or vice versa; furthermore the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account not only when determining the degree of similarity between the marks, but also when determining the similarity between the goods and services.66 Additionally the exclusive right in a trade mark is conferred to its proprietor in order to enable him to protect his specific interests as proprietor, namely, to ensure that the trade mark can fulfil its functions, especially its essential function which is to guarantee to consumers the origin of the goods or services.67 This essential function of the mark is affected if there is a likelihood of confusion.68 61

See for further details mn. 3. See mn. 7. 63 See also Eisenfu ¨ hr/Schennen, Art. 66 CTMR mn. 24. 64 See Art. 8 mn. 45 et seq. and CJ Case C-597/12P, Isdin SA v OHIM, para. 17 (ZEBENIX v ZEBEXIR); CJ Case C-317/10P Union Investments Privatfonds GmbH v OHIM, para. 53 (UNIFONDS at all v UNIWEB et al); each with further references. 65 See Art. 8 mn. 46 and CJ Case C-597/12P Isdin SA v OHIM, para. 18 (ZEBENIX v ZEBEXIR); CJ Case C-120/04P Medion AG v Thomson Mulitmedia, para. 27 (LIFE v THOMSON LIFE); each with further references. 66 See Art. 8 mn. 47 and CJ Case C-16/06P Les E ´ ditions Albert Rene´ Sa`rl v OHIM, paras 63 and 64 (OBELIX v MOBILIX); GC Case T-240/08 The Procter & Gamble Company v OHIM, para. 26 (OLAY v OLI). 67 See Art. 8 mn. 45 and CJ Case C-487/07 L’Oreal SA v Bellure NV, para. 58 (L’Oreal/Bellure); CJ Case C-48/05 Adam Opel AG v Autec AG, para. 21 (Opel/Autec). 68 See Art. 8 mn. 45 and CJ Case C-487/07 L’Oreal SA v Bellure NV, para. 59 (L’Oreal/Bellure). 62

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Community collective marks

Art. 66 CTMR

When assessing confusing similarity and thus determining the scope of protection of 32 a Community collective mark one has to keep the underlying concept of trade marks and collective marks in mind (see mn. 5). According to Art. 66 (1) CTMR, the essential function of a collective mark is entirely different than the one of an individual trade mark: While the essential function of the individual trade mark is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion to distinguish the product or service from others with have another origin by guaranteeing that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality,69 the essential function of a collective mark does not refer to the origin of the goods or services from a single undertaking. Rather, according to Art. 66 (1) CTMR, a Community collective mark must guarantee the collective origin of the goods or services offered and sold under the collective mark (see mn. 5), in case of a Community collective mark designating a geographical origin that the products come from an undertaking which is located in the geographical origin and is entitled to use the collective mark including to guarantee to consumers the geographical origin of the goods and the special qualities inherent in them (see mn. 5). If Art. 66 (1)(2) CTMR explicitly allows an association to monopolize a geographical 33 indication for its members, the assessment of confusing similarity between a Community collective mark and an individual mark must be treated differently than if only two individual marks were compared, namely taking into account the geographical origin. Consequently, the essential function within the meaning of the jurisdiction of the CJ of a Community collective mark protecting a geographical indication is to guarantee the geographical origin of the goods protected, and not the commercial origin. This has to be taken into account when assessing confusing similarity among the circumstances which are relevant; the question to be asked is therefore not whether the relevant consumer may think that the goods in dispute usually originate from the same undertakings, but it is rather decisive whether the relevant consumer will think that the goods, or the raw materials used, have the same collective origin from the same geographical location. Insofar, the GC in its RIOJA v RIOJAVINA judgment did not correctly take the different character of a Community collective mark into account when its stressed that the earlier Community collective mark RIOJA comprised an indication of the commercial origin of the wines which bear that mark and then further assessed that the relevant public would attribute the same commercial origin to the goods and services covered by the younger mark RIOJAVINA applied for which would amount to a likelihood of confusion.70 Although the GC in the end decided correctly, it should be noted that a Community collective mark which protects a geographical origin according to Art. 66 (2)(1) CTMR does not protect a (particular) commercial origin because all of the members of the Community collective mark association are entitled to use the collective mark. Therefore, it is not the commercial origin a Community collective mark is protecting, but the collective origin, in case of geographical indications the collective origin from the protected geographical location. Finally, the fact that a Community collective mark protects a geographical indication 34 and thus a sign which is descriptive for the geographical origin of a product leads to the

69 CJ Case C-609/11P Centrotherm Systemtechnik GmbH v OHIM, para. 71 (CENTROTHERM); CJ Joined Cases C-202/08P and C-208/08P American Clothing Associates NV v OHIM, para. 40 (maple leaf); CJ Case C-487/07 L’Oreal SA v Bellure NV, para. 58 (L’Oreal/Bellure). 70 GC Case T-138/09 Fe ´lix Munoz Arraiza v OHIM, paras 26–27 (RIOJA v RIOJAVINA).

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CTMR Art. 66

Community Trade Mark Regulation

assumption that such a mark will not per se have an average degree of distinctiveness.71 However, there is also no assumption that a Community collective mark protecting a geographical indication always only has a weak distinctive character,72 rather, through intensive use and reputation the distinctive character can be enhanced.73

4. Priority and seniority 35

The claims for priority according to Art. 29 CTMR and seniority according to Art. 34 CTMR require either a prior application for the same trade mark (right of priority according to Art. 29 (1) CTMR) or a pre-existing identical trade mark registered in a Member State (claiming the seniority of a national trade mark according to Art. 34 (1) CTMR). In view of the different nature of a Community collective mark set out by Art. 66 (1) CTMR (see mn. 5), a prior individual trade mark will not be the same or identical trade mark within the meanings of Articles 29 (1) and 34 (1) CTMR, so that priority and seniority in connection with a Community collective mark may be claimed only if the prior trade mark is a collective mark as well.74 The same problem arises if the earlier trade mark is a certification mark or guarantee mark because also then there is no strict identity. However, since Rule 121 (1) CTMRIR treats certification marks and guarantee marks as collective marks in connection with an international registration designating the European Community, this should be applicable to the priority and seniority claims as well.75

5. Conversion into national applications 36

If a Community collective mark application should fail and thereafter be converted into national applications according to Artt. 112–114 CTMR, in view of the special nature of a Community collective mark such conversion must be applied for a national collective mark; no conversion into national application for individual marks seems to be possible.76 However, in view of the treatment of certification marks and guarantee marks as collective marks in case of international registrations designating the European Community according to Rule 121 CTMRIR, a conversion of a Community collective mark application into a national certification mark or guarantee mark application will be possible if the national law of the Member State does not provide for collective mark protection, but rather for protection of certification marks or guarantee marks.

71 CJ Case C-393/12 P Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v OHIM, para. 36 (Halloumi v Hellim); GC Case T-534/10 Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v OHIM, para. 52 (Halloumi v Hellim). 72 CJ Case C-393/12 P Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v OHIM, para. 36 (Halloumi v Hellim). 73 GC Case T-138/09 Fe ´lix Munoz Arraiza v OHIM, para. 48 (RIOJA v RIOJAVINA). 74 Other opinion: Eisenfu ¨ hr/Schennen, Art. 66 CTMR mn. 31. 75 In this respect same opinion Eisenfu ¨ hr/Schennen, Art. 66 CTMR mn. 31. 76 Other opinion: Eisenfu ¨ hr/Schennen, Art. 66 CTMR mn. 34.

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Regulations governing use of the mark

Art. 67 CTMR

Article 67 Regulations governing use of the mark 1. An applicant for a Community collective mark must submit regulations governing its use within the period prescribed. 2. The regulations governing use shall specify the persons authorized to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including sanctions. The regulations governing use of a mark referred to in Article 66 (2) must authorize any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark. Content I. Obligation to submit regulations governing the use of the collective mark (para. 1). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Deadline to submit the regulations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. necessary contents of the regulations governing the use of the collective mark (para. 2). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 3

I. Obligation to submit regulations governing the use of the collective mark (para. 1) According to Art. 67 (1) CTMR an applicant for a Community collective mark must 1 submit regulations governing its use within the period prescribed. These regulations governing the use of the collective mark stipulate the conditions under which the members of this association are entitled to use the collective mark, how they can become members and provide for sanctions. The minimum contents of regulations governing use are provided for by Art. 67 (2) CTMR. It has be noted furthermore, that a Community collective mark will not get registered without sufficient regulations governing the use submitted by the applicant; Art. 67 (1) CTMR insofar clearly provides that the applicant must submit such regulations. Correspondingly, Art. 68 (1) CTMR provides for an absolute ground for refusal if no or no sufficient regulations governing use are filed, or where the regulations governing use are contrary to public policy or to accepted principles of morality. See for details Art. 68 mn. 1.

II. Deadline to submit the regulations The applicant can, but must not, submit the regulations governing the use of the 2 collective mark together with the application. Rather, Art. 67 (1) CTMR allows to submit regulations governing the use within the period prescribed. The CTMR does not provide for the exact period within the regulations have to be filed. Rather, Rule 43 (1) CTMRIR provides that the regulations shall be submitted to the office within a period of two months after the date of filing. This deadline is extensible according to Rule 71 (1)(2) CTMRIR if such extension is requested by the applicant, the request submitted before the original period expired, and when the office finds that an extension of the deadline to file the regulations is appropriate under the circumstances. Axel Nordemann

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CTMR Art. 67

Community Trade Mark Regulation

The latter should usually be the case because setting up regulations governing the use of a collective mark is a comprehensive process, and may involve several decisions to be taken by the applicant, its general meeting, or a body involved.

III. necessary contents of the regulations governing the use of the collective mark (para. 2) Art. 67 (1) CTMR specifies in two sentences, that the regulations governing the use of the collective mark must specify the persons authorised to use the mark, the conditions of membership of association and, where they exist, the conditions of use of the mark, including sanctions (sentence 1). This means that conditions of use of the mark including sanctions is not a necessary, but only a voluntary contents of the regulations. Furthermore, if the Community collective mark protects a geographical indication and thus benefits from the exception of Art. 66 (2) CTMR, it must contain a provision whereby any person whose goods or services originate in the geographical area concerned is authorised to become a member of the association owning the Community collective mark (sentence 2). 4 Rule 43 (2) CTMRIR further specifies which provisions the regulations should usually have: (a) the name of the applicant and his office address; (b) the object of the association or the object for which the legal person governed by public law is constituted; (c) the bodies authorized to represent the association or the said legal person; (d) the conditions for membership; (e) the persons authorized to use the mark; (f) where appropriate, the conditions governing use of the mark, including sanctions; (g) where appropriate, the authorization referred to in the second sentence of Art. 67 (2) of the Regulation. 5 If the association owning the Community collective mark does not provide for direct membership, or if the owner of the Community collective mark is a legal person governed by public law so that membership in the Community collective marks association is created by the rules governing the use of the collective mark, then the regulations must also contain a provision whereby the members can influence changes of the regulations (see Art. 66 mn. 11). Insofar, the regulations should provide at least that the licensees must be given a notice of any proposed amendments to the regulations, and that they furthermore may submit observations or comments with respect to the proposed amendments within an adequate time limit. 6 If the Community collective mark protects a geographical indication within the meaning of Art. 66 (2) CTMR, then the regulations governing the use must contain an opening clause allowing any person whose goods or services originate in the geographical area concerned to become a member of the association which is the owner of the mark, Art. 67 (2)(2) CTMR. This does not mean that such a person must have the right to become a direct member of the association. Rather, in cases where the association does not have direct members or where the owner of the Community collective mark is a legal person governed by public law, and membership is created by the regulations governing the use of the collective mark, such persons must have the right to become members of the Community collective mark association (see Art. 66 mn. 11). However, Art. 67 (2)(2) CTMR is only applicable to word marks protecting a geographical indication. If the Community collective mark consists of a logo containing graphical 3

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Refusal of the application

Art. 68 CTMR

elements and further constituents next to the geographical indication which make the Community collective mark distinctive besides and independently from the geographical indication contained therein, the exception provided for in Art. 66 (2) CTMR will not be applicable so that consequently such a Community collective mark must not provide for any person whose goods or services originate in the geographical area to become a member of the association.1 The reason for that is that only a Community collective mark consisting exclusively of a geographical indication according to Art. 66 (2) CTMR will monopolize the geographical indication so that undertakings located in the geographical area depend on becoming a member of the collective marks association. If, to the contrary, a geographical indication is part of a Community collective mark only besides other distinctive constituents, the geographical indication will not be monopolized by the Community collective mark, and other associations may create Community collective marks incorporating the geographical indication as a constituent next to other distinctive constituents as well.

Article 68 Refusal of the application 1. In addition to the grounds for refusal of a Community trade mark application provided for in Articles 36 and 37, an application for a Community collective mark shall be refused where the provisions of Articles 66 or 67 are not satisfied, or where the regulations governing use are contrary to public policy or to accepted principles of morality. 2. An application for a Community collective mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a collective mark. 3. An application shall not be refused if the applicant, as a result of amendment of the regulations governing use, meets the requirements of paragraphs 1 and 2. Content I. Provisions of Artt. 66 or 67 not satisfied or regulations governing use contrary to public policy or to accepted principles of morality (para. 1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Public liable to be misled (para. 2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Cure of non-compliance through amendments of regulations governing use (para. 3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 4 5

I. Provisions of Artt. 66 or 67 not satisfied or regulations governing use contrary to public policy or to accepted principles of morality (para. 1) Art. 68 (1) CTMR provides for additional absolute grounds for refusal applicable only 1 to Community collective marks: Next to the examination every Community trade mark application has to undergo according to Artt. 36 and 37 CTMR, a Community collective mark according to Art. 68 (1) CTMR will also be refused if the provisions of Artt. 66 or 67 CTMR are not satisfied, or where the regulations governing use are contrary to public policy or to accepted principles of morality. 1

See Eisenfu¨hr/Schennen, Art. 67 CTMR mn. 2.

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CTMR Art. 68

Community Trade Mark Regulation

The reference to Art. 66 CTMR means, that the applicant for a Community collective mark has to fulfil the conditions for possible owners of Community collective marks according to Art. 66 (1) CTMR, namely, that he is an association of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, or that he is a legal person governed by public law (see for details Art. 66 mn. 9 et seq.). Furthermore, the Community collective mark applied for according to Art. 66 (1) CTMR has to be capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings (for details see Art. 66 mn. 7 et seq.). As far as the absolute ground for refusal laid down in Art. 7 (1)(c) CTMR is concerned, Community collective marks in derogation therefrom according to Art. 66 (2) CTMR may consist of signs for indications which may serve, in trade, to designate the geographical origin of the goods or services applied for (for details see Art. 66 mn. 15 et seq.). 3 Regulations governing the use of a Community collective mark, which are mandatory according to Art. 67 (1) CTMR, most not be contrary to public policy or to accepted principles of morality. This will be the case if the regulations e. g. contain provisions discriminating on the grounds of sex, creed or race, prohibiting women from using the mark1 or if the use of a Community collective mark shall depend on other factors having nothing to do with the collective mark and its use, or the goods or services applied for, like agreements on pricing or other agreements contrary to antitrust law. 2

II. Public liable to be misled (para. 2) 4

Art. 68 (2) CTMR provides that an application for a Community collective mark may be refused where the mark is misleading as regards its character or significance, in particular, if the collective mark is likely to be taken to be something else than a collective mark. This means e. g., that a Community collective mark must not give the impression that it is available for use by anyone who is able to meet certain objective standards, because a Community collective mark is available for use only by the members of its owner.2 Furthermore, this absolute ground for refusal will be applicable e. g. if the mark applied for cannot be perceived as a collective mark, but only as an individual trade mark, because it is designed in a way that it gives the impression of a single commercial origin only, and not of a collective origin.

III. Cure of non-compliance through amendments of regulations governing use (para. 3) 5

According to Art. 68 (3) CTMR, the applicant has the right to amend the regulations governing the use of the Community collective mark to bring the application in conformity with Art. 68 (1) and (2) CTMR. Insofar, the examiner must give the applicant an adequate period of time to remove the deficiency by amending the regulations, e. g. by removing the discriminating or antitrust-law violating clause. 1 Examples given by OHIM, The Manual Concerning Proceedings before the Office, Part B, Examination, 3.3.3. 2 Examples given by OHIM, The Manual Concerning Proceedings before the Office, Part B, Examination, 3.3.2.

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Use of marks

Art. 70 CTMR

Article 69 Observations by third parties Apart from the cases mentioned in Article 40, any person, group or body referred to in that Article may submit to the Office written observations based on the particular grounds on which the application for a Community collective mark should be refused under the terms of Article 68. Art. 69 extends the right of third parties provided for by Art. 40 CTMR to file 1 observations against a Community trade mark application relating to absolute grounds for refusal laid down in Art. 7 CTMR to the extended grounds for refusal applicable to Community collective marks according to Art. 68. There are no official fees for the submission of such third party observations. The observations filed by third parties will be examined by the Office; however, the third party does not become a party to the proceedings before the Office, Art. 40 (1)(2) CTMR. Once the written statement has been submitted, the Office shall forward the observations to the applicant, Art. 40 (2) CTMR. For further details see Art. 40 mn. 1 et seq.

Article 70 Use of marks Use of a Community collective mark by any person who has authority to use it shall satisfy the requirements of this Regulation, provided that the other conditions which this Regulation imposes with regard to the use of Community trade marks are fulfilled. Any Community trade mark must be put to genuine use within a period of five years 1 following registration, Art. 15 (1) CTMR. Otherwise, it will no longer be enforceable and become vulnerable to cancellation, Artt. 42 (2), 51 (1), 57 (2), 99 (3), 100 (5) CTMR. As a further principle of Community trade mark law, however, use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor, Art. 15 (2) CTMR, so that e. g. a use of a Community trade mark by a licensee will be a use for the benefit of the owner to meet the requirements of genuine use laid down in Art. 15 (1) CTMR. Art. 70 CTMR declares this principle applicable also for Community collective marks, so that any use by a person who is authorized by the regulations governing the use of the Community collective mark will count for the benefit of the owner. Although this clarification would not have been necessary in view of Art. 15 (2) CTMR, because an authority to use a Community collective mark based on the regulations governing the use is of course also a use with the consent of the owner of the Community collective mark, it has to be kept in mind that collective marks will generally be used by more than one person or undertaking, and the owner of the collective mark will in many cases not use the mark himself.1 The authority to use a Community collective mark always follows from the regulations governing its use, which are mandatory, Art. 67 (1) CTMR (see Art. 67 mn. 3–4). Art. 70 CTMR furthermore clarifies that next to the attribution of the use of the 2 Community collective mark by the members of the association for the benefit of the owner, all other conditions with regard to the use of Community trade marks must be fulfilled; they are laid down in Art. 15 CTMR. If the trade mark has not been used 1

See also GC Case T-138/09 Fe´lix Munoz Arraiza v OHIM, para. 24 and 28 (RIOJA v RIOJAVINA).

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CTMR Art. 71

Community Trade Mark Regulation

within the meaning of Art. 15 CTMR, the trade mark can be declared invalid (see Art. 51[1][a] CTMR). Particular attention has to be paid to the personal scope for collective marks since the proprietor of those marks may be more than just one person, e. g. an association or legal person governed by public law who will usually not put the mark to genuine use only by one single person. Art. 70 CTMR emphasizes therefore that the requirement of genuine use for collective marks is fulfilled when any person who is authorized to use it puts the collective mark to genuine use.2 The proprietor shall provide within the regulations governing the use the conditions of use of the collective mark (see Art. 67 CTMR).

Article 71 Amendment of the regulations governing use of the mark 1. The proprietor of a Community collective mark must submit to the Office any amended regulations governing use. 2. The amendment shall not be mentioned in the Register if the amended regulations do not satisfy the requirements of Article 67 or involve one of the grounds for refusal referred to in Article 68. 3. Article 69 shall apply to amended regulations governing use. 4. For the purposes of applying this Regulation, amendments to the regulations governing use shall take effect only from the date of entry of the mention of the amendment in the Register. Content I. Obligation to submit amended regulations governing use (para. 1) . II. Entry into force of changes of the regulations (paras 2 and 4). . . . . . . III. Observations by third parties (para. 3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 3

I. Obligation to submit amended regulations governing use (para. 1) 1

Art. 71 CTMR corresponds to Artt. 67 and 68 CTMR and relates to amended regulations governing the use of a Community collective mark. The provision requires the owner of a Community collective mark to submit to the Office, unsolicited1 and in due time, any changes of the regulations governing use of the mark (see Art. 67 CTMR). The obligation applies to both time periods, during the application process and after the registration; in both cases, the Office will examine ex officio whether the changes of the regulations governing use comply with the requirements of Artt. 66 and 67 CTMR.

II. Entry into force of changes of the regulations (paras 2 and 4) 2

Any amendment to the regulations governing the use of a Community collective mark done after its registration have to comply with Artt. 67 and 68 CTMR. If not, the amended regulations will not be accepted by the Office, Art. 71 (2) CTMR, and furthermore will not become effective, Art. 71 (4) CTMR. This means, that amendments 2 1

See also GC Case T-138/09 Fe´lix Munoz Arraiza v OHIM, para. 24 and 28 (RIOJA v RIOJAVINA). Stro¨bele/Kober-Dehm, MarkenG, § 104 mn. 1.

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Persons entitled to bring an action for infringement

Art. 72 CTMR

to the regulations governing the use of a Community collective mark will not become effective at the time the owner of the Community collective mark changes them, but only upon entry of the amended regulations in the register, Art. 71 (4) CTMR. The entry into the register is therefore constitutive.

III. Observations by third parties (para. 3) See Art. 69 mn. 1 for further details.

3

Article 72 Persons who are entitled to bring an action for infringement 1. The provisions of Article 22 (3) and (4) concerning the rights of licensees shall apply to every person who has authority to use a Community collective mark. 2. The proprietor of a Community collective mark shall be entitled to claim compensation on behalf of persons who have authority to use the mark where they have sustained damage in consequence of unauthorised use of the mark. Content I. Entitlement to bring an action for infringement (para. 1) . . . . . . . . . . . . . II. Claiming compensation on behalf of persons with authority to use the mark (para. 2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2

I. Entitlement to bring an action for infringement (para. 1) Art. 72 CTMR deals with the legal status of the proprietor of the Community 1 collective mark in relation to other members of the association. Paragraph 1 refers to the general principle that a licensee may bring proceedings for infringement of the trade mark only if the trade mark proprietor has consented thereto (see Art. 22 (3) CTMR). Furthermore, the licensee may, for the purpose of obtaining compensation for damages suffered by him, intervene in infringement proceedings brought by the trade mark proprietor (see Art. 23 (4) CTMR). According to paragraph 1, these general rules shall equally apply to the persons authorized to use a Community collective mark. This authorization must be granted by the regulations governing the use of the collective mark according to Art. 67 (2)(1) CTMR. Besides the latter, Art. 72 CTMR fully corresponds with Art. 22 (3) and (4) CTMR.

II. Claiming compensation on behalf of persons with authority to use the mark (para. 2) Further to the general rule that the proprietor of a Community trade mark is capable 2 of claiming compensation only for his own damages in a trade mark infringement matter (see Art. 22 mn. 34 et seq.), Art. 72 (2) CTMR provides for an additional right of

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CTMR Art. 73

Community Trade Mark Regulation

the proprietor of a Community collective mark acting as a plaintiff in an infringement proceeding to claim compensation also for third party damages.1

Article 73 Grounds for revocation Apart from the grounds for revocation provided for in Article 51, the rights of the proprietor of a Community collective mark shall be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings, if: (a) the proprietor does not take reasonable steps to prevent the mark being used in a manner incompatible with the conditions of use, where these exist, laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register; (b) the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in Article 68 (2); (c) an amendment to the regulations governing use of the mark has been mentioned in the Register in breach of the provisions of Article 71 (2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of those provisions. Content I. Additional grounds for revocation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Failure to take reasonable steps against uses contrary to the regulations (lit. a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Specific risk of deception (lit. b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Amendments of the regulations governing use (lit. c) . . . . . . . . . . . . . . . . .

1 2 4 5

I. Additional grounds for revocation 1

The purpose and nature of collective marks is to distinguish the goods or services of the members of an association (see Art. 66 mn. 7 et seq.). As a consequence, the appropriate treatment of collective trade marks requires also a specifically created body of revocation grounds. In addition to the grounds referred to in Art. 51 CTMR, a Community collective mark shall also be revoked (a) if the proprietor does not take reasonable steps to prevent the mark being used in a manner incompatible with the conditions of use, where these exist, laid down in regulations governing use, and amendments to which have, where appropriate, been mentioned in the register, (b) if the manner in which the Community collective mark has been used by the proprietor has caused it to become liable to mislead the public according to Art. 68 (2) CTMR, or (c), if an amendment to the regulations governing the use of the Community collective mark has been entered into the register contrary to Art. 71 (2) CTMR, unless the regulations have been amended again to comply with the requirement of that provision (c).

1

See also v. Mu¨hlendahl/Ohlgart, p. 89.

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Grounds for revocation

Art. 73 CTMR

II. Failure to take reasonable steps against uses contrary to the regulations (lit. a) The rights of the proprietor of the collective mark shall be declared invalid according 2 to Art. 73 (a) CTMR if the collective mark has been used contrary to the regulations governing use (see Art. 67 CTMR mn. 1 with regard to the obligation to submit regulations governing the use). This ground for revocation applies when any person, whether entitled to use the collective mark or not1, uses the collective mark in a manner not in line with the regulations, and when the trade mark proprietor fails to take reasonable steps to prevent such uses. Taking due account to the underlying purpose of Community collective mark protection, it follows that the requirements for these measures should not exceed the ceilings of reasonableness.2 The measures must be reasonable and the infringing use by third parties must be likely to weaken the distinctive character of the collective mark as an indication of the collective origin. This of course somewhat endangers a Community collective mark and therefore 3 should be observed by any association and legal person governed by public law who owns a Community collective mark. It is thereafter recommendable to put a scheme in place to monitor the use which is made of the Community collective mark, and also to monitor use by third parties not entitled to use it. Such a system can include an obligation by the members of the association or the licensees to the Community collective mark to keep an eye on the market and report possible abuses of the collective mark to the owner, it can include a reporting scheme whereby the members or licensees not only have to submit samples of how they use the collective mark, but also how many products they have produced and sold under the collective marks, and possibly also an obligation to prove the geographical origin, if the Community collective mark protects it, for the goods produced and sold under the mark.

III. Specific risk of deception (lit. b) A collective mark shall also be declared to be revoked according to Art. 73 (b) CTMR 4 in connection with Art. 68 (2) CTMR if the way in which the collective mark has been used by the proprietor has caused it to become liable to mislead the public as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a collective mark (see Art. 68 mn. 2 for more details).

IV. Amendments of the regulations governing use (lit. c) Pursuant to the third ground for revocation laid down in Art. 73 (c) CTMR, a 5 collective trade mark shall be declared to be revoked if an amendment to the regulations governing use, which does not fulfil the requirements of Art. 67 (see there mn. 1 et seq.) and 68 CTMR (see there mn. 1 et seq.), has nevertheless been registered by the Office.

1 2

Eisenfu¨hr/Schennen, GMV, Art. 73 mn. 4. Eisenfu¨hr/Schennen, GMV, Art. 73 mn. 4.

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CTMR Art. 74

Community Trade Mark Regulation

Article 74 Grounds for invalidity Apart from the grounds for invalidity provided for in Articles 52 and 53, a Community collective mark which is registered in breach of the provisions of Article 68 shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, unless the proprietor of the mark, by amending the regulations governing use, complies with the requirements of those provisions. Art. 74 CTMR clarifies that apart from the absolute (Art. 52 CTMR) and relative (Art. 53 CTMR) grounds for invalidity, a Community collective mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, if it was registered in breach of Art. 68 CTMR, namely, if the owner is not capable to own a Community collective mark according to Art. 66 (1) CTMR (for details see Art. 66 mn. 9 et seq.), if the Community collective mark is not capable to distinguish the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings according to Art. 66 (1) CTMR (for details see Art. 66 mn. 7 et seq.), if no regulations governing the use of the Community collective mark have been filed according to Art. 67 (1) CTMR or if the regulations governing the use of the Community collective mark do not comply with Art. 67 (2) CTMR (for details see Art. 67 mn. 3 et seq.). Furthermore, the regulations governing the use of the Community collective mark must not be contrary to public policy or to accepted principles of morality according to Art. 68 (1) CTMR (for details see Art. 68 mn. 3), and the Community collective mark itself must not be liable to mislead the public as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a collective mark according to Art. 68 (2) CTMR (for details see Art. 68 mn. 4). 2 The grounds for invalidity laid down in Article 74 CTMR are ‘soft’ insofar as the owner of the Community collective mark may cure the ground for invalidity by amending the regulations governing the use of the Community collective mark as it is explicitly provided for by Art. 74 CTMR corresponding to Art. 68 (3) CTMR. The Office will have to grant a reasonable deadline to the owner of the Community collective mark for such a cure (for further details see Art. 68 mn. 5). 1

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TITLE IX PROCEDURE SECTION 1 General provisions Article 75 Statement of reasons on which decisions are based Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. Rc. 12, 13 Bibliography: Ju¨ngst/Schork, ‘Der Anspruch auf rechtliches Geho¨r im Gemeinschaftsmarkenrecht’, Mitt. 2006, 109; Wu¨rtenberger, ‘Begru¨ndungszwang und Pra¨klusion im gemeinschaftsrechtlichen Markeneintragungsverfahren’, MarkenR 2003, 215

Content A. Importance and role of the provision. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. General purpose . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Systematic position. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Requirements of the provision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Decision of the Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Statement of grounds . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. In ex-parte proceedings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. In inter-parte proceedings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Right to be heard . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Scope . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Reasons or evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Legal opinion and legal basis. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Form of decisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 3 5 5 7 8 12 15 17 18 19 21 26 28

A. Importance and role of the provision Art. 75 is the first and most general provision in Title IX of the Regulation, titled 1 ‘Procedure’.1 This position in itself entails the importance of the provision from a procedural perspective. It is not, however, a substantive provision requiring decisions to be correct on the substance, i. e. applying the material test correctly.2

1

For the parallel provision in Art. 62 CDR, see Hanne, in Hasselblatt, CDR, Art. 62. GC Case T-490/07 Notartel v OHIM – SAT.1 (R.U.N.), [2009] ECR II-00245, mn. 27; GC Case T-349/ 03 Corsica Ferries France v Commission, [2005] ECR II-02197, mn. 58 and 59. 2

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CTMR Art. 75

Community Trade Mark Regulation

I. General purpose 2

Under Art. 75, decisions are required to state the reasons on which they are based. That duty has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision.3 Essentially, Art. 75 reinforces two fundamental principals of fair trial and proceedings, namely, to prevent surprising decisions and to grant the right to be heard.

II. Systematic position This type of provision is not unique to the Community trade mark laws but a general principal instead, which can also be found identically or substantially similar in Art. 6 of the European Convention on Human Rights4, Art. 296 (2) of The Treaty on the Functioning of the European Union and Art. 253 of The Treaty Establishing the European Community, respectively, and in Artt. 87 (m), 89 (2) c), 99 of the Rules of Procedure of the Court of Justice.5 Similarly, national constitutional laws within the Member States of the European Union often provide comparable or identical procedural rights, e. g. Art. 103 (1) of the German Constitutional Code. The Community Design Regulation covers identical provisions.6 4 OHIM as subject of this procedural provision was established as a body of the Community having legal personality and exercising the implementing powers which are conferred on it by this Regulation, operating within the framework of Community Law so that it was necessary to ensure that parties who are affected by decisions made by OHIM are protected by the law, see Recitals 12 and 13 of the Regulation. 3

B. Requirements of the provision I. Decision of the Office The duty to state reasons applies for all decisions of the Office. According to Art. 130, for taking decisions in connection with the procedures laid down in the Regulation, the following are competent: Examiners, Opposition Divisions, the Administration of Trade Marks and Legal Division, Cancellation Divisions and Boards of Appeal. Artt. 131–135 define the respective body’s competence and composition. Generally, Art. 75 is applicable for all Office decisions but only for Office decisions, not for Court judgments.7 6 A decision in the sense of Art. 75 is each and every determination arrived at after consideration. Consequently, Art. 75 does not only apply for those determinations/ 5

3 GC Case T-378/11 Franz-Wilhelm Langguth Erben v OHIM (Medinet), not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 14; GC Case T-351/08 Matratzen Concord v OHIM – Schnitzler/Rodriguez (Matratzen) [2010] ECR II-00119, mn. 17. 4 See also: Wu ¨ rtenberger, MarkenR 2003, 215. 5 See for further details, Lange, Marken- und Kennzeichenrecht, mn. 6412; Engin-Deniz, Markenschutzgesetz, page 660. 6 Council Regulation (EC) No. 6/2002 of 12 December 2001, OJ L3, 5.1.2002, p. 1.–24. 7 See above A.II., and at Artt. 87 m), 89 (2) c), 99 of the Rules of Procedure of the Court of Justice.

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Statement of reasons on which decisions are based

Art. 75 CTMR

conclusions which terminate proceedings and are open to legal redress or further legal remedy, Art. 58 (1), but also for those determinations/conclusions which do not terminate proceedings and are not as such open to legal redress or remedy, Art. 58 (2). If the Office uses the term ‘decision’, Art. 75 is applicable. Even if the Office does not use the term ‘decision’, Art. 75 is applicable, if the notification, communication or notice is in fact a decision because it effectively terminates proceedings as regards one of the parties. This applies, according to jurisprudence of the European Court of Justice, also for the procedural notification that an opposition is found admissible. This decision is open to appeal with the final decision on the substance8, so that the same applies as under R 17 (5) of the Implementing Regulation, according to which rejecting an opposition as inadmissible, is a decision in the sense of Art. 75. Therefore, the Office cannot skirt the procedural duties to state reasons and to grant the right to be heard.9

II. Statement of grounds Although Art. 75 reads that the Office only shall state the reasons on which the 7 decision is based, this is not discretionary, it is a procedural duty. Case-law has established the specific requirements to meet this duty in diverse procedural situations including ex-parte proceedings and inter-parte proceedings. The standard is not always the same but there are common elements. Lack of statement of grounds or insufficient statement of grounds violate fundamental principles of due process and have to be considered ex officio by the Courts.10

1. General The duty to state reasons is a consequence of the duty to hear the parties.11 The 8 statement of reasons has to be clear and concise. Whether a decision meets the minimum requirements must not be limited to the decision as such but also has to consider its context and the full set of legal provisions available in the specific field of law.12 The purpose of this formal requirement is to allow interested parties to know the justification for the measure taken and to enable another authority to reveal the legality of the decision. If there is no such interest, there is no duty to state reasons. In other words: where there is no party adversely affected by a decision, there is no need to state reasons. Hence, the decision to accept a Community trade mark application for publication and to register it, is not substantiated. Where there is a duty to state reasons, it must also be borne in mind that it is an 9 essential procedural requirement which must be distinguished from the question whether the reasoning is well founded. The latter is concerned with the substantive legality of the measure at issue. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those 8 CJ Case C-402/11 Ja ¨ ger & Polacek v OHIM (Redtube), available at www.curia.eu Õ search Case law, mn. 48–53; explicitly lifting GC Case T-488/09 Ja¨ger & Polacek v OHIM (Redtube), [2011] ECR II-00135, mn. 91, 95; this judgment of the CJ is much criticized: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 42 mn. 41. 9 See also Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 58 mn. 4–6. 10 CJ Case C-265/97 VBA/Florimex [2000] ECR I-02061, mn. 114 (relating to Art. 190 EC); CJ Case C45/11 Deutsche Bahn v OHIM (Light Grey above Red) [2011] ECR I-00190, mn. 57. 11 As discussed below III. mn. 17 et seq.; Wu ¨ rtenberger, MarkenR 2003, 215. 12 GC Case T-262/09 Safariland v OHIM – Def-Tec (First Defense) [2011] ECR II-01629, mn. 91.

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CTMR Art. 75

Community Trade Mark Regulation

errors will vitiate the substantive legality of the decision but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect.13 10 The statement of reasons has to include the decisive set of facts and the legal basis and consequences but there is no requirement to provide an account which follows exhaustively and one by one all the reasoning articulated by the parties. The reasoning may therefore be implicit on condition that it enables the parties or persons concerned to know why the decision was taken.14 This nevertheless requires that the Office’s assessment contains reference to the evidence submitted – without such reference, the reasoning cannot be implicit, it is not existent.15 11 It is important to note that the extent of the duty to state reasons shall be assessed on the basis of the decision itself, not on the basis of the view or position taken by the party (adversely) affected. Consequently, it is generally sufficient to meet the procedural duty by referring to another document or previous decision that had been communicated to the parties concerned.16 It is, however, not sufficient to simply refer or make reference to provisions in the (Implementing) Regulation without any substantiation.17 The same applies when reference – without further reasoning – is made to the Office Manual/Guidelines on Trade Mark Practice, as these are only useful aids in everyday practice, without the force of binding rules.18 Art. 75 does not require to disprove legal argument or opinion expressed by the parties, nor does it require the Office to notify the parties how it intends to decide before the decision is actually taken.19

2. In ex-parte proceedings Ex-parte proceedings relate to those between the Office and one party only, and particularly cover the examination of a Community trade mark application on absolute grounds for refusal. 13 In this regard, it is important to note that, where, pursuant to Art. 7, the Office is of the opinion that the trade mark application may not be acceptable for all or any part of the goods or services applied for, it shall notify the applicant of the grounds for refusing registration pursuant to R 11 (1) of the Implementing Regulation, and grant a period within which observations may be submitted, before an application may be refused pursuant to R 11 (3) of the Implementing Regulation. Consequently, the duty to state reasons does not only apply for the decision but also and more importantly, for the notice of irregularity. This is an essential part of the procedural right to be heard, discussed in more detail below III. The Office has the duty to allow oneself to be heard in reply to what the Office considers would be a correct decision on the application before it. If the applicant does not submit observations, it is sufficient to meet the obligation under 12

13 GC Case T-378/11 Franz-Wilhelm Langguth Erben v OHIM (Medinet), not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 15. 14 GC Case T-262/09 Safariland v OHIM – Def-Tec (First Defense) [2011] ECR I-01629, mn. 92; CJ Joined Cases C-204/00, C-205/00, C-211/00, C-213/00, C-217/00 and C-219/00 Aalborg Portland and others v Commission [2004] ECR I-00123, mn. 46 (by analogy); CJ Case C-020/08 Enercon v OHIM (Windenergiekonverter) [2008] ECR I-00179, mn. 36; Hildebrandt, Marken und andere Kennzeichen, § 28 mn. 44 with further references. 15 GC Case T-605/13 Alma-The Soul of Italian Wine v OHIM – Miguel Torres SA (Sotto Il Sole Italiano Sotto Il Sole), not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 20–24. 16 GC Case T-304/06 Reber v OHIM – Chocoladefabriken Lindt und Spru ¨ ngli (Mozart) [2008] ECR II01927, mn. 46–48; Lange, Marken- und Kennzeichenrecht, mn. 6378. 17 OHIM Dec. of 11.3.1998 R-4/1998-2 – IX, mn. 11. 18 OHIM Dec. of 11.3.1998 R-4/1998-2 – IX, mn. 11. 19 OHIM Dec. of 23.10.2008 R-964/2008-2 – Ryzek, mn. 23.

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Statement of reasons on which decisions are based

Art. 75 CTMR

Art. 75 to refer to the statement of reasons in the notice of irregularity.20 If observations are filed, the procedural duty to state reasons covers at least a short response and review of the arguments. Again, it is not required to disprove each and every aspect under this procedural rule. Also, the duty to state reasons does not prevent the Office from generalizing. It is 14 therefore sufficient from the procedural point of view to indicate a reason for refusal applicable for all of the goods or services covered or, at least, for a specific group of goods or services, without applying this legal argument in detail for each and every product or service separately.21 In light of the foregoing, the Office may use only general reasoning, where the same ground is given for a category or group of goods or services or all goods and services, respectively.22 It is, however, in breach of Art. 75 if the decision does not show at all which goods and/or services are refused and which are not.23 It is not acceptable to dissect a trade marks application in two parts and holding that each was descriptive without saying that the combination thereof was also descriptive or without distinctive character (not more than the sum of its component parts)24. It was in violation of Art. 75 to refuse a trade marks application because of the significance of ‘cell technology’ in science without relating this significance to the products claimed – their characteristics and intended use, to name a few.25

3. In inter-parte proceedings This category will typically cover proceedings in relation to opposition, revocation 15 and invalidity. Particularly with respect to relative grounds for refusal/invalidity, namely, prior rights, it is standing Office practice to restrict the examination to only one prior right, even though it is procedurally possible to challenge an application or registration based on a multitude of prior rights. Consequently, the Office decision will only address this single prior right (if sufficient to challenge the younger right (trade mark application) as requested) but will not mention the other prior rights at all. This practice has been accepted by the European Courts and does not represent a procedural error under Art. 75.26 This applies, where the legal basis for a challenge and the decision are congruent. Where the Office, particularly in second instance at the Boards of Appeal, dissents and rejects or dismisses an action based on one count, it is required to examine all the other counts and legal argument raised, before such action could be held entirely unsuccessful.27 20

Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 75 mn. 12. GC Case T-345/99 Harbinger Corporation v OHIM (Trustedlink) [2000] ECR II-03525, mn. 45–47; GC Case T-304/06 Reber v OHIM – Chocoladefabriken Lindt und Spru¨ngli (Mozart) [2008] ECR II-01927, mn. 52; CJ Case C-239/05 BVBA Management, Training & Consultancy v Benelux – Merkenbureau (The Kitchen Company) [2007] ECR II-01455, mn. 37 and 38; it is in breach of Art. 75 to refuse a trade mark for a Nice Class, which has not been part of the notice of irregularity: OHIM Dec. of 21.9.2000 R-424/ 1999-2 – fabric pattern, mn. 14, 15; Lange, Marken- und Kennzeichenrecht, mn. 6378, 6379. 22 CJ Case C-239/05 BVBA Management, Training & Consultancy v Benelux – Merkenbureau (The Kitchen Company), mn. 37 and 38; CJ Case 17/08 MPDV Mikrolab v OHIM (manufacturing score card) [2009] ECR I-00016, mn. 34; CJ Case C-494/08 Prana Haus v OHIM (PRANAHAUS) [2009] ECR I-00210, mn. 46; Lange, Marken- und Kennzeichenrecht, mn. 6379. 23 OHIM Dec. of 28.2.2001 R-041/2000-3 – @NET INDEX. 24 CJ Case C-329/02 SAT.1 v OHIM (Sat.2) [2004] ECR I-08317, mn. 43. 25 CJ Case C-273/05 Celltech R&D v OHIM (CELLTECH) [2007] ECR I-02883, mn. 13, 41, 45; GC Case T-260/03 Celltech R&D v OHIM (CELLTECH) [2005] ECR II-01215, mn. 36; Lange, Marken- und Kennzeichenrecht, mn. 6380. 26 GC Case T-215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II-00711, mn. 97. 27 GC Case T-215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II-00711, mn. 98–101. 21

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CTMR Art. 75 16

Community Trade Mark Regulation

The practice to consider only one of a potential multitude of prior rights of course offers a significant procedural advantage for the Office but significantly disadvantages the owner of the prior rights. In consequence of the practice, cases are heard and tried only very limited, requiring the owner of the prior right to take additional action at national trade mark Offices, resulting in significantly higher costs and efforts, for the sake of the Office’s procedural economy. A simple example may illustrate the problems: The opponent owns prior national trade marks in ten Member States of the European Union and uses all these rights in an opposition against a Community trade mark application. The Office, for procedural economy, considers the opposition only on the basis of one prior national trade mark and upholds it, without even mentioning the other national rights in the decision. The Community trade mark will be cancelled, with the option to convert according to Art. 112 of the Regulation. Assuming the Community trade mark is converted, it again collides with the national trade marks that have not served as basis for the decision. The owner of the prior rights would have to take action separately on a national level. To avoid such multitude of national proceedings, it would be much preferable to put the Office under an obligation to decide upon all prior rights. This is also in the interest to avoid contradicting decisions throughout the European Union. Essentially, this should be part of the procedural right to be heard, and the Office practice be amended.

III. Right to be heard 17

Under Art. 75, Office decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. The general principle of protection of the right to defend oneself is enshrined in the law by that provision.28 According to that general principle of Community law, a person whose interests are appreciably affected by a decision taken by the Office must be given an opportunity to make his point of view known.29

1. General 18

The right to be heard covers all the factual and legal evidence which forms the basis for the decision-making act but not the final position which the Office intends to adopt30.

2. Scope 19

Art. 75 has to be considered ex officio.31 A breach of the right to be heard renders the decision invalid and it must be annulled32 but it is not void. Therefore, the wrong (first instance) decision has to be lifted and the case has to be referred back. Different applies, where a new decision with the same operative part as the decision under appeal 28 GC Case T-320/03 Citycorp v OHIM (Live richly) [2005] ECR II-03411, mn. 21; GC Case T-262/09 Safariland v OHIM – Def-Tec (First Defense) [2011] ECR II-01629, mn. 79. 29 CJ Case C-17/74 Transocean Marine Paint v Commission [1974] 01063, mn. 15; GC, Case T-34/00 Eurocool Logistik v OHIM (Eurocool) [2002] ECR II-00683, mn. 21; GC Case T-402/07 Kaul v OHIM – Bayer (Arcol), mn. 55. 30 GC Case T-16/02 Audi v OHIM (TDI), mn. 75; GC Case T-402/07 Kaul v OHIM – Bayer (Arcol) [2009] ECR II-00753, mn. 55; GC Case T-262/09 Safariland v OHIM – Def-Tec (First Defense), mn. 80. 31 GC Case T-388/00 Institut fu ¨ r Lernsysteme v OHIM – ELS Educational Services (ILS/ELS) [2009] ECR II-04301, mn. 59 with further references in Case-law. 32 GC Case T-388/00 Institut fu ¨ r Lernsysteme v OHIM – ELS Educational Services (ILS/ELS), mn. 60; GC Case T-137/09 Nike International v OHIM – Munoz Molina (R10) [2010] ECR II-05433, mn. 30.

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Art. 75 CTMR

may be adopted at the time of the ruling on the appeal: Under such circumstances the appeal must, in principle, be dismissed even if the decision under appeal is unlawful on account of a procedural error.33 The same applies and the decision under appeal does not need to be lifted, where it can be upheld based on other reasons34 or where the Boards of Appeal can exercise their power within the competence of the Office department (power to replace) according to Art. 64 (1).35 Therefore, the right to be heard is not an absolute right but violated only under 20 specific circumstances. The plea that the Boards of Appeal disregarded Art. 75 must be part of the Action to the General Court; otherwise, it will not be heard.36 a) Reasons or evidence. Art. 75 in its English translation reads that a decision should 21 be based only on ‘reasons or evidence’ on which the parties have had an opportunity to present their comments, whereas the official German translation reads ‘Gru¨nde’, the official French version reads ‘motifs’, the Italian version reads ‘motivi in merito’, and the Spanish version reads ‘motivos’. Based on the literal analysis of these terms, the right to be heard, as laid down by the second sentence of Art. 75, covers all the factual and legal evidence which forms the basis of the act of making the decision but it does not apply to the final position (legal conclusion) which the administration intends to adopt. This interpretation is confirmed by the jurisprudence of the European Courts and represents standing practice.37 It follows that if an application or order sought shall be rejected or dismissed, the 22 reason for this legal conclusion has to be notified to the parties concerned, and it is required to grant sufficient time to submit observations of typically not less than one month, R 71 (1) of the Implementing Regulation. This also applies in case new facts or evidence arise only in course of proceedings. This is particularly relevant for inter-parte proceedings, where the Office is required to forward all observations, facts and evidence submitted by one party to the other party for filing observations. This general rule is restricted by R 69 of the Implementing Regulation providing that such notification may be dispensed with where there are no new pleadings and the matter is ready for decision. This general rule is also restricted in that there will be no endless forth and back of observations. Particularly in opposition proceedings, R 20 of the Implementing Regulation needs to be observed so that an opposition is ready for decision upon substantiation without observations filed by the applicant, R 20 (3) of the Implementing 33 GC Case T-16/02 Audi v OHIM (TDI) [2003] ECR II-05167, mn. 82; Engin-Deniz, Markenschutzgesetz, page 660/661. 34 CJ Case C-447/02 KWS Saat v OHIM (KWS/Orange) [2004] ECR I-10107, mn. 49, 50; EnginDeniz, Markenschutzgesetz, pp. 662/663 with further references; It is therefore, to a limited extent, possible to cure procedural errors in the next instance, i. e. in the relation between Boards of Appeal and Office division (examination or opposition), see: CJ Case C-361/01 Kik v OHIM (KIK) [2003] ECR I-08283, mn. 101; CJ Case C-64/02 Erpo Mo¨belwerk v OHIM (Das Prinzip der Bequemlichkeit) [2004] ECR I-10031, mn. 52; CJ Case C-447/02 KWS Saat v OHIM (KWS/orange), mn. 47 et seq.; Hildebrandt, Marken und andere Kennzeichen, § 28 mn. 36; Ju¨ngst/Schork, Mitt. 2006, 106, 113; a critical assessment of this practice can be found at Wu¨rtenberger, MarkenR 2003, 215, 218. 35 See, for a variety of procedural situations: v. Kapff, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 1887. 36 GC Case T-169/03 Sergio Rossi v OHIM – Sissi Rossi (Sissi Rossi) [2005] ECR II-00685, mn. 56 et seq.; confirmed on Appeal by CJ Case C-214/05 Sergio Rossi v OHIM – Sissi Rossi (Sissi Rossi) [2006] ECR I-07057, mn. 58: Based on Art. 48 (2) of the Rules of Procedure of the GC; Hoffrichter-Daunicht, in Bu¨scher/Dittmer/Schiwy, Gewerblicher Rechtsschutz Urheberrecht Medienrecht, Art. 75 mn. 5. 37 GC Case T-273/02 Kru ¨ ger v OHIM – Calpis (Calpico) [2005] ECR II-01271, mn. 65; GC Case T-347/ 10 Adelholzener Alpenquellen v OHIM (form of a bottle with relief structure), not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 56; Hildebrandt, Marken und andere Kennzeichen, § 28 mn. 48 with further references.

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Regulation, and an opposition is typically ready for decision after two sets of submissions, R 20 (4) of the Implementing Regulation. In essence, the right to be heard is a right but no obligation to hear so that, where a party waives such right by silence, the Office is free to adopt a decision on the merits of the case. This conclusion requires proper service and notification of the Office’s opinion in the first place.38 23 If the parties have a chance to submit observations in first instance, the right to be heard is granted and the Office is not again required (in appeal proceedings) to grant the right to be heard on the same count.39 This is also valid if the decision under Appeal is lifted by the General Court and referred back to the Boards of Appeal, provided that the facts of the case did not change meantime.40 24 It is in breach of Art. 75 to reject an opposition as inadmissible, before the opponent had an opportunity to file its observations, even if it is not possible to cure the defect that renders the opposition inadmissible.41 It is in breach of Art. 75, if the Office in its decision refers to information and content of a website without notifying the party concerned of this site in advance of decisionmaking. It is not sufficient to refer only to a website address (URL), as contents thereof may change every now and then. It is required to paste or attach the website’s contents to the Office decision.42 Articles taken from the online encyclopaedia Wikipedia have been held insufficient because there was no reliability of the contents thereof.43 The Office must not assume or take for granted that specific information is known to the party concerned. Where the Office assembles of its own motion facts intended to serve as a basis for its decision, it is under an obligation to notify the parties of those facts.44 If a party or one of the parties submits observations relating to reasons or evidence which the Office does not fully understand, the Office is required to ask the respective party to further explain or clarify.45 If in inter-parte proceedings the Office intends to consider facts or evidence submitted by one party outside due time, it has to hear the other party’s comments on that procedural question.46 The right to be heard is violated, if the decision is based on facts or evidence, which the Office communicated, but also communicated later on, before the decision was taken, that this point of view was no longer maintained.47 25 The Office is under no obligation to notify the parties of commonly known or notorious facts48 (literal meanings of words49 or apparent consumer habits50 as an 38

This will be dealt with in Art. 79 below. GC Case T-303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita/Solevita) [2005] ECR II-01917, mn. 62. 40 GC Case T-262/09 Safariland v OHIM – Def-Tec (Frist Defense) [2011] ECR II-01629, mn. 84. 41 OHIM Dec. 31.7.1998 R-006/1998-1 – Almirall. 42 GC Case T-317/05 Kustom v OHIM (threedimensional shape of a guitar) [2007] ECR II-00427, mn. 58, 59; thereafter, the Office practice was changed by ‘Practice Note’ of 14 March 2007; it is not in breach of Art. 75, if such website reference is only affirmative for the result sufficiently shown and proved otherwise: GC Case T-216/02 Fieldturf v OHIM (Looks like grass… Feels like grass… Plays like grass) [2004] ECR II-01023, mn. 41; Bender, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 382. 43 GC Case T-344/07 O2 v OHIM (Homezone) [2010] ECR II-00153, mn. 46; See also, Bender, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 376. 44 CJ Case C-447/02 KWS Saat v OHIM (KWS/Orange) [2004] ECR I-10107, mn. 43–45; GC Case T-242/ 02 Sunrider v OHIM (Top) [2005] ECR II-02793, mn. 61; Engin-Deniz, Markenschutzgesetz, page 662. 45 OHIM Dec. of 1.2.2005 R-225/2004-2 – l’Altra Moda, mn. 36. 46 GC Case T-174/01 Goulbourn v OHIM – Redcats (Silk Cocoon) [2003] ECR II-00789, mn. 47 et seq. 47 OHIM Dec. of 10.04.2006 R-277/2005-2 – Signalware, mn. 12. 48 GC Case T-325/04 Citicorp v OHIM – Link Interchange Network (Worldlink/Link) [2008] ECR II00029, mn. 51; opinion surveys do not constitute well-known or notorious facts: GC Case T-85/08 Exalation v OHIM (Vektor-Lycopin) [2010] ECR II-03837, mn. 29. 49 GC Case T-424/07 Pioneer Hi-Bred International v OHIM (Optimum) [2009] ECR II-00003, mn. 46, 47. 50 GC Case T-3/04 Simonds Farsons Cisk v OHIM – Spa Monopole (Kinji by Spa) [2005] ECR II-04837, mn. 71 and 72. 39

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example)51. Obviously, the Office is not required to hear the party on facts or evidence presented by this party itself.52 b) Legal opinion and legal basis. It has been outlined above that the Office is under 26 no obligation to give notice of its final legal conclusion. The Office is therefore under no obligation to exchange its legal conclusion with the parties concerned. The fact that the office operates differently in practice and extensively argues along the lines of the Regulation, is due to the further legal obligation to apply the laws correctly. But this is a duty under substantive laws, not under procedural rules like Art. 75. The legal basis of an intended decision has to be notified to the parties, though. 27 Whereas the Office is free to amend or change the legal basis (rejection based on Art. 7 (1)(b) instead of Art. 7 (1)(c) as an example), the right to be heard fully applies and the Office has to invite the party concerned to submit observations.53 This applies because the amended or changed legal basis does not necessarily follow the same test, justify the same conclusion or carry the same legal consequences. It therefore was in breach of Art. 75 to change the legal basis from Art. 7 (1)(b) (lack of distinctive character) to Art. 7 (1)(e) (excluding shape of products or packaging thereof), as the latter absolute ground for refusal cannot be overcome by acquired distinctiveness, Art. 7 (3).54 Similar applies if the Office intends to change the legal basis from Art. 7 (1)(b) to Art. 7 (1)(c) (descriptiveness) because both provisions have their own relevance and must not be restricted to the common element of distinctive character.55 As a consequence, the Office has to issue a notification that it intends to amend or change the legal basis and it has to grant opportunity to comment thereon.56

IV. Form of decisions According to R 52 of the Implementing Regulation, decisions of the Office shall be in 28 writing. Where oral proceedings are held before the Office, the decision may also be given orally but has to be laid down in writing and notified to the parties afterwards. According to R 55 of the Implementing Regulation, any decision, communication or notice from the office shall indicate the department or division of the Office as well as the name or the names of the official or officials responsible. Decisions shall be signed by the official or officials or carry a printed, stamped or electronic seal of the Office. According to R 55 (2) of the Implementing Regulation, the President of the Office has determined means of identifying the department or division of the Office and the name of the official or officials responsible in decision EX-97-1, which was confirmed in Court jurisprudence.57 51

See also, below Art. 78 at B.I.4., mn. 16 et seq. GC Case T-303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita/Solevita) [2005] ECR II-01917, mn. 62; v. Kapff, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 1880. 53 OHIM Dec. of 14.3.2001 R-408/2000-3 – Watercell, mn. 25. 54 GC Case T-122/99 The Procter and Gamble Company v OHIM (Form of a soap) [2000] ECR II00265, mn. 40–47. 55 GC Case T-34/00 Eurocool Logistik v OHIM (Eurocool) [2002] ECR II-00683, mn. 17–27; OHIM Dec. of 30.05.2002 R-314/1999-1 – Top, mn. 29–33; OHIM Dec. of 13.9.2006 R-520/2006-2 – Tagger, mn. 19. 56 GC Case T-289/02 Telepharmacy Solutions v OHIM (Telepharmacy Solutions) [2004] ECR II-02851; the same applies in Appeal: GC Case T-36/01 Glaverbel v OHIM (design applied to the surface of goods) [2002] ECR II-03887; GC Case T-34/00 Eurocool Logistik v OHIM (Eurocool); Hoffrichter-Daunicht, in Bu¨scher/Dittmer/Schiwy, Gewerblicher Rechtsschutz Urheberrecht Medienrecht, Art. 76 mn. 4. 57 GC Case T-6/05 Def-Tec Defense Technology v OHIM – Defense Technology (First Defense) [2006] ECR II-02671, mn. 27. 52

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Decisions, communications and notifications do not carry a signature or facsimile signature in practice, following the President’s decision. 29 According to R 53 of the Implementing Regulation, linguistic errors, errors of transcript or obvious mistakes in a decision, may be corrected by the Office of its own motion or at the instance of a party to the proceedings.58 30 Decisions which are open to legal redress or legal remedy shall be accompanied by a written communication indicating what type of legal redress or legal remedy is available and in which term. Nevertheless, the parties may not plead any failure to communicate the availability proceedings so that the statutory terms to seek legal redress or legal remedy are not extended or set aside. This explicit consequence may significantly differ from national procedural laws in administrative proceedings, for instance, in Germany. 31 The quality of decisions significantly varies and sometimes it seems as if the responsible examiner or department lined up a number of boiler plates with only little reflection on the merits of the case, i. e. a detailed analysis of the case before it. This is not meant as scorching criticism, even though the handling sometimes is frustrating, it is a result of the fact that many of the staff are not necessarily fully legally qualified, the language of proceedings is not the mother tongue and – perhaps most important – not all the legal education available throughout the Member States puts an emphasis on detailed reasoning. To the contrary: Quite a few Member States’ legal systems would fully accept such short substantiation as typical scenario. Nonetheless: It will certainly be greatly appreciated among practitioners to improve these skills in internal continued education – for the benefit of all interested parties and for the sake of – perhaps – reducing the number of Appeals and Court actions.

Article 76 Examination of the facts by the Office of its own motion 1. In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. 2. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned. Bibliography: Bender, ‘Der Triumph der Gemeinschaftsmarke, Ihre Entwicklung in Rechtsprechung und Praxis im Jahr 2013 Teil 1 – Die absoluten Schutzversagungsgru¨nde’, MarkenR 2014, 41; Bender, ‘Das weite Ermessen des HABM bei der Behandlung verspa¨teten Vorbringens’, MarkenR 2007, 198; v. Kapff, ‘Centrotherm – Der Europa¨ische Gerichtshof la¨uft sich warm’, GRUR-Prax 2014, 5; Wu¨rtenberger, ‘Begru¨ndungszwang und Pra¨klusion im gemeinschaftsrechtlichen Markeneintragungsverfahren’, MarkenR 2003, 215.

Content A. Importance and role of the provision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. General purpose . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Systematic position . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Requirements of the provision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Proceedings before the Office. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Examination ex officio . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. General rule. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 58

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2. General restrictions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Restriction in case of inter-parte proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Scope . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Contentions of the parties. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Restriction relating to relief sought. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Scope . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Examples. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Restriction relating to submission outside due time . . . . . . . . . . . . . . . . . . . . 1. Facts and evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Definition of due time . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Term set . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) No term set . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Consequence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) General rule – discretion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Exceptions and re-exceptions – preclusion and discretion . . . . . . aa) Lex specialis . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . bb) Re-exceptions – discretion applicable . . . . . . . . . . . . . . . . . . . . . . . . . .

7 9 10 12 14 15 16 18 19 20 21 22 23 24 27 28 31

A. Importance and role of the provision As a general rule, the Office shall examine the facts of a case ex officio, i. e. of its own 1 motion. This applies in ex-parte proceedings, whereas this rule is restricted in interparte proceedings, Art. 76 (1). Next to the restrictions in Art. 76 (2), this obligation is additionally attenuated by the party’s obligation or parties’ obligations to cooperate, to participate and to tell the truth in proceedings. Art. 76 basically sets out the procedural interplay between the parties involved and the Office.1 In this regard, the Community trade mark law sets up its own standard which must not be confused or mixed-up with national procedural standards in the Member States2, as these may significantly differ and sometimes, are even impedimental to a correct understanding and construction of procedural rights and duties at the Office. If the Office acts in breach of Art. 76, the decision has to be lifted (annulled) upon Appeal or Court action but it is required for the party adversely affected to plead this violation sufficiently clear and to file reasoned observations to substantiate.3

I. General purpose Art. 76 (1) establishes the basic provision in Office proceedings that the Office shall 2 examine the facts of its own motion, with the aim that the Office serves as ‘master’ of proceedings, whereas it has the duty to hear the parties as a consequence of the right to be heard pursuant to Art. 75. Different applies in inter-parte proceedings, where all the parties to a proceeding have procedural duties to contribute and partake. In such cases, 1

For the parallel provision in Art. 63 CDR, see Hanne, in Hasselblatt, CDR, Art. 63. Like ‘Dispositionsmaxime’ (‘Beibringungsgrundsatz’ on the one hand an ‘Amtsermittlungsgrundsatz’ on the other hand would be procedural concepts applicable under German laws; see also Eisenfu¨hr/ Schennen, Gemeinschaftsmarkenverordnung, Art. 76 mn. 2; Hoffrichter-Daunicht, in Bu¨scher/Dittmer/ Schiwy, Gewerblicher Rechtsschutz Urheberrecht Medienrecht, Art. 76 mn. 7. 3 GC Case T-279/10 K-Mail Order v OHIM – IVKO (Men’z) [2011] ECR II-00283, mn. 10; GC Case T269/06 Rautaruukki v OHIM (Rautaruukki) [2008] ECR-00273, mn. 33 with further reference in Caselaw; ECHR, Application Nos. 25379/04, 21688/05 and 21770/05 by Paeffgen GmbH against Germany, decision of 18 September 2007: unsubstantiated claims are inadmissible. 2

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it shall not only be the Office’s obligation to collect the relevant facts and evidence to come to an informed decision.

II. Systematic position 3

There are no parallel provisions in the rules of procedure at the General Court or the European Court of Justice which is due to the fact that the Courts do not examine facts but only rule on the violation of substantive or procedural laws. Art. 76 is not conclusive; the provisions of the Implementing Regulation may establish different standards, limit or attenuate Art. 76. Particularly, R 19, 20 22, 40, 50 and 69 of the Implementing Regulation need to be considered, as they could serve as lex specialis in specific procedural situations.

B. Requirements of the provision I. Proceedings before the Office 4

Proceedings before the Office cover ex-parte proceedings and inter-parte proceedings, including but not limited to application, proprietary proceedings (Artt. 16–24), observations by third parties, opposition, surrender, revocation, invalidity and appeal. Art. 76 therefore concerns the entire ‘life’ of a Community trade mark. However, the standards and requirements to be respected may significantly differ in proceedings throughout the life of a Community trade mark.

II. Examination ex officio 5

That the Office examines of its own motion includes, first, the right to investigate a case before it, namely, with respect to facts and evidence, and, second, the obligation to consider arguments submitted by the parties.

1. General rule 6

As far as absolute grounds for refusal and for invalidity are concerned, the Office is generally in a position and therefore entitled to conduct own investigations, and to make use of all information available, particularly also covering parallel cases or proceedings already handled.4 There is no obligation to always fully investigate into potential facts or evidence. Typically, the Office engages in examinations only upon reasonable doubt.5 Examining a case ex officio does not require the Office to make itself 4 GC Case T-413/11 Welte-Wenu v OHIM – Commission (European Driveshaft Services EDS) not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 32; GC Case T-277/04 VitakraftWerke Wu¨hrmann v OHIM – Johnson’s Veterinary Products (Vitacoat) [2006] ECR II-02211, mn. 70, 71. 5 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 76 mn. 3: No obligation to investigate a case in all directions possible.

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acquainted with peculiar business or industry habits. It is sufficient to investigate a case on the basis of its own perception as potential target public.6

2. General restrictions Ex-officio examination as a general procedural principle is not backed up by a 7 procedural duty of the Office, except for the obligation according to Art. 75 to hear the parties, and the obligation to consider submissions by the parties. Consequently, there are general restrictions to the examination by the Office of its own motion. First, this rule does not change the onus and burden of proof which is on the 8 applicant in application proceedings and in invalidity action. Therefore, the parties involved are under a procedural and material obligation to provide evidence and facts in support of their position that a Community trade mark does not suffer from absolute grounds for refusal.7 Second, the parties to proceedings have to contribute to and partake in the examination of a case, and have to tell the truth.8 Consequently, the Office is under no obligation to examine into the acquired distinctiveness of a trade mark in question. It may consider only the facts and evidence as well as the arguments presented by the parties concerned. This is a consequence under the maxim ultra posse nemo obligatur (no one is obliged to do the impossible).9 Third, in case of absolute grounds for refusal and related invalidation actions according to Art. 52, the Office is under no obligation to check on absolute grounds, which have not been presented by the parties. This is due to the fact that the Community trade marks, once registered, carries the assumption of validity until proven to the opposite.10

III. Restriction in case of inter-parte proceedings Another general restriction regarding the examination of the facts by the Office of its 9 own motion applies, according to Art. 76 itself, in proceedings relating to relative grounds for refusal of registration.11 The rationale behind this provision is that, under such circumstances, not only one party and the Office are concerned but also another party, typically the owner of prior rights. The enforcement of prior rights against Community trade marks is not part of the Office’s tasks and obligations. This is different in some Member States of the European Union and also internationally, notably in proceedings at the United States Patent and Trade Mark Office and the Chinese Patent and Trade Mark Office. The Office has to maintain a neutral position and role in course of examination.12 6 GC Case T-329/10 Fraas v OHIM (Checked Pattern) available at www.curia.eu Õ search Case law, mn. 34, 35. 7 GC Case T-129/04 Develey Holding v OHIM (Shape of a Bottle) [2006] ECR II-00811, mn. 19–21; GC Case T-424/07 Pioneer Hi-Bred v OHIM (Optimum) [2009] ECR II-00003, mn. 46; GC Case T-476/08 Media-Saturn-Holding v OHIM (Best buy) [2009] ECR II-00240, mn. 31. 8 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 76 mn. 4 with further references in literature. 9 GC Case T-247/01 ECopy v OHIM (Ecopy) [2002] ECR II-05301, mn. 47. 10 Bender, MarkenR 2014, 41, 51. 11 In opposition and invalidation action; See also, Engin-Deniz, Markenschutzgesetz, page 661; regarding invalidation actions: GC Case T-288/03 Teletech Holdings v OHIM (Teletech International (TELETECH GLOBAL VENTURES)) [2005] ECR II-01767, mn. 65, 65. 12 GC Case T-107/02 GE Betz v OHIM – Artofina Chemcials (Biomate) [2004] ECR II-01845, mn. 87.

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CTMR Art. 76

Community Trade Mark Regulation

1. Scope The second clause of Art. 76 (1) applies for opposition proceedings and invalidity actions based on relative grounds, Artt. 41, 53. Also, this restriction applies for revocation actions based on lack of genuine use, Art. 51 (1)(a), following R 40 (5) of the Implementing Regulation providing that the defendant in such revocation action is solely responsible to furnish proof of genuine use, applying R 22 (2)–(4) mutatis mutandis. This is perhaps the most important systematic limitation to the general rule of Art. 76 and another reminder to always consider the Implementing Regulation. 11 A similar restriction applies regarding proprietary proceedings, Artt. 16–24, where only the party requesting transfer or certain other recordation against a trade mark is liable to provide the relevant facts and evidence, where required. 10

2. Contentions of the parties Art. 76 in its English translation of the second clause reads that the Office shall be restricted to the ‘facts, evidence and arguments’ provided by the parties, whereas the official German translation (only) reads ‘Vorbringen’, the official French translation reads ‘moyens’, the official Italian translation reads ‘argomenti’ and finally, the official Spanish translation reads ‘medios’. The English language version seems to be most comprehensive. According to the jurisprudence, such relevant contentions of the parties include both the factual elements and the evidence adduced by the parties, to support the relief sought.13 13 While the Office must not go beyond the relief sought14, this does not mean that the Office has to take for granted or accept as proven facts which have not been disputed by the other party.15 This provision does only mean that the Office is limited to consider only facts, evidence and arguments brought forward to it.16 It is still upon the Office to decide on the merits of a case. Also, Art. 76 does not prevent the Courts and the Office from referring to case-law of the European Courts and the national courts to interpret and construe the European Laws. (Union Law).17 In cases, where a relative ground for refusal is invoked, the Office in entitled to investigate, confirm, and apply provisions in national laws of the Member States ex officio and is not restricted to the information provided in this regard by the parties. This has very recently been stressed again by the European Court of Justice.18 If the Office so works with national laws, it is under an obligation to notify the parties of its conclusion in advance of decision-making.19 If not, the right to be heard according to Art. 75 might be violated. Only in cases, where this limitation applies and where one of the parties does not comply with its material duty to prove something, at the same time, the Office is under an obligation to decide in a 12

13 GC Case T-232/00 Chef Revival v OHIM – Marin (Chef) [2002] ECR II-02749, mn. 45; GC Case T303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita/Solevita) [2005] ECR II-01917, mn. 74. 14 See also below IV. 15 GC Case T-336/03 Editions Albert Rene v OHIM – Orange (Mobilix) [2005] ECR II-04667, mn. 34; as confirmed by CJ Case C-16/06 Editions Albert Rene v OHIM – Orange (Mobilix) [2008] ECR I-100153, mn. 108, 112; Lange, Marken- und Kennzeichenrecht, mn. 6386, 6389; Engin-Deniz, Markenschutzgesetz, page 661. 16 GC Case T-218/10 DHL International v OHIM – Service Point Solutions (Servicepoint) not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 62 with further references in case law. 17 GC Case T-413/11 Welte-Wenu v OHIM – Commission (European Driveshaft Services EDS) not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 32. 18 CJ Case C-530/12 National Lottery Commission v OHIM, not yet published in the ECR, available at www.curia.eu Õ search Case law. 19 CJ Case C-530/12 National Lottery Commission v OHIM, mn. 58, 59.

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Examination of the facts by the Office

Art. 76 CTMR

predetermined manner. For instance, this applies in invalidation actions based on lack of genuine use, where the trade mark owner fails to submit evidence of genuine use at all. Under such circumstances, the Office has to cancel the trade mark from the register.

IV. Restriction relating to relief sought The second clause of Art. 76 (1) explicitly mentions that the Office shall be restricted 14 in its examination to the relief sought.

1. Scope Unlike the pretty clear wording of the second clause in Art. 76 (1) may suggest, this 15 restriction does not only apply in proceedings relating to relative grounds for refusal but in all proceedings at the Office instead. As a general rule, the Office must not grant or order more than explicitly requested by the party or the parties in question (ne ultra petitum).

2. Examples In application proceedings, the Office is restricted with respect to the object of 16 protection (the trade mark applied for and the goods/services covered) as applied for in the relevant form. Where the application is based on inherent registrability, the Office must not register based on acquired distinctiveness, Art. 7 (3). In proprietary proceedings, Artt. 16–24, the Office only acts upon specific request and is not entitled to investigate into the scope of such request. Therefore, the Office cannot, ex officio, investigate into the correct name and address of the trade mark owner or an assignee. In proceedings relating to relative grounds for refusal, the Office cannot go beyond 17 the basis of opposition invoked and the prior rights on which the respective action is based. The Office must not grant an order based on likelihood of confusion between trade marks, Art. 8 (1)(b), if only double identity has been argued by the owner of the prior right, Art. 8 (1)(a). Likewise, the Office must not, without pleading, conclude that a trade mark enjoyed reputation throughout the Community, Art. 8 (5). Above all, it is generally the duty of the owner of the prior right to prove its existence and scope by providing relevant evidence, e. g. register excerpts (with translation). It is not possible to admit existence and scope for the owner of the right under challenge.20

V. Restriction relating to submission outside due time Another restriction applies pursuant to Art. 76 (2) in cases, where facts or evidence 18 are not submitted in due time by the parties concerned. These may be disregarded by the Office. This restriction is most important to make the parties refrain from stalling proceedings but to make them cooperate and partake instead.21 In its literal context, as confirmed by the official German translation (‘braucht nicht zu beru¨cksichtigen’), the official French translation (‘peut ne pas tenir compte’), the official Italian translation (‘puo` non tener conto’) and the official Spanish translation (‘podra no tener en cuenta’), 20 GC Case T-420/03 El Corte Ingles v OHIM – Abril Sanchez and Ricote Saugar (BoomerangTV) [2008] ECR II-00837, mn. 77. 21 Wu ¨ rtenberger, MarkenR 2003, 215, 216.

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CTMR Art. 76

Community Trade Mark Regulation

this grants a specific competence and authorization to the Office, it is not a ‘favour’ or ‘advantage’ granted to the parties. If the Office may or may not disregard facts or evidence submitted outside due time, it follows that the Office generally has a wide discretion. Again, it should be noted that special provisions are or may be available, potentially superseding Art. 76 (2).

1. Facts and evidence 19

Art. 76 (2) refers to facts or evidence, whereas Art. 76 (1) also refers to arguments. By definition, facts and evidence cover contentions of the parties relating to events and conditions of external perception, internal facts and legal facts, along with proof relating thereto.22 Legal opinion is not covered by the definition of facts or evidence so that legal opinion by definition can never be submitted outside due time.

2. Definition of due time 20

The definition of ‘due time’ is significantly broader than only relating to submissions within a specific time limit set. The official German translation reads ‘verspa¨tet’, the official French translation reads ‘ne pas en temps utile’, the official Italian translation reads ‘non per tempo’ and the official Spanish translation reads ‘no dentro de plazo’. It follows that Art. 76 (2) covers facts and evidence which are at least mature for presentation and submission. Nothing is due or mature which is not known or impossible to submit.23

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a) Term set. Art. 76 (2) particularly covers such facts and evidence for which the Office set a term to submit. In conjunction with Art. 75, the right to be heard, the Office typically sets express terms to respond not only in inter-parte proceedings but also in ex-parte proceedings. Such terms are meant to concentrate proceedings to the relevant questions, and more importantly, to provide for efficient course of proceedings, namely, to come to a decision on an order or relief sought in an acceptable time frame. The parties may not stall proceedings.24

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b) No term set. Even though setting express time limits is the general rule, Art. 76 (2) may also apply in cases, where the Office has not set such explicit time limit or where the time limit set does not in itself preclude the party concerned to file additional observations. This, for instance, applies with respect to notices of irregularity in course of the examination of a Community trade mark application. Where it is reasonable and equitable that a party concerned reacts in a specific manner but does not comply, it may happen that facts and evidence filed later will be disregarded. It is at least an implied obligation of the parties to proceedings to contribute and partake so that dilatory prosecution of a case may result in loss of right, or relief sought be refused.25

22 A more comprehensive definition of ‘fact’ can be found below at the detail commentary on Art. 78 at B.I.2., mn. 13 et seq.; a more comprehensive definition of ‘evidence’ can be found below at Art. 78 B.I., mn. 11–21. 23 GC Case T-334/01 MFE Marienfelde v OHIM – Vetoquinol (Hippovit/Hipoviton) [2004] ECR II02787, mn. 56; Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 76 mn. 28. 24 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 76 mn. 29. 25 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 76 mn. 30–32, 29; OHIM Dec. of 5.9.2006 R-348/2006-4 – Shape of Engine, mn. 20.

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Art. 76 CTMR

3. Consequence As already outlined above, the general rule is that the Office can apply a wide 23 discretion. However, there are exceptions and re-exceptions to this rule. a) General rule – discretion. The Office is entitled to apply discretionary power to 24 either disregard such facts or evidence, or to consider it. Either way, the Office has to exercise that discretion by giving proper reasons and taking account of all relevant facts, whether or not to take into account facts or evidence submitted. The European Court of Justice emphasizes that any taking into account by the Office of additional facts or evidence is in no way a ‘favour’ or ‘advantage’ granted to one party or the other, but rather must result from an objective, reasoned exercise of the discretion conferred on the Office by Art. 76 (2). General, categorical assertions do not establish that the Office effectively exercised the discretion. In other words: The Office is required to state in its decision, first, that it had discretion and, second, how this discretion was employed.26 A proper exercise of discretion and thus, a proper statement of reasons, is all the more required, according to the European Court of Justice, when the Office decides to reject the facts or evidence submitted out of time.27 Based on this analysis, it transpires that the Office’s discretion may be wide but, it is 25 also limited in that the Office has to consider several factors, particularly those speaking in favour of considering facts and evidence submitted out of time, of which there are quite a few: The European Court of Justice has held, inter alia, that where the Office is called upon to give a decision in opposition proceedings, taking facts or evidence submitted out of time into account is particularly likely to be justified where the Office considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account.28 Yet, the Courts do not establish a conclusive test or set of factors to be taken into 26 account, as this would very much limit the Office’s discretion in the first place. Also, it should be observed that, where the Office sets time limits, these generally should be respected in order to come to a decision in due process. It cannot hold true to more or less always take into account late evidence or facts because this would deprive time limits set of their basic purpose, namely, to avoid unnecessary delay.29 The relevant test, to apply an objective reasoned exercise of the discretion granted, may be satisfied, at least in interparte proceedings, by referring to the respective other party’s justified interests and that there has been no explanation or other sufficient excuse for the late submission.30 b) Exceptions and re-exceptions – preclusion and discretion. Under specific circum- 27 stances and as exception to the general rule that the Office may apply discretion, facts and evidence submitted late must not or shall not be taken into account. Specifically, the Implementing Regulation includes special provision regarding facts and evidence relat26 CJ Case C-610/11 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm) not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 109–116. 27 CJ Case C-610/11 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm), mn. 111. 28 CJ Case C-29/05 Kaul v OHIM – Bayer (Arcol) [2007] ECR II-02213, mn. 44; CJ Case C-610/11 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm), mn. 112; OHIM Dec. of 30.07.2007 R-633/2006-2 – Device of a Swallow, mn. 40, 43. 29 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 76 mn. 48. 30 OHIM Dec. of 7.3.2013 R-2198/2012-4 – Topstone/Topston, mn. 17; Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 76 mn. 49.

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CTMR Art. 76

Community Trade Mark Regulation

ing to existence, validity, scope of and entitlement to a prior trade mark, and relating to proof of use. Such provisions are lex specialis. Nevertheless, there are re-exceptions available for these exceptions, particularly as developed by the Courts. aa) Lex specialis. Where the owner of a prior right has to submit facts and evidence to prove existence, validity and the scope of the prior trade mark as well as entitlement to the trade mark, the Office shall not, according to R 19 (4) of the Implementing Regulation, take into account written submissions or documents, or parts thereof, that have not been submitted within the time limit set by the Office. Similarly, the opposition shall be rejected as unfounded, according to R 20 (1) of the Implementing Regulation if, until expiry of the period referred to in R 19 (1) of the Implementing Regulation, the opposing party has not proven the existence, validity and scope of protection as well as the entitlement to file the opposition. In cases, where no proof of use is submitted in opposition proceedings or in revocation actions based on lack of genuine use, the Office shall reject the opposition or shall revoke the Community trade mark, respectively. 29 In these cases, the Implementing Regulation does not read ‘may’ but ‘shall’ instead. The other language versions of the Implementing Regulation are even more distinct in wording: The official Germany translation reads ‘la¨sst unberu¨cksichtigt’ in R 19 (4) of the Implementing Regulation, ‘weist zuru¨ck’ in R 20 (1) of the Implementing Regulation and ‘verfa¨llt’ in R 40 (5) of the Implementing Regulation, the official French translation reads ‘ne prends pas en consideration’ in R 19 (4) of the Implementing Regulation, ‘est rejetee’ in R 20 (1) of the Implementing Regulation and ‘la decheance est prononcee’ in R 40 (5) of the Implementing Regulation, the official Italian translation reads ‘non tiene conto’ in R 19 (4) of the Implementing Regulation, ‘viene respinta’ in R 20 (1) of the Implementing Regulation and ‘viene revocato’ in R 40 (5) of the Implementing Regulation and, in the official Spanish translation it reads ‘no tendra en cuenta’ in R 19 (4) of the Implementing Regulation, ‘no se admitira’ in R 20 (1) of the Implementing Regulation and ‘se revocara’ in R 40 (5) of the Implementing Regulation. Accordingly, it is common ground that there is no discretion for the Office, where no facts or evidence at all have been submitted in time by the party responsible.31 30 It should be duly noted that the Courts, unlike the Office, draw a sophisticated line between ‘no substantiation at all’ and ‘no sufficient substantiation’. Re-exceptions may apply under specific circumstances. It has also been held possible in jurisprudence that a preclusion does not necessarily cover the entire life of a case at OHIM but that it may be lifted in Appeal proceedings, where preclusion was confirmed only in a first instance case. 28

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bb) Re-exceptions – discretion applicable. The Office’s standard approach, at least, in inter-parte proceedings, was that if documents are filed or allegations are made after expiry of a time limit set by the Office, these will always be considered late and the document will not be taken into account. Even if no limit was fixed by the Office, statements of parties may be refused by the Office as belated, according to this Office practice, pursuant to Art. 76 (2) CTMR, which will in particular be done if admitting the belated statement or evidence would delay the taking of the decision or would 31 CJ Case C-610/11 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm), mn. 85–87, 98; CJ Case C-621/11 New Yorker SHK v OHIM – Vallis (Fishbone) not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 28; CJ Case C-90/08 K&L Ruppert Stiftung v OHIM – Lopes de Almeida Cunha/Couto Simoes/Lima Jatoba (Corpo Livre/Livre) [2009] ECR I-00026, mn. 36, 38; GC Case T-152/09 Rintisch v OHIM – Valfleuri Pates Alimentaires (Protiactive/Proti) [2011] ECR II-00460, mn. 34, 37.

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Examination of the facts by the Office

Art. 76 CTMR

require hearing the other party, or where no valid reason for the late submission of the evidence is given.32 A similar view was taken in literature.33 This practice is, according to recent jurisprudence of the European Court of Justice, 32 in breach of Art. 76 (2). In two recent cases, namely the cases FISHBONE34 and Centrotherm35, it was held – for both opposition matters and revocation actions based on non-use – that this Office practice would be acceptable only, if no evidence of use at all was filed in due time. Such a conclusion is not, according to the European Court of Justice, inevitable when proof of use has indeed been submitted within the time limit given, unless it appears that that evidence is irrelevant for the purposes of establishing genuine use of the mark.36 In a case, where evidence considered relevant for the purposes of establishing use of 33 the mark at issue was produced within the time limit set by the Office under R 22 (2), 40 (5) of the Implementing Regulation, the submission of additional proof of use remains possible after the expiry of that time limit. The European Court of Justice gives clear direction that, in such a case the Office is in no way prohibited from taking account of evidence submitted out of time through use of the discretion conferred on it by Art. 76 (2).37 From that jurisprudence, it directly follows that the current Office practice, as confirmed by the Boards of Appeal38 and sometimes in the past, also confirmed by the General Court39, applies an incorrect interpretation of R 22 (2), 40 (5) of the Implementing Regulation and disregards Art. 76 (2).40 Consequently, a sophisticated line has to be drawn between no facts or evidence at all 34 and no sufficient or incomplete facts or evidence submitted. In the latter case, the Office has a discretion to consider additional facts or evidence filed late. Still, this does not at all mean that the Office has to consider facts or evidence filed late, it simply means that again the general rule applies and the Office has to exercise its discretion objectively and reasoned.41 This is why the European Court of Justice in the case CENTROTHERM lifted both the judgment under appeal and the decision of the Boards of Appeal, and referred the case back to the Boards of Appeal for consideration. 32 Cf. OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 2, General Principles to be respected in the Proceedings (status: 3 December 2012), at 1.2 (retrieved 19 January 2014 at https://oami.europa.eu/ ohimportal/en/manual-of-trade-mark-practice). 33 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 76 mn. 41–44, 49 with further references; for an overview regarding case law until 2011: Hoffrichter-Daunicht, in Bu¨scher/Dittmer/Schiwy, Gewerblicher Rechtsschutz Urheberrecht Medienrecht, Art. 76 mn. 9 et seq. 34 CJ Case C-621/11 New Yorker SHK v OHIM – Vallis (Fishbone). 35 CJ Case C-610/11 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm). 36 CJ Case C-621/11 New Yorker SHK v OHIM – Vallis (Fishbone), mn. 28, 29. 37 CJ Case C-621/11 New Yorker SHK v OHIM – Vallis (Fishbone), mn. 30; CJ Case C-610/11 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm), mn. 85–90; this view had already been taken by the GC back in 2011: GC Case T-308/06 Buffalo Milke Automotive Polishing Products v OHIM – Werner & Metz (Buffalo Milke/Buffalo), mn. 24. 38 See, for further references: Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 76 mn. 44 and references in footnote 63. 39 GC Case T-434/09 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm), mn. 62, 63, 68; GC Case T-86/05 K&L Ruppert Stiftung v OHIM – Lopes de Almeida Cunha/ Couto Simoes/Lima Jatoba (Corpo Livre) [2007] ECR II-04923, mn. 47, 49; GC Case T-250/09 Cesea Group v OHIM – Mangini (Mangiami)[2011] ECR II-00310, mn. 26, 27. 40 CJ Case C-610/11 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm), mn. 107; see also, with further examples in case-law relating to the development of this practice: Bender, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 388 et seq., 395; Bender, MarkenR 2007, 198; and Wu¨rtenberger, MarkenR 2003, 215, 219 et seq. 41 See above, V.3.a), mn. 24–26; Bender, MarkenR 2014, 41, 51.

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CTMR Art. 76

Community Trade Mark Regulation

It is not too easy to distinguish between new evidence (when there was no evidence at all) and additional evidence (when there was insufficient evidence). Some examples42 may serve to outline the practical problems: (1.) The first submission covers only some goods and upon the other party’s objection, evidence is filed for other, additional goods; (2.) the renewal certificate for the prior right on which the opposition is based, is filed only in a second submission upon the other party’s objection; and (3.) the first submission covers only evidence of a prior right of ‘mere local significance’, Art. 8 (4.), and is supplemented in another submission to extend to more than mere local significance. In all cases, it is obvious that the additional information is useful and perhaps really relevant for the case to decide. But is it only supplemental? One could say that, in the situations outlined, there was no evidence at all in the first shot for (1.) the additional goods, (2.) the validity of the prior right, and (3.) for the sufficient geographic significance. 36 It has also been held in Office practice that there was a functional continuity between the Office’s divisions and departments and the Boards of Appeal so that facts or evidence filed late once will not become admissible again in appeal proceedings.43 The third sentence of R 50 (1) of the Implementing Regulation includes special provision relating to this question for opposition cases. According to this provision, the Boards of Appeal shall limit the examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division in accordance with the Regulation and the Rules under the Implementing Regulation, unless the Boards of Appeal consider that additional or supplementary facts and evidence should be taken into account pursuant to Art. 76 (2). This on the one hand confirms the idea of functional continuity but still grants discretion to the Boards of Appeal regarding additional or supplementary facts and evidence. The General Court meantime held that no material connection between the supplementary evidence and the earlier evidence was required, as long as it was not completely irrelevent but intrinsically relevant to the outcome of the case.44 37 Considering facts or evidence filed late (even in appeal proceedings) has manifest disadvantages for the other party. Not only may this additional leave protract and delay proceedings, a possible procedural result also is that the other party would have been successful with its motion, if it were not for the additional submission accepted by the Office. Typically, the other party to the proceedings would state in its observations in reply to, for instance, proof of use, that the same was insufficient to show genuine use, and will typically give a variety of reasons for that assessment. This does not only happen based on utmost professional care and diligence but also to make one’s own legal position and opinion clear to the Office. This care and diligence would backfire, if insufficient facts and evidence could be supplemented. Hence, it would be recommendable for the other party to remaining silent regarding facts and evidence submitted so that no one would ever ask for additional leave to file supplementary facts and evidence or the Office would consider to grant additional leave ex officio. 38 Such a consequence would not be favourable for the other party to the proceedings. It cannot really make itself heard, which could be in violation of Art. 75. Therefore, the 35

42 See also Pohlmann, Verfahrensrecht der Gemeinschaftsmarke, § 1 mn. 63; Bender, MarkenR 2007, 198, 200 at footnote 16 with respect to differences in official language translations of the judgment CJ Case C-29/05 Kaul v OHIM – Bayer (Arcol) [2007] ECR I-02213. 43 GC Case T-163/98 Procter & Gamble v OHIM (Baby-dry) [1999] ECR II-02383, mn. 44; the position to the opposite, as taken by the GC Case T-164/02 Kaul v OHIM – Bayer (Arcol), mn. 33 has been rejected by the CJ Case C-29/05 Kaul v OHIM – Bayer (Arcol), mn. 61–62; thereafter, the GC returned to its previous point of view, cf., GC Case T-152/09 Rintisch v OHIM – Valfleuri Pates Alimentaires (Proti/Protiactive) [2011] ECR II-00460, mn. 46; see also, Lange, Marken- und Kennzeichenrecht, mn. 6404 et seq. 44 GC Case T-235/12 CEDC International v OHIM – Underberg (shape of a blade of grass in a bottle) not yet published in the ECR, available at www.curia.eu Õ search Case law.

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Oral proceedings

Art. 77 CTMR

position of the European Court of Justice has already received quite a bit of criticism.45 The true consequences of this Court position is, however, that the Office may not categorically refuse additional facts or evidence. It has to apply its discretion. It is in no way excluded to still refuse such additional facts or evidence. As a consequence, the disadvantage for the other party is not as significant as stated above. The European Court of Justice seems to emphasize that correct decisions on the substance are preferable over those decisions merely reflecting on procedural issues. This, to some extent, supports justice on the substance. This is certainly a good thing but, put the other way round, in inter-parte proceedings, the parties have a procedural duty to contribute and partake timely and exhaustively. Where one party acts in breach of this procedural duty, there seems to be less convincing reason to grant additional leave to file supplemental facts or evidence. Although the discretion offered to the Office must not be restricted by narrow categories under circumstances like this, a reasonable excuse should be found in that party’s favour requesting additional leave. The different position taken by the General Court re CEDC International46 does not really offer an equitable solution considering the respective adverse obvious interest to stick to procedural premises as anticipated by the legislator and laid down in the (Implementing) Regulation. The practice will have to expand on these questions and will also have to provide for 39 some more practical guidance to decide what is inadmissible new evidence and what is admissible additional/supplemental evidence. Finally, the result must not be that deadlines set in proceedings or terms to obey have no meaning left and a violation remains without consequence.47 Put the other way round, the previous position that deadlines and terms are strict, no longer holds absolutely true.48 The Office meantime adopted new Guidelines for Examination on this count, namely, 40 effective 1 February 2015, outlining that the traditional approach will still be adhered to if no evidentiary material at all was filed, whereas discretion applies, where relevant material was filed and additional evidence is presented after expiration of the term set.49 The Guidelines, however, do not offer more guidance than the judgments that led to their amendment.

Article 77 Oral proceedings 1. If the Office considers that oral proceedings would be expedient they shall be held either at the instance of the Office or at the request of any party to the proceedings. 2. Oral proceedings before the examiners, the Opposition Division and the Administration of Trade Marks and Legal Division shall not be public. 3. Oral proceedings, including delivery of the decision, shall be public before the Cancellation Division and the Boards of Appeal, in so far as the department before which the proceedings are taking place does not decide otherwise in cases where admission of the public could have serious and unjustified disadvantages, in particular for a party to the proceedings. 45 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 76 mn. 43 with footnote 52, v. Kapff, GRUR-Prax 2014, 5, 7. 46 GC Case T-235/12 CEDC International v OHIM – Underberg (shape of a blade of grass in a bottle). 47 Practical efficacy: Bender, MarkenR 2007, 198, 200. 48 A different view was applied by Bender, MarkenR 2007, 198, 201 but this view was expressed prior to the cases CENTROTHERM and FISHBONE. 49 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part C, Opposition, Section 6, Proof of Use, at 3.3.1, page 64 et seq.

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CTMR Art. 77

Community Trade Mark Regulation Content

A. Importance and role of the provision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. General purpose . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Systematic position . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Commentary . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Expediency/absolute discretion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Public/closed session . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Procedure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Summons . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Language . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Minutes. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Decision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 3 5 5 10 11 11 13 14 15 16

A. Importance and role of the provision 1

Proceedings before the Office are generally in writing. Conducting an oral hearing is possible but this possibility is barely ever used, although hearing the parties or hearing witnesses are explicitly mentioned as typical means for taking evidence in Art. 78 and R 57 of the Implementing Regulation.1 It is standing practice of the Office that only in exceptional cases it will decide to hear oral evidence, in particular because of the cumbersome nature of the procedure, which is, according to the Office practice and opinion, liable to protract the proceedings, and because of its cost. Since opening in 1996, only less than a handful of oral hearings have taken place in Community trade mark matters (and none so far in Community Design matters2).

I. General purpose 2

n oral hearing according to Art. 77, as supplemented by Rules 56, 57, 59, 60 and 97 of the Implementing Regulation, is possible but not compulsory. Its purpose is not to present or repeat evidence taken otherwise, it is an independent means of presenting a case, relating to Art. (1)(a), (d), namely hearing the parties or witnesses.3 Consequently, written submissions in proceedings presenting facts and evidence are not only preparatory for an oral hearing but present the easiest and most efficient way to prosecute a case fully at the Office. According to standing Office practice, there must be a good independent reason to hold an oral hearing.

II. Systematic position 3

Art. 77 is closely related to Art. 78, outlining the general means of giving or obtaining evidence, and limits Art. 75 in its scope. The right to be heard in Art. 75 does not mean that an actual hearing is required, i. e. taking evidence orally. Its scope is restricted to grant due process at all and the opportunity to exchange facts, evidence and legal basis. 1

For the parallel provision in Art. 64 CDR, see Hanne, in Hasselblatt, CDR, Art. 64. Ruhl, Gemeinschaftsgeschmacksmuster, Art. 64 mn. 3. 3 For further details. see below at Art. 78 B.III.1. and 4., at mn. 41–42, 51. 2

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Oral proceedings

Art. 77 CTMR

The Rules of Procedure at the European Court of Justice, Artt. 76–85, at the General 4 Court, Artt. 55–63, and at the Boards of Appeal, Art. 9, provide similarly. The Court and the Boards of Appeal typically decide not to hear oral argument where none of the parties has applied to be heard orally. Even if there is an application to be heard, such application must set out the reasons for which the party wishes to be heard and must be based on a real assessment of the benefit of a hearing to the party in question, and must indicate the elements of the file or arguments which that party considers it necessary to develop or refute more fully at a hearing. It is not sufficient to provide a general statement of reasons referring to the importance of the case or of the questions to be decided. In practice, the General Court and Boards of Appeal decide without oral hearing. It is more common for the European Court of Justice to summon for an oral hearing.

B. Commentary I. Expediency/absolute discretion Oral proceedings are absolutely discretionary to the Office, as they shall be held only if the Office considers them expedient. The Office is free to determine what is expedient and what is not.4 Requests to hold an oral hearing may be successful upon good reason that, in written proceedings, a case could not presented equally well or not at all.5 If the Office considers that written submissions and taking evidence and facts in writing is sufficient to fully present the case, it will not summon for an oral hearing. Refusing a request to hold an oral hearing is not in itself open to legal redress or legal remedy. The plea, in appeal proceedings or in Court action, that the Office acted in breach of Art. 77 requires to show why an oral hearing and oral submissions would have or would have had resulted in a different decision. In other words: The party arguing infringement of Art. 77 is required to show that the lack of taking oral evidence was caused an unlawful decision. Such a plea is argued regularly but has not been successful so far.6 Also, it is not sufficient to argue that an oral hearing could be used to further elaborate on the facts and evidence exchanged in writing if there is no specific reason indicated why an oral hearing would be preferable over written submissions.7 As a general rule, the complexity of the facts of a case or the legal implications resulting therefrom, is not a sufficient reason to hold an oral hearing.8

4 GC Case T-378/11 Franz-Wilhelm Langguth Erben v OHIM (Medinet) not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 72; GC Joined Cases T-299/09 and T-300/09 Gu¨hring v OHIM (combination of broom yellow and silver grey and combination of yellow ochre and silver grey) [2011] ECR II-00017, mn. 34; GC Case T-115/02 Avex v OHIM – Ahlers (a) [2004] ECR II-02907, mn. 30. 5 See, for example: GC Case T- 66/13 Franz Wilhelm Langguth Erben GmbH & Co. KG v OHIM (form of a bottle for an alcoholic beverage), mn. 89; GC Case T-115/02 Avex v OHIM – Ahlers (a), mn. 30; v. Kapff, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 1852 with further references. 6 See also, GC Case T-115/02 Avex v OHIM – Ahlers (a), mn. 30. 7 OHIM Dec. of 28.7.1998 R-44/1998-3 – Supreme, mn. 25; Dec. of 12.1.2000 R-118/1999-1 – Topcut, mn. 16; Dec. of 3.9.2008 R-1138/2007-1 – Strahlregler III, mn. 33; and Dec. of 16.12.2009 R-1671/2008-4 – Quanten-Medicine, mn. 15. 8 OHIM Dec. 25.4.2001 R-283/1999-3 – Hollywood, is a Case to the opposite but it is the only case available, where this argument has been accepted to consider an oral hearing expedient.

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CTMR Art. 77

Community Trade Mark Regulation

II. Public/closed session 10

Oral hearings including oral delivery of a decision are in public session only, according to Art. 77 (3), if at the Cancellation Divisions or at the Boards of Appeal. To protect justified interests of the parties, the oral hearings including the oral delivery of a decision, may be in closed session. This may typically apply in cases which require confidentiality or specific protection of the parties (right of privacy), and may also apply in ex-parte proceedings, but typically not in opposition or cancellation proceedings because the subject of proceedings, a Community trade mark, is open for public file inspection anyway.9 Oral proceedings before the examiners, the Opposition Division and the Administration of Trade Marks and Legal Division are in closed session, without any exception.

III. Procedure 1. Summons R 56 and 57 of the Implementing Regulation outline procedural requirements. The summons shall be in writing, giving at least one month’s notice, unless the parties agree to a shorter period, and the summons shall draw attention to the points which in the Office’s opinion need to be discussed in order for the decision to be taken. If a party duly summoned does not appear as summoned, the proceedings may continue without him. 12 The purpose of these formal requirements is to restrict the oral hearing to the relevant questions of fact, evidence and law and to allow the parties to properly prepare. To this end, R 57 of the Implementing Regulation outlines further requirements of such summons, to be obeyed by the Office. 11

2. Language 13

According to R 97 of the Implementing Regulation, the oral hearing will be in the language of proceedings, Art. 119. Under specific circumstances, different languages may be used instead by the Office or the parties, either when in ex-parte proceedings, upon agreement between the Office and the parties, or upon providing for interpretation into the language of proceedings (at the cost of the respective party).

3. Minutes 14

According to R 60 of the Implementing Regulation, minutes of oral proceedings (or the taking of evidence) shall be drawn up, containing the date of proceedings, the names of the parties involved (including the Office), the applications and requests made and the means of giving or obtaining evidence. These minutes will become part of the file. Statements of witnesses, experts and the parties shall be recorded on tape. Since inception of Commission Regulation (EC) No. 1041/2005 of June 29, 2005, it is no longer required to take a verbatim transcript of such recordings to the minutes and the file. 9

At https://oami.europa.eu/esearch.

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Taking of evidence

Art. 78 CTMR

4. Decision According to Art. 77 (3), the decision may be delivered orally at the end of oral 15 proceedings but it is required to (also) hand down the decision in writing. The terms for legal redress or legal remedy will only start upon notification of a decision in writing. The Rules of Procedure at the Boards of Appeal, Art. 9 (3), indicate that a case shall be ready for decision upon conclusion of oral proceedings. Consequently, re-entering into the written stage of proceedings after concluding an oral hearing is excluded and submissions in writing filed afterwards should be considered inadmissible, Art. 76 (2).

5. Costs The costs of an oral hearing are costs of proceedings and will be subject to the decision 16 on costs according to Art. 85 (1) and R 94 (7) of the Implementing Regulation. Special provisions apply for providing for interpretation in the oral hearing, R 97 of the Implementing Regulation. Costs for the oral hearing are costs essential to the proceedings and shall be borne by the losing party in accordance with Art. 85 (1) on the basis of maximum rates outlined in R 91 (7) of the Implementing Regulation. By that provision, the maximum costs for an oral hearing are rather restricted and cover only travel and subsistence expenses, travel expenses and compensation for loss of earnings and fees to which witnesses and experts are entitled. Pursuant to R 59 of the Implementing Regulation. The costs of representation, namely, by attorneys and professional representatives, can be recovered only in the amount of EUR 400 for the oral proceedings, R 94 (7)(d)(vii). The costs of taking of evidence, R 59 of the Implementing Regulation, are treated 17 differently in that the final liability for the amounts due or paid shall lie with the Office where it, at its own initiative, considered it necessary to hear the oral evidence of witness or experts, or the party concerned, where that party requested the giving of oral evidence by witnesses or experts. Such costs are not part of the general decision on costs but will have to be borne by the Office or the respective party.

Article 78 Taking of evidence 1. In any proceedings before the Office, the means of giving or obtaining evidence shall include the following: (a) hearing the parties; (b) requests for information; (c) the production of documents and items of evidence; (d) hearing witnesses; (e) opinions by experts; (f) statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up. 2. The relevant department may commission one of its members to examine the evidence adduced. 3. If the Office considers it necessary for a party, witness or expert to give evidence orally, it shall issue a summons to the person concerned to appear before it. 4. The parties shall be informed of the hearing of a witness or expert before the Office. They shall have the right to be present and to put questions to the witness or expert. Rudolf Bo¨ckenholt

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CTMR Art. 78

Community Trade Mark Regulation

Rc. 12, 13 Bibliography: Rusconi, ‘The evidential value of declarations under the scrutiny of the CFI’, EIPR 2006, 442; v. Kapff, ‘Fishbone: Erst die Gra¨ten, spa¨ter das Fleisch’, GRUR-Prax 2013, 371; Wehlau/Kalbfus, ‘Die Versicherung an Eides statt als Mittel der Glaubhaftmachung’, Mitt. 2011, 165.

Content A. Importance and role of the provision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Systematic position . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Commentary . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Evidence. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Definition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Facts . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Bearing on decision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Need for evidence. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Standard of evidence and burden of proof . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Standard of evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Burden of proof . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Examples . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Means of taking evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Hearing the parties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Requests for information . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Production of documents and items of evidence . . . . . . . . . . . . . . . . . . . . a) General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Form . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Hearing witnesses. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Opinions by experts . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Sworn or affirmed statements in writing. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Examples . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Corroborative effect. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Procedure for taking evidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 3 8 10 11 12 13 15 16 22 23 27 28 31 38 41 43 46 47 49 51 52 55 56 58 66 68

A. Importance and role of the provision In proceedings before the Office, evidence may and sometimes must be taken.1 Basic provisions, particularly the means for taking evidence, are listed in Art. 78 and in Rule 57 of the Implementing Provision. These provisions are central for proceedings at the Office and set up the possibilities and standard for the sovereign act of taking evidence. This is due to the fact that the Office is an independent authority within the framework of the European Community, see also Recital 12, and has no authority or other power to make other public authorities, states, national Courts or other institutions cooperate. As there is no judicial or administrative cooperation between the Office and all the afore-mentioned, the Office has to have own authority and competence to take evidence in proceedings. Art. 78 with the related provisions in the Implementing Regulation therefore is the basic framework for any procedural question of taking evidence that may arise in course of its work. 2 This applies all the more because the Office has no means to enforce taking evidence on its own motion, and the Office has no authority to make, for instance, witnesses swear an oath. Consequently, there is no need to protect certain legal positions of the parties or to establish a privilege to refuse to give evidence. 1

1

For the parallel provision in Art. 65 CDR, see Hanne, in Hasselblatt, CDR, Art. 65.

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Taking of evidence

Art. 78 CTMR

I. General Taking, hearing and evaluating evidence are formal or informal sovereign acts by the Office, depending on the procedural stage and depending on the respective provisions in the Regulations for the different types of proceedings. The means of taking evidence as outlined in Art. 78 are not exhaustive but certainly represent the most typical means. Some of these means will be more frequently employed, such as the production of documents and items of evidence, Art. 78 (1)(c), including statements in writing, and statements in writing sworn or affirmed or having a similar effect under the law of the state in which the statement is drawn up, Art. 78 (1)(f). The other means of taking evidence are less frequently used or are barely ever used. Typically, the Office confines itself to written evidence, as this was the least costly, simplest and most flexible means of taking evidence.2 Oral evidence is taken only in exceptional cases because, again, in the Office’s opinion, of the cumbersome nature of the procedure, which is held liable to protract the proceedings, and because of its cost.3 Commissioning of experts and inspections in situ are hardly ever used for similar reasons. While parties may offer evidence to this end, the Office is the sole authority to consider expedient or not one or the other means of taking evidence. According to Office practice, a decision to refuse a request for the taking of evidence will not be subject to a separate appeal but could only be appealed together with the final decision, within which the evidence offered was disregarded or refused.4 It is the basis for many misunderstandings in Office proceedings that parties – or the representatives – apply standards of which they are aware from the national laws. These national standards must not be confused with the standards that the Office applies. This will be particularly relevant for means of taking evidence according to Art. 78 (1)(f), namely, statements in writing sworn or affirmed or having a similar effect.5

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II. Systematic position The Rules of Procedure of the Court of Justice and of the General Court contain 8 similar provisions in Artt. 63–75, 76–80, and Artt. 64–76, respectively. It is important to distinguish between Art. 78 and Artt. 75–77: The Office’s duty to 9 state grounds and to hear the parties, Art. 75, is unrelated to the question who has to prove what at which stage or time in proceedings, and this question is dealt with by Art. 78. Similarly, oral proceedings according to Art. 77 are no additional means of taking evidence, as these are covered by Art. 78 (1)(a), (d) more specifically and the latter are related to taking evidence, whereas Art. 77 is related to presenting a case not 2 Cf. OHIM, The Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 2, General Principles to be respected in the Proceedings, page 5 at 4.1 (final, status 1 August 2014). 3 Cf. OHIM, The Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 2, General Principles to be respected in the Proceedings, page 5 at 4.2. 4 Cf. OHIM, The Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 2, General Principles to be respected in the Proceedings, page 5 at 4. 5 See below at B.III.6., mn. 55 et seq.

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CTMR Art. 78

Community Trade Mark Regulation

only in writing but also orally. Art. 78 is supplemented by Art. 76 (1), (2) so that evidence that is not presented or not timely presented may serve to the disadvantage of the party required to provide evidence, or may be disregarded by the Office. The Office’s duty to examine cases of its own motion, Art. 76, does not mean that it would have to explain to the parties what to prove and how. This is left to the party, which bears the onus of proof, and the Office’s obligation is to comprehensively assess the facts, evidence and arguments brought forward to it.

B. Commentary 10

Evidence will be taken only regarding facts which have a bearing on the decision and for which a need to file evidence exists. The standard of evidence and the burden of proof may vary or even shift, depending on the respective procedural situation. As already indicated above, the means of taking evidence in Art. 78 are not exhaustive but in practice, are more or less confined to the production of documents and items of evidence, Art. 78 (1)(c), and statements in writing, including those sworn or affirmed or having a similar effect, Art. 78 (1)(f). The procedure for taking evidence is provided for in Art. 78 and a number of provisions in the Implementing Regulation.

I. Evidence 11

Evidence is presented to support a contention or an assertion. It may establish direct full proof of the truth or may have a weaker quality, varying in ranges of probability.6 It is important to define what evidence is in more general terms and where it is at all required. From a procedural perspective, it is futile and only protracting proceedings to file evidence for facts, allegations, assertions or contentions, which do not need evidence, namely, if poof is established otherwise, or redundant.

1. Definition 12

Evidence and the procedure of taking evidence is the procedural investigation and determination of facts. Legal opinion does not need evidence.7 Facts can be external (events, states as examples) and internal facts (knowledge of a person or experience of a person as examples).8 Evidence is required for facts with a bearing on the decision and for which a need to file evidence exists.

2. Facts 13

Any taking of evidence can only relate to facts. By definition, this covers (1) any condition, state, status, situation, event, incident and occurrence which is open to external perception in the physical world and according to which the laws deduce legal force and effect, including (2) so-called internal facts like will, intention and negligence, (3) negative 6 The applicable standard of evidence will be discussed below at II.1, mn. 23 et seq.; Rusconi, EIPR 2006, 442. 7 Instead, the practice to exchange legal opinion has its basis in the Office’s duty to give reasons in decisions and to hear the party, Art. 75. This has nothing to do with taking evidence as such. 8 See, Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 78 mn. 5 with further references (in German literature).

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Taking of evidence

Art. 78 CTMR

facts including lack of consent, among others, and (4) – to a limited extent – so-called legal facts represented by legal states or estates characterized by commonly known terms or concepts, for instance, those facts necessary to establish one’s ownership and entitlement to a right, for instance, a Community trade mark. By way of negative definition, legal opinion is not a fact.9 14

3. Bearing on decision A fact has a bearing on a decision, if it cannot be presumed true without change to 15 the legal consequence. Facts, which are immaterial for the decision to come to, do not require and are not open to taking evidence. As an example: That a Community trade mark has not been put to use in the community is certainly a fact but it has no bearing on a decision, if the Community trade mark is not subject to the use requirement. It is therefore important to define those facts which are relevant for the relief sought and to concentrate on these only.

4. Need for evidence There is no need for taking evidence, if and to the extent there is no need to. What 16 sounds like a circular reasoning, indeed is not but it has a significant share in Office proceedings: Facts that are known to the Office based on official business do not require taking 17 evidence. The same applies for commonly known facts and facts that are already proven.10 Assumptions (whether legal or factual) do not require evidence but it is possible to submit facts and evidence to the contrary, i. e. to disprove, vitiate or to rebut. Empirical facts do not require evidence either. Relating to a specific perception and 18 sort of commonly known facts11, this particularly applies for those facts which are known to the Office based on its own practical activities and experience. The Office may base its decision on facts revolving around the marketing of mass-market consumer goods commonly known to everybody and is not under an obligation to specify such empirical knowledge by way of example.12 It is not only possible to offer proof to the contrary but it is also required to critically assess whether or not such empirical facts are still true and fair to not only the case to decide upon but also to general practice in real life. Empirical facts have the tendency to change from time to time. This is why one should generally be reluctant to apply such empirical facts too easily. The own perception of a potential empirical fact may be different from the perception in other Member States, resulting in a disguised view on the case to decide upon. It very much depends on the specific procedural stage and legal issue to consider whether adducing empirical facts makes sense or not. If it indeed is an empirical fact, it should not be too hard to find reliable evidence to offer. The Office is sometimes too liberal in applying empirical facts, where indeed there is reason to discuss the validity of the same. It would be a good service to the parties of proceedings and would improve the acceptance of decisions, if the Office worked more closely to the general rule that facts require evidence, where they have a 9

See, to this end, above Art. 75 mn. 21–27. Whereas, the proof to the contrary must be admitted; see also Lange, Marken- und Kennzeichenrecht, mn. 6371; CJ Case C-25/05 August Storck v OHIM (gold-colored sweet wrapper) [2006] ECR II-05719, mn. 50; CJ Case C-273/05 Celltech R&D v OHIM (CELLTECH) [2007] ECR I-02883, mn. 39. 11 Sometimes, it is hard to distinguish between empirical facts, officially known facts and commonly known facts. 12 GC Case T-129/04 Develey Holding v OHIM (Shape of a plastic bottle), mn. 19; GC Joined Cases T299/09 and T-300/09 Gu¨hring v OHIM (combination of broom yellow and silver grey and combination of yellow ochre and silver grey), mn. 34; Lange, Marken- und Kennzeichenrecht, mn. 6371. 10

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bearing on the decision. It must not be disregarded that the Office has a huge workload and many questions and arguments are tried again and again by the parties. However, what the Office may consider true from its own experience and assessment of empirical facts may not at all be the experience and view on the same of the parties. 19 It should be noted that evidence will not always be taken, even though there is a general need to. This applies in procedural situations, among others, where taking of evidence is subject to raising a plea in the first place Art. 42 (3) and R 20 of the Implementing Regulation, where it is subject to payment of a fee or advance payment, R 59 (1) of the Implementing Regulation, where the evidence offered is imprecise, R 57 (1) of the Implementing Regulation, or where it is impossible to take the evidence, or, finally, where taking evidence as such was not admissible or legal at all: 20 The latter may apply, where taking evidence would violate rights of privacy, a specific privilege13, or where the fact alleged is a mere shot in the dark, namely, plainly explorative evidence.14 21 With respect to national laws, it is the position of the European Court of Justice that the party relying on such provision has to show its existence and scope and, additionally, has to provide evidence that the prior right invoked falls under the ambit of this provision. It is then up to the Office to assess the scope and plausibility of the evidence provided.15 Opposite to the practice of many Office practitioners, the European Court of Justice therefore requires the Office to make itself acquainted with national laws, where required for the decision.16 This has again been confirmed by the European Court of Justice very recently, by outlining that this was required to give full effect to the Community trade mark system and the protection thereof. Otherwise, an adverse inference may be drawn against a Community trade mark without justification. Consequently, the Office is absolutely entitled to not only make itself acquainted with national laws but also to investigate its scope and apply it fully. Under such circumstances the Office is also under an obligation to notify the parties in advance of investigations made and the result it intends to adopt.17

II. Standard of evidence and burden of proof 22

As the Community Trade Mark Regulation, the Implementing Regulation and the other statutory provisions and rules establishing the Community Trade Mark law 13 It should, however, be noted that such privileges may have the basis only in professional rules of conduct, particularly applicable if something is sent ‘without prejudice’: This will not prevent the Office from relying on such documents, as procedural privileges under national laws (in this Case, the United Kingdom) are not considered relevant to restrict the Office’s autonomy in procedural terms, as granted by the Community Trade Mark Regulation and the specific Recital 12. 14 In German procedural laws, this is known as ‘Ausforschungsbeweis’; even though this is a national principle, it is a general principle of procedure also at the Office and the Court, as nobody can be under an obligation to give the other party a hand to make its case plausible. Again national procedural laws may differ significantly, for instance, with respect to ‘disclosure’ and ‘pre-trial discovery’ proceedings. These are not relevant at the Office. 15 CJ Case C-263/09 Edwin v OHIM – Elio Fiorucci (ELIO FIORUCCI) [2011] ECR I-05853, mn. 50, 51; v. Kapff, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 2098. 16 GC Case T-318/03 Atomic Austria v OHIM – Fabricas Agrupadas de Munecas de Onil (ATOMIC BLITZ) [2005] ECR II-01319, mn. 35; GC Case T-6/05 Def-Tec Defense Technology v OHIM – Defense Technology (First Defense) [2006] ECR II-02671, mn. 50; v. Kapff, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 2098. 17 CJ Case C-530/12 National Lottery Commission v OHIM, not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 58, 59.

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system and the functioning of the Office are autonomous, it is important to consider that rules regarding standard of evidence and burden of proof within the Member States’ procedural laws may be totally irrelevant for the Office’s work and practice. It is a system of its own. There are some references to national laws, namely with respect to some means of taking evidence, but even these are applicable only within the legal framework set up for the Community trade mark.

1. Standard of evidence Unlike national laws may provide, it is required to offer full proof in Community trade mark matters.18 A mere likelihood or probability is not sufficient to meet this standard, irrespective of the degree of likelihood or probability.19 The standard of evidence is met, if the fact is proven to the full persuasion of the Office, thus, if the fact alleged is true. Certainly, full persuasion without any doubt is hardly ever possible so that it is, according to general practice, sufficient to prove a fact beyond reasonable doubt.20 The Office is free to assess and evaluate the evidence before it freely so that it is not bound to a procedural corset – this will serve to attenuate problems the parties may encounter otherwise to providing appropriate full evidence. In this regard, it is important to note that this standard of evidence is a qualitative standard, not a quantitative standard. It is not required to overcome a specific threshold other than to allow the Office the overall conclusion, by judging on evidence adduced, that the facts so clearly speak in favour of the party concerned that evidence and full proof is established.21 Assessing the probative value of evidence freely means that the Office is also authorized to judge upon the plausibility of a statement and the credibility of a party. The Office is fully entitled to find that the probative value of one party’s evidence is noticeably lower than that of the other party to proceedings. Consequently, the Office is entitled to draw divergent conclusions from similar evidence.22

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2. Burden of proof The burden of proof or onus of proof is, as a general rule, on the party to whose 27 advantage and favour such proof would strike.23 Put the other way round, this concept includes the consequence that it is to the disadvantage of the party concerned, where no evidence is submitted, not sufficient evidence is submitted or where evidence is impossible. This is a necessary procedural consequence to make cases ready for decision at all. 18 GC Case T-39/01 Kabushiki Kaisha Ferndandes v OHIM – Richard John Harrison (Hiwatt) [2002] ECR II-05233, mn. 47: Genuine use of a trade mark cannot be proved by means of probabilities or supposition, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned. 19 GC Case T-504/09 Vo ¨ lkl v OHIM – Marker Vo¨lkl International (Vo¨lkl) [2011] ECR II-08179, mn. 113: At most, that evidence (of genuine use) constituted indications that such use might be regarded as probable. In accordance with the Case-law (…), a mere supposition, however plausible it may be, is not sufficient (…). 20 Regarding Art. 42, see GC Case T-382/08 Advance Magazine Publishers v OHIM (Vogue) [2011] ECR II-00002, mn. 22; see also: Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community trade marks, part C, Opposition, Section 6, Proof of Use, page 9 at 2.2. 21 GC Case T-262/04 Bic v OHIM (BIC lighter) [2005] ECR II-05959, mn. 78: (…) It is necessary (…) to check the plausibility and truthfulness of the information (…); ibid., mn. 79: (…) The (documents) are only indicative and need to be corroborated by other proof (…). 22 GC Case T-137/08 BCS v OHIM – Deere & Company (Green/Yellow) [2009] ECR II-04047, mn. 77, 69. 23 v. Kapff, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 2088.

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a) General. The burden of proof has two elements: the subject element, and the object element. The subject element includes to assess who has to allege facts and to adduce evidence. The object element includes to assess what needs to be alleged and proven. Generally, the wording of statutory provisions in the Regulation and the Implementing Regulation gives guidance regarding both. 29 In the circumstances outlined above24, a shift in the burden of proof may occur so that another or the other party to proceedings has to provide evidence, usually, to prove the opposite. 30 It is always possible for a party to prove the contrary but such proof is not available very often. More often, such proof to the contrary in fact limits the plausibility and credibility of the evidence submitted by the other party so that it is no longer without reasonable doubt. 28

b) Examples. The following shall outline some examples in ex-parte proceedings and in inter-parte proceedings: 32 The applicant in ex-parte proceedings has to allege facts and file evidence relating to the capacity to own a trade mark25, Art. 3, relating to acquired distinctiveness of a trade mark26, Art. 7 (3), and relating to priority rights27, Art. 30. 33 Another example is with Art. 7, where, according to settled case-law, the applicant generally would have to file ‘evidence’ that a trade mark application does not encounter absolute grounds for refusal.28 This is a ‘burden of proof’ that has to be seen in light of and in conjunction with the Office’s duty to state reasons in its decisions, Art. 75, so that the Office must not turn over the own duty to examine the facts of a case to the applicant, whereas these procedural duties require the Office to state reasons why a Community trade mark should be objected against based on absolute grounds, Art. 37 and R 11 of the Implementing Regulation, whereupon it is upon the applicant within its duty to cooperate and partake in proceedings to submit observations why the Office’s objection was unfounded. This is therefore only a secondary ‘burden of proof’29 more precisely, this is not exactly a burden of proof but part of the procedural obligation to cooperate and to partake. If this procedural obligation is disregarded, this may carry consequences to the applicant’s disadvantage. While the legal consequence in this regard may be the same, it is not entirely correct to say that this was a procedural burden of proof. 34 In inter-parte proceedings, the opponent, or applicant in another motion, has to show the existence, validity and scope of the prior right30, Art. 8 (1), the entitlement to 31

24

Above at I.3. and 4., mn. 15, 16–21. Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 3 mn. 6. 26 GC Case T-247/01 ECopy v OHIM (Ecopy) [2002] ECR II-05301, mn. 47; GC Case T-262/04 Bic v OHIM (BIC lighter), mn. 66; GC Case T-28/08 Mars v OHIM – Ludwig Schokolade (Bounty bar) [2009] ECR II-00106, mn. 56–59. 27 The latter, however, carries a significant limitation in Office practice, as the Office itself may verify the existence of a priority application/registration, if available in official databases of national trade mark Offices; see, to this end: Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community trade marks, part B, Examination, Section 2, Formalities, page 44 at 14.4 (final; status 2 June 2014). 28 CJ Joined Cases C-53/01 to C-55/01 Linde/Winward Industries/Rado Uhren [2003] ECR II-0361, mn. 48; GC Case T-299/09 Gu¨hring v OHIM (combination of broom yellow and silver grey and combination of yellow ochre and silver grey) [2011] ECR II-00017, mn. 36; Lange, Marken- und Kennzeichenrecht, mn. 6373. 29 Explicitly to this end, that it was a ‘burden of proof’: GC Case T-299/09 Gu ¨ hring v OHIM (combination of broom yellow and silver grey and combination of yellow ochre and silver grey), mn. 36. 30 GC Case T-232/00 Chef Revival v OHIM – Joachin Massague Marin (Chef) [2002] ECR II-02749, mn. 44; see also, R 19 of the Implementing Regulation. 25

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and existence of an unregistered trade mark or another sign used in the course of commerce of more than mere local significance31, Art. 8 (4), the reputation in the Community of a Community trade mark32, Art. 8 (5), genuine use33, Art. 42 (2), renewal, Art. 47, absolute grounds for refusal of a challenged trade mark34, Art. 52, and relative grounds for refusal35, Art. 53. The trade mark owner in inter-parte proceedings has to show use of a sign in the 35 course of commerce for specific goods or services, Art. 9, entitlement to a license or a license granted, Art. 22, and genuine use of the own trade mark36, Art. 51 (1). In inter-parte proceedings, the defendant has to show limitations of effect of the prior 36 trade mark, Art. 12, or acquiescence37, Art. 54. Another important example relates to the burden of proof regarding exhaustion, 37 Art. 13. It is settled case-law that the defendant in an infringement action has to show and prove exhaustion of the trade mark rights. In other words: The defendant has to show a chain of entitlement tracing back to the trade mark owner and that the goods in question have been first marketed by the trade mark owner or with its consent in the European Union or the European Economic Area. There are specific limitations and exceptions to this general rule, notably in selective distribution systems, where the free movement of goods, as set up by the Treaties, is at risk. This may result in a full shift of the burden of proof to the trade mark owner.38

III. Means of taking evidence Art. 78 (1) explicitly mentions a variety of available means, whereas this list is not 38 exhaustive. Although the English version of the Regulation could be understood in a limited sense that the list is exhaustive, the other versions of the Regulation in the official languages are more to the point: In the Italian version, it reads ‘in particolare’, in the German version, its reads ‘insbesondere’, in the Spanish version, it reads ‘en particular’, and finally, in the French version, it reads ‘peuvent notamment eˆtre prises’. Other means of taking evidence include inspection, R 57 (1) of the Implementing 39 Regulation, and aural evidence (sound).39 The order as laid down in Art. 78 (1) is arbitrary and does not reflect the probative 40 value or the practical importance of the means available. The most relevant means of taking evidence are the production of documents, the production of other items of evidence, and statements in writing sworn or affirmed, Art. 78 (1)(c)(f). 31 CJ Case C-96/09 Anheuser Busch v OHIM – Budejovicky Budvar (Bud) [2011] ECR I-02131, mn. 189; GC Case T-318/06 Alberto Jorge Moreira da Fonseca v OHIM – General Optica (General Optica) [2009] ECR II-00663, mn. 52; GC Case T-430/08 Grain Millers v OHIM – Grain Millers (Grain Millers) [2010] ECR II-00145, mn. 39, 40. 32 GC Case T-181/05 Citigroup and Citibank v OHIM – Citi (Citi) [2008] ECR II-00669, mn. 61; GC Case T-137/05 La Perla v OHIM – Worldgem Brands (Nimei La Perla Modern Classic) [2007] ECR II00047, mn. 26. 33 GC Case T-303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita/Solevita) [2005] ECR II-01917, mn. 77; additionally, this directly follows from Art. 42 (2), reading that the proprietor of an earlier Community trade mark shall furnish proof. 34 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 78 mn. 70 with further references. 35 R 40 (6) of the Implementing Regulation. 36 R 40 (5) of the Implementing Regulation. 37 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 78 mn. 64. 38 See, in more detail, Art. 13 above; CJ Case C-244/00 van Doren + Q v lifestyle sports + sportswear Handelsgesellschaft (Stu¨ssy). 39 Cf. Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 78 mn. 67.

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1. Hearing the parties This means of taking evidence must not be confused with oral proceedings according to Art. 77. This means of taking evidence refers to examination, interrogation and/or questioning of the parties, without, however, the possibility to request depositions (statements under oath), as the Office is not authorized to take oaths or declarations in lieu of an oath. 42 Obviously, hearing the parties carries the inherent disadvantage that the party questioned has an own interest in the outcome of proceedings. This is why such means of evidence is of less probative value compared to other means of taking evidence.40 41

2. Requests for information Such information refers to written information about facts, helping to avoid to hearing witnesses, Art. 78 (1)(d), issued by a person or entity unrelated to the proceedings (not a party to the proceedings). Written information by third parties is a fully acceptable means of taking evidence, and a particularly reliable one indeed, simply because this third party generally has no own interest in the outcome of the case and represents neutral evidence. 44 Obviously, there is a close relation to the statements in writing according to Art. 78 (1)(f), whereas the latter require specific affirmation. 45 This means of taking evidence is not restricted to public authorities and bodies but definitely covers, for instance, trade organizations, professional organizations, scientific centres and research institutes. 43

3. Production of documents and items of evidence 46

By far the most important means of taking evidence is the production of documents and items of evidence.41 Specific procedural Rules apply as a consequence of how the Office works and as a consequence that the Office is set up as an agency with own procedural authority within the framework of Community Laws.

a) General. Documents42 are written pieces of evidence relating to the reproduction of thoughts/ideas or of a (legal) statement or declaration. Other items of evidence43 cover those, which are not available in a written form, justifying a conclusion relating to a fact at issue.44 R 22 (4) of the Implementing Regulation, as an example, includes a non-exhaustive list of such items of evidence, namely, packages, labels, price lists, catalogues, invoices, photographs, and newspaper advertisements. 48 Items of evidence would generally also include the production of physical samples, i. e. three-dimensional objects. Nevertheless, only in exceptional cases there will be a particular sense to such item of evidence because the Office generally works as a paperless office and photographs can usually do the job to reproduce the relevant details sufficiently. If physical items of evidence are produced, samples for the Office and all parties to the proceedings must be provided. 47

40 Nevertheless, it is not a subsidiary means of taking evidence, unlike the procedural rules in the Member States may prescribe, for instance, in Germany; see also: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 78 mn. 69. 41 See also Bender, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 918. 42 ‘Urkunden’ in German, ‘documents’ in French, ‘documentos’ in Spanish, and ‘documenti’ in Italian. 43 ‘Beweisstu ¨ cke’ in German, ‘e´chantillons’ in French, ‘muestras’ in Spanish and ‘campioni’ in Italian. 44 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 78 mn. 72.

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b) Form. The Regulation does not cover provisions regarding the probative value of 49 documents or items of evidence. This is another important difference to perhaps many of the procedural laws in the Member States. Consequently, as a general rule, any means of evidence can be filed and submitted to the Office as a copy (including facsimile copies and electronic copies). This is a consequence of the procedural provisions in R 79, 80 and 82 of the Implementing Regulation. Therefore, no adverse inference may be drawn by the fact that a telecopy or electronic copy does not produce the original but only a reproduction thereof. Still, technical problems or loss of quality (legibility) may redound to the party’s disadvantage relying on this piece of evidence. If details or colours are important, transmission by facsimile is less appropriate (often disregarded!) and may result in unnecessary delay of proceedings or even loss of rights. Under such circumstances, it is preferable to submit hard copies of the relevant documents or items of evidence (in interparte proceedings typically twofold). Another option is electronic communication (scans and electronic files, particularly, graphic files) but it should be noted that electronic communication according to R 82 of the Implementing Regulation does not necessarily mean that other party to proceedings also opted-in to such communication. This should be double-checked in advance. Otherwise, the Office (in most cases) would have to communicate by telecopier (computer fax) to the recipient, resulting in loss of quality and colour. Other items of evidence within this sense may be self-explanatory and do not require 50 translation into another language, whereas exactly this may be required for documents or specific other items of evidence. The Implementing Regulation provides that documents may be provided in any official language of the European Union, R 96 (2) of the Implementing Regulation, but in opposition proceedings, the opponent generally has to file its evidence to support the opposition (existence and validity of a prior right, and genuine use) in the language of proceedings, R 19, 22 (6) of the Implementing Regulation, at least, upon the other party’s request. When a translation of a document is to be filed, the translation shall identify the document to which it refers and reproduce the structure and contents of the original document, R 98 of the Implementing Regulation. The Office may, in the absence of evidence to the contrary, assume that a translation corresponds to the relevant original text, R 99 of the Implementing Regulation. Additionally, the Office may require the filing of a certificate that the translation corresponds to the original text, R 98 (1) of the Implementing Regulation, to safeguard the probative value of the translation.

4. Hearing witnesses This means of taking evidence has to be construed literally, so that witnesses have to 51 be heard orally. If not, written statements may be drawn-up according to Art. 78 (1)(b). A party to the proceeding cannot be witness. For hearing parties, Art. 78 (1)(a) is applicable. If a party to the proceedings is a legal person or another corporate identity, the meaning of ‘party’ does not stretch to cover executive organs, legal representatives, staff or employees. This definition of a party is formal only. Still, the probative value of such witness statements might be rather limited, and the Office is generally very reluctant to hear witness at all.45 It is the Office’s express preference to have written evidence only.46 45 GC Case T-146/00 Stefan Ruf and Martin Stier v OHIM (Dakota) [2001] ECR II-01797, mn. 65, where the Court refused to hear witness because it felt able to decide on the basis of other evidence submitted (notably: to the disadvantage of the party requesting to hear witness), Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 78 mn. 84. 46 Cf. OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 2, General Principles to be respected in the Proceedings, page 5 at 4.1.

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5. Opinions by experts Opinions by experts47 are neutral evidence unrelated to the parties. While the parties may have specialist knowledge, they are no experts in this sense, covering only persons with a specific expertise and skill unavailable to the Office official, able to state facts or draw conclusions from facts.48 R 58 of the Implementing Regulation provides an outline of how to commission experts and how to take this evidence. 53 Only the expert commissioned by the Office is expert in the sense of Art. 78 (1)(e), whereas experts commissioned by the parties are witness in the sense of Art. 78 (1)(d). 54 The most common procedural situation, where experts are commissioned, is, where acquired distinctiveness, Art. 7 (3), or reputation of a prior trade mark, Art. 8 (5), is at stake.49 52

6. Sworn or affirmed statements in writing Such written statements generally have an equal probative value, compared to the other means of taking evidence in Art. 78 (1) and are very common in Office practice.50 Still, significant problems arise if such statement has been drawn-up by a party interested in the outcome of the proceedings or, where the cumulative requirement that such a statement be sworn or similarly affirmed, is not validly met. 56 a) General. This means of taking evidence will be accepted by the Office as having significant probative value if and to the extent it is (1) a written statement made under (2) oath or in lieu of an oath and, as an implied prerequisite, (3) issued by a neutral source. Statements in writing without oath or similar affirmation are either written information according to Art. 78 (1)(b) or written documents according to Art. 78 (1)(c). 57 The additional requirement set up in Art. 78 (1)(f), namely, the oath or comparable affirmation, is only met, if and to the extent an intentionally or negligently wrong oath within such written statement is punishable as an offense or felony according to the laws of the Member State in which the written statement has been drawn-up and sworn or affirmed. This is, where significant problems start. 58 b) Examples. For example, ‘eidesstattliche Versicherungen’ drawn-up in Germany under German laws51, do not carry this element of criminal liability if wrong, which would apply only, where such wrong written document was intended for presentation at an administrative authority or at Courts in Germany. The Office is no such administrative authority under the German Criminal Code.52 This is why a ‘eidesstattliche Versicherung’ cannot, by definition, in itself be an acceptable means of taking evidence pursuant to Art. 78 (1)(f). This is very often disregarded in proceedings at the Office. One could think that a ‘eidesstattliche Versicherung’ given in front of a notary public in Germany would be an acceptable means of taking evidence in this regard, as such a written statement could indeed carry criminal liability but, according to the relevant German procedural laws, a notary public is no administrative authority in the sense of the German Criminal Code. Consequently, such a declaration is not a valid means of taking evidence according to Art. 78 (1)(f). 55

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‘Sachversta¨ndige’ in German, ‘l’expertise’ in French, ‘peritaje’ in Spanish and ‘perizia’ in Italian. Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 78 mn. 85 with further references. 49 See above, detail commentaries on Art. 7 (3) and Art. 8 (5). 50 See also Bender, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 921. 51 See also Wehlau/Kalbfus, Mitt. 2011, 165. 52 §§ 156, 161 StGB (German Criminal Code). 48

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Another hardship for German users but advantage for English or American users: Affidavits sworn in front of a solicitor or Justice of the Peace in the United Kingdom, or declarations under penalty of perjury under US laws carry this criminal liability and are acceptable means of taking evidence at the Office. It will also be remembered that the Office itself is not authorized to take oaths. If a written statement does not satisfy the full test, it generally could still serve as written information or written document, Art. 78 (1)(b), (c). Again, the fact that such written statements are procedurally admissible does not automatically mean that the statement is credible and will serve as proof of the facts to be proven. If provided by a party, such statements will be, in standing Office and Court practice, be critically examined as to the preciseness and correctness of the information. Consequently, where the statement in writing does not carry the criminal liability that will induce people to tell the truth, the Office practice is very harsh by giving such written declaration no probative value at all, if issued by parties to the proceedings. The Office is of the opinion that such self-testifying by the parties to proceedings would be an unacceptable abuse of procedure.53 This view is shared by the General Court54 and in literature55. It should also be noted that ‘party’ in this sense is not restricted to the formal position in proceedings56 but stretches to cover more or less everybody with a sufficiently close relation to the party so that executive organs, staff and employees are considered biased57. The Office typically accepts only third party declarations having full probative value. Just like the practice of swamping the Office with declarations drawn-up by the parties is a potential problem, it is definitely a problem to say that any such written declaration by an interested party carried little or no probative value. It is plainly wrong to say that such declarations must be disregarded. As already indicated, a distinction has to be made between the procedural admissibility and the credibility.58 Where such statement carries the sanction of criminal liability, it is as such acceptable evidence of high probative value, simply because of the criminal liability. Therefore, there is little to no reason to say that a valid affidavit of an ‘interested’ party carries less credibility than a comparable declaration drawn-up by a neutral third person. Where the national laws of the country where the declaration has been drawnup so provide, it is not upon the Office to disregard probative value, perhaps because the official responsible for the case in its own legal education never came across such legal option.59 If the statement in writing according to Art. 78 (1)(f) issued validly, it has probative value of its own. Even if not, and there is no criminal liability inducing the declarant to tell the truth, such a declaration is more than nothing, namely, a written information or written document according to Art. 78 (1)(b), (c). It is common ground to say that, if a neutral 53 Cf. OHIM The Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 2, General Principles to be respected in the Proceedings, page 6 at 2.5. 54 GC Case T-28/09 Mo-Hwa-Park v OHIM – Chong-Yun Bae (Pine Tree), [2011] ECR II-00001, mn. 68. 55 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 78 mn. 101. 56 See, to this end, the detail commentary above at 5. mn. 52 et seq. 57 See, Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 78 mn. 102 with further references. 58 Explicitly for declarations by interested parties: Bender, in Ekey/Klippel, Markenrecht, Gemeinschafts-markenverordnung, Art. 76 mn. 9 (now: Art. 78). 59 Exactly this problem is referred to as part of the recommendation to abstain from such written declarations in scientific literature: see, to this end, Hoffrichter-Daunicht, in Bu¨scher/Dittmer/Schiwy, Gewerblicher Rechtsschutz Urheberrecht Medienrecht, Art. 78 mn. 4.

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third person issues such written declaration, there is, on the surface of it, no reason to doubt credibility. If the party itself or another person with an interest in the outcome of proceedings issues such declaration, the credibility could indeed be reduced even down to zero but it is still necessary to check the probability and the veracity of the account it contains, by taking account of, inter alia, the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable.60 Therefore, it is not justified to disbelieve the written statement and to vilify the declarant only based on the fact that there are purported clear links between the author of the written statement and the party to the proceedings to whom the declaration may inure.61 Nevertheless, it is certainly recommendable for the parties to not only rely on such written statements but to corroborate such evidence by additional evidence, with a view to (1) allow the Office to come to a comprehensive informed decision and (2) to increase the credibility of the written statement. c) Corroborative effect. Statements in writing sworn or similarly affirmed according to Art. 78 (1)(f) are useful and sensible62 but they require clear structuring and should be followed by other evidence that should be made part of and be referred to in the statement in writing. 67 The corroborative effect is at its best, if this additional evidence is so persuasive and credible that the statement in writing would not be needed at all, short of a summary.63 But, this overwhelming character of the additional evidence is not a requirement. The statement in writing must not be disregarded, if the credibility and plausibility is not reduced to zero. In settled case-law until recently, exactly this inference was drawn, where a statement in writing was not followed by additional evidence – it was said to have no own probative value.64 This is at least a very positive tendency in recent jurisprudence of the European Court of Justice, always requiring an overall assessment of the evidence in the file, thereby including the sworn statement in question.65 The emphasis is on the overall appreciation and assessment of the evidence in the file. A biased assessment shall be avoided just like biased statements as evidence. 66

IV. Procedure for taking evidence Principally, it is upon the respective party to allege facts and to adduce evidence within the framework of Art. 78 (1). Within this framework, there are no specific formal requirements or formal procedures to obey. 69 The provisions in Art. 78 (2)–(4) refer to those cases, where the Office considers a formal taking of evidence expedient. To this end, R 57–60 of the Implementing Regulation cover detailed procedural guidance, regarding the decision to take evidence 68

60 GC Case T-196/13 Nanu-Nana Joachim Hoepp GmbH & Co. KG v OHIM – Lina M. Stal-Florez Botero (Nana) not yet published in the ECR, available at www.curia.eu Õ search Case law; GC Case T-434/09 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm), mn. 33; confirmed by CJ Case C-610/11 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm), mn. 42, 43. 61 Nevertheless, this was exactly the consequence drawn by GC Case T-434/09 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm), mn. 34. 62 v. Kapff, GRUR-Prax 2013, 371, 372. 63 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 78 mn. 105. 64 GC Case T-183/08 Schuhpark Fascies v OHIM – Leder & Schuh (Yello Schuhpark) [2009] ECR II00059, mn. 39; GC Case T-303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita/Solevita), mn. 43. 65 CJ Case C-610/11 Centrotherm Systemtechnik v OHIM – Centrotherm Clean Solutions (Centrotherm), mn. 42.

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formally, the subject and object of such taking of evidence, regarding certain information duties, regarding costs and regarding finalization of the evidence stage. These rules are supplemented by those relating to costs, R 59 of the Implementing Regulation, and relating to available languages, R 95–99 of the Implementing Regulation. Also, the Office publishes guidance relating to such formal taking of evidence66, even though such guidelines are not binding and have intermittently been repealed by the Court.

Article 79 Notification The Office shall, as a matter of course, notify those concerned of decisions and summonses and of any notice or other communication from which a time limit is reckoned, or of which those concerned must be notified under other provisions of this Regulation or of the Implementing Regulation, or of which notification has been ordered by the President of the Office. Rc. 12 Content A. Importance and role of the provision. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. General purpose . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Systematic position. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Commentary. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Scope . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Notification. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Type of notification . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Telecopier communication (facsimile) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Electronic communication . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Postal service . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Other means of communication . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Irregularities in notification. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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A. Importance and role of the provision Art. 79, in combination with R 61–69, 77, 79–82 of the Implementing Regulation, sets 1 up its own standard regarding notification of decisions, summonses and any other notice or communication.1 This standard must not be confused with a formal service within a strict procedural framework that may be known from national laws of the Member States. It is not a judicial act but a very straightforward means of validly communicating with the parties to proceedings.

I. General purpose According to Recital 12, administrative measures are considered necessary at Commu- 2 nity level, by not only providing for the existence of an Office for Harmonization in the 66 Cf. OHIM, The Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 2, General Principles to be respected in the Proceedings. 1 For the parallel provision in Art. 66 CDR, see Hanne, in Hasselblatt, CDR, Art. 66.

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Internal Market (Trade Marks and Designs) but also to grant it the required administrative autonomy, which includes – to some extent – determining the ways of communication with the Office and by the Office. The detail provisions in the Implementing Regulation, which will be discussed in detail below, have done a great deal to simplify proceedings and improve acceptance of the Office and its services throughout the European Union. Due to the fact that the procedural laws regarding (judicial) service in the Member States significantly vary, a very basic standard has been adopted to simplify proceedings and exchange of documents of whatever nature, considering the basic complexity of communication with the Office and by the Office with and between what are now 28 Member States with more than 20 official languages, in a territory of more than 4,200,000 km2 and a population of more than 500 million. It goes without saying that formal judicial service, for instance, by using registered mail with forms regarding acknowledgement of receipt, may cause significant trouble and delay in proceedings. Therefore, the Office almost exclusively makes use of communication via technical means and the rules of procedure provide for rather basic evidence to prove due notification. This basic structure has been part of the great success of the Community trade mark system.

II. Systematic position Other European institutions, particularly the Courts, adopt a similar regime in their Rules of Procedure. Art. 48 of the Rules of Procedure of the Court of Justice provide that communication and notification by facsimile or other technical means is the general rule upon agreement by the addressee (to declare once), superseding the basic rule that service shall take place by dispatch of a copy of the document or decision to serve by registered post with a form for acknowledgment of receipt. Facsimile communication or communication by other technical means is typically accepted by the parties. Similar applies at the General Court, according to Artt. 44 (2), 100 of the Rules of Procedure of the General Court, by superseding the basic rule of services at an address in Luxembourg or by personal delivery. These types of formal service are hardly ever used. 4 The Courts have adopted a regime regarding electronic communication in 2011, on the basis of which lodging and service of procedural documents is possible electronically.2 OHIM also works by electronic means since 2004 but the scope of such electronic communication with the Office has undergone significant changes since then, particularly in November 2013.3 5 Art. 79 covers communication and notification by the Office, whereas R 79–82 of the Implementing Regulation cover communication by the parties with the Office. 3

B. Commentary I. Scope 6

According to Art. 79, as a matter of course, the Office shall notify specific documents to the parties to grant due process. Art. 79 covers decisions4, summonses and any other notice or communication from which a time limit is reckoned, or of which those 2

Decision of the Court of 13.9.2011 (to download at http://curia.europa.eu/jcms/jcms/Jo2_7031). Decisions no. EX-04-6 of 16.7.2004, EX-11-3 of 18 April 2011 and EX-13-2 of 26.11.2013. 4 As per the definition given above in Art. 75 mn. 5–6. 3

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concerned must be notified under other provisions of this regulation or the Implementing Regulation, or of which notification has been ordered by the President of the Office. This will cover all decisions, against which appeal or another legal remedy or legal redress, particularly an action to the Court according to Art. 65, is possible, summonses for oral hearings (hardly ever used)5, and other communications and notifications for which the President of the Office has prescribed notification. However, the President has not yet used this authority.

II. Notification R 61–69 of the Implementing Regulation cover detailed provision regarding the type of notification (how), the addressee of the notification (to whom) and the type and nature of the document to notify of (what). Generally, notification according to R 61–69 is not a judicial process but the way how to transfer information or deliver a communication to an addressee. As this refers to a matter of fact, the act of notifying, the Implementing Regulation covers a number of provisions regarding onus of proof and proof of notification. Notification therefore means that the document has entered the sphere of the addressee, irrespective of whether the addressee has been apprised of the document. If the proper procedure of notification has been followed, the document is deemed to have been notified unless the addressee proves that the document did not reach him at all or reached him at a later point in time. Conversely, where the proper procedure of notification was not followed, the document will nevertheless be considered notified if the Office can prove that the document actually reached the addressee/recipient.6 Until notified, the document to notify is not valid against the addressee or addressees and may still be changed, whereby notification has to take place or has to be repeated.7 Recipient of the notification is either the party to the proceedings itself or its representative. Is there a representative, notification has to be made to this representative, R 67 (1) of the Implementing Regulation, irrespective of the question whether the party to the proceedings has to appoint a representative according to Art. 92 (2). Notification to the representative has the same effect as notification to the represented party to the proceedings, R 77. Representative in the sense of Art. 79 and R 67 of the Implementing Regulation is the professional representative according to Art. 93 (legal practitioner or other professional representatives on a list maintained by the Office) and any other authorized representative within the meaning of Art. 92 (3).8 Under such circumstances, it is irrelevant whether the Office also has notified the represented party and it is also irrelevant whether the represented party has received the document from its representative or whether the notification sets a time limit to start.9 Put the other way round it is in breach of R 67 (1) to notify only the represented party if there is a

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See above detail commentary to Art. 77 mn. 1, 11–12. OHIM, Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 1, Means of Communication, page 5 at 3.2 (final; status 1 August 2014). 7 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 79 mn. 4. 8 OHIM, Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 1, Means of Communication, page 7 at 3.3; GC Case T-279/09 Antonino Aiello v OHM – Cantoni ITC (100 % Capri), mn. 29, 31. 9 CJ Case C-479/09 Evets v OHIM (Danelectro) [2010] ECR I-00117, mn. 40, 41. 6

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representative appointed.10 It is sufficient to notify one of the representatives, if there are more than one.11 The Office, according to R 1 (1)(e) of the Implementing Regulation, under such circumstances, typically only considers the first address for notification indicated and notifies only the representative mentioned first, unless another specific address for notification has been indicated.12 Parties to the proceedings can appoint a joint representative, R 75, so that notifications will be made only to this joint representative, R 67 (3) of the Implementing Regulation.

III. Type of notification The Office will either notify the signed original document by post, or a copy of the document which need not be signed, as the President of the Office in his decision EX97-113 has made use of the power under R 55 (2) of the Implementing Regulation to prescribe that the indication of the name of the official responsible suffices.14 The Implementing Regulation covers detailed provisions regarding the means of notification. By far the most relevant means of communication are by telecopier and by electronic communication. Postal service is the ‘fallback’ option and the other options mentioned, namely, by hand delivery, R 63 of the Implementing Regulation, by deposit in a post box at the Office, R 64 of the Implementing Regulation, and by public notification, R 66 of the Implementing Regulation, are not really relevant in practice. 12 Except for public notification which is subject to specific requirements, all types of notification are equally effective and valid which is confirmed by R 61 (3) of the Implementing Regulation and has been confirmed in Court jurisprudence.15 11

1. Telecopier communication (facsimile) So far the most important means to communicate with the Office, concerning all divisions, departments and also concerning the Boards of Appeal, is communication by telecopier (facsimile). This specific means of communication is provided for in R 65 of the Implementing Regulation. The Office works as a paperless Office, so that facsimile notification means the Office sends computer-generated facsimiles via its facsimile servers. Typically, there is no physical hard copy of documents maintained at the Office. 14 This type of communication is contingent only to the party’s consent issued once, and the consent will be implied by indicating a facsimile number in any communication directed to the Office. The Office henceforth will only communicate by telecopier, R 1 (1)(b) of the Implementing Regulation. 15 Communication by telecopier is so common that pleased of irregularity will not be heard, for instance, that the document notified by telecopier was not the original document as created or received by the Office but a copy only. While such a plea could have reasonable chances of success under the procedural laws of the Member States which require for a ‘written form’ (of the original) in process of service, the Office 13

10 GC Case T-279/09 Antonino Aiello v OHM – Cantoni ITC (100 % Capri) available at www.curia.eu Õ search Case law, mn. 29, 31; GC Case T-326/11 Brainlab v OHIM (Brainlab) available at www.curia.eu Õ search Case law, mn. 49. 11 CJ Case C-479/09 Evets v OHIM (Danelectro) [2010] ECR I-00117, mn. 48. 12 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 79 mn. 8. 13 Decision No. EX 97–1 of 1.4.1997. 14 See also above Art. 75 mn. 28. 15 GC Case T-380/02 Success-Marketing Unternehmensberatungsgesellschaft v OHIM – Chipita International (Pan & Co.) [2005] ECR II-01233, mn. 58, 60.

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applies different rules and restricts the notification required to a technical transmission to the addressee, not a formal legal procedure.16 Notification is complete and terms start to run upon confirmation in a facsimile 16 transmission protocol with the status ‘ok’. This transmissions status is basis for the assumption of receipt at the addressee.17 To this end, the Office maintains facsimile logs, serving as full evidence of notification, requiring the addressee to prove the opposite in case the document was indeed not received. Notification shall be deemed to have taken place on the date on which the commu- 17 nication was received by the telecopying device of the addressee so that terms start to run this very date, even if a weekend or a public holiday in the Member State of the addressee.

2. Electronic communication Until 25 November 2013, and since July 2004, the Office operated a type of electronic mail box or deposit box called ‘MyPage’. With the complete re-launch of the website and all electronic services on 2 December 2013, the ‘MyPage’ functionality was replaced by significantly extended possibilities for electronic communication, namely, by decision No. EX-13-2.18 Since inception of this new system, the Office grants access to its electronic systems by providing ‘user accounts’ in the ‘user area’. Upon setting up a user account in accordance with the specific rules applicable, the Office makes available an electronic communications platform that will enable users to receive, view, print and save electronically available documents and notifications sent to them by the Office as well as to reply to such notifications and file requests and other documents. Access to this user area will be granted only to users that are registered and have provided for contact details. This user area offers the option to receive all communications from the Office electronically. If the user chooses this option, the Office will send all notifications electronically via this electronic platform, unless this is impossible for technical reasons. Once the user has activated the option that the Office communicates with him electronically, pursuant to Art. 4 of decision No. EX-13-2, all electronically available official notifications from the Office to the user will in principle be made via the electronic platform. The Office is entitled to deposit all documents in this user area in the user account, and such deposition shall serve as valid notification. Procedurally, and as a matter of practicability, the Office may, upon additional request, send alerts for each notification sent, by e-mail, SMS or any other technical means provided for. The alert, however, has no legal effect, it will serve for information purposes only and is understood as a courtesy by the Office. Establishing this system of electronic communication comes with some formal requirements for the users, noteworthy to comply with the terms and conditions concerning electronic communication.19 The date on which the document to notify is placed in a user’s inbox will be recorded by the Office and mentioned in the user area. This is generally the date as of which notification is valid. It should be noted, however, that Art. 4 (4) of decision No. EX-13-2 reads that notification will be deemed to have taken place on the fifth calendar day 16 OHIM, Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs) Part A, General Rules, Section 1, Means of Communication, page 5 at 3.2. 17 OHIM, Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs) Part A, General Rules, Section 1, Means of Communication, page 5 at 3.2.1. 18 Decision No. EX-13-2 of the President of the Office of 26.11.2013. 19 Terms and conditions concerning electronic communication with and by the Office, 26.11.2013, as Annex to decision No. EX-13-2 of the President of the Office.

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following the day on which the Office placed the document in the user’s inbox. While this additional period may gain the user some additional time (when a time limit is set), it also requires the user to actively handle and administer the inbox and to review it regularly. The five days’ extension is arbitrary and reflects the Office’s recommendation to check the inbox at least once a week. Notification takes place irrespective of whether the recipient actually opened and read the document. The date on which the document was placed will be mentioned in the holder’s inbox and will be recorded by the Office. According to Office information, it will also log access to and retrieval of documents placed in the inbox. This may have an impact on cases of reinstatement (restitutio in integrum, Art. 81). 24 The user can at any time choose among the available means of communication for notifications from the Office so that it is possible to opt-out from electronic communication and to return to telecopier telecommunication, or vice versa, but this change in the status will be applicable only as soon as technically feasible, Art. 4 (5) of decision No. EX-13-2. 25 This whole new systems sets new standards in communication with the Office and might become a real help in establishing completely paperless offices, also at the users’ end. However, this system of electronic communications definitely requires that the Office provides for technical facilities and a stable, reliable electronic system. At the time of inception of this new system, it was, as a matter of fact, still rather unreliable and faced a number of technical problems and bugs, as well as downtime so that the additional grace period of five days granted makes sense from this perspective as well. 26 Until the electronic communication systems works reliably, it may be recommendable to rely on the more classic means of communication for the majority of notifications at least. In the long run, however, telecopier communication will lose its relevance and the electronic communication will take over. The previous ‘MyPage’ system was used by about 40 % of the overall users, at least for some types of notification, particularly regarding publication of a trade mark for opposition purposes.20 The new system of electronic communication shall be used by substantially all users by end of 2015, according to Office plans. Key users of the Office with substantial application numbers are, until end of 2014, invited to participate in a key user program with increased technical and administrative support from the Office.

3. Postal service With regard to notification by post, the procedure will vary according to the nature of the document notified. If the addressee has a place of business or domicile within the European Union or has appointed a professional representative, decisions subject to the time limit for appeal, as well as summonses, will be notified by registered letter with a record of delivery, R 62 (1). All other notifications shall be by ordinary mail. Notifications in respect of addressees having neither their domicile nor their principal place of business nor an establishment in the European Community and who have not appointed a representative, shall be effected by posting the document requiring notification by ordinary mail to the last address of the addressee known to the Office, R 62 (2) of the Implementing Regulation. 28 In both cases, the document shall be deemed to be delivered to the addressee on the tenth day following that of its posting, unless the letter has failed to reach the addressee or has reached him at a later stage, R 62 (3) of the Implementing Regulation. The burden of proof to show proper notification is with the Office. Notification by registered 27

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Art. 79 CTMR

letter, with or without record of delivery, shall be deemed to have been effected even if the addressee refuses to accept the letter. Notification is effected not prior to this ten days’ grace period on account of distance 29 but it is possible to show that the notification was effected only after this additional period.21 This applies for notification by registered mail. Notification by ordinary mail, R 62 (5) of the Implementing Regulation, does not allow the proof to the opposite that the document was actually received after ten days or not at all. R 62 (5) is an irrefutable assumption in the Office’s favour. This is at least a position taken in literature, whereas the General Court in its decision MIURA confirmed that this assumption must not be irrefutable to grant due process. Where there are indications establishing a reasonable doubt, the addressee may raise this doubt and thereby put the Office under the obligation to fully prove proper notification.22 It is apparently still not settled in case-law what ‘post’ actually means. The Attorney 30 General in the case K-SWISS, outlined that this covered not only official public mail services (previously state-owned) but also private mail services like UPS, DHL etc.23 The European Court of Justice, however, found that delivery of an Office decision by DHL was not included in the means of notification provided for in R 62.24 This decision may be correct in cases, where an advice of delivery is required (registered mail) but the courier service used does not issue such advice of delivery, but the decision is questionable for all other cases. In consequence thereof, OHIM notifies decisions by using courier services or private mail services only in exceptional circumstances (when no facsimile number is indicated or the number indicated is not valid), and then – currently – uses DHL. Such communication will come with explicit reference that the notification was complete upon receipt.25

4. Other means of communication The possible other means of communication by the Office include notification by 31 hand delivery, R 63 of the Implementing Regulation, by deposit in a post box at the Office, R 64 of the Implementing Regulation, and by public notification, R 66 of the Implementing Regulation. Hand delivery and deposit in a post box at the Office have never become significant 32 means of notification because hand delivery may be effected only on the premises of the Office, and post box notification requires that the addressee has been provided with such a post box at the Office’s premises. Public notification is a relevant means of communication and will be used for all 33 notifications when the address of the addressee is unknown or when notification by post has returned to the Office after at least one attempt.26 21 Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art. 79 mn. 22 with further references; GC Case T-191/11 Automobili Lamborghini Holding v OHIM – Miura Martinez (Miura) available at www.curia.eu Õ search Case law, mn. 33, 34. 22 GC Case T-191/11 Automobili Lamborghini Holding v OHIM – Miura Martinez (Miura), mn. 34, 35, distinguishing itself from previous judgments in GC Cases T-380/02 and T-128/03. 23 Opinion of Attorney General Bot of 8 May 2008, Case C-144/07 K-SWISS v OHIM (K-SWISS), mn. 47–70. 24 CJ Case C-144/07 K-SWISS v OHIM (K-SWISS) [2008] ECR I-07367, mn. 22; not up to date (the last available edition is of 2003): Bender, in Ekey/Klippel, Markenrecht, Gemeinschaftsmarkenverordnung, Art. 77 mn. 6 (now: Art. 79). 25 Bender, in Fezer, Handbuch der Markenpraxis, Markenverfahren, mn. 271. 26 OHIM, Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs) Part A, General Rules, Section 1, Means of Communication, page 6 at 3.2.6.

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CTMR Art. 80

Community Trade Mark Regulation

Following decision No. EX-05-627, public notification is made online in the internet28, and according to R 66 (2) of the Implementing Regulation notification is deemed to be effected after expiration of a period of one month. This term starts to run with the date of publication online in the internet. 35 Public notification is possible when notification by post failed. Notification by telecopier or by electronic communication cannot replace notification by post because R 66 of the Implementing Regulation refers back only to R 62 of the Implementing Regulation. Consequently, if an addressee opts-in to telecopier communication or electronic communication but this means of communication fails, the Office has to try notification by post first, before public notification becomes an option. 36 Although one would think that the parties carefully indicate correct addresses and means of communication, public notification has to be used quite regularly.29 34

IV. Irregularities in notification According to R 68 of the Implementing Regulation, where a document has reached the addressee, the document shall be deemed to have been notified on the date of receipt if the Office otherwise is unable to prove that it has duly notified, or if provisions relating to the notification have not been observed. As a consequence, R 68 of the Implementing Regulation generally provides for the possibility to cure irregularities in notification and breaches of due process. Also, the onus of proof is with the Office to show the date of actual receipt.30 There are no assumptions striking in the Office’s favour. The Office is free to rely on the date as of which the irregularity was cured, or to make another attempt of notification in due process. R 68 of the Implementing Regulation is not applicable, if there is no irregularity in notification – under such circumstances, R 62 (2), (5) of the Implementing Regulation prevail. 38 If there are irregularities in notification which are not cured, this automatically also results in a violation of Art. 75 because the procedural right to be heard is not granted.31 37

Article 80 Revocation of decisions 1. Where the Office has made an entry in the register or taken a decision which contains and obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked. Where there is only one party to the proceedings and the entry or the act affects its rights, cancellation or revocation shall be determined even if the error was not evident to the party. 2. Cancellation or revocation as referred to in para. 1 shall be determined, ex officio or at the request of one of the parties to the proceedings, by the department which made the entry or took the decision. Cancellation or revocation shall be deter27

Decision No. EX-05-6 of the President of the Office of 27.7.2005, repealing decision No. EX-96-5. At http://oami.europa.eu/ohimportgal/en/public-notifications. 29 In 2013, 725 public notifications have taken place in trade mark matters, and 1.274 public notifications in design matters; until 6 November 2014, 695 public notifications have taken place in trade mark matters and 1081 in design matters; the figures seem to be stable, but at a rather higher level. 30 GC Case T-28/09 Park v OHIM – Bae (Pine Tree) [2011] ECR II-00001, mn. 32. 31 GC Case T-191/11 Automobili Lamborghini Holding v OHIM – Miura Martinez (Miura), mn. 41; see also above, Art. 75 mn. 17–27. 28

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Revocation of decisions

Art. 80 CTMR

mined within six months from the date on which the entry was made in the register or the decision was taken, after consultation with the parties to the proceedings and any proprietor of rights to the Community trade mark in question that are entered in the register. 3. This article shall be without prejudice to the right of the parties to submit an appeal under Article 58 and 65, or to the possibility, under the procedures and conditions laid down by the Implementing Regulation, of correcting any linguistic errors or errors of transcription and obvious errors in the Office’s decisions or errors attributable to the Office in registering the trade mark or in publishing its registration. Content A. Importance and role of the provision. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 I. General purpose . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 II. Systematic position and development. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 B. Requirements of the provision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5 I. Error or mistake . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5 1. Obvious procedural error . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 2. Other errors and obvious mistakes . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7 II. Procedure. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8 1. Term. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 2. Ex-parte proceedings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 3. Inter-parte proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 III. Consequence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16

A. Importance and role of the provision Art. 80 has been implemented by Council Regulation (EC) No. 422/2004 of March 9, 1 2004, amending Council Regulation (EC) No. 40/94 of December 20, 1993, on the Community trade mark.1 Art. 80 has to be read in combination with R 14, 27, 53 and 53 a of the Implementing Regulation, which may provide lex specialis. Art. 80 and the related provisions in the Implementing Regulation are applicable in ex-parte proceedings and in inter-parte proceedings, and establish a possibility to correct or rectify errors and mistakes, without being prejudicial for the right to seek other legal remedy or legal redress, particularly appeal.

I. General purpose Art. 80 and R 14, 27, 53 and 53 a of the Implementing Regulation justify to rectify 2 Office acts which may otherwise be binding and final (res judicata) and therefore, limit, to some extent, the principle of legal certainty. As this principle of legal certainty is generally paramount, such rectification is possible only pursuant to narrow, precisely defined requirements. Its purpose is to rectify only severe and obvious errors and mistakes.

1

It has no counterpart in the Community Design Regulation.

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CTMR Art. 80

Community Trade Mark Regulation

II. Systematic position and development Art. 80 has no counterpart in the Rules of Procedure of the European Court of Justice or the General Court. More specific provisions are provided in R 14, 27, 53 and 53 a of the Implementing Regulation. Art. 80 has been introduced into the Regulation only effective 25 July 2005, as a consequence of deliberations by the competent working group of the European Council that, under specific circumstances, certain acts of the Office may be rectified, where no legal remedy or legal redress is available or where such legal redress or legal remedy is not in the interest of the parties concerned. 4 Based on this systematic position and historical development, the current approach is to grant correction or revocation only for a very limited period of time and relating to the most blatant errors and mistakes. However, the Regulation is currently again under review and the Commission proposals2 of 27 March 2013, include significant amendments to Art. 80 in that the applicable term shall be doubled from six months to one year and that Art. 80 may no longer be restricted to procedural errors but could also cover other errors attributable to the Office, therefore including errors and mistakes on the substance. This would significantly extend the scope of Art. 80. So far, this has not become law. 3

B. Requirements of the provision I. Error or mistake 5

Under certain conditions a decision taken by the Office can be revoked or an entry in the register cancelled.

1. Obvious procedural error 6

Only when an obvious procedural error attributable to the Office has been made, an entry in the register can be cancelled or a decision be revoked. A decision or entry contains an obvious procedural error in cases, where an error occurred in the proceedings, usually, when a necessary procedural step was omitted, or where the decision or entry ignores a procedural action taken by the parties. The Manual concerning proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs) provides a list of not exhaustive examples of obvious procedural errors, including, among others, where a Community trade mark is registered despite having been previously withdrawn, the Community trade mark is registered despite a successful opposition, the Community trade mark’s refusal on absolute grounds is notified before the expiry of the time limit given to the applicant to file observations or the Community trade mark is refused on absolute grounds ignoring a valid request or evidence submitted regarding acquired distinctiveness.3 2

COM (2013) 161 final, 2013/0088 (COD). Cf. OHIM, Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A. General Rules, Section 6, Revocation of Decisions and Cancellation of Entries in the Register and Correction of Errors, pages 3–4 (final; status 1 August 2014); a number of examples is given by Pohlmann, Verfahrensrecht der Gemeinschaftsmarke, § 1 mn. 231. 3

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Revocation of decisions

Art. 80 CTMR

2. Other errors and obvious mistakes R 14, 27 and 53 of the Implementing Regulation cover, next to Art. 80, mistakes or 7 errors attributable to the Office and other obvious mistakes. This covers linguistic errors, errors of transcription and those errors which are so obvious that nothing but the wording as corrected could have been understood.4 The distinction between obvious procedural error and other errors and obvious mistakes, respectively, is that, in the first case, the Office said what it meant but based its understanding on a wrong premise, whereas, in the second case, the Office said ‘X’ when it meant ‘Y’.5

II. Procedure The decision to revoke or correct shall be determined ex officio or at the request of 8 one of the parties to the proceedings, by the department or unit of the Office which made the entry or took the decision.

1. Term In any way, the Office must verify the obvious procedural error or other errors and 9 obvious mistakes, respectively. The current time limit of six months, as provided in Art. 80 (2), needs to be observed. This time limit may cause significant practical problems, as this term is calculated from the date on which the entry was made in the register or the decision was taken and requires that the decision to revoke or correct be made within this period of time, potentially, after hearing the parties. Also, the period of time to file an appeal is part of this six months’ term in that the Office must not act according to Art. 80, where an appeal is still possible. The appeal term is two months and typically, the Office grants terms of two months to the parties to file observations on an intended revocation or correction. In inter-parte proceedings, such terms may add up to six months, fully consuming the term provided in Art. 80 (2). This plain example shows the practical problems to a apply Art. 80. In Office practice, shorter terms than two months to file observations are set. The Office, in its Manual, provides also for another solution to this problem, namely, by calculating the applicable term by sending of the letter informing the parties about the Office’s intention to revoke/correct. As long as this letter is sent within six months, the actual revocation can take place after the six months have expired.6 This Office practice, however, may contradict Art. 80 (2) which reads that the cancellation or revocation shall be determined within six months, not that the intention to do so be determined within six months. Although the Office practice shall obviously serve the practicability of the provision, it may be in breach of the laws. 4 Cf. OHIM, Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A. General Rules, Section 6, Revocation of Decisions and Cancellation of Entries in the Register and Correction of Errors, page 8, with further references relating to the joint statements by the Counsel and the Commission entered in the minutes of the Council Meeting at which the regulation was adopted. 5 Cf. OHIM, Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A General Rules, Section. 6, Revocation of Decisions and Cancellation of Entries in the Register and Correction of Errors, page 8. 6 Cf. OHIM, Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 6, Revocation of Decisions and Cancellation of Entries in the Register and Correction of Errors, page 5.

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CTMR Art. 80

Community Trade Mark Regulation

2. Ex-parte proceedings Where the Office finds, in ex-parte proceedings, that there has been an error, it informs the party concerned of its intention. If the party agrees or does not submit any observations, the Office will revoke the decision or cancel the entry, respectively, and can do so by simply informing the party. If the party does not agree, a formal decision has to be taken, which is subject to the usual requirements. 11 Where the party informs the Office, in ex-parte proceedings, the Office will determine whether the request has to be granted. If so, the Office will inform the party. If the Office finds that the request shall not be granted, it will reject the party’s request by way of decision.7 10

3. Inter-parte proceedings Different applies in inter-parte proceedings, resulting from the general principle of the right to be heard. 13 If the Office itself discloses relevant circumstances to revoke or correct, the Office informs both parties of its intention and invites to file observations. Where the parties agree or do not submit any observations in reply, the Office will act accordingly to its intention, by simply informing both parties. Where one of the parties does not agree, a decision has to be taken which, again, is subject to the usual requirements. 14 In cases, where one of the parties informs the Office, it is relevant whether this party informing the Office is adversely affected by the error or not. If so, the Office has to invite the other party to file observations if it determines that the request was wellfounded. If the party not adversely affected agrees or does not file observations, the Office may proceed according to its own determination of the request filed by the party adversely affected. Where the other party does not agree, the Office has to take a reasoned decision. 15 Where the request is put forward by the party that gained an advantage and the Office determines that the request is well-founded, it has to inform the party adversely affected and may, at the same time, notify revocation or correction, respectively because this will be to the other party’s advantage only. Such a communication is not a formal decision.8 12

III. Consequence If an obvious procedural error, other relevant errors and obvious mistakes, respectively, have been determined by the Office, within the procedure outlined above II., revocation or correction are the required consequence. In some instances, re-publication is required. 17 In case of revocation, R 53a of the Implementing Regulation is lex specialis to Art. 80, as far as decisions are concerned. The procedure is as outlined above II. 16

7 Cf. OHIM, Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 6, Revocation of Decisions and Cancellation of Entries in the Register and Correction of Errors, page 6. 8 Cf. OHIM, Manual concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part A, General Rules, Section 6, Revocation of Decisions and Cancellation of Entries in the Register and Correction of Errors, page 7.

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Restitutio in integrum

Art. 81 CTMR

In case of corrections, R 14, 27 and 53 of the Implementing Regulation are leges 18 speciales to Art. 80, inasmuch corrections of mistakes and errors in publication of an application, of a registration, a registration in the register or errors in decisions are concerned. Where correction according to these rules is applicable, the Office cannot revoke. Publication and re-publication, respectively, may be required under R 14 (3), 27 (3) 19 and 53 a (5) of the Implementing Regulation, to make the public aware of the rectification made. Publication and re-publication, respectively, will take place once the rectification has become final.

Article 81 Restitutio in integrum 1. The applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis-a`-vis the Office shall, upon application, have his rights re-established if the obstacle to compliance has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any right or means of redress. 2. The application must be filed in writing within two months from the removal of the obstacle to compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time limit. In the case of non-submission of the request for renewal of registration or of non-payment of a renewal fee, the further period of six months provided in Article 47 (3), third sentence, shall be deducted from the period of one year. 3. The application must state the grounds on which it is based and must set out the facts on which it relies. It shall not be deemed to be filed until the fee for reestablishment of rights has been paid. 4. The department competent to decide on the omitted act shall decide upon the application. 5. This Article shall not be applicable to the time limits referred to in paragraph 2 of this Article, Article 41 (1) and (3) and Article 82. 6. Where the applicant for or proprietor of a Community trade mark has his rights re-established, he may not invoke his rights vis-a`-vis a third party who, in good faith, has put goods on the market or supplied services under a sign which is identical with, or similar to, the Community trade mark in the course of the period between the loss of rights in the application or in the Community trade mark and publication of the mention of reestablishment of those rights. 7. A third party who may avail himself of the provisions of paragraph 6 may bring third party proceedings against the decision re-establishing the rights of the applicant for or proprietor of a Community trade mark within a period of two months as from the date of publication of the mention of reestablishment of those rights. 8. Nothing in this Article shall limit the right of a Member State to grant restitutio in integrum in respect of time limits provided for in this Regulation and to be observed vis-a`-vis the authorities of such State.

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CTMR Art. 81

Community Trade Mark Regulation Content

I. Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Historic development . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Overview . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) General principles . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Individual rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Demarcation to other rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Scope of application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Time limits. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Selected applicable time limits . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Selected non-applicable time limits . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Explicitly excluded time limits, Art. 81 (5) . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Art. 81 (2) – restitutio in integrum. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Art. 41 (1) and (3) – oppositions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Art. 82 – continuation. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Substantive requirements. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Reasons. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Duty of care . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Applicant/proprietor. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Professional representative. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Employees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Delivery services. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . e) Office. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Formal requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Form . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Language . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Fee, Art. 81 (3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Applicant. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Time Limits, Art. 81 (2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Filing of application for restitutio in integrum . . . . . . . . . . . . . . . . . . . b) Completion of omitted act. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Absolute bar . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Renewals/payment of renewal fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Completion of omitted act, Art. 81 (2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7. Statement of grounds, Art. 81 (3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Decision and legal consequences . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Competent department, Art. 81 (4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Consequences for the applicant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Consequences for third parties, Art. 81 (6) . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Legal remedies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Remedies for the applicant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Remedies for third parties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Remedies for specific third parties, Art. 81 (7). . . . . . . . . . . . . . . . . . . . . . . VII. National law, Art. 81 (8). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 1 5 5 14 22 24 24 25 32 35 37 39 41 42 42 45 48 53 81 86 95 99 99 100 102 106 108 108 115 116 118 119 123 128 129 132 134 141 142 144 145 150

I. Introduction 1. Historic development 1

Art. 81 corresponds to former Art. 78 of Council Regulation (EC) No 40/94 of 20 December 19931 which has been codified by Council Regulation (EC) No 207/2009 of 26 February 20092 but left the substance of this provision unaffected. 1 2

OJ L 11, 14.1.1994, p. 1. OJ L 78, 24.3.2009, p. 1.

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Art. 81 CTMR

It has been amended by Art. 1 (22) of Council Regulation (EC) No 422/2004 of 19 2 February 20043 which introduced the applicability of restitutio in integrum to the time limit for claiming the priority according to Art. 29, and the continuation of proceedings against payment of a special fee for certain time limits in Art. 82, at the same time amending Art. 81 (5) which previously excluded the time limit for the priority claim from restitutio in integrum. The provision is closely based on the corresponding provision in Art. 122 European 3 Patent Convention (EPC). The GC has denied, however, the direct applicability of judgments in relation to the EPC since the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it which applies independently of any other system.4 The case law of the CJ pertaining to the EPC should nevertheless be a useful source for arguments for the application of Art. 81.5 OHIM has adopted guidelines in relation to the application and interpretation of this 4 provision which are amended from time to time.6 The current version adopted on 1 August 2014 is available on OHIM’s website.7

2. Overview a) General principles. The regime of time limits in the Regulation is strict. The GC and CJ as well as the Office are interpreting the rules relating to all time limits extremely narrow. To counterbalance these strict rules and their interpretation, the Regulation provides for a possibility of the re-establishment of rights of a party to proceedings before the Office, the restitutio in integrum or re-establishment/reinstatement of rights in the case of exceptional events which cannot be predicted from experience.8 The requirements for the application of restitutio in integrum itself must be interpreted strictly too. Observance of time limits is a matter of public policy and restitutio in integrum in relation to a time limit after its expiry is capable of undermining legal certainty.9 Discrimination and subjectivity shall also be prevented.10 Not least, Art. 81 is based on the assumption that parties to proceedings before the Office must be vigilant in defending their interests.11 There are exceptional cases, however, where a party was unable to observe a time limit vis-a`-vis the Office in spite of acting with all due care as required by the circumstances, provided that the failure to observe the time limit had the direct consequence of causing a loss of rights or means of redress.12 For such events, it is seen as adequate to give individual fairness the preference over the overall legal certainty principle. The concept of restitutio in integrum contains an objective element relating to abnormal circumstances unconnected with the party in question that make up the 3

OJ L 70, 9.3.2004, p. 1. CJ C-479/09 Evets Corp. v OHIM [2010] ECR I-117, mn. 49. 5 Scha ¨fers Benkard, Europa¨isches Patentu¨bereinkommen, Art. 122, mn. 3. 6 OJ OHIM 2004, 770. 7 https://oami.europa.eu/ohimportal/en/manual-of-trade-mark-practice (last visited 25 February 2015). 8 GC Case T-136/08 Aurelia Finance SAv OHIM [2009] ECR II-1361, mn. 26. 9 GC Case T-267/11 Video Research USA, Inc. v OHIM [2012], not published in the ECR, mn. 35. 10 GC Case T-358/07 PubliCare Marketing Communications v OHIM [2008], not published in the ECR, mn. 9; OHIM Dec. of 23/05/2013 – R 612/2013-2 – Ideal/LA IDEAL, mn. 19. 11 OHIM Dec. of 22/12/1999 – R 130/1999-1 – IDEAL, mn. 43. 12 GC Case T-267/11 Video Research USA, Inc. v OHIM [2012], not published in the ECR, mn. 18; GC Case T-314/10 Constellation Brands, Inc. v OHIM [2012], not published in the ECR, mn. 16 et seq.; GC Case T-187/08 Rodd & Gunn Australia Ltd v OHIM [2010] ECR II-58, mn. 28; GC Case T-366/04 Hensotherm AB v OHIM [2006] ECR II-65, mn. 48. 4

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impediment or cause of non-compliance with the missed time limit, and a subjective element involving the obligation, on the party’s part, to guard against consequences of the abnormal event by taking the appropriate steps without making unreasonable sacrifices.13 The standard of all due care requires a comparison between an ideal standard and the acts or omissions of the party to the proceedings as they actually took place, and does not involve a fictional comparison of acts or omissions as they occurred with hypothetical acts or omissions that could have occurred. The standard is not whether, with hindsight, someone is smarter than before but whether the measures that could have and should have been taken at the relevant point in time were actually taken.14 Therefore, a case of force majeure is not necessarily required to fulfil the prerequisite of an exceptional event but rather is the most extreme case of such an event. The concept of force majeure covers unusual circumstances which make it impossible for the relevant act to be carried out.15 Even though it does not require absolute impossibility, it does require abnormal difficulties which are independent of the will of the person concerned and which are apparently inevitable even if all due care is taken.16 In particular, the individual must pay close attention to the course of the procedure set in motion and, in particular, demonstrate diligence in order to comply with the prescribed time limits.17 The duty to exercise due care lies in the first instance with the proprietor of the trade mark. If the proprietor delegates administrative tasks relating to a mark, he must ensure that the person chosen offers the assurance necessary to enable it to be assumed that those tasks will be carried out properly. Since those tasks have been delegated, the person chosen is subject to the requirement to exercise due care just as much as the proprietor. Since that person acts on behalf of and in the name of the proprietor, its actions must be regarded as being the proprietor’s actions.18 If restitutio in integrum is granted, a legal fiction applies – all detriments of the initial failure to comply with a time limit are eliminated, and the proceedings continue as if the time limit had been originally met. The vast majority of cases decided by the CJ and the Office show, however, that it is, in accordance with the prerequisites of this provision, exceptional to fulfil all requirements of restitutio in integrum to the conviction of the deciding bodies. Even more than for the trade mark applicants or proprietors themselves, the standards for professional representatives are so high that it is very rare to successfully accomplish the reestablishment of rights. Consequently, all applicants are well-advised to draft their request for restitutio as well as all accompanying documents, evidence and affidavits with extreme care and diligence.

b) Individual rules. Art. 81 (1) provides the general rule that the re-establishment of rights of a Community trade mark applicant or proprietor in proceedings before the Office is available where all due care required by the circumstances has been taken but a time limit has nevertheless been missed with the effect that a right or means of redress is lost. 15 According to Art. 81 (2), the application for restitutio has to be filed within two months from removal of the obstacle that has caused the non-compliance with the 14

13

OHIM Dec. of 07/08/2007 – R 537/2007-2 – RAIDER, mn. 12. OHIM Dec. of 25/06/2012 – R 1928/2011-4 – SUN PARK HOLIDAYS/SUNPARKS, mn. 22. 15 OHIM Dec. of 13/09/2005 – R 628/2006-2 – SIDESCAN, mn. 16. 16 CJ Case C-284/82 Busseni S.p.A. v Commission [1984] ECR I-557, mn. 11. 17 CJ Case C-195/91 Bayer v Commission [1994] ECR I-5619, mn. 32; OHIM Dec. of 13/09/2005 – R 628/2006-2 – SIDESCAN, mn. 17. 18 GC Case T-267/11 Video Research USA, Inc. v OHIM [2012], not published in the ECR, mn. 19; GC Case T-136/08 Aurelia Finance SA v OHIM [2009] ECR II-1361, mn. 14 et seq. 14

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time limit. Within the same time period, the omitted act must be completed. The absolute limit to file the application is one year calculated from the expiry of the unobserved time limit. In relation to the non-submission of a renewal application or non-payment of the renewal fee, the specific six-month-period of Art. 47 (3), third sentence, has to be deducted from the absolute time limit of one year. The application has to include the grounds on which it is based and must set out the facts on which it relies, meaning that prima facie evidence has to be furnished to accompany those facts, Art. 81 (3). The application is deemed to be effectively filed only if the applicable fee has been paid within the time limit provided by Art. 81 (2). Art. 81 (4) stipulates that the department of the Office which is competent to decide on the omitted act is also responsible to decide on the application for restitutio, e. g. the Opposition Division on a missed time limit to file evidence of use of a mark, or the Boards of Appeal on the missed payment of the appeal fee. As per Art. 81 (5), specific time limits are per se not subject to restitutio in integrum, namely, the time limits pertaining to restitutio in Art. 81 (2), the time limit of three months after publication of a CTM application to file a notice of opposition, the time limit to pay the opposition fee and the time limit fixed by the Office for the opponent to submit further facts, evidence and arguments to support its opposition in Art. 41 (1) and (3), as well as the time limits of Art. 82 pertaining to the continuation of proceedings. If restitutio in integrum is granted, this creates a period between the omission of the time limit and the day of reinstitution during which third parties, in good faith, may use an identical or similar sign for their products or services. For this situation, Art. 81 (6) provides that the trade mark applicant or proprietor cannot invoke his trade mark rights for such acts in the period between the loss of his rights in the mark and the publication of the re-establishment of his rights. Since the third party who is able to rely on Art. 81 (6) loses the advantage to use an identical or similar sign perpetually when restitutio is granted, a fair balance is created by Art. 81 (7), giving such third party an own right to bring third party proceedings against the decision re-establishing the rights of the trade mark applicant or proprietor within two months from the date of the re-establishment of those rights. Art. 81 (8) makes it clear that the authorities of each Member State are free to apply their own national rules in relation to the applicability of restitutio in integrum in relation to time limits provided for in the Regulation which have to be observed vis-a`vis the authorities of a Member State.

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c) Demarcation to other rules. By the introduction of Art. 82, an alternative way to 22 remedy non-observed time limits has been introduced, namely, the continuation of proceedings. It provides that, subject to certain formal requirements and payment of a special continuation fee, the consequences of having failed to observe a time limit will be deemed not to have occurred. The standard of all due care required for an application for restitutio does not apply to this provision so that it is an alternative that should always be considered. Many important time limits, however, are excluded in Art. 82 (2) from the continuation of proceedings so that restitutio in integrum remains the only viable means of redress in many instances. Other procedural rules already provide that, in special cases, a time limit is deemed 23 to be met even though the calculated time limit would have expired. These rules precede the rules of restitutio. Examples are: Rule 72 CTMIR, providing an extended expiry date for time limits in case of Office closure days, interruption of mail delivery services, or interruption of the Office’s electronic means of communication; Rule 73 CTMIR, providing rules for the interruption of proceedings in the case of the death or Matthias Berger

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legal incapacity of the applicant or proprietor of a CTM; or Art. 8 (3) CTMFR, providing rules for deemed dates of payments.

II. Scope of application 1. Time limits 24

According to Art. 81 (1), generally all missed time limits in proceedings before the Office are open to restitutio provided that the non-compliance directly causes the loss of any right or means of redress. There are, however, explicit exceptions in Art. 81 (5) for certain time limits. It is also not always easy to recognize whether the loss of a right is the direct consequence of the missed time limit. Therefore, the following provides guidance in relation to the applicability to time limits that occur frequently in proceedings before the Office.

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a) Selected applicable time limits. Restitutio is granted for non-observed time limits in relation to the payment of fees if the non-payment means that the application it relates to is not deemed to be validly filed, such as the appeal fee according to Art. 6019, or the conversion fee according to Art. 113 (1). Restitutio in integrum also applies to the time limits which are explicitly excluded from the continuation of proceedings in Art. 82 (2), e. g. the time limit for filing an appeal. The phrase ‘to the time limits referred to in … Art. 82’ cannot be interpreted in a way that time limits laid down by the provisions in Art. 82 (2) are also excluded from restitutio. Such time limits are not ‘referred to’ in Art. 82.20 The non-observance of the time limit to respond to the examiner’s notifications in application proceedings according to Art. 36 (1) and (4) and Art. 37 in conjunction with Rule 11 CTMIR (conditions of filing, absolute grounds of refusal), and according to Rule 9 (3) CTMIR (formal requirements, fee payment, priority claims, seniority claims) causes a direct loss of a right so that restitutio applies.21 It also applies to all time limits set by the Office for the submission of arguments and evidence in any inter partes proceedings since the non-observance results in disregarding the belated filed observations and documents so that they are not becoming part of the basis of a decision taken by the Office.22 This concerns, in particular, the filing of written submissions and documents as well as their translations according to Rule 19 (3) CTMIR and the request for filing proof of use under Art. 43 (2) and (3) according to Rule 22 (1) CTMIR. If the time limits to file proof of use according to Rule 22 (2) CTMIR23, or to remedy deficiencies in relation to admissibility requirements for opposition proceedings according to Rule 17 (2) and (4) CTMIR are not met, restitutio is available since the nonobservance of the deadlines results in the automatic rejection of the opposition. The time limit to take advantage of the priority right under Art. 29 is now subject to restitutio. Prior to the last amendment of the Regulation by Council Regulation (EC) No 422/200424, this time limit was explicitly excluded by Art. 81 (5). The same applies to the time limit of three months according to Rule 6 (1) CTMIR to indicate the file

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OHIM Dec. of 04/02/2013 – R 1550/2012-4 – E.N.O.GRIDMASTER/E.ON, mn. 12. GC Case T-277/06 Omnicare, Inc. v OHIM [2009] ECR II-1303, mn. 45 et seq. 21 OHIM, Guidelines for Examination in the Office, Part A, Section 8, No. 2.4. 22 OHIM, Guidelines for Examination in the Office, Part A, Section 8, No. 2.4. 23 OHIM Dec. of 08/10/2010 – R 1356/2008-4 – DADA&CO/DADA III, mn. 19. 24 OJ L 70, 9.3.2004, p. 1. 20

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number of, and to file a copy of, the previous trade mark application the priority of which is claimed25, and the subsequent filing of the declaration of priority according to Rule 6 (2) CTMIR. It can also be relied on restitutio in integrum if the time limit to request the 31 conversion of a CTM application or registration into a national application pursuant to Art. 112 has not been observed. b) Selected non-applicable time limits. If an application for a CTM is filed with a 32 national office rather than with the Office, and the national office misses the time limit of two weeks according to Art. 25 (2) to forward the application to OHIM, restitutio in integrum is not available due to the fact that the national office is not a party to proceedings before the Office but only the applicant is.26 The cooling-off period according to Rule 18 (1) CTMIR is not subject to restitutio in 33 integrum since it is not a time limit within which a party has to perform any actions. All time limits providing the parties to proceedings procedural options they can 34 freely choose of, such as applying for an extension of the cooling-off period according to Rule 18 (1) CTMIR, or demanding proof of use of a trade mark an opposition is based upon according to Art. 42 (2), are not subject to restitutio. The direct link between nonobservance of a time limit and the loss of a right or means of redress is missing in these cases.27

2. Explicitly excluded time limits, Art. 81 (5) Art. 81 (5) explicitly excludes the application of restitutio in integrum to certain time 35 limits, namely Art. 81 (2), Art. 41 (1) and (3) and Art. 82. Since this provision limits the procedural rights granted to the parties of proceedings 36 before the Office by the remaining provisions of Art. 81, it has to be interpreted strictly.28 a) Art. 81 (2) – restitutio in integrum. The time limits which have to be observed to 37 take advantage of restitutio in integrum are not itself subject to restitutio. These time limits are the – time limit of two months to file an application for restitutio calculated from the removal of the obstacle to comply with the time limit; – time limit of two months to complete the omitted act; – time limit of one year following the expiry of the unobserved time limit upon which restitutio is absolutely barred. In the interest of legal certainty, it shall thereby be prevented that several occasions of 38 missed time limits are cumulated. b) Art. 41 (1) and (3) – oppositions. The time limits that relate to the initiation of 39 opposition proceedings are excluded from restitutio as well, namely, the – time limit of three months after publication of a CTM application to file a notice of opposition; – time limit to pay the opposition fee; – time limit fixed by the Office for the opponent to submit further facts, evidence and arguments to support its opposition. 25

OHIM, Guidelines for Examination in the Office, Part A, Section 8, No. 2.3. OHIM, Guidelines for Examination in the Office, Part A, Section 8, No. 2.2. 27 OHIM, Guidelines for Examination in the Office, Part A, Section 8, No. 2.4. 28 GC Case T-277/06 Omnicare, Inc. v OHIM [2009] ECR II-1303, mn. 49. 26

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Other than in many jurisdictions where even opposition deadlines may be extended, the Regulation does not provide for such possibility and, consequently, also not for a reinstatement in the named time limits. Insofar, legal certainty for the applicant in relation to fate of his application has been given preference over the interest of prior rights holders.29

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c) Art. 82 – continuation. Art. 82 (1) allows obtaining the continuation of proceedings before the Office against payment if certain time limits have not been observed, and provides for a time limit of two months following the expiry of the unobserved time limit.30 This time limit is not subject to restitutio, again preferring the legal certainty principle, and also taking into account that Art. 82 is already a means to rectify a nonobserved time limit so that an additional reinstatement opportunity is not justified.

III. Substantive requirements 1. Reasons The grant of restitutio in integrum is subject to two requirements, namely, that – the party has exercised all due care required by the circumstances, and – the non-observance by the party has the direct consequence of causing the loss of any right or means of redress31. 43 Restitutio in integrum is an extraordinary means of redress in relation to nonobserved deadlines. It is no means by which material errors of filed submissions and their annexures can be corrected. Restitutio is only concerned with the external fact of the execution of an act within a time limit. It does not apply if the act was actually executed, but was not well-founded and not supported by the attached documentation so that the act was not sufficient to achieve the desired result.32 44 Even if an opponent would not lose its right to oppose a CTM application by missing the time limit, losing the right to include its submission in the file and have its content taken into account by the Office in the decision on the opposition is equal to losing a right due to the fact that the Office is restricted in its examination to the facts, evidence and arguments provided by the parties, and the belated submission may contribute to and reinforce the opponent’s case and may raise important points for the discussion in the adversarial part of the proceedings.33 42

2. Duty of care 45

‘All due care required by the circumstances’ requires that a system of internal control and monitoring of time limits is put in place that generally excludes the involuntary nonobservance of time limits. It follows that restitutio in integrum may be granted only in the case of exceptional events, which cannot therefore be predicted from experience.34 29

OHIM Dec. of 10/05/2011 – R 1619/2010-4 – LIFTRA/LIFTA, mn. 14. See Engin-Deniz below Art. 82 mn. 4 et seq. 31 GC Case T-451/12 Stromberg Menswear Ltd v OHIM [2013], not published in the ECR, mn. 36; GC Case T-314/10 Constellation Brands, Inc. v OHIM [2012], not published in the ECR, mn. 17. 32 OHIM Dec. of 16/02/2012 – R 2394/2010-4 and R 708/2011-4 – Device mark/H&R, mn. 25. 33 OHIM Dec. of 02/09/2009 – R 38/2009-2 – INOFLEXX/ENOFLEX 180 et al, mn. 22. 34 GC Case T-451/12 Stromberg Menswear Ltd v OHIM [2013], not published in the ECR, mn. 37; GC Case T-314/10 Constellation Brands, Inc. v OHIM [2012], not published in the ECR, mn. 19; GC Case T136/08 Aurelia Finance SA v OHIM [2009] ECR II-1361, mn. 26. 30

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The standard of care does not vary according to whether the task to be performed is 46 of administrative or of legal nature. Otherwise, any failure to comply with a procedural time limit could be presented as administrative oversight which would allow negligent parties to benefit in all cases from a lower standard of care.35 Circumstances that do and do not qualify as a valid reason for restitutio in integrum 47 can result from acts and omissions by the applicant or trade mark proprietor, his professional representatives, and employees of both, delivery services or the Office. a) Applicant/proprietor. The person who has to comply with the standard of care is, in principle, the applicant or trade mark proprietor. All due care is observed if the maximum period available is taken since time limits are, in principle, laid down in order to be used in full.36 Posting a letter around two weeks prior to the expiration of a time limit by normal mail is in any event in accordance with all due care.37 A period of bed rest or pain of the only individual in a company authorized to issue payments, as such, cannot be considered an absolute impediment to effect a single act, such as the payment of a fee. In such situation, it is reasonable to instruct another employee of the company, or the bank directly, to effect the payment to its representative.38 This obligation to take care of proper representation in case of illness also applies to times of vacation, holidays, or business trips, and insofar to all acts that can be subject to a time limit, such as renewal payments, submission of documents and filing of legal remedies. In principle, all due care is observed if the trade mark proprietor appoints a law firm or patent agents equipped with a correct and proper working double internal system for monitoring time limits.39

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b) Professional representative. Art. 81 does not exclude the application to cases 53 involving a mistake made by a representative. As for the applicant itself, it is necessary for its requirements to be satisfied that, in particular, all due care required by the circumstances has been taken.40 The requirement to exercise due care lies in the first instance with the trade mark 54 proprietor. If the trade mark proprietor delegates tasks, such as the renewal of a trade mark, it must ensure that the chosen person offers the assurance necessary to enable it to be assumed that those tasks will be properly carried out.41 For the standard of ‘due care’ and all other prerequisites of Art. 81, the reference 55 person is then the applicant’s representative just as much as the trade mark proprietor as it is on him to observe time limits and to perform the omitted act.42 Since that person acts on behalf of and in the name of the trade mark proprietor, its actions must be regarded as the trade mark proprietor’s actions.43 35

Case T-136/08 Aurelia Finance SA v OHIM [2009] ECR II-1361, mn. 20. GC Case T-580/08 PJ Hungary Szolga´to´ kft (PJ Hungary kft) v OHIM [2011] ECR II-2427, mn. 34. 37 OHIM Dec. of 25/06/2012 – R 1928/2011-4 – SUN PARK HOLIDAYS/SUNPARKS, mn. 19. 38 OHIM Dec. of 23/05/2013 – R 612/2013-2 – Ideal/LA IDEAL, mn. 20. 39 GC Case T-326/011 Brainlab AG v OHIM [2012], not published in the ECR, mn. 43. 40 GC Case T-373/03 Solo Italia Srl v OHIM [2005] ECR II-1881, mn. 60. 41 GC Case T-136/08 Aurelia Finance SA v OHIM [2009] ECR II-1361, mn. 14; GC Case T-187/08 Rodd & Gunn Australia Ltd v OHIM [2010] ECR II-58, mn. 29. 42 OHIM Dec. of 30/04/2013 – R 1236/2012-4 – Device of Black Stripes/GA, mn. 14; OHIM Dec. of 12/ 03/2008 – R 1245/2007-4 – Device of a dog, mn. 20; OHIM Dec. of 04/04/2001 – R 625/2000-3 – Galbani Mozzarella alla Romana, mn. 18. 43 GC Case T-136/08 Aurelia Finance SA v OHIM [2009] ECR II-1361, mn. 15; GC Case T-397/10 ara AG v OHIM [2011] ECR II-278, mn. 25. 36

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If a representative familiarizes its clerical staff with the relevant procedural rules and emphasizes the importance of time limits, the representative regularly checks the accurateness of the clerk’s handling of time limits, the clerk works for the representative for several years and makes never a mistake concerning time limits, and the frequent checks by the representative show the clerk to be a qualified and reliable employee, all due care has been taken provided that a system for recording time limits was also in place that meant that non-observance of time limits would be a most exceptional occurrence.44 Parties of proceedings before the Office or their representatives have to set up a system that allows for the detection of errors and the timely detection of such errors. Since errors itself are not unforeseeable, ‘due care’ requires the set-up and organization of work processes that are organized in a way to reduce their occurrence.45 In case of doubt, or where there are two options or interpretations, the representative must go for the course of action which is on the safe side and which excludes any loss of rights.46 A system to avoid the docketing of wrong time limits and to detect wrongly noted entries should include routinely checking back to deadlines a few days after they have been entered, or establishing a routine whereby a time limit becomes active after validation by two people.47 Errors in calculation of time limits may occur to anyone regardless of his skills and experience so that an internal system that provides for control of any time limit noted is required, including the control of its calculation.48 Legal errors on the part of a professional representative do not warrant restitutio. He is required to know the Community trade mark law, in particular the provisions relating to time limits and formalities such as fee payments, which are essential for valid procedural acts. An error in the perception or application of the respective legal provisions cannot be excused. Knowledge of the law by an attorney is presumed.49 This also applies if the instructions to file an appeal are omitted in a decision, as explicitly regulated in Rule 52 (2), third sentence, CTMIR.50 If a renewal agent has already encountered difficulties in complying with time limits regarding several trade marks, a general lack of vigilance can be assumed so that it is unlikely that exceptional circumstances required for the grant of restitutio can be established.51 A follow-up routine after the expiration of the original time limit for the renewal, including a check of payments debited from the OHIM account can lead to the detection of an error at a time when a late renewal is still possible.52 At a minimum, it is necessary to carry out a check at OHIM’s database to verify the presence of the renewal application and the correctness of the renewal data.53 44 OHIM Dec. of 30/04/2001 – R 805/1999-1 – BETA/BETRA, mn. 14, 20; OHIM Dec. of 18/12/2003 – R 65/2002-2 – TWO TONE TABLET (3-D), mn. 19. 45 OHIM Dec. of 31/01/2013 – R 265/2012-1 – KANSI/Kanz, mn. 21 et seq.; GC Case T-397/10 ara AG v OHIM [2011] ECR II-278, mn. 27. 46 OHIM Dec. of 16/11/2010 – R 1498/2010-4 – REGINE’S/REGINA DETECHA, CH.V.D., mn. 25. 47 OHIM Dec. of 31/01/2013 – R 265/2012-1 – KANSI/Kanz, mn. 23. 48 OHIM Dec. of 05/07/2013 – R 194/2011-4 – PAYENGINE/SP ENGINE, mn. 20. 49 OHIM Dec. of 13/05/2009 – R 771/2008-4 – ROMUALD PRINZ SOBIESKI ZU SCHWARZENBERG/ JAN III SOBIESKI, mn. 27. 50 OHIM Dec. of 24/10/2003 – R 937/2002-2 – Paragon/paragon, mn. 20. 51 GC Case T-187/08 Rodd & Gunn Australia Ltd v OHIM [2010] ECR II-58, mn. 33. 52 OHIM Dec. of 10/04/2013 – R 2071/2012-5 – APPLICATION FOR RESTITUTIO IN INTEGRUM, mn. 22, 24. 53 OHIM Dec. of 10/04/2013 – R 2071/2012-5 – APPLICATION FOR RESTITUTIO IN INTEGRUM, mn. 21.

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Art. 81 CTMR

A sequence of a large number of unforeseeable circumstances that conclusively contribute to a missed time limit, namely (i) a malfunction in the first of two internal monitoring systems for time limits used by a representative, (ii) the untimely and unsolicited removal of the reference to the appointed representatives from the OHIM database, leading to the sending of notifications directly to the applicant, and even to a former address, and (iii) a confused and inappropriate reaction by the applicant to that notification which resulted in the lack of instructions to the representatives, satisfies the requirements of restitutio.54 If the representative has unsuccessfully taken all reasonable efforts to ascertain the whereabouts of the trade mark applicant so that no appropriate instructions are received in time, the due care requirement may be satisfied and restitutio be granted.55 If the representative merely misses to perform the requisite procedural act despite being aware of the time limit and without being prevented by objective factors from performing it to comply with it, all due care has obviously not been taken so that restitutio cannot be granted.56 Absence of the representative in charge who does not take the necessary steps to guarantee the observance of a time limit is not a valid ground for restitutio.57 It is careless not to note the 4-month time limit for filing the grounds of appeal together with the 2-month time limit for filing the appeal. In course of the further handling of a matter, the need to also note the 4-month time limit can easily be forgotten which can also not be remedied by a double control system for time limits which requires that a file is taken into the hand to note the deadline.58 If a proper system to verify time limits is in place which should normally result in an error being noticed, particularly if special books, calendars and computerized tables are used and checked continually, but the error is not detected, all due care has not been taken.59 The same applies if a control system for all documents sent by mail has been set up that includes several checks by the head clerk and attorneys but an error is nevertheless not avoided.60 If a computerised renewal reminder system is used by a representative, due care required by the circumstances requires, that the overall design of the system ensures that time limits are adhered to; that the system is capable of detecting and correcting any foreseeable error in both, the performance of the tasks of the specialist firm’s staff and the functioning of the computerised system; and that the staff of the representative responsible for inputting the required data and using the system is adequately trained, required to check their operations and supervised.61 The corruption or loss of data is a foreseeable error the risk of which is inherent in any computer system. If no parallel system is used to correct such errors, e. g. frequent checks or an additional reminder system, the duty to exercise due care is breached.62 The move of the representative’s office as such is an exceptional event in consequence of which not all errors can be prevented even if all due care normally required is taken.63 54

GC Case T-326/11 Brainlab AG v OHIM [2012], not published in the ECR, mn. 40. OHIM Dec. of 31/01/2000 – R 495/1999-1 – DNA ALCOHOLIC SPRING WATER, mn. 19. 56 OHIM Dec. of 30/04/2013 – R 1236/2012-4 – Device of Black Stripes/GA, mn. 17. 57 OHIM Dec. of 15/07/2013 – R 1117/2012-4 – PROJECT:WORLDWIDE/WORLDWHITE, mn. 16. 58 OHIM Dec. of 01/07/2013 – R 1962/2012-4 – EASYSEAL, mn. 16, 18. 59 GC Case T-146/00 Stefan Ruf and Martin Stier v OHIM [2001] ECR II-1797, mn. 57, 61; GC Case T71/02 Classen Holding KG v OHIM [2003] ECR II-3181, mn. 40. 60 GC Case T-271/09 Romuald Prinz Sobieski zu Schwarzenberg v OHIM [2011] ECR II-288, mn. 59 et seq. 61 GC Case T-136/08 Aurelia Finance SA v OHIM [2009] ECR II-1361, mn. 27. 62 GC Case T-267/11 Video Research USA, Inc. v OHIM [2012], not published in the ECR, mn. 26. 63 OHIM Dec. of 22/02/2010 – R 1026/2009-4 – AROMATA/AROMAX II, mn. 16. 55

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Human errors committed at the time of the technical management of renewals, for example, cannot be regarded as exceptional or unforeseeable events which cannot be predicted from experience.64 An excess of work and organizational strains due to many other pending proceedings or the introduction of new legal rules are no ground for restitutio. A representative has to ensure that also in such times, the notation of all time limits is undertaken immediately.65 The illness of a key person of a client being responsible to instruct its representatives is not an exceptional or unforeseeable event that is beyond control of a well-organized representative. If the representative had acted with all due care, he had seen to having appointed an alternative contact person to refer to in such situations.66 When using a courier service, at least a copy of the shipping confirmation has to be filed in the matter’s file. Providing an affidavit by the representative confirming the shipment of a submission does not suffice as evidence of compliance with all ‘due care’ without adding additional objective proof that the submission has indeed been handed over to the courier service or has been sent, respectively.67 The representative has to take all necessary steps on behalf of his client. The absence of instructions from the client is no valid ground for restitutio.68 If incoming faxes cannot be received due to their take-down resulting from the move of the representative’s office, it is not careless to instruct an employee to redirect incoming faxes to a mailbox provided that the responsible employee has been carefully selected, instructed and monitored.69 The responsible representative may rely on the date of receipt as per the fax header and the corresponding date noted by the paralegal. Whether a fax that has been transmitted to a mailbox bears the date of receipt in the mailbox, or the date of its printout is a technical question that falls in the responsibility of the competent employee the representative can rely on. The functioning of the monitoring system for time limits is not called in question if a deadline is missed due to noting the wrong, printout date as start of a time limit.70 The obligation to take all due care does not require to double check the information made available by OHIM through its online information services. Even if an error by OHIM could have been discovered through further investigation, the absence of it does not indicate a lack of due care.71

c) Employees. Both, applicants and professional representatives, regularly use employees to perform their work. 82 If the cause of the missed time limit is a mistake by an employee, the standard of due care does not refer to the employee’s actions but the organisational and control obligations of the representative. Insofar, he has the duty to carefully select and to regularly control the employee, and to have a reasonable system to monitoring time 81

64 GC Case T-314/10 Constellation Brands, Inc. v OHIM [2012], not published in the ECR, mn. 28; GC Case T-267/11 Video Research USA, Inc. v OHIM [2012], not published in the ECR, mn. 24; GC Case T136/08 Aurelia Finance SA v OHIM [2009] ECR II-1361, mn. 28; OHIM Dec. of 10/04/2013 – R 2071/ 2012-5 – APPLICATION FOR RESTITUTIO IN INTEGRUM, mn. 20. 65 GC Case T-146/00 Stefan Ruf and Martin Stier v OHIM [2001] ECR II-1797, mn. 62; OHIM Dec. of 01/07/2013 – R 1962/2012-4 – EASYSEAL, mn. 21. 66 OHIM Dec. of 03/07/2013 – R 1614/2012-5 – BIOMAX/BIOMAG, mn. 17 et seq. 67 OHIM Dec. of 05/09/2013 – R 118/2013-1 – Gauff/Gauff et al., mn. 19 et seq. 68 GC Case T-510/08 Toqueville Srl v OHIM [2010] ECR II-147, mn. 66. 69 OHIM Dec. of 22/02/2010 – R 1026/2009-4 – AROMATA/AROMAX II, mn. 18 et seq. 70 OHIM Dec. of 22/02/2010 – R 1026/2009-4 – AROMATA/AROMAX II, mn. 23. 71 OHIM Dec. of 07/08/2007 – R 537/2007-2 – RAIDER, mn. 20.

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Art. 81 CTMR

limits in place which allows for a double check of all time limits, and thereby prevents to miss a time limit.72 A representative must take into account that an employee mistakenly considers a 83 signed original of a submission being a copy and, as a consequence, does not file it with the Office. Insofar, ‘due care’ requires that control mechanisms are established for the discovery of such mistake, or other mistakes, e. g. a notice in the file regarding the sending date or regarding the acknowledgement of receipt.73 If an employee is instructed to file a submission with the Office by facsimile to meet 84 an imminent time limit and does not succeed because the large amount of pages results in a transmission failure, he has to find alternative ways of transmission that are equally qualified to achieve that goal, e. g. by finding an alternative fax number of the Office, by splitting the documents to be send in smaller packages or, by using a courier service.74 An error of an employee to determine the point of departure for the appeal period 85 cannot be seen as an impediment within the scope of Art. 81.75 d) Delivery services. It is not necessary to check whether a document sent by a courier service which assured timely delivery has safely and punctually arrived at the Office, particularly if the sender habitually works with that same courier service.76 There is no legal basis in the CTMR or in the CTMIR for discriminating among the different delivery methods, as long as all reasonable steps have been taken to ensure the timely arrival of a submission at the Office.77 Major fast messenger services pay particular attention to timely delivery. If a delivery within one day is quoted by such courier service, it is reasonable to send a document to OHIM using such services instead of sending a fax when the time limit expires on the next day.78 It is reasonable to assume that documents are delivered by courier service within three days. If, in addition, the cover letter accompanying the evidence material sent by courier is received by OHIM within the prescribed time limit, clearly indicating that this material is send my mail and includes information on how to interpret it, all due care has been taken.79 Communications to OHIM can be send my any means possible; using registered mail or to send a letter in parallel by two or more different means is not required. Since courier services commit themselves to delivery within 24 hours, it can be reasonably expected that the Alicante branch of such services receiving the despatched documents delivers it in due time.80 The late arrival of a communication that is the immediate result of strike occurring without or with little warning is an extraordinary event beyond the sender’s control and not a consequence of the breakdown of internal procedures for sending communications to the Office.81 72

OHIM Dec. of 23/07/2013 – R 656/2011-4 – KING OF SAVANNAH/SAVANNA, mn. 14. OHIM Dec. of 15/07/2013 – R 1117/2012-4 – PROJECT:WORLDWIDE/WORLDWHITE, mn. 18. 74 OHIM Dec. of 25/04/2013 – R 1383/2012-5 – OPEN ALM, mn. 14. 75 GC Case T-366/04 Hensotherm AB v OHIM [2006] ECR II-65, mn. 50. 76 GC Case T-580/08 PJ Hungary Szolga ´ to´ kft (PJ Hungary kft) v OHIM [2011] ECR II-2427, mn. 38. 77 OHIM Dec. of 02/09/2009 – R 38/2009-2 – INOFLEXX/ENOFLEX 180 et al, mn. 28. 78 OHIM Dec. of 25/08/2003 – R 855/2002-4 – avenoses/AVEENO, mn. 14. 79 OHIM Dec. of 12/09/2001 – R 491/2000-3 – MAG-FORM/MAGE, mn. 29. 80 OHIM Dec. of 23/03/2006 – R 1240/2005-1 – Tommy K/THOMY et al, mn. 20; OHIM Dec. of 25/ 06/2012 – R 1928/2011-4 – SUN PARK HOLIDAYS/SUNPARKS, mn. 21. 81 OHIM Dec. of 23/03/2006 – R 1240/2005-1 – Tommy K/THOMY et al, mn. 19. 73

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CTMR Art. 81

Community Trade Mark Regulation

There is no additional obligation to monitor the status of the shipment or the safe arrival of a letter via the electronic file system provided by the Office.82 93 If the carrier of a document that has to be delivered within a time limit to the Office erroneously fills in a wrong address in the delivery form, such error cannot be imputed on the sender.83 94 If the cause of non-compliance with the time limit is a letter that was correctly put into a post box, and such letter is not served to the Office by the Postal Service due to irregularities in the sphere of that service, the failure of delivery cannot be attributed to the sender.84 92

e) Office. An error made by the Office that contributes to other exceptional circumstances leading to a missed time limit has to be taken into account when determining if the prerequisites of an application for restitutio are fulfilled.85 96 If missing a time limit is a direct consequence of severe deficiencies on the part of the Office, such as not responding to correspondence by the parties asking for a suspension of opposition proceedings, taking a decision on the opposition, not responding to the parties repeated requests, which finally leads to missing the appeal deadline, all due care has been taken.86 97 A diligent and prudent person can reasonably expect that the information provided on the OHIM online database is accurate.87 It would be inconsistent to make available an online facility aiming to provide better service within a paperless office and at the same time to impose on the users an obligation to check the accuracy of the information given by the Office through its website. The Office has a duty to provide accurate information to its users and to take the necessary steps, in the event that incorrect information is given, to correct any possible mistake and to avoid that users who rely on the Office’s information services may suffer any prejudice in this regard.88 98 Difficulties with the online payment system of the Office, on the other hand, do not qualify as exceptional circumstances since other means to pay fees, such as the renewal fee, are provided.89 95

IV. Formal requirements 1. Form 99

While it has to be filed in writing, no further specific form is required for the application for restitutio in integrum.

2. Language 100

The language is that of the proceedings in which the applicant has not observed the time limit concerned and intends to have re-established its right to continue with the proceedings. 82 OHIM Dec. of 25/06/2012 – R 1928/2011-4 – SUN PARK HOLIDAYS/SUNPARKS, mn. 23; OHIM Dec. of 02/09/2009 – R 38/2009-2 – INOFLEXX/ENOFLEX 180 et al, mn. 29. 83 GC Case T-580/08 PJ Hungary Szolga ´ to´ kft (PJ Hungary kft) v OHIM [2011] ECR II-2427, mn. 36. 84 OHIM Dec. of 25/06/2012 – R 1928/2011-4 – SUN PARK HOLIDAYS/SUNPARKS, mn. 16. 85 GC Case T-326/11 Brainlab AG v OHIM [2012], not published in the ECR, mn. 57. 86 OHIM Dec. of 26/05/2004 – R 164/2001-4 – WW (fig.)/WW (fig.), mn. 36 et seq. 87 OHIM Dec. of 07/08/2007 – R 537/2007-2 – RAIDER, mn. 13. 88 OHIM Dec. of 07/08/2007 – R 537/2007-2 – RAIDER, mn. 17. 89 GC Case T-187/08 Rodd & Gunn Australia Ltd v OHIM [2010] ECR II-58, mn. 35.

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Restitutio in integrum

Art. 81 CTMR

During application proceedings, this is the first or second language that has been 101 indicated in the application90, in opposition and cancellation proceedings the language of the proceedings, and in renewal proceedings any of the five languages of the Office.91

3. Fee, Art. 81 (3) Art. 81 (3) requires the payment of a fee before the application for restitutio in integrum is deemed to be validly filed. The fee amount is governed by Art. 2 (19) Commission Regulation (EC) No 2869/95 of 13 December 199592. It is currently fixed at Euro 200. The payment has to be made on the applicant’s own initiative, thus without any explicit demand by the Office. If the applicant waits for an invitation for payment by the Office, he shows (probably once again) that he does not act with all due care required under Art. 81.93 If the fee is not paid within the same time limit of two months that is required for the application for restitutio in integrum in Art. 81 (2), the application is deemed not to have been validly filed.

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4. Applicant The possibility to apply for the re-instatement of rights is open to any party acting 106 before the Office who has missed a time limit, in particular applicants for and proprietors of CTMs, opponents, and applicants in revocation and invalidity proceedings. An application for restitutio would, therefore, not be available to persons filing 107 observations under Art. 41, or a licensee who was not authorized to renew a CTM registration since they are not becoming parties to the proceedings before the Office.94

5. Time Limits, Art. 81 (2) a) Filing of application for restitutio in integrum. According to Art. 81 (2), the 108 application for restitutio in integrum has to be filed within two months from the removal of the cause of non-compliance with the time limit. Therefore, it is always to be determined in a first step at what point in time the alleged cause of non-compliance with a time limit is removed. This is regularly the point in time when the applicant or his representative is 109 informed by the Office of the loss of a right.95 But the time limit to file the application does not only start to run when the Office 110 serves a notice that a statement is late. OHIM is under no obligation to inform a party of deficiencies in the proceedings, particularly not in writing.96 Even though such notices are part of OHIM’s practice, they are not required by the CTMR. Such interpretation would also be manifestly contrary to the wording of Art. 81 (2).97 90

OHIM Dec. of 07/06/2011 – R 2175/2010-2 and R 2234/2010-2 – CONNECTED CAR, mn. 16 et seq. OHIM, Guidelines for Examination in the Office, Part A, Section 8, No. 3.3. 92 OJ L 303, 15.12.1995, p. 33. 93 OHIM Dec. of 25/08/2011 – R 855/2011-4 – WOLF/WOLF, mn. 16. 94 GC Case T-410/07 Jurado Hermanos, SL v OHIM [2009] ECR II-1345, mn. 27. 95 GC Joined Cases T-20/08 and T-21/08 Evets Corp. v OHIM [2009] ECR II-3515, mn. 17. 96 GC Case T-218/06 Neurim Pharmaceuticals (1991) Ltd v OHIM [2008] ECR II-2275, mn. 77. 97 GC Case T-71/02 Classen Holding KG v OHIM [2003] ECR II-3181, mn. 41. 91

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CTMR Art. 81

Community Trade Mark Regulation

Therefore, a telephone conversation between OHIM staff members and parties or their representatives are also capable of constituting the removal of the cause for noncompliance with a time limit if such deficiency is communicated for the first time.98 112 It can also be the moment when the applicant or representatives discover themselves that the time limit has not been observed, or the employee informs the representative about this fact. 113 The day of the return to work after an illness or vacation has to be considered the day of removal of the cause of non-compliance, not the day the applicant or his representative attends again to a matter.99 114 If the trade mark applicant or proprietor is professionally represented, the date on which the loss of a right is brought to the attention of the representative, not its employees100, must be deemed to be the date when the represented person became aware of it so that the time limit of Art. 81 (2) starts at that date.101 111

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b) Completion of omitted act. Art. 81 (2), second sentence, sets out that the omitted act has to be completed together with the application for restitutio within the time limit of two months applicable to such application.

c) Absolute bar. Art. 81 (2), third sentence, provides that the application for restitutio shall only be admissible within one year immediately following the expiry of the non-observed time limit. This time limit is absolute102 and, according to Art. 81 (5), itself not subject to restitutio. 117 Taking into account that the time limit to file the application for restitutio is only two months from the date the obstacle to comply with the time limit has been removed, swift action is necessary in case that the obstacle is removed at the very end of the absolute time limit of one year. 116

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d) Renewals/payment of renewal fee. Art. 81 (2), fourth sentence, provides that in the case of non-submission of the request for renewal of a registration or of non-payment of a renewal fee, the further period of six months provided in Art. 47 (3), third sentence, must not be taken into account for the calculation of the one year period. Therefore, the ultimate one year period for filing the request for restitutio in integrum starts on the last day of the month the renewal is due pursuant to Art. 47 (3), first sentence.

6. Completion of omitted act, Art. 81 (2) According to Art. 81 (2), second sentence, the omitted act has to be completed in the same two month period that applies to the filing of the application for restitutio in integrum as per the first sentence of the provision. 120 Examples of omitted acts are the payment of renewal, opposition or appeal fees, the filing of proof of use of a trade mark, the filing of an appeal, the filing of submissions, documents and translations. 121 If the omitted act has not been completed yet, it can be combined with the application for reinstatement but has to be clearly separated from the application so that it is obvious for the deciding department which part belongs to the application for reinstatement and to the completion of the omitted act. 119

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Art. 81 CTMR

In the majority of cases, the omitted act has already been completed even before it 122 becomes apparent that the time limit applying to the act has not been met. In such cases, the act does not have to be repeated.

7. Statement of grounds, Art. 81 (3) The application for restitutio must include the grounds on which it is based and set out the facts on which it relies. In addition, the application must be made by a separate act, distinct from the act by which the omitted act, such as an appeal, is brought.103 The grounds and all evidence in relation thereto have to be filed within the time limit provided by Art. 81 (2).104 Since the applicant has to establish that he has taken all due care, it is of utmost importance to provide a complete and thorough account of all relevant facts. This concerns, in particular, the reasons for the inobservance of the time limit, all measures that have been taken to comply with the required standard of care, and the time and reasons of the removal of the obstacle to comply with the time limit. Moreover, those facts have to be proven by furnishing all available prima facie evidence, such as affidavits by persons who can give information on the reasons for the missing of a time limit, or the organizational structure of a representative’s practice, as well as copies of fax transmission protocols, courier or postal service receipts and similar documentation. The standard of establishing prima facie evidence (‘must set out the facts’) may be gradually lower than that of full burden of proof as it demands a predominant degree of probability. Any gaps in the demonstration of facts, however, will be at the expense of the applicant; the Office is not obliged to initiate further investigations on its own.105 As discussed above, the standard of all due care for restitutio is extremely high so that the effort that has to be made to substantiate and prove the grounds of the application has to even exceed the endeavours taken in relation to establishing the distinctiveness, a likelihood of confusion or the use of a mark in other proceedings.

123

124 125

126

127

V. Decision and legal consequences The decision on the application for restitutio in integrum has to be filed with and 128 made by the competent department of the Office. It results in consequences for the applicant who missed the time limit as well as third parties who benefitted from the consequences of the missed time limit.

1. Competent department, Art. 81 (4) The department which was originally competent to decide on the act that was 129 omitted due to the non-observance of the time limit shall also decide upon the application for restitutio in integrum. The competent departments for filing the reinstatement request are 130 – the examiner in application proceedings (Art. 131) – the Administration of Trade Marks and Legal Division in renewal proceedings (Art. 133) 103

GC Case T-71/02 Classen Holding KG v OHIM [2003] ECR II-3181, mn. 44. OHIM Dec. of 12/11/2003 – R 219/2002-1 – g/g , mn. 19 et seq. 105 OHIM Dec. of 24/07/2008 – R 678/2008-4 – NOBALUX, mn. 22. 104

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CTMR Art. 81

Community Trade Mark Regulation

– the Opposition Division in opposition proceedings (Art. 132) – the Cancellation Division in proceedings for revocation and declaration of invalidity (Art. 134) – the Boards of Appeal in appeal proceedings (Art. 135). 131 If an appeal has been filed against the decision rejecting an opposition as inadmissible based on the same facts, it is appropriate, however, that the Boards of Appeal decide simultaneously on both issues and requests as they have to be decided in the same way. Procedural economy and the need to avoid contradictory decisions call for a decision by the same instance.106

2. Consequences for the applicant The application for restitutio in integrum will be denied as inadmissible if the formal requirements (see above mn. 99 et seq.) have not been complied with. If the substantive requirements (see above mn. 42 et seq.) are not fulfilled, the application will be denied as unfounded. 133 In the case of a well-founded request, restitutio in integrum is granted to the effect that the non-observed time limit is deemed to have been complied with. Any loss of rights or means of redress that falls in the time between the non-observed time limit and the grant of reinstatement is deemed not to have occurred. 132

3. Consequences for third parties, Art. 81 (6) 134

135

136 137

138 139

If the trade mark applicant or proprietor has missed a time limit that led to the loss of the CTM application or registration, it is possible that in the time between the loss of right and the publication of the grant of restitutio, third parties use signs that are identical or similar with this trade mark for identical or similar goods or services. Without any explicit rule, the trade mark applicant or proprietor could enforce its rights resulting from its trade mark against any such third party. Provided that the third party acted in good faith, relying on the lost effectiveness of the prior CTM, justice calls for finding a balance between the interest of the trade mark proprietor in the exclusivity of its rights and of the third party in its legitimate reliance on the loss of those rights. Art. 81 (6) provides for exactly such balance. If a third party started to use a sign that is identical or similar with the CTM application or registration for goods or services that are identical or similar to the ones covered by the CTM, the proprietor is prevented from invoking its rights vis-a`-vis the third party. The terms ‘identical or similar sign’ have to be interpreted according to Art. 8 and Art. 9 so that it can be referred to the comments applying to these provisions.107 The general rules of the good faith principle apply. Good faith would certainly be denied if the third party knew that the prior CTM in fact did not lose its effectiveness or, that the request for restitutio in integrum would be successful for reasons based on facts the third party was positively aware of. In such case, the interest of the third party could not be seen as being legitimate. The use of the third party’s sign has to be made within the Community, thus in all or any of the Member States. Only the use in the period between the loss of rights in the CTM and the publication of the re-establishment of those rights is covered by the provision. Therefore, the third 106 107

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OHIM Dec. of 16/07/2004 – R 666/2002-4 – SIDEX/SYBEX NEW CLASSICS et al, mn. 16 et seq. See Jaeger-Lenz above Art. 8 mn. 28, 83 et seq.; Skrzydlo-Tefelska/Zuk Art. 9 mn. 85 et seq.

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Restitutio in integrum

Art. 81 CTMR

party cannot rely on it for any later continued use, e. g. the sale of goods that have already been marked with an identical or similar trade mark, and also not for any prior use. Provided that all requirements of Art. 81 (6) are fulfilled, the use by the third party in 140 the period between the loss of rights in the CTM and the publication of the reestablishment of those rights is deemed to be non-infringing and has to be accepted by the CTM applicant or proprietor.

VI. Legal remedies The decision on the request for restitutio in integrum has extensive consequences for 141 the applicant as well as for third parties who are either involved in the proceedings wherein the non-observance of the time limit occurs, or who benefit from the consequences of the missed time limit. Therefore, the decision has to be subject to scrutiny on appellate level where the interests of the affected parties are substantially concerned.

1. Remedies for the applicant The decision regarding an isolated application for restitutio in integrum cannot be 142 appealed unless a separate appeal is explicitly allowed in the decision based on Art. 58 (2). If the decision, however, is taken as part of the overall decision in relation to the 143 application for restitutio in integrum and in relation to proceeding as such – which is the standard situation – an appeal against the overall decision is available (but not isolated against the part denying reinstatement). The applicant will then argue that the decision denying reinstatement was unlawful and reinstatement has to be granted.

2. Remedies for third parties A decision granting the application for restitutio in integrum is binding for all 144 instances, and cannot be appealed by any party, particularly not by the other party in inter partes proceedings. The proceedings have to be reopened.108 If the other party is of the opinion that reinstatement has been granted unlawfully, it has to appeal the final decision in the reopened proceedings and to argue that restitutio has wrongfully been granted.

3. Remedies for specific third parties, Art. 81 (7) Notwithstanding the foregoing, Art. 81 (7) provides the right to bring third party 145 proceedings against the decision re-establishing the rights of the CTM applicant or proprietor for parties who can avail themselves of the provisions of Art. 81 (6). The third party has a natural interest to continue the use falling under Art. 81 (6) 146 perpetually. If the decision granting restitutio in integrum gives rise to the question whether it was lawful, it is a logical consequence that the third party shall have an own right to have such decision reconsidered. The provision, thus, complements the balancing principle set out in Art. 81 (6). The time limit to bring the proceedings is two months, starting on the publication 147 date of the re-instatement decision or, if not publicised, on the date on which the decision to grant reinstatement took effect.109 108 109

OHIM Dec. of 25/01/2012 – R 930/2011-4 – TORQUE VERTRIDE, mn. 11. OHIM, Guidelines for Examination in the Office, Part A, Section 8, No. 4.

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CTMR Art. 82

Community Trade Mark Regulation

A publication only takes place where the status of the concerned CTM application or registration is changed. The reason is that a situation where a third party starts to use a sign that is identical or similar to the prior according to Art. 81 (6) can only then arise since the good faith in the non-existence of the prior mark results from the reliance of the third party on the status change. 149 The department or unit which took the decision on restitutio in integrum conducts the third party proceedings as adversarial inter partes proceedings and reconsiders the legal validity of the reinstatement request.110 The decision itself can be appealed by both parties. 148

VII. National law, Art. 81 (8) Art. 81 (8) makes it clear that the authorities of each Member State are free to apply their own national rules in relation to the applicability of restitutio in integrum when they have to deal with time limits provided for in the Regulation which have to be observed vis-a`-vis the authorities of a Member State. 151 Under this rule, the Member States can either provide for their own rules that deviate partially or completely from the prerequisites set out in Art. 81, or they can mimic them. 152 The rule is an expression of the principle also embodied in Art. 101 (2) that certain matters that are not covered by the Regulation shall remain subject to the national law of the authority or court that is applying its rules. 150

Article 82 Continuation of proceedings 1. An applicant for or proprietor of a Community trade mark or any other party to proceedings before the Office who has omitted to observe a time limit vis-a`-vis the Office may, upon request, obtain the continuation of proceedings, provided that at the time the request is made the omitted act has been carried out. The request for continuation of proceedings shall be admissible only if it is presented within two months following the expiry of the unobserved time limit. The request shall not be deemed to have been filed until the fee for continuation of the proceedings has been paid. 2. This Article shall not be applicable to the time limits laid down in Article 25 (3), Article 27, Article 29 (1), Article 33 (1), Article 36 (2), Article 41, Article 42, Article 47 (3), Article 60, Article 62, Article 65 (5), Article 81, Article 112, or to the time limits laid down in this Article or the time limits laid down by the Implementing Regulation for claiming, after the application has been filed, priority within the meaning of Article 30, exhibition priority within the meaning of Article 33 or seniority within the meaning of Article 34. 3. The department competent to decide on the omitted act shall decide upon the application. 4. If the Office accepts the application, the consequences of having failed to observe the time limit shall be deemed not to have occurred. 5. If the Office rejects the application, the fee shall be refunded. 110

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Continuation of proceedings

Art. 82 CTMR

Content I. II. III. IV. V. VI. VII. VIII. IX.

Purpose/objective. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Historic development . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Time-limit . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Omitted act. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Procedure. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Exclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Effect . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Relationship between ‘continuation of proceedings’and other available remedies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 4 7 8 10 14 17 18

I. Purpose/objective Art. 82 CTMR (formerly Art. 78a) enables the trade mark applicant, proprietor or 1 any other party to proceedings before the Office to request a continuation of the proceedings, on payment of a fee in case they failed to observe a time limit set by the Office.1 It provides an alternative to the restitutio in integrum referred to in Art. 81 (see above Art. 81 mn. 5 et seq.). As it is granted as of right and does not require ‘proof’ that the time limit lapsed despite the best efforts of the applicant to take ‘all due care’ in observing the time limit, it is much easier to apply for and provides greater legal certainty than Art. 81. It is available, where the preconditions for the reinstatement are not given or doubtful and even where the applicant deliberately missed the time-limit, but later on decides to undertake the omitted act after all.

II. Historic development This article only came into force on 25 July 2005 after suggestions from practitioners. 2 It is modelled after Art. 121 of the European Patent Convention. In the context of the Council’s adoption of the article heated discussions took place, as some argued that continuation shall not be available in inter partes proceedings, in order to safeguard the rights of the other party. In the end a compromise was reached in the form of Art. 82 (2). This compromise was not entirely successful, however: while there is no general exclusion of time-limits in inter partes proceedings, Art. 82 (2) merely excludes specific time-limits in inter partes proceedings. Hence, the exclusion set out in Art. 82 (2) must be interpreted strictly. The major difference between Art. 82 CTMR and Art. 121 EPC, is that the Office will 3 not inform the person concerned that his application is being treated as withdrawn for failure to meet the original deadline. Hence, the time-limit for continuation of proceedings under the CTMR is 2 months from the expiry of the unobserved time-limit. Whereas the time-limit under the EPC stems from a communication from the EPO informing the person concerned thereof.2 Therefore, as regards community trade marks particular care is needed to ensure that the time-limit is observed.

1 2

Bartos, in Kucsko/Schumacher (ed.), Markenschutz II (2013), § 2 MSchG mn. 274. EPO, Guidelines for examination, Part E, Chapter VII, 2.1. Request for further processing.

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CTMR Art. 82

Community Trade Mark Regulation

III. Requirements The article is subject to the proviso that – the request is made within two months of the expiry of the original time limit. It shall be clear and unambiguous. It has been argued that the payment of the fee shall suffice as it implies the applicant’s intention. – the fee of EUR 400 has been paid within the same two month period.3 The fee for continuation is double the fee for a restitutio in integrum. However, it will only be retained if continuation is granted. – the omitted act (e. g. reply to objections) has been completed by the time the request for continuation is received by the Office.4 5 Unlike the request for a restitutio in integrum no substantive requirement needs to be fulfilled, i. e. providing proof that the original time limit passed in spite of exercising ‘all due care’ (e. g. because of an illness or other obstacles).5 Hence, provided the aforementioned- mainly administrative- requirements are met, a continuation of proceedings is granted as of right.6 The effect thereof is to re-establish the situation which would have prevailed if the act had been performed in due time. The original time limit, which was missed, will be deemed to have been met (Art. 82 (5)). 6 There can be no extension or continuation of the two month deadline. 4

IV. Time-limit 7

Continuation presupposes that the applicant missed a time-limit. It is irrelevant whether the time-limit was statutory or specified by the Office. Unlike Art. 81 (see above Art. 81 mn. 123), there is no need for the applicant to be adversely affected by the expiry of a time limit. The applicant does not need to provide any reasons why he missed the time-limit.7

V. Omitted act The omitted act has to be completed. It might constitute the payment of a fee, submission of an application or observation or presentation of evidence of proof of use. Where the continuation is granted the submitted observations and evidence of proof of use will be taken into account in future proceedings- either to the advantage or detriment of the applicant. 9 In case of the payment of a fee or submission of an application, the fee must be paid in total and the submission must be admissible, otherwise the omitted act has not been completed appropriately. 8

3

Commission Regulation (EC) No 1042/2005 of 29 June 2005. GC Case T-218/06, Neurim Pharmaceuticals v Eurim-Pharm [2008] ECR II-02275. 5 Fezer/Bingener, Hdb. Markenpraxis, I 1 1 mn. 82. 6 OHIM Dec. of 10.07.2006 R 856/2004 – G Lego Juris. 7 Bender, Europa ¨ isches Markenrecht, I 4 mn. 38. 4

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Continuation of proceedings

Art. 82 CTMR

VI. Procedure The party must take the initiative by filing a request for continuation of proceedings in writing to the Office. It does not provide an official form to be used in such a case. Examiners will not act ex officio nor are they obliged to propose this as a solution.8 Once the request has been received by the department competent to decide on the omitted act for which the application has been filed, it will check whether the requirements set out in point 3 have been fulfilled. In case the competent department rejects the request for continuation the fee must be refunded and the applicant for continuation must be informed of this in writing. The rejection of the request for continuation is subject to an appeal only if said decision allows for a separate appeal. Hence, the applicant for continuation shall also be informed of his right to appeal the decision, where applicable. Otherwise the decision to reject the request may be reviewed incidenter with the decision on the merits. In case a decision on the merits has been taken between the expiry of the missed time limit and the request for continuation of proceedings the examiner must revisit the decision. Where the completion of the omitted act (e. g. reply to objections) leads to a different outcome of the initial decision, the examiner is obliged to alter it. If the initial decision is not to be altered, it must be confirmed in writing. The proceedings regarding the request for continuation are ex parte. Hence, the decision whether to grant continuation or reject the request is to be issued to the applicant only. Even if the underlying proceedings are inter partes proceedings, the other party thus cannot contest the continuation.

10

11

12

13

VII. Exclusion Art. 82 (2) excludes various time-limits laid down in specific Articles of the CTMR. 14 The majority of these references are self-explanatory, i. e. that time limits which are not available for restitutio in integrum are also unavailable for further processing. Continuation is not applicable to the time limits set out in the following articles: 15 – Art. 25 (3) – time limit for CTM application filed through a national Office to reach the CTM office (see Art. 25 mn. 20). – Art. 27 – time limit for payment of application fee (see above Art. 27 mn. 12). – Art. 29 (1) – time limit for claiming priority from a national application (see above Art. 29 mn. 22 et seq.). – Art. 33 (1) – time limit for claiming priority from exhibition of goods/services under the mark in question and filing supporting documents (see above Art. 33 mn. 7). – Art. 36 (2) – time limit to remedy deficiencies in a CTM application (While the remedying of filing date deficiencies is not allowed, continuation of proceedings may be granted in respect of other formal deficiencies such as those regarding the appointment of a representative or classification) (see above Art. 36 mn. 23 et seq.). – Art. 41 – time limit for opposing a CTM application (see Art. 41 mn. 1). – Art. 42 – time limit for the opposition period, the period to pay the opposition fee and the period for filing observations in relation to an opposition (e. g. the time limits for the opponent to substantiate his opposition; the time limit for the applicant to 8

Communication No 06/05 of 16 September 2005.

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CTMR Art. 82

Community Trade Mark Regulation

reply; the time limit for the opponent to rebut; as well as for any further exchange of arguments, if allowed by the Office). All other time limits during the opposition procedure are therefore available for continuation (see Art. 42 mn. 1 et seq.). Hence, continuation of proceedings may be granted in respect of – Rule 16 (1) CTMIR – the time limit to translate the notice of opposition. – Rule 17 (4) CTMIR – the time limit to remedy deficiencies regarding the admissibility of the opposition. – Rule 22 (1) CTMIR – the time limit within which the applicant may request the opponent provides proof of use of his earlier trade mark. – Rule 22 (2) CTMIR – the time limit within which the opponent has to submit proof of use of his earlier trade mark. – Rule 22 (6) CTMIR – the time limit to translate proof of use. – Art. 47 (3) – time limit for renewal of a CTM registration (see Art. 47 mn. 1). – Art. 60 – time limit for appealing against a decision of the Office9 (see Art. 60 mn. 1). – Art. 62 – time limit for accepting the rectification of a decision (see Art. 62 mn. 5). – Art. 65 (5) (see Art. 65 mn. 55) – time limit for bringing an action before the Court of Justice against a decision of the Board of Appeal. – Art. 81 – time limit for requesting restitutio in integrum: in order to prevent double relief for the same time limit, Art. 82 (2) has to exclude the time limit for requesting restitutio. Art. 81 (5) on the other hand provides that restitutio is not applicable to the time limits referred to in Art. 82 (see Art. 81 mn. 108 et seq.). – Art. 82 – time limit for requesting continuation of proceedings. – Art. 112 – time limit for requesting conversion: only the time limit of three months within which conversion must be requested and the conversion fee must be paid is not available for further processing; all other time limits in the course of a conversion procedure are available (see Art. 112 mn. 46). – Rule 50 (1) second sentence CTMIR – fixed time limits pursuant to Art. 63 (2) CTMR. Where an appeal is directed against a decision taken in opposition proceedings, Art. 82 CTMR shall not be applicable (the time limits applicable to cancellation proceedings have not excluded). As the time limits applying in opposition proceedings in the first instance have been excluded, it is only comprehensible that the same shall apply to the time limits in the second instance. However, the exclusion merely encompasses the time limit for the response by the defendant of the appeal. It does not extend to the time limits for the reply and rejoinder, as these time limits are not fixed ‘pursuant to Art. 63 (2) CTMR’. – This inconsistency has caused problems in practice and gave rise to a Communication of the President of the Agency, No. 06/05.10 In light of the remarks made in the Communication the proposed Amendment of the CTMR provides for the omission of Art. 42 CTMR from the excluded time limits, thereby enabling all time limits in opposition proceedings to continue. The only time limits still barred from a continuation will be the opposition period laid down in Art. 41 (1) and the period for payment of the opposition fee set out in Art. 41 (3). 16 Since the proposed Amendment of the CTMR envisages the deletion of both Art. 25 (3) and Art. 62, all mentions of them must also be deleted from the list of excluded time limits.

9

GC Case T-277/06, 7.5.2009 [2009] ECR II-01303 Omnicare, Inc. v OHIM. Communication No 6/05 of the President of the Office of 16 September 2005.

10

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Reference to general principles

Art. 83 CTMR

VIII. Effect With the granting of continuation of proceedings the unobserved time limit will be 17 considered to have been observed. This is based on a legal fiction. Hence, the time-limit is not extended or starts over again. Any loss of rights that occurred in the interim period will automatically and with retroactive effect, be deemed never to have taken place. Any decision, which was based on the loss of rights is declared invalid.

IX. Relationship between ‘continuation of proceedings’and other available remedies Where the Office took a negative decision based on the failure to meet the time-limit, 18 the applicant can request a continuation of proceedings and lodge an appeal at the same time. In the interest of procedural economy, the first Instance shall firstly decide upon the request for the granting of continuation of proceedings. Where it is granted, the appeal becomes redundant as the contested decision is automatically declared invalid. It is possible to request a continuation and at the same time apply for a restitutio in 19 integrum. This makes sense where the applicant is unsure, whether he has observed the time-limit for continuation. Said time-limit, namely two months of the expiry of the original time limit- is shorter compared to the time-limit for a restitutio in integrum. The time-limit for a restitutio in integrum is two months from the removal of the obstacle.11

Article 83 Reference to general principles In the absence of procedural provisions in this Regulation, the Implementing Regulation, the fees regulations or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States. Content I. Purpose/objective. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 II. Procedure. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 1. Principle of equal treatment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 2. Principle of legal certainty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7 3. Principle of legitimate expectation. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8 4. Principle of ‘reasonable period of time’. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 5. Right to be heard . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

11 The BoA first decided upon the request for a continuation in its decision of 2 June 2006, R 074/20061, Neurim Pharmaceuticals v Eurim-Pharma.

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CTMR Art. 83

Community Trade Mark Regulation

I. Purpose/objective In case neither the CTMR, CTMIR, CTMFR nor the Rules of Procedure contain any provisions on a certain procedural matter, Art. 83 stipulates that the Office shall resort to the ‘principles of procedural law generally recognized in the Member States’. 2 Although various CTM legislations contain a full set of substantive and procedural rules, the legislator saw the need to provide a reference to the principles generally recognized in the Member States in case of an unintended oversight. Hence, recourse to the general principles may only be used as a subsidiary tool.1 From the wording of Art. 83 it remains unclear, whether recourse shall be made to the most important principles of law in general or to those specifically found in Trade Mark law. In my opinion Art. 83 refers to the most important principles of law in general. If interpreted differently one might have problems in finding a commonly shared principle, as various national provisions on trade mark law are quite diverse from one another in certain aspects, e. g. as regards the opposition procedure. 1

II. Procedure Where various CTM legislations do not contain an explicit provision on a particular point it shall primarily be assessed under the basic principles of interpretation generally recognised in jurisprudence and doctrine. In the majority of cases this will lead to the conclusion that no unintended oversight exists, e. g. the CTMR has deliberately omitted any provisions on legal aid. Only in the few instances, where such an oversight actually exists, may the ‘principles generally recognized in the Member States’ be applied. These commonly shared principles find their origin in the domestic legal systems of all or at least the vast majority of Member States, which are enshrined in their respective constitutions. When taking recourse to the constitutional traditions common to all Member States, the Office shall interpret the terms in accordance with international treaties which the Member States have signed, e. g. the TRIPS Agreement. Art. 41 of the TRIPS Agreement lists some of the most important principles of law: the right to a fair and equitable hearing, which must not be unnecessarily complicated or costly. 4 The term ‘principles generally recognized in the Member States’ is not synonymous with the term ‘general principle of EU law’. It is unclear, why the Regulation deliberately omitted a reference to the ‘general principles of EU law’, especially in light of its effort to develop more and better cooperation among the Member States and harmonization within the Union. 5 Regardless of this omission the Boards of Appeal and the Court will resort to the ‘general principles of EU law’ anyways. Hence, the principle of equal treatment, the principle of legal certainty (i. e. the extent and nature of the rights must be established by consulting the Register) as well as the protection of legitimate expectations must be observed.2 3

1 2

Bartos, in Kucsko/Schumacher (ed.), Markenschutz II (2013), § 2 MSchG mn. 277 et seq. Bender, Europa¨isches Markenrecht, I 4 mn. 44 et seq.

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Reference to general principles

Art. 83 CTMR

1. Principle of equal treatment The principle of equal treatment has been recognized by the Court of Justice as one of 6 general application and stipulates that comparable situations must not be treated differently, whereas different situations must not be treated in the same way, unless such differentiation is objectively justified.3

2. Principle of legal certainty In its broadest sense, the principle of legal certainty provides that Community legisla- 7 tion must be unequivocal and its application must be predictable for those who are subject to it. Hence, the CJ stipulates that the representation of a trade mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.4 In addition the scope of protection conferred upon a trade mark proprietor must be unambiguous, in order to enable third parties to establish its parameters.5 The principle of legality also includes the administration subjection to law. Hence, the Office must not charge any unduly fees or proceed with a registration despite an ongoing appeals’ procedure.6

3. Principle of legitimate expectation The principle of legitimate expectations is closely linked to the principle of legal 8 certainty and stipulates that trust in the Community’s legal order must be respected. Under this principle, ‘assurances relied on in good faith should be honoured’.7 Hence, third parties, who consulted the Register, may trust that the information provided therein is correct.

4. Principle of ‘reasonable period of time’ Although the General Court recognizes the principle of ‘reasonable period of time’, e. g. 9 that a decision shall be given within an appropriate period of time, it does not draw any practical consequences from it. Hence, even if the Office or the BoAs failed to act within an appropriate period of time the party to the proceedings cannot infer any conclusions form that, e. g. that its application was granted, where the Office did not respond in due time. The CTMR also does not provide for the issuing of an action for failure to act.

5. Right to be heard8 The Office may base its decision only on reasons on which the parties have had the 10 opportunity to state their positions and to put forward their grounds of defence. The decision has to cover every point raised by the parties.9 3

CJ Case C-351/92, Graff v Hauptzollamt Ko¨ln-Rheinau [1994] ECR I-03361. CJ Case C-273/00, Sieckmann v Geruchsmarke [2002] ECR I-11737. 5 CJ Case C-307/10, Chartered Institute of Patent Attorneys v Registrar of Trade Marks (IP Translator) available at www.curia.eu Õ search Case law. 6 OHIM Dec. of 22.07.2005 – R 650/05-4 Umschreibungsgebu ¨ hr; OHIM Dec. of 05.07.2007 – R 578/001, Hipoviton v Hippovit. 7 CJ Case C-169/73, Compagnie Continentale v Council [1975] 00117, per Advocate-General Trabucchi. 8 OHIM, Manual concerning Proceedings before the OHIM (Trade Marks and Design), Part A: General Rules, Section 2: General Principles to be respected in the Proceedings. 9 OHIM Dec. of 26.09.2001 – R 184/2001-3, Smartguard v Smartpass. 4

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CTMR Art. 83

Community Trade Mark Regulation

Art. 83, however, is of little practical relevance. Parties trying to invoke Art. 83 usually fail in their attempt. The reason being manifold: 12 The procedural rules set out in CTMR and CTMIR are exhaustive. Hence, Art. 83 is inapplicable as regards the procedural principles set out in Art. 75 and 7610, the rules on who may represent before the Office, the rules on who may apply for a declaration of invalidity or revocation.11 (1) the various CTM legislations do in fact provide a specific procedural provision; (2) the fact that the CTMR is silent on certain issues does not necessarily mean that an unintended oversight exists. For instance, the CTMR does not contain any provisions on legal aid. However, the absence of such aid was based on a conscious and deliberate decision by the drafters of the CTMR.12 (3) the procedural principle invoked by the party cannot be said to be ‘generally recognized in the Member States’. It is insufficient for the party to show that the procedural principle relied upon is recognized in a single or merely a few Member States.13 This is necessary to prevent the proliferation of the invocation of national laws as otherwise the aim of establishing a harmonized procedural system regarding the registration of Community trade marks would be subverted. On the other hand it is not necessary for the relied upon principle to be recognized in all the Member States. If that were the case the principle would be considered a ‘general principle of EU law’. ‘The procedural provisions of the Member States are not compatible with the procedure in front of the Office e. g. the opposition procedure according to the German or Austrian national law is fundamentally different from the opposition procedure in front of the Office. Hence, as the these procedures cannot be easily compared, the German or Austrian provisions cannot be applied in the same way. While the opposition under Austrian law is subsequent to the registration of a trade mark, opposition proceedings under the CTMR are integrated into the application proceedings. Hence, the legal consequences are different. While an opposed Austrian national trade mark is validly registered and may serve as a legal basis in infringement proceedings this is not the case with an opposed CTM application. Likewise, an opposition according to Austrian trade marks law may be based on prior trade marks which are identical or confusingly similar, but contrary to CTM- opposition proceedings not based on a well-known trade mark (Art. 6bis of the Paris convention) or a non-registered trade mark or sign used in the course of the trade.’14 (4) On the other hand, even given such fundamental differences, where there are similarities or identical provisions in both the CTMR and national procedural rules, an analogous application may be deemed acceptable. 13 The number of decisions in which the Office or the CJ refers to Art. 83 is limited. ROIG CERAMICA v WP Viva Fertig-Parkett concerned the party’s fundamental right to be heard. It is widely recognized that courts and administrative bodies may only base their decision on the evidence and facts on which the parties were given the right to be heard- whether or not the party exercised its right to be heard is irrelevant. In the aforementioned case the Office based its decision on facts and evidence which were not posted to the other party, which was deprived of its right to be heard. The Board of Appeal found that the ruling violated Art. 83 CTMR. 11

10

GC Case T 535/08, Tucci v Tuzzi available at www.curia.eu Õ search Case law. GC Case T 223/08, Iranian Tobacco v OHIM & AD Bulgartabac (Bahman) [2009] ECR II-00229. 12 OHIM Dec. of 18.07.2007 – R 950/2007-3, Mini-Fussball-Trikot. 13 GC Case T-160/07, Lanco ˆ me v OHIM – CMS Hasche Sigle (COLOR EDITION) [2008] ECR II-01733. 14 Engin-Deniz, Markenschutzgesetz, p. 307. 11

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Termination of financial obligations

Art. 84 CTMR

Article 84 Termination of financial obligations 1. Rights of the Office to the payment of a fee shall be extinguished after four years from the end of the calendar year in which the fee fell due. 2. Rights against the Office for the refunding of fees or sums of money paid in excess of a fee shall be extinguished after four years from the end of the calendar year in which the right arose. 3. The period laid down in paragraphs 1 and 2 shall be interrupted, in the case covered by paragraph 1, by a request for payment of the fee, and in the case covered by paragraph 2, by a reasoned claim in writing. On interruption it shall begin again immediately and shall end at the latest six years after the end of the year in which it originally began, unless, in the meantime, judicial proceedings to enforce the right have begun; in this case the period shall end at the earliest one year after the judgment has acquired the authority of a final decision. Content I. II. III. IV.

Purpose/objective. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 Claims by the Office against individuals. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 Claims by individuals against the Office. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8 Interruption . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

I. Purpose/objective Art. 84 governs the termination of payment obligations towards the Office. It has to 1 claim its fees within four years from the end of the calendar year in which the fee was due for the first time. All claims will lapse immediately and automatically after the time limit has run out. Hence, the party liable to pay the fees does not need to invoke the plea that the claim is statute-barred. In case the fees are paid after the aforementioned time limit has run out the Office is obliged to restitute them based on the principle of unjustified enrichment.

II. Claims by the Office against individuals The Office is entitled to claim the following fees within four years from the end of the 2 calendar year in which the fee fell due:1 – Basic fee for the application for an individual mark – Fee for each class of goods and services exceeding three for an individual mark – Basic fee for the application for a collective mark – Fee for each class of goods and services exceeding three for a collective mark – Opposition fee – Fee for the alternation of the representation of a trade mark – Basic fee for the registration of an individual mark – Fee for each class of goods and services exceeding three for an individual mark – Basic fee for the registration of a collective mark 1

Article 2 Commission Regulation (EC) No 2869/95 on the fees payable to the OHIM.

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CTMR Art. 84

Community Trade Mark Regulation

– Fee for each class of goods and services exceeding three for a collective mark – Additional fee for the late payment of the registration fee (25 % of the belated registration fee, subject to a maximum of EUR 750) – Basic fee for the renewal for an individual mark – Fee for each class of goods and services exceeding three for an individual mark – Basic fee for the renewal for a collective mark – Fee for each class of goods and services exceeding three for a collective mark – Additional fee for the late payment of the renewal fee of the late submission of the request for renewal (25 % of the belated renewal fee, subject to a maximum of EUR 1,500) – Fee for the application for revocation or for a declaration of invalidity – Appeal fee – Fee for restitutio in integrum – Fee for the conversion of a mark into a national trade mark application (per entry, but, where multiple requests are submitted in the same application or at the same time, not to exceed a total of EUR 1,000) – Fee for the registration of the whole or partial transfer of a registered Community trade mark (per registration, but, where multiple requests are submitted in the same application or at the same time, not to exceed a total of EUR 1,000) – Fee for the registration of a licence or another right in respect of a registered Community trade mark or an application for a Community trade mark: (a) grant of a licence (b) transfer of a licence (c) creation of a right in rem (d) transfer of a right in rem (e) levy of execution(per registration, but, where multiple requests are submitted in the same application or at the same time, not to exceed a total of EUR 1,000) – Fee for the cancellation of registration of a licence or other right (per cancellation, but, where multiple requests are submitted in the same application or at the same time, not to exceed a total of EUR 1,000) – Fee for the alteration of a registered Community trade mark – Fee for the issue of a copy of the application for a Community trade mark, a copy of the certificate of registration, or an extract from the register (a) uncertified copy or extract: EUR 10 (b) certified copy or extract: EUR 30 – Fee for the inspection of the files – Fee for the issue of copies of file documents (a) uncertified copy: EUR 10 (b) certified copy: EUR 30 plus EUR 1 per page exceeding the tenth page. – Fee for the communication of information in a file: EUR 10 plus EUR 1 per page exceeding the tenth page. – Fee for the review of the determination of the procedural costs to be refunded 3 Art. 84 is not applicable to charges laid down by the President, as provided for in Article 3 of the ‘Fees Regulation’. Hence one must differentiate between ‘fees’ and ‘charges’. The President of the Office shall lay down the amount to be charged for any services rendered by the Office other than those specified in Art. 2 of the ‘Fees Regulation’, e. g. for the supply of publications. 4 Disputes regarding the existence of a payment obligation may arise where – the Office has taken the desired procedural step without prior checking whether the respective fee has been paid. 874

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Termination of financial obligations

Art. 84 CTMR

– a particular fee was debited automatically from the current account, even though the provision of the corresponding procedural step is disputed. – a fee is restituted by the Office even though the fee is forfeited. In general Art. 84 is inapplicable where the CTMR provides for a different legal 5 consequence in case of non-payment. For instance, in case the application fee is not paid within the fixed time limit set out in Artt. 27 et seq. the Office shall reject the application in its entirety instead of pursuing the payment of those outstanding fees. In case an insufficient amount was paid, the respective time limit shall not be 6 considered to have been observed. The Office may, however, provide the individual making the payment with the opportunity to pay the amount lacking or, where this is considered justified, overlook any small amounts lacking without prejudice to the rights of the person making the payment.2 If the Office fails to claim its fees within four years from the end of the calendar year 7 in which the fee was due for the first time, all claims will lapse immediately and automatically, irrespective of whether the final day of said period falls on a Sunday or public holiday. The Office cannot request a restitutio in integrum.3

III. Claims by individuals against the Office Art. 84 (2) governs the forfeiture of rights held by individuals against the Office in 8 regard to fees wrongly paid or overpaid. It concerns the following cases: (1) fees unduly paid, e. g. when the submitted application is in fact not subject to a fee or the applicant erroneously believes that it is subject to a fee. (2) overpaid fees: excess fees will be refunded ex officio. However, the excess fee shall not be refunded if the amount is insignificant and the party concerned has not expressly requested that refund. Currently the ‘insignificant-threshold’ lies at EUR 15.4 (3) premature payments (4) statutorily prescribed refunds: where the application for a Community trade mark does not meet the formal requirement, the basic fee for the application shall be refunded (Rule 9 (2) CTMIR); where the opposition proceedings are closed following a withdrawal or restriction of the application, the opposition fee shall be refunded (Rule 18 (5) CTMIR); where a number of oppositions have been entered in respect of the same application for a Community trade mark, and the Office has subsequently rejected the application based on one of them, 50 % of the opposition fee will be refunded to each opposing party (Rule 21 (4) CTMIR); in each case, where the payment of the fee is a formal prerequisite for the desired act to be administered and subsequently said act is not executed, the fee shall be refunded. The individual’s right to claim the fee extinguishes after four years from the end of the 9 calendar year in which the right arose. If for instance the right to claim the fee arose on 15 September 2012 it will expire on 31 December 2016. In case of excess fees the right to claim the fee will become effective on the date of the payment of the fee. Where the refund is statutorily prescribed, the right will become effective according to the respective provision (e. g. Rule 9 (2) CTMIR). Otherwise the right will become effective once it is established that the fees are no longer due and will not become due in the future. 2

Article 9 Commission Regulation (EC) No 2869/95 on the fees payable to the OHIM. Eisenfu¨hr/Schennen, GMV, 4th edition, Art. 84 mn 21. 4 Decision by the President of the Office, Nr EX-03-6, 20 January 2003, Official Journal 2003, 876. 3

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CTMR Art. 85

Community Trade Mark Regulation

IV. Interruption 10

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The four year-time limit is interrupted by the following actions: – regarding rights of the Office to the payment of a fee Õ by a request from the Office for payment of the fee; – regarding rights against the Office for the refunding of fees Õ by a reasoned and signed claim in writing by the entitled individual. In case such a request or claim has been made the time limit will begin again. However, it will end at the latest six years after the end of the year in which it originally began, irrespective of when the request or claim was made. (Coming back to the aforementioned example, the time limit will in any case end on 31 December 2018.) The only exception is where judicial proceedings to enforce the right have begun in the meantime. In that case the period will end at the earliest one year after the judgment has become legally binding. Due to the fact that the Office enjoys immunity (see Art. 117 CTMR mn. 3) and the claim’s public-law nature an individual cannot enforce its right for the refund. Thus, it is advisable to ask the Office to take an appealable decision. Should the request for a refund be denied, the individual may appeal the decision to the Administration of Trade Marks and Legal Division (Art. 133 CTMR). The various CTM legislations are silent on the topic of enforcement. Due to the asserted claim’s public-law nature the Office is unable to judicially enforce its claims in civil proceedings. Where the individual concerned has set up a current account the fee will be debited automatically. This is made possible, as the holder of the account consented- upon opening the account- that all fees and charges due may automatically be debited. In case no current account exists, the Office may issue an official enforcement decision – in accordance with the principle that administrative bodies may enforce substantial claims themselves. Such a decision may subsequently be enforced in accordance with the respective national laws of the person concerned. Where the outstanding claim is only minimal or where such recovery is too uncertain, the President of the Office may waive action for the enforced recovery of that sum (Rule 74 CTMIR).

SECTION 2 Costs Article 85 Costs 1. The losing party in opposition proceedings, proceedings for revocation, proceedings for a declaration of invalidity or appeal proceedings shall bear the fees incurred by the other party as well as all costs, without prejudice to Article 119 (6), incurred by him essential to the proceedings, including travel and subsistence and the remuneration of an agent, adviser or advocate, within the limits of the scales set for each category of costs under the conditions laid down in the Implementing Regulation.

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Costs

Art. 85 CTMR

2. However, where each party succeeds on some and fails on other heads, or if reasons of equity so dictate, the Opposition Division, Cancellation Division or Board of Appeal shall decide a different apportionment of costs. 3. The party who terminates the proceedings by withdrawing the Community trade mark application, the opposition, the application for revocation of rights, the application for a declaration of invalidity or the appeal, or by not renewing registration of the Community trade mark or by surrendering the Community trade mark, shall bear the fees and the costs incurred by the other party as stipulated in paragraphs 1 and 2. 4. Where a case does not proceed to judgment the costs shall be at the discretion of the Opposition Division, Cancellation Division or Board of Appeal. 5. Where the parties conclude before the Opposition Division, Cancellation Division or Board of Appeal a settlement of costs differing from that provided for in the preceding paragraphs, the department concerned shall take note of that agreement. 6. The Opposition Division or Cancellation Division or Board of Appeal shall fix the amount of the costs to be paid pursuant to the preceding paragraphs when the costs to be paid are limited to the fees paid to the Office and the representation costs. In all other cases, the registry of the Board of Appeal or a member of the staff of the Opposition Division or Cancellation Division shall fix the amount of the costs to be reimbursed on request. The request is admissible only within two months of the date on which the decision for which an application was made for the costs to be fixed became final. The amount so determined may be reviewed by a decision of the Opposition Division or Cancellation Division or Board of Appeal on a request filed within the prescribed period. Content A. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Overview. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Historic development . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Decision on costs – apportionment of costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Award ex officio and request for award . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Principle of losing party to bear the fees and costs . . . . . . . . . . . . . . . . . . . . . III. Exceptions of underlying principle . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Opposition: Restriction of application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Reasons of equity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. No decision on substance . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Settlement (on costs). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5. Information to bear own costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6. Translation costs (reference to Art. 119 (6) CTMR) . . . . . . . . . . . . . . . . . IV. Starting of adversarial stage of proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Non-inter partes proceedings and third parties . . . . . . . . . . . . . . . . . . . . . . . . . C. Decision on costs – fixing of costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. General and currency . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. No fixing of costs. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Request on fixing the costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Fees and costs to be compensated . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Fees to be compensated . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Costs to be compensated . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Historical development . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Costs, essential to the proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Limits and caps of to be compensated costs. . . . . . . . . . . . . . . . . . . . . . . aa) Party not represented by a (professional) representative (lit. a). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . bb) Travel expenses of a (professional) representative (lit. b) . . .

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CTMR Art. 85

Community Trade Mark Regulation

cc) Costs od witnesses and experts (lit. c). . . . . . . . . . . . . . . . . . . . . . . . . dd) Costs of (professional) representation (lit. d) . . . . . . . . . . . . . . . . ee) Representation by more than one representative (lit. f) . . . . ff) Representation costs for employees. . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Evidence on costs (sensu stricto). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D. Review of decision on request on fixing of costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . E. Appeal against award of costs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

61 62 67 68 69 72 82

A. General I. Overview 1

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5 6

Art. 85 CTMR provides a general framework for the award of costs in inter partes proceedings before OHIM, namely1 – in opposition proceedings (Artt. 41 CTMR et seq.), – in proceedings for revocation (Artt. 56 CTMR et seq.), – in proceedings for a declaration of invalidity (Artt. 56 CTMR et seq.) or – in appeal proceedings (Artt. 58 CTMR et seq.). Generally, as OHIM is not subject to a decision on costs (s. for non-inter partes proceedings mn. 36), fees paid to OHIM are not subject to repayment. Exceptions2 are laid down in Rule 18 (5) (withdrawal of opposition during cooling-off period), 21 (4) and 41 (2) (50 % under certain circumstances in proceedings on multiple oppositions or multiple applications for revocation or for a declaration of invalidity), and 51 (reimbursement of appeal fees) CTMIR. While Art. 85 (1) to (5) CTMR lay down the apportionment of costs, Art. 85 (6) CTMR lays down the fixing of the costs. The general rule is that the losing party, or the party who terminates the proceedings by withdrawing the application, shall bear the fees incurred by the other party as well as all costs incurred by it essential to the proceedings, whereas for the fixing of the costs generally maximum rates apply (s. mn. 56 et seq.). Due to the maximum rates that have to be compensated by the losing party (s. mn. 56 et seq.) the cost risk in proceedings with OHIM is rather low. On the one hand that leads to an appreciated low risk for applicants, but on the other hand that can lead to frivolous applications for CTM as well as frivolous oppositions or other proceedings mentioned in mn. 1. The rather low amount awarded also may lead to practical difficulties to enforce the award on costs (s. Art. 86 CTMR): The award of costs are rarely enforced in practice simply because the amounts involved are, relatively speaking, too small that the time and costs involved in proceeding to enforcement are scarcely justifiable; this applies even more to enforcing decisions outside the EU. Rule 94 CTMIR regarding apportionment and fixing of costs sets out the procedural rules. It is worth mentioning already here concerning opposition proceeding that an award of costs can only be taken in opposition proceedings that have passed the cooling-off period, i. e. where the adversarial part of the proceedings has started and has come to an end. Consequently, no award of costs is issued in opposition proceedings that are closed before or during the cooling-off period (s. Rule 18 (4) CTMIR and for details mn. 18 and 34). 1 2

S. Kucsko, Die Gemeinschaftsmarke, 33 and 1. S. also OHIM, Manual, Part A, 5.

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Generally the award on costs, namely (i) decision on apportionment and (ii) decision 7 on fixing of the costs, is issued by OHIM together with the decision on substance (s. Rule 94 (1) and (2) CTMIR), generally at the end of the concerned decision. If the award on costs is – for whatever reason, e. g. because it was forgotten to issue – not granted together with the decision on substance, the award can be separately issued afterwards.3 This following a regarding request (s. mn. 11 et seq.). Art. 86 CTMR is addressing the enforcement of the granted awards of costs. 8

II. Historic development Art. 85 CTMR was amended by virtue of Council Regulation (EC) 422/2004 with the 9 introduction of the new Art. 85 (6) CTMR to facilitate and accelerate the proceedings relating to cost awards. The related procedure is set out in Rule 94 CTMIR, amended by Commission Regulation (EC) 1041/2005, to introduce consequential procedural changes arising out of the amended Art. 85 (6) CTMR. In essence, the amendments to the CTMR and CTMIR consist of (i) the maximum rates in Rule 94 (7) CTMIR were slightly increased (s. mn. 53); (ii) in the great majority of cases OHIM fixes an award of costs without having to be asked to do so by the parties (Art. 85 (6) sentence 1 CTMR); (iii) the request for an award on costs can only be filed within two months of the date on which the decision on substance became final (Art. 85 (6) sentence 3 CTMR) (s. mn. 11 et seq.); and (iv) acc. Rule 94 (3) CTMIR in general no evidence on costs have to be filed (s. mn. 69 et seq.).

B. Decision on costs – apportionment of costs I. Award ex officio and request for award Generally the award of costs is issued by OHIM ex offico together with the decision on substance (s. Rule 94 (1) and (2) CTMIR and mn. 7). Pursuant to Art 85 (6) second sentence CTMR, in any other (practically rare) situation, costs will only be awarded if one of the parties files a request for an award of costs. Such other situations are (i) when an oral hearing took place or (ii) when the fixing of costs was inadvertently omitted (‘forgotten’) in the main decision. The request for such award of costs must be made within two months of the decision (in the merits) to which this relates becoming final (Art. 85 (6) third sentence CTMR). Before the decision has become final, such request is not admissible.4 Acc. Rule 94 (3) first sentence CTMIR such request has to be accompanied by a bill and supporting evidence of the amounts claimed (general exception s. mn. 69 et seq.). The credibility of such a request must be established by means of this supporting documentation (Rule 94 (3) third sentence CTMIR). Art. 85 (6) CTMR also lays down, who fixes the amount based on such request, namely a member of the staff of the Opposition Division or Cancellation Division or the registry of the BoA. OHIM then notifies the parties of the award of costs. 3 4

Schennen, in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 85 mn. 2. Manual, Part C, Section 1, 5.6.3.1.

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The amount determined after such request may be subject to a review by a decision of the Opposition Division or Cancellation Division or BoA on a request of one party (s. mn. 72 et seq.).

II. Principle of losing party to bear the fees and costs The general principle is that the losing party bears the costs of the winning party and of course the costs of its own intervention; furthermore, the losing party has to bear respectively has to compensate the fees of the proceeding (Art. 85 (1) CTMR, Rule 94 (1) CTMIR). For exceptions s. mn. 18 et seq. 17 In this respect winning or losing is evaluated based on the request of the parties5 and its relation to the decision on substance on the opposition (however, see mn. 18 et seq.), the request for revocation or for declaration of invalidity by OHIM. The reasons for losing respectively winning are of no relevance for the award of costs. 16

III. Exceptions of underlying principle 1. Opposition: Restriction of application If, before the expiration of the cooling-off period of the opposition proceeding (for the period after the expiry of the cooling-off s. mn. 19), the applicant restricts the application by deleting some of the goods and services against which the opposition is directed, OHIM shall acc. Rule 18 (3) CTMIR invite the opposing party to state, within such a period as OHIM may specify, whether he maintains the opposition, and if so, against which of the remaining goods and services. If the opposing party withdraws the opposition in view of the restriction the opposition also regarding the other goods and services proceedings shall be closed and acc. Rule 18 (4) CTMIR no decision on costs shall be issued and acc. Rule 18 (5) CTMIR the opposition fee shall be refunded by OHIM to the opposing party. If, however, the opposing party continues the opposition the OHIM issues an award of costs in the decision on substance, without taking into account that the applicant restricted the application within the cooling-off period.6 19 If the opposing party continues the opposition, although after the expiry of the cooling-off period (otherwise s. mn. 18) the applicant restricted the application regarding parts of the goods and services subject to the opposition, OHIM issues an award of costs in the decision on substance acc. normal rules, whereas the applicant is considered regarding the restriction as the losing party:7 If the decision on substance dismisses the opposition, the opposing party won regarding the restriction but lost regarding the further goods and services and therefore Art. 85 (2) CTMR applies and in general each party has to bear its own costs. 18

2. Reasons of equity 20

Where each party succeeds on some and fails on other heads regarding the decision on substance on the opposition, on the request for revocation or on the request for declaration of invalidity, or if reasons of equity so dictate in those proceedings, the Schennen, in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art 85 mn. 10. OHIM Dec. of 16.6.2010 – R 387/2010-4 – GEKA v GELHA. 7 OHIM Dec. of 4.2.2011 – R 1098/2010-4 – ISENSE v EYESENSE. 5 6

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Opposition Division, Cancellation Division or BoA shall decide a different apportionment of costs (Art 85 (2) CTMR, Rule 94 (1) CTMIR), typically that each party will bear its own costs,8 meaning that no party has a claim to the other party.9 This also applies e. g. – when both parties partly withdraw parts of their application/trade mark on the one hand respectively of their request on the other hand.10 – on a request for declaration of invalidity that is not in substance successful, because it is ruled that the trade mark has become distinctive in relation to the goods or services in consequence of the use which has been made of it (Art 7 (3) CTMR).11 – regarding the costs of the appeal proceeding, if the appeal proceedings arose due to an (obvious) error in the decision on costs by the Opposition Division:12 The respondent did not contribute to this error, and that he later tried to collect the amount fixed, was merely due to the fact that he did not yet notice the error. Under such circumstances it would be unfair to oblige the respondent to pay these costs. – if BoA decides – based on meanwhile changed circumstances – differently than the (based on the previous circumstances correct) decision by the Opposition Division:13 In the appeal proceedings, the applicant (and also OHIM) was for the first time in a position to recognize that the opposing mark is earlier. However, at that point in time, the appeal was already filed and the applicant was not in a position to minimise costs by its procedural behaviour. Also for the appeal proceedings the opponent should bear his own costs. – when the appeal against the dismissal of a request for restitutio in integrum made before the Opposition Division is successful with BoA and as a consequence the application is rejected by BoA: Although the applicant is the losing party and although, on the other hand, the opponent could establish with BoA due care, it is not to be burdened on the applicant that the Opposition Division applied more stringent criteria towards the opponent’s restitutio request. It does not appear equitable under these circumstances that the applicant should reimburse the opponent’s costs and fees14 when both parties sought a decision annulling or altering the contested decision and both appeals are dismissed.15

3. No decision on substance Even without a decision on substance the a/m underlying principle is in general 21 (s. however Art 85 (4) CTMR) applicable, whereas Art 85 (3) CTMR constitutes a lex specialis in relation to Art 85 (4) CTMR16: (1) If one party terminates proceedings before OHIM – regarding the opposition after 22 the cooling-off period (s. mn. 18 and 34) –, and this includes withdrawing the regarding application17/opposition/request or failing to renew or surrendering the registration18 subject to the proceedings, that party will be liable for an adverse costs award (Art. 85 (3) CTMR, Rule 94 (2) CTMIR), which is then issued as a ‘stand-alone decision’. 8

S. OHIM, Manual, Part C, Section 1, 5.5.3. OHIM, Manual, Part C, Section 1, 5.5.4.4. 10 OHIM Dec. of 4.7.2012 – R 323/2011-4 – I.XPO v ISPO. 11 Schennen, in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 85 mn. 12. 12 OHIM Dec. of 1.8.2006 – R 241/2006-4 – VICTORY v V VICTORY. 13 OHIM Dec. of 3.5.2011 – R 2000/2010-4 – FORERUNNER v FORERUNNER. 14 OHIM Dec. of 8.10.2010 – R 1356/2008-4 – DADA & CO v DADA III; s. however different opinion: OHIM Dec. of 23.4.2007 – R 206/2005-2 – H 15 BOSWELANH v H 15. 15 OHIM Dec. of 15.12.2014 – R 1942/2013-5 – PAYAIR v PAYFAIR. 16 GC Case T-124/02 The Sunrider Corp. v OHIM. 17 OHIM Dec. of 13.12.2013 – R 0888/2013-4 – LIVE COLORFULLY v LIVE. 18 Also regarding IR: OHIM Dec. of 14.3.2012 – R 384/2011-4 – ED HARDY v HARDY. 9

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A/m withdrawing is equivalent to cases where the applicant restricts its application to the goods and services the request of the other party is not directed at (partial withdrawal of trade mark, but entire withdrawal of the goods and services subject to the proceedings). Withdrawal of goods and services not being subject to the proceedings is of course at any time possible and of no relevance to the proceedings and also of no relevance to the decision on costs.19 Regarding the partly restriction of the goods and services subject to the opposition proceedings s. mn. 18 et seq. and mn. 23. However, Art. 85 (3) CTMR does not apply if the trade mark on which the opposition or request for declaration of invalidity is based on is restricted or withdrawn; in such cases the OHIM has to evaluate if the request is still founded and has then to decide (also on the costs) acc. normal rules.20 At what stage of the proceeding the application/opposition (however, after expiry of the cooling-off period, s. Rule 18 (4) CTMIR)/request is withdrawn or the failing to renew or surrendering the registration takes place is of no relevance: Art. 85 (3) CTMR, Rule 94 (2) CTMIR are also applicable during the appeal proceedings,21 whereas it is irrelevant if the withdrawing party was successful in the proceedings before the lower instance.22 E. g. as a result of the withdrawal of the request for a declaration of invalidity, the cancellation and the appeal proceedings have lost their purpose and shall be declared closed; the contested decision does not become final and the contested trade mark remains registered and if neither party referred to an agreement as the reason for the withdrawal of the invalidity request, a decision on the costs is required.23 23 (2) However, in cases of partial restriction of the trade mark application, but not entire withdrawal of the goods and services subject to the opposition, followed by withdrawal of the opposition after the cooling-off period, Art 85 (4) CTMR is applicable,24 and OHIM has the discretion to make an award of costs as it sees fit in principle: In principle each party bears its own costs.25 A different apportionment of costs than each party bears its own costs can however be justified for reasons of equity – for example if the application was only restricted to a very small extent.26 However, in practice this is not taken into consideration.27 Also the economic background of the regarding goods and services etc. are generally not taken into account.28 In this context it is noteworthy that OHIM does not take into account arguments of the parties as to who should pay29 and in particular does not judge the correctness of the behaviour of the parties during the proceedings.30 24 (3) That OHIM has the discretion to make an award of costs as it sees fit in principle applies also in every other case, in which, for whatever other reason, the proceeding does not proceed to a decision (Art 85 (4) CTMR) (if the parties have not

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OHIM Dec. of 14.4.2010 – R 1174/2009-4 – KUALA v KOALA. Schennen, in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art 85 mn. 15. 21 OHIM Dec. of 27.4.2005 – R 247/2003-2 – MEDIA PARK; OHIM Dec. of 12.9.2013 – R 0741/2013-5 – Zamek; OHIM Dec. of 13.12.2013 – R 0888/2013-4 – LIVE COLORFULLY v LIVE. 22 Schennen, in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art 85 mn. 40. 23 OHIM Dec. of 12.9.2013 – R 0741/2013-5 – Zamek. 24 GC Case T-124/02 The Sunrider Corp. v OHIM. 25 OHMI Dec. of 23.11.2010 – R 1338/2009-1 – HERR-BERGE v PIERRE BERGE. 26 OHIM, Manual, Part C, Section 1, 5.5.3. 27 OHIM Dec. of 28.3.2013 – 5092 C – GIVES YOU WINGS. 28 S. Schennen, in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 85 mn. 11. 29 OHIM Dec. of 23.11.2004 – R 308/2004-4 – GLOBIX THE GLOBAL INTERNET EXCHANGE v GLOBEX. 30 OHIM, Manual, Part C, Section 1, 5.5.3; diss.op. Schennen, in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 85 mn. 17. 20

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reached another agreement and have not informed OHIM accordingly (Art 85 (5) CTMR, s. mn. 26 et seq.)):31 – In cases where there are multiple proceedings against the identical goods and services of the same application and those have or have not32 been suspended acc. Rule 21 (2) CTMIR (s. for multiple applications for revocation or for a declaration of invalidity Rule 41 (2) CTMIR referring to Rule 21 CTMIR), and one of those proceedings leads to the rejection of the application/trade mark, OHIM waits until the decision becomes final and then closes the other proceedings and the cases do not proceed to judgment. In such cases the determination of costs is – regarding oppositions after the expiration of the cooling-off period – when suspended acc. Rule 21 (3) CTMIR, referring to Art. 85 (4) CTMR, when not suspended based on Art. 85 (4) CTMR, at the discretion of OHIM. However, the Manual states that OHIM would not be able to determine who the ‘winning or losing party’ is, and the applicant should not be required to pay the costs of several other opposing parties if it loses in one decision on substance. Therefore, applying a principle of equity and the fact that it is unclear, which of the multiple oppositions would have been (un)successful,33 each party generally is ordered to bear its own costs.34 However, pursuant to Rule 21 (4) CTMIR (and in multiple applications for revocation or for a declaration of invalidity pursuant to Rule 41 (2) CTMIR) OHIM refunds 50 % of the fee paid by each party, but only if the other proceedings have been suspended. – In cases of multiple proceedings which are partially directed against the same goods and services of the same contested trade mark, the decision which is taken first may, but does not have to, affect the other proceedings and therefore may affect the award of costs. In case of rejections of goods and services in the one proceeding and as a consequence withdrawal – of the opposition after the cooling-off – in the other proceedings the rules of ‘partial restriction, but not entire withdrawal of the goods and services subject to the opposition’ (see mn. 19) are applicable mutatis mutandis, and generally each party has the bear its own costs acc. Art. 85 (2) CTMR.35 If the other party maintains the (other) proceedings after the partial rejection (in the first, but with effect to the other proceedings), the (other) proceedings continue and in the final decision on substance the award of costs is issued acc. normal rules. – In cases where the joint opposition succeeds in its entirety the applicant should pay the opposition fees paid by each of the opponents but representation costs only once (s. mn. 67). If the applicant wins, its representation costs will be awarded once but each of the joint opponents is liable for them. A different apportionment of costs might be equitable: In cases of partial success or if equitable for other reasons, each party bears its own costs. – The trade mark application subject to (an opposition) proceedings can (still) be rejected on absolute grounds for refusal. This might happen either (i) on the basis of third party observations (s. Art. 40 CTMR), (ii) even ex officio if the case is re-opened (which can also be the case after opposition proceeding), or (iii) on formalities, e. g. if an applicant from outside the EU is no longer represented (Art. 92 (2) CTMR)36.

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OHIM, Manual, Part C, Section 1, 5.5.3. GC Case T-032/04 Lichtwer Pharma AG v OHIM. 33 GC Case T-032/04 Lichtwer Pharma AG v OHIM. 34 OHIM Dec. of 11.12.2006 – R 682/2006-4 – GAVINAR v GAVISCON. 35 OHIM Dec. of 27.4.2005 – R 247/2003-2 – MEDIA PARK. 36 OHIM Dec. of 24.8.2006 – R 1057/2005-1 – DOUSSY v TUSSI. 32

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Once the rejection becomes final, the opposition proceedings are closed by OHIM issuing a notification. If the refusal becomes final after the cooling-off period, Art. 85 (4) CTMR applies and generally each party shall bear its own costs. Before the end of the cooling-off period no award of costs is issued (Rule 18 (4) CTMIR). 25 The hypothetical outcome of the case if a decision on substance had become necessary is absolutely irrelevant for the decision on costs.37 Irrelevant is also the subjective reasons for restrictions or withdrawal.38 In all those cases OHIM closes the case and a decision on costs is issued together with the closure letters unless the parties have informed OHIM about an agreement on costs (s. mn. 26 et seq.).

4. Settlement (on costs) Where the parties conclude a settlement on costs, OHIM shall take note of that agreement (Art 85 (5) CTMR). This information must be received by OHIM before OHIM has confirmed the closure of the proceedings.39 An agreement on costs is generally part of a negotiated settlement of the proceedings, typically that each party is bearing its own costs. Art. 85 (5) CTMR ‘only’ stipulates that OHIM must take note of that agreement. In practice however – regarding opposition proceedings based on the Manual40 – OHIM does adhere to such settlement of costs, whereas the fact of settlement can also be sent in two separate letters to OHIM,41 and OHIM does not issue a decision on costs.42 27 A settlement of the regarding proceedings, which is possible in any stage of the proceedings,43 does not have to include a settlement on costs, as the parties are free not to include the cost issue in such agreement. In case of the latter, the first instance registry takes a decision on costs immediately, together with the confirmation of the withdrawal/ restriction.44 If BoA is not aware if a withdrawal is based on an agreement, it generally reverts to the parties asking if this is the case (including a settlement of costs),45 but not in every case: If apart from the appellant’s declaration that the parties agreed to bear their own costs no agreement to that effect was submitted and the appellant withdraws the appeal, it remains that the appellant bears the costs of the entire proceedings.46 28 To facilitate the possibility of a settlement in opposition proceedings, until the expiry of the cooling-off period no decision on costs is issued and under certain circumstances even the opposition fees are refunded (s. mn. 35). Furthermore, Rule 20 (7)(c) CTMIR provides for the suspension of the opposition proceeding, where a suspension is appropriate under the circumstances, which is generally the case when the parties indicate settlement negotiations.47 26

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GC Case T-124/02 The Sunrider Corp. v OHIM; OHIM, Manual, Part C, Section 1, 5.5.2.1. OHIM Dec. of 23.7.2008 – R 184/2008-4 – OCULUSGEN v OCULUS. 39 OHIM, Manual, Part C, Section 1, 5.5.2.1: Note in this context also, that if the parties inform OHIM that they had reached an agreement on costs after the withdrawal/restriction, the already issued decision on costs will not be revised by OHIM. It is left to the parties to respect the agreement and not to ‘execute’ OHIM’s decision on costs (s. Art 86 CTMR). 40 OHIM, Manual, Part C, Section 1, 5.5.2.1. 41 In Austria settlement in writing are generally subject to so called Stamp Duty Tax (Rechtsgescha ¨ ftsgebu¨hr) of 1 % or even 2 % of the settled amounts. 42 S. OHIM Dec. of 7.3.2002 – R 088/2000-3 – PAUL SMITH v JOHN SMITH. 43 Also in the appeal proceeding or a proceeding with the GC; s. Rule 20 (5) CTMIR referring to Rule (3) and (4) CTMIR. 44 OHIM, Manual, Part C, Section 1, 5.5.2.1. 45 Schennen, in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 85 mn. 29. 46 OHIM Dec. of 20.9.2013 – R 2065/2011-4 – REDITUX. 47 However, not if this leads to an extension of time periods set out by the CTMR: OHIM Dec. of 18.4.2008 – R 1341/2007-6 – KOSMO v COSMONE. 38

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5. Information to bear own costs When (even only) one of the parties informs OHIM that this party accepts that each 29 party is bearing its own costs, OHIM has to refrain from deciding on costs, if this party actually wins the case.48 If however the losing party sends such information to OHIM, OHIM forwards this information to the other party, but the decision on costs is taken ex officio under normal rules.49

6. Translation costs (reference to Art. 119 (6) CTMR) A general exception to the a/m principle is set out in Art. 85 (1) CTMR by referring 30 to Art. 119 (6) CTMR, namely where an opponent or applicant for revocation or invalidity is required to file a translation of the relevant action at its own expense. As acc. Rule 94 (7) lit g CTMIR the losing party shall not be obliged to reimburse the 31 successful party for any costs, expenses and fees other than those referred to in Rule 94 CTMIR the explicit reference to Art. 119 (6) CTMR would not have been necessary: As translation costs are not mentioned in Rule 94 CTMIR those and any other translation costs are not subject to the reimbursement of costs.

IV. Starting of adversarial stage of proceedings The underlying principle is that the losing party (s. mn. 16 et seq.) shall bear the fees and costs of its own side and the fees and costs incurred by the other party (Art 85 (1) CTMR). Based on this principle the award of the apportionment of costs is issued irrespective if any costs incurred; the latter is subject to the fixing of the costs (s. mn. 39 et seq.). If an inter partes proceeding is considered not to be opened, e. g. the fees for an opposition are not paid in in due time, and still one party is requesting an award on costs, OHIM issues a decision that no award is granted.50 Consequently, the Opposition Division does not issue a cost decision in favour of one party, if the adversarial stage of the opposition proceedings has not yet started; acc. Rule 50 (1) CTMIR, this extends to the appeal proceedings.51 If before expiry of the cooling-off period the opposition proceedings are closed acc. Rule 18 (4) CTMIR no decision on costs is taken. Such closing can be based (i) on the reasons laid down in Rule 17 (2) or (4) CTMIR regarding the inadmissibility of the opposition, (ii) on the rejection of the trade mark in an ex officio re-opened proceeding regarding absolute grounds (which can also be the case after an opposition proceeding); (iii) on the rejection of the application based on a decision in a parallel proceeding; (iv) on the restriction by the applicant and withdrawal of the opposition by the opponent, (v) on the settlement of the parties, or (vi) on the withdrawal of the opposition for whatever reason. Therefore, the parties negotiating a settlement during the cooling-off period do not have to bear in mind the costs (s. mn. 26 et seq.). However, the opposition fees may have to be considered in such negotiations, esp. negotiations for a co-existence without 48

OHIM Dec. of 4.11.2009 – R 780/2009-4 – IXATIS v IXARTO. OHIM, Manual, Part C, Section 1, 5.5.2.2; s. OHIM Dec. of 16.6.2010 – R 387/2010-4 – GEKA v GELHA. 50 Schennen, in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung (4. edition), Art. 85 mn. 2, 32. 51 OHIM Dec. of 17.5.2011 – R 634/2011-4 – SWISSDENT v SWISSDENT. 49

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restrictions etc.: Acc. Rule 18 (5) CTMIR the opposition fees are ‘only’ refunded if before expiry of the cooling-off period the opposition proceedings are closed (i) following a withdrawal of the application or (ii) following a ‘full restriction’ of the application (Art. 43 CTMR), or (iii) in case of the latter – although not regarding all goods and services the opposition is subject to – leading to a withdrawal of the opposition.

V. Non-inter partes proceedings and third parties As Art. 85 CTMR addresses only inter partes proceedings, one party proceedings do not provide awards on costs, even if this one party is successful ‘against’ OHIM, e. g. overcoming an examiner’s decision to refuse registration of an application.52 37 Also third parties not being party of the proceedings are not subject to awards on costs, e. g. a third party who files observations under Art. 40 CTMR cannot obtain an award on costs even if these observations are successful. 38 Those parties have in any case to bear all and any of their own costs. 36

C. Decision on costs – fixing of costs I. General and currency While Art. 85 (1) to (5) CTMR lay down the apportionment of costs, Art. 85 (6) CTMR lays down the fixing of the costs. The fixing of costs has to be strictly distinguished from the apportionment of costs as described in mn. 10 et seq. For the fixing of costs the CTMR lays down own procedural rules including an own proceeding of review under certain circumstance (s. mn. 72 et seq.). Generally, the costs are fixed together with the decision on the apportionment of costs. 40 Pursuant to Art. 85 (6) first sentence CTMR OHIM fixes (ex officio) the amount of costs to be paid when those costs are limited to fees paid to OHIM and to representation costs. The latter are awarded at the level laid down in Rule 94 (7)(d) CTMIR (s. mn. 62 et seq.) and are awarded irrespective of whether they have been actually incurred (Rule 94 (3) last sentence CTMIR),53 even though the representative has to assure that the costs have been incurred (Rule 94 (3) second sentence CTMIR) – s. mn. 70. In practical terms, the award on fees paid to OHIM and the representation costs encompasses almost all proceedings since costs outside these categories – relating, for example, to travel and subsistence costs outside oral proceedings or the presentation of evidence in person – are not common in practice to incur. 41 Accordingly, OHIM generally issues the decision on (apportionment and) fixing of costs together with the decision on substance (s. however mn. 43 (no fixing of costs) and mn. 45 (request of fixing)). 42 The amount to be reimbursed is always fixed in EUR, regardless of the currency of the countries of the parties or in which currency the party had to bear or pay the costs, especially its representative.54 39

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II. No fixing of costs No costs are fixed in the decision on substance 43 – if the decision on the apportionment of costs (Art. 85 (1) to (5) CTMR) rules that each party bears its own costs; meaning that no party has a claim to the other party.55 – if acc. Rule 94 (7) lit. (g) CTMIR (s. for details mn. 56) the successful party56 – did not pay any fees to OHIM, – was not represented by a professional representative, – did not have the final liability on costs of witnesses and/or experts pursuant to Rule 59 (2), (3) or (4) CTMIR and/or – no oral hearing in terms of Rule 56 CTMIR took place. OHIM understands Art. 85 (6) first sentence CTMR as a right but not as an 44 obligation to fix the costs: If for the sole purposes of fixing the costs (complicated) legal question would have to be decided,57 or additional facts of the case would have to be investigated,58 OHIM refrains from an award of costs; should the winning party seek the reimbursement of the costs, it should file a separate request to the registry pursuant to Art. 85 (6), second sentence CTMR (s. mn. 45).

III. Request on fixing the costs In all cases where the costs have not been fixed together with the decision on the apportionment of costs, a member of the staff of the Opposition Division or Cancellation Division or the registry of BoA shall fix the amount of the costs to be reimbursed on request (Art 85 (6) second sentence CTMR). The request is admissible only within two months of the date on which the decision for which an application was made for the costs to be fixed became final (Art 85 (6) third sentence CTMR). After this time period the request is inadmissible. Acc. Rule 94 (3) CTMIR where the amount of the costs has not been fixed pursuant to Art. 85 (6) first sentence CTMR, the request for the fixing of costs shall be accompanied by a bill and supporting evidence. However, for the costs of representation (s. mn. 62), an assurance by the representative that the costs have been incurred shall be sufficient. For other costs, it shall be sufficient if their plausibility is established. The decision on fixing of costs following a request is issued by the registry of BoA or a member of the staff of the Opposition Division or Cancellation Division without hearing the other party. The decision on fixing of costs following a request – however, only the amount of costs – is exclusively subject to a review (s. mn. 72), but not to an appeal or actions before the Court of Justice (Art. 65 CTMR).59 Also a decision on the to be compensated costs issued on request can be enforced acc. Art. 86 CTMR.60 55

OHIM, Manual, Part C, Section 1, 5.5.4.4. In such cases OHIM sometimes fixes the costs at EUR zero: e. g. OHIM Dec. of 28.4.2011 – R 1553/ 2010-4 – mypixler v mypixx. 57 OHIM Dec. of 20.5.2010 – R 0963/2009-4 – HAMMER. 58 Regarding the possible status as professional representative: OHIM Dec. of 20.7.2010 – R 1050/2009-4 – SAVANNA v Savanna I. 59 S. GC Case T-10/06 Portela & Companhia, SA vs OHIM [2007] ECR II-00166. 60 Schennen, in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 85 mn. 87. 56

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IV. Fees and costs to be compensated 1. Fees to be compensated Pursuant to Rule 94 (6) CTMIR the fees to be borne by the losing party shall be limited to the fees incurred by the other party for (i) an opposition, (ii) an application for revocation or (iii) a declaration of invalidity of the Community trade mark and for (iv) an appeal. 52 For the sake of clarity: The fees for the CTM-application are not subject to compensation. This already due to logical reasons; if the applicant/holder is successful in the proceedings the trade mark remains respectively gets registered. 51

2. Costs to be compensated a) Historical development. Rule 94 (7) CTMIR was amended by Commission Regulation (EC) 1041/2005 and raised the maximum rates by EUR 50 each. Rule 94 (7)(a) CTMIR details travel and subsistence costs for a party who is not represented in a case where oral proceedings are held. Rule 94 (7)(b) CTMIR covers the travel expenses of representatives. Rule 94 (7)(c) CTMIR covers expenses which may be claimed under Rule 59 CTMIR by witnesses and experts, including travel and subsistence expenses and compensation for loss of earnings. Rule 94 (7)(d) CTMIR sets out costs of representation within the meaning of Art. 93 (1) CTMR. These range from EUR 300 in respect of acting for a party to opposition proceedings (Rule 94 (7)(d)(i) and (ii) CTMIR) to EUR 550 in respect of acting for a party before the Boards of Appeal (Rule 94 (7)(d)(v) and (vi) CTMIR). Each figure within Rule 94 (7)(d) CTMIR increases by EUR 400 where the parties have been summoned to oral proceedings under Rule 56 CTMIR. 54 It is clear that also these raised costs will not in any realistic sense cover the actual representation costs, which are likely to have been incurred during the course of the proceedings before OHIM. 53

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b) Costs, essential to the proceedings. Based on the principle set out by Art. 85 CTMR (s. nm. 16), pursuant to Rule 94 (7) CTMIR costs essential to the proceedings and actually incurred (s. slightly different wording of Art. 85 (1) CTMR and esp. regarding representation costs mn. 62) by the successful party shall be borne by the losing party.

c) Limits and caps of to be compensated costs. Rule 94 (7) lit. (g) CTMIR states that the losing party shall not be obliged to reimburse the successful party for any costs, expenses and fees other than those mentioned below (lit. (a) to (f)). 57 Furthermore, Rule 94 (7) CTMIR set out certain maximum rates on which an award of costs can be based, whereas this applies both to the opponent and the applicant; whenever the actual costs of the winning party are higher, those higher costs are not subject to the award of costs: 56

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aa) Party not represented by a (professional) representative (lit. a). Where the party is not represented by a (professional) representative (Art. 93 (1) CTMR), travel and subsistence expenses of one party for one person for the outward and return journey between the place of residence or the place of business and the place where oral proceedings (Art. 77 CTMR) are held pursuant to Rule 56 CTMIR, as follows: (i) the cost of the first-class rail-fare including usual transport supplements where the total 888

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distance by rail does not exceed 800 km; (ii) the cost of the tourist-class air-fare where the total distance by rail exceeds 800 km or the route includes a sea-crossing; (iii) subsistence expenses as laid down in Art. 13 of Annex VII to the Regulation 31/2014 laying down the Staff Regulations of Officials. Pursuant to Rules 94 (7) lit. (e) CTMIR where there are several applicants or 59 proprietors of the Community trade mark application or registration or where there are several opposing parties or applicants for revocation or declaration of invalidity who have filed the opposition or application for revocation or declaration of invalidity jointly, the losing party shall bear the costs (s. limitation mn. 56) for one such person only. bb) Travel expenses of a (professional) representative (lit. b). Travel expenses of a 60 (professional) representatives (Art. 93 (1) CTMR), at the rates provided for in point (a)(i) and (ii) (s. mn. 58). In case of more than one representative s. mn. 67. cc) Costs od witnesses and experts (lit. c). Travel expenses, subsistence expenses, 61 compensation for loss of earnings and fees to which witnesses and experts are entitled to be reimbursed pursuant to Rule 59 (2), (3) or (4) CTMIR, to the extent that final liability lies with a party to the proceedings pursuant to Rule 59 (5)(b) CTMIR. dd) Costs of (professional) representation (lit. d). Cost of (professional) representation (Art. 93 (1) CTMR) (i) of the opposing party in opposition proceedings: EUR 300; (ii) of the applicant in opposition proceedings: EUR 300; (iii) of the applicant in proceedings relating to revocation or invalidity of a Community trade mark: EUR 450; (iv) of the proprietor of the trade mark in proceedings relating to revocation or invalidity of a Community trade mark: EUR 450; (v) of the appellant in appeal proceedings: EUR 550; (vi) of the defendant in appeal proceedings: EUR 550. In case of more than one representative s. mn. 67. Where oral proceedings (Art 77 CTMR) have taken place to which the parties have been summoned pursuant to Rule 56 CTMIR, the amount referred to in Rule 94 (d)(i) to (vi) CTMIR (s. mn. 62) shall be incremented by EUR 400, but no other costs, expenses and fees can be claimed. Besides the costs or professional representation the winning party cannot additionally claim the own costs acc. Rule 94 (a) CTMIR.61 Background of the maximum rates for professional representation is the nonexistence of (legal) tariffs throughout the EU.62 If the winning party was represented at some stage of the proceedings by a professional representative (Art. 93 (1) CTMR), but is no longer represented at the time of taking the decision on costs, it is also entitled to an award of costs regardless of when in the proceedings professional representation ceased.63 If one professional representative represents two or more winning parties in the same proceedings the losing party shall bear the costs referred to above (s. mn. 56) only once.64

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ee) Representation by more than one representative (lit. f). Where the successful 67 party is represented by more than one representative, the losing party shall bear the costs referred to in points (b) (s. mn. 60) and (d) (s. mn. 62) for one such person only. ff) Representation costs for employees, even from another company with economic 68 connections,65 are not reimbursable.66 OHIM does not address such costs for employees Schennen, in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 85 mn. 77. Schennen, in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 85 mn. 73. 63 OHIM, Manual, Part C, Section 1, 5.6.1. 64 OHIM Dec. of 17.7.2006 – R 1086/2005-4 – a ` mati v MATY. 65 OHIM Dec. of 26.7.2007 – R 0069/2007-2 – Tiepolo v POLO. 66 OHIM Dec. of 13.12.2013 – R 0888/2013-4 – LIVE COLORFULLY v LIVE. 61 62

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in the award of costs.67 This also applies if the representing employee of a party is also a professional representative:68 This is because such costs of a party fall within the scope of its own costs in the sense of Rule 94 (6) CTMIR, and not within the costs essential to the proceedings and actually incurred by the party according to Rule 94 (7) CTMIR. Only if a professional representative acts independently from a (salaried) employment and merely in his function as a professional representative Rule 94 (7)(f) CTMIR can be applied. This also applies on professional representatives representing themselves – also regarding a partner of a law firm.69

V. Evidence on costs (sensu stricto) Where the amount of the costs is fixed pursuant to Art. 85 (6) first sentence CTMR (s. mn. 40), namely opposition, revocation, invalidity and/or appeal fee and costs of (professional) representation, no bill or proof whatsoever is needed:70 70 For the costs of representation referred to in Rule 94 (7)(d) CTMIR (s. mn. 62), an assurance by the representative that costs have been incurred shall be sufficient. Pursuant to Rule 94 (3) last sentence CTMIR, these amounts shall be awarded without any proof and irrespective of whether they actually incurred up to this amount.71 If a bill is presented, it suffices that it shows at least the reimbursable amount, and it does not matter whether it is addressed to the party to the proceedings, as submitting a bill equals an assurance.72 71 Where the amount of the costs has not been fixed by OHIM pursuant to Art. 85 (6) first sentence CTMR the request for the fixing of costs (mn. 45) has to be accompanied by a bill and supporting evidence (Rule 94 (3) CTMIR). However, it shall be sufficient if their plausibility is established (Rule 94 (3) third sentence CTMIR). Consequently, fullfledged proof is not needed.73 69

D. Review of decision on request on fixing of costs Regarding the request on fixing of the costs s. mn. 45 et seq. The amount determined in a decision following such request (Art. 85 (6) second sentence CTMR) may be reviewed by a decision of the Opposition Division or Cancellation Division or BoA on a request (Art. 85 (6) forth sentence CTMR). Subject to such review can only be the fixing of the amounts by a member of the staff of the Opposition Division or Cancellation Division or the registry of the BoA.74 74 The procedure for the review of the fixation of costs is not an appeal proceeding pursuant to Art. 85 (1) CTMR.75 72 73

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OHIM, Manual, Part C, Section 1, 5.6.1. GC Case T-240/11 L’Ore´al SA v OHIM available at www.curia.eu Õ search Case law; diss.op. OHIM Dec. of 4.3.2011 – R 1050/2009-4 – SAVANNA v Savanna II with the argument that professional representatives can also be employed and shall not be discriminated. 69 OHIM Dec. of 3.3.2006 – R 0018/2006-4 – Schweizer Rechtsanwa ¨ lte referring to GC Case T-79/99 Euro-Lex European Law Expertise GmbH v OHIM [1999] ECR II-03555. 70 OHIM, Manual, Part C, Section 1, 5.6.2. 71 OHIM Dec. of 12.9.2013 – R 0741/2013-5 – Zamek. 72 OHIM, Manual, Part C, Section 1, 5.6.3.2. 73 OHIM, Manual, Part C, Section 1, 5.6.3.2. 74 OHIM Dec. of 11.12.2012 – R 2154/2010-2 – EDEN SPA v SPA. 75 OHIM Dec. of 15.7.2013 – R 1772/2008-4 – European Citizen’s Band Federation (E.C.B.F. or ECBF) v EUROPEAN CITIZEN’S BAND FEDERATION (ECBF). 68

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Under Rule 94 (4) CTMIR such review can be requested within a period of one month following its notification. The request must be stating the reasons on which it is based. It shall not be deemed to be filed until the fee for reviewing has been paid. Art. 2 (30) CTMFR sets the ‘fee for the review of the determination of the procedural costs to be refunded ([…] Rule 94 (4) [CTMIR])’ at EUR 100. As a review of the fixed amount does not make sense if the entire award on costs, meaning the apportionment (and the fixing), could be subject to an appeal, the Opposition Division or the Cancellation Division generally waits until the apportionment of costs has become final – esp. because no appeal is filed within the two months before deciding on a request to review the fixed amount. The review is not admissible to dispute the decision on the apportionment of costs. To dispute the apportionment of costs in a decision by the Opposition Division or Cancellation Division an appeal to BoA has to be filed (see mn. 81). The reasons for a request for a review of the fixed amount are – that the fixed amount is not based on the decision on the apportionment of costs; e. g. calculation mistakes etc.; – incorrect amounts are fixed; e. g. costs not covered by Rule 94 CTMIR are granted, whereas costs for which a request for review may be made are costs other than the fees paid to OHIM and the representation costs;76 – supporting evidence of the amounts claimed are not/incorrectly taken into account; or – request on fixing the amount of costs is (incorrectly) dismissed as being too late.77 Rule 94 (5) CTMIR stipulates that the review-decision shall be reached without oral proceedings. However, the other party must be heard on the request for review.78 No decision on costs is to be taken with regard to the request for the review of the fixation of costs.79 Fees for a request to review are not reimbursed.80 The decision on the review by the Opposition Division or Cancellation Division can be subject to an appeal to BoA. In this context it has to be born in mind that a decision by BoA – also one on the apportionment of costs – cannot be appealed (Art 57 (1) CTMR), but may only be brought before the Courts (Art 63 CTMR).81 Consequently, also that no/a82 decision on the apportionment should have been issued cannot be subject to a review.

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E. Appeal against award of costs An award of costs, meaning the decision on the apportionment and on the fixing of 82 costs, generally forms part or the whole of a decision of OHIM or is a separate decision of OHIM. Where the decision contains obvious mistakes as regard the costs, the parties may ask for a corrigendum (Rule 53 CTMIR) or a revocation (Art. 80 CTMR), depending on the circumstance.83 76

OHIM Dec. of 11.12.2012 – R 2154/2010-2 – EDEN SPA v SPA. OHIM Dec. of 27.7.2006 – R 562/2003-4 – crosspack II. 78 OHIM Dec. of 15.7.2013 – R 1772/2008-4 – European Citizen’s Band Federation (E.C.B.F. or ECBF) v EUROPEAN CITIZEN’S BAND FEDERATION (ECBF). 79 OHIM Dec. of 15.7.2013 – R 1772/2008-4 – European Citizen’s Band Federation (E.C.B.F. or ECBF) v EUROPEAN CITIZEN’S BAND FEDERATION (ECBF). 80 Schennen, in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art 85 mn. 88. 81 OHIM Dec. of 3.2.2006 – R 0260/2004-1 – VICTORIA v VICTORIA II. 82 OHIM Dec. of 30.11.2005 – R 0227/2001-2 – CRANDIM II. 83 OHIM, Manual, Part A, 6.1. 77

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The appeal against (generally even parts84 – s. however mn. 85 below) of a decision on substance by the Opposition Division or Cancellation Division includes – also without an explicit request – an appeal against the award of costs (so called ‘nonindependent request for award of costs’).85 The award of costs forms an own part of the decision by OHIM. The award of costs by the Opposition Division or Cancellation Division may be subject to an independent appeal to BoA, regardless of the examination of the remaining decision.86 The appeal against the award of costs has to be filed in a manner meeting the requirements of Artt. 58, 60 CTMR: The notice of appeal must be filed in writing with OHIM within two months after the date of notification of the decision. The notice shall be deemed to have been filed only when the fee for appeal has been paid. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed. Forming an own part of the decision, the appealing party may even exempt the award of costs from the appeal87 (s. Rule 48 (1) lit c CTMIR). If only the award of costs is subject to the appeal, BoA only examines if the decision on costs complies with the decision on substance by the Opposition Devision or Cancellation Division and therefore if the decision on costs complies with Art. 85 (1) to (4) CTMR.88 If decisions by the Opposition Devision based on Art. 85 (2) or (4) CTMR can be subject to an appeal, as BoA cannot decide on the Opposition Devision’s discretion, remains unclear.89 BoA can correct mistakes in the award of costs of the appealed decision in every direction.90 E. g. when in the absence of any legal basis, the Opposition Division enlarges the scope of the opposition to goods allegedly claimed by the appellant, but not mentioned in the application’s list of goods and services, and therefore granting an incorrect award on costs, the BoA can also decide for the disadvantage of the appellant.91 When an appeal is raised BoA generally decides on the costs of the entire proceeding.92 However, acc. Rules 18 (4) and 50 (1) CTMIR no decision on costs is issued by BoA if the appealed decision is issued before the adversarial stage of the opposition procedure has started,93 e. g. dismissing the appeal during the cooling-off period (s. mn. 28). Therefore, when granting or dismissing the appeal BoA generally also rules on the costs acc. Art. 85 (1) CTMR, namely in case of a dismissed appeal that the appellant has to bear the costs of the entire procedure or in case of a successful appeal that the other side has to bear the costs of the entire procedure. If the appeal covers the entire decision, but in the appeal proceedings each party succeeds on some heads but fails on others, each party shall bear its own fees and costs in both instances.94 If the appellant appeals only parts of the decision (s. Rule 48 (1) lit c CTMIR), and 84

S. Rule 48 (1) lit c CTMIR. OHIM Dec. of 19.12.2008 – R 1539/2008-4 – VIVA LA VITA v VIVAVITAL. 86 GC Case T-419/07 Okalux GmbH v OHIM [2009] ECR II-02477. 87 GC Case T-413/11 Welte-Wenu GmbH v OHIM not yet published in the ECR, available at www.curia.eu Õ search Case law. 88 OHIM Dec. of 16.6.2010 – R 387/2010-4 – GEKA v GELHA. 89 Denying the admissibility of such appeal: Schennen, in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 85 mn. 60. 90 OHIM Dec. of 19.4.2011 – R 2235/2010-4 – ZYDAC v ZODAC. 91 OHIM Dec. of 2.12.2013 – R 0078/2013-4 – GALERIE TERMINUS v GALERIE. 92 OHIM Dec. of 14.1.2014 – R 0414/2013-4 – PAOLA v VILLA PAOLA. 93 OHIM Dec. of 17.5.2011 – R 0634/2011-4 – SWISSDENT v SWISSDENT. 94 OHIM Dec. of 4.12.2014 – R 2544/2013-2 – SLK v SLS. 85

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– the appeal is dismissed regarding this part, the award of costs of first instance is adopted by BoA and BoA adds the decision on costs of the appeal procedure, namely that the appellant has to bear the costs of the appeal procedure. – the appeal is granted regarding the appealed part, the award of costs of first instance is adopted by BoA and BoA adds the decision on costs of the appeal procedure, namely that the other party has to bear the costs of the appeal procedure. The reason and timing of the dismissal of the appeal is generally of no relevance for the decision on costs: If the appeal is dismissed, e. g. because a written statement setting out the grounds of appeal was not filed in due time (Art. 60 CTMR),95 BoA has to issue a decision on costs of the appeal proceedings in favour of the other party irrespectively if the other party has been involved in the appeal proceedings.96 However, even if the appeal fails, but the applicant did not file any observation in response to the statement of grounds and there has been no substantial procedural activity of the applicant’s part, pursuant to Art. 85 (1) CTMR, the BoA might deem it appropiate not to make a ruling on the appeal costs.97 If the appeal is deemed not to have been filed, because the fee for the appeal has not been paid in due time (Art. 60 CTMR) no decision on the costs of the appeal proceedings is issued: Given that no appeal is deemed to have been filed, there are no appeal proceedings and consequently, there is no need for a decision on costs.98 Where appellant succeeds on some and fails on other heads, Art. 85 (2) CTMR applies and BoA typically decides that each party bears its own costs of the appeal proceeding.99 The same applies to the costs of first instance, because based on the partly successful appeal both parties have to be considered as succeeding on some and failing on other heads regarding the procedure before the first instance of OHIM.100 When a case is remitted by BoA to the first instance, this means that the first decision on substance and/or on costs, which was appealed, has not become final, even as regards apportionment or fixing of costs.101 In such cases BoA decides on the costs of the appeal procedure and the Opposition Division/Cancellation Division has then to issue a new award on the entire procedure of the opposition procedure in first instance, as one single decision on the apportionment and on the fixing of costs must be taken for the opposition procedure of first instance as a whole.102 In such cases of remittal the award of costs by BoA is subject to Art. 85 (2) CTMR,103 so generally each party bears its own costs in the appeal; however, with regard to the appeal fee BoA may decide that this fee is reimbursed acc. Rule 51 (b) CTMIR in case the remittal is the consequence of a substantial procedural violation of the Opposition Division/Cancellation Division104 – this also mutatis mutandis without remittal in other cases of substantial procedural violation of the Opposition Division/Cancellation Division.105 As regards the costs of the opposition proceedings BoA generally states in the 95 OHIM Dec. of 5.12.2013 – R 1466/2013 -4 – BALANCION; OHIM Dec. of 6.3.2013 – R 2072/2012-4 – E v E; OHIM Dec. of 11.12.2014 – R 1963/2014-4 – SECVNDVM VITAE v VITAE. ~ejo v ART COLLECTION MAXIMO; 96 OHIM Dec. of 23.7.2008 – R 0395/2008-4 – MAXIMO Extra An diss.op. OHIM Dec. of 2.12.2014 – R 1478/2014-1 – MY SHOES v my SHOES. 97 OHIM Dec. of 2.12.2014 – R 517/2014-1 – OSCAR v osmotic. 98 OHIM Dec. of 20.6.2012 – R 0044/2012-1 – MIDO v NIDO. 99 OHIM Dec. of 11.12.2014 – R 2307/2013-4 – KREISICOUTURE v BABY CREYSI. 100 OHIM Dec. of 8.12.2014 – R 2188/2014-4 – SF STREET FIT v Sreet One. 101 S. OHIM, Manual, Part C, Section 1, 5.6.1. 102 OHIM, Manual, Part C, Section 1, 5.6.1; OHIM Dec. of 11.5.2005 – R 1003/2004-1 – KCC v GCC. 103 Diss.op. s Schennen, in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art 85 mn. 58, as he consideres the appeal to be successful. 104 S. OHIM Dec. of 11.10.2013 – R 1485/2013-4 – BELLA v BELLA. 105 OHIM Dec. of 24.1.2013 – R 0843/2012-1 – PetMedica v Animedica.

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decision remitting the case that these have to be fixed by the Opposition Division in its forthcoming decision.106 The decision of the Opposition Division can then again be subject to an appeal to BoA, not effecting the decision on costs of the first appeal proceedings.107 96 When the appeal is withdrawn and the appeal procedure is closed, the appellant has to bear the costs of the appeal procedure (Art. 85 (3) CTMR)108 and the decision of first instance becomes final,109 including the decision on costs.110 However, BoA may decide differently if reasons of equity so dictate, in accordance with Art. 85 (2) CTMR, e. g. when the parties to the withdrawn proceedings have cross-attacked each other and all procedure are closed based on an amicable settlement.111 Lately, BoA seems to take a less formal approach and takes into consideration if the appeal is withdrawn/considered inadmissible before any substantial procedural activity had taken place, in which case each party shall bear its own costs in the appeal proceedings.112 A withdrawal of the appeal does not lead to a reimbursement of the appeal fee, as BoA may acc. Rule 51 (b) CTMIR only decide that this fee is reimbursed in case a remittal of the case is the consequence of a substantial procedural violation of the Opposition Division/Cancellation Division.113 When the entire Opposition (or application for revocation or declaration of invalidity) is withdrawn, the appeal proceedings have become devoid of purpose and the withdrawing party has to bear the costs of both instances.114 97 When during the appeal proceedings the application of the trade mark is withdrawn, BoA closes the case and the applicant has to bear the costs of the entire procedure (Art. 85 (3) CTMR)115, as the decision on costs of the first instance has not become final:116 Art. 58 CTMR provides that an appeal before BoA has suspensive effect; it follows that a CTM application may be withdrawn at any moment until the decision on the appeal becomes final pursuant to Art. 43 (1) CTMR.117 Therefore, Art. 85 (3) CTMR applies even if the applicant was partly successful in first instance.118 The reasons for the withdrawal are generally of no relevance.119 98 Where the parties – also during the appeal proceedings120 – conclude a settlement on costs, OHIM shall take note of that agreement (Art 85 (5) CTMR) and generally BoA does not issue a decision on costs.121 If (both) parties inform BoA that they have agreed 106

OHIM, Manual, Part C, Section 1, 5.6.1. OHIM Dec. of 19.11.2013 – R 0991/2013-4 – LINBIT v LIB-IT. 108 OHIM Dec. of 5.12.2014 – R 2670/2014-4 – LEPTIN THE SCIENCE OF NUTRITION v LIPTON. 109 OHIM Dec. of 6.11.2013 – R 1349/2013-5 – EMULEX v Emule. 110 OHIM Dec. of 11.10.2013 – R 1485/2013-4 – BELLA v BELLA. 111 OHIM Dec. of 18.12.2007 – R 1054/2005-4 – AIRDUC. 112 OHIM Dec. of 2.12.2014 – R 2026/2014-5 – PlanVet v PANVET; OHIM Dec. of 2.12.2014 – R 1478/ 2014-1 – MY SHOES v my SHOES. 113 OHIM Dec. of 10.6.2013 – R 0834/2013-4 – Floxa v FLOXAL; OHIM Dec. of 11.10.2013 – R 1485/ 2013-4 – BELLA v BELLA. 114 OHIM Dec. of 26.8.2014 – R 1204/2014-4 – YOU&ME THE WHITE EXPERIENCE ALBARIN ˜O v You & Me. 115 OHIM Dec. of 4.12.2014 – R 1206/2013-1 – NANUCCI v NANU. 116 OHIM Dec. of 18.9.2003 – R 427/2002-2 – T-Flexitel v FLEXITEL; OHIM Dec. of 30.8.2013 – R 0060/2013-5 – Gi2 v Gi. 117 OHIM Dec. of 14.10.2013 – R 0938/2013-1 – COOLEXPERT v cool expert; OHIM Dec. of 28.11.2014 – R 0553/2014-2 – OUTLET CITY v LA CITY. 118 OHIM Dec. of 19.12.2008 – R 1539/2008-4 – VIVA LA VITA v VIVAVITAL. 119 OHIM Dec. of 11.7.2008 – R 1838/2007-4 – Micro-soft v Microsoft. 120 Also in the appeal proceeding or a proceeding with the GC; s. Rule 20 (5) CTMIR referring to Rule (3) and (4) CTMIR. 121 S. OHIM Dec. of 7.3.2002 – R 088/2000-3 – PAUL SMITH v JOHN SMITH; OHIM Dec. of 4.12.2014 – R 0613/2013-1 – TOMMY NUTTER. 107

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Enforcement of decisions fixing the amount of costs

Art. 85 CTMR

that one of the parties shall bear the costs of the entire proceedings, BoA takes note and issues a decision on the fixing of costs for both instances, whereas this decision is enforceable pursuant to Art. 86 CTMR.122 However, as a settlement of the appeal proceedings does not have to include a settlement on costs, both parties have to inform BoA that a settlement on costs has been reached. Although BoA tends to revert to the parties asking if a settlement of costs has been reached,123 this is not always the case: If apart from the appellant’s declaration that the parties agreed to bear their own costs no agreement to that effect was submitted and the appellant withdraws the appeal, it remains that the appellant bears the costs of the entire proceedings.124 A declaration of the appellant that an amicable settlement was reached is not sufficient to indicate an agreement on costs125; in the absence of an agreement on costs within the meaning of Art. 85 (5) CTMR, a decision on the costs of the appeal proceedings is required.126 This is even the case, when in a parallel case, involving the same opponent, a Suspension of the proceedings due to negotiations for a friendly settlement took place, as such cannot be considered in the present case, as the applicants are different.127 Art. 85 (4) CTMR applies in every other case, in which, for whatever other reason, 99 the appeal proceeding does not proceed to an appeal decision (if the parties have not reached another agreement and have not informed OHIM accordingly (Art 85 (5) CTMR, s. mn. 98)): – In cases where there are multiple proceedings against the identical goods and services of the same trade mark and one of those proceedings leads to the rejection of the application/invalidity of the trade mark, the appeal proceedings do not proceed to an appeal judgment. In such cases the determination of costs is acc. Art. 85 (4) CTMR at the discretion of BoA, meaning that generally each party has to bear its own costs.128 – In cases of multiple proceedings, which are partially directed against the same goods and services of the same contested trade mark, the decision which is taken first may, but does not have to, affect the other proceedings and therefore may but does not have to affect the award of costs of the appeal proceeding (s. mn. 24 for cases in first instance, applying to the appeal proceedings mutatis mutandis). In cases where the joint proceedings against a trade mark succeed in its entirety in 100 the appeal the applicant/trade mark holder shall pay the fees paid by each of the other parties, but representation costs only once (s. mn. 67). If the applicant/holder wins, its representation costs will be awarded once but each of the joint other parties is liable for them. A different apportionment of costs might be equitable: In cases of partial success or if equitable for other reasons, each party bears its own costs.

122

OHIM Dec. of 7.3.2014 – R 771/2013-1 – Ripptech v RIPTEC. Schennen, in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 85 mn. 29. 124 OHIM Dec. of 20.9.2013 – R 2065/2011-4 – REDITUX. 125 Diss. op. OHIM Dec. of 25.2.2014 – R 0754/2013-4 – MS Columbus v Colombus. 126 OHIM Dec. of 15.7.2013 – R 1832/2011-4 – meta | 360 v meta4. 127 OHIM Dec. 26.8.2014 – R 1204/2014-4 – YOU&ME THE WHITE EXPERIENCE ALBARIN ˜ O v You & Me. 128 OHIM Dec. of 27.4.2011 – R 0909/2010-4 – U.B.U USED BUT USEFUL v UHU. 123

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CTMR Art. 86

Community Trade Mark Regulation

Article 86 Enforcement of decisions fixing the amount of costs 1. Any final decision of the Office fixing the amount of costs shall be enforceable. 2. Enforcement shall be governed by the rules of civil procedure in force in the State in the territory of which it is carried out. The order for its enforcement shall be appended to the decision, without other formality than verification of the authenticity of the decision, by the national authority which the Government of each Member State shall designate for this purpose and shall make known to the Office and to the Court of Justice. 3. When these formalities have been completed on application by the party concerned, the latter may proceed to enforcement in accordance with the national law, by bringing the matter directly before the competent authority. 4. Enforcement may be suspended only by a decision of the Court of Justice. However, the courts of the country concerned shall have jurisdiction over complaints that enforcement is being carried out in an irregular manner. Content A. Overview. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Any final decision shall be enforceable . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Any final decision of OHIM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Directly enforceable . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. No declaration of enforceability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Order for enforcement . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Enforcement by competent national authority . . . . . . . . . . . . . . . . . . . . . . . 4. Suspension of enforcement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 8 8 10 10 12 18 19

A. Overview While Art. 85 CTMR and Rule 94 CTMIR provides a general framework for the award of costs in inter partes proceedings before OHIM, Art. 86 CTMR is addressing the enforcement of these awards of costs against the losing party. 2 Furthermore, Art. 86 CTMR applies on decisions where OHIM is fixing costs also outside inter partes proceedings, e. g. acc. Rule 59 (5) CTMIR on costs of taking evidence to be reimbursed to OHIM.1 3 The final decision of OHIM fixing the amount of costs shall be directly enforceable within the EU, meaning that further proceedings of (declaration of) enforceability acc. to national laws of the EU Member States, are not needed2 – however, regarding the order for enforcement s. mn. 12. 4 Due to the maximum rates for an award of costs in inter partes proceedings before OHIM that have to be compensated by the losing party (s. Rule 94 (7) CTMIR) the cost risk in proceedings with OHIM is rather low. The rather low amounts awarded may lead to practical difficulties to enforce the award on cost, which leads to the fact3 – even 1

Schennen, in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 86 mn. 1. See now Art. 36 of Regulation 1215/2012 of 12 December 2012 on jurisdiction and the recognition of judgments in civil and commercial matters (recast). 3 Clegg in Gielen/v. Bomhard, Concise – European Trade Mark and Design Law, Art 86 CTMR. 1 2

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Enforcement of decisions fixing the amount of costs

Art. 86 CTMR

if there are no reliable statistics4 – that the awards of costs are rarely enforced in practice simply because the amounts involved are so small that the time and costs involved in proceeding to enforcement are barely justifiable. This applies even more to enforcing the a/m final decisions outside the EU. To be enforceable the decision on costs must be final. The framework for awards of 5 costs set out in Art. 85 CTMR and Rule 94 CTMIR allows for the possibility that a decision fixing costs can form the subject of an appeal. It is only following the determination of any such appeal that the costs decision assumes finality and can then be enforced. The enforcement of an award of costs acc. Art. 86 CTMR is governed by the rules of 6 civil procedure in the EU Member State in which this is carried out. A party seeking enforcement acc. Art. 86 CTMR must present OHIM’s costs decision to the authority appointed in the relevant Member State with jurisdiction for enforcing these awards, and which has been identified as such by the Government of that Member State to OHIM and the CJ (Art. 86 (2) CTMR) – s. mn. 14. The authority will then attach its order for enforcement to OHIM’s decision and, acc. Art. 86 (3) CTMR, the party can then proceed to enforcement under the procedures of the relevant national law. Technically, the suspension of enforcement of a costs award may only be granted by – 7 to be read as – the GC. However, Art. 86 (4) second sentence CTMR grants jurisdiction to local courts in respect of complaints from a party that enforcement is not being properly carried out.

B. Any final decision shall be enforceable I. Any final decision of OHIM Art. 86 (1) CTMR provides that any final decision of OHIM fixing the amount of 8 costs shall in principle be enforceable. Consequently, the following final decisions may be enforced: – Decision on fixing of costs by the Opposition Division; – Decision on fixing of costs by the Cancellation Division; – Decision on fixing of costs by BoA; – Decision by the registry of BoA or a member of the staff of the Opposition Division or Cancellation Division on fixing of costs on request of a party acc. Art 85 (6) CTMR; – Decisions acc. Rule 59 (5) CTMIR on costs of taking evidence to be reimbursed to OHIM by the examiners, the Administration of Trade Marks and Legal Division, the Opposition Division the Cancellation Division or BoA. As ‘only’ the a/m decisions of the OHIM shall be enforceable, Art. 86 CTMR does 9 not cover e. g. the enforcement of settlements on costs (s. Art 85 mn. 26 et seq.).

4 S. Max Planck Institute for Intellectual Property and Competition Law Munich, Study on the Overall Functioning of the European Trade Mark System, 193; (http://www.ip.mpg.de/files/pdf2/mpi_final_report_ with_synopsis.pdf).

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CTMR Art. 86

Community Trade Mark Regulation

II. Directly enforceable 1. No declaration of enforceability 10

Art. 86 CTMR follows the wording of Artt. 280, 299 TFEU5 that declares the judgments of the Court of Justice of the European Union and acts of the Council, the Commission or the European Central Bank which impose a pecuniary obligation on persons other than States, as enforceable. Consequently a proceeding on the declaration of the enforceability etc. is not needed.

2. Order for enforcement Enforcement of a/m decisions by OHIM shall be governed by the rules of civil procedure in force in the State in the territory of which it is carried out. The order for its enforcement shall be appended to the decision, without other formality than verification of the authenticity of the decision, by the national authority which the government of each Member State shall designate for this purpose and shall make known to the Commission and to the CJ (Art 86 (2) CTMR). 13 The national authority may not examine any other dimension of the decision but the verification of the authenticity. Consequently, the national authority must not rule on the correctness of the decision by OHIM etc. That the decision has become final may be evidenced by submitting appropriate extracts from OHIM’s databases or individual confirmation by OHIM.6 14 Not all Member States appear to have designated the competent authority for making the enforcement order:7 Only the following Member States seem to have designated a competent authority:8 Austria (‘Bezirksgerichte’), Belgium (‘courts of first instance’), Denmark (‘Patentdirektoratet’), Estonia (‘Patent Office’), France (‘l’Institut national de la proprie´te´ industrielle’), Germany (‘Bundespatentgericht’), Hungary (‘Ko¨zponti Keru¨leti Bı´ro´sa´g – Central District Courts’), Ireland (‘The High Court’), Latvia (‘Latvijas Republikas Patentu Valde – Patent Office’), The Netherlands (‘Arrondissementsrechtbanken – ´ rad Priemyselne´ho Vlastnı´ctva – Patent Office’), Spain All the District Courts’, Slovakia ‘U (‘La Secretarı´a General Te´cnica de Ministerio de Justicia – Ministry of Justice’) and the UK (‘Secretary of State’). 15 The Max Planck Institute9 rightfully suggests that the Commission should insist that all Member States designate the responsible authority and that it would seem appropriate that the Member States must designate a single authority; furthermore, all the details of communicating with this authority should be made publicly easy available. 12

5

Treaty on the Functioning of the European Union. OHIM, Manual, Part A, 6.3.1. S. Max Planck Institute for Intellectual Property and Competition Law Munich, Study on the Overall Functioning of the European Trade Mark System, 194; (http://www.ip.mpg.de/files/pdf2/mpi_final_report_ with_synopsis.pdf). 8 S. Information Brochure of OHIM, National Law Relating to the Community Trade Mark and the Community Design (3. edition), 174 et seq. (http://oami.europa.eu/en/office/diff/pdf/National_law.pdf); see also OHIM, Manual, Part A, 6.3.2. 9 Max Planck Institute for Intellectual Property and Competition Law Munich, Study on the Overall Functioning of the European Trade Mark System, 194 (http://www.ip.mpg.de/files/pdf2/mpi_final_report_ with_synopsis.pdf). 6 7

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Register of Community trade marks

Art. 87 CTMR

As long as no national authority is designated, Art. 95 (5) CTMR might apply 16 mutatis mutandis:10 Competence for an order for enforcement may lie with the national authority generally competent for orders for enforcement. Obtaining an enforcement order in a Member State will normally require a transla- 17 tion of the decision fixing the costs into the language of the respective Member State. However, OHIM only issues the decision in the language of the proceedings. As OHIM has the best resources to translate its own decisions, it would be a great service, if OHIM would translate decisions by reasoned request also into other languages.

3. Enforcement by competent national authority When these formalities have been completed on application by the party concerned, 18 the latter may proceed to enforcement in accordance with the national law, by bringing the matter directly before the competent authority (Art 86 (3) CTMR).

4. Suspension of enforcement Enforcement may be suspended only by a decision of the CJ (Art. 86 (4) CTMR, 19 however, to be read as decision of the GC).11 However, acc. Art. 86 (4) second sentence CTMR the national courts shall have jurisdic- 20 tion over complaints that enforcement is being carried out in an irregular manner.

SECTION 3 Information which may be made available to the public and of the authorities of the Member States Article 87 Register of Community trade marks The Office shall keep a register to be known as the Register of Community trade marks, which shall contain those particulars the registration or inclusion of which is provided for by this Regulation or by the Implementing Regulation. The Register shall be open to public inspection. Content I. II. III. IV. V.

General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 Entries in the Register . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 Requesting changes of name or address . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7 Correction of mistakes and errors . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 CTM-ONLINE. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

I. General Art. 87 introduces the CTM Register. The provision is supplemented by Rules 84 and 1 87 CTMIR as well as by several other provisions in the CTMR and CTMIR that provide 10 11

Schennen, in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 86 mn. 3. Schennen, in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, 4th edition, Art. 86 mn. 13.

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CTMR Art. 87

Community Trade Mark Regulation

for the recordal of specific facts in the CTM Register. The CTM Register contains information pertaining to all registered CTMs. Before registration, all information is recorded in the files kept by the Office concerning the CTM application. The Register enables the public to verify the extent and nature of the rights conferred by any CTM. 2 To take account of any change, for instance a transfer of ownership, the granting of a license or a change of name or address, the Register is constantly updated. The Administration of Trade Marks and Designs and Legal Division is responsible for managing the Register and keeping it up to date (Art. 133 CTMR). Any change in the Register must be notified to the proprietor of the respective trade mark (Rule 84 (5) CTMIR). 3 The Register is publicly available for inspection, subject to a written request and the payment of a fee. The fee is either EUR 10 for an uncertified extract from the Register (Art 2 (26)(a) CTMFR) or EUR 30 for a certified extract (Art 2 (26)(b) CTMFR).

II. Entries in the Register According to Rule 84 (2) CTMIR the CTM Register must contain the following entries: – the filing date; – the file number; – the date of publication; – the name and address of the applicant; – the name and business address of the representative or the association of representatives; – the reproduction of the mark, including an indication of the colour(s) and a description of the mark, where applicable; – the list of goods and services; – particulars of claims of priority; – particulars of claims of exhibition priority; – particulars of claims of seniority; – a statement that the mark has become distinctive in consequence of the use which has been made of it; – a declaration by the applicant disclaiming any exclusive right to some element of the mark; – an indication that the mark is a collective mark; – the language in which the application was filed and the second language which the applicant has indicated in his application; – the date of registration of the trade mark in the Register; – a statement that the application results from a transformation of an international registration designating the EU, including the date of the international registration or the date on which the territorial extension to the EU was recorded and, where applicable, the date of priority of the international registration. 5 According to Rule 84 (3) CTMIR the following changes to registered CTMs must be recorded in the CTM Register, each accompanied by the date on which the change was recorded: – changes in the name, address or nationality of the proprietor of a CTM or in the State in which he is domiciled or has his seat or establishment; – changes in the name or business address of the representative; – when a new representative is appointed, the name and business address of that representative; 4

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Register of Community trade marks

Art. 87 CTMR

– alterations of the mark pursuant to Art. 48 CTMR and corrections of mistakes and errors; – notice of amendments to the regulations governing the use of the collective mark; – particulars of claims of seniority of an earlier registered trade mark; – total or partial transfers; – the creation or transfer of a right in rem and the nature of the right in rem; – levy of execution and insolvency proceedings; – the grant or transfer of a license and, where applicable, the type of license; – renewal of the registration, the date from which it takes effect and any restrictions pursuant to Art. 47 (4) CTMR; – a record of the determination of the expiry of the registration; – a declaration of surrender by the proprietor of the trade mark; – the date of submission of an application pursuant to Art 56CTMR or of the filing of a counterclaim pursuant to Art 100 (4) CTMR for revocation or for a declaration of invalidity; – the date and content of the decision on the application or counterclaim pursuant to Article 57 (6) or the third sentence of Art 100 (6) CTMR; – a record of the receipt of a request for conversion pursuant to Art 113 (2) CTMR; – the cancellation of the representative; – the cancellation of the seniority of a national mark; – the modification or cancellation from the Register of a right in rem, levy of execution, insolvency proceedings or license; – the replacement of the CTM by an IR; – the date and number of an IR based on the CTM application which has been registered as a CTM; – the date and number of an IR based on the CTM; – the division of a registration; – the revocation of a decision or an entry in the Register, where the revocation concerns a decision or entry which has been published. The President of the Office may determine that items other than those referred to 6 above shall be entered in the Register (Rule 84 (4) CTMIR).

III. Requesting changes of name or address It is possible to alter the name, address, nationality or State of incorporation of the 7 proprietor of a registered CTM or its representative. The change may be the result of changed circumstances or of an error made when filing. Pursuant to Rule 26 CTMIR, the name, and address, nationality or State of 8 incorporation of the proprietor may be amended freely, provided that the change is not the consequence of a transfer. A change of the proprietor’s name within the sense of Rule 26 (1) CTMIR is a change that does not affect the identity of the proprietor, whereas a transfer is a change from one proprietor to another. If the change of the name or address is the consequence of a whole or partial transfer of ownership of the trade mark, the rules set out in Art. 17 CDR and its implementing provisions apply. Where the Community trade mark includes the name and address of the proprietor, the proprietor may request an alteration of the CTM, provided the alteration does not substantially affect the identity of the trade mark as originally registered (Art. 48 CDR). Likewise, a change of a representative’s name within the sense of Rule 26 (6) CTMIR 9 is limited to a change which does not affect the identity of the appointed representaGabriela Staber

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CTMR Art. 87

Community Trade Mark Regulation

tive, for example, where the name changes as a result of marriage. Rule 26 (6) CTMIR also applies where the name of an association of representatives changes. Such a change of name has to be distinguished from the substitution of one representative by another, which is subject to the rules governing appointment of representatives. 10 To record a change of name, address, nationality or State of incorporation, the proprietor or its representative must submit an application to the Office. The application must be made in any of the five languages of the Office. The application must contain the CTM number as well as the name and address of the proprietor or of the representative, both as recorded in the file and as amended. Normally no proof or evidence of the change is necessary. However, in the event of doubt, the examiner may ask for proof such as a certificate from a trade register. The application to record the change of name or address is not subject to a fee. The alteration will be entered in the Register and published.1

IV. Correction of mistakes and errors Mistakes or errors attributable to the Office shall be corrected by the Office of its own motion or at the request of the proprietor. Where the proprietor makes such a request, the formal requirements of Rule 26 apply. The request is not subject to payment of a fee (Rule 27 CTMIR). 12 If the error or mistake results from a procedural error attributable to the Office, the entry may be cancelled pursuant to Art. 80 CDR. Procedural errors attributable to the Office are entries that have not been requested by any of the parties involved, such as the renewal of the trade marks without payment of the renewal fee. Similarly, where a CTM is registered although an opposition is still pending, this would be a procedural error attributable to the Office.2 A cancellation of the entry pursuant to Art. 80 CDR is only possible within six months from the date on which the entry was made in the Register. According to the proposed new Regulation this time limit will be extended to twelve months.3 11

V. CTM-ONLINE 13

CTM-ONLINE provides access to the Office’s electronic database (Rule 87 CTMIR). The service is available to all users free of charge and accessible via the Office’s website. It provides ready access to search CTM applications and registrations. It is updated on a daily basis and corresponds to the entries in the Register, although it does not include all of the particulars that the Register has to contain pursuant to Rule 84 CTMIR. In order to obtain this information, an extract from the Register must be requested, which is subject to payment of a fee. On the other hand, CTM-ONLINE contains information that is not included in the Register, such as information on unpublished CTM applications. It also provides information on opposition or cancellation proceedings as well as on proceedings before the Court. 1 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E: Register Operations, Section 1: Changes in a Registration. 2 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art 80, mn 8 et seq. 3 Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark of 27 March 2013, COM (2013) 161 final.

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Inspection of files

Art. 88 CTMR

Article 88 Inspection of files 1. The files relating to Community trade mark applications which have not yet been published shall not be made available for inspection without the consent of the applicant. 2. Any person who can prove that the applicant for a Community trade mark has stated that after the trade mark has been registered he will invoke the rights under it against him may obtain inspection of the files prior to the publication of that application and without the consent of the applicant. 3. Subsequent to the publication of the Community trade mark application, the files relating to such application and the resulting trade mark may be inspected on request. 4. However, where the files are inspected pursuant to paragraphs 2 or 3, certain documents in the file may be withheld from inspection in accordance with the provisions of the Implementing Regulation. Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Content of the files. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. CTM applications and registered CTMs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. IRs designating the EU . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Ceased applications and registrations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Notes and Guidelines . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Keeping of files . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Restriction of access to the files . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Unpublished applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) General remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Consent of the CTM applicant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Statement that CTM rights will be invoked . . . . . . . . . . . . . . . . . . . . . . . 2. Excluded documents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Documents relating to exclusion or objection. . . . . . . . . . . . . . . . . . . . . b) Draft decisions and opinions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Confidential documents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . aa) Special interest in the confidentiality. . . . . . . . . . . . . . . . . . . . . . . . . . . bb) Overriding legitimate interests . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . cc) Inter partes proceedings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Documents relating to settlement negotiations. . . . . . . . . . . . . . . . . . . . V. Inspection of files . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Online access to files. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Application for inspection of files . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Contents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Language . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . aa) CTM applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . bb) CTM registrations. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Means of inspection. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Communication of information contained in a file . . . . . . . . . . . . . . b) Copies of file documents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Inspection on the Office premises. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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CTMR Art. 88

Community Trade Mark Regulation

I. General 1

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Art. 88 CTMR sets out under which conditions the files of the Office are open to inspection by the public. It is supplemented by Rules 88–91 CTMIR as well as The Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Register Operations, Section 5: Inspection of Files. While Art. 88 CTMR governs the inspection of files by applicants and proprietors of CTMs and third parties, the inspection of files by courts or authorities of the Member States is regulated by Art. 90 CTMR. As a general rule, the Register and the files of the Office relating to CTM applications, registered CTMs and IRs designating the EU are open to inspection by the public as from publication. Before publication, inspection is possible only in exceptional cases. Once an application has been published, the files of the Office may be accessed via CTM-ONLINE free of charge. Certified copies of CTM applications and registration certificates can be automatically generated and downloaded via a direct link from CTMONLINE, which is also free of charge. Applications for the inspection of files may be filed electronically via MYPAGE or submitted by post or facsimile and are subject to payment of a fee. Where the quantity of the information requested permits, it is also possible to ask, subject to payment of a fee, for the communication of information contained in the files rather than the actual documents. Following the implementation of online access to the files of the Office, there has been a considerable reduction in the volume of applications for inspection of files on the Office premises or in the form of the provision of uncertified copies. This is because online access is provided free of charge, while the other means of inspection are subject to payment of a fee.1 The Administration of Trade Marks and Designs and Legal Division is responsible for examining and dealing with applications for inspection of files (Art. 133 CTMR).

II. Content of the files 1. CTM applications and registered CTMs The files relating to a CTM application consist of all correspondence between the applicant and the Office and all documents established during the examination, as well as any correspondence concerning the ensuing CTM. The file does not include search reports provided by national Offices. Documents relating to any subsequent proceedings before the Office concerning the CTM application, such as opposition or appeal proceedings, also form part of the files. 8 Once a CTM is registered, the file contains, in addition to the application documents, all correspondence and documents relating to any subsequent proceedings, e. g. licenses, revocation, etc. 7

2. IRs designating the EU 9

An IR designating the EU has the same effect as an application for a CTM from the date of its registration pursuant to Art. 3 (4) of the Protocol or from the date of the 1

Schennen in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art 88, mn 40.

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Inspection of files

Art. 88 CTMR

subsequent designation of the EU pursuant to Art. 3ter (2) of the Protocol. It is administered by the International Bureau of WIPO. The files kept by the Office relating to IRs designating the EU may be inspected on request as from the date of publication referred to in Art. 152 (1) CTMR. The rules regarding exclusion of certain parts of the file from inspection in Rule 88 CTMIR apply (see below mn. 21 et seq.).2

3. Ceased applications and registrations Even where a CTM application is no longer pending or a CTM registration ceases to 10 have effect, inspection of the respective files remains possible as long as the files are kept (see below mn. 12 et seq.).3

4. Notes and Guidelines Notes and Guidelines of the Office relating to general procedures and treatment of 11 cases do not form part of the files. The same is true for measures and instructions concerning the allocation of duties.4

III. Keeping of files Rule 91 CTMIR governs the keeping of files. Generally the files are kept electro- 12 nically. Where files are kept electronically, they are kept without time limitation (Rule 91 (2) CTMIR).The original documents filed by the parties which are scanned by the Office and form the basis of the electronic files are disposed of after a period of three years following their reception by the Office. The colour representation of a trade mark is kept without time limitation.5 This is necessary to comply with the Libertel judgment of the CJ, according to which the graphic representation of a trade mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.6 Where and to the extent that files or parts of the files are kept in any other form than 13 electronically, documents or items of evidence constituting part of such files are kept for at least five years from the end of the year in which the application ceases to be pending or the registration ceases to have effect. An application ceases to be pending when it is rejected, or when the application has been withdrawn or is deemed to be withdrawn. A CTM registration ceases to have effect when it expires or is surrendered, declared invalid or revoked (Rule 91 (3) CTMIR).

2 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 3.2.3. 3 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 3.2. 4 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 4.1.2. 5 Decision No EX-05-4 of the President of the Office of 10 October 2005 concerning the keeping of files. 6 Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-3793, para 29.

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CTMR Art. 88

Community Trade Mark Regulation

IV. Restriction of access to the files 1. Unpublished applications a) General remarks. The files relating to CTM applications are available for inspection once the application has been published in the Community Trade Marks Bulletin (see below Art. 89 mn. 3). If particulars of an application are made available via CTMONLINE or otherwise before publication (as is the common practice of the Office), this does not constitute publication of the application within the meaning of Art. 39 CTMR. 15 Before the publication of the application, inspection of the files is restricted. The applicant always has access to the files relating to its own CTM application. This also applies where the application does not fulfil the minimum requirements for the attribution of a filing date or where the CTM application has been rejected or withdrawn.7 16 Third parties may inspect the files before publication only if the CTM applicant has consented (Art. 88 (1) CTMR) or if the applicant for inspection can prove that the CTM applicant has stated that it will invoke the rights under the CTM, once registered, against the applicant for inspection. (Art. 88 (2) CTMR) 14

b) Consent of the CTM applicant. The CTM applicant’s consent must be provided in the form of a written statement in which it consents to the inspection of the particular files (Rule 89 (2) CTMIR). Consent may be limited to inspection of certain parts of the file, such as the application, etc., in which case the application for inspection of files may not exceed the scope of the consent. 18 Where the applicant for inspection of the files fails to submit a written statement from the CTM applicant consenting to the inspection of the files, the applicant for inspection will be notified and given two months from the date of notification to remedy the deficiency. If, after expiry of the time limit, no consent has been submitted, the Office will refuse the application for inspection of the files. Both the applicant for inspection and the CTM applicant will be informed of the decision. The applicant for inspection may appeal the decision (Artt. 58 and 59 CTMR).8 17

c) Statement that CTM rights will be invoked. The other option to obtain access to the files of an unpublished application is to prove that the CTM applicant will invoke the rights under the CTM, once registered, against the applicant for inspection (Rule 89 (2) CTMIR). In order to prove this allegation, the applicant for inspection must submit substantiated evidence in the form of documents, e. g. statements by the CTM applicant, business correspondence, etc. Filing an opposition based on a CTM application against a national mark constitutes a statement that the CTM will be invoked. However, mere assumptions on the part of the applicant for inspection will not constitute sufficient proof. 20 Once the Office has received the documents it will examine whether the proof is sufficient. If so, the Office will send the application for inspection and the supporting documents to the CTM applicant and invite it to comment within two months. The CTM applicant may either consent to the inspection, in which case it will be granted, or contest it. If the CTM applicant contests the inspection, the Office will send the comments to the applicant for inspection. Any further statement by the applicant for inspection will be sent to the CTM applicant and vice versa. The Office will take into account all 19

7 OHIM, The Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 3.2.1. 8 OHIM, The Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 5.10.1.

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Art. 88 CTMR

submissions made on time by the parties and decide accordingly. The Office’s decision will be notified to both the applicant for inspection of the files and the CTM applicant. It may be appealed by the adversely affected party (Artt. 58 and 59 CTMR).9

2. Excluded documents Certain documents that are part of the file are excluded from public inspection. These 21 are documents relating to the exclusion of or objection to Office staff, draft decisions and opinions, parts of the file that the party concerned wishes to keep confidential (Rule 88 CTMIR), and documents relating to settlement negotiations.10 a) Documents relating to exclusion or objection. According to Art. 137 CTMR 22 examiners, members of the divisions of the Office and members of the BoAs must not take part in the proceedings under certain conditions, e. g. if they have a personal interest in the proceedings or have previously been involved as a representative of a party of the proceedings. In such a case, or where they are suspected of partiality, they may be objected by any party to the proceedings. The exception in Rule 88 lit a CTMIR relates to documents in which an examiner states 23 that he considers himself excluded from participating in the case, as well as documents in which an examiner makes observations on an objection raised by a party.11 These documents are excluded, because they typically include private matters of the examiner concerned. Even the CTM applicant or proprietor themselves may not inspect these documents.12 The exception does not relate to letters in which a party to the proceedings raises, 24 either separately or together with other statements, an objection based on Art. 137 CTMR, or to the decision that is taken on the objection pursuant to Art. 137 (4) CTMR. These documents are open to inspection.13 b) Draft decisions and opinions. The exception in Rule 88 lit b CTMIR relates to 25 draft decisions and opinions as well as all other internal documents such as reports and notes drafted by an examiner that contain considerations or suggestions for dealing with or deciding on a case, or annotations containing general or specific instructions on dealing with certain cases.14 Where a collective decision is taken by the Office, e. g. a decision of the BoA, the exception extends to the voting of that body as well as to written comments on the drafts of other members of the body.15 Even the CTM applicant or proprietor themselves may not inspect these documents.16

9 OHIM, The Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 5.10.2. 10 OHIM, The Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 4.1. 11 OHIM, The Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 4.1.1. 12 OHIM, The Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 4.2. 13 OHIM, The Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 4.1.1. 14 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 4.1.2. 15 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art 88, mn 71. 16 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 4.2.

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CTMR Art. 88

Community Trade Mark Regulation

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The exception does not relate to documents which are notified to a party to the proceedings, such as communications, notices or final decisions by the Office in relation to a particular case.17

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c) Confidential documents. The exception in Rule 88 lit c CTMIR concerns documents in the file in relation to which the party who submitted them invoked a special interest in keeping them confidential. A third party may obtain access to such documents if it can demonstrate an overriding legitimate interest in inspecting the document.

aa) Special interest in the confidentiality. The special interest in the confidentiality of a document must be invoked when the document is submitted. It is not possible to request confidentiality for a document at a later stage.18 This is a recent change in the practice of the Office. Under the 1998 version of the Manual it was still possible to invoke confidentiality of a document after the document had been submitted to the Office.19 29 If a special interest in keeping a document confidential is invoked, the Office must check whether that special interest is sufficiently demonstrated. A party only has a special interest in keeping a document confidential if the document originates from that party. In addition, the special interest must be due to the confidential nature of the document or its status as a trade or business secret.20 For example, the Office has accepted a special interest with respect to documents that had been furnished to proof the transfer of a trade mark, because the documents contained information on the financial relations between the parties.21 Similarly, the Office has found a special interest with respect to invoices that contained personal data of customers.22 30 Where information is publicly available elsewhere, e. g. on the Internet, a party cannot request that a document containing that information is kept confidential.23 Likewise, a party that submits sales figures or similar information to establish genuine use of a trade mark cannot invoke a special interest to keep that information confidential. This is because genuine use requires that a trade mark is used publicly and outwardly and therefore documents furnished as proof of genuine use of a trade mark typically are not considered a business secret. However, such documents may sometimes include confidential parts, such as information on license fees in license agreements.24 If the Office concludes that the requirements for keeping documents confidential are not met, it will communicate with the person who filed the documents and take a decision.25 31 The applicant may also submit evidence in a form that avoids revealing parts of the document or information which the applicant considers confidential, as long as the parts of the document submitted contain the required information. For example, where contracts 28

17 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 4.1.2. 18 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 4.1.3. 19 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art 88, mn 55. 20 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 4.1.3. 21 Decision of the Fourth BoA of 13 September 2010 – R 357/2010/4 – CARBORUNDUM (para 16). 22 Decision of the Fourth BoA of 7 November 2011 – R 68/2010-4 – SANIVITA/SENIVITA (para 35). 23 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art 88, mn 51, citing EPO T 2254/08 of 11 February 2010. 24 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art 88, mn 52. 25 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E, Section 5, 4.1.3.

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Art. 88 CTMR

or other documents are submitted as evidence for a transfer or license, certain information may be blacked out before being submitted to the Office or certain pages may be omitted.26 bb) Overriding legitimate interests. Access to documents which the Office has 32 accepted as being confidential and, thus, excluded from inspection, may be granted to a person who demonstrates an overriding legitimate interest in inspecting the document. If the file contains such documents, the Office will inform the applicant for inspec- 33 tion about the existence and nature of such documents within the files. The applicant for inspection may then decide whether or not it wants to file a request invoking an overriding legitimate interest. Before rejecting a request, the Office must give the party requesting inspection the 34 opportunity to present its observations. The request, as well as any observations, has to be sent to the party concerned, who has a right to be heard, before access to documents is granted. The Office must take a decision on whether to grant access to such documents. Such a decision will be subject to appeal by the adversely affected party (Artt. 58 and 59 CTMR).27 cc) Inter partes proceedings. In inter partes proceedings where the other party 35 concerned has shown a special interest in keeping its documents confidential vis-a`-vis third parties, it will be informed that the documents cannot be kept confidential with respect to the other party to the proceedings and it will be invited to either disclose the documents or withdraw them from the proceedings. If it confirms the confidentiality, the documents will not be sent to the other party and will not be taken into account by the Office in the decision. If on the other hand, it wants the documents to be taken into account but not available for third parties, the documents can be forwarded to the other party to the proceedings, but will not be available for inspection by third parties.28 This procedure ensures that the Office does not base its decision on documentary evidence which the other party has had no opportunity to comment on. In opposition proceedings the Office will only follow this procedure if it receives 36 documents with a request that they be kept confidential inter partes. If the Office receives a request that does not specify if the documents should be kept confidential inter partes or vis-a`-vis third parties, it will assume that they should only be kept confidential vis-a`-vis third parties and forward them to the other party.29 d) Documents relating to settlement negotiations. All documents relating to the 37 invitation of the Office to find a friendly settlement are not open to inspection. This does not apply to documents that have an immediate impact on the trade mark, such as limitations, transfers etc., and have been declared to the Office. These documents are not exempted from inspection.30 Where the parties make use of the mediation services offered by the Office in 38 accordance with Decision No 2011–1 of the Presidium of the BoA of 14 April 2011 on 26 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the (Trade Marks and Designs), Part E, Section 5, 4.1.3. 27 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the (Trade Marks and Designs), Part E, Section 5, 4.1.3. 28 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the (Trade Marks and Designs), Part E, Section 5, 4.2. 29 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the (Trade Marks and Designs), Part C: Opposition, Section 1: Procedural Matters, 4.4.3. 30 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the (Trade Marks and Designs), Part E, Section 5, 4.1.

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CTMR Art. 88

Community Trade Mark Regulation

the amicable settlement of disputes, none of the correspondence relating to that mediation is part of the file.31

V. Inspection of files 1. Online access to files Once the CTM application has been published, the files may be accessed free of charge via the ‘Online access to files’ tool through the Office’s website. 40 Certified copies of the CTM application or CTM registration certificate can be automatically generated and downloaded via a direct link from CTM-ONLINE. The document contains a unique identification code, which enables authorities that receive the document to verify the original document online via the ‘Verify certified copies’ link under the ‘Database’ section of the OHIM website. Certified copies that are automatically generated are not subject to payment of a fee.32 41 The certified copy of the CTM application or registration certificate does not reflect any subsequent transfers, surrenders, partial surrenders or other acts affecting the trade mark’s scope of protection. It only reflects the data on the date of application or registration. Up-to-date information is available from the electronic database or by requesting a certified extract of the Register.33 39

2. Application for inspection of files An application for inspection of files may be filed electronically or by facsimile or post (Rule 79, 80 and 82 CTMIR). Electronic applications are filed through MYPAGE by filling out and submitting the appropriate form.34 Alternatively, applications may be submitted as a signed original by facsimile or post (Rule 79 and 80 CTMIR). The Office provides a form that is available in all languages of the Office on the Office’s website. Use of the form is optional but recommended in order to ensure that the application complies with the formal requirements. Representation is not mandatory for filing an application for inspection of files.35 43 a) Contents. An application for inspection of files must contain the following information: – file number or registration number for which inspection is sought; – name and address of the applicant for inspection of files; – name and business address of the representative, where applicable; – indication of the document or information for which inspection is applied for: in the event of an application to inspect a specific document, the nature of the document (e. g. ‘application’, ‘notice of opposition’) needs to be stated; where communication of information from the file is applied for, the type of information needed must be specified; 42

31 OHIM, Manual Concerning Proceedings before the Office (Trade Marks and Designs), Part E, Section 5, 3.2. 32 Decision No EX-11-3 of the President of the Office communication with and by the Office, Art 20. 33 OHIM, Manual Concerning Proceedings before the Office (Trade Marks and Designs), Part E, Section 5, 5.2. 34 OHIM, Manual Concerning Proceedings before the Office (Trade Marks and Designs), Part E, Section 5, 5.3. 35 OHIM, Manual Concerning Proceedings before the Office (Trade Marks and Designs), Part E, Section 5, 5.6.

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Inspection of files

Art. 88 CTMR

– where a third party applies for inspection in relation to an unpublished CTM application, an indication and evidence to the effect that the third party concerned has a right to inspect the file; – signature of the applicant.36 Where an application for inspection fails to comply with the aforementioned 44 requirements, the Office will invite the applicant to remedy the deficiencies within a fixed time limit. If the deficiencies are not remedied in time, the application for inspection will be refused.37 b) Language. The languages in which the application for inspection of files may be 45 filed depend on whether the application relates to a CTM application or to a registered CTM. aa) CTM applications. An application for inspection that relates to a published or 46 unpublished CTM application must be filed in the language in which the CTM application was filed or in the second language indicated by the CTM applicant in the application. If the application is filed in another language, the applicant must, of its own motion, submit a translation into one of the languages indicated above within one month. Otherwise the application for inspection of files will be deemed not to have been filed (Rule 95 (a) and 98 CTMIR). If the applicant is not aware of the languages of the CTM application, because the information is not available in the online register, the application for inspection may be filed in any of the five languages of the Office.38 bb) CTM registrations. An application that relates to a CTM registration must be 47 filed in one of the five languages of the Office. If the application is filed in another language, the applicant must, of its own motion, submit a translation into one of the languages indicated above within one month. Otherwise the application for inspection of files will be deemed not to have been filed (Rule 95 (b) and 98 CTMIR). The language in which the application for inspection was filed will become the language of the inspection proceedings.39 c) Fees. Applications for inspection of files are subject to the payment of a fee. All 48 fees are due on the date of receipt of the application for inspection. As long as the fee has not been paid the application for inspection will be deemed not to have been made and the Office will not examine it (Rule 89 (1) CTMIR). The fees apply irrespective of whether the application for inspection has been filed by a third party or by the CTM applicant or proprietor.40 If the fee is not paid or is not paid in full, the Office will notify the applicant for 49 inspection accordingly. This information does not constitute a notice of loss of rights (Rule 54 CTMIR), because the applicant may refile its application at any time. If the fee is paid within reasonable time, the Office will examine the application for inspection without requiring the applicant to refile.41 36 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal (Trade Marks and Designs), Part E, Section 5, 5.7. 37 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal (Trade Marks and Designs), Part E, Section 5, 5.8. 38 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal (Trade Marks and Designs), Part E, Section 5, 5.5.1. 39 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal (Trade Marks and Designs), Part E, Section 5, 5.5.2. 40 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal (Trade Marks and Designs), Part E, Section 5, 5.9.3. 41 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art 88, mn 59 et seq.

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CTMR Art. 88

Community Trade Mark Regulation

If the application for inspection is withdrawn before the Office has dealt with it, the fee will be refunded. Similarly, the fee will be refunded where the issue of certified or uncertified copies of a CTM application is refused or where the communication of information contained in a file is denied.42 51 The fee depends on the means of inspection and the type of information sought: – communication of information contained in a file: EUR 10 (Art. 2 (29) CTMFR); – inspection of a file on the Office premises: EUR 30 (Art. 2 (27) CTMFR); – inspection of a file through the issuing of uncertified copies of file documents: EUR 10 plus EUR 1 for every page exceeding ten (Art. 2 (28)(a) CTMFR); – inspection of a file through issuing of certified copies of file documents: EUR 30 plus EUR 1 for every page exceeding ten (Art. 2 (28)(b) CTMFR); – inspection of a file through issuing of an uncertified copy of a CTM application or certificate of registration or uncertified extract from the Register or uncertified extract of the CTM application from the database: EUR 10 per copy or extract (Art. 2 (26)(a) CTMFR); – inspection of a file through issuing of a certified copy of a CTM application or certificate of registration or certified extract from the Register or certified extract of the CTM application from the database: EUR 30 per copy or extract (Art. 2 (26)(b) CTMFR). 50

3. Means of inspection a) Communication of information contained in a file. It is possible to ask the office to communicate specific information contained in a file without filing an application for inspection. The Office will either communicate the requested information or, if appropriate in view of the quantity of the information to be supplied, advise the party concerned to apply for an inspection of the file (Art. 90 CTMIR). 53 For example, information contained in the files will be provided without an inspection application, where the party concerned wishes to know whether a given CTM application has been filed by a given applicant, the date of such application, or whether the list of goods and services has been amended in the period between the filing of the application and publication. However, where the party concerned wishes to know, which arguments an opponent has brought forward in opposition proceedings, which seniority documents have been filed, or the exact wording of the list of goods and services as filed, such information will not be provided because the quantity and complexity of the information to be supplied would create an undue administrative burden. Instead the Office will advise the party to apply for inspection of the actual file.43 52

54

b) Copies of file documents. Where inspection of the files is granted in the form of the provision of certified or uncertified copies of file documents, the requested documents will be sent by post.44

55

c) Inspection on the Office premises. Where inspection of files is granted on the Office premises, the applicant will be given an appointment to inspect the files.45 42 OHIM, Manual Concerning Proceedings before the (Trade Marks and Designs), Part E, Section 5, 5.9.3. 43 OHIM, Manual Concerning Proceedings before the (Trade Marks and Designs), Part E, Section 5, 5.11.1. 44 OHIM, Manual Concerning Proceedings before the (Trade Marks and Designs), Part E, Section 5, 5.11.2. 45 OHIM, Manual Concerning Proceedings before the (Trade Marks and Designs), Part E, Section 5, 5.11.2.

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Periodical publications

Art. 89 CTMR

Article 89 Periodical publications The Office shall periodically publish: (a) a Community Trade Marks Bulletin containing entries made in the Register of Community trade marks as well as other particulars the publication of which is prescribed by this Regulation or by the Implementing Regulation; (b) an Official Journal containing notices and information of a general character issued by the President of the Office, as well as any other information relevant to this Regulation or its implementation. Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. CTM Bulletin . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. General remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Structure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Part A: CTM applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Part B: CTM registrations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Part C: Later entries in the CTM Register . . . . . . . . . . . . . . . . . . . . . . . . . d) Part D: CTM renewals . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . e) Part E: Requests for conversion into a national trade mark application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . f) Part F: Restitutio in integrum. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . g) Part M: International registrations designating the European Community . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Official Journal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 2 6 7 8 9 10 11 12 13 14

I. General Art. 89 CTMR, which is supplemented by Rules 85 and 86 CTMIR, requires the 1 Office to publish a Community Trade Marks Bulletin and an Official Journal. While the Community Trade Marks Bulletin contains information on CTM applications and on entries made in the CTM Register, the Official Journal contains information that is not related to a specific CTM application or registration, such as decisions of the President or entries on the list of professional representatives.

II. CTM Bulletin 1. General remarks The CTM Bulletin is published almost daily and is only available in electronic form. 2 Access is provided via the Office’s website free of charge. It contains publications of applications and of entries made in the Register as well as other particulars relating to applications or registrations whose publication is required by the CTMR or the CTMIR (Rule 85 (2) CTMIR). Full details of the structure and contents of the CTM Bulletin can be found in the Vademecum to the Community Trade Marks Bulletin V.11 (7 September 2012) that is available on the Office’s website.

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CTMR Art. 89

Community Trade Mark Regulation

The date of issue shown on the Bulletin is regarded as the date of publication (Rule 85 (3) CTMIR) and, with respect to CTM applications, triggers the time limit for opposition. With respect to registrations, the publication date determines the enforceability of the CTM against third parties. The rights conferred by a CTM may only be enforced against third parties after publication of the registration. In addition, where an action involving a CTM is brought before a court, the court may not decide upon the merits of the case until the registration has been published (Art. 9 (3) CTMR). 4 The Bulletin is published in all official languages of the EU (Rule 85 (5) CTMIR). This is facilitated by number codes that precede each entry and identify the bibliographical data concerning that entry (e. g. 731 for the name and address of the applicant; 740 for the name and address of the representative). The number codes are in accordance with WIPO standard ST.60 and called INID codes, ‘INID’ being an acronym for ‘Internationally agreed Numbers for the Identification of (bibliographic) Data’. A list of codes is included in the Vademecum to the Community Trade Marks Bulletin and is also provided in every issue of the CTM Bulletin. 5 If a publication in the Bulletin contains an error attributable to the Office, it is corrected in accordance with Rules 14 and 27 CTMIR, provided it is a ‘relative’ error. An error is ‘relative’ if it affects the details of an application or an entry made in the CTM Register or the details of other particulars relating to applications or registrations. An error is considered ‘absolute’ when an application or an entry made in the CTM Register or particulars relating to applications or registrations have been published when they should not have been. In such a case the publication will be considered null and void.1 Both, correction of absolute as well as of relative errors are published in the CTM Bulletin.2 3

2. Structure 6

The CTM Bulletin is subdivided into seven parts, which contain information on CTM applications (Part A), CTM registrations (Part B), later entries in the CTM register (Part C), CTM renewals (Part D), requests for conversion into a national trade mark application (Part E), re-establishment of rights (Part F) and IRs designating the EU (Part M).

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a) Part A: CTM applications. Part A contains CTM applications published under Art. 39 CTMR and amendments to previously published CTM applications, such as correction of errors, withdrawals, restrictions, refusals and divisions.

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b) Part B: CTM registrations. CTM Registrations are published in a shorter form pursuant to Rule 85 (4) CTMIR. Where the entries regarding the registration of a trade mark do not differ from the publication of the application, the publication of that registration is made by way of a reference to the particulars in the published application. If details have been amended, the latest version is published.

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c) Part C: Later entries in the CTM Register. Part C of the CTM Bulletin is devoted to entries affecting trade marks after registration, such as transfers, licenses, securities, surrenders or insolvency proceedings. Generally, it is the entry in the CTM Register and not the act of publication, which has effects vis-a`-vis third parties (Art. 23 (1) CTMR). The publication of entries is, therefore, in principle for information only. An important exception to this is where there is an alteration to the registration of the trade mark, 1 2

Vademecum to the Community Trade Marks Bulletin V.11 (7 September 2012), Introduction 2. c). Vademecum to the Community Trade Marks Bulletin V.11 (7 September 2012), A.2.1.1. and A.2.1.2.

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Administrative cooperation

Art. 89 CTMR

under Art. 48 CTMR. In this case, the entry may be the subject of an opposition after publication (Rule 25 (4) CTMIR). d) Part D: CTM renewals. Part D contains information on renewal of CTM registra- 10 tions. The renewal must be registered according to Art. 47 (5) CTMR and is published in the Bulletin pursuant to Rule 23 (5) CTMIR. e) Part E: Requests for conversion into a national trade mark application. Part E 11 contains information on requests for conversion of CTMs and published CTM applications into national trade mark applications as well as requests for conversion of IRs designating the EU. These requests must be published in the Bulletin in accordance with Rule 46 CTMIR. f) Part F: Restitutio in integrum. The publication of the re-establishment of rights is 12 made only where the unobserved time limit which gave rise to the application for restitutio in integrum has actually led to the publication of the change of the status of the CTM application or registration, because only in such an instance can third parties have relied on the absence of re-establishment of rights.3 g) Part M: International registrations designating the European Community. Part 13 M contains information on international registrations designating the European Community. According to Art. 151 (1) CTMR IRs designating, under the Protocol, the EU as well as subsequent designations of the EU have the same effect as an application for a CTM. Article 152 (1) CTMR stipulates what bibliographic data is to be published.

III. Official Journal The Official Journal is published in electronic format and is available on the Office’s 14 website. It is published in the five languages of the Office, which are English, French, German, Spanish and Italian. The President of the Office may determine that certain items shall be published in all official languages of the EU (Rule 86 (1) CTMR). To date, the President has never exercised this option.4 The Official Journal contains information of a general character that does not relate 15 to a specific CTM or CTM application, such as the annual budget of the Office, communications and decisions issued by the President of the Office or entries on the list of professional representatives. For some communications or decisions publication in the Official Journal is mandatory, such as for decisions of the President that allow forms of payment other than transfer to a bank account held by the Office (Art 5 (3) CTMFR). Other general information is published in the Official Journal although such publication is not mandatory.

3 4

Vademecum to the Community Trade Marks Bulletin V.11 (7 September 2012), Part F. Schennen in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art 89, mn 9.

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CTMR Art. 90

Community Trade Mark Regulation

Article 90 Administrative cooperation Unless otherwise provided in this Regulation or in national laws, the Office and the courts or authorities of the Member States shall on request give assistance to each other by communicating information or opening files for inspection. Where the Office lays files open to inspection by courts, Public Prosecutors’ Offices or central industrial property offices, the inspection shall not be subject to the restrictions laid down in Article 88. Content I. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Exchange of information . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Inspection of files. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Inspection of files of national courts and authorities . . . . . . . . . . . . . . . 2. Inspection of the Office’s files . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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I. General 1

Art. 90 CTMR requires the Office and the national courts and authorities to give assistance to each other. Such assistance can take the form of communication of information or it can be provided by opening the files for inspection. Art. 90 CTMR is supplemented by Rule 92 and 93 CTMIR. While Rule 92 CTMIR applies to any communication of information between the Office and the national courts and authorities, Rule 93 CTMIR contains special provisions for the inspection of the Office’s files by national courts and authorities. Further guidance on the interpretation of Art 90 CTMR is provided by the Joint statements by the Council and the Commission of the European Communities entered in the minutes of the Council meeting at which the Regulation on the Community Trade Mark is adopted on 20 December 1993, No. 19 and 20.1

II. Exchange of information Rule 92 CTMIR applies to any exchange of information between the Office and the national courts and authorities. Rule 92 (1) CTMIR specifically mentions information about the filing of applications for CTMs or national marks and about proceedings relating to such applications and the marks registered as a result thereof. 3 Such communications are not subject to the restrictions provided for in Article 88 CTMR (Rule 92 (1) CTMIR). Consequently, national courts and authorities may be provided with information regarding unpublished CTM applications and parts of the files for which a party concerned has invoked a special interest in keeping them confidential (Rule 88 (c) CTMR). However, information on documents relating to exclusion and objection (Rule 88 (a) CTMIR) as well as on draft decisions and opinions (Rule 88 (b) CTMIR) will not be made available to these bodies.2 2

1

Published in OJ OHIM 1996, May issue. OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E: Register Operations, Section 5: Inspection of Files, 6.2. 2

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Administrative cooperation

Art. 90 CTMR

The administrative cooperation shall be effected directly between the authorities 4 without the involvement of the Permanent Representation to the EU of the Member State concerned (Rule 92 (2) CTMIR). Rule 92 (3) CTMIR prohibits to charge a fee for the communication of information pursuant to Art. 90 CTMR. The Office as well as the national courts and authorities are not obliged to give assistance where national law or the provisions of the CTMR prevent them from doing so. For example, national provisions that contain restrictions of administrative cooperation may prevent a national court or authority from providing certain information on national trade mark proceedings to the Office. However, the Member States must not introduce national laws treating administrative cooperation between the Office and the courts or authorities of the State concerned in a different way from such cooperation between the courts or authorities of that State.3 The provision of search reports by national industrial property offices, which may be 5 requested by a CTM applicant at the time of filing of its application, is subject to the rules set out in Art. 38 CTMR and does not fall under the provisions regarding administrative cooperation of Art. 90 CTMR. According to Art. 38 (2) CTMR the national industrial property offices are not obliged to conduct searches in their registers for earlier national rights that may be invoked against a CTM application.

III. Inspection of files 1. Inspection of files of national courts and authorities Rule 93 CTMIR governs the inspection of the Office’s files by national courts and 6 authorities. It does not contain any provisions regarding the inspection of the files of national courts and authorities by the Office. National courts and authorities are obliged to open their files for inspection, unless national law prevents them from doing so (Art. 90 CTMR). The Member States must not introduce national laws treating inspection of files by the Office in a different way from the inspection of files by courts or authorities of that State.4 Rule 92 (3) CTMIR prohibits to make the inspection of files of national courts and authorities by the Office subject to payment of a fee.

2. Inspection of the Office’s files The inspection of the Office’s files is granted by providing printouts from the electronic 7 system to the national courts and authorities.5 The Office must not charge a fee for the inspection of files to the national courts and authorities (Rule 92 (3) CTMIR). The inspection is not subject to the restrictions provided for in Art. 88 CTMR (Rule 8 92 (1) CTMIR). Consequently, national courts and authorities are granted access to files relating to unpublished CTM applications and to documents for which a party concerned has invoked a special interest in keeping them confidential (Rule 88 (c) CTMR). However, 3 Joint statements by the Council and the Commission of the European Communities entered in the minutes of the Council meeting at which the Regulation on the Community Trade Mark is adopted on 20 December 1993, no. 19, OJ OHIM 1996, May issue. 4 Joint statements by the Council and the Commission of the European Communities entered in the minutes of the Council meeting at which the Regulation on the Community Trade Mark is adopted on 20 December 1993, no. 19, OJ OHIM 1996, May issue. 5 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E: Register Operations, Section 5: Inspection of Files, 6.3.

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CTMR Art. 91

Community Trade Mark Regulation

documents relating to exclusion and objection (Rule 88 (a) CTMIR) as well as draft decisions and opinions (Rule 88 (b) CTMIR) will not be made available to these bodies.6 9 Courts or public prosecutors’ offices of the Member States may, in the course of proceedings before them, open files or copies that have been transmitted to them by the Office to inspection by third parties. Such subsequent inspection is subject to the restrictions contained in Art. 88 CTMR and Rule 88 CTMIR, as if the inspection had been requested by a third party (Rule 93 (2) CTMIR). This principle is also set out in the Joint statements by the Council and the Commission of the European Communities entered in the minutes of the Council meeting at which the Regulation on the Community Trade Mark is adopted on 20 December 1993, No. 20.7 Its aim is to prevent the parties from circumventing the restrictions regarding inspection of files by bringing proceedings before national courts. However, under national law, the courts may be barred from using any files or parts of the file that were submitted by the Office but are excluded from inspection by the parties to the proceedings. This may violate national provisions requiring that the parties to the proceedings have access to the entire file and have the right to be heard to any information that is part of the file. 10 To ensure that the national courts and public prosecutors’ offices are aware of any restrictions regarding the inspection of files transmitted to them by third parties, the Office, at the time of transmission of the files, will indicate the restrictions to which the inspection of the files is subject to(Rule 93 (3) CTMIR). The Office must not charge a fee for the inspection of files that have been transmitted to national courts or public prosecutors’ offices (Rule 93 (2) CTMIR). 11 The inspection of files by national courts and authorities pursuant to Art. 90 CTMR is of little practical relevance, since the Office makes its electronic database available to the national courts and authorities free of charge. In addition, anyone, including national courts and authorities, may access CTM-ONLINE free of charge, which contains all relevant information on CTM applications and registered CTMs. However, national courts and authorities may still use Art. 90 CTMR to obtain information that may be used as evidence in proceedings, such as information on the status of proceedings.8

Article 91 Exchange of publications 1. The Office and the central industrial property offices of the Member States shall dispatch to each other on request and for their own use one or more copies of their respective publications free of charge. 2. The Office may conclude agreements relating to the exchange or supply of publications. Content I. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Publications in paper form. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Publications and data in electronic form . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 3

6 OHIM, Manual Concerning Proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part E: Register Operations, Section 5: Inspection of Files, 6.2. 7 Published in OJ OHIM 1996, May issue. 8 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Art 90, mn 12.

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Exchange of publications

Art. 91 CTMR

I. General Art. 91 (1) CTMR governs the exchange of publications between the Office and the 1 central industrial property offices of the Member States. Its application is limited to publications in paper form due to use of the term ‘copies’. Art. 91 (2) CTMR authorizes the Office to conclude agreements relating to the exchange or supply of publications, for example with third countries or supranational bodies such as WIPO.

II. Publications in paper form When the CTM Bulletin was still published in paper form, Art. 91 (1) CTMR enabled 2 the national industrial property offices to obtain copies of the Bulletin free of charge. Now that the Bulletin is only published in electronic format, the provision has lost its relevance. It would in theory still apply to other publications in paper form. If such publications are provided to the public subject to payment of a fee, Art 91. (1) CTMR enables the national industrial property offices to obtain them free of charge. Similarly, the Office may conclude agreements with third countries or supranational bodies that enable them to obtain copies of such publications free of charge. However, almost all publications of the Office are now made in electronic form, such as annual reports or information brochures, so that it is hard to imagine any remaining scope of application of Art. 91 CTMR.

III. Publications and data in electronic form Art. 91 (1) CTMR does not govern publications in electronic form, because it uses the 3 term ‘copies’ which must be understood as reference to publications in paper form. Electronic publications are provided to national industrial property offices on the basis of Rule 92 CTMIR, which governs the exchange of information between the Office and the national courts and authorities. The contents of the Office’s electronic data bank are provided to the public on the 4 basis of Rule 87 CTMIR, which enables the President of the Office to determine the conditions of access to the data bank and the manner in which the contents of this data bank may be made available, including the charges for these acts. As of 1 January 2011,the President has abolished any charges to be paid for the download of data concerning CTM applications.1 The Office transmits the contents of its electronic data bank to national offices and offices of third countries, which may only use them for their own purposes.2

1 2

Decision No EX-10-2 of the President of the Office of 28 September 2010. Schennen in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Art 91, mn 6.

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CTMR Art. 92

Community Trade Mark Regulation

SECTION 4 Representation Article 92 General principles of representation 1. Subject to the provisions of paragraph 2, no person shall be compelled to be represented before the Office. 2. Without prejudice to paragraph 3, second sentence, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Community must be represented before the Office in accordance with Article 93 (1) in all proceedings established by this Regulation, other than in filing an application for a Community trade mark; the Implementing Regulation may permit other exceptions. 3. Natural or legal persons having their domicile or principal place of business or a real and effective industrial or commercial establishment in the Community may be represented before the Office by an employee. An employee of a legal person to which this paragraph applies may also represent other legal persons which have economic connections with the first legal person, even if those other legal persons have neither their domicile nor their principal place of business nor a real and effective industrial or commercial establishment within the Community. 4. The Implementing Regulation shall specify whether and under what conditions an employee must file with the Office a signed authorisation for insertion on the file. Bibliography: Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design Law, 2011; James Mellor/David Llewelyn/Thomas Moody-Stuart/David Keeling/Iona Berkeley (ed.), Kerly’s Law of Trade Marks and Trade Names, 15th ed., London, 2011.

Content I. II. III. IV. V. VI. VII. VIII. IX. X.

General principles of representation. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Representation for matters other than filing a CTM application . . . . Determination of need for representation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Domicile . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Principal place of business . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Establishment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Meaning of European Community . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Practical implications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Employee representation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Professional employees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 4 6 7 8 9 10 11 15

I. General principles of representation 1

Art. 92 provides the rules relating to representation issues before the Office in a general sense, and Art. 93 in relation to professional representation. The starting position of Art. 92 (1) is that no person is compelled to be represented before the Office and a CTM application may be filed by parties incorporated or domiciled outside the Community.

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General principles of representation

Art. 92 CTMR

II. Representation for matters other than filing a CTM application Notwithstanding the international aspirations of Art. 92 (1), the exceptions provided 2 for in Art. 92 (3) mean that legal or natural persons outside the Community cannot in reality pursue any application directly before the Office (or indeed oppose, file a cancellation or any other matter) and must, for all practical purposes, be represented either by a professional (see Art. 93 below), or by an employee (see Art. 92 (3)) within the Community. Whilst Art. 92 (2) indicates that the Implementing Regulation may provide further exceptions to the need for representation, it did not do so. Notwithstanding the strict requirements of Art. 92 (2), the Office has been known to 3 accept a letter from an unrepresented overseas applicant in order to withdraw an application, in circumstances where the applicant’s professional representation had ceased to act1. In all other cases however, the Office will simply treat the application or request as ultimately inadmissible, but will usually soften this rule by inviting the defaulting party to appoint a representative within a specific timescale (typically two months), failing which the application will be deemed inadmissible.

III. Determination of need for representation The practical test is that the Office will ordinarily assume that the person’s stated 4 address reflects their residence, so if further evidence or comment is required to rebut that presumption, it should be deployed prior to or with the application. The legal test for whether an applicant will be treated as originating from outside the 5 Community is whether the legal or natural person is one with no domicile or principal place of business, nor a real and effective industrial or commercial establishment in the Community. Each of these concepts is assessed differently.

IV. Domicile Domicile of legal persons in the Community is determined by Art. 54 of the Treaty of 6 the European Union. The seat or main domicile must actually be in the Community, and it is not sufficient that the law governing the company is the law of a Member State.

V. Principal place of business An organisation with a principal place of business in the Community need not be 7 separately represented. This is really a question of fact, but it should be noted that the strict wording of Art. 92 (2) of the Regulation suggests that it need only be a principal place of business, rather the principal place of business.

1

See OHIM, Dec of 15.11.2006 – R 0245/2006-1 – Zoran Corp v Harvest & Associates, mn. 3.

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CTMR Art. 92

Community Trade Mark Regulation

VI. Establishment 8

The determination of the third exception to the representation requirements is the most opaque, requiring a real and effective industrial or commercial establishment in the Community. Readers will note that this requirement mirrors the wording in both the Madrid Protocol (Art. 2 (1)) and the Madrid Agreement (Art. 1 (3)), as well as the Paris Convention. The concepts have not, to date, been the subject of close scrutiny by the CJ. However, the general understanding is that the test is a substantive one, not fulfilled merely by the party to the proceedings having a post-box or an address for service in the jurisdiction, nor by appointing a local agent who has an address for service within the Community. However, at the other end of the spectrum, it seems unlikely that an independent subsidiary, separately incorporated, would be deemed an establishment of the parent company. As a result, the provision is more likely to be applicable to a dependent or brand office, with no separate legal personality.

VII. Meaning of European Community 9

The Community is given its general meaning under Art. 299 EC Treaty as the territory of each of the Member States to which the EC Treaty applies under Art. 2992. On that basis, qualification under the requirements of Art. 92 (2) would include all geographic areas which are part of EU Member States for political and legal purposes, but situated outside of Europe. This would include Azores and Madeira of Portugal, the Canary Islands of Spain, French overseas departments French Guiana, Guadeloupe, Martinique, Mayotte, and Re´union. It would not include the overseas countries and territories associated with particular Member States, but which are not formally part of the EU, but may include Åland, Bu¨singen am Hochrhein, Campione d’Italia and Livigno, Ceuta and Melilla, Gibraltar Helgoland and Mount Athos. Members of the European Economic Area falling outside the EU (i. e., EFTA Member States) are also not considered to fulfil this requirement.

VIII. Practical implications 10

Assuming the applicant can qualify under one or more of the above criteria to deal directly with the Office on its CTM matters, the result can still be fairly unsatisfactory and cumbersome. The Office takes the view that legal persons can only act through natural persons, so its application and other forms are required to be signed by a natural person, rather than be ‘executed’ as a formal legal document would be by a corporate. The form must thus only be signed by a person duly authorised and having the power to bind the company, and who must also give their name and position/job title (e. g. President, CEO etc.). Given the usual constraints on executive time in most organisations, for the majority of corporate entities, it will be simpler and more appropriate to simply proceed by way of a professional representative, or indeed a company employee (Art. 92 (3)). 2

Now Article 355 TFEU, mn. 9.

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General principles of representation

Art. 92 CTMR

IX. Employee representation Art. 92 (3) provides that legal or natural persons having their domicile or principle place of business or a real and effective industrial or commercial establishment in the Community may also be represented before the Office by an employee. Further, an employee of a legal person to whom this provision applies may also represent other legal persons which have economic connections with the first legal person, even if those other legal persons have neither the domicile nor their principal place of business nor a real and effective industrial or commercial establishment in the Community. Organisations qualifying to deal directly with the Office under Art. 92 (2) may therefore proceed under Art. 92 (3) by way of an employee representative, without the need to trouble senior officers of the company with every communication which must be signed by the company. For practical purposes, the Office will not enquire deeply into the relationship between the company and its employee, unless some indication suggests that this may not be factually accurate, such as a difference in address between the organisation and its employee. However, as contemplated by Art. 92 (4), a signed authorisation must be filed at the Office (see r.76 (2) IR) to formalise the appointment. Although, strictly speaking, an employee is not a professional representative and should not therefore be published in the Bulletin or included in the representative details, the Office rarely makes the practical distinction and tends to include these in any event. The more striking provisions of Art. 92 (3) relate to the ability of such employee representatives to also act for organisations which, but for the ‘economic connections’ between the two organisations, would ordinarily be precluded from dealing directly with the Office as they could not satisfy the requirement to have an EU presence under Art. 92 (2). OHIM’s Guidelines include some indication as to what might qualify as ‘economic connections’3. Generally speaking this is satisfied by some form of economic dependence between the two organisations (it can be in either direction). This may be because for example, both parties are ultimately part of the same economic group, due to management controls between the two entities, because one owns the majority of shares (or indeed capital) of the other, or because one party controls the ability to appoint more than half the management body of the other. By contrast, the Office has indicated that mere trade mark licensing arrangements, supplier/client, nor importer/distributor arrangements are sufficient for such economic connection.4

11

12

13

14

X. Professional employees A word of warning in relation to the use of company employees as representatives 15 who are also qualified trade mark professionals. An employee acting under Art. 92 (3) does not count as a professional representative for the award of costs, even if he is in fact duly qualified and would otherwise do so under Art. 93.5

3

See part A Section 5 para 5.2.3.2., mn. 14. See OHIM, Dec. of 26.9.2006 – R 0709/2006-1 – Anuschka, mn. 16. 5 See OHIM, Dec. of 3.6.2006 – R 336/2002-2 – Mirodan/Rodan, mn. 15. 4

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CTMR Art. 93

Community Trade Mark Regulation

Article 93 Professional representatives 1. Representation of natural or legal persons before the Office may only be undertaken by: (a) any legal practitioner qualified in one of the Member States and having his place of business within the Community, to the extent that he is entitled, within the said State, to act as a representative in trade mark matters; (b) professional representatives whose names appear on the list maintained for this purpose by the Office. The Implementing Regulation shall specify whether and under what conditions the representatives before the Office must file with the Office a signed authorisation for insertion on the file. Representatives acting before the Office must file with it a signed authorisation for insertion on the files, the details of which are set out in the Implementing Regulation. 2. Any natural person who fulfils the following conditions may be entered on the list of professional representatives: a) he must be a national of one of the Member States; b) he must have his place of business or employment in the Community; c) he must be entitled to represent natural or legal persons in trade mark matters before the central industrial property office of a Member State. Where, in that State, the entitlement is not conditional upon the requirement of special professional qualifications, persons applying to be entered on the list who act in trade mark matters before the central industrial property office of the said State must have habitually so acted for at least five years. However, persons whose professional qualification to represent natural or legal persons in trade mark matters before the central industrial property office of one of the Member States is officially recognised in accordance with the regulations laid down by such State shall not be subject to the condition of having exercised the profession. 3. Entry shall be effected upon request, accompanied by a certificate furnished by the central industrial property office of the Member State concerned, which must indicate that the conditions laid down in paragraph 2 are fulfilled 4. The President of the Office may grant exemption from: a) the requirement of paragraph 2 (c), second sentence, if the applicant furnishes proof that he has acquired the requisite qualification in another way; b) the requirement of paragraph 2 (a) in special circumstances. 5. The conditions under which a person may be removed from the list of professional representatives shall be laid down in the Bibliography: Charles Gielen/Verena v. Bomhard (ed.), Concise European Trade Mark and Design Law, 2011; James Mellor/David Llewelyn/Thomas Moody-Stuart/David Keeling/Iona Berkeley (ed.), Kerly’s Law of Trade Marks and Trade Names, 15th ed., London, 2011. The Institute of Trade Mark Attorneys, Chartered Institute of Patent Attorneys (various releases) The Community Trade Mark Handbook.

Content I. II. III. IV.

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General principles of professional representation . . . . . . . . . . . . . . . . . . . . . . Qualified legal practitioners. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Place of business . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . To the extent entitled to act as a representative in trade mark matters . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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Professional representatives

Art. 93 CTMR

V. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Art. 93 (2): Professional representation other than legal practitioners 1. Professional qualifications. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Duration of service . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Exceptions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VII. Practical aspects: Art. 93 (3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VIII. Other exemptions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IX. Removal from list . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

9 10 12 13 14 15 19 20

I. General principles of professional representation Art. 93 provides the rules for professional representatives. Under Art. 93 (1), repre- 1 sentation of natural or legal persons before the Office may only be undertaken by one of two groups, being: (a) legal practitioners qualified in one of the Member States, having his place of 2 business within the Community, to the extent that he is entitled, within that Member State(s), to act as a representative in trade mark matters; (b) professional representatives whose names appear on the list maintained for this 3 purpose by the Office.

II. Qualified legal practitioners As distinct from Art. 93 (1)(b), legal practitioners under Art. 93 (1)(a) are profes- 4 sional representatives who are automatically and without any further formal recognition authorised to act, provided that they meet the conditions of Art. 93 (1)(a). The term ‘legal practitioner’ is defined by Directive 98/5/EC1. A list of the professional titles recognised as legal practitioners by OHIM are set out at Annex 1 to Part A Section 5 of OHIM’s Manual2. In practice, the Office will not verify an individual’s claim to a legal practitioner title unless there are ‘serious doubts’ in relation to the claim.

III. Place of business The legal practitioner’s place of business must be in the Community. As with Art. 92 5 (2) CTMR, the relevant territory is the territory of each of the Member States to which the EC Treaty applies under Art. 2993. This is presumed to include all geographic areas which are part of EU Member States for political and legal purposes, but situated outside of Europe. This would include Azores and Madeira of Portugal, the Canary Islands of Spain, French overseas departments French Guiana, Guadeloupe, Martinique, Mayotte, and Re´union. It would not include the overseas countries and territories associated with particular Member States, but which are not formally part of the EU, but may include Åland, Bu¨singen am Hochrhein, Campione d’Italia and Livigno, Ceuta and Melilla, Gibraltar Helgoland and Mount Athos. Members of the European 1 Directive 98/5/EC of 16.2.1998, OJ EC L 77 of 14.3.1998, p. 36 of the European Parliament and of the Council of 16 February 1998, mn. 4. 2 See Part A General Rules, Section 5, Professional Representation and Annex 1 thereto, mn. 4. 3 Now Art. 355 TFEU, mn. 5.

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CTMR Art. 93

Community Trade Mark Regulation

Economic Area falling outside the EU (i. e. EFTA Member States) are also not considered to fulfil this requirement. 6 The place of business need only be a place of business of the representative, rather than the sole place from which he practices. The place of business may also be in a Member State other than the one in which the practitioner is legally qualified. Conversely however, legal practitioners having their sole place of business outside of the Community are not entitled to represent before the Office, even if, in fact, they are admitted to practise in one of the Member States. 7 For larger associations of representatives and professionals with several places of business, such firms may act only from a place of business within the Community, and the Office is clear in its guidance that it will only communicate with legal practitioners at an address that is within the European Community. It should be noted that the qualification of place of business is one of operations, not of nationality, and there is no rule that requires the legal practitioner to have the nationality of one of the Member States.

IV. To the extent entitled to act as a representative in trade mark matters 8

The third requirement of Art. 93 (1)(a) is something of a curiosity in its drafting, noting ‘to the extent that he is entitled, within the said State, to act as a representative in trade mark matters’. The meaning of this passage is somewhat unclear. Some commentary suggests that this means it is a requirement that the professional must be entitled to act as a representative in trade mark (and/or design) matters generally, as well as specifically before the respective national industrial property office of the relevant Member State(s). The Office Manual also suggests that they must be entitled within that State and makes no mention of the ‘to the extent entitled’ qualification.4 However, this cannot be what the legislature intended, given that Art. 93 (2)(c) (see below) is specific in this requirement, whereas Art. 93 (1)(a) is expressed only ‘to the extent entitled’. On that basis, professionals qualified under Art. 93 (1)(a) need not in fact be specifically authorised to be a trade mark representative if the Member State of their professional accreditation does not require this.

V. General 9

Legal practitioners who can satisfy all of the conditions of Art. 93 (1)(a) CTMR are automatically entitled as of right to represent clients before the Office. Legal practitioners are not entered on the list of professional representatives maintained for the purposes of Art. 93 (2) CTMR, since the Office views entitlement and the special professional qualifications of Art. 93 (2) as categories of professional representatives specialised in industrial property or trade mark matters, whereas legal practitioners are by definition entitled to be representatives in all legal matters. The only permitted exception as far as the list is concerned is a professional representative who is also a legal practitioner and such dual qualification is allowed under national law.

4

See section 2.1.2 of Part A General Rules, Section 5, Professional Representation, mn. 8.

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Professional representatives

Art. 93 CTMR

VI. Art. 93 (2): Professional representation other than legal practitioners Professional representatives who wish to act for clients before the Office but who are 10 not legal practitioners under Art. 93 (1) must qualify under Art. 93 (2)(a)-(c). This requires a representative to be: (a) A national of one of the Member States; and (b) have his or her place of business in the Community. Having satisfied the conditions of Art. 93 (2)(a) and (b), representatives must also 11 demonstrate under Art. 93 (2)(c) an entitlement and/or qualification to act before a national or regional trade mark office in one or more Member States. It should be noted that the required qualification or experience need not be in the representative’s domicile. As may be expected given the number of Member States, there are a number of different ways in which this is satisfied. The three principal groups are the following.

1. Professional qualifications In a number of Member States (notably Portugal, Spain, Ireland, Italy, Austria and 12 Germany) appearance before national IPOs requires a particular professional qualification. Professionals from such Member States are accordingly entitled to act before the Office.

2. Duration of service Some Member States do not impose special qualification requirements upon their 13 representatives before their respective national IPOs (including Belgium, Denmark, Finland and Sweden). Where this is the case, Art. 93 (2)(c) requires that representation before the national IPO must be ‘habitual’, and for at least five years prior to representation before OHIM.

3. Exceptions Art. 93 (2)(c) recognises that some Member States operate a mixed credentials 14 system, with some official recognition of qualifications alongside representatives before national IPOs without such professional qualifications. Those falling under the latter category need not in fact satisfy the five year requirement of the Office. This ‘exemption’ as such applies to ‘conseils en proprie´te´ industrielle’ in France and Luxembourg, ‘octrooigemachtigden’ in the Netherlands and ‘trade mark attorneys’ in the UK.

VII. Practical aspects: Art. 93 (3) An application may be made to the Administration of Trade Marks and Designs, 15 Legal Division at the Office (see Art. 133 (2) CTMR). This must be evidenced by a certification from the relevant national IPO (see Art. 93 (3)), although some IPOs may provide the Office with block certificates. Applications must be accompanied by individual certificates in the absence of a block certificate5. 5

See President Communication 1/95 of 18 September 1995.

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CTMR Art. 93

Community Trade Mark Regulation

In theory, a professional representative should not need to file an authorisation to act before the Office. Nevertheless, Rule 76 (1) CTMIR provides that a representative must file an authorisation if requested by the Office, or by one of the parties to the proceedings. 17 Practitioners should also note Rule 76 (6) CTMIR, which provides that any representative who has ceased to be authorised (for example because their client has dispensed with their services), shall, as far as the Office is concerned, continue to be regarded as the representative until such termination of his authorisation has been communicated to the Office. 18 Rule 76 (9) CTMIR provides that associations of representatives (for example, firms or partnerships of lawyers and their professional representatives) may also apply for recognition by the Office. Such firms are allocated an identification number which is different to those of the individual representatives within that association. Nevertheless, for practical purposes official communications must still be signed by a qualified professional representative giving his or her name and may also choose to include their individual identification number (even though the latter is strictly unnecessary). The advantages of an appointment for a firm are that new joiners are automatically (deemed) included in the association’s ID number, leavers are automatically (deemed) excluded and the Office does not formally require an update of either. However, for obvious reasons, the firm may choose to voluntarily notify the Office of the departing representative to ensure that the firm’s ID is not used by the individual after that time. 16

VIII. Other exemptions 19

Art. 93 (4) provides that the President of the Office may, in special circumstances, grant various exemptions – both from the requirement to be a national of a Member State, and from the five year requirement (which is nevertheless subject to proof of the equivalent qualification in one form or another). The President’s discretionary power has been granted in only a small number of cases, but generally speaking exemption from the nationality requirements is more easily granted than the five year experience requirement. Even where the practitioner may have relevant experience prior to formal qualification (such as that gained in-house), such experience must still have been obtained within a Member State.

IX. Removal from list 20

The rules relating to removal from the list are set out in some detail in Rule 78 CTMIR. This includes ineligibility under the requirements of Art. 93 (2), the death or legal incapacity of the representative, or the representative’s entitlement to be represented before the national IPO being suspended. A representative may also himself choose to voluntarily remove himself from the list should he choose to do so.

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TITLE X JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO COMMUNITY TRADE MARKS SECTION 1 Application of Regulation (EC) No 44/2011 Article 94 Application of Regulation 1215/2012 1. Unless otherwise specified in this Regulation, Regulation (EC) No 44/2001 shall apply to proceedings relating to Community trade marks and applications for Community trade marks, as well as to proceedings relating to simultaneous and successive actions on the basis of Community trade marks and national trade marks. 2. In the case of proceedings in respect of the actions and claims referred to in Article 96: (a) Articles 2 and 4, points 1, 3, 4 and 5 of Article 5 and Article 31 of Regulation (EC) No 44/2001 shall not apply; (b) Articles 23 and 24 of Regulation (EC) No 44/2001 shall apply subject to the limitations in Article 97 (4) of this Regulation; (c) the provisions of Chapter II of Regulation (EC) No 44/2001 which are applicable to persons domiciled in a Member State shall also be applicable to persons who do not have a domicile in any Member State but have an establishment therein. Rc. 16 Bibliography: Fayaz, ‘Sanktionen wegen der Verletzung von Gemeinschaftsmarken: Welche Gerichte sind zusta¨ndig und welches Recht ist anzuwenden?’ (1. Teil), GRURInt 2009, 459–469; Knaak, ‘Die Durchsetzung der Rechte aus der Gemeinschaftsmarke’, GRUR 2001, 21–29; Lange, ‘Der Internationale Gerichtsstand der Streitgenossenschaft im Kennzeichenrecht im Lichte der ‘Roche/Primus’- Entscheidung des EuGH’, GRUR 2007, 107–114.

Content A. General remarks. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Proceedings pursuant to Art. 96 CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Non-applicable provisions of Reg. 1215/2012 . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Applicable provisions of Reg. 1215/2012 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Place of jurisdiction for a joinder of defendants (Art. 6 No. 1 of Reg. 1215/2012). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Counterclaim (Art. 7 (3) of Reg. 1215/2012). . . . . . . . . . . . . . . . . . . . . . . . . . 3. Related actions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Art. 29 of Reg. 1215/2012. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Art. 30 of Reg. 1215/2012. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Proceedings other than those mentioned in Art. 96 . . . . . . . . . . . . . . . . . . . . . . . . . D. Recognition and enforcement of judgments . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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CTMR Art. 94

Community Trade Mark Regulation

A. General remarks Art. 94 (1) declares Reg. 1215/2012 generally applicable to proceedings relating to Community trade marks and applications for Community trade marks. On 10 January 2015 Reg. 1215/2012 entered into force repealing Reg. 44/2001 (see. Art. 80 sentence 1 of Reg. 1215/2012). References to Reg. 44/2001 shall according to Art. 80 of Reg. 1215/2012 be construed as references to Regulation 1215/2012 and be read in accordance with the correlation table set out in Annex III of Reg. 1215/2012. Hereinafter the provisions of Reg. 1215/2012 will thus be quoted when the actual language of the CTMR is referring to Reg. 44/2001. According to Art. 94 (1), Reg. 1215/2012 is to apply if simultaneous or successive actions on the basis of Community trade marks and national trade marks are concerned. However, Art. 94 (1) is structured as a catch-all clause. Consequently, recourse to Art. 94 (1) and thus to Reg. 1215/2012 is possible only if not otherwise specified in the CTMR. The provisions of Art. 95 et seq. thus take precedence. 2 Systematically, it must thus first be reviewed when applying the law whether the provisions of Art. 95 et seq. provide for special rules. If this is not the case, recourse to Reg. 1215/2012 is possible through Art. 94 (1). This taxonomy is confirmed by the rule of Art. 94 (2)(a) according to which the provisions of Reg. 1215/2012 that conflict with Art. 97 and Art. 103 do not apply in respect of the actions referred to in Art. 96 for which the Community trade mark courts have exclusive jurisdiction. Art. 94 (2), however, modifies the applicability of Reg. 1215/2012 only with regard to proceedings before the Community trade mark courts pursuant to Art. 96. In the event of other proceedings relating to Community trade marks (Art. 106), complete recourse to Reg. 1215/2012 is thus possible unless the rules in Art. 106 and Art. 107 constitute leges speciales. 3 Based on its legal nature, Art. 94 (1) constitutes a reference to the legal reason of another provision. Even if the provisions of Reg. 1215/2012 apply pursuant to Art. 94 (1), the special prerequisites under the respective provisions of Reg. 1215/2012, which may be modified by Art. 94 (2), must thus be fulfilled. 1

B. Proceedings pursuant to Art. 96 CTMR 4

The actions mentioned in Art. 96 for which the Community trade mark courts have exclusive jurisdiction are subject to special provisions regulated in the CTMR: Such special provisions take precedence within their scope of applicability. Art. 94 (1) and (2) block recourse to Reg. 1215/2012 in this respect.

I. Non-applicable provisions of Reg. 1215/2012 5

The provisions concerning international jurisdiction contained in Art. 4 et seq. of Reg. 1215/2012 are largely superseded by Art. 97 with regard to proceedings for which the Community trade mark courts have exclusive jurisdiction. For instance, the place of jurisdiction where the act of infringement was committed under Art. 97 (5) conflicts with 930

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Art. 94 CTMR

Art. 7 No. 2 of Reg. 1215/2012, so that in the relationship between Art. 94 (1)1 and Art. 97 (5), the latter takes precedence. While ultimately superfluous Art. 94 (2)(a) thus explicitly declares Art. 7 No. 2 of Reg. 1215/2012 non-applicable. Art. 4 of Reg. 1215/2012, which has become a part of Art. 97 (1), is also non-applicable. However, Art. 97 (1) alt. 2 goes further than Art. 4 of Reg. 1215/2012 to such extent that it also establishes jurisdiction of the Community trade mark court in a Member State where the defendant runs an establishment even if he is not domiciled in a Member State. According to Art. 6 of Reg. 1215/2012 on the other hand if the defendant is not domiciled in a Member State, the national law on jurisdiction generally applies. This provision thus conflicts with Art. 97 (1) alt. 2 and Art. 97 (2) and (3). It is thus declared non-applicable to proceedings pursuant to Art. 96 in Art. 94 (2)(a). Art. 7 No. 1 and 5 of Reg. 1215/2012 are also non-applicable. The rule on provisional and protective measures contained in Art. 35 of Reg. 1215/2012 has become a part of Art. 103 and is therefore declared non-applicable in Art. 94 (2)(a).

II. Applicable provisions of Reg. 1215/20122 What does not conflict with the provisions of Art. 95 et seq. and is not explicitly 6 declared non-applicable in Art. 94 (2) either is the special jurisdiction under Art. 8 of Reg. 1215/2012. Insofar the jurisdiction for joinders of parties (Art. 8 No. 1 of Reg. 1215/2012) and for counterclaims (Art. 8 No. 3 of Reg. 1215/2012) are of particular importance. Furthermore, the provisions on agreements on jurisdiction in Art. 25 of Reg. 1215/2012, on entering an appearance without contesting jurisdiction pursuant to Art. 26 of Reg. 1215/20123 and on related actions pursuant to Art. 29 and Art. 30 of Reg. 44/2001 continue to apply. Art. 24 (4) of Reg. 1215/2012 establishes the exclusive jurisdiction of the domicile of 7 the Office if the validity of a trade mark was contested. The rule conflicts with Art. 97 to the extent the counterclaim pursuant to Art. 100 that contests the validity of the Community trade mark is concerned. In contrast to Art. 79 (3)(a) CDR, Art. 94 (2) does not explicitly exclude the application of this provision. Against the background of the general precedence of Art. 95 et seq. for actions pursuant to Art. 964, however, Art. 97 supersedes Art. 24 (4) of Reg. 1215/2012 in this respect.

1. Place of jurisdiction for a joinder of defendants (Art. 8 No. 1 of Reg. 1215/2012) According to Art. 8 No. 1 of Reg. 1215/2012, several persons domiciled in different 8 contracting states or Member States may be sued jointly in the courts at the place where any of the joined parties is domiciled or registered to avoid the risk of irreconcilable judgments resulting from separate proceedings. This requires, however, that the claims are so closely connected that it is expedient to hear and rule on them together (connectivity). Regarding the general prerequisites for application, a distinction must be made 9 between the (main) defendant and the joined parties that may be sued at the defendant’s place of jurisdiction of the so-called anchor claim via Art. 8 No. 1 of 1

‘Unless otherwise specified in this Regulation …’. For the extent of jurisdiction of a court the international jurisdiction of which is based on Reg. 1215/ 2012, s. Art. 98, mn. 9 et seq. 3 Regarding Art. 25 and Art. 26 of Reg. 1215/2012, s. the comment in Art. 97, mn. 25–30. 4 S. Art. 94 (1), mn. 1, 2. 2

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Community Trade Mark Regulation

Reg. 1215/2012. Art. 8 of Reg. 1215/2012 initially requires that each joined party is domiciled in the Community. International jurisdiction for a joined party domiciled in a third country cannot be established by Art. 8 of Reg. 1215/2012.5 However, Art. 94 (2)(c) extends the scope of application of Art. 8 of Reg. 1215/2012 in such a way that an establishment of the respective joined party in the Community suffices. Accordingly, international jurisdiction for joined parties from third countries that have neither a domicile nor an establishment in the Community cannot be established by Art. 8 of Reg. 1215/2012. Art. 8 No. 1 of Reg. 1215/2012 may establish international jurisdiction for a joined party only if the anchor claim was filed at the defendant’s domicile.6 Pursuant to Art. 94 (2)(c), it suffices in respect of the actions and claims referred to in Art. 96 in this regard that the anchor claim was filed at the place where a defendant has an establishment. Art. 8 No. 1 of Reg. 1215/2012 can thus be applied only to proceedings pursuant to Art. 96 if the anchor claim was filed at the place of jurisdiction defined in Art. 97 (1) or Art. 97 (2). Furthermore, the claims must be so closely connected (connectivity) that it is expedient to hear and rule on them together to avoid the risk of irreconcilable judgments resulting from separate proceedings. This connectivity between the proceedings requires that the same factual and legal situation is relevant for all claims.7 In the event of several claims owing to infringement of a European patent in different contracting states, for instance, that are raised against infringers from these contracting states at a joint place of jurisdiction, the CJ considered the criterion of the same legal situation not fulfilled because protection of a European patent from infringement was governed by national law.8 In the event of infringement of Community trade marks, a distinction must be made between the cease-and-desist claim directly regulated in Art. 9 and Art. 102 (1) and the so-called ancillary claims to information, compensation, etc. As far as the cease-and-desist claim regulated in the CTMR is concerned, this connectivity is to be confirmed in cases of so-called infringement chains, for example if manufacturers, importers, supplier or wholesalers and retailers involved in the trade mark infringement are domiciled in different Member States.9 In such cases, it is expedient to hear and rule on all claims together to avoid the risk of irreconcilable judgments resulting from separate proceedings despite the same factual and legal situation.10 Furthermore, in view of the unitary character of the intellectual property right, the assessment is based on a legal situation that is the same for all defendants. The reason for this is that the Community trade mark, unlike the European bundle of patents, constitutes a supranational intellectual property right uniformly applicable throughout the EU.11 It has equal effect throughout the Community and it cannot be registered, transferred or surrendered or be the subject of a decision revoking the rights 5 CJ Case C-645/11 Land Berlin v Ellen Mirjam Sapir and Others, mn. 56, available at: www.curia.eu Õ search Case law; BGH Case V ZR 232/10 NJW 2014, 704, mn. 9; LG Du¨sseldorf Case 14 c O 194/11 GRUR-RR 2011, 361 – Tablet PC II, mn. 42. 6 CJ Case C-51/97 Re ´union europe´enne SA and Others v Spliethoff’s Bevrachtingskantoor BV and the Master of the vessel Alblasgracht V002 [1998] ECR I-06511, mn. 44. 7 CJ Case C-539/03 Roche Nederland BV and Others v Frederick Primus and Milton Goldenberg [2006] ECR I-06535, mn. 26; BGH Case I ZR 11/04 GRUR 2007, 705 – Aufarbeitung von Fahrzeugkomponenten, mn. 14. 8 CJ Case C-539/03 Roche Nederland BV and Others v Frederick Primus and Milton Goldenberg [2006] ECR I-06535, mn. 29 et seq. 9 BGH Case I ZR 11/04 GRUR 2007, 705 – Aufarbeitung von Fahrzeugkomponenten, mn. 17. 10 BGH Case I ZR 11/04 GRUR 2007, 705 – Aufarbeitung von Fahrzeugkomponenten, mn. 17. 11 BGH Case I ZR 11/04 GRUR 2007, 705 – Aufarbeitung von Fahrzeugkomponenten, mn. 19.

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Art. 94 CTMR

of the proprietor or declaring it invalid, save in respect of the whole Community. Also, its use cannot be prohibited save in respect of the whole Community unless otherwise provided for in the CTMR (Art. 1 (2)).12 Ancillary claims are not regulated in the CTMR itself. Such claims, however, were 14 harmonised within the Member States by Dir. 2004/48. Some legal scholars hold the view in this regard that there is an absence of the required connectivity because Art. 102 (1) and Art. 101 (2) leave the regulation of the ancillary claims to national law. Against this background, the place of jurisdiction of the joinder of parties thus does not exist in this respect.13 The opposite opinion according to which the prerequisites of Art. 8 No. 1 of Reg. 1215/2012 are always satisfied if several persons domiciled in different Member States infringe the Community trade mark appears more convincing, however.14 This opinion does not differentiate between the sanctions regulated and not regulated in the CTMR because if the joined parties infringe the Community trade mark, all of them infringe the uniformly protected Community trade mark. The close connection between the claims thus always exists. This view is supported by the fact that for the Community trade mark both the prerequisites for its being granted and those for its infringement result uniformly from the CTMR. The legal consequences regarding the subsequent claims that differ under national law do not change the fact that the prerequisites for trade mark infringement are uniformly regulated in the CTMR and that there is the risk of irreconcilable judgments in this regard. The essence and purpose of Art. 8 No. 1 of Reg. 1215/2012 is to avoid parallel proceedings as far as possible to prevent irreconcilable judgments from being rendered in two Member States. Furthermore – as already detailed – a minimum harmonisation has been reached by Dir. 2004/48 also regarding the legal consequences.

2. Counterclaim (Art. 8 No. 3 of Reg. 1215/2012) Art. 8 No. 3 of Reg. 1215/2012 regulates the special jurisdiction for the counterclaim. 15 The fact that the counter-defendant has its registered seat in a Member State is a prerequisite for the applicability of Art. 8 of Reg. 1215/2012 – and thus also of Art. 8 No. 3 of Reg. 1215/2012. In this case, too, Art. 94 (2)(c) extends the scope of application of Art. 8 No. 3 of Reg. 1215/2012 to the effect that an establishment in a Member State suffices. Moreover, the counterclaim must be based on the same facts as the action. Art. 8 No. 3 of Reg. 1215/2012 is not relevant for the counterclaim pursuant to 16 Artt. 96 (d), 100 for revocation or for declaration of invalidity because Art. 97 conclusively governs international jurisdiction. The actions mentioned in Art. 96 (a) and (c) can, however, definitely be brought forward as counterclaims. The provisions of international jurisdiction pursuant to Art. 97 and Art. 8 No. 3 of Reg. 1215/2012 compete in this respect. Art. 8 No. 3 of Reg. 1215/2012 also applies to the plaintiff’s counter-counterclaim, 17 which constitutes the plaintiff’s reaction to a counterclaim, for example pursuant to Art. 100.

3. Related actions The CTMR does not include any provisions with respect to parallel actions based on 18 the same Community trade mark. Art. 105 and Art. 100 concern different cases and 12

BGH Case I ZR 11/04 GRUR 2007, 705 – Aufarbeitung von Fahrzeugkomponenten, mn. 19. Lange, GRUR 2007, 107, 112. 14 BGH Case I ZR 11/04 GRUR 2007, 705 – Aufarbeitung von Fahrzeugkomponenten, mn. 16; Knaak, GRUR 2001, 21, 25; Fayaz GRURInt 2009, 459, 467. 13

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CTMR Art. 94

Community Trade Mark Regulation

cannot be applied to this situation. The gap resulting from this is filled by Art. 94 (1) in conjunction with Art. 29 and Art. 30 of Reg. 1215/2012. However, Art. 29 and Art. 30 of Reg. 1215/2012 apply only to ‘actions’. In proceedings for interim legal protection, Art. 29 and Art. 30 of Reg. 1215/2012 do not apply. a) Art. 29 of Reg. 1215/2012. According to Art. 29 of Reg. 1215/2012, the court other than the court first seised has to suspend its proceedings and decline jurisdiction as soon as the jurisdiction of the court first seised is established if claims involving the same cause of claim (identity of claims) and between the same parties are brought before the courts of different Member States. 20 According to rulings rendered by the CJ, the claim is determined on the basis of both the ‘subject matter’ and the ‘basis’ of the action.15 The subject matter of the action is its purpose.16 The aim of the action is thus decisive.17 In the opinion of the CJ, an identical purpose of action is shown to exist, for example, if one action aims at the positive ascertainment that a liability exists and the second action aims at the ascertainment that a liability does not exist.18 The CJ defines the basis of the action as the facts and the rules of law on which the action is based.19 21 No identity of claims within the meaning of Art. 29 of Reg. 1215/2012 thus exists if the claims are not aimed at the same Member States.20 In such cases, the aims of these actions are not identical in terms of territory. Art. 29 of Reg. 1215/2012 thus does not exclude parallel enforcement of the rights based on a Community trade mark in different Member States with subject matters of the actions that are different in terms of territory. If the claims overlap in terms of territory, however, a suspension of the proceedings pursuant to Art. 29 of Reg. 1215/2012 comes into consideration. Based on the above statements, identity of claims exists, however, between an infringement action and an action for a declaration of non-infringement concerning the same facts and the same trade marks. The alleged infringer against whom action is taken by way of a warning may thus possibly decide strategically to file an action for a declaratory judgment of non-infringement with Community-wide effect in the court for the place where the proprietor of the trade mark is domiciled (see Art. 97 and Art. 98 (1)) in order to pre-empt the infringement action brought by the proprietor of the trade mark (a so-called ‘torpedo’). The court later seised with the relevant infringement claim must suspend its proceedings and decline jurisdiction pursuant to Art. 29 of Reg. 1215/2012. 19

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b) Art. 30 of Reg. 1215/2012. Art. 30 of Reg. 1215/2012 provides for the possibility of suspending proceedings where related actions are filed in the courts of different Member States. The situation when such a connection exists is defined in Art. 30 (3) of Reg. 1215/ 2012. It exists where the claims are so closely connected that it is expedient to hear and decide on them together to avoid the risk of irreconcilable judgments resulting from separate proceedings. The criteria for assessing the connection in terms of Art. 30 (3) of 15 CJ Case C-406/92 The owners of the cargo lately laden on board the ship ‘Tatry’ v the owners of the ship ‘Maciej Rataj’ [1994] ECR I-05439, mn. 38 et seq. 16 CJ Case C-406/92 The owners of the cargo lately laden on board the ship ‘Tatry’ v the owners of the ship ‘Maciej Rataj’ [1994] ECR I-05439, mn. 41. 17 CJ Case C-39/02 Mærsk Olie & Gas A/S v Firma M. de Haan en W. de Boer [2001] ECR I-09657, mn. 35. 18 CJ Case C-406/92 The owners of the cargo lately laden on board the ship ‘Tatry’ v the owners of the ship ‘Maciej Rataj’ [1994] ECR I-05439, mn. 38 et seq. 19 CJ Case C-406/92 The owners of the cargo lately laden on board the ship ‘Tatry’ v the owners of the ship ‘Maciej Rataj’ [1994] ECR I-05439, mn. 41. 20 OGH Case 4 Ob 58/03 p GRURInt 2005, 1039, 1041 – Boss-Zigaretten V.; OLG Du ¨ sseldorf Case MarkenR 2006, 369 – Rodeo Drive, mn. 14 et seq.

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Reg. 1215/2012 were specified in the CJ judgment in the case ‘Roche Netherlands’.21 Accordingly, it is necessary for the claims to be based on the same factual and legal situation. Only if deviating judgments come about where the same factual and legal situation exists can irreconcilable judgments in terms of Reg. 1215/2012 exist.

C. Proceedings other than those mentioned in Art. 96 The restrictions of Art. 94 (2)(a) and (b) and the extension of Art. 94 (2)(c) are not 23 applicable to proceedings relating to Community trade marks that are not mentioned in Art. 96. Nor are the rules on jurisdiction in Art. 97 applicable to such proceedings. Therefore, it very generally remains the case that Art. 94 (1) refers to the provisions of Reg. 1215/2012 unless Art. 106 contains prevailing provisions.

D. Recognition and enforcement of judgments Pursuant to Art. 94 (1) as read with Art. 36 (1) of Reg. 1215/2012, the other Member 24 States are generally obligated to recognise the decisions of Community trade mark courts and thus confer a cross-border scope to them if they had cross-border jurisdiction pursuant to Art. 98.22 Enforcement of judgments of Community trade mark courts is governed by Art 94 (1) as read with Art. 39 et seq. of Reg. 1215/2012. The judgments of courts of the Member States that did not act as Community trade 25 mark courts are recognised and enforced in other Member States in accordance with the general rules of Reg. 1215/2012 (see Art. 94 (1) as read with Art. 36 et seq., Art. 39 et seq. of Reg. 1215/2012).

SECTION 2 Disputes concerning the infringement and validity of Community trade marks Article 95 Community trade mark courts 1. The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, hereinafter referred to as ‘Community trade mark courts’, which shall perform the functions assigned to them by this Regulation. 2. Each Member State shall communicate to the Commission within three years of the entry into force of Regulation (EC) No 40/94 a list of Community trade mark courts indicating their names and their territorial jurisdiction.

21 CJ Case C-539/03 Roche Nederland BV and Others v Frederick Primus and Milton Goldenberg [2006] ECR I-06535, mn. 22 et seq. 22 CJ Case C-235/09 DHL Express France SAS v Chronopost SA [2011] ECR I-02801, mn. 49.

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CTMR Art. 95

Community Trade Mark Regulation

3. Any change made after communication of the list referred to in paragraph 2 in the number, names or territorial jurisdiction of the courts shall be notified without delay by the Member State concerned to the Commission. 4. The information referred to in paragraphs 2 and 3 shall be notified by the Commission to the Member States and published in the Official Journal of the European Union. 5. As long as a Member State has not communicated the list as stipulated in paragraph 2, jurisdiction for any proceedings resulting from an action or application covered by Article 96, and for which the courts of that State have jurisdiction under Article 97, shall lie with that court of the State in question which would have jurisdiction ratione loci and ratione materiae in the case of proceedings relating to a national trade mark registered in that State. Rc. 15 Content I. II. III. IV.

General remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Designation of Community trade mark courts . . . . . . . . . . . . . . . . . . . . . . . . . Jurisdiction prior to designation of Community trade mark courts . Community trade mark courts . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 3 5 9

I. General remarks Art. 95 (1) provides for the Member States to designate in their territories as limited a number as possible of national courts and tribunals of first and second instance1 to perform the functions assigned to them by this Regulation. Therefore, it is not required under the CTMR that the Member States establish new courts to perform the functions arising from the CTMR. On the contrary, the CTMR also allows the designation of already existing courts. These courts of first and second instance designated by the Member States perform the functions assigned to them by the CTMR as ‘Community trade mark courts’. If a further appeal is permissible against the decisions of the court of second instance under national law (Art. 105 (3)), these appellate courts do not decide as Community trade mark courts because only Community trade mark courts of first and second instance are to be designated. Community trade mark courts are not direct Community courts or bodies of the EU. Rather, they are national courts of first and second instance that act in the function of the Community trade mark courts if they have to apply Community trade mark law. The designation as Community trade mark court results in an assignment of functions. 2 The designation of Community trade mark courts is of significance in view of the rule on subject matter jurisdiction (Art. 96) because Community trade mark courts have exclusive subject matter jurisdiction for the actions mentioned there. The Community trade mark courts do not have subject matter jurisdiction for other lawsuits related to Community trade marks on the basis of Art. 96 alone. The Member States are free, however, to also refer to Community trade mark courts lawsuits related to Community trade marks that are not mentioned in Art. 96. 1

1

S. in this regard Art. 105.

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Community trade mark courts

Art. 95 CTMR

II. Designation of Community trade mark courts Pursuant to Art. 95 (2), each Member State must communicate to the Commission 3 within three years of the entry into force of the CTMR a list of Community trade mark courts indicating their names and their territorial jurisdiction. Any change made after communication of the list in the number, names or territorial jurisdiction of the courts is to be notified without delay after occurrence of the change by the Member State concerned to the Commission (Art. 95 (3)). Both the originally communicated list of the Community trade mark courts pursuant to Art. 95 (2) and the subsequent changes concerning the list are published in the Official Journal of the European Union. According to the wording of Art. 95 (1), the legislative body intended to establish as 4 limited a number as possible of Community trade mark courts to focus the expertise in this area on few and thus specialised courts. With the exception of Bulgaria and Croatia, which did, however, not accede to the EU until 1 July 2013, all Member States have designated Community trade mark courts to the Commission. Not all Member States, however, have satisfied the request of the EU to designate as limited a number as possible of courts when designating the Community trade mark courts; this particularly applies to Germany, Italy, Portugal and the United Kingdom.

III. Jurisdiction prior to designation of Community trade mark courts As long as a Member State has not communicated a list of the Community trade 5 mark courts and the Community trade mark courts of this Member State would have international jurisdiction under Art. 97 – if they had already been designated – pursuant to Art. 95 (5), any proceedings for which the Community trade mark courts have exclusive jurisdiction (Art. 96) will lie with that court of the Member State in question that would have jurisdiction ratione loci and ratione materiae in the case of proceedings relating to a national trade mark registered in that Member State. Courts having jurisdiction based on Art. 95 (5) do not act as Community trade mark 6 courts according to the wording of the provision. Such courts are thus not entitled to powers the CTMR confers only to the Community trade mark courts. Then again, the courts having jurisdiction pursuant to Art. 95 (5) explicitly also have jurisdiction for counterclaims for a declaration of invalidity of the Community trade mark, so that national courts having jurisdiction resulting from Art. 95 (5) may also make decisions with Community-wide effect2 without acting as Community trade mark courts. Overall, there are thus some indications that the regulations on Community trade mark courts should be applied mutatis mutandis to the courts having jurisdiction under Art. 95 (5). As long as a Member State has thus not yet communicated a list of Community trade mark courts, the courts having jurisdiction under Art. 95 (5) are to be regarded as Community trade mark courts. This interpretation is finally also suggested by the systematic position of the provision of Art. 95 (5). In addition to the exclusive subject matter jurisdiction regulated in Art. 96 (1) and 7 the international jurisdiction regulated in Art. 97, Art. 95 (5) establishes local jurisdiction of the court having local jurisdiction under national law. According to the view 2 S. with regard to the scope of a decision within the framework of the counterclaim under Art. 100, Art. 98, mn 28.

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CTMR Art. 95

Community Trade Mark Regulation

held by the author, the provisions applicable to Community trade mark courts apply accordingly to courts having jurisdiction resulting from Art. 95 (5). On this basis, the rule on the local jurisdiction in Art. 95 (5) is obsolete because it results from the reference of Art. 101 (3) to the lex fori of the Member State anyway.3 8 If more than one court has local jurisdiction in a Member State under national law, a conflict of local jurisdiction is to be solved applying the rules of procedure under national law pursuant to Art. 101 (3).

IV. Community trade mark courts 9

According to the details communicated to the Commission and forwarded to the Office of Harmonisation, the Member States designated the following Community trade mark courts of (1) first instance and (2) second instance:4 Belgique/Belgie¨ (1) Tribunal de Commerce de Bruxelles/Rechtbank van Koophandel te Brussel (2) Cour d’appel de Bruxelles/Hof van Beroep te Brussel ˇ eska´ republika C (1) Meˇstsky´ soud v Praze (2) Vrchnı´ soud v Praze Danmark (1) Sø – og Handelsretten, København (2) Højesteret, København Deutschland (1) Landgericht Mannheim Landgericht Stuttgart Landgericht Nu¨rnberg-Fu¨rth Landgericht Mu¨nchen I Landgericht Berlin Landgericht Bremen Landgericht Hamburg Landgericht Frankfurt am Main Landgericht Rostock Landgericht Braunschweig Landgericht Du¨sseldorf Landgericht Koblenz Landgericht Frankenthal (Pfalz) Landgericht Saarbru¨cken Landgericht Leipzig Landgericht Magdeburg Landgericht Kiel Landgericht Erfurt (2) Oberlandesgericht Karlsruhe Oberlandesgericht Stuttgart 3

S. Art. 101, mn. 12 with regard to the taxonomy of Art. 101 and Art. 94. A list of the Community trade mark courts can be downloaded from www.oami.eu Õ Law & Practice Õ Decisions and Communications of the President Õ search Communications No 14/04 Õ Annex. 4

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Oberlandesgericht Nu¨rnberg Oberlandesgericht Mu¨nchen Kammergericht Berlin Hanseatisches Oberlandesgericht Bremen Hanseatisches Oberlandesgericht Hamburg Oberlandesgericht Frankfurt am Main Oberlandesgericht Rostock Oberlandesgericht Braunschweig Oberlandesgericht Du¨sseldorf Oberlandesgericht Koblenz Pfa¨lzisches Oberlandesgericht Zweibru¨cken Saarla¨ndisches Oberlandesgericht Saarbru¨cken Oberlandesgericht Dresden Oberlandesgericht Naumburg Schleswig-Holsteinisches Oberlandesgericht Thu¨ringer Oberlandesgericht Eesti (1) Harju Maakohus (2) Tallinna Ringkonnakohus Ellas/Ella´ B (1) Tribunal de premie`re instance d’Athe`nes Tribunal de premie`re instance de Thessaloniki (2) Cour d’appel d’Athe`nes Cour d’appel de Thessaloniki ~a Espan (1) Juzgados de lo Mercantil de Alicante (2) Audiencia Provincial de Alicante France (1) Tribunal de grande instance de Paris (2) Cour d’appel de Paris Ireland (1) The High Court (2) The Supreme Court Italia (1) Tribunale Tribunale Tribunale Tribunale Tribunale Tribunale Tribunale Tribunale Tribunale Tribunale Tribunale Tribunale

di di di di di di di di di di di di

Bari Bologna Catania Firenze Genova Milano Napoli Palermo Roma Torino Trieste Venezia

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CTMR Art. 95 (2) Corte Corte Corte Corte Corte Corte Corte Corte Corte Corte Corte Corte

Community Trade Mark Regulation

d’appello di d’appello di d’appello di d’appello di d’appello di d’appello di d’appello di d’appello di d’appello di d’appello di d’appello di d’appello di

Kypros/K´ pro (1) District Court of District Court of District Court of District Court of (2) Supreme Court

Bari Bologna Catania Firenze Genova Milano Napoli Palermo Roma Torino Trieste Venezia

Nicosia Limassol Larnaca-Famagusta Paphos

Latvija (1) Rı¯gas apgabaltiesa (2) Augsta¯ka¯s tiesas Civillietu tiesu pala¯ta Lietuva (1) Vilniaus apygardos teismas (2) Apeliacinis Teismas Luxembourg (1) Tribunal d’Arrondissement de Luxembourg (2) Cour Supe´rieure de Justice Magyarorsza´g (1) Fo˝va´rosi Bı´ro´sa´g (2) Fo˝va´rosi ´Ite´lo˝ta´bla Malta (1) First hall of the Civil Court (2) The Court of Appeal Nederland (1) Arrondissementsrechtbank te ’s – Gravenhage (2) Gerechtshof te ’s – Gravenhage ¨ sterreich O (1) Handelsgericht Wien (2) Oberlandesgericht Wien Polska (1) Sa˛d Okre˛gowy w Warszawie (2) Sa˛d Apelacyjny w Warszawie Portugal (1) Tribunal do Come´rcio de Lisboa Tribunal do Come´rcio de Vila Nova de Gaia

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Community trade mark courts

(2) Tribunal Tribunal Tribunal Tribunal Tribunal Tribunal

da da da da da da

Relaça˜o Relaça˜o Relaça˜o Relaça˜o Relaça˜o Relaça˜o

Art. 95 CTMR

de Coimbra de Evora de Faro de Guimara˜es de Lisboa de Porto

Slovenija (1) Okrozˇno sodisˇèe v Ljubljani (2) Visˇje sodisˇèe v Ljubljani Slovensko (1) Okresny´ su´d v Bratislave I Okresny´ su´d v Banskej Bystrici Okresny´ su´d v Kosˇiciach I (2) Krajsky´ su´d v Bratislave Krajsky´ su´d v Banskej Bystrici Krajsky´ su´d v Kosˇiciach Suomi/Finland (1) Helsingin ka¨ra¨jo¨ikeus (2) Helsingin hovioikeus Sverige (1) Stockholms tingsra¨tt (2) Svea hovra¨tt, Stockholm United Kingdom (1) England and Wales: The High Court The Patents County Court Birmingham County Court Bristol County Court Cardiff County Court Leeds County Court Liverpool County Court Manchester County Court Newcastle upon Tyne County Court Scotland: The Court of Session Northern Ireland: The High Court (2) The Court of Appeal

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CTMR Art. 96

Community Trade Mark Regulation

Article 96 Jurisdiction over infringement and validity The Community trade mark courts shall have exclusive jurisdiction: (a) for all infringement actions and – if they are permitted under national law – actions in respect of threatened infringement relating to Community trade marks; (b) for actions for declaration of non-infringement, if they are permitted under national law; (c) for all actions brought as a result of acts referred to in Article 9 (3), second sentence; (d) for counterclaims for revocation or for a declaration of invalidity of the Community trade mark pursuant to Article 100. Rc. 15 Content A. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Actions for which the Community trade mark courts have exclusive jurisdiction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Actions and counterclaims . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Infringement actions (Art. 96 (a) CTMR) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Action for declaration of non-infringement (Art. 96 (b) CTMR) . . . . IV. Actions for reasonable compensation pursuant to Art. 9 (3)(2) CTMR (Art. 96 (c) CTMR) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Counterclaims for revocation or for a declaration of invalidity (Art. 96 (d) CTMR) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 4 4 7 10 12 13

A. General Community trade mark courts have exclusive jurisdiction over proceedings on the merits of the types specified in Art. 96. These are infringement actions (Art. 96 (a)), actions for declaration of non-infringement (Art. 96 (b)), actions for reasonable compensation as referred to in Art. 9 (3)(2) (Art. 96 (c)) and counterclaims for revocation or for a declaration of invalidity of a Community trade mark pursuant to Art. 100 (Art. 96 (d)). Other actions based on Community trade marks, such as actions for deregistration of national marks based on Community trade marks, are not subject to the exclusive jurisdiction of the Community trade mark courts. According to Art. 106 and Art. 107, the courts of the respective Member States have jurisdiction over such actions. The CTMR does not recognise an isolated action for deregistration owing to revocation or invalidity. In this respect, an application for revocation or a declaration of invalidity of a Community trade mark may be submitted to OHIM, according to Artt. 56, 52, 53. 2 Community trade mark courts have exclusive jurisdiction for provisional and protective measures only when measures with Community-wide effect are requested (Art. 103 (2)). Otherwise, in addition to the Community trade mark court that has jurisdiction over the proceedings on the merits in actions for provisional and protective measures, all courts in the Member States have jurisdiction (Art. 103 (1)). These courts cannot, however, render judgments with Community-wide effect.1 1

1

Arg. ex. Art. 103 (2).

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Jurisdiction over infringement and validity

Art. 96 CTMR

Because the jurisdiction of Community trade mark courts is exclusive, according to 3 Art. 96 (1), parties to a dispute may not establish the jurisdiction of a different court that is not a Community trade mark court by way of an agreement on jurisdiction or because a defendant enters an appearance without contesting jurisdiction. This is confirmed by Art. 97 (3) in conjunction with Art. 25 and Art. 26 of Reg. 1215/2012, according to which the parties may establish the jurisdiction of other Community trade mark courts, but not other courts in general.

B. Actions for which the Community trade mark courts have exclusive jurisdiction I. Actions and counterclaims Art. 96 makes a distinction, with respect to the jurisdiction of the Community trade 4 mark courts, between ‘actions’ and ‘counteractions’ (or ‘counterclaims’). Therefore, according to Art. 96 (a)–(c), Community trade mark courts have exclusive jurisdiction for infringement actions and actions in respect of threatened infringement relating to Community trade marks, actions for declaration of non-infringement and actions for reasonable compensation as referred to in Art. 9 (3)(2). In addition, Community trade mark courts have jurisdiction for counterclaims for revocation or for declarations of invalidity of Community trade marks pursuant to Art. 100. The rule in Art. 96 (d) on the exclusive jurisdiction of the Community trade mark 5 courts for counterclaims as referred to under Art. 100 is logical. For instance, the CTMR does not provide for any option to claim that Community trade marks are invalid before courts outside the procedure before the Office as provided for under Art. 56. Only in an infringement action should the defendant be able to submit the plea of invalidity, which can then be introduced into the procedure by way of counterclaim. It is conceivable, on the other hand, that the actions mentioned in Art. 96 (a)–(c) can 6 also be introduced into a procedure by way of counterclaim. In accordance with the essence and purpose of the establishment of Community trade mark courts to bundle expertise in only a few courts, and because the decision-making and the res judicata with regard to such counterclaims do not differ from the decision-making and the res judicata with regard to such actions, Art. 96 (a)–(c) is applicable also to such actions by which procedures such as those set out in Art. 96 (a)–(c) are introduced into a procedure by way of counterclaim. Community trade mark courts thus have exclusive jurisdiction also over such counterclaims.

II. Infringement actions (Art. 96 (a) CTMR) Community trade mark courts have exclusive jurisdiction over all actions having the 7 subject matter of infringement or threatened infringement relating to a Community trade mark. Art. 96 (a) does not force the Member States to make a form of action available for threatened infringements though. To the extent national law allows such actions, however, they must be applied in the event of a threatened infringement relating to Community trade marks. Carsten Menebro¨cker

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CTMR Art. 96

Community Trade Mark Regulation

The subject matter of an action is determined by the plaintiff. This includes all actions in which the plaintiff claims to have a conclusive cause of action according to which there has been an infringement or threatened infringement of a Community trade mark. These are all actions by which sanctions pursuant to Art. 102 can be sought based on an interference with the rights conferred on the proprietor of the Community trade mark as set out in Art. 9. 9 To be mentioned is – of course – the right to injunctive relief resulting from Art. 9 (1) and Art. 102 (1). The infringement actions provided for under Art. 96 (a) also include, however, such actions with which ancillary claims (such as claims for information, compensation, remedy, etc.) based on the infringement of a Community trade mark are supposed to be enforced, for which Artt. 101 (2) and 102 (2) refer to applicable national law.2 The exclusive allocation of such actions to the Community trade mark courts is always justified if the special expertise bundled in these courts is concerned. This is likely to always be the case if the asserted claim results directly from the infringement of a Community trade mark. Only aspects connected indirectly with the infringement, such as rights to injunctive relief, compensation or a contractual penalty (liquidated damages) based on a cease-and-desist commitment previously submitted owing to the infringement of a Community trade mark, do not justify the exclusive jurisdiction of the Community trade mark courts. The subject matter of such actions is not the infringement of a Community trade mark. 8

III. Action for declaration of non-infringement (Art. 96 (b) CTMR) Art. 96 (b) does not itself establish the form of an action for a declaratory judgment that a claim is not justified with respect to non-infringement of Community trade marks. This rule provides merely that – if the law of the forum of a Community trade mark court provides for such actions – the Community trade mark courts have exclusive jurisdiction if the action concerns a declaration of non-infringement of a Community trade mark. 11 Actions for a declaration of non-infringement of a Community trade mark are actions in which the specific conduct of the plaintiff does allegedly not infringe the defendant’s Community trade mark. In this context, it is generally irrelevant how the plaintiff establishes the fact that the Community trade mark is not infringed. For instance, the plaintiff may argue to establish that a sign used by the plaintiff is not likely to be confused with the defendant’s Community trade mark or dispute an alleged infringement with respect to the actual allegations made by the defendant. The plaintiff may not, however, plead that the Community trade mark is invalid or has been revoked within the framework of an action for declaration of non-infringement of a Community trade mark. According to Art. 99 (1), the Community trade mark courts must treat a Community trade mark as valid unless its validity is put at issue by the defendant with a counterclaim for revocation or for a declaration of invalidity. It is set out explicitly in Art. 99 (2) that the validity of a Community trade mark may not be put in issue in an action for a declaration of non-infringement. This is ultimately confirmed in Art. 99 (3). According to this provision, a plea relating to revocation or invalidity of the Community trade mark may be submitted only within the framework of a defence against the actions referred to in Art. 96 (a) and (c). The submission of these pleas by the defendant within the framework of an action for declaration of non-infringement of a Community 10

2

For details s. Art 101, mn. 5 et seq. and Art. 102, mn. 14 et seq.

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International jurisdiction

Art. 97 CTMR

trade mark pursuant to Art. 96 (b) does not come into consideration because the defendant in that scenario is the very proprietor of the right. Even if one were to disregard this aspect in light of the procedural situation of switched roles in an action for declaration of non-infringement of a Community trade mark, it would not be possible to apply Art. 99 (3) to the actions mentioned in Art. 96 (b) because this provision does not refer to Art. 96 (b).

IV. Actions for reasonable compensation pursuant to Art. 9 (3)(2) CTMR (Art. 96 (c) CTMR) A not insignificant period of time can pass between the date of application for 12 registration and the date of registration of a Community trade mark. This applies particularly where an opposition is filed against an application because the opposition proceedings delay the registration even more. The proprietor of a Community trade mark may not, however, oppose the use of a mark based on likelihood of confusion until it has been entered into the register and the registration has been published (see Art. 9 (3)(1)). Against this background, Art. 9 (3)(2) provides, to the benefit of the proprietor of the mark, that the proprietor is entitled to ‘reasonable compensation’ for the use of a conflicting mark occurring between the publication of the Community trade mark application and the publication of the registration of the trade mark. The Community trade mark courts have exclusive jurisdiction over actions with which such reasonable compensation is claimed.

V. Counterclaims for revocation or for a declaration of invalidity (Art. 96 (d) CTMR) In an action concerning the infringement of a Community trade mark, the defendant 13 has the option of raising a defence by way of a counterclaim against the validity of the Community trade mark pursuant to Art. 100. The Community trade mark courts have exclusive jurisdiction over such counterclaims.

Article 97 International jurisdiction 1. Subject to the provisions of this Regulation as well as to any provisions of Regulation (EC) No 44/2001 applicable by virtue of Article 94, proceedings in respect of the actions and claims referred to in Article 96 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment. 2. If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment. 3. If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat. Carsten Menebro¨cker

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CTMR Art. 97

Community Trade Mark Regulation

4. Notwithstanding the provisions of paragraphs 1, 2 and 3: (a) Article 23 of Regulation (EC) No 44/2001 shall apply if the parties agree that a different Community trade mark court shall have jurisdiction; (b) Article 24 of Regulation (EC) No 44/2001 shall apply if the defendant enters an appearance before a different Community trade mark court. 5. Proceedings in respect of the actions and claims referred to in Article 96, with the exception of actions for a declaration of non-infringement of a Community trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act within the meaning of Article 9 (3), second sentence, has been committed. Rc. 17 Bibliography: Fayaz, ‘Sanktionen wegen der Verletzung von Gemeinschaftsmarken: Welche Gerichte sind zusta¨ndig und welches Recht ist anzuwenden?’ (1. Teil), GRURInt 2009, 459–469; Kur, ‘Durchsetzung gemeinschaftsweiter Schutzrechte: Internationale Zusta¨ndigkeit und anwendbares Recht – Zugleich Anmerkung zu den Entscheidungen’, EuGH, Rs. C-360/12 – Coty und EuGH, Rs. C-479/12 – Gantzsch; GRURInt 2014, 749–760; Leible/Mu¨ller, ‘Der Begriff der Niederlassung im Sinne von Art. 82 Abs. 1 Alt. 2 GGV und Art. 97 Abs. 1 Alt. 2 GMV’, WRP 2013, 1–8; Sosnitza, ‘Der Grundsatz der Einheitlichkeit im Verletzungsverfahren der Gemeinschaftsmarke’, GRUR 2011, 465–472.

Content A. General remarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Relation between Art. 97 and other provisions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Jurisdiction of the ‘domicile courts’ . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Domicile . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Establishment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Seat of the Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D. Court at the place where the infringement was committed . . . . . . . . . . . . . . . I. Place where infringement was committed . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Action for a (negative) declaratory judgment . . . . . . . . . . . . . . . . . . . . . . . . . . . E. Jurisdiction under Art. 97 (4) CTMR in conjunction with Reg. 1215/2012 I. Agreement on jurisdiction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Entering an appearance without contesting jurisdiction. . . . . . . . . . . . . . .

1 3 5 6 9 13 14 15 19 21 22 26

A. General remarks 1

The international jurisdiction of the Community trade mark courts in proceedings on the merits is governed by Art. 97 This article initially provides for a hierarchically ordered jurisdiction of ‘domicile courts’1 (the courts where the defendants or the plaintiffs have their domicile), which is based on three connecting factors that must be applied in the order mentioned there. Accordingly, as a rule, the Community trade mark courts of the Member State in which (1) the defendant is domiciled (or has an establishment) have international jurisdiction. If the defendant is neither domiciled nor has an establishment within the Community, the Community trade mark courts of the Member State in which (2) the plaintiff is domiciled (or has an establishment) have international jurisdiction. If also the plaintiff is neither domiciled nor has an establishment in any of the Member States of the Community, the Community trade mark courts of the Member State where the Office has its seat have international jurisdiction. In addition to this jurisdiction of domicile courts, the Community trade mark courts at the place where the act of infringement was committed can also have international jurisdiction. Finally, under 1

In some cases also called ‘central courts’, s. Sosnitza, GRUR 2011, 465, 467.

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International jurisdiction

Art. 97 CTMR

certain conditions, Art. 97 (4) provides for the establishment of jurisdiction of a Community trade mark court by agreement of the parties or by the defendant entering an appearance without contesting jurisdiction. The international jurisdiction regulated in Art. 97 must be differentiated from the 2 local jurisdiction of the Community trade mark courts within a Member State. It is true that the determination of local jurisdiction has practical relevance only if a Member State maintains at least two Community trade mark courts. The CTMR, however, does not contain any provision on the determination of local jurisdiction. In this regard, Art. 101 (3) makes reference to the respective national rules of procedure.2 The national Community trade mark courts thus apply their lex fori.

B. Relation between Art. 97 and other provisions The rules under Art. 97 apply ‘subject to the provisions of this Regulation’. Art. 97 3 therefore does not affect, in particular, the rule under Art. 103 according to which the courts of a Member State may have international jurisdiction for provisional and protective measures even if the courts of another Member State have jurisdiction as to the substance of the matter. The same applies to Art. 109, according to which a later seised court will not have jurisdiction with regard to parallel actions based on Community trade marks and national trade marks. It is thus clear that Art. 97 does not supersede the provisions under Artt. 103, 109 mentioned above as examples. Conversely, the applicability of these provisions by no means generally excludes the application of Art. 97. Art. 103 (2), which particularly implies that Art. 97 is applicable, also confirms this. Instead, the provision can be understood to mean that contradictions in the application of Art. 97 and other provisions of the CTMR are to be resolved in favour of the applicability of the other provisions of the CTMR. In such cases, Art. 97 is thus subordinate to Art. 103 or Art. 109. The taxonomy of the references in Art. 97 is somewhat more complex, however, and 4 can indeed be considered badly drafted. Art. 97 thus applies only subject to the provisions of Reg. 1215/2012, which are supposed to be applied in actions concerning Community trade marks, according to Art. 94. As interim result, it can be stated at this point that Art. 97 (1) has a very minor scope of application only and Art. 97 (5) is left without any area of application because of this reference, since Reg. 1215/2012 contains provisions in Art. 4 Reg. 1215/2012 and Art. 7 No. 2 of Reg. 1215/2012 that conflict with Art. 97 (1) and Art. 97 (5). Based on the wording of Art. 97 (1), no area of application thus remains for Art. 97 (5), and Art. 97 (1) will apply only if the defendant has an establishment within the Community. In such cases, however, Art. 4 and Art. 7 No. 2 of Reg. 1215/2012 would be applicable. Art. 94, on the other hand, makes the applicability of Reg. 1215/2012 subject to the provision that nothing deviating from this is provided for in the CTMR. The CTMR contains such an ‘other provision’, however: Art. 94 (2)(a), which excludes the applicability of the provisions of Reg. 1215/2012, which conflict with the area of application of Art. 97. Art. 97 thus ultimately retains its priority over Reg. 1215/2012.3 At best, this taxonomy of reference can be explained by pointing out the intention of the Community lawmakers to re-emphasise the general applicability of Reg. 1215/2012. 2

For details s. Art. 101, mn. 11 et seq. See also CJ Case C-360/12 Coty Germany GmbH v. First Note Perfumes NV, mn. 27, available at: www.curia.eu Õ search Case law. 3

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CTMR Art. 97

Community Trade Mark Regulation

C. Jurisdiction of the ‘domicile courts’ 5

Pursuant to Art. 97 (1) and (2), the connecting factor for international jurisdiction of a Community trade mark court is to be, as a rule, the place where the defendant or the plaintiff has its domicile. According to Art. 97 (1) and (2), an establishment of the defendant or the plaintiff is treated as equal to the domicile of the defendant or the plaintiff. If the international jurisdiction of a Community trade mark court cannot be determined pursuant to Art. 97 (1) and (2), that is, neither the plaintiff nor the defendant has a domicile or an establishment within the Community, the Community trade mark court of the Member State in which the Office (OHIM) has its seat has jurisdiction (Art. 97 (3)).

I. Domicile The CTMR itself does not contain any regulations on the determination of the domicile of a party within the meaning of Art. 97. Art. 94 (1) permits recourse to Reg. 1215/2012 in this respect. 7 For natural persons, the courts apply their national law in order to determine whether a party is domiciled on the territory of the Member State whose courts are seised of a matter pursuant to Art. 62 (1) of Reg. 1215/2012. In order to determine whether a party is domiciled in a Member State other than that whose courts have been seised of the matter, the court must apply the national provisions of that Member State in this regard. 8 For companies and legal entities, their domicile is located pursuant to Art. 63 (1) of Reg. 1215/2012 at the place where they have (1) their statutory seat4, (2) their central administration5 or (3) their principal place of business.6 Special rules apply for the purposes of the United Kingdom and Ireland pursuant to Art. 63 (2) of Reg. 1215/2012. For such purposes, ‘statutory seat’ means the registered office or, where there is no such office anywhere, the place of incorporation or, where there is no such place anywhere, the place under the law of which the formation took place. 6

II. Establishment No definition of the term establishment can be found in the CTMR. The court rulings rendered with regard to Reg. 1215/2012 can be applied, however, to interpret the term.7 There, the term ‘establishment’ can be found, in particular in Art. 7 No. 5 of Reg. 1215/ 2012 (‘…branch, agency or other establishment…’). 10 The terms ‘branch, agency or other establishment’ in Art. 5 No. 5 of Reg. 1215/2012 are interpreted in the rulings of the CJ as hyponyms (terms denoting subcategories) under the hypernym (umbrella term) establishment that need not be differentiated any further.8 9

4

Art. 63 (1)(a) of Reg. 1215/2012. Art. 63 (1)(b) of Reg. 1215/2012. 6 Art. 63 (1)(c) of Reg. 1215/2012. 7 Leible/Mu ¨ ller, WRP 2013, 1 et seq. 8 CJ Case C-14/76 A. De Bloos, SPRL v Socie ´te´ en commandite par actions Bouyer [1976] ECR 01497, mn. 21. 5

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International jurisdiction

Art. 97 CTMR

A distinction must be made between the term ‘establishment’ and the term ‘principal place of business’ used in Art. 63 (1)(c) of Reg. 1215/2012, however. According to prevailing opinion, such term must be interpreted as in Art. 54 (1) of the TFEU. Accordingly, the principal place of business is supposed to be the local focus of company-external business transactions. This requires the concentration of material and human resources to provide the deliverable offered on the market by the company, be it the manufacture of a product or the provision of a service.9 Establishment within the meaning of Art. 7 No. 5 of Reg. 1215/2012 is, by contrast, ‘a central place of business which has the appearance of permanency, such as the extension of a parent body, has a management and is materially equipped to negotiate business with third parties so that the latter, although knowing that there will if necessary be a legal link with the parent body, the head office of which is abroad, do not have to deal directly with such parent body but may transact business at the central place of business constituting its extension.’10 To distinguish this from Art. 63 (1)(c) of Reg. 1215/2012, this definition describes any establishment that is not a principal place of business within the meaning of Art. 63 (1)(c) of Reg. 1215/2012. An establishment must thus first have sufficient personnel and material in order to be 11 able to transact business with third parties. What is decisive for classification as an establishment on which to base a place of jurisdiction is, however, that the establishment is dependant on the principal place of business to a certain extent. For instance, an establishment must be recognisable as an extension of the foreign parent body.11 On the other hand, a certain independence of the establishment is expressed by the fact that it has its own management. However, the independence of an establishment must not exceed an upper limit. An establishment is thus subject to the supervision and direction of the parent body.12 Against this background, subsidiaries, exclusive distributors13 and commercial agents are not to be regarded as establishments, as a rule, because of their independence.14 Affiliates cannot be classified clearly. Companies acting globally often use national distribution companies integrated into the group to market their products. Although these companies are legally independent companies, they often have little economic independence because they are integrated into the group. The CJ, however, seems to consider the existence of one’s own legal personality as an exclusion criterion for the term establishment.15 Also, according to previous rulings of the CJ, however, classification of a company 12 having its own legal personality as an establishment of another company within the meaning of Art. 7 No. 5 of Reg. 1215/2012 is not impossible. On the contrary, the existence of an establishment can be assumed in such cases if such a legal situation ostensibly exists. The inner structure of a company often remains hidden from its business partner. As an outsider, a business partner is often unable to recognise who is actually entitled to direct and supervise of the establishment and whether this person is subordinated to the parent body. Consequently, the CJ presumes the existence of an establishment as soon as the appearance of an establishment is given towards third 9

Staudinger, in Rauscher (ed.), EuZPR/EuIPR, Art. 60 Bru¨ssel I-VO mn. 1. CJ Case C-33/78 E´tablissement Somafer SA v Saar-Ferngas AG [1978] ECR 02183, mn. 12. 11 CJ Case C-154/11 Ahmed Mahamdia v Re ´publique alge´rienne de´mocratique et populaire, mn. 48, available at: www.curia.eu Õ search Case law. 12 CJ Case C-14/76 A. De Bloos, SPRL v Socie ´te´ en commandite par actions Bouyer [1976] ECR 01497, mn. 20. 13 CJ Case C-14/76 A. De Bloos, SPRL v Socie ´te´ en commandite par actions Bouyer [1976] ECR 01497, mn. 23. 14 CJ Case C-139/80 Blanckaert & Willems PVBA v Luise Trost [1976] ECR 00819, mn. 13. 15 Opinion of the Court (1/03) of 7 February 2006 [2006] ECR I-1145, mn. 150. 10

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parties regarding the relationship between the parent body and the extension, although not all the objective characteristics of an establishment are shown to exist.16 The prerequisite for this is, however, that ‘two companies bear the same name and have a joint management and […] one of them, without being a branch or agency is dependent on the other, transacts business for the account of the other and thus acts as its extension in commercial relationships.’17

III. Seat of the Office 13

If neither the plaintiff nor the defendant is domiciled or has an establishment in the Community, Art. 97 (3) determines as the domicile court the jurisdiction of the Community trade mark court of the Member State where the Office has its seat. ‘Office’ within the meaning of the CTMR describes the Office for Harmonisation in the Internal Market pursuant to Art. 2. The Office has its seat in Alicante, Spain. The courts there have also been designated as Community trade mark courts by Spain.18

D. Court at the place where the infringement was committed 14

According to Art. 97 (5), proceedings in respect of the actions and claims referred to in Art. 96, with the exception of actions for a declaration of non-infringement of a Community trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act within the meaning of Art. 9 (3) 2 has been committed. For international jurisdiction, it is generally relevant in this regard whether the plaintiff has conclusively pleaded an act of infringement by the defendant committed within the respective Member State.19

I. Place where infringement was committed 15

Art. 97 (5) and the concept of ‘place where the infringement was committed’ must be interpreted independently taking into account not only the language of the provision but also its context and purpose. Such an interpretation has to take into account that the linking factor in Art. 97 (5) giving rise to jurisdiction relates to an active conduct on the part of the person causing that infringement.20 Therefore, the linking factor provided for by Art. 97 (5) CTMR refers to the Member State where the act giving rise to the alleged infringement occurred or may occur, but not the Member State where that infringement 16

CJ Case C-218/86 SAR Schotte GmbH v Parfums Rothschild SARL [1987] ECR 04905, mn. 16. CJ Case C-218/86 SAR Schotte GmbH v Parfums Rothschild SARL [1987] ECR 04905, mn. 13; OLG Du¨sseldorf Case I 20 U 175/11 GRUR-RR 2012, 200, 202 – Tablet-PC, mn. 50; denying establishment of a place of jurisdiction of the establishment by appearance within the framework of Art. 97: Leible/Mu¨ller, WRP 2013, 1, 7 et seq. 18 S. in this regard Art. 95, mn. 9. 19 Regarding Art. 7 No. 2 of Reg. 1215/2015 s.: CJ Case C-523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, mn. 26, available at: www.curia.eu Õ search Case law; BGH Case I ZR 1/11 GRUR 2012, 1065– Parfumflakon II, mn. 15. 20 CJ Case C-360/12 Coty Germany GmbH v. First Note Perfumes NV, mn. 34, available at: www.curia.eu Õ search Case law. 17

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produces its effects.21 Art. 97 (5) must therefore be interpreted independently of the concept of ‘the place where the harmful event occurred or might occur’ referred to in Art. 7 No. 2 of Reg. 1215/2012.22 The duality of linking factors, namely the place of the event giving rise to the damage and that where the damage occurred, as applied in relation to Art. 7 No. 2 of Reg. 1215/2012, do not apply to the interpretation of the concept of ‘the Member State in which the act of infringement has been committed or threatened’ as foreseen in Art. 97 (5).23 The Community trade mark courts of a relevant Member State thus also have interna- 16 tional jurisdiction for actions concerning Community trade marks pursuant to Art. 96 (a), (c) and (d) where the place of commission is in this Member State. The plaintiff has a right to choose.24 If the acts of infringement are committed in several Member States, the Community trade mark courts of numerous Member States may have parallel international jurisdiction, which opens the possibility of ‘forum shopping’ for the plaintiff. According to the interpretation of the CJ, the place of commission is the place where 17 the causal event giving rise to the damage occurred.25 In principle, the place of commission is thus any place where an act of infringement pursuant to Art. 9 is carried out, in particular where the sign is being affixed to the goods or to its’ packaging, where goods are being offered under the sign, put on the market or stocked for these purposes, places where goods are being imported into the EU or from where they are exported out of the EU and places where the sign is being used on business papers or in advertising. It is difficult sometimes though to exactly locate where the causal act giving rise to the damage occurred. This particularly holds true for infringement cases on the Internet. The CJ seems to be of the view that the availability of contents in a relevant Member 18 State may be sufficient for establishing a place of effect on the Internet when prosecuting violations of general personality rights26. Even before the CJ’s ‘Coty’ decision it was argued whether the mere availability of a content on the Internet is sufficient to establish a place of effect giving rise to jurisdiction in the Member State where the content is available. Rather, there are many reasons to suggest, that a multitude of venues otherwise existing should be limited to those in the jurisdiction of which a conflict of interests may actually have occurred. As a result it is required for the establishment of the place of jurisdiction of the tortious act on the basis of a trade mark infringement on the Internet that the Internet appearance is intended for the relevant public in this Member State and thus has a ‘commercial effect’ in that Member State.27 The CJ appears to have shared this view.28 However, as mentioned, in these cases jurisdiction was assumed under the concept that a ‘place of effect’ was established in that Member State. According to the CJ’s holding in ‘Coty’ this concept is no longer of avail as far as Art. 97 (5) is concerned. Pursuant to 21 CJ Case C-360/12 Coty Germany GmbH v. First Note Perfumes NV, mn. 34, available at: www.curia.eu Õ search Case law. 22 CJ Case C-360/12 Coty Germany GmbH v. First Note Perfumes NV, mn. 31, available at: www.curia.eu Õ search Case law. 23 CJ Case C-360/12 Coty Germany GmbH v. First Note Perfumes NV, mn. 32, available at: www.curia.eu Õ search Case law. 24 CJ Case C-523/10 Wintersteiger AG v. Products 4U Sondermaschinenbau GmbH, mn. 19, available at: www.curia.eu Õ search Case law. 25 S. CJ Case C-228/11 Melzer v. MF Lobal UK Ltd., mn. 25, available at: www.curia.eu Õ search Case law. 26 CJ joined Cases C-509/09 eDate Advertising GmbH v X and C-161 Olivier Martinez and Robert Martinez v MGN Limited [2011] ECR I-10269, mn. 52. 27 BGH Case I ZR 163/02 GRUR 2005, 431, 432 – HOTEL MARITIME, mn. 22; BGH Case I ZR 75/10 GRUR 2012, 621 – Oscar, mn. 21. 28 CJ Case C-324/09 L’Ore ´al SA and Others v eBay International AG and Others [2011] ECR I-06011, mn. 65; CJ joined Cases C-585/08 Peter Pammer v Reederei Karl Schlu¨ter GmbH & Co. KG and C-144/09 Hotel Alpenhof GesmbH v Oliver Heller [2010] ECR I-12527, mn. 84.

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‘Coty’ Art. 97 (5) requires some sort of active conduct on the part of the person causing the infringement in that Member State to give rise to jurisdiction. It therefore remains to be seen what the test to assume jurisdiction in Internet-cases will be.29 The most sensible approach would be to refer to the acts of substantive law that qualify for an infringement, in particular the acts of ‘offering for sale’ and/or ‘advertising’. Where an offer is specifically intended for the public in a Member State, that Member State will have jurisdiction as the infringement was committed there, too.30 On the other hand the CJ held that at AdWords, a technical advertising process is triggered by the advertiser ultimately on a server of the operator of the search engine used by the advertiser. The location where the causal event giving rise to the damage took place was therefore in principle considered to be the place where the server is located. Nevertheless, in view of the aim of foreseeability pursued by the rules on jurisdiction, the location of this server can in the CJ’s view not be regarded as the place of the causal event for the purposes of determining the place of commission because it is unclear where it is located. Against this background, the place of the establishment of the advertiser is to be regarded as the place of commission in this case, in the opinion of the CJ.31 The CJ made a similar decision in the case of violation of personality rights on the Internet. It interpreted the act of commission, even if in relation to Art. 7 No. 2 of Reg. 1215/2012, to such effect that if a violation of personality rights by contents that have been published on a website is asserted, persons feeling that their rights have been violated have the possibility of bringing an action for compensation for the entire loss incurred, inter alia, before the courts of the Member State in which the author of these contents is established.32 In this case, the CJ determines that the place of establishment of the author of the infringing contents is the place of commission. All in all it is at this point not entirely clear which road the CJ will take when it comes to locating the place where the causal event giving rise to the damage actually is within the meaning of Art. 97 (5) CTMR.

II. Action for a (negative) declaratory judgment By way of an action for a negative declaratory judgment, the plaintiff requests the declaration that a certain conduct does not infringe a Community trade mark. This will usually apply to cases in which the proprietor of the rights has issued a formal warning to the plaintiff owing to the infringement of its trade mark. The plaintiff, believing that its conduct was lawful, then brings an action with the request to declare that the conduct that the proprietor of the rights accuses it of was lawful – in contrast to the opinion of the proprietor of the rights. 20 If the proprietor of the rights has its domicile in a Member State in such case, the plaintiff of an action for a declaration of non-infringement can file an action only at the Community trade mark court at the domicile of the proprietor of the rights.33 Accord19

29

S. in that regard as well: Kur, GRURInt 2014, 749, 753 et seq. BGH Case I ZR 163/02 GRUR 2005, 431, 432 – HOTEL MARITIME, mn. 22; BGH Case I ZR 49/04 GRUR 2007, 885 – Cambridge Institute, mn. 23; BGH Case I ZR 75/10 GRUR 2012, 621 – Oscar, mn. 21. 31 CJ Case C-523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, mn. 36 et. seq.available at: www.curia.eu Õ search Case law. 32 CJ joined Cases C-509/09 eDate Advertising GmbH v X and C-161 Olivier Martinez and Robert Martinez v MGN Limited [2011] ECR I-10269, mn 52; BGH Case VI ZR 217/08 GRUR 2012, 850 – www.rainbow.at II, mn. 15. 33 It naturally remains possible to either establish the jurisdiction of another Community trade mark court by agreement on jurisdiction or by the defendant entering an appearance without contesting jurisdiction. 30

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ing to the explicit wording of Art. 97 (5), the plaintiff of the action for a declaration of non-infringement may not bring an action at the place where infringement was committed – where the proprietor of the rights could file the mirror-image infringement action34. It is also not possible to cite Art. 7 No. 2 of Reg. 1215/2012 because this is explicitly excluded pursuant to Art. 94 (2)(a) in respect of the actions and claims referred to in Art. 96, which also include the action for a declaration of non-infringement (Art. 96 (b)).

E. Jurisdiction under Art. 97 (4) CTMR in conjunction with Reg. 1215/2012 As an alternative to the jurisdiction of the domicile courts and Art. 97 (5), the parties 21 may establish the international jurisdiction of another Community trade mark court pursuant to Art. 97 (4) by prorogation (agreement on jurisdiction, Art. 97 (4)(a) in conjunction with Art. 25 of Reg. 1215/2012) or by entering an appearance without contesting jurisdiction (Art. 97 (4)(b) in conjunction with Art. 26 of Reg. 1215/2012). In this respect, the Community trade mark courts thus continue to have jurisdiction.35

I. Agreement on jurisdiction Pursuant to Art. 97 (4)(a) in conjunction with Art. 25 of Reg. 1215/2012, the parties may mutually agree on the jurisdiction of a court for proceedings mentioned in Art. 97. The only prerequisite is that this court is a Community trade mark court. The jurisdiction of a court that is not a Community trade mark court cannot be established pursuant to Art. 97 (4). The details for a valid contractual establishment of a place of jurisdiction can be derived from Art. 25 of Reg. 1215/2012. According to Art. 94 (2)(b), the provision of Art. 25 of Reg. 1215/2012 is modified, however, by Art. 97 (4). Art. 25 (1) of Reg. 1215/ 2012 thus requires that at least one party is domiciled in the Community. In this respect, Art. 94 (2)(c) harmonises Art. 97 (1), (2) and Art. 25 of Reg. 1215/2012 by allowing an establishment to suffice, in addition to the domicile of the party, when applying Art. 25 of Reg. 1215/2012 – as is also the case in Art. 97 (1) and (2). Overall, within the area of application of the CTMR, an agreement on jurisdiction can thus be concluded also by parties that are not domiciled in the Community, but have an establishment in the Community. Reg. 1215/2012 cannot be applied to parties that have neither a domicile nor an establishment in the Community. In such cases, national law must be applied. An agreement on jurisdiction under national law is not able, however, to derogate the jurisdiction of the Community trade mark courts pursuant to Art. 96 because this is exclusive jurisdiction. According to Art. 25 (1) of Reg. 1215/2012, an agreement on jurisdiction may be exclusive or non-exclusive. In the event of a non-exclusive agreement on jurisdiction, the agreed place of jurisdiction exists in addition to the places of jurisdiction existing otherwise 34 With the cognizable authority of the seised Community trade mark court only at the place where the infringement was committed, of course, s. Art. 98 (2). 35 Fayaz, GRURInt 2009, 459, 462.

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pursuant to Art. 97. If the parties have concluded a valid exclusive agreement on jurisdiction, however, a permissible action can be brought only before the stipulated court. If a court of another Member State is seised, it is unable to rule on the merits.

II. Entering an appearance without contesting jurisdiction 26

Jurisdiction on the basis of entering an appearance without contesting jurisdiction can be established pursuant to Art. 97 (4)(b), Art. 94 (2)(b) in conjunction with Art. 26 of Reg. 1215/2012. Similar to the case of an agreement on jurisdiction, entering an appearance without contesting jurisdiction can establish only the jurisdiction of a Community trade mark court. Also in such event, one party must have a domicile or at least an establishment (Art. 94 (2)(c)) in the Community.

Article 98 Extent of jurisdiction 1. A Community trade mark court whose jurisdiction is based on Article 97 (1) to (4) shall have jurisdiction in respect of: (a) acts of infringement committed or threatened within the territory of any of the Member States; (b) acts within the meaning of Article 9 (3), second sentence, committed within the territory of any of the Member States. 2. A Community trade mark court whose jurisdiction is based on Article 97 (5) shall have jurisdiction only in respect of acts committed or threatened within the territory of the Member State in which that court is situated. Rc. 15, 17 Bibliography: Fayaz, ‘Sanktionen wegen der Verletzung von Gemeinschaftsmarken: Welche Gerichte sind zusta¨ndig und welches Recht ist anzuwenden? (1. Teil)’, GRURInt 2009, 459–469; Knaak, ‘Internationale Zusta¨ndigkeiten und Mo¨glichkeiten des forum shopping in Gemeinschaftsmarkensachen, Auswirkungen der EuGH-Urteile Roche Niederlande und GAT/LUK auf das Gemeinschaftsmarkenrecht’, GRURInt 2007, 386–394.

Content A. B. C. D.

General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Community-wide jurisdiction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Limited jurisdiction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Extent of jurisdiction otherwise . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 3 7 9

A. General 1

Proprietors of Community-wide rights – such as Community trade marks – are of course interested in being able to defend their rights as efficiently as possible. In accordance with the character of the Community trade mark as a unitary Communitywide protection right, this fact is accounted for in the CTMR by the Community trade mark courts in certain cases being assigned the jurisdiction pursuant to Art. 98 to pursue infringements in all Member States. This extent of jurisdiction (cognizable 954

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authority) of a Community trade mark court in terms of subject matter therefore depends on the connecting factor of its international jurisdiction (Art. 97). An exception to this is a counterclaim for revocation or for a declaration of invalidity (Art. 96 (d) and Art. 100). Due to the unitary character of the Community trade mark (Art. 1 (2) 1), such a counterclaim can, by nature, be either completely founded or unfounded only. With regard to counterclaims pursuant to Art. 100, Community trade mark courts thus always have cognizable authority even if the counterclaim is brought before an international court of jurisdiction based on Art. 97 (5). The scope of application of Art. 98 is restricted to proceedings on the merits 2 conducted before Community trade mark courts. In Art. 103 (2) 2, the question of the cognizable authority of Community trade mark courts with regard to interim protective measures is answered in accordance with the provision in Art. 98.

B. Community-wide jurisdiction According to Art. 98 (1), the courts at the domicile of the parties always have 3 Community-wide jurisdiction, and these courts therefore have full (Community-wide) cognizable authority.1 The same applies to Community trade mark courts having international jurisdiction based on Art. 97 (4). If the jurisdiction of the Community trade mark court is based on Art. 97 (1), (2), (3) or (4), the court has jurisdiction for any infringement committed or threatened within a Member State. If a Member State with Community trade mark courts having jurisdiction pursuant 4 to Art. 97 (1), (2) or (4) has more than one Community trade mark court2 and an action is brought by the plaintiff before one of these that has local jurisdiction at the place where the infringement was committed, there is no change to the cognizable authority of this Community trade mark court. The local jurisdiction within a Member State in which the Community trade mark courts have international jurisdiction pursuant to Art. 97 is determined pursuant to Art. 101 (3) in conjunction with national law.3 The CTMR does not contain any provision in this respect. Therefore, the local jurisdiction on the basis of national law cannot have a restricting effect on the cognizable authority of a Community trade mark court having international jurisdiction and Communitywide cognizable authority resulting directly from the CTMR.4 However, the cognizable authority, which applies, in principle, Community-wide, 5 may be limited in the individual case for reasons based on substantive law.5 This is always the case if the trade mark infringement issue is assessed differently in individual Member States for purely factual reasons.6 Such a divergent assessment of the issue of whether an infringement has taken place can, for example, result from language differences, regional differences in the view taken by the relevant public or differences in a trade mark’s distinctive force in individual Member States.7 The same will have to 1 CJ Case C-316/05 Nokia Corp. v Joacim Wa ¨ rdell [2006] ECR I-12083, mn. 60; CJ Case C-235/09 DHLExpress France SAS v ChronopostSA [2011] ECR I-02801, mn. 43. 2 Germany, for example. 3 For details s. Art. 101, mn. 11 et seq. 4 S. also Fayaz, GRURInt 2009, 459, 465. 5 CJ Case C-235/09 DHL Express France SAS v ChronopostSA [2011] ECR I-02801, mn. 46; OLG Du¨sseldorf Case 20 U 108/01 GRUR-RR 2003, 6, 7 – Gazoz, mn. 24. 6 CJ Case C-235/09 DHL Express France SAS v ChronopostSA [2011] ECR I-02801, mn. 48. 7 CJ Case C-235/09 DHL Express France SAS v Chronopost SA [2011] ECR I-02801, mn. 48; BGH Case I ZR 33/05 GRURInt 2008, 427 – The Home Store, mn. 40.

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CTMR Art. 98

Community Trade Mark Regulation

apply if a Community trade mark is well known in one or more Member States but not in others8 and even if brand recognition in a major part of the Community suffices to affirm the brand recognition pursuant to Art. 9 (c).9 In such cases, the Community trade mark court having Community-wide jurisdiction has to limit the territorial reach of the prohibition declared by it. In such cases, the burden of demonstration and proof lies with the defendant.10 6 Art. 98 does not contain any provision relating to the substantive law to be applied by the Community trade mark court having Community-wide jurisdiction. Issues regarding applicable law are dealt with in Artt. 101 and 102, which are referred to in this respect in Art. 14 (1).

C. Limited jurisdiction If the international jurisdiction of a Community trade mark court results from Art. 97 (5) alone, its cognizable authority is limited to the Member State in which that court is situated (Art. 98 (2)). To avoid a partial dismissal of an action and the adverse cost effects associated with this, therefore, it is necessary for a claim based on a Community trade mark to be explicitly limited to this Member State, because an exception is made from the principle of the unitary character of the Community trade mark.11 8 Decisions of a court having jurisdiction under Art. 97 (5) are limited to the infringements committed or threatened in the Member State in which it is situated. The decisions of a court that has jurisdiction on this basis have no impact on proceedings in other Member States. Proceedings conducted in other Member States concerning identical or similar infringements might, however, have indicative meaning for the decision-making of such courts. 7

D. Extent of jurisdiction otherwise 9

Art. 94 (2) does not fully rule out the applicability of Reg. 1215/2012 to claims for which the Community trade mark courts have exclusive jurisdiction pursuant to Art. 96. With regard to the jurisdiction of the courts, only the applicability of Art. 4, Art. 6 and Art. 7, Nos. 1, (2), 4 and 5 of Reg. 1215/2012 is ruled out under Art. 94 (2)(a). Therefore, the provisions of Art. 8 No. 1 and No. 3 of Reg. 1215/2012, which have practical relevance, continue to apply.12 This gives rise to the question of the extent of jurisdiction in terms of subject matter of a Community trade mark court having international jurisdiction that is not based on Art. 97, but on Reg. 1215/2012 alone.13 8

Sosnitza GRUR 2011, 465, 468. CJ Case C-301/07 PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH [2009] ECR I-09429, mn. 29, 30. 10 CJ Case C-235/09 DHLExpress France SAS v ChronopostSA [2011] ECR I-02801, mn. 48. 11 Knaak, in Schricker/Bastian/Knaak (ed.), Gemeinschaftsmarke, p. 143, mn. 306; Knaak, GRURInt 2007, 386, 388. 12 S. Art. 94 mn. 6 et seq. 13 It is the author’s opinion that the jurisdiction of a Community trade mark court pursuant to Art. 97 (4) in conjunction with Art. 25 and Art. 26 of Reg. 1215/2012 does not result from Reg. 1215/2012 ‘alone’. 9

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Presumption of validity – Defence as to the merits

Art. 99 CTMR

If the jurisdiction of a Community trade mark court results from Art. 8 No. 3 of 10 Reg. 1215/2012, only two relevant situations are conceivable. In a first scenario, the plaintiff brings an action based on an infringement of its Community trade mark. In this situation, the defendant responds by bringing a counterclaim for declaration of revocation or invalidity of the Community trade mark. With regard to the counterclaim for declaration of revocation of invalidity, the Community trade mark court having international jurisdiction has Community-wide cognizable authority. This results from the unitary character of the Community trade mark. In a second conceivable scenario, the proprietor of a Community trade mark brings an action against the defendant in the forum delicti on the grounds of infringement of its Community trade mark. The jurisdiction of this court having international jurisdiction pursuant to Art. 97 (5) is limited to the Member State in which that court is situated (Art. 98 (2)). If the defendant now brings a counterclaim for declaration of revocation or invalidity of the Community trade mark, the plaintiff may, in turn, now respond by bringing a countercounterclaim. In this scenario, the question is raised as to whether it is now possible for the plaintiff to pursue infringements of the defendant outside the forum delicti by means of its counter-counterclaim. Similar questions arise within the framework of Art. 8 No. 1 of Reg. 1215/2012 with respect to a joinder of parties against which an action is brought at an international place of jurisdiction before a Community trade mark court. The CTMR itself does not contain any provision in this respect. According to the 11 wording of Art. 98, a Community-wide jurisdiction of the Community trade mark court results in the cases described in Art. 98 (1). This clause refers to the provisions on international jurisdiction in Art. 97 (1)–(4). If the jurisdiction is based on Reg. 1215/2012 and thus not on Art. 97, the Community trade mark court does not have Community-wide jurisdiction. It can be concluded from the taxonomy of Art. 98, however, that the Community-wide jurisdiction of the Community trade mark courts is supposed to be the rule, while the restriction of jurisdiction should be the exception.14 Consequently, the international jurisdiction of a Community trade mark court generally establishes Community-wide jurisdiction pursuant to Art. 94 (1), (2) in conjunction with Reg. 1215/2012. This is also in line with the need to prevent a multitude of proceedings in different jurisdictions with regard to Community-wide intellectual property rights, if possible. On the other hand, international jurisdiction pursuant to Art. 97 (5) is justified by the particular local vicinity of the court to the committed acts of infringement. In such case, a limitation of the scope of international jurisdiction appears appropriate in exceptional cases.15

Article 99 Presumption of validity – Defence as to the merits 1. The Community trade mark courts shall treat the Community trade mark as valid unless its validity is put in issue by the defendant with a counterclaim for revocation or for a declaration of invalidity. 2. The validity of a Community trade mark may not be put in issue in an action for a declaration of non-infringement. 3. In the actions referred to in Article 96 (a) and (c) a plea relating to revocation or invalidity of the Community trade mark submitted otherwise than by way of a 14 The taxonomy for interim injunction proceeding is the other way round; s. in this regard the comment on Art. 103, mn. 19, footnote 31. 15 View shared ultimately also by Knaak, GRUR 2001, 21, 26; Ruhl, Gemeinschaftsgeschmacksmuster, Art. 83, mn. 11 (regarding Community design law).

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CTMR Art. 99

Community Trade Mark Regulation

counterclaim shall be admissible in so far as the defendant claims that the rights of the proprietor of the Community trade mark could be revoked for lack of use or that the Community trade mark could be declared invalid on account of an earlier right of the defendant. Rc. 17 Bibliography: Knaak, ‘Die Rechtsdurchsetzung der Gemeinschaftsmarke und der a¨lteren nationalen Rechte’, GRURInt 1997, 864–873.

Content A. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Plea relating to revocation or invalidity pursuant to Art. 99 (3) CTMR. I. Admissibility of the plea. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Restricted plea. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Effect of the plea. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 4 5 6 9

A. General Community trade mark courts must generally presume that a Community trade mark is valid (Art. 99 (1)). The same applies to courts of Member States that are not Community trade mark courts (Art. 107). A defendant may not plead that the Community trade mark was wrongly registered. In particular, the validity of a Community trade mark may not be put at issue by way of an action for declaration of noninfringement of a Community trade mark (Art. 99 (2)). 2 Art. 99 (1) makes an exception to this principle in favour of counterclaims for declaration of revocation or invalidity of the Community trade mark (Art. 100)1. Art. 99 (3), according to which a plea of invalidity owing to revocation or prior rights of the defendant is supposed to be permissible within the framework of infringement actions pursuant to Art. 96 (a) and actions pursuant to Art. 96 (c), is another exception to this principle. 3 The exception to the principle of the validity of Community trade marks applies only to actions brought before Community trade mark courts. With regard to actions brought before national courts relating to a Community trade mark (Art. 106), these courts remain obligated to treat Community trade marks as valid, because Art. 107, unlike Art. 99 (1), does not provide for any exceptions. 1

B. Plea relating to revocation or invalidity pursuant to Art. 99 (3) CTMR 4

Art. 99 (3) makes it possible for a defendant to cause the Community trade mark on the basis of which an action was brought against the defendant to be reviewed by the Community trade mark court without the defendant having to oppose the validity of the Community trade mark before the Office or by way of a counterclaim pursuant to Art. 100.

1

For details, s. the commentary to Art. 100.

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Presumption of validity – Defence as to the merits

Art. 99 CTMR

I. Admissibility of the plea A plea of invalidity pursuant to Art. 99 (3) may be submitted by a defendant solely 5 for defence in an action relating to the infringement or threatened infringement of a Community trade mark (Art. 96 (a)) or for the payment of reasonable compensation as set out Art. 9 (3)(2) pursuant to Art. 96 (c).

II. Restricted plea In submitting a plea of invalidity pursuant to Art. 99 (3), a defendant may claim that 6 the Community trade mark has been revoked2 as a result of lack of use or is invalid on account of an earlier (prior) right of the defendant. The European Commission’s proposal3 for a regulation amending Art. 99 intends to replace Art. 99 (3) by the following paragraph: ‘In the actions referred to in Article 96 (a) and (c) a plea relating to revocation or invalidity of the European trade mark submitted otherwise than by way of a counterclaim shall be admissible in so far as the defendant claims the rights of the proprietor of the European trade mark could be revoked for lack of genuine use at the time the infringement action was brought.’ The proposal for a replacement of Art. 99 (3) is thus clarifying that a defendant claiming that the Community trade mark may be revoked due to lack of use does not necessarily have to show that the Community trade mark is subject to revocation due to lack of use at the time the Court is deciding upon the infringement action against which he is defending. Rather, it is sufficient for the plea to be successful if the defendant may show that the Community trade mark on which the action is based could have been revoked at the time the infringement action was brought, thus the very moment it was filed. More importantly maybe is that the proposal for a replacement of paragraph (3) of Art. 99 is completely striking out the option for the defendant to base the plea of invalidity on earlier rights owned. According to this amendment of Art. 99 (3) the owner of earlier rights will in the future thus have to file a counterclaim pursuant to Art. 100 if he wishes to use prior rights in his defence, a plea of invalidity will no longer be of avail. As far as the invalidity of a Community trade mark is concerned, Art. 99 (3) thus 7 restricts the defendant’s options. For example, a defendant may not claim any absolute grounds for the invalidity of a Community trade mark pursuant to Art. 52, because the Community trade mark lacks distinctive force, by means of the plea described in Art. 99 (3).4 Instead, the defendant must base its plea of invalidity on earlier (prior) rights and thus on relative grounds for invalidity in terms of Art. 53. In addition to earlier registered Community trade marks, therefore, earlier national trade marks and other trade mark rights having more than mere local significance pursuant to Art. 8 (4) come into consideration. The seised Community trade mark court must verify the earlier right based on the relevant law of the Member State in question.5 2

Art. 51. Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No. 207/2009 on the Community trade mark www.eur-lex.europa.eu Õ Legislation Õ search for legislation 4 The defendant may file a counterclaim pursuant to Art. 100 to assert absolute grounds for invalidity. 5 Knaak, GRURInt 1997, 864, 868. 3

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CTMR Art. 99 8

Community Trade Mark Regulation

In addition, such earlier rights must, according to Art. 99 (3), be the defendant’s own rights. There is thus no apparent reason to give only the proprietor of the earlier right the option of submitting a plea pursuant to Art. 99 (3). As also provided for in Art. 56 (1)(a) in conjunction with Art. 41 (1) and in Art. 56 (1)(b), licensees and other persons entitled to assert these rights under applicable national law are to be considered entitled to submit the plea pursuant to Art. 99 (3), in addition to the proprietor of the rights.

III. Effect of the plea A successful submission of the plea results in the dismissal of the action. In view of the revocation or invalidity of the Community trade mark, the decision of the Community trade mark court has effect only inter partes – the Community trade mark is thus not deleted from the register. If the defendant wishes to achieve the deletion of the Community trade mark from the register with erga omnes effect, it must submit a counterclaim pursuant to Art. 100 or file an application for invalidity with the Office. In the individual case, however, the inter partes effect may suffice for the defendant, because it has raised a successful defence against the action. The defendant may even be interested in having the Community trade mark cited against it remain in the register, so that, for example, rights can still be asserted against third parties on this basis. There can also be strategic reasons for submitting the plea instead of bringing forward a counterclaim. For example, the plaintiff can extend an action filed at the place where the infringement took place having only national reach to other jurisdictions by way of counter-counterclaim if a counterclaim has been brought forward.6 The plaintiff does not have this option if the defendant merely submits a plea of invalidity pursuant to Art. 99 (3).7 Finally, filing a counterclaim can have the effect of increasing costs, which the defendant may prefer to avoid. 10 If the defendant based its plea of invalidity on earlier national rights in a Member State other than the one in which the court is located, the consequence of the plea, in the event of success, would nevertheless be that the Community trade mark court would have to assume that the Community trade mark was completely invalid. This is a mandatory conclusion based on the unitary character of the Community trade mark (Art. 1 (2)(1)).8 The plaintiff might respond to this procedural situation by converting its Community trade mark into a national mark as set out in Art. 112. After a conversion, the original action would probably be justified at the place where the infringement was committed because the then national trade mark can no longer be opposed in the country in which it is registered by the right in a different Member State that was used previously against the Community trade mark. This would then no longer be an action based on a Community trade mark, however. Depending on the procedural situation, the seised Community trade mark court will then no longer have international jurisdiction. This consequence can apply, in particular, if the action was brought before the court at the place where the plaintiff is domiciled (Art. 97 (2)). If the action was brought at the place where the infringement was committed, the courts of the Member 9

6

S. Art. 94, mn. 17. This risk can also be countered by the defendant filing an application with the Office for declaration of the invalidity of the Community trade mark pursuant to Art. 56 instead of bringing forward a counterclaim pursuant to Art. 100. 8 S. on the other hand Eisenfu ¨ hr/Eberhardt, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 9, mn. 11. 7

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Counterclaims

Art. 100 CTMR

State continue to have jurisdiction even after a conversion, however. If the action was brought at a court of domicile, there is a lack of Community-wide cognisable authority pursuant to Art. 98 because the action is based on a national trade mark. Ultimately, therefore, the action can be conducted with success only at the place where the infringement was committed. Community trade mark courts that would not have jurisdiction as the courts at the place where the infringement was committed must therefore dismiss the action also if the Community trade mark has been converted. The defendant will prevail in the procedure relating to the infringement of the Community trade mark. This will be only a partial victory for the defendant, however, because the action can be brought again at the place where the infringement was committed based on the national trade mark that came into existence by way of conversion. If the originally seised Community trade mark court also had international jurisdiction based on Art. 97 (5), therefore, it may, depending on its national law, suspend the proceedings for as long as it takes to convert the Community trade mark and continue them after the conversion has been completed – but of course only with national cognizable authority.

Article 100 Counterclaims 1. A counterclaim for revocation or for a declaration of invalidity may only be based on the grounds for revocation or invalidity mentioned in this Regulation. 2. A Community trade mark court shall reject a counterclaim for revocation or for a declaration of invalidity if a decision taken by the Office relating to the same subject matter and cause of action and involving the same parties has already become final. 3. If the counterclaim is brought in a legal action to which the proprietor of the trade mark is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the conditions set out in national law. 4. The Community trade mark court with which a counterclaim for revocation or for a declaration of invalidity of the Community trade mark has been filed shall inform the Office of the date on which the counterclaim was filed. The latter shall record this fact in the Register of Community trade marks. 5. Article 57 (2) to (5) shall apply. 6. Where a Community trade mark court has given a judgment which has become final on a counterclaim for revocation or for invalidity of a Community trade mark, a copy of the judgment shall be sent to the Office. Any party may request information about such transmission. The Office shall mention the judgment in the Register of Community trade marks in accordance with the provisions of the Implementing Regulation. 7. The Community trade mark court hearing a counterclaim for revocation or for a declaration of invalidity may stay the proceedings on application by the proprietor of the Community trade mark and after hearing the other parties and may request the defendant to submit an application for revocation or for a declaration of invalidity to the Office within a time limit which it shall determine. If the application is not made within the time limit, the proceedings shall continue; the counterclaim shall be deemed withdrawn. Article 104 (3) shall apply. Rc. 3, 16 Carsten Menebro¨cker/Sabine Stier

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CTMR Art. 100

Community Trade Mark Regulation

Bibliography: Beyerlein, ‘Prozessuale Probleme der Klage auf Erkla¨rung des Verfalls oder der Nichtigkeit einer Gemeinschaftsmarke vor den Gemeinschaftsmarkengerichten (Art 96 GMV)’, WRP 2004, 302–305; Knaak, ‘Internationale Zusta¨ndigkeiten und Mo¨glichkeiten des forum shopping in Gemeinschaftsmarkensachen, Auswirkungen der EuGH-Urteile Roche Niederlande und GAT/LUK auf das Gemeinschaftsmarkenrecht’, GRURInt 2007, 386–394; Knaak, ‘Die Durchsetzung der Rechte aus der Gemeinschaftsmarke’, GRUR 2001, 21–29; Kouker, ‘Verteidigung und Durchsetzung der Gemeinschaftsmarke in der Europa¨ischen Union’, Mitt. 2000, 241–253; Rohnke, ‘Gemeinschaftsmarken oder nationale Marken? ¨ berlegungen zur Rechtsdurchsetzung’, GRURInt 2002, 979–989. Strategische U

Content I. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Legal nature of counterclaims . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Permissibility of counterclaims . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Jurisdiction. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Admissibility of counterclaims. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. No final and absolute decision by the Office . . . . . . . . . . . . . . . . . . . . . . . . . IV. Grounds for counterclaims. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Procedure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Notification of proprietor of the Community trade mark. . . . . . . . . . 2. Notification of the Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Stay of proceedings before the Community trade mark court . . . . . 4. European Commission’s proposal for amending the CTMR . . . . . . a) Commission’s proposal as to Art. 100 (4). . . . . . . . . . . . . . . . . . . . . . . . . b) Commission’s proposal as to Art. 100 (6). . . . . . . . . . . . . . . . . . . . . . . . . V. Effects of a decision . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 3 4 4 7 12 16 21 21 23 25 28 28 32 34

I. General Art. 100 breaks through the principle of Art. 99 (1), according to which the Community trade mark courts must generally assume that Community trade marks are legally valid, to the benefit of counterclaims for revocation or for a declaration of invalidity of the Community trade mark.1 The defendant is thus given an opportunity, in addition to the in principle sole possibility, after the registration2 of a Community trade mark, of filing an action to declare the revocation or invalidity of the Community trade mark before the Office pursuant to Art. 56, to have the Community trade mark declared revoked or invalid in the course of an action brought against him for infringement of the Community trade mark. A counterclaim pursuant to Art. 100, for which the Community trade mark courts have exclusive jurisdiction (s. Art. 96 (d)), thus constitutes an exception from the general jurisdiction of the Office with regard to the deletion of Community trade marks from the register. 2 For a declaration of revocation or invalidity, therefore, there is a rival jurisdiction of the Community trade mark court at which an action as described in Art. 96 (a)3 is pending and of the Office. Art. 100 – like Art. 1044 – serves the purpose, among other things, of resolving the rivalry with respect to actions and decisions that results from this in order to avoid repeated disputes about the same subject matter and, if applicable, contradictory decisions rendered by the Community trade mark courts and the Office. 1

1 With regard to the objection relating to the revocation or invalidity of a Community trade mark, s. the commentary to Art. 99 (3), Art. 99, mn. 4 et seq. 2 Before the Community trade marks are registered the legal validity of Community trade marks can be contested by way of observations of third parties (Art. 40) or by giving notice of opposition (Art. 41). 3 S. below mn. 8. 4 In Art. 104 there are provisions for ‘related actions’, thus actions conducted at the same time before the Community trade mark courts and the Office.

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Counterclaims

Art. 100 CTMR

II. Legal nature of counterclaims The counterclaim for revocation or for a declaration of invalidity of a Community 3 trade mark is designed as a means of defence. According to both its systematic position and its wording, it is linked to the action in defence of which it is raised. The CTMR does not provide for an isolated action for a declaration of invalidity or revocation of a Community trade mark. The concrete form of the link between counterclaim and action is thus not described in the CTMR. Against the background of the absence of a possibility to bring an isolated action for revocation or for a declaration of invalidity of a Community trade mark, the view is expressed in some cases that a counterclaim is accessory to an action.5 Assuming that this view is correct, a counterclaim could be brought only before a court having international jurisdiction with regard to the action against which the counter plaintiff is defending himself. Furthermore, the Community trade mark could be declared revoked or invalid as a result of the counterclaim only for the goods/services on which the action is based. The counterclaim would also be deprived of its legal basis if the action were withdrawn with the result that the counterclaim would retroactively become inadmissible. There are initially some factors that would suggest that this interpretation is correct. For example, it is correct that the concept of counterclaim as a means of defence suggests that a prerequisite is that an action has previously been brought. This can be concluded already from Art. 99 (1), according to which the Community trade mark courts shall treat the Community trade mark as valid unless its validity is put in issue by way of a counterclaim. The conclusion that counterclaims are accessory to actions, with the consequence that a counterclaim could be deprived of its foundation retroactively by a withdrawal of the action, is not compelling, however. Although it is true that in such a case the counterclaim would have the effect of an isolated action for revocation or for a declaration of invalidity of a Community trade mark, which the CTMR does not provide for, this view regarding the accessory nature of a counterclaim overlooks the fact that in cases in which the CTMR itself does not contain any rules of procedure, the law of the forum (lex fori) of the Community trade mark court having international jurisdiction will apply, according to Art. 101 (3). In the absence of rules in the CTMR, the relationship between an action and a counterclaim will thus be determined by the law of the forum to be applied in the individual case, according to Art. 101 (3).6 This law of the forum also includes the provisions contained in Reg. 1215/2012.

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v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 96, mn. 5. S. also Gielen, in Gielen/v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 101; Ingerl/Rohnke, Markengesetz, § 125 e, mn. 33; Beyerlein, WRP 2004, 302, 303; in this sense also Eisenfu¨hr/Overhage, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 99, mn. 7. For example, under German law on civil procedure, there must be a main action (the action based on infringement) pending only at the time a counterclaim is raised not also at the time the court renders a decision concerning the counterclaim. The only precondition for the admissibility of a counterclaim is that the main action against the counterplaintiff is still pending at the time the counterclaim is raised. The action based on infringement, as the main action, may thus not be withdrawn only at the time the counterclaim is raised, because a withdrawal of an action ends its pendency. A withdrawal of the main action at a later date is irrelevant, however. Although it is true that the withdrawal of an action has retroactive effect on the date the action was raised, with the result that it is assumed that the action was never brought, the retroactive discontinuation of the main action after the counterclaim has been raised does not have any effect on the counterclaim, because if the counterclaim has been raised validly, it is independent of the fate of the main action. 6

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CTMR Art. 100

Community Trade Mark Regulation

III. Permissibility of counterclaims 1. Jurisdiction7 According to Art. 96 (d), Community trade mark courts have exclusive substantive jurisdiction for counterclaims for revocation or for a declaration of invalidity of a Community trade mark. 5 The international jurisdiction for counterclaims as provided for in the CTMR is unfortunate. The conception of the counterclaim as a means of defence demands that a counterclaim can be raised at the place of international jurisdiction for the main action. Art. 97 appears to contradict this result. Art. 97 provides for the international jurisdiction for all actions for which the Community trade mark courts have exclusive jurisdiction under Art. 96, and thus also for the counterclaims mentioned in Art. 96 (d). The language used in Art. 97 (1), which refers to counterclaims, confirms this. Applying Art. 97 (1) could, however, lead to the result – where the parties are domiciled in different Member States within the Community – that the action would have to be brought in the courts of the Member State where the defendant (and counterplaintiff) is domiciled, but the counterclaim would have to be brought in the courts of the Member State where the plaintiff (and counterdefendant) is domiciled. For the action and the counterclaim, therefore, Community trade mark courts in different Member States would have international jurisdiction. This result is supported by the language used in Art. 97, because it does not take into account that the designations of the parties are reversed in the event of a counterclaim from those in the original action. If Art. 97 is applied, the party designations are thus to be traced back to their original designations: Art. 97 (1) must be understood to mean that, the counterplaintiff is – corresponding to his position in the main action – the defendant in terms of the provision. If, therefore, the plaintiff brings an action in the Community trade mark court at the place where the defendant is domiciled, that has international jurisdiction under Art. 97 (1), this Community trade mark court, being the court having jurisdiction at the place where the defendant is domiciled, will also have international jurisdiction for the counterclaim under Art. 97 (1), even though the defendant is the counterplaintiff with respect to the counterclaim. Art. 100 (7), which calls the counterplaintiff ‘defendant’, does also suggest that this interpretation is correct. Art. 97 (2), (3) and (4) are also to be understood in this sense, which consequently always lead to the same international jurisdiction for action and counterclaim. The wording of Art. 97 (5) is clear as to its applicability also to counterclaims. According to this provision, a counterclaim – like the other actions8 mentioned in Art. 96 – can be brought at the place where the infringement was committed. If the plaintiff thus brings an action pursuant to Art. 96 at the place where the infringement was committed, Art. 97 (5) establishes the international jurisdiction also for the counterclaim at this place. 6 The local jurisdiction of the Community trade mark court within the Member State is determined on the basis of the law of the respective Member State, according to Art. 101 (3). 4

7 S. the commentary to Art. 98, mn. 1 with regard to the reach of the jurisdiction of the Community trade mark courts in procedures based on Art. 100. 8 With the exception of an action for declaration of non-infringement (Art. 96 (b)).

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Counterclaims

Art. 100 CTMR

2. Admissibility of counterclaims A counterclaim as means of defence against an action requires, first of all, that an 7 action was brought against the defendant. In an action for provisional and protective measures (Art. 103), the defendant may thus not raise a defence by way of counterclaim.9 The construction of the counterclaim as a means of defence against an attack based 8 on a Community trade mark requires an action claiming that a Community trade mark has been infringed, thus an action as described in Art. 96 (a). In addition to the conception of the counterclaim as a means of defence, the language used in Art. 99 (1) and (3) initially supports this view. According to Art. 99 (3), the Community trade mark courts shall treat the Community trade mark as valid unless its validity is put in issue with a counterclaim. According to the wording of Art. 99 (3), however, a limited plea relating to invalidity or revocation of the Community trade mark can be submitted in the actions referred to in Art. 96 (a) or (c) even if this is not asserted by way of a counterclaim. The CTMR thus seems to assume that in actions pursuant to Art. 96 (a) and (c) both a plea as described in Art. 99 (3) and a counterclaim is admissible. However, as far as the action according to Art. 96 (c) is concerned, the wording of Artt. 51, 52 and 53 contradicts this conclusion. According to these provisions, a Community trade mark can be declared to be invalid or revoked on application to the Office or ‘on the basis of a counterclaim in infringement proceedings’. This wording indicates that a counterclaim is admissible only in proceedings pursuant to Art. 96 (a),10 since the acts for which sanctions are imposed under Art. 96 (c) in conjunction with Art. 9 (3) are not acts of infringement, according to the wording used here, but simply ‘acts’. A comparison of the rival proceedings before the Office as described in Art. 56 and the counterclaim procedure also suggest that this is the case: According to Art. 6, a Community trade mark comes into existence through registration. According to Art. 9 (3) 1, the rights conferred by a Community trade mark do, however, prevail against third parties only from the date of publication of registration of the Community trade mark. The CTMR makes a strict distinction in its terminology between ‘Community trade mark’, when it refers to a registered Community trade mark, and a ‘Community trade mark application’. The procedure described under Art. 56 is admissible only against Community trade marks. Consequently, Art. 96 (d) describes the counterclaim also as one that is aimed against a Community trade mark. Art. 96 (c) can thus not be the basis for a counterclaim pursuant to Art. 100, because this action is based on a published Community trade mark application and not on a Community trade mark. This is not changed by the fact that the court applied to under Art. 96 (c) may not render a decision on the main action until the registration of the Community trade mark has been published (Art. 9 (3) 3). The defendant is then also not rendered without protection in this procedure: He remains free to file a plea pursuant to Art. 99 (3) or to raise a defence by submitting observations by third parties or by way of an opposition as described in Art. 40, 41. On the other hand, a counterclaim as means of defence against actions of the type 9 specified in Art. 96 (b) seems hardly conceivable: This action is aimed particularly at the party that asserts rights arising from a Community trade mark. As a response 9 OGH Case 4 Ob 239/04 GRURInt 2005, 945, 947 – Goldhase; v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 99, mn. 17; Knaak, in Schricker/Bastian/Knaak (ed.), Gemeinschaftsmarke, p. 133, mn. 265; Kouker, Mitt. 2000, 241, 251; for details, s. Art. 103, mn. 21. 10 BGH Case I ZR 29/02 GRUR 2005, 581, 582 –– The Colour of Ele ´gance, mn. 15.

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to such an action, filing a counterclaim for revocation or for a declaration of invalidity is – extremely – abstruse.11 10 The Community trade mark courts, much less any other national courts, have no jurisdiction for counterclaims against Community trade marks in procedures that are not actions as described in Art. 96.12 11 Because the filing of a counterclaim is possible only in actions concerning the infringement of a Community trade mark, it is not possible to file a counterclaim pursuant to Art. 100 in actions based on the infringement of national trade marks13 or in response to an action brought by the proprietor of a Community trade mark for a declaration of non-infringement of an earlier national trade mark by the Community trade mark.14 Such actions concerning the infringement of national trade marks also do not become an action concerning Community trade marks as defined in Art. 96 when a counterclaim is brought against a Community trade mark that is not the subject matter of the action.15

3. No final and absolute decision by the Office To avoid contradictory decisions by the Office and a Community trade mark court concerning the validity of a Community trade mark, Art. 100 (2) provides that a Community trade mark court must reject a counterclaim for revocation or for a declaration of invalidity if the Office has already taken a final decision in a procedure (1) relating to the same cause of action (2) involving the same parties. The procedure in question before the Office can only be a procedure in terms of Art. 56, because an opposition procedure in terms of Art. 41 between the parties would have led to the result that the registration of the trade mark would have had to be refused. In this event, a case in terms of Art. 100 (2) could not occur because an infringement action in terms of Art. 96 (a) cannot be brought until after the registration of a Community trade mark.16 A Community trade mark court must thus reject a counterclaim under Art. 100 (2) if the Office has already taken a decision in the procedure described in Art. 56 on the same cause of action involving the same parties. A double identity is thus required. Art. 100 (2) mirrors Art. 56 (3), which refers to the Office procedure. 13 The identity of subject matter in terms of Art. 100 (2) does not only require that in the procedure described in Art. 56 an application was filed generally for revocation or for a declaration of invalidity of the Community trade mark. Instead, it is required that exactly the same reason for revocation or invalidity was the subject matter of the procedure described in Art. 56 as that that is now asserted by way of counterclaim17 because only then is there a risk of a deviating decision. 14 The identity of parties means, based on its wording, that the plaintiff and the defendant are the same parties as the applicant and the respondent in the already completed procedure as described in Art. 56. The parties involved in the counterclaim 12

11 S. also Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 14; Knaak, GRURInt 2007, 386, 393. 12 LG Mu ¨ nchen Case 7 HK O 13621/99 GRURInt 2000, 783, 784 – Betty; Knaak, GRURInt 2007, 386, 394. 13 Knaak, GRURInt 2007, 386, 393; Rohnke, GRURInt 2002, 979, 988. 14 LG Mu ¨ nchen Case 7 HK O 13621/99 GRURInt 2000, 783, 784 – Betty; this is not an action for a declaration of non-infringement as defined in Art. 96 (b), because the subject matter of such an action is not the infringement of a Community trade mark, but an infringement of a national trade mark; s. Knaak, GRUR 2001, 21, 27. 15 Knaak, GRURInt 2007, 386, 393. 16 S. Art. 9 (3) 1. 17 v. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 221, mn. 16.

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action and the procedure described in Art. 56 can be different, however, without different subject matters being concerned. It is conceivable, for example, that the proprietor of a more recent Community trade mark files (unsuccessfully) an application under Art. 56 against the proprietor of an earlier Community trade mark.18 After the conclusion of this procedure, the licensee of the earlier Community trade mark brings an action against the proprietor of the more recent Community trade mark pursuant to Art. 96 (a) because the proprietor of the more recent Community trade mark has begun to use his Community trade mark in business. There is no apparent reason why in this constellation – despite the absence of an absolute identity of parties (trade mark proprietor vs. licensee) – a counterclaim as provided for under Art. 100 brought by the proprietor of the more recent trade mark should be admissible. In this case, too, therefore, a counterclaim as provided for under Art. 100 (2) can be rejected. The same applies to cases involving legal succession or the transfer of the Community trade mark: There is no apparent reason to admit a counterclaim against the new proprietor of a Community trade mark if the same plaintiff had already filed an application against the previous proprietor of a Community trade mark with the Office in the procedure described in Art. 56. The decision taken by the Office in the procedure described in Art. 56 is final when 15 no appeal has been filed, the deadline for filing an appeal has expired or there was rendered a last instance decision.

IV. Grounds for counterclaims A counterclaim is founded if the Community trade mark has been revoked as set out in 16 Art. 51 or is invalid as defined in Artt. 52, 53. The grounds for revocation set out in Art. 51 and the grounds for invalidity set out in Artt. 52, 53 are conclusive. A counterclaim can be based only on the absolute grounds for revocation and invalidity provided for in the CTMR. This includes, for example, national rights that can be used to oppose the use of the Community trade mark, see Art. 53 (1)(c) in conjunction with Art. 8 (4) or Art. 53 (2). However, such national rights can be used to oppose a Community trade mark only if they confer the right, under the respective national law of the Member State, to prohibit the use of the Community trade mark in that Member State. The Community trade mark courts must therefore examine the effect of the national rights to the existence of the Community trade mark under the law of the Member State in question. Art. 57 (2) to (5)19 apply in counterclaim actions pursuant to Art. 100 (5) mutatis 17 mutandis. If a counterclaims is based on earlier national rights or an earlier Community trade mark, the proprietor of these rights must provide proof of the genuine (rightspreserving) use of these earlier rights at the request of the counterdefendant. Within the framework of his counterclaim, the counterplaintiff may cite grounds for 18 revocation or invalidity arising in a Member State to which neither he nor the plaintiff is related.20 For example, the counterplaintiff may assert absolute grounds for refusal of registration that apply only in a third Member State. Moreover, he may cite an earlier right in a third Member State. Based on the taxonomy of the CTMR (e. g., Art. 56 (1)(c), 99 (3)), according to which no third-party rights can be asserted, however, this is possible only if the counterplaintiff is the proprietor of this earlier right or is otherwise entitled under the applicable national law to assert the right. 18

Art. 56 (1)(b) in conjunction with Art. 41 (1). For details, s. the commentary to Art. 57. 20 v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 96, mn. 12. 19

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Even if the counterplaintiff bases his counterclaim on grounds that apply only in one or a few individual Member States, the counterclaim nonetheless leads to the result, if it is successful, that the Community trade mark as a whole is declared revoked or invalid. This is a mandatory conclusion based on the unitary character of the Community trade mark (Art. 1 (2) 1). The proprietor of the Community trade mark can react to this procedural situation by converting his Community trade mark into national trade marks as described in Art. 112 CTM; in this respect, the proprietor of the Community trade mark must pay attention to the deadlines provided for in Art. 112 (6) after a final decision about the counterclaim has been rendered.21 In the Member States in which the grounds for revocation or invalidity do not apply, an action would probably be justified after a conversion because the then national trade mark can no longer be opposed in the country in which it is registered by the right in a different Member State that was used previously against the Community trade mark. This is then, however, no longer an action based on a Community trade mark, with the consequence that – depending on the procedural situation – the Community trade mark court previously seised for the action based on the Community trade mark may no longer have international jurisdiction. This consequence can apply, in particular, if the action based on the Community trade mark was brought before the court at the place where the plaintiff is domiciled (Art. 97 (3)) or where the Office has its seat (Art. 97 (3)). If the action based on the Community trade mark was, however, brought before the courts of the Member State in which the infringement was committed (Art. 97 (5)) or in which the defendant is domiciled (Art. 97 (1)), the courts of that Member State may still have international jurisdiction even after a conversion has taken place. In such cases, however, not the Community trade mark courts will decide, but rather national courts, because the action is (now) based on a national trade mark. Consequently a decision with Community-wide effect pursuant to Art. 98 (1) there can no longer be rendered. Ultimately, in this scenario the action can thus successfully be conducted before the courts of the Member State in which the infringement was committed (Art. 97 (5)) or in which the defendant is domiciled (Art. 97 (1)) only. Ultimately this procedural situation must be solved by the Community trade mark court under national law (Art. 101 (3)), however. The questions arise, in particular, as to whether the action can be continued after conversion on the basis of the converted national trade mark before the court in the Member State initially seised as Community trade mark court and whether the cause of action (Community trade mark vs. national trade mark) can be exchanged or expanded under national law. 20 An action based on a Community trade mark can in any event be rejected based on the revocation or the declaration of invalidity of the Community trade mark achieved by way of a counterclaim; the counterplaintiff will win completely in the action concerning the infringement of the Community trade mark. In Member States in which a counterclaim is accessory to an action under national law,22 the proprietor of a Community trade mark should react to this procedural situation by withdrawing the action. Although a withdrawal of an action does not lead to the result that the proprietor of the Community trade mark wins in the action based on the Community trade mark, he can ‘save’ his Community trade mark in any event by withdrawing the action since the counterclaim will become inadmissible because of the withdrawal of the action. The plaintiff may of course also raise a (new) action based on the national trade mark that has come into existence by way of conversion. If the originally seized Community trade mark court had international jurisdiction for the action based on 19

21 Without a final decision concerning the legal validity of the Community trade mark, the Community trade mark is not converted into national trade marks, s. Art. 112 (6). 22 S. above, mn. 3.

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the Community trade mark under Art. 97 (1) or Art. 97 (5), however, and if the basis for the action (Community trade mark vs. national trade mark) can be exchanged or expanded under national law (Art. 101 (3)), the plaintiff can be prevented from losing completely by the Community trade mark court (now in its capacity as national court) continuing the action after the conversion on the basis of the converted national trade mark – to the extent this is possible under national law –, however, only with national jurisdiction pursuant to Art. 98 (2).

V. Procedure 1. Notification of proprietor of the Community trade mark The procedure before the Office pursuant to Art. 56, for one, and the counterclaim 21 procedure before the Community trade mark court pursuant to Art. 100, for another, must – although the same Community trade mark is concerned – not necessarily be conducted between the same parties: The application for revocation or for a declaration of invalidity of the Community trade mark at the Office is always directed against the proprietor of the Community trade mark, who is solely capable of being sued before the Office, whereas the counterclaim may be directed not only against the proprietor of the Community trade mark, but also against any third party using the Community trade mark on the basis of a derived right (e. g. licensee). Art. 100 (3) takes account of this by obligating the Community trade mark court to 22 inform the proprietor of the Community trade mark of the fact that a counterclaim for revocation or for a declaration of invalidity of his Community trade mark was raised – if he is not already a party to the legal action –, in order to allow him to decide whether he wishes to join the legal action in accordance with the conditions set out in national law. If the proprietor of the Community trade mark chooses to join, he will become a party to the legal action, his legal position and involvement in the action being subject to the respective national law (Artt. 100 (3), 101 (3)). It is at the discretion of the proprietor of the Community trade mark to join the legal action. An application for initiation of the procedure before the Office pursuant to Art. 100 (7)23 can be filed by the proprietor of the Community trade mark, however, only if he has joined the action beforehand.24

2. Notification of the Office Art. 100 (4) establishes that the Community trade mark court with which a counter- 23 claim has been filed must inform the Office ex officio of the fact that a counterclaim has been filed and the date25 on which it was filed. The date the counterclaim was filed (like the date an application for revocation or for a declaration of invalidity was submitted to the Office) is recorded by the Office in the Register of Community Trade Marks pursuant to Rule 84 (3)(n) CTMIR and published in the Community Trade Marks Bulletin pursuant to Art. 120 in conjunction with Rule 85 (2) CTMIR. The CTMR does 23

In this regard s. mn. 25 et seq. below. Eisenfu¨hr/Overhage, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 100, mn. 14, 17. 25 Owing to the fact that it is not regulated in the CTMR itself when a counterclaim is deemed to have been filed (whether this is already the case, for instance, when the statement of claim is submitted to the court or only when the statement of claim is served on the other party), the lex fori of the relevant Community trade mark court must be applied pursuant to Art. 101 (3). 24

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not provide for a time limit for this announcement. The Office should be informed as soon as possible, however.26 One reason for this is that a prompt announcement is required against the background of applying Art. 104. Another is that an immediate announcement is likely to also be in the interests of the public – namely of the competitors of the proprietor of the Community trade mark – who are thus informed about an action contesting the validity of a Community trade mark, if they inspect the Register of Community Trade Marks, already at an early stage. 24 Where a Community trade mark court has given a judgment which has become final on a counterclaim, a copy of this judgment shall be send to the Office (Art. 100 (6) 1). At the request of the parties, they are informed about such transmission. The counter plaintiff may file the relevant request already when he files the counterclaim. The Office, in turn, records the date and ‘content’ of the decision in the Register of Community Trade Marks pursuant to Rule 84 (3)(o) CTMIR and publishes both in the Community Trade Marks Bulletin (Art. 120 in conjunction with Rule 85 (2) CTMIR).

3. Stay of proceedings before the Community trade mark court The Community trade mark court generally decides on its own about the application for revocation or for a declaration of invalidity pursued by way of the counterclaim. It may not decide ex officio to refer the proceedings to the Office. Pursuant to Art. 100 (7) 1, however, the Community trade mark court hearing a counterclaim for revocation or for a declaration of invalidity may stay the proceedings on application by the proprietor of the contested Community trade mark after hearing the other parties and may request the defendant to submit an application pursuant to Art. 56 to the Office within a time limit set by the court. The counter plaintiff must naturally not wait for such an application of the suing proprietor of the Community trade mark, which can be submitted at any time. On the contrary, he himself may file an application for revocation or for a declaration of invalidity with the Office after having filed the counterclaim and request that the Community trade mark court stays the proceedings in favour of the proceedings before the Office (Art. 104 (2) 2).27 26 It is at the discretion of the Community trade mark court whether the Community trade mark court stays the proceedings at the request of the proprietor of the Community trade mark and sets a time limit for the counter plaintiff for filing an application for revocation or for a declaration of invalidity with the Office. When exercising its discretion, the Community trade mark court must take into account the special circumstances of the individual case.28 Although the CTMR does not explicitly state that the proceedings before the office take precedence over the proceedings before the Community trade mark courts, a certain preference for the proceedings before the Office is anchored in the taxonomy of the relationship between the proceedings before the Office and the Community trade mark courts:29 An isolated application for revocation or for a declaration of invalidity can only be filed with the Office. In contrast, the legal validity of Community trade marks can be contested before Community trade mark courts only indirectly and by way of a counterclaim in defence against an action filed previously pursuant to Art. 96 (a). A slight preference for the procedure 25

26 v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 96, mn. 37; Eisenfu ¨ hr/Overhage, in Eisenfu¨hr/ Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 100, mn 18. 27 S. Art. 104, mn. 16. 28 v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 96, mn. 45. 29 v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 96, mn. 46, Art. 100, mn. 9; Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 16; v. Mu¨hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 220, mn. 10.

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at the Office can also be found in Art. 104 (2): Art. 104 provides that as a rule, the Office or Community trade mark court last hearing an action must stay the proceedings. Only in favour of the Office can an exception to this be found in Art. 104 (2) 2, 3. In its decision to stay the proceedings, the Community trade mark court must set a 27 reasonable deadline for the counterplaintiff (at least one or two months, Rule 71 CTMIR) to file an application for revocation or for a declaration of invalidity with the Office. If the application pursuant to Art. 56 is not made within this time limit, the proceedings before the Community trade mark court will be continued. In such case, the counterclaim will be deemed withdrawn, however (Art. 100 (7) 2). If the counterplaintiff, however, files an application for revocation or for a declaration of invalidity with the Office, the court proceedings will remain stayed until a final decision has been rendered in the administrative procedure. For the duration of the stay of the proceedings the Community trade mark court may order provisional and protective measures (Art. 100 (7) 3 in conjunction with Art. 104 (3)).30

4. European Commission’s proposal for amending the CTMR31 a) Commission’s proposal as to Art. 100 (4). The European Commission’s proposal 28 for amending the CTMR provides for Art. 100 (4) to be replaced by the following language: ‘The European trade mark court with which a counterclaim for revocation or for a declaration of invalidity of the European trade mark has been filed shall not proceed with the examination of the counterclaim, until either the interested party or the court have informed the Agency of the date on which the counterclaim was filed. The Agency shall record that information in the Register. If an application for revocation or for a declaration of invalidity of the European trade mark is pending before the Agency, the court shall be informed thereof by the Agency and stay the proceedings until the decision on the application is final or the application is withdrawn.’ The new version of Art. 100 (4) 1 proposed by the Commission contains new 29 language to the effect that the Community trade mark court at which a counterclaim is filed shall not (any longer) examine the counterclaim before the Office has been informed of the fact that the counterclaim has been filed and of the date on which it was filed. The Office can now be informed by the counterplaintiff himself – in addition to the Community trade mark court. As this was previously the case, the date the counterclaim was filed is recorded by the Office in the Register for Community Trade Marks pursuant to Rule 84 (3)(n) CTMIR and published in the Community Trade Marks Bulletin pursuant to Art. 120 in conjunction with Rule 85 (2) CTMIR (Art. 100 (4) 2 (new version)). It is also now explicitly regulated in the Commission’s proposal that the Office shall 30 inform the Community trade mark court if an application for revocation or for a declaration of invalidity of the Community trade mark attacked by the counterclaim had already been filed at the time the counterclaim was filed (Art. 100 (4) 3 (new version)).32 In this case, the Community trade mark court must stay the proceedings 30

S. Art. 103 for details concerning provisional and protective measures. Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark www.eur-lex.europa.eu Õ Legislation Õ search for legislation. 32 Owing to the fact that it is not regulated in the CTMR itself when a counterclaim is deemed to have been brought (whether this is already the case, for instance, when the statement of counterclaim is submitted to the court or only when the statement of counterclaim is served on the other party), the lex fori of the relevant Community trade mark court must apply pursuant to Art. 101 (3). With regard to the 31

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pursuant to Art. 100 (4) 3 (new version) until the procedure at the Office has come to an end either by way of a final decision or by a withdrawal of the application for revocation or for a declaration of invalidity. The Community trade mark court may order provisional and protective measures for the duration of the stay of the proceedings, according to Art. 104 (3).33 At first glance, Art. 100 (4) 3 (new version) appears to contradict Art. 104 (1), according to which the Community trade mark court may stay the proceedings only after hearing the parties and if there are no special grounds for continuing them. The prerequisites for a stay of the proceedings under Art. 104 (1) are thus stricter than those under Art. 100 (4) 3 (new version). This contradiction can be dissolved, however, if one considers Art. 100 (4) 3 (new version) to be lex specialis for cases in which a counterclaim was already filed in the (later) action before the Community trade mark court.34 31 Ultimately, the new Art. 100 (4) proposed by the Commission thus serves to improve procedural efficiency. b) Commission’s proposal as to Art. 100 (6). According to the Commission’s proposal, Art. 100 (6) should be replaced by the following provision: ‘Where a European trade mark court has given a judgment which has become final on a counterclaim for revocation or for invalidity of a European trade mark, a copy of the judgment shall be sent to the Agency without delay, either by the court or by any of the parties to the national proceedings. The Agency or any other interested party may request information about such transmission. The Agency shall mention the judgment in the Register and shall take the necessary measures to comply with its operative part.’ 33 According to this new provision, an official copy of the final judgement of the Community trade mark court can now be sent to the Office no longer only by the Community trade mark court, but also by one of the parties. The parties thus have an opportunity to accelerate the recording of the content of the judgement in the Register for Community Trade Marks (Rule 84 (3)(o) CTMIR) and the taking of ‘necessary measures’ to comply with the judgement’s operative part (such as the (partial) deletion of the contested Community trade mark from the Register) by the Office (Art. 100 (6) 3 (new version)). The parties may still request to be informed about the transmission of the judgement to the Office (Art. 100 (6) 2 (new version)). 32

V. Effects of a decision 34

If a Community trade mark court declares a Community trade mark to be revoked or invalid as a result of a counterclaim (Art. 100 (5) in conjunction with Art. 57 (5) 1), this decision will have effect – like such a decision by the Office – towards everyone (erga omnes).35 This applies even if the plaintiff is the licensee of the contested Community trade mark and its proprietor did not join the proceedings. date when the application is filed at the Office, it must be taken into account that it is not deemed to have been filed, according to Art. 56 (3) 2 in conjunction with Art. 2 No. 17 of the Fee Regulation, until the fee has been paid to the Office. 33 For details concerning provisional and protective measures, s. the commentary to Art. 103, mn. 3 et seq. 34 Contrary to cases in which the later action is only an action as described in Art. 96 (a) or (c), but in which no counterclaim was filed in the later action. (Only) in these cases Art. 104 (1) would be applicable. S. also the commentary to Art. 104, mn. 6. 35 v. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 221, mn. 14; v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 96, mn. 30.

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A distinction must be made between the date on which the revocation occurs and the 35 date on which invalidity occurs: Where a Community trade mark court declares the Community trade mark to be revoked, the effects of the Community trade mark specified in the CTMR are deemed to have not occurred as from the date the counterclaim was filed36 (Art. 55 (1) 1); an earlier date on which one of the grounds for revocation occurred may be fixed in the decision at the request of one of the parties (Art. 55 (1) 2). Where a Community trade mark court declares a Community trade mark invalid, the effects of the Community trade mark specified in the CTMR are deemed not to occurred from the outset (Art. 55 (2)). If the Community trade mark court rejects the counterclaim (Art. 100 (5) in conjunc- 36 tion with Art. 57 (5) 2), this decision has effect – like such a decision by the Office – only between the parties to the dispute (inter partes). Third parties are thus not bound by the decision of a Community trade mark court that a specific reason for revocation or invalidity does not exist. Such a prejudice will generally have an effect in favour of the proprietor of the Community trade mark in a comparable situation, however.37

Article 101 Applicable law 1. The Community trade mark courts shall apply the provisions of this Regulation. 2. On all matters not covered by this Regulation a Community trade mark court shall apply its national law, including its private international law. 3. Unless otherwise provided in this Regulation, a Community trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located. Rc. 4 Bibliography: Hoffrichter-Daunicht, ‘Die Durchsetzung der Gemeinschaftsmarke vor nationalen Gerichten’, Mitt. 2008, 449–455; Menebro¨cker/Stier, ‘Gemeinschaftsweite Beka¨mpfung von Marken- und Produktpiraterie’, WRP 2012, 885–892; Tilmann, ‘Gemeinschaftsmarke und Internationales Privatrecht’, GRURInt 2001, 673.

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Substantive law (Art. 101 (1), (2)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Relationship between Art. 101 (2) and Art. 102 (2). . . . . . . . . . . . . . . . . . 2. Reference to national substantive law pursuant to Art. 101 (2) . . . . III. Rules of procedure (Art. 101 (1), (3)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Relationship between Art. 101 (3) and Art. 102 (1) 2 . . . . . . . . . . . . . . . 2. Relationship between Art. 94 and Art. 101 (3). . . . . . . . . . . . . . . . . . . . . . . . 3. Reference to national rules of procedure (Art. 101 (3)) . . . . . . . . . . . . .

1 5 6 8 11 11 12 13

I. General Art. 101 – in addition to Art. 14 and Art. 102 – regulates the issue of which law has to 1 be applied by the Community trade mark courts. The starting point for the determination of the applicable law with respect to procedures concerning Community trade 36 37

S. above mn. 25. v. Mu¨hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 222, mn. 23.

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marks is Art. 14. Initially, the CTMR systematically differentiates between the applicable substantive law (Art. 14 (1)) and the applicable rules of procedure (Art 14 (3)). With regard to the issue of what law is applicable, both Art. 14 (1) and Art. 14 (3) refer to Title X of the CTMR, namely Artt. 94 et seq. 2 Title X itself differentiates between actions under Art. 96 for which the Community trade mark courts have exclusive jurisdiction ratione materiae (Art. 94 (1), (2), Artt. 95 to 105) and other disputes concerning Community trade marks (Artt. 94 (1), 106, 107). Art. 94 (1) describes these proceedings collectively as ‘proceedings relating to Community trade marks’. To the extent that the applicable substantive law is concerned, Art. 14 (1) 1 applies to all proceedings relating to Community trade marks and clarifies that the effects of Community trade marks shall be governed solely by the provisions of the CTMR. In other respects, Art. 14 (1) 2 refers to the national law of the Member States pursuant to the provisions of Title X. Art. 14 (1) 2, however, applies solely to proceedings concerning the infringement of Community trade marks and thus refers to Art. 101 (1), (2) and Art. 102 (1) 2, (2). For other disputes concerning Community trade marks (Artt. 106, 107), there is no provision corresponding to Art. 14 (1) 2. Artt. 106, 107 also do not contain a reference to national law. There is, therefore, a lack of reference. The general principles apply at the courts of the Member States, so that these courts apply their respective lex fori. 3 With respect to the applicable rules of procedure, Art. 14 (3) also refers to the rules set out in Title X. Art. 94 (1) is the initial provision that refers to Reg. 1215/2012 for all proceedings relating to Community trade marks. Art. 94 (1) is, however, subsidiary (‘unless otherwise specified in this Regulation’). It is superseded by the more special provisions of Artt. 94 (2), 95 to 105 for proceedings for which Community trade mark courts have exclusive jurisdiction ratione materiae pursuant to Art. 96, and Artt. 106, 107 with respect to other disputes concerning Community trade marks. 4 In this context, Art. 101 constitutes a provision governing issues relating to both applicable substantive law and rules of procedure. It is, however, applicable solely to proceedings for which the Community trade mark courts have exclusive jurisdiction.

II. Substantive law (Art. 101 (1), (2)) 5

For proceedings under Art. 96, Art. 101 (1) repeats the principle already contained in Art. 14 (1) 1 for (all) proceedings relating to Community trade marks that the CTMR has priority. Issues of substantive law that are not addressed in the CTMR are to be resolved under the law that is applicable under Art. 101 (2) or Art. 102 (2).

1. Relationship between Art. 101 (2) and Art. 102 (2) 6

It is provided for in Art. 101 (2) that the Community trade mark courts shall apply their respective national law, including their private international law, on all matters not covered by the CTMR. Art. 102 (2) contains a similar provision, according to which the Community trade mark courts shall apply the law of the Member State in which the acts of infringement or threatened infringement were committed, including its private international law. It arises, however, from the systematic context of Art. 102 (1) and Art. 102 (2) that Art. 102 (2) – like Art. 102 (1) 2 – considers only the regulation of applicable law concerning ‘sanctions’ where a Community trade mark has been infringed or threatened to be infringed, whereas the scope of application of Art. 101 (2) is broader

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in this respect. Therefore, the relationship between Art. 101 (2) and Art. 102 (2) is one of speciality: Within its scope of application, Art. 102 (2) supersedes Art. 101 (2).1 Art. 102 (2) thus determines the applicable law to the extent ‘sanctions’ for the 7 infringement of Community trade marks are concerned.2 Art. 101 (2) is applicable to all other matters.3 Therefore, for example, statute of limitations and forfeiture of rights to injunctive relief based on an infringement of a Community trade mark4 by a prior national trade mark5 fall under the scope of application of Art. 101 (2).6 Claims to compensation for damage incurred by the infringer’s act and claims to provision of information asserted to calculate such a compensation claim fall under the scope of application of Art. 101 (2) as well, since these are not ‘sanctions’ in terms of Art. 102.7 The same applies to the claims to provision of information on the origin and distribution networks of goods marked illegally (Art. 8 Dir. 2004/48).8

2. Reference to national substantive law pursuant to Art. 101 (2) According to Art. 101 (2), the lex fori, thus the national law of that Community trade 8 mark court before which the proceedings are pending, applies to substantive law matters that are not addressed in the CTMR. Contrary to the wording of Art. 102 (2), which is not clear in this respect9, it can be concluded clearly from Art. 101 (2) that Art. 101 (2) provides that one law should be applied for the entire Community. In this respect, Art. 101 (2) refers to the entire national law of such Member State including its private international law (reference to that law in its entirety) in which the Community trade mark court is located. In all10 Member States, the reference in Art. 101 (2) leads directly to the application 9 of Art. 8 (2) of Reg. 864/2007, which came into force on 11 January 2009.11 Art. 8 (2) of Reg. 864/2007 provides for a special connecting rule to such effect that in the case of non-contractual obligations arising from the infringement of unitary Community intellectual property rights (such as Community trade marks), the law applicable shall, for any question that is not governed by the relevant Community instrument (in the present case, the CTMR), be the law of the country in which the act of infringement was committed.12 Since both Art. 101 (2) and Art. 102 (2) refer to Art. 8 (2) of Reg. 864/2007, it is 10 obsolete in practice to differentiate between sanctions in terms of Art. 102 and other claims:13 Ultimately, both provisions refer to Art. 8 (2) of Reg. 864/2007 and, therefore – 1 S. also Hoffrichter-Daunicht, Mitt. 2008, 449, 453; Tilmann, GRURInt 2001, 673, 675; Menebro ¨ cker/ Stier, WRP 2012, 885, 891. 2 S. commentary to Art. 102. 3 Gielen, in Gielen/v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 101. 4 CJ Case C-479/12 H. Gautzsch Großhandel GmbH & Co. KG v Mu ¨ nchener Boulevard Mo¨bel Joseph Duna GmbH, mn. 49 (concerning the CDR), available at: www.curia.eu Õ search Case law. 5 The forfeiture of rights of the proprietor of a Community trade mark as opposed to a prior Community trade mark is governed by Art. 54. 6 S. the commentary to Art. 102, mn. 11. 7 CJ Case C-479/12 H. Gautzsch Großhandel GmbH & Co. KG v Mu ¨ nchener Boulevard Mo¨bel Joseph Duna GmbH, mn. 53 (concerning Art. 89 CDR), available at: www.curia.eu Õ search Case law. 8 S. the commentary to Art. 102, mn. 6. 9 S. the commentary to Art. 102, mn. 14. 10 An exception applies to Denmark, which is not deemed a Member State within the meaning of Reg. 864/2007 pursuant to Art. 1 (4) of Reg. 864/2007. Nevertheless, Reg. 864/2007 is applicable if it leads to the applicability of Danish law pursuant to Art. 3 of Reg. 864/2007. 11 S. Art. 32 (2) of Reg. 864/2007. 12 S. the commentary to Art. 102, mn. 15. 13 S. mn. 7 above.

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Community Trade Mark Regulation

in the event of acts of infringement in several different Member States – lead to a parallel application of several different national laws of numerous Member States (socalled ‘mosaic solution’).14

III. Rules of procedure (Art. 101 (1), (3)) 1. Relationship between Art. 101 (3) and Art. 102 (1) 2 11

Art. 101 (3) provides that, unless otherwise provided for in the CTMR, a Community trade mark court shall apply the rules of procedure governing the same type of action relating to national trade marks in the Member State in which the court is located. Art. 102 (1) 2 also contains a provision concerning the applicable rules of procedure. Art. 102 (1) 2 thus regulates in this respect that the Community trade mark court shall take such measures in accordance with its national law as are aimed at ensuring that the prohibition from proceeding with the acts of infringement is complied with. Whereas Art. 102 (1) 2 provides only a rule relating to applicable law in the event of coercive measures to enforce the prohibition, the scope of application of Art. 101 (3) is broader. Just as the relationship between Art. 101 (2) to Art. 102 (2) is one of speciality,15 the relationship between Art. 101 (3) to Art. 102 (1) 2 is also one of speciality: Within its scope of application, Art. 102 (1) 2 supersedes Art. 101 (3).

2. Relationship between Art. 94 and Art. 101 (3) 12

The starting point for the determination of the applicable rules of procedure is Art. 14 (3), which refers to the provisions of Title X. Within Title X, Art. 94 (1) is the initial provision that refers to Reg. 1215/2012 for all proceedings relating to Community trade marks. Art. 94 (1) is, however, subsidiary (‘unless otherwise specified in this Regulation’). It is thus superseded by Art. 101 (3) with respect to applicable rules of procedure. Art. 101 (3), in turn, contains a reference (‘Unless otherwise provided in this Regulation’) back to Art. 94 (1), (2) in conjunction with the provisions of Reg. 1215/2012. Therefore, the provisions of Reg. 1215/2012, through Art. 94 (1), become part of the CTMR in a certain sense. Only to the extent that Reg. 1215/2012 does not contain relevant rules of procedure and therefore there is nothing ‘otherwise provided in the CTMR’ in the sense of Art. 101 (3) the Community trade mark court, through Art. 101 (3), applies its national law.

3. Reference to national rules of procedure (Art. 101 (3)) 13

Since the CTMR basically does not include – apart from the provisions on jurisdiction (Artt. 96 et seq., 103, 105) and the provisions on staying the proceedings (Artt. 100 (7), 104) – any rules of procedure of its own, and Reg. 1215/2012 has only incomplete provisions on procedure, in most cases the Community trade mark courts have to apply the national rules of procedure that would also apply in proceedings concerning a national trade mark. The rules of procedure are thus determined mainly by the national law that is applicable in the event of an infringement of national trade marks. This applies, for example, to issues of national local jurisdiction, service of statements of claim, language of proceedings, oral hearing, court notices or the duration and costs of proceedings. 14 15

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Art. 102 CTMR

Article 102 Sanctions 1. Where a Community trade mark court finds that the defendant has infringed or threatened to infringe a Community trade mark, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with. 2. In all other respects the Community trade mark court shall apply the law of the Member State in which the acts of infringement or threatened infringement were committed, including the private international law. Bibliography: Fayaz, ‘Sanktionen wegen der Verletzung von Gemeinschaftsmarken: Welche Gerichte sind zusta¨ndig und welches Recht ist anzuwenden?’ (2. Teil), GRURInt 2009, 566–577; Knaak, ‘Die Durchset¨ berlezung der Rechte aus der Gemeinschaftsmarke’, GRUR 2001, 21–29; Koch/Samwer, ‘Strategische U gungen zur Durchsetzung der Gemeinschaftsmarke in den Mitgliedstaaten der EU’, MarkenR 2006, 493– 504; Kur, ‘Durchsetzung gemeinschaftsweiter Schutzrechte: Internationale Zusta¨ndigkeit und anwendbares Recht’, GRURInt 2014, 749–760.

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Sanctions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Issuing a prohibition (Art. 102 (1) 1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Infringement of a Community trade mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. No opposing special reasons. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Capability of being sued . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Coercive measures to enforce the prohibition (Art. 102 (1) 2). . . . . . . . V. Other sanctions (Art. 102 (2)). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 4 7 8 11 12 13 14

I. General Art. 102 determines what ‘sanctions’ can be imposed by Community trade mark 1 courts in the event of an infringement of a Community trade mark. In this context, Art. 102 differentiates between sanctions autonomously regulated in the CTMR (Art. 102 (1)) and other sanctions (Art. 102 (2)). In view of the latter, the Community trade mark court shall apply the law of the Member State in which the acts of infringement or threatened infringement were committed, including the private international law (lex loci delicti). At first sight, the provision of Art. 102 appears to be clear and unambiguous. Already 2 at second sight, however, questions arise: By its nature, Art. 102 appears to be a determination of the procedure before the Community trade mark courts. This is suggested not least by the fact that it is a provision in Title X of the CTMR entitled ‘Jurisdiction and Procedure in Legal Actions’. On the other hand, Art. 102 (1) links the imposition of sanctions by a Community trade mark court to the substantive law determination that the Community trade mark was infringed. Consequently, Art. 102 itself regulates neither the question of when an infringement of the Community trade mark is shown to exist nor what claims of the entitled person result from this. By contrast, Art. 9 (1) 1 establishes that a Community trade mark shall confer on the proprietor exclusive rights therein. In connection with this, Art. 9 (1) 2 establishes a Carsten Menebro¨cker/Sabine Stier

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Community Trade Mark Regulation

right of the proprietor of the Community trade mark to prevent third-party use. One will not succeed in finding the regulation of an explicit – ensuing – claim to injunctive relief against the infringer in the CTMR. The Community trade mark proprietor’s claim to injunctive relief against the infringer can, however, also be concluded from the right to prevent third-party use.1 In terms of doctrine, the claim to injunctive relief will thus have to be located in Art. 9 (1) 2 and not in Art. 102 (1), which (only) determines how the Community trade mark courts can confer validity on the claim to injunctive relief under Art. 9 (1) 2 in procedural terms. 3 By contrast, Art. 102 (2) contains a reference to the substantive law of the respective Member States. In view of claims with regard to infringement of Community trade marks that are not autonomously regulated in the CTMR, this provision thus makes reference to the law of the Member State in which the act of infringement was committed (lex loci delicti). To a certain degree, it is a ‘catch-all provision’ in cases of infringement of the Community trade mark.2

II. Sanctions Art. 102 establishes the sanctions Community trade mark courts may impose when Community trade marks are infringed. According to Art. 102 (1), a Community trade mark court may issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. It may thus issue a prohibition, the Community trade mark court taking such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with, pursuant to Art. 102 (1) 2. In view of the procedure to enforce the prohibition, the regulation of Art. 102 (2) 2 thus takes precedence over the general regulation of Art. 101 (3).3 5 Other sanctions than the prohibition to be issued by the Community trade mark court pursuant to Art. 102 (1) 1 are not explicitly provided for in the CTMR. On the contrary, Art. 102 (2) refers in this regard to the law of the respective Member State in which the acts of infringement or threatened infringement were committed. What sanctions are supposed to be those with regard to which Art. 102 (2) refers to national law, however, remains unclear. Claims to compensation of damage incurred by the infringer’s act do not constitute a ‘sanction’ in the CJ’s opinion.4 This applies mutatis mutandis to claims to provision of information asserted to calculate such a compensation claim.5 Claims to the destruction of infringing goods, by contrast, are supposed to constitute ‘sanctions’ within the meaning of Art. 89 CDR.6 This was the conclusion drawn by the CJ against the background of the other provisions in Art. 89 (1)(a), (b) and (c) CDR, which, in addition to the prohibition from proceeding with infringing acts, also regulate the seizure of infringing products and of the materials or implements 4

1 Knaak GRUR 2001, 21, 28; von Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 51, mn. 30; in this sense probably also Eisenfu¨hr/Eberhardt, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 9, mn. 7. 2 For the relation between Art. 101 (2) and Art. 102 (2), s. the commentary to Art. 101, mn. 6. 3 With regard to the relationship between Art. 101 (3) and Art. 102 (1), s. the commentary to Art. 101, mn. 11. 4 CJ Case C-479/12 H. Gautzsch Großhandel GmbH & Co. KG v Mu ¨ nchener Boulevard Mo¨bel Joseph Duna GmbH, mn. 53 (concerning Art. 89 CDR), available at: www.curia.eu Õ search Case law. 5 CJ Case C-479/12 H. Gautzsch Großhandel GmbH & Co. KG v Mu ¨ nchener Boulevard Mo¨bel Joseph Duna GmbH, mn. 53 (concerning Art. 89 CDR), available at: www.curia.eu Õ search Case law. 6 CJ Case C-479/12 H. Gautzsch Großhandel GmbH & Co. KG v Mu ¨ nchener Boulevard Mo¨bel Joseph Duna GmbH, mn. 52 (concerning Art. 89 CDR), available at: www.curia.eu Õ search Case law.

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Art. 102 CTMR

predominantly used in order to manufacture the infringing goods. Against this background, the destruction of infringing goods is supposed to be ‘other sanctions appropriate under the circumstances’ within the meaning of Art. 89 (1)(d) CDR. In principle, Art. 89 (1)(d) CDR corresponds to the regulation in Art. 102 (2). Apart from the sanction of the prohibition from proceeding with infringing acts, however, Art. 102 does not contain a provision equivalent to the catalogue of sanctions contained in Art. 89 (1) CDR. Nevertheless, one will have to assume, also within the framework of Art. 102 (2), that the claim to destruction is a ‘sanction’ within the meaning of Art. 102. It is likely that the same applies to claims to recall and removal from the distribution channels also regulated in Art. 10 Dir. 2004/48 in addition to the claim to destruction. Overall, ‘sanctions’ thus refer to such measures that directly serve as an immediate 6 and final remedy for the infringement. Against this background, one will be able to allocate the claims to provision of information on the origin and distribution networks of goods marked illegally (Art. 8 Dir. 2004/48) to the sanctions of Art. 102.

III. Issuing a prohibition (Art. 102 (1) 1) Art. 102 (1) 1 permits the Community trade mark court to issue an order prohibiting 7 the defendant from proceeding with certain acts if it finds that they infringed or would infringe the Community trade mark unless there are special reasons opposing such prohibition. The territorial scope of such a prohibition is determined by Artt. 97, 98.

1. Infringement of a Community trade mark The court’s option of issuing a sanction pursuant to Art. 102 (1) 1 and thus of 8 prohibiting the defendant from proceeding with his conduct is linked to the substantive finding of the court that a Community trade mark was infringed or would be infringed. The Community trade mark was infringed if the defendant interfered with the scope 9 of protection of the Community trade mark – without the entitled party’s consent – and thus performed acts of use exclusively assigned to the proprietor of the Community trade mark. These exclusive rights are regulated in Artt. 9 et seq. By way of example, Art. 9 (2) mentions certain acts of use that are exclusively assigned to the proprietor of the Community trade mark in the cases of Art. 9 (1). These acts of use, however, are by no means exhaustive, as can be derived from the wording of Art. 9 (2). It is required under Art. 102 (1) 1 that an act of infringement has already been 10 actually committed or is threatened to be committed. Consequently, the precondition is a likelihood of infringement that may result from the likelihood of an already committed act of infringement being continued (likelihood of repeated infringement) or from a threatened first-time infringement (likelihood of first-time infringement). According to the wording of Art. 102 (1) 1, no further findings are necessary for existence of a likelihood of repeated infringement. Instead, it is sufficient that an actual act of infringement was already committed. The existence of a likelihood of first-time infringement, however, must be positively found by the court. The existence of a likelihood of first-time infringement is to be assumed if there is immediate reason to suspect an act of infringement. The act of threatened infringement must loom in such a concrete way that a reliable assessment is possible under legal aspects, for example, if the potential infringer announces the performance of certain acts or applies for an infringing trade mark.

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2. No opposing special reasons 11

Pursuant to Art. 102 (1) 1 at the end, issuing a prohibition is subject to the provision that no special reasons oppose the prohibition. Being an exception from the Community trade mark court’s general duty to issue a prohibition, this restriction must be interpreted narrowly.7 Actual circumstances may be an obstacle to a prohibition pursuant to Art. 102 (1) 1 as special reasons.8 With regard to legal defences, a differentiation must be made: Legal defences resulting from Community law can definitely be regarded as special reasons in terms of Art. 102 (1) 1. Legal aspects resulting from national law of the Member States, by contrast, cannot oppose a prohibition pursuant to Art. 102 (1) 1. The defence of forfeiture raised by a proprietor of a national trade mark9 or the defence of the statute of limitations are thus not special reasons in terms of Art. 102 (1) 1 at the end.10 Nor are Community trade mark courts entitled to refrain from a prohibition under Art. 102 (1) 1 and the measures ensuring compliance with it on the basis of possibilities of sanctions provided for in national law11 or on the basis of their own assessment of the risk of further infringement12. On the other hand, a special reason within the meaning of Art. 102 (1) 1 at the end is shown to exist if prosecution of the act considered infringing is no longer possible, particularly if an application was filed against the infringed Community trade mark resulting in the declaration of revocation of the rights arising from the Community trade mark.13 The reason for this is that the legal defences that are raised in connection with an application for declaration of revocation of a Community trade mark result from Community law (Art. 51).

3. Capability of being sued 12

According to Art. 102 (1) 1, the Community trade mark court prohibits the defendant from proceeding with the infringing act. The CTMR does not regulate, however, who is ‘defendant’ in this sense. It can be derived from Art. 11 1 Dir. 2004/48 that the defendant may initially be the infringer. Moreover, Art. 11 3 Dir. 2004/48 ensures that the right holders are in a position to apply for an injunction prohibiting continued infringement of the Community trade mark also against intermediaries whose services are used by a third party to infringe the Community trade mark.

IV. Coercive measures to enforce the prohibition (Art. 102 (1) 2) 13

According to Art. 102 (1) 2, the Community trade mark courts shall take such measures in accordance with their lex fori – for instance, imposition of regulatory 7

CJ Case C-316/05 Nokia Corp. v Joacim Wa¨rdell [2006] ECR I-12083, mn. 30. CJ Case C-316/05 Nokia Corp. v Joacim Wa¨rdell [2006] ECR I-12083, mn. 38; CJ Case C-479/12 H. Gautzsch Großhandel GmbH & Co. KG v Mu¨nchener Boulevard Mo¨bel Joseph Duna GmbH, mn. 48 (on CDR), available at: www.curia.eu Õ search Case law. 9 This is different, however, in the case that the defence of forfeiture is raised by the proprietor of a prior Community trade because this defence is regulated in Community law (Art. 54). This defence may thus be an obstacle to a prohibition pursuant to Art. 102 (1) 1 as a special reason. 10 CJ Case C-479/12 H. Gautzsch Großhandel GmbH & Co. KG v Mu ¨ nchener Boulevard Mo¨bel Joseph Duna GmbH, mn. 48 (concerning CDR, which does not contain any regulation on forfeiture, however), available at: www.curia.eu Õ search Case law; s. the commentary to Art. 101, mn. 7. 11 CJ Case C-316/05 Nokia Corp. v Joacim Wa ¨ rdell [2006] ECR I-12083, mn. 45. 12 CJ Case C-316/05 Nokia Corp. v Joacim Wa ¨ rdell [2006] ECR I-12083, mn. 36. 13 CJ Case C-316/05 Nokia Corp. v Joacim Wa ¨ rdell [2006] ECR I-12083, mn. 35. 8

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Art. 102 CTMR

measures – as are aimed at ensuring that the prohibition is complied with.14 The Community trade mark courts are thus obliged to take such measures among those provided for under national law as are aimed at ensuring compliance with the prohibition, even if the relevant measures could not be taken under national law in the event of corresponding infringement of a national trade mark.15

V. Other sanctions (Art. 102 (2)) The substantive law on subsequent claims being significant in practice to provision of 14 information, payment of compensation and destruction, recall and removal from the channels of commerce owing to infringement of Community trade marks were not regulated in the CTMR. To the extent such subsequent claims have the nature of a sanction, such as in the event of claims to destruction, recall and removal from the channels of commerce,16 Art. 102 (2) refers to the law of the Member State (including its private international law) in which the acts of infringement or threatened infringement were committed (lex loci delicti). Owing to the fact that, on the one hand, singular is used with regard to the law to be applied (‘the law of the Member State’), but, on the other, plural is used in view of the referenced act of infringement (‘in which the acts of infringement or threatened infringement were committed’), it is unclear whether Art. 102 (2) establishes the applicability of the law of only one place of infringement to the entire Community if an act of infringement was committed there, or whether at the respective places of infringement, the law of such place of infringement is to be applied. The consequence of the interpretation presented last would be a ‘mosaic solution’ according to which, in the event of acts of infringement in 28 Member States, the Community trade mark courts would have to apply the law of 28 Member States in view of sanctions not autonomously regulated in the CTMR. If Art. 102 (2) is understood, however, as a reference to only one (1) law as long as an act of infringement was committed there, the right holder would virtually have a right of choice concerning the law applicable to the entire Community if there were several places of infringement. Since Reg. 864/2007 came into force on 11 January 200917, the answer to this question with regard to Art. 102 (2) is irrelevant, however, because the reference of Art. 102 (2) directly leads to application of Art. 8 (2) of Reg. 864/2007 in all Member States.18 Art. 8 (2) of Reg. 864/2007 provides for a special connecting rule to such effect that in the case of non-contractual obligations arising from the infringement of unitary Community intellectual property rights (such as the Community trade mark), the law applicable shall, for any question that is not governed by the relevant Community instrument (in the present case, the CTMR), be the law of the country in which the act of infringement was committed. It has not been finally clarified, however, whether the national law to be determined 15 under Art. 8 (2) of Reg. 864/2007 is subject solely to the place where the act was committed or whether the place where the act was committed and the place where the act had effect can be connecting factors within the meaning of Art. 8 (2) of Reg. 864/2007. 14

CJ Case C-316/05 Nokia Corp. v Joacim Wa¨rdell [2006] ECR I-12083, mn. 49. CJ Case C-316/05 Nokia Corp. v Joacim Wa¨rdell [2006] ECR I-12083, mn. 62. 16 In this regard s. mn. 5 above. 17 S. Art. 32 (2) of Reg. 864/2007. 18 An exception applies to Denmark, which is not deemed a Member State within the meaning of Reg. 864/2007 pursuant to Art. 1 (4) of Reg. 864/2007. Nevertheless, Reg. 864/2007 is applicable pursuant to Art. 3 of Reg. 864/2007 if it leads to the applicability of Danish law. 15

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The wording of Art. 8 (2) of Reg. 864/2007 seems to suggest the former. It speaks of the place where the ‘act of infringement was committed’. Also, the language used by Art. 8 (2) of Reg. 864/2007 is identical to the language used by Art. 97 (5) which by the CJ is construed to the effect that the act where the infringement was committed is the place only where an active conduct occurred which gave rise for the infringement to occur.19 Moreover, Art. 4 (1) of Reg. 864/2007, for example, speaks of the place where the damage occurs (place of effect) respectively of the place where the event giving rise to the damage occurred or where indirect consequences of that event occur (place of commission or effect). It is therefore likely that Art. 8 (2) of Reg. 864/2007 must be interpreted in the same way as Art. 97 (5), so that also in Art. 8 (2) of Reg. 864/2007, only the place of commission constitutes a connecting factor for the place of commission of the infringement. 16 The question of whether Art. 8 (2) of Reg. 864/2007 forces the legal systems of all countries, in which an infringement was committed, to be cumulatively applied, must be distinguished from this. The BGH assumed – without detailed reasoning – in its decision to refer the matter to the CJ, which led to the decision Gautzsch/Duna, that the legal systems of all countries, in which an infringement took place, applied in parallel (‘mosaic solution’).20 The Advocate General was also in favour of the mosaic solution in the Gautzsch/Duna case.21 The expectation that the CJ would uphold this opinion in Gautzsch/Duna was not fulfilled, however. Instead, the CJ did not answer the question,22 so this issue must still be considered unresolved. The wording of Art. 8 (2) of Reg. 864/2007 can be interpreted in two ways. Some aspects of an effective enforcement of rights would indeed suggest a unitary application of the laws that apply at the place the infringement took place within the entire Community.23 In practice, however, it is probably to be assumed, in view of the communicated view held by the BGH and the Advocate General, that the mosaic solution will be applied in cases concerning the assertion of claims that are not regulated by the CTMR. 17 Community trade mark courts having Community-wide jurisdiction are thus confronted with the situation that they may have to apply the law of numerous Member States parallel pursuant to Art. 102 (2), Art. 8 (2) of Reg. 864/2007. It is true that Dir. 2004/48 has meanwhile lead to a harmonisation at the core of the law of sanctions. Owing to the fact, however, that Dir. 2004/48 leads to a minimum harmonisation, differences may remain due to Member States with a higher level of protection.24 Overall, when asserting claims within the meaning of Art. 102 (2), it must thus be kept in mind that a bundle of legal systems must possibly be applied before Community trade mark courts with regard to which the plaintiff will often bear the burden of pleading (Art. 101 (3)). To the extent that claims are asserted that arise from Dir. 2004/ 48, it may suffice for determining the foreign law, however, that the plaintiff submits opinions of lawyers from these Member States in this regard.25

19 CJ Case C-360/12 Coty Germany GmbH v. First Note Perfumes NV, mn. 30 et seq., available at: www.curia.eu Õ search Case law. 20 BGH Case I ZR 74/10 GRUR 2012, 1253 – Gartenpavillon, mn. 49. 21 Opinion of the Advocate General in the CJ Case C-479/12 H. Gautzsch Großhandel GmbH & Co. KG v Mu¨nchener Boulevard Mo¨bel Joseph Duna GmbH, mn. 99–102 (concerning Art. 89 CDR), available at: www.curia.eu Õ search Case law. 22 CJ Case C-479/12 H. Gautzsch Großhandel GmbH & Co. KG v Mu ¨ nchener Boulevard Mo¨bel Joseph Duna GmbH, mn. 51–55 (concerning Art. 89 CDR), available at: www.curia.eu Õ search Case law. 23 S. inter alia Kur, GRURInt 2014, 749, 759. 24 Fayaz, GRURInt 2009, 566, 568; Koch/Samwer, MarkenR 2006, 493, 502. 25 OLG Frankfurt a.M Case 6 U 10/11 GRUR-RR 2012, 473, 475 – Joop!

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The European Commission’s proposal for amending the CTMR26 does foresee to 18 replace Art. 102 (2) by the following language: ‘The European trade mark court may also apply measures or orders available under the applicable law which it deems appropriate under the circumstances of the case.’ The language of the amendment suggests that the provision will no longer itself 19 directly determine the applicable substantive law. Art. 101 (2) thus becomes the catchall clause determining the applicable law with regard to all questions of substantive law not covered by the CTMR. A distinction between ‘sanctions’ and ‘all other matters’ will become obsolete as Art. 101 (2) determines the applicable law for all matters of substantive law not addressed in the CTMR and leads to the applicability of Art. 8 (2) of Reg. 864/2007. However, this is ultimately a clarification only. The legal situation is not actually being changed thereby as both provisions – Art. 101 (2) and Art. 102 (2) – did direct to Art. 8 (2) of Reg. 864/2007 before.

Article 103 Provisional and protective measures 1. Application may be made to the courts of a Member State, including Community trade mark courts, for such provisional, including protective, measures in respect of a Community trade mark or Community trade mark application as may be available under the law of that State in respect of a national trade mark, even if, under this Regulation, a Community trade mark court of another Member State has jurisdiction as to the substance of the matter. 2. A Community trade mark court whose jurisdiction is based on Article 97 (1), (2), (3) or (4) shall have jurisdiction to grant provisional and protective measures which, subject to any necessary procedure for recognition and enforcement pursuant to Title III of Regulation (EC) No 44/2001, are applicable in the territory of any Member State. No other court shall have such jurisdiction. Bibliography: Hopf, ‘Internationale Zusta¨ndigkeit und Kognitionsbefugnis bei der Verletzung von Gemeinschaftsmarken und – geschmacksmustern’, MarkenR 2012, 229–236; Knaak, ‘Die Rechtsdurchsetzung der Gemeinschaftsmarke und der a¨lteren nationalen Rechte’, GRURInt 1997, 864–871; Knaak, ‘Die Durchsetzung der Rechte aus der Gemeinschaftsmarke’, GRUR 2001, 21–29; Koch/Samwer, ‘Strate¨ berlegungen zur Durchsetzung der Gemeinschaftsmarke in den Mitgliedstaaten der EU’, gische U MarkenR 2006, 493–504; Kouker, ‘Verteidigung und Durchsetzung der Gemeinschaftsmarke in der Europa¨ischen Union’, Mitt. 2000, 241–253; Menebro¨cker/Stier, ‘Gemeinschaftsweite Beka¨mpfung von Marken- und Produktpiraterie’, WRP 2012, 885–890; Peukert/Kur, ‘Stellungnahme des Max-PlanckInstituts fu¨r Geistiges Eigentum, Wettbewerbs- und Steuerrecht zur Umsetzung der Dir. 2004/48/EC zur Durchsetzung der Rechte des geistigen Eigentums in deutsches Recht’, GRURInt 2006, 292–297; Rohnke, ¨ berlegungen zur Rechtsdurchsetzung’, ‘Gemeinschaftsmarken oder nationale Marken? Strategische U GRURInt 2002, 979–989; Schulte-Beckhausen, ‘Die gerichtliche Durchsetzung von Anspru¨chen wegen Verletzung der Gemeinschaftsmarke’, WRP 1999, 300–306; Sosnitza, ‘Der Grundsatz der Einheitlichkeit im Verletzungsverfahren der Gemeinschaftsmarke – Zugleich Besprechung von EuGH, Urt. v. 12.4.2011– C 235/09–DHL/Chronopost’, GRUR 2011, 465–468; Sujecki, ‘Die Solvay-Entscheidung des EuGH und ihre Auswirkungen auf Verfahren u¨ber Immaterialgu¨terrechte’, GRURInt 2013, 201–212.

26 Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark www.eur-lex.europa.eu Õ Legislation Õ search for legislation.

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Community Trade Mark Regulation Content

I. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Scope of application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Disputes concerning the infringement of a Community trade mark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Provisional and protective measures. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Definition of terms. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Differentiation between protective measure and order for performance. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Individual provisional measures . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . aa) Prohibitory order (Art. 9 Dir. 2004/48) . . . . . . . . . . . . . . . . . . . . . . . bb) Preserving evidence (Art. 7 Dir. 2004/48) . . . . . . . . . . . . . . . . . . . . cc) Information (Art. 8 Dir. 2004/48) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Extension of jurisdiction. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Jurisdiction ratione materiae . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. International jurisdiction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Community trade mark courts. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) National courts . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Scope of jurisdiction in proceedings concerning provisional measures . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Other principles of proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Procedure for recognition and enforcement. . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 2 3 3 5 7 7 9 10 11 11 12 13 15 19 20 24

I. General 1

Art. 103 regulates aspects of jurisdiction, proceedings and territorial scope in connection with provisional and protective measures in respect of the infringement of a Community trade mark. In this regard, it is required that the national law of the Member State in which the seised court is located permits provisional measures. In view of the applicable procedural law, Art. 103 (1) refers directly to the lex fori of the seised court. Art. 103 (2) contains a regulation on the territorial scope of decisions concerning provisional measures.

II. Scope of application 1. Disputes concerning the infringement of a Community trade mark 2

Art. 103 itself does not provide any information on which substantive issues concerning Community trade marks can be regulated by provisional measures. From the systematic position of the provision in the section ‘Disputes concerning the infringement and validity of Community trade marks’ it can be concluded, however, that the proceedings must be of the type described in Art. 96.1 Only by understanding Art. 103 in this way, there is a raison d’eˆtre for Art. 103, that extends the provisions regarding jurisdiction ratione materiae in Art. 96 to the effect that, in addition to the Community trade mark courts, also the national courts of the Member States may order provisional measures. If the proceedings mentioned in Art. 103 (1) were not those referred to in Art. 96, an explicit regulation of the jurisdiction of the national courts would not be required, because proceedings other than those referred to in Art. 96 are not assigned 1

Menebro¨cker/Stier, WRP 2012, 885, 890.

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exclusively to the Community trade mark courts. Art. 103 thus applies to proceedings that are mentioned in view of their substance in Art. 96. Art. 103 does not provide an answer as to whether provisional measures are possible in these proceedings, and if so, what these measures would be, but refers to the law of the Member State in which the court seised has its seat (lex fori).

2. Provisional and protective measures a) Definition of terms. Art. 103 establishes that the courts of a Member State – 3 including the Community trade mark courts – may order all provisional, including protective measures in respect of a Community trade mark as may be available under the law of that Member State in respect of a national trade mark. The provision thus presumes the possibility under the law of the Member State of providing for provisional, including protective measures, but does not establish such measures itself. Moreover, the CTMR does not define the term of ‘provisional and protective measures’, that can be found also in Art. 104 (3) in addition to Art. 103 (1) and (2). The definition of the content of the feature ‘provisional and protective measure’, however, is decisive for opening the scope of Art. 103. It can initially be concluded from the wording of Art. 103 (1), which is apparently 4 modelled on the wording of Art. 35 of Reg. 1215/20122, that ‘protective measures’ are an example of ‘provisional measures’. The umbrella term for the content of the regulation under Art. 103 is thus provisional measures. For further interpretation of this term, reference can be made to the court rulings relating to Art. 35 of Reg. 1215/2012 even if Art. 94 (2)(a) excludes the direct application of Art. 35 of Reg. 1215/2012 to proceedings in respect of the actions and claims referred to in Art. 96. Therefore, provisional measures are those ‘intended to preserve a factual or legal situation so as to safeguard rights the recognition of which is sought elsewhere from the court having jurisdiction as to the substance of the matter’.3 In factual terms, these are thus measures of provisional legal protection. They are supposed to prevent a situation in which the creditor’s exercise of his right is thwarted or substantially impeded by a change of the existing situation to his detriment. In terms of content, they cause – at least in theory – a mere ban on change and thus a protection (protective measure). The scope of ‘provisional measures’, however, exceeds protective measures. For example, the applicant’s need for (early and quick) satisfaction of his claim can be so great that he could not wait for a proceeding on the merits without suffering disproportionately great irreparable damage. Beyond mere protective measures, it can therefore be required and, in the event, justified in view of the parties’ interests to issue orders by way of provisional legal protection that already result in (provisional) satisfaction of the creditor’s principal claim (order for performance).4 The provisions on jurisdiction contained in Art. 97 would be circumvented, however, if an order for performance that would be recognised and enforced in the Member State in which, for example, the respondent has his seat, could be issued within the framework of a provisional measure by a court not having jurisdiction as to the substance of the matter. The application of Art. 103 (1) thus requires differentiation as to 2 Art. 35 of Reg. 1215/2012: ‘Application may be made to the courts of a Member State for such provisional, including protective, measures as may be available under the law of that Member State, even if the courts of another Member State have jurisdiction as to the substance of the matter.’ 3 Concerning Reg. 44/2001: CJ Case C-261/90 Reichert and Kockler v Dresdner Bank AG [1992] ECR I02149, mn. 34; CJ Case C-391/95 Van Uden Maritime BV v Kommanditgesellschaft in Firma Deco-Line and Others [1998] ECR I-07091, mn. 37. 4 CJ Case C-391/95 Van Uden Maritime BV v Kommanditgesellschaft in Firma Deco-Line and Others [1998] ECR I-07091, mn. 45.

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CTMR Art. 103

Community Trade Mark Regulation

whether the provisional measure applied for is a protective measure or an order for performance and as to the court at which the respective measure is applied for. b) Differentiation between protective measure and order for performance. – Art. 103 (1) is applicable without restriction to protective measures. Protective measures can be ordered automatically – but possibly only with restricted territorial extent, Art. 103 (2)5 – by the Community trade mark courts and the national courts of the Member States on the basis of Art. 103 (1) in conjunction with their respective lex fori. 6 – As far as orders for performance are concerned, a differentiation as to the seised court must be made: – If such an application is filed with a Community trade mark court (which always has jurisdiction also as to the substance of the matter)6, the order for performance is a provisional measure covered by the scope of Art. 103 (1). – If such measures are applied for at a national court of a Member State (which cannot have jurisdiction as to the substance of the matter, s. Art. 96), however, the authority of this court is restricted against the background of its not having jurisdiction as to the substance of the matter to such extent that it must warrant the return to the respondent if the applicant is unsuccessful as regards to the substance of his claim and that the measure sought relates only to specific assets of the respondent located or to be located within the confines of the territorial jurisdiction of the court to which application is made.7 Only in such case an order for performance is a provisional measure in terms of Art. 103 (1). 5

7

c) Individual provisional measures. aa) Prohibitory order (Art. 9 Dir. 2004/48). Under the heading ‘Provisional and precautionary measures’, Art. 9 (1)(a) Dir. 2004/ 48 lists measures that are ordered to prevent any imminent infringement of a Community trade mark, or to forbid, on a provisional basis, the continuation of the alleged infringements of the Community trade mark, or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the right holder. Although ordering a provisional measure that prevents any imminent infringement or forbids the continuation of any infringement already results in the satisfaction of the creditor’s principal claim, the Community lawmakers consider this measure to be a provisional measure in the form of a protective measure according to the heading (‘Provisional and precautionary measures’) of Art. 9 Dir. 2004/48. This understanding is proven by the fact that the prohibition is granted only for a limited time, pursuant to Art. 9 (5) Dir. 2004/48. If the applicant does not institute, within a reasonable period, proceedings leading to a decision on the merits of the case, the prohibition is to be revoked after the end of the period mentioned in Art. 9 (5) Dir. 2004/48. According to the understanding of the EU lawmakers, this is thus a measure intended only to prevent the thwarting of the enforcement of rights and consequently a protective measure, because it is generally limited in time. The interpretation of the prohibitory order as an order for performance would, by contrast, result in the national courts not having jurisdiction for ordering such provisional measures, because this would – due to the absence of the possibility of return – not be deemed a provisional measure in terms of Art. 103.8 The provisional measures listed in Art. 9 Dir. 2004/48 are thus (all) covered 5

S. mn. 19 below. S. mn. 14 below. 7 CJ Case C-391/95 Van Uden Maritime BV v Kommanditgesellschaft in Firma Deco-Line and Others [1998] ECR I-07091, mn. 47 et seq.; CJ Case C-99/96 Mietz v Intership Yachting Sneek BV [1999] ECR I02277, mn. 43. 8 S. mn. 6 above. 6

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Art. 103 CTMR

by the scope of Art. 103, with the consequence that the national courts of the Member States also have jurisdiction for prohibiting the infringement of a Community trade mark – if such prohibition is provided for under the respective national law. Furthermore, as a provisional measure, Community law also provides for the option 8 of the courts under Art. 9 (1)(b) Dir. 2004/48 of ordering the seizure or surrender of the goods suspected of infringing an intellectual property right so as to prevent their entry into or movement within the channels of commerce. Finally, Art. 9 (2) Dir. 2004/ 48 provides for the option of the courts, as a provisional measure – in certain cases – to ensure recovery of damages by the injured party, of ordering the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of his/her bank accounts and other assets. bb) Preserving evidence (Art. 7 Dir. 2004/48). Art. 7 (1) Dir. 2004/48 provides that 9 the courts of the Member States may order measures to preserve relevant evidence. Such measures may include the physical seizure of the infringing goods, and, in appropriate cases, the materials and implements used in the production and/or distribution of these goods and the documents relating thereto. cc) Information (Art. 8 Dir. 2004/48). Provisional measures possible under national 10 law to enforce claims to provision of information (Art. 101 (2))9 are to be classified as measures that are already aimed at satisfaction, thus as orders for performance. Community trade mark courts are not hindered by Art. 103 (1) from imposing such measures possible under national law as provisional measures because they would have jurisdiction also as to the substance of the matter.10 National courts of a Member State not having jurisdiction as to the substance of the matter, by contrast, must ensure in the event of such measures that the granted performance can be returned.11 This appears to be impossible once the information has been provided. Such provisional measures are thus not covered by the scope of Art. 103 to the effect that the courts of a Member State not having jurisdiction as to the substance of the matter (thus all national courts) are not authorised to order provisional measures to enforce claims to provision of information pursuant to Art. 103. The exception from the principle of exclusive jurisdiction ratione materiae of the Community trade mark courts pursuant to Art. 103 (1) does thus not apply to the effect that the Community trade mark courts – having jurisdiction also as to the substance of the matter – continue to have exclusive jurisdiction ratione materiae in view of claims to provision of information. This is also suggested by the wording of Art. 8 Dir. 2004/48 that, in contrast to Artt. 7, 9 Dir. 2004/48, does not provide for enforcement of the claims to provision of information by way of provisional measures.12 9 The claims to provision of information on the origin and distribution networks of goods marked illegally regulated in Art. 8 Dir. 2004/48 are not a sanction within the meaning of Art. 102 (2), so Art. 101 (2) is to be applied in this respect (s. Art. 102, mn. 6). 10 S. mn. 6 above. 11 S. mn. 6 above. 12 A question independent from this is whether the national law of the Member States can provide for enforcement of claims to provision of information of the type regulated in Art. 8 Dir. 2004/48 by way of preliminary injunction at all. Although this is true under German law in cases of obvious infringements, for example, (s. § 19 (7) MarkenG), Art. 8 Dir. 2004/48, however, precisely does not provide for enforcement of claims to provision of information as provisional measure – in contrast to Artt. 7, 9 Dir. 2004/48. Admittedly, the purpose of Dir. 2004/48 is to establish only a minimum degree of harmonisation among the Member States to such effect that the Member States can provide for further-reaching rights in favour of the rightholders, however such rights must be proportionate. Critical in view of the issue of provisional injunctions to enforce claims to provision of information against uninvolved third parties to such extent Peukert/Kur, GRURInt 2006, 292, 297 et seq.

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CTMR Art. 103

Community Trade Mark Regulation

III. Extension of jurisdiction 1. Jurisdiction ratione materiae 11

Art. 103 (1) initially contains an exception from the principle of exclusive jurisdiction ratione materiae of the Community trade mark courts under Art. 96. In proceedings that are mentioned in view of their substance in Art. 96, provisional measures can thus be applied for at all courts of a Member State, irrespective of any deviating jurisdiction as to the substance of the matter (Art. 103 (1) 2).13

2. International jurisdiction 12

Art. 103 (1) does not establish the international jurisdiction of a court. On the contrary, the international jurisdiction of the seised court is required by Art. 103 (1).14

a) Community trade mark courts. The international jurisdiction of Community trade mark courts as to ordering provisional measures can initially result as a supplement from their jurisdiction as to the substance of the matter based on Art. 97.15 Art. 103 (1) does not exclude such supplemental jurisdiction because the provision does not aim at eliminating places of jurisdiction, but intends to procure further places of jurisdiction to enforce provisional measures for the applicant. If proceedings on the merits are already pending at a Community trade mark court having jurisdiction under Art. 97 and if provisional measures have been applied for at this court, recourse to Art. 103 (1) is thus unnecessary.16 14 Moreover, the international jurisdiction of Community trade mark courts as to ordering provisional measures can result – as in the event of proceedings on the merits – from Art. 97 itself. Consequently, provisional measures can be applied for, also independently from proceedings on the merits already pending, at the Community trade mark court(s) (having local jurisdiction under national law17) of the Member State whose courts have international jurisdiction under Art. 97. The strict jurisdictional hierarchy of Art. 97, however, applies in this respect also to proceedings concerning provisional measures,18 with the consequence that Community trade mark courts that order provisional measures always have international jurisdiction also as to the substance of the 13

13 It is disputed within Germany whether Art. 103 (1) has its own substantive scope because of conflicting national rules of procedure. Under German law, the courts having jurisdiction as to the substance of the matter have exclusive jurisdiction for provisional measures (§§ 937 (1), 943 (1), 802 ZPO), thus only Community trade mark courts (Art. 96). This contradicts Art. 103 (1), according to which provisional measures can be applied for also at the national courts. Nevertheless, the opinion that probably prevails tends to be that Art. 103 does not have an independent scope of application in Germany (s. Sosnitza, GRUR 2011, 465, 468; Menebro¨cker/Stier, WRP 2012, 885, 890). 14 Knaak, in Schricker/Bastian/Knaak (ed.), Gemeinschaftsmarke, p. 128, mn. 250; Menebro ¨ cker/Stier, WRP 2012, 885, 890. 15 Regarding Art. 24 Brussels Convention = Art. 35 of Reg. 1215/2012: CJ Case C-391/95 Van Uden Maritime BV v Kommanditgesellschaft in Firma Deco-Line and Others [1998] ECR I-07091, mn. 19; CJ Case C-99/96 Mietzv Intership Yachting Sneek BV [1999] ECR I-2277, mn. 40; Schulte-Beckhausen, WRP 1999, 300, 305; Geimer, in Zo¨ller/Geimer (ed.), Zivilprozessordnung, EuGVVO, Art. 31, mn. 2; Po¨rnbacher, in Geimer/Schu¨tze (ed.), Internationaler Rechtsverkehr, VO (EG) Nr. 44/2001, Art. 31, mn. 9. 16 Regarding Art. 24 Brussels Convention = Art. 35 of Reg. 1215/2012: CJ Case C-391/95 Van Uden Maritime BV v Kommanditgesellschaft in Firma Deco-Line and Others [1998] ECR I-07091, mn. 19, 22, 48; CJ Case C-99/96 Mietz v Intership Yachting Sneek BV [1999] ECR I-02277, mn. 41. 17 S. Art. 101 (3). 18 Knaak, GRURInt 1997, 864, 871; Knaak, GRUR 2001, 21, 29; Hopf, MarkenR 2012, 229, 236.

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matter. This corresponds to the wording of Art. 103: Art. 103 (1) – although it may be worded somehow ambiguously in this respect – is not to be understood to such effect that also Community trade mark courts of a Member State other than the Member State whose courts have jurisdiction as to the substance of the matter can have jurisdiction as to provisional measures (with the consequence that the strict jurisdictional hierarchy of Art. 97 would no longer apply to proceedings concerning provisional measures). On the contrary, Art. 103 (1) is to be read as follows: Application for provisional, including protective, measures may be made to all courts of a Member State whose courts have international jurisdiction (under any regulation whatsoever) – that is (in theory) to all national courts and all Community trade mark courts of this Member State; which national courts or Community trade mark courts in this Member State have local jurisdiction depends on the respective national law – even if a Community trade mark court of another Member State should have jurisdiction as to the substance of the matter. Art. 103 (1) therefore makes it clear that provisional measures can be applied for not only at national courts, but also at Community trade mark courts. Art. 103 (1) at the end establishes the option of applying for provisional measures at courts of Member State A although a Community trade mark court in Member State B has international jurisdiction as to the substance of the matter. Art. 103 (1) at the end is relevant, however, only (i) if the provisional measures were applied for at a national court of a Member State other than that whose (Community trade mark) courts have jurisdiction as to the substance of the matter or (ii) if the provisional measure is applied for at a Community trade mark court in a Member State whose courts have international jurisdiction under Art. 97 (which is explicitly permissible under Art. 103 (1)) even though proceedings on the substance of the matter before that Community trade mark court have not (yet) been initiated (‘isolated motion to issue provisional measures’). Furthermore, this interpretation also corresponds to the wording of Art. 103 (2), which seems to presume that every Community trade mark court whose international jurisdiction as to proceedings concerning provisional measures is based on Art. 97 (1) to (4) has jurisdiction also as to the substance of the matter and can thus render decisions with Community-wide effect already in proceedings concerning provisional measures. That a Community trade mark court at which provisional measures are applied for has jurisdiction also as to the substance of the matter can only be ensured if the strict jurisdictional hierarchy of Art. 97 also applies to proceedings concerning provisional measures. b) National courts. Owing to the fact that Art. 103 (1) does not establish, but in fact 15 requires the international jurisdiction of a court,19 in view of national courts Art. 103 (1) cannot be understood to such effect that, as a rule, all national courts of all Member States are intended to have jurisdiction as to measures of provisional legal protection.20 On the contrary – applying the principles developed for Art. 35 of Reg. 1215/201221 – Art. 103 (1) establishes all jurisdiction given under the respective national law for provisional measures.22 19

S. mn. 12 above. Rohnke, GRURInt 2002, 979, 988; Hopf, MarkenR 2012, 229, 236. 21 Regarding Art. 24 Brussels Convention (= Art. 35 of Reg. 1215/2012): CJ Case C-391/95 Van Uden Maritime BV v Kommanditgesellschaft in Firma Deco-Line and Others [1998] ECR I-07091 mn. 25, 42; CJ Case C-99/96 Mietz v Intership Yachting Sneek BV [1999] ECR I-02277, mn. 36, 38, 54; Knaak, GRURInt 1997, 864, 871; Knaak, GRUR 2001, 21, 29; Geimer, in Geimer/Schu¨tze (ed.), Europa¨isches Zivilverfahrensrecht, EuGVVO, Art. 31, mn. 9 et seq. 22 Geimer, in Zo ¨ ller/Geimer (ed.), Zivilprozessordnung, EuGVVO, Art. 31, mn. 1, 6; Po¨rnbacher, in Geimer/Schu¨tze (ed.), Internationaler Rechtsverkehr, VO (EG) Nr. 44/2001, Art. 31, mn. 9, 12 et seq.; Hopf, MarkenR 2012, 229, 236. 20

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Therefore, the international jurisdiction of national courts as to the ordering of provisional, including protective, measures must be reviewed on the basis of Art. 94 (1), (2)23 in conjunction with Reg. 1215/2012 and the relevant lex fori. Admittedly, Art. 94 (2) excludes the application of certain regulations of Reg. 1215/2012 only for proceedings in respect of the actions and claims referred to in Art. 96. This seems to suggest that Art. 94 (2) is not applicable to isolated proceedings concerning provisional measures. However, the wording of Art. 94 (2)(a) precisely indicates that also proceedings concerning provisional measures are intended to be covered by Art. 94 (2). Otherwise, the exclusion of Art. 35 of Reg. 1215/2012 cannot be understood, which in itself applies only to proceedings concerning provisional measures; its exclusion can only be understood to have the purpose of excluding conflicts between Art. 103 and Art. 35 of Reg. 1215/2012. As a result, this interpretation is also in line with the understanding of EU law according to which jurisdiction as to ordering provisional measures initially results from supplemental jurisdiction to the jurisdiction as to the substance of the matter. Art. 94 (2) applies automatically to the substance of the matters covered by Art. 103 to such effect that in the sense of an a fortiori conclusion, this also applies to provisional measures that generally constitute a supplement to the substance of the matter. 17 If the national law contains provisions on jurisdiction that have the same criterion as Art. 97 (domicile of the defendant, establishment of the defendant, domicile of the plaintiff, etc.), the strict jurisdictional hierarchy of Art. 97 that is mandatory for the proceedings on the merits is thus ‘watered down’ by the application of the national law in the proceedings concerning provisional measures.24 The reason for this is that in such cases, international jurisdiction can be linked to criteria that are not applicable pursuant to the order of priority of Art. 97. If, for instance, the respondent has a domicile in Italy and an establishment in Germany, the applicant may apply for provisional measures at a national court also in Germany on the basis of the place of jurisdiction at the place of the establishment provided for under German law25 although the Italian Community trade mark courts would have international jurisdiction as to the proceedings on the merits pursuant to Art. 97 (1). 18 The application of national provisions on jurisdiction by way of Art. 103 thus involves the risk that the order of the CTMR as to jurisdiction regarding the substance of the matter (Art. 97) is undermined by provisional legal protection, at least to the extent that such provisional legal protection creates a fait accompli (as in the event of orders for performance).26 The ordering of provisional or protective measures pursuant to Art. 103 (1) thus requires, where the seised court does not have jurisdiction also as to the substance of the matter, the existence of a real connecting link between the subjectmatter of the measures sought and the territorial jurisdiction of the contracting state of the court before which those measures are sought.27 This is the case at any rate if there is a genuine possibility of access in the ordering state, thus if the measure applied for 16

23 View shared by Hopf, MarkenR 2012, 229, 236; different opinion Knaak, GRURInt 1997, 864, 871; Kouker, Mitt. 2000, 241, 242. 24 Knaak, GRURInt 1997, 864, 871; Knaak, GRUR 2001, 21, 29; Hopf, MarkenR 2012, 229, 236. 25 § 21 (1) ZPO: ‘Should someone have a place of business serving the operation of a factory, a trade enterprise, or any other commercial establishment, and from which transactions are directly concluded, all actions that relate to the operation of the place of business may be brought against that person at the court of the location at which the place of business is situate.’ 26 To this effect, s. also Schack, Internationales Zivilverfahrensrecht, p. 357, mn. 826; Geimer, in Zo ¨ ller/ Geimer (ed.), Zivilprozessordnung, EuGVVO, Art. 31, mn. 6. 27 Regarding Art. 24 Brussels Convention = Art. 35 of Reg. 1215/2012: CJ Case C-391/95 Van Uden Maritime BV v Kommanditgesellschaft in Firma Deco-Line and Others [1998] ECR I-07091, mn. 40, 48.

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can be enforced in the relevant Member State.28 With regard to provisional measures aimed at prohibiting the continuation of an act, the enforceability of the coercive measure in the ordering state suffices to such extent.29 The reason for this is that the courts in this Member State are best able to assess the circumstances which may lead to the grant or refusal of the measures sought or to the laying down of procedures and conditions which the respondent must observe in order to guarantee the provisional and protective character of the measures authorized.30

IV. Scope of jurisdiction in proceedings concerning provisional measures The scope of a decision of the national court of a Member State is restricted to the 19 territory of the relevant Member State pursuant to Art. 103 (1). This results from the systematic connection with Art. 103 (2). Accordingly, only Community trade mark courts whose jurisdiction results from Art. 97 (1) to (4) can impose provisional, incl. protective, measures with Community-wide effect.31 This applies, however, only subject to any necessary procedure for recognition and enforcement pursuant to Title III of Reg. 1215/2012 (Artt. 36 et seq. Reg. 1215/2012).32

V. Other principles of proceedings In proceedings concerning provisional measures, a plea relating to revocation or 20 invalidity of the Community trade mark is not admissible.33 It is explicitly regulated in Art. 90 (2) CDR, that corresponds to Art. 99 (3), that in proceedings relating to provisional measures, including protective measures, a plea otherwise than by way of 28 Reasoned opinions delivered by the advocate-general of 29 March 2012 in the CJ Case C-616/10 Solvay S.A v Honeywell, mn. 54 et seq. available at: www.curia.eu Õ search Case law; Sujecki, GRURInt 2013, 201, 212; Stadler, in Musielak (ed.), Zivilprozessordnung, VO (EG) 44/2001, Art. 31, mn. 3; Do¨rner, in Saenger (ed.), Zivilprozessordnung, EuGVVO, Art. 31, mn. 11; Lipp, in Mu¨nchener Kommentar, FamFG, EWG_VO_4_2009 Art. 14, mn. 15; Po¨rnbacher, in Geimer/Schu¨tze (ed.), Internationaler Rechtsverkehr, VO 44/2001, Art. 31, mn. 6; Geimer, in Geimer/Schu¨tze (ed.), Europa¨isches Zivilverfahrensrecht, EuGVVO, Art. 31, mn. 14; Geimer, in Zo¨ller/Geimer (ed.), Zivilprozessordnung, EuGVVO, Art. 31, mn. 7. According to the OGH Case 17 Ob 13/10 a GRURInt 2011, 450, 452 – Schneeketten and OGH Case 4 Ob 2/12 s GRURInt 2012, 826, 828 – Kunststoffverarbeitungsbetrieb, a real connecting link is shown to exists with regard to cease and desist entitlements if the conduct to be prohibited was carried out in the home country or could lead to an infringement of rights in the home country. To such effect probably also Kropholler, Europa¨isches Zivilprozessrecht, EuGVO, Art. 31, mn. 15. 29 Stadler, in Musielak (ed.), Zivilprozessordnung, VO (EG) 44/2001, Art. 31, mn. 3; Geimer, in Geimer/ Schu¨tze (ed.), Europa¨isches Zivilverfahrensrecht, EuGVVO, Art. 31, mn. 14; Geimer, in Zo¨ller/Geimer (ed.), Zivilprozessordnung, EuGVVO, Art. 31, mn. 7. 30 CJ Case C-391/95 Van Uden Maritime BV v Kommanditgesellschaft in Firma Deco-Line and Others [1998] ECR I-07091, mn. 39. 31 In proceedings concerning provisional measures against joined parties with regard to which international jurisdiction results from Art. 94 (1) in conjunction with Art. 8 No. 1 of Reg. 1215/2012, Community trade mark courts have no Community-wide jurisdiction (unlike in proceedings on the merits, s. Art. 98, mn. 9 et seq.) even if their international jurisdiction regarding the defendant is based on Art. 97 (1) to (4). This results from the fact that Community-wide jurisdiction is the rule in proceedings on the merits, whereas Community-wide jurisdiction is the exception in proceedings concerning provisional measures (view shared by Ruhl, Gemeinschaftsgeschmacksmuster, Art. 91, mn. 17). 32 S. mn. 24 et seq. below. 33 Probably stating a different view, Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 107, mn. 8.

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counterclaim relating to the invalidity of a Community design shall be admissible. There is no corresponding regulation relating to proceedings concerning provisional measures in the CTMR. It can be concluded from this that the intention of the European lawmakers was not to admit pleas relating to revocation or invalidity in proceedings concerning provisional measures under the CTMR.34 This is also suggested by the wording of Art. 99 (3) ‘In the actions referred to in Art. 96 (a) and (c) a plea relating to revocation or invalidity […] shall be admissible […]’. It is true that this interpretation results in the obligation to order provisional measures with ones eyes open even if the allegedly infringed Community trade mark is obviously revoked or could be declared invalid on account of an earlier right of the respondent. This is the logical consequence, however, of the fact that the Community trade mark courts shall treat the Community trade mark as valid pursuant to Art. 99. The exceptions from this rule provided for by Art. 99 (1) and 99 (3) must be interpreted narrowly. According to the wording of Art. 99 (3) (‘in the actions’) and 100 (‘counterclaim’) they apply only in proceedings on the merits. In addition, the respondent is sufficiently protected through Artt. 7 (3), (4), 9 (5), (7) Dir. 2004/48, according to which provisional measures must be revoked if proceedings on the merits are not instituted within the period set there, or compensation must be provided by the applicant if the provisional measure is revoked. In such proceedings on the merits, the defences of Artt. 99, 100 are available to the respondent – then defendant – automatically. Finally, also the fact that the European lawmakers do not intend to change the wording of Art. 99 (3) according to the proposal for a regulation amending the CTMR35 suggests that the plea pursuant to Art. 99 (3) is not intended to be admissible in proceedings concerning provisional measures. 21 A counterclaim for cancellation of the Community trade mark is not admissible in such proceedings concerning provisional measures either.36 This already results from the fact that – as presented37 – a plea pursuant to Art. 99 (3) is not permissible in proceedings concerning provisional measures under the CTMR. A counterclaim can all the more not be permissible in such case because it goes beyond the plea pursuant to Art. 99 (3) both in terms of content – the counterclaim can be based on all grounds for invalidity – and in terms of its effects – the plea pursuant to Art. 99 (3) has effect only inter partes within the framework of the pending infringement action in which it was asserted, whereas the (successful) counterclaim results in a final decision about the validity of the Community trade mark. Moreover, the target of the counterclaim conflicts with the provisional character of proceedings which are aimed at provisional protection. Thus, the counterclaim is a ‘counterattack’ targeted at a decision on the merits in the substance of the matter, namely the obliteration of the Community trade mark. 22 Staying the proceedings on provisional legal protection pursuant to Art. 104 does not come into consideration; it would be irreconcilable with the character of summary proceedings.38 23 With regard to the rest, the respective national regulations of the Member State in which the court has its seat are relevant for proceedings on provisional legal protection, pursuant to Artt. 103 (1), 101 (3). This applies, for example, in view of the possibility of

34

View ultimately shared by Kouker, Mitt. 2000, 241, 251. S. www.ec.europa.eu Õ Legislation Õ Search for legislation. 36 OGH Case 4 Ob 239/04 GRURInt 2005, 945, 947 – Goldhase; Knaak, in Schricker/Bastian/Knaak (ed.), Gemeinschaftsmarke, p. 133, mn. 265; v. Kapff, in Ekey/Klippel (ed), Markenrecht, Art. 99, mn. 17. 37 S. mn. 20 above. 38 OLG Frankfurt a. M. Case 6 U 14/12 BeckRS 2013, 14313 – Be Happy. 35

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taking provisional measures without the opponent having been heard before39 or to legal remedies against the ordering of provisional measures.40

VI. Procedure for recognition and enforcement According to Art. 103 (2) 1, a Community trade mark court whose jurisdiction is 24 based on Art. 97 (1) to (4) shall have jurisdiction to grant provisional measures which, subject to any necessary procedure for recognition and enforcement pursuant to Artt. 36 et seq. of Reg. 1215/2012, are applicable in the territory of any Member State. Art. 103 (2) 1 thus explicitly subjects the Community-wide effect to the provision of any necessary procedure for recognition and enforcement pursuant to Art. 36 et seq. of Reg. 1215/2012. According to Art. 36 (1) of Reg. 1215/2012, judgments given in a Member State are 25 recognised in the other Member States without any special procedure being required. Recognition in this sense means extension of the effect such that the same legal effects are to be awarded to foreign decisions as to domestic decisions.41 According to previous rulings of the CJ, recognition is restricted, however, to decisions rendered in adversarial proceedings.42 The CJ justified this restriction of Art. 25 Brussels Convention (corresponds to Art. 32 Reg. 44/2001 which is now Art. 36 of Reg. 1215/2012) serving the respondent’s interests by arguing that all the provisions of the Brussels Convention express the intention to ensure that proceedings leading to the delivery of judicial decisions take place in such a way that the rights of the defence are observed.43 It is because of the guarantees given to the respondent in the original proceedings that the Brussels Convention is very liberal in regard to recognition and enforcement.44 These rulings of the CJ are subject to reservations because they lead to a not insignificant paralysis of provisional legal protection in the international sphere and make a mockery of the surprise intended by it.45 Furthermore, the jurisdictions of all Member States must ensure, according to Art. 9 (4) 1 Dir. 2004/48 that provisional measures may (in appropriate cases) be taken without the defendant having been heard; in such cases, a right to be heard is not granted until ex post (Art. 9 (4) 3 Dir. 2004/48). Consequently, the jurisdictions of all Member States are familiar with provisional measures with a ‘surprise effect’. Nevertheless, the prevailing opinion is upheld that the rulings of the 39 Pursuant to Art. 9 (4) 1 Dir. 2004/48, the Member States ensure that the provisional measures referred to in Art. 9 (1)(2) Dir. 2004/48 may, in appropriate cases, be taken without the defendant having been heard, in particular where any delay would cause irreparable harm to the rightholder. In such cases, the parties are to be so informed without delay after the execution of the measures at the latest (Art. 9 (4) 2 Dir. 2004/48). 40 S. the commentary to Art. 105, mn. 2. 41 Sosnitza, GRUR 2011, 465, 470. 42 CJ Case C-125/79 Bernard Denilauer v S.N.C. Couchet Fre `res [1980] ECR 01553, mn. 13 (regarding Art. 25 Brussels Convention). This does not result, however, from Art. 45 (1)(b) of Reg. 1215/2012, because this regulation is not intended to be applied to court decisions that are rendered under the national law of a Member State in the absence of the opposing party and that are to be enforced without having been served on the opposing party beforehand; on the contrary, Art. 34 No. 2 of Reg. 1215/2012 presumes a situation involving default proceedings, thus in principle adversarial proceedings, during which the judge is nevertheless authorised to make a decision if the defendant does not appear at the hearing despite having been summoned properly (regarding Brussels Convention: CJ Case C-125/79 Bernard Denilauer v S.N.C. Couchet Fre`res [1980] ECR 01553, mn. 8 et seq.). 43 CJ Case C-125/79 Bernard Denilauer v S.N.C. Couchet Fre `res [1980] ECR 01553, mn. 13. 44 CJ Case C-125/79 Bernard Denilauer v S.N.C. Couchet Fre `res [1980] ECR 01553, mn. 13. 45 Geimer, in Geimer/Schu ¨ tze (ed.), Europa¨isches Zivilverfahrensrecht, EuGVVO, Art. 32, mn. 35; Schack, Internationales Zivilverfahrensrecht, p. 356, mn. 825.

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CJ relating to the Brussels Convention can also be applied to Reg. 44/2001.46 In Article 2 (a) 3 of Reg. 1215/2012, it has now been clarified by the EU lawmakers that provisional, including protective, measures that are ordered by a court without the defendant being summoned to appear are not encompassed by ‘judgement’ as defined in Chapter III of Reg. 1215/2012 (Artt. 36 et seq.), unless the judgement containing the measure was served on the defendant prior to enforcement. As a consequence, provisional measures that were ordered by a Community trade mark court having jurisdiction pursuant to Art. 97 (1) to (4) without the defendant having been heard can not be enforced in Member States other than that in which the Community trade mark court has its seat, even if the Community trade mark court has decided with Community-wide effect. As a result, the applicant must decide prior to applying for a provisional measure whether the ‘surprise effect’ is important to him or not. In the former case, he must file the application for ordering the provisional measure – to the extent possible – with a court in the Member State in which the measure is also to be enforced; if the applicant intends to enforce the measure in several Member States and, at the same time, does not want to waive the ‘surprise effect’, he must file the relevant provisional measure separately and simultaneously with courts in different Member States. If the ‘surprise effect’ is not important to the applicant, however, and if he wants to obtain a title enforceable in all Member States, he must file the application with a Community trade mark court having jurisdiction pursuant to Art. 97 (1) to (4) and urgently request that an oral hearing be conducted.

Article 104 Specific rules on related actions 1. A Community trade mark court hearing an action referred to in Article 96, other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue before another Community trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office.

46 BGH Case IX ZB 150/05 GRUR 2007, 813 – Ausla ¨ ndischer Arrestbeschluss, mn. 14 et seq.; BGH Case IX ZB 143/07 NJOZ 2010, 1477 – Vollstreckbarerkla¨rung eines italienischen Arrestbeschlusses, mn. 5, 7; Po¨rnbacher, in Geimer/Schu¨tze (ed.), Internationaler Rechtsverkehr, VO (EG) Nr. 44/2001, Art. 31, mn. 16, Art. 32 mn. 8 et seq.; Baumbach/Lauterbach/Albers/Hartmann (ed.), Zivilprozessordnung, EuGVVO, Art. 32, mn. 1; Hein, in Kropholler (ed.), Europa¨isches Zivilprozessrecht, EuGVVO, Art. 31, mn. 20 et seq., Art. 32, mn. 22 et seq.; Hu¨ßtege, in Thomas/Putzo/Hu¨ßtege (ed.), Zivilprozessordnung, EuGVVO, Art. 32, mn. 4; Gottwald, Mu¨nchener Kommentar ZPO, EuGVO, Art. 32, mn. 17; SchulteBeckhausen, WRP 1999, 300, 305; Koch/Samwer, MarkenR 2006, 493, 503; Knaak, GRUR 2001, 21, 29; different opinion Geimer, in Zo¨ller/Geimer (ed.), Zivilprozessordnung, EuGVVO, Art. 32, mn. 8 and Geimer, in Geimer/Schu¨tze (ed.), Europa¨isches Zivilverfahrensrecht, EuGVVO, Art. 31, mn 97, Art. 32, mn. 35, who holds the view that the CJ rulings on the Brussels Convention cannot be transferred to Reg. 44/2001 because the lawmakers did not respond to the CJ rulings and upheld the broad wording of the former Art. 25 Brussels Convention by way of Art. 32 Reg. 44/2001. It could be derived from this that the lawmakers did not intend to uphold these rulings because otherwise they would have exempted proceedings concerning provisional measures from the broad scope of Art. 32 Reg. 44/2001. Approving the view of Geimer, Schack, Internationales Zivilverfahrensrecht, p. 356, mn. 825 et seq.; left open in Stadler, in Musielak (ed.), Zivilprozessordnung, VO (EG) 44/2001, Art. 31, mn. 4.

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2. The Office, when hearing an application for revocation or for a declaration of invalidity shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community trade mark is already in issue on account of a counterclaim before a Community trade mark court. However, if one of the parties to the proceedings before the Community trade mark court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings pending before it. 3. Where the Community trade mark court stays the proceedings it may order provisional and protective measures for the duration of the stay. Bibliography: Knaak, ‘Die Rechtsdurchsetzung der Gemeinschaftsmarke und der a¨lteren nationalen Rechte’, GRURInt 1997, 864–868; Kouker, ‘Verteidigung und Durchsetzung der Gemeinschaftsmarke in der Europa¨ischen Union’, Mitt. 2000, 241–250, 252; Fayaz, ‘Sanktionen wegen der Verletzung von Gemeinschaftsmarken: Welche Gerichte sind zusta¨ndig und welches Recht ist anzuwenden?’ (1. Teil), GRURInt 2009, 459–465.

Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Related actions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Case referred to in Art. 104 (1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Case referred to in Art. 104 (2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Stay of proceedings in one of the related actions . . . . . . . . . . . . . . . . . . . . . . . 1. Case referred to in Art. 104 (1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Case referred to in Art. 104 (2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Other principles of proceedings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Relationship with Art. 29 et seq. Reg. 1215/2012 and national law . .

1 3 4 9 13 13 15 17 19

I. General Art. 104 contains specific rules on related actions. These are actions that concern the 1 same Community trade mark1 and that are being conducted at the same time before different Community trade mark courts or before one Community trade mark court and at the Office. Art. 104 provides that the proceedings in one of the related actions must as a rule be stayed. One reason for this is to avoid repeated disputes about the same subject matter and possibly contradicting judgments by different Community trade mark courts and the Office, and another is to ensure procedural efficiency. Art. 104 does not apply to proceedings on provisional legal protection, because a stay 2 of proceedings on provisional legal protection would be irreconcilable with the character of summary proceedings.2

1 Rules on staying proceedings in actions that are related to one another because they concern disputes referring to identical or similar national trade marks on the one side and Community trade marks on the other are contained in Art. 109. 2 OLG Frankfurt a. M. Case 6 U 14/12 BeckRS 2013, 14313; s. the commentary to Art. 103, mn. 22.

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CTMR Art. 104

Community Trade Mark Regulation

II. Related actions 3

The following two cases are related actions in terms of Art. 104:

1. Case referred to in Art. 104 (1) Art. 104 (1) provides for a case in which (1) a counterclaim for revocation or for a declaration of invalidity of a Community trade mark under Art. 100 has been brought before a Community trade mark court or an application for revocation or for a declaration of invalidity of a Community trade mark under Art. 56 has been filed with the Office (first action) and (2) then – at a later date – an infringement action concerning that Community trade mark under Art. 96 (a) or (c) is brought before a (different) Community trade mark court (second action). 5 In the first action, the validity of the Community trade mark must have been contested with effect erga omnes. Therefore, either an application for revocation or for a declaration of invalidity of the Community trade mark must have been filed with the Office (Art. 56) or a counterclaim for revocation or for a declaration of invalidity of the Community trade mark must have been brought before a Community trade mark court (Art. 100). The scope of application of Art. 104 (1) is not opened, however, if no counterclaim, but (merely) a plea relating to revocation or invalidity as defined in Art. 99 (3) is submitted in the first action,3 because a plea as defined in Art. 99 (3) has effect only inter partes within the framework of the pending infringement action in which it is submitted, but does not lead to the obliteration of the Community trade mark.4 A plea under Art. 99 (3) thus does not have effect beyond the action in which it is submitted.5 6 The second action must be an action as described in Art. 96 (a) or (c); an action for a declaration of non-infringement as described in Art. 96 (b) does not fall under the scope of application of Art. 104 (1), however. In this (second) action, a counterclaim for revocation or for a declaration of invalidity of the Community trade mark under Art. 100 does not already have to have been filed by the defendant.6 It is true that in this 4

3 BGH Case I ZR 106/11 GRUR 2013, 925 mn. 19 – VOODOO; Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 2; Kouker, Mitt. 2000, 241, 250; Knaak, GRURInt 1997, 864, 868. 4 BGH Case I ZR 106/11 GRUR 2013, 925 mn. 19 – VOODOO; OHIM Dec. of 16.12.2003 – R 0723/ 2001-2 – Roccobarocco/Roco Baroco, mn. 19; Fayaz, GRURInt 2009, 459, 465 with additional references. 5 BGH Case I ZR 106/11 GRUR 2013, 925 mn. 17 – VOODOO. 6 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 12. It is not possible anyway to bring a counterclaim against an action referred to in Art. 96 (c), s. the commentary to Art. 100, mn. 8; should Art. 100 (4) be amended in accordance with the Commission’s proposal (the Commission’s proposal reads: ‘The European trade mark court with which a counterclaim for revocation or for a declaration of invalidity of the European trade mark has been filed shall not proceed with the examination of the counterclaim, until either the interested party or the court have informed the Agency of the date on which the counterclaim was filed. The Agency shall record that information in the Register. If an application for revocation or for a declaration of invalidity of the European trade mark is pending before the Agency, the court shall be informed thereof by the Agency and stay the proceedings until the decision on the application is final or the application is withdrawn.’), the new Art. 100 (4) 3, whose criteria for a stay of the proceedings are less strict than those under Art. 104 (1), would be lex specialis with respect to Art. 104 (1) for cases in which an application for revocation or a declaration of invalidity of a Community trade mark pursuant to Art. 56 has been filed with the Office (first action) and in which in the second action before the Community trade mark court a counterclaim has been filed. Art. 104 (1) would no longer be applicable in this case. S. also the commentary to Art. 100, mn. 30.

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Specific rules on related actions

Art. 104 CTMR

case diverging decisions concerning the validity of the Community trade mark in dispute cannot (yet) be rendered. The defendant may, however, file a counterclaim at any time in the course of the second action, at least as long as the second action is an action referred to in Art. 96 (a).7 More important, however, is the fact that a decision in the first action – depending on the outcome of the action – may have direct impact on the second action to the effect that the second action (infringement action) is settled by the decision in the first action. A stay of the proceedings in the second action until a final and absolute judgement on the first action has been rendered thus serves to ensure procedural efficiency. According to the wording of Art. 104 (1), which is clear in this respect, a counter- 7 claim as defined in Art. 100 or the application with the Office as defined in Art. 56 must already have been brought or filed at the time the action under Art. 96 (a) or (c) is brought.8 Owing to the fact that it is not regulated in the CTMR itself when an action or counterclaim is deemed to have been brought (whether this is already the case, for instance, when the statement of (counter)claim is submitted to the court or only when the statement of (counter)claim is served on the other party), the lex fori of the relevant Community trade mark court must apply pursuant to Art. 101 (3). With regard to the date when the application is filed with the Office, it must be taken into account that it is not deemed to have been filed, according to Art. 56 (3) 2 in conjunction with Art. 2 No 17 Reg. 2869/95, until the fee has been paid to the Office. Because the purpose of avoiding diverging decisions by different Community trade 8 mark courts and the Office is more important in Art. 104 than the res judicata effect between two parties, it is not necessary for the parties in two related actions to be identical.9

2. Case referred to in Art. 104 (2) Art. 104 (2) provides for a case in which (1) a counterclaim for revocation or for a 9 declaration of invalidity of a Community trade mark under Art. 100 has been brought before a Community trade mark court (first action) and (2) then – at a later date – an application for revocation or for a declaration of invalidity of the same Community trade mark under Art. 56 is filed with the Office (second action). In the case referred to in Art. 104 (2) as well, the validity of the Community trade 10 mark must have been contested in the first action with effect erga omnes, so that the scope of application of Art. 104 (2) is not opened when no counterclaim is brought in the first action, but (merely) the plea of revocation or invalidity as described in Art. 99 (3) is submitted.10 According to the wording of Art. 104 (2), which is clear in this respect, a counter- 11 claim as defined in Art. 100 must already have been brought at the time the application under Art. 56 is filed with the Office.11 Owing to the fact that it is not regulated in the 7

S. the commentary to Art. 100, mn. 8. OGH Case 4 Ob 140/02 GRURInt 2003, 861, 863 – Manpower II; BGH Case I ZR 106/11 GRUR 2013, 925, mn. 17 – VOODOO; v. Mu¨hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 218, mn. 35; Gielen, in Gielen/v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 104. 9 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 2; v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 100, mn. 12. 10 BGH Case I ZR 106/11, GRUR 2013, 925 mn. 19 – VOODOO; Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 2; Kouker, Mitt. 2000, 241, 250; Knaak, GRURInt 1997, 864, 868; s. above mn. 5. 11 Gielen, in Gielen/v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 104; Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 14; v. Mu¨hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 220, mn. 7; Bumiller, Durchsetzung der Gemeinschaftsmarke, p. 30, mn. 61. 8

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CTMR Art. 104

Community Trade Mark Regulation

CTMR itself when a counterclaim is deemed to have been filed (whether this is already the case, for instance, when the statement of counterclaim is submitted to the court or only when the statement of counterclaim is served on the other party), the lex fori of the relevant Community trade mark court must apply pursuant to Art. 101 (3). With regard to the date when the application is filed with the Office, it must be taken into account that it is not deemed to have been filed, according to Art. 56 (3) 2 in conjunction with Art. 2 No 17 of Reg. 2869/95, until the fee has been paid to the Office. 12 Finally, it is not necessary for Art. 104 (2) either that both parties in related actions are identical.12

III. Stay of proceedings in one of the related actions 1. Case referred to in Art. 104 (1) In related actions as referred to in Art. 104 (1), the Community trade mark court shall of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties stay the proceedings in the second action.13 Only in exceptional cases – when there are special grounds for continuing the second action – may the Community trade mark court refrain from staying the proceedings. Because, according to the wording of Art. 104 (1), staying the proceedings is the rule and not staying them is an exception to the rule, the criterion ‘special grounds’ must be interpreted narrowly.14 14 It is not stated in Art. 104 itself when ‘special grounds’ for continuing the proceedings in the second action exist. According to the essence and purpose of the provision, special grounds in terms of Art. 104 can, however, exist only in such cases in which there is no risk of diverging decisions or in which refraining from staying the proceedings is, as an exception, necessary for reasons of procedural efficiency. This can apply, for example, in the following cases: – When the first15 or second16 action is obviously pointless; – When the first action is expected to take a long time, if the plaintiff has a particular interest in the infringement action being decided on quickly;17 – If the taking of evidence in the second action might be more costly or difficult to achieve at a later date;18 – If in both the first and the second actions the validity of the Community trade mark is contested, but the action is being conducted for different reasons (e. g. if the first 13

12 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 2; v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 100, mn. 12; s. above mn. 8. 13 S. also OGH Case 4 Ob 140/02 GRURInt 2003, 861, 862 – Manpower II, according to which a stay of the proceedings is absolutely necessary unless there are special grounds; different opinion Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 13. 14 v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 100, mn. 14. 15 v. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 218, mn. 34; Gielen, in Gielen/v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 104; same opinion probably Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 13; v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 100, mn. 15. 16 v. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 218, mn. 34; v. Kapff, in Ekey/Klippel (ed.), Art. 100, mn. 15; Gielen, in Gielen/v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 104. 17 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 13; v. Mu¨hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 218, mn. 34. 18 Kouker, Mitt. 2000, 241, 252.

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Specific rules on related actions

Art. 104 CTMR

action is targeted at revocation of the Community trade mark whereas the second action is aimed at a declaration of invalidity of the Community trade mark on absolute grounds).19

2. Case referred to in Art. 104 (2) In related actions as referred to in Art. 104 (2), the Office shall of its own motion 15 after hearing the parties or at the request of one of the parties and after hearing the other parties stay the proceedings in the second action. Only in exceptional cases – when there are special grounds for continuing the second action – may the Office refrain from staying the proceedings. The criterion of ‘special grounds’ under Art. 104 (2) must be interpreted narrowly as well. The commentary above on Art. 104 (1)20 applies mutatis mutandis. The peculiarity of Art. 104 (2) is, however, that there is no priority for the first 16 action. Instead, the Community trade mark court at which the counterclaim has been raised (first action) may stay the proceedings in this (first) action at the request of one of the parties after hearing the other parties pursuant to Art. 104 (2) 2. The Office shall in this instance continue the proceedings in the (second) action pending before it (Art. 104 (2) 3). Together with Art. 100 (7) (according to which the Community trade mark court hearing a counterclaim for revocation or for a declaration of invalidity may request the defendant to submit an application for revocation or for a declaration of invalidity to the Office within a certain time limit; if the application is not made within the time limit, the proceedings shall continue and the counterclaim shall be deemed withdrawn), this indicates a certain priority for the procedure at the Office.21

IV. Other principles of proceedings In order to ensure that Art. 104 can be enforced, it is necessary for other Community 17 trade mark courts or the Office to be informed that a counterclaim for revocation or for a declaration of invalidity of a Community trade mark has been brought. In this regard Art. 100 (4) establishes that the Community trade mark court with which a counterclaim has been filed shall inform the Office of the fact that a counterclaim has been filed and the date22 on which it was filed. The date the counterclaim was filed (like the date an application for revocation or for a declaration of invalidity was submitted to the Office) and the result of this action (like the result of the procedure at the Office) are recorded by the Office in the Register of Community Trade Marks pursuant to Rule 84 (3)(n), (o) CTMIR and published in the Community Trade Marks Bulletin

19

Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 13. S. above mn. 14. 21 v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 96, mn. 46, Art. 100, mn. 9; Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 104, mn. 16; v. Mu¨hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 220, mn. 10; Fayaz, GRURInt 2009, 459, 466; Kouker, Mitt. 2000, 241, 252; Gielen, in Gielen/v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 104; s. also the commentary to Art. 100, mn. 26. 22 Owing to the fact that it is not regulated in the CTMR itself when a counterclaim is deemed to have been filed (whether this is already the case, for instance, when the statement of claim is submitted to the court or only when the statement of claim is served on the other party), the lex fori of the relevant Community trade mark court applies, according to Art. 101 (3). 20

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CTMR Art. 105

Community Trade Mark Regulation

pursuant to Art. 120 in conjunction with Rule 85 (2) CTMIR.23 The Community trade mark courts are obligated to inspect the Register.24 18 Where the Community trade mark court stays the proceedings in a related action according to Art. 104 (1) or Art. 104 (2) 2, it may order provisional and protective measures for the duration of the stay (Art. 104 (3)).25 The ordering of provisional and protective measures can be considered if otherwise there is a considerable risk of legal disadvantages for the plaintiff as a result of the stay of the proceedings.

V. Relationship with Art. 29 et seq. Reg. 1215/2012 and national law 19

The options for staying proceedings in an action pending before a Community trade mark court or at the Office are not conclusively regulated in the CTMR.26 In cases not referred to in Art. 104 – for example, filing an application for revocation or for a declaration of invalidity of a Community trade mark with the Office (Art. 56) or bringing a counterclaim for revocation or for a declaration of invalidity of a Community trade mark (Art. 100), after an infringement action (but not (yet) any counterclaim for revocation or for a declaration of invalidity pursuant to Art. 100)27 has been brought before the Community trade mark court – the Community trade mark court shall, according to Art. 101 (3), apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located. Since Art. 101 (3) contains a reference (‘Unless otherwise provided in this Regulation’) back to Art. 94 (1), (2) in conjunction with the provisions of Reg. 4/2001,28 it must first be examined whether Artt. 29 et seq. Reg. 1215/2012 contains rules of procedure for the relevant cases. Only if this is not the case the Community trade mark court will – via Art. 101 (3) – apply its national law and thus, if applicable, rules concerning the staying of proceedings existing under national law.29

Article 105 Jurisdiction of Community trade mark courts of second instance – Further appeal 1. An appeal to the Community trade mark courts of second instance shall lie from judgments of the Community trade mark courts of first instance in respect of proceedings arising from the actions and claims referred to in Article 96. 2. The conditions under which an appeal may be lodged with a Community trade mark court of second instance shall be determined by the national law of the Member State in which that court is located. 23

For details, see the commentary to Art. 100, mn. 23. v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 100, mn. 5; v. Mu¨hlendahl/Ohlgart, Gemeinschaftsmarke, p. 219, mn. 5. 25 For details concerning provisional and protective measures s. the commentary to Art. 103. 26 OLG Hamburg Case 5 W 81/02 GRUR-RR 2003, 356 et seq. – TAE BO; LG Hamburg Case 5 U 36/ 04, 152/04 GRUR-RR 2005, 251, 252 – THE HOME STORE. 27 Otherwise, Art. 104 (2) might be applicable. 28 S. the commentary to Art. 101, mn. 12. 29 S. the commentary to Art. 101, mn. 12; Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarken-verordnung Art. 104, mn. 4. 24

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Jurisdiction of Community trade mark courts

Art. 105 CTMR

3. The national rules concerning further appeal shall be applicable in respect of judgments of Community trade mark courts of second instance. Rc. 15 Content I. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Appeal against decisions by Community trade mark courts of first instance (Art. 105 (1), (2)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Further appeal against decisions by Community trade mark courts of second instance (Art. 105 (3)). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 3

I. General Art. 105 regulates the stages of appeal against decisions of the Community trade 1 mark courts via actions and claims referred to in Art. 96. Whereas Art. 105 (1), (2) provide rules for the second instance, Art. 105 (3) contains rules for the third instance. According to its wording (‘actions and claims referred to in Art. 96’), Art. 105 does not apply to proceedings concerning provisional and protective measures (Art. 103), regardless of whether such proceedings are conducted before a Community trade mark court or a national court.1 On the contrary, (also) the question as to whether the decision of a Community trade mark court or a national court that was rendered in proceedings concerning provisional and protective measures can be contested by appeal depends on the law of the respective Member State, according to Art. 103 (1).2

II. Appeal against decisions by Community trade mark courts of first instance (Art. 105 (1), (2)) According to Art. 105 (1), decisions by Community trade mark courts of first 2 instance can be contested by way of appeal to Community trade mark courts of second instance.3 The obligation of each Member State to make Community trade mark courts of second instance available, in addition to Community trade mark courts of first instance, is provided for in Art. 95 (1). Apart from that, the conditions for lodging and conducting appeals (e. g. form, deadlines) are not regulated in the CTMR itself. Instead, Art. 105 (2) states that these are to be determined by the national law of the Member State in which the Community trade mark court of second instance is located.

III. Further appeal against decisions by Community trade mark courts of second instance (Art. 105 (3)) According to Art. 105 (3), whether further appeal against judgments rendered by 3 Community trade mark courts of second instance can be lodged (and – if so – what 1

S. also Gielen, in Gielen/v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 105 (b). Schennen, in Eisenfuhr/Schennen (ed.), Gemeinschaftsmarkenverordnung Art. 105, mn. 12; Gielen, in Gielen/v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 105 (b); s. also the commentary to Art. 103, mn. 23. 3 A current list of Community trade mark courts of first and second instance can be downloaded from www.oami.eu Õ Law & Practice Õ Decisions and Communications of the President Õ search Communications No 14/04 Õ Annex. 2

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CTMR Art. 106

Community Trade Mark Regulation

conditions apply to the lodging and conducting of further appeals) depends on the national law of the Member State in which the Community trade mark court of second instance is located. Consequently, the issue of when a judgment of a Community trade mark court of second instance becomes final also depends on the national law of the Member State in which the Community trade mark court of second instance is located. Where the national law provides for the option of lodging a further appeal against judgments of Community trade mark courts of second instance, thus a third instance, the courts at which the further appeal is to be lodged must – like the Community trade mark courts of first and second instance – apply the rules of the CTMR.4

SECTION 3 Other disputes concerning Community trade marks Article 106 Supplementary provisions on the jurisdiction of national courts other than Community trade mark courts 1. Within the Member State whose courts have jurisdiction under Article 94 (1) those courts shall have jurisdiction for actions other than those referred to in Article 96, which would have jurisdiction ratione loci and ratione materiae in the case of actions relating to a national trade mark registered in that State. 2. Actions relating to a Community trade mark, other than those referred to in Article 96, for which no court has jurisdiction under Article 94 (1) and paragraph 1 of this Article may be heard before the courts of the Member State in which the Office has its seat. Rc. 6 Bibliography: Knaak, ‘Die Rechtsdurchsetzung der Gemeinschaftsmarke und der a¨lteren nationalen Rechte’, GRURInt 1997, 864–869; Knaak, ‘Internationale Zusta¨ndigkeiten und Mo¨glichkeiten des forum shopping in Gemeinschaftsmarkensachen – Auswirkungen der EuGH-Urteile Roche Niederlande und GAT/LUK auf das Gemeinschaftsmarkenrecht’, GRURInt 2007, 386–387.

Content I. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Other disputes concerning Community trade marks . . . . . . . . . . . . . . . . . . III. Rule concerning the jurisdiction of national courts ratione loci and ratione materiae (Art. 106 (1)) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Subsidiary international jurisdiction of Spanish courts (Art. 106 (2))

1 3 5 6

I. General 1

Art. 106 regulates the jurisdiction for actions concerning Community trade marks other than those referred to in Art. 96, which are designated ‘other disputes concerning Community trade marks’ by the CTMR. Although the wording of Art. 106 (1) does not contain the explicit restriction that these actions other than those referred to in Art. 96 must be actions concerning a Community trade mark, this can nevertheless be 4

Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 105, mn. 7.

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Art. 106 CTMR

concluded from the heading of Section 3 (‘Other disputes concerning Community trade marks’) and from the connection with Art. 106 (2) and Art. 107, in which the restriction is explicitly mentioned. Other disputes concerning Community trade marks – unlike disputes concerning the 2 infringement and validity of Community trade marks (Art. 96) – do not fall under the exclusive jurisdiction of the Community trade mark courts. Instead, the national courts located in the Member States have jurisdiction over other disputes concerning Community trade marks. International jurisdiction for actions concerning other disputes relating to Community trade marks is determined according to Art. 94 (1) in conjunction with Reg. 1215/2012; jurisdiction ratione loci and ratione materiae is determined by Art. 106 (1). Art. 106 (2) includes a subsidiary rule concerning the international jurisdiction in case no court of a Member State has international jurisdiction according to Art. 94 (1) in conjunction with Art. 106 (1).

II. Other disputes concerning Community trade marks ‘Other disputes concerning Community trade marks’ in terms of Art. 106 include, for 3 example: – Actions based on performance/non-performance of a licence agreement concerning a Community trade mark1 (but not actions against a licensee who exceeds the content of the granted licence (s. Art. 22 (2)), because this is an action based on the infringement of a Community trade mark under Art. 96 (a))2; – Actions for the transfer of a (Community) trade mark registered in the name of an agent to the benefit of the proprietor of the Community trade mark (Art. 18)3 and other actions in which a contractual claim to the transfer of a Community trade mark is asserted;4 – Actions to divide up shares in cases of co-ownership by defined shares of a Community trade mark;5 – Actions for the enforcement of a claim against the publisher of a dictionary, encyclopaedia or similar reference work to include an indication that a Community trade mark reproduced in the dictionary, encyclopaedia or similar reference work is a registered Community trade mark (Art. 10).6 Art. 106 does not apply to actions for the prohibition of the use of a Community 4 trade mark based on the infringement of earlier national rights (Art. 110 (1)), laws that do not relate to trade marks (Art. 110 (2)) or prior national rights applicable only to particular localities (Art. 111),7 because such actions are not based on a Community 1 Bumiller, Durchsetzung der Gemeinschaftsmarke, p. 8, mn. 5; Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 106, mn. 6; Knaak, GRURInt 2007, 386, 387; Gielen, in Gielen/v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 106 (a). 2 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 106, mn. 6; Knaak, GRURInt 2007, 386, 387; Ingerl/Rohnke, Markengesetz, § 125 e, mn. 58. 3 Knaak, GRURInt 2007, 386, 387; Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung Art. 106, mn. 6. 4 v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 102, mn. 1; Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 106, mn. 6; Bumiller, Durchsetzung der Gemeinschaftsmarke, p. 8, mn. 5; Ingerl/Rohnke, Markengesetz, § 125 e, mn. 58; Menebro¨cker/Stier, WRP 2012, 885, 890. 5 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 106, mn. 6. 6 Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 106, mn. 6. 7 S. Schennen, in Eisenfu ¨ hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 106, mn. 6; Knaak, GRURInt 2007, 386, 387; different opinion v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 102, mn. 1; left open in Ingerl/Rohnke, Markengesetz, § 125 e, mn. 59.

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CTMR Art. 107

Community Trade Mark Regulation

trade mark underlying the claim, but on a prior national right or other claims, such as claims under competition law; these actions therefore do not concern the protection of a Community trade mark, but the protection of a national right or the enforcement of national claims. This is also suggested by the taxonomy of the CTMR: The claims based on infringement of prior national rights by the use of more recent Community trade marks mentioned in Artt. 110, 111 are provided for in Title XI of the CTMR, which regulates the effects on the laws of the Member States, and not in Title X, which regulates the jurisdiction and the procedure in legal actions relating to Community trade marks.

III. Rule concerning the jurisdiction of national courts ratione loci and ratione materiae (Art. 106 (1)) 5

Actions concerning Community trade marks other than those referred to in Art. 96 can, according to Art. 106 (1), be brought at all national courts within the Member State whose courts have international jurisdiction according to Art. 94 (1) in conjunction with Reg. 1215/2012 which would have jurisdiction ratione loci and ratione materiae in the case of actions relating to a national trade mark registered in that Member State. Art. 106 (1) thus equates the Community trade mark with a national trade mark for actions other than those referred to in Art. 96 for the purpose of determining the jurisdiction ratione loci and ratione materiae of the national courts within a Member State.

IV. Subsidiary international jurisdiction of Spanish courts (Art. 106 (2)) 6

Art. 106 (2) regulates the subsidiary international jurisdiction of the Member State in which the Office has its seat – thus the international jurisdiction of Spanish courts – if no court of a Member State has international jurisdiction according to Art. 94 (1) in conjunction with8 Art. 106 (1) to rule on actions other than those referred to in Art. 96.9 This ensures that at least the courts of one Member State have international jurisdiction for actions other than those referred to in Art. 96.

Article 107 Obligation of the national court A national court which is dealing with an action relating to a Community trade mark, other than the action referred to in Article 96, shall treat the trade mark as valid. Rc. 3 Bibliography: Hartmann, ‘Antrag auf Ru¨cknahme der Anmeldung einer Gemeinschaftsmarke’, MarkenR 2003, 379–380. 8 Since Art. 106 (1) does not contain any provision concerning international jurisdiction, Art. 106 (2) can be understood to mean only this. 9 Gielen, in Gielen/v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 106 (b).

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Obligation of the national court

Art. 107 CTMR

Art. 107 provides that a national court which is dealing with an action relating to a 1 Community trade mark, other than the action referred to in Art. 96,1 shall treat the trade mark as valid. Art. 107 thus includes an irrefutable presumption of validity of the Community trade mark2 and a prohibition to treat or declare the Community trade mark invalid – even implicitly or by way of a counterclaim. Therefore, the decision of the Office to register the Community trade mark has a binding effect in proceedings relating to other disputes concerning Community trade marks before national courts other than Community trade mark courts. This takes into account the fact that the Community trade mark, as an established right in the Community, shall not come under the jurisdiction of national courts that are not Community trade mark courts.3 Against this background, Art. 107 – the wording of which appears to be limited to main proceedings – also applies to proceedings concerning provisional measures. One reason for this – amongst others – is that if Community trade mark courts already have to treat the Community trade mark as valid in proceedings concerning provisional measures, and neither a counterclaim for the cancellation of the Community trade mark nor a plea relating to revocation or invalidity is admissible in this context,4 then this applies all the more to national courts that are not Community trade mark courts. Therefore, on the one hand, it follows from Art. 107 and arg. ex. Artt. 96 (d), 99 – 2 according to which Community trade mark courts shall treat the Community trade mark as valid unless its validity is put in issue by the defendant by way of a counterclaim for revocation or for a declaration of invalidity (Art. 99 (1)) or the defendant has submitted a plea relating to revocation or invalidity (Art. 99 (3)) – that the validity of a Community trade mark cannot be put in issue before a national court that is not a Community trade mark court by way of a counterclaim for revocation or for a declaration of invalidity. A fortiori the validity of a Community trade mark cannot be contested by an action for cancellation that is (actively) brought before a national court.5 Accordingly, national courts cannot order the proprietor of a Community trade mark or a Community trade mark application to waive his Community trade mark or to withdraw his Community trade mark application.6 In fact, the validity of a Community trade mark can be contested only by way of an application for revocation or for a declaration of invalidity before the Office (Artt. 51 et seq.) or by way of a counterclaim before a Community trade mark court (Artt. 96 (d), 100).7 On the other hand, it is not permissible to take into account objections contesting the validity of a Community trade mark (such as the non-protectability of the Community trade mark due to absolute or relative grounds for invalidity or revocation due to lack of use) in proceedings relating to other disputes concerning Community trade marks before national courts other than Community trade mark courts. Therefore, the validity of a Community trade mark cannot be successfully contested in proceedings before national courts that are not Community trade mark courts.

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S. the commentary to Art. 106, mn. 3. v. Kapff, in Ekey/Klippel (ed.), Markenrecht, Art. 103, mn. 3. 3 Hartmann, MarkenR 2003, 379, 380. 4 S. the commentary to Art. 103, mn. 20 et seq.; probabely stating a different view, Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 107, mn. 2. 5 LG Mu ¨ nchen I Case 1 HK O 16182/01 GRURInt 2002, 933, 934 – mediantis; Hartmann, MarkenR 2003, 379, 380. 6 LG Mu ¨ nchen I Case 1 HK O 16182/01 GRURInt 2002, 933, 934; Hartmann, MarkenR 2003, 379, 380; Schennen, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 107, mn. 4. 7 S. the commentary to Art. 100, mn. 1 et seq. 2

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CTMR Art. 108

Community Trade Mark Regulation

SECTION 4 Transitional provision Article 108 Transitional provision relating to the application of the Convention on Jurisdiction and Enforcement The provisions of Regulation (EC) No 44/2001 which are rendered applicable by the preceding Articles shall have effect in respect of any Member State solely in the text of the Regulation which is in force in respect of that State at any given time. 1

Art. 108 complements Art. 94 to the extent that it provides that the provisions of Reg. 1215/2012 shall have effect in respect of any Member State solely in the text of the Reg. 1215/2015 which is in force in respect of that State at any given time. The original reason for Art. 108 was that the Brussels Convention was amended several times – each time a new Member State acceded the EC. Since the Brussels Convention is now superseded by Reg. 1215/2012, which applies in all Member States, Art. 108 lost its importance.1 Therefore, the proposals of the Commission concerning the amendment of the CTMR provide for the deletion of Art. 108.2 1 Concerning Reg. 44/2001: Schennen, in Eisenfu ¨ hr/Schennen (ed.), Art. 108, mn. 2; Gielen, in Gielen/ v. Bomhard (ed.), Concise – European Trade Mark and Design Law, Art. 108. 2 Proposal for a Regulation of the European Parliament and of the Council amending Council Regulation (EC) No 207/2009 on the Community trade mark www.eur-lex.europa.eu Õ Legislation Õ Search for legislation.

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TITLE XI EFFECTS ON THE LAWS OF THE MEMBER STATES SECTION 1 Civil actions on the basis of more than one trade mark Article 109 Simultaneous and successive civil actions on the basis of Community trade marks and national trade marks 1. Where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seized on the basis of a Community trade mark and the other seized on the basis of a national trade marks: (a) the court other than the court first seized shall of its own motion decline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical goods or services. The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested; (b) the court other than the court first seized may stay its proceedings where the trade marks concerned are identical and valid for similar goods or services and where the trade marks concerned are similar and valid for identical or similar goods or services. 2. The court hearing an action for infringement on the basis of a Community trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical national trade mark valid for identical goods or services. 3. The court hearing an action for infringement on the basis of a national trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical Community trade mark valid for identical goods or services. 4. Paragraphs 1, 2 and 3 shall not apply in respect of provisional, including protective, measures. Bibliography: David Stone, European Union Design Law, a Practitioners’ Guide, Oxford University Press 2012; Morcom, Roughton & Malynicz, The Modern Law of Trademarks, LexisNexis 3rd edition 2008; Guy Tritton, Intellectual Property In Europe, Thomson Sweet & Maxwell, 3rd edition 2008.

Content I. Simultaneous and successive civil actions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Infringement actions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Simultaneous actions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Successive actions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Provisional and protective measures . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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CTMR Art. 109

Community Trade Mark Regulation

I. Simultaneous and successive civil actions 1 2

3

4

5

6

Art. 109 deals with the principles of lis pendens, Art. 109 (1), and res judicata, Art. 109 (2) and (3). Art. 109 is modelled on basis of Regulation (EC) No 44/2001, ‘Brussels I’, from a perspective that conflicting actions and judgments between the same parties based on the same merits and same causes of action which are brought on the basis of a Community trade mark parallel with national trade marks should be avoided. Also, there is a need to avoid that the benefits from having unitary trade mark rights as the ones constituted by the Community trade mark could be undermined by co existing identical or similar rights existing in national law being separately litigated in different national courts which could lead to inconsistent findings. Art. 109 prevents simultaneous and successive actions on basis of Community trade marks and parallel national trade marks respectively. In cases where a Community trade mark is not involved or have been involved between the same parties Art. 109 does not apply, as infringement of national trade marks have to be dealt with by the national courts in accordance with national law. It is suggested in Recital 17 in the CTMR that when parallel actions are brought in the same Member State, the way in which this is to be prevented is a matter for national procedural rules which are not prejudiced by the CTMR. Art. 109 (1) reflects this principle as Art. 109 (1) only deals with actions for infringement which are brought in ‘different’ Member States. Art. 109 (2) and (3) although apply also in relation to actions for infringement brought in the same Member State where a final judgement on the merits have already been given as a dissatisfied party should not be allowed to litigate the same issue a second time against the same opponent. The situation can occur since many trade marks are registered in parallel both as national trade marks and as Community trade marks. Art. 109 (1) applies for both identical and similar goods and services and trade marks whereas Art. 109 (2) and (3) only applies for identical goods and services and trade marks. A principle where the court first seized prevails on taking jurisdiction is applied in Art. 109. The CTMR do not offer any definition of ‘first seized’ even though it is decisive to which court can or shall reject or stay jurisdiction. The provisions of Brussels I apply to all ‘actions at law’ relating to Community trade marks unless derogated from by the CTMR1. Since there is no derogation from Art. 30 of Brussels I in the CTMR, the definition of ‘first seized’ in Art. 30 of Brussels I applies, i. e. a court is ‘first seized’ when the document instituting the proceedings, or an equivalent document, is lodged with the court or, if such document has to be served before being lodged with the court, a court is first seized at the time when the document is received by the authority responsible for service.

1

CTMR Recital 16.

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Simultaneous and successive civil actions

Art. 109 CTMR

Art. 109 applies only to infringement actions concerning the ‘same cause of actions’ 7 and ‘between the same parties’. Simultaneous or successive infringement actions where one is based on a Community trade mark and the other on a national trade mark would literally never comply with the requirement of ‘same cause of actions’. It is although obvious that under Art. 109 this does not disqualify from being ‘same cause of actions’. It is not clear whether an action regarding invalidity or declaration of non-infringement is to be considered the ‘same cause of actions’. The CJ has suggested that in relation to the 1968 Brussels Convention Art. 21 ‘… the “cause of action” comprises the facts and the rule of law relied on as the basis of the action.’2. Further CJ has stated in interpreting 1968 Brussels Convention Art. 21 that ‘…two actions have the same subject matter, for that concept cannot be restricted so as to mean two claims which are entirely identical…’3 suggesting that ‘same cause of actions’ is not reserved for identical actions which would also be expected to be the case in relation to Art. 109. As for the requirement that it has to be actions ‘between the same parties’ no 8 interpretation is offered in the CTMR. Nor is there any interpretation offered in Brussels I. The CJ have suggested that ‘same parties’ do not require ‘identity’ as the decisive factor is whether there is a risk of irreconcilable decisions4. Although Art. 109 could seem to be quite unambiguously drafted the provision is not 9 entirely clear and also, applying Art. 109 could in some cases produce unfair and assumably unintended results. To a wide extend courts could prevent such unfair and unintended results by applying a narrow interpretation of the requirements of ‘same cause of action’, ‘same parties’, ‘identity’ and ‘similarity’5.

II. Infringement actions 1. Simultaneous actions Art. 109 (1) applies where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seized on the basis of a Community trade mark and the other seized on the basis of a national trade mark. In such actions the court other than the court first seized either ‘shall’ or ‘may’ stay proceedings depending on whether there is identity or similarity between the goods and services and the trade marks concerned. It is a condition for applying Art. 109 (1) that actions are pending in ‘different’ Member States whereas this is not the case in relation to Art. 109 (2) and (3). Art. 109 (1) is in general addressing the problem that nothing in Brussels I Art. 22 requires a court seized on basis of a national trade mark for an infringement claim to decline jurisdiction in favour of a Community trade mark court seized or vice versa. Art. 109 (1)(a) apply where there is double identity6 i. e. identical trade marks and identical goods or services, cf. CTMR Art. 9 (1)(a). Art. 109 (1)(b) apply where the question is whether likelihood of confusion exist, cf. CTMR Art. 9 (1)(b). 2

CJ Case C-406/92 The Tatry v Maciej Ralaj [1994] ECR I-05439. CJ Case C-144/86 Gubisch Maschinenfabrik KG v Giulio Palumbo [1987] ECR 04861. 4 CJ Case C-159/02 Gregory Paul Turner v Felix Fareed Ismail Grovit, Harada Ltd. and Changepoint SA. [2004] ECR I-03565 and CJ Case C-539/03 Roche Nederland BV and Others v Frederick Primus and Milton Goldenberg [2006] ECR I-06535. 5 The Prudential Assurance Company Ltd. v The Prudential Insurance Company of America [2003] EWCA Civ 327 6 CJ Case C-291/00 LTJ Diffusions SA v Sadas Verbaudet SA [2003] ECR I-02799. 3

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CTMR Art. 109

Community Trade Mark Regulation

In an Art. 109 (1)(a) action, the court other than the court first seized ‘shall’ of its own motion decline jurisdiction – or stay proceedings if the jurisdiction of the other court is contested – if an infringement action involving the same cause of action and between the same parties concerning an identical trade mark and identical goods and services are brought in the courts of different Member States, and one court is seized on the basis of a Community trade mark and the other seized on the basis of a national trade mark. Double identity actions do not depend on establishing confusing similarity – which exists per se – and therefore there is no room for discretion as to whether or not to stay proceedings. 15 The case is different in relation to Art. 109 (1)(b) actions as such actions do not concern ‘identity’ and therefore the concept of confusing similarity7 has to be assessed by the relevant court. Language and other factors might be decisive in a national assessment of similarity and this is the reason why the national court has discretion so that it may stay proceedings in Art. 109 (1)(b) which discretion does not exist in Art. 109 (1)(a). 14

2. Successive actions According to Art. 109 (2) a court hearing an action for infringement on the basis of a Community trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical national trade mark valid for identical goods or services. Art. 109 (3) deals with the reverse situation where the first action is based on a Community trade mark and the later action is based on a national trade mark. 17 There could be overlap between Art. 109 (2) and (3) and Art. 109 (1)(a). 18 Art. 109 (2) and (3) apply both in relation to actions brought in the same Member States and actions brought in different Members States and applies also where the plaintiff did not succeeded in previous actions, inter alia where the defendants trade marks or goods or services were found to be dissimilar in the first action. 19 It does not seem clear whether Art. 109 (2) and (3) also apply where a previous final judgement on the merits has been given on another basis than infringement e. g. invalidity. It is suggested that a previous final judgement regarding an opposition should be encompassed by Art. 109 (2) and (3) whereas a judgement on invalidity would most often be different than an infringement judgement and should therefore not be considered ‘same cause of action’ as invalidity. 16

3. Provisional and protective measures 20

It follows from Art. 109 (4) that Art. 109 (1), (2) and (3) do apply in respect of provisional, including protective, measures. It is not clear from Art. 109 (4) how provisional and protective measures could be applied in a situation where the second court would be required to decline jurisdiction or reject an action according to Art. 109 (1), (2) or (3) because the question of infringement is already pending or have already been decided.

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CJ Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] ECR I-03819.

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Prohibition of use of Community trade marks

Art. 110 CTMR

SECTION 2 Application of national laws for the purpose of prohibiting the use of Community trade marks Article 110 Prohibition of use of Community trade marks 1. This Regulation shall, unless otherwise provided for, not affect the right existing under the laws of the Member States to invoke claims for infringement of earlier rights within the meaning of Article 8 or Article 53 (2) in relation to the use of a later Community trade mark. Claims for infringement of earlier rights within the meaning of Article 8 (2) and (4) may, however, no longer be invoked if the proprietor of the earlier right may no longer apply for a declaration that the Community trade mark is invalid in accordance with article 54 (2). 2. This Regulation shall, unless otherwise provided for, not affect the right to bring proceedings under the civil, administrative or criminal law of a Member State or under provisions of Community law for the purpose of prohibiting the use of a Community trade mark to the extent that the use of a national trade mark may be prohibited under the law of that Member State or under Community law. Rc. 6 Bibliography: Edenborough/Elias/v. Bomhard, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 110 CTMR; Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 110 CTMR.

Content I. II. III. IV.

General remarks on Artt. 110, 111 CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Relationship between Artt. 110 and 111 CTMR. . . . . . . . . . . . . . . . . . . . . . . . . Requirement ‘unless otherwise provided for’, Art. 110 (1) CTMR . . . ‘Earlier rights’ in Art. 110 (1) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Trade marks in Art. 8 (2) CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Unregistered trade marks and other signs in Art. 8 (4) CTMR . . . . a) Rights included. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) More than mere local significance . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Used in the course of trade. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Other earlier rights in Art. 53 (2) CTMR. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Acquiescence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Prohibition to use a CTM under Art. 110 (2) CTMR . . . . . . . . . . . . . . . . . . VII. Extension to new Member States . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 7 10 11 11 14 15 15 20 22 24 26 29 32

I. General remarks on Artt. 110, 111 CTMR The guiding principle of the CTMR is to provide for Community arrangements for 1 trade marks whereby undertakings can by means of one procedural system obtain Community trade marks to which uniform protection is given and which produce their effects throughout the entire area of the Community. The Community law relating to trade marks nevertheless does not replace the laws of the Member States on trade Wolter Bettink/Anne Bekema

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CTMR Art. 110

2

3

4

5

6

Community Trade Mark Regulation

marks.1 National trade marks continue to be necessary for undertakings which do not seek or are not able to obtain protection of their trade marks at Community level.2 In order to remove barriers to the internal market that the rights converted by the laws of Member States in relation to national trade marks may cause, the TMDir aims to harmonise such laws. Approximation is limited to those provisions of national law which most directly affect the functioning of the internal market.3, 4 Member States remain free to fix the provisions of procedure concerning the registration, the revocation and the invalidity of national trade marks acquired by registration. They can, for example, determine the form of the trade mark registration and invalidity procedures, decide whether earlier rights should be invoked either in the registration procedure or in the invalidity procedure or in both and, if they allow earlier rights to be invoked in the registration procedure, have an opposition procedure or an ex officio examination procedure or both. Member States also remain free to determine the effects of revocation or invalidity of national trade marks.5 Some provisions of the TMDir are optional for Member States to implement. For instance, grounds of refusal or invalidity linked to conditions for obtaining and continuing to hold a national trade mark for which there is no provision of approximation are optional. This includes both the eligibility for the grant of a trade mark right, the renewal of the trade mark and rules on fees, as well as rules related to the noncompliance with procedural rules. Another example is Art. 5 (5) TMDir which accommodates a prior similar provision in Benelux trade mark law. A Member State may, if it sees fit, and subject to such conditions as it may determine, protect a trade mark against use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.6 Moreover, the TMDir does not exclude the application to national trade marks of provisions of law of the Member States other than trade mark law, such as the provisions relating to unfair competition, civil liability or consumer protection.7 A CTM does not supersede earlier national trade marks or other earlier rights and is not granted any immunity against an action based on upon those earlier rights. The relationship between the CTMR and national law is characterised by the principle of coexistence. Where conflicts arise between CTM’s and national trade marks or other national rights, there is no hierarchy determining that one system prevails over the other. In other words, the registration does not give an affirmative right to use.8 Instead, one should apply the principle of priority to these conflicts. Artt. 110 and 111 CTMR enable any national court to issue an injunction on the use of a Community trade mark for the territory of the relevant Member State, on the basis of older national rights that allow the holder to oppose such use.9

1

CTMR, recital 3 and 4. CTMR, recital 3, 4 and 6. 3 TMDir, recital 4. 4 TMDir, recital 5. 5 TMDir, recital 6. 6 CJ Case C-23/01 Robelco NV v Robeco Groep NV [2002]ECR I-10913, mn. 36. 7 TMDir, Recital 7. 8 Edenborough/Elias/v. Bomhard, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 111 CTMR mn. 2 9 Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 110 CTMR, mn. 2. 2

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II. Relationship between Artt. 110 and 111 CTMR Art. 110 CTMR explicitly enables infringement claims based on earlier national rights 7 in relation to the use of a later CTM. The national right should be of more than mere local significance as set out in Art. 8 (4) CTMR (see §§ 20 and 21 below). Signs that may be protected only within a limited territory of a Member State and 8 which do not enable their proprietors to prohibit the use of a later trade mark in the whole territory of this Member State are thus excluded from protection under Art. 8 (4) CTMR and Art. 110 CTMR. Proprietors of such signs may still have the right to prohibit the use of the CTM in their territory of protection in accordance with Art. 111 CTMR (see comments on Art. 111 below). Art. 111 may be invoked by the proprietor of an earlier right confined to a particular 9 locality. Whereas a right of more than mere local significance qualifies as a ground for an invalidity action or a defence against a later CTM, a right applying to a particular locality does not.10

III. Requirement ‘unless otherwise provided for’, Art. 110 (1) CTMR Although this phrase is not entirely conclusive, it presumably refers to other 10 provisions in the CTMR which deviate from this rule. The present text of the CTMR does not contain any such deviations.

IV. ‘Earlier rights’ in Art. 110 (1) CTMR 1. General Attainment of the objectives at which the approximation of laws is aiming requires 11 that the conditions for obtaining and continuing to hold a registered trade mark be, in general, identical in all Member States. To this end, the TMDir and the CTMR provide for a list of examples of signs which may constitute a trade mark or an earlier right. However, determining what constitutes an earlier right under Art. 110 CTMR is left to the national courts of the Member States, taking into account both Community and national law. Art. 110 CTMR explicitly refers to national earlier rights within the meaning of Art. 8 12 and Art. 53 (2) CTMR. Art. 8 CTMR provides for relative grounds for refusal of a CTM application upon opposition by the proprietor of prior rights.11 It must be read in conjunction with Art. 53 CTMR, which contains the grounds for invalidity of a trade mark. While Art. 8 CTMR refers only to earlier trade marks and other signs used in the course of trade, Art. 53 refers also to other earlier rights. Such rights may provide the basis for an infringement claim if they have been acquired prior to the date of application for the CTM, and Community law or national law confers on its proprietor the right to prohibit the use of a subsequent trade mark. The right to obtain an injunction on the use of the younger Community trade mark 13 under Art. 110 CTMR implies that the holder of the earlier national right has not 10 11

Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 111 CTMR, mn. 1. Art. 8 CTMR is similar to Art. 4 TMDir.

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invoked (or been unsuccessful in invoking) such a right in opposition (Art. 8 CTMR) and in an invalidity action (Art. 53 CTMR).12

2. Trade marks in Art. 8 (2) CTMR 14

Art. 8 (2) CTMR defines earlier trade marks as including earlier national trade mark registrations and applications, as well as well known trade marks protected in a Member State in accordance with Art. 6bis of the Paris Convention. The latter may also include a trade mark that is not registered in the Community or in only a limited number of Member States. As follows from Art. 8 (5) CTMR earlier rights also include trade marks which have a reputation in the Member State concerned and which are registered for different goods or services than the trade mark opposed.

3. Unregistered trade marks and other signs in Art. 8 (4) CTMR a) Rights included. The reference in Art. 110 CTMR to earlier rights mentioned in Art. 8 (4) CTMR implies that they include unregistered trade marks or other signs used in the course of trade which are of more than mere local significance. 16 Unregistered use-based trade marks, are signs that indicate the commercial origin of a product or service and therefore function as a trade mark. Such trade marks are recognized by national law in most Member States, although the rules and conditions differ.13 Examples in case law of an unregistered trade mark forming the basis for an action under Art. 110 CTMR are rare.14 17 The Guidelines for examination of OHIM15 provide for an extensive list of national rights that constitute ‘other signs used in the court of trade’ under Art. 8 (4) CTMR. This includes signs that primarily serve to identify in trade a business or a geographical origin, such as trade names16, corporate names17, establishment names, titles of publications or similar works18, domain names19 and geographical indications.20 Art. 8 (4) CTMR does not cover other types of intellectual property rights, such as patents, copyright or design rights.21 18 The ‘national protection’ requirement under Art. 8 (4) CTMR is deemed necessary as unregistered national rights are not easily identifiable and their protection is not 15

12

Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 110 CTMR, mn. 5. According to OHIM, Guidelines for Examination, part C, sect. 4, Rights under Art. 8 (4) CTMR, 1 August 2014, p. 9, mn. 3.2.2, only the Benelux, Cyprus, Croatia, Estonia, France, Lithuania, Poland, Romania, Slovenia and Spain as Member States do not protect unregistered trade marks (unless, for some jurisdictions, they are considered well-known within the meaning of Art. 6bis of the Paris Convention). 14 One example is OHIM Dec. of 15.05.2011 – R 1529/2010-1 – China Engine Corporation v Journeyman Europe s.r.o which concerned an unregistered trade marks right in the Czech Republic. 15 OHIM, Guidelines for Examination, part C, sect. 4, Rights under Art. 8 (4) CTMR, 1 August 2014, p. 31- 61. 16 OHIM Dec. of 16.08.2011 – R 1714/2010-4 – Consejo Regulador de la Denominacio ´ n de Origen Jamo´n de Huelva v Martı´n-Toro y Villegas, S.L. 17 CJ Case T-485/07 Olive line v HABM [2011] ECRII-00280, OHIM Dec. of 08.09.2011 – R 21/2011-1 – Marionnaud Parfumeries v NANOEGG Research Laboratories. 18 OHIM Dec. of 12.01.2012 – R 181/2011-1 – Gruner + Jahr AG & Co KG v Empik Assets Sp. z o.o. 19 OHIM Dec. of 07.12.2011 – R 275/2011-1 – Lucky-Pet Handels- und Produktionsgesellschaft mbH v Eurofil S.r.l., OHIM Dec. of 22.07.2011 – B 1 719 379 – EURL Foraison v Sighor Management. 20 Geographical indications are protected in various ways in the EU (national law, EU law, international agreements) and cover various products areas (such as foodstuffs, spirits and handicrafts). 21 CJ Case T-255/08 Eugenia Montero Padilla v OHIM [2010] ECR II-02551, CJ Case T-435/05 Danjaq LCC v OHIM [2009] ECR II-02097, OHIM Dec. of 07.09.2010 – B 1 530 875 – Lipsy Limited v Loving Hut International Limited. 13

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harmonised on an EU level. Consequently national law governing the earlier rights defines the scope of their protection.22 In determining whether the law of the Member State concerned confers on the proprietor the right to prohibit use of a subsequent mark under Art. 8 (4) and thus 110 CTMR, all elements of fact and law need to be taken into account.23 The sign relied on must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local.24 While the requirements of ‘use in the course of trade’ and ‘use of more than mere local 19 significance’ are to be interpreted in the context of Community law, national law applies when determining whether a particular right is recognised and protected under national law, whether its holder is entitled to prohibit the use of a subsequent trade mark, and what conditions need to be met under national law for the right to be successfully exercised. As a consequence of this dualism, courts must apply both the relevant provisions of the CTMR and the national law governing the earlier opposing right. b) More than mere local significance. Since ‘more than mere local significance’ is a 20 criterion of Community law, its meaning is to be determined not on the basis of national law, but of its economic impact on the market.25 The requirement that the sign is of more than mere local significance implies that its use extends to a substantial part of the territory in which that sign is protected, which territory should be regarded as other than local, but does not necessarily have to be the entire territory of the Member State involved. The impact of the sign should not be confined to a small part of that territory, as is generally the case with a town or a province.26 Only use in the territory where the sign is protected is relevant to determine whether it is of more than mere local significance.27 Use of a sign for nearly ten years to designate a business establishment in a Portuguese 21 town with 120,000 inhabitants, without any evidence of recognition or promotion outside that town, was not considered sufficient to constitute a right of more than mere local significance.28 In Budeˇjovicky´ BudvarII the CJ ruled that a right to a sign of more than mere local significance under Art. 8 (4) CTMR did not exist in France, where a very limited quantity of beer under the ‘BUD’ trade mark had been sold in three cities, nor in Austria, where beer under the sign in question was sold in Vienna in very limited quantity during a period of five years.29 c) Use in the course of trade. The CJ has ruled that ‘use in the course of trade’ refers 22 to use of the sign in the course of a commercial activity with a view to gain an economic advantage, and not as a private matter.30 Account must be taken of the duration and 22

OHIM, Guidelines for Examination, part C, sect. 4, Rights under Art. 8 (4) CTMR, 1 August 2014, p. 7. GC Joined Cases T-225/06, T-255/06, T- 257/06 and T-309/06 Budeˇjovicky´ Budvar, národní podnik v OHIM, [2008] ECR II-03555, mn. 201 (Budeˇjovicky´ Budvar I). 24 CJ Case C-96/09 Anheuser-Busch/Budejovicky Budvar [2011] ECR I-02131, mn. 159. 25 Edenborough/Elias/v. Bomhard, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 111 CTMR, para. 3 26 GC Joined Cases T-318/06 to T-321/06 Alberto Jorge Moreira da Fonseca, Lda v OHIM- General ´ ptica[2009] ECR II-00663, mn. 41. O 27 CJ Case C-96/09 Anheuser-Busch/Budejovicky Budvar [2011] ECR I-02131, mn. 161. 28 GC Joined Cases T-318/06 to T-321/06 Alberto Jorge Moreira de Fonseca, Lda v OHIM; General ´ ptica, SA [2009] ECR II-00663. O 29 CJ Joined cases T-225/06 RENV, T-255/06 RENV, T-257/06 RENV and T-309/06 RENV. Bude ˇjovicky´ Budvar, národní podnik v OHIM [2013], ECLI: eU:T:2013:31, mn. 59 to 64 (Budeˇjovicky´ Budvar II). 30 CJ Case C-206/01 Arsenal Football Club v Matthew Reed [2002] ECR I-10273, p. 40, CJ Case C-48/ 05, Adam/Opel v Autec AG [2007] ECR I-01017, mn. 18, CJ Case C-17/06 Ce´line SARL v Ce´line SA [2007] ECR I-07041 mn. 17. CJ Case C-53/06, O2 Holdings Limited and O2 (UK) Limited v Hutchinson 3G UK Ltd [2008] ECR I-04231, mn. 60., CJ Joined Cases C-236/08 to C-238/08 Google France and Google [2010] ECR I-2417, mn. 56–59. 23

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intensity of the use of the sign as a distinctive element in relation to purchasers, consumers, suppliers and competitors.31 The notion ‘used in the course of trade’ in Art. 8 (4) CTMR is not the same as the Community principle of genuine use. Applicable national law may set specific requirements as far as the intensity of the use is concerned.32 23 The holder of the right must prove that use took place before the filing of the CTM application and that it has continued over time. In case of unregistered signs, the use must be continuous and uninterrupted until the time when the rights are invoked.33 These requirements apply independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a sign alone, or requires that it is used as well.34

4. Other earlier rights in Art. 53 (2) CTMR Art. 53 (2) CTMR contains a non-exhaustive list of earlier rights, other than trade marks or other signs, which could provide for relative grounds for invalidity proceedings or counter claims in infringement proceedings against a later CTM. These include the right to a name, the right of personal portrayal, copyright and an industrial property right. 25 The laws governing the right to a name or the right of personal portrayal vary from one country to another, while these rights are not recognised in all Member States.35 Although copyright has been harmonised to a certain extent, the question whether copyright has been infringed is still largely a question of national law, and therefore handled differently in each Member State. The approach to what is considered as an industrial property right varies even more between Member States. Twenty Member States include (Community) design rights, but varying minorities of Member States also include geographical indications, trade names, company names, domain names, unregistered trade marks, (well-known) signs or designs, violation of good trading practices, plant variety rights, animal breeds, patents, utility rights, trade dress, drug names, architectural sites and commercial designation.36 A few of them overlap with Art. 8 (4) CTMR (see § 15 et seq. above). 24

V. Acquiescence 26

The rights of the proprietor of an earlier national right to invoke claims for infringement will be lost if the proprietor has acquiesced for a period of five successive years in the use of the later CTM in the Member State in which the earlier sign is protected, while being aware of such use. The only exception to this time bar is if the 31

CJ Case C-96/09 Anheuser-Busch/Budejovicky Budvar [2011] ECR I-02131, mn. 160. OHIM Guidelines for Examination, part C, sect. 4, Rights under Art. 8 (4) CTMR, 1 August 2014, p. 34. 33 OHIM, Guidelines for Examination, part C, sect. 4, Rights under Art. 8 (4) CTMR, 1 August 2014, p. 33–34; CJ case T-581/11, Dimian AG v OHIM [2013] ECLI: eU:T:2013:553; OHIM Dec. of 03.08.2011 – R 1822/2010-2 – Dimian AG v OHIM – Bayer Design Fritz Bayer GmbH & Co. KG. 34 OHIM Dec. of 07.02.2012 – R 693/2011-2 – Cerealis – Produtos Alimentares, S.A. v Baltazar roiz Casthanheiro. 35 Claims based on the right to a name may not be invoked in The Netherlands. Claims based on a personal portrayal may not be invoked in Malta. Source: ECTA harmonization committee, Survey on Art. 53 (2) CTMR, 3 July 2013. 36 ECTA harmonization committee, Survey on Art. 53 (2) CTMR, 3 July 2013. 32

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registration of the later CTM was applied for in bad faith. Reference is made to Art. 54 (2) CTMR that deals with the concept of acquiescence. Acquiescence under Art. 110 CTMR only applies to national trade marks and other 27 signs, referred to in Artt. 8 (2) and 8 (4) CTMR and not to other earlier rights covered by Art. 53 (2) CTMR. It is to be assumed that Art. 54 (3) CTMR, providing for coexistence of an earlier right and a CTM in case of acquiescence, also applies to earlier rights under Art. 110 CTMR. The five year period of acquiescence starts when the CTM is first being used in the 28 Member State where the earlier national right applies. As the CTM is perhaps only used in that Member State after a number of years and since it may be difficult for the holder of the earlier national right to prove when the CTM was first used, the holder may have to assert his national right as soon as he becomes aware of the use of the CTM in its Member State, in order to avoid loss of his right to invoke infringement claims due to acquiescence.37

VI. Prohibition to use a CTM under Art. 110 (2) CTMR Unless otherwise provided for, the CTMR does not affect rights under (national or 29 Community) laws to obtain a prohibition on the use of a CTM if and to the extent that such laws would allow the prohibition of the use of a national trade mark. Art. 110 (2) explicitly refers to the rights under civil, administrative or criminal law. Therefore, these are not proprietary rights but serve a public interest and therefore do not constitute an earlier right under Art. 110 (1) CTMR.38 In most Member States the use of a sign may be prohibited if it results in unfair or 30 misleading business practices, is considered as immoral or defamatory, or constitutes or instigates a crime or is otherwise contrary to public order, public policy or public morals. Examples of Community provisions allowing a prohibition on the use of a trade mark might be found in anti-trust law, consumer protection laws as well as Art. 14 of Council Regulation (EC) No 510/2006 on Protected Designations of Origin and Protected Geographical Indications.39 Other examples are prohibitions on the grounds mentioned in Art. 36 TFEU in relation to export, import and transit of goods. In a case involving toilet paper and disposable handkerchiefs which were marketed in 31 France and Italy under the trade mark ‘Cotonelle’ – which suggested that it contained cotton which it in fact did not – the CJ ruled that the TMDir does not preclude a prohibition on the marketing of products coming from a Member State where they are lawfully marketed, on the ground that they bear a trade mark liable to mislead consumers in the Member State of importation.40 Although this case concerned national Italian trade marks the decision would have been the same if the trade mark under which the goods were imported had been a CTM.41

37 38

Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 110 CTMR, mn. 9. OHIM, Guidelines for Examination, part C, sect. 4, rights under Art. 8 (4) CTMR, 1 August 2014,

p. 8. 39 Edenborough/Elias/v. Bomhard, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 110 CTMR, para. 4. 40 CJ Case C-313/94 Fratelli Graffione SNC v Ditta Fransa [1996] ECR I-06039, mn. 33. 41 Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 110 CTMR, mn. 18.

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VII. Extension to new Member States 32

Under Art. 165 (1) CTMR the validity of a CTM is extended to new Member States as from the date of their accession to the EU. As set out in Art. 165 (5) CTMR, use of a CTM with a filing date prior to the date of accession of a new Member State, may be prohibited under Artt. 110 CTMR on the basis of an earlier national trade mark registered in the new Member State where the latter has a filing or priority date prior to the date of accession and was registered in good faith. This also applies to applications for national marks filed in a new Member State which have subsequently been registered as well as unregistered rights acquired in a new Member State which fall under Art. 8 (4) or Art. 53 (2) CTM.42 See also Art. 165 CTMR.

Article 111 Prior rights applicable to particular localities 1. The Proprietor of an earlier right which only applies to a particular locality may oppose the use of the Community trade mark in the territory where his right is protected in so far as the law of the Member State concerned so permits. 2. Paragraph 1 shall cease to apply if the proprietor of the earlier right has acquiesced in the use of the Community trade mark in the territory where his right is protected for a period of five successive years, being aware of such use, unless the Community trade mark was applied for in bad faith. 3. The proprietor of the Community trade mark shall not be entitled to oppose use of the right referred to in paragraph 1 even though that right may no longer be invoked against the Community trade mark. Rc. 6 Bibliography: Edenborough/Elias/v. Bomhard, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 111 CTMR; Eisenfu¨hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 111 CTMR.

Content I. General remarks on Artt. 110, 111 CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Relationship between Artt. 110 and 111 CTMR . . . . . . . . . . . . . . . . . . . . . . . . III. ‘Earlier right’ in Art. 111 CTMR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Particular locality . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Acquiescence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Coexistence of earlier right and CTM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 3 3 4 7 8

I. General remarks on Artt. 110, 111 CTMR 1

See comments Art. 110 CTMR, mn. 1–6.

42

OHIM, Guidelines for examination, Part A general rules, section 9 Enlargement, 1 August 2014, p. 7.

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II. Relationship between Artt. 110 and 111 CTMR See comments Art. 110 CTMR, mn. 7–9.

2

III. ‘Earlier right’ in Art. 111 CTMR 1. General Art. 111 CTMR does not contain any limitation on the nature of the earlier right, 3 requiring only that it is recognised under national law and applies to a particular locality.

2. Particular locality The CJ has not yet interpreted the meaning of ‘particular locality’. However it is clear 4 that this is a smaller area than the territory of a Member State, and that of the territory where a right of ‘more than local significance’ of Art. 110 CTMR applies (see comments Art. 110 CTMR, §§ 20 and 21). Thus, Art. 111 CTMR may regard purely local use of a trade mark or other sign which is itself protectable as an earlier right under national law. As an example, locally used trade names (such as that of a restaurant or bar) may qualify as a sign which is only protected with respect to a particular locality. Whether a sign is protected in a particular locality should be determined on the basis 5 of the circumstances of each particular case. Possibly a province or even a town may qualify as ‘a particular locality’ under Art. 111 CTMR.1 In some Member States, such as the United Kingdom, a trade mark may be registered with a geographical limitation which implies that it will only have effect in a part of a Member State. Although ‘particular locality’ is an autonomous criterion of Community law, its scope also depends on national law as the right to obtain a prohibition only exists in so far as permitted by national law.2 The prohibition will be limited to the territory where the earlier right is protected at 6 the date of application of the later CTM. The territory of protection of the earlier right cannot be expanded after registration of the CTM, in that it would be junior to the CTM outside the particular locality in which it was originally protected.3

IV. Acquiescence The rights of the proprietor of an earlier right applying to a particular locality, to 7 invoke claims for infringement shall cease to apply if the proprietor has, while being aware of such use, acquiesced for a period of five successive years in the use of the later CTM in the territory where his right is protected, unless registration of the later CTM was made in bad faith. 1 As may be deduced from GC Joined Cases T-318/06 to T-321/06 Alberto Jorge Moreira da Fonseca, ´ ptica[2009] ECR II-00663, mn. 41 where it was determined that a sign may Lda v OHIM- General O qualify as a right of more than mere local significance where its impact is not confined to a small part of that territory, as is generally the case with a town or a province. 2 Eisenfu ¨ hr, in Eisenfu¨hr/Schennen (ed.), Gemeinschaftsmarkenverordnung, Art. 111 CTMR, mn. 4. 3 Edenborough/Elias/v. Bomhard, in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 111 CTMR, para. 3

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V. Coexistence of earlier right and CTM 8

Art. 111 (3) provides for coexistence between the earlier right with a particular locality and the later CTM upon acquiescence. Even though the owner of the earlier right forfeits the right to invoke his earlier right against the use of a later CTM as a result of acquiescence, he may still use his own earlier right without the proprietor of the later CTM being able to challenge such use.

SECTION 3 Conversion into a national trade mark application Article 112 Request for the application of national procedure 1. The applicant for or proprietor of a Community trade mark may request the conversion of his Community trade mark application or Community trade mark into a national trade mark application: (a) to the extent that the Community trade mark application is refused, withdrawn, or deemed to be withdrawn; (b) to the extent that the Community trade mark ceases to have effect. 2. Conversion shall not take place: (a) where the rights of the proprietor of the Community trade mark have been revoked on the grounds of non-use, unless in the Member State for which conversion is requested the Community trade mark has been put to use which would be considered to be genuine use under the laws of that Member State; (b) for the purpose of protection in a Member State in which, in accordance with the decision of the Office or of the national court, grounds for refusal of registration or grounds for revocation or invalidity apply to the Community trade mark application or Community trade mark. 3. The national trade mark application resulting from the conversion of a Community trade mark application or a Community trade mark shall enjoy in respect of the Member State concerned the date of filing or the date of priority of that application or trade mark and, where appropriate, the seniority of a trade mark of that State claimed under Articles 34 or 35. 4. In cases where a Community trade mark application is deemed to be withdrawn, the Office shall send to the applicant a communication fixing a period of three months from the date of that communication in which a request for conversion may be filed. 5. Where the Community trade mark application is withdrawn or the Community trade mark ceases to have effect as a result of a surrender being recorded or of failure to renew the registration, the request for conversion shall be filed within three months after the date on which the Community trade mark application has been withdrawn or on which the Community trade mark ceases to have effect. 6. Where the Community trade mark application is refused by decision of the Office or where the Community trade mark ceases to have effect as a result of a decision

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Request for the application of national procedure

Art. 112 CTMR

of the Office or of a Community trade mark court, the request for conversion shall be filed within three months after the date on which that decision acquired the authority of a final decision. 7. The effect referred to in Article 32 shall lapse if the request is not filed in due time. Rc. 3, 6 Bibliography: Verena v. Bomhard, ‘The European Community Trade Mark: effects of seniority and conversion in former colonies and protectorates’, TMR 1997 (Vol. 87), 137–150; Jose´ Monteiro, ‘Transformation de la marque communautaire ou demande de marque communautaire, en demende de marque nationale’, Revue des affaires europeennes 1998 (Vol. 4), 309–330; Detlef Schennen, ‘Die Umwandlung der Gemeinschaftsmarke’, Mitt. 1998, 121–131; Sven Stu¨rmann/Gordon Humphreys, ‘Umwandlung von Marken im Gemeinschaftsmarkenrecht’, GRURInt 2007, 112–121.

Content I. Legal concept . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Situations where conversion is admitted. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. With respect to CTM applications (Art. 112 (1)(a) CTMR). . . . . . . . 2. With respect to registered CTM or IR designating the EU (Art. 112 (1)(b), 159 CTMR) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Partial conversion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Exclusion of conversion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Revocation on the grounds of non-use . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Revocation ruling . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Surrender of registered CTM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Genuine use shown for individual Member State. . . . . . . . . . . . . . . . . 2. Adverse effect for certain Member States. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Possible situations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Withdrawal or surrender of CTM. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . aa) Withdrawal of CTM application. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . bb) Surrender of registered CTM. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Declaratory effect for certain Member States. . . . . . . . . . . . . . . . . . . . . . aa) Determination of extent of refusal decision. . . . . . . . . . . . . . . . . . . bb) Finding of multiple grounds as obstacles for conversion . . . V. Timelines for the conversion request. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Commencement of the term for conversion with respect to CTM applications. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Commencement of the term for conversion with respect to registered CTM or IR designating the EU. . . . . . . . . . . . . . . . . . . . . . . . . . . . . VI. Effects of conversion. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 12 13 15 17 20 21 23 24 27 31 32 33 34 38 40 42 44 46 47 48 52

I. Legal concept The legal concept of conversion is connected with the unitary effect of the CTM (Art 1 1 (2) CTMR).1 If there were no conversion, an ‘all or nothing’ situation could arise – if the CTM owner or applicant loses the CTM, he would go away empty-handed unless he had taken care for appropriate trade mark protection on a national level.2 The conversion enables the CTM applicant or holder to seek national trade mark protection 1 For further details regarding the unitary effect cf. above, Hasselblatt, Art. 1 mn. 99 et seq.; s. also OHIM Dec. of 12/9/2000 – R 415/1999-1 – SHIELD/GOLDSHIELD, mn. 18; Stu¨rmann/Humphreys, GRURInt 2007, 112, 112 et seq.; Schennen, Mitt. 1998, 121, 125. 2 Only if the loss of the CTM happens within the 6 months priority term under Art. 4 C (1) of the Paris Convention, the CTM applicant would be in a position to claim priority for national filings.

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2

3

4

5

6

Community Trade Mark Regulation

in case of a ‘collapse’ of the CTM by preserving the spatiotemporal benefits of the CTM application or registration, thus providing a sort of ‘safety net’3. Although the legal concept seems clear and straightforward, in practice there are several pitfalls which require the CTM applicant or proprietor to observe utmost care when adopting a strategy to convert his mark from the unitary regime on an EU level into the national regime. The number of conversion requests with approx. 200 requests per year is not particularly high.4 Despite this low figure, the practical relevance is of great importance in choosing the appropriate filing strategy across the EU. If there were not such ‘safety net’ by means of conversion, the CTM would lose attraction. Conversion arguably may have a negative impact as it may duplicate contentious proceedings and delays the process in obtaining legal clarity. In particular, if a third party fights a CTM and the applicant or holder in sufficient time ‘pulls the ripcord’ and converts the mark into national applications, the third party additionally will have to go after the applicant or holder in each territory. However, this will not bring intolerable inequalities. By purpose, the CTM system allows for the coexistence of the unitary CTM and national marks as a complementary system.5 Conversion – in combination with the seniority claim (Artt. 34 et seq. CTMR) – provides for a desired linkage between the two systems.6 OHIM calls conversion ‘IP Bridge’ to signal that the crossover is a desired element of trade mark protection across the EU. The definition of the term ‘conversion’ derives from Art. 112 (3) CTMR and can be summarized as the right to transform the CTM application or registration into one or more national applications7 within the EU by safeguarding the filing, priority or seniority date of the CTM. A similar legal concept of conversion is known from the Madrid Protocol under the name ‘transformation’ where the registrant may convert his International Registration into national applications. The respective provision of the Madrid Protocol reads as follows: ‘Article 9quinquies Transformation of an International Registration into National or Regional Applications Where, in the event that the international registration is cancelled at the request of the Office of origin under Article 6 (4), in respect of all or some of the goods and services listed in the said registration, the person who was the holder of the international registration files an application for the registration of the same mark with the Office of any of the Contracting Parties in the territory of which the international registration had effect, that application shall be treated as if it had been filed on the date of the international registration according to Article 3 (4) or on the date of recordal of the territorial extension according to Article 3ter (2) and, if the international registration enjoyed priority, shall enjoy the same priority, provided that (i) such application is filed within three months from the date on which the international registration was cancelled, (ii) the goods and services listed in the application are in fact covered by the list of goods and services contained in the international registration in respect of the Contracting Party concerned, and 3

OHIM Dec. of 15/7/2008 – R 1313/2006-G – CARDIMA/cardiva, mn. 42. Number provided by Schennen, in: Eisenfu¨hr/Schennen, Commentary Art. 112, mn. 1. 5 Cf. OHIM Dec. of 15/7/2008 – R 1313/2006-G – CARDIMA/cardiva, mn. 34. 6 Cf. OHIM Dec. of 15/7/2008 – R 1313/2006-G – CARDIMA/cardiva, mn. 34; OHIM Dec. of 12/9/2000 – R 415/1999-1 – SHIELD/GOLDSHIELD, mn. 17; Examination Guidelines, part E sect. 2 para. 1, p. 3. 7 The term ‘national application’ used in this section includes Benelux applications with the regional competence for the territories of Belgium, Luxembourg and The Netherlands. 4

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Request for the application of national procedure

Art. 112 CTMR

(iii) such application complies with all the requirements of the applicable law, including the requirements concerning fees.’ The procedural difference between the conversion under the CTMR and the transformation under the Madrid Protocol is that in the first case the request will be handled centrally by OHIM whereas in the later case the request has to be filed with each involved trade mark office so that the central agency WIPO is no longer involved. Transformation under the Madrid Protocol is connected with the ‘central attack’ on the base mark which brings the IR into abundance (Art. 6 (3) and (4) Protocol). Thus, it would allow an EU designation under an IR to be transformed into a CTM application (Art. 161 CTMR, R. 124 CTMIR). However, transformation does not provide for the possibility to split the EU designation of an IR into national applications in the EU member states or national designations of an IR in case of a ‘central attack’ as transformation only grants a ‘one-to-one transformation’. One further important difference is that the concept of transformation under an IR does not know the preservation of a seniority claim as under the provisions of the CTMR. The EU designation under an IR only can be implemented into a national stage by the legal institute of conversion pursuant to Artt. 112 (1), 159 (1) CTMR which is also called ‘opting back’.8 This means that conversion provides the opportunity to convert the designation of the EU into either a national application filed directly in the Member State (Art. 159 (1)(a) CTMR) or a subsequent designation of a Member State under the IR (Art. 159 (1)(b) CTMR) or into a combination of both. Conversion can be a helpful tool in connection with the trade mark portfolio strategy for CTM applicants and registrants in various situations: – In the first stage, it can be tried to obtain an EU-wide registration. If this fails, as a fall-back strategy Member States can be covered where there is no ground for refusal. – When the mark becomes subject to the use requirement, but the CTM registrant is not able to show genuine use on an EU-level, conversion can safeguard upholding protection in countries where there is sufficient use. – If trade mark portfolios are split (e. g. in connection with corporate transactions or sale of certain business units in certain countries), conversion could be appropriate to streamline protection for one mark in different countries for different owners as no longer a CTM would be appropriate in the light of different ownership. The prerequisites for conversion can be found in Art. 112 CTMR, whereas the procedural provisions establish a two-tier system characterized by a split into the initial conversion application procedure before OHIM (Art. 113 CTMR) followed by the takeover of the designated office(s) (Art. 114 CTMR).

7

8

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10

11

II. Situations where conversion is admitted Conversion implies that the CTM is no longer effective in the sense of Art. 112 (1) 12 CTMR. This may include actions by the CTM applicant or holder and actions issued by OHIM. However, not all situations where the CTM is no longer effective allow for an applicant or registrant to pass his trade mark rights over to conversion. There are several exceptions to conversion, some of them relating to the lapse of a CTM with an ex nunc effect and some with an ex tunc effect. Conversion is allowed in the following situations: 8

For details s. below, Bo¨sling, Art. 159, mn. 4.

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CTMR Art. 112

Community Trade Mark Regulation

1. With respect to CTM applications (Art. 112 (1)(a) CTMR) 13 – Application deemed to be withdrawn

The effect will occur when the class fees have not been (fully) paid (Art. 36 (5) CTMR, R. 9 (5) CTMIR).9 – Withdrawal The option constitutes a voluntary act of the applicant in accordance with Art. 43 (1) CTMR. – Refusal The potentiality refers to a refusal on absolute grounds (Artt. 7, 37 CTMR), or on relative grounds (Artt. 8, 41 et seq. CTMR). A refusal on formal grounds according to Art. 36 (4) CTMR, e. g. if a deficiency request regarding the list of goods/services has not been remedied by the applicant, does also qualify for conversion (cf. R. 9 (4) CTMIR). 14 For all cases mentioned above, the CTM application must be apt to be accorded a filing date in the sense of Artt. 27, 36 (1)(a) CTMR, as otherwise the application cannot be regarded as a CTM application (Art. 36 (3)(1) CTMR).10 This requires the presentation of the necessary details of the CTM in accordance with Art. 26 (1) CTMR11 and the payment of the application fee within one month of the presentation of the aforementioned details. A postponement of the filing date may become possible in the situations referred to in Artt. 25 (3) and 36 (3)(2) CTMR as well as in Art. 26 (3) CTMR in conjunction with R. 9 (2) CTMIR. If the application is withdrawn before complying with Art. 26 (1) CTMR, conversion will not become possible.

2. With respect to registered CTM or IR designating the EU (Art. 112 (1)(b), 159 CTMR) 15 – Refusal of the EU designation of an IR

The effect takes place where OHIM refuses the EU designation on absolute or relative grounds (Artt. 154, 156 CMTR). – Mark ceases to have effect – Surrender Art. 50 CTMR – The owner voluntarily relinquishes the entire registration or EU designation or with respect to parts of the goods or services covered. – Non-renewal Art. 47 CMTR, Art. 7 (4) Protocol – This includes a situation where only parts of the goods or services are not covered by the renewal. – Declaration of invalidity Artt. 55 (2), 56 et seq., 100, 158 CTMR – both by OHIM or as a counterclaim before a national CTM court. Basically, the declaration has a retroactive effect. 9 Before the entry into force of Commission Regulation (EC) No. 355/2009 of 31/3/2009, also nonpayment of the registration fee qualified for conversion (Art. 45 (2) CTMR). R. 23 (1) CTMIR no longer requires payment of a registration fee. In cases of filing the application with a national office, the previous version of Art. 25 (3) CTMR provided for the effect that the application was regarded as having not been filed if the national office did not forward the application within the two months period to OHIM. Now, Art. 25 (3) CTMR provides for a postponement of the application date. 10 Cf. R. 9 CTMIR. Art. 36 (3) CTMR and R. 9 (2) CTMIR state: ‘the application shall not be dealt with as a Community trade mark application’; s. also OHIM, Examination Guidelines, part E sect. 2 para. 2.1, p. 4, and para. 3, p. 5. 11 This includes the direct filing at OHIM and the filing through a national trade mark office, Art. 25 (1) CTMR. In the latter case, a postponement of the filing date may become possible if this office does not comply with the two months term to forward the application to OHIM (Art. 25 (3) CTMR).

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Request for the application of national procedure

Art. 112 CTMR

– Revocation Artt. 55 (1), 56 et seq., 100, 158 CTMR – both by OHIM or as a counterclaim before a national CTM court. Basically, the effect comes into force with the request for revocation, but a prior effective date can be fixed. A limitation of the list of goods and services of a CTM application does not qualify 16 for conversion because Art 112 (1)(a) CTMR specifically refers to the withdrawal and not to the ‘restriction’ of the list of goods and services in the sense of Art. 43 (1) CTMR. A limitation of the specification of goods and services as a voluntary act of the CTM holder only is an option for conversion with respect to CTM registrations or EU designations of IRs.

III. Partial conversion The wording ‘to the extent’ regarding both scenarios mentioned in Art. 112 (1) 17 CTMR makes it clear that conversion is possible regarding a part of the goods and services of the CTM, e. g. where the mark has been regarded as non-distinctive in relation to certain goods or services only. The remaining part of the CTM continues to be in force whilst the other part that is no longer protected can be converted into national applications (cf. R. 44 (1)(e) CTMIR). When identifying the goods or services of a partial conversion, the applicant has to 18 make sure that (i.) the goods or services had been covered by the original specification and that (ii.) it does not overlap with the remaining list. Hence, the applicant has to be careful in drafting the list, in particular when broad claims are split into a more individual description. The general rules for drafting limitations of the list of goods and services apply.12 In cases of a partial rejection of CTM applications or partial statements of revocation 19 or invalidity, only the refused goods and services can be covered by the conversion request but not the goods and services which ‘stay alive’.13

IV. Exclusion of conversion Art. 112 (2) CTMR provides for two momentous exceptions where conversion 20 cannot be requested by the CTM applicant or holder, i. e. in cases of revocation actions on the grounds of non-use and where there is an obstacle for EU-wide protection vis-a`vis certain Member States. The background is to avoid that applicants may hope for a more favourable decision on national level although regarding EU-wide proceedings there had already been a final rejection for that particular Member State.14 Thus the provision tries to prevent a duplication of proceedings.

1. Revocation on the grounds of non-use Pursuant to Art. 112 (2)(a) CTMR, non-use prevents conversion in situations, where 21 revocation is requested by third parties (Artt. 51 (1)(a), (2), 55 et seq. CTMR). Already the failure of a CTM registrant to furnish sufficient evidence of use in opposition or 12

OHIM, Examination Guidelines, part E sect. 2 para. 6.2.7, p. 15. Cf. Schennen, Mitt. 1998, 121, 123. 14 Cf. Schennen, Mitt. 1998, 121, 123. 13

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CTMR Art. 112

Community Trade Mark Regulation

invalidity proceedings if called upon him to do so (Artt. 42 (2), 57 (2) CTMR) will not prevent him to convert his mark after he surrenders it in the face of his non-ability to show sufficient use. The exception only comes into play where a formal request for conversion is pursued and not already upon a plea of non-use in contentious proceedings. 22 However, this rule of exclusion itself has one exception which underpins the ongoing importance of trade mark protection on a national level (cf. Rc. 6 CTMR). Where the CTM is revoked but the holder can show appropriate use in one or more Member State according to the laws of such jurisdiction, conversion remains possible for such Member State(s). 23

a) Revocation ruling. Conversion is excluded where a revocation decision is made if so applied for on the grounds of non-use, Art. 57 (5) CTMR.

b) Surrender of registered CTM. If the CTM proprietor surrenders the CTM during the course of such revocation proceedings, in the absence of a revocation decision, he basically would be entitled to pursue conversion for all Member States desired. However, the cancellation applicant has the legal means to prevent this outcome which might be to his disadvantage by continuing the cancellation proceedings. A surrender of the CTM by its proprietor filed before issuance of an official decision on the merits of the revocation action may bring the revocation applicant a legitimate interest in the revocation proceedings to obtain a final decision.15 In case the revocation action is of substance, the continuation of the proceedings may result in a declaration of non-use preventing conversion pursuant to Art. 112 (2)(a) CTMR. The decision would read that the CTM be declared invoked as of the date of filing the revocation action. The reason is that surrender is only effective ex nunc whereas the declaration of revocation stretches back to the application date for revocation with ex tunc effect.16 The legitimate interest of the revocation application is to claim that the contested CTM had no effect in the intermediate period interval. 25 In general, to found the ongoing legal interest in continuing proceedings requires that there is a concrete and vested interest and not only a ‘future and uncertain situation’ to rely on. In this respect, it has been argued by OHIM that the general possibility to request conversion or to file a consecutive national application does not found a legitimate interest per se.17 From the GC decision Stromberg Menswear Ltd. v OHIM and the BoA decision SHAKEY’S it is not clear whether it is already sufficient for the revocation applicant to refer to Art. 55 (1) CTMR in order to show that his legal interest lies in the declaration of revocation with ex tunc effect so that, as a consequence, also conversion might be prevented, or whether further facts have to be forwarded.18 Therefore, it is highly recommendable for the party requesting the continuance of proceedings to refer to specific reasons to found the legitimate interest, e. g. that a conversion request had already been filed, that the CTM registrant in parallel proceedings refers to an apparently lapsed mark or that otherwise legal proceedings are pending between the subject parties. 26 As long as the revocation action has not been finalized, either by a declaratory decision requested by the revocation applicant or without a ruling as the action is declared devoid of purpose, OHIM will put the conversion request on hold.19 24

15 GC Case T-451/12 – Stromberg Menswear Ltd. v OHIM – Leketoy Stormberg (STORMBERG/ STROMBERG), not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 48, 52. 16 GC Case T-451/12 – Stromberg Menswear Ltd. v OHIM – Leketoy Stormberg (STORMBERG/ STROMBERG), mn. 52; BoA Dec. of 7/8/2013 – R 2264/2012-2 – SHAKEY’S, mn. 33. 17 OHIM C 000670042/1 – AROMATONIC, mn. 16–18. 18 GC Case T-451/12 – Stromberg Menswear Ltd. v OHIM – Leketoy Stormberg (STORMBERG/ STROMBERG), mn. 52; BoA Dec. of 7/8/2013 – R 2264/2012-2 – SHAKEY’S, mn. 35. 19 OHIM, Examination Guidelines, part E sect. 2 para. 4.3, p. 7.

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Request for the application of national procedure

Art. 112 CTMR

c) Genuine use shown for individual Member State. The CTM proprietor is not barred from his disposition to request conversion for individual Member States if he has shown genuine use for such Member State(s) according to the national law. This situation may in particular arise where the fragmented use in one Member State or a few Member States does not qualify for genuine use in the EU as an entity according to Art. 15 (1) CTMR but can be regarded as qualifying for genuine use on Member State level.20 A further scenario can arise in the light of the German-Swiss Convention of 1892 which states that the legal disadvantages which, under the laws of the contracting parties, occur when a trade mark has not been used within a certain period of time are precluded if the use takes place in the territory of the other party. However, the Court of Justice held that the use requirement is exhaustively and exclusively governed by EU law so that this Convention is not applicable.21 Therefore, according to this ruling, use of a mark in Switzerland may not be beneficial for the CTM owner on an EU level but may become beneficial under German national law due to the direct effect of the Convention. As regards the requirements for the qualitative and quantitative extent of genuine use in general, there should not be a significant difference between what is regarded as genuine use under Art. 15 CTMR and according to national law as this aspect has been harmonized (Art. 10 TMDir).22 Sufficient evidence of use has to be furnished during the pending revocation proceedings. Subsequent filing of evidence after the entry info force of a revocation decision will not help the CTM proprietor. This evidence will not be taken into account by OHIM as subsequent allegations will not be permitted.23

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2. Adverse effect for certain Member States Art. 112 (2)(b) CTMR excludes the CTM applicant or registrant from conversion 31 where he faces an obstacle for this CTM merely on Member State level, both as regards absolute and relative grounds. This obstacle counteracts his right to pursue an EU-wide unitary right but leaves him with the opportunity to seek conversion at least for those Member States where no adverse situation prevails. a) Possible situations. The applicability of Art. 112 (2)(b) CTMR requires that either 32 OHIM or a CTM court has rendered a decision stating grounds for refusal of registration or grounds for revocation or invalidity vis-a`-vis a particular Member State. b) Withdrawal or surrender of CTM. The CTM applicant or holder may wish to 33 take recourse to conversion and try to secure his trade mark on a national level in case he faces obstacles on a CTM level. An expedited form of taking recourse to conversion could be to withdraw the CTM application or to surrender the registered CTM and to start the conversion process immediately. However, not all types of withdrawal or surrender qualify for a conversion or limit the extent for such conversion so that each situation has to be examined in detail. 20 Cf. CJ Case C-149/11 – Leno Merken v Hagelkruis (OMEL/ONEL), available at www.curia.eu Õ search Case law, mn. 51; for further details concerning the territorial extent of genuine use within in the EU cf. above, Nordemann, Art. 15, mn. 16 et seq. 21 CJ Case C-445/12P – Rivella International AG v OHIM – Baskaya di Baskaya Alim e C. Sas (BASKAYA), not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 52. 22 For a discussion on this issue cf. also Schennen, Mitt. 1998, 121, 124; Ubertazzi, ‘Bemerkungen zum Benutzungszwang der Gemeinschaftsmarke’, GRURInt 1995, 474 et seq. 23 OHIM, Examination Guidelines, part E sect. 2 para. 4.1, p. 6.

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CTMR Art. 112

Community Trade Mark Regulation

aa) Withdrawal of CTM application. The withdrawal of a pending CTM application has different effects depending on the stage of the examination proceedings for absolute grounds or of the opposition proceedings for relative grounds: – The applicant can withdraw the application without an adverse effect on the conversion request before an official decision on the merits of the case is taken. This is also true when OHIM already has communicated a notice of deficiencies regarding absolute grounds by giving the applicant leave to respond thereto.24 35 – However, if OHIM has taken a decision on the merits of the case by relying on an obstacle for protection in one or more Member States, this changes the situation. The applicant may avoid the adverse effect of such OHIM decision vis-a`-vis one or more Member States if he appeals the decision and withdraws the application within the term to substantiate the appeal.25 This means that the applicant has to fulfil all requirements for a valid appeal. After this exercise, OHIM will transmit the conversion request to all Member States including those for which the refusal was promulgated. 36 – If the BoA has confirmed OHIM’s decision, the negative effect consequently can only be removed by filing an action before the GC and vice versa regarding a GC decision by filing an action before the CJ. It has to be kept in mind that both types of action have to be fully substantiated within the period to lodge the action. In these situations, an opponent has no right to request a decision on the substance of his opposition with the argument, such decision could prevent conversion of the application also in those territories where a prior right of the opponent exists. The opponent would have no locus standi for such declaration as the possibility to apply for conversion only would concern ‘a future and uncertain legal situation’ so that there is no qualified and present legal interest for a respective statement.26 37 – If the CTM applicant withdraws the application or cancels the registration in such a situation without formally appealing the negative decision, current OHIM’s practice does not accept conversion for Member States for which the Office has stated a ground for refusal on either absolute or relative grounds.27 This forces the applicant to appeal the decision (and pay the appeal fee) before withdrawing the application. It is questionable whether this practice has its merits. It should be taken into account that the withdrawal is requested at a time where the office decision is not yet res iudicata. OHIM’s counterargument is that only an appeal has a suspensory effect (Art. 58 (1)(2) CTMR). However, this appears to be irrelevant because the suspensive effect only comes into effect at the end of the appeal period. It deprives the contested decision of the legal effect until the finalization of the appeal proceedings but before 34

24 Stu ¨ rmann/Humphries recommend filing a withdrawal of the application already before receiving the official notification on deficiencies. It is argued that only this is proving a ‘safe haven’ because OHIM cannot argue that not the withdrawal is the basis for the conversion but rather the objection. However, since in this situation there is no office decision yet and since the applicant cannot know whether an objection will be put forward anyway, there is no justification for this strict view which is clearly underpinned by the wording of Art. 37 (3) CTMR (GRURInt 2007, 112, 118). 25 In case of an opposition it should not suffice that the opponent appeals the decision as the opponent has no locus standi in respect of the part of the decision that rejects the application for certain countries (Art. 59 (1) CTMR); cf. also GC Case T-236/12 – Airbus v OHIM (NEO), not yet published in the ECR, available at www.curia.eu Õ search Case law, mn. 23 et seq. 26 Confirmed for situations where the opponent requests that OHIM also examines prior rights in further Member States although the application mark has already been refused with respect to other Member States: GC Case T-194/05 TeleTech Holdings v OHIM – Teletech International (TELETECH INTERNATIONAL) [2006] ECR II – 1367, mn. 29; Case T-342/02 Metro-Goldwyn-Mayer Lion v OHIM – Moser Grupo Media (MOSER GRUPO MEDIA) [2004] ECR II – 3194, mn. 43 et seq. 27 OHIM, Examination Guidelines, part E sect. 2 para. 4.3, p. 7; cf. Stu ¨ rmann/Humphreys, GRURInt 2007, 112, 118.

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Art. 112 CTMR

the expiry of the term to appeal the decision has no legal effect. Therefore, it is desirable that OHIM reconsiders its position. bb) Surrender of registered CTM. Art. 112 (2)(b) CTMR also allows conversion 38 where the CTM holder surrenders his registered CTM. The situation differs from the withdrawal of a CMT application with respect to the following: – If a third party has filed a revocation request according to Artt. 51 (1)(b) or (c), (2), 55 et seq. CTMR or an invalidity request in accordance with Art. 52 et seq., 55 et seq. CMTR, the ex tunc effect stipulated in Art. 55 (1) and (2) CTMR comes into play. – If the CTM registrant surrenders his CTM within such revocation or nullity proceedings or after appealing a negative decision, the revocation or nullity proceedings will not per se become devoid of purpose.28 The applicant of the revocation or nullity proceedings may retain a legal interest in bringing proceedings because the ex tunc effect implies that the CTM had no effects ‘from the outset, with all the consequences that such invalidity [or revocation] implies’29. The legitimate interest rests in the interest of obtaining a finding that the CTM had no effect in the meantime.30 As already discussed above with respect to the revocation action on the grounds of nonuse31, it is not clear from the decisions whether already the reference to Art. 55 (1) and (2) CMTR and the ex tunc effect of such finding qualifies for the sufficient legal interest or whether specific reasons have to be shown. Therefore, it is recommendable to refer to such specific circumstances, e. g. other legal proceedings regarding the subject marks between the parties etc. If the finding upon such retained legal interest forced by the invalidity or revocation applicant confirms an obstacle vis-a`-vis certain Member States, conversion will not become possible for these jurisdictions. From a procedural point, upon filing a surrender in such a situation OHIM puts the 39 conversion request filed after the surrender on hold until it is finally confirmed that the revocation or invalidity proceedings or respective appeal proceedings are without substance and devoid of purpose due to the surrender.32 c) Declaratory effect for certain Member States. Conversion is only excluded where 40 grounds for rejection or cancellation of the CTM specifically exist ‘for the purpose of protection in a Member State’. Since the unitary character of the CTM (Art. 1 (2) CTMR) already prevents protection in the EU where there is an obstacle in just one Member State, it is crucial to know where such ground precluding protection finally exists and where not. In many cases, absolute or relative grounds preventing the protection of a CTM do 41 not only exist in one Member State, in particular where a meaning of a mark in a particular linguistic area makes the mark descriptive, non-distinctive or deceptive or where prior third party rights have been established in more than one Member State or even on EU level. Conversion, however, is only excluded when a decision confirms such obstacle vis-a`-vis one or more Member States. aa) Determination of extent of refusal decision. The first issue arises whether a 42 decision determines the exact scale for the refusal verdict. Only where there is a finding that a ground for refusal is relevant for a specific Member State, conversion is excluded. 28 CJ Case C-552/09 P Ferrero v OHIM – Tirol Milch (TiMI KINDERJOGHURT) [2011] ECR I – 2063, mn. 42. 29 CJ Case C-552/09 P Ferrero v OHIM – Tirol Milch (TiMI KINDERJOGHURT) [2011] ECR I – 2063, mn. 43 [bracket remark added by the author by analogy]. 30 OHIM Dec. of 22/10/2010 – R 463/2009-4 – Magenta, mn. 27. 31 S. above, mn. 21. 32 OHIM, Examination Guidelines, part E sect. 2 para. 4.3, p. 7.

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CTMR Art. 112

Community Trade Mark Regulation

Where there is no decisive decision on the grounds for rejection, the CTM applicant or registrant is free to request conversion for those Member States where no specific ruling has been taken and can proceed further and may succeed on a national level.33 43 However, there are many cases where the respective decision lacks the required level of certainty as regards the decisive effect for certain Member States. E. g. regarding rejections on absolute grounds, it is common that OHIM refers to a meaning of a mark in a certain language, very often the English language, and goes on to say that the meaning makes the mark devoid of distinctive character or renders it non-descriptive. The Office very often fails to comment on the relevance of the English term for Member States which official languages are not English. Although the reference to the meaning of the mark in English conveys a ground for rejection in countries where English is an official language (i. e. United Kingdom, Ireland, Malta), there remains uncertainty whether the rejection also extends to other countries, for example Scandinavian countries, where the command of the English language generally is high. However, R. 45 (4)(1) CTMIR makes it clear that the rejecting effect should be restricted to those countries where the relevant language on which account the rejection was found by OHIM is one of the official languages. In this sense, it is necessary that the rejection decision clearly makes ‘reference to the language’ of such Member State as stated in R. 45 (4)(1) CTMIR.34 As a desideratum it would be helpful and add to legal certainty if OHIM orders in its decision: ‘Having regard to obstacles for protection in [identify Member State(s)], the application is hereby rejected.’35 44

bb) Finding of multiple grounds as obstacles for conversion. The second issue is whether OHIM or the Courts are required to found the rejection of the mark on all absolute grounds perceivable or on all earlier rights put forward by third parties in contentious proceedings. If this was the case, the territorial scope for conversion could be significantly diminished. However, the CJ has confirmed the findings of the GC and BoA that there is no obligation to examine all possible obstacles in the light of the fact that the unitary character of the CTM already prevents its protection if there is an adverse effect in only one Member State.36 The reasoning is that the basic function of proceedings at EU level are deemed to provide the opportunity to easily prevent protection of a CTM, if appropriate, by abiding to the principle of procedural economy but ‘not to resolve in advance possible conflicts at national level’.37 In conformity with this finding, a third party relying on prior rights has no legal standing to request that there are grounds for refusal in additional Member States if the decision has been taken to refuse the mark on the basis of adverse grounds for certain other Member States only.38 In general the possibility to apply for conversion only ‘concerns a future and uncertain legal situation’ 33 CJ Case C-514/06 P Armacell Enterprise v OHIM – nmc (ARMAFOAM) [2008] ECR I – 128, mn. 62; GC Case T-342/02 Metro-Goldwyn-Mayer Lion v OHIM – Moser Grupo Media (MOSER GRUPO MEDIA) [2004] ECR II – 3194, mn. 40. 34 However, once the respective national offices deal with the converted mark in accordance with Art. 114 CMTR, they would be free to regard the meaning of a mark in English language as an absolute ground excluding protection in this Member State. The basis would be that the command of the English language is sufficiently high in this country so that the relevant consumers clearly understand this meaning. 35 In the same sense Stu ¨ rmann/Humphreys, GRURInt 2007, 112, 119. 36 CJ Case C-514/06 P Armacell Enterprise v OHIM – nmc (ARMAFOAM) [2008] ECR I – 128, mn. 57–61. 37 CJ Case C-514/06 P Armacell Enterprise v OHIM – nmc (ARMAFOAM) [2008] ECR I – 128, mn. 61; with the same reasoning GC Case T-194/05 TeleTech Holdings v OHIM – Teletech International (TELETECH INTERNATIONAL) [2006] ECR II – 1367, mn. 27; Case T-342/02 Metro-Goldwyn-Mayer Lion v OHIM – Moser Grupo Media (MOSER GRUPO MEDIA) [2004] ECR II – 3194, mn. 35. 38 On the opposite side, also the party considering conversion of its mark has no standing to seek a declaration that conversion is not barred for certain Member States, cf. GC Case T-185/03 Fusco v OHIM – Fusco International (ENZO FUSCO) [2005] ECR II – 715, mn. 69 et seq.

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Art. 112 CTMR

and conveys no vested and present legal interest for a respective statement.39 As regards refusals on absolute grounds, the GC concludes that the content of the rule provided for by Art. 7 (2) CTMR would be distorted if a detailed analysis for various Member States became necessary even though a ground for refusal only exists in one Member State.40 This finding has been highly questioned. The counterarguments refer to the multi- 45 plication of proceedings and the accumulation of additional costs if the owner of prior rights is not able to have all of them acknowledged on an EU level but would have to initiate national proceedings. This could mean that the term to prove genuine use, if necessary, can be postponed.41 Despite the fact that a statement on multiple grounds for rejection on an EU level could prevent extensive legal proceedings which may be deferred to Member State level, it is true that the CTMR does not provide specific provisions to justify such extended examination on EU level. Since there is the contrasting wish to expedite and accelerate proceedings on absolute or relative grounds, the principle of procedural economy might outweigh the wish for more clarity on the extent of the refusal or revocation/invalidity decision taken by OHIM. Thus, there would be the necessity to reconsider the CTMR provisions on a political level if such extended examination is to be established.

V. Timelines for the conversion request In all instances, the term for conversion is three months (Art. 112 (4) – (6) CTMR, 46 R. 44 (2) CTMIR). The calculation and expiry of time limits in general are dealt with in RR. 70, 72 CTMIR. If the timeline is not met, the effect of the CTM as being equivalent to a national mark in the sense of Art. 32 CMTR will lapse (Art. 112 (7) CTMR). The starting point for the three months term42 differs depending on the basis for conversion43.

1. Commencement of the term for conversion with respect to CTM applications – Application deemed to be withdrawn 47 Art. 112 (4) CTMR Receipt of an official notification where OHIM will fix the three months deadline – Withdrawal Art. 112 (5) CTMR Date of OHIM’s receipt of withdrawal by applicant in accordance with Art. 43 (1) CTMR – Refusal Art. 112 (6) CTMR Date when the decision becomes final, i. e. two months following service of OHIM decision (Art. 60 CTMR), in appeal cases two months following notification of BoA 39 GC Case T-194/05 TeleTech Holdings v OHIM – Teletech International (TELETECH INTERNATIONAL) [2006] ECR II – 1367, mn. 29; Case T-342/02 Metro-Goldwyn-Mayer Lion v OHIM – Moser Grupo Media (MOSER GRUPO MEDIA) [2004] ECR II – 3194, mn. 43 et seq. 40 GC Dec. of 3/7/2013 – Case T-236/12 – Airbus v OHIM (NEO), mn. 57 et seq. 41 For critical remarks s. Kouker, ‘Umwandlung einer Gemeinschaftsmarke nach Zuru ¨ ckweisung oder Lo¨schung wegen relativer Schutzhindernisse’, GRUR 2008, 119, 120 et seq. 42 Cf. OHIM, Examination Guidelines, part E sect. 2 para. 5.1, pp. 8 et seq. 43 For details concerning the basis for conversion s. above, mn. 12 et seq.

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CTMR Art. 112

Community Trade Mark Regulation

decision (Art. 65 (5) CTMR) and in cases of actions before the CJ two months after notification of GC decision (Art. 56 (1) Statute of CJ) or in appeal cases once the CJ decision is issued (Art. 37 Statute of CJ)

2. Commencement of the term for conversion with respect to registered CTM or IR designating the EU 48 – Refusal of the EU designation of an IR

Artt. 112 (6), 154 (3), 156 (3) CTMR Date when the decision on either absolute or relative grounds becomes final in the same way a refusal of a CTM application is being handled; the IR owner has the alternate option to request a limitation of the goods/services or to renounce protection for the EU in order to anticipate a refusal decision – Surrender Art. 112 (5) CTMR CTM: Date of entry in the Register (Art. 50 (2) CMTR) of the CTM holder’s surrender IR designating EU: Date of recordal by WIPO (this applies to a limitation of the goods/services with effect for the EU, the renunciation of the EU designation and the cancellation) (R. 27 (1) Common Regulations) – Non-renewal Art. 112 (5) CTMR, RR. 44 (2), 122 (2) CTMIR CTM: Expiry of grace period for late renewal (Art. 47 (3)(3) CTMR), i. e. six months following the last day of the month where protection ends IR designating EU: Expiry of grace period for late renewal (Art. 7 (4) Protocol), i. e. six months following the expiry date of IR – Declaration of invalidity or revocation Artt. 112 (6), 158 (2) CTMR By OHIM decision: Date when the decision becomes final44 By CTM court decision: national law of the Member State (which administers the rules of the procedure for the CTM court) determines when the first instance or the appeal instance(s) decision acquires the authority of a final decision 49 The situation where the CTM application is deemed to be withdrawn constitutes the only variant where the time limit commences with an official communication and where the applicant is been made aware of the conversion option. In all other cases it is the duty of the CTM applicant or registrant to take into account that conversion may be possible and to observe all prerequisites, in particular to timely file the request as the term starts automatically. 50 An enlargement of the EU does not found new time limits with respect to the relevant accession state.45 51 The three months term represents a preclusive time limit. If the conversion applicant misses the deadline despite forestalling all due care, restitutio in integrum according to Art. 81 CTMR is permissible. However, a request for continuation of proceedings in accordance with Art. 82 CTMR is not allowed (Art. 82 (2) CTMR).

44 45

For details s. refusal section for CTM applications, above, mn. 13. Cf. OHIM, Examination Guidelines, part A sect. 9 para. 2.5, p. 5.

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Submission, publication and transmission

Art. 113 CTMR

VI. Effects of conversion The national mark resulting from a conversion request constitutes a fully valid 52 national right. It will not suffer a disadvantage because a previous EU-wide mark has failed.46 The converted CTM is equivalent to a national filing with the same effect, Art. 32 CTMR. If the conversion applicant misses the timeline to file the recordal request, this effect of equivalence will lapse (Art. 112 (7) CTMR). The same is true if the conversion request is rejected. In case of a seniority claim under the CTM, missing the deadline for conversion means that also the national seniority mark be lost insofar the CTM and the national seniority mark are interlinked.47 The effect of conversion is to preserve and safeguard the filing date of the CTM (or the 53 effective date of an EU designation of an IR) as well as, if applicable, the priority and seniority date, Art. 112 (3) CTMR. The priority date which is valid for a certain Member State upon conversion may be the priority date from an application from within such Member State in accordance with Art. 29 CTMR. The safeguarding of the seniority date according to Artt. 34, 35 CTMR means that the national application resulting from the conversion will receive the filing or priority date of the mark on which the seniority is based as the effective date for such national mark upon conversion. It is not necessary for keeping the seniority date that the seniority effect already came into operation.48 The national mark, however, is not completely independent from the former CTM or 54 EU designation of an IR as it keeps its ‘roots’ from the previous EU-wide right and as the genesis of the national procedure is triggered by the conversion proceedings provided for in Art. 112 CTMR. CTMs ‘may give birth to national applications and registrations which will be considered autonomously by national offices but the link with the CTM or CTM application remains’49. E. g. where a CTM is the basis of an opposition before OHIM and is converted into national applications during the course of opposition proceedings, the resulting national application still has to be regarded as prior right in the sense of Art. 8 (2) CTMR and has to be taken into account in any opposition procedure.50 This is also reinforced by Art. 32 CTMR stating the equivalence of CTMs and national marks.

Article 113 Submission, publication and transmission of the request for conversion 1. A request for conversion shall be filed with the Office and shall specify the Member States in which application of the procedure for registration of a national trade mark is desired. The request shall not be deemed to be filed until the conversion fee has been paid. 46

For further details concerning the effect in Member States s. below, Art. 114, mn. 9 et seq. Cf. in detail Meister, ‘Seniorita¨t oder die sogenannte Beanspruchung des Zeitranges einer identischen nationalen Marke’, WRP 1997, 1022, 1024. 48 Cf. also Reinartz, ‘Die Seniorita ¨t im Gemeinschaftsmarkenrecht, ihre Folgen und ihre Entwicklung’, GRURInt 2012, 493, 498, 502 et seq.; Schennen, Mitt. 1998, 121, 125. 49 OHIM Dec. of 15/7/2008 – R 1313/2006-G – CARDIMA/cardiva, mn. 43. 50 OHIM Dec. of 15/7/2008 – R 1313/2006-G – CARDIMA/cardiva, mn. 32–46; it is the onus of the conversion applicant to timely notify the conversion request within opposition proceedings: OHIM Dec. of 29/05/2012 – Opp. No. B 1 766 263 – THIBET/TIBET; OHIM Dec. of 9/3/2012 – Opp. No. B 1 384 959 – MOBIS/MOBI. 47

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CTMR Art. 113

Community Trade Mark Regulation

2. If the Community trade mark application has been published, receipt of any such request shall be recorded in the Register of Community trade marks and the request for conversion shall be published. 3. The Office shall check whether the conversion requested fulfils the conditions set out in this Regulation, in particular Article 112 (1), (2), (4), (5) and (6), and paragraph 1 of this Article, together with the formal conditions laid down in the Implementing Regulation. If these conditions are fulfilled, the Office shall transmit the request for conversion to the industrial property offices of the Member States specified therein. Bibliography: Jose´ Monteiro, ‘Transformation de la marque communautaire ou demande de marque communautaire, en demande de marque nationale’, Revue des affaires europe´ennes 1998 (Vol. 4), 309– 330; Detlef Schennen, ‘Die Umwandlung der Gemeinschaftsmarke’, Mitt. 1998, 121–131; Sven Stu¨rmann/ Gordon Humphreys, ‘Umwandlung von Marken im Gemeinschaftsmarkenrecht’, GRURInt 2007, 112– 121.

Content I. OHIM as addressee of conversion request. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Mandatory formal requirements for conversion request . . . . . . . . . . . . . . III. Conversion proceedings at OHIM . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Parties to the proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Examination procedure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Object of examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Deficiencies and shortcomings and their handling . . . . . . . . . . . . . . aa) Deficiencies which can be remedied. . . . . . . . . . . . . . . . . . . . . . . . . . . bb) Other shortcomings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Appeal proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Publication. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . V. Transmission of conversion request to designated office(s). . . . . . . . . . .

1 3 11 12 14 14 15 16 19 21 22 25

I. OHIM as addressee of conversion request In all instances, an application for conversion has to be filed with OHIM (Art. 113 (1) CTMR). This includes conversion requests on the basis of EU designations of IRs where OHIM forwards the request to WIPO after examination of the request (R. 123 (4) CTMIR). The Administration of Trade Marks and Legal Division is the competent body within OHIM (Art. 133 (1) CTMR). 2 Conversion is a two-tier system, initiated by the conversion request filed with OHIM (Art. 113 (1) CTMR) and followed by a takeover of national proceedings by the designated office(s) after transmission of the conversion application by OHIM (Artt. 113 (3), 114 CTMR). 1

II. Mandatory formal requirements for conversion request 3

The applicant of the conversion request has to fulfil certain requirements to make his conversion request admissible. He has to meet the three months time limit for filing the request (Art. 112 (4) – (6) CTMR, R. 44 (2) CTMIR)1 and has to observe the following formal conditions2: 1 2

For details concerning the time period cf. above, Art. 112, mn. 46 et seq. For a summary cf. OHIM, Examination Guidelines, Part E sect. 2 para. 5.2, pp. 9 et seq.

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Art. 113 CTMR

– Submission of request to OHIM The request has to be filed in writing with OHIM (Art. 113 (1) CTMR). It can be presented formless or by using the forms ‘Application for Conversion’ and ‘Application for Conversion of an International Registration (‘IR’) designating the EC’ available on OHIM’s website. In the case of the EU designation of an IR, for ‘opting back’ to the national regime the form MM16 provided for by WIPO on its website can also be used. The request has to state the No. of the CTM or IR and the details of the conversion applicant (RR. 44 (1)(a) and (b), 122 (1)(c) CTMIR).3 In case of IRs, additionally their registration date or their date of subsequent designation of the EU has to be stated and, where appropriate, their priority and/or seniority dates (RR. 122 (1)(b), 123 (1) CTMIR). Regarding representation of the conversion applicant, the general rules for representation apply (Art. 92 CTMR). The conversion applicant may use other representatives than those who were involved in the prosecution of the CTM or IR. – Indication of grounds for conversion The applicant has to state the grounds on which conversion in accordance with Art. 112 (1) CTMR is based (RR. 44 (1)(c), 122 (1)(c) CTMIR). Where the conversion is based on a non-renewal of an IR, the end date for protection has to be stated (R. 122 (2) CTMIR). Where the conversion is based on a final declaration of invalidity or revocation of a CTM court, the date on which the decision became final has to be stated and a copy of the decision (without translation) has to be supplied (RR. 44 (1)(f), 122 (1)(c) CTMIR). – Language regime The choice of the prescribed language for the conversion request differs with respect to the procedural stage of the CTM or EU designation: – CTM application: The request has to be presented in the first or second language indicated by the applicant with the CTM filing (R. 95 (a) CTMIR). OHIM may use the second language in communications if the first language is not one of the official languages, Art. 119 (4)(2) CTMR – Registered CTM: Any of the five official languages may be used (R. 95 (b) CTMIR) – IR designating EU: Before the grant of protection is issued, only one of the two languages indicated by the IR applicant for purposes of proceedings before OHIM may be used (R. 126 CTMIR). Thereafter, any of the five official languages are permitted. – Identification of target Member State(s) The applicant has to clearly identify the Member State(s) for which reversion is requested (Art. 113 (1), RR. 44 (1)(d), 122 (1)(c) CTMIR). – Identification of subject list of goods and services The conversion applicant has to identify the extent of the specification of goods/ services which shall be relevant for each Member State. Conversion is possible for all the subject goods/services or for a part of them. Also, the selection can vary from Member State to Member State (RR. 44 (1)(e), 122 (1)(c) CTMIR). – Payment of fee for conversion application The OHIM fee for the application for conversion is EUR 200, irrespective of the number of Member States covered by the conversion request, both for the conversion of CTMs and IRs designating the EU (Art. 2 (20) CTMFR). The fee has to be paid 3 As regards missing indications, R. 45 (3) CTMIR refers to the requirements provided for in R. 44 CTMIR so that the data following from R. 44 CTMIR have to be provided by the conversion applicant; cf. BoA Dec. of 2/12/2002 – R 30/2001-4 – dFUSION, mn. 20.

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CTMR Art. 113

Community Trade Mark Regulation

within the three months time limit after the conversion request has been made. Regarding the exact date of payment, Art. 8 CTMFR has to be observed. 10 For practical reasons, it is recommended to indicate the forthcoming representatives in front of the national offices already with the conversion request so that service of office actions can easily be affected to those representatives preventing the risk for the applicant to misunderstand any communications from the national office or even miss datelines.

III. Conversion proceedings at OHIM 11

The competence of OHIM in the conversion proceedings relates to the examination of the request (Art. 113 (3)(1) CTMR) and the publication of the request (Art. 113 (2) CTMR). The sending of the application to the national trade mark offices involved by OHIM (Art. 113 (3)(2) CTMR) marks the beginning of the second stage of the two-tier system of conversion.

1. Parties to the proceedings Only the conversion applicant is a party to the conversion proceedings before OHIM. This can only be the CTM applicant of the subject converted application or the holder of the registered CTM or the IR with an EU designation. 13 Although a request to revoke the conversion or a request for invalidity may prevent conversion pursuant to Art. 112 (2) CTMR, the applicant of the revocation or invalidity request will not become a party to the conversion proceedings.4 The applicant of the revocation or invalidity proceedings may have a continuing legal interest to obtain a declaration of revocation or invalidity with ex tunc effect within these proceedings which may prevent conversion in the end.5 12

2. Examination procedure 14

a) Object of examination. Upon receipt of the conversion application, the role of OHIM is to check both the formal requirements for the request and the substance and scope of the requested conversion.6 This includes: – Payment of the fee for the application for conversion7 – Observance of the time period to file the conversion application8 – Use of the appropriate language9 – Meeting of the formal requirements, i. e. valid written request filed with OHIM by applicant or his representative and statement of the relevant details concerning the converted mark10 – Establishment of one of the grounds for conversion of Art. 112 (1) CTMR and the lack of any grounds precluding conversion (Art. 112 (2) CTMR)11 4 GC Case T-457/12 – Stromberg Menswear Ltd. v OHIM – Leketoy Stormberg (STORMBERG/ STROMBERG), mn. 36; GC Case T-451/12 – Stromberg Menswear Ltd. v OHIM – Leketoy Stormberg (STORMBERG/STROMBERG), mn. 46, 50, both not yet published in the ECR, available at www.curia.eu Õ search Case law. 5 Cf. above, Art. 112, mn. 24 et seq. 6 For a summary s. OHIM, Examination Guidelines, Part E sect. 2 para. 6.2, pp. 12 et seq. 7 Cf. above, mn. 9. 8 For details s. above, Art. 112, mn. 46 et seq. 9 Cf. above, mn. 6. 10 Cf. above, mn. 4. 11 For details s. above, Art. 112, mn. 12 et seq., 20 et seq.

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Submission, publication and transmission

Art. 113 CTMR

– Regarding opting back into an IR designation an additional check as to whether the Member State can be rightfully claimed under an IR at the relevant date of registration or subsequent designation and at the date of filing the conversion request (R. 123 (2) CTMIR) – Conformity to the list of goods/services in cases of partial conversion: the list must not go beyond the initial coverage, and the remaining list must not overlap the specification of the converted mark12 b) Deficiencies and shortcomings and their handling. If the examination reveals that 15 not all requirements are met, the consequences vary according to the substance of the shortcomings: aa) Deficiencies which can be remedied. Regarding the choice of the appropriate 16 language (RR. 95, 126 CTMIR), OHIM will send a deficiency notification to the conversion applicant. If the applicant fails to file the request in the appropriate language in time, the request is considered not to have been filed. The fee will not be reimbursed.13 The same effect takes place where the applicant fails to respond to a deficiency notification with respect to the grounds for conversion.14 With respect to the mandatory formalities as mentioned above in section II. above15, 17 the conversion applicant will receive a deficiency notification of the Office requesting a respective amendment of the request within a stipulated period of time. Such notice is also appropriate in cases where the conversion request is filed too early, e. g. before the refusal decision has become final.16 However, if the proposed amendment of the applicant fails to satisfy the Office, the application will be rejected (in fully or in part). Regarding the non-mandatory formalities, i. e. identification of the applicant and 18 valid representation as well as stating the necessary details for the converted mark, any deficiencies identified by OHIM will lead to a notification requesting that the deficiencies be remedied. If respective missing data are available from sources within the Office, OHIM will regard the request as authorization to add these data from internal sources so that no further act of the applicant will be necessary.17 Insofar, the proceedings try to establish a ‘smooth and efficient’ operation.18 Where the applicant does not provide the missing details, the conversion application will be rejected (R. 45 (3)(1) CTMIR). bb) Other shortcomings. If the fee for the conversion request is not paid within the 19 three months time limit, the application is deemed to not have been filed (Art. 113 (1) CTMR, RR. 45 (2), 122 (3) CTMIR). Fees paid late will be reimbursed. If the request is not filed within the three months time limit, OHIM will reject the 20 request. In cases where conversion is excluded for certain Member States in accordance with Art. 112 (2) CTMR19, OHIM will reject the conversion application as inadmissible for those Member States (R. 45 (3)(2) CTMIR). c) Appeal proceedings. If the conversion request is (fully or partly) rejected, an 21 appeal according to Art. 58 (1) CTMR20 as well as eventually actions before the Court of Justice (Art. 65 CTMR) are possible. 12

Cf. above, Art. 112, mn. 17; s. also OHIM, Examination Guidelines, part E sect. 2 para. 6.2.5, p. 14. OHIM, Examination Guidelines, part E sect. 2 para. 6.2.3, p. 13. 14 OHIM, Examination Guidelines, part E sect. 2 para. 6.2.5, p. 14. 15 Cf. above, mn. 3 et seq. 16 Cf. also Schennen, Mitt. 1998, 121, 126. 17 OHIM, Examination Guidelines, part E sect. 2 para. 6.2.4, p. 14. 18 Cf. OHIM Dec. of 2/12/2002 – R 30/2001-4 – dFUSION, mn. 26. 19 Cf. above, Art. 112, mn. 40 et seq. 20 Cf. OHIM Dec. of 2/12/2002 – R 30/2001-4 – dFUSION, mn. 13. 13

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CTMR Art. 113

Community Trade Mark Regulation

IV. Publication Regarding published CTM applications and registered CTMs, the receipt of the conversion request will be recorded in the CTM Register (Art. 113 (2) CTMR, R. 84 (3)(p) CTMIR). The fee payment is a prerequisite for this recordal as otherwise the application is not regarded as having been filed.21 23 Once the examination has revealed that the request is admissible, the conversion application for CTM applications and registrations will be published in the CTM Bulletin in Part E.1 (Artt. 113 (2), CTMR, R. 46 (1) CTMIR).22 This includes the following information (R. 46 (2) CTMIR): – Number of CTM – Reference to the previous publication of CTM application/registration – Indication of relevant Member State(s) for which conversion is sought – Identification of list of goods/services in case of partial conversion – Identification of details when request varies from Member State to Member State – Filing date of conversion application 24 Publication will also take place for EU designations of IRs in case they are converted into national trade marks applications (in Part E.3.1. of the CTM Bulletin) or designations of Member States under the Madrid Protocol (in Part E.3.2 of the CTM Bulletin).23 In contrast to CTMs, the publication is restricted to the following information (Art. 159 (3) CTMR, RR. 122 (3), 123 (3) CTMIR): – Number of IR – Indication of relevant Member State(s) for which conversion is sought – Identification of designation of Member State under the Madrid Protocol, if applicable 22

V. Transmission of conversion request to designated office(s) Once the examination carried out by OHIM has resulted in the conclusion that the request is in good order, OHIM will transmit the request to those designated office(s) which are validly claimed (Art. 113 (3) CTMR). The transmission has to be carried out ‘without delay’ (cf. R. 123 (4) CTMIR) so that previous publication is not necessary.24 There will be no formal transmission decision. The applicant will be informed about the date of transmission (R. 47 (2) CTMIR). The applicant should be aware that the transmission to the respective national offices may set in motion legal time limits. 26 In the case of CTM applications or registrations OHIM will send all the details of the CTM Register laid down in R. 84 (2) CTMIR to the national office(s) involved with the conversion request (R. 47 (1) CTMIR). The same is true for the EU designation of IRs which are converted into national applications (RR. 47 (1), 122 (3) CTMIR). In the case of opting back to a Member State designation of an IR, only the application for conversion will be transmitted to WIPO (R. 123 (4) CTMIR). 25

21

OHIM, Examination Guidelines, part E sect. 2 para. 6.3, p. 15. Cf. Vademecum to the Community Trade Marks Bulletin, Part E: INID Number Codes 210, 400, 580, 511 and 442. 23 S. below, Bo ¨ sling, Art. 159, mn. 11; s. also Vademecum, ibid.: INID Number Codes 111, 580, 511 and 450. 24 Cf. OHIM, Examination Guidelines, part E sect. 2 para. 6.4, p. 16. 22

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Formal requirements for conversion

Art. 114 CTMR

The interplay between R. 47 CTMIR (transmission to national offices) and the 27 relevant data referred to in R. 84 (2) CTMIR means that any claims for priority and seniority must have been acknowledged by OHIM. Therefore, OHIM will have to carry out a full analysis whether such priority or seniority claims are valid. This is necessary even though the seniority becomes only effective upon registration of the CTM (Art. 34 (2) CTMR). Otherwise, the conversion applicant might be unreasonably preferred.25

Article 114 Formal requirements for conversion 1. Any central industrial property office to which the request for conversion is transmitted may obtain from the Office any additional information concerning the request enabling that office to make a decision regarding the national trade mark resulting from the conversion. 2. A Community trade mark application or a Community trade mark transmitted in accordance with Article 113 shall not be subjected to formal requirements of national law which are different from or additional to those provided for in this Regulation or in the Implementing Regulation. 3. Any central industrial property office to which the request is transmitted may require that the applicant shall, within not less than two months: (a) pay the national application fee; (b) file a translation in one of the official languages of the State in question of the request and of the documents accompanying it; (c) indicate an address for service in the State in question; (d) supply a representation of the trade mark in the number of copies specified by the State in question. Bibliography: Jose´ Monteiro, ‘Transformation de la marque communautaire ou demande de marque communautaire, en demende de marque nationale’, Revue des affaires europeennes 1998 (Vol. 4), 309–330.

Content I. II. III. IV.

Interplay between proceedings at OHIM and national proceedings . 1 Interaction between designated office and OHIM . . . . . . . . . . . . . . . . . . . . . . 2 Formal requirements beyond OHIM stage . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Proceedings at designated office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 1. Proceedings at national offices . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 2. Proceedings at WIPO . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12 V. Conversion with regard to accession states . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15

I. Interplay between proceedings at OHIM and national proceedings A request for conversion which has been forwarded by OHIM to the national office 1 will not automatically lead to registration. This is one of the reasons why OHIM is not deemed to check all grounds for refusal on absolute or relative grounds if they relate to different Member States once a ground for rejection relating to one Member State has been confirmed.1 Therefore, it is left to the national offices to examine any possible 25 1

For a discussion cf. also Schennen, Mitt. 1998, 121, 126. For further details s. above, Art. 112, mn. 44.

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CTMR Art. 114

Community Trade Mark Regulation

grounds for rejection.2 Any third party arguing an infringement of its rights which have prevented conversion therefore has to assert his rights before the national office(s).

II. Interaction between designated office and OHIM 2

A designated national office will receive from OHIM the application for conversion and the details in the CTM Register provided for in R. 84 (2) CTMIR.3 However, the national office can at its own deliberation obtain from OHIM more information ‘enabling that office to make a decision’ regarding the national mark resulting from conversion (Art. 114 (1) CTMR).

III. Formal requirements beyond OHIM stage The general principle as regards formal requirements for a valid trade mark request at the level of the designated office(s) follows from Art. 114 (2) CTMR: basically, the applicant of the conversion request must not be subject to additional formal requirements different from or additional to those following from the CTMR or CTMIR. In this respect, EU law supersedes national law but this is restricted to formal requirements at a filing level and does not extend to substantial examination. For example, although OHIM has found that there are no absolute grounds for refusing an application (Art. 7 CTMR) but only has refused the application on relative grounds (Art. 8 CTMR), the national office would not be bound by the acceptance decision but may come to the conclusion that absolute grounds for rejection exist. This situation might be mitigated by the harmonization efforts regarding trade mark laws across the EU leading to more uniform decisions both on national and EU level and left to rather exceptional cases but still it may happen. Therefore, this all the more speaks for intensified cooperation between national and EU officials, such as common training of examiners and other educational measures and exchange of experiences of officials. 4 The only exception to the general principle refers to the additional requirements provided for in Art. 114 (3) CMTR. Thus, the national offices or WIPO are allowed to request the following: – Payment of a separate application fee – Filing of a translation of conversion request and accompanying documents into the official language of the designated office – Indication for address for service – Representation of the trade mark in the number of copies specified by the designated office 5 Since the conversion request leads to a fully fledged application as if it had been filed in proceedings before the designated office, such office may wish to collect an application fee which is equal to the fee for a national application.4 This means that in terms of economy, going the EU route first and then converting into national applications may 3

2 GC Case T-194/05 TeleTech Holdings v OHIM – Teletech International (TELETECH INTERNATIONAL) [2006] ECR II – 1367, mn. 29; Case T-342/02 Metro-Goldwyn-Mayer Lion v OHIM – Moser Grupo Media (MOSER GRUPO MEDIA) [2004] ECR II – 3194, mn. 43 et seq. 3 S. above, Art. 113, mn. 26. 4 For a summary of different national rules cf. OHIM’s Information Brochure titled National Law Relating to the Community Trade Mark and the Community Design, 3rd ed. 2006, Chapter 8: Conversion, pp. 111 et seq.

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Formal requirements for conversion

Art. 114 CTMR

lead to multiple fee payments so that the risk in filing a CTM which fails and has to be converted has to weighed against the chance to obtain an EU-wide protection by means of the CTM if it succeeds. The conversion applicant should make himself timely acquainted with the possible necessity of an additional fee payment. The indication of address for service may facilitate the service of official actions from 6 a viewpoint of the designated office. However, from the viewpoint of the conversion applicant it might be sensible to already indicate the representative voluntarily before the designated office within the conversion application in order not to miss any notification from the designated office.5 The translation requirement refers to the conversion request and accompanying 7 documents. If a CTM application has already been published, it is available in all languages of the EU provided for by OHIM. The designated office must allow the conversion applicant a certain timeline to fulfil 8 this request. This can either be done in a general way by statutory provisions or specifically by notifications to the applicant fixing certain deadlines.

IV. Proceedings at designated office 1. Proceedings at national offices Conversion will lead to a national application before any designated office. This 9 process is wholly subject to national law which means that there is no uniform procedure on national level. Apart from the restricted possibilities to ask for formal requirements as set forth in section III. above6, the national office is free to establish the equal requirements on a substantive level which are applicable for national applications filed directly with the office. The differentiation between formal and substantive requirements means that the national office has to accept the converted CTM as regards all the formal requirements as it stands at the time of conversion, including e. g. the representation of the mark or the classification. However, this will not bar the national office to fully apply the national substantive rules when examining the application. The national office, for example, would be free to object to certain goods or services of the application as being too vague because this includes a substantive examination.7 The national offices are free to regard a registered CTM upon a request for 10 conversion as an automatically protected national mark without any further requirements the holder would have to fulfil. The reasoning could be to say that the registered CTM has already had protection for the respective Member State so that the equivalence effect makes a separate procedure at national level unnecessary. A further possibility can be to accept registered CTMs claiming seniority from a national mark as automatically protected in that Member State due to the seniority history.8 Restitutio in integrum may be possible under national law and is not prejudiced for 11 time limits fixed by the CTMR vis-a`-vis national offices (Art. 81 (8) CTMR).

5

Cf. above, Art. 113, mn. 10. S. above, mn. 3 et seq. 7 Cf. also Schennen, Mitt. 1998, 121, 128. 8 For example, German, French and Austrian law have adopted these options: § 125 d (3) MarkenG, Art. L. 717-5 Code de la proprie´te´ intellectuelle, § 69 c (2) MarkenSchG. For further national laws cf. Information Brochure by OHIM, op. cit. (mn. 4 above), pp. 113–134. 6

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CTMR Art. 114

Community Trade Mark Regulation

2. Proceedings at WIPO Cases of opting back an EU designation under an IR will be transmitted to WIPO once a designation of a Member State under the Madrid Protocol has been requested (Art. 159 (1)(b) CTMR, R. 123 (4) CTMIR). Otherwise, the request will be transmitted to the national offices if opting-back follows the route of claiming national applications instead of Member State designations under the IR (Art. 159 (1)(a) CTMR, RR. 47, 122 (3) CMTIR) as outlined above in subsection 1.9 13 WIPO will consider an opting-back application as a subsequent designation of the respective Member State (R. 24 (7) Common Regulations). The fee for WIPO is CHF 300 as a basic fee as well as CHF 100 for any Member State in respect of which no individual fee is payable or in the alternative the defined individual fee (R. 24 (4) Common Regulations in conjunction with item 5. of the Schedule of Fees). 14 The effect is that the relevant date for the converted part is the designation date for the former EU designation under the IR (R. 24 (6)(e) Common Regulations). 12

V. Conversion with regard to accession states 15

In cases of the enlargement of the EU, there is no special provision dealing with the effect of conversion vis-a`-vis new Member States. Art. 165 CTMR should be applied by analogy. Therefore, if a CTM has a filing, priority or seniority date which is prior to the accession date, the effect of the national application following from conversion should only stretch back to the date of accession.10 9

S. above, mn. 9 et seq. In the same sense Stu¨rmann/Humphreys, GRURInt 2007, 112, 121. In practice, this is left to national law; cf. OHIM, Examination Guidelines, part A sect. 9 para. 2.5, p. 5. 10

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TITLE XII THE OFFICE SECTION 1 General provisions Article 115 Legal status 1. The Office shall be a body of the Community. It shall have legal personality. 2. In each of the Member States the Office shall enjoy the most extensive legal capacity accorded to legal persons under their laws; it may, in particular, acquire or dispose of movable and immovable property and may be a party to legal proceedings. 3. The Office shall be represented by its President. Rc. 12 Content A. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Nature and legal capacity of the Office. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Legal personality. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Legal capacity in the Member States . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Representation of the Office. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 2 3 4

A. General Art. 115 CTMR specifies nature, powers and representation of the Office for Harmo- 1 nisation in the Internal Market (trade marks and designs). As Community trade mark law created an entirely new regional type of trade mark uniformly protected in the whole European Community in addition to rather than replacing national trade mark regimes of the Member States (cf. Rc. 3, 4 and 6 CTMR), a new administrative entity was required to ensure uniform application of the new set of rules (cf. Rc. 12 CTMR). OHIM’s role is, therefore, comparable to the role of the Member States’ national trade mark offices, bearing in mind that the OHIM’s competence regards Community Trade Marks whereas the national offices’ sphere of competence regards their respective national trade mark systems. As can be seen from Rc. 12, the aim pursued in the CTMR was to create an administrative entity (the Office) to implement the newly created Community trade mark law without altering the Community’s existing institutional structure and balance of powers. The Office was to be technically independent and autonomous in legal, administrative and financial respects. To reach this goal, it was desired that the Office should have legal personality, exercise the powers conveyed to it under the CTMR and act within the framework of Community law, without, however, diminishing the competencies exercised by the Community institutions.

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CTMR Art. 116

Community Trade Mark Regulation

B. Nature and legal capacity of the Office I. Legal personality 2

In line with its nature and raison d’eˆtre, under Art. 115 (1) CTMR the Office is established as a ‘body’ (i. e. an agency), not an institution of the Communities such as the Commission or the Parliament (cf. also Rc. 12 CTMR). This means the rules concerning the institutions in the TEU/TFEU1 do not apply to the Office. Instead, the CTMR and CTMIR enact a separate set of rules applicable to the Office, sometimes by reference to other sources of Community law (see, e. g., Art. 116 (1) CTMR). The Office has legal personality, i. e. it is constituted as a legal entity capable of having and acquiring own rights and obligations, of suing and being sued. Despite its legal capacity of being sued, the Office enjoys immunity from certain claims under Art. 117 CTMR (see Art. 117 mn. 3 et seq.).

II. Legal capacity in the Member States 3

Art. 115 (2) CTMR complements the legal personality with which the Office is vested under Art. 115 (1) CTMR by providing that the Office shall have the most extensive legal capacity available to legal persons in each of the Member States. In particular, the Office is expressly endowed with the power to acquire or dispose of movable and immovable property and the capacity to be a party to legal proceedings. This provision fits the Office out with sufficiently far reaching legal capacities to ensure it can fulfil its function effectively in the territory of all the EU. As the CTMR is directly applicable in all the Member States (Art. 288 TFEU), this express provision also avoids any uncertainties of interpretation which might arise otherwise because the national laws of the Member States may provide for different degrees of legal capacity for different legal entities at the national level.

C. Representation of the Office 4

Art. 115 (3) CTMR provides that the Office is represented by its President, whose powers are defined by Art. 124 (2) CTMR (for details see there mn. 1 et seq.).

Article 116 Staff 1. The Staff Regulations of officials of the European Communities, hereinafter referred to as ‘the Staff Regulations’, the Conditions of Employment of other servants of the European Communities, and the rules adopted by agreement between the Institutions of the European Communities for giving effect to those Staff Regula1

cf. Part six, Chapter I, Title 1 TFEU.

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Staff

Art. 116 CTMR

tions and Conditions of Employment shall apply to the staff of the Office, without prejudice to the application of Article 136 to the members of the Boards of Appeal. 2. Without prejudice to Article 125, the powers conferred on each Institution by the Staff Regulations and by the Conditions of Employment of other servants shall be exercised by the Office in respect of its staff. Rc. 12 Bibliography: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Cologne 2014; OHIM, Annual Report 2013.

Content A. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Community law provisions applicable to the staff of the Office. . . . . . . . . . . I. Staff Regulations. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Conditions of employment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Scope of application. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Categories of servants. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Temporary staff . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Auxiliary staff . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Contract staff . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . d) Local staff . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . e) Special advisers . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . f) National experts. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Agreement between the institutions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Members of the Boards of Appeal – Art. 136 CTMR . . . . . . . . . . . . . . . . . . C. Powers of the Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 2 3 3 4 4 6 7 8 9 10 11 12 13

A. General At the end of 2013, OHIM employed a total of 925 staff.1 Art. 116 (1) CTMR sets out 1 which existing Community law provisions regulating the employment conditions of servants of the institutions and bodies of the Communities are applicable to the staff of the Office. As a result, the Office’s servants enjoy much the same benefits as servants at other institutions and bodies. In particular, they are covered by the sickness insurance and social security system of the Communities and they are subject to an autonomous flat-rate income tax deducted at source rather than to any national income tax regime2.

B. Community law provisions applicable to the staff of the Office I. Staff Regulations The Staff Regulations of officials of the European Communities (‘Staff Regulations’)3 2 provide for the employment conditions of officials of the European Communities. They apply to any person who has been duly appointed as an official, either by an institution 1

OHIM, Annual Report 2013, p. 78. Schennen in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 116 mn. 8 et seq. 3 Consolidated version available at http://ec.europa.eu/civil_service/docs/toc100_en.pdf, last visited 5 June 2014. 2

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CTMR Art. 116

Community Trade Mark Regulation

or by a body (agency) of the Communities (Artt. 1, 1 a Staff Regulations). The Staff Regulations contain general provisions (Title I Staff Regulations) such as rules concerning the classification of posts and qualifications required for appointment to such posts (Art. 5 Staff Regulations and Annex I point A), the principles of non discrimination and equal opportunities (Art. 1 d Staff Regulations), the implementation of a Staff Committee representing the interests of the staff (Art. 9 and Annex II Staff Regulations) etc. They go on to provide for the rights and duties of officials (Title II Staff Regulations), career of officials, including recruitment, administrative status, reports, promotions and termination of service (Title III Staff Regulations), working conditions (hours of work, leave, public holidays – Title IV Staff Regulations), emoluments and social security benefits (Title V Staff Regulations), disciplinary measures and procedural issues (Titles VI and VII Staff Regulations) and special provisions for officials in the scientific or technical services (Title VIII Staff Regulations) and officials serving in a third country (Title VIIIa Staff Regulations). Transitional and final provisions (Title IX Staff Regulations) concern the transition from previous versions of the Staff Regulations to the current one and the adoption of rules by the institutions and agencies of the Communities.

II. Conditions of employment 1. Scope of application 3

The Conditions of employment of other servants of the European Communities (‘Conditions of Employment’)4 provide for the employment conditions of servants other than officials of the European Communities. The Conditions of Employment establish the following categories of servants: – temporary staff – auxiliary staff – contract staff – local staff and – special advisers

2. Categories of servants 4

a) Temporary staff. Temporary staff (‘temporary agents’) are servants who have been recruited either to fill a post which for some reason is temporary in nature or to fill a permanent post but only for a temporary period (cf. Art. 2 Conditions of Employment). Posts may be temporary in nature because they have been classified as temporary by the competent budgetary authorities (Art. 2 (a) Conditions of Employment) or because the post is designed to assist a person holding a certain office for a limited period of time (Art. 2 (c) Conditions of Employment). Whilst temporary staff may also be engaged for an indefinite period (Art. 8 Conditions of Employment), unsurprisingly temporary staff is usually engaged for a fixed period only. Contracts of temporary agents engaged for a fixed period may be renewed for another fixed period once, another renewal would result in a contract for an indefinite period (Art. 8 Conditions of Employment). Most of the provisions of the Staff Regulations also apply to temporary agents, e. g. the provisions on basic salary and allowances (Art. 20 (2) Conditions of Employment). 4 Consolidated version available at http://ec.europa.eu/civil_service/docs/toc100_en.pdf, last visited June 5, 2014.

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Staff

Art. 116 CTMR

Before 2011, contracts of temporary agents were usually concluded for an initial 5 period of three years and renewed for a further period of two years (‘three plus two contracts’). This practice has been changed and the initial contract period was extended to five years, followed by a regular renewal of another five years. b) Auxiliary staff. In principle, the category of auxiliary staff was designed to provide 6 for auxiliary functions not assigned to a specific post provided for in the budgetary provisions (Art. 3 Conditions of Employment) and the Office used to employ also auxiliary staff.5 However, under Art. 52 Conditions of Employment after December 31, 2006 no auxiliary agents may be employed anymore. c) Contract staff. Contract staff means agents recruited not with reference to a 7 specific post foreseen in the budgetary provisions (Art. 3 a Conditions of Employment). The tasks that may be entrusted to contract agents comprise, but are not limited to, support or auxiliary service tasks. Contract staff are recruited for a fixed period of time (Artt. 85, 88 Conditions of Employment). Depending on the type of contract, the contract may be renewable for a limited number of times and, potentially, result in an employment for an indefinite period (Artt. 3 a, 85 Conditions of Employment) or be freely renewable but for a total duration of not more than three years at any given institution (Artt. 3 b, 88 Conditions of Employment). d) Local staff. Under Art. 4 Conditions of Employment, ‘local staff’ concerns local 8 agents engaged in places outside the European Union. As the Office is situated within the EU, it does not employ such local agents. It has, however, outsourced certain types of work to external service providers. Therefore staff such as security personnel or the staff operating the Office’s canteen provide their services under contracts with private employers. Their contracts are subject to national labour law. e) Special advisers. Under Art. 123 Conditions of Employment special advisers may 9 be retained by an authority competent to conclude employment contracts. The conditions of employment of such special advisers are ruled by the contractual stipulations in the contract. Such contracts are for a period not exceeding two years and may be renewed. f) National experts. National experts seconded to an institution are not agents of the 10 Communities. Rather, they are officials of their national administrations. Neither the Staff Regulations nor the Conditions of Employment apply. In the interest of harmonization of European trade mark law, usually officials of miscellaneous national offices are seconded to the Office at any given time and help facilitate the information flow between the Office and the national offices. Furthermore, also some national offices from outside the EU second national experts to OHIM, e. g. Switzerland and Norway.

III. Agreement between the institutions Further to the Staff Regulations and Conditions of Employment certain rules are also 11 contained in an agreement between the institutions. The Staff Regulations and the Conditions of Employment stipulate which rules are to be agreed between the institutions. Agencies such as the Office are not treated as institutions when it comes to laying 5 Cf. Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 116 mn. 5.

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CTMR Art. 117

Community Trade Mark Regulation

down rules for staff by inter-institutional agreement (Art. 110 (2) Staff Regulations). This means they cannot directly influence the contents. They must, however, be heard (Art. 110 (2) Staff Regulations).

IV. Members of the Boards of Appeal – Art. 136 CTMR 12

The members of the Boards of Appeal are also members of the Office’s staff.6 They may be officials or temporary agents7 and the Staff Regulations and Conditions of Employment apply, except insofar as Art. 136 CTMR applies. Under Art. 136 (2) CTMR, unlike other officials or agents, the members of the Boards of Appeal are appointed by the Administrative Board of the Office and the renewal of their appointment is, in principle, not limited. Furthermore, Art. 136 CTMR safeguards the members’ independence by exempting them from any instructions in their decision making. In particular, they are also not bound by the Guidelines for Examination issued by the Office.8

C. Powers of the Office 13

Art. 116 (2) CTMR clarifies that the Office enjoys the powers conferred on the institutions of the Communities under the Staff Regulations and Conditions of Employment. By virtue of Art. 124 (2)(e) CTMR these powers are exercised by the President. This means the President is the Appointing Authority with respect to officials or other agents of the Office. As such, his competence encompasses inter alia appointments, promotions or transfers of officials or other agents of the Office. Art. 125 CTMR contains special provisions for the appointment of, and disciplinary authority over, senior officials, namely the President and the Vice-President of the Office. By reference in Art. 136 (1) CTMR, Art. 125 CTMR is furthermore applicable to the appointment of the President of the Boards of Appeal and the chairmen of the Boards. These special provisions override the general rule laid down in Art. 116 (2) CTMR.

Article 117 Privileges and immunities The Protocol on the Privileges and Immunities of the European Communities shall apply to the Office. Bibliography: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Cologne 2014.

6 Cf. Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 116 mn. 10. 7 The function as member of a Board of Appeal is always limited in time; an official who ceases to serve as a member of a Board of Appeal would then be employed in another function at the Office. 8 For further details see Schneider below, Art. 136 mn. 17 et seq.

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Privileges and immunities

Art. 117 CTMR

Content A. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 B. Privileges and immunities . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 I. Privileges and immunities of the Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 II. Privileges and immunities of the staff. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 1. Liability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 2. Relocation/residence . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 2. Taxation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 III. Privileges and immunities of third parties. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

A. General The Protocol on the Privileges and Immunities of the European Communities 1 referred to in Art. 117 CTMR has been amended and is now annexed to the TEU, TFEU and EAEC as the ‘Protocol on the Privileges and Immunities of the European Union’1 (hereinafter referred to as the ‘Protocol’). This is because the Lisbon Treaty amended the TEU so that the European Union replaces the European Community (Art. 1 TEU). In essence, the privileges and immunities of the institutions, bodies and staff of the EU are still the same, designed to provide them with sufficient scope of action to fulfil their tasks (cf. Recital of Protocol No. 7 to the TEU and Art. 343 TFEU). In fact, the Protocol was only amended insofar as some provisions lacking usefulness following the amendments to the structure of the EU under the TEU, TFEU and EAEC have been abolished (e. g. former Art. 5 concerning the former European Coal and Steel Community). Further to the Protocol, the Spanish Government and OHIM have concluded a seat 2 agreement (‘acuerdo de sede’, signed on September 20, 20112 – hereinafter referred to as the ‘Seat Agreement’) designed to provide more detailed rules regarding tax issues and to improve the interaction between Spanish administrative authorities and the Office’s staff.

B. Privileges and immunities I. Privileges and immunities of the Office Under Art. 1 of the Protocol, the premises and buildings of the Office are inviolable, 3 i. e. they are exempt from search, requisition, confiscation or expropriation. Any administrative or legal measures of constraint concerning the property and assets of the Office need to be authorized by the Court of Justice. As the Office is situated in Alicante, Spain, in principle, Spanish legal provisions would also apply to the Office if issues outside the scope of applicability of EU law were concerned. By way of practical example, however, the Spanish police could not search the Office’s premises without the Office’s permission. Likewise, any civil law claims could not be enforced as against the Office without the authorization of the CJ. Under Art. 9 of the Seat Agreement, the Office will ensure the observation of applicable Spanish legal rules and may take the 1

OJ C 326, 266. Available at http://www.boe.es/boe/dias/2011/10/21/pdfs/BOE-A-2011-16534.pdf, last visited 5 June 2014. 2

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CTMR Art. 117

4

5

6

7

8

Community Trade Mark Regulation

steps required to do so, including the use of private security services. The Spanish security authorities may only access the premises by invitation or with the authorization of the Office, except in emergencies requiring immediate access such as in case of fire. Under Art. 2 of the Protocol, also the Office’s archives are inviolable. This means not only the archives on Community trade mark proceedings but all documents belonging to or in the possession of the Office are protected.3 Under Art. 3 of the Protocol, the Office, its revenues and other profits are exempt from all direct taxes. This means, inter alia, that any surplus revenues of the Office are not subject to national (i. e. Spanish) income tax. The Spanish Government is to ensure that indirect taxes and sales taxes included in substantial purchases by the Office are to be reimbursed wherever possible. The exemption from income and similar taxes on revenues is not reflected in the Seat Agreement. By contrast, Art. 4 of the Seat Agreement deals with the details of exemptions from VAT and taxes on immovable property. Furthermore, the Office is exempt from any customs duties or import or export restrictions regarding articles intended for its official use and its own publications under Art. 4 of the Protocol. Art. 6 of the Seat Agreement provides for detailed rules in this respect. Under Art. 5 of the Protocol, the official communications and transmissions of documents of the Office enjoy the same freedoms as such of diplomatic missions. In particular, they are not to be subject of censorship. In addition to the privileges, immunities and facilities accorded to the Office under the Protocol, Art. 2 (2) of the Seat Agreement exempts the Office from legal proceedings and enforcement measures in respect of acts in the course of its official capacity4.

II. Privileges and immunities of the staff 1. Liability 9

The Office’s staff members are immune from legal proceedings for acts committed in the performance of their duties. They are answerable only to the Office under the rules on liability of EU servants and under the jurisdiction of the Court of Justice of the EU (Art. 11 (a) of the Protocol). This privilege applies irrespective of the staff member’s nationality and in every member state. It also endures after the staff member ceased to hold office. As the privileges, immunities and facilities are accorded to the staff solely in the interest of the EU, immunity accorded to a staff member is to be waived where the institution or body concerned considers that the waiver is not contrary to the interest of the Union (Art. 17 of the Protocol – confirmed for the Office in Art. 2 (1) of the Seat Agreement). Furthermore, like other EU servants, the members of the Office’s staff are not exempt from fulfilling their private obligations or from complying with the law and police regulations in force, except insofar as explicit exemptions are provided for in the Protocol (Art. 23 Staff Regulations and Artt. 11, 81 and 124 Conditions of Employment). Art. 2 (1) of the Seat Agreement contains an exemption corresponding to Art. 11 (a) of the Protocol and is applicable to officials, temporary agents, contract agents and special advisers employed by the Office. 3 Cf. Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 117 mn. 7. 4 See Stamm below Art. 118 mn. 2 et seq. for details on the Office’s contractual and non-contractual liability and jurisdiction in such matters.

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Privileges and immunities

Art. 117 CTMR

2. Relocation/residence The staff, their spouses and dependent family members are further exempt from 10 restrictions regarding immigration and from the formalities for registration of aliens (Art. 11 (b) of the Protocol and Art. 3 (2)(iii) of the Seat Agreement), enjoy the same privileges in respect of any currency or exchange regulations as other officials of international organisations (Art. 11 (c) of the Protocol, Art. 3 (2)(iv) of the Seat Agreement) and may import their personal belongings including furniture free of any import duties and staff members leaving the Office’s service and relocating outside Spain may reexport their personal effects free of export duties (Art. 11 (d) of the Protocol). Staff joining or leaving the services of the Office may likewise import or re-export their car free of duty (Art. 11 (e) of the Protocol). The privilege of duty-free importing or re-exporting a car is limited, however, to cars for the personal use of the staff member, which have been acquired in the last country of residence or the staff members home country on terms (including the price) normal in the respective country. The Seat Agreement facilitates relocation to and from Alicante further by granting a period of up to two years to import personal belongings including a vehicle upon taking up duty at the Office and of up to three years for re-exporting personal belongings and vehicle(s) upon leaving the Office’s services Art. 3 (2)(vi) and (iv) of the Seat Agreement). A new member of staff who is neither a Spaniard nor had his/her residence in Spain before taking up office with the OHIM may furthermore acquire personal effects and furniture duty-free during one year upon taking up service at OHIM (Art. 3 (2)(iii) of the Seat Agreement). OHIM staff and their family members are entitled to a card of accreditation which will exempt them from applying for a residence permit (Art. 3 (2)(vi) of the Seat Agreement).

2. Taxation The Office’s staff members are subject to a flat-rate tax payable to the European 11 Union. The tax is deducted directly at source before payment of the net salary, pension or other emolument such as unemployment allowance for temporary staff who have left the service. In turn, (ex-) staff members are exempt from national taxes on any salaries, wages and emoluments paid by the Office (Art. 12 of the Protocol; for Spain, this is confirmed in Art. 3 (2)(ii) of the Seat Agreement). This exemption does not only concern direct income taxation but also indirect taxation.5 In particular, where an EU servant has both exempted and non-exempted income, the competent tax authority may not tax the non-exempted income more heavily because there is also more, exempted, income.6 This is because unlike other instruments containing tax exemptions in favour of staff of international organizations (e. g. the EPO), the Protocol does not contain a reservation concerning progressive rates of tax.7

III. Privileges and immunities of third parties The members of OHIM’s Administrative Board and Budget Commission are entitled 12 to the customary privileges, immunities and facilities regarding their travel to and from 5

CJ Case C-229/98 Vander Zwalm v Belgium [1999] ECR I-07113, mn. 21. CJ Case C-229/98 Vander Zwalm v Belgium [1999] ECR I-07113, mn. 25. 7 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 117 mn. 14. 6

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CTMR Art. 118

Community Trade Mark Regulation

Alicante in the performance of their duties under Art. 10 of the Protocol and Art. 3 (5) of the Seat Agreement. Art. 3 (5) of the Seat Agreement goes further and extends this privilege also to national experts and experts contracted to conduct studies (‘external staff’ under Art. 3 (1)(ii) of the Seat Agreement) as well as to any visitors invited to participate in the Office’s activities. Spanish authorities are called upon to facilitate the travel of these persons to the extent legally possible, in particular by processing any required visa as quickly as possible.

Article 118 Liability 1. The contractual liability of the Office shall be governed by the law applicable to the contract in question. 2. The Court of Justice shall be competent to give judgment pursuant to any arbitration clause contained in a contract concluded by the Office. 3. In the case of non-contractual liability, the Office shall, in accordance with the general principles common to the laws of the Member States, make good any damage caused by its departments or by its servants in the performance of their duties. 4. The Court of Justice shall have jurisdiction in disputes relating to compensation for the damage referred to in paragraph 3. 5. The personal liability of its servants towards the Office shall be governed by the provisions laid down in their Staff Regulations or in the Conditions of Employment applicable to them. Rc. 12 Bibliography: Craig/De Bu´rca, EU Law, 5th edition 2011, Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Cologne 2014; Foster on EU Law, 4th edition, 2013.

Content A. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Contractual liability and jurisdiction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Contractual liability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Jurisdiction regarding contractual liability. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Non-contractual liability and jurisdiction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Non-contractual liability. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Requirements of liability. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Vicarious liability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Jurisdiction regarding non-contractual liability . . . . . . . . . . . . . . . . . . . . . . . . . D. Liability of Office staff as against the Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 2 3 4 4 4 9 10 11

A. General 1

Art. 118 CTMR governs the OHIM’s contractual and non-contractual liability and jurisdiction in such matters as well as the Office’s staff’s liability towards the Office. Similar provisions are contained in Artt. 340, 268 and 272 TFEU.

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Liability

Art. 118 CTMR

B. Contractual liability and jurisdiction I. Contractual liability Under Art. 118 (1) CTMR, the Office’s contractual liability is governed by the law 2 applicable to the relevant contract. The Office’s contracts usually contain choice of law clauses1, whereby the applicable law can easily be ascertained. In the absence of a choice of law clause, the applicable law would need to be ascertained, in principle, in accordance with the applicable conflict of law rules.2 Generally, each court applies the conflict rules of its own jurisdiction. If the contract contains an arbitration clause, jurisdiction lies with the Court of Justice (Art. 118 (2) CTMR); it is to be expected the CJ would apply European conflict of law rules where applicable. To the extent the contract is a civil/commercial contract by nature, e. g. for the acquisition of office material or the provision of services to OHIM, the Rome I Regulation3 may apply, provided the contract has points of contact with the laws of more than one country (Art. 1 (1) of the Rome I Regulation). Having said as much, where the contract is for the sale of goods (e. g. purchase of Office supply by OHIM) and the parties to the contract are domiciled in different countries, the Convention of the International Sale of Goods (hereinafter ‘the Convention’) may be applicable, provided either both parties are domiciled in countries party to the Convention (Art. 1 (1)(a) of the Convention) or if the applicable rules on conflict of laws lead to the application of the law of a country party to the Convention (Art. 1 (1)(b) of the Convention). NB: The employment contracts between the Office and its staff do not fall under Art. 118 (1), (2) CTMR – employment at the Office is governed by the Staff Regulations or the Conditions of Employment.4

II. Jurisdiction regarding contractual liability As mentioned above, if the contract contains an arbitration clause, jurisdiction lies 3 with the Court of Justice (Art. 118 (2) CTMR). Where contracts do not contain an arbitration clause, international jurisdiction will be determined in accordance with the applicable international rules on jurisdiction. For civil and commercial matters and insofar as it is applicable5, national courts in the EU with the exception of Danish courts6 will apply Regulation (EU) No 1215/2012 of the European Parliament and of the 1 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 118 mn. 4. 2 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 118, mn. 4. 3 Regulation (EC) No. 593/2008 of the European Parliament and the Council of 17 June 2008 on the law applicable to contracts. 4 See Stamm Art. 116 above mn. 1 et seq. 5 The Brussels I Regulation covers the main civil and commercial matters with few exceptions defined in the Regulation (see Art. 1 of the Regulation). 6 See 21st Rc. of the Brussels I Regulation: Denmark is not bound by the Regulation; instead, an amended form of the rules of the Brussels I Regulation applies for Denmark under the Agreement between the European Community and the Kingdom of Denmark on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ L 299, 16 November 2005, p. 62); the Agreement entered into force on July 1, 2007.

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CTMR Art. 118

Community Trade Mark Regulation

Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (‘Brussels I Regulation’).7 If Spanish courts have international jurisdiction, (e. g. if office supply were delivered by a Spanish provider), it must be remembered that the Office is exempt from Spanish jurisdiction under Art. 2 (2) of the Seat Agreement where it exercises its official activities8, even though under Art. 118 (2) CTMR in regard to civil law litigation there is only derogation from national jurisdiction where there is an arbitration clause in the contract.

C. Non-contractual liability and jurisdiction I. Non-contractual liability 1. Requirements of liability 4

5

6

7 8

Under Art. 118 (3) CTMR, in case of non-contractual liability, the Office is bound to make good any damage attributable to it in accordance with the general principles common to the laws of the Member States. As the laws of the Member States on noncontractual liability are not harmonized, establishing a cause of action in the sense of this provision will entail some uncertainty in practice. Since this provision mirrors Art. 340 (2) TFEU, second subparagraph (previously Art. 288, second subparagraph and earlier Art. 215, second subparagraph TEU), however, case law on liability under the latter provision may serve as a guide when determining a potential case under Art. 118 (3) CTMR9: In determining the requirements of liability, the Court of Justice will compare national laws and select principles of law appropriate for the case at hand.10 In general, liability will exist where a wrongful act or omission, i. e. a breach of duty, by an EU entity (here the Office) causes damage to a third party. There usually is a breach of duty capable of giving rise to non-contractual liability where an EU entity contravenes an existing rule of law11 which was intended to confer rights on individuals.12 Where the EU entity is given a scope of discretion, the test for liability is different though and a sufficiently serious breach of a rule of law which is intended to confer rights on individuals is required.13 The Office will only be liable where the claimant proves damage.14 Furthermore, there must be a causal link between the breach of duty by the EU entity (here the Office) and the damage or loss sustained by the claimant. No sufficient link 7

OJ L 351, 20.12.2012, p. 1–32. See Stamm above Art. 117 mn. 8. 9 As a full discussion of the jurisprudence would exceed the scope of the present commentary, only a short outline is given here. For further information and case law see, e. g., Foster on EU Law, 4th edition, p. 222 et seq. or Craig/De Bu´rca, EU Law, 5th edition, p. 557 et seq. 10 Foster on EU Law, 4th edition, p. 229. 11 GC Case T-16/04 Arcelor v the European Parliament and the Council of the European Union [2010] ECR II-00211, mn. 141. 12 CJ Case C-352/98 P Laboratoires Pharmaceutiques Bergaderm SA and Goupil v Commission [2000] ECR I-5291, mn. 42 et seq. 13 CJ Case C-352/98 P Laboratoires Pharmaceutiques Bergaderm SA and Goupil v Commission [2000] ECR I-5291, mn. 42 et seq., GC Case T-16/04 Arcelor v the European Parliament and the Council of the European Union [2010] ECR II-00211, mn. 141. 14 CJ Case 74/74 CNTA v the Commission of the European Communities [1976] ECR 00791 mn. 17. 8

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Liability

Art. 118 CTMR

exists where the damage is too remote15 or where the chain of causation was broken by an act of an independent third party.16

2. Vicarious liability As the Office is an abstract legal entity, it acts via its staff, who, in some cases, act as 9 individuals, especially as examiners (Art. 131 CTMR), or in other cases as a panel, e. g. the Opposition Division (Art. 132 CTMR). Therefore, acts by its departments or by its servants are attributed to the Office under this provision. Whilst the Office is liable as against third parties, it can, under certain circumstances, hold the members of its staff liable (see mn. 11 below).

II. Jurisdiction regarding non-contractual liability Under Art. 118 (4) CTMR, the CJ has jurisdiction on claims for damages based on 10 non-contractual liability. Under Art. 46 of the Statute of the Court of Justice17, actions for non-contractual liabilities are time-barred after expiry of five years from the occurrence of the event causing the damage for which compensation is sought.

D. Liability of Office staff as against the Office Under Art. 118 (5) CTMR, the servants of the Office may be personally liable in 11 accordance with the relevant provisions of the Staff Regulations or Conditions of Employment. Under Art. 22 of the Staff Regulations, officials may be held liable for damage suffered by the EU as a result of serious misconduct in the course of, or in connection with, their duties. By virtue of Art. 11 of the Conditions of Employment, this provision also applies to other staff of the Office. Under these rules, Office staff will never be directly liable to a third party but only to the Office.18 Under Art. 11 of the Protocol on the privileges and immunities of the European 12 Union19 staff members are exempt from national jurisdiction for acts performed in their official capacity and Art. 22 of the Staff Regulations, third subparagraph, provides that jurisdiction for staff liability lies with the Court of Justice.

15 CJ Case 64/76 Dumortier Fre `res SA and others v Council of the European Communities [1979] ECR 03091 mn. 21. 16 CJ Case 132/77 Socie ´te´ pour l’exportation des sucres, S.A. v Commission of the European Communities [1978] ECR 1061, mn. 27. 17 Available at http://curia.europa.eu/jcms/upload/docs/application/pdf/2012-10/staut_cons_en.pdf, last visited 4 June 2014. 18 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 118 mn. 10. 19 OJ C 326, 266.

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CTMR Art. 119

Community Trade Mark Regulation

Article 119 Languages 1. The application for a Community trade mark shall be filed in one of the official languages of the European Community. 2. The languages of the Office shall be English, French, German, Italian and Spanish. 3. The applicant must indicate a second language which shall be a language of the Office the use of which he accepts as a possible language of proceedings for opposition, revocation or invalidity proceedings. If the application was filed in a language which is not one of the languages of the Office, the Office shall arrange to have the application, as described in Article 26 (1), translated into the language indicated by the applicant. 4. Where the applicant for a Community trade mark is the sole party to proceedings before the Office, the language of proceedings shall be the language used for filing the application for a Community trade mark. If the application was made in a language other than the languages of the Office, the Office may send written communications to the applicant in the second language indicated by the applicant in his application. 5. The notice of opposition and an application for revocation or invalidity shall be filed in one of the languages of the Office. 6. If the language chosen, in accordance with paragraph 5, for the notice of opposition or the application for revocation or invalidity is the language of the application for a trade mark or the second language indicated when the application was filed, that language shall be the language of the proceedings. If the language chosen, in accordance with paragraph 5, for the notice of opposition or the application for revocation or invalidity is neither the language of the application for a trade mark nor the second language indicated when the application was filed, the opposing party or the party seeking revocation or invalidity shall be required to produce, at his own expense, a translation of his application either into the language of the application for a trade mark, provided that it is a language of the Office, or into the second language indicated when the application was filed. The translation shall be produced within the period prescribed in the Implementing Regulation. The language into which the application has been translated shall then become the language of the proceedings. 7. Parties to opposition, revocation, invalidity or appeal proceedings may agree that a different official language of the European Community is to be the language of the proceedings. Bibliography: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Cologne 2014; Fezer, Handbuch der Markenpraxis, 2nd edition, Munich 2012; Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, 2011; Paul Maier, ‘OHIM’s Role in European Trade marks Harmonization: Past, Present and Future’, Fordham Intell. Prop. Media & Ent. L.J., Vol. 23, 687–729; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities; Gielen/v. Bomhard (ed.), Pohlmann, Verfahrensrecht der Gemeinschaftsmarke, Munich 2012; v. Mu¨hlendahl/ Ohlgart, Die Gemeinschaftsmarke, Munich 1998.

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Content A. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. The issue: diversity of languages versus equality of arms . . . . . . . . . . . . . . II. Historical background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Overview over the language regime . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Languages of the Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Filing CTM applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. First language . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Second language . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Language of proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Correspondence language . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Supporting documents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Consequences of deficiencies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . D. Language of inter partes proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Notice of opposition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Language of proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Supporting documents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Documents filed by the opponent. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . b) Documents filed by the applicant . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4. Consequences of deficiencies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Language deficiencies regarding the notice of opposition . . . . . . . b) Language deficiencies regarding documents submitted by the opponent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . c) Language deficiencies regarding documents submitted by the applicant. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Cancellation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1. Application for revocation or invalidity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2. Language of proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3. Supporting documents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . a) Documents filed by the cancellation applicant . . . . . . . . . . . . . . . . . . . . b) Documents filed by the proprietor of the CTM. . . . . . . . . . . . . . . . . . . 4. Consequences of deficiencies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Translation requirements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . IV. Choice of language by agreement of the parties . . . . . . . . . . . . . . . . . . . . . . . . . E. Appeal proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F. Oral proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 1 2 3 4 6 6 8 11 11 14 16 19 19 19 23 25 25 27 28 28 31 34 35 35 36 37 37 39 41 46 52 56 61

A. General I. The issue: diversity of languages versus equality of arms Art. 119 CTMR provides the language regime both for the internal functioning of 1 OHIM and for proceedings before the Office. The languages in which publications and entries in the Community trade mark register are to be made are governed by Art. 120 CTMR.1 Art. 119 CTMR is designed to strike a balance between the different interests involved in Community trade mark proceedings: In general, users will wish to use their mother tongue or at least their official language in any official proceedings. On the other hand, (prospective) parties to inter partes proceedings often have different mother tongues. To date, 23 of the languages spoken in the EU count as official languages for the purposes of the CTM system, namely Bulgarian, Croatian, Czech, Danish, Dutch, 1

See Stamm below Art. 120 mn. 1 et seq.

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CTMR Art. 119

Community Trade Mark Regulation

German, Greek, English, Estonian, Finnish, French, Hungarian, Italian, Lithuanian, Latvian, Maltese, Polish, Portuguese, Romanian, Slovakian, Slovenian, Spanish, and Swedish. Whilst Irish has been recognized as an official language of the EU with effect of 1 January 2007, it is subject to temporary derogation measures2 as a result of which it cannot (yet) be used as a filing language under Art. 119 (1) CTMR.3 Were the system to allow use of all official languages unrestrictedly, this could result in procedural unfairness for either of the parties involved. For example, if the choice of the filing language by the applicant was binding also on any third party, a party whose legitimate interests were jeopardized by a CTM application or an existing registration (e. g. if the latter was susceptible to cancellation for lack of distinctive character, cf. Art. 52 (1)(a) CTMR) might be forced to seek redress in a language not only foreign to the party but, depending on the language at issue, also one not frequently spoken by professional representatives known to that party. On the other hand, if opponents or applicants for revocation or cancellation could freely choose the language of proceedings, an applicant/holder of a CTM could be attacked in a language in which the applicant/holder could not defend itself and which is not a working language of most of the professional representatives.

II. Historical background 2

All in all, the debate on the Community trade mark system lasted for over thirty years.4 The language regime together with the location of the Office in Spain were amongst the last issues resolved.5 In fact, it was at first decided that the Office should work in five languages only, namely the five main languages of the Community (English, French, German, Italian, Spanish).6 However, this decision, taken at the special summit of the Heads of State and Government on 29 October 1993 in Brussels, met with harsh criticism later in the debate by the Internal Market Council, because the restriction to five languages deviated from the general idea that all the official languages should be treated equally.7 Following a further round of difficult negotiations, the Council finally adopted the compromise now enshrined in Art. 119 CTMR.

III. Overview over the language regime 3

In principle, OHIM has five working languages, namely English, French, German, Italian and Spanish. By way of exception from this rule, CTM applications may be filed in all the official languages.8 Applicants must, however, indicate a language of the Office as second language which may be used as language of the proceedings for inter partes proceedings. It is therefore ensured that one of the Office languages will be used in inter partes proceedings (oppositions, cancellation proceedings, appeals), except where the parties agree on a different language under Art. 119 (7) CTMR. 2 See Art. 1 of Council Regulation (EU) No 1257/2010 of 20 December 2010, OJ L 343 of 29.12.2010, p. 5 and Art. 2 of Regulation (EC) No 920/2005 of 13 June 2005, OJ L 156 of 18.6.2005, p. 3 3 See also Stamm below Art. 120 mn. 5 4 See v. Mu ¨ hlendahl/Ohlgart, p. 4 et seq.; cf. also Maier, Fordham Intell. Prop. Media & Ent. L.J., Vol. 23, 688 et seq., both with more details on the development towards a Community trade mark system. 5 v. Mu ¨ hlendahl in v. Mu¨hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 6. 6 v. Mu ¨ hlendahl in v. Mu¨hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 6. 7 v. Mu ¨ hlendahl in v. Mu¨hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 6. 8 See above mn. 1.

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Art. 119 CTMR

B. Languages of the Office Under Art. 119 (2) CTMR, English, French, German, Italian and Spanish are the five 4 languages of the Office. In principle, all proceedings before the Office are to be conducted in one of those languages. Some exceptions to this rule exist with regard to ex parte proceedings, notably as regards the application for a CTM.9 Use of the languages of the Office is not, however, restricted to proceedings before 5 the Office, i. e. to communications between the Office and the users. Rather, the languages are also used for the Office’s internal communication with staff10 and in relation to meetings of the Administrative Board or Budget Committee.11 Also publications by OHIM which do not fall under Art. 120 CTMR, such as the Guidelines for Proceedings before the Office, the Office’s website and the Official Journal12 are made in the five languages.13 Outside proceedings before the Office, the language regime of the CTMR does also not apply, where special provisions under other EU legislation are applicable, e. g. for competitions to recruit personnel or for calls for tender in the context of public procurement.14 Art. 20 (2)(d) TFEU, which grants EU citizens the right to address the EU institutions in any of the treaty languages (including Irish) and to receive a reply in the same language is not applicable, however, because the Office is not an institution of the EU.15 In practice, however, the Office strives to reply in the same language to enquiries in an official language of the EU.16

C. Filing CTM applications I. First language In accordance with Art. 119 (1) CTMR and Rule 95 (a) CTMIR, applications for 6 CTMs can be filed in any one of the official languages of the European Community, with the exception of Irish.17 In practice, most applications are filed in English (approx. 42 %), followed by German (approx. 17 %), French (approx. 10 %), Spanish (approx. 9 %) and 9

See Stamm below, mn. 6 et seq. For certain matters there is a special language regime regarding employment matters though – cf. v. Mu¨hlendahl in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 119, mn. 2. 11 v. Mu ¨ hlendahl in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 119, mn. 2. 12 See Rule 86 (2) CTMIR. 13 Schennen in Eisenfu ¨ hr/Schennen Gemeinschaftsmarkenverordnung Kommentar (4th ed.), Art. 119 mn. 17; v. Mu¨hlendahl in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 119, mn. 2. 14 Schennen in Eisenfu ¨ hr/Schennen Gemeinschaftsmarkenverordnung Kommentar (4th ed.), Art. 119 mn. 17. 15 See T-120/99 Kik v OHIM [2001] ECR II-2238, mn. 64, which regards the applicablility of the same provision, which was previously Art. 8 (d) and subsequently Art. 21 of the Treaty. The institutions of the EU are now listed in Art. 13 TEU and comprise the Parliament, the European Council, the Council, the Commission, the Court of Justice, the European Central Bank and the Court of Auditors. 16 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung Kommentar (4th ed.), Art. 119 mn. 17. 17 See above mn. 1. 10

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CTMR Art. 119

Community Trade Mark Regulation

Italian (approx. 7 %).18 As OHIM’s application forms are standardized, applicants may use a form in a different language than that which they wish to use as filing language.19 Use of the OHIM form in a language different from the desired filing language may be of interest where the applicant’s or a representative’s working language are different from the actual filing language. Their staff may then use a form in their working language. They must, however, take care to enter the text entirely in the desired first language (especially the list of goods and services, but also additional indications, if any, such as the colour of a sign, description and disclaimer).20 Indications such as address details need not be translated, and descriptive text such as the list of goods and services, description and disclaimer can be copied into the form in the desired filing language. Where no version of the list of goods and services in the desired first language exists, translations of goods and services indications in any eligible filing language can be obtained via the TM class section of OHIM’s website.21 7 In practice, the free choice of the first language amongst all the official languages is also used for tactical purposes. Thus, apparently especially Dutch representatives successfully file with Dutch as a first language for clients from abroad.22 They are, thereby, able to influence the language available for inter partes proceedings, because only the second language can then be used for opposition or cancellation proceedings.23 This same tactic is obviously also open to other representatives – and applicants. It is, therefore, open to applicants and their representatives to make sure that a potential language of proceedings for inter parte proceedings will be the office language most amenable to the applicant. Notwithstanding the foregoing it has to be noted, however, that the choice of language cannot be changed after filing. This is because any changes after filing can only be made in accordance with Art. 43 CTMR24 and Rule 13 CTMIR. Under these provisions, changes are only admissible under very restricted circumstances, in particular where there is an obvious mistake. Therefore, where a transfer of the application is envisaged already prior to filing, the choice of languages should be such as to make sure an acquirer can continue with the application until registration without being hampered by the choice of languages.

II. Second language 8

Regardless of whether the first language is one of the languages of the Office or another one of the official languages of the EU, applicants must further indicate a second language which is different from the first language25 and one of the languages of the Office, i. e. English, French, German, Italian or Spanish. Again, the most used language is English (approx. 56 %), followed by French (approx. 20 %), German 18 These and figures on filings in other CTMs are contained in the OHIM Statistics on Community Trade Marks, available at: https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/ contentPdfs/about_ohim/the_office/SSC009-Statistics_of_Community_Trade_Marks-2014_en.pdf. 19 Rule 95 (b), second sentence CTMIR read in conjunction with Rule 83 (1), (3) CTMR. 20 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 9 21 Available at http://tmclass.tmdn.org/ec2/translatelist/show (last consulted: 18/05/2014) 22 See v. Kapf in Fezer, p. 471. 23 See Stamm below, mn. 23 and mn. 36. 24 See Vasilescu above, Art. 43 mn. 1 et seq. 25 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 9.

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Art. 119 CTMR

(approx. 12 %), Italian (approx. 7 %) and Spanish (approx. 5 %).26 The second language is a possible language of proceedings for opposition27 or cancellation28 proceedings (Art. 119 (3) CTMR). Furthermore, the second language is potentially the authentic text of the CTMA: According to the second sentence of Art. 120 (3) CTMR, where the first language is not one of the languages of the Office, the text in the second language is authentic.29 Therefore, Art. 119 (3) CTMR, second subparagraph provides that the Office will have the application translated into the second language where the first language is not one of the languages of the Office. Where applicants prefer to provide a translation themselves, the Office will accept it.30 The obligation to choose a language of the Office as second language was challenged 9 in the Kik case31: Ms Kik, a Dutch lawyer and trade mark agent applied for the word mark ‘Kik’ in Dutch and also chose Dutch as ‘second language’. Since she failed to indicate one of the languages of the Office as second language, the application was eventually rejected on the grounds of formality deficiencies32 and this was confirmed by OHIM’s Board of Appeal.33 In essence, the applicant claimed that the language regime under Art. 119 CTMR34 was unlawful and should be disregarded, arguing that Art. 6 of the former EC Treaty and Art. 1 of Regulation No 1 of the Council determining the languages to be used by the European Economic Community35 established a principle of non-discrimination between the official languages of the Community, which the language regime under the CTMR violated. The Court held, however, that there is no general principle of non-discrimination 10 between the official languages of the Member States.36 Not only was Art. 1 of Regulation No 1 of the Council determining the languages to be used by the European Economic Community37 a piece of secondary legislation and as such amenable to subsequent changes, but also was there no restriction in Art. 217 of the EC Treaty38 that language rules, once established, could not be changed in the future.39 The Court went on to hold that the language regime is also appropriate and proportionate, as the second language only comes to bear in inter parte proceedings where the parties do not share the same language preference.40

26 OHIM, Statistics on Community Trade Marks, available at: https://oami.europa.eu/tunnel-web/ secure/webdav/guest/document_library/contentPdfs/about_ohim/the_office/SSC009-Statistics_of_Community_Trade_Marks-2014_en.pdf. 27 See Stamm below mn. 19 et seq. 28 See Stamm below mn. 35 et seq. 29 See Stamm below, Art. 120 mn. 14. 30 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 10; see also Rule 85 (6) CTMIR. 31 GC CaseeT-120/99 Kik v OHIM [2001] ECR II-2238 and CJ Case C-361/01 P Kik v OHIM [2003] ECR I-8309 32 See Stamm below, mn. 16 on the consequences of deficiencies. 33 OHIM Dec. of 19.3.1999 – R 65/1998-3 – Kik 34 Then Art. 115 CTMR. 35 Available at: http://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:01958R0001-20130 701&rid=1, last visited 1 June 2014. 36 GC Case T-120/99 Kik v OHIM [2001] ECR II-2238, mn. 58. 37 Available at: http://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:01958R0001-20130 701&rid=1, last visited 1 June 2014. 38 Now Art. 342 TFEU. 39 GC Case T-120/99 Kik v OHIM [2001] ECR II-2238, mn. 58. This was confirmed on appeal by the CJ, see Case C-361/01 P Kik v OHIM [2003] ECR I-8309, mn. 93 et seq. 40 See GC Case T-120/99 Kik v OHIM [2001] ECR II-2238, mn. 63; see Stamm below mn. 52 et seq.

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CTMR Art. 119

Community Trade Mark Regulation

III. Language of proceedings 1. Correspondence language Under Art. 119 (4) CTMR, the language of proceedings for the examination of the application until registration is the first language. Not only will the Office send communications relating to the proceedings to the applicant in the first language, but also decisions by the Office must be taken in the first language. Therefore, the Office’s former practice regularly to send communications to the applicant and take decisions in the second language basing itself on the second sentence of Art. 119 (4) CTMR was illegal41. Only general communications such as cover letters accompanying procedural communications or merely informative communications may be sent in the second language.42 12 Even though the Office itself is not free to send procedural documents in the second language43, the applicant is free to choose the second language as a language of correspondence44 (the application form makes provision for this choice). This is said to be implicit in Rule 96 (1) CTMIR45; according to this provision, in ex parte proceedings and where the filing language is not one of the languages of the Office, the applicant may also submit translations of documents which are not in the language of the proceedings in the second language. If, however, applicants are permitted to file translations in the second language, they must also be permitted to use the second language from the start.46 This interpretation does not find any support in the wording of Art. 119 (4) CTMR, however.47 Nevertheless, it is current Office practice.48 The applicant may also choose the second language as correspondence language at a later point, provided the office has not yet issued a deficiency or objection letter in the first language. No such option exists, where the first language is one of the Office languages; in this case, the Office will send all correspondence relating to the registration process in the first language. If the first language is one of the languages of the Office but the applicant purports to choose the second language as correspondence language, the Office will correct this choice and inform the applicant.49 13 Strictly speaking, Art. 119 (4) CTMR only covers the examination proceedings until registration. Furthermore, if the Office refuses the mark in whole or in part, the language of proceedings for the appeal will be the same language as that used for the decision at first instance under Rule 48 (2) CTMIR. Other, ancillary proceedings which do not concern the examination of the application as such, e. g. registration of a transfer (Artt. 17 (5), 24 CTMR) or licence (Art. 22 (5) CTMR) or the division of the application (Art. 44 (1) CTMR) are not subject to Art. 119 (4) CTMR. Under Rule 95 (a) CTMIR, 11

41

Cf. CJ Case C-361/01 P Kik v OHIM [2003] ECR I-8309, mn. 43, 96. CJ Case C-361/01 P Kik v OHIM [2003] ECR I-8309, mn. 47. 43 CJ Case C-361/01 P Kik v OHIM [2003] ECR I-8309, mn. 96. 44 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 10. 45 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 119 mn. 21. 46 Schennen in Eisenfu ¨ hr/Schennen. Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 119 mn. 21. 47 See in more detail Stamm below, mn. 57. 48 OHIM, The Manual concerning Proceedings before the Office, Part A, Section 4, Language of proceedings, p. 3. 49 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 10. 42

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such proceedings may be started in the first or the second language of the application. It has to be noted, however, that the applicant is not free to choose the language for a declaration of restriction of the mark under Art. 43 (1) CTMR. In practice, the Office will only accept use of the second language for this purpose where the first language is not one of the languages of the Office and the applicant has chosen the second language as correspondence language.50

2. Supporting documents Generally, documents submitted in support of an application may be filed in any of the 14 official languages of the EU under Rule 96 (2) CTMIR. Under Rule 96 (2) CTMIR, the Office may require a translation in the language of proceedings or, at the choice of the applicant, in any of the languages of the Office. In practice, the Office usually does not request such translations. As a rule, if an examiner is unable to understand the official language used in such a document, he/she will consult a colleague who does. Rule 96 (2) CTMIR also applies to the submission of documents in support of a seniority claim in accordance with Rules 8 and 28 CTMIR.51 Since seniority documents are always in one of the official languages of the EU and since the Office does not usually request translations, this means that seniority documents do not in practice need to be translated. Special rules exist, however, for priority documents. According to Art. 30 CTMR, Rule 15 6 (3) CTMIR, where priority documents are not in one of the languages of the Office, the Office should request a translation into one of these languages. In practice, however, the Office will not request a translation as long as the priority documents are in one of the official languages of the EU, even if they are not in one of the languages of the Office.52

IV. Consequences of deficiencies In accordance with Rule 1 (1)(j) CTMIR, the first and second languages must be 16 indicated in the application for a CTM. Otherwise the Office will invite the applicant to remedy the deficiency (Rule 9 (3)(a) CTMIR). In general, if the applicant fails to remedy the deficiency within the time limit set by the Office, the application will be refused (Rule 9 (4) CTMIR).53 However, if the applicant has chosen two different languages of the Office and indicates that the second language should be used as correspondence language, the Office will merely correct this and inform the applicant.54 In practice, the Office generally sets two months time limits55, which may be extended, provided the respective request was filed before the original deadline expired.56 50 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 12. 51 Communication No 3/96 of the President, available at: https://oami.europa.eu/tunnel-web/secure/ webdav/guest/document_library/contentPdfs/law_and_practice/communications_ president/3-96_en.htm (last visited 25 May 2014). 52 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 47. 53 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 9. 54 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 10. 55 OHIM, The Manual concerning Proceedings before the Office, Part A, Section 1, Means of communication, time limits, p. 7. 56 OHIM, The Manual concerning Proceedings before the Office, Part A, Section 1, Means of communication, time limits, p. 8 et seq.

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If the applicant fails to submit translations as foreseen under Rule 96 (1) CTMIR or as requested by the Office under Rule 96 (2) CTMIR, the original document submitted in the wrong language will be deemed not to have been received by the Office (Rule 98 (2) CTMIR). Since the Office does not usually request translations where supporting documents have been filed in one of the official languages of the EU57, in the context of CTM applications, failure timely to submit a translation will only be sanctioned where priority documents need to be translated in accordance with Art. 30 CTMR, Rule 6 (3) CTMIR because they are not in one of the official languages of the EU. In such a case, the Office will first invite the applicant to submit a translation within three months (Rules 6 (3) and 9 (3)(c) CTMIR).58 This deadline can be extended once, for two months.59 If the applicant fails to submit the translation on time, the priority right is lost according to Rule 9 (6) CTMIR and the Office notifies the applicant of the loss of right.60 18 If a translation into the second language by the applicant is incomplete61, e. g. because one or several of the ‘Multilingual Elements’ (mark description, colour indication, disclaimer) have not been translated62, the Office will notify the applicant of the deficiency, setting a time limit to remedy it. If the applicant fails to do this, the Office will arrange to have the application translated into the second language (Rule 85 (6) CTMIR). 17

D. Language of inter partes proceedings I. Opposition 1. Notice of opposition Art. 119 (5) CTMR provides that the notice of opposition must be filed in a language of the Office. Where both the first and second language are languages of the Office, opponents can choose the language most agreeable to them. If the first language is not a langue of the Office, the opponent must file the opposition in the second language or later submit a translation into the second language.63 20 Further to this express provision, it is being debated whether oppositions may also be filed in a language which is not one of the Office languages, because according to Art. 119 (7) CTMR, opponent(s) and applicant may agree on a language of proceedings and Rule 16 (2) CTMIR provides that the opponent needs not to submit a translation of the notice of opposition if the latter was already filed in the language on which the parties agree as language of the proceedings. On the one hand, it is being argued that an agreement on the language of the proceedings is only possible after an admissible notice 19

57

See Stamm above, mn. 11. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 47. 59 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 47. 60 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 48. 61 Cf. Stamm above, mn. 8. 62 See OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part B, Examination, Section 2, Formalities, p. 11. 63 See Stamm below, mn. 23. 58

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of opposition has been filed under Art. 119 (5), that this is clear from Art. 119 (7) CTMR and that the text of Rule 16 (2) CTMIR is regarded as a drafting error.64 The counter-argument is that the wording of Art. 119 (7) does not contain a stipulation which would prevent the filing of an opposition notice in a language which is not one of the languages of the Office but on which the parties agree under Art. 119 (7) CTMR; furthermore, the fact that the wording of Rule 16 (2) CTMIR was already contained in a previous version of the CTMIR is taken as an indication that the text actually reflects the intended contents of the provision and is not a mere drafting error65. Despite the imprecise wording of Rule 16 (2) CTMIR, on the whole it seems more 21 probable that Art. 119 (5) CTMIR reflects the legislator’s will also for cases where the parties agree on a different language under Art. 119 (7) CTMR: For one thing, the wording of Art. 119 (7) is restricted to the choice of a ‘different language of proceedings’. Therefore it seems to refer back only to Art. 119 (6) CTMR, not Art. 119 (5) CTMR. Secondly, Art. 119 (7) CTMR provides that ‘[p]arties to opposition […] proceedings’ may agree on a different language of proceedings. Where, however, no opposition notice has been filed yet, there are no opposition proceedings and the applicant and prospective opponent are not yet ‘parties’ to any proceedings. Finally, whilst imprecise, Rule 16 (2) CTMIR does not lack a reasonable function under this interpretation: For example, the first and second language of the application might be English and French, but an opposition notice might be filed in Spanish. If the parties can agree on the use of Spanish as a different language of proceedings (in time, see Rules 16 (1) and 17 (3) CTMIR), Rule 16 (3) CTMIR would apply and the opponent would not need to file a translation of the notice of opposition. As a result, notices of opposition must be filed in one of the languages of the Office, even where the applicant concerned and the prospective opponent share the same (official EU) language which is not one of the languages of the office, but which they would like to use as language of proceedings in the opposition proceedings. Considering that it does not seem to make much sense to force parties who agree on 22 the use of a language of proceedings which is not one of the languages of the Office first to file the opposition notice in one of the Office languages and then translate it into their language of choice, a change of Art. 119 (5), (7) CTMR to the effect that the opposition notice may also be filed in another language in case the parties agree on the language seems desirable. Bearing in mind that OHIM is staffed with examiners who cover the whole range of official EU languages, this should also not pose any problems in practice. Given that agreements between parties on a different language of proceedings are very rare66, however, the need for such a reform is probably not so pressing that such an amendment would seem likely in the near future.

2. Language of proceedings Under Art. 119 (6) CTMR67, first sub-paragraph, if the opposition notice is filed in 23 one of the languages of the application, this language will be the language of proceedings. Where both the first and the second language of the application are languages of the Office, opponents can choose in which one of those they wish to conduct the 64 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 119 mn. 39. 65 Pohlmann, Verfahrensrecht der Gemeinschaftsmarke, p. 41, fn. 142. 66 v. Mu ¨ hlendahl in Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, Art. 119, mn. 6. 67 On the possibility to choose a language of the proceedings by agreement of the parties under Art. 119 (7) CTMR see Stamm below, mn. 52 et seq., 54.

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proceedings. Where only the second language is one of the languages of the Office, only the second language may become the language of proceedings for the opposition. 24 Sometimes opponents may prefer to file the notice of opposition in a language of the Office which is not one of the languages of the application, e. g. where the end of the opposition period approaches and the opponent does not speak the possible language(s) of proceedings. It may then be necessary to file the opposition notice in a different language to ‘get a foot in the door’. Under Art. 119 (6) CTMR, second sub-paragraph and Rule 16 (1) CTMIR, the opponent then must file a translation into a possible language of proceedings within one month from expiry of the opposition period. Again, where both the first and the second language of the application are languages of the Office, the opponent may choose the most appropriate language in which to submit the translation. This language will then become the language of the proceedings (Art. 119 (6) CTMR, second sub-paragraph, last sentence). Where only one of the languages of the application is one of the languages of the Office, the opposition notice must be translated into this language, which becomes the language of the proceedings.

3. Supporting documents a) Documents filed by the opponent. According to Rule 19 (3) CTMIR, opponents must submit all documents for substantiating the opposition in the language of proceedings or submit a translation into the language of the proceedings.68 This requirement regards both opponents’ written submissions and documents that they file in support of the opposition, most notably proof of the existence and scope of protection of their earlier rights. It must be noted that Rule 19 (3) CTMIR, unlike Rule 96 (1) CTMIR, requires that translations be filed before the expiry of the time limit for submitting the original document. This means opponents cannot not gain time by filing documents in a different language and then submit the translation later. Having said as much, the time limit for substantiating the opposition is set by the Office according to Rule 19 (1) CTMIR. As a time limit set by the Office it is extendable (Rule 71 CTMIR). Opponents having difficulties to get the required translations together may thus request an extension of the substantiation period, provided the original time limit has not lapsed at the time of the request.69 Rule 19 (3) CTMIR only deals with the substantiation phase of the oppositions, though. It is lex specialis to Rule 96 CTMIR.70 Rule 96 (1) CTMIR applies to written submissions that the opponent files later during the proceedings (e. g. reply by the opponent to the applicant’s observations) and Rule 96 (2) CTMIR to documents attached to such submissions. It has to be noted that the Office will set no explicit deadlines for documents due to be translated under Rule 96 (1) CTMIR. Opponents have to file the translation on their own initiative and timely.71 26 A further exception to the aforementioned general rule (Rule 96 CTMIR) exists where opponents have to submit documents as proof of use: According to Rule 22 (6) CTMIR, documents submitted as proof of use need only be translated upon express 25

68

On the consequences of deficiencies see Stamm below, mn. 31. OHIM, The Manual concerning Proceedings before the Office, Part A, Section 1: Means of Communication, Time Limits, p. 9; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 72. 70 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 44. 71 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 46. 69

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request by the Office. In deciding whether to request a translation, the Office will balance the interests of both parties72 and may expressly invite opponents to translate the parts of the evidence on use that they regard as sufficient to prove genuine use.73 b) Documents filed by the applicant. As Rule 19 CTMIR only concerns written 27 submissions and evidence to be filed by opponents and only in the substantiation phase of the opposition and as there is no specific provision dealing with written submissions and evidence filed by applicants in opposition proceedings, Rule 96 (1) CTMIR applies to written submissions74 and Rule 96 (2) CTMIR to documents filed by applicants. Applicants may therefore file their written submissions, if any, in any language of the Office and provide a translation thereof into the language of proceedings within one month from the date of the submission of the original document (Rule 96 (1) CTMIR, second sentence). Rule 96 (2) CTMIR permits documents as evidence to be filed in any language of the Community. Furthermore, they only need to be translated upon request by the Office and may be translated not only in the language of proceedings but, at the choice of the party to the proceeding, in any language of the Office.

4. Consequences of deficiencies a) Language deficiencies regarding the notice of opposition. If the opposition notice 28 is not filed in a language of the Office, the opposition will be rejected as inadmissible, unless the opposition notice was filed in one of the official languages of the EU, on one of the official forms in one of the languages of the Office and does not contain any textual elements requiring translation for the purpose of the admissibility check.75 If the opponent files the opposition notice in a language of the Office other than the 29 potential language(s) of proceedings and does not submit a translation within one month from the expiry of the opposition period (Rule 16 (1) CTMIR), the opposition will be rejected outright as inadmissible (Art. 17 (3) CTMIR). The opponent will not be set a time limit to remedy the lack of translation.76 If the time limit is missed, continuation of proceedings (Art. 82 CTMR) is available though.77 If the opponent only submits a partial translation, only those parts of the opposition notice that were correctly translated will be taken into account for the admissibility check of the opposition (Rule 17 (3) CTMIR, second sentence). Where opponents file the opposition using the OHIM standard form and the desired 30 language of proceedings is unclear, e. g. because they use a form in one of the languages of the office which cannot be the language of proceedings or in another official language of the EU and the desired language cannot be deduced from the text filled in the form,

72 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 6, Proof of Use, p. 74. 73 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 6, Proof of Use, p. 74. 74 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 45. 75 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 10–11. 76 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 119 mn. 39. 77 OHIM, The Manual concerning Proceedings before the Office, Part A, Section 1: Means of Communication, Time Limits, p. 11.

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because they only ticked the appropriate boxes and gave address details, they will be asked to indicate the desired language of proceedings within a time limit of two months.78 b) Language deficiencies regarding documents submitted by the opponent. Where opponents fail timely79 to submit the documents for substantiating the opposition (written submissions and/or documents as evidence) in the language of proceedings or to submit a translation of them (Rule 19 (3) CTMIR), they or the parts of them that were not in the language of proceedings will not be taken into account (Rule 19 (4) CTMIR). NB: If the time limit is missed, continuation of proceedings (Art. 82 CTMR) is not available.80 32 Where opponents fail timely to translate submissions and documents filed as proof of use despite a respective request by the Office, the documents submitted will only be taken into account insofar as they are self-explanatory.81 NB: Whilst most copies of advertisements and catalogues tend to being self-explanatory because they usually show the mark and the goods, the descriptive text contained in invoices cannot serve to prove the use of the mark for certain goods or services if they were not translated. If opponents miss the time limit to translate evidence on use which requires translation, continuation of proceedings and restitutio in integrum are available.82 33 Apart from the specific rules regarding the translations of the notice of opposition, the substantiation of the opposition and the submission of proof of use, the consequences of missing time limits regarding translations of written submissions or documents are the same for the opponent as for the applicant. 31

34

c) Language deficiencies regarding documents submitted by the applicant. Where translations of written submissions are required under Rule 96 (1) CTMIR or translations of documents are required under Rule 96 (2) CTMIR83 but not filed or not filed on time, the documents will be deemed not to have been received by the Office (Rule 98 (2)(a) CTMIR). Continuation of proceedings and restitutio in integrum are available84.

II. Cancellation 1. Application for revocation or invalidity 35

The language regime for cancellation proceedings is essentially like that for opposition proceedings. Thus, applications for revocation or invalidity must be filed in one of 78 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 11. 79 See Stamm above, mn. 25. 80 Cf. Art. 82 (2) CTMR and OHIM, The Manual concerning Proceedings before the Office, Part A, Section 1: Means of Communication, Time Limits, p. 10. 81 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 6, Proof of Use, p. 74. 82 OHIM, The Manual concerning Proceedings before the Office, Part A, Section 1: Means of Communication, Time Limits, p. 11; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part A, General Rules, Section 8, Restitutio in integrum, p. 5 et seq. (implied: The consequence of a failure to translate documents submitted as proof of use results in the disregard of the untranslated text bits). 83 See Stamm above, mn. 27. 84 OHIM, The Manual concerning Proceedings before the Office, Part A, Section 1: Means of Communication, Time Limits, p. 10 et seq.; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part A, General Rules, Section 8, Restitutio in integrum, p. 5 et seq. (implied: The consequence of a failure to translate documents results in the disregard of the submissions and documents).

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the languages of the Office.85 The cancellation applicants can use the official forms provided for this purpose by OHIM. Like in opposition proceedings, this may trigger certain exceptions with regard to the translation.86 If cancellation applicants do not file the application in one of the languages of the attacked CTM, they have to submit a translation into a possible language of proceedings within a month from the date on which the Office received the cancellation application (Rule 38 (1) CTMIR). The translation must be submitted on the cancellation applicant’s on initiative – the Office will not send a letter to inform him about the translation requirement.87

2. Language of proceedings Under Art. 119 (6), the possible languages of proceedings are the languages used for 36 the application for the – now registered – CTM, provided both are languages of the Office. If the first language is another official language of the EU, only the second language is available as language of proceedings.88

3. Supporting documents a) Documents filed by the cancellation applicant. The cancellation applicant must 37 file the documents supporting the revocation/invalidity application (e. g. evidence on the existence and scope of protection of the earlier rights) in the language of the proceedings or else submit a translation thereof in that language within two months after filing the original submissions/documents (Rule 38 (2) CTMIR).89 To written submissions or evidence filed at a later stage of the proceedings, as a rule, 38 Rules 96 (1) respectively 96 (2) CTMIR apply.90 An exception exists in invalidity proceedings based on relative grounds: Where the cancellation applicant has to furnish proof of use of the earlier right(s), Rule 22 (6) applies and a translation needs only to be furnished at the request of the Office.91 b) Documents filed by the proprietor of the CTM. To the written submissions and 39 documents filed as evidence by the CTM proprietor the general rules apply, i. e. Rule 96 (1) CTMIR in respect of written submissions (e. g. the reply to the cancellation applicant’s arguments) and Rule 96 (2) CTMIR regarding documents submitted as evidence (e. g. proof of a recent cancellation of the earlier right).92 An exception exists where the CTM proprietor needs to file evidence as proof of 40 use.93 Although no express reference to Rule 22 (6) CTMIR is contained in Rule 40 (5) 85

As for the details, see Stamm above, mn. 19 et seq. See OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part D, Cancellation, Section 1, Proceedings, p. 12 and OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 11–12. 87 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part D, Cancellation, Section 1, Proceedings, p. 12. 88 Cf. Stamm above, mn. 23 et seq.; on the possibility to choose a language of the proceedings by agreement of the parties under Art. 119 (7) CTMR see Stamm below, mn. 52 et seq., 55. 89 OHIM Dec. of 5.3.2012 – R 826/2010-4 – Manufacture Prim – mn. 25 90 Cf. Stamm above mn. 25. 91 See Stamm above mn. 26 and 32. 92 Cf. Stamm above mn. 27. 93 I.e. if a revocation is based on Art. 51 (1)(a) CTMR. 86

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CTMIR, there is consensus that Rule 22 (6) CTMIR applies mutatis mutandis.94 This means a translation of such proof of use only needs to be furnished upon request by the Office.95

4. Consequences of deficiencies 41

42

43

44

45

If the cancellation applicant does not file the revocation/invalidity application in the language of the proceedings or does not submit a translation thereof in that language within one month after filing the original application (Rule 38 (1) CTMIR), the application will be rejected as inadmissible (Rule 39 (2) CTMIR). If the cancellation applicant fails to submit evidence required for the admissibility of the cancellation application (Rule 37 CTMIR) in the language of proceedings, the Office will send a deficiency letter setting a time limit to submit a translation of the evidence in accordance with Rule 39 (3) CTMIR.96 If no such translation is submitted within the time limit, the application will be rejected as inadmissible. If only part of the evidence was translated or if part of the evidence did not require translation, the application may be partially admissible and will only partially be rejected as inadmissible.97 If and to the extent the cancellation applicant fails to submit evidence which is not already required for admissibility purposes in the correct language or duly followed by a translation, Rule 98 (2) CTMIR applies, and the evidence will be deemed not filed.98 Equally, if the CTM proprietor fails timely to submit a translation of written submissions or documents submitted as evidence, such submissions or documents will be deemed not filed (Rule 98 (2) CTMIR).99 Documents submitted as proof of use, either by the cancellation applicant pursuant to Art. 57 (2), (3) CTMR or by the CTM proprietor pursuant to Art. 51 (1)(a) CTMR, may be self-explanatory and will then not be disregarded, even if the party concerned fails to submit a translation requested by the Office under Rule 22 (6) CTMIR.100

III. Translation requirements 46

Any translations that have to be filed in proceedings before OHIM need to identify the original document which they translate and must reproduce the structure and contents of the original document (Rule 98 (1) CTMIR). This means the translation 94 OHIM Dec. of 11.3.2010 – R 167/2009-1 – Ina/Ina – mn. 24; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part D, Cancellation, Section 1, Proceedings, p. 14. 95 Cf. Stamm above mn. 26 and 32. 96 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part D, Cancellation, Section 1, Proceedings, p. 12. 97 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part D, Cancellation, Section 1, Proceedings, p. 13. 98 OHIM Dec. of 5.3.2012 – R 826/2010-4 – Manufacture Prim – mn. 25; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part D, Cancellation, Section 1, Proceedings, p. 13. 99 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part D, Cancellation, Section 1, Proceedings, p. 13 (but note that documents submitted by the CTM proprietor in one of the official languages of the EU which do not concern proof of use need only be translated upon request by the Office). 100 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part D, Cancellation, Section 1, Proceedings, p. 14; see also Stamm above, mn. 32.

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must work on a stand alone basis and the Office will not accept references to several different documents containing parts of the information required in the language of proceedings. As a rule, it is not enough, therefore, to enter the list of goods and services of the earlier mark in the opposition form in the language of the proceedings and submit the certificate of the earlier mark containing that list in another language without submitting a separate translation.101 The Office makes an exception, however, if the evidence on the earlier right(s) is nearly entirely in the language of proceedings and/or uses INID codes and the only information left to be translated is the list of goods and services. In such a case a separate translation of those goods and services on which the opposition is based, either in the opposition notice or later in the documents submitted to substantiate the opposition is acceptable102. In practice, opponents also file extracts of commercial databases in the language of proceedings together with the original certificate of the earlier right(s) in (an)other language(s). The Office only accepts such database extracts as a valid translation of the certificate(s) under Rule 98 (1) CTMIR if they represent the structure and contents of the registration certificate(s) of the earlier right(s).103 Similarly, where some national Offices also provide database excerpts on registered trade marks in the language of proceedings (e. g. some national offices provide the contents of their databases also in English), all text elements must be translated. This is because elements such as indications concerning the type of mark or the status of the mark, i. e. whether it is registered or opposed or similar, may have a bearing on the case because they are relevant for the scope of protection or determining the validity of the mark.104 Whilst the Office and the courts are strict as regards the contents of translations, certificates as to their correctness (cf. Rule 98 (1) CTMIR, second sentence) are hardly ever requested. Likewise, the Office is also not strict as to form in that it accepts handwritten translations on copies of the original evidence, provided they are legible and all the necessary text bits have been translated.105

47

48

49

50

51

IV. Choice of language by agreement of the parties Under Art. 119 (7) CTMR, the parties to opposition or cancellation proceedings may 52 deviate from the general rule that the language of proceedings must be a language of the Office and one of the two languages of the application or registration.106 101 Cf. OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 43. 102 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 44. 103 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 44. 104 GC Case T-479/08 adidas v OHIM-Patrick Holding [2011] ECR II-00335 mn. 45 and 50 et seq. 105 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 44. 106 Cf. Stamm above, mn. 23 et seq.

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Community Trade Mark Regulation

Where the parties can agree on a language of proceedings under this provision, they may choose to conduct the proceedings in another official EU language or in a language of the Office which is not one of the languages of the application or registration. 54 In opposition proceedings, the parties must notify the Office of such an agreement before the expiry of the cooling off period (Rules 16 (2), 18 (1) CTMR).107 Where the opposition notice had not been filed in the language of choice108, the opponent must provide a translation into that language within one month from the date on which the inter partes proceedings start. Otherwise the language of proceedings remains unchanged (Rule 16 (2) CTMIR).109 55 This choice is also open to the parties in cancellation proceedings, provided they inform the Office of their choice within two months from the date the application for revocation or the application for invalidity is notified to the CTM proprietor in accordance with Rule 40 (1) CTMIR.110 The cancellation applicant must file a translation of the application for revocation or invalidity within one month from the date the parties communicated their agreement to the Office, unless the application for revocation or invalidity was already in the chosen language of proceedings.111 53

E. Appeal proceedings Art. 119 CTMR does not contain specific rules regarding the language of proceedings in appeal proceedings, nor does the CTMIR. Rule 48 (2) CTMIR merely stipulates that the notice of appeal must be filed in the language of the proceedings in which the decision under appeal was taken. Otherwise the appeal will be rejected as inadmissible (Rule 49 (1) CTMIR). The notice of appeal also exists as an official OHIM form, which may be used in any language, provided any textual elements are introduced in the proper language of proceedings.112 Furthermore, the appeal is filed timely, where the notice of appeal is submitted on time but in the wrong language and the appellant submits a translation into the correct language within one month of the submission of the original notice of appeal.113 Rule 50 (1) CTMIR provides furthermore that failing special rules for appeal proceedings the provisions regarding the respective set of proceedings at first instance are applicable to appeal proceedings mutatis mutandis. Therefore, as a general rule, the language of proceedings in appeal proceedings will be the same as in the preceding instance. 57 Exceptionally, it is proposed that the applicant in ex parte proceedings (namely in appeals against the Office’s decision to (partially) refuse registration of the mark) may choose between the first and second language as language for the appeal, if the first language is not one of the languages of the Office and the Office took the decision in the 56

107 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 47. 108 On the requirement to file the notice of opposition in one of the languages of the Office even where they agree on a different language of proceedings see Stamm above mn. 20 et seq. 109 OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part C, Opposition, Section 1, Procedural Matters, p. 48. 110 Rule 38 (3) CTMIR, first sentence; OHIM, Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) on Community Trade Marks, Part D, Cancellation, Section 1, Proceedings, p. 11. 111 In any event, even where the parties agree on a different language of proceedings, the application for revocation or invalidity must be filed in one of the languages of the Office – see Stamm above mn. 20 et seq. 112 v. Kapff in Fezer, Handbuch der Markenpraxis, 2nd edition, p. 814. 113 OHIM Dec. of 7.6.2007 – R 667/2005-G – Cardiology Update – mn. 14.

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second language following the applicant’s choice of the second language as language of correspondence.114 Whilst this proposal is applicant-friendly, it does not seem to match the wording of Rule 48 (2) CTMIR which provides that the appeal shall be filed ‘in the language of proceedings in which the decision […] was taken’, i. e. Rule 48 (2) presupposes that the decision at first instance is taken in the language of proceedings of the first instance. In view of the wording of Art. 119 (4) CTMR and its interpretation in the Kik case115, of course, the language of proceedings in the examination phase must always be the first language of the application.116 Based upon a literal interpretation of Art. 119 (4) CTMR and Rule 48 (2) CTMIR, therefore, the language of proceedings both in the first instance and on appeal would always be the first language. The current practice to allow the applicant to choose the second language as ‘correspondence language’ is de facto a choice of language of proceedings117 against the wording of Art. 119 (4) CTMR. Therefore, on appeal the applicant should be allowed to revert to the correct language of proceedings (first language) as language of the appeal. Considering that the applicant could choose also the second language as language of proceedings in the first instance, it is furthermore only consistent to allow applicants to continue in that language if they go on appeal. If applicants are to choose the language of proceedings freely in ex parte proceedings, like parties to inter partes proceedings may do under Art. 119 (7) CTMR, however, the wording of the language regime both in the CTMR and in the CTMIR should be adjusted accordingly. The present practice does not fit the wording of the main relevant provision (Art. 119 (4) CTMR) and no good reasons seem to exist why an applicant whose first language is not one of the languages of the Office should be allowed to choose whilst applicants who chose two languages of the office must under all circumstances conduct both first instance and appeal proceedings in the first language. Finally, where the first instance decision concluding the examination phase is taken 58 in the second language without the applicant’s express consent, the decision is vitiated by an error of law.118 However, whilst the decision at first instance should always be taken in the lawful language of proceedings, the applicant cannot be put at a disadvantage by the Office’s wrong choice of language – the appeal filed in the language of the decision is deemed admissible even if the language of the decision appealed is not a valid language of proceedings.119 In appeal proceedings against decisions concluding inter partes proceedings (opposi- 59 tion, cancellation proceedings), the general rule applies120 and the language of the first instance decision also becomes the language of proceeding for the appeal proceedings. Here also, where the Office erroneously takes the decision at first instance in the wrong 114 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 119 mn. 65 et seq.; v. Kapff in Fezer, Handbuch der Markenpraxis, 2nd edition, p. 815; on the practice of the Office to allow the applicant to choose the second language as ‘correspondence language’ if the first language is not one of the languages of the Office see Stamm above, mn. 12. 115 CJ Case C-361/01 P Kik v OHIM [2003] ECR I-8309, mn. 96. 116 CJ Case T-242/02 Top [2005] ECR II-2797, mn. 32, 36, 38; OHIM Dec. of 7.6.2007 – R 667/2005-G – Cardiology Update – mn. 14. 117 Contrary to CJ Case C-361/01 P Kik v OHIM [2003] ECR I-8309, mn. 96, the Office does not send just cover letters and informative communications to the applicant, but the whole examination stage is dealt with, and the Office also takes the first instance decision, in the second language if the applicant ticks the appropriate box in OHIM’s application form. 118 OHIM Dec. of 28.2.2001 – R 662/2000-3 – SeniorCare – mn. 9; see also v. Kapff in Fezer, Handbuch der Markenpraxis, 2nd edition, p. 814. 119 OHIM Dec. of 28.2.2001 – R 662/2000-3 – SeniorCare – mn. 9; see also v. Kapff in Fezer, Handbuch der Markenpraxis, 2nd edition, p. 814. 120 See Stamm above, mn. 56.

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Community Trade Mark Regulation

language, an appeal filed in the same language is admissible. Furthermore, the decision at first instance will not be annulled merely because of the procedural error relating to the language of the decision if the parties clearly understood the decision and did not object to the choice of language.121 60 Whilst Rule 48 (2) CTMIR only expressly mentions the language of the notice of appeal, there is consensus that also the grounds of appeal (Art. 60 CTMIR, third sentence) must be in the same language or else translated in accordance with Rule 96 (1) CTMIR.122 Where appellants do not file a translation of the grounds of appeal on their own initiative within one month of submission of the original document (Rule 96 (1) CTMIR), they will be notified of the deficiency and a time limit will be set to allow them to rectify it, failing which the appeal will be rejected as inadmissible (Rule 49 (2) CTMIR).

F. Oral proceedings As a rule, there are hardly any oral proceedings before the Office. Proceedings before OHIM are generally only conducted in writing, especially in examination proceedings. Rule 97 CTMIR does, however, make provision for oral proceedings and stipulates as a general rule that oral proceedings are to be dealt with in the language of proceedings. Applicants in examination proceedings are free, however, to arrange for translation into the language of proceedings at their own expense and present their case in another official language of the EU. In ex parte proceedings, both applicants and Office staff are further free to use either the first or the second language of the application in oral proceedings (Rule 97 (1) CTMIR, second sentence, Rule 97 (2) CTMIR, first sentence). Both the first or second language may also be used for hearing witnesses for taking evidence (Rule 97 (3) CTMIR, third sentence) and the Office may, upon request of the applicant, permit deviations from the language regime under Rule 97 (3) CTMIR. 62 In inter partes proceedings (opposition and cancellation, appeals relating to such proceedings), the choice of language is generally restricted to the language of proceedings, unless the party deviating from that rule provides for translation in that language Rule 97 (1) CTMIR. Further, where the staff of the Office uses a language of the Office different from the language of proceedings, this is only possible with the parties’ consent (Rule 97 (2) CTMIR). Also where witnesses are heard for taking evidence in a different language the party requesting it must provide for translation in the language of proceedings (Rule 97 (3) CTMIR, first sentence). Deviations from these rules are possible only where both the parties and the Office agree (Rule 97 (4) CTMIR). 63 In general, where responsibility for the necessity of interpretation is not attributable to a party, the Office will provide for it (Rule 97 (5) CTMIR). Any oral statements in the proceedings made in one of the languages of the Office are to be entered into the minutes in their original language; statements made in another language will be entered in the minutes in the language of proceedings (i. e. translated – Rule 97 (6) CTMIR). 61

121

OHIM Dec. of 20.2.2002 – R 794/2001-3 – SeniorCare – mn. 17. See OHIM Dec. of 7.6.2007 – R 667/2005-G – Cardiology Update – mn. 13 and v. Kapff in Fezer, Handbuch der Markenpraxis, 2nd edition, p. 815. 122

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Art. 120 CTMR

Article 120 Publication and entries in the Register 1. An application for a Community trade mark, as described in Article 26 (1), and all other information the publication of which is prescribed by this Regulation or the Implementing Regulation, shall be published in all the official languages of the European Community. 2. All entries in the Register of Community trade marks shall be made in all the official languages of the European Community. 3. In cases of doubt, the text in the language of the Office in which the application for the Community trade mark was filed shall be authentic. If the application was filed in an official language of the European Community other than one of the languages of the Office, the text in the second language indicated by the applicant shall be authentic. Content A. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Publication of applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Languages and contents of publications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Correction of errors in translations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . C. Entries in the Community trade mark register. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Overview. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Entries relating to the mark as such. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. Entries relating to changes regarding the mark. . . . . . . . . . . . . . . . . . . . . . . . . . D. Authoritative language in doubtful cases. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Authenticity of the first language . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Authenticity of the second language . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 2 5 7 7 10 11 12 12 14

A. General Art. 120 CTMR sets out the language regime for publications in the Community 1 Trade Marks Bulletin1 and entries in the Register2 within the framework of Community trade mark law. It provides, that trade mark applications are to be published and entries in the Community trade mark register to be made in all the official languages of the EU (Art. 120 (1), (2) CTMR). It further determines which of the languages of any CTMA/ CTM shall be authentic (Art. 120 (3) CTMR). Rules 12, 84 and 85 CTMIR implement the broad framework of Art. 120 CTMR. In sum, therefore, Art. 120 CTMR ensures that the relevant public in the EU can take note of the relevant information regarding any CTM(A) and helps to avoid uncertainties which might arise otherwise out of the use of different languages with regard to the filing process, inter parte proceedings concerning the mark and the publications and entries in the register.

1 Art. 89 (a) CTMR – for details on the Community Trade Mark Bulletin see Staber above, Art. 89 mn. 1 et seq. 2 Art. 87 CTMR – for details on the Register of Community Trade Marks see Staber above, Art. 87 mn. 1 et. seq.

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CTMR Art. 120

Community Trade Mark Regulation

B. Publication of applications I. Languages and contents of publications Under Art. 120 (1) CTMR, Community trade mark applications3 must be published in all of the official languages of the EU, namely at present 234, including Croatian but excluding Irish: Whilst also Irish is one of the official languages of the EU, according to the temporary derogation measures still currently applicable to Irish5, only Regulations adopted jointly by the European Parliament and the Council will also be drafted and translated in the Irish language. 3 Art. 120 (1) CTMR is supplemented by Rule 12 CTMIR, which enumerates the data that has to be published, such as the applicant’s6 and representative’s7 name and address, the reproduction of the mark, where applicable in colour, including indications as to type of mark and description of the mark, if any8, the list of goods and services9, filing date and file number10, relevant data on any priority11, exhibition priority12 or seniority claims13, an indication of acquired distinctiveness14, that the mark is a collective mark15, or a disclaimer16 where applicable, the first and second languages of the application17, and, if applicable, an indication that the mark results from a transformation of an international registration designating the EU.18 4 Furthermore, under Rule 85 (2) CTMIR, also entries in the Register19 are to be published in the Community Trade Mark Bulletin. 2

II. Correction of errors in translations 5

As a rule, the translations received from the Translation Centre of the Bodies of the European Union20 are published without prior examination by the Office.21 Where the 3 A special publication regime applies to international registrations designating the EU and subsequent designations – see Bo¨sling below, Art. 152 mn. 1 et seq. 4 Namely Bulgarian, Croatian, Czech, Danish, Dutch, German, Greek, English, Estonian, Finnish, French, Hungarian, Italian, Lithuanian, Latvian, Maltese, Polish, Portuguese, Romanian, Slovakian, Slovenian, Spanish, and Swedish. 5 See Art. 1 of Council Regulation (EU) No 1257/2010 of 20 December 2010, OJ L 343 of 29.12.2010, p. 5 and Art. 2 of Regulation (EC) No 920/2005 of 13 June 2005, OJ L 156 of 18.6.2005, p. 3. 6 Rule 12 (a) CTMIR. 7 Other than employee-representatives, Rule 12 (b) CTMIR. 8 Rule 12 (c) CTMIR. 9 Rule 12 (d) CTMIR. 10 Rule 12 (e) CTMIR. 11 Rule 12 (f) CTMIR. 12 Rule 12 (g) CTMIR. 13 Rule 12 (h) CTMIR. 14 Rule 12 (i) CTMIR. 15 Rule 12 (j) CTMIR. 16 Rule 12 (k) CTMIR. 17 Rule 12 (l) CTMIR; cf. also Stamm above Art. 119 mn. 6 et seq. 18 Rule 12 (m) CTMIR. 19 On the details see Stamm below, mn. 8 et seq. 20 See Stamm below, Art. 121 mn. 1 et seq. 21 Communication of the President No. 5/1997 concerning translations of applications and their examination, available at https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/ content Pdfs/law_ and_practice/communications_president/5-97_en.htm, last visited 1 June 2014.

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Art. 120 CTMR

first language is authentic22 and it comes to light that a translation in one of the other languages, including the second language, contains an error, this will be corrected upon the publication of the registration of the CTM.23 Where a mistake in the second language version is detected in opposition proceedings, the Office will make the necessary corrections in the framework of the opposition proceedings and the corrected translation will be published together with the registration of the CTM registration.24 Where applicants supply the translation in the second language of their own motion, corrections will only be made upon request if the Office deems that in fact an error was committed.25 Where the second language is authentic26 and applicants have not furnished a 6 translation into the second language of their own initiative, they will be communicated the translation and may comment on it. If errors are detected at a later stage, corrections will only be made where the errors are obvious. Where such errors concern certain goods and services and a correction is necessary, the corrected list will be published again under Rule 14 (3) CTMIR and a new opposition period will start with respect to the amended goods and services only.27 The same applies where applicants supply a translation of their own but the Office does not notice any error before publication of the application.28

C. Entries in the Community trade mark register I. Overview According to Art. 120 (2) CTMR, all entries in the Community trade mark register must 7 be made in all the official languages.29 This provision is supplemented by Rule 84 CTMIR. Rule 84 (1) CTMIR provides that the Community trade mark register may be maintained in the form of an electronic database, and this is actually also the case in practice. Rule 84 (2) and (3) CTMIR go on to enumerate the data which must be entered in 8 the Community trade mark register, Rule 84 (4) CTMIR empowers the President of the Office to determine further data to be entered in the register, Rule 84 (5) CTMIR provides that the trade mark proprietor is to be notified of any changes in the entries concerning the mark and Rule 84 (6) CTMIR caters for the emission of certified or uncertified extracts of the Register by the Office against a fee. 22

See Stamm below, mn. 12 et seq. Communication of the President No. 5/1997 concerning translations of applications and their examination, available at https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/ content Pdfs/law_ and_practice/communications_president/5-97_en.htm, last visited 1 June 2014. 24 Communication of the President No. 5/1997 concerning translations of applications and their examination, available at https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/ content Pdfs/law_ and_practice/communications_president/5-97_en.htm, last visited 1 June 2014. 25 Communication of the President No. 5/1997 concerning translations of applications and their examination, available at https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/ content Pdfs/law_ and_practice/communications_president/5-97_en.htm, last visited 1 June 2014. 26 See Stamm below, mn. 14 et seq. 27 Communication of the President No. 5/1997 concerning translations of applications and their examination, available at https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/ content Pdfs/law_ and_practice/communications_president/5-97_en.htm, last visited 1 June 2014. 28 Communication of the President No. 5/1997 concerning translations of applications and their examination, available at https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/ content Pdfs/law_ and_practice/communications_president/5-97_en.htm, last visited 1 June 2014. 29 On the official languages, see Stamm above, mn. 2, fn. 4. 23

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Community Trade Mark Regulation

Since the scope of protection of a CTM(A) covers the whole of the EU, Art. 120 (2) CTMR together with Rule 84 (2) and (3) CTMIR ensure that the relevant public is able to take note of the relevant particulars concerning any CTMA or CTM by providing that this information is published in all the official languages of the EU.

II. Entries relating to the mark as such 10

In principle, all the data concerning a Community trade mark application/registration that must be published must also be entered in the register.30 Furthermore, Rule 84 (2)(o) CTMIR provides that the registration date and number must also be entered in the register.

III. Entries relating to changes regarding the mark 11

Whilst Rule 84 (2) CTMIR concerns all the original data referring to the filing and registration process of the Community trade mark, Rule 84 (3) CTMIR lays down which data concerning relevant subsequent changes are to be entered in the register, namely changes in the name, address or nationality of the CTM proprietor31, changes in the name or business address of the representative32, the name and business address of a new representative, if any33, changes to the mark as far as admissible and corrections of errors and mistakes34, changes to the regulations of use of collective marks35, particulars on post registration seniority claims36, total or partial transfers of the mark37, particulars on rights in rem created or transferred38, particulars on levies of execution and insolvency proceedings concerning the mark39, particulars on grants and transfers of licences40, particulars on renewals and restrictions, if any, of the mark41, information on the expiry of the mark42, a declaration of surrender concerning the mark43, the date of receipt of a cancellation application or a counterclaim in infringement proceedings concerning the mark44, the decision date and result regarding cancellation proceedings or counterclaim proceedings aiming at the cancellation of the mark45, particulars on the receipt of a request for conversion46, the cancellation of the former registered representative47, the 30 On the data to be published cf. Stamm above, mn. 3; only the order of the data mentioned in Rule 84 (2) CTMIR is slightly changed compared to Rule 12 CTMIR. 31 Rule 84 (3)(a) CTMIR. 32 Other than employee-representatives, Rule 84 (3)(b) CTMIR. 33 Rule 84 (3)(c) CTMR. 34 Rule 84 (3)(d) CTMIR, with reference to Art. 48 CTMR, which lists the only changes to the mark admissible. 35 Rule 84 (3)(e) CTMIR. 36 Rule 84 (3)(f) CTMIR. 37 Rule 84 (3)(g) CTMIR. 38 Rule 84 (3)(h) CTMIR. 39 Rule 84 (3)(i) CTMIR. 40 Rule 84 (3)(j) CTMIR. 41 Rule 84 (3)(k) CTMIR. 42 Rule 84 (3)(l) CTMIR. 43 Rule 84 (3)(m) CTMIR. 44 Rule 84 (3)(n) CTMIR referring to Artt. 56 and 96 (4) CTMR. 45 Rule 84 (3)(o) CTMIR referring to Artt. 57 (6) and 100 (4) CTMR. 46 Rule 84 (3)(p) CTMIR. 47 Rule 84 (3)(q) CTMIR.

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Publication and entries in the Register

Art. 120 CTMR

cancellation of a seniority of a national mark48, changes to or cancellations of entries regarding rights in rem, levies of execution, insolvency proceedings or grants or transfers of licences concerning the mark49, the replacement of the mark by an International Registration in accordance with Art. 157 CTMR50, date and number of an International Registration based on a Community trade mark application51 or Community trade mark52, particulars on the division of the trade mark53, and particulars on revocations of decisions or entries in the register under Art. 80 CTMR.54

D. Authoritative language in doubtful cases I. Authenticity of the first language As any Community trade mark application must indicate two languages, the first as 12 filing language and most often the language of proceedings during the examination phase until registration and the second as a possible language of proceedings for inter partes proceedings (opposition and cancellation) and given that all the relevant particulars concerning a CTM(A) are published and entered in the register, discrepancies may arise regarding the details in different languages. Art. 120 (3) CTMR therefore determines which language version is authoritative in cases of doubt. According to Art. 120 (3) CTMR, first sentence, as a rule the language in which the 13 application was filed shall be authentic. In such a case, all the translations in the other languages of the EU, including the translation in the second language of the application, are merely informational in nature.

II. Authenticity of the second language However, where the filing language was not one of the languages of the Office, the 14 second language shall be authentic (Art. 120 (3), second sentence). Given that the second language is authentic where the first language is not one of the languages of the Office, the applicant must be heard on the translation proposed by the Office in accordance with Art. 119 (3) CTMIR, second sub-paragraph (Rule 85 (6) CTMIR). In this context, the applicant may make suggestions as to the wording of the translation, which the Office will accept, unless they are erroneous. Where the applicant and the Office cannot agree on a wording, the Office’s suggestion will prevail. Under Rule 85 (6) CTMIR, first sentence, applicants may also opt for providing the 15 translation into the second language themselves. Where a translation is provided by the applicant, the Office will not usually examine the translation but assume that it is correct. If it detects an error, however, the Office will suggest corrections. Again, the applicant will be heard in accordance with Rule 85 (6) CTMIR, but where the Office and the applicant cannot agree on a wording, the wording suggested by the Office prevails. 48

Rule Rule 50 Rule 51 Rule 52 Rule 53 Rule 54 Rule 49

84 (3)(r) CTMIR. 84 (3)(s) CTMIR. 84 (3)(t) CTMIR. 84 (3)(u) CTMIR. 84 (3)(v) CTMIR. 84 (3)(w) CTMIR. 84 (3)(x) CTMIR.

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CTMR Art. 121

Community Trade Mark Regulation

Article 121 The translation services required for the functioning of the Office shall be provided by the Translation Centre for the Bodies of the European Union. Bibliography: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Cologne 2014; Fontenelle, ‘The Translation Centre for the Bodies of the European Union: Purpose and Activities’, SYNAPS – A Journal of Professional Communication 26/2011, Gielen/v. Bomhard (ed.), Concise European Trade Mark and Design Law, 2011.

Content I. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Scope of activities. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . III. OHIM in-house translation resources . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 4

I. General 1

The Translation Centre for the Bodies of the European Union is an agency of the EU and situated in Luxemburg. The Translation Centre was established by Council Regulation (EC) No. 2965/94 of 28 November 1994 setting up a Translation Centre for bodies of the European Union1. The Translation Centre was set up in order to cater for a large number of EU agencies. In 2011, it cooperated with 56 EU institutions and bodies, of which OHIM was by far the biggest client.2 The Translation Centre works with a network of free-lance translators and revises the texts received from them.3

II. Scope of activities 2

The Translation Centre deals with the translations of the Community trade mark applications which need to be published in all the official languages of the EU pursuant to Art. 120 (1) CTMR. The Office does not usually check the translations received from the Translation Centre.4 Furthermore, the Translation Centre also translates other documents such as official forms or OHIM’s examination guidelines. These documents are, however, revised by OHIM staff.5

1 Available at http://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:01994R2965-20031001&qid=1401651834026&from=EN, last visited 1 June 2014. 2 Fontenelle, ‘The Translation Centre for the Bodies of the European Union: Purpose and Activities’, SYNAPS – A Journal of Professional Communication 26/2011, available at www.nhh.no Õ Research and Faculty Õ Department of Professional and Intercultural Communication Õ Research Õ Publications Õ Synaps. 3 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 121 mn. 5. 4 Stamm above, Art. 120, mn. 5. 5 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 121 mn. 7.

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Control of legality

Art. 122 CTMR

The Translation Centre’s activities are limited to the translation of written texts. 3 Interpreting services needed, for example, for the meetings of the Administrative Board or Budget Committee or in case of oral proceedings6 are not supplied by the Translation Centre.7

III. OHIM in-house translation resources Further to the services received from the Translation Centre under Art. 120 CTMR, 4 OHIM maintains a number of in-house linguists who mainly proof-read draft decisions in proceedings before the Office, but also take over other linguistic tasks arising in the Office’s core business. Finally, OHIM itself offers translation services to its users in the form of the TM class 5 database, which comprises also a translation surface enabling the users to translate a term8 or a list of terms9 describing goods or services from one EU language to any of the other official EU languages.

Article 122 Control of legality 1. The Commission shall check the legality of those acts of the President of the Office in respect of which Community law does not provide for any check on legality by another body and of acts of the Budget Committee attached to the Office pursuant to Article 138. 2. It shall require that any unlawful acts as referred to in paragraph 1 be altered or annulled. 3. Member States and any person directly and individually concerned may refer to the Commission any act as referred to in paragraph 1, whether express or implied, for the Commission to examine the legality of that act. Referral shall be made to the Commission within one month of the day on which the party concerned first became aware of the act in question. The Commission shall take a decision within three months. If no decision has been taken within this period, the case shall be deemed to have been dismissed. Rc. 12 Bibliography: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Cologne 2014; Maier, ‘OHIM’s Role in European Trade marks Harmonization: Past, Present and Future’, Fordham Intell. Prop. Media & Ent. L.J., Vol. 23, 687–729.

Content A. General . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Control of legality. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Scope of application. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Exercise of the control by the Commission . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 2 5

6

See Stamm above, Art. 119, mn. 63. Schennen in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 121 mn. 11. 8 Available at http://tmclass.tmdn.org/ec2/translate/enterdata, last visited 1 June 2014. 9 Available at http://tmclass.tmdn.org/ec2/translatelist/show, last visited 1 June 2014. 7

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CTMR Art. 122

Community Trade Mark Regulation

A. General 1

As can be seen from Rc. 12, the Office was meant to be technically independent and autonomous in legal, administrative and financial respects. Art. 122 CTMR therefore provides only for a control of legality of the Office’s acts to be exercised by the Commission where no other checks exist.

B. Control of legality I. Scope of application Art. 122 (1) CTMR limits the scope to the legality check by the Commission to such acts in respect of which no other supervisory body is competent. This means that financial audit and control, for which specific provisions exist (Artt. 141, 142 CTMR), are outside the scope of control of the Commission.1 Furthermore, the Commission’s competence covers a control of legality only, no control of opportunity. Therefore, the Commission is not competent to impinge on the scope of decision of OHIM’s management.2 3 Art. 122 CTMR also does not cover any of the Office’s decisions in trade mark matters (in examination as well as opposition or cancellation proceedings, but also in ancillary proceedings such as recordals in the Register or entries on the list of professional representatives). Control of legality of the Office’s decisions in trade mark matters is dealt with by the General Court and the Court of Justice. 4 On the whole, therefore, the scope of application of Art. 122 CTMR is reduced to acts of OHIM’s president in relation to matters for which there are no remedies under the Staff Regulations3 and to avoid that the Office acts outside its scope of competence visa`-vis third parties.4 Furthermore, the control of legality applies also to the acts of the Budget Committee and, even though this is not expressly mentioned, acts of the Administrative Board.5 2

II. Exercise of the control by the Commission 5

In accordance with Art. 122 (1), (2) CTMR, in principle, the Commission may check the acts of the President, Budget Committee and Administrative Board on its own initiative. However, under Art. 122 (3) CTMR also certain interested third parties may bring a potentially illegal act to the attention of the Commission. 1 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 122 mn. 1. 2 Maier, ‘OHIM’s Role in European Trademarks Harmonization: Past, Present and Future’, Fordham Intell. Prop. Media & Ent. L.J., Vol. 23, 687, 699. 3 In general, control of legality in staff matters is exercised by the Court of Justice – v. Mu ¨ hlendahl/ Ohlgart, Die Gemeinschaftsmarke, p. 230. 4 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 122 mn. 3. 5 v. Mu ¨ hlendahl/Ohlgart, Die Gemeinschaftsmarke, p. 230.

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Access to documents

Art. 123 CTMR

Joint statements by the Council and the Commission concerning the CTMR6 also 6 contain a statement apparently meant to explain what kind of acts of the President can be impugned by third parties in accordance with Art. 122 (3) CTMR.7 The text of the statement refers to Art. 119 CTMR, though, which, after renumbering is today’s Art. 124 CTMR (today’s Art. 122 CTMR would have been Art. 118 CTMR at the time). Whilst it is rather clear from the wording of the statement that it cannot be meant to interpret Art. 124 CTMR but must refer to Art. 122 CTMR, the wording has been criticized for obscuring the meaning of Art. 122 CTMR rather than determining which acts of the President8 fall under Art. 122 CTMR9. The wording of the Joint Statement is as follows: ‘The Council and the Commission consider that the acts of the President referred to in this Article10 are those which he performs under the powers conferred upon him by Article 119 (2)11 of the Regulation, by the implementing Regulation, by the fees regulations or by any other rules applying to Community trade marks.’ With good cause it has been criticized, that the declaration only refers to the acts 7 performed under powers conferred to the President under Art. 124 (2) CTMR: Apart from instances where the President wrongly exercises the powers conferred on him, all acts which he performs outside the scope of his powers, i. e. ultra vires, are illegal but would be excluded from the definition of the Joint Declaration.12 Further, however, the reference to Art. 124 (2) CTMR has been criticized, because the powers conferred to the President by Art. 124 (2) CTMR are those required to manage the Office.13 These, however, it is argued, are largely excluded from the review by the Commission, since the Commission only has the competence to exercise a control of legality, not of opportunity. It must be borne in mind, however, that Art. 122 (1) CTMR already limits the Commissions control power to a control of legality and to acts in respect of which Community law does not provide for any check on legality by another body. This means while the Joint Statement refers to all the acts of the President in the exercise of his power, Art. 122 CTMR effectively limits the power of control to one of legality and even that is limited in scope, as there is a control of legality for most acts of the President.14 Under Art. 122 (2) CTMR, the Commission is bound to require that an illegal act 8 which falls under Art. 122 (1) CTMR be altered or annulled.

Article 123 Access to documents 1. Regulation (EC) No 1049/2001 of the European Parliament and of the Council of 30 May 2001 regarding public access to European Parliament, Council and Commission documents (1) shall apply to documents held by the Office. 6

OJ OHIM, 28.5.1996, p. 622 Schennen in Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 122 mn. 4. 8 or Budget Committee or Administrative Council, see Stamm above, mn. 4. 9 Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 122 mn. 5. 10 Meaning (today’s) Art. 122 CTMR. 11 Today Art. 124 (2) CTMR. 12 Cf. Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 122 mn. 5. 13 As to the details see Manea below, Art. 124 mn. 1 et seq. 14 See Stamm above, mn. 2 et seq. 7

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CTMR Art. 123

Community Trade Mark Regulation

2. The Administrative Board shall adopt the practical arrangements for Implementing Regulation (EC) No 1049/2001 with regard to this Regulation. 3. Decisions taken by the Office pursuant to Article 8 of Regulation (EC) No 1049/ 2001 may give rise to the lodging of a complaint to the Ombudsman or form the subject of an action before the Court of Justice, under the conditions laid down in Articles 195 and 230 of the Treaty respectively. (1) OJ L 145, 31.5.2001, p. 43. Bibliography: Eisenfu¨hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Cologne 2014.

Content A. General. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . B. Procedure. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I. Scope of application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . II. Procedure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1 2 2 3

A. General 1

Art. 123 CTMR1 was introduced into the CTMR 20032, incorporating the rules of Regulation (EC) No 1049/2001 in the CTMR. Regulation (EC) No 1049/2001 of the European Parliament and of the Council of 30 May 2001 regarding public access to European Parliament, Council and Commission documents aims at introducing greater transparency into the work of the EU institutions.3 Art. 123 CTMR works as an addition to, not a replacement of, Artt. 87, 88 CTMR regarding inspection of the Register and files relating to Community trade mark applications.4

B. Procedure I. Scope of application 2

Art. 123 CTMR concerns the access to documents which are not already accessible under Artt. 87, 88 CTMR. This means it does not provide access to files of yet unpublished CTMAs.5 In principle, all the documents held by OHIM are accessible.6 Exceptions exist, however, under Art. 4 of Regulation (EC) No 1049/2001 (e. g. where it is in the public interest not to disclose the document or in order to protect the privacy 1

Previously Art. 118 a CTMR. Council Regulation (EC) No. 1653/2003 of 18 June 2003, OJ L 245, p. 36. Rc. 3 of Regulation (EC) No 1049/2001 of the European Parliament and of the Council of 30 May 2001 regarding public access to European Parliament, Council and Commission. 4 Cf. Rc. 5 of Decision No CA-03-22 of the Administrative Board of November 24, 2003, available at https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/Public_register/ CA-03-22_en.pdf, last visited 2 June 2014. 5 Or CDRs – cf. Schennen in Eisenfu ¨ hr/Schennen, Gemeinschaftsmarkenverordnung, Kommentar, 4th edition, Art. 123, mn. 5. 6 Art. 2 (3) of Regulation (EC) No 1049/2001 of the European Parliament and of the Council of 30 May 2001 regarding public access to European Parliament, Council and Commission. 2 3

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Access to documents

Art. 123 CTMR

and integrity of individuals, e. g. under data protection aspects). Furthermore, access to sensitive documents may be restricted.7

II. Procedure Decision No CA-03-22 of the Administrative Board lays down the procedure for gaining access to documents. Access is open to all citizens of the EU and all natural or legal persons domiciled in the EU.8 Furthermore, the Office may also grant access to documents to other persons, but this is discretionary.9 Requests for documents are to be sent to the Office via its website, email or mail.10 Currently, the requests are to be addressed to the OHIM Academy. Instructions containing the most current address details are put at the disposal of users via the OHIM website.11 The documents desired must be described in enough detail for the Office to identify them.12 This means interested parties can only obtain access to such documents of whose existence they know beforehand.13 As a rule, OHIM will answer any reque