1 Medion ruling
The European Court of Justice (ECJ) has issued its ruling this morning in Case C-120/04 Medion AG v Thomson Multimedia Sales Germany & Austria GmbH. Medion, owner of the German trade mark LIFE for electronic leisure devices, sued Thomson for trade mark infringement, seeking to prevent it using the mark THOMSON LIFE for similar devices which, it alleged, would be likely to confuse consumers of those devices. The Landgericht Düsseldorf rejected the claim, holding that there was no likelihood of confusion. Medion's appeal to the Oberlandesgericht Düsseldorf resulted in that court referring to the ECJ the following question:
"Is Article 5(1)(b) of [the directive] to be interpreted as meaning that where the goods or services covered by competing signs are identical there is also a likelihood of confusion on the part of the public where an earlier word mark with normal distinctiveness is reproduced in a later composite word sign belonging to a third party, or in a word sign or figurative sign belonging to a third party that is characterised by word elements, in such a way that the third party’s company name is placed before the earlier mark and the latter, though not alone determining the overall impression conveyed by the composite sign, has an independent distinctive role within the composite sign?".Under German ‘Prägetheorie’ (theory of the impression conveyed), one must consider the overall impression conveyed by each of the two signs and to ascertain whether the common component (here, LIFE) characterises the composite mark to the extent that the other components are largely secondary to the overall impression: there is no likelihood of confusion if the common component merely contributes to the overall impression of the sign, regardless of whether the trade mark incorporated still has an independent distinctive role (‘kennzeichnende Stellung’) in the composite sign.
In its own ruling the ECJ did not even use the word Prägetheorie’:
"Article 5(1)(b) ... is to be interpreted as meaning that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein".The ECJ took the opportunity to restate its previous law on the comparison of marks, reiterating that the assessment of marks was on a global basis, not component-by-component, and that a finding of a likelihood of confusion did not have to be dependent upon the earlier mark also being the dominant part of the later mark.
The IPKat applauds the court for sticking to the basic principles of the Directive and its own case law, rather than let itself be distracted by dubious national law doctrines such as Prägetheorie which could have the effect of neutralising the legal and commercial value of earlier registrations where the company name added by the later trader was particularly prominent.
2 Latest Trademark World
The October 2005 issue of Informa's ten-times a year Trademark World has now been published. To the IPKat's horror, the cover story is "Who's the Bad Cat"?", but fortunately it isn't anything about him: it's a feature on bad faith by trade mark enthusiast Simon Teng, a third year student in the University of Maryland's Law School..
Other features in this issue include
* another article on bad faith filings, this time from Claus Eckhartt (right)(Bardehle Pagenberg);
* John Maycock and Elizabeth Harding (Withers) on the last rites in the LABORATOIRE DE LA MER case on genuine use in revocation proceedings;
* Andrew Vlad Ratza (Ratza & Ratza) striking an upbeat note on Romania's forthcoming membership of the European Union and what it means in IP terms.