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Thursday, 11 January 2007

ECHR says TM applications are "property"; Live in Liverpool


ECHR says TM applications are "property"

Hot off the press, via Lovells' trade mark expert and scholar Burkhart Goebel, is news that the European Court of Human Rights has today done the right and proper thing. Reversing its earlier position (see IPKat posts here and here), the Grand Chamber of the ECHR has ruled that, like trade mark applications are "possessions". The Grand Chamber however, while expressly endorsing Anheuser-Busch's view, dismissed its complaint against Portugal on the ground that the Portuguese Supreme Court decision affecting the protected possession could not be sai to be "arbitrary and manifestly unreasonable" in light of the specific circumstances of the case. The court said:

"75. The Court considers it appropriate to examine whether the circumstances of the case, considered as a whole, conferred on the applicant title to a substantive interest protected by Article 1 of Protocol No. 1 [of the European Convention on Human Rights]. In that connection, it notes at the outset that the question whether the applicant company became the owner of the “Budweiser” mark on 20 June 1995 when it was issued with a registration certificate by the NIIP – a point that was argued in detail by the parties at the hearing before the Grand Chamber – is ultimately of secondary importance, the reason being that the issue of the certificate to the applicant company was in breach of the provisions of Article 7 of the Code of Industrial Property ... and therefore cannot alter the nature of the “possession” to which the applicant company lays claim or the reality of its overall legal position for the purposes of Article 1 of Protocol No. 1.

76. With this in mind, the Court takes due note of the bundle of financial rights and interests that arise upon an application for the registration of a trade mark. It agrees with the Chamber that such applications may give rise to a variety of legal transactions, such as a sale or licence agreement for consideration, and possess – or are capable of possessing – a substantial financial value. With regard to the Government's submission that dealings in respect of applications for the registration of a mark are of negligible or symbolic value only, it is noted that in a market economy, value depends on a number of factors and it is impossible to assert at the outset that the assignment of an application for the registration of a trade mark will have no financial value. In the instant case, as the applicant company was not slow to point out, the mark in question possessed a definite financial value on account of its international renown.

77. The parties disagreed about whether, prior to the entry into force of the New Code of Industrial Property of 2003, it had been possible under Portuguese law to obtain compensation for the illegal or fraudulent use by a third party of a mark in respect of which an application for registration was pending. For its part, the Court considers that, in the light of the Lisbon Court of Appeal's decision of 10 May 2001, such a possibility cannot be wholly ruled out.

78. These elements taken as a whole suggest that the applicant company's legal position as an applicant for the registration of a trade mark came within Article 1 of Protocol No. 1, as it gave rise to interests of a proprietary nature. It is true that the registration of the mark – and the greater protection it afforded – would only become final if the mark did not infringe legitimate third-party rights, so that, in that sense, the rights attached to an application for registration were conditional. Nevertheless, when it filed its application for registration, the applicant company was entitled to expect that it would be examined under the applicable legislation if it satisfied the other relevant substantive and procedural conditions. The applicant company therefore owned a set of proprietary rights – linked to its application for the registration of a trade mark – that were recognised under Portuguese law, even though they could be revoked under certain conditions. This suffices to make Article 1 of Protocol No 1 applicable in the instant case and to make it unnecessary for the Court to examine whether the applicant company could claim to have had a “legitimate expectation”".
The IPKat is pleased that the court has got it right. It seemed anomalous that the ECHR should, by whatever reasoning, have previously denied the proprietary nature of a trade mark application when such applications have for many been explicitly treated as property in national and regional trade mark laws around Europe. Merpel adds, two of the judges issued a joint dissent on the “trade marks as possessions” issue. Read the contrasting opinions and ask which one represents the reality of the world in which we live—and in which human rights are claimed and enforced by companies—more fairly and accurately.


Live in Liverpool

IPCEX is the Intellectual Property Centre of Excellence for the North. Membership is open to any recognised IP professional who is "prepared to contribute towards education, training, research or continuing professional development in intellectual property in the North of England".

On Tuesday 6 February IPKat blog team-member Jeremy is speaking in Liverpool, at the offices of local solicitors Kirwans,on "Five Live Issues in Intellectual Property". The seminar runs from registrations at 4.00 pm through to close of play at 5.30 pm, followed by refreshments. To attend, contact Marianne Tuck here or call her on 0151 229 5610.

Although he has a 'top ten' list of live intellectual property topics up his sleeve, Jeremy is always amenable to suggestions. So, if you're going to be attending and would particularly like him to address an issue of current interest to the IP community, email him here by Sunday 4 February (ie before he prepares his PowerPoints) and he'll try to cover your subject too.

If you want to join IPCEX - which will cost you nothing - email the group or call 0870 990 5081.

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