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Friday, 8 June 2007

Rockbass heads for further trouble in Lux

Yesterday Advocate General Eleanor Sharpston rendered her opinion in Case C-301/05 P Hans-Peter Wilfer, this being an appeal to the European Court of Justice, Luxembourg, from a decision of the Court of First Instance (CFI) involving Wilfer's application to register ROCKBASS as a Community trade mark for guitars, technical sound equipment, amplifiers and the like. The application was rejected on the basis that the word was sufficiently descriptive to be incapable of serving as a trade mark; the Board of Appeal and the CFI agree.

Wilfer's notice of appeal was based on five grounds (the Advocate General counts seven), these being both procedural and substantive:

"1. As regards the question whether, or to what extent, the appellant can be represented and assisted by a patent agent, the Court misinterpreted Article 19 of the Rules of Procedure of the Court of First Instance. Under that provision, the term 'lawyer' also covers patent agents provided that their legal system authorises them to represent parties before a court and provided that their national legal order grants them a status within their legal system which, in terms of the rights and responsibilities transferred to them, is comparable to that of a lawyer. [this ground was subsequently withdrawn]

2. In assessing the questions whether, or to what extent, the attestation concerning the registration of US trade mark 76/302,601 'ROCKBASS' and the new arguments and evidence contained in the appellant's written statement were to be considered in the present proceedings, the Court not only misjudged the scope of the principle of examination of the facts by the Office of its own motion in Article 74 of the Community Trade Mark Regulation 2, but also misapplied the provisions laid down in Article 7(1)(b) and (c) thereof.

3. As regards the meaning and grammatical structure of the sign 'ROCKBASS', the Court misrepresented or falsified the facts submitted. The Court overlooked the fact that the sign 'ROCKBASS' is extremely complex and did not consider that many different grammatical combinations are possible for that mark. Since the Court did not give any reasons for those misrepresentations it also breached its duty to give reasons.

4. The Court misrepresented or falsified the facts submitted as regards the possibility of using the goods in Classes 9 and 18 independently of the goods claimed in Class 15 and, since it did not provide any coherent reasons for doing so, it thereby also breached its duty to give reasons.

5. As regards the question whether the registered trade mark 'ROCKBASS' is directly descriptive of all the goods claimed, the Court misapplied Article 7(1)(c) of the Community Trade Mark Regulation. In so doing, it erroneously based its findings on the point of view of the average observer with certain preconceptions instead of the point of view of the average observer with no preconceptions and, in assessing the question, it took into account only insignificant characteristics and characteristics which are not immediately obvious to the relevant public.

The Advocate General has advised the ECJ to dismiss Wilfer's appeal, mainly on the grounds that it is unfounded, but with a little inadmissibility thrown in for good measure. Of particular note is the following:

"43. Mr Wilfer ... appears to be asserting that the mere fact that a word describes an intended purpose of the goods or services to be covered by a proposed word mark does not suffice to preclude registration of that mark on the ground that it is descriptive. I confess to having some difficulty understanding how that argument can withstand the most cursory examination of the wording of Article 7(1)(c) of the Regulation. That provision states unequivocally that ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the … intended purpose … of the goods or service’ ‘shall not be registered’.

Left: the Honda Jazz, making a guest appearance in the Advocate General's Opinion

44. At the hearing counsel for Mr Wilfer emphasised that the ‘rock bass’ style of music is not a distinctive characteristic of goods or of musical instruments. Again, however, I do not see how that argument assists Mr Wilfer. It is surely self-evident that one of the intended purposes of a bass guitar is to play rock music. That statement will not become less true if a given person buys a bass guitar with the (possibly misguided) idea of playing classical music on it. Still less is it undermined by the example provided by counsel for Mr Wilfer, who argued that its logical conclusion is that the Honda Jazz trade mark is unregistrable because it is possible to play jazz music in cars".

The IPKat suspects that the ECJ will agree, fairly swiftly. Merpel only notes that she was disappointed to see the word ROCKBASS descriptive of musical instruments and sound equipment. To her it conjured up images of a delightfully tasty freshwater fish.

Recipes for rockbass here and here


Anonymous said...

AG Sharpston obviously sets her descriptiveness threshold quite high (remember CELLTECH). I'm wondering, is there a specific category of guitar called a 'ROCKBASS', and if not, what's the problem in the musical instrument class ?

Clearly, there may be a style of guitar playing called ROCKBASS but that's a different question and would involve other classes, of service perhaps.

A Google search reveals plenty of hits on the word Rockbass, but the prominant ones at least are all TM use by the applicants.

Jeremy, fancy a bet that the ECJ won't follow the AG on this one ?

Anonymous said...

I just love:

"That statement will not become less true if a given person buys a bass guitar with the (possibly misguided) idea of playing classical music on it."

Anonymous said...

IPKat readers may also be interested in a recent (very narrow) UK application of s.3(1)(c) in Prof Ruth Annand's decision (BL O/127/07).

There is room for more clarity in this area - the 'intended purpose' element I think gives a lot of difficulty, but also what exactly may be called a 'characteristic'. Just because bass guitars may be used for playing rock music does not in my view make the case.

Anonymous said...

Is it decisive if there is no clear category of guitars which are called 'ROCKBASS' ? Surely the AG is right. Would CLASSICALVIOLIN be acceptable for musical instruments ? I think not.

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