The IPKat received a thought-provoking email this week from his old friend Dr Alexander von Mühlendahl which reads, in relevant part, as follows:
"You may remember that the German Federal Patent Court had referred questions in two more or less "parallel" cases to the ECJ (C-39/08 and C-43/08) concerning the issue to which degree, and on which basis, trade mark authorities must take into account their own practice.The questions referred in C-39/08 Bild.T-Online.de AG & Co. KG v President of the German Patent- und Markenamt were as follows:
You know of course that the ECJ has developed the rather strange theory of what is called in German gebundene Entscheidungen, called in English "circumscribed", meaning that the office or the court does not have discretion to find for or against descriptiveness or absence of distinctiveness etc., but must apply the law without regard to practice. Here is a quote from Case C-173/04 Deutsche SiSi Werke:
"48 With regard to the second part of the second plea, it is necessary to point out, first of all, that decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of OHIM are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, as the Court of First Instance essentially held in paragraph 55 of the judgment under appeal, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice of those boards (Case C 37/03 P BioID v OHIM  ECR I-0000, paragraph 47). The German court found this unsatisfactory in cases where the concrete decision is out of line with practice in identical or similar other cases".
The ECJ has now rejected, by Order of 12 February 2009, any idea of revisiting the theory of gebundene Entscheidung. The decision is taken by Order rather than by Judgment, only the second time this has happened. The ECJ did however state that the authority must take account of its own practice (para 17 of the Order).
The Order is available only in German and French, another example of the ECJ's increasing use of making available decisions only in French and the language of the proceedings".
"Does Article 3 of Directive 89/104 ..., which seeks to secure equality of opportunity in matters of competition, require that identical or similar applications be treated in the same way?
If the answer is 'yes', is the national court required to investigate specific indications of unequal treatment which distorts competition and, in so doing, to take account, in its analysis, of earlier decisions of the competent authority in similar cases?
If the answer is 'yes', is the national court required to take account of the prohibition of discrimination having the effect of distorting competition when interpreting and applying Article 3 of Directive 89/104 if it has established discrimination of that nature?
If Questions 1 to 3 are answered in the negative, in order to prevent distortion of competition, must it be possible under national legislation for the national authority to be placed under an obligation to initiate, of its own motion, an action for the annulment of trade marks which have previously been wrongly registered?"In Case C-43/08 ZVS Zeitungsvertrieb Stuttgart GmbH v President of the German Patent- und Markenamt the questions asked were very similar. The first question was
"Does Article 3 of Directive 89/104 ... require equal treatment, with regard to the registration of trade marks, of applicants in competition with one another in order to safeguard equality of opportunity in matters of competition?"and the rest read the same as for Case C-39/08. The IPKat is doubly annoyed, both with himself for having missed these references and their ultimate fate in the first place and with the Court for not letting us English IP enthusiasts gain this fascinating insight into an aspect of German jurisprudence with which many of us are quite unfamiliar. Merpel says, I knew all about it actually, I was just leaving it for you to deal with ...