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Friday, 29 April 2011

Over-intellectualisation of European trade mark law -- a fresh example

Tiddles wears the dunce's hat again after
forgetting how to spell "syntactically
" unusual juxtapositions" ...
At yesterday's plenary session of the Fordham Intellectual Property Conference, covering issues arising from European intellectual property law, this member of the IPKat team wailed long and loud about what he termed the "over-intellectualisation" of European trade mark law. The Kat has received numerous responses from those attending, ranging from warm support on the one side to a sniffy comment that no-one with academic credentials has any right to complain about something having intellectual content. In the later trade mark-related sessions which he attended in the afternoon, several speakers picked up the same theme: trade mark law in Europe had become almost unmanageably complex.

If readers want an example of the sort of thing the Kat finds unacceptable, here's a current one. He has just heard from the UK Intellectual Property Office that two new conjoined cases have been referred by the German Bundespatentgericht to the Court of Justice of the European Union (ECJ) for a preliminary ruling: Cases C-90/11 and C-91/11 Strigl and others. The question for the court is this:
"Is the ground for refusal under Article 3(1)(b) and/or (c) of the [trade mark harmonisation] directive [2008/95] also applicable to a word sign which consists of a descriptive word combination and a non-descriptive letter sequence, if the trade perceives the letter sequence as an abbreviation of the descriptive words because it reproduces their initial letters, and the trade mark as a whole can thus be construed as a combination of mutually explanatory descriptive indications or abbreviations?".
In case you are wondering, Articles 3(1)(b) and 3(1)(c) are not exactly rocket science. They provide that signs can't be registered as trade marks if they are devoid of distinctive character or 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 services". In other words, you can't have a trade mark for something that's not distinctive or if it is descriptive. In an ideal world, a court would be able to apply these provisions to the facts before it with the need to refer them to distant tribunal and add another two years to the length of the proceedings.

One can imagine situations in which the referred question will be answered "yes" and those in which it will be answered "no"; situations in which the "trade" is also a relevant consumer of goods and services for which registration is sought and those in which it isn't; situations in which the combination of the descriptive word combination and the non-descriptive letter sequence constitutes a syntactically unusual juxtaposition and is therefore registrable (as in Case C‑474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, BABY-DRY) and those in which it is not. The court may also be asked to consider those cases in which the descriptive word combination precedes the non-descriptive letter sequence and vice versa, as well as those in which the descriptive word combination includes a numeral or a place name, and so on.

Any ruling from the court on the question referred in this case is not therefore the end of the question-and-answer process but a launchpad from which subsequent refining questions are fired at the court in the hope of rendering into a verbal format every conceivable combination of facts. This may be intellectually satisfying, but it is not easy for potential trade mark applicants to understand -- or for even well-trained and highly qualified trade mark practitioners to explain.

This particular reference addresses absolute bars to registrability, but the same phenomenon can be found, to a greater or lesser extent, across the whole range of trade mark law -- infringement, cancellation, revocation, comparison of marks, taking of unfair advantage without due cause, referential use, comparative advertising. According to one speaker yesterday (the Kat thinks it was OHIM's Paul Maier but is willing to be corrected) the ECJ has heard some 150 trade mark cases -- a remarkable number which represents around ten cases a year.

For the record, the UK Intellectual Property Office welcomes your opinion on this ECJ reference (if you have one). Just email policy@ipo.gsi.gov.uk before 6 May 2011.

How to be an intellectual here and here

1 comment:

Anonymous said...

Actually, the Strigl question is a good one to refer.

The issue which it addresses happens to be already discussed in the IPO works manual under the M.G.S. MISSILE GUIDANCE SYSTEMS example. However, this IPO practice is one of a large number which are in the practice manual but have no direct foundation in the harmonized EU law. I bet that many other jurisdictions also have a fair proportion of homegrown practices.

Questions like the Strigl one are exactly the sort of references we need to pull national practices into greater harmony.

I am also not sure that it makes trade mark law more complex in itself since the complexity is already latent in the subjectivity and vague terminology of the tests set out in the primary legislation -- if anything it reduces the complexity by bringing issues out into the open. It does, however, improve harmonization and make it more likely that those doing business across several EU territories will get consistent treatment at the hands of the registries and courts -- which is the point of EU law anyway.

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