Event report: Tertulia on EUIPO Boards of Appeal Case Law

Earlier this week, this GuestKat was fortunate enough to attend the Tertulia on EUIPO Boards of Appeal Case Law at the EUIPO Liaison Office in Brussels.

After an introduction by Mr Théophile Margellos, President of the Boards of Appeal, the Tertulia started with a presentation by Mr Gordon Humphreys, Chairperson of the 5th Board of Appeal, concerning Trade marks and human rights. This was followed by a presentation by Mr Sven Stürmann on recent EUIPO Boards of Appeal Case Law on non-traditional marks and refiling of trade marks.

Freedom of speech and trade marks

Rue de la loi, Brussels

Humphreys kicked off his presentation stressing the importance (and also the difficulties in the assessment) of the balance between different fundamental rights and freedoms. He recalled the two provisions which allow to refuse registration of a trade mark or a design on grounds of it being contrary to public policy or accepted principles of morality (respectively, Articles 7(1)(f) EUTMR and 9 CDR). He presented two cases where the Board of Appeal and the General Court confirmed refusal of registration of a sign as a trade mark on grounds that it was considered contrary to public policy: BIN LADIN (R-176/2004-2) and LA MAFIA SE SIENTA A LA MESA (T-1/17) (the latter sign meaning: the mafia takes a sit at the table) [here].

These two cases had a different outcome than, eg, Dick and Fanny case (R-111/2002-4). In the latter, it was decided that the mark might have, in coarse slang, a sexual connotation. However, these words merely designate things and do not transmit any message. Hence, refusal of registration on grounds of either public policy or accepted principles of morality was not justified. Humphreys underlined that, however, the Dick and Fanny case is quite dated, and the outcome might be different today.

 

Speaking about cases such as Reva (R-558/2006-2; in Finnish: a word referring to female genitalia), Humphreys noted that the European Union has 23 official languages and this means that what can be considered a brilliant commercial idea in one place could turn out to be offensive or vulgar in a certain language. All this said, discussing cases such as Screw you (R-495/2005-G) and Hijoputa (T-417/10), he observed that traders have a huge economic interest in trying to register 'bad' words as, for example, teenagers are particularly attracted to these kind of signs.

This presentation could not have ended without a focus on the Opinion of Advocate General Bobek in Fack Ju Goethe (C-240/18 P) [here]. A special focus was reserved to the distinction between public policy and morality and the key importance of the reaction of society in assessing the contrariety of a sign to public policy or accepted principles of morality.

Recent EUIPO Boards of Appeal Case Law on non-traditional marks and refiling of trade marks

Stürmann started his presentation by showing the public some of the motion (signs which involve movement) and multimedia signs (signs which involve movement and sounds) that have been applied for registration as trade marks. He asked our opinion about the possible outcomes of the application.

Some sort of three-step assessment was developed in the context of discussion with the audience in order to prove the use of multimedia trade marks as such: 1) the use of the trade mark; 2) the use as a trade mark; 3) the perception of the sign by the public as a trade mark.

Turning to refiling, the discussion focused on the Monopoly case (R-1849/2017-2) [here]. In this context, the importance of the hearing - where the economic strategy behind the refiling would be discussed - was stressed. The presenter noted how recent changes to the procedural rules of the General Court and the Court of Justice of the European Union (CJEU) regarding, inter alia, appeals of the decisions of the EUIPO could lead to an increase of the number of hearings before the Boards of Appeals. The issue of bad faith and possible abuse of the trade mark system was also discussed, in light of Advocate General Tanchev' Opinion in Skykick (C-371/18) [here] and the CJEU decision in Koton (C-104/18 P) [here about the Opinion of Advocate General Kokott in this case].

To conclude, the event was a remarkable afternoon of discussions about EU trade mark law and practice. After this, one can only keenly await for the IP case law conference in Alicante on the 21-22 May 2020.