tag:blogger.com,1999:blog-5574479.post4687880019919787163..comments2024-03-28T08:10:18.991+00:00Comments on The IPKat: El Corte Inglés gets a bashing from a boomerangVerónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-5574479.post-64161416699991945272008-06-20T09:34:00.000+01:002008-06-20T09:34:00.000+01:00It looks to me like a clear statement that the sta...It looks to me like a clear statement that the standard for 8(5) is lower than that for 6bis. This makes sense if you look at the definition of reputation the ECJ employed has employed in General Motors (i.e the reputation = 'known') but still leaves us with a system for extended protection of TMs that could be considered asymmetric in the wrong direction.Ilanahhttps://www.blogger.com/profile/04769375670713505896noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-48539983539740262452008-06-19T17:11:00.000+01:002008-06-19T17:11:00.000+01:00I didn't discuss the Art.8(5) point because it was...I didn't discuss the Art.8(5) point because it was crushed by evidential inadequacy and looked as though it was only tossed in as a speculative afterthought by El Corte Inglés. <BR/><BR/>I think the CFI was only trying to say that more proof is needed that a mark is well-known than if it is merely known, and would guess that the CFI was not seeking to make a meaningful contribution to the jurisprudence. But I might be wrong ...Jeremyhttps://www.blogger.com/profile/01123244020588707776noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-3006832379159215302008-06-19T09:37:00.000+01:002008-06-19T09:37:00.000+01:00Jeremy, you didn't discuss the Art.8(5) point. Bri...Jeremy, you didn't discuss the Art.8(5) point. Briefly, El Corte Ingles tried to prove that its mark was well known under Art.6bis. The CFI found that there was insufficient evidence to show this. Thus, when it came to the Art.8(5) case, it therefore followed that the mark did not have a reputation, and therefore didn't qualify for Art.8(5) protection. <BR/><BR/>The court states: <BR/><BR/>"although the degree of recognition to be proved regarding marks possessing a reputation within the meaning of Article 8(5) of Regulation No 40/94 is not as high as that in the case of well-known marks within the meaning of Article 6bis of the Paris Convention"<BR/><BR/>In other words, the standard of fame (for want of a better word) needed is higher to qualify for Art.6bis Paris than Art.8(5). <BR/><BR/>Stepping back, this leaves the European system in a rather odd position. It means that it is easier to qualify for the extra special confusion-free dilution protection of Art.8(5) than it is to qualify for the confusion-based Art.6bis. Not only does this look strange, but it's also at odds with the US, where the fame requirement to qualify for dilution has recently been substantially strengthened. <BR/><BR/>The only justification I can think of is that a mark needs to be registered to qualify for Art.8(5)protection, but not to qualify for Art.6bis protection.Ilanahhttps://www.blogger.com/profile/04769375670713505896noreply@blogger.com