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Showing posts with label Families of trade marks. Show all posts
Showing posts with label Families of trade marks. Show all posts

Thursday, 25 October 2012

Family of trade marks, defensive strategies and genuine use: CJEU speaks out in Rintisch

This morning the Court of Justice of the European Union (CJEU) delivered its judgment in Case C-553/11 Bernard Rintisch v Klaus Eder, a reference from the Bundesgerichtshof (Federal Court of Justice, Germany) concerning the circumstances in which a trade mark can be regarded as having been put to genuine use, pursuant to Article 10(1) and 2(a) of Directive 89/104/EEC [this Directive has now been replaced by Directive 2008/95/EC] (see earlier IPKat post here).
The reference was made in proceedings between Mr Rintisch and Mr Eder "concerning the genuine use of a trade mark, used in a form differing in elements which do not alter its distinctive character from the form in which that trade mark was registered, the form used being itself registered as a trade mark" [Merpel has still to recover from the strong headache she got just trying to understand what this case was about].
Background
Mr Rintisch is the proprietor of the national word marks PROTIPLUS (registered in 1996) and PROTI (registered in 1997), as well as the word/figurative mark Proti Power (also this was registered in 1997). All these trade marks are registered for, among other things, protein-based products.
Leonard does not seem very impressed
with his new high-protein dietetic routine
Mr Eder is the proprietor of the later word mark Protifit, registered in 2003 for food supplements, vitamin preparations and dietetic foodstuffs. 
Mr Rintisch brought an action seeking, firstly, consent from Mr Eder to cancellation of the trade mark Protifit and, secondly, prohibition on use of that trade mark, relying on the rights deriving from his earlier trade marks PROTIPLUS and Proti Power. When Mr Eder contended in defence that Mr Rintisch had failed to use the trade mark PROTI, Mr Rintisch responded that he had put that trade mark to use by using the trade names ‘PROTIPLUS’ and ‘Proti Power’. 
Having both the court of first instance and the court of appeal dismissed Mr Rintisch's action, he brought an action before the Federal Court of Justice.
Although differing from the trade mark PROTI, the Curt held that the trade names ‘PROTIPLUS’ and ‘Proti Power’ did not alter the distinctive character of that trade mark and that the applicant had put the trade marks PROTIPLUS and Proti Power to genuine use (for the purposes of Paragraph 26(3) of the MarkenG) before the publication of the registration of Protifit. The Federal Court was however unsure as to whether the second sentence of Paragraph 26(3) (“Use as a registered trade mark is also the use of the mark in a form that is different from the registration, where the deviations of the characterizing not change character of the mark. Sentence 1 shall apply even if the brand is the form in which it was used, also shown.”) was consistent with Article 10(1) and (2)(a) of Directive 89/104. Thus, it decided to stay the proceedings and refer the following questions to the CJEU for a preliminary ruling:
‘1.   Must Article 10(1) and (2)(a) of Directive [89/104] be interpreted as meaning that in principle this provision generally precludes a national rule pursuant to which the use of a trade mark (Trade Mark 1) must be presumed even if the trade mark (Trade Mark 1) is used in a form differing from the form in which it was registered, without the differences altering the distinctive character of the trade mark (Trade Mark 1), and if the trade mark in the form used is also registered (Trade Mark 2)? 
2.   If question 1 is answered in the negative:
Is the national provision described in the first question compatible with Directive [89/104] if the national provision is interpreted restrictively as meaning that it is not applicable to a trade mark (Trade Mark 1) which is registered only in order to secure or expand the protection of another registered trade mark (Trade Mark 2) that is registered in the form in which it is used?
3.   If question 1 is answered in the affirmative or question 2 is answered in the negative:
(a)   Is there no use of a registered trade mark (Trade Mark 1) within the meaning of Article 10(1) and (2)(a) of Directive [89/104]:
(i)   if the trade mark proprietor uses the form of a sign which differs only in elements from the form in which it (Trade Mark 1) and a further trade mark (Trade Mark 2) of the trade mark proprietor are registered but the differences do not alter the distinctive character of the trade marks (Trade Mark 1 and Trade Mark 2);
(ii)  if the trade mark proprietor uses two forms of sign, neither of which corresponds to the registered trade mark (Trade Mark 1), but one of the forms used (Form 1) is the same as another registered trade mark (Trade Mark 2) of the trade mark proprietor and the second form used by the trade mark proprietor (Form 2) differs in elements from both registered trade marks (Trade Mark 1 and Trade Mark 2), without the differences altering the distinctive character of the trade marks, and if this form of sign (Form 2) displays greater similarity to the other trade mark (Trade Mark 2) of the trade mark proprietor?
(b)  Is a court of a Member State permitted to apply a national provision (here the second sentence of Paragraph 26(3) of the [MarkenG]) which conflicts with a provision of a directive (here Article 10(1) and (2)(a) of Directive [89/104]) in cases in which the facts of the case had already occurred prior to a decision of the Court of Justice of the European Union in which indications of the incompatibility of the Member State’s legislation with the provision of the directive became apparent for the first time (the judgment of 13 September 2007 in Case C‑234/06 P Il Ponte Finanziaria v OHIM … [2007] ECR I 7333) [noted here] if the national court values the reliance of a party to the court proceedings on the validity of his position, secured under constitutional law, more highly than the interest in the implementation of a provision of the directive?’
The response of the CJEU
Family of trade marks and genuine use
The first question and point (a) of the third question concerned whether the proprietor of a registered trade mark is precluded from relying, in order to establish whether there has been genuine use, on the fact that this is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark.
The Court observed that, in compliance with Article 5.C.(2) of the Paris Convention, nothing in the wording of Article 10(2)(a) implies that the different form in which the trade mark is used cannot itself be registered as a trade mark. This is because the purpose of Article 10(2)(a) is to allow the proprietor of the mark, in the commercial exploitation of the sign, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned.
Defensive strategies do not always
require Kats
to hide under a carpet
Therefore, in line with the judgment in Il Ponte Finanziaria, "the proprietor of a registered trade mark is not precluded from relying, in order to establish use of the trade mark for the purposes of [Article 10(2)(a)], on the fact that it is used in a form which differs from the form in which it was registered, without the differences between the two forms altering the distinctive character of that trade mark, even though that different form is itself registered as a trade mark."
Defensive trade marks
By its second question, the German court had asked whether Article 10(2)(a) must be interpreted as precluding an interpretation of the national provision intended to transpose it into domestic law whereby Article 10(2)(a) does not apply to a ‘defensive’ trade mark which is registered only in order to secure or expand the protection of another registered trade mark that is registered in the form in which it is used.
The Court responded that nothing in Article 10(2)(a) is such as to make it inapplicable to such an instance, in that the subjective intention prevailing when it is sought to register a trade mark is wholly irrelevant for the purpose of applying that provision. 
Bruno has still no clue about how temporal
validity of CJEU judgments works in practice
Temporal validity of CJEU judgments
By point (b) of its third question, the referring court had sought clarification as to under what circumstances a judgment of the Court should take effect, in some or all respects, only for the period after the date on which it was delivered.
The Court decided not to address this point, in that the question had been raised on the assumption that there was a conflict between the second sentence of Paragraph 26(3) of the MarkenG, and Article 10(1) and (2)(a) of Directive 89/104. Neither the answer to the first question and point (a) of the third question nor the answer to the second question coincided with that assumption, held the Court.
While finding this judgment pretty sensible overall, this Kat regrets that the CJEU decided not to offer clarification as to the issues underlying point (b) of Question 3. This is especially in light of: (1) ever-growing activism of the CJEU in the field of IP, which in some instances seems to be tantamount to actual legislation, besides or in lieu of legislative initiatives on the side of the Commission, and (2) increasing uncertainties as to how the EU principle of respecting acquired rights and legitimate expectations is to be applied in IP cases.

Tuesday, 25 September 2007

Protecting family values

Better late than never, says the IPKat as he posts this note on the fortnight-old Community trade mark appellate decision by the European Court of Justice in Case C‑234/06 P, Il Ponte Finanziaria SpA v OHIM, FMG Textiles Srl.

In 1998 Marine Enterprise Projects (now FMG) applied to register as a Community trade mark a figurative sign the main components of which were the depiction of a roll of cloth, unfurling to take on the form of the sail of a small sailing boat, against a thick horizontal line above which the word ‘Bainbridge’ appears in cursive lettering. Registration was sought for goods in Classes 18 (leather, imitation leather, animal skins, hides; trunks, cases etc) and 25 (clothing, footwear, headgear).

Ponte opposed, citing a number of its earlier Italian trade marks and arguing a likelihood of confusion. These were, effectively, the word mark THE BRIDGE and two families of marks, one figurative and one three-dimensional, for similar goods. The OHIM Opposition Division rejected the opposition on the basis that none of Ponte's marks was sufficiently similar to the applied-for mark. The Board of Appeal agreed, ruling that the principle of interdependence between similarity of goods and signs (i.e. the more similar the goods were, the less similar the marks needed to be in order to establish a likelihood of confusion) was irrelevant here since there was not even a minimum degree of similarity between the parties' respective marks.

Ponte appealed to the Court of First Instance, which dismissed the appeal. In the CFI's view

* it was only when the Board of Appeal examined the argument that there was a ‘family of marks’ that it established that only two of those marks had been put to use and could therefore be taken into account in that assessment. The Board had however expressly affirmed that those earlier trade marks were not individually subject to proof of use because the five-year period following their registration, during which use must be proved, had not yet elapsed. It therefore concluded that those six earlier marks had to be taken into consideration for the purpose of assessing the existence of a likelihood of confusion with the trade mark applied for.

* So far as the likelihood of confusion with a 'family' of marks was concerned, the Italian consumer was actually confronted on the market with only two of those earlier marks, with the result that the extended protection claimed by the appellant, connected with the existence of an alleged ‘family of marks’, was not justified in this case.

* The earlier mark THE BRIDGE could only be regarded as being in genuine use if it was objectively present on the market in a manner that was effective, consistent over time and stable in terms of the configuration of the sign. Such genuine use of that trade mark in question had not been proved.

* As to the other earlier trade marks that were not taken into account for the purposes of assessing the likelihood of confusion, the Board of Appeal was entitled to reject what were described as the ‘defensive’ registrations of those marks, since the effective function of the trade mark registration is protect marks that are registered so that they will be used, not so that they will only exist to prevent registration by others.

* Ponte's marks were only remotely similar to FMG's, whether taken individually or en famille.

Ponte then appealed further to the European Court of Justice, which dismissed the appeal on more grounds than this posting indicates. Said the ECJ:

* the CFI's assessment of similarity of the marks was well-based and the ECJ cannot substitute its own assessment of the facts for that of the CFI;

* the CFI was entitled to conclude that the fundamental lack of similarity of the respective marks was not offset, when assessing a likelihood of confusion, by the high degree of similarity of the respective goods;

* " 61. ... a trade mark may be registered only individually and the minimum five-year protection afforded by such registration is conferred on it only as an individual trade mark, even where several trade marks having one or more common and distinctive elements are registered at the same time".
* "64. ... no consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a ‘family’ or ‘series’, the earlier trade marks which are part of that ‘family’ or ‘series’ must be present on the market".

The IPKat is sure this analysis must be right. There will surely be cases in which, on the facts, the level of similarity (i) between the different marks within the same family and (ii) between the family marks and the 'gatecrasher' is high enough to get the opposition to the starting line and where (iii) the degree of use of all the family members is strong enough for consumers to draw the wrong conclusion whenever they see an interloper, assuming it to be part of the family too. But this case was never going to be the paradigm. Merpel adds, but look how useful a fatally flawed opposition can be. The opposed application was filed nine years ago yesterday: look how much uncertainty has tainted the brand's future for nearly ten years.

The IPKat's earlier post on the Advocate General's Opinion here

Tuesday, 17 April 2007

Keeping it in the family?

Somehow the Opinion delivered late last month (29 March, to be precise) for the European Court of Justice (ECJ) by Advocate General Eleanor Sharpston in Case C‑234/06 P Il Ponte Finanziaria SpA slipped the IPKat's attention.

In 1998 Marine Enterprise Projects (now FMG) applied to register as a Community trade mark a figurative sign the main components of which were the depiction of a roll of cloth, unfurling to take on the form of the sail of a small sailing boat, against a thick horizontal line above which the word ‘Bainbridge’ appears in cursive lettering. Registration was sought for goods in Classes 18 (leather, imitation leather, animal skins, hides; trunks, cases etc) and 25 (clothing, footwear, headgear).

Ponte opposed, citing a number of its earlier Italian trade marks and arguing a likelihood of confusion. These were, effectively, the word mark THE BRIDGE and two families of marks, one figurative and one three-dimensional, for similar goods. The OHIM Opposition Division rejected the opposition on the basis that none of Ponte's marks was sufficiently similar. The Board of Appeal agreed, ruling that the principle of interdependence between similarity of goods and signs (i.e. the more similar the goods were, the less similar the marks needed to be in order to establish a likelihood of confusion) was irrelevant here since there was not even a minimum degree of similarity between the parties' respective marks. The Court of Appeal dismissed a further appeal and the Advocate General is urging the full ECJ to do likewise.

The significant feature of this case is how the courts should treat an opposition based on a family of marks, rather than on a single mark, particularly where not all of the members of the opponent's family might yet have been used. On this issue AG Sharpston had this to say:

"95. The issue here is whether the Court of First Instance was correct to judge that the existence of a family or series of marks could be taken into account as possibly increasing the likelihood of confusion with it of a trade mark presented for registration, and containing an element common to the marks in the family or series, only if the latter were actually used on the market – whereas likelihood of confusion with an individual trade mark which has not yet been put to use on the market may be assessed in the abstract.

96. The concept, and significance, of the existence of a family of marks have not yet been explored in any depth by the Community judicature, other than in the present case, but they are familiar to trade mark lawyers around the world.

97. In the United Kingdom, to take but one example, it has long been accepted that an objection based on the existence of a family or series of trade marks must be founded on use of those marks, because the implication is that traders and the public have gained such a knowledge of the common element or characteristic of the series that when they meet another mark having the same characteristic they will immediately associate it with the series of marks with which they are already familiar. Although that case-law dates back to 1947, it continues to be applied today in the context of the Trade Marks Act 1994, which transposes the Trade Marks Directive.

98. The same approach is taken by OHIM, whose Opposition Guidelines state, inter alia:

‘An assumption of family marks on the part of the public requires that the common component of the marks at issue has, by virtue of use, the necessary distinctiveness to be able to serve, in the eyes of the public, as the principal indicator of a product line.

In order to allow the Office to acknowledge that the different trade marks invoked by the opponent effectively form such a
family of marks, the opponent should demonstrate not only that he is the owner of the marks, but also that the public concerned recognises the common part of these marks as originating from one undertaking. Such “recognition” by the public can only be inferred through submitting evidence of use of the family of trade marks.’
99. Such authority cannot of course be binding on the Court. However, its logic is cogent and should in my view be followed.

100. There is no provision for registering a family of trade marks as such – for example, all marks including the element ‘bridge’ in relation to goods in classes 18 and 25. Only individual marks may be registered, and it is to the individual marks that protection is accorded – but for five years only, unless they are put to genuine use. That is why, when a new trade mark application is received, likelihood of confusion with an earlier mark which has been registered for less than five years but not yet used may be assessed in the abstract, by asking the question ‘what would the average consumer’s perception be if he were confronted with the two marks?’

101. With a series of marks containing a common ‘signature’, the situation is different. The series itself is not registered as such, and so cannot enjoy protection as such. However, the existence of such a series of marks may well, if they are in sufficiently widespread use, affect the average consumer’s perception to the extent that he will be likely to associate any mark containing the common element with the marks in the series (assuming that they cover similar goods or services), and thus to assume a common origin for the various products in question. By contrast, no consumer can be expected to detect a common element in a series of marks which has never been used on the market, or to associate with that series another trade mark containing the same element.

102. Likelihood of confusion within the meaning of Article 8(1)(b) of the Trade Mark Regulation may therefore be assessed having regard to the existence of a family of similar trade marks, but only if actual use can be established of a sufficient number of marks to be perceived by the average consumer as forming a series.

103. I am therefore of the view that the fifth ground of appeal, and consequently the appeal in its entirety, should be dismissed".
The AG's words look like an unassailable proposition of Community trade mark law, says the IPKat. Merpel's not quite so sure, adding 'could this be a case of an English AG being impressed by the wisdom of ages, as reflected in British pre-approximation trade mark practice?

Play Bridge here
Musical Bridges here, here and here
Bainbridge on Intellectual Property here

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