THURSDAY MISCELLANY

1 Some serious trade mark law from the IPKat ... for a change.

Both IPKat blogmeisters have articles in the current issue of IIC (in full: the International Review of Intellectual Property and Competition Law), which is published six times a year by Verlag C. H. Beck (Munich) and by Hart Publishing (Oxford). The two articles are

* "Trade Mark Law and the Need to Keep Free", by Jeremy, and

* "How Does 'Essential Function' Doctrine Drive European Trade Mark Law?", by Ilanah.

Both articles originated with papers delivered at the annual Fordham University IP conference, March 2004.


2 BIKER MILES ruling

The Court of First Instance of the European Communities has given its ruling in Case T-385/03, Miles Handelsgesellschaft International mbH v Office for Harmonisation in the Internal Market, Biker Miles Motorrad Handels- und Vertriebsgesellschaft mbH, intervening. Biker Miles applied to register as a Community trade mark this attractive logo for goods in Classes 9, 12 and 25 that included "equipment and clothing for riders of two‑wheeled vehicles, namely boots, shoes, gloves, scarves, rainwear, weather protection clothing, pullovers, helmets, kidney protectors, leather clothing, imitation leather clothing". Miles opposed, citing its earlier Community trade mark MILES, registered for "clothing, including sportswear" in Class 25. The Opposition Division bizarrely considered there to be a likelihood of confusion; the Board of Appeal disagreed. In its opinion, notwithstanding the identical nature of some of the parties' respective goods, the verbal difference between the two marks and the fact that one of them was a logo killed any risk that consumers might be confused. Today the CFI restored insanity by allowing the opponent's appeal, taking the view that the dominant element of each mark was the same and that consumers would accordingly be confused. The IPKat hopes that Biker Miles will either appeal to the European Court of Justice or just go ahead and use its logo, to see whether or not a real court would consider that there was any genuine likelihood of confusion. Merpel says, "sssh! you shouldn't be saying things like that ..."

3 Parts of compound slogans may be registered as trade marks ...

The European Court of Justice has ruled today in Case C-353/03 Société des produits Nestlé SA v Mars UK Ltd that a sign which constitutes part of a well-known slogan that itself incorporates a well-known trade mark is not excluded from registration for lack of distinctiveness. This is because it may acquire distinctive character regardless of whether it is used in conjunction with another trade mark. Thus, on the facts of the issue referred to the Court, HAVE A BREAK may acquire distinctiveness through its use as part of the slogan "Have a break ... Have a KIT-KAT". This decision was very short and cited almost no case law, perhaps indicating that the Court felt that there was no major issue of principle to determine.

4 ... as may marks in respect of retail sales services

Another of today's events is the European Court of Justice's ruling in Case C-418/02, Praktiker Bau- und Heimwerkermärkte AG on a reference from the German Bundespatentgericht. Praktiker Märkte applied to register with the Deutsches Patent- und Markenamt the word mark PRAKTIKER for "retail trade in building, home improvement and gardening goods for the do-it-yourself sector". The Office rejected the application on the basis that service marks were not available for retail trade. Praktiker Märkte appealed to the Bundespatentgericht, which stayed the proceedings and sought the ECJ's guidance in the form of a preliminary ruling. The ECJ ruled as follows:

"1. The concept of ‘services’ referred to by Council Directive 89/104, in particular in Article 2, covers services provided in connection with retail trade in goods.

2. For the purposes of registration of a trade mark for such services, it is not necessary to specify in detail the service(s) in question. However, details must be provided with regard to the goods or types of goods to which those services relate".

The IPKat is delighted with this decision, which OHIM reached some years ago. Merpel is not so sure: how does this affect the difficult issue of whether retail sale of goods and the goods themselves are in practice 'similar' for the purposes of likelihood of confusion? The court has said:

"48 There is nothing to indicate that any problems resulting from the registration of trade marks for retail services could not be resolved on the basis of the two relevant provisions of the directive, as they have been interpreted by the Court. In that regard, it should be recalled that, according to the Court’s case‑law, the likelihood of confusion must be assessed globally, taking into account all the factors relevant to the circumstances of the case (see Case C-251/95 SABEL [1997] ECR I‑6191, paragraph 22, and Case C-39/97 Canon [1998] ECR I-5507, paragraph 16). In the context of that global assessment, it is possible to take into consideration, if need be, the particular features of the concept of ‘retail services’ that are connected with its wide scope, having due regard to the legitimate interests of all interested parties.

49 In those circumstances, for the purposes of registration of a trade mark covering services provided in connection with retail trade, it is not necessary to specify in detail the service(s) for which that registration is sought. To identify those services, it is sufficient to use general wording such as ‘bringing together of a variety of goods, enabling customers to conveniently view and purchase those goods’".

But will this help resolve the evidentiary and practical issues that are likely to arise? Also, the ruling doesn't mention online sales services. Will these automatically be covered by the same general principles?