EUROPE'S BIG DAY: ONE FROM THE COMMISSION, TWO FROM THE COURTS

1 European Innovation

The old, tired Innovation and Technology Transfer magazine, produced bimonthly by the European Commission's Directorate General for Enterprise and Industry almost since time immemorial, has been relaunched as European Innovation. This title, which is also available online, covers a wide range of policy issues relating to innovation and tech transfer, including the results of research on use of IP within industry, matching licensors with licensees, test-marketing and news of innovation-related conferences, programmes and events. Contents of the current issue here. More to the point, it tells Eurosceptics what the Commission is (or is not, says Merpel) doing to foster innovation and its commercial exploitation in the European Union. The IPKat thinks the new format is a big improvement on its predecessor but, as with all publications, the proof of its worth must lie in its content, not in its cuteness.


2 Breaking news from Luxembourg

Two cases from the European Court of Justice (ECJ) and its Court of First Instance (CFI) today:

* Case T-320/03 P Citicorp v OHIM. Citicorp applied to register as a Community trade mark the words LIVE RICHLY for a large number of financial services in Class 36. The application was refused for want of distinctive character. The Board of Appeal agreed, concluding that the relevant public would view the words as a simple laudatory formula and not as an indication of the commercial origin of the services in question.

Citicorp's further appeal was dismissed by the CFI, in a lengthy judgment that demonstrated that the applicant's legal advisers had left no stone unturned at least twice in their desperate search for a legal ground upon which to reverse the irreversible - no doubt motivated by the fact that OHIM had already allowed registration of LIVE RICHLY for insurance and real estate services. The CFI said:

"84 ... the fact that the non-descriptive sign LIVE RICHLY can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin ...

85 In the present case ... the relevant public will, in the context of financial and monetary services, effectively perceive that sign primarily as a promotional formula and not as an indication of the commercial origin of the services in question. There is nothing about the sign LIVE RICHLY that might, beyond its obvious promotional meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services designated. Even if the sign were used alone, without any other sign or trade mark, the relevant public could not, in the absence of prior knowledge, perceive it other than in its promotional sense ...

86 As regards the paradoxical nature of that argument in relation to OHIM’s acceptance of the LIVE RICHLY mark for insurance and real estate services, it must be emphasised that the Court’s jurisdiction is limited to the application of Regulation No 40/94 to the dispute before it. Whilst it is indeed necessary, so far as possible, to maintain consistency in accepting trade marks, it is not for the Court to rule on trade marks beyond the confines of the dispute before the Court".

The IPKat sometimes wonders whether it's worth rejecting applications when you know that the applicant is just going to keep plugging away until it gets what it wants. Says Merpel, it must be so disheartening for the poor examiner.

* Case C-37/03 P BioID AG v OHIM. BioID's application to register its logo (right) for biometric testing products and associated services failed: the mark was descriptive and lacking in distinctive character since it was basically a contraction of the words "biometric identification" and the word element dominated the figurative dimension of its appearance. The CFI agreed. BioID's appeal to the ECJ was however successful - but only in a Pyrrhic sense since the applicant still didn't get its mark on the register. Said the ECJ:

"56 ... the appellant ... claims that the CFI [erred] in finding that the trade marks referred to in that provision are, in particular, those which, from the point of view of the relevant public, are commonly used in trade in connection with the presentation of the goods or services concerned or in respect of which there is, at least, evidence that they could be used in that way.

57 OHIM contends that the CFI did not commit any error in considering that the trade mark applied for can be commonly used. In its opinion, that trade mark would not readily be perceived as a mark of origin by the limited public targeted by the application in this case. Furthermore, at the hearing, OHIM raised by implication the question of the admissibility of this head of claim which had not been raised in the appeal.

...

61 ... the CFI primarily accepted the fact that the trade mark applied for is commonly used in trade, in order to establish that it [was not distinctive].

62 It must, however, be stated that, as the Court of Justice held in paragraph 36 of SAT.1 v OHIM, ... that criterion, although relevant in relation to [descriptiveness], is not the yardstick by which [distinctive character] must be interpreted".

This did nothing to help BioID in the long run, since the ECJ ruled that the mark was still descriptive and lacking in distinctive character according to other criteria and could not therefore be registered.

The IPKat has a sort of sneaking sympathy for the applicant in this case: the visual impact of the mark is not inconsiderable. So long as the term 'bio-id' is not monopolised, there should be no trouble ...

Biometric identification here , here and here