DOES BOVERMIJ BOVVER YOU? IT SURE BOVVERS ME

Yet another Opinion from the European Court of Justice, this time from Advocate General Sharpston, making what the IPKat thinks must be his debut in an IP matter: it's Case C-108/05 Bovemij Verzekeringen NV v Benelux-Merkenbureau.

Bovemij applied to register the word EUROPOLIS as a Benelux mark for various services, including insurance, financial affairs and travel arrangements. The Benelux Trade Mark Office (BBM) told Bovemij it was provisionally refusing registration on the ground of lack of distinctive character. Bovemij retorted that the sign had been lawfully used as a mark in trade since 1988 by its subsidiary, Europolis BV. "So what?", said the BBM and refused the application.

Bovemij appealed to the Hague Regional Court of Appeal on the basis that even if EUROPOLIS wasn't distinctive when the application was first made (what it was), it had become so by the time it had to be considered. The court was sure that the mark wasn't inherently distinctive, but had its doubts about the acquisition of distinctiveness bit, so it stopped the show and sent the following questions to the ECJ for a preliminary ruling:

"(1) Must Article 3(3) of the Trade Marks Directive be interpreted as meaning that in order to acquire distinctive character (in the present case through a Benelux trade mark) as a result of use, as referred to in that provision, it is necessary that the sign be regarded as a trade mark, before the date of application, by the relevant public throughout the Benelux territory and, therefore, in Belgium, the Netherlands and Luxembourg?

If the answer to question 1 is in the negative:

(2) Is the condition for registration laid down in Article 3(3) of the Trade Marks Directive satisfied, for the purposes of that provision, if the sign, as a result of the use made of it, is regarded as a trade mark by the relevant section of the public in a substantial part of the Benelux territory and can this substantial part be, for example, the Netherlands alone?

(3)(a) When assessing distinctive character acquired through use, within the meaning of Article 3(3) of the Trade Marks Directive, of a sign – consisting of one or more words of an official language in the territory of a Member State (or, as in the case in point, the Benelux territory) – is it necessary to take into account the language regions within that territory?

(b) For registration as a mark, should the other requirements for registration be satisfied, is it sufficient if/required that the sign be regarded as a trade mark by the relevant section of the public in a substantial part of the language region of the Member State (or, as in the case in point, of the Benelux territory) in which that language is an official language?".

Advocate General Sharpston advised the ECJ to rule as follows:

"Questions 1 and 2

It is not necessary, for the purposes of assessing acquisition of distinctive character of a word mark through use under Article 3(3) of the Trade Marks Directive, to have regard to the entirety of the Benelux territory (Belgium, the Netherlands and Luxembourg) if for linguistic reasons the relevant class of persons, as previously defined for the purposes of Article 3(1), is to be found only in parts of that territory.

Question 3

Linguistic communities in a Member State or in the Benelux territory should be taken into account in assessing acquired distinctive character through use of a sign consisting of word or words.

Where a word mark would fall to be refused registration as devoid of any distinctive character (Article 3(1)(b)) and/or because it consists entirely of a word or words that are descriptive in a particular language (Article 3(1)(c)), that mark may only be registered under Article 3(3) where it can be shown that the mark has acquired distinctive character through use throughout the relevant linguistic community (namely, of the Member State, or of the Benelux territory taken as a whole)".

In other words, while for Community trade mark (CTM) purposes a mark must be shown to have acquired distinctiveness throughout the territory of the CTM before it can be registered, no such rule applies for national and regional trade marks. As the Advocate General said, having cited Case T-91/99 FordMotor Company v OHIM (OPTIONS) [2000] ECR II-1925:

"44. The BTMO’s position – namely that the sign must be regarded as a mark throughout the Benelux territory before it can be registered - is based on Ford. That case was concerned with whether a mark had acquired sufficient distinctive character through use to be registered as a Community trade mark under Article 7(3) of the Community Trade Mark Regulation. It seems to me that the rationale for the territorial assessment applied in Ford is not appropriate when determining whether distinctive character through use has been acquired by a national mark under the Trade Marks Directive.

45. The Community trade mark and national trade marks are conceptually different. If a mark is to be given Community-wide recognition in the terms provided for by the Community Trade Mark Regulation, it is reasonable to require the mark’s owner to demonstrate distinctive character acquired through use over a greater geographical area. The Community trade mark has a unitary character throughout the Community. National registration of a trade mark merely gives it that character throughout the Member State in question. It is significant that Article 7(2) of the Community Trade Mark Regulation states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. There is, however, no equivalent to that provision in Article 3 of the Trade Marks Directive. Because the Community trade mark is a unitary mark which, if registered, will be effective throughout the territory of the Community, it is right to impose the condition contained in Article 7(2). Such a mark ought not to be registered if there exist, in any part of the Community, grounds for non-registration. The same considerations do not apply to the registration of national trade marks as harmonised by the Trade Marks Directive.

46. Furthermore, the two measures are concerned with different situations. Although both aim to further the establishment and functioning of the internal market, the Trade Marks Directive does so in a more limited way, by putting in place a partial harmonisation of national trade mark law. In contrast, the Community Trade Mark Regulation creates a new type of intellectual property right, namely a Community trade mark".

The IPKat thinks this is a very brave statement and he wonders whether the full court will let it stand. In economic terms and in terms of principle it seems strange to end up with the conclusion that, in a large community that consists of cats, dogs, sheep, goats and badgers, a mark that no dog regards as distinctive can't be registered as a trade mark while, in a smaller jurisdiction consisting of merely cats and dogs, the fact that cats regard the mark as distinctive but dogs don't do so will not affect the mark's ability to be registered.

Other Europolises here , here , here , here and here