Whose pocket is the Court in?

The European Court of Justice has just given its ruling in Case C-145/05, Levi Strauss & Co. v Casucci SpA, on a reference for from the Belgian Cour de cassation, Belgium.

In 1980 Levi Strauss registered in the Benelux its ‘mouette’ (seagull) mark, a design represented by a double row of overstitching curving downwards in the middle, placed in the centre of a pentagonal pocket (above, left), for clothes. Casucci put jeans on to the Benelux market bearing a sign comprising a double row of overstitching, curving upwards in the centre of the back pockets (above, right). Levi Strauss sued for trade mark infringement and, having lost at first instance, appealed to the Cour d’appel de Bruxelles. That court dismissed the appeal, ruling that there was little similarity between the two pocket designs and that the mouette mark could no longer be considered to be highly distinctive, being comprised of components whose characteristics, which were not inherently distinctive, were now common to the products concerned owing to their constant and widespread use, the effect of which was necessarily to weaken significantly that mark’s distinctive character.

Levi Strauss appealed to the Cour de cassation, arguing that, in order to determine whether a mark is highly distinctive, the court should place itself at the time when the sign in question had come into use – that time being, according to Levi Strauss, 1997 – unless (i) the mark had lost its distinctive character in full or in part after that time and (ii) that loss was fully or partly due to the action or inaction of the proprietor of that mark. The Cour de cassation decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

"(1) For the purposes of determining the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, in accordance with Article 5(1) of Directive 89/104, must the court take into account the perception of the public concerned at the time when use was commenced of the mark or similar sign which allegedly infringes the trade mark?

(2) If not, may the court take into account the perception of the public concerned at any time after the commencement of the use complained of? Is the court entitled in particular to take into account the perception of the public concerned at the time it delivers the ruling?

(3) Where, in application of the criterion referred to in the first question, the court finds that the trade mark has been infringed, is it entitled, as a general rule, to order cessation of the infringing use of the sign?

(4) Can the position be different if the claimant’s trade mark has lost its distinctive character wholly or in part after commencement of the unlawful use, but solely where that loss is due wholly or in part to an act or omission by the proprietor of that trade mark?".
The ECJ ruled as follows:

"1. Article 5(1) of ... Council Directive 89/104 ... must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used.

2. Where the competent national court finds that the sign in question constituted an infringement of the mark at the time when the sign began to be used, it is for that court to take such measures as prove to be the most appropriate in the light of the circumstances of the case in order to safeguard the proprietor’s rights deriving from Article 5(1) of Directive 89/104; such measures may include, in particular, an order to cease us of that sign.

3. It is not appropriate to order cessation of the use of the sign in question if it has been established that the trade mark has lost its distinctive character, in consequence of acts or inactivity of the proprietor, so that it has become a common name within the meaning of Article 12(2) of Directive 89/104, and the trade mark has therefore been revoked".
The IPKat does not imagine that trade mark owners will be particularly happy with this. If a trade mark is highly distinctive in 1997, moderately distinctive in 1999 and marginally distinctive in 2001, but has become more distinctive again by 2003, the scope of protection will oscillate and the same unauthorised act, done by four different competitors, may be an infringing act at some times but not at others. However, as Merpel observes, a market is not set in stone: it is a constantly changing commercial environment. The question is not one of doing justice as between the four different competitors but of doing justice between the trade mark owner and his competitors in relation to their consumers at the time they are competing.

Distinctive seagull here

Luxembourg for the chop

Another European Court of Justice ruling, L'affaire C-180/05 Commission des Communautés européennes, contre Grand-Duché de Luxembourg, is seulement in French. This means that it doesn't really count.

Left: Luxembourg, before the ECJ ruling ...

If it did count, Luxembourg would be in really serious trouble. The naughty 'bourgers have failed to implement la directive 92/100/CEE du Conseil, du 19 novembre 1992, relative au droit de location et de prêt et à certains droits voisins du droit d’auteur dans le domaine de la propriété intellectuelle (that's the directive on rental right and lending right and on certain rights related to copyright in the field of intellectual property), which should have been part of Luxy Law since 1 July 1994. For totally and abjectly failing to comply with its obligations under Community law, the ECJ has ordered Luxembourg to host the Eurovision Song Contest for 10 consecutive years, following which it will be turned over to the English as a training ground for their football supporters.

The IPKat adds, there's another thing that Luxembourg has failed to implement. That's the unspoken convention that there should be something to do after 9pm apart from sitting at home and watching the telly. Merpel says, how could those criminals have got away with not implementing the directive for nearly 12 years?
Right: ... and after.

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