NEWS FROM LUXEMBOURG; LATEST JIPLP

News from Luxembourg

A couple of exciting things emerged from Luxembourg yesterday while the IPKat was distracted by other things. They are

* The Opinion of Advocate General Eleanor Sharpston in Case C-239/05 BVBA Management, Training en Consultancy v Benelux-Merkenbureau. While this is ostensibly a 'Law relating to undertakings' (for that is how the little man inside the Curia computer has categorised it), the IPKat knows that it's really a trade mark case. Simply put, what happened is this:

MT&C applied to register the word mark THE KITCHEN COMPANY in the Benelux for various goods in classes 11, 20 and 21 and certain services in classes 37 and 42 of the Nice Agreement. For each class referred to, the specific goods and services for which trade mark protection was sought were listed. The Benelux Trade Mark Office (BMB) refused registration on the ground that it was solely descriptive of the kind, quality, origin or intended purpose of the goods and services mentioned in classes 11, 20, 21, 37 and 42 provided by, for or in connection with a kitchen company. Accordingly the mark had no distinctive character. The BMB did not formulate a final conclusion in respect of each separate type of goods or service, just stating that THE KITCHEN COMPANY for lacked any distinctive character. MT&C appealed.

The appellate court agreed that, for goods and services in classes 11, 20, 37 and 42, the mark lacks distinctive character. But for goods in class 21 [that's basically household and kitchen utensils], the court considered the mark was descriptive only for kitchen utensils. For other class 21 goods, the averagely well informed consumer would not view THE KITCHEN COMPANY, on the basis of spontaneous linguistic reflex, as referring to the intended use of the goods. If the mark was not descriptive for such goods, it was distinctive and should be registered.

In the face of opposition from the BMB and in the light of doubts as to whether the existing ECJ and Benelux law was being properly applied, the appeal court referred the following questions to the ECJ:

"‘(1) Is the trade mark authority required, after its examination of all relevant facts and circumstances concerning an absolute ground of refusal, to state in its provisional and in its definitive decision on the application its conclusion in regard to each of the goods and services separately in respect of which trade mark protection is sought?

(2) May the relevant facts and circumstances to be taken into account by the adjudicating authority in the event of an appeal against the decision of the trade mark authority be different as a result of a lapse of time between the two dates on which the decisions are made or must the adjudicating authority only take account of such facts and circumstances as were available at the moment when the trade mark authority made its decision?

(3) Does the interpretation by the Court of Justice in the Postkantoor judgment preclude national legislation in regard to the competence of the adjudicating authority from being construed as meaning that that authority is prevented from taking account of any alteration in the relevant facts and circumstances or from ruling on the distinctive character of the mark for each of the goods and services in themselves?’".

Advocate General Sharpston has advised the ECJ as follows:

"(1) Council Directive 89/104 ... does not require a trade mark authority which refuses registration of a trade mark to state in its decision a separate conclusion with regard to each of the individual goods and services for which trade mark protection was sought. It is sufficient that it appears from the decision why registration was refused for particular categories of goods and services.

(2) Directive 89/104 leaves it to national law to determine whether a court reviewing a decision of a trade mark authority refusing registration of a mark may take account of facts and circumstances which were not available at the moment when the trade mark authority made its decision.

(3) It is consistent with Directive 89/104 for national rules to preclude a court which is reviewing such a decision from (i) taking account of facts and circumstances which were not available at the moment when the trade mark authority made its decision and (ii) from ruling on the distinctive character of the mark for each of the goods and services separately, provided that those rules afford the applicant an effective opportunity to seek partial registration of the mark (namely, registration in respect of only certain goods and/or services covered by its principal application) in its application to the trade mark office".

The IPKat says this seems a sound and workable approach. If examiners and, worse, Boards of Appeal, had to make a separate determination in respect of each single product or service for which application was made, decisions would take longer and be longer, without necessarily achieving any gain, since it's generally the crummiest, most non-distinctive signs that cause the trouble in this regard. Merpel's not so sure: it can be valuable for an applicant to secure a toe-hold on the register for a marginally registrable mark so that, by using the mark it can build up its protection into a broader set of classes.

* The ruling of the ECJ in Case C-53/03 Commission of the European Communities v Portugal - where the court accepted the recommendation of the Advocate General (on which see the IPKat, here) and ruled that Portugal had failed to implement Articles 4 and 5 of Council Directive 92/100 on rental and lending rights and on certain rights relating to copyright in the field of intellectual property. In short,

"by exempting all categories of public lending establishments from the obligation to pay remuneration to authors for public lending, the Portuguese Republic has failed to fulfil its obligations under Articles 1 and 5 of Council Directive 92/100 ...".

This wasn't a difficult jurisprudential issue, says the IPKat. But how come, when the Directive should have been implemented in Portugal by 1 July 1994, has it taken so long to call the culprits to account?


Latest JIPLP

The July issue of the Oxford University Press monthly Journal of Intellectual Property Law & Practice is now out and about. Features this month include

* a coruscating attack by Tony Willoughby, "Domain Name DRS Policies: from the sublime to the ridiculous", on the dispute resolution procedure for .eu domains (abstract here);

* Jonathan Griffiths, "Comparative advertising and celebrity photographs—fair dealing under the CDPA 1988", furnishes an untidy legal topic with a firm logical structure for legal analysis (abstract here);

* Ben Goodger, "The Assignment Convention: how will it affect IP licensors?", provides some potentially bad, bad news for any business that depends on licence revenue (abstract here).

Left: lots of lovely flowers in search of a caption that will make them relevant to this post. Any suggestions?

The publishers have agreed to make the Editorial for each issue available to everyone, whether they subscribe to JIPLP or not. This month's Editorial, "IP litigation, the new money-spinner" (here), takes a look at the way in which IP infringement actions can be profitable for the parties - and even the judge - rather than just a drain on their funds. For a full list of Editorials published so far, with links, click here.

Full contents of this issue here.