RODEO - A ROUND-UP OF THE ISSUES

Rodeo - a Round-up of the issues

The IPKat has received information on a fascinating German decision from his friend, lawyer and scholar Malte Hartmann. This is RODEO/RODEO DRIVE, a decision of the Higher District Court Duesseldorf, Case I-20 U 110/04 of 8 November 2005 (available only from the OHIM website). The story goes like this:

The owner of the CTM for RODEO sued Christian Dior in France (the Member State of the defendant´s domicile) for offering sunglasses marked inter alia with the words "Rodeo Drive". The French court found no risk of confusion and dismissed the action, applying French law and considering likelihood of confusion through the eyes of the French consumer in France. Later, an unregistered licensee of the RODEO trade mark sued Dior before the District court of Duesseldorf: this time, the court considered German consumers in the German market. The District Court rejected the claim but the Higher District Court overruled this decision and granted injunctive relief.

The main procedural question was whether the decision of the French court barred the Duesseldorf court from hearing the dispute in the light of Articles 27 or 33 of Regulation 44/2001 on jurisdiction: after all, the parties, trade marks, goods and alleged infringement was identical in each case. The court also had to decide whether a licensee is entitled to enforce a CTM if his licence is not registered, and whether its registration is compulsory pursuant to Article 23 of Regulation 40/94 (the CTM Regulation).

The court decided that the French decision did not prevent a decision on the merits. Since its territorial scope was limited to France, the matter in dispute was different to that in the German proceeding and Article 27 of Regulation 44/2001 did not apply - even though the infringement of the same CTM by the same acts between the same parties was in question. The CTM owner could seek a pan-EU injunction, but the merits of a claim brought by the CTM owner in respect of just one state would be considered in relation to that state.

Article 105 CTMR was not applicable since it requires parallel or subsequent infringement proceedings for identical national and Community trade marks. However, the court stated that - based on the principle of unity of the CTM - Article 105 aims to prevent contradictory decisions between courts of different Member States on the same subject matter. Still, the principle of the parties´ option defining the matter in dispute allows the territorial limitation of claims. The CTMR contains no restriction to prevent the CTM owner from subsequently enforcing his mark in different territories. As to Article 23 CTMR, this provision does not require registration of a licence for the licensee to enforce a CTM: it has only limited scope concerning property issues and is not applicable to infringement issues.

Says Malte:

"The exciting point about this decision is, in my opinion, that the court defines expressly the matter in dispute in CTM infringement procedures by the territority for which the claims are enforced and leaves the definition to the parties. This sounds natural at first, but Article 105 CTMR has a different wording. By applying Article 105 a lawsuit in Greece (for example), based on a Greek TM, would prevent a subsequent lawsuit in the UK between the same parties that was founded on an identical CTM. Of course, there would have to be the same parties and the same cause of action involved, but, this was the case in Duesseldorf (below, right).

Consequently, if the territorial scope of the injunction is at the discretion of the claimant, it must be possible to claim an injunction not only either EU-wide or in one Member State only, but for several Member States, the choice of will be at the claimant´s discretion (provided the court is compentent under Article 94(1) CTMR). This option has been discussed recently by scholars but has not yet arrived in litigation practice (as far as I am aware). It is suitable to provide benefit if the claimant cannot prove risk of confusion or necessary reputation in certain Member States. In such a case he can limit his claims to the Member States in which he can establish them".

The IPKat is delighted to see how much subtle variation can be read into Europe's pan-European Community trade mark protection scheme. It makes plenty of sense to him that German consumers may be confused by things that French consumers can easily tell apart, and vice versa. Merpel says, the Germans have been difficult about confusion ever since TERRAPIN/TERRA NOVA, not to mention the Gerolsteiner episode and ZIRH/SIR. Can anyone explain how a nation that produces so many outstanding scientists, philosophers, musicians and lawyers lives in fear of confusion GERRI and KERRY SPRING ...?

Learn about Rodeo here
Rodeo rissoles here
Rodeos - Peta's view here