Small flash in Luxembourg, few Swedes illuminated; CFI strikes again

Small earthquake in Luxembourg, few Swedes shaken

Case C-316/05 Nokia Corp. v Joacim Wärdell is a gripping ruling from the European Court of Justice today from Sweden today. The ruling is the first from the ECJ on Article 98(1) of the Community Trade Mark Regulation 40/94, which reads:

"1. Where a Community trade mark court finds that the defendant has infringed or threatened to infringe a Community trade mark, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with".

Nokia owned both Swedish and Community trade marks for the word NOKIA for ‘mobile telephones and their accessories’. In 2002 Wärdell imported ‘flash stickers’ into Sweden from the Philippines (these are adhesive stickers attached to mobile telephones, containing a light-emitting diode which flashes when the phone rings). Some of these flash stickers or their packaging bore the NOKIA mark. Nokia sued Wärdell (who said he knew nothing about the infringing stickers) for trade mark infringement and sought an order prohibiting him, on pain of a fine, from using in the course of his business activities any signs capable of being confused with the NOKIA trade mark.

The trial court thought there was a risk that Wärdell might import more infringing stickers and ordered the relief sought. On appeal, the Svea hovrätten (Svea court of appeal) agreed that he had infringed and might infringe again but, noting that he had never committed such acts before and could be accused only of carelessness, said there was no need to impose on him a prohibition with a fine attached. Nokia then appealed to the Högsta domstolen (Supreme Court) which stayed the proceedings and sought answers from the ECJ to the following questions:

"1. Is the condition relating to “special reasons” in the first sentence of Article 98(1) of Regulation 40/94 … to be interpreted as meaning that a court which finds that the defendant has infringed a Community trade mark may, irrespective of the other circumstances, refrain from issuing a specific prohibition of further infringement if the court considers that the risk of further infringement is not obvious or is otherwise merely limited?

2. Is the condition relating to special reasons in the first sentence of Article 98(1) ... to be interpreted as meaning that a court which finds that the defendant has infringed a Community trade mark may, even if there is no such ground for refraining from issuing a prohibition of further infringement as contemplated in Question 1, refrain from issuing such a prohibition on the grounds that it is clear that a further infringement is covered by a statutory general prohibition of infringement under national law and that a penalty may be imposed on the defendant if he commits a further infringement intentionally or with gross negligence?

3. If the answer to Question 2 is no, must specific measures, by which a prohibition is for example coupled with a penalty, be taken in such a case to ensure that the prohibition is complied with, even where it is clear that a further infringement is covered by a statutory general prohibition of infringement under national law and that a penalty may be imposed on the defendant if he commits a further infringement intentionally or with gross negligence?

4. If the answer to Question 3 is yes, does this apply even where the conditions for adopting such a specific measure in the case of a corresponding infringement of a national trade mark would not be regarded as fulfilled?".

In answer to these questions, the ECJ has just ruled:

"1. Article 98(1) ... is to be interpreted as meaning that the mere fact that the risk of further infringement or threatened infringement of a Community trade mark is not obvious or is otherwise merely limited does not constitute a special reason for a Community trade mark court not to issue an order prohibiting the defendant from proceeding with those acts.

2. Article 98(1) ... is to be interpreted as meaning that the fact that the national law includes a general prohibition of the infringement of Community trade marks and provides for the possibility of penalising further infringement or threatened infringement, whether intentional or due to gross negligence, does not constitute a special reason for a Community trade mark court not to issue an order prohibiting the defendant from proceeding with those acts.

3. Article 98(1) ... is to be interpreted as meaning that a Community trade mark court which has issued an order prohibiting the defendant from proceeding with infringement or threatened infringement of a Community trade mark is required to take such measures, in accordance with its national law, as are aimed at ensuring that that prohibition is complied with, even if the national law includes a general prohibition of infringement of Community trade marks and provides for the possibility of penalising further infringement or threatened infringement, whether intentional or due to gross negligence.

4. Article 98(1) ... is to be interpreted as meaning that a Community trade mark court which has issued an order prohibiting the defendant from proceeding with infringement or threatened infringement of a Community trade mark is required to take, from among the measures provided for under national law, such as are aimed at ensuring that that prohibition is complied with, even if those measures could not, under that law, be taken in the case of a corresponding infringement of a national trade mark".

The IPKat can't see how the ECJ could realistically have reached any other decision. The bulk of the court's ruling isn't taken up by arguments so much as by the need to state the obvious in sufficiently clear and precise terms as to put the issue beyond ambiguity or doubt. Merpel says, it's helpful to be reminded that Community trade marks are independent of national marks and that Article 98(1) may force a court's hand where weak and wimpish national provisions would (or could) not do so.


CFI strikes again

The Court of First Instance of the European Communities has given four rulings today. One is, alas, only in French and Italian: it's Case T-392/04 Gagliardi v OHIM, Norma Lebensmittelfilialbetrieb. The applicant's mark was MANU MANU MANU (right); the opponent's was the word mark MANOU. If there's anything significant in this decision that we should all know about, will someone please tell this Kat.

The other three rulings were in Cases T-81/03, 82/03 and 103/03 Mast-Jägermeister v OHIM, Licorera Zacapaneca, involving applications to register as Community trade marks three deer logos bearing the word VENADO for various alcoholic and non-alcoholic drinks in Class 32 and 33. The original oppositions, based on earlier registered deer logos without the word VENADO, failed, the Opposition Division in each case considering that, despite the similarity, there was no likelihood of confusion among relevant (Spanish) consumers. Today the CFI has just annulled these decisions.

When trailing this decision, the IPKat picked out para.22 of one of the decisions under appeal, where the Board of Appeal said:

"The Board took the liberty of sampling the United Kingdom trade marks register and discovered that the deer or deer’s head motif is also found to be a common feature on trade marks covering beverages. It is not difficult to see why. Traders in beverages – particularly alcoholic beverages – like to associate in the mind of the consumer, their product with unspoilt wilderness, highland areas, of rugged and manly pursuits such as hunting game. This mental association brings with it the notions of purity, nature and tradition, all important selling points for drinks".

The CFI had this to say (at para.110):

"The intervener’s argument, accepted in the contested decisions, to the effect that images of a deer or a deer’s head are not very distinctive because such images are frequently used to protect beverages must also be rejected. Irrespective of whether the eight registrations relied on by the intervener and the unprompted research undertaken by the Board of Appeal in the United Kingdom trade marks register are sufficient to reach such a conclusion, it must be held that, in the present case, it is not the more general concept of a deer or a deer’s head which acts as a bridging concept between the conflicting marks, but a more specific concept, consisting in a representation, in the form of a medal, of a deer’s head facing forward in a circle".

This decision, by the way, also has some interesting observations on costs, adding (at para.117):

"... the position adopted by OHIM in relation to the decisions of its own Board of Appeal does not constitute exceptional circumstances capable of justifying the sharing of costs under the first subparagraph of Article 87(3) of the Rules of Procedure. As observed in paragraphs 24 to 29 above, OHIM is not required to defend systematically every contested decision of its Boards of Appeal and can endorse a head of claim of the applicant’s. Such a position by OHIM is not therefore liable to prejudice the legitimate expectations of the intervener".