Develey disappointed as ECJ resists Paris squeeze

Another no-hope Community trade mark appeal Case C‑238/06 P, Develey Holding GmbH & Co. Beteiligungs KG, was rejected by the European Court of Justice last Thursday, 25 October. Develey applied to register, in Classes 29, 30 and 32, the shape of a plastic bottle. The examiner, Board of Appeal and Court of First Instance (discussed by the IPKat here) all agreed that the bottle shape was unregistrable because it was devoid of distinctive character.

Before the European Court of Justice Develey argued not only that it was distinctive, but that there had been a violation of Article 6 quinquies of the Paris Convention which states:

"A. (1) Every trademark duly registered in the country of origin shall be accepted for filing and protected as [it] is in the other countries of the Union, subject to the reservations indicated in this Article. Such countries may, before proceeding to final registration, require the production of a certificate of registration in the country of origin, issued by the competent authority. No authentication shall be required for this certificate.

(2) Shall be considered the country of origin the country of the Union where the applicant has a real and effective industrial or commercial establishment, or, if he has no such establishment within the Union, the country of the Union where he has his domicile, or, if he has no domicile within the Union but is a national of a country of the Union, the country of which he is a national.
B. Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases:

(i) when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed;

(ii) when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed;

(iii) when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order.

This provision is subject, however, to the application of Article 10 bis".

It was Develey's contention that Article 6 quinquies was part of EU law since the EU and its member states were members of the World Trade Organization and Article 2(1) of WTO's Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPs) requires members to apply the substantive provisions of the Paris Convention. OHIM's failure to apply Aricle 6 quinquies meant that it had failed to protect Develey's earlier German registration of the same trade mark. The ECJ was not impressed. It said:

"40 The provisions of the Paris Convention also cannot be relied on directly in the present case.

41 First of all, the Community is not a party to the Paris Convention, in contrast in fact to the TRIPs Agreement.

42 Secondly, when the Community legislature considered it necessary to give some provisions of the Paris Convention direct effect, it expressly referred to them in Regulation No 40/94, in particular, in relation to absolute grounds for refusal, in Article 7(1)(h) and (i) of that regulation. By contrast, Article 7(1) makes no such reference in relation to the distinctive character of trade marks, and the Community legislature has in this respect created a separate provision in Article 7(1)(b) of Regulation No 40/94.

43 Thirdly, while the direct effect of the Paris Convention could flow from the cross-reference made to it by Article 2(1) of the TRIPs Agreement, such a cross-reference cannot, in the absence of the direct applicability of the TRIPs Agreement, render the Paris Convention directly applicable.

44 Consequently, in the present case, neither the TRIPs Agreement nor the Paris Convention is applicable and the Court will examine the grounds of appeal only in so far as they allege a breach by the Court of First Instance of Regulation No 40/94".

The IPKat notes that the ECJ took the remind Develey that it was the applicant to satisfy OHIM that its applied-for mark was distinctive rather than for the office to prove that it wasn't, that the German registration was not affected by the success or failure of the Community trade mark application and that, since the Community trade mark system is an autonomous regime, there is nothing incongruous about one trade mark registry finding a mark distinctive while another does not. Merpel says, looking on the bright side, Develey managed to get from an initial application to a final rejection, via three appeals, in only five and a half years. Well done!

Get the last bit out of the bottle here and here