Color, CTM and CMS: the plot thickens

The IPKat has spotted an exciting appeal that is heading for the Court of Justice of the European Communities in Case 408/08 P Lancôme parfums et beauté & Cie SNC v OHIM - CMS Hasche Sigle. This appeal arises from a successful application to cancel Community trade mark 2965804 COLOR EDITION (Class 3: cosmetics).

Lancôme's main grievance is that the applicant for cancellation had no business to do so: it lacked capacity on the basis that it was a law firm and that, as such, it had not shown that it had an actual or potential economic interest which might warrant a law firm, acting on its own behalf, to give it the capacity to bring legal proceedings for a declaration of the invalidity of a trade mark for cosmetics. According to Lancôme,

"Community law does not recognise actions brought in the absence of a private individual or economic interest (actio popularis)".

Even if there was no such a barrier to bringing cancellation proceedings, Lancôme argues that it's just not the sort of thing you'd expect from so noble a profession:

"... to concede that a lawyer, acting on its own behalf, may bring an application for removal from the register of a trade mark is, on any view, incompatible with the professional profile of a lawyer, as a member of the legal profession".

By its second plea, Lancôme challenges the finding of the Court of First Instance (noted here on Class 46) that the trade mark COLOR EDITION was descriptive and thus barred from registration under Article 7(1)(c) of Regulation 40/94. Says the cosmetics company:

"That interpretation conflicts with the Court's case-law relating to the constituent elements of the concept of a descriptive mark. Being able to infer from a trade mark the protected goods and their characteristics is not an adequate test. It is necessary to ascertain whether the chosen terms, taken individually as well as jointly, are known and usually employed in the everyday language of the relevant public [Is this suggesting that the chosen terms are not barred from registration if, taken individually, they are not descriptive while, taken together, they are? Or what? and this another instance of over-analysis and over-intellectualisation of the simple language of the Directive?]".

The IPKat would love to be able to express an opinion on the merits of the appeal, but he can't: the Court of First Instance decision has been translated into 19 of the 22 official languages of the European Union, including Maltese -- but not in English, Czech or Slovak. He suspects, though, that there are quite a few lawyers out there who have been doing much the same sort of thing as CMS Hasche Sigle on behalf off undeclared clients and who have a considerable interest in being able to continue doing so.

Merpel is curious about statement that the actio popularis -- where an individual without an apparent personal interest may invoke the court's action for the public good -- is not part of Community law. Presumably this is because it's in Latin, which is not one of the official languages of the European Union (or the Office for Harmonisation in the Internal Market) ...

Cat cosmetics here