Fordham Focus 13: European trade marks

James Nurton (Managing Editor, Managing Intellectual Property magazine) moderated this year's EU trade mark session, which was opened by the stellar Paul Maier (OHIM). Paul led the audience through three recent Court of Justice of the European Union (CJEU) rulings: Rintisch, Leno Merken and IP TRANSLATOR. Eight minutes was scarcely enough time for Paul to be able to explain the legal, political and administrative niceties of these three cases, though it was ample time to leave us all in admiration of his masterly account of them. Paul mentioned that the latter two decisions are or may have been "made up" -- a fact that might make them less exciting as disputes but does not detract from their legal significance.

Asked by James whether Rintisch and Leno Merken -- the ONEL/OMEL case -- whether right or wrong, were sufficiently clear, Paul gave a  good summary of the mechanism by which the Court was asked and answered questions, the fact that it sometimes made statements on matters that fell outside the strict scope of the questions -- and that, in effect, it was something that we all had to live with [not Paul's own words].

Spyros Maniatis ((Queen Mary) then gave a blow-by-blow account of the CJEU ruling on bad faith in Case C-529/07 Lindt. and the General Court decision in Case T-136/11 Pelikan, which dealt with the making of repeat applications for almost-the-same marks.  Spyros then looked at lack of intention to use as a ground of bad faith, in the context of England and Wales case law.

Third to speak was John Olsen (Edwards Wildman) then addressed the current set of proposals for amendment of the Community trade mark and harmonised national trade mark law in Europe.  12 of the 27 EU Member States currently conduct relative grounds opposition procedures: under the new proposals this will go.  The requirement of graphic representation of marks for which registration is sought will be replaced by a purposive requirement that enables marks to be recognised and identified regardless of their form.  Use of a registered trade mark as a trade name or company name would be explicitly deemed to be an infringement, as would mark-based comparative advertising which breaches the EU's advertising laws. The 'use of one's own name' defence will apply only to people's names, not company names.

Finally Peter Ruess (Arnold Ruess) touched on trade mark distinctiveness, looking at the Brazilian dispute in which Gradiente kept Apple off the iPhone trade mark via its earlier Gradiente iphone mark. Apple had argued that Gradiente's mark should not have been registered, since it was a descriptive term.  He went on to review some CJEU jurisprudence and OHIM decisions in the light of the weight to be placed on the meaning given to a word by native speakers, the doctrine of precedent, the value of its own earlier decisions and the significance of decisions of national courts.