The slow disappearance of disclaimers: the CJEU decision in Hansson, C-705/17

In her Swedish days this InterKat didn’t have the change to get to know the Roslags region, further North than Stockholm. The decision of the Court of Justice of the European Union (CJEU) earlier this week in Hansson, C-705/17 dealing with disclaimer will make it up for her lack of a trip! 

Stockholm: Roslags is further North.

As readers might remember, a disclaimer consists of a note recording a statement of waiver which accompanies the registration of a trade mark when it is composed of more elements and it contains descriptive or general words. The aim of the disclaimer is to make it clear that the descriptive element is not covered by exclusive rights. 

The European trade marks system has permitted the use of disclaimer until the repealing of Regulation 207/2009 (as for 23 March 2016). According to the Study on the overall functioning of the European Trade Mark System, only few national trade marks systems envisage(d) [read on] disclaimers. More precisely, Sweden, Ireland and Latvia have (had) them. 

Let’s see what this case was all about! 

Background 

In 2007, Swedish company Norrtelje Brenneri Aktiebolag registered, for alcoholic drinks in Class 33 of the Nice Agreement as a national trade mark the word and figurative trade mark 'RoslagsPunsch'. The registration was accompanied by a disclaimer stating that ‘registration does not give an exclusive right over the word RoslagsPunsch’. 

In 2015 Mr Hansson applied for registration of the word sign ‘ROSLAGSÖL’ as a national trade mark for goods in Class 32 of the Nice Agreement, in particular non-alcoholic beverages and beers.
By decision of 14 July 2016, the Swedish registration office rejected the application for registration because of the likelihood of confusion between the sign and the earlier trade mark. Mr Hansson brought an action against this decision before the Patent- och marknadsdomstolen which allowed his application. This decision was appealed before the Svea hovrätt, Patent- och marknadsöverdomstolen. 

The Swedish company Norrtelje Brenneri Aktiebolag's national trade mark

This court was uncertain whether Article 4(1)(b) of Directive 2008/95 might be interpreted as meaning that a disclaimer can affect that assessment because an element of the earlier trade mark was, at the time of registration, expressly excluded from protection by means of that disclaimer, so that that element must be given less importance in the analysis of the overall impression than it would have had in the absence of the disclaimer. 

As a result, a referral was made to the CJEU.

Analysis

In answering this question, the CJEU considered:

1. the essential function of a trade mark, that is the indication of origin of the products; 
2. the aim to ensure that registered trade marks enjoy the same protection under the legal systems of all the Member States; and 
3. the conditions for obtaining a registered trade mark which are, in general, identical in all Member States. 

The CJEU recalled that likelihood of confusion between marks must be appreciated globally. As a result, a disclaimer provided for by national law whose effect was to exclude an element of a complex trade mark, mentioned in the disclaimer, from the analysis of the relevant factors for establishing the existence of a likelihood of confusion within the meaning of Article 4(1)(b) of Directive 2008/95 because that element is descriptive or not distinctive would not be compatible with the requirements of that provision as it would lead to an incorrect assessment. 

Moreover the CJEU noted that the determination of distinctiveness depends on the inherent characteristics of the trade marks, comprehensive of the elements that are descriptive. In any case, such elements, object or not of a disclaimer, generally have less weight in the analysis of similarity between the signs than the element of greater distinctiveness. 

Finally the CJEU limited the scope of a finding of likelihood of confusion in the case of a complex trade mark with a descriptive element. The exclusive rights will be limited to the combination of elements without, however, a descriptive element which forms part of that combination being protected as such. The proprietor of a complex trade mark cannot in any event claim an exclusive right solely on one element of the trade mark, whether or not it is referred to in a disclaimer provided for by national law. 

In the light of the above, the CJEU answered to the question in the sense that 

Article 4(1)(b) of Directive 2008/95/EC must be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the global analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, or to attribute to such an element, in advance and permanently, limited importance in that analysis.

Comment
 

It seems to this InterKat that this decision equates a descriptive, non-distinctive element, which is subject to a disclaimer, to a descriptive, non-distinctive element which is not subject to a disclaimer. 

The element covered by the disclaimer has to be considered in the global analysis to establish the possible likelihood of confusion and the importance of such an element cannot be considered, in advance and permanently, as limited.

Moreover, in Windsurfing Chiemsee, C‑108/97 and C‑109/97 the CJEU held that:

where a sign is validly registered as a trade mark, the exclusive right conferred by the mark does not allow its proprietor to prohibit a third party from using in the course of trade descriptive indications for the goods and services concerned, subject to compliance with certain conditions

As readers might remember, Directive 2008/95 did not pursue the objective of full-scale approximation of the trade mark laws of the Member State. As a consequence, the provisions of procedure, including those related to the registration of trade marks, were not interested by the harmonization. Directive 2015/2436, on the other hand, aims to a fuller harmonization, in particular in light of Recitals 8 and 9:

it is necessary to go beyond the limited scope of approximation achieved by Directive 2008/95/EC and extend approximation to other aspects of substantive trade mark law governing trade marks protected through registration pursuant to Regulation (EC) No 207/2009.

and

it is essential to approximate not only provisions of substantive law but also procedural rules. Therefore, the principal procedural rules in the area of trade mark registration in the Member States and in the EU trade mark system should be aligned.

In the light of the above, the registration offices of Member States whose systems still include provisions concerning disclaimers could be forced to abandon them, and the legislature of those Member States might have to remove provisions concerning disclaimers.