EUIPO BoA IP Case Law Conference Report #1 – “An Odyssey Through the Evolving Landscape of Trade Mark General Court Judgments”

EUIPO Executive Director
João Negrão opening the 5th edition
of the EUIPO BoA IPCLC

This year’s IP Case Law Conference (IPCLC), “Decoding Decisions: Insights from Selected Case-Law”, organized by the Boards of Appeal of the European Union Intellectual Property Office (EUIPO) is taking place today and tomorrow in (not-)always sunny Alicante. This new edition – the 5th – is also special because it happens in the same year as the EUIPO celebrates its 30th anniversary.

Part of the IPKat Team and some Katfriends are also in Alicante and will report on relevant conference sessions.

So, here we go with the first report, covering Session 1 – “An Odyssey Through the Evolving Landscape of Trade Mark General Court Judgments”.

The title chosen for this session promised something epic or, at least, something that in the end would lead to something good. Odysseus – after many struggles, adventures and, above all, a very long time – was eventually able to return to Ithaca and his extremely patient and optimistic wife, Penelope. Could all this suggest that the struggle of EU trade mark law is still ongoing or, rather, that Ithaca is better times are already in sight? In other words: what “book” of the trade mark Odyssey are we reading?

The session was chaired by Judge Savvas S. Papasavvas (Vice-President, EU General Court) and featured, as speakers, Judge Ulf Oberg (EU General Court), Judge Ion Gâlea (EU General Court), Sven Stürmann (Chairperson of the Second and Third Boards of Appeal, EUIPO), and Nina Korjus (Chairperson of the Fourth Board of Appeal, EUIPO).

Judge Oberg started the session with a talk addressing weak elements in trade mark inter partes cases. He tackled the topic of his talk by considering the current status quo, whether we're running out of trade marks, the relationship between trade mark protection and freedom of competition, and concerns around overprotection of trade marks. In terms of case law, the speaker recalled inter alia EU courts' decisions like those in Equivalenza, Uroakut, Primart, and Shopify. 

The Chair and Speakers of Session 1
of this year's IPCLC conference

Then, it was the turn of Judge Gâlea to tackle case law on what constitutes a well-known fact. He inter alia recalled decisions like those in Picasso, Mood Media, and - most recently - Beauty Biosciences. He noted that some known-facts appear to be better known than other facts that are also deemed to be well-known. He concluded by quoting from Advocate General Bobek in Nord Stream:

in order to establish the relevant facts, the Court may also rely on matters of common knowledge. Justice is often depicted as being blind. However, at least in my recollection, that allegory is not meant to be interpreted as Justice being unable to see something that is blindingly obvious to everyone else.

After him, Mr Stürmann discussed case law on single letter marks in inter partes proceedings, inter alia considering decisions like those in T-754/16, T-399/20, T-824/16, T-350/15, R 551/2018-G, and R-2803/2019-5. Turning to distinctiveness, the speaker referred to decisions like those in C-265/09 P, C-84/16 P., T-610/21, T-458/21, R 1349/2022-5, and R 362/2023-4. In sum: the scope of protection of single letters per se is lower than other marks and much depends on other factors, e.g., stylization, goods/services at hand, and level of attention of relevant public. 

Last but not least, Ms Korjus tackled the protection available to trade marks with a reputation and the limits thereof. She moved from classic judgments like Spa-Finders, VIPS, Intel, the various Puma cases (the most recent being T-184/23 and T-266/23), and more recent cases like T-569/21 and T-509/22.

Overall, the key take-away of Session 1 was the trade mark issues tackled by the speakers are still in flux. So, to sum up, we're not back in Ithaca yet. But getting there (eventually)?

Stay tuned for the second report from Alicante!