The Quick and Easy Guide to German and EU Intellectual Property Law, Trademarks and Copyright
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No exclamation mark for JOOP!

In Case T‑191/08 the European Court of Justice (ECJ) declined JOOP!’s motion to permit registration of a single exclamation mark placed inside a rectangle as a Community trademark.

The court ruled that this mark lacks distinctive character and therefore can not be registered as a trademark, pursuant to Art 7 Sec. 1b) of Regulation No 40/94. The single exclamation mark is a mere eye catcher, not suitable to convey the origin of goods.

The court also rejected the point that the mark had acquired a secondary meaning as a trademark pursuant to Art. 7 Sec. 3 of Regulation 40/94. JOOP! not only failed to deliver proof in time. The documents provided referred to the German market only and not – as it would have been necessary – to all markets in all member states.

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October 12, 2009   5 Comments

State emblems as trade marks – an almost impossible transformation

In this case the European Court of Justice (ECJ) had to decide about the registration of a State emblem (the Canadian maple leave emblem) as a Community trade mark. The underlying question was what scope of protection provided by Art. 6ter of the Paris Convention to State emblems and whether this Article also applies to service marks.

The Belgian company “American Clothing Associates” had filed an application for a Community trade mark (Nice Classes 18, 25 and 40). The sign in question was representing a maple leaf with the letters “RW” beneath it. The application was rejected based on Article 7(1) of Council Regulation (EC) No 40/94 establishing an absolute ground for refusal in regards to registration of State emblems in conjunction with Article 6ter of the Paris Convention.

American Clothing Associates filed action with the Court of First Instance but wasn’t successful. Finally, American Clothing Associates filed an appeal with the ECJ on the grounds that the Court of First Instance didn’t apply Article 7(1)(h) of Regulation No 40/94 and Article 6ter(1)(a) of the Paris Convention properly mainly due to a misinterpretation of the relevance of the essential function of State emblems.

American Clothing Associates argued that the scope of protection of Article 6ter (1)(a) of the Paris Convention is only to protect State emblems from imitations in a heraldic sense. Not the symbol itself is protected but the specific graphic work. Thus emblems without heraldic characteristics are not covered by the scope of Article 6ter (1)(a) of the Paris Convention.

The ECJ dismissed the appeal brought by American Clothing Associates. This was mainly based on the finding that the scope of protection of Article 6ter of the Paris Convention is absolute and “… does not depend on whether the emblem imitated in a trade mark is perceived by the public as a distinctive element or an ornamental element …”. The court further reasons that the essential functions of trademarks and State emblems are different in that State emblems are meant to identify a State and represent its sovereignty whereas trademarks are a means to identify the origination of goods and services. Further on the protection of State emblems does not require a likelihood of confusion. State emblems cannot be declared invalid, their protection period is not limited and they are protected without the need for registration.

The court also concludes that Article 6ter of the Paris Convention may even be applicable in cases where the mark is not an exact reproduction of a State emblem  if a trade mark is perceived by the relevant public as an imitation of a State emblem.

Finally the court ruled that the Paris Convention does not require States to distinguish between trademarks for goods and services although States are free to do so. The court outlines that based on Article 29(1) of Regulation No 40/94 it is evident that the Community legislature did not intend to discriminate between marks for goods and marks for services.

(European Court of Justice, Cases C‑202/08 P and C‑208/08 P, 16 Jul 2009)

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July 23, 2009   No Comments

Mars bars don’t look that special

The Court of First Instance had to decide about the distinctive qualities of the Mars bar shape.

Mars Inc had registered a three-dimensional Community trade mark, Nice Classes 5, 29 and 30 of the Nice Agreement.

The German chocolate manufacturer Ludwig Schokolade filed an application for a declaration that this mark was invalid. This application was rejected by OHIM’s Cancellation Division, however Ludwig Schokolade’s appeal filed against this decision was successful. Accordingly Mars’ trademark was declared invalid. The Court of First Instance confirmed this decision and dismissed the action brought forward by Mars Inc based on the following key findings:

An elongated shape with rounded ends is not significantly different from other shapes commonly used for chocolate bars. Chevrons on top of a Mars bar are decorative elements and not a sign indicating the product’s commercial origin.

A mark can only be registered on the grounds of distinctiveness in consequence of the use which has been made of it, if this distinctiveness has been acquired in each of the states being a Member State at the time registration was sought.

The amount of time alone, a sign has been used in certain Member States is not sufficient to show that the public targeted by the product perceives it as an indication of commercial origin.

(Court of First Instance, T‑28/08, 8 July 2009)

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July 14, 2009   No Comments

Single Letter “α” Protectable As Community Trademark

A single letter (here the Greek letter Alpha “α” is protectable as a figurative trademark without further enhancement or graphic design.

It was disputed that the sign at issue has distinctive character because it consists only of one single letter. A lack of distinctiveness is an absolute ground for refusal to register a Community Trademark pursuant to Article 7(1)(b) of Regulation No 40/94.

The court has decided, that a single letter in deed can have the distinctive character required under Article 7(1)(b) of Regulation No 40/94 if it is suitable in principle in the individual case to distinguish the origin of a product in the eyes of the relevant circles of the public.

The court reasons that:

“It is apparent from the case-law that Article 7(1)(b) of Regulation No 40/94 draws no distinction between the different categories of trade mark and that the criteria for assessment of the distinctive character of trade marks which consist of a single letter are the same as those applicable to the other categories of trade mark.”

The European Court of First Instance has therefore referred back the trademark application to OHIM for re-examination in the light of the grounds of the judgement.

European Court of First Instance (T‑23/07, 29th April 2009)

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June 17, 2009   No Comments