RECENT DEVELOPMENTS IN EU TRADE MARK LAW David Llewelyn Head of IP, White & Case (London) Director, IP Academy, Singapore Visiting Professor, King’s College, London

WHITE & CASE LLP 2 TRADE MARKS – APPELLATE SYSTEM and ART. 234 EC ECJ OHIM Board of Appeal Court of First Instance References from National Courts

WHITE & CASE LLP 3 AREAS OF KEY DEVELOPMENTS  Absolute grounds for refusal of registration  Relative grounds for refusal of registration  Revocation  Infringement

WHITE & CASE LLP 4 ABSOLUTE GROUNDS Distinctiveness / Descriptiveness… The Story So Far Focus on common language ? ‘BABY-DRY’ (ECJ) Focus on keeping marks available for common use ? ‘DOUBLEMINT’ (ECJ)

WHITE & CASE LLP 5 AND ALSO… Combinations of descriptive words need to create a phonetic or visual impression to be held distinctive ‘POSTKANTOOR’ Public interest considerations require that distinctive signs are “not unduly restricted” and descriptive signs are “kept free for all” ‘SAT.1’

WHITE & CASE LLP 6 ABSOLUTE GROUNDS Distinctiveness / Descriptiveness… NEW DEVELOPMENTS Can the elements of a composite mark have distinctive character in their own right? Nestlé SA v. Mars UK Ltd. Public perception of the mark is of two non distinctive words BioID v. OHIM

WHITE & CASE LLP 7 AND ALSO… Can a mark be registered in a Member State if it is descriptive of the relevant product or service in the language of another Member State? ‘MATRATZEN’ (AG Jacobs)

WHITE & CASE LLP 8 “SHAPE MARKS” Assessment of distinctiveness of 3-D shape marks governed by the same criteria which applies to other marks Purpose of Article 3(1)(e) of the Directive / Article 7(1)(e) of the CTMR is to prevent trade mark proprietors holding a monopoly in relation to technical solutions Shape marks cannot acquire distinctiveness through use Shape will not fall outside Article 3(1)(e) or Article 7(1)(e) if its technical function can be achieved through another shape / design PHILIPS

WHITE & CASE LLP 9 ALSO REJECTED…

WHITE & CASE LLP 10 DEVELOPMENTS (NEW FAILURES) “ Seen as a whole the mark applied for fails to differentiate itself materially from the ordinary shape of the containers concerned, which are commonly used in trade, but instead appears to be a variant of those shapes” EUROCERMEX SA v. OHIM

WHITE & CASE LLP 11 Other failure CFI : Advertising costs and market shares: not detailed; No data re total sales on relevant market nor competitors; Survey only showed awareness of name not of shape. AG Colomer: Appeal should be dismissed ECJ cannot revise CFI’s assessment of facts

WHITE & CASE LLP 12 Other failures…. DEUTSCHE SISI-WERKE GMBH v. OHIM (ECJ) NESTLÉ WATERS SA v. OHIM (CFI)

WHITE & CASE LLP 13 REVOCATION ON GROUNDS OF DECEPTION Will consumers be confused as to whether this is a medicinal product? Invalidity and revocation presuppose ACTUAL DECEIT or SUFFICIENTLY SERIOUS RISK OF DECEPTION CLINIQUE Reasonably circumspect consumers deemed to know that there is not a link between size of publicity markings relating to an increase in a product’s quantity and the size of that increase MARS

WHITE & CASE LLP 14 DECEIVED?… Can a sign consisting of a person’s name validly be registered or used as a trade mark by others if that registration or use causes the relevant public erroneously to think that such person is in some way connected with the business that owns and uses the mark? ELIZABETH FLORENCE EMANUEL v. CONTINENTAL SHELF The AP to the ECJ:

WHITE & CASE LLP 15 ECJ:  AP is Judicial Authority within the meaning of Art. 234 EC Treaty;  Actual deceit or sufficiently serious risk of confusion needed.  Average consumer might be influenced in purchasing “Elizabeth Emanuel” garment by imagining she was involved in design but quality and characteristics of it remain guaranteed by new owner;  TM corresponding to name (of designer and first manufacturer) may not by reason of that particular feature alone be refused registration or revoked on ground of deception, in particular where goodwill was assigned together with business.

WHITE & CASE LLP 16 LIKELIHOOD OF CONFUSION: Confusingly confusing…… “There may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein’ MEDION

WHITE & CASE LLP 17 LIKELIHOOD OF CONFUSION: Likely to be confused? CFI Phonetic similarity outweighed by conceptual and visual differences v. = Landgericht Hamburg: Opposite conclusion AG Colomer Urgent to improve harmonisation MUEHLENS v. OHIM ECJ Appeal dismissed. No comment on national court.

WHITE & CASE LLP 18 RELATIVE GROUNDS FOR REFUSAL Likelihood of confusion “ Conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs concerned ” CLAUDE RUIZ-PICASSO & OTHERS v. OHIM PICARO

WHITE & CASE LLP 19 INFRINGEMENT GILLETTE v. LA LABORATORIES OY ‘All Parason FLEXOR® and all Gillette SENSOR® HANDLES are COMPATIBLE with this razor blade’ !

WHITE & CASE LLP 20 AND  Landgericht Nürnberg-Fürth :  Does use of “Opel-lighting” logo (registered, inter alia, for toys) on remote control model cars (sold under defendant’s own marks) constitute use/infringement?  AG RUIZ-JARABO COLOMER :  BMW, Gillette, Arsenal and Budweiser apply.  Autec models of Opel cars do not hamper origin function of trade mark Opel. This would only be the case where Autec product gave the impression of a "material link“, such as a licence or endorsement, with Opel itself.  ADAM OPEL AG v. AUTEC AG

WHITE & CASE LLP 21 INFRINGEMENT The importance of consumer’s perception ECJ: Infringement to be determined on the basis of public’s perception of trade mark at the time the use of similar mark began. Order cessation of use not appropriate when infringed mark has lost distinctiveness following inactivity of proprietor; LEVI STRAUSS & CO. v. CASUCCI SPA

WHITE & CASE LLP 22 INFRINGEMENT AND PARALLEL IMPORTS Goods in transit but which are not cleared by customs have not been “imported” into the EU No free circulation no infringement CLASS INTERNATIONAL v. COLGATE PALMOLIVE COMPANY & OTHERS

WHITE & CASE LLP 23 RETAIL SERVICES Protection for retail services… a breakthrough PRAKTIKER BAU UND HEIMWERKERMARKTE AG

WHITE & CASE LLP 24 THE END Thank you