Der Nutzen des mitwirkenden Patentanwalts in Markenverletzungsfällen

Seit langem ist es gängige Praxis vieler Rechtsanwälte, bei Abmahnungen Patentanwälte hinzuzuziehen, deren vermeintliche oder tatsächliche Mitwirkung zusätzliche Gebühren auslösen soll. Gestützt wird diese Praxis auf § 140 Abs. 3 MarkenG, wonach in einer Kennzeichenstreitsache die "Gebühren nach § 13 des Rechtsanwaltsvergütungsgesetzes und außerdem die notwendigen Auslagen des Patentanwalts" zu erstatten sind. Ob die Mitwirkung des Patentanwalts notwendig ist, wird nach dieser Vorschrift aber nicht geprüft, sondern vom Gesetz unwiderleglich vermutet. Die Vorschrift gilt dem Wortlaut nach nur für Kennzeichenstreitsachen (also Gerichtsverfahren). Sie wird aber in gängiger Praxis analog auf vorprozessuale Auseinandersetzungen angewandt, insbesondere auf Abmahnungen.

Nun mag man sich - z.B. mit der Kollegin Friederike Brauer - darüber streiten, ob diese analoge Anwendung in jedem Fall geboten ist, oder ob sie nicht in einzelnen Fällen rechtsmissbräuchlich sein kann. Anlass für den kritischen Beitrag der Kollegin ist eine kürzlich ergangene Entscheidung des LG Berlin (veröffentlicht u.a. in Medien, Internet und Recht), das die Ansicht vertritt, dass es "einem im Markenrecht versierten Rechtsanwalt möglich ist, einen einfachen und bereits mehrfach von ihm bearbeiteten Markenverstoß alleine und selbständig zu bearbeiten". Eine "Mitwirkung eines Patentanwalts [sei] nicht geboten".

In jüngerer Zeit hatte auch schon Kollege Frank Tyra aus Köln in einem sorgfältig recherchierten Beitrag für die WRP (hier bei jurion.de) die Frage gestellt, ob die bisherige Praxis, die Vorschrift des §140 Abs. 3 MarkenG (und vergleichbare Privilegierungsvorschriften) auch in vorprozessualen Auseinandersetzungen analog anzuwenden, insbesondere bei Abmahnungen, nicht einer Überprüfung bedürfe. Dabei kann er sich nicht zuletzt auf Stellungnahmen der Patentanwaltskammer und der Bundesrechtsanwaltskammer stützen. Auch für gerichtliche Verfahren regt er an, die Notwendigkeit einer Mitwirkung des Patentanwalts de lege ferenda zum Tatbestandsmerkmal für eine mögliche Erstattung der Gebühren zu machen, statt sie wie bisher als unwiderlegliche Vermutung anzusehen (WRP 2007, 1059, 1066 m.w.N.). Man darf also in Zukunft bei Abmahnungen "von der Stange" zumindest die Frage stellen, ob die Vermutung des Gesetzes in § 140 Abs. 3 MarkenG so unwiderleglich ist, wie die Rechtsprechung sie bisher versteht.

Wasser auf die Mühlen der Kritiker dieser Praxis dürfte auch ein Fall sein, der den Weg auf meinen Schreibtisch fand: Ein international bekannter Künstler nimmt meine Mandantin wegen Verletzung von Markenrechten, Bildrechten und Persönlichkeitsrecht in Anspruch. Der anwaltliche Vertreter teilt eingangs seiner Abmahnung mit, dass Herrn Patentanwalt X mitwirkt - der Patentanwalt hat auch mit unterzeichnet. So weit, so gut.

Bei näherem Hinsehen stellt sich aber heraus, dass die Gemeinschaftsmarke, auf die der Künstler seine Ansprüche stützt, noch gar nicht eingetragen, sondern mit Widersprüchen
behaftet ist.

Die übrigen Ansprüche, ob begründet oder nicht, stützen sich auf Vorschriften des Urheberrechts, des KUG und des allgemeinen Zivilrechts. Hier stößt nach der gesetzlichen Vermutung die Sachkunde des Patentanwalts ohnedies an ihre Grenzen.

Ob die Mitwirkung des Patentanwalts hier notwendig war, darüber kann man nach herrschender Rechtslage wohl streiten. Dass sie in diesem Fall zumindest wenig fruchtbar war, steht wohl fest. Da stellt sich die Frage: Gilt die (vermeintlich unwiderlegliche) Vermutung der Notwendigkeit auch in Fällen unwiderleglicher Unfruchtbarkeit?

ECJ: One more chance for Nestlé's QUICKY bunny

ECJ reverses the CFI's decision to deny Nestlé's QUICKY bunny registration on relative grounds - but nothing is decided yet.

In its judgment of 20 september 2007, the ECJ overturned the CFI's decision of 22 february 2006 to dismiss Nestlé's appeal against the OHIM's refusal to register its QUICKY word/device mark on the grounds of earlier rights.

The applicant, Nestlé S.A., the notorious Swiss food giant, applied for the registration of its QUICKY word/device mark (CTM application # 000467746), depicted on the left, on 6 February 1997, i.e. shortly after the OHIM had become operational. The mark shows the fairly well-known cartoon bunny usually found on the packaging of Nesquik instant chocolate powder, with a capital N around its neck and together with its name QUICKY printed underneath.


Quick restaurants SA, a Belgian maker of burgers and French fries (they should really be referred to as Belgian fries - cui honorem, honorem), opposed the application on the basis of its earlier national and/or international QUICKIES (word) and QUICK (word and word/device, see below) marks, registered, among other things, in France and the Benelux, where they are widely used and may even be well-known.

Since the marks were registered respectively claimed for more or less the same goods in classes 29, 30 and 32, the legal issues of the case basically boil down to two questions:

1. Does QUICKIES or QUICK have normal distinctiveness, given that the meaning of the word quick in English may well be considered descriptive for fast food?


2. Does the fact that the application is for a word/device mark featuring the Nesquik bunny - rather than just a word mark - rule out similarity and thus likelihood of confusion?

The ECJ reversed the CFI's decision because the latter had failed to assess the trademarks globally, and had omitted the device portion in its assessment of the likelihood of confusion since it had considered it not to be sufficiently dominant to be taken into account. On substance, this is not really a breathtaking case. But some aspects make it still worth reading:

First, the French still seem to be having some difficulties in pronouncing words derived or taken from foreign languages, in particular the English language. One of the most discussed arguments through the instances was whether the French would omit the final "-s" in pronouncing "Quickies", as they do, for instance, in saloperies, maladies or épidémies, i.e. in other words likely to be used in the context of le fast food (and more particularly in their plural).

Second, it is noteworthy that only two out of a total of seven arguments on which the appeal was based were even considered at all by the Court of Justice (at least, one of them was sufficient to have the judgment reversed); the remaining five were rejected on the grounds that they either aimed at attacking the factual, rather than the legal, findings of the CFI, or that the appellant was precluded from raising these arguments at this stage. This leads to the question of why the findings on the facts had not been attacked earlier (the CFI's findings reflected those already summarized in OHIM's decisions), and why Nestlé failed to file crucial legal arguments (e.g. the objection of non-use in accordance with Art. 43 (2) of the Regulation in relation to the QUICKIES mark) in time, i.e. in the proceedings before OHIM and the CFI - and why it undertook to invoke them before the ECJ, where they were duly rejected (para. 70 of the decision).

Third, it took ten years for Nestlé to bring this case before the ECJ - which means that Nestlé had to either wait for that period of time before it started using the mark, or accept the risk of infringing Quick SA's marks through the use of the mark on such an important product as the Nesquik instant chocolate drink. And a final decision has yet to be pronounced.

Fourth, and most interestingly, Nestlé seems to have a very particular concept of trademarks. In the proceedings before the ECJ (and the CFI), Nestlé seems to have made very peculiar statements. As quoted in para. 69 of the judgment, Nestlé apparently invoked that the CFI had not considered that

"(69) ...the mark applied for is not a "product" mark, that there is a well-known umbrella mark, NESQUICK (sic! - although the only mark for which I would find any use seems to be NESQUIK, see below), that the rabbit QUICKY is a character, and that the distribution channels used by the claimant are classical channels in the agriculture and food sectors."

This is the original wording:

"(69) Ainsi, le Tribunal n’aurait pas pris en compte le fait que la marque
demandée n’est pas une marque «produit», qu’il existe une marque ombrelle notoire, NESQUICK (sic!), que le lapin Quicky est un personnage et que le réseau de distribution de la requérante est un réseau classique dans l’agro‑alimentaire."


It is hard to gauge, what the exact meaning of this is - but it seems to say that, since QUICKY the rabbit is a character (whatever that category shall mean in trademark law) and not a trademark intended to distinguish products from other products, there could be no likelihood of confusion.

I am not sure I understand this, but maybe someone can explain to me why Nestlé did file for the registration of its QUICKY & rabbit device mark in the first place (and took the case right to the ECJ in a ten-year-fight) if it was never to be used as a trademark?. And the fact that QUICKY is a "character" shall apparently, in Nestlé's view, serve as proof for this daring theory. Interestingly, Nestlé has in the meantime filed for and obtained a registration for its rabbit without the QUICKY word portion (CTM 003338688, pictured left). In line with Nestlé's own arguments, this device should be vulnerable to cancellation, because - in Nestlé's own words - it is not being used to distinguish goods from those of competitors.

Stranger still, Nestlé seems to argue that since there is an umbrella mark (NESQUI/C/K - again, can anyone please help me - where is it exactly in Nestlé's trademark application?), there could be no likelihood of confusion?

It looks to me as if Nestlé could do with some sound legal advice...

ECJ endorses the concept of trademark series...

...and rules on the prevalence of European provisions relating to the use requirement.


After a few less inspiring judgments, the ECJ has broken new ground in endorsing the concept of serial marks in its judgment on the Bainbridge matter. In a visibly angry judgment, the Court dismissed the claimant's arguments, while ruling on a number of interesting questions, not always to the trademark owners' benefit.

The case involved the Italian company Il Ponte Finanziaria, owner of a total of eleven (11) Italian word and word/design or word/device trademarks, all consisting of or comprising the word element BRIDGE, as claimant , and the OHIM as defendant. The claimant's marks included, inter alia, registrations for BRIDGE and THE BRIDGE, both as word and as word/device marks.

Based on its prior marks, the claimant had opposed the CTM application for the mark BAINBRIDGE (CTM No 940007), claimed for ‘leather and imitations of leather, and goods made of these materials (cl. 18); animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’ and ‘clothing, footwear, headgear’ (cl. 25), basically the very goods for which its *bridge* marks enjoyed protection.

When the applicant (intervener in the proceedings before the ECJ) requested the claimant to furnish proof that his marks had been put to genuine use during the five year period preceding the notice of opposition (Art. 43 (2) of the Regulation), the claimant could only establish use of two of his marks. Some of the marks on which the claimant relied were still in their five year grace period, but five out of eleven were not. So the OHIM and the Court of First Instance based their assessment on the remaining six marks.

The claimant insisted that the remaining marks, or at least some of them, be taken into account as well based on

1. the concept of defensive marks under Italian law,
2. the concept of serial marks, and
3. the genuine use made of the mark THE BRIDGE through the (incontestable) use of the mark BRIDGE.

The concept of defensive marks, which is codified in the Italian Code on intellectual property, protects unused marks. Under that concept, there cannot be revocation for lack of use where the proprietor of an unused defensive trade mark is at the same time proprietor of one or more similar trade marks which are in force, and of which at least one is actually used to designate the same goods or services as those protected by that defensive mark (Art. 24 (4) of the Italian Intellectual Property Code).

Inoltre, neppure avrà luogo la decadenza per non uso se il titolare del marchio non utilizzato sia titolare, in pari tempo, di altro o altri marchi simili tuttora in vigore di almeno uno dei quali faccia effettiva utilizzazione per contraddistinguere gli stessi prodotti o servizi.

The concept of serial marks is not a proprietary Italian legal concept, but rather a civil law concept which exists in a number of jurisdictions, including, but not limited to, Germany, where the Federal Court of Justice has endorsed it in a number of decisions. The details of the concept, however, and the requirements for establishing a series of trademarks, vary from court to court.
In Germany, the Federal Patent court has repeatedly found in favour of indirect likelihood of confusion under the aspect of a series of marks ("mittelbare Verwechslungsgefahr unter dem Aspekt des Serienzeichens") where the trademark owner had simply provided proof of a number of registrations containing the same element, without however requiring proof of actual use of those registrations, and where effectively only one of them had been used - as in the BULL CAP case, where Red Bull had opposed the registration of the BULL CAP mark on the basis of its earlier registrations of not only RED BULL and BULL, but of a total of 36 marks containing the element BULL (though none of these appears to be used). The decision was later confirmed by the Federal court of Justice.

Generally, however, the existence of a trademark series is rather difficult to establish in court, as it marks an exception from the generally accepted principle that two specific marks have to be compared, and the the younger mark has to be confusingly similar to the older mark in order to confirm likelihood of confusion. If there is no such direct likelihoof of confusion, courts are generally reluctant to base claims on marks in respect of which there is no such likelihood of confusion - that is, unless there is actual proof on the existence of a true trademark series. The German Federal Court of Justice, in its BIG and BANK 24 lead cases has set the following criteria for a trademark series to be validly established:

• The public has to identify the element that forms the common root of several trademarks of a single company as the common source indicator pointing to that single trademark owner;
• The public will only assign a specific mark to a specific trademark owner based on that common root element if knows that this company has used that element in several other marks, and in particular, if that common root is also used as a catch word for the company itself.
• If the root element is well-known, then this speaks further in favour of a trademark series.

It follows from the aforesaid that the basis for serial marks must be the perception of the public resulting from actual use of a series of marks, not the the mere existence of a number of - used or unused - trademark registrations.

The OHIM, in its arguments before the Court, rejected the concept of "marks in a series", unless the marks being part of that series were actually used:

(56) (...) the taking into account of the serial nature of the earlier marks would entail widening the scope of the protection of such marks considered individually. Therefore, any assessment in the abstract of the likelihood of confusion, based exclusively on the existence of several registrations covering marks reproducing the same distinctive element, must, in the absence of any actual use of those marks, be excluded.

The judgment

Yes to trademark series, but only if in use

The ECJ, in its ruling, shares OHIM's view and gives very clear guidance both in relation to serial marks, and with regard to the interpretation of the use requirement stipulated in Art. 15 and Art. 43 (2) of the Regulation.

In its findings, the court endorsed the concept of "series" or "families" of trademarks on the basis of actual use of several trademarks capable of forming a series:

(63) (...) Where there is a ‘family’ or ‘series’ of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for or considers erroneously that that trade mark is part of that family or series of marks.

64 (...) no consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a ‘family’ or ‘series’, the earlier trade marks which are part of that ‘family’ or ‘series’ must be present on the market.

65 Thus (...) the Court of First Instance did not require proof of use as such of the earlier trade marks but only of use of a sufficient number of them as to be capable of constituting a family or series of trade marks and therefore of demonstrating that such a family or series exists for the purposes of the assessment of the likelihood of confusion.

No defensive marks in European disputes

The court then went on to reject the Italian legal concept of "defensive marks". It found the principle, which is enshrined in the Italian Intellectual Property Code, to be incompatible with the Community Trademark system. As a consequence, an Italian national mark the use of which need not be established under Italian law based on the defensive mark rule, cannot serve as a basis for an opposition within the CTM system if it has not been used in accordance with the Regulation's use requirements. Or, to quote the ECJ:

(101) The Court of First Instance did not err in law in holding, at paragraph 46 of the judgment under appeal, that a proprietor of a national registration who opposes a Community trade mark application cannot, in order to avoid the burden of proof which rests upon him under Article 43(2) and (3) of Regulation No 40/94, rely on a national provision which allows the registration, as trade marks, of signs not intended to be used in trade on account of their purely defensive function in relation to another sign which is being commercially exploited.

(...)

(103) The argument that the holder of a national registration who opposes a Community trade mark application can rely on an earlier trade mark the use of which has not been established on the ground that, under national legislation, that earlier mark constitutes a ‘defensive trade mark’ is therefore incompatible with Article 43(2) and (3) of Regulation No 40/94.

The judgment therefore rules out that any national legal provisions easing use requirements be taken into account when such national marks are used as a basis for actions against Community Trademarks before OHIM. And Italy is by no means the only country that has adopted such provisions.

Owners of German trademarks, for instance, may rely on the use of their mark in Switzerland to avoid cancellation even if their mark has not been put to genuine use in Germany itself, by virtue of the German-Swiss Convention on the reciprocal protection of patents, industrial designs and trademarks of 13 April 1892 (look here for a judgment by the Federal Court of Justice relying on that treaty). Here, again, the ECJ judgment means that this fictitious use cannot be invoked in proceedings before OHIM.

Which is only fair. If the European Trademark Office OHIM considers national rights as a basis for actions against Community Trademarks and applications for registration hereof, use of such rights must necessarily be assessed in accordance with the law that grants these national rights the power to prevent registrations of Community Trademarks, e.g. the Community Trademark Regulation. It was the European lawmaker who decided to consider national marks as prior rights in the CTM system. It must therefore be that lawmaker's use standard that is to be taken into account in disputes between CTMs and national marks.

Owners of facelifted marks: Cave Curiam!

Finally, the court also gave some guidance in relation to the interpretation of the use requirement, and more particularly in relation to the rule set by Art. 15 (2) (b), stipulating that

use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered shall also constitute use within the meaning of paragraph 1.

It found that a mark has not been validly used within the meaning of that provision if it has only been used in a slightly altered form which is itself the object of a separate registration. In the instance, it ruled that use of the mark BRIDGE was not sufficient to serve as proof also for the use of the separate mark THE BRIDGE:

(85) Without it being necessary to examine whether the trade mark THE BRIDGE (No 642952) may be regarded as being different solely by reason of elements which do not alter the distinctive character of the trade mark Bridge (No 370836), it must be stated that use of the former mark has not been established and cannot therefore in any way serve as evidence of use of the latter.

(86) In any event (...) it is not possible to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former.

In other words, if you start using your mark in slightly amended version, you need to make a choice:

• Either you choose to rely on the old registration, in which case you may - but only may - be using it in accordance with Art. 15 (2) (b), i.e. "in a form differing in elements which do not alter the distinctive character of the mark", in which case the protection of your original mark will be upheld - however accepting the risk that a court may later find that actually the modifications did alter the distinctive character,


• Or you choose to file for a new registration covering the version of your mark as you use it now, which will inevitably lead to the effective loss of the old mark's priority within five years' time, because you will then effectively be barred from enforcing it, be it still in force or not.

Owners of marks receiving "facelifts" may find themselves between a rock and a hard place if they have to choose one or the other. One would have hoped for somewhat more substantial criteria on whether the distinctive character of a mark is altered, not just a apodictic ruling that the application for a new registration covering the modified logo automatically leads to a slow death of the old registration, regardless of the extent of the modifications.

The Court was visibly irritated with the quality of the action brought before it (cf. sections 42 to 46 of the judgment) and rejected some of the claimant's arguments on formal grounds. It seems that the court's irritation has had some positive effect. Rather than avoiding any clear statement as in recent judgments, the Court used very clear language that will certainly make its way into the coming briefs of European trademark lawyers...

ECJ decision in the CÉLINE case: Another frustrating non-judgment

Again, the ECJ fails to give trademark owners clear guidance in relation to the scope of their mark

The Grand Chamber of the ECJ, composed of no less than 13 ECJ judges (out of a total of 27), has handed down its long-awaited judgment in the CELINE matter, a referral case from the Cour d'Appel de Nancy (France). It deals with the question whether the unauthorized use of a mark to designate a shop or company, without however using the mark for any goods or services offered, is to be regarded as use of the sign as a trademark against which the proprietor of the mark may take legal action, and whether the proprietor may be barred by Art. 6 (1) (a) of the Directive (and the respective national provisions), according to which the proprietor of a trademark shall not be entitled "to prohibit a third party from using, in the course of trade, his own name or address."

The claimant, Céline SA, is a company incorporated under that name since 1928. Its principal activity is the creation and marketing of articles of clothing and fashion accessories. It is the proprietor of a word mark "CÉLINE", applied for on 19 April 1948 and registered, inter alia, for "clothes and shoes", which remains in full force.

The defendant, Celine SARL, claims that its predecessor-in-title was registered on 25 September 1950 in the Commercial and Companies Register in Nancy in relation to the operation of a menswear and womenswear business, trading as ‘Céline’. The company itself was registered on the companies register in 1992 in order to operate a business trading in ready-to-wear garments, lingerie, clothing, furs, apparel and various accessories under that name.

CÉLINE SA filed a claim with the TGI of Nancy and obtained an injunction and damages. Céline SARL appealed the judgment on the grounds that it was not using the mark to distinguish any of the goods for which it was protected, but only to designate the company or shop, which use, in addition, was protected by Art. 6 (1) (a) of the TM Directive. The Cour d'Appel submitted the question to the ECJ.

__________

The question may appear simple at first sight: Both companies are obviously using the same sign, and both are operating in the same line of business (clothing). However, the ECJ has lately shown a tendency towards a case-by-case approach in assessing whether a mark is being used as a trademark, i.e. in its function to distinguish, in the course of trade, goods and services from goods and services of others. Even where the proprietor goes against the use of an identical sign for the very same goods and/or services for which the mark is registered, the ECJ ruled, the owner of the trademark may only prevent such use if the following four conditions are satisfied:

• that use must be in the course of trade;
• it must be without the consent of the proprietor of the mark;
• it must be in respect of goods or services which are identical to those for which the mark is registered, and
• it must affect or be liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services.

(see Arsenal Football Club; Case C-206/02, and Adam Opel, Case C-48/05).

The Opel case, in particular, decided upon earlier this year, has left many trademark owners puzzled. The ECJ not only ruled that the use of the OPEL trademark on model cars does not constitute use of the mark as registered for motor vehicles.

"Where a trade mark is registered, inter alia, in respect of motor vehicles, the affixing by a third party, without the authorisation of the proprietor of the trade mark, of a sign identical to that mark to scale models of that make of vehicle, in order faithfully to reproduce those vehicles, and the marketing of those scale models, do not constitute use of an indication concerning a characteristic of those scale models".

It also held that use of a mark on toys only amounts to infringement of the mark as registered for toys

"if that use affects or is liable to affect the functions of the trade mark as a trade mark registered for toys".

In other words, it ruled that the simple fact of a double identity - use of the same mark for the same goods - is not in itself sufficient any more to argue an infringement of that mark, but that one also has to look at whether the mark is being used to distinguish the goods from those of other players.

Following this doctrine means that the use of brands like VW, BMW or Porsche on model cars does not serve to distinguish the goods from those of other manufacturers of model cars and may therefore not be objected to by the respective car manufacturers as owners of the trademarks, because that brand would rather be, say, Mattel, Matchbox or Minichamps.

This result is clearly unsatisfactory, to say the least.

Taking this argument further would mean that car manufacturers can no longer sue the makers of car parts bearing or consisting of that car manufacturer's brand and also having a decorative function (e.g. the Mercedes star, or the Jaguar cat , or wheel caps bearing the original manufacturer's marks), because the brand would not be used to identify the manufacturer of the parts but only "in order faithfully to reproduce those vehicle parts", to use the ECJ's words. Because the brand - being itself the part, or being placed on a spare part on which it is used as decoration - would not be used to distinguish these goods from those of another spare parts manufacturer.

Take another example: Barbie could henceforth be sold with miniature GUCCI, PRADA and LOUIS VUITTON fashion, or such fashion could be produced by any maker of Barbie accessoires, without the consent of the respective trademark owners, because clearly the brands would not serve to distinguish the makers of these toy clothes (e.g. Mattel's) from those of other makers of toy clothes.

One can only guess what the ECJ's decisions will mean for the spare parts and accessoires industry. In any event, it has made the enforcement of trademarks much more difficult where these marks are only used as a secondary source indicator (i.e. a designation identifying not the manufacturer of this particular derivative product (spare parts, model cars), but of the original product (the car as such).

__________

In looking at the use of a mark as a company name and/or trade name (or shop name), the ECJ follows its very narrow interpretation of the scope of protection offered by trademarks. It insists on the legally correct, but somewhat useless definition:

21 The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being ‘in relation to goods or services’ within the meaning of Article 5(1) of the directive.

This is nothing new and nothing spectacular. But the real question (and this is a very old discussion) is: where do you draw the line? And can you draw a clear line? What, if the shop name appears on price tags for clothes? What, if the shop name is also affixed above the shelves on which the goods are displayed? What, if the bag in which the goods are carried away bears the shop's name? And what if the shop has both its own branded bags and bags provided by some of its suppliers showing their mark? Does the sign designate the goods or the shop?

Instead of offering clear guidance on the subject of company names, the ECJ has again stuck to its case-by-case approach. Rather than adding some flesh to its judgment by defining clear criteria as to when the use of the mark as a trade name or company name constituted infringing use of the mark, it has referred the case back to the Cour d'Appel which will be left with the same empty wording as in the Opel case. The outcome reads like this:

26 (...) the unauthorised use by a third party of a sign which is identical to a registered mark in relation to goods or services which are identical to those for which that mark is registered cannot be prevented under Article 5(1)(a) of the directive unless it affects or is liable to affect the functions of the mark, in particular its essential function of guaranteeing to consumers the origin of the goods or services.
27 That is the situation where the sign is used by the third party in relation to his goods or services in such a way that consumers are liable to interpret it as designating the origin of the goods or services in question. In such a case, the use of the sign is liable to imperil the essential function of the mark (...).
28 In the main proceedings, it is for the national court to determine whether the use by Céline SARL of the Céline sign affects or is liable to affect the functions of the ‘Céline’ sign, particularly its essential function.

Thank you, ECJ - that was not worth the ink.

Once there, the ECJ still had to make some sort of statement in relation to Art. 6 (1) (a):

"The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, his own name or address. "

The court had ruled earlier that this provision is not limited to the names of natural persons (Anheuser-Busch, Case C-245/02, paragraphs 77 to 80 - must have been the time when the ECJ still had a legal opinion of its own).

At least, the Court did not offer something new, but stuck with its earlier findings that the claimant can only prevent the other company from using its company name if the use by that company of its company name or trade name is in accordance with honest practices in industrial or commercial matters, which, again, was for the national court to find out.

Before this judgment, if I had been the owner of a trademark for clothes, I would have had no qualms whatsoever suing a clothing retailer over his use of my mark as a company name or on his shop. This is particularly true considering that many brand owners have their own flagship stores in which they are selling their brand exclusively, and on which the brand is also the shop name.

Now, I had better think twice.

Ferrero vs. UEFA, part II

Lately, there has been an interesting inflation of EM 2008 marks registered in Germany. It offers an insight into a highly interesting legal fight between Ferrero and UEFA.

Ferrero, who has just filed a cancellation action against UEFA's EM 2008 CTM word mark, seems intent on using at least some kind of EM 2008 mark for itself in the run-up to the EURO 2008 in Austria and Switzerland. A quick search on the German trademark register revealed no less than four word/device marks for EURO 2008 and one word mark application, which is still pending (and has been so since 2003). In addition, another Ferrero word mark application for Österreich-Schweiz 2008 , applied for on 25 April 2004, is pending. This application enjoys priority over its English language equivalent, UEFA's international registration designating the EC (reg. no. 000807494) for Austria-Switzerland 2008.

Or ist this just a tactical move to make the German Patent Office (or better still, the Federal Patent Court, or one of the civil courts) declare the mark invalid on absolute grounds, or to obtain an judgment confirming that the EM 2008 portion of the word/device marks lacks distinctiveness? If this turns out to be, then the UEFA may find itself in an uncomfortable position if it tries itself to enforce the mark.

Ferrero would not be the first to file for a mark which it considers unregistrable on absolute grounds to gain certainty hereon. The word mark, at least, looks like a tough case, given the time it has been pending since it was filed on May 14th, 2003. And if the German Patent and Trademark Office continues to refuse to register the mark, odds are the UEFA will have a similarly hard time doing so, or enforcing its CTM in Germany, even if it manages to keep it in force. As long as a cancellation action against the CTM is pending, no decision will be rendered on the merits, and it is difficult to say whether courts will be inclined to grant interim relief on the basis of a mark in respect of which not only a cancellation action is pending, but which was also refused protection in Germany on absolute grounds.

Another interesting legal question: Does a national court, called upon as a Community Trademark Court, have the authority to refuse an injunction in respect of a mark which would not be registrable according to its national laws (in particular if the same mark is known to have been refused registration)? Or is it bound by the registration? Luckily, there is plenty of time to think this question over until the Games begin.

In the meantime, feel free to choose your favourite Ferrero EM 2008 mark.

Ferrero takes on UEFA over EM 2008 mark

Ferrero files cancellation against UEFA's EM 2008 mark

It looks as if Ferrero, a maker of chocolates (i.a. kinder products), has learnt its lesson from the FIFA World Cup in Germany in 2006. As can be seen from OHIM's website, FERRERO has recently (14 August 2007) filed a cancellation action against UEFA's EM 2008 word mark (CTM 004905411), registered for the marketing of the upcoming 2008 European Football Championships to be held in Austria and Switzerland. The mark is registered for a wide variety of goods, from dispensers of kitchen towels to vehicle lubrication. It is meant to secure the EURO 2008's official sponsors the exclusivity they pay for. However, in German speaking countries, EM stands for Europameisterschaft (European Championship). It is used as a generic abbreviation for any European championship from boxing to snooker. So EM 2008 could well be be considered a generic term for a European Football Championship by German (and Austrian) standards.

Ferrero's fight against the attempts by organizers of international sports events to secure extensive protection for their trademarks and logos has something of a tradition. In April 2006, when FIFA's enforcement of its Fußball WM 2006 mark (for Fußball-Weltmeisterschaft, German for Football World Cup) was at its nastiest, it obtained the cancellation of the mark before the German Federal Court of Justice (BGH). In a parallel decision, Ferrero also obtained the reversal of the Federal Patent Court's decision not to cancel the trademark WM 2006 (for Weltmeisterschaft 2006, or World Cup 2006) for most of the goods claimed, in particular for everyday consumer goods (I won't list them in detail here, the list of goods and services fills 10 of the decision's 37 pages...).

Not without a cause: Ferrero has a long tradition of including collectible photos of players of the German Mannschaft with two of its most popular chocolate products (duplo, hanuta) before important tournaments such as World Cups and European Championships, usually featuring the competition's name on it.

A very interesting side aspect of the story is that FERRERO is actually an official sponsor of the UEFA European Football Championships in Austria and Switzerland in 2008. So on the face of it, Ferrero may actually be acting against its own interests in cancelling the mark.

Another cancellation is pending against the UEFA's EURO 2008 mark (CTM 003410529), filed by Julius Erdmann Beteiligungsgesellschaft mbH based in Cologne.

Looking at UEFA's CTM portfolio and pending applications, one may be tempted to think that there are more marks that may face cancellation actions, if and when they are registered. Word marks such as POLAND UKRAINE 2012 (CTM 005760012), CROATIA HUNGARY 2012 (CTM 005759956) or ITALIA 2012 (CTM 005759725) , but also EURO 2012 (CTM 004327854) and EURO 2016 (CTM 005486899) look like invitations to file for cancellation.

As far as Germany is concerned, UEFA has not been lucky with its its EURO 200X mark. In 2004, the Federal Court of Justice turned down UEFA's infringement claim in an action against a manufacturer of balls featuring a EURO 2000 logo, albeit not UEFA's official logo. The decision was based on the grounds that the "EURO 2000" word element in UEFA's word/device mark EURO 2000 lacked distinctiveness. During the proceedings, UEFA had itself admitted that EM 2000 was generally understood to refer to the then ongoing European Football Championships and therefore descriptive. This argument does raise the question why UEFA is now applying for the above word marks, which do not appear to be any more distinctive for the respective editions of the same championship.

Let's hope that the European legal machinery will decide on the cancellation in time. When Ferrero obtained the cancellation of the FIFA mark in April 2006, it was almost too late for most companies to jump on the WM 2006 train, which had long left the station by then.

P.S.: Ferrero seems well prepared to fight this through, see here.

O2 gives Deutsche Telekom Magenta Blues

Yet another colour CTM cancellation action

On the face of it, Red Bull and Deutsche Telekom have only little in common. While the incumbent former telecoms monopolist struggles hard to reverse the trend of a steadily declining clientele, Red Bull's sales of its Energy Drink have been growing at a breathtaking pace. When it comes to trade marks, however, they face a similar problem.

Both companies are owners of colour trademarks consisting of two colours (CTM 000212753 for Deutsche Telekom, and CTM 002534774 for Red Bull), and both colour trademarks are being attacked on the grounds that they do not meet the criteria set by the Community Trademark Regulation, more specifically Art. 4 of the Regulation, which reads as follows,

A Community trade mark may consist of any signs capable of being represented graphically (...).

and Art 7 , according to which

1. The following shall not be registered:

(a) signs which do not conform to the requirements of Article 4

One may wonder why these marks have been registered in the first place, if they do not conform to these requirements However, as mentioned earlier, the troubles for owners of colour trademarks are fairly new. They stem from a 2004 decision by the ECJ, which ruled, in respect of abstract colour marks consisting of two or more colours, that

a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way."

Trademark owners all over Europe have been asking themselves what to make of this. Whilst they were still thinking, some malevolent competitors have filed invalidity actions: XL Energy Marketing Sp. z o.o. and Boost Drinks Ltd. in the case of Red Bull, O2 - one of Germany's big four mobile telecoms network operator - in the case of Deutsche Telekom. While Red Bull's competitors seem to haven an own interest in using the colours for their products, O2's motivation appears to be purely altruistic. Its corporate colour has been navy blue ever since it took over the former network operator VIAG Interkom.

The prevailing question in the briefs exchanged by the parties before the OHIM seems to be whether the conditions for registration of a mark have to be met at the time of registration only, or whether a subsequent change in the interpretation of the law (the Community Trademark Regulation), triggered by the much-discussed Heidelberger judgment in the instance, shall affect the validity of the registration. The law offers no clear guidance:

Article 51: Absolute grounds for invalidity

1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings,

(a) where the Community trade mark has been registered contrary to the provisions of Article 7 (...)

The parties are now fighting over whether the marks should not have been registered by OHIM had it been aware of the "correct" interpretation of the law (in which case the mark may be subject to cancellation for invalidity), or whether the registration of the mark was in accordance with the law at that time. Deutsche Telekom understandably argues that the ECJ's decision marks a change in the law itself, whereas O2 argues that a change of interpretation does not alter the law as such.

The question as such is highly interesting: Can a trademark that was registered in line with the legal requirements of the time of its registration be declared invalid on the grounds that the interpretation of the law changed through the years? That would effectively render a huge amount of trademarks vulnerable to cancellation. It would create a considerable legal incertainty as to the validity of trademark rights, the avoidance of which is the very raison d'être of registered trademarks. Each and every new ECJ judgment on the registrability of signs would trigger a series of new cancellation actions. It remains to be seen how OHIM and - in all likelihood, unless the matters are settled - the CFI (and eventually even the ECJ) respond to that question.

By the way, it is interesting to see how much Deutsche Telekom, notorious for its huge trademark budget, is investing into the defence of its two-colour trademark when it owns a single colour CTM trademark (001353358) for the colour magenta, which it has so far widely used and enforced quite successfully. The infringement action of Deutsche Telekom against Mobilcom, a mobile communcations reseller, led to two landmark judgments (here and here) by the Federal Court of Justice, Germany's highest civil court, on the enforceability of trademarks (albeit based on the national German registration). Its interest in this action may therefore be more academical, after all.

Not so for Red Bull, whose colour mark has repeatedly given it wings in its enforcement campaign. A cancellation of the mark would probably leave it with a nasty hangover. Not something Red Bull people are likely to be used to.