17-) EU Trademark Law

INTRODUCTION

-Primarily governed by the EU Trademark Regulation (EUTMR) and the Trademark

Directive: a system for the registration and protection of trademarks at both the EU level
and within individual member states.

SIGNS

any signs capable of being represented graphically, that can distinguish the goods or
services of one enterprise from the other. These signs include:

• Words, including personal names

• Designs, letters, numerals
• Colors, the shape of goods or their packaging
• Sounds

To be registered, a sign must have distinctive character and should not be descriptive,
deceptive, or contrary to public policy or morality.

Purposes of Trademark Protection

1.) Distinguishing Products

Indicating the source of the goods or services

2.) Protection for Reputation

Allowing businesses to build a reputation

Trademark vs. Other Signs Used in Commerce

They are different than trademarks.

• Trade Names: Names used by businesses to identify themselves rather than their
products.
• Geographical Indications:
• Domain Names

Risk of Confusion and Scope of Protection

 The risk of confusion is a central concept in trademark law.
• Identical Marks and Goods/Services: Protection is strongest here; generally
prohibited.
• Similar Marks and Goods/Services: If there is a likelihood of confusion, protection
is extended to similar marks and goods/services.
• Reputed Marks: Marks with a significant reputation are protected against unfair
advantage. Famous trademarks are treated differently under the law than other
marks. Famous trademarks receive enhanced legal protections from infringement

Marks Having a Reputation

• Reputed marks in the EU receive enhanced protection against:
• Dilution: Weakening of their distinctiveness.
• Tarnishment: Harm to their reputation.
• Unfair Advantage: Exploitation of their reputation, even for dissimilar
goods/services.

International Conventions in EU Trademark Law

Paris Convention 1883

• National Treatment: Equal protection for foreign and domestic trademarks.
• Priority: Right to use the filing date of the first application in one member country
for applications in others within six months.
• Minimum Standards: Basic protections for trademarks across member countries.

Madrid Agreement
• International Trademark Application: Allows filing a single application for
protection in multiple countries.
• Set of National Rights: Each designated country grants trademark rights as if filed
directly within their jurisdiction.

TRIPs Agreement
• Comprehensive Standards: Sets detailed minimum standards for trademark
protection and enforcement.
• Non-Discrimination: Ensures trademarks receive the same protection regardless
of the owner's nationality.
 EU Trademark Law

CJEU Case Law

• Interpretation: The Court of Justice of the European Union (CJEU) interprets and
ensures uniform application of EU trademark law across member states.

Directives
• Harmonization: Directives aim to harmonize trademark laws within member states
to ensure consistent protection and enforcement.

Regulation on EU Trademarks
• EUIPO: The European Union Intellectual Property Office (EUIPO) administers the
registration and management of EU trademarks.
• Unitary Title: An EU trademark provides uniform protection across all EU member
states with a single registration.

Where to File
• EUIPO: File the application with the European Union Intellectual Property Office.

Possible Applicants
• Individuals or Legal Entities: Any person or business can apply.

Content of the Application

• Information on the Applicant: Provide the name, address, and nationality.
• List of Goods or Services: Specify the categories of goods or services the mark will
cover.
• Representation of the Mark: Include a clear depiction of the trademark.

Subject Matter of an EU Trademark (Art. 4 EU TM Regulation)

An EU trademark can include words, personal names, designs, letters, numerals, colors,
shapes of goods or packaging, or sounds, provided that they:

(a) Distinguish Goods/Services of one business form another

(b) Representation: Can be clearly and precisely represented in the EU Trademark

Register.
 (a) Example Case: Dyson (Signs)
• Decision: The CJEU ruled that a trademark must be a specific, identifiable sign, not a
broad concept. Dyson's application to trademark the transparent bin of a vacuum
cleaner was rejected because it was deemed a mere concept, not a distinct sign.

b-) Mode of Representation

Graphical Representation vs. New Rules

• Old Requirement: Trademarks had to be graphically represented.
• New Rules: Any form of representation is allowed if it is clear, precise, self-
contained, easily accessible, intelligible, durable, and objective.

(b) Example Case: Sieckmann –scents- (Mode of Representation)

• Decision: The CJEU ruled that a chemical formula, description, and sample were
insufficient to represent a scent trademark because they lacked clarity and
precision.

(b) Example Case: Libertel –colours- (Mode of Representation)

• Decision: The CJEU decided that a single color could be trademarked if it is

precisely defined using an internationally recognized color code.

Other Examples
• Sounds: Can be represented by musical notation or an audio file.
• Shapes: Can be represented by a detailed image or 3D model.

Recital 10 of EU TM Regulation
• Guideline: Trademarks can be represented in any appropriate form using generally
available technology, ensuring the representation meets clarity, precision, and
objectivity standards.
 C-) Capability to Distinguish
Capability to Distinguish in EU Trademark Law

ECJ Definition
• Definition: The mark's ability to identify goods/services from a specific
undertaking, distinguishing them from others.

Generic Terms
• Definition: Common terms used to refer to a category of goods/services.
• Status: Generally ineligible for trademark protection due to lack of distinctiveness.

Descriptive Signs
• Definition: Signs indicating characteristics of goods/services (e.g., quality, origin).
• Status: Initially ineligible but may become distinctive through extensive use and
acquired distinctiveness.

Expressive Marks
• Definition: Marks conveying a message or expression.
• Status: Evaluated for distinctiveness based on their capacity to identify the source
of goods/services.

Geographical Information
• Definition: Signs indicating the origin of goods/services.
• Status: Usually descriptive but can be distinctive if they acquire a secondary
meaning.

Customary Signs
• Definition: Signs commonly used in trade practices or language.
• Status: Typically lack distinctiveness unless they acquire secondary meaning
through extensive use.
C-) Example Case –UK- McCain Case (Capability to Distinguish)
• Decision: The Mc use doesn’t infringe McDonald's trademarks, (it doesn’t cause
confusion among consumers). The court ruled in favor of McCain.
C-) Example Case –Wrigley Case- (Capability to Distinguish)
Wrigley intends to get protection for the word «Doublemint» as a trademark for chewing
gum. The court refused; it held that the word "Doublemint" was not "exclusively
descriptive" because the combination of the words "double" and "mint" could have two
distinct meanings.
C-) Example Case –Merz-
German company applied to register BRAVO as a trademark for typewriters. The court
rejected because the exclamation “Bravo” is widely used, customary in the trade.

Capability to Distinguish in EU Trademark Law

Acquisition of Distinctiveness
Possibility to register «if the trademark has become distinctive as a consequence of the
use made of it.

How to Prove
Assessing the distinctive character of a mark: market share held by the mark; how
intensive, geographically widespread and longstanding use of the mark has been; the
amount invested by the undertaking

Case: iMessage Swiss Case (Acquired Distinctiveness)

• Outcome: Swiss court rejected Apple's "iMessage" trademark application due to
lack of distinctiveness. (Court said it was too generic, signaling the word internet.
Apple argued that “iMessage” had acquired distinctiveness there through use.

Capability to Distinguish
Loss of Distinctiveness
• Revocation: EU trademark rights may be revoked if the mark becomes the common
name for a product or service due to the proprietor's acts or inactivity.
ATERSUN Case (Loss of Distinctiveness)
• Outcome: Trademark revoked as "ATERSUN" became generic for the L’oreal
product in trade.

Velcro Case (Loss of Distinctiveness)

• Issue: Velcro Companies faced the risk of losing trademark protection due to
widespread misuse of the term "Velcro" to refer to hook-and-loop fasteners.
• Outcome: Velcro Companies launched a campaign to educate consumers on proper
usage to prevent the term from becoming generic, safeguarding their trademark
rights.

SHAPE OF PRODUCTS
«An EU trademark may consist of any signs like personal names, or designs, letters,
numerals, colours, the shape of goods or of the packaging of goods, or sounds […]»

• Restrictions:
o Standardized Shapes: Marks must significantly depart from sector norms to
indicate origin and possess distinctive character.
o Natural/Product Shapes: Shapes inherent to the nature of the products are
generally ineligible.
o Technical Shapes: Marks cannot consist exclusively of technical solutions.
o Shapes with Substantial Value: Marks cannot consist exclusively of shapes
that give substantial value to the product.
Rubik Cube CASE (Shape of Products – Shape Signs)
A company holds the three-dimensional EU trademark Rubik Cube. A competitor applied
for invalidation saying that it was a technical solution.
Outcome: Court upheld Rubik's Cube's trademark protection (its distinctive shape did not
solely result from its technical function).
Louboutin CASE (Shape Signs)
• Louboutin has a trademark over "the colour red applied to the sole of a shoe (not
the colour but the positioning of the colour).
• Issue: Louboutin sought trademark protection for its red sole design.
• Outcome: ECJ ruled in favor of Louboutin, affirming the validity of its red sole
trademark.
Exclusions from Protection
• Contrary to Public Policy and Morality: Marks that go against societal standards
or morals are ineligible for protection.
• Deceptive Marks: Marks that mislead consumers regarding the nature, quality, or
origin of goods/services cannot be registered.
• Etc.: Additional exclusions may include marks that are generic, descriptive, or
lacking in distinctiveness.

Relative Grounds for Refusal

• Absolute vs. Relative Grounds for Refusal: Absolute grounds relate to inherent
qualities of the mark, while relative grounds involve conflicts with existing
trademarks.
«Upon opposition by the proprietor of an earlier trademark, the trademark
applied for shall not be registered:
• a-) if it is identical with the earlier trademark and the goods/services are also
identical.
• b-) There exists a likelihood of confusion on the public because of this similarity.
• Applies when the earlier mark has a reputation in the EU or Member State, and
using the new mark without due cause would harm the distinctive character or
reputation of the earlier mark.
• Concept of "Prior Mark": Refers to the earlier trademark against which the new
application is compared.
• Opposition and Invalidation: Owners of earlier marks can oppose new
applications, potentially leading to refusal or invalidation of the new mark.
• Other Relevant Rules: Additional regulations may apply to prevent unfair
competition or dilution of existing trademarks.

Registration Proceedings

• Application:
o Filing Date: Date when documents containing required information are
submitted to the Office. Application fee must be paid within one month of
filing.
 • Search:
o Identification of conflicting trademarks or issues that may affect registration.
• Substantial Examination:
o Evaluation of trademark's compliance with legal requirements and potential
for registration.
• Publication, Oppositions, and Observations:
o Application is published, allowing third parties to file oppositions or
observations against registration.
• Grant or Refusal:
o Final decision on whether to approve or reject the trademark application.

Content of Trademark Protection

• Exclusive Rights: Registration of an EU trademark grants the proprietor exclusive
rights.
• Preventing Unauthorized Use:
o (a) Prevents third parties from using an identical sign for identical
goods/services without consent.
o (b) Prohibits use of identical or similar signs for identical or similar
goods/services if it causes likelihood of confusion.
o (c) Bars use of identical or similar signs, regardless of goods/services
similarity, if the EU trademark has a reputation and unauthorized use takes
unfair advantage or is detrimental to its distinctive character or reputation.

Relevant Elements of Trademark Use

• Active Use: Proprietor must actively use the trademark to maintain protection.
• Use in the Course of Trade: Use must occur within commercial activities or
business operations.
• In Relation to Goods or Services: Trademark must be used in connection with
specific goods or services.

Examples of Prohibited Uses

• Affixing the Sign: Prohibited to attach the trademark to goods or their packaging.
• Offering Goods/Services: Prohibited to offer, market, or provide goods/services
under the trademark.
• Importing/Exporting: Prohibited to import or export goods under the trademark.
 • Trade or Company Name: Prohibited to use the trademark as a trade or company
name.
• Business Papers and Advertising: Prohibited to use the trademark in business
papers or advertising.
• Comparative Advertising: Prohibited to use the trademark in comparative
advertising contrary to Directive 2006/114/EC

Content of TM Protection

• Lett. a) Double Identity: Prohibits identical sign use for identical goods/services
without consent.
• Lett. b) Likelihood of Confusion: Prevents similar sign use if it causes confusion
with identical or similar goods/services.

Factors for Confusion Assessment

• Global Appreciation: Evaluates all relevant factors for confusion likelihood.
• Overall Impression: Focuses on marks' distinctive and dominant components.
• Consumer Perception: Considers how average consumers perceive the marks.
• Distinctiveness of Earlier Mark: Greater distinctiveness increases likelihood of
confusion.
• Conceptual Similarity: Semantic content similarity may lead to confusion,
particularly with highly distinctive earlier marks
Lett. c) Reputation

• Article 5(2) TMD implies a certain level of awareness of the earlier trademark
among the public, including both general and specialized audiences.
o This awareness level is reached when a significant portion of the public
concerned with the products/services covered by the trademark knows
about it.
o Relevant factors for assessing this include market share, intensity,
geographical extent, and duration of use, as well as the investment in
promotion.
• A trademark is not required to have a reputation "throughout" the territory of the
Member State; it suffices for it to exist in a substantial part of it.

Puma Case Law (Reputation and Confusion)

• Issue: Sabel applied for "KATZ" trademark for clothing; Puma opposed.
It was held that Puma had not provided sufficient evidence of reputation.

General Motors Case

A trademark doesn't need a reputation throughout the territory but should exist
substantially within it.

Content of TM Protection (Marks with Reputation)

• Necessity for a Certain Degree of Similarity: There must be a level of similarity
between the earlier and later marks, establishing a connection in the mind of the
public without confusion.
o Relevant Factors:
▪ Degree of similarity between conflicting marks.
▪ Nature of goods/services and their similarity or dissimilarity.
▪ Strength of earlier mark's reputation.
▪ Degree of distinctive character of earlier mark, inherent or acquired.
▪ Existence of likelihood of confusion among the public.
• Advantage or Prejudice: Evaluate if the later mark unfairly benefits from or harms
the reputation of the earlier mark.
• Due Cause: Consider if there's a valid reason for using the later mark, like industry
standards or fair competition.
ALLOWED USES
• Name or Address of Third Party: Proprietor cannot stop a natural person from
using their own name or address.
• Non-Distinctive Signs: Proprietor cannot prevent use of signs describing
characteristics of goods/services.
• Use of Trademark for Identification: Proprietor cannot prohibit using the
trademark to identify goods/services as their own, especially when necessary for
indicating product/service purpose.

REVOCATION
• Non-use: If the proprietor hasn't used the EU trademark genuinely in the Union for
the registered goods/services within five years of registration, it can face sanctions,
unless justified reasons for non-use exist.
• Loss of Distinctive Character: The trademark may lose its distinctive character if it
becomes a generic term due to common usage.
 • Trademark Becoming Deceptive: If the trademark becomes deceptive or
misleading to consumers regarding the nature, quality, or origin of the
goods/services, it may face revocation.

INVALIDATION
• Grounds for Refusal: Invalidates a trademark if it doesn't meet legal requirements
for registration, such as lacking distinctiveness or being descriptive.
• Bad Faith: Invalidation based on the applicant's dishonest intent during trademark
registration, like knowingly using someone else's established mark or seeking to
exploit legal loopholes for personal gain.

Lindt &Sprungli Case

The shape of the Lindt Gold Bunny, irrespective of its color, has become established as a
trademark through use.