The Austrian Supreme Court has requested a preliminary ruling from the European Court of Justice (ECJ) regarding the three–dimensional trade mark of a sitting golden chocolate rabbit (CTM number 1,698,885).
These questions relate to a common practice in countries where mere prior use of trade marks does not confer rights to prior users unless acquired reputation can be shown. If someone later registers a mark, the owner can then stop the prior users. This is the idea of a mere registration system such as the CTM system, which does not force member states to acknowledge prior use.
There are many different golden rabbits on the market. Those which were most similar to the CTM registration were warned off by the owner of the registration, sometimes even sued, and finally their sales stopped.
The owner itself intensively has marketed his golden rabbits in the Austrian market since 1994 and they are renowned at least since 2003. He sued an Austrian competitor for commercializing a very similar golden rabbit, which product he did not know prior to the sale that formed the basis for suing for infringement of the registered trade mark in 2003.
The defendant put in a counter–claim for invalidity based on Article 51 paragraph 1(a) (unregistrability) and (b) (bad faith application) of the CTM Regulation. The requesting Court thinks that (a) is here not decisive because of the acquired reputation or of registrable features, but (b) (bad faith) is the decisive topic for the counter–claim.
The requesting court is of the opinion that the concept of bad faith needs to be interpreted. Nowhere in Community law is there a definition or explanation of bad faith. Can a company, which protects its own renowned product later on by a 3D mark, then use its mark to stop competitors who have marketed very similar products already before registration but not intensively enough as to acquire their own enforceable rights on their products? This query leads the court to put three questions to the ECJ, which are in short:
- Is it bad faith to apply for a trade mark in order to prevent competitors from continuing using the sign of which the applicant had prior knowledge? (The counter–argument in the case is that this is not automatically so since the right to exclude others is the essence of trade mark right.)
- Is it bad faith under the same circumstances when the competitor has already acquired "valuable property rights"? (The case explains that "valuable property rights" are defined as being due to long–term use and/or publicity without already having acquired reputation so as to enable opposition to the CTM.)
- If either (1) or (2) is answered in the affirmative: is bad faith excluded if the registered sign has already obtained a reputation? (Here, the case states that then the applicant has only pursued the aim to make it easier for him to stop infringers whom he could sue anyway on the basis of his acquired reputation.)
The fight about the golden rabbits has been intensively watched by the Austrian trade mark community for years with extensive media coverage – and this fight is now close to its culmination.
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| Helmut Sonn |
SONN & PARTNER Patentanwälte
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A-1010 Vienna
Austria
Tel: +43 1 512 84 05
Fax: +43 1 512 98 05
office@sonn.at
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