Some of the proposed changes in the European Commission’s recently published trade mark proposals are confusing practitioners and worrying brand owners. The changes concern which languages should be taken into account when considering absolute grounds for refusal.
The Commission proposes updating Article 7 of the Community Trade Mark Regulation so that absolute grounds for refusal apply not just in any part of the EU but also “where a trade mark in a foreign language or script is translated or transcribed in any script or official language of a Member State”. For example, an application for a set of letters in Arabic, Hindi or Shona that, when translated, had a descriptive meaning or was contrary to public policy would have to be refused.
The Commission also wants to change the Directive, which affects all national trade mark laws in the EU, so that that the grounds of non-registrability apply even if they obtain “in other Member States than those where the application for registration was filed” (so a swastika, which is illegal in Germany, would not be registrable in any other EU country) or “only where a trade mark in a foreign language is translated or transcribed in any script or official language of the Member States” (Article 4).
In London, where I live and work, some 300 languages are spoken today. On one hand, it makes sense that words that have a generic meaning or are offensive to at least some potential consumers should not be registrable as trade marks. On the other hand, extending that principle to any foreign language – when there are an estimated 6000 to 7000 languages in the world – seems over-the-top. As Emma Stopford of GSK said at a recent meeting organised by MARQUES, many applicants who think they have come up with an invented name may be disappointed to find that they have chosen something that has a meaning in a foreign language and is not registrable.
Moreover, the change places a heavy burden on examiners, who cannot be expected to be familiar with every language on the planet. And it also raises questions such as: What counts as a language? Should dialects also be considered? What is meant by a script? And what about languages no longer in common use, such as Latin?
The plans to change the Directive, and therefore national laws, are particularly difficult. It seems like they are designed to address the Matratzen issue, where the German word Matratzen (meaning mattress) was registered for mattresses in Spain, and the registration was upheld by the CJEU. But, read literally, the text requires national offices, like OHIM, to consider all foreign languages: is this what the Commission intended? And is a trade mark examiner in, say, Greece or Cyprus, really going to worry about what an application means in Polish or Finnish, let alone Japanese or Quechua? (Or, taking the text literally, is he going to worry about what a Quechua word means when translated into Polish?)
As Professor Joachim Bornkamm (above left) said in his recent Sir Hugh Laddie Memorial Lecture, this proposal removes a key difference between national and European trade marks – and is one less reason for filing the former. In which case, national governments might oppose it on principle, so there is still scope for amendment. I would go further: the linguistic proposals are confusing, badly drafted and not justified by the impact assessment. The Commission should clarify, explain and if necessary revise them.