Understand Europe’s trademark trends

Who is the average consumer under European trademark law? What kind of conduct constitutes “taking unfair advantage” of the reputation of an established trademark? How can you prove that you have used your trademark to the standard required by EU law?

If you need to know what Europe’s courts decided last year on these questions (and many others), today’s annual review of leading case law in the European Union will provide a whistle-stop tour of some of the most important decisions and an analysis of emerging trends.

Speakers Guy Heath of Nabarro in the UK and Georg Jahn of Noerr in Germany will take in more than 30 decisions from 12 EU member states, the Court of Justice of the EU (CJEU) and the General Court, and explain how they are shaping trademark law.

Some of the leading CJEU and General Court cases that will be under discussion include the CJEU ruling on the registrability of Apple’s retail layout as a trademark, the TRIPP TRAPP decision on the registrability of shape marks, the Leidesplein/Red Bull case dealing with the defence of “due cause” in an unfair advantage claim, a case involving the German Savings Banks and the registrability of the color red, and the KORNSPITZ bread roll case, which dealt with the question of what a trademark owner must do to prevent its mark becoming generic.

“Amongst other things, the session will focus on the views of the EU General Court on the registrability of a wide variety of non-traditional trademarks, and how that court approaches the comparison of trademarks that are descriptive, or which have a meaning for some but not all of the EU public,” says Heath.

Heath and Jahn will also analyze some of the important decisions that were handed down by national courts across Europe last year. The featured cases will include a LOUBOUTIN red soles case from Benelux, a comprehensive review from the Irish High Court on the principles of bad faith, a ruling from the Spanish Supreme Court that does away with its traditional view on the defensive power of a registered trademark, and a French case involving a claim against a trademark owner by a defendant which removed its goods from the market when first threatened.

The speakers will also consider some of the reasons why national courts continue to hand down very different rulings.

“European trademark law is harmonized and member states are not permitted to reach different conclusions—but in practice they do,” says Jahn. “Sometimes they apply the standards that they are very familiar with because they are part of their national legal traditions, without realizing that some things have changed”.

“The overall theme is that there isn’t always a level playing field in Europe”, says Heath. “It is mostly due to national courts applying the Trademark Directive in different ways, and in ways that the legislators didn’t anticipate. Many of the issues that we will be drawing out have lessons for IP owners interested in the possibilities for forum shopping”.

The session will draw on the recently-published Annual Review of EU Trademark Law—the special issue of INTA’s The Trademark Reporter—and is designed both for European practitioners who want to understand how the decisions will affect their practice and for non-European lawyers who want a curated overview of developments in Europe.

CT04 Annual Review of Leading Case Law in the EU takes place from 10:15 am to 11:30 am today.

In a victory for Apple, Europe’s highest court has told retailers that they may be able to secure trade marks for their store layouts if the design is capable of distinguishing their goods and services from those of other businesses.

The decision was a useful reminder to IP owners to guard against their trademarks becoming generic. The case asked whether the views of the end consumer of oblong-shaped bread rolls known as KORNSPITZ are relevant when assessing whether a trademark has become a common name for a product, or of those who trade in the product commercially. The CJEU held that the views of consumers are ­decisive.

The Norwegian maker of TRIPP TRAPP highchairs suffered a setback in its battle to protect the shape of its products after the Court of Justice of the EU ruled that EU law can preclude the registration of shapes required by the function of a product.