Case: Storck v OHIM
The dispute: Storck is appealing a 2010 ruling from the General Court that backed OHIM’s decision not to allow Storck’s application to register the shape of a three-dimensional chocolate mouse as a trade mark. Among other things, the company claims that the General Court failed to take account of the concept of distinctive character; and failed to take into account that the mark consists of both a 3D shape and a graphic element.
Why it matters: A series of cases brought by chocolate makers have underlined the difficulties applicants have in registering non-traditional marks in general and 3D trade marks in particular as Community trade marks. In May, the Court of Justice upheld lower rulings that Lindt’s 3D chocolate rabbit had not acquired distinctiveness throughout the 27 countries of the EU and so could not be registered as a CTM. A win for Storck could give owners of 3D marks greater hope of winning protection for their IP rights.
Lawyers for Stork: CMS Hasche Sigle (Tim Reher, Petra Goldenbaum, Ilse Rohr and Thomas Melchert)
Ruling due: September 6
Case: United States Polo Association v OHIM
Dispute: The US Polo Association is appealing a 2011 ruling of the General Court that OHIM was right to conclude there was a likelihood of confusion between the two trade marks U.S. Polo Assn. and Polo-Polo. It says that the General Court misapplied the principles laid down in the 2005 decision Medion regarding the possible independent distinctive role of one element in a composite sign although it does not dominate the overall impression.
Why it matters: The decision should clarify how examinersshould treat different elements within a trade mark. The US Polo Association says that the Court should not construe the Medion ruling as establishing a general rule that any element of normal distinctiveness shared by two trade marks should be regarded as having an independent distinctive role in a composite sign. The CJEU ruling should provide more clarification on this point.
Lawyers for the United States Polo Association: CMS Hasche Sigle (Petra Goldenbaum, Ilse Rohr and Thomas Melchert).
Ruling due: September 6
Unitary patent hearings
The Court will also hold a series of hearings in IP cases in September. Of these, the case with the greatest potential impact on IP owners are actions brought by Italy and Spain asking the Court to annul Council Decision 2011/167/EU, which authorised enhanced cooperation in the area of the creation of unitary patent protection. Hearings in the joined cases are slated for September 25.
