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Beware unregistered marks in the EU

Companies outside Europe could be forgiven for thinking that trademark law around the EU is relatively harmonized, given the EU-level directives and Community trade mark system. Attendees at the Regional Update session on Europe yesterday were reminded, however, that that is not the case with unregistered marks.

The speakers took the audience on a tour of European countries and their sometimes confusing court decisions, beginning in the Baltics. In Latvia, the AKVAPARKS chain of water parks stopped another company using the AKVAPARKS name for selling a line of clothing, even though the former had no registered mark and the goods were not similar. Another case between Latvia and Estonia, however, saw a former agent of the EVERMEN clothing line retain his trademark registration because the court considered the agent had made sufficient investment in the brand locally—and the EVERMEN company did not have a local registration.

In France, there is very little protection for unregistered marks. The example given was Denver Electronics, a company with European-wide sales that was sued in France after a local company registered the DENVER trademark. Denver Electronics registered a Community trade mark at the time, but lost the case in France, leaving “the rather strange situation where it has a valid CTM but cannot sell its product in France,” said speaker Marten Bouma of Merkenbureau Bouma.

Although there is no protection for unregistered marks as such in the Benelux, its trademark act does allow companies to bring an action based on bad faith. That case was illustrated by Unilever’s attempt to protect a taco-shaped ice cream. In Turkey, too, bad faith is a powerful weapon and the ROCKSTAR line of games used it successfully to cancel a similar mark.

“There is certainly a desire for harmonization, and that was recommended in the recent Max Planck study on the European trademark system,” said Bouma. “But for now my advice would be to assume that Europe is a bundle of countries, not a union, on unregistered rights. Protection is the exception. So register what you can.”

Ceylin Beyli of CBL Law Office in Turkey spoke to a slightly different topic at the end of the session: how much a trademark can be used in a modified form, but still qualify for use in order to maintain its registration. Although EU law is harmonized, requiring the mark not to lose its “distinctive character” in its modified form, there have been different interpretations. In the UK, supermarket Asda succeeded in having several registered marks for the Penguin range of biscuits canceled, as a counterclaim in a passing-off case.

Other examples from the Czech Republic, Denmark and Switzerland showed that an instinctive reaction to the marks didn’t always tally with the ruling in the case, with Beyli ticking or crossing off each comparison in turn. “I was particularly surprised by the CRYSTALEX case in the Czech Republic,” she said. So be warned that even when the law is harmonized, Europe can raise a variety of problems.

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