While politicians made it easier for them to register their marks on a pan-EU basis by launching the Community trade mark (CTM) 16 years ago, a patchwork of national laws runs parallel to the CTM system, making it essential for IP owners to understand the rules if they want to maximize their rights.
Panelists in two sessions at the Annual Meeting will introduce them to a series of important issues in European trademark law. The first focuses on filing strategies by considering the advantages (and disadvantages) of using the Madrid Protocol, CTM and of dropping national marks in Europe altogether. It also examines the rules governing the use of a modified mark, and the vulnerability of your mark to attacks on the grounds of non-use. The second session will look at the legal impact of using an unregistered mark—and of not using a registered mark.
Eric Bakker of Bakker & Verkuijl, who will moderate tomorrow’s session, will summarize some recent disputes in Europe relating to use of a modified mark and explain how that puts the owner at risk of a challenge for non-use. Three cases are now before Europe’s highest court, the Court of Justice of the EU, which is set to outline how national courts should interpret EU trademark law on this issue. In the first, the Court will consider whether the owner of the marks PROTI, PROTI POWER and PROTIPLUS should be allowed to maintain the registration for PROTI, even though a rival claimed that it had not genuinely used the mark.
The Court is also set to decide a dispute between apparel company Levi Strauss & Co. and a retailer. Levi Strauss owns a trademark for a blank red tab made of cloth, which appears on the pocket of its jeans. When it accused a business rival of infringement, the defendant claimed the plaintiff had used the red tab only as a red tab with the word LEVI’S and said that only the use of this mark (which was also registered) was genuine.
The third case is between UK optician chain Specsavers and supermarket Asda. The Court of Appeal in London has asked judges in Luxembourg a series of questions, including whether a company’s enhanced reputation in a color can be taken into consideration in an issue of consumer confusion, even though the trademark had not been registered in colour.
“The issue of use is especially important for logos and device marks which tend to be updated and evolve over time,” says Bakker. “Trademark owners and their counsel should be even more careful when it comes to these marks in deciding what they should file for and how they use their marks.”
Community trade marks: reforming the system
1996The Community trade mark (CTM) system is launched. The Office for Harmonization in the Internal Market (OHIM) receives more than 40,000 CTM applications in first year and some EU member states begin to fear that national filings will slump.
May 2007Representatives of member states on the EU Competitiveness Council agree to ask the Commission to propose reducing OHIM’s fees after it builds up a large surplus. They also call on the Commission to start work on a comprehensive study on the overall functioning of the European trademark system.
May 2009The cost of applying for a CTM in Europe falls. Attention now turns to other parts of the deal: a E50 million cooperation fund for projects related to the harmonisation, protection, promotion and enforcement of trademarks and designs in the EU; and bigger questions about the functioning of the CTM system.
July 2009The Commission puts out a tender for a study of Europe’s trademark system.
October 2009European Commission awards contract for study to the Max Planck Institute, which starts to consult with trademark owners and users.
January 2010OHIM publishes its submission to the Max Planck Institute, calling for rebates to owners of CTMs. INTA makes a preliminary submission, setting out its settled policy on many of the issues, such as harmonization, consistency, the use requirement, well-known marks, opposition, classification and renewal fees.
June 2010INTA makes a presentation to the Max Planck Institute distilling the views of 46 Working Groups—comprising more than 200 people across numerous INTA subcommittees—who had studied some 60 different aspects of the trademark system in Europe.
December 2010Max Planck Institute submits its Study on the Overall Functioning of the European Trade Mark System to the Commission. After making more revisions following discussions with Commission officials, it produces a final report in February 2011.
March 2011The Commission publishes the Max Planck Institute’s study.
May 2011The Commission holds a meeting with users’ groups to gauge their reaction to the Institute’s study.
2012The Commission was due to publish its proposals for updating the Trade Marks Directive and the Regulation. To date it has not published its proposals.
Recommendations for reform
The Max Planck Institute’s Study on the Overall Functioning of the European Trade Mark System was 290 pages long. Here are some of its key recommendations.
Classes and feesApplicants should no longer receive three classes for the price of one. Instead, fees should be payable for each class to avoid overcrowding the Community trade mark register.
Genuine use This is a controversial—and political—issue for the European Union and a key case, Onel, is pending at the Court of Justice of the EU. The issue is whether the test of genuine trademark use can be satisfied by use in just one member state, even if that state is as small as, say, Cyprus or Malta. The Institute reached no conclusion but said it strongly supports an interpretation of the genuine use requirement for Community trademarks which disregards political frontiers.
Fees and redistributionThe Institute agrees in principle that 50% of fee income should be distributed to member states.
Trademark law in member statesThe Study lists 10 optional provisions in the Trade Mark Directive, which is designed to harmonize laws in member states, that it says should become mandatory, including the absolute ground for refusal based on bad faith, relative refusal based on conflict with a reputed mark and extended protection for trademarks with a reputation.
Well known and unregistered marksThe Study noted that IP owners wanted more clarity on the relationship between well known and reputed marks. To provide this it said that earlier well known marks should be entitled to claim protection as earlier marks in opposition and invalidation proceedings also where protection in the absence of likelihood of confusion is claimed; the Trade Mark Directive be amended to give unregistered marks (as well as registered marks) that are well known in a member state protection against infringing use; and trademarks that are well known in the EU should be given the same protection as registered CTMs, entitling their owners to claim protection against infringing use in actions in CTM courts.
RM20 Regional Update: European Community (OHIM, ECJ) takes place today at 12:00 pm in room 146 ABC
RT01 Regional Update: Europe is tomorrow at 10:15 am in room 207 AB
