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In Haribo v IGE, the Swiss Federal Administrative Court decided that GOLDBAEREN should be registered purely because of preexisting trademarks. It was felt that a number of comparable trademarks existed involving “Gold” and animals and it would be unfair were it not to protect Gold Bears too. The court also said there was no public or private interest in refusing protection.
To get the audience in the mood, they were provided with handouts of Haribo Gold-Bears to chew on while the 11 judges chewed the fat over the issues at hand.
“A complete waste of time”?
Mr Justice Arnold said UK law has been clear for more than 50 years that the state of the register is irrelevant when examining a new trademark application, as in Germany. “This is for reasons of principle, practicality and policy,” he said.
As a matter of principle, no applicant to register a trademark has a reduced expectation that he can rely upon an unlawful act in favour of a third party. His only legitimate expectation is that his application will be examined in accordance with the law and on its own merits.
“As a matter of practicality, life is too short,” said Arnold. “Once you start going into the state of the register, you have to ask yourself well are we just considering identical previous registrations, similar previous registrations, and once you go into similar, how similar? And then you have to ask asking yourselves, well, in what circumstances and for what reasons will they be allowed? And does the present on differ and why? And you rapidly have to go into a rather lengthy enquiry which is a complete waste of time.”
He added allowing reliance upon previous registrations is bad policy: “It only works one way. If applications have previously been wrongly refused they don’t get on the register. It is only the ones that have been wrongly accepted that get onto the register. Therefore this principle operates as a one way ratchet.”
Dr. David Aschmann of the Federal Administrative Court in Switzerland responded to Arnold: “Do you really think that the applicant cannot expect equal treatment when he asks for the application? He needs the trademark to go on the market and access the competition.”
Arnold retorted: “According to your argument, once you have 19 you have to have number 20, and when you have 20 you have to have 21. You have to have this unlawful practice and that simply cannot be right. I don’t accept the argument that is in the interests of the trademark applicant. Number one, he does not require the registration to market his goods. The point of the registration is to give him a right against his competitors.
“As regards the competitors they of course have the right to say he is at risk of infringing his competitors. And it is at that point you can say he has the opportunity to right the previous wrongs. If they do make the mistake of trying to enforce their unlawfully registered marks, the marks can be invalidated. So that’s the point at which to correct the system.”
A need for deeper evaluation
Marianne Grabrucker, former presiding judge in the German Federal Patent Court and president of the Circle of European Trademark Judges, commented Germany considers each application on the merits. Similarly, EUIPO is bound by duty to exercise powers in accordance with principles such as equal treatment and sound administration, with no reliance on unlawful acts and examination on a case-by-case basis.
A Circle of European Trademark Judges in a meeting in October 2016 concluded there is a need for deeper academic evaluation of the topic, as well as an obligation on an administration to balance different interests – such as public interest, lawful administration and the constitutional right to equal treatment.
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