Conference Report: IBIL's Annual Hugh Laddie Lecture

The AmeriKat gets a twinge of nostalgia whenever she walks up Gower Street to UCL, returning to her LL.M alma mater and the scene of her first sturdy paw prints into her career in IP. Perched at the back of the lecture theatre this evening, sandwiched between a counsel and a colleague, she observed the IP glitterati as they shuffled in to this year's IBIL Annual Hugh Laddie Lecture entitled, "Killing the Goose that Laid the Golden Egg: Too Many Trademarks?" - a lecture all about trade mark use (the bane of many a IP practitioner's existence). This year's lecture was given by The Honourable Mrs Justice Fidelma Macken of the Irish Supreme Court, and formerally Ireland's appointee on the European Court of Justice. (picture, left - the AmeriKat during her time at UCL living in the shelf next to one of her many IP text books)



Before Mrs Justice Macken began her speech, there was the matter of introductions - all three of them! Dame Hazel Genn DEB QC, Dean of UCL Faculty of Laws (and an inspiration to this Kat) first welcomed everybody, with Sir Robin Jacob (picture, right) seconding the welcome together with a brief statement of intent now that he finds himself truly "arrived at UCL". Sir Robin stated that he wanted the function of his role at IBIL to be "not an academic IP lawyer or a solely practical IP lawyer, but something in between" with the view that IBIL is to be the institute that the IP world looks to for their views on IP goings-on. Sir Robin stated that when he tried to convince Mrs Justice Macken to speak at this year's lecture, there was really very little convincing to be done; her answer was

"Yes, because of Hugh."

Lord Justice Mummery, the Chairman of the evening's lecture, in introducing Mrs. Justice Macken set out her list of accomplishments and highlights - from her educational background at Trinity College, to her work as a barrister and then as a judge first for the High Court and then as the first woman judge at the European Court of Justice. Before handing over the floor, Mummery LJ, like any good judge and chariman could not help but make some observations about the topic of trade marks:

"Why should such a simple idea of having a sign to indicate the source of goods be so unpredictable?...Why does a subject that is all about preventing confusion be so confusing?"

Mrs Justice Macken (picture, left) in brief response, after thanking Michael Fysh and Valentine Korah (thanks!), stated that the reason that trade mark law is of great interest, annoyance and confusion is probably due to more than just Europe and the Court of Justice for the European Union (CJEU) "sticking their nose in", it is also due to the fact that it probably "pays to have a great deal of problems with IP" from the perspective of all stakeholders = the trade mark proprietors who fight to protect and strengthen their rights, the trade mark users, and of course, us lawyers.

Mrs Justice Macken commenced her speech by acknowledging that "trade marks are the most wonderful things in the world apart from children, grandchildren..." and that it is a great area to work in because, she says, the philosophical reasonings underpinning trade mark law can be traced to logical (sometimes) answers in legislation. But trade marks, despite all of their merits, only function well if they are actually suitable for their job and that they are in fact used. She then regaled the audience of stories of yesteryear that when registering a trade mark in Ireland the most difficult element to prove was not the requirements for registrability but that the applicant had an intention to use the trade mark.

Following a brief recap of the Community Trade Mark (CTM) story, Mrs Justice Macken criticized the Trade Mark Directive and Regulation for lacking a unified rationale and for the lack of clarity on the issue of use/non-use. Even after seven years of these instruments being in force, she said, you would think that there are few legal questions left to resolve - not so. The criticism that was at the focus of Mrs Justice Macken's discussion was Article 15 of Council Regulation 40/94 which states:

"If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use."

The provision, she argued, does not impose a positive obligation of use on the proprietor despite Recital 9 of the Regulation stating that there really is not much point of having a trade mark without it being used. Recital 9 states:

"Whereas there is no justification for protecting Community trade marks or, as against them, any trade mark which has been registered before them, except where the trade marks are actually used"

Clark & Smyth (Please help the AmeriKat out on referencing if you can!) was cited in support of the argument that Article 15 had no teeth in specifying the sanctions provided for in the regulation for non-use (i.e. Article 9) especially as it does not present a "stumbling block to registration". Mrs Justice Macken also cited an article by Shane Smyth in Intellectual Property who argued that the problem of the use/non-use issue has meant that the trade mark register is crowded with inactive marks. This is as a result of two things: First, that during registration an application can apply a mark for two or three classes of goods for the price of one (bargain!); and second, that the Nice Classification system is so broad that an application can obtain a registration for a full class of goods even though they have no intention to use the mark for a subset of that class of goods. This overly broad and crude classification is especially problematic in priority applications. For example, if the priority mark is from the US the mark is first subject to tighter registration proceedings and more restricted goods/services specifications, but as soon that mark gets to European shores their registrable class suddenly enlarges.

OHIM apparently responds to these concerns by saying that there is no clutter on the register and that every year when some marks are up for renewal, a very large proportion (tens of thousands?) of marks are not renewed either for classes of goods/service or at all. Mrs Justice Macken argued that in an academic world that would be fine, but in the real world it is not attractive to be advising your client that they have to wait 10 years for that mark to come up for renewal before you can grab it. Sure, there are revocation and cancellation proceedings but they are expensive, lengthy and highly uncertain. It was suggested that it is better to advise a client to get their marketing people to find a better mark that is available, then waiting around or bringing proceedings. One would only be sensible to use revocation proceedings to oppose registration or if they are being sued for infringement and are able to use it as a defence.

Mrs Justice Macken then went on to tackle the issues and comments raised in the Max Planck Institute's recent report (see here) on the European trade mark system. When the Trade Mark Directive and Regulation were originally published a joint statement was issued that stated that adequate use of a trade mark would be use of a trade mark in a single member state. Such use would then be sufficient against a non-use attack. The Max Planck report examined whether this was a justifiable approach and whether there was any feeling from concerned parties that the 5 year period for use should be reduced to 2 years. According to the report, a vast majority of practitioners and users wanted to keep the 5 year period, but the lawyers did not - but no reasons were given for this view (Does anyone want to give any thoughts?)

Mrs Justice Macken then briefly turned to the issue currently being raised in the ONEL case (supported by the VP of the Hungarian Patent Office and the Danish IPO). She stated that the reasoning behind this support is that if a trader wants to trade in a small area, like Belgium, under Mark X but has no interest in trading in Slovenia why should a trader in Slovenia who has no interest in trading in Belgium not be able to trade under Mark X? The current Community Trade Mark system does not allow this because there is a very European rationale underpinning this position, i.e., trade mark use is to be considered use for the purposes of the internal market, not merely as use as per each Member State. The joint statement can be interpreted as saying that use in one state "could be" use through out the Community, i.e., it does not necessarily have to be, but such an interpretation although logical, Mrs Justice Macken stated, is not found in the text.

Mrs Justice Macken then closed by touching briefly on the issue of competition law and intellectual property - the necessary evil the AmeriKat feels she needs to start taking seriously in her own education. She stated that with the rise in consumer protection the impact of competition law on IP is more and more intrinsically felt. Mrs Justice Macken stated that in her opinion trade marks, patents and other IP rights, provided they are not abused should not be heavily restricted by competition law because IP rights are a integral part of a functioning market - only if they are abusive should competition law intervene. In closing, she also expressed concern that there is an automatic assumption that if a company is large, has a large IP portfolio they ipso facto are bound to abuse their IP rights; this is a falsity that Mrs. Justice Macken wishes to correct.

The floor was then open for questions. Kate Szell was the first up who echoed, from experience, Mrs Justice Macken's speech. Szell stated that the cluttering of the trade mark register was a significant problem when advising clients to register especially from the "use" perspective. It is rare that a search does not reveal anything of potential concern and as a practitioner one has to advise their client that if they proceed they could be faced with an interim injunction. Szell also stated that it can also be the case that after an internet search a prior mark can seem to be limited for a class of goods, but the risk is of course still there. There is this element of risk due to the "use" problem, but if an overly-cautious approach is taken then new registrations may never occur because clients would be too reluctant to adopt a mark. The general opinion was that this state of the law is massively undesirable.

Steven Jones of Baker & McKenzie clarified for the audience that the 5 year period is from date of registration, so during the application time as much as an additional 2 years can be added to this period. Therefore, during the 5+ year period the mark is "stuck like glue" and there is very little one can do to challenge it. Roland Mallinson of Taylor Wessing stated that under UK law one can attack a mark on the grounds of "bad faith" for non-use or non-intention to use the mark. Under CTM you cannot do this at pre-registration stage and Mallinson questioned whether this could be a way forward. Mrs. Justice Macken stated that she was unsure if this was practically feasible and stated that bad faith arguements can also be a huge expense (quite, says the AmeriKat, someone please define "bad faith" under the Trade Mark Act 1994 because she has yet to find anyone who can).

The most interesting part of the discussion was when a member of the audience (now identified as Richard Ashmead) questioned why there is a lack of transparency regarding the observations that governments are making in respect of the ONEL case and the recent German reference on embryos. We should be able to see what the UK government is saying about these issues and that the secrecy is absurd. Mrs Justice Macken had sympathy with this position and stated that this is something that should be reviewed. This Kat absolutely agrees. How can the UK Government, or any EU Government, expect the people of their countries, including trade mark users, proprietors and practitioners to work under their trade mark law if they do not even know what their Government thinks about such issues? Why should there be such secrecy at all? These are cases that are being referred to the Court of Justice which we will eventually be bound by in some respect. Thoughts?

The Annual Sir Hugh Laddie Lecture was closed by Lord Justice Mummery and the participants ventured across Gower Street for much-deserved drinks and canapés and an evening of further topical trade mark discussions. Mrs Justice Macken's paper will be made available through the IBIL website in due course and this Kat will be greatly interested to get her paws on it for some light summer reading.

The AmeriKat would like to thank the wonderful Lisa Penfold of the UCL Law faculty for getting this Kat into the session after she neglected to register in time.

L'Oreal v Bellure at the ECJ

The morning the ECJ delivered its judgment in L'Oreal v Bellure, on whether 'knock off' imitation perfumes which clearly weren't the trade marked goods, but were marketed in a way that 'winked at' L'Oreal's famous perfume brands, infringed L'Oreal's trade marks and were protected as permissible comparative advertising.

Is harm needed for unfair advantage?

The court answered the 5th question first. This boiled down to whether there could be unfair advantage under Art.5(2) without (a) confusion or (b) detriment to the earlier mark.

Since only one of the types of harm mentioned in Art.5(2) is needed for there to be infringement, there could be no need for detriment to repute or distinctiveness for unfair advantage to be made out. [IPKat comment: quite right. The IPKat can see why the UK Courts might have wanted to introduce a harm to trade mark function requirement in here, but there was no basis for it on the face of the Directive].

How can unfair advantage be proved?

The ECJ's words bear repeating in full, since the IPKat reckons they're going to be the subject of much close textual analysis by legions of lawyers:

In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation, paragraphs 67 to 69).

[IPKat comment: 2 huge problems with this - (1) all these factors go towards showing that there's a link between the marks, but they don't really show that the link has 'rubbed off' on the later mark to give its owner an unfair advantage; (2) these are the factors that were used in relation to detriment to distinctive character, but the court has just said that these are two different types of harm; (3) the ECJ in Intel v CPM said such factors are insufficient for showing unfair advantage. ]

The ECJ also said: ' In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark.'

[IPKat comment: aaargghhh - you just said that the various types of harm are different. Anyway, if there is likely dilution or tarnishment, why do you need unfair advantage on top? Also, note the use of the word 'likely'.]

On the facts

The defendants had created a link, they had done so for commercial advantage and had done so with the intention of creating a link. Thus, there was unfair advantage.

[Let the IPKat be the first to welcome the law of unfair competition to the whole of the EU, even if you do need a registered trade mark to qualify for it (but how hard is that now - you could just apply your distinctive word/device mark to your relatively straightforward product shape, register the whole bangshoot as a CTM a la Whirlpool v Kenwood and hey presto, you qualify for protection.]

The harm in a nutshell

The ECJ sums up:

'The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image.'

The comparison lists

Here the question was whether the use of the names of L'Oreal's perfumes in price comparison lists could amount to infringement under Art.5(1)(a), seeing as the ability of L'Oreal's marks to idenify the origin of L'Oreal's goods (the essential function) wasn't harmed.

The ECJ noted that price comparison lists were a form of comparative advertising, and it had already held in O2 that the use of a mark in comparative advertising could infringement, but also had Art.3a(1) of the Comparative Advertising Directive to save it.

The court revisited its line of case law on the scope of Art.5(1)(a), noting that it encompassed not only harm to the essential function, but also to the other functions of a trade mark which are 'in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising'. Art.5(1)(a) is wider than Art.5(1)(b) [thus confusion isn't required] and while descriptive use, e.g. Holterhoff, isn't covered, price comparisons aren't purely descriptive as they are for the purposes of advertising. The court noted that Art.5(2) might also apply in price comparison cases.

[IPKat comment: this sounds very nice in theory, but the court doesn't give us a clear understanding of what sorts of activities can harm the other functions of a mark. It seems though that the Court of Appeal in Arsenal got it right when it said that the effect of Holterhoff was to exclude descriptive use only.]

The Compartive Advertising Directive

In relation to Art.3a(1)(h) (comparative advertising must not present goods or services as imitations or replicas of goods or services bearing a protected trade mark or trade name), this didn't require the goods to be counterfeit, nor did it require the advert to be misleading for it to be prohibited. The imitation could be implicit or explicit. Moreover, the imitation didn't have to be of the product as a whole, and could be of one aspect, e.g. its smell. In this case ' It is not in dispute that the object and effect of the comparison lists at issue in the main proceedings are to draw the attention of the relevant public to the original fragrance of which the perfumes marketed by Malaika and Starion are purportedly an imitation. Those lists thus attest to the fact that those perfumes are imitations of the fragrances marketed under certain marks belonging to L’Oréal and Others, and they consequently present the goods marketed by the advertiser as being imitations of goods bearing a protected trade mark within the meaning of Article 3a(1)(h) of Directive 84/450.'

In relation to Art.3a(1)(g) (omparative advertising must not take unfair advantage of the reputation of a trade mark), unfair advantage appeared both here and in Art.5(2), and had to be interpreted in the same way in both. in this case, in the words of the court: '... since, under Directive 84/450, comparative advertising which presents the advertiser’s products as an imitation of a product bearing a trade mark is inconsistent with fair competition and thus unlawful, any advantage gained by the advertiser through such advertising will have been achieved as the result of unfair competition and must, accordingly, be regarded as taking unfair advantage of the reputation of that mark.'

[IPKat comment: some circular reasoning going on here. Because the advertising was contrary to Art.3a(1)(h), it was unfair under Art.3a(1)(g). At least though this is an attempt to articulate the unfairness, rather than just stopping at the fact that there has been an advantage. Generally though, this makes it very hard for people to tell consumers that their products are like trade marked products in some respect.]

IPKat concluding comment

If Intel was the low point of Art.5(2) protection for trade mark owners then this has got to be the high point, particularly when taken in conjunction with the approach to comparative advertising. Although the ECJ didn't explicitly adopt the Advocate General's position that any advantage is unfair, in bascially stopping once the link has been established if there is a commercial motivation for making that link, it may as well have. It looks like we're stuck with something which looks rather like a tort of unfair competition. The escape route is that only marks with a reputation will qualify. This makes it crucial for us to have a clear understanding of the standard for establishing when marks have a reputation - something which so far has been rather imprecise.

UDV v Brandtraders -- the case that nearly got away

The IPKat has just received an innocent question from his friend Kristof Neefs (Altius): did the normally-vigilant Kat miss Case C-62/08 UDV North America v Brandtraders NV, an Order of the Court of Justice of the European Communities of 19 February. "I assume much to your dismay", says Kristof, "that you missed it because it's not available in English". Suffering an unaccustomed attack of honesty, the IPKat has to say that the reason he missed it was because he, er, forgot that it was coming up. If Kats are capable of blushing, this Kat is.

The judgment was prompted by a request for a preliminary reference from the Hof van Cassatie van België, which sought guidance on the following questions:

"(1) For there to be use of the sign within the meaning of Article 9(1)(a) and (2)(d) of Council Regulation 40/94 of 20 December 1993 on the Community trade mark, is it necessary that a third party, within the meaning of Article 9(1)(a) of the Regulation:
(a) uses the sign on his own behalf?
(b) uses the sign as an interested party in relation to trade in goods in which he is himself a contractual party?
(2) Can a trade intermediary who acts in his own name, but not on his own behalf, be regarded as a third party who uses the sign within the meaning of Article 9(1)(a) and (2)(d)?"

Kristof informs the IPKat that the court, in a free translation into English, said as follows:

"The concept of use in the sense of Article 9(1)(a), and 9(2)(d) ... applies to a situation, such as that of the main dispute at issue, where an intermediary, acting in his own name but on the account of the seller and therefore having no interest in the sale of goods to which he is a contracting party, uses a sign identical to a Community trade mark on business papers for the same goods or services as those covered by the mark".

The intermediary in question, Kristof explains, apparently exploited a website where traders could anonymously advertise and negotiate the sale of goods. Once a sale had been agreed upon, the website owner, like a commission agent, would draw up a sales agreement with the buyer for a commission fee.

No rocket science here, says the IPKat, which probably explains why it was felt acceptable to dispense with an Advocate General's Opinion and an English translation.

Do cats feel shame?  An appellate judge rules

ECJ Antartica case - trade mark use and dilution

The IPKat draws his readers' attention to the short and sweet judgment of the ECJ in Antartica Srl v OHIM (Nasdaq intervening) from last Thursday.

Antartica applied to register Nasdaq as a CTM for various types of sporting goods and clothing. This was successfully opposed before the OHIM Second Board of Appeal and CFI by Nasdaq under Art.8(5) of Regulation 40/94, based on its Nasdaq registration for financial and stock market quotation services.

Antartica appealed but the ECJ rejected its main arguments:

• Proof of use - Antartica argued that Nasdaq hadn't used its mark as its stock market indicies were available free of charge in the press and on TV. This was rejected by the ECJ, which noted 'even if part of the services for which the earlier mark is registered are offered by The Nasdaq Stock Market free of charge, that does not of itself mean that that commercial company will not seek, by such use of its trade mark, to create or maintain an outlet for those services in the Community, as against the services of other undertakings.'
• Unfair advantage - The ECJ repeated what it said in Intel about criteria for establishing a 'link'. The court noted that the CFI had correctly considered potential consumers of Antartica's (the applicant's) goods as the relevant public for establishing whether an unfair advantage had been taken.
  
• Extent of reputation required under Art.8(5) - Antartica had argued that the degree of reputation required under Art.8(5) is knowledge of the mark among the general public (as opposed to among the consumers of either party's goods/services). The ECJ did not reject this out of hand. Instead it noted that in this case it wasn't necessary to consider the point in detail because 'the reputation of the earlier mark reaches further than the professional public specialising in financial information'.
  

The IPKat reckons that, for the most part, this case doesn't say too much which is new, but it does restate some important principles. In particular, the use point must be right, otherwise all the companies which offer services which are free at the point of use, but which are funded by advertising (e.g. many email services) wouldn't be using their trade marks. However, the court's treatment of whether reputation needs to be amongst the general public (as is now the case in the US) is unfortunate. It would have been very easy for the ECJ to have dismissing this summarily - it's clear from past case law (e.g. General Motors v Yplon) that pan-market fame isn't required. By confining its comments to the facts here, the court has introduced unnecessary uncertainty (unless, of course, the court is thinking of introducing a pan-market fame standard by the back door).

Even more on O2 - this time, trade mark use

The IPKat thinks it's worth giving some attention to the potential trade mark use issue in O2. It could have been argued that there was no infringement because H3G wasn't using the mark to identify its own services, but rather to identify O2's services, for the purposes of making a comparison with them.

The ECJ says at para.36:

"the use by an advertiser, in a comparative advertisement, of a sign identical with, or similar to, the mark of a competitor for the purposes of identifying the goods and services offered by the latter can be regarded as use for the advertiser’s own goods and services for the purposes of Article 5(1) and (2) of Directive 89/104."

So the court seems to be implicitly suggesting, consistent with Adam Opel, that the use must be use by the defendant for his OWN goods. However, the court seems to think using someone else's mark in a comparative advert to make a comparison with the claimant's goods is use for the defendant's goods, rather than for the claimant's.

The IPKat is not sure this makes sense, because if you use someone else's mark in a comparative ad, you're using the mark to identify that someone else's goods (otherwise the comparison won't work). Perhaps the key questions is what is meant by use 'in relation' to goods under Art5(1)(a) or, under Art.5(1)(b), when the defendant's goods are 'covered' by the mark.

As a follow-up to that point, although Art.5(1)(b) uses the term 'covered by', s.10(2) of the UK Trade Marks Act 1994 uses the words 'in relation to'. Did the drafter of the TMA know something that we don't?

The plot thickens if you take a look at Art.12 (grounds for revocation). There the Directive talks about use ‘in connection’ with goods. Again, the TMA talks about use ‘in relation’ to goods.

Adidas v H&M

Thanks to the many people who have sent in translations. You can find one example in the comments section on this post.

A couple of weeks ago, the IPKat warned readers that Adidas v H&M was on the way. This is a reference concerning the role of the need to keep certain marks free for other traders once a mark has acquired distinctiveness, and also on the role of consumers' perceptions that the mark is an embellishment.

The decision of AG Ruiz-Colomer is now out, but sadly only in languages that the IPKat isn't clever enough to speak. Still, for the benefit of French-speaking readers, he concludes as follows:

Au vu des considérations qui précèdent, je propose à la Cour de répondre au Hoge Raad de la façon suivante:

«En appréciant l’étendue de la protection d’une marque qui ne consiste qu’en un signe correspondant à une des indications visées à l’article 3, paragraphe 1, sous c), de la première directive 89/104/CEE, du Conseil, du 21 décembre 1988, rapprochant les législations des États membres sur les marques, mais qui a acquis un caractère distinctif par l’usage et qui a été enregistrée en tant que telle, il convient de tenir compte de l’intérêt général à ne pas restreindre indûment la disponibilité de certains signes pour les autres opérateurs offrant des produits ou services semblables.

En revanche, lorsque le signe évoqué était initialement dépourvu de caractère distinctif, mais qu’il l’a acquis postérieurement par l’usage, les droits du titulaire de la marque ne sauraient être examinés à la lumière de l’impératif de disponibilité.»

Can anyone help the more linguistically challenged?

STOP PRESS!!

Olivier Van Droogenbroek (Crowell & Moring, Brussels) has just emailed the IPKat to say:

"I read the Dutch version of the AG's opinion.

„Bij de bepaling van de beschermingsomvang van een merk dat wordt gevormd door een aanduiding die beantwoordt aan de omschrijving in artikel 3, lid 1, sub c, van de Eerste richtlijn (89/104/EEG) van de Raad van 21 december 1988 betreffende de aanpassing van het merkenrecht der lidstaten, maar door het gebruik onderscheidend vermogen heeft verkregen en is ingeschreven, moet rekening worden gehouden met het algemene belang, dat de beschikbaarheid van bepaalde tekens niet ongerechtvaardigd wordt beperkt voor de andere marktdeelnemers die soortgelijke waren of diensten aanbieden.

Wanneer ditzelfde teken daarentegen geen intrinsiek onderscheidend vermogen bezit, maar later onderscheidend vermogen heeft verkregen als gevolg van het gebruik dat ervan is gemaakt, kunnen de rechten van de merkhouder niet aan de vrijhoudingsbehoefte worden getoetst.”

This means

"When determining the scope of protection of a trade mark which consists of an indication corresponding to the description given by article 3 § 1 sub c of the First Directive 89/104/EEC of the Council of 21 December 1988 to approximate the laws of the Member States relating to trade marks, but which through use has obtained distinctiveness and is registered, one must take account of the general interest that the availability of certain signs is not unduly limited to other market players offering similar goods or services.

When on the contrary said sign has no intrinsic distinctiveness, but obtained distinctiveness later on as a result of its use, the rights of the trade mark holder cannot be tested to the freihaltebedurfnis".

Olivier adds: "Don't know if it makes sense".

Coming up in the ECJ

On 16 January the Advocate General will give his opinion on a question referred by the Hoge Raad der Nederlanden in Adidas v H & M. The question is rather gabbled (perhaps a poor translation, since it refers to marks which have become distinctive through customary usage). The main thrust seems to be whether there is a need to take the interests of other traders in keeping certain marks free into account when deciding if a mark has acquired sufficient distinctiveness to overcome a descriptiveness objection. This is something that has puzzled the IPKat for a while. If a trade mark needs to be kept free for others, why should this need disappear if the mark has acquired distinctivness?

Our old friend, the trade mark use issue, makes a sneaky reappearance, with the Dutch court asking

‘If the answer to Question 1 is in the affirmative: does it make any difference whether the signs which are referred to therein and which are to be held available are seen by the relevant public as being signs used to distinguish goods or merely to embellish them?’

For good measure, the court has also asked whether it makes a difference whether the mark is also devoid of distinctive character, or contains a 'designation' [whatever that means] protected by Art.3(1)(c).

Also, who says that ideas aren’t protected by IP rights? On 16 January, the CFI will be ruling on the validity of the IDEA Community trade mark, currently held by Ikea.

Use of term 'buried in computer' not an infringement

eThe IPKat's friend Daniel Alexander QC, sitting as a deputy judge of the Chancery Division (England and Wales), gave his decision in RX Works Ltd v Hunter (trading as Connect Computers) [2007] EWHC 3061 (Ch) shortly before Christmas, on 20 December 2007. You can read the full decision here on BAILII.

Hunter owned the trade mark 'vet.local', which was registered in classes 9, 16, 41 and 42 for computer software, hardware and firmware. RX had created a computer system in which the term 'vet.local' appeared on computer screens in various ways. According to RX, the term 'vet.local' was buried within the workings of the system to such an extent that vet users were likely to only stumble upon it by chance, and knowledgeable system administrators were likely to know that the term did not relate to any goods or services. RX also submitted that 'vet.local' as used by it was not a sign that was inherently likely to denote trade origin. Hunter disagreed. In his view, users encountering the use of the term would associate it with his business or computer systems and services, or that they could see it as denoting quality.

In these proceedings RX sued Hunter for making unjustified threats of trade mark infringement, seeking summary judgment; Hunter counterclaimed for infringement. The specific issue to be determined in this application was whether the uses of the term 'vet.local' by RX infringed the trade mark. According to Hunter, since the use of 'vet'local' by RX was either an actual infringing use or at least an arguable one, there was a need for further factual investigation at a full trial.

Left: evidence of alleged infringement included this image of a computer screen, on which the word 'vet.local' appears in the dialogue box

Daniel Alexander QC allowed RX's application for summary judgment. In his view,

* where a sign was intended to act as an internal name for an aspect of a complex computer system, there being a perfectly credible explanation as to what it had been intended to mean, there was no serious basis for concluding that it would be taken to mean something different to that intended-- there being no credible reason why likely users should regard it as denoting anything else;

* it could not be seriously argued that any of the disputed uses of 'vet.local' was ever intended to bring to mind, or refer to, the trade origin of Hunter's software or his domain name. Noo was there any real prospect that any further evidence would emerge that would change that position;

* since RX's uses of the term 'vet.local' in its computer system did not infringe Hunter's trade mark, to the extent that threats had been made of proceedings for infringement of that mark, they were unjustified.

The IPKat thinks this must be right and is surprised that this case got as far as it did: it was really a no-hoper. Merpel says, considering that this was just a small-time application for summary judgment, the judge did a pretty good job in summarising the substantive law issues really well.

RX Works Veterinary Practice Management Systems here
Paul Hunter's Connect Computers here