ONEL edges closer to resolution as Hague Court pops the questions

Does use of a Community trade mark in just one of the 27 Member States count as "genuine use" of that trade mark and, if so, in what circumstances will it do so? This question is now a little bit nearer resolution than it was before.  Thank you, Camille Janssen (Benelux Office for Intellectual Property) for sending tytoc collie this handy, if admittedly unofficial, translation from the original Dutch of the final form of the wording of the questions referred last week by the Hof Den Haag to the Court of Justice of the European Union (ECJ) for a preliminary ruling in Case number: 200.057.983/01 (ONEL/OMEL, on which please refer to earlier IPKat posts here, here, here and here, among others):

"Questions referred for a preliminary ruling

18. ... the Court feels that it is necessary to refer the following questions to the Court of Justice of the European Union for a preliminary ruling:

1. Should Article 15(1) of Regulation (EC) no. 207/2009 on the Community Trade Mark be interpreted in such a manner that it is sufficient, in order to qualify as genuine use of a Community trade mark, for that trade mark to be used within the frontiers of a single Member State, provided that this use, if it concerned a national trade mark, would qualify as genuine use in that Member State (cf. Joint Statement no. 10 on Article 15 of Council Regulation (EC) no. 40/94 dated 20 December 1993 and the OHIM’s Opposition Guidelines)?

2. If Question 1 is to be answered in the negative, does such use of a Community trade mark within a single Member State as described above not in any instance qualify as genuine use in the Community as defined in Article 15(1) of Regulation (EC) no. 207/2009?

3. If use of a Community trade mark within a single Member State does not in any instance qualify as genuine use in the Community, to what requirements – in addition to other factors – should the territorial scope of the use of a Community trade mark be subject for purposes of determining genuine use in the Community?

4. Alternatively, should – in deviation from the assumption used above – Article 15 of the Council Regulation on the Community Trade Mark be interpreted in such a manner that determination of genuine use in the Community is made wholly independent from the frontiers of the Member States’ respective territories (and for example market shares (product/geographic markets) be taken as a point of reference)?

Decision

The Court:
- requests the Court of Justice of the European Union to rule on the questions set out in par. 18 on the interpretation of the Regulation and Directive specified above;
- defers all further judgment and suspends these proceedings until the Court of Justice
of the European Union has ruled on those questions.

This judgment was handed down by J.C. Fasseur-van Santen, A.D. Kiers-Becking and M.Y.
Bonneur, and was pronounced in open session on 1 February 2011, in the presence of the
court registrar".

Says Merpel, this is one ruling from the ECJ which will be of genuine use to trade mark owners and their professional representatives ...

Elio, Edwin in tug-of-love over FIORUCCI name

No joke -- this is a Fiorucci swimsuit

Litigation over personal names is obviously a popular activity in Europe these days. No sooner does the dust settle over the ruling of the European Court of Justice in Sayn-Wittgenstein (see earlier IPKat items here, here and here) then out pops the strange and wonderful case of Case C-263/09 P Edwin Co Ltd (for that is its name).  The background to this case is that Italian fashion designer Elio Fiorucci, who achieved a degree of renown in the 1970s in Italy, ran into cash problems in the 1980s. An administrator was appointed over his company, Fiorucci SpA. In December 1990 this company sold to Edwin (a Japanese multinational) the entirety of the company’s “creative assets”. Article 1 of the contract provided as follows:

“The company Fiorucci assigns, sells and transfers to the company Edwin … which, for its part, acquires:
– (i) trade marks wherever registered, or trade marks for which registration has been sought in any part of the world whatsoever, and all patents, ornamental and utility models and all other distinctive signs belonging to the company Fiorucci as listed in the annex to this contract ...
– (iv) all the rights exclusively to use the designation “FIORUCCI” and exclusively to manufacture and sell the clothes and other goods bearing the name “FIORUCCI”.

13 years ago, in December 1997, Edwin applied to register the word mark ELIO FIORUCCI as a Community trade mark; registration was granted in April 1999 and all looked good for the Japanese company until February 2003, when Elio Fiorucci sought revocation and/or a declaration of invalidity.  In December 2004 he got his way: the Cancellation Division declared the mark invalid.  Said the Cancellation Division, Elio Fiorucci had an earlier right under what is now Article 8(3) of the Italian Industrial Property Code) because the name Elio Fiorucci was shown to be well known and there was no evidence that Elio had given his consent to registration of that name as a Community trade mark [that contract was made with Edwin by Fiorucci's company -- but presumably no side contract was entered into, to neutralise Elio's claim]. Edwin then appealed to the Board of Appeal.

In April 2006 the Japanese company must have felt that the sun was rising for it.  The First Board of Appeal allowed its appeal and annulled the decision of the Cancellation Division. In the Board's view, the raison d’être of Article 8(3) was to prevent third parties exploiting the name of a famous person [this appears to mean "famous in a non-commercial context"] for commercial purposes. While the Board conceded that there was not, to its knowledge, any case-law on that point, it added that “the most authoritative Italian academic writings” seemed to confirm that the raison d’être of Article 8(3) ceases where the commercial potential of a name is already fully exploited -- as Elio's had been. In this case, said the Board, the renown of the name Elio Fiorucci with the Italian public could certainly not be regarded as arising from its first use in the non-commercial sector. In any event, the public was aware that patronymics are commonly used as commercial marks, but that did not imply that those patronymics correspond to an actual person. Further, by the sale of 1990, Elio Fiorucci had waived all rights of use pertaining both to the mark FIORUCCI and to the mark ELIO FIORUCCI. Nor, since the mark ELIO FIORUCCI represented only the name of a person, but did not give any indication of a specific quality, so there could not be any question of the public being misled.

Elio's cute ploy for charming
the General Court pays off

Now it was Elio Fiorucci's turn to appeal, which he did.  Before the General Court he sought both the annulment of the Board's decision and a declaration revoking or declaring invalid the contested Community trade mark. The General Court rejected the plea for revocation. In its view, the particular requirements necessary for a designer name to be regarded as liable to mislead were not satisfied. In addition, no evidence of misleading use of the mark was demonstrated.  However, regarding the interpretation of Article 8(3), the Court considered that the Board’s interpretation was not confirmed by its wording, which refers to the names of well-known persons without making a distinction according to the sector in which that renown was acquired. Even on the assumption that the name of a well-known person has already been registered or used as a de facto trade mark, the protection given by Article 8(3) is not in any way superfluous or irrelevant: it cold not be not ruled out that the name of a well known person, registered or used as a mark for certain goods or services, can be the subject of a new registration for different goods or services which are not in any way similar to those covered by the earlier registration [This struck the Kat as a good point and certainly as something that should be missed by anyone who is selling the rights to his name -- those unforeseen new registrations can be really embarrassing]. Further, Article 8(3) did not lay down any condition other than that relating to the well known character of the personal name concerned. Thirdly, the extracts from some of the academic writings cited by the Board also did not allow the conclusion to be drawn that its interpretation of Article 8(3) was correct. Accordingly the Board, as a result of its error, incorrectly eliminated the application of that provision to the case of Elio Fiorucci’s name, even though it was not disputed that that was the name of a well-known person.

In paragraph 1 of its judgment he Court therefore annulled the Board's decision in so far as it contained an error of law in the interpretation of Article 8(3). The Court did not go so far as to cancel the registration of the ELIO FIORUCCI Community trade mark, though. On Edwin's plea that the mark ELIO FIORUCCI was included in the assignment of all the marks and all the distinctive signs, the Court held simply that such argument had not been examined by the Board of Appeal and accordingly refused to grant the application to alter the contested decision stating that that would imply, in substance, the exercise of administrative and investigatory functions specific to OHIM and would upset the institutional balance.

Edwin then challenged the judgment under appeal and sought, among other alternative pleas, to have set aside paragraph 1 of the operative part or at least to have that argument referred to OHIM for examination. OHIM argued that the Court of Justice should set aside the judgment under appeal and order Elio Fiorucci to pay the costs incurred by it. Elio Fiorucci argued that the Court of Justice should uphold various parts of the judgment under appeal, amend other parts in his favour and order that the costs of his appeal be reimbursed.

We don't yet know what the Court of Justice of the European Union will rule, but we do know what Advocate General Kokott thinks since her Opinion was published on the Curia website last Thursday: the Court of Justice should be advised that, since none of Edwin’s grounds of appeal can be upheld, the appeal must be dismissed in its entirety, though Elio Fiorucci’s application must be dismissed as inadmissible.  In her view:

* Article 52(2) of Regulation 40/94 provides that “A Community trade mark shall … be declared invalid … where the use of such trade mark may be prohibited pursuant to another earlier right, and in particular: (a) a right to a name; ... under the Community legislation or national law governing the protection”. Accordingly, Article 52(2) of Regulation 40/94 applies to the present case if the right under Article 8 of the Industrial Property Code on which Elio Fiorucci relies in fact exists.  While the mere reference to national law in Regulation 40/94 does not transform national law into EU law, an incorrect assessment of national law, where this is relevant, may still result in a finding incorrectly establishing or denying the existence of a criterion, such as a right to a name, defeating the use of a mark.

* The General Court engaged in a detailed analysis of the wording of Article 8(3) of the Industrial Property Code and assessed in a logically consistent manner the Italian legal literature which had been submitted to the Board of Appeal and to that court itself. No grounds exist for a complaint that the clear sense of the parties’ submissions or evidence was distorted.

* As for the position under national law, the General Court was not required to engage in further investigations of its own. Since the subject matter of the proceedings before the General Court was defined by the subject-matter of the appeal to the Board of Appeal, the General Court was required to confine itself to the material on the dispute submitted to the Board of Appeal in relation also to the national legal position.

* The General Court had to assess whether the assessment of national law made in that regard by the Board of Appeal was well-founded or, if not, whether there had been an infringement of a rule of law relating to the application of Regulation 40/94. The fact that Edwin now contends that at first instance reference was made to various relevant judgments of Italian courts which the General Court did not assess is irrelevant. Although the General Court has the authority to review the legality of decisions of the Board of Appeal, it is precluded from considering evidence first submitted in the annex to the application.

tytoc collie is offering no guesses as to what the Court will do.  He has some sympathy for Edwin, which clearly had the expectation that it was buying all rights past, present and future in Elio Fiorucci's name -- though Article 1 of the contract looks definitely dodgy in hindsight -- but has been rewarded with a guided tour of Europe's top trade mark litigation venues instead.  Merpel notes the respect and reverence with which the writings of Italian academic are treated as sources of law, and hopes that one day the opinions of their English counterparts will be accorded similar status -- at least when it comes to interpreting Italian law ...

More on the Fiorucci brand here

More on the "Lindt bunny (reindeer, ribbon and Storck mouse) shape" cases

While we are still snacking on our Christmas confectionery -- or a determinedly trying to stay away from everything that is calorific, this Kat has finally found a quiet moment to translate and summarize the General Court’s recent “chocolate bunnies” decision(s) on which tytoc collie reported here on 17 December 2010.

The General Court of the European Union held on 17 December 2010 that the shapes of a chocolate bunny and chocolate reindeer wearing a red ribbon cannot be registered as Community trade marks for class 30 chocolate goods due to a lack of distinctiveness. The same applies for the shape of a chocolate bell with a red ribbon, a chocolate bunny and a chocolate mouse (cases: Chocoladefabriken Lindt & Sprüngli AG vs. OHIM (T-336/08, T-337/08, T-346/08 and T-395/08) and August Storck KG vs. OHIM, (T-13/09)).

Between early 2004 to the end of 2005 Chocoladefabriken Lindt & Sprüngli AG applied to register four three-dimensional shape marks as Community trade marks which included the shape of a chocolate bunny with red ribbon featuring the colours red, gold and brown (T-336/08), the shape of a reindeer made of chocolate with a red ribbon featuring the colours red, gold and brown (T-337/08), the shape of a gold bell with a red ribbon (T-346/08) and the shape of a chocolate bunny in the colour gold (T-395/08).

In June 2005, August Storck AG applied to register a simple rectangular shape made of chocolate which included on its upper side a relief of a mouse which featured the colour brown as a three dimensional Community trade mark (T-13/09). OHIM refused registration of all four marks citing a lack of distinctiveness. Lindt & Sprüngli and Storck took the matter to the General Court which in turn upheld OHIM’s decisions not to register the marks.
The General Court stressed that distinctiveness of a trade mark meant that the mark applied for, should be able to identify goods as originating from one trader and so distinguish them from goods of another trader. The court also emphasized that the criteria used for determining the distinctiveness of three-dimensional marks, which can consist of the goods themselves, were no different to the criteria used to assess the distinctiveness of other categories of trade marks.

However, in the current cases the mark applied for could not be seen as suitable to identify the trade origin of the goods covered. This particularly true due to the fact that consumers could not conclude the trade origin of the marks from their different individual characteristics, namely the shape, the gold coloured packaging or the red ribbon of the Lindt & Sprüngli marks and the shape and colour of the Storck marks, as the case may be.

As regards to the shape of the Lindt & Sprüngli marks, the court took the view that bunny, reindeer and bell were typical ‘seasonal’ shapes used for chocolate confectionery, in particular used for Easter and Christmas. In particular, the shape of the sitting bunny itself was not unusual for a rabbit and the shape of the rabbit’s ears, eyes or whiskers did not change the fact that it was “always a bunny”. Concerning the colour gold, the court held that other traders also used gold foil to wrap their chocolate confectionery. Regarding the question of acquired distinctiveness of the bunnies, this could only be shown for Germany which, in view of the court, was not sufficient to fulfill the criteria under Article 7(3) CTMR. The judges further found that there was also no reason to presume that Austrian and German consumers would perceive shapes differently compared to consumers from the rest of the EU. The court also rejected Lindt & Sprüngli’s argument that chocolate bunnies had not been famous outside of Germany before 2004 and so had been distinctive per se in other EU countries. The judges held that it was well-known that Easter bunnies were also known outside of German speaking countries.

In relation to the shape of the reindeer, the court conceded that it was not a naturalistic depiction of a living reindeer but stressed that chocolate animals were not unusual products and that they rarely were a naturalistic reproduction of the respective real animal but were simplified versions of the actual animal. Consequently, just like the bunny, the reindeer was not distinctive enough for registration.

The court did, however, agree with Lindt & Sprüngli’s criticism of the OHIM Board of Appeal’s finding that chocolate goods needed to be packaged to be sold and thus need to be wrapped in foil to be commercialised. Here, the judges found that for reasons of hygiene chocolate goods were often sold in packaging when offered in supermarkets and other outlets but they did not agree with the Board of Appeal that these goods could only be sold when packaged - with the packaging giving the product its shape. The General Court drew a distinction between chocolate goods on the one hand and beverages on the other hand, which always required some kind of packaging to be sold. Chocolate goods though were also often sold without packaging, for example in sweet shops or in cinemas, where they were only packaged by the seller upon the point of sale.

Concerning the use of the red ribbon, the court found that it was customary to decorate chocolate animals or their packaging with red ribbons or bells. Moreover, the colour red and the use of bells also had a religious connotation in the context of Easter. As a simple decorative element, a red ribbon with a bell hence completely lacked distinctiveness.

In view of the court Storck’s mark consisted of a combination of obvious and typical characteristics of the goods covered and did not have a strong individual personality. The court found that the mark was a variant of the typical basic shape used in the sweets sector and did not depart sufficiently from the norm or customary shape in the sector to distinguish Storck’s goods from those of other sweets manufacturers. While the court conceded that some 'human-like' representations of animals can be distinctive enough to qualify for trade mark registration, Storck’s rather basic stylized mouse on top of a basic rectangular block did not depart sufficiently from the usual design of such products.

Consequently, the General Court dismissed Lindt & Sprüngli and Storck’s appeals and confirmed OHIM’s decisions to refuse registration of the four shape mark applications.

Merpel thinks that somehow the idea a chocolate Kat Community trade mark still has a definitely distinctive feel to it ....

Lindt bunnie shapes "not distinctive"

The spokesman for Lindt was
not available for comment

Friday is said by some to be a good day for leaving Luxembourg, in any direction, in search of fun. But today is different: the tiny Duchy is at the centre of a good deal of concentrated rage from the chocolate animal manufacturing industries.. In Cases T-336/08, T-337/08, T-346/08, T-395/08 Chocoladefabriken Lindt & Spruengli v OHIM and T-13/09, Storck v OHIM the General Court of the European Union ruled that chocolate bunnies, mice and reindeer are not protected species, at least when the protection sought is that of a Community trade mark.

According to the Court, rabbits, reindeer, mice and small bells are typical shapes in which chocolate and chocolate goods are presented  --particularly at Easter and Christmas.  As such the shapes are devoid of any distinctive character.

Swiss-based Lindt has so far failed to get EU-wide trade mark protection for the shapes of a plain chocolate bunny and for chocolate bunnies and reindeer wrapped in gold foil with red ribbon around their necks. It has also failed to get protection for the ribbon and attached bell. Berlin-based Storck has unsuccessfully sought Community trade mark bid for the shape of a chocolate mouse.

The Kat would have liked to bring some details of the reasoning, and perhaps a quote or two, but the rulings appear to be available only in French and German.  You can access them via the Curia search facility here.

Source: Stephanie Bodoni, Bloomberg.

Passing off and the CTM - three questions from Japan

tytoc collie has been contacted by his learned friend Japanese attorney Masahiro Tomabechi with three detailed questions concerning "passing off" and Community trade marks.

Masahiro has spent the last few weeks on secondment in London to 'carefully and sincerely' study European and UK trade mark laws and he has clearly made good use of his time as his three questions below serve to prove. This Kat, herself originally coming from a non-Common Law jurisdiction, has given Masahiro answers to his questions but thought it would be so much more fun to see what our readers think the answers should be -- somewhat reminiscent of the old German saying that 'if you ask two lawyers the same question, you will at least get three different answers' ('yes', 'no', 'perhaps, but I have never seen it...'). Merpel, however, wonders whether the German Kat might perhaps not trust her own answers....

Please post your responses in the comment field below.

[Question 1]
In a case where a French company (hereinafter called “the proprietor”) owns a Community Trade Mark right, if the Community Trade Mark is threatened by infringement activities of a British company in the UK and then the proprietor sues before a CTM court in the UK, is it possible to claim the “Passing-Off” right together with the CTM’s right in order to prohibit the British company from using its mark in the UK?

[Question 2]
If the Community Trade Mark is threatened by the infringement activities of the British company not only in the UK but also in France and then the proprietor sues before the CTM court in the UK, is it possible to claim the “Passing-Off” right together with the CTM’s right in order to prohibit the British company from using its mark in France and the UK? That is, when the “Passing-Off” right is claimed together with the CTM right, is the “Passing-Off” right applicable in France as well as the UK, although France is not a common-law country?

[Question 3]
If the Community Trade Mark is threatened by infringement activities of a German company in the UK and then the proprietor sues before a CTM court in Germany, is it possible to claim the “passing-off” right together with the CTM’s right in order to prohibit the German company from using its mark in the UK? That is, does the German court have ability to examine the existence of the “Passing Off” right, although the “Passing Off” right is a right derived from the UK Common Law?