Trade Marks in Europe

Introduction to Trade Marks

In C-252/07 Intel v CPM United Kingdom, Advocate-General Sharpston refers to the second function of a trade mark as a "communication tool, carrying a broader marketing message" (para.12).

Art.3(1)(b)- shape marks

para. 3-075 Following the approach in Henkel, in T-460/05 Bang & Olufsen A/S v OHIM, the CFI held that the shape of an unusual looking loudspeaker was registrable as a trade mark and not objectionable under ARt.3(1)(b) because the shape departed significantly from the customs of the sector. The CFI apeared to consider that the aesthetic result was so striking that it meant that it was registrable as a trade mark (para.42). The CFI held that it was irrelevant whether or not the shape of the mark was essentially dictated by aesthetic considerations. Thus, the design was registrable without any evidence of acquired distinctive character. Henkel and Bang & Olufsen clearly show that the Court of Appeal's approach in Bongrain was wrong. However, it is troubling that the CFI appears to have forgotten the fundamental need to consider whether such a shape will be seen as an indication of trade origin without education of the public that such a shape is indeed a trade mark. Is the law of trade marks such that any distinctive design which differs significantly from other designs in the relevant market is a design for which the designer can obtain a perpetual monopoly regardless whether the public view it as a trade mark.

Factors relevant to determining confusion

Para 3-125 See C-193/06 Société des Produits Nestlé SA v OHIM, Quick restaurants SA, the ECJ confirmed (citing its decision in C-334/05P Shaker/Limoncello case) that when considering the likelihood of confusion of a word+device mark with a word mark, the device element should not be minimised. Only where such was negligible should the comparison be word for word.

In C-533/06 O2 v Hutchison (3G), the ECJ held that when consideirng the likelihood of confusion under Art.4(1)(b) of Directive, one should have regard to the likelihood of confusion in all the circumstances in which the mark applied for might be used if it were registered. This means that one is not simply considering the most likely use but rather a range of possible uses. This is in contrast with infringement proceedings, where the court is only obliged to consider the actual use of which complaint is made (see para 3-153).

Family marks

Para 3-126 In C-234/06 Il Ponte Finanziaria SpA v OHIM, FMG Textiles Srl, the ECJ held that where it was alleged that there was a common element to a series of marks relied upon for the purpose of opposition proceedings, it must be shown that there has been "use of a sufficient number of marks" on the market such that the consumer identifies the common element with the opponent.

Taking unfair advantage/detriment

Para 3-131 In C-252/07 Intel v CPM (UK) Limited (Intelmark) Advocate-General Sharpston has given a detailed Opinion conerning the meaning of "link". She has said that bringing to mind is equivalent to the establishment of a link and does not require anything more. She has also discussed what is required to show unfair advantage of or detriment to the repute of a mark. She has however said that it is not necessary to believe that there is an economic connection between the marks. Before commenting on more, it is considered prudent to await the ECJ's decision so as to determine how much of this Opinion survives its judgment.

Use of a sign in the course of trade in relation to goods or services? Is use as a trade mark necessary?

Para 3-148 In C-17/06 Celine v Celine SARL , the Court of Justice emphasised that use of a company or shop name will amount to an infringement of Art.5(1) of the Directive where such use "affects or is liable" to affect the functions of a trade mark, in particularly the essential function of the trade mark. The Court of Justice makes it clear that it is not sufficient merely for use of the sign to be in relation to goods. It must affects the functions of a trade mark.

Thus, it would appear that where a case of infringement is advanced under Art.5(1) of the Directive (Art.9(1)(a) CTM Regulation), it is necessary to show use which affects the essential function of the mark but that in rare cases, there could be infringement under Art.5(1) where it affects the advertising function (psychological message) of a trade mark. However, in the author's view, consideration of the effect of the defendant's sign on the advertising function more properly belongs to cases of infringement advanced under Art.5(2) (taking unfair advantage of/detriment).

Celine does not state explicitly how the essential function of a mark can be damaged if the alleged infringing sign is not being used to indicate the trade origin of goods or services provided by the defendant. Certainly, Anheuser-Busch and Adam Opel do not suggest that use of a sign for purpose other than to distinguish goods or services of the defendant falls within Art.5(1).

In an interesting decision of the English High Court, RxWorks v Paul Hunter [2007] EWHC 3061, the issue was whether the use of "vet.local" on computer systems infringed the registered trade mark VET.LOCAL for inter alia computer programs in Class 9. The Court sought to apply the four part test set out in Celine. It characterised this test as (i) use must be use in the course of trade (ii) without the consent of the proprietor (iii) use must be in relation to goods or services (iv) use must be liable to affect the functions of the registered trade mark. The Court held that it was not necessary that the buyer saw the mark at the point of sale (which must be right). The Court held that "vet.local" was (a) buried in the workings of the system, to such an extent that vet users are likely only to stumble upon it by chance and knowledgeable system administrators, if they see it, were likely to know to what it referred to (b) was not a sign which was inherently likely to denote trade origin or do so in the contexts in which it is used, (c) was not intended to denote trade origin but, rather, would be taken as the name of an internal domain and associated folders (d) was on a scale which, in reality, was likely only to be encountered to a significant extent by computer professionals administering the system and perhaps, occasionally, the odd vet.

Trade Names

Para 3-151 In C-17/06 Celine v Celine SARL, the ECJ has clarified the law relating to use of company and shop names. Prima facie, the mere adoption of a company name does not amount to use of a sign in relation to goods. However, where the company name is affixed to goods, such is use in relation to goods. In other circumstances, it must be shown that the use of the company or shop name creates a link between the company name or shop name and the goods marketed or services provided by third party.

 Should one disregard additional distinguishing matter?

para 3-153. In C-533/06 O2 v Hutchison 3G, the ECJ held that when considering infringement under Art.5(1)(b), one must consider the circumstances characterising that use and not whether another use of the same sign would give rise to a likelihood of confusion. This was in the context of a comparative advertisement where it will be apparent that a mere arid consideration of the use of the sign (i.e. the competitor's brand) by an advertiser without regard to its context would mean invariably that a case under Art.5(1)(a) or 5(1)(b) is made out. It remains to be seen how far the context of use can be taken into account. Does this mean that one can take into account surrounding factual circumstances (e.g. a disclaimer or distinguishing matter) where such lessens or remove the likelihood of confusion? It would be surprising if the ECJ meant this. Such would turn a trade mark infringement action into a type of passing off or unfair competition case. A registered trade mark will generally prohibit the use of the same or confusingly similar sign in relation to the same or similar services without the need to investigate further whether actual confusion is likely to occur on the marketplace when all circumstances are taken into account.

What type of use is sufficient?

Para3-154. In Red Bull v Winters and Smart Drinks, a drinks manufactured requested Smark Drinks to fill preprinted tins whose marks and get-up resembled the Red Bull caffeine drink with an energy drink. On the issues as to whether such amounted to trade mark infringement, the Dutch Court of Appeal held that filling a can with a trade mark (Red Bull) amounted to trade mark infringing because in reality,it amounted to affixing the trade mark to the goods themselves (although not the packaging).

ECJ: O2 v Hutchison 3G

Para 3-163 The Court of Justice has now handed down judgment in this case. The ECJ did not follow the Advocate-General's Opinion. It found that there can be no trade mark infringement in a comparative advertisement where all the conditions in Art.3a of Directive 97/55 are satisfied. In this context, "comparative advertisement" means where use of a sign is perceived by the average consumer as being a reference to a competitor or to the goods or services which he offers.

The ECJ also held that irrespective of whether there was compliance with Art.3a of Dir.97/55, there is no trade mark infringement where there does not exist a likelihood of confusion between the registered trade mark and the defendant's sign. Of course, if one did not have regard to the surrounding circumstances and simply considered in vacuo the sign used by the defendant, then of course there would always be confusion. Thus, the ECJ made it clear that the real focus of inquiry is whether use of the sign would suggest a form of commercial link between the advertiser and the competitor (para. 63). This necessitates investigation of the context of use. Thus, the assessment of the likelihood of confusion is limited to the circumstances characterising the actual use of the defendant's sign and not considering whether there is any need to investigate whether another use of the same sign in different circumstances would give rise to a likelihood of confusion.

Clearly, in most comparative advertisements, the whole purpose is to contrast the products of the competitor and the advertiser. Thus, in general, there is unlikely to be any confusion or risk of confusion. The effect of O2 may be limited. In general, by their very nature, comparative advertisements do not give rise to a likelihood of confusion  More likely is that an advertiser is taking unfair advantage of the reputation of another's brand (e.g. our product is every bit as good in every respect as Brand X where Brand X has been heavily advertised). O2 was not concerned with the interaction of Art.5(2) Trade Mark Directive and the Comparative Advertising Directive. No doubt if it had, the Court would have come to a similar conclusion i.e. that if it does take unfair advantage of a trade mark, it is infringement because Art.3a(g) Dir.97/55 specifically forbits the taking of unfair advantage of the reputation of a competitor's mark.