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).

Laudatory word marks

In T-424/07 Pioneer Hi-Bred v OHIM, the CFI held, in dismissing an appeal from OHIM, that the mark OPTIMUM was devoid of any distinctive character and thus not registrable under Art.7(1)(b). The CFI made it clear that the mere fact that a laudatory word does not enable the consumer to imagine what type of goods it refers to, such did not the meet the point that a generic laudatory term could not be "regarded as appropriate for the purpose of identifying the commercial origin of the goods which it designates" (para 26)

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.

Shape Marks

Para 3-099 In T-270/06 Lego Juris A/S v OHIM, the CFI ruled on the meaning of Art.7(1)(e)(ii) in the context of an application to register a Lego brick. This was an appeal from the decision of the Grand Board of Appeal of OHIM which in turn was an appeal from the Mega Bloks Inc v Kirkbi A/S decision reported at para.3-099.  The Grand Board of APpeal rejected Lego's appeal. Lego submitted that the Grand Board of Appeal had misinterpreted Art.7(1)(e)(ii). The thrust of their arguments were that (i) the shape applied for must have no non-functional features (ii) it was not necessary to interpret Art.7(1)(e)(ii) widely because shapes of goods were rarely registrable and only if they have acquired distinctive character which was rarely. Thus, they submitted that it should be interpreted only where the shape of the goods for which protection is sought would create a monopoly for a technical solution and not where sufficient freedom remained for competitors to apply the same technical solution using a different shape. Recognising the difficulties caused by Phillips v Remington, Lego submitted that it effectively did not mean what it appeared to say and that a distinction should be drawn between the "technical solution" that a 3D mark achieved and the shape of that product itself.

The CFI clarified the law. Firstly, it emphasised the judicial gloss to Art.7(1)(e)(ii) that the ECJ in Phillips v Remington, namely that it is only necessary to show that the essential characteristics of the shape performed a technical function. Thus, the addition of non-essential characteristics which had no technical function did not prevent a shape mark from being caught by Art.7(1)(e)(ii). This interpretation is in line with the English decision of Phillips v Remington (No.2) commented on at para.3-099. Secondly, it clarified (if such needed clarification) that the proper interpretation of the ECJ's decision in Phillips v Remington was that it was sufficient for a valid objection to be made if "the essential characteristics of the shape combine the characteristics which are technically causal of, and sufficient to obtain, the intended technical result" (para.39). It also dismissed the wider point that Art.7(1)(e)(ii) should be construed narrowly as each ground for refusal pursued different objectives.

Interestingly, the CFI held that when determining the essential characteristics, the viewpoint is not that of the consumer as he or she may not have the technical knowledge necessary to make such a determination. Thus, the tribunal must determine such characteristics on an objective basis from the graphical representation applied for and only that. Thus, it accepted that the Grand Board of Appeal was wrong to consider the "underside" of the Lego brick as such was not in the graphical representation. However, it held that it had in fact correctly identified the essential visible characteristics and the fact that it had taken into account other characteristics did not affect the validity of its decision. However, it clarified that there was nothing wrong when considering whether those visible essential characteristics were functional to take into account invisible features i.e. the underside of the brick. Thus, the reliance on invisible features is relevant to determining the functionality of the essential characteristics but not the characteristics themselves.

Para 3-100 In R-497/2005-1, the Board of Appeal considered again the registrability of a shape of a product mark for Bang & Olufsen's BeoLab 8000. As discussed above (para 3-075), the CFI had held that the mark was registrable under Art.7(1)(b) & (c) because the shape departed significantly from what was customary in the relevant sector. It had thus remitted it back to OHIM. The Board of Appeal decided that this time, it was objectionable under Art. 7(1)(e)(iii). It held that the shape gave substantial value to the goods. It held that Art.7(1)(e)(iii) should be interpreted to mean that if the shape had the potential to determine the consumer's purchasing behaviour so that the relevant public bought the product mainly for the value of its shape, then it was objectionable under the provision. As there was no element in the loudspeaker which did not impact on the design, the Board concluded that it was objectionable under Art.7(1)(e)(iii). Bang & Olufsen have filed an appeal to the CFI (T-508/08).

Similarity of goods

Para 3-122 In T-316/07 Commercy v OHIM (Easyhotel), the CFI had to consider the validity of a decision of OHIM ruling that the goods and services in the opponent's and applicant's marks were not similar and thus rejecting an opposition. Simplifying very considerably, the case concerned whether the supply of computer software for the purpose of setting up a travel agency/reservation website were similar to the provision of the travel agency/services. The Boards of Appeal had held that they were not. The CFI upheld that decision. IT applied the Canon criteria and found that the services were not in competition nor complementary. As the CFI said, the commercial origin of the softwre and the computer services which enable a website to function is not "generally of the slightest interest to the public" who use the services of that website (para.60). This decision confirms that it will be rare that services which are "upstream" or "downstream" in the supply chain to each other will be similar goods. On similar logic, "postal services" will not be similar to "stationery and envelopes" and "machinery for making cars" would not be similar to "cars".

It should be noted that the above decision was reached even though the opponent's and applicant's mark were identical (easyhotel). The applicant submitted that where the two trade marks are identical, then the goods and services had to be very different so as to exclude any confusion (para.40). However, the CFI rejected that and confirmed that it is still necessary to determine whether the goods or services are similar even where the two marks are identical (para.43). This decision thus confirms that there is a "threshold" test under Art.8(1)(b). Thus, even if a global test would indicate that there was a likelihood of confusion between the goods (e.g. where the marks are highly distinctive and identical), such is not sufficient for a successful opposition under Art.8(1)(b) if the goods or services are not similar.

different markets will be similar even though they maurespective goods and services were (i) reservation and booking software and development/design of such software (ii) travel agency and

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. However, see T-181/05 Citigroup v OHIM where the CFI held that the risk of a mark taking unfair advantage of a mark was increased where Citibank were the holders of several trade marks with the component "citi" even though the proceedings before the CFI proceeded on the basis that only the trademark CITIBANK had a reputation. See also C-16/06p Les Editions Albert Rene Sarl v OHIM (Obelix/Mobilix) which emphasised the need formally to rely upon all registered marks that are said to constitute the family (para .100).

Para 3-126 In OBELIX/MOBILIX (Les Editions Albert Rene v OHIM intervening Orange), the ECJ dismissed an appeal from the decision of the CFI that Obelix was not confusingly similar with the mark Mobilix. In the CFI decision, the CFI held that "Obelix" was nt confusingly similar with "Mobilix" as such conveyed a reference to the famous character in the Asterix cartoon strip and thus was conceptually different from Mobilix. The Appellant held that the decision was flawed because it failed to rule on the well-known nature of the "Obelix" mark. The ECJ held that the CFI was entitled to make that finding and, following, Ruiz-Picasso and Muhlens v OHIM, held that conceptual differences may outweight aural and visual similarities and that in particular, a clear and specific meaning of one of the signs may have that effect where the public is capable of grasping it immediately (para 98). This is known as the "counteraction" theory.

Taking unfair advantage/detriment

Para 3-128 In T-181/05, Citibank v OHIM, the CFI held that the marks CITIBANK and CITI were sufficiently similar to satisfy the test under Art.8(5) because "citi" had a distinctive character and because it was not required to show that there was a likelihood of confusion (para. 72-73).

Requirement of link but not confusion

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.

The ECJ has now handed down its decision in Intel v CPM(UK). It has first emphasised that the establishment of a "link" is a necessary but not sufficient condition for an objection to be made out under Art.4(4)(a). The ECJ has given further guidance on how to assess whether a link is established. It emphasises that such must be assessed globally (see para [30] of Adidas-Salomon cited in text). It however went on to say that

• the more similar the mark, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public but that even if the marks are identical, such is not sufficient per se for it to be concluded that there is a link. Thus, it emphasised that it is possible that the conflicting marks are registered for goods or services in which there is no overlap of the relevant public (para 46). By way of comment, it is easy to lose sight of specification of goods when considering an objection under ARt.4(4)(a). This is because the ground applies regardless whether the goods applied for are similar or dissimilar to the goods specified in the earlier registration.
• Intel v CPM makes the point that the proprietor of the earlier right will have a better prospect of success where the goods or services for which his mark has a reputation coincides with the specification of the registered trade mark. Indeed, the ECJ held that if the relevant public for the goods or services of the earlier mark is "completely distinct" from the goods or services for the latter mark, then "it will not establish any link". This is a very emphatic remark (for the ECJ). It suggests that even if the reputation of the earlier mark extends well beyond the specification of goods or services and into the goods or services for which the latter mark has sought protection, such is irrelevant. However, this point is rather negated by the ECJ's further observation that the reputation of the mark may be such that it goes beyond the relevant public for the goods or services for which the mark is registered. Thus, as the ECJ says, reputation of the mark is an important factor. These observations make it difficult to determine whether the specification of the earlier mark is at all relevant. For example, a very well-known brand may only have been registered for a narrow class of goods. For instance, Lego may only have been registered for playthings but is so well-known that its use for garden furniture could well cause the public to make a connection between the two. Should the specification of Lego's earlier mark play any part in the assessment whether there is a link?
• The more distinctive the earlier mark (whether inherently or de facto), the more likely that a link is to be created.
• A likelihood of confusion is a sufficient but not necessary condition for a link to be established.

The ECJ confirmed the Advocate-General's Opinion that where the average consumer, who is reasonably well informed and observant and circumspect calls to mind the earlier mark when seeing the later mark, such is sufficient to establish the existence of a link. In para 3-131 of the book, the authors suggested that there was much to be said for adopting a test that the link must have an effect on the economic behaviour of the consumer and that it is not sufficient that the signs calls to mind an earlier mark. Although this is not the test for the purpose of establishing a link, it has become the test in relation to whether a later mark is detrimental to the distinctive character of the earlier mark. This is discussed below at para 3-137.

In an English infringement case, Whirlpool v Kenwood [2008] EWHC 1930, Whirlpool complained, in effect, about a "look alike" food mixer. However, it did not have a registered design but a registered mark for the design. The court held that although the defendant's mixer called to mind and thus created a link with the Claimant's well-known mark, the claim that such took unfair advantage or was detrimental to the reputation fo the mark failed. As the court said "the reminder appears to me to leave the distinctive character and repute of the trade mark represented by the bodywork of the Artisan mixer completely untouched. It is apt to erode the market share of the KitchenAid product, but without impinging upon any aspect of the property appertaining to the trade mark."

Of particular interest is that the judge said that the policy considerations underlying the exclusion of shape marks from registration where they satisfy certain criteria (see para 3-094 et seq.) that such considerations should also be taken into account when considering whether the defendant's shape takes unfair advantage of or is detrimental to the repute of the claimant's mark. As attractive as this argument is, the ECJ and CFI has resisted arguments that policy considerations underlying one ground of objection should be taken into account when considering whether another ground of objection is established. Thus, in Lego Juris A/S v OHIM (commented on above at para 3-099), it rejected the converse argument namely that Art.7(1)(e)(ii) (shape necessary to obtain a technical result) should be construed narrowly because most shape marks are objectionable for lack of distinctive character. The CFI held that that such was an invalid argument because each ground for refusal pursued different objectives.

Para 3-132 In T-181/05 Citigroup Inc v OHIM, the CFI emphasised that when considering the application of Art.8(5), there were three distinct type of risks to be considered (i) whether use of the trade mark applied would adversely affect the distinctive character of the earlier mark (ii) cause detriment to the repute of the earlier mark (iii) take unfair advantage of the distinctive character or repute of the earlier mark. This was also emphasised in C-252/07 Intel v CPM United Kingdom where the ECJ said that it was sufficient to establish just one of the three types for the objection to be upheld.

Para 3-133 In T-181/05 Citigroup Inc v OHIM, the CFI held that a trade mark for "CITI" for customs agencies, property valuers, estate agents would take unfair advantage of Citibank's pre-eminent reputation in the banking field. Interestingly, the CFI said that such a risk was increased because Citibank were the holders of several trade marks with the component "citi" even though the proceedings before the CFI proceeded on the basis that only the trademark CITIBANK had a reputation (see para.63).

Dilution by blurring

Para 3-137 In C-252/07 Intel v CPM, the ECJ stated that blurring will occur "when that mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing do" [para 29]

In making that assessment, the ECJ gave the following guidance

• the more immediately and strongly the earlier mark is brought to mind, the greater the likelihood that the later mark is or will take unfair advantage of or be detrimental to the repute of the mark
• the court must assess the issue taking into account all relevant factors
• the stronger the reputation and/or distinctive character of the earlier mark, the easier it will be to prove detriment. It is not necessary for the earlier mark to be "unique" but the more "unique" it is, the greater the likelihood that the latter mark will be detrimental to its distinctive character

Most importantly, the ECJ held that the proprietor of the earlier mark must provide "proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark or a serious likelihood that such a change will occur in the future" [para 77] but that it was irrelevant for the purpose of assessing detriment (although obviously relevant to taking unfair advantage) whether the proprietor of the latter mark draws real commercial benefit from the distinctive character of the earlier mark.

The two emphasised parts in the previous paragraph are important. Firstly, it means that mere perfunctory arguments such as the marks are similar and thus dilution is inevitable will fail. However, it seems tolerably clear that if it can be established that the "selling power" of the mark is reduced by normal and fair use of the later mark, then such arguments will succeed. It remains to be seen exactly what type of evidence will be sufficient to establish this. Does it mean that one will need an expert in marketing to make a point which, in many cases, is obvious to all? It should be emphasised (as this appears to have been lost in much of the commentary on this case) that this test has only been said to be relevant to "detriment to distinctive character" and not "unfair advantage". Thus, the fact that the use of the latter mark makes the purchaser buy more of the products of the proprietor of the latter mark but not less of the products of the proprietor of the earlier mark is irrelevant where the objection is one of distinctive character. However, it may well be relevant where the ground of objection is one of unfair advantage.

The second important aspect is that one is concerned with the average consumer of the goods or services for which the earlier mark is registered. For instance, take the example above (para 3-099) about an application to register "Lego" for garden furniture and an objection taken by the owners of the "Lego" mark which is registered for "playthings". It would have to be shown that use of "Lego" for garden furniture will affect the decisions of consumers to buy Lego bricks. This will be difficult. Indeed, even though such is sufficient to establish a link, the fact that buyers of Lego garden furniture may believe that Lego is somehow connected in the course of trade with the company supplying the garden furniture would not be sufficient to show detriment (although it may be to establish unfair advantage). It is not the buyers of garden furniture that are relevant (assuming that Lego does not have a registration of Lego for garden furniture) but  the purchasers of playthings.

Para 3-139 In C-252/07 Intel v CPM, the ECJ clarified the burden of proof, namely that the proprietor of the earlier must establish that there is either actual and present injury to the mark or a serious risk that injury to the registered mark will occur in the future (para. 38).

Unregistered marks

Para 3-143 In T-225/06, T-255/06, T-257/06 & T-309/06 Budejovicky Budvar v OHIM (intervenor Anheuser-Busch), the CFI had to consider the requirements of Art.8(4) where the right relied upon was an appellation of origin registered under the Lisbon Agreement with effect in various Member States. The CFI held that when demonstrating that the non-registered trade mark or other sign had been used, the requirements were different to that which related to demonstrating that an earlier registered trade mark relied upon by an opponent had been put to genuine use in the 5 years preceding the date of publication of the application. However, the CFI emphasised that it must be shown that the sign concerned gave the proprietor the right to prohibit use of the subsequently applied for mark (para 166). The CFI thus held that the Board of Appeal had erred in requiring "genuine use" of the appellation of origin by analogy to Art.43(2) Regulation 40/94. The CFI held that it was sufficient to show use before publication of the application (cf date of filing of the application).

The CFI also held that it was not necessary that the earlier right was used in the territory whose law is invoked in support of the protection of the sign (para 167). Thus, the CFI said that the appellations may enjoy protection in a particular territory even though they are not used in that territory but only in another territory.

Finally, in Budejovicky Budvar, the CFI that when considering the requirement of "more than mere local significance", it is not necessary that the mark has been used in territories which are more than mere local significance but rather that the protection afforded by the sign must be of more than mere local significance. Thus, an appellation of origin which by reason of a convention extended its protection beyond the territory of origin was a mark or sign of more than mere local significance (para 181).

Infringement

Para 3-146 In C-252/07 Intel v CPM Corporation, the ECJ held that the interpretation of Art.5(2) and Art.4(4)(a) were the same (para. 25) as the wording was essentially the same. Although no one really doubted this, it is a welcome confirmation that the approach to the same wording is not altered by the fact that one is considering infringement rather than opposition to registration. In both cases, the consideration of the protection of the earlier mark will be the same.

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.

Use in the course of trade

Para 3-150A In T-225/06, T-255/06, T-257/06 & T-309/06 Budejovicky Budvar v OHIM (intervenor Anheuser-Busch), the CFI confirmed that "in course of trade" meant where use occurs in a commercial activity with a view to economic advantage and not as a private matter (para 165). Thus, it has been held that a non profit-making organisation does make (C-422/07 Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’

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.

Article 7(2), parallel importers and repackaging

Para 3-191 In C-276/05 Wellcome v Paranova (22nd December 2008), the ECJ held that the requirement of necessity to market the product meant that a trade mark proprietor was entitled to information from the parallel importer which is "necessary and sufficient" to enable it to determine whether the repackaging of the product was necessary for the purpose of marketing it in the Member State of importation. It was clear that the ECJ was alive to the fact that the trade mark proprietor could use the details to detect weaknesses in his sales organisation and combat parallel trade, but held, following Loendersloot v George Ballantine, that in such circumstances, it was necessary to look to the provisions of the EC Treaty on competition (see para 37). Loendersloot is discussed at para 3-194 of the book.

The ECJ also followed Boehringer (No.2) by affirming that the requirement of necessity did not extend to the type of packaging. Accordingly, the ECJ ruled that the presentation of the packaging is only to be assessed against the condition that it should not be such as to be liable to damage the reputation of the trade mark owner or that of its proprietor (para 30). Thus, although this part of the judgment confirms Boehringer (No.2), it goes further by positively affirming that in repackaging cases, the courts should only assess the actual packaging (as opposed to the need for repackaging at all) as against Bristol-Myers No. 4 condition (see para 3-197 of book)

para 3-198 In Wellcome v Paranova, the ECJ held that a trade mark proprietor was entitled to information from the parallel importer which is "necessary and sufficient" to enable it to determine whether the repackaging of the product was necessary for the purpose of marketing it in the Member State of importation. It is not clear whether a failure to provide such information would mean that proper advance notice of repackaging has not been given. In the author's opinion, a distinction should be drawn between the requirement of advance notice (Bristol Myers Condition No.5) which merely requires a specimen of the repackaged product (if requested) and a failure to give information for the trade mark proprietor to determine whether the repackaging was necessary. It is considered that a failure to give such information would empower a court to order a parallel importer to disclose such information and impose sanctions if it does not but does not mean that the goods would be infringing goods prior to such information being given. Such seems the proportionate response which very much follows Boehringer No.2 (where it talks about proportionate measures).

Genuine Use

Para 3-210 Since Laboratoire de la Mer, there have been a number of CFI decisions considering the issue of proof of genuine use. In an interesting case T-131/06 Sonia Rykiel v OHIM, the CFI allowed an appeal from OHIM that there had been genuine use of the registered trade mark SONIA. In that case, the evidence of use of the mark in the relevant period was very limited. It consisted of 9 invoices for clothing amounting to EUR 342. The court considered carefully the size of the market and the registered proprietor and the lack of evidence enabling the minimal turnover, very small quantity of goods sold over a relatively long period to be taken into account (para.59). The CFI concluded that the total amount of transactions over the relevant period "seems to be so token as to suggest that.." that the use of the mark could not held to be warranted "for the purpose of maintaining or creating market shares for the goods protected by the earlier word mark". The CFI thus held that the Board of Appeal failed to take into account all the relevant factors and annulled its decision. Interesting, it distinguished the case from the LA MER case by pointing out that in LA MER, the invoices had been spread over 33 months. It is clear that in Sonia Rykiel, the CFI considered that there were "real doubts as to the genuine use" (para. 58) of the mark because the very limited documentary evidence, in effect, made no real sense. It is to be noted that as with other CFI decisions, the CFI does not make a clear distinction between (i) whether the documentary evidence is authentic and not manufactured for the purpose of the proceedings (ii) whether such use of the mark as is established by the evidence was for the purpose of preserving the mark or for creating or maintaining a market. This is discussed in para 3-212 of the book.

The ECJ has held that a non profit-making organisation does make "genuine use" of its mark. The ECJ held that the fact that the organisation is non-profit making does not mean it does not seek to create an outlet for its products or services within the meaning of Ansul (C-422/07 Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’)

In C-495/07 Silberquelle GmbH v Maselli-Strickmode, the ECJ has held that there is not genuine use of a registered trade mark where promotional items (alcohol-free drinks) bearing a registered trade mark are handed out as a gift to those who purchased clothing of the registered proprietor. In a short judgment, the ECJ held that such was not genuine use. It held that where items are not distributed "with the aim of penetrating the market for those goods", there is not genuine use. The ECJ referred to Ansul where the ECJ stated that the commercial raison d'etre of a mark is to create or preserve an outlet for the goods of services for which it is used.

This judgment is interesting. At one level, there plainly was use of the registered mark in relation to the specified goods. However, the intention of the registered proprietor was not to create a market for the goods bearing the mark. Yet, there was no suggestion that the use
of the mark was intended for the purpose of maintaining the registration (i.e. sham use) nor was use internal. This case suggests that non-internal non-sham use can still not be genuine use if there was no intention on the registered proprietor to create or maintain a market share regardless as the level of familiarisation of the public with that mark. Thus, one can have the strange situation where the public could be extremely familiar with a mark and its use in relation to goods or services protected by a registered mark and yet there has been no genuine use within the meaning of the Trade Mark Regulation or Directive.

Would the case have been different if the trade mark proprietor considered that it was an excellent way of promoting its alcohol-free products by handing them out free when customers purchased its clothing? This could have been the case if its pre-existing business was in clothing but it wished to diversify into alcohol-free products.
Presumably, if such had been the facts of Silberquelle, the conclusion would have been that such was with the aim of creating a market for alcohol-free goods and thus such was genuine use. Yet, it is odd that such a subtle change of facts would affect the outcome. After all, in both cases, the registered mark is actually used on goods covered by the registration.

Appeals from OHIM

para 3-276 In C-16/06/P Les Editions Albert Rene v OHIM, the ECJ considered the issue of appeals from OHIM It emphasised that in an appeal from the Boards of Appeal to OHIM, the ECI "can carry out a full review of the legality of the decisions of OHIM's Boards of Appeal, if necessary examining whether those boards have made a correct legal classification of the facts of the dispute or whether their assessment of the facts submitted to them was flawed (para 39). In short, the CFI can consider the matter de novo. However, the appeal from the CFI to the ECJ is much more limited to points of law. The ECJ said that the appraisal of the facts and the assessment of the evidence do not "save where the facts or evidence are distorted, constitute points of law" (para 68). It said that such distortion "must be obvious from the documents on the Court's file without there being any need to carry out a new assessment of the facts and the evidence" (para 69).

The ECJ also emphasised that it was not sufficient merely to repeat the pleas in law and arguments submitted to the CFI but that it was necessary to "indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal." (para.111).

Finally, the ECJ emphasised that it was not permitted to raise a plea in law which had not been raised before the CFI. Thus, the ECJ's jurisdiction was limited to a review of the findings of law on the pleas argued before the CFI (para. 126).

Where an appeal is successful, the effect is that OHIM must take measures necessary to comply with the judgment (Art.63(6) Regulation 40/94). The CFI cannot make an order binding OHIM (see para 46, Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06 Budejovicky Budvar v OHIM).

Interrelationship of the law of registered trade marks and PDOs and PGIs

Para 3-284 In T-225/06, T-255/06, T-257/06 & T-309/06 Budejovicky Budvar v OHIM (intervenor Anheuser-Busch), the CFI had to consider the reliance by Budvar on an appellation of origin "BUD" registered under the Lisbon Agreement for the Protection of Appellations of Origin for beer which was effective in France, Italy and Portugal. There was no dispute that "Bud" was a shortened version of "Budweis", the German name for Ceske Budejovice, the Czech town where Budvar beer was brewed. Budvar relied upon this appellation of origin under Art.8(4) of Regulation 40/94 which permits opposition proceedings to be brought against an application for a CTM on the basis of rights other than earlier registered trade marks. In France, "Bud" had been declared invalid by the French courts as an appellation of origin but that decision had been appealed which, under French law, meant that the effects of that judgment were suspended. The Boards of Appeal held that no reliance could be placed on the appellation of origin because it was not, in their opinion, an appellation of origin (primarily because it was not the name of a place but merely an abbreviation of Budweis). The CFI held that such was wrong and OHIM should simply have sought to apply the effects of French law on appellations of origin and had exceeded its jurisdiction by considering whether it was a valid appellation of origin at all. The suspensive effect of the appeal of the French decision meant that, as of the date of application of the marks in question, the appellation of origin was valid. Thus, the Board of Appeal had erred in law.