News

In C-343/07 Bavaria v Bayerishscher Brauerbund, the ECJ had to consider the difficult "crossover" of law of geographical indications of origin and trade marks. Pursuant to Regulation 2081/92 (the regulation which permits the registration of geographical indications of origin), the phrase "Bayerische Bier" was protected as a PGI (Protected Geographical Indication). The Commission considered that the application was well-founded and submitted it to the Regulatory Committee for Geographical Indications and Appellations of Origin.

In C-32/08 FEIA v Cul de Sac, the ECJ, following the advice of the Advocate-General, has held that where a design was commissioned for money, Art.14(3) which refers to designs being developed by an employee in the execution of his duties belonging to the employer was not relevant to the ownership of commissioned works. The ECj also held that there was no room for national law to determine the issue of ownership of an unregistered Community design and that thus the issue of ownership had to be determined by reference to Art.14(1).

In C-203/08 Zino Davidoff SA v Bundesfinanzdirectkion Sudost, the ECJ has held that Reg.1383/03 which permits the seizing of suspected counterfeit goods applies where the registered right is an international trade mark.

In C-487/07, L'Oreal SA and ors v Bellure NV and ors, handed down on 18th June 2009, the ECJ has given definitive guidance on the relationship of trade mark law and the comparative advertising directive. The ECJ had previously given some guidance in O2 Holdings v O2(UK), a case involving a comparative advertisement which made use of bubbles similar to a registered trade mark of O2. However, that case was complicated by the fact that the defendant did not use a sign identical to the registered trademark.

In C-202/08 & C208/08, AG Ruiz-Jarabo has given his opinion that the CFI's decision should be reversed. The CFI had held that Art.7(1)(h) of the CTM Regulation which protections national symbols and other signs protected under Article 6ter of the Paris Convention did not apply to applications for services. The main reason for the CFI reaching this conclusion is that Art.6ter appears on its face only to apply to trade marks for goods and not service marks.

In T-449/07, the CFI had to consider an appeal from OHIM concerning the registrability of an arrangement of sausages set in a pretzel shape. The issue was whether the mark was devoid of any distinctive character. The CFI held, dismissing various arguments, that the applicant had not shown how the shape differed significantly from the usual shape in which sausages are presented in trade. The CFI held that it was not a valid argument to compare the mark to a single sausage and commented that the gathering together of sausages by their ends is a common practice in trade.

In C-301/07 PAGO v Tirol Milch, the defendant sold a "me too" drink called Lattella whose get-up (shape, colour, cap, label) resembled in several respects the Claimant's PAGO drink. It was accepted that there was no likelihood of confusion because of the very different nature of the word marks. The real issue was thus whether the Lattella drink took unfair advantage of the Claimant's Pago drink by reason of the similarity of designs.

In C-59/08 Copad SA v Christian Dior and ors, a licensee of Christian Dior, who was licensed to make and sell luxury corsets entered into a licence whereby it agreed not to sell to discount stores for the purpose of maintaining the repute and prestige of the Christian Dior mark. The licensee requested Dior to sell its goods outside the network but Dior refused. However, the licensee went ahead anyway.

In C-32/08 Fundacion Espanolas para la Innovacion de la Artesania v Cul de Sac Espacio Creativo SL & Acierta Product & Position SA, a preliminary reference was made to the ECJ by the Mercantile Court of Alicante, Spain. The critical issue was the proper interpretation of Art.14(3) of the Community Design Regulation 6/2002 which states that a design developed by an employee in the execution of his duties or following instructions given by his employer vests in the employer unless otherwise agreed or specified under Community law.

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 already (see previous news item and para 3-075 of Trade Mark Chapter), the CFI had held that Boards of Appeal had been wrong to reject the shape mark
under Art.7(1)(b) & (c) as the shape did depart
significantly from what was customary in the relevant sector. It thus remitted the case back to OHIM.