EJTN
Intellectual property law seminar 2017
Latest EU developments in trademark law
Laura Fresco HOYNG ROKH MONEGIER LLP
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▪ New EU trademark regulation
▪ Scope of injunction
▪ Shape marks
▪ (Lack of) distinctiveness
▪ Exhaustion
TOPICS
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▪ New EUTM regulation 2017/1001, valid as of 1 October 2017
▪ Consolidated text of the amendments of regulation 2015/242 (valid as
of March 2016) to the old trademark regulation 207/2009;
– EUTM/ EUIPO
– Exit graphic representation;
– Shape mark exceptions extended to characteristics of the goods;
– Goods in transit provision;
– Preparatory actions;
– Etc.
▪ Caution: new numbering as of article 10
▪ Also valid as of 1 October 2017: Implementing Regulation 2017/3224
and Delegated Regulation 2017/3212
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New EU trademark regulation
The EU trade mark regulation provides for (recital 4 regulation
2017/1001):
“…one procedural system [to] obtain EU trade marks to which uniform
protection is given and which produce their effects throughout the entire
area of the Union. The principle of the unitary character of the EU trade
mark thus stated should apply unless otherwise provided for in this
Regulation.”
But…
Scope of the injunction
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▪ Principle: unitary EU mark justifies EU wide injunction
▪ But: can be limited for “special reasons” (art. 102 EUTMR)
▪ German court: Likelihood of confusion COMMIT/COMBIT for software
in Germany, but not in English speaking countries
▪ ECJ: in such case an EU wide injunction would be contrary to the
principles of free trade/fair competition
▪ Limitation has to be clear and well-
motivated
Scope of the injunction
COMBIT/ COMMIT
CJEU 22 September 2016, C-223/15
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▪ Irish KERRYGOLD for butter vs. Spanish KERRYMAID for margarine
▪ Peaceful co-existence and Ireland, but not in Spain and rest of the
EU
▪ Infringement on KERRYGOLD EU trade mark in Spain?
▪ ECJ: Unitary character EUTM does not require risk of confusion
and/or reputation of the trademark in the entire EU
▪ Co-existence in part of the EU does not exclude infringement in the
rest of the EU: market conditions and sociocultural circumstances
may be different
▪ Partial injunction may be justified; up to referring court to make a
global assesment of all the relevant factors
Scope of the injunction
ORNUA/T&S (KERRYGOLD)
CJEU 20 July 2017, C-93/16
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Valid mark for ‘three-dimensional puzzles’?
Shape marks
SEVEN TOWNS / SIMBA (RUBIKS CUBE)
CJEU 10 November 2016, C-30/15 P
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▪ Simba: TM is invalid, because it consists exclusively of ‘the shape of
the goods necessary to achieve a technical result’ (absolute ground
refusal shape mark).
▪ EUPIO, BoA and the GCEU disagreed: technical function does not
follow from graphical representation mark; valid mark.
▪ CJEU: trademark law may not result in a monopoly on technical
solutions
▪ Examination of the technical function must take into account the
actual products, not solely the graphic representation of the mark
▪ See also CJEU 6 March 2014 (Pi-Design/Yoshida), now continued…
Shape marks
SEVEN TOWNS / SIMBA (RUBIKS CUBE)
CJEU 10 November 2016, C-30/15 P
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Valid mark for knives?
And what about kitchen utensils without handles?
Shape marks
YOSHIDA/PI DESIGN
CJEU 11 May 2017, C-337/12
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▪ Previously: CJEU confirmed invalidity of mark, because it consists
exclusively of technical determined shape handle with non-skid
indents (taking actual product Yoshida into account)
▪ Case went back to the GCEU, Yoshida lost again, but gives it one
more try. In vain…
CJEU:
▪ Ornamental elements not sufficient to overcome technical exception
(not essential characteristics)
▪ Yoshida is too late to claim that the trademark should be upheld for
goods applied for without handles
Shape marks
YOSHIDA/PI DESIGN
CJEU 11 May 2017, C-337/12
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▪ Question Dutch court: is red sole of a high-heeled ladies shoe a
shape mark?
▪ AG Szpunar: shape mark exceptions apply because of the
combination of colour and shape; same rationale applies
▪ In essence retroactive effect new trademark provisions
(“characteristic of the goods”)?
▪ AG stresses that substantial value exception exclusively concerns
intrinsic value of the shape; the value resulting from the reputation of
the mark may not be taken into account
▪ To be continued…
Shape mark – substantial value (?)
LOUBOUTIN/VAN HAREN
Concl. AG CJEU 22 juni 2017, C-163/16
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Valid trade mark for chocolate products?
EUIPO, BoA, GCEU: no
Distinctive capacity
STORCK/EUIPO
CJEU 4 May 2017, C-417/16
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CJEU:
▪ Case law 3D trade marks applies to 2D product marks
▪ Blue/white pattern is no separate figurative element
▪ Thus: trade mark needs to depart significant from the norm
▪ CJEU confirms judgment GCEU that (i) colour combination is
common ,(ii) suggestion of “snow covered mountains” is not obvious
to consumer, and (iii) consumer is used to colours as simple
decorations rather than indications of origin
▪ So: no distinctive capacity, trade mark denied
See also: Concl. AG CJEU 22 June 2017 (Louboutin/Van Haren)
Distinctive capacity
STORCK/EUIPO
CJEU 4 May 2017, C-417/16
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▪ Next chapter in longlasting chocolate shape mark saga
▪ Acquisition of distinctive capacity has to be demonstrated in every
country of the European Union :
“(…) the distinctive character acquired through use of that mark must be shown
throughout the territory of the European Union, and not only for a substantial part or
the majority thereof. (…) Consequently, in the event that the evidence submitted
does not cover part of the European Union, even a part which is not substantial or
consists of only one Member State, it cannot be concluded that distinctive character
has been acquired through use of the mark throughout the European Union. See also
EUCJ 22 June 2006, Storck – ‘Werthers Echte’.”
Distinctive capacity
MONDELEZ/NESTLÉ
GCEU 15 December 2016, T-112/113
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▪ Marín started infringement action gainst Abadia based on Spanish
“La Milla de Oro” trade mark against “El Pago de la Milla de Oro”
▪ Abadia claims invalidity based on geographical indication of origin
Distinctive capacity
MARÍN/ABADIA (LA MILLA DE ORO)
CJEU 6 July 2017, C-139/16
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▪ CJEU: Milla de Oro can refer to various places; no specific
geographical indication;
▪ But: possible lack of distinctiveness?
▪ Not necessarily, referring court will have to examine whether the mark
will be perceived by the public as characteristic of the wine
▪ Slogans, promotional formula etc can be eligible for trademark
protection, as long as they indicate the commercial origin of the
product or service concerned
Distinctive capacity
MARÍN/ABADIA (LA MILLA DE ORO)
CJEU 6 July 2017, C-139/16
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Trademark rights exhausted when imported products are repackaged for
individual sale in the country of import?
Exhaustion - repackaging
FERRING LAEGEMIDLER/ ORIFARM
CJEU 10 November 2016, C-297/15
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▪ CJEU: Objection to the repackaging is not justified if it would result in
artificial separation of markets
▪ Ferring can object if the repackaging was not necessary, because the
product could be marketed in the importing State in the same
packaging as that in which it is marketed in the exporting State
▪ Importer should demonstrate that the imported product (in bulk
packaging) can only be sold in limited part of the import market, as
Orifarm alleges
▪ These are matters for the referring court to determine
– See also prejudicial questions Junek/Lohmann (C-642/16)
Exhaustion - repackaging
FERRING LAEGEMIDLER/ ORIFARM
CJEU 10 November 2016, C-297/15
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Thank you!
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