Wednesday 24 May 2017

The European Union calls for a “Deluxe” decision

Through a decision dated 22 January 2014 EUIPO’s Second Board of Appeal confirmed the refusal of the application for the trademark

EU Trademark No. 011253044 (Refused)
which had been filed for a broad range of goods and services in classes 9, 35, 39, 40, 41, 42 and 45.

The reason for the refusal is that EUIPO found that the mark was devoid of distinctive character and that it merely informed consumers of the quality of all the goods and services at issue, without exception. The Office thus adopted a general reasoning in respect of all of them.

This decision was annulled by the General Court (case T-222/14 (in Spanish) which, after considering whether the Office had examined in sufficient depth the distinctive character of the sign at issue in relation to all the goods and services for which the application had been filed, held there to be a flaw in the reasoning of the Board of Appeal.

The appeal to the Court of Justice (case C-437/15P) therefore centered on the question of whether EUIPO should assess the capacity of a sign to identify a given business origin  with respect to each and every one of the goods or services, or whether, on the other hand, a global analysis of the goods or services will suffice if the Office finds them to have some relevant characteristic in common.

As we are all aware, EUIPO is under an obligation to state the reasons for its decisions, in order that the interested parties may know why their trademark is being refused access to the register and also that the courts of the EU may be in a position to oversee the legality of the decision.

When a trademark application is filed, the Office should indeed carry out an assessment of the capacity of the sign in question to distinguish the goods and services it covers. This will entail, in principle, an analysis of each and every one of those goods and services

However, an exception to this rule arises when the goods and services are interlinked in a sufficiently direct and specific way, to the point where they may be grouped in homogeneous categories. In that event the Office may confine its assessment to each of those categories.

The General Court relied on the order of 18 March 2010 (in case C-282/09P) to distinguish different categories into which the goods and services of the rejected mark could be grouped (cinema, advertising, storage and transport of goods, etc.), maintaining that they were very different in their nature, characteristics and purpose and that the Office should therefore at least have analyzed each of the homogeneous categories within the application.

EUIPO’s position, in contrast, was that if all the goods and services have a characteristic in common, which in the present case would be that they are all of superior quality, they may be regarded as forming a single category and, therefore, a general statement of reasons will suffice. The systematic repetition of the basic ground for the refusal, which is that the sign is devoid of distinctive character in respect of each and every one of the goods and services, may thus be avoided.

The Court of Justice annulled the judgment of the General Court, holding that the latter should have:

1. Checked whether the mark applied for, which comprises a word and a figurative element, could be perceived, directly and immediately, as a claim of superior quality or a laudatory message, rather than as an indication of the business origin of the goods and services. In the affirmative, the refusal of the application would be fully justified without the need for an examination of the sign in relation to all of the goods and services.

2. Checked whether the word element of the sign, “deluxe”, indeed conveyed the idea of superior quality or whether it could have a different meaning. In the latter event the mark could have a sufficient degree of distinctive character in respect of some of the goods or services. In that case an assessment of each of them would be required and different conclusions could be reached.

The Court of Justice held that the General Court had failed to appreciate that, despite their differences, all the goods and services at issue could have a common characteristic relevant to the analysis of the absolute prohibitions on registration which could justify their being grouped in a single homogeneous category and the consequent use of general reasoning in relation to them all.

The case has been referred back to the General Court and we shall therefore have to wait for a final decision on the substance. 

Author: Soledad Bernal

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Friday 19 May 2017

Trademarks in Spain: a step by step by guide

ELZABURU partners Luis Baz and Fernando Ilardia offer a complete and easy to follow guide about trademark registration in Spain: how to apply for your trademark, refusals, oppositions and so on

Spanish chapter

Reproduced with permission from Global Legal Group (published in May 2017)

Wednesday 17 May 2017

Getting to grips with functional marks

The Court of Justice of the European Union (CJEU) issued a judgment on 11 May 2017 (Case C-421/15P) in relation to the interpretation of the prohibition on registration as a trademark of “signs which consist exclusively of the shape of goods which is necessary to obtain a technical result” laid down in Art. 7.1 e) ii) of the Regulation on the European Union trade mark.
In 2002 and 2003 the Japanese company Yoshida Metal Industry secured the registration of two figurative European Union trade marks, for certain items of cutlery in class 8 and kitchen utensils and containers in class 21, consisting of the two-dimensional representation of a series of black dots:
(EUTM No. 001371244)

EUTM No. 001372580
The marks were used in practice on the handle of the knives sold by Yoshida and represented a series of concave dots or dents on the handle of the cutlery which performed a non-slip function when cutting (and which were also protected by various patents):
In 2007, the companies Pi-Design AG, Bodum France SAS and Bodum Logistics A/S applied at the EUIPO for the marks to be declared invalid on the basis of Article 7.1 e) ii), given that the signs consisted exclusively of the shape of a product which is necessary to obtain a technical result.
The EUIPO accepted the applications for a declaration of invalidity and cancelled the registrations of the trade marks.
The CJEU has now dismissed the appeal lodged by Yoshida, upholding the invalidity of the trade marks.
The judgment accepts and confirms, on the one hand, the arguments previously asserted by the General Court in its judgment of 6 March 2014 (C-337/12 P y C-340/12 P) (see a comment in this blog), establishing that the prohibition on registration laid down in Art. 7.1 e) ii) must apply both to two-dimensional and three-dimensional trade marks and declaring that said prohibition on registration was in the public interest, insofar as companies cannot use trade mark law to extend indefinitely the protection of technical solutions. Moreover, it states that for a correct application of the provision it is necessary to identify the essential characteristics of the trade mark, carrying out a case-by-case assessment.
Moreover, it is important to mention the CJEU’s current interpretation of Art. 7.1 e) ii), holding that registration as a trademark should only be refused where “all of the essential characteristics of the sign are functional”, that is, the Court considers that in the disputed trade marks, the specific configuration of the black dots is a significant functional element, which means that they cannot be registered as trademarks and, consequently, they must be declared invalid. In this regard, the Court specifies that the prohibition on registration laid down in Art. 7.1 e) ii) may be overcome and the sign may be registered as a trademark where it includes other relevant non-functional components (such as, for example, decorative or fanciful elements).
The Court has undertaken a strict interpretation of Art. 7.1 e) ii) with regard to registration of this type of mark consisting of the shape of a product, to thus prevent companies achieving a monopoly on the technical solutions or functional characteristics of the product. The judgment is also interesting in terms of the detailed definition of all of the mandatory requirements for this type of mark to qualify for registration as a trademark.

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