Lecture 2: Trademarks + Readings

Two-tiered framework:

• National TMs: Governed by national laws (e.g., Benelux Convention on IP) and largely harmonized through Directive 2015/2536 (and predecessors).

• European Union TMs (EUTM): Governed by Regulation 2017/1001, providing a unitary TM for the entire EU. The EU aims for harmonization to ensure an open market and remove barriers, setting an equal level of protection via the TM Directive.

Functions of a TM

• Essential function of a trademark is "to guarantee to consumers the origin of the goods or services". This means consumers must be able to distinguish different goods from a different party, even if they don't know the exact company name.

• Quality Guarantee Function: Consumers expect consistency in taste or quality (e.g., Pepsi).

• Communication Function: TMs convey core values, lifestyle, or identity to a certain social group.

• Advertising Function: Used to promote the product.

• Protection of Investment/Goodwill: Stands for the owner's investments and needs protection from unfair advantage.

Trademark Registration Requirements (What can be a TM?)

• Must be a Sign.

• Must be Clear, Precise, Self-Contained, Understandable, Durable, and Objective.

• Must be Capable of Distinguishing the goods or services of one undertaking from another

  • sign must function as an indication of origin.

2: Must be Clear, Precise, Self-Contained, Understandable, Durable, and Objective.

• This requirement was historically linked to "graphical representation" (Libertel C-104/01).

• Scents/Smells are practically impossible to register because chemical formulas, descriptions, or odor samples are not adequate representation (Sieckmann C-273/00).

• Sounds are possible if they are clear and precise (e.g., the first 9 notes of Fur Elise). Digital registers accommodate words, numbers, logos, shapes, sounds, movements, and colors.

Absolute Grounds for Refusal (7 EUTMR)

• Lack of Distinctive Character / Descriptive Marks (Art 7(1)(b) & (c)

• Shapes/Colors(Art 7(1)(b))

• Customary in Current Language (Art 7(1)(d))

• Overcoming Lack of Distinctiveness(Art 7(3))

• Contrary to Morality/Public Policy (Art 7(1)(f))

• Bad Faith (Art 59)

Lack of Distinctive Character / Descriptive Marks

• Marks consisting exclusively of descriptive words are not registrable (e.g., Bio). TM protection is stricter in the EU than elsewhere.

• The name must not lack distinctive character or be descriptive (including foreseeable future meaning) (BioMild C-265/00). Geographical names are refused if they could be used as a descriptor (Chiemsee C-108/97).

Shapes/Colors

• Often devoid of distinctive character. They must "depart significantly from the norm or customs of the industry"

• ECJ does not favor shapes/single colors as source indicators (Lindt C-98/11 P, Libertel C-104/01, Guerlain T-488/20).

Customary in Current Language

• Signs which have become customary (genericide).

Overcoming Lack of Distinctiveness

• A proprietor may overcome these grounds by showing acquired distinctiveness (the relevant public perceives the sign as a TM).

• Acquired distinctiveness must be shown for every single Member State where a lack of distinctive character exists (Kitkat C-84, 85, 97/17 P).

Contrary to Morality/Public Policy

• Slurs, certain religious indications, or marks associated with negative social factors (e.g., mafia)

• TM registration cannot be used to extend protection where copyright has expired (EFTA Court Vigeland Park C-240/18 E-5/16).

Bad Faith

• Filed not for fair competition, but with the intention of undermining third parties' interests or for purposes other than those falling within the functions of a TM.

• Traditionally: Blocking others (Lindt & Sprüngli C-529/07). Recently: Filing without intention to genuinely use the mark, or filing for a scope of goods/services you know you will not use, intending to monopolize the market (Sky v Skykick C-371/18).

TM Infringement

• EU TMs can generally only be enforced against economic operators. The concept of "use" in trade is construed broadly (Art 9(3)).

• Exclusions from "Use" in Trade:

  • Refilling cans without affixing the TM (Red Bull v. Winters C-119/10).

  • Transporting through customs, provided the infringer proves no TM protection exists in the country of destination (Art 9(4)).

  • Stocking for purposes of infringement (ECJ Tradeinn/PH C-76/24).

Infringement Grounds Art 9 EUTMR: Sub A

• Identicalsign / Identical goods (Double Identity)

• Need to prove detriment or harm to any of the TM functions

• Relevant in counterfeit goods and internet advertising (Google France C-236-38/08)

Infringement Grounds Art 9 EUTMR: Sub B

• Identical/Similar sign / Identical/Similar goods | Likelihood of Confusion

• Mere association is insufficient

• Global appreciation required, assessing visual, aural, or conceptual similarity based on the overall impression and the distinctive/dominant components (Puma/Sabel C-251/95)

  
  

Infringement Grounds Art 9 EUTMR: Sub C

• Identical, similar, or dissimilar goods/services 

• Reputation (known by a significant part of the public, which may be just one MS, Pago C-301/07, Chevy C-357/97).

• "Link" suffices (no confusion needed, Adidas v. Fitnessworld C-408/01).

• Unfair Advantage (coat-tail riding), Detriment to Reputation, or Detriment to Distinctive Character (dilution, Intel C-252/07). 

• No Due Cause (IKEA/Vlaams Belang C-298/23). 

Defenses to infringement (Art. 14 EUTMR)

• Own Name Defense.

• Descriptive Use: Valid to use a geographic locator or descriptor in a non-trademark sense (Gerolsteiner BrunnenC-100/02).

• Referential Use: Using a brand to refer to a product (e.g., car service using a logo to advertise service for that brand), as long as it does not suggest economic connection (BMW v. Deenik C-63/97).

 Exhaustion (Art. 15) (defense to infirngement) 

• A TM holder cannot oppose the further resale of goods once they have been first put on the market by or with their consent (exhaustion of rights).

• Valid Reasons to Oppose Resale (Exception to Exhaustion): Opposition is valid if the condition of the goods is changed or impaired. This applies to repair, refurbishment, or upcycling that changes the quality the TM guarantees.

• Debranding: Taking the TM off the product before importation into the EU market is considered an infringing act, as the holder has a right to benefit from the TM when first placing the product on the market (ECJ Mitsubishi).

Protection Grounds of GI: Sub A Direct or Indirect Use

• Forbidden if the GI name is used for a product that does not conform to the product specification.

• Name must be used in its entirety (non-geographical components are not protected, Aceto Balsamico di Modena C-432/18). Forbidden even if used as an ingredient, unless the GI ingredient confers an "essential characteristic" on the end product's flavor (Champagner Sorbet C-393/16).

Protection Grounds of GI: Sub B Imitation or Evocation

• Imitation: When the product is a "variation" of the PGI-product (Viiniverla C-75/15). Evocation: When signs or symbols "especially bring to mind" the GI when the consumer sees them (Manchego C-614/17).

• This applies even on dissimilar goods or services(Champanillo C-783/19).

Protection Grounds of GI: Sub C Misleading Indications 

• Indicators on the product are liable to mislead consumers (Glen Buchenbach C-44/17).

Protection Grounds of GI: Sub D Any Other Practice

• Cases that may give the impression the product is the PGI-product, such as copying the shape (Morbier C-490/19).

Capability to Distinguish

• sign must possess the necessary degree of specificity as opposed to being a mere concept.

Mode of Representation

• A trade mark may consist of various types of signs, including words, names, colors, shapes, letters, numerals, sounds, or smells. Traditionally, a sign had to be capable of graphic representation.

Absolute grounds for refusal

• Article 7(1)(b)–(d) EUTMR and Article 4(1)(b)–(d) TMD

• Lack distinctiveness (7(1)(b)).

• Consist exclusively of indications that may serve to designate characteristics of the goods or services (descriptive character, 7(1)(c)).

• Consist exclusively of signs that have become customary in the current language or honest and established trade practices (7(1)(d)).

Signs Excluded under Article 7 (1) (e) EUTMR

• Excluded from protection if they exclusively consist of a shape, or another characteristic, which

• (i) results from the nature of the goods themselves,

• (ii) is necessary to obtain a technical result, or

• (iii) gives substantial value to the goods.

Acquired Distinctiveness

• CJEU has identified criteria for assessing this, including the

• mark's market share

• the intensity and duration of use, the investment made in promotion,

• and survey evidence showing that the relevant public identifies the product's origin based on the mark.

 "Fair use"

• Article 14(1) EUTMR/TMD) allow third parties certain acts in the course of trade without infringing the mark, provided they are in accordance with honest practices.

• Examples include using one's own name or address, or using signs that are descriptive or otherwise non-distinctive.

Principle of regional exhaustion

• Proprietor cannot prevent the further commercialization of goods that have been put onto the market in the European Economic Area (EEA) by the proprietor or with their consent.

• However, the proprietor can oppose further commercialization if there is a legitimate reason, particularly if modifications like repackaging or relabelling of pharmaceutical products risk damaging the reputation of the trade mark.

GIs v. generic names

• Names of products that, despite originating from a place, region, or country, have become the common name of a product in the Union are defined as generic terms (Article 3(6) GI Regulation).

• Generic names are excluded from registration as GIs.

  • Determining whether a name is generic is done by considering the situation in the EU where the product originated, alongside consumption patterns throughout the Union.

Registered Geographical Indications are protected against:

• Any direct or indirect commercial use of the registered name for comparable products not complying with the specification, or use by way of "evocation".

• Any misleading use in labeling, advertising, or related documents concerning the product.

• Any practice liable to mislead the consumer concerning the true origin of the product.

Due Cause

•  a legitimate reason for using a trademark in a way that might otherwise be considered infringement, particularly when the trademark has a reputation.

• Defence: by justifying the use, preventing the trademark owner from having excessive control over the use of their mark when it doesn't harm the mark's distinctiveness or take unfair advantage of its reputation