EJTN Intellectual property law seminar 2017 Latest EU developments in trademark law Laura Fresco HOYNG ROKH MONEGIER LLP 1
TOPICS ▪ New EU trademark regulation ▪ Scope of injunction ▪ Shape marks ▪ (Lack of) distinctiveness ▪ Exhaustion 2
New EU trademark regulation ▪ 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 3
Scope of the injunction 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 … 4
Scope of the injunction COMBIT/ COMMIT CJEU 22 September 2016, C-223/15 ▪ 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 5
Scope of the injunction ORNUA/T&S (KERRYGOLD) CJEU 20 July 2017, C-93/16 ▪ 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 6
Shape marks SEVEN TOWNS / SIMBA (RUBIKS CUBE) CJEU 10 November 2016, C-30/15 P Valid mark for ‘ three-dimensional puzzles ’? 7
Shape marks SEVEN TOWNS / SIMBA (RUBIKS CUBE) CJEU 10 November 2016, C-30/15 P ▪ 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 … 8
Shape marks YOSHIDA/PI DESIGN CJEU 11 May 2017, C-337/12 Valid mark for knives? And what about kitchen utensils without handles? 9
Shape marks YOSHIDA/PI DESIGN CJEU 11 May 2017, C-337/12 ▪ 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 10
Shape mark – substantial value (?) LOUBOUTIN/VAN HAREN Concl. AG CJEU 22 juni 2017, C-163/16 ▪ 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 … 11
Distinctive capacity STORCK/EUIPO CJEU 4 May 2017, C-417/16 Valid trade mark for chocolate products? EUIPO, BoA, GCEU: no 12
Distinctive capacity STORCK/EUIPO CJEU 4 May 2017, C-417/16 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) 13
Distinctive capacity MONDELEZ/NESTLÉ GCEU 15 December 2016, T-112/113 ▪ 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’.” 14
Distinctive capacity MARÍN/ABADIA (LA MILLA DE ORO) CJEU 6 July 2017, C-139/16 ▪ 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 15
Distinctive capacity MARÍN/ABADIA (LA MILLA DE ORO) CJEU 6 July 2017, C-139/16 ▪ 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 16
Exhaustion - repackaging FERRING LAEGEMIDLER/ ORIFARM CJEU 10 November 2016, C-297/15 Trademark rights exhausted when imported products are repackaged for individual sale in the country of import? 17
Exhaustion - repackaging FERRING LAEGEMIDLER/ ORIFARM CJEU 10 November 2016, C-297/15 ▪ 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) 18
Thank you! 19
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