The car might zoom, but the mark limps along ...

TDI: "Total Design for Infants"?

The trouble with registering a set of initials as a trade mark is that sometimes they stand for something. Knowing nothing of motor cars, this Kat would not have instantly recognised 'TDI' as standing for turbo(charged) diesel injection. He does have a car, but it's not very turbocharged, doesn't have a diesel engine and seems to cope quite well without injections (or is there something the car should be vaccinated against?). With this in mind, the Kat brings news of today's General Court decision in Case T‑318/09, Audi AG and Volkswagen AG v Office for Harmonisation in the Internal Market.

In May 2003 Audi and Volkswagen applied to register as a Community trade mark the word sign TDI, for ‘vehicles and constructive parts thereof’ (Class 12). No, said the examiner: TDI was descriptive, lacked distinctive quality and couldn't be shown to have been accepted as a trade mark by the public.  The Board of Appeal agreed, adding that the acquisition of distinctive character through use had to be proved throughout the European Union, but there was no such evidence in respect of Denmark, The Netherlands and Ireland [what a remarkable coincidence, chortles the IPKat: DTI is the initial letters of Denmark, The Netherlands and Ireland]. Even regarding the rest of the EU, the evidence furnished was not capable of proving acceptance of the sign applied for in so far as it did not show that that mark enabled consumers from those countries to identify the commercial origin of the goods in question.

This morning the General Court dismissed Audi's and VW's further appeals on every imaginable ground (or so it seems: misapplication of rules barring registration of descriptive and distinctive signs, failing to apply correct test for acquisition of distinctive character through use, not letting them get away with registration when it had been registered elsewhere, allowing other initials to be registered but not theirs, breach of natural justice, failure to examine the evidence, prejudice against men with moustaches ...).  Significantly, the Kat dredged this little gem out of another sadly long judgment:

"71 Contrary to the applicants’ contentions, the Board of Appeal did not find that there had been no use as a trade mark on the basis of circular reasoning in assuming that, as the sign is descriptive, it could not be used as a trade mark.

72 ... the Board of Appeal analysed a number of advertisements submitted by the applicants. ... [A]s the Board of Appeal rightly found, that advertising material clearly gives the relevant public the impression that the sign TDI was not used to identify the commercial origin of the goods in question, but to describe a characteristic of the motor vehicles in that material, namely that of being equipped with a direct fuel-injection diesel engine.

73 In addition, in the advertising material submitted by the applicants and included in the administrative file, the sign TDI always appears with another mark belonging to the applicants, such as the trade marks Audi, VW or Volkswagen [Just look at that! Remember how Sir Robin Jacob characterised "limping marks" and got a bit of a ticking off from the Court of Appeal in Philips v Remington? Isn't this exactly what he was talking about?]. The Court has, however, held on numerous occasions that advertising material on which a sign which is devoid of any distinctive character always appears with other marks which, by contrast, do have such distinctive character does not constitute proof that the public perceives the sign applied for as a mark which indicates the commercial origin of the goods ... [No problem here, then, says Merpel. Audi should start selling cars and parts that are devoid of any branding except 'TDI', then come back to Alicante later ...]. ...".

T-D-M here

Some light reading

The IPKat would like to take the opportunity to wish a Happy 40th Birthday to the Benelux Office for Intellectual Property (BOIP). Originally born as the Benelux Trade Marks Office on 1 January 1971, the BOIP is now a key player in the international intellectual property landscape, and more specifically, in the international registration systems for trade marks and designs administered by WIPO.

To commemorate the occasion, the BOIP published In Varietate Concordia?: National and European Trademarks living apart together. The work is collection of essays by well known authors on new problems in trade mark law:

• Charles Gielen, ‘Has Benelux law influenced European trade mark law?’ (in Dutch);
• Mireille Buydens, ‘Can you have a distinctive mark and a risk of confusion?’ (in French);
• Sylvie Mandel, ‘Use of marks on the internet’ (in French);
• Jeremy Phillips, ‘Interpreting Territorial Use of a Community Trade Mark in Light of the Joint Statements’ (in English);
• Mihaly Ficsor, ‘The Territorial Dimension of the Genuine Use Requirement for Community Trade Marks’ (in English);
• Katia Manhaeve, ‘Territorial Usage of Community trade marks: from a user’s perspective’ (in French);
• Daniel Bereskin, ‘The Territorial Effect of Trade Mark Registration: a North American Perspective’ (in English);
• Tobias Cohen Jehoram and Henriette van Helden, ‘Famous, more famous, the most famous: protection of goodwill in trade marks’ (in Dutch);
  
• Marten Bouma, ‘Strategic choices concerning the protection of marks’ (in Dutch);
• Patrick Marichal, ‘All roads lead to Rome are via The Hague, Geneva or Alicante’ (in French);
• Richard Ashmead, ‘An Approximation of Harmonisation and Differences in EU Law & Practice on Class Headings’ (in English);
• Roland Knaak and Philipp Venohr, ‘Coexistence in Future European Trade Mark Law’ (in English).
  

The book is well worth reading (even with Babelfish translations if you are not fluent in all three languages) for the sustained treatment of trade mark issues arising at the national, community and international levels. It also has the honour of being the first book this Kat owns which comes with its own commemorative book box.

The IPKat notes some useful BOIP trivia: the Office itself claims the fastest trade mark processing times in the world and was ranked first in terms of overall performance in an international survey published by Managing Intellectual Property in May 2010. Merpel suggests that this trivia should give the UK’s IPO something to aspire to …
.
Bibliographical details: hardback, pp 184, ISBN 978-90-811477-3-6. Available only if you are a friend of the BOIP, or a friend of a friend, it seems, since no purchase details are provided. Rupture factor: minimal. Bookcase show-off factor: high.

Return of the Chocolate Bunnies

Just when you thought it was safe to go back to the confectioners, Europe's chocolate bunnies have announced their return.  The Curia website brings news of the appeal which has been lodged by Chocoladefabriken Lindt & Sprüngli AG against the judgment of the General Court (First Chamber) in Case T-336/08 Chocoladefabriken Lindt & Sprüngli AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs).  For those of you who are new to this weblog, that was the ruling last Christmas on the registrability of the shape of Easter bunnies as Community trade marks (see here for background).

The appeal has been given a brand-new case reference number (Case C-98/11 P) and, for those folk who appreciate legal details, where are the pleas in law and main arguments:

The present appeal is brought against the judgment of the General Court, by which it dismissed the appellant's claim seeking annulment of the Decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) of 11 June 2008 on the rejection of its application for registration of a three-dimensional mark comprising the shape of a chocolate rabbit with a red band. 

The appellant bases its appeal on an infringement of Article 7(1)(b) and Article 7(3) of Regulation No 40/94. 

As regards the first ground of appeal, concerning the assessment of the marks' distinctive character, neither the assessment by OHIM nor the judicial review by the General Court satisfied the requirements in law, since both decisions were based on conjecture. OHIM speculated that the finding that a chocolate Easter bunny is a typical shape for Easter is valid for all Member States of the European Union and that that was not in dispute. That assertion has, however, always been in dispute, since the appellant has expressly disputed that assertion, adducing substantial evidence. OHIM and the General Court should have taken that into account in order correctly to fulfil their obligation of assessment under Article 74(1) of Regulation No 40/94. Further, the General Court reached the conclusion that the use of gold foil to wrap chocolate Easter bunnies is usual on the market, despite the fact that the judgment referred to only three other kinds wrapped in gold foil. Such a small number of goods cannot, in the view of the appellant, lead to that feature being regarded as 'usual in the market'. 

The fact that the assumption made by the General Court, that the mark has no inherent distinctive character throughout the European Union, is unfounded also becomes clear from the fact that the mark in question is registered as a trade mark in 15 Member States of the European Union. 

The second ground of appeal concerns the ruling of the General Court that the mark must have acquired distinctive character through use throughout the European Union, which is incorrect for two reasons. 

First, the General Court misses the point that distinctive character must be acquired by use only in those places where the mark has no inherent distinctive character. In the 15 Member States where the mark in question has inherent distinctive character, there is no need to require the acquisition of distinctive character through use. If the view were to be accepted that, as part of the assessment, distinctive character had to be ascertained again in the individual Member States, the factual circumstances pertaining there would have to be established. Since, pursuant to Article 74 of the regulation, distinctive character is to be assessed by OHIM of its own motion, OHIM should thus have made specific findings for each individual Member State of the European Union. OHIM and the General Court failed to do so. 

Second, the considerations of the General Court cannot be reconciled with the principle of homogeneity of Community trade marks. In an assessment of registrability and, specifically in this case, distinctive character, the European Union is to be regarded as a common homogeneous market. If, as regards a significant part of the total population of the European Union, there is inherent distinctive character, that must also be sufficient for protection throughout the European market. That approach alone ensures that current national entities continue, despite their actual size, to be regarded as smaller or larger as necessary.

The IPKat is not saying anything at all about the over-intellectualisation of European trade mark law: he just wishes he could say with confidence that he understands what is meant by "That approach alone ensures that current national entities continue, despite their actual size, to be regarded as smaller or larger as necessary".  Merpel says, the funny thing about cases involving rabbits is that you start off with just a couple of them and, before you know it, they're all over the place ...

Why bunnies shouldn't eat chocolate here
Why are young rabbits called bunnies? here
Bunny boiler here
Vampire rabbit here

ONEL edges closer to resolution as Hague Court pops the questions

Does use of a Community trade mark in just one of the 27 Member States count as "genuine use" of that trade mark and, if so, in what circumstances will it do so? This question is now a little bit nearer resolution than it was before.  Thank you, Camille Janssen (Benelux Office for Intellectual Property) for sending the IPKat this handy, if admittedly unofficial, translation from the original Dutch of the final form of the wording of the questions referred last week by the Hof Den Haag to the Court of Justice of the European Union (ECJ) for a preliminary ruling in Case number: 200.057.983/01 (ONEL/OMEL, on which please refer to earlier IPKat posts here, here, here and here, among others):

"Questions referred for a preliminary ruling

18. ... the Court feels that it is necessary to refer the following questions to the Court of Justice of the European Union for a preliminary ruling:

1. Should Article 15(1) of Regulation (EC) no. 207/2009 on the Community Trade Mark be interpreted in such a manner that it is sufficient, in order to qualify as genuine use of a Community trade mark, for that trade mark to be used within the frontiers of a single Member State, provided that this use, if it concerned a national trade mark, would qualify as genuine use in that Member State (cf. Joint Statement no. 10 on Article 15 of Council Regulation (EC) no. 40/94 dated 20 December 1993 and the OHIM’s Opposition Guidelines)?

2. If Question 1 is to be answered in the negative, does such use of a Community trade mark within a single Member State as described above not in any instance qualify as genuine use in the Community as defined in Article 15(1) of Regulation (EC) no. 207/2009?

3. If use of a Community trade mark within a single Member State does not in any instance qualify as genuine use in the Community, to what requirements – in addition to other factors – should the territorial scope of the use of a Community trade mark be subject for purposes of determining genuine use in the Community?

4. Alternatively, should – in deviation from the assumption used above – Article 15 of the Council Regulation on the Community Trade Mark be interpreted in such a manner that determination of genuine use in the Community is made wholly independent from the frontiers of the Member States’ respective territories (and for example market shares (product/geographic markets) be taken as a point of reference)?

Decision

The Court:
- requests the Court of Justice of the European Union to rule on the questions set out in par. 18 on the interpretation of the Regulation and Directive specified above;
- defers all further judgment and suspends these proceedings until the Court of Justice
of the European Union has ruled on those questions.

This judgment was handed down by J.C. Fasseur-van Santen, A.D. Kiers-Becking and M.Y.
Bonneur, and was pronounced in open session on 1 February 2011, in the presence of the
court registrar".

Says Merpel, this is one ruling from the ECJ which will be of genuine use to trade mark owners and their professional representatives ...