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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