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European IP Bulletin, Issue 29, February - Trade Mark

Trade Mark

7. Deutsche SiSi-Werke v Ohim

On 12 January 2006, the ECJ gave its judgement in Deutsche SiSi-Werke v OHIM, C-173/04 P.

The case at issue refers to an appeal by the German company Deutsche SiSi-Werke to a decision by the the Court of First Instance (CFI) of January 2004 which upheld two decisions of the Office for Harmonisation of the Internal Market (OHIM)  rejecting claims to register product shape marks due to lack of distinctiveness.

In 1997, the company had sought the registration of a three‑dimensional dimentional pouch as a form of fruit drinks packaging at OHIM but the claim was rejected because OHIM took the view that the product shape lacked distinctive character and hence registration would give the applicant a monopoly on that form of packaging. Under Article 7(1)(b) of Council Regulation EC No 40/94 on the Community Trade Mark, signs which are devoid of any distinctive character are unregistrable.

The ECJ rejected the appeal, deciding that the CFI had "not erred in law" in assessing the distinctiveness of the three-dimensional shapes'.

In it's judgement, the ECJ said that according to established case law, only marks which depart significantly from the norm or customs of the sector and thereby fulfil their essential function of indicating origin are not devoid of any distinctive character.

The ECJ ruled that the CFI had correctly found the claimed shape was not distinctive because this form of packaging for liquids was already in general use in the EU. The shape was not unusual enough for the average consumer to distinguish it as an indication of the specific commercial origin of products in this category.

According to the ECJ, the CFI had based its conclusion on proper criterion as the decision was not based on the possibility that the drinks sector may commonly use such pouches in the future, but on the finding that they are already commonly used.

The ECJ defended the CFI's finding that competitors in the fruit drinks market could use stand-up pouches in the future as a point made for the sake of completeness. The ECJ concluded by asserting that the CFI did not in any way base its findings on the interest of possible competitors, but limited itself to determining whether those trade marks enable the average consumer of fruit drinks and fruit juices to distinguish, without any possibility of confusion, the goods of the appellant from those of a different commercial origin.

8. Emanuel v Continental Shelf: Name of Fashion Designer as a Trade Mark

On 19 January 2006, the Advocate General (AG), Ruiz-Jarabo Colomer, handed down his opinion in Elizabeth Florence Emanuel v Continental Shelf 128 Ltd, C-259/04.

The English court, hearing the appeal by Emanuel of the Trade Mark Registry’s Hearing Officer’s decision to reject her application to revoke the trade mark bearing her name, had referred several questions to the European Court of Justice regarding the goodwill in a mark when it has been assigned.

Emanuel is the designer who designed the wedding dress for Princess Diana’s wedding. The trade mark bearing her name signifies prestige. When the trade mark was registered in 1997, it consisted of the words ELIZABETH EMANUEL with a heraldic device. However, when the trade mark was assigned to another party, that party changed the graphic arrangement, removed the heraldic device and registered the sign. According to Article 17 of Regulation No.40/94 and TRIPS Article 21, nothing prevents the transfer of trade mark rights and indeed, they are often transferred in commercial transactions.

 The primary purpose of trade marks is to allow the final user to identify the origin of the products or services, so as to distinguish them from those originated from elsewhere. The issue in this case was whether the change in ownership of a trade mark comprising the name of its owner was deceptive in any circumstances.

The AG held that:

• All consumers know that a fashion designer is entitled to transfer his or her business at any time and there is no need to grant extra protection;
• A name that has been transferred with the goodwill is not liable to deceive the public within the meaning of Article 3(1)(g) of Directive 89/104 even if it may give the mistaken impression; and
• The customer’s conflicting perception that the person is involved in the production process derives from the replacement of one trade mark owner by another does not deserve to be classified as deceit.

Therefore, the AG concluded:

• There is no deception of the public under Article 3(1)(g) of Directive 89/104 if the name is assigned with the goodwill; and
• The mere use of the mark does not deceive the public under Article 12(2)(b).

This case demonstrates that trade marks are special forms of property and are essential to commercial trade, and the transfer of a trade mark to another party may raise doubts as to whether the trade mark can be revoked. However, this case also shows that the Directive does not seek to annul trade marks when goods do not satisfy the expectations of the customer, because a particular person has ceased to be involved in their creation or manufacture. Further, the sign must, in any reasonably imaginable case, confuse the average customers in respect of the qualities and information in order to constitute deceit.

Thus, the AG followed ECJ precedent and gave a strict interpretation of revocation, requiring that the actual existence, or a sufficiently serious risk, of deception of the consumers. Goodwill is the essence of a legitimate transfer and lack of goodwill may give rise to  revocation.

 

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