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European IP Bulletin, Issue 20, March - Trade Mark
Trade Mark
10. Feta Cheese Protection Reaches ECJ
The Danish and German Governments have mounted a challenge to the European
Commission’s decision to grant protected designation of origin status to feta
cheese in an action before the ECJ.
Feta cheese was first produced in Greece thousands of years ago, and today
Greece makes 115,000 tonnes of feta, much of which is destined for domestic
consumption. However, the cheese is also produced outside Greece and Denmark is
the second-largest European producer.
In 2002, the European Commission granted protected designation of origin status
to the term “feta”. This means that, from 2007, only Greek cheese producers will
be able to call their products feta. The German and Danish governments have
protested that feta is a generic designation without a convenient substitute
term. They claim that feta does not refer to any specific geographical area and
has been used outside Greece for many years.
The Danish Dairy Board has also highlighted the substantial cost of introducing
a new name for the cheese that is currently known as feta. This concern has been
echoed by Shepherd’s Purse, Britain’s only feta producer. Shepherd’s Purse is
particularly perturbed by the possible need to re-brand since it claims that the
labels on its product make it clear that it is selling Yorkshire feta, not Greek
feta.
The ECJ is expected to issue a judgment in the autumn of 2005. If the Danish and
Greek governments are unsuccessful, non-Greek feta producers will have to find
an alternative way of describing the feta-like qualities of their cheese to
consumers. There is also the fear that a pro-Greek ECJ decision will result in
producers of other cheese that was originally produced in a particular locality
but currently produced throughout the EU, also seeking to obtain PDO protection.
11. Trade Mark Decision on Registering Famous Names (Linkin Park) on Posters
On 7 Feb 2005, Mr Richard Arnold QC dismissed the appeal made
by Linkin Park LLC on registration of the trade mark LINKIN PARK
in respect of “printed matter, posters and poster books” in
Class 16 under section 3(1)(b) and (c) of the Trade Marks Act
1994.
The issue in dispute in the appeal was whether the Registry was
correct in refusing the registration of the names of celebrities
on goods such as posters. The hearing officer had held that
LINKIN PARK (“the mark”) was the name of a music band and, as
such, when used on a poster, it represented the characteristics
of the goods and was insufficient to serve in trade to
distinguish the goods. The earlier case law, Doublemint and Postkantoor, emphasised that a word must be refused
registration under the provision if at least one of its possible
meanings designates a characteristic of the goods or services
concerned.
The applicant appealed that the hearing officer erred on four
grounds:
- LINKIN PARK was coined by the Group and was therefore an invented word;
- Subject matter was not a “characteristic” of the Goods within the meaning of section 3(1)(c);
- It was wrong to differentiate between goods such as posters and other goods; and
- The decision was inconsistent with certain other registrations.
Mr. Arnold rejected the appeal on the following grounds:
- On the date of application, LINKIN PARK had already acquired a well established meaning in relation to the music band, therefore it was not meaningless. A mark which is distinctive for one class of goods may be descriptive in the other.
- It would be difficult for the traders to market the posters without using the mark. The correct test should be whether the mark sought to be registered is capable of being used descriptively.
- Although the relevant customer will be the fans of the group, the applicant failed to show evidence that upon registration of the mark, customers will expect the posters to be licensed by the group.
Although the applicant relied on the previous case of Arsenal v Reed in support of its claim, that decision
concerned marks relating to sporting teams, while this decision
created different considerations in respect of the names of
performers or celebrities.
As the European Court of Justice has pointed out frequently, the
essential function of a trademark is to enable consumers or
end-users to identify the origin of the marketed goods or
services without any possibility of confusion, and to be able to
distinguish the goods or services from those having another
origin. In this case, the ECJ indicated that a famous name was
likely to be perceived as merely descriptive of the subject
matter such as a poster and could not be accepted by consumers
as functioning as a trademark.
This case shows that the application of trade marks on different
goods and services will not necessary have the same result. It
is imperative for future applicants to be careful when
registering their marks to know the nature of the goods and
services to which their marks ought to apply.
10. El Corte Ingles V OHIM (Emilio Pucci)
On 13 December 2004, The European Court of First Instance produced its
decision in El Corte Inglés v Office for Harmonisation in the Internal Market (OHIM)
– Pucci (Case T-8/03).
In 1996, the Italian company “Emilio Pucci” submitted an application for
Community Trade Mark (CTM) in respect to goods in classes 3, 18, 24 and 24. In
April 1998, the application was approved and in July of the same year El Corte
Inglés filed a notice of opposition, on the ground of risk of confusion in
respect to its “Emidio Tucci” Spanish trade marks. “Emidio Tucci” was already
registered for classes 3 and 25 and OHIM allowed their opposition and did not
register the “Emilio Pucci” marks in those classes. However the OHIM did
register Emilio Pucci under class 24 and for certain products in class 18. Both
El Corte Inglés and Emilio Pucci lodged appeals against the OHIM decision. In
the second instance, OHIM annulled the previous opposition under class 18, while
the rest of the decision was confirmed.
The principal claim before the Court was in respect of the importance of
'complementary character' between the products of the different classes. If
accepted, this character would grant a wider protection to the right holder. The
Court reiterated that the likelihood of confusion must be assessed
comprehensively and, in particular, should consider the following relevant
factors: nature, end users, method of use, and whether the trade marks are in
competition with each other or are complementary. The Court did not find that
such elements presented enough similarities among the categories considered.
Essentially the use of one was not indispensable for the use of the other.
The second claim raised concerned the arguably superior reputation of Emidio
Tucci trade marks within the relevant territory. The Court held that higher than
normal distinctiveness is to be proven by objective criteria such as market
share, intensity, geographical extent and duration of trade mark use, together
with the amount of promotional investment. The material brought by the claimant
was held to be insufficient proof and the second claim was also dismissed.
The judgement on both claims followed the relevant jurisprudence, explicitly set
out in earlier cases (C-251/95 and C-39/97).
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