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European IP Bulletin, Issue 22, May - Trade Mark

Trade Mark

9.  WIPO Member States Agree Basic Text for Revised Trade Mark Law Treaty

On 28 April 2005, the World Intellectual Property Organisation (WIPO) Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications agreed on a text to form the basis of negotiations at a Diplomatic Conference for the Adoption of the Revised Trademark Law Treaty in March 2006. According to WIPO, there seems to be a certain level of consensus among members, as the proposal does not include any alternative texts.

The 1994 Trademark Law Treaty (TLT), which currently has 33 signatories, successfully introduced standard procedures to be followed before national trade mark offices. The aim of the current negotiations is to update the TLT in order to keep pace with developments in telecommunications and to allow for changes to its administration. The main revisions proposed are provisions on electronic filing of trade mark applications and associated communications; the formalities concerning the representation of all types of marks, including visible signs as well as non-visible signs; the recording of trade mark licenses; and relief measures when certain time limits have been missed.

In a preparatory meeting for the March 2006 Conference, it was decided that member states of WIPO and certain inter-governmental organisations (the European Community, the African Intellectual Property Organisation and African Regional Intellectual Property Organisation) should be invited to the Conference as member delegations. Other non-member UN countries and organisations would also be invited as observers. As the list of current signatories remains very short, it seems that WIPO is trying hard to persuade new members to join the TLT or at least to participate in the discussion leading to harmonisation of trade mark laws.

10. Final Rulings Adopted in WTO Geographical Indications Dispute

On 20 April 2005, the Dispute Settlement Body of the WTO adopted the Panel report on the European Communities’ protection of trade marks and geographical indications for agricultural products and foodstuffs. The report was made public on 15 March 2005.

The dispute related to claims from Australia and the United States that provisions under the 1992 EC Regulation on the protection of geographical indications violated WTO national treatment rules.

The following submissions were made by Australia and the United States:

• While the Regulation allows EC rightholders to apply directly to register and protect their geographical indications for EC products, non-EC nationals must rely on their governments to apply for protection in the EC on their behalf, as well as to object to geographical indications applications in the EC;
• Under the Regulation, foreign governments must adopt a system of geographical indications protection that mirrors that of the EC and that provides reciprocal protection to EC products in order that foreign rightholders be able to benefit from the protection of the EC Regulation;
• The Regulation is inconsistent with Article 16.1 of the TRIPS Agreement because it does not ensure that a trade mark owner may prevent the use of geographical indications which would result in a likelihood of confusion with a prior trade mark.

The WTO Panel found that the requirement for government level intervention and the requirement of reciprocal protection for EC products discriminates in favour of EC products and EC geographical indications of rightholders and against the rightholders of and products subject to geographical indications of other WTO Members. In particular, it found that these requirements violated Article III:4 of the WTO General Agreement on Tariffs and Trade (GATT 1994) and Article 3.1 of the TRIPS Agreement.

The Panel rejected the claim that the Regulation violated Article 16.1 of the TRIPS Agreement in allowing for the co-existence of a geographical indication with a similar and pre-existing product trade mark. It found that in this case co-existence was justified by Article 17 of the TRIPS Agreement, which allows fair use exceptions to the protection of trade marks. However, the Panel stated that the co-existence exception applied for geographical indications only as they appeared in the EU register and not to translations, signs, or other forms of indication, unless they are specifically entered into the register. The Panel have therefore recommended that the EC bring its Regulations into conformity with TRIPs and GATT 1994. not time frame has yet been set for this however, and the parties have the option to appeal.

In statements issued after the ruling, all three parties claimed at least partial victory. While Australia and the United States were satisfied that the Panel recognised the discriminatory nature of the Regulation, the EC was pleased that the Panel found the key aspects of the EC regime on geographical indications to be compatible with WTO rules.

11. Adidas v Marca at the Court of Appeal in the Netherlands

On 29 March 2005, the Dutch Court of Appeal in ‘s-Hertogenbosch delivered its judgment in Adidas v Marca. The case was between Adidas AG and Adidas Benelux BV (“Adidas”) on the one side and various other parties on the other, including Marca Mode, C&A Netherland, H&M Hennes & Maurits Netherlands BV and Vendex KBB Nederland BV (“Marca”).

The case involves the use of a two-stripe design on clothing by Marca. In 1996, Adidas, owner of the well-known three-stripe emblem, claimed that based on the Benelux Trademarks Act, Marca should stop using signs similar to their three-stripe design, including Marca’s use of a two-stripe design on clothing.

Marca sought a declaration of non-infringement arguing that the two-stripe design should merely be viewed as clothing decoration, and further, that it was highly unlikely that the relevant public would confuse the signs (within the context of the Benelux Trademarks Act) as the public is aware of the fact that the Adidas emblem consists of three stripes.

The Court of Appeal ruled that despite the fact that the Adidas sign had acquired a high degree of distinctiveness and thus a broad scope of protection, this did not necessarily forbid other parties from using stripes designs. The Court said that the fact that Marca used a two-stripe as opposed to a three-stripe design greatly reduced any likelihood of confusion between Adidas and Marca’s signs.

The Court made specific reference to the protection given to trade marks with a reputation, as provided in Article 13A(1)(c) of the Benelux Trademarks Act. In this respect, the Court stated that there could be infringement of such a mark where the relevant public could establish a link between the sign and the mark. The Court ruled that in the present case, Adidas had not sufficiently demonstrated the presence of such a link.

However, the Court ruled that it was unable to provide Marca with a declaration of non-infringement for the future. In reaching its conclusion, the Court noted that trade mark law cases have to be judged on an individual basis.

The case supports the proposition that in the future use of a two-stripe design on clothing will not necessarily infringe the Adidas trade mark. However, the Court limited the scope of the decision by clearly stating that any future claims will be assessed on a case-by-case basis.

 

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