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European IP Bulletin, Issue 24, July - Trade Mark
Trade Mark
8. The UK’s Logo for the EU Presidency Under Attack
The UK’s logo for the presidency to the European Union is under attack from the Euro-sceptic Bruges Group, which is threatening legal action for copyright infringement to stop the logo being used, unless the Foreign Office can explain the similarity between the two logos.
In a letter to Jack Straw, dated 1 July 2005, Lord Lamont, the co-chair of the Bruges Group, wrote: “I am writing to draw your attention to the curious fact that the logo that has been chosen to represent the British Presidency of the European Union is strikingly similar to a Bruges Group logo […] no doubt you are aware that breach of copyright is a serious matter […] if you cannot adequately explain those similarities then we may seek an injunction to stop the government using it and demand compensation”.
Both logos show swans flying in a “V” formation. However, while the Bruges Group logo depicts 15 purple swans with the name of the organisation overlaid on the “V” formation, the UK presidency logo shows 12 blue swans next to golden lettering.
The design concept of the EU logo, which involves 12 swans in flight, 12 being the number of stars on the EU flag, is a metaphor for the EU since swans fly in formation using a system of leadership and co-operation to fly more efficiently. The design, created by graphic designer Michael Johnson, was selected following a competitive tender. It will be the main visual image for the British Presidency. Johnson, who is considering suing the Bruges Group for defamation, said he had never seen the logo of the Bruges Group before.
The Foreign Office said that the design, which has been registered as a trade mark, was original and that any suggestion of plagiarism was “fanciful”. While there are similarity between the two logos, it may be hard for the Bruges Group to prove copyright infringement since the logo is based on a natural occurrence as it represents what birds do when they fly.
9. Directive 2005/29/ec: the ‘Unfair Commercial Practices Directive’
Directive 2005/29/EC on Unfair Commercial Practices was signed by the European Parliament and the Council on 11 May 2005. The Directive aims to clarify consumers’ rights and harmonise rules on business-to-consumer commercial practices within EU by defining and banning “sharp practices”. Although the main objective of the Directive is consumer protection, it also aims to protect indirectly legitimate businesses from their competitors who do not play by the rules. Some of the prohibited activities have implications for the protection of intellectual property, especially trade marks. The Directive does not cover unfair commercial practices which harm only competitors’ economic interests or which relate to transactions between traders.
Amendments are also made to Council Directive 84/450/EEC concerning misleading and comparative advertising. The new Directive does not, however, affect advertising that misleads business, but which is not misleading for consumers. Further, accepted advertising and marketing practices, such as legitimate product placement or brand differentiation, are not affected. These conducts may legitimately affect consumers’ perceptions of products and influence their behaviour without impairing the consumer’s ability to make an informed decision.
The Directive is structured so that it first includes a general prohibition of unfair commercial practices, following which misleading commercial practices and aggressive commercial practices are defined and prohibited. Further, a list (“black list”) of commercial practices that shall be regarded as unfair in all circumstances is annexed. Regarding trade marks, the Directive provides that a commercial practice shall be regarded as misleading if it causes or is likely to cause the average consumer to take a transactional decision that he would not have taken otherwise, and that practice involves any marketing of a product which creates confusion with any products, trade marks, trade names or other distinguishing marks of a competitor. The “black list” also prohibits promotion of a product in a way that the consumer is deliberately misled in respect of the manufacturer of a particular product.
According to the EU Commission press release in relation to the Directive, the only real losers from this Directive will be rogue traders and rip-off merchants who exploit the gaps and differences between national laws to cheat consumers. The aim is to decrease the cost to business of exercising internal market freedoms and increase consumer confidence in the internal (cross border) market.
10. Eurocermex Three-Dimensional Trade Mark Finally Defeated
By the ECJ
On 30 June 2005, Eurocermex, European licensee of the beer brand Corona, received a final rejection of its trade mark application from the European Court of Justice (ECJ) in Eurocermex SA v OHIM, case C-286/04P. The application included a transparent bottle filled with a yellow liquid having a long neck in which a slice of lemon with a green skin is plugged. This application was previously rejected by an OHIM examiner, the First Board of Appeal of OHIM and the Court of First Instance (CFI).
The appellant had based its appeal to the ECJ on two grounds:
- It was incorrect for the CFI to rule that the application was devoid of distinctive character under Article 7(1)(b) of the Community Trade Mark Regulation 40/94, based on three reasons: (a) it did not consider the mark as a whole; (b) the mark was capable of having distinctive character: and (c) that OHIM did not properly substantiate its reasons for rejecting the mark.
- The CFI was wrong to say that the mark had not become distinctive through use under Article 7(3).
The ECJ stated that although the average consumer normally perceives a mark as a whole, this does not mean that the competent authority may not first examine each of the individual features of the get-up of that mark in turn. The ECJ concluded that the approach taken by the CFI was correct, in that it concluded that the individual features lacked distinctive character separately, and that this made it unlikely that the combination would therefore the distinctive, but the CFI nevertheless considered the overall impression created by mark as a whole, conveyed by the shape, and the arrangement of the colours of the mark applied for.
The second and third limbs of the appellant’s first ground of appeal were declared to be inadmissible because the appellant merely asserted the arguments previously made to that CFI without specifying what error of law the CFI made in interpreting and applying Article 7(1)(b). The ECJ stated that this amounted to no more than a request for re-examination of the application submitted to the CFI, and a request for the ECJ to substitute its own appraisal of the facts for that of the CFI, both of which fell outside the jurisdiction of the ECJ. For the same reason, the second ground of appeal was dismissed, as it amounted to a request for the ECJ to reappraise the facts.
The Eurocermex case reflects the continuous reluctance of courts
to permit the registration of three-dimensional marks. In
particular, it highlights that a combination of non-distinctive
elements is unlikely to result in a registered trade mark.
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