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European IP Bulletin, Issue 15, September - Trade Mark
Trade Mark
10. Coffee Visits CFI In Consumer Interest
On 15 July 2004, the CFI gave its judgment in the case of Douwe Egberts NV v Westrom Pharma NV C-239/52.
This case arose pursuant to a reference to CFI by Rechtbank van Koophandel (Commercial Court) te Hasselt for a preliminary ruling on the interpretation and relationship between Article 28 of the EC Treaty, Article 2 of Directive 1994/4/EC relating to coffee extracts and chicory extracts, and Article 18 of Directive 2000/13/EC on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs.
The reference was made in the course of a dispute concerning the marketing in Belgium of a product called ‘BynaSvelte Cafe’ under conditions which, according to Douwe Egberts NV, ran counter to the national provisions on advertising and labelling of foodstuffs. Douwe Egberts NV claimed that the statements on the jar about weight control and slimming properties used by Westrom Pharma infringed various national legislative provisions, namely those of Royal Decree of 5 March 1987 relating to coffee and coffee substitutes, which prohibit such labelling.
As the outcome of the dispute depended on the interpretation of the Community law and on assessment of the validity of Directive 1999/4, the Belgian Commercial Court stayed the proceedings and referred the following questions to the CFI for a preliminary ruling:
- Whether, when products mentioned in the Annex to Directive 1999/4 are marketed, exclusively the product names, such as invented or trade name may be used, or whether, alongside those product names, others names such as invented or trade names may also be used
- Whether Articles 28 EC and 18 of Directive 2000/13 preclude national legislation which prohibits references to ‘slimming’ and to ‘medical recommendations, attestations, declarations or statements of approval’ in the labelling, presentation and advertising of foodstuffs.
CFI laid down the following principles of law in response to the questions raised:
- Article 2 of Directive 1999/4/EC must be interpreted as meaning that, when products mentioned in the Annex to the Directive are marketed, other names such as invented or trade names are not precluded from being used alongside the product names
- Article 18 of Directive 2000/13/EC must be interpreted as precluding national legislation such as Belgian legislation, which prohibits references to medical recommendations, attestations, declarations or statements of approval in the labelling and presentation of foodstuffs
- Articles 28 EC and 30 EC must be interpreted as precluding national legislations which prohibit references to ‘slimming’ and medical recommendations, attestations, declarations or statements of approval’ in the advertising of foodstuffs imported from other Member States.
11. ECJ Allows Substitution of Opponent In CTM Dispute
On 27 July 2004, the Court of First Instance issued an order in Gerolsteiner Brunnen GmbH & Co v OHIM – Kerry Spring, Case T-131/03.
Gerolsteiner was the proprietor of a German trade mark which it used to oppose an application to file a CTM by the intervener, Kerry Spring, made in 1997. Gerolsteiner opposed the application in 1998 but its opposition was rejected in 2002 and its appeal was dismissed by the Board of Appeal in January 2003. In February 2003 Gerolsteiner appealed to the CFI. However, in December 2003, Gerolsteiner informed the CFI that it had transferred the trade mark on which the opposition was based to Sinziger Mineralbrunnen and that Sinziger Mineralbrunnen wished to be substituted for Gerolsteiner in the dispute before the CFI. OHIM, Kerry and Gerolsteiner had no objections to the substitution taking place.
The CFI authorised the substitution of Sinziger for Gerolsteiner, finding that it may authorise a substitution of a new owner for the original owner where an intellectual property right that is the subject of a dispute is transferred to a new owner. In this situation the new owner submits his claim through the original owner who is a party to the dispute. However, this substitution can only take place where the original owner of the IP right has no objection and the CFI, after hearing the other parties to the dispute, considers that the substitution is appropriate.
Since there is no provision in the Statute of the Court of Justice or the Rules of Procedure of the Court of First Instance expressly governing the substitution of one party for another, the provisions of Arts.115 and 116 (which cover intervention) were applied by analogy. This meant that the new owner of the IP right had to accept the dispute in the state that it was in at the time of the substitution.
Although this case involved Community trade marks, there seems to be no reason why it should not apply to disputes involving other intellectual property rights that may come before the EU Courts. In fact, this seems to have been envisaged by the CFI.
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