Publications
European IP Bulletin, Issue 27, November - Trade Mark
Trade Mark
7. Thomson Will Sell Without ‘Life’
The European Court of Justice (ECJ) ruled in a case referred by the Oberlandesgericht (High Regional Court) Düsseldorf in respect of the interpretation of Article 5(1)(b) of the First Council Directive 89/104/EEC to approximate the laws of Member States concerning trade marks, which deals with the likelihood of confusion and association between two signs.MEDION is the owner in Germany of the trade mark “LIFE”, registered for leisure electronic devices. THOMSON is part of one of the world’s leading companies in the leisure electronic devices sector and sells some products under the name “THOMSON LIFE”.
MEDION brought an action against THOMSON before the Landgericht (Regional Court) Düsseldorf for trade mark infringement and requested that THOMSON be prevented from using the sign “THOMSON LIFE” to sell certain electronic devices. The Landgericht rejected the application by stating that in the case there was no likelihood of confusion with the trade mark “LIFE”. MEDION appealed the decision to the Oberlandesgericht Düsseldorf.
The Oberlandesgericht Düsseldorf, said that according to the case-law of the Federal Court of Justice, based on a theory called ‘Prägetheorie' (theory of the conveyed impression), to ascertain whether there is likelihood of confusion between two signs, one has to look at the overall impression conveyed by each of the two signs to assess whether the common component of the composite sign characterises the mark and the other components are secondary to the overall impression. There is no likelihood of confusion if the common component merely contributes to the overall impression.
The question referred for a preliminary ruling was “whether Article 5(1)(b) is to be interpreted as meaning that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another and a registered mark which has normal distinctiveness and which, although it does not determine by itself the overall impression conveyed by the composite sign, has an independent distinctive role therein”.
The ECJ held that in ascertaining the likelihood of confusion between two signs, the appreciation must be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components. It also said that in certain circumstances the overall impression conveyed to the public of composite signs can be dominated by one or more of its components. Additionally, the Court stated that a finding of the likelihood of confusion should not be subject to the fact that the earlier mark in the composite sign is dominant, otherwise the owner of the earlier mark would be deprived of his rights when the mark composing the composite mark has no dominant role in it. Therefore, to establish the likelihood of confusion it suffices that the public could deem the composite mark related to another registered mark if the latter has a distinctive role within the composite sign.
On those grounds, the Court ruled that, where the goods or services are identical, there may be a likelihood of confusion by the public where the contested sign merely juxtaposes a distinctive registered mark which has a distinctive role within to the composite mark.
8. Eden Sarl v OHIM
On 27 October 2005, the Court of First Instance (CFI) delivered its judgment in Eden Sarl v OHIM Case T-305/04, highlighting the problems in registering a smell as a trade mark which arise due to the difficulty in describing such a smell accurately.
In 1999, Laboratoires France Parfum filed an application for the registration of an olfactory sign, “Smell of ripe strawberry”, as a Community trade mark in respect of a large range of goods such as soap, face cream, stationery, leather goods and clothing. The sign was described by the words “Smell of ripe strawberry” and consisted of the colour image of a strawberry.
The application was rejected by the examiner on the grounds that the olfactory sign was not capable of being represented graphically and was devoid of any distinctive character in respect of some of the goods claimed. In 2003, Laboratoires France Parfum filed an appeal with the Office for Harmonisation in the Internal Market (OHIM), but the Board of Appeal of OHIM dismissed it on the ground of lack of graphic representation alone.
In the meantime, the French perfume company was taken over by Paris-based Eden Sarl, which took the case to the European Court of First Instance (CFI). It argued that the graphic representation of the mark satisfied the requirements laid down by the case law and that the description in words was clear, precise, easily accessible, intelligible, durable and objective and that the image enabled the sign to be complete in itself. Consequently, it argued that the application for registration should be accepted.
The CFI, however, relying on earlier case law of the European Court of Justice disagreed and dismissed the appeal. As regards the word element, “smell of ripe strawberry”, it said that those words could refer to several varieties of strawberries and therefore to several distinct smells and implied elements of subjectivity in the process of identifying the sign claimed. In addition, it pointed out that there is no generally accepted international classification of smells which would make it possible to identify an olfactory sign objectively and precisely through the attribution of a name or a precise code to each smell.
On the figurative element, that is, the colour image of a strawberry, the Court referred to Sieckmann where it was held that in order to be accepted the graphic representation of an olfactory mark must, represent the odour whose registration is sought and not the product emitting the odour. Therefore, the CFI found that the image of a strawberry contained in the application represented only the fruit, which emits a smell, and not the smell claimed, and did not amount to the graphic representation of the olfactory sign.
Finally, the Court noted that a combination of methods of representation that were not, in themselves, capable of satisfying the requirements of graphic representation could not constitute a valid graphic representation.
9. Vodafone Launches in Romania Following Trade Mark Dispute
The British company Vodafone has started using the VODAFONE mark for a GSM service in Romania. The service is being run in conjunction with Connex, and is to be co-branded until the middle of 2006, at which point the service will be offered under the VODAFONE mark alone. The launch comes at a time when Vodafone is expanding into South Africa, India and the Czech Republic, and follows a legal dispute over ownership of the VODAFONE mark.
VODAFONE was originally registered as a trade mark in Romania in 1995 by Telemobil, a company which runs the ZAPP network. Vodafone first took action against Telemobil in 2003, but this case was unsuccessful. The British company began another lawsuit the following year and won the right to prevent Telemobil from using the VODAFONE mark, as Telemobil had not used the mark for a five-year period. The case has now been suspended following Telemobil’s application to have the case moved to another court of Telemobil’s choosing. The application was examined by the Romanian High Court of Justice and Cassation on 10 November 2005.
Trade mark owners who intend to expand into other jurisdictions at an unspecified time in the future are often in a difficult position. If they fail to register their marks in the countries into which they later wish to expand, they may find that someone else has either registered or started using the mark before them. However, if they register their marks prematurely, they may find that before they are in a position to use the marks, they have been cancelled for lack of use. The owners of well-known marks will often be able to avoid these problems by relying on the special protection that is granted to well-known marks, but companies who own marks that are not well known, but who nonetheless find themselves in a position to expand, often do not have that option.
Click here to return to the Summary page, or on any of the headings below to see the full case notes for that topic:
