JIPLP: trade mark law

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January 2019 Editorial: European trade mark law, Quo Nunc Vadis?

In our first Editorial of 2019, Willem Leppink, a member of our Editorial Board and a partner at Ploum, reflects on the implications of Brexit for trade mark law:

Five years ago, I had the pleasure of writing a guest editorial on European trade mark law after UK Prime Minister David Cameron’s speech about the future of Europe and Britain’s place in that future1. He said that the single market in the European Union (EU) was crucial, but that not everything could be harmonized. Cameron advocated a flexible, adaptable and open Union. At that time, it was difficult to imagine that Europe would be in the situation it is now. At the time of writing this editorial, we are sitting on the Brexit rollercoaster and nobody really knows which turn it will take. Currently the debate is held hostage by the discussions on the Irish border: an important border not only in light of recent history, but at the same time the “only” the border between 1% (Republic of Ireland) and 0.4% (Northern Ireland) of all inhabitants of the current EU. It is beyond doubt that the Brexit rock when it was thrown into the EU pond, flooded the debate over the island of Ireland, but it is even more fascinating to see where the ripples ended, e.g. in the trade mark world.

Key Brexit concerns should include a smooth transition, avoiding a situation where current EU trade mark owners would lose their rights in any part of what is now the EU. It would not be in the interest of businesses and consumers if on 29 March 2019 at 11 pm (UK time), or shortly thereafter, trade mark owners lost their rights in e.g. the UK, merely because of Brexit. Counterfeiters and grabbers should not be given the chance to abuse the chaos resulting from Brexit. The same goes for other similar IP rights and e.g. rights to the .eu domain name, which can only be owned by an EU entity. However, such a key concern has been overshadowed by the discussion of legal representation before the Court of Justice and the General Court of the EU and the EUIPO. This is perhaps important to those who make a living out of this, including myself, but it is not what it should be about. Of course, the practitioners in the remaining member states (the EU 27) see business opportunities when native English-speaking UK solicitors are losing their EU privileges. As a result, the latter are en masse joining the Irish bar, leading to stricter rules on admission to the Irish bar. Talk about ripples!

I sincerely hope we can put all this to bed as soon as possible and concentrate on the issues that are really important to EU trade mark law. Five years ago I said that there are two areas in trade marks which the EU and its institutions should be concerned about - what Cameron called “a lack of democratic accountability and consent”: (1) The role of the CJEU in the creation of trade mark law; and (2) the inability of the EU to distinguish in its legislation between counterfeits and other infringements.

Taking a helicopter view, I regret to say that not much has changed in this respect. After the thorough Max Planck Study on the overall functioning of the European Trade Mark System, in my view only little from this study has ended up in the EU trade mark reform, except for a practical solution to deal with goods in transit to repair the undesired situation created in Nokia and Philips2. Many members of the European Parliament may not have fully appreciated the issues at hand, which I understand, but it is a missed opportunity not to reduce the democratic deficit and thus still leaving it up to the CJEU to fully shape the future of EU trade mark law. It forces the CJEU to come up with creative interpretations, which often raise more new questions than the CJEU had to answer. The CJEU’s recent decision in Mitsubishi3, is a clear example to me.

Many in the EU regret seeing the UK as their North Sea neighbour leaving the EU, also because the EU will then miss the constructive criticism from the UK on its functioning.

Footnotes

Willem Leppink; European trade mark law, Quo Vadis?, Journal of Intellectual Property Law & Practice, Volume 8, Issue 5, 1 May 2013, Pages 337–338, https://doi.org/10.1093/jiplp/jpt039

Joined cases C-446/09 and C-495/09, Judgment of 1 December 2011, Philips and Nokia, ECLI:EU:C:20 11:796

Court of Justice of the European Union (CJEU), Judgment in Mitsubishi v Duma, C-129/17, EU: C: 2018: 594, 25 July 2018 and Willem Leppink, Arnoud Martens, Martijn Poulus; How not using a trade mark becomes use of a trade mark, Journal of Intellectual Property Law & Practice, Volume 13, Issue 12, 1 December 2018, Pages 925–927, doi:10.1093/jiplp/jpy152.

The Authors' Take - The misconstrued notion of consent in EU trade mark law

The Misconstrued Notion of Consent in EU Trade Mark Law

by Alina Trapova

A registered trade mark grants its owner an exclusive intellectual property right to exploit a particular sign in relation to certain goods and/or services. The proprietor is free to authorise further parties to use his/her trade mark in various ways. This often takes place by way of licensing agreements, assignments and transfers. As this is said to be a core principle of the EU trade mark framework, it is crucial to determine precisely the facts and circumstances giving rise to the owner’s consent allowing another undertaking to make use of their trade mark.

Consent appears in EU trade mark law in various contexts. This article analyses it in two particular circumstances – firstly, in the context of the doctrine of exhaustion of trade mark rights, and secondly, within the requirement to prove genuine use of a trade mark. Having studied the jurisprudence in both instances, it quickly unfolds that the notion of consent has been directly imported from the exhaustion doctrine into the proof of use cases without any sound and independent reasoning. The strict standard in the exhaustion of rights doctrine is justified since proving the trade mark proprietor’s consent in these cases extinguishes his/her exclusive trade mark rights. In contrast, establishing consent within the proof of use requirement bears the contrary function – safeguarding the trade mark proprietor’s right.

The article examines the different rationale underpinning both instances, as well as the global market impact, which naturally prompt a more relaxed standard as far as consent in proof of use cases is concerned.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]

Current Intelligence - The scope of protection of Lacoste's trade mark in Turkey

Legal context and facts

The defendant, Özlider Plastik Ve Metal Sanayi Ticaret Anonim Şirketi (Özlider), filed a trade mark application for the word ‘Crocodile’ in classes 11, 20, 21 and 24 of the Nice Agreement before the second defendant, the Turkish Patent and Trademark Office (Office). Registration in class 24 was excluded ex officio by the Office due to absolute grounds for refusal not related to this case. Thus, the application was published in the Official Trademark Bulletin for classes 11, 20 and 21 only. The plaintiff, Lacoste, filed an opposition against the trade mark application. Both the opposition and a further appeal for re-examination filed by Lacoste were rejected.

Lacoste filed a court action, challenging the final decision of the Office which had rejected both their opposition against the trade mark application and the rejection request brought against the trade mark in question. Lacoste’s arguments were mainly based on likelihood of confusion, due to the similarity of the trade mark application for ‘Crocodile’ to Lacoste’s famous ‘crocodile device’ trade mark. Lacoste also argued that the registration of Özlider’s mark caused damage to the well-known status and reputation of Lacoste’s trade mark.

The 3rd Civil IP Court of Ankara dismissed the action filed by Lacoste. The court found that there was no likelihood of confusion between the trade marks in question as, despite the similarity between the trade marks (a word and a device which defines the same concept), the goods in classes 11, 20 and 21 within the scope of the contested trade mark application were not identical or similar to the goods covered by Lacoste’s trade mark registrations. It also dismissed arguments concerning the well-known status of Lacoste’s trade marks.

The decision was appealed by Lacoste before the 11th Civil Chamber of the Court of Cassation (CoC), competent to review matters concerning IP law at the appeal stage. The CoC examined the file and overturned the decision issued by the 3rd Civil IP Court of Ankara, finding that Lacoste’s trade marks were well-known trade marks and that the application for ‘Crocodile’—even if in different classes than Lacoste’s trade marks—could derive unfair benefit from or damage the distinctiveness or well-known status of Lacoste’s trade marks. The case was remanded to the court of first instance.

According to Turkish Civil Procedure Law, if a decision of a court of first instance is found inappropriate and reversed by the CoC, the highest civil court in the Turkish legal structure, the case is sent back to the same court of first instance and re-examined in light of the reversal decision. Upon re-examination, the court of first instance may decide to comply with the reversal decision, changing its initial decision, or insist on its initial judgment. In this case, the 3rd Civil IP Court of Ankara decided to insist on its initial decision, reiterating the rejection of Lacoste’s arguments.

The decision was again appealed and brought before the General Assembly of Civil Chambers (‘General Assembly’) of the CoC, which has the authority to resolve the conflict between the two decisions. The General Assembly reviewed the second decision of the 3rd Civil IP Court of Ankara and decided to reverse the decision, in parallel with the decision of the 11th Civil Chamber of the CoC.

Özlider applied for a review of the reversal decision given by General Assembly. As prescribed by civil procedure rules, the review was again examined by the General Assembly.

Analysis

The General Assembly decided to revoke its own decision, upholding the second decision of the 3rd Civil IP Court of Ankara.

The court found that there was a weak similarity between the parties’ trade marks, and that the goods covered by registration were neither identical nor similar. It added that even if a trade mark is well known, it is not possible to assume that a trade mark which seeks registration for different goods or services would automatically derive unfair benefit from the reputation of the well-known trade mark. A different conclusion, according to the court, would have conferred wider protection the well-known trade mark than legally due.

Özlider’s trade mark application concerned goods related to construction materials and kitchenware. The court noted that these goods were not similar or related to the clothing sector in which Lacoste’s trade mark is well-known. Therefore, Özlider’s trade mark application, if registered, would not derive unfair benefit from the well-known status of Lacoste’s trade mark and would not harm its reputation or distinctive character.

The well-known status of Lacoste’s crocodile device mark was beyond dispute. The main subject of the dispute was the scope of protection conferred to a well-known trademark under Article 8(4) of the Turkish Trademark Decree Law.

The decision of the General Assembly confirms the validity of the approach taken by the 3rd Civil IP Court of Ankara, which had ruled that the dissimilarity of the goods and services in question prevented an automatic finding of likelihood of confusion based solely on the well-known status of a trade mark.

Of significant relevance for this decision were the ‘DERBYTECH’ and ‘NIVA’ cases. In the former case (2013/11-656 E. 2014/427 K., decision of 2 April 2014), the court of first instance had concluded that the trade mark ‘DERBYTECH’ could not be registered for goods such as ‘saw, sanding machine, cutting machine, powered lawn-mover’ in class 07/01 and ‘machines and tools for agriculture, agriculture tools pulled by machine or engine, agriculture machines’ in class 07/07 because of the well-known status of the trademark ‘DERBY’ for ‘razor blades’ and the likelihood of association between the trade marks. On appeal, the CoC had found that the goods compared were not similar or related and therefore the conditions under Article 8(4) of the Turkish Trademark Decree Law (taking unfair advantage of, or being detrimental to, the distinctive character or reputation of the registered trade mark) had not been met.

In the latter case (2015/1633 E. 2015/8463 K., decision of 18 June 2015), the court of first instance had declared the trade mark ‘NIVA’ invalid even for goods not falling within the scope of the well-known ‘NIVEA’ trade marks. The CoC, however, had reversed this decision, highlighting the need for expert examination and a more detailed assessment of the scope of protection of well-known trade marks.

Practical significance

The decision of the General Assembly in this case, as well as the decisions discussed above, demonstrate that Turkish courts in practice do not automatically apply Article 8(4) as a ground for refusal based on well-known trade marks. Instead, they require a careful examination of the trade marks in question and a detailed assessment of the applicability of the three conditions set forth in Article 8(4). The Lacoste judgment, rendered by the highest civil court in Turkey, represents a clear and authoritative endorsement of this approach.

Although this is not the most favourable outcome for owners of well-known trade marks, the CoC’s position is in line with the wording of Article 8(4)1 of the Turkish Trademark Decree Law, as well as Article 8(5)2 of the EUTM Regulation, and it clarified the CoC’s approach to the scope of protection for well-known trade marks in relation to the registration of similar trade marks for dissimilar goods or services.

¹ Article 8/4 of the Turkish Trademark Decree Law was ratified on 24 June 1995 and entered into force by publication in the Official Gazette numbered 22326 on 27 June 1995. This Decree Law was abolished by the publication of the Industrial Property Code no. 6769

² Article 8/5 of the European Union Trade Mark Regulation No 207/2009 was published in the Official Journal of the European Union on 24 March 2009 and amended by the EU Regulation No 2015/2424 of the European Parliament and of the Council of 16 December 2015.

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