Community Trade Mark
by Roland Knaak
1. Subject matter and purpose of Community trade mark protection
Trade marks are intellectual property rights (intellectual property (PIL)). They grant the holder an exclusive right to use the trade mark to identify the goods or services protected by the mark. In an economic system based on free competition, the function of trade marks is to guarantee that competition is undistorted. The European Court of Justice (ECJ) regards trade mark rights (trade mark law) as an essential element in the system of undistorted competition, the establishment and maintenance of which are, pursuant to Art 3 para 1(g) of the EC Treaty (now Protocol (no 27) to the Treaty on the European Union and to the Treaty on the Functioning of the European Union on the internal market and competition), among the objectives of the Treaty. For this reason, goods or services bearing a trade mark must be attributable to a single undertaking. As such, trade marks serve both to encourage and market technical and creative achievements that are protected by patent (patent law), copyright and the other intellectual property rights.
Until the Community trade mark was created, trade marks were exclusively national rights. They had to acquire protection from country to country, and the territoriality principle, which applies to all intellectual property rights, meant that they were only protected from country to country. As industrial and commercial property rights within the meaning of Art 36 TFEU/30 EC, their protection being limited to the territories of Member States means that they can become an obstacle to the free movement of goods and services. Council Reg 40/94 on the Community trade mark (CTMR) established for the first time a legal basis for a trade mark law that could overcome national borders. The Community trade mark is a unitary supranational trade mark right created by the Union legislature that is protected throughout the territory of the European Union, now comprising 27 Member States. Its function is to establish within the Union internal market conditions for trade in trade mark products, thereby promoting the free movement of goods and services and thus contributing to the realization of the European internal market.
2. Origin and development of the Community trade mark system
The origins of the Community trade mark date back to the early 1970s, when the European Community was still made up of only six Member States. It was then that the European Commission appointed a small group of international experts, including, as representative of academia, the then Max Planck Institute for Foreign and International Patent, Copyright and Competition Law, to develop the basic features of Community trade mark law on the basis of a preliminary draft dating from the 1960s. This work led to Commission drafts and proposals that at the end of the 1980s resulted in the text of the CTMR that was finally adopted. Once the two political issues of the location and language for the proposed Community trade mark office were solved in 1993, the regulation entered into effect in 1994, permitting applications for Community trade marks from 1 April 1996.
In the meantime, more than 700,000 Community trade marks have been registered at the Office for Harmonization in the Internal Market (OHIM) located in Alicante, Spain and working in five official languages: Spanish, English, German, French and Italian. The Community trade mark has thus within a few years assumed a dimension that equals that of the over 100-year-old system of international trade mark registrations administered by the World Intellectual Property Organization (WIPO) in Geneva with its currently slightly more than 530,000 international registrations. Unlike the Community trade mark, these international marks are, however, also protected according to the national law in each country in the same way as national trade marks. They are bundles of national rights that acquire protection in a uniform international registration procedure.
With the adoption of the CTMR, trade mark law assumed a pioneering role in the legal harmonization process in Europe. There is no other field of law in which the process of integration has made such progress, a process that was further accelerated by the 1989 Trade Mark Law Harmonization Directive. The latter approximated the laws of the Member States on the most important substantive law issues in trade mark law. Since then, the ECJ has issued more judgments on European trade mark law than in almost any other field of the law. These decisions, many of them rendered in response to requests for preliminary rulings by the national courts of the Member States, interpret the provisions of the Trade Mark Directive and the CTMR; the ECJ also acts as final instance for the interpretation and application of the provisions of the CTMR in proceedings concerning the registration or nullity of Community trade marks.
3. Principles of Community trade mark law
Community trade mark law is subject to three basic principles that determine its relationship with, and distinguish it from, national law. The first principle is that of the autonomy of Community trade mark law, which means that the Community trade mark is only subject to the provisions of the CTMR. However, this principle is restricted by the fact that the CTMR does not regulate all trade mark law issues and in part refers to the national law of the Member States. An example is the sanctions in case of an infringement of a Community trade mark which, with the exception of the obligation to cease and desist, are determined according to national law. The second general principle of Community trade mark law is the unitary character of the Community trade mark. The Community trade mark is a unitary right with effect for the whole territory of the Union. Registration and cancellation of a Community trade mark necessarily have an effect throughout the Union, and its use can as a matter of principle only be prohibited for the whole of the Union. The third principle is that of coexistence. The Community trade mark exists alongside the national trade mark systems, the two coexisting without either enjoying priority. Applicants can file for protection as national trade marks and, in parallel, as Community trade marks. The effects of protection for national trade marks extend to Community trade marks in the same way as to national trade marks. Which of these rights prevails is determined solely by the priority principle that applies in trade mark law. Under this rule, a prior national trade mark prevails over a more recent Community trade mark. It is in compliance with these three principles that the requirements, content and limitations for Community trade mark protection are conceived within the CTMR.
4. Basic features of Community trade mark protection
The preconditions for protection as a Community trade mark include, first, the absence of absolute grounds for refusal of registration. Community trade marks can only be registered if there is no absolute ground for refusal, a matter that is examined by the OHIM when a Community trade mark application is filed. These absolute grounds largely correspond in terms of content to the grounds for refusing protection established in international trade mark law for the examination of international registrations of trade marks by the authorities of the countries of the Union belonging to the Paris Convention for the Protection of Industrial Property (PCPIP). Under these provisions trade marks may not be registered which are: devoid of any distinctive character; exclusively descriptive or consist of indications which have become customary in the trade; contrary to public order or public morals; deceptive; or consist of state symbols and other signs, emblems and armorial bearings of sovereign states and international organizations. In addition, there is the prohibition on certain three-dimensional trade marks and trade marks that include geographical indications protected by Union law, neither of which are to be found in the PCPIP. The principle of unitary character means that a Community trade mark cannot be granted protection if an absolute ground for refusing protection applies in any part of the Union. A part of the Union includes by definition any Member State. For this reason, applications for a Community trade mark are rejected as descriptive signs if they are descriptive in the official language of only one Member State.
In addition to these absolute grounds for refusal, there are also relative grounds for refusing protection. Under this category of refusal grounds fall earlier rights of third parties whose protection would be infringed by the Community trade mark. However, the OHIM does not take them into account ex officio in the registration proceedings, but only if they are asserted in an opposition filed by the rightholders within three months of the application’s publication. These earlier third-party rights include all prior trade marks, ie Community trade marks, international marks and national marks, as well as unregistered trade marks and other rights to a sign if the relevant law of the country of protection or of the Union gives the holder the right to prevent the use of a subsequent trade mark. This extensive list of relative grounds for refusing protection reflects the broad effect of the coexistence principle and significantly furthers the unitary nature of the Community trade mark. The protection of a Community trade mark can be blocked by the existence of an earlier right in a single Member State. The effects of protection for the earlier national rights are recognized by the CTMR practically without limitations. There exists only one exception for earlier rights of merely local significance; these local rights are not a relative ground for refusing protection but can be the basis for an order to prohibit the use of a Community trade mark within their territory of protection.
Community trade marks enjoy a scope of protection graded in line with the provisions of the Trade Mark Directive. Community trade marks that have not achieved a reputation within the Union are protected against being used identically or almost identically by a third party within the same field of protected goods or services, and against the use of similar signs for similar goods and services if that use creates a likelihood of confusion. The latter occurs where the relevant public considers that the goods or services bearing the conflicting trade marks originate from the same enterprise or an affiliated enterprise. The assessment of the likelihood of confusion is a legal question and, according to the principles of construction laid down by the ECJ, depends on a number of factors, including above all the distinctive character of the older Community trade mark, and the degree of similarity between the conflicting signs and between the relevant goods or services. The examination of these factors is a question of fact allowing the submission of evidence. Community trade marks with a reputation are protected not only against likelihood of confusion but also against taking unfair advantage of, or detriment to, their distinctive character or repute. As a matter of principle this protection applies if the Community trade mark is brought to mind by the use of a subsequent trade mark or sign regardless of whether there is a likelihood of confusion.
Limitations of the protection of Community trade marks apply to the use of names, geographically descriptive or otherwise descriptive indications or signs, and to the use of the protected Community trade mark as an indication of the intended purpose of a product, in particular for accessories or spare parts for a product. The ECJ has in a number of judgments adopted rules for interpretation of these limitations that apply not only to the application of harmonized trade mark law, but also to the equally conceived Community trade mark law.
The term of protection of the Community trade mark is 10 years starting from the time of filing, and it can be renewed every 10 years without limit upon payment of a fee, currently €1,350 (excluding surcharges).
In light of the development and the state of case law in European trade mark law, it can be noted that the ECJ tends to apply a strict definition of the conditions for protection, interpret the scope of protection narrowly and confer the broader scope of protection only cautiously to trade marks with a reputation, while at the same time interpreting the limits on protection rather broadly. For instance, the ECJ has extended the trade mark law limitation of protection with respect to names to commercial names, contrary to the intentions of the European legislature. The ECJ is also generous in assessing the use of geographical indications in respect of the limitation provision, which it regards as an expression of the general objective of reconciling the interests of trade mark protection on the one hand and the free movement of goods and services on the other hand. In its examination of the requirements for protection, the ECJ emphasizes the general interest in the free availability of signs that do not fulfil the function of a trade mark, namely to distinguish the goods or services of one enterprise from competing products. From this general interest, it derives the requirement of a strict assessment of the capacity for registration. The ECJ determines the scope of protection in light of the trade mark’s main function of guaranteeing that all the goods or services bearing the trade mark are under the control of a single undertaking that can be made responsible for their quality. The overriding notion behind all these rules of interpretation is that the trade mark should fulfil its function as an essential element in a system of undistorted competition. In this way, the ECJ has ensured that trade mark law is firmly anchored within the EC Treaty.
5. Further steps towards harmonization
The harmonization process in the field of Community trade mark law has not yet been concluded. For a number of issues that are part of a complete trade mark protection system, the CTMR refers to provisions of the national law and to the private international law (PIL) of the Member States. For infringement proceedings with respect to a Community trade mark, the CTMR transfers jurisdiction to the Community trade mark courts designated by the Member States. These gaps in the harmonization of the laws have in the meantime been narrowed by additional Community law measures.
The 2004 directive on the enforcement of intellectual property rights (intellectual property (enforcement)) has established a Union framework for sanctions of intellectual property rights infringements which also applies to the infringement of Community trade marks. As a result, the CTMR’s reference to the Member States’ national law on sanctions takes the analysis into a harmonized area that is monitored by the ECJ in proceedings for a preliminary ruling on the interpretation of Union law. Furthermore, the 2007 Rome II Regulation laid down at the Union level the rules of private international law (PIL) that apply to infringements of intellectual property rights. Consequently, the CTMR’s references to the Member States’ international private law are now to be construed according to the principles in the Rome II Regulation. Of course, the Rome II Regulation does not appear to have solved the problem of the impossibility of assessing the sanctions for Union-wide infringements of a Community trade mark uniformly according to the law of a single Member State. Instead the law of each individual Member State in which the infringement was committed must be applied. This will only be overcome once the provisions of the Enforcement Directive are adopted directly into the CTMR, thereby creating an independent and autonomous system of sanctions within Community trade mark law. If a genuine Union jurisdiction were at that time introduced for infringements of Community trade marks—replacing the current jurisdiction of the Member States’ Community trade mark courts—the harmonization process in Community trade mark law would be practically complete.
Julian Gyngell and Allan Poulter, The Community Trade Mark, Regulations, Practice and Procedure (2000); Friedrich Ekey and Diethelm Klippel, Heidelberger Kommentar zum Markenrecht (2003); David Kitchin, Kerly’s Law of Trade Marks and Trade Names (14th edn, 2005); Gerhard Schricker, Eva-Marina Bastian and Roland Knaak, Gemeinschaftsmarke und Recht der EU-Mitgliedstaaten (2006); Eike Schaper, Durchsetzung der Gemeinschaftsmarke (2006); Günther Eisenführ and Detlef Schennen, Gemeinschaftsmarkenverordnung (2nd edn, 2007); Ulrich Hildebrandt, Harmonised Trade Mark Law in Europe (2nd edn, 2008).