Oppositions and enforcement related to the European Community Trademarks - practical issues

1. Oppositions and enforcement related to the European Community Trademarks - practical issues Markpatent Seminar, Ahmedabad, 13-14 February 2010

2. CTM – ONE RIGHT EFFECTIVE THROUGH 27 MEMBER STATES OF EUROPEAN COMMUNITY

3. CTM SYSTEM – BENEFITS • Savings on official fees • Savings on professional fees • Uniform protection • Specialized court system in Member States – chances for more effective enforcement • CTM may be designated under Madrid System

4. PRINCIPLE OF UNIFORMITY – ART 1.2 OF CTM REGULATION • Equal effect throughout the Community: CTM shall not be registered, transferred or surrendered or be the subject of revocation or invalidation, nor shall its use be prohibited, save in respect of the whole Community Principle shall apply unless otherwise provided in the Regulation (art. 1.2 CTMR)

5. Challenges to theprinciple of uniformity

6. Challenges to theprinciple of uniformity Reference to ECJ, Case C-301/07 „PAGO” • Tirol Milch, the defendant, sold a "me too" drink called Lattella whose get-up (shape, colour, cap, label) resembled in several respects the PAGO drink • In the advertising for its drink, Tirol Milch used a representation which, like Pago’s CTM, shows a bottle next to a full glass

7. Legal ground for action – art 9.1.c) CTMR The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: … (c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community(…)

8. Proven reputation in Austria • Much less awareness in Germany • Little or no awareness elsewhere • Austrian Supreme Court asks ECJ (on point of law):

9. Is a Community trade mark protected in the whole of the Community as a “trade mark with a reputation” for the purposes of Article 9.1.c) of the Regulation if it has a “reputation” only in one Member State? • If the answer to the first question is in the negative: is a mark which has a “reputation” only in one Member State protected in that Member State under Article 9.1.c) of the Regulation, so that a prohibition limited to that Member State may be issued?

10. Attorney General Sharpstone (opinion, p.50) where an undertaking wishes to register a trade mark for use in (progressively) more than one Member State, it seems reasonable to suppose that it will tend to apply for a Community trade mark, rather than for multiple trade mark registrations in different Member States, unless there is some specific reason why it should proceed otherwise (…)

11. AG Sharpstone (opinion, p.50) (…) where such a mark has a reputation in (a substantial part of) a Member State but not in a substantial part of the Community, national registration in that Member State will be necessary in order to protect the reputation of the mark in that Member State, because such protection will not be available from the Community trade mark under Article 9.1.c) of the Regulation.

12. ECJ: • in order to benefit from the protection afforded in Article 9.1.c) of CTMR, a CTM must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the European Community, • in view of the facts of the main proceedings, the territory of the Member State in question may be considered to constitute a substantial part of the territory of the Community.

13. May the CTM court grant protection only for the country where the rights are proven to be infringed? AG Sharpston in PAGO – yes ECJ in PAGO – skipped the question ECJ in DHL C-235/09 – will have to face the question (?)

14. CTM Drawbacks - chances for opposition Increased risk of absolute grounds of refusal • Art. 7.2 CTMR Paragraph 1 shall apply notwithstanding that the grounds ofnon-registrability obtain in only part of the Community • language issues • local phenomena in trade

15. CTM Drawbacks - chances for opposition Increased risk of relative grounds of refusal • Art. 8 CTMR – relative grounds considered only upon opposition • includes • national trademarks • national applications • unregistered well known trademarks • non-registered trademarks or another signs used in the courseof trade of more than mere local significance (insofar as they give relevant right under national law)

16. OPPOSITION vs. INVALIDITY ACTION *OHIM may be separately advised about absolute grounds

17. Strategies for CTM Enforcement – choice of forum • CTM courts of the Member State in which defendantdomiciled or, if notdomiciled in any Member State, in which he has an establishment • IF NOT - courts of the Member State in which plaintiffdomiciled or, if not domiciled in any MemberState, in which he has an establishment • IF NOT – Spanish courts (seat of OHIM) • express or implied agreement as to choice of CTM court • ourts of the Member State in which the act ofinfringement has been committed or threatened

18. Strategies for CTM Enforcement – choice of forum • additional ground - as one of a number of defendants when cases closely connected Art. 6.1 of Council Regulation (EC) No 44/2001on jurisdiction and the recognition and enforcement of judgments eg. manufacturer and distributor

19. Strategies for CTM Enforcement – choice of forum EXTENT OF JURISDICTION cases 1-4 – acts of infringement committed or threatened within theterritory of any of the Member States Consequently, verdicts and provisional measures may be enforced in whole Community subject to granting enforcement clauses in target States (may be refused if provisional measure granted ex parte)

20. Strategies for CTM Enforcement – choice of forum EXTENT OF JURISDICTION case 5 – only in respect of actscommitted or threatened within the territory of the MemberState in which that court is situated Case 6 – ????

21. Strategies for CTM Enforcement – choice of forum Substantial law used by CTM courts CTMR provides for a right to prevent third parties from using the infringing designations in the course of trade

22. Strategies for CTM Enforcement – choice of forum Substantial law used by CTM courts Other sanctions – application of local law of the Member State, including private international law trademark law unfair competition law civil liability eg ways of assessment of damages

23. Strategies for CTM Enforcement – choice of forum Other criteria Efficiency and competence of the courts Markets where CTM enjoys most renown Economic realities (important markets for the CTM holder or for the infringer)

24. OTHER considerations • Coherence of argumentation when actions in multiple juriscictions • similarity issues • registrability issues

25. Thank you for your attention! Michał Siciarek advocate michal.siciarek@lds-ip.pl LDS Łazewski Depo i Wspólnicy sp.k. ul. Mysłowicka 15 01-612 Warszawa Poland www.lds-ip.pl