‘The New Trade Mark Defenses System’ by Maria Tsouvali

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In 2008 EU Commission decided that it was time for a groundbreaking reform in the European Trade mark system. Eight years later, notable changes have been brought into effect by the new (EU) 2015/2436 Directive and (EU) 2015/2424 Regulation. In the light of this, from 23 March 2016, the name of OHIM became European Union Intellectual Property Office (EUIPO) and the name of CTM changed as to European Union trade mark (EUTM). In this article I will follow the changes relating to trade mark defences.

According to Article 12 of the Regulation[1] and Article 14 of the Directive[2], a Trade mark proprietor is not be entitle to prohibit third parties from using a Trade mark in course of trade where it is the name of a natural person.  As with all of the defences this is subject to the proviso that the use is ‘in accordance with honest practices regarding industrial or commercial matters’[3].

The ‘own name defence’ has been narrowed down to ‘natural persons’, excluding corporations, business entitles and partnerships when relying on that kind of defence[4]. In that case it is crucial for enterprises to consider appropriate searches before adapting tradenames .That would ensure that there are no relevant third-party rights that could potentially be infringed. It is therefore important to declare that this defence has been successful in the past regarding company names. In Stichting BDO and others v BDO Unibank, Inc and others[5] the English High Court held that the defendants’ use of the marks BDO and BDO REMIT did not infringe Stichting BDO’s Community trade mark. Although this case was a rare example of the ‘own name’ defence it succeeding in the UK courts something which was altered under then new legal regime. [6] The previous provision (Article 6 (1) (a) of the TM Directive) has been interpreted broadly by the ECJ as well. In AnheuserBusch v.Budejovicky Budvar the ECJ extended the use to trade names[7].Through those changes Commission seemed to be interested in imposing its original intention rather than letting courts broadening the interpretation of such defence which may cause damage to Trade Mark holders[8].

Due to the current reforms, another significant change has been made. The descriptiveness defence has been extended to cover the use of non-distinctive signs as well. More specifically, signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering service or other characteristics of goods or services can be applied by a defendant in order to avoid trade mark infringement. [9] This will enable Trade mark proprietors of using non-distinctive components of earlier registered marks as decorations or as indications of their own marks. Thus, we assume that the new defence will apply only to those components of registered marks which remain non distinctive and not to the non-distinctive elements which have acquired distinctiveness through use. In that respect its application would be slightly different from the descriptive use exception. [10]Moreover, applications are rejected only when they consist exclusively of non-distinctive elements, so it is possible to register marks that include of non-distinctive components as well. Consequently one may imply that the justification behind the new adaptations is Commissions intention to endow some freedom to Trade mark proprietors.

The reform package brought another fundamental change regarding the extension of the ‘intended purpose’ defence as to a more general referential use. The new amendment of the EU law applies where the use of a third party sign is ‘necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts’.[11]The scope of law is extended to all circumstances where the TM is being used for the purpose of identifying or referring to goods or services as those of the proprietor of the EUTM, offering greater protection for suppliers of accessories or spare parts. [12] Without a doubt, that change offers remarkable freedom to European traders giving them the opportunity to refer to Trade mark owner’s goods or services by using another trader’s mark. This provides equivalent freedom as in the United States where a body of case law has emerged, in which traders are permitted to such acts. [13]Even though this change brought a ‘notional broadening of the exception we should underscore that in terms of reform it did not extend the defence too much[14].  Max Planck Institute had suggested the broadening of the exception as to parodic references as well which was not finally included to the new reform package[15].

Regarding the ‘own name defence’ narrowing the scope of the limitation does not seem appropriate. It creates unequal conditions for trade names in case of conflicts regarding company names. Regarding that issue, there have been disputes within the member states which were resolved by the ECJ to the contrary of what was finally adopted by the new law.[16] Using the rule of proportionality the EU Commission should have tried to balance the rights to property (Art. 1 of Protocol No 1 ECHR) and the rights to freedom of expression (Article 10 ECHR) in favor of the broadening of that exception. Enterprises would be limited in using certain company names which may be well established in course of trade. While every rule is tested by fair use[17] this would not cause any unfair judgements against Trade mark proprietors if the Article kept its broad definition.

On the other hand, regardless the proposals of the Max Planck Institute[18], the EU Commission denied the adaptation of a parody exception in contrast with Copyright Law, where parody exists as a defence (Article 5(3)(k) of the InfoSoc Directive)[19]. In a case where a trader offers goods that have expressive qualities this could lead to trade mark infringement and consequently to restriction of freedom of speech.[20] An example drawn by US case law would be helpful here. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog the plaintiff was selling dog toys under the name ‘Chewy Vuitton’[21] using the name of the famous warehouse. This would have been a case defence under the parody exception if it was finally adopted. In general an exception for communication purposes to protect trade marks in artistic works was denied as well, making us wonder that in vast harmonization processes fundamental rights –like freedom of speech- sometimes are being compressed .

Maria Tsouvali

Trainee at the European Union Intellectual Property Office

This Article has been first published at QMJIP

[1] Regulation (EU) 2015/2424.

[2] Directive(EU) 2015/2436.

[3]   L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1062.

[4] Steven James, ’Significant changes to the EU trade mark system ahead’, E- commerce law & policy journal, p 2.

[5] Stichting BDO et al. v. BDO Unibank, Inc et al., [2013] EWHC 418 (Ch).

[6] http://www.inta.org/INTABulletin/Pages/UNITEDKINGDOMOwnNameDefenseSuccessful.aspx

[7] Case C-245/02 – AnheuserBusch v. Budejovicky Budvar.

[8] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1064.

[9] Art.14(1)(b) of (EU) Directive 2015/2436 and Art 12(1)(b) of (EU) Regulation 2015/2424.

[10] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1069.

[11] Art 14(1)(c) of (EU) Directive 2015/2436 and Art 12(1)(c) of (EU) Regulation 2015/2424.

[12] Steven James, ’Significant changes to the EU trade mark system ahead’, E- commerce law & policy journal, p 2.

[13] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1071.

[14] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1071.

[15] Max Planck Institute,’Study on the Overall Functioning of the Community Trade Mar System’(2010), [2.258]-[2.262].

[16] Case C-245/02 – AnheuserBusch v. Budejovicky Budvar.

[17] Art 14(2) of (EU) Directive 2015/2436 and Art 12(2) of (EU) Regulation 2015/2424.

[18] Max Planck Institute,’Study on the Overall Functioning of the Community Trade Mar System’(2010),[2.262].

[19] http://europeanlawblog.eu/?p=2539

[20]L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1093.

[21] Louis Vuitton Malletier S.A. v. Haute Diggity Dog, (4th Cir. 2007).

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