Trade marks: equal treatment for all applicants?

Graf von Westphalen note here an important IP development for European brand owners:

The German courts have referred questions to the European Court of Justice (ECJ) concerning the application of the principle of equal treatment to applications for national trade marks at Member State's national registries.

Background

Article 3 of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (Directive) provides for several conditions to be met by signs in order to be registered in the national trade mark registers. The applications can, for instance, be refused or invalid by reason of lack of distinctiveness (Article (3) (1) (b) of the Directive) or for consisting exclusively of indications which have become customary in the current language (Article 3 (1) (d) of the Directive).

Registrars at the national trade mark offices examine each trade mark application for grounds for refusal or invalidity. From time to time, however, applicants are faced with a refusal of a trade mark application although a comparable trade mark has already been registered in favour of a competitor.

In a recent case the word "SCHWABENPOST" was filed with the German Trade mark Office (DPMA) for newspaper related services, such as news services and delivery of printed matter. The application was refused by the DPMA as the public would understand the word "SCHWABENPOST" as "post-/mail-services rendered in the region of Schwaben" (Schwaben is a region in the south of Germany).

The applicant appealed on the grounds that comparable trade marks (at least 14!) have been registered for the same services in the past (e.g. "DEUTSCHE POST"). The applicant argued that the principle of equality of rights would be infringed and competition would be distorted, if the trade mark was not registered.

The DPMA, however, stated that as it dealt with approximately 80,000 applications per year, it was not able to examine each presumably comparable application. Furthermore, precedent decisions of the DPMA generally did not constitute any self-commitment of the DPMA regarding current applications.

In contrast to the Manual of Trade Mark Practice of the UK Intellectual Property Office, which explicitly states that the adoption of consistent and uniform working procedures shall be ensured, the comparable directives regarding the handling of trade mark applications at the DPMA provide for an individual examination of each application.

Outcome

The competent court (German Federal Patent Court - BPatG) has therefore now referred to the ECJ for a preliminary ruling in order to decide this case. In particular, the ECJ will have to decide whether Article 3 of the Directive provides for an equal treatment of applicants that are also competitors, and, if so, whether courts shall examine unequal treatment that leads to a distortion of competition including the consideration of earlier decisions of the respective trade mark office.

Comment

In order to attain the goal of the Directive it is essential that the conditions for obtaining and holding a registered trade mark are identical in all Member States of the EC (see recital No. 7 of the Directive). At present, where the DPMA examines each application individually without considering any earlier decision, this aim might be jeopardized.

In particular, as shown in the SCHWABENPOST case, there might be discrimination between competitors if a comparable trade mark application is being refused to only one of them. It must also be kept in mind that the extent of the examination conducted by national trade mark offices does not only affect national issues: Any owner of a national trade mark (registered in any Member State of the EC) may use it to oppose an application for a Community trade mark if the trade marks are identical or similar.

Therefore, once again, it is essential that the conditions relating to registered trade marks are identical in all Member States. Otherwise, for instance, a wrongfully registered national trade mark may lead to an application for a Community Trade mark being refused.

This article was produced by Dr. Stephen Bahner, lawyer, specialist in intellectual property rights, Graf von Westphalen Cologne, Germany.

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