April 14, Emmanuel Cornu Avocat at the Brussels bar Simont Braun

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1 Are the CTM and the Benelux systems harmonized? From a legal point of view Absolute grounds of refusal in examination and cancellation proceedings The differences April 14, 2008 Emmanuel Cornu Avocat at the Brussels bar Simont Braun

2 Article 7 of Council Regulation EC No 40/94 of 20 December 1993 on the Community trade mark (CTMR) 1. The following shall not be registered: (a) signs which do not conform to the requirements of Article 4 [Article 4 : signs capable of being represented graphically] (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; (e) signs which consist exclusively of: (i) the shape which results from the nature of the goods themselves; or (ii) the shape of goods which is necessary to obtain a technical result; or (iii) the shape which gives substantial value to the goods; (f) trade marks which are contrary to public policy or to accepted principles of morality; (g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service; (h) trade marks which have not been authorized by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention;

3 Article 7 of Council Regulation EC No 40/94 of 20 December 1993 on the Community trade mark (CTMR) (i) trade marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the appropriate authorities to their registration has been given. (j) trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin. (k) trade marks which contain or consist of a designation of origin or a geographical indication registered in accordance with Regulation (EEC) No 2081/92 when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication. 2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community. 3. Paragraph 1 (b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.

4 Article 2.11 of the Benelux Convention on Intellectual Property (BCIP) 1. The Office shall refuse to register a trade mark when it considers that : a. the sign cannot constitute a trade mark in the sense of Article 2.1, paragraphs 1 and 2 ; [Article 2.11 (1) : 1. signs that are capable of being represented graphically 2. exclusion of the signs which consist exclusively of the shape which results from the nature of the goods themselves, which gives substantial value to the goods or which is necessary to obtain a technical result.] b. the trade mark is devoid of any distinctive character; c. the trade mark consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service ; d. the trade mark consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade ;

5 Article 2.11 of the Benelux Convention on Intellectual Property (BCIP) e. the trade mark is a mark referred to in Article 2.4 (a), (b) or (g). [Article 2.4.a : - trade marks which are contrary to principles of morality or to public policy of one of the Benelux States; - trade marks which are to be refused or invalidated pursuant to Article 6ter of the Paris Convention. Article 2.4.b : trade marks which are of such nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services. Article 2.4.g : trade marks which contain or consist of a geographical origin or a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin, with the exception of the registration in good faith before January 1, 2000 or before the beginning of the protection of the said geographical indication in the country of origin or in the Community.]

6 The formal differences between the texts Two additional grounds in the CTMR : Article 7(1)(i) CTM Regulation : trade marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention and which are of particular public interest, unless the consent of the appropriate authorities to their registration has been given. Article 7(1)(k) CTM Regulation : trade marks which contain or consist of a designation of origin or a geographical indication registered in accordance with Regulation (EEC) No 2081/92 when they correspond to one of the situations covered by Article 13 of the said Regulation and regarding the same type of product, on condition that the application for registration of the trade mark has been submitted after the date of filing with the Commission of the application for registration of the designation of origin or geographical indication. Fall under the general exclusion of deceptive trade marks (Article 2.4(b) of the Benelux Convention).

7 The same principles may lead to different results in the concrete assessment For the assessment of absolute grounds, one must take into account: the entire territory concerned, the public of that territory, the nature of the goods or services covered by the trade mark application or registration. ECJ, 12 February 2004, C-363/99, Postkantoor, [2004] ECR I-01619, par. 33 and 34 Impact on the concrete assessment of the absolute grounds for refusal Absolute ground for refusal in part of the territory (one Member State - one official language) refusal for registration of the trade mark

8 Impact on the concrete assessment of the absolute grounds for refusal : CTMR Entire territory of the European Community Many different official languages spoken in the Member States Absolute ground in one Member State or one official language of the EC refusal for registration of the CTM

9 Impact on the concrete assessment of the absolute grounds for refusal : BCIP Benelux territory. Three official languages spoken in the Benelux : Dutch, French and Luxembourgish. English language in the Benelux : evolution of jurisprudence. Previously : English language not spoken nor understood by the general public Steelguard Court of Appeal of Brussels, 1 June 2006, Ing-Cons., 2006, p. 472 Today : current English language is understood by the general public Garden Trend - Court of Appeal of Brussels, 13 September 2007, to be published May vary according to the nature of the goods/services and the public concerned (specialised field) Global Financial Intelligence (trade, finance, real estate and insurance) Court of Appeal of Brussels, 1 June 2006, Ing.-Cons., 2006, p. 480 Registration in the UK as a criterion of distinctive character Digitag Court of Appeal of Brussels, 25 February 2005, "Digitag", Ing.-Cons., 2005, p. 39

10 Jurisprudence different application of the principles at Benelux and Community levels Distinctive character or descriptive character of signs in the Benelux and Community systems Slogans in the Benelux and Community systems

11 Distinctive character or descriptive character of signs in the Benelux and Community systems Easybank Word mark Easybank for services of insurance, financial affairs, monetary affairs, banking, banking services, real estate affairs in class 36 both at Community and Benelux levels. At Community level: OHIM Rejection Art. 38 and 7(1)(b) and (c) CTMR limitation to 'on-line banking services, especially electronic banking services' CFI, 5 April 2001, T-87/00 : annuls decision of OHIM not descriptive OHIM must examine distinctive character OHIM accepts registration distinctive and not descriptive At Benelux level: BOIP Refusal by decision of 7 June 2001 : devoid of any distinctive character. (subsequently annulled by CA Brussels, 9 Sept. 2003) Surprising contradiction because of the public and the territory concerned: European Community includes English speaking territories >< Benelux territory : English is not an official language.

12 Different trends as regards slogans Same principle: no stricter criteria for distinctive/descriptive character in relation to slogans CFI, 11 December 2001, T-138/00, Das Prinzip der Bequemlichkeit" Court of Appeal of Brussels, 21 June 2006, L'achat qui rapporte Ing.-Cons., 2006, p. 452; Court of Appeal of Brussels, 23 March 2007, "On a jamais bu ça", Ing.-Cons., 2007, p. 556 Different outcome: CFI and OHIM are more reluctant than Benelux Courts and BOIP

13 Slogans at Community level Refused for absence of distinctive character or because of descriptive character: Real People Real Solutions for services of telemarketing (class 35) and computer hardware maintenance (class 37) CFI, 5 December 2002, T-130/01 Looks like grass Feels like grass Plays like grass for synthetic grass (class 27) and services of installation of synthetic surfacing for sports activities (class 37) CFI, 31 March 2004, T-216/02 Mehr für Ihr Geld for laundry products, cosmetics, soaps, etc. (class 3), food (classes 29 and 30) CFI, 30 June 2004, T-281/02

14 Slogans at Benelux Level (1) Assessment from the point of view of the public concerned Cass, 14 April 2002, Les hommes savent pourquoi. Variation according to type of slogan Acceptation when element of originality: contradiction, play on words, reference to a known but altered expression, etc.

15 Slogans at Benelux Level (2) Refused Refused for absence of distinctive character or because of descriptive character: The art of banking for bankcards and financial services (classes 9, 16, 36, 42) CA Brussels, 22 December 1999, Ing.-Cons Cons., 2000, p. 49 Langs Vlaamse Wegen for travelling brochures, transportation, travel services and cultural and sports activities (classes 16, 39, 41) CA Brussels, 16 May 2000, Ing.-Cons Cons., 2001, p. 95, cancelled by the Cour de cassation on procedural issues 300 miljoen euroconsumenten for printed material, advertisement and business management, services of telecommunications and organisation of cultural, educational and leisure activities (classes 16, 35, 38, 41) CA Brussels, 18 May 2006, Ing.-Cons Cons., 2006, p. 434 Le vin en direct for wine, retail of wine and transport of wine (classes 33, 35, 39) Gerechtshof 's-gravenhage, 10 May 2007, B.I.E., 2008, p. 70 Happy vakanties en Grenzeloos genieten for travel services en related services (classes 39, 41, 43) Gerechtshof 's-gravenhage, 9 February 2006, cases R05/954 and R05/537, published on the website of the BOIP Onbegrijpelijk lekker for food (classes 29, 30) Gerechtshof 's-gravenhage, 13 February 2003, case R98/606, published on the website of the BOIP

16 Slogans at Benelux Level (3) Accepted by the Benelux Courts as being distinctive and/or not descriptive: L achat qui rapporte for retail services, advertisement and business management and financial services (classes 35, 36) ("buying" as opposed to "profit") Court of Appeal of Brussels, 21 June 2006, Ing.-Cons., 2006, p. 441 Wij gaan voor vers for goods in several classes, including food en beverages (classes 29, 30, 31, 32 and 33), and for services in class 35. Court of Appeal of Brussels, 21 June 2006, Ing.-Cons., 2006, p. 455 On a jamais bu ça for water and non-alcoholic beverages (class 32). "Wink" at the current French expression "On n'a jamais vu ça" Court of Appeal of Brussels, 23 March 2007, Ing.-Cons., 2007, p. 556 Move to cure for leisure and sports activities and services of medical nature (classes 41 and 42). Court of Appeal of Brussels, 30 May 2005, published on the website of the BOIP

17 Acquisition of distinctive character through use No difference in the principles at Benelux level and at Community level ECJ, 7 September 2006, C-108/05, Europolis. The BOIP was a party principles equally applied today in the Benelux and in the European Community.

18 Conclusion Same principles in relation to absolute grounds for refusal apply under Benelux law and Community law, The outcome of the assessment may vary. usually justified by the specificities of both systems: the scope of the territories, the public concerned and the languages are different. different trends may also be due to the nature of the goods or services, the type of public concerned or other facts. We thank you for your attention, Tel. : Fax :

Netherlands Pays Bas Niederlande. Report Q195

Netherlands Pays Bas Niederlande Report Q195 in the name of the Dutch Group by W. A. HOYNG, A. A. HIRSCHFELD, B. J. BERGHUIS VAN WOORTMAN, J. B. C. W. VAN DIJK, M. H. L. HEMMER, J. K. VAN HEZEWIJK, W.