International Law Update

Applying Doctrine of Foreign Equivalents, U.S. Court of Appeals for Federal Circuit remands Trademark Trial and Appeal Board (TTAB) decision regarding “Moskovskaya vodka” because TTAB had applied incorrect test for materiality in determining that mark was geographically deceptive

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Council of European Union issues Decision against proliferation of chemical weapons of mass destruction. The EU Council issued Decision 2009/569/CFSP on support for the Organization for the Prohibition of Chemical Weapons (OPCW) activities in the framework of the implementation of the EU Strategy against Proliferation of Weapons of Mass Destruction. The EU had begun its Strategy against such Proliferation in December 2003. ‑ The Decision is intended to advance some elements of the EU Strategy and support the OPCW (Article 1). The specific OPCW projects to be supported include: bilateral technical assistance visits; training of customs officials on the technical aspects of the Convention on the Prohibition of the Development, Production, Stockpiling and Use of Chemical Weapons and on their Destruction, with annexes [entered into force April 29, 1997]. (CWC) transfers regime; CWC and chemical process safety workshops; visits to chemical weapons destruction facilities; and bilateral technical assistance visits to African countries. The Annex to the Decision sets forth more detailed activities. Citation: 2009 Official Journal of the European Union (L 197) 96, 29 July 2009.

Council of European Union imposes wide range of anti‑dumping duties on imports of American biodiesel fuel. The European Union, through Council Regulation (EC) No 599/2009, has imposed a definitive anti‑dumping duty on imports of biodiesel from the United States. The dumping margins set by the EU vary from 88.4% for Green Earth Fuels of Houston, LLC, to de minimis for Cargill, Inc. The country‑wide dumping margin was set at 39.2%.  Citation: 2009 Official Journal of the European Union (L 179) 26, 10 July 2009.

Filed in: 2009 International Law Update, Issue 6

In trademark dispute between large U.S. beverage maker and large Australian beverage maker over use of “Barefoot” mark on its wine, Federal Court of Appeal rules that Australian company did infringe U.S. company’s mark

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75 “This conclusion immediately raises for consideration an issue in Defendant’s notice of contention. It is whether its trade mark Barefoot Radler is deceptively similar to Plaintiff’s registered mark Barefoot. We are here concerned with the imperfect recollection of Plaintiff’s Mark when considering Defendant’s mark. The essence of Defendant’s argument was that the word ‘Radler’ is sufficiently distinctive in the allegedly infringing mark it has used to remove the real possibility that the other word ‘Barefoot’ would be sufficiently evocative of Plaintiff’s trade mark to satisfy the test for deceptive similarity. … Notwithstanding the inclusion of the word ‘Radler’ in Defendant’s mark, the word ‘Barefoot’ remains prominent and there is an obvious and clear link between that word and an imperfect recollection of Plaintiff’s registered mark such as to ‘likely deceive or cause confusion: § 10 TMA.”

76 “The last issue is Plaintiff’s challenge to the primary judge’s conclusion that Defendant cannot be taken to have infringed Plaintiff’s trade mark because using its sign as it did was not likely to deceive or cause confusion. This issue is raised by the concluding words of § 120(2) which have received only limited judicial consideration …”

77 “In the present case, Defendant pointed to the fact that its sign was used on beer. The beer was packaged in a beer bottle, packaged in six packs which, in turn were packaged in cartons. The beer was sold in retail stores in the section devoted to beer. It also pointed to the fact that its sign was used in conjunction with the image of a bare foot.”

“However, in our opinion, these matters do not advance Defendant’s defence. The use of the image of a bare foot with the words ‘Barefoot Radler’ would be more likely to reinforce the significance or prominence of the word ‘Barefoot’. The fact that the allegedly infringing mark was on beer packaged in the way described does not, in our opinion, tell against the likelihood that a person looking at beer packaged in this way would think that the beer originated from Plaintiff. …”

79 “The preceding analysis leads to the ultimate conclusion that, from the time Defendant launched its beer, it infringed the trade mark of Plaintiff. In these proceedings, Plaintiff indicated it would make no claim for pecuniary remedies after June 27, 2008. However, because of the various conclusions reached by the primary judge, it was unnecessary for his Honour to consider remedies for infringement.”

“It is appropriate that the parties be given an opportunity to consider what orders should be made in these proceedings and whether an order should be made remitting the matter to the primary judge to determine what further orders might be made. While, in the ordinary course, that would be the conventional order, it may well be appropriate to make an order directing the parties to mediation before any further hearing takes place in the proceedings.”

Citation: E&J Gallo Winery v. Lion Nathan Australia Pty Limited, [2009] F.C.A.F.C. 27; 2009 WL 765541 (Aust. Fed. Ct. App. 2009).

Filed in: 2009 International Law Update, Issue 1

In trademark dispute involving foreign mark, Second Circuit upholds summary judgment for Defendant since New York law demands that foreign holder produce evidence that Defendant’s potential New York customers primarily associate foreign Plaintiff’s mark with Plaintiff

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In trademark dispute involving foreign mark, Second Circuit upholds summary judgment for Defendant since New York law demands that foreign holder produce evidence that Defendant’s potential New York customers primarily associate foreign Plaintiff’s mark with Plaintiff

Plaintiffs here are ITC Limited and ITC Hotels Limited (collectively Plaintiffs); they sued Punchgini Inc., and Bukhara Grill II, Inc. (Defendants), in a New York federal court. They alleged infringements of various federal and New York trademark laws along with unfair competition relating to the restaurant trademark “Bukhara.”� Plaintiffs had not used the mark and the related trade dress in the U.S. for more than three years.

The District Court gave summary judgment to the Defendants, and Plaintiffs appealed. The U.S. Court of Appeals for the Second Circuit affirms.

In previous litigation, the Court had affirmed the grant of summary judgment on Plaintiff’s trademark infringement claims under Section 32(1)(a) of the federal Lanham Act and New York common law; it held that Plaintiff had abandoned its “Bukhara”� mark as applied to restaurant services in the U.S. The Court had also affirmed the denial of Plaintiffs’ federal unfair competition claim because it turned on the “famous marks”� doctrine, which Congress had not yet incorporated into federal trademark law.

Because the famous marks doctrine might support a New York common law claim for unfair competition, however, the Court certified two state law questions to the New York Court of Appeals: (1) “Does New York common law permit the owner of a federal mark or trade dress to assert property rights therein by virtue of the owner’s prior use of the mark or dress in a foreign country?”�; and (2) “If so, how famous must a foreign mark be to permit a foreign mark owner to bring a claim for unfair competition?”�

The New York Court of Appeals answered the first question in the affirmative. The specific principle is that “when a business, through renown in New York, possesses goodwill constituting property or commercial advantage in this state, that goodwill is protected from misappropriation under New York unfair competition law. This is so whether the business is domestic or foreign.”� [Slip op. 3]

The New York Court of Appeals answered the second question as follows. Protection from misappropriation of a famous foreign mark presupposes the existence of actual goodwill in New York. If the foreign party has no goodwill in New York, then there can be no unfair competition based on a misappropriation theory. At a minimum, consumers of the good or service at issue must primarily associate the mark with the foreign plaintiff.

The lower court identified the following factors as potentially relevant: (1) evidence that the defendant intentionally associated goods with those of the foreign Plaintiff in the minds of the public, such as public statements or advertising stating or implying a connection with the foreign Plaintiff; (2) direct evidence, such as consumer surveys, indicating that consumers of defendant’s goods or services believe them to be associated with the plaintiff; and (3) evidence of actual overlap between customers of the New York Defendant and the foreign Plaintiff.

The New York Court of Appeals observed that, to prevail against Defendants on an unfair competition theory under New York law, Plaintiff would have to show, that Defendants appropriated Plaintiff’s “Bukhara”� mark or trade dress for their New York restaurants. If that is the case, Plaintiff would then have to prove that the relevant consumer market for New York’s Bukhara restaurant primarily associates the Bukhara mark or trade dress with those Bukhara restaurants owned and operated by foreign Plaintiff. In sum, to pursue an unfair competition claim, Plaintiff must present proof of both deliberate copying and “secondary meaning.”�

The Second Circuit agrees with the lower court’s finding that enough evidence of deliberate copying exists here to satisfy that element of the claim. The Court then reviews the sufficiency of Plaintiff’s showing of “secondary meaning.”�

Plaintiff failed to create a genuine issue of material fact as to whether the Bukhara mark, when used in New York, calls Plaintiff’s restaurants to the minds of Defendants’ potential customers. “[Plaintiff's] evidence of goodwill [was] derived entirely from foreign media reports and sources and was unaccompanied by any evidence that would permit an inference that such reports or sources reach the relevant consumer market in New York. … [Plaintiff] proffered no evidence that it had “�directly targeted advertising of its Indian or other foreign “�Bukhara’ restaurants to the U.S.’”�

“It made no attempt to prove its goodwill in the relevant market through consumer study evidence linking the Bukhara mark to itself, and it presented no research reports demonstrating strong brand name recognition for the Bukhara mark anywhere in the U.S. Moreover, the record is devoid of any evidence of actual overlap between customers of Defendants’ restaurant and [Plaintiff's] Bukhara, aside from [Plaintiff's] own inadmissible speculation.”�

“Absent admissible evidence, however, a reasonable factfinder could not conclude that potential customers of Defendants’ restaurant would primarily associate the Bukhara mark with Plaintiff, particularly in light of evidence that numerous Indian restaurants in Massachusetts, Washington, Virginia, and around the world have used the name “�Bukhara,’ all without any affiliation or association with [Plaintiff].”� [Slip op. 6]

“[Plaintiff's] belated efforts to identify admissible evidence of secondary meaning are unavailing. First, [Plaintiff] points to record evidence that a significant number of Defendants’ customers are Indian or “�well traveled [people who] know what authentic Indian food tastes like.’ Even if these facts support a reasonable inference that this consumer market is “�more knowledgeable about India than the general New York population,’ [Plaintiff] provides no evidence”�apart from its own conjecture”�to support the conclusion that, as a consequence, these persons “�primarily associate’ the name “�Bukhara’ with [Plaintiff]. Conjecture, of course, is insufficient to withstand summary judgment.”�

“Second, [Plaintiff] argues that the district court failed to consider evidence of “�public statements or advertising stating or implying a connection with the foreign Plaintiff.’ [The appellate court] is not persuaded. The district court plainly considered this evidence and concluded that it supported [Plaintiff's] claim of intentional copying.”�

“Moreover, the district court recognized that “�there may be some circumstances in which intentional copying is sufficient to show “�secondary meaning.’ But it cogently explained why this was not such a case: “�it would be tautological to conclude that copying alone demonstrates “�secondary meaning’ sufficient to permit an unfair competition claim as to a foreign mark here, where that copying is only prohibited by the “�well known’ or “�famous’ mark exception if the mark has “�secondary meaning.’”�

“We adopt this reasoning as consistent with the New York Court of Appeals’ conclusion that more than copying is necessary for a famous foreign mark holder to pursue a state law claim for unfair competition. That foreign holder must further offer evidence that the Defendants’ potential customers “�primarily associate[]‘ the mark with the foreign holder.’ [Plaintiff] cannot satisfy this burden simply by pointing to evidence of obvious similarities between Defendants’ Bukhara Grill and [Plaintiff's] own Bukhara restaurant, because such evidence is no proof that Defendants’ potential customers were even aware of the existence of [Plaintiff's] Bukhara.”� [Slip op. 6 7].

Citation: ITC Hotels Ltd. v. Punchgini, Inc., 2008 WL 612326 (2d Cir. 2008).

Filed in: 2008 International Law Update, Issue 3

European Court of Human Rights holds that Budweiser could not invoke protection of Protocol No. 1 in suit against Portugal for rejecting its trade mark application since mark had never become its “possession”

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European Court of Human Rights holds that Budweiser could not invoke protection of Protocol No. 1 in suit against Portugal for rejecting its trade mark application since mark had never become its “possession”

Anheuser-Busch Inc. (applicant) is a Missouri corporation that makes and markets its beer products around the world. In 1981, it applied to register “Budweiser” as a trade mark in Portugal but the Portuguese agency delayed its action because Budejovicky Budvar of the Czech Republic had already registered “Budweiser Bier” as a designation of origin. A bilateral treaty between Portugal and the Czech Republic’s predecessor entered into force in 1987 to mutually protect registered designations of origin.

Though applicant fully litigated the validity of Budvar’s registration, Portugal’s highest court ultimately ruled that the Agreement protected Budvar’s designation of origin. In July 2001, the applicant asked the European Court of Human Rights (ECHR) for relief against Portugal. It relied on Protocol No. 1 to the European Convention for the Protection of Human Rights and Fundamental Freedoms [312 U.N.T.S. 221, Nov. 4, 1950, as amended]. Article 1 of Protocol No. 1 [313 U.N.T.S. 262, Mar. 20, 1952] provides in part that “Every natural or legal person is entitled to the peaceful enjoyment of his possessions. No one shall be deprived of his possessions except in the public interest and subject to the conditions provided for by law and by the general principles of international law.”

In a 5 to 2 decision, a Chamber of the ECHR rules in favor of Portugal. The Court sees the controlling issue as precisely when, if at all, the right to protection of the trade mark became applicant’s “possession” within the meaning of Article 1.

The Court first points out that applying to register a trade mark clearly does implicate applicant’s economic interests in protecting its internationally known brand name. “However, … Anheuser Busch Inc.’s legal position was not sufficiently strong to amount to a ‘legitimate expectation’ that attracted the protection of Article 1 of Protocol No. 1. The applicant company could not be sure of being the holder of the trade mark in question until after it had been definitively registered and then only on condition that no objection was [timely] raised by a third party in that respect.”

“In conclusion, … while it was clear that a trade mark amounted to a ‘possession’ within the meaning of Article 1 of Protocol No. 1, this was not the case until final registration of the application in question, in accordance with the rules in force in the State concerned. Prior to such registration, applicants did of course have a hope of acquiring such a ‘possession’, but not a legally protected legitimate expectation. … Accordingly, … Article 1 of Protocol No. 1 was inapplicable to the present case and could not therefore have been infringed.” [Quotes are from ECHR registrar's summary of French judgment.]

Citation: Anheuser Busch Inc. v. Portugal, appl. no. 73049/01; E.C.H.R. 529 (November 10, 2005). [See Court’s judgment in French on its Internet site: http://www.echr.coe.int.]

Filed in: 2006 International Law Update, Issue 1

First Circuit specifies, as matter of first impression, circumstances under which Lanham Act grants subject matter jurisdiction over extraterritorial conduct by foreign defendants under effects test

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First Circuit specifies, as matter of first impression, circumstances under which Lanham Act grants subject matter jurisdiction over extraterritorial conduct by foreign defendants under effects test

Cecil McBee is an American Jazz musician. A Japanese company, Delica Co., Ltd. (Delica) chose that name for its adolescent female clothing products beginning in 1984. Delica maintains an internet website for its products, and sales exceed $100 million per year. The company, however, also has a policy not to sell “Cecil McBee” products in the U.S. McBee was able to buy $2,500 worth of “Cecil McBee” products in Japan through investigators, and had them shipped to the U.S. He then sued Delica for false endorsement and dilution pursuant to the Lanham Act, 15 U.S.C. Section 1051. The district court dismissed the Lanham Act claims for lack of subject matter jurisdiction.

The U.S. Court of Appeals for the First Circuit affirms, and develops a test for the extraterritorial application of the Lanham Act. As a matter of first impression, the Court holds that the Act grants subject matter jurisdiction over extraterritorial conduct by foreign defendants only when such conduct has a substantial effect on U.S. commerce.

The Court expressly disagrees with the approaches of the Second and Ninth Circuits, and formulates the following test: “Our framework asks first whether the defendant is an American citizen; that inquiry is different because a separate constitutional basis for jurisdiction exists for control of activities, even foreign activities, of an American citizen. Further, when the Lanham Act plaintiff seeks to enjoin sales in the United States, there is no question of extraterritorial application; the court has subject matter jurisdiction.”

“In order for a plaintiff to reach foreign activities of foreign defendants in American courts, however, we adopt a separate test. We hold that subject matter jurisdiction under the Lanham Act is proper only if the complained-of activities have a substantial effect on United States commerce, viewed in light of the purposes of the Lanham Act. If this ‘substantial effects’ question is answered in the negative, then the court lacks jurisdiction over the defendant’s extraterritorial acts; if it is answered in the affirmative, then the court possesses subject matter jurisdiction.”

“We reject the notion that a comity analysis is part of subject matter jurisdiction. Comity considerations, including potential conflicts with foreign trademark law, are properly treated as questions of whether a court should, in its discretion, decline to exercise subject matter jurisdiction that it already possesses. Our approach to each of these issues is in harmony with the analogous rules for extraterritorial application of the antitrust laws.” [Slip op. 1]

Applying this framework to the case at hand, the Court finds subject matter jurisdiction over McBee’s petition for an injunction barring Delica’s U.S. sales. Since those sales are domestic acts, McBee need not satisfy the substantial-effects-on-U.S.-commerce test.

On the other hand, McBee’s request for an injunction barring access to Delica’s website fails; it would require an extraterritorial application of the Lanham Act and he failed to show a substantial effect from the website. Finally, McBee’s claim for damages based on Delica’s sales in Japan fails because he did not show a substantial effect of those sales on U.S. commerce.

Citation: McBee v. Delica Co., Ltd., No. 04-2733 (1st Cir. August 2, 2005).

Filed in: 2005 International Law Update, Issue 8

Under Cuba trade embargo provisions, Cuban cigar maker did not acquire U.S. trademark protection because it had failed to register it in U.S. and because it could not rely on “famous marks” doctrine under applicable statutes and treaties

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Under Cuba trade embargo provisions, Cuban cigar maker did not acquire U.S. trademark protection because it had failed to register it in U.S. and because it could not rely on “famous marks” doctrine under applicable statutes and treaties

In 1963, the United States imposed an embargo on trade with Cuba. The Cuban Asset Control Regulations (CAR)), 31 C.F.R. Section 515.201 etc. based on Section 5(b) of the Trading with the Enemy Act of 1917, codified as amended at 12 U.S.C. Section 95a (2000), set forth the ban. Thirty-three years later, Congress codified the Regulations in the Cuban Liberty and Democratic Solidarity Act of 1996 (LIBERTAD Act), codified at 22 U.S.C. Section 6032(h)). The Secretary of the Treasury has delegated its administration to the Office of Foreign Assets Control (OFAC).

The Embargo Regulations ban Cuban companies such as Empresa Cubana del Tabaco, d.b.a. Cubatabaco (plaintiff) from marketing cigars in the U.S. Plaintiff nevertheless claims that it owns the U.S. COHIBA mark and that the sale by Culbro Corp., and General Cigar Co. (defendants), U.S. companies, of COHIBA cigars in the U.S. unlawfully infringes its mark.

In 1969, plaintiff registered the COHIBA mark within Cuba. By January 1978, plaintiff set about to register the COHIBA mark in seventeen nations, including most Western European countries, but not the U.S. In 1983, plaintiff thought about registering its COHIBA mark in the U.S. until it found out that defendant had already secured the U.S. registration.

In February 1985, plaintiff applied to the U.S. Patent and Trademark Office (PTO) to register its BEHIQUE mark with the same trade dress that it was using on its COHIBA cigars elsewhere. Two years later, plaintiff pondered challenging defendant’s 1981 COHIBA registration, but decided against it.

Defendant first discovered the name “Cohiba” in the late 1970s. After seeing reports that plaintiff was intending to sell its COHIBA cigars outside of Cuba, defendant applied to register the COHIBA mark with the PTO in March 1978, with a claimed first use date of February 13, 1978. Defendant obtained the unopposed registration in February 1981. Defendant concedes that the Cuban COHIBA was already well known to U.S. cigar consumers when defendant was selling COHIBA cigars in the U.S. from 1978 until late 1987. In early 1997, defendant launched a new cigar under the COHIBA name.

Plaintiff sued defendant in a New York federal court in November 1997. The first six claims alleged violations of various treaty provisions and asserted that plaintiff was entitled to relief under Sections 44(b) and 44(h) of the Lanham Act, 15 U.S.C. Section 1126(b), (h). Specifically, of the claims actually passed on by the lower Court, plaintiff claimed, inter alia, that defendant had violated: (1) the protection under Article 6bis of the Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as revised at Stockholm, July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S. 305 (‘Paris Convention’), for famous marks; (2) Section 10bis of the Paris Convention’s ban on unfair competition; (3) Articles 7 and 8 of the General Inter American Convention for Trade Mark and Commercial Protection, Feb. 20, 1929, 46 Stat. 2907 (IAC) by using and registering COHIBA for cigars knowing about plaintiff’s use of the mark on cigars; (4) Articles 20 and 21 of the IAC’s prohibition against unfair competition.

In November 2001, defendant moved for summary judgment based on estoppel, acquiescence, and laches, due to plaintiff’s alleged delay in objecting to defendant’s use of the COHIBA mark. On January 29, 2002, plaintiff moved to dismiss defendant’s affirmative defenses. Plaintiff also moved for partial summary judgment on its claim that defendant had abandoned its 1981 registration, as well as its claims that defendant violated Articles 7 and 8 of the IAC, Article 6bis of the Paris Convention, New York common law, and the Federal Trademark Dilution Act (FTDA), 15 U.S.C. Section 1125(c).

In June 2002, the District Court granted plaintiff a partial summary judgment on its claim that defendant had abandoned the COHIBA mark during its period of non use from 1987 to 1992. The court also dismissed defendant’s affirmative defenses of acquiescence, estoppel, and laches.

On May 6, 2004, the District Court entered an order, judgment, and permanent injunction. The court inter alia: (1) granted plaintiff a judgment against the defendant on its claim for infringement of plaintiff’s COHIBA mark pursuant to 15 U.S.C. Section 1125(a) and granted judgment to plaintiff on its claim that, prior to November 1992, defendant had abandoned the COHIBA mark. The court also canceled defendant’s trademark registration for the COHIBA mark, and permanently enjoined defendant from using it; and (3) ordered defendant to deliver to plaintiff all goods and labels bearing the COHIBA mark, and to recall from retail customers and distributors products bearing the mark.

The U.S. Court of Appeals for the Second Circuit affirms in part, reverses in part, and remands. It reverses the District Court’s grant of judgment to Cubatabaco on its claim of trademark infringement under Section 43(a) of the Lanham Act and affirms the lower court’s dismissal of all other claims brought by Cubatabaco.

“[A]bsent a general or specific license, [Regulation] Section 515.201(b)(1) prohibits transfers of trademarks to Cuban entities by persons subject to the jurisdiction of the U.S.

The District Court’s holding that plaintiff’s mark was sufficiently famous in 1992 for property rights to attach could be viewed as a transfer of [such] property rights to plaintiff. “[W]e need not resolve it because plaintiff’s acquisition of the mark through the famous marks doctrine is plainly barred by Section 515.201(b)(2).”

“Indeed, plaintiff does not appear to be arguing that Section 515.527(a)(1) permits acquisition through the famous marks doctrine. Instead, plaintiff argues that (1) its acquisition of the mark is not prohibited by Section 515.201(b) because that section does not cover transfers by operation of law and (2) its acquisition of the mark is in any event permitted by the special license granted to it by the OFAC.” [473]

The Court rejects the applicability of a general license and sees no merit in the special license argument. “…[The special license issued by OFAC to Cubatabaco, which allows Cubatabaco to ‘pursue ... judicial remedies with respect to claims to the COHIBA trademark,' does not permit acquisition of the mark via the famous marks doctrine. This license allows Cubatabaco to seek relief in U.S. courts, but does not authorize transfers of property barred by the Regulations.” [Id. at note 4]

The government argued, the Court notes, that pursuant to Section 43(a), the Embargo Regulations do not stand in the way of the lower court’s orders. “Section 43(a) also ‘goes beyond trademark protection’ in the sense that the provision can be used to protect trade dress or to protect against other forms of product infringement.”

“But this is not a case about trade dress. … This is, rather, a case about which entity owns the COHIBA trademark in the U.S., and – principally because we hold that the Regulations prohibit transfer of any property right in the COHIBA mark to plaintiff – we hold today that defendant, and not plaintiff, owns the COHIBA trademark in the U.S. .”[478, note 9]

“[A noted scholar] asserts that claims for protection of ‘famous’ marks should be brought under Section 43(a). [That Section] gives a foreign national without a federal registration of its mark standing to sue in a federal court, [to] invoke the well known marks doctrine of the Paris Convention Article 6bis, and [to] prevail if its mark is so well known in the U.S. that confusion is likely. To the extent that a foreign entity attempts to utilize the famous marks doctrine as basis for its right to a U.S. trademark and seeks to prevent another entity from using the mark in the U.S., the claim should be brought under Section 43(a).”

“Article 23 of the IAC, which appears under Chapter V of the IAC entitled ‘Repression of False Indications of Geographical Origin or Sources,’ provides: ‘Every indication of geographical origin or source which does not actually correspond to the place in which the article, product or merchandise was fabricated, manufactured, produced or harvested, shall be considered fraudulent and illegal, and therefore prohibited.’ IAC, Article 23, 46 Stat. at 2934.”

“Article 20 of the IAC provides that ‘[e]very act or deed contrary to commercial good faith or to the normal and honorable development of industrial or business activities shall be considered as unfair competition and, therefore, unjust and prohibited.’ IAC, Art. 20, 46 Stat. at 2930 32.” [484 at note 12]

“Cubatabaco does not claim that Article 21 prohibits a broader range of conduct than Section 43(a) of the Lanham Act. Therefore, Cubatabaco cannot bring a claim under Article 21 of the IAC pursuant to Sections 44(b) and (h). To the extent Cubatabaco is attempting to raise claims under IAC Article 20, that provision does not provide a separate basis for relief because it is implemented through Section 43(a) of the Lanham Act.” [484]

Citation: Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462 (2nd Cir. 2005).

Filed in: 2005 International Law Update, Issue 6

In answering questions about EU trademark law referred to it by Finland’s Supreme Court, the European Court of Justice also explains that whether defendant’s claim of its razor’s compatibility with Gillette’s blades on its packaging of similar products in Finland runs afoul of EU trademark directive turns on key facts to be determined by Finnish courts

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In answering questions about EU trademark law referred to it by Finland’s Supreme Court, the European Court of Justice also explains that whether defendant’s claim of its razor’s compatibility with Gillette’s blades on its packaging of similar products in Finland runs afoul of EU trademark directive turns on key facts to be determined by Finnish courts

The highest court of Finland has sought a preliminary ruling pursuant to Article 234 of the Rome Treaty on the interpretation of Article 6(1)(c) of the First Council Directive 89/104/EEC dated December 21, 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). The dispute arose between the Gillette Company and Gillette Group Finland Oy (the Gillette companies or the plaintiffs) and, LALaboratories Ltd. Oy (LAL or defendant), over the latter’s mention of the “Gillette” and “Sensor” marks on the packaging of defendant’s products in Finland.

Directive Article 6 grants the trade mark owner the exclusive rights to the mark, barring others from making use of it in a way that is likely to confuse consumers as to which is which. In dealing with limitations to trade mark protection, it then provides: “1. The trade mark shall not entitle the proprietor to prohibit a third party from using [its trade mark], in the course of trade, … (c) … where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts; provided he uses them in accordance with honest practices in industrial or commercial matters.”

In Finland, the tavaramerkkilaki (Law on Trade Marks) (7/1964) of January 10, 1964, as amended by Law No 39/1993 of January 25, 1993 regulates trade mark rights. Article 4(1) of the tavaramerkkilaki, concerning the content of the exclusive rights of the trade mark owner, provides: “The right under Articles 1 to 3 of this law to affix a distinctive sign on one’s goods means that no one other than the proprietor of the sign may, in the course of trade, use as a sign for his products references which could create confusion, whether on the goods or their packaging, in advertising or business documents or otherwise, including by word of mouth…”

Within Finland, the Gillette Company of the U.S. has registered the trade marks “Gillette” and “Sensor” as Class 8 products within the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended. Class 8 includes hand tools and implements (hand operated), cutlery, side arms, and razors.

Gillette Group Finland (GGF) holds the exclusive right to use those marks in Finland; it has been marketing razors in that Member State, including razors composed of a handle and a replaceable blade and such blades sold separately.

LAL also sells razors in Finland consisting of a handle and a replaceable blade and blades sold on their own similar to those marketed by GGF. It sells those blades under the mark “Parason Flexor.” Their packaging, however, features a sticker bearing the words “All Parason Flexor and Gillette Sensor handles are compatible with this blade.” According to the reference order, LAL is not authorized by a trade mark licence or any other contract to use the marks which the Gillette Company owns.

Plaintiffs filed an action before the Helsingin karajaoikeus (Finland) (Court of First Instance of Helsinki) claiming that LAL had infringed the registered marks “Gillette” and “Sensor.” According to them, LAL’s packaging tended (1) to create a link in the mind of consumers between LAL’s products and those of the Gillette companies, or (2) to give the false impression that LAL was authorized, by virtue of a licence or for another reason, to use the “Gillette” and “Sensor” marks.

In its judgment of March 30, 2000, the Helsingin karajaoikeus held that, under Article 4(1) of the tavaramerkkilaki,… mentioning those marks in an eye catching manner on the packaging of its products, LAL had infringed that exclusive right. The court ordered LAL (1) to remove and destroy the stickers used in Finland referring to those trade marks, and, (2) to pay the plaintiffs a total of FIM 30,000 in damages for the harm suffered by them.

On LAL’s appeal, the Helsingin hovioikeus (Court of Appeal of Helsinki), annulled the judgment of the lower court and dismissed the plaintiffs’ suit on May 17, 2001. It ruled that the replaceable blades fell within the “spare part” exception to the domestic statute.

It also held that the information on the sticker could be useful to the consumer and that LAL might, therefore, be able to show the need for the sticker to refer to the plaintiffs’ trade marks by name.

Finally, the Court determined that the packaging of razor blades marketed by LAL visibly bore the Parason and Flexor signs, unambiguously showing the true origin of defendant’s product.

The plaintiffs next took the case to the Korkein oikeus (Finnish Supreme Court or FSC). The FSC thought that the case raised questions as to the interpretation of Article 6(1)(c) of Directive 89/104 in several aspects. First are the criteria for determining whether, by its nature, a product is or is not comparable to a “spare part” or an “accessory.”

Secondly, there are questions about the scope of the phrase “honest practices” in industrial or commercial matters. Finally, the interpretation of those provisions also has to take account of Directive 84/450. In those circumstances, the FSC decided to stay the proceedings and refer these questions to the European Court of Justice (ECJ) for a preliminary ruling.

The five members of the ECJ’s Third Chamber came to the following conclusions. “The lawfulness or otherwise of the use of the trade mark under Article 6(1)(c) of the First Council Directive 89/104/EEC of 21 December 1988 … depends on whether that use is necessary to indicate the intended purpose of a product.”

“Use of the trade mark by a third party who is not its owner is necessary in order to indicate the intended purpose of a product marketed by that third party where such use in practice constitutes the only means of providing the public with comprehensible and complete information on that intended purpose in order to preserve the undistorted system of competition in the market for that product.”

“It is for the national court to determine whether, in the case in the main proceedings, such use is necessary, taking account of the nature of the public for which the product marketed by the third party in question is intended.”

“Since Article 6(1)(c) of Directive 89/104 makes no distinction between the possible intended purposes of products when assessing the lawfulness of the use of the trade mark, the criteria for assessing the lawfulness of the use of the trade mark with accessories or spare parts in particular are thus no different from those applicable to other categories of possible intended purposes for the products.” [Ruling, ¶ 1]

“The condition of ‘honest use’ within the meaning of Article 6(1)(c) of Directive 89/104, constitutes, in substance, the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner. The use of the trade mark will not be in accordance with honest practices in industrial and commercial matters if, for example: it is done in such a manner as to give the impression that there is a commercial connection between the third party and the trade mark owner; [or] it affects the value of the trade mark by taking unfair advantage of its distinctive character or repute; [or] it entails the discrediting or denigration of that mark; or where the third party presents its product as an imitation or replica of the product bearing the trade mark of which it is not the owner.”[Ruling ¶ 2]

“The fact that a third party uses a trade mark of which it is not the owner in order to indicate the intended purpose of the product which it markets, does not necessarily mean that it is presenting it as being of the same quality as, or having equivalent properties to, those of the product bearing the trade mark. Whether there has been such presentation depends on the facts of the case, and it is for the referring court to determine whether it has taken place by reference to the circumstances.”

“Whether the product marketed by the third party has been presented as being of the same quality as, or having equivalent properties to, the product whose trade mark is being used is a factor which the referring court must take into consideration when it verifies that that use is made in accordance with honest practices in industrial or commercial matters.” [Ruling, id.]

“Where a third party that uses a trade mark … markets not only a spare part or an accessory but also the product itself with which the spare part or accessory is intended to be used, such use falls within the scope of Article 6(1)(c) of Directive 89/104 in so far as it is necessary to indicate the intended purpose of the product marketed by the latter and is made in accordance with honest practices in industrial and commercial matters.”[Ruling ¶ 3]

Citation: The Gillette Company, v. LA Laboratories Ltd Oy, European Court of Justice; Case C 228/03; Celex No. 603J0228 [2005].

Filed in: 2005 International Law Update, Issue 5

n dispute between Mexican and U.S. parties over trademark, Ninth Circuit holds that there is exception from territoriality principle for famous and well-known foreign marks

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In dispute between Mexican and U.S. parties over trademark, Ninth Circuit holds that there is exception from territoriality principle for famous and well-known foreign marks

The Mexican company, Grupo Gigante S.A. de C.V. (Grupo Gigante). operates many “Gigante” grocery stores in Mexico. The company started in 1962, and by 1991 had almost 100 stores, two of which were located just across the border from San Diego. In 1991, Michael Dallo opened his “Gigante Market” grocery store in San Diego, and his brother Chris opened a second one in 1996.

Grupo Gigante then entered the U.S. market in 1999 by opening several stores in the Los Angeles area. Shortly thereafter, the Dallos sent Grupo Gigante a “cease and desist” letter to stop them from using the word “Gigante.” To this Grupo Gigante responded by filing the present trademark action.

The district court noted that based on the “territoriality principle,” the use of a mark abroad does not preserve any trademark rights in the U.S. Here, however, Grupo Gigante’s use of the mark was well known in Southern California at the time when the Dallos began using it. Thus, the district court applied the “famous mark” or “well-known mark” exception to the territoriality principle and held that Grupo Gigante had a valid claim to the “Gigante” name. Nevertheless, in the court’s view, laches barred Grupo Gigante from enjoining the Dallos’ use of the name because it did not diligently enforce its mark. This appeal ensued. The U.S. Court of Appeals for the Ninth Circuit vacates and remands.

The Court first lays out the legal principles evoked by this case. ” … [T]he facts of this case implicate … the ‘territoriality principle.’ The territoriality principle, as stated in a treatise, says that ‘priority of trademark rights in the United States depends solely upon priority of use in the United States, not on priority of use anywhere in the world.’ Earlier use in another country usually does not count.”

“Although we have not had occasion to address this principle, it has been described by our sister circuits as ‘basic to trademark law,’ in large part because ‘trademark rights exist in each country solely according to that country’s statutory scheme.’ While Grupo Gigante used the mark for decades before the Dallos used it, Grupo Gigante’s use was in Mexico, not in the United States. Within the San Diego area, on the northern side of the border, the Dallos were the first users of the ‘Gigante’ mark. Thus, according to the territoriality principle, the Dallos’ rights to use the mark would trump Grupo Gigante’s.” [Slip op. 7-8]

The Court, however, points to an exception to this principle when the foreign use of a mark achieves a certain level of fame within the U.S. “There is not circuit-court authority – from this or any other circuit – applying a famous-mark exception to the territoriality principle. At least one circuit judge has, in a dissent, called into question whether there actually is any meaningful famous-mark exception.”

“We hold, however, that there is a famous mark exception to the territoriality principle. While the territoriality principle is a long-standing and important doctrine within trademark law, it cannot be absolute. An absolute territoriality rule without a famous mark exception would promote consumer confusion and fraud. Commerce crosses borders. In this nation of immigrants, so do people. Trademark is, at its core, about protecting against consumer confusion and ‘palming off.’ There can be no justification for using trademark law to fool immigrants into thinking that they are buying from the store they liked back home.” [Slip op. 11-12]

The Court then lays out the following analysis. First, the court has to determine whether the mark satisfies the secondary meaning test. “Secondary meaning” is a mark’s actual ability to trigger in the consumers’ mind a link between a product or service and the source of that product or service. Therefore, a mark has secondary meaning when it primarily identifies the source of the product rather than the product itself.

Second, when a party has not yet used a trademark in the U.S. market, the court must determine, by a preponderance of the evidence, whether a substantial percentage of consumers in the relevant U.S. market is familiar with the foreign mark. The relevant U.S. market is the geographic area where the defendant uses the allegedly infringing mark.

Finally, the Court adds: “In making this determination, the court should consider such factors as the intentional copying of the mark by the defendant, and whether customers of the American firm are likely to think that they are patronizing the same firm that uses the mark in another country. While these factors are not necessarily determinative, they are particularly relevant because they bear heavily on the risks of consumer confusion and fraud, which are the reasons for having a famous-mark exception.” [Slip op. 24-25]

The Court therefore remands for the district court to take these factors into account.

Citation: Grupo Gigante SA de CV v. Dallo & Co., Inc., No. 00-57118 (9th Cir. December 15, 2004).

Filed in: 2005 International Law Update, Issue1

In EC 234 referral from Finnish Supreme Court in trademark litigation between Anheuser-Busch and Czech brewers, European Court of Justice advises that TRIPS Agreement applies to case, that a trade name may constitute “sign” under EU Directive and amounts to intellectual property under TRIPS

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In EC 234 referral from Finnish Supreme Court in trademark litigation between Anheuser-Busch and Czech brewers, European Court of Justice advises that TRIPS Agreement applies to case, that a trade name may constitute “sign” under EU Directive and amounts to intellectual property under TRIPS

This case is one of dozens between the Czech brewery, Budejovicky Budvar (hereinafter Budvar), and the U.S. brewery Anheuser-Busch Ltd. (ABL) over the use of the names “Budweiser,” “Bud” and “Budvar,” since Budvar’s first exports to the U.S. in 1906. On November 16, 2004, the European Court of Justice (ECJ) handed down its advisory opinion of EU law referred to it by the Finnish Supreme Court pursuant to EC 234.

The referral arose out of a 1996 Finnish action brought by ABL to prevent Budvar from marketing its beer in Finland under names such as “Budweiser.” In 1962 and 1972, Budvar had registered its trade marks Budvar and Budweiser Budvar in Finland. Budvar registered its trade name during 1967 in the Czechoslovakian commercial register. In 1984, however, a Finnish court had forfeited the marks for lack of use in that country.

Between 1985 and 1992, ABL registered several of its marks in Finland, such as “Budweiser,” “Bud,” and “Budweiser King of Beers.” In 1996, it filed a suit in the Helsinki District Court (Helsingin käräjäoikeus) to prevent Budvar from using names and signs similar to Budweiser because they could be confusing for consumers.

In 1998, the Finnish District Court decided that Budvar’s bottle labels differed so substantially from ABL’s labels that consumers were unlikely to confuse the two products. It also held that the inscription “Brewed and bottled by the Brewery Budweiser Budvar national enterprise” on the labels was not a mark but merely informed the public of the brewery’s business name. Two years later, the Helsinki Court of Appeals (Helsingin hovioikeus) decided that the evidence was not enough to prove that Finnish beer-drinkers were familiar with the English version of Budvar’s marks

before ABL’s registrations. Both parties appealed to the Supreme Court of Finland.

That Court in turn sought the ECJ’s interpretation (1) of the 1989 European Directive 89/104/EEC to harmonize the laws of the Member States relating to trademarks [1989 O.J. of the European Communities (L 40) 1], and (2) of Article 16 of the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) on the scope of the rights conferred by trade marks under EU law.

The questions posed by the Finnish Supreme Court included: (1) If the conflict between a trade mark and an allegedly infringing sign occurred before the entry into force of the TRIPs Agreement but continues thereafter, does the TRIPs Agreement apply to the question of which right has the earlier legal basis? (2) Can the trade name of a company also act as a sign for goods and services within the meaning of Article 16(1) of the TRIPs Agreement, and if yes, under what conditions? (3) How should the reference in Article 16(1) to “existing prior rights” that should not be prejudiced be interpreted, and how should that be done in the case of a trade name that is not registered in the state where the trade mark is registered? What factors are decisive?

The ECJ first observes that Budvar’s allegedly unlawful acts began before the TRIPS Agreement’s 1996 entry into force. Because the acts continued thereafter, however, the Agreement does apply to this case.

As for the second question, the ECJ holds that a trade name may constitute a “sign” within Article 16(1). It confers upon the trade mark owner the exclusive right to prevent another party from using the sign if it prejudices the trade mark. One example of prejudice would be impairing the essential goal of assuring consumers as to the products’ true origin.

It is generally up to the national courts to figure out how the targeted consumers interpret a sign such as “Budvar” and whether it does distinguish the products at issue. If the owner uses it to distinguish its beer “in the course of trade,” Article 5(1)(a) of the Directive provides absolute protection. On the other hand, if the national court decides that Budvar uses “Budvar” only as a trade or company name, then Directive Article 5(5) requires the court to apply its domestic law to ascertain the precise rights that ABL enjoys.

The ECJ further explains that Article 17 of the TRIPs Agreement allows third parties to use a sign in good faith to indicate their names and/or addresses. Article 6 of the Directive also allows such use if it accords with honest practices. The national court has to consider not only the extent to which the public uses the trade name to link the products to the mark, but also the extent to which the third party should have been aware of it. Here, the Finnish court should assess all the relevant circumstances (e.g., the labeling of the bottles) to determine whether Budvar is competing unfairly with ABL.

Where the owner of a trade name has a right that arose prior to the trade mark at issue, the Agreement does not allow a court to ban the use of that trade name. A trade name may constitute an existing right under the Agreement entitled to protection.

As to the third question, the ECJ declares: “… [A] trade name is a right falling within the scope of the term ‘intellectual property’ within the meaning of Article 1(2) of the TRIPs Agreement. Moreover, it follows from Article 2(1) of the TRIPs Agreement that the protection of trade names … is expressly incorporated into that agreement. Therefore, … the members of the WTO are under an obligation to protect trade names …”

“It must, moreover, be an existing right. The term ‘existing’ means that the right concerned must fall within the temporal scope of the TRIPS Agreement and still be protected at the time when it is relied on by its proprietor in order to counter the claims of the proprietor of the trade mark with which it is alleged to conflict.”

“In the present case, it must therefore be ascertained whether the trade name in question, which the parties agree is neither registered nor established by use in the Member State in which the trade mark is registered and in which the protection afforded by that mark against the trade name in question is sought, satisfies the conditions set out in the preceding paragraph of this judgment.” [¶¶ 91-95] See also ECJ Case C-216/01, Budejovicky v. Rudolf Ammersin GmbH, 2004 International Law Update 26.

Citation: Case C-245/02, Anheuser-Busch, Inc. v. Budejovicky Budvar, narodni podnik (E.C.J. , Nov. 16, 2004); ECJ press release No 93/04 (16 Nov. 2004); report on morningstar.com (Dow Jones & Company, Inc.) dated Nov. 16, 2004 at 06:30 A.M., E.S.T.

Filed in: 2004 International Law Update, Issue11

In trade mark application by Procter & Gamble, European Court of Justice upholds lower court’s ruling that geometric shapes and patterns of applicant’s detergent tablets lacked degree of distinctiveness that would inform typical European consumers as to identity of manufacturer

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In trade mark application by Procter & Gamble, European Court of Justice upholds lower court’s ruling that geometric shapes and patterns of applicant’s detergent tablets lacked degree of distinctiveness that would inform typical European consumers as to identity of manufacturer

In October 1998, Procter & Gamble Company of Ohio (P/G) applied to the E.C.’s Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) to register two detergents in tablet form as distinctive Community trade marks. The tablets are three dimensional in shape, one square and the other rectangular, with “chamfered” edges, beveled or slightly rounded corners, and with speckles and inlays on the upper surfaces. In March 2000, the OHIM declined to register the detergents as Community trade marks.

When P/G had gone to the Court of First Instance (CFI), it had partially dismissed P/G’s actions for annulment of the OHIM decisions of March 2000. The CFI pointed out that Article 7(1)(b) of Regulation No. 40/94 provides that trade marks that lack any distinctive character do not qualify for registration.

The CFI noted that the mark does not have to convey exact information about the identity of the product’s manufacturer or the supplier of the services. It need only make it possible for members of the public concerned [1] to distinguish the product or service that it designates from those which have a different trade origin, [2] to conclude that all the products or services that it designates have been made, sold or supplied under the control of the mark’s owner and [3] to rest assured that the owner is accountable for their quality.

“The three dimensional shape for which registration has been sought … is one of the basic geometrical shapes and is an obvious one for a product intended for use in washing machines or dishwashers. The slightly rounded corners of the tablet are dictated by practical considerations and are not likely to be perceived by the average consumer as a distinctive feature of the shape claimed, capable of distinguishing it from other washing machine or dishwasher tablets. Likewise, the chamfered edges are a barely perceptible variant on the basic shape and have no impact on the overall impression made by the tablet.”

“As regards the presence of speckles and a darker triangular inlay in the centre of the tablet, … [the Board] remarked, when dealing with the … inlay, that the use of different colours was commonplace for the goods in question … That statement demonstrates that the Board of Appeal took the view that the speckles were not capable of rendering the mark applied for distinctive, since what was involved was a commonplace feature. The contested decision is therefore sufficiently reasoned in that regard.” [¶¶ 56-57 CFI]

Given the overall impression created by the combination of the shape and pattern of the tablet in question, the mark applied for does not enable consumers to distinguish the products concerned from those having a different trade origin when they come to select a product for purchase.” [¶ 63 CFI] Therefore, the CFI partially dismissed the actions brought by P/G against the contested decisions.

By applications lodged at the Registry of the European Court of Justice (ECJ) in December 2001, P/G appealed under Article 49 of the E.C. Statute of the Court of Justice against the two adverse CFI judgments. In support of its appeals, P/G maintained that the CFI made an error of law in its reading of Article 7(1)(b) of Regulation No 40/94.

Preliminarily, the ECJ (Sixth Chamber) summarizes applicable E.C. law. It first notes that [P/G's] single plea in law has three main points of analysis: [1] the distinctive character of the trade marks for which registration is sought; [2] the need to consider the trade mark as a whole; and [3] the assessment of the average consumer’s level of attention.

Under Article 4 of Regulation No 40/94, the Court notes, a Community trade mark may consist of any signs capable of being represented graphically, along as such signs can distinguish the products or services of one undertaking from those of other undertakings.

Article 4 is clear that both a product’s shape and its colors fall among the signs which may constitute a Community trade mark. Therefore, as a matter of principle, a sign consisting of the three dimensional shape of a square or rectangular tablet for washing machines or dishwashers, with chamfered edges, beveled or slightly rounded corners, speckles and an inlay on the upper surface may qualify as a trade mark, provided that it meets the conditions mentioned above.

The ECJ, however, determines that P/G’s appeal is unfounded and dismisses it. “For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings.” [¶ 32]

“That distinctive character must be assessed, first, by reference to the products or services in respect of which registration has been applied for and, second, by reference to the perception of them by the relevant public, which consists of average consumers of the products or services in question, who are reasonably well informed and reasonably observant and circumspect [Cites].” [¶¶ 32-33]

The CFI properly assessed whether the trade marks at issue had any distinctive character in line with settled ECJ case law. It focused on two reference points. First, it compared the products to the products or services with respect to which their registration was sought. Second, it took into account the perception of the relevant public, which consists here of all consumers. In holding that P/G’s trade marks for which it sought registration are barren of any distinctive character for the purposes of Article 7(1)(b), the CFI did not make an error of law.

“Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three dimensional mark than in relation to a word or figurative mark.”

“The actual application by the [CFI] of those criteria to these cases involves findings of a factual nature. The [CFI] has exclusive jurisdiction to make findings of fact, save where a substantive inaccuracy in its findings is attributable to the documents submitted to it, and to appraise those facts. That appraisal thus does not, save where the clear sense of the evidence produced to it has been distorted, constitute a point of law which is subject, as such, to review by the [ECJ] on appeal. In this instance, there is nothing in the findings made by the [CFI] to suggest that the evidence produced to it was distorted.” [¶¶ 38-39]

“That does not mean, however, that the competent authority, … may not first examine each of the individual features of the get up of that mark in turn. It may be useful, in the course of the competent authority’s overall assessment, to examine each of the components of which the trade mark concerned is composed.”

“In this instance, the [CFI], having examined each of those components separately, then assessed … the overall impression deriving from the shape and other component features of the tablets concerned, as described … above, in the way required by [our] case law … .”

“It follows that there is nothing in the judgments under appeal to suggest that the [CFI] failed to base its assessment of the distinctive character of the trade marks for which registration is sought on the overall impression which they produce. Therefore, the second part of the plea, which relates to the need to consider the trade mark as a whole, must be rejected.” [¶¶ 45-48]

The ECJ concludes by commenting on the consumer-attention factor. “On this point, the [CFI's] finding [above] … that, since washing machine and dishwasher tablets are everyday consumer products, the level of attention paid by the average consumer to their shape and pattern is not high is a finding of fact, which … is not subject to review by the Court of Justice on appeal where, as in this instance, it does not entail a distortion of the factual evidence produced to the [CFI].” [¶ 53]

Citation: Procter & Gamble Co. v. Office for Harmonisation in the Internal Market (Trade Marks and Designs), Joined cases C-473/01 and C-474/01 P., 2004 E.C.J. Celex Lexis 163 [E.C.J. (6th Cham.), April 29].

Filed in: 2004 International Law Update, Issue8