Out-Law News 3 min. read
30 May 2012, 9:41 am
The ECJ said that national trade marks can only be called into question in "cancellation proceedings" in the EU member states in which those marks were registered.
The Court said that the General Court had made an error in law by calling into question the validity of national trade marks owned by Formula One Licensing when reviewing whether Global Sports Media (GSM) can register a logo sporting the words 'F1 Live' as a CTM.
Formula One Licensing (FOL) owns registered trade marks for the word 'F1' and to a logo featuring the words 'F1 Formula 1', including in the UK. The company has challenged GSM's application for a CTM for its logo.
Whilst the General Court, and the Office for Harmonisation in the Internal Market (OHIM) in ruling on the case initially, was right to review the way in which the public may perceive GSM's logo, the manner in which it did this was contrary to EU trade mark laws, the ECJ said.
The EU's Community Trade Mark Regulation states that CTMs cannot be registered if, upon opposition by owners of 'earlier trade marks', the mark applied for would create a "likelihood of confusion on the part of the public in the territory in which the earlier trade mark is registered" because of the "identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered" by the two marks. "The likelihood of confusion includes the likelihood of association with the earlier trade mark," according to the Regulation.
In addition, the Regulation provides trade mark owners with rights to the protection of reputation gained from the use of trade marks when challenging applications for CTMs by others.
It states that: "upon opposition by the proprietor of an earlier trade mark ... the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark."
'Earlier trade marks' can include those registered at national level where the date of that registration pre-dates the date on which the application for a CTM is made.
Under the EU's Trade Mark Directive trade marks which are devoid of any distinctive character should not be registered and are liable to be declared invalid if they have already been registered.
The ECJ said that the General Court was required to "acknowledge a certain degree of distinctiveness" of FOL's earlier national marks, but that it had "not done so in this case." It ordered the General Court to re-examine the case.
"First, the General Court stated ... that the ‘F1’ sign can be used in a descriptive context and that, as an abbreviation, it is just as generic as the term ‘formula 1’," the ECJ said in its ruling. "It considered ... that the ‘f1’ element in the mark applied for is not perceived as a distinctive element, but as an element with a descriptive function."
"The General Court then held ... that consumers regard the ‘F1’ element in an ordinary typography as being the abbreviation of ‘formula 1’, that is to say, a description, and that the public attributes a generic meaning to the sign ‘F1’. Finally, it added ... that the presence of the letter ‘f’ and the numeral ‘1’ in the mark applied for has no distinctive character."
"Although the findings ... are made with regard to the sign in the earlier trade mark or with regard to the ‘F1’ element in the trade mark applied for, given that the General Court considered ... that that sign and that element are the same, by doing so the General Court thus held that the sign is generic, descriptive and devoid of any distinctive character."
"Hence, the General Court called into question the validity of those earlier trade marks in proceedings for registration of a Community trade mark and therefore infringed [on rules set out in the Community Trade Mark Regulation]. In those circumstances, Formula One Licensing is justified in claiming that the judgment under appeal is vitiated by an error in law."
