Registration of Marks 
 
International, regional and national systems offer trade and service mark protection with lower costs compared with strictly national protection schemes of the past. Depending on the number of countries covered savings can amount up to 80 % compared with separate national applications. The Madrid System provides trade and service mark protection for 70 countries. The European Union community mark provides trade and service mark protection for actually 27 member states.

The Madrid Trademark System is a global system covering nearly all jurisdiction of the eastern hemisphere, the United States of Amercia and Japan. It allows  trademark applicants to file only one application to protect their mark, instead of having filing single applications for each country.  Through the local national patent and trademark offices applications are forwarded to the World Intellectual Property Organisation (WIPO) in Geneva (Switzerland).

Office fees of Madrid Union marks can be calculated with the World Intellectual Property Organisation Fee Calculator

Court of Justice of the European Union
Press Release No 91/10
Luxembourg, 14 September 2010
Press and Information

Judgment in Case C-48/09 P Lego Juris v OHIM

The Lego brick is not registrable as a Community trade mark, because it is a sign consisting exclusively of the shape of goods necessary to obtain a technical result

In accordance with the Community trade mark regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) a Community trade mark may consist of any signs capable of being represented graphically, such as words, designs, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. However, signs which consist exclusively of the shape of goods which is necessary to obtain a technical result are not to be registered.

On 1 April 1996 Lego, a Danish toy manufacturer, filed an application at OHIM (Office for Harmonisation in the Internal Market), the Community trade mark office, for registration as a Community trade mark of a red toy building brick. OHIM initially registered the mark at issue. However, upon application by Mega Brands, which produces toy bricks having the same shapes and dimensions as those of Lego’s bricks, the Cancellation Division of OHIM declared that the mark was invalid on the ground that clearly the Lego brick’s specific features were adopted to perform a utilitarian function, and not for identification purposes. The most important element of the sign composed of the Lego brick is the two rows of studs on the upper surface of that brick, which are necessary to obtain the intended technical result of the product, that is to say, the assembly of toy bricks. After the Grand Board of Appeal of OHIM upheld the declaration that the mark was invalid, Lego brought an action before the General Court against the Grand Board of Appeal’s decision.

In its judgment of 12 November 2008 Case T-270/06 Lego Juris v OHIM – Mega Brands (Red Lego brick) the General Court held, in particular, that European Union law precludes registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution. Lego then brought an appeal before the Court of Justice against that judgment.

First of all, the Court finds that the main purpose of the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result is to prevent trade mark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product. Thus, undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions.

When the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, protection of that shape as a trade mark once the patent has expired would considerably reduce the opportunity for other undertakings to use that technical solution. In accordance with the law of the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators.

In addition, the Court finds that by restricting the prohibition on registration to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result the legislature


The registration of the trade mark ‘CANNABIS’ for beverages potentially containing hemp is not permitted

Court of First Instance of the European Communities
PRESS RELEASE No 103/09
Luxembourg, 19 November 2009

Judgment in Case T-234/06 of  Giampietro Torresan v OHIM

The trade mark is purely descriptive of the fact that the average consumer who is reasonably circumspect may think that it constitutes a description of the characteristics of the product

In 2003, Mr Giampietro Torresan obtained from OHIM, the Community Trade Marks Office, the registration as a Community trade mark of the word sign CANNABIS in respect of beers, wine and spirits. Following an application filed by Klosterbrauerei Weissenohe GmbH & Co. KG, established in Germany, the mark was declared invalid by OHIM, which found that it was descriptive. It found that the word ‘cannabis’ designated, in everyday language, a textile plant or a narcotic substance and that it was, for the average consumer, a clear and direct indication of the characteristics of the goods for which it had been registered.

Mr Torresan disputes that decision and maintains that the trade mark CANNABIS has distinctive character, given that it is both a common name and a purely fanciful mark and has no connection, even indirect, with beer and beverages in general. As a common name, the word ‘cannabis’ constitutes the scientific name of a flowering plant from which certain drugs are extracted and from which certain therapeutic substances may be obtained. The sign CANNABIS has been present on the Italian market as a trade mark since 1996. It has, since 1999, acquired a high degree of renown as a Community trade mark for beers, wine and spirits. In any event, the word ‘cannabis’ does not constitute the normal way of designating beers or alcoholic beverages.

The Court points out, first, that the word ‘cannabis’, also referred to as ‘hemp’, has three possible meanings, namely:

• a textile plant the common organisation of the market in which is regulated within the Community framework and the production of which is subject to very strict legislation as regards the content of it active ingredient (tetrahydrocannabinol: THC),
• a narcotic which is prohibited by a great number of Member States,
• a substance the therapeutic use of which is under discussion.

The Court also points out that cannabis is used in the food sector in different forms (oils, herbal teas) and in different preparations (teas, pasta, bakery and biscuits, alcoholic or non-alcoholic beverages, etc.), all of which contain a very low concentration of THC and therefore have no psychotropic effects.

The Court also states that the Regulation on the Community Trade Mark prohibits the registration of descriptive signs and indications which may, in trade, designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production and may serve, in normal usage from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the product. Those descriptive signs are incapable of fulfilling the indication-of-origin function which forms an integral part of the trade mark. A mark’s descriptive character must be assessed in relation to the goods for which the mark was registered and in the
light of the presumed perception of an average consumer of those goods, who is reasonably well informed and reasonably observant and circumspect.

The Court therefore establishes whether the average consumer may think, merely on seeing a beverage bearing the trade mark CANNABIS, that that mark describes the characteristics of the goods in question.

First, it states that there is a material link between the sign CANNABIS and certain characteristics of the goods in question as cannabis is used in the manufacture of numerous foodstuffs, including beer and certain beverages. Secondly, the Court states that the word ‘cannabis’ is a Latin scientific term which is well known, is present in a number of European Community languages and has had a lot of media coverage, rendering it comprehensible to the target consumer throughout the Community. Consequently, the average consumer will perceive the trade mark CANNABIS as a description of one of the characteristics of those goods. The Court points out that that characteristic is a determining factor for the consumer when he makes his purchase because he will be attracted by the possibility of obtaining similar sensations to those he obtains from the consumption of cannabis.

On those grounds, the Court dismisses Mr Torresan’s action and upholds OHIM’s decision to declare the registration of the trade mark CANNABIS to be invalid in respect of beverages potentially containing hemp.


COURT OF JUSTICE OF THE EUROPEAN COMMUNITIES
PRESS RELEASE No 71/09
8 September 2009
Judgment of the Court of Justice in Case C-478/07
Budĕjovický Budvar v Rudolf Ammersin GmbH

THE DESIGNATION ‘BUD’ CANNOT BE PROTECTED AS A DESIGNATION OF ORIGIN OUTSIDE THE COMMUNITY SYSTEM OF PROTECTION

If, however, the designation ‘Bud’ were to be recognised, in the Czech Republic, as a simple geographical indication of provenance, its protection in Austria would require that it be capable of informing the Czech consumer that the product which bears it originates from a region or location in the territory of the Czech Republic

In the European Union, the Regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs - Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ 2006 L 93, p. 12) -  is intended to assure consumers that agricultural products bearing a geographical indication registered under that regulation have, because of their provenance from a particular geographical area, certain specific characteristics and, accordingly, offer a guarantee of quality due to their geographical provenance.

Provided that they meet the conditions laid down in the Regulation, designations of origin and ‘qualified’ geographical indications are protected. However, the Regulation does not apply to ‘simple’ geographical indications, that is to say, those which do not require products to have any special characteristics or element of renown deriving from the place from which they come. Nevertheless, protection of such a simple indication of geographical provenance by a Member State, likely to constitute a restriction on the free movement of goods, may, on certain conditions, be justified under Community law.

The Commercial Court of Vienna (Austria) asks the Court of Justice to clarify on what conditions the designation ‘Bud’ may be protected, under a bilateral agreement, for beer produced in the Czech Republic. Proceedings commenced by the Czech brewery Budĕjovický Budvar in 1999 before the Commercial Court of Vienna seek to prohibit the Viennese drinks distributor Rudolf Ammersin GmbH from marketing beer produced by the brewery Anheuser-Busch Inc under the trade mark American Bud.

Budvar asserts that the use of the designation American Bud for a beer from a State other than the Czech Republic is contrary to the provisions of a bilateral agreement concluded in 1976 between Austria and the Czechoslovak Socialist Republic. The designation Bud is a protected designation under that agreement and is therefore reserved exclusively for Czech products.

In order to ascertain whether Community law authorises the protection conferred by the bilateral agreement on the designation ‘Bud’, the Commercial Court seeks clarification on the basis of two divergent premises regarding the classification of the designation ‘Bud’. In that regard, the Court points out that the designation ‘Bud’ may constitute a simple and indirect indication of geographical provenance, that is to say, a name in respect of which there is no direct link between a specific quality, reputation or other characteristic of the product and its specific geographical origin, and which, moreover, is not in itself a geographical name but is at least capable of informing the consumer that the product bearing that indication comes from a particular place, region or country.

If the Commercial Court were to classify the designation ‘Bud’ as a simple indication of geographical provenance, it would have to ascertain whether, according to factual circumstances and perceptions prevailing in the Czech Republic, the designation ‘Bud’ is at least capable of informing the consumer that the product bearing that indication comes from a particular place or region of that Member State and has not become generic in that Member State. In those circumstances, Community law does not preclude national protection of such a simple indication of geographical source, nor, moreover, the extension of that protection by way of a bilateral agreement to the territory of another Member State.

Nevertheless, in the view of the Commercial Court, the designation ‘Bud’ must rather be classified as a designation of origin covering goods whose specific features can be attributed to natural or human factors inherent in their place of provenance. On that basis, the Commercial Court seeks to ascertain whether the Community Regulation on the protection of geographical indications precludes protection of the designation of origin ‘Bud’, registration of which was not sought in accordance with that regulation. At the time of its accession to the European Union, the Czech Republic sought Community protection for only three indications of provenance concerning beer produced in the town of Česke Budĕjovice, namely ‘Budějovické pivo’, ‘Českobudějovické pivo’ and ‘Budějovický měšťanský’, designating a strong beer called ‘Bud Super Strong’.

In its judgment the Court rules that the Regulation on the protection of geographical indications and designations of origin is exhaustive in nature, with the result that it precludes the application of a system of protection laid down by agreements between two Member States, such as the bilateral instruments at issue, which confers on a designation, recognised under the law of a Member State as constituting a designation of origin, protection in another Member State where that protection is actually claimed despite the fact that no application for registration of that designation of origin has been made in accordance with that regulation.

Wordmark FUN - a Community Mark

By Judgment of 2 December 2008 - Case T-67/07 - the Court of First Instance (First Chamber) decided that  a word mark FUN was distinctive enough to serve as a trade mark for goods in international class 12, namely ‘land motor vehicles and parts and fittings thereof’.

The Court found that an application can only be excluded from registration as a trademark, when the word being used as a trademark sign may serve in normal usage from the point of view of the target public to designate directly or by reference to one of their essential characteristics, goods or services. It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 40/94, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned to perceive immeadiately without further thought a description of the category of goods and services in question or one of their characteristics.

The Court confirmed that a sign’s descriptiveness may only be assessed in relation to the goods or services concerned and to the perception of the target public, which is composed of the consumers of those goods or services. In the case ‘land motor vehicles and parts and fittings thereof’a word mark must serve to designate in a specific, precise and objective manner the essential characteristics of the goods and services at issue. The fact that an undertaking wishes to give its goods a positive image, indirectly and in an abstract manner, yet without directly and immediately informing the consumer of one of the qualities or specific characteristics of the goods, is a case of evocation and not of  designation. In connection with land motor vehicles, the sign ‘FUN’ may be understood as indicating that they can be amusing or that they can be a source of amusement. The sign ‘FUN’ can thus be viewed as giving the goods a positive image, like an image for promotional purposes, by giving the relevant consumer the idea that a car can be a source of amusement. None the less, although, in some cases, a land motor vehicle can be a source of amusement for its driver, the sign ‘FUN’ does not go beyond suggestion. Accordingly, it must be held that the link between the word ‘fun’and land motor vehicles is too vague, uncertain and subjective to confer descriptive character on that word in relation to those goods.

Unlike some indications that are descriptive of the characteristics of a vehicle, such as ‘turbo’, ‘ABS’ or ‘4x4’, the sign ‘FUN’ on the back of a vehicle cannot serve to designate directly a land motor vehicle or one of its essential characteristics. If the sign is placed in that position, the relevant consumer will perceive it as designating the commercial origin of the goods. It follows from all the foregoing that the relationship between the sign ‘FUN’ and land motor vehicles is not sufficiently direct and specific to enable the relevant public to immediately perceive, without further thought, a description of the goods or one of their characteristics. Consequently, the sign ‘FUN’ is not caught by the prohibition in Article 7(1)(c) of Regulation No 40/94.

As regards the other goods covered by the application for registration, namely parts and fittings for land motor vehicles, it must be pointed out that the descriptive character of a sign must be assessed separately for each category of goods and/or services covered by the application for registration. Nevertheless, all the goods specified in the trade mark application may be inseparably linked since some of those goods may only be used in connection with the others, and a solution which is common to all the goods should therefore be adopted. In this case, the goods designated in the application for registration as parts and fittings for land motor vehicles are meant to be used exclusively in connection with those vehicles and cannot be used alone. The parts and fittings for land motor vehicles covered by the application for registration are inseparably linked to those vehicles and it is therefore appropriate to adopt a solution in relation to those parts and fittings that is identical to that adopted in relation to land motor vehicles. Therefore, the sign ‘FUN’ must also be regarded as not having a sufficiently direct and specific relationship with the goods in the category ‘parts and fittings thereof’.

Contrary to OHIM’s view, the mere finding by the Board of Appeal that the word ‘fun’ is a banal and basic English word does not suffice to establish that the word FUN has no  distinctive character.

Source: Press release of the court of 2 December 2008


Judgment of the Court of Justice in Case C-191/01 P  of 23 October 2003 - Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Wm. Wrigley Jr. Company

A SIGN MAY NOT BE REGISTERED AS A COMMUNITY TRADE MARK IF ONE OF ITS POSSIBLE MEANINGS CAN DESIGNATE A CHARACTERISTIC OF THE GOODS CONCERNED

The judgment in which the Court of First Instance held that the word "Doublemint" is not  exclusively descriptive and is registrable as a Community trade mark is set aside. In March 1996, Wrigley applied to OHIM for registration of the word "Doublemint" as a Community trade mark for chewing gum. OHIM refused that application on the ground that the word "Doublemint" was descriptive of certain characteristics of the goods concerned and that it could not be registered as a trade mark under the Community rules.
Wrigley appealed against the decision to the Court of First Instance of the EC. By judgment of 31 January 2001, the Court of First Instance annulled OHIM's decision, holding that the word "Doublemint" was not "exclusively descriptive", inter alia, because the combination of the words "double" and "mint" could have two distinct meanings: "twice the usual amount of mint" or "flavoured with two varieties of mint". The Court of First Instance also found that the word "mint" was a generic term which included a number of different types of mint. The Court therefore held that the numerous meanings of "Doublemint" deprived the sign of any descriptive function and that the word could be registered as a Community trade mark (see judgment in Case T-193/99 Wrigley v OHIM [2001] ECR II-417). The OHIM appealed against that judgment to the Court of Justice. The Court of Justice points out that, by prohibiting the registration as Community trade marks of signs which may serve to designate the characteristics of the goods or services concerned, Community law is pursuing an aim which in the public interest, namely that descriptive signs or indications may be freely used by all. A sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned. In holding that "Doublemint" could not be characterised as exclusively descriptive and could therefore be registered as a Community trade mark, the Court of First Instance applied a test based on whether the mark was "exclusively descriptive", which is not the test laid down by the regulation on the Community trade mark. In so doing, it failed to ascertain whether "Doublemint" was capable of being used by other economic operators to designate a characteristic of their goods and services. The Court of Justice accordingly sets aside the judgment of the Court of First Instance and refers the case back to that Court for judgment in accordance with this interpretation of Community law.

Source:  Press Release No 95/03 of  23 October 2003