[pp.int.general] Fwd: [The IPKat] Over-intellectualisation of European trade mark law -- a fresh ex...

Amelia Andersdotter teirdes at gmail.com
Fri Apr 29 05:36:09 CEST 2011

trily, trademark law is functioning the way it should be.

-------- Original Message --------
Subject: 	[The IPKat] Over-intellectualisation of European trade mark 
law -- a fresh ex...
Date: 	Thu, 28 Apr 2011 19:48:45 -0700 (PDT)
From: 	Jeremy <jjip at btinternet.com>
Reply-To: 	jjip at btinternet.com
To: 	ipkat_readers at googlegroups.com


/Tiddles wears the dunce's hat again after
forgetting how to spell "syntactically
" unusual juxtapositions" .../

*At yesterday's plenary session of the Fordham Intellectual Property 
Conference,* covering issues arising from European intellectual property 
law, this member of the IPKat team wailed long and loud about what he 
termed the "over-intellectualisation" of European trade mark law. The 
Kat has received numerous responses from those attending, ranging from 
warm support on the one side to a sniffy comment that no-one with 
academic credentials has any right to complain about something having 
intellectual content. In the later trade mark-related sessions which he 
attended in the afternoon, several speakers picked up the same theme: 
trade mark law in Europe had become almost unmanageably complex.

If readers want an example of the sort of thing the Kat finds 
unacceptable, here's a current one. He has just heard from the UK 
Intellectual Property Office that two new conjoined cases have been 
referred by the German Bundespatentgericht to the Court of Justice of 
the European Union (ECJ) for a preliminary ruling: Cases C-90/11 and 
C-91/11 /Strigl and others./ The question for the court is this:

    "Is the ground for refusal under Article 3(1)(b) and/or (c) of
    the*[trade mark harmonisation]* directive*[2008/95
    also applicable to a word sign which consists of a descriptive word
    combination and a non-descriptive letter sequence, if the trade
    perceives the letter sequence as an abbreviation of the descriptive
    words because it reproduces their initial letters, and the trade
    mark as a whole can thus be construed as a combination of mutually
    explanatory descriptive indications or abbreviations?".

In case you are wondering, Articles 3(1)(b) and 3(1)(c) are not exactly 
rocket science. They provide that signs can't be registered as trade 
marks if they are devoid of distinctive character or 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 services". In other words, you 
can't have a trade mark for something that's not distinctive or if it is 
descriptive. In an ideal world, a court would be able to apply these 
provisions to the facts before it with the need to refer them to distant 
tribunal and add another two years to the length of the proceedings.

One can imagine situations in which the referred question will be 
answered "yes" and those in which it will be answered "no"; situations 
in which the "trade" is also a relevant consumer of goods and services 
for which registration is sought and those in which it isn't; situations 
in which the combination of the descriptive word combination and the 
non-descriptive letter sequence constitutes a syntactically unusual 
juxtaposition and is therefore registrable (as in Case C‑474/01 P 
/Procter & Gamble v OHIM/ [2004] ECR I-5173, BABY-DRY) and those in 
which it is not. The court may also be asked to consider those cases in 
which the descriptive word combination precedes the non-descriptive 
letter sequence and /vice versa, /as well as those in which the 
descriptive word combination includes a numeral or a place name, and so on.

Any ruling from the court on the question referred in this case is not 
therefore the end of the question-and-answer process but a launchpad 
from which subsequent refining questions are fired at the court in the 
hope of rendering into a verbal format every conceivable combination of 
facts. This may be intellectually satisfying, but it is not easy for 
potential trade mark applicants to understand -- or for even 
well-trained and highly qualified trade mark practitioners to explain.

This particular reference addresses absolute bars to registrability, but 
the same phenomenon can be found, to a greater or lesser extent, across 
the whole range of trade mark law -- infringement, cancellation, 
revocation, comparison of marks, taking of unfair advantage without due 
cause, referential use, comparative advertising. According to one 
speaker yesterday (the Kat thinks it was OHIM's Paul Maier but is 
willing to be corrected) the ECJ has heard some 150 trade mark cases -- 
a remarkable number which represents around ten cases a year.

For the record, the UK Intellectual Property Office welcomes your 
opinion on this ECJ reference (if you have one). Just email 
*policy at ipo.gsi.gov.uk <mailto:policy at ipo.gsi.gov.uk>*before 6 May 2011.

How to be an intellectual *here 
*here <http://www.dissentmagazine.org/article/?article=3784>*

Posted By Jeremy to The IPKat 
on 4/29/2011 03:48:00 AM --
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