OHIM had refused the application and the CFI had rejected the appeal. Although the ECJ set aside the decision of the CFI, it went on to give final judgment in the matter, holding that the mark was devoid of distinctive character under Article 7(1)(b).
The ECJ broke the claim down into 4 heads. The judgment of the CFI was set aside because of the ECJ’s finding under the 4th head:
- Overall impression produced by the mark: The CFI had applied the correct test. It did not restrict itself to examining the overall impression produced by the mark as a secondary matter (as the CFI had done in SAT.1 v. OHIM (SAT.2) C-329/02) but directed part of its reasoning to considering the mark’s distinctiveness as a whole.
- Evidence that the mark was commonly used by the public in a descriptive sense: The ECJ held that the appeal was partly unfounded (this issue was relevant to Article 7(1)(d), not (b)) and partly inadmissible (it was a question of fact on which an appeal could not lie).
- Account to be taken of other marks registered as CTMs: Again, the ECJ rejected this head of appeal as partly unfounded and partly inadmissible.
- Criterion for refusal of registration: The ECJ held that the CFI was wrong to primarily accept that the mark was commonly used in trade in order to establish that it fell within Article 7(1)(b). That criterion was relevant to Article 7(1)(c), not (b).
The ECJ then gave final judgement in the matter. It held that the relevant public was one with experience in the sector of the goods and service in question, reasonably well informed, observant and circumspect. The court agreed with the CFI that the relevant public would understand BioID as being made up of the abbreviation of ‘biometrical’ and ‘identification’. Therefore the abbreviation BioID was indistinguishable from the goods and service applied for and could not guarantee to the relevant public the origin of those goods and services. The use of the Arial font and characters of differing boldness did nothing to make the mark distinctive, neither did the addition of the full stop (▪) or sign (®) alter this finding.
Medion AG v. Thomson Multimedia Sales Germany & Austria GmbH (ECJ (Second Chamber); C-120/04; 6.10.05)
Medion is the owner in Germany of the trade mark LIFE registered for leisure electronic devices. Medion commenced infringement proceedings against Thomson for use of THOMSON LIFE for TV sets, cassette players, CD players and hi-fi systems. The Landgericht Düsseldorf rejected the application. On appeal, the Oberlandesgericht Düsseldorf referred a question to the ECJ.
The ECJ held that: Article 5(1)(b) of the Directive is to be interpreted as meaning that, where the goods or services are identical, there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered trade mark which has normal distinctiveness and which, although it does not determine by itself the overall impression conveyed by the composite sign, still has an independent distinctive role therein.
In so holding, the ECJ noted first the essential function of a trade mark as set out in the Directive and then went through its own case law on the assessment of the likelihood of confusion. It stated that the assessment should not be subject to the condition that the overall impression produced by the composite sign (here THOMSON LIFE) be dominated by the part of it which is represented by the earlier mark (here LIFE). If such a condition were imposed, the owner of the earlier mark would be deprived of the exclusive right conferred by Article 5(1). In so stating, the Court was conscious that if it had held otherwise, a widely-known mark could swamp a less well-known, earlier mark, leaving the proprietor of the earlier mark with no redress.
Sportswear Company Spa & Anr v. Sarbeet Ghattaura, Sportswear Company Spa & Anr v. Stonestyle Ltd (Warren J.;  EWHC 2087 (Ch); 3.10.05)
The claimants successfully sought to strike out those parts of the Defence relating to Article 81 of the EU Treaty.
The first claimant was the owner of the mark in STONE ISLAND registered for clothing and the second claimant is the UK distributor. There was no dispute that the defendants were selling genuine STONE ISLAND clothing or that the clothing had been placed on the market in the EEA by the claimants with their consent. The claimants objected to what they described as the mutilation of the clothing, that is, the labels had been defaced and/or the swing tags cut out and defaced.
The defendants’ case was that Section 12 had to be construed against the requirements of EU competition law, and in particular Article 81. They submitted that, in the light of distribution agreements made between the claimants, the claimants could not say that they had legitimate reasons to oppose further dealings in the goods (under Section 12(2)). Therefore, they, the defendants, could not be prevented from selling the clothing with the garment codes removed.
Warren J. held that there was no sufficient nexus between breaches of Article 81 (which, for the purpose of this argument, the judge assumed to be established) and the relief sort for trade mark infringement (British Leyland v. Armstrong  3 CMLR 201 followed). Further, even if the defendants could prove that the claimants were reconstructing the itinerary of their products with the purpose of preventing their dealers from supplying persons carrying on parallel trade (as it was put in Frits Loendersloot v. George Ballantine & Sons Ltd C-349/95), such arguments had nothing to do with whether the claimants were parties to an agreement which happened to infringe Article 81. Article 81 was, on that basis, irrelevant to the applicability or otherwise a Section 12(2).
In relation to the defendants’ claim that a breach of Article 81 disentitled the claimants to injunctive relief, the judge did not see how the garment codes themselves could be contrary to Article 81, nor did he consider that the instigation of these proceedings was a breach of Article 81; the proceedings were not, so far as he could see, brought pursuant to the agreements at all since there was no obligation on either party to commence proceedings.
Reporter’s note: I am grateful to my colleague at Bird & Bird, Alice Sculthorpe, for assisting me in the preparation of this report.
CFI and ECJ decisions can be found at http://curia.eu.int/en/content/juris/index.htm.