Matratzen Concord AG v Hukla Germany SA (AG Jacobs ; C-421/04 ; 24.11.04)
In the main proceedings, the Matratzen Concord sought the cancellation of the Spanish mark MATRATZEN registered for furniture and especially beds and mattresses. The Court of First Instance held that the mark was neither misleading to Spanish consumers nor generic, however many German citizens reside in Spain. On appeal, the Audiencia Provincial, Barcelona essentially asked the ECJ the following question: under what conditions can a trade mark be registered in a Member State where, in the language of another Member State, it is not distinctive but merely denotes or describes the product concerned?
AG Jacobs was of the opinion that if a word was descriptive in the language of one Member State and therefore would not be registered there under Article 3(1)(c), it may not be registered as a trade mark in another Member State where a significant proportion of traders in and consumers of that product may reasonably be expected to understand the meaning of the word or words. (It will also be recalled that in its judgment T-6/01, the CFI upheld the decision of OHIM refusing the application to register MATRATZEN MARKT CONCORD + device under Art 8(1)(b) in the face of the earlier Spanish mark MATRATZEN as the marks, in Spain, would be seen as confusingly similar.
Appeals From The UK Registry
Almighty Marketing Ltd v. Milk Link Ltd (Kitchin J;  EWHC 2584 (Ch); 18.11.05)
In allowing the appeal from the decision of the hearing officer, Kitchin J. held that, in proceedings for revocation of a trade mark based on non-use, the purpose of the evidence under Rule 31(3) was to establish that the proprietor had an arguable or viable defence to the attack mounted upon the registration and to provide the applicant for revocation with sufficient information to enable him to investigate the use of the mark. The evidence did not have to be so persuasive that, if unanswered, it would necessarily discharge the burden of proof relying upon the proprietor.
Thus, in this case, an application for revocation of the trade mark MOO JUICE, the evidence, although brief, just satisfied the requirements of Rule 31(3) (the evidence exhibited labels used on the packaging of the cartons of milk and a letter from the proprietor’s accountants). As a consequence, the hearing officer was wrong in treating the opposition to the application to revoke as having been withdrawn. Although it was desirable for a proprietor to provide information such as brochures, catalogues, pamphlets, advertisements or the like (as referred to in Carte Bleue Trade Marks  RPC 31) it was not incumbent on the applicant to provide such information.
Oakley Inc v Animal Ltd & ors & Secretary of State for Trade and Industry (Waller LJ, May LJ, Jacob LJ;  EWCA Civ 1191; 20.10.05)
The Court of Appeal held that The Registered Design Regulations 2001, had been validly made by the Secretary of State, and were not in breach of Community law.
At first instance Peter Prescott QC held (in a dispute over infringement of a registered design) that Regulation 12 was ultra vires, but could not be severed from the rest of the Regulations, resulting in the entire Regulations being invalid. The Secretary of State appealed this decision.
The issues before the Court of Appeal centred around the true construction of Sections 2(2)(a) and (b) of the European Communities Act 1972. More specifically, the issue was whether these Sections (which allow for the implementation of EC Legislation) gave the Secretary of State jurisdiction when creating The Registered Design Regulations 2001 to choose between various options left open in European Community Directive 98/71/EC.
The Court of Appeal held that the finding of the lower court on validity should be reversed. They held that the 2001 Regulations, including the provisions in Regulation 12 relating to the continuing validity of old law, were validly passed and were not ultra vires.
The basis for the decision differed from judgment to judgment. It was common ground, however, that the obligation imposed by a Directive is to implement the Directive, not a matter of assessment of the detailed contents of the Directive to establish which parts create Community obligations and which do not. Thus, the decision to exercise the derogation (by retaining the old law on validity for existing registered designs) was clearly within the Secretary of State’s powers under section 2(2)(a) to create subordinate legislation in order to implement a Community Directive.
The Lords Justices of Appeal diverged on the correct construction of Section 2(2 (b), which gives ministers power to create subordinate legislation for the purpose of dealing with matters arising out of or related to any such obligation. This divergence leaves the scope of Section 2(2)(b) uncertain, and may require further clarification either by the Court of Appeal or the House of Lords in due course.
Since the particular design in dispute in the Oakley case was registered prior to 9 December 2001 it came under the opt-out, and was therefore subject to the old law. Further, in view of the outcome on the validity point, there was no need for the Court of Appeal to look at the severability point central to Oakley’s appeal.
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 .