Independence of the absolute grounds for refusal
Eurohypo AG v OHIM (ECJ (First Chamber); C-304/06; 08.05.08)
Eurohypo applied to register the mark EUROHYPO for ‘financial affairs; monetary affairs; real estate affairs; provision of financial services; financing; financial analysis; insurance affairs’ in Class 36.
OHIM rejected the application under Articles 7(1)(b), (c) and 7(2). The BoA allowed the appeal in respect of ‘financial analysis; investment affairs; insurance affairs’, but dismissed the appeal in respect of the other Class 36 services. The CFI upheld the BoA’s decision, holding that the mark EUROHYPO was a straight forward combination of two descriptive elements (hypo being an abbreviation of ‘hypothek’, meaning ‘mortgage’ in German), which did not amount to more than the sum of its parts.
The CFI concluded that EUROHYPO was descriptive of the services in Class 36 and was therefore devoid of distinctive character; there was no need to consider any other ground for finding that the mark was devoid of any distinctive character. Eurohypo appealed to the ECJ.
Eurohypo submitted that the CFI had incorrectly applied to a criterion relevant solely to the application of Article 7(1)(c) to an assessment under Article 7(1)(b).
The ECJ noted the following:
although there was some overlap between the absolute grounds for refusal, each ground was independent of the other and required separate examination;
the various grounds for refusal must be interpreted in light of the public interest underlying each of them; and
the notion of general interest underlying Article 7(1)(b) was indissociable from the essential function of a trade mark.
The ECJ held that the CFI had assessed distinctive character solely on the mark’s descriptive character. Consequently the CFI’s analysis contained no separate examination under Article 7(1)(b). In particular it did not take into account the public interest underlying Article 7(1)(b), namely to guarantee the identity of the origin of the goods/services. Furthermore, the CFI used an incorrect criterion which, although relevant to Article 7(1)(c), cannot form a basis for interpretation under Article 7(1)(b).
The ECJ therefore annulled the CFI’s decision in this regard and proceeded to give final judgment, concluding that EUROHYPO did not have distinctive character under Article 7(1)(b) as the relevant public would perceive the mark as providing details of the type of services it designated rather than the origin of those services.
Time limits for lodging an appeal
K-Swiss Inc. v OHIM (A.G. Bot for the ECJ; C-144/07; 08.05.08)
The CFI had dismissed K-Swiss’s appeal from the BoA’s decision to refuse its CTM application on the ground that it was lodged out of time.
Rule 62(1) of Regulation 2868/95 provides that a decision by a BoA refusing an application to register a CTM, if notified by post, must be notified to the applicant by registered letter with advice of delivery. In those circumstances, there is a presumption that the letter is deemed to be delivered to the addressee on the tenth day after that of its posting unless the letter has failed to reach the addressee or has reached him at a later date (Rule 62(3)). In addition, Rule 68 provides that if provisions relating to the notification of a document have not been observed, and that document has reached the addressee, the document is to be deemed to have been notified on the date of receipt.
The BoA’s refusal of K-Swiss’s application had been notified by express courier. The CFI took the view that this did not amount to registered letter with advice of delivery with the result that, pursuant to Rule 68, the period within which K-Swiss’s appeal had to be lodged with the CFI began to run from the date of delivery by express courier (which was earlier than the expiry of the ten-day period provided for in Rule 62(3)). It was on this basis that the CFI considered that the appeal had been lodged out of time.
K-Swiss appealed to the ECJ. The AG was of the opinion that the appeal was well-founded. Firstly, he considered that delivery of a decision by express courier should be treated in the same way as notification by registered letter with advice of delivery for the purposes of Rule 62(1) since both services were comparable. Accordingly, the presumption laid down in Rule 62(3) should apply. For these purposes, it was irrelevant that K-Swiss had in fact received the letter before the expiry of the ten-day period provided for under Rule 62(3). Secondly, and even assuming that the CFI was right to conclude that an express courier did not amount to notification by registered letter with advice of delivery for the purposes of Rule 62(1), the AG was of the opinion that OHIM should not be able to rely on Rule 68 to shorten the time limit within which the appeal before the CFI had to be brought. An infringement by OHIM of the applicable rules on notification should not have the effect of denying the appellant the benefit of the most favourable time limit for bringing an action which it should have benefited from if those rules had been complied with.
Commonplace and Level of Abstraction in Registered and Unregistered Design Right
Rolawn Ltd and another v Turfmech Machinery Ltd* (Mann J;  EWHC 989 (Pat); 07.05.08)
The claimant, Rolawn Ltd, failed in its claim against Turfmech for infringement of its registered and unregistered design rights in relation to a wide area lawn mower used for cutting large areas of grass. Turfmech failed in its counterclaim that Rolawn’s registered designs were invalid.
Rolawn is a turf grower and seller and had designed and built its own wide area lawn mower with 21 cylinder cutting heads for use in its business. The prototype lawn mower being successful, Rolawn produced several more which were used exclusively on its own land. The lawn mower was not made available or advertised publicly but it was featured in publicity shots for the claimant’s business purposes. Rolawn filed a registered design application for the lawn mower, under the category of mowers, in February 2003.
The following year Turfmech, a supplier of agricultural machinery including grass cutting equipment, decided to develop its own wide area lawn mower for supply to its customers. Turfmech took initial steps with Rolawn to license its mower but this was never concluded. In March 2006 Turfmech produced its own wide area lawn mower with 13 cylinder cutting heads and followed this with a mower that had 17 cylinder cutting heads in September of the same year.
Rolawn claimed that its unregistered design rights were infringed because the designers of the Turfmech mower had copied aspects of Rolawn’s design and that the copied design was then sold. Rolawn contended that its design was entitled to a more generalised protection of the overall shape. In addition, it was claimed that the Turfmech design did not produce a different overall impression to the Rolawn registered design and thus infringed that right.
Turfmech denied copying, contending that the Rolawn design was used as a source of inspiration, and submitted that a generalised form of design right did not exist. In relation to the registered design right, Turfmech pleaded that its mower differed from the Rolawn design and that in any event the registered design was invalid as it consisted of features of appearance which were dictated by the product’s technical function and/or that there was no individual character.
In dismissing the claims and the counterclaims Mann J held:
A number of the constituent parts of the Rolawn design contained commonplace elements in the industry field but there was nothing in the prior art that resembled the Rolawn mower. As such, commonplace was not a bar to design right in this case.
There was an unregistered design right in the physical aspects of the Rolawn machine but there is no design right in anything of any greater generality. As such, design right cannot be claimed in underlying concepts, these must be reduced to physical form in the flesh or on paper. Rolawn could not claim to that level of abstraction.
There is no design right in methods or principles of construction, these may have been copied, but it is the overall design impression that is protected.
Whilst it was apparent that Turfmech had taken certain ideas of the Rolawn design they had not copied material aspects of the design. The aggregate of similar features was not prima facie explained by copying but were capable of flowing naturally and were not enough for the Court to make an inference of copying. What Turfmech had produced was not exactly or substantially Rolawn’s design.
The “informed user” is not the same as the “average consumer” in trade mark law. The informed user has greater experience, power of recollection and ability to compare. In the instant case the Rolawn machine would have given the informed user a clearly different impression so as make the registered design valid.
The difference between the Rolawn machine and the Turfmech machine was sufficiently large that when viewed by the informed user they would form a different overall impression.
Sony Music Entertainment (Germany) GmbH v Falcon Neue Medien Vertrieb GmbH (A.G. Ruiz-Jarabo Colomer for the ECJ; C-240/07; 22.05.08) (Opinion not yet in English)
Falcon was the distributor of CD albums containing Bob Dylan songs which were originally on Sony Music LPs. Sony brought an action against Falcon for copyright infringement. According to Sony, the LPs were released in the United States during 1964/1965; an American record company obtained the rights to the original recordings of Bob Dylan’s records in Germany and assigned these to Sony. Falcon claimed that the Bob Dylan recordings took place prior to 1 January 1966 (the date on which the German law on copyright and neighbouring rights came into force) and were not protected under German law.
The German court (the Bundesgerichtshof) stayed the proceedings and made a referral to the ECJ on the basis that the outcome of the decision was dependent on the interpretation of Article 10(2) of Directive 2006/116 on the term of protection of copyright and certain related rights. Article 10(2) states that the term of protection provided for shall apply to all works and subject matter which were protected in at least one Member State on 1 July 1995 pursuant to national provisions on copyright or related rights, or which meet the criteria for protection under Council Directive 92/100/EEC on rental right and lending right and on certain rights related to copyright in the field of intellectual property.
The Bundesgerichtshof queried whether the term of protection granted by Article 10(2) applied equally to subject matter that had not at any time been protected in the Member State in which protection is sought (in this case, the original Bob Dylan recordings in Germany). The AG answered this question in the affirmative. The purpose of Directive 2006/116 was to harmonise the terms of protection. It would therefore be against the spirit of the Directive not to protect works and neighbouring rights for the reason that they were not protected before the national copyright laws came into force.
The Bundesgerichtshof also queried whether (i) national provisions governing the protection of right holders who are not Community nationals would constitute “national provisions” within the meaning of Article 10(2); and (ii) the term of protection would also apply to subject matter that on 1 July 1 1995 fulfilled the criteria set out in Directive 92/100 but whose right holder is not a Community national. The AG answered (i) in the negative; right holders who are not Community nationals will only enjoy protection if the relevant Member State grants them protection (Article 7 of Directive 2006/116). Where such protection is granted, the terms of protection will be governed by the terms of applicable international, bilateral and multilateral agreements (such as the Treaty of Rome, the Phonogram Convention, WPPT and the TRIPS Agreement). As a result, where protection is sought for a non-Community national it is up to the national court of that MemberState to determine such protection on the basis of the applicable agreement(s) to which theMember State is a party. For the same reason, it up to the national court to decide whether the term of protection granted pursuant to this Article would also apply to subject matter that on the relevant date fulfilled the criteria set out in Directive 92/100 but whose right holder is not a Community national.
Failure to adopt the Enforcement Directive
Commission of the European Communities v Kingdom of Sweden (ECJ (Sixth Chamber); C-341/07; 15.05.08) (Decision not yet in English)
By failing to adopt the laws, regulations and administrative provisions necessary to comply with Directive 2004/48 on the enforcement of intellectual property rights, the ECJ held that Swedenhad failed to fulfil its obligations under that Directive.
In its defence, Sweden stated that a large part of many of its national laws conform to the Directive, but pleaded difficulties with transposing Article 8 of the Directive (right of information) into national law. The ECJ reiterated the case law that a Member State cannot rely on difficulties in interpreting a directive to delay transposing it until after the prescribed period had expired.
Reporter’s note: We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report: Taliah Davis, Céline de Andria and Emilia Linde.
ECJ and CFI decisions can be found at http://curia.eu.int/en/content/juris/index_form.htm and the reported cases marked * can be found at http://www.bailii.org/databases.html#ew