The German Association for the Protection of Intellectual Property (GRUR) The Secretary General German Association for the Protection of Intellectual Property (GRUR) Konrad-Adenauer-Ufer 11 Konrad-Adenauer-Ufer 11 . RheinAtrium . 50668 Köln . Germany RheinAtrium 50668 Köln Phone +49 (0) 221 650 65-151 Fax +49 (0) 221 650 65-205 Email [email protected] www.grur.org July 1, 2013 Full English Version Opinion of the German Association for the Protection of Intellectual Property (Deutsche Vereinigung für gewerblichen Rechtsschutz und Urheberrecht e.V.) regarding the European Commission proposal for a recast of the Trade Mark Directive The German Association for the Protection of Intellectual Property (GRUR) is a scientific non-profit as- sociation. Its statutory purpose is the academic advancement and development of industrial property, copyright and competition law at the German, European and international level. For fulfilling these tasks, GRUR provides assistance to the legislative bodies and to authorities competent for issues of intellectu- al property law, organises conferences, workshops and further education courses, provides financial aid to selected university chairs and research projects and also publishes four leading German professional IP law journals (GRUR, GRUR International, GRUR-RR and GRUR-Prax.) With over 5,250 members coming from 52 countries, the association offers an umbrella for a wide range of IP professionals: law- yers, patent attorneys, judges, academics, representatives of the specific public authorities and of the international organisations as well as enterprises dealing with issues of intellectual property. On 27 March 2013 the European Commission presented proposals for an amendment of Regulation 207/2009 on the Community trade mark (Regulation) and for a recast of Directive 2008/95/EC for the approximation of the laws of the Member States relating to trade marks (Directive). On 13 June 2013 GRUR presented comprehensive comments, in German, on the proposals relating to the Directive. The following constitutes a summary of these comments. Observations on the Regulation will be submitted at a later date. Preliminary Remarks Concerning Interconnection Between the Proposals Notwithstanding the fact that this Opinion focuses on the proposal for a recast of the Trademark Di- rective that was first addressed by the Council working group, GRUR considers it necessary to treat the recast of the Trademark Directive and the amendments to the Regulation on the Community Trademark and the Fees Regulation as a unified process. This should apply not only to links in contents but also to the chronology. The recast Directive should not enter into force without simultaneous adoption of the Regulation. 1 / 21 The GRUR trademarks and the green colour are registered trademarks of the Association. 1. General Remarks 1.1. Recast of the Directive The Commission has proposed a recast of the Directive instead of amendments to the text presently in force. In view of the large number of amendments and additions, this seems reasonable. 1.2. Extent of Harmonization The Commission has proposed extensive harmonization which would entail not only further alignment of substantive law, but also an alignment of trade mark procedures before the national authorities so as to match essentially the European procedures before the OHIM. This initiative is to be welcomed, although under the aspect of subsidiarity doubts could arise in individ- ual cases as to whether such an extensive alignment is necessary. The individual harmonization pro- posals relating to national procedures will be commented on when the relevant provisions are ad- dressed. 1.3. Terms, Definitions The Commission has proposed using the term “European trade mark” instead of “Community trade mark”. The present “Office of Harmonization for the Internal Market”, also known under the abbrevia- tions “HABM”, “OHIM” and “OAMI”, is to be renamed the “European Union Trade Marks and Designs Agency”. The terms “Community” and “Community law” are to be replaced by “Union” and “Union law”. The reason stated is that terms have changed since the Lisbon Treaties; insofar as the future “Agency” is concerned, an alleged agreement between the Parliament, the Council and the Commission is men- tioned. GRUR considers the term “European” as in “European trade mark” to be inappropriate. Europe is larger than the EU. If the term “Community” can no longer be used in future and instead the terms “Union” or “European Union” are used, it seems logical that trade mark law within the Union should be regulated accordingly. However, this means that the solo term “European” cannot be accepted. In this context preference should be given to the term “European Union trade mark” or the abbreviated form “EU trademark” for the individual trade mark. GRUR considers the renaming of the Office in Alicante to be superfluous, especially since in the mean- time the Office performs responsibilities that go beyond the confines of trade mark and design protec- tion. If renaming of the Office is considered necessary at all, the term “Agency”, which is highly unusual for an authority of this kind not only in German-speaking regions, should definitely not be used, but the term “Office” instead. 1.4. Absent Provisions The Commission has for the most part followed the proposals of the Max Planck Study, while failing to adopt a number of more far-reaching suggestions. GRUR would welcome realization of at least the fol- lowing proposals. 2 / 21 1.4.1 Addition of Recitals The Max Planck Study contains several recitals that explain the legal foundation of trade mark law as well as individual provisions, and which can therefore provide assistance in interpreting and applying the law. In substantive law especially, such explanations can enhance both legal certainty and a unified legal practice. For example, in the law as it stands and in the Commission proposals there is no indication of the pur- pose of trade mark law or of the interests meriting protection. In this respect, the ECJ regularly refers to the principle of undistorted competition, without however providing further specification in a form going beyond the judgment in a specific case. In this respect, the following addition to the Preamble is pro- posed in line with the findings of the Max Planck Study: “Trade mark law serves to ensure undistorted competition. In the light of those principles, the in- terests of trade mark proprietors, consumers and competitors have to be balanced against one another. In principle none of the interests takes precedence over others.” The Preamble could also be supplemented where the legislative text requires explanation, without this necessarily leading to an amendment of the version of trade mark law in force. This applies, for exam- ple, to the scope of trade mark protection in case of “double identity” (see infra No. 2.7.2; see also No. 2.2.4 on absolute grounds for refusal of protection). 1.4.2 Protection Throughout the Entire Sovereign Territory The Commission proposals should be clarified to the effect that trade mark protection applies through- out the entire sovereign territory of the relevant Member State and is not restricted to the internal market following release of the goods for free circulation within the Community. The trade mark proprietor has to be in a position to prevent use in territorial waters, free ports and customs exclaves belonging to the territory of the relevant country of protection. The proposed regulation of transit goods is commented in No. 2.7.8 below. 1.4.3 Deletion of Art. 3(1)(e)(iii) Trade Mark Directive The ground for exclusion set out in Art. 3(1)(e)(iii) of the Trade Mark Directive has proved to be imprac- ticable and should therefore be deleted. The fact that goods that are valued solely for their shape are to be protected not as trade marks, but if appropriate as designs, should not change. However, this does not apply where the appreciation of the goods is based primarily on the high recognition factor of the shape and its attribution to a certain source. This result cannot be achieved on the basis of the law presently in force. By deleting Art. 3(1)(e)(iii) of the Trade Mark Directive, the path would be cleared for the application of general provisions: where the appreciation of the shape of goods is purely aesthetic, distinctive character would have to be denied under Art. 3(1)(b) of the Trade Mark Directive; however, the trade mark could still be registered by overcoming the ground for refusal on the basis of distinctive character acquired in accordance with Art. 3(3) of the Trade Mark Directive. 3 / 21 1.4.3 Use of Trade Marks for Other Purposes, Art. 5(5) Trade Mark Directive The proposals by the Commission do not affect the current rule according to which the harmonized area of trade mark protection relates solely to use of the mark in order to distinguish goods and services. This means that the protection of signs used in order to designate enterprises remains without harmonization unless such designation simultaneously serves to distinguish goods and services (see infra No. 2.7.5). This can give rise to difficult questions of distinction in practice, affecting legal certainty. The same ap- plies to the distinction between the distinguishing and merely descriptive or decorative use of trade marks, which likewise cannot be considered harmonized yet. Whereas in German law other legal provi- sions such as the law on unfair competition can be applied in this respect in order to fill potential gaps, the legal situation in other countries is very unclear, which can give rise to severe problems especially in view of the enforcement of Community trade mark rights. In view of the fact that the present recast of the Trade Mark Directive sets the signals for the law govern- ing trade marks and distinctive signs in the coming decades, such severe gaps in harmonization should be filled if at all possible.