EU trademark reform
Absolute grounds go global
SJ Berwin’s Robert Guthrie explores foreign language marks and the EU Commission’s
proposed changes to the application of absolute grounds
The European Commission published its proposals for changes
to EU trademark law on 27 March 2013. The proposals are wide
ranging and include a recast Trade Marks Directive, to replace the
current Directive 2008/95/EC, and amendments to the Community
Trade Mark Regulation No 207/2009. This article examines some of
the European Commission’s proposed changes to the ways in which
the absolute grounds for refusal or invalidity are applied; in particular,
the changes would prevent the registration of national marks that
would be rejected on absolute grounds in any member state and
would require marks in any foreign language to be refused if any of
the absolute grounds were to apply, once the mark was translated into
an official language of the EU.
The European Commission’s proposals
The European Commission’s proposals are currently the subject
of consultation and need to be approved by the European Council
and European Parliament. The European Commission hopes that the
proposals will be adopted in Spring 2014, with the changes to the
current law coming into force two years later.
Article 4(2) of the proposed new Trade Marks Directive is in the
following terms:
“Paragraph 1 [which sets out the various absolute grounds for
refusal or invalidity] shall apply notwithstanding that the grounds of
non-registrability obtain:
(a)in other member states than those where the application for
registration was filed;
(b) only where a trademark in a foreign language or script is translated
or transcribed in any script or official language of the member
states.”
The proposed amendments to the Community Trade Mark Regulation
replace the current Article 4(2) with the following:
“Paragraph 1 [which sets out the various absolute grounds for
refusal or invalidity] shall apply notwithstanding that the grounds of
non-registrability obtain:
(a)in only part of the union;
(b)only where a trademark in a foreign language or script is translated
or transcribed in any script or official language of a member state.”
The European Commission’s proposals seem designed to overturn the
Court of Justice’s decision in Case C-421/04, Matratzen Concord AG v
Hukla Germany SA – that terms borrowed from the language of another
member state in which they were devoid of distinctive character or
descriptive, were not precluded from registration, unless the relevant
parties in the member state in which registration was sought were
capable of identifying the meaning of the term. This decision allowed
‘matratzen’, the German word for ‘mattress’, to be registered for
‘mattresses’ in Spain. However, the European Commission’s proposals
go further than simply reversing Matratzen and could have potentially
far reaching consequences.
The European Commission’s proposals effectively contain two
overlapping amendments to the current law. The first would require
national marks to be refused or invalidated if any of the absolute grounds
“obtain” in any of the member states (this requirement is, of course,
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already applicable to Community trademarks). In itself, this change
would effectively reverse Matratzen. However, the second amendment
goes even further and requires the absolute grounds to be applied on the
basis of the translation of marks in a foreign language for both national
trademarks and European trademarks (as they would then be called).
The Matratzen decision and its consequences
The CJEU’s decision in Matratzen concerned a cancellation action
against a Spanish registration for ‘Matratzen’. A Spanish court had
initially rejected the cancellation action on the basis that names
borrowed from foreign languages were not descriptive and had
distinctive character in Spain, unless the average consumer was
familiar with their meaning or they had acquired a genuine meaning
on the national market. On appeal, the Provincial Court of Barcelona
was uncertain whether this approach was compatible with the ‘single
market’, as it could be seen as a quantitative restriction on imports
between member states.
The CJEU ruled that EU law and, in particular, Article 3 of the Trade
Marks Directive (which sets out the various absolute grounds), did
not preclude the registration in a member state of a term borrowed
from the language of another member state in which it was devoid
of distinctive character or was descriptive, unless the relevant parties
in the member state in which registration was sought were capable of
identifying the meaning of the term.
One of the effects of the Matratzen decision has been that it is
possible for national registrations to be granted for terms that are
descriptive in languages of other member states and for those marks
to be used to oppose or invalidate Community trademarks that feature
those words descriptively. The ‘Matratzen’ registration had itself been
used to successfully oppose a Community trademark application for
a device mark featuring the words ‘Matratzen Concord’ (hence the
initiation of the cancellation action in Spain). However, perhaps the most
well-known example of this practice concerns the Spanish registrations
for ‘Donut’ and ‘Doghnuts’, which have been used to successfully oppose
or invalidate a number of Community trademarks covering pastries and
similar goods because they feature the terms ‘Donuts’ or ‘Doughnuts’.
The most recent example of this is the General Court’s ruling upholding
an opposition against a Community trademark registration for Bimbo
Doughnuts (T-569/10 – Panrico v Bimbo).
Absolute grounds obtaining in other
member states
The requirement for national marks to satisfy the absolute grounds
in all member states would represent a fundamental change to the
way the two-tier trademark system in the EU currently operates. It
would also go much further than simply preventing the registration of
words that describe the kind of goods and services covered by a mark
in another EU language, as is the case with ‘Matratzen’ and ‘Donuts’.
It would mean, for example, that the translations of non-distinctive
words in any EU language would not be registrable in any member
state. By way of example, this could possibly exclude the registration of
‘Hob’ (‘new’ in Bulgarian), ‘Pamata’ (‘basic’ in Latvian) or ‘Lliure’ (‘free’
in Catalan)1 for any goods or services.
September 2013
Intellectual Property magazine 59
EU trademark reform
It would also mean that marks that had some offensive meaning
in another EU language could be refused or invalidated on the basis
that they would be contrary to public policy or acceptable principles of
morality in one or more member states. There are numerous examples
of products that have had to be re-named for certain markets because
of an unintended offensive meaning in another language and this
could mean that such marks would end up being refused in any
member state. For example, the Mitsubishi Pajero had to be renamed
for Spanish speaking markets because of the offensive meaning of the
word ‘pajero’ in Spanish.2
Indeed, it may be reasonably common for short marks to have
a meaning in another EU language purely by coincidence. Although
such coincidences can already prevent brand owners from obtaining
Community trademarks (eg, a Community trademark application
for ‘Blackberry Curve’ was rejected on the basis that ‘curve’ was a
slang term for a prostitute in Romanian), the European Commission’s
proposals risk preventing legitimate brands from obtaining protection
in their home territory because the mark happens to have some nondistinctive or offensive meaning in another member state.
“The European Commission’s
proposals risk preventing legitimate
brands from obtaining protection
in their home territory because
the mark happens to have some
non-distinctive or offensive
meaning in another member state.”
As well as the issues caused by linguistic differences between
member states, the proposals would also seem to make it much harder
to register marks on the basis of acquired distinctiveness, because
it would be necessary to show that the mark was either inherently
distinctive or had acquired distinctiveness in all member states. This
could mean, for example, that a mark that was inherently descriptive
in English, but which had acquired distinctive character through use
in the UK, could not be registered as a UK trademark because it was
still descriptive in Malta, where English is an official language (or even
perhaps in other member states where the meaning of the English
language mark would be understood).
Foreign language marks
As discussed previously, the European Commission’s proposals go
further still by applying the absolute grounds to marks in all foreign
languages after those marks have been translated into an EU language.
The intention presumably is to prevent foreign language terms for a
kind of good or service from being registered for the good or service
they describe (eg, ‘Godoro’ and 床垫 would not be registrable for
mattresses because they mean ‘mattress’ in Swahili and Chinese
respectively).
Although one could query why such terms, which could be in
obscure foreign languages, should not be registrable if they are
distinctive and would not be perceived as descriptive by the public in
the European Union, there are legitimate reasons why registration for
such terms should be prevented – the US has a similar, although more
flexible, doctrine of foreign equivalents. However, as with the proposals
for national marks to be refused if any of the absolute grounds apply in
60 Intellectual Property magazine
any member state, the effect of the European Commission’s proposals
would not be limited to foreign language terms that describe the kind
of goods or services covered by a mark, but any terms in any foreign
language that would fall foul of any of the absolute grounds once
translated into an official language of any member state. So, by way
of example, it would seem that ‘Mpya’ (‘new’ in Swahili) and ‘Dawb’
(‘free’ in Hwong) would be not registrable. It would also mean that any
examination of a trademark application would need to consider any
offensive meaning in any language.
What is not entirely clear is whether the European Commission’s
proposals would prevent the registration of transcriptions of a
descriptive term in a foreign language that is written in a nonEU script, ie, the foreign language term depicted in a script of the
European Union. The reference to ‘transcription’ in Article 4(2)(b) of
both the proposed new Directive and the amended Regulation would
imply that such transcriptions should be translated, so that ‘chuáng
diàn’, a transcription of the Chinese word for mattress, would not be
registrable for mattresses (although as currently drafted the wording
of Article 4(2)(b) is not entirely clear). If this interpretation is correct,
then the risks that a mark could be refused or invalidated as a result
of it being non-distinctive in a foreign language are even higher given
the greater number of foreign languages that would be relevant (ie, all
those that make use of non-EU scripts) and the possibility that many
foreign language terms could be transcribed into Latin script (or other
scripts of the European Union) in a variety of ways.
Implementation of the proposals
It is to be hoped that the consultation period will result in the
amendment of the proposals discussed in this article so as to avoid
many of the potential issues discussed. An alternative option, that
would still achieve the reversal of the Matratzen decision, would be
to introduce a new stand-alone absolute ground when a mark is
descriptive in a foreign language of the kind of goods and services
covered by the mark. This would, for example, prevent ‘matratzen’ or
‘chuáng diàn’ from being registered for ‘mattresses’.
Under this stand-alone absolute ground, marks would not be
refused or invalidated on the basis that they were a foreign language
term that was descriptive of other characteristics of the goods or
services covered, or were otherwise non-distinctive. Nor would such
marks be refused or invalidated on the basis that they were a foreign
language term that, when translated, would be contrary to acceptable
principles of morality. This would reduce the risk that marks could end
up being refused or invalidated on the basis of coincidental meanings
in other languages.
Footnotes
1.All according to the author’s use of an online translation service.
2.If you want to know the meaning then a quick internet search should
reveal all.
September 2013
Author
Robert Guthrie is a partner in SJ Berwin’s
intellectual property group. Rob advises
on all aspects of intellectual property
protection, enforcement and dispute
resolution. As well as securing trademark
and design protection in the UK, Europe
and worldwide, he also has considerable
experience of litigation in the UK across
the range of intellectual property rights.
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