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Friday, 23 February 2007

Forthcoming attractions in the ECJ

Next week looks like a quiet one for ECJ-watchers, with no decisions or opinions rolling out of Luxembourg on any key intellectual property issues (though there are some hearings on appeals to the Court of First Instance in Community trade mark issues). The following week, however, is a different matter. The IPKat has spotted these gems:

On Wednesday 7 March there is a hearing on a reference for a preliminary ruling from the Tribunale Civile Di Genova in Case C-175/06 Alessandro Tedesco v Tomasoni Fittings SrL, RWO Marine Equipment Ltd. The question referred is this:

"Is a request for obtaining a description of goods under Articles 128 and 130 of the Italian Code of Industrial and Intellectual Property, in accordance with the formal terms of the order made by this court in the present case, one of the forms of the taking of evidence prescribed by Council Regulation 1206/2001 of 28 May 2001 on cooperation between the courts of the Member States in the taking of evidence in civil and commercial matters) by which the courts of one Member State may, on the basis of that regulation, request that the competent court of another Member State should itself take that evidence?

If the answer to question 1 is yes and the request for obtaining a description is incomplete or fails to comply with the conditions under Article 4 of the regulation, is the court to which the request is made under an obligation to:

(a) send an acknowledgment of receipt in accordance with the conditions laid down by Article 7 of the regulation;

(b) indicate any respect in which the request may be incomplete so as to enable the requesting court to complete and/or amend its request?"
The IPKat predicts that this issue will become a hot one, as IP claimants increasingly seek to identify and secure evidence of infringement in several different countries before deciding which one(s) to sue in. Merpel says, how come this reference has escaped everyone's attention so far? We must improve the efficiency of our precious IP grapevine.


Then, on Thursday 8 March we get the Opinion of the Advocate General in Case C-334/05 PShaker di L. Laudato & C. Sas v Office for Harmonisation in the Internal Market, Limiñana y Botella, SL. This is the LIMONCHELO/LIMONCELLO case, noted here by the IPKat who warmly endorsed the Court of First Instance decision, saying:
"The IPKat agrees and hopes that this approach will be followed consistently by all the OHIM Boards and the CFI itself -- particularly where the earlier mark is the figurative mark containing a word, where it looks to the untrained observer as if the proprietor, by registering such a mark, effectively gets two trade marks for the price of one".
The appellant disagrees, arguing that
"It is settled principle that the assessment of likelihood of confusion between trade marks under Article 8(1)(b) of the regulation on the Community trade mark is based on two distinct elements: first, an analytical comparison between both the signs and the goods, and then a concise evaluation of the results obtained in order to determine whether the average consumer of the goods in question might believe that those goods come from the same undertaking or from economically-linked undertakings. In particular, as regards the comparison between the signs, the analysis directed at establishing whether the signs are similar must take into consideration the visual, phonetic and conceptual aspects to arrive at a global assessment based on the general impression given by the marks themselves, taking particular account of their distinctive and dominant components.

The applicant claims that the Court of First Instance failed to give effect to the principle cited above and, in particular, it dismissed the possibility of confusion, basing its assessment exclusively on the visual perception of the contested mark, without taking any account of the further elements which may not be ignored in the overall assessment the likelihood of confusion".

In the week after that, Tuesday 13 March is judgment day in Case C-29/05 P Kaul GmbH v Office for Harmonisation in the Internal Market. It's one of those 'continuity of function' cases that is really important for applicants and opponents in trade mark proceedings but deathly boring for students and laymen. Essentially, beyond what point does a review tribunal cease to be a review tribunal? When can and must it consider evidence not submitted when the earlier decision is made? See the IPKat's take on the Advocate General's Opinion here.

1 comment:

Anonymous said...

Oh no, Jeremy, stop encouraging the CFI ! The Limoncello case, far from being warmly endorsed, should be roundly castigated as precisely why the CFI and ECJ have come in for the kind of criticism mentioned in the blog on the Trialogue. Why so ?

Everyone agrees with the outcome, but certainly not for the reasons given by Jeremy (two for the price of one), or the pseudo scientific breakdown of the marks engaged in by the CFI - but simply because Limoncello is a descriptive\generic term !

The CFI's analysis in this case took the form of an unnatural dissection of the composite mark, and identfication of the 'distinctive, dominant' element (said to be the bowl of lemons rather than the words ! I kid you not).

Marks do not get dissected by the consumer in this way in real life, and nor should they by the courts.

Geoffrey Hobbs QC as appointed person in the UK has said that likelihood of confusion has to be assessed by reference to the "net effects of the similarities and dissimilarities" of the respective marks. This simple yet profound statement ought to be adopted straight away across Europe, instead of courts artificially breaking down composite marks !

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