Sweets, a TV Channel and the 'Principle of Comfort' - Recent Community Trade Mark Applications

摘要

Trade marks have long been recognised by undertakings as an invaluable business asset. The UK Trademark Act 1994, implementing the Trademark Directive 89/104, significantly extended the subject matter for which protection can be sought. However, certain signs, such as shapes and slogans, as well as sign that consist of part-syllables and numbers, have faced particular difficulties in convincing trade mark registrars of meriting protection under the law. Article 2 of First Council Directive 89/104/EEC on the approximation of laws of the Member States relating to trade marks as 'consist[ing] of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.' One ground of refusal for registration is to be found in Article 3(1)(b) which outlaws registration of trade marks devoid of any distinctive character. This ground, however, is by no means absolute, as Article 3(3) provides for the possibility for a mark to become distinctive through use. Council Regulation 40/94 on the Community trade mark reflects these criteria for the Community equivalent of nationally registered marks. Recently the European Court of Justice (ECJ) as well as the Court of First Instance (CFI) have provided some much-needed illustration and clarification of the principles when an application for a Community Trade Mark (CTM) may succeed on the grounds that it was sufficiently distinctive. The objective of this article is to discuss three recent decisions by the ECJ in this respect, and comment on the Opinion of Advocate-General Kokott, the latest instalment of the well-documented 'HAVE A BREAK' litigation.