Ioannis Psarakis, Lecturer, LL.M (III), PhD (c.)
(republished from capital.gr)
Summary: Trademark registration benefits the business. International studies and economic analyses - as we have discussed in our previous article - demonstrate why this is a reality. At the same time, the registration of e.g. a logo, company name or product name has relatively low costs, whether we are talking about a national trademark or even a European Union trademark (EUTM). However, in order to avoid - sooner or later - problems for the company, the process should be given the attention it deserves right from the start. Trademark registration must be treated seriously. This article summarises the individual risks.
Ι. The data and the attention required
Trademark registration is in the interest of the undertaking. International studies and economic analyses - as we have discussed in our previous article - demonstrate why this is a reality. At the same time, the registration of e.g. a logo, company name or product name is relatively inexpensive, whether we are talking about a national trademark or even a European Union trademark (EUTM).
However, in order to avoid - sooner or later - problems for the company, the process should be given the attention it deserves from the very beginning. Trademark registration must be treated seriously.
II. What is the check that precedes the filing of a trademark application?
There is a widespread perception that the only check required is that of no identical trademark. While this phenomenon - i.e. the prior registration by a third party of exactly the same trade mark for identical or similar goods and services - will be encountered in some cases, this is not the most common reason which results in advice not to file a trade mark application, with the information sought by the party concerned.
On the contrary, the most common reason is that which is summarised in the concept of likelihood of confusion. This concept (also) covers cases where two indications are not identical, but where, on the basis of the regulatory texts applicable in each case (with the considerable assistance of the case law interpreting them and often the EUIPO Guidelines), it is considered that the public is likely to 'confuse' the two indications. The issue of likelihood of confusion goes far beyond a sterile comparison of two indications. As the Court of Justice of the European Union (CJEU) has consistently held, the assessment of the likelihood of confusion is a multi-factorial issue. The similarity between the signs at issue is only one of the factors on which the likelihood of confusion depends (Advocate General Giovanni Pitruzzella in his Opinion of 6 March 2019 in Case C-705/17, para. 39, in a dispute involving the Swedish Patent and Trademark Office Patent-och rigisteringsverket).
This means a lot. No two cases are the same (an individualised approach is required) and the assessment of the risk of confusion is not limited to comparing the evidence on both sides, under a 'like/dislike' judgement. Other factors also play an important role (for example, what is the relevant public, the ways in which the relevant goods are made available, etc. and what the case law accepts about the relevant facts). Depending on the above elements - and in particular following closely the constantly evolving case law at national and European level - your legal adviser will advise you on whether there is likely to be a likelihood of confusion. It is worth noting - and it is relevant to what was mentioned above, i.e. that this is not a 'like/dislike' level judgment - that even the comparison of evidence is carried out according to very specific rules and methods and is 'technical'. It is a far cry from the assessment that a person without the requisite experience and expertise would make.
III. But it is not only the risk of confusion: the law and the example of COVID-19
The study of the likelihood of confusion regarding the desired indication is a large part of the legal work required. However, it is not the only one.
For example, in a recent decision on a trademark application by the Industrial Property Organization (OVI - EX 7633 of 7.11.2022), an attempt was made to register the indication "COCTAIL COVID 19 VACCINE SHOT - Summer nights", accompanied by a specific related illustration (see here).
In this particular case, the OVI examiner rejected the application on the following grounds:
"Pursuant to Article 4(1)(f) of Law 4679/2020, signs which are contrary to public policy or morality are not registered as trade marks or, if registered, may be declared invalid. The mark at issue contains in the element 'Covid 19', which is unacceptable to use in trade, while the son in question has led to the pandemic and the tragic loss of millions of lives worldwide and is contrary to public policy and morality. Article 7 (1) (f) EUTMR. European legislation (MH 17/MH 370)".
On the basis of the above grounds, it was held that this indication was contrary to public policy and morality. In this particular case, there was neither an identical nor a similar indication. Nevertheless, the trade mark application was rejected.
This - i.e. opposition to morality or public order - is only one of the fifteen (15) cases of absolute inadmissibility introduced by Law No. 4679/2020 for the national trademark (similar provisions can be found in EU Regulation 2017/100 EU on the EU trademark). We recall that the likelihood of confusion constitutes an additional ground of inadmissibility (i.e. in addition to the fifteen): not absolute, but relative (i.e. raised in principle only by the proprietor of the opposing sign).
IV. The conclusions and a "thank you" for the rejection
It follows from the above that filing a trademark is not a simple matter. Although interested parties will often have done their "search" (the platform is located at https://www.tmdn.org/tmview/#/tmview and is accessible to all, regardless of whether or not they are lawyers), this check can neither reach the level of risk of confusion nor the point of identifying and covering absolute inadmissibility. These are legal concepts. We saw earlier the example of the rules by which the similarity (or even the difference between two signs) is judged: these are technical, very specific and the case law is constantly evolving, providing new information and guidance to trademark law practitioners.
Moreover, the other example of the sign containing the element COVID is indicative of the multifaceted examination required prior to filing a particular sign for registration as a trademark.
And something that may at first sight surprise us: the person concerned must feel lucky that his application was rejected. This is in particular for the following reason: because he now knows (he has learned, after all, 'the hard way') that he will not be able to monopolize the sign in question in trade.
But what would happen if he did not find out, i.e. if the application were to be granted as he had hoped?
This particular indication could be registered (e.g. if the OVI examiner did not reject the statement, which often happens in practice and leads to invalidity applications which are accepted).This would create a (false) sense of security for the marker. Thus, it would build on the particular Brand in every way. Then, however, for example after three years, any third party (even a non-competitor) could bring an application for invalidity on the basis of an absolute or relative ground of inadmissibility, which - as it turned out - would be won. This is one of the greatest risks, which can be avoided by proper pre-checking and appropriate legal treatment on the part of the candidate marketer.
As succinctly stated by the European Union Intellectual Property Office (EUIPO) Appeals Division in case R 242/2022-4 of 21 June 2022: "Your registration could be an error that could be questioned in the future".