Ioannis Psarakis, Lecturer, LL.M
(republished from tovima.gr)
Summary: A paradigm shift from the General Court of the European Union (CJEU) - useful lessons for the Industrial Property Organisation (IPO) and business advisers in trademark registration matters.
Ι. Descriptive signals and signals with descriptive elements
All those who deal in practice with trademark registration issues will agree on the following: most often, those interested in registration propose an indication which directly or indirectly refers to the goods or services which they offer (or will offer) and which they wish to distinguish. These signs are legally classified as descriptive signs.
However, the registration of a descriptive sign is prohibited by national and European law (similar provisions can be found in other national laws worldwide). This is understandable: if descriptive marks were to be accepted and if someone were to register them, we would end up with a situation where descriptive marks such as 'apples' or 'honey' could not be used by competitors. But they would not be able to describe their goods in this way. This would harm both them and consumers. This is therefore prohibited by trademark law (note that on this point the practice of the OVI seems more flexible than that of the EUIPO.
In addition to the case in which all the elements of the sign are descriptive, there are also frequent cases in which one or more of the elements that make up the sign - and the elements that the party essentially seeks to monopolize and protect - are descriptive. Indeed, a very large number of marks, both in the registers of the OVI and the EUIPO (for EU trademarks), contain descriptive elements.
But what are the implications of this and why are we interested?
II. The protection of descriptive data under the GDPR - Shoppi & Naturanove
According to a recent judgment of the General Court of the EU of 12.10.2022 (T-222/21), the proprietor of the sign "Shoppi" with a specific representation (see below) could not prohibit the registration of the word "Shopify" to distinguish identical products.
That is, according to the Court, the identification in the descriptive part "shop" was not capable of establishing a likelihood of confusion between the two signs. It should be noted that according to the case law, identification in the sign element, particularly if the goods distinguished are also identical, will usually lead to a finding of likelihood of confusion and thus to a finding of protection for the earlier sign. In the present case, however, the identification was found in a descriptive element, namely the word 'shop'.
In another case before the CJEU, it was held that the indication Naturanove could not prohibit the use of the indication Naturalium (for saffron products, etc.).
These are cases of so-called weak signs. They are weak because a large part of them consists of elements which are not distinctive. According to a Joint Communication of the European Trademark and Design Network (CP5 - European TMDN), the use of a third party sign cannot be prohibited where it resembles a registered trademark solely in its lack of distinctive elements. The Common Practice is also applicable in Greece.
However, it is true that in case law, until recently, protection was observed as a result even on the basis of descriptive (and therefore non-distinctive) elements. Thus, in the past it has been held that there is a likelihood of confusion between the signs Olive line and O﮲live:
Decisions such as Olive line have been issued in large numbers, both at the level of the European Union and Greek courts. These decisions essentially grant a monopoly right to an element which is necessary to describe the properties of a particular good (and therefore must remain available for use by competitors).
But all this seems to be changing. As observed by EUIPO Appeals Committee member Ricardo Rapponi at an informative seminar on the development of case law in Q3 and Q4 2022, the Shoppi decision points the way to a change of direction in terms of not granting protection on the basis of similarity in descriptive elements. According to him, the direction of the wind has now changed compared to what was happening in the previous decade, with the Shoppi decision being a prime example.
III. The lessons learned?
It is common knowledge that EU case law and practice have a harmonizing effect on the Greek case law and practice. Among others, Law 4679/2020 on the national trademark aims to harmonize with EU Directive 2015/2436. The latter is almost identical to EU Trade Mark Regulation 2017/1001 EU on the European Union Trade Mark.
Keeping the above in mind, we can make the following suggestions and observations:
Firstly, it is worth asking whether it would be beneficial for the Industrial Property Office (IPO) to be more rigorous when checking the existence of grounds for absolute inadmissibility (in particular descriptiveness). There are cases of applications that are published and eventually registered, as to which one might reasonably wonder whether they would "survive" a third party - competitor or non-competitor - invalidity application on the basis of descriptiveness. If the trademark is eventually invalidated, which is possible even years after registration, the costs which the marker considered to have built on it will now only be of relative importance. At the same time, the existence of such indications on the register and the mere possibility of litigation terrifies businesses who are thus reluctant to successfully describe their products (Ramsey, 2003). Already the EUIPO and certainly the CJEU and OHIM are quite strict on descriptiveness issues, even for marks registered years ago. Now, with the Shoppi jurisprudence it becomes even more obvious that the modern trend is geared towards the omission of descriptive indications as common property rather than their - albeit apparent, by registration - monopolization.
Secondly, particularly in the wake of the apparent finalisation of the shift in case-law in favour of not protecting descriptive elements in trade marks, business advisers are obliged to draw the attention of the parties concerned to the fact that the registration of a particular trade mark with descriptive elements does not mean that it will grant them a monopoly on those elements. Indeed, in most cases it is these elements which the party concerned will in fact wish to monopolize and not, for example, his surname which will co-exist in the trade mark. Therefore, the entrepreneur should be aware of this reality, so that he can consciously take the following decision: register a trademark with the aforementioned inherent weaknesses, or seek a more inventive trademark, which will nevertheless provide full protection and will be built not on the basis of the inherent strength of the words/images but on the basis of the quality of the products and services of the business venture?