JURISDICTION REPORT: FRANCE
WHEN CTM AND NATIONAL REGISTRATION SYSTEMS CLASH
Aurélia Marie Cabinet Beau de Loménie
Since the adoption of EC Regulation No. 40/94 of December 20, 1993, creating Community trademarks (CTMs), two different trademark systems have coexisted in parallel: the European system and the national system. Tis means that within the EU identical Community and national trademarks may coexist. Terefore when the question of the invalidity of a CTM is raised, can EU jurisdictions have a say in the validity of national trademarks, and what are the consequences of an invalidity action against one of the trademarks on the other?
Tis is the question that the Court of Justice for the European Union (CJEU) had to answer in a decision of May 24, 2012. In this case, Formula One Licensing BV had opposed an application by Racing-Live SAS to register as a CTM the sign
“OHIM, IN THE COURSE OF THIS OPPOSITION, WILL HAVE NO CHOICE BUT TO TREAT THE NATIONAL SIGN AS DISTINCTIVE EVEN IF, PARADOXICALLY, IT CONSIDERS IT NOT TO BE SO.”
the General Court cannot deny the distinctive character of a registered national trademark (point 43). Indeed, such a finding would result, de facto, in eliminating the protection national trademarks are supposed to offer.
Nevertheless, OHIM still has to examine the degree of distinctiveness of the national trademark on which the opposition is based.
for various goods and services (magazines, books, publications, booking of seats for shows, organisation of competitions on the Internet), basing its opposition on several trademarks, including the national Formula One trademarks, covering the same products and services.
Te Opposition Division of the Office for Harmonization in the Internal Market (OHIM) decided that there was a risk of confusion between the signs, and therefore rejected the application. However, the OHIM Board of Appeal considered that the trademarks were similar only in terms of the ‘F1’ sign, which would be understood by consumers as meaning ‘Formula One’. Te Board of Appeal decided therefore that there was no risk of confusion between the trademarks, because ‘F1’, which was common between them, was descriptive and lacked any distinctiveness. Tis decision was upheld by the General Court in 2011 and then appealed before the CJEU.
In its decision of May 24, 2012, the CJEU annulled the decision of the General Court, stating that CTMs do not substitute for national trademarks of member states, but coexist with them in the economic life of the EU. In this dual system of trademarks, registering national trademarks is an activity reserved to national member states’ offices. OHIM and the General Court, therefore, do not have jurisdiction as regards registration or invalidity of such trademarks. Te CJEU further confirmed that the validity of a national trademark can be questioned only via invalidity proceedings in the member state where the national trademark was registered.
Moreover, it is not permissible for the CJEU, OHIM, or the General Court to declare, in the course of opposition proceedings, the existence of absolute grounds for refusal of a national trademark. Hence OHIM and
58 World Intellectual Property Review July/August 2012
Accordingly, if an opposition against a CTM is based on a national trademark, then OHIM, in the course of this opposition, will have no choice but to treat the national sign as distinctive even if, paradoxically, it considers it not to be so. Tis is the case in the present matter, where the Board of Appeal will have to reexamine the opposition. Te board will have no choice but to acknowledge that the ‘F1’ trademarks are distinctive. Ten, when assessing the risk of confusion with the contested application, taking into account all the relevant factors of the case, notably the degree of distinctiveness, OHIM might consider the trademarks to be sufficiently distinguishable and thus reject the opposition.
Te other option for the applicant in such a situation is, of course, to commence an invalidity action in the member state where the national trademark was registered.
As a general rule, just as OHIM cannot contest the validity of a national registration, national jurisdictions are not bound by the distinctiveness assessment made by OHIM and a sign can be considered as non-distinctive by OHIM when it will be accepted by national offices, such as in countries where the sign would not be considered to have a meaning.
Conversely, even if a sign is considered to be non-distinctive by OHIM, and thus refused for registration, it would still prove useful for the applicant to file a national trademark, where possible, in order to prevent the registration of nearly identical CTMs.
Aurélia Marie is a partner at Cabinet Beau de Loménie. She can be contacted at:
amarie@bdl-ip.com
www.worldipreview.com
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