MARQUES
Moreover, an applicant for a national trademark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which protection of the trademark is sought has to provide specification of whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the latter, the applicant is required to specify which of the goods or services in that class are intended to be covered.
Te CJEU clarified in its ruling that the applicant had to “particularly specify in the application” the specific goods or services that would have to be covered (in this case “translation services”), if such coverage is not sufficiently clear and precise by making use of the general indications of that particular class heading alone (in this case, the heading of Class 41, namely, education; providing of training; entertainment; sporting and cultural activities).
Marques has fully supported the CJEU and strictly interprets the IP Translator judgment according to the clarity and specification requirements, as only these can bring the required legal certainty to the system.
As an organisation representing brand owners Marques has been concerned over possible legislation or policy options demanding the removal of brands, trademarks and logos from product packaging, which the introduction of plain packaging, or standardised packaging, as addressed in the review of the Tobacco Products Directive 2001/37/EC, would require. Marques has asserted that trademarks are a cornerstone of
the European and international economic
system, provide significant value to their legal owners and are also an essential safeguard to the interests of consumers.
On December 19, 2012, the European Commission finally published the legislative proposal that
revises the Directive 2001/37/
EC on tobacco products. Te proposed text provides that packages for tobacco products must comply with a predefined format, must contain a combined picture and text health warning covering most of the front and the back of the package and must carry no promotional elements. Te adoption of standardised packaging remains an option for the member states, provided it is compatible with the treaty and notified under Directive 98/34.
While Marques has given its firm support to public health objectives, it has nonetheless considered that stripping trademark owners of their rights which have been gained through substantial investment
www.worldipreview.com
MARQUES HAS FULLY SUPPORTED THE CJEU AND STRICTLY INTERPRETS THE IP TRANSLATOR JUDGMENT ACCORDING TO THE CLARITY AND SPECIFICATION REQUIREMENTS, AS ONLY THESE CAN BRING THE REQUIRED LEGAL CERTAINTY.
is not justified. Trademark owners and the IP community at large reasonably expect that plain packaging legislation or policy options will comply with IP rights laws and international conventions, as well as take into account the general impact on IP rights lawfully acquired in respect of lawful products. Any public health policy objectives ought to be properly balanced with an appropriate protection of those proprietary rights.
In Marques’ opinion, any measures which would hamper the use of trademarks in the ordinary course of business should not be permitted.
Restrictions on packaging use by the brand owner as well as trademark use on packaging of the same consumer product would limit or destroy marketplace choices for the consumer. Packages are indeed the most important displays and carriers of trademarks, since they provide a direct link between the actual goods and the trademark which functions as indication of origin for such goods.
Te Commission’s provisions could thus deny one sector of industry the benefits of its IP rights, and would be a dangerous precedent for the potential loss of rights in other industries. In fact, other sectors whose products are considered harmful for health are currently being scrutinised. As a representative association, the membership of which crosses all industry lines, Marques has raised strong concerns that implementing standardised packaging for tobacco products would likely have a spillover or domino effect on other products and industries, especially those which are all subject to specific mandatory constraints such as alcohol, food, medicines, confectionery, cosmetics and automotives.
beverages,
At present, the issue is a matter of concern to trademark owners across the EU, as well as those trading therein, and trademark owners would rightfully expect that any public health objectives ought to be properly balanced with an appropriate protection of
their proprietary World Intellectual Property Review e-Digest 2013 31
rights. As the proposed text will enter into the ordinary legislative procedure, Marques has called upon the Council and the European Parliament, as well as legislators, policymakers and parliaments of the member states to carefully take into account the concerns of brand owners and protect innovation.
Diana Versteeg is chair of Marques council. She can be contacted at:
Diana.Versteeg@
akzonobel.com
For more information about Marques and its initiatives visit
www.Marques.org
Diana Versteeg studied law in Nijmegen (the Netherlands) including a year abroad in Paris, graduating in intellectual property law and European competition law. She started her career working as a junior trademark attorney, followed by several years working in private practice for a law firm. Aſter that, Versteeg has worked as in-house counsel with Royal Numico and DSM. Since 2007, Versteeg has worked as senior IP counsel for AkzoNobel, a global company specialising in chemicals and coatings. She also lectures on international trademarks to junior trademark attorneys in the Benelux and she became Chair of Marques in March 2013.
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