Trade marks: Registration

Article 4(1)(b) of Directive (EC) 2008/95 had to be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the global analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, or to attribute to such an element, in advance and permanently, limited importance in that analysis. The Court of Justice of the European Union so held in proceedings concerning the refusal to register the word sign ‘ROSLAGSÖL’ as a national trade mark.

Background        

In 2007, a Swedish company registered, for alcoholic drinks in Class 33 of the Nice Agreement (concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks), as revised and amended, as a national trade mark, a word and figurative sign ’‘ROSLAGSÖL’ (the earlier trade mark). That registration was accompanied by a disclaimer stating that ‘registration does not give an exclusive right over the word RoslagsPunsch’. The disclaimer was required by the applicant Patent and Registration Office, Sweden (the PRV) as a condition of registration of the earlier trade mark, in so far as the term ‘Roslags’ referred to a region of Sweden and the term ‘Punsch’ described one of the goods covered by the registration.

In December 2015, the respondent applied to the PRV for registration of the word sign ‘ROSLAGSÖL’ as a national trade mark for goods in Class 32 of the Nice Agreement, in particular non-alcoholic beverages and beers. The PRV rejected the application because of the likelihood of confusion between the sign and the earlier trade mark. The respondent brought an action against that decision before the Patents and Market Court, Sweden, arguing that there was no likelihood of confusion between the signs in question. As regards the effect of the disclaimer relating to the earlier trade mark on the outcome of the action, the PRV argued before that court that an element of a trade mark which had been excluded from protection by means of a disclaimer should in principle be regarded as not distinctive. In the present case, registration of the earlier trade mark had been granted with such a disclaimer because the trade mark had included a term that was descriptive of a geographical region, ‘Roslags’.

The Patents and Market Court, contrary to the position put forward by the PRV, allowed the respondent’s application and approved the registration of his sign as a trade mark, finding that there was no likelihood of confusion. The PRV appealed to the Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm, Sweden (the referring court). That court was uncertain whether that provision, having regard in particular to the settled caselaw of the Court of the Court of Justice of the European Union (the Court) according to which the assessment of the likelihood of confusion had to be based on an overall impression and the perceptions of consumers played a dominant part in the global assessment of that likelihood, could be interpreted as meaning that a disclaimer could affect that assessment because an element of the earlier trade mark had been, at the time of registration, expressly excluded from protection by means of that disclaimer, so that that element should be given less importance in the analysis of the overall impression than it would have had in the absence of the disclaimer.

In those circumstances, the referring court stayed the proceedings and referred certain questions to the Court for a preliminary ruling.

Issues and decisions            

Whether art 4(1)(b) of Directive (EC) 2008/95 (the Directive) should be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, or to attribute to such an element, in advance and permanently, limited importance in that analysis.

Article 4(1)(b) of the Directive provided for its part that a trade mark should not be registered or, if registered, shall be liable to be declared invalid if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there existed a likelihood of confusion on the part of the public; the likelihood of confusion included the likelihood of association with the earlier trade mark. Those provisions therefore aimed to protect the individual interests of proprietors of earlier trade marks, and guaranteed the trade mark as an indication of origin if there was a likelihood of confusion. Neither those provisions nor any other provisions of the Directive contained an obligation for member states to introduce, or a prohibition on their introducing, provisions in their national law under which the registration of a sign as a trade mark could be accompanied by a disclaimer. Nor did those provisions specify the effects of such a disclaimer on the examination of the likelihood of confusion within the meaning of that directive (see [34]-[36] of the judgment).

In those circumstances, the member states in principle remained free to lay down provisions in their national law allowing disclaimers to be recorded at the time of registration of signs as trade marks, whether those disclaimers were entered voluntarily by the applicant or at the request of the national authority with competence for registration, provided that the disclaimers do not impair the effectiveness of the provisions of the Directive, in particular the protection given to proprietors of earlier trade marks against the registration of trade marks liable to create a likelihood of confusion on the part of consumers or end users. Further, such disclaimers should not have the effect of calling in question the objectives pursued by the Directive, referred to in recitals 8 and 10 of the Directive, namely to ensure that the conditions for obtaining a registered trade mark were, in general, identical in all member states, and to guarantee equal protection of trade marks under the legal systems of all the member states (see [37], [38] of the judgment).

In the light of the relevant principles and the caselaw, first, a disclaimer provided for by national law whose effect was to exclude an element of a complex trade mark, mentioned in the disclaimer, from the analysis of the relevant factors for establishing the existence of a likelihood of confusion within the meaning of art 4(1)(b) of the Directive because that element was descriptive or not distinctive would not be compatible with the requirements of that provision (see [46] of the judgment).

Second, a disclaimer provided for in national law whose effect was to attribute, in advance and permanently, a lack of distinctiveness to the element of a complex trade mark mentioned by it, so that the element had only limited importance in the analysis of the likelihood of confusion within the meaning of art 4(1)(b) of the Directive, would also be incompatible with the requirements of that provision (see [52] of the judgment).

Medion AG v Thomson multimedia Sales Germany & Austria GmbH: C-120/04 [2006] IP & T 150 considered.

Preliminary ruling determined.

Neneh Munu - Barrister.