The Court has ruled that the word should not have been registered as a trade mark in the first place, holding that "texto" was well-known in 2001 as a generic term to describe messages sent and received on a mobile phone. As a result, SFR had no right to reserve the word for its exclusive commercial use. The mobile operator was ordered to pay €10,000 to One Texto and the same amount again to its manager. It was also ordered to remove any signs appearing next to the word in SFR's advertising that might suggest the word is trade marked or otherwise owned under copyright. An SFR spokesman said the company had yet to decide whether to appeal against the ruling. 

Class 46 thanks Jean-François Vanden Eynde  (eBrand Services FBS S.A., Luxembourg) for supplying this information. Click here and here for source.  

The new-born Commission will be fully dedicated to review the existing legislation, and will be proposing new measures to improve the judicial enforcement of IP rights in the Internet (both civil and criminal jurisdictions). A report addressed to the Council of Ministers is expected before December 31, 2009.

Class 46 will follow this initiative and will have its eager readers informed.

The mark was registered in April 2004 but was confronted with an annulment application brought by lawyers of Norton Rose Vieregge. Once the application was rejected, an appeal against the decision was submitted by the CMS Hasche Sigle (law firm). Having presented its case unsuccessfully before the Board of Appeal and the CFI, Lâncome appealed to the ECJ on the grounds that Article 55(1)(a) and Article 7(1)(c) of the Directive 40/94 were misinterpreted. Lâncome claimed that it was incompatible with a lawyer's profession to apply for a revocation of a CTM in his name and on his own account as he is an “associate of justice”. Additionally, Lâncome insisted that a lawyer's economic interest is required for making an application for a CTM revocation.

Lâncome alleged that the application made by the lawyers in their own name may lead to abuse of power as well as incompatibility with Article 19 of the Statute of the Court, which requires all the parties being represented by counsels. Having established that there was no ethical violation by the lawyers bringing the action, the Advocate General M. Dámaso Ruiz-Jarabo Colomer (A-G) clarified the main objective of Article 19 - regulation of legal representation for the sake of fair and smooth trial. The A-G also added that there was no reason to apply Article 19 when interpreting one's ability to request a revocation of a CTM. This part of the claim was subsequently rejected by the A-G.

With regard to the existence of a cause for action for the application (i.e. economic interest), Lâncome, relying on paragraph 25 of the Chiemsee case (C-108/97 and C-109/97), claimed that only competitors demonstrating actual or potential harm can apply for revocation of a mark on the basis of its descriptiveness. The A-G disagreed with the appellant and pointed out that the Court in Chiemsee did not look to limit the circle of those eligible to sue, but to the contrary, aimed to extend it. Thus the action for nullity under Article 7 is open to any individual provided the basic preliminaries (for example, one's ability to sue) are fulfilled. Furthermore, other requirements include high fees and taxes which may hold many individual applicants back. The A-G also added that although most applications for revocation are brought by competing companies, this “sociological fact” should not be relied upon in court.

Having rejected Lâncome's first plea, the A-G moved on to examine the issue of revocation under Article 7 of the 40/94 Directive. Here the appellant relied on the decision in the BABY-DRY case (C-383/99 P) which provided that where there was “any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate goods or services or their essential characteristics, the phrase should have a distinctive character on the word combination”. Unfortunately, it seems that Lâncome's legal team has not been following the recent legal developments on the matter as BABY-DRY has been ignored for some time and is considered irrelevant now. The A-G referred to the “new jurisprudence” of CELLTECH (C-273/05 P) which abandons the comparison with the plain language of the relevant category of the public and requires the examination of important and relevant difference rather than “all perceptible difference”. Therefore the use of COLOR EDITION by relevant cosmetics users was found to be irrelevant in the context of Article 7(1)(c).

The appeal was dismissed. It remains to be seen whether the ECJ will follow this opinion.

The full text of the opinion is available here. (French)