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Refreshment Guidelines Refusal Trademarks on Absolute Grounds From Benelux Office for Intellectual Property

The Benelux Office for Intellectual Property (BOIP) published renewed guidelines today with regard to the refusal of registrations on absolute grounds. The guidelines seem to be only available in Dutch and French. The 'old' guidelines were published in September 2004. According to the recitals of the renewed guidelines the jusitification for the renewal lies in the case law on the European and Benelux level that was published since the 'old' guidelines entered into force. The BOIP authors recognise that this case law did not provide spectacular changes with regard to content, but they felt it was about time for a renewal. The most imporant change therefore seems to be the replacement of references to the old Benelux Trade Mark Act articles by references to the new articles in the Benelux Treaty on Intellectual Property (the BOIP stresses in the recital that the content of the regulations did not change), and the implementation of office's name change (Benelux-Bureau voor de Intellectuele Eigendom instead of Benelux Merkenbureau).

Comparing the new with the old I discovered the following - 25 - 'changes' (apart from the mere cosmetique restructuring in the recitals and the enumeration of all relevant articles of the Benelux Treaty at the top of the guidelines):

1. With regard to the registration of colours or combination of colours the BOIP has added that a colour code or description can only be added as long as the trade mark is not registered. After registration the data can not be changed.

2. With regard to sound marks (SHIELD MARK) the BOIP added the word 'graphical', an essential element for the necessary reproduction of a sound mark.

3. With regard to a variable sign: added is that the registration of such a sign can be refused if it a graphical representation ā la Sieckmann is impossible. The guidelines mention the ECJ's Dyson case: an application with regard to all possible shapes of a transparent bin or reservoir that is part of the outside of a vacuum cleaner does not represent a sign for which trade mark protection can be obtained.

4. With regard to the refusal grounds for shape marks: added is the according to the case law of the ECJ the criteria for judging shape marks should be applied to a figurative trade mark (for which it is not made clear that a shape mark is involved) that only consist of a picture of the goods concerned or the packaging. Also in this case the sign concerned is not independent from the appearance of the goods (referal to ECJ's Storck 2 and Henkel tablet.

5. Changes (clarifications) with regard to articles on lack of distinctiveness: descriptive and customary signs do not miss distinctiveness per se. The opposite is not allways true however: that a sign is not descriptive or not customary does not justify the conclusion that the sign lacks distinctiveness.

6. The ECJ's case law Mag Instrument, Eurocermex, Storck 1 and 2 and Devely are added to the Linde, Libertel and Henkel bottle cases as leading cases with regard to the distinctiveness guidelines.

7. With the Philips/Remington saga in mind the BOIP added some guidance of the ECJ on the element 'significant deviant' for shape marks: a significant deviation seems to be only possible if there exists a shape standard. If this is not the case a shape is only added to the multitude standard. It is hard to conceive in such a case that the public can extract from the shape its origin from a particular company. Although there is an extensive case law of the ECJ with regard to shape marks there is not one example until now of a shape which was found to have inherent distinctiveness.

8. The same remarks are made for cases in which the application does not state that it concerns a shape mark, but the sign itself is a truthful picture of the goods or packaging (once again: Storck 2 and Henkel tablet).

9. With regard to distinctiveness the guidelines stresses the importance of the overal impression that a sign has on the public.

10. An example is added with regard to the effect of an addition of non distinctive elements like abbreviations: "the application of the sign 'gecertificeerd glazenwasser (gg)' - gg stands for certified window-cleaner - will be refused, because 'gg' clearly functions as an abbreviation for certified windowcleaner and is therefore not enough to render distictiveness for the sign in its entirity.'

11. In the 2004 guidelines the Office gave the following example of a sign that could protectable as a a trade mark according to the Babydry standard: the sign 'tafelblad' (tabletop) would be protectable as a trade mark for a restaurant guide. This example seems to have disappeared in the 2008 guidelines, but the BOIP gives another example: the sign 'blikvanger' (eye-catcher) for a container for empty cans is protectable as a trade mark.

12. 'Grammofoon' (gramophone) and 'claxon' (horn) are added as examples of signs that in the past have become a generic term for the goods concerned.

13. A new paragraph is added with regard to the refusal of trade marks that are contrary to public policy or accepted principles of morality: the BOIP notes that such cases are very rare.

14. With regard to the protection of flags (art. 6ter Paris Convention) the BOIP specifically notes that a trade mark registration which includes such a sign is only possible with the permission of the involved state or organisation.

15. With regard to the refusal of registration of geographical indications (art. 23 Trips) the BOIP clarifies that the ground for refusal will only be applied if a sign is involved that contains a geographical indication which enjoys protection in the country of origin or enjoys legal protection in the EC.

16. With regard to the procedure and principles used in the test of the absolute grounds for refusal the BOIP skipped one of the examples that were enacted in the old guidelines: 'A consumer who is looking for a medicine against a sore throat shall search this medicine near the packages of pills. The consumer shall observe the trade mark as it is attached to the packaging. The product the consumer looks for and the way in which the trade mark is attached to the product affect the public's opinion. These circumstances are both relevant for the question to which extent a sign/word will be understood in its descriptive sense.'

17. The BOIP also skipped in this field its remark that with regard to the examination of applications in which one of the Benelux languages is used translations in the other languages should be taken into account, and its remark that descriptive signs in a dialect which can be understood in the Benelux do not have distintiveness. These remarks are replaced by the mere comment that it is important that the Benelux has different official languages, and that the public's knowledge of other languages and especially English is relatively extensive. Even if only a part of the public perceives a sign in its descriptive sense the sign can not be registered as a trade mark. Example by the BOIP: the sign "ristorante italiano" for catering services shall be refused, because the (biggest part of the) public in the Benelux shall understand this sign in its descriptive sense, although Italian is not a common language in the Benelux.

18. The BOIP stresses last but not least that the statutory limitations on the scope of protection of a trade mark (for example descriptive use) do not have any influence in the refusal process: the legislator has made a clear choice for a system with an upfront review by the BOIP, in order to prevent that third parties should fight invalid trade mark registrations.

19. With regard to acquired distinctiveness the BOIP added that The Benelux Court of Justice has decided (case Biomild 1) that a sign which lacks inherent distinctiveness can only be registered if there is prove that the sign acquired distinctiveness before the application was filed.

20. Furthermore the BOIP changed it original comments on acquired distinctivess in relation to the territory of the Benelux: it stresses that the Benelux is one indivisible territory. Therefore a sign can only be a valid trade mark if it is valid in the Benelux as a whole. Acquired distinctiveness needs prove for the Benelux as a whole, or at least for a part / parts of the Benelux for which the sign lacked inherent distinctiveness. For a sign for example that is descriptive in English, aquired distinctiveness needs to be proven for the Benelux as a whole, provided that the public understands its meaning. The same applies for non-linguistic signs like colours or shapes. However a word which is only descriptive in Luxemburg, needs to acquire distinctiveness only in circles of the Benelux public who understand this language.

21. With regard to the nature of the refusal process before the BOIP it is stressed that the BOIP should examine all applications. Skipped is the phrasig in the old guidelines that this principle is is recognised in the case law of the Courts of Appeal in The Hague and Brussels, and that the same principle is applied by the CFI with regard to decisions of OHIM.
22. Objections against a refusal should be filed in time. The filing of objections is not possible after the period for objections has ended. According to this principle no new objections can be raised in an appeal, although it is possible to come forward in an appeal with new document with regard to a foundation used in the application proceedings.
23. With regard to examination of goods and services the BOIP clarifies that it checks the absolute grounds in relation to the goods and services for which the registration is done. It can restrict a refusal to certain goods and services. In case of such a restriction a partial refusal follows. However the BOIP does not have to argue by each specific good or service why an application is refused. If the BOIP thinks that an absolute ground for refusal should be applied for a whole category of goods and services, the motivation can be global (ECJ in The Kitchen Company).
24. A request to restrict the list of goods and services will only be dealt with if it is formulated unconditionally and unambiguosly. Not allowed is a restriction which reads 'all services and goods mentioned before in so far as not related to (descriptive sign).' A restriction can only be requested during the objection period, while a (partial) withdrawal of the application remains possible as long as the refusal is not final.
25. The BOIP stresses that it tries to do the examination as much as possible in conformity with the economic reality of the sector in which the applicant, according to the application, operates.

Posted by: Gino Van Roeyen @ 09.52
Tags: absolute grounds for refusal, Benelux trade marks,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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