Introduction

Trade mark law has been growing rapidly in Europe during the last twenty years as a result of the harmonization process and the introduction of the Community trade mark system. Until the introduction of the new European regime, national schemes of protection had been developed following contradictory models, ranging from pure deposit systems to registries that wished to protect consumers and competitors first and trade mark owners second. At the same time national courts had been applying their own distinct and often disparate trade mark law doctrines, whereas for the Court of Justice trade mark rights were primarily potential anti-​competitive tools and barriers to intra-​Community trade. From the early 1990s onwards, the new European regime has changed all that. National laws have had to adapt to following the same substantive principles and national systems to coexist with a new, and truly federal, competing system of protection.

Relative Grounds

This chapter considers the case law of the Court of Justice on conflicts with earlier rights at the time of application. They are resolved by Article 4 of the Harmonisation Directive and Article 8 of the Community Trade Mark Regulation.

Parallel Imports

Free movement of goods, one of the ‘four freedoms’ together with free movement of persons, services, and capital covered in the Treaties, is a fundamental principle with two purposes. The first is purely economic; a customs union and common market comprising individual Member States cannot be established unless goods from all the Member States are sold freely and compete effectively in all the Member States. The second is political, if there is to be a single common market then goods must flow freely within its borders. The effect of national measures that block the importation of goods from one Member State to another, make their marketing more difficult, or raise their price, is the distortion of the free flow of goods and competition. Inevitably, in a single market such measures have to be eliminated.

The New Trade Mark ‘Package’

Trade mark protection in Europe, when the European Economic Community was established in 1957, was territorial in nature, and the respective trade mark systems varied widely. Reforms were undertaken in some of the original six and eventually nine Member States, highlighted by the creation of a uniform trade mark system for the three Benelux countries in 1970, and the introduction of the requirement of use in Germany in 1967.

Distinctiveness Acquired Through Use

Trade marks that are not inherently distinctive or that are descriptive or generic may nevertheless be registered if they have, as a result of the use that has been made of them, acquired distinctiveness, or what is called in US American trade mark law, ‘secondary meaning’. The legal basis for this basis for registration is found in Article 3(3) of the Directive and in Article 7(3) CTMR.

European Union Trade Mark Law

Trade mark law at the European Union (EU) level has developed following two parallel paths. One led to the harmonization of disparate national systems of trade mark protection; the other to the creation of a ‘federal’ trade mark right, unitary in nature and effective throughout the territory of the European Union. The aim of this chapter is to describe briefly the destinations reached by the ‘harmonization’ and the ‘federal’ paths.

Conclusion

The Court of Justice has considered within a relatively short period of time a large number of trade mark cases from two perspectives: as an interpretive court for the purposes of both the Directive and the Regulation and as a supreme court of appeal under the Regulation and its implementing rules. In both contexts it has interpreted and applied provisions that were essentially identical. However, under the Regulation the Court also had to be supportive of the new Union-wide trade mark right and the bodies administering it. For example, by strengthening the role of the Boards of Appeal and streamlining their decision-making trends, the Court could achieve a number of things: make the registration process more efficient, raise the level of dependency on the decision-making instances of OHIM, make the appeal route to the courts in Luxembourg more difficult, and lessen the burden imposed on the General Court (previously the Court of First Instance) and the Court of Justice.

Scope of Protection, Limitations, and Enforcement

This chapter explores the scope of protection and considers trade mark conflicts from the perspective of trade mark infringement and enforcement. It also considers conflicts between trade mark and other types of rights over commercial indicia. The concepts of use, confusion, and protection of trade marks with reputation together with their related tests have been developed in Chapter 5. In this chapter we revisit them from an infringement perspective where the comparisons courts have to make become more concrete, and market and factual contexts become even more relevant. Issues specific to the enforcement of the Community trade mark are considered towards at the end of this chapter together with a discussion on goods in transit.

The Interaction with Other Areas of the Law

Competition law and the free movement of goods principles have guided the development of trade mark law in Europe. This chapter will examine other relationships. The first part considers the use of trade marks in comparative advertisements. We have seen in Chapter 7 how comparative advertising has delineated the limits of trade mark law. Here the other side of the relationship is examined. Chapter 5 considered whether a geographical name can function and be protected as a trade mark and the limits of such protection. The second part of this chapter gives a flavour of the system of protecting product designations as geographical indications of origin. The third part looks at the clash between trade marks and domain names and the catalysing role of the concept of bad faith. The fourth part is a good example of how one dispute between distinguishing signs can become the common theme of distinct plots performed before different European audiences;

Trade Marks and Competition Law

In this chapter we will examine briefly the formal interaction between trade marks and competition law. We have seen that competition questions were raised in the previous chapter in respect of the potential function of trade mark rights as tools for compartmentalizing the common European market into national markets. We have also highlighted the competition arguments and rationale considered by the Court first in determining what constitutes a protectable trade mark and second in delineating the scope of protection. Here, the focus shifts to how trade mark rights and agreements involving trade marks are weighed up by competition law. The two primary competition rules that are described below deal with anti-​competitive collusion (Article 101 TFEU, previously Article 81 EC) and abuse of market dominance (Article 102 TFEU, previously Article 82 EC).