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New Forms of TrademarksSmells, Shapes and Sounds

Registration and Enforcement Experiences within the European Union

Dr. jur. Gert Würtenberger

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Jurisdiction of the ECJ in trademark matters

final instance in proceedings which have been initiated before OHIM

- application proceedings

- opposition proceedings

- invalidation and cancellation

proceedings

OHIMBOA CFI ECJ

reference for a preliminary ruling on questions of harmonized trademark law* arisen in

- national application, opposition,

invalidation or cancellation proceedings

- infringement proceedings before

national courts (CTM courts)

*for further reference see

Gert Würtenberger, References to the European Court of Justice for a Preliminary Ruling in Trademark Matters, 86 TMR 203 (1996)

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Art. 91 CTMRCommunity Trademark Courts

1. The Member States shall designate in their territories

as limited a number as possible of national courts and

tribunals of first and second instance, hereinafter referred

to as ‘Community trade mark courts’, which shall perform the

functions assigned to them by this Regulation.

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Art. 92 CTMRJurisdiction over infringement and invalidity

The Community trade mark courts shall have exclusive jurisdiction:

(a) for all infringement actions and — if they are permitted under national law — actions in respect of threatened infringement relating to Community trade marks;

(b) for actions for declaration of non-infringement, if they are permitted under national law;

(c) for all actions brought as a result of acts referred to in Article 9 (3), second sentence;

(d) for counterclaims for revocation or for a declaration of invalidity of the Community trade mark pursuant to Article 96.

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Art. 4 CTMRSigns of which a Community trade mark may consist of

A Community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

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Graphical RepresentationECJ — 12 December 2002

Ralf Sieckmann Case C-273/00

the list of signs that may be registrable as trademarks set out in the directive/regulation is non-exhaustive

signs not capable of being perceived visually may not be trademarks, provided that they can be represented graphically

graphical representation must enable the sign to be precisely identified

the graphical representation needs to be self-contained, easily accessible and intelligible

the representation must be durable, unequivocal and objective

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Art. 7 (1) e CTMRAbsolute grounds for refusal

1. The following shall not be registered:

...

(e) signs which consist exclusively of:

(i) the shape which results from the nature of the

goods themselves; or

(ii) the shape which gives substantial value of the goods

(iii) the shape which gives substantial value to the goods.

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ECJ (Eight Chamber) — 25 October 2007 Develey Holding GmbH & Co. Beteiligungs KG vs. OHIM

Case C-238/06 P

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CFI (Eight Chamber) — 12 November 2008 Lego Juris vs. OHIM

Case T-270/06

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CFI (Third Chamber) — 10 October 2007

Bang + Olufsen AS vs. OHIM

Case T-460/05

Three-dimensional trademarks

loudspeaker box

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Sounds

Over the past 10 years OHIM has registered around 80 sound marks.

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Sounds

(Sound of tennis balls being hit)

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Tarzan's trademark yell

first application in February 2004

rejected

second application also made in February 2004

accepted

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Smells C6H5-CH = CHCOOCH3

(smell of methyl cinnamate)

the smell of fresh cut grassclass 28: tennis balls

Sensory Trademarks

Touch Marks

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Slogans

HAVE A BREAK.... ® Nestlé

Just Do It®

I'm Lovin' It®

NIKE

McDonald's

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CFI (Fourth Chamber) — 11 December 2001 Erpo Möbelwerke GmbH vs. OHIM

Case T-138/00

"DAS PRINZIP DER BEQUEMLICHKEIT"

The principle of convenience

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Higher Regional Court, Cologne —12 December 2008 General Biscuits Belgie N.V. vs. ÜLKER

Case 6 U 143/04

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High Court of Justice (Chancery Division) — 4 August 2008

Whirlpool Corp. vs. Kenwood Ltd.

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Compilation of images showing various stand mixers available for purchase in the European Union in 2007

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ECJ (Third Chamber) — 25 January 2007 Dyson Ltd. vs. Registrar of Trademarks

Case C-321/03

transparent bin or collection chamber

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Federal Supreme Court, Germany — 30 April 2008 RIMOWA „Rillenkoffer“

Case I ZR 123/05

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Federal Supreme Court, Germany — 26 October 2006 Lindt & Sprüngli vs. Hans Riegelein & Sohn

Case I ZR 37/04

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wuesthoff@wuesthoff.de

Thank you for your attention !