INTA 2017: The Gummy Bear Uprising

This case was considered by a panel of judges from several jurisdictions who shared their thoughts on the decision yesterday, at INTA’s International IP Court is in Session: Judges from International Jurisdictions Discuss Hot Topics in Trademark Law.

Dr. David Aschmann, Federal Administrative Court (Switzerland), outlined the case, which centered on a trademark for a packet of gummy bear sweets owned by Haribo.

Last year, the Swiss Federal Administrative Court allowed the registration of the trademark, GOLDBÄREN.

Although the court considered the mark to be non-distinctive, it still allowed registration—based on the existing registration of 19 other similarly non-distinctive trademarks.

“All 19 previously registered signs were considered similarly non-distinctive,” in that they consisted of the word ‘gold’ in a Swiss national language or English, and the name of an animal or object, explained Dr. Aschmann.

The Swiss Federal Institute of Intellectual Property had refused to register the trademark but, to the judges, registration of the trademark would “fit perfectly into long-standing practice”, he said, noting that the judges were unable to understand why the office considered it different.

According to Dr. Aschmann, Haribo’s competitors had obtained the registrations unlawfully, and if Haribo hadn’t been treated in the same way as those competitors by the office, its only alternative action would have been to file a civil action against the other trademark owners.

Conflicting Rights

The Swiss court held that the mark could be protected under “equality in injustice,” a principle that isn’t common in Swiss law and which has strict conditions.

Richard Arnold (High Court of London, United Kingdom), opposed the decision, stating that it wouldn’t have happened in the UK for three reasons: principle, practicality, and policy.

“As a matter of principle, no applicant has the legitimate expectation that he can rely on the unlawful act of a third party. He only has the legitimate expectation that the trademark application will be examined in accordance with the law and on its own merits,” he said.

He added going into a lengthy enquiry is a complete waste of time and that “allowing reliance on previous registrations is bad policy.”

Following an equality in injustice approach would mean that the unlawful practice can never be changed. He argued that “once you have 19 marks, you have to have 20, and once you have 20, you have to have 21” and that the interest of the trademark applicant does not justify this.

It would have been inappropriate in Japan to grant the exclusive right to Haribo, said Motoyuki Nakashima (Tokyo IP High Court, First IP Division, Japan).

“Judges have the role to apply the law and amend wrong practices,” he added. “If the trademark office has consistently and continuously acted contrary to trademark law, this should not be ignored.”

Canada takes the same position in terms of the treatment of trademarks as the United Kingdom.

“If previous cases are improperly or wrongly registered, they won’t be persuasive to future decisions,” said Michael Manson, Federal Court of Canada.

The same is true for Spain, according to Luis Rodriguez Vega (Appeal Court of Barcelona, Spain), who explained that the courts are bound only by the law, and not by the practice of the office.

“If the office hasn’t followed precedent, there could be discrimination against the applicant,” he added.

A Constitutional Question

The decision raises the constitutional question of equal treatment before the law.

In Ecuador, the right to be treated equally before the law is recognized by the Constitution, explained Hugo Gomez Apac (Andean Community Court, Ecuador).

He agreed with Mr. Arnold: “If the office considers a mark must not be introduced because of lack of distinctiveness, the application should be rejected even though similar signs have been registered.”

India follows much the same position. “You say in the abstract … there is equality before the law. But there can’t be equality in terms of illegality,” explained Sanjay Kishan Kaul (Supreme Court of India, India) claiming that in this kind of situation in India, the trademark would never have been permitted.

Rajiv Sahai Endlaw (High Court of Delhi, India) concurred.

Elisabeth Ohm, Deputy Director Norwegian Board of Appeal for Industrial Property Rights in Norway, added that equal treatment is not equal if you don’t consider all the trademarks that have also been refused.

Ms. Ohm argued that the decision was in direct conflict with the Court of Justice of the European Union’s opinion that “the European Union Intellectual Property Office is under a duty to exercise the principle of equal treatment, but it must be consistent with respect to legality.”

Equality before the law is also in the Chinese Constitution, said Junli Xia, Presiding Judge of 3rd Civil Division of the Supreme People’s Court of China.

“The office may make a mistake, but this is the reason we established the [Trademark Review and Adjudication Board],” she said.

Marianne Grabrucker, former Presiding Judge, German Federal Patent Court, and President of the Circle of European Trademark Judges (CET-J) , explained that the CET-J is discussing the topic.

“Deeper academic evaluation is required,” she said. “There’s an obligation on the administration to balance different interests.”

Iris Gunther, External Relations Enforcement Advisor at INTA, chaired the session.