CJEU limits disclaimers on trademarks

12-06-2019

CJEU limits disclaimers on trademarks

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The Court of Justice of the European Union (CJEU) has today, June 12, ruled that national disclaimers attached to trademark registrations which exclude one element of the mark from an analysis of likelihood of confusion are in breach of EU law.

The Stockholm Court of Appeal referred the case to the CJEU in 2017, after hearing a dispute between a Swedish businessman and the Swedish Intellectual Property Office (PRV) over the registration of the “Roslagsöl” trademark for beer.

Mats Hansson applied to register the mark in 2015. The PRV rejected Hansson’s application, citing an earlier mark “RoslagsPunsch” covering alcohol drinks.

This earlier mark had been registered with a waiver that the mark did not confer exclusive protection on the phrase “RoslagsPunch”. The PRV had requested this disclaimer as a condition for registration as “Roslags” is a region in Sweden, and “Punsch” refers to one of the goods covered by the mark.

Hansson successfully appealed against the PRV’s rejection of his “Roslagsöl” mark, with the Swedish Patents and Market Court finding no likelihood of confusion between the two signs.

The PRV then filed a counter-appeal, prompting the Stockholm Court of Appeal to refer the case to the CJEU.

The Stockholm court asked the CJEU whether it should take the disclaimer attached to the “RoslagsPunsch” mark into account in analysing the likelihood of confusion between the two signs, given that an element of the earlier mark had been excluded from protection.

In today’s judgment, the CJEU ruled that national provisions allowing for such disclaimers cannot impact a likelihood of confusion analysis.

According to the CJEU, Article 4(1)(b) of EU Directive 2008/95 on trademarks “must be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark...from the global analysis of the relevant factors for showing the existence of a likelihood of confusion”.

Such an analysis “cannot be confined to taking one sole component of a complex trade mark and comparing it with another mark,” the CJEU ruled.

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Beer, disclaimer, confusion, CJEU, Stockholm Court of Appeal, RoslagsPunsch, Roslagsöl, PRV, Court of Justice of the European Union

WIPR