Industry ‘common practice’ isn’t a factor in TMs: CJEU
The EU’s top court has said that trademarks intended to be applied to specific goods don’t need to be examined in light of standard commercial practices in a particular industry.
The Court of Justice of the European Union (CJEU) judgment came in a dispute between a Swedish transport operator and the country’s IP office.
Östgötatrafiken, which operates trains, buses and trams in Östergötland County, has applied to trademark the design of its vehicles. The trademarks cover the red and yellow pattern displayed on its buses and trains.
The IP office rejected the applications, finding that they were only “decorative in nature” and wouldn’t inform customers of who was operating the service.
Sweden’s Court of Intellectual Property and Economic Affairs upheld the IP office’s decision, concluding that the marks did not differ significantly from the way in which other transport decorated their vehicles.
After Östgötatrafiken challenged the ruling, the Stockholm Court of Appeal chose to refer the case to the CJEU. The case deals with trademarks that are intended to be applied to specific goods or objects, such as vehicles.
The court asked the CJEU to rule on whether such trademarks should be examined in light of common practice by other companies in the same industry.
The CJEU has now ruled that it is not necessary to examine if these marks “differ significantly from the norm or from the habits of the economic sector concerned”.
It will be up to the Swedish court to analyse whether Östgötatrafiken’s marks are distinctive and eligible for registration.
The CJEU has produced extensive case law on unconventional trademarks. In April, the court clarified the grounds of refusal for a 3D trademark consisting of the shape of a product.
That same month, a lower, constituent court of the CJEU refused registration for a 3D shape, a round golden container on the grounds that there was “nothing original and not distinguished from very similar packaging present on the market”.
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