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This week WIPR reported on several important senior court rulings, including three from the Court of Justice of the European Union (CJEU). Below we outline why they are important for lawyers.
Prickly response to CJEU Cactus ruling
“The CJEU never ceases to surprise,” was the verdict of one lawyer on EUIPO v Cactus, while another said it has potentially extensive ramifications.
The case assessed the notable IP Translator decision, where the court ruled that trademark applicants must specify the goods and services they aim to protect with sufficient clarity and precision.
Luxembourg supermarket Cactus had opposed two trademarks, and the case turned on a review of the 2012 decision.
Verena von Bomhard, partner at Bomhard IP, said while the statement that IP Translator is not retroactive is nothing new, “it certainly is surprising that pre-IP Translator EU trademarks (EUTMs) are now confirmed to cover all goods/services in classes where they contained full class headings, without limitation to the alphabetical list”.
What’s more, she added, “The CJEU also denied retroactive effects of its July 7, 2005 Praktiker judgment, as a result of which the CJEU now assumes that EUTMs applied for before that date and covering class headings in class 35 covered ‘retail services for any goods’.
“That is questionable and way beyond the legitimate expectations of owners of such old trademarks.”
Chris McLeod, partner at Elkington and Fife, said the EUIPO recently gave owners of EUTMs filed before June 22, 2012 six months to submit revised specifications of goods and services for any registrations covering the class heading. This was because of the IP Translator judgment, he said, but the 2017 Brandconcern ruling indicated that IP Translator had no retroactive effect.
“In essence, the CJEU has therefore held that, because the opposition under appeal in this case predates the IP Translator judgment, it was not appropriate to use IP Translator as a basis for the assessment of the scope of the specifications of the registrations on which the opposition was based.
“Clearly, a judgment at this level is binding, but it is apparently in direct contradiction to IP Translator. I suppose that we can interpret it positively for potential opponents using registrations predating IP Translator, but it must by extension be negative for applicants and those seeking certainty as to the scope of EUTM registrations.”
CJEU clears up Brussels Regulation
The CJEU provided some clarity on jurisdiction in trademark ownership disputes, in its ruling of Hanssen Beleggingen v Tanja Prast-Knipping, saying that article 22(4) of the Brussels Regulation does not apply to such disagreements.
The article covers the exclusive jurisdiction of courts in IP cases, regardless of domicile, which means that member states where an IP right has been registered should have exclusive jurisdiction to hear the case.
However, according to Stefan Abel, partner at Klaka Rechtsanwälte, new provisions in EU trademark law had created uncertainty around the jurisdiction of national courts in relation to trademark ownership disputes.
He said the ruling removed these uncertainties and strengthens the concept that exclusive jurisdiction under the regulation is an exceptional provision and must be interpreted restrictively.
While the ruling looked specifically at the first Brussels Regulation, it will also apply to the new version, Abel said. And by creating certainty, he added, the judgment avoids the risk that parties initiate parallel or subsequent proceedings on the same matter in different jurisdictions when the ownership of a trademark is at issue.
Wolf Oil prompts a cautious approach
Appeals to the General Court and the CJEU should be treated with caution, following the ruling in Wolf Oil v EUIPO, one lawyer noted.
The court said the EUIPO had correctly dismissed Wolf Oil’s opposition to ‘Chempioil’, based on its own ‘Champion’ trademark.
According to Hastings Guise, partner at Fieldfisher, Wolf Oil essentially argued that the General Court had distorted the evidence when characterising the mark and considering its conceptual impression on relevant consumers.
“The CJEU did not admit the appeal on that point and explained that an appeal on the grounds that evidence was distorted is an exceptional case. It will only be available when a party can point to specific items of evidence which have clearly been misinterpreted by the lower instance court.
“That error must also be obvious from the existing evidence on file. The claim of distortion is therefore not a basis for simply asking the CJEU to reassess all the evidence filed and replace the General Court’s factual assessment with a new assessment of its own.”
As a result, he said, the case serves as a reminder that appeals to the General Court and the CJEU should be treated cautiously.
“It is often the case that businesses treat the appeal process as simply a ‘further roll of the dice’. But in reality the higher courts are not amenable to overturning lower instance decisions unless there are identifiable errors in the earlier decisions or uncertain points of law.”
Mixed fortunes for the PTAB
The US Court of Appeals for the Federal Circuit is continuing to assert its authority over the Patent Trial and Appeal Board (PTAB).
It issued two precedential rulings, one overturning a PTAB decision and another backing one. In Owens Corning v Fast Felt Corporation, the court disagreed with the PTAB’s finding that claims covering nail tabs were valid. But in Organik Kimya v Rohm and Haas Company, the court affirmed that claims covering “processes for preparing certain emulsion polymers having improved opacity” were patentable.
Van Lindberg, senior counsel at Dykema, said the cases continue the trend of the court being more aggressive in its oversight of the PTAB.
Of the decisions, he said Owens Corning will probably make more of an impact.
“The Federal Circuit usually restricts PTAB claim interpretations, making them less broad. Owens Corning is a brief reversal of that trend, where the Federal Circuit found that the PTAB was not broad enough in its interpretation.
“This is significant because it shows how claim interpretations need to be rooted in the specification to walk the line between too broad and too narrow.”
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CJEU, Federal Circuit, IP Translator, trademark, patent, Bomhard IP, Elkington and Fife, Klaka Rechtsanwälte, Fieldfisher, Dykema