The Trade Marks and Designs Registration Office of the European Union
This month, James Nurton speaks to Kay-Uwe Jonas about the challenges of setting up a new firm, the recent Onel decision on genuine use of a CTM and German court decisions on acquired distinctiveness.
When did you start working in trade marks?
I started during my student days in 1982. I was looking for a job and thanks to a friend of my parents I started work in the filing room at Oppenhoff & Rädler. That was my first contact with trade marks. After some time, I started to do legal research and then to write briefs and prepare legal arguments. In 1990 I was admitted to the bar and worked in departments including litigation, construction and public law.
I also spent a year with the Abelman, Frayne & Schwab firm in New York, working on trade marks and IP rights. When I returned to Germany in 1992 I mainly focused on trade marks and IP work for Oppenhoff & Rädler, which later merged with Linklaters.
What do you like about trade mark work?
It's real international law, thanks to harmonisation, the Paris Convention etc: you are speaking the same language with colleagues from other countries. It's also an area that's always changing – we've had German reunification, the Community trade mark, the Madrid Protocol. There's always something new and challenging.
The client work is very interesting and you get an insight into new marketing trends, as well as their relation with problems on the internet.
Do you do mainly prosecution or contentious work?
We do a mix of both. Last year during the economic downturn there was less filing work but clients were defending their positions more vigorously and monitoring competitors. So we were more busy on the conflict and dispute resolution side.
Why did you set up your own firm?
Four years ago Linklaters decided to focus on its main areas of M&A and finance. They asked us to focus on trade marks in corporate support work. That would have meant letting go of some existing clients. More importantly, it is hard to attract associates if you are only doing due diligence work.
So we transferred the practice in a very friendly manner to a separate entity. It was a different experience but luckily I had learned a lot about administration and marketing during my Linklaters years.
Our aim is now to provide the same level of service and quality but take decisions faster. We all have more duties as we cannot rely on a huge group of support people. This has enabled us to be more flexible and competitive in the past two years
We started with 30 people in 2007 and now we have 40. We do all IP work except for technical. Our aim is to accompany clients during the whole lifecycle of their products, including dealing with issues such as product labelling and antitrust. We also have someone who specialises in sports and sponsorship work.
Who are your main clients?
Our clients are evenly split between German businesses and international ones. We work for many mid-sized German companies as well as big clients such as Deutsche Post, DHL and Axel Springer and represent the German trade marks for multinationals such as Viacom and E I Du Pont de Nemours. We also get referrals form other law firms – including some in the UK and Netherlands which never happened at Linklaters!
In total we look after about 40,000 active trade marks.
What was the first CTM you filed?
The first two I filed were word marks for Tupperware and Zurich (the insurance provider). We had to prove acquired distinctiveness for that one. Tupperware has also used the Community design system a lot. This works well and Community designs have been accepted by German courts in court proceedings. They are easy to obtain and enforce.
What about the most unusual trade mark you have worked on?
Last year we registered an abstract two-colour combination for transportation services. This was the yellow and red trade mark for DHL aeroplanes.
What do you think about OHIM?
Generally they did a great job getting the CTM started and still do a great job. OHIM is very accessible: nearly everything is available electronically.
But there is room for improvement and I know the Office is working on making decisions quicker in some proceedings. The main problem is the lack of consistency at the examination level and even more at opposition and Board of Appeal level. What particularly puzzles me are opposition decisions on confusing similarity or trade marks that conflict in several elements, where each element is per se not protectable or very low in distinctiveness.
OHIM's approach to registrability is more liberal than the German office, which I welcome. On the other hand, the German office is strict, but it's predictable so at least you know where you stand.
What do you make of the recent Onel decision in the Benelux?
I have just read the opinion in detail to prepare a commentary. The decision is aiming at saying that use of a CTM in one country alone is not sufficient to be genuine use.
Technically, I think that is correct under Article 15 of the Regulation and my understanding, as the criterion is genuine use. That doesn't exclude use in just one country as long as it is genuine use. So it may depend on the volume of use in that country. But I agree it should be clarified.
These specific issues have not yet been addressed in Germany, though issues relating to sufficient use have attracted attention. For example, in the Bainbridge decision in 2007 the ECJ indicated it was of the view that where there are various forms of a trade mark, with different registrations, use of some of them could constitute a family of marks for assessing likelihood of confusion.
What other issues are being discussed in Germany?
There have been a number of decisions and there are more to come about acquired distinctiveness for terms that are not per se registrable and for 3D trade marks. There are many issues arising as to how to phrase the correct questions for survey evidence and the threshold of awareness needed, as well as what is the scope of protection for trade marks registered with acquired distinctiveness.
A number of these issues have been decided by the German Supreme Court, and they suggest that the lower courts have been too strict and conservative. But you still need to show 50% awareness so acquired distinctiveness will only be available in exceptional cases.
What do you think the challenges for trade mark practitioners will be in the future?
The challenge is always to keep up-to-date with the legal developments. Practitioners will face more and more competition from non-lawyers or attorneys such as service providers. So we will have to face these issues. I'm personally working on the further development of our firm and I'm also engaged in planning the MARQUES Annual Meeting to be held in Berlin in September, which is a very exciting opportunity.
Then there is the economic downturn, which we all have to deal with. However, we now see filings picking up again. Many clients are now in a new accounting year and can begin projects that were postponed in 2009.
The other challenge for brand owners is that cost-awareness and enforcement in foreign countries will remain problematic. But protecting new trade mark rights in your home country can also become an issue, as monopoly rights gain more attention. In this environment, it will be important to explain the importance of brands to boards of directors, accountants, politicians and the public. We need to explain that it is counter-productive to limit the scope of protection for antitrust reasons.