The Gazette 1979

GAZETTE

JANUARY/FEBRUARY 1979

PROPOSED E.E.C. TRADE MARK

Rationale

Trade marks within the E.E.C. are divided, at present,

into seven national varieties.

This diversity in national

systems clearly impedes the free movement of goods

between the member states.

The Court of Justice has curtailed, in exceptional

circumstances, the exercise of national rights to prevent

the sale of imported branded goods.

The Court is, how-

ever — in its efforts to promote a unified and competitive

Community market — relatively powerless to undermine

the territorial protection conferred by national trade mark

rights.

Realization of this fact, perhaps more than any

other reason, has recently prompted the Commission to

adopt a memorandum which urges the creation of an

E.E.C. trade mark.

The memorandum in question takes the form of an

advanced-level discussion document. Its central proposal

- the creation of a unitary and autonomous Community

trade mark — is recommended in preference to the

approximation of national trade mark laws.

The latter

expedient could obviate some discrepancies — e.g., in the

criteria for registration — between the different national

systems. It would, however, leave untouched the principle

of territorial protection.

The course recommended, therefore, anticipates resort

to the reserve powers vested in the Community institutions

by virtue of Article 235 of the Treaty of Rome. That pro-

vision states that "[If] action by the Community should

prove necessary to attain, in the course of the operation of

the common market, one of the objectives of the Com-

munity, and this Treaty has not provided the necessary

powers, the Council shall acting unanimously on a pro-

posal from the Commission and after consulting the

Assembly, take the appropriate measures."

Basic Concepts

The proposals envisage a balanced and attractive code

of protection, which will represent a genuine alternative to

the existing national and international systems.

It is conceived that the E.E.C. mark should have both

a unitary and autonomous character. The unitary aspect

implies that the mark could be applied for and registered

only in respect of the entire area of the E.E.C. A firm

insistence on the unitary principle would entail, however,

that any prior national mark could be raised to obstruct

the registration of an E.E.C. mark. For that reason,

departure from the unitary principle is foreseen in respect

of national rights as having only a local or regional

importance.

The autonomous nature of the Community mark

would be ensured by providing that, in general, it be

subject only to the proposed law.

A fundamental assumption in the Commission's

perspective is that national trade mark laws will co-exist

with the E.E.C. code. Continuing protection for marks at

national level is regarded as essential for a number of

reasons. The majority of trade marks in the Community,

for example, are registered in the one state only, and this

implies that their owners do not require a more far-

reaching protection. Many trade marks, moreover, are

unsuitable on linguistic grounds for use outside their own

language field. Finally, unregistered marks would not be

protected within the Community code.

Substantive and Procedural Principles

The law proposed to govern the E.E.C. trade mark

reflects to a large extent the principles contained in, for

example, the Irish Trade Marks Act. It refers to such

matters as the various categories of marks, the

registration procedure and also the disposition of

registered rights.

In certain respects, however, the proposed law differs

from the Irish scheme. It provides, for example, for the

protection of

service

marks: the Commission takes the

view that service sectors — such as transport, banking

and insurance — have a justifiable interest in their

commercial insignia. In addition, the definition of trade

mark would be sufficiently wide to cover colour

combinations, as well as the shapes and packaging of

articles.

Applications for registration would be addressed to an

E.E.C. Trade Mark Office. The grounds suggested for re-

fusing a mark divide into absolute and relative categories.

Absolute grounds of refusal refer to exclusions on the

basis of public interest — contemplated here are non-

distinctive, and also descriptive or deceptive marks.

Relative grounds of refusal to exclusions of marks by

virtue of prior registered rights.

In the event of opposition to a registration, referral

could be made to a Conciliation Board. Should settle-

ment proposals made by the Board prove unacceptable, a

series of appeals would lie — in the first instance, to the

appeals section of the E.E.C. Trade Mark Office; and

from there, to the Court of Justice.

CONCLUSION

Most trade mark issues encountered by the Irish

lawyers are likely to be governed by the Trade Marks

Act, 1963. On questions of interpretation under that Act,

it may however be necessary to refer to the fast-growing

case law. It is significant that the majority of decided

cases relate to the criteria for registration. Many of these

cases, moreover, concern marks which in other countries

are established surnames or geographical names, or

which in languages other than English are descriptive of

the goods in respect of which registration has been

sought. Examples are 'Farah', 'Silva-Thins', 'Miele',

'Aphrodisia', Kreuzer', and 'Kiku'. A recurring issue for

the courts has been whether such marks, notwithstanding

their significations elsewhere, would

for people in Ireland

possess the standards of distinctiveness necessary to

secure registration.

The common law action of passing off is probably of

declining importance, owing to the growing appreciation

of the advantages of registration. It retains nevertheless

an essential place in the regime of protection since it

covers, not only marks in the statutory sense, but also

any other characteristics which form part of the

presentation of a product. Moreover, the possibility of an

action at common law will in most instances be seen as a

sufficient safeguard for the trade marks of the smaller

type business.

The provisions on trade marks in the Treaty of Rome

have relevance only in the context of transnational trade.

They stand however as a potential litigation-trap, and

merit attention when, for example, an Irish concern

proposes to take an assignment or licence of a trade mark

from a company with trading connections in other E.E.C.

mamber states.

Finally, the proposals for an E.E.C. trade mark will

hold interest for the increasing number of Irish concerns