Transcript Confusion about the public: when is it relevant?

Confusion about the public:
when is it relevant?
BMM – Annual Meeting
Alicante 16 October 2009
Tjeerd Overdijk
VONDST Advocaten
The problem (1):
 Watches of the mark XX are well-known
 among wealthy consumers?
 among the general public?
 For assessing notoriety, confusion etc.:
should we look at wealthy consumer and/or
general public?
The problem (2):
 The profile of bicycle tyres V are claimed to
be distinctive sign of origin
 among professionals in the trade?
 among the general cyclists?
 For assessing distinctiveness: should we look
at the informed professional in the trading
channels and/or general public?
The problem (3):
 The brand of a new pharmaceutical drug YY
is (is not) confusing for
 the end users / patients?
 the doctors and/or pharmacists?
 For assessing distinctiveness, notoriety,
confusion etc.: should we look at end users
and/or medical profession?
The general issue:
 The ‘public’ addressed by a trade mark is often
multiform – different groups of addressees: end
consumers; traders; other professionals; different
territories; different languages;
 Between these groups a trade mark may or may not
fulfil its function(s), or fulfil its functions in a different
manner;
 How do we make the assessments which must take
into account “the public”?
 When is the public ‘relevant’ public?
When does the issue arise?
 Is the sign a trade mark?
 Distinctiveness (incl. acquired distinctiveness, mark
turned generic) (3, 12 HD; 7, 50(1)b CTMR);
 Genuine use (12(1) HD; 50(1)a CTMR);
 Notoriety (5(2) HD; 9(1)c CTMR);
 Liability to deceive or mislead
(3g, 12(2)b HD; 7(1)g CTMR);
 Confusion (4(1)b & 5(1)b HD); 9(1)b CTMR);
 Advantage or damage (5(2) HD; 9(1)c CTMR) .
The rules:
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HD, CTMR, BIPC: “the public”; “in the trade”;
Why should public be ‘relevant’?
‘Relevant public’ = invention of the courts;
First mention of ‘relevant public’?
The rules – genuine use
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There is ‘genuine use’ of a trade mark where the
mark is used in accordance with its essential
function (i.e. to guarantee the identity of the origin of
the goods or services), in order to create or preserve
an outlet for those goods or services – i.e.
noticeable for the relevant public (ECJ 11-03-03 C40/01, Ajax/Ansul);
Relevant market (public) for genuine use is not only
end consumer, but may also consist of distributors
(SC 23-12-05, Sidoste / Bonnie Doon)
Even minimal use or use by a single importer can be
sufficient (ECJ 27-01-04 C-259/02 La Mer).
The rules – distinctive character
 The distinctive character of a trade mark within the
meaning of Article 3(1)(b) must be assessed by
reference, first, to the goods or services in respect of
which registration is sought and, second, to the
perception of the relevant persons, namely the
consumers of the goods or services.
 (ECJ 08-04-03 C-53-55/01 (Linde-Winward-Rado))
ECJ 16-07-98 C-210/96 (Gut Springenheide, Tusky / Okd Kreis Steinfurt - ALü)
 Ready-packed eggs with the
description '6-Korn — 10
frische Eier‘ (six-grain — 10
fresh eggs). According to the
company, the six varieties of
cereals in question account for
60% of the feed mix used to
feed the hens.
 Breach of Paragraph 17(1) of
the German Foodstuffs and
Consumer Goods Law under
which misleading descriptions
were prohibited.
The average Gut Springenheide
consumer
 Questions asked to ECJ:
1) (a) actual expectations or (b) objectified concept of a
purchaser?
2) If (a): informed average consumer or casual
consumer?
3) If (b): Definition of objectified purchaser?
 Answer: court must take into account the presumed
expectations of an average consumer who is
reasonably well-informed and reasonably observant
and circumspect.
From Gut Springenheide to Lloyd
ECJ 22-06-99 C-342/97 (Lloyd/Loint’s)
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Global appreciation of the likelihood of confusion (…), based
on the overall impression created by them, bearing in mind, in
particular, their distinctive and dominant components;
(…) perception of marks in the mind of the average consumer
[who] normally perceives a mark as a whole;
For the purposes of that global appreciation, the average
consumer of the category of products concerned is deemed to
be reasonably well-informed and reasonably observant and
circumspect (see, to that effect, Case C-210/96 Gut
Springenheide and Tusky [1998] (…). However, account should
be taken (…) that the average consumer [makes no] direct
comparison between the different marks but [has] imperfect
picture of them that he has kept in his mind;
the average consumer's level of attention is likely to vary
according to the category of goods or services in question.
The average Gut Springenheide
consumer – stricter test or not?
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Verkade:
ECJ has its eyes on an end user who is more
qualified than the average consumer, because of the
two adjectives.
Van der Kooij: ‘Average’ has been added to
distinguish the normal consumer from the more
specialized consumer.
Gielen:
The adjectives are merely descriptive for the
average consumer, who is rarely in a position to
make a direct comparison and has to work with an
imperfect recollection of what he has seen.
Consumer is not always ‘average’:
CFI 12-06-07 T-441/05 (IVG / OHIM)
 Applicant is undertaking
specialising in property
construction, administration and
management and supplies the
services to professional or
private consumers;
 In the light of the specific nature
and high price of the
transactions generally involved,
those services are aimed at an
informed public, whose level of
attention is higher than that of
the average consumer.
Consumer is not always ‘average’:
CFI 10-10-07 T-460/05 (B&O / OHIM)
 B&O applied for 3-D mark of
organ pipe shaped loudspeaker;
 top-of-the-range products
(suggested retail price EUR
1,750);
 marketed through a selective
distribution system;
 target group is restricted to
consumers who are also
quality-minded and invest in the
product only after careful
consideration.
CFI 10-10-07 T-460/05 (B&O / OHIM)
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Distribution system or marketing method is
immaterial (“may change”??);
in the light of the nature of the goods concerned, in
particular, their durable and technological nature, the
average consumer displays a particularly high level
of attention when purchasing such goods [and]
purchases them only after a particularly careful
examination;
(Cf. Case C-361/04 P Ruiz-Picasso and Others v OHIM [2006]
ECR I-643, paragraph 40 and 41)
The rules: distinctive character (contd)
 Vredestein claimed 3D
mark for its PERFECTprofile;
 3D mark declared null and
void because general
public does not perceive
the profile of the tyre as a
designation of origin;
 Mind of professional
retailer not relevant.
SC 11-05-01 (Vredestein / Ring 65 –
profile of bicycle tyres)
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Supreme Court:
Court of Appeal ruled that the professional retailer
does not form part of the relevant public, because he
will only have an advisory role in the decision to
purchase; no predominant influence on decision of
end user;
General public will recognize tyre with PERFECTprofile as originating from Vredestein only after
receiving advice from professional retailer. [
reference to Burberry’s II ?? ]
ECJ 29-04-04 C-371/02 (Björnekulla /
Procordia Food)
 Procordia owned trade mark
Boston Gurka;
 Björnekulla sought revocation
claiming that it had become
generic name;
 Procordia claimed that tm was
still distinctive among persons
who deal commercially with the
product – the relevant class on
basis of ‘travaux préparatoires’
of Swedish Law on Trade
Marks.
ECJ 29-04-04 C-371/02 (Björnekulla /
Procordia Food)
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Question referred:
‘In cases where a product is handled at several stages before it
reaches the consumer what is or are, under Article 12(2)(a)
HD, the relevant class or classes of persons for determining
whether a trade mark has become the common name in the
trade for a product in respect of which it is registered?
Shorter: what means ‘in the trade’ in 12(2)(a) HD?
Ruling: in cases where intermediaries participate in the
distribution to the consumer or the end user (…), the relevant
classes of persons (…) comprise all consumers and end users
and, depending on the features of the market concerned,
all those in the trade who deal with that product commercially.
The rules: distinctive character (contd)
 Alcon filed application for CTM
BSS for ‘ophthalmic
pharmaceutical preparations;
sterile solutions for ophthalmic
surgery (cl. 5);
 Dr Robert Winzer Pharma
GmbH filed claim for
declaration of invalidity;
 Office: BSS is a descriptive
indication for ‘Balanced Salt
Solution’;
CFI 05-03-03 T-237/01 (Alcon/OHIM)
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In view of the intended use of the goods the relevant
public must be considered to be made up of
ophthalmologists and ophthalmic surgeons
throughout the whole of the European Union;
the evidence provided was sufficient to show that, in
specialist circles, the term BSS had become
customary as a generic indication for ‘sterile
solutions for ophthalmic surgery’.
The rules: confusion
 Alcon filed application for CTM
Travatan for ophthalmic
pharmaceutical products (cl. 5);
 Opposition from earlier Italian
tm Trivastan (similar products);
 CFI: the products are medicinal
products requiring a doctor’s
prescription. The relevant public
is composed not only of end
users, but also of professionals
(doctors who prescribe the
product and pharmacists who
sell it.
ECJ 26-04-07 C-412/05 (Alcon/OHIM)
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the fact that intermediaries such as healthcare
professionals are liable to influence or even to
determine the choice made by the end-users is not,
in itself, capable of excluding all likelihood of
confusion on the part of those consumers as regards
the origin of the goods at issue;
the role played by intermediaries must be in part
balanced against the high degree of attentiveness of
users and against ability of users to make those
professionals take into account their perception of
the trade marks at issue and, in particular, their
requirements or preferences.
The rules: language aspects
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If a mark is descriptive in one or more particular
linguistic areas, it must have acquired distinctive
character through use throughout the relevant
linguistic area(s);
In the relevant linguistic area(s) the relevant class of
persons, or at least a significant proportion must
identify the product or service in question as
originating from a particular undertaking because of
the trade mark.
ECJ 07-09-06 C-108/05 (Europolis)
CFI 15-10-08 T-405/05 (Manpower)
The rules: notoriety & unfair advantage
ECJ 12-03-09 C-320/07 (NASDAQ)
 Opposition by The Nasdaq
Stock Market, Inc. under Art.
8(5) CTMR;
 the relevant public to be taken
into consideration will vary
according to the type of injury
alleged by the proprietor of the
earlier mark;
 Injury in the form of ‘drawing
benefit’ must be assessed by
reference to average
consumers of the goods or
services for which the later
mark is requested.
The rules: notoriety & territoriality
ECJ 14-09-99 C-375/99 (Chevy)
 For protection extending to nonsimilar products or services, a
trade mark must be known by a
significant part of the public
concerned by the products or
services which it covers (not
same as general public);
 In the Benelux, it is sufficient if
the trade mark is known by a
significant part of the public
concerned in a substantial part
of that territory, which part may
be a part of one of the countries
composing that territory.
The rules: notoriety & territoriality
ECJ 06-10-09 C-301/07 (PAGO)
 For protection afforded in Article
9(1) CTMR, a CTM must be
known by a significant part of
the public concerned by the
products or services covered by
that trade mark;
 In view of the facts of the main
proceedings, the territory of the
Member State in question
(Austria) may be considered to
constitute a substantial part of
the territory of the Community.
Conclusions:
 Relevant public = average member of target group;
 Sometimes trade mark has more than one target
group (end users and professionals in distribution
chain) -> then caution:
 Unclear how to balance perception of either group
(“depending on features of market” and ‘reverse influence’
(Alcon))
 Tendency: end user rules the waves!
 The ‘relevant public’ may vary according to the type
of injury alleged.
Contact:
[email protected]
+31(0)20 504 2000