Harmonisation of Trade Mark Laws

Trade Marks

Infringement: "Likelihood of confusion on the part of the public"

The European Court of Justice has recently decided how the infringement provision of Article 5.1(b) of The Community Trade Mark Regulation - which harmonises national trade mark laws - shall be interpreted. Where the allegedly infringing mark (the sign) and the goods are not both identical with the registration there is infringement if "there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the goods".

The English Court's view has always been that a person seeing the sign on the goods has to be confused into believing that the goods came from the owner of the registered trade mark. Other Courts have taken the view that if a person seeing the sign merely thought of the registered trade mark, even if he did not believe that the goods were produced by the owner of the registered trade mark, there was infringement.

In a recent decision in SABEL BV v Puma AG the ECJ decided that the English test, actual confusion as to the source of the goods, is the correct one.

Harmonisation of Trade Mark Laws

Throughout Europe states are harmonising their trade mark laws, both by legislation and in court decisions, to bring them into line with the Trade Mark Directive. Although this has not been completed everywhere the process continues. Even Switzerland (not part of the EU) has effectively aligned its law with the EU.
(see the comments on international exhaustion: p3)

Austria

Austria published a draft Trade Marks Act in January 1998.

Three recent decisions of the Austrian Supreme Court have given wider protection for famous trade marks than before, in "Schürzenjäger", a brand name used on sausages (4 Ob 2200/96 z); Football Association Mark, a mark used on clothing (4 Ob 2206/96 g); and Boss, a mark used for an energy drink (4 Ob 105/97p).

Under current Austrian trade mark law, registered trade marks are only protected for the specific products and services for which they are registered, or for similar services and products. Until these three decisions, no protection existed for a well-known trade mark if another party used it for dissimilar products or services. In these cases, while holding that an action based on trade mark protection must fail because the classes of products in question were completely different, the Court decided that the defendant's conduct was a breach of the Austrian Unfair Competition Act, following a long line of German decisions where a defendant has parasitically exploited a well-known commercial symbol.

Ireland

Ireland has finally brought its trade mark house into order by enacting the Trade Marks Act 1996, with effect from July 1, 1996, to implement the European Trade Marks Directive. The Act is largely similar (if not identical) to the UK Trade Marks Act 1994. Accordingly, it is now possible to register service marks. All in all, it brings Irish law into line with that of its European partners.

Norway

There have been both substantive procedural changes in Norwegian intellectual property law over the last couple of years, notably effected by the Amendment Act of 22 December 1995 which came into force during 1996 and 1997.

Most of these amendments fulfil Norway's obligations pursuant to the EEA agreement, the accession to the protocol to the Madrid Agreement and other international conventions in this field.
These are the most important changes in trade mark law:

• International marks. There are new provisions on the registration of international trade marks, pursuant to the Madrid Agreement.
• Well-known marks. There is extended protection for holders of well-known trade marks.
• Opposition. The new procedure is for a post-registration opposition, within 2 months of registration.
• Deletion of trade mark registrations by the Patent Office on applications from third parties.
• Trade marks for wine and liquor containing geograph-ical designations will not be registered unless the product is of the origin indicated by the designation.
• Priority. 12 months priority from the first application in a WTO member state under TRIPS.

Norway has also extended its protection of well-known firm names.

Portugal

The current Portuguese Industrial Property Code, came into force on 1 June 1995. The main procedural changes introduced by the Code are:

• generally, administrative litigation will only involve an opposition and a reply;
• the period for filing oppositions is two months, (three months for patents and utility models), from the date of publication in the Official Bulletin;
• notices of oppositions and replies are given directly to the interested parties; and
• replies must be submitted within two months of the notification.

Portugal is a member of the 1983 Union of Paris Convention and the 1991 Madrid Agreement, and is party to several international trade mark treaties.

Switzerland

Application delays down

The new Swiss Trademark Law of 1994 caused an enormous increase in the number of applications and delays of up to 18 months. The Federal Institute for Intellectual Property reduced the period to 6 months by June 30, 1997 and has said that in future registration should not take more than six months from application.

Indications of origin

On July 1, 1997 the Ordinance on the Protection of Indications of Origin and Geographical Indications for Agricultural Products and Processed Agricultural Products came into force. The Ordinance provides for a register for indications of origin and geographical indications of agricultural products. Registered indications may only be used for products which originate from the relevant region and show the particular characteristics of that region. In the case of indications of origin, all relevant steps in the production need to have taken place in the relevant geographical region. In the case of geographical indication, it will be sufficient if the production, the processing or the adding of value has taken place in the relevant region.