13

Stretching the Trademark Protection System
Prof. Dr. Frank Gotzen(*)

The European trademark protection system, which is based on the Trademark Directive and theCommunity Trademark Regulation, offers a broad scope of protection in two respects. First, in that it allows for
trademark protection without stern demands. This can be seen from the liberal approach of case law regarding
the conditions for securing registration and assessing the validity of the trademark, such as the capacity to
distinguish. It can also be seen from the large possibilities left to protect shapes, colours, sounds and even scents.
Second, in that the scope of infringement can extend over uses of a mark for dissimilar goods or services.
In our research paper we present an overview of recent case law on these questions by the European Courtof Justice and by the Court of First Instance of the European Communities, against the background of Japanesetrademark law. The comparison shows that the European system seems to be the more liberal one. We can seethat in the growing tendency in Europe to accept, at least in principle, non-traditional marks and in thereadiness to extend the protection scope of marks into the field of dissimilar goods and services.

Ⅰ Introduction
For a good understanding of what is going tofollow it has to be kept in mind that under thepresent European system trademarks can beprotected, to the choice of the applicant, either by aunitary Community trademark for 15 countries at atime or by national legislation.
The Community Trademark System, whichbecame fully operational on 1 April 1996, provides
for trademark protection with “unitary effect”.
Essentially, this is “one-stop shopping” fortrademark registration in the EU. Simply by filing asingle application for and registering a Community
Trademark, trademark protection is valid
throughout the territory of the EU member states.
Once registered, a Community Trademark is
subject to a single set of uniform rules throughout
the EU. These rules relate, for example, to thescope of protection of the mark, to the renewal andinvalidation of the registration and to all possible
legal proceedings relating to it. The proprietor ofthe (registered) Community Trademark shall enjoy
exclusive rights to the mark, implying that he canprohibit the use of his mark by third parties
throughout Union territory. Registration of themark shall be valid for a period of ten years andmay be renewed for further periods of ten years.
The Office for Harmonization in the InternalMarket (OHIM) is located in Alicante, Spain, and ischarged with the administration of Community
Trademarks. Applications for the registration of
trademarks in the EU are filed with this office.
The Community trademark does not replace
the individual trademark laws of the EC Member
States that still can differ from State to State,
though only within the limits determined by the
TM Harmonisation Directive. It did not in factappear to be justified to require undertakings in allcases to apply for registration of their trademarks
as Community trade marks; national trademarks
continue to exist for those undertakings which do
not want protection of their trademarks at
Community level.
This European trademark protection system,
which is based on the Trademark Directive (TMD)
and the Community Trademark Regulation (CTMR)
offers a broad scope of protection in two respects.
First, in that it allows for trademark protection
without stern demands. This can be seen from theliberal approach of case law regarding theconditions for securing registration and assessing
the validity of the trademark, such as the capacity
to distinguish. It can also be seen from the large
possibilities left to protect shapes, colours, sounds
and even scents. Second, in that the scope of
infringement can extend over uses of a mark fordissimilar goods or services.
We intend to present an overview of recent
case law on these questions by the European Courtof Justice (hereafter referred to as “ECJ”) and by
the Court of First Instance of the European
Communities (hereafter referred to as “CFI”),
against the background of Japanese trademark law.
The comparison might prove instructive to answer
the question if we in Europe tend to go beyond theouter limits of the trademark protection system.

Ⅱ Securing the registration andassessing the validity of a
distinctive trademark
A.

The Japanese trademark system

The Japanese trademark system adopts theprinciple of registration. Before registering a
trademark, a substantive examination is thereby
carried out in the Japanese Patent Office.

(*) Director Centre for Intellectual Property Rights (CIR), Brussels and Leuven, Belgium

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Trademarks will not be deemed to meet thesubstantive requirements and will therefore berefused if they do not enable consumers todifferentiate the applicant’s goods or services fromthose belonging to other parties.
Art. 3 (1) of the Japanese Trademark Law
No. 127 of April 13, 1959, as amended, excludes
trademarks from registration on a number ofabsolute grounds. These exclusions have to do withthe substantive requirement of distinctiveness.
However, in the case of a trademark fallingunder the paragraphs (iii) to (v), art. 3 (2) is also
saying that, where, as a result of the use of suchtrademarks, the consumers are able to recognize
the goods or services as being connected with acertain person’s business, trademark registration
may nevertheless be obtained. This is what is
generally known under the name “secondary
meaning”
B.
1

The European trademark system

In general
Whereas the rights in a Community trademark
may not be obtained otherwise than by registration,national trademark laws in the EC are allowed
under the directive to continue to protect
trademarks acquired through use only. It did notappear to be necessary to undertake full-scale
approximation of the trademark laws of theMember States in this respect.
The articles 2 and 3 TMD as well as art. 4, 7
and 51 CTMR all contain provisions that requiresigns of which a trademark may consist to becapable of distinguishing the goods or services of
one undertaking from those of other undertakings.
It is indeed on this most important absolute
ground of objection against the validity of a
trademark that we are going to concentrate in thispaper leaving aside questions around possible otherabsolute grounds or around the relative grounds ofobjection which arise out of earlier conflicting
rights.
2 The essential function of the trademark
The European Court of Justice sees thedistinctive character of a trademark as thenecessary condition for the mark to fulfil its
essential function of identifying the undertaking
that markets the goods or services. It must serve to
identify the product or service as originating from aparticular undertaking, and thus to distinguish that
product or service from those of other
undertakings.
A distinctive character, seen as the expressionof the function of identifying the undertaking, does
not however imply that any supplementary
conditions would have to be imposed. Creative
originality for instance cannot be required. Nor can
the lack of distinctiveness result from the mere
finding of the absence of a minimum amount ofimagination.
3 No exclusion per se
The Court of Justice, in the context of Article
3.1.c. TMD, has expressly stated that there is no
reason to read a concept of “Freihaltebedürfnis”
into the European texts. According to this theory,
stemming from German case law, a preliminary
search should be carried out in order to make surethat there is no real, current or serious need toleave a particular sign or indication free. This
theory could lead, even without the legal texts
saying so, to exclusions of particular types of signs
per se, like in the case of geographical indications orof single colours, or at least render their protection
more difficult to obtain.
It appears therefore, that except for thegeneral requirement of distinctiveness, which has
to be decided on a case to case basis, there are no
per se exclusions in the European Community forthe validity of a trademark, that would not stemfrom explicit statutory exceptions.
This last situation only occurs in the case ofsigns that would not be capable of being
represented graphically in the sense of art. 2 TMD
or art. 4 CTMR, or in the case of signs consistingexclusively of the shapes meant in art. 3.1.e TMD
or art. 7.1.e CTMR.
4 A typical application: the case of wordmarks
a. In general
Let us now turn to some examples in the fieldof the most commonly used signs by trade andindustry, which are word marks.
In relation to art. 7.1.c CTMR, the BABY-DRY
decision of the Court of Justice of September 20,
2001 has stated, that, in order to assess thedistinctiveness of an indication the starting pointshould be the “normal usage from a consumer's
point of view” and “the terms used in the common
parlance of the relevant class of consumers todesignate the goods or services or their essential
characteristics”. Any perceptible difference withthis normal usage is therefore apt to confer
distinctive character on the trademark.
The European Court of First Instance alreadyused a similar criterion before the BABY-DRY
judgment of the ECJ, holding that a word markwill only then be caught by the prohibition of article
7.1.c CTMR if the relevant consumers will
immediately see the link between the meaning of
the word and a characteristic of the particular
goods or services.
For instance, the term “electronica” in a
trademark application relating to catalogues and theorganisation of trade fairs and conferences in the
sector of electronic components and assemblies,
was deemed to consist exclusively of a word which
for the relevant consumers described an essential
characteristic of the goods and services in question.
It was therefore rejected as a trademark on the● 97 ●IIP Bulletin 2003

basis of art. 7.1.b and 7.1.c CTMR, being a purely
descriptive indication Too severe in the light ofBaby-Dry seems to be that other early judgment of
the CFI, holding, on the basis of art. 7.1.c that aword like VITALITE would only be acceptable forfood for babies or for mineral and aerated waters,
but not for other goods having a specific medical,
nutritional or dietetic purpose because this sign
would then directly and immediately inform theconsumer of one of the characteristics and purposesof the goods, which is gaining renewed vitality.
In the period after BABY-DRY the Court ofFirst Instance has decided that LITE, being a word
created from a simple phonetic transcription of the
English word “light”, is used as an everyday wordin the food and catering industry to identify or
distinguish a quality of foodstuffs and is therefore
ineligible for protection. ELLOS is too descriptive
for clothing, footwear, and headgear for malecustomers as it is simply the third person pluralpronoun in the Spanish language, and may therefore
may be used, in the Spanish-speaking part of theCommunity, to designate the purpose of those
goods. But it can be accepted when applied tocustomer services for mail-order sales.
b. Word combinations
As regards trademarks composed of more than
one word, the Court of Justice in its BABY- DRY
judgement has ruled that descriptiveness must be
determined not only in relation to each word taken
separately but also in relation to the whole which
they form. Any perceptible difference between the
combination of words and the terms used in thecommon parlance of the relevant class of
consumers to designate the goods or services ortheir essential characteristics is apt to confer
distinctive character on the word combination
enabling it to be registered as a trademark.
It therefore annulled the judgement of the
Court of First Instance that had held that BABYDRY was not capable of constituting a Community
trademark for nappies. This Court had been of theopinion that signs composed exclusively of words
which may serve in trade to designate the intended
purpose of goods must be regarded as intrinsicallyincapable of distinguishing the goods of one
undertaking from those of another, even if theground for refusal obtains only in part of theCommunity. Since the purpose of nappies is to beabsorbent, in order to keep babies dry, it hadconcluded that the term ‘BABY-DRY’ merely
conveyed to consumers the intended purpose of thegoods but exhibited no additional feature to render
the sign distinctive.
The Court of Justice admits that this word
combination unquestionably alludes to the function
which the goods are supposed to fulfil, but adds thatit nevertheless does not satisfy the disqualifying
criteria set forth in article 7.1.c CTMR. Whilst eachof the two words in the combination may form part

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of expressions used in everyday speech todesignate the function of babies' nappies, theirsyntactically unusual juxtaposition is not a familiar
expression in the English language, either fordesignating babies' nappies or for describing theiressential characteristics. Word combinations like
BABY-DRY cannot therefore be regarded as
exhibiting, as a whole, descriptive character. They
are “lexical inventions bestowing distinctive poweron the mark” so formed and may not be refused
registration under Article 7.1.c.
The Court of First Instance that, in the period
before BABY-DRY, had followed a rather restrictive
approach for accepting word combinations now
seems to have somewhat softened its position. New
Born Baby for instance was accepted for dolls andtheir accessories on the basis of art. 7.1.b and c. On
the same basis, the German expression “DasPrinzip der Bequemlichkeit“ („The principle ofcomfort”) was also acceptable for furniture andvehicles.The targeted public of professionals
working in the food industry or the hotel businesswill perceive the word combination EUROCOOL as
a distinctive sign for services relating to therefrigerated transport of products undertaken in
Europe and to their preservation by cold storage.
But in a series of other recent cases the courtof First Instance made subtle distinctions.
Streamserve was an acceptable word combination
for manuals and publications, but not for dataprocessing equipment that is precisely required forthe technical function of transferring digital datafrom a server, so as to enable them to be processed
as a steady and continuous stream, For computer
hardware it was therefore too descriptive in thesense of art. 7.1.c CTMR. TELEAID is a common
descriptive indication for services of remoteassistance and for car alarm systems, but could be
accepted under both art. 7.1.b an c CTMR for
apparatus and services in the general sector ofcommunications. The same solution applies for theword combinations CARCARD and TRUCKCARD
that cannot be valid as a trademark for goods orservices involving cards related to cars or trucks ,but may be protected for data processing andtelecommunications in general. SAT.2 is descriptive
and not distinctive enough for services relating tosatellite transmissions, but can be accepted forservices relating to a database, to the production
and the exploitation of music, film, video, computer
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Ⅲ Special problems concerning theprotection of shapes, colours,
sounds, smells and scentsA.

The Japanese trademark system

In order to assess the flexibility of a trademark
system it can be useful to examine also if it permits
the less traditional features of a product to beplaced under trademark protection. This concerns
the protection for shapes, single colours, sounds orscents.
Art. 2 (1) of the Japanese Trademark Law
gives a definition of a “Trademark” that also
includes “three-dimensional shapes”.
Colours per se are not registrable under thepresent Act, as this same provision stipulates that
“Trademark in this Law means characters, figures,
signs, three-dimensional shapes or any combination
thereof, or any combination thereof with colors”.
However, a long, extensive use of a trademark in acertain colour may cause the trademark to acquiredistinctiveness (secondary meaning).
Not registrable yet are other non-traditionalmarks such as sounds, musical tunes or jingles.
And the same is true for smells and scents.
B.
1

The European trademark system

The shape of a productIn the European system, signs consisting of
the shape of a product can be protected, albeit thatthat art. 3 1.e TMD and art. 7.1.e CTMR exclude
from protection:“signs which consist exclusively of:- the shape which results from the nature of
the goods themselves, or- the shape of goods which is necessary toobtain a technical result, or- the shape which gives substantial value tothe goods”.
According to the seventh recital in thepreamble to the Directive, those grounds for refusal
have been listed in an exhaustive manner, whichshows that as a rule the distinctive shape of a
product can be protected.
Art. 3.1.e TMD and art. 7.1.e CTMR thus
concern certain signs which are not such as toconstitute trademarks and are a preliminary
obstacle liable to prevent a sign consistingexclusively of the shape of a product from being
registrable or valid. If any one of the criteria listed
in these articles is satisfied, a sign consistingexclusively of the shape of the product or of agraphic representation of that shape cannot beregistered as a trademark.
In the very recent Philips/Remington case ofJune, 18, 2002, the Court of Justice said that :“The rationale of the grounds for refusal ofregistration laid down in Article 3(1)(e) of the

Directive is to prevent trade mark protection from
granting its proprietor a monopoly on technicalsolutions or functional characteristics of a productwhich a user is likely to seek in the products ofcompetitors. Article 3(1)(e) is thus intended toprevent the protection conferred by the trade markright from being extended, beyond signs which
serve to distinguish a product or service from thoseoffered by competitors, so as to form an obstacle
preventing competitors from freely offering for saleproducts incorporating such technical solutions orfunctional characteristics in competition with the
proprietor of the trade mark”.
As regards, in particular, signs consistingexclusively of the shape of the product necessary toobtain a technical result, listed in Article 3.1.e,second indent TMD, the Court said that: “(this)provision is intended to preclude the registration ofshapes whose essential characteristics perform atechnical function, with the result that theexclusivity inherent in the trademark right would
limit the possibility of competitors supplying a
product incorporating such a function or at least
limit their freedom of choice in regard to thetechnical solution they wish to adopt in order toincorporate such a function in their product”.
In this case the question was raised whether
the establishment that there are other shapes
which could achieve the same technical result canovercome the ground for refusal or invalidity
contained in Article 3.1.e, second indent. Here the
Court was of the opinion that “there is nothing in
the wording of that provision to allow such a
conclusion”. It said that “in refusing registration ofsuch signs, Article 3(1)(e), second indent, of the
Directive reflects the legitimate aim of not allowing
individuals to use registration of a mark in order toacquire or perpetuate exclusive rights relating totechnical solutions. Where the essential functional
characteristics of the shape of a product are
attributable solely to the technical result, Article
3(1)(e), second indent, precludes registration of asign consisting of that shape, even if that technicalresult can be achieved by other shapes”.
Where the particular shape of a product does
not fall under the grounds of exclusion listed in thearticles 3 1.e TMD and art. 7.1.e CTMR, there is no
reason to prevent a sign consisting exclusively of
the shape of a product from being registrable orvalid if it satisfies the normal criteria for trademark
protection. Article 2 of the Directive makes no
distinction between different categories oftrademarks. According to the Court of Justice “thecriteria for assessing the distinctive character ofthree-dimensional trade marks, such as that at
issue in the main proceedings, are thus no different
from those to be applied to other categories of trademark”. In particular, the Directive in no way
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capricious addition, such as an embellishment
which has no functional purpose. Under Article 2 of
the Directive, the shape in question must simply becapable of distinguishing the product of the
proprietor of the trademark from those of other
undertakings and thus fulfil its essential purpose ofguaranteeing the origin of the product.
2 Colours
There is no explicit ground for refusal of colour
marks to be found in the European texts. So it will
be accepted as quite normal that colours, as anelement of complex trademarks, or in combinationsof different colours can show the necessary
distinctive features to be valid.
Some uncertainty remains as to the question
to know if a single colour of a product will stand thetest.
The Boards of Appeal in the OHIM in Alicante
are taking up a quite restrictive position towards
registering single colours or shades of colours. The
reason is that they tend to consider basic colours as
an element that is not distinctive and that has to be
kept free for the use of all.
The Court of First Instance found that the useof basic colours, such as blue or green, in the layers
or in the form of speckles on a washing tablet iscommonplace and is even typical of detergents. The
use of other basic colours, such as red or yellow, is
one of the most obvious variations on the typicaldesign of these products. According to this Court
the same would be true of the various shades of
those colours. For that reason, the applicant's
argument that the mark applied for was distinctive
because one of the layers of the tablet was “palegreen” was also dismissed.
It will be interesting to see what the positionof the Court of Justice will be, when it will answer
preliminary questions addressed to it by the Dutch
Supreme Court in the so called LIBERTEL case,which has to do with the colour “orange” fortelecommunications services.
3 Sounds, smells and scents
In principle, there seems to be no fundamental
obstacle for registering sounds or scents as
trademarks in Europe. The practical problem is that,
according to art. 2 TMD and art. 4 CTMR, they
have to be capable of being represented graphically.
The OHIM in Alicante has issued examination
guidelines which, according to art. 8.2, par.2, makeit is possible that sound trademarks are applied for.
If they can be represented graphically, such as bymusical notation, and can distinguish the goods orservices of one undertaking from another, they are
accepted.
A scent mark will run up against similar
practical difficulties. Will it be enough tocircumscribe it by words or do we need a chemical
formula? A Board of Appeal in the OHIM alreadyaccepted for registration “the smell of fresh cut
grass” as an olfactory mark for tennis balls.

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Ⅳ Infringement by using a mark fordissimilar goods or services
A.

The Japanese trademark system

In approaching the question of the liberalcharacter of a particular trademark system it can be
useful not just to see how broad the criteria forprotection are, but also to examine how far thescope of protection of a trademark reaches. A goodtest for the flexibility of a trademark system is thento see if it accepts or not that there can be an
infringement by using the mark for dissimilar goods
or services.
Nothing in the wording of art. 37 of theJapanese Trademark Law, containing the list of actsthat shall be deemed to be an infringement of a
trademark right, seems to indicate that the scope ofprotection of the Japanese trademark right couldalso, and out of itself, extend over certain dissimilar
goods or services. In Chapter VII of the same law,
there is however set down a possibility for theowner of a « well-known » trademark to takeadministrative action in order to extend his right tocertain dissimilar goods or services. This
necessitates an additional application by thetrademark owner for the registration of a so-called« defensive trademark». The purpose of tis sytem
is to protect highly well known principal
trademarks against free ride on their reputation or
dilution of their distinguishing power.
Furthermore, but under the same condition
that a trademark is “well-known”, it may well bethat the subsequent registration or use of an
identical or similar trademark with respect tonon-similar goods or services would be seen as“causing confusion” with another person’s business.
If this appears to be the case it is possible that theregistration of the confusing trademark is refusedon the basis of art. 4 (1) (xv) of the Trademark Law,or that the use of the confusing trademark falls
under the rules of the Japanese Unfair Competition
Prevention Act.
B.

The European trademark system

For a Community trademark art. 9.1.c CTMR
says that it shall confer on the proprietor an
exclusive right to prevent all third parties nothaving his consent from using in the course of trade“any sign which is identical with or similar to theCommunity trade mark in relation to goods orservices which are not similar to those for which
the Community trade mark is registered, where thelatter has a reputation in the Community and whereuse of that sign without due cause takes unfair
advantage of, or is detrimental to, the distinctive
character or the repute of the Community trademark”.
For Article 5.2 TMD, unlike Article 5.1 TMD,

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to protect trademarks in relation to non-similar
products or services, there has to be a certain
degree of knowledge of the earlier trademark
among the public. “It is only where there is asufficient degree of knowledge of that mark that the
public, when confronted by the later trade mark,may possibly make an association between the two
trade marks, even when used for non-similar
products or services, and that the earlier trade
mark may consequently be damaged”, said theEuropean Court of Justice on September, 14, 1999
in the General Motors/Yplon case.
The question then presents itself how “wellknown” such a trademark has to be in order toenjoy protection extending to non-similar products
or services. The extended trademark protection is
not limited to famous brands alone. According to
the Court of Justice it may be enough that aregistered trademark is “known by a significant
part of the public concerned by the products orservices which it covers”. But “it cannot be
inferred from either the letter or the spirit of
Article 5(2) of the Directive that the trade markmust be known by a given percentage of the public
so defined”. “Territorially, the condition is fulfilled
when, in the terms of Article 5(2) of the Directive,
the trade mark has a reputation in the Member
State. In the absence of any definition of theCommunity provision in this respect, a trade markcannot be required to have a reputation throughout
the territory of the Member State. It is sufficientfor it to exist in a substantial part of it”.
If the required condition as to the existence ofa reputation is fulfilled, as regards both the publicconcerned and the territory in question, one mustalso examine the other condition laid down in
Article 5.2 TMD which is that the earlier trade
mark must be detrimentally affected without due
cause. Here the European Court observed “that thestronger the earlier mark's distinctive character andreputation the easier it will be to accept thatdetriment has been caused to it”.
A good example of a national system that
extended trademark protection to non-similar
products or services is the Benelux, where the
Uniform Trademark Law contains an article
13.A.1.c saying that “the proprietor of a mark may,by virtue of his exclusive right, prohibit any use in
the course of trade, without due cause, made of amark that has a reputation in the Benelux territory,
or of a similar sign, for goods that are not similar to
those for which the mark is registered, where useof such sign takes unfair advantage of or isdetrimental to the distinctive character or the
repute of the mark”.
In its earlier, quite comparable wording, thistext has been interpreted by the Benelux Court ofJustice in a case where the use of the word
KLAREIN for detergents was deemed to be similar
and detrimental to the earlier well known

trademark for a Dutch gin, which was called
CLAERYN.

Ⅴ Conclusion
Is Europe just stretching the trademark
protection system, or is it putting too much stresson it? It is difficult to answer this question. One
thing seems clear: if we compare the European
solutions with Japanese practice, the European
system seems to be the more liberal one. We cansee that in the growing tendency in Europe to
accept, at least in principle, non-traditional marks
and in the readiness to extend the protection scopeof marks into the field of dissimilar goods andservices.
This is not to say that we should already now
jump to the conclusion that the European
trademark system is definitely the more flexible
one. For one thing, case law may change: it would
be sufficient, for instance, for the European Courtof Justice to decide that single colour marks inprinciple are excluded, for the European trademark
system to show quite a different face. For another,
the legislator can always intervene to adapt its
system to new needs. For example the Japaneselegislator just modernised its trademark law on one
aspect that is not so clearly settled in Europe, thatis the internet use of trademarks. By its 2002
amendment Japan adapted its Trademark Act toprovide that the term “use” of a mark in art. 2 (3)should include the showing online of trademarks inconnection with business transactions andpromotional activities.

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