Does Bovermij Bovver You? It Certain Bovvers Me

Yet unopen to other Opinion from the European Court of Justice, this fourth dimension from Advocate General Sharpston, making what the IPKat thinks must live on his debut inward an IP matter: it's Case C-108/05 Bovemij Verzekeringen NV v Benelux-Merkenbureau.

Bovemij applied to register the give-and-take EUROPOLIS equally a Benelux grade for diverse services, including insurance, fiscal affairs as well as move arrangements. The Benelux Trade Mark Office (BBM) told Bovemij it was provisionally refusing registration on the Blue Planet of lack of distinctive character. Bovemij retorted that the sign had been lawfully used equally a grade inward merchandise since 1988 yesteryear its subsidiary, Europolis BV. "So what?", said the BBM as well as refused the application.

Bovemij appealed to the Hague Regional Court of Appeal on the ground that fifty-fifty if EUROPOLIS wasn't distinctive when the application was origin made (what it was), it had popular off as well as then yesteryear the fourth dimension it had to live on considered. The courtroom was certain that the grade wasn't inherently distinctive, but had its doubts nearly the acquisition of distinctiveness bit, as well as then it stopped the exhibit as well as sent the next questions to the ECJ for a preliminary ruling:

"(1) Must Article 3(3) of the Trade Marks Directive live on interpreted equally pregnant that inward lodge to commence distinctive graphic symbol (in the introduce instance through a Benelux merchandise mark) equally a termination of use, equally referred to inward that provision, it is necessary that the sign live on regarded equally a merchandise mark, earlier the appointment of application, yesteryear the relevant world throughout the Benelux territory and, therefore, inward Belgium, the Netherlands as well as Luxembourg?

If the answer to interrogation 1 is inward the negative:

(2) Is the status for registration set downwardly inward Article 3(3) of the Trade Marks Directive satisfied, for the purposes of that provision, if the sign, equally a termination of the usage made of it, is regarded equally a merchandise grade yesteryear the relevant department of the world inward a substantial percentage of the Benelux territory as well as tin this substantial percentage be, for example, the Netherlands alone?

(3)(a) When assessing distinctive graphic symbol acquired through use, inside the pregnant of Article 3(3) of the Trade Marks Directive, of a sign – consisting of ane or to a greater extent than words of an official linguistic communication inward the territory of a Member State (or, equally inward the instance inward point, the Benelux territory) – is it necessary to receive got into concern human relationship the linguistic communication regions inside that territory?

(b) For registration equally a mark, should the other requirements for registration live on satisfied, is it sufficient if/required that the sign live on regarded equally a merchandise grade yesteryear the relevant department of the world inward a substantial percentage of the linguistic communication part of the Member State (or, equally inward the instance inward point, of the Benelux territory) inward which that linguistic communication is an official language?".

Advocate General Sharpston advised the ECJ to dominion equally follows:

"Questions 1 as well as 2

It is non necessary, for the purposes of assessing acquisition of distinctive graphic symbol of a give-and-take grade through usage nether Article 3(3) of the Trade Marks Directive, to receive got regard to the entirety of the Benelux territory (Belgium, the Netherlands as well as Luxembourg) if for linguistic reasons the relevant flat of persons, equally previously defined for the purposes of Article 3(1), is to live on found only inward parts of that territory.

Question 3

Linguistic communities inward a Member State or inward the Benelux territory should live on taken into concern human relationship inward assessing acquired distinctive graphic symbol through usage of a sign consisting of give-and-take or words.

Where a give-and-take grade would autumn to live on refused registration equally devoid of whatsoever distinctive graphic symbol (Article 3(1)(b)) and/or because it consists alone of a give-and-take or words that are descriptive inward a detail linguistic communication (Article 3(1)(c)), that grade may only live on registered nether Article 3(3) where it tin live on shown that the grade has acquired distinctive graphic symbol through usage throughout the relevant linguistic community (namely, of the Member State, or of the Benelux territory taken equally a whole)".

In other words, piece for Community merchandise grade (CTM) purposes a grade must live on shown to receive got acquired distinctiveness throughout the territory of the CTM earlier it tin live on registered, no such dominion applies for national as well as regional merchandise marks. As the Advocate General said, having cited Case T-91/99 FordMotor Company v OHIM (OPTIONS) [2000] ECR II-1925:

"44. The BTMO’s seat – namely that the sign must live on regarded equally a grade throughout the Benelux territory earlier it tin live on registered - is based on Ford. That instance was concerned amongst whether a grade had acquired sufficient distinctive graphic symbol through usage to live on registered equally a Community merchandise grade nether Article 7(3) of the Community Trade Mark Regulation. It seems to me that the rationale for the territorial assessment applied inward Ford is non appropriate when determining whether distinctive graphic symbol through usage has been acquired yesteryear a national grade nether the Trade Marks Directive.

45. The Community merchandise grade as well as national merchandise marks are conceptually different. If a grade is to live on given Community-wide recognition inward the damage provided for yesteryear the Community Trade Mark Regulation, it is reasonable to involve the mark’s possessor to demonstrate distinctive graphic symbol acquired through usage over a greater geographical area. The Community merchandise grade has a unitary graphic symbol throughout the Community. National registration of a merchandise grade simply gives it that graphic symbol throughout the Member State inward question. It is important that Article 7(2) of the Community Trade Mark Regulation states that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain inward only percentage of the Community. There is, however, no equivalent to that provision inward Article iii of the Trade Marks Directive. Because the Community merchandise grade is a unitary grade which, if registered, volition live on effective throughout the territory of the Community, it is correct to impose the status contained inward Article 7(2). Such a grade ought non to live on registered if at that topographic point exist, inward whatsoever percentage of the Community, grounds for non-registration. The same considerations produce non apply to the registration of national merchandise marks equally harmonised yesteryear the Trade Marks Directive.

46. Furthermore, the ii measures are concerned amongst dissimilar situations. Although both aim to farther the institution as well as performance of the internal market, the Trade Marks Directive does as well as then inward a to a greater extent than express way, yesteryear putting inward house a partial harmonisation of national merchandise grade law. In contrast, the Community Trade Mark Regulation creates a novel type of intellectual holding right, namely a Community merchandise mark".

thinks this is a rattling brave arguing as well as he wonders whether the amount courtroom volition permit it stand. In economical damage as well as inward damage of regulation it seems foreign to destination upwards amongst the decision that, inward a large community that consists of cats, dogs, sheep, goats as well as badgers, a grade that no domestic dog regards equally distinctive can't be registered equally a merchandise grade while, inward a smaller jurisdiction consisting of simply cats as well as dogs, the fact that cats regard the grade equally distinctive but dogs don't produce as well as then volition non touching the mark's mightiness to live on registered.

Other Europolises here , here , here , here and here