Martin-Tardivat.net

ARRÊT DU TRIBUNAL (deuxième chambre)
21 octobre 2008
Dans l’affaire T-73/06
Jean Cassegrain SAS



Ce signe peut-il constituer une marque valable? Pour l'OHMI, non. Idem pour le TPICE qui rejette le recours au motif que:

"C’est donc à bon droit que la chambre de recours n’a pas tenu compte des éléments relatifs au succès commercial du sac représenté par la marque demandée dans son appréciation du caractère distinctif intrinsèque de cette dernière. Le volume des ventes du sac en cause pouvait être tributaire de facteurs multiples étrangers à la forme du produit tels que sa fonctionnalité, sa qualité ou sa conception astucieuse."



Fondée en 1948 par Jean Cassegrain, la maison Longchamp était à l'origine une fabrique spécialisée dans le gainage en cuir de pipes. C'est en 1955 que la maison familiale commence à diversifier ses activités avec la création de pièces de petite maroquinerie, et étend ensuite ce domaine à la confection d'articles de bagagerie en cuir mais aussi en nylon. Mais c'est 1993 que Longchamp imaginera sans le savoir un sac qui sera à l'origine de son succès, et lui assurera jusqu'à présent une certaine pérennité. Il s'appellera le Pliage en raison de son aspect fonctionnel qui lui permet de se plier rapidement pour le transporter plus facilement. Le Pliage n'était donc pas à son lancement destiné à être porté comme un sac de ville.

Le succès du sac Pliage signera le début du développement de la marque. Cette renommée permettra à Longchamp de s'implanter à l'international, et de s'offrir de belles vitrines sur les plus belles artères du luxe dans le monde entier.

Conscient de détenir une poule aux oeufs d'or, Longchamp va alors miser tous ses efforts sur le développement de la gamme Pliage. Le best-seller se déclinera dans toutes les tailles et divers coloris. Et même si la maison élargit ses gammes et propose de nouveaux produits, tels que les gants, les bijoux et les cravates, il est alors difficile d'imposer d'autres best-sellers en matière de maroquinerie.

Council Regulation (EC) No. 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs...

February 2008:

Request No. 303 99 905.5 for the protection as an indication of geographical origin (Council Regulation (EC) No. 510/2006) for "Aischgründer Karpfen" (carp fish from Aischgründ) covering class 1.7 "Fisch, frisch und Erzeugnisse daraus" (fresh fish and products made thereof) was granted by the DPMA (German Patent and Trade Mark Office).



An application was also filed and published for a registration of an indication of geographical origin (Council Regulation (EC) No. 510/2006) for "Erfurter Schittchen" (type of stollen/bakery product from Erfurt). No. 306 99 004.0.




April 2008:

An application has now been made for the designation of the term MELTON MOWBRAY PORK PIE as a protected geographical indication in respect of a popular pork pie made in certain regions of England. What is unusual about this application is the specification of the geopgraphical area within which the pies must be made if they are to be so designated



An application under Article 6(2) of Council Regulation 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (2008/C 87/07) has been posted on April 8, 2008 on the European Commission's Official Journal website. The application relates to AIL BLANC DE LOMAGNE -- a French garlic for which protected geographical indication status is sought.



An application has been made under Council Regulation 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs to register the term STEIRISCHER KREN (Styrian horseradish) as a protected geographical indication.



Request No. 307 99 006.0 for the protection as an indication of geographical origin for "Düsseldorfer Senf Mittelscharf" (Mustard medium hot from Duesseldorf) and request No. 307 99 007.9 for the protection as an indication of geographical origin for "Düsseldorfer Senf" (Mustard from Duesseldorf). Applicant in both cases is the Schutzgemeinschaft Düsseldorfer Senf (roughly translated as the association for the proctection of mustard from Duesseldorf). Both applications cover mustard (Senfpaste) in class 2.6.

The US presidential race is heating up.

The same applies to trademarks!

John McCain currently has two Federal trademarks, one registered & one pending, for "McCain Space" and "McCain." These applications were filed in January 2007 for, among other things, "promoting the public awareness of a candidate for election."

Senator Clinton has been in the news recently about her use of "Solutions for America," which is a trademarked phrase owned by the University of Richmond.

Mr. Obama does have a pending Federal trademark for the logo associated with its campaign. The 9 different classes include such varied goods/services as golf balls, clothing, lapel pins, water bottles, fundraising, etc.

There are a number of sadly rejected trademark applications using some variation of a candidate's name. The refusals from the USPTO were "because the mark consists of or comprises matter which may falsely suggest a connection with the individual candidate's name."

Some examples of dead trademarks include "No Drama with Obama," "Hillary Clinton is Politically Incorrect" and "Bearack Obama."

Anyway it has to be born in min that trademarks "may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."

Decision of the First Board of Appeal of 30 October 2007 in Case R 1174/2006-1

( part of motor vehicle )

Tactile trade marks can be represented graphically if the representation and/or description fulfil the relevant criteria. This was not the case here, since important elements which determine the tactile impression of the surface of the object that was represented by a picture and a description , remained unknown. A sample was not accepted as a graphical representation. The Board did not accord a filing date under Articles 27 and 26 CTMR, and also stated that Articles 7 and 4 CTMR were not fulfilled either. The appeal was dismissed.

Short remarks on what is registrable as a trademark...

Theoretically, the European Union Office for Harmonisation for the Internal Market (OHIM) recognises that scent marks are eligible for trade mark registration. However, in practice a contradictory position exists; there is no bar to filing an application for a scent mark, but at the same time, there are no acceptable methods or techniques for describing such scents. The 2002 decision “Sieckmann” of the European Court of Justice (ECJ) essentially concerned the question of what is an acceptable representation of an olfactory trade mark. The ECJ held that “a trademark may consist of a sign which is not in itself capable of being perceived visually, as long as it can be presented graphically by means of images, lines or characters and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

As a result of the Sieckmann decision (December 12, 2002), it has and will continue to be very difficult, perhaps impossible, to register scents regardless of whether they are intelligible to the majority of the public and capable of depiction in the form of a written description.

As marketing techniques continue to develop and technology further enhances ways to recreate and infuse odours, there is a possibility that we will see an increase in interest towards scent marks.

To simplify, a trademark is a word, symbol or other signifier used to distinguish a good or service produced by one firm from the goods and services of other firms. Accordingly Article 15(1) of TRIPS agreement provides that any sign, or combination of signs, capable of distinguishing goods and services from those of others, is eligible for trademark protection. Article 4 of the Community Trademark defines trademark as, ‘any sign capable of being represented graphically2’, which is capable of distinguishing goods and services of one undertaking from those of other undertakings.

Thus the common function of the trademark law has been to afford rights to those who use words, names, symbols or devices to identify their goods or services. However in the recent past there have been numerous attempts to extend this trademark protection

Over the past few decades it is established that traders and brand owners look out for new and stirring ways to make their products more distinctive than those of their competitors. As a result the generally and readily perceived marks such as words, designs, logos, acronyms and slogans, which form part of standard or traditional form of marks, are no longer preferred by brand owners and the desire to register non-standard marks such as shape, colour, taste, smell and sound is noticeably increasing.

Article 4 of the Regulation defines trademark as, “any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”. The explanatory memorandum to the EC Harmonisation Directive also made it plain that a trademark could comprise any sign which performed the basic function of distinguishing the goods and services of one business from those of another.

Shortly, the smell of freshly cut grass for tennis balls was registered in the European Union (February 11, 1999).

Although theoretically, the European trademark permits registration of olfactory marks, in practice, the European trademark registries took the regrssive line in Sieckmann v. Deutsches Patent-und Markenamt.

The Sieckmann case involved the registration of a “balsamically fruity smell with a slight hint of cinnamon” for services ranging from advertising and education to medical, agricultural, and scientific services. The application included representation of the scent by a chemical formula, a description of the scent, and a sample of the scent. Two questions were referred to the ECJ: (1) whether a mark which cannot be reproduced visibly can nevertheless be reproduced with certain aids, and (2) whether the requirement for graphic representation in Article 2 is met when an odour is reproduced by (a) a chemical formula, (b) a description, (c) a sample or (d) a combination of these elements.

The Court held that the list of signs in Article 2 of the Trademark Directive is not exhaustive and that the provision does not expressly exclude signs which are not in themselves capable of being perceived visually, such as odours. Instead, Article 2 must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically. Turning to the graphic representation requirement the Court held that graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified. In sum, the Representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective.

Accordingly the court observed that in the present case the applicant had attempted to describe the sign, a scent, by using a chemical formula. The Court ruled that this did not constitute sufficient representation. Further, the formula did not represent the odour of a substance, but the substance as such. It was further held that none of the means the applicant had used satisfied these criteria. The policy behind this decision was to enable people checking the trade marks register to be clear about what is registered, given the nature of the registry. The Sieckmann decision makes it very difficult, if not impossible, to register a smell as a mark, at least until such time as it can be demonstrated that technology exists which can identify smells with sufficient clarity, precision and objectivity.

Further illustrating the barriers to scent mark registration in the E.U., as well as the E.U.'s arguable opposition to scent mark registrations, the Fourth Board of Appeals recently rejected a scent mark application with a graphic representation consisting of a rectangle with various bands of color resulting from digitized electronic signals emitted from the sense itself. The Board reasoned as follows: “The coloured matrix filed does not comply with the graphic representation requirements...as it does not allow the relevant public to perceive the identity of the sign or to determine the extent of its protection. It is not sufficient for the sign to be technically capable of reproduction. The sign must also be perceived as such by users of the register and it must enable them to obtain the necessary indications in order to be able to interpret this”./ The Court's reasoning reveals the European Union's hesitancy to grant property rights in a scent, and arguably illustrates its opposition to the registration of scent marks altogether.

Two important arguments against affording trademark protection to fragrances.

In order for a fragrance to function as a trademark before a sale is made, two conditions must be satisfied. First, consumers must have access to a product's scent before they purchase the product; only if this is true can the scent indicate origin and thereby influence the decision to purchase. If the consumer must wait until the product is put to use at home in order to smell its scent, the opportunity for scent to function as a trademark at the point of sale is lost. Second, the consumer must not only be able to recognize a product's scent as familiar, but he or she must also be able to link the scent with the identity of the product (or manufacturer) on a reliable basis.

Even if a product's fragrance functions as an origin-identifier, the manufacturer seeking to protect that mark from infringement must be able to demonstrate that similar scents will create a likelihood of confusion. It is a fact that fragrance is composed from a spectrum of primary elements that can be blended into a vast number of combinations: similar fragrance blends can be difficult to distinguish without expert assistance.

On the other hand it can be asserted that product scents merit trademark protection. The role of fragrance in many of today's products highlights the function of a product's smell not only to sell but also to distinguish. A strong relationship exists between scent and human memory, which makes scents effective trademarks (see the smell of fresh cut grass).

Whenever people think they are recalling odors, they are actually thinking of some object associated with an odor. It has also been revealed that once humans have made one association with a scent, it is difficult for them to replace the association with another one.

Sieckmann test cannot be ignored and the policy behind the decision has been to enable people to check the trademark register and to be clear about what is registered. However from the perspective of European harmonisation the approach adopted in Sieckmann case looks problematic because it interferes with the freedom of member states to determine questions of trademark procedure. Such interference is contentious because the objective of the directive intended to leave member states free to fix the provisions of the procedure concerning the registration, the revocation and invalidity of trademarks. It is still being debated that Sieckmann criteria rests on unarticulated and problematic assumptions. Concerns have also been raised on the role that bureaucratic requirements of registering intellectual property rights play in shaping intellectual property law and policy.

A trademark's objective is to trigger the source of a product in a consumer's mind.

Companies that add fragrances to products report the scent to be an important indicator of the product's identity. Researchers in France have found that customers stayed longer and spent more in a restaurant infused with the scent of lavender, concluding that scents could influence even consumption environments. Since scents are being used as a marketing tool it is argued that the protection should be extended as well.