HAPPYDOG leads to conflict with ECJ ruling

In Interquell GmbH v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has refused registration of HAPPYDOG as a Community trademark on the grounds that there was a likelihood of confusion with an earlier HAPPIDOG mark. Although not required to do so, the court considered the application of Article 12(b) of the Community Trademark Regulation and came to a different conclusion to that of the European Court of Justice (ECJ) in its earlier analysis of the same wording in Article 6(1)(b) of the Community Trademark Directive.

Interquell GmbH, a German company, applied to register HAPPYDOG as a Community trademark for dog food. The OHIM refused registration on the grounds that it was almost identical to an earlier HAPPIDOG mark for the same type of goods. Despite finding that HAPPIDOG had a low level of distinctiveness, the OHIM held that the phonetic and conceptual similarities between that mark and HAPPYDOG were sufficient to prevent registration.

Interquell appealed to the CFI, arguing that the OHIM had ignored Article 12(b) of the regulation, which limits the effect of a trademark. This provision prevents the mark owner from prohibiting use of a sign that describes, among other things, the characteristics of the relevant goods or services, provided this use is in line with honest market practices.

The CFI dismissed the appeal. It rejected Interquell's argument stating that it could not consider the Article 12(b) claim because Interquell had not raised it before the OHIM and, even if it had, Article 12(b) was not applicable in the circumstances. However, despite reasoning that it did not have to consider Article 12(b) further, the CFI decided to continue with an examination of the scope of that provision. It stated that assuming Article 12(b) was applicable, it would not:

"entitle third parties to use ... terms [designating the quality or other characteristics of the goods concerned] as a trademark but merely ensure that they may use them in a descriptive manner, that is to say, as indications concerning the quality or other characteristics of the goods."

This contradicts the ECJ's earlier decision in Gerolsteiner Brunnen GmbH & Co v Putsch GmbH (see ECJ clarifies Article 6(1) defence against GI infringement claim). In that case, the ECJ considered Article 6(1)(b) of the Community Trademark Directive, which contains wording identical to that in Article 12(b) of the regulation, and held that the most important part of the Article 6(1)(b) test (and thereby the Article 12(b) test) was whether the use was in accordance with honest market practices. In Gerolsteiner, the ECJ held that use of an indication of origin as a trademark can fall within Article 6(1)(b) of the directive, provided that it is in accordance with honest market practices.

The obvious incongruity between these two rulings may require the ECJ to provide further clarification as to the limitations of trademark protection with respect to Article 12(b) of the regulation.

Julia Meuser, Freshfields Bruckhaus Deringer, Frankfurt