Law firm entitled to seek declaration of invalidity on absolute grounds
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In Lancôme parfums et beauté & Cie SNC v Office for Harmonization in the Internal Market (OHIM) (Case C-408/08 P, February 25 2010), the Court of Justice of the European Union (ECJ) has dismissed an appeal against a decision of the General Court and upheld an application for a declaration of invalidity of the Community trademark (CTM) COLOR EDITION on the grounds that it was descriptive and devoid of any distinctive character.
In February 2004 Lancôme parfums et beauté & Cie SNC registered COLOR EDITION as a CTM for cosmetic and make-up preparations in Class 3 of the Nice Classification. In May 2004 law firm Norton Rose Vieregge applied to OHIM for a declaration of invalidity of that registration on the basis of Articles 51(1)(a), 7(1)(b) and (c) of the Community Trademark Regulation (40/94). In December 2005 the Cancellation Division of OHIM rejected the application. On appeal by CMS Hasche Sigle, the successor to Norton Rose Vieregge, the Second Board of Appeal of OHIM overturned the decision of the Cancellation Division and held that the word sign COLOR EDITION was descriptive under Article 7(1)(c) and devoid of any distinctive character under Article 7(1)(b). Therefore, it had to be declared invalid.
Lancôme appealed to the General Court, which confirmed the decision of the Board of Appeal with respect to Article 7(1)(c). As it was sufficient to cancel the registration on that ground alone, the court did not take Article 7(1)(b) into account (for further details please see "Law firm has standing to bring invalidity action on absolute grounds"). Lancôme appealed further to the ECJ.
Lancôme raised two pleas, alleging infringement of Articles 55(1)(a) and 7(1)(c). In its first ground of appeal, Lancôme submitted that the General Court had misinterpreted Article 55(1)(a) in considering that an interest in bringing proceedings was unnecessary in order to apply for a declaration of invalidity of a CTM on absolute grounds. Furthermore, Lancôme argued that it was incompatible with the role of the legal profession for a law firm to be able to make an application for a declaration of invalidity on its own behalf and in its own name.
In this respect, Lancôme argued that the actio popularis was wholly alien to EU law. In Lancôme’s opinion, Article 55(1)(a) must be interpreted as requiring the applicant for a declaration of invalidity to be economically concerned, either actually or potentially, and, as a consequence, to have an actual or potential economic interest in having the contested mark declared invalid. Lancôme further argued that, because the role of the legal profession was to collaborate in the administration of justice, a law firm had no right to make the application for a declaration of invalidity on its own account. Therefore, CMS Hasche Sigle had no legitimate interest in applying for a declaration of invalidity, and, consequently, the application should be dismissed as inadmissible.
In respect of the second plea, Lancôme claimed that the General Court did not base its decision on a proper assessment of whether there was a perceptible difference between the word combination 'color edition' and the everyday language of the relevant consumers to designate the goods and services or their essential characteristics.
The first question was whether Article 55(1)(a) provided that the admissibility of an application for a declaration of invalidity of a CTM required the existence of a legitimate interest. The ECJ held that Article 55(1)(a) did not refer to a requirement of a legitimate interest in relation to an application for a declaration of invalidity on absolute grounds. The only requirement was that the action was introduced by a natural or legal person, or any groups or bodies which had the capacity to sue and be sued. Only invalidity actions based on relative grounds had to be filed by trademark owners, owners of earlier rights or licensees.
With respect to Lancôme’s claim that the application by a law firm was incompatible with the role of the legal profession, the ECJ found that this plea amounted to a separate ground of appeal from that alleging infringement of Article 55(1)(a). Since that plea was not raised before the General Court, the ECJ held that this ground of appeal was inadmissible and had to be disregarded.
Finally, with respect to the alleged infringement of Article 7(1)(c), the ECJ, referring to settled case law, found that, as a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive unless it creates an impression which is sufficiently far removed from that produced by the combination of those elements. The ECJ upheld the General Court’s findings that the word sign COLOR EDITION was composed exclusively of indications which may serve to designate certain characteristics of the goods in question. Therefore, the combination did not create an impression sufficiently far removed from that produced by the simple juxtaposition of the verbal elements of which it was composed to alter its meaning or scope.
This case confirms the difference between the protection of the general public interest in an application for a declaration of invalidity on absolute grounds on the one hand, and private interest in cancellation proceedings on relative grounds on the other hand. Any natural or legal person entitled to sue or be sued is entitled to file an application for a declaration of invalidity on absolute grounds and seek the removal of a CTM from the register. The demonstration of a legitimate interest is not required, by contrast with a cancellation action on relative grounds. The question of whether a request for a declaration of invalidity made by a law firm on its own account was compatible with the role of the legal profession in the European Union remains open as the ECJ rejected that plea on the basis of grounds of formalities.
Florian Traub and Chris McLeod, Hammonds LLP, London
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