National trademark authorities not bound by own decisions, confirms ECJ

European Union
In Bild Digital GmbH & Co KG v President of the German Patent and Trademark Office (Joint Cases C-39/08 and C-43/08, February 12 2009), a reference for a preliminary ruling by the German Supreme Patent Court, the European Court of Justice (ECJ) has clarified that the trademark offices of the member states are not formally bound by their own decisions in assessing the registrability of trademarks.

The German Supreme Patent Court was faced with two parallel appeals against decisions of the German Patent and Trademark Office in which the latter had refused to register:

Bild and ZVS argued that the office had already registered highly similar marks for similar goods and services. In particular, Bild submitted that the office had previously accepted its applications to register similar marks for similar services.

The referring court was of the opinion that under the principle of equal treatment, the decisions of the office should be binding.

The questions referred to the ECJ may be summarized as follows:
  • Does Article 3 of the First Trademark Directive (89/104/EC), which seeks to ensure equality of opportunity, require that identical or similar applications be treated in the same way?
  • If the answer is 'yes', is the national court required to investigate specific indications of unequal treatment and to take account in its analysis of earlier decisions of the competent authority in similar cases?
  • If the first two questions are answered in the negative, should the national authority be obliged under domestic legislation to initiate, of its own motion, an action for the cancellation of trademarks which have been wrongly registered?
The ECJ clearly stated that the national authorities are not bound by their own decisions. The reasoning of the ECJ was as follows:
  • The ECJ has previously held that Community trademark applications must be examined only on the basis of the Community Trademark Regulation (40/94), and not on the basis of previous decisions of the EU authorities.
  • With regard to national marks, the national authorities cannot limit their assessment to an abstract analysis. They may take into consideration decisions issued by the national authorities of other member states concerning identical marks for identical goods or services. However, they are not formally bound by them.
  • These principles also apply to the national authorities' own case law. Parties cannot rely on the wrongful application of legal provisions to obtain an identical decision, as the requirement of lawfulness must be conciliated with the principle of equal treatment.
Against its usual practice, the ECJ did not reply to the last question on the grounds that it was irrelevant to the underlying proceedings (Bild and ZVS did not seek the cancellation of earlier registrations). Moreover, the fact that the court issued its decision by a simple order - very rarely used in references for a preliminary ruling - is striking. It might be an indication that the ECJ did not agree with the point of view expressed by the German Federal Patent Court.  

Florian Schwab, Boehmert & Boehmert, Munich

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