Latest ETMR; Latest ECDR; Trade mark fees - a lawyer writes

The June 2007 issue of Sweet & Maxwell's European Trade Mark Reports - published ahead of its cover date as usual - carries a fascinating selection of cases. These include

* Maynards Confectionery BV v Nestle (Irish Patents Office) - the battle between CARAMAC and CARAMBAR for the hearts and souls of the sweet-toothed Irish;

* Beckwith-Moore v Novak - the first decision from the ADR.eu Centre in the Czech Republic, concerning a bizarre attempt to unseat a domain name based on a thoroughly spurious set of earlier registered trade mark and design rights;

* Trilux Trade Mark, a ruling of the Polish Supreme Administrative Court on the interplay of trade marks and company names;

* Lavalife's application - an OHIM Board of Appeal decision concerning the punning mark WHERE SINGLES CLICK, which answers the oft-posed question "does OHIM have a sense of humour?"

As usual, if you know of any interesting European decision that you'd like to see reported in the ETMR, email the IPKat here and he'll see what he can do to bring that about.


The May 2007 issue of the same publisher's bimonthly European Copyright and Design Reports should not go unnoticed either. This issue leads with Google Inc v Copiepresse SCRL (Court of First Instance of Brussels, Belgium) on the tribulations faced by Google when caching copyright-protected newspaper contents for the benefit of the copyright owners and the convenience of web searchers. It also carries the European Court of Human Rights' split decision in Vereinigung Bildender Kunstler v Austria, on the freedom of artists (in this case Otto Muehl) to depict public figures in sexual positions.


A distinguished London-based lawyer, somewhat out of sympathy with the IPKat's rant against the siphoning-off of hard-earned trade mark applicants' money by the reluctant Office for Harmonisation in the Internal Market (see post here), has called him to say:

"Why do trade marks as an asset class deserve any different treatment to spectrum? In both cases, the state creates a monopoly right over something otherwise available to the masses (especially as the business asset with trade marks is protectable by passing off, so the registration system is a state-awarded bonus created by impinging on public freedom). Telecoms companies are used to the idea that there is a limited spectrum available and that economically efficient allocation is going to be achieved by auctioning. Gordon Brown raised billions this way. Why should trade marks expect a free ride? Recognising that auctions are unlikely to be viable where the freedom to use a mark may be affected by pre-existing rights, and where asset value is small, the alternative of a trade mark poll tax seems entirely logical. The success of the trade mark system speaks for itself; the cost does not significantly deter applicants and if anything there is a case for making the costs higher.

Or, as an alternative, the excess could be spent on improving the system. Perhaps it could be diverted into funding a no-win, no-fee system for trade mark cancellation for dodgy marks. That would effectively privatise the examination system and introduce some free market discipline into it too".

The IPKat is not impressed by this argument. Spectrum is an exploitable, money-generating and limited resource that is indeed open to all - and auctioning it off or selling it at a premium is a good way of raising the odds that, once sold, it will be (i) used rather than left fallow and (ii) used profitably. Spectrum is also an essential facility, without which it is not possible to broadcast within a range of frequencies at all. A trade mark is an entirely different commodity: when separated from its goodwill it has no value to speak of at all and the vast majority of registered trade marks are probably worth little even when attached to their goodwill. Trade mark registration saves the state the cost of protecting and educating confused and deceived consumers, as well as the cost of educating them to the point at which they can make better-informed decisions in the exercise of their choice within an efficient, competitive market.