Defensive marks: a footnote to Rinitsch

Sometimes it seems that the German Bundesgerichtshof is carrying on a private dialogue with the Court of Justice of the European Union, such are the secret, subtle intimacies of the questions which it refers to that court for a preliminary ruling on matters of European trade mark law. It can scarcely be denied that its questions are of a quite different order of intellectual complexity to those referred by the courts of many other EU Member States. Can it be that the German courts are driving to achieve an ultimate, unchallengeable truth, while other courts are preoccupied with more mundane matters, such as trying to find the easiest and least intellectually demanding means of resolving the bone of contention between disputing parties and shoving out of the courtroom with a cheery "Next case, please!"?  This may be an overstatement, but it seems to this Kat that, at any given time, some jurisdictions are far more focused on developing the doctrines of substantive law while others fix their gaze on the procedural side of things -- and on this side of the English Channel the focus, within IP as a whole, is mainly on the latter.

This preamble leads to a note on Case C 553/11 Bernhard Rintisch v Klaus Eder, a ruling last Thursday from the Court of Justice of the European Union (Third Chamber). It's a strange case in which a set of questions of almost Arnoldine detail was dealt with by the CJEU in terms of relative simplicity.  No doubt the ruling would have been a good deal longer if the court had sought the Opinion of the Advocate General [Merpel reflects at this point that, in judicial circles, when judges are active they are said to be sitting on the bench, whereas precisely the opposite is true for footballers, for whom being on the bench means being a spectator on the sidelines, as the Advocate General was here].

Since this case has already been covered by Eleonora (here), this Kat has only one further comment: it relates to defensive trade marks.  This concept used to exist under the United Kingdom's Trade Marks Act 1938; the Mathys Report on British Trade Mark Law and Practice, Cmnd 5601, May 1974, recommended scrapping it and it was indeed erased when the United Kingdom implemented the new, exciting norms of harmonised European national trade marks in its Trade Marks Act 1994.  This Kat didn't imagine he'd ever hear that term being discussed before the CJEU, but he was wrong: first it cropped up in Case C‑234/06 P Il Ponte Finanziaria v OHIM -- and here it is again.  Ultimately, as the Court said, the subjective intention which prevails when an applicant seeks to register a trade mark is wholly irrelevant for the purpose of applying Article 10(2)(a) of Directive 89/104: there is no basis in Directive 89/104 or in any other provisions of European law for a concept of ‘defensive’ trade marks to which that provision does not apply.

Let's hope this is the end of that particular story.