The Gazette 1979

JANUARY/FEBRUARY 1979

GAZETTE

reflects to a large extent the principles contained in, for example, the Irish Trade Marks Act. It refers to such matters as the various categories of marks, the registration procedure and also the disposition of registered rights. In certain respects, however, the proposed law differs from the Irish scheme. It provides, for example, for the protection of service marks: the Commission takes the view that service sectors — such as transport, banking and insurance — have a justifiable interest in their commercial insignia. In addition, the definition of trade mark would be sufficiently wide to cover colour combinations, as well as the shapes and packaging of articles. Applications for registration would be addressed to an E.E.C. Trade Mark Office. The grounds suggested for re- fusing a mark divide into absolute and relative categories. Absolute grounds of refusal refer to exclusions on the basis of public interest — contemplated here are non- distinctive, and also descriptive or deceptive marks. Relative grounds of refusal to exclusions of marks by virtue of prior registered rights. In the event of opposition to a registration, referral could be made to a Conciliation Board. Should settle- ment proposals made by the Board prove unacceptable, a series of appeals would lie — in the first instance, to the appeals section of the E.E.C. Trade Mark Office; and from there, to the Court of Justice. CONCLUSION Most trade mark issues encountered by the Irish lawyers are likely to be governed by the Trade Marks Act, 1963. On questions of interpretation under that Act, it may however be necessary to refer to the fast-growing case law. It is significant that the majority of decided cases relate to the criteria for registration. Many of these cases, moreover, concern marks which in other countries are established surnames or geographical names, or which in languages other than English are descriptive of the goods in respect of which registration has been sought. Examples are 'Farah', 'Silva-Thins', 'Miele', 'Aphrodisia', Kreuzer', and 'Kiku'. A recurring issue for the courts has been whether such marks, notwithstanding their significations elsewhere, would for people in Ireland possess the standards of distinctiveness necessary to secure registration. The common law action of passing off is probably of declining importance, owing to the growing appreciation of the advantages of registration. It retains nevertheless an essential place in the regime of protection since it covers, not only marks in the statutory sense, but also any other characteristics which form part of the presentation of a product. Moreover, the possibility of an action at common law will in most instances be seen as a sufficient safeguard for the trade marks of the smaller type business. The provisions on trade marks in the Treaty of Rome have relevance only in the context of transnational trade. They stand however as a potential litigation-trap, and merit attention when, for example, an Irish concern proposes to take an assignment or licence of a trade mark from a company with trading connections in other E.E.C. mamber states. Finally, the proposals for an E.E.C. trade mark will hold interest for the increasing number of Irish concerns

PROPOSED E.E.C. TRADE MARK Rationale

Trade marks within the E.E.C. are divided, at present, into seven national varieties. 61 This diversity in national systems clearly impedes the free movement of goods between the member states. The Court of Justice has curtailed, in exceptional circumstances, the exercise of national rights to prevent the sale of imported branded goods. 62 The Court is, how- ever — in its efforts to promote a unified and competitive Community market — relatively powerless to undermine the territorial protection conferred by national trade mark rights. 63 Realization of this fact, perhaps more than any other reason, has recently prompted the Commission to adopt a memorandum which urges the creation of an E.E.C. trade mark. 64 The memorandum in question takes the form of an advanced-level discussion document. Its central proposal - the creation of a unitary and autonomous Community trade mark — is recommended in preference to the approximation of national trade mark laws. 63 The latter expedient could obviate some discrepancies — e.g., in the criteria for registration — between the different national systems. It would, however, leave untouched the principle of territorial protection. The course recommended, therefore, anticipates resort to the reserve powers vested in the Community institutions by virtue of Article 235 of the Treaty of Rome. That pro- vision states that "[If] action by the Community should prove necessary to attain, in the course of the operation of the common market, one of the objectives of the Com- munity, and this Treaty has not provided the necessary powers, the Council shall acting unanimously on a pro- posal from the Commission and after consulting the Assembly, take the appropriate measures." Basic Concepts The proposals envisage a balanced and attractive code of protection, which will represent a genuine alternative to the existing national and international systems. It is conceived that the E.E.C. mark should have both a unitary and autonomous character. The unitary aspect implies that the mark could be applied for and registered only in respect of the entire area of the E.E.C. A firm insistence on the unitary principle would entail, however, that any prior national mark could be raised to obstruct the registration of an E.E.C. mark. For that reason, departure from the unitary principle is foreseen in respect of national rights as having only a local or regional importance. The autonomous nature of the Community mark would be ensured by providing that, in general, it be subject only to the proposed law. A fundamental assumption in the Commission's perspective is that national trade mark laws will co-exist with the E.E.C. code. Continuing protection for marks at national level is regarded as essential for a number of reasons. The majority of trade marks in the Community, for example, are registered in the one state only, and this implies that their owners do not require a more far- reaching protection. Many trade marks, moreover, are unsuitable on linguistic grounds for use outside their own language field. Finally, unregistered marks would not be protected within the Community code. Substantive and Procedural Principles The law proposed to govern the E.E.C. trade mark

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