According to the case law of the CJEU, the trade mark systems - the national and the EU trade mark system[1] - are each autonomous with their own rules, albeit often to be interpreted in the same way. Although the arguments of any previous decisions on the same legal issues must therefore be taken into account,[2] in proceedings relating to EU trade marks, registrations or court decisions in favour of protectability in individual EU Member States do not have any binding effect[3] or even merely an indicative effect[4]. Rather, they are merely an indication that can be taken into account when registering an EU trade mark, without being decisive.[5] This even applies to previous infringement proceedings for identical national and EU trade marks. [6] A fortiori, there is no binding effect if there is no uniform registration practice in the Member States[7] or if the decisions are not based on harmonised law.[8] Nor does anything else follow from the principle of uniformity of the EU trade mark pursuant to Art. 1 EUTMR.[9] Nor is any previous decision-making practice of the EUIPO of any significance. Decisions to be taken under the EUTMR on the registration of a sign as an EU trade mark are not discretionary decisions, but binding decisions.[10] However, in specific cases, earlier decisions may also be binding: If, for example, there are several decisions of the EUIPO on similar facts, these cannot be deviated from without further ado; in particular, the file content of these earlier proceedings may have to be taken into account.[11]
Thus, if the Office has registered a certain word/figurative mark, this is without relevance for a later application for registration of the word element of this trade mark as a word mark. [12] And even if an identical trade mark has already been registered, this does not give rise to a claim for registration of another one.[13]
In this sense, the BGH attributes to a foreign registration in certain cases at most an indicative effect in favour of the protectability of the trade mark. The prerequisite for this is that the trade mark is formed from a foreign-language word[14] that has not entered the German language as a foreign word and is registered in the state from whose language area it originates.[15] However, such an indicative effect does not arise from applications that are registered in German-speaking countries.[16]
If, for example, the word 'GENESCAN' for 'computer software for DNA sequencing' is registered as a trade mark in the United Kingdom, this circumstance has an indicative effect in favour of protectability. The indicative effect would only be removed if the trade mark word is used domestically in a meaning that differs from its English meaning.[17]
Conversely, the BGH also wants to attribute decisions of the EUIPO on the registrability of trade marks merely an indicative effect for the domestic registration procedure. There is no legal obligation to reach the same conclusion as the EUIPO. This applies all the more if the two proceedings do not concern identical trade marks.[18] However, this must be seen differently if there is not only a decision of the EUIPO but also one of the GC or CJEU on an identical trade mark.[19] Here, it must be assumed at first glance that most assessments in designation rights are the responsibility of the trial judge with the assessment of the perception of the public.[20] However, normative assessments and the assessment of facts flow into each other precisely when assessing the perception of the public. Almost every question of fact can be reinterpreted as a normative question and vice versa. In order to avoid opposition within the EU, the national judge is therefore required to work out the normative basis for determining the perception of the public in each specific case and, if necessary, to refer the associated questions to the CJEU.[21]
Footnotes
On this, for example, CJEU C-141/13 P of 17 July 2014 Reber Holding, ref. 36, with further references. N.; CJEU C-190/15 P of 19 November 2015 Fetim, para. 24; CJEU C-536/17 P of 17 January 2018 Josel, para. 5 f.; CJEU C-656/17 P of 31 May 2018 Berliner Stadtwerke, para. 3 f.; CJEU C-285/19 P of 6 November 2019 Geske, para. 5.15; CJEU C-118/18 P of 28 June 2018 Hochmann Marketing, para. 5 f. [in the context of proof of use]; GC C-460/19 P of 1 October 2019 Stada Arzneimittel, ref. 12; GC C-61/20 P of 28 May 2020 Billa, ref. 20 [the latter two in the context of permission to appeal]; GC T-562/17 of 28 March 2019 Balea/ALBÉA, ref. 44.
↩CJEU C-51/10 P of 10 March 2011 Agencja Wydawnicza Technopol v OHIM, ref. 74; CJEU C-70/13 P of 12 December 2013 Getty Images, ref. 42; CJEU C-33/15 P of 5 October 2015 Cantina Broglie 1, ref. 49; CJEU C-34/15 P of 5 October 2015 Cantina Broglie 1, ref. 49; also CJEU C-564/16 P of 28 June 2018 EUIPO/Puma, ref. 61; even stricter CJEU C-32/17 P of 6 June 2018 Apcoa Parking Holdings, ref. 31 ff. and 58 f.
↩CJEU C-190/15 P of 19 November 2015 Fetim, ref. 25; also CJEU T-501/13 of 18 March 2016 WINNETOU, ref. 35 et seq.
↩See GC C-238/06 P of 25 October 2007 Develey, ref. 65 ff.; GC T-427/07 of 19 March 2010 Mirtillino/MIRTO, ref. 92 ff.; on the similarity of signs, however, GC T-40/03 of 13 July 2005 MURÚA/Julián Murúa Entrena, ref. 70 ff.
↩CJEU C-173/04 P of 12.1.2006 Deutsche SiSi-Werke, ref. 49; CJEU C-238/06 P of 25.10.2007 Develey, ref. 72; CJEU C-39/08 and C-43/08 of 12.2.2009 Bild digital, ref. 15; CJEU C-17/08 P of 6.2. 2009 MPDV Mikrolab, ref. 41; CJEU C-208/08 P of 16 July 2009 American Clothing, ref. 58; CJEU C-448/09 P of 30 June 2010 Royal Appliance International v OHIM, ref. 45 f.; CJEU C-307/11 P of 26 April 2012 Deichmann, ref. 57; CJEU C-354/12 P of 11 April 2013 Asa, para. 43; CJEU C-410/12 P of 16 October 2013 medi, para. 35; CJEU C-653/15 P of 7 April 2016 Bopp, para. 5; CJEU C-32/17 P of 6 June 2018 Apcoa Parking Holdings, para. 34; see also, inter alia, CJEU T-122/ 17 P of 6 June 2018 Apcoa Parking Holdings, para. 34. GC T-122/99 of 16 February 2000 Shape of a soap I, ref. 61; GC T-345/99 of 26 October 2000 Trustedlink, ref. 41; also GC T-393/02 of 24 November 2004 Shape of a white and transparent bottle, ref. 45 f., where registrations in 11 Member States were taken into account in favour of the applicant; respectively also on conflict of laws decisions GC T-33/03 of 9.3.2005 SHARK/Hai, ref. 68; GC T-312/03 of 14.7.2005 Selenium Spezial A-C-E/SELENIUM-ACE, ref. 46; GC T-346/04 of 24 November 2005 Arthur/ARTHUR ET FELICIE, ref. 70; GC T-29/04 of 8 December 2005 CRISTAL/CRISTAL CASTELLBLANCH, ref. 75, confirmed in the result by CJEU C-131/06 P of 24 April 2007 Castellblanch v OHIM; GC T-202/03 of 7 February 2006 COMP USA, ref. 57 f., confirmed by GC C-196/06 P of 9 March 2007 Alecansan v OHIM; GC T-35/04 of 15 March 2006 FERRERO/FERRÓ, ref. 67; GC T-439/04 of 3 May 2006 EUROHYPO, ref. 58; GC T-97/05 of 12 July 2006 Sergio Rossi/MARCOROSSI, ref. 53; the same applies respectively to earlier decisions in the same Member State: GC C-39/08 and C-43/08 of 12 February 2009 Bild digital, ref. 2.2009 Bild digital, ref. 16; on the implementation of European case law in Germany BGH I ZB 59/09 of 17 August 2010 SUPERgirl, ref. 10 ff.; I ZB 61/09 of 17 August 2010, ref. 10 ff.; a decision by a national authority does not replace the Office's own examination: GC T-108/08 of 15 July 2011 GOOD LIFE/GOOD LIFE, ref. 24 f.; a decision by a national authority does not replace the Office's own examination.
↩GC C-226/15 P of 21 July 2016 Apple and Pear Australia, para. 48 ff.; GC C-32/17 P of 6 June 2018 Apcoa Parking Holdings, para. 33; previously GC T-378/13 of 25 March 2015 Apple and Pear Australia, para. 67 ff.
↩See most recently GC T-194/01 of 5 March 2003 Tablet for washing machines or dishwashers XII, ref. 68.
↩GC T-363/04 of 12 September 2007 Carbonell/La Española, ref. 41; respectively on decisions of authorities outside the EU: GC T-459/05 of 8 November 2007 Manufacturing score card, ref. 29, confirmed by CJEU C-17/08 P of 6 February 2009 MPDV Mikrolab, ref. 41 ff.
↩CJEU C-32/17 P of 6 June 2018 Apcoa Parking Holdings, ref. 58 f.
↩CJEU C-37/03 P of 15 September 2005 BioID, para. 47; CJEU C-173/04 P of 12 January 2006 Deutsche SiSi-Werke, para. 48; CJEU C-212/07 P of 13 February 2008 Indorata-Servi¢os e Gestão, para. 43; CJEU C-243/07 P of 15 February 2008 Brinkmann, para. 39; CJEU C-39/08 and C-43/08 of 12 February 2009 Bild digital, para. 13; CJEU C-208/08 P of 16 July 2009 American Clothing, para. 57; CJEU C-536/10 P of 7 July 2011 MPDV Mikrolab, para. 45; CJEU C-410/12 P of 16 October 2013 medi, para. 32; CJEU C-466/13 P of 22.10.2014 Repsol, ref. 89; CJEU C-400/14 P of 16.7.2015 Basic AG Lebensmittelhandel, ref. 52; CJEU C-488/16 P of 6.9. 2018 Bundesverband Souvenir - Geschenke - Ehrenpreise, para. 72; CJEU C-150/18 P of 6 September 2018 El Corte Inglés, para. 6 f.; CJEU C-151/18 P of 6 September 2018 El Corte Inglés, para. 6 f.; see also GC T-106/00 of 27 February 2002 STREAMSERVE, para. 66; on conflict-of-law decisions CJEU C-412/05 P of 26 April 2007 Alcon(26 April 2007 STREAMSERVE, para. 66). 26.4.2007 Alcon (II), ref. 65; CJEU C-354/11 P of 22.3.2012 Emram, ref. 92; CJEU C-480/15 P of 14.4.2016 KS Sports IPCo, ref. 36; see also GC T-35/03 of 12.10.2004 HARPO Z/CARPO, ref. 26; see also Federal Administrative Court Switzerland B-6068/2014 of 1.2.2016 Goldbären.
↩CJEU C-564/16 P of 28 June 2018 EUIPO/Puma, ref. 80 ff.; also GC T-372/17 of 29 November 2018 LV/LV POWER ENERGY DRINK, ref. 33 ff.
↩GC T-345/99 of 26 October 2000 Trustedlink, ref. 40.
↩CJEU C-70/13 P of 12 December 2013 Getty Images, ref. 45.
↩In principle, no indicative effect for German-language signs BGH GRUR 2005, 578, 580 Lokmaus; for figurative signs: BGH GRUR 1997, 527, 529 Autofelge.
↩BGH GRUR 1988, 379, 380 RIGIDITE; BGH GRUR 1993, 746 Premiere; BGH GRUR 1996, 771, 772 THE HOME DEPOT; BGH GRUR 1999, 1096, 1097 ABSOLUT; BGH GRUR 2001, 1046, 1047 GENESCAN; also BGH GRUR 2001, 162, 164 RATIONAL SOFTWARE CORPORATION; increasingly cautious: BGH I ZB 3/13 of 19 February 2014 HOT, ref. 30.
↩BGH I ZB 48/08 of 4 December 2008 Welcome to life, ref. 18.
↩BGH GRUR 2001, 1046, 1047 GENESCAN.
↩BGH I ZB 96/05 of 27 April 2006 FUSSBALL WM 2006, ref. 27; also BGH I ZB 97/05 of 27 April 2006, ref. 27.
↩See also CJEU 314/85 of 22 October 1987 Foto-Frost, ref. 14 ff.
↩For example, BGH I ZR 49/05 of 3 April 2008 Schuhpark, ref. 28.
↩See, however, BVerfG MarkenR 2009, 159 Evian/Revian's; BGH I ZB 107/08 of 20 May 2009 Vierlinden, ref. 17.
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