[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　2007 Swedish company Norrtelje Brenneri Aktiebolag Apply for trademark registration "ROSLAGS PUNSCH (As shown in the picture below) " , Specify use in the No 33 class "Alcoholic beverage" On goods. ROSLAGS PUNSCH Combination mark　　The trademark is accompanied by a waiver, namely "Renounce the words in this registered trademark 'RoslagsPunsch' Partial exclusive rights" . This waiver was provided at the request of the Swedish Patent and Trademark Office, The examiner thought "Roslags" It's a region of Sweden, while "Punsch" Is a descriptive term that specifies one of the goods in the trademark registration.

　　2015 years 12 month 16 day, Natural person Hansson File a written trademark with the Swedish Patent and Trademark Office "ROSLAGS? L" Application for registration, Specify use in the No 32 class "Non-alcoholic beverages and beer" On goods.

　　2016 years 7 month 14 day, The Swedish Patent and Trademark Office rejected the application, The reason is that there is an earlier trademark that may cause confusion with the trademark (trademark "ROSLAGS PUNSCH" ) , Both are designated for use on the same or similar goods, And all descriptive words "Roslags" At the beginning. It also pointed out that, Due to words "Roslags" It is the most prominent element in both trademarks, So although there are other literal or graphic elements in addition to the above, It doesn't make them any less similar.

　　Hansson Disavowal conclusion, Take the case to the court of first instance, There is no risk of confusion or misidentification between the two trademarks, and "Roslags" Is a word commonly used in trademarks by companies located in the region. The request was upheld by the court of first instance, trademark "ROSLAGS? L" Be approved for registration.

　　The Swedish Patent and Trademark Office refused to accept the judgment of first instance, Appeal to the Swedish Court of Appeal, In spite of (Sweden) National trademark protection substantive legal rules have been with "Directive of the European Parliament and of the Council on the harmonization and harmonization of trademark laws in the Member States (The first 2008/95/EC No) " (Hereinafter referred to as "European Union regulation 2008/95/EC Number instruction" ) Complete unity, But the rules of procedure, In principle, It is still up to each member state to decide.

　　In view of the above controversy, The court of appeal decided to stay the case, Ask the European Court of Justice for a preliminary ruling: In order to check whether there is "European Union regulation 2008/95/EC Number instruction" The first 4. 1. b prescribed "Confusion and misidentification" , Whether the national legal provisions of the member states actually belong to the entity rules (A waiver is allowed to be filed during the trademark registration process) , Treat as program rule? The answer to this question, Would shape the basis of the comprehensive evaluation on which the judgment was based.

　　In addition, The hearing court also submitted: The above-mentioned national legal provisions have (1) Excluding the waiver of exclusive rights to certain elements of the combined trademarks mentioned in the declaration; or, (2) Limit this element beforehand and permanently during the confusion misidentification evaluation process, The importance and effectiveness of the analysis of relevant facts; Whether to "European Union regulation 2008/95/EC Number instruction" The first 4. 1. b The provisions of the article are in conflict with each other? Simply put, The Court of Admissibility consulted the European Court of Justice: The fact that the exclusive right to some elements of the trademark is waived when the prior trademark is registered, Whether it affects the assessment of confusion and misidentification?

　　 [conclusion]

　　The European Court of Justice's combined answer to the three questions raised by the Court of Admissibility is: (By waiving the claim) To limit or exclude description in a combined trademark/The importance of non-significant elements, Contravention of EU law, Because this could lead to a conflict "European Union regulation 2008/95/EC Number instruction" The first 4. 1. b prescribed "Confusion and misidentification" Conceptual conflict.

　　The waiver shall not affect the "Confusion and misidentification" Overall evaluation of, The overall impression of the relevant trademark should be taken into account, That is, all its elements should be considered.

　　 [comment]

　　Adjudication of the case, The European Court of Justice "disclaimer" A very clear position was taken, From the point of view of EU law, Not allowed by member states "Procedural rule" (As Swedish law in this case provides, Allows the exclusion of elements from a registered trademark that may affect the scope of exclusive rights protection) with "European Union regulation 2008/95/EC Number instruction" The specified protection guidelines are inconsistent.

　　Therefore, The verdict in this case is clear, It still exists in some member states (Like Sweden, Ireland and Latvia) National law "disclaimer" stipulation, It does not comply with EU law, Such national legal provisions should not distort the object and spirit of EU law, The national laws of the Member States shall guarantee the same registration conditions and the same level of protection as for EU trademarks.

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights