A missing link
Cheng Tan describes why the Court couldn’t see the connections in an appeal decision. T-501/13, Karl-May-Verlag GmbH v EUIPO and Constantin Film Produktion GmbH (WINNETOU), CJEU, General Court, 18 March 2016.
T-501/13, Karl-May-Verlag GmbH v EUIPO and Constantin Film Produktion GmbH (WINNETOU), CJEU, General Court, 18 March 2016
A Community Trade Mark (CTM, now EUTM) for WINNETOU was facing invalidity proceedings due to lack of distinctiveness under Article 7(1)(b) Council Regulation (EC) No 207/2009 (the Regulation) relating to the lack of distinctive character of the contested mark.
The registrability of an EUTM is assessed on the basis of the relevant EU rules alone. It is clear that the EUIPO is not bound by decisions adopted by the Member States, and that there is nothing in the Regulation that requires the EUIPO or, on appeal, the General Court, to come to the same conclusions as those of national administrative bodies or courts. While the EUIPO may take those decisions into consideration, the Member State’s decision is not binding or determinative. Throughout the decision, the Board of Appeal’s (BoA’s) reasoning appeared to refer back to the preceding German decision, to the extent that it was held that the BoA accepted the findings set out in the German Court’s decision without arriving at an independent assessment in the light of the arguments and evidence submitted by the parties. The BoA had treated the decision of the German Court as binding.
A plea in law was raised by the Courts on whether there was infringement of the Court’s duty to state reasons.
Explanation gap
The question, therefore, is whether the BoA explained sufficiently its assessment of descriptive character. The compliance with duty to state reasons is a matter of public policy. It was found that: i) there was no autonomous statement of reasons, and ii) the perception of the relevant public of the various goods and classification was inadequately reasoned. The statement of reason has to be disclosed, clearly and unequivocally, to enable others to ascertain the reasons, and for the court to exercise its power of review.
The General Court was not able to assess the BoA’s decision on descriptive character, as the BoA accepted that “Winnetou” is generally perceived as connected with the concept of Native America or a Native American chieftain. However, the BoA did not carry out any specific analysis to establish that the sign (beyond its concrete meaning as an evocation of a fictional character) was perceived as referring to those concepts in general.
In addition, the BoA gave a general statement of reasons, particularly for merchandising goods. The option to use general reasoning for a series of goods or services can extend only to goods or services that have a sufficiently direct and specific link to the point that they form a sufficiently homogenous category. The goods in question demonstrate such differences in nature, characteristics, intended purpose and methods of marketing that they cannot be regarded as constituting such a category. The BoA’s reasoning as to the direct and specific link between the goods and the sign WINNETOU was excessively general and abstract, and did not make it possible to understand why the BoA held that such links existed in relation to the contested mark.
Annulment decided
As a result, the General Court annulled the contested decision for breach of principles of autonomy and independence of the EUTM, and on the ground that the BoA’s statement of reasons is inadequate.
Cheng Tan is a Senior Associate at Lewis Silkin LLP