Trade Marks Gone Nuts: Trade Mark Monopolization of the Visual Outcome of a Once Patented Method?
| DOI | 10.1093/jiplp/jpz103 |
| Date | 08 August 2019 |
| Pages | 749-751 |
| Year | 2019 |
| Published By | Oxford University Press |
in preserving the availability of a PVD to all traders offering
such goods (paragraph 26). This conclusion is in line with
Article 20(1)(b) UPOV, which provides that ‘[e]ach
Contracting Party shall ensure that, subject to paragraph
(4), no rights in the designation registered as the denomi-
nation of the variety shall hamper the free use of the
denomination in connection with the variety, even after
the expiration of the breeder’s right’ (paragraph 27). In
clear and persuasive words, the General Court concluded
that by definition a PVD becomes the generic designation
of that variety and should remain available to all traders to
describe their goods (paragraph 28) and that
Article7(1)(m) EUTMR should be interpreted in light of
this objective (paragraphs 29 and 30): ‘It is therefore
important to determine whether the registration of the
trademark applied for hinders the free use of the [plant]
variety denomination included in that trademark’ (para-
graph 30).
The notion of essential elements of a trade mark
The court then proceeded to define the criteria for assess-
ing the notion of ‘essential elements’ of a PVD. The test is
whether the PVD holds in the contested mark ‘an essential
position’ with the result that the essential function of the
mark, in other words its distinctive character, lies in
the PVD and not in the additional elements composing the
contested sign (paragraph 31). The assessment should
include the distinctive character of the other elements of
the contested sign, the message conveyed by the contested
mark taken as a whole and the number, size and the posi-
tion of the various elements of the contested sign.
Furthermore, the General Court also emphasized that the
PVD cannot constitute an ‘essential element’ of the con-
tested mark if the distinctive character of that mark is
based on the other elements of which it is composed, so
that the PVD is perceived as a generic indication used for
information purposes only (paragraph 32). This means
that a PVD will be considered as an essential element only
(i) where the PVD is the only element of the contested
mark (see, for example, application no 16 922 791 for the
trade mark ‘Ruby’ rejected on the basis of the PVD
‘RUBY’), (ii) when due to its size or position the PVD is
the dominant element of the contested sign or (iii) where
the additional elements are negligible (see, for example,
application no 17 955 254 for the trade mark
rejected on the basis of the PVD ‘GIOIA’).
The combination of a company name with a PVD
Applying these principles, the General Court concluded
that in view of its position (at the beginning of the mark),
combined with the fact that it is the name of the undertak-
ing from which the flowers originate, the word element
‘Kordes’ is the only distinctive element of the contested
sign. The Court added that this conclusion is also sup-
ported by the use of the genitive case, which ‘expresses pre-
cisely the idea that the rose with the variety name Monique
is a variety marketed by different companies, but that, in
this case, this rose comes from the company “Kordes”’
(paragraph 33). Finally, the General Court concluded that
the word ‘Kordes’ is central to the message conveyed by the
contested mark, namely that the products are distributed by
a company doing business under the company name
‘Kordes’ (paragraph 34). Consequently, the contested mark
does not reproduce, in its essentialelements, an earlier PVD.
Practical significance
The judgment under review clearly indicates that the sole
fact that the contested mark includes a PVD will not auto-
matically result in the rejection of the application. Indeed,
by law a PVD is generic and, pursuant to the judgment of
the General Court, save in exceptional circumstances, a
generic element cannot be an ‘essential element’ of a con-
tested mark. Consequently, the application of Article
7(1)(m) EUTMR is excluded as soon as the contested mark
includes in addition to the PVD, a distinctive element. It is
also clear that the registration of a complex mark that
includes a PVD will never result in the monopolization of
that denomination. This means, inter alia, that in opposi-
tion or infringement proceedings a finding of likelihood of
confusion cannot be justified on the basis of the presence
in both signs of the same PVD.
Stefan Martin
EUIPO - Boards of Appeal
Email: stefan.martin@euipo.europa.eu
This article is not binding on the EUIPO in any way, it
exclusively reflects the personal opinion of the author.
doi:10.1093/jiplp/jpz113
Advance Access Publication 29 August 2019
nTrade marks gone nuts: trade mark
monopolization of the visual outcome of a
once patented method?
District Court Gelderland (The Netherlands), 27 March
2019, Frito-Lay Trading Company Europe (GmbH)v
Intersnack Nederland B.V., ECLI: NL: RBGEL: 2019: 1444
This case suggests applying the ‘technical effect’ exclu-
sion ground to trade marks covering the visual outcome
of a once patented method.
Legal context
One of the innovations of the 2015 European Union Trade
Mark Package wasto broaden the scope of the three absolute
grounds for refusal or invalidity ‘nature of the goods’,
Journal of Intellectual Property Law & Practice, 2019, Vol. 14, No. 10 749CURRENT INTELLIGENCE
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