TRADEMARKS THAT ARE DESCRIPTIVE IN LANGUAGES OTHER THAN ENGLISH AND IN MINORITY LANGUAGES IN THE EU: STUCK BETWEEN BABEL AND BABYLON by Roba Hamam * February 2012 * Roba Hamam: LL.M. Intellectual Property, University of Turin Law School (2012); Master of Public Law, Lebanese University Faculty of Law and Political and Administrative Sciences (2008). 2 Preface I would like to express my gratitude to Professor Marco Ricolfi and Avv. Carlo Mezzetti, for their support and guidance in producing this paper. I also extend my heartfelt thanks to my family and friends, and especially to Rola Hamam, Marija Nikova and Jesse Kim, who stood by me and supported me in every way they could. I would also like to thank the OHIM Academy for this rare opportunity given to us through the University Network to analyse, discuss, and share our ideas on current issues faced by the OHIM with members and Chairmen of the OHIM Boards of Appeal, and litigators of the OHIM before the European Court of Justice. My sincere thanks go to Dr. Eric Gastinel, the Head of the Univerdity Network, for his support and assistance both before and after our arrival and for his welcoming words and for making every one of us feel at home in Alicante and at the OHIM. I especially would like to thank my OHIM advisor, Mr Theophile Margellos, Chairman of the OHIM First Board of Appeal, for his kind words of encouragement and commendation in introducing my topic and my paper, his support during the presentation of my topic and his valuable contribution in moderating the discussion session. 3 Table of contents 1. 2. 3. 4. Executive Summary .................................................................................................... 4 INTRODUCTION ...................................................................................................... 5 THE PARADOX OF LANGUAGES AND HARMONISATION ............................ 7 THE DUAL NATURE OF THE EU TRADEMARK SYSTEM ............................... 8 4.1. The Trademark Directive (TMD) ....................................................................... 9 4.2. The Community Trademark Regulation (CTMR) ............................................ 10 5. THE DICHOTOMY OF PUBLIC INTERESTS ...................................................... 11 6. THE NEED FOR REAL HARMONISATION ........................................................ 12 6.1. National Trademarks ......................................................................................... 12 6.2. Community Trademarks ................................................................................... 16 6.2.1. Absolute Grounds of Refusal .................................................................... 17 6.2.2. Relative Grounds of Refusal ..................................................................... 19 6.3. Shared Objective ............................................................................................... 22 7. IN SEARCH OF AN ALTERNATIVE .................................................................... 22 7.1. The Doctrine of Foreign Equivalents ................................................................ 23 8. CONCLUSION ......................................................................................................... 25 9. BIBLIOGRAPHY ..................................................................................................... 26 4 1. Executive Summary The dual nature of the trademark system in the European Union, standing upon the two pillars of the 1989 Trademark Directive (TMD) and the 1995 Community Trademark Regulation (CTMR), has resulted in incoherencies in the treatment of merely descriptive and generic marks in languages other than English and in minority languages. This is largely attributed to the differences in legal interpretations and approaches adopted by the national trademark offices, the European Court of Justice (ECJ), and the Office for Harmonization in the Internal Market (OHIM) in the examination of such marks. Allowing the registration of a merely descriptive and generic trademark for use by one trader within the member states of such a borderless union as the EU inevitably facilitates monopolistic situations to the detriment of competitors and the internal market as a whole, thereby resulting in negative implications on free movement of goods and also freedom to provide services between Member States. Given that the TMD and the CTMR ultimately share the same long-term objective and foundational principles, however, there is a need for real harmonisation in absolute grounds of refusal, which in turn calls for an alternative framework, such as one resembling the doctrine of foreign equivalents adopted in the United States, amongst other possible options of alignment and cooperation between national trademark offices and the system of Community trademarks. 5 2. INTRODUCTION “RECOGNISING that the removal of existing obstacles calls for concerted action in order to guarantee steady expansion, balanced trade and fair competition,” …“DESIRING to contribute, by means of a common commercial policy, to the progressive abolition of restrictions on international trade” 1 With these words and desires the European Union was established. The Union has grown from the initial 6 Member States to the current 27, speaking 23 different official languages, as well as semi-official languages, and over 100 regional and minority languages 2 as well as dialects of official languages. Such a big number of languages spoken in one vast internal market constitute a challenge for communication on many levels of the Union’s administration, legislation, judicial system, and internal and international trade. 3 It also has an effect on the Union’s trademark system, especially when it comes to the assessment of the descriptiveness of marks. 4 Moreover, the provisions that govern trademark laws within the individual Member States can have multiple implications on free competition and the free movement of goods, as well as freedom to provide services between the Member States. Marks can rank anywhere between inherently distinctive, such as inventive words, and inherently descriptive, as in the case of generic words. Merely descriptive and generic marks are considered incapable of distinctiveness and therefore should not be accepted as trademarks appropriated for the exclusive use of one trader. 5 Ultimately, giving one trader trademark rights over such a word would give them an absolute monopoly over said term and would prevent other traders, including their competitors, from using the mark to describe their products and services in the territory in which the mark was accepted for registration. This in itself would constitute violations to free and undistorted competition in the internal market of the EU, and some might argue a violation to human rights and the right of expression. 6 From this outset, this paper will assess the status of merely descriptive and generic marks in languages other than English and minority languages. It will discuss the different categories of languages in the internal market of the EU system: the official, semi-official, and minority languages, together with their implications on harmonisation in general. In 1 Preamble of the Treaty establishing the European Economic Community, recitals 4 and 6 See Report of the European Parliament of 14 July 2003 with recommendations to the Commission on European Regional and Lesser used Languages - the Languages of Minorities in the EU- in the Context of Enlargement and Cultural Diversity, this number must have increased since the last EU enlargement 3 R. CREECH, Law and Language in the European Union: the Paradox of a Babel United in Diversity, European Law Publishing, 2005, pp. 13-31 4 Study on the Overall Functioning of the European Trade Mark System (Allenbach Study), 15 February 2011, Max Planck Institute for Intellectual Property and Competition Law Munich, para. 3.36 5 R. SCHECHTER and J. THOMAS, Intellectual Property The Law of Copyrights, Patents, and Trademarks, Thomson West, USA, 2003, p. 591-592 6 See R. CREECH, “Law and Language in the European Union”, supra at note 3, pp. 129-152 2 6 particular, the effect of this linguistic diversity on absolute grounds of rejection with respect to descriptive marks in languages other than English, including minority, regional and immigration languages, will be observed through an examination of how the principles of public interests and the descriptiveness provision are built and are being applied by the OHIM for Community trademarks (CTM), the national trademark systems in light of the Trademark Directive (TMD), and the national and Union courts. Trademarks that are descriptive in English are out of the scope of this paper, since they are already in an advanced position, as seen in various judgments of the Union courts and of various OHIM decisions. 7 7 See cases «Naturally active» T-307/09 Liz Earle Beauty v OHIM, not published in the ECR; «New Look» T-435/07 New Look Ltd v OHIM, not published in the ECR; «HAIRTRANSFER» C-212/07, Compagnie générale de diététique SAS v OHIM, ECR (2008) I-00025; «Manpower» C-553/08 Powerserv v OHIM & Manpower Inc., ECR (2009) I-11361 7 3. THE PARADOX OF LANGUAGES AND HARMONISATION The European Union was created to go beyond the differences between Member States and “to strengthen the unity of their economies and to ensure their harmonious development by reducing the differences existing between the various regions and the backwardness of the less favoured regions.” 8 Europeans are diverse in many aspects of their lives in culture, tradition, politics and legal systems. Particularly, in no other aspect is there more diversity than in language. 9 The first article of the first Council regulation states that the official and working languages of the EU are Bulgarian, Czech, Danish, Dutch, English, Estonian, Finnish, French, German, Greek, Hungarian, Irish, Italian, Latvian, Lithuanian, Maltese, Polish, Portuguese, Romanian, Slovak, Slovenian, Spanish, and Swedish. 10 There are also some languages that have been in semi-official status since 2006. They include Catalan, Basque, and Galician, all of which are the official languages within Spain. 11 Regional languages are usually limited to a certain region within the borders of a Member State or a cross-border region. They include Basque, Breton, Catalan, Frisian, Sardinian, and Welsh. Minority languages are usually spoken by a minority of the population in one Member State and can be official in other states. There are also non-territorial languages such as those of the Roma or Jewish communities in the EU that speak Romani and Yiddish 12 . The notion of regional and minority languages does not include the great number of dialects of the EU official languages spoken in the EU. 13 In addition, there are languages that are given even less legal protection than the ones considered minority or regional. 14 They are the languages spoken by immigrant communities in the European Union and are referred to as non-indigenous languages. These languages do not have a formal status, and they include a wide range of tongues from other parts of the world, such as Turkish with significant immigrant communities in Germany, Belgium, and the Netherlands; Maghreb Arabic mainly in France, Spain, and Belgium; and Urdu, Bengali and Hindi spoken by immigrants from the Indian subcontinent in the United Kingdom. 15 8 Preamble of the Treaty establishing the European Economic Community, recital 5 R. CREECH, Law and Language in the European Union, supra at note 3, at 2 10 The EU has fewer official languages than member countries. This is because Germany and Austria use the same language, Greece and Cyprus share Greek, and Belgium and Luxembourg have common languages with France, Germany and Dutch. 11 Which entails certain EU texts to be translated from and into these languages at the cost of the Spanish government 12 Speaking for Europe: Languages in the European Union, European Commission Directorate-General for Communication, Office for Official Publications of the European Communities, 2008 Luxembourg, at 9 13 Id. at 7 14 R. CREECH, Law and Language in the European Union, supra at note 3, at 50 15 Id. at 9 9 8 The effect that this linguistic diversity has on common action among the Member States and on the legislative and judicial systems in the Union is overcome by the translation of texts into all official and working languages of the Union. 16 Nonetheless, this mosaic of languages in each Member State and consequently the internal market with other foreign languages has a definite and more prominent effect on the free movement of both goods and people within the Union. 17 Lacking knowledge of others’ languages is a barrier to knowing their “culture and identity” 18 and also a barrier to “communication and trade.” Moreover, a study undertaken for the European Committee shows that the EU firms can lose business opportunities due to lack of multilingualism, especially in the case of smalland medium-sized enterprises (SMEs). It also stresses the growing importance of multilingualism for winning business in world markets. Despite English being a key language, there is a growing importance of Russian, Chinese, and Arabic, as the study emphasises. 19 The diversity in languages is thus, in its nature, a barrier that poses a difficulty for European integration 20 and harmonisation on many levels. It is a paradox of a solid steel wall against the flow of knowledge, communication, culture, trust, and trade. This paradox of “division” by languages and “unity” towards harmonisation is well recognised by the Union, as is the notion that “linguistic diversity must be preserved and multilingualism promoted, with equal respect for the languages of the Union.” 21 As such, many initiatives were taken to promote multilingualism, such as the “Lingua Program” and the “Arina Program,” 22 with a particular emphasis on minority languages. How do all of the above factors interact with trademarks in the individual EU Member States and also the EU as a single market, given that for any trademark the meaning of a word is pivotal to its validity, is the main question this paper aims to address. 4. THE DUAL NATURE OF THE EU TRADEMARK SYSTEM The European Union is undoubtedly of a polyglot nature, 23 and it is becoming increasingly so with the Union’s initiatives towards promoting language-learning and multilingualism as a necessity for the integration of the common market and the 16 A. FORREST, “The Politics of Language in the European Union”, European Review, Vol. 6, No. 3, 299319 (1998), at 301 17 Check articles 28,29,30,39, and 49 of the EU treaty, also see R. CREECH, Law and Language in the European Union, supra at note 3, at chapters IV and V 18 See answer to written question 2671/97, 1998, Cro2/87 “the commission fully shares the view by the Honourable Members that language is an expression if a country’s culture and identity” 19 Speaking for Europe: Languages in the European Union, supra at note 12, at 11 20 A. FORREST, “The Politics of Language in the European Union”, supra at note 15, at 299 21 European Parliament in January 1995 by President Francois Mitterrand, when presenting the programme of the French Presidency of the Council of the EU for the first six months of 1995 22 A. FORREST, “The Politics of Language in the European Union”, supra at note 15, at 308, for more recent approaches and initiatives see Speaking for Europe: Languages in the European Union, supra at note 12, pp. 14-15 23 R. CREECH, Law and Language in the European Union, supra at note 3, page 4 9 economic and social progress of the Union. 24 This reflects on the trademark system especially in the registration of word-marks in as many as 23 official languages, plus the numerous regional, minority, immigrant, and foreign languages. For the sake of the integration of the market and for facilitating the free movement of goods within the Member States, the Union has sought to ensure that a trader’s trademarks are well protected within each of these territories. At the same time, the Union has acknowledged the need to keep words of generic and descriptive nature in the pubic domain. Trademarks in the EU are seen as instruments of perusing business as part of economic competition. 25 Therefore, legal protection is granted to trademarks in the European Community as an essential element in the system of undistorted competition, which the Treaty of Rome, the main foundation of the Union, seeks to establish and maintain. 26 For this reason, the matter of regulating trademarks was not left solely to the national laws, and as a result, the Trademark Directive (TMD) was issued in 1989 to approximate and harmonise the laws of Member States with respect to trademarks. 27 It is important to note that the third recital of the TMD stated that at that time, it did not appear to be necessary “to undertake full-scale approximation of the trade mark laws of the Member States,” as if the approximation was a step towards a fully approximated system whose need might arise only in the future. After that, the Community Trademark Regulation 28 (CTMR) was separately issued in 1995 to establish a unitary system of trademark protection that would govern Community trademarks (CTM). This still did not constitute a full-scale approximation, as the two different systems, namely the national trademark laws and the CTM, were deemed to be coexisting and operating in parallel. No problem should arise if both legal systems are in sync and abide by the same rules, and they are very much so on many levels. But when it comes to the examination of word-marks on absolute grounds of refusal based on the descriptive and generic nature of the word in different European, minority, and foreign languages, there appears to be a substantial difference between the two systems. 4.1. The Trademark Directive (TMD) The Trademark Directive (TMD) was issued to abolish any disparities between the trademark laws of the Member States that “may impede the free movement of goods and freedom to provide services and may distort competition within the common market” as stated in its preamble. The national laws of the EU Member States implement the Directive, so that the different trademark laws in each of the jurisdictions are more or less equivalent, which was meant as an endeavour towards the eventual goal of a harmonised trademark law within the EU. Trademark laws have a specific importance in the EU 24 Speaking for Europe: Languages in the European Union, supra at note 12, at 11 H. ROSLER, The rationale for European trade mark protection, 29:3 European Intellectual Property Review (2007), at 100 26 Case «HAG II» C-10/89 CNL-SUCAL v HAG GF, ECR (1990) I-03711, para. 13. 27 First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks. Hereinafter ‘the TMD’ 28 Council Regulation 40/94/EC of 20 December 1993 on the Community trade mark. Hereinafter ‘the CTMR’ 25 10 because of the role they play in either restricting or facilitating the free movement of goods and freedom to provide services in the internal market 29. Due to the polyglot nature and the wide diversity in languages of the EU, it is probable that national offices receive many registrations in foreign languages. It logically comes to mind that even if all 25 Member State trademark offices were to implement the same Directive, that would not mean that they would produce the same results for many reasons, not least of which is the subjective nature of the assessment procedure and the guidelines used by the individual trademark offices. That is because there are no special provisions in the TMD with respect to the issue of trademarks that are inherently descriptive and generic in other languages and minority languages, as well as how they should be dealt with in the national laws. Problems arise when generic and descriptive trademarks in languages other than English 30 and in minority languages that are not considered inherently descriptive and generic by the average consumers of the jurisdiction; in many cases, national courts refer questions to the ECJ 31 for the interpretation of the above mentioned aspect of the TMD. 4.2. The Community Trademark Regulation (CTMR) The CTMR came to establish Community trademarks, which are governed by the principles of autonomy, and have a unitary character and effect throughout the European Community as stated in its Article 2(1). The success of the system is attributed to its autonomy, unitary character, and its coexistence with the national trademark systems. 32 It enables an undertaking to file an application and register a single trademark covering the 27 Member States of the EU rather than filing individual trademark applications at each of the Union’s 25 intellectual property offices 33 , including Benelux. It intends to overcome the territoriality in trademark law, which not even international treaties such as the Madrid Agreement have been able to alter. 34 It also operates in coexistence with and alongside the national trademark systems, because any earlier right existing in any of the Member States entitles their proprietors to oppose or request invalidation of a later CTM. 35 29 See Recital 1 of the Preamble to the TMD and the CTMR European General Court December 9, 2010, Case T-307/09 Liz Earle Beauty v OHIM, case «Naturally active», para 26 “it need merely be pointed out that the number of countries where basic English can be understood is greater than the number of countries where English is the native language.” 31 Pursuant to Article 234 EC Treaty 32 S. SCHNELL, The Community trade mark: unitary EU right - EU-wide injunction??, E.I.P.R. 2011, 33(4), 210-226, at 210 33 J. SMITH and J. GAULD, The territorial effect of sanctions under the Community Trade Marks Regulation: the ECJ delivers its judgment in DHL v Chronopost, E.I.P.R. 2011, 33(9), 588-590 p. 588 34 H. ROSLER, The rationale for European trade mark protection, supra at note 24, at 102 35 Study on the Overall Functioning of the European Trade Mark System (Allenbach Study), supra at note 4, at 139 para. 3.32 30 11 5. THE DICHOTOMY OF PUBLIC INTERESTS Trademarks, as with other types of intellectual property rights, are exclusive rights given by the authority or state to the proprietor, enabling them to prevent others from using in the course of trade any sign that is identical or similar to their mark in relation to goods or services that are identical or similar with those for which the mark is registered. 36 This in itself constitutes an intervention into what is ideally thought to be a free market, where competition improves consumer welfare by increasing efficiency in production, 37 and therefore needs special justification. The justification was found within the literature of law and economics, 38 where the trademark law was seen to constitute the incentive for business entities to invest in the quality of their goods and services 39 and to reduce consumers’ searching costs, due to the presumption that if the consumer is unable to distinguish goods or services and cannot inspect their quality, then business entities would reduce cost by lowering quality 40, and the consumer as a result would not benefit from the indication of origin in order to determine which product to buy based on past experiences. Therefore, a trademark has a function of an indicator of origin and quality. The justification lies within the relation between consumer interests and trademark law. However, despite these positive functions for consumers, anti-competitive effects may arise in some instances. After all, a trademark is a perpetual right that can be renewed indefinitely by its proprietor. 41 In other words, it is an “open-end” monopoly for exclusive use, which can be largely enforced. 42 Therefore, the legal system adopts rules against appropriating inherently descriptive and generic names as trademarks in order to avoid the monopolisation of the used language for the benefit of one business and to the detriment of others. 43 Protection of this kind would be sure not to affect the competitive structure of the market, while also being unlikely to cause any deadweight loss. 44 This is described as the “protective function” that lies within the descriptiveness provisions for rejection on absolute grounds found within trademark law. The provision of descriptiveness also has a “distinguishing function” for the consumer to distinguish the origin of the goods, as explained above. Each of these functions of trademarks comes to serve a certain public interest. 36 TMD Article 5 H. ROSLER, The rationale for European trade mark protection, supra at note 24, at 104 38 for detailed explanation of these theories check J. AMMAR, Think Consumer: The Enforcement of the Trade Mark Quality Guarantee Revisited, A Legal and Economic Analysis, Cambridge Scholars Publishing, 2011 39 N. BOTTERO, A. MANGANI, and M. RICOLFI, The Extended Protection of “Strong” Trademarks, 11 Marquette Intellectual Property Law Review 2007, 265-289, at 267 40 H. ROSLER, The rationale for European trade mark protection, supra at note 24, at 104 this deduction was based on G.A. Akerlof’s “lemon” theory 41 N. BOTTERO, A. MANGANI, and M. RICOLFI, The Extended Protection of “Strong” Trademarks, supra at note 38, at 268 42 H. ROSLER, The rationale for European trade mark protection, supra at note 24, at 100, also see Directive 2004/EC on the Enforcement of Intellectual Property Rights, and J. SMITH and J. GAULD, The territorial effect of sanctions under the Community Trade Marks Regulation: the ECJ delivers its judgment in DHL v Chronopost, supra at note 32, at 588-590 43 N. BOTTERO, A. MANGANI, and M. RICOLFI, The Extended Protection of “Strong” Trademarks, supra at note 38, at 268 44 Id. at 268 37 12 In light of the EU trademark law, this dichotomy of “distinguishing vs. protective” is more prominent when applying the provisions that have to do with absolute grounds of refusal for inherently descriptive and generic terms embodied in Article 3.1(c) of the TMD and 7.1 (c) of the CTMR, which both read as follows: “The following shall not be registered: (….) (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;” The CTMR then continues in the second point of the same Article 7(2):“Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.” This provision is absent in the TMD and thus the dichotomy is sharper at the national level than it is at the CTM level particularly for marks of foreign languages and minority languages other than English. In the TMD, there is no special provision for national trademark offices to examine whether the applied for trademark is generic in those languages, i.e. other parts of the Community. This highlights the key difference between the CTM and the TMD and consequently the national laws. 6. THE NEED FOR REAL HARMONISATION All of the above factors have resulted in incoherencies where generic trademarks that would not have been accepted at the CTM level, for reasons of inherent descriptiveness, were accepted at the national level. Also, the ambiguity of Article 7(2) of the CTMR regarding the definition of "part of the Community" in relation to minority and immigrant languages, as opposed to official EU languages, stands to influence the test of mere descriptiveness. How the two systems apply in real cases before the national trademark offices, the OHIM, and the Union courts is explored below. 6.1. National Trademarks When the national trademark registry of a Member State receives a trademark application in a foreign language, for example, “uisce” in Irish or “vesi” in Finnish or “vatten” in Swedish or “wasser” in German “νερό” in Greek, all of which are EU official languages, or “aigua” in Catalan, which is one of the most widely spoken minority languages, or “‫ ”ءﺍﻡ‬in Arabic or “su” in Turkish, which are widely spread immigrant non-indigenous languages, all corresponding to mineral water in trademark class 32, by applying the distinguishing function of Article 3.1(c) alone, the trademark will be accepted if the meaning of the mark is not known to the average consumer in said Member State, and 13 thus the distinguishing function is fulfilled. However, if it were an application for the trademark “WATER” covering mineral water in class 32, it would most probably not have been accepted. After finding out that the meaning of all of these words when translated into English is water, one’s first reaction would be “This cannot be correct.”45 Such a situation can be compared to the Biblical story of the Tower of Babel where an angry god confounded the speech of what were one people; here, the EU represents different peoples that babble to one another in unintelligible tongues. 46 National trademark offices in Europe must deal with these kinds of registrations all the time, and the results in many instances disregard the “protective function” of the distinctiveness provision and instead accept trademarks that are inherently descriptive and generic. Accordingly, if the above fictitious example were applied in reality, then the word meaning water in all of these languages would result in monopolisation for the benefit of one business to the detriment of others. The above is only seen through case-law, where the courts of the Union failed to address and clarify many trademark-related issues, and the ECJ for its part tried valiantly to give guidance to national courts, while the effort was occasionally successful, most of the time it added to the confusion and complexity of such cases, 47 and it was sometimes described to have taken a step backwards, especially in applying and defining the function of distinctiveness. 48 For the cases at hand, the ECJ issued a decision that was fatal to trademarks that are inherently descriptive and generic in the language of another Member State. In one prominent case where Audiencia Provincial de Barcelona was looking into an invalidity action against the Spanish national trademark MATRATZEN, filed by Matratzen Concord AG against the proprietor Hukla Germany SA, the following question was referred to the ECJ under the provisions of Article 234 EC: ‘Can the validity of the registration of a trade mark in a Member State, when that trade mark is devoid of any distinctive character or serves, in trade, to designate the product which it covers or its kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of goods, in the language of another Member State when that language is not spoken in the first Member State, as may be the case so far as concerns use of the Spanish trade mark “MATRATZEN,” to designate mattresses and related products, constitute a disguised restriction on trade between Member States?’ 49 The Spanish court did not arbitrarily ask these questions, but based them on its conviction that generic words from the languages of other Member States of the internal market 45 William R, Cornish’s comment on the Matratzen case T-6/01 [2002] E.C.R. II-4335; E.T.M.R. 31, in W. R. Cornish, D. Llewelyn and T. Aplin, Intellectual Property: Patents, Copyright, Trademarks and Allied Rights, 7th edn, Sweet & Maxwell, 2010, at para. 18-36 p. 740 46 R. CREECH, “Law and Language in the European Union”, supra at note 3, at 12 47 W. R. Cornish, D. Llewelyn and T. Aplin , Intellectual Property: Patents, Copyright, Trademarks and Allied Rights, supra at note 44, at Preface 48 M. HANDLER, The distinctive problem of European Trade Mark law, 27:9 European Intellectual Property Review (2005), ff. 306-312, at 306 49 Case «Matratzen» C-421/04 Matratzen Concord AG v Hukla Germany SA., ECR (2006) I-02303, at para 16 14 must remain available for use by any undertaking established in those States, because the opposite would facilitate monopolistic situations, which should be avoided in order to allow normal market forces to prevail, and which could be considered an infringement upon the prohibition on quantitative restrictions on imports between the Member States, as laid down in Article 28 EC. Accordingly, the court saw that the Spanish trademark MATRATZEN puts its holder in a position to limit or restrict the import of mattresses from German-speaking Member States and consequently prevent the free movement of goods. 50 The Spanish court was able to see past its limited borders and into what is in fact a single EU market. It was able to see past its laws and case-law that considered names borrowed from foreign languages to be simply arbitrary, capricious and fanciful unless they resembled a Spanish word, making it reasonable to assume that the average consumer will be familiar with their meaning, or that they would have otherwise acquired a genuine meaning on the national market. Here, the Spanish court went beyond looking at the case from just one point of view, a view arising from the underlying assumptions and concepts within its own national legal system. It refused to be a “Cyclops” as Jukka Snell would put it; 51 on the contrary, it could be compared to “Hercules” 52 with a full understanding of the situation of the market, the pubic interests at stake, and the economic and competition justifications of trademark laws. Still, the Spanish court was not certain as to whether these limitations and restrictions to the free movement of goods can be justifiable based on Article 30 EC, despite the fact that in Case 192/73 Van Zuylen [1974] ECR 731, the ECJ affirmed the pre-eminence of the principle of free movement of goods over the national protection of industrial property rights and stated that “the reverse would lead to an undesirable partitioning of the markets, prejudicial to the free movement of goods and giving rise to disguised restrictions on trade between Member States.” 53 Also, due to the existence of a previous decision by the ECJ with respect to the same trademark and the same parties where Matratzen Concord applied for an OHIM registration of a composite word and figurative mark including the term MATRATZEN that was opposed by Hukla, based on the national Spanish trademark MATRATZEN and the prevalence of the latter, as confirmed by an ECJ decision, 54 the Spanish court may not 50 Id. at para 14 J. SNELL, European courts and intellectual property: a tale of Hercules, Zeus and Cyclops, 29 European Law Review 2004, 29(2), ff. 178-197, at 195 52 Id. at 184, the author said “only Hercules Judges of superhuman qualities could deal with the task facing the judges of the Court. It may simply be impossible for mere mortals to be at the same time experts in banking law, company law, competition law, constitutional law, consumer law, customs law, employment law, environmental law, human rights law, immigration law, intellectual property law, private international law, public procurement law, social security law, tax law, and so on” referring to the difficult task of the ECJ Judges 53 Case «Matratzen» C-421/04 Matratzen Concord AG v Hukla Germany SA., supra at note 48, at para 15 54 The opposition was accepted by the Second Board of Appeal of OHIM on 31 October 2000, then action brought by Matratzen Concord against this decision was rejected by the judgment of the Court of First Instance of 23 October 2002 in Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (Matratzen) [2002] ECR II-4335), confirmed on appeal by the order of the Court of Justice of 28 April 2004 in Case C51 15 have had the courage to issue such a decision without referring it to the ECJ, perhaps to avoid contradictory outcomes. The ECJ’s judgment can be summarised as follows: “In a field which has been exhaustively harmonised at Community level, a national measure must be assessed in the light of the provisions of that harmonising measure and not of those of primary law. Consequently, it is Directive 89/104 to approximate the laws of the Member States relating to trade marks, and in particular Article 3 thereof, on the absolute grounds for refusal or invalidity of registration, and not Articles 28 EC and 30 EC, which must be assessed to determine whether Community law precludes the registration of a national trade mark.” 55 “Article 3(1)(b) and (c) of Directive 89/104 to approximate the laws of the Member States relating to trade marks does not preclude the registration in a Member State, as a national trade mark, of a term borrowed from the language of another Member State in which it is devoid of distinctive character or descriptive of the goods or services in respect of which registration is sought, unless the relevant parties in the Member State in which registration is sought are capable of identifying the meaning of the term.” 56 “In the context of the application of the principle of the free movement of goods, the Treaty does not affect the existence of rights recognised by the legislation of a Member State in matters of intellectual property, but only restricts, depending on the circumstances, the exercise of those rights. The principle of the free movement of goods therefore does not prohibit a Member State from registering as a national trade mark a sign which, in the language of another Member State, is devoid of distinctive character or is descriptive of the goods or services covered by the application for registration.” 57 The ECJ for its part failed to be a “Zeus” court, and could not formulate the much-needed general principle in the case of inherently descriptive trademarks in languages of other Member States. As Snell puts it, “it is to expect a court with the abilities of Zeus, whose daughter Pallas Athena sprang fully formed from his head” 58 from the first time. However, this was not the court’s first encounter with this same case and it may not be the last. On the contrary, the decision was detrimental and it was a killing blow to descriptive trademarks, described as “descriptive trademarks laid to rest”. It set new rules and guidance to the national courts to accept merely descriptive and generic marks in other languages as original, as long as the consumers do not understand their meaning, since it would fulfil the “distinguishing” function of the descriptiveness provision, while giving a blind eye to the other “protective” function of the same provision. The function that is most needed among the Member States in the single market is to avoid a perpetual monopoly over a generic trademark in a market where people are encouraged to learn other languages and to freely move from one Member State to another in the course of 3/03 P Matratzen Concord v OHIM [2004] ECR I-3657, Case «Matratzen» C-421/04, supra at note 48, at para. 9 55 See Case «Matratzen» C-421/04, supra at note 48, at paras 20-21 56 See Case «Matratzen» C-421/04, supra at note 48, at paras 26, 32, operative part of the judgment 57 See Case «Matratzen» C-421/04, supra at note 48, at paras 28-30 of the judgment 58 J. SNELL, European courts and intellectual property: a tale of Hercules, Zeus and Cyclops, supra at note 51, at 190 16 trade. The court did not go deep into the argument of whether the registration of this inherently descriptive and generic trademark does or does not in itself constitute an unjustified restriction to the free movement of goods. 59 It only discussed the effects of the EU Treaty on nationally granted rights. This decision will have negative effects on the application by the national courts of these guidelines in assessing descriptiveness in foreign languages. For instance, if the German court were strict in applying the rules on descriptiveness with respect to generic words in other languages, then by applying these guidelines, it will only have to take into consideration the average consumers in Germany, without considering the actual meaning of the word and its effects on other traders. After the ECJ issued such a decision regarding a generic word (“MATRATZEN”) in the second most spoken official language in the EU, concerning free movement of goods, there is little point in looking into cases of other official EU languages that are less widely spoken, let alone minority or non-indigenous languages, for their situation will be no different, as confirmed by another ECJ decision 60. The tension between these two public interests, embodied in the consumer’s desire to distinguish the origin of the goods or services and the need to protect competition by keeping descriptive trademarks freely available to all undertakings now and in the future, is evident in the jurisprudence of the courts of the Union, and has not yet been adequately resolved. 61 The importance of this issue with respect to descriptive trademarks in foreign languages within the national trademark registrations, which have negative implications on the internal market and on the registration of Community trademarks, is discussed below. 6.2. Community Trademarks When it comes to generic and inherently descriptive trademarks, it is within absolute grounds of refusal stipulated in Article 7(1)(c) 62 of the CTMR. Also, Article 7(2) came to specify that Article 7(1) should apply even when the ground of refusal is obtained with respect to only one part of the Community. This is of great significance to trademarks that are inherently descriptive and generic, as it implies that they should be refused even if they are understood to be so by the consumers in only one part of the Community. However, there are lingering questions with respect to such grounds of refusal administered by the Office for Harmonization in the Internal Market (OHIM), and how 59 M. MONDOLFO, Slipping through our fingers - How weak marks turned out to be strongly protected in the EU, in ECTA Gazette November 2011, at 14, available online (last visited Feb. 21, 12): http://www.ecta.org/IMG/pdf/slipping_through_our_fingers_by_mara_mondolfo.pdf 60 Case T-286/02 Oriental Kitchen SARL v OHIM and Mou Dybfrost A/S, ECR (2003) II-04953, «Kiap Mou», will be discussed in details later on in the paper. 61 M. HANDLER, The distinctive problem of European Trade Mark law, supra at note 47, at 306 62 The manual concerning proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part B: Examination, at para. 7.3.2, available online (last visited Feb. 21, 12): http://oami.europa.eu/ows/rw/resource/documents/CTM/legalReferences/partb_examination.pdf 17 the OHIM would apply these rules in practice during examination, and what problems might arise during the procedure. Although there are 23 different official languages, not all of them are equal in practice. This is because English is usually treated as primus inter pares, and also because there are many minority, immigrant, and foreign languages that are used within the Community. How all of this applies to the CTM system and how the OHIM deals with it, is discussed next. 6.2.1. Absolute Grounds of Refusal The languages of the OHIM are English, French, German, Italian and Spanish. 63 The CTM application can be in any EU official language. However, if the application was filed in a language that is not one of the languages of the OHIM, then the applicant will have to designate one of these five languages to be the “second language” in their application, to which the Office will translate the application and use as the language of communication for any future proceeding. 64 When examining one-word trademarks, the OHIM applies absolute grounds of refusal based on Article 7(1)(c), in case there are any grounds for the same in any part of the Community as per Article 7(2). 65 The OHIM defines a “part of the Community” as one Member State or a group of Member States, but not a part of a Member State, however large it might be. As regards the meaning of a word, all the official languages of the European Community must be consulted and that is why a language check is undertaken by translating the word into all these languages. If the word-mark is found to be descriptive in any of the official languages, it is rejected by the OHIM, regardless of the size or population of the respective country. 66 Here, the CTM in the EU trademark system can be compared to post-Babel Babylon, where translators and interpreters of various ancient Near-Eastern languages facilitated communication and the administration of justice under Hammurabi’s rule, which promoted the prosperity of the city. 67 63 Article 119.1 CTMR Article 119.3 of the CTMR, also for more information about how these languages where chosen and the famous Kik case C-361/01 check R. CREECH, “Law and Language in the European Union”, supra at note 3, pp. 32 to 38 65 The manual concerning proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part B: Examination, supra at note 61, at para. 7.3.2 66 The manual concerning proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part B: Examination, supra at note 61, at para. 1.3 67 R. CREECH, “Law and Language in the European Union”, supra at note 3, at 28, “Berteloot is nonetheless rather sanguine about the performance of translators of at the ECJ and has linked the institution not to the Biblical tower of Babel with its attendant confusion, but rather to the post-Babel Babylon, where translators and interpreters of various ancient Near-Eastern languages, such as Sumerian, Akkadian, and Babylonian, facilitated the orderly administration or justice..” 64 18 6.2.1.1. EU Official Languages Therefore, it can be said that all 23 official EU languages have the same status during CTM examination. Thus, any mark that is inherently descriptive or generic in any of these languages would be rejected based on absolute grounds of refusal as per Article 7(1)(c). Accordingly, if the mark “MATRATZEN” were applied for as a CTM, it would have been refused. There are many examples and cases where the OHIM rejected marks that are inherently descriptive and generic in official languages of the EU. 68 6.2.1.2. EU Regional and Minority Languages For regional and minority languages, marks are not supposed to be assessed as to whether they are generic in any of these languages, since the OHIM manual states that a part of a Member State is not considered as a part of the Community, as per Article 7(2) CTMR. This is also confirmed by the Study on the Overall Functioning of the European Trademark System that was carried out on the behest of EU Commission, where the OHIM is considered to have, so far, not taken into account languages recognised at national level, such as Basque or Catalan in Spain. 69 Nevertheless, it appears that the OHIM tried to use a different approach with respect to trademarks that are descriptive in minority languages, as seen in 2010 when the OHIM Boards of Appeal rejected the mark ESPETEC, which in Catalan means “a type of sausage that is not cooked but left to dry in order to be eaten” for raw pork and dried meat in class 29 (R0312/2010-2). 70 The OHIM decision was appealed, however, and the general court has not yet issued its decision. 71 Should the decision come to annul the Boards of Appeal’s decision, this generic trademark would be registered, and the proprietor of said mark would be able to stop anyone in the EU, even in Spain where Catalan is an official national language, from using the word “ESPETEC” over dried pork sausages despite the fact that it is generic and should be allowed in trade. This is the court’s chance to acknowledge the implications of such monopolies, even though it is not in this case dealing with one of the official EU languages. It is worth noting that some official EU languages are less widely spread than Catalan, which is spoken by more than 7 million people. 68 Check case «Prana Haus» T-226/07 Prana Haus GmbH v OHIM, ECR (2008) II-00184; case T-219/00 Ellos AB v. UAMI, ECR (2002) II-00753, case «ELLOS»; case T-281/09 Deutsche Steinzeug Cremer & Breuer AG vs. OHIM, ECR not published yet, «CHROMA» (the sign applied for cannot call into question this result (paras.43 to 48))(it follows that the Board has not erred in confirming the examiner’s refusal to register the sign applied for, in accordance with Article 7 (1) (c) CTMR (para.49)) 69 Study on the Overall Functioning of the European Trade Mark System (Allenbach Study), supra at note 4, at para. 3.40 70 OHIM Boards of Appeal, Yearly Overview, Decisions of the Boards of Appeal 2010, para. 7.3.2, available online (last visited Feb. 21, 12): http://oami.europa.eu/ows/rw/resource/documents/OHIM/OHIMPublications/boa_case_law-2010.pdf 71 Case T-72/11 Sogepi Consulting y Publicidad v OHIM, case «ESPETEC», still in progress 19 6.2.1.3. Immigrant and Non-indigenous languages As far as examination for absolute grounds of refusal for words that are generic and inherently descriptive is concerned, the OHIM has not recognised languages spoken by immigrant minorities in the Member States, such as Turkish or Arabic in France and Germany, or Russian in the Baltic States. For instance, the word-mark “GAZOZ,” the Turkish word for sparkling mineral water, has been registered as a CTM in class 32 for mineral water, after which an infringement action against the use of the sign “GAZOZ” on mineral water bottles distributed in grocery shops specialising in Turkish food was filed in Germany. The German Supreme Court subsequently dismissed the action because the use was held to be descriptive (German Supreme Court, Case I ZR 23/02). 72 The OHIM examiners went to the extent of refusing the trademark application for “GARUM,” which was a word used by ancient Romans to mean “a fish seasoning” under class 29 “fish and canned fish.” But the Court of First Instance annulled the OHIM Boards of Appeal’s decision, citing that the average consumer does not understand the Latin language and is even less familiar with specialised Latin words that are no longer in use, and that there is no evidence that the term is known to restaurant owners or that it is used in the European sector of gastronomy in its original form. 73 This is not a clear case of descriptiveness because it deals with a dead language and the court had to look at whether it is known among the average consumers and also among other traders in the respective industry sector. By that, the court looked into the distinguishing function of the descriptiveness provision without ignoring the protective function. 6.2.2. Relative Grounds of Refusal A consequence of the different approaches employed by the TMD and the CTMR in dealing with descriptive trademarks in languages other than that of the Member State where registration is sought, specifically inherently descriptive and generic words, together with the lack of any specific provision of harmonisation in the Directive concerning this issue, is that trademarks that are descriptive in a European official language can be registered at national level. As a result, when someone seeks to register a composite mark that includes a nationally trademarked descriptive word, the mark is refused on relative grounds, as per Article 8(1)(d) CTMR, and upon opposition from the proprietor of the national trademark. It follows that such generic word registrations deprive other traders of their ability to use those terms on composite marks, even when the generic portion is not the central element of the desired mark. The MATRATZEN case shall be examined again in this respect. 72 Study on the Overall Functioning of the European Trade Mark System (Allenbach Study), supra at note 4, at para. 3.41 73 See case «Garum» T-341/06 Compagnie générale de diététique SAS v OHIM, ERC (2008) II-00035 20 6.2.2.1. EU Official Languages When looking into the possibility of confusion between a CTM application and an earlier national trademark, it is the point of view of the average consumer in the territory of that Member State which should be taken into consideration. That is what happened in the MATRATZEN case C-3/03 before the ECJ. The likelihood of confusion between the earlier trademark “MATRATZEN” meaning “mattresses” registered in class 20 and the CTM application “MATRATZEN CONCORD”, as shown below, was examined from the perspective of the average Spanish consumer, unaware of the descriptive nature of the word MATRATZEN in the German language, 74 regardless of the fact that German is the second most spoken language in the EU and the descriptiveness of the word would be recognised by many EU consumers who understand German. MATRATZEN As a result, a German company using the word for mattress in German in the course of trade was denied both a CTM registration and use of its trademark in Spain in the course of trade. This is a direct result of the application of the TMD that went silent on the issue of inherent descriptiveness between languages of the Member States and went short of achieving full harmonisation on that front, followed by the refusal of the ECJ to recognise this as a de facto obstacle to trade. It results in monopolies over generic words by traders, to the detriment of competitors from other countries. Because of the existence of this “mattress” monopoly by Hukla in Spain, no German or Austrian trader in the field of mattresses is able to import products with the word “MATRATZEN” in the description. 6.2.2.2. Minority and Immigrant Languages A CTM application for the word “KIAP MOU” was opposed based on a prior national registration for the trademark “MOU” in the United Kingdom. The term “KIAP MOU” means “crispy pork” in Laotian and Thai. After the application was denied by the OHIM, based on likelihood of confusion, the applicant appealed the decision arguing that, to their Indochinese clients, the word “MOU” would be viewed as descriptive or generic of pork, and therefore the opposing party’s trademark should be invalidated. As for the mark “KIAP MOU,” the average consumer would consider it is a fanciful creation that should be allowed trademark registration. Here, the Court of First Instance also rejected the applicant’s claims, by considering consumers in the UK as a whole and not only the Indochinese consumers, thus the prior trademark was not ruled descriptive and as a result, 74 Study on the Overall Functioning of the European Trade Mark System (Allenbach Study), supra at note 4, at para. 3.47 21 the application was once again rejected based on likelihood of confusion. 75 It is worth mentioning that the OHIM considers trademarks to be descriptive under Article 7(1)(c) CTMR either for the general public, should the goods be addressed to them, or for a specialised pubic irrespective of whether the goods are also addressed to the general public. 76 Therefore, the OHIM would have considered the specialised public and not the general public when assessing the descriptiveness of the trademark, notwithstanding the fact that it is not in one of the EU official languages. On the contrary, if the “KIAP MOU” and “ESPETEC” cases were to be applied here, both of which happen to be within the food industry in reference to a kind of pork, one may think that each might have been found inherently descriptive with respect to the relevant public. It could be argued that in the case of inherently descriptive or generic trademarks, Article 12 of the CTMR comes into play. 77 That, however, would mean that infringement procedures have already taken place with trade losses in case of enforcement and coercive measures, and thus it should not come to that point and should be resolved at an earlier stage during registration. In particular, granting monopolies over generic trademarks within the EU internal market has a magnified effect due to the European Directive on the Enforcement of Intellectual Property Rights that came to harmonise the enforcement procedures within the Member States. Also, in a recent decision, the ECJ held that the scope of the prohibition against further infringement or threatened infringement of a CTM extends, including coercive measures, as a rule, to the entire European Union. 78 It is a normal consequence of exposure to other cultures and markets that some words in a country’s language may be sufficiently blended into languages of other countries. As a result, people in some countries may voice concerns that their language is being altered. These countries may try to protect their native languages, yet as much as they try, they cannot fossilise the linguistic picture of a country, as these efforts are pre-destined to fail on the long run, due to the dynamic nature of languages that refuse ossification. 79 Therefore, even with a trademark that is descriptive of the goods or services in a language other than English or in minority languages, it should be admitted that the word is applied generically and it would grow to have this meaning even among the initial consumers that do not recognise its literal meaning at first. The proprietors of such trademarks do not arbitrarily choose them, and even if this monopolistic effect is not evident to the national trademark office, national courts or sometimes the Union courts, possibly due to the fact 75 See R. CREECH, “Law and Language in the European Union”, supra at note 3, pp. 94-95 and Study on the Overall Functioning of the European Trade Mark System (Allenbach Study), supra at note 4, at para 3.48 76 The manual concerning proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part B: Examination, supra at note 61, at para. 7.3.2 77 As per the provocations of this article a CTM shall not entitle the proprietor to prohibit a third party from using in the course of trade: (b) indications concerning kind, quality, intended purpose,… or other characteristics of the goods or services. 78 See Directive 2004/EC on the Enforcement of Intellectual Property Rights and J. SMITH and J. GAULD, The territorial effect of sanctions under the Community Trade Marks Regulation: the ECJ delivers its judgment in DHL v Chronopost, supra at note 32, at 588 79 R. CREECH, “Law and Language in the European Union”, supra at note 3, at 96 22 that there are other signs within the State for designating the same character of the goods or services and irrespective of the current number of competitors, that should not affect the application of Article 3(1)(c) TMD. 80 It would still be a perpetual right in a multilingual community, whose effect can be seen by future competitors and consumers. It can be observed from the above that the OHIM tries to apply Article 7(1)(c) CTMR in a way that would result in no registrations of descriptive trademarks in languages of the Member States and in minority languages. So far, it has been proven successful with respect to the former, thanks to the existence of the provision in Article 7(1)(c). Still, even if the OHIM tries to extend the concept of inherent descriptiveness to minority languages, the Office inevitably hits the brick wall of Union courts’ judgments and national registrations of generic trademarks. In this sense, descriptive marks in the EU are stuck between Babel and Babylon. The net result is the creation of monopolies over generic terms, which would constitute an obstacle to trade and free movement of goods, in line with neither the EC Treaty nor the foundational intent of the TMD or the CTMR. 6.3. Shared Objective Despite the dual nature of the overall EU trademark system, the two instruments that govern this area of law at the Community level share the same long-term objective, which is to facilitate the free movement of goods and freedom to provide services in the internal market, which is, in turn, in itself a foundational element of the EU Treaty and the Union. In light of that, and to support the goal of fostering and creating a wellfunctional single market, there is no alternative to the harmonisation of laws, even if it is a long-term process that demands authoritative interpretations of the TMD by the ECJ in addition to legal harmonisation. 81 There may be a number of measures that can assist harmonisation. For instance, a certain doctrine can be adopted by all of the national offices if suitable in multilingual contexts. 7. IN SEARCH OF AN ALTERNATIVE In search of an alternative approach, or what could be lex ferenda for the national trademark systems in the EU, one may look to the United States, another economic superpower that is spread over a vast territory, has many minority and immigrant languages, is central to world trade, and constantly deals with trademarks that are descriptive in languages other than English and minority languages. 80 See case C-363/99 Koninklijke KPN Nederland v Benelux Merkenbureau, ECR (2004) I-1619, «Postkantoor», at para. 61 81 Study on the Overall Functioning of the European Trade Mark System (Allenbach Study), supra at note 4, at para. 5.1.1 23 The US trademark system is governed by the Lanham Act of 1946 82. Sections 2 and 3 of the Act provide the grounds that govern trademark refusal, including Section 2(e)(1) that prohibits the registration of marks that are “merely descriptive” of the goods. 83 This section can be seen as an equivalent of Article 3(1)(c) TMD and Article 7(1)(c) CTMR. Although English is the official language of the United States, there is recognition of the multilingual character of consumers. 84 As a result, the doctrine of foreign equivalents is applied to determine the descriptiveness of foreign words. 85 7.1. The Doctrine of Foreign Equivalents The doctrine of foreign equivalents applies to words or terms that are common in all modern languages, excluding dead, obscure or unusual languages. It requires the translation of foreign words into English before determining their descriptiveness. 86 The examining attorney should thus research the English translation of each foreign word by using resources such as dictionaries, internet and online databases, in order to make certain whether there is sufficient evidence to support the application of the doctrine. If there is evidence that the English translation is “literal and direct,” then the doctrine should be applied. 87 An example of applying the doctrine of foreign equivalents under the US law is the cancellation of the mark “HA-LUSH-KA,” which is a phonetic spelling of the Hungarian word for noodles. 88 Should the national trademark systems in Europe apply a similar doctrine, words such as “MATRATZEN” and “MOU,” would never have been accepted for registration. Also, this doctrine is applied during court proceedings. For instance, the mark “OTOKOYMA,” during an infringement proceeding, was considered generic for a type of Japanese Sake, 89 where the court of appeal held the exclusion of this evidence and applied the doctrine of foreign equivalents upon which it vacated granting a preliminary injunction. 90 The courts also apply the doctrine when a trademark is made of more than one word and one of them is merely descriptive. In the case of Enrique Bernat F., S.A. v. Guadalajara, Inc., 91 the word “CHUPA” in the registered trademark “CHUPA CHUPS” was 82 15 U.S.C. §§ 1051-1127 15 U.S.C. §1051(e)(1) 84 Restatement of the Law (Third), Unfair Competition § 14 (1995) 85 See R. SCHECHTER and J. THOMAS, Intellectual Property The Law of Copyrights, Patents, and Trademarks, supra at note 5, at 591-593, and Trademark Distinctiveness in a Multilingual Context: Harmonization of the Treatment of Marks in the European Union and the United States, San Diego Int’l LJ, Vol. 4 513, 2003, p. 521 86 Examination Guide 1-08 The Doctrine of Foreign Equivalents and Likelihood of Confusion, USPTO, Issued April 23, 2008, III available online: http://www.uspto.gov/trademarks/resources/exam/examguide1_08.jsp 87 Id. 88 Trademark Distinctiveness in a Multilingual Context: Harmonization of the Treatment of Marks in the European Union and the United States, supra at note 84, at 526 89 Otokoyama Co., Ltd v. Wine of Japan Import Inc., 175 F.3d 266 (2d Cir. 1999) 90 Trademark Distinctiveness in a Multilingual Context: Harmonization of the Treatment of Marks in the European Union and the United States, supra at note 84, at 539 91 Enrique Bernat F., S.A. v. Guadalajara, Inc., 210 F.3d 439, (5th Cir. 2000) 83 24 considered by the court of appeal to be generic for lollipops, as it is commonly used in Spanish. Thus, the court vacated a preliminary injunction against “CHUPA GURTS,” since only the non-generic parts of these trademarks were compared and were found not to be similar. The court found granting a preliminary injunction by the district court to be an abuse of discretion because it had been based on erroneous likelihood of confusion. 92 By drawing a simple comparison between the US case-law and the EU cases discussed above, applying a similar doctrine in the EU at the national level and by the Union courts could be a solution in avoiding the grant of any further monopolies over merely descriptive and generic words. Until such a doctrine becomes an applicable practice in the EU, there are many other options of cooperation between the offices and the CTM for the sake of legal alignment. 93 92 Trademark Distinctiveness in a Multilingual Context: Harmonization of the Treatment of Marks in the European Union and the United States, supra at note 84, at 539 93 Study on the Overall Functioning of the European Trade Mark System (Allenbach Study), supra at note 4, at Part VII Conclusions 25 8. CONCLUSION The confusion within the ECJ when it comes to descriptive marks is a result of a series of decisions, which appear to take different views on the aim of Section 3(1)(c) TMD. The effect of this confusion has left the laws of the Member States in great uncertainty. 94 Between the two ends of the spectrum, i.e. what is inherently distinctive and what is inherently descriptive and generic, there is a host of problematic examples. 95 The aim of this paper is neither to clarify the methods, policies, and the public interests that should be taken into account, nor to say whether importance should be given to the “distinguishing function” or to the “protective function” of the descriptiveness provision in the general sense. That would depend on many variables, even when implementing the exact same legal provisions, such as the case itself, the approach, the system, the examiner, and the examination procedure, which is as a whole, to a great extent, a subjective process and never an easy task. 96 Still, this same confusion should be reduced to a minimum on the descriptiveness front. Trademark registries in a union of tightly intertwined commercial transactions, where borders have been erased in an economic sense, should not turn a blind eye to generic trademarks and should not allow one trader to monopolise them. A balance should be struck between what can be taken from the public domain and what cannot. 97 The US doctrine of foreign equivalents can, in this sense, strike a balance with respect to the protective function end of the spectrum in the case of generic words. In Europe, where this is a matter of policy, the national trademarks can at least have such a doctrine applied. Also, for both the Member States and the Union to fulfil their goal towards prosperity and trade without boundaries consistent with their pivotal role in international trade, foreign languages of the emerging economic powers should also be looked at. 94 L. BENTLY and B. SHERMAN, Intellectual Property Law, Second Edition, 2008, Oxford University Press p. 803 95 Id. at 805 96 I. SIMON, Trademarks in Trouble, E.I.P.R. 2005, 27(2), ff. 71-75, at 72 “sometimes it is hard to be a trademark examiner” 97 L. BENTLY and B. SHERMAN, Intellectual Property Law, supra at note 92, at 804 26 9. BIBLIOGRAPHY Books: J. AMMAR, Think Consumer: The Enforcement of the Trade Mark Quality Guarantee Revisited, A Legal and Economic Analysis, Cambridge Scholars Publishing, 2011 L. BENTLY and B. SHERMAN, Intellectual Property Law, Second Edition, 2008, Oxford University Press W. R. CORNISH, D. LLEWELYN and T. APLIN, Intellectual Property: Patents, Copyright, Trademarks and Allied Rights, 7th edition, Sweet & Maxwell, 2010 R. CREECH, Law and Language in the European Union: the Paradox of a Babel United in Diversity, European Law Publishing, 2005 R. SCHECHTER and J. THOMAS, Intellectual Property The Law of Copyrights, Patents, and Trademarks, Thomson West, USA, 2003 Articles: N. BOTTERO, A. MANGANI, and M. RICOLFI, The Extended Protection of “Strong” Trademarks, 11 Marquette Intellectual Property Law Review 2007, ff. 265 A. FORREST, The Politics of Language in the European Union, European Review 1998, Vol. 6, No. 3, 299-319 M. HANDLER, The distinctive problem of European Trade Mark law, 27:9 European Intellectual Property Review (2005), 306-312 M. MONDOLFO, Slipping through our fingers - How weak marks turned out to be strongly protected in the EU, in ECTA Gazette November 2011 H. ROSLER, The rationale for European trade mark protection, 29:3 European Intellectual Property Review (2007), ff. 100 S. SCHNELL, The Community trade mark: unitary EU right - EU-wide injunction??, E.I.P.R. 2011, 33(4), 210-226 I. SIMON, Trademarks in Trouble, E.I.P.R. 2005, 27(2), 71-75 J. SMITH and J. GAULD, The territorial effect of sanctions under the Community Trade Marks Regulation: the ECJ delivers its judgment in DHL v Chronopost, E.I.P.R. 2011, 33(9), 588-590 27 J. SNELL, European courts and intellectual property: a tale of Hercules, Zeus and Cyclops, 29 European Law Review 2004, 29(2), 178-197 Trademark Distinctiveness in a Multilingual Context: Harmonization of the Treatment of Marks in the European Union and the United States, San Diego Int’l LJ, Vol. 4 513, 2003 EU Cases: European General Court December 9, 2010, Case T-307/09 Liz Earle Beauty v OHIM, not published in the ECR, case «Naturally active» European Court of First Instance November 26, 2008, Case T-435/07 New Look Ltd v OHIM, ECR (2008) II-00296, case «New Look» European Court of Justice February 13, 2008, case C-212/07, Compagnie générale de diététique SAS v OHIM, ECR (2008) I-00025, case «HAIRTRANSFER» European Court of Justice December 2, 2009, case C-553/08 Powerserv v OHIM & Manpower Inc., ECR (2009) I-11361, case «Manpower» European Court of Justice October 17, 1990, case C-10/89 CNL-SUCAL v HAG GF, ECR (1990) I-03711, case «HAG II» European Court of Justice March 9, 2006, case C-421/04 Matratzen Concord AG v Hukla Germany SA., ECR (2006) I-02303, case «Matratzen» European Court of Justice April 28, 2004, case C-3/03 P Matratzen Concord v OHIM, ECR (2004) I-3657, case «Matratzen» European Court of First Instance October 23,2003, Case T-6/01 Matratzen Concord v OHIM – Hukla Germany, ECR (2002) II-4335, case «Matratzen» European Court of First Instance November 25, 2003, case T-286/02 Oriental Kitchen SARL v OHIM and Mou Dybfrost A/S, ECR (2003) II-04953, case «Kiap Mou» European Court of First Instance September 17, 2008, T-226/07 Prana Haus GmbH v OHIM, ECR (2008) II-00184, case «Prana Haus» European Court of First Instance February 27, 2002, case T-219/00 Ellos AB v. UAMI, ECR (2002) II-00753, case «ELLOS» European General Court December 16, 2010, case T-281/09 Deutsche Steinzeug Cremer & Breuer AG vs. OHIM, ECR not published yet, «CHROMA» 28 European Court of first Instance, case T-72/11 Sogepi Consulting y Publicidad v OHIM, case «ESPETEC», still in progress European Court First Instance 12 March 2008, Case T-341/06 Compagnie générale de diététique SAS v OHIM, ERC (2008) II-00035, case «Garum» European Court of Justice February 12, 2004, case C-363/99 Koninklijke KPN Nederland v Benelux‐Merkenbureau, ECR (2004) I-1619, «Postkantoor» US Cases: U.S. Court of Appeals Second Circuit April 29, 1999, Otokoyama Co., Ltd v. Wine of Japan Import Inc., 175 F.3d 266, case «Otokoyama » U.S. Court of Appeals Fifth Circuit April 18, 2000, Enrique Bernat F., S.A. v. Guadalajara Inc., 210 F.3d 439, case «Chupa Chups» Laws and Treaties: First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks Council Regulation 40/94/EC of 20 December 1993 on the Community trade mark Treaty establishing the European Economic Community Directive 2004/EC on the Enforcement of Intellectual Property Rights Lanham Act of 1946. Sections 2 and 3 Restatement of the Law (Third), Unfair Competition § 14 (1995) Reports: Study on the Overall Functioning of the European Trade Mark System, 15 February 2011, Max Planck Institute for Intellectual Property and Competition Law Munich at 4 Speaking for Europe: Languages in the European Union, European Commission Directorate-General for Communication, Office for Official Publications of the European Communities, 2008, Luxembourg Report of the European Parliament of 14 July 2003 with recommendations to the Commission on European Regional and Lesser used Languages - the Languages of Minorities in the EU- in the Context of Enlargement and Cultural Diversity, this number must have increased since the last EU enlargement 29 OHIM Boards of Appeal Yearly Overview, Decisions of the Boards of Appeal 2010, available online (accessed 21 February 2012): http://oami.europa.eu/ows/rw/resource/documents/OHIM/OHIMPublications/boa_case_l aw-2010.pdf Manuals: Examination Guide 1-08 Confusion, Issued April 23, 2008, available online: http://www.uspto.gov/trademarks/resources/exam/examguide1_08.jsp T he D octrine of Foreign 'The manual concerning proceedings before the Office for Harmonization in the Internal Market (Trade Marks and Designs), Part B: Examination, available online (accessed 21 February 2012) http://oami.europa.eu/ows/rw/resource/documents/CTM/legalReferences/partb_examinati on.pdf