In a landmark decision, the Court of Justice has overturned the position taken by OHIM concerning the protection of packaging.

In two joint cases of the Spanish company FREIXENET, S.A., represented by our firm together with the Brussels firm SIMONT BRAUN, the European Court of Justice has decided that the OHIM Board of Appeal and the General Court of Justice made an error by finding that the formal appearance of a bottle does not fulfil the function of the mark, but that the label does.

The Court states that OHIM and the General Court findings would be equivalent to automatically excluding from trade mark protection the packaging of the product itself that does not contain an inscription or a word element, which goes against the definition of a trade mark established by article 4 of the CTMR, which establishes that “a Community trade mark may consist of (…) the shape of goods or of their packaging…”.

The ECJ has established that what had to be examined was whether the marks for which registration was sought varied so significantly from the norm or custom of the sector that they had distinctive character. Obviously, this examination must be carried out taking into consideration the norm or customs of the sector on the filing date of the applications.

The ECJ has also ordered OHIM to pay the costs of the proceedings.

This decision will oblige OHIM in the future to motivate its objections on lack of distinctiveness by examining the situation of the mark on the filing date of any CTM application, and only object to its registration when the sign applied for does not vary so significantly from the norm or customs at that date so as to consider that it has distinctive character.

So far OHIM has repeatedly, as in the cases overturned, been taking the position to object to and refuse CTM applications, arguing lack of distinctiveness by simply making general and subjective argumentations of what the situation was on the filing date without any real analysis of the facts nor comparison of those facts with the CTM application.

The ECJ decision constitutes an important step towards the long-awaited wish of CTM applicants to have more legal certainty and avoid the position adopted by OHIM.

On March 24, 2010, the practice for recording assignments, licences and changes of name for patents and utility models in Spain changed.

From now on, it will be possible to make these recordals by submitting the following documents:

1)       ASSIGNMENTS & LICENCES

a)       The original assignment or licence document with the signatures of the parties, legalised by Notary Public and with the Apostille or corresponding Consular legalisation; or

b)       a copy of document a) notarised and legalised with the Apostille or corresponding Consular legalisation; or

c)       a certificate of assignment or licence form signed by the assignor/licensor and assignee/licensee without any legalisation.

d)       In all cases, a power of attorney, signed by the applicant, who may be the assignor/licensor or the assignee/licensee, will be necessary. No legalisation of the signature will be required.

2)       CHANGES OF NAME

Only a power of attorney, as above, will be required. No evidence of the change of name will be required unless the Spanish Patent and Trade Mark Office raises any reasonable doubts about the certainty of the change.

As you will see, the above changes considerably simplify the burden of evidence for these recordals.

These changes do not mean that in order to record an assignment, licence or change of name, it is no longer required for a formal document of assignment, licence or change of name, valid according to the laws of the country of the parties, to exist, since otherwise the recordal would be void.

In addition, these changes also mean that it will no longer be necessary to show proof before the Spanish Patent and Trade Mark Office that the payment of the Tax on the Transmission of Property in Spain has been carried out.

Nevertheless, the obligation to make these payments prevails and we advise that they be made in all cases, since otherwise, the Spanish Tax Authorities could very easily see that they have not been paid (by simply checking the recordal at the Spanish Patent and Trade Mark Office) and order that these taxes be paid with fines. The Spanish Tax Authorities can claim and review these payments within 4 years.

If you need any additional information about these changes or if you have any questions, please do not hesitate to contact us.