PRACTICE ROUND-UP

ECJ

Descriptive Marks: In a recent opinion, the Advocate-General interpreted the prohibition on the registration of descriptive marks as applying to marks with a descriptive meaning in the language of a Member State, where the mark is applied for in another Member State in which a significant proportion of traders and consumers can reasonably be expected to understand that meaning (C-421/04 MATRATZEN). “Matratzen” means mattress in German. An application to invalidate a Spanish trade mark registration for MATRATZEN covering mattresses had been referred to the European Court. The ECJ’s reaction is expected soon.

Third-Party Use: The ECJ’s ruling is also expected soon on whether third-party use relied on by a registered proprietor in, inter alia, non-use proceedings may be presumed to be use with consent (Case C-416/04 P The Sunrider Corp.). The Advocate-General championed this approach where the challenging party does not raise the issue of consent, and the third party has willingly co-operated in providing evidence of use.

Personal Names: The Advocate-General has confirmed that trade marks including personal names are assignable separately from a business just like other marks, and that confusion as to whether the named person is still involved with the business is not relevant deception as to intrinsic qualities of the goods or services which can lead to revocation (Case C-259/04 Elizabeth Florence Emanuel v Continental Shelf 128 Ltd.). If the ECJ follows, the U.K. Patent Office is likely to reject a claim that the ELIZABETH EMANUEL trade mark should be revoked following Ms Emanuel’s departure from the company to which she had assigned the right. Similar issues arose in Newman case in the English High Court, reported in this issue.