Fordham Report 2014: Trade Mark Law and the CJEU

Katfriend James Nurton (editor, Managing Intellectual Property) chaired the keenly-awaited session on trade marks and the Court of Justice of the European Union (CJEU), which was opened by Allan Rosas -- a judge of the CJEU. Allan started with a confession that he was not an intellectual property expert [isn't that usually the case for CJEU judges, wonders Merpel] and a gentle introduction to the court itself.  Last year the General Court of the European Union heard some 300 Community trade mark (CTM) cases, of which around 10% go on appeal to the CJEU, while only five references for a preliminary ruling were made during that period.  Important cases are heard by the Grand Chamber of that court, particularly those that involve applications of the new technologies.

What does the future hold for the CJEU, Allan wondered. There has been talk of establishing a specialised trade mark court or IP court. Article 19 of the Union Treaty mentions the possibility of specialist courts, but only one exists at present and that's for dealing with staff matters.  There are around 1,400 pending cases before the General Court at the moment, as against some 700 for the CJEU, and the flow of new cases continues to rise.  After careful consideration it was decided to add to the number of General Court judges and use the option of specialised chambers within that court, since there may not always be the same high level of demand and a specialised court, once created, is difficult to get rid off before the judges "are falling from the table".

Allan also spoke of the CJEU's role in hearing appeals on CTM matters from the General Court (these are now processed in about half the time it took when he was appointed in 2002). The possibility of requiring leave to appeal is open, allowing an appeal only where there is a serious issue to be considered.

Four layers: good for cakes,
bad for CTM appeals

Paul Maier (Director, The European Observatory on Infringement of Intellectual Property Rights (OHIM), and a former Board of Appeal chair) was then brought into the fray. Said Paul, four levels of decisions is far too many (that's examiner or cancellation board, Board of Appeal, General Court, CJEU). When proposals for moderating the CTM system were made, this topic was omitted.  Said Paul, the General Court should only deal with appeals on substantive legal issues and not review all the factual elements of the decision too. This should cut down the volume of appeals quite substantially.  The system is also faulty in that the General Court's rulings on procedural issues result in cases being thrown back to the Boards of Appeal with little indication as to their substantive value.  Robin Jacob (Faculty of Laws, University College London, London) added to this by observing that the General Court has been far too lax with regard to submission of late evidence, while the CJEU has failed to control its own dockets, ending up less like a Supreme Court and more (per David Edward) like a very overworked Court of Appeal.

Peter Ruess (International School of Management, Frankfurt) chipped in at this point, observing that CTM appeals involve a colossal degree a delay in respect of matters that are essentially trivial, citing the words of this Kat in Case C‑383/12 P Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market, Société Elmar Wolf:

" Let's not lose sight of reality. This case isn't about liability of billions of euros of bad debt following sub-prime lending. It's not about the contested right to thousands of square kilometers of commercially exploitable land or seabed. It's not about the life or death of human beings. It's about the right to stick a picture of a canine mammal on machines for processing waste. In a more sensible world we should be able to dispose of these matters in a couple of hours and then get on with the important things in life. This is not one of them."

Katfriend Dev Gangjee (Faculty of Law, University of Oxford) added a consumer-oriented point: different areas of law call for different types of consumer. How far should the concept of the consumer be legally defined for the purposes of trade mark law, and how far should he be based in reality and evidence rather than in legal expression? Said Robin, the average consumer is "the top part of the bell curve".

At this point Allan Rosas returned to the discussion, broadly endorsing the comments of Paul and Robin. Right now there was a general reluctance to opt for Treaty changes, though he and some of his colleagues are thinking about the possibility that they might be needed.

James Nurton then raised the role of the Advocate General.  Why were they created in the first place? Explained Paul, it was thought handy to have an independent view to guide the then new court -- and some of their Opinions are of good quality, while others sadly are of less value.  Robin was not keen on the gap between hearing the Advocate General's arguments and getting the Opinion:

"When I've heard a case I want to write the judgment straight away.  Three months later you forget what the bloody case is all about".

Finally, Robin contrasted what appeared to be the very high quality of the legal content and the clarity of the CJEU's decisions on Value-Added Tax, which have never required any degree of clarification or course-correction, with those in the field of trade mark law -- which are of far poorer quality.