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First decision of the European Court of Justice on the Community Trade Mark - a revolution

Added: (Mon Sep 24 2001)

Pressbox (Press Release) - ALLEN & OVERY
PRESS RELEASE

26 September 2001

DESCRIPTIVE TRADEMARKS CAN FINALLY
BE PROTECTED

European Court of Justice eliminates a discrimination between companies

In its first judgement on the community trademark regulation, the European Court of Justice has chosen to interpret 'trademark' in a modern, non-discriminatory manner, rejecting the interpretation by the European Trademark Office in Alicante.

The European Trademark Office has always refused to register trademarks that it judged to be too 'descriptive', basing its refusal on a very broad interpretation of the prohibition to register 'marks consisting exclusively of descriptive signs or indications'.

As a consequence the numerous important descriptive trademarks such as "France Telecom", "Quick View", "Oilgear", "Vittel", "Bio-Milk", "Trusted Link", "Prémaman", "Netmeeting", "Quick Fix", "Mini" could not be protected as a Community Trademark.

Procter & Gamble took the refusal to register its trademark 'Baby-Dry' for layers to the European Court of Justice, engaging Thierry van Innis, partner of Allen & Overy in Belgium, and a prominent trademark litigator, to defend its case.

Following several appeals, the European Court of Justice has now judged Baby-Dry to be a 'valid' trademark, adopting the new and modern interpretation Thierry van Innis already supported in his book 'Les Signes Distinctifs' and forcing The European Trademark Office to register descriptive trademarks.
Thierry van Innis comments:
"I am very pleased with the Courts' brave decision. It saves the system of Community Trademarks being the best tool to achieve the single market. The now condemned approach of the Office in Alicante led to exclude an important category of trademarks, which could only be protected under the subsisting national systems. The Community Trademark Regulation can only be a success if it's open to all trademarks."
For more information, please contact Thierry van Innis on +32 2 778 2569 or Barend Blondé on +32 497 51 4762.

Note for Editors
1) Allen & Overy is a premier international law firm with over 4,400 staff, including some 390 partners, working in 25 major centres worldwide.

2) Thierry van Innis is a partner in our Brussels office specialising in Intellectual Property. He wrote the authoritative book on trademark law "Les signes distinctifs (1997)" and is past president of the Benelux Association of Trademark and Design Attorneys.


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