Legal Translations of European Trademarks
We’ve blogged about importance of accurate legal document translation services for the European contract law. Trademark law in Europe comprises of both European Union (EU) legislation, as well as the national laws of the 27 Member States. The Community Trademark Regulation (CTMR) of 1993 allows for the registration of Community trademarks that provide Community-wide protection.
Community trademarks are administered by the EU’s trademarks and designs office, which coexists with national trademarks laws, which have been substantially harmonized with the law of the EU over the course of the past decade. However, officially the EU has 25 different national trademark regimes (as Belgium, Luxembourg and the Netherlands established a common system in 1970).
The requirements for obtaining trademark protection through registration in Europe are, for the most part, consistent across all Member States. In short, trademark protection is available for all kinds of signs capable of distinguishing goods or services of one undertaking from those of others. These signs include traditional marks such as words, names and figurative marks, but also shapes and color/color combinations – and even non-visible signs like sounds.
To be entitled to protection, a sign must be capable of being represented graphically. In fact, case law has strictly interpreted this condition, requiring the representation to be ‘clear, precise, self-contained, easily accessible,
intelligible, durable and objective’. On the other hand, registration is specifically not allowed for marks ‘devoid of distinctive character, which are descriptive of characteristics of the goods or services, such as their nature, quality or geographical origin, or which are generic’.
In determining whether a trade mark satisfies these conditions, one takes into account the perception of the public addressed by the mark and the goods or services for which the protection is claimed. Thus, a mark that is excluded from protection as not distinctive, descriptive or generic may nevertheless be protected if distinctiveness has been acquired through use. In the EU, protection through use must be demonstrated for those parts of the EU where the obstacle existed. More so, protection is not available for marks that are deceptive or against public order or morality, or where a mark conflicts with an earlier protected geographic indication or appellation of origin. Further, protection is not available for three-dimensional shapes resulting from the nature of the goods themselves, for shapes necessary to obtain a technical result and for shapes giving substantial value to the goods for which they are sought to be registered.
On top of these so-called ‘absolute grounds of refusal’ earlier rights, or rights acquired prior to the filing or priority date of the later mark, constitute ‘relative grounds’ of refusal or invalidation. These earlier rights are earlier registered trademarks, earlier trademarks acquired on the basis of use and other trade identity rights such as trade names and trade dress, as well as any other earlier rights that may conflict with a trademark, such as rights in names or images, design rights or copyrights.
In summary, the EU trademark system is based on the principle of the unitary character of a Community trademark. This being the case, any absolute ground existing in a part of the EU will result in a refusal or invalidation, as will any earlier right of either EU-wide or Member State-wide scope. In the national systems, earlier Community trademarks constitute earlier rights. In other respects, the obstacle must exist in the Member State in question. Accordingly, a mark not registrable as a Community trademark or in a particular Member State because of its descriptive character may well be registrable in other Member States where a different language is spoken – although foreign language translations will first need to be conducted in order to make this determination.