Monaco Flails Against the Wind of Trademark Semantics
Trademark Law is volatile and in a constant state of flux. It may be viewed through a kaleidoscope of brand-obsessed contemporary consumers swimming in a sea of free market psychology which essentially defines the theory of trademark distinctiveness. A hip consumer is drawn to a linguistic word mark or symbol by its distinct expressive meaning. The role of trademarks is becoming significant, since a symbol or brand plays an integral part in choosing one company over another. In this context, the EU trademark is of particular interest, for it provides an exclusive right for the trademark owner in all twenty-eight EU member countries and countries that will join the EU in the future.
EU trademarks are governed by the Council Regulation (EC) No 207/2009 on the Community trademark.[1] An EU trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, signs and shapes of goods, provided that such symbols and words are capable of distinguishing the goods or services of one undertaking from those of other undertakings.[2]
There is a seminal Court of Justice of the European Union (“CJEU”) Case on EU trademarks which is worth analysing.[3] In 2015, the General Court of the European Union, found that the principality of Monaco can’t benefit from the protection of the trademark “MONACO” in the EU in respect of certain goods and services, because the word «MONACO» designates the origin or geographical destination of the goods and services concerned and is devoid of distinctive character. The Court supported the position of the Office for Harmonisation in the Internal Market (“OHIM”) which refused protection of the trademark “Monaco” in the EU, since the word “Monaco” signified the territory of the same name and could, therefore be perceived in any of the EU’s official languages designating the origin or geographical destination of the goods and services concerned.[4] The General Court observed that the word «monaco» corresponds to the name of a globally-known principality, due its royal family, and its organisation of a Formula 1 Grand Prix. The knowledge of the Principality of Monaco is even more prominent amongst EU citizens, notably on account of its borders with a Member State (France), its proximity to another Member State (Italy) and its use of the same currency as 19 of the 28 Member States, the Euro. There is therefore no doubt that the word «monaco» will evoke, regardless of the linguistic background of the relevant public, the geographic territory of the same name.[5] After all, Monaco has always been associated with “a playground for the rich.”
In contrast, analysing the fair use of figurative marks, which could be either two or three-dimensional, the EU Court, in its 2014 decision, rejected a challenge to Rubik’s trademark, after an eight year dispute over the trademark of the Rubik’s Cube’s shape. The General Court of the European Union found that the registration of the shape of the Rubik’s Cube as an EU trademark is valid since the graphic representation of that cube doesn’t involve a technical solution which would prevent it from being protected as a mark.[6] The EU Court’s ruling was crucial for Rubik’s Cube because it reinforced that it was never the intention of Legislature that a shape of goods would be refused registration as a Community trademark simply on the principle that it has functional characteristics since any shape of goods is, to a certain degree, functional.
The EU trademark may be composed exclusively of numerals. However, the EU Court has accepted the arguments of the OHIM which refused protection of the trade mark “1000” to a Polish publisher of brochures and periodicals containing, among other things, crossword puzzles and rebus puzzles, as the number “1000” referred to the number of puzzles in the brochures and thus, was devoid of any distinctive character.[7]
Finally, the OHIM and subsequently the EU Court have upheld the opposition of British Sky Broadcasting Group (or simply “SKY”), filed in 2005 and 2006, against the application for registration of the figurative and word signs SKYPE as an EU trademark, finding that there exists a likelihood of confusion between the figurative and word sign SKYPE and the word mark SKY.[8]
The EU trademark represents a potent mechanism for protection of company rights since it provides exclusive rights to the twenty-eight member EU Countries, under the umbrella of one single registration. By the same token, these trademark advantages give rise to a plethora of cases brought before the CJEU, whereas global companies strive to supersede their competing economic rivals.
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