June 03, 2010

Can the trademark &R&E&I&F&E&N& give right to the registration of reifen.eu? The CJEU ruling is out

Internetportal und Marketing GmbH is a German company that operates websites and markets products online. It registered the trademark &RE&I&F&E&N& in Sweden before the opening of the .eu namespace so that it could have a priority right over the name reifen.eu (it also registered many other trademarks with special characters to be granted the corresponding .eu names). It alleges it intended to create a website to sell tyres under this name (reifen means tyres in German).

After the European registry EURid registered reifen.eu in the name of Internetportal und Marketing, Richard S. challenged this registration before the .eu Arbitration Court. Having a trademark REIFEN under which he intended to market on a pan-European basis cleaning products for surfaces akin to window glass, he demonstrated that the German compnay acted in bad faith in applying for this domain name, and that the "&" character had to be rewritten as "and", and not deleted.
The arbitration decision was challenged before Austrian courts. The Oberster Gerichtshof referred several questions before the Court of Justice of the European Union (see this post). This is the third ruling of the CJEU over a .eu case.

The objective of the .eu Regulation is to bar speculative or abusive registrations. Such registrations, "by their very nature, may be marked by a variety of circumstances of fact and law". Therefore, bad faith may not be established only in the circumstances exhaustively set out in Article 21(3)(a) to (e) of this Regulation. Bad faith thus can be established by other circumstances, the Court rules.

How to decide whether there is bad faith? The Court suggests the follow elements:
- the fact that the German company had no intention of using the mark which it had registered for the goods covered by that registration (it registered the marl &RE&I&F&E&N& for seat belts in Sweden)
- the special character "&" was introduced only in order to disguise the generic term which is hidden behind the mark
- the company's conduct if of repetitive nature
- the registration was made in the period which immediately preceded the launch of .eu registrations

To the Court, the disputed name, which corresponds to a generic term sought as such, could have been registered during the first part of the phased registration only by means of the stratagem of a trademark created and registered for that purpose. Such a Conduct was manifestly intended to circumvent the procedure for phased registration established by the .eu Regulation.

Case C-569/08

At paragraph 29 of its ruling, the CJEU also upholds the opinion I defend since 2005: Anyone is entitled to initiate ADR proceedings (meaning even someone who does not have a trademark right, for example).

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