4. The Dynamics of the European Trademark Law

Pila, Justine, ‘Intellectual Property as a Case Study in Europeanization: Methodological Themes and Context’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 3, p. 6.

Dinwoodie, Graeme B, ‘The Europeanization of Trade Mark Law’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 72, p. 76.

A key scholarly addressing of the Court of Justice as an activist lawmaker was Rasmussen, Hjalte, ‘On Law and Policy in the European Court of Justice: A Comparative Study in Judicial Policymaking’, (1st edn, Martinus Nijhoff, 1986). See also Weatherill, Stephen, and Beaumont, Paul, ‘EU Law: The Essential Guide to the Legal Workings of the European Union’, (3rd edn, Penguin, 1999), p. 193-194.

These terms are further discussed in Chap. 1, Sect. 1.​6.

In particular Chaps. 8 and 9.

The TM Regulation and TM Directive are formal “legislative act(s)” under the TFEU in that they both have been adopted under the ordinary legislative procedure. Hence, art. 289(3) states that “[l] egal acts adopted by legislative procedure shall constitute legislative acts.” The main legislative procedure is the “ordinary legislative procedure,” cf. art. 289(1), cf. art. 294 of the TFEU. As it appears from note 1 of the TM Regulation and note 2 of the TM Directive, they have both been adopted under the ordinary legislative procedure. For a further analysis of the legislative acts under the TFEU, including their hierarchy, see among others, Craig, Paul P., ‘The Lisbon Treaty: Law, Politics, and Treaty Reform’, (1st edn, Oxford University Press, 2010), p. 252-260 and Curtin, Deirdre, and Manucharyan, Tatevik, ‘Legal Acts and Hierarchy of Norms in EU Law’, in Arnull, Anthony and Chalmers, Damian eds., The Oxford Handbook of European Union Law (1st edn, Oxford University Press, 2015), 103, p. 104-110.

Reference in the introductory note of the TM Regulation is made explicitly to art. 118 of the TFEU. As mentioned above art. 118 of the TFEU and art. 17(2) of the EU Charter include the first explicit treaty reference to “intellectual property.” See above Sect. 4.2.1.

Dashwood, Alan, ‘Wyatt and Dashwood’s European Union Law’, (6th edn, Hart, 2011), p. 109, Bradley, Kieran St Clair, ‘Powers and Procedures in the EU Constitution: Legal Bases and the Court’, in Craig, Paul and Búrca, Gráinne de eds., The Evolution of EU Law (1st edn, Oxford University Press, 2011), 85, p. 104 and Craig, Paul, and Búrca, Gráinne de, ‘EU Law: Text, Cases, and Materials’, (6th edn, Oxford University Press, 2015), p. 90-93.

The Court of Justice has previously ruled that the predecessor of art. 114 of the TFEU (art. 95 of the TFEU Pre-Lisbon) does not provide the legal basis for creating co-existing regimes, such as the Community Trade Mark system. Hence, the Court of Justice stated in European Parliament v. Commission “that the Community may use Article 308 EC as the basis for creating new intellectual property rights in addition to national rights.” Furthermore, that “art. 308 EC as a legal basis is, by contrast, excluded where the Community act in question does not provide for the introduction of a new protective right at Community level, but merely harmonises the rules laid down in the laws of the Member States for granting and protecting that right.” European Parliament v. Commission, Case C-436/03, [2006] ECR I-3733, (Grand Chamber) para 37, including the case law referred to here. As for art. 95 of the TFEU Pre-Lisbon, the Court of Justice moved on to state that it “empowers the Community legislature to adopt measures to improve the conditions for the establishment and functioning of the internal market and they must genuinely have that object, contributing to the elimination of obstacles to the economic freedoms guaranteed by the Treaty.” European Ibid, para 38, including the case law referred to here. For further analysis of the “competence creep” and the “legal basis disputes,” see among others, Dashwood, Alan, ‘Wyatt and Dashwood’s European Union Law’, (6th edn, Hart, 2011), p. 105-114 and Bradley, Kieran St Clair, ‘Powers and Procedures in the EU Constitution: Legal Bases and the Court’, in Craig, Paul and Búrca, Gráinne de eds., The Evolution of EU Law (1st edn, Oxford University Press, 2011), 85, p. 103-104.

Reference in the introductory note of the TM Directive is made explicitly to art. 114(1) of the TFEU (art. 95(1) TFEU Pre-Lisbon). Art. 114 (1) refers to art. 26 of the TFEU stating in (1) that “[t]he Union shall adopt measures with the aim of establishing or ensuring the functioning of the internal market, in accordance with the relevant provisions of the Treaties” (art. 14 of the TFEU Pre-Lisbon). “Measures” under art. 114(1) of the TFEU encompass directives and also regulations passed by the ordinary legislative procedure. Craig, Paul, and Búrca, Gráinne de, ‘EU Law: Text, Cases, and Materials’, (6th edn, Oxford University Press, 2015), p. 616.

Cf. the title of the TM Directive 1989.

Recital 3 of the TM Directive 1989.

Recital 4 of the TM Directive 2008.

Recital 8 of the TM Directive. It was thus farsighted when the EU legislature stated in recital 3 of the TM Directive 1989 that “at present” (in 1989) it was unnecessary to approximate the law further.

Firth, Alison, Lea, Gary R. and Cornford, Peter, ‘Trade Marks: Law and Practice’, (4th edn, Jordans, 2016), p. 302-304.

Weatherill, Stephen, ‘Empowerment is Not the Only Fruit’, in Leczykiewicz, Dorota and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 203, p. 210.

Weatherill, Stephen, ‘Consumer Policy’, in Craig, Paul and Búrca, Gráinne De eds., The Evolution of EU Law (2nd edn, Oxford University Press, 2011), 837, p. 850-851. For a further discussion of minimum and maximum harmonisation, see Craig, Paul, and Búrca, Gráinne de, ‘EU Law: Text, Cases, and Materials’, (6th edn, Oxford University Press, 2015), p. 626-627, including the sources in footnote 93 of this source.

The citation is taken from an analysis by Weatherill of EU consumer law, but it applies outside this area of law. Weatherill, Stephen, ‘EU Consumer Law and Policy’, (2nd edn, Edward Elgar, 2013), p. 25 and subsequently Weatherill, Stephen, ‘Empowerment is Not the Only Fruit’, in Leczykiewicz, Dorota and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 203, p. 210.

Weatherill, Stephen, ‘EU Consumer Law and Policy’, (2nd edn, Edward Elgar, 2013), p. 25.

Weatherill, Stephen, ‘Law and Values in the European Union’, (1st edn, Oxford University Press, 2016), p. 276.

Dinwoodie, Graeme B, ‘The Europeanization of Trade Mark Law’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 72, p. 78, including footnote 6 of the text.

Cf. art. 8(1)(b) of the TM Regulation, TM Regulation 2009 and TM Regulation 1994 and art. 4(1)(b) of the TM Directive, TM Directive 2008 and TM Directive 1989 (italics added).

Cf. art. 9(2)(b) of the TM Regulation and art. 9(1)(b) of the TM Regulation 2009 and TM Regulation 1994 and art. 5(1)(b) of the TM Directive, TM Directive 2008 and TM Directive 1989 (italics added).

See also Dinwoodie and Gangjee 2016, holding that on the face of it the TM Directive 2008 and TM Directive 1989 “purported to be a limited harmonisation of registered trade mark laws of the Member States. (…) However, it is increasingly apparent that the harmonisation was in fact close to maximum harmonisation, imposing both floors and ceilings on the extent of protection that Member States could provide under national law.” Dinwoodie, Graeme, and Gangjee, Dev, ‘The Image of the Consumer in EU Trade Mark Law’, in Leczykiewicz, Dorota, and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 339, p. 341-342.

Cf. mainly for goods arts. 34-36 of the TFEU, and services, cf. mainly art. 56 of the TFEU.

I.e. art. 114, referring to art. 26 of the TFEU. The citation is taken from art. 95 of the TFEU Pre-Lisbon. Since the UCPD was adopted before the Lisbon Treaty, reference in the UCPD is made to arts. 95 and 14 of the TFEU Pre-Lisbon. Reference to art. 95 of the TFEU Pre-Lisbon is found in the introduction and recital 1 of the UCPD whereas reference to art. 14 of the TFEU Pre-Lisbon is found in recital 2 of the UCPD.

I.e. art. 169 of the TFEU.

Recital 11 of the UCPD.

Weatherill, Stephen, ‘Consumer Policy’, in Craig, Paul and Búrca, Gráinne De eds., The Evolution of EU Law (2nd edn, Oxford University Press, 2011), 837, p. 855. See also Weatherill, Stephen, ‘EU Consumer Law and Policy’, (2nd edn, Edward Elgar, 2013), p. 25-26 and Howells, Geraint G., ‘Europe’s (Lack of) Vision on Consumer Protection: A Case of Rhetoric Hiding Substance?’, in Leczykiewicz, Dorota, and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 431, p. 436-437. Elsewhere, Weatherill has stated that the UCPD is an example of “a shift from minimum to maximum harmonisation – whereby the EU sets both floor and ceiling of regulatory protection.” Weatherill, Stephen, ‘EU Consumer Law and Policy’, (2nd edn, Edward Elgar, 2013), p. 24.

Willett, Chris, and Morgan-Taylor, Martin, ‘Recognising the Limits of Transparency in EU Consumer Law’, in Devenney, James and Kenny, Mel eds., European Consumer Protection: Theory and Practice (1st edn, Cambridge University Press, 2012), 143, p. 145.

Arnull, Anthony, ‘Arsenal Football Club Plc v. Matthew Reed, High Court, Chancery Division, Judgment of 6 April 2001, [2001] 2 CMLR 23; Case C-206/01, Arsenal Football Club Plc v. Matthew Reed, Court of Justice of the European Communities (Full Court), Judgment of 12 November 2002, [2003] 1 CMLR 12; Arsenal Football Club Plc v. Matthew Reed, High Court, Chancery Division, Judgment of 12 December 2002, [2003] 1 CMLR 13’, Common Market Law Review, vol. 40/no. 3, (2003), pp. 753, p. 768.

Robin Jacob makes this statement after referring to many cases dealt with by the Court of Justice as preliminary rulings and as appeal cases from the General Court. Jacob, Robin, ‘IP and Other Things: A Collection of Essays and Speeches’, (1st edn, Hart, 2015), p. 94.

Pila, Justine, ‘Intellectual Property as a Case Study in Europeanization: Methodological Themes and Context’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 3, p. 4.

Dinwoodie, Graeme B, ‘The Europeanization of Trade Mark Law’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 72, p. 100.

See Chap. 11. This differs from the area of assessing distinctiveness as part of the absolute grounds for refusal of registration where the Court of Justice has made clear assumptions on how the average consumer will react confronted with different unconventional signs.

Dinwoodie, Graeme B, ‘The Europeanization of Trade Mark Law’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 72, p. 92. See also Chap. 1, Sect. 1.​5.​1.

See Dinwoodie, Graeme B, ‘The Europeanization of Trade Mark Law’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 72, p. 93.

Conley, James G., Bican, Peter M., and Ernst, Holger, ‘Value Articulation: A Framework for the Strategic Management of Intellectual Property’, California Management Review, vol. 55/no. 4, (2013), pp. 102. See also Posner, Richard A., ‘Intellectual Property: The Law and Economics Approach’, the Journal of Economic Perspectives, vol. 19/no. 2, (2005), pp. 57, p. 67.

See Chap. 11.

See among others, Bobek, Michal, ‘The Court of Justice of the European Union’, p. 153, chapter 7, Arnull, Anthony, ‘Judicial Review in the European Union’, 376, chapter 15 and Tridimas, Takis, ‘Dialogue with National Courts: Dialogue, Cooperation and Instability’, 403, chapter 16, all three in Arnull, Anthony and Damian Chalmers eds., The Oxford Handbook of European Union Law (1st edn, Oxford University Press, 2015), Burrows, Noreen, and Greaves, Rosa, ‘The Advocate General and EC Law’, (1st edn, Oxford University Press, 2007), Conway, Gerard, ‘The Limits of Legal Reasoning and the European Court of Justice’, (1st edn, Cambridge University Press, 2012), Mare, Thomas de la, and Donnelly, Catherine, ‘Preliminary Rulings and EU Legal Integration: Evolution and Stasis’, in Craig, Paul and Búrca, Gráinne de eds., The Evolution of EU Law (1st edn, Oxford University Press, 2011), 363, chapter 13, Arnull, Anthony, ‘The European Union and its Court of Justice’, (2nd edn, Oxford University Press, 2006) and Jacob, Marc A., ‘Precedents and Case-Based Reasoning in the European Court of Justice: Unfinished Business’, (1st edn, Cambridge University Press, 2014).

Tridimas, Takis, ‘Dialogue with National Courts: Dialogue, Cooperation and Instability’, in Arnull, Anthony and Chalmers, Damian eds., The Oxford Handbook of European Union Law (1st edn, Oxford University Press, 2015), 403, p. 404-405, and overall chapter 16 in this book. For a general analyses of the preliminary ruling procedure see Arnull, Anthony, ‘The European Union and its Court of Justice’, (2nd edn, Oxford University Press, 2006), Chapter 4, Tridimas, Takis, ‘Bifurcated Justice: The Dual Character of Judicial Protection in EU Law’, in Rosas, Allan, Levits, Egils and Bot, Yves eds., The Court of Justice and the Construction of Europe: Analyses and Perspectives on Sixty Years of Case-Law – La Cour de Justice et la Construction de l’Europe: Analyses et Perspectives de Soixante Ans de Jurisprudence (1st edn, T.M.C. Asser Press, 2013), 367, p. 367-379, Dashwood, Alan, ‘Wyatt and Dashwood’s European Union Law’, (6th edn, Hart, 2011), Chapter 7 and de la Mare and Mare, Thomas de la, and Donnelly, Catherine, ‘Preliminary Rulings and EU Legal Integration: Evolution and Stasis’, in Craig, Paul and Búrca, Gráinne de eds., The Evolution of EU Law (1st edn, Oxford University Press, 2011), 363, chapter 13.

Tridimas, Takis, ‘Bifurcated Justice: The Dual Character of Judicial Protection in EU Law’, in Rosas, Allan, Levits, Egils and Bot, Yves eds., The Court of Justice and the Construction of Europe: Analyses and Perspectives on Sixty Years of Case-Law – La Cour de Justice et la Construction de l’Europe: Analyses et Perspectives de Soixante Ans de Jurisprudence (1st edn, T.M.C. Asser Press, 2013), 367 and Tridimas, Takis, ‘Knocking on Heaven’s Door. Fragmentation, Efficiency and Defiance in the Preliminary Reference Procedure, Common Market Law Review, vol. 40, (2003), pp. 9, p. 26.

Arsenal v. Reed, Case C-206/01, [2002] ECR I-10273, (opinion of AG Colomer), footnote 81 of the opinion and his subsequent opinion in Vedial v. OHIM, Case C-106/03 P, [2004] ECR I-9573, (opinion of AG Colomer), para 34.

The TFEU allows for a preliminary ruling procedure between the national courts and the General Court, cf. art. 253(3) of the TFEU (art. 225(3) of the TFEU Pre-Lisbon) for specific areas to be further specified in the Statute of the Court of Justice of the European Union, i.e. Protocol No. 3 of the TFEU. So far, however, the General Court has not been given jurisdiction under the statute of the CJEU to hear preliminary references. See Dashwood, Alan, ‘Wyatt and Dashwood’s European Union Law’, (6th edn, Hart, 2011), p. 65 and p. 210 and Tridimas, Takis, ‘Knocking on Heaven’s Door. Fragmentation, Efficiency and Defiance in the Preliminary Reference Procedure’, Common Market Law Review, vol. 40, (2003), pp. 9, p. 20-21. See in general on preliminary rulings, Dashwood, Alan, ‘Wyatt and Dashwood’s European Union Law’, (6th edn, Hart, 2011), chapter 7 and Tridimas, Takis, ‘Dialogue with National Courts: Dialogue, Cooperation and Instability’, in Arnull, Anthony and Chalmers, Damian eds., The Oxford Handbook of European Union Law (1st edn, Oxford University Press, 2015), 403, chapter 16.

Arnull, Anthony, ‘The European Union and its Court of Justice’, (2nd edn, Oxford University Press, 2006), p. 95.

Pila, Justine, ‘Intellectual Property as a Case Study in Europeanization: Methodological Themes and Context’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 3, p. 20.

Same quote in Arnull, Anthony, ‘The European Union and its Court of Justice’, (2nd edn, Oxford University Press, 2006), p. 96 and Dashwood, Alan, ‘Wyatt and Dashwood’s European Union Law’, (6th edn, Hart, 2011), p. 216.

Tridimas, Takis, ‘Dialogue with National Courts: Dialogue, Cooperation and Instability’, in Arnull, Anthony and Chalmers, Damian eds., The Oxford Handbook of European Union Law (1st edn, Oxford University Press, 2015), 403, p. 406.

Arnull, Anthony, ‘The European Union and its Court of Justice’, (2nd edn, Oxford University Press, 2006), p. 96 (italics added).

Engelbrekt, Antonina Bakardjieva, ‘Fair Trading Law in Flux? National Legacies, Institutional Choice and the Process of Europeanisation’, (1st edn, Stockholm University, 2003), p. 531. The key area covered by the citation is where the national courts must apply the TM Directive implemented into national legislation in contrast with infringement matters related to EU trademarks where the national courts must apply the TM Regulation directly. The latter instance presumptively limits the scope for manoeuvring of the national court. See also Chap. 3, Sect. 3.​2.​2.​1 and Sect. 4.2.1 of this chapter.

Lord Justice at the UK Court of Appeal of the UK until May 2011.

Jacob, Robin, ‘The Relationship between European and National Courts in Intellectual Property Law’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 185, p. 198.

Even the more so, if the questions posed are unclear.

Arsenal v. Reed, Case C-206/01, [2002] ECR I-10273, the second preliminary question posed by the UK High Court.

Arnull, Anthony, ‘Arsenal Football Club Plc v. Matthew Reed, High Court, Chancery Division, Judgment of 6 April 2001, [2001] 2 CMLR 23; Case C-206/01, Arsenal Football Club Plc v. Matthew Reed, Court of Justice of the European Communities (Full Court), Judgment of 12 November 2002, [2003] 1 CMLR 12; Arsenal Football Club Plc v. Matthew Reed, High Court, Chancery Division, Judgment of 12 December 2002, [2003] 1 CMLR 13’, Common Market Law Review, vol. 40/no. 3, (2003), pp. 753, p. 757.

Arsenal v. Reed, [2002] EWHC 2695 (Ch) # III, para 27.

Hence, Aldous LJ concluded that “[a]s the ECJ pointed out, the actions of Mr Reed meant that goods, not coming from Arsenal but bearing the trade marks, were in circulation. That affected the ability of the trade marks to guarantee the origin of the goods. I therefore conclude that the result reached by the ECJ was inevitable once their judgment had made it clear that the material consideration was whether the use complained of was liable to jeopardise the guarantee of origin, not whether the use was trade mark use. The judge should have followed the ruling and decided the case in Arsenal’s favour.” Arsenal v. Reed, [2003] EWCA Civ 696, para 48.

Art. 177 of the TEU as revised by the Maastricht Treaty.

Lloyd Schuhfabrik Meyer v. Klijsen Handel BV, Case C-342/97, [1999] ECR I-3819, para 11.

Cf. art. 72(1) of the TM Regulation. According to art. 72(2) of the TM Regulation, actions under art. 72(1) may be brought to the Court of Justice “on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the TFEU, infringement of this Regulation or of any rule of law relating to their application or misuse of power.” See also Jääskinen, Niilo, ‘The Future of European Intellectual Property Law Courts: Intellectual Property and the European Judicial Architecture’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 217, p. 218.

Dinwoodie, Graeme B, ‘The Europeanization of Trade Mark Law’, 72, p. 91 and Arnold, Sir Richard, ‘An Overview of European Harmonization Measures in Intellectual Property Law’, 25, p. 31 both in in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013).

On the convergence of case law of the Court of Justice related to the TM Regulation and the TM Directive, see Chap. 10, Sect. 10.​2.​2.

Dinwoodie, Graeme B, ‘The Europeanization of Trade Mark Law’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 72, p. 87-88.

Hence, art. 58(1) of the Statute of the Court of Justice states that “[a]n appeal to the Court of Justice shall be limited to points of law. It shall lie on the grounds of lack of competence of the General Court, a breach of procedure before it which adversely affects the interests of the appellant as well as the infringement of Union law by the General Court.” Art. 256(1) of the TFEU (art. 225(1) of the TFEU Pre-Lisbon) states the same principle. See also Arnull, Anthony, ‘The European Union and its Court of Justice’, (2nd edn, Oxford University Press, 2006), p. 26.

Hammarplast v. OHIM, Case T-499/04, [2006], para 17.

Mellor, James, David Llewelyn, Moody-Stuart, Thomas, et al, ‘Kerly’s Law of Trade Marks and Trade Names’, (16th edn, Sweet & Maxwell, 2018), p. 400. See also Chap. 10, Sect. 10.​2.​2.

L’Oréal v. eBay International, Case C-324/09, [2011] ECR I-6011, para 94 (italics added).

The substantial analysis of this finding will be expanded upon in Chap. 11, Sect. 11.​5.

Koopmans, Thijmen, ‘Stare Decisis in European Law’, in O’Keeffe, David and Schermers, Henry G. eds., Essays in European Law and Integration: To Mark the Silver Jubilee of the Europa Institute, Leiden, 1957-1982 (1st edn, Kluwer Law International, 1982), 11, p. 22.

The definition continues “…or is a necessary part of his direction to the jury.” This latter part of the definition is not relevant to the EU judicial system not operating a jury. Adding “or” also means that the first part of the definition is relevant in its own right and not dependent on the latter part. Precedent in English Law, Cross, Rupert, and Harris, J. W., ‘Precedent in English Law’, (4th edn, Oxford University Press, 1991), p. 72.

Jacob, Marc A., ‘Precedents and Case-Based Reasoning in the European Court of Justice: Unfinished Business’, (1st edn, Cambridge University Press, 2014), p. 72.

Jacob, Marc A., ‘Precedents and Case-Based Reasoning in the European Court of Justice: Unfinished Business’, (1st edn, Cambridge University Press, 2014), p. 73-74.

Ibid, p. 77. It should be mentioned that ratio decidendi is known to EU trademark law. Hence, art. 71(2) of the TM Regulation stipulates that “[i]f the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.” See ibid, p. 72, including footnote 14 of the text (italics added).

The statements by Jacob on the role of precedent links to the finding in Chap. 5 of the likelihood of confusion as a standard from the outset.

See Chap. 5, Sect. 5.​2.

Among others, Arnold J, one of the most influential judges in the UK, has handed down some of the significant trademark decisions relevant to this book on behalf of the UK High Court. For an overview of these decisions, see Chap. 1, footnote 14. Arnold J has also given lengthy analyses of Court of Justice and domestic case law, including case law on the average consumer. Hence, in Interflora EWHC Arnold J allocated 14 pages (!) to analysing the legal backcloth of the average consumer. Interflora v. Marks & Spencer, [2013] EWHC 1291 (Ch), paras 194-224.

Cross, Rupert, and Harris, J. W., ‘Precedent in English Law’, (4th edn, Oxford University Press, 1991), p. 17-18.

A prominent example of this is Keck Mithouard where the Court of Justice narrowed its interpretation of art. 30 (art. 34 of the TFEU) laid down in Dassonville, Case 8/74, [1974] ECR 837. Keck Mithouard, Joined Cases C-267/91 and C-268/91, [1993] ECR I-6097, in particular paras 14-17. As explained by Weatherill and Beaumont “[t]he Court [of Justice] in Keck has adjusted the respective competences of the Community and of the member states in the sphere of economic regulation and, ‘contrary to what has previously been decided’ [ibid, para 16], the member states enjoy competence untouched by Article (…) 30 [art. 34 of the TFEU] in the absence of an impediment felt especially by importers.” Weatherill, Stephen, and Beaumont, Paul, ‘EU Law: The Essential Guide to the Legal Workings of the European Union’, (3rd edn, Penguin, 1999), p. 612. See overall on Dassonville, Keck Mithouard and other relevant decisions in ibid 1999, p. 608-619 and Dashwood, Alan, ‘Wyatt and Dashwood’s European Union Law’, (6th edn, Hart, 2011), p. 409-421.

L’Oréal v. eBay International, Case C-324/09, [2011] ECR I-6011, para 94 (italics added).

Shoe Branding v. Adidas, Case C-396/15 P, [2016], para 21.

See Chap. 10, Sect. 10.​2.​3.

Maduro, Miguel Poiares, ‘Interpreting European Law: Judicial Adjudication in a Context of Constitutional Pluralism’, European Journal of Legal Studies, vol. 1/no. 2, (2007), pp. 1, p. 2.

This understanding is derived from Conway’s analysis of “the Limits of Legal Reasoning and the European Court of Justice.” Conway, Gerard, ‘The Limits of Legal Reasoning and the European Court of Justice’, (1st edn, Cambridge University Press, 2012), p. 13.

Komárek, Jan, ‘Legal Reasoning in EU Law’, in Arnull, Anthony and Chalmers, Damian eds., The Oxford Handbook of European Union Law (1st edn, Oxford University Press, 2015), 28, p. 45.

Sherry, Suzanna. ‘Foundational Facts and Doctrinal Change’, University of Illinois Law Review, vol. 2011/no. 1, (2011), pp. 145, p. 145-146.

Maduro, Miguel Poiares, ‘Interpreting European Law: Judicial Adjudication in a Context of Constitutional Pluralism’, European Journal of Legal Studies, vol. 1/no. 2, (2007), pp. 1, p. 3.

Missiroli, Antonio, ‘European Security Policy: The Challenge of Coherence’, European Foreign Affairs Review, vol. 6/(2001), pp. 177, p. 182. See Chap. 2, Sect. 2.​2.​3.

Spaak, Torben, ‘Guidance and Constraint: The Action-Guiding Capacity of Neil MacCormick’s Theory of Legal Reasoning’, Law and Philosophy, vol. 26 (2007), pp. 343, p. 346. Spaak sees interpretation as part of the legal method which “is a set of norms, arguments, and concepts” which besides interpretation also includes “modalities of decision such as analogy and argumentum e contrario, interpretive presumptions such as ‘The legislature does not intend absurd results,’ conflict-solving maxims such as lex superior, lex posterior and lex specialis, the principle of legality, and the rule of lenity.” Ibid. See also Conway, Gerard, ‘The Limits of Legal Reasoning and the European Court of Justice’, (1st edn, Cambridge University Press, 2012), p. 19.

See above Sect. 4.3.3.

See Chap. 2, Sect. 2.​3.​1.​1.

See above Sect. 4.3.

See van Hoecke, Mark, ‘Legal Doctrine: Which Method(s) for what Kind of Discipline?’, in van Hoecke, Mark ed., Methodologies of Legal Research: What Kind of Method for what Kind of Discipline? (1st edn, Hart, 2011), 1, p. 9. See also Chap. 2, footnote 88.

This is also called “linguistic,” “grammatical,” “semiotic,” or “literal arguments.” Komárek, Jan, ‘Legal Reasoning in EU Law’, in Arnull, Anthony and Chalmers, Damian eds., The Oxford Handbook of European Union Law (1st edn, Oxford University Press, 2015), 28, p. 45.

Maduro, Miguel Poiares, ‘Interpreting European Law: Judicial Adjudication in a Context of Constitutional Pluralism’, European Journal of Legal Studies, vol. 1/no. 2, (2007), pp. 1, p. 4.

As pointed out by Conway, teleological interpretation is often used in an EU context focusing on a “systemic level,” whereas “purposive” interpretation may be used more locally. Conway, Gerard, ‘The Limits of Legal Reasoning and the European Court of Justice’, (1st edn, Cambridge University Press, 2012), p. 20 with reference in footnote 83 of the text to e.g. Lasser, Michel de, ‘Judicial Deliberations: A Comparative Analysis of Transparency and Legitimacy’, (1st, Oxford University Press, 2004), p. 288. Since this book focuses not only EU law, but on European law, the broader term “purposive” has been chosen.

MacCormick, Neil, and Summers, Robert D., ‘Interpretation and Justification’, in MacCormick, Neil and Summers, Robert D. eds., Interpreting Statutes (1st edn, Routledge, 1991), 511, p. 512-516.

Conway, Gerard, ‘The Limits of Legal Reasoning and the European Court of Justice’, (1st edn, Cambridge University Press, 2012), p. 19.

Maduro, Miguel Poiares, ‘Interpreting European Law: Judicial Adjudication in a Context of Constitutional Pluralism’, European Journal of Legal Studies, vol. 1/no. 2, (2007), pp. 1, p. 8.

CILFIT v. Ministry of Health, Case 283/81, [1982] ECR 3415, para 19.

For an overview of the different languages, see the Commission website at: http://​ec.​europa.​eu/​dgs/​translation/​translating/​officiallanguage​s/​index_​en.​htm (last visited 26 May 2019).

Komárek, Jan, ‘Legal Reasoning in EU Law’, in Arnull, Anthony and Chalmers, Damian eds., The Oxford Handbook of European Union Law (1st edn, Oxford University Press, 2015), 28, p. 46.

Bengoetxea, Joxerramon, ‘The Legal Reasoning of the European Court of Justice: Towards a European Jurisprudence’, (1st edn, Clarendon Press, 1993), p. 240.

Maduro, Miguel Poiares, ‘Interpreting European Law – on Why and how Law and Policy Meet at the European Court of Justice’, in Koch, Henning et al eds., Europe: The New Legal Realism: Essays in Honour of Hjalte Rasmussen (1st edn, Djøf Publishing, 2010), 457. See also Chap. 2, footnote 65 and its sources.

Komárek, Jan, ‘Legal Reasoning in EU Law’, in Arnull, Anthony and Chalmers, Damian eds., The Oxford Handbook of European Union Law (1st edn, Oxford University Press, 2015), 28, p. 46.

Conway, Gerard, ‘The Limits of Legal Reasoning and the European Court of Justice’, (1st edn, Cambridge University Press, 2012), p. 20. One such interpretation is found in Davidoff v. Gofkid where the Court of Justice interpreted the provision on protecting well-known trademarks purposively. In art. 5(2) of the TM Directive 1989 it was stated that “[a]ny Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.” Substantially. it is identical to art. 4(4)(a) of the TM Directive 1989 related to registration. A key question in Davidoff v. Gofkid was if the provision also included “identical or similar goods or services.” The Court of Justice stated that the “article cannot be given an interpretation which would lead to marks with a reputation having less protection where a sign is used for identical or similar goods or services than where a sign is used for non-similar goods or services.” Davidoff v. Gofkid, Case C-292/00, [2003] ECR I-00389, para 25. In the TM Directive and TM Regulation, the EU legislature has corrected for the previous gap. See also Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), p. 381-382.

This means of interpretation has also been referred to by MacCormick and Summers as “transcategorical” since it draws on other means of interpretation. MacCormick, Neil, and Summers, Robert D., ‘Interpretation and Justification’, in MacCormick, Neil and Summers, Robert D. eds., Interpreting Statutes (1st edn, Routledge, 1991), 511, p. 515.

Danielsen, Jens Hartig, ‘Parallelhandel og Varernes Frie Bevægelighed’, (1st edn, Jurist- og Økonomforbundets Forlag, 2005), p. 22-24.

Billerud Karlsborg v. Naturvårdsverket, Case C-203/12, [2013], paras 39-40. See also Billerud Karlsborg v. Naturvårdsverket, Case C-203/12, [2013], (opinion of AG Mengozzi), paras 28-29.

Antonissen, Case C-292/89, [1991] ECR I-745, paras 17-18.

Queen v. Licensing Authority, Case C-368/96, [1998] ECR I-7967, para 27.

Ibid, para 26. See also Conway, Gerard, ‘The Limits of Legal Reasoning and the European Court of Justice’, (1st edn, Cambridge University Press, 2012), p. 255. For a broader discussion on the role of preparatory works, see ibid, p. 255-258. Referring to trademark law, Tritton et al have discussed the role of preparatory works, given international exhaustion of trademark rights. Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), p. 461-462, including the case law referred to in footnote 981 of the text.

The EESC is touched upon in Chap. 1, Sects. 1.​3.​1–1.​3.​2 and Sect. 4.3.4 of this chapter.

On the role of preambles as part of purposive interpretation, Arnull, Anthony, ‘The European Union and its Court of Justice’, (2nd edn, Oxford University Press, 2006), p. 607-608 and Sjåfjell, Beate, ‘Towards a Sustainable European Company Law: A Normative Analysis of the Objectives of EU Law, with the Takeover Directive as a Test Case’, (1st edn, Kluwer Law International, 2009), p. 128-130. The latter source exemplifies how preambles are used to interpret the objectives of EU company and securities law.

Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer. Case C-39/97, [1998] ECR I-5507, para 27 and further on preambles as a legal source Sect. 4.3.4 of this chapter.

Sabel v. Puma, Case C-251/95, [1997] ECR I-6191, para 22 and further on this Chap. 10, Sects. 10.​1 and 10.​2.​2.

The role of the Advocates General has undergone much scrutiny. See in particular, Burrows, Noreen, and Greaves, Rosa, ‘The Advocate General and EC Law’, (1st edn, Oxford University Press, 2007), mainly chapter 6 with the heading “Advocate General Jacobs and intellectual property law,” Arnull, Anthony, ‘The European Union and its Court of Justice’, (2nd edn, Oxford University Press, 2006), p. 14-19.

Cf. art. 252 of the TFEU (art. 222 of the TFEU Pre-Lisbon).

Cf. art. 20 of the Statute of the CJEU. Before the Nice Treaty it was mandatory for the Court of Justice to hear the Advocates General. Hence, the wording of art. 222 of the EC as consolidated after implementing of the Amsterdam Treaty (i.e. before the Nice Treaty): “It shall be the duty of the Advocate General, acting with complete impartiality and independence, to make, in open court, reasoned submissions on cases brought before the Court of Justice, in order to assist the Court in the performance of the task assigned to it in Article 220.”

Bobek, Michal, ‘The Court of Justice of the European Union’, in Arnull, Anthony and Chalmers, Damian eds., The Oxford Handbook of European Union Law (1st edn, Oxford University Press, 2015), 153, p. 168. As a side remark, Michal Bobek was himself appointed as Advocate General as of 7 October 2015.

Rosati points out that the number of Advocates General opinions is decreasing. Rosati speculates, with specific reference to copyright law but also more generally to intellectual property law, if the reason for this is lacking intellectual property law specialists among the Advocates General. Rosati, Eleonora, ‘Luxembourg, we have a Problem: Where have the Advocates General Gone?’, Journal of Intellectual Property Law & Practice, vol. 9/no. 8, (2014), pp. 619, p. 619. See also Arnold, Sir Richard, ‘An Overview of European Harmonization Measures in Intellectual Property Law’, in Ohly, Ansgar and Justine Pila eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 25, p. 30.

Burrows, Noreen, and Greaves, Rosa, ‘The Advocate General and EC Law’, (1st edn, Oxford University Press, 2007), p. 148.

The most recent statistics of the Court of Justice shows that in 2017 approximately 67 % of all cases of the Court of Justice were decided without hearing the Advocates General. Court of Justice of the European Union: Annual Report 2017 Judicial Activity. Synopsis of the judicial activity of the Court of Justice, the General Court and the Civil Service Tribunal, available at: https://​curia.​europa.​eu/​jcms/​upload/​docs/​application/​pdf/​2018-04/​_​ra_​2017_​en.​pdf (last visited 26 May 2019), p. 98.

Rosati, Eleonora, ‘Luxembourg, we have a Problem: Where have the Advocates General Gone?’, Journal of Intellectual Property Law & Practice, vol. 9/no. 8, (2014), pp. 619, p. 619. See also Laustsen, Rasmus D., ‘An Economic Analysis of EU Trademark Law; the Role of the Average Consumer in Trademark Infringement between Two Confusingly Similar Trademarks’, in Lyngsie, Jacob, Mortensen, Bent O. G. and Østergaard, Kim eds., Rets- og Kontraktøkonomi: Law & Economics an Anthology (Djøf Publishing, 2016), 37, p. 54, including footnote 64 of the text. In similar veins, Arnold J has raised it as a point of critique that the Advocates General lack specialisation in intellectual property law, “or even, in most cases, in commercial law more generally.” Arnold, Sir Richard, ‘An Overview of European Harmonization Measures in Intellectual Property Law’, in Ohly, Ansgar and Justine Pila eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 25, p. 30.

Tridimas, Takis, ‘the Role of the Advocate General in the Development of Community Law: Some Reflections’, Common Market Law Review, vol. 34/no. 6, (1997), pp. 1349, p. 1361.

Ohly, Ansgar, ‘Introduction: The Quest for Common Principles of European Intellectual Property Law – Useful, Futile, Dangerous?’, in Ohly, Ansgar ed., Common Principles of European Intellectual Property Law (1st edn, Mohr Siebeck, 2012), 3, p. 10.

The limited number of references to historical national case law found in Advocates General opinions and even more so in Court of Justice case law, shows in Dinwoodie’s words a “desire to decouple contemporary European law from a particular national lineage for understandable political reasons.” Dinwoodie, Graeme B, ‘The Europeanization of Trade Mark Law’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 72, p. 96-97.

Among others, Advocate General Szpunar in Hauck v. Stokke, referred to the role of trademarks in lowering consumer search costs. Hauck v. Stokke, Case C-205/13, [2014], (opinion of AG Szpunar), para 30. Szpunar referred to Landes, William M., and Posner, Richard A., ‘The Economic Structure of Intellectual Property Law’, (1st edn, Harvard University Press, 2003), and Griffiths, Andrew, ‘An Economic Perspective on Trade Mark Law’, (1st edn, Edward Elgar, 2011). Advocate General Jääskinen in Interflora Court of Justice, assessed trademark infringement based on balancing the interests of the trademark owner and its competitor referring to what is the Pareto optimal solution. Interflora v. Marks & Spencer, Case C-323/09, [2011] ECR I-8625 (opinion of AG Jääskinen), para 94. Jääskinen referred to a text by Daniel Klerman, i.e. ‘Trademark Dilution, Search Costs, and Naked Licensing’, Fordham Law Review, vol. 74/no. 4, (2006), pp. 1759. See also Laustsen, Rasmus D., ‘An Economic Analysis of EU Trademark Law; the Role of the Average Consumer in Trademark Infringement between Two Confusingly Similar Trademarks’, in Lyngsie, Jacob, Mortensen, Bent O. G. and Østergaard, Kim eds., Rets- og Kontraktøkonomi: Law & Economics an Anthology (Djøf Publishing, 2016), 37, p. 54 and Chap. 1, Sect. 1.​3.​2.

See among others, Advocate General Colomer in Linde, Linde et al, Joined cases C-53/01 to C-55/01, [2002] ECR I-3161 (opinion of AG Colomer), para 12. On the importance of Colomer’s opinion in Linde and for a substantial analysis of the opinion and subsequent decisions, see Chap. 11, Sect. 11.​6.

Burrows, Noreen, and Greaves, Rosa, ‘The Advocate General and EC Law’, (1st edn, Oxford University Press, 2007), p. 148. The reason for only referring to Jacobs’ influence as “potential” is that Burrows and Greaves also address the potential influence of Gulmann stating that “it would be unwise, without clearer evidence, to attempt to apportion credit to either individual.” Burrows, Noreen, and Greaves, Rosa, ‘The Advocate General and EC Law’, (1st edn, Oxford University Press, 2007), p. 165. In Chap. 8 it is pointed out that Mancini and Gulmann (both previous Advocates General and afterwards judges at the Court of Justice) may have affected the early development of the average consumer. See Chap. 8, Sect. 8.​7.

Sabel v. Puma, Case C-251/95, [1997] ECR I-6191, (opinion of AG Jacobs).

Lloyd Schuhfabrik Meyer v. Klijsen Handel BV, Case C-342/97, [1998] ECR I-3819, (opinion of AG Jacobs).