COLOR EDITION: on standing, public interest and a Titanic full of lawyers...

Fabio Angelini

The Court of Justice –CJ- (formerly known as the European Court of Justice) has finally delivered its (largely anticipated at least for me) final decision on the COLOR EDITION saga (case C-408/08 of Feb. 25, 2010, Lancôme Parfums et Beauté & Cie SNC v. OHIM).

The main issue was, essentially whether or not a law firm acting on its own behalf may apply for cancellation – for descriptiveness- of a CTM (COLOR EDITION for cosmetics).

The General Court –GC- (formerly known as the Court of First Instance) had found no reason to deny standing for law firms. Lancome thus filed an appeal to the CJ saying that the GC had erred because the general interest underlying that ground for refusal is only the interest of all the trade‑mark applicant’s or proprietor’s competitors, whose right to use a descriptive indication for their own goods or services must be protected from unlawful registrations by a competitor. Consequently, only where actual or potential constraints are imposed on an actual or potential competitor of the applicant may that ground for refusal be relied on. Thus, in Lancome’s view, art. 55(1)(a) CTMR ought be interpreted as requiring the applicant, in addition to having the capacity to bring proceedings, also to be economically concerned either actually or potentially and, consequently, to have an actual or potential economic interest in having the contested mark declared invalid. That cannot be the case of a law firm.

The CJ did not agree for 2 reasons.

The first reason is strictly grounded in a coordinated interpretation of art. 55(1)(a) vis-à-vis 55(1)(b) and 55(1)c). The former provides that an application for a declaration of invalidity based on an absolute ground for invalidity may be submitted by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which has the capacity in its own name to sue and be sued, whereas Article 55(1)(b) and (c) of the regulation, concerning applications for a declaration of invalidity based on a relative ground for invalidity, reserves the right to make such an application to certain specific persons who have an interest in bringing proceedings. Thus the GC had rightly found that legislature intended to restrict the group of persons able to apply for a declaration of invalidity in the latter case, but not in the former. Furthermore, whereas relative grounds for refusal of registration protect the interests of proprietors of certain earlier rights, the absolute grounds for refusal of registration aim to protect the general interest underlying them, which explains why Article 55(1)(a) of the regulation does not require the applicant to show an interest in bringing proceedings.

The second reason arises from the CJ own case law’s definition of what is the purpose underlying the notion of a general interest which is general enough to trigger a reaction (cf. Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee). In short, since the Court had held that “the general interest requires that descriptive signs or indications relating to the goods or services in respect of which registration is sought may be freely used by all” , it can be inferred that the general interest underlying the ground for refusal of registration of a mark because of its descriptiveness is not exclusively the interest of the trade‑mark applicant’s or proprietor’s competitors but a common (“used by all”) interest.

In my view the decision is fair enough. Lancome’s argument pivots around a quite dangerous and slippery-slope kind of approach which is that only competitors may sue for invalidity of a descriptive trademark. It is quite easy to see that once standing is so “factually” (un)defined, each time someone (even a trade mark owner) files an invalidity action against an allegedly descriptive mark, the trademark applicant could challenge the standing by asking that the subject who has filed the invalidity action show proof of its actual or potential economic interest in having the contested mark declared invalid. Furthermore, and by the same token, anytime a TM Office refuses a trademark as descriptive, the TM applicant would have the right to request the TM Office to specify who is being harmed and how the harm would take place (i.e. which is the company that would suffer an actual or potential economic interest if the contested mark is declared valid).

Beware that I am not saying that it is impossible or economically unreasonable to restrict standing; however, at least in the civil system where judicial restraint is the norm (judges should only apply and interpret the law, don’t create or make it), changes which may have far reaching consequences should be the realm of the legislatures, not the result of one company’s desire to register a (dubiously distinctive) trademark.

Is this all to be said on this decision? Not quite. The real juicy and part, at least in my view, was in the second set of grounds: doing what the applicant for invalidity did, is compatible with a “role” of a law firm?

Lancôme argued, in fact, that the right of a law firm to file an application for a declaration of invalidity of a Community trade mark, on its own account and in its own name, “is incompatible with the role of the legal profession, as it is recognized (emphasis added) throughout the European Union” (at §45).

I have not had the benefit to read Lancome’s submissions and thus I ignore how and on the basis of which documents Lancome was able to subsume how the legal profession is recognized throughout the EU. Surely, and hopefully Lancome did not rely on the famous pun “what is a lawyers’ convention on the maiden voyage of the Titanic? A good start…”.

From the decision itself I see that Lancome argued that under European Union law, the role of the legal profession “has always been to collaborate in the administration of justice. Article 19 of the Statute of the Court of Justice is based on that conception of the profession of lawyer, which is also apparent from the case‑law and, in particular, from Case 155/79 AM & S Europe v Commission” (at §46)

The CJ, regrettably eluded the question. It did say (in what I personally, consider a dicta) at § 50, that neither art. 55(1)(a) may be held to have any contact with the legal profession, nor the CTM regulation contains any rules applicable to the exercise of that profession, as such rules are in principle, in the absence of specific rules of European Union law in the field, established by each Member State (which seems to contradict Lancome’s belief that there is a common recognition of the legal profession in the EU).

But the CJ did not need to go any deeper than that, because it deftly concluded that this argument was a separate ground of appeal, and since it had not been raised before the GC and, since it did not relate to the admissibility of a court action but to an application made to OHIM, it was not a matter of public interest which the GC should have examined of its own motion. Therefore, since in an appeal the jurisdiction of the CJ is confined to review of the findings of law on the pleas argued before the GC, the argument of incompatibility was dismissed as inadmissible.

What a pity… and what a relief for the legal profession! Can anyone imagine the practical consequences, if the ECJ had actually found and held that lawfirm (and lawyers) have an explict and affirmative duty to collaborate in the administration of the justice, so as that their actions would be subject to review under a “meritocratic” standard? How would so many quirky, incomprehensible –if not reprehensible- oppositions which have been and are still filed eveyday ever be justified under such a standard?

Better leave lawfirms and lawyers on the Titanic…