The European Court has ruled in case C‑705/17 Patent- och registreringsverket v Mats Hansson.

In nutshell, this case concerns whether disclaimers regarding the trademark scope of protection have to be taken into consideration for the purpose of trademark assessment. What exactly happened?

Swedish company Norrtelje Brenneri Aktiebolag registered in 2007 the following trademark in Class 33 of the Nice Agreement:

That registration was accompanied by a disclaimer stating that ‘registration does not give an exclusive right over the word RoslagsPunsch’. The disclaimer was required by the Swedish Patent Office as a condition of registration of the trademark because the term ‘Roslags’ refers to a region of Sweden and the term ‘Punsch’ describes one of the goods covered by the registration.

Mr Hansson, as an individual, applied in 2015 for registration of the word mark ‘ROSLAGSÖL’ in Sweden for goods in Class 32, in particular non-alcoholic beverages and beers.

The Swedish Patent Office rejected the application for registration because of the likelihood of confusion between the new application and the earlier trademark. The problem was that the term ‘Roslags’ is descriptive. The fact that both signs also included other words or figurative elements did not reduce the similarity. Moreover, the signs referred to identical or similar products which address the same customers.

Mr Hansson appealed this decision before the Patents and Market Court, arguing that there was no likelihood of confusion between the signs in question. As regards the effect of the disclaimer relating to the earlier trademark on the outcome of the action, the Patent Office argued before that court that an element of a trademark which has been excluded from protection by means of a disclaimer must in principle be regarded as not distinctive. In the present case, registration of the earlier trade mark had been granted with such a disclaimer because the trademark included a term that was descriptive of a geographical region, ‘Roslags’.

However, The Patent Office’s practice concerning the non-distinctive character of geographical names had developed in the meantime, putting into practice the conclusions in paragraphs 31 and 32 of the judgment of 4 May 1999, Windsurfing Chiemsee(C‑108/97 and C‑109/97, EU:C:1999:230). The term ‘Roslags’ was now capable of registration in itself as a trademark and was distinctive for the goods at issue in the present case so that it could even dominate the overall impression given by the earlier trade mark. It thus followed from a global assessment of the signs at issue that because of the common element ‘Roslags’ the relevant public could have the impression that the goods referred to by those signs had the same commercial origin.

The Patents and Market Court allowed Mr Hansson’s application and approved the registration of his sign as a trademark, finding that there was no likelihood of confusion. The court also stated that, despite the disclaimer, the terms to which it related had to be taken into account in the assessment of that likelihood, in so far as they could have an effect on the overall impression created by the earlier trade mark, and hence on the extent of protection of that mark. According to the court, the purpose of the disclaimer was to make it clear that the exclusive right deriving from registration of the earlier trade mark did not relate to the terms referred to as such.

The Patent Office appealed against the judgment of the court to the Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm, Sweden.

That court explains that in its view Directive 2008/95 and the associated case-law confirm that the substantive rules on the protection of a national trade mark are in principle fully harmonized at the level of EU law, while the procedural rules are within the competence of the Member States. It therefore asks whether a national rule allowing a disclaimer to be made may be categorised as a procedural rule, even though it has the effect of changing the criteria on which is based the global assessment to be carried out in order to examine the likelihood of confusion within the meaning of Article 4(1)(b) of that directive.

That court is uncertain whether that provision, having regard in particular to the settled case-law of the Court according to which the assessment of the likelihood of confusion must be based on an overall impression and the perceptions of consumers play a dominant part in the global assessment of that likelihood, may be interpreted as meaning that a disclaimer can affect that assessment because an element of the earlier trade mark was, at the time of registration, expressly excluded from protection by means of that disclaimer, so that that element must be given less importance in the analysis of the overall impression than it would have had in the absence of the disclaimer.

So the Svea Court of Appeal, Patents and Market Court of Appeal decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Must Article 4(1)(b) of [Directive 2008/95] be interpreted as meaning that the global assessment of all relevant factors which is to be made in an assessment of the likelihood of confusion may be affected by the fact that an element of the trade mark has expressly been excluded from protection on registration, that is to say, that a so-called disclaimer has been entered on registration?

(2) If the answer to the first question is in the affirmative, can the disclaimer in such a case affect the global assessment in such a way that the competent authority has regard to the element in question but gives it a more limited importance so that it is not regarded as being distinctive, even if the element would de facto be distinctive and prominent in the earlier trade mark?

(3) If the answer to the first question is in the affirmative and the answer to the second question in the negative, can the disclaimer even so affect the global assessment in any other way?’

The European Court’s decision:

Article 4(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the global analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, or to attribute to such an element, in advance and permanently, limited importance in that analysis.