Follow up on the Maglite decisions of OHIM, the CFI and the ECJ today in the District Court of The Hague (P.H. Blok), in proceedings on the merits between Mag Instrument, Inc. and Dutch trader Volume Trading B.V., who allegedly infringed Mag Instrument's community trade mark rights with regard to the shape of the torches (above that also copyright infringement and unfair competition claims are involved). The CTMs were the object of invalidity proceedings before OHIM. The proceedings before the District Court of The Hague were suspended because of the pending OHIM invalidity proceedings. The suspension was lifted by the Court after Mag Instrument had withdrawn the invalidity proceedings with regard to the Mini Maglite. At the same time the Court fixed a personal appearance in court by the parties, which is business as usual in Dutch courts since some years and in most cases functions as a meeting for counsel's closing speech. In most cases after the person appearance of the parties the Court will come to a decision, and there will not be a possibility of a reply, rejoinder, and finally, pleadings.


One of Mag Instruments claims against Volume - who had imported 'Mini' torches like the one depicted on the left from China in the Netherlands in 2002 - was for a declaratory judgment that Volume in doing so infringed Mag Instrument's rights and that Volume's behaviour was an act of unfair competition.

Volume counterclaimed with an invalidity action which she filed conditionally in case Mag Instrument's CTM would not be cancelled in the OHIM proceedings. The invalidity action covered also Mag Instrument's Benelux trade mark right with regard to the torches.

With regard to the counterclaim - based on Volume's viewpoint that the trade mark is not distinctive at all - the Court first of all seized the decisions of OHIM, the CFI (February 7, 2002, T-88/0) and the ECJ (October 7, 2004, C-136/02). These decisions embrace the opinion that the shape of the Mini Maglite torch has no inherent distinctive character. Thus an earlier trade mark application with regard to the shape was refused. The fact that the present case is based on a subsequent application with regard to the same shape is not an obstacle for the Court to rule that the present community trade mark doesn't have inherent distinctiveness too on the same grounds as OHIM and CFI used to come to that conclusion.

But this conclusion does not hamper that the trade mark can have acquired distinctiveness through use. Especialy since in the proceedings before the CFI and the ECJ this has not been an issue, the Court decides that acquiered distinctiveness should be taken into account. An extra argument is that the new CTM was applied for and registered on grounds of acquired distinctiveness.

The burden of proof with regard to acquired distinctiveness lies with Mag Instrument, because art. 7 par. 3 in conjunction with art. 51 par. 2 CTMR formulate acquiered distinctiveness as an exception to the general rule which can be found in art. 7 par. 1 in conjunction with art. 51 par. 1 CTMR that a trade mark application should be refused if the shape concerned is non distinctive.

Although Mag Instrument already filed some evidence of use, the Court found that evidence not properly illustrated with regard to the issue of acquiered distinctiveness. How can the Court conclude from the filed evidence that the shape that lacks inherent distinctiveness has acquired distinctiveness by use in such a way that the relevant public is the opinion that the shape is a sign to identify certain goods as originating from a particular company.

Mag Instrument is given the opportunity to come forward with an explanation, but it is also ordered to file all documents she has with regard to a international market survey, because she announced that she had given instructions for such survey. The Court did not buy Mag Instrument's defense that the survey was not finished yet. Volume and the Court are entitled to see what has happend in the meantime.

With regard to the Benelux shape trade mark it is interesting to note that the Court follows the decision of OHIM, the CFI and the ECJ: although the CTMR is a autonomous system, the criteria for judging the inherent distinctiveness of a trade mark are at least comparable. Furthermore the Community legislator has laid down explicitly (consideration 16 CTMR) that contradictory decisions should be prevented with regard to claims between the same parties with regard to the same acts based on a CTM and parallel national trade marks. Thus the Court finds that also for the validity of the Benelux trade mark acquired distinctiveness will be the crucial issue.

To be continued.