Under certain conditions, a business operator may obtain cumulative protection for its product through both a patent and a trademark, thereby extending the term of protection for that product. This benefit is contingent upon the operator acting in good faith on the date the trademark is filed. If it is shown that the operator is in fact seeking to obtain undue protection and to circumvent the effects of the expiration of its patent, the trademark will be invalidated.
CeramTec, a company specializing in ceramic components for surgical implants, held a European patent designating France, which expired in August 2011.
A few weeks later, she filed three European Union trademarks: a color trademark for Pantone 677C pink, a figurative trademark, and a three-dimensional trademark depicting a marble of that color, with the aim of obtaining new protection since her patent was no longer valid.
It is well known that trademarks are a highly sought-after protection tool for manufacturers, as they can be renewed indefinitely, every ten years.
Believing that Coorstek was marketing products featuring this distinctive pink color, CeramTec sued the company for trademark infringement, among other charges.
However, Coorstek filed a counterclaim seeking to invalidate the trademarks on the grounds of bad faith, arguing that the sole purpose of those applications was to extend protection for a technical solution derived from an expired patent.
This case went all the way to the Court of Justice and the French Court of Cassation, demonstrating that issues such as the term of protection and the accumulation of industrial property rights are significant and raise genuine questions of principle.
Following the judgment of the Court of Justice of the …
