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Options ranging from the online filing of a Community trade mark or of a registered Community design application to making consultations in trade mark and design databases are services which are now taken for granted by anyone accessing the Office’s e-systems – now at the new www.oami.europa.eu address. However, with a website with over half a million visitors and nearly ten million individual page requests every month, the OHIM has to ensure that this tool is as user-friendly as possible, as well as offering the highest possible quality in terms of both the e-services provided and the technology used. Between 1994 and 1998, in the absence of the Office’s own website, an OHIM webpage existed on the European Commission’s Internet portal, containing purely institutional information regarding the Office. When launched in October 1998, two and a half years after the Office opened, the OHIM website mainly contained information relating to the legal aspects of the Office, various documents offering general information on the CTM system, a handful of Boards of Appeal decisions and a PDF version of the English language CTM application form. It was not until December 1999 that the first element of interactivity was brought into the site with the introduction of the CTM Online database. This database, which provides fully searchable CTM application and registration information, is still one of the most popular online tools offered by OHIM, with new and more sophisticated versions launched each year. In the following year, the CTM Agent database was placed on the website, offering potential CTM applicants the possibility of searching through a comprehensive list of all professional representatives authorised to act before the Office. September 2001 heralded a significant milestone in the brief life of the developing OHIM website when all of the decisions and case-law relating to the Boards of Appeal, Opposition Division, Cancellation Division and Refused Trade Marks were progressively added to the site. In terms of providing information on the Community trademark, both in general terms and relating to specific cases, the Office’s Internet portal in 2001 was proving to be a great success. However, the ever-changing Internet technologies made it clear to the Office that the users of OHIM’s services would soon be demanding better access to the Office and to tools which would enable them not only to be informed about the CTM, but to deal with their filings and consultations directly via the Internet. For the first time, in September 2001, the first full revamp of the site took place, not only in terms of graphic design, but also as regards the technology employed to manage the site. A combination of Java script and Dream Weaver templates, conceived by the IT specialists who have pioneered the rapidly developing website, paved the way for the fully interactive Internet portal sought by OHIM management, and, only two months later, the first fully interactive OHIM tool went live. In November 2002, the Office launched the first version of CTM e-filing. Though some initial problems beset the implementation of e-filing, the Office’s efforts, in conjunction with ongoing constructive dialogue and consultations with users, have enabled the OHIM to ensure that this service today is used by around 70% of all applicants filing a Community trade mark. At the time it was an achievement the Office could be justifiably proud of, and though quite basic by today’s standards, it has been the basis for the subsequent e-business projects currently in place. Before the registered Community design (RCD) took effect in April 2003, the website had to be completely restructured, with changes to both the graphic design and layout of the site, as well as the obvious incorporation of all RCD-related texts. Under the banner of ‘E-Business’, the progression of the website to becoming a fully interactive portal for CTM and RCD users took a step closer to reality with the appearance of the first RCD e-filing interface in June 2003. Though not as popular as the CTM e-filing system, principally due to the fact that many designers preferred to send the physical copy of their design by post, the rate of use of RCD e-filing is steadily increasing. The MYPAGE portal, giving users their own personal password-protected area of the site in which they can carry out filings, check and modify their personal data or communicate electronically with the Office, was launched in December of 2004 and has attracted a large number of users since then. Under a year later, in November 2005, the CTM e-renewal tools were launched, giving CTM proprietors the possibility of renewing their ten-year-old marks at the touch of a button. To date, over 90% of all CTM renewals are filed through the e-renewal systems. The Office has progressed in leaps and bounds since the now seemingly archaic 1998 version of OAMI ONLINE, but the vision of bringing the Office closer to its users via the Internet is still very much at the forefront of the rapidly developing and intense e-business programmes. In the near future we will see the implementation of CTM Opposition e-filing, the possibility of making payment directly online and eventually online access to all CTM & RCD files, including the documents on file. The concept of fully utilising the infinite possibilities offered by the Internet is not, of course, exclusive to the OHIM. In March 2000 the European Council of Lisbon highlighted the need for the creation of a new .eu top level domain name as a way of accelerating the e-economy and e-commerce within the EU, as well as being a way of enhancing the identity of EU based enterprises. Following the adoption of this new .eu top level domain name by the European Parliament in April 2002, the European Commission decided in January 2005 that all EU institutions, bodies and agencies would be identified on the Interent using third level domain names under .europe.eu. On May 9 2006 , and in line with the Commission’s decision, the OHIM’s website – OAMI ONLINE – has changed its address to www.oami.europa.eu. This change is not the end of a long road in the short lifetime of OAMI ONLINE but rather a new milestone in the developing e-business strategies of the Office.
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Internal Restructuring in OHIM’s Trade Mark Operations Towards the end of last year, the OHIM Management Committee informed the staff that further changes to the Office set-up were imminent, and in particular that the trade mark operations would be restructured to improve the efficiency and quality of OHIM’s work in this area. The proposal to revamp the way trade mark cases are handled at all stages of the registration process stemmed from the desire to implement what has been termed the “one file one examiner” principle. This entails any one examiner handling all aspects of the registration of a Community trade mark during the various administrative stages of its progress through the Office, meaning that, in principle, only one examiner in one department would be responsible for any particular file. Essentially, this makes it easier for any interested party to contact the correct person when enquiring about their CTM file and it also enables the examiners working at OHIM to diversify the tasks they carry out, as opposed to constantly doing the same work on a day-to-day basis. These organisational changes, which have now been made official and which should be in force this summer, contemplate the creation of two new trade mark departments and the disappearance of both the current Trade Mark Department (TMD) and of the Administration of Trade Marks and Designs Department (ATMMD). Both departments will, in principle, carry out the same basic examination and registration procedure related tasks, with additional responsibilities assigned uniquely to one department or the other in certain areas. Each department will also have its own particular language portfolio, though both will deal with English, German, Spanish and French files. The Trade Marks & Registry Department will carry out all examination and registry procedures in all English, German, Spanish and French cases, as well as those filed in Dutch, Swedish, Danish, Slovenian, Slovakian, Czech, Polish and Finish. This department will also be responsible for handling the trade mark and design registry and related databases, as well as the Euronice tasks currently done by the Trade Mark Department . The Trade Marks & Cancellation Department , as well as carrying out basic examination tasks, will be in charge of trade mark and design data reception, capture and dispatch, as well as handling all cancellation proceedings before the Office. This department will also deal with the Madrid Protocol related files. The restructuring process has been the subject of intense preparation, beginning in October 2005 with the creation of the ‘Task Force Reorganisation’, composed of around 20 members, including line managers from ATMDD and TMD, and other colleagues from HRD, ITFMD, FD and QMD to provide the necessary support. There then followed a pilot test in November 2005 to assess whether the IT structures in place, and particularly the Euromarc database, could support the implementation of the ‘one file one examiner’ system. This test phase concluded successfully in March of this year. As the staff making up the two new departments will be taken from the current TMD and ATMDD, and in order to test the correct functioning of all of the new working procedures before their final implementation, a provisional ‘micro-department’ has been established with 28 members of staff taken from both of these departments. A fundamental part of this provisional test environment is to provide training for examiners in all areas of the examination procedure The conclusions drawn from the ‘micro-department’ will enable the Office to decide on exactly how to implement the new working methods and whether or not the transition to the new situation can take place before July 1st, as proposed. An internal Communication Group made up of representatives from most of the OHIM departments has kept the staff regularly up to date with all information relating to the evolution of the transition process and, on the basis of current developments, it is expected that both of the new departments will be operational on the scheduled July 1st deadline.
The Community trade mark (“CTM”) No 2 433 290, ESM (fig.) was filed on 31/10/2001 and registered on 29/01/2003 for goods and services in Classes 16, 41 and 42.
On 20/11/2003 , a request for a declaration of invalidity against the CTM was filed against all of the goods and services of the CTM registration.The applicants claimed that the CTM had been filed in bad faith ( Article 51(1)(b) CTMR) since the CTM proprietor, who worked as a European contact person for the first applicant and as a manager for the second applicant, had applied for a trade mark that belonged to the first applicant. The applicants further claimed that the first applicant is the owner of the earlier non-registered sign “ESM” used in the course of trade in Germany and protected under German law as a title of a printed publication (Article 52(1)(c) CTMR in conjunction with Article 8(4) CTMR). The CTM proprietor rejected such arguments. Both parties filed evidence in support of their arguments As regards the absolute ground based on bad faith, the Cancellation Division considered the request unfounded. The Cancellation Division noted that t he term ‘bad faith’ is not defined in Community trade mark law but can be considered to mean “dishonesty which would fall short of the standards of acceptable commercial behaviour”. It further indicated that if the evidence raises doubts on the assessment of bad faith, uncertainty has to be resolved to the benefit of the CTM proprietor, as the good faith presumption in such circumstances prevails. In the present case, t he evidence did not enable the Office to establish that the applicants were the rightful owner of the mark and that by filing the trade mark application the CTM proprietor had the intention to lay its hands on the mark of the first applicant. The evidence only showed that the parties co-operated on the same project for the relevant years. In the absence of any further evidence as regards ownership of the mark during the period of business relations between the parties and the use of the mark prior to 1994, the Cancellation Division concluded that the applicants failed to file persuasive evidence that the CTM application was made in bad faith. As regards the earlier non-registered sign “ESM” used in the course of trade, the Cancellation Division noted that t he Office treats the law of the Member State applicable by virtue of Article 8(4) CTMR as an issue of fact, i.e. the same principle applies as in international private law. In other words: there is no iura novit curia approach within Article 8(4) CTMR. Hence, pursuant to Article 74(1) CTMR it is for the party relying on a right to a specific business identifier within Article 8(4) CTMR to provide the Office with the necessary details on how the respective national law stands, and what the required elements for establishing the respective rights are. The party seeking to rely on an Article 8(4) right must further indicate the goods or servicesto which the respective business identifier relates. It must also be shown that the claimed right is of more than local significance, and, in addition, actual use must be shown. The criterion “used in the course of trade” contained in Article 8(4) CTMR has to be interpreted as a specific requirement under European law and consequently the Office will request proof of actual use of the invoked signs, in the absence of which the notice of opposition or request for declaration of invalidity will be rejected. The use must be genuine in the same sense that use of a Community trade mark (or a national trade mark) must be “genuine” in order to be invoked against a later trade mark or avoid revocation. In addition, the use must be of such nature and intensity as to fulfil the conditions of the coming into existence of the relevant right under national law. Consequently, this claim was also rejected by the Cancellation Division.
Country Overview Cyprus & the Community Trade Mark
In terms of Community trade mark filings, the total of 476 CTM applications received from Cypriot businesses represents 0.08% of all Community trade marks filed at the OHIM since 1996.
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Community Design |
Clarifications regarding RCD priority documents
According to Article 41(1) of the Community Design Regulation (“CDR”), a person who has duly filed an application for a design right or for a utility model in or for any State party to the Paris Convention for the Protection of Industrial Property or to the Agreement establishing the WTO shall enjoy, for the purpose of filing an application for a registered Community design in respect of the same design or utility model, a right of priority of six months from the date of filing of the first application. As laid down by Article 2(1) of the Decision of the President EX-03-5 of 20 January 2003 (www.oami.europa.eu/en/office/aspects/pdf/Ex03-5.pdf), the evidence to be provided by the applicant for a Community design shall consist of a certified copy of the previous application or registration, issued by the authority which received the previous application and accompanied by a certificate stating the filing date of the previous application. That document may be filed in the original or in the form of an accurate photocopy. To the extent that the original document contains a representation of the design in colour, the photocopy shall also be in colour. Notwithstanding this clear legal framework, it has been brought to the Office’s attention that there is still some user confusion regarding what may constitute a valid priority document. First of all, to be acceptable as valid evidence attesting priority, the document filed must exclusively concern a previous design or utility model application or registration. Previous patent or trade mark applications or registrations are thus not acceptable according to Article 41(1) CDR, cited above. Unlike for trade marks, where priority can be claimed when filing the application or within a period of the subsequent two months, the priority claim for designs, when such claim is made subsequent to the filing of the application, it must be submitted within one month of the filing date, according to Article 8(2) of the Community Design Implementing Regulation (“CDIR”). The documents attesting priority must be in the form of a certified copy a ccompanied by a certificate stating the filing date of the previous application. Simple filing receipts obtained by national offices, even where bearing an official seal, are not certified copies of design applications or registrations, and will therefore not be deemed as suitable priority evidence. Moreover, priority documents must, as implicitly stated by the above Decision of the President, contain a representation of the previous design. Certified copies of national application or registration documents, such as the German “Urkunde” certificate, which do not contain a representation of the design are not acceptable as priority documents. Unlike for trade marks, where the Office accepts, inter alia, print-outs from the database of the relevant national Offices as priority documents, for designs, database print-outs from official or unofficial websites are not foreseen in Article 2 of the Decision of the President EX-03-5 of 20 January 2003. These kinds of documents are therefore not suitable as priority documents. Finally, as for trade marks, it is also possible for design applications to claim an exhibition priority if the products have been disclosed at a duly recognized exhibition. However, it is important to underline that this is limited to exhibitions recognized under the Convention on International Exhibitions of 22.11.1928 and that only a very small number of exhibitions, in particular world exhibitions, fall under this category. The last exhibition recognized for this purpose was “The 2005 World Exposition, Aichi, Japan” from 25 March to 25 September 2005 in Nagoya, Japan. Priority claims for other national exhibitions are therefore dismissed and serve only to create delays in the registration of the applications. INVALIDITY DECISION: translation of evidence (appealed) ICD 000000560 / RCD No. 000049424-0001 On 19/01/06 , the Invalidity Division of the Designs Department dismissed an application for a declaration of invalidity due to lack of evidence. The Invalidity Division found that some of the documents filed by the applicant as evidence could not be taken into account since they were not submitted in the language of the proceedings and a translation did not follow within the two months period foreseen in Article 29(5) of the Community Design Implementing Regulation (“CDIR”). According to Section 4(7) of the Invalidity Guidelines (available on www.oami.europa.eu/en/design/pdf/guidelines_inv.pdf), evidence which is not filed/translated in the language of the proceedings is deemed as not having been submitted. In invalidity proceedings, failure to submit a translation of evidence is not a deficiency which the Office invites the relevant party to remedy unless the failure affects the admissibility of the application. Basically, the provision of evidence is part of the substantiation of the application. Where evidence is missing, the application is to be rejected as not substantiated. The decision, which is currently under appeal, can be found at: www.oami.europa.eu/pdf/design/invaldec/ICD%20000000560%20decision%20(DE).pdf
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Case Law | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
LATEST TRADE MARK AND DESIGN NEWS FROM LUXEMBOURG
A: European Court of Justice (ECJ): Appeals from decisions of the Court of First Instance, Article 63 CTMR A-1: JUDGMENTS AND ORDERS (-)
A-2: DEVELOPMENTS IN PENDING CASES Nicky/Noky : C-92/06 P (appeal from T-396/04): Office response filed. Keywords: Similarity of marks: phonetic approach (impact of) – Similarity of marks: phonetic approach/findings on pronunciation on a national territory. The CFI (First Chamber; Cooke, Labucka, Trstenjak) had confirmed a decision of the 1 st Board of Appeal. The CFI confirmed that “NICKY” - “noky”, “NOKY/and device” are similar. Specific weight was given to the last syllable “-ky” which would draw specific attention of French speakers. Unex/Unex : C-197/05 P - Removed. The case was removed from the Court’s register by order of the President of the Court of 7 February 2006 . The appellant had informed the Court that it was discontinuing its appeal. A-3: NEW APPEALS B-1: RULINGS Elizabeth Emanuel : C-259/04 – Judgment of 30 March 2006 . Keywords: ECJ procedural law/lacuna: comments on the Advocate General’s opinion - Transfer: mark consisting of the name of the first manufacturer – Transfer: business assigned together with the mark and the goodwill - Revocation: deceptiveness of an assigned mark. In terms of procedural law, the ECJ had to deal with the issue of comments submitted by a party to the Advocate General’s opinion. The law is silent in this respect. On substance, the judgment concerns a case where a business had been assigned together with all assets, including a trade mark application consisting of the name of the initial owner, Elizabeth Emanuel (“the designer”), and the associated goodwill. The designer was the designer of the wedding dress of the late Diana, Princess of Wales.The mark was subsequently registered. Upon a subsequent assignment, the new owner applied for registration, as a trade mark, of “Elizabeth Emanuel”. The designer opposed that application, and subsequently filed a request for revocation on the grounds that the mark was liable to mislead the public. (a) Comments on the Advocate General’s opinion “(14) By letter of 22 February 2006 , Ms Emanuel submitted observations on the Opinion of Advocate General Ruiz-Jarabo Colomer. She alleged that the Advocate General had erred in his interpretation of Articles 3 and 12 of Directive 89/104 and the Court’s earlier case-law. (15) Since neither the Statute of the Court of Justice nor the Rules of Procedure make provision for the parties to submit observations in reply to the Opinion of the Advocate General (see the order of 4 February 2000 in Case C-17/98 EmesaSugar [2000] ECR I-665, paragraph 2), Ms Emanuel’s observations cannot be accepted. (16) However, the Court may, of its own motion, on a proposal from the Advocate General or at the request of the parties, reopen the oral procedure, in accordance with Article 61 of its Rules of Procedure, if it considers that it lacks sufficient information, or that the case must be dealt with on the basis of an argument which has not been debated between the parties (see Case C-309/99 Wouters and Others [2002] ECR I-1577, paragraph 42; Case C-434/02 Arnold André [2004] ECR I‑11825, paragraph 27; and Case C-210/03 Swedish Match [2004] ECR I-11893, paragraph 25). ” (b) On substance: Answers of the Third Chamber of the ECJ (judge-rapporteur. J. P. Puissochet) “ (1.) A trade mark corresponding to the name of the designer and first manufacturer of the goods bearing that mark may not, by reason of that particular feature alone, be refused registration on the ground that it would deceive the public, within the meaning of Article 3(1)(g) of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, in particular where the goodwill associated with that trade mark, previously registered in a different graphic form, has been assigned together with the business making the goods to which the mark relates. (2.) A trade mark corresponding to the name of the designer and first manufacturer of the goods bearing that mark is not, by reason of that particular feature alone, liable to revocation on the ground that that mark would mislead the public, within the meaning of Article 12(2)(b) of Directive 89/104, in particular where the goodwill associated with that mark has been assigned together with the business making the goods to which the mark relates.” B-2: NEW CASES B-3: DEVELOPMENT IN PENDING CASES Europolis : C-108/05 – Opinion of Advocate General Mrs. Sharpston of 30 March 2006 . Keywords: Distinctiveness acquired on the market – Article 3(3) TM Directive. The case concerns a Benelux Trade Mark Office (“BTMO”) application filed in 1997 of the word EUROPOLIS for a range of services (insurance, financial affairs, monetary affairs, real estate affairs, transport etc.). The BTMO had rejected the application on the ground that it lacked intrinsic distinctiveness. The applicant appealed to the Gerechtshoftes-Gravenhage, stating that the sign had been in use since 1988 and thus had acquired distinctiveness in the market place. The court referred questions to the ECJ, focusing mainly on the relevant territory and point of time as to when the sign must have had acquired distinctiveness. “(1) Must Article 3(3) of the Trade Marks Directive be interpreted as meaning that in order to acquire distinctive character (in the present case through a Benelux trade mark) as a result of use, as referred to in that provision, it is necessary that the sign be regarded as a trade mark, before the date of application, by the relevant public throughout the Benelux territory and, therefore, in Belgium, the Netherlands and Luxembourg? If the answer to question 1 is in the negative: (2) Is the condition for registration laid down in Article 3(3) of the Trade Marks Directive satisfied, for the purposes of that provision, if the sign, as a result of the use made of it, is regarded as a trade mark by the relevant section of the public in a substantial part of the Benelux territory and can this substantial part be, for example, the Netherlands alone? (3)(a) When assessing distinctive character acquired through use, within the meaning of Article 3(3) of the Trade Marks Directive, of a sign – consisting of one or more words of an official language in the territory of a Member State (or, as in the case in point, the Benelux territory) – is it necessary to take into account the language regions within that territory? (b) For registration as a mark, should the other requirements for registration be satisfied, is it sufficient if/required that the sign be regarded as a trade mark by the relevant section of the public in a substantial part of the language region of the Member State (or, as in the case in point, of the Benelux territory) in which that language is an official language?” Advocate General Sharpston suggested the following answers: “Questions 1 and 2: It is not necessary, for the purposes of assessing acquisition of distinctive character of a word mark through use under Article 3(3) of the Trade Marks Directive, to have regard to the entirety of the Benelux territory (Belgium, the Netherlands and Luxembourg) if for linguistic reasons the relevant Class of persons, as previously defined for the purposes of Article 3(1), is to be found only in parts of that territory. Question 3: Linguistic communities in a Member State or in the Benelux territory should be taken into account in assessing acquired distinctive character through use of a sign consisting of word or words. Where a word mark would fall to be refused registration as devoid of any distinctive character (Article 3(1)(b)) and/or because it consists entirely of a word or words that are descriptive in a particular language (Article 3(1)(c)), that mark may only be registered under Article 3(3) where it can be shown that the mark has acquired distinctive character through use throughout the relevant linguistic community (namely, of the Member State, or of the Benelux territory taken as a whole).” Celine : C-17/06 – Office contribution filed on 24 March 2006 . Keywords: TM-Directive: Article 5 – TM infringement/criteria for “use” of a business identifier – Use of a business identifier: in a TM manner? The case concerns a conflict in France between two textile companies with identical company names, Celine SA (established 1928) and Celine Sarl (established 1992). The plaintiff, the older company, also holds a trade mark right in its name for clothing (1948). The defendant claimed not to use its name in a “trade mark manner” because the company name would not directly appear on its products.
C: Court of First Instance (CFI): Judgments and Orders on appeals against decisions of the OHIM, Art. 63 CTMR
Eurohypo : T-439/04 – Judgment of 3 May 2006 (action dismissed). Keywords: Procedural law: CFI proceedings: presentation of facts for the first time - Board of Appeal proceedings/examination of facts of its own motion: scope – Absolute grounds for refusal: relationship – Descriptiveness: definition. The action was directed against a decision of the 4 th Board of 6.8.2004, R 829/2002-4, which rejected CTM application EUROHYPO for “financial affairs, monetary affairs, real estate affairs; provision of financial services, financing analysis, investment affairs, insurance affairs”. (a) Obligation of the Office to carry out a “stringent and full examination”: scope “(16) The applicant claims, in substance, that the contested decision infringes the first sentence of Article 74(1) of Regulation No 40/94, which provides that ‘[i]n proceedings before it [OHIM] shall examine the facts of its own motion’, because the examination of the facts carried out by the Board of Appeal was not exhaustive. (17) According to settled case-law, the examination carried out by the competent trade mark authority must be a stringent and full examination in order to prevent trade marks from being improperly registered. Therefore it is necessary, for reasons of legal certainty and good administration, to ensure that trade marks whose use could successfully be challenged before the courts are not registered (see, with respect to First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) Case C-104/01 Libertel [2003] ECR I-3793, paragraph 59 and the case-law cited). (18) However, the first sentence of Article 74(1) of Regulation No 40/94 does not state how OHIM is to carry out an examination of the facts. (19) Furthermore, the Registrability (sic) of a sign as a Community trade mark must be assessed only on the basis of the relevant Community legislation as interpreted by the Community Courts. Therefore, it is sufficient that the Board of Appeal applied the descriptiveness test, as interpreted by the case-law, in order to reach a decision and it was not obliged to justify its action by the production of evidence (Case T-289/02 Telepharmacy Solutions v OHIM (TELEPHARMACY SOLUTIONS) [2004] ECR II-0000, paragraph 54, and Case T-19/04 Metso Paper Automation v OHIM (PAPERLAB) [2005] ECR II-0000, paragraph 34). (20) In this case the Board of Appeal analysed the meaning of the elements ‘euro’ and ‘hypo’ for the German consumer and the possible meanings of the compound word ‘eurohypo’ (paragraphs 13 to 16 of the contested decision). The finding that there are no references to further research in the statement of reasons of the contested decision, such as a statement of the results of an Internet search, is not sufficient to establish that the Board of Appeal has substituted its own interpretation of the word at issue for that of the relevant public. The fact that the Board of Appeal, being sufficiently convinced of the descriptiveness of the elements ‘euro’ and ‘hypo’ and the word ‘eurohypo’ to refuse registration, chose not to carry out further research is not contrary to the first sentence of Article 74(1) of Regulation No 40/94. (b) CFI proceedings: presentation of facts for the first time “(22) Moreover, as regards the results of an internet search produced by the applicant in the annex to the application, it must be recalled that it is not the Court’s function to review the facts in the light of evidence adduced for the first time before it. Facts relied on before the Court, without having been submitted previously before any of the bodies of OHIM, must be disregarded (see, to that effect, the judgment in Case T‑237/01 Alconv OHIM – Dr Robert Winzer Pharma (BSS) [2003] ECR II-411, paragraphs 61 and 62, confirmed on appeal by the order in Case C-192/03 P Alcon v OHIM [2004] ECR I-8993; Case T-128/01 DaimlerChrysler v OHIM (Calandre) [2003] ECR II-701, paragraph 18; Case T-129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 67; Case T-85/02 Díaz v OHIM – Granjas Castelló (CASTILLO) [2003] ECR II-4835, paragraph 46, and Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II-0000, paragraph 20).” (c) Relationship of the absolute grounds for refusal “(42) It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see Case C-329/02P SAT.1 v OHIM [2004] ECR I-8317, paragraph 25, and the case-law cited). (43) However, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b) to (d) of that provision (see TELEPHARMACY SOLUTIONS, paragraph 19 above, paragraph 23 and the case-law cited). (44) It is also clear from the case-law of the Court of Justice and the Court of First Instance that a word mark which is descriptive of the characteristics of the goods or services concerned for the purposes of Article 7(1)(c) of Regulation No 40/94 is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) (Case C-265/00 Campina Melkunie [2004] ECR I-1699, paragraph 19; Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 86; and TELEPHARMACY SOLUTIONS, paragraph 19 above, paragraph 24 ).” (d) Descriptiveness within Article 7(1)(c) CTMR “(46) It is settled case-law that a sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by the intended public (Case T-356/00 DaimlerChrysler v OHIM (CARCARD) [2002] ECR II-1963, paragraph 25). (47) In this case, the services in respect of which registration was refused are all in the financial sector and are defined as ‘financial affairs; monetary affairs; real estate affairs, financial services, financing’. (48) As regards the intended public, the Board of Appeal found that this was the average consumer. Since the services in question are financial services aimed at all consumers that analysis, which is moreover not disputed by the applicant, must be confirmed. As the absolute ground for refusal was raised only in relation to one of the languages spoken in the European Union, namely German, the relevant public, in relation to which the descriptiveness of the mark must be assessed, is the average German-speaking consumer. (49) The Board of Appeal analysed the meaning of ‘euro’ and ‘hypo’ for the relevant public in paragraph 13 of the contested decision and concluded, in respect of each of those elements, that it was descriptive of the services in question. (50) In that connection, it must be recalled that a word sign is descriptive if at least one of its possible meanings designates a characteristic of the goods or services concerned (Case C-191/01P OHIM v Wrigley [2003] ECR I-12447, paragraph 32, and PAPERLAB, paragraph 19 above, paragraph 34). (51) First, the Court finds that the Board of Appeal rightly observed that the public concerned perceived ‘euro’, in the financial field, as the currency which is in circulation in the European Union and describes that monetary area. That element therefore designates, at least in one of its possible meanings, a characteristic of the financial services in question. The fact that ‘euro’ may, as the applicant claims, also be understood as the abbreviation of the word ‘ Europe ’ does not affect that finding.” Ligne terminée en triangle : T-388/04 – Judgment of 5 April 2006 (action dismissed; English version not yet available). Keywords: Absolute grounds for refusal: distinctiveness – Article 7(3) CTMR: distinctiveness acquired in the market place. The action was directed against decision R 175/2004-1 of the 1 st Board of 20.7.2004, by which the Board had rejected an application for a figurative element for goods in Class 25. The sign is set out below:
The CTM applicant had filed material claiming that the sign at issue had acquired distinctiveness in the market place. However, it was found that the sign used on the market differed from the one applied for as a CTM, and that the sign applied for has not genuinely been used on the market. The First Chamber of the CFI (Garcia-Valdecasas, Cooke and Trstenjak) confirmed the Board’s findings. C-2: INTER PARTES Renoflex/Flex : T-146/05 - Removal from the register (Order of 6 March 2006 ). The action concerned a decision of the 2 nd Board of 8. 2. 2005, R 469/2004-2. The plaintiff made a declaration that it wished to discontinue the proceedings. The defendant and intervener agreed. The case was removed from the register by Order of the President of the Fourth Chamber of the CFI. Echinaid/Echinacin : T-202/04. – Judgment of 5 April 2006 (action dismissed). Keywords: Conflict of marks: pharmaceutical marks. – Pharmaceutical marks: likelihood of confusion. – Pharmaceutical marks/LOC: perception of consumers. The case concerned a conflict between CTM application ECHINAID for a range of goods in Class 5, and the earlier rights ECHINACIN, registered in various Member States for a range of goods in Class 5. The 2 nd Board had rejected the opposition on the grounds that the relevant consumers would realize the generic meaning of “Echina-“ as referring to the plant Echinacea, and that, in consequence of the different suffixes, there would be no likelihood of confusion. The First Chamber of the CFI (Cooke, Labucka, Trstenjak) confirmed that view and rejected the appeal. (a) Perception of the consumers, health risks “(31) The global assessment referred to in paragraph 30 above must be carried out objectively and cannot be influenced by considerations that are unrelated to the commercial origin of the goods in question. (32) Any harmful consequences linked to the incorrect use of a pharmaceutical product result from possible confusion on the part of the consumer as regards the identity or characteristics of the good at issue and not as regards their commercial origin in the sense of the ground for refusal laid down in Article 8(1)(b) of Regulation No 40/94. (33) In any case, in so far as the considerations relating to the consequences of incorrect use of a product are relevant for the purposes of assessing the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, it must be pointed out that those considerations were taken into account by OHIM in the way it determined the characteristics of the consumers concerned. As OHIM rightly stated in the contested decision, the relevant public in the present case is made up of the average consumers of two types of product. As regards pharmaceutical products, it is apparent that the Board of Appeal shares the reasoning of the Opposition Division that consumers are assisted in their choice by highly qualified professionals. In relation to herbal medicinal products, consumers are deemed to be reasonably well informed, observant and circumspect, and used to using products whose name contains the prefix ‘echina-’. It may be assumed that consumers who are interested in that type of product take particular care of their health so that they are less likely to confuse different versions of such products. In other words, any risk of a mistaken choice and subsequent incorrect use of a product giving rise to certain harmful consequences is compensated for by the high degree of awareness on the part of, and attention paid by, the average consumers concerned.” (b) Knowledge, on the part of the public, as concerns technical terms in the pharmaceutical sector “(40) OHIM explains that ‘Echinacea’ is not an English word but is ‘modern’ Latin, which is not connected with any country or territory in particular. It is customary to use Latin in both the pharmaceutical industry and everyday medicine. (41) OHIM considers that the list, supplied by Optima Healthcare Ltd, of more than 30 marks containing the prefix ‘echin-’ or ‘echina-’ registered in one or more of the territories relevant to the present case proves the descriptive character of the word ‘Echinacea’ and thus, of the prefix ‘echin-’ in the mind of the public in those territories. OHIM also submits that the applicant did not challenge those arguments during the proceedings before the Opposition Division. (42) That descriptive character is, furthermore, confirmed by a search carried out on the internet on the word ‘Echinacea’ for each of the languages concerned. That search generated 1 940 results for Spanish web pages, 2 630 results for French web pages, 6 080 results for Italian web pages, 1 160 results for Portuguese web pages, 36 600 results for German web pages, and 7 360 results for Dutch web pages. (43) Given its descriptive character, the prefix ‘echina-’ has little, if any, capacity to distinguish goods as coming from a particular undertaking. Thus, the average consumer who is reasonably well informed and observant cannot rely on that prefix to differentiate between the competing marks. That consumer will not be led to assume that ECHINACIN and ECHINAID come from the same undertaking on the basis of the common prefix ‘echina-’. That prefix is a clear and straightforward reference to the composition and characteristics of the products in dispute and not an indication of their respective manufacturers.” Selezione Oro Barilla/Oro and Oro Saiwa: T-344/03 – Judgment of 5 April 2006 (action dismissed). Keywords: Opposition: comparison of goods and services – Opposition: comparison of marks – Comparison of marks: earlier mark contained in subsequent mark – Enhanced recognition on the market: post-application material - Likelihood of association. The action concerns a conflict between CTM application “Selezione Oro Barilla” (fig.) for certain goods in Class 30, and the earlier rights Oro and Oro Saiwa, registered for a range of products in Class 30. The plaintiff sought to rely, inter alia, on the notion of “association” within the provisions on oppositions. The 4 th Board had denied any similarity of marks (R 480/2002-4) and, thus, had rejected the appeal by the holder of the earlier rights. In a brief decision, the First Chamber of the CFI (Cooke, Garcia-Valdecasas and Labucka) confirmed the Board’s decision, relying on standard case-law ( Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 31 to 33; Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47; and Case T-117/02 Grupo El Prado Cervera v OHIM – Héritiers Debuschewitz (CHUFAFIT) [2004] ECR II-0000, paragraph 44). Pan Spezialitäten : T-506/04 (cancellation case) – Expunged from the court register; Order of 10 March 2006 . Keywords: Absolute grounds for refusal: descriptiveness of a combination. – Absolute grounds: deceptiveness. Cancellation case, directed against a decision of the 2nd Board of 15. 10. 2004, R 39/2004-2. The challenged CTM, Pan Spezialitäten (and device), is registered for a range of products in Class 30. The plaintiff claimed that it either was descriptive (pan = bread in Spanish and Italian) or deceptive (for goods in Class 30 not related to “wheat products”). The Board had rejected the request for invalidation. The case was settled out of court.
Sac or Forme d´un sac: T-73/06 – Office response filed (FR). Keywords: Distinctiveness: representation (drawing) of the product – Distinctiveness: acquired in the market place. The action concerns a decision of the 2 nd Board of 8. 12. 2005, R 687/2005-2, by which the Board had rejected a CTM application of the representation (drawing) of a bag for bags in Class 18.
The Board held that more stringent criteria apply for assessing distinctiveness in the case where the representation of the product itself should serve as the trade mark. Judgments of the CFI of 28.1.2004 in the joint cases T-146/02-T-153/02, Deutsche SiSi-Werke GmbH (“Standbeutel”) cited. Vom Ursprung her vollkommen : T-28/06 – Office response filed. Keywords: Absolute grounds for refusal: slogans. The action concerns a decision of the 2 nd Board of 17.11.2005, R 1179/2004-2, which had confirmed the rejection of CTM application “Vom Ursprung her vollkommen” (roughly: Perfect as regards the origin) in Classes 32 and 33. The Board based its decision on Article 7(1)(c) CTMR, considering the slogan to be no more than a mere advertising phrase without any individualising capacity. Activity Media Gateway/Gateway : T- 434/05 – Office response filed. Keywords: Comparison of marks. The action concerns a decision of the 1 st Board of Appeal which had dismissed an appeal from a decision of an opposition division rejecting the opposition lodged by Gateway Inc. The CTM application at issue is ACTIVITY Media Gateway in Classes 9, 35, 38 and 42. The opponent invoked various Community trade marks and national trade marks (GATEWAY, plain word and also stylised; Gateway and device) registered in Classes 9, 16, 35, 36, 37, and 38. The Board held that only ACTIVITY made up the individualising part of the CTM application whereas “media gateway” was merely a generic indication of a recognised device in the information technology industry (for instance, for streaming media from a packet-switched network to an internet protocol network). Flexi Touch/Flex : T-461/05 – Office response filed. Keywords: Article 43 (2), (3) CTMR – Proof of use “(POU”) – Likelihood of confusion (“LOC”): assessment – LOC: assessment in relation to POU – LOC: assessment when POU relates to various Member States. The action is directed against a decision of the 4 th Board of 17.10.2005, R 806/2002-4, by which the Board had confirmed a decision of an opposition division establishing a conflict between Flexi Touch and Flex (both in Class 3). The case concerns, inter alia, the question how to assess likelihood of confusion when proof of use has been submitted concerning various Member States. A fairly similar case between the same parties has already been decided upon; see the CFI judgment of 16.3.2005 in Case T-112/03, L’Oréal, S.A. v OHIM –REVLON (SUISSE) S.A. (FLEXI AIR/FLEX), cited in the Board decision). Tek : T-458/05 – Cancellation case (DE) – Office response filed. Keywords: Absolute grounds for refusal: descriptiveness. The action is directed against a decision of the 2 nd Board of 21.10.2005, R 1063/2004-2, by which the Board had invalidated CTM “TEK”, registered in Classes 6 and 20. Tek is the Italian and French equivalent for “teak”. Notwithstanding that the registered owner had restricted the list of goods to products “not made of wood”, the Board held that the word was nevertheless descriptive, given the broad range of wood imitations in the furniture trade. Five striped shoe : T-14/06 – Office response filed (objection as regards admissibility). Keywords: Absolute grounds for refusal: distinctiveness within Art 7(1)(b) CTMR – Distinctiveness/assessment: impact of national registrations. The action is directed against a decision of the 1 st Board of 26.9.2005, R 1109/2004-1, which had dismissed an appeal against a decision of an examiner who had rejected the representation of a five-striped shoe as a CTM in Class 25. The CTM applicant had claimed seniority for a series of registrations in Member States. That argument was rejected on the basis of the judgment of the Court of First Instance of 27 February 2002 in Case T-106/00 Streamserve Inc. versus OHIM ,‘streamserve’, [2002] ECR II-723, paragraphs 66-68) and the Board of Appeal’s decision of 24 November 1999 in Case R 64/1999-1 YPLON. Manufacturing Score Card : T-459/05 – Office response filed (DE). Keywords: Absolute grounds for refusal/descriptiveness. The action concerns a decision of the 2 nd Board of 19. 10. 2005, R 1059/2004-2, by which the Board had confirmed rejection of CTM application “manufacturing score card” in Classes 9, 35 and 42.
NEW DECISIONS FROM THE BOARDS OF APPEAL The cases can be found in our website. Please note that the full number including the forward slash has to be entered in our database under 'Appeal Nº', without the letter 'R'. Global figures for March 2006 EX PARTE - Article 7(1)(b) Examination proceedings – absolute grounds for refusal – distinctiveness – descriptiveness – laudatory – slogan – principle of legality – principle of non-discrimination – other CTM registration – registration in third country Decision of the Second Board of Appeal of 22 February 2006 in Case R 1483/2005 (English) R 1483/2005-2 EVERYWHERE YOU ARE – (en) – the trade mark applied for EVERYWHERE YOU ARE is a slogan. This slogan can only be interpreted as indicating that the goods and services (Classes 9, 16, 41 and 42) are easily accessible anywhere that the consumer is located. This unambiguous message is evident, without any particular mental exertion, to any public. Therefore the slogan is banal with a simple and direct laudatory message. The mere fact that in other cases an examiner might have adopted a less restrictive approach does not amount to a violation of the principle of non-discrimination and is no reason for invalidating a decision which is reasonable and conforms to the Regulation, as interpreted by the European judicature. The appeal was dismissed. Examination proceedings – absolute grounds for refusal – distinctiveness Decision of the Second Board of Appeal of 14 March 2006 in Case R 928/2005 (English) R 0928/2005-2
Examination proceedings – absolute grounds for refusal – distinctiveness – shape - functional necessity – restriction of list of goods and services Decision of the Second Board of Appeal of 6 March 2006 in Case R 756/2005 (English)
R 0756/2005-2 Examination proceedings – absolute grounds for refusal – descriptiveness – nature of goods and services - geographical origin – collective trade mark Decision of the First Board of Appeal of 7 March 2006 in Case R 1073/2005 (Spanish) R 1073/2005-1 Tequila – (es) – indications of origin, such as geographical indications, are not eligible for registration under Article 7(1) (c) CTMR. The term ‘Tequila’ directly informs the consumer about the nature and geographical origin of the goods ‘tequila and goods based on tequila, beverages prepared with tequila’ (Class 33). It can be a collective trade mark under Article 64 (2) CTMR. The appeal was dismissed. Examination proceedings – absolute grounds for refusal – descriptiveness – nature of goods and services Decision of the Fourth Board of Appeal of 3 March 2006 in Case R 0018/2005 (German) R 0018/2006-4 Schweizer Rechtsanwälte – (de) – the fact that a descriptive term coincides with the name of the appellant, does not overcome the objection. Schweizer Rechtsanwälte (Swiss attorneys-at-law) is descriptive for services rendered by attorneys-at-law.
EX PARTE - Article 7(1)(b) - (c) Examination proceedings – absolute grounds for refusal – descriptiveness - distinctiveness Decision of the First Board of Appeal of 22 February 2006 in Case R 0306/2005 (German) R 0306/2005-1 Grosses Gewächs – (de) – ‘ Grosses Gewächs’ is not protectable for ‘alcoholic beverages and advertising’. It is descriptive for the high quality of the goods and services in the German language. The appeal was dismissed. Examination proceedings – absolute grounds for refusal – descriptiveness – distinctiveness - slogan Decision of the First Board of Appeal of 22 February 2006 in Case R 0545/2005 (German) R 0545/2005-1 simply doing more – (de) – the slogan ‘simply doing more’ is descriptive and without distinctiveness in respect of different goods and services in Classes 1, 5, 10, 35, 40, 41, 42 and 44. It is only a laudatory term. The appeal was dismissed. Examination proceedings – absolute grounds for refusal – slogan - descriptiveness - distinctiveness – principle of legality – other CTM registrations - purpose of the goods and services – nature of the goods and services Decision of the Fourth Board of Appeal of 23 February 2006 in Case R 0630/2005 (English) R 0630/2005-4 THE WORLD POKER CHAMPIONSHIP – (en) – the word combination ‘WORLD POKER CHAMPIONSHIP’, construed in accordance with the English rules of syntax expresses the idea of a tournament designed to determine the best poker card game player on earth. It is a natural and obvious way to express the subject concerned in terms effectively used in the context of similar events in the field of games or sports, such as ‘WORLD BOXING CHAMPIONSHIP’, ‘WORLD CHESS CHAMPIONSHIP’. In relation to the services applied for, ranging from education services to services concerning the organisation of live entertainment shows (Class 41), the sign indicates the purpose or the nature of such services, namely that they are intended for the world poker championship concerned. The sign is also devoid of any distinctive character. Regarding the appellant’s reference to other word marks accepted by the Office, the Board restates that, according to established case-law, the Office is not bound by previous decisions, however similar the respective marks and goods or services may be. The appeal had to be dismissed.
EX PARTE - Article 7(1)(g) Examination proceedings – absolute grounds for refusal – deceptive - third party observations – scope of the opposition – registration in third country Decision of the Fourth Board of Appeal of 7 March 2006 in Case R 1074/2005 (English) R 1074/2005-4 WINE OH! – (en) – the contested decision contained reasoning related exclusively to the goods in Class 32. However, its operative part related to all goods and services claimed, as corroborated by the headline of the decision which made no reference to a partial refusal. The refusal related thus to all goods and services claimed. The BoA confirmed the refusal based on Article 7(1)(g) CTMR for ‘mineral and aerated waters and other non-alcoholic drinks; bottled water; table waters; still water; spring water; carbonated water; soda water; tonic water’ ( Class 32). The objection applies if the sign applied for clearly contradicts the list of goods and services. The term ‘wine’ contained in the sign applied is in clear and irreconcilable contrast to ‘mineral water’ and the other goods claimed in Class 32, none of which are wine. The use of the term ‘wine’ applied to mineral water or other water products is deceptive regardless of any other indication given on the product or in the mark to be applied to the product. The term ‘OH!’ only reinforces the reference to wine and thus the deceptiveness of the sign applied for. Acceptance of the same mark by the USPTO cannot change these findings. Trade mark registration in the U.S. does not confer a right to deceive consumers in the E.C. . As regards the remaining goods in Class 9 and 25 and the services in Class 43, the ground for refusal under Article 7 (1)(g) CTMR does not apply. The appeal was partly allowed .
INTER PARTES - Article 8(1)(b) Opposition proceedings – relative grounds for refusal – likelihood of confusion – interpretation – overall assessment - identity of goods and services – similarity of signs –visual similarity - phonetic similarity Decision of the First Board of Appeal of 15 February 2006 in Case R 0215/2005 (Italian)
R 0215/2005-1 Opposition proceedings – relative grounds for refusal – likelihood of confusion –- identity of goods and services – similarity of signs –visual similarity - phonetic similarity – conceptual similarity Decision of the First Board of Appeal of 22 February 2006 in Cases R 0837/2004 and 0915/2004 (German) R 0837/2004-1 and R 0915/2004-1 Oktobierfest / OKTOBERFEST-BIER – (de) – the signs are visually, aurally and specially conceptually similar; therefore between ‘Oktobierfest’ and ‘OKTOBERFEST-BIER’ exists likelihood of confusion in respect of ‘beer, aerated waters and other non-alcoholic drinks, fruit juices, alcoholic beverages, musical entertainment, planning and arranging of parties and receptions, catering, accommodation of guests, restaurants’ on the one hand, and ‘beer’ on the other. The opponent’s appeal was allowed. Opposition proceedings – relative grounds for refusal – likelihood of confusion – identity of goods – visual similarity – conceptual similarity – phonetic similarity – common element – dominant element - case-law – judgment of CFI – appeal proceedings – admissibility – new evidence given for first time on appeal Decision of the First Board of Appeal of 10 February 2006 in Case R 0384/2005 (French)
R 0384/2005-1
Appeal proceedings – admissibility – entitlement to appeal Decision of the First Board of Appeal of 24 February 2006 in Case R 1206/2004 (Spanish) R 1206/2004-1 JURADO – (es) – a third party cannot appeal against a decision rejecting the revocation of a trade mark registration. The appeal is inadmissible for the following reasons: 1. Due to the fact that there is no suitable revocation procedure and that the Office does not have the competence to make a revocation at the request of a third party, third parties cannot be a party to the registration proceedings. 2. Third parties cannot appeal against the registration of a CTM as they cannot be parties to the registration proceedings. 3. The request to revoke the registration exceeded all reasonable time limits as it was requested three years after the trade mark was registered. 4. Definitive and confirmed decisions cannot be appealed. The new Article 77a CTMR does not entitle third parties to request the revocation of the registration of a CTM. This is reserved only for the parties involved in the registration procedure. Appeal proceedings – admissibility – scope of the appeal – opposition proceedings – admissibility - professional representation - examination of facts ex officio Decision of the Fourth Board of Appeal of 14 March 2006 in Case R 1257/2005 (English) R 1257/2005-4 YAGER / YAGA – (en) – the appeal was admissible. It can be deduced from the statement of grounds that the appellant requested the annulment of the contested decision in its entirety. Issues regarding the admissibility of the opposition can and have to be raised at any point in time during the opposition procedure and then again during the ensuing appeal procedure. Such issues have to be examined by the Office on its own motion and irrespective of whether the other party raises them. The respondent’s address was in the United States and he did not rely on any residence or establishment in the EU. Therefore, the respondent was under an obligation to appoint a professional representative. He had to be represented in that way until the opposition proceedings are terminated by a final decision. The term “in all proceedings” covers not only the initiation of proceedings, but applies all way through the proceedings until a final decision is taken. An opposition filed or maintained in breach of this provision is or becomes inadmissible. As the respondent failed to appoint a new representative within the two-month time-limit set by the Registry, its opposition was rejected as inadmissible. The appeal was allowed, the contested decision annulled and the opposition rejected as inadmissible Interim decision – notice of appeal – translation – language of the proceedings - enlarged Board – harmonisation – standard letter Decision of the Fourth Board of Appeal of 1 March 2006 in Case R 667/2005 (German) R 667/2005-4 Cardiology Update (fig.) – (de) - the applicant cited German as the first language of the application, and Spanish as the second. The appellant (applicant) filed a notice of appeal in English. By letter of 8 June 2005 , written in German, the Registry of the Board of Appeal informed the appellant that the language of the appeal was German, and invited the appellant to submit a translation of the notice of appeal and/or the grounds of appeal in the correct language of proceedings within one month, i.e. before 6 July 2005 . The success of an appeal depends inter alia on whether the notice of appeal was submitted in an admissible language, and in particular on the possibility of a subsequent submission of a translation of the notice of appeal into the language of proceedings. It is also dependent on whether the notification by the Registry of the Board of Appeal of 8 June 2005 was lawful and effectively marked the commencement of a time period for the presentation of a translation. This appeal concerns a question of law which calls for a uniform assessment by all Boards and a uniform practice by the Registry (a standard letter, which can only be issued in a uniform fashion for all Boards). The requirements to refer the case to the Grand Board were therefore satisfied, namely firstly the particular importance of the case and secondly the other special circumstances. This appeal should accordingly be referred to the Grand Board. Opposition proceedings – substantiation of earlier rights – time limit – admissibility Decision of the First Board of Appeal of 22 February 2006 in Case R 0280/2005 (French) R 0280/2005-1 ARMILLA / ARMILAR – (fr) – the opponent submitted, in the course of the opposition proceedings, the notification from WIPO regarding the subsequent designation for Germany of international trade mark No 666 135 and a current extract from the ‘Madrid Express’ database. Those documents were produced by the opponent in response to the applicant’s argument that the international trade mark registration extract, appended to the opposition notice, did not prove the existence of a right having effect in Germany. The documents in question cannot be deemed to have been submitted late, since they were submitted in the course of the opposition proceedings, within the two-month period for responding to the arguments and observations of the applicant. Since the opponent had already submitted, with its opposition notice, proof of the existence of its earlier right, the documents sent later were merely additional items submitted within the two-month period prescribed by the OD. The contested decision should therefore be annulled and remitted to the Opposition Division for further prosecution. The request for reimbursement of the appeal fee was unfounded. The fact that the contested decision contravenes the provisions of Article 43(1) CTMR did not mean that there was a substantial procedural violation pursuant to Rule 51 CTMIR. Opposition proceedings – substantiation of argument - examination of facts ex officio - burden of proof Decision of the Second Board of Appeal of 23 March 2006 in Case R 591/2005 (French) R 591/2005-2 CELSA / EL CELSA CONSTRUCCIONES ENRIQUE DE LUIS S.A. (fig.) – (es) - the Opposition Division examined the opposition, making a finding of its own motion of the existence of similarity between the goods and services in dispute. Such similarity had not been argued by the opponent, which had based its opposition not on the similarity but only on mere identity, without supplying any proof or justification. The examination thus made by the Opposition Division acting of its own motion was contrary to the principles of argument and contribution of proof by the parties set out in Article 74(1) CTMR. In no case may the examination of the similarity of the goods and services in dispute be made by the Office of its own motion, but it must be based on the facts, evidence and arguments provided by the parties. When such similarity is not patent and is denied by the other party, the burden of proof is incumbent on the opponent who argues it. In the case of lack of proof, as occured here, the opposition must be dismissed as unfounded in not having proved one of the sine qua non requirements for application of the said Article 8(1)(b) CTMR .
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OHIM at INTA annual meeting in Toronto, Canada 6 - 10 May 2006
The OHIM hosted a booth and provided consultations and on-line demonstrations focusing on various topics related to the Community Trade Mark (CTM) and the Registered Community Design (RCD). We also wanted also like to t ook ake this opportunity to inform attendees about the benefits of the OHIM's web services.
ECTA Meeting The OHIM will hold an e-business workshop on 7 June from 3.30 to 5.30 p.m. This workshop is aimed at providing participants with practical information regarding on the functional aspects working of the OHIM’s various e-business tools (CTM e-filings, RCD e-filings, My Page, etc.). To register, please send an e-mail to ECTA’s secretariat at ecta@ecta.org. Questions can be raised in advance of the workshop by sending an e-mail to ECTA’s legal coordinator at: sandrine.peters@ecta.org .
E-Business Users Group Meeting Discussions focused on the various forthcoming tools such as the new version of CTM-ONLINE, of E-Filing, and MYPAGE and also on the future gateway for opposition proceedings: OPPO-ONLINE. The tools developed in the framework of the cooperation with the Offices of the EU member states were presented: EUROCLASS (common on-line classification tool) and EUROREGISTER (common trade mark search engine tool). Users also indicated their interest for an e-caveat tool. In order to better identify what are the needs of the users are with respect to this tool, the OHIM will further consult the E-Business users group. An other point on the agenda addressed the incidents which have occurred over during the past few last months regarding the e-business services and, in particular, CTM E-Filing. The users suggested various improvements relating to CTM-ONLINE and E-Filing. A decision was taken to create new forms to cover Opposition, Invalidity & Revocation (Cancellation), Renewal, Public Inspection, Conversion and the CTM Application, as well as common forms (RCD and CTM) for Appeals and Recordals, and a new form for RCD Invalidity. This work has been on-going since then, with additional changes made as a result of the implementation of the fee reduction (Draft Commission Regulation amending Regulation (EC) No 2869/95). All forms and explanatory notes are now available on our Website and are being published in OHIM’s Official Journal. The only exception is the Conversion form, the publication of which is anticipated very soon.
Monthly Statistical Highlights - April 2006
The OHIM E-Business Roundup (2006)
Status of current and future projects:
Future Online Services
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(field of irregular black shapes) – (en) – the design applied for as a trade mark entails applying a field of irregular shaped black dots laid out in the form of a square on the surface and the whole material content of the foamed polystyrene. The spots are marked on the polystyrene boards or their wrappings. Since the design is applied over the whole of the product’s surface, it forms part of the appearance of the product itself. When contemplated as a whole, the design can only be seen as ornamental and decorative and it might therefore be protected as a registered design. However, it does not exhibit any particular feature to attract the consumer’s instant attention as an indication of the trade origin of the product in question. The appeal was dismissed. 
(COSMETIQUES RIOTERME DELLE TERME DI RIOLO) / 
(BIOTHERM) – (it) – the identity of the goods and services (Classes 3, 5 and 42) is not disputed. The search for the distinctive element of a mark should not be based –as a starting point- on the distinctive element of that mark but on the mark as a whole. The signs are visually and aurally similar because of the similarities between the respective word elements ‘RIOTERME’ and ‘BIOTHERM’. There will be a likelihood of confusion. The appeal was allowed. 
/ CRISTAL et al. – (fr) – the documents submitted to the Board were copies of national decisions. Although produced for the first time, those documents do not serve as evidence in the narrow sense, but concern case-law to which, even after the procedure before the Opposition Division, a party is entitled to refer. The goods were identical, since both trade marks covered alcoholic beverages. The conceptually evocative element can be perceived as the dominant element when the others are even less characteristic than this one (implementation of ‘Cristal Castellblanch’ case-law). The word ‘Cristal’ visually, phonetically and also conceptually characterises the marks in question. The identity of the goods serves to attenuate any differences between the signs in question. The contested decision therefore had to be annulled and the Community trade mark application refused for all the goods covered by it. 