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Bulgaria and Romania The New Year's Day celebrations marking the arrival of Bulgaria and Romania into the new EU family of twenty-seven signified a new beginning for nearly thirty million citizens from these two countries, but for the OHIM it also marked the end of a long road in preparatory activities which commenced as far back as July 2004. It was at this time, just two months after the European Union welcomed on board ten new Member States in its biggest enlargement process ever, that the Office implemented the “road map towards the 2007 enlargement”. Many lessons were learned from the 2004 enlargement exercise and the “road map” was implemented as a result of this experience to ensure the minimum of disruption to the Office's activities while maintaining the high level of quality and efficiency expected by its users. Of particular importance has been the inclusion of two new languages into the European Union, and therefore into the Office's language regime. While the five Office languages of English, French, German, Italian and Spanish remain unchanged, translations into Bulgarian and Romanian of Office documents and data bases (forms, Euronice, EuroAce, Eurolocarno) were carried out and staff from Bulgaria and Romania have been recruited. Though applications may be filed in Bulgarian and Romanian since 1st January 2007, extended CTMs and CDs will be neither translated nor published in the new official languages of the European Community. Technical modifications to the Euromarc and Eurodesign databases were also made to adapt them to the inclusion of two new member states and two new languages, one of which uses Cyrillic script. In legal terms, the implications of the arrival of Bulgaria and Romania for the CTM & RCD systems are identical to those agreed upon with the ten countries which acceded to the Union in May 2004, in particular the automatic extension of CTMs and CDs as well as the grandfathering of earlier rights. From a technical point of view, this has been achieved by amending the list of Member States provided by Article 159a(1) CTMR and 110a(1) CDR, leaving the rest of the provisions as they were. In the area of inter partes disputes, the exceptional right of opposition will exist, as was the case in the 2004 enlargement; CTM applications filed between 1st July 2006 and 31 December 2006 can be subject to oppositions based on earlier rights in the new member states, pursuant to Article 159a(3) CTMR. On the institutional side, both the Bulgarian and Romanian offices have taken part in Head of Offices meetings, preparatory meetings, etc., and have been invited as observers in the meetings of the governing bodies of the Office since May 2005. All of the relevant Information regarding the implications for the OHIM of this latest enlargement of the European Union to include Bulgaria and Romania has been made available on the website of the Office and can be accessed at http://oami.europa.eu/en/enlargement/enlargement2007.htm.
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OHIM-INTA Seminar on the Food and Beverage Industries Top-level speakers from some of the largest names in these industries spent the day with OHIM examiners, using informative presentations and speeches to explain exactly how the food and beverage industries operate in terms of trademarking their products and services. Specific areas touched on ranged from name creation and defence strategies to issues involving the similarity of goods and services, enforcement issues and regulatory aspects of the food and beverage industries. This event offered the OHIM staff a unique opportunity to meet industry specialists in person and to understand better the decision processes undertaken by these companies in terms of their worldwide trade mark filing strategy. They were able to listen to what goes into the selection and development of trade marks in these sectors and how the IP rights of companies in these industry sectors are conceived and managed. The event also allowed the industry specialists to see first hand how the Community trade mark registration process works and to listen to the opinions and comments of trained trade mark examiners in relation to the food and beverage industries. Furthermore, it offered them an insight into how trained trade mark examiners perceive the trade marks they apply for, how they are examined and why they are eventually refused or accepted. The high level of knowledge shown by the experts, combined with the large turnout of OHIM staff, augurs well for the fourth edition of this popular seminar and both INTA and the OHIM are working together to prepare next year’s seminar on another industry sector yet to be decided.
France is one of the top filers of Community trade marks, ranked 6 th in the world with a total of 36,557 applications filed since 1996. CTM filings from France account for around 6% of the total number of applications received at the OHIM.  
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Community Design | New Practice regarding RCD Receipts
Previous RCD filing receipt
New RCD filing receipt
The suggestion to include this new sentence stems from an internal audit carried out in the Designs Department last year, aimed at improving the quality of services offered by the OHIM to RCD applicants and ensuring the strictest control mechanisms possible. In this way, the OHIM is able to ensure that any error in the area of deferment requests can be quickly identified by the RCD applicant if the box is not ticked in their filing receipt. A more detailed insight into the subject of deferment, and regarding this new measure, can be seen in an earlier Alicante News article from the October 2006 edition, available at http://oami.europa.eu/en/office/newsletter/06010.htm#CD1.
Underwater Motive Devices
Decision of the Third Board of Appeal of 22 November 2006 in Case R 196/2006-3 Following a previous decision by an Invalidity Division of the Office declaring the contested RCD invalid, the Board dismissed the appeal and declared the invalidity of the contested RCD on the ground of lack of individual character. On 1 December 2005 , an Invalidity Division of the Office considered that both designs for “underwater motive devices” were identical except for differences in their handles, which were not “immaterial details” within the meaning of Article 5(2) CDR. Therefore, the contested RCD could not be said to lack novelty. However, the differences between the handles were not sufficient to mean that the designs produced a different overall impression on the informed user. Therefore, the contested RCD lacked individual character and was declared invalid. The Invalidity Division observed further that none of the features of the contested RCD should be disregarded on the ground that it was dictated solely by the technical function of the underwater motive device. The Board expressly mentions that the respondent did not refer to the contested RCD's lack of individual character in the application for invalidity. Instead, this concept was first mentioned in the observations by the appellant. The Board notes further that both parties have addressed the issues of novelty and individual character jointly without making a clear distinction between these concepts. The Board insists on the important differences between the two requirements of novelty and individual character presented in Articles 4 to 6 CDR, despite the overlap between them: “The test for novelty is essentially of an objective nature […]. The only area where difficulties of interpretation might arise is in relation to the term “immaterial details”. The test for individual character is less straightforward and it is likely to give rise to slightly more subjective appraisals. The Board is required to take into account the overall impression on the informed user, having regard to the degree of freedom of the designer in developing the design. Presumably this means that if the designer had relatively little freedom in developing the design […], even small differences in relation to earlier designs may be sufficient to endow the design with individual character [emphasis added]” (see paragraph 20 of the Board's decision). Though the appellant could have sought design protection for the handle alone, the contested RCD concerns the underwater device as a whole and the comparison must be effected between the whole of the earlier design and the whole of the contested RCD. Upon comparison, the conclusion must be that they produce the same overall impression on the informed user. The appellant argues that greater attention should be paid to the handle, but the Board did not find that argument convincing: “It follows that there is no reason to focus attention on the handle element rather than on the design as a whole” (paragraph 25). EU Accession to the Hague Agreement On 18 December 2006 , the Council of the European Union adopted the Decision approving the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, as well as the Regulation giving effect to this accession. The Geneva Act allows designers to obtain design protection in a number of countries through a single international registration filed with the International Bureau of WIPO, eliminating the need to file a whole series of registrations with different national or regional offices. The accession of the European Community to the Geneva Act will allow companies to obtain, by means of a single application, protection for a design not only throughout the EU, via the Community Design system, but also in the countries which are members of the Geneva Act of the Hague Agreement. The entry into force of the Regulation is dependent on a number of different factors, particularly the drafting and approval of the Implementing Rules, the necessary adjustments to the Fee Regulation and the updating of the OHIM’s IT systems needed to handle Hague Agreement filings. Though no specific calendar has yet been decided upon, the Office foresees that the Regulation should enter into force in the third quarter of 2007. Updated information on the progress of the Office’s preparations in this area will be made available via the website. In addition, more in-depth articles in future editions of Alicante News will explain exactly how the Hague system works.
France is one of the leading countries in RCD filings throughout the world and is placed 4 th in the overall ranking with more than 5,700 Community designs applied for. 
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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 ("CFI"), Article 63 CTMR A-1: ECJ Judgments and Orders (-) A-2: ECJ: Developments in pending cases Torre Muga/Torres : C-405/06-P - Office response filed. Keywords: CFI procedure: procedural irregularity in Board proceedings (immaterial if decision had been the same in any case) - Appeal procedure: submission of material for the first time – Opposition: comparison of signs. The action is an appeal from T-247/03 (judgment of 11 July 2006 ; Office practice confirmed). Initially, it had been directed against a decision of the 1st Board of 7.4.2003 in R 998/2001-1 in a conflict between CTM application Torre Muga in Class 33 and TORRES, also in Class 33.
The Board had confirmed rejection of the opposition on the grounds of dissimilarity of marks, and had declared inadmissible material filed for the first time at the appeal stage, meant to show enhanced recognition of the invoked mark(s). The Second Chamber of the CFI (Pirrung, Meij, Pelikánová) had confirmed the Board’s assessment of dissimilarity. In particular, it had stressed that, conceptually, only a small part of the relevant public would understand the meaning of the word “torre” (paragraphs 66-71). The Board’s refusal to take into account new material had been held immaterial since the decision would not have been different even if the said material had been considered. Referred: Rockbass, T-315/03 ( Paragraph 33). The Board had confirmed rejection of the opposition on the grounds of dissimilarity of marks, and had declared inadmissible material filed for the first time at the appeal stage, meant to show enhanced recognition of the invoked mark(s). The Second Chamber of the CFI (Pirrung, Meij, Pelikánová) had confirmed the Board’s assessment of dissimilarity. In particular, it had stressed that, conceptually, only a small part of the relevant public would understand the meaning of the word “torre” (paragraphs 66-71). The Board’s refusal to take into account new material had been held immaterial since the decision would not have been different even if the said material had been considered. Referred: Rockbass, T-315/03 (Paragraph 33).
B: ECJ: Preliminary Rulings Nokia or Nokia-Wärdell: C-316/05 - Ruling of 14 December 2006 .
Keywords: TRIPS: Articles 41, 44 and 61 – CTMR: Interpretation of Article 98(1): terms of national infringement proceedings. The case was a reference from the Swedish Supreme Court. Nokia Corporation had brought an action against a Mr. Wärdell (‘Mr. W.’) before Stockholm ’s Tingsrätten (Stockholm District Court) alleging infringement of its Community trade mark. Nokia had claimed that Mr. W. had imported into Sweden adhesive stickers intended to be attached to mobile telephones and bearing the mark NOKIA. Stockholm ’s Tingsrätten had found that Mr. W. had arranged for the import of the stickers into Sweden and that his dealings with the stickers constituted trade mark infringement in the objective sense. That court considered that there was a risk that he might infringe again. It therefore had issued a prohibition on continuing infringement with a penalty attached. Mr. W. had appealed against that judgment to Svea Hovrätten (Court of Appeal). This court had confirmed the findings that Mr. W. had objectively infringed the trade mark and that there was some risk that he might do so again. However, since Mr. W. had not previously committed a trade mark infringement and could not be accused of anything more than carelessness, there was, according to Svea Hovrätten, no reason to regard the import of the stickers as part of a continuing trade mark infringement. The fact that it could not be wholly excluded that in the future he might commit a fresh infringement of Nokia’s trade mark rights could not of itself justify a prohibition with a penalty attached. Svea Hovrätten therefore had altered Stockholms Tingsrätten’s judgment and dismissed Nokia’s action. Nokia then had appealed to the referring court. The referring court considered that the dispute between the parties turned on whether Article 98 of the Regulation contains an obligation to issue a prohibition and attach a penalty to it which goes beyond Section 37a of the Law on Trade Marks. It had accordingly referred the following questions for a preliminary ruling: “(1) Is the condition relating to special reasons in the first sentence of Article 98(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark to be interpreted as meaning that a court which finds that the defendant has infringed a Community trade mark may, irrespective of the other circumstances, refrain from issuing a specific prohibition of further infringement if the court considers that the risk of further infringement is not obvious or is otherwise merely limited? (2) Is the condition relating to special reasons in the first sentence of Article 98(1) of the Regulation on the Community trade mark to be interpreted as meaning that a court which finds that the defendant has infringed a Community trade mark may, even if there is no such ground for refraining from issuing a prohibition of further infringement as contemplated in Question 1, refrain from issuing such a prohibition on the grounds that it is clear that a further infringement is covered by a statutory general prohibition of infringement under national law and that a penalty may be imposed on the defendant if he commits a further infringement intentionally or with gross negligence? (3) If the answer to Question 2 is no, must specific measures, by which a prohibition is for example coupled with a penalty, be taken in such a case to ensure that the prohibition is complied with, even where it is clear that a further infringement is covered by a statutory general prohibition of infringement under national law and that a penalty may be imposed on the defendant if he commits a further infringement intentionally or with gross negligence? (4) If the answer to Question 3 is yes, does this apply even where the conditions for adopting such a specific measure in the case of a corresponding infringement of a national trade mark would not be regarded as fulfilled? “ The 1st Chamber of the ECJ (judge-rapporteur M. Ilesic) handed down the following ruling: (a) Major motives “( 21) It follows from the need for uniform application of Community law and from the principle of equality that the terms of a provision of Community law which makes no express reference to the law of the Member States for the purpose of determining its meaning and scope must normally be given an autonomous and uniform interpretation throughout the Community, having regard to the context of the provision and the objective pursued by the legislation in question (see, inter alia, Case 327/82 Ekro [1984] ECR 107, paragraph 11; Case C‑287/98 Linster [2000] ECR I-6917, paragraph 43; and Case C‑170/03 Feron [2005] ECR I-2299, paragraph 26). (22) That applies to the term ‘special reasons’ in the first sentence of Article 98(1) of the Regulation. (…) (40) Moreover, under Articles 44(1) and 61 of the Agreement on trade-related aspects of intellectual property rights (TRIPs Agreement), which is contained in Annex 1C to the Agreement establishing the World Trade Organisation (WTO Agreement), approved on behalf of the European Community, as regards matters within its competence, by Council Decision 94/800/EC of 22 December 1994 (OJ 1994 L 336, p. 1), all Member States are required to provide for civil and criminal remedies, including prohibition, for infringement of intellectual property rights. The existence of such remedies under national law cannot therefore, a fortiori, constitute a special reason within the meaning of the first sentence of Article 98(1) of the Regulation.” (b) Answers to the questions referred to the ECJ “(1.) Article 98(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark is to be interpreted as meaning that the mere fact that the risk of further infringement or threatened infringement of a Community trade mark is not obvious or is otherwise merely limited does not constitute a special reason for a Community trade mark court not to issue an order prohibiting the defendant from proceeding with those acts. (2.) Article 98(1) of Regulation No 40/94 is to be interpreted as meaning that the fact that the national law includes a general prohibition of the infringement of Community trade marks and provides for the possibility of penalising further infringement or threatened infringement, whether intentional or due to gross negligence, does not constitute a special reason for a Community trade mark court not to issue an order prohibiting the defendant from proceeding with those acts. (3.) Article 98(1) of Regulation No 40/94 is to be interpreted as meaning that a Community trade mark court which has issued an order prohibiting the defendant from proceeding with infringement or threatened infringement of a Community trade mark is required to take such measures, in accordance with its national law, as are aimed at ensuring that that prohibition is complied with, even if the national law includes a general prohibition of infringement of Community trade marks and provides for the possibility of penalising further infringement or threatened infringement, whether intentional or due to gross negligence. (4.) Article 98(1) of Regulation 40/94 is to be interpreted as meaning that a Community trade mark court which has issued an order prohibiting the defendant from proceeding with infringement or threatened infringement of a Community trade mark is required to take, from among the measures provided for under national law, such as are aimed at ensuring that that prohibition is complied with, even if those measures could not, under that law, be taken in the case of a corresponding infringement of a national trade mark.” (-) C: Court of First Instance (CFI): Judgments and Orders on appeals against decisions of the OHIM, Article 63 CTMR C-1: CFI Judgments and Orders Ferro/Ferrero : T-310/04 - Judgment of 15 December 2006 (only in FR; action dismissed). Keywords: CFI proceedings: language – CFI proceedings: nature of plea in law made by the OHIM – CFI proceedings: substitution of plaintiff by another legal entity (change of legal status of plaintiff) - Opposition: proof of use - Opposition: likelihood of confusion (LOC) – LOC: comparison of goods. The action had been directed against a decision of the 4 th Board of 17.3.2004 in R0540/2002-4 relating to CTM application “Ferro” applied for, in French, for a range of products in Class 30. The said application had been opposed by Ferrero, registered for a range of products in Classes 5, 29, 30, 32 and 33. The CTM applicant had restricted its list of goods at opposition proceedings. That restriction and the limited scope of use proven had led to rejection of the opposition on the grounds that there was no likelihood of confusion given that the goods at issue are not sufficiently similar, and taking into account the differences which exist between the signs. The opponent initiated court proceedings in English; the CFI, however, decided that it had to be French according to Article 131(2), third indent, of the Rules of Procedure. In its pleas, the Office itself took the view that the action should be allowed and had only pleaded in the alternative to dismiss it. During the course of proceedings, the plaintiff changed its legal status. The new entity requested substitution which the court allowed. The 3 rd Chamber of the CFI (Jaeger, Azizi, Cremona ) dismissed the action. Jägermeister or Venado: T-81/03, T-82/03 and T-103/03 – Action allowed (individual case; no impact on the Office’s practice). Keywords: CFI procedure: claim of the Office in favour of the plaintiff’s appeal - Opposition: likelihood of confusion (LOC) – LOC/assessment: opinion polls – LOC: degree of perception (of the earlier mark) in the market place. The three actions had been directed against decisions of the 1st Board of 19.12.2002 in R0412/2002-1 and R0382/2002-1 and of 14.1.2003 in R0407/2002-1. The signs applied for are shown below. The goods in respect of which registration had been sought are the same in the three cases and are in Classes 32 and 33. In Class 32, inter alia, mineral and aerated waters; in Class 33 rum and rum liqueurs had been claimed.
In each case, a notice of opposition had been lodged by Jägermeister, based on two earlier figurative marks as set out below.
Whereas the Opposition Division had allowed the oppositions, the 1st Board had decided differently. The Board essentially found that, despite the identity of certain goods at issue, in Classes 32 and 33, there was no compelling reason to believe that there would be a likelihood of confusion between the marks applied for and the earlier mark on the part of the general public in any part of the Community. This was on account of the visual and phonetic differences and the absence of any great conceptual similarity between those marks. That finding, based essentially on the Board of Appeal’s comparison of the conflicting signs, is corroborated by the frequency of the depiction of a deer or a deer’s head to cover a range of beverages, as demonstrated by eight Community trade mark registrations and research in the United Kingdom trade marks register undertaken by the Board of its own motion. The Office itself claimed that the Court should annul the contested decision. Admissibility of the Office’s claim in favour of the plaintiff’s appeal “( 24) By its principal claim, OHIM requests the Court to annul the contested decisions. In support of that claim, OHIM submits arguments which seek to show that the Board of Appeal erred in finding that there is no likelihood of confusion in the present case. (25) In that context it must be recalled that, in proceedings concerning an action brought against a decision of a Board of Appeal adjudicating in opposition proceedings, OHIM does not have power to alter, by the position it adopts before the Court, the terms of the dispute as delimited in the respective claims of the applicant for registration and of the opposing party (Vedial v OHIM, paragraph 22 above, paragraph 26; see Joined Cases T‑466/04 and T‑467/04 Dami v OHIM – Stilton Cheese Makers (GERONIMO STILTON) [2006] ECR II-0000, paragraph 29, and the case‑law cited). (26) However, it does not follow from that case-law that OHIM is obliged to contend that an action brought against a decision of one of its Boards of Appeal should be dismissed. While OHIM does not have the requisite capacity to bring an action against a decision of a Board of Appeal, conversely it cannot be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed (BIOMATE, paragraph 23 above, paragraph 34, and GERONIMO STILTON, paragraph 25 above, paragraph 30). (27) Thus, there is nothing to prevent OHIM from endorsing a head of claim of the applicant’s or from simply leaving the decision to the discretion of the Court, while putting forward all the arguments that it considers appropriate for giving guidance to the Court (BIOMATE, paragraph 23 above, paragraph 36; Case T‑379/03 Peek & Cloppenburg v OHIM (Cloppenburg) [2005] ECR II-4633, paragraph 22, and GERONIMO STILTON, paragraph 25 above, paragraph 31). (28) On the other hand, OHIM may not seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application or put forward pleas in law not raised in the application (Vedial v OHIM, paragraph 22 above, paragraph 34; Cloppenburg, paragraph 27 above, paragraph 22, and GERONIMO STILTON, paragraph 25 above, paragraph 32). (29) In this case it is clear that, in its principal claim, the only arguments that OHIM has put forward are in support of the applicant’s head of claim according to which the Board of Appeal erred in finding that there was no likelihood of confusion between the conflicting marks, at least in Spain . Accordingly, the principal claim put forward by OHIM and the arguments advanced in support thereof are admissible in so far as they do not go beyond the bounds of the claims and pleas in law put forward by the applicant.” Sanitärschlauch (3D) : T-97/06 - Removed from the Register; Order of 1 December 2006 . Keywords: Absolute grounds for refusal: distinctiveness – Distinctiveness: 3D signs (shape of the product). The action had been directed against a decision of the 4 th Board of 16.1.2006 in R0612/2005-4 by which it had rejected the application at issue (shown below), applied for in Classes 11 and 17. Finally, the CTM application has been withdrawn pending CFI proceedings. Brothers by Camper : T-43/05 - Judgment of 30 November 2006 (action dismissed; Office practice confirmed). Keywords: CFI proceedings: principle of legal certainty – CFI proceedings: substance/concreteness of a plea in law – CFI proceedings: forms of order sought (reference to previous pleadings) – Opposition: Likelihood of confusion. The action had been directed against a decision of the 1st Board of 29.11.2004 in R0170/2004-1 in opposition case relating to CTM application “Brothers by Camper” (shown below), in Classes 18, 25 and 39. It had been opposed by several earlier rights, all in the same form, in particular in respect of the claimed goods in Class 25. CTM application:
Earlier rights:
The Board had confirmed a decision of the Opposition Division concerned which had allowed the opposition against all goods claimed in Class 25. The 3 rd Chamber of the CFI (Jaeger, Azizi, Cremona ) dismissed the action brought by the CTM applicant. (a) CFI proceedings: concreteness of a plea in law “(18) First of all, the Court observes that the defendant’s plea of inadmissibility is itself characterised by a certain lack of precision. Although the defendant claims that the action is inadmissible both because of the lack of precision of the pleas relied on and the form of order sought – without referring to a specific provision – it acknowledges that it was able to infer from the application that the applicant seeks annulment of the contested decision on the ground that Article 8(1)(b) of Regulation No 40/94 was infringed. (19) Assuming that the defendant claims that the action is inadmissible on the ground that the applicant has failed to formulate precisely in the application the pleas and forms of order sought, in accordance with Article 44(1)(c) and (d) of the Rules of Procedure of the Court of First Instance, the Court recalls that under Article 21 of the Statute of the Court of Justice, applicable to proceedings before the Court of First Instance by virtue of the first paragraph of Article 53 of the Statute, and Article 44(1)(c) of the Rules of Procedure, an application must contain a summary of the pleas in law relied upon, and that that statement must be sufficiently clear and precise to enable the defendant to prepare its defence and to enable the Court to give judgment in the action without the need to seek further information (Case T-127/02 Concept v OHIM (ECA) [2004] ECR II-1113, paragraph 17). The same considerations must apply to all forms of order, referred to by Article 44(1)(d) of the Rules of Procedure, which must be accompanied by pleas and arguments enabling both the defendant and the Court to assess their validity (Case T-43/92 Dunlop Slazenger v Commission [1994] ECR II-441, paragraph 183, and Case T-123/04 Cargo Partner v OHIM (CARGO PARTNER) [2005] ECR II-3979, paragraph 26). (20) In order to ensure legal certainty and the sound administration of justice, if an action is to be admissible the essential points of fact and law on which it is based must be apparent from the text of the application itself, even if only stated briefly, provided the statement is coherent and comprehensible (see CARGO PARTNER, paragraph 19 above, paragraph 27 and the case-law cited). (21) In this case, the form of order sought by the applicant includes a request that the Court declare possible the registration of its mark for all the goods in Class 25. (22) Furthermore, it is clear from the application that, having identified Article 8(1)(b) of Regulation No 40/94 as the legal basis for the refusal to register its trade mark in the contested decision, the applicant states that it is necessary to ‘focus again on the comparison of the trade marks [which are the] object of this discussion’. Following that statement the applicant goes on to analyse the marks at issue. From that analysis it concludes that, having regard to the differences between the marks at issue, it is clear that there is no likelihood of confusion between the two marks on the part of the public. (23) Finally, in response to a question put by the Court at the hearing, the applicant indicated clearly that it sought annulment of the contested decision, and subsequently directed its pleadings solely to the absence of any likelihood of confusion between the marks at issue. (24 ) In the light of the foregoing, the Court finds that the applicant’s intention to obtain the annulment of the contested decision on the basis of an alleged infringement of Article 8(1)(b) of Regulation No 40/94 is sufficiently clear from its pleadings. (25) Furthermore, the Court notes that the contested decision is based on Article 8(1)(b) of Regulation No 40/94 and that the applicant identifies that provision in its application as the legal basis of the contested decision, and that it goes on to challenge various aspects of the assessment made by the Board of Appeal on the basis of that provision concerning the likelihood of confusion between the marks at issue. The Court considers, therefore, that it is sufficiently clear from the application that the applicant puts forward a single plea against the contested decision of infringement of Article 8(1)(b) of Regulation No 40/94, having regard to the alleged absence of any likelihood of confusion between the marks at issue. (26) Finally, the Court observes that the applicant’s request to declare possible the registration of its trade mark in respect of all the goods in Class 25 necessarily implies a request for annulment of the contested decision. It has already been held that if, despite the wording of the form of order sought in the application, it is clear from the application that the applicant seeks, in substance, the annulment of the contested decision, the application must be considered to be admissible (order in Case T-107/94 Kik v Council and Commission [1995] ECR II-1717, paragraphs 30 and 32; Case T-169/94 PIA HiFi v Commission [1995] ECR II-1735, paragraph 17; and CARGO PARTNER, paragraph 19 above, paragraph 34). (27) The Court considers, therefore, that the application satisfies the requirements for admissibility in Article 44(1)(c) and (d) of the Rules of Procedure of the Court of First Instance, and therefore that this action cannot be declared inadmissible on the basis of that provision.” (b) CFI proceedings: references to previous statements “(30) The Court observes that, in support of its argument that this action must be dismissed as unfounded, the intervener refers inter alia to the arguments it has already put forward before OHIM. (32) That applies to the reference by the intervener to the arguments contained in the observations it submitted in the administrative procedure before OHIM (see, to that effect, Case T-169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II-685, paragraph 30 and the case-law cited). (33) Therefore, the Court considers that the intervener’s arguments in the statement in intervention which are set out in the form of a reference to previous observations are inadmissible.” C-2: CFI: Developments in pending cases El Tiempo/Teletiempo : T-233/06 - Office response filed (ES). Keyword: Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 4 th Board of 22.6.2006 in R0760/2005-4 relating to opposition proceedings initiated against CTM application 1 685 056, word “El Tiempo” in Classes 16, 35, 38 and 41. It had been opposed on the basis of the earlier Spanish rights, word marks “Teletiempo” and “Teletiempo Instituto Nacional de Metereologia”, registered in Classes 16, 35, 38 and 41. With the exception of a limited range of services in Classes 35 and 41, the opposition had been allowed. Neurim Pharmaceuticals : T-218/06 - Office response filed (DE). Keywords: OHIM proceedings: probative value of a fax report - Board proceedings: languages; Rules 48(2), 49 and 96(1) IR – OHIM proceedings: restitutio in integrum - Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 1st Board of 2.6.2006 in R0074/2006-1 relating to CTM application 2 807 477 (as shown below), applied for a range of goods in Classes 9 and 10. It had been opposed on the basis of Eurim-Pharm, registered in Class 5. The opposition division concerned had allowed the opposition; the respective decision had been rendered in German.
The opponent then initiated Board proceedings in English and was accordingly informed that English was not an available language; the opponent did not react within the specified time limit. Its grounds for appeal, however, were submitted in German. Subsequently, opponent claimed not to have received the initial communication inviting rectification of the linguistic deficiency and requested continuation of proceedings under Article 78a CTMR. Subsequently, it claimed restitutio under Article 78 CTMR. The Board rejected the appeal on formal grounds, mainly relying on the fact that the fax report of the Office’s communication of the linguistic deficiency shows that the (representative of) the opponent had received the message, and on the fact that the opponent’s requests under Articles 78a and 78 CTMR had been made out of time. RadioCom : T-254/06 - Office response filed (DE). Keywords: Absolute grounds for refusal: descriptiveness. The action is directed against a decision of the 1st Board of 7.7.2006 in R1266/2005-1 relating to CTM application 3 986 023, word RadioCom, for a range of services in Classes 35, 38 and 41. It had been rejected on the grounds that the sign would not convey more than services in the radio communication sector. Presto : T-205/06 - Office response filed (DE). Keywords: Cancellation: relative grounds for invalidation – Likelihood of confusion: relevant territorial scope. The action is directed against a decision of the 2nd Board of 19.5.2006 in R0601/2005-2 relating to cancellation proceedings initiated against CTM 2 625 457, registered for a range of goods and services in Classes 9, 16 and 42.
The said CTM had been challenged on the basis of the earlier Spanish rights “Presto” (fig.), registered in Classes 9 and 42. The Board had confirmed invalidation of the challenged CTM on the grounds that there exists a likelihood of confusion on the part of the relevant public. Freshhh : T-147/06 - Office response filed (DE). Keywords: Absolute grounds for refusal: descriptiveness. The action is directed against a decision of the 4th Board of 7.3.2006 in R0352/2005-4 by which the Board had rejected CTM application “Freshhh”, applied for a range of goods in Classes 29, 30 and 32. The Board had held that just adding two more letters (“h”) to the non-distinctive word “fresh” for foodstuff would not suffice to turn the sign acceptable. Trenton/Lenton : T- 171/06 - Office response filed (EL). Keywords: CFI procedure/OHIM procedures: change of language - OHIM procedures: silence on the part of a CTM applicant during opposition and appeal proceedings – Renouncement of a right/a legal position - OHIM procedures: inherent declaration of withdrawal of a CTM application - Appeal procedure: statements made out of time (Article 59 CTMR). The action is directed against a decision of the 2nd Board of 26.4.2006 in R0406/-2004-2 (language of the proceedings: English). The case related to CTM application Trenton , applied for by a UK applicant for a range of goods in Class 7. It had been opposed, by a US company, on the basis of an earlier CTM, word mark Lenton, registered for a range of goods in Classes 6 and 7. The notice of opposition had been rejected by the Opposition Division. At the appeal stage, the opponent filed material alleging legal non-existence of the applicant. However, that material had been filed out of time in terms of Article 59 CTMR. The CTM applicant had not filed any observations during the opposition and the appeal proceedings. The 2nd Board decided that, whereas the allegation regarding the CTM applicant had not been supported by any evidence, the complete silence on the part of the CTM applicant during the opposition and the appeal proceedings could be ignored. It therefore considered the complete inactivity an inherent renouncement of its legal position as a CTM applicant, i. e. an inherent withdrawal of the respective application. In consequence, it decided that the opposition decision did not take effect and declared the case closed. Whereas the language of proceedings at opposition stage and at the appeal stage had been English, the action before the CFI was brought in Greek. Honeycomb or Strahlregler: T-256/06 - Office response filed (DE). Keywords: Absolute grounds for refusal: descriptiveness - Absolute grounds for refusal: relevant public - Absolute grounds for refusal: registrations in other countries. The action is directed against a decision of the 4 th Board of 17.7.2006 in R1388/2005-4 relating to CTM application 2 906 139, word Honeycomb, applied for waterflow regulators in Class 11. The Board rejected the application based on the argument that “honeycomb” describes the shape of the regularly used inlet of a normal waterflow regulator (dictionary evidence provided). The relevant public would consist of technical experts and ordinary consumers; the latter, however, would be well-informed. Velasco : T-259/06 - Office response filed (ES). Keywords: Opposition: likelihood of confusion. The action is directed against a decision of the 1st Board of 29.6.2006 in R0865/2005-1 relating to CTM application 2 261 527, word “Manso de Velasco” for alcoholic beverages in Class 33. The said application had been opposed on the basis of the Spanish trade mark “Velasco”, registered for a range of products in Classes 30, 32 and 33. The opposition had been allowed, mainly based on the consideration that the target consumers would recognise the sign applied for simply as a line extension or special type of the earlier branded product. Giorgio Beverly Hills : T-228/06 - Office response filed. Keywords: Opposition: Likelihood of confusion (LOC) – LOC: comparison of goods. The action is directed against a decision of the 2nd Board of 21.6.2006 in joined cases R0107/2005-2 and R0187/2005-2, relating to CTM application 417 709, word GIORGIO BEVERLY HILLS , applied for a range of goods in Classes 3, 14, 18 and 25.
It had been opposed on the basis of a national right in the word “Giorgio”, registered in Class 25, and on a CTM right in the stylised word Giorgio, registered in Class 24. Finally, the application had been rejected for parts of the claimed goods, namely for clothing, footwear and headgear (Class 25). CTM applicant brought an appeal. Map&Guide (2) or Map&Guide The Mapware Company: T-226/06 - Office response filed (DE). Keywords: Absolute grounds for refusal: descriptiveness, Article 7(1)(c) CTMR. The action is directed against a decision of the 1st Board of 16.6.2006 in R1175/2005-1 relating to CTM application 3 799 947 (shown below) in Classes 9, 16 and 42. The application had been partially rejected on the grounds that on English-speaking markets the sign would merely describe the goods and services at issue. Map&Guide (1) or Map&Guide Travelbook: T-219/06 - Office response filed (DE). Keywords: Absolute grounds for refusal: descriptiveness, Article 7(1)(c) CTMR. The action is directed against a decision of the 1st Board of 8.6.2006 in R1174/2005-1 relating to CTM application 4 025 417, word “map&guide travelbook” for a range of goods and services in Classes 9, 16 and 42, which had been partially rejected on the grounds that mere combination of three descriptive nouns normally does not make up a distinctive mark. El Charcutero : T-242/06 - Office response filed (ES). Keywords: Opposition: Opposition: Likelihood of confusion (LOC) – LOC: comparison of marks. The action is directed against a decision of the 1st Board of 16.6.2006 in R0790/2005-1 relating to CTM application 2 823 193 (as shown below). The sign had been applied for in Classes 29 and 30.
A notice of opposition had been lodged on the basis of an earlier Spanish right (as shown above), registered in Class 29. The opposition had been rejected on the grounds that there is no likelihood of confusion because each mark would convey a different impression. Bebimil/Blemil : T-221/06 - Office response filed. Keywords: Opposition: Likelihood of confusion (LOC) – LOC: comparison of goods – LOC: comparison of marks. The action is directed against a decision of the 1st Board of 2.6.2006 in R0571/2005-1 relating to CTM application 2 466 928, word “Bebimil” in Classes 5, 29, 30 and 32. It had been opposed on the basis of CTM Blemil in Classes 5 and 29, and Spanish trade marks Blemil in Classes 6 and 32. The opposition had been allowed except for a range of goods in Class 30. Milko/Milka :T-204/06 - Office response filed. Keywords: Opposition: CTM application a national right with reputation – Opposition: likelihood of confusion – Likelihood of confusion: co-existence of the signs at the national level. The action is directed against a decision of the 2nd Board of 8.6.2006 in R0540/2005-2 relating to CTM application 2 474 674 (as shown below). The sign had been applied for milk with cocoa in Class 30. It had been opposed on the basis of (Community) combination mark “Milka”, registered in Classes 5, 29 (milk and milk products), 30 (cocoa, chocolate etc.) and 32, and of various international and national registrations of either the word Milka or the combination.
The CTM applicant had stated that its mark enjoys reputation in its home market where it had co-existed alongside the invoked earlier right for a long time. The Board held that the latter is immaterial at European Union level since a risk of confusion might still exist in other parts of the Union . The opposition was allowed in its entirety. Paint Filter (3D) : T-201-06 - Office response filed. Keywords: Absolute grounds for refusal: distinctiveness – Distinctiveness: 3D signs. The action is directed against a decision of the 2nd Board of 15.5.2006 in R1387/2005-2 concerning CTM application 3 969 367. The 3D sign applied for as a CTM in Classes 16 and 21 is a paint filter with coloured elements (shown below). The application had been rejected in its entirety within Article 7(1)(b) CTMR, on the grounds that the coloured part would be perceived as no more than a decorative element. Teleselect : T-202/06 - Office response filed. Keywords: Opposition: delimitation of the reference consumers - Opposition: likelihood of confusion/comparison of services. The action is directed against a decision of the 2nd Board of 18.5.2006 in R0478/2005-2 relating to a conflict between CTM application 1 030 980 word Teleselect, for a range of goods and services in Classes 9, 35 and 41, and a number of earlier rights, amongst which Select and Teleresources, in Classes 35 and 41. Whereas the Opposition Division had allowed the opposition in full, the Board had set aside that decision and had held that there is no likelihood of confusion. The Board, inter alia, stated that, as regards the relevant consumers and languages, English is understood across the European Union, in particular in sectors composed of business people. Marie Claire : T-148/06 - Office response filed (ES). Keywords: Opposition: proof of use - Opposition: likelihood of confusion/comparison of goods – Opposition: earlier mark with reputation – Reputation mark: dilution/co-existence at the national level. The action is directed against a decision of the 2nd Board of 6.3.2006 in R0530/2004-2 relating to CTM application 77 834, word mark Marie Claire, for a range of products in Class 25. A notice of opposition had been lodged by Marie Claire Album S.A., based on a multitude of earlier rights in Marie Claire word marks and combinations. Use had been evidenced for magazines. Whereas the Opposition Division had rejected the opposition because of the dissimilarity of the products in question, the Board had revoked the decision on the grounds that the issue of reputation within Article 8(5) CTMR had not properly been dealt with. It had further held that co-existence of two brands at the national level does not necessarily exclude specific association, and thus dilution of the earlier right, in the minds of the consumers. Elio Fiorucci : T-165/06 - Office response filed (IT). Keywords: Cancellation: invalidation on relative grounds – Cancellation: revocation, Article 50(1)(c) CTMR - Specific relative grounds for invalidation/ Article 52(2) CTMR: earlier right at the national level, scope of, pursuant to national law – Article 52(2) CTMR: personal name. The action is directed against a decision of the 1st Board of 6.4.2006 in R0238/2005-1 relating to CTM 709 006, word ”Elio Fiorucci”, registered in the name of a Japanese owner in Classes 3, 18 and 25. The applicant for cancellation, Mr. Elio Fiorucci, is domiciled in Milan/Italy, from where he traded under his name with the Japanese company. The latter was entitled to use the name at issue on the basis of a contract. Whereas the Cancellation Division had declared the CTM invalid, the 1st Board had allowed the appeal, mainly focusing on the consideration that the applicable Italian law would not permit invocation of a right to a name or business identifier in the given situation. Cannabis : T-234/06 - Office response filed (IT). Keywords: Cancellation: invalidation on absolute grounds of refusal – Absolute grounds for refusal: descriptiveness – Absolute grounds: deceptiveness. The action is directed against a decision of the 2nd Board of 29.6.2006 in R0517/2005-2 relating to CTM 1 073 949, word “Cannabis”. The said CTM had been registered for a range of products and services in Classes 32, 33 and 42. The applicant for cancellation had based its request on Article 51(1)(a) in conjunction with Article 7(1)(c) and (g) CTMR. The Cancellation Division declared the CTM invalid in respect of all goods in Classes 32 and 33. The 2nd Board had rejected the appeal against the said decision.
Please note that the full number including the forward slash has to be entered in our database under 'Appeal Nº', without the letter 'R'. EX-PARTE - Article 7(1)(a) Examination proceedings – absolute grounds for refusal – graphical representation – Combination of colours – case-law – Judgment of the European Court of Justice – principle of legality Decision of the Second Board of Appeal of 13 December 2006 in Case R 1004/2006 (English) R 1004/2006-2 EX-PARTE – Article 7(1)(b) Examination proceedings – absolute grounds for refusal – distinctiveness – internet searches – design – figurative element R 1029/2006-2 Examination proceedings – absolute grounds for refusal – figurative element – distinctiveness – public interest – letter – principle of legality Decision of the Second Board of Appeal of 13 December 2006 in Case R 945/2006 (English) R 0945/2006-2 Examination proceedings – absolute grounds for refusal – distinctiveness – assessment Decision of the Fourth Board of Appeal of 13 December 2006 in Case R 1182/2005 (German) R 1182/2005-4 EX-PARTE – Article 7(1)(c) Examination proceedings – absolute grounds for refusal – descriptiveness – internet searches Decision of the Fourth Board of Appeal of 19 December 2006 in Case R 1017/2006 (German) R 1017/2006-4 CÖXLE – (de) – the descriptive use of the sign, proven by material from Internet websites, was sufficient to confirm refusal on the grounds of descriptiveness, although the references were limited to a region in South Germany (here: Cöxle to designate an apple-based spirit derived solely from the ‘Cox Orange Pippin’ apple variety). Opposition proceedings - relative grounds for refusal - likelihood of confusion - similarity of goods and services - similarity of the signs - purpose of the goods and service - distribution channels - proof of use Decision of the Fourth Board of Appeal of 7 November 2006 in Case R 775/2005 (English) R 0775/2005-1 PATRICIA / Opposition proceedings – relative grounds for refusal – likelihood of confusion – identity of goods – dissimilarity of signs – visual dissimilarity – phonetic dissimilarity – conceptual dissimilarity – geographical indication – wine Decision of the Second Board of Appeal of 24 November 2006 in Case R 218/2006 (Spanish) R 0218/2006-2 INTER-PARTES – Article 43(2) Opposition proceedings - relative grounds for refusal – proof of use – due cause Decision of the First Board of Appeal of 22 November 2006 in Case R 1358/2005 (Spanish) R 1358/2005-1
PROCEDURAL ISSUES Appeal proceedings – withdrawal – appeal deemed not to have been filed – appeal fee – application – case-law – Boards of Appeal – suspensive effect Decision of the First Board of Appeal of 5 December 2006 in Case R 1511/2006 (German) R 1511/2006-1 Making tomorrow happen – (de) – ( follow up decision from the Optima case): The applicant (in ex parte proceedings) filed an appeal and withdrew the application one day later. Later, still within the appeal period, he explicitly requested that the current account should not be debited. Firstly, the Board took note of the withdrawal of the application within the appeal period. Legally, the application, the contested decision and the appeal are devoid of any subject. Secondly, the Board stated that if the application is withdrawn after filing an appeal but before the appeal period lapses, the applicant’s current account should not be debited with the appeal fee. In the present case, the appellant explicitly asked that the current account not be debited after the withdrawal of the application. The appeal is deemed not to have been filed. Appeal proceedings – withdrawal – opposition – Case law – Boards of Appeal – suspensive effect Decision of the Second Board of Appeal of 1 December 2006 in Case R 200/2006 (English) R 0200/2006-2 SOUTHERN TWIST / TWIST – (en) – an opposition may be withdrawn at any time in analogous application of Article 44(1) CTMR. The Board held that the decision to reject an opposition in its entirety cannot have the consequence of terminating the opposition proceedings until the two-month period to appeal is over. It is therefore possible to withdraw the opposition at any stage of the opposition or appeal procedure. In the present case, the period for filing a notice of appeal against the OD decision rejecting the opposition had not yet expired when the opponent’s written submission containing the declaration of withdrawal of the opposition was received by the Office. Thus, at this point in time, the decision of the Office had not yet become effective, with the result that the suspensive effect of the ongoing period in which it was possible to file a notice of appeal remained in force, and accordingly it was still possible for the opponent effectively to withdraw the opposition. Finally, since the contested decision had not yet taken effect, there is no reason to consider it void, as asserted by the opponent. The Board t ook note of the withdrawal of the opposition and declared the appeal and opposition proceedings closed. Appeal proceedings – fixing of costs– parallel proceedings –rejection of application Decision of the Fourth Board of Appeal of 11 December 2006 in Case R 682/2006 (English) R 0682/2006-4 GAVINAR / GAVISCON et al. – (en) – The Board was of the opinion that the opponent and the applicant had suffered equally from opposition and appeal proceedings, which finally proved unnecessary. The opposition became without object when the CTM application was rejected as the result of a successful opposition filed by a third party. The Board considered it equitable for each party to bear its own costs and fees of the opposition and the appeal proceedings and, as well as ordering this, declared the proceedings terminated. Appeal proceedings – restitutio in integrum – error – conversion – time limit – payment – fee Decision of the Fourth Board of Appeal of 16 November 2006 in Case R 1027/2006 (English) R 1027/2006-4 MISSION HILL – (en) – an error in law (in this case, expecting a further notice from the Office after an opposition decision refused the CTM application) is not a ground for restitutio in integrum. The contested decision rejected the request to convert a CTM application into national applications as it had been filed too late. The Board held that the request for restitutio in integrum was not well-founded because all due care required in the circumstances was not observed, as shown by the statements and facts submitted by the appellant. At no time prior to the expiry of the time limit to request conversion was there an obstacle for the appellant’s representatives to request conversion. Whether or not they exercised this option was their free choice. The Board failed to see how the opposition decision or any other act or omission of the Office could have influenced this free decision. The appellant’s representatives chiefly relied on the allegation that they expected another communication from the Office, which they call a ‘final refusal’, upon which the conversion time limit would start. This was an incorrect interpretation both of the CTMR and of the letter of the opposition decision. It was communis opinio that an error in law committed by a professional representative does not constitute a ground for restitutio in integrum. The professional representative’s task is precisely to know the law and to advise his client. Exceptions to this rule might be considered when the law is unclear or if the Office gives misleading information, but in the case at hand, the legal requirements are crystal-clear and follow the letter of the law directly, and at no point in time did the Office give incorrect or misleading information. Thus the Board rejected the request for conversion as not having been filed and dismissed the appeal. Appeal proceedings – suspension – suspensive effect – appealable decision –Communication about the possibility of appeal Decision of the Fourth Board of Appeal of 11 December 2006 in Case R 1169/2006 (English) R 1169/2006-4 MYTHBUSTERS / MYTHBUSTERS – (en) – t he OD rejected the request for suspension of the opposition proceedings. The relevant letter did not contain any reference to the availability of an appeal. The opponent filed a notice of appeal. It stated that it contested the decision communicated by the letter refusing the request for suspension of the proceedings. The Board noted that the refusal of a suspension of proceedings does not terminate the opposition proceedings, to the contrary. Allowing or rejecting a suspension of the proceedings is a purely procedural act. Such acts are not challengeable per se. The Board held that if procedural acts, which are not separately appealable, aggrieve the parties, they can challenge the decision on the merits on the grounds of an alleged procedural violation. The appeal was rejected as being inadmissible. The fixing of costs iwas reserved. Appeal proceedings – admissibility – new evidence – evidence produced for the first time before the Boards of Appeal – principle of functional continuity – case-law – Court of First Instance – opposition proceedings – proof of use – failure to provide enough evidence Decision of the Second Board of Appeal of 22 November 2006 in Case R 179/2006 (French) R 0179/2006-2 BLUE SOX / BLUE BOX – (fr) – deciding upon the admissibility of new evidence filed by the cancellation applicant before the Board, the Board held that (1) new evidence can only be accepted at the appeal stage when there is a flaw in the contested decision (see Opinion of Advocate General Sharpston delivered on 26 October 2006 in Case C-29/05 P (‘Arcol’), paragraphs 89 to 91), and (2) the existence of the functional continuity between the first instance department and the Boards of Appeal, taken together with the discretion conferred by Article 74(2) CTMR, must allow the Board to take account of material in exceptional circumstances, but cannot require it to do so (see the above-mentioned Opinion of Advocate General, paragraphs 111 to 112). The opponent did not prove a genuine use of its earlier trade mark. The appeal was dismissed. Opposition proceedings – substantiation of earlier right – change of name Decision of the First Board of Appeal of 22 November 2006 in Case R 860/2006 (German) R 0860/2006-1 Chron / Kron – (de) – the Board held that the Opposition Division cannot reject anopposition as not substantiated, when the opponent simply had changed its name. Article 4 CDR Invalidity designs proceedings – informed user – designer’s freedom – overall impression – individual character – novelty Decision of the Third Board of Appeal of 22 November 2006 in Case R 196/2006 (English) R 0196/2006-3 |
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New CTM-DOWNLOAD Version 3 As of 1 March 2007, the "1 SGML" and "2 XML" versions will be discontinued and replaced by the new version using TM XML. The new version is available for CTM-DOWNLOAD subscribers at https://service.oami.europa.eu/data/CTMV3/ . TM-XML is the European standard for trade mark data exchange. Further information about it can be obtained at www.tm-xml.org For CTM-DOWNLOAD subscribers that have not integrated version 3 by that date, the OHIM is providing a conversion tool from version 3 to version 2 at https://service.oami.europa.eu/data/CTMV3/v3tov2/.
State of play of future projects:
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Proposed Review of Community Trade Mark Fees Improved efficiency, increased productivity and a move towards using more and more e-business tools have contributed to this budgetary imbalance and it is likely that it will increase even further in the coming years. Estimates foresee a surplus of €375 million by the end of 2010, and of around €700 million by the end of 2016. In light of this situation, and taking into account the provisions of Article 139 CTMR which state that the OHIM budget must be balanced, in December 2006, the Commission adopted a Communication outlining the proposed introduction of a regular and automatic review of the Community trade mark fees. The press release and the complete text of the Commission’s Communication can be found on the OHIM’s website at http://oami.europa.eu/en/fees.htm.
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(purple/white colour mark) – (en) – a representation of a mark consisting of two colours cannot be seen to exhibit the necessary qualities of precision and uniformity, when the textual description of the mark is clearly in contrast with what can be seen in the pictorial representation of the mark. Such a representation is also not clear, self-contained, easily accessible, intelligible or objective, as the Court stated in Case C-273/00 Ralf Sieckmann v Deutsches Patent- und Markenamt. T he graphic representation given and the written description show and describe two substantially different arrangements of the colours concerned, resulting in an ambiguous overall representation of the sign. 
(3D - cigarette holder - L&Leaf logo) – (en) – the decision reviews the case-law on 3-D marks. It discusses the usefulness of Internet searches as a means of assessing whether a product shape is customary in the relevant sector. The possible relevance of non-European websites is considered, as is the relationship between 3-D marks and registered designs. The decision rejects the argument that the shape is distinctive on account of a tiny figurative element. The appeal was dismissed. 
– (en) – t he sign applied for was composed of a letter ‘N’ depicted in a standard typeface and incorporated in a thin circle. In relation to the goods applied for, it was held that such a mark could be perceived by the average consumer as a catalogue reference or as an indication of size, compatibility, model or product code. The Board deemed it improbable that the potential consumers of such goods would construe the sign as an indication of commercial origin. The representation of a letter within a circle is not unusual in the marketplace. The right of third parties to use the letter ‘N’ would be called into question by the registration of the CTM applied for consisting of the capital letter ‘N’ in a context of commonplace, non-striking figurative elements. The trade mark applied for is not endowed with the minimum degree of distinctiveness required. The appeal was dismissed. 
(device of a water tap nozzle) – (de) – figurative marks showing a realistic reproduction of the relevant features of the goods (looking, for example, like a blue print) are to be judged in the same way as three-dimensional marks constituted by the shape of the goods themselves (here: a water tap nozzle). In this case, it was held that the sign lacks distinctiveness for the goods in Cl ass 11. The appeal was dismissed. 
(UCLÉS DENOMINACIÓN DE ORIGEN) / MONASTERIO DE UCLES – (es) – an earlier CTM registration, ‘MONASTERIO DE UCLES’, effectively claimed the monopoly over the term ‘UCLÉS’. ‘UCLÉS’ became a designation of origin for wine shortly after the exchange of pleadings in the opposition proceedings before the OD had closed. Therefore, this factor could not taken into consideration in the contested decision. Nevertheless, the Board noted that ‘UCLÉS’ is a small village of some 350 inhabitants. For the Board, that smallness did not remove or detract from the general interest in preserving designations of origin for use by competitors where there is a link between the geographical name and the category of products at issue. Moreover, evidence was furnished of wine from ‘UCLÉS’ being given coverage in various publications. In conclusion, the Board held that ‘UCLÉS’ could not be the dominant element of either of the signs in conflict, and a comparison had to be made of the marks as a whole: ‘MONASTERIO DE UCLÉS’ and ‘UCLÉS DENOMINANCIÓN DE ORIGEN’. In this sense, the marks were held to be sufficiently dissimilar from a visual, phonetic and conceptual point of view, and sufficiently dissimilar in an overall assessment, to avoid a likelihood of confusion. The appeal was allowed. 
/ TELEDONOSTIA – (es) – the lack of administrative authorisation was held to be a ‘due cause for non-use’ within the meaning of Art. 43(2) CTMR. The case was remitted to the Opposition Division for assessing the likelihood of confusion. 
(underwater motive device) – (en) – In its decision, the Board examined the relationship between novelty and individual character. It concluded that an updated version of an earlier design lacks individual character when the modifications concern a relatively small component part of the product in question and when the overall impression that the updated version of the product as a whole produces on the informed user does not differ from the overall impression produced by the earlier design. The decision also addressed the designer’s degree of freedom when certain elements of the design are not dictated by any technical function. 