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| 2006 User Satisfaction Survey For the second year in succession, GfK Emer ad hoc Research has carried out a user satisfaction survey on behalf of the Office for Harmonization in the Internal Market, the results of which have recently been posted on the Office's website at http://oami.europa.eu/en/office/survey.htm#uss2006 . The aim of the survey was to identify the strengths and weaknesses in OHIM's practice and procedures with a view to improving in those areas defined as lacking, and to consolidate any quality improvements already reached in other areas. Its findings are based on comments and observations submitted by 520 agents and 436 proprietors, all of whom had been in touch with the Office at some stage between June 2005 and July 2006. A wide range of the Office's activities was subject to in-depth scrutiny, ranging from the specific core business trade mark and design operations to more general aspects such as communication, information and global image. The first conclusion reached in this survey refers to the positive image that users have of the Office on the whole, especially among professional representatives, and this is in line with similar findings last year. The survey indicates that this positive view comes particularly from the quality of the services offered by OHIM as well as its perceived professionalism and conscientiousness. The staff of the Office is also rated very highly and is considered one of the principle assets of the OHIM. Significant advances were also noted by representatives in Appeals, where clarity of decisions improved significantly on last year's results, as did the time taken to issue decisions. Proprietors in particular were satisfied with the performance of the Register, noting the improvements in the time taken to issue licenses, transfers and copies of certificates among others. The registered Community design fares well in all aspects of its activities and procedures, with no strategic weaknesses whatsoever identified by the survey. The clarity and completeness of Community design related decisions is rated very highly as is the speed of publication and the simplicity of the procedures, with no negative observations of note. In terms of general information services, the Alicante News publication and the website as information sources are also regarded positively, both by proprietors and by agents. When it comes to more specific information requests on individual cases, however, the survey highlights moderate levels of dissatisfaction among agents when trying to obtain concrete information from examiners and also in the time it takes to get a response from the Office on consultations made. In response to the observations on not being able to contact examiners for information, it is the Office's opinion that direct, regular requests to examiners for information, unless absolutely essential, actually hinder them in their core business examination tasks and detract from them concentrating on their case work. It is preferable that such requests be channelled through the Information Centre, where constant improvements are being put in place. The levels of satisfaction in relation to the OHIM's electronic business tools have dropped since last year's survey. It is evident to the Office that recurring technical problems over 2006 have contributed to this decline, and plans are already in place to solve the problems which have arisen in this area. One of the aspects most in need of improvement was the level of consistency in decisions taken by examiners and what was deemed by agents as the excessive length of time taken to reach these decisions. This was also the case in last year's survey, leading to the implementation of a structured action plan on CTM decision quality which introduced a number of steps to improve in this area. This plan is ongoing and will hopefully lead to a marked improvement in this field over the coming months. An article on this action plan on quality was published in Alicante News in October 2006 and can be accessed at Despite significant improvements over 2006 in the time taken to handle opposition cases, this still scores low for both proprietors and agents, with particular criticism of the time taken to issue decisions on opposed CTMs. This is an area of concern to the Office and steps are being implemented to ensure that the time standards set in this field are met over 2007. For a more complete overview of the 2006 User Satisfaction Survey's findings, both the executive summary and the full report are available on the OHIM website at: http://oami.europa.eu/en/office/survey.htm#uss2006 . |
The ‘Fazer' Case The right to a name is a question of national law, as mentioned in Article 52(2) CTMR. Thus, in accordance with Article 74(1) the Office was restricted to facts, evidence and arguments provided by the parties. On the basis of what was presented by the parties as evidence, the Cancellation Division considered that it can be concluded that a surname per se is an object of legal protection under the Finnish and Swedish trade mark law. A trade mark may be declared invalid where an identical or closely similar surname exists, and the use of such trade mark may be prohibited pursuant to the national laws THE CANCELLATION DIVISION composed of Karin Kuhl, Wouter Verburg, Julia García Murillo took the following decision on 23/05/2006 :
The costs were fixed as follows: T he amount of costs to be paid by the CTM proprietor to the applicants pursuant to Article 81(6) CTMR in conjunction with Rule 94(3) IR shall be EUR 2300, corresponding to two invalidity fees (2x EUR 700) and representation costs (2x EUR 450). FACTS AND ARGUMENTS (1) On 04/03/2004 Karl Johan Fazer filed a request for a declaration of invalidity based on relative grounds against Community trade mark No 733 311, FAZER (word mark). (2) On 04/03/2004 Karl Fredrik Fazer and Karl Otto Fazer filed a request for a declaration of invalidity based on relative grounds against Community trade mark No 733 311, FAZER (word mark). (3) 04/03/2004, together with the requests for a declaration of invalidity, the applicants requested the proceedings be joined according to Rule 41 IR. (4) On 14/04/2004 the Office decided to deal with both requests for declaration of invalidity in one set of proceedings. (5) The Community trade mark was applied for on 26/01/1998 and registered on 10/07/2003. The mark is registered for: “Luggage, bags, hand bags, holdalls, wallets, trunks and travelling bags, articles of leather and imitation leather, umbrellas, parasols, walking sticks and shooting sticks; all being golfing products or products for use in the game of golf “(class 18); “Golf clubs, golf bags, golf balls, golf club covers, golf club grips, golf club heads, golf club shafts, golf gloves, golf mats, golf tees, golf equipment, golf games, toy golf clubs, parts and fittings for the aforesaid goods” (class 28) (6) The applicants based their request on relative grounds. The request is based on Article 52(2) CTMR, namely on a right to a name. (7) The applicants, in essence, claim the following:
(8) The arguments of the proprietor of the Community trade mark, in essence, are the following:
GROUNDS FOR THE DECISION On the admissibility of the request (9) According to Article 52(4) CTMR where the proprietor of one of the rights referred to in paragraphs 1 or 2 has previously applied for a declaration that a Community trade mark is invalid or made a counterclaim in infringement proceedings, he may not submit a new application for a declaration of invalidity or lodge a counterclaim on the basis of another of the said rights which he could have invoked in support of his first application or counterclaim. (10) The proprietor claims that the third Board of Appeal has already decided that protection as is afforded for the family name “Fazer” by Finnish and Swedish law would not prevent use of CTM. (11) The Third Board of Appeal decided on 16/10/2002 in case R 175/2002-3 ( Fazer ) to dismiss the appeal on the grounds, inter alia , that the opponent (Oy Karl Fazer AB) has not provided evidence of how, according to the laws of Finland, Sweden and Denmark, the trade name “Oy Karl Fazer AB or the name “FAZER” would be protected ( emphasis added ). (12) It should be noted that the reference decision was based on claim under Article 8(4) CTMR and the Board of Appeal even underlined this fact by stating that “the right to a name cannot be constructed as a sign in the course of trade since Article 52(1)(c) and (2) CTMR makes a clear distinction between a right to a name and sign used in the course of trade. (13) It should further be noted that the opponent in the Case R 175/2002-3 was Oy Karl Fazer Ab and not the applicants in the current proceedings, namely Karl Fredrik Fazer, Karl Otto Fazer and Karl Johan Fazer. (14) In any event, the fact that the Opposition Division has issued a decision relating to the challenged Community trade mark does not exclude that once the trade mark is registered a cancellation action is filed on the same grounds and between the same parties. The principle of res judicata has not been foreseen in such circumstances in the Community trade mark Law. (15) T he request complies with the formalities prescribed in the CTMR and in Commission Regulation (EC) No 2868/95 implementing the CTMR (“IR”) (OJ OHIM 2-3/95, p. 258) the Implementing Regulation and is, therefore, admissible. On the substance Legal capacity of Karl Fredrik Fazer and Karl Otto Fazer. (16) The proprietor contests the legal capacity of Karl Fredrik Fazer and Karl Otto Fazer to act in these proceedings. (17) According to Article 55 (1)(c) CTMR an application for revocation of the rights of the proprietor of a Community trade mark or for a declaration that the trade mark is invalid may be submitted where Article 52(2) applies, ….by the persons who are entitled under the national law of the Member State concerned to exercise the rights in question. (19) The applicants contested this finding and made a reference to both Finnish and Swedish Child Custody and Parents Act. (20) According to the Swedish Parents Act (Föräldrarbalken SFS 1949:381) both parents shall act as the guardians in relation to children under custody of both parents. (21) Together with the request for declaration of invalidity Karl Fredrik Fazer and Karl Otto Fazer submitted a power of attorney signed by both parents Karl Johan Fazer and Marina Rudnäs. The locus standi of the parents was also proved by the population extracts. (22) Therefore it has been proven that Karl Fredrik Fazer and Karl Otto Fazer have been legally represented by their parents. Moreover, it has not been proven why the under aged children cannot exercise their rights if this is authorised by their legal custodians. The right to a name in Article 52(2) CTMR and Article 4(c)(i) of the Trade Marks Directive (“TMD”). (23) According to the Article 4 (4)(c)(i) of the First Directive 89/1004/EEC of the Council of 21 December 1988 to approximate the laws of the Member States relating to trade marks, the use of the trade mark may be prohibited by virtue of an earlier right other than the rights referred to in paragraphs 2 and 4 (b) and in particular: (i) a right to a name. (24) According to the proprietor, the right to a name in Article 52(2) CTMR and Article 4(c)(i) of the Trade Marks Directive (“TMD”) means the right to protect an interest associated with a name such as trade's goodwill or a celebrity's reputation and not a name simpliciter . His main argument is that the context in which subparagraph (i) occurs strongly suggests that the right to a name would protect such an interest. The Cancellation Division has sympathy for this point of view. However, the text of Article 52(2)(a) CTMR does not leave any room for interpretation. If the use of a trade mark may be prohibited pursuant to the national law governing the protection of a right to a name, the Community trade mark shall be declared invalid. (25) According to the proprietor the grounds on which a registered trade mark would be declared invalid would be the same in all member states. However, this is contrary to the wording of the Article 4 TMD which clearly stipulates that “any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that the use of the trade mark may be prohibited by virtue of an earlier right other than the rights referred to in paragraphs 2 and 4 (b) and in particular a right to a name…”. (26) Therefore it is clear that the legislator has explicitly allowed Member States to retain some of their national laws. (27) In light of the analysis mentioned above there is no reason to decide if Community law should prevail or not as the legislator included the possibility for the Member States to retain some of their national laws insofar as they do not contradict Community law. As the “right to a name” is explicitly mentioned in the Community law it would seem from the facts as presented by the applicants that the Finnish and Swedish laws protecting names per se are in line with the Community law. Right to a name (28) In accordance with Article 52(2)(a) CTMR, a Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to the national law governing the protection of any other earlier right and in particular (…) a right to a name. (29) The Office treats the law of the Member State applicable by virtue of Article 52(2) CTMR as an issue of fact, i.e. the same principle applies as in International Private Law. Hence, pursuant to Article 74(1) CTMR it is for the party relying on a right to a name within Article 52(2) 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 right are. (30) The applicants make express references to provisions of Finnish and Swedish law, and to national case law, as mentioned hereafter. According to the applicants, under both Finnish and Swedish trade mark law a trade mark must be declared invalid if it includes a name. There is no requirement that this name has been used in the course of trade or that it must have acquired repute or goodwill in order to be successfully invoked. Finland:
Sweden:
(31) The applicants also indicate that no legal protection is extended to last names which have a secondary meaning in the standard language as such names would not be “likely to give the impression of” being last names as stipulated in Section 14(1)(4). (32) It is noted that the last name “Fazer” is not associated with any such meaning in the Finnish language, either expressly or connotatively. The applicants enclosed, as proof, an excerpt from the Finnish Standard Language Dictionary (Suomen kielen perussanakirja) that shows that there are no dictionary references for identical or similar words. (33) The applicants further stated that the Sections 8 and 9 referred to in Section 25 relate to instances where a proprietor of an earlier trade mark may lose its right to seek declaration of invalidity due to acquiescing in the use of the later mark, unregistered or alternatively registered, respectively. (34) The applicants submitted copies, duly translated into the language of the proceedings, from the national population authorities that the applicants in Sweden (Karl Fredrik and Karl Otto) and in Finland (Karl Johan) are resident in these countries. (35) The proprietor denied that the applicants have made out their case and argues that the submissions do not show that under the Swedish or Finnish national laws the CTM would not have been registered or that it would have been declared invalid if it had been. However, the proprietor did not present evidence which would give raise to doubts as to the veracity of the evidence of the applicants. (36) On the basis of what has been presented by the parties as evidence t he Cancellation Division considers that it can be concluded that a surname per se is an object of legal protection under the Finnish and Swedish trade mark law. A trade mark may be declared invalid where an identical or closely similar surname exists, and t he use of such trade mark may be prohibited pursuant to the national laws. (37) The CTM proprietor did not show that there are circumstances which would exclude the application of Section 25 of the respective national laws. (38) It can be concluded from the copies of the population registers and from various newspaper articles that the surname FAZER is in use as a surname in Finland and Sweden. (39) The contested CTM is FAZER, identical to the surname FAZER of the applicants. In view of the above, the contested CTM registration must be invalidated. COSTS (40) Pursuant to Article 81(1) CTMR and Rule 94 IR, the party losing cancellation proceedings shall bear the fees and costs of the other party. As the CTM is invalidated for all goods, the proprietor is the losing party. THE CANCELLATION DIVISION Karin Kuhl Wouter Verburg Julia García Murillo Notice on the availability of an appeal: Under Article 58 of the Community Trade Mark Regulation any party adversely affected by this decision has a right to appeal against this decision. Under Article 59 of the Regulation notice of appeal must be filed in writing at the Office within two months from the date of notification of this decision and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of 800 euro has been paid.
Ireland is ranked 15 th in the world in terms of overall CTM filings made since 1996, having filed a total of 5,081 applications.  
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Community Design | Towards A Harmonized Application of Design Law: The Procter & Gamble Case The Procter & Gamble Company (P&G) holds a Registered Community Design (RCD)1 for the following sprayer:
Such sprayer is used for the company's “Febreze” freshener. The design was published in February 2004. The design was the result of a process launched in May 2002 by the company to develop a new package for Febreze. It was decided to develop a design with a so-called “trigger concept”, by which the fluid would be expelled horizontally instead of vertically (as had been the case until then in the marketplace). The design, once developed, registered and marketed, won several design awards. Procter & Gamble sued Reckitt Benckiser before the High Court of England and Wales (designated as a Community Designs Court), for infringement of the RCD, alleging that Reckitt's “Air Wick Odour Stop” (launched towards the end of 2004) sprayer infringed its design.
The Court found on 13 December 2006 that the RCD was validly registered and had been infringed 3 . This judgment2 is one of various judgments involving both companies: P&G obtained interim measures against the defendant from the Vienna Commercial Court , the Brussels Court of First Instance, the Evry Commercial Court and a court in Milan , prohibiting the use of the Air Wick design. Impact The judgment describes of when a RCD is infringed, highlighting different legal points which are of interest for practitioners. In doing so, the Court, with the assistance of the parties' counsels, found “useful guidance” in several decisions of the Invalidity Division of the OHIM, quoting at least five of those decisions, including the first decision issued in April 20043 and employing as part of its motivation several approaches endorsed by the OHIM. In doing so, it provides an example of a tendency towards harmonized enforcement of the Community design legal framework. First, the Court analyses the different conditions for protection (novelty and individual character), rightly stating that the test that applies to determine whether there has been a valid registration is the same as applies in order to determine whether there has been an infringement. This is the result of the Community Design Regulation (CDR) “overall impression” test contained in Article 6 (individual character) and Article 10 (scope of protection of a RCD). Secondly, the Court rightly underlines that scope of protection is not limited by the product to which the design is applied, in conformity with Article 36(6) CDR. Both parties in Court agreed that if a design is registered for an aerosol, it could be infringed by a vase. Thirdly, the Court, in analyzing whether the alleged infringing design produced the same impression as the RCD, it identified as “informed user”, the user of sprayers, not a designer or a manufacturer. In this regard, accepting that the notion of “informed user” is a legal construct, and rejecting that extensive technical knowledge is necessary, since, in any case, it would be very unlikely to exist in reality. Fourthly, as regards the designer's degree of freedom, the judge considered this to be an objective test which applies to all designers, without including, for example, internal commercial constraints. Fifthly, since the scope of the registration limits the elements of the RCD entitled to protection, the registration must be the “yardstick by which infringement is to be judged”. In this respect, the RCD, for example, was not limited to certain colors. Sixthly, the correct approach to determine the overall impression consists of identifying similarities and differences between the RCD and the infringing design. The judge, considering that the test for validity and the test for infringement, are the same, followed the OHIM's approach. The Court found, after such determination, that both designs had the same overall impression, since the similarities are overwhelmingly greater than the differences. By reproducing the photographs of both designs in annex to the judgment, the Court found that the comparative photographs demonstrate better than words can do the similarities in visual impression between the two. Finally, the Court considered the validity of the RCD, in light of different prior designs invoked by the parties (a Swiss patent, a Chinese design and a UK application). The Court concluded that the RCD has a different overall impression, and thus declared it valid and dismissed any invalidity argument thereof. The case illustrates, on the one hand, how effective it is for major companies with a strong commercial presence within the European marketplace to obtain EU-wide protection for their designs. On the other hand, it illustrates the persuasiveness of the Office's decisions in the area of validity of designs. By relying on them, the Court found assistance. It is of great importance for users of the Community design system that all instances applying the substantive rules of the CDR follow a coherent approach. The OHIM's guidance increases the coherence and the harmonization in the application of the CDR. ___________________________________________ 1http://oami.europa.eu/bulletin/rcd/2004/2004_013/000097969_0001.htm
First RCD Case before the Court of First Instance: The ‘Metal Rapper'
In the summer of 2005, the Invalidity Division of the Designs Department of the Office declared invalid a Community design, registered back in 2003 for promotional children's toys in the form of small metal disks, known in Spanish as ‘tazos' and in English as ‘rappers'. Once manufactured, these disks are then decorated with colourful cartoon-like figures and are subsequently distributed as promotional gifts in snack foods aimed at children. The basis of the decision, under the meaning of Article 25.1(d) of the Council Regulation on Community designs (CDR), was that the invalidated design was in conflict with another registered Community design which had been applied for at an earlier date and which had claimed priority of a Spanish national registration. Article 25.1(d) states that: “if the Community design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if a priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date by a registered Community design or an application for such a design, or by a registered design right of a Member State, or by an application for such a right…” The Invalidity Division was of the opinion that a conflict arose because the overall impression created by both designs on the informed user was similar. This invalidity decision was later set aside by the third Board of Appeal of the Office. The Board agreed with the Invalidity Division of the Designs Department inasmuch as the invalidated design was predated by a valid prior Community registration claiming priority of a registered Spanish design. However, it found that the overall impression created on the informed user was sufficiently different in both cases to rule out any conflict, within the meaning of Article 25.1(d). The Board also addressed the matter of the degree of freedom available to designer when reaching its decision. This led the respondent to take the case before the Court of First Instance. The definition of what is the ‘informed user', the significance of ‘in conflict with' and the concept of ‘the degree of freedom' available to designers have been areas of discussion since the inception of the registered Community design in 2003. The IP community now awaits the decision of the Court with interest, given that this is the first time that a registered Community design will come before the Luxembourg courts.
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LATEST TRADE MARK AND DESIGN NEWS FROM LUXEMBOURG A: ECJ European Court of Justice (ECJ): Appeals from decisions of the Court of First Instance, Article 63 CTMR A-1: ECJ Judgments and Orders Keywords: Opposition. The action had been an appeal from the Judgment of the CFI of 17 November 2005 in T-154/03. The parties settled the case out of court.
A-2: ECJ: Developments in pending cases Celltech : C-273/05-P - Opinion of the Advocate General Sharpston. Keywords: ECJ procedure: is distinctiveness a finding of fact? - Absolute grounds for refusal: criteria of assessment (is the relevant public's perception the only criterion?) - Absolute grounds for refusal: relationship between distinctiveness, A7(1)(b) CTMR, and descriptiveness, A7(1)(c) CTMR. The action concerns an appeal from a Judgment of the CFI in T-260/03 (2005) ECR II-1215, initiated by the Office. The case focuses on the question whether the word “Celltech” is acceptable as a CTM, and if in the affirmative to what extent, when applied for a range of products and services in Classes 5, 10 and 42, namely: pharmaceutical, veterinary and sanitary preparations, compounds and substances; surgical, medical, dental and veterinary apparatus and instruments, and research and development services and consultancy services, all relating to the biological, medical and chemical sciences. Initially, the examiner had rejected the application under Article 7(1)(b) and (c) CTMR. The Board subsequently had confirmed rejection; it, however, stated that there was no need to consider Article 7(1)(c) CTMR in addition to Article 7(1)(b) CTMR. The CTM applicant subsequently appealed to the CFI, raising a single plea in law, namely alleging infringement of Article 7(1)(b) CTMR. The CFI allowed the appeal. In its appeal from the CFI Judgment, the Office also relied on Article 7(1)(c) CTMR. The Advocate General suggests: • Assessment of distinctiveness: issue of fact or of law? “ 85. The Court of Justice has recently stated that ‘the specific evaluation of the impact of a trade mark on consumers, clearly defined in relation to the goods and services for which registration of the sign is requested, amounts to a finding of fact'. Although that statement was made in the context of the competence of the Court of Justice to review findings of fact by the Court of First Instance, it confirms me in my view that an appellate court should not interfere with such a finding by the Board of Appeal (itself already adjudicating on appeal from the decision of an OHIM examiner) without good reason. 86. That approach is also supported by the wording of Article 63(2) of the Regulation, which provides that actions against decisions of the Boards of Appeal ‘may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application[,] or misuse of power'. To my mind, that wording strongly suggests that the jurisdiction of the Court of First Instance when reviewing such a decision is limited to points of law. It would follow that review by that court of a decision of the OHIM Board of Appeal ‘is confined to review of the legality of that decision, and is thus not intended to re-examine the facts which were assessed within OHIM'. I accept, however, that that proposition does not represent the settled practice of the Court of First Instance hitherto on appeals from decisions of OHIM Boards of Appeal. 87. In the present case, it seems to me that the Board of Appeal's statement that CELLTECH would be perceived by the relevant consumer as designating activities in the field of cell technology is a finding of fact that cannot be challenged in the context of an action against the contested decision. More generally, it is clear to me from that decision that the Board of Appeal did not fail to assess the mark as a whole. The trade mark applicant's principal submission in its action against the contested decision must therefore be dismissed.” (b) Is the perception of the consumers the only criterion for assessing distinctiveness? “ 88. The relevant public's perception of the mark is however only one of the criteria for determining whether a trade mark is distinctive. In addition, distinctiveness must be assessed by reference to the goods or services in respect of which registration is sought. That is the subject-matter of the trade mark applicant's submission in the alternative in its action against the contested decision. The applicant submits that the Board of Appeal did not consider whether the mark CELLTECH would have distinctive character by specific reference to the goods or services for which registration is sought. It notes that those goods include ‘pharmaceutical, veterinary and sanitary preparations, compounds and substances' and ‘surgical, medical, dental and veterinary apparatus and instruments'. The applicant considers that, even individually, the terms ‘cell' and/or ‘tech' are or would not be naturally used to describe such goods, and submits that the Board of Appeal did not consider that point. 89. That submission seems to me to have some weight. 90. Since registration of a mark is always sought in respect of the goods or services described in the application for registration, the question whether any of the absolute grounds for refusal apply to the mark must be assessed specifically by reference to those goods or services. That assessment must be thorough and full. Where registration of a mark is sought for a number of goods and services, I consider that it is not necessary for a decision refusing registration on the basis of an absolute ground of refusal to state its conclusion separately for each of those individual goods and services. However, where registration is refused on that basis for an entire group or category of goods or services, the decision must explain adequately why the mark is ineligible for registration for the group or category as such. 91. To my mind, paragraph 12 of the contested decision does not provide such an explanation. As I have indicated, I do not consider that the Board of Appeal was required to give ‘an explanation of the meaning in scientific terms of cell technology' or to explain in what way the terms ‘cell' and ‘tech' ‘give any information about the intended purpose and nature of the goods and services referred to in the application for registration, in particular about the way in which those goods and services would be applied to cell technology or how they would result from it'. I am, however, of the view that the Board was required to explain why it considers (as it apparently does) that ‘pharmaceutical, veterinary and sanitary preparations, compounds and substances' and ‘surgical, medical, dental and veterinary apparatus and instruments' are ‘products, apparatus and equipment used in connection with or resulting from [activities in the field of cell technology]'. The contested decision contains no such explanation. I accordingly consider that it should be set aside.” (c) Overall “93. I am accordingly of the view that the Court should: (1) set aside the judgment of the Court of First Instance in Case T-260/03; (b) set aside the decision of the Second Board of Appeal of 19 May 2003; (3) order the Office for Harmonisation in the Internal Market to pay the costs at first instance and Celltech R&D Ltd to pay the costs on appeal.”
B: ECJ: Preliminary Rulings Opel Blitz : C-48/05 - Judgment of 25 January 2007. Keywords: Trade mark rights: scope – TM Directive: use within the meaning of the infringement provisions (Article 5) – Right in a trade mark/scope: mark on a scale model of the original product. The case is a reference from the Landgericht Nürnberg-Fürth (Bavaria, Germany). Adam Opel AG, a motor manufacturer, is the proprietor of the national figurative mark reproduced below, registered in Germany on 10 April 1990 for, inter alia , motor vehicles and toys (‘the Opel logo'):
The defendant, Autec AG, manufactures, inter alia, remote-controlled scale model cars, which it markets under the trade mark ‘Cartronic'. At the beginning of 2004, plaintiff discovered that a 1:24 remote-controlled scale model of the Opel Astra V8 coupé, bearing the Opel logo on its radiator grille like the original vehicle, was being marketed in Germany. That toy is manufactured by Autec. The Cartronic trade mark, accompanied by the symbol ®, is clearly visible on the front page of the user instructions accompanying each scale model and also on the front of the remote control transmitter. In addition, the indications ‘AUTEC® AG' and ‘AUTEC® AG D 90441 Nürnberg' appear on the back of the user instructions, the latter indication appearing also on a sticker attached to the underside of the remote control transmitter. By an application brought before the Landgericht Nürnberg-Fürth, Adam Opel sought an order, inter alia, that Autec be prohibited from commercially affixing the Opel logo on scale models of vehicles, from offering them for sale, marketing them, or holding them for such purposes, and from importing or exporting scale models bearing that trade mark, on pain of a fine of EUR 250 000 for each infringement or, in the alternative, a term of imprisonment not exceeding six months. Adam Opel considered that use of the Opel logo on toys consisting of scale models vehicles which Autec manufactures and distributes constitutes an infringement of its trade mark. It claimed that that mark is being used for products identical with those in respect of which it is registered, namely toys. That, it maintained, constitutes use as a trade mark within the meaning given by the Court's case-law, since the public would assume that the manufacturer of scale models of vehicles of a given mark manufactures and distributes them under a license granted by the proprietor of the trade mark. Basing its argument on the decisions of various German courts, defendant, supported by the Deutscher Verband der Spielwaren-Industrie eV (German toy industry association), replied that the affixing of a protected trade mark on scale models which are a true replica of vehicles of that mark does not constitute use as a trade mark as such. In this case, the original function of the Opel logo is unaffected, since, because of the use of the ‘Cartronic' and AUTEC trade marks, it is obvious in the eyes of the public that the scale model does not come from the manufacturer of the vehicle of which it is a replica. Moreover, the public is used to the fact that, for more than 100 years, the toy industry has been reproducing faithfully, i.e. right down to the affixing of the trade mark, products which exist in reality. In the light of the judgment in Case C-63/97 BMW [1999] ECR I-905, the Landgericht Nürnberg-Fürth has held that use of the Opel logo by Autec can be prohibited under Article 5(1)(a) of the directive only if the use in question is made qua trade mark. The Landgericht Nürnberg-Fürth is inclined to think that there is use of that logo by Autec qua trade mark, since that logo refers to the manufacturer of the real car. It also asks whether such use, which appears to it to constitute at the same time a descriptive use within the meaning of Article 6(1) of the directive, may be authorised in accordance with that provision even if that trade mark has also been registered for toys. Taking the view that resolution of the dispute before it required interpretation of the directive, the Landgericht Nürnberg-Fürth decided to stay the proceedings and refer the following questions to the Court of Justice for a preliminary ruling:
In cases of this type what are the decisive criteria to be applied in assessing whether the trade mark corresponds to honest practices in industrial or commercial matters? Is this in particular the case if the manufacturer of the model car applies to the packaging, and to an accessory required in order to use the model, a mark recognisable to the trade as its own trade mark together with its company name and the address of its seat? “ The 1 st Chamber of the ECJ (Jann, Schiemann, Ilesic (Rapporteur)) handed down the following Judgment: “1. Where a trade mark is registered both for motor vehicles – in respect of which it is well known – and for toys, the affixing by a third party, without authorisation from the trade mark proprietor, of a sign identical to that trade mark on scale models of vehicles bearing that trade mark, in order faithfully to reproduce those vehicles, and the marketing of those scale models: - constitute, for the purposes of Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, a use which the proprietor of the trade mark is entitled to prevent if that use affects or is liable to affect the functions of the trade mark as a trade mark registered for toys; - constitute, within the meaning of Article 5(2) of that directive, a use which the proprietor of the trade mark is entitled to prevent – where the protection defined in that provision has been introduced into national law – if, without due cause, use of that sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark as a trade mark registered for motor vehicles. 2. Where a trade mark is registered, inter alia, in respect of motor vehicles, the affixing by a third party, without the authorisation of the proprietor of the trade mark, of a sign identical to that mark to scale models of that make of vehicle, in order faithfully to reproduce those vehicles, and the marketing of those scale models, do not constitute use of an indication concerning a characteristic of those scale models, within the meaning of Article 6(1)(b) of Directive 89/104.” Clear Bin or Dyson : C-321/03 - Judgment of 25 January 2007. Keywords: TM-Directive – Absolute grounds for refusal: 3D signs – Absolute grounds: distinctiveness. The case was a reference from the UK High Court relating to the “UK-based” Dyson case. Since 1993 Dyson has manufactured and marketed the Dual Cyclone vacuum cleaner, a bagless cleaner in which the dirt and dust is collected in a transparent plastic container forming part of the machine. On 10.12.1996, Notetry Ltd, a company owned by James Dyson, lodged an application at the Registry for the registration of six trade marks for the following products in Class 9 of the Nice Agreement: “[a]pparatus for cleaning, polishing and shampooing floors and carpets; vacuum cleaners; carpet shampooers; floor polishers; parts and fittings for all the aforesaid goods“. That application was assigned to Dyson on 5. 2. 2002. The application was withdrawn for four of those marks but was maintained for the two others, which are described as follows: ‘[t]he mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation'. A picture of one or other of the two versions of the bagless vacuum cleaner manufactured and marketed by Dyson was attached to each of the descriptions. The application was rejected by decision of the Registrar, which was upheld by the Hearing Officer on 23.7.2002. Dyson brought an appeal against that decision before the High Court of Justice of England and Wales, Chancery Division. That court took the view that the two trade marks at issue were devoid of any distinctive character within the meaning of section 3(1), first subparagraph, (b) of the 1994 Act and that they were also descriptive of characteristics of the goods referred to in the application for registration, within the meaning of section 3(1), first subparagraph, (c) of that Act. The High Court was uncertain, however, whether on the date of the application for registration, that is in 1996, the trade marks had acquired a distinctive character as a result of the use made of them, within the meaning of section 3(1), second subparagraph, of the 1994 Act. In that regard, the High Court found that, in 1996, consumers recognised the transparent collection chamber as an indication that they were looking at a bagless vacuum cleaner and were informed by advertising and the lack of any rival products – as Dyson had at the time a de facto monopoly in that type of product – that bagless vacuum cleaners were manufactured by Dyson. It observed, however, that by that date the transparent collection chamber had not been actively promoted as a trade mark by Dyson. Accordingly, in the light of paragraph 65 of the judgment in Case C-299/99 Philips [2002] ECR I-5475, the High Court is uncertain whether a mere de facto monopoly can suffice to confer a distinctive character, given the association between the product and the manufacturer, or whether it is necessary to require in addition promotion of the sign as a trade mark. In those circumstances, the High Court of Justice of England and Wales, Chancery Division, decided to stay proceedings and to refer the following two questions to the Court for a preliminary ruling: “(1.) In a situation where an applicant has used a sign (which is not a shape) which consists of a feature which has a function and which forms part of the appearance of a new kind of article, and the applicant has, until the date of application, had a de facto monopoly in such articles, is it sufficient, in order for the sign to have acquired a distinctive character within the meaning of Article 3(3) of [the Directive], that a significant proportion of the relevant public has by the date of application for registration come to associate the relevant goods bearing the sign with the applicant and no other manufacturer? (2) If that is not sufficient, what else is needed in order for the sign to have acquired a distinctive character and, in particular, is it necessary for the person who has used the sign to have promoted it as a trade mark?” The 3rd Chamber of the ECJ (Rosas, Malenovsky; O' Caoimh (Rapporteur)) handed down the following Judgment: “Article 2 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the subject-matter of an application for trade mark registration, such as that lodged in the main proceedings, which relates to all the conceivable shapes of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner, is not a ‘sign' within the meaning of that provision and therefore is not capable of constituting a trade mark within the meaning thereof.” Diesel or Montex : C-281/05 - Judgment of 9 November 2006 . Keywords: TM Directive: Article 5(1) and (3) - Trade mark rights: scope – Scope of a right in a trade mark: can it be invoked against goods in transit? The preliminary ruling had been requested by the German Supreme Court (Bundesgerichtshof; BGH) by a decision of 2. 6. 2005. The request was submitted in the context of a dispute between Diesel SpA (hereinafter ‘Diesel') and Montex Holdings Ltd (hereinafter ‘Montex'), concerning an application for an order prohibiting the transit through German territory of goods belonging to Montex bearing a sign identical to the registered trade mark of which Diesel is the proprietor in Germany. Montex manufactures jeans by exporting the different pieces to Poland, including distinctive signs, under the customs seal procedure, having the pieces sewn together on Polish territory and bringing the completed trousers back to Ireland. Diesel has no protection for the sign in the territory of Ireland. On 31 December 2000, the Hauptzollamt Löbau – Zollamt Zittau (Löbau Principal Customs Office – Zittau Customs Office) held back a delivery, intended for Montex, of 5 076 pairs of women's trousers bearing the name ‘DIESEL', which a Hungarian company was to transport to them by lorry from the Polish factory through German territory. The trousers were to be transported in uninterrupted transit from the Polish customs office to the customs office in Dublin, and were protected against any removal in the course of transit by a customs seal affixed on the means of transport by the Polish authorities. The Bundesgerichtshof decided to stay proceedings and refer the following questions to the Court of Justice for a preliminary ruling:
The 2 nd Chamber of the ECJ (judge-rapporteur Kuris ) gave the following answer: “(1) Article 5(1) and (3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the proprietor of a trade mark can prohibit the transit through a Member State in which that mark is protected (the Federal Republic of Germany in the present case) of goods bearing the trade mark and placed under the external transit procedure, whose destination is another Member State where the mark is not so protected (Ireland in the present case), only if those goods are subject to the act of a third party while they are placed under the external transit procedure which necessarily entails their being put on the market in that Member State of transit. 2. It is in that regard, in principle, irrelevant whether goods whose destination is a Member State come from an associated State or a third country, or whether those goods have been manufactured in the country of origin lawfully or in infringement of the existing trade mark rights of the proprietor in that country.”
Céline : C-17/06 - Opinion of the Advocate General. Keywords: Trade Marks Directive: Article 5(1) (a) – European trade mark law: scope of protection of the right.– European trade mark right: invocable against registration, in the companies register, of a trade name and a business sign. The case is a reference from the Cour d´Appel de Nancy, France. The main proceedings are between two French companies, Céline SA and Céline Sàrl. Céline SA was set up and registered as a company in Paris in 1928 with as its principal object the creation and marketing of clothing and accessories. In 1948 it registered the French word trade mark ‘Céline' for, in particular, clothes and shoes. That trade mark has been renewed without interruption since then. Defendant (Céline Sàrl) was set up and registered as a company in Nancy in 1992 to sell clothing and accessories at premises in Nancy under the name ‘Céline'. The business had been operating at the same premises under the same name since 1950, when it was first entered in the local trade register. In 2003 Céline SA became aware of the existence of Céline Sàrl and of the similarity between their types of business. It brought proceedings against Céline Sàrl for trade mark infringement and unfair competition through unauthorised use of its company and trade name. Céline SA bases its action solely on the use of the name ‘Céline' to designate the entity Céline Sàrl and the business which it operates. It is not alleged that the name has been affixed to any products. That action was successful at first instance. Céline Sàrl was ordered to change its company name and shop sign, and to pay Céline SA damages in respect of both the trade mark infringement and the unfair competition. Céline Sàrl appealed to the referring court, which notes that in Robelco (C-23/01 = (2002) ECR I-10913, at paragraph 34) the Court of Justice specified that where a sign is not used for the purposes of distinguishing goods or services, it is for the Member States to determine the extent and nature of the protection afforded to trade mark proprietors who allege damage as a result of use of that sign as a trade name or company name. The question in that case was whether the protection which Member States can offer under Article 5(5) of the Directive concerns only use of a sign identical to the trade mark, or also use of a similar sign. Some doubt thus remains as to the applicability of Article 5(1)(a) in the circumstances of the present case. Under current French case-law there is infringement whenever the distinctive elements of a trade mark are reproduced, whatever use is made of them. The Cour d'appel has therefore referred the following question for a preliminary ruling:
The Advocate General (Mrs. Sharpston) suggested the following: Preliminary remarks: “ 2. The Cour d'appel (Court of Appeal) in Nancy, France, wishes to know whether that right can be exercised, by a trader who has registered a name as a word trade mark in respect of certain goods, against another trader who, without the proprietor's consent, has adopted the same name as a company name and shop sign in the context of a business marketing goods of the same kind. 3. Depending on the answer to that question, either or both of two further questions may arise, although they are not explicitly posed by the referring court. 4. The first, if the situation is not covered by Article 5(1), is whether a national law entitling the trade mark proprietor to prevent such use may fall within Article 5(5) of the Directive, which allows Member States to provide for protection against the use of a sign other than for the purposes of distinguishing goods or services, where such use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. If not, can such a national law be based on any other provision of the Directive? 5. The second is whether the position is affected by the fact that, under Article 6(1)(a) of the Directive, a trade mark proprietor may not prevent another person from using his own name or address, if that use is in accordance with honest practices in industrial or commercial matters. Proposed answer: “61. I am consequently of the opinion that the Court should answer the question referred by the Cour d' Appel in Nancy as follows: The mere adoption of a company or trade name similar or identical to an existing trade mark does not constitute use within the meaning of Article 5(1) of Council Directive 89/104/EEC. Subsequent use of such a name in the course of trade must be assessed by the competent court in order to determine whether it constitutes use in relation to goods or services for the purposes of that provision, that is to say, whether it is such as to distinguish the goods or services concerned and to affect the trade mark proprietor's interests by encroaching upon the ability of his trade mark to fulfill its essential function of guaranteeing to customers the origin of his own goods or services. That will be true in particular if the use in question creates the impression that there is a material link in trade between the trade mark proprietor and goods or services of another origin. In that regard, it must be established whether the consumers targeted are likely to interpret the use of the sign as designating or tending to designate the origin of the goods or services. The right of the trade mark proprietor to prohibit such use is subject to the limitation in Article 6(1)(a) of Directive 89/104/EEC, which is in turn conditional on the observance by the user of the name of honest practices in industrial and commercial matters. Use will not be in accordance with such practices in particular if it gives the impression that there is a commercial connection between the user and the trade mark proprietor, affects the value of the trade mark by taking unfair advantage of its distinctive character or repute or entails the discrediting or denigration of that mark. Honest practice in relation to the adoption of a name for use in trade implies reasonable diligence in contacting the proprietor of any similar or identical trade mark registered in respect of goods or services similar or identical to those in relation to which the name is to be used, and complying with any reasonable condition requested, within a reasonable period, by such a proprietor.” 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 Surface of a paper (3D) : T-283/06 - Judgment of 17 January 2007 (only in FR; action dismissed; Office practice confirmed). Keywords: Distinctiveness: 3D signs – 3D-signs: shape of the product itself – 3D signs/shape of the product: surface of the product. The action had been directed against a decision of the 1st Board of 11.5.2004 in R0493/2003-1 relating to a three-dimensional CTM application (shown below), applied for in Classes 16 and 21.
It had been rejected on the grounds that it lacks distinctiveness, along the lines of established Office practice relating to three-dimensional signs consisting of the shape of the product itself, or its surface, respectively. The 1 st chamber of the CFI (Cooke, Garcia-Valdecasas, Labucka) confirmed the Board. Calavo : T-53/05 - Judgment of 16 January 2007 (action allowed; no impact on Office practice because the Office itself pleaded in favour of plaintiff). Keywords: CFI proceedings: scope of the OHIM´s pleas in law - Opposition proceedings: formalities (language of proceedings) – Language of proceedings: grounds for opposition (and request for invalidation on relative grounds) - Article 74(1) CTMR: scope. – Rule 20(3) IR: scope. The action had been directed against a decision of the 1 st Board of 8.11.2004 in R0159/2004-1 relating to CTM application “Calvo” in Classes 29, 30 and 31, which had been opposed on the basis of the earlier CTM “Calavo” in Classes 29 and 31. The statement setting out the ‘grounds' (additional arguments) had been submitted in a language different from the language of the proceedings. Whereas the Opposition Division (OD) had partially allowed the opposition, the Board had revoked it. The Board held that the OD was not competent to examine of its own motion the opposition and that, consequently, it could not allow that opposition in part. The notice of opposition was flawed, since it confined itself to giving as a ground of opposition the ‘likelihood of confusion' without providing any further arguments in the language of the proceedings. The Board found that the OD had contravened the principle that the subject-matter of a case is delimited by the parties and the principle of ‘equality of arms' which govern opposition proceedings, enshrined in Article 74(1) CTMR, pursuant to which OHIM cannot examine the facts of its own motion, since it is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. The Board took the view that it is for the opponent to submit and prove the grounds on which the opposition is based, and that the abstract reference to the ‘likelihood of confusion' is not sufficient. According to the Board, the factors which are decisive in respect of the likelihood of confusion in the present case must be put forward and proven. If the opponent fails to satisfy that requirement, the OHIM cannot in any event compensate for that procedural deficiency, since it is not competent to undertake an examination of its own motion is required to be impartial and cannot act at the same time as judge and party. The contested decision concludes by holding that the penalty which flows from non-compliance with that procedural requirement, namely the rejection of the opposition as unfounded, must be applied. The Office itself pleaded in favour of plaintiff; the 2 nd chamber of the CFI (Pirrung, Meij, Pelikánová) accepted that position and revoked the Board's decision. (a) Admissibility of the OHIM´s heads of claim “ 22 OHIM submits that the applicant's claims are well founded, since the contested decision is not consistent with OHIM´s practice with regard to the admissibility and grounds of an opposition. 23 The intervener objects to the possibility for OHIM to endorse the action brought by the applicant. In its submission, such a procedure is inconsistent and incompatible with the principles of protection of rights and legal certainty. OHIM is seeking the annulment of a decision which it itself adopted. It would be necessary, for such a change in OHIM´s position, to hear the Board of Appeal, unless there had been a change in the legislation or new information had come to light capable of justifying that radical change. Such factors do not exist in this case. 24 In the intervener's view, the case-law of the Court of First Instance relied on by OHIM in order to justify its conduct does not apply to cases such as the present. 25 In addition, the intervener claims that it must be able to rely on the protection conferred by Article 130(1) and Article 133(2) of the Rules of Procedure, under which proceedings are brought against OHIM as defendant, only the interveners being able, in accordance with Article 134(2) of the Rules of Procedure, to endorse the form of order sought by a main party or intervene in support of that form of order. In the present case the intervener is alone in actually defending the contested decision, and OHIM has thus undermined its procedural position. Findings of the Court: 26 The Court has held, in proceedings relating to a decision of a Board of Appeal ruling on opposition proceedings, that 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 (Case T-107/02 GE Betz v OHIM – Atofina Chemicals (BIOMATE) [2004] ECR II-1845, paragraph 34, and Case T-379/03 Peek & Cloppenburg v OHIM (Cloppenburg) [2005] ECR II-4633, paragraph 22). 27 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 36, and Cloppenburg , paragraph 22). On the other hand, it 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 (see, to that effect, Case C-106/03 P Vedial v OHIM [2004] ECR I-9573, paragraph 34, and Cloppenburg , paragraph 22). - 28 Furthermore, the Court has also held that that case-law applies to both inter partes and ex parte proceedings ( Cloppenburg , paragraph 24). 29 It follows from that case-law that the heads of claim by which OHIM endorses the applicant's claim for annulment must be declared admissible in so far as they, and the arguments set out in their support, do not go beyond the bounds of the claims and pleas in law put forward by the applicant. In this case, OHIM has remained within those bounds since it put forward, in support of its claim for annulment of the contested decision, the same pleas in law as the applicant. 30 Accordingly, in the present case OHIM may, without altering the terms of the dispute, seek annulment of the contested decision. It must therefore be held that OHIM´s heads of claim are admissible.” (b) Admissibility of the notice of opposition (standard Form) “ 48 Article 42(3) of Regulation No 40/94 provides that opposition must be expressed in writing and must specify the grounds on which it is made. According to the last sentence of Article 42(3), within a period fixed by OHIM, the opponent may submit in support of the opposition facts, evidence and arguments. 49 It follows, as regards the admissibility of the opposition, first, that the grounds of the opposition must be specified and, second, that it is necessary to distinguish between the concept of ‘grounds', on the one hand, and that of the ‘facts, evidence and arguments', on the other. The opposition must state the grounds on which it is based in order to be admissible, whereas the submission of facts, evidence and arguments is, in this respect, merely optional, as is clear from the use of the word ‘may' (see, to that effect, Case T-232/00 Chef Revival USA v OHIM – Massagué Marín (Chef) [2002] ECR II-2749, paragraph 31). 50 The statement ‘the opposition is based on a likelihood of confusion' which the applicant inserted in the Form, under the heading ‘Grounds of the opposition', was a perfectly clear specification of the relative ground for refusal of registration referred to in Article 8(1)(b) of Regulation No 40/94. That statement enabled, in particular, both OHIM and the trade mark applicant to know on what ground the opposition was based and to organise the examination of the case and the defence respectively. 51 Although the content of the official OHIM form cannot in itself be binding on the Court, an examination of that document merely confirms that finding. That document contains, under the heading ‘Grounds of the opposition', a box to be ticked which bears the number 94, followed by the reference, ‘Likelihood of confusion'. It is therefore sufficient, when filling out that official form, to tick that box in order to indicate the ground of the opposition. In this respect, it should be noted that the use of the official form is in no way compulsory. That is apparent from Rule 83(6) of Regulation No 2868/95, which allows the use of forms with the same content and format as the OHIM forms, such as forms generated by means of electronic data processing. It follows that the requirements cannot be more onerous as regards the content of an unofficial form than those in respect of the official form. The express reference that the applicant made in its Form is as precise as ticking the corresponding box in the official form. 52 Consequently, the opposition entered by the applicant by means of the Form was admissible. “ (c) On t he question whether the Opposition Division exceeded its competence by not rejecting the opposition as unfounded because the explanation of grounds had not been translated “ 58 It is common ground, in this case, that the Form submitted to OHIM by the applicant contained, under the heading ‘Grounds of the opposition', merely the reference ‘Likelihood of confusion', and that the Explanation of grounds, written in English, could not be taken into account by the Opposition Division. The question whether the Opposition Division could, in those circumstances, legitimately examine the substance of the opposition must be assessed in the light of Article 74(1) of Regulation No 40/94, which provides that in proceedings relating to relative grounds for refusal of registration, OHIM is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, and in the light of Rule 20(3) of Regulation No 2868/95, which specifies, in the version applicable at the material time, that if the applicant files no observations, OHIM may give a ruling on the opposition on the basis of the evidence before it. 59 The Court has already held that, in proceedings relating to relative grounds for refusal, the very wording of Article 74(1) in fine of Regulation No 40/94 requires that the examination carried out by OHIM be restricted to the facts, evidence and arguments provided by the parties and the relief sought. Thus, the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the relative grounds for refusal on which the party concerned has relied and the related facts and evidence that the parties have presented. The criteria for applying a relative ground for refusal or any other provision relied on in support of arguments put forward by the parties are naturally part of the matters of law submitted for examination by OHIM (see Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II-287, paragraph 21, and the case-law cited). 60 It is therefore necessary to examine, first, whether the Opposition Division did in actual fact restrict itself to examining the facts, evidence and arguments provided by the parties and the relief sought and, second, whether the evidence before it at the time of that examination was sufficient to justify its decision to uphold the opposition in part. 61 As regards, first, the facts, evidence and arguments provided and the relief sought, it has already been found (see paragraphs 46 and 50 above) that the Form submitted by the applicant to OHIM stated clearly that the applicant intended to enter an opposition against the Community trade mark application at issue and that it relied for that purpose on a likelihood of confusion. The Opposition Division did not therefore go beyond either the relief sought or the facts, evidence and arguments provided by the applicant; it therefore remained within the bounds of the dispute as defined by the applicant. 62 As regards, second, the question whether the evidence was sufficient, the Court finds that the decision of the Opposition Division could legitimately be adopted on the basis of the evidence before it at the time that decision was adopted. An examination of that decision reveals that all the facts on which the Opposition Division based its decision were available to it and that there was no need to have recourse to the Explanation of grounds written in English, which that decision finds expressly could not be taken into consideration. The assessment of the merits of the opposition, consisting of an examination of the likelihood of confusion between the mark applied for and the earlier mark, is set out in pages 5 to 8 of the decision. 63 First of all, in respect of the comparison of the goods concerned, the Opposition Division finds that the goods concerned by the Community trade mark application falling within Classes 29 and 31 are also covered by the earlier mark, with one exception, which however concerns a product very similar to a product covered by the earlier mark. Similarly, the Opposition Division finds, in respect of some of the goods in Class 30 designated in the trade mark application, either that they are similar to a certain extent to the goods covered by the earlier mark, or that they form a group of goods including such goods, or even that they are identical to those goods. The Opposition Division finds that the other goods in Class 30 are different from those covered by the earlier mark. 64 Next, as regards the comparison of the signs in question, the Opposition Division, referring to the relevant case-law of the Court of Justice (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23), undertakes an examination of the aural, visual and conceptual similarities between the two marks. It finds, in particular, a certain degree of phonetic similarity and a visual similarity between the two marks, whilst taking the view that a conceptual comparison of the signs is not possible, since the term ‘calvo' has a meaning only in Spanish (bald), whereas the term ‘calavo' will be perceived as a fanciful mark in all the Community languages. 65 The Opposition Division concludes by summarising that the conflicting signs are visually similar with a lesser degree of aural similarity in the context of a global assessment, since it is possible only for Spanish consumers to distinguish them conceptually, and that there is identity or similarity between some of the goods in respect of which the earlier mark is registered and those designated in the Community trade mark application falling within Classes 29, 30 and 31. Furthermore, the Opposition Division finds that the goods concerned are everyday consumer items to the purchase of which the consumer does not pay a particularly high level of attention. On the basis of those findings, the Opposition Division takes the view that there is a likelihood of confusion between the marks at issue, which includes the likelihood of association, so far as concerns the identical or similar goods. 66 It must be stated that that examination, the substance of which is moreover not contested by the intervener, remains strictly within the bounds of what the Opposition Division was required to examine in response to the applicant's application, namely the likelihood of confusion. That examination could be carried out solely on the basis of a comparison of the signs in question and the goods concerned. All the information relating to those two criteria was contained in the trade mark application, the registration of the earlier mark and the Form, and there was no need to have recourse to the applicant's Explanation of grounds or to any other sources of information. 67 In that respect, this case must be distinguished from those which gave rise to the Starix and Galáxia judgments, relied on by the Board of Appeal in the contested decision and by the intervener in its response. As is apparent from paragraph 64 of Starix , and from paragraph 38 of Galáxia , the applicants in those two cases claimed before the Court that the earlier trade marks had a reputation (Article 8(5) of Regulation No 40/94). Although the applicants in those two cases had referred to the reputation of their respective marks in the proceedings before OHIM, those references had however been made incidentally, in the context of arguments focussed on Article 8(1)(b) of Regulation No 40/94, in order to substantiate the likelihood of confusion. Article 8(5) of that regulation was not invoked ( Starix , paragraph 68, and Galáxia , paragraph 41) and, in Starix , no evidence of reputation was adduced ( Starix , paragraph 12). Accordingly, the Court rejected the complaints raised by the applicants in those two cases to the effect that the Board of Appeal should have examined Article 8(5) of Regulation No 40/94, which had not been invoked by them. By contrast, in the present case, as found above, not only had the plea relating to Article 8(1)(b) of Regulation No 40/94 clearly been put forward by the applicant during the proceedings before OHIM, but, in addition, all the facts were available to OHIM to enable it to examine the merits of that plea. 68 It follows from the foregoing that the Opposition Division did not exceed its competence by not rejecting the applicant's opposition as unfounded because the Explanation of grounds had not been translated. Accordingly, the Board of Appeal erred in law by annulling the decision of the Opposition Division and by rejecting the opposition as unfounded.” Five striped shoe or K-Swiss : T-14/06 - Order of 14 December 2006 : action dismissed as manifestly inadmissible (action brought out of time). Keywords: CFI procedure: formalities - OHIM procedure: means of notification of a decision - Absolute grounds for refusal: representation (photograph; drawing) of the product at issue – Absolute grounds for refusal: stripes on a shoe – Absolute grounds: impact of national registrations. The action had been directed against a decision of the 1 st Board of 26. 9. 2005 in R1109/2004-1 by which it had rejected the CTM application shown below (“5 parallel stripes on a shoe”). The application had claimed shoes in Class 25.
The decisive legal issue in the case had been the question whether service of a decision of the OHIM upon a party by courier complies with the provisions set out in the CTM Implementing Regulation. The plaintiff had admitted to have indeed received the challenged Board decision by courier on a specific date but then had pleaded that this manner of delivery is not legally valid. The 3 rd Chamber of the CFI (Jaeger, Tiili, Czucz) held to the contrary. Movingpeople : T-92/05 - Case closed; Order of 6 December 2006 . Keywords: CFI procedure: change of statements; Article 135(4) Rules of Procedure - CFI procedure: impact of transfer of invoked earlier right to CTM applicant at pending proceedings – Transfer of invoked earlier right: impact on pending proceedings and on assessment of likelihood of confusion - Opposition: likelihood of confusion. The action had been directed against a decision of the 1st Board of 20.12.2004 in R0410/2004-1, relating to opposition proceedings initiated against CTM application movingpeople.net (figurative, as shown below), applied for in Classes 10, 12 and 20. It had been opposed on the basis of “Moving People”, a German word mark, registered in Classes 12 and 37. The opposition had been allowed.
At pending CFI proceedings, the invoked earlier right was transferred to plaintiff (CTM applicant). Plaintiff claimed that there can no longer exist any likelihood of confusion. It, however, maintained its initial claim in order to achieve clarification as regards the legality of the contested Board decision at the time it had been taken. The court did not accept that claim. “ 20 Thus, case-law shows that, where the likelihood of confusion between the mark for which registration is sought and the earlier mark is eliminated during proceedings before the Community judicature for the purpose of ruling on an appeal to OHIM against the decision adjudicating on the opposition, the basis of the proceedings is eliminated and, consequently, they become devoid of purpose (orders in Case T-8/02 Zapf Creation v OHIM – Jesmar(Colette Zapf Creation Kombi Collection) [2003] ECR II-279 ; Sedonium ; Case T-120/03 Synopharm v OHIM – Pentafarma (DERMAZYN) [2004] ECR II-509; of 27 June 2005 in Case T-384/03 Reti Televisive Italiane v OHIM – Microarea(JUMPY) , not published in the ECR; and of 1 July 2005 in Case T-482/04 KOMSA v OHIM – Anders + Kern Präsentationssysteme @k , not published in the ECR). - 21 Therefore, this action has become devoid of purpose following the transfer of the earlier trade mark to the applicant. 22 The fact remains that the applicant has not put forward any argument such as to challenge that finding. 23 It has merely argued that the intervener supported the applicant's claims for annulment. However, that fact is irrelevant since it does not bear any relationship to the elimination of a possible likelihood of confusion regarding the commercial origin of the goods concerned as a result of the fact that the applicant is now the proprietor of both trade marks at issue. 24 It must therefore be declared, in accordance with Article 113 of the Rules of Procedure, that the action has become devoid of purpose and there is no need to adjudicate on it. 25 Article 87 of the Rules of Procedure provides that, where a case does not proceed to judgment, the costs shall be in the discretion of the Court of First Instance. 26 In the situation in the present case, the case is not proceeding to judgment due to an agreement concluded between the applicant and the intervener. Therefore, the applicant must be ordered to bear its own costs and to pay those incurred by the defendant. The intervener shall bear its own costs. On those grounds, (CFI) hereby orders: 1. There is no need to adjudicate on the action. 2. The applicant is ordered to bear its own costs and to pay those incurred by the defendant. 3. The intervener shall bear its own costs.” C-2: CFI: Developments in pending cases Vitality : T-294/06 - Office response filed (DE). Keywords: Absolute grounds for protection: distinctiveness. The action is directed against a decision of the 4 th Board of 9.8.2006 in R0746/2004-4 relating to CTM application 2835684, word Vitality, applied for a range of goods and services in Classes 29, 30, 32, 33 and 43. Most of the goods at issue are milk, milk products and other diary products, further tea products containing milk and non-alcoholic beverages. The application had been rejected under Article 7(1)(b) CTMR on the grounds that the term “vitality” conveys a positive meaning in relation to foodstuff in general and, thus, is devoid of distinctive character for such kind of goods. Piazza del Sole : T-265/06 - Office response filed. Keywords: Opposition: likelihood of confusion. The action is directed against a decision of the 2 nd Board of 5.7.2006 in R0235/2005-2 relating to CTM application 1518901, applied for in Classes 21, 29, 30 and 42. It had been opposed on the basis of 12 earlier rights, registered in Classes 21, 29, 30 and 42.
The opposition had been rejected on the grounds that the common element in the marks at issue (Piazza) is devoid of distinctive character since it is in use by many businesses within the Union, meant to indicate cafés, bars and restaurants. In consequence, the additional words and the figurative element in the CTM application are sufficient to make the marks dissimilar enough to avoid a likelihood of confusion. Rautaruukki : T-269/06 - Office response filed. Keywords: Absolute grounds for refusal/part of the Union, Article 7(2) CTMR – Article 7(2) CTMR: impact of subsequent (positive) national decision. The action has been directed against a decision of the 4 th Board of 20.7.2006 in R0048/2006-4 relating to CTM application 43608081, word Rautaruukkii, applied, inter alia, for a range of goods in Class 6 (common metals and their alloys etc.). The term for which acceptance as a trade mark in Class 6 had been sought means “iron works” in Finnish. It had been rejected for that reason, Article 7(1)(c) and (2) CTMR. A short period of time later, the national authorities accepted the sign on the basis of acquired distinctiveness. 1000 : T- 298/06 - Office response filed. Keywords: Absolute grounds for refusal: distinctiveness – Distinctiveness: of a sole numeral – Distinctiveness: acquired in the market place, Article 7(3) CTMR. The action is directed against a decision of the 4 th Board of 7.8.2006 In R0447/2006-4 relating to CTM application 4372264 (“1000”), applied for goods in Class 16. It had been dismissed on the basis of Article 7(1)(c) and (b) CTMR. The Board gave the following reasons: In relation to Article 7(1)(c) CTMR: “The numeral ‘1000' may serve in trade to designate the quantity of the information contained in, or the content of pamphlets, magazines and periodicals. The mere fact that the Applicant does not intend to use the sign descriptively, but only “symbolically” and without reference to the specific content of the publications claimed, is irrelevant for the purposes of applying Article 7(1)(c) CTMR because the conditions for the application of this provision are objective in nature. Therefore, the Applicant's marketing strategy in the Polish press market may be relevant only for the purposes of applying Article 7(3) CTMR. Article 12 CTMR, which provides for restrictions on the exercise of the right to a Community trade mark in trade, cannot be regarded as a basis for lowering the criteria for examining the absolute grounds for refusal.” In relation to Article 7(1)(b) CTMR: “Since the mark applied for is to be rejected under Article 7(1)(c) CTMR, it cannot be distinctive within the meaning of Article 7(1)(b) CTMR. The sign applied for will be perceived merely as factual information and not as an indication of their origin from a particular undertaking. Consumers may as well regard the sign applied for primarily as a vaunting of market success and not perceive it as an indication of origin from a particular undertaking.” The arguments relating to Article 7(3) CTMR have been dismissed. CMD-Clinic : T-241/06 - Office response filed (DE). Keywords: Absolute grounds for refusal: relevant public – Absolute grounds for refusal: distinctiveness. The action is directed against a decision of the 4 th Board of 6.7.2006 in R0372/2006-4 relating to CTM application 3661337, word CMD-Clinic, for a range of medicinal goods and respective services in Classes 5, 10 and 44. It had been rejected on the grounds that CMD is the short form of “Cranio-mandibuläre Dysfunktion” (Cranio-Mandibular Dysfunction), a technical medicinal term. It does not matter that “CMD” could also be understood as the short form of other terms in the medicinal sector. Referred: Postkantoor, ECJ C-363/99, paragraph 97; Tele Aid, CFI T-355/00, paragraph 28.
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)(b) Examination proceedings – absolute grounds for refusal – distinctiveness Decisions of the Fourth Board of Appeal of 20 December 2006 in Cases R 0833/2005-4 , R 0834/2005-4 , R 0835/2005-4 and R 0836/2005-4 (German) R 0833/2005-4 , R 0834/2005-4 , R 0835/2005-4 and R 0836/2005-4 “Steppnaht (Cosmos I, II, III, IV)”
Ex-parte – Article 44 Examination proceedings – absolute grounds for refusal – restriction of the list of goods and services – case law - interpretation Decisions of the First Board of Appeal of 19 January 2007 in Case R 0950/2006-1 (German) R 0950/2006-1 PILOT – (de) – the limitation of the list of goods is admissible in a negative way, if it is clear enough (interpretation of Postkantoor judgment par. 114). Inter-partes – Article 8(1)(b) Opposition proceedings – relative grounds for refusal – likelihood of confusion – dissimilar signs - visual dissimilarity – weak element Decision of the Fourth Board of Appeal of 8 January 2007 in Case R 182/2005 (German) R 0182/2005-4  (MEMPHIS PLATINUM) /  ( SHAPE OF BOX OF CIGARETTES) – (de) – there is no likelihood of confusion between an earlier 3-D mark for a shape of a cigarette box, with a weak degree of distinctiveness, and a 3-D mark for a cigarette box with a similar shape but in colour and containing the word elements ‘Memphis Platinum'. Inter-partes – Article 43(3) Opposition proceedings – relative grounds for refusal – proof of use – affidavit – Catalogue – failure to provide evidence Decision of the Second Board of Appeal of 22 January 2007 in Case R 791/2006 (English) R 0791/2006-2 DEITECH (fig.) / DEI-tex (fig.) – (en) – in order to prove genuine use of the German trade mark the opponent submitted copies of extracts from three brochures along with an affidavit. The opponent has not provided any proof of use from the United Kingdom or the Benelux. However, an affidavit does not prove, in itself, the extent of use. The content of declarations, even if ‘sworn or affirmed' in accordance with the law under which they are rendered, must be corroborated by invoices or other independent evidence external to the interested party. Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use. The brochures submitted establish neither the fact that they were distributed to a potential German or Austrian clientele, nor the extent of any distribution, nor the number of sales made. The appeal is dismissed.
Procedural issues Appeal proceedings – admissibility – new evidence – first time on appeal – case law – interpretation Decision of the Second Board of Appeal of 18 December 2006 in Case R 1458/2005 (English) R 1458/2005-2 Opposition proceedings – Substantiation of earlier right - Databank printout – Guidelines - Other decisions of the BoA Decision of the Second Board of Appeal of 22 January 2007 in Case R 0791/2006 (English) R 0791/2006-2 DEITECH (fig.) / DEI-tex (fig.) – (en) – the guidelines admit that, as a result of a number of decisions of the BoA, the Office has been obliged to accept the DEMAS database for German marks, even though it is a private database. In this respect the OD decision must be annulled as it considered the document as insufficient to substantiate the existence of the earlier right. Design decisions Article 6 CDR Invalidity proceedings – individual character – overall assessment - informed user – earlier national mark Decision of the Second Board of Appeal of 28 November 2006 in Case R 1310/2005 (Spanish) R 1310/2005-3
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E-Business Workshops in 2007 As a way of ensuring that the electronic tools offered by the Office are utilised to the maximum benefit of users, the OHIM will organize a series of e-business workshops throughout the year 2007, aimed mainly at paralegals, to familiarize them with the interfaces involved and to train them in their use. CTM and RCD e-filing tools will be of particular interest, as will other e-business tools in the fields of oppositions, searches and MYPAGE. The first of five workshops foreseen will take place in the OHIM's Alicante headquarters on March 23 rd in Spanish and in the Office's premises in Brussels on March 28 th in English. The amount of attendees is limited to 25 and 50 participants respectively. Anyone who may be interested in participating in either of these events can contact the Office on e-business@oami.europa.eu , indicating the name and job title of the proposed participant, and the date and place of the workshop they wish to attend. The OHIM E-Business Roundup (2007)
State of play of future projects:
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Technical Cooperation – Promotion and Information Services The activities to be carried out were decided upon in October 2005 and included:
The central industrial property offices of the EU member states were invited to submit to the OHIM their proposals on how they would implement the provision of these services. The OHIM would then set up an ad hoc evaluation committee to analyse each proposal to decide whether or not it was in accordance with the eligibility criteria established under the terms of the technical cooperation agreements reached with the national offices back in 2005. In 2006, a total of 16 offices eventually presented to the OHIM their proposals on how these activities would be structured, 13 of which were finally approved. In line with these cooperation agreements, the national offices were required to draw up a final report upon completion of the actions undertaken, outlining exactly what promotional events or activities had taken place, how and when they were implemented and the costs involved. 9 offices have since fulfilled this obligation and the OHIM is currently evaluating each of the final reports received. For the activities foreseen in this field for the year 2007, invitations to participate were sent out in September 2006 and 16 offices have since replied with proposals, some for the second year running, on how they intend to promote the CTM & RCD systems within their countries. The OHIM has already evaluated and accepted the proposals of 13 of these national offices, and a further 3 are pending approval. As was the case for the activities carried out in 2006, the OHIM has earmarked a maximum of €100,000 for each national office, ascending to €2,500,000 in 2007 following the accession of Bulgaria and Romania to the European Union this year. These promotion and information services will be subject to further discussion at the upcoming Technical Cooperation Liaison meeting to be held in Alicante at the beginning of March this year. Other ongoing related activities in the fields of training and IT will also be discussed as will all other aspects of how the technical cooperation programme is progressing.
Geographical Scope of CTMs
User Satisfaction Survey 2006 This information can be consulted at http://oami.europa.eu/en/office/survey.htm#uss2006 and will be complemented in two months time by an official response from the Office as to the actions that will be taken as a result of this survey.
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, 
, 
and 
– (de) – the Board confirmed the examiner decision in the four cases. The pocket stitching is refused as non-distinctive for clothing, especially trousers. 
(OMI'S) / OMA, 
(OMA MARGARINE) – (en) – i n its grounds of appeal, the opponent at no point challenges the correctness of the Opposition Division's assessment of the evidence of reputation reached on the basis of the documents and evidence available to it at the material time. Instead, the opponent bases its appeal on documentation that it submits for the first time before the Board and, which it alleges, supplements that previously filed. After consideration of the Hooligan and Hi-Focus judgments; the application of Advocate General Sharpston's opinion in Arcol and Hipoviton judgment (Art. 74(2)) as well as Rule 50(1) CTMIR, the BoA should exercise its discretion to accept further evidence on appeal where ‘new factors emerge' or where there was some factual or legal difficulty that made it impossible for the appellant to submit such evidence during the opposition proceedings. In this case, the opponent has not claimed that new factors have emerged or that there was some factual or legal difficulty that made it impossible for it to submit such evidence during the opposition proceedings. The Board is of the opinion that there was no such flaw in the contested decision. Accordingly, this new evidence is inadmissible as it was filed after the time-limit specified by the OD within which the opponent could and should have filed it. In the light of the foregoing, the Board finds the evidence on reputation submitted on appeal to be inadmissible. 
(biscuits) / 
(biscuits) – (es) – the contested design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced by the earlier design, in this case the “Spanish trade mark” biscuit, made available to the public in 1996. The overall impression produced by the design has to be assessed from the point of view of the ‘informed user'. The ‘user' is a person who ordinarily uses a product and the product is, according to the registration, a biscuit. ‘Informed' suggests that this person has basic information about this product. Therefore, the informed user distinguishes, in any type of biscuit, between the technical properties of the product, its ingredients and the purely ornamental elements. The Board considers that the Invalidity Division correctly limited the comparison to the surface of the two biscuits (the biscuit in the design and the biscuit in the earlier mark). It was not appropriate to extend the comparison to the aforesaid aspects of the product which depend on its properties (sandwich configuration, colours) or which are commonplace (such as the round shape of the biscuit). The Board therefore concludes that the overall impression produced by the design biscuit is the result of the striking ornamentation on its surface and that this impression is totally different from that produced on an informed user by the biscuit represented in the earlier mark. Accordingly, the latter biscuit does not deprive the contested design of individual character.