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OHIM President Wubbo de Boer speaks to Reg Rea about the challenges ahead for the Office, and the role the Internet is playing as a driver of change. What are your main priorities for the year ahead? Has OHIM's published Service Charter helped in this respect? What are the main drivers of change? Is OHIM's annual User Satisfaction Survey (see article) a valuable management tool? There have been substantial improvements in the time taken to register trade marks and designs. Do you feel that we are approaching an area of diminishing returns?
With regards to CTMs the improvements this year will be fairly spectacular also, once the impact of the decision to make national searches optional feeds through in the second half of the year. Nevertheless, I would not accept that we have done all we can on speed. If you look at the example of New Zealand , they register trade marks in five days. The systems are different and that would be impossible for us under our opposition rules, but substantial improvement is still possible by intelligently improving our processes and giving users better information to help them prepare their files better. That is why one of our strategic goals is to make the internal databases used by our examiners publicly available in order to empower users by making them completely aware of how we to do things and what tools we use. Is there, as some claim, an inevitable trade off between speed and quality? OHIM is just one of a number of major international IP offices that users deal with. Should we be doing more to help reduce differences in practices between offices? We need to start with the realisation that the international legal framework will continue to evolve but it will certainly never be able to overcome differences in office practices. I am very much in favour of additional activities that can only be undertaken between offices if they so wish. I think that these efforts do not necessarily have as their only useful outcome the harmonization of all practices. That may be putting the bar too high. I think that one thing we can and should do is make information about practices available to the users in an easily accessible way. A good example is what we are trying to do with the Americans and the Japanese on classification – the trilateral classification database. Perhaps in the long run, an even more powerful example is what we are doing with member states to try to link the registries and classification databases of the various offices in a user-friendly way. What can OHIM do, in a practical way, to facilitate these exchanges?
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The James Nurton interview with Nadine Jacobson of Fross Zelnick Lehrman & Zissu in New York This month James speaks to Nadine Jacobson of Fross Zelnick Lehrman & Zissu in New York . She compares OHIM and USPTO practice and discusses the merits of the Madrid system from a US perspective. How did you become interested in trade marks? What do you enjoy about trade marks? What changes have you seen during your career? So in the past 15 years many countries have completely overhauled their laws and there have been conceptual changes. Laws have to carefully balance the needs of the public, recognising that government has an active role to play in that, with a more market-driven approach, which recognises that trade mark owners are best placed to protect their marks. For example, the EU has gone a long way towards letting trade mark owners police things, while the US still tries to balance competing interests by keeping the register open while protecting the general public interest and not letting descriptive marks get registered. Today, people have more options than they used to, especially now that the Madrid Protocol will soon take precedent over the Agreement in most respects. That is a huge advantage. We represent many foreign companies investing in the US and many US clients have European affiliates where we work with local counsel, so there is a lot more cross-fertilisation. What are the biggest differences between different markets? The European Court of Justice originally went for a lenient standard, in BabyDry, and now the courts are going to the opposite extreme. If you look at the statistics, you can see the courts are rarely overturning examiners' decisions. I think they are far too conservative in that regard. Another issue is acquired distinctiveness. In the US, if you have five years of commercial use, you can make a case for acquired distinctiveness – as long as it is serious commercial use. In Europe you have to show acquired distinctiveness in several markets. But I think if you have big business in the UK, for example, but only small business in some other countries, you shouldn't be disadvantaged by that. Overall, in the US it is much more of a dialogue. The examiners can be tough but it is easier to have a give-and-take with them. At OHIM, it is an examination not a dialogue. What about the practical aspects? The documents for refusals and pleadings have been made available electronically but they are not that easy to find or use. They have a way to go there to make the system more transparent. Do you think there needs to be more harmonization? Nice has to be overhauled. Sometimes it can be a little formalistic; you need to see the commercial reality. Class 9 is overburdened and Class 5 includes pharmaceuticals and agrochemicals, which does not reflect commercial reality. What is the best strategy for Madrid? The primary disincentive to using Madrid is how complicated the rules and procedures are. There is a lot of jargon and confusion in the interplay between the Agreement and the Protocol, as well as the trilingual system. For example, there is no way to request English as the official language for an IR issued before 2004. Things need to be updated and I believe WIPO are working on that, and they are very open to suggestions. Sometimes it is easier not to use the system. I've had people call me in tears when they've made a mistake, have been sent six different bits of paper and don't know what they all mean. Also, I don't counsel US clients to select the CTM through Madrid, as you get hit with all the fees up front and your coverage is more limited. Instead, if you file a CTM directly, you're getting coverage in 27 countries for a pretty good price: it's easier and good value. What other changes do you expect? It is already becoming harder and harder to check marks for use, and to clear marks, especially in the CTM system. There are a lot more consent negotiations and we spend more and more time searching. In the EU, you can be attacked on prior rights. However, in the US, you can show use and are examined for prior rights, so it's a more meaningful right. It's vetted in a more significant way and fewer marks make it on to the register in the US. I think Europe will have to introduce a quick and inexpensive administrative procedure to cancel marks for non-use rather than a court action. Then people would have to show some use or get out of the way. Having a registration in Europe is almost meaningless now – it's just your priority over another's. Another thing to look at is having three classes for the price of one, which allows applicants to block up two classes that may be of no serious commercial interest to them. For example, cosmetics companies filing in the pharmaceuticals class creates unnecessary clutter in Class 5. What was the first application you filed? What are the most unusual marks you have filed? It's getting a lot easier to register shapes as trade marks now, though it is more challenging in the EU than in the US. However, it is easier to get design protection in the EU, though I think perhaps more thorough examination or better requirements for drawings should be required for such an important right.
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| Community Trade Mark | Company fails to prove “genuine use” in invalidity case Community trade mark: 3 200 516 The invalidity applicant gave evidence that the designation “mediform-cz” had been used as a trade and company name in the procurement of German patients for surgery in the Czech Republic. The website www.mediform-cz.za.ms was created on 24/04/2003, and the applicant contended that since their sign and the contested CTM were almost identical, and the services provided were identical or at least very similar to business services, there was a risk of confusion among German consumers. The applicant's website and catalogue were in German, the intent of the business being to provide trans-national services instead of mere local services. It was also alleged that the CTM proprietor was aware of prior use since the search for identical or similar signs on the internet may be regarded as part of due diligence of an applicant in preparing the application for a CTM and the CTM owner might have come across “mediform-cz” on the Internet, which would constitute bad faith. The evidence put forward for proving the existence of a prior right included an application dated 26/05/2003 for the registration of the company name “mediform-cz” at the Trade Register of a German court and a domain-listing showing that the name “mediform-cz” was used on the Internet before 27/05/2003 – the date on which the application for the disputed CTM was filed. The CTM proprietor, claimed that the applicant's request had to be denied as the conditions of Article 52(1)(c) in combination with 8(4) CTMR were not fulfilled. The proprietor stressed that use must be genuine and the mere evidence of registration of a domain name was not sufficient to prove this. Furthermore the proprietor put forward that the earlier rights invoked did not constitute rights of more that mere local significance. The proprietor denied that the application of the CTM was made in bad faith and said that this allegation should be rejected in the absence of any supporting evidence. The Cancellation Division found that the applicant had applied for a company name the day before the filing of the disputed CTM, and the business was therefore at an early stage. The Internet domain, “mediform-cz.de”, was owned by the applicant and the webpage was updated on 10/05/2003 , indicating that a website existed before the CTM filing date. The Office found that the applicant had made an attempt to establish a business, however, this did not prove that in fact the earlier business identifiers (or the earlier rights) had been genuinely used on the market. From the mere existence of a webpage it was not possible to infer any use and there was no indication of the number of hits before 27/05/2003 on the applicant's main web page. The Cancellation Division ruled that the application of the German company name one day before the filing date of the contested registration was not sufficient to prove genuine use, the latter meaning effective use on the market. An application for a company name constituted an administrative act whereby the applicant started up a business. In any event it was not possible for the Cancellation Division to establish that more than a mere local use had taken place in the present case. Also rejecting the claim for “bad faith”, the Cancellation Division said that the applicant had only indicated that the proprietor was aware of prior use due to the presence of mediform-cz on the Internet. The applicant's argument that the search for identical or similar signs on the Internet may be regarded as part of due diligence of an applicant in preparing an application for a CTM was insufficient to substantiate the request based on Article 51(1)(b) CTMR. Bad faith could not be presumed but must be properly argued and sufficiently supported by evidence.
The first Swedish CTMs were filed in 1997, and interest has remained high, with more than 1 840 filed last year. A total of more than 12 600 Swedish CTMs have been filed to date – with over 600 this year so far.
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Registered Community Design |
What exactly is design prior art? In the case concerned, Green Lane Products Limited vs. PMS International Group Limited, both parties were dealing with plastic balls2. In 2002, PMS started selling spiky plastic balls in various territories, including the EU. The balls where initially marketed as massage balls. Green Lane, which sold similar balls as laundry balls had registered four designs of the balls as RCDs, with an application date of 23 August 2004 . All four designs were registered under the Locarno class-subclass 07.05 specifying that the classification of the products was ‘flatirons and washing, cleaning and drying equipment'3. In 2006, PMS decided to sell its balls (of exactly the same design as its massage balls) for other purposes, too. One of these purposes was as a laundry ball. Green Lane tried to prohibit PMS from selling its product for anything other than use as massage balls. Green Lane accepted that sales as massage balls were protected by Art. 22 CDR (right of prior use). However, such sales were only protected to the extent provided by that right. PMS did not agree and argued that the Green Lane's RCDs were invalid by reason of the prior sale of their massage balls. The design registrations of Green Lane were, therefore, not “new” within the meaning of Art. 5 CDR or did not have “individual character” within the meaning of Art.6 CDR. Green Lane argued “that a design may be new or have individual character even if it is fact old: Art. 7 says that a prior design is not taken to be made available to the public, even if it in reality was, where these events (i.e. prior use in trade) could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating in the Community. The ‘sector concerned' means the sector for which the design was registered, not the sector of the alleged prior art.” The present case is an appeal from a judgment of Lewison J given on 19th July 2007, [2007] EWHC 1712 (Pat). He was not convinced by the arguments of Green Lane and ruled that: 1. “The sector concerned” within the meaning of Article 7 of the Regulation is the sector that consists of or includes the sector of the alleged prior art. 2. “The circles specialised in the sector concerned, operating within the Community” within the meaning of Article 7 of the Regulation are capable of consisting of all individuals who conduct trade in relation to products in the sector concerned, including those who design, make, advertise, market, distribute and sell such products in the course of trade in the Community. Subsequently, Green Lane appealed to the Royal Courts of Justice. In his judgement of 23/04/08 Lord Justice Jacob stated, concerning the question whether a design only disclosed for a determinate sector could be novel for another sector, the following: “This (Article 5 CDR) is a clear incorporation of a key concept and well-known language of patent law defining the prior art which may be used to attack validity of a patent. An invention is “new” if it is not part of the “state of the art”. The “state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way before [the relevant date]” (see Art.54 of the European Patent Convention).”In other words, a design was “made available to the public” or not, but it was not possible to disclose it only for one determinate sector. Concerning the second question, the Court had to decide about the scope of protection. Was it possible to invalidate another design, even if it was not of a registered Locarno class of the RCD? Lord Justice Jacob reasoned that “it is particularly important to realise that the scope of protection covers any use of the design or article, whatever its intended purpose. The scope provision, unlike for instance the previous law of the UK (s.7 of the Registered Designs Act 1949) does not limit infringement to “articles for which the design is registered” or anything like that. So if you register a design for a car you can stop use of the design for a brooch or a cake or a toy, or if you register a textile design you can stop its use on wallpaper, a shirt or a plate.” As reason for the wide scope of protection he analysed the character of Article 36 CDR. Furthermore, the judge explained that Art. 36(2) was not “intended to affect legal rights at all, whether by way of the definition of scope of protection, or validity, which in a real sense is also part of scope of protection or otherwise”. Finally, the judge analysed the conditions for invalidity and came to the conclusion that Article 25 CDR sets out the possible grounds of invalidity and says these are the only such grounds. The registration of the design in the same class as the contested design is not a requirement of Article 25 CDR. Thus a RCD is not limited by the classes registered for and can invalidate every other design if the requests of Article 25 CDR are fulfilled. The present judgement of the Royal Courts of Justice gives a clear definition of the understanding “made available to the public” in the meaning of Article 7 CDR. The judgement points out that a disclosure of a design to only one sector of the Locarno class system is not possible. Furthermore, it highlights the wide scope protection of an RCD, which is not limited by the registered Locarno classes. 1Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs
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E-Business Users Group Meeting. The E-Business Users Group met at OHIM's headquarters On 11 April, to discuss e-business issues and collect useful feedback and comments in order to develop services that better meet users' needs. The E-Business Users Group meetings are organised twice a year and the previous one took place on 27 June 2007. The discussions focused on the state of play of current e-business tools and in particular e-filing CTM, RCD, and OHIM's efforts to improve those tools. The 15 participants had the opportunity to give their feedback on the performance of e-business tools. OHIM gave detailed demonstrations of the prototypes of key new online facilities: e-filing CTM and RCD and the new website. Participants were very interested in OHIM's approach and took the opportunity to make comments and suggestions that will be taken into account by the Office. Finally, the status of projects such as the new electronic communication, CTM watch and Euroclass was presented. Further details are available in presentations given during the meeting, and minutes will be published in the near future at: http://oami.europa.eu/en/office/events/default.htm.
What happens after clicking “submit” when e-filing?
When users click “submit”, the e-filing system processes the data entered in the form and validates it. The CTM application is therefore only really submitted when the confirmation screen appears. This screen provides the CTM application number to be quoted in any further communication with the Office. In the event that the confirmation screen does not appear, please contact the OHIM e-business hotline at e-businesshelp@oami.europa.eu. Following this confirmation, the data is imported automatically to OHIM´s systems. The bibliographic data are stored in the OHIM database and copies of the documents are archived in the electronic document management system. In principle, there is no human intervention. However, in the case of a new applicant (if no ID number is indicated), a verification is done to avoid duplication of the applicant in the OHIM database; if it is confirmed to be a new applicant the data is keyed in. When this process is completed, a receipt is issued and sent to the applicant or their representative. Then, the CTM application proceeds to the examination phase. After the CTM application is entered in the OHIM database, the CTM application details will be published the following day in CTM-ONLINE, providing the applicant an option to monitor the status of their application in the registration process. Furthermore, the CTM application form as well as the receipt will be available in Online Access to CTM files in a restricted manner - only accessible to the applicant or representative via their MyPage account. More information on the functioning of Online Access to CTM files is available at
http://oami.europa.eu/en/office/newsletter/08004.htm#EB1
OHIM e-business roundup (2008)
 State of play of future projects:
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User satisfaction rises The annual survey of users, carried out for the third year running by GfK Emer, which is part the fifth largest market research group in the world, measures the perceived quality of service and the contribution of different activities to “global satisfaction”. The survey also establishes priorities for improvement and assesses the effectiveness of action taken over the years. All users who had professional dealings with OHIM during 2007 were invited to participate in the survey, carried out at the beginning of this year, and a record number of more than 1 200 participants took part. The survey carried includes a series of questions that are used to draw up a User Satisfaction Index (USI). It shows that in 2007 satisfaction with the Office, as measured by the index, increased significantly, by just under 4% for agents and almost 6% for proprietors1. The full results of the study are available on the OHIM website2.
The survey indicated that users put a high importance on the introduction by OHIM of challenging standards for a range of issues including:
In most cases users also expressed increased levels of satisfaction with OHIM's performance against these specific standards. Overall, the 2007 survey shows a considerable increase in satisfaction in the three main areas covered – “global image”, “the core business”, “information and communication”. With regards to the core business, satisfaction with the Community trade mark (CTM), Community design (RCD) and Register areas increased by around 10%, and for proprietors the evaluation of improvements in the Register was even higher. There was an improvement in user satisfaction for agents in all areas of the CTM - applications, oppositions and invalidity. Proprietors also found there had been improvements in most areas, and in all cases satisfaction was at or above the prescribed level of 55%, calculated by the consultants as the minimum standard OHIM needed to aim for.
Looking at the Community design, both agents and proprietors expressed a very high level of satisfaction in all areas, indicating that the RCD is one of the strengths of the Office.
While satisfaction rose overall, the survey indicated some concerns about the speed and reliability of OHIM's e-Business tools, though “ease of use” and “security” were rated more highly. Among proprietors, the use of electronic filing generally was on the increase. The survey also showed that the number of complaints had decreased, while the Office's efficiency in resolving them has improved. There was also an improvement in the perceived “accessibility” of Office employees and an overall perception that OHIM was functioning better compared with a year ago. __________________________ 1All figures rounded.
Overview of Boards of Appeal decisions
Head of the Boards' Documentation and Support Service Alexandra Poch said: “The first overview was very well received by users. We believe that it is particularly of interest to those users who wish to be informed about developments in the Boards' trade mark decision practice. We now plan to publish overviews annually.” The 2007 overview can be found at http://oami.europa.eu/en/office/aspects/pdf/BoAcaseLaw2007_en.pdf. The decisions of the Boards of Appeal can be found in the database of Boards of Appeal cases at http://oami.europa.eu/search/legaldocs/la/EN_boa_index.cfm.
How to get certified copies from OHIM The procedure for getting copies is very straightforward. The applicant fills in the appropriate form, “Application for an Inspection of File” (1) available at http://oami.europa.eu/pdf/forms/inspection_en.pdf, and pays the fee. Using the information in the application form, OHIM prints out the desired number of copies from its electronic document store, certifies them and sends them to the customer. One point worth remembering is that applicants should not send copies of the documents that they wish to have certified, as OHIM always uses the master document in its electronic document store to generate a certified copy. Copies are sometimes sent with the form by German representatives, for example, as this is a requirement when ordering certified copies from the Bundespatentgericht. When dealing with OHIM, sending copies of the document with the request is a waste of resources as they are never used in the process of producing either certified or uncertified copies.
* Statistical data for the month in course is not definitive. Figures may vary slightly after consolidation.
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Latest trade mark and design news from Luxembourg
Ferro/Ferrero : C-108/07-P – Judgment of 17 April 2008 (appeal from Case T-310/04; both judgments only in FR; action allowed; law of the case). Keywords: Opposition: proof of use – Opposition: likelihood of confusion (LOC) – LOC: comparison of goods – LOC: comparison of marks – LOC: enhanced degree of recognition in the market place. The case is an appeal from a judgment of the CFI of 15.12.2006 in Case T-310/04 relating to a decision of the 4th Board of 17.3.2004 in R 0540/2002-4 by which it had rejected an opposition, lodged by Ferrero Deutschland, against CTM application “Ferro”, word mark. The said sign had been applied for for savoury biscuits in Class 30. The invoked earlier mark Ferrero is registered for a range of goods in Classes 5, 29, 30, 32 and 33. The Opposition Division had rejected the opposition on the grounds of lack of LOC. As regards Class 30 goods, the material filed by Ferrero had revealed genuine use only as concerns certain types of products, namely the ones marketed under the marks Raffaelo, Mon Chérie and Giotto. The said products are only slightly similar to the challenged goods. The conflicting marks are not very similar and given that no enhanced recognition of the invoked earlier mark had been demonstrated, it was held that there was, overall, no sufficient basis for concluding LOC. The 4th Board had confirmed these findings and so had the CFI. The 1st Chamber of the ECJ (Jann; Tizzano; Borg Barthet; Ilesic, rapporteur; Levits) revoked both the CFI judgment and the decision of the 4th Board, and took a decision based on Article 61(1) of the ECJ Statute (finding for the existence of LOC). The ECJ took a different view as regards the value of the filed material in order to show enhanced recognition and eventually held that the CFI had distorted the facts in relation to the overall assessment of LOC in that it had not properly weighed the material and, thus, had not come to the appropriate conclusion.
A-2: ECJ Developments in pending cases Manufacturing Score Card : C-17/08-P – Appeal from T-459/05; response filed (DE). Keywords: Absolute grounds for refusal: distinctiveness. The case is an appeal from a decision of the CFI of 8.11.2007 in Case T-459/05 which had initially related to a decision of the 2nd Board of 19.10.2005. The Board had confirmed rejection of CTM application “manufacturing score card” (word mark), applied for for a range of goods and services in Classes 9, 35 and 42, on the grounds that the English-speaking public would understand the sign as describing the nature of the product as an electronic score card on which data can be stored relating to monitoring, for instance, production processes, or any other business-related data.
AMS Advanced Medical Service : C-565/07-P – Appeal from T-425/03; response filed (DE). Keywords: Opposition: likelihood of confusion (LOC) – Opposition: proof of use – Proof of use: point in time for request. The case is an appeal from a decision of the CFI of 18.10.2007 in Case T-425/03 relating to CTM application “AMS” (figurative mark) which had been applied for in Classes 5, 10 and 42.
It had been opposed on the basis of “AMS”, word mark, registered in Class 10. The opposition had been partially allowed. The CTM applicant had requested proof of use of the invoked earlier right at the appeal stage, but this request had been rejected by the Board. The CFI had confirmed these findings on the grounds that proof of use must be requested before the Opposition Division since that question is a “preliminary issue” in relation to the decision on the notice of opposition on substance (paragraphs 106 and 107 of Case T-425/03).
B: European Court of Justice: Preliminary Rulings Adidas-II or Marca Mode-II : C-102/07 - Judgment of 10 April 2008 . Keywords: TM Directive: infringement, Articles 5(1)(b), 5(2) and 6(1)(b) – Issue of ‘three-stripes v two-stripes' – Infringement and argument of “ Freihaltebedürfnis” (availability of the sign at issue / need to be kept free for the trade). The case is a reference under Article 234 EC from the Hoge Raad der Nederlanden of February 2007. It concerns another Adidas case in which Adidas seeks to defend its 'three-stripe' brand against a sign composed of two stripes. (a) Background of the case Adidas AG is the proprietor of figurative trade marks composed of three vertical, parallel stripes of equal width which are featured on the sides of sports and leisure garments in a colour which contrasts with the basic colour of those garments. Adidas Benelux BV is the holder of an exclusive licence for the Benelux countries granted by Adidas AG. Marca Mode, C&A, H&M and Vendex are competing undertakings operating in the textile trade. Having found that some of those competitors had begun to market sports and leisure garments featuring two parallel stripes, the colour of which contrasts with the basic colour of those garments, Adidas AG and Adidas Benelux BV (together, ‘Adidas') brought interlocutory proceedings before the Rechtbank te Breda (the local court of Breda) against H&M and an action on the merits against Marca Mode and C&A to prohibit the use by those undertakings of any sign consisting of the three-stripe logo registered by Adidas or of a motif similar to it, such as the motif with two parallel stripes used by those undertakings. Marca Mode, C&A, H&M and Vendex have, for their part, also brought applications before this Rechtbank for a declaration that they are free to place two stripes on their sports and leisure garments for decorative purposes. By judgment of 2 October 1997, the president of the Rechtbank te Breda made an interlocutory order against H&M to refrain from using in the Benelux the sign consisting of the three-stripe logo registered by Adidas or any other sign similar to it, such as the two-stripe motif used by H&M. By an interlocutory judgment of 13 October 1998, the same court held that the trade marks owned by Adidas had been infringed. Appeals against the judgments of 2 October 1997 and 13 October 1998 were brought before the Gerechtshof te 's-Hertogenbosch (regional appeal court of 's-Hertogenbosch). By judgment of 29 March 2005, this appeal court set aside the judgments of 2 October 1997 and 13 October 1998 and, giving a ruling on the dispute, rejected both the application of Adidas and those of Marca Mode, C&A, H&M and Vendex on the grounds, first, that the trade marks owned by Adidas had not been infringed and, secondly, that the scope of the applications made by Marca Mode, C&A, H&M and Vendex was too general. It stated that a three-stripe motif such as that registered by Adidas is not very distinctive per se but that, owing to the investment in advertising by Adidas, the marks it owned had acquired considerable distinctive character and become well known. Those marks therefore enjoyed wide protection so far as concerns the three-stripe logo. However, given that stripes and simple stripe logos are, generally, signs which must remain available and do not therefore lend themselves to exclusive rights, the marks owned by Adidas cannot afford any protection against the use of two-stripe motifs. (b) The questions put to the ECJ Having appealed on a point of law to the Hoge Raad der Nederlanden (Supreme Court of the Netherlands), Adidas took the view that, in the scheme of the system set up by the Directive, the requirement of availability must be taken into account only when the grounds for refusal or invalidity provided for in Article 3 of the Directive apply. It had been in those circumstances that the Hoge Raad der Nederlanden decided to stay the proceedings and refer the following questions to the Court for a preliminary ruling: “(1.) In the determination of the extent to which protection should be given to a trade mark formed by a sign which does not in itself have any distinctive character or by a designation which corresponds to the description in Article 3(1)(c) of the Directive … but which has become a trade mark through the process of becoming customary (“inburgering”) and has been registered, should account be taken of the general interest in ensuring that the availability of given signs is not unduly restricted for other traders offering the goods or services concerned (“Freihaltebedürfnis”)? (2.) If the answer to Question 1 is in the affirmative: does it make any difference whether the signs which are referred to therein and which are to be held available are seen by the relevant public as being signs used to distinguish goods or merely to embellish them? (3.) If the answer to Question 1 is in the affirmative: does it, further, make any difference whether the sign contested by the holder of a trade mark is devoid of distinctive character, within the terms of Article 3(1)(b) of the Directive … or contains a designation, within the terms of Article 3(1)(c) of the Directive?” (c) The answer of the ECJ The 5th Chamber of the ECJ (Jann; Tizzano; Borg Barthet; Ilesic, rapporteur; Levits) held: ”First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the requirement of availability cannot be taken into account in the assessment of the scope of the exclusive rights of the proprietor of a trade mark, except in so far as the limitation of the effects of the trade mark defined in Article 6(1)(b) of the Directive applies.” (d) Extracts (23) As the Court has previously held, that requirement of availability is the reason underlying certain grounds for refusal of registration set out in Article 3 of the Directive (see to that effect, in particular, Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 25; Joined Cases C-53/01 to 55/01 Linde and Others [2003] ECR I-3161, paragraph 73; and Case C-104/01 Libertel [2003] ECR I-3793, paragraph 53). (24) Further, Article 12(2)(a) of the Directive provides that a trade mark is liable to revocation if, after the date on which it was registered, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered. By that provision, the Community legislature balanced the interests of the trade mark proprietor against those of his competitors in the availability of signs (see Case C-145/05 Levi Strauss [2006] ECR I-3703, paragraph 19). (25) Accordingly, if it is established that the requirement of availability plays an important role in the framework of Articles 3 and 12 of the Directive, it is clear that the present reference for a preliminary ruling falls outside that framework since it raises the question of whether the requirement of availability constitutes a criterion, after registration of a trade mark, for the purposes of defining the scope of the exclusive rights of the proprietor of the mark. Marca Mode, C&A, H&M and Vendex do not seek to obtain a declaration of invalidity within the meaning of Article 3 or revocation within the meaning of Article 12, but plead the need for the availability of stripe motifs other than that registered by Adidas in order to argue their right to use those motifs without the consent of the latter . (26) When a third party relies on the requirement of availability to argue its right to use a sign other than that registered by the trade mark proprietor, the relevance of such an argument cannot be assessed under Articles 3 and 12 of the Directive, but must be examined in the light of Article 5 of the Directive, which concerns the protection of the registered mark against use by third parties, as well as of Article 6(1)(b) of the Directive, if the sign in question comes within the scope of that provision.” (29) According to the 10th recital in the preamble to the Directive, the appreciation of such likelihood ‘depends on numerous elements and, in particular, on the recognition of the trade mark on the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified'. The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Case C-251/95 SABEL [1997] ECR I-6191, paragraph 22; Case C-425/98 Marca Mode [2000] ECR I-4861, paragraph 40; and Medion, paragraph 27). (30) The fact that there is a need for the sign to be available for other economic operators cannot be one of those relevant factors. As is apparent form the wording of Article 5(1)(b) of the Directive and the case-law cited, the answer to the question as to whether there is a likelihood of confusion must be based on the perception by the public of the goods covered by the mark of the proprietor on the one hand and the goods covered by the sign used by the third party on the other . (31) Moreover, signs which must, generally, remain available for all economic operators are likely to be used abusively with a view to creating confusion in the mind of the consumer. If, in such a context, the third party could rely on the requirement of availability to use a sign which is nevertheless similar to the trade mark freely without the proprietor of the latter being able to oppose that use by pleading likelihood of confusion, the effective application of Article 5(1) of the Directive would be undermined. (32) That consideration applies in particular to stripe motifs. As Adidas recognised in the introduction to its observations, stripe motifs as such are available and may therefore be placed in a vast number of ways on sports and leisure garments by all operators. Nonetheless, the competitors of Adidas cannot be authorised to infringe the three-stripe logo registered by Adidas by placing on the sports and leisure garments marketed by them stripe motifs which are so similar to that registered by Adidas that there is a likelihood of confusion in the mind of the public. (33) It is for the national court to determine whether such a likelihood of confusion exists. For the purpose of that determination, it is useful to examine the national court's question seeking to ascertain whether it is important to determine whether the public perceives the sign used by the third party as mere decoration of the goods in question. (34) In that respect, it should be pointed out that the public's perception that a sign is a decoration cannot constitute a restriction on the protection conferred by Article 5(1)(b) of the Directive when, despite its decorative nature, that sign is so similar to the registered trade mark that the relevant public is likely to perceive that the goods come from the same undertaking or, as the case may be, from economically-linked undertakings. (35) In the present case, it must therefore be determined whether the average consumer, when he sees sports or leisure garments featuring stripe motifs in the same places and with the same characteristics as the stripes logo registered by Adidas, except for the fact that they consist of two rather than three stripes, may be mistaken as to the origin of those goods, believing that they are marketed by Adidas AG, Adidas Benelux BV or an undertaking linked economically to those undertakings. (36) As is clear from the 10th recital in the Directive, that appreciation depends not solely on the degree of similarity between the trade mark and the sign, but also on the ease with which the sign may be associated with the mark having regard, in particular, to the recognition of the latter on the market. The more the mark is well known, the greater the number of operators who will want to use similar signs. The presence on the market of a large quantity of goods covered by similar signs might adversely affect the trade mark in so far as it could reduce the distinctive character of the mark and jeopardise its essential function, which is to ensure that consumers know where the goods concerned come from.” (Interpretation of Article 5(2) of the Directive) “(37) It is not disputed by the parties in the main proceedings that the three-stripe logo registered by Adidas is a trade mark with a reputation. Moreover, it is common ground that the legislation applicable in the Netherlands includes the rule referred to in Article 5(2) of the Directive. Moreover, the Court has stated that Article 5(2) of the Directive also applies in respect of goods and services identical with or similar to those covered by the registered mark (see, to that effect, Case C-292/00 Davidoff [2003] ECR I-389, paragraph 30, and Case C-408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I-12537, paragraphs 18 to 22). (38) The three-stripe logo registered by Adidas thus benefits from both the protection conferred by Article 5(1) of the Directive and the extended protection granted by Article 5(2) of the Directive (see, by analogy, Davidoff, paragraphs 18 and 19). (39) In those circumstances, the question referred for a preliminary ruling must also be answered from the point of view of the latter provision, which specifically relates to the protection of trade marks with a reputation.” “(43) It is clear that the requirement of availability is extraneous both to the assessment of the degree of similarity between the mark with a reputation and the sign used by the third party and to the link which may be made by the relevant public between that mark and the sign. It cannot therefore constitute a relevant factor for determining whether the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.” (Interpretation of Article 6(1)(b) of the Directive) “(44) Article 6(1)(b) of the Directive provides that the proprietor of a trade mark cannot prohibit a third party from using, in the course of trade, indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services, provided he uses them in accordance with honest practices in industrial or commercial matters. (45) By thus limiting the effects of the exclusive rights of a trade mark proprietor, Article 6 of the Directive seeks to reconcile the fundamental interests of trade mark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights are able to fulfill their essential role in the system of undistorted competition which the EC Treaty seeks to establish and maintain (see Case C-228/03 Gillette Company and Gillette Group Finland [2005] ECR I-2337, paragraph 29, and the case-law cited). (46) Specifically, Article 6(1)(b) of the Directive seeks to ensure that all economic operators have the opportunity to use descriptive indications. As noted by the Advocate General in points 75 and 78 of his Opinion, that provision therefore gives expression to the requirement of availability. (47) However, the requirement of availability cannot in any circumstances constitute an independent restriction of the effects of the trade mark in addition to those expressly provided for in Article 6(1)(b) of the Directive. It must be stated in that regard that, in order for a third party to be able to plead the limitations of the effects of the trade mark in Article 6(1)(b) of the Directive and rely in that respect on the requirement of availability underlying that provision, the indication used by it must, as required by that provision of the Directive, relate to one of the characteristics of the goods marketed or the service provided by that third party (see, to that effect, Windsurfing Chiemsee, paragraph 28, and Case C-48/05 Adam Opel [2007] ECR I-1017, paragraphs 42 to 44).”
B-2: ECJ Preliminary Rulings: Developments in pending cases None C:CFI Court of First Instance (CFI): Judgments and Orders on appeals against decisions of OHIM, Article 63 CTMR Pelikan : T-389/03 – Judgment of 17 April 2008 (action dismissed; Office practice confirmed). Keywords: CFI proceedings: admissibility of references to the observations before the Office – CFI proceedings: right of the plaintiff to lodge a statement in reply – CFI proceedings: material filed for the first time before the court – Opposition: likelihood of confusion (LOC) – LOC: whether concrete use of the subsequent sign bears an impact – LOC: comparison of goods – Comparison of goods: impact of classification – LOC: comparison of marks. The action had been directed against a decision of the 2nd Board of 18.9.2003 in R 0191/2002-2 relating to a figurative sign depicting a pelican in a circle which had been applied for: chemicals; industrial inorganic chemicals; industrial organic chemicals; surface active agents; chemical agents; unprocessed plastics, in Class 1; dyestuffs; pigments; painting materials; printing inks; colorants, in Class 2, and for plastics; plastic substance, semi-processed, in Class 17.
It had been opposed by Pelikan V-GmbH & Co KG on the basis of several rights in two Community trade marks, a German trade mark, a German trade mark right based on use on the market and the company name. The earlier trade marks were claimed for, inter alia, goods in Classes 1 to 22, amongst which “chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire-extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry”, for “paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordant; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists”, and “printed matter, office equipment and stationery, including writing utensils”. The opposition had been allowed in full at all instances. The 5th Chamber of the CFI (Vilaras; Dehousse; Svaby) confirmed the decision of the Board. The plaintiff had set forth the argument, and submitted evidence, that there cannot be LOC because it is using its mark only as a logo together with its company name. The CFI did not take into consideration that plea because it had been filed for the first time before the court. It further rejected the plaintiff's request to have a second round of written proceedings. (a) The general reference to observations before the OHIM (17) The applicant submits that its observations before OHIM of 6 June 2000, 19 April 2002 and 13 May 2003 form an integral part of the plea adduced in support of the present action. (18) In its statement in reply, in relation to its claim that it often uses the logo depicting a pelican without the word ‘Pelikan', the intervener refers to documents and pieces of evidence submitted to OHIM, but without specifying which documents or pieces of evidence it has in mind. (19) The Court notes the settled case-law that under Article 44(1) of the Rules of Procedure of the CFI, which applies to intellectual property matters by virtue of Articles 130(1) and 132(1) of those same rules, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (see Joined Cases T-350/04 to T-352/04 Bitburger Brauerei v OHIM – Anheuser-Busch ( BUD , American Bud and Anheuser Busch Bud) [2006] ECR II-4255, paragraph 33, and the case-law cited there). That case-law can be transposed to the response of the other party to opposition proceedings before a Board who intervenes before the CFI, pursuant to Article 46 of the Rules of Procedure, which applies to intellectual property matters, by virtue of the second subparagraph of Article 135(1) thereof (Case T-115/02 AVEX v OHIM – Ahlers (a) [2004] ECR II-2907, paragraph 11). It is not for the CFI to take on the role of the parties by seeking to identify the relevant pleas and arguments in the document they refer to. Therefore, the originating application and the statement in reply of the intervener, inasmuch as they refer to observations which the applicant and the intervener, respectively, submitted to OHIM, are inadmissible in so far as the general references they contain do not relate to pleas and arguments developed in the application and the statement in reply, respectively.” (b) Comparison of goods (The relevant public) “(56) As regards the public in relation to which the likelihood of confusion between the marks at issue must be assessed, the applicant's argument that the Board failed to have regard to the specialists that constitute the exclusive target market of the products at issue must be dismissed as having no factual basis. (57) In this respect, it must be noted, first, that the Board found, in paragraph 22 of the contested decision, that ‘[s]emiprocessed plastics and plastic substances are derived from “unprocessed plastics” and the goods are therefore found in various stages of the same manufacturing process'. Second, it must be noted that, in response to the applicant's alternative request that, if the Board of Appeal were to find that there was a likelihood of confusion, the list of products in respect of which registration was sought had to be restricted by adding: ‘… all goods in all classes are destined for manufacturers for further processing', the Board of Appeal said, in paragraph 28 of the contested decision, that such an addition ‘cannot change the result' and that ‘[t]he goods belonging to the list of goods as it stands are also, at least to a large extent, for manufacturing purposes'. (58) It follows from the foregoing that, for the Board of Appeal, the only perception that matters is the perception in the minds of the manufacturers that engage in further processing of the goods at issue. Therefore, the Board of Appeal did indeed take account of a specialised public. (59) Moreover, it also has to be noted that, in the contested decision, the Board did not call in question the Opposition Division's reasoning concerning products such as the applicant's ‘plastics; plastic substance, semi-processed' and the intervener's ‘chemicals used in industry' and ‘unprocessed plastics', according to which ‘these products are all used in the manufacturing process and none of them is a final product' and, in that sense, can have ‘the same specialised end users (manufacturing companies)'. Even though the Board also did not react, in the contested decision, to the fact that the Opposition Division referred to the Court's case-law concerning the definition of the average consumer, it must be held in this respect that the Board was under no obligation to add any further details to the Opposition Division's assessment, given that, in the proceedings before the Board of Appeal, the applicant did not challenge the Opposition Division's assessment of the relevant public. (60) In those circumstances and in the light of the nature of the products at issue, which are described in paragraphs 3 to 5 above, the Court of First Instance considers that account should be taken of such a specialised public when comparing the marks at issue. Moreover, such a finding accords with the statements the parties made during the hearing, as recorded in the minutes of the hearing. Given that those marks are Community trade marks, account must be taken of that public throughout the entire European Union. In addition, the fact that the relevant public is specialised in the sector of the products in question implies that it is likely to take great care in the selection of those products.” (The products at issue) “(61) It must be noted that, according to consistent case-law, in assessing the similarity of the products in question, all the relevant factors which characterise the relationship between them should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (Case T-85/02 Díaz v OHIM – Granjas Castelló (CASTILLO) [2003] ECR II-4835, paragraph 32, and Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 33; see also, by analogy, Case C-39/97 Canon [1998] ECR I-5507, paragraph 23). (62) According to Rule 2(4) (CTMIR), the classification of goods and services under the Nice Agreement is to serve exclusively administrative purposes. Therefore, goods may not be regarded as being dissimilar from each other on the sole grounds that they appear in different classes. (63) It must be noted at the outset that the applicant stated during the hearing that it did not challenge the Board of Appeal's assessment that the products in Classes 1 and 2 listed in the application for registration were in some cases identical and in other cases similar to products in Classes 1 and 2 protected by earlier Community trade marks belonging to the intervener. (64) Therefore, the applicant only challenges the Board of Appeal's finding regarding the similarity between ‘plastics; plastic substance, semi-processed' in Class 17 listed in the application for registration and the products protected by the earlier trade marks in question. (65) In this respect, it must be noted that the Board stated as follows in paragraph 22 of the contested decision: ‘The [applicant's] goods “plastics; plastic substance, semi-processed” in Class 17 are similar to the goods covered by Community trade mark registration No 179242 in Class 2 and Community trade mark registration No 179226 in Class 1. Semi-processed plastics and plastic substances are derived from “unprocessed plastics” and the goods are therefore found in various stages of the same manufacturing process. Furthermore, semi-processed plastics will contain or be manufactured with the aid of “chemicals used in industry”. Consequently, it appears warranted to conclude that the applicant's goods in Class 17 are similar to goods covered by Community trade mark registrations No 179242 and 179226. (66) Without challenging the accuracy of the Board of Appeal's assertion that ‘semi-processed plastics and plastic substances are derived from “unprocessed plastics”‘, the applicant submits, in essence, that the relationship between those products is not sufficiently close for them to be regarded as similar. (67) As a preliminary point, it must be noted that, given that it describes products that appear as ‘plastics' and ‘semi-processed plastics' in Class 17, the definition of the products for which registration is sought – in as much as it relates to the nature of those products – is very broad. It covers a wide range of products derived from polymerisation or the chemical transformation of polymers. More particularly, it must be noted that the term ‘plastics' is sufficiently wide to encompass ‘unprocessed plastics' protected by the intervener's Community trade mark No 179226 in Class 1. (68) In this respect, first it must be held, as did OHIM, that the term ‘plastics' in Class 17 in the list of products for which registration is sought covers plastic as a raw material and not finished products made from plastic. It is not apparent from the heading of Class 17 or from the explanatory note for that class, according to which that class includes mainly ‘… plastics, being for use in manufacture in the form of sheets, blocks and rods …', or from the word ‘plastics' itself that it concerns finished plastic products. Finished plastic products fall within different classes for the purposes of the Nice Agreement, corresponding to the specific finished product. Moreover, the applicant itself submits that the products for which registration is sought are used exclusively for processing in the field of industrial finishing or manufacture and are not intended for consumer end users (see paragraph 22 above). (69) Second, as regards the fact that the ‘plastics' covered by the application for registration fall into a different class for the purposes of the Nice Agreement than ‘unprocessed plastics' protected by the intervener's trade mark No 179226, it must be held, in the light of what was stated in paragraph 62 above, that this alone cannot invalidate the finding that the first of those terms encompasses the second. The fact remains that ‘unprocessed plastics' and ‘plastic substance, semi-processed' are nothing other than ‘plastics' at different stages of the same production process. All those plastics are inherently the same, in that they are produced by polymerisation or the chemical transformation of polymers, and serve the same purpose, namely use in the process of making finished plastic products. (70) In this last respect, it must be added that neither ‘plastics; plastic substance, semi-processed' nor ‘unprocessed plastics' are restricted – by their wording or by their nature – to a particular category of finished plastic products. Therefore, it must be held that all those plastics can be used in the manufacture of the same finished plastic products. (71) Third, even though the applicant denies that one and the same undertaking manufactures all the products in question (‘plastics; plastic substance, semi-processed' and ‘unprocessed plastics'), it has however not shown that this is ruled out. In this respect, it must be held that the applicant itself manufactures or intends to manufacture both ‘plastics; plastic substance, semi-processed' and ‘unprocessed plastics', as the application for registration shows. Moreover, the intervener stated that other undertakings, such as BASF and Dow Chemicals, manufacture plastics at the various stages of production in question. Therefore, the applicant's claim that one and the same undertaking cannot manufacture the various plastics at issue must be dismissed. (72) Fourth, given that, as stated in paragraphs 67 to 69 above, the term ‘plastics' encompasses the term ‘unprocessed plastics', and that both ‘plastics; plastic substance, semi-processed' and ‘unprocessed plastics' can be used in the manufacture of the same finished products, it must be held that the plastics in the three categories mentioned above are complementary and competing, and might therefore be bought by the same purchasers. (73) Fifth, given that the application for registration did not mention any particular method of marketing, the products in Class 17 designated by the mark for which registration is sought may be marketed together with unprocessed plastics, which are protected by the intervener's trade mark. Even taking into account, as submitted by the applicant, that its products are not sold in retail or wholesale outlets, but direct from business to business, in particular by catalogue, it cannot be excluded that they may be distributed using the same retail network in the same manner as the products in question protected by the intervener's trade mark. (74) It follows that the Board rightly found that the products are similar within the meaning of Article 8(1)(b) of Regulation No 40/94.”
Sunplus : T-38/04 – Judgment of 15 November 2007 (made available in April 2008; action dismissed; Office practice confirmed). Keywords: Opposition: likelihood of confusion (LOC) – LOC: comparison of goods – LOC: comparison of marks. The action had been directed against a decision of the 4th Board of 7.10.2003 in R 0642/2000-4 relating to CTM application “SUNPLUS” (figurative mark) which had been applied for for a range of goods in Class 9, namely: chips; semi-conductors; integrated circuits; electronic circuits; semi-conductor chips; semi-conductor elements; micro-processing chips; floating-point computing chips; super-large-scale integrated circuits; program cards; disks having computer program; magnetic disks.
It had been opposed on the basis of several earlier rights in the word “SUN”, namely two German marks, a UK mark and a Benelux mark. The opposition had been upheld on the basis of the Benelux mark covering: information and processing installations and apparatus, computers, personal computers, computer terminals, computer input and output devices, computer accessories, computer parts and computer memories, text processing apparatus, computer software, magnetic and electronic data carriers, apparatus and instruments for recording and reproducing data, all in Class 9. Proceedings had been stayed six times. Eventually, the 5th Chamber of the CFI (Vilaras; Martin s Ribeiro; Jürimäe) confirmed the Board's findings, relying on standard criteria.
Steadycontrol : T-181/07 – Judgment of 2 April 2008 (FR only; action dismissed; Office practice confirmed). Keywords: Absolute grounds for refusal: distinctiveness – Distinctiveness: relevant public. The case had been directed against a decision of the 4th Board of 12.3.2007 in R 0008/2006-4 relating to CTM application “Steadycontrol”, word mark, which had been applied for for a range of goods and services in Classes 9, 12 and 38, inter alia , for telecommunication, data transfer and electronic devices for controlling certain processes etc. The application had been partially rejected as regards part of the claimed Class 9 goods and all goods in Class 12 (helicopters, etc.). The examiner's decision had been confirmed at all instances: rejection of the sign as being descriptive on the grounds that the relevant (expert) public would immediately realize that the devices offered relate to ways and means how to control that certain technical processes take place in an orderly, i. e. steady, manner. The 8 th Chamber of the CFI ( Martin s Ribeiro, Papasavvas, rapporteur; Dittrich) confirmed these findings.
C-2: CFI Judgments and Orders: Developments in pending cases Dominio de la Vega : T-458/07 - Office response filed (ES). Keywords: Opposition: likelihood of confusion (LOC) – LOC: comparison of marks for alcoholic beverages. The action is directed against a decision of the 2nd Board of 3.10.2007 in R 1431/2006-2 relating to CTM application 2 789 576, “Dominio de la Vega” (figurative mark). It had been applied for for a range of goods and services in Classes 33, 42 and 43, inter alia, for alcoholic beverages.
The application in Class 33 had been opposed on the basis of Palacio de la Vega (figurative mark) which is registered in Class 33 for alcoholic beverages. The opposition had been allowed in full, based on a finding that the goods were identical, and the signs visually, phonetically and conceptually similar. It was pointed out that the elements “dominio” and “palacio” are weak because such expressions are frequently used, particularly in the wine trade.
Brezelform or Shape of a Pretzel : T-449/07 - Office response filed (DE) Keywords: Absolute grounds for refusal: distinctiveness – Distinctiveness: attentiveness of the consumers of foodstuffs. The action is directed against a decision of the 4th Board of 27.9.2007 in R 1415/2006-4 relating to CTM application 4 346 185 (Brezelform; figurative mark). It had been applied for for a range of goods and services in Classes 29, 30 and 43.
It had been rejected under Article 7(1)(b) CTMR on the grounds that the sign at issue is devoid of distinctiveness because it does not consist of more than the ordinary shape of a pretzel. The attentiveness of consumers when buying foodstuffs is not very advanced or high. Even in relation to meat products (sausages), the sign will be understood as five sausages arranged in the form of a pretzel. The consumer, when becoming aware of such a product, will perceive the said form as a specific way to arrange or present sausages but not as an individualising shape as regards its commercial origin.
Car Silhouette-III or Car in dark : T-9/08 – Office response filed (DE). Keywords: Absolute grounds for refusal: distinctiveness – Distinctiveness/IR marks: impact of Article 6 A(1) Paris Convention. The action is directed against a decision of the 4th Board of 6.11.2007 in R 1306/2007-4 relating to international registration W 878.349 (based on DE 305.41.796) which covers motor vehicles in Class 12.
The sign applied for had been described as follows: ” The trademark illustrates the silhouette of a motor vehicle appearing in the dark through the use of an illuminated white dotted line and other areas of the vehicle that are also luminous. ” It had been rejected as being devoid of distinctive character because, in essence, the sign does not consist of more than two graphical elements on the basis of which no consumer would be able to differentiate between cars. Further, even if a consumer could, on the basis of the sign, differentiate between several vehicles at night, he would not be able to do so in daylight; and cars are not bought at night with their headlights on.
IP Manager : T-453/07 - Office response filed. Keywords: Opposition: proof of use – Use: of a mark for services – Opposition: likelihood of confusion (LOC) – LOC: comparison of services. The action is directed against a decision of the 4th Board of 27.9.2007 in R 0982/2005-4 relating to CTM application 2 177 277, word mark “IP Manager”, which had been opposed on the basis of two earlier rights in the word “Manager” and one earlier right in the word “Hotel Manager”.
The CTM had been applied for in respect of the following services: Class 35: Advertising; business management services; business administration; office functions, all these services including in the form of online services, in particular promoting the goods and services of others by placing advertisements and promotional displays on an electronic site accessed through computer networks; electronic storage and retrieval of data in the fields of business, finance, and news; online computer services, namely, providing information regarding the goods and services of others in the form of a buyers' guide, by means of a worldwide computer network (the Internet) – Class 36: Insurance; financial affairs; monetary affairs; real estate affairs, stock brokerage services, credit card services, loan, mortgage, and mortgage brokerage services, bill payment services, electronic transfers of funds of behalf of others, insurance services, and providing of information in the fields of investment and finance via computer networks and worldwide communications networks – Class 38: Telecommunications; arranging of network access services, including video and teleconferences on electronic communications networks, such as in particular the Internet, including online discussion and information forums and database usage of local, national and international information networks, being both real-time and temporary storage services; electronic transmission of data, images, and documents via computer terminals; providing mailbox, discussion forum, website and electronic mail services; providing multiple user access to computer networks and mailboxes for the transfer, dissemination and exchange of information; providing a wide range of general information by means of computer networks. Further in Class 41: Education and training; entertainment; providing classes, seminars, conferences, and online instructional materials in the field of finance; sporting and cultural activities, video production and rental; publication of books, newspapers and periodicals, being also in an electronically processed form, including the conducting of all the services of Class 41 on the Internet, and in Class 42: Computer services, namely, creating indexes of information, sites, and other resources available on computer networks; searching and retrieving information, sites and other resources available via computer networks, for others; providing an online link to news, financial information, business information, current events, and reference materials; computer services, namely computer software design and creation; computer consultancy services; operating sales outlets on electronic media, in particular the Internet, for others; temporary accommodation and providing of food and drink, in particular Internet cafés; hygienic and beauty care; scientific and industrial research; engineering, design; data processing expertise; provision of translation services; consultancy in the field of computers; gathering and providing of information via digital networks. The opposition had been based on the following earlier trade marks: (a) Italian registration No 497 118 of the word mark “MANAGER” for goods and services in Classes 9, 16, 35, 39, 41 and 42. The mark, registered in 1988 had been renewed in 1998; (b) International registration No R 536 599 of the word mark “MANAGER” with effect in Spain, France and the Benelux countries for goods and services in Classes 9, 16, 35, 37, 39, 41 and 42. The trade mark was registered in 1989; and (c) Italian registration No 817 492 of the word mark “HOTEL MANAGER” for the following goods and services: in Class 9 for computer programs, and in Class 42 for computer programming. The mark had been registered in 2000. By its decision, the Opposition Division rejected the opposition in its entirety, holding in substance that proof of use was submitted only in respect of Italian registration No 497 118 “MANAGER”, in relation to “computer software”. The earlier international registration No R 536 599 “MANAGER” was therefore disregarded for the purpose of the opposition. It had found that computer software was dissimilar to the services in Classes 35, 36 and 41 and to the services of “operating sales outlets on electronic media, in particular the Internet, for others; temporary accommodation and providing of food and drink, in particular Internet cafés; hygienic and beauty care; scientific and industrial research; provision of translation services” in Class 42 covered by the mark applied for. Computer software was found to be similar to the services in Classes 38 and to the services of “computer services, namely, creating indexes of information, sites, and other resources available on computer networks; searching and retrieving information, sites and other resources available via computer networks, for others; providing an online link to news, financial information, business information, current events, and reference materials; computer services, namely computer software design and creation; computer consultancy services; engineering, design; data processing expertise; consultancy in the field of computers; gathering and providing of information via digital networks” in Class 42. Notwithstanding the similarity of some of the services covered by the mark applied for and the earlier mark's computer software, the Opposition Division had held that the differences between the signs were sufficient to exclude LOC in view of the limited scope of protection to be recognised to the earlier mark which is allusive. Since it was held that the earlier mark “HOTEL MANAGER” is even more remote from “IP MANAGER” than the earlier mark “MANAGER”, LOC had also been excluded in its regard. In essence, the Board had confirmed these findings.
Insight : T-498/07 - Office response filed. Keywords: Opposition proceedings: ‘Clean hands' principle – 'Clean hands': agreement of co-existence – Co-existence agreement: territorially limited, against a CTM – Opposition proceedings: several earlier rights – Opposition: decision based on only one earlier right out of several – Board proceedings: decision based on another earlier right not taken into account by the opposition division – Board proceedings/decisions: subsequent corrigendum of the decision at pending CFI proceedings – Board proceedings: subsequent corrigendum as regards comparison of goods and services – Board proceedings: subsequent corrigendum as regards assessment of colour in a mark – LOC: comparison of services. The action is directed against a decision of the 2nd Board of 20.7.2007 in R 1428/2006-2 relating to CTM application 3 309 002, “Insight” (figurative mark). It had been opposed on the basis of several rights in “net insight”, word marks and figurative marks.
The CTM had been applied for for, inter alia, the following services that are relevant in this case: Class 35: Retail, wholesale and mail-order services for computers, software, and electronic components including servers, microcomputers, personal computers, computer accessories, computer supplies, sound boards, microprocessors, mother boards, memory chips, host adapters, disk accelerators, controllers, acceleration boards, notebook computers and components, sound boards, computer accessories, peripherals, CD-ROMs and components, printers, printer accessories, printer supplies, monitors, scanners, hard drives, floppy drives, backup systems and components, data storage systems, mass storage systems, memory systems, power supplies, power protectors, communications systems, modems, sound equipment, speakers, headphones, microphones, sound cards, multimedia components, joysticks, drives, multimedia cards, video cards, video tapes, PCMCIA cards and jacks, networking components and networking modules; wholesale ordering services in the field of computers, software and electronic components; retail and online retail store services featuring computers, software and electronic components; mail order catalogue services featuring computers, software and electronic components; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail store specialising in computers, software and electronic components; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a wholesale outfit; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a catalogue of computers, software and electronic components; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by means of telecommunication; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from an Internet website specialising in computers, software and electronic components; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a general merchandise Internet website; sales and delivery services for computer, software and electronic components: Class 37; Repair, maintenance and installation services for computers and electronic components, and Class 42; Repair, maintenance and installation services for software. The opposition had been directed against the CTM application in respect of all the services in Classes 35, 37 and 42 as referred to above. It had been based on the following goods and services covered by the earlier rights: Class 9: Data and telecommunication network equipment, including switches, access devices, bridges, routers, gateways, multiplexers, add-drop multiplexers, digital cross-connects, hubs, firewalls, fiber optic terminals, repeaters, route servers, computer interface (PCI) adapter circuit boards, network interface circuit boards, network management stations; microprocessors, including application specific integrated circuits (ASICs); software modules for use in the equipment listed above, including network management software: Class 37: Installation maintenance and repair of data telecommunication network equipment, and Class 41: Training and education related to data and telecommunication network equipment. The Opposition Division had partially allowed the opposition based on one earlier CTM, a word mark registered in Classes 9, 37 and 41. That earlier CTM, however, became object of a request for invalidation initiated by the present CTM applicant and based on his earlier CTM Insight (figurative mark; shown below).
For reasons of procedural economy, the Board had considered it appropriate not to suspend proceedings pending the Cancellation Division's ruling. Instead, the Board had examined whether the decision of the Opposition Division could be sustained on the basis of the invoked earlier figurative mark, also a CTM. Eventually, the Board confirmed the result of the Opposition Division's decision (LOC) on that basis. Regarding the agreement of co-existence, the CTM applicant had claimed that the parties had signed a (territorially limited) co-existence agreement whereby the other party committed to withdraw any opposition against any mark filed by the applicant and containing the word “INSIGHT”. The Board observed that no co-existence agreement was submitted in the course of the proceedings. In any event, the Board did not consider that a coexistence agreement regarding the marks would have any impact on the assessment of LOC regarding the two
relevant marks in this case: firstly, the marks are different; secondly, the other party had not been shown to have waived or disclaimed its right to file an opposition against the mark applied for; thirdly, no evidence has been adduced that the marks actually co-exist throughout the relevant markets, and fourthly, a co-existence limited to the territories of 9 Member States would be without effect on an assessment of LOC that has to be assessed throughout the Community. On 10 March 2008, the 2nd Board had delivered a corrigendum pursuant to Rule 53 CTMIR. The Board corrected two “obvious errors of transcription” affecting the comparison of the services covered by the mark applied for and the colour representation of the earlier mark.
Centrixx/Sensixx : T-446/07 - Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC) – LOC: household ware and the perception of the public in general. The action is directed against a decision of the 4th Board of 3.10.2007 in R 0572/2006-4 relating to CTM application “Centrixx”, word mark, which had been applied for for a range of goods in Class 7, inter alia for electric cleaning apparatus. It had been opposed on the basis of “Sensixx”, word mark, registered in Classes 7, 9 and 11, inter alia for electric household ware in Class 7. Whereas the Opposition Division had rejected the opposition, the Board had allowed it: it held that, given the identity of the products and the visual similarity and the high phonetical similarity, the general public will be inclined to assume that the goods would originate from the same manufacturer.
Montebello Rhum : T-430/07 - Office response filed (ES) Keywords: Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 2nd Board of 7.9.2007 in R 0223/2007-2 relating to CTM application 2 666 386, “Montebello Rhum Agricole” (figurative mark). It had been applied for for alcoholic beverages in Class 33.
It had been opposed on the basis of a Spanish trade mark right in “Montebello”, word mark, registered for wines and other alcoholic beverages in Class 33. Whereas the Opposition Division had allowed the opposition and had rejected the CTM application, the Board had rejected the opposition for the following reasons: Notwithstanding that the goods at issue, generically, are alcoholic beverages, they are dissimilar within the meaning of Article 8(1)(b) CTMR because of their differences in nature, origin, ingredients, method of production and consumption. The marks are sufficiently distinct from each other in order to exclude LOC overall.
Tame It : T-471/07 - Office Response filed. Keywords: Absolute grounds for refusal: distinctiveness. The action is directed against a decision of the 2nd Board of 24.10.2007 in R 0713/2007-2 relating to IR registration W0.879.186, “Tame It”, word mark. It had been applied for for soaps, perfumeries, essential oils, cosmetics, hair lotions and dentifrices in Class 3. The examiner had rejected the application. By its decision, the Board had allowed the appeal in part, holding that the sign applied for was distinctive in relation to ‘soaps, perfumeries, dentifrices' and had dismissed it as to the remainder, upholding the examiner's decision insofar as it had refused the extension of the international registration at issue in the EU in relation to ‘essential oils, cosmetics and hair lotions' on the grounds that the sign was inherently devoid of distinctive character for these goods within the meaning of Article 7(1)(b) CTMR. In essence, the Board had held that, in the context of mass consumption hair cosmetics and related beauty-care products, the average consumer in territories where English is an official language, such as the United Kingdom, Ireland and Malta, would immediately and without any further thought understand the expression ‘TAME IT' as a purely promotional message informing the consumer about the properties, desired effect and intended purpose of the goods. This is because, when used in relation to the goods at issue, the English verb ‘to tame' means to soften, control or give form to unruly hair, while the complement ‘it' merely refers to the subject-matter of the act, that is, to the hair itself, adding nothing unusual to the combination as a whole. Hence, the sign applied for is an ordinary expression, which is grammatically and syntactically correct and which conveys a clear and direct informational message to the consumer, namely that the designated goods are suited for the softening of hair. Consequently, the Board concluded that the sign at issue could not fulfil its essential function, being unable to distinguish the applicant's goods from those of other undertakings and, accordingly, could not be registered as a Community trade mark.
Solvo/Volvo : T-434/07 - Office response filed. Keywords: Opposition: earlier right with reputation – Opposition: likelihood of confusion (LOC) – LOC: comparison of marks. The action is directed against a decision of the 2nd Board of 2.8.2007 in R 1240/2006-2 relating to CTM application 3 555 422, “Solvo” (figurative mark). It had been applied for in respect of the following goods in Class 9, after restriction: computer programs for warehouse management systems and computer programs for container terminal systems. It had been opposed by Volvo Trademark Holding Aktiebolag based inter alia on CTM 2 361 087, word mark “VOLVO”, registered in Class 9 for computer programs, and in Class 12 for vehicles.
The opposition had been rejected based on the following considerations: (a) Article 8(5) CTMR: The fact that the earlier sign possesses reputation is irrelevant since the signs are found to be dissimilar as a whole. Therefore one condition is missing for Article 8(5) CTMR to apply; and (b) Article 8(1)(b) CTMR: As regards the comparison of the goods the Board had held that the type of ‘software dedicated to the field of warehouse management and container terminal systems' for which registration is sought is included under the term ‘computer programs' covered by the earlier CTM. The goods had therefore been deemed identical. As regards the signs, the Board had held that they are visually and phonetically dissimilar principally due to the divergence in the initial letters V and S which serve to create a wholly different opening and dominant syllable: SOL -/ VOL. The earlier mark VOLVO features the recurrence of the letter V, which is absent in the mark applied for. In addition, the particular, stylised font used in the mark applied for will be perceived more as a device than a word and, together with the device, they are important elements of visual differentiation. Conceptually, the Board had concluded that the relevant public would not be likely to recognise the Latin roots of either word.
Factory Finish : T-487/07 - Observations filed. Keywords: CFI proceedings: request for the determination of a preliminary issue, Article 114(1) CFI Rules of Procedure – CFI proceedings: party representation by a Patent Attorney. The background of the legal issue in question is as follows: In December 2007, Imperial Chemical Industries PLC lodged at the CFI a request for annulment within the meaning of Article 63 CTMR against the decision of the 4th Board of 24.10.2007 in R 0668/2007- 4, relating to CTM application 4 538 518, word mark “FACTORY FINISH”. On the same day, the plaintiff lodged a separate application containing a request for the determination of a preliminary issue within the meaning of Article 114(1) of the Rules of Procedure of the CFI. Both the action for annulment and the request had been signed by Mr. M., Barrister, and Mr. J., Patent Attorney Litigator. The plaintiff wishes to be jointly represented by the above persons. To this effect, it requested the court to decide as a preliminary issue whether Mr. J. can represent the plaintiff in the instant proceedings, pursuant to Articles 19 and 53 of the Statute of the Court of Justice. In support of its request, the plaintiff argues that the word ‘lawyer' in those provisions must be interpreted broadly to include a Patent Attorney Litigator, which, pursuant to the legislation of the UK and to the internal rules regulating its professional status, is assimilated for all practical purposes to a solicitor. Moreover, the plaintiff contends that such a person fulfils all the requirements laid down by the case-law of the court to that effect, since it (a) can conduct litigation in the higher courts of England and Wales in relation to trade mark, design and copyright matters (b) is granted a litigator certificate by the Chartered Institute of Patent Attorneys (‘CIPA') only if suitably qualified and sufficiently experienced (c) can instruct a Barrister just as a solicitor does, and (d) is subject to special rules of conduct and disciplinary procedures. The Office proposed rejecting the request.
PharmaResearch : T-464/07 - Office response filed (DE). Keywords: Absolute grounds for refusal: descriptiveness. The action is directed against a decision of the 4th Board of 18.10.2007 in R 0924/2007-4 relating to CTM application 5 309 836, “PharmaResearch”, word mark, which had been applied for for a range of goods in Class 9. It had been rejected on the grounds of descriptiveness, Articles 7(1)(b),(c) and 7(2) CTMR.
Heller : T-431/07 - Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 2nd Board of 11.9.2007 in R 0974/2006-2 relating to CTM application 3 3306 602, “Heller”, word mark, which had been applied for by Gebr. Heller Maschinenfabrik GmbH for a range of goods and services in Classes 7, 37 and 40.
It had been opposed on the basis of a Spanish mark, “Heller” (figurative mark), registered in Class 7. The opposition had been allowed in full.
Chocolate Bar or Mars/Ludwig : T-28/0 - Office response filed. Keywords: Absolute grounds for refusal: distinctiveness – Distinctiveness: three-dimensional (‘3D') signs – 3D signs: shape of the good itself – 3D signs/shape of the good itself: distinctiveness acquired on the market (criteria). The action is directed against a decision of the 2nd Board of 23.10.2007 in R 1325/2006-2 concerning a decision ruling on an application for invalidity No 765 C, relating to CTM No 818 864. The representation of the CTM at issue is the following 3D sign:
The Office had accepted the mark on the basis of acquired distinctiveness for the following goods: Class 5: Medicated confectionery; Class 29: Snack foods; and Class 30: non-medicated confectionery; pastries, cakes, biscuits; ices, ice cream, ice cream products, frozen confections; chilled desserts, mousses, sorbets. Ludwig Schokolade GmbH & Co. KG (cancellation applicant/appellant) subsequently had filed a request for invalidation against the CTM pursuant to Article 51(1)(a) CTMR. The Cancellation Division had rejected the request, holding that the mark in question was devoid of any inherent distinctiveness but that it was not directly descriptive and that it did not fall foul of the provisions of Article 7(1)(e)(i) or (ii) CTMR. As to the claim of acquired distinctiveness, the Cancellation Division had held that the requirements of Article 7(3) CTMR were met, and that the sign had acquired distinctiveness through use. On appeal, the Board had declared the CTM invalid for the following reasons: (a) The appearance of the mark applied for does not depart significantly from the norms and customs of the relevant sector (as previously held by the Cancellation Division). The average consumer of the category of products concerned will exclusively perceive the form and the details of the mark applied for, at the most, as decorative and not as a sign indicating the origin of the product. (b) Concerning the applicant's claim of acquired distinctiveness, a large amount of evidence was filed. However, it concerned only the United Kingdom, Belgium, France, Germany, Italy and the Netherlands. As to the other nine Member States, the evidence - almost without exception - consisted only of sales and advertising figures. (c) As to the sales figures, it is clear that the United Kingdom, Belgium, France, Germany, Italy and the Netherlands are the main markets for the products in question, representing approximately 90% of the total sales figures of the products in the European Union as a whole. (d) It is clear that the sales figures and advertising expenditure in the United Kingdom, Belgium, France, Germany, Italy and the Netherlands have been at a completely different level when compared to the remaining Member States. Therefore, whilst it is true that the results of the consumer surveys made in the United Kingdom, Belgium, France, Germany, Italy and the Netherlands give impressive results at least in some of these countries, these results can not be extrapolated to the remaining Member States where the applicant's activity has been at a completely different level. Equally high levels of association cannot be inferred, as the sales figures and advertising expenditure are not at all comparable with regard to the remaining Member States. (e) Concerning the respondent's argument that the approach consisting of counting the number of countries from which evidence emanates is contrary to the need to regard the European Community as a single market, it should be noted that, in its judgment of 12 September 2007, Case T-141/06, Glaverbel SA/ OHIM, (Texture of a glass surface), the CFI stated that such an argument could not be upheld and concluded that, in that case, the Board had rightly examined the evidence concerning distinctive character acquired through use for each Member State separately. (f) In the case at hand, even if it were considered that the evidence does not necessarily have to cover every single Member State, the geographical scope of the partially very limited and partially non-existent evidence given for Austria, Denmark, Finland, Greece, Ireland, Luxembourg, Portugal, Spain and Sweden, in addition to considerably lower sales and advertising revenue figures concerning these countries, is clearly too narrow to prove that the relevant public regard the mark as applied for as an indicator of origin of the respondent's goods in the whole territory of the Community. The United Kingdom, Belgium, France, Germany, Italy and the Netherlands, which merely consist of six Member States, do not form, independent of their population, such a substantial part of the Community that the holder of the sign could successfully invoke Article 7(3) CTMR. (g) Mere sales figures and information concerning advertising expenditure in addition to minimal further evidence is far from being conclusive evidence that the mark has acquired distinctiveness among the relevant consumers as a badge of origin in Austria, Denmark, Finland, Greece, Ireland, Luxembourg, Portugal, Spain and Sweden. No examples of use of the mark as applied for on packages, advertising or other promotional material, nor witness statements, declarations or market surveys, or any other further material has been provided for these Member States. In the case at hand, it would have been especially important for the Board to see that the packages, advertising or other promotional material prominently display the three-dimensional mark as applied for and not only the word “Bounty” in these Member States. (h) In light of the above considerations, the documents submitted by the respondent are insufficient to demonstrate that the sign applied for has acquired distinctiveness as a consequence of its use in connection with the goods applied for within the European Union.
NEW DECISIONS FROM THE BOARDS OF APPEAL See also the Boards of Appeals 2006 case-law overview which provides an annual overview of selected decisions grouped by type of decision. Please note that the full number including slash has to be entered in our database under 'Appeal Nº', without the letter 'R'. Cancellation proceedings – bankruptcy of cancellation applicant - party to the proceedings ceasing to exist Decision of the First Board of Appeal of 27 February 2008 in Case R 0300/2007-1 (English) R 0300/2007-1 INFOCHANNEL – (en) – in this case, the re was clear evidence that, following bankruptcy proceedings, the company acting as cancellation applicant was dissolved: thus, the party which instituted the proceedings and pursued them no longer existed. Therefore, the Board concluded that there was no interest in continuing the proceedings. The contested decision could not take effect and the contested CTM was maintained. The proceedings were closed. No decision on costs was required.
Appeal proceedings – a dmissibility – a ffidavit – c ase-law – c omplementary evidence – d iscretion of the Office – national law – proof of use – time limit Decision of the Second Board of Appeal of 13 February 2008 in Case R 1261/2007-2 (English) R 1261/2007-2 OUTBURST (fig.) / Outburst – (en) – in this case, the only evidence filed to prove the use of the earlier German mark was an affidavit given ‘in lieu of an oath' by the Managing Director of the company. This stated that its subsidiary Heinrich Nickel GmbH & Co. KG had been using the trade mark ‘Outburst' since 2000 on an extensive scale in relation to sportswear. The Board held: first, that the opponent had not specified which provisions of the German law, under which the statement was given, would sanction a false statement given before the Office in a pending CTM procedure in the same way as a false sworn statement made before the German authorities. Second, the sales figures declared by the opponent's managing director were not corroborated by any other clear and relevant evidence filed within the time-limit, with the result that, on the basis of that evidence, the extent of actual use of the earlier mark, within the relevant period, remained unclear. The opponent submitted additional evidence of use with its statement of grounds. As far as additional evidence of use was concerned, the Board noted that the Court maintained in the ‘Corpo Livre' Judgment its previous case-law set out in ‘Hipoviton', where it stated that the second sentence of Rule 22(1) CTMIR (now Rule 22(2) CTMIR) cannot be interpreted as precluding additional evidence from being taken into consideration where new factors emerge, even if such evidence is adduced after the expiry of that time-limit. The conditions for such evidence being taken into consideration had not been met in this case. There were no new factors evident which would be capable of justifying the late submission of evidence, whether additional or not. It followed that the Board did not have discretion in the present case as regards the taking into account of the evidence submitted by the opponent for the first time before the Board. The appeal was dismissed.
Opposition proceedings – substantiation of earlier right – database – guidelines – substantial procedural violation – right to be heard, Decision of the Second Board of Appeal of 13 February 2008 in Case R 1475/2007-2 (English) R 1475/2007-2 Salatini / SALAKIS – (en) – the Board considered that the ‘ICIMARQUES' database should be considered as the official database of the French national trade mark office (INPI) and held that excerpts from this database are documents originating from an official source in the sense of the new Rule 19(2)(a)(ii) CTMIR. The contested decision wrongly rejected the extract from the ‘ICIMARQUES' database which the Board held must be considered as being sufficient to substantiate the registration of the earlier French trade marks cited by the opponent as a basis of its opposition. In the Board's view, the opponent, through the ‘ICIMARQUES' database extract and its translation, had successfully proved the validity, scope and existence of its earlier trade mark within the set time limit. The Opposition Division had violated the opponent's right to be heard. Pursuant to Article 73 CTMR, second sentence, the Office's decisions may only be based on reasons upon which the parties have had the opportunity to comment. The parties were confronted with the non-substantiation issue for the first time in the contested decision. They were not given any opportunity to give their comments on this issue. For the foregoing reasons, the Board considered that the contested decision was tainted by a substantial procedural violation and that it was appropriate that the appeal fee be reimbursed for reasons of equity, pursuant to Rule 51(b) CTMIR.
Ex parte – Article 7(1)(b) and/or (c) CTMR Examination proceedings – absolute grounds for refusal – descriptiveness – dictionary – language of the proceedings – laudatory – relevant territory. Decision of the First Board of Appeal of 7 January 2008 in Case R 0576/2007-1 (Portuguese) R 0576/2007-1 ESBELT – (pt) – the Board held that, as the Spanish autonomous communities of the Balearic Islands, Catalonia and Valencia constitute a substantial part of the territory of Spain in terms of both commerce and population, the perception that the average Spanish consumer in those communities may have of the mark applied for is an important consideration. It was, therefore, pertinent to take into account Catalan and Valencian. In this case, t he sign ESBELT is descriptive for the goods and services i.e ‘creams and hydrating and reducing products, cosmetics, colognes, firming lotions' (Class 3), ‘orthopedic modelling girdles for support and correction of the body posture' (Class 10) and ‘lingerie (women's underwear) '; ‘elastic modelling girdles' (Class 25). The term ‘ESBELT' is the root of ‘esbeltez' and ‘esbelto'. These words designate in Portuguese and Spanish the desired human quality of being elegant, graceful and well-proportioned. ‘ESBELT' conveys to all consumers in Portugal and Spain the clear message that products in the application assist the wearer or user in being perceived as slim, elegant, graceful and well-proportioned. The Board held that therefore, it constituted an immediate, direct and easily understandable laudatory indication of the nature, quality and intended purpose of the goods in question. On the other hand, the legality of the decisions must be assessed solely on the basis of the CTMR and not on the basis of the decision-making practice of national offices or the offices of third countries. The appeal was dismissed.
II – Inter partes – Article 8(4) CTMR Opposition proceedings – relative grounds for refusal – likelihood of confusion – trade name – dissimilar trade marks – similarity of the goods and services – appeal proceedings – admissibility – failure to provide evidence – renewal – request for proof of use – time limit – use of the earlier mark Decision of the First Board of Appeal of 6 March 2008 in Case R 0977/2004-1 (English) R 1052/2007-1
Cancellation proceedings – revocation – locus standi - bad faith – burden of proof – failure to provide evidence – proof of use, Decision of the First Board of Appeal of 11 April 2008 in Case R 0708/2007-1 (English) R 0708/2007-1
Invalidity design proceedings – design application – appearance of a product Decision of the Third Board of Appeal of 17 March 2008 in Case R 0592/2007-3 (Italian)
R 0592/2007-3
Invalidity design proceedings – informed user – individual character – trade mark Decision of the Third Board of Appeal of 3 March 2008 in Case R 0211/2007-3 (German) R 0211/2007-3
Invalidity design proceedings – informed user – divulgation Decision of the Third Board of Appeal of 10 March 2008 in Case R 0586/2007-3 (English) R 0586/2007-3 (barbecue) /  (barbecue) – (en) – the disclosure of the earlier design should be clear enough to enable an appropriate comparison with the challenged design. If it is not, the application (or invalidity request) should be rejected as not well-founded. In this case, the Board was not convinced that the picture – being the only pertinent piece of evidence of divulgation – permitted a reliable comparison with the contested design for the purpose of assessing the overall impression they produce on the informed user. The Board indicated that it possibly agreed with the contested decision's finding that the legs of the two barbecues are different (in the contested design there are two wheels) but noted that this difference had little weight in the overall assessment. The wheels are purely functional (they make it easier to transport the barbecue) and do not play a primary role in the visual impression that the entire barbecue produces on the viewer. It followed that this picture, which failed to adequately represent the earlier design, thereby rendering any comparison with the contested design impossible, did not amount to divulgation for the purpose of Article 7(1) CDR. The Board therefore concluded that the application for a declaration of invalidity must be rejected as unfounded.
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( CMC Markets) / CM CAPITAL MARKETS (trade name) – (en) – the Board considered that the submitted extracts (press release, several websites, online magazine) constituted sufficient evidence that the sign ‘CM CAPITAL MARKETS' had been used in the course of trade in Spain and that its use was of more than mere local significance. The Board considered that the mark applied for did not display the minimum degree of similarity to the earlier trade name required for it to be possible to establish a likelihood of confusion. This conclusion was not undermined by the fact that the services with which the trade name is used were identical to the applicant's services. 
(TIR 20 FILTER CIGARETTES) – (en) – in a cancellation case, the CTM proprietor argued that the cancellation applicant had no locus standi in applying for revocation on grounds of non-use, since it was a Bulgarian company (Bulgaria not being an EU Member State at the time when the application for revocation was filed) and did not trade in the EU internal market. The Board considered that the appellant had not adduced any evidence to show that its CTM had been put to genuine use in the EC. It was not therefore necessary to rule on the issue of where the burden of proof falls in revocation proceedings based on non-use. The appellant's sole argument was that the respondent had no standing to file an application for revocation due to its Bulgarian nationality and domicile and its failure to show that it could be economically affected by events on the EU's internal market. The Board noted that locus standi in revocation proceedings is, under Article 55(1)(a) CTMR, defined in the broadest possible terms. An application for revocation may be filed, in particular, by any natural or legal person which, under the law governing it, has the capacity to sue and be sued. There is no need to show any special interest in the revocation of the contested CTM. The appellant's argument concerning the alleged bad faith of the respondent in registering trade marks in Slovenia being identical to the appellant's CTM was not relevant to these proceedings: this is a matter which the appellant may, if it wishes, pursue before the competent authorities in Slovenia; it is not a matter for OHIM. The appeal was dismissed. 
(radiatori per riscaldamenti) – (it) – the purpose of Article 3 CDR is to explain what can be protected as a design, not to indicate how many designs can be included in an application. The fact that a Community design application includes one or more designs therefore has nothing to do with the legal definition of designs contained in Article 3 CDR: if the design depicts the appearance of a product, it certainly falls within the definition contained in that provision, since it is irrelevant – to this end – whether the design (that is, the product into which it is incorporated) is adapted into more than one variant. For this reason, the Invalidity Division incorrectly invalidated the Community design in this case. Since in fact the design depicts the appearance of a radiator, it satisfies the requirements contained in Article 3 CDR and could not be invalidated. In the present case, the only irregularity committed by the holder consisted in having presented a single rather than a multiple application. But this was certainly not an irregularity sanctionable by invalidity, either total or partial, because such an eventuality is not provided for under Article 25 CDR. The file was remitted to the Invalidity Division for examination of the grounds of invalidity contained in Article 25(1)(b) CDR, with particular reference to the alleged lack of individual character (Article 6 CDR). 
(handbag) – (de) – the contested design lacked individual character because it produced the same overall impression on the informed user as a Burberry handbag published in various Burberry catalogues and in a newspaper. The publication of a CTM application for the Burberry check as a figurative trade mark had also destroyed the individual character of the contested design. The two-dimensional nature of the trade mark did not mean that it produced a different overall impression from a three-dimensional object (such as a handbag) which incorporates the Burberry check.