|TABLE OF CONTENTS|
In September 2003 OHIM received its first request for a declaration of invalidity of a registered Community design. Since then around 580 requests have been submitted. Invalidity proceedings before OHIM are most popular in Spain, which is the country of origin for a quarter of all requests submitted so far, followed by Germany with a share of 17%.
Law firms in Spain and Germany were also the most popular choice for invalidity cases: the majority of all invalidity requests were submitted by either Spanish (34%) or German (24%) representatives. In a small number of cases, no legal representative was appointed.
Concerning the grounds for invalidity claimed in the requests, the most frequently used by far was an alleged lack of novelty or lack of individual character of the contested Community design; this ground was claimed in around 90% of the cases. Other grounds raised either exclusively or cumulatively were the alleged infringements of earlier trademarks (10%) and interferences with earlier design rights (11%).
More than 80% of all proceedings have already come to an end. In most of the cases the proceedings were terminated by decisions on the merits taken by the Invalidity Division in the Designs Department of OHIM. The average duration of the invalidity proceedings calculated from the date of receipt of the invalidity request until the date of the decision was around eight months. The Invalidity Division needed on average seven weeks to take a decision after the parties were informed that the period for submitting observations had lapsed. In around two-thirds of the cases the requests were successful, i.e. the contested Community design was declared invalid. Only one out of five decisions of the Invalidity Division has been appealed. In around 50% of the decisions taken to the Boards of Appeal, the finding of the Invalidity Division was confirmed. Presently, there are four invalidity cases pending before the Court of First Instance in Luxembourg .
Five years after the commencement of its operation, the procedure for declarations of invalidity of registered Community designs is well established and a major source of case-law in design matters. The rules of procedure are transparent and the results are published on OHIM's website.
Since Community designs are registered by OHIM without substantive examination, the invalidity proceedings are a necessary supplement to the Community design system, because they allow third parties affected by a registration to initiate such an examination and have an invalid Community design eliminated from the public register by the same administration responsible for its registration.
The James Nurton interview with
Interview with Clarke Graham, Marks & Clerk
James Nurton talks to Clarke Graham of Marks & Clerk in London about Alicante, ECTA and the future of trade marks in Europe.
How did you first become involved in trade marks?
What brought you to the UK?
In the UK, I discovered the Institute of Trade Mark Agents (now Attorneys) and I was amazed that there was a group of people specialised in trade marks. I joined a firm called JA Kemp & Co for a few years, before setting up Markforce Associates where we did a lot of name creation and searching work. It was very sharp-edged and I enjoyed working with advertising agencies and graphic designers. I then joined Marks & Clerk.
When did you first become interested in the CTM system?
There were only about 15 or 20 people in OHIM at the beginning, so we got to know them pretty well. I played tennis with some of them and we also started regular cricket matches, which still continue. Two of my secretaries went on to work for OHIM.
Was it useful having an office there?
What other problems do you perceive with the CTM?
Citation letters are a bit of a weakness. We are obliged to send them to clients but sometimes they are just rubbish. Maybe only 25% of OHIM notifications are worth reporting. The opposition procedure works well, especially with the cooling-off period and the encouragement to get the parties together, but cost awards need to be respected. Most of the decisions are reasonable now.
On staffing, OHIM seems very tough on giving out permanent contracts so a lot of good people slip through the net. They need to stop losing people and offer more long-term contracts.
What languages do you file in?
What was the first CTM application you made?
How many applications have you filed?
What challenges do you expect in the future?
What is your role with ECTA?
|Community Trade Mark||
The figurative Community trade mark “Nuby” has been declared invalid following an application by a US baby care company which claimed that its logo had been copied.
The Nuby CTM (No 2 937 803) was registered in 2004 by UK company, Financial Partners (Dorset) Limited, for classes covering a range of goods including soaps, perfumes, baby food, vehicles and stationery.
The applicant, Admar International, Inc., filed an invalidity request in 2006 on grounds including “bad faith” and also claimed that the CTM was registered contrary to its earlier copyright. Admar gave evidence that its logo had benefited from both copyright protection, and protection as an unregistered trade mark for children's and infants' goods in all countries of the European Union since 2000.
The US company, which also has a US trade mark for “Nuby” dating from 2000, said the name had been invented by the company and did not appear in an English dictionary. It added that the contested CTM was indistinguishable from its mark, and was “apparently a photocopy” taken from its packaging.
The CTM proprietor said that “bad faith” could not be presumed but must be properly argued and supported by evidence. The word “NUBY” was not an arbitrary word as claimed but existed before the applicant began it use it. “NUBI” was the name of a language of Uganda and was also a surname, and the word “NUBY” was used by a number of undertakings to distinguish their goods and services.
Regarding the copyright claim, the UK company submitted that the sign in question was too “simple” to benefit from copyright protection. The CTM proprietor said that the applicant had failed to provide the necessary details on what the required elements for establishing the respective right were. It appeared from the applicant's statement of the grounds that it only claimed protection in the UK and had failed to provide sufficient indication of UK law in this area.
OHIM's Cancellation Division found that the 1975 “KARO STEP trade mark” judgement, in the UK High Court of Justice cited by Admar did provide sufficient indication of the scope of copyright protection in the UK . The case in question concerned a trade mark comprising the words “KARO STEP” within a 4-pointed star device. The judge, considered that the drawing involved, while simple, was an artistic work within section 3 of the UK Copyright Act.
The Office found that the same principles should be applied to the sign. “There is, without any doubt, an artistic part to this sign. For the creation of the sign, some degree of skill and labour must have been used. It follows that it is reasonable to assume, on the basis of the evidence filed by the applicant, that the kind of a sign as the one in question in these proceedings is eligible for copyright protection in the United Kingdom .”
At no stage of the proceedings had the CTM proprietor explained how it arrived at the mark “NUBY” and nor had it contested the applicant's claims of prior use of the device in question.
“A simple comparison of the copyrighted work invoked by the applicant and the contested CTM registration enables us to establish that the CTM registration contains a simple and exact copy of a substantial part of the sign protected by copyright in the United Kingdom , the exclusive owner of which is the applicant.
invoked sign CTM registration“Consequently, Article 52(2)(c) CTMR is applicable and the CTM is declared invalid in its entirety”, the Cancellation Division ruled.
The service sector accounts for 73% of GDP followed by industry (25%) and agriculture (2%). Belgian interest in the CTM has grown year on year with 1 280 filed last year and a total of more than 9 700 CTMs filed to date.
|Registered Community Design||
Bin design visibly “novel”
The design, registered by Finnish company ECOSIR OY, in 2006 was disputed by the invalidity applicant – MOLOK OY, also from Finland. The applicant's arguments were made on Article 5 and 6 CDR because the contested design lacked “novelty and individual character”. Since part of the contested design, during the normal use, was located under ground and therefore not visible, the applicant argued that the hidden part could not be taken into account when estimating the novelty of the design.
OHIM's Invalidity Division ruled, however, that the garbage containers did not constitute component parts of complex products in the meaning of Article 3(c) CDR. The fact that the garbage containers were in themselves complex products was of no relevance for the assessment of the requirements of protection of the RCD. Article 4(2) CDR did not apply and the whole design, including the part intended to be buried, needed to be examined when determining novelty and individual character.
The invalidity applicant submitted, among other things, views of two prior designs for bins labelled “Monikko” and “Lokerikko” as follows:
The disputed RCD also comprised a design for garbage containers in a row. Every container had a curved top part with a rectangular lid in the middle. The top part of every container had two eyes to lift the garbage bag out of the container. Furthermore, the front and back part of the container had a horizontal wall structure. The bottom part had no wall structure and comprised plain side walls without any visible elements. The containers in the front view were almost four times higher than deep.
The Invalidity Division found that the containers of the prior design “Monikko” had a curved top with a rounded lid; while the containers of the design “Lokerikko” had a triangular top with a rectangular lid. The walls of the designs were structured by vertical rips extending from top to bottom. For both designs of containers the heights were similar to their depths. Since the lids, the wall structures and the proportions of both were different to the RCD, the Division found that the prior designs were not identical to the RCD and, hence, it did not lack novelty.
With regard to the ground that the RCD lacked individual character, the Invalidity Division said that informed users would be attentive to the different wall structures and the different proportions of the containers and would notice the different shapes of the lids. Consequently, the overall impressions produced on the informed user by the prior designs were different and the prior designs did not form an obstacle to the individual character of the RCD.
The most popular classes for RCDs are 26, 6 and 7. The most popular filing route for Belgian owners is via the Internet, which accounts for 59%, followed by fax (28%) and mail (12%).
|E-business at OHIM|
The e-Renewal facility for RCDs is very similar to the one existing for CTMs:
The RCD renewal process is very simple and easy to perform using the new electronic system. Clicking on the RCD e-renewal link displays the form. The renewal applicant introduces their details, selects the specific RCD numbers or the RCD application number (no need to type 0) to renew, and clicks on the include button.
The fee to be paid is automatically calculated and the next step is to select one of the options for payment: current account or bank transfer. When this process is completed, the user clicks on submit in order to validate the form at the OHIM end. The system returns a confirmation screen and the completed form in PDF format.
Finally, the status of the renewal can be monitored via RCD-ONLINE by clicking in the specific renewal section.
Should you require any further information, please consult the e-renewal help pages at http://oami.europa.eu/ows/rw/pages/QPLUS/forms/electronic/fileRenewalRCD.en.do
or contact us at firstname.lastname@example.org .Should you experience a technical incident when using the tool, you can contact the OHIM E-Business Hotline at email@example.com
State of play of future projects:
INTA – WIPO trade mark and design forum
The one-day conference, at the Radisson SAS Royal Hotel, will deal with developments in the Madrid System for international registration of marks and the Hague System for the international registration of industrial designs.
The ability to designate registered Community designs (RCDs) under the Hague system and the imminent adherence of the Unites States will be one topic for discussion in the morning. The afternoon sessions will examine recent changes to the Madrid Agreement and the repeal of the Safeguard Clause.
The two-day conference includes a keynote speech by OHIM President Wubbo de Boer and an update on OHIM by director of Industrial Property Department Vincent O'Reilly.
Other presentations will include an update on changes to trade mark rules from the UK-IPO, talks on unregistered rights, the overlap between trade marks and comparative advertising, the Spanish view on relative grounds, famous marks, and advertising and unfair competition in Spain.
This year's conference will examine the full life cycle of trade marks from creation, through protection and enforcement, to financial and competition issues.
* Statistical data for the month in course is not definitive. Figures may vary slightly after consolidation.
* Statistical data for the month in course is not definitive. Figures may vary slightly after consolidation.
Keywords: ECJ proceedings: admissibility – Admissibility: challenge of a finding of LOC – Opposition: likelihood of confusion (LOC) – LOC: comparison of marks – LOC: increased distinctive character of the earlier mark – Increased distinctive character: criteria.
The case was an appeal from a decision of the CFI of 7.9.2006 in T-168/04 by which the CFI had dismissed an appeal against a decision of the 2nd Board of 15.3.2004 in R 0326/2003-2 which related to the “Aire Limpio” (figurative mark) application. The sign applied for consisted of the representation of a pine tree containing the word element “Aire Limpio”. It had been applied for in Classes 3, 5 and 35 for perfumery and essential oils; scented air fresheners products; for advertising; commercial business handling, commercial administration and for office works.
It had been opposed on the basis of several earlier rights, including a CTM and 17 national marks. The said earlier rights are registered in Classes 3 and 5, all with a similar outline, though all but one different in having a white base and/or some wording on the body of the tree. The Opposition Division had rejected the opposition. It had considered, essentially, that the shape of a fir tree, as the element shared by the two earlier marks taken into account, was descriptive with regard to deodorising or air freshener goods and, therefore, was not very distinctive. The graphic and verbal differences between the two marks thus outweighed the weakly distinctive similarities, creating an overall impression that was sufficiently different to rule out any likelihood of confusion or association.
In contrast, the Board had partially allowed the opposition as regards the goods in Classes 3 and 5 in the CTM application. The Board, for the same ‘reasons of economy' as those given by the Opposition Division, had focused its comparison only on two earlier rights. In essence, it had held that the prolonged use and well-known nature in Italy of the ‘earlier mark' gave it a particularly distinctive character and that there was, having regard to that distinctiveness and the conceptual similarity between the two marks, a likelihood of confusion, at least on the part of the Italian public. In essence, the CFI had confirmed these findings. The 2nd Chamber of the ECJ agreed (Timmermans; Schiemann; Makarczyk; Bonichot; Toader, rapporteur).
(a) Admissibility: challenge of a finding of LOC
“(39) As a preliminary point, OHIM and Sämann argue that the appeal is inadmissible, claiming that the pleas raised by L & D seek a review of the assessment of the facts made by the Court of First Instance. In addition, Sämann claims, the appeal identically reproduces the grounds of the action against the contested decision.
(40) First of all, it is clear from Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice that an appeal lies on points of law only and that the appraisal of the facts thus does not constitute, save where they have been distorted, a point subject to review by the Court (see Case C-214/05 P Rossi v OHIM  ECR I-7057, paragraph 26, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 53).
(41) However, it must be stated that, in the present case, the appeal brought by L & D does not seek only to challenge findings of a factual nature made by the Court of First Instance but seeks, at least in part, a declaration of errors of law in the judgment under appeal.
(42) Secondly, the plea of inadmissibility alleging that the appeal identically reproduces the grounds of the action brought before the Court of First Instance, a plea which, moreover, Sämann has not further clarified, must also be rejected.
(43) It is evident from the Court's case-law that, provided that the appellant challenges the interpretation or application of Community law by the Court of First Instance, as L & D does in its appeal, the points of law examined at first instance may be discussed again in the course of an appeal (see, inter alia, Case C-496/99 P Commission v CASSucchi di Frutta  ECR I-3801, paragraph 50).
(44) Accordingly, the appeal must be declared admissible.”
(b) Enhanced distinctiveness acquired on the market; mark concerned forming part of another mark
“(47) The inference of the particularly distinctive character of mark No 91 991 from data relating to the ARBRE MAGIQUE mark.
(48) By its first complaint, L & D submits that the Court of First Instance was wrong to infer the particularly distinctive character of mark No 91 991 exclusively from data relating to the ARBRE MAGIQUE mark. In this connection, it casts doubt, inter alia, on whether it is actually possible to make such an inference in circumstances such as those of the present case.
(49) As the Court of First Instance recalled in paragraph 73 of the judgement under appeal, the Court of Justice has already held that the acquisition of the distinctive character of a mark may also be as a result of its use as part of another registered trade mark. It is sufficient that, in consequence of such use, the relevant class of persons actually perceives the product or service, designated by the mark, as originating from a given undertaking (see, to that effect, Nestlé, paragraphs 30 and 32).
(50) Although the facts in Nestlé differed from those in the present case, that does not necessarily mean, contrary to what L & D submits, that that finding of general application does not apply also to a factual and procedural context such as that at issue in the present case.
(51) In particular, the fact that Nestlé concerned the acquisition of distinctive character by a mark which it was sought to register, whereas the present case concerns establishing whether an earlier mark has a particularly distinctive character in order to ascertain whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, does not, as the Advocate General pointed out in point 51 of her Opinion, justify any difference of approach.
(52 ) The Court of First Instance was, consequently, justified in observing in paragraph 75 of the judgment under appeal that, if mark No 91 991 could be regarded as part of the ARBRE MAGIQUE mark, it was possible to establish the particularly distinctive character of the former on the basis of evidence relating to the use and well-known nature of the latter.
(53) In so far as L & D seeks, by this complaint, to cast doubt upon the finding, in paragraph 76 of the judgment under appeal, that mark No 91 991 constitutes part of the ARBRE MAGIQUE mark, since the representation of the silhouette of the fir tree plays a significant or even predominant role in the ARBRE MAGIQUE mark and corresponds to the sign of mark No 91 991, it must be observed that the Court made an assessment of a factual nature in this respect.
(54 ) As pointed out in paragraph 40 of this judgment, an appeal lies on points of law only and the assessment of the facts does not constitute, save where they have been distorted, a point subject to review by the Court of Justice.
(55 ) Furthermore, inasmuch as L & D further submits that the assessment of the Court of First Instance, according to which the silhouette of a fir tree plays a predominant role in the ARBRE MAGIQUE mark, diverges from the case-law of the Court of Justice, it need only be stated that, contrary to what the appellant asserts, that case-law does not in any way show that, in the case of mixed trade marks comprising both graphic and word elements, the word elements must systematically be regarded as dominant.
(56 ) It follows from the foregoing that this complaint must be rejected as in part inadmissible and in part unfounded.”
Keywords: Types of signs: three-dimensional (3D) signs. 3D signs: shape of the product itself – Absolute grounds for refusal: distinctiveness – Distinctiveness: 3D signs.
The case was an appeal from a decision of the CFI of 12.9.2007 in T-140/06 initially relating to a decision of the 4th Board of 24.2.2006 in R 0075/2005-4 relating to a 3D CTM application filed by Philip Morris for the shape of a cigarette box, for cigarettes.
The application had been rejected in all instances on the ground of lack of distinctiveness for the products concerned. The 5th Chamber of the ECJ (Tizzano; Levits, rapporteur; Kasel) rejected the appeal a limine as unfounded.
Keywords: ECJ proceedings: establishment of LOC an issue of fact – Opposition: likelihood of confusion (LOC).
The case was an appeal from a decision of the CFI of 16.5.2007 in T-491/04 ((2007) ECR II-45) relating to a conflict between CTM application “FOCUS”, word mark, and an earlier right in “MICRO FOCUS” (figurative mark). The CTM had been applied for for a range of goods and services in Classes 3, 6, 7, 8, 9, 14, 15, 16, 20, 21, 24, 25, 25, 28, 29, 32-36, 38, 39, 41 and 42. The earlier right is registered in Classes 9, 16, 41 and 42.
The Opposition Division had allowed the opposition in relation to the four classes covered by the earlier right. In contrast, the 2nd Board had rejected the opposition (R 0542/2002-2). On appeal, the CFI had confirmed the decision of the Opposition Division. On further appeal by the CTM applicant, the 5th Chamber of the ECJ (Tizzano; Ilesic, rapporteur; Levits) handed down an Order rejecting the appeal on the ground that establishment of LOC is an issue of fact and, unless the facts have been distorted, cannot be dealt with by the ECJ.
Keywords: Absolute grounds for refusal: distinctiveness.
The case was an appeal from a judgment of the CFI of 24.1.2008 in T-88/06 by which the CFI had confirmed rejection of CTM application “Safety 1st ” for bicycles, car seats, car beds, folding convertible car seats, car booster seats, child carriers, namely, strollers and carriages (Class 12); furniture, namely, juvenile high chairs, folding play yards for children, cribs, bassinets, toddler and youth beds, booster seats, bed rails, head boards, mattress for cribs, juvenile dressing tables, cradles and rocking chairs (Class 20); infant bath tubs, baby toilet trainers (Class 21), and play and exercise equipment for children, namely, doorway jumpers, floor bouncers, floor exercisers, swings, and child walker/jumpers in Class 28. The examiner, the Board and the CFI had held that the mark applied for is devoid of any distinctive character within the meaning of Article 7(1)(b) CTMR for the goods in question.
Keywords: European Trade Marks Directive: Article 4(4)(a), marks with a reputation – Reputation marks: scope of protection – Reputation marks: notion of risk of dilution.
This reference for a preliminary ruling from the Court of Appeal of England and Wales concerns the extent to which trade marks with a reputation may be protected against dilution. The issue in the national proceedings is whether the owners of the trade mark “Intel”, which has a reputation in respect of computer related goods and services, may obtain invalidation of the later mark ‘Intelmark', registered in respect of marketing services. In that context, the Court of Appeal seeks further clarification of the nature of the ‘link' required by the case-law, and of the concepts of (i) unfair advantage and (ii) detriment to the distinctive character or repute of the earlier mark.
Intel Corporation Inc. (‘Intel') owns a number of UK and Community trade marks predating 1997, consisting of or including the word “Intel”, registered in Classes 9, 16, 38 and 42 for what the referring court describes as ‘essentially, computers and computer linked goods and services'. The referring court finds that ‘Intel' has a ‘huge reputation' as a trade mark, already acquired by 1997. It is further stated to be ‘an invented word with no meaning or significance beyond the products which it identifies', and to be ‘unique' in that it has not been used by anyone for any goods or services other than Intel's own. CPM United Kingdom Ltd owns the UK trade mark ‘Intelmark', registered in 1997 in Class 35 for ‘marketing and telemarketing services' (it had been coined, according to the referring court, from the initial syllables of the phrase ‘integrated telephone marketing'). Intel seeks a declaration, on the basis of the national provisions transposing Article 4(4)(a) TMD that CPM's mark is invalid. Following dismissal at first instance and by the High Court, the fate of its claim now falls to be determined by the Court of Appeal, which seeks guidance from the ECJ on the following questions:
Advocate General Sharpston analysed the available definitions for reputation and dilution, including some from outside the European Union, and the respective case-law.
(a) Reputation and dilution (extracts)
“(8) (…) In an apparent paradox, the best known trade marks are particularly vulnerable to the existence of similar marks even in highly dissimilar product areas, where actual confusion is unlikely. Moreover, such marks frequently perform functions which go beyond linking goods or services to a uniform source. They present a powerful image of quality, exclusivity, youth, fun, luxury, adventure, glamour or other reputedly desirable lifestyle attributes, not necessarily associated with specific products but capable of presenting a strong marketing message in itself (see also the Opinion of Advocate General Ruiz-Jarabo in Case C-206/01 Arsenal Football Club  ECR I-10273, at points 46 and 47).
(9) One can imagine how, if ‘Coca-Cola' were registered only in respect of soft drinks, the distinctiveness of the mark could be eroded if it (or a similar mark or sign) were used by others in respect of a host of unrelated products; or how its reputation could be harmed if it were used for low-grade engine oils or cheap paint strippers.
(10) The notion of protecting trade marks against dilution arose in response to such concerns. As Advocate General Jacobs noted in Adidas I, (C-408/01 (2003) ECR I-12537, Opinion points 37 and 38) it was first articulated by Schechter in 1927 – although Schechter considered that it was ‘arbitrary, coined or fanciful marks', rather than famous marks, which should benefit from such protection. (Frank I. Schechter , The rational basis of trademark protection, Harvard Law Review, 1927, p. 813. Schechter himself drew inspiration from a 1924 decision of the Landesgericht Elberfeld, Germany, which allowed the owner of the well-known trade mark Odol , registered for mouthwash, to obtain cancellation of registration of the same mark for steel products, on the ground that the complainant had ‘the utmost interest in seeing that its mark is not diluted [verwässert]: it would lose in selling power if everyone used it as the designation of his goods' (Schechter's translation). It is satisfying to find that the concept of dilution has its origins in mouthwash.
(11) Two types of dilution are commonly recognised: blurring and tarnishment (these are the terms used in the United States Trademark Dilution Revision Act of 2006. The term ‘dilution' is, however, sometimes used only for blurring, with tarnishment treated as a separate concept). Broadly, the former corresponds to the notion of detriment to the distinctive character of the earlier mark in Article 4(4)(a) of the Directive, and to my first example concerning Coca-Cola, while the latter corresponds to that of detriment to its repute, and to my second example.
(12) Article 4(4)(a) adds a further category of abuse: taking unfair advantage of the distinctiveness or repute of the earlier mark, often referred to as free-riding (see point 39 of, and footnote 18 to, the Opinion in Adidas I. In this Opinion, when I use the terms ‘free-riding', ‘blurring' and ‘tarnishment', I do so as shorthand for, respectively, the notions of taking unfair advantage of the distinctive character or repute of the earlier mark, being detrimental to the distinctive character of that mark and being detrimental to the repute of that mark, as embodied in the Directive).
(13) The protection thus afforded concerns less the link established between a product and its source than the use of the trade mark as a communication tool, carrying a broader marketing message.”
(b) Proposed answer
“For the purpose of Article 4(4)(a) of Council Directive 89/104/ EEC :
Keywords: Opposition: likelihood of confusion (LOC).
The action had been directed against a decision of the 1st Board of 26.9.2006 in R 1407/2005-1 relating to CTM application 2 712 982, word mark “Cita del Sol”, applied for for goods and services in Classes 33 and 39.
It had been opposed by Miguel Torres SA on the basis of various earlier rights in “SOL” (word mark), in “VIÑA SOL” (word mark) and in figurative marks containing the words VIÑA SOL, all registered in Class 33. The opposition had been rejected on the ground of lack of a risk of confusion. Since the opponent (plaintiff) withdrew the action, the case was closed.
Keywords: Absolute grounds for refusal: descriptiveness.
The action had been directed against a decision of the 2nd Board of 20.9.2006 in case R 0751/2006-2, in respect of CTM application 4 220 811, “VASCULAR WRAP”, word mark, applied for in Classes 5 and 10 for dressings, bandages, coatings and compositions for surgical applications, and for medical devices for surgical applications. It had been rejected because in the field of medicine the term is used as the designation of a particular product which is applied to patients with vascular disease and serves to dispense the required drugs in a specific manner. An Internet search had revealed that the sign applied for is not only used by the CTM applicant but also by other traders to indicate a vein wrapping device that functions as a drug delivery system and, secondly, that a proposed limitation does not overcome the objection, because the same grounds of rejection applicable to the initial list of goods equally applied to the amended specification. Since the CTM applicant (plaintiff) indicated that it wishes to discontinue proceedings, the case was closed.
Keywords: Opposition: likelihood of confusion (LOC) – LOC: comparison of marks.
The action had been brought against a decision of the 4th Board of 27.4.2005 in R 0416/2004-4 relating to CTM application “Quartz”, word mark, which had been applied in Class 9 for: “A computer operating system functionality specifically intended for use by IT developers with the aim of improving and accelerating the reproduction of digital images in application programs, except those products intended for the banking sector”.
It had been opposed on the basis of an earlier right in “QUARTZ” (figurative mark), registered for a range of goods and services in Classes 9 and 42, namely: packets of programs for banking; computer programming, computer data processing, computer software development, assistance and consulting services in the computer field, electronic data processing, computer software design and development, licensing of computer software and computer applications; all these services being linked to banking. The opposition had been allowed and the 3rd Chamber of the CFI (Jaeger, rapporteur; Azizi; Cremona) confirmed that decision relying on standard criteria.
Keywords: Opposition: proof of use (POU) – Opposition: likelihood of confusion (LOC) – LOC: comparison of goods – LOC: comparison of marks – LOC: attentiveness of the public: Class 25 products.
The action had been directed against a decision of the 1st Board of 17.11.2004 in R 0620/2003-1 relating to CTM application 876 094, word mark “ROSSI”, filed in respect of outer and underclothing, gloves, collar protectors, scarves, neckties, headgear in Class 25. It had been opposed on the basis of several earlier rights in “Sergio Rossi” registered for a large range of goods in Class 25, amongst which an allegedly well-known brand SERGIO ROSSI in Italy, for footwear.
The Opposition Division had allowed the opposition. It had considered that the opponent (plaintiff in the action) had proved genuine use only of an earlier Italian registration and an international registration in respect of footwear. It had considered the marks to share a high degree of similarity, to the extent that they are visually similar and phonetically and conceptually very similar. As to the comparison of the goods, the Opposition Division had considered the contested goods ‘outer and underclothing, gloves, collar protectors, scarves, neckties' to be similar to ‘footwear' covered by the earlier registrations taken into account (resulting in a finding of LOC). Finally, it had stated that such finding made it superfluous to examine the ground under Article 8(5) CTMR.
In contrast, the Board had rejected the opposition. Addressing the issue of LOC, the Board had concluded that, due in particular to the visual, phonetic and conceptual dissimilarities between the marks, and notwithstanding a degree of similarity between the goods, there was no likelihood of confusion (in Italy and France ). The Board's reasoning can be summarized as follows: The purchase of clothing and footwear attracts a certain degree of attention from the public, since the appearance and comfort of such goods is bound to play a deciding role in the decision to purchase. In line with the judgment in Avex, of 13 July 2004, T-115/02, ‘clothing' and ‘footwear' are similar. Concerning the signs, however, they are visually and phonetically dissimilar, due to their different number of words and letters, and to the different number of syllables. Comparing the signs from a conceptual point of view, the Board had referred to the Board's decision of 28.2.2003 in R 509/2002-1, SISSI ROSSI/SERGIO ROSSI (figurative marks), paragraphs 33 – 38, and had noted that the presence of the expression ROSSI is extremely widespread because it is very common in Italy as a surname and that in a case such as this, the general perception of a surname as the more distinctive part of a sign containing a name and a surname is affected by the fact that ‘ROSSI' is one of the most common surnames in Italy, possibly even the quintessential Italian surname. The Italian public is accustomed to the fact that many Italians share this surname even though they are unrelated to each other. It was, therefore, unlikely that the relevant public in Italy would make a semantic link between the marks ROSSI and SERGIO ROSSI. The Board had added that the perception of the signs by the average consumer in France would probably coincide on the whole with that of the Italian consumer. Since the plaintiff made a declaration that it wished to discontinue proceedings, the case was closed.
Keywords: Opposition: likelihood of confusion (LOC) – LOC: comparison of marks.
The action had been directed against a decision of the 2nd Board of 25.10.2007 in R 1557/2006-2 relating to a conflict between CTM application “Diaquest”, word mark, which had been applied in Classes 1, 5 and 42 for diagnostic preparations for scientific purposes; pharmaceutical and veterinary preparations and substances for immunotherapeutic purposes; diagnostic and test preparations for immunotherapeutic purposes, and for development, research and tests in the field of immunotherapy. An opposition had been lodged based on two earlier rights in “Quest Diagnostics” registered for goods and services in Classes 5, 10, 35, 39 and 42. The Opposition Division and the Board had rejected the opposition on the ground that the marks are dissimilar enough to exclude LOC. Since the parties concerned, the CTM applicant and the opponent, have reached an out of court agreement, the case was closed.
Keywords: Opposition: likelihood of confusion (LOC) – LOC: relevant public – LOC: comparison of marks.
The action had been directed against a decision of the 2nd Board of 8.1.2007 in R 0658/2006-2 relating to CTM application “Polaris” (figurative mark). It had been opposed on the basis of “Polar”, word mark, an earlier Community trade mark.
The goods in respect of which registration had been sought fall within, inter alia , Class 9 and correspond to the following description: computer software for enterprise-wide use in banks, insurance, credit unions and other financial institutions; computer software for use in collecting, integrating and analyzing financial data, in allowing access to banking and investment accounts and insurance policies, in conducting all types of banking and financial transactions, in accessing financial information, banking records and services over computer and information networks, in foreign exchanges and domestic treasury operations and transactions, in securities trading, payments and fund transfer, in portfolio management, in audit and risk management applications, in integrating back office reporting functions, in reconciliation of banking transacting, in accounting, reporting and operational facilities management, all the above in banks and other financial institutions; computer software for performing billing and accounts receivables applications in the insurance industry, for use in the design and implementation of insurance policies; computer software for use in online securities trading, in applications for brokerage firms and custodial services relating to securities; computer software for electronic commerce for banks and other financial institutions.
The earlier CTM Polar covers, inter alia, computers, computer programmes (recorded), recorded operating system programmes (for computers); the aforesaid goods not for use in the graphic trades, printing industry, print converters and similar trades', in Class 9. The Opposition Division had allowed the opposition whereas the Board had rejected it. It had considered, essentially, that, whilst the marks covered identical goods, namely software for use in financial institutions, the conflicting signs were conceptually different and had sufficiently distinctive visual and aural features to rule out a likelihood of confusion on the part of the relevant public, which is circumspect and very attentive and consists of specialised staff in financial institutions responsible for the acquisition of the specialist software in question.
Following a change in the composition of the chambers of the CFI, the Judge-Rapporteur had been assigned to the 6th Chamber, to which the present case had also been assigned. As Judge Tchipev was prevented from sitting in this case, the President of the CFI had designated Judge Truchot to complete the Chamber pursuant to Article 32(3) of the Rules of Procedure. The 6th Chamber (Meij; Vadapalas, rapporteur; Truchot) confirmed the Board's findings.
Keywords: Opposition: likelihood of confusion (LOC) – LOC: comparison of marks – Comparison of marks: phonetic similarity.
The action had been directed against a decision of the 2nd Board of 30.11.2006 in R 0122/2006-2 relating to CTM application “ZIPCAR”, word mark, which had been applied for in respect of goods and services in, inter alia, Class 39 for arrangement of travel and transportation; transportation reservation services; motor vehicle sharing services; vehicle rental; arrangement of rental of vehicles; vehicle rental reservation services; scheduling, planning, organising, managing and providing the temporary use of motor vehicles; information, advisory and consultancy services relating to the foregoing. It had been opposed on the basis of “CICAR”, word mark, registered in Spain in respect of services in Class 39 for vehicle rental reservation services. The opposition had been allowed. In essence, the Board had considered that the relevant public is the average Spanish consumer. The Board then had stated that the services covered by the mark applied for and those covered by the earlier mark are, as regards some of those services, identical, or at least very similar, and, as regards others, not materially different. The Board had lastly observed that, while the marks are not visually similar and have no conceptual content, they are very similar phonetically and that, since the majority of car rental contracts are entered into over the telephone, it is the phonetic aspect which is critical in the present case. The 8th Chamber of the CFI ( Martin s Ribeiro; Papasavvas; Wahl, rapporteur) agreed, setting out some more details as regards phonetical comparison of word marks in a foreign language.
“(41) As regards the phonetic aspect, it must be noted that it is difficult to establish with any certainty how the average consumer will pronounce a word of foreign origin in his native language. First, there is no certainty that the word will be recognised as being foreign. Secondly, even if the foreign origin of the word in question is recognised, it may not be pronounced in the same manner as in the original language. A correct pronunciation according to the original language presupposes not only knowledge of that pronunciation, but also the ability to pronounce the word in question with the correct accent (see, to that effect, HOOLIGAN, paragraph 58).
(42) In the present case, the average Spanish-speaking consumer will not perceive ZIPCAR as an English word mark, since the first syllable (‘zip') is not an English word which is generally known by that consumer. Besides, even on the assumption that the average Spanish-speaking consumer recognises the foreign origin of the words ‘zip' and ‘car', there is no reason to think that he will pronounce ZIPCAR according to the rules of English pronunciation. It is a fortiori very unlikely that the average consumer in Spain will pronounce the term ‘cicar' in the English way, when any perception by him of its first syllable as being the acronym of the English name for the Islas Canarias is a matter of chance, particularly so when the Spanish acronym of the Canary Islands is ‘IC'.
(43) Having regard to those considerations, the Board of Appeal correctly stated, in the contested decision, that the conflicting marks were phonetically very similar. As was determined in the contested decision and contrary to the applicant's argument in paragraph 21 above, according to the rules of pronunciation of ordinary Spanish, the first letter of each of the two conflicting marks (‘c' and ‘z') is pronounced in the same way, and in ZIPCAR the first consonant of the combination ‘pc' is practically inaudible. Consequently, the two marks are pronounced in a manner which is very similar, if not almost identical.”
Keywords: Opposition: likelihood of confusion (LOC).
The action had been directed against a decision of the 2nd Board of 16.6.2006 in R 0793/2005-2 relating to CTM application “L´Altra Moda” (figurative mark), filed by L´Altra Moda SpA ( Rome ) for a range of goods in Classes 3, 18 and 25.
It had been opposed on the basis of an earlier right in “Alba Moda” (figurative mark) which is registered in Germany for goods in Class 25. The opposition had been rejected by the Opposition Division on the formal ground that the opponent had failed to submit a complete translation of the registration certificate. That decision had been revoked by the Board. Subsequently, the Opposition Division had rejected the opposition on substance, namely on the ground that the marks are sufficiently dissimilar to exclude LOC. The Board then had confirmed the second decision. The 5th Chamber of the CFI (Vilaras; Prek; Ciucá, rapporteur) agreed.
Keywords: Opposition: earlier right with reputation, Article 8(5) CTMR – Risk of dilution: criteria – Dilution criteria: association.
The action had been brought against a decision of the 2nd Board of 11.1.2006 in R 0825/2004-2 relating to CTM application “Mineral Spa”, word mark, applied in Class 3 for soaps, perfumeries, essential oils, preparations for body and beauty care, preparations for the hair, dentifrices. A notice of opposition had been lodged by the Belgian company Spa Monopole, based on the word mark “SPA” registered with the Benelux Trade Mark Office in respect of the following goods: mineral water and aerated waters and other non-alcoholic beverages, syrups and other preparations to make beverages in Class 32. In support of the opposition it had relied, inter alia , on Article 8(5) CTMR. The opposition had been allowed by the Opposition Division under Article 8(5) CTMR.
In its appeal, the CTM applicant had stated that the opponent had not proven the reputation of the earlier trade mark. It also had disputed that the conflicting marks were similar given that the word ‘spa' is descriptive in English. Finally, it had claimed that it is not possible to transfer reputation from mineral water to cosmetic products. The Board had confirmed the findings of the Opposition Division. It had held that the word ‘mineral' was descriptive of some component of the goods covered by the trade mark application and that the word ‘spa' could constitute the most distinctive element of the trade mark applied for, on account of the reputation of the earlier trade mark SPA in the Benelux, where that word has acquired a secondary meaning and a strong distinctive character in relation to mineral water and, by extension, with respect to goods having a certain nexus with mineral water. According to the Board, since the earlier trade mark is included in the trade mark applied for, the conflicting marks are sufficiently similar visually, aurally and conceptually for the average consumer to establish a link between them, without, however, confusing them. The Board further held that despite the weak distinctive character of the word ‘spa', it is not unlikely that consumers in the Benelux might associate the trade mark applied for with the reputed trade mark SPA . Even though cosmetic products are not similar to the goods covered by the earlier trade mark, the difference between them is not sufficiently great to prevent the general public from establishing a link between them. On account of that link – the association between the two marks and the similarity of the goods in question – it is quite likely that the CTM applicant will take unfair advantage of the repute and the selling power of the earlier trade mark.
The 8th Chamber of the CFI (Martin s Ribeiro; Wahl, rapporteur; Dittrich) agreed, mainly on the following grounds:
Findings of the Court
“(25) It is apparent from the wording of Article 8(5) of Regulation No 40/94 that its application is subject to the following conditions: first, that the marks at issue are identical or similar; secondly, that the earlier mark cited in opposition has a reputation and, thirdly, that there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (SPA -FINDERS, paragraph 30, and Case T-215/03 Sigla v OHIM – Elleni Holding (VIPS)  ECR II-711, paragraph 34).
(26) In order better to define the risk referred to by Article 8(5) of Regulation No 40/94, it must be pointed out that the primary function of a mark is unquestionably that of an ‘indication of origin' (see the seventh recital in the preamble to Regulation No 40/94). The fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as luxury, lifestyle, exclusivity, adventure, youth. To that effect the mark has an inherent economic value which is independent of and separate from that of the goods or services for which it is registered. The messages in question which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, Article 8(5) CTMR ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (VIPS, paragraph 35).
(27) According to the case-law, the harm referred to in Article 8(5) of Regulation No 40/94 is the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the public concerned makes a connection between them, that is, establishes a link between them, even though it does not confuse them. The existence of that link, which must be appreciated globally, taking into account all factors relevant to the circumstances of the case, is therefore an essential condition for the application of that provision (see, by analogy, as regards Article 5(2) of First Council Directive 89/104/ EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), Case C-408/01 Adidas-Salomon and Adidas Benelux  ECR I-12537, paragraphs 29, 30 and 38; see also VIPS, paragraph 47).”
(b) Risk of dilution
Unfair advantage and lack of due cause
“(37) It is necessary, in the present case, to determine whether the Board of Appeal's assessment – that the applicant is quite likely to take unfair advantage, without due cause for use, of the repute of the earlier trade mark – is correct. The risk that the use without due cause of the mark applied for takes unfair advantage of the repute of the earlier mark is sufficient for Article 8(5) CTMR to apply (see, to that effect, VIPS, paragraph 36).
(38) That risk must be distinguished from the likelihood of confusion covered by Article 8(1)(b) of Regulation No 40/94, the existence of which is not a condition for the application of Article 8(5) of that regulation. The risk that the use without due cause of the mark applied for takes unfair advantage of the repute of the earlier trade mark continues to exist where the consumer, without necessarily confusing the commercial origin of the product or service in question, is attracted by the mark applied for itself and buys the product or service covered by it on the ground that it bears that mark, which is identical or similar to an earlier mark with a reputation (VIPS, paragraphs 41 and 42).
(39) The purpose of Article 8(5) of Regulation No 40/94 is not to prevent the registration of any mark which is identical or similar to a mark with a reputation. The objective of that provision is, notably, to enable the proprietor of an earlier mark with a reputation to oppose the registration of marks which are likely either to be detrimental to the repute or the distinctive character of the earlier mark or to take unfair advantage of that repute or distinctive character. In that connection, it should be made clear that the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. He must however adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (SPA FINDERS, paragraph 40, and VIPS, paragraph 46).
(40) The concept of the unfair advantage taken of the repute of the earlier mark by the use without due cause of the mark applied for concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation (VIPS, paragraph 40).
(41) The risk of such a transfer has been established in the present case. First, as was stated correctly at paragraph 40 of the contested decision, the relevant public for the trade mark applied for, that is to say the general public in the Benelux, may be the same as that targeted by the earlier trade mark.
(42) Second, the goods covered by the trade mark applied for are not so different from those covered by the earlier trade mark. As the Board of Appeal points out at paragraph 40 of the contested decision, thermal waters, cosmetic products, soaps and essential oils can be used together for skin and beauty treatments. In addition, mineral waters and mineral salts can be used in the production of soaps, other cosmetic products and preparations for the hair. Furthermore, mineral water operators sometimes sell cosmetic products comprising mineral water.
(43) Third, the image of the earlier trade mark and the message that it conveys relate to health, beauty, purity and richness in minerals. That image and that message can apply also to the goods in respect of which registration was sought by the applicant, since they are used to preserve and improve health or beauty. Therefore, the applicant could take unfair advantage of the image of the earlier trade mark and the message conveyed by it in that the goods covered by the trade mark applied for would be perceived by the relevant public as bringing health, beauty and purity. Accordingly, the risk of a free-riding transfer of the advertising effort made by the proprietor of the earlier mark to the mark applied for has been established.
(44) In addition, the applicant's argument based on the fact that water is present in a vast number of different goods cannot succeed. As OHIM submitted at the hearing, it is not a question of whether toothpaste and perfume contain mineral water, but whether the public may think that the goods concerned are produced from or with mineral water.
(45) It follows that OHIM was justified in finding, in the contested decision, that it is likely that the applicant will take unfair advantage of the repute of the earlier trade mark. Consequently, the contested decision is not vitiated by error in that regard.
(46) In the contested decision, the Board of Appeal found a lack of due cause within the meaning of Article 8(5) CTMR and the applicant has not submitted any legal or factual evidence to cast doubt on that finding.”
Keywords: Board proceedings: remittance of a case – Opposition: likelihood of confusion (LOC) – LOC: comparison of goods – Comparison of goods: similarity between wine and beer in the eyes of Austrian consumers? – Comparison of goods: alcoholic and non-alcoholic beverages (impact of different classification) – LOC: comparison of marks.
The action had been directed against a decision of the 1st Board of 5.4.2006 in R 0099/2005-1 in a conflict between The Coco-Cola Company and San Polo srl. The CTM application at issue had been “Mezzopane” (figurative mark) which had been opposed on the basis of “Mezzo” and “Mezzomix”.
The goods in respect of which registration had been sought had been wines in Class 33. The opposition had been based on LOC and on the argument that one of the earlier rights enjoyed reputation within Article 8(5) CTMR. It related to the following earlier marks: word mark “MEZZO”, registered in Austria and covering the following goods in Class 32: beers, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; and word mark “MEZZOMIX”, registered in Germany and covering ‘mixed lemonade-based drinks' in Class 32.
The Opposition Division had allowed the opposition on the ground that there was LOC between the trade mark applied for and the Austrian trade mark “MEZZO”, in view of the similarity of the overall impression given by the signs in question and certain similarities between the beers and wines in question. It had taken the view that that analysis was a sufficient basis for refusing registration of the CTM application and that it was not therefore necessary to examine the opposition put forward on the basis of the German trade mark “MEZZOMIX” and its purported reputation.
On subsequent appeal the Board had upheld the CTM applicant's claim and had annulled the decision of the Opposition Division. According to the Board, there was no LOC between the marks in question on the ground that the goods are dissimilar. The Board, however, had taken the view that, since the Opposition Division had not ruled on the application of Article 8(5) CTMR, the case should be referred back to it for examination of that plea. The 3rd Chamber of the CFI (Azizi, Rapporteur; Cremona ; Frimodt Nielsen) confirmed the Board's findings as regards absence of LOC. Since the plaintiff had made a statement in court that it solely sought to rely on Article 8(1)(b) CTMR, the issue of reputation was not dealt with (Mystery and Vitafruit judgments distinguished).
(a) Comparison of goods
“(48) The applicant (plaintiff) challenges the assessment carried out by the Board of Appeal of the similarities and differences between the goods covered by the marks at issue.
(49) So far as concerns the comparison between the wines covered by the mark applied for and the beers, ale and porter to which the MEZZO mark refers, the applicant considers that (i) the goods are of the same kind: alcoholic beverages; (ii) the goods at issue have the same intended purpose: human consumption; (iii) the goods are used in a similar way by consumers: to accompany a meal or as an aperitif; (iv) those goods are aimed at the same public: end consumers; (v) they are goods marketed in the same form: in bottles; (vi) the goods are distributed through the same channels: bars, restaurants, supermarkets, hypermarkets, and so on; and it is usual to place them side by side in those outlets and they appear side by side on menus in restaurants and so on; (vii) the advertising of those goods is carried out by the same means: television, radio, magazines and so on; (viii) the goods are, to a certain extent, competing goods: a consumer may choose to drink wine or beer with his meals, as an aperitif, and so on.
(50) The applicant maintains that those points common to the goods in question – combined with the fact that identical or similar signs are affixed to the goods in order to market them – are such as to make the targeted public believe that those goods have been produced under the control of a single undertaking which is responsible for their quality (see, by analogy, Canon, cited above, paragraph 28).
(51) According to the applicant, those considerations are not invalidated by the fact that the goods in question are different as regards their ingredients and their methods of production.”
(i) Comparison of wines and beer (relevant public Austria )
“(62) In the present case, it is necessary to compare (i) the wines covered by the mark applied for, MEZZOPANE, and the ‘beers, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages' covered by the earlier Austrian mark, MEZZO, and (ii) the wines covered by MEZZOPANE and the mixed lemonade-based drinks covered by the earlier German mark, MEZZOMIX (…)
(63) So far as concerns, first, the nature, end users and method of use of wines and beers, ale and porter, it is correct, as argued by the applicant, that those goods constitute alcoholic beverages obtained by a fermentation process and consumed during a meal or drunk as an aperitif.
(64) However, it must be stated – as did the Board of Appeal – that the basic ingredients of those beverages do not have anything in common. Alcohol is not an ingredient used in the production of those beverages, but is one of the constituents generated by that production. Moreover, although the production of each of those beverages requires a fermentation process, their respective methods of production are not limited to fermentation and are fundamentally different. Thus, crushing grapes and pouring the must into barrels cannot be assimilated to the brewing processes of beer.
(65) Moreover, the fact that beer is obtained through the fermentation of malt, whereas wine is produced through the fermentation of the must of grapes, means that the end products generated differ in colour, aroma and taste. That difference in colour, aroma and taste leads the relevant consumer to perceive those two products as being different.
(66) In addition, despite the fact that wine and beer may, to a certain extent, satisfy the same need – enjoyment of a drink during a meal or as an aperitif – the Court considers that the relevant consumer perceives them as two distinct products. The Board of Appeal was therefore correct to consider that wines and beers do not belong to the same family of alcoholic beverages.
(67) As regards, next, the complementary nature of wine and beer as referred to in the case-law cited in paragraph 61 above, it should be borne in mind that complementary goods are goods which are closely connected in the sense that one is indispensable or important for the use of the other (see Case T-169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI)  ECR II-685, paragraph 60). In the present case, the Court considers that wine is neither indispensable nor important for the use of beer and vice versa. There is indeed nothing to support the conclusion that a purchaser of one of those products would be led to purchase the other.
(68) As to whether wine and beer are in competition with each other, it has previously been held, in a different context, that there is a degree of competition between those goods. The Court of Justice thus considered that wine and beer are, to a certain extent, capable of meeting identical needs, which means that a certain measure of mutual substitutability must be acknowledged. Nevertheless, the Court of Justice pointed out that, in view of the significant differences in quality – and, accordingly, in price – between wines, the decisive competitive relationship between wine and beer, a popular and widely consumed beverage, must be established by reference to those wines which are the most accessible to the public at large, that is to say, generally speaking, the lightest and least expensive varieties (see, by analogy, Case 356/85 Commission v Belgium  ECR 3299, paragraph 10; see also, Case 170/78 Commission v United Kingdom  ECR 2265, paragraph 8, and Case C-166/98 Socridis  ECR I-3791, paragraph 18). There appears to be nothing to indicate that that assessment does not also apply in the present case. Accordingly, it must be acknowledged, as the applicant indicates, that wine and beer are, to a certain extent, competing goods.
(69) Finally, in accordance with the Board of Appeal's assessment, it must be accepted that the average Austrian consumer will consider it normal for wines, on the one hand, and beers, ale and porter, on the other, to come from different undertakings – and will therefore expect this – and that those beverages do not belong to the same family of alcoholic beverages. There is nothing to suggest that the Austrian public is not aware, and does not notice the characteristics distinguishing beer and wine as regards their composition and method of production. On the contrary, the Court considers that those differences are perceived as making it unlikely that the same undertaking would produce and market the two types of beverage at the same time. For the sake of completeness, it should be noted that it is well known that, in Austria , there is a tradition of producing both beer and wine, and that this is done by different undertakings. Consequently, the average Austrian consumer expects beers, ale and porter, on the one hand, and wines on the other, to come from different undertakings.
(70) In the light of all of the preceding factors, the Court considers that, for average Austrian consumers, there is little similarity between wines and beers.”
(ii) Comparison between wine and other beverages
“(71) So far as concerns the comparison between, on the one hand, the wine covered by the mark applied for (MEZZOPANE) and, on the other, the ‘mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages' covered by the earlier mark, MEZZO, and the ‘mixed lemonade-based drinks' covered by the earlier mark, MEZZOMIX, it is necessary first to determine whether the goods covered by the earlier marks at issue include both non-alcoholic beverages and alcoholic beverages.
(72) In that regard, the Board considered – as does the applicant – that the beverages covered by the earlier marks could contain alcoholic beverages other than beers. The defendant challenges that assessment on the ground that it is contrary both to the systematic nature of the classification of the goods in Classes 32 and 33 to which the goods in question belong and to the explanatory notes to the list of the Classes of goods and services of the Nice Agreement.
(73) The ‘mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages' covered by the MEZZO mark and the ‘mixed lemonade-based drinks' covered by the MEZZOMIX mark were registered in Class 32.
(74) However, according to the clear and unambiguous wording of Class 33, that class includes all alcoholic beverages with the sole exception of beers. Consequently, the mere fact that, in Class 32, the words ‘non-alcoholic' do not refer expressly to ‘fruit drinks and fruit juices' and ‘syrups and other preparations for making beverages' has no bearing on the question whether or not that class could contain alcoholic products other than beer. Not only does the wording of Class 33 leave no scope for interpreting it other than as including all alcoholic beverages except for beers but, in addition, the explanatory notes to Classes 32 and 33 support the interpretation that Class 33 includes all alcoholic beverages except beers. According to the explanatory note to Class 33, as soon as an alcoholic beverage is ‘de-alcoholised', it is taken out of Class 33 and is included in Class 32. The explanatory note to Class 32 confirms that by stating that it includes ‘de-alcoholised' drinks.
(75) Consequently, the general description set out in the explanatory note to Class 32 to the effect that it includes ‘mainly' non-alcoholic beverages must be read in a manner consistent with the wording of Class 33. Accordingly, the beginning of the explanatory note to that class and the other clarification in the explanatory note to Class 32 must be read as meaning that Class 32 includes, in principle, only non-alcoholic drinks and preparations, with beers being the sole exception to the non-alcoholic nature of beverages included in that class.
(76) That assessment is not called into question by the case-law resulting from Case T-296/02 Lidl Stiftung v OHIM – REWE Zentral (LINDENHOF)  ECR II-563, since that judgment only acknowledges the theoretical possibility that fruit drinks and fruit juices could be regarded as including alcoholic drinks, without systematically interpreting Classes 32 and 33. Moreover, in LINDENHOF it was considered that the terms ‘fruit juice drinks' and ‘fruit juices' were reserved to products without alcohol (paragraph 53 of the judgment).
(77) Thus, the ‘mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages' covered by the earlier mark, MEZZO, and the ‘mixed lemonade-based drinks' covered by the earlier mark, MEZZOMIX, belonging to Class 32, must be regarded as including only products without alcohol.
(78) It is in the light of that clarification that an analysis must be made of the likelihood of confusion between, on the one hand, the wine covered by the MEZZOPANE mark and, on the other, the ‘mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages' covered by the earlier mark, MEZZO, and the ‘mixed lemonade-based drinks' covered by the earlier mark, MEZZOMIX. (…)
(79) First, as regards the nature, end users and method of use of the wine covered by the mark applied for and the non-alcoholic beverages covered by the earlier marks, it must be observed that the very nature of those goods differs in terms of the presence or absence of alcohol.
(80) In that respect, it has already been held that the average German consumer is used to and aware of the distinction between alcoholic and non-alcoholic drinks, which is, moreover, necessary, since some consumers do not wish to – or cannot – consume alcohol (LINDENHOF, cited above in paragraph 76, paragraph 54). Accordingly, the average German consumer will make that distinction when comparing the wine covered by the mark applied for and the non-alcoholic beverages covered by the earlier mark, MEZZOMIX.
(81) The applicant has put forward nothing which would give grounds for stating that that assessment is not also true of the average Austrian consumer. It must be considered that the latter is also used to and aware of the distinction between alcoholic and non-alcoholic drinks. It follows that the average Austrian consumer will make that distinction when comparing the wine covered by the mark applied for and the non-alcoholic beverages covered by the earlier mark, MEZZO.
(82) The Board was therefore correct to take the view that ‘wines [were] alcoholic beverages and, as such, clearly distinct from the goods covered by the earlier MEZZO mark, both in shops and drinks menus' and that, in the present case, ‘the average consumer [was] used to the distinction between alcoholic and non-alcoholic drinks, and such a distinction [was] necessary, since some consumers [did] not wish to or [could] not consume alcohol'.
(83) In respect of the end users and method of use of wine and non-alcoholic beverages, they overlap in part. The consumption of wine does not rule out the consumption of non-alcoholic beverages and vice versa, but the consumption of one of those beverages does not necessarily lead to consumption of the other. Moreover, wine is generally intended to be savoured and is not designed to quench thirst, whereas the non-alcoholic beverages covered by the earlier marks are generally intended to quench thirst, indeed exclusively to do so in the case of mineral and aerated waters. For the relevant consumer, the presence or absence of alcohol and the difference in taste between wine and the other, non-alcoholic, beverages covered by the earlier marks outweigh the fact that the end users and method of use are the same.”
(b) Distinguished cases ( MYSTERY and VITAFRUIT case-law)
“(92) The MYSTERY and VITAFRUIT judgments relied on by the applicant, cited above in paragraph 58, do not affect the preceding assessments concluding that the goods in question are different.
(93) In particular, the Court observes that, in the case giving rise to the judgment in MYSTERY, cited above in paragraph 58 (paragraphs 3 and 4), it was necessary to compare, on the one hand, non-alcoholic beverages, with the exception of non-alcoholic beer and, on the other, beer and beverages containing beer. Having regard to the difference between wine and beer (paragraphs 63 et seq above), that comparison is not relevant to the comparison in the present case between wine, covered by MEZZOPANE, and non-alcoholic beverages, covered by the earlier marks, MEZZO and MEZZOMIX.
(94) Specifically, in answer to the applicant's arguments that, in the case giving rise to the judgment in MYSTERY, cited above in paragraph 58, the Court acknowledged the similarity of drinks, notwithstanding the differences in their ingredients and methods of production, on the basis of their common nature, intended purpose and marketing, it must be observed that, in that case, the Court considered that, in the minds of average German consumers, mixed beverages based on beer could be substituted for either beer or non-alcoholic beverages (MYSTERY, cited above in paragraph 58, paragraphs 37 and 40). However, the same degree of substitutability cannot be recognised in relation to the comparison, by the relevant German or Austrian consumer, of wine covered by the mark applied for, MEZZOPANE, and the beverages covered by the earlier marks, MEZZO and MEZZOMIX. For the reasons set out in paragraphs 66 et seq above, it cannot be held that the relevant German or Austrian consumer can easily substitute wine for beer. In addition, for the reasons set out in paragraph 85 et seq above, it cannot be held that the relevant German or Austrian consumer can substitute wine for the other, non-alcoholic, beverages covered by the earlier marks.
(95) As regards the case giving rise to the judgment in VITAFRUIT, cited above in paragraph 58, relied on by the applicant, the Court stated that the question of similarity between the goods concerned only herbal and vitamin beverages, on the one hand, and fruit juices on the other (VITAFRUIT, cited above in paragraph 58, paragraph 64). That case certainly did not concern the comparison between wine and other beverages and therefore has no bearing on the comparison between the goods in question in the present case.
(96) In the light of all the preceding factors, the Board of Appeal's conclusion that the goods in question are not similar must be upheld.”
Keywords: General legal principles: exceptio doli generalis (‘Clean Hands' rule) – Exceptio doli : invokeable in OHIM proceedings? – Opposition proceedings: prior pactum de non petendo (agreement not to sue) – Opposition: likelihood of confusion (LOC) – LOC: comparison of signs.
The action is directed against a decision of the 1st Board of 27.11.2007 in R 1167/2006-1, relating to CTM application 3 166 378, “ SKY ” (figurative mark), applied for for a range of goods and services in Classes 9, 16, 18, 25, 28, 35, 38, 41 and 42.
It had been opposed on the basis of several earlier rights in “SKYROCK”, word mark, registered in respect of goods and services in Classes 9, 16, 18, 25, 28, 35, 38, 41 and 42. It had been claimed that the French earlier right is well-known in respect of goods and services in Classes 9, 35, 38 and 41. In defence, the CTM applicant had argued inter alia that the opposition should be rejected because the parties to the proceedings were bound by a co-existence agreement dated 3.11.1988, according to which the other party was precluded from opposing the registration of the sign applied for.
The Opposition Division had upheld the opposition in part, that is, for all the goods and services in Classes 9, 38 and 41, as well as for the services of ‘advertising' in Class 35. As to the binding effect of the agreement, the Opposition Division had held that, regardless of its validity inter partes, it could not override Articles 8 and 42 CTMR which conferred on the other party the unrestricted right to oppose the CTM application. Accordingly, the question whether or not the filing of the opposition constituted a breach of contractual obligations was a private matter exclusively falling within the competence of the courts, over which the Office had no jurisdiction whatsoever.
On appeal, the CTM applicant requested the Board to uphold the appeal, first, because pursuant to the agreement the other party was not entitled to assert its earlier rights in opposition proceedings in order to prevent the registration of the sign applied for and, second, because there is no likelihood of confusion between the marks at issue. By its decision, the Board had upheld the appeal and had rejected the opposition in its entirety on the grounds that the differences between the signs were sufficient to eliminate all likelihood of confusion and/or detriment within the meaning of Article 8 (1)(b) and (5) CTMR, and it ordered the other party to bear the costs. With regard to the agreement, the Board had found that its terms did not extend to the sign applied for, being confined to the trade marks expressly mentioned therein, namely SKYROCK, SKYZIN and SKY CHANNEL. Accordingly, the Board had held that it was not necessary to consider whether the agreement was binding, or whether it could be invoked by the Applicant as a valid defence in opposition proceedings.
Keywords: Restitutio in integrum , Article 78 CTMR.
The action is directed against a decision of the 4th Board of 5.11.2007 in R 0603/2007-4 relating to CTM 117 937, word mark “DANELECTRO”, in respect of goods in Classes 9 and 15that are not relevant in the proceedings. The CTM had been applied for on 1.4.1996 and registered on 25.5.1998. In September 2005, the Office had informed the owner (plaintiff) that the registration of the above CTM was due for renewal on 1.4.2006 and that the final deadline for renewal was 1 November 2006. On 23.11.2006, the Office had issued a notification pursuant to Article 47 CTMR and Rule 30(5) CTMIR to inform the representative of the owner that this registration had been cancelled from the CTM register on 1.11.2006 with effect from 1.4.2006.
On 26.1.2007, the plaintiff had filed an application for restitutio in integrum to request, pursuant to Article 78 CTMR, that the right to renew the CTM registration be re-established on the grounds that it had not been renewed because of an error that had occurred due to circumstances beyond its control and of its representative. The then Administration of Trade Marks and Designs Department had dismissed the request on account of the fact that not all due care had been taken in order to observe the time limit for renewal. Hence, the CTM registration at issue was deemed to have been cancelled pursuant to Rule 30(6) CTMIR. By the contested decision, the Board had dismissed the appeal and had given the following reasons:
Pursuant to Article 78(2) CTMR, the request for restitutio in integrum must be filed in writing within two months from the removal of the cause of non-compliance with the time limit. In this case, the request had been filed on 26.1.2006. However, the date of “the removal of the cause of non-compliance with the time limit” had been 23.11.2006 that is, the date on which the Office had informed the representative that a right was lost. The two-month period within which a request for restitutio in integrum could have been lodged, started on 23.11.2006 and it expired on 23.1.2007. Therefore, the request, having been filed on 26.1.2007, was filed too late and is inadmissible.
Keywords: Cancellation: absolute and relative grounds – Opposition/invalidation: likelihood of confusion (LOC).
The action has been brought against a decision of the 2nd Board of 19.11.2007 in R 0537/2004-2 relating to cancellation proceedings which had been brought against CTM 713 446, word mark “Nimei La Perla Modern Classic”. The CTM is registered for a range of goods in Class 14.
The applicant for cancellation had invoked absolute grounds (alleging that the CTM is not distinctive for the claimed goods) and relative grounds, relying in that respect on several earlier rights in the word mark “La Perla”, and in figurative marks containing the words “La Perla”. The said earlier rights cover goods and services in Classes 3, 9, 14, 16, 18, 24, 25 and 35. The CTM had been cancelled on the basis of the invoked relative grounds for invalidation.
Keywords: Opposition: likelihood of confusion (LOC).
The action is directed against a decision of the 4th Board of 20.11.2008 in R 0747/2006-4, in a conflict between Codorniu Napa Inc., California, the CTM applicant, and a Spanish wine trader. The application at issue is a figurative sign containing the word “Artesa” in the middle and “Napa Valley” at the bottom.
The CTM had been applied for in Class 33 for wine made and bottled in the Napa Valley (California, USA). It had been opposed on the basis of an earlier right in the word mark “La Artesa”, registered for wines and spirits in Class 33, and a figurative mark, Arteso, also registered in Class 33, and for importation and distribution of wines in Class 35. The opposition had been allowed in full.
Keywords: Opposition: proof of use (POU) – POU: calculation of the grace period – Opposition: likelihood of confusion (LOC) – LOC: earlier mark contained in subsequent sign – LOC: existence, on the market, of many (529) similar trade marks.
The action is directed against a decision of the 2nd Board of 2.10.2007 in R 0141/2007 relating to a conflict between Nokia Corp. and Medion AG. The CTM application at issue is “Life Blog”, word mark, No. 3 56 366, which had been applied for for a range of goods in services in Classes 9, 38 and 41, namely in Class 9 for scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; devices for the recording, transmission and playback of sound and images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; in Class 38 for telecommunications, and in Class 41 for education; providing of training; entertainment; sporting and cultural activities.
The opposition lodged by Medion AG had been directed against all the goods and services applied for, except for fire-extinguishing apparatus in Class 9 and sporting and cultural activities in Class 41. It had been based on all the goods and services covered by the following earlier rights: German trade mark registration 39 849 644 of the word mark “ LIFE ” for goods and services in Classes 1, 7, 8, 9, 10, 11, 16, 21, 28, 37, 38, 41 and 42; German trade mark registration 39 849 641 of the word mark “LIFETEC” for goods and services in Classes,1, 7, 8, 9, 10, 11, 16, 21, 28, 37, 38, 41 and 42; German trade mark registration 2 056 447 of the word mark “LIFESAT” for goods in Class 9; German trade mark registration 2 105 842 of the word mark “LifeSign” for goods in Classes 9, 14 and 16.
Further, international trade mark registration 740 383 of the word mark “LIFESAT” with effect in, inter alia, the Benelux countries, the Czech Republic, Spain, Denmark, France, Italy, Hungary, Austria, Poland, Portugal, Slovakia, Sweden, Finland and the United Kingdom, for goods in Class 9; international trade mark registration 718 093 of the word mark “ LIFE ” with effect in, inter alia, the Benelux countries, the Czech Republic, Spain, Denmark, France, Italy, Hungary, Austria, Poland, Portugal, Sweden, Finland and the United Kingdom, for goods and services in Classes 1, 7-11, 16, 21, 28, 37, 38, 41 and 42, and finally international trade mark registration 714 041 of the word mark “LIFETEC” with effect in, inter alia , the Benelux countries, the Czech Republic, Spain, Denmark, France, Italy, Hungary, Austria, Poland, Portugal, Sweden, Finland and the United Kingdom, for goods and services in Classes 1, 7-11, 16, 21, 28, 37, 38, 41 and 42.
The CTM applicant had requested that the opponent submit proof of use of its earlier marks. The Office took account that the earlier German mark 39 849 644 had been registered on 22 February 1999 , i.e. more than five years prior to the date of filing of the current CTM application. However, a (post-registration) opposition had been submitted against said German mark and this procedure had only been completed on 24 October 2001 . Therefore, this date preceded the filing date of the current CTM by less than 5 years. The CTM applicant's request for proof of use was, thus, unfounded. For procedural economy, the Opposition Division had decided to focus its examination on the opponent's earlier German trade mark registration 39 849 644 of the word mark “ LIFE ”, registered for the broadest range of goods and services.
Much of the debate between the parties had centered on whether “ LIFE ” is the dominant or distinctive element of both marks and whether BLOG is a purely descriptive or weak component. For the CTM applicant, “ LIFE ” simply refers to the durability of the goods and services and is to be found in literally hundreds of marks on the CTM register. It cannot dominate the marks and its distinctiveness has been severely diluted. For the opponent, it is the term BLOG that is the weak element. It has a close connection to the goods and services covered by the mark applied for. In addition, the opponent had argued that the coexistence of marks containing the word “LIFE” on the CTM register is not a determining factor. Closer analysis of those marks reveals many of them to be at application stage, or to be for different goods or services, or to be for figurative signs, or to be subject to particular agreements with the opponent. The CTM applicant had produced a list of some 529 marks in Classes 9, 38 and 41 containing the word “LIFE”. Three hundred and forty-seven of those marks are in Class 9. However, the figures included withdrawn applications and marks that were still at the application stage.
The opposition had been partially allowed on the basis of Article 8(1)(b) CTMR in that the respective goods and services were similar or identical, and the signs similar. The fact that there are still a large number of signs – whether slogans, word marks or semi-figurative marks and whether at application stage or otherwise – that contain the word “LIFE”, while surely demonstrative of the popularity of this word among trade mark owners and applicants, does not prove that the marks actually co-exist on the market. Finally, the Board had stated that there is no basis for conducting an absolute grounds examination of the mark. It is enough to note that the German registration authorities had found the word to be imbued with a sufficient degree of distinctiveness for the goods and services it sought to cover.
Keywords: Absolute grounds for refusal: descriptiveness.
The action has been brought against a decision of the 1st Board of 4.12.2007 in R 0319/2007-1 relating to CTM application 5 050 539, word mark “E-Ship”, which had been applied for for a range of goods and services in Classes 7, 9, 12 and 39, inter alia for electric motors for vessels and electric apparatus for shipping. The application had been rejected under Article 7(1)(b),(c) and Article 7(2) CTMR on the ground that the word applied for would merely describe the nature of the goods and services claimed.
Keywords: Opposition/invalidation: pharmaceutical products – Opposition/invalidation: proof of use (POU) – POU: pharmaceutical goods registered in general terms – Likelihood of confusion (LOC): impact of parallel proceedings at Member State level.
The action is directed against a decision of the 1st Board of 20.11.2007 in R 0010/2007-1 relating to CTM 2 491 298, “Famoxin”, word mark, which had been challenged on the basis of several earlier rights in “Lanoxin”, word mark, by way of a request for invalidation on relative grounds. The CTM is registered in Class 5 for pharmaceutical preparations for the treatment of metabolic disorders adapted for administration only by intravenous and for intra-muscular or subcutaneous injection. The earlier rights are registered, inter alia, in Class 5 for pharmaceutical preparations with digoxin for human use and for medicinal and pharmaceutical products. The request for invalidation had been dismissed, mainly on the following grounds:
Proof of use of the earlier mark had been submitted in respect of ‘pharmaceutical preparations for cardiovascular illnesses'. For the purpose of the cancellation proceedings, the earlier marks are deemed to be registered in respect of this sub-category of goods. The relevant public includes health professionals and end users (or patients) in Italy. The patients will be assisted by health professionals during the administration of the pharmaceuticals in question. Patients will display a high degree of attentiveness when confronted to the pharmaceuticals that are prescribed for the treatment of potentially severe disorders. ‘Pharmaceutical preparations for the treatment of metabolic disorders adapted for administration only by intravenous, intra-muscular or subcutaneous injection' and ‘pharmaceutical preparations for cardiovascular illnesses' are similar to a certain degree in spite of different therapeutic indications.Given that the common ending ‘-OXIN' is visually and phonetically much less important than the different beginnings ‘FAM-' and ‘LAN -', and given that the conceptual similarity results from the common reference to a descriptive suffix ‘-OXIN' (that denotes the chemical compound “digoxin”), the overall similarity between the signs is very low. Keeping in mind that patients will always be under the guidance of professionals, the notable differences between the signs suffice to exclude a risk of confusion against the perception of the relevant, highly attentive, public. Likewise, “there should not be any risk of a medical error”. The outcome of the decision cannot be influenced by the alleged fact that the other party has claimed the existence of a risk of confusion between the same marks, in parallel proceedings in Sweden.
NEW DECISIONS FROM THE BOARDS OF APPEAL
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Cancellation proceedings – invalidity – descriptiveness – distinctiveness – distinctiveness acquired through use – need to leave free – right to be heard – examination on own motion – use with other trade mark – Grand Board – Oral Hearing
Decision of the First Board of Appeal of 30 June 2008 in Case R 1466/2005-1 WORLD CUP 2006 (English)
R 1466/2005-1 – WORLD CUP 2006 – The fact that the applicant is the only or the major enterprise organising competitions in a specific country in a particular year for football may be of interest for the examination of acquired distinctiveness for particular goods or services, however, it does not exclude the application of Article 7(1)(c) CTMR. The sign has a clear descriptive meaning. In sports, a ‘world cup' is the generic name for a regular competition; it has its origin in the English language and is an expression which is known in all Member States. The number 2006 refers to the year in which such event takes place.
Taking into consideration the meaning of the sign at issue, it is a descriptive indication of the kind and the content for those services of actually preparing, organising and promoting a world cup competition in 2006. For many of the goods or services the indication describes the purpose and thereby in part the level of quality of goods or services, during such competitions in Germany. For other goods, the trade mark at issue qualifies the goods as souvenir or merchandising articles. General experience shows that at entertainment events, whether in the sports or the music sector, organisers or third parties sell merchandising or souvenir articles with an imprint of the type of event. Such imprint may further contain the name of the organiser, pictures, cartoons, dates etc. Merchandising and co-branding is not limited to the ‘classic' souvenir products. It is public knowledge that there is a tendency to try to find new markets by combining various goods with the brand of some other unrelated popular event or names.
The principles laid down in C-108/97 & C-109/97, Chiemsee, can be applied directly to sports events. There is no reason to prohibit registration of the name of a holiday region, but to allow registration of a generic name for a sports event.
The relevant public, in the field covered by the trade mark, understands the sign at issue as referring, as a whole and in general, to a sports event in the year 2006. The simple reference to a world cup in the year 2006 in the context of the related goods and services does not render the sign distinctive. There is no element in the CTM which would permit the view to be reached that the combination, created by the current components world cup 2006, is unusual or might have its own meaning allowing, in the perception of the relevant public, the goods and services offered by the appellant to be distinguished from those of a different commercial origin.
The relevant public perceives the trade mark in question as providing details of the type of goods or services and their particular market value which it designates and not as indicating the origin of those goods or services. For any of the goods and services at issue and without taking into consideration any use of the trade mark the average consumer inherently will not perceive the trade mark as an indication of origin but merely as the reference to a sports event of major importance in 2006 this is confirmed by the CTM proprietor's own practice of combining the sign at issue with the company identifier ‘FIFA'.
With respect to the claim that the CTM has – in the meantime – acquired distinctiveness through use, the Board notes that such awareness of the public must still exist on the day of the decision. World cups are events that occur at set intervals, for example every year or every second or fourth year. The Board has no evidence that the awareness of the last FIFA Football World Cup in Germany is still as strong as it may have been in 2005 or 2006. This, however, would be necessary to maintain the benefits of Article 51(2) CTMR in the present cancellation proceedings.
The evidence submitted is not sufficient to show acquired distinctiveness for the different Member States in accordance with Article 7(2) CTMR, nor is there sufficient evidence of the different goods and services applied for. Furthermore, none of the evidence presented shows that the sign applied for was recognised as an indicator of origin standing on its own for any of the goods and services. Systematically, the sign was either not used as a trade mark as such, while in a descriptive, non-distinctive way it referred to a competition or it was used as one expression together with the identifier ‘FIFA', such as in ‘FIFA World Cup'® (CTM 003644275), often further combined with a figurative sign in colour.
Consequently, the trade mark must be declared invalid.
Furthermore, the parties have no formal right to request such a referral to the Grand Board. Even if the request were to be considered, the Board does not see any reasons to remit the case to the Grand Board. The case is neither of particular legal difficulty, nor is it necessary, as alleged by the CTM proprietor, to harmonize case-law. Financial impacts do not make it an important case in the sense of trade mark or procedural law.
The request for an oral hearing must be rejected as well. The CTM proprietor did not explain which decisive elements it might add to the proceedings which it could not have filed in written proceedings.
The following decisions, also dated 30 June 2008, have the same line of reasoning:
R 1467/2005-1 GERMANY 2006 (English)
Opposition Proceedings – retail services – comparison of the goods and services
Decision of the Second Board of Appeal of 9 July 2008 in Case R 1840/2007-2 NARA CAMICE/NARA CAMICEE et al (English).
R 1840/2007-2 – NARA CAMICE/ NARA CAMICEE et al. – In general, when using a class heading, all goods and services in this class are claimed (cf. Communication No 4/03). However, this principle is not applicable in Class 35 with respect to retail services, since one must specify the scope of the retail services in accordance with C-418/02, Praktiker. Consequently, the class heading in Class 35 does not cover ‘retail services'. Furthermore, the service ‘advertising' in Class 35 refers to activities offered to third parties and not to publicity made for organisations' own goods and services. Thus, the goods claimed in Class 35 are dissimilar to the services protected in Class 25 and no likelihood of confusion might arise.
Opposition Proceedings – comparison of the goods and services
Decision of the First Board of Appeal of 13 June 2008 in Case R 629/2007-1 BARCA/LA BARCA (Fig. Mark) (English)R 0629/2007-1 BARCA/ (La Barca) – Goods and services in the sense of trade mark law must be seen from a commercial point of view, since their objective is to have a share of the relevant market. With respect to the comparison of goods and services, a possible common origin remains the most important criterion. The CTM applied for seeks protection for ‘raw material', while the opposing trade mark is protected for ‘foodstuff for animals'. Especially since their channels of distribution are different, the goods are, if at all, only remotely similar . A global assessment and the interdependence between the comparison of the goods and services and the signs lead the Board to rule out any likelihood of confusion.
Belated facts and evidence – discretion
Decision of the Forth Board of Appeal in Case R 773/2007-4 Colours of the World [Fig, Mark]/United Colors of Benetton (English)
R 0773/2007-4 – Colours of the World [Fig, Mark]/United Colors of Benetton – The opponent submitted, on the last day at 16.45, further facts, arguments and evidence. It announced that evidence, including substantiation of the earlier right would follow by courier service. The Office received the registration certificates the next day, but out of time. Thus, the certificates were too late.
The Board held that The opponent could not expect the delivery in good time and did not make the announcement of their late arrival in a timely manner. Furthermore, the Board held that Art. 74(2) CTMR is only applicable if neither the CTMR nor the CTMIR specify otherwise.
According to the CTMIR, the rejection of an opposition is mandatory if the earlier rights are not substantiated. Consequently, the Office has no discretion to accept the belated evidence.
Even if it had discretion, the belated evidence must be rejected since the interests of the other party must also be taken into consideration. The applicant was in no way responsible for the late submission; furthermore they had an interest in a speedy resolution and the opponent must have already been in possession of the certificates when the opposition period started.The appeal as well as the opposition is dismissed.
Design – invalidity proceedings – individual character – discloser of an earlier design
Decision of the Third Board of Appeal in Case R 1516/2007-3 – BIDONS (French)
R 1516/2007-3 – BIDONS – Disclosure outside of the European Union automatically destroys the novelty of a design within the European Union, unless the holder can prove that publication of the earlier design outside the Community could not reasonably have become known to the circles specialising in the sector concerned, operating within the Community.
When assessing the individual character of a design, it is not sufficient to make an inventory of the elements; it is necessary to compare the elements of the designs. There are notably differences between the two designs, especially the handle, the height/width and the width/thickness ratio. The contested decision is annulled, the declaration for invalidity dismissed.
Opposition Proceedings – conversion – definition of earlier right
Decision of the Grand Board of Appeal of 15 July 2008 in Case R 1313/2006-G – CARDIVA [Fig. Mark]/CARDIMA [Fig. Mark] (English)
R 1313/2006-G CARDIVA [Fig. Mark]/CARDIMA [Fig. Mark] – The opposition was based on an earlier right, namely a Community trade mark application for goods and services in Classes 9, 10 and 42. This application was, after an opposition proceeding lodged against that application, registered only for goods in Classes 42. Furthermore, with respect to the goods in Classes 9 and 10, the earlier right was converted into national trade marks in the UK and the Benelux.
The Opposition Division considered that the Opponent could not rely on the converted national rights since conversion took place after the end of the opposition period. With respect to the remaining services protected by the earlier CTM, the Opposition Division considered that the services in Class 42 were similar to the goods claimed in Class 10 and allowed the opposition to this extent. However, the opposition was rejected with respect to the services claimed in Classes 35 and 39 since these services were considered dissimilar to those covered by the earlier CTM in Class 42.
Since the opponent did not file an appeal, the rejection of the opposition with respect to Classes 35 and 39 became final and were not part of the appeal proceedings.
According to the Board, conversion of a CTM application into national trade mark applications is the direct consequence of a decision of the Office and is further directly conditioned by the substance of that decision or a further decision. Its timing is also the consequence of an Office decision. Therefore, it cannot be considered that such national trade mark applications are independent from the CTM application. They may give birth to national applications and registrations, which will be considered autonomously by national offices, but the link with the CTM or CTM application remains. Consequently, national trade mark registrations resulting from a conversion of a CTM application can constitute the basis of the opposition procedure originally made on the basis of that CTM application.
With respect to the question of whether likelihood of confusion arises, the Board confirmed the contested decision, but based its assessment on the goods of the converted national rights and considered that the goods were identical or highly similar and the signs were similar, too.
Remark:At the moment, the decision is only available in English language but will be translated into the other Official languages of the Office.