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Many readers of Alicante News will already be aware that from 1 May, 2009 the cost of having a Community trade mark will fall by around 40%. This will be the second decrease in price since the CTM was introduced in 1996, and comes after several years of discussion with the European Commission and the member states. In future, there will be a single CTM fee, replacing the current system of separate application and registration fees. For an application made online (over 80% now come via the Internet) the new fee will be €900, and for a paper application it will be €1050. A table summarising the fees that change (some do not) is included at the bottom of this article, and readers will also find instructions on how they can have their questions on the cut answered by OHIM President Wubbo de Boer, using the Google Moderator service currently being advertised on our website (session open until 27 April). Transitional arrangements News of the fee reduction has been widely welcomed. It comes at a time when many companies are suffering from the effects of the current financial crisis. In common with most other major IP offices, OHIM has seen demand for trade marks and designs fall in the first part of this year. While the fee cut is not linked to the global recession, it is undoubtedly true that making IP protection easier to get at this time of financial constraint must be a good thing for companies, whether large or small, who are planning for the future. The reduction had been made possible by the substantial changes in productivity at OHIM over recent years. In announcing the cut, the European Commissioner for the Internal Market, Charlie McCreevy was generous in his praise of the Office’s performance, describing OHIM as “one of the truly great success stories of the European Union and one of the stars of the Internal Market”. The Commissioner added: “This is good news for businesses in Europe. The substantial reduction in fees and the simplification of procedure will promote entrepreneurship and stimulate economic activity, which is essential in times of economic crisis. In particular, small and medium-sized enterprises, for which the costs and procedure of obtaining this protection are often a heavy burden, will profit from these improvements.” Google Moderator The most popular ten (or more) questions will be put to OHIM’s President Wubbo de Boer in a video interview, which will be posted on our website. To take part in this session, click on the link provided in the news item on the front page of our website or navigate to the “Have your say” section of the site at: After analysing user demand for this initiative, we will consider if it should become a permanent feature.
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The James Nurton interview with Patrick Van de Vorst, Knijff/Multisearch Patrick Van de Vorst talks to James Nurton about the CTM fee reduction and the difficulty of clearing pharmaceutical trade marks, and looks forward to next month's INTA Annual Meeting How did you become involved in trade mark work? Now I work for Knijff Trademark Attorneys, near Amsterdam, which has about 60 staff, including 14 trade mark attorneys. Having worked for trade mark services providers, I am happy now to sit on the other side of the frontier – and I am particularly involved in developing our Multisearch product. With about 15 million valid trade mark registrations in Europe, and 500,000 CTMs, trade mark protection is a big challenge for many companies, so many of them are looking for efficient ways to clear their trade marks. Especially in today's economic climate, people have lower budgets and less staff. So they are looking at how best to manage their daily work and outsource administrative tasks. What sort of clients do you work with? What are the particular challenges with pharma marks? Do you think Class 5 needs to be split up? Having said that, we welcome very much the lower cost of CTMs. This will help promote entrepreneurship, especially among SMEs. But it means that we as a trade mark attorney firm also have to become more creative in creating new services. We believe that with the lower cost the number of oppositions will substantially increase. Meanwhile, offering comprehensive searches will become more difficult. People might just file applications without doing a search. How many CTM applications do you file? What is the most unusual mark you have filed? Are you happy with the service at OHIM? Overall OHIM is doing a fantastic job, especially in terms of user-friendliness and service. Nevertheless I still believe the registration process could be faster: the whole process should be finished within six months with even more automation. Do you use the Madrid Protocol? More and more oppositions are being filed at the Benelux Trademarks Office, after the system was introduced in 2004. The official fees are quite high but it is an easy process and many parties try to negotiate a settlement so that the opposition procedure can be withdrawn. But it all depends – sometimes it comes down to what the CEO of a company says. He might say: “This is our mark and we want to keep it in this particular market so we will defend it all the way.” Do you see a lot of tension between marketing and trade mark professionals? It is important to ensure proper communication between the two. If you tell the marketing people protection of a certain mark will cost $100,000 they will probably say: go ahead. But if you tell them it's coming out of their budget then they might want to compromise over the number of countries and classes. Also the focus is different. Marketing is all about thinking of ways to maximise the business whereas IP people are focused on protecting it and managing the risks. This can create a lot of tension. You're on the Board of Directors of INTA. What does that involve? In 2006 I was invited to join the Board, which was surprising to me as I was in a service company at that time. INTA helps to give a broader view of IP worldwide and make sure all the relevant issues are discussed for all parties involved. With offices in Brussels and Shanghai, and maybe more to follow, and some local representatives, it is really an international association. Last but not least if you need IP references or materials, INTA will probably have them and the Association is being creative with the newest technologies such as Podcasts. What are you looking forward to at the Annual Meeting next month? What has been the biggest change in trade marks in your career? |
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| Community Trade Mark | “Professional nails” CTM partially revoked The German company, Professional Products, asked for revocation of the CTM, registered in 1999, in respect of: “Chemicals used in industry and photography, in particular light hardening gel; adhesives used in industry” in class 1 and “Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils” in class 3. The grounds for revocation were that the CTM had not been put to genuine use with respect to the goods listed in these classes. The CTM proprietor provided evidence of invoices and product samples, including catalogues. The evidence filed showed that the contested trade mark (in a figurative format) has been used for a great variety of goods, namely French gel, profi gel, resin (adhesive) tip (adhesive), hand cream, nail oil, cuticle remover, cuticle care pen, aseptico, nail degreaser, nail cleaner, Bondex bonding agent, nail varnish remover, nail varnish correction pen, building gel, bonding gel, UV lamps (for hardening light-bonding gel). The Cancellation Division found: “From the samples and the catalogues it becomes evident that the CTM proprietor offers finished goods to the end consumer and that these are products for the care of the human body, namely goods for the care and beautification of human fingernails. With the exception of UV lamps, all of these goods fall into class 3 of the Nice Classification under the general indication “cosmetics”. Furthermore, none of these goods fall under the category of raw materials which might be used for the production of finished goods, that is, none are meant for industrial use. “As regards the contested goods in class 1 it is to be noted that chemicals used in industry and photography, in particular light hardening gel; adhesives used in industry are raw materials for industrial use and not finished products. From the information provided by the parties it would appear that ‘light hardening gel’ exists as a finished product, a nail treatment preparation used for attaching nail extensions. However, that does not exclude the possibility that ‘light hardening gel’ also exists as a chemical raw material used in industry, and none of the parties have provided any information to the contrary. It must be further noted that the term ‘in particular’ in the specification indicates that the specific goods listed after that term are only examples of items included in the relevant category, chemicals used in industry in the present case. Therefore, light hardening gel specifically mentioned in class 1 of the contested trade mark must be taken as a chemical material for industrial use. “Unlike the cosmetic preparations in class 3, chemicals and adhesives used in industry are normally not applied over the body. Rather to the contrary, protective clothes and gloves are used to prevent the body coming into contact with these kinds of materials. Even if a certain adhesive material were used as a nail treatment preparation to attach nail extensions, it cannot be considered as being chemicals and adhesives used in industry (compare the decision of the Second Board of Appeal of 16/10/2007 in Case R 1587/2006-2, “PROFESSIONAL NAILS”, p. 27, 28). Therefore, contrary to the CTM proprietor’s view the goods French gel, profi gel, building and bonding gel, resin, tip adhesives, and bonding agents do not fall into class 1, but into class 3. “As regards the contested goods in class 3 it must be taken into account that the CTM proprietor must prove use of the goods bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations. Such goods are for household use; irrespective of the fact that they are listed in class 3 of the Nice Classification where body and beauty care preparations also belong. It is true that the latter goods can also have ‘cleaning, polishing, scouring and abrasive’ characteristics. Nevertheless, they are used for cosmetic and hygienic purposes, which clearly distinguishes them from household cleaning materials. ‘Bleaching preparations and other substances for laundry use’ also contained in class 3 of the contested trade mark leave even less doubt as to their nature because it is expressly stated that the goods falling into this category are ‘for laundry use’. Therefore, the CTM proprietor cannot claim that the use of antiseptic and cleaning fluids for nails proves the use of the trade mark for bleaching preparations and other substances for laundry use (compare the decision of the Second Board of Appeal of 16/10/2007 in Case R 1587/2006-2, “PROFESSIONAL NAILS”, p. 30, 31). Bearing in mind the above, the Office concluded that the evidence of use showed that the mark has not been used in connection with the goods in respect of which it was registered. The CTM proprietor has not shown use for the goods for which it is registered, but for other different goods for which it had no protection.
French undertakings are among the strongest supporters of the CTM system with almost 48 000 registrations to date. Last year over 6 000 French CTMs were filed, a slight increase on 2007 despite the global recession. This year so far, there have been more than 1 400 filings.
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Registered Community Design |
Improving the Classification for Designs The Locarno Classification is an international classification system for industrial designs which was established in accordance with the Locarno Agreement of 1968. The Agreement is administered by WIPO and is open to States party to the Paris Convention for the Protection of Intellectual Property. There are presently 49 States party to the Locarno Agreement and consequently they have adopted and apply the Locarno Classification to Industrial Designs in their territories. In addition, the Benelux Designs Office, OHIM and WIPO use the Locarno Classification in relation to Benelux , European Community and International designs, respectively. The meeting of the Pilot Working Group was chaired by Mr. Mike Foley of the Intellectual Property Office of the United Kingdom and attended by delegates from Canada, Czech Republic, United Kingdom, Russia, Benelux Organization for Intellectual Property, OHIM, European Communities Trade Mark Association (ECTA), and Association of European Trade Mark Owners (MARQUES). The Group was established to develop a search system for industrial designs based on visual search features. In particular, its tasks are to conduct an analysis of whether and if so how, the optical/visual features of industrial designs can be indexed, in particular, determining whether such a system may be applied to industrial designs regardless of the purpose of the object that they represent. The Group agreed that their objective was one of establishing and testing a search system for industrial designs based on visual features that would operate in conjunction with the Locarno classification. Such work may include proposals for amendment to the existing Classes or Sub-Classes where this is considered necessary for the introduction of such an indexing system, and may encompass an evaluation of any existing system where the classification is done specifically by reference to optical/visual features. The Pilot Group made the following general observations: Any system should be easy and simple, especially for end-users, but how friendly the system is will also depend on the user interface of the IT system. The classification must, as far as is possible, meet the particular needs of users from outside of the registration offices. It is important to focus on the general impression, balancing description of details and the whole meaning. The issue is searching state of art. The scope of protection-what is claimed should be the consideration of the user and not the searching system. Parts of designs which contribute significantly to the appearance of the product and as such may be considered the relevant state of the art should be classified. For example – a picture of a car applied on a bottle. Both should be classified – bottle and car. Where the application is for part of a design (possibly with the remainder represented using broken lines or indicated by some other means such as highlighting or text) both the whole article and the part should be classified. This would enable a system to search for designs or visual feature elements across all classes. A text search should also be possible, i.e. full text search in claims, word disclaimers as well as words incorporated in a design. Ideally, a user should be able to find all identical and similar designs no matter if real, toy or just a graphical element, by means of a single search. The Group agreed to hold its next meeting in Geneva in early July.
The most popular classes for RCDs are 2, 6 and 9. E-filing now accounts for 29% of French RCD filings, with mail still the most popular route (56%). Filings by fax account for 14% of the total.
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E-Communication system gets even better When first introduced in December 2008, the service covered official messages sent during the examination procedure from filing to publication for opposition purposes. Now the service has expanded to include the opposition procedures and the registration notifications. With these changes, E-Communication covers all official communications from filing to CTM registration. Electronic communication provides significant benefits to users in making more transparent, safe and agile the communication with the OHIM. For example replying to a notification using electronic communication will make your response available to the examiner in a couple of minutes instead of couple of days when faxing it.
The E-Communication service allows users to filter messages, create and remove folders and download electronic communications to their own computer or network. In addition, there is an alert system: for any new e-communication received an e-mail will be sent to you containing a brief description of the notification and a direct link to the electronic communication.
In order to optimise the use of the E-Communication service we recommend that users receiving a high number of communications regularly save their E-Communications on their local system and delete them from their E-Communication mailbox. Further information can be obtained by contacting the OHIM Information centre by e-mail at information@oami.europa.eu
OHIM e-business roundup (2009)
State of play of future projects:
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Impact of changes to the Council Regulation on the Community trade mark The codified version brings no substantive legal changes, but the number of the Regulation (currently No 40/94) and the numbers of many of the Articles changed from 13 April, when it came into force. There is no change in the numbers of Articles 1-36, meaning that the references to Articles 7 and 8 for examination and oppositions respectively are unaffected. However, oppositions are affected in other Articles and the Articles referring to cancellations and appeals also change as do all references to Articles 37-160. Most of the references to the old Regulation in the Office's communication and information tools have now been changed, and we are working to complete the process as quickly as possible. A correlation table, listing the changes to Article numbers, is available on our website together with an annotated version of the Implementing Regulation. At present, references to the Regulation on the website have been changed as have any references in our e-Business tools. With regard to paper forms and notes, references have been changed in the five Office languages apart from the Conversion and Conversion IR forms and notes. Work is continuing to complete the process in all languages as soon as possible. Correlation table Annotated version of the Implementing Regulation
Work plan for EU-China cooperation project approved The project’s areas of activities include the legal framework, capacity-building, access to information, enforcement, support to right holders and trademarks and designs. The European Patent Office is the European implementing organisation for IPR 2 and OHIM is the primary provider of trade mark and design expertise. The work plan, covering April 2009 to March 2010, provides a flexible strategic and operational framework for the project’s implementation for the coming year and follows extensive consultation with the project beneficiaries and stakeholders. The main features include an increased incidence of enforcement activities and a larger number of events taking place in the Provinces. More than 30 activities are foreseen, in addition to those ongoing under the first work plan. In the trade mark and designs area, OHIM has proposed that the following activities are implemented during this work plan:
For further information see:
Monthly statistical highlights* March 2009
* Statistical data for the month in course is not definitive. Figures may vary slightly after consolidation.
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Latest trade mark and design news from Luxembourg TDK/TDK : C-197/07-P – Appeal from T-477/04; action a limine dismissed; Order of 12 December 2008 (Office practice confirmed). Keywords: ECJ proceedings: assessment of reputation (an issue of fact). ECJ proceedings: assessment of risk of dilution. Opposition: reputation mark, Article 8(5) CTMR. Reputation mark: risk of dilution. Risk of dilution: criteria. The case is an appeal from the judgment of the CFI of 6.2.2007 in Case T‑477/04 Aktieselskabet (…) v OHIM – TDK Kabushiki Kaisha (TDK) [2007] ECR II‑399, in which the court had dismissed the plaintiff’s action against the decision of the 1st Board of 7.10.2004 in Case R 0036/2003-1 concerning opposition proceedings between TDK Kabushiki Kaisha (TDK Corp.) and the plaintiff. The marks in conflict had been TDK and TDK, and the goods had been in class 25 (CTM applicant and plaintiff), and in class 9 (opponent). The opposition had been fully allowed, based on reputation marks and risk of dilution. As regards risk of dilution, the CFI had stated: “(64) The Court would point out that the Board of Appeal is not required to establish actual and present harm to an earlier mark. It must simply have available to it prima facie evidence of a future risk, which is not hypothetical, of unfair advantage ([Case T‑67/04 Spa Monopole v OHIM ‑ Spa-Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II‑1825], paragraph 40). (65) It must also be noted that the concept of taking unfair advantage of the distinctive character or the repute of the earlier mark must be understood as encompassing instances where there is clear exploitation and free-riding on the coat-tails of a famous mark or an attempt to trade upon its reputation (SPA-FINDERS, paragraph 51). The stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it ([Case C-375/97] General Motors [[1999] ECR I-5421], paragraph 30, and SPA-FINDERS, paragraph 41).” The 8th Chamber of the ECJ (Danwitz; Arestis, rapporteur; Malenovsky) rejected the appeal as partially inadmissible (as regards assessment of reputation) and partially unfounded (with respect to the assessment of a risk of dilution).
Windenergie-Konverter : C-20/08-P – Appeal from T-71/06; Order of 9 December 2008 (only in DE, FR; appeal a limine rejected as partially inadmissible and partially unfounded). Keywords: Procedural law: entitlement to “fair treatment”. OHIM proceedings: legitimate expectations. Types of signs: 3D. 3D signs: shape of the product itself or part thereof. Absolute grounds for refusal: distinctiveness. The action has been an appeal from a decision of the CFI of 15.11.2007 in Case T-71/06 relating to a decision of the 2nd Board of 30.11.2005 in Case R 0179/2005-2 by which both instances had rejected an application for a CTM consisting of the 3D shape of a wind energy apparatus (as shown below).
The sign had been applied for for wind energy apparatus etc. in class 7. The CTM application had been rejected in all instances on the ground of lack of distinctive character and insufficient evidence as regards distinctiveness acquired on the market. In paragraphs 21 and 22 of the challenged CFI judgment, that court had stated that positively assessing distinctiveness of a 3D sign consisting of the product itself or a part thereof would require significant differences of the structure and design in comparison to the ordinary shapes available on the market. The 6th Chamber of the ECJ (Bonichot; Makarczyk, rapporteur; Toader) rejected the challenges based on formal or procedural considerations as unfounded. Neither the CFI nor the Board had infringed Article 73(1) CTMR in that they had not based their assessment of lack of distinctiveness on empirical findings. The challenge on substance of the finding of lack of distinctiveness was rejected as inadmissible since it would concern an issue of fact and not of law.
El Charcutero Artesano : C-81/08-P – Order of 13 November 2008 (only in ES, FR; appeal a limine dismissed, CFI decision in Case T-242/06 stands). Keywords: ECJ proceedings: points of law. The case was an appeal from a decision of the CFI of 13.12.2007 in Case T-242/06 (only in ES, FR) relating to opposition proceedings directed against the figurative CTM application “El Charcutero Artesano”, applied for goods in classes 29 and 30.
It had been opposed on the basis of an earlier Spanish right in the figurative trade mark “El Charcutero”, registered in class 29. The opposition had been rejected by a decision of the 1st Board of 16.6.2006 in Case R 0790/2005-1 on the ground of lack of similarity of the marks in question. The CFI had confirmed these findings. The 7th Chamber of the ECJ (A. Ó. Caoimh; Lindh, rapporteur; Arabadjiev) rejected the appeal against the CFI decision a limine as inadmissible on the ground that any challenge of a finding concerning risk of confusion would concern an issue of fact and not of law, and, thus, cannot be heard by the ECJ.
A-2: ECJ Developments in pending cases La Española : C-498/07-P – Appeal from T-363/04 - Opinion of the Advocate General. Keywords: Opposition: likelihood of confusion (LOC). LOC: legal concept of a standard consumer. LOC: comparison of marks. Comparison of marks: conceptual comparison. Conceptual comparison of marks: protection of the abstract concept of a mark. By its appeal, Aceites del Sur-Coosur SA, formerly Aceites del Sur SA asks the court to set aside the judgment of the CFI in Case T-363/04 by which it had altered the decision of the 4th Board of 11.5.2004 in Case R 1109/2000-4, holding that the appeal brought by Aceites Carbonell, now Koipe Corporación SL before the Board had been well-founded and, consequently, that its opposition was to be upheld. The marks in question are shown below; the conflicting goods are, foodstuff against olive oil.
Advocate General Mazák did not agree and suggested revoking the CFI judgment under appeal: “(13) With regard to similarity of the marks and the likelihood of confusion, in paragraph 103 of the judgment the CFI held that ‘the elements common to the two marks at issue, seen as a whole, produce an overall visual impression of great similarity, since the ‘La Española’ mark reproduces very precisely the essence of the message and the visual impression given by the ‘Carbonell’ mark: the woman dressed in traditional clothes, seated in a certain manner, close to an olive branch with an olive grove in the background, the overall image consisting of an almost identical arrangement of spaces, colours, places for brand names and style of lettering’. The CFI Instance considered that the overall similar impression inescapably gave rise on the part of the consumer to a likelihood of confusion between the marks at issue which was not diminished by the existence of the different word element since the word element of the mark applied for had a very weak distinctive character, as it referred to the geographical origin of the goods.” “(50) While the CFI would appear at first glance to have carried out a global assessment of the risk of confusion between the marks at issue, I consider that the CFI only effectively took into account in that assessment the brand name ‘La Española’. However, apart from recognising in paragraph 105 that the word element is different, the judgment contains no express assessment of the distinctiveness or otherwise of the brand name ‘Carbonell’. I therefore consider that the CFI failed adequately to compare the actual content of the word elements of the brand names ‘Carbonell’ and ‘La Española’. (60) In the present case, I consider that (…) the Court should refer the case back to the CFI so that the latter may undertake an assessment of the facts (a new comparison of the marks at issue), carrying out a correct global assessment of the signs in question.”
Quartz :C-416/08-P – Appeal from T-328/05; Office response filed. Keywords: Opposition: likelihood of confusion (LOC). The case is an appeal from a judgment of 1.7.2008 of the CFI (3rd Chamber) in Case T-328/05 relating to Apple Computer’s CTM application QUARTZ (word) which covered, in class 9, “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 programmes, 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 “packets of programs for banking” (class 9) and “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.” (class 42). The opposition had been successful in all instances.
Vorsprung durch Technik :C-398/08-P - Appeal from T-70/06; Office response filed (DE). Keywords: Types of signs: slogans. Absolute grounds for refusal: distinctiveness (slogan). The case is an appeal from a judgment of the CFI of 9.7.2008 in Case T-70/06, relating to a decision of the 2nd Board of 16.12.2005 in Case R 0237/2005-2 by which the Board had confirmed rejection of Audi AG´s CTM application VORSPRUNG DURCH TECHNIK (advantage by technical standards). The slogan had been applied for for a range of goods and services in classes 9, 12, 14, 25, 28, 37-40 and 42. The CFI confirmed the Office’s decision.
B: European Court of Justice: Preliminary Rulings Wellness : C-495/07 – Judgment of 15 January 2009 . Keywords: Trade Marks Directive: Articles 10 and 12 (use). Use: trade mark on goods given away free of charge. This reference for a preliminary ruling concerns the interpretation of First Council Directive 89/104/EEC; it has been made in the context of an action brought by Silberquelle GmbH against Maselli-Strickmode GmbH in respect of the partial revocation for lack of genuine use of a mark of which Maselli is the proprietor. Maselli is an undertaking that manufactures and sells clothing. It owns the word mark WELLNESS, which is registered in Austria . The mark was registered for the following goods: in class 16 for, inter alia, printed matter, in class 25 for clothing, and in class 32 for, inter alia, alcohol-free drinks. In the context of the sale of its clothing, Maselli used its mark to designate an alcohol-free drink which was handed out as a gift in bottles marked ‘WELLNESS-DRINK’, along with the clothing sold. In its promotional documents, Maselli made reference to the free gifts labeled with the WELLNESS mark. Maselli has not used its mark for drinks sold separately. Silberquelle, an undertaking which sells alcohol-free drinks, applied for cancellation of the WELLNESS mark for class 32 on the grounds of non-use. By its decision of 7.11.2006, the Austrian Patent Office cancelled the mark for goods in class 32 and Maselli brought an action against that decision. The Oberster Patent und Markensenat decided to stay proceedings and to refer the following question to the ECJ for a preliminary ruling: “Are Articles 10(1) and 12(1) of the [Directive] to be interpreted as meaning that a trade mark is being put to genuine use if it is used for goods (here: alcohol-free drinks) which the proprietor of the trade mark gives, free of charge, to purchasers of his other goods (here: textiles) after conclusion of the purchase contract?’” In its brief decision (in total 4 pages), the 1st Chamber of the ECJ (Jann; Ilesic, rapporteur; Tizzano; Borg Barthet; Kasel) gave the following answer: “Articles 10(1) and 12(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, where the proprietor of a mark affixes that mark to items that it gives, free of charge, to purchasers of its goods, it does not make genuine use of that mark in respect of the class covering those items.” The Chamber considered the following: “ “(17) It is settled case-law that ‘genuine use’ within the meaning of the Directive must be understood to denote actual use, consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin (Case C-40/01 Ansul [2003] ECR I-2439, paragraphs 35 and 36, and Case C-442/07 Verein Radetzky-Orden [2008] ECR I-0000, paragraph 13).
Zovirax or Wellcome/Paranova: C- 276/05 – Judgment of 22 December 2008 . Keywords: Trade Marks Directive: Article 7 (exhaustion). Repackaging: pharmaceutical products. Parallel imports. Substantial change in appearance of the packaging. Obligation of prior notice. This reference for a preliminary ruling concerns the interpretation of Article 7 of First Council Directive 89/104/EE. The reference had been made in the course of proceedings between The Wellcome Foundation Ltd, proprietor of the Austrian trade mark ZOVIRAX, and Paranova Pharmazeutika Handels GmbH, concerning pharmaceutical products under the ZOVIRAX trade mark, marketed in Member States of the European Economic Area (‘EEA’) by Wellcome or by third parties, and the subject of parallel importation by Paranova and marketing by the latter in Austria, after having been repackaged. Wellcome is, inter alia, the proprietor of two Austrian word marks ZOVIRAX and the figurative word mark ZOVIRAX, protected under the pharmaceutical products class. In Austria, the marks are regularly used by GlaxoSmithKline Pharma GmbH with Wellcome’s consent. Paranova is a pharmaceutical product wholesaler. In Austria it markets pharmaceutical products bearing the mark ZOVIRAX in packs of 60 x 400 mg tablets (ZOVIRAX 400/60), which Wellcome or third parties, with the consent of Wellcome, have put on the market in the countries of the EEA, and which were bought by Paranova’s parent company in the course of standard trade in pharmaceutical products. Paranova markets those pharmaceutical products in new packaging, the appearance of which is completely different from the packaging of the original product. The words ‘Repackaged and imported by Paranova’ are written in bold type and block capitals on the front of that new packaging. The manufacturer is referred to on the sides and on the back in normal type. The new packaging has a blue band, such as Paranova regularly uses for the pharmaceutical products which it markets. Paranova had informed an associated company of Wellcome in Austria of its intention to market ZOVIRAX 400/60 in that country. With that letter, it enclosed colour prints of the outer packaging, of the blister packs and of the instructions for use of the product. Thereupon, an English associated company of Wellcome requested that, in future, Paranova inform GlaxoSmithKline Corporate Intellectual Property of the details of its marketing activities, attaching a complete sample of every type of packaging and disclosing the state of export and the exact reasons for the repackaging. Paranova, having disclosed the reasons for the repackaging which it carried out, but not the State of export of the pharmaceutical product in question, was again asked by Glaxo to disclose the State of export and the precise reasons for the repackaging. Paranova was informed at the same time that there was no reason to state the information concerning the parallel importer in such a noticeable manner and in larger, clearer type than that of the manufacturer’s name. Objection was also made to the distinctive packaging resulting from the two coloured bands on the edges of the box. Glaxo requested that a sample of all packaging be sent to it. Paranova stated that it was not possible, owing to technical reasons linked to production, for it to provide a complete sample of the packaging, in particular if Glaxo was not willing to bear the costs. Paranova imports ZOVIRAX 400/60 from Greece. There, ZOVIRAX is marketed in packs of 70 tablets. In Austria, the permissible size of pack is 60 tablets. Before the Handelsgericht Wien ( Vienna Commercial Court ), Wellcome applied for an interim order prohibiting Paranova, in business dealings for the purposes of competition in Austria , from offering and/or marketing repackaged pharmaceutical products, in particular ZOVIRAX, where the repackaging includes newly added or retained trade marks, which are protected in Austria for Wellcome, on the repackaging if: – the reference to the company which repackaged the product is to be found on the repackaging in larger and clearer type and/or in a more prominent position than the reference to the manufacturer; – coloured bands, in particular blue bands, with a width of approximately 5 mm, such as are regularly used for Paranova’s products, are to be found on the edge of the repackaging, – it has not duly informed Wellcome, before putting the repackaged product on the market, of the impending marketing, in particular specifying both the State of export and the precise reasons as to why repackaging is necessary. By order of 7 May 2004 , the Handelsgericht Wien granted Wellcome’s application in part. On appeal, the Oberlandesgericht Wien ( Vienna Higher Regional Court ) granted the application, on 28 January 2005 , as regards the first and third points mentioned above, and rejected it in relation to the second point. On subsequent appeal, the Oberster Gerichtshof decided to stay proceedings and refer the following questions to the Court for a preliminary ruling: “1. (a) Are Article 7 of … Directive 89/104 … and the case-law of the Court … which has been pronounced on it to be interpreted as meaning that proof that reliance on the trade mark would contribute to an artificial partitioning of the market must be furnished not only as regards the repackaging itself, but also as regards the presentation of the new packaging? If the answer to that question is in the negative: (b) Is the presentation of the new packaging to be measured against the principle of minimum intervention or (only) against whether it is such as to damage the reputation of the trade mark and its proprietor? 2. Are Article 7 of Directive [89/104] and the case-law of the Court … which has been pronounced on it to be interpreted as meaning that the parallel importer fulfils his duty of notification only if he informs the proprietor of the trade mark also of the State of export and the precise reasoning for the repackaging?” The 2nd Chamber of the ECJ (Timmermanns; Bonichot; Makarczyk; Bay Larsen, rapporteur; Toader) gave the following answer: “1. Article 7(2) of Council Directive 89/104/EEC is to be interpreted as meaning that, where it is established that repackaging of the pharmaceutical product is necessary for further marketing in the Member State of importation, the presentation of the packaging should be assessed only against the condition that it should not be such as to be liable to damage the reputation of the trade mark or that of its proprietor. 2. Article 7(2) of Directive 89/104 is to be interpreted as meaning that it is for the parallel importer to furnish to the proprietor of the trade mark the information which is necessary and sufficient to enable the latter to determine whether the repackaging of the product under that trade mark is necessary in order to market it in the Member State of importation.”
B-2: ECJ Preliminary Rulings: Developments in pending cases NONE C:CFI Court of First Instance (CFI): Judgments and Orders on appeals against decisions of OHIM, Article 63 CTMR TDI-II : T-107/07 – Judgment of 28 January 2009 (only in DE, FR; action dismissed, Office practice confirmed). Keywords: Examination proceedings and absolute grounds for refusal: scope of the ex officio examination. Absolute grounds for refusal: distinctiveness. Distinctiveness: acquired on the market (kind of evidence). The action had been brought against a decision of the 1st Board of 7.3.2007 in Case R 1479/2005-1 relating to Volkswagen AG´s CTM application for “TDI”, word, for a range of goods and services in classes 4, 7 and 35 (not for vehicles in class 12). A negative decision in this case by an examiner had been revoked by the 4th Board on the ground of insufficient motivation or reasoning. Subsequently, another examiner again rejected the application. The 1st Board subsequently confirmed the second rejection, mainly on the ground that, first, it would be commonplace in that sector of technical markets to use combinations of letters etc., as an indication of what the product would consist of or be able to perform. In this regard, the sign TDI very likely would only be perceived as something relating to the kind of vehicle or its motor, namely as Turbo Diesel Injection, but not as a badge of commercial origin of the vehicle (TDI-I, CFI in T-16/02 referred). The Board noted that acquired distinctiveness in the market place as regards the goods and services covered by the application had not been claimed. Before the court, the plaintiff claimed that, as regards distinctiveness acquired on the market, the Board should have taken into account material filed which relates to vehicles, because the respective consumer perception would tel quel include or expand to related products and services. That argument as well as those directed at the scope of the Office’s examination on absolute grounds was rejected by the 4th Chamber of the CFI (Czúcz, rapporteur; Labucka; Papasavvas).
Easyhotel : T-316/07 – Judgment of 22 January 2009 (action dismissed, Office confirmed). Keywords: CFI proceedings: legal aid, entitlement. OHIM procedural law: request for invalidation filed by the receiver of the party concerned. Invalidation proceedings: partial surrender of the challenged CTM after filing of the request for cancellation. Opposition/invalidation: likelihood of confusion (LOC). LOC: comparison of goods and services. The case had been initiated against a decision of the 2nd Board of 19 June 2007 in Case R 1295/2006-2 relating to CTM 1.866.706, word “easyHotel”. It had been registered on 30 June 2004 . The goods and services for which the mark is registered belong to classes 9, 16, 25, 32, 33, 35, 36, 38, 39, 41 and 42. On 11 February 2005, a request for invalidation was filed, based on the earlier national word mark EASYHOTEL, registered in Germany for various goods and services, particularly in classes 9 and 42, namely in class 9 for computer software for the production of platform-independent internet shops and internet authoring systems chiefly for the reservation, booking and payment of accommodation, and in class 42 for the development and design of computer software, namely for internet shops and internet authoring systems, especially for the reservation, booking and payment of accommodation. On 12 February 2005 , the CTM holder surrendered the mark in respect of all the goods and services in classes 9 and 38, as well as some of the services in class 42. The services in classes 39 and 42 following that surrender include, in particular, in class 39, information services relating to transportation services, including information services provided on-line from a computer database or the internet; travel reservation and travel booking services provided by means of the world wide web, and in class 42 computerised hotel reservation services. The request for invalidation had been rejected on the ground of lack of similarity of the remaining G&S. The requestor for cancellation, a commercial company, requested legal aid before the CFI. The 5th Chamber (Vilaras, rapporteur; Prek; Ciucà) dismissed that request and also the action. Entitlement to submit a request for invalidation on relative grounds – Entitlement to request legal aid “(16) Pursuant to the second subparagraph of Article 94(1) of the Rules of Procedure of the CFI, legal aid is to cover, in whole or in part, the costs involved in legal assistance and representation by a lawyer in proceedings before the CFI. The cashier of the CFI is to be responsible for those costs. Article 94(2) adds that any natural person who, because of his economic situation, is wholly or partly unable to meet the costs referred to in paragraph 1 is to be entitled to legal aid. (17) It follows from those provisions that a legal person, such as Commercy, cannot be entitled to legal aid. (18) However, at the hearing, the applicant’s (plaintiff´s) representative submitted that it is Ms B., who, having brought the action in her capacity as receiver in the insolvency proceedings initiated in respect of the assets of the Commercy company, was to be considered the applicant in these proceedings. Ms B., a natural person, is entitled to receive legal aid.” “(19 ) That argument cannot be accepted. It is true that the file relating to the proceedings before the OHIM, which was forwarded to the Court in accordance with Article 133(3) of the Rules of Procedure, shows that the relevant application for a declaration of invalidity was brought by Ms B., in her abovementioned capacity. However, the OHIM rightly examined that application as having been brought in the name of the Commercy company, the proprietor of the earlier mark.” “(20 ) The OHIM would have had to declare inadmissible an application for a declaration of invalidity brought by Ms B. in her own name. According to Article 55(1)(b) CTMR in conjunction with Articles 42(1) and 52(1) of that regulation, an application for a declaration of invalidity based on Article 8(1) of the regulation can be brought only by the proprietors of the earlier marks cited in support of that application, or by licensees authorised by those proprietors. A receiver in insolvency proceedings regarding a commercial undertaking does not fall into either of those two categories.” “(21 ) Both the appeal before the Board of Appeal and the action before the Court must also be considered to have been brought by Commercy. Since the application for a declaration of invalidity was examined as having been brought by Commercy, an interpretation of those two sets of proceedings to the effect that they were brought by Ms B. must necessarily lead to them being dismissed, on the ground that, in contrast to what is envisaged by Articles 58 and 63(4) CTMR respectively, they were brought by a person who is not entitled to bring proceedings against the decisions at issue, namely, respectively, the decision of the Cancellation Division and that of the Board. (22) However, the applicant submits that German procedural rules provide that a receiver in insolvency proceedings has locus standi in his own name in his capacity as ‘Partei kraft Amtes’, and not in the name of the natural or legal person to which the insolvency proceedings relate.” “(23 ) That argument cannot be accepted. In addition to the fact that German procedural rules are not relevant here, since the proceedings before the Court are governed by the Rules of Procedure, it is sufficient to note that this argument, which refers only to judicial proceedings, does not call into question the finding that, in order to be admissible, the application for a declaration of invalidity before the OHIM should have been made in the name of Commercy. As stated above, if Commercy made the application for a declaration of invalidity, it is that company – where appropriate, represented by a receiver – which is entitled to bring proceedings against the decisions of the Cancellation Division and the Board. (24) It follows from the foregoing that, given that the applicant in this case is the Commercy company, namely a legal person, it cannot be granted the benefit of legal aid.” “(25) In any event, even if Ms B. should be considered to be the applicant in the present case, the application for legal aid still cannot be successful. (26) In the application for legal aid, the applicant submits that, for the purposes of assessing the merits of the application, the Court must take into consideration the economic situation of Commercy and not the personal economic situation of the company’s receiver. As the OHIM contended in its written observations on the application for legal aid, the applicant’s argument is derived from Paragraph 116(1) of the Zivilprozessordnung (the German Code of Civil Procedure), which provides that legal aid can be granted to a ‘Partei kraft Amtes’ where the assets administered by that person are insufficient to cover the costs of judicial proceedings.” “(27) It suffices, in this respect, to note that the Rules of Procedure do not contain any provision comparable to Paragraph 116(1) of the Zivilprozessordnung and state, expressly, that the benefit of legal aid is to be granted to natural persons only, by taking into account their personal economic situation. (28) In addition, at the hearing, the applicant’s representative stated, in response to a question put by the Court, that, if the action were dismissed or the applicant ordered to pay the costs, those costs would be chargeable to Commercy’s assets, and not the personal assets of Ms B. That statement was recorded in the minutes of the hearing. (29) In those circumstances, to grant the application for legal aid in the present case would, in actual fact, amount to conferring that benefit on a legal person, in breach of Article 94(2) of the Rules of Procedure.”
Pharmacheck : T-296/07 – Judgment of 21 January 2009 (only in DE, FR; action dismissed, Office practice confirmed). Keywords: Examination: restriction of the list of G&S, scope of Article 44 CTMR. Absolute grounds for refusal: descriptiveness. The action had been brought against a decision of the 4th Board of 5.6.2007 in Case R 0358/2007-4 relating to CTM application PharmaCheck, word, which had been applied for for a range of goods in class 9, mainly apparatus for weighing and measuring. It had been rejected on the grounds of lack of distinctiveness because of its descriptive character for the pharmaceutical trade. Before the CFI and after the termination of the written part of the proceedings, the plaintiff had informed the court that it had restricted the list of G&S, vis-à-vis the Office, by adding a sentence (“except for use in pharmacies and drugstores for the testing of pharmaceutical products”). The 4th Chamber of the CFI (Czúcz, rapporteur; Labucka; Papasavvas) rejected taking into account that attempt on the ground that the CTM applicant, in essence, would not restrict the initial list of goods but alter the character and possible purpose of the whole range of products. As regards rejection on absolute grounds, the court agreed, relying on standard case-law.
Giropay : T-399/06 – Judgment of 21 January 2009 (only in DE, FR; action dismissed, Office practice confirmed). Keywords: Absolute grounds for refusal: descriptiveness. The case had been brought against a decision of the 4th Board of 26.10.2006 in Case R 0308/2005-4 relating to CTM application GIROPAY, word, which had been applied for a range of goods and services in classes 9 and 36, mainly relating to financial services. It had been rejected on the ground of lack of distinctiveness because of its descriptive character for the goods and services claimed. The 4th Chamber of the CFI (Czúcz, rapporteur; Labucka; Ciucà) agreed, relying on standard case-law.
Airshower : T-307/07 – Judgment of 21 January 2009 (action dismissed; Office practice confirmed). Keywords: Absolute grounds for refusal: descriptiveness. The action had been initiated against a decision of the 1st Board of 31.5.2007 in Case R 1281/2006-1 relating to CTM application AIRSHOWER, word, which had been applied for products in class 11. It had been partially rejected, namely as regards all goods relating to shower systems and installations etc. The 4th Chamber of the CFI (Czúcz, rapporteur; Labucka; Papasavvas) confirmed that decision, relying on standard criteria.
Optimum : T-424/07 – Judgment of 20 January 2009 (action dismissed; Office practice confirmed). Keywords: Examination proceedings: scope. Absolute grounds for refusal: distinctiveness. The action had been directed against a decision of the 2nd Board of 11.9.2007 in Case R 0288/2007-2 relating to CTM application OPTIMUM, word, which had been applied for biological material, namely plant tissue genes and gene sequences for agricultural purposes in class 1. By its decision, the Board had dismissed the appeal pursuant to Article 7(1)(b) CTMR, on the ground that the sign in question is devoid of the minimal distinctive character required for registration. As a result, the Board had also considered that it was not necessary for it to examine further whether the grounds for refusal set out in Article 7(1)(c) CTMR also precluded registration of the mark applied for. The 2nd Chamber of the CFI (Pelikánová; Jürimäe, rapporteur; Soldevila Fragoso) confirmed these findings. (a) Distinctiveness and awareness of the relevant public “(24 ) Secondly, the Board inferred the lack of distinctiveness in the present case from the finding that ‘optimum’ is laudatory and from the fact that it is a common word which can be used by any undertaking for the purpose of advertising its goods or services, including the relevant goods in Class 1 of the Nice Agreement. ‘Optimum’ can be used as an indication of a promotional nature. Derived from Latin, but also in common use in most Community languages, it is one of the category of superlatives meaning ‘most favourable or advantageous’ or ‘best’. The Board of Appeal was therefore correct in its finding that it is a banal and widespread laudatory term. (25) Furthermore, the word ‘optimum’ is used in its normal grammatical form and is not perceptibly different from a lexically correct construction (see, by contrast, UltraPlus, paragraph 47).” “(26 ) Lastly, although it is true, as the Board pointed out in paragraph 21 of the contested decision, that, due to its generic meaning which tends to exalt in an unspecified manner the nature, function, quality or one of the qualities of any product, the sign OPTIMUM does not enable the consumer to imagine to what type of goods it refers, the fact nevertheless remains, as the Board of Appeal also correctly stated in the same paragraph of the contested decision, that, precisely because it is commonly used in everyday language, as well as in trade, as a generic laudatory term, that this word sign cannot be regarded as appropriate for the purpose of identifying the commercial origin of the goods which it designates and, therefore, of performing the essential function of a trade mark (Case T-242/02 Sunrider v OHIM (TOP) [2005] ECR II‑2793, paragraph 95).” “(27 ) The fact that the goods covered by the mark applied for are intended for a specialised public in no way alters that assessment, given that the level of attention of such a public, which is generally high, is relatively low when it comes to promotional indications (see, to that effect, Case T‑130/01 Sykes Enterprises v OHIM (REAL PEOPLE, REAL SOLUTIONS) [2002] ECR II-5179, paragraph 24). (28) It is apparent from the foregoing considerations that the Board of Appeal did not make an error of assessment in concluding that the mark applied for is devoid of any distinctive character.” (b) Broadness of substantiation of a decision “(42 ) First, under Article 74(1) CTMR, OHIM examiners and, on appeal, the Boards are required to examine the facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of the OHIM may be led to base their decisions on facts which have not been put forward by the applicant for the mark (Case C‑25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 50). (43) Secondly, whilst it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, that is not the case when they rely on facts which are well-known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (see, to that effect, Storck v OHIM, paragraph 51, and Case T‑185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-1739, paragraph 29). An applicant for a trade mark, against whom the competent bodies of the OHIM rely on such well-known facts, may still challenge the accuracy of those facts before the Court of First Instance (Storck v OHIM, paragraph 52).” “(44 ) Lastly, if they are minded to refuse the application for a trade mark on the basis of an absolute ground of refusal, the competent bodies of the OHIM are required to state the reasons for their decision pursuant to the first sentence of Article 73 CTMR. That statement of reasons has two purposes: to allow interested parties to know the justification for the measure adopted so as to enable them to protect their rights and to enable the Community judicature to review the legality of the decision (see Mozart, paragraph 43, and the case-law cited). (45) In the present case, first, it is apparent from the analysis carried out in the context of the first plea that the Board of Appeal established to the requisite legal standard that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) CTMR in relation to the goods concerned, by stating, in paragraph 23 of the contested decision, that the mark, as a laudatory expression, could relate to any kind of goods including the goods applied for in Class 1 of the Nice Agreement. That statement of reasons is sufficient, first, to allow the applicant to know the justification for the measure adopted so as to enable it to protect its rights and, secondly, to enable the Court to review the legality of the contested decision.” “(46 ) Secondly, contrary to what the applicant maintains, it is not the task of the bodies of the OHIM to adduce further evidence in order to establish that the term at issue is actually used as a laudatory expression in the relevant field of business or in relation to the goods concerned. Since the applicant claims that the trade mark applied for is distinctive, despite the analysis of the Board of Appeal based on clear and convincing reasoning, it is for the applicant to provide specific and substantiated information to show that the trade mark applied for has an intrinsic distinctive character, since it is better placed to do so, given its thorough knowledge of the market (see Case T-129/04 Develey v OHIM (shape of a plastic bottle) [2006] ECR II-811, paragraph 21, and the case-law cited).” “() Thirdly, as regards the fact that the applicant was not heard by the Board on the transfer of the meaning of the term ‘optimum’, as possibly used in fields of business other than that concerned in the present case, to the specific field of the goods covered by the trade mark application, the Board referred only to the general meaning of the term in question irrespective of its use in specific fields of business. As the general meaning of that term is a well-known fact, the Board was not, in accordance with the case-law cited in paragraph 43 above, obliged to give the applicant a chance to comment on the transfer of that meaning to the specific field of the goods covered by the trade mark application. That is all the more true in the present case since the applicant has not, at any point, established, or even claimed, that the term may have, with regard to the goods covered by the trade mark application, a meaning different from its general meaning.”
Touchnet : T-347/08 – Order of 19 December 2008 (case closed; Board decision stands). Keywords: Opposition: likelihood of confusion (LOC). LOC: comparison of goods and services. The action had been initiated against a decision of the 2nd Board of 28.5.2008 in Case R 0493/2007-2 relating to CTM application “iTouch” (figurative mark).
It had been applied for for the following services in class 38: communication services; dissemination of information over the internet and by mobile telephone and mobile communication devices; communication by means of computers, electronic mail, mobile telephones and mobile telecommunication devices; mobile telephone communication services; computer-aided transmission of messages and images to mobile telephones and mobile communication devices; news agency services; satellite transmission, and in class 42 for consulting and assistance in relation to computer software; hardware, firmware and in relation to information technology and communication systems; rental of computer systems to deliver telephony information services; recovery of digital computer data; provision of information relating to current and future events and activities; consultancy in the field of computer related telecommunications. The CTM application had been challenged on the basis of an earlier CTM right in TOUCHNET, word, registered in class 9 inter alia for computer hardware, namely, optical laser reader/writer CD-Rom drives, bar code readers, and modems, and integrated computer software enabling remote access to, interaction with, and operation of electronic systems for business, financial, and academic functions and operations; and computer programmes for accessing, transmitting, searching, retrieving, printing, downloading, monitoring, and reporting on information from remote databases containing audio, video, graphic, and text-based information; in class 37 for maintenance and repair of computer circuitry, and in class 42 for computer programming for others. The opposition had been fully successful. The plaintiff in the proceedings made a statement that it wished to discontinue proceedings.
Shift/Swift : T-74/06 – Order of 17 December 2008 (case closed; Board decision stands). Keywords: Opposition: earlier right with reputation. Opposition: likelihood of confusion (LOC). The action had been initiated against a decision of the 1st Board of 8.12.2005 in Case R 1180/2004-1 relating to CTM application 2.419.349, SHIFT, word. It had been applied, in class 9, for pressure air gauges, motorcycle and safety helmets and protective clothing for motorcyclists and cyclists; in class 16 for decals, stickers, calendars and catalogs relating to motocross sports clothing, protective gear, footwear, casual wear and accessories, in class 18 for luggage, backpacks, bumbags , all purpose sports bags, tool packs sold empty and umbrellas, and in class 25 for clothing, namely, jackets, raincoats, sweatshirts, jerseys, shirts, blouses, trousers , tights, shorts, hats, caps, sweatbands, headbands, gloves, belts, shoes, boots, socks and aprons.
The CTM application had been opposed on the basis of earlier rights in figurative marks containing “SWIFT”, registered in classes 9 and 25. The opponent had claimed reputation for the invoked brands. Whereas the opposition division had allowed the opposition in full, the Board had partially rejected it. On the one hand, it had found that there was LOC only as regards part of the goods in class 9 (namely except pressure air gauges), and no LOC as regards all the goods in classes 16 and 18. Upon an out-of-court agreement of the parties, the case was closed.
Addis : T-253/08 – Order of 15 December 2008 (manifestly inadmissible). Keywords: CFI proceedings: formalities. CTMR formalities: restitutio in integrum. The case had been initiated against a decision of the 1st Board of 2.4.2008 in Case R 1017/2007-1 relating to renewal of CTM Addis, word, which had not been undertaken in good time, and to the subsequent rejection of a request for restitutio in integrum. Since the appeal to the CFI had been brought out of time, the action was a limine rejected as inadmissible.
C-2: CFI Judgments and Orders: Developments in pending cases Matratzen Concord : T-351/08 – Office response filed (DE). Keywords: Opposition: proof of use (POU). Opposition: earlier national right with a generic meaning in another EU language. Opposition: likelihood of confusion (LOC). The action has been brought against a decision of the 2nd Board of 30.5.2008 in the “Matratzen” issue, Case R 1034/2007-2, relating to CTM application 3.355.369, Matratzen Concord (figurative mark). The colours claimed were blue, white and red.
Registration had been sought for the following goods in class 10: cushions, pillows, mattresses, air cushions and beds for medical purposes; in class 20: mattresses; air mattresses; beds; bed slats, not of metal; bedding (except linen), and in class 24: bed covers; cushion covers; bed linen; eiderdowns; ticks; mattress covers; sleeping bags. It had been opposed on the basis of “Matratzen,” word, registered in Spain in class 20, namely ‘all kinds of furniture and, particularly, rest furniture, such as beds, studio couches, camp beds, cradles, couches, hammocks, bunks and carrycots; transformable furniture; wheels for beds and furniture; bedside tables; chairs, armchairs and stools; spring mattresses, straw mattresses, mattresses and pillows’. The opposition had been successful. As regards proof of use, the opponents had filed the following documents: 122 invoices issued between September 1999 and September 2004 to a large number of clients in Spain , in particular in the region of Barcelona . 21 press clippings published in the Spanish newspapers ‘La Vanguardia’ and ‘El Periódico’ between August 2000 and July 2004. The material submitted had been considered sufficient to prove the time, place, nature and extent of use of the opposing mark, not only as regards trade as a retailer, but also directly in relation to certain types of products, namely rest furniture. The material, still, did not cover all products claimed under the registered trade mark; POU had been provided only for all kinds of ‘rest furniture’ (such as beds, studio couches, camp beds, cradles, couches, hammocks, bunks and carrycots; transformable furniture; wheels for beds and furniture; bedside tables; chairs, armchairs and stools; spring mattresses, straw mattresses, mattresses and pillows). Notwithstanding this, the goods in the challenged CTM application had been considered partially identical with and partially similar to the goods in the earlier right for which POU had been established. As regards comparison of the signs it had been held that visually, the marks have the word ‘MATRATZEN’ in common. The earlier mark is completely encompassed in the mark applied for. The CTM applied for contains the additional word ‘CONCORD’, written below the word ‘MATRATZEN’. Due to its position above the word ‘CONCORD’, the public will refer to the sign as ‘MATRATZEN CONCORD’ and therefore perceive the term ‘MATRATZEN’ as the first element of the sign. The relevant public will concentrate on the identical element ‘MATRATZEN’, being the first element of the applied mark, and pay less attention to the subsequent element ‘CONCORD’. The fact that the word ‘CONCORD’ is in red and in slightly bigger letters than the word ‘MATRATZEN’ does not change the dominant character of the first element ‘MATRATZEN’. As regards the device element included in the contested mark, it is reasonable to assume that the average consumer will perceive it as a secondary element. Consequently, the signs were found visually similar. Aurally, the signs will be pronounced as [ma-trat-zen] on the one hand and [ma-trat-zen-con-cord] on the other hand. The first three syllables are pronounced identically. Since the relevant public will focus on ‘MATRATZEN’, the first element to be pronounced in the mark applied for, the subsequent word contained in the contested sign, ‘ Concord ’, will be neglected. Taking into account the identical sound of the element ‘MATRATZEN’, the signs were considered similar from an aural perspective. Conceptually, neither of the two signs has any meaning in Spanish. In particular, the German word ‘Matratzen’ (‘mattresses’ in English) will not be understood by the average Spaniard (see Judgment of the Court of First Instance of 23 October 2002 in Case T-6/01 Matratzen Concord GmbH v OHIM (‘Matratzen 1’) [2002] ECR II-4335, at paragraph 27). A conceptual comparison therefore cannot be made. Taking into account that the goods in comparison are partially identical and partially similar, the Office concluded that there is LOC given the phonetic and visual similarity of the marks in dispute.
Goldhase 3D : T-395/08 – Office response filed. Keywords: types of signs: 3D signs. 3D signs: shape of the product itself. Absolute grounds for refusal: distinctiveness. The case has been initiated against a decision of the 4th Board of 18.7.2008 in Case R 0419/2008-4 relating to a 3D application, nr. 3.664.372, shown below. The colour gold had been claimed, and the sign had been applied for for chocolate products in class 30.
The application had been rejected on the ground of lack of distinctive character for the goods claimed because the representation of animals is commonplace in the chocolate trade, in particular “Easter hares” and the like.
G Stor : T-309/08 – Office response filed. Keywords: Opposition: earlier right with reputation, Article 8(5) CTMR. Reputation mark: risk of dilution. Risk of dilution: criteria. Opposition: another earlier right under Article 8(4) CTMR. Opposition: likelihood of confusion (LOC). LOC: comparison of goods and services. LOC: comparison of marks. The case had been initiated against a decision of the 1st Board of 14.4.2008 in Case R 1232/2007-1, relating to CTM application 4.195.368, G Stor (fig.). The application had been filed in respect of data processing equipment and computers in class 9.
It had been opposed on the basis of earlier rights in “G-STAR”, word and figurative marks, registered for goods in class 25; the opponent had claimed reputation for clothing, footwear and headgear. Further for spectacles; sunglasses, sunglass products, namely, head straps, sunglass retainers, eyeglass cases, and sunglasses cases in class 9 and clothing including sportswear, sport and swimwear; footwear including sports shoes, headgear and leather belts for clothing in class 25. The opposition furthermore had been based on the word CTM “G- STAR RAW DENIM” for goods in classes 9 and services in class 35. The opponent had claimed reputation of that trade mark in connection with glasses, sunglasses, accessories for glasses and sunglasses, including headbands/cords for glasses, glasses holders and sunglasses holders in class 9 and office functions relating to the drawing up and conducting of franchise agreements provided within the framework of the business operation of shop chains, selling horological instruments in class 35. Furthermore, the opponent sought to rely, under Article 8(4) CTMR, on the Dutch company name G-STAR INTERNATIONAL B.V. Whereas the opposition division had allowed the opposition under Article 8(5) CTMR, the Board had rejected it on the following considerations: The opposition is not well-founded under Article 8(1)(b) CTMR given that the contested goods are dissimilar to the goods and services on which the opposition had been based. The opposition is not well-founded under Article 8(5) CTMR, because "the visual and conceptual differences between the marks prevent any assumption of a possible connection between the marks" and because "the goods at issue are in no way related to each other and they are usually manufactured and offered by companies of different market sectors". The opposition is not well-founded under Article 8(4) CTMR, because even if trade names were to enjoy such wide protection according to Dutch law, there is no likelihood of confusion between the trade name ‘G-Star International B.V.’ and the figurative mark applied for. The Board considered that the relevant consumer will not suppose that an undertaking offering ‘design and production of textiles, import and retail of textiles’ also manufactures or distributes ‘data processing equipment and computers’. The Board additionally found that the signs ‘G-Star’ and the trade mark applied for are visually and conceptually dissimilar setting the signs apart despite their aural similarities.
Rotes Band mit Glöckchen (Red ribbon with a little bell) : T-346/08 – Office response filed (DE). Keywords: Types of signs: 3D. Absolute grounds for refusal: distinctiveness. The case had been initiated against a decision of the 4th Board of 13.6.2008 in Case R 0943/2007-4 relating to 3D CTM application 4.770.831, Rotes Band mit Glöckchen, red ribbon with a little bell, as shown below. It had been applied in class 30 for chocolate products.
The application had been rejected on the grounds of lack of distinctive character because, in particular in the sweets trade, items like the one making up the sign are commonplace and only perceived as decoration.
Out-4-Living : T-307/08 – Office response filed. Keywords: Opposition: likelihood of confusion (LOC). The action has been brought against a decision of the 1st Board of 7.5.2008 in Case R 1199/2007-1, relating to CTM application 4.212.841, Out-4-Living (figurative mark).
Registration had been sought in respect of goods in classes 18, 25 and 28, namely for leather and imitations of leather, and goods made of these materials (included in class 18); animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; clothing, footwear, headgear, and for games and playthings; gymnastic and sporting articles, decorations for Christmas trees. It had been opposed on the basis of an earlier right in “Living & Co” (figurative mark), registered in classes 3, 14, 16, 18, 21, 25, 34 and 35 for: leather and imitations of leather and goods made from these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery, and for clothing in general, footwear, T-shirts, sweaters and sneakers. By its decision, the Board had confirmed partial rejection of the CTM application, namely as concerns all goods itemized in classes 18 and 25, and rejection of the opposition with respect to class 28.
NEW DECISIONS FROM THE BOARDS OF APPEAL Please note that the full number including slash has to be entered in our database under 'Appeal Nº', without the letter 'R'. Revocation – Article 50(1)(c) CTMR Revocation – misleading trade mark due to use of a geographical indication Decision of the First Board of Appeal of 12 February 2009 in Case R 697/2008-1 – MÖVENPICK OF SWITZERLAND (English) R 697/2008-1 – MÖVENPICK OF SWITZERLAND The contested goods are products for which Switzerland has an established reputation, namely chocolate, pastry and confectionery. However, as can be seen in the file, and is not contested by the CTM proprietor, the goods are produced in Germany . The indication ‘Made in Germany ’ is not part of the trade mark and is not even placed anywhere near it. Consequently, the packaging, as a whole, may not be misleading, but the trade mark is. The trade mark ‘MÖVENPICK OF SWITZERLAND’ will not be understood as ‘The Mövenpick Holding Company of Switzerland ’ or ‘The Swiss-based Mövenpick Holding Company’. Neither will it be understood by the public that the goods are produced in accordance with recipes developed by the CTM proprietor. These allegations have not been even minimally substantiated and lack any plausibility. The only message the trade mark conveys to the public is about a country and not the quality, recipe or chocolate content. The argument that the trade mark is not used any more is also not valid. In order to avoid revocation the CTM proprietor should have made the manufacturing location of the contested goods coincide with the country named in the CTM: it should have moved the production site from Germany to Switzerland. However, the CTM proprietor did not change the production site: it created a new mark – MÖVENPICK. The CTM is thus revoked for the goods in question.
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