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A new European Commission consultation on the links between design and innovation has shown that the majority of respondents, including companies from outside the design sector, consider that design is "very important" for the future competitiveness of the EU economy. The registered Community design (RCD) was created in 2003 in order to provide access to design protection covering the whole of the EU. Since then OHIM has registered just under 400 000 designs on behalf of companies from all over the world. The RCD has been popular since the start, showing steady annual growth right up until the current global recession. Figures for designs for the year to September show that we have received 53,000 designs, a drop of 11% compared with the same period in 2008. The impact has been greater in some countries than others. In design-conscious Italy , RCDs are down just 7% and overall, there are recent signs that applications are starting to grow again. Design totals are still down in the second and third quarters, but not by as much as in the early part of the year.
The slower speed of recovery of design applications contrasts with the much more rapid return to 2008 levels seen in Community trade marks. CTM applications for the year, helped by strong demand in the second quarter, stand at 58,000 – just 4% down on the previous year.
The most recent European Commission public consultation, on designs, demonstrates that there is a strong consensus that companies must invest in design in order to remain competitive. The design consultation received a total of 535 online replies from organisations and individuals. The organisations ranged from national ministries for enterprise and industry to design companies, and a range of large and small European companies. While overall, more than 91% of respondents gave strong support for the link between design and competitiveness, almost three-quarters of the companies whose main business was outside the design sector also agreed. When asked to describe why they believed design was so important, many referred to the necessity for Europe to compete on quality and sustainability as opposed to price, and the important role of design as a differentiator. The design of products – goods, services, experiences – was considered an essential driver of technological and non-technological innovation as it increased the probability of market success, shortened time to market and potentially cut costs. In terms of the European-level initiatives desired, the organisations felt “awareness raising and design promotion” was the area where public initiatives in support of design would be most useful (82%). This was followed closely by “design education” (75%) and “design research” (74%). A total of 68% considered that “design support to organisations” was what was needed. Only 1% of organisations considered that public initiatives in support of design were not useful. For more details see: Results of the public consultation on design.
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The James Nurton interview with Sarah Bailey, Simmons & Simmons, Paris How long have you been working in trade marks? As the office had only just opened, we had to do whatever work came in on the fax. One of our principal clients was a big international company with a large trade mark portfolio. It was also in a regulated business, which gave rise to labelling and advertising issues, so it was a lot of very good experience. That led me to decide to specialise in trade marks, so I studied for a Certificate in Intellectual Property at the University of Strasbourg . The profession in France was changing at the time – the conseils juridiques and avocats were merging – and I qualified as an avocat in 1995 after a further 200 hours of training. What work do you do now? In addition to the firm's international clients, we also have a nice French client base, particularly among businesses that are seeking to look beyond national borders using the Madrid or CTM systems. My added value is that I can provide advice in English as well as French. What work do you do before OHIM? What do you think of OHIM's service? We do a lot of work in oppositions and personally I'm not sure about the idea of a two-year cooling-off period for oppositions: two years is a very long time and there is a temptation to let the matter drift. For brand owners, it is usually good to move things along as quickly as you can, otherwise a level of risk always remains. You are left in limbo during the opposition procedure: we have one client that has three separate opposition procedures against the same CTM application that have been going on for years. In fact, this was the very first application I filed at OHIM. The idea of producing a table of goods and services showing which are similar or not will help OHIM to speed up the system and will help us to predict OHIM's position. I haven't seen much detail on this yet, but my concern is that it will make the position at first instance too inflexible and you will only be able to change it at the appeal stage. That could just lead to a bottleneck at the Boards of Appeal. Have you filed any unusual trade marks? We have looked at protecting scents and perfumes but ultimately the clients have decided not to pursue those. More and more, we're using RCDs to protect product shapes and the like, given the difficulty of getting them accepted as trade marks from the start. How many CTMs do you file? How does the French office compare? But the French office can be more difficult in terms of the specification. For example, we recently filed an application in the internet/telecoms field and used the same specification for the national mark and the CTM. OHIM had just one comment and the French office had five pages. It was a fairly technical specification and they wanted it to be as precise as possible. How do you decide what strategy to recommend? Have you filed many Community designs? The French courts have recently referred the AdWords cases involving Google, as well as the Webshipping case, to the ECJ. Do you think this shows a greater interest in IP issues? What do you make of the Advocate General's opinion in the AdWords case, which was given earlier this month? The opinion will make brand owners very nervous, as they would generally like to see Google forced to change its practice. But, although it's not what brand owners were hoping to read, it's not all bad news. First, the Advocate General said specifically that there is a need to assess national rules of liability, such as on unfair and parasitic competition or misleading advertising in France . Second, he ruled out the defence under the e-commerce directive, saying Google was clearly involved in what was going on to its system. We will have to wait and see what the court decides. The ECJ may want to look at the recent case of L'Oréal v Bellure which said that marks can have other functions than identifying origin, for example in advertising and investment. That might be more helpful for brand owners. What does the Webshipping case involve? I'm not sure pan-EU enforcement has been as popular as some thought it might be. Maybe CTM owners are reluctant to ask for it, or maybe it is happening without being reported? What has been the biggest change in your career? There will be a big change in France next year, when the conseil en propriété industrielle are expected to merge into the legal profession. That will result in a lot of fluidity in the market. This is part of a review of the legal profession, which is looking to modernise itself and become more competitive.
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| Community Trade Mark | Invalidity claim based on “earlier rights” in the UK and France fails An application to have the CTM “ HAWK ” declared invalid on the grounds that it conflicted with earlier rights in the UK and France has been rejected by OHIM's Cancellation Division. The CTM was registered in 2003 by the US company, Tony Hawk, Inc, for a range of goods and services including clothing, headwear and footwear. The invalidity applicant, the Fetish Group, cited, among other grounds, that it had used the similar sign “ GOLD HAWK ” as a non-registered trade mark, trade name, or company name in the United Kingdom and France since before 2002, and that the CTM had been registered contrary to rights established under national law in these countries. In support of its claims, the applicant submitted a range of invoices related to clothing sales in various parts of the world, including sales worth around $20,000 in France in 2003 and eleven invoices showing sales in the United Kingdom amounting to a total of $78,000 USD in 2002 and 2003. The invoices were marked with the applicant's company name “Fetish Group Inc. dba GOLD HAWK ”. The CTM proprietor, argued that the applicant failed to substantiate the claimed earlier rights as an invoked earlier trade name in France required the registration of a corporate name. The Fetish Group had not shown that it had the right to a corporate name under French law and French national law did not admit unregistered trade marks. In addition, for “trade names” or “commercial names” to be protected under French law, they had to be known in the whole French territory. With regard to the United Kingdom , the CTM proprietor argued that the applicant failed to show that the three necessary prerequisites for protection against passing off, i.e. goodwill, misrepresentation and damage, were fulfilled. OHIM's Cancellation Division said that as far as the invoked earlier rights were concerned, the evidence in the form of invoices relating to territories outside France and the United Kingdom was irrelevant for the case at hand and would be disregarded. With regard to the use of the mark “ GOLD HAWK ” in France , it was a specific requirement under Article 8(4) CTMR that the earlier mark had been “used in the course of trade of more than mere local significance”. However, the Cancellation Division found that the evidence of sales in France was limited to two invoices from the year 2003 relating to one shop in Paris , which did not reach the necessary level of relevance in terms of geographical spread or economic impact. The national law relating to the United Kingdom invoked by the applicant was the tort of passing off. The Cancellation Division found that for an action under passing off to succeed, the opponent must prove:
However, the eleven invoices submitted by the applicant were not sufficient to show that the invoked sign had obtained the required level of recognition among the public, and among the professional users in the clothing and fashion business. Accordingly, the applicant had failed to show that its invoked sign had the goodwill that was a necessary precondition for passing off. The Cancellation Division ruled: “As the applicant failed to show that any of the invoked grounds is applicable, the request for a declaration of invalidity has to be rejected in its totality.”
The service sector accounts for an estimated 71% of Italian GDP , followed by industry ( 27%) and agriculture (2%). Italian undertakings have filed more than 58 000 CTMs in total, including over 7 000 last year. This year so far, there have been more than 5 300 filings.
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Registered Community Design | Disclosure of a prior design by file inspection OHIM's Invalidity Division has recently taken a decision 1 in a case that concerned an application for invalidity of a registered Community design (RCD) for insulation blocks (design shown below). The decision adds to the interpretation of disclosure, visibility and technical functionality defined in the Community Design Regulation (CDR). Firstly, the Invalidity Division had to decide whether an insulation block was a component part of a complex product in the meaning of Article 3(2) CDR. As explained by the holder of the contested RCD the insulation blocks are normally rigidly connected to the walls of buildings by way of gluing and afterwards covered with plasterwork. They are not component parts of complex product because they cannot be replaced permitting disassembly and reassembly of the product. Therefore, the Invalidity Division found that Article 3(2) CDR did not apply in this case. Secondly, the Invalidity Division was confronted with the question whether a registered German utility model which was accessible to the public through file inspection was made available to the public in the meaning of Article 7(1) CDR and thus was part of the design corpus to be taken into consideration when assessing the novelty and the individual character of a Community design. The Invalidity Division answered the question in the affirmative since the presence of a document in a file kept by an IP Office where the file is available to the public by means of file inspection is not an event that cannot reasonably have become known in the normal course of business to the circles specialised in the sector concerned. Finally, the Invalidity Division had to decide whether a pattern of darker speckles against a lighter background was solely dictated by the technical function of the insulation block in the meaning of Article 8(1) CDR as argued by the applicant. In support of his argument the applicant provided two utility model registrations for foamed insulation material consisting of a mixture of pigmented and non-pigmented particles with improved thermal and mechanical qualities. The Invalidity Division found that these documents were in fact evidence that there were various embodiments (i.e. designs) for the same technical solution disclosed therein and hence the embodiment, which was made the subject-matter of the RCD, could not be solely dictated by the technical function of the insulation block. 1 Decision of the Invalidity Division of 9 October 2009 , in case ICD 5353 on the validity of RCD 150917-0004 Italy is the second largest user of the registered Community design system after Germany . Italian undertakings have registered almost 64 000 RCDs to date, including more than 10 400 last year, and over 7 500 so far in 2009. The most popular classes for RCDs are 6, 2 and 7. E-filing now accounts for 45% of Italian RCD filings, with mail the second most popular at 41%. Around 14% of Italian RCDs continue to be filed by fax.
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New "watch" service for MyPage users The CTM Watch service allows users to select any CTM application or International Registration and receive an e-mail alert when the status changes. Users can use the filter options to easily define their display settings, and e-mail alerts are set by specifying the subject and e-mail address in the e-mail settings section. CTM Watch will automatically send e-mail alerts either to the newly specified e-mail address or to the existing e-mail address already stored in MyPage platform
In the next step, a list of CTMs/IRs can be created by simply entering the CTM/IR number or starting a search in the CTM-ONLINE link.
Finally, choosing alert triggering statuses can easily be done with a few clicks in the list of selected CTMs or IRs.
Any status change to the chosen CTM or IR is then communicated to the user by e-mail as in the example below.
The new Goods & Services Section has a more user-friendly interface and provides more guidance on classification. It also introduces more controls to the data input such as, for example, checks if parentheses are closed. 1- Improved search service.
Search results are displayed in a list of Goods & Services from which the desired class can be selected. Once chosen by clicking on “Select”, the terms are transferred to a box indicating the class number, description of Goods & Services, and possible actions that can be performed on the chosen class description.
Alternatively, a link to “Advanced search in EuroClass” allows searching of the EuroClass database from where it is possible to import appropriate descriptions commonly accepted by the Office.
2- Validate your list of goods and services
The Goods & Services class box also allows entering your own list of goods and services. However, using terms and classifications other than those contained in our database may slow down the examination process significantly. When inserting your own list of goods and services you will be required to click on the “Save and validate” button in order to verify that the selected or inserted Goods and Services are accepted by OHIM. The validation process provides guidance regarding the acceptance of the classification. Terms can be:
For any further clarification please contact us at information@oami.europa.eu
State of play of future projects:
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An official from OHIM's Department for IP Policy has taken part in a symposium in China aimed at promoting the improvement of trade mark legislation. The event was organised by the Legal Advisory Service of the GTZ (German Development Cooperation) and the Legislative Affairs Commission of the National People's Congress, in Beihai from 14-16 October. The purpose of the symposium was to introduce legislative solutions for specific problems in the field of trade mark law, such as opposition and revocation requests and appeal procedures. The event was an important opportunity to explain the pros and cons of changes such as the abandonment of ex officio examination on relative grounds, currently under discussion among the Chinese authorities. |
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Monthly statistical highlights* September 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 Zipcar/Cicar : C-394/08-P – Appeal from T-36/07; Order of 3 June 2009 ( a limine rejected; CFI and Office confirmed). Keywords: ECJ proceedings: admissible claims. CFI proceedings: what is a new claim? Opposition: likelihood of confusion (LOC). By this action the plaintiff and CTM applicant sought annulment of the judgment of 25.6.2008 of the CFI in Case T-36/07. The sign in question had been ZIPCAR, claimed inter alia in class 39, which had successfully been opposed on the basis of CICAR, registered in the same class. Before the CFI, the Office had set out examples meant to explain certain arguments. These Examples had been challenged as being inadmissible “new material”. The 5 th Chamber of the ECJ (Ilesic, rapporteur; Borg Barthet; Levits) rejected that argumentation, and dismissed the rest of the action as partially clearly inadmissible and partially unfounded, relying on standard case law. Patentconsult : C-80/09-P – Appeal from T-335/07; Office response filed (DE). Keywords: Absolute grounds for refusal: distinctiveness/descriptiveness. The case is an appeal from a judgment of the CFI of 16.12.2008 in Case T-335/07 relating to CTM application PATENTCONSULT, word, which had been applied for a range of consulting services in classes 35, 41 and 42, included amongst which were services as a “Patentanwalt” (patent attorney). It had been rejected under Article 7(1)(c) CTMR. The 4th Board had confirmed rejection (decision of 25.6.2007, Case R 02999/2007-4) and subsequently the CFI had rejected the appeal, relying on standard case law. Bateaux Mouches : C-78/09-P – Appeal from T-365/06; Office response filed. Keywords: Absolute grounds for refusal: signs which became generic in the trade, Article 7(1)(d) CTMR. Distinctiveness: acquired ex post registration, Article 51(2) CTMR. The case is an appeal from the decision of the CFI of 10.12.2008 in Case T-365/06 relating to an invalidation case directed against CTM 1.336.122, BATEAUX MOUCHES, word, which covers services in classes 39, 41 and 42, included amongst which is the transportation of tourists by boat. The holder of the CTM is Bateaux Mouches S.A. in Paris ( France ). The requestor for cancellation, domiciled in Munich , Germany , had argued that the term had become generic in the trade. Whereas the cancellation division had rejected the request, the Board had partially allowed it. The 7 th Chamber of the CFI then confirmed the Board's decision. Bud/Bud : C-96/09-P – Appeal from T-225/06 (and others); Office response filed. Keywords: Geographical indications of origin and complementary indications. Lisbon Agreement - EU trade mark law and bilateral agreements of Member States. The case is an appeal from a judgment of 16 December 2008 of the CFI in joined Cases T-225/06, T-255/06, T-257/06 and T-309/06 (‘Bud-Bud'). The background is the following: On 1 April 1996 , 28 July 1999 , 11 April and 4 July 2000 Anheuser-Busch, Inc., the plaintiff in the present proceedings, filed four CTM applications under Nos. 24.711, 1.257.849, 1.603.539 and 1.737.121 (one figurative sign and three word signs). Registration had been sought for goods in classes 16, 21, 25 and 32 and for services in classes 35, 38, 41 and 42.
These applications had been opposed by ‘Budejovicky Budvar narodni podnik' based on several earlier rights (shown above) which cover all types of beer in class 32. Amongst the said rights is a Lisbon appellation of origin, No. 598 ( BUD ), registered for beer on 10 March 1975 under that Agreement with effect in France, Italy and Portugal, and the designation of origin ‘ BUD ' protected in Austria, in respect of beer, by virtue of a bilateral agreement concluded on 11 June 1976 between Austria and Czechoslovakia. As regards CTM applications Nos. 1.257.849, 24711 and 1.603.539, the opposition division (OD) had dismissed the oppositions in their entirety. As regards CTM application No 1.737.121, the OD upheld the opposition in respect of the services of ‘restaurant, bar and pub services' and it dismissed it for the remainder. Four appeals were remitted to the 2nd Board. By its three decisions of 14 June 2006 (Case R 0234/2005-2 relating to CTM No 1.603.539), 28 June 2006 (Case R 0241/2005-2 relating to CTM No 1.257.849) and 1 September 2006 (Case R 0305/2005-2 relating to CTM No 24.711), the Board dismissed the appeals brought by Budejovický Budvar. By a decision of 28 June 2006 (Case R 0802/2004-2 relating to CTM No 1.737.121) the Board upheld the appeal brought by Anheuser-Busch and dismissed the opposition filed by Budejovický Budvar in its entirety. The Board considered in the four decisions that Budejovický Budvar intended to rely exclusively on its earlier appellations of origin BUD as it had abandoned any claim based on its earlier international trade mark registration. The grounds for the opposition were therefore limited to Article 8(4) CTMR as Article 8(1)(b) CTMR was deemed abandoned. The Board then held that BUD , not being the geographical name of a place in the Czech Republic , is not an appellation of origin or a designation of origin. It concluded that an opposition could not succeed under Article 8(4) CTMR on the basis of a right that was presented as an appellation of origin, but was in fact not one. The Board also applied by analogy the provisions of Article 43(2) and (3) CTMR and of Rule 22 CTMIR, and found that the evidence supplied by Budejovický Budvar in order to substantiate the use of the appellation of origin ‘ BUD ' in Austria, France, Italy and Portugal was insufficient. Finally, the Board held that the oppositions had to be rejected on the grounds that Budejovický Budvar had not demonstrated that the appellation of origin in question gave it the right to prohibit use of the word ‘ BUD ' as a trade mark in Austria or France . Appeals requesting the annulment of the decisions of the Board were lodged before the CFI by Budejovický Budvar, based on two pleas in law, namely infringement of Article 7(1)(f) and (g) and of Article 8(4) CTMR. By its judgment of 16 December 2008 at issue here, the CFI held in favour of Budejovický Budvar on account of a violation of Article 8(4) CTMR. The CFI ordered the Office and Anheuser-Busch to bear the costs. Barbara Becker : C-51/09-P – Appeal from T-212/07; Office response filed. Keywords: Opposition: likelihood of confusion (LOC). Conflict of marks/specific problem: personal name(s). The case is an appeal from a judgment of the CFI of 2.12.2008 in Case T-212/07. In November 2002, Ms Barbara Becker, the former wife of Boris Becker, had filed an application, seeking to register as a CTM ‘Barbara Becker' (word sign). The goods in respect of which registration had been sought fall within class 9. In June 2004, Harman International Industries, Inc., filed an opposition based on CTM BECKER ONLINE PRO, 1.823.228, and on the CTM application for the word sign BECKER, 1.944.578, both in class 9. By its decision, the opposition division upheld the opposition on the ground that there was LOC between the marks. It considered in particular that the marks were identical at a conceptual level in so far as they refer to the same surname. Upon appeal, the 1 st Board annulled that decision. Taking into account the earlier word mark BECKER, the Board found no LOC in that the signs at issue were visually and phonetically similar only to some extent. From a conceptual point of view, the Board considered that the signs at issue were clearly distinct in Germany and the other countries of the European Union on account of the fact that the relevant public would perceive the mark in its entirety, that is to say Barbara Becker, rather than as a combination of “Barbara” and the surname “Becker”. In this context, the Board noted that Barbara Becker was a celebrity in Germany , while the name Becker was generally recognised as an ordinary and widespread name. In its challenged judgment, the CFI annulled the Board's decision. B: European Court of Justice Preliminary Rulings Zino Davidoff : C-302/08 – Judgment of 2 July 2009 . Keywords: International registration: Protocol of Madrid . International registration: Article 146 CTMR. Regulation (EC) No 1383/2003: Article 5(4); goods suspected of infringing a trade mark. CTM infringement: customs action. CTM infringement: right to secure action also in Member States other than the Member State in which the application is lodged. The case had been a reference from the Finanzgericht (FG) München ( Taxation Law Court ). It concerned the interpretation of Article 5(4) of Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights (OJ 2003 L 196, p. 7), and Article 146 CTMR. The reference had been made in the course of proceedings between Zino Davidoff SA and the Bundesfinanzdirektion Südost (South Eastern Federal Revenue Office) concerning Davidoff's application for border seizure in respect of 12 internationally registered trade marks, of which it is the holder. The European Union acceded with effect from 1 October 2004 to the Protocol relating to the Madrid Agreement pursuant to Council Decision 2003/793/EC of 27 October 2003 (OJ 2003 L 296, p. 20). On 10 May 2007 , on the basis of Article 5(4) of Regulation No 1383/2003, Davidoff lodged an application with the Bundesfinanzdirektion Südost , for border seizure of goods suspected of infringing 12 internationally registered trade marks. That action was dismissed on 22 August 2007 on the grounds that Article 5(4) of that regulation concerns only ‘the right-holder of a CTM' and that that regulation was not amended by the Community legislature despite the Community's accession to the Protocol. Davidoff brought an appeal against that decision before the FG München. The referring court takes the view that the Community provisions at issue pose interpretation problems. For its part, it is of the view that, by its very wording, Article 5(4) of Regulation No 1383/2003 also applies to the right-holder of an internationally registered trade mark, since such a trade mark is treated as a Community trade mark with regard to its effects in the Community. In those circumstances, the Finanzgericht München decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling: “In the light of the accession of the Community to the [Protocol], is Article 5(4) of Regulation [No 1383/2003] to be interpreted as meaning that, despite the use of the term “Community trademark”, marks with international registrations within the meaning of Article 146 et seq. of Regulation [No 40/94], are also covered?” In its very brief decision (without opinion of the Advocate General), the 6 th Chamber of the ECJ (Bonichot; Makarczyk; Bay Larsen, rapporteur) answered: “Article 5(4) of Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights, read in the light of Article 146 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, as amended by Council Regulation (EC) No 1992/2003 of 27 October 2003, is to be interpreted as allowing the holder of an internationally registered trade mark to secure action by the customs authorities of one or more other Member States, besides that of the Member State in which it is lodged, just like the proprietor of a Community trade mark.” L´Oreal/Bellure : C-487/07 – Judgment of 18 June 2009 . Keywords: TM-Directive 89/104/EEC: Article 5(1) and (2). Infringement: use in comparative advertising. Dilution. TM infringement: presentation of goods as imitations or replicas. Directive 84/450/EEC on Comparative Advertising: Article 3a(1)(g) and (h). The case is a reference under Article 234 EC from the Court of Appeal, made by decision of 22 October 2007 in proceedings between L´Oreal SA v Bellure NV and others. L'Oreal produces and markets fine fragrances. In the UK , they are proprietors of the well-known Trésor perfume marks (word and 3D, the Trésor bottle mark). In the UK , the defendants market imitations of the plaintiff's fine fragrances. Some bottles are generally similar in appearance to those of the plaintiff. It is nonetheless not in dispute that that similarity is unlikely to mislead professionals or the public. In marketing perfumes the defendants use comparison lists which they provide to their retailers and which indicate the word mark of the fine fragrance of which the perfume being marketed is an imitation. L'Oreal brought proceedings before the High Court (Chancery Division), alleging infringement of their trade mark rights. L'Oreal claimed, first, that the use of the comparison lists constituted an infringement of the rights pertaining to their word marks and of their figurative marks. They submitted that such infringement is prohibited by section 10(1) of the UK Trade Marks Act 1994. They argued, secondly, that the imitation of the bottles and packaging of their products and the sale of perfumes in that packaging constituted an infringement of the rights pertaining to their marks, under section 10(3) of the TMA 1994. By judgment of 4 October 2006 , the High Court granted the application in so far as it was based on section 10(1) of the TMA. However, to the extent to which the application was based on section 10(3) of the act, it granted the application as regards only the Trésor packaging mark and the Miracle bottle mark. In those circumstances, the Court of Appeal decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling: “(1) Where a trader, in an advertisement for his own goods or services, uses a registered trade mark owned by a competitor for the purpose of comparing the characteristics (and in particular the smell) of goods marketed by him with the characteristics (and in particular the smell) of the goods marketed by the competitor under that mark in such a way that it does not cause confusion or otherwise jeopardise the essential function of the trade mark as an indication of origin, does his use fall within either (a) or (b) of Article 5(1) of Directive 89/104? (2) Where a trader in the course of trade uses (particularly in a comparison list) a well-known registered trade mark for the purpose of indicating a characteristic of his own product (particularly its smell) in such a way that: (a) it does not cause any likelihood of confusion of any sort; and (b) it does not affect the sale of the products under the well-known registered mark; and (c) it does not jeopardise the essential function of the registered trade mark as a guarantee of origin and does not harm the reputation of that mark, whether by tarnishment of its image or dilution or in any other way; and (d) it plays a significant role in the promotion of the trader's product, does that use fall within Article 5(1)(a) of Directive 89/104? (3) In the context of Article 3a[1](g) of [Directive 84/450], what is the meaning of “take unfair advantage of” and in particular, where a trader in a comparison list compares his product with a product under a well-known trade mark, does he thereby take unfair advantage of the reputation of the well-known mark? (4) In the context of Article 3a[1](h) of the said directive, what is the meaning of “present[ing] goods or services as imitations or replicas” and in particular does this expression cover the case where, without in any way causing confusion or deception, a party merely truthfully says that his product has a major characteristic (smell) like that of a well-known product which is protected by a trade mark? (5) Where a trader uses a sign which is similar to a registered trade mark which has a reputation, and that sign is not confusingly similar to the trade mark, in such a way that: (a) the essential function of the registered trade mark of providing a guarantee of origin is not impaired or put at risk; (b) there is no tarnishing or blurring of the registered trade mark or its reputation or any risk of either of these; (c) the trade mark owner's sales are not impaired; and (d) the trade mark owner is not deprived of any of the reward for promotion, maintenance or enhancement of his trade mark; (e) but the trader gets a commercial advantage from the use of his sign by reason of its similarity to the registered mark, does that use amount to the taking of an “unfair advantage” of the reputation of the registered mark within the meaning of Article 5(2) of [Directive 89/104]?“ The 1 st Chamber of the ECJ (Jann; Ilesic, rapporteur; Tizzano; Borg Barthet; Levits) gave the following answer: “(1) 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 must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of that mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image. (2) Article 5(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of a registered trade mark is entitled to prevent the use by a third party, in a comparative advertisement which does not satisfy all the conditions, laid down in Article 3a(1) of Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising, as amended by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997, under which comparative advertising is permitted, of a sign identical with that mark in relation to goods or services which are identical with those for which that mark was registered, even where such use is not capable of jeopardising the essential function of the mark, which is to indicate the origin of the goods or services, provided that such use affects or is liable to affect one of the other functions of the mark. (3) Article 3a(1) of Directive 84/450, as amended by Directive 97/55, must be interpreted as meaning that an advertiser who states explicitly or implicitly in comparative advertising that the product marketed by him is an imitation of a product bearing a well-known trade mark presents ‘goods or services as imitations or replicas' within the meaning of Article 3a(1)(h). The advantage gained by the advertiser as a result of such unlawful comparative advertising must be considered to be an advantage taken unfairly of the reputation of that mark within the meaning of Article 3a(1)(g).” 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 Bounty or Chocolate Snack 3D : T-28/08 – Judgment of 8 July 2009 (action dismissed; Board confirmed). Keywords: Procedural law: right to be heard. Types of signs: 3D. Absolute grounds for refusal: distinctiveness. Distinctiveness: 3D signs. Distinctiveness: acquired on the market. The action had been initiated by Mars Inc. against a decision of the 2 nd Board of 23.10.2009 in Case R 1325/2006-2 by which the Board had revoked a decision of the cancellation division rejecting a request for invalidation directed against a 3D CTM (chocolate snack; shown below). The CTM was registered in class 5 for medicated confectionery, in class 29 for snack foods and in class 30 for non-medicated confectionery; pastries, cakes, biscuits; ices, ice cream, ice cream products, frozen confections; chilled desserts, mousses and sorbets.
In essence, the Board found, first, that the cancellation division was right to regard the mark at issue as ineligible for registration under Article 7(1)(b) CTMR on the grounds that its appearance does not depart significantly from the norms and customs of the relevant sector. Secondly, the Board decided that it was not necessary to consider whether Article 7(1)(c) CTMR was applicable. Thirdly, the Board found that the documents submitted by the plaintiff were insufficient to demonstrate that the mark at issue had acquired distinctiveness through use in connection with the goods concerned in the part of the EU in which it had not ab initio had such distinctive character, in accordance with Article 7(3) and Article 51(2) CTMR (now Article 52(2) of Regulation No 207/2009). Lastly, in view of that finding, the Board did not evaluate whether the plaintiff had provided sufficient proof of use of the mark at issue in respect of the United Kingdom , Belgium , France , Germany , Italy and the Netherlands and did not evaluate the evidential value of the consumer surveys submitted by the plaintiff. The 4 th Chamber of the CFI (Czúcz; Labucka; O'Higgins, rapporteur) confirmed the Board's decision, as regards substantial issues relying on standard case law. Distinctiveness acquired on the market “(44 ) It is apparent from the case-law that the acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the goods or services concerned as originating from a particular undertaking because of the mark (Case T-399/02 Eurocermex v OHIM (shape of a beer bottle) [2004] ECR II-1391, paragraph 42). However, the circumstances in which the requirement related to the acquisition of distinctive character through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages (see, by analogy, Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 52, and Case C-299/99 Philips [2002] ECR I-5475, paragraphs 61 and 62). (45 ) It is also settled case-law that, in order to have the registration of a mark accepted under Article 7(3) of Regulation No 40/94, the distinctive character acquired in consequence of the use of that mark must be demonstrated in the part of the Community where it was, ab initio , devoid of any such character under Article 7(1)(b) to (d) of that regulation (Case C-25/05 P Storck v OHIM [2006] ECR I-5719, paragraph 83; Case T-91/99 Ford Motor v OHIM (OPTIONS) [2000] ECR II-1925, paragraphs 26 and 27; Case T-402/02 Storck v OHIM (shape of a sweet wrapper) [2004] ECR II-3849, paragraph 78; and judgment of 12 September 2007 in Case T-141/06 Glaverbel v OHIM (texture of a glass surface), not published in the ECR, paragraph 40). (46 ) In the present case, the Board found, in paragraph 32 of the contested decision, that ‘[t]he mark applied for [had] been found to be non-distinctive in the entire Community, which at the filing date of the [applicant's] trade mark, namely 7 May 1998, consisted of 15 Member States'. It is thus in the entire Community, consisting of the then 15 Member States, that the mark applied for must have acquired distinctive character through use in order to be registerable under Article 7(3) CTMR (see, to that effect, Case C-25/05 P Storck v OHIM, paragraphs 81 to 86). (48 ) The applicant's arguments based on the difference between Article 7(1)(b) and Article 7(1)(c) CTMR and on infringement of the aim of the single market cannot be accepted. Under Article 7(1)(b) CTMR, read in conjunction with Article 7(2) thereof, a mark must be refused registration if it is devoid of any distinctive character in part of the Community. The part of the Community referred to in Article 7(2) may be comprised of a single Member State (Case C-25/05 P Storck v OHIM, paragraphs 81 to 83; see also the Opinion of Advocate General Ruiz-Jarabo Colomer in that case, ECR I-5724, points 75 to 83). The Board thus rightly examined the evidence concerning distinctive character acquired through use for each Member State separately (see, to that effect, Texture of a glass surface, paragraph 40). As regards surveys carried out in part of the EU and extrapolation to the rest (56 ) The plaintiff bases its extrapolation mainly on table 3 of Annex A2 (…), which summarises the market shares in 14 Member States, and on a table on page 5 of Annex A3, which summarises the rates of recognition of the chocolate bar sold under the BOUNTY trade mark in surveys carried out in Belgium , France , Germany , Italy and the Netherlands . The United Kingdom is not included in the second table, but the plaintiff claims, in paragraph 6 of Annex A3, that the rate of recognition of the chocolate bar sold under the BOUNTY trade mark in the consumer survey it carried out in the United Kingdom was 70%. (57 ) It is clear from table 3 that the market shares of the product sold under the BOUNTY trade mark are not as uniform as the applicant claims. Although the product's market share in the Netherlands is 10.42%, it is only 0.68% in Sweden and 0.24% in Finland. It must be pointed out that the Swedish market, measured in terms of total value in euros for all chocolate bars (third column of table 3 of Annex A2), is much larger than the Netherlands market (EUR 131,866,000 and EUR 78,500,000 respectively, despite the fact that Sweden has around 6 million fewer inhabitants). Furthermore, the market comprising Sweden , Finland and Denmark constitutes a larger share of the European market for chocolate bars than the Netherlands and Belgium combined (6.94% and 5.06% respectively). (60 ) Furthermore, it should be borne in mind that, according to the judgment in Windsurfing Chiemsee, market share is only one factor to be taken into consideration in the context of a more overall assessment in respect of distinctive character acquired through use. It is true that the market shares provided in the present case show that the chocolate bar sold under the BOUNTY trade mark was sold on the markets in question, but they are not sufficient to prove that the shape at issue was itself used as a mark to designate the product concerned or that consumers would recognise its commercial origin in Austria, Denmark, Finland, Greece, Ireland, Luxembourg, Portugal, Spain and Sweden (see, to that effect, Shape of a sweet wrapper, paragraph 83, and Texture of a glass surface, paragraph 41). Alaska : T-226/08 – Judgment of 8 July 2009 (only in DE, FR; action dismissed, Board practice confirmed). Keywords: Absolute grounds for refusal: geographical indications under Article 7(1)(c) CTMR. The case had been brought against a decision of the 4 th Board of 8.8.2008 in Case R 1124/2004-4 relating to invalidation proceedings initiated against CTM Alaska, registered for non-alcoholic beverages in class 32, inter alia for mineral waters. Whereas the cancellation division had allowed the request in respect of mineral waters, the Board had rejected it in total. The 8 th Chamber of the CFI (Martins Ribeiro; Papasavvas, rapporteur; Dittrich) confirmed the Board's decision. The average consumer would not perceive the mark as an indication of origin within trade mark law, Chiemsee, Case C-108/97, and Oldenburger, Case T-295/01, referred. Skiken : T-156/09 – Case closed, Order of 24 June 2009 (DE). Keywords: Absolute grounds for refusal: distinctiveness. Generic term: in the course of trade, Article 7(1)(d) CTMR. The action had been initiated against a decision of the 4 th Board of 6.2.2009 in Case R 0519/2008-4 relating to CTM application SKIKEN, word, which had been claimed for a range of services in classes 35, 39, 41 and 43. It had been partially rejected under Article 7(1)(b) and (c) CTMR (in classes 39 and 41) on the grounds that the sign would be an invented word (to skate and to bike = to skike; in German “skiken”), and that the new expression would generally be used in interested circles as the generic expression for that type of fun sport. Since the plaintiff and CTM applicant withdrew its appeal, the case was closed. Natur-Aktien-Index : T-285/08 – Action a limine rejected; Order of 30 June 2009 (DE). Keywords: CFI procedural law: admissible claims. Article 65 (ex 63) CTMR: scope. Absolute grounds for refusal: distinctiveness. The action had been brought against a decision of the 4 th Board of 26.5.2008 in Case R 0525/2007-4 relating to CTM application Natur-Aktien-Index, word, which had been applied for in classes 16, 36 and 42, mainly for financial services, insurance services and the like. It had been rejected under Article 7(1)(b) CTMR as being devoid of distinctive character since the sign would directly convey financial services etc. in relation to shares and investments which are “friendly” to the environment. The plaintiff requested that the CFI “alter the challenged Board decision to the end that the Office is ordered to register the mark”. The 2 nd Chamber of the CFI (Pelikánová, Jürimäe, rapporteur; Soldevila Fragoso) rejected the action as evidently inadmissible; Freixenet, Case T-190/04, referred. Ibiza Republic : T-311/08 – Judgment of 2 July 2009 (only in FR; action dismissed, Office practice confirmed). Keywords: Opposition: likelihood of confusion (LOC). The case had been initiated against a decision of the 2nd Board of 2.5.2008 in Case R 1135/2007-2 relating to CTM application Ibiza republic (figurative mark), inter alia applied for in class 25.
It had been opposed on the basis of a “star brand” (shown above) covering class 25 goods. The opposition had been rejected on the grounds that notwithstanding the identity of the products, the differences of the marks are significant enough to exclude LOC. The 6 th Chamber of the CFI (Meij; Vadapalas, Truchot, rapporteur) agreed, relying on standard case- law. Hand and Card : T-414/07 – Judgment of 2 July 2009 (only in FR, DE, ES, IT; action dismissed; Office practice confirmed). Keywords: Absolute grounds for refusal: distinctiveness. The action had been brought against a decision of the 1 st Board of 6.9.2007 in Case R 0290/2007-1 relating to the application of a figurative sign in black and white, mainly consisting of a hand holding a card. It had been applied for for a vast range of goods and services in classes 9, 35, 36, 37, 38 and 42, inter alia for cash cards and related services.
The CTM application had been partially rejected on the grounds that the sign would not indicate more than how the specific product functions, and would merely indicate the character of the specific service(s). The 6 th Chamber of the CFI (Meij; Vadapalas, rapporteur; Truchot) agreed, relying on standard case-law. Icon/Ikon-I : T-218/08 – Case closed; Order of 26 June 2009 . Keywords: Procedural law: change of name of a party. Opposition: likelihood of confusion (LOC). The case had been brought against a decision of the 2 nd Board of 28.3.2008 in Case R 0589/2007-2 relating to LeMans Corporation's CTM application 2.197.366, ICON (figurative mark), for goods in classes 9, 18 and 25 that are irrelevant in the context of the case. It had been opposed by AXO Sport (UK) Limited on the basis of IKON (word) registered in class 9. On 12.10.2006, the CTM applicant and plaintiff in the proceedings informed the Office that the company ‘AXO Sport (UK) Limited' was dissolved in April 2006. The applicant stated that it had been making attempts to purchase the earlier mark from the Treasury Solicitor, until it discovered that the earlier mark had in the meantime been transferred from the company ‘Serval Marketing Limited' to an individual, S. T. This assignment was recorded with the register of the UK Trade Mark Office on 3 August 2006 . The applicant also observed that two separate companies ‘AXO Sport (UK) Limited' (identified by the company no. 02532771) and ‘Serval Marketing Limited' (identified by the company no. 04060611) had swapped their names on 14 November 2001 that is, before the opposition was filed on 19 April 2002. As a result, the company identified by the company name ‘AXO Sport (UK) Limited' which had lodged the opposition on 19.4.2002 was in fact the company no. 04060611 rather than the company no. 02532771. According to the CTM applicant, the fact that the companies switched names implies that the identity of the opponent and the identity of the registered proprietor of the earlier mark cannot be the same. On 19.4.2002, company no. 04060611 (‘AXO Sport (UK) Limited') was not shown to be either the proprietor of the earlier mark or an exclusive licensee thereof. On that date, the genuine proprietor was named ‘Serval Marketing Limited'. As a result, the opposition should be dismissed because the opponent lacked locus standi. On 20.2.2007, AXO Sport (UK) Limited submitted a document showing the recordal of the assignment of the earlier mark to S. T. in the register of the UK Trade Mark Office. In its decision, the opposition division (OD) upheld the opposition in respect of all goods. However, it did not expressly take position on the applicant's arguments in respect of the original opponent's entitlement to the earlier mark. The CTM applicant's subsequent appeal was dismissed on the following grounds: The opposition was filed by a company named ‘Axo Sport (UK) Limited' which had changed its name to ‘Serval Marketing Limited' on an earlier date, on 14.11.2001. The change of name was not recorded in the register of trade marks. Nevertheless, the Board considers that a change of name has no effect either on the legal entity of the original opponent or on the ownership of the earlier mark. As a result, the omission to register the change of name did not affect the original opponent's entitlement to file an opposition. Since the plaintiff wished to discontinue proceedings, the case was closed. Icon/Ikon-II : T-389/08 – Case closed; Order of 26 June 2009 . The background of this case is the same as in Icon/Ikon-I, T-218/08 above. The challenged Board decision had been on 3.7.2008 in Case R 0778/2007-2 (CTM application 2.197.440, ICON). Since the plaintiff, LeMans Corp., indicated that it wished to discontinue proceedings, the case was closed. Okatech : T-419/07 – Judgment of 1 July 2009 (only in DE, FR; action dismissed, Office practice confirmed). Keywords: Appeal proceedings: scope of admissible appeal as regards a partially revoked decision of the OHIM. Revocation of an OHIM decision: Article 80 (ex 77a) CTMR. The case had been initiated against a decision of the 2 nd Board of 3.9.2007 in Case R 0766/2007-2 relating to revocation proceedings initiated against CTM OKATECH, word, registered in classes 6, 19 and 42 (partial request, directed against the class 42 services). The request had been allowed. Subsequently, the cancellation division (CD) had informed the parties of its intention to revoke its decision because it had committed an error with respect to apportionment of costs. The CD issued a new decision accordingly. The CTM owner and plaintiff in the proceedings appealed the new decision on the grounds that it had shown genuine use of the CTM in respect of the challenged services. The appeal had been dismissed as inadmissible on the grounds that the initial decision had not been appealed on substantial issues, and that the new decision would only be open for appeal as regards the aspect of costs. The 1 st Chamber of the CFI (Tiili; Dehousse, rapporteur; Wiszniewska-Bialecka) confirmed that decision. Center Shock : T-16/08 – Judgment of 1 July 2009 (dismissed; Office practice confirmed). Keywords: Opposition/invalidation: likelihood of confusion (LOC). The action had been directed against a decision of the 4 th Board of 7.11.2007 in Case R 0149/2006-4 relating to CTM CENTER SHOCK, word, registered in class 30 for coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice and chewing gum. It had been challenged by way of a request for invalidation on relative grounds, Article 52(1)(a) CTMR now Article 53(1)(a) of Regulation No 207/2009, based inter alia on earlier Swedish rights in CENTER, word, registered in the year 1938 in respect of caramels, cocoa, chocolate, confectionery, marmalade and other chocolate or sugar products in the form of cakes, tablets, pralines, powder, and in any other form, liquorices, coffee, tea, yeast, baking-powder, biscuits, bread, honey, chewing gum, marzipan, sugar, treacle, glucose, salt and honey, in class 30. The request had been fully allowed, and the 8 th Chamber of the CFI (Martins Ribeiro; Wahl, rapporteur; Dittrich) agreed, relying on standard case law. Dr. No : T-435/05 – Judgment of 30 June 2009 (dismissed; Office confirmed). Keywords: CFI proceedings: material submitted for the first time before the court. OHIM procedural law: obligation to state reasons (Article 75 ex 73 CTMR). Opposition: earlier non-registered word marks. Earlier rights: failure to satisfy the requirement for earlier marks. Earlier mark: whether a film title satisfies the requirements. The case had been initiated against a decision of the 1 st Board of 21.9.2005 in Case R 1118/2004-1 relating to a CTM application Dr. No, word, filed on 13.6.2001 for a range of goods in classes 9, 12, 18, 25 and 32. It had been opposed on the basis of alleged earlier rights in the well-known non-registered mark Dr. No, word, and other rights in the business identifier Dr. No, used in the course of trade to designate films, DVDs, videos, comic books, music recordings, books, posters and action figures. The OHIM had rejected the opposition, holding that the opponent and plaintiff in the proceedings had not proved that the marks in question had a well-known character or that the non-registered signs other than trade marks had previously been used in the course of trade. The 2 nd Chamber of the CFI, Pelikánová; Jürimäe; Soldevila Fragoso, rapporteur) confirmed the Office. (a) Filing of material before the CFI (9 ) At the stage of the reply, the applicant (plaintiff) produced a document attesting to the existence of a website inferring a connection between the trade mark applied for by the intervener and James Bond imagery, in addition to a letter in which the intervener asserts that that website was not registered by it and is not connected to it. The applicant states that it produced those documents at that stage of the written procedure because it was unaware of the existence of that website beforehand. (…) (b) Film titles etc. and trade marks (23) As regards the first question, first of all, it is settled case-law that the essential function of a trade mark is to identify the commercial origin of goods or services, thus enabling the consumer who purchases them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (Case T-360/00 Dart Industries v OHIM (UltraPlus) [2002] ECR II-3867, paragraph 42, and Case T-242/02 Sunrider v OHIM (TOP) [2005] ECR II-2793, paragraph 88). (25 ) However, in the present case, an examination of the documents submitted by the applicant shows that the signs Dr. No and Dr. NO do not indicate the commercial origin of the films, but rather their artistic origin. For the average consumer, the signs in question, affixed to the covers of the video cassettes or to the DVDs, help to distinguish that film from other films in the ‘James Bond' series. The commercial origin of the film is indicated by other signs, such as ‘007' or ‘James Bond', which are affixed to the covers of the video cassettes or to the DVDs, and which show that its commercial origin is the company producing the films in the ‘James Bond' series. Moreover, even if the profits that the film Dr. No had generated within the Community are capable of showing the commercial success of the film in that territory, the fact remains that they cannot show that the signs in question are used as indicators of commercial origin. (26) In addition, contrary to the applicant's claim, the distinction between title and trade mark is not ‘unrealistic and artificial'. The same sign may be protected as an original creative work by copyright and as an indicator of commercial origin by trade mark law. It is therefore a matter of different exclusive rights based on distinct qualities, that is to say the original nature of a creation, on the one hand, and the ability of a sign to distinguish the commercial origin of the goods and services, on the other (judgment of 21 October 2008 in Case T-73/06 Cassegrain v OHIM (Shape of a bag), not published in the ECR, paragraph 32). Therefore, even if the title of a film can be protected pursuant to certain national laws as an artistic creation independent of the film itself, it cannot automatically enjoy the protection afforded to indicators of commercial origin, since only signs which develop characteristic trade mark functions may enjoy that protection. (27 ) In the case of comic books, music recordings, books and posters, the signs Dr. No and Dr. NO are likewise not used as trade marks, but as a reference which is descriptive of the goods, indicating to consumers that they are music from the film Dr. No, a book or a comic book about the character of ‘Dr. No', or a poster of that film or character. As is apparent from examining the documentation supplied by the applicant, some of the goods referred to are marketed to the public under other indicators of origin, namely ‘007' and ‘James Bond', which indicate to consumers that the commercial origin of the abovementioned goods relating to the film or the character of ‘Dr. No' is the same as that of the films in the ‘James Bond' series. (28 ) The same conclusion applies in the case of model cars or watches produced by the companies with a licence to use the signs Dr. No and Dr. NO on those goods. In both cases, the use of those signs is merely descriptive, indicating to consumers that the car in question is a model of the one used in the film Dr. No, or that the watch is the one for the film Dr. No in a collection of watches produced to commemorate the fortieth anniversary of the films in the ‘James Bond' series. In addition, an examination of the documentation relating to the cars shows that the indicators of commercial origin used for them by the applicant are ‘James Bond', ‘007' and the ‘Gun Symbol'. As in the cases analysed in paragraph 27 above, those indicators show that the commercial origin of the goods is the same as that of the other ‘Bond' goods. (29 ) Even assuming that the signs Dr. No and Dr. NO were used as indicators of commercial origin on the action figures of characters from the films, produced by a company with a licence over those trade marks, in particular through the use of the signs in question together with the ‘™' symbol, the applicant has failed to establish that the signs Dr. No and Dr. NO were used as trade marks prior to the date of application for registration of the Community trade mark. An examination of the documentation submitted shows that the ‘Dr. No' action figures were placed on the market only from August or September 2002, that is to say after the Community trade mark application was filed on 13 June 2001 . (31 ) Since it has not been established that the signs Dr. No and Dr. NO were used as indicators of commercial origin before the CTM application was filed, they cannot be regarded as well-known trade marks within the meaning of Article 8(2)(c) CTMR and Article 6-bis of the Paris Convention, and it is not necessary to examine whether the signs in question are well known within a Member State within the meaning of that latter provision. Since the signs that have been referred to are not earlier trade marks within the meaning of Article 8(2)(c) CTMR, it is not therefore necessary to examine whether there is a likelihood of confusion between the signs in question. Accordingly, the first plea in law must be rejected.” Tomatoberry : T-435/08 – Case closed; Order of 25 June 2009 . Keywords: Opposition: likelihood of confusion (LOC). The action had been issued against the decision of the 4th Board of 18.7.2008 in Case R 1219/2007-4 relating to CTM application 3.797.909, word TOMATOBERRY, which had been filed in respect of fresh vegetables and fruits, seeds and bulbs, in class 31.
It had been opposed on the basis of an earlier right in Tomberry, as shown above, which covers in class 31 fresh tomatoes of all kinds, including cherry tomatoes; in class 35 advertising, promotion and business mediation with regard to the purchase, sale, import and export of fresh tomatoes of all kinds including cherry tomatoes, and in class 44 propagation, refinement, cultivation and selection including via substrates, tissue culture and hydroponics, of fresh tomatoes of all kinds, including cherry tomatoes; cultivation assistance and consultancy. The opposition had been fully allowed. After the plaintiff had submitted its wish to discontinue proceedings, the case was closed. Libro/Libero : T-418/07 – Judgment of 18 June 2009 (only in DE, FR; action dismissed, Office practice confirmed). Keywords: CFI proceedings: apportionment of costs. Appeal proceedings: formalities. Opposition: likelihood of confusion (LOC). LOC: comparison of goods. The case had been initiated against a decision of the 4th Board of 3.9.2007 in Case R 1454/2005-4, relating to CTM application LIBRO (figurative mark) which had been applied for for a range of G&S in classes 9, 38 and 42.
It had been opposed on the basis of Libero (figurative mark), registered in the same classes. The opposition had been partially allowed. The opponent had invoked, at the appeal stage, the argument that the appeal filed by the CTM applicant by telecopier had to be rejected as inadmissible since the respective brief was signed on the first and not on the last page. The Board had rejected that argument. Before the CFI, the opponent and intervener in the proceedings had claimed that the court should annul the Board decision, reject the appeal as unfounded and alter the appeal decision to the end that the Office and the CTM applicant should bear the costs. As regards the issue of the signature on the appeal brief, the 8 th Chamber of the CFI (Martins Ribeiro, rapporteur; Wahl; Dittrich) made reference to linguistic differences as regards Rule 80(3) CTMIR in the various language versions and finally confirmed the Board's decision that a signature on the first page of the brief is sufficient. It also confirmed the Board as regards assessment of LOC. The opponent and intervener was ordered to pay its own costs. PharmaResearch : T-464/07 – Judgment of 17 June 2009 (only in DE, FR; action dismissed; Office practice confirmed). Keywords: Absolute grounds for refusal: descriptiveness. The action had been brought against a decision of the 4 th Board of 18.10.2007 in Case R 0924/2007-4, relating to CTM application PharmaResearch, word, which had been applied for for goods in class 9, mainly apparatus for storing and processing data. It had been rejected on the basis of Article 7(1)(c) CTMR, and the 4 th Chamber of the CFI (Czúcz, rapporteur; Labucka; O'Higgins) confirmed the Office, relying on standard case law. C-2: CFI Judgments and Orders: Developments in pending cases Schinken King : T-61/09 – Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC). LOC: comparison of marks. The action has been brought against a decision of the 1 st Board of 11.12.2008 in Case R 1049/2007-1 relating to CTM application 3.720.968, SCHINKEN KING, word, which had been filed in respect of goods in class 29. It had been opposed on the basis of CURRY KING, word, registered in classes 29 and 30. The opposition had been rejected on the grounds that the earlier right would be weak (curry being descriptive and king somewhat laudatory), and that, thus, the differences between the marks would suffice to exclude LOC. Craic : T-83/09 – Office response filed. Keywords: Procedural law: revocation of an OHIM decision. Change of ownership under national law: dissolution of a company ( UK ). Transfer under the CTMR. The case is directed against a decision of the 2nd Board of 13 November 2008 , in Case R 1888/2007-2 and relating to Recordals T-2.489.667 and T-2.543.521 (CTM 2.245.306). The background is the following: On 6 June 2001, Arthur Crack Limited applied for CRAIC, word, in classes 25, 32 and 33; the mark was registered in December 2002. On 2 April 2007 Reformed Spirits Company Holdings Limited sought to register an assignment of the CTM, dated 12 March 2007 , between itself as assignee and the UK Treasury Solicitor, acting as Crown nominee, as assignor. According to the assignment deed, the initial proprietor was dissolved on 4 July 2006 and, by virtue of Section 654 of the UK Companies Act 1985, on the dissolution of the company all assets held in trust for the company immediately before its dissolution, became the property of the UK Crown through the mechanism of bona vacantia . By virtue of Section 655 of the same Act, the Crown may dispose of such property and rights. Consequently the Crown, in is capacity as new proprietor, assigned the CTM to the requestor for recordal for the sum of two thousand pounds. On 16 April 2007 the OHIM accepted the request, recorded the transfer and informed the requestor for recordal accordingly. On 7 May 2007 , Mr. David Chalk, the plaintiff in the court proceedings, sought to register a partial assignment of the CTM from the initial proprietor to him, concerning all goods in classes 32 and 33. He pointed out that the CTM had been assigned to him before it was transferred to the other party and submitted as proof of that transfer an assignment deed dated 21 January 2006 . That document was signed by himself both on behalf of the assignor and on his own behalf as assignee, since, at that time, the plaintiff had also been the chairman and shareholder of the company Arthur Crack Ltd (= the initial proprietor). On 24 May 2007 the Office informed the parties of its intention to revoke the notification of 16 April 2007, by which the reformed Spirits Ltd. had been inscribed as the owner of the trade mark, on the grounds that the assignment of 21 January 2006 (to the plaintiff) was prior to that of 12 March 2007 and therefore the plaintiff had already become the proprietor of the mark when the second agreement was concluded. By letters of 25 and 28 May 2007, the registered assignee submitted observations on the proposed revocation, maintaining that the first recordal was valid and that it should accordingly remain on the register as rightful owner. On 3 October 2007 , the examiner accepted these arguments, rejected the plaintiff's request and decided that the recordal of 16 April 2007 was not to be revoked. The reasoning of the examiner can be summed up as follows: There is no legal provision either in the CTMR or in the CTMIR which empowers the Office to change a decision that has been correctly adopted. The only provision dealing with the possibility to revoke a decision adopted by the Office is Article 77a CTMR [now article 80], which envisages the revocation of decisions that contain obvious procedural errors attributable to the Office. In the present case, the application to register the first transfer was filed in accordance with Rule 31 CTMIR. The other party submitted an assignment deed entered into on 12 March 2007 , between itself and the UK Treasury Solicitor, acting as Crown Nominee. That deed fulfilled the necessary conditions for recording the transfer. The plaintiff´s request is not supported by any provision in the Regulation, being based solely on the claim that the mark had been assigned to him first. However, this does not mean that the Office has committed a procedural error in recording the first transfer, since at that time the Office was not aware of the second transfer. The subsequent appeal was rejected. By its decision, the Board referred to the reasons given in the examiner's decision and added that the plaintiff's request could not be enforced against the other party (new registered owner) who is the lawfully entered proprietor in the register and who cannot be affected by an earlier transfer made in favour of the plaintiff, since, according to Articles 17(6) and 23 CTMR, such a transfer ‘shall only have effects vis-à-vis third parties […] after its entry in the Register'. SupplementPack : T-113/09 – Office response filed (DE). Keywords: Absolute grounds for refusal: descriptiveness. The action is directed against a decision of the 4 th Board of 15.1.2009 in Case R 0996/2008-4 relating to CTM application 5.433.883, SupplementPack, word, which had been applied for for a range of G&S in classes 1, 5, 41 and 42. It had been rejected on the ground of descriptiveness, Article 7(1)(c) CTMR. Bebio/Beba : T-41/09 – Office response filed. Keywords: Opposition: likelihood of confusion (LOC) The action is directed against the decision of the 2nd Board of 25.11.2008 in Case R 1790/2007-2, relating to CTM application 3.090.016, BEBIO, word, in classes 5, 29, 30 and 32, namely: Food for babies and infants; meat, fish, poultry, game and meat products; meat extracts; meat, fish, fruit and vegetable jellies; jams and jellies; eggs, milk, dairy products, namely butter, cheese, cream, yoghurt, cottage cheese, milk powder and lacto protein for food; children's desserts, in particular desserts mainly consisting of milk and/or fruit; desserts and sweet dishes, consisting predominantly of milk, also with all kinds of binding agents, desserts and sweet dishes consisting predominantly of fruits; prepared and semi-prepared meals, mainly made from meat, poultry, game, fish, fruit, vegetables, eggs and/or dairy products; soups; meat, fish, poultry, game, vegetable, fruit and milk preserves; edible oils and fats; including all the aforesaid goods in frozen form; all the aforesaid goods also for dietetic purposes. Tea, tea-based beverages, cocoa, sugar, glucose, rice, tapioca, sago, flour, semolina, cereal flakes and cereal preparations (except feedstuffs for animals), bread, biscuits, cakes, pastries, cakes and biscuits that keep, snack products, pasta, chocolate, confectionery; glucose preparations, bee preparations; children's desserts, in particular sweet dishes, mainly consisting of sugar, cocoa, chocolate and/or starch; desserts and sweet dishes, mainly consisting of sugar and chocolate, including made using binding agents of all kinds, prepared and semi-prepared meals, mainly made from pulses, potatoes, cereal preparations, rice and/or pasta; spices, muesli, consisting predominantly of cereals, fruits, nuts and/or sugar; ready-to-serve cereal food, prepared and semi-prepared food of bran, including pastries; all the aforesaid goods also in frozen form; all the aforesaid goods also for dietetic purposes, and non-alcoholic beverages, in particular fruit and vegetable juices, nectars, fruit juice beverages; fruit syrups and other non-alcoholic fruit preparations for making non-alcoholic beverages; powders and granules for making non-alcoholic beverages; all the aforesaid goods also for non-medical dietetic purposes. It had been opposed on the basis of BEBA, word, registered in class 5 inter alia for lactic flour; dietetic flour; dietetic food for babies; fortifying dietetic food and pharmaceutical preparations; in class 29 for milk; evaporated milk; powder milk; condensed milk; cheese, cream; legumes and fruit, preserved legumes and fruit; meat, meat extracts and meat jelly, and in class 30 for condiments, spices; cocoa, chocolate, confectionery; tea and tea extracts; coffee, coffee extracts, coffee substitutes; chicory. The opponent, Nestlé, claimed reputation in Germany for food for babies. The opposition had been allowed in part under Article 8(1)(b) CTMR, rejecting the CTM application in relation to all the goods in classes 5 and 29, as well as for part of the goods in class 30, and allowing it to proceed for ‘tea and tea-based beverages' in class 30 and all the goods in class 32, which were found to be dissimilar to the goods of the earlier marks. Accordingly, the claim as regards reputation has also been rejected. Proti Snack : T-62/09 – Office response filed. Keywords: Opposition: formalities. The case has been brought against a decision of the 4th Board of 15.12.2008 in Case R 0740/2008-4, relating to CTM application 4.992.145, PROTI SNACK (word), which had been claimed for a range of goods in classes 5, 29 and 32. It had been opposed on the basis of earlier German rights on PROTI, PROTIPOWER, PROTIPLUS and PROTITOP in classes 5, 29, 30 and 32. Together with the notice of opposition, the opponent had filed, for each of the four earlier marks, a registration certificate issued by the German Patent and Trademark Office in March 1996, October 1996, and March 1997, respectively; a translation of each of those documents into English; an excerpt from DPINFO, the online trade mark register of the German Patent and Trademark Office, dated 8 January 2007, which mentions ‘Marke eingetragen' under the heading ‘Letzter Verfahrensstand' and, in two cases, dates in 1996 as the ‘Verlängerungsdatum'; these documents, however, were not translated; a declaration signed by the opponent's representative that the list of goods and services for the respective marks had been restricted and that the current list reads as follows (a list of G&S in classes 29 and 32 followed, in English). On 26 April 2007, the Office issued a ‘communication to the opponent of the date of the commencement of the adversarial part of the opposition proceedings and an invitation to complete the opposition by furnishing facts, evidence and arguments' pursuant to Rule 18 (1), 19 (1) and (2) CTMIR, in which it was stated that the cooling-off period was set to expire on 27 June 2007 and in which the opponent was set a time limit to expire on 27 August 2007, to file facts, arguments and evidence in support of the opposition or to complete any such facts, evidence or arguments already filed. The notification expressly advised the opponent that within the same time limit, he was required to prove the existence and validity of the earlier right invoked and that, in particular, such proof of existence of the earlier mark (in the form of a registration certificate or other official documents) was to be filed in or translated into the language of the proceedings. Also, the notification advised that the Office would not inform whether such evidence or translations were missing and that it was the opponent´s own responsibility to check this. The notification also advised that in the absence of the necessary evidence for the existence and validity of the earlier right to be filed within the time limit, the opposition would be rejected without any examination as to its merits, in accordance with Rule 20 (1) IR. An information sheet about ‘what to prove' and ‘how to prove' was attached. Under ‘how to prove', the opponent was advised that ‘where the mark is more than ten years old, a renewal certificate must be provided which must show that the term of protection extends beyond the date until which the opponent has to complete his opposition (Rule 19 (1), (2) (a) (ii) IR)'. Within the above-mentioned time limit, the opponent only informed the Office that one of the German trade marks had been renounced. After expiry of the indicated time limit, namely on 25 September 2007, the Applicant furnished, in respect of each of the remaining three marks: an excerpt from DPINFO, dated 25 September 2007 which mentions dates in 1996 as the ‘Verlängerungsdatum' and ‘Marke eingetragen' under the heading ‘Letzter Verfahrensstand'; these documents, however, were not translated; a declaration issued by the German Patent and Trademark Office issued in 2005 and January 2007, respectively, that the mark had been renewed until 2015, 2016 or 2017, respectively, together with a translation into English; letters issued by the German Patent and Trademark Office on 30 March 2007 said that the list of goods and services of the earlier marks had been restricted, together with a translation into English. The opposition was rejected on the grounds that the opponent had failed to prove the existence and validity of the alleged earlier rights within the time limit set by the Office. Whereas it had filed a complete translation of the certificate of registration into English, it did not file any translation of the extracts of the register database, which were the only documents that contain information about the renewal of the earlier rights. According to Rule 19(4) IR, these documents cannot be taken into account as they have not been translated into the language of proceedings. German trade marks are in force for ten years beginning with the day following the date of application. Consequently, none of the earlier rights was in force on the date the evidence was due, namely 27.8.2007. The opposition had to be rejected as the opponent had failed to comply with the requirements of Rule 20(1) IR. Stabilator : T-60/09 – Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC). LOC: comparison of goods and services (G&S). The action has been brought against a decision of the 4 th Board of 16.12.2008 in Case R 0483/2008-4 relating to CTM application 4.068.961, Stabilator (figurative mark), which had been claimed in classes 19, 37 and 42.
It had been opposed on the basis of STABILAT, word, which covers a range of G&S in classes 1, 7, 11, 20, 37, 40 and 42. The opposition had been partially allowed. Peerstorm : T-30/09 – Office response filed. Keywords: Use: actual use different from registration, Article 15(2) CTMR. Proof of use (POU). The case has been initiated against a decision of the 5 th Board of 28.10.2008 in Case R 0167/2008-5, relating to CTM application PEERSTORM, word, for clothing, footwear and headgear in class 25. It had been opposed, inter alia on the basis of earlier CTM ‘PETER STORM', registered in respect of clothing, footwear, headgear, trousers, shorts, skirts, dresses, jackets, shirts, tee-shirts, sweatshirts, blouses, jumpers, cardigans, coats, jumpsuits, tracksuits, overalls, belts, jeans, jog pants, blousons, underwear, ski wear, gilets, footwear, socks and headgear, articles made from leather or imitation leather; bags, back packs etc., in classes 18 and 25. Whereas the opposition division had rejected the material presented as POU, the Board found that genuine use of the earlier CTM had been properly substantiated for clothing, footwear and headgear on the basis of (i) two catalogues issued in 2002 and 2004 by a major retailer in the United Kingdom, and (ii) a sales report. Further, the earlier CTM registration was used in a form differing in elements but, overall, this did not alter its distinctive character within the meaning of Article 15(2) CTMR. Packaging : T-64/09 – Office response filed (DE). Keywords: Absolute grounds for refusal: distinctiveness. The action is directed against a decision of the 1st Board of 11.12.2008 in Case R 1063/2008-1 relating to CTM application 6.354.311, “Packaging” (figurative mark), which had been claimed for a range of goods and services in classes 16 and 42, inter alia for packaging material and for engineer services in relation to packaging.
The application had been rejected on the grounds of descriptiveness under Article 7(1)(c) CTMR. Acumed : T-575/08 – Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 2 nd Board of 7.10.2008 in Case R 1636/2007-2 relating to CTM application 4.493.136, Acumed (figurative mark), which had been claimed in classes 3, 5 and 9. It had been opposed on the basis of an earlier Spanish right in AQUAMED ACTIVE.
The earlier word mark covers a range of goods in class 5, and the opposition had been directed against the claim in class 5. The opposition has been allowed. Procaps : T-35/09 – Office response filed (ES). Keywords: Opposition: likelihood of confusion (LOC). The case has been initiated against a decision of the 4 th Board of 24.11.2008 in Case R 0867/2007-4 relating to CTM application 3.519.394, PROCAPS, word, which had been applied for a range of goods and services in classes 5, 35, 39, 40 and 44. It had been opposed on the basis of PROCAPTAN, word, registered in class 5. Whereas the opposition division had rejected the opposition, the Board had partially allowed it. DM : T-36/09 – Office response filed. Keywords: Procedural law: error on the part of the Office (impact). OHIM proceedings: revocation of a decision. Revocation of a decision: appeal aspects. The action is directed against a decision of the 1st Board of 30.10.2008, in Case R 0228/2008-1, relating to CTM application 3.984.044, “dm”. Registration had been sought in respect of goods and services in classes 1, 3, 4, 5, 6, 8, 9, 10, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 29 30, 31, 32, 34 and 40.
It had been opposed on the basis of an earlier Spanish right in “dm” (figurative mark) registered in classes 9 and 39. In its initial decision of May 2007, the opposition division (OD) had partially allowed the opposition. On 8 June 2007 the Office informed the parties that it intended to revoke the decision due to an obvious procedural mistake (the decision B-878.985 did not contain “a complete comparison of the goods and services”). The parties were given two months to file observations. The CTM applicant stated that it appreciated the intention to revoke the decision because the intended appeal against it might perhaps be avoided. Furthermore, it claimed that the opponent had not correctly documented its prior right and argued that the goods covered by the competing marks were not similar. On 26 November 2007 the Office informed the parties of the following: “(The Office) has finally considered that its decision of 16 May 2007 does not contain any obvious procedural error. Consequently, Article 77a CTMR should not be applied to this case. That decision contained, however, an obvious mistake on its page 4 and the Office has proceeded to amend it according to Rule 53 CTMIR. This amendment does not change the outcome of the decision.” The OD annexed an amended version of the previous decision to that letter. The decision kept the original date and the same order but its reasoning had been altered. In its new version, the original third paragraph of page four, concerning the comparison of the goods and services covered by the trade marks in dispute, had been replaced by a new paragraph. On 26 November 2007 , the opponent requested that the parties should obtain a term to appeal the amended decision. On 19 December 2007 , the Office communicated the following to the parties: “(Please) be informed that the Office considers that its letter of 26 November 2007 is a decision open to appeal and consequently, under Article 58 CTMR any party adversely affected by its decision has a right to appeal against this decision (…).” On 24 January 2008 , the CTM applicant filed a notice of appeal against the “amended version of the opposition decision of May 16, 2007 ”. By its contested decision, the Board dismissed the appeal as inadmissible. The Board first clarified that the decision of the OD as notified on 16 May 2007 had not been appealed. As a consequence, the Board found the appeal inadmissible as far as it intended to reopen the examination of a final decision. The Board then considered that the appeal was also inadmissible insofar as the decision contained in the letter of 26 November 2007 was concerned. According to the Board, given that the amendment had no impact on the order of the decision from the OD, the CTM applicant was not adversely affected by the amendment of part of its reasoning. Stella : T-27/09 – Office response filed. Keywords: Revocation proceedings. Use requirement. The action has been brought against a decision of the 4 th Board of 13.11.2008 in Case R 0693/2008-4 relating to revocation proceedings 2023-C initiated against CTM Stella, word, which is registered in classes 6, 8, 16, 20 and 21. The request has been partially successful. PM Proton Motor : T-581/08 – Office response filed. Keywords: Board proceedings: limitation of the list of G&S at pending proceedings. Opposition: likelihood of confusion: LOC. The action is directed against a decision of the 1 st Board of 9.10.2008 in Case R 1675/2007-1 relating to CTM application 2.296.408, PM Proton Motor (figurative mark). The application had been filed in respect of goods and services in classes 7, 9 and 42, namely electric drives, fuel cells and development of systems for energy conversion.
It had been opposed on the basis of several earlier rights in PROTON, word and figurative signs, registered in respect of motor land vehicles and parts, fittings and accessories therefore (class 12) and repair and maintenance of motor land vehicles; modification of motor land vehicles (class 37). The opponent also claimed reputation. In the course of the opposition proceedings, the CTM applicant restricted the specification of goods in class 7, to ‘electric drives with fuel cells'. The opposition division upheld the opposition. In the course of the appeal proceedings, the CTM applicant restricted further the specification of the mark applied for, to the following goods and services: class 7: electric drives with proton exchange membrane fuel cells; class 9: proton exchange membrane fuel cells and class 42: development of systems for the conversion of energy, using proton exchange membrane fuel cells. The Board upheld the appeal. In the first place, the Board observed that, following its restriction of the mark applied for, the CTM applicant only sought protection for a specific type of fuel cell, namely the proton exchange membrane (PEM) fuel cell. Moreover, it noted that although that type of technology could be applied to the automotive industry, it was not yet available on a commercial scale and, thus, the average consumer of the opponent's goods was not likely to be familiar with it, especially since the CTM applicant's cells are not sold in car showrooms, vehicle dealerships or spare parts shops. Finally, the Board rejected the claim under Article 8(5) CTMR as unsubstantiated, by observing that the opponent had failed to provide any arguments capable of showing that the use of the sign applied for would be detrimental to, or take unfair advantage of, the distinctiveness or repute of the earlier marks, within the meaning of that provision. 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'. Procedural Questions – relative grounds of refusal List of goods and services – scope of protection – likelihood of confusion – similarity of goods and services – similarity of signs Decision of the first Board of Appeal of 16 July 2009 in joined Cases R1093/2008-1 & R1182/2008-1 BIMBA & LOLA (fig. Mark)/Bimbo et al. (English) R1093/2008-1 & R1182/2008-1 BIMBA & LOLA (fig. Mark)/Bimbo et al. - The opponent based its opposition, inter alia, on a Spanish trade mark protected as an ‘artistic name' in class 41. Generally speaking, ‘artistic name' is a name by which an artist who does not wish to use his or her real name is known. The real or fictitious identity of a person does not in any way fall under the definition of ‘service', since a service is an activity. This is why the names of people, animals or things in general do not appear in the Nice Classification as ‘services' (or ‘goods', for that matter), neither in the alphabetical list nor in the explanatory notes preceding each class listing. As that trade mark is protected for a non-existent or impossible service, the registered Spanish trade mark cannot be taken into account in these proceedings. Regarding the other claimed rights, namely a CTM and a Spanish trade mark which is well-known within the meaning of Article 6a of the Paris Convention, the Board held that the goods protected by these rights in classes 3, 14, 18 and 25 are dissimilar to ‘cultural and artistic activities; entertainer services'. The Board does not therefore believe that the opponent has proven what she was required to prove under Article 76 CTMR for an opposition based on Article 8(1)(b) CTMR, namely that, applying the criteria laid down regarding similarity of goods and services (see the judgment of the Court of Justice in ‘ Canon' ), there is similarity between the applicant's goods and her services in class 41, which are the only services the opponent has discussed in her submissions. Consequently, the opposition and the appeal must be rejected in this respect. Regarding the services in Class 35, for which the applicant seeks protection and which were rejected by the opposition division, namely ‘retailing' and ‘franchise-issuing', the Board held that they were identical and highly similar, respectively, to ‘retailing', for which the earlier trade marks enjoy protection. Since the signs were considered to be similar to the earlier trade mark to an average degree and due to the principle of independence between the signs and the similarity between the goods and services, the appeal of the applicant, and consequently the CTMA with respect to the services in class 35, was rejected. Absolute grounds of refusal Distinctive character – descriptive character – technical character – shape of the product Decisions of the Second Board of Appeal of 1 September 2009 in Cases R1526/2008-2 cubes (3D mark) and R1546/2008-2 cubes (3D mark) – (English) R1526/2008-2 cubes (3D mark) and R1546/2008-2 cubes (3D mark) - pursuant to Article 52(1)(a) and (3) CTMR, the cancellation applicant requested that the following three-dimensional trade mark protected for ‘three-dimensional puzzles' in Class 28 be declared invalid, on the grounds that it had been registered contrary to the provisions of Article 7(1)(a),(b), (c) and (e)(i)(ii)(iii) CTMR. Firstly, the Board found that the challenged trade mark had been adequately represented graphically and that there were no manifest reasons why it could not be capable of distinguishing the goods and services of one undertaking from those of others. Therefore, the Board found that the invalidity request raised under Article 7(1)(a) CTMR was not applicable. Secondly, the Board decided on whether the challenged Community trade mark was, within the meaning of Article 7(1)(b) CTMR, ‘devoid of any distinctive character' for ‘three-dimensional puzzles'. In the Board's view, the trade mark manifested sufficient characteristics to be seen as inherently distinctive for the goods. The 3 x 3 x 3 cube was not obviously ‘at least without prior knowledge of its purpose' a representation of a three-dimensional puzzle; instead it resembled a building block more than a game. The cube bears no numbers, no letters and no obvious features which can be turned or switched. It shows nothing which might suggest it is a game of any sort. Accordingly, the mark applied for departs significantly from the customs of the sector. In the form of a ‘black cage', it is able to retain the attention of average consumers and enable them to be made aware of the shape of the applicant's goods. The Board found, therefore, that the mark was not a customary shape for the goods in the sector concerned or even a mere variant of those shapes, but a shape having a particular appearance which, having regard also to the aesthetic result of the whole, is such as to retain the attention of the public concerned and enable it to distinguish the goods covered by the trade mark application from those of another commercial origin. Therefore, the Board found that the invalidity request raised under this ground must be rejected. Thirdly, mutatis mutandis the Board found that the mark did not, except with prior knowledge on the part of the consumer, resemble or hint at a three-dimensional puzzle. Therefore, it could not be said to consist exclusively of a sign which may serve in trade to designate the intended purpose, etc. of the goods. The invalidity request pursuant to Article 7(1)(c) CTMR was rejected on this ground. Fourthly, the Board argued that the grounds for invalidating a three-dimensional trade mark pursuant to Article 7(1)(e)(ii) CTMR must be founded only on the examination of the representation of the mark as filed and not on any alleged or supposed invisible features. In this instance, the representation consisted of three perspectives of a 3 x 3 x 3 cube, with each square facet separated from neighbouring facets by a black contour. Prima facie , the representations were not suggestive of any particular function, even when the goods were taken into account. The Board did not take into consideration the well-known rotating capability of the vertical and horizontal lattices of the ‘Rubik's cube', to then illegitimately read the functionality back into the representations. The cubic grid mark did not give any indication whatsoever as to its function, or even if it had any invisible structure. It was impossible to conclude that it imparted some technical advantage or effect in the domain of three-dimensional puzzles. The shape was regular and geometric; there were no clues as to the nature of the puzzle that it embodied. The Board found that the trade mark did not breach Article 7(1)(e)(ii) CTMR. Fifthly, the Board found that since the shape in question was not obviously the embodiment of a puzzle, and that any functions or movements that it may be capable of were clearly not available to visual inspection of the mark as represented, it could not be considered the shape which resulted from the nature of the goods themselves. Therefore, Article 7(1)(e)(i) CTMR was found not to apply. Finally, the Board found that a mere cubic grid as depicted in the representation of the challenged trade mark could not be deemed to possess a shape which gave substantial value to the goods. Therefore, it followed that the prohibition under Article 7(1)(e)(iii) CTMR was not applicable. Absolute grounds of refusal Distinctive character – compliance with judgment from CFI/ECJ – functional continuity. Decision of the First Board of Appeal of 30 July 2009 in Case R 1135/2006-1 FUN (English) Case R 1135/2006-1 FUN - Pursuant to Article 65(6) CTMR, ‘the Office shall be required to take the necessary measures to comply with the judgment of the Court of Justice.' In the present case, the Court of First Instance confined itself to annulling the contested decision of the Second Board of Appeal. It did not, consistent with the settled case-law of the Court, give any instructions to the Office, including the Boards of Appeal. Nor did the Court of First Instance alter the decision of the Second Board of Appeal within the meaning of Article 65(3) CTMR. The measures to be taken depend on the individual judgment. There is no doubt that, when taking the appropriate measures, the Boards of Appeal are bound by the order and the ratio decidendi of the Court, in so far as the facts are the same. The Board must interpret the operative part of the judgment in the light of the factual and legal grounds on which the judgment was based. It is clear from the case-law of the Court of Justice that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings. It is therefore appropriate to ascertain – in an a priori examination not involving any consideration of the use made of the sign within the meaning of Article 7(3) CTMR – whether the mark applied for will enable the members of the public targeted to distinguish the products concerned from those having a different trade origin when they come to select a product for purchase. ‘Fun', in the context of vehicles, is simply a common publicity term denoting that the vehicles are fun to drive. Even though the reason for the perception of the trade mark applied for may be completely different according to the vehicle and according to the person driving it. ‘Fun' according to the explicit findings of the Court ‘can just be viewed as giving the goods a positive image, like an image for promotional purposes, by giving the relevant consumer the idea that a car can be a source of amusement', for example due to its quirky design or because it is enjoyable to drive. According to the Boards of Appeal, the word ‘fun' is often used in isolation, such as an eye-catching publicity term similar to ‘top' or ‘super'. ‘Fun' may also be combined with other words, such as it's fun , to make fun of , poke fun at ; for or in fun; ( he, it is ) good, great fun ; what fun! Furthermore, although it is true that, due to its generic meaning which tends to exalt in an unspecified manner the nature, function, quality or one of the characteristics of any product or service, the sign ‘FUN' does not enable the consumer to imagine to what type of goods or services it refers, the fact nevertheless remains that, precisely because it is commonly used in everyday language, as well as in trade, as a generic laudatory term, the word ‘fun' 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. It results that in fact advertising language in the context of vehicles is full of examples of the word ‘fun', not only in English. Due to its shortness and positive connotations as a promotional word, it has entered into other languages. Consequently, the CTMA was rejected. Emblems - Heraldic imitation Decision of the First Board of Appeal of 23 July 2009 in Case R 1361/2008-1 SUSCIPERE ET FINIRE (Fig. Mark) (German)
Case R 1361/2008-1 SUSCIPERE ET FINIRE - under Article 7(1)(i) CTMR, trade marks that are identical to national emblems or display a certain similarity to them shall not be registered. The reference to Article 6ter (1)(a) PCPIP contained therein merely serves to specify the type of signs that are to be refused registration, not to limit the scope of the provision . Article 7(1)(i) CTMR does not therefore distinguish between merchandise and service marks and is to be applied identically to both types of trade mark. Registering a trade mark that is similar or identical in the heraldic sense to a sign protected under Article 6ter PCPIP would infringe the right of the state to control the use of the symbols of its sovereignty, and could also confuse the consumers as to the origin of the goods identified by such trade marks. This protection is absolute, and is not subject to the requirement of a likelihood of confusion or mental association, as may be required under Article 6ter (1)(b) and (c) PC for armorial bearings, flags and other emblems, abbreviations or names of international intergovernmental organisations. The individual goods and services need not therefore be examined in greater detail. The emblems protected under Article 6ter PC are not only protected against the registration and use of trade marks that are identical to them or contain them, but also against imitations of these emblems in the heraldic sense being registered as trade mark components. However, the prohibition on imitating an actual state emblem only concerns imitations of the same in an heraldic sense, i.e. imitations involving the heraldic connotations that distinguish the state emblem from other signs. Protection against any imitation in the heraldic sense does not therefore apply to the image as such, but to its heraldic expression. In the present case, the dominant elements, namely the quartered shield, the three langued golden lions passant (leopards) looking down in 1) and 4), 2) a langued lion saliant within a double border of red lilies, and 3) a harp and a crown resting on the shield together with the supporters, with a crowned lion passant guardant to the right, and to the left a ducally gorged and hooved unicorn, embraced by a chain, are thus described identically in both signs from a heraldic perspective. There are differences in the colouring of the quartered shield, in the shield decoration and in the inscription on the banner. Also, in contrast to the protected emblem, the Community trade mark application has no pedestal. In addition, the Community trade mark applied for contains an additional shield in the centre, which partially covers the various fields of the underlying shield, but leaves the contents of the underlying representations clearly visible. Since central elements such as the quartered shield and the supporters are largely identical, this is an imitation in the heraldic sense. The differences are not sufficient to give the Community trade mark application new meaning from an heraldic point of view, as a result of which, it must be seen as an heraldic imitation of the emblem. The Community trade mark application also comprises the supporters protected under Article 6ter PCPIP and thus, based on the inclusion of other elements, constitutes an heraldic imitation of them. It was not disputed by the Board of Appeal that the trade mark applied for involves the coat of arms of the dynasty of the house of Hannover, and that the coat of arms dates from a time when the kings and queens of Great Britain, like today, came from this family. It is also clear that the aforesaid coats of arms, which the United Kingdom has had protected for itself, were derived from this coat of arms. However, Article 7(1)(h) CTMR and Article 6ter PCPIP take into account eligibility for protection on the filing date or priority date, not prior facts. The afore-mentioned coats of arms have been protected under Article 6ter PCPIP since 1 November 1971 , and therefore ‘take priority' over the Community trade mark application. The history of the appellant's family cannot alter this. Procedural Questions List of goods and services – classification Decision of the First Board of Appeal of 5 August 2009 in Case R 439/2009-1 THEVS (German) Case R 439/2009-1 THEVS - In principle, trade marks may be registered for retail services. The services covered by the ‘retail trade' relate to all activity carried out by a trader for the purpose of encouraging the conclusion of a contract of sale. The actual conclusion of the contract of sale is not therefore the service, since this is already covered by the registration of the trade mark for goods. The services of the retailer exist in the offer of a variety of services aimed at inducing the consumer to conclude the contract of sale with the trader in question rather than with a competitor. This includes in particular selecting the assortment of goods offered for sale. As regards the registration of a trade mark for services provided within a retail context, the Court considered it unnecessary, if not out of touch with reality to specify the services in respect of which this registration had been requested due to conditions in the major economic sector constituted by the retail trade. However, the applicant must be required to specify the goods or types of goods to which those services relate by means of particulars. What is decisive, therefore, is not the definiteness of the actual product, but solely whether the indication of the product allows the services of the retailer to be adequately determined. In the present case, the Community trade mark applicant met the requirements of sufficient specification of services by the indication of the goods to which the services relate. This is because, contrary to the opinion of the Office, the groups of goods are overall sufficiently specified that the services that relate to these goods are adequately identifiable. Consequently, the Board accepted in Class 35: Retail services, namely in the field of gift articles for household purposes and daily use, household articles, decorative articles, in the field of arts and crafts, and tea; mail order services, namely in the field of gift articles for household purposes and daily use, household articles, decorative articles, in the field of arts and crafts, and tea. |
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