January 2010

Luxembourg Case Law

A: Court of Justice: Appeals from decisions of the Court, Article 63 CTMR

A-1: Court of Justice: Judgments and Orders

Carbonell or La Española: C-498/07P (appeal of T-363/04); Judgement of 03/09/2009 ; Language of the case: ES; (Action dismissed; CFI stands; Office practice confirmed)

Keywords: Opposition: likelihood of confusion (LOC) – LOC: comparison of marks – LOC: protection of the abstract concept (or image) of the earlier mark.

FACTS: The case is an appeal from the case T-363/04 which had revoked a decision of the Board of Appeal (R 1109/2000-4). The conflict had arisen between the figurative CTM application “La Española” and the earlier Carbonell trade mark(s), as set out below.

CTM application	Earlier mark

The CTM had been applied for a range of goods in Classes 29 and 30. The earlier rights are registered for olive oil. The opposition by Carbonell had been rejected by the Opposition Division in decision No 2084/2000 on the ground that the signs at issue produced a different overall visual impression, that from a phonetic point of view they had no similar elements, and that the conceptual link relating to the agricultural nature and origin of the goods was weak, which excluded any likelihood of confusion between the marks.

On appeal, the Board confirmed the rejection of the opposition. It confirmed that the visual impression produced by the marks was different overall.

The decision of the Board was overturned. , and the opposition was upheld.

The Court held that, in light of the similarity of the signs at issue and the fact that the word element of the mark applied for has a weak distinctive character, the consumer may perceive the mark applied for as a sub-brand linked to the Carbonell mark.

SUBSTANCE: The Court of Justice confirmed the general principles underlying the assessment of likelihood of confusion. On the assessment of the similarity of the signs, the Court considered the visual comparison to be the most important one, by giving major weight to the figurative elements of the marks at issue. The reason is that the relevant goods are bought by average Spanish consumers whose level of attention at the moment of purchase is low and who select the goods foremost by recalling their visual impact.

C: General Court: Judgments and Orders on appeals against decisions of the OHIM, Article 63 CTMR

C-1: General Court: Judgments and Orders

Wristwatch or Positionsmarke Lange Uhr : T-152/07; Judgement of 14/09/2009 ; Language of the case: DE; (Action dismissed; Office practice confirmed)

Keywords: Absolute grounds for refusal: Distinctiveness: 3D signs; Absolute grounds for refusal: Distinctiveness: acquired on the market.

FACTS: The action is directed against a decision of the Board of Appeal (R 1176/2005-1) relating to CTM application 2 542 694 (as shown below) which, in German, had been denominated “Positionsmarke”. It had been applied for in class 14, inter alia, for luxury watches and parts thereof.

The applicant had filed a description which stated that the dotted lines in the representation would not form part of the mark: they are only meant to demonstrate the position of the mark on the respective products. The application had been rejected on the basis of Article 7(1)(b) CTMR. The Board had held that the case law relating to specifically higher requirements as regards distinctiveness, applicable in respect of signs consisting of the shape of the product or a part thereof, also apply to the sign at issue (“position of parts of the product on the product”). These conditions are not met, and distinctiveness acquired on the market has not been proven.

SUBSTANCE: The Court rejected the appeal. On Article 7(1)(b) CTMR, it referred to established case law and confirmed that this case-law is also relevant if the trade mark applied for is a figurative mark which consists of the two‑dimensional representation of the product

As to Article 7(3) CTMR the judgment confirmed, firstly, that acquired distinctive character has to be proven for the entire Community as it was at the time of filing if the grounds of refusal cannot be restricted to a specific area and, secondly, that advertising expenditures as such, which are not supported by results of market studies, are only indicative and do not prove that the mark has acquired distinctive character through use.

MANGO adorably : T-308/08; Judgement of 15/09/2009 ; Language of the case: FR; (Action dismissed; Office practice confirmed)

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks.

FACTS: T he action was initiated against a decision of the Board of Appeal (R 1162/2007-2) relating to CTM application 4 119 996 “Mango Adorably”, which had been applied for a range of cosmetics in class 3.

CTM application	Earlier marks

It had been opposed on the basis of several earlier rights as shown above, registered also for class 3 products. The Opposition Division rejected the opposition which was confirmed by the Board of Appeal. It was held that the conflicting signs were dissimilar and thus, as one condition of Article 8(1)(b) and 8(5) CTMR was not met, both grounds for refusal had to be rejected, even if the conflicting goods (Class 3) were considered identical.

SUBSTANCE: The judgment confirmed the result and the assessment as to the visual, phonetic and conceptual dissimilarity of the conflicting signs. It criticized, however, that the earlier French registration had not been taken into account and, consequently, the French public had not been included in the relevant public. Nevertheless, it observed that by taking into account the Belgium public the average French speaking consumers' perception was included in the assessment of likelihood of confusion (Article 8(1)(b) CTMR). Given the dissimilarity of the conflicting signs, the first of three cumulative conditions for the application of Article 8(5) CTMR was not satisfied and the claim had to be rejected without any need to evaluate whether the other conditions of the Article were met.

Offshore Legends: T-305/07 and T-306/07; Judgement of 16/09/2009 ; Language of the case: FR; (Action dismissed; Office practice confirmed)

Keywords: Opposition: likelihood of confusion (LOC): comparison of goods; Opposition: likelihood of confusion (LOC): comparison of marks.

FACTS: The actions are directed against two decisions of the Board (R 1031/2006-2 and R 1038/2006-2) relating to two CTM applications (CTMA) set out below (“Offshore Legends”; figurative marks) which had been applied for a variety of goods and services in Classes 3, 9, 14, 18, 20, 24, 25, 28 and 35.

CTMA 3 160 231

CTMA 2 997 021

The said applications had been opposed (cases B735391 and B669368) on the basis of an earlier French trade mark right in “Offshore One” (figurative mark; shown below).

The invoked mark is registered for a range of goods in Classes 16, 18 and 25. While the Opposition Division rejected the oppositions the Board of Appeal partially annulled the decisions and rejected the CTM applications in respect of goods applied for in Classes 18 and 25. It held that there was identity or a high degree of similarity between the conflicting goods in these classes and a similarity of the signs and thus concluded to likelihood of confusion for the French public.

SUBSTANCE: The judgment confirmed the outcome and the reasoning given in favor of likelihood of confusion. The term ‘OFFSHORE' retains a certain distinctive character although it is understood by part of the relevant public in relation to the goods in question as referring to ‘nautical sports'. The other elements of the conflicting marks are considered to be equally weakly distinctive. Nevertheless, the fact that both marks contain the term ‘OFFSHORE' resulted in a certain visual, phonetic and conceptual similarity. With regard to the part of the public which does not understand the meaning of the term as denoting water sport, the term would acquire increased importance and accentuate the similarity between the signs. The goods in question are partially identical and partially highly similar.

RNAiFect : T-80/08; Judgement of 28/10/2009 ; Language of the case: DE (Action dismissed; Office practice confirmed)

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks. Opposition: likelihood of confusion (LOC): comparison of goods.

FACTS: The applicant (intervener before the CFI), filed an application for a CTM for the word mark RNAiFect, in classes 1, 5 and 9 (No 3 304 813). The opponent (plaintiff before the CFI) lodged a notice of opposition (case B771495) against the mark applied for, alleging a likelihood of confusion within the meaning of Article 8(1)(b) CTMR on the basis of an earlier CTM for the word RNActive registered for goods in classes 1 and 5.

CTM Application	Earlier CTM
RNAiFect	RNActive

In its decision, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion. The Board of Appeal dismissed the appeal (R1219/2006-1). The Board concurred with the Opposition Division's finding that the goods to be compared were identical or similar to a high degree. As regards the two signs at issue, the Board found that they were of weak distinctive character because the component ‘rna' corresponds to the abbreviation of the English word ‘ribonucleid acid'. The differences between the component ‘ifect', and the component ‘ctive', allow for any likelihood of confusion to be ruled out.

SUBSTANCE: The judgment confirms the decision of the Board. As to the relevant public, it states that goods in Class 5 are aimed at pharmacists and end consumers who have a high level of attention and are assisted in their choice by highly qualified professionals. As regards chemicals in Class 1, they are aimed at a specialised public with an even higher level of attention. The goods in issue are in part identical and in part similar.

As to the visual comparison, the similarity resulting from the identical first three letters is strongly mitigated by the presence of the last five letters of the signs at issue. Thus, the signs show visual differences. As concerns the phonetic comparison, while the two signs begin with the three letters “RNA”, their endings create a fairly clear distinction between them and the two signs are thus pronounced very differently. Any similarity must be regarded as extremely weak. Any conceptual similarity results from the fact that the component ‘RNA' is common to both signs.

As to likelihood of confusion, although the common component of the two signs, namely ‘RNA', appears first, the fact that it is identical does not lead to a likelihood of confusion because that component has limited distinctive character. Thus, even for identical and similar goods a likelihood of confusion can safely be ruled out (paragraphs 52 to 54).

Clina : T-150/08; Judgment of 11/11/2009 ; Language of the case: DE; (Action dismissed; Board and Office practice confirmed)

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks; Opposition: likelihood of confusion (LOC) comparison of signs.

FACTS: The action has been initiated against a decision of the Board of Appeal (R 1484/2006-4) relating to CTM application 3 921 079, word mark “Clina”, which had been applied for a range of goods in Classes 3 and 21. That CTM application had been opposed (case B 869117) on the basis of an earlier CTM in Clinair, word mark, which is registered for a range of products in Classes 3 and 5. The Opposition Division rejected the opposition.

CTM Application	Earlier CTM
Clina	Clinair

The Board reversed the opposition decision and decided on likelihood of confusion. It held that the conflicting goods in Class 3 (mainly cleaning preparations and cosmetics) were identical and that the applied for goods in Class 21 (hair, nail and tooth brushes) were highly similar to those registered in Class 3 of the earlier mark. The signs were considered to be visually and phonetically similar to a high degree. The signs being fancy words, there was no conceptual comparison possible.

SUBSTANCE: The judgment confirms the outcome. There is identity or high similarity of the goods in question. The analysis of the visual and phonetic similarity is confirmed. As to the conceptual comparison, however, it states that the signs are not without any meaning since their common element ‘Clin' refers to the English adjective ‘clean', even if this element can be easier recognized in the earlier mark (‘clean air') than in the mark of the application ‘Clina'. Given the high visual and phonetic similarity between the signs, the semantic content of the earlier sign is not apt to neutralize the similarity between the signs.

SpagO : T-438/07; Judgement of 12/11/2009 ; Language of the case: DE; (Action dismissed; Office practice confirmed)

Keywords: Reputation; Opposition: likelihood of confusion (LOC): comparison of marks.

FACTS: The Opposition Division (B 516 312) upheld the opposition on the basis of the earlier Benelux trade mark ‘SPA', registered for goods in Class 32 and highly reputed for mineral waters in that territory, and rejected the CTM application ‘SpagO' (No 2 320 844) for ‘alcoholic beverages, except beers' in Class 33.

CTM application	Earlier Benelux Trade Mark
SpagO	SPA

The Board of Appeal (R 1285/2006-2) annulled the contested decision and rejected the opposition. It endorsed the finding concerning reputation in the Benelux of the ‘SPA' mark for mineral water. Taking into account that the level of similarity between the signs was not sufficient for the relevant consumer to establish a link between them, as well as the absence of detriment to the distinctive character or the repute of the earlier mark, the Board concluded that the requirements for the application of Article 8 (5) CTMR were not fulfilled.

SUBSTANCE: The Court dismissed the action. The Court endorsed the finding that there is a low degree of visual and phonetic similarity between the marks. The degree of closeness or dissimilarity between the conflicting goods has also to be taken into account: the Court states that the average consumer will be able to differentiate between alcoholic and non-alcoholic beverages. This will not be put into question because of the fact that both beverages can be mixed and served together, consumed at the same places and at the same time, sold in the same shops. It concludes therefore that, in the light of the difference in the nature of the goods covered by the marks at issue, the element ‘spa' in the trade mark applied for will not be perceived by the average consumer in the Benelux countries as referring to the mineral waters marketed under the earlier mark, there is no sufficient link between the marks. Since one of the cumulative conditions for application of Article 8 (5) CTMR is not met, it does not proceed to examine whether there is detriment to the repute of the mark.

BOUNCEBACK : T-263/09; Order delivered on 16/11/2009 ; Language of the case: EN; (Application withdrawn; Case closed; Board decision stands)

Keywords: Absolute grounds for refusal: distinctiveness

FACTS: Mannatech, Incorporated (“the Applicant”) applied for the CTMA “BOUNCEBACK” (No 6 889 422) for goods in class 5 (namely “Dietary and nutritional supplements, namely, orally ingested dietary and nutritional supplements used for the reduction of inflammation”).

In its decision, the examiner refused the mark on the ground of lack of distinctive character (Article 7(1)(b) CTMR) because it merely indicates the purpose of the goods, which is to enable a person to bounce back, i.e. to recover. The applicant appealed this decision.

The Board of Appeal dismissed the appeal (R 100/2009-1).

CANNABIS: T‑234/06; Judgement of 19/11/2009 ; Language of the case: EN; Action dismissed, Office's practice confirmed.

Keywords: Invalidity proceedings; Absolute ground for refusal; Descriptive character

FACTS: The action is directed against a decision of the Board of Appeal (R0517/2005-2) relating to CTM 1 073 949, word “Cannabis”. The CTM had been registered for a range of goods and services in Classes 32, 33 and 42. The applicant for cancellation had based its request on Article 51(1)(a) in conjunction with Article 7(1)(c) and (g) CTMR. The Cancellation Division declared the CTM invalid (C648) in respect of all goods in Classes 32 and 33. The Board dismissed the appeal.

SUBSTANCE: The main argument for the proprietor is that the trade mark CANNABIS has distinctive character, given that it is both a common name and a purely fanciful mark and has no connection, even indirect, with beer and beverages in general.

The Court found that the word ‘cannabis' has three possible meanings. First, the word ‘cannabis' refers to a textile plant; secondly, the word ‘cannabis' refers to a narcotic which is prohibited in a great number of Member States; thirdly, it designates a substance the possible therapeutic use of which is under discussion. Those findings thus show, contrary to the applicant's arguments, first, that the word ‘cannabis' does not merely refer to drugs and to certain therapeutic substances and, secondly, that hemp is lawfully used in the production of foodstuffs and beverages.

It is therefore necessary to examine, in the light of those findings, whether the word mark CANNABIS is descriptive of the goods in classes 32 and 33 and, in that regard, it is pointed out that there is a material link between the sign CANNABIS and certain characteristics of the abovementioned goods: as is apparent from the documents submitted, cannabis is habitually used in the manufacture of numerous foodstuffs, including beer and certain beverages.

Those circumstances explain why, when he sees an alcoholic beverage or a beer bearing the trade mark CANNABIS, the average Community consumer will immediately perceive, without further thought, a description of the characteristics of the goods in question.

COLORIS : T-353/07; Judgement of 30/11/2009 ; Language of the case: EN; (Action dismissed; Office practice confirmed)

Keywords: Opposition: Proof of use

FACTS: The action is directed against a decision of the Board of Appeal (R 1060/2006-1) relating to CTM application No. 2 817 732, “Coloris” (figurative mark), for inter alia , the following goods in Class 2: paints, lacquers and dyes; thinners; enamels and aluminium powder for painting; binding preparations for paints, and in Class 16: paintbrushes, artists' materials, pencils and drawing implements.

CTM application	Earlier mark

It had been partially opposed on the basis of the earlier word mark “Coloris”, registered in France in respect of the following relevant goods in Class 2: paints; varnishes (except insulating varnishes); lacquers (paints); preservatives against rust and against deterioration of wood; colorants; mordants (not for metal, not for seeds); raw natural resins; metals in foil and powder form for painters, decorators, printers and artists. The opposition had been allowed (B 651 887) in respect of those goods for which the opponent had shown genuine use.

SUBSTANCE: With regard to the alteration of the distinctive character of the earlier mark, the applicant alleges, first, that the complex forms of the earlier word mark COLORIS used in the evidence are different signs which alter its distinctive character for the purposes of Article 15(2)(a) CTMR.

In that regard, it should be noted that the distinctive character of the word element ‘coloris' is not disputed by the parties. The Court noted that the complex forms, including the earlier word mark, used in certain items of evidence do not have any differences which alter the distinctive character of the earlier mark. Consequently, the Board did not err when it took those signs into consideration for the purpose of assessing the evidence of genuine use of the earlier mark.

With regard to the proof of genuine use of the earlier mark, the Court maintains that the evidence, considered as a whole, provides sufficient indications of the place, time, extent and nature of use of the earlier mark.

Indications of the time, place and extent of use may be inferred from the invoices prove the sale of colorants in large quantities by the intervener to a great number of companies established in France during the relevant period.

With regard to the nature of use, the photograph of the metallic can shows that the word mark appears on packaging used to market colorants. The probative value of that photograph is confirmed in a number of other forms of evidence, such as the sample of the label, a number of invoices issued by printing companies, and the declaration of a manufacturer of metallic cans.

It must therefore be concluded that, considered as a whole, the evidence submitted by the intervener to OHIM supports the finding of the Board that genuine use of the earlier mark in the course of the relevant period in France had been established.

RedEnvelope: T-415/07 and T-416/07; Order delivered on 30/11/2009 ; Language of the case: EN; (Application withdrawn; Case closed; Board decision stands)

Keywords: Opposition: earlier rights – Earlier right: a series mark – Earlier right: a non-registered business identifier, Article 8(4) CTMR – Opposition: likelihood of confusion (LOC) – LOC: comparison of marks – Comparison of marks: conceptual comparison.

FACTS: The action is directed against a decision of the Board of Appeal (R1117/2005-1) relating to CTMA 1 601 327, “Red Envelope”. It had been opposed on the basis of a UK series mark (“Red Letter”), several non-registered business identifiers used on the market and a company name. The non-registered device marks consist of or contain a red envelope.

The sign had been applied for in respect of a range of services in Classes 35 and 42. The series mark is registered for a range of goods and services in Classes 9, 14, 16, 18, 21, 22, 25, 26, 33, 36, 39, 41 and 42.

The non-registered word mark RED LETTER is allegedly used in the United Kingdom ; the same applies as regards the non-registered word mark RED LETTER DAYS. The non-registered device marks consisting of a red envelope, as shown above, are allegedly used in the United Kingdom . The earlier sign in the form of a non-registered trade mark and company name RED LETTER DAYS PLC is used in the United Kingdom . All of the above are allegedly used for a range of goods and services in Classes 9, 14, 16, 18, 21, 25, 26, 33, 35, 36, 39, 41, 42, 43 and 44.

CTM application

Magnify

Earlier device mark

Earlier device marks “red envelope”

The Opposition Division had upheld the opposition (B 488 025) for part of the contested services under Article 8(1) CTMR, namely in respect of some services in classes 35 and 42. It had rejected it as to the remainder, holding that the rest of the services of the application in Classes 35 and 42 were dissimilar to the goods and services on which the opposition is based. As regards Article 8(4) CTMR, the Opposition Division had dismissed the relevant claim on the grounds that the opponent had failed to invoke any specific ground contained in the law of the United Kingdom that would entitle it to prohibit the use of the mark applied for, irrespective of the fact that the earlier signs invoked in that context may have been used in the course of trade and might eventually have acquired goodwill or reputation.

On appeal, the Board had broadened the scope of the rejection of the CTM application under Article 8(1) (b) CTMR to include further services in Class 35. As regards Article 8(4) CTMR, it dismissed the finding that the opponent had not specifically identified the relevant provisions of UK law and had remitted the case back to the Opposition Division pursuant to Article 62(1) CTMR for further prosecution, that is, in order to examine the merits of this claim, also taking into consideration the complementary evidence submitted by the opponent at the appeal proceedings.

BEST FARM : T-53/09; Order delivered on 01/12/2009 ; Language of the case: DE (Case closed; Board decision stands)

Keywords: Opposition: likelihood of confusion (LOC): comparison of goods. Opposition: likelihood of confusion (LOC): comparison of marks.

FACTS: Dieter Christian applied to register the CTM (No 3 089 281) “BEST FARM” for goods in classes 29, 30, 31 and 32. The company Cafea GmbH, relying on Article 8(1)(b) CTMR, filed an opposition based on the German word mark “Bestform” registered for goods and services in classes 1, 29, 30, 32, 33 and 42.

CTM Application	Earlier German mark
BEST FARM	Bestform

In its decision (B 867 970) the Opposition Division rejected the opposition. It held that while the goods were partly identical, partly similar and partly different, the conceptual differences neutralize the visual and aural elements and the term “best” is not distinctive. It concluded that there was no risk of confusion. The opponent appealed this decision. The Board of Appeal rejected the appeal (R 420/2008-1).

SOLVO: T-434/07; Judgement of 02/12/2009 ; Language of the case: EN; (Action upheld; Office practice confirmed)

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks; reputation: comparison of marks.

FACTS: The applicant filed a CTM application (No 3 555 422) for the mark SOLVO (fig) for goods and services in Classes 9, 39 and 42. The opponent based its opposition on two earlier CTM registrations, on four earlier UK registrations relating to the word sign VOLVO and on the earlier UK registration VOLVO (fig). The earlier marks, which the opponent claimed had a reputation in the EC, covered a wide range of goods and services. The opposition was based on Articles 8(1)(b) and 8(5) CTMR.

CTM Application	Earlier trade mark

The Opposition Division (B798738) rejected the opposition on the ground that the signs at issue were not similar. The Board (R 1240/2006-2) agreed and dismissed the appeal.

SUBSTANCE: On the infringement of Article 8(1)(b) CTMR, the Court noted that the identity of the goods in question is not contested and, as regards the signs, agreed with the Board in the outcome of the visual comparison (that typeface influences to a large extent the overall impression) and the conceptual comparison (it is unlikely that a significant proportion of consumers would make the connection between the terms referred to by those marks and Latin and therefore conceptual similarity plays only a very minor role in the assessment of the similarity of the signs).

However, the Court disagreed with the Board's finding on the aural comparison. While the Board found that the signs were different on account of the difference in their first letter, the Court stated that, although the difference in the first letter of the signs at issue creates a phonetic dissimilarity, the pronunciation of the group of the following four letters, ‘olvo', produces some aural similarity. Therefore, the Board erred when it did not find that there is a certain degree of phonetic similarity between the signs.

Consequently, the existence of a degree of similarity between the signs at issue as regards phonetic similarity, precludes the conclusion that one of the essential conditions for the application of Article 8(1)(b) is lacking. The Board, therefore, incorrectly refrained from carrying a global assessment of the likelihood of confusion and infringed Article 8(1)(b) CTMR.

On the infringement of Article 8(5), it considered that as the Board made an error of assessment in finding that the signs at issue were devoid of any similarity that error, again, is liable to influence the assessment of whether, in view of the degree of similarity between the signs at issue, the relevant public might establish a link between them. Therefore, the Board misapplied Article 8(5) CTMR.

TIR: T-245/08; Judgement of 03/12/2009 ; Language of the case: DE (Action dismissed; Board and Office practice confirmed)

Keywords: Revocation: capacity to act, entitlement to file a request ; Revocation: lack of use

FACTS: The action is directed against a decision of the Board of Appeal (R 0708/2007-1) relating to revocation proceedings C 1414, directed against CTM No 400 804 (shown below), held by an Iranian tobacco company and registered for goods in class 34.

The revocation request had been brought by a Bulgarian tobacco company and was based on non-use (Article 55(1)(a) and 51(1)(a) CTMR). The challenged CTM was revoked. The Board's decision dismissed the appeal, holding, firstly, that the request for revocation filed by the intervener was admissible and, secondly, that the proprietor had produced no evidence of genuine use of the mark in question.

SUBSTANCE: With Regard to the first plea ( infringement of Article 55(1)(a) CTMR ) the proprietor argues that the words “any person” are only applicable to individuals or legal entities within the scope of the CTMR (i.e., only nationals of the EU). In addition, the legitimacy to act against a CTM depends on proof of the existence of commercial interests; in the proprietor's view the existence of a cause of action is a condition of admissibility, even when the request is based on absolute grounds for invalidity.

The Court rejected this plea as unfounded by referring to Article 55(1)(a) CTMR which states that an application for revocation of a CTM may be filed with the Office “by any person or entity and any group formed to represent the interests of manufacturers, producers, service providers, traders or consumers, which under the law applicable to it, has the capacity to sue”. This Article, therefore, does not refer either to any interest in acting nor to any requirement as to nationality or residence. Further, this Article shows that a cause of action is not required as part of an application for revocation. It is thus clear from the scheme of Article 55(1) that the legislature intended to permit any person or entity and any group with the capacity to sue to file applications for revocation and invalidity claims based on absolute grounds for invalidity, whereas in respect of applications for invalidity based on relative grounds for invalidity, it explicitly restricts the circle of applicants for revocation.

Finally, a s regards the issue of nationality, the Court noted, out of the joint reading of Articles 88 and 89 CTMR, that persons or entities who have neither home nor office in the Community are not excluded from the scope of the CTMR.

As regards the second plea ( infringement of Article 50(1)(a) CTMR ), the proprietor claimed that it uses the mark in question for cigarettes on the “virtual” market (i.e. on its web page). The Court considered this plea as inadmissible since it was not argued before OHIM by the proprietor.

BAHMAN: T-223/08; Judgement of 03/12/2009 ; Language of the case: DE (Action dismissed; Board and Office practice confirmed)

Keywords: Revocation: capacity to act, entitlement to file a request ; Revocation: lack of use

FACTS: The action is directed against a decision of the Board of Appeal (R 0709/2007-1) relating to revocation proceedings C 1415, directed against CTM No 427 336 (shown below), held by an Iranian tobacco company and registered for goods in class 34.

SUBSTANCE: [As to the substance this case is identical with the previous case T-245/08].

Kids Vits : T-484/08; Judgement of 09/12/2009 ; Language of the case: DE (Action dismissed; Office practice confirmed)

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks.

FACTS: The applicant filed a CTM application (No 3 979 143) for the word mark “Kids Vits” for goods in class 5. The opponent based its opposition on the earlier CTM registration relating to the word sign VITS4KIDS for goods in class 5. The opposition was based on Article 8(1)(b) CTMR.

CTM Application	Earlier CTM
Kids Vits	VITS4KIDS

The Opposition Division (B876500) allowed the opposition. The applicant filed an appeal. The Board (R 716/2007-4) dismissed the appeal. The Board held that, due to the high degree of similarity between the signs and the identity or high similarity between the goods and taking into account the normal level of attention paid by the relevant general public when buying the goods in question, the likelihood of confusion cannot be ruled out despite the rather weakened distinctive character of the opposing trade mark.

SUBSTANCE: The appeal was dismissed. Firstly, the Court indicated that the conflicting goods (which are identical) are aimed at the general public in the European Union, which will not pay any greater attention to the conflicting goods than they generally would when buying health food.

Secondly, the Court concurred with the Board in that: the signs were visually similar; reversing the order of the terms is not crucial because the two components, ‘Vits' and ‘Kits', are similar per se . The Court confirmed that globally the signs were aurally similar. As regards conceptual similarity, the Board held that both trade marks contain the word ‘Kids'. To the extent that the other word ‘Vits' is understood as an allusion to vitamins, this makes the two trade marks even more similar. The Court agreed that both marks were conceptually similar. It concluded that taking into account the identity or similarity of the goods and the high similarity between the marks, a risk of confusion between the marks could not be excluded.

Superskin: T-486/08; Judgement of 09/12/2009 ; Language of the case: EN; (Action partly upheld)

Keywords: Absolute grounds for refusal: lack of distinctiveness; descriptiveness

FACTS: The action was initiated against a decision of the Board of Appeal (R 1656/2007-4) relating to CTM application No 5 967 856, word SUPERSKIN. It had been applied for in classes 3, 5 and 44.

It had been rejected on the grounds that the sign gives obvious and direct information about the quality and intended purpose of the goods and services for which protection is sought, since, taken as a whole, the term SUPERSKIN immediately informs the consumer that the products concerned considerably improve the appearance of one's skin. Accordingly, the sign cannot function as an origin indicator, being both descriptive and totally devoid of distinctiveness for the purposes of the above provisions

SUBSTANCE: The Court agreed with the findings of the Board concerning the meaning of the mark. The relevant public is made up of average English speaking consumers. As regards the elements which make up the mark applied for, it is not in dispute that the sign at issue is composed of the words ‘super' and ‘skin'. In relation to the word ‘skin' in the sign at issue, the Board found, that that word refers, inter alia, to human skin. In relation to the word ‘super', the Board found that it means of high grade or quality. It must therefore be held that that laudatory word has a descriptive character in respect of the goods and services concerned. The Court also pointed out that the combination of the words ‘super' and ‘skin' in the sign at issue will not be perceived as unusual by the relevant public. The sign at issue will immediately be perceived by the relevant public, without further thought, as designating goods and services which have as their intended purpose high quality skin, that is to say, beautiful and/or healthy skin.

However, as regards the goods and services for which that expression is descriptive, the Court partly disagreed with the Board. Regarding part of the goods in Class 3 the Court held that, from the point of view of the relevant public, there is a sufficiently direct and specific relationship between, on the one hand, the sign at issue and, on the other, all the goods intended to improve or preserve the appearance or health of the skin. However, the Court found that the Board did not demonstrate that the sign at issue has such a sufficiently direct and specific relationship with other part of the goods in class 3 (perfumes, nail and hair care preparations, antiperspirants, deodorants, dentifrice, hair colouring preparations, hairspray, eyecare preparations, nail varnish, nail varnish remover and artificial nails).

Regarding the goods in Class 5, and in particular those used in the special nutrition sector, they may be intended to produce an effect, through their ingredients, on the skin's appearance. It follows that the sign at issue has a sufficiently direct and specific relationship with those goods.

Regarding the services in Class 44, the same distinction must be made as for the goods in Class 3.

Stella : T-27/09; Judgement of 10/12/2009 ; Language of the case: DE; (Action dismissed; Office practice confirmed)

Keywords: Use: Revocation proceedings

FACTS: The company Stella Kunststofftechnik GmbH is the proprietor of a CTM (No 15 479) for the word mark Stella for the goods in Classes 6, 8, 16, 20 and 21, registered in 1996. Later, Stella Pack S.A., filed a CTM application for a figurative mark containing the element “Stella pack”, for the goods in Classes 4, 6, 16, 20 and 21. Stella Kunststofftechnik GmbH, filed an opposition, against the registration of the figurative mark applied for. Subsequently, the applicant of this second mark filed an application for revocation (C2023) of the mark which was the basis for the opposition. The Cancellation Division, finding that the mark at issue had not been put into genuine use for certain goods, revoked CTM No 15 479 in respect of certain goods in Classes 6, 8, 16 and 20. Stella Kunststofftechnik GmbH filed an appeal. The Board of Appeal (R0693/2008-4) dismissed the appeal.

SUBSTANCE: The appeal is dismissed and the decision of the Board confirmed. The Court decided that the Board of Appeal was correct to hold that the opportunity available to all to file an application for revocation on grounds of non-use of a mark is completely independent of any parallel opposition proceedings in which the attacked CTM is involved. Consequently, the opponent argument that an application for revocation against a CTM is inadmissible where that CTM is involved in opposition proceedings (as an earlier right) is rejected.

TRUBION : T-412/08; Judgement of 15/12/2009 ; Language of the case: EN; (Action dismissed; Office's practice confirmed)

Keywords: Opposition: likelihood of confusion (LOC): comparison of goods. Opposition: likelihood of confusion (LOC): comparison of marks.

FACTS: Trubion Pharmaceuticals Inc filed a CTMA (No 3 668 977) for the word mark ‘TRUBION' for goods and services in Classes 5 and 42. The opponent, Merck KGaA based its opposition i.a. on its earlier figurative Community trade mark registered for various goods including some goods in Class 5. The Opposition Division (B 811 010) upheld the opposition in part and thus rejected the application for registration for the goods in Class 5.

CTM Application	Earlier CTM
TRUBION

The Board of Appeal (R1605/2007-2) dismissed the appeal. It found in particular, that the goods in question were similar since they often share the same channels of trade and ‘have frequently the same or complementary purpose'. Next, having stated that the term ‘tribion' was the dominant element in the earlier sign, it found that the signs at issue were similar. Therefore, it concluded that there was a likelihood of confusion between the word mark applied for and the earlier mark.

The applicant filed an appeal before the Court. The day before this action was brought, the applicant, stated that it was restricting the list of goods in Class 5 referred to in its application for registration as follows: ‘Pharmaceutical preparations for the treatment of cancer, inflammatory diseases, and autoimmune diseases'.

SUBSTANCE: The action was dismissed. The Court stated that the restriction consisted in specifications which are capable of influencing the assessment of the similarity of the goods in question and, consequently, of altering the factual context which had been presented before the Board of Appeal. The withdrawal of the reference to the general category ‘Pharmaceutical preparations' constitutes already in itself an alteration which is capable of influencing the examination of the similarity of the goods, since it consists in the withdrawal of the reference to a general category which includes the other goods covered by the mark applied for. Moreover, ‘pharmaceutical preparations for the treatment of autoimmune diseases' constitute a specification of the category ‘Pharmaceutical preparations for use in the [field] of immunology', autoimmune diseases being diseases which affect the immune system. Lastly, the reference to pharmaceutical preparations for use in the field of ‘inflammatory diseases' appears for the first time in the application for restriction of the goods and therefore introduces a new element which was not submitted for examination by the Board. In the light of those considerations, that restriction cannot be taken into account by the Court.

On the alleged infringement of Article 8(1)(b). The definition of the relevant public, as indicated by the Board is not disputed (i.e., is composed both of end consumers and health professionals from the whole of the European Community). The assessment of the comparison of the goods by the Board is not disputed either. The Court concluded that the Board did not err in finding that the term ‘tribion' was the dominant element in the earlier mark and that the signs are similar.

BEST BUY : T-476/08; Judgement of 15/12/2009 ; Language of the case: DE (Action dismissed; Office practice confirmed)

Keywords: Absolute grounds for refusal: distinctiveness

FACTS: Media-Saturn-Holding GmbH (the applicant), filed an application to register the following trade mark (CTMA No 5 189 550):

Image not found

The mark was applied for goods and services in classes 1, 2, 5 to 12, 14 to 17, 20 to 22, 27, 28, 35, 37, 38 and 40 to 42.

In its decision, the examiner rejected the application on the basis of Article 7(1)(b) CTMR.

In the Board of Appeal's decision (R 591/2008-4) the appeal was dismissed on the basis of Article 7(1)(b) CTMR, on the ground that the mark applied for was devoid of distinctive character for the products and services in question.

SUBSTANCE: In support of its application, the applicant puts forward a single plea, alleging infringement of Article 7(1)(b) CTMR arguing that the mark applied for has a minimum distinctive character mainly because of the fact that its graphical presentation is not common in advertising. The Court, firstly, indicated that the relevant public is a public with sufficient knowledge of English. Secondly, the Court added that the mark applied for is made up of words which, when examined separately, are without distinctiveness; in doing so the Court relied on previous case law [Judgement of 03/07/2003 , Best Buy Concepts v OHIM (BEST BUY) (T-122/01, Rec. ECR II-2235]. The Court considers that the expression “BEST BUY” will be immediately perceived as a simple formula or a promotional slogan. Finally, and with regard to the issue of the figurative element, the Court notes that it is a simple geometric shape whose function is to highlight information and that it does not render the mark applied for distinctive. The Court dismissed the appeal.

C-2: General Court: Developments in pending cases

Green colour : T-282/09; Office response filed on 19/10/2009 ; Language of the case: FR

Keywords: Absolute grounds for refusal: distinctiveness; colour mark

FACTS: The Fédération Internationale des Logis ("the applicant") filed an application for registration the following figurative mark for goods and services in classes 3, 18, 24, 43 and 44. The CTMA No is 6 468 789.

In its decision, the examiner rejected the trademark application under Article 7(1)(b) CTMR. T he applicant lodged an appeal. In its decision (R 1511/2008-1) the Board of Appeal dismissed the appeal on the grounds that the sign is composed of two elements, namely a green and a square whose sides are slightly curved, and that there is a general interest to let the colors and basic geometric symbols for free use by all.

Mangiami : T-250/09; Office response filed on 21/10/2009 ; Language of the case: IT

Keywords: invalidity: relative grounds for refusal: likelihood of confusion; invalidity: proof of use.

FACTS: the applicant for cancellation requested the invalidity of the figurative mark “Mangiami” (No 3 113 933) for goods in classes 29, 30 and 32. The request was based on Article 8(1)(b) in combination with Article 53(1)(a) CTMR (cancellation case C2063).

Registered CTM	Earlier international registration
	MANGINI

The Cancellation Division rejected the application for invalidity on the grounds that the applicant for invalidity had failed to show the use of the earlier mark in relation to the goods and services for which it is registered.

The proprietor filed an appeal which was partly upheld by the Board of Appeal (R 982/2008-2). The Board partly upheld the application for declaration of invalidity relation to some goods in class 29 and 30.

The Board took into account not only the evidence of proof of use filed before the Cancellation Division, but also the evidence filed before the Board by considering that the conditions for a accepting of additional evidence filed for the first time before the Board were met (Arcol/Capol).

Having accepted the proof of use, the Board decided to exercise the competences of the Cancellation Division and ruled on the substance of the case, concluding that there was likelihood of confusion for part of the attacked goods.

KUSTOM : T-272/09; Office response filed on 30/10/2009 ; Language of the case: EN

Keywords: Opposition: likelihood of confusion (LOC): comparison of goods. Opposition: likelihood of confusion (LOC): comparison of marks.

FACTS: Pineapple Trademarks Pty Ltd (‘the Applicant') sought to register as an International registration designating the European Community (No 870 804) the word mark “KUSTOM” for goods on classes 18, 25 and 28. Angel Custodio Dalmau Salmons (the opponent) filed an opposition (B 999 146) to the application based on the earlier CTM “CUSTO” registered for goods in classes 18 and 25. The grounds were those laid down in Article 8 (1) (b) and (5) CTMR.

CTM Application	Earlier CTM
KUSTOM	CUSTO

In its decision , the Opposition Division upheld the opposition for all the contested goods and ordered the Applicant to bear the costs on the ground of Article 8(1)(b) CTMR.

In its decision ( R 383/2008-1) the Board of Appeal dismissed the appeal. It confirmed that the goods at issue were identical or similar and that, while the signs were visually dissimilar, they were phonetically highly similar, in particular in French and Spanish. As concerns the overall assessment of the likelihood of confusion, the Board recalled that a mere aural similarity may give rise to such a risk and noted that although the goods at issue are principally bought after a visual inspection, the phonetic similarities of the marks cannot be disregarded entirely, given that these goods may also be recommended or ordered orally. On those grounds, it concluded that the similarities between the signs and the goods were sufficient to create confusion on the part of the relevant public, even assuming that the distinctiveness of the earlier sign was only average.

NATURALLY ACTIVE: T-307/09; Office response filed on 12/11/2009 ; Language of the case: EN

Keywords: Absolute grounds for refusal: distinctiveness; Distinctiveness: acquired through use.

FACTS: Liz Earle Beauty Co. Limited, (the Applicant) filed a CTMA (No 6 531 438) for the word mark “NATURALLY ACTIVE” in respect of goods and services in classes 3, 5, 16, 18, 35 and 44.

In its decision , the examiner rejected the trade mark application in its entirety under Article 7(1)(b) and (2) of CTMR.

In its decision (R 27/2009-2) the Board of Appeal dismissed the appeal. It indicated that the sign ‘NATURALLY ACTIVE' is a banal promotional indication with a laudatory meaning and that (as regards Article 7(3) CTMR) the Applicant had to submit evidence of acquired distinctiveness not only in the United Kingdom and in Ireland but also in all other Member States since the mark applied for consists of two words which are, individually and in combination, likely to be understood throughout the Community and that the evidence filed was not sufficient to show acquired distinctiveness through use in respect of each and every Member State .

CITIGATE : T-301/09; Office response filed on 23/11/2009 ; Language of the case: EN

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks; reputation.

FACTS: IG Communications (‘the Applicant'), filed application No 2 061 448 to register the word mark CITIGATE as a CTMA for goods and services in classes 9, 16, 35 and 42. Citicorp and Citibank N.A. (“the opponents”), filed oppositions (B 451 999 and B 452 005) based on a number of marks incorporating the word CITI for goods and services in classes 9, 16, 36, 38, 42

CTM Application

Earlier marks

CITIGATE

CITI

CITICORP

CITIGROUP

CITIBOND

CITIEQUITY

CITIGARANT

CITIBANK

CITICARD

THE CITI NEVER SLEEPS

The grounds of both oppositions were those laid down in Article 8(1)(b) and 8(5) CTMR.

The Opposition Division rejected entirely the oppositions arguing that the respective marks were dissimilar. The opponent appealed this decision.

In its decision (R 821/2005-1) the Board of Appeal allowed the appeal, reversing the findings of the Opposition Division and annulling its decision. The contested decision held firstly that the respective marks were similar enough for concluding that a likelihood of confusion exists and secondly that the conditions laid down in Article 8(5) were satisfied. Consequently, the opposition succeeded in respect of all the contested goods and services and the CTM application was rejected in its entirety.

FRIBOI: T-324/09; Office response filed on 02/12/2009 ; Language of the case: EN

Keywords: Opposition: likelihood of confusion (LOC): comparison of goods; comparison of marks; proof of use

FACTS: J & F Participações SA filed a CTM application for the figurative mark “FRIBOI” in class 29 (No 4 126 462). This application was opposed on the grounds of Article 8(1)(a) and (b) CTMR. By decision of the Opposition Division (B 909 483) it was upheld for all the contested goods, on the basis of the opponent's UK trade mark.

CTM Application

FRIBO

In its decision (R 824/2008-1) the Board of Appeal partially allowed the appeal and rejected the CTM application for part of the goods. The Board stated that there was no genuine use of the earlier mark has been proved in relation to part of the goods, nevertheless, it still (partly) upheld the opposition because part of the goods were identical and similar and there is a high visual and oral similarity between the signs, whereas the conceptual comparison does not influence the assessment of similarity of the signs.

PERFIX : T-342/09; Office response filed on 03/12/2009 ; Language of the case: EN

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks; Opposition: likelihood of confusion (LOC): comparison of goods; Coexistence.

FACTS: C.R. Bard, Inc. (‘the Applicant') filed application No 3 105 004 to register as a CTM the word PERFIX for some goods in class 10. An opposition (B 663 817) was filed on the basis of the earlier German mark PERIFIX for goods in class 10. The grounds of the opposition were those laid down in Article 8(1)(b) and (5) CTMR. The applicant requested the opponent to file proof of use. In its decision , the Opposition Division upheld the opposition and rejected the CTM application in its entirety.

CTM application	Earlier German mark
PERFIX	PERIFIX

The applicant appealed and i n its decision (R 1577/2007-5) the Board of Appeal dismissed the appeal on the grounds that the goods are similar, the marks are overall similar and the relevant consumer (the specialist German public in the medical sector) might believe that the goods in question come from the same undertaking or, as the case may be, from undertakings that are economically linked, rejecting the applicant's claim on coexistence on the market.

PUERTA DE LA BASTIDA : T-345/09; Office response filed on 04/12/2009 ; Language of the case: ES.

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks; Opposition: likelihood of confusion (LOC): comparison of goods; Proof of use in opposition proceedings.

FACTS: The applicant (plaintiff before the Court), applied for the CTM application No 4 473 278 for the word mark “PUERTA DE LABASTIDA” for goods and services in classes 29, 33 and 35. The opponent filed an opposition on the basis of various earlier registered trade marks (Spanish and CTMs) for the word “CASTILLO LABASTIDA” for goods and services in classes 33, 35, 39 and 43. The ground of the opposition was Article 8(1)(b) CTMR. During the opposition proceedings, the applicant requested the opponent to file evidence of use and the opponent furnished documents to show such use. In its decision (B 990 947) the Opposition Division accepted that the opponent had successfully proven use for wines and partially upheld the opposition for some of the goods and services.

CTM Application	Earlier marks
PUERTA DE LABASTIDA	CASTILLO LABASTIDA

The applicant appealed this decision and in its decision ( R 1021/2008-1) the Board of Appeal dismissed the appeal and confirmed the findings of the Opposition Division.

Enelopp : T-309/09; Office response filed on 04/12/2009 ; Language of the case: EN

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks.

FACTS: SANYO Electric Co., Ltd. (‘the Applicant') applied to register as a CTM the word “eneloop” (CTM application No 4 620 225) for goods in class 9. Telefónica O2 Germany GmbH & Co. OHG. (the opponent) filed a notice of opposition to the application, on various marks including the word “LOOP” registered for, among others, goods in class 9.

CTM Application	Earlier German trade mark
eneloop	LOOP

The grounds of the opposition were those laid down in Article 8(1)(b) CTMR. In its decision in (B 996 076) the Opposition Division upheld the opposition in its entirety on the grounds that there was a likelihood of confusion between the mark applied for and earlier German trade mark “loop”.

The applicant appealed and the Board of Appeal (R 794/2008-2) dismissed the appeal in its entirety and ordered the Applicant to bear the costs of the proceedings, confirming that there is a likelihood of confusion between the above earlier right and the sign applied for.

BEHAVIOURAL INDEX : T-383/09; Office response filed on 07/12/2009 ; Language of the case: EN

Keywords: Absolute grounds for refusal: distinctiveness; Absolute grounds for refusal: descriptiveness

FACTS: The action is against decision of the Board of Appeal (R 138/2009-1) relating to CTM application No 5 785 092 for the word sign “BEHAVIOURAL INDEX” applied for goods and services in classes 9 and 36. The mark was rejected by the examiner on grounds that it was not distinctive and descriptive (Article 7 (1) (b) and (c) CTMR). This decision was confirmed by the Board.

Topcom : T-336/09; Office response filed on 07/12/2009 ; Language of the case: EN

Keywords: Opposition: likelihood of confusion (LOC): comparison of goods; Opposition: likelihood of confusion (LOC): comparison of marks.

Facts: Häfele GmbH & Co. KG filed a CTM application (No 5 032 149) for the word “Topcom” in respect of goods in classes 7, 9 and 11. TOPCOM EUROPE naamloze vennootschap filed a notice of opposition which was directed against part of the goods in class 9 and based on various marks for the word TOPCOM registered for goods in class 9.

CTM application	Earlier CTM
Topcom	TOPCOM

The ground for the opposition was Article 8(1)(b) CTMR. The Opposition Division rejected the opposition in its entirety (B 1 060 807). The opponent filed a notice of appeal. The Board of Appeal upheld the appeal(R 1500/2008-2). The Board maintained that the low degree of similarity was compensated by the identity of the signs and that the principle of interdependence of the relevant factors leads to a finding of likelihood of confusion within the meaning of Article 8(1)(b) CTMR.

OMNICARE et al .: Joined cases T-289/08 and T-290/08; Office response filed on 07/12/2009 ; Language of the case: EN

Keywords: Opposition proceedings: proof of use; Opposition: likelihood of confusion (LOC): comparison of goods. Opposition: likelihood of confusion (LOC): comparison of marks.

FACTS: Omnicare Inc. filed two CTM applications (Nos 1 715 754 and 1 714 724) for services in class 42. Yamanouchi Pharma GmbH filed a notice of opposition against the application. The opposition was based on the earlier German trade mark registration OMNICARE.

CTM applications

Earlier German mark

OMNICARE

OMNICARE CLINICAL RESEARCH

Representation of the trade mark

The earlier mark is also registered for services in classes 35, 41 and 42. The grounds of the opposition were those laid down in Article 8(1)(b)CTMR. The Applicant required the Opponent to provide proof, pursuant to Article 43(2) and (3) CTMR, that it had put its mark to genuine use in Germany . By decisions of the Opposition Division in cases B 414 138 and B 518 011 both oppositions were rejected in their entirety.

The Board of Appeal annulled the contested decisions and rejected the Community trade marks applied for( R 401/2008-4 and R 402/2008-4).

The Board considered that the evidence submitted proved that the Opponent had put its mark to genuine use in Germany during the period in question. The Board concluded that, since the services in question are similar and that there is visual and aural similarity between the marks, as well as conceptual identity in relation to the element ‘OMNICARE', the relevant consumer will inevitably connect the marks and assume that the services marketed under them come from the same or economically linked undertakings.

Free : T-365/09; Office response filed on 10/12/2009 ; Language of the case: EN

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks; Opposition: likelihood of confusion (LOC): comparison of goods.

FACTS: ΕΙΔΙΚΕΣ ΕΚΔΟΣΕΙΣ ΑΕ, filed a CTM application (No 3 426 442) for the word mark “FREE” for Publications, magazines, posters, newspapers, books, photographs except for [the] banking sector (Class 16). Free, SAS filed a notice of opposition on the grounds of Article 8(1)(b), Article 8(4) and Article 8(5) CTMR. The opposition was based on several earlier rights containing the word FREE.

CTM Application

Earlier rights

FREE

The earlier rights are protected with regard to “ Telematic services, general public, user-friendly messaging, classified advertisements, service for storing, receiving and sending messages' in Class 38; “ Advertising; newspaper subscription services for third parties; electronic mail services and electronic distribution of information particularly for internet-type worldwide communication networks; communication by computer terminals, information system and telephone communications, telecommunications, computer aided transmission of messages and images, electronic message service, telecommunication information” in Classes 35 and 38.

In its decision (B 705 659) the Opposition Division rejected the opposition in its entirety.

The Board of Appeal upheld the appeal and rejected the contested CTM application in its entirety (R 1346/2008-1).

The Board found that there is a low degree of similarity between the goods of the applicant and the services of the opponent. The Board based its comparison primarily on the opponent's ‘newspapers subscription services and electronic distribution of information through the Internet and telecommunications' . The Board found that the services of electronic distribution of information through the Internet and telecommunications serve the same purpose as the contested CTM application's publications and printed materials. The newspapers subscription services are complementary with the printed matters covered by the contested CTM application. There is a low degree of similarity between the relevant goods and services in spite of their differences in terms of nature, distribution channels and method of use.

It held that the contested CTM application ‘FREE' is highly similar to the earlier marks, as the three earlier trade marks are based on the same word. This entails visual and aural similarity. Moreover, the word ‘FREE', which is common to the conflicting signs, makes them conceptually identical. Finally, it concluded that French consumers who are confronted with the Intervener's Internet services named ‘FREE' would be led to believe that the Applicant's newspapers, magazines or other printed material originate from the same operator.

[decorative stitching]: T-388/09; Office response filed on 14/12/2009 ; Language of the case: EN

Keywords: Absolute grounds for refusal: distinctiveness

FACTS: ROSENRUIST - GESTÃO E SERVIÇOS, LDA filed a CTM application (No 6 900 898) for registration of the following mark:

Magnify

The mark was applied for goods in classes 18 and 25. The mark is described as “[t]wo Curves Crossed in One Point Design inserted in a Pocket; the mark consists of a decorative stitching made of Two Curves Crossed in One Point Design inserted in a Pocket; one of the curves is characterized by an arched form, drown with a fine stroke, while the second one is characterized by a sinusoidal form, drown with a thick stroke; the unevenly broken lines represent the perimeter of the pocket to which applicant makes no claim and which serves only to indicate the position of the mark on the pocket”.

In its decision, the examiner rejected the application of CTM in its entirety under Article 7(1)(b) CTMR.

The Board of Appeal dismissed the appeal (R 237/2009-2) arguing that the stitched pocket is a usual and commonplace feature of many fashion products and in particularly those listed in Classes 18 and 25 and that, whether or not all the goods in Classes 18 and 25 have a pocket, the mark applied for will be perceived as primarily decorative and therefore more attention will be attached to the “brand name”.

GENERAL BEARING CORPORATION : T-394/09; Office response filed on 15/12/2009 ; Language of the case: EN

Keywords: Absolute grounds for refusal: distinctiveness

FACTS: General Bearing Corporation, (‘the Applicant') filed a CTMA (No 6 345 871) for the expression “GENERAL BEARING CORPORATION” in respect of goods in classes 7 and 12.

In its decision, the examiner refused the registration of the sign pursuant to Article 7(1)(b) CTMR, on the grounds that the expression at issue, despite being made up of several components, was still a mere combination of three common English words, following word order and grammatical rules.

The Board of Appeal of the Office upheld the examiner's refusal in its entirety and rejected the appeal (R 73/2009-1).

TORO DE PIEDRA : T-358/09; Office response filed on 16/12/2009 ; Language of the case: EN

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks; Opposition: likelihood of confusion (LOC): comparison of goods.

FACTS: Sociedad Agricola Requingua Ltda. filed a CTMA (No 4 000 501) for the word mark “TORO DE PIEDRA” in respect of goods in class 33. Consejo Regulador de la Denominación de Origen Toro filed a notice of opposition (B 875 809 ) against the CTMA mentioned before on the ground of Article 8(1)(b) CTMR. It was based on two figurative marks including the word “TORO” registered for goods in class 33.

CTM Application	Earlier CTM and Spanish mark
TORO DE PIEDRA

In its decision, the Opposition Division upheld the opposition for all the contested goods.

The Board of Appeal dismissed the appeal ( R 1117/2008-2) considering that the goods are identical, the signs similar and that the consumers, prone to imperfect recollection and unable to see the products side-by-side, might think that the marks belong to the same trader, because the contested mark would be perceived as a simple variation of the earlier mark to designate identical goods.

COSMOBELLEZA : T-344/09; Office response filed on 16/12/2009 ; Language of the case: EN

Keywords: Opposition: likelihood of confusion (LOC): comparison of marks.

FACTS: Vida Estetica, S.L. filed a CTMA (No 3 494 424) for the word mark COSMOBELLEZA for services in classes 35 and 41. Hearst Communication Inc. filed a notice of opposition, based on Article 8(1)(a), (b), (4) and (5) CTMR (B 751 117). The opposition was based on a number of national and international trade mark registrations as well as some unregistered signs for goods and services in classes 16, 25, 38 and 41. The opponent claimed that the trade marks COSMO and COSMOPOLITAN are well known in all the Member States.

CTMA

Earlier rights

COSMOBELLEZA

COSMO

COSMOPOLITAN

COSMO TEST

COSMOPOLITAN TELEVISION

In its decision, the Opposition Division rejected the opposition.

The Board of Appeal dismissed the appeal (R 770/2007-2). It held that the identity or similarity of signs is an indispensable condition for the application of Article 8(1)(b) CTMR; since the signs were considered dissimilar, one pre-condition of Article 8(1)(b) CTMR was missing and consequently, the contested decision had to be upheld. From the outset, the Board noted that in its grounds of appeal, taken together with its subsequent submissions, the Applicant argued only on the grounds that there was a likelihood of confusion between the conflicting marks. Therefore, the Board appraised the appeal only with respect to Article 8(1)(b) CTMR.

IC4 : T-274/09; Office response filed on 18/12/2009 ; Language of the case: EN

Keywords: Opposition: likelihood of confusion (LOC)

FACTS: DSB filed a CTMA to register the word mark “IC4” (No 4 255 411) for services in class 39. DEUTSCHE BAHN AG filed a notice of opposition. The opposition was based on two earlier rights, namely a CTM for the word “ICE” and a German trade mark registration.

CTMA

Earlier marks

IC4

ICE

The earlier trade marks cover goods and services in classes 6, 7, 9, 11, 12, 19, 37, 39, 41 and 42. The grounds of the opposition were those laid down in Article 8(1)(b) CTMR. In its decision (B 928 921) the Opposition Division rejected the opposition in its entirety, mainly because the signs generate a dissimilar impression in all respects as both marks are short marks.

The Board of Appeal dismissed the appeal by fully endorsing the findings of the Opposition Division (R 1380/2007-1).

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