June 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

ARCOL: C-193/09 (appeal from T-402/07; previous case before the CJ: C-29/05; previous case before the GC: T-164/02); Board's case: R0782/2000-2; OD case: 1493-2000; CTMA No: 195 370; Order delivered on 07/04/2010; Language of the case: EN; (Action dismissed as manifestly inadmissible; GC stands)

Keywords: Community Trade mark: Appeal and opposition proceedings: new evidence and arguments.

FACTS : Bayer Aktiengesellschaft applied to register as a CTM the word “ARCOL” with regard to goods in class 1. Kaul GmbH filed an opposition based on the earlier CTM “CAPOL” registered for goods in class 1. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application	Earlier CTM
ARCOL	CAPOL

The Opposition Division dismissed the opposition.

On appeal, the Board dismissed the appeal.

The opponent appealed before the GC and the GC upheld the appeal. The case was remitted back to the Board on procedural grounds and the Board issued a new decision still dismissing the appeal.

The opponent appealed before the GC for a second time and the GC dismissed the second appeal.

Before the Court of Justice the opponent submitted that the GC's decision constitutes an infringement of the pertinent provisions.

SUBSTANCE : The appeal is dismissed as partly unfounded and partly inadmissible.

As regards the infringement of Article 74(2) CTMR, the CJ noted that the GC correctly observed that the Board of Appeal had exercised the discretion conferred on it insofar it declared the new evidence adduced before it inadmissible on the ground that it was irrelevant to the decision it was called upon to make.

The CJ noted that the GC was correct to observe that the manifest irrelevance of the facts and evidence submitted to OHIM by the parties to opposition proceedings, outside the time-limits prescribed for that purpose, is precisely one of the criteria which OHIM may take into account in deciding, in the exercise of the discretion which it enjoys under Article 74(2) CTMR, that there is no need to take account of these facts and evidence.

This limb of the appeal is dismissed as manifestly inoperative.

As far as the ground of appeal alleging that the GC erred in law in holding that an opposition based on Article 8(1)(b) CTMR could, in some cases, be rejected on the basis of a simple examination of the similarity of the marks and, therefore, in particular, without examining the alleged highly distinctive character of the earlier mark, the CJ considered it manifestly unfounded.

With regard to the second ground of appeal (infringement of the right to be heard), the opponent claimed that the Board adopting the second decision should have allowed it to file its comments on the previous judgements in the case. The CJ noted that the GC clearly indicated in its judgement that in the course of the proceedings which led to the adoption of the 2002 decision the appellant had had the opportunity to present its observations on all aspects of its opposition. It is clear from the judgment that there was no indication in the contested decision that, when the Board of Appeal adopted the second decision, it relied on matters of law or of fact different from those available when the first decision was adopted. In the light of its findings, the CJ indicated that GC was properly entitled to conclude, without erring in law, that Article 73, second sentence, CTMR in no way required that, following the resumption of the proceedings before OHIM after the annulment of the 2002 decision, the appellant again be invited to file observations on points of law and fact on which it had already had ample opportunity to express its views. This second ground of appeal is manifestly unfounded.

Finally, and as far as the third ground of appeal (infringement of Article 8(1)(b) CTMR) is concerned, it is partly rejected as being in part manifestly unfounded and in part manifestly inadmissible.

A-2: Court of Justice: Developments in pending cases

350, 250 and 150: C-54/10 P (appeal from joined cases T-64/07, T-65/07 and T-66/07); Office response filed on 19/04/2010; Language of the case: PL

222, 333 and 555: C-55/10 P (appeal from joined cases T-200/07, T-201/07 and T-202/07; Office response filed on 19/04/2010; Language of the case: PL

100 and 300: C-56/10 P (appeal from joined cases T-425/07, T-426/07); Office response filed on 19/04/2010; Language of the case: PL.

Keywords: Community Trade Mark: Examination: Absolute grounds for refusal: distinctiveness; Absolute grounds for refusal: descriptiveness

FACTS : Agencja Wydawnicza Technopol sp. z o.o. applied for the following marks “350” (CTM No 4 665 601, appeal No R 1033/2006-4, General Court's case No T-64/07), “250” (CTM No 4665592, appeal No R 1034/2006-4, General Court's case No T-65/07), “150” (CTM No 4665493, appeal No R 1035/2006-4, General Court's case No T-66/07), “222”, (CTM No 4 665 618, appeal No R 1276/2006-4, General Court's case No T-200/07), “333” (CTM No 4 665 683, appeal No R 1277/2006-4, General Court's case No T-201/07), “555” (CTM No 4 665 709, appeal No R 1278/2006-4, General Court's case No T-202/07), “100” (figurative, see below) (CTM No 3 875 408, appeal No R 1274/2006-4, General Court's case No T-425/07) and “300” (figurative, see below) (CTM No 3 875 416, appeal No R 1275/2006-4, General Court's case No T-426/07).

Whereas the cases concerning marks “150”, “222”, “250”, “333”, “350” and “555” related to goods in class 16, the cases concerning marks “100” and “300” concerned goods in classes 16 and 28.

The marks were all rejected pursuant to Articles 7(1)(b) and (c) CTMR.

On appeal, the Board dismissed the appeals.

The GC dismissed the appeals on the ground that the numerals applied for designate characteristics of the goods concerned, in particular, the number of pages and works, amount of data, and the number of puzzles in a collection, or their ranking, which the target public is liable to take into account when choosing and which are therefore essential characteristics of the goods.

Best Buy: C-92/10 (appeal from T-476/08); Board's case: R0591/2008-4; CTMA No: 5 189 550; Office response filed on 03/05/2010 ; Language of the case: DE

Keywords: Community Trade mark: Examination: Absolute grounds for refusal: distinctiveness

FACTS : Media-Saturn-Holding GmbH applied to register as a CTM the figurative mark shown below, with regard to goods and services in classes 1, 2, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 20, 21, 22, 27, 28, 35, 37, 38, 40, 41 and 42. The examiner refused the registration on the basis of Article 7(1)(b) and (2) CTMR.

CTM application

On appeal, the Board dismissed the appeal.

The General Court dismissed the appeal.

Before the Court of Justice, the applicant claims that the GC erred in law and was incorrect in its interpretation of Article 7(1)(b) CTMR.

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

C-1: General Court: Judgments and Orders

INOVIS: T-502/09; Board's case: R1691/2008-1; OD case: B756 272; CTMA No: 3 017 381; Office response filed on 20/04/2010 ; Language of the case: EN

Keywords: Community Trade mark; Opposition: likelihood of confusion (LOC): comparison of goods and comparison of marks.

FACTS : Inovis, Inc applied to register as a CTM the word “INOVIS” with regard to goods and services in classes, 9, 35, 38 and 42. Novis Telecom S.A filed an opposition based on the earlier Portuguese mark “NOVIS” registered for goods and services in classes 9, and 42. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application	Earlier Portuguese mark
INOVIS	NOVIS

The Opposition Division upheld the opposition.

On appeal, the Board partly dismissed the appeal.

Before the General Court, the applicant claims infringement of Article 8(1)(b) of Council Regulation No 207/2009 as the Board of Appeal wrongly: (i) ignored the clear differences between the respective goods and services covered by the trade marks concerned, including that it erroneously considered that the earlier mark covered classes 9 and 42, whereas registration for such classes was refused by the Portuguese Trade mark Office, and that, in any event, such registration was not substantiated during the proceedings; (ii) ignored the clear conceptual differences between the trade marks concerned; and (iii) held that there was a likelihood of confusion between the trade marks concerned.

[botella esmerilada blanca]: T-109/08 (previous case before the GC: T-190/04); Board's case: R0097/2001-1; CTMA No: 32 532; Judgment of 27/04/2010 ; Language of the case: FR; (Action dismissed; Board and Office's practice confirmed)

Keywords: Community Trade mark: Examination: Absolute grounds for refusal: distinctiveness.

FACTS : Freixenet SA applied to register as a CTM the mark shown below with regard to goods in class 33. The examiner refused the registration on the basis of Article 7(1)(b) and (c), and (2) CTMR.

CTM application

Image not found

On appeal, the Board dismissed the appeal.

In its first judgment the GC annulled the decision of the Board because it had infringed Article 75 CTMR and the principle of respect of the rights of defence.

The case was remitted to the Board. The Board, as the GC considered that the previous Board had based its decision on evidence that had not been submitted to the applicant, sent it to the applicant. Upon examination of the applicant's arguments, the Board again dismissed the appeal.

Before the General Court, the applicant claimed infringement of Article 7(1) and (3) and Article 73 CTMR and of the obligation to state reasons, to the extent that: the Board failed to hear the applicant's observations with regard to the Board's different factual assessment; the Board failed to specify the documents on which it bases its decision; the type of appearance of the bottle in question is original and differs from the usual types existing on 1 April 1996; and in any case, the trade mark in question has acquired a distinctive character in the Community by usage

SUBSTANCE : the appeal is dismissed.

As regards the plea alleging infringement of Article 75 CTMR and the infringement of the obligation to state reasons, the GC maintained that where the Board finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods. In such a case, the Board of Appeal is not obliged to give examples of such practical experience. As a consequence, since the colour of a bottle will always be influenced by the colour of the liquid which it contains, the GC agreed with the Board in that the external appearance is generally not suited to informing the consumer about the origin of the bottle and its contents.

As far as the infringement of the right to be heard is concerned the GC concluded that since the Board had submitted to the applicant a copy of the images of the bottles that were cited in the original decision and the links to the Internet sites and the applicant has had the opportunity to comment on this evidence, the Board did not infringe the applicant's right to be heard.

As regards the alleged infringement of Article 7(1)(b) CTMR, the GC found that, since the marks claimed did not differ substantially from certain basic shapes, commonly used in the trade, of the products concerned but were, rather, a variant of those shapes, the Board was right in deciding that the CTM applied for was devoid of distinctive character

Finally, and as far as the alleged infringement of Article 7(3) CTMR is concerned, the GC rejected this claim since the evidence submitted related only to one Member State whereas it should have been submitted for all the Member States.

[botella esmerilada negra]: T-110/08 (previous case before the GC: T-188/04); Board's case: R0104/2001-1; CTMA No: 3 254; Judgment of 27/04/2010 ; Language of the case: FR; (Action dismissed; Board and Office's practice confirmed)

Keywords: Community Trade mark: Examination: Absolute grounds for refusal: distinctiveness.

CTM application

Image not found

On appeal, the Board dismissed the appeal.

In its first judgment the GC annulled the decision of the Board because it had infringed Article 75 CTMR and the principle of respect of the rights of defence.

SUBSTANCE : the appeal is dismissed.

As regards the plea alleging infringement of Article 75 CTMR and the infringement of the obligation to state reasons, the GC maintained that where the Board finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods. In such a case, the Board of Appeal is not obliged to give examples of such practical experience. As a consequence, since the relevant consumer is used to find a wide variety of types of bottles for sparkling wines, characterized by a multitude of colours, the key to identify the origin of the product is the label on the bottle rather than the shape of the bottle or its appearance.

CUVÉE PALOMAR: T 237/08; Judgment of 11/05/2010; Language of the case: ES (Action dismissed; Board and Office's practice confirmed)

Keywords: Community Trade Mark: examination: absolute grounds for refusal: Trade marks for wines containing geographical indications [Article 7(1)(j) CTMR]

FACTS : Abadía Retuerta, SA applied to register as a CTM the expression “CUVÉE PALOMAR” (CTM No 5 501 937), with regard to “wines” in class 33. The examiner refused the registration on the basis of Article 7(1)(j) CTMR

On appeal, the Board (R1185/2007-1) dismissed the appeal.

Before the General Court, the applicant claimed that the CTMA applied for did not infringe Article 7(1)(j) CTMR since it does not contain or consist of a false geographic indication.

SUBSTANCE : The appeal is dismissed.

The GC began by determining the scope of the concept of “geographical indication identifying wines” in the context of the CTMR and in the light of the wording and purpose of the TRIPs agreement and concluded that that provision refers to geographical indications identifying wines, and not to geographical indications ‘destinées à identifier les vins [intended to identify wines]' (p. 60 to 72).

The GC also looked at Regulation No 1493/1999 in order to find out the scope and protection of geographical indications in relation to wine (p. 73) and concluded that it is for the Member States to determine, for their respective territories, the geographical indications which are intended to be protected (p. 84).

As regards the case at hand, according to the Spanish legislature, the protection granted by the relevant registered designation of origin covers the expression ‘valencia' and all designations of the sub regions, districts, local administrative areas, localities and estates which comprise the production and ageing areas; among these there is the sub region Clariano which includes, inter alia, a local administrative area with the name el Palomar (p. 86). Consequently, the name el Palomar thus constitutes a geographical indication for a quality wine under Spanish law (p. 87) and therefore constitutes a geographical indication identifying wines within the meaning of Article 7(1)(j) CTMR (p. 88).

Since this provision prohibits the registration of trade marks for wines which contain or consist of a geographical indication identifying wines in respect of such wines not having that origin are not to be registered (p. 109), and it is not in dispute that the wine in respect of which the applicant lodged a CTMA does not come from the local administrative area el Palomar (p. 110), the Board of Appeal was right to find that the mark applied for was inadmissible on the basis of the absolute ground for refusal laid down in Article 7(1)(j) CTMR.

The GC rejected all the remaining arguments of the applicant:

First, the applicant claimed that part of its estate has the name Palomar; this argument was rejected because it is irrelevant that that name is not erroneous, since the only condition for the application of the absolute ground for refusal is that the mark contains or consists of a geographical indication identifying a wine in respect of such wine not having that origin (p. 115) and it is clear that the applicant's state is not in the local administrative area el Palomar (p. 116).

Second, the applicant also put forward that for applying Article 7(1)(j) the mark applied for must contain or consist of a false geographical indication, argument which was rejected because “not being of such a nature as to deceive the public” is not a condition pursuant the relevant Article (p. 120).

Third, the applicant argued that the protected name is “El Palomar” and that expression is not contained in the mark applied for (the article “el” is missing); the argument was rejected because for Article 7(1)(j) to apply, it suffices that those marks contain or consist of elements which enable the geographical indication in question to be identified with certainty, without it being necessary to consider the definite or indefinite articles which may possibly form a part of them (p. 125).

Fourth, the applicant argued that the name el Palomar is unknown to the general public or the relevant class of persons, and that it has many meanings which moderate its geographically indicative nature (p. 130); this argument was rejected because being known or unknown is irrelevant for the application Article 7(1)(j) CTMR (p. 134)

Fifth, as regards the applicant's argument that there was no opposition from the bodies responsible for protecting the designation ‘valencia', the GC held that, as the trade mark application was not published third parties had no occasion to submit their observations on the mark applied for (p. 135) and that, in any event, this is a factor which is irrelevant for the application of Article 7(1)(j) CTMR (p. 136).

Sixth, as regards the applicant's argument that it holds earlier marks with the same expression, the GC recalled that the CTM regime is autonomous (p. 137).

Seventh, regarding the applicant's complaint that OHIM has registered other marks including the word “PALOMAR”, the GC recalled that the lawfulness of the decisions of the Boards of Appeal must be assessed solely on the basis of that regulation as interpreted by the Community judicature and not on the basis of a previous decision-making practice (p. 141).

Eighth, the applicant claimed that it had been the proprietor of the Spanish trade mark CUVÉE EL PALOMAR since 1997, i.e., before the protection of the local administrative area name el Palomar (for which a regulation was adopted in 2000); the GC rejected the argument on the basis that the CTMA was applied for in 2006 (p. 148), in addition, because the applicant had not established that it made use, in good faith, of the name CUVÉE PALOMAR before the geographical indication ‘el Palomar' was protected in the country of origin and, lastly, because the argument would only be valid as regards the mark registered in Spain in 1997 and not for the registration of new marks (p. 150).

Ninth, as regards the applicant's argument that, in essence, OHIM has registered marks such as CUVÉE MEDITERRANEO, CUVÉE DU GOLFE DE SAINT TROPEZ and CUVÉE OCCITANE and nothing precludes, therefore, the mark CUVÉE PALOMAR from being registered, the GC noted that the applicant did not demonstrate that the names Mediterraneo, Golfe de Saint Tropez and Occitane were protected geographical indications identifying wine.

star foods: T-492/08; Board's case: R1408/2007-4; OD case: B 908 154; CTMA No: 4 105 615; Judgment of 11/05/2010; Language of the case: DE; (Action upheld)

Keywords: Community Trade mark; Opposition: likelihood of confusion (LOC): comparison of goods and marks.

FACTS : Greinwald GmbH applied to register as a CTM the figurative mark shown below, with regard to goods in classes 29, 30 and 31. Nicolas Wessang filed an opposition based on the earlier CTM “STAR SNACKS” registered for goods and services in classes classes 29, 30 and 31. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application	Earlier CTM
	STAR SNACKS

The Opposition Division upheld the opposition.

On appeal, the Board upheld the appeal and dismissed the opposition.

Before the General Court, the opponent claims that there is a likelihood of confusion between the two marks at issue, to the extent that they are extremely similar both visually and phonetically or conceptually and refer to similar or even identical goods.

SUBSTANCE : The appeal is upheld.

The relevant territory is the European Union and the relevant public is the average consumer.

The goods in classes 29 and 30 are identical and/or similar.

As regards mineral and aerated waters and other non alcoholic drinks; drinks, juices and fruit juices; syrups and other preparations for making beverages, powered beverages in Class 32 of the CTM applied for and milk beverages (milk predominating) in Class 29 and tea, cacao based beverages, coffee-based beverages, chocolate based beverages, infusions, non medicinal in Class 30 of the earlier mark, the GC concluded that they were goods of the same nature, that had the same distribution channels (shops, bars and restaurants), and even if the producers, their ingredients and their production methods are different, they are all non alcoholic drinks that are consumed at the same occasions, in order to relief one's thirst or for pleasure that cover the same necessities of the consumer and must be therefore be considered as competing with each other. These goods are considered similar.

As far as beers of the contested CTMA are concerned, the GC concluded that they are alcoholic beverages of a different nature than the other beverages and that they were covering other necessities of the consumer. They are considered not similar. Further, the GC compared beers with mixtures for aperitifs based on grains in Class 29 and apéritif biscuits in Class 30 of the earlier trade mark and concluded that while they were complementary since they were neither necessary nor important for the consumption of the others, the goods were considered as not similar.

As far as the comparison of signs is concerned, the GC concluded that the signs are visually and aurally and conceptually highly similar.

The GC concluded that overall the signs are similar, contrary to what the Board had decided. The GC did not share the Board's argument that due to the low distinctive character of the conflicting trade marks, the differences between them would be more important to the extent that they would be able to neutralize their similarities.

The GC concluded that since the goods at issue are similar and the signs at issue are similar overall, there is a likelihood of confusion.

Superleggera: T-464/08; Judgment of 19/05/2010 ; Language of the case: IT (Action dismissed; Board and Office's practice confirmed)

Keywords: Community Trade Mark: examination: Absolute grounds for refusal: distinctiveness; Absolute grounds for refusal: descriptiveness

FACTS : Zeta Europe BV applied to register as a CTM the figurative mark shown below (CTM No 5 456 207), with regard to goods and services in classes 12, 28 and 25. The examiner refused the registration on the basis of Article 7(1)(b) and (c), and (2) CTMR.

CTM application

Image not found

On appeal, the Board (R0666/2008-1) dismissed the appeal.

Before the General Court, the applicant claimed infringement of Articles 7(1)(b), 73 and 74 CTMR.

SUBSTANCE : The appeal is dismissed.

The GC stated that the case law developed as regards word marks in the context of Article 7(1)(b) CTMR may also be applied to figurative marks for which the doubt as to their distinctiveness arises from a phonetic and conceptual point of view.

The relevant public is made up of average Italian consumers and professionals.

The GC declared that the juxtaposition of the word elements "super" (an adjective meaning “superior value in quality and quantity”) and "leggera" (the feminine form of the Italian word "leggero", which describes a characteristic of an object: that it has “little weight”) is not unusual in its structure. Compared to the products concerned, the sign provides the public with relevant information about an important characteristic of the goods (its weight) in the sense that the products are "extremely light". Consequently, that expression cannot work as an indication of their commercial origin.

As regards the figurative element, the GC observed that the graphic style used had, admittedly, a certain peculiarity. The fact remained that this style is not likely to create an immediate and lasting memory on the part of the relevant public, or to distinguish the applicant's goods from other suppliers in the market. This is because as regards the form of handwritten letters, they are usual in the commercial field. Thus, this style remains largely normal in the eyes of consumers and, in this case, the relevant public.

As far as the applicant's argument that the use of a capital “S” at the beginning changes the way the expression “Superleggera” is perceived is concerned, the GC stated that the use of a capital letter does not have as a consequence that the expression will not be perceived as giving information to the public as to the goods at issue.

The applicant also criticized the decision because it did not explicitly give reasons for each and every product for which the mark was applied for. In this regard, the GC dismissed this argument in considering that the Board made an assessment in concreto as regards series of products covered in the various classes. As for products not specifically mentioned, the GC pointed out that they have a sufficiently direct and concrete link with categories of products for which the Board gave a sufficient explanation.

MEMORY: T-108/10; Board's case: R0305/2008-2; CD case: 1107C; CTMA No: 1 203 629; Judgment of 19/05/2010; Language of the case: EN; (Action dismissed; Board and Office's practice confirmed)

Keywords: Community Trade mark; Invalidity: Absolute grounds for refusal: descriptiveness

FACTS : Ravensburger AG is the proprietor of the CTM word mark “MEMORY” registered for games recorded on data carriers of all kinds (class 9) and board games (class 28). Educa Borras, SA, requested the invalidity of that mark. The grounds were those laid down in Article 51(1)(a) and Article 7(1)(b) and (c) CTMR.

The Cancellation Division upheld the request for invalidity and declared the mark at issue invalid.

On appeal, the Board dismissed the appeal.

Before the General Court, the proprietor claims infringement of Article 7(1)(b) and (c) in conjunction with Article 51(1)(a) CTMR as the Board of Appeal wrongly considered the term "memory" to be descriptive and lacking distinctive character.

SUBSTANCE : The appeal is dismissed.

The GC agreed with the Board that the relevant public is the average English-speaking consumer.

It is not disputed that the goods for which the mark at issue was registered include, in particular, memory games, in which the key element for success is that the participants use and develop their memory well. It is therefore clear that the word ‘memory' describes directly and specifically one of the characteristics and purposes of the games for which the mark at issue was registered.

The GC maintained that the Board cannot be criticized for having relied on English language websites outside the European Union to conclude that the word ‘memory' was descriptive on the ground that, while there are some differences of vocabulary between United Kingdom and American English, it is well known that, as a general rule, words and expressions have identical connotations in these two variations of English. In addition, the applicant did not put forward any valid argument showing that this is not the case for the word ‘memory'.

As regards the proprietor's argument that the Board of Appeal did not take into account the situation prevailing in the European Union at the time of the registration of the mark at issue the GC rejected it indicating that it is not necessary that the signs and indications composing the mark that are descriptive were in use at the time of the application for registration since it is sufficient that such signs and indications could be used for such purposes.

The Board therefore correctly found that the mark at issue was descriptive for the purposes of Article 7(1)(c) CTMR and, consequently, the GC did not enter into the examination of the complaint regarding Article 7(1)(b) CTMR.

EDUCA Memory Game: T-243/08; Board's case: R0597/2007-2; CD case: 711C; CTMA No: 495 036; Judgment of 19/05/2010 ; Language of the case: EN (Action dismissed; Board and Office's practice confirmed)

Keywords: Community Trade mark: Invalidity: likelihood of confusion: comparison of marks; Reputation.

FACTS : Educa Borras SA is the proprietor of the figurative CTM shown below, registered for games and playthings in class 28. Ravensburger AG requested the invalidity of that mark. In support of its application for a declaration of invalidity, the applicant relied on Article 53(1)(a) and Article 8(1) and (5) CTMR. The earlier rights were, among others, the word mark MEMORY registered in Germany and Austria for goods in class 28.

CTM registration	Earlier marks
	MEMORY

The Cancellation Division upheld the request and declared the registered CTM invalid.

On appeal, the Board upheld the appeal and annulled the decision of the Cancellation Division thus rejecting the invalidity request.

Before the General Court, the applicant for invalidity claims infringement of Article 8(1) and 8(5) CTMR.

SUBSTANCE : The appeal is dismissed.

The GC agreed with the Board that the relevant public is the average German-speaking consumer.

When comparing the signs, the GC pointed out that ‘memory' and ‘game' are two common English words and, taking into account their graphical representation the conclusion was that the expression “memory game” is easily perceived by the German-speaking public as being distinct from the element ‘educa' and as forming a logical whole, namely ‘Gedächtnisspiel', which is the German word for memory game.

The GC agreed with the Board in that it concluded that the dominant element of the mark at issue was the word ‘educa' and that the element ‘memory' did not have an independent distinctive role in that mark. Therefore, by comparing the mark at issue, considered as a whole, with the earlier marks, the Board correctly concluded that the marks in question were not visually, phonetically or conceptually identical or similar. Consequently, there is no likelihood of confusion.

Since one of the conditions for the application of Article 8(5) CTMR, namely, the similarity of signs, is not met, the GC concluded that this relative ground is not applicable either.

The GC further added that the manner in which the goods in question are marketed cannot influence the fact that the expression ‘memory game' is, in the present case, descriptive, and is not important in order to determine whether the mark at issue, considered as a whole, is similar to the earlier marks.

Golden Toast: T-163/08; Board's case: R0761/2007-1; CTMA No: 4 811 171; Judgment of 19/05/2010; Language of the case: DE (Action dismissed; Board and Office's practice confirmed)

Keywords: Community Trade mark: Examination: Absolute grounds for refusal: distinctiveness, descriptiveness

FACTS : Arbeitsgemeinschaft Golden Toast eV applied to register as a CTM the words “Golden Toast” with regard to goods in classes 11 and 30. The examiner refused the registration on the basis of Article 7(1)(b) and (c), and (2) CTMR.

On appeal, the Board (R1289/2008-1) dismissed the appeal.

Before the General Court, the applicant claims that the Board infringed Article 7(1)(b) and (c) CTMR.

SUBSTANCE : The appeal is dismissed.

The GC considers that the applicant does not put any arguments forward to prove that there is no direct and concrete link between the term ‘golden' and the goods applied for. The adjective ‘golden' is used as a laudatory expression to say that the equipment in class 11 is able to bake the pastry or the pastry product just the right amount, i.e., until the right colour – ‘golden' – is reached. The same applies to the goods in class 30, in respect of which ‘golden' indicates that they can reach the desired ‘golden' colour by baking or toasting. In the GC view, this information is perceived without further efforts by the English and German speaking consumers.

As far as the applicant's argument that the expression ‘Golden Toast' is not currently used descriptively to refer to the goods at issue, the GC recalls that it is sufficient that the trade mark applied for could be used for a descriptive purpose.

The applicant puts forward that Golden Toast is registered for 45 years in Germany and the German consumer perceives the expression as an indication of origin. The GC considers that this argument does affect the English speaking consumers which will regard the as descriptive the expression “Golden Toast”. Additionally, the GC recalls that in the context of the review of the legality of decisions of the Boards, and since the claim of acquired distinctiveness of ‘Golden toast' was not raised before the Board, it must therefore be declared inadmissible.

Finally, the GC underlines that one ground for refusal is enough to prevent the registration of a Community trade mark. As the Board did not commit an error in law considering the sign to be descriptive of the goods applied for, there is no need to rule on the violation of Article 75 based on the lack of motivation of the Boards decision on the application of Article 7(1)(b) CTMR.

C-2: General Court: Developments in pending cases

Powerball: T-484/09; Office response filed on 07/04/2010 ; Language of the case: DE

Keywords: Community Trade mark: Opposition: Non-registered trade mark; other sign used in the course of trade; Agent's mark.

FACTS : Rory McLoughney applied to register as a CTM the word “Powerball” (CTM No 3 164 779), with regard to goods in classes 10, 25 and 28. Ernst Kern filed an opposition (B 330 797) based on the earlier non-registered mark "POWERBALL", used in the course of trade in Ireland and the United Kingdom . The grounds were those laid down in Article 8(3) and 8(4) CTMR.

CTM application	Earlier rights
Powerball	Powerball

The Opposition Division dismissed the opposition.

On appeal, the Board (R1547/2006-4) dismissed the appeal.

Before the General Court, the opponent claims infringement of Articles 8(3) and 75 CTMR and Rules 50(2) and 52(1) CTMIR, as the Board of Appeal failed to consider the opposition under Article 8(3) CTMR and should have recognised that the applicant had the requisite authority to oppose the Community trade mark concerned; infringement of Articles 8(4) and 75, CTMR and Rules 50(2) and 52(1) CTMIR as the Board of Appeal failed to consider the opposition under Article 8(4) CTMR and should have recognised that the applicant was the proprietor of the earlier rights and that it had used the mark cited in the opposition in the course of trade.

EURO AUTOMATIC PAYMENT: T-28/10; Office response filed on 16/04/2010; Language of the case: FR

Keywords: Community trade mark: examination: Absolute grounds for refusal: distinctiveness; Absolute grounds for refusal: descriptiveness

FACTS : EURO-INFORMATION - EUROPEENNE DE TRAITEMENT DE L'INFORMATION (Société par actions simplifiée) applied to register as a CTM the expression “EURO AUTOMATIC PAYMENT” (CTM No 7 077 654), with regard to goods and services in classes 9, 35, 36, 37, 38, 42 and 45. The examiner refused the registration on the basis of Article 7(1)(b) and (c), and (2) CTMR.

On appeal, the Board (R0635/2009-2) dismissed the appeal.

Before the General Court, the applicant claims infringement of Article 7(1)(b) and (c) CTMR because, for all the goods and services refused for registration, the mark applied for is not descriptive but distinctive.

De Lucia: T-2/10; Board's case: R0037/2009-1; OD case: B1 099 664; CTMA No: 4 962 346; Office response filed on 22/04/2010; Language of the case: IT

Keywords: Community Trade mark; Opposition: likelihood of confusion (LOC): comparison of goods and signs

FACTS : Società DOMENICO DE LUCIA S.p.A., applied to register as a CTM the figurative mark shown below with regard to goods in classes 29, 30 and 31. Egidio Galbani S.p.A. filed an opposition based, among others, on the earlier CTM “LUCIA” registered for goods in class 30. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application	Earlier CTM
	LUCIA

The Opposition Division partly upheld the opposition.

On appeal, the Board partly upheld the appeal but still maintained the partial rejection of the contested CTMA.

Before the General Court, the applicant claims misapplication of Article 8(1)(b) CTMR and no and/or inadequate reasons given in relation to the request that Article 12(a) of the regulation be applied

[gelenksteigbügel]: T-463/09; Board's case: R1614/2008-4 ; CD case: 2037C; CTMA No: 1 599 620; Office response filed on 30/04/2010 ; Language of the case: DE

Keywords: Community Trade mark; Invalidity: Absolute grounds for refusal: distinctiveness

FACTS : Herm. Sprenger GmbH & Co.KG is the proprietor of the 3D CTM shown below, with regard to “Articulated stirrups” in class 6. Georg Kieffer Sattlerwarenfabrik GmbH filed a request for invalidity based on Article 52(1)(a) CTMR in connection with Article 7(1)(b) and (3) CTMR.

CTM application

The Cancellation Division upheld the invalidity request.

On appeal, the Board dismissed the appeal.

Before the General Court, the applicant claimed breach of Article 52(1)(a), in conjunction with Article 7(1) CTMR on the ground of an incorrect finding that the mark is devoid of any original distinctive character; Breach of Article 52(1)(a) and 52(2), in conjunction with Article 7(3) CTMR on the ground that it was wrongly assumed that the disputed mark had not acquired distinctive character through use; Breach of the first clause of Article 76(1) CTMR in that the relevant facts were not examined in the requisite manner; breach of Article 83 CTMR in respect of the rights of the defence; breach of Article 77(1) CTMR in that the Board of Appeal ought to have acceded to the applicant's alternative request for oral proceedings; breach of the EC Treaty in respect of the basic right to equitable proceedings.

ARANTAX: T-13/10; Board's case: R1769/2008-4 ; OD case: B 1 042 987; CTMA No: 4 823 084; Office response filed on 30/04/2010; Language of the case: DE

Keywords: Community Trade mark; Opposition; Opposition: likelihood of confusion (LOC): comparison of goods and signs.

FACTS : Dr. Klaus Goutier applied to register as a CTM the word “ARANTAX”, with regard to services in classes 35, 36 and 42. Norbert Rauch filed an opposition based, among others, on the earlier German mark shown below registered for goods and services in classes 9, 35, 37, 41 and 42. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application	Earlier German mark
ARANTAX

The Opposition Division upheld the opposition.

On appeal, the Board dismissed the appeal.

Before the General Court, the applicant claims infringement of Article 8(1)(b) CTMR, owing to the absence of likelihood of confusion of the marks at issue

MAGIC LIGHT: T-34/10; Board's case: R0656/2008-4; OD case: B 1 105 370; CTMA No: 5 196 597; Office response filed on 05/05/2010; Language of the case: DE

Keywords: Community Trade mark: Opposition: likelihood of confusion: comparison of goods and signs.

FACTS : "Hairdreams" HaarhandelsgmbH applied to register as a CTM the word expression “MAGIC LIGHT” with regard to goods and services in classes 3, 8, 10, 21, 22, 26 and 44. Rüdiger Bartmann filed an opposition (B 330 797) based on the earlier German mark “MAGIC LIFE” registered for goods in classes 3. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application	Earlier German mark
MAGIC LIGHT	MAGIC LIFE

The Opposition Division partly upheld the opposition.

On appeal, the Board dismissed the appeal.

Before the General Court, the applicant claims infringement of Article 8(1)(b) CTMR on the ground that the Board of Appeal erred in law in its assessment of the likelihood of confusion

[Q]: T-455/09; Board's case: R0312/2009-4; OD case: B 1 055 161; CTMA No: 4 804 266; Office response filed on 07/05/2010; Language of the case: FR

Keywords: Community Trade mark: Appeal: admissibility.

FACTS : Michel Robin and others applied to register as a CTM the figurative mark shown below with regard to goods in classes 18, 25 and 28. Mr Vicente J. Jiménez Sarmiento filed an opposition based on the earlier Spanish mark shown below registered for goods in class 25. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application	Earlier Spanish mark

The Opposition Division dismissed the opposition by decision notified by fax on 15/01/2009 .

On 16/03/2009 (Monday) the opponent filed a notice of appeal; on 18/05/2009 (Monday) the opponent filed a written statement setting out the grounds of appeal.

The Board's registry informed the opponent that the last submission of the opponent had been filed late because the deadline for filing it expired on the 15/05/2009 (Friday).

On 14/07/2009 the opponent requested a continuation of proceedings pursuant to Article 82 CTMR.

The Board dismissed the appeal as inadmissible. The request for continuation of proceedings was also declared inadmissible.

Before the General Court, the opponent claims incorrect interpretation and application of Rule 70 CTMIR, and departure by the Office from its consistent practice, in circumstances of excusable error on the part of the applicant

esf ECOLE DU SKI FRANÇAIS: T-41/10; Board's case: R0235/2009-1; CD case: 2557C; CTMA No: 4 624 987; Office response filed on 07/05/2010; Language of the case: FR

Keywords: Community Trade mark; Invalidity: absolute grounds: marks that contain a protected emblem (flags), misleading indications.

FACTS : Syndicat National des Moniteurs du Ski Français is the proprietor of the CTM shown below registered for regard to goods and services in classes 25, 28 and 41. Syndicat International des Moniteurs de Ski requested the invalidity of this mark on the grounds laid down in article 51(1)(a) CTMR in connection with Article 7(1)(h) and (g).

CTM application

Magnify

The Cancellation Division dismissed the request for invalidity.

On appeal, the Board dismissed the appeal.

Before the General Court, the applicant for invalidity claimed infringement of Article 7(1)(h) and (g) CTMR.

Carcheck: T-14/10; Board's case: R0595/2009-4; CTMA No: 7 368 681; Office response filed on 11/05/2010; Language of the case: DE

Keywords: Community Trade mark: Examination: Absolute grounds for refusal: distinctiveness, descriptiveness

FACTS : CheckMobile GmbH – The Process Solution Company applied to register as a CTM the word “carcheck”, with regard to goods and services in classes 9, 16, 35, 36, 38, 41, 42 and 45. The examiner refused the registration on the basis of Article 7(1)(b) and (c), and (2) CTMR.

On appeal, the Board dismissed the appeal.

Before the General Court, the applicant claims that the Board infringed Article 7(1)(c) CTMR, since the Board of Appeal interpreted the absolute ground for refusal to register a mark, based on the exclusively descriptive character of the signs of which it consists, too broadly.

METRONIA: T-525/09; Board's case: R1315/2006-1; OD case: B 749 699; CTMA No: 3 387 834; Office response filed on 17/05/2010; Language of the case: EN

Keywords: Community Trade mark: Opposition: likelihood of confusion (LOC): comparison of goods and marks.

FACTS : Metronia, SA applied to register as a CTM the figurative mark shown below, with regard to goods and services in classes 9, 20, 28 and 41. MIP METRO Group Intellectual Property GmbH & Co KG filed an opposition based on the earlier German figurative mark shown below registered, among others, for goods and services in classes 9, 20, 28 and 41. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application	Earlier German trade mark

The Opposition Division upheld the opposition.

On appeal, the Board upheld the appeal and rejected the opposition.

Before the General Court, the opponent claims infringement of Article 8(1)(b) CTMR as the Board of Appeal wrongly found that there was no likelihood of confusion between the trade marks concerned.

PIPELINE: T-87/10; Board's case: R0968/2009-2; CTMA No: 7 549 405; Office response filed on 17/05/2010; Language of the case: EN

Keywords: Community Trade mark; Examination Absolute grounds for refusal: distinctiveness, descriptiveness

FACTS : Chestnut Medical Technologies, Inc. applied to register as a CTM the word “PIPELINE” with regard to goods in class 10. The examiner refused the registration on the basis of Article 7(1)(b) and (c), and (2) CTMR.

On appeal, the Board dismissed the appeal.

Before the General Court, the applicant claims infringement of Article 7(1)(c) CTMR, as the Board of Appeal erred in its assessment that the Community trade mark concerned has a descriptive character, and Article 75 CTMR as the Board of Appeal, by ignoring arguments brought by the applicant, infringed the obligation to state the reasons on which the decision has been based.

ELLA VALLEY VINEYARD: T-32/10; Board's case: R1293/2008-1; OD case: B 944 563; CTMA No: 3 360 914; Office response filed on 19/05/2010; Language of the case: FR

Keywords: Community Trade mark: Opposition: Reputation

FACTS : Ella Valley Vineyards (Adulam) Ltd applied to register as a CTM the figurative mark shown below with regard to “wines” in class 33. Hachette Filipacchi Presse (Société Anonyme) filed an opposition based on the and earlier French and CTM for the figurative mark shown below registered for, among other, goods in class 16. The grounds were those laid down in Article 8(5) CTMR.

CTM application	Earlier marks

The Opposition Division dismissed the opposition.

On appeal, the Board upheld the appeal.

Before the General Court, the applicant claims infringement of Article 8(5) CTMR because the public concerned will not make any link between the marks at issue and because the use of the mark "ELLA VALLEY VINEYARDS" does not take unfair advantage of the reputation of the earlier "ELLE" marks

PUCCI: T-39/10; Board's case: R0173/2009/1; OD case: B 994 758; CTMA No: 4 030 078; Office response filed on 20/05/2010; Language of the case: EN

Keywords: Community Trade mark: Opposition: likelihood of confusion (LOC): comparison of goods and marks; Reputation

FACTS : Emilio Pucci International B.V. applied to register as a CTM the word “PUCCI” with regard to goods and services in classes 3, 9, 14, 18, 25 and 28. El Corte Inglés S.A. filed an opposition based on various Spanish and CTMs as shown below registered for goods in classes 3, 9, 14, 25 and 28. The grounds were those laid down in Article 8(1)(b) and 8(5) CTMR. The applicant requested the opponent to furnish proof of use of the Spanish trade marks (Article 43 (2) and (3) CTMR).

CTM application

Earlier Spanish trade marks/CTM

PUCCI

E. TUCCI

The Opposition Division dismissed the opposition.

On appeal, the Board dismissed the appeal on the grounds that there was no evidence of use for part of the earlier marks and that, in spite of the fact that the mark EMIDIO TUCCI enjoys reputation in Spain for clothing and footwear for men, the Board still believed that the perception of the conflicting marks is that they are dissimilar.

Before the General Court, the opponent claims infringement of Article 8(1)(b) CTMR as the Board of Appeal wrongly found that there was no likelihood of confusion between the trade marks concerned; infringement of Article 8(5) CTMR as the Board of Appeal failed to conclude that the conditions for the application of this provision are fulfilled, as the earlier trade marks enjoy reputation in Spain in respect of articles related to fashion and the use of a similar sign by a third party would be detrimental to and take unfair advantage of such a reputation.

GLÄNSA: T-88/10; Board's case: R0529/2009-2; OD case: B 1 199 314; CTMA No: 5 332 754; Office response filed on 21/05/2010; Language of the case: EN

Keywords: Community Trade mark: Opposition: likelihood of confusion (LOC): comparison of goods and marks.

FACTS : Inter Ikea Systems B.V. applied to register as a CTM the word “GLÄNSA” with regard to goods in class 11. Meteor Controls International Limited filed an opposition based on the earlier CTM for the word “GLANZ” registered for goods in classes 6, 9 and 11. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application

Earlier CTM

GLÄNSA

GLANZ

The Opposition Division upheld the opposition.

On appeal, the Board dismissed the appeal.

Before the General Court, the applicant claims infringement of Article 8(1)(b) CTMR as the Board failed to make a correct global assessment and comparison of the trade marks concerned, thereby wrongly finding that these were similar and, as a result, that there was a likelihood of confusion between them.

[e]: T-22/10; Board's case: R1666/2008-4; OD case: B 1 082 124; CTMA No: 5 089 859; Office response filed on 25/05/2010; Language of the case: DE

Keywords: Community Trade mark: Opposition: likelihood of confusion (LOC): comparison of goods and marks.

FACTS : Esprit International, Limited Partnership applied to register as a CTM the figurative mark shown below, with regard to goods in classes 18 and 25. Marc O'Polo International GmbH filed an opposition based on the earlier German mark for the figurative mark shown below registered for goods in classes 18 and 25. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application	Earlier German mark

The Opposition Division upheld the opposition.

On appeal, the Board dismissed the appeal.

Before the General Court, the applicant claims infringement of Article 8(1)(b) CTMR since there is no likelihood of confusion between the signs at issue.

AMPLIDECT: T-59/10; Board's case: R0913/2009-2; CTMA No: 3 603 883; Office response filed on 26/05/2010; Language of the case: EN

Keywords: Community Trade mark: Invalidity: Absolute grounds for refusal: distinctiveness, descriptiveness

FACTS : Geemarc Telecom International LTD is the proprietor of the CTM for the word “AMPLIDECT” registered for goods in classes 9 and 16. Audioline GmbH requested this mark to be declared invalid as regards the goods in class 9. The grounds for the request were those in Article 7(1)(b) CTMR. The Cancellation Division rejected the request.

On appeal, the Board the Board annulled cancellation decision and declared the contested registration invalid with respect to all the goods in class 9.

Before the General Court, the proprietor claims infringement of Article 7(1)(b) and (c) CTMR, as the Board of Appeal: (i) failed to take into account that the applicant for invalidity had failed to adduce evidence of lack of distinctive character of the registered Community trade mark subject of the application for a declaration of invalidity; and (ii) failed to take into account that the registered Community trade mark subject of the application for a declaration of invalidity has acquired an enhanced distinctiveness through the level of use made of it; the Board of Appeal failed to restrict itself to an examination of the evidence and arguments provided by the parties within the time line set by the Board of Appeal.

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