July 2010

New Decisions from the Boards of Appeal

Please note that the full number including slash has to be entered in our database under 'Appeal Nº', without the letter 'R'.

E .g. Case R 219/2004-1 has to be entered under 'Appeal Nº' as: 0219/2004-1

Procedural issues

Admissibility – adversely affected party

Decision of the Fourth Board of Appeal of 20 May 2010 in case R0963/2009-4 HAMMER (English)

R0963/2009-4 HAMMER – en - The appellant filed a request for declaration of invalidity against a CTM based on the grounds laid down in Article 53 (1) (a) in conjunction with Article 8 (4) CTMR and Article 52 (1) (b) CTMR, bad faith.

The Cancellation Division declared the CTM invalid since appellant (as the cancellation applicant) had proven that it owned an earlier unregistered trade mark in the United Kingdom and found the requirements under Article 8 (4) CTMR and passing-off under English law fulfilled. It did not give a ruling on the bad faith issue.

The appellant filed an appeal requesting the Board to declare that the CTM proprietor filed the CTM in bad faith.

Pursuant to Article 59, 1 st sentence CTMR, an appeal against a decision of the Cancellation Division of the Office is open to any party to the proceedings adversely affected by the decision.

The decision of the Cancellation Division upheld the request for declaration of invalidity and declared the Community trade mark invalid for all the goods for which it was registered. In so doing it complied with the appellant's request. The result is that the Community trade mark is cancelled. The Board found that there is no room for another declaration of invalidity, be it on other grounds. There is also no legal interest for having the Community trade mark declared invalid with regard to the legal consequences of such declaration. The declaration of invalidity on the grounds of bad faith, which is an absolute ground for declaration of invalidity, and on the grounds of a conflict with a national earlier right under Article 8 (4) CTMR, which is a relative ground for declaration of invalidity (Article 53 (1) (c) CTMR), both lead to the legal consequence that the Community trade mark shall be deemed not to have had, as from the outset, the effects under the CTMR, Article 55 (2) CTMR. This is different from a revocation, e.g. on the grounds of non-use, which leads to expunging the Community trade mark from the Register with ex nunc effect, Article 55 (1) CTMR.

Where several grounds for opposition or declaration of invalidity are invoked against one and the same Community trade mark, the Office is not under an obligation to examine all of them, if one of them suffices to uphold the opposition or request for declaration of invalidity

Consequently, the appeal is declared inadmissible.

Proof of use – affidavit – free balance of evidence

Decision of the Second Board of Appeal of 27 May 2010 in case R1153/2009-1 LYCRA (Fig. mark) / RÖWA LEGRA (Fig. Mark) et al. (English)

R1153/2009-1 LYCRA (Fig. mark) / RÖWA LEGRA (Fig. Mark) et al. – en - During the opposition proceedings, the opponent was requested to file proof of use. The Opposition Division rejected the opposition since the opponent did not prove genuine use of its trade mark. It held that the affidavit was ‘prepared' by one of the employees of the opponent, therefore its evidentiary value is very low, due to the opponent's own interest; moreover the sales figures are not subsequently documented by additional evidence.

The Board held that that doubts concerning the trustworthiness of the declaration may always exist but must be based on objective elements, such as the existence of contradictions in the declaration or of manifestly implausible statements or suspiciously vague or reticent wording.

The Board considered that the information in the declaration appears reasonable and plausible. He signer explains that the mark was first used in 1997 in Germany and has been continually used since. He states that the goods are mattresses and frames. He explains why the LEGRA mark is sometimes used in combination with ROWA. He explains that the mark is not advertised as a consumer product to the public because the beds are upmarket and are the subject of selective distribution. He comments in detail on the rest of the evidence that has been submitted. He gives statistics as regards the turnover for selling LEGRA goods and advertising them, during the relevant period, year by year. The Board could not find anything in the declaration that might generate doubts about its trustworthiness.

The Board does not share the Opposition Division's position that declarations which contain sales figures should be proved with invoices because the declaration, provided it complies with the formal and substantial requirements listed above, is already proof.

Without it being necessary to examine the evidence filed at the appeal stage, the Board concludes that the evidence submitted at the opposition stage duly proves that the LEGRA word mark has been used for all the goods mentioned in the registration.

Consequently, the appeal was allowed ant the case remitted to the Opposition Division for further prosecution

Absolute grounds of refusal –

Cancellation proceedings - Technical function

Decision of the First Board of Appeal of 20 May 2010 in case R1235/2008-1 – a surface covered with circles (Fig. Mark) - English

R1235/2008-1 a surface covered with circles (Fig. Mark) – en - For the question of assessing the sign, the Board considered all documents submitted by the proprietor of the CTM as relevant. Since the proprietor, during the examination proceedings, stated that the sign is the two-dimensional rendering of the ‘shape of a product' (the ‘product' in question being the handle of knives and the like). Surprisingly, After the cancellation Applicant argued that the ‘shape' in question was objectionable under Article 7(1)(e)(ii) CTMR, the Proprietor modified this description. The sign was no longer the rendering of the ‘shape of product' but just an ‘arbitrary geometrical figure' or ‘a pattern of dots'. Any reference to shapes was opportunely dropped.

However, the Board adopted the first description rather than the second and held that the sign is a figurative mark consisting of the two-dimensional representation of the handle of the products for which registration is sought.

Article 7(1)(e)(ii) CTMR forbids the registration of ‘signs which consist exclusively of the shape of goods which is necessary to obtain a technical result'.

Patents are obviously different from trade marks because they protect technical features. But technical features are precisely the subject matter of the absolute ground for refusal of Article 7(1)(e)(ii) CTMR and patents may contain valuable information in order to understand them. The Grand Board of Appeal has duly considered the contents of patents when examining a mark under Article 7(1)(e)(ii) CTMR and this approach was upheld by the General Court.

The US Patent cited in this case indicates in the summary of the invention that the handle has side faces formed with a ‘non-skid structure comprised of an array of dents'. The same notion is repeated in the detailed description and, quite significantly, in the claims. The ‘dents' in the patent and the ‘dents' mentioned in this decision are the same. The non skid effect is produced by the fact that the surface of the handle has been made uneven, thus allowing a better grip.

Consequently, the dents, therefore, are necessary to obtain a technical result, i.e. the result of preventing the hand holding the handle from accidentally slipping. The fact that the same result can be obtained by other shapes does not exclude the applicability of the ground for refusal.

Since the mark has been found objectionable under Article 7(1)(e)(ii) CTMR, the registration must be declared invalid without it being necessary to rule on the other ground of invalidity.

Relative Grounds of Refusal

Opposition Proceedings – distinctive elements - disclaimer

Decision of the First Board of Appeal of 20 May 2010 in Case R0640/2009-1 TISANA (Fig. Mark)/TISANIA et al. (English)

R0640/2009-1 ( TISANA) / TISANIA – en - The applicant disclaimed exclusive rights on the element ‘TISANA' in the contested application since this word is descriptive and not distinctive, in relation to the goods applied for.

In accordance with Article 8(1)(b) CTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if because of its similarity to the earlier trade mark and the identity or similarity of the goods covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

The parties did not disputed that the goods are partially identical, partially highly similar and partially similar.

In the present case, the products with medical purpose in Class 5 of the contested mark include food supplements and dietetic products that may be sold over-the-counter or under prescription. In this regard the relevant public is composed of the average consumer, as end-consumers of those goods, often assisted by medical professionals and pharmacists. Consumers are generally well informed and particularly attentive and circumspect in the choice of goods with a medical purpose and will many times act on the advice of doctors and pharmacists. They are likely to display a high degree of attention.

The Board agrees with the Opposition Division that the earlier mark ‘TISANIA' is highly suggestive, in respect of ‘non-medical infusions', because it is visually and aurally very similar to the Spanish word ‘tisana', a drink that ensues from the light cooking of one or several herbs and other ingredients in water. The distinctiveness of the earlier mark in relation to the contested goods comes exclusively from the letter ‘I'.

Although the third letter ‘S' of the contested mark is stylised and unusual, there is no doubt that the contested mark will be referred to as ‘TISANA'. This word element of the contested mark is totally devoid of distinctiveness in relation to the goods applied for. In fact the contested mark must have been accepted only because of its figurative element. Thus, the distinctiveness of the contested mark comes from the stylised ‘S' and the overall structure of the mark, including the letters ‘TI' in bold followed by the particular ‘S' and the letters ‘ANA', but not from the word ‘TISANA' itself. The disclaimer to any exclusive right to the word ‘TISANA' requested before the Board also confirms that no exclusive right is granted on the term ‘TISANA' itself.

Therefore, the fact that the marks coincide in the letters ‘T-I-S-A-N- -A' has little weight in the comparison of the signs in Spain. Furthermore, the stylised ‘S' of the trade mark applied for have the effect of creating a distinguishing (and distinctive) characteristic, which under the circumstances prevent any similarity with the earlier mark which does not contain any similar element.

Since the similarity between the signs is exclusively based on the non-distinctive word ‘TISANA', the Board concluded that no likelihood of confusion might arise notwithstanding the identity/similarity of the goods.

The other earlier marks on which the opposition was based was even more different, consequently, no likelihood of confusion could exist.

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New Decisions from the Boards of Appeal