May 2012

Luxembourg Case Law

A: Court of Justice: Preliminary rulings and Orders

Joined Cases C-90/11 and C-91/11; Preliminary Ruling; Alfred Strigl v Deutsches Patent- und Markenamt; Securvita Gesellschaft zur Entwicklung alternativer Versicherungskonzepte mbH v Öko-Invest Verlagsgesellschaft mbH; Ruling of 15/03/2012; Language of the case: EN

Keyword: Abbreviation, acronym, descriptiveness

This preliminary ruling adopted by the Court of Justice concerns the interpretation of the grounds of refusal and invalidity in Article 3(1)(b) and (c) of Directive 2008/95/EC (‘TMD’) (distinctive character and descriptiveness). The question in both cases was referred by the Bundespatentgericht (Germany).

FACTS: In Case C-90/11, an application for the word mark ‘Multi Markets Fund MMF’ was filed for services in Class 36, inter alia, ‘insurance, financial consultancy, investments, and investment and financial consultancy’. The German Patent and Trade Mark Office (‘The Trade Mark Office’) dismissed the application for registration, finding that the ‘MMF’ component would be understood by the relevant public as a self-evident abbreviation of the other three descriptive word elements. Therefore the whole mark was also descriptive. This was despite ‘MMF’ being capable of having various meanings if analysed in isolation. The applicant in that case appealed to the Bundespatentgericht, claiming ‘MMF’ could correspond to a large number of abbreviations, and therefore the mark should not be considered descriptive. In Case C-91/11, the word mark ‘NAI – Der Natur-Aktien-Index’ was registered at The Trade Mark Office for services in Class 36. An application for cancellation was filed against the mark, claiming the letter sequence was merely an abbreviation of the descriptive word combination and that the mark as a whole was also descriptive. The Trade Mark Office granted the cancellation, and the owner appealed to the Bundespatentgericht. The Bundespatentgericht asked the Court of Justice whether the grounds of refusal under Article 3(1)(b) and/or (c) TMD are applicable to word marks consisting of the juxtaposition of a descriptive word combination and a letter sequence which is non-descriptive in itself, but which reproduces the initial letters of the words comprising that word combination.

SUBSTANCE: The Court took into account that the grounds of refusal in Article 3(1)(b) and (c) TMD are identical to the grounds of refusal in Article 7(1)(b) and (c) CTMR, and thus the case-law of the Court relating to the Regulation was applicable to the corresponding provisions of the Directive (Para. 19). It also pointed out that the grounds of refusal must be interpreted with regards to the general interest underlying them (Para. 22), and that the general interests underlying Article 3(1)(b) and (c) were to preclude the registration of non-distinctive marks and to ensure that descriptive marks may be freely used by traders of similar goods or services (Paras. 30-31). The CJ found no importance in whether a letter sequence preceded or followed a word combination, where the letter sequence represented the initial letters of the word combination, as the two are intended to clarify each other and to draw attention to the fact that they are linked (Paras. 32-33). With specific regards to the mark ‘NAI – Der Natur-Aktien-Index’, the CJ considered that the hyphen following the ‘NAI’ component reinforced the overall impression that the letter sequence was an abbreviation of the subsequent word combination (Para. 34). The CJ held that this determination was unaffected by the fact that ‘Der’ was not included in the letter sequence ‘NAI’ (Para. 34). The CJ held that Article 3(1)(b) and (c) TMD is applicable to a word mark which consists of the juxtaposition of a descriptive word combination and a letter sequence which is non-descriptive in itself, if the relevant public perceives that sequence as being an abbreviation of that word combination by reason of the fact that it reproduces the first letter of each word of that combination, and that the mark in question, considered as a whole, can thus be understood as a combination of descriptive indications or abbreviations which is therefore devoid of distinctive character.

Case C-81/11P; Longevity Health Products Inc v OHIM; Order of 08/03/2012 in the appeal against Judgment T-363/09; Language of the case: EN

Keywords: Admissibility, matters of fact, reply to the General Court, request for proof of use, consumer attentiveness

RESULT: Appeal dismissed

FACTS: The applicant applied for the word mark RESVEROL for goods in Class 5. The Opposition Division upheld an opposition based on the international registration of the word mark LESTEROL for goods in Class 5, which has effect in various Member States, on the basis of Article 8(1)(b) CTMR. The Board of Appeal and the General Court dismissed the applicant’s appeal. The applicant appeals to the Court of Justice, alleging (i) a procedural defect relating to the GC’s refusal to allow the lodging of a reply and (ii) an infringement of Article 8(1)(b) CTMR.

SUBSTANCE: (i) The CJ stated that, in accordance with Article 135(2) of the GC’s Rules of Procedure, the GC’s decision whether or not to allow the applicant to lodge a reply, further to its application to that effect, was a matter for the GC’s discretion. The refusal of a reply did not infringe the applicant’s right to be heard and right to judicial protection (Paras. 19, 20). (ii) The CJ found that the GC was correct in refusing the applicant’s request for proof of use raised for the first time before the GC as inadmissible (Para. 34). As regards the finding relating to the characteristics of the relevant public and its degree of attention, perception and attitude, the CJ considered that they constitute appraisals of fact (Para. 26). Equally, the applicant’s arguments relating to the visual, phonetic and conceptual comparison of the marks relate to a factual appraisal (Para. 32). Since the applicant challenges factual appraisals and does not allege any distortion of the facts or evidence submitted to the GC, this cannot be reviewed by the CJ.

Case C-406/11P; Atlas Transport GmbH v OHIM; Order of 09/03/2012 in the appeal against Judgment T-145/08; Language of the case: DE

Keywords: Admissibility, grounds of appeal, deadline, suspension of proceedings

RESULT: Appeal dismissed

FACTS: The CTM owner was owner of the CTM ATLAS, registered, inter alia, for transport services in Class 39. With decision of 26 June 2007, the Cancellation Division declared the CTM invalid due to likelihood of confusion with the earlier Benelux figurative mark ATLAS AIR, registered for air transport services in Class 39. The CTM owner raised an appeal on 29 June 2007. On 15 October 2007, the CTM owner sent a letter to the Boards of Appeal, in which it included a non-dated draft of a request for invalidity relating to the earlier mark and destined for the competent Benelux court. On 29 October, the CTM owner followed this up with a letter, referring to the fact that the proceedings had to be suspended to await the outcome of the Benelux proceedings. In view of this, it would not make any comments on the appealed decision, other than saying that was not justified. The appeal was dismissed as inadmissible due to the lack of a statement of grounds of appeal. The GC dismissed the CTM owner’s appeal, confirming that the Board was correct in finding that there was no relevant statement of grounds of appeal and that the Board was entitled to reject the request for suspension of proceedings. Moreover, a suspension would not have had any impact on the deadline to submit the grounds of appeal under Article 59 (now Article 60) CTMR.

SUBSTANCE: The CJ rejected the CTM owner’s arguments that the Board of Appeal should have suspended the proceedings as inadmissible. It found that the CTM owner had merely repeated the arguments it put before the GC without attacking the reasoning of the GC in that matter. A claim for a mere repetitive examination of the reasons of appeal to the GC by the CJ is not admissible (Para. 33). The CJ considered that the GC was entitled to find that a statement of grounds in an appeal before the Boards of Appeal needed to contain the relevant factual and/or legal aspects that, in the view of the appellant, justify an annulment of the first instance’s decision (Para. 47). The GC was furthermore entitled to find that the CTM owner’s first letter to the Boards, announcing the commencement of national invalidity proceedings against the earlier right of the cancellation applicant, was not a statement of grounds in accordance with Article 59 CTMR (Para. 48). The GC was also entitled to consider that the second letter by the CTM owner to the Boards was contradictory in itself and did not contain clear and understandable grounds which would be sufficient under Article 59 (now Article 60) CTMR (Para. 51). Hence the CTM owner’s claim in this respect was clearly unfounded.

Case C-87/11P; Fidelio KG v OHIM; Order of 21/03/2012 in the appeal against Judgment T-286/08; Language of the case: DE

Keywords: Admissibility, matters of fact, absolute grounds

RESULT: Appeal dismissed

FACTS: The application for the word HALLUX for certain goods in Classes 10, 18 and 25 was rejected by the Examination Division based on Article 7(1)(c) and (b) CTMR. The Board of Appeal partially dismissed the applicant’s appeal, namely for ‘orthopaedic articles’ in Class 10 and for ‘shoes’ in Class 25, due to the meaning of ‘hallux’ (great toe) and the link to the known deformation of the great toe, hallus valgus. The GC dismissed the applicant’s appeal.

SUBSTANCE: The CJ found that the applicant’s reasoning amounted to the claim that it was not convinced by the GC’s reasoning in the judgment. This is not a sufficient substantiation of a ground for appeal on a point of law and is therefore clearly inadmissible (Para. 48). The GC’s finding that the relevant public for orthopaedic goods would make the connection between the term ‘hallux’ and the deformation of the big toe, ‘hallux valgus’ is a finding of fact (Para. 34). The definition of the relevant consumer is a matter of fact (Para. 66). The applicant’s argument that the GC had erred in finding subcategories of goods within the categories of ‘orthopaedic goods’ and ‘shoes’ (with the consequence that it considered the term HALLUX descriptive for these categories) is also a matter of fact (Para. 44). Since the applicant challenges factual appraisals and does not allege any distortion of the facts or evidence submitted to the GC, this cannot be reviewed by the CJ. The GC did not infringe Article 7(1)(b) CTMR by failing to examine this ground after it had found Article 7(1)(c) CTMR to be applicable. One absolute ground for refusal is enough to prevent the registration of a sign as a CTM.

B: General Court: Judgments on appeals against decisions of the OHIM

Case: T-227/09; Feng Shen Technology Co. Ltd. v OHIM; Judgment of 21/03/2012; Language of the case: EN

Keywords: Invalidity, bad faith

RESULT: Action upheld (BoA decision annulled)

FACTS: The CTM owner filed an application in 2005 for a figurative mark for ‘zip fasteners’ in Class 26; registration was issued in 2006. An application for invalidity due to bad faith based on an earlier Taiwanese figurative mark for ‘zip fasteners’ in Class 26 was rejected by the Cancellation Division. An appeal was filed and the Board of Appeal dismissed the appeal, finding that the evidence before it was insufficient to establish bad faith on the part of the CTM owner. The application for annulment of the contested decision was upheld by the GC.

Contested CTM

Earlier Taiwanese TM

Image not found

SUBSTANCE: The GC upheld the Office’s claim that certain documents presented for the first time before the GC, which were not included in the Office’s file, were inadmissible (Para. 26). The invalidity applicant’s claim for the GC to declare the CTM invalid was admissible (alteration according to Article 65(3) CTMR). However, the GC rejected the claim as the issues for which the Court annulled the Board’s decision did not in themselves enable a finding in favour of bad faith (Para. 54 et seq). Analysing the invalidity applicant’s arguments and the six considerations taken into account by the Board of Appeal to come to the conclusion that the CTM owner had not acted in bad faith, the GC found that four of the considerations were not based on an analysis of all of the relevant factors and were not substantiated by the evidence in the file or were based on incorrect factual findings (Para. 50). First, the GC found that the Board did not make an examination of the marks based on their overall impression (Para. 40). Second, the GC considered that the Board’s finding that the invalidity applicant manufactured ‘zip fasteners’ according to the CTM owner’s instructions was not substantiated by evidence in the file (Para. 44). The GC noted that the CTM owner failed to produce evidence in this respect when asked to do so by the Court (Para. 43). Third, the GC found that the actual use of the CTM, which is relevant to the assessment of the CTM owner’s intention, was not substantiated by evidence in the file (Para. 47). Fourth, the GC found that the invalidity applicant had sufficiently supported its claim that it sold ‘zip fasteners’ in the EU (namely Poland) prior to the filing of the CTM, contrary to the finding in the contested decision. That finding is relevant to the assessment of the commercial efforts of the invalidity applicant and the CTM owner in the EU and, consequently, to the CTM owner’s intention (Para. 49). The two remaining of the Board’s considerations were considered insufficient on their own to establish whether the CTM owner had acted in bad faith (Para. 50-51).

Case T-328/11; Leifheit AG v OHIM; Judgment of 24/04/2012; Language of the case: DE

Keywords: Descriptiveness, combination of words, neologism

RESULT: Action dismissed

FACTS: Leifheit AG applied for the word mark EcoPerfect to be registered for several goods in Class 21, mainly apparatus and materials for cleaning purposes. The examiner refused to register the word as a CTM on the ground that the sign was descriptive and non-distinctive for the goods according to Articles 7 (1)(c) and (b) CTMR. The Board of Appeal dismissed the applicant’s appeal. The applicant filed an action before the General Court.

SUBSTANCE: The GC confirmed its jurisprudence in relation to Article 7 (1)(c) CTMR. The Board had correctly found that the respective relevant consumers for the goods at issue are the English speaking public of the European Union. The neologism EcoPerfect will be understood immediately as meaning ecologically perfect. The Office does not have to prove that the sign in question is listed in dictionaries, but only needs to apply the law of the CTMR to the sign (Para. 29). The mere fact that a sign is not grammatically correct, does not allow the conclusion that the impression it creates as a whole is sufficiently different from the impression created by its components (Para. 33). The fact that both parts are joined without any slash or empty space is completely invalidated by the fact that the second element starts with a capital P (Para. 34). The mark EcoPerfect is not merely an evocative sign, but informs the relevant consumers in a direct and immediate manner about the environmentally friendly origin or use of the goods in question (Para. 47). The Board could validly put the goods into three categories, and did not have to exam each and every product individually (Para. 53), since there was a sufficiently direct and concrete link between the goods within each category (Para. 54). Since the Board correctly concluded that the sign could not be registered according to Article 7 (1)(c) CTMR, the applicant could not rely on former decisions of the Office to rebut these findings (Para. 62).

Case T-326/11; Brainlab AG v OHIM; Judgment of 25/04/2012; Language of the case: DE

Keywords: Restitutio in integrum, due care, error, renewal

RESULT: Action upheld (BoA decision annulled)

FACTS: The CTM owner asked to be reinstated into the deadline for submitting an application for renewal for its CTM ‘BrainLAB’ in accordance with Article 81 (former Article 78) CTMR. The original deadline had been missed through a combination of circumstances, namely (a) the owner’s professional representative did not notice the deadline, although it had a three-pillar monitoring system in place that generally worked, (b) OHIM did not send the reminder relating to the upcoming expiry of the CTM (and the deadline for renewal) to the professional representative, as it had removed him, unsolicited, from its database; instead it sent it to the owner itself, (c) a person working for the owner probably did not forward OHIM’s letter to the professional representative. The first instance refused the request for reinstatement (restitution in integrum) as it considered that ‘due care’ had not been exercised. The Board of Appeal confirmed the decision, however, for a different reason. It considered that the deadline monitoring system of the professional representative was correct and proper and that exceptional errors could be treated as excusable. However, the Board found that there was no causal link between the events and the non-renewal of the registration, as the only cause of the non-renewal was that the owner had not given renewal instructions, although it had been informed by OHIM of the impending expiry. The owner appealed to the GC.

SUBSTANCE: The GC confirmed the Board’s finding that the system of the professional representative was in line with the requirements of ‘due care’ and that exceptional errors were excusable. However, in relation to the person working for the owner, the GC pointed out that his possible lack of care in not contacting the owner’s professional representative or OHIM when receiving the reminder was itself only made possible by the mistake made by OHIM in unilaterally removing the professional representative from its database (Para. 45). A party that has conferred the monitoring of its CTMs to a professional representative and has duly notified OHIM of this fact is entitled to expect that OHIM sends all notifications to the professional representative (Rule 67 CTMIR). The GC also found that, taking account of, inter alia, the significance of the trade mark in question for the owner (coinciding with its commercial designation), the absence of renewal instructions to the professional representatives was attributable to a mistake or an accident and was not the product of a ‘free and voluntary decision’ of non-renewal (Para. 52). The GC admitted that the error made by OHIM did not give rise to liability on its part (Article 47(2) CTMR, Rule 29 CTMIR) and did not have effect on the CTM’s expiry. However, the Court was of the view that the Board needed to take proper account of OHIM’s error and its consequences in the assessment of the claim for reinstatement. The degree of due care required by the party has to be determined in the light of all relevant circumstances (Para. 56). The GC annulled the Board’s decision for wrongly failing to take into account the error made by OHIM and thereby misapplying Article 81 CTMR.

Case T-435/11; Universal Display Corp. v OHIM; Judgment of 02/05/2012; Language of the case: EN

Keywords: Descriptiveness, combination of words, acronym, principle of equal treatment, principle of legality

RESULT: Action dismissed

FACTS: Universal Display Corp. has designated the EU, through the Madrid Protocol system, for the registration of the word mark “UniversalPHOLED” for the following goods in class 1 ‘Chemicals for use in the manufacture of organic light-emitting devices and other organic devices’. The examiner issued a provisional refusal, based on Article 7(1)(c) CTMR, stating that the mark consisted of the words ‘Universal’and ‘PHOLED’, an acronym for ‘phosphorescent organic light-emitting diode’ which conveys obviousand direct information on the kind and quality of the goods.The Board of Appeal dismissed the applicant’s appeal. The applicant filed an action before the General Court.

SUBSTANCE: The GC confirmed its jurisprudence in relation to Article 7 (1)(c) CTMR. The Board had correctly found that the goods are intended for specialist consumers and that the target public is the English speaking public of the European Union. The term “Universal” may be understood as describing goods which fit for general or universal use (Para. 22). It is common ground that the term ‘PHOLED’ is an acronym for “phosphorescent organic light-emitting diode” (Para. 23) Considered as a whole ‘UniversalPHOLED’ will be perceived as describing materials for use in the manufacture of phosphorescent organic light-emitting diodes and not as referring to the applicant’s company name (Universal), even if the applicant is considered as leader in that technology (Para. 26). It will be understood immediately as the mere combination of two descriptive words. The combination complies with English grammatical and syntactical rules and is not unusual in English (Paras. 30, 31). The applicant’s argument that it is the leader in phosphorescent organic light-emitting diode technology and that the target public would believe that the relevant goods are manufactured by it, has been rejected by the GC. Even if this argument could be considered as a claim that the mark has acquired distinctive character, no such acquired distinctiveness has been proven (Paras. 35, 36). Finally, as regards the claim alleging infringement of the principle of equal treatment (OHIM has registered various TMs containing the word “universal”), the GC recalled that this principle must be applied in a manner that is consistent specifically with the principle of legality according to which a person may not rely, in support of its claim, on an unlawful act committed in another procedure (Para. 38).

Case T‑270/10; Conceria Kara Srl v OHIM; Judgment of 03/05/2012; Language of the case: IT

Keywords: Obligation to state reasons, proof of use, evidence of use, no likelihood of confusion, dissimilarity of goods and services, trade name

RESULT: Action dismissed

FACTS: The applicant sought to register the mark represented below as a CTM for goods and services within Classes 18, 20, 24, 25 and 35. An opposition based on two Italian trade marks and a Community one, registered for goods and services in Classes 18, 25 and 40, was filed on the grounds of Article 8(1)(b) and 8(5) CTMR. The opponent also invoked Article 8(4) as far as the trade name ‘CONCERIA KARA S.R.L.’ was concerned. The applicant requested proof of use. The Opposition Division held that the proof of use showed that use had been shown only in Italy and solely in relation to ‘skins, leather, imitations of skins and leather’ (Class 18) and ‘tanning’ (Class 40), but not in respect of the finished products covered by the earlier trade marks. It thus partially upheld the opposition under Article 8(1)(b) on the basis of one of the earlier Italian trade marks and rejected the contested CTMA only in respect of ‘leather and imitations of leather’ listed in Class 18. The Opposition Division then dismissed the opposition as far as it was based on Articles 8(4) and 8(5), the relevant requirements not having been met. The Board of Appeal dismissed the opponent’s appeal. The opponent filed an action before the General Court. The General Court dismissed the appeal.

CTM applied for	Earlier Italian Mark
KARRA

SUBSTANCE: As to the first complaint alleging infringement of the obligation to state reasons, thus breaching Article 75(1) CTMR, the Court held that the Board had duly motivated its decision, addressing all the relevant points and thus confirming the reasoning followed by the Opposition Division (Paras. 29-35). Concerning the second complaint, alleging that the Board had breached Article 42(2) and (3) CTMR, having failed to correctly assess the evidence of use and to find that the opponent had made a genuine use of its earlier trade mark also in respect of certain finished products made of leather and belonging to classes 18 and 25, the Court held that the Board had carried out a complete and correct analysis of the proof of use (Paras. 36-39). As to the third complaint, alleging a breach of Article 8(1)(b) CTMR due to an incorrect comparison of the goods and services, the Court confirmed the Board’s reasoning that the nature, end users and customers (and methods of use and distribution channels) of the opponent’s ‘skins, leather, imitations of skins and leather’ in Class 18 and ‘tanning services’ in Class 40 on the one hand and the applicant’s finished products in Classes 18, 20, 24 and 25 and commercial exhibition and retail-related services in Class 35 on the other are clearly different. The evidence filed shows that the opponent’s hides and tanning services are targeted at undertakings which, in turn, produce finished articles of various kinds to which they affix their own trade mark (thereby removing, where one exists, the trade mark of the hide supplier), so that the final consumer of these articles is not accustomed to establishing a business link between the producers thereof and the relevant skin suppliers (Paras. 53-55). Finally, as to the opponent’s complaint alleging that the Board would have infringed the provisions of Article 8(4) CTMR and of Article 8 of the Paris Convention relating to the protection of company names and trade names, the Court noted that the opponent had not given specific arguments that would have allowed to verify the applicability of the provisions of Article 8(4). The Court then stated that Article 8 of the Paris Convention, while establishing the obligation for the contracting Members to protect trade names, does not specify either the extent or the conditions of this protection, this rather generic provision of the Convention being insufficient to establish rights that could be directly invoked before the EU Courts (Paras. 67-70).

Cases T-331/10 and T-416/10; Yoshida Metal Industry Co. Ltd v OHIM; Judgments of 08/05/2012; Language of the cases: EN

Keywords: Technical result, graphical representation, figurative trade mark

RESULT: Actions upheld (BoA decisions annulled)

FACTS: The figurative marks of a surface with black dots, represented below, were registered as CTMs for goods in Classes 8 and 21, inter alia, knives. Applications for invalidity were filed based on Article 52(1)(a) in conjunction with Article 7(1)(e)(ii) CTMR. The Cancellation Division (CD) dismissed the applications for invalidity. The Board of Appeal upheld the invalidity applicant’s appeal, considering the black dots as dents necessary to obtain a technical result, namely preventing the hand holding the knife handle from slipping. The Board also referred to two patents in that respect. The CTM owner filed actions before the General Court.

Contested CTMs

Image not found T-416/10
T-331/10

SUBSTANCE: Insofar as the CTM owner claims that the GC should confirm the decisions of the CD and also confirm the validity of the CTMs, the GC found these claims to be inadmissible as they had the mere objective of obtaining confirmatory or declaratory rulings (Article 65 CTMR). As regards the claim for annulment of the Board’s decisions, the GC referred to the wording of Article 7(1)(e)(ii) CTMR as well as to its underlying public-policy interest, namely to preclude registration of shapes whose essential characteristics perform a technical function, which, if registered, would limit the ability of competitors to supply a product incorporating such a function or at least limit their freedom of choice in regard to the technical solution (Para. 26). The GC found that Article 7(1)(e)(ii) CTMR applies to any sign, whether two- or three-dimensional, where all the essential characteristics of the sign perform a technical function (Para. 27). As regards the contested CTMs as such, the Court found that the concave character of the black dots did not form part of the contested marks as filed and registered. The graphic representations of the marks did not suggest that the black dots represent dents rather than a figurative pattern, and the registrations were not accompanied by any description to that effect. The GC ruled that in concluding that the dots were concave in character, the Board of Appeal did not refer to the signs as filed (i.e. their graphical representations), but, erroneously, to representations of the goods actually marketed (Para. 30). Furthermore, Article 52(1)(a) CTMR covers trade marks to which Article 7 CTMR applied at the time of their filing. This rules out consideration of the actual use made of the trade marks following their registration. ‘Reverse engineering’, i.e. finding out what the marks really represent based on elements other than the relevant applications, is contrary to applicable legislation (Para. 33). The Board’s decisions were annulled.

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