May 2012

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

Opposition

Article 8(1)(b) CTMR – A DISCLAIMER DOES NOT AVOID LIKELIHOOD OF CONFUSION

Decision of the First Board of Appeal of 29 March 2012 in Case R 2499/2010-1 (EN)

The applicant sought to register the figurative mark ‘ACETAT SILICON 101E’, in the colours red, yellow and black, as reproduced hereunder for goods in Classes 1, 4 and 17.

The opponent filed a notice of opposition against all the goods of the CTM application pursuant to Article 8(1)(a) and (b) CTMR, based, inter alia, on earlier international registration No 985 931, ‘101’, registered for goods in Classes 1, 2, 4 and 17.

On 4 December 2009, the applicant filed an additional request to disclaim the element ‘101’ in the contested mark, this was considered inadmissible by the opponent.

The Opposition Division upheld the opposition in its entirety.

The applicant filed a notice of appeal.

The Board stated that the appeal was unfounded because there is a likelihood of confusion between the marks. The Board finds that the goods included in the conflicting marks are identical. With regards to the signs in question, even if the applicant disclaimed the element ‘101’, the Board notes that disclaimers have no influence on the assessment of the present case. The purpose of disclaimers (as mentioned in Article 37(2) CTMR) is that of overcoming absolute grounds for refusal.
The assessment of the similarity of the marks must be based on the overall impression created by them as represented, bearing in mind, in particular, their distinctive and dominant components.

As stated by the Opposition Division, consumers will recognize the words ‘ACETAT’ (from ‘acetate’, a derivative of an acid) and ‘Silicon’ (a chemical element) as descriptive of the products at issue or of their contents. Therefore, it can be assumed that they will focus on the number ‘101’ with the letter ‘E’ when regarding the mark applied for. The lack of distinctive character of this element in relation to the goods has not been proven by the applicant. Therefore, it is the only distinctive element in the mark applied for. This gives rise to a visual and phonetic similarity between the marks in dispute which are similar overall.

Therefore, the appeal is dismissed.

CANCELLATION OF AN IR DESIGNATING THE EU AT THE REQUEST OF THE HOLDER CORRESPONDS TO A WITHDRAWAL OF THE OPPOSED CTM APPLICATION

Decision of the Fourth Board of Appeal of 16 April 2012 in Case
R 384/2011-4

The Opposition Division upheld the opposition against international registration designating the European Union No W01 002 266 for the mark in standard characters ‘ED HARDY’ based on, inter alia, the opponent’s Community trade mark No 6 110 886 ‘HARDY’ both covering goods in Class 33.

The IR holder filed a notice of appeal.

On 26 January 2012, WIPO notified the Office that international registration designating the EU No W01 002 266 had been cancelled for all the goods and services at the request of the holder.

The Board found that as a consequence of the cancellation of the IR designating the EU against which the opposition was filed, the holder’s appeal has become without object and should be closed accordingly.

Furthermore, the cancellation of the international registration at the request of the holder leads to the cancellation of the international registration for all the designated contracting parties for all the goods and services. In terms of Article 85(3) CTMR, this amounts to a voluntary termination of the proceedings by the holder and corresponds to a withdrawal of an opposed CTM application.

The Board closed the opposition and appeal proceedings.

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New Decisions from the Boards of Appeal