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 LATEST TRADE MARK AND DESIGN NEWS FROM LUXEMBOURG
A: European Court of Justice (ECJ): Appeals from decisions of the Court of First Instance, Article 63 CTMR
A-1: JUDGMENTS
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A-2: NEW APPEALS
Travatan/Trivastan: C-412/05.P. - Appeal from T-130/03.
A-3: DEVELOPMENTS IN PENDING CASES
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B: ECJ: Preliminary Rulings
B-1: RULINGS
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B-2: NEW CASES
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B-3: DEVELOPMENTS IN PENDING CASES
Elizabeth Emanuel: C-259/04; Report for the hearing (rapporteur: J. P. Puissochet;
undated; November 2005).
Keywords: Deceptiveness of a trade mark. - Trade marks: liability to mislead the public. -
Assignment: of a trade mark together with the business.
C: Court of First Instance (CFI): Judgments on appeals against decisions of the
OHIM, Art. 63 CTMR
C-1: EX PARTE
Lemonade bottle (3D) or Almdudler (3D): T-12/04 of 30 November 2005 (action dismissed).
Keywords: 3D sign/distinctiveness/reference market. - 3D sign/distinctiveness/product of periodic demand. - 3D sign/bottle/coloured content (impact of).
Appeal from a decision of the 2nd Board of Appeal which dad confirmed a decision of the examiner who rejected the application, in class 32, for a lemonade bottle with patterned elements as being devoid of distinctive character. The 2nd Chamber (Pirrung, Meij, Pelinánova) rejected the appeal.
Assessing distinctiveness of signs made up of the shape of the product itself or its packaging (in the case of liquids) is more complicated than assessing distinctiveness of words or figurative elements (nr. 25).
In assessing distinctiveness of the shape of a bottle, firstly, the particularities of the market concerned must be taken into account (perception by the reference consumers in the respective sector of business). However, no overly sophisticated approach shall apply: No separation of a specific sector as concerns "lemonades made of herbs" within the lemonade trade (nr. 19). - Degree of consumer perception is depending on the kind of product (Nr. 22).
When it is claimed that the colour of the content of a bottle bears impact on the question of distinctiveness of the shape of the bottle, such colour(s) must be formally claimed in the CTM application under Rule 3 (5) of the Implementing Regulation (nr. 44).
Referred: Patterned glass (Glaverbel), T-36/01 of 9. 10. 2002, ECR 2002 II-3887. - Ovoid tablet, T-194/01 of 5. 3. 2003, ECR 2003 II-383. - Nestlé Waters, T-305/02 of 3. 12. 2003, ECR 2003 II-5207. - Beer bottle, T-399/02 of 29. 4. 2004.
Link to cases
Dyson (vacuum cleaner case, 3D): T-278/02; Order of 14 November 2005 (no need to
adjudicate).
The applicant withdrew its application for a Community trade mark for "a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner". Case closed.
Link to cases
C-2: INTER PARTES
Cristal Castellblanch/Cristal: T-29/04 of 8 December 2005 (action dismissed).
Keywords: CFI proceedings: Submittal, for the first time, of legal material before the court. - Scope of inspection of the case at opposition. - Limitation of CTM application at the appeal stage. - Use requirement: concrete use different from registration. - Reputation: reference consumers.
The CTM application consists of a combination (figurative elements and the words CRISTAL CASTELLBLANCH) in class 33. The invoked earlier right is the wordmark CRISTAL registered in most of the EU-15 Member States in class 33.
The opponent claimed reputation in Belgium, France, the UK and Germany for "wines from Champagne". The opposition division maintained the opposition on the basis of likelihood of confusion, relying solely on the French right. - notwithstanding that the CTM applicant and appellant limited its application to "Spanish sparkling wines from the cava variety", the 2nd Board confirmed the initial decision. Genuine use of the French right was established (R 37/2000-2 of 17. 11. 2003).
The Third Chamber of the CFI (Jaeger, Tiili, Czúcz) dismissed the appeal.
- The Chamber confirmed that "legal" material may be produced for the first time before the court (in this case, references from national jurisprudence).
- As regards use different from the sign as registered, the court accepted the particularities which exist in the wine trade: where the company name or the manufacturer's name is added to the mark as registered, that practice is acceptable as long as the distinctive quality of the mark as such is not affected.
- As concerns reputation claimed for a mark for wines and sparkling wines etc.: The survey must show renown not only as regards specialized traders etc. but also as regards the general public ("average consumers").
Link to cases
Arthur et Felicie/Arthur: T-346/04 of 24 November 2005 (action dismissed).
Keywords: CFI proceedings: documents presented for the first time before the Court/Differentiation made between facts and legal issues. - CFI proceedings: presentation of legal issues/national case law admissible. - Likelihood of confusion: prior co-existence of the conflicting signs on the national market. - Comparison of goods: identity. - Similarity of marks: word combination containing conflicting earlier wordmark (stylised). - Likelihood of confusion: enhanced recognition of the earlier mark in the market place.
The CFI (Third Chamber; Jaeger, Tiili; Czúcz) dismissed the action against a decision of the 1st Board of Appeal of 7. 6. 2004 (R 393/2003-1).
(a) Documentation presented for the first time before the CFI / Facts:
" (19) Those documents, produced for the first time before the Court, cannot therefore be taken into consideration. The purpose of actions before the Court of First Instance is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 63 of Regulation No 40/94, so it is not the Court's function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, without it being necessary to assess their probative value (Case T-10/03 Koubi v OHIM - Flabesa (CONFORFLEX) [2004] ECR II-0000, paragraph 52; Case T 399/02 Eurocermex v OHIM(Shape of a beer bottle) [2004] ECR II-0000, paragraph 52; Case T-396/02 Storck v OHIM(Shape of a sweet) [2004] ECR II-0000, paragraph 24; and Case T-164/03 Ampafrance v OHIM - Johnson & Johnson (monBéBé) [2005] ECR I-0000, paragraph 29). "
(b) Documentation presented for the first time before the CFI / "Legal material":
" (20) Annexes 15 and 21 respectively set out a decision of the First Board of Appeal of 25 July 2001 and a judgment of the Tribunal de grande instance de Paris (Paris Regional Court) of 23 January 2004. Although produced for the first time before the Court of First Instance, those documents are not strictly evidence but relate to OHIM's usual practice in reaching decisions and to national case-law, to which, even after the procedure before OHIM is complete, a party has the right to refer. "
(c) Identity of goods = goods of the one mark contained in wider list of the other mark.
" (34) Furthermore, where the goods covered by the earlier mark include the goods covered by the trade mark application, those goods are considered to be identical (see, to that effect, Case T-104/01 Oberhauser v OHIM - Petit Liberto (Fifties) [2002] ECR II-4359, paragraphs 32 and 33).
(35) It should be noted that the comparison of the goods must relate to those covered by the registration of the trade marks in question and not to those for which the trade mark has been used unless, following an application made under Article 43(2) and (2) of Regulation No 40/94, it is apparent that the earlier mark has been used in relation to part only of the goods or services for which it is registered. In that case, for the purposes of consideration of the opposition, the earlier mark is deemed registered only for that part of those goods. No such application has been made in the present case. Accordingly, the goods covered by the earlier mark which are to be taken into consideration in a comparison of the goods are all those for which that trade mark was registered. "
(d) Impact of co-existence of the marks at the national level, prior to the conflict before the OHIM
" (63) It is true that it is not impossible that such co-existence may possibly reduce the likelihood of confusion found by OHIM between two conflicting marks. Nevertheless, such a situation can be taken into consideration only if, at the very least, during the procedure concerning the relative grounds of refusal before OHIM the applicant for the Community trade mark has duly shown that that co-existence was based on an absence of likelihood of confusion in the mind of the relevant public between the French trade mark ARTHUR ET FELICIE and the intervener's earlier mark on which the opposition is based and unless the French mark ARTHUR ET FELICIE and the conflicting marks are identical (see, to that effect, Case T-31/03 Grupo Sada v OHIM - Sadia (GRUPO SADA) [2005] ECR II-0000, paragraph 86).
(64) In the present case, it is sufficient to state that the applicant's French trade mark and the intervener's earlier mark are not identical. Furthermore, the applicant has not shown that their co-existence was based on an absence of likelihood of confusion. It is apparent from the file that the French mark was registered in 1994 and that the intervener brought an action for counterfeiting before the Tribunal de grande instance de Paris in 1988 against the French mark ARTHUR ET FELICIE. By its judgment of 23 January 2004, the Tribunal de grande instance annulled that trade mark. That judgment was confirmed by the judgment of the Cour d'appel de Paris (Paris Court of Appeal) of 11 May 2005. That clearly shows that the alleged co-existence is not peaceful. That consideration is not called into question by the fact that the action for counterfeiting was brought only four years after the registration of the French mark ARTHUR ET FELICIE, in that the applicant has failed to show that the intervener was actually aware of that mark before 1998, from the time it was lodged.
(65) Furthermore, the applicant's arguments with regard to the renown of the mark sought and the fact that since the mark ARTHUR ET FELICIE was lodged in France and clothing was marketed under that mark in its catalogue from 1994 the applicant has made peaceful use of its mark without incident and, more particularly, without any claim from any other company to disturb that use are not sufficient. Between 1994 and 1998 more than 11 million catalogues were distributed in France, generating a turnover of more than EUR 35 million for the trade mark ARTHUR ET FELICIE, which has therefore become a truly recognised mark, associated by the public with the Vertbaudet catalogue and with the applicant, thus demonstrating the lack of likelihood of confusion. "
Link to cases
Online Bus/Bus: T-135/04 of 24 November 2005 (action dismissed).
Keywords: CFI proceedings: limitation of claim as compared to OHIM proceedings. - Use requirement: use of earlier national right different from registration. - Use, of earlier national right: impact of national law. - Similarity of marks: earlier figurative mark comprising part of the subsequent sign. - Similarity of marks: phonetical similarity. - Likelihood of confusion: close aural similarity outweighs visual differences.
Whereas the CTM application is a word mark (Online Bus, in class 35), the invoked earlier marks are figurative signs, comprising, inter alia, the word BUS (in class 35). The opposition was allowed by the 4th Chamber (Legal, Lindh, Vadapalas).
(a) Limitation of initial claim before the Court (possible)
" (13) This request must be interpreted as meaning that the applicant is merely seeking a partial annulment of the contested decision (see, to that effect, Case T-194/01 Unilever v OHIM (Ovoid tablet) [2003] ECR II-383, paragraph 14). Such a request is not, as such, contrary to the prohibition in Article 135(4) of the Rules of Procedure of the Court of First Instance on changing, before the Court, the subject-matter of the proceedings before the Board of Appeal (see, in support, the Ovoid tablet judgment, paragraph 15). The applicant must therefore be considered to have withdrawn its application to the extent that it requested the annulment of the contested decision in respect of services other than the services 'market research and market analysis'. "
(b) Use of earlier national right: national law not relevant
" (30) In this instance, given that the trade mark invoked in support of the opposition is a national trade mark, the subject of the first plea must first be clarified: in reality the applicant alleges that the Board of Appeal infringed the combined provisions of Article 43(2) and (3) of Regulation No 40/94. - (31) Next, it must be stated that, by virtue of the combined application of Article 15(2)(a) and Article 43(2) and (3) of Regulation No 40/94, proof of genuine use of an earlier national or Community trade mark on which opposition proceedings against an application for a Community trade mark are based also includes proof of use of the earlier mark in a form that differs in respect of elements which do not alter the distinctive character of that trade mark in the form registered (see, to this effect, the judgment of the Court of First Instance in Case T-156/01 Laboratorios RTB v OHIM - Giorgio Beverly Hills(GIORGIO AIRE) [2003] ECR II-2789, paragraph 44). - (32)
Consequently, the reference made by the applicant to national law is not relevant. "
(c) Use on the market different from sign as registered: Removal of a registered element from a combination mark in the present case immaterial. Assessments contained in numbers 34-41 of the judgement. Matratzen case referred, T-6/01, (2002) ECR II-4335 (ibid., paragraphs 33-35).
(d) Identity of one component of a sign with the other sign does not automatically constitute similarity (Matratzen doctrine confirmed)
" (57) According to settled case-law, the global assessment of a likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (see, by analogy, concerning the interpretation of Directive 89/104, the judgments of the Court of Justice in Cases C-251/95 SABEL [1997] ECR I-6191, paragraphs 22 and 23, and C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 25). - (58) In the case in point, it should be pointed out that one of the components of the signs at issue, namely the word 'bus', is identical. - (59) It should be noted in this connection that the fact that one component of the signs at issue is identical does not lead to the conclusion that the signs are similar unless it constitutes the dominant element in the overall impression created by each of those signs, such that all the other components are insignificant (MATRATZEN, paragraph 33). "
Link to cases
Kinji by Spa/Kinnie: T-3/04 0f 24 November 2005 (action dismissed)
Keywords: Procedural law: right to be heard, Article 73 CTMR. - Similarity of marks: earlier sign contained in subsequent combination. - Similarity of marks: strong stylizations and conceptual dissimilarities outweigh aural similarities.
The 5th Chamber (Vilaras, Martins Ribeiro, Jürimäe) confirmed dismissal of the opposition on the grounds of dissimilarity of the marks at issue despite identity/close similarity of the goods. KINJI by Spa is a combination with the word strongly stylised, and a device. The earlier sign KENNIE is a word mark. - As regards safeguarding the right to be heard vis-à-vis "new" arguments put forward by a Board of Appeal in its decision, the new argumentation can only be challenged if it relates to "an independent reason for the contested decision" (nr. 72 of the judgement).
Link to cases
Nicky/Noky: T-396/04 of 23 November 2005 (action dismissed).
Keywords: Similarity of marks: phonetic approach (impact of). - Similarity of marks: phonetic approach/findings on pronunciation on a national territory.
The CFI (First Chamber; Cooke, Labucka, Trstenjak) confirmed a decision of the 1st Board of Appeal which had revoked a decision of an Opposition Division. CFI confirmed that "NICKY" - "Noky", "NOKY/and device" are similar. - Specific weight was given to the last syllable "-ky" which would draw specific attention of French speakers.
Link to cases
Altex/Alrex: T-154/03 of 17 November 2005 (action allowed).
Keywords: Pharmaceutical products in class 5. - Eye drops and tablets. - Relevant public: Prescription by specialists/common usage. - Similarity of pharmaceutical products. - Similarity of marks for pharmaceuticals: assessment.
(a) Relevant public
" (44) In relation to the relevant public, OHIM, like the intervener, maintains that the medicinal products which are at issue in the case are prescribed by different specialists. However, the fact remains that these medicinal products are in sufficiently common usage to also be prescribed by general practitioners.
(45 Furthermore, since the applicant's tablets, like the intervener's eye drops, are to be taken by patients at home, the latter, as end users, are also part of the relevant public in the same way as pharmacists who sell those medicinal products in their pharmacies.
(46) Both the professionals in the medical sector (specialist doctors, general practitioners and pharmacists) and patients, contrary to the finding of the Board of Appeal, therefore form part of the relevant public. "
(b) Similarity of products
" (47) In relation to the comparison of products, it must be recalled that, in assessing the similarity of the goods or the services concerned, all the relevant factors relating to the goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (Canon, paragraph 23). -
(48) In the present case, as the applicant correctly points out, the products in question have the same nature (pharmaceutical products), purpose (treatment of human health problems), are directed at the same consumers (professionals in the health sector and patients) and use the same distribution channels (typically pharmacies).
(49) However, as stated by OHIM and the intervener, these products are neither complementary nor in competition with each other. Having regard to the elements of similarity previously mentioned, this difference between the goods in question is not, however, such that it excludes, of itself, the possibility of a likelihood of confusion. - (50) Furthermore, the intervener's argument that the products, being administered differently, are not similar must be rejected. That difference is of less significance in the present case than the fact that the products concerned have a common nature and purpose. - (51) Accordingly, as the similarities between the goods outweigh the differences, it must be concluded that there exists (...) some degree of similarity between the goods in question."
(c) Similarity of marks
" (54) However, as observed by the Opposition Division, the two signs are composed of a word containing five letters. The only difference is that one includes the letter 't' between the letters 'r' and 'e' and the other has an 'l' between the letters 'a' and 'r'. Aside from this difference, four of the five letters are identical and are placed in the same order: 'arex'. Therefore, the visual similarity between the signs is very high. - (55) Also, at an aural level, the signs have the same structure, that is, two syllables each, the first comprising two letters and the second having three. Each sign begins with the letter 'a' and finishes with the suffix 'ex'. Further, the second and third letters of each sign are consonants, one of which is common (the letter 'r').
(56) Finally, at the conceptual level, while OHIM maintained at the hearing that professionals would make the connection between the sign ARTEX and the French word 'artery', which the Opposition Division considered to be insufficient to discount the visual and aural similarities between the signs, it is appropriate to point out, firstly, that supposing this to be the case, professionals are not, as has been stated at paragraphs 45 and 46 above, the only relevant public and, secondly, that the public in the territories concerned, being the Benelux countries, Portugal and France, is not exclusively French-speaking. - (57) In the circumstances it must be concluded, contrary to the finding in the contested decision, that there exists a high degree of similarity between the two signs. "
(d) Likelihood of confusion, reinforced
" (60) Finally, the existence of that likelihood of confusion is reinforced by the fact that the relevant public only rarely has the chance to make a direct comparison between the different marks but must place its trust in the imperfect picture of them which it has kept in its mind (Lloyd Schuhfabrik Meyer, paragraph 26, and Case T-115/03 Samar v OHIM - Grotto(GAS STATION) [2004] ECR II-0000, paragraph 37). "
Link to cases
Aeroclipse/Eclipse: T-176/03; case removed from the register.
Order of the President of the 2nd Chamber of 14 November to remove the case from the register. - The parties, Trudell Medical. Int. and the intervener, Fisons Ltd., have reached an agreement. The Office agreed to discontinuance of the proceedings.
Link to cases
C-3: STATE OF PLAY IN PENDING CASES
Vixacor/Vitacor: T-326/05. - Office response filed.
Fliegen zum Taxipreis: T-325/05. - Office response filed.
Shape of a guitar: T-317/05. - Office response filed.
Limoncello di Capri/Limonchelo: T-210/05. - Office response filed.
Respicur/Respicort: T-256/04. - The Office filed its answers to the questions put by the CFI.
C-4: NEW APPEALS
EX-PARTE
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INTER PARTES
La Kings/King: T- 414/05 (appeal from R 371/2003-4; EN).
Keywords: Likelihood of confusion/Comparison of marks. - Similarity of marks: impact of conceptual identity.
The CTM application, in classes 16, 25 and 41, consist of a combination (a dominant heraldic figurative element) containing the words LA on the top and KINGS at the bottom. The earlier right, in class 25, consists of the stylised word KING. - An opposition division had upheld the opposition for class 25. The 4th Board confirmed the decision. - Conceptual identity outweighs visual dissimilarity.
Revian´s/Evian: T-407/05 (appeal from R 82/2002-4).
Keywords: notice of opposition/formal requirements. - Earlier right: evidence of existence/translations. - Opposition proceedings: evidence, translations = merits of the case (Chef, T-232/00, referred). - Scope of translations: Biomate, T-107/02, referred. - Principle of party disposition (A 74(1) CTMR). - Reputation mark: requirements of claim. - Goods and services: similarity. - National precedents: relevance
Appeal from R 82/2002-4 (DE) by which the 4th BoA had rejected an appeal against a decision by an Opposition Division which had rejected Evian's opposition.
CTM application: REVIAN´S (stylised; colours gold, black, white) in class 33, wine and sparkling wine. - EVIAN in class 32, mineral waters. - Board confirmed the Office's practice as regards use of a standard letter inviting the opponent to amend its notice of opposition within four months (no need for further communication as regards rectification of deficiencies). - The Opposition Division's assessment of similarity of goods differed from national precedents. - Board confirmed dissimilarity between mineral waters and wine and sparkling wine (Sergio Rossi, T-169/03, referred).
Manpower: T-405/05.
Keywords
Distinctiveness acquired by use. - Secondary meaning acquired in part of the European Union. - Invalidity proceedings: scope of inspection by a Cancellation Division. - Ex officio taking of evidence. - Evidence: taking of; relevant point in time as regards evidence on absolute grounds for refusal.
Appeal from R 499/2004-4 of 22. 7. 2005 by which the 4th BoA had dismissed an appeal against a decision of a Cancellation Division which had rejected a request for invalidation based on absolute grounds).
The CTM was registered for goods and services in classes 9, 16, 35 (employment agency services; temporary personnel services), and 41 and 42. The CTM application had initially been accepted on the basis of evidence that the sign at issue had, before the application was made, acquired secondary meaning in the UK and in Germany.
Webmulti/Web: T-395/05.
Keywords:
Proof of use: requested for the first time at the appeal stage. - Similarity of goods: reference consumers. - Similarity of marks.
Appeal from R 895/2004-1 of 20. 6. 2005 by which the Board had rejected an appeal against a decision of an Opposition Division (Nr. 2462/2004) by which the OD had rejected the CTM application Webmulti for classes 3, 9, 25.
CTM application Webmulti in classes 3, 7, 8, 9, 16, 20, 21, 25, 30. - CTMs "Web" in classes 3, 25 and several earlier rights in various Member States, in classes 3, 9, 25. - As regards requests for proof of use, the Board referred to Mundicor (T-183/02 and T-184/02) and Flexi Air (T-112/03) as settled case law: It must be presumed that earlier rights have been used unless the applicant does not request prove of use. Request must be made at the earliest possible stage. - As regards comparison of the marks, the Board held that, as regards goods in classes 3 and 9, "Web" must be considered very distinctive and inventive.
NEW DECISIONS FROM THE BOARDS OF APPEAL
The cases can be found in our website.
A piece of advise: Please note that full number including slash has to be introduced in our database under 'Appeal Nº', without the letter 'R'.
e.g. Case R219/2004-1 has to be introduced under 'Appel Nº' as: 219/2004-1
Global figures for September 2005
Appeals pending on 30 September 2005: 1540
Appeals pending on 31 October 2005: 1510
Appeals filed in October 2005: 108
Appeals settled in October 2005: 136
EX PARTE
Absolute grounds for refusal - Examination proceedings - Distinctiveness - Figurative trade mark - Colour mark
Decision of the First Board of Appeal of 15 September 2005 in Case R 330/2005-1 (Italian)
R 330/2005-1  - The trade mark in question was applied for goods and services in Classes 9 and 28. The sign was qualified as a 'figurative mark' by the applicant, thus the colour is one of its components, but not the only one, and therefore - according to the applicant - the registrability of the particular trade mark should not be based on the criteria laid down in the Libertel judgment for colour marks, but on those generally applicable to ordinary figurative marks.
The trade mark does not contain any element that can confer on it the minimum distinctiveness required to circumvent the obstacle constituted by Article 7(1)(b) CTMR. Geometrical figures are not considered to be distinctive, according to the settled case-law of the Boards of Appeal because they are deemed to be too simple and commonplace to be able to fulfil the function of a trade mark.
Furthermore the applied trade mark's colour is also devoid of independent distinctiveness, but will be merely perceived as a decorative element or part of the design of the product.
A dark blue geometric figure applied to Class 9 goods will not be perceived by the average purchaser as the distinctive sign of the company which produces or markets them. The same applies for activities such as telecommunications services: the intangible nature of such services makes it all the more difficult for the average user to identify their business origin based on a simple coloured shape. The Board dismissed the appeal.
Absolute grounds for refusal - Examination proceedings - Descriptiveness - Practice of the national office - Distinctiveness acquired by use - First time on appeal
Decision of the First Board of Appeal of 7 September 2005 in Case R 195/2005-1
(English)
R 195/2005-1 AMERICAN MANICURE -The trade mark in question was applied for goods in Class 3 namely "nail care preparations for natural and artificial nails, nail polishes, nail coatings, nail tip and base coat polishes and preparations for producing natural or coloured coverings for nails".
The Board holds that the relevant public will have no difficulty in perceiving that the expression 'AMERICAN MANICURE' refers to a form of nail care originating from the continent of America.
The mark applied for, which describes plainly and bluntly to the English speaking consumer in the United Kingdom and Ireland that the goods are to be used in the context of a style of form of treatment and care of fingernails that is uniquely American, is not registrable under Article 7(1)(c) CTMR and hence under Article 7(1)(b) CTMR.
The question of whether a sign may be registered as a Community trade mark must be assessed solely on the basis of the CTMR as interpreted by the Community Courts, and is not influenced by the practices of offices in third country jurisdictions.
The applicant requested, for the first time before the BoA, to be allowed to proceed to registration by virtue of Article 7(3) CTMR. In accordance with Article 62(1) CTMR the Board holds that it is appropriate to remit the case to the examiner for a full appraisal of the relevant evidence filed by the applicant.
The appeal was dismissed and the case was remitted to the examiner for further prosecution.
Absolute grounds for refusal - Examination proceedings - Distinctiveness - Letter
Decision of the Second Board of Appeal of 29 September 2005 in Case R 304/2005-2 (German)
R 304/2005-2  (Q) - The trade mark in question was applied for goods and services in Classes 29, 30 and 43. The Board holds that letters, in general, have the abstract capability to serve as trade marks.
The criteria for assessing the distinctive character of letter signs as such are no different from those applied to other categories of trade marks, thus a single letter may not be denied distinctive character in general terms and without examination of the individual goods and services listed. In this particular case the deviation from the usual way of writing the letter 'Q' stands out immediately as a clear departure from its usual form and there is no chance of it being overlooked or deemed simply a trivial printing error, especially as the adaptation of letters for use on the market as trade marks is extremely common.
Also the possible ambiguous and enigmatic descriptive significance of the letter, to which the examiner alluded, would in any case require considerable analytical effort to uncover, is considered unclear with respect to the claimed goods and services.
The Board thus finds the application, as a fanciful adaptation of a letter without any specific meaning, to have the minimum degree of distinctive character necessary to be eligible for registration in connection with the claimed goods and services.
The contested decision was annulled.
Absolute grounds for refusal - Examination proceedings - Distinctiveness - Colour - Distinctiveness acquired by use - Relevant territory
Decision of the Second Board of Appeal of 6 October 2005 in Case R 255/2004-2 (English)
R 255/2004-2  (YELLOW) (Colour Mark) - The trade mark in question was applied for goods and services in Classes 7 and 12, which included "power operated machines and apparatus all for the digging etc..."."vehicles; agricultural vehicles; tractors...etc".
The sign applied for consists of the colour yellow, designated in abstract and without contour. Yellow is a primary and signalling colour and is also used for safety and signalling purposes. As it is commonplace in the trade in connection to the goods applied for, the colour yellow will not enable the relevant public to distinguish immediately the applicant's products from products in similar shades of yellow with a different commercial origin. Instead, it will be perceived as an element of the finish of the goods in question.
The colour yellow has no inherent capacity to function as an indicator of origin for the type of products in question. Regarding the evidence filed to prove acquired distinctiveness through use, such evidence does not comply with the obligation to demonstrate that the relevant section of the public perceives the mark applied for, in itself and independently of the word and figurative marks with which it is accompanied in the advertising and at the point of sale, as indicating the commercial origin of the products and services in question. Furthermore the press cuttings (mainly from the UK) cannot be considered representative for the whole territory of the Community.
The appeal was dismissed
Absolute grounds for refusal - Examination proceedings - Distinctiveness - Colour - Distinctiveness acquired by use - Relevant territory
Decision of the Second Board of Appeal of 6 October 2005 in Case R 758/2004-2 (English)
R 758/2004-2  (YELLOW/BLACK) (Colour Mark) - The trade mark in question was applied for goods and services in Classes 7, 12 and 37, which included "power operated machines and apparatus all for the digging etc....vehicles; agricultural vehicles; tractors and repair and maintenance services; repair and maintenance of power operated machines and apparatus; repair and maintenance of vehicles, agricultural vehicles and tractors". In the present case the sign applied for consists of the colours yellow and black, designated in the abstract and without contour.
Yellow is a primary and signalling colour and is also used for safety and signalling purposes. The achromatic colour black does not add anything remotely distinctive to the colour yellow. As it is commonplace in the trade in connection to the goods applied for, the colour yellow will not enable the relevant public to distinguish immediately the applicant's products from products in similar shades of yellow with a different commercial origin.
Instead, it will be perceived as an element of the finish of the goods in question. As far as the distinctive character of the mark in connection to the services is concerned, the Board stresses that the services are still not sufficiently specific and restricted to justify the granting of an extensive monopoly to the applicant, which would be incompatible with a system of undistorted competition.
Therefore the colours yellow and black have no inherent capacity to function as an indicator of origin for the type of products and services in question. Regarding the evidence filed to prove acquired distinctiveness through use, such evidence does not comply with the obligation to demonstrate that the relevant section of the public perceives the mark applied for, in itself and independently of the word and figurative marks with which it is accompanied in the advertising and at the point of sale, as indicating the commercial origin of the products and services in question.
Furthermore the press cuttings (mainly from the UK) cannot be considered representative for the whole territory of the Community. The appeal was dismissed
Absolute grounds for refusal - Examination proceedings - Descriptiveness - Laudatory - Distinctiveness acquired by use
Decision of the Fourth Board of Appeal of 6 September 2005 in Case R 567/2004-4 (French)
R 0567/2004-4 FINESSE DE CHOCOLAT - The trade mark in question was applied for goods in Class 30 namely "chocolate, chocolate products and confectionery; chocolate-based drink".
The Board holds that the trade mark 'FINESSE DE CHOCOLAT', applied for in the case at hand, does not possess the required minimum level of distinctiveness, since this phrase is understood by the relevant consumers only as a laudatory business reference to the essential quality of the goods claimed under class 30. Even if the phrase 'FINESSE DE CHOCOLAT' is not in common use in the French language, nevertheless the French-speaking public understands it as being laudatory.
Thus, the trade mark 'FINESSE DE CHOCOLAT' is devoid of the distinctive character necessary for registration. Finally, in the Board's opinion, the documents supplied by the appellant in order to prove acquired distinctiveness, taken as a whole, do not make it possible to establish that, on the date of filing of the application, the trade mark concerned had acquired distinctive character sufficient to apply to it the exception provided for in Article 7(3) CTMR. The contested decision was confirmed.
Absolute grounds for refusal - Examination proceedings - Sound mark - Distinctiveness
Decision of the Fourth Board of Appeal of 8 September 2005 in Case R 295/2005-4 (German)
R 0295/2005-4  (HEXAL - sound mark) - The trade mark in question was applied for goods in Class 5. The description of the application (item 43 on the form) was worded as follows: Spoken wording: 'Arzneimittel Ihres Vertrauens: HEXAL' [HEXAL - medicine you can trust].
The Board holds that sonograms (sound spectrograms) must in principle be accepted as graphic depictions of sound marks for the purposes of Article 4 CTMR, especially if, as in this case, the sound mark involves not music, but spoken (not sung, for example) language that cannot be depicted in conventional music notation.
In this situation, only graphic depictions which are precisely not musical notation are conceivable and thus the present depiction must therefore be regarded as sufficient. Furthermore the phonetic sequence 'Arzneimittel Ihres Vertrauens: Hexal' possesses the necessary and sufficient minimum level of distinctiveness.
This is true firstly in view of the accumulation of unmelodic consonants (rz, x) at the start and end of less than three seconds of speech, but especially also because the spoken name Hexal is a proper noun and no other word exists in German which is pronounced in this way. Nevertheless the Board gives the following notice: "The slogan 'Arzneimittel Ihres Vertrauens: Hexal' shall, on the basis of this registration, only be protected as a sequence of sounds as represented by the sonogram.
The scope of the protection for such a mark does not extend to the written statement: 'Arzneimittel Ihres Vertrauens: Hexal'. Applying to register a spoken statement, a slogan, as a sound mark cannot remedy or circumvent a word mark's ineligibility for registration". The contested decision was annulled.
INTER PARTES
Opposition proceedings - Relative grounds for refusal - Likelihood of confusion - Comparison of signs - Similarity of the signs -Visual similarity - Aural similarity - Right of defence
Decision of the Fourth Board of Appeal of 1 September 2005 in Case R 763/2004-4 (German)
R 0763/2004-4 PEDION / MEDION -The contested decision should have been sent to the respondent by registered letter, but this attempt at notification was unsuccessful. No further attempt at notification on the part of the Opposition Division could be inferred from the file.
However, the incorrect and therefore invalid notification of the contested decision to the respondent does not stand in the way of this decision in the appeal proceedings. The notice of appeal, statement of grounds and request for a response to the notice of appeal were publicly notified to the appellant in due form.
Visually, the only difference between the trade marks lies in their initial letters, 'P-' and 'M-'. Phonetically the ends of the signs are more important than the initial sounds in the aural perception of the German trade circles targeted, since they have a much more profound effect on the sound of the signs by means of their three vowels (E-I-O).
On account of the high degree of visual and aural similarity between the signs under comparison and contrary to the contested decision, the signs under comparison can therefore be said to display a high degree of similarity.
The Opposition Division will have to reach a new decision on the opposition and also address the similarity of the opposing goods and services for the first time. The appeal was allowed and the case remitted to the Opposition Division for further prosecution.
Procedural issues
Opposition proceedings - Statement of reasons - Principles governing the procedures - Substantial procedural violation
Decision of the First Board of Appeal of 15 September 2005 in Case R 1139/2004-1 (English)
R 1139/2004-1  / MARTINI - The Community trade mark application was filed for goods in Class 11. The opponent's trade mark is registered for 'all goods included from Class 1 to Class 34'. The Opposition Division adopted a decision whereby it allowed the opposition and rejected the CTM application quoting the existence of likelihood of confusion due to the similarity of the signs in question and the identity of the goods compared.
The Board notes that the opponent duly checked, in the notice of Opposition, two boxes as 'grounds of opposition': 'likelihood of confusion' and 'unfair advantage/detriment to distinctiveness or repute'.
In the Explanation of Grounds that was submitted later, the opponent starts by saying that the opposition 'is based on an earlier registered mark with reputation in a Member State, namely with respect to Class 33 products'. Immediately thereafter, the opponent goes on to argue its case on the basis of Article 8(5) CTMR.
At no place, did the opponent cite Article 8(1)(b) CTMR The Board's overall assessment is that the opponent certainly claimed two separate grounds of opposition, but only intended, in fact, to rely on the second.
Considering that a likelihood of confusion is not self-explanatory and the onus lies on the opponent to show that it may exist, it follows that this ground of opposition should have been dismissed by the Opposition Division as unsubstantiated and, therefore, unfounded. The procedural provision that was infringed here was Article 74(1) CTMR. The contested decision was annulled and the case was remitted to the Opposition Division for further prosecution under Article 8(5) CTMR.
Opposition proceedings - Procedural issues - Principles governing the procedures - Substantiation of earlier right - Earlier trade mark - Renewal - Validity of earlier mark
Decision of the Fourth Board of Appeal of 22 July 2005 in Case R 254/2004-4 (German)
R 0254/2004-4 MACCA / Magda - The Opposition Division dismissed the opposition because of a lack of likelihood of confusion. The question of whether the opposing trade mark had been lawfully extended could be left open since, as the contested decision explained in greater detail, the signs under comparison were not even similar. The Board holds that the Opposition Division should not have left the question of the validity of the earlier right open; however, in the end the Opposition Division was right to dismiss the opposition, since the appellant failed to provide evidence of the validity of the earlier right. The question of evidence of the validity of the earlier right is a question that logically and therefore legally precedes the likelihood of confusion and that requires answering first. The Opposition Division had drawn the attention of the appellant in an abstract, general but unequivocal manner to the need (also) to submit evidence of the extension of the term of protection of its earlier right. The opponent failed to do so and consequently the Opposition Division should have dismissed the opposition as unfounded simply for lack of evidence of the (continued) existence of the opposing trade mark instead of proceeding with an examination on its substance and in subsequent dismissal for lack of likelihood of confusion. The contested decision therefore dismissed the opposition on erroneous grounds, though ultimately correctly. The appeal was, therefore, dismissed. The opposition decision was upheld.
Opposition proceedings - Relative grounds for refusal - Likelihood of confusion - Comparison of signs - Similarity of the signs -Visual similarity - Aural similarity - Identity of goods and services - Functional continuity
Decision of the Fourth Board of Appeal of 20 September 2005 in Case R 0655/2000-4 (French)
R 0655/2000-4  / et al. - The contested decision must be reversed in that it considered as the opponent a company which is not the respondent, consequently attributing to the latter, in contradiction to Article 42(1)(a) CTMR, a prior right it could not be considered to own on the date the opposition was filed. In the contested decision, this criterion of belonging to the opposing company (the respondent) meant only one opposable right was accepted, and, conversely, two others were ruled out (French trade marks No 1664673 and No 1308133). To the extent that this criterion was falsely determined, the question arises as to whether the contested decision should be considered as final with respect to the exclusion of these two other rights, or whether it could also be declared to be unfounded in respect thereof. However, the Board believes that an opposition claim based on the earlier French trade marks No 1664673 and No 1308133 can be considered to be invoked in the present case before the Boards owing to the functional continuity between the authorities of the OHIM, confirmed by the Court of First Instance, in the KLEENCARE case. Thus, the earlier trade mark No 1 664 673 and the application identically refer to 'French wine, namely champagne' in class 33. Visually, each of these trade marks consists of a rectangular label including a rectangular cartouche with a gold double border showing centrally and in another cartouche the name 'MARTEL'. Both the name 'G.H. MARTEL' and the name 'GEORGES MARTEL' have a strong attractive element: a surname. In so far as the names 'G.H. MARTEL' and 'GEORGES MARTEL' stand out visually and conceptually, the consumer pronounces them and remembers them more easily than the other words of the trade mark. The two trade marks are therefore visually and conceptually similar, and also aurally. The appeal was allowed.
R 0659/2000-4 / et al. - (see R0655/2000-4 above).
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