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Facing the challenges ahead: the first reactions to the results of the user satisfaction survey The Office immediately started to address the problematic issues identified in the survey and is in the process of finding the best solutions with regard to the following six areas: Quality of decisions Ease of contact with staff and access to information/web services Administrative procedures Appeals Complaints Payment/reimbursement of fees: current accounts In conclusion, the Office is committed to improving its performance and practice but its success also depends on the active engagement of users whose input helps the Office to stay on the right track and to adjust overall objectives and practice accordingly. The Office will organise meetings with users and it is already planning the next survey, which will take place from mid-December over a one-month period. The full document on the Office’s response to the User Satisfaction Survey can be accessed at http://oami.europa.eu/en/office/survey.htm
“My role has been to assist my colleagues in the management team define a series of specific management actions which respond to the messages we have received through the survey, if you like to act as the bridge between the users’ views (which Ingrid has helped us understand) and the organisation .”
“Very clear messages were sent by users about the quality of decisions, so whilst we are aware that we must not relax our efforts to deal with cases quickly, we must put new effort into defining quality standards and ensuring that they are adhered to. Further simplification of procedures is also important, and we have to improve our complaint handling procedure and become more easily accessible to users.”
“An excellent question, first of all I believe that, from what I can tell, there has been a change in people’s attitude. The staff at the Office is familiar with the survey results thanks to the presentations given to individual groups and it appears to be keen to bring about change. The users with whom I spoke were pleased to see that their comments are being taken seriously, that the Office is going to take them into account by planning to incorporate them into its Quality Management System and that it is already announcing the next survey. Now as to changes in specific areas, I think it is too early to point at specific items. It took some time to analyse the survey results, agree on specific actions and prepare the Office’s response to the survey results which elaborates on some of the proposed actions. This document was submitted to the Management Committee and other governing bodies in early June. However, as could be expected, the Office was not sitting back inactively, many actions to improve the situation had already been started at the time the survey was carried out and these continue at the present time, new actions are being introduced to enhance the performance of the Office and its interaction with its users. As these changes are ongoing, I would hope to see some results when the next survey is run.
“I should say first that a number of steps had already been taken to monitor and improve performance in this area. There have been internal measurements of decision quality in relation to both classification and absolute grounds for some time, for example. What is new is that we are setting out a road map towards a comprehensive definition of quality standards and a system for assuring compliance with these standards.”
“Thanks for asking, I will of course continue to monitor the progress made on the various actions undertaken as a result of the first survey. I will of course continue to monitor the progress made on the various actions undertaken as a result of the first survey. Continuing to collect feedback from our users on a more personal basis is another item on my list and last but not least I have started to work on the preparation of the next survey. |
Classification of Food Supplements, Substitutes and Additives Class 5 covers medical preparations, but also includes food for babies, food preparations for medical purposes, and nutritional additives for medical purposes. Classes 29 and 30 are the food classes, the goods divided between them; Class 32 covers non-alcoholic drinks. The difference between these classes becomes blurred when the goods in question seem to have some sort of medicinal purpose. A simplistic way of looking at this would be that you do not cook up a plate of food supplements for a dinner party: these are strictly for medicinal use. However it is possible that some foods have additives which boost their properties. How then would these be classified? The general rule here is that as food as such is classified in Class 29 or 30, and that food with added minerals or vitamins is no different to the food itself, and so “enhanced foods” will be classified in the same class. Although the additional properties of these foods may be health enhancing, they are essentially no different from normal foods, and will be consumed by the same public. This applies in the same way to “diet foods”, which are the same as the foods themselves, but with certain substances taken out. The same is also true of food substitutes- these are merely designed to replace the food itself, can be consumed by the same public, irrespective of medical needs, and will be classified in Class 29 or 30 according to their principal ingredients. Food supplements are different. Here the aim of the product is to give something to the consumer which is missing in his normal diet, or which has to be added to his diet for specific purposes. The substance which is missing or to be added cannot obviously be found in the consumer’s food alone, and therefore must be an additive; even if there is no evident medical necessity, these goods are classified in Class 5. The class heading for Class 5 includes “dietetic substances for medical use”; however it is clear from what has been shown above that these goods do not have to be for medical use to be classified in this class, but also for the health of the body. The term “food supplements”, for classification purposes, is construed as a substance presented in the form of a pill, a capsule, etc, and not as a food per se; they must therefore be proper to Class 5. The same is true of nutritional supplements and additives, which will only ever be proper to Class 5. Vitamin preparations, which could also be added to normal food, will also be proper to this class. It thus also follows that food and dietary supplements for sports performance enhancement also belong to this class: this shows that the supplements and additives present in Class 5 are not necessarily for medical purposes, but just supply what is lacking or what is needed. From this, it can be seen that dietetic products will also be included in Class 5. The “diet foods” referred to above are classified in Classes 29 or 30, but dieting products which are specially adapted for medical use are proper to Class 5. This includes appetite suppressants and digestives. These products should be differentiated from dietetic foods, which, although also classified in Class 5, are foods specially adapted for certain requirements, for example bread for diabetics or food for babies. By analogy with this, according to Office classification practice, all food additives (whether for medical purposes or not) are proper to Class 5. This is because they are seen as adding properties to the food that would otherwise not be present. It is important to stress that these food additives are not proper to either Class 29 or 30, as they are not seen as being foods per se; their purpose is irrelevant, and they belong to Class 5. There are, of course, exceptions. For example, protein for food, which might be thought of as an additive, is in fact proper to Class 29. Likewise glucose for food and gluten for food are proper to Class 30, in analogy with the sugar and wheat products which belong to that class. Also in Class 30 is honey, which leads to the inclusion of royal jelly and propolis in that class, both being products made by bees. As far as drinks are concerned, the same conclusions can be made: those which have a strictly medical purpose will go to Class 5, otherwise, whether energy drinks or health drinks, they will be in Class 32, for example, isotonic beverages (it should be remembered that the majority of these seem to be designed for consumption with a shot of something stronger, and most probably not for medical use on the dance-floor…). All of the items above in italics are included in the Eighth Edition of the Nice Classification. Some additional items may also be found in the Office’s classification database, EuroAce, which can be found at http://oami.europa.eu/euroace/euroaceservlet The Administration of Trade Marks and Designs Department (ATMDD) and the Trade Mark Department (TMD) no longer exist, and their tasks have now been redistributed between the newly created Trade Mark and Registry Department (TMRD) and the Trade Mark and Cancellation Department (TMCD). These new departments are organised as follows: Trade Mark and Cancellation Department - TMCD
Trade Mark and Registry Department - TMRD
The exact nature of the tasks and functioning of each of these departments can be consulted in the previous Alicante News article on this subject at http://oami.europa.eu/en/office/newsletter/06005.htm.
In terms of Community trade mark filings, the total of 83,561 CTM applications received from German businesses represents 16.46% of all Community trade marks filed at the OHIM since 1996.
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Community Design | The Panini case – the first judgment on the merits for Alicante’s Community design court
Panini España SA is the owner of the cited RCD for game board pieces, filed on 5 December 2003 and published on 12 March 2004 . Panini sought a declaration of infringement against Kellogg’s España SL, plus damages by way of compensation, for the putting into the market in November 2004 of similar gadgets known as “GIRACRASH”, inserted in cereals packages. The plaintiff considered its exclusive rights to be infringed, and also claimed for a breach of the 1991 Unfair Competition Law. Both companies had previously engaged in negotiations to launch a promotional campaign based on some of Panini’s pieces, although no deal was finally reached.
The court rightly settled that, since the defendant raised no counterclaim or plea of invalidity pursuant to Article 85(1) CDR, the RCD was presumed valid, irrespective of the fact that the registration procedure conducted by OHIM is a formal one without examining the novelty and the individual character of the design. The debate focused on determining if the infringing goods known as “GIRACRASH” produced in the informed user a different overall impression than that of the RCD. When referring to the protected design, the court correctly pointed that the description of the representation of a design does not affect the scope of protection of the design as such, pursuant to Article 36(6)CDR. When comparing both pieces, the first-instance court reached the conclusion that both consisted of a shape with six “arms” of similar size. However, it appreciated at least 4 areas where differences existed: outside perimeter, shape of the “arms”, link between the “arms” and small elevation in the back for spinning the allegedly infringing good. On this basis, the overall impression was determined to be different. The court underlined that neither the Regulation nor the Directive establish a certain threshold of differentiation, so that any sort of difference is sufficient. The overall impression was different, since, in the RCD, the curve lines prevailed forming the appearance of a star with six arms originated from an inner circle, while in the case of the Kellogg’s piece, the straight lines and the hexagonal shape prevailed, plus the existence of the central spinning point made a significant detail. As regards the degree of freedom of the designer, the court considered to be limited since such items require a central flat part where to stick cartoon characters or similar. In conclusion, the holder of the RCD could not prevent the use by Kellog’s of its pieces since the scope of protection of the RCD did not cover them. No infringement was, therefore, found. The court reminded that the scope of protection must be determined on the basis of the graphical representation of the RCD. As regards the unfair competition claim, the judge, quoting the Spanish Supreme Court’s case-law, confirmed that the unfair competition legislation complements the specific design legislation, and where such legislation does not provide protection, the court enters to determine whether the unfair competition law is infringed3. The first instance court “Juzgado No. 1” concluded that the claim of unfair advantage of the repute or the effort of the plaintiff embedded in its RCD was unfounded. Following an appeal filed by the plaintiff, Alicante ’s appellate court confirmed the judgment on 25 April 20064 , dismissing, therefore, all claims based on unfair competition law and on infringement of the Community design. 1 Sentencia (“Judgment”) in proceedings No. 292/2005 A, available at http://oami.europa.eu/en/design/aspects/cdcourt.htm.
On 6 December 2003, the President adopted the examination guidelines for design applications (available at http://oami.europa.eu/en/design/practical.htm ). One of such guidelines (under Section 6.1) establishes the duty for design examiners to substitute ex officio the wording used by the applicant, in order to indicate a product with an equivalent term belonging to the Locarno Classification, if the case is a straightforward case. The examiner must refrain from replacing the applicant’s wording with a more specific term. For example, “portable electronic apparatus” would be replaced by “portable electronic devices”. This practice has been implemented by the Designs Department by informing applicants (or their representatives), in the first notification issued to them, that the original indication has been replaced. The content of the notification is as follows: “…In accordance with Art. 36(2)(6) CDR the information contained in an indication of the products shall not affect the scope of protection of the design as such. In accordance with Art. 3(3) CDIR “the indication of products shall be worded in such a way as to indicate clearly the nature of the products, preferably using the terms appearing in the list of products set out therein.” The indication of product(s) [design(s) N° and N°] given in the application could not be found in the Locarno classification or in the corresponding databases prepared by the Office. Therefore, in accordance with section 6.1 of the Examination Guidelines the wording used in the application in order to indicate the product(s) has been substituted ex officio with the equivalent term(s) which can be found in the attachment below. The original indication of products is maintained in the file…” In short, the original indication of product is not recorded in the registration of the designs, only the replacement term is registered and published. The certificate of registration contains the replacement product indication, the original being kept only in the file. Should a third party wish to know what was the original indication, he/she may request an inspection of file (provided that the design is fully published). The original indication is not inserted in the notification of acceptance of registration or any other notification issued by examiners. The replacement decision is the result of the application of the cited examination guideline by examiners. Examiners are neither required to consult with nor to obtain agreement from applicants when replacing terms. Should the applicant disagree with the replacement, the decision may be the subject of an appeal pursuant to Article 55 CDR. The filing of a complaint cannot substitute the legal remedy provided by the Regulation. A request for correction of the Register is not appropriate unless it can be proven that an obvious mistake has taken place. The results of this practice are quite significant. Since 2003, an average of 81% of the indication of products included in the IT system of the Office used for examining and registering designs (Eurodesign) are terms found in the so-called Eurolocarno list (available at http://oami.europa.eu/en/design/eurolocarno.htm). This implies not only savings in time and resources, since the Eurolocarno terms are pre-translated in all official languages of the EU, but it aims to homogenize the use of terms used for querying the design database (RCD online at http://oami.europa.eu/RCDOnline/RequestManager). In the long run, use of such terms in design e-filings will substantially reduce pendency times and possible key-in errors.
CORRIGENDUM - New Layout of RCD Certificates |
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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 (“CFI”), Article 63 CTMR A-1: JUDGMENTS AND ORDERS Bonbon-Verpackung or Sweet wrapper or August Storck II: C-25/05 P Judgment of 22 June 2006 (Office practice confirmed; action dismissed). Keywords: Absolute grounds for refusal: representation (photograph) of the product. The CTM application at issue is shown below. It is a gold-coloured sweet wrapper with twisted ends. It had been applied for goods in Class 30 but rejected at all instances within the Office as being devoid of any distinctive character.
The CFI had confirmed the Office’s findings in its judgment of 10.11.2004 in Case T-402/02. The First Chamber of the ECJ (Judge-Rapporteur M. Ilesic) dismissed the appeal. “( 25) As regards the first part of the first ground of appeal, it is settled case-law that the distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation No 40/94, must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of them by the relevant public, which consists of average consumers of the goods or services in question who are reasonably well informed and reasonably observant and circumspect (see, in particular, Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089, paragraph 35, and Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-0000, paragraph 25). (26) According to equally established case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see Henkel v OHIM, paragraph 38, Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-9165, paragraph 30, and Deutsche SiSi-Werke v OHIM, paragraph 27). (27) None the less, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see, inter alia, Henkel v OHIM, paragraph 38, Mag Instrument v OHIM, paragraph 30, and Deutsche SiSi-Werke v OHIM, paragraph 28). (28) In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 (see, in particular, Henkel v OHIM, paragraph 39, Mag Instrument v OHIM, paragraph 31, and Deutsche SiSi-Werke v OHIM, paragraph 31). (29) That case-law, which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself, also applies where, as in the present case, the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the products it covers.” Karamellbonbon or Shape of a sweet or August Storck I: C-24/05 P Judgment of 22 June 2006 (action dismissed). Keywords: Distinctiveness: three-dimensional (“3D”) signs – 3D signs/distinctiveness, acquired in the market place, Article 7(3) CTMR. The action was directed against a decision of the CFI of 10.11.2004 in T-396/02 which had confirmed the Office’s refusal of a 3D CTM application (shape of a light-brown sweet). The First Chamber of the ECJ (Judge-Rapporteur M. Ilesic) dismissed the appeal. The shape applied for had been the following:
(a) Criteria for assessing distinctiveness “( 23) As regards the first part of the first ground of appeal, it is settled case-law that the distinctive character of a trade mark, within the meaning of Article 7(1)(b) of Regulation No 40/94, must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of them by the relevant public, which consists of average consumers of the goods or services in question who are reasonably well informed and reasonably observant and circumspect (see Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089, paragraph 35, and Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-0000, paragraph 25). (24) According to equally established case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see Henkel v OHIM, paragraph 38, Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-9165, paragraph 30, and Deutsche SiSi-Werke v OHIM, paragraph 27). (25) None the less, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see, in particular, Henkel v OHIM, paragraph 38, Mag Instrument v OHIM, paragraph 30, and Deutsche SiSi-Werke v OHIM, paragraph 28). (26) In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 (see, in particular, Henkel v OHIM, paragraph 39, Mag Instrument v OHIM, paragraph 31, and Deutsche SiSi-Werke v OHIM, paragraph 31). (27) Therefore, the Court of First Instance rightly took into consideration the shapes and colours of sweets commonly used in trade in assessing whether the mark applied for is, or is not, devoid of any distinctive character.” (b) Acquired distinctiveness and 3D signs “( 57) As regards the first and second parts of the fourth ground of appeal, the Court has ruled, in Case C-353/03 Nestlé [2005] ECR I-6135, that a mark may acquire distinctive character within the meaning of Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) in consequence of use of that mark in conjunction with a registered trade mark. (58) The same is true in relation to distinctive character acquired through use for the purposes of Article 7(3) of Regulation No 40/94, since that provision and Article 3(3) of Directive 89/104 are essentially identical. (59) Therefore, a three-dimensional mark may in certain circumstances acquire distinctive character through use even if it is used in conjunction with a word mark or a figurative mark. Such is the case where the mark consists of the shape of the product or its packaging and where they systematically bear a word mark under which they are marketed. (60) However, it must be stressed that a three-dimensional mark is essentially different from its two-dimensional graphic representation. It follows that where, as in the present case, a picture of the product features on the packaging, consumers do not actually see the mark itself, being the mark consisting of the three-dimensional form of the product. It is possible, however, that the two-dimensional representation of such a mark may in certain circumstances facilitate awareness of the mark by the relevant public where it enables the essential elements of the three-dimensional shape of the product to be perceived. (61) Furthermore, in regard to acquisition of distinctive character through use, the identification by the relevant class of persons of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark (Case C-299/99 Philips [2002] ECR I-5475, paragraph 64, and Nestlé, paragraph 26). The expression ‘use of the mark as a trade mark’ must therefore be understood as referring to use of the mark for the purposes of the identification by the relevant class of persons of the product or service as originating from a given undertaking (Nestlé, paragraph 29). (62) Therefore, not every use of the mark, a fortiori use of a two-dimensional representation of a three-dimensional mark, amounts necessarily to use as a mark.” Flexi Air/Flex or Revlon: C-235/05 P – Order (FR) of 27 April 2006 (manifestly unfounded). Keywords: Opposition: comparison of marks. The action concerned an appeal from T-112/03 of 16. 3. 2005 by which the CFI had confirmed a decision of the 4 th Board of 15. 1. 2003 in R 396/2001-4. CTM application “Flexi Air” in Class 3 had been rejected on the basis of “Flex”, also in Class 3. The Fourth Chamber of the ECJ (Schiemann, Cunha Rodrigues, Levits) dismissed the appeal.
A-2: DEVELOPMENTS IN PENDING CASES Quicky/Quick : C-193/06 P - Office response filed. Keywords: Opposition: comparison of marks – Likelihood of confusion: assessment. The action concerns a decision of the CFI in T-74/04 of 22.2.2006 in a conflict between Nestlé’s CTM application QUICKY and device in Classes 29, 30 and 32, and the earlier rights Quickies and Quick (and device) in Classes 29, 30, 32, 33 and 42. The Office had rejected the application on the grounds that there existed a risk of confusion on the part of the relevant public because of the closeness of the goods at issue and the similarity of the marks. The First Chamber of the CFI (Garcia-Valdecasas, Cooke, Trstenjak) had confirmed that finding. Quantum/Quantiéme : C-171/06 P – Office response filed. Keywords: Opposition: proof of use (“POU”) – POU: use of earlier sign different from registration - Likelihood of confusion (“LOC”): assessment – LOC/assessment: relevant public - LOC/assessment: goods sold only in specific outlets. The action is directed against a decision of the CFI in T-147/03 which had overruled a decision of the 3 rd Board revoking an Opposition Division decision which had allowed an opposition against CTM application ‘Quantum’ on the basis of ‘Quantième’, both in Class 14, and the earlier right also in Class 18. Whereas the 3 rd Board had accepted the evidence filed by the opponent as regards use of the earlier mark (in a manner different from registration), it had finally held that there was no likelihood of confusion since the goods covered by the earlier mark were marketed only in specific outlets (decision of 30.1.2003, R 109/2002-3). The Fourth Chamber of the CFI (Legal, Mengozzi, Wisniewska-Bialecka) had annulled that decision, attaching different weight to the said argument and relying on different criteria. A-3: NEW APPEALS Keywords: Absolute grounds for refusal/distinctiveness: of a washing tablet. Appeal from T-398/04. (The legal issues of “washing tablet” or “tabs” cases are well-known and so will not be repeated here.) C: Court of First Instance (CFI): Judgments and Orders on appeals against decisions of the OHIM, Art. 63 CTMR
Cow hide : T-153/03 – Judgment of 13 June 2006 (Office practice confirmed). Keywords: Likelihood of confusion/comparison of marks – Comparison of marks/similarity. The action concerned an appeal from a decision of the 2nd Board of 4. 2. 2003 in R 106/2001-2. The CTM application consisted of a figurative sign resembling part of a cow hide, applied for in Classes 29, 32 and 39, inter alia for milk, milk beverages, milk products, dairy products, cream and yoghurt. The invoked earlier Benelux mark consists of a figurative sign showing a packaging with part of a cow hide on it. The earlier mark covers the range of milk products in the CTM application.
An opposition division and the 2nd Board had dismissed the opposition on the grounds that there were sufficient visual differences between the two marks to exclude a risk of confusion. The Second Chamber of the CFI (Pirrung, Meij, Pelikánová) confirmed the result of the 2nd Board. “( 31) In respect of the earlier mark, the cowhide design completely covers the packaging of the goods and dominates the visual impression given by the mark, as found by the Board of Appeal in paragraph 21 of the contested decision. That design constitutes a striking element of the earlier mark. (32) In that respect, the argument of the Office that the weak distinctive character of the cowhide design precludes that design from being regarded as a dominant element cannot be accepted in all circumstances. Although it is settled case-law that, as a general rule, the public will not consider a descriptive element forming part of a complex mark as the distinctive and dominant element of the overall impression conveyed by that mark (BUDMEN, paragraph 53, and Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-0000, paragraph 34), the weak distinctive character of an element of a complex mark does not necessarily imply that that element cannot constitute a dominant element since, because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them (see, to that effect, Case T-115/02 AVEX v OHIM – Ahlers (a) [2004] ECR II-2907, paragraph 20). (33) It must none the less be pointed out that, since the comparison between marks must be based on the overall impression given by them having regard, in particular, to the distinctive character of their elements in relation to the goods or services concerned, it does not suffice, in order to find a similarity between marks, that an element essential to the visual impression of a complex mark and the sole element of the other sign are identical or similar. On the other hand, it should be concluded that there is a similarity where, considered as a whole, the impression given by a complex mark is dominated by one of its elements in such a way that the other components of that mark appear negligible in the image of that mark which the relevant public remembers, in the light of the goods or services designated. (34) In this instance, although the cowhide design constitutes an essential element in the visual impression of the earlier mark, the fact remains, none the less, that that design has only weak distinctive character in the present case. (35) For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see, by analogy, Lloyd Schuhfabrik Meyer, paragraphs 22 and 23). (36) In this case, it should be noted that, having regard to the goods concerned, the cowhide design cannot be regarded as highly distinctive, since that element is strongly allusive to the goods in question. That design refers to the idea of a cow, an animal known for its milk production, and constitutes an element which is unimaginative to designate milk and milk and dairy products.”
Idea/Ikea : T-112/06 – Office response filed. Keywords: Opposition: earlier right with reputation – Opposition: comparison of marks. The action is directed against a decision of the 1st Board of 10.2.2006 in R 80/2005-1 by which the Board had revoked a decision of the Cancellation Division which had declared invalid the CTM “idea” (below) on the basis of the earlier right “IKEA”, both marks for Classes 16, 20 (furniture) and 42. The cancellation decision was based on Article 8(1)(b) CTMR, namely likelihood of confusion.
In contrast, the 1st Board had held that the visual, and above all, the conceptual differences between the two marks were sufficient to outweigh their aural similarities. In addition, furniture is not ordered orally; a visual inspection would normally precede the act of purchase. Safety 1st : T-88/06 – Office response filed. Keywords: Absolute grounds for refusal: distinctiveness. The action concerns a decision of the 2nd Board of 11.1.2006 in R 616/2004-2 by which the Board had rejected CTM application “Safety 1 st” in Classes 12 (inter alia, bicycles), 20 (inter alia, furniture), 21 and 28 on the grounds that the sign consisted of a promotional and laudatory message. HiQ/Clover leaf or Meggle: T-37/06 – Office response filed. Keywords: Opposition: comparison of marks – Likelihood of confusion: enhanced distinctiveness/evidence. The action is directed against a decision of the 2nd Board of 22. 11. 2005, R 1130/2004-2, which had dismissed an appeal against a decision of an opposition division which had rejected an opposition lodged by Meggle AG. The challenged figurative CTM application, filed for Classes 5, 29 and 30, consists of a white clover leaf in a circle and the letters HiQ. The earlier Meggle marks, covering Classes 1, 3, 5, 29, 30, 31, 32 and 33, consist of a dark clover leaf. The Board confirmed the finding of dissimilarity of marks. Fildor/Phildar : T-99/06 - Office response filed. Keywords: Opposition/earlier right: proof of use – Opposition/likelihood of confusion: comparison of marks. The action concerns a decision of the 2nd Board of 16. 1. 2006 in R 245/2004-2 which had rejected an opposition based on “Phildar” (fig.) against CTM application “Fildor”, both marks covering a range of products in Classes 22, 23, 24, 25 and 26. The Board held that the visual dissimilarities are sufficient to exclude a risk of confusion. Genuine use was held to be not proved for another earlier right of the opponent, identical with the sign applied for as a CTM. Mineral Spa/Spa : T-93/06 - Office response filed. Keywords: Opposition: mark having a reputation (Article 8(5) CTMR). The action concerns a decision of the 2nd Board of 11.1.2006 in R 825/2004-2 by which the Board had confirmed an opposition on the basis of the Benelux mark SPA registered in Class 32 for mineral waters etc. against CTM application Mineral Spa applied for soaps and a further range of goods in Class 3. The Board based its decision on reputation, Article 8(5) CTMR, relying on the CFI judgment of 25.5.2005 in Case T-67/04 (Spa-Finders or Spa Monopole),. In that judgment the CFI had accepted reputation for the opponent in respect of SPA as regards mineral waters. Top ix/Tofix : T-57/06 - Office response filed. Keywords: Comparison of products - Comparison of marks – Likelihood of confusion/earlier right: impact of the existence of similar marks in the market place. The action is directed against a decision of the 2nd Board of 14.12.2005, R 1147/2004-2, which had rejected an appeal against a decision of the Opposition Division. The Opposition Division allowed an appeal against CTM application “Top ix” (fig.) in Class 3, based on the earlier right “TOFIX” in Classes 3 and 5. The opponent had argued that the existence of similar marks in the same area of business would weaken the distinctive character of the earlier right. Caflon/Daflon : T-442/05 – Office response filed. Keywords: Comparison of goods: pharmaceutical products – Comparison of marks. The action is directed against a decision of the 1st Board of 26.9.2005, R 98/2005-1, which had rejected an appeal from a decision of the Opposition Division rejecting an opposition based on “Daflon” protected in various Member States for various goods in Class 5 against CTM application “Cafon”, also for various goods in Class 5. Astex Technology/Astex : T-48/06 – Office response filed. Keywords: Opposition/comparison of products: pharmaceutical goods - Opposition: comparison of marks. The action is directed against a decision of the 2nd Board of 29.11.2005, R 651/2004-2 in a conflict between CTM application “astex technology” and device in Class 5 and the earlier right “Astex” in Classes 5 and 24. The Opposition Division had allowed the opposition in its entirety and the 2nd Board had dismissed the appeal filed by the CTM applicant. The Class 5 goods at issue are “pharmaceuticals but not including cardiovascular pharmaceuticals” for the CTM application, and “insecticides for killing dust mites” for the earlier right. Big Plus/Plus : T-438/05 – Office response filed. Keywords: Likelihood of confusion: comparison of goods - Likelihood of confusion: comparison of marks.
The action is directed against a decision of the 1st Board of 7.9.2005, R 928/2004-1 by which the Board had annulled a decision of an opposition division and had allowed an appeal based on “Plus” (figurative; colours) against CTM application “Big Plus”. The earlier right is registered, inter alia, for “non-electrical metallic cables and wires; ironmongery and small items of metal hardware; hand-operated hand tools and implements; cutlery; construction and repair work and installation services”. The CTM was applied for “metal machine tools; parts and tool holders therefore” (Class 7). Loudspeaker (3D) or Bang & Olufsen: T-460/05 – Office response filed. Keywords: Article 7(1)(b) CTMR: distinctiveness/3D signs – Distinctiveness/3D: shape of the product itself. The action is directed against a decision of the 1st Board in R 497/2005-1 which had confirmed the rejection of a 3D CTM application for the shape of a loudspeaker (in the form of a pencil), in Classes 9 and 20. Mag Instrument Inc. (Torches), Case C-136/02 P referred.
NEW DECISIONS FROM THE BOARDS OF APPEAL Please note that the full number including the forward slash has to be entered in our database under 'Appeal Nº', without the letter 'R'. Global figures for May 2006 EX-PARTE – Article 4 and Article 7(1)(b) Examination proceedings – absolute grounds for refusal – distinctiveness –colour – consumer – specialised public – oral proceedings request refused. Decision of the First Board of Appeal of 25 April 2006 in Case R 1413/2005 (German) R 1413/2005-1 Examination proceedings – absolute grounds for refusal – distinctiveness - collective mark - geographical indication – three dimensional (“3D”) mark Decision of the First Board of Appeal of 25 April 2006 in Case R 0479/2004 (German)
R 0479/2004-1 Examination proceedings – absolute grounds for refusal – distinctiveness – shape itself – container – collective mark – consumer – average public - registration in Member State - principle of legality - burden of proof - statement of reasons Decision of the Fourth Board of Appeal of 3 April 2006 in Case R 0559/2005 (German)
R 0559/2005-4 EX-PARTE – Article 7(1)(b) Examination proceedings - absolute grounds for refusal – distinctiveness - internet search - quality of the good and services Decision of the Second Board of Appeal of 10 April 2006 in Case R 1318/2005 (English) R 1318/2005-2 GRAND CRU – (en) – the mark consisting of a term which is known to be devoid of distinctive character for one product – wine – was found to be also devoid of distinctive character for an analogous product – chocolate. The Board held that the characteristics of the one are reflected in the other. The novel point in this decision is the way the reasoning was applied by analogy. Support was found from a search on the Internet. Examination proceedings - absolute grounds for refusal – distinctiveness Decision of the Fourth Board of Appeal of 25 April 2006 in Case R 0687/2004 (English) R 0687/2004-4 SHOE & SHIRT GROUP – (de) – it was held that the expression filed, ‘SHOE & SHIRT GROUP’, in connection with ‘clothing, footwear, in particular for children and young people and for the outdoor and adventure sector’ (Class 25), merely indicates that an undertaking sells and/or produces shirts and shoes, and is therefore not capable of distinguishing the goods of one undertaking from those of another. It was not necessary for the Board to examine further whether the Community trade mark applied for was also descriptive within the meaning of Article 7(1)(c) CTMR, since under established case-law it is sufficient that one of the absolute grounds of refusal applies. The appeal was dismissed. Examination proceedings - absolute grounds for refusal – distinctiveness Decision of the Fourth Board of Appeal of 11 May 2006 in Cases R 1290/2005, R 1291/2005 and R 1292/2005 (German) R 1290/2005-4
The appeal was allowed.
EX-PARTE – Article 7(3) Examination proceedings – relevant public – specialised public – distinctiveness acquired by use – catalogue – invoices- promotional material - market survey - declaration - single colour – case-law Decision of the Second Board of Appeal of 26 April 2006 in Case R 0148/2004 (English)
R 0148/2004-2 INTER-PARTES - Article 8(1) Opposition proceedings – comparison of signs – visual similarity – phonetic similarity – interdependence – substantial procedural violation – substantial deficiency – reasons of equity – reimbursement of appeal fee Decision of the First Board of Appeal of 23 March 2006 in Case R 0192/2005 (English) R 0192/2005-1 Opposition proceedings –relative grounds for refusal – likelihood of confusion – identity of goods and services – similarity of signs – common element – dominant element – name - visual similarity – aural similarity – conceptual similarity – likelihood of association - typographic character Decision of the First Board of Appeal of 26 April 2006 in Case R 0533/2005 (Italian) R 0533/2005-1
PROCEDURAL ISSUES Opposition proceedings – substantiation of earlier rights - proof of renewal - databank printout – substantial procedural violation – reimbursement - fee Decision of the First Board of Appeal of 5 April 2006 in Case R 0562/2005 (English)
R 0562/2005-1 Admissibility - appeal proceedings - examination of facts ex officio - opposition proceedings, professional representation Decision of the Fourth Board of Appeal of 2 May 2006 in Case R 0578/2003 (English)
R 0578/2003-4 |
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13th Meeting of the OAMI Users’ Group 3 July 2006 Some 30 representatives from a wide range of organisations of users, such as AIM, AIPPI, APRAM, CNIPA, ECTA, EFPIA, FICPA, ICC, INTA, MARQUES, UNICE and UNION, spent the day giving their views to the President of the Office and to the Directors of the various departments in the Office, who in turn discussed these issues of concern and informed the Users Group of the general progress in the Office’s business. Mr Peter Lawrence, Vice-President of the Office, stressed the very important consultation and feedback role played by the OAMI Users’ Group. Vital issues such as the Office’s response to the User Satisfaction Survey, the progress of E-business, performance standards for the Community Trade Mark and the Community Design and miscellaneous questions were dealt with at the meeting. The next meeting was set for early in 2007.
Visit of Mr An Qinghu, Director General of the Chinese Trade Mark Office This visit falls within the framework of the work of the Trademark Strategy Program Research Team. In effect, in 2005 China set up the National Intellectual Property Strategy Formulation Leadership Group and started to draw up the National Intellectual Property Strategy, of which the Trademark Strategy Program is a very important component. On the basis of a questionnaire proposed by the Chinese delegation, DIPP and GAERD presented all the requested information concerning procedural, substantive, statistical and organisational issues and educational matters at the OHIM. The Boards of Appeal also contributed useful information. This visit was extremely successful for various reasons. First at all, because the Director General Mr An Qinghu was truly interested in the functioning and experience of the OHIM and, secondly, because the OHIM replied in detail to all of the questions raised by the Chinese delegation. On concluding the visit both Mr de Boer and Mr An Qinghu were very satisfied with the results and both were convinced that in the framework of the cooperation, China is a priority for the OHIM and vice versa. Following this visit it is important to note that: firstly, bilateral cooperation between both Offices will be reinforced at high level and on an annual basis. In this sense, Mr de Boer insisted on the need to focus our efforts on promoting the CTM amongst trade mark professionals in China . The main idea is to make Chinese users aware of the privileges the CTM system has to offer. Secondly, participation from China in trilateral projects will be explored seriously and thirdly, in the near future, the Chinese office will be looking at various ways to send experts to the OHIM in order to improve their knowledge of the CTM system. Mr de Boer will pay a visit to China at the end of November 2006.
This report commends both countries for the major reforms and advances achieved, and at the same time calls on them to urgently tackle the remaining issues necessary in order to ensure their accession to the EU as foreseen on that date. The long road to becoming fully-fledged EU Member States started for both countries in the same year when they formally applied for membership to the European Union in 1995, though both had already signed respective Europe Agreements two years previously. In 1998, again at the same time, Bulgaria and Romania began the process of screening their legislation for conformity with EU law as part of the accession process. It wasn’t until the year 2000, however, that they eventually commenced formal accession negotiations. The Treaty of Accession was finally signed by both countries on 25 April 2005 , and on 14 June this year the European Parliament’s accession resolution confirmed 1 January 2007 as the date of entry for both countries into the European Union. This was ratified by the Council of the European Union the following day, subject to an expected favourable opinion in the next Monitoring Report due in October. The results of the accession of Bulgaria and Romania in relation to the CTM and RCD systems are identical to those which arose from the May 2004 Enlargement process, namely, the automatic extension of CTMs and RCDs and the grandfathering of earlier rights. This has been achieved by amending the list of Member States contemplated under Article 159a(1) of the Community trade mark Regulation, and Article 110a(1) of the Community design Regulation, leaving the remaining provisions untouched. This effectively means that the provisions outlined by the President of the Office in relation to the 2004 enlargement procedure will also apply in 2007 as a consequence of Bulgaria and Romania’s accession. This information can be found in Communication No 05/03 of the President of the Office of 16 October 2003 at http://oami.europa.eu/en/office/aspects/communications/05-03.htm. Of particular importance is the exceptional right of opposition in relation to the Community trade mark, where applications filed between 1 July 2006 and 31 December 2006 can be subject to oppositions based on earlier rights existing in the new Member States, pursuant to Article 159a(3). Another issue which will affect the Office directly is the incorporation of the two new languages, one of which uses Cyrillic script in its alphabet, and both of which can be used as filing languages as soon as accession takes effect. Community trade marks and designs which are automatically extended as a result of the 2007 enlargement will not, however, be translated or published into these new languages. As with the 2004 enlargement procedure, the Office has undertaken a number of preparatory measures to ensure that there is no slow-down of core business activities, with particular emphasis on the translation of standard forms and databases, the implementation of the necessary IT requirements and the recruitment of staff from both countries. Over the past years, there have been preparatory meetings between the OHIM and staff from the Bulgarian and Romanian national offices, who have also attended the Administrative Board and Budget Committee meetings as observers since May 2005. For further information on this subject, the Office has made available on its Website a variety of documents and information sources, which can be consulted at the following address:
Monthly Statistical Highlights - June 2006
The OHIM E-Business Roundup (2006)
State of play of current and future projects
We wish you a very happy summer holiday season. |
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(colour blue) – (de) – using current technology, it is possible to identify a very wide range of shades of colour. The number of colours which even a specialist public in Europe is capable of distinguishing is however rather limited, because it is rarely in a position directly to compare products in various shades of colour. It follows that the number of different colours that are in fact available as potential trade marks to distinguish goods must be regarded as limited. The blue colour mark, identified with the Pantone Magic System code 304, as claimed, namely as a colour for colouring different sizes of underlay sheets for offset printing, gravure printing and letterpress printing, is devoid in its entirety of the distinctive character. The Board made use of its discretionary power and refrained from arranging oral proceedings, since all the facts and arguments relevant to the decision had already been submitted in writing and the appellant had not explained what it additionally intended to argue in oral proceedings. In these circumstances, oral proceedings did not appear to be expedient. The appeal was dismissed 
(Bocksbeutel – 3D) – (de) – the trade mark applied for was the so-called Bocksbeutel. It is an ancient shape of bottle which is used in various areas of the Community and in a few third countries. The Bocksbeutel claimed lacks any additional details which could be regarded as striking, unusual or original. The present application claimed a collective mark. The Community collective mark is privileged only with respect to geographical indications of origin. However, the trade mark applied for is not an indication regarding a specific geographical origin. The 3D form per se does not contain any direct indication regarding the geographical origin of the goods and services claimed for the Bocksbeutel form, nor does its specific design give rise to any necessary indirect conclusions about a specific regional origin in the European internal market. The Bocksbeutel has been protected within the Community as a classic shape among wine bottles. This thus expresses the objective of the European legislature, namely to protect the Bocksbeutel not as an exclusive regional geographical indication of origin but instead to take account of the fact that this type of bottle has been used for specific products for a very long time and can therefore ‘evoke certain characteristics or a certain origin of products in the minds of consumers’. It is thus associated not only with a specific winegrowing region, but also with certain quality aspects. In view of these facts, an application as a collective mark cannot overcome the grounds for refusal of lack of distinctive character. The appeal was dismissed. 
(shape of bottle case – 3D) – (de) – in respect of distinctiveness, no lesser requirements can be imposed on a Community collective mark than on an individual CTM. With regard to the goods ‘waters for medicinal purposes’ (Class 5) and ‘natural mineral waters; non-alcoholic beverages and fruit nectars (both manufactured using natural mineral water)’ (Class 32), the sign applied for as a whole, i.e. as a combination of different characteristics, merely constituted another variant of the shape of a beverage crate in a product field in which a wide variety of different crate (packaging) shapes can be seen. The shape of the beverage crate applied for did not as a whole stand out from the wealth of crates seen on the market. For ‘crates for beverages’ (Class 20), the subject matter of the application constituted the shape of the product itself (and not the packaging) and it was also devoid of any distinctive character. The registration of identical trade marks by the Deutsches Patent- und Markenamt could not justify any other decision. The Board was unable to concur with the appellant’s opinion that within the framework of the official investigation the Office is obliged to furnish evidence of the absence of distinctive character. The burden of proof in the proceedings applies to both parties, not the Board of Appeal alone. The appeal was dismissed.
, R 1291/2005-4
and R 1292/2005-4
(tea-pots) – (de) – it was held that the marks applied for, being variousdevices consisting of representations of a tea-pot, were distinctive for tea, since each mark was: 
(colour orange) – (fr) – the applicant claimed distinctiveness acquired through the use of the colour orange for champagne wines. The relevant consumer of champagne is not the general public but a specific and attentive sector of the general public: champagne being an expensive wine usually consumed on special occasions. The Board took into account the evidence provided (i.e. high sales in many EU countries and high market share in those countries, lots of publicity, catalogues and press articles which mention and show the ‘orange colour’ for the Veuve Clicquot Champagne; the national registrations in France, the United Kingdom and the Benelux; the national judgement of a Belgian Court about the likelihood of confusion between a Belgian beer and Veuve Clicquot Champagne because of the orange colour; the declaration of the General Director of the inter-professional committee of champagne wine stating that the applicant is the only producer which uses this colour for the champagnes) and decided to upheld the appeal, accepting distinctiveness acquired through the use of the colour orange for champagne. Finally, following the case-law in the ‘HAVE A BREAK’ judgment, the fact that the colour is used with other verbal or figurative elements did not exclude the distinctiveness acquired by the use of the colour. The appeal was allowed.
/ DONUT et al. – (en) – in order to rule out the likelihood of confusion solely on the basis of the comparison of the trade marks, the trade marks in question must be clearly dissimilar. The Board did not concur with the Opposition Division’s conclusion as regards the comparison of the signs. The Opposition Division had failed to analyse the goods concerned, failing to appreciate the criterion of the interdependence between the various relevant factors and it had also failed to examine whether the earlier marks were genuinely used. Furthermore, the Opposition Division did not take into consideration the opponent’s International Registration with effect in Portugal . Therefore, it did not evaluate properly whether there was a likelihood of confusion in this country. That amounted to a substantial procedural violation and the opponent was entitled to the reimbursement of the appeal fee by virtue of Rule 51. 
/ 
(it) – the sign applied for ‘ROBERTO C’ wass directed at a market on which the earlier trade mark ‘ROBERTO CAVALLI’ is already present: clothing, accessories in the broad sense (such as leather goods) and spectacles – that is, the fashion sector. The appeal was held to be well-founded. The similarity of the trade mark for which registration was sought to the earlier trade mark – which is particularly obvious in the adoption of a substantially identical typographic character – together with the identity of the goods claimed by both, is of such a kind as to give rise, at least to the detriment of Italian consumers, to a likelihood of confusion, in the particular form of a likelihood of association. The appeal was allowed. 
/ ELCAD – (en) – even though the Opposition Division did not doubt the probative value per se of the evidence of registration (provided by way of an extract from an official German database together with the notice of opposition (24/05/2002)), it considered that such evidence did not show that the registration in question had been renewed. As the opponent correctly pointed out, the official ‘DPinfo’ database extract was obtained on and dated 23 May 2002 . Since it is a reasonable expectation that a database is updated at regular and frequent intervals, the Opposition Division should have construed the indication ‘Current status: mark registered’ in Section UG 10 of that extract as conveying the information that the earlier German trade mark registration was valid at 23 May 2002. The failure of the Opposition Division properly to examine the evidence of registration constituted a substantial procedural violation. It was equitable, therefore, for the appeal to be reimbursed. As regards the opposition grounded on Article 8(1)(b) CTMR, it was remitted to the Opposition Division for further prosecution. The appeal was allowed. 
/ EVOLUTION USA – (en) – issues regarding the admissibility of the opposition can and have to be raised at any time during the opposition proceedings and during the appeal proceedings, and have to be examined by the Office on its own motion, irrespective whether the other party raises them (Rule 17 CTMIR). The Board has the obligation to check the opposition admissibility. The opponent/ respondent being from US had the obligation to appoint a professional representative and to continue to be represented in that way until the opposition proceedings are terminated by a final decision. The term ‘in all proceedings’ refers to the totally of the proceedings until a final decision is taken. An opposition filed or maintained in breach of this provision is or becomes inadmissible. As the respondent failed to appoint a new representative within the two months set by the Registry of the Board, the opposition was rejected as inadmissible. The CTMA shall proceed to registration. The appeal was allowed. 