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OHIM Action Plan on Quality in Community Trade Mark Decisions Guidelines In July of this year, the IP Community in general was invited by the Office to offer its comments and suggestions on revised guidelines on examination and opposition proceedings before the end of September. This consultation exercise has recently concluded. The Office is now in the process of analysing the contributions received from the users of the CTM system and from national offices during this period in order to take into account their contributions before finalizing the draft which will then be submitted to the Administrative Board. The same consultation process will shortly begin for (a) the first draft of guidelines on the substantive matter of cancellation proceedings and (b) revised and extended guidelines relating to Madrid Protocol filings. These consultation exercises are seen as an essential part of the drafting of any OHIM guidelines to make sure the Office takes into account, as much as is possible, the comments and recommendations of the users of the CTM system and of national offices. CTM Examiners’ Manual Though conceived primarily as a working tool for those taking first instance decisions (examiners, opposition and cancellation divisions etc.) in respect of Community trade marks, it is the aim of the OHIM to make the manual available online so that IP professionals can access all relevant and updated information on how the Office examines trade mark applications. Predictability of decisions will improve their acceptance. CTM Examiner Training Programme Since the commencement of the training lectures in May 2006, the following presentations have been given: ‘CTM Reform’, ‘Descriptive Marks & Figurative Elements’, ‘Aladin or How Broad is Narrow?’, and ‘Revision, Revocation of Decisions, Restitutio in integrum and Continuation of Proceedings’. This programme is in addition to the wide-ranging IP training facilities already available within the Office. Quality Control Checks Every week, the legal advisors from the trade marks departments meet together and review the quality of the work being carried out by first instance decision makers. They select for quality cross-checking ten inter partes decisions and a similar number of absolute grounds refusals. Ten marks which have been accepted on Absolute Grounds are also extracted from the database, and all of this information is checked for mistakes. When any mistakes are identified, the examiner in question is notified, and a statistical breakdown of the overall tally of errors is created. As this is done on a weekly basis, a substantial amount of work is analysed, allowing the Office to improve the quality in those areas highlighted by the analysis of the statistics generated. Though the actions detailed above form part of a specific plan to improve quality, the working methods and practices which arise as a result of its implementation will be of an ongoing nature, constantly revised and updated over the coming months and years to guarantee the objective of obtaining the highest standards possible in the OHIM’s trade mark decisions. |
The LEGO Decision The Grand Board of Appeal upholds the Cancellation Division’s decision to annul the registration of the three-dimensional Lego-brick mark for ‘construction toys’.
On 19 October 1999, the Examination Division accepted the above Community trade mark for registration finding that, pursuant to Article 7(3) of Council Regulation (EC) No 40/94 (‘CTMR’) , it had acquired distinctiveness through the use made of it in the Community for a range of games and playthings. Ritvik Holdings, Inc. subsequently applied for a declaration of invalidity of the registration pursuant to Article 51(1)(a) CTMR, leading each party in turn to submit its arguments and counter arguments. After considering the submissions, the Cancellation Division annulled the registration with respect to ‘construction toys’ on the basis that, under Article 7(1)(e)(ii) CTMR, it consisted ‘exclusively of the shape of goods which is necessary to achieve a technical result’. An objection raised under this provision cannot be overcome by evidence of acquired distinctiveness. The trade mark proprietor appealed against the contested decision. It later requested that, owing to the complexity and importance of the case, the Grand Board of Appeal be convened. The other party did not object and the request was considered. Given that the written submissions alone amounted to several thousand pages ― not to mention the physical and multimedia exhibits, the expert testimonies, the patent documents, the decisions of the national and European Courts and the practice of national trade mark registries ― it was decided that the Grand Board of Appeal would be the appropriate body to deliberate on the appeal. The Board considered the Lego brick to consist almost entirely of a functional shape which achieves a technical result. It found that although one could, to a small degree, vary the height or diameter of the studs, or increase or decrease the number of projections underneath, or alter the particular dimensions of the brick itself without significant detriment to its functionality, the design of the Lego brick had nevertheless been developed with sturdiness and versatility in mind. The Board found nothing had been left to chance in the brick’s design. For every feature, one can make out a convincing argument why that and not another was chosen. Its dominant feature ― the two rows of studs on the upper surface ― are intended to endow a simple toy brick, possessing dimensions of width, length and depth in proportion to a real, life-size building brick with the necessary robust interlocking mechanism which such blocks need to have if they are to be manipulated by a child. Clearly the Lego brick’s features were adopted to perform the above mentioned utilitarian function. According to the Board, “the ‘eye appeal’ that the proprietor speaks of, merely stems from the aesthetics of a sound structural and functional form”. In effect, the Board remained faithful to the principle laid out in Remington/Philips (See Judgment of the Court of 18 June 2002 in Case C-299/99, Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. (‘Remington/Philips’) [2002] ECR I-5475. - paragraph 83) which found that a shape must be precluded from registration as a trade mark if its essential functional characteristics are attributable solely to the technical result even if that result could be achieved by other shapes. The Board noted that the Lego trade mark had been denied registration or invalidated –– on essentially the same grounds as given above –– in France, Benelux, Sweden, Germany, Greece and the United Kingdom. The same lack of registrability of the Lego brick is underscored by the recent judgement of the Supreme Court of Canada of 17 November 2005, which also found that the functional characteristics of the Lego brick were designed to achieve a technical end. The Lego brick mark was filed at the Office on 1 April 1996. Now, ten years later, the fate of the Lego brick is perhaps still uncertain, since the smart money is on the Board’s decision being appealed at the Court of First Instance. Watch this space for further developments.
In terms of Community trade mark filings, businesses based in Estonia have applied for a total of 125 CTM applications since 1996.
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Community Design | Deferment of Registered Community Designs: how to minimize the risk of erroneously publishing deferred designs In a nutshell, such provisions define an obligation for the Office to keep confidential all information relating to an application for registration of a Community Designs as long as it is not registered and published in part A.1 of the Community Designs Bulletin (http://oami.europa.eu/bulletin/rcd/rcd_bulletin_en.htm). Any disclosure of information before such a time would not be in conformity with the requirement of confidentiality, with the exception that the file may be inspected by the holder, a third party with his/her consent or a third party with fair cause. As a result, the Office must ensure confidentiality of information and data until the design is published in the relevant part of the Bulletin. In view of this, from the very beginning of Community Design operations, the Office has taken this issue very seriously. Avoiding any risk of incidents involving the possible publication of a RCD where the applicant has requested deferment is seen as a top priority. As a consequence, different measures have been adopted during the past years of design operations to mitigate such risk, including access control to mail-room and designs examination premises, training of staff to increase awareness and the certification of the Office under the Standard ISO17799/BS7799, the international best practice information security management standards, defining and guiding Information Security Management System (ISMS) development. The Office was re-certified in May 2006 following a regular external audit. The driving force behind these actions is that the requirement to secure confidentiality applies to all OHIM departments involved in the Community Design process, not only design examination, but also capture of data, inspection of files, renewals, fee management operations and delivering information on designs, whether on a structured manner (e.g. RCD online) or on request (e.g. queries to information centre). The Internal Audit of the Office conducted two audits during the first semester of 2006, one related to the above ISO Standard and the other to the deferment of designs, where the operational aspects of confidentiality were reviewed and further recommendations were made, in particular for those directly involved in examination of design files. The main findings of the auditor were that there is high awareness within the Designs Department as to the importance of this issue, which is translated in putting into place tools and processes to reduce the risk of erroneously publishing a deferred design. Should the publication of a deferred design erroneously take place, the Office will address the incident ipso facto. A standard protocol for this purpose has been established within the Designs Department, extending from redressing the technical publication of the design in the electronic Bulletin to informing the holder of the incident and offering assistance to mitigate any possible consequences. Any query or report should be referred directly to the attention of the Director of the Designs Department, Mr P. RODINGER. The collaboration of RCD applicants and holders is greatly encouraged to mitigate any risks. Thus, when filing a Community design application containing a request of deferment, please make sure that this is clearly indicated in the form. In the case of multiple applications, it is recommended that those designs to be deferred are grouped in such a way to allow easy identification by dispatchers and examiners, avoiding situations where deferred designs are mixed with designs to be published (e.g. if you file five designs and two of them are to be deferred, it would be useful to put the deferred designs in the form at the beginning of the application). Also, when you receive the first notification of the Designs Department other than the receipt, take a moment to verify if the request of deferment was correctly introduced in the letter. Finally, when verifying your current account statement, please verify that the deferment fees were correctly debited in respect of the design(s) for which deferment was requested.
Evidence of the disclosure of a prior design – use of catalogues and invoices During the month of September, the Invalidity Division of the Designs Department released several decisions where the proof of disclosure of a prior design was the critical element of the file. In a nutshell, while the use of non-dated catalogues may be insufficient to cancel the registration, invoices related to original copies of catalogues would be determinative for the declaration of invalidity. The decision issued on 13/09/06 on Case No. 1642 illustrates the insufficiency of providing copies of commercial catalogues which only refer to a year (in the relevant case, “2005” and “2006”). The lack of a specific reference to a date of disclosure justified that the application for declaration of invalidity was rejected. The inclusion of mentions like “new” in the reproduction of a design contained in a copy of a catalogue is not sufficient to prove when a design was disclosed, since it is merely an indication made by the author or editor of the catalogue that is has been disclosed, without indicating when. Furthermore, declarations made by employees as to the prior disclosure of a design in a trade fair without any further independent evidence was deemed insufficient. On 14/09/06 , the registered design of a metal profile (No. 000313655), hereafter reproduced, was declared invalid for lack of novelty, since on the date of filing (18/03/05), there was a prior design disclosed. In this case, the applicant for invalidity sufficiently proved the disclosure of a prior design by providing evidence of its use in trade. The use in trade consisted in a sale evidenced by an invoice dated 21/01/04 issued against a French client. While the invoice in itself is insufficient to prove disclosure, the invoice contained a reference and a price of the product, which were the same as those contained in a catalogue. The catalogue in itself would not have been sufficient as it lacked a precise date. However, the combination of an invoice, a catalogue and a price list was sufficient, even if the catalogue contained no legal deposit reference (see note below).
On 20/09/06 , the applicant for invalidity succeeded in having the registered design 000346861-00013 for shoe ornamentation declared invalid for lack of novelty, based on the disclosure of a prior design, the sale of which was proven by an invoice dated 31/08/04 . In this case, the invoice, which contained a reference number for the product and a price, was related to an original copy of a commercial catalogue with a legal deposit reference. The combination of these elements was sufficient to prove the disclosure of the prior design.
Click on image for larger view The decisions can be found at http://oami.europa.eu/en/design/decispending.htm. Note: ‘Legal deposit’ is a statutory obligation which requires that any organization, commercial or public, and any individual producing any type of documentation in multiple copies, to deposit one or more copies with a recognized national institution. Legal deposit legislation covers all kinds of published material, that is, material generally produced in multiple copies and offered to the public regardless of the means of transmission in order to differentiate such published material from “archival” material, which refers to records, either governmental, corporate or personal, which are usually unique items unavailable for public distribution and more of a private or personal nature.
Country Overview Estonia & the Registered Community Design
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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: ECJ Judgments and Orders PC Works : C-314/05-P - Order of 29 June 2006 (appeal dismissed as manifestly inadmissible/unfounded). Keywords: ECJ proceedings: Article 119 of the Rules of Procedure (summary dismissal) - ECJ proceedings/CTM law: assessment of likelihood of confusion an issue of fact - Opposition: likelihood of confusion. The case concerned an appeal from a decision of the CFI of 25.5.2005 in T-352/02 by which it had confirmed rejection of CTM application “PC Works”. The goods in respect of which registration had been sought related to Class 9, namely ‘apparatus for recording, transmitting and reproducing sound or images, loudspeakers, amplifiers, record players, tape players, compact disc players, tuners and parts and fittings for all the aforesaid goods’. An opposition had been lodged based on the mark W/Work (fig.):
The earlier right is registered in Spain in respect of goods in Class 9, namely: ‘electronic audio equipment; loudspeakers; sound reproducing apparatus; radio, television and video apparatus.’ The assessment of likelihood of confusion is an issue of fact. Pursuant to Article 235(1) EC and Article 58(1) of the Statute of the ECJ, the ECJ will only hear cases where it can be shown that the CFI has distorted facts and/or evidence.
A-2: ECJ: Developments in pending cases B: ECJ: Preliminary Rulings
Dyson Vacuum Cleaner : C-321/03 - Opinion of Advocate Léger of 14 September 2006 Keywords: Sign of which trade mark may consist: visible functional feature of a product applied for as a trade mark. The case is a reference from the High Court of Justice ( England and Wales ), Chancery Division, under Articles 2 and 3(1)(e) of the First Council Directive 89/104/EEC. It relates to the following UK trade mark applications (of 10.12.1996):
The Advocate General took the following view: “(106) In the light of the foregoing, I propose that the Court give the following answers to the questions asked by the High Court of Justice ( England & Wales ), Chancery Division: (1) A visible functional feature of a product which is capable of taking on a multitude of appearances does not fulfill the necessary conditions to constitute a trade mark within the meaning of Article 2 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks since it does not constitute a sign capable of being represented graphically and capable of distinguishing goods and services of one undertaking from those of other undertakings. (2) In any event, Article 3(1)(e), second indent, of First Council Directive 89/104/EEC precludes the registration as a trade mark of a visible functional feature of a product.” C: Court of First Instance (CFI): Judgments and Orders on appeals against decisions of the OHIM, Article 63 CTMR C-1: CFI Judgments and Orders Eagle : T-340/05 - Case closed; Order of 12 September 2006 . Keywords: Opposition. The action had been directed against a decision of the 4 th Board of 23.5.2006 in R 434/2003-4 and, on substance, concerned an opposition brought against CTM application “Eagle”. Since the notice of opposition was withdrawn pending proceedings, the First Chamber closed the case. Metro/Metro : T-191/04 - Judgment of 13 September 2006 (action allowed; specific case: Office itself pleaded in favour of plaintiff). Keywords: CFI proceedings: procedural status of the OHIM – Opposition/formalities: validity of the invoked earlier right at the point in time the decision on the opposition is taken (must be present). The action had been directed against a decision of the 1st Board of 23.3.2004 in R 486/2003-1. The Opposition Division had been aware that the initial term of the invoked earlier right would expire while proceedings were pending. In consequence, it had informed the opponent that it had to show renewal. The opponent did not react and the opposition was rejected. The 1st Board had upheld the appeal brought by the opponent on the grounds that the decisive point in time as concerns validity of the invoked earlier right would not be the date on which the decision is taken but the date on which a notice of opposition is lodged. Before the CFI, the Office itself pleaded in favour of the CTM applicant, and this was accepted by the Third Chamber (Jaeger, Tiili, Czúcz). (a) CFI proceedings: procedural status of the OHIM “(14) So far as OHIM’s procedural status is concerned, it is to be noted that, while OHIM does not have the requisite capacity to bring an action against a decision of a Board of Appeal, it cannot be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed (Case T-107/02 GE Betz v OHIM – Atofina Chemicals (BIOMATE) [2004] ECR II-1845, paragraph 34; Case T‑186/04 Spa Monopole v OHIM – Spaform (SPAFORM) [2005] ECR II-2333, paragraph 20; and Case T-379/03 Peek & Cloppenburg v OHIM (Cloppenburg) [2005] ECR II-0000, paragraph 22). Nothing prevents OHIM from endorsing an applicant’s claim or from simply leaving the decision to the discretion of the Court, while putting forward all the arguments that it considers appropriate for giving guidance to the Court (BIOMATE, paragraph 36, and Cloppenburg, paragraph 22). On the other hand, it may not seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application or put forward pleas in law not raised in the application (Cloppenburg, paragraph 22; see also, to that effect, Case C-106/03 P Vedial v OHIM [2004] ECR I-9573, paragraph 34). (15) It follows that the heads of claim by which OHIM endorses the applicant’s claim for annulment must be declared admissible since those heads of claim, and the arguments set out in their support, do not go beyond the bounds of the claims and pleas in law put forward by the applicant.” (b) Earlier right must be in force at the time a decision upon the opposition is taken “(31) The essential purpose of Articles 8 and 42 of Regulation No 40/94 and Rules 15, 16 and 20 of the implementing regulation, concerning relative grounds for refusal and opposition proceedings, is to ensure that, by making it possible to refuse registration of a new mark which may conflict with an earlier mark as there is a likelihood of confusion between them, the earlier mark may retain its function of identifying origin. (32) The possibility of such a conflict must be considered from two different angles. Firstly, with regard to the substantive scope of the abovementioned provisions, the earlier mark and the mark applied for must be identical or similar, as must the goods or services designated by those marks, so that confusion may arise between the two signs. Secondly, concerning the temporal scope of those provisions, both those marks must co-exist for a certain period. The function of an earlier mark as a means of identifying its origin cannot be undermined by another mark which is registered only after the term of protection of the earlier mark has expired. If there is no period during which both marks co-exist, no conflict can arise. (33) Accordingly, the Court of First Instance finds that the assertion in the contested decision that ‘[t]here is nothing that permits the Opposition Division to retroactively change an opponent’s status simply because in the course of opposition proceedings … a national registration … expires’ fails to take account of the fact that no conflict can arise between the mark applied for and an earlier mark which has expired during that period, given that the mark applied for may be registered only after the end of the opposition proceedings. As a consequence, the protection which the Board of Appeal recognised the earlier mark as having is not justified by the need to protect the mark’s essential function and is contrary to the spirit and the logic underlying the provisions governing the assessment of relative grounds for refusal and opposition proceedings. (34) Moreover, the applicant and OHIM rightly submit that the Opposition Division and the Boards of Appeal must take account of changes in circumstances that occur between the filing of the opposition and the decision on the opposition as a result of evidence submitted by the parties in response to OHIM´s request for information. (35) The Court of First Instance held in Case T-308/01 Henkel v OHIM – LHS (UK) (KLEENCARE) [2003] ECR II-3253, paragraph 26, that, in the context of the re-examination of the decision on the opposition conducted by the Boards of Appeal under Article 61(1) of Regulation No 40/94, the outcome of the appeal depends on whether or not a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling. (36) In the course of that re-examination, the OHIM Boards of Appeal may exercise any power within the competence of the department which was responsible for the decision appealed, except where the case is remitted to that department (KLEENCARE, paragraph 24). Consequently, the principle established by that case-law must be regarded as applicable to the findings of the Opposition Division, with the effect that neither the Opposition Division nor the Boards of Appeal may adopt a decision that is unlawful at the time when they make a decision based on the evidence submitted by the parties in the proceedings before them.”
Pam Pam : T-133/05 - Judgment of 7 September 2006 (action dismissed; Office practice confirmed). Keywords: CFI proceedings: postponement of the hearing – Opposition: likelihood of confusion. The action had been directed against a decision of the 1st Board of 17.1.2005 in R 250/2004-1, regarding the opposition brought against the CTM application set out below, applied for “napkin-pants made of paper or cellulose (disposable)” in Class 16.
The earlier word marks PAM-PAM are registered in Class 25 for “any ready-made clothing, in particular napkin-pants, footwear” and in Class 5, inter alia, for “sanitary pants, sanitary towels”. The figurative earlier mark is registered in Class 16 for “napkin-pants made of paper and cellulose (disposable)”. The opposition had been allowed. Whereas the opposition division concerned had based its decision solely on the earlier figurative mark, the Board, after having informed the parties, also took into account the word marks. The Fifth Chamber of the CFI confirmed that finding. As regards the procedural issue of a postponement of the hearing: “(14) At the outset, it should be pointed out that the applicant did not attend the hearing of 8 December 2005 . By a first facsimile dated 7 December 2005, he informed the Court that ‘a last minute difficulty would not allow him to be present’. He stated that he ‘sought to advise it immediately in order that [the Court of First Instance] can organise [its] hearing’ and requested to be ‘informed of the date on which [the] decision is given’. By a second facsimile of 7 December 2005, the applicant stated that he wished the hearing, ‘if possible’, to be postponed to the following month of January or February, citing ‘a difficulty of a purely personal and last-minute nature’. In view of the contradiction of the messages, the imminence of the hearing and, in any event, the inadequacy of the reasons for the applicant’s request, the Fifth Chamber decided not to allow the request for the postponement of the hearing.” Aire Limpio or Air Freshener: T-168/04 - Judgment of 7 September 2006 (action dismissed; Office practice confirmed). Keywords: OHIM proceedings: right to be heard, Article 73 CTMR – Opposition proceedings: scope of examination of the case – Opposition/likelihood of confusion/enhanced degree of recognition of a CTM on a national market: application, by analogy, of Article 7(2) CTMR – Enhanced recognition: acquired as part of another mark - Opposition: comparison of goods – Opposition: comparison of marks.
The Board had restricted its examination to the invoked earlier CTM. It had, however, taken into account documents relating to other invoked earlier national rights without directly comparing them with the CTM application. The Board had partially allowed the opposition, namely as regards the goods claimed in the CTM application, relying, inter alia, on an enhanced degree of recognition of the earlier mark on the Italian market.
“( 108) The applicant argues that the contested decision was taken in breach of Article 73 of Regulation No 40/94. (…) (110) The Opposition Division, in its decision of 25 February 2003, and the Board of Appeal already restricted their examination, first, to the mark in respect of which registration is sought and, secondly, to Community registration No 91991 alone. However, in order to establish the existence of a relative ground for refusal within the meaning of Article 8(1)(b) of Regulation No 40/94, the Board of Appeal also relied on documents relating to other marks. Consequently, the grounds of the contested decision concern earlier marks which the Board of Appeal itself excluded from the comparative analysis in order to determine the existence of a likelihood of confusion. The grounds of the contested decision are therefore incomplete and the Board of Appeal infringed Article 73 of Regulation No 40/94.” Findings of the Court: “(113) Under Article 73 of Regulation No 40/94, the decisions of the Office are to state the reasons on which they are based. In addition, Rule 50(2)(h) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) provides that the Board of Appeal’s decision is to contain the reasons. In that respect, it must be considered that the scope of the duty to state reasons thus laid down is the same as that arising from Article 253 EC (Case C-447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraph 64; Joined Cases T-124/02 and T-156/02 Sunrider Corporation v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITRAKRAFT and VITA/VITATASTE and BALANCE and BALANS/META BALANCE 44) [2004] ECR II-1149, paragraph 72). (114) It is settled case-law that the statement of reasons required under Article 253 EC must show in a clear and unequivocal manner the reasoning of the author of the act. That duty has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Community judicature to exercise its power to review the legality of the decision (Case C-350/88 DelacreandOthers v Commission [1990] ECR I‑395, paragraph 15; KWSSaat v OHIM, cited in paragraph 113 above, paragraph 65; VITRAKRAFT and VITA/VITATASTE and BALANCE and BALANS/META BALANCE 44, cited in paragraph 113 above, paragraph 73). (115) In addition, under Article 73 of Regulation No 40/94, decisions of OHIM may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision relates both to factual and legal reasons and to evidence. (116) However, the right to be heard extends to the factual and legal factors on which the decision-making act is based, but not to the final position which the authority intends to adopt (Case T-303/03 Lidl Stiftung v OHIM – REWE-Zentral (Solevita/SALVITA) [2005] ECR II-1917, paragraph 62). (117) In the present case, the contested decision shows in a clear and unequivocal manner the reasoning of the Board of Appeal. As is apparent from the text of the contested decision, which sets out the arguments put forward before the Board of Appeal by the applicant, the latter had an opportunity to present its comments on all the factors on which the contested decision is based and also on the use, by the Board of Appeal in its assessment, of the evidence relating to the use of the earlier marks. (118) Consequently, infringement of Article 73 of Regulation No 40/74 is not established and the second plea must be rejected and the action in its entirety dismissed.” (b) Likelihood of confusion: earlier CTM and its perception on a national market – Application, by analogy, of Article 7(2) CTMR “(68) Furthermore, even though Article 8 of Regulation No 40/94 does not contain a provision similar to Article 7(2) to the effect that an application to register a trade mark may be refused where an absolute ground for refusal obtains in only part of the Community, the same solution should be applied in the present case. It follows that registration must also be refused even where the relative ground for refusal obtains in only part of the Community (Case T-355/02 Mülhens v OHIM - ZirhInternational(Sir/ZIRH) [2004] ECR II-791, paragraph 36, and Case T-312/03 Wassen International v OHIM – Stroschein Gesundkost (Selenium Spezial A-C-E/SELENIUM-ACE [2005] ECR II-0000, paragraph 29). (69) In the present case, the opposition to the registration was based on a number of the intervener’s marks containing the representation of a fir tree. In examining that opposition, the Board of Appeal relies mainly on Community trade mark No 91991 as a mark which is representative of the other marks relied on in support of the opposition. (70) In the contested decision, the Board of Appeal held that the conflicting marks were similar, in particular on a conceptual level and that there was a likelihood of confusion. That conclusion followed from the finding that earlier Community trade mark No 91991, protected since 1 April 1996 and, made up of the shape of a fir tree, had a particularly distinctive character in Italy. That finding was itself based on the acceptance of the prolonged use and well-known nature in Italy of the international mark ARBRE MAGIQUE, represented by the same shape of a fir tree and in addition containing a verbal element. (71) It must therefore be examined at the outset whether the Board of Appeal legitimately held that earlier Community trade mark No 91991 had been able to acquire a particularly distinctive character owing to the prolonged use of another registered mark, namely the mark ARBRE MAGIQUE, and also because of prolonged use in Italy, and that mark could be considered to be well known there.” (c) Enhanced recognition in the market place: criteria of assessment – Enhanced recognition acquired as part of another mark “(72) It must first of all be stated that the case-law accepts that a mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (SABEL, cited in paragraph 52 above, paragraph 24). – (73) Next, it should be remembered that the acquisition of the distinctive character of a mark may also be as a result of its use as part of another registered trade mark. It is sufficient that, in consequence of such use, the relevant class of persons actually perceives the product or service, designated by the earlier marks, as originating from a given undertaking (see, to that effect, Case C-353/03 Nestlé [2005] ECR I-6135, paragraphs 30 and 32). (74) It should therefore also be accepted that the particularly distinctive character of a mark can be acquired because of its prolonged use and its being well known as part of another registered trade mark, in so far as the target public perceives the mark as indicating the origin of the goods from a specific undertaking. (75) In the present case, the question whether the Board of Appeal legitimately held that earlier Community mark No 91991 had been able to acquire a particularly distinctive character owing to its use as part of another registered mark must therefore be answered in the affirmative if earlier Community mark No 91991 can be regarded as part of the mark ARBRE MAGIQUE. (76) In that respect, the Board of Appeal rightly took the view that the representation of the silhouette of the fir tree, which plays a significant or even predominant role in the mark ARBRE MAGIQUE, corresponds to the sign of earlier Community mark No 91991. Consequently, the Board of Appeal was fully entitled to hold that earlier Community mark No 91991 constituted part of the earlier mark ARBRE MAGIQUE. Accordingly, the first mark could have acquired a distinctive character following its use as part of the second mark. (77) Consequently, the Board of Appeal rightly examined all the evidence relating to the use and well-known nature of the mark ARBRE MAGIQUE in order to establish the prolonged use, the well-known nature and, therefore, the particularly distinctive character of part of that mark, namely earlier Community mark No 91991. (78) As regards, in the present case, the actual examination of the evidence by the Board of Appeal, the contested decision rightly states that it is apparent from the evidence in the case-file, namely essentially the documentation produced on 8 November 1999 in the opposition proceedings brought by the intervener, that, as part of a registered mark, namely the mark ARBRE MAGIQUE, earlier mark No 91991 was the subject of prolonged use in Italy, is well known there and therefore has a particularly distinctive character. (79) The contested decision thus takes into consideration the prolonged use of the mark ARBRE MAGIQUE and the fact that annual sales of the goods marketed under that mark exceed 45 million units and sales in Italy thus represented a market share exceeding 50% in 1997 and in 1998. In addition, the contested decision takes account of the fact that the advertising costs incurred in Italy for the promotion of those goods in 1996 and 1997 exceeded 7 billion Italian lira (that is EUR 3,615,198.29). (80) The fact that the sales figures relate to 1997 and 1998 and that the advertising expenses concern 1996 and 1997, that is to say, dates subsequent to the filing of the application for registration of the mark by the applicant, namely 30 April 1996, is not sufficient to deprive those elements of their evidential force for the purpose of finding that earlier mark No 91991 is well known. (81) According to the case-law, data subsequent to the date of filing an application for a Community trade mark can be taken into account where it enables the drawing of conclusions on the situation as it was on that date (Case T-262/04 BIC v OHIM (shape of an electronic lighter) [2005] ECR II-0000, paragraph 82; see, to that effect, the order of the Court of Justice in Case C-192/03 P Alcon v OHIM [2004] ECR I-8993, paragraph 41, and the case-law cited). Such circumstances may make it possible to confirm or better assess the extent to which the trade mark concerned was used during the relevant period (see, by analogy, order of the Court of Justice in Case C-259/02 La Mer Technology [2004] ECR I-1159, paragraph 31). (82) The Board of Appeal was therefore able legitimately to hold that such subsequent circumstances allowed conclusions to be drawn on the situation as it was on the date of filing the application for registration of the mark by the applicant and enabled the well-known nature of mark No 91991 on that same date to be confirmed. (…) (85) Furthermore, it is not possible to accept the applicant’s argument that the Board of Appeal was wrong to find that the earlier mark had a particularly distinctive character in Italy by relying solely on general indications regarding the volume of advertising and sales figures. Admittedly, according to the case-law relied on by the applicant, the distinctive character of a mark cannot be shown to exist solely by reference to general, abstract data, such as predetermined percentages (Case C‑299/99 Philips [2002] ECR I-5475, paragraph 62). Nevertheless, it should be stated, firstly, that that case-law concerns the acquisition of the distinctive character of a mark which is the subject of an application for registration and not, as in the present case, the assessment of whether a registered mark which has already acquired distinctive character is well known. Secondly, in order to establish, in the present case, whether the mark is well known, the Board of Appeal did not only take into account general indications, such as specific percentages, but also the prolonged use of the mark ARBRE MAGIQUE, which, furthermore, the applicant did not dispute.”
First Defense: T-6/05 - Judgment of 6 September 2006 (action allowed; particular case; no impact on Office practice). Keywords: CFI proceedings: scope of pleas – CFI proceedings: procedural position of the OHIM – CFI proceedings/costs: of/against the intervener - Board proceedings: scope of examination of the case – OHIM: formalities in respect of decisions (signature) – CTMR language regime: Rule 17 and Rule 96 CTMIR - “Agent’s mark” = CTM application filed by an agent, Article 8(3) CTMR – Agent’s mark/consent of proprietor in the case of a total transfer. The action had been directed against a decision of the 2nd Board of 8.11.2004 in R 493/2002-2 by which the Board had confirmed a decision of an opposition division which had partially upheld an opposition filed by the new US proprietor of various “First defense” brands against a CTM application allegedly filed by an agent of the initial proprietor without consent of the initial proprietor. The CTM applicant had attached material showing consent of the initial proprietor in a language different from the language of proceedings. The new proprietor of the US undertaking had not been informed by the initial proprietor that the latter had consented to independent dealing, by the agent, with the brands he was in charge of. (a) Opposition decisions transmitted by fax do not need to be signed “(25) First of all, it should be noted that the implementing regulation contains procedural provisions applicable to the present case. Contrary to what the applicant maintains, Rule 79(a) and (b) of the implementing regulation cannot apply, given that it relates to the submission of communications to OHIM. Rules 55, 61 and 65 of the implementing regulation concern communications from OHIM and, accordingly, are the provisions which should be applied in the present case. (26) According to Rule 55 of the implementing regulation, any decision, communication or notice from OHIM is to indicate the department or division of OHIM as well as the name or the names of the official or officials responsible. It must be signed by the official or officials, or, instead of a signature, carry a printed or stamped seal of OHIM. The President of OHIM may also determine that other means of identifying the department or division of OHIM may be used where decisions, communications or notices are transmitted by telecopier or any other technical means of communication. Rule 61(2)(d) of the implementing regulation recognises the validity of notifications of decisions made by telecopier, the details of such transmission being determined by the President of OHIM in accordance with Rule 65(1) of the implementing regulation. Accordingly, under Article 1 of Decision No EX-97-1, it is sufficient if the denomination of the department or division is stated in the letterhead and, at the end of the decision, communication or notice, the full name of the responsible official or officials is indicated. (27 ) In this case it must be noted that the decision of the division includes, first, identification of the department and division of OHIM which adopted it and, secondly, the names of the officials responsible. Consequently, communication by telecopier of the decision of the Opposition Division without a signature complies with the requirements fixed by the implementing regulation and by Decision No EX-97-1. The contested decision was therefore validly communicated to the applicant.” (b) Board proceedings: scope of examination of the case: fundamental procedural preconditions to be examined ex officio “(22) However, the extent of the examination which the Board of Appeal must conduct in respect of the decision under appeal is not, in principle, determined exclusively by the grounds relied on by the party who has brought the appeal. Accordingly, even if the party who brought the appeal has not raised a specific ground of appeal, the Board of Appeal is none the less bound to examine whether or not, in the light of all the relevant matters of fact and of law, the decision under appeal could be lawfully adopted (see, to that effect, Case T-308/01 Henkel v OHIM – LHS (UK) (KLEENCARE) [2003] ECR II-3253, paragraph 29, and Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II‑287, paragraph 18).” (c) CFI proceeding: jurisdiction to determine whether Board of appeal complied with its obligation, independent from any respective plea by plaintiff “(24) (…) since the Court has jurisdiction to determine whether the Board of Appeal failed to find of its own motion that the absence of signatures on the decision of the Opposition Division infringed an essential procedural requirement.” (d) CFI proceedings: procedural status of the OHIM (must not tel quel defend Board decision) “(41) OHIM contends in the written pleadings that the Board of Appeal wrongly concluded that the declaration of 1 June 1996 did not contain clear, specific and unconditional consent. As regards OHIM’s procedural position in that respect, the Court took the view in Case T-379/03 Peek & Cloppenburg v OHIM (Cloppenburg) [2005] ECR II-0000, paragraph 22, that OHIM cannot be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed (Case T-107/02 GE Betz v OHIM – Atofina Chemicals (BIOMATE) [2004] ECR II-1845, paragraph 34). However, it cannot seek forms of order annulling or altering the decision of the Board of Appeal on a point not raised in the application or put forward pleas not raised in the application (see, to that effect, Case C-106/03 P Vedial v OHIM [2004] ECR I-9573, paragraph 34). – (42) It follows that OHIM is entitled to depart from the reasoning of the Board of Appeal by putting forward legal views different from those expounded in the contested decision, provided that the arguments proposed by OHIM do not amount to new grounds for annulment.” (e) CTMR language regime; Rules 17 and 96 IR “(43) As to the intervener’s argument that the Board of Appeal ought not to have taken the declaration of 1 June 1996 into account because it was not translated into the language of proceedings, whereas the Board had refused the documents provided by the intervener as they had not been translated, it should be pointed out that the decision to refuse those documents was based on Rule 17(2) of the implementing regulation. That rule derogates from the rules governing languages generally applicable to the production and use of documents in proceedings before OHIM, as laid down in Rule 96(2) of that regulation, according to which, where those documents are not in the language of the proceedings, OHIM may require a translation to be produced in that language or, at the option of the party to the proceedings, in one of the languages of OHIM within the period laid down by it. Rule 17(2) of the implementing regulation therefore places on a party originating inter partes proceedings a burden greater than that generally placed on parties in proceedings before OHIM. That difference is justified by the need to observe fully the principle of the right to be heard and to ensure equality of arms between the parties in inter partes proceedings (Case T-232/00 Chef Revival USA v OHIM – Massagué Marín (Chef) [2002] ECR II-2749, paragraph 42). (44) As regards the translation of supplementary documents, that is left to the discretion of OHIM, in accordance with Rule 96(2) of the implementing regulation. In this case, the applicant complied with the requirement laid down in Rule 96(1) of the implementing regulation since it lodged an appeal in German and supplied a translation into English within the applicable time‑limit (paragraphs 11 and 14 of the contested decision). The fact that the Board of Appeal did not consider it necessary, pursuant to Article 96(2) of the implementing regulation, to obtain a translation of the declaration of 1 June 1996, a document annexed to the appeal, cannot constitute an infringement of the principle of equal treatment, given that Rule 96(1) and (2) of the implementing regulation govern objectively different situations.” (f) Consent of proprietor: Relevant point in time (left undecided) - Whether atypical agreement amounts to consent - In the case of a transfer: failure of initial proprietor to inform transferee does not affect validity of consent “(46) Moreover, the applicant and the Wyoming corporation were engaged in real and genuine commercial relations when the declaration of 1 June 1996 was adopted, a fact which may explain why the previous proprietor decided to grant that consent for no financial consideration. In any event, the fact that such an agreement may be atypical cannot, in itself, affect the validity of the consent effectively given, as inferred by the Board of Appeal. (47) As regards the possible failure by Mr Oliver to inform the intervener of the existence of the declaration of 1 June 1996 , that cannot affect the validity of the consent received on that date.” “(49) As to whether the consent was still valid on the day of the application for registration, 16 September 1997 , it should be noted that a change of proprietor of the trade mark took place between the day on which the consent was given and the day on which the application for registration of the mark was made. It is clear, however, that since the Board of Appeal wrongly took the view that the declaration of 1 June 1996 did not contain clear, specific and unconditional consent authorising the applicant to file the application for registration of the mark in question, it did not consider whether that consent had survived the purchase of the assets of the Wyoming corporation. The answer to that question is largely dependent on the law which should be applied to the legal and commercial relations between the parties, but since it was not examined during the proceedings before OHIM, the Court cannot rule on that point.” (g) Costs against the intervener: express application necessary; can be made at the hearing “(52) Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has been unsuccessful it must be ordered to pay, as well as its own costs, the applicant’s costs, except those relating to the intervention, in accordance with the form of order sought by it. Since the applicant has not applied for costs against the intervener, as it could still have done at the hearing, it must bear the costs relating to the intervention.”
C-2: CFI: Developments in pending cases Europig : T-207/06 - Office response filed. Keywords: Absolute grounds for refusal: descriptiveness. The action is directed against a decision of the 4 th Board of 21.5.2006 in R 1425/2005-4 by which it had rejected, under Article 7(1)(c) CTMR, CTM application “EUROPIG” applied for a range of products in Classes 29 and 30, including meat, ham, lard and patés. Basics : T-164/06 - Office response filed. Keywords: Absolute grounds for refusal: distinctiveness. The action is directed against a decision of the 4 th Board of 7 4.2006 in R 788/2005-4 concerning CTM application “Basics” applied for a range of goods in Class 2, namely: “Water colour paints, varnishes other than insulating varnish, lacquers in the nature of a coating, enamel coatings in the nature of paints, colouring matters in the nature of acrylic paints, acrylic primers, oils paints, water colours, artists' varnishes, pastel oil colours, liquid leaf colours, artists' alkyd colours, artists' mediums namely paint thinners and solvents, inks and dyes for use by artists or for use in handcrafts.” The application had been rejected on the grounds that the sign would merely describe the goods, i.e. that the goods applied for are (part of) the ‘basics’, that is, the elementary, fundamental, most important or most commonly used products which an artist or decorator may require. Powdermed : T-166/06 - Office response filed. Keywords: Absolute grounds for refusal – Distinctiveness/assessment: impact of national decisions. The action concerns a decision of the 2nd Board of 12.4.2006 in R 1189/2005-2 in respect of CTM application 4.202.743, Powdermed. It was applied for a range of goods and services in Classes 5, 10 and 42. The application had been rejected for all goods in Class 5 because the word applied for would merely describe pharmaceutical substances in powdered form. The applicant submitted that the word mark had been accepted in the UK. The reporting member of the Board which took the challenged decision is a native English speaker. Dr. No/Dr. No : T-435/05 – Rejoinder filed by the Office. Keywords: Well-known marks within Article 8(2)(c) CTMR – Art 8(4) CTMR: earlier trade mark right acquired on the basis of use – Article 8(4) CTMR: earlier business identifier used in trade – Relevant date on which enhanced recognition must be present – Evidence: material presented for the first time before the Board of Appeal - Evidence: relevance of information contained on websites. The action concerns a decision by the 1st Board of 21 September 2005 (R 1118/2004-1) which had confirmed a rejection of an opposition directed against CTM application “Dr. No” (word) in Classes 9, 12, 18, 25 and 32. The invoked earlier signs are “Dr. No” and “Dr. NO” for films, DVDs, comic books, music recording, books, posters and action figures (toys). The Board had accepted without further discussion material presented for the first time at the appeal stage. As regards the relevant point in time on which legally valid use of a sign as a trade mark, in the European Union, must be shown, the 1st Board had confirmed established practice: evidence must relate to the period prior to the filing of the challenged CTM application. The same applies as concerns evidence from the internet. The respective sign must be used as a badge of commercial origin, i. e. as a trade mark, whatever the general context in general (for instance, information about the success of a movie). As regards the criteria which must be present for a valid claim under Article 8(4) CTMR, the 1st Board had confirmed the “European approach”: in order to qualify as an earlier right within the said provision, the sign or other business identifier must have been used in the course of trade, irrespective of any national law to the contrary. Yokana : T-103/06 (ES) - Office response filed. Keywords: Opposition procedure: scope of examination - Opposition: comparison of marks. The action is directed against a decision of the 2nd Board of 10.1.2006 in R 217/2004-2. It concerns a conflict between CTM application Yokana (fig.) applied for a range of goods in Classes 14, 18 and 25 and earlier Yokono marks including a CTM, registered in Classes 18, 25 and 39.
The opposition had been upheld for all goods in Classes 18 and 25 on the basis of the earlier CTM only, for reasons of procedural economy, since, as concerns the use requirement, the CTM had then still been inside the grace period. Castellani : T-149/06 - Office response filed. Keywords: Opposition: comparison of marks. The action is directed against a decision of the 1st Board of 22.2.2006 in R 449/2005-1 in a conflict between CTM application Castellani (fig.) and the earlier word marks Castellum and Castelluca. The CTM application comprises “alcoholic beverages except beer, liqueur, sparkling wine and champagne”. Castellum is registered for “wines, except sparkling wines”, and Castelluca is registered for wines.
The Board had allowed the opposition in full, stating that the goods in conflict were identical and the marks similar. Flex : T-158/06 - Office response filed. Keywords: Absolute grounds for refusal: distinctiveness. The action is directed against a decision of the 2nd Board of 11.4.2006 in R 1430/2005-2 concerning CTM application 3795011, the word FLEX for a range of goods and services in Classes 9, 38 and 42. The list of good and services contains, inter alia, computer server software and enterprise server software for a range of applications, inter-active computer software, computer hardware and related services. The Board had rejected the application for computer software in Class 9 and for computing services in Class 42 under Article 7(1)(c) CTMR on the grounds that FLEX is a language from which computer real-time programs may be constructed.
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'. EX-PARTE Article 7(1)(b) and (c) Examination proceedings – absolute grounds for refusal – distinctiveness – descriptiveness – internet Decision of the First Board of Appeal of 8 August 2006 in Case R 1132/2005 (French) R 1132/2005-1 GARUM ARMORICUM – fr – The examiner informed the applicant that the trade mark fell within the grounds for refusal of Article 7(1)(b) and (c) as it consisted exclusively of the common name of a fish extract having beneficial effects on the health and used as a food supplement, and accordingly could not be registered for ‘food preparations for the sick, pharmaceutical preparations; food preparations based on fish or fish organs’ . The examiner cited an Internet site in support of this argument and added that, since Google (an Internet search engine) had turned up ‘over 500 hits’, this meant that the name is ‘commonly used in the sector concerned’ for the presentation of the contested goods. In the Board’s opinion, these conclusions were hasty and, therefore, erroneous. The examiner proved, with no effort, using a popular search engine, that the phrase GARUM ARMORICUM is mentioned on websites. However, he went no further, whereas he should have looked at the way in which the name was used, and by whom, the origin of the websites, whether or not the name appeared on scientific websites A more thorough examination of the information contained on the websites mentioned by the examiner would have shown him that the term GARUM ARMORICUM is always and only ever mentioned in relation to the goods produced and marketed by the applicant. Consequently, it is purely a trade name. It can thus be registered as a Community trade mark for the contested goods without breaching Article 7(1) CTMR. Examination proceedings – absolute grounds of refusal – examination proceedings – shape of the goods - technical result- functional necessity – patent Decision of the Second Board of Appeal of 5 September 2006 in Case R 0747/2005 (English) R 0747/2005-2 Decision of the Second Board of Appeal of 15 September 2006 in Case R 0551/2006 (English) R 0551/2006-2 PERACILLIN – en – The first instance examiner held that the mark consisted of the word PERACILLIN which was considered confusingly similar to the term PIPERACILLIN which is listed in the International list of Non Proprietary Names for Pharmaceutical Substances. Thus he held that if the mark applied for was used on goods other than PIPERACILLIN or goods which do not contain it, then the consumer would be deceived as to the nature of the goods. The Board noted that the average consumer would most probably be aware of the derivation of the suffix ‘cillin’. Therefore when comparing the marks the emphasis must be put on the prefix of the words being compared. Therefore the Board was of the opinion that the clear difference between the prefixes ‘PIPER’ and ‘PER’ of the words to be compared is sufficient to rule out the possibility that the consumer would be deceived as to the nature of the goods, if the mark PERACILLIN were used on a product that does not contain PIPERACILLIN. Having regard to the foregoing, the contested decision was annulled and the case remitted to the examiner for further prosecution. INTER-PARTES Article 8(1)(b) Relative grounds for refusal - name - national registration - dissimilarity of goods and services - purpose of goods and services - dissimilar trade marks - average consumer - specialized public - enhanced distinctiveness Decision of the First Board of Appeal of 5 July 2006 in Case R 0397/2005 (English) R 397/2005-1
PROCEDURAL ISSUES Opposition proceedings – relative grounds of refusal – proof of use – place of use Decision of the Fourth Board of Appeal of 7 August 2006 in Case R 0576/2005 (Spanish) R 0576/2005-4 Appeal proceedings – admissibility – appealable decision Decision of the First Board of Appeal of 7 July 2006 in Case R 0156/2004 (German) R 0156/2004-1 BLUE CROSS MEDICARE / Blur Cross – de – the decision to revoke the extension of a time limit cannot be appealed under Article 57(2) CTMR, under which only decisions that terminate proceedings as regards one party can be appealed. The appeal filed is deemed inadmissible since a decision rescinding the granting of a time extension is only an interim decision. |
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Euroclass This online and fully searchable database has come into being after close cooperation between the OHIM and the national offices of Sweden and the United Kingdom, with more EU member state national offices expected to join the programme in the future. It contains a comprehensive listing of Nice classification terms, all of which are acceptable in the selected national offices, and incorporates a variety of tools to assist CTM applicants in finding, checking and matching their Nice classification terms. While the FINDER feature allows applicants to find the class of their goods and services in a selected Office, the CHECKER tool will enable them to see if their chosen term is included in the classification database of a selected national Office and, if not, to view suggested alternative terms which are acceptable. The MATCHER tool can cross-check these references with the other offices to see if they are acceptable in these offices too, and it also offers the translation of the terms entered (at present only Swedish-English/English-Swedish). For further information on this new innovation, you can consult the information guide to using this tool at http://oami.europa.eu/en/euroclass.htm. The OHIM E-Business Roundup (2006)
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German Day Items for discussion included general issues, such as the e-business state of play and the role of associations in co-operating with the OHIM, as well as specific questions on trade marks and the Community Design. For the full agenda please consult the OHIM’s website at: http://oami.europa.eu/en/office/events/default.htm
Visit to the OHIM of the Institute of Trade Mark Attorneys
ECTA-OHIM Link Committee Meeting The problem of delays with respect to the issuing of certified copies was discussed and the President confirmed that OHIM’s target is 5 working days opposed to the current 8 weeks. The Office presented the state of play of its e-business program and informed ECTA that a system of shadow users was launched in order to detect and simulate problems when using the e-filing instruments. With respect to the CTM, ECTA’s comments on the guidelines are expected. Several issues on the Madrid Protocol were discussed among which the problem of harmonizing the CTM and the US system (in particular the description of goods and services) into the Madrid system. Finally, the Office informed that e-mail/written requests for information are prioritized as they are more convenient to be dealt with than requests by telephone.
Visit of Polish Chamber of Patent Attorneys, 21-09-06
Training Session for Euro Info Centre Staff According to the Declaration of Intentions signed between the DG Enterprise & Industry and the OHIM, a second thematic training session on the CTM and RCD systems is being organised in Brussels . A 2-day training programme is scheduled for the EIC network, covering the two systems and information on the OHIM. 35 EIC staff members from different countries will participate in the training.
Workshop for the set-up of a decentralized information network on the CTM/RCD systems and information services from national offices, 21-09-06 All Member States’ national offices, including those from candidate countries, participated, except for the Greek Trade Mark office. In this workshop the OHIM presented its Information Centre in terms of role, organization, tools and statistics, the CTM/RCD systems and the IT tools to search all information available. National offices voiced their appreciation for this exercise, and in particular for the detailed presentations on CTM-ONLINE and RCD-ONLINE. The OHIM’s final aim is that national offices become the first and most important contact points in Member States for questions concerning the CTM and RCD systems.
Meeting of Administrative Board and Budget Committee
Technical Cooperation between the OHIM and the National Offices of the Member States 1. Training
At the same time, workshops have been resumed. A workshop for members of staff of the EU national offices’ info centres has been held in Alicante on 21-22 September and another one on trade mark examination matters will be organised in Madrid hosted by the Spanish Patent and Trade Mark Office early next year. Apart from this, the structure of Liaison Meetings has been changed and the 1st Liaison Meeting on Technical Cooperation and the 1st Liaison Meeting on Trade Marks have already taken place (2 March and 15 June 2006 respectively) and the 5 th Liaison Meeting on Designs took place on 5-6 October 2006. 2. IT Projects
3. Promotion and Information Services To date, 12 agreements have been signed. The subject-matter of the proposals have been:
4. Other Projects An international conference on the economic evaluation of trade marks, proposed by the Danish office, is also being organised.
Publication of On-line OHIM Forms The CTM and RCD application forms are available in all of the official languages of the EC but the other forms are only available in the five languages of the Office. Nevertheless, in order to take into account the requests of the IP Community, the Office is now translating all of its official forms into the 22 languages of the 27-member European Union that will come into being after the incorporation of Romania and Bulgaria on 1st January 2007. For the forms that need to be filed in one of the languages of the Office (the Opposition form, for example), any of the linguistic versions of such forms can be used, but the data provided must be in one of the languages of the Office. The forms have already been remitted to the Translation Centre for the Bodies of the European Union in Luxembourg and, once translated, they will be revised internally by examiners proficient in each of the languages used. The Office’s objective is to have all forms translated, revised, approved and published online by January 2007. In relation to the Madrid Protocol forms, the application form for Conversion of an International Registration designating the European Community will shortly be published on OAMI-ONLINE, the Office’s website. This new Conversion form can be used if conversion of an international registration designating the EC is requested, including cases of “opting-back” type of conversion. The WIPO MM16 form may also be used in case of “opting back” only, but the Office recommends the use of its own form. Monthly Statistical Highlights - September 2006
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(plunger – 3D) – en – the first instance examiner stated that the mark, described as an outer shape which is rotationally symmetrical with regard to its central axis, was considered devoid of any distinctive character as it consists of a three-dimensional representation of a plunger without any distinguishing element. It would therefore not be capable of distinguishing the goods and services of the applicant from those of others. Unlike a utility model or design, a trade mark must fulfill the function of being recognized as a trade mark for the goods claimed and not merely as a functional product serving certain purposes or an appropriately designed product. The examiner refused the application. The contested decision was based on Article 7(1)(b) CTMR. The Board informed the applicant that it was considering the applicability of Article 7(1)(e)(ii) CTMR. The Board first examined the applicability of the unconditional registration prohibition of Article 7(e)(ii) CTMR, which it is not subject to the exception of Article 7(3) CTMR. Article 7(1)(e)(ii) CTMR precludes from registration three-dimensional marks whose essential characteristics perform a technical function, because trade mark monopoly on such marks would illegitimately restrict competitors trading in identical or similar goods which incorporated such a function. The United States patent held by the applicant is practically irrefutable evidence that the features disclosed or claimed therein are functional. Even though the applicant stressed that the applicant’s patent cited by the Boards deviates in several aspects from the applicant’s three-dimensional shape at issue, the Board considered that the applicant’s trade mark had to be refused on the basis of Article 7(1)(e)(ii) CTMR. The Board dismissed the appeal and rejected the application for the goods in question. 
(Pk MAX) / T.K. MAXX – (en) -
/ ARKO – es – a document showing that goods have been shipped to Valencia, with a bill to a company with an address near Valencia, does not constitute proof that the goods have entered the Spanish market. The submitted evidence of use of the earlier Spanish mark was rejected as insufficient. 