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Quality Enhancement Initiatives at the OHIM Although the OHIM has, since 2002, offered its staff a varied and wide-ranging annual training programme ranging from areas as diverse as Finance & Administration, to Languages and Information Technology, there can be no doubt that the area of greatest impact on the Office's daily work lies in the IP training activities organised by the Office's Human Resources and IP Policy departments (HRD & DIPP respectively). The training calendar published by the HRD offers courses at all levels, starting with beginner introductions to Industrial Property in general and going on to cover topics as diverse as Geographical Indications, Appeal Proceedings, the TRIPS Agreements, National IP Law or the Madrid Protocol. Regular training sessions are also held on the core business aspects of the Office's daily work, especially in relation to Opposition proceedings, CTM Examination and Cancellation issues, as well as in-depth coverage of the latest case law from the EU Courts and the Member States. These sessions, though not compulsory, are well attended year after year and of the average 10 days per year spent on training by each member of staff, over 20% is dedicated to these IP courses. Aside from this HRD training programme, the Department for IP Policy also runs a series of IP lectures which form part of the Office's recently implemented Action Plan on Quality. The seminars take place every month (except August and December) and are aimed at improving the overall consistency and coherency of OHIM's examination decisions. The attendance of all of the Office's trade mark examiners who write decisions is compulsory, and in this way it is hoped that a greater level of consistency can be achieved when taking decisions based on areas of IP which have previously been less than clear. Staff from the Boards of Appeal are also invited to attend, allowing them a better insight into how the Office is approaching specific fields of Community trade mark examination practice, though such attendance is on a voluntary basis. In these seminars, practical examples are looked at and discussed and, based on the guidelines drawn up by the Department for IP Policy, the Office practice in the chosen area is established. The obligatory attendance of all examiners and the leading role taken by DIPP ensure that there is less room than before for inconsistency and misinterpretation of the written guidelines which complement the seminars. Since the first of these seminars took place in May 2006, the following areas have all been covered:
Over 20% of all training carried out at the OHIM is IP based, second only to the Office's language courses. Though not part of the Action Plan itself, a number of seminars using external trainers also form part of the OHIM's IP training offer to staff, among which are the now annual INTA trade mark examination seminars. External speakers meet with OHIM staff to discuss relevant issues in specifically selected fields of interest. The areas covered at these events have been pharmaceuticals, the electronics industry and the world of food and beverages. This year's event will focus on luxury goods. Given the subjective nature of any form of trade mark examination, it is evident that quantifying the success of this IP training in terms of tangible improvements in decision taking is an extremely difficult task. However, what has become increasingly clear is that a much more harmonized approach is taken to many of the topics selected for discussion and which were for many years the subject of varying levels of disagreement and discrepancy among examiners. There also exist a series of quality control checks to detect errors and ensure that the overall standard of written decisions is the best possible. Every week, the legal advisors from the trade marks departments meet and select for quality cross-checking a total of 102 Absolute Grounds decisions and 16 inter partes decisions – 7% and 15% respectively of the total number of weekly decisions taken. Each case is allocated to a Legal Advisor and to a Classification Expert who then check the correctness of every predefined attribute and record the results of the check. The Legal Advisor Group and the Classification Expert Group review all the errors identified by Legal Advisors/Classification Experts and confirm or reject each error. For each confirmed error, the Legal Advisor/Classification Expert of the service notifies it to the individual Examiner and, if a remedy is possible, requests that the Examiner remedies the error. Monthly reports are generated using the results of the recorded Quality Checks. The Legal Advisor and Classification Expert Groups carry out monthly analyses to identify steps that can be taken to reduce the future occurrence of errors. On a quarterly basis, a Quality Check Review Group made up of representatives from TMCD, TMRD, the Department for IP Policy and the Quality Management Department carries out a more comprehensive analysis. This serves two purposes. Firstly it is concerned with the calculation of the service standards achieved that is to be published in the website. Secondly it is concerned with isolating any shortfalls against targets, identifying trends and gaining a fuller understanding of the causes of performance problems, so that preventive actions may be proposed for discussion and agreement. In addition to all these checks, the Office is currently in the preparatory stages of establishing a quality control mechanism made up of external experts to complement the existing ones carried out by Office staff. Such checks, along with the current ones and a continued development of the OHIM's IP training programmes is aimed at guaranteeing the highest standard of quality for all those who use the Office's services.
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The James Nurton interview This month, James interviews Miguel Angel Medina, partner of IP specialist firm Elzaburu in Madrid , Spain How long have you worked in trade marks? About 60% of the applications we handle are for Community trade marks, which is about 600 applications a year. We have filed about 7,000 at the OHIM since the beginning and in fact we filed the first ever Community trade mark, for AIPPI. Most of our big clients are international – particularly American, Japanese and Swiss companies. We also have a large number of oppositions. What do you think of processing and examination at the OHIM? I do think the criteria as to distinctiveness of trade marks are too strict. I understand that in a market of 27 countries you cannot admit a trade mark giving a monopoly. But I think things like slogans should not be so restrictive – they should be granted but given limited protection. Otherwise you can limit creativity. And there are some things that are considered to be generic and not distinctive, which I think is too strict. For example, we had problems registering the three-dimensional Coca-Cola bottle when the Office objected that it was not distinctive. We had to file hundreds of documents, as well as photos of people like Fidel Castro and the Beatles drinking Coca-Cola, to show that you could know it was Coca-Cola from the shape of the bottle. We also referred to a decision in Egypt in the 1960s and said that the bottle was the paradigm of a three-dimensional shape mark. It was registered finally. It was shocking in the beginning and eventually a big coup for the clients. You don't know if you can overcome the objections. Personally I don't see any special difference between traditional word marks and more unusual marks. What other unusual marks have you seen? What else would you like to see improved? In opposition cases you see objections that the examiner hasn't found the relevant documents. In the beginning, they would phone when there were doubts to confirm the details. But now that is not always the case. But in general of course we are very happy. Do you welcome moves to reduce fees? Have you had much experience of litigating CTMs? Regarding consistency, I think it is reasonable. There are always difficulties: national courts are not always using the same criteria. But in general it is acceptable. What do you think of the Community design right? In Spain there is a parallel law to the Community design. It has always been seen as a second-class right – many people think “I only want trade marks”. But it is useful because you can use it to support damages. How do you think trade marks will change in the future? A good case is football teams. For example, a Real Madrid shirt must be in the current year's design and some small things on the sleeve vary depending on the league so they can sell more shirts and make it more difficult for piracy. Maybe it's possible to use a combination of designs and trade marks so that you can make use of IP protection for the frequent changes in your brand by registering the common element as a trade mark and registering other accessories as designs or using unfair competition law. You would have to study the client and decide which approach is best.
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| Community Trade Mark | Decision of the Cancellation Division of 20/03/2007 Tupungato is a subregion of the Mendoza region in Argentina. It has a tradition for making wines. Even though the geographical region of Tupungato is not protected as a geographical indication under Article 7(1)(j) CTMR, it is deemed descriptive of the geographical origin of the goods. IN THE PROCEEDINGS FOR A DECLARATION OF INVALIDITY OHIM reference number: 1100C 002020832Community trade mark: 2 020 832 TUPUNGATO Language of the proceedings: English
against
THE CANCELLATION DIVISION composed of: Wouter Verburg, Cinzia Negro and Julio Laporta Insa has taken the following decision on 20/03/2007 :
and fixes the costs as follows: The amount of the costs to be paid by the CTM proprietor to the applicant pursuant to Article 81(6) CTMR in conjunction with Rule 94(3) IR shall be: 1150 Euro (450 Euro - representation costs - and 700 euro - invalidity fee -). FACTS AND ARGUMENTS (2)On 17/01/2005, the applicant filed a request for a declaration of invalidity against the CTM on the basis of absolute grounds, namely that: - the CTM has been registered contrary to the provisions of Article 7(1)(b)(c) (g)(j) CTMR (Article 51(1)(a) CMTR);
(3)The applicant files its request for a declaration of invalidity in respect of all the goods covered by the Community trade mark, namely alcoholic beverages (except beers) in class 33. (4)On 23/06/2005 the Community trade mark proprietor was notified of the request. The proprietor filed observations on 21/03/2006. The applicant replied on 07/08/2006 The CTM owner replied on 04/10/2006 to the last observations of the applicant. (5)In support of its arguments, the applicant argued that the contested CTM: - is devoid of distinctive character under Article 7(1)(b) CTMR and is descriptive of the origin of the goods in question under Article 7(1)(c) CTMR as it consists of the word TUPUNGATO, which is a wine growing region in the Uco Valley in Argentina;
(6)The applicant submitted various documents in support of its claims. (7)The CTM proprietor contested all the claims and documents provided by the applicant and argued as follows: - The region of TUPUNGATO's contribution to grape yields and wine production in the province of Mendoza is very small (it does not account for one percent of the province's overall total).
(8)Both parties submitted further arguments in order to rebut the opposing claims. The applicant filed additional production figures dated 2000.
GROUNDS FOR THE DECISION On the admissibility (9)The request for invalidation was filed after registration of the Community trade mark. The fee for a request for a declaration of invalidity has been duly paid, Article 55(2) second sentence CTMR. The request complies with the formalities prescribed in the CTMR and the Implementing Regulation and is, therefore, admissible. On the substance The request based on Article 51(1)(a) CTMR in conjunction with Article 7(1)(j) CTMR (11)Pursuant to Article 7(1)(j) CTMR, the following shall not be registered: trade marks for wines which contain or consist of a geographical indication identifying wines or for spirits which contain or consist of a geographical indication identifying spirits with respect to such wines or spirits not having that origin. (12)The application of this provision is limited to “geographic indications” protected as such under specific Community legislation (Regulation 510/06, bilateral treaties concluded by the EC, or Community legislation in the field of wines and spirits). (13)This provision regards a category of descriptive terms which are “descriptive as of law”, because the descriptive nature of the term has been specified in Community law or another legal instrument which is either binding or to be taken into account by the Office. This applies, in the sector of wines and spirits, to all registered geographical indications. (14)All registered geographical indications, be it, as already indicated, under Council Regulation 510/06 or under bilateral agreements of the EC with third countries such as Australia, South Africa and Chile, or be it under any other national law or bilateral or multilateral treaty concluded by a Member State protecting geographical indications by registration, fall within Article 7(1)(j) CTMR. (15)The name TUPUNGATO is not a registered geographical indication in the sense mentioned above. Therefore, Article 7(1)(j) CTMR is not applicable to the present case. The applicant's claim must thus be rejected inasmuch as it is based on said provision. The request based on Article 51(1)(a) CTMR in conjunction with Article 7(1)(c) CTMR (17)Pursuant to Article 7(1)(c) CTMR, the following shall not be registered, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service. (18)Article 7(1)(c) CTMR includes descriptive geographical term. Like for all other descriptive terms, the test is whether the geographic term describes objective characteristics of the goods and services, and this must be assessed with reference to the goods claimed and with reference to the perception by the relevant public. (19)As far as wines and spirits are concerned, the descriptive character of the geographical term usually pertains to the place of production of the goods. (20)In order to support its claim, the applicant presented the following documents:
(22)As the applicant correctly pointed out, there is a public interest underlying Article 7(1)(c) that descriptive terms should not be registered as trade marks so as to remain freely available to all competitors. On the other hand, it is not necessary for the Office (or for the applicant of a declaration of invalidity, as it is in the present case) to show that there is a present or future need or concrete interest of third parties to use the descriptive term applied for (see Judgment of 4 May 1999, Cases C-108/97 and C-109/97, Chiemsee , EC R. I-2779 , paragraph 35; Judgment of 12 February 2004, Case C-363/99, Koninklijke KPN Nederlands , ( POSTKANTOOR ), ECR. I-1619, paragraph 61). (23)According to the case-law of the Court of Justice, Article 3(1)(c) of the Directive (which corresponds to Article 7(1)(c) CTMR) is to be interpreted as meaning that:
(24)The average consumer of wine is the public at large. However, a non-negligible part of this public is composed of “wine fans”, having a superior knowledge in the field. Furthermore, wine in general (be it originating from the EU or from countries outside the same) is not only sold in supermarkets, but also in wine shops. In the latter, the customer is often assisted and guided by an expert vendor, a considerable part of whose job consists in recommending this or that wine according to their characteristics, origin, combination with certain meals, etc. These considerations are in the credit of a presumable knowledge of the geographical name TUPUNGATO as a wine producing area by a part of the targeted EU consumers. (25)According to the above-mentioned case-law, Article 7(1)(c) CTMR is not limited to geographic terms already having a reputation or for which the Office (or the applicant for invalidity) is able to demonstrate an actual need to keep it free for the competitors. In this respect, the proprietor's argument that TUPUNGATO's contribution to grape yields and wine production corresponds to a small percentage when compared with that of the whole province of Mendoza is rather irrelevant. It is sufficient, for the application of the above provision, that TUPUNGATO has been an established wine producing area for decades and that it shows an increasing trend in this field. This is reinforced by the objective relevance of the geographic origin in the trade sector in question, where geographical names are traditionally used to indicate the origin of the goods or to refer to certain qualitative and objective criteria thereof. This traditional circumstance also influences the subjective perception of the consumer, who is accustomed to see, in many cases, a coincidence between the name of the wine and that of the relevant place of production. (26)Even if, as the proprietor claims, the name TUPUNGATO designates a place which is not currently associated with wine in the mind of the relevant consumers (which, by the way, is not proved) it is reasonable to assume that TUPUNGATO is a geographical name which is liable to be used in future by wine traders and producers as an indication of the geographical origin of their goods and is, in the mind of the targeted public, capable of designating the geographical origin of the category of goods in question. (27)In such a context, the Office agrees with the applicant in that a monopoly of the pure word TUPUNGATO for alcoholic beverages and, in particular, for wine, would prevent other undertakings, like the applicant's company, from using the name of the region where the wine is produced. As already mentioned above, it is in the public interest that such names remain available for general use, by traders established in the area in question, “not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favorable response” (see Chiemsee , paragraph 26). This is especially the case for the wine trade sector, where, as already observed and as the proprietor also acknowledges, geographical indications are particularly important for the consumer owing to the fact that most of the qualities of wine are conferred by the soil and landscape where the vineyard is located. (28)Taking into account all the above considerations, it is concluded that the Community trade mark TUPUNGATO has been registered in breach of Article 7(1)(c) CTMR. Consequently, the applicant's request for invalidity based on Article 51(1)(a) CTMR is well founded. The request based on bad faith (Article 51(1)(b) CTMR) (30)The request based on Article 51(1)(b) CTMR is well founded. In the light of the evidence before it, the Office considers that the applicant was acting in bad faith when he filed the application for the trade mark TUPUNGATO. (31)As a preliminary remark, it must be observed that neither the CTMR nor the IR (Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing the CTMR) (OJ OHIM 2-3/95, p. 258) offer a definition of bad faith. (32)Bad faith is to be interpreted as unfair practices involving lack of honest intention on the part of the CTM applicant at the time of filing (see Decision of the Fourth Board of Appeal of 13 December 2004 In Case R 582/2003-4 EAST SIDE MARIO'S , paragraph 21). (33)Article 51(1)(b) is a trade mark law inbuilt unfair competition rule. The bad faith clause has, as all unfair competition rules, a wide scope of application in as much as it covers a wide variety of different trade practices and in as much as the concept develops in time with the changeable perception of the relevant trade of what is to be considered an ‘unfair practice' (see EAST SIDE MARIO'S , paragraph 22). (34)Coming to the present case, the applicant argues that the contested mark was filed in bad faith, as the proprietor was aware of the designation TUPUNGATO being a wine producing area in Argentina, which should be free for other traders to use as a geographical indication of alcoholic beverages, and in particular wine. The applicant states that the proprietor has sought to secure a monopoly in the mark for its own gain. (35)The situation has to be examined by reference to the circumstances at the filing date (28/12/2000). Subsequent events may shed light on the position at the filing date but the essential point in time to be considered is the filing date itself. (36)As indicated in the previous section, the evidence filed by the applicant shows that there is an established long-lasting wine growing industry in the area of Tupungato. The name TUPUNGATO is also mentioned as an (important) wine producing area in The Dictionary of Drink - doc. (i) -, dated 1992, and in an article taken from Wine Spectator magazine, which is dated 2002 – doc. (viii). The Argentine viticultural statistics - docs. (iii), (iv) and (v) - cover a period of various decades overall, from 1961 to 2000. Furthermore, as already mentioned, doc. (vii) gives interesting information on the geographical extension of the trade of wines coming from the TUPUNGATO area. According to this document, the wine coming from Tupungato is exported to many countries, including some EU Member States. (37)The above-mentioned evidence leads to assume that Tupungato is known as a wine producing area at least to wine experts, wine producers and dealers, including those located in the European Union. The proprietor, as a wine producer and/or distributor (the CTM is registered for class 33 goods), clearly falls within this category of people and/or entities. (38)The proprietor argues that only two of the export countries which appear in doc. (vii) are located in the European Union, namely Ireland and Sweden. The proprietor states that these countries are, in any case, considerably distant from Spain, where the proprietor conducts its business activity, which would go against the assumption of bad faith on its part. However, this circumstance alone is not deemed sufficient to refute the presumption of knowledge of the name Tupungato as an Argentinean wine producing area on behalf of the proprietor. In fact, as already observed, wine producers and dealers are supposed to have an extensive knowledge in the field. Their knowledge and skills normally include the monitoring of the market, including the international one. Furthermore, the circumstance that the proprietor operates in Spain seems to be rather in the credit of its knowledge of the Argentinean wine market, considering the strict relationship between Spain and Argentina in terms of language, import-export, immigration and international contacts, including private contacts and relations between undertakings which operate in the same trade sector. (39)In view of the above circumstances, the Office concludes that, even though the knowledge of the name TUPUNGATO as a wine producing area on behalf of the proprietor has not been proved by positive evidence, it is highly unlikely that the proprietor could ignore this at the date of filing of the contested mark. In other words, it seems extremely unlikely that the proprietor could have ignored the existing link between the name TUPUNGATO and the wine producing area having the same name and that it could consequently ignore that the sought monopoly over the name TUPUNGATO for alcoholic beverages, which include wines, would have been prejudicial to the interests of competitors producing and/or dealing with the import-export of wines from that area. (40)Therefore, it is concluded that the above evidence and considerations constitute sufficient proof of the fact that the proprietor's mark TUPUNGATO was filed in bad faith, in the sense that the proprietor dishonestly intended, through registration, to monopolize a name which, for its nature of geographical indication in relation to wines coming from a particular area, should remain freely available to competitors. (41)Since the request has been found successful under Article 51(1)(a) CTMR in combination with Article 7(1)(c) CTMR as well as under Article 51(1)(b) CTMR, there is no need to examine whether the remaining invoked grounds for invalidation (lack of distinctiveness under Article 7(1)(b) and deceptiveness under Article 7(1)(g) CTMR) would apply. COSTS THE CANCELLATION DIVISION
Notice on the availability of an appeal: Notice on the review of the fixation of costs: Country Overview: Lithuania & the Community Trade Mark
Businesses based in Lithuania have made 149 applications for Community trade marks since 1996, though the majority of these applications came after their accession to the European Union in 2004.  
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Community Design | MIDAS – Trade mark versus design registration Board of Appeal confirmed Invalidity Division decision concerning logo “MIDAS” On 3 May 2007, the Third Board of Appeal confirmed, in case R 609/2006-3, a decision taken by the Invalidity Division concerning a conflict between the earlier International trade mark no. 810 732 (above left) and the Community design registration no. 162425-0004 (for further information, see also: http://oami.europa.eu/en/office/newsletter/06003.htm ). The Board considered that “ the precise wording of Article 25(1)(e) CDR does not support the appellant's argument that the distinctive sign must be reproduced identically in the contested RCD. It is sufficient that the distinctive sign is incorporated as such in the subsequent design” (see paragraph 17 of the Board's decision). In particular, the Board pointed out that “the differences in script and the fact that the design incorporates a figurative element above the term ‘MIDAS', the abbreviation ™ after that term and the slogan […], do not detract from the design being perceived as including the sign ‘MIDAS'” (paragraph 18). When assessing the similarity of the goods, the Board observed that “it is relevant that the two-dimensional figurative logo, which constitutes the contested RCD, may be applied to an infinite range of products and services, including the products covered by the respondent's international trade mark registration” (paragraph 27). Furthermore, it considered that “it is conceivable that when the public encounters the logo, the subject of the contested RCD applied to products, their packaging or their get up, it will perceive that logo as an indication of the commercial origin of the products in question and not as a pure embellishment. Consequently, the contested RCD is liable to jeopardise the guarantee of origin which constitutes the essential function of the respondent's trade mark. The presence of the other elements in the contested RCD will not prevent the likelihood of the relevant public in the relevant Member States taking the products marketed with the appellant's logo as a line of products originating from the respondent undertaking or an undertaking economically connected to the respondent undertaking” (paragraph 28).
Deferment of Registered Community Designs: The OHIM's Internal Auditor's recommendations have been implemented to enhance control of deferred designs. The Office has now completed the implementation of the following recommended measures: Receipt
Receipt The Office is pleased to inform you that your application was received by the Office on ../../2007 and has been allocated the above file number(s). You will be notified of the filing date once the requirements regarding this have been examined in line with Article 10 of the Implementing Regulation ( CDIR ). The following information is provided in the annex to help you identify your application.
Please inform us immediately if you find any errors in the information provided in the receipt. All future contact or correspondence with the Office in relation to the application should include the above file number(s). Designs Department Sent to fax number: 00XXXXXXXXXXX Encl: attachments: details of the application ANNEX: Community Design N° 000XXXXXX Number of designs 1 Request for deferment Identification of the [first] design [First View attached] Examination Manual The manual also includes a protocol on corrective measures and actions to be taken when a design, which should be deferred, is published. Should the publication of a deferred design erroneously take place, the Office will address the incident ipso facto , 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 manual makes explicit that, once the design is registered, publication may be requested by the holder at any time prior to the expiry of the 30-month period. The request must, however, arrive, within 27 months from the date of filing or, where applicable, from the priority date. New RCD e-filing Assistance of users to keep deferred designs under control a) when filing a Community design application containing a request of deferment, make sure to clearly indicate in the form such request;
In terms of RCD filings, Lithuania has filed a total of 65 designs since the inception of the registered Community design system in 2003. 
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LATEST TRADE MARK AND DESIGN NEWS FROM LUXEMBOURG A:ECJ European Court of Justice (ECJ): Appeals from decisions of the Court of First Instance, Article 63 CTMR A-1: ECJ Judgments and Orders (-) A-2: ECJ: Developments in pending cases (-) B: European Court of Justice: Preliminary Rulings B-1: ECJ Preliminary Rulings Boehringer Ingelheim-II : C-348/04 - Judgment of 26 April 2007 . Clarification of Boehringer Ingelheim-I, C-143/00. Keywords: EC Treaty: principle of free flow of goods, Article 28 - TM Directive (TMD) - Agreement on the European Economic Area - Exhaustion, Article 7(2) TMD, as amended by Protocol 28 to the EEA-Agreement - Re-importation of goods (“parallel imports”) - Repackaging of goods. The case represents the second round at European level of a dispute, in the UK , between Boehringer Ingelheim and other pharmaceutical companies against two so-called parallel importers. The medicinal products concerned in the main proceedings were marketed under various trade marks by Boehringer Ingelheim and others in the Community, where they were bought by Swingward and Dowelhurst and imported into the United Kingdom . In order to market them in that Member State , Swingward and Dowelhurst altered to a certain extent the packaging of those products and the information leaflets which were included with them. The alterations made vary from one case to the next. In some cases, a label setting out certain critical information, such as the name of the parallel importer and its parallel import licence number, was attached to the original packaging. On such packaging, wording in languages other than English thus remained visible and the trade mark was not covered over. In other cases, the product was repackaged in boxes designed by the parallel importer on which the original manufacturer's trade mark was reproduced. Finally, in some cases, the product was repackaged in boxes designed by the parallel importer and which did not bear the trade mark of the manufacturer but only the generic name of the product. Where this was the case, the packaging inside the box bore the original trade mark but a self-adhesive label was attached, indicating the generic name of the product as well as the identity of the manufacturer and of the parallel import licence holder. In the first round before the High Court, that court had referred the following questions to the ECJ = C-143/00 (2002) ECR I-3759: “(1) Can a proprietor of a trade mark use his trade mark rights to stop or hinder the import of his own goods from one Member State into another or to hinder their subsequent marketing or promotion when the importation, marketing or promotion causes no, or no substantial, harm to the specific subject-matter of his rights? (2) Is the answer to the previous question different if the ground relied on by the proprietor is that the importer or subsequent dealer is using his mark in a way which, although not prejudicial to its specific subject-matter, is not necessary? (3) If an importer of the proprietor's goods or a dealer in such imported goods needs to show that his use of the proprietor's mark is “necessary”, is that requirement met if it is shown that the use of the mark is reasonably required to enable him to access (a) part only of the market in the goods, or (b) the whole of the market in the goods; or does it require that the use of the mark was essential to enabling the goods to be placed on the market and if none of these, what does “necessary” mean? (4) If the proprietor of a mark is, prima facie, entitled to enforce his national trade mark rights against any use of his mark on, or in relation to, goods which is not necessary, is it abusive conduct and a disguised restriction on trade, in accordance with the second sentence of Article 30 EC, to use that entitlement in order to hinder or exclude parallel imports of his own goods which do not threaten the specific subject-matter or essential function of the trade mark? (5) Where an importer or someone dealing in imported goods intends to use the proprietor's trade mark on, or in relation to, those goods and such use does and will not prejudice the specific subject-matter of the mark, must he nevertheless give the proprietor advance notice of his intended use of the mark? (6) If the answer to the previous question is in the affirmative, does that mean that failure of the importer or dealer to give such notice has the effect of entitling the proprietor to restrain or hinder the importation or further commercialisation of those goods even though such importation or further commercialisation will not prejudice the specific subject-matter of the mark? (7) If an importer or someone dealing in imported goods must give prior notice to the proprietor in respect of uses of the trade mark which do not prejudice the specific subject-matter of the mark, (a) does that requirement apply to all such cases of the trade mark, including in advertising, re-labelling and repackaging or, if only some uses, which? (b) must the importer or dealer give notice to the proprietor or is it sufficient that the proprietor receives such notice? (c) how much notice must be given? (8) Is a national court of a Member State entitled, at the suit of the proprietor of trade mark rights, to order injunctions, damages, delivery-up and other relief in respect of imported goods or the packaging or advertisements therefor where the making of such an order (a) stops or impedes the free movement of goods placed upon the market within the EC by the proprietor or with his consent but (b) is not for the purpose of preventing harm to the specific subject-matter of the rights and does not help to prevent such harm?” In C-143/00 the ECJ had handed down the following ruling: “1. Article 7(2) of First Council Directive 89/104 … must be interpreted as meaning that a trade mark proprietor may rely on its trade mark rights in order to prevent a parallel importer from repackaging pharmaceutical products unless the exercise of those rights contributes to artificial partitioning of the markets between Member States. 2. Replacement packaging of pharmaceutical products is objectively necessary within the meaning of the Court's case-law if, without such repackaging, effective access to the market concerned, or to a substantial part of that market, must be considered to be hindered as the result of strong resistance from a significant proportion of consumers to relabelled pharmaceutical products. 3. A parallel importer must, in any event, in order to be entitled to repackage trade-marked pharmaceutical products, fulfil the requirement of prior notice. If the parallel importer does not satisfy that requirement, the trade mark proprietor may oppose the marketing of the repackaged pharmaceutical product. It is incumbent on the parallel importer himself to give notice to the trade mark proprietor of the intended repackaging. In the event of dispute, it is for the national court to assess, in the light of all the relevant circumstances, whether the proprietor had a reasonable time to react to the intended repackaging.” The High Court had then applied the judgment in Boehringer Ingelheim and Others and had ruled in favour of the claimants in the main proceedings. However, the High Court's decisions formed the subject-matter of an appeal before the Court of Appeal and, in its judgment of 5 March 2004 , that court set out a number of findings which differ from those of the High Court. In those circumstances, the Court of Appeal decided to stay the proceedings and to refer the following questions to the European Court of Justice for a preliminary ruling: Reboxed products “(1) Where a parallel importer markets in one Member State a pharmaceutical product imported from another Member State in its original internal packaging but with a new exterior carton printed in the language of the Member State of importation (a “reboxed” product): (a) does the importer bear the burden of proving that the new packaging complies with each of the conditions set out in Joined Cases C-427/93, C-429/93 and C-436/93 Bristol-Myers Squibb [and Others] [1996] ECR I-3457 or does the trade mark proprietor bear the burden of proving that those conditions have not been complied with or does the burden of proof vary from condition to condition, and if so how? (b) does the first condition set out in Bristol-Myers Squibb as interpreted in Case C-379/97 Upjohn … [1999] ECR I-6927 and Boehringer Ingelheim and Others, namely that it must be shown that it is necessary to repackage the product in order that effective market access is not hindered, apply merely to the fact of reboxing (as held by the Court of Justice of the European Free Trade Association in Case E-3/02 Paranova v Merck) or does it also apply to the precise manner and style of the reboxing carried out by the parallel importer, and if so how? (c) is the fourth condition set out in Bristol-Myers Squibb and Others, namely that the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark or its owner, only infringed if the packaging is defective, of poor quality or untidy or does it extend to anything which damages the reputation of the trade mark? (d) if the answer to Question l(c) is that the fourth condition is infringed by anything which damages the reputation of the trade mark and if either (i) the trade mark is not affixed to the new exterior carton (“de-branding”) or (ii) the parallel importer applies either his own logo or a house-style or get-up or a get-up used for a number of different products to the new exterior carton (“co-branding”) must such forms of box design be regarded as damaging to the reputation of the trade mark or is that a question of fact for the national court? (e) If the answer to Question (1)(d) is that it is a question of fact, on whom does the burden of proof lie? Overstickered products (2) Where a parallel importer markets in one Member State a pharmaceutical product imported from another Member State in its original internal and external packaging to which the parallel importer has applied an additional external label printed in the language of the Member State of importation (an “overstickered” product): (a) do the five conditions set out in Bristol-Myers Squibb and Others apply at all? (b) If the answer to Question 2(a) is yes, does the importer bear the burden of proving that the overstickered packaging complies with each of the conditions set out in Bristol-Myers Squibb and Others or does the trade mark proprietor bear the burden of proving that those conditions have not been complied with or does the burden of proof vary from condition to condition? (c) if the answer to Question 2(a) is yes, does the first condition set out in Bristol-Myers Squibb and Others as interpreted in Upjohn … and Boehringer Ingelheim and Others, namely that it must be shown that it is necessary to repackage the product in order that effective market access is not hindered, apply merely to the fact of overstickering or does it also apply to the precise manner and style of overstickering adopted by the parallel importer? (d) if the answer to Question 2(a) is yes, is the fourth condition set out in Bristol-Myers Squibb and Others, namely that the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark or its owner, only infringed if the packaging is defective, of poor quality or untidy or does it extend to anything which damages the reputation of the trade mark? (e) if the answer to Question 2(a) is yes and the answer to Question 2(d) is that the fourth condition is infringed by anything which damages the reputation of the trade mark, is it damaging to the reputation of a trade mark for this purpose if either (i) the additional label is positioned so as wholly or partially to obscure one of the proprietor's trade marks or (ii) the additional label fails to state that the trade mark in question is a trade mark owned by the proprietor or (iii) the name of the parallel importer is printed in capital letters? Notice (3) Where a parallel importer has failed to give notice in respect of a repackaged product as required by the fifth condition of Bristol-Myers Squibb and Others, and accordingly has infringed the proprietor's trade mark(s) for that reason only: (a) is every subsequent act of importation of that product an infringement or does the importer only infringe until such time as the proprietor has become aware of the product and the applicable notice period has expired? (b) is the proprietor entitled to claim financial remedies (i.e. damages for infringement or the handing over of all profits made by infringement) by reason of the importer's acts of infringement on the same basis as if the goods had been spurious? (c) is the granting of financial remedies to the proprietor in respect of such acts of infringement by the importer subject to the principle of proportionality? (d) if not, upon what basis should such compensation be assessed given that the products in question were placed on the market within the [European Economic Area] by the proprietor or with his consent?“ The 2 nd Chamber of the ECJ (Timmermanns; Klucka; Makarczyk; Arestis; Bay Larsen, judge rapporteur) gave the following answer: “1. Article 7(2) of the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, is to be interpreted as meaning that the trade mark owner may legitimately oppose further commercialisation of a pharmaceutical product imported from another Member State in its original internal and external packaging with an additional external label applied by the importer, unless – it is established that reliance on trade mark rights by the proprietor in order to oppose the marketing of the overstickered product under that trade mark would contribute to the artificial partitioning of the markets between Member States; – it is shown that the new label cannot affect the original condition of the product inside the packaging; – the packaging clearly states who overstickered the product and the name of the manufacturer; – the presentation of the overstickered product is not such as to be liable to damage the reputation of the trade mark and of its proprietor; thus, the label must not be defective, of poor quality, or untidy; and – the importer gives notice to the trade mark proprietor before the overstickered product is put on sale, and, on demand, supplies him with a specimen of that product. 2. The condition that the repackaging of the pharmaceutical product, either by reboxing the product and re-applying the trade mark or by applying a label to the packaging containing the product, be necessary for its further commercialisation in the importing Member State, as one of the conditions which, if fulfilled, prevent the proprietor under Article 7(2) of Directive 89/104, as amended by the Agreement on the European Economic Area, from opposing such commercialisation, is directed solely at the fact of repackaging and not at the manner and style of the repackaging. 3. The condition that the presentation of the pharmaceutical product must not be such as to be liable to damage the reputation of the trade mark and of its proprietor – as a necessary condition for preventing the proprietor, pursuant to Article 7(2) of Directive 89/104, as amended by the Agreement on the European Economic Area, from legitimately opposing further commercialisation of a pharmaceutical product where the parallel importer has either reboxed the product and re-applied the trade mark or applied a label to the packaging containing the product – is not limited to cases where the repackaging is defective, of poor quality, or untidy. 4. The question whether the fact that a parallel importer:
is liable to damage the trade mark's reputation is a question of fact for the national court to decide in the light of the circumstances of each case. 5. In situations such as those in the main proceedings, it is for the parallel importers to prove the existence of the conditions that – reliance on trade mark rights by the proprietor in order to oppose the marketing of repackaged products under that trade mark would contribute to the artificial partitioning of the markets between Member States; – the repackaging cannot affect the original condition of the product inside the packaging; – the new packaging clearly states who repackaged the product and the name of the manufacturer; – the presentation of the repackaged product is not such as to be liable to damage the reputation of the trade mark and of its proprietor; thus, the repackaging must not be defective, of poor quality, or untidy; and – the importer must give notice to the trade mark proprietor before the repackaged product is put on sale and, on demand, supply him with a specimen of the repackaged product, and which, if fulfilled, would prevent the proprietor from lawfully opposing the further commercialisation of a repackaged pharmaceutical product. As regards the condition that it must be shown that the repackaging cannot affect the original condition of the product inside the packaging, it is sufficient, however, that the parallel importer furnishes evidence that leads to the reasonable presumption that that condition has been fulfilled. This applies a fortiori also to the condition that the presentation of the repackaged product must not be such as to be liable to damage the reputation of the trade mark and of its proprietor. Where the importer furnishes such initial evidence that the latter condition has been fulfilled, it will then be for the proprietor of the trade mark, who is best placed to assess whether the repackaging is liable to damage his reputation and that of the trade mark, to prove that they have been damaged. 6. Where a parallel importer has failed to give prior notice to the trade mark proprietor concerning a repackaged pharmaceutical product, he infringes that proprietor's rights on the occasion of any subsequent importation of that product, so long as he has not given the proprietor such notice. The sanction for that infringement must be not only proportionate, but also sufficiently effective and a sufficient deterrent to ensure that Directive 89/104, as amended by the Agreement on the European Economic Area, is fully effective. A national measure under which, in the case of such an infringement, the trade mark proprietor is entitled to claim financial remedies on the same basis as if the goods had been spurious, is not in itself contrary to the principle of proportionality. It is for the national court, however, to determine the amount of the financial remedies according to the circumstances of each case, in the light in particular of the extent of damage to the trade mark proprietor caused by the parallel importer's infringement and in accordance with the principle of proportionality.”
B-2: ECJ Preliminary Rulings: Developments in pending cases (-)
C:CFI Court of First Instance (CFI): Judgments and Orders on appeals against decisions of the OHIM, Article 63 CTMR C-1: CFI Judgments and Orders Focus/Micro Focus : T-491/04 – Judgment of 16 May 2007 (only in FR, DE; action allowed; the OHIM itself had pleaded in favour of the plaintiff). Keywords: CFI proceedings: procedural position of the OHIM - Opposition: likelihood of confusion (LOC) - LOC: comparison of marks. The action had been directed against a decision of the 2nd Board of 18.10.2004 in R0542/2002-2 relating to CTM application “Focus” (word), applied for a wide range of goods and services in Classes 9, 16, 41 and 42. It had been opposed by Merant GmbH on the basis of their earlier German mark Micro Focus, also registered in the said classes.
Whereas the Opposition Division had allowed the opposition, the Board had held to the contrary, on the grounds that the marks were dissimilar enough to exclude a likelihood of confusion. The 3 rd Chamber of the CFI (Jaeger, Tiili, Czúcz) allowed the action; the relevant public might be led to believe that goods and services marketed under Focus are bigger or wider versions of what is marketed under Micro Focus, and vice versa.
La Perla : T-137/05 - Judgment of 16 May 2007 (only FR, IT; action allowed; law of the case; no direct impact on Office practice). Keywords: Opposition/cancellation: earlier right with reputation - Earlier rights: comparison of marks - Reputation mark: risk of dilution. The action had been directed against a decision of the 1st Board of 25.1.2005 in R0537/2004-1 by which the Board had rejected a request for cancellation based on relative grounds lodged against CTM “Nimei La Perla Modern Classic” (Class 14). It had been based on a series of earlier marks, amongst which word mark “La Perla Perfums” (Class 3), and a combination mark “la Perla” (shown below), registered, inter alia, in Class 14. Reputation had been claimed for some of the earlier marks.
The Board had rejected the opposition on the grounds that the two marks at issue are dissimilar. The 3 rd Chamber of the CFI (Jaeger, Tiili, Czúcz) held to the contrary (noting that the earlier mark was contained in the subsequent sign).
Cor/Dor : T-342/05 - Judgment of 23 May 2007 (only in DE, FR; action dismissed; Office practice confirmed). Keywords: Opposition: likelihood of confusion (LOC) - LOC: comparison of marks. The action had been directed against a decision of the 1st Board of 14.7.2005 (R0556/2003-1) relating to CTM application “Cor” (word), applied for a range of goods in Class 3. It had been opposed on the basis of “Dor” (as shown below), also registered in Class 3 for similar products.
The opposition had been rejected on the grounds that there is no LOC because the marks at issue are dissimilar. The 4 th Chamber of the CFI (Legal; Wiszniewska-Bialecka; Moavero-Milanesi) confirmed the decision of the Board, relying on standard criteria.
Black & Decker: T-239/05; T-240/05; T-245/05; T-246/05; T-247/05; T-255/05; T-274/05 to T-280/05 - Judgment of 15 May 2007 (actions dismissed; Office practice confirmed). Keywords: Opposition proceedings: formalities. The action had been directed against a series of decisions of the 1st Board of 19 April 2005 (R0727/2004-1, R0729/2004-1, R0723/2004-1, R0730/2004-1 and R0724/2004-1), of 27 April 2005 (R0722/2004-1) and of 3 May 2005 (R0788/2004-1, R0789/2004-1, R0790/2004-1, R0791/2004-1, R0792/2004-1, R0793/2004-1 and R0794/2004-1), relating to opposition proceedings between Atlas Copco AB and The Black & Decker Corporation. The signs for which registration was sought are the following: (a) in cases T-240/05, T-245/05, T-246/05 and T-255/05: yellow and black figurative marks representing electric power tools; (b) in cases T-239/05 and T-247/05: three-dimensional representations of two yellow and black electric power tools; (c) in cases T-274/05 to T-280/05: a representation of the juxtaposition of the two colours yellow and black. The goods for which the registrations were sought are in Class 7, and correspond for each of the marks applied for to the following description: manually operated portable electric power tools (excluding gardening tools). The oppositions lodged had been based on earlier non-registered marks and other business identifiers used in the course of trade, in accordance with Article 8(4) CTMR. The faxed notices of opposition had been received by OHIM in black and white within the statutory time limit. The originals in colour had been sent by mail and had been received later. By decisions of 15 June 2004 (No 1963/2004 in case T-255/05, No 1958/2004 in case T-247/05, No 1964/2004 in case T-246/05, No 1962/2004 in case T-239/05, No 1957/2004 in case T-240/05, and No 1956/2004 in case T-245/05) and 6 July 2004 (No 2219/2004 in case T-274/05, No 2216/2004 in case T-275/05, No 2214/2004 in case T-276/05, No 2212/2004 in case T-277/05, No 2215/2004 in case T-278/05, No 2218/2004 in case T-279/05 and No 2217/2004 in case T-280/05) the Opposition Division rejected the oppositions. In substance, in each of the cases it had been held that the documents lodged by the opponent within the period laid down by Article 42(1)(c) CTMR were insufficient to clearly identify the earlier marks and signs used in the course of trade on which the opposition was based. The Opposition Division found that the documents filed as Attachment A and intended to identify the representation of the marks and the signs did not provide clear information as to what had to be considered the marks and signs on which the opposition was based. As a result, the Opposition Division decided that the opposition was inadmissible because it did not clearly identify the earlier trade marks and signs on which it was based. In conclusion, the Opposition Division declared that the notices of opposition did not comply with the requirements of Article 42(1)(c) CTMR and Rule 18(1) CTMIR. By decisions of 19 April (in cases T-239/05, T-240/05, T-245/05 to T-247/05), 27 April (in case T-255/05) and 3 May 2005 (in cases T-274/05 to T-280/05), the 1 st Board set aside the decisions of the Opposition Division and remitted the cases back to it for further prosecution, within the meaning of Article 62(1) CTMR. In substance, the Board considered the appeals to be well founded, since the earlier trade marks and signs on which the oppositions were based were well identified in Attachment A. It held that each of the different models of electric power tools depicted in Attachments A ‘was clearly identified since the representations faxed in black and white, confirmed by mail in colour, were perfectly clear and precise'. The Board pointed out that a number of models were identified by their reference number and by their specifications shown in tabular form. Therefore, the Board held that the signs were clearly identified for the purpose of Rule 18(1) CTMIR. The said decisions formed part of the present action, in which the 2 nd Chamber of the CFI (Pirrung; Forwood; Papasavas) confirmed the Board's decision.
Nasdaq : T-47/06 - Judgment of 10 May 2007 (action dismissed; Office practice confirmed). Keywords: CFI proceedings: effect, in CFI proceedings, of the change of a stance taken in Office proceedings - Opposition: earlier right with reputation, Article 8(5) CTMR - Opposition proceedings: general principles: considerations as to the motives why earlier sign had been picked - Article 8(5) CTMR/dilution/unfair advantage: applicability of general considerations. The action had been directed against a decision of the 2nd Board of 7.12.2005 in R0752/2004-2 relating to CTM application “nasdaq”, as shown below.
The goods for which registration had been sought are in Classes 9, 12, 14, 25 and 28, namely: Class 9: Protective helmets for sports, cycling, motorcycling, motor racing, skiing, protective goggles for sports and pads for protecting body and limbs against accidents for personal use, time recording apparatus; Class 12: Vehicles, in particular bicycles and mountain bikes; Class 14: Clocks, chronometers, sports chronometers; Class 25: Clothes, in particular sportswear, clothing for gymnastics, ski boots, and après-ski boots, sports shoes in general; and Class 28: Skis, ski poles, anti-vibration plates for skis, snowboards, boards for surfing on snow and on water, ski bindings and ski wax, stationary exercise bicycles, gymnasium equipment and apparatus. The application had been opposed by The Nasdaq Stock Market Inc. (USA) on the basis of their CTM right in the word “NASDAQ”, registered for a range of goods and services, inter alia, in Classes 35 and 36. The opposition had been allowed on the basis of Article 8(5) CTMR. The 4 th chamber of the CFI (Legal, Wiszniewska-Bialecka, Moavero-Milanesi) confirmed the findings of the Board. (a)Stance taken in proceedings before the Office: effect as regards subsequent CFI proceedings. Arguments “(14) Next, most of the evidence of reputation, provided by the intervener during the administrative proceedings, concerned the Nasdaq index and the American market. It is not related to specific services that the intervener supplies to customers or to goods sold or marketed in Europe under the NASDAQ trade mark. Therefore, that evidence does not establish the reputation of that trade mark in the European Union. (15) Finally, the Board has infringed Article 8(5) of Regulation No 40/94 by stating that the reputation of a trade mark does not need to extend to all sectors of the economy, although the degree of knowledge required for a trade mark to have a reputation is greater than the degree of knowledge required for a mark to be well known within the meaning of Article 6a of the Paris Convention for the Protection of Intellectual Property 1883, as revised and amended. Consequently, a trade mark has a reputation only where it is known even by sections of the public which do not purchase the goods it covers. (16) The applicant concludes from the foregoing that the earlier mark was wrongly regarded as having a reputation. Therefore, the use of the mark for which registration is sought cannot entail advantage or detriment. Furthermore, neither the reputation, advantage nor the detriment mentioned, have been proved. Moreover, even if evidence of the reputation was produced, the Board of Appeal drew incorrect inferences from it. Therefore, the contested decision must be set aside. 17 OHIM replies, first, that, in order to enjoy the protection provided for in Article 8(5) of Regulation No 40/94, the sign at issue must indeed be known and perceived as a trade mark by at least a significant portion of the European public. However, during the administrative proceedings the applicant accepted that the way in which the sign NASDAQ was used was such that it was in fact used and perceived as a trade mark, and then did nothing more than cast doubt on the degree of recognition of that sign by the market. Therefore, the applicant's argument that the sign NASDAQ was not used and perceived as a trade mark is inadmissible, since it alters the subject-matter of the dispute contrary to Article 135(4) of the Rules of Procedure of the Court of First Instance.” The Court's decision “(41) The applicant alleges, in substance, that the references to the Nasdaq indices do not establish the use of the mark NASDAQ and that, as a result, the reputation of those indices does not establish the reputation of the mark NASDAQ. (42) First, OHIM's argument, that that reasoning is inadmissible because it changes the subject-matter of the dispute contrary to Article 135(4) of the Rules of Procedure, must be rejected. (43) It is true that, according to Article 135(4), the parties' pleadings may not change the subject-matter of the proceedings before the Board of Appeal. However, under Article 8(5) of Regulation No 40/94, an opposition to registration of a trade mark may be accepted if the earlier mark has a reputation which, according to the case-law, must be determined by the intensity, geographical extent and duration of its use (see, with respect to Article 5(2) 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), the substantive content of which is identical to that in Article 8(5) of Regulation No 40/94, Case C-375/97 General Motors [1999] ECR I-5421, paragraphs 26 and 27). Therefore, in order to determine whether Article 8(5) of Regulation No 40/94 applies to this case the Board (…) was obliged, before assessing the extent of the use of the mark NASDAQ and before determining whether it has a reputation, to ascertain first of all whether that mark had been used at all. (44) Since the subject-matter of the dispute before the Board (…) was constituted by the intervener's application for refusal of the application for registration filed by the applicant on the basis of Article 8(5) (CTMR), the question of the use of the mark NASDAQ was thus put before the Board of Appeal. Therefore, even if the applicant had denied the fact that the earlier mark had been used as a trade mark for the first time before the Court of First Instance, in order to show that Article 8(5) (CTMR) was not applicable in this case, it would not, in so doing, have modified the subject-matter of the dispute before the Board of Appeal.”
Arguments “(19) Second, as regards the degree of recognition of the trade mark NASDAQ, OHIM argues that, contrary to the applicant's submissions, its reputation must be determined in relation to the perception of a specialised public which is especially well informed and highly attentive. (20) As regards the evidence adduced to prove reputation, that evidence predates the filing of the application for registration by the applicant, and the latter acknowledges that the reputation acquired by the word ‘nasdaq' relates to an international markets index, which amounts to admitting that it relates to the business management and financial services designated by the earlier trade mark. Therefore, the Board of Appeal rightly held that the documents produced by the intervener proved the earlier trade mark's reputation. (21) Contrary to the applicant's assertions, the fact that many documents refer to the Nasdaq index and to the United States market cannot call that finding into question, since the financial information services provided under the trade mark NASDAQ are not limited to the United States , as is shown by the many references to that mark in European newspapers. The absence from the file of detailed information on the degree of knowledge or recognition of the trade mark on the part of the relevant European public is irrelevant, since the extensive coverage by the media shows without any doubt that ‘nasdaq' identifies, in the eyes of the European public, a pre-eminent provider of recognised financial-market indices. Furthermore, the minutes of a meeting of the applicant's shareholders also shows that the latter were aware, on account of the earlier mark's reputation for business and financial information services, that the trade mark NASDAQ was mainly associated with the Nasdaq financial index.” The Court's decision “(46) According to the case-law, in order to satisfy the requirement relating to reputation, the earlier Community mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark, that is to say, depending on the goods or services marketed, either by the public at large, or by a more specialised public such as traders in a specific sector. In examining whether this condition is fulfilled, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking in promoting it, without any requirement that it must be known by a given percentage of the relevant public or that that reputation must exist in a substantial part of the territory concerned (see, with respect to Article 5(2) of Directive 89/104, General Motors, paragraph 43 above, paragraphs 24, 25 and 27 to 29, and, with respect to Article 8(5) of Regulation No 40/94, Case T-8/03 El Corte Inglés v OHIM – Pucci (EMILIO PUCCI) [2004] ECR II-4297, paragraph 67, and Case T-477/04 Aktieselskabet af 21. November 2001 v OHIM – TDK Kabushiki Kaisha (TDK) [2007] ECR II-0000, paragraphs 48 and 49). (47) In this case, the earlier mark is a Community mark and the services for which it was registered and used include, inter alia, as stated in paragraph 45 above, stock exchange price quotation and financial services. Since those are services which the average consumer does not generally use, the public concerned is constituted of professionals and consumers who consult financial information either in the course of their main activity or for their own information. It follows that, contrary to the applicant's submissions, the Board of Appeal was right to hold that the reputation of the trade mark NASDAQ was to be determined in relation to that European public. (48) As to the evidence adduced by the intervener to establish the reputation of its trade mark NASDAQ, the Court observes that it is apparent from the case file, and in particular from the contested decision, that the intervener produced numerous articles in the course of the administrative proceedings showing that the mark appears almost daily, particularly by way of references to the Nasdaq indices, in many newspapers distributed on Community territory (United Kingdom, Ireland, France, Germany, Belgium, Spain, Denmark, Finland) both journals specialising in financial affairs (such as The Economic Times, TheFinancial Times, La Tribune, Les Échos) and more general newspapers (such as the Daily Telegraph, the Daily Mail, The Guardian, Le Monde, Le Figaro, El País). It also stated, without being contradicted on that point by the applicant, that the references to the Nasdaq indices appeared on some of the most widely viewed television channels in Europe, such as BBC World and CNN, in the form of moving subtitles at the bottom of the screen and that they are also regularly referred to when financial news, including European financial news, was discussed. (49) Furthermore, in response to a request to that effect by the Court, OHIM produced a number of documents, mentioned in the contested decision, which had been submitted by the intervener before OHIM, but which had not been included in the case-file OHIM sent to the Court. It is clear from the file, inter alia, that during the period from 1991 to 1994 and in 1997 and 1998 the intervener spent substantial amounts of money on advertising, first, in order for its mark to appear either on television news channels broadcast generally in Europe, or on television channels broadcast in the United Kingdom, or in the financial press and, second, in order to sponsor the broadcast on television channels in the United Kingdom of a number of important sporting fixtures. (50) First of all, it is clear from the evidence that, as the Board of Appeal rightly held, the mark NASDAQ appears, from 1996, that is several years before the applicant filed its application for registration, almost daily in a great variety of newspapers widely distributed on Community territory and in programmes on major international news channels broadcast and viewed in Europe. Second, the intervener has, for several years before the application for registration filed by the applicant, made substantial investments in order to promote its mark, whether in the European Union in general or in the United Kingdom in particular, as well as in the specialist financial press and on general television news channels. (51) Since the intervener has provided detailed evidence relating to the intensity, geographical extent and duration of the use of its trade mark NASDAQ and the amount spent in promoting it, demonstrating that it was known by a significant part of the public concerned by it, the Board of Appeal was right to hold that the reputation of the trade mark NASDAQ in the European Union was established in respect of the services in Classes 35 and 36 for which it had been registered, not only among the professional public active on the financial markets, but also in an important subsection of the general public interested in the financial indices on account of their current or future investments. (52) The fact that the intervener has not produced any figures regarding the market share held by the trade mark NASDAQ in the Community, for the services in Classes 35 and 36 for which it was registered is not in itself capable of calling that finding into question. First, the list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark only serve as examples, as all the relevant evidence in the case must be taken into consideration and, second, the other detailed and verifiable evidence produced by the intervener is already sufficient in itself to conclusively prove the reputation of its mark NASDAQ within the meaning of Article 8(5) of Regulation No 40/94.”
Arguments “(22) Third, OHIM concurs with the finding of the Board of Appeal that, by specifically choosing the mark nasdaq for their goods, the applicant was seeking to take unfair advantage of the distinctive character and reputation of the earlier mark, which the intervener had already established in the proceedings before OHIM. (23) According to the case-law, the holder of the earlier mark is only required to adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment. General allegations of detriment or unfair advantage in that regard are not sufficient but, considering that in such cases it is the likelihood of a future event which has to be proved, it is often necessary to proceed on the basis of legal presumptions, that is of logical assumptions or deductions resulting from the application of the rules of probability to the facts of the specific case. (24) A detriment is caused to the distinctive character of an earlier mark, or an unfair advantage is taken when operators purposely choose signs identical or similar to a reputed mark for use in a different field, in order to divert for their own benefit part of the investments made by the earlier right holder. Such conduct is to be inferred from various interdependent elements, including the degree of distinctiveness per se of the earlier mark, its degree of reputation, the degree of similarity between the signs, and the degree of connection between the goods and services concerned. The stronger the earlier mark's distinctive character and reputation the easier it will be to accept that detriment has been caused to it or that unfair advantage has been taken of it. (25) In this case, the sign NASDAQ is inherently very distinctive. Furthermore, it enjoyed extensive media coverage well before the date on which the applicant filed its application for registration, which illustrates the scale of its reputation. Moreover, the signs in dispute are visually very similar. The fact that the services designated by each mark pertain to commercial areas which are very remote from one another is not enough to lead to the conclusion that the mark applied for would not benefit from the reputation acquired by the earlier mark. The high degree of distinctiveness per se of the earlier mark, its reputation and the great similarity between the conflicting signs therefore outweigh the lower degree of connection between the goods and services concerned. (26) Moreover, the ‘uniqueness' of the earlier mark and its degree of recognition make it highly implausible that the deliberate choice of a quasi-identical sign in a different field is an independent marketing strategy, especially as the ‘high-tech' value with which the mark NASDAQ is associated can be misappropriated in any sector which claims to embrace advanced technology, particularly sporting equipment. (27) Taking account of that evidence the applicant would have to show that there is ‘due cause', within the meaning of Article 8(5) of Regulation No 40/94, which justifies the choice of the word ‘nasdaq'. The argument that that sign was chosen naively, only because it can be read as an acronym for ‘Nuovi Articoli Sportivi Di Alta Qualita' (new high quality sports articles) is hardly credible. First, prepositions such as ‘of' or ‘di' in Italian, are not normally part of acronyms, except where it is intended to create a meaningful word, which is not the case in these proceedings. Second, the minutes of the applicant's shareholders' meeting of 12 April 1998 confirm that what was intended was to create a link with the trade mark NASDAQ, so as to benefit from the prestige already enjoyed by that trade mark in the field of ‘high-tech' economy.” Court decision “(53) According to case-law, the various infringements covered by Article 8(5) of Regulation No 40/94 are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them even though it does not confuse them. The existence of a link between the mark applied for and the earlier mark, which must be appreciated globally, taking into account all factors relevant to the circumstances of the case, is therefore an essential condition for the application of that provision (see, with respect to Article 5(2) of Directive 89/104, Case C-408/01 Adidas-Saloman and Adidas Benelux [2003] ECR I-12537, paragraphs 29, 30 and 38). (54) Furthermore, the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark, but he must adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (Case T-67/04 Spa Monopole v OHIM – Spa-Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II-1825, paragraph 40, and TDK, paragraph 46 above, paragraph 64). Such a conclusion may be established, in particular, on the basis of logical deductions resulting from an analysis of the probabilities and by taking account of the usual practices in the relevant commercial sector as well as all the other circumstances of the case. (55) It is established that unfair advantage has been taken of the distinctive character or the repute of the earlier mark where there is clear exploitation and free-riding on the coat tails of a famous mark or an attempt to trade upon its reputation (see, to that effect, SPA-FINDERS, paragraph 54 above, paragraph 51, and TDK, paragraph 46 above, paragraph 65), while detriment to the distinctive character of the earlier mark is usually established where the use of the mark applied for would have the effect that the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used (SPA-FINDERS, paragraph 54 above, paragraph 43) and detriment to the repute is usually established where the goods for which the mark applied for is used appeal to the public's senses in such a way that the earlier mark's power of attraction is diminished (SPA-FINDERS, paragraph 54 above, paragraph 46). (56) Furthermore, as these are alternative conditions, it is sufficient that one of those circumstances is established in order to establish detriment caused to the earlier mark within the meaning of Article 8(5) of Regulation No 40/94. (57) Finally, the stronger the earlier mark's distinctive character and reputation the easier it will be to accept that detriment has been caused to it within the meaning of Article 8(5) of Regulation No 40/94 (see SPA-FINDERS, paragraph 54 above, paragraph 41, TDK, paragraph 46 above, paragraph 65, and, by analogy, General Motors, paragraph 43 above, paragraph 30). (58) In this case, the similarity between the marks at issue is not denied. Furthermore, the mark NASDAQ is inherently very distinctive, in particular by reason of the fact that it is an invented word without any relation to the services designated by it and that it is used exclusively to designate services in Classes 35 and 36 provided by the intervener and for which it was registered. Moreover, having regard to its omnipresence in the press, not only in the specialist press but also the general press, and the interest of a large part of the general public in the developments in the financial markets, it must be recognised that its reputation reaches further than the professional public specialising in financial information. Such evidence strengthens the possibility of accepting the existence of detriment to the mark NASDAQ within the meaning of Article 8(5) of Regulation No 40/94. (59) In that regard, it is clear from the contested decision that, in order to show that detriment, the intervener submitted, inter alia, that the applicant took unfair advantage of the reputation of the mark NASDAQ in so far as it would not have to spend any money on advertising to draw the attention of the public to its goods. (60) On that point, the Court notes that the intervener produced in the course of the administrative proceedings, inter alia, the minutes of the meeting of the ordinary general meeting of the applicant's shareholders of 12 April 1998, which show, first, that the applicant's shareholders were aware that ‘nasdaq' designated ‘the American online stock market' and, second, that that word was chosen because it was regarded as being descriptive of the applicant's main activities, which include the design, manufacture and sale of high-tech materials and sports equipment. The fact that the applicant's consultants had then ruled out any likelihood of confusion between the marks nasdaq and NASDAQ is not decisive. Given the signs in dispute, it can hardly be disputed that a link may exist between them. Taking account of the fact that the financial and stock market listing services supplied by the intervener under its trade mark NASDAQ and, therefore, the trade mark NASDAQ itself, undeniably present a certain image of modernity, that link enables the transfer of that image to sports equipment and, in particular, to the high-tech composite materials which would be marketed by the applicant under the mark applied for, which the applicant appears to recognise implicitly by stating that the word ‘nasdaq' is descriptive of its main activities. (61) Therefore, in light of that evidence, and taking account of the similarity of the marks at issue, the importance of the reputation and the highly distinctive character of the trade mark NASDAQ, it must be held that the intervener has established prima facie the existence of a future risk, which is not hypothetical, of unfair advantage being drawn by the applicant, by the use of the mark applied for, from the reputation of the trade mark NASDAQ. There is therefore no need to set aside the contested decision on that point.”
Wal-Mart/Wal-Mart : T-129/05 – Order of 19 April 2007 (case closed). Keywords: Opposition: likelihood of confusion (LOC). The action had been directed against a decision of the 2nd Board of 17.12.2004 in R0629/2004-2 by which the Board had partially upheld an opposition lodged by a Spanish natural person against CTM application “Wal-Mart” (word) filed by Wal-Mart Stores, USA . The CTM had been applied for in all classes except for Class 35. The invoked earlier Spanish word mark Wal-Mart had been registered in 1994 for certain machinery in Class 7. Since the CTM applicant had acquired the earlier right pending proceedings, the case was closed.
C-2: CFI: Developments in pending cases Stradivari 1715 : T-340/06 - Office response filed (IT). Keywords: Opposition: likelihood of confusion (LOC) - LOC: comparison of marks. The action is directed against a decision of the 1st Board of 7.9.2006 in R1024/2005-1 relating to CTM application 2269256, figurative sign “Stradivari 1715”. It had been applied for a range of products in Classes 14, 16 and 18.
It had been opposed on the basis of two Community trade mark rights in the figurative sign “Stradivarius” (see above), registered in Classes 3, 14, 16, 18, 24 and 25. The opposition had been rejected on the grounds that the marks at issue are dissimilar and, thus, there is no LOC.
Cita del Sol : T-17/7 - Office response filed (ES). Keywords: Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 1st Board of 26.9.2006 in R1407/2005-1 relating to CTM application 2712982, “Cita del Sol” (word), applied for alcoholic beverages in Class 33 and for services in Class 39.
She : T-391/06 - Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC) - LOC: assessment (weighing of all factors). The action is directed against a decision of the 1st Board of 26.9.2006 in R0301/2006-1 relating to CTM application 2766723, “S-HE”, applied for a range of goods in Classes 3, 9, 18 and 25. It had been opposed on the basis of earlier rights in “She” (see below), registered in Classes 3, 9, 16, 18 and 25.
The Opposition Division had relied on the figurative mark because it has the broadest list of goods, and allowed the opposition only in part. As regards denial of LOC for the rest, it had been stated that the sign SHE is weak in relation to all goods for women and that in relation to short word marks the public is more attentive as regards even small differences. This being so, the fact that the conflicting goods are identical cannot change the assessment.
Zero : T-400/06 - Office response filed. Keywords: Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 1st Board of 5.10.2006 in R0958/2005-1 relating to CTM application 2004547, “zerorh+”, applied for a range of goods in Classes 9, 18 and 25. It had been opposed on the basis of the earlier figurative mark “zero”, registered in Classes 18 and 25.
Bud/Bud : T-255/06 - Office response filed. Keywords: Opposition: earlier right - Earlier right: Article 8(4) CTMR - Article 8(4) CTMR: geographical indication of origin - Geographical indication of origin: Lisbon agreement. The action is directed against a decision of the 2nd Board of 28.6.2006 in R0241/2005-2 relating to CTM application 1257849. It is a further case in the series of conflicts between Anheuser Busch (USA) brands and Budevicky Budvar brewery (CZ).
The CTM had been applied for the following goods: Class 16: Paper, cardboard and goods made from these materials, (included in Class 16); printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (included in Class 16); playing cards; printers' type; printing blocks; Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware (included in Class 21); Class 25: Clothing, footwear, headgear; and Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages. The CTM application had been opposed on the basis of an international registration of the stylised mark Bud (see above), a registered Lisbon geographical indication of origin (Bud) with effect in France , Italy and Portugal , and the geographical indication of origin BUD, registered in Austria under a bilateral treaty. The Board dismissed the opposition in full on the following grounds: the only earlier rights relied on are the appellations of origin BUD. The ground for the opposition is therefore limited to Article 8(4) CTMR, as Article 8(1)(b) CTMR was abandoned. In parallel proceedings between the same parties, the Board had already rejected an opposition based on the same earlier rights: see the decision of 14 June 2006 in Case R0234/2005-2. In that case the mark applied for was the word mark ‘BUD' and the goods covered by the application were beers and alcoholic beverages in Classes 32 and 33, respectively. The Board had ruled that the opposition could not succeed on the basis of the opponent's appellation of origin ‘BUD' because the conditions laid down in Article 8(4) CTMR are not satisfied. The same reasoning applies in the present case. The Board decision referred to is subject to an appeal in case T-225/06.
Bud/Bud-II : T-309/06 - Office response filed. Keywords: Opposition: earlier right - Earlier right: Article 8(4) CTMR - Article 8(4) CTMR: geographical indication of origin - Geographical indication of origin: Lisbon agreement. The action is directed against a decision of the 2nd Board of 1.9.2006 in R0305/2005-2 relating to CTM application 24711, word BUD, applied for beers and malted non-alcoholic beverages in Class 32. It had been opposed on the basis of the same range of earlier rights as above in case T-255/06, and the decision of the Board had also been the same as above.
Bomba/La Bamba : T-372/06 - Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 2nd Board of 3.10.2006 in R0184/2005-2 relating to CTM application 558874, word “Bomba”, applied for a range of beverages in Classes 32 and 33. It had been opposed on the basis of German word mark “la bamba”, registered in Classes 29, 32 and 33. The opposition had been allowed in full.
Pneumo : T-327/06 - Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC) - LOC: perception of products by the target consumers - Target consumer: pharmaceutical products - LOC: comparison of marks. The action is directed against a decision of the 2nd Board of 11.9.2006 in R0668/2005-2 relating to CTM application 2462059, word “Pneumo Update”, applied for a range of goods in Class 5. It had been opposed on the basis of “Pneumo”, word, also registered in Class 5, and the opposition had been allowed in full.
Donuts : T-317/06 - Office response filed (ES). Keywords: Opposition: trade mark with reputation, Article 8(5) CTMR - Opposition: proof of use - Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 1st Board of 8.8.2006 in R0194/2005-1 relating to CTM application 1298785 (shown below), applied for a range of goods and services in Classes 25, 30 and 42. It had been opposed on the basis of four earlier Spanish trade marks registered in Classes 25, 30, 32 and 42.
On the basis of the evidence provided as regards use, the Board had taken into account the earlier mark “Donut”. However, it had rejected any risk of confusion and had also rejected the opponent's argument of, if not reputation, enhanced recognition in the market place of the marks at issue because the filed material related to “donuts” (fig.) and not to the plain word mark “Donut”.
Promat/Proma-II or Promat-II : T-300/06 - Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC) - LOC: comparison of products. The action is directed against a decision of the 1st Board of 4.5.2006 in R1058/2005-1 relating to CTM 803825, word “Promat”, applied for a range of goods and services in Classes 1, 2, 6, 17, 19, 20 and 42. It had been partially opposed on the basis of two earlier rights in “Proma” (shown below under Promat-I), registered for a range of goods and services in Classes 6, 20 and 39. The opposition had been directed against the goods in Classes 6, 19 and 20; it had been allowed in full.
Promat/Proma-I or Promat-I : T-243/06 - Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC) - LOC: comparison of products. The action is directed against a decision of the 1st Board of 4.5.2006 in R1059/2005-1 relating to CTM 932202, word “Promat”, applied for a range of goods and services in Classes 1, 3, 6, 7, 8, 9, 10, 11, 12, 14, 16, 17, 20, 21, 22, 25 and 37. It had been partially opposed on the basis of two earlier rights in “Proma” (figurative mark; shown below), registered in Classes 6, 20 and 39. The opposition had been directed against the goods in Classes 6 and 20. The opposition had been partially allowed.
Immunocell/Immunorell : T-368/06 - Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 4th Board of 3.10.2006 in R1064/2004-4 relating to CTM application 1065903, word “Immunocell”, applied for a range of goods and services in Classes 5, 16 and 41. It had been partially opposed (for identical Class 5 products) on the basis of “Immunorell”. The opposition had been allowed in full.
Vascular Wrap : T-342/06 - Office response filed. Keywords: Absolute grounds for refusal: distinctiveness; descriptiveness. The action is directed against a decision of the 2nd Board of 20.9.2006 in R0751/2006-2 relating to CTM application 4220811, word “Vascular Wrap”, applied for a range of goods in Class 5 (dressings, bandages, coatings and compositions for surgical applications) and Class 10 (medical devices for surgical applications). In essence, the Board had held that the expression at issue is, either actually or at least potentially, used in the medical field to describe the nature and intended purpose of the relevant goods and contains no other elements which could enable the public to distinguish the origin of the claimed goods from those of other undertakings.
Blue Soft : T-330/06 - Office response filed. Keywords: Absolute grounds for refusal: descriptiveness. The action is directed against a decision of the 1st Board of 14.9.2006 in R0270/2006-1 relating to CTM application 3007846, word “Blue Soft”, applied for contact lenses in Class 9. It had been rejected on the grounds that the sign lacks distinctiveness since it merely describes the type of lenses (soft, in contrast to rigid lenses) and the respective colour.
Taicros : T-315/06 - Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC) - LOC: comparison of marks - LOC: relevant public; level of attentiveness. The action is directed against a decision of the 1st Board of 20.9.2006 in R0029/2006-1 relating to CTM application 2768851, the word “TAICROS” in a figurative element (shown below), applied for a range of products in Class 1. It had been opposed on the basis of a range of national marks consisting of or containing the word CROS, all registered in Class 1, some from 1925 onwards.
The opposition had been rejected on the grounds that the marks at issue are dissimilar. Further, as regards chemical substances, it was held that the target public consists of experts who are quite thorough when dealing with chemical substances, in particular as regards dangerous ones like acids.
Buffalo Milke : T-308/06 - Office response filed. Keywords: Opposition: proof of use (POU) - POU: material filed for the first time at the appeal stage - Opposition: likelihood of confusion (LOC) - LOC: comparison of goods - LOC: comparison of marks. The action is directed against a decision of the 2nd Board of 8.9.2006 in R1094/2005-2 relating to CTM application 2099018. The application had been filed in respect of the following goods in Classes 3, 18 and 25: Waxes, polishing creams, cleaning preparations, creams for leather, preservatives for leather, washing preparations; bags; clothing, including T-shirts, diapers.
The CTM application had been partially opposed on the basis of an earlier right - the figurative trade mark “Bufalo” which is registered for goods in Class 3, namely “washing and bleaching preparations; cleaning, polishing, scouring and abrasive preparations; soaps, agents for impregnating, cleaning and caring for and preserving items made of leather, plastics and textiles, especially shoes; shoe polish, preparations for cleaning and caring for floors; preparations for cleaning and caring for carpets; upholstered furniture and textiles; stain removers, detergents for sanitary installations.” Whereas the Opposition Division had rejected the opposition on the grounds of lack of evidence of genuine use, the Board had accepted material filed for the first time before it and had established genuine use as regards polishing creams and leather conditioners. In consequence, it had remitted the case back to the Opposition Division. That decision forms the object of the current action.
Magic Seat : T-363/06 - Office response filed. Keywords: Opposition: likelihood of confusion (LOC) - Opposition: comparison of marks - Comparison of marks: conceptual comparison - LOC: enhanced recognition of the earlier mark on the relevant market. The action is directed against a decision of the 1 st Board of 7.9.2006 in R0960/2005-1 relating to CTM application 2503902, word “Magic Seat”, applied for by Honda Motor Europe in Class 12 for vehicle seats and parts and fittings thereof. It had been opposed by the Spanish carmaker SEAT on the basis of its figurative mark, registered in Class 12 for land vehicles, apparatus for locomotion by land, etc.
The opposition had been allowed in full, mainly on the grounds that on the relevant Spanish market the part “Seat” in the CTM application will immediately be linked to the well-known brand and not to the English word “seat”.
PK Max : T-293/06 - Office response filed (ES). Keywords: Opposition: likelihood of confusion (LOC) - Opposition: earlier right with enhanced recognition on the relevant market. The action is directed against a decision of the 1 st Board of 5.7.2006 in R0397/2005-1 relating to CTM application 2240000, PK MAX (below), which had been applied for a range of goods in Classes 3, 25 and 28.
Epican/Epigran : T-374/06 - Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC) - LOC: comparison of products. The action is directed against a decision of the 1 st Board of 5.10.2006 in R1324/2005-1 relating to CTM application 2524510, word “Epican”, applied for a range of products in Class 5. The rest of the factual background is identical with Epican Forte, T-373/06, below.
Epican Forte/Epigran : T-373/06 - Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC) - LOC: comparison of products (dietary goods – cosmetics). The action is directed against a decision of the 1 st Board of 5.10.2006 in R1069/2005-1 relating to CTM application 2525251, word mark “Epican Forte”, applied for in Class 5 (including medicinal products and dietary nutrition) by Dr. Matthias Rath, a natural person domiciled in Cape Town, South Africa. The CTM application had been opposed on the basis of CTM “Epigran”, registered initially for a range of goods comprising some goods similar to those in the CTM application. In consequence, the Opposition Division had allowed the opposition. Pending appeal proceedings, the earlier CTM had been partially revoked for non-use, in particular as regards the directly conflicting goods in Class 5. It had been maintained for beauty care products in Class 3. The Board finally had allowed the appeal as regards the range of medicinal products in Class 5 but rejected it for the rest. It had held that beauty care and body care goods are somewhat comparable to certain dietary products. As regards comparison of the marks, it had held that “Forte” in the CTM application is a weak indication within the pharmaceutical sector and, thus, the comparison must be made only between Epican and Epigran, which are similar.
Total or Beverly Hills Formula : T-326/06 - Office response filed. Keywords: Opposition: likelihood of confusion (LOC). The CTM application at issue is “Beverly Hills Formula Total Protection” (as shown below) and the opposing mark is “Total”.
The cases can be found in our website. Please note that the full number including slash has to be entered in our database under 'Appeal Nº', without the letter 'R'. Distinctiveness acquired by use – Article 7(3) CTMR Distinctiveness acquired by use – opinion poll – evidence Decision of the Second Board of Appeal of 4 May 2007 in Case R 1620/2006-2 (English) R 1620/2006-2 -  (Purple) - since the sign applied for was a colour mark, the applicant had to prove acquired distinctiveness of it throughout the Community or, at least, in a significant part of the Community, at the date the mark was applied for. The surveys showed a substantial presence in all of the 15 Community countries at the time of filing the application. Even though some surveys were made in 2006, it was doubtful whether the three year period from 2003 to 2006 would have had a large impact on the results. The fact that the colour purple applied for is never used solely for the goods but in conjunction with other figurative or verbal components did not prevent distinctive character from being acquired through use.
Procedural Questions – Article 73 CTMR International Registration – right to be heard – notification Decision of the First Board of Appeal of 25 April 2007 in Case R 1109/2006-1 (English) R 1109/2006-1 BIZLINK – when examining an International Registration, it is not sufficient that the OHIM send the notification regarding the provisional refusal to WIPO, rather, and far more onerously, the OHIM and WIPO must, respectively, be able to prove that the notification reached the party. If this is not complied with, the contested decision is tainted by a procedural violation, since the right to be heard must be granted. Consequently, in this case the Board held that the contested decision must be annulled, remitting the case to the examiner in order for the correct procedure to be followed.
Right to be heard – right of defense – procedural violation – internet links Decision of the First Board of Appeal of 25 April 2007 in Case R 1396/2006-1 (English) R 1396/2006-1 AD INTELLIGENCE – It was held that the examiner had infringed Article 73 CTMR by not giving any explanation of the meaning of the combined words forming the sign applied for to show in what way it lacks distinctiveness in its entirety and nor showing how that meaning is connected to the services. The examiner has to state precisely the services in respect of which an application is rejected and must state reasons in respect of each rejected service. Furthermore, the examiner quoted some internet links in her objection but failed to provide hard copies of this material. In remitting this case back to the Examination Division, the Board reminded the examiner that, in light of recent case-law, hard copies of website material must be submitted should a reference be made to them.
Proof of Use – Article 43 CTMR Proof of use – proper reason for non-use – Spanish national law – pharmaceuticals Decision of the First Board of Appeal of 18 April 2007 in Case R 155/2006-1 (English) R 0155/2006-1 - LEVENIA/LEVELINA – when the opponent is obliged to follow a specific procedure for the re-naming of pharmaceutical products, this constitutes a proper reason for non-use of its trade mark. However, this reason for non-use applies only with respect to the pharmaceutical preparations for which the re-naming was requested and not for other pharmaceuticals or for goods in other classes; the Board held that use had not been proved for goods of the latter category. The Board decided that the goods for which a proper reason for non-use existed were similar to the goods applied for, and due to the similarities of the signs, a likelihood of confusion might arise.
Proof of use – right to be heard – right of defense – new evidence – complementary evidence – procedural violation Decision of the First Board of Appeal of 18 April 2007 in Case R 0570/2006-1 (English) R 0570/2006-1 Eva Tomato Paste (Fig. Mark) / eva (Fig. Mark) - the opponent submitted proof of use, after being invited to do so, and stated that as soon as possible more invoices for the relevant period would be sent. Two weeks later, the opponent submitted more material. The Board held that the Opposition Division had violated Article 43(1) CTMR by not giving the opponent sufficient opportunity to file observations in reply. Furthermore, the evidence filed after the expiry of the time-limit with the Opposition Division, as well as that filed during the Appeal proceedings, was held to have been complementary evidence confirming the evidence already submitted and so should also be taken into account.
Likelihood of Confusion – Article 8(1)(b) CTMR Three-dimensional mark – bottle – comparison of signs – visual dissimilarity – overall impression Decision of the Second Board of Appeal of 14 May 2007 in Case R 1145/2006-2 (English) R 1145/2006-2
Comparison of the signs – phonetic similarity - visual similarity – identity of the goods – public concerned Decision of the Second Board of Appeal of 4 May 2007 in Case R 1022/2006-2 (English) R 1022/2006-2 PIK'OUIC/PICNIC (en) - in the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the opposing signs do not necessarily have the same weight. For clothing, the visual aspect plays a greater role in the global comparison than the phonetic aspect, as the choice of the item of clothing is generally made visually. The common phonetic features of the signs are counteracted by their visual and conceptual differences. In spite of relating to identical goods, the Board held that there was no likelihood of confusion.
Cancellation Proceedings – Sign used in Trade – Article 51(1)(c) CTMR Scope of cancellation proceedings – earlier right – trade name – transfer – party to the proceedings Decision of the First Board of Appeal of 29 March 2007 in Case R 252/2006-1 (English) R 0252/2006-1 – TELESIS - it is not possible to introduce a new argument based on absolute grounds into cancellation proceedings which are based on relative grounds. This can be done only by filing a new request for declaration of invalidity. The Board noted that the matter of the applicable law is a question of law and not a question of fact. The Office has the obligation to examine and apply national law. By no means is it bound by the ‘evidence' of national law presented by the parties, which may not reflect the current understanding of the law in the Member State. However, parties may be requested to contribute to the findings of national law. The Board also held that a transfer of rights to a trade name may justify a change of the parties in the cancellation proceedings. Since the Cancellation Division had not examined whether and to what extent the designation ‘Telesis' would give protection against the use of a subsequent trade mark under Austrian law , t he contested decision was annulled and remitted to the Cancellation Division for further prosecution.
Cancellation proceedings – new evidence – earlier right – trade name – comparison of the signs - national law – visual similarities – phonetic similarities – conceptual similarities Decision of the Second Board of Appeal of 25 April 2007 in Case R 465/2006-2 (English) R 0465/2006-2 - The signs were held to be phonetically and visually highly similar. There was also a conceptual resemblance since they both refer to the Finnish town of KAJAANI. Taking into consideration the similar goods and services, the Board held that there exists a likelihood of confusion. The contested decision was annulled, the CTM cancelled.
Cancellation Proceedings – Bad Faith – Article 51(1)(b) Cancellation proceedings – bad faith – co-ownership Decision of the First Board of Appeal of 18 April 2007 in Case R 20/2006-1 (English) R 0020/2006-1
Community Design – Article 25(1)(e) CDR Community design – declaration of invalidity – earlier trade mark – likelihood of confusion Decision of the Third Board of Appeal of 3 May 2007 in Case R 609/2006-3 (English) R 0609/2006-3 –
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Online Access to Files Confidential documents and documents of unpublished CTM applications (in respect of article 84 CTMR and Rule 88 IR) will not be publicly viewable. However, the representative on file or the owner may access those documents via their My Page account. Only correspondence relating CTMs filed after 01/01/2004 or published in Part A of the Bulletin after 01/01/2004 are available electronically. More detailed information is available on http://oami.europa.eu/en/office/AccessToCTM.htm .
Monthly Statistical Highlights May 2007
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(Bottle) / 
(Bottle) - both marks in issue were three-dimensional marks. Therefore, phonetic and conceptual comparisons were held to be irrelevant - it is the visual aspect of the comparison that mattered. The Board noted that the issue is whether people will confuse the two bottles and think they both come from the same source because they look similar. The scope of protection of a registered trade mark grows in direct proportion to its distinctiveness. The closer the shape gets to the norms and customs of the relevant sector, the less likely it seems that consumers will suffer direct confusion. The Board concluded that the differences between the bottles are sufficient to take the applicant's bottle outside the scope of protection of the opponent's earlier right. In reaching this conclusion, the Board noted that the scope of protection of the earlier right is in any event rather narrow. The appeal was dismissed. 
/ KAJAANI et al - in accordance with Finnish national trade mark law, a trade mark may be acquired even without registration after the mark has become established, and a trade symbol shall be regarded as established if it has become generally known as a symbol specific to its proprietor's goods within the relevant trade circle. Finnish trade mark law allows the owner of an established mark to prohibit the use of a subsequent trade mark if there is likelihood of confusion. The cancellation applicant had shown that its sign is an established mark in accordance with Finnish trade mark law. The earlier sign has been used for decades and is still used in the course of trade intensively all over Finland; its use in the course of trade is of more than mere local significance. The Board came to this conclusion after accepting some material which was submitted for the first time during the appeal proceedings by following the ARCOL/CAPOL judgment. 
(Fig. Mark) – (en) the Board noted that it was clear from the file that the parties are co-owners of the Argentinean trade mark; however, the terms under which the co-ownership was established and the conditions under which the parties could use their trade marks had not been evidenced. Consequently, the Board could not come to any conclusion in favour of the cancellation applicant's claim as far as the co-ownership on an international level was concerned, and could not conclude that the (minority) co-owner had breached an agreement on the co-ownership in bad faith. The cancellation request was dismissed. 
(MIDAS) –the Board stated that, to declare a Community Design invalid, it is sufficient that the distinctive sign of a trade mark is incorporated as such in the subsequent design; it is not necessary that the distinctive sign of a trade mark is reproduced identically in the contested RCD. It was held that, since the contested RCD may be applied to an infinite range of products and services, including the products covered by the respondent's international trade mark registration and in their overall impression, the RCD and the sign protected by the earlier trade marks are similar, there exists a likelihood of confusion. Accordingly, the respondent is entitled to prevent the use of word ‘MIDAS' in the contested RCD. The Community Design was declared invalid.