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Following feedback from national delegations and user groups, OHIM has started to set up the planned €50m Cooperation Fund, which is intended to promote joint activities to make life easier for trade mark and design users. A Management Board for the Fund has been appointed to advise OHIM's President on the identification of projects, the allocation of spending, and the management of the Fund. The consultancy group, Gartner, has been engaged to assist the board. The Management Board is chaired by Lord Mogg , a former senior European and British civil servant, who is currently non-executive Chairman of Ofgem, the energy regulator for Great Britain and also holds senior office in a number of European regulatory bodies. The board has two other members - Mireia Curell, a Partner of Curell Suñol, a Barcelona-based IP firm; and Jef Vandekerckhove who is responsible for the worldwide trade mark portfolio of Philips International B.V. Both are also active in a number of international associations dealing with IP. The Chairperson of OHIM's Administrative Board will take part as an observer. The main principles and broad approach for the fund were set out in a note circulated to OHIM's Administrative Board and Budget Committee (AB/BC) earlier this year. The intention is that the fund will be used for cooperation with national IP offices in member states on projects related to the harmonisation and protection, promotion and enforcement of trade marks and designs. One of OHIM's goals is to ensure that the allocation of funds should be driven by user needs. A group of five user organisations - AIM , BusinessEurope, ECTA, INTA and MARQUES - in a published response, said they supported the aim that the Fund should contribute to modernising trade mark registration procedures and technology and eliminating unnecessary differences in practice. In recent weeks, user associations and national offices have been contacted to gather further feedback, and the Management Board has met twice for discussions and to give guidance in the process of setting up the Fund. Progress, and the next steps, will be discussed at the November meeting of OHIM's AB/BC. OHIM's Director of Institutional Affairs and External Relations, Andrea Di Carlo, said he was very pleased that the Office had been able to appoint such a high-powered, independent team, to advise on the Cooperation Fund. “Good progress is being made and we are optimistic that we will be in a position to start concrete work on the first projects in 2010”, he said.
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The James Nurton interview with Shane Smyth, FRKelly, Dublin How did you get into trade mark work? Why was that? What kind of work do you do? I primarily do OHIM work now. We have a large clerical staff so I handle mainly oppositions, revocations and invalidity work, as well as analysing searches and advising clients on strategy. What sort of clients do you have? What was the first CTM you filed? What do you think of the CTM system? The big challenge for trade mark owners is that it is increasingly difficult to clear trade marks. Being able to register in three classes for the same price encourages people to file for goods or services that they don't necessarily need, and allowing broad use of class headings also creates situations where you have a feeling that the activities are not really in conflict, even if they are based on the specification of registration per se. In these cases, you have to rely on the owner of the earlier trade mark to take a pragmatic approach. The US takes the opposite approach with much narrower specifications and the need to show a genuine intention to use the mark. The other problem that compounds this is that you can have a CTM registration which you are only using in, say, Galway , and that will protect your trade mark from a challenge for non-use. That situation does need to be clarified. However, personally I think it should remain the case that use in one part of one country is sufficient. What do you think needs to be changed? The approach from OHIM, however, seems to be that trade marks should be like designs – cheap and easy to register. And if there is a problem then parties should fight it out in the courts. The difficulty with that is that, in Ireland for example, litigation is extremely expensive. We have seen small clients who are advised that they have a strong case but have nevertheless shied away from court. Of course, inevitably OHIM staff don't have experience on the ground where people are searching and clearing a trade mark. How do things compare in Ireland? I think national offices will always have a future but they will increasingly be focused on local individuals and industry. Even if you are just looking at the Irish and UK market, you would probably still go for a CTM. The Irish Office is under pressure to become more like other offices in Europe, such as OHIM and the UK. For example, they are considering doing away with refusal of applications on relative grounds. That would reduce the examiners' workload considerably but on balance the profession is likely to resist it. We think it is good to have at least one barrier before the opposition, as it leads to a cleaner system. Otherwise, people not unnaturally ask: how can it happen that the same mark can be registered for the same goods or services? I believe that not having relative-grounds refusal puts too much onus on individuals and small companies who may not be able to afford to defend their trade marks. Another thing being discussed in Ireland is to do away with the registration fee, as OHIM has. Have you seen much impact from the economic downturn? As a member of the MARQUES Education Team, you are involved in the Lewis Gaze Memorial Scholarship. What is that exactly? When we know where the Annual Conference will be held, the Education Team work with a MARQUES member locally to encourage undergraduate students from the local university to submit a dissertation of at least 10,000 words on a chosen topic. Three prizes are awarded, and the winner gets to go to the following year's Annual Conference. This year, we had a very strong entry and Jeremy Phillips in the UK helped to judge the prize. The winner, announced last week, was Colm Maguire of the University of Edinburgh, who wrote on “Distilling dilution”. We are really looking for well-researched and well-articulated papers. Unfortunately, we haven't really kept in touch with the previous winners. They are generally very good law students, so I expect they have gone into commercial firms, but not necessarily into IP work. What has been the biggest change in your career? It's a great profession. It is evolving very quickly, and the work is becoming more complicated and interesting. It is a lively area of the law and very hands-on, and you get to travel and meet lots of people. I would recommend the trade mark profession. In the past, you could sit back and simply file applications but the work is far more advisory now. So most of the associates we hire now are solicitors or barristers – people with a law degree – whereas in the past we would hire people with a general degree. You also need to drag in other areas of law, such as competition, contract and labelling, so you at least need to know where to look for answers to those questions. But hiring is not a problem: there is a lot of talent out there. |
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| Community Trade Mark | Cosmetics trade mark revoked for non-use The Community Trade Mark, DHC, owned by a Japanese cosmetics company, has been revoked following an application by a Swiss company claiming that the mark had not been put to genuine use within the European Community. The word mark “ DHC ” (No 311 241) was registered in 1998 by Tokyo-based Kabushiki Kaisha Diieichishii ( DHC Corporation) for goods ranging from cosmetics to clothing and alcoholic beverages. The Swiss company Mundipharma AG, applied in 2008 for the CTM to be revoked for all goods on the ground that the trade mark has not been put to genuine use in the Community in connection with the goods within a continuous period of five years (Article 51(1)(a) CTMR). In a witness statement, the Japanese company said that DHC branded products were sold through the proprietor's subsidiary, DHC Europe ( Switzerland ) Ltd, which distributed products throughout the Community, including Germany and Austria . DHC Europe ( Switzerland ) was later dissolved and DHC UK Ltd was established in November 2006 for operations in the Community. This subsidiary runs a website under the address www.dhcuk.co.uk through which orders for DHC products could be placed. Consumers in the Community could also purchase DHC products via the company's website www.dhccare.com which was operated by its US subsidiary. The statement set out the annual value of sales of goods by the US subsidiary as well as the promotion expenditures by the US subsidiary. The CTM proprietor said that it promoted DHC products by way of product catalogues, direct mail and promotional magazines. The company submitted evidence of catalogues and magazine advertisements in German, and of magazines and website content in English, promoting various body care products including soap and cosmetics. OHIM's Cancellation Division found that the German-language material mainly related to the Swiss market, with prices in Swiss Francs and a delivery policy restricted to Switzerland and the Principality of Liechtenstein. While two of the magazines could be related to EU member states – Germany and Austria – it appeared likely that the advertisements were aimed at German speaking Swiss consumers who could also purchase these magazines in Switzerland . With regard to the English-language material some related to US-based magazines, though there was also a magazine titled “Olive Club” published by DHC UK Ltd and dated December 2007. Other UK-related material included an order form and extracts from the website www.dhcouk.co.uk, showing various cosmetic products to order with prices in pounds sterling. The Cancellation Division found that only the information relating to the UK could be taken as evidence of genuine use within the Community. However, the CTM proprietor did not file any proof as regards actual sales of its products in the European Community. It only provided the annual value of sales of goods and promotional expenditures by DHC USA, Inc. The evidence filed in relation to DHC UK Ltd just amounted to promotional publications and product offers whose content did not contain any information on the extent of use of the CTM. This material might indicate the CTM proprietor's commercial activities within the Community but it did not form solid and objective proof as regards the extent of use. “ Therefore, the proprietor has not proven that the CTM has been used in relation to the goods in Classes 3, 5, 14, 18, 25, 29, 30, 32 and 33 to a sufficient extent in the Community. An assessment as to time and nature of genuine use is therefore otiose. Without any further submissions of the CTM proprietor, the Cancellation Division also notes that it is not in a position to qualify the use of the CTM as constituting preparatory acts to create a market share in the Community. The evidence indicates a relatively long presence of the sign “ DCH ” on the Swiss market but does not encompass any proof of sales within the Community. “ In the absence of any proper reasons for non-use, the rights of the proprietor of the CTM were revoked pursuant to Article 51(1)(a) CTMR and deemed not to have had any effects pursuant to Article 55(1) CTMR as from the date of the application for revocation, i.e. as of 11/01/2008 .
Nearly one-third of the population lives in the capital, Dublin , and Ireland 's youthful, well-educated workforce, and low capital taxes, proved popular with inward investors. GDP growth averaged 6% in 1995-2007, but economic activity dropped sharply in 2008 and Ireland entered into a recession for the first time in more than a decade with the onset of the world financial crisis and subsequent severe slowdown in the property and construction markets. The service sector accounts for an estimated 49% of Irish GDP , followed by industry ( 46%) and agriculture (5%). Irish undertakings have filed more than 6 700 CTMs in total, including just under 800 last year. This year so far, there have been more than 470 filings.
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Registered Community Design | Normally "invisible" design ruled invalid In a recent decision1 a registered Community design (RCD) for a vaporizer was declared invalid on the ground that it is invisible during its normal use. The holder of the contested RCD tried to prove the contrary; however, for the Invalidity Division the documents presented by the holder as evidence did not prove convincing. The contested RCD 831995-0002 had been registered with a date of priority of May 2007 for the product “vaporizer for an aromatic odor neutralizer”. The RCD is shown below:
In June 2008, an application for a declaration of invalidity was filed wherein it was demonstrated that the contested RCD constituted a component part of a complex product, the complex product being a housing with the vaporizer, the vaporizer being enclosed in that housing. The evidence included in the application was dated from September 2007. In response to the application, the holder argued that the RCD “ is a complete and independent design and not (just) a component part of a complex product ” and submitted the following pictures:
Furthermore, the holder submitted a printout from a website dated October 2008 showing the vaporizer of the RCD accompanied by a text saying: “No dispenser housing required!” In addition, an “expert opinion” was included asserting that the contested RCD did “not need a wall mounting unit in order to perform its intended function of air-scenting” and it functioned “as an independent air-scenting unit without the need for any holder, container or suspension means”. In its decision, the Invalidity Division commented as follows: “The documents provided by the Holder - remarkably all dated from a period after the date of filing of the Application - may be considered evidence for a theoretical possibility to use the vaporizer without the housing.” However, the only evidence for a real use of the vaporizer points to the use at it is demonstrated in the Application. 1 Decision of the Invalidity Division of 17 July 2009 , in case ICD 5502 Around 1 787 registered Community designs have been filed by Irish companies today date, including just under 190 last year – a sharp decline from the year before, when there were more than 560. The most popular classes for RCDs are 11, 99 and 9. E-filing now accounts for just under three-quarters of Irish RCD filings, with mail the second most popular at 22%. Just over 3% of Irish RCDs are filed by fax.
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Online Inspection Request form accessible from CTM-ONLINE This new CTM-ONLINE feature has been designed to speed up the inspection of file process. It provides the option to request normal or and certified copies of documents that can also be viewed in the Online Access to CTM files clicking on In addition to the documents that can be viewed and downloaded in the Online Access to file, copies of extracts of the register can also be requested. However, please note that this option is restricted to MyPage users that have a current account with the OHIM, as all fees related to inspection requests will be debited from their current accounts. Further information is available here. The following details can be modified:
This new online tool will both ease and accelerate changes to personal details. How to proceed? Then, by clicking on the “Modify” button, the personal data is displayed in editable mode. A specific character set must be selected allowing the use of characters specific to certain languages. When all modifications have been carried out, click on “Submit” to validate the changes.
How will the modification be processed? Avoid long waiting times for changes of owner details New service for goods and service in CTM E-Filing CTM Watch OHIM e-business roundup (2009)
State of play of future projects:
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CTM applications "regaining ground" The latest figures for Community trade mark applications show that demand in most major countries is on the rise again. In the first quarter of this year, CTM applications were down 11% compared with the same period in 2008. Since then, applications have started to regain some of the lost ground and a comparison of the year to August shows that the deficit has dropped to 4%, with a number of large countries showing higher overall demand overall than during the year before. The situation varies from country to country, and may reflect the differing responses to the international financial crisis. The largest user of CTMs, Germany , has always shown strong growth in demand with applications up by 7%, whereas all the other major countries showed falling demand in the first quarter, with the negative trend particularly evident in the US and the UK . The recovery in demand is most evident in France , Italy , and Spain , with French demand now 2% up compared with the first eight months of 2008. Demand for registered Community designs, on the other hand, remains depressed, with a fall in applications of more than one-quarter in the year to August.
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Manual of Trade mark Practice: International Marks OHIM's "Manual of Trade Mark Practice" has been amended further to the adoption of a number of amendments to the Common Regulations under the Madrid Agreement and the Madrid Protocol. The changes are applicable as from 1 September, 2009 . They are aimed at improving the accessibility of information regarding the interim and final status of international registrations. For the complete background information, users are invited to consult the WIPO Website at http://www.wipo.int/madrid/en/ What OHIM used to call the "First Statement of Grant of Protection " will be now termed the "Interim Status of the Mark" and will be sent, including when preceded by a provisional refusal on absolute grounds, provided the refusal has been waived in the meanwhile and the opposition period is still running . The "Second Statement of Grant of Protection " will become the only "Statement of Grant of Protection " and will be sent in all cases where an International Registration designating the EC has been finally accepted, whether totally or partially. The changes have some legal implication on the Implementing Regulation (CTMIR) and it may have to be amended. In the meanwhile, the Legal Basis for these changes are to be found in the Common Regulations under the Madrid Agreement and Protocol.
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Monthly statistical highlights* July 2009
* Statistical data for the month in course is not definitive. Figures may vary slightly after consolidation.
Monthly statistical highlights* August 2009
* Statistical data for the month in course is not definitive. Figures may vary slightly after consolidation.
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Latest trade mark and design news from Luxembourg Pure Digital : C-542/07-P – Appeal from T-461/04; Judgment of 11 June 2009 (appeal dismissed; CFI and Office practice confirmed). Keywords: Absolute grounds for refusal: descriptiveness. The appeal had been lodged against a decision of the CFI of 20.9.2007 in Case T-461/04, by which that court had dismissed the action for annulment of the decision of the 2 nd Board of 16.9.2004 refusing to register as a CTM the word sign PURE DIGITAL in classes 9 and 38, on the grounds that the trade mark in question was descriptive and devoid of any distinctive character within the meaning of Article 7(1)(b) and (c) CTMR, and that, in the light of the evidence provided, Article 7(3) was not applicable. In its brief judgment, the 5 th Chamber of the ECJ (Ilesic; Tizzano; Kasel, rapporteur) agreed, relying on standard case-law (case without opinion of the Advocate General). Camelo/Camel : C-136/08-P – Appeal from T-128/06; Order of 30 April 2009 (only in FR; appeal dismissed; CFI decision stands). Keywords: Opposition: earlier right with reputation, Article 8(5) CTMR. Reputation mark: notion of dilution. The case is an appeal from a CFI decision of 30.1.2008 in Case T-128/06 relating to opposition proceedings between CTM application Camelo (figurative mark) and the Camel brand (figurative mark).
The CTM had been applied for for a specific kind of coffee; the invoked earlier rights cover tobacco and cigarettes. Camel had claimed to be famous (reputation within Article 8(5) CTMR). Whereas the opposition division had allowed the opposition under Article 8(5) CTMR, the Board had rejected it on the grounds that, notwithstanding the fact that the signs are similar, there is no basis for assuming that use of the subsequent sign would dilute the repute of the earlier mark. The CFI had confirmed that decision. The 7th Chamber of the ECJ (Ó Caoimh; Löhmus, rapporteur; Lindh) rejected the appeal brought by the opponent, partially on formal and partially on substantive grounds. Manpower : C-553/08-P – Appeal from T-405/05; Office response filed (DE). Keywords: Absolute grounds for refusal: in part of the EU. Absolute grounds for refusal: descriptiveness. Invalidation: scope of examination. The case is an appeal from a decision of the CFI of 15.10.2008 in Case T-405/05 by which it rejected an appeal against a decision of the 2 nd Board of 22.7.2005 in Case R 0499/2004-4. By that decision, the Board had confirmed rejection of a request for invalidation directed against CTM MANPOWER, registered in classes 9, 16, 35, 41 and 42. The Board had held that the term is descriptive only in the English speaking part of the Union but that the applicant had shown acquired distinctiveness on the market in the aforementioned parts.
B: European Court of Justice Preliminary Rulings Lindt Goldhase or Lindt Chocolate Bunny : C-529/07 – Judgment of 11 June 2009 (First Chamber: Jann; Ilesic, rapporteur; Tizzano; Levits, Kasel). Keywords: Bad faith application under Article 51(1)(b) CTMR. The reference for a preliminary ruling from the Austrian Supreme Court concerns the interpretation of Article 51(1)(b) CTMR; it was made in the course of proceedings between Chocoladefabriken Lindt & Sprüngli AG (Switzerland) and Franz Hauswirth GmbH, established in Austria. The essential objective of infringement proceedings brought by Lindt was that Hauswirth should cease producing or marketing chocolate bunnies within the EU which were so similar to the chocolate bunny protected by the three-dimensional CTM of which Lindt is the proprietor as there was a likelihood of confusion. The counterclaim of Hauswirth for a declaration of invalidity of that mark rests, in essence, on the view that, under Article 51(1)(b) CTMR, the mark cannot be protected as a trade mark because Lindt had been acting in bad faith when it filed its application for registration.
In both Austria and Germany chocolate bunnies, commonly called ‘Osterhasen' (Easter bunnies), have been marketed since at least 1930 in various shapes and colours. The individual shapes of chocolate bunnies differed considerably when they were manufactured and wrapped by hand, but since the introduction of automated wrapping, industrially manufactured bunnies have become increasingly similar. Lindt has since the early 1950s produced a chocolate bunny with a shape very like that protected by the 3D mark at issue. Since 1994 Lindt has marketed it in Austria . In 2000 Lindt became proprietor of the 3D mark at issue, representing a gold-coloured chocolate bunny, in a sitting position, wearing a red ribbon and a bell and with the words ‘Lindt GOLDHASE' in brown lettering, as shown above. That mark is registered for chocolate and chocolate products within class 30. Hauswirth has marketed chocolate bunnies since 1962. The bunny at issue in the main proceedings is shown above. In the opinion of the referring court, there is a likelihood of confusion (LOC) between, on the one hand, the chocolate bunny produced and marketed by Hauswirth and, and on the other, the chocolate bunny produced and marketed by Lindt under the 3D mark at issue. There is LOC particularly because in shape and colour the bunny produced and marketed by Hauswirth is similar to that which is protected by the 3D mark and because Hauswirth affixes a label to the underside of the product. Before registration of the 3D mark at issue, Lindt took legal proceedings under national competition law or national industrial property law only against manufacturers of products which were identical to the product for which that mark was subsequently registered. After registration of the 3D mark, Lindt began to take legal proceedings against manufacturers who, to its knowledge, were manufacturing products so similar to the bunny protected by that mark that there was LOC. The Oberster Gerichtshof (OGH) states that the decision it will have to make on the counterclaim brought by Hauswirth depends on whether Lindt had been acting in bad faith within the meaning of Article 51(1)(b) CTMR when it filed its application for registration of the three-dimensional mark at issue. The OGH stayed proceedings and referred the following questions to the ECJ: “(1) Is Article 51(1)(b) CTMR to be interpreted as meaning that an applicant for a CTM is to be regarded as acting in bad faith where he knows, at the time of his application, that a competitor in (at least) one Member State is using the same sign, or one so similar as to be capable of being confused with it, for the same or similar goods or services, and he applies for the trade mark in order to be able to prevent that competitor from continuing to use the sign? (2) If the first question is answered in the negative: Is the applicant to be regarded as acting in bad faith if he applies for the trade mark in order to be able to prevent a competitor from continuing to use the sign, where, at the time he files his application, he knows or must know that by using an identical or similar sign for the same goods or services, or goods or services which are so similar as to be capable of being confused, the competitor has already acquired a ‘valuable right' (‘wertvoller Besitzstand')? (3) If either the first or the second question is answered in the affirmative: Is bad faith excluded if the applicant's sign has already obtained a reputation with the public and is therefore protected under competition law?“ (a) Considerations of the ECJ “(39 ) First, with regard to the expression ‘must know' in the second question, a presumption of knowledge, by the applicant, of the use by a third party of an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought may arise inter alia from general knowledge in the economic sector concerned with such use, and that knowledge can be inferred, from the duration of such use. The more that use is long-standing, the more probable it is that the applicant will, when filing the application for registration, have knowledge of it. (40 ) However, the fact that the applicant knows or must know that a third party has long been using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought is not sufficient, in itself, to permit the conclusion that the applicant was acting in bad faith. (41 ) Consequently, in order to determine whether there was bad faith, consideration must also be given to the applicant's intention at the time when he files the application for registration. (42 ) It must be observed in that regard that, as the Advocate General states in point 58 of her Opinion, the applicant's intention at the relevant time is a subjective factor which must be determined by reference to the objective circumstances of the particular case. (43) Accordingly, the intention to prevent a third party from marketing a product may, in certain circumstances, be an element of bad faith on the part of the applicant. (44) That is especially the case when it becomes apparent, subsequently, that the applicant applied for registration of a sign as a CTM without intending to use it, his sole objective being to prevent a third party from entering the market.“ (b) The formal answer of the ECJ “In order to determine whether the applicant is acting in bad faith within the meaning of Article 51(1)(b) CTMR, the national court must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign as a CTM, in particular: – the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; – the applicant's intention to prevent that third party from continuing to use such a sign; and – the degree of legal protection enjoyed by the third party's sign and by the sign for which registration is sought.” B-2: ECJ Preliminary Rulings: Developments in pending cases None C:CFI Court of First Instance (CFI): Judgments and Orders on appeals against decisions of OHIM, Article 63 CTMR Livensa : T-159/08 – Order of 10 June 2009 – Case closed. Keywords: Opposition: likelihood of confusion (LOC). The case had been directed against a decision of the 2 nd Board of 11.2.2008 in Case R 0960/2007-2 relating to Procter&Gamble's CTM application LIVENSA, word, which had been applied for pharmaceutical, veterinary and sanitary preparations and substances; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin, fungicides and herbicides, in class 5. It had been opposed by Bayer AG on the basis of LYVELSA, word, registered in class 5 for pharmaceutical products and substances; diagnostic preparations and reagents for medical use. The opposition had been fully allowed. On the basis of an agreement between the parties reached out of court, the case was closed. Pickwick Colour Group : T-450/07 – Judgment of 12 June 2009 - Allowed; the decision may have an impact on the interpretation of Article 56(2),(3) CTMR (“request” to submit proof of use; POU). Keywords: Proof of use: interpretation of the notion of “request” in Article 56(2),(3) CTMR. The case had been an action brought against a decision of the 2 nd Board of 10.9.2007 (Case R 1245/2006-2), relating to invalidity proceedings between Cuadrado SA and Harwin International LLC. The requestor for invalidation on relative grounds had attached evidence of use to its request on his own motion. The CTM holder had responded to it by stating that the material would not fulfill the requisite POU criteria. The request for invalidation had been allowed by the cancellation division. Upon appeal based on absence of assessment of the evidence, the Board had held that the cancellation division had not been entitled to examine it because the CTM holder did not expressly request POU. The 3 rd Chamber of the CFI (Azizi; Cremona ; Frimodt-Nielsen, rapporteur) held differently and revoked the Board decision. Gallecs/Gallo : T-151/08 – Judgment of 11 June 2009 (dismissed; Office confirmed). Keywords: Opposition: likelihood of confusion (LOC). LOC: comparison of marks. The action related to a conflict between CTM application GALLECS (figurative mark). The goods and services in respect of which registration had been sought fall within classes 29, 31 and 35.
The application had been opposed on the basis of several earlier rights in marks which contain GALLO, registered in the same classes. The opposition had been rejected on the grounds that the marks are dissimilar, and the 8 th Chamber of the CFI (Martins Ribeiro; Papasavvas; Dittrich, rapporteur) agreed, relying on standard criteria. Pinzette 3D : T-78/08 – Judgment of 11 June 2009 (only in DE, FR; action dismissed, Office practice confirmed). Keywords: Types of signs: 3D. 3D-signs: shape of the product itself. Absolute grounds for refusal: distinctiveness of 3D signs. The case had been brought against a decision of the 4th Board of 12.12.2007 in Case R 1405/2007-4 relating to a 3D application which is shown below.
It had been applied for in class 8 and had been rejected on the grounds that the sign would not convey more than an ordinary shape of the respective category of goods. In its brief decision, the 8 th Chamber of the CFI (Martins Ribeiro; Papasavvas; Dittrich, rapporteur) agreed, relying on standard case law. MaxiBridge : T-132/08 – Judgment of 11 June 2009 (DE, FR; dismissed; Office confirmed). Keywords: Absolute grounds for refusal: descriptiveness. The case had been initiated against a decision of the 4 th Board of 30.1.2008 in Case R 1530/2006-4 relating to CTM application MaxiBridge, word, which had been applied for for a range of goods in classes 9 and 17, and which had been rejected on the grounds that the sign would directly convey connecting, or “bridging” respectively, electric apparatus. In its brief decision, the 6 th Chamber of the CFI (Meij; Vadapalas; Truchot, rapporteur) agreed, relying on standard criteria. Hedge Invest : T-67/08 – Judgment of 11 June 2009 (dismissed; Office confirmed). Keywords: Opposition: likelihood of confusion (LOC). LOC: comparison of signs. The action had been directed against a decision of the 2 nd Board of 28.11.2007 in Case R 0148/2007-2 relating to CTM application InvestHedge (figurative mark; colour violet claimed). It had been applied for to cover a range of goods and services in classes 9, 16, 35, 36, 41 and 42.
The CTM application had been partially opposed on the basis of an earlier right in Hedge Invest (figurative mark) which covers services in classes 36 and 41. The opposition had been allowed. The 8 th Chamber of the CFI (Martins Ribeiro, rapporteur; Papasavvas; Dittrich) agreed, relying on standard case law. Opdrex : T-33/08 – Judgment of 11 June 2009 (only in ES, FR; action dismissed, Office practice confirmed). Keywords: Opposition: likelihood of confusion (LOC). The action had been brought against a decision of the 4th Board of 14.11.2007 in Case R 1238/2006-4 relating to CTM application OPDREX in classes 5, 10 and 35.
It had been opposed on the basis of OPTREX, word, registered in class 5. The opposition had been partially allowed, and the 8 th Chamber of the CFI (Martins Ribeiro; Papasavvas; Wahl, rapporteur) confirmed that decision, relying on standard case law. Lastminute : T-114/07 and T-115/07 – Judgment of 11 June 2009 (action allowed; the decision will have an impact on the assessment of passing-off cases under Article 8(4) CTMR). Keywords: Absolute grounds for refusal: distinctiveness/descriptiveness. Opposition/invalidation: earlier rights under Article 8(4) CTMR. Article 8(4) rights: passing-off cases ( UK ). The action had been brought against the decisions of the 2 nd Board of 8.2.2007 in Cases R 0256/2006-2 and R 0291/2006-2 relating to conflicts concerning “last minute” signs, namely first, Last Minute Network Ltd's CTM application LASTMINUTE.COM which, inter alia , covered, in classes 39 and 42: Travel agency services; reservation services for travel; information, advisory and consultancy services relating to the aforesaid, and for travel agency services; reservation services for restaurants; provision of facilities and equipment to enable trade via electronic means or non-electronic means; design of facilities for the searching and retrieval of information via the internet and on-line databases including related networking systems; provision of dating/introduction services; social escorting services; provision of information via the internet, databases or other electronic means in relation to the aforesaid; gardening services; information, advisory and consultancy services relating to the aforesaid. The application had been refused on the grounds of lack of distinctive character. The addition of the extension ‘.com' to ‘lastminute' and their being placed side by side without a space or a hyphen, which is frequent in English, has no distinctive quality. By merely referring to an internet address, the ‘.com' extension does not transform a non-distinctive term into a trade mark. The other application of relevance here is Last Minute Tour SpA's figurative sign made up of the three words ‘last', ‘minute' and ‘tour' in black and a reproduction in red of a symbol supposed to evoke travel in the old Rapa Nui language.
It covers: paper, cardboard and goods made from these materials, printed matter; catalogues; printed timetables; pamphlets; books; newspapers; magazines (periodicals); bookbinding material; photographs; labels; 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 (not included in other classes); playing cards; printers' type; printing blocks'; travel agencies and tourist offices; booking of seats for travel; travel arrangement; arranging of cruises and sightseeing; transport and escorting of travelers; air transport; hire of transport equipment; transportation information, and hotels, restaurants, boarding houses, holiday villages, bars, private clubs; services relating to the booking of hotels and holiday villages; computer software design and rental of computer software. It had been opposed by Last Minute Network Ltd (LMN) but the opposition had been rejected on the basis of a lack of proof of use shown within the relevant time limit. Subsequent to registration of the sign, LMN brought cancellation proceedings. By its decision, the cancellation division (CD) allowed the request with respect to all the services in classes 39 and 42, and rejected it with respect to the goods in class 16. The CD decided that, in accordance with Article 8(4) CTMR, LMN was the proprietor, prior to the filing of the application for the CTM, of a right over the sign LASTMINUTE.COM for the services in classes 39 and 42 that was of more than mere local significance. According to the law of the UK applicable to it, the sign gave LMN the right to prohibit the use of a subsequent trade mark if the three conditions for an action for passing off were satisfied, namely the reputation of the applicant's goods (goodwill), a representation of the goods and services which is misleading in the sense that offering them under the CTM LAST MINUTE TOUR might have led the relevant public to suppose that their commercial origin was with LMN (misrepresentation), and a likelihood that LMN would suffer commercial damage. In order to show the misrepresentation of goods and services under the sign LAST MINUTE TOUR, the CD held that it was sufficient to show that the relevant public could have taken the view that they originated from LMN on account of the similarity of the two marks and, therefore, it was necessary to evaluate the likelihood of confusion between them. Having found that the services in classes 39 and 42 designated by the two marks were identical, the CD held that, although represented differently for each mark, the expression ‘last minute' was their common dominant element. It concluded that there were significant visual similarities and only a number of differences. Both parties appealed. By its two decisions, the Board allowed LMT 's appeal, annulled the decision to cancel registration of LAST MINUTE TOUR for the services in classes 39 and 42 and, second, dismissed LMN's appeal, i. e. it upheld the CD's refusal to grant a declaration of invalidity with respect to the goods in class 16. The 7 th Chamber of the CFI (Forwood; Sváby; Truchot, rapporteur) disagreed and annulled the two decisions. As regards the cancellation procedure against CTM LAST MINUTE TOUR initiated by LMN, the court held in respect of the application of Article 8(4) CTMR: “(48) In this case, it is not disputed that the law of the Member State applicable to the non-registered national trade mark is the Trade Marks Act 1994, section 5(4) of which provides: ‘A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented – (a) by virtue of any rule of law (in particular, the law of passing off) protecting a non-registered trade mark or other sign used in the course of trade …'). (49) It is clear from that provision, as interpreted by the national courts (Reckitt & Coleman Products Ltd v Borden Inc. & Ors (1990) R.P.C. 341 HL), that in order to obtain the cancellation of the CTM LAST MINUTE TOUR to protect its non-registered national trade mark LASTMINUTE.COM the applicant must establish, in accordance with the law on passing off laid down by the law of the United Kingdom, that the three following conditions are satisfied. (50) First, there was goodwill or reputation attached to the services offered by LMN in the mind of the relevant public by association with their get-up. In an action for passing off, that reputation must be established by the date on which the defendant began to offer his goods or services (Cadbury Schweppes v Pub Squash (1981) R.P.C. 429). (51) However, according to Article 8(4) CTMR the relevant date is not that date, but the date on which the application for a CTM was filed, since it requires that an applicant seeking a declaration of invalidity has acquired rights over its non-registered national mark before the date of filing, in this case 11 March 2000 . (60 ) It is clear from national case-law that in an action for passing off the misleading nature of the representation of the defendant's goods and services must be assessed with regard to the claimant's customers and not to the abstract notion of the average consumer adopted by the Board (Reckitt & Coleman Products Ltd v Borden Inc. & Ors). (61 ) The property protected by an action for passing off is not property in a word or name, which third parties are restrained from using, but the very customer base which is undermined by the usage in question (Parker J in Burberry v. Cording (1909) 26 R.P.C. 693), since the reputation of a trade mark is the power of attraction which brings in custom and the criterion which distinguishes an established business from a new business (IRC v Muller & Co's Margarine (1901) A.C. 217). ( 62 ) In this case, the Board therefore disregarded the definition of the relevant public given by the national courts, by holding that that public was composed of the average consumer of the goods and services concerned residing in the UK, reasonably well-informed and reasonably observant and circumspect, whereas it should have referred to the customers of the proprietor of the non-registered national mark.” Unicredit : T-4/09 – Case closed, Order of 4 June 2009 (IT). Keywords: Opposition: likelihood of confusion (LOC). The case had been initiated against a decision of the 2 nd Board of 3.11.2008 in Case R 1449/2006-2, relating to CTM application Unicredit (figurative mark), which, inter alia , had been applied for services in class 36.
It had been opposed on the basis of several earlier rights in Uni- marks, registered in classes 35 and 36. The opposition had been allowed as regards the class 36 services covered by the CTM application. Upon an agreement reached out of court, the opposition was withdrawn before the Office, and the case was closed. Milko/Milka : T-204/06 – Judgment of 10 June 2009 (action dismissed; Office practice confirmed). Keywords: Opposition: likelihood of confusion (LOC). The action had been brought against a decision of the 2 nd Board of 8.6.2006 in Case R 0540/2005-2, relating to CTM application Milko (figurative mark) which had been opposed on the basis of Milka (figurative mark).
The goods claimed are in class 30, namely ‘milk with cocoa'. The application had been opposed on the basis of several earlier rights in Milka, which, inter alia , cover milk and milk products in class 29 and cocoa, chocolate, chocolate and cocoa products, bakery, pastry and confectionery products, sugar confectionery and ices, in class 30. The opposition had been allowed, and the 5 th Chamber of the CFI (Vilaras; Prek, rapporteur; Ciucà) confirmed that decision, relying on standard criteria. Flugboerse : T-189/07 – Judgment of 3 June 2009 (action allowed; the Office will appeal the decision). Keywords: Absolute grounds for refusal: relevant point(s) in time for assessment. The action had been brought against a decision of the 4 th Board of 22.3.2007 in Case R 1084/2004-4 relating to invalidation proceedings initiated against CTM FLUGBÖRSE, word, which is registered in classes 16, 39 and 42 for printed matter, particularly prospectus, catalogues, brochures and books relating to travel and tourism; travel agency; promotion and organisation of travels; transportation of persons, and for services for providing food and drink; temporary accommodation; hotels, hostels, restaurants, agency for holiday homes (letting). The CTM had been challenged on the basis of a cancellation request pursuant to Article 51(1)(a) CTMR (now Article 52(1)(a)). In its decision, the cancellation division declared the mark at issue invalid, except for the services ‘providing food and drink' and ‘restaurants' in class 42, and the Board confirmed that decision, in essence on the following considerations: In order to be registered, a sign applied for must meet the conditions in Article 7 CTMR not only on the date of filing of the application, but also throughout the registration procedure. It therefore concluded that the assessment of the request for invalidity must be made in the light of the market conditions as they were on the date of registration of the mark on 29 October 1998 . The sign at issue was formed in accordance with the grammatical rules of the German language to create a new word, and did not have a meaning different from that of the sum of the components of which it was comprised. For the average German-speaking consumer at the date of registration, the word ‘Flugbörse' would be understood as a synonym of ‘Flugdatenbank' (flight database), or of ‘intelligente Suchmaschine' (intelligent search engine). The fact that a German court held, in 1995, that the word ‘Flugbörse' had retained a vestige of imaginativeness was not decisive, since the German language is in constant evolution. On the date of its registration, the trade mark FLUGBÖRSE was, in the German-speaking part of the Community, purely descriptive of the goods and services in question. The 5 th Chamber of the CFI (Vilaras; Prek, rapporteur; Ciucà) did not agree and revoked the decision of the Board. “ (17 ) Therefore, the examination of the present plea involves ascertaining whether, in the context of an application for invalidity based on Article 51(1)(a) CTMR, the material date for the purposes of assessing the compatibility of the Community trade mark at issue with the provisions of Article 7 of that regulation is exclusively the date of filing of the application for registration, as the applicant claims, or on the other hand, whether it must continue to be registerable until registered, as the OHIM contends. ( 18 ) In the context of the case which gave rise to the order in Alcon v OHIM, Case C-192/03 P Alcon v OHIM [2004] ECR I-8993, in examining a ground of appeal in which it was alleged that the CFI erred in law by not taking as the relevant date the date of filing of the application for registration of the mark at issue for the purposes of assessing whether that mark had become customary and had, therefore, to be declared invalid under Article 51(1)(a) CTMR, the Court of Justice held that the date of filing of the application for registration was the material date for that examination. Furthermore, the Court of Justice also held that the CFI could, without inconsistency in its reasoning or error of law, have taken account of material which, although subsequent to the date of filing of the application, enabled conclusions to be drawn on the situation as it had been on that date (order in Alcon v OHIM, case C-192/03 P Alcon v OHIM [2004] ECR I-8993, paragraphs 40 and 41). ( 19 ) It follows that the applicant was right to claim that the only date relevant for the purposes of the assessment of an application for a declaration of invalidity under Article 51(1)(a) CTMR is the date of filing of the application for the mark at issue. The fact that the case-law allows material subsequent to that date to be taken into account, far from weakening that interpretation of Article 51(1)(a) CTMR, reinforces it, since it is only possible to take such material into account if it relates to the situation on the date of filing of the trade mark application. (20 ) Moreover, that interpretation of Article 51(1)(a) CTMR is the only interpretation which avoids a situation in which the probability of the mark losing its registrability increases with the length of the registration procedure. The interpretation suggested by the OHIM in the present case would amount, conversely, to making the registration of the mark dependent, in part, on a contingency, namely the length of the registration procedure. In that regard, it should be noted that that consideration, relating to the length of the registration procedure, is one of the reasons why Article 7(3) CTMR (now Article 7(3) of Regulation No 207/2009) has been interpreted as requiring that the acquisition of distinctive character through use take place before the filing of the trade mark application (Case T-247/01 eCopy v OHIM (ECOPY) [2002] ECR II-5301, paragraphs 36 and 39).” Payweb : T-405/07 and T-406/07 – Judgment of 20 May 2009 (only in FR; action partially allowed; law of the case). Keywords: Absolute grounds for refusal: distinctiveness. The action had been directed against the decisions of the 1st Board of 10 July 2007 in Case R 0119/2007-1 and of 12 September 2007 in Case R 0120/2007-1, concerning CTM applications P@YWEB CARD and PAYWEB CARD. They had been applied for for a vast range of G&S in classes 9, 36 and 38 and had been rejected on the grounds of Article 7(1)(b) and (c) CTMR. The 3 rd Chamber of the CFI (Azizi, rapporteur; Cremona ; Frimodt Nielsen) allowed a certain part of the claimed goods in class 9 and services in class 38. Cyber Marks : T-211/06, T-213/06, T-245/06, T-155/07 and T-178/07 – Judgment of 19 May 2009 (only in FR; actions dismissed, Office practice confirmed). Keywords: Absolute grounds for refusal: distinctiveness. The actions had been brought against decisions of the 1st Board of 24 May 2006 in Case R 0068/2006-1, of 12 June 2006 in Case R 0066/2006-1, of 5 July 2006 in Case R 0067/2006-1, of 28 February 2007 in Case R 1046/2006-1, and of 15 March 2007 in Case R 0067/2006-1, concerning CTM applications CYBERGESTION (T-213/06), CYBERCREDIT (T-211/06), CYBERGUICHET (T-245/06), CYBERBOURSE (T-155/07) and CYBERHOME (T-178/07). The signs had been applied for for a vast range of G&S in classes 9, 36 and 38. The applications had been rejected on the grounds of Article 7(1)(b) and (c) CTMR, and the 4 th Chamber of the CFI (Czúcz; Labucka; O'Higgins, rapporteur) agreed, relying on standard case law. Opus Arte : T- 170/07. Case closed; Order of 8 May 2009 . Keywords: Opposition: likelihood of confusion (LOC). LOC: comparison of marks. The action had been brought against a decision of the 1st Board of 15.2.2007 in Case R 0733/2005-1, relating to CTM application 2.551.778, Opus Arte (figurative mark). It had, inter alia , been applied for film and television production and distribution; recorded music production and distribution; education; providing of training, entertainment, sporting and cultural activities, in class 41.
It had been opposed by ARTE G.E.I.E. (ASSOCIATION RELATIVE A LA TELEVISION EUROPEENNE), Groupement Européen d'intérêt économique, on the basis of a multitude of earlier rights in “arte” (figurative mark), amongst which a German mark, registered inter alia , in class 41 for entertainment by radio and television transmission programs, film audio, video and television production. Whereas the opposition division had rejected the opposition on the grounds of dissimilarity of the marks, the Board had allowed it for the contested services in class 41. The marks were considered similar, principally because in Germany the term ‘ARTE' would not be perceived as a direct reference to art and, as a consequence, could not be considered weak, or devoid of distinctiveness, for the services at issue. In consequence of an agreement reached out of court, the case was closed. Elio Fiorucci : T-165/06 – Judgment of 14 May 2009 (partially allowed; law of the case). Keywords: Office proceedings: interpretation of the law of a Member State by the OHIM. Revocation: scope of Article 50(1)(c) CTMR. Invalidation: earlier rights under Article 52(2) CTMR. Article 52(2) CTMR: right to a name (celebrity issue; well-known person). The background of the case, in brief, is the following: The plaintiff, the fashion designer Elio Fiorucci, achieved certain renown in the 1970s in Italy . Following financial difficulties in the 1980s, an administrator was appointed in respect of his company, Fiorucci SpA. In December 1990, Fiorucci sold to the challenged CTM holder, a Japanese multinational, the entirety of its ‘creative assets' on the basis of a contract in which, inter alia , it had been stated: “The company Fiorucci assigns, sells and transfers to the company Edwin (…) which, for its part, acquires: (i) trade marks wherever registered, or trade marks for which registration has been sought in any part of the world whatsoever, and all patents, ornamental and utility models and all other distinctive signs belonging to the company Fiorucci, as listed in the annex (…). (iv) all the rights exclusively to use the designation “FIORUCCI” and exclusively to manufacture and sell the clothes and other goods bearing the name “FIORUCCI”. By the end of 1997, the defendant applied for a CTM, for the words ELIO FIORUCCI, for goods in classes 3, 18 and 25. The CTM was registered in April 1999. In 2003, the plaintiff filed a request for revocation and for a declaration of invalidity pursuant to Articles 50(1)(c) and 52(2)(a) CTMR. By its decision, the cancellation division (CD) allowed the request for a declaration of invalidity on the grounds of infringement of Article 52(2) CTMR, without finding it necessary to rule on the application for revocation of that mark. The CD held that Article 21(3) of the Legge Marchi (Italian Law on trade marks; now Article 8(3) of the Codice della Proprietà Industriale ; Italian Industrial Property Code) was applicable and annulled the registration of the CTM because it was established that the name Elio Fiorucci was well-known and because there was no evidence of explicit, clear and unequivocal consent to registration of that name as a CTM. By its challenged decision, the Board allowed the CTM owner's (defendant's) appeal and annulled the CD decision, holding that the grounds of invalidity referred to in Article 52(2) CTM did not apply in the present case, which did not fall within the cases provided for under national law (Article 8(3) of the Codice della Proprietà Industriale ). The claim of the requestor for cancellation for revocation of the CTM, alleging infringement of Article 50(1)(c) CTMR. was also rejected by the Board. In particular, the Board stated that the raison d'être of Article 8(3) of the Codice della Proprietà Industriale was to prevent third parties from exploiting for commercial purposes the name of a famous person. According to the Board, that provision was introduced in order to protect the commercial potential of a name which has become famous in sectors other than the strictly commercial sector (for example, in the artistic, political or sporting fields). The Board stated that there was not, to its knowledge, case-law on that point but that ‘the most authoritative Italian academic writings' seemed to confirm that the raison d'être of the provision cited ceases where that commercial potential is already fully exploited. With regard to the application for revocation brought under Article 50(1)(c) CTMR, the Board stated that the raison d'être of that provision was to protect public confidence in the conformity of the goods with the message contained in the mark following its registration. Consequently, according to the Board, two conditions must be satisfied for that provision to apply: (I) the first is that the mark contains a message as to the nature, quality, geographic origin, or, in the present case, the stylistic origin of the goods; (II) the second is that, in the use of the mark, a divergence must be detected between that message and the characteristics of the goods covered by the mark presented to the public. In the present case, the Board considered that the first of the two conditions was not satisfied, meaning that it was impossible to establish whether the second was. It found that the mark in question was devoid of any message as to the geographic origin, nature, quality or even the stylistic origin of the goods concerned. The Board stated that the public did not necessarily link the goods covered by a mark consisting of a patronymic to the corresponding physical person. It explained that the public is aware that patronymics are commonly used as commercial marks, but that does not imply that those patronymics correspond to an actual person. In addition, the Board held that, by the sale of 1990, the applicant had waived all rights of use pertaining both to the mark FIORUCCI and to the mark ELIO FIORUCCI. It found that the distinction between those two marks was artificial and that the mark FIORUCCI and the patronymic, a de facto distinctive sign, were completely identical. The 5 th Chamber of the CFI (Vilaras; Prek; Ciucà, rapporteur) annulled the Board decision insofar as it contained the interpretation of Article 8(3) of the Italian Industrial Property Code. (a) The issue of revocation “(33 ) (The) Court of Justice has held that a trade mark corresponding to the name of the designer and first manufacturer of the goods bearing that mark is not, by reason of that particular feature alone, liable to revocation on the ground that that mark would mislead the public, in particular where the goodwill associated with that mark has been assigned together with the business making the goods to which the mark relates (Case C-259/04 Emanuel [2006] ECR I-3089, paragraph 53). That conclusion is based on the absence of actual deceit or of a sufficiently serious risk that the average consumer will be de ceived. Even if the average consumer might be influenced in his act of purchasing the product concerned by imagining that the person to whose name the mark corresponds was involved in its design, the characteristics and the qualities of that product remain guaranteed by the undertaking which owns the trade mark (see, to that effect, Emanuel, paragraphs 47 and 48). (34 ) Equally it must also be held that a trade mark corresponding to the first name and to the family name of the designer and first manufacturer of the goods bearing that mark is not, by reason of that particular feature alone, liable to revocation on the ground that that mark would mislead the public, where the proprietor of that mark has lawfully acquired, by assignment, a mark consisting of just the family name of the designer and all the creative assets of the business making the goods to which the mark relates. (35 ) As that is indeed the case in the present proceedings, the Court rejects the argument that the mark ELIO FIORUCCI is, in itself, liable to mislead the public as to the origin of the goods for which it is registered within the meaning of Article 50(1)(c) CTMR. ( 36 ) In the second place, in relation to the argument based on the alleged deceptive use of the mark ELIO FIORUCCI, said to have misled the public as to the stylistic origin of the goods and therefore to have constituted deception necessitating the revocation of the mark ELIO FIORUCCI under Article 50(1)(c) of Regulation No 40/94, it must be pointed out that the applicability of that article is conditional on the misleading use of the mark after its registration. Such misleading use must be duly proved by the applicant. ( 37 ) However, as correctly contended by the OHIM and the intervener, no evidence has been submitted showing any use whatsoever by the intervener of the mark ELIO FIORUCCI after its registration. In the absence of such evidence, there can be no question of use liable to mislead the public within the meaning of Article 50(1)(c) CTMR. In those circumstances, since the present plea in law is not well founded, it must be rejected.” (b) Invalidation under Article 52(2) CTMR “(47 ) In that regard, it must be pointed out that personal names can, both under Community law and Italian law, constitute trade marks (see, with regard to Community trade marks, Article 4 of Regulation No 40/94 and Article 2 of Directive 89/104 and, with regard to Italian marks, Article 7 and Article 8(2) of the Codice della Proprietà Industriale ). (48 ) However, as an indication of the commercial origin of the goods or services covered by it, a mark consisting of a personal name has a different function than a personal name as such, which identifies a specific person. (49 ) Therefore, the Board of Appeal's finding that the name of a person who has achieved renown on account of his commercial activity can be protected only as a well-known mark and not on the basis of a right to a name under Article 8(3) of the Codice della Proprietà Industriale must be rejected. (50 ) First, it must be held that the interpretation of Article 8(3) of the Codice della Proprietà Industriale adopted by the Board of Appeal is not confirmed by the wording of that provision, which refers to the names of well-known persons, without making a distinction according to the sector in which that renown was acquired. (51 ) Moreover, given the lack of a definition in the Codice della Proprietà Industriale of the sectors which can be regarded as ‘outside the market', to make the application of the provision in question depend on that concept which is not clearly defined would create ambiguity or even confusion, and could lead to very divergent applications in practice. (52 ) While certain sectors, such as politics or religion, may, indisputably, be considered to be ‘outside the market', whether other sectors do or do not fall within the market is far less clear. It suffices to note in that regard that, as a general rule, a ‘famous film director' and a ‘popular footballer', mentioned as examples in paragraph 32 of the contested decision, make a considerable financial profit from their respective fields of activities. It could therefore reasonably be maintained that those persons acquired their renown in a field which was not ‘outside the market' and that, consequently, and contrary to the position taken by the Board, they too were not covered by the Italian provision in question.” Aurelia : T-136/08 – Judgment of 13 May 2009 (action dismissed; Office practice confirmed). Keywords: Renewal of a CTM: failure to pay. Restitutio in inte grum: notion of due care. Restitutio : whether available after failure to pay renewal fee and removal of CTM from the register. The action had been brought against the decision of the 1 st Board of 9 January 2008 in Case R 1214/2007-1, concerning the application for restitutio in integrum lodged by a CTM holder after its CTM had been removed from the register upon failure to pay the renewal fee (lack of attentiveness by the representative). In its brief decision, the 8 th Chamber of the CFI (Martins Ribeiro; Papasavvas, rapporteur; Wahl) confirmed rejection of the request for restitutio . “(26 ) In that connection, it must be observed that the words ‘all due care required by the circumstances' in Article 78(1) CTMR require a system of internal control and monitoring of time-limits to be put in place that generally excludes the involuntary non-observance of time-limits, as laid down in the OHIM guidelines. It follows that restitutio in integrum may be granted only in the case of exceptional events, which cannot therefore be predicted from experience. ( 27 ) In the present case, since the specialist firm had installed a computerised renewal reminder system, the due care required by the circumstances demanded, first, that the overall design of the system should ensure that time-limits were adhered to; second, that the system should be capable of detecting and correcting any foreseeable error in both the performance of the tasks of the specialist firm's staff and the functioning of the computerised system; and third, that the staff of the specialist firm responsible for inputting the required data and using the system should be adequately trained, required to check their operations and supervised. (28 ) However, even if the design of the computerised renewal reminder system generally ensured that time-limits were adhered to, the Board of Appeal rightly considered that human errors in inputting data cannot be ruled out, even in cases where staff have been adequately trained, and adequately instructed and supervised. Human errors in inputting cannot be regarded as exceptional or unforeseeable events. Consequently, that system ought to have provided for a mechanism for detecting and correcting such errors. However, since such a mechanism had not been set up, the Board of Appeal correctly held that the due care required by the circumstances had not been exercised.” Jello Schuhpark : T-183/08 – Judgment of 13 May 2009 (only in DE, FR; action dismissed, Office practice confirmed). Keywords: Opposition: proof of use (POU). POU: parallel or previous decisions of the OHIM. POU: impact of national judgments. The case had been directed against a decision of the 4 th Board of 13.5.2008 in Case R 1560/2006/4 relating to CTM application Jello Schuhpark (figurative mark) which had been applied for for a range of goods in classes 18, 21, 25 and 26.
It had been opposed on the basis of an earlier German right over SCHUHPARK, word, registered in class 25. The opposition division had allowed the opposition but the Board had rejected it on the grounds of lack of POU. The opponent had sought to rely on previous or parallel decisions of the OHIM relating to the same sign, and on national judgments, amongst which one of the Appeal Court (OLG) of Hamm . As regards the latter, the Board had stated that, in the absence of any detailed setting-out of the factual basis by the court in its judgment, the Board cannot accept such a decision as valid evidence. As regards advertising material, the Board had held that such use of the mark at issue would prove the existence of a shoe business but not that actual shoes are being sold under that mark. The 8 th Chamber of the CFI (Martins Ribeiro; Papasavvas, rapporteur; Wahl) confirmed the Board; ECJ in Celine, C-17/06, referred. Omicare : T-277/08 – Judgment of 7 May 2009 (action allowed; the Office accepts the judgment which will have an impact on its practice as regards the time limit to lodge an appeal and restitutio in integrum ). Keywords: OHIM proceedings: appeal time limit. Appeal time limit: whether restitutio in integrum available, Article 78(5) CTMR (yes). The action had been directed against a decision of the 2 nd Board of 24.7.2006 in Case R 0446/2006-2 relating to an opposition case between CTM application Omnicare (figurative mark) and an earlier right over Omnicare. The opposition had been allowed. Subsequently, the CTM applicant had failed to lodge its appeal in good time and, therefore, had requested restitutio in integrum , Article 78 CTMR. The request had been rejected. The Office's practice, up till then, had been to interpret Article 78(5) CTMR to the end that the appeal time limit was also excluded from restitutio . The Board had held in no. 24 of the challenged decision: “(Indeed,) it results from the combined provisions of Article 78(5) CTMR, as amended, and Article 78a CTMR, inserted by Council Regulation (EC) No 422/2004, in particular its paragraph 2, that restitutio in integrum is not available when the missed time-limit is the time-limit to file an appeal, laid down in Article 59 [CTMR]. By these new provisions, the legislator seems to have wished to fill a gap in the provisions of Article 78(5) before its modification, which excluded restitutio in integrum only when the missed time-limit was the one to file an opposition, laid down in Article 42 CTMR (see, in this sense, Decisions of 22 May 2003, in connexity Cases R-388/2002-2 and R-393/2002-2, CosmoOne Hellas MarketSite v Cosmopolitan Television, et al .). Whereas both the time-limit to file an opposition (as per Article 42 CTMR) and the time-limit to file an appeal (as per Article 59 CTMR) are peremptory time-limits, set by the CTMR itself, the previous system, excluding restitutio in integrum in the first case, but not in the second, seemed to lack internal coherence and had thus given ground to scepticism within the Boards (see Decision of 22 May 2003, in Case R-194/2003-2 Met-L-Chek v Met-L-Check and Decision of 24 October 2003, in Case R-937/2002-2 Paragon v Paragon). This incoherence was cured by the legislator with Regulation No 422/2004, which specifies either directly in paragraph (5) of Article 78, as amended, or indirectly by reference to the provisions of the new Article 78a CTMR, the peremptory time-limits set by the CTMR where restitutio is not available, putting in par the peremptory time-limit to file an opposition and the time-limit to file an appeal.” The 3 rd Chamber of the CFI (Azizi; Cremona; Frimodt Nielsen, rapporteur) took a different view and held in favour of the CTM applicant, in essence on the grounds that the law was ambiguous and for that reason cannot provide a basis for the aforesaid interpretation. “( 43 ) Article 78(5) CTMR, as amended by Council Regulation (EC) No 422/2004 of 19 February 2004 (OJ 2004 L 70, p. 1), provides that ‘this Article shall not be applicable to the time-limits referred to in paragraph 2 of this Article, Article 42(1) and (3) and Article 78a'. ( 44 ) It must be observed that neither the preamble to Regulation No 422/2004 nor the travaux préparatoires for that regulation shed any useful light on the intentions of the legislature. (45 ) The phrase ‘to the time-limits referred to in … Article 78a' in Article 78(5) CTMR, as amended, cannot, however, be interpreted to mean that the time-limits laid down by the provisions referred to in Article 78a(2) CTMR are also to be excluded from the scope of application of Article 78. Such time-limits are not ‘referred to' in Article 78a CTMR. (46 ) Therefore, the assessment of the Board that the mandatory time-limit for filing an opposition and the time-limit for filing an appeal are put on the same footing, both excluding restitutio in integrum, is incorrect. (47) The Board's reasoning that the legislature intended, in 2004, to specify that restitutio in integrum did not apply to Article 59 CTMR is contradicted, first of all, by the absence of an express reference to Article 59 in the list of exceptions. If the legislature had intended to remove any doubt on that point, it could reasonably have been expected to do so expressly, specifically when it was amending Article 78(5) CTMR. 48) Next, doubt appears to be cast on the Board's reasoning based on a successive series of exclusions by the fact that Article 42 CTMR is also referred to in Article 78a. All the references to Article 42(1) and (3) CTMR should logically have had to be removed from Article 78(5) CTMR the Board's reasoning was correct. However, that is clearly not the case, which supports the argument that the limitations in Article 78(5) CTMR do not concern Article 59 thereof. (49) Lastly, as Article 78(5) CTMR limits the procedural rights granted by that article to the parties, that provision must be interpreted strictly. The Board's interpretation, however, conflicts with that principle and, therefore, cannot be followed.” C-2: CFI Judgments and Orders: Developments in pending cases F1-Live : T-10/09 – Office response filed. Keywords: Opposition: earlier right with reputation. Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 1st Board of 16.10.2008 in Case R 0007/2008-1) relating to CTM application 3.778.685, F-1 Live (figurative mark). It had been applied in class 16 for magazines, pamphlets, books; all the aforesaid goods relating to the field of formula 1; in class 38 for communication and dissemination of books, magazines and newspapers via computer terminals; all the aforesaid services relating to the field of Formula 1, and in class 41 for electronic publication of books, journals and periodicals; entertainment information; arranging competitions on the Internet; reservation of tickets for shows; on-line gaming; all the aforesaid services relating to the field of Formula 1.
It had been opposed on the basis of two earlier rights in F 1 marks, word and figurative, which are registered in classes 16, 38 and 41. Reputation had been claimed. Whereas the opposition division had allowed the opposition, the Board rejected it. As regards reputation, Article 8(5) CTMR: The earlier mark's reputation lies in the specific graphic configuration given to the sign ‘F1'. No reputation can be claimed for the word element ‘F1' alone. The earlier figurative mark may be associated with an image of state-of-the-art technology, exclusivity and luxury but the existence of such an image is closely dependent on the logotype. However, few consumers attribute any distinctive character to the term F1, unless this term is associated with the opponent's logotype. Therefore use of the sign applied for could neither take an unfair advantage of the earlier (figurative) mark's repute or distinctive character, nor be detrimental to the earlier mark's repute or distinctive character. On Article 8(1)(b) CTMR: LOC is excluded both as regards the earlier word and figurative marks ‘F1' in spite of the accepted identity or close similarity of the goods and services. This is because the signs display overall dissimilarities that prevent a material link being made between the opponent and the applicant. The word element ‘F1' in the mark applied for would be perceived by the relevant public as a descriptive or generic element referring to race cars. Billy´s Products : T-514/08 – Office response filed (ES). Keywords: Opposition: likelihood of confusion (LOC). LOC: comparison of marks. The action is directed against a decision of the 2 nd Board of 15.9.2008 in Case R 0469/2008-2 relating to CTM application 4.215.273 which had been applied for for a range of goods in class 3.
It had been opposed on the basis of an earlier CTM right in BYLY, word, registered in classes 3, 5 and 35. The opposition had been rejected because, notwithstanding that the conflicting goods in class 3 are identical, the differences between the marks are sufficient to exclude LOC. Inea/Minea : T-538/08 – Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC). LOC: comparison of marks. The case has been initiated against a decision of the 4th Board of 6.10.2008 in Case R 0744/2008-4 relating to CTM application 4.462.826, Inea (figurative mark), which had been applied for for a range of goods in classes 3, 5 and 16.
It had been opposed as regards the class 16 goods on the basis of an earlier right in MINEA, word, registered in class 16. Whereas the opposition division had denied LOC, the Board had allowed the opposition. 16PF : T-507/08 – Office response filed. Keywords: Types of signs: numeral/letter combination. Absolute grounds for refusal: distinctiveness. Distinctiveness: whether given where sign has a technical meaning but had been coined by an identifiable individual. The action has been brought against a decision of the 2 nd Board of 23.7.2008 in Case R 1012/2007-2 concerning CTM 1.892.652 (“16PF”) which is registered: In class 9 for computer software; computer software for use in behavioral testing, personal evaluation, personality interpretation, personality assessment, personality testing; computer software for use in the administration, scoring, interpretation and reporting of personality tests, personality assessment, personal evaluation and personal interpretation; pre-recorded CD-ROMS, magnetic data carriers, pre-recorded data carriers providing manuals, test booklets, answer sheets, profile sheets, norm tables, scoring keys, work sheets, work books, reports, questionnaires, record forms, user guides, planning booklets, reference materials, hand books, technical reports and books particularly in the area of behavioral testing, personality assessment, personal evaluation and personal interpretation or the administration, scoring, interpretation and reporting of personality testing and personality assessment. In class 16 for printed matter and printed publications relating to behavioral testing, personality assessment, personal evaluation and personal interpretation; paper testing materials for personality assessment, personality testing, personal evaluation and personal interpretation; manuals, test booklets, answer sheets, profile sheets, norm-tables, scoring keys, work sheets, work books, reports, questionnaires, record forms, user guides, planning booklets, reference materials, hand books, technical reports and books, particularly relating to personality assessment, personality testing, personal evaluation and personal interpretation, administration, scoring, interpretation and reporting of personality assessment, personality testing, personal evaluation and personal interpretation. In class 35 for data processing services, particularly relating to personality assessment, personality testing, personal evaluation, personal interpretation and the administration, scoring, interpretation and reporting of personality assessment, personality tests, personal evaluations and personal interpretation. In class 41 for education and training services; education and training relating to personality assessment, personality testing, personal evaluation and personal interpretation and the use of printed matter, printed publications and pre-recorded CD-ROM, magnetic data carrier or other pre-recorded data carriers in personality assessment, personality testing, personal evaluation and personal interpretation; conducting workshops and training sessions in the field of personality testing, personality assessment, personal evaluation and personal interpretation, and in class 42 for computer programming and data analysis services, particularly relating to personality assessment, personality testing, personal evaluation, personal interpretation and the administration, scoring, interpretation and reporting of personality assessment, personality tests, personal evaluations and personal interpretation. The CTM had been challenged by way of a request for invalidation based on Article 51(1)(a) in conjunction with Article 7(1)(b), (c) and (d) CTMR and on Article 51(1)(b) CTMR. The request had been rejected on the following grounds: The sign ‘16PF' is an abbreviation which stands for ‘sixteen personality factors'. ‘16PF' identifies a specific behavioural test rather than the scientific theory developed by its founder R. Cattell. This test is known to originate from one single commercial origin. Article 51(1)(a) CTMR read in conjunction with 7(1)(b) CTMR is not applicable because “the combination of a digit and letters ‘16PF' is not an expression used either in everyday speech, or in professional slang, to distinguish goods and services other than the specific questionnaire of Cattell's origin”. Thus the term ‘16PF' is clearly capable of distinguishing the commercial origin of the goods and services covered by the contested CTM registration. Article 51(1)(a) CTMR read in conjunction with Article 7(1)(c) CTMR is not applicable because ‘16PF' is an invented combination which bears no meaning in respect of the goods and services relating to behavioral testing (let alone in respect of the goods and services that are not related to behavioral testing). The requestor for cancellation failed to prove that the term ‘16PF' is commonly used in trade in relation to the goods and services at issue and thus, that it is descriptive. The term ‘16PF' does not designate any characteristic of the registered goods and services, not even of the questionnaire itself, despite the fact that this term is likely to be perceived by the specialised public as the name of the specific test. Article 51(1)(a) CTMR read in conjunction with Article 7(1)(d) CTMR is not applicable because the questionnaire known as ‘16PF' is invariably associated with its inventor, R. Cattell and to some extent with the CTM owner who holds a right in it. Therefore, this term has not, for a substantial part of the relevant public in the Community, become customary as an equivalent of any type of personality questionnaire. As regards the goods and services that are not questionnaires, Article 7(1)(d) CTMR is even less relevant, and Article 51(1)(b) CTMR is not applicable. Firstly, the alleged CTM applicant's bad faith cannot be inferred from the list of goods and services. Secondly, registration of ‘16PF' either for a questionnaire, or for other goods and services, has not changed the fact that the questionnaire itself and its name are not in the public domain for free use by all operators. Farbe auf Strumpf or Strumpf : T-547/08 – Office response filed (DE). Keywords: Types of signs: “position signs” (position marks). Types of signs: colour (on a specific part of a product). The action has been brought against a decision of the 4th Board of 6.10.2008 in Case R 0846/2008-4 relating to CTM application 5.658.117 in class 25 (shown below). The colour claimed on the stockings in a particular position is Pantone 16-1359 TPX orange.
The application had been rejected under Article 7(1)(b) CTMR on the grounds that specific decoration of that kind is commonplace in the respective business. Kids Vits : T-484/08 – Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC). LOC: comparison of marks. The case has been brought against a decision of the 4 th Board of 28.8.2008 in Case R 0716/2007-4 relating to CTM application 3.979.143, Kids Vits, word, which had been applied for pharmaceuticals etc. in class 5. It had been opposed by Merck KGaA on the basis of VITS4KIDS, registered for dietetic preparations for medicinal purposes in class 5. The opposition has been allowed. Star Foods/Star Snacks : T-492/08 – Office response filed (DE). Keywords: Opposition: likelihood of confusion (LOC). LOC: comparison of marks. The action has been initiated against a decision of the 4 th Board of 17.9.2008 in Case R 1408/2007-4 relating to CTM application 4.105.615, Star Foods (figurative mark). It had been applied for for a range of goods in classes 29, 30 and 32.
The CTM application had been opposed on the basis of Star Snacks (figurative and word mark), registered for a range of goods in classes 29, 30 and 31. Whereas the opposition division had allowed the opposition, the Board rejected it on the grounds that, overall, the marks are dissimilar enough to exclude LOC. Super Seedless : T-493/08 – Office response filed. Keywords: Absolute grounds for refusal: distinctiveness. Distinctiveness: acquired on the market, Article 7(3) CTMR. Cancellation: restriction of the list of G&S. The action is directed against a decision of the 1 st Board of 3.9.2008 in Case R 1378/2007-1 and relating to cancellation proceedings 1240-C against CTM 610.980, word mark SUPERIOR SEEDLESS, registered in classes 31, 35 and 42 for fresh fruit and vegetables; importation and exportation of fresh fruits and vegetables; advertising and business services; business management consultancy, including, giving assistance and advising in the establishment of services in order to market and distribute fresh fruits and vegetables, and for services in order to develop, grow, market, and distribute fresh fruits and vegetables; technical consultancy and advising in the establishment of services in order to market and distribute fresh fruits and vegetables. Initially, the examiner had raised an objection on the grounds that the expression was directly descriptive of the quality and characteristics of all the goods and services in the specification and, hence, devoid of distinctiveness for the purposes of Article 7(1)(b) and (c) CTMR. In response to the examiner's objection, the applicant had restricted the specification in class 31 to ‘grapes' and submitted evidence with a view to proving that the mark had acquired distinctiveness on the market, within the meaning of Article 7(3) CTMR. Subsequently, the examiner had waived the objection as regards the services in classes 35 and 42 and accepted that the mark had become distinctive with regard to ‘grapes' in class 31, due to the use that had been made of it. After registration, a request for invalidation had been filed. In essence, the requestor maintained that the sign had been registered in breach of Article 7(1)(c) CTMR, because it is a directly descriptive expression that merely denotes seedless grapes of superior quality and which cannot be said to have become distinctive through use, since in the relevant market sector it is viewed as a reference to a grape variety, rather than a trade mark. The request had been partially upheld, namely in respect of ‘grapes' in class 31, maintaining the registration in respect of the services in classes 35 and 42. Upon appeal, the CTM holder offered to restrict, or specify in detail, the list of G&S. The Board, however, declared the proposal as both inadmissible and non-operative. 61 A Nossa Alegria : T-472/08 – Office response filed. Keywords: Opposition formalities: substantiation of the earlier right. Opposition: likelihood of confusion (LOC). LOC: relevant public. LOC: comparison of signs. Comparison of signs: numerals in combination marks. The action is directed against a decision of the 1st Board of 4 July 2008 in Case R 1687/2007-1 relating to CTM application 3.567.872, “61 A Nossa Alegria” (figurative mark) for alcoholic beverages in class 33.
It had been opposed on the basis of several earlier rights covering alcoholic beverages in Portugal inter alia . The opposition had been dismissed in its entirety, partially on formal grounds and partially on substance: The relevant public is the public at large composed of average Portuguese, Spanish, English, Austrian and Danish consumers having an average degree of attentiveness. The goods covered by the conflicting marks are identical. In Spain , the UK , Austria and Denmark , the dominant element of the earlier marks is the word CACHAÇA which bears no meaning in respect of alcoholic beverages. The numeral ‘51' has a lesser capacity to be memorised as a distinctive element identifying the earlier marks as the combination of two digits “are commonly used in relation to ‘alcoholic beverages' to indicate some of their characteristics, such as the alcohol by volume that they contain or the time required for their maturation process. In Portugal, since the words CACHAÇA and PIRASSUNUNGA have a descriptive meaning in respect of alcoholic beverages (the first word referring to a specific type of beverage while the second identifies its geographic origin that is a place in Brazil), the distinctiveness of the Portuguese trade marks resides in the combination of their most dominant elements ‘CACHAÇA 51' or ‘PIRASSUNUNGA 51' rather than in the numeral ‘51' alone. The dominant element of the mark applied for is the numeral 61. Taken globally, the signs are dissimilar according to the three levels of perception. Even if the well-known character of the earlier Portuguese figurative and word marks ‘CACHAÇA 51' was accepted, the fact would remain that the opponent cannot claim an exclusive right on the digits ‘51' apart from the word element CACHAÇA. The well-known character of the earlier Portuguese marks would therefore not affect the conclusion that the signs are dissimilar overall and that LOC is excluded in Portugal , as well as in the other relevant territories. Atlas Transport : T-482/08 – Office response filed (DE). Keywords: Use: criteria. Revocation: lack of genuine use. The action is directed against a decision of the 4 th Board of 9.9.2008 in Case R 1858/2007-4 relating to cancellation proceedings 1724-C, directed against CTM 545.681, ATLAS TRANSPORT, in class 39. The requestor for revocation had claimed that the CTM holder would not genuinely use its mark instead he would use it just as a basis for filing warning notices against companies which have “atlas” as part of their company name or other business identifier. The CTM holder filed letter heads and bills as evidence of genuine use, and the cancellation division rejected the request. In contrast, the Board revoked the CTM. In essence on the grounds that the holder would not dispose of a commercial site or lorries, containers or the like which would be vital for a transport business. The seat of the company would be the private house of the CTM holder. The use of the mark had not been genuine because on the business papers, the CTM would not appear in the form as registered but in different forms, namely in direct combination with a geographical indication or other prefixes or suffixes. Sungasoline : T-502/08 – Office response filed (DE). Keywords: Opposition: Opposition: likelihood of confusion (LOC). The action is directed against a decision of the 4 th Board of 19.9.2008 in Case R 0513/2007-4, relating to Volkswagen's CTM application 3.418.647, SunGasoline, word, applied for in class 4. It had been opposed by Deutsche BP on the Basis of GASOLIN, word, registered in class 4. Whereas the opposition division had rejected the opposition on the grounds of dissimilarity of the signs, the Board had partially allowed it. dSlim : T-504/08 – Office response filed (DE). Keywords: Absolute grounds for refusal: distinctiveness. The case is directed against a decision of the 4 th Board of 17.9.2008 in Case R 1077/2007-4 relating to CTM application 5.355.136, dSlim, word, which had been applied for for a range of G&S in classes 1, 5, 10, 42 and 44. It had been rejected on the grounds that the relevant public would consist of medicinal experts and that the sign is the abbreviation of the technical term Double Stem Loop Immuno-Modulator which would follow from medicinal publications and other sources like the internet. Kremezin/Krenosin : T-487/08 – Office response filed. Keywords: Opposition formalities: identification of the earlier right. Opposition: likelihood of confusion (LOC). LOC: comparison of pharmaceutical products. The action has been initiated against a decision of the 4th Board of 15.9.2008 in Case R 1631/2007-4, relating to CTM application 2.906.501, word KREMEZIN, applied in class 5 for p harmaceutical preparations, all being for use in the treatment of renal disease, liver disease, diabetes mellitus and Crohn's disease, all being in the form of capsules, sachets or pouches, jelly, dried jelly, or provided in bottles, and all being for oral administration, and none being administered intravenously or being for use in the treatment of heart conditions. It had been opposed on the basis of international registration KRENOSIN with effect in several Member States for pharmaceutical, veterinary and sanitary products in class 5. However, proof of use was only provided for pharmaceutical preparations for the treatment of the heart in Italy . The opposition had been allowed in full. As regards the formal challenge of the decision, the Board had held that the grounds for inadmissibility (Rule 17 CTMIR) are one thing, and the substantiation of the opposition (Rule 19) another. At the time of lodging the notice of opposition, the opponent had filed a copy of the publication of the international registration, accompanied by a full translation of it into the language of the proceedings, which at that procedural time was sufficient identification of the earlier right. Giordano : T-483/08 – Office response filed. Keywords: Opposition: likelihood of confusion (LOC). LOC: comparison of goods. The action is directed against a decision of the 2nd Board of 28.7.2008 in Case R 1864/2007-2 relating CTM application 1.856.335, GIORDANO, word. It had been applied in respect of the following goods in class 18: Leather and imitations of leather, and goods made of these materials, particularly cases, bags, beach bags, handbags, holdalls, waist bags, pouches; suitcases, travelling bags and cases, suit carriers; valises, briefcases, portfolios, attaché cases, wallets, key cases and holders, passport holders, cheque book holders, luggage, purses, billfolds, money belts, key fobs, document holders, credit card cases and holders; folder, back packs, rucksacks, knapsacks, school bags, satchels, tote bags, shoulder bags, sport bags, athletics bags, book bags, carry-on bags, bags for money, duffle bags, shoulder bags; shoulder belts; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks, including canes, whips, harness and saddlery, and in class 25 clothing, footwear and headgear. The CTM application had been opposed on the basis of the earlier Portuguese trade mark GIORDANO, word, registered for footwear in class 25. By its decision, the opposition division partially upheld the opposition and concluded that there was LOC as the sign applied for covers the following: “goods made of leather and imitations of leather, particularly bags, beach bags, handbags, holdalls, waist bags, pouches; suit carriers, briefcases, portfolios, wallets, key cases and holders, passport holders, cheque book holders, purses, billfolds, money belts, key fobs, document holders, credit card cases and holders; folder, back packs, rucksacks, knapsacks, school bags, satchels, tote bags, shoulder bags, sport bags, athletics bags, book bags, carry-on bags, bags for money, duffle bags, shoulder bags; shoulder belts” in class 18, and “clothing, footwear, headgear” in class 25. In contrast, the Board partially annulled that decision in respect of “holdalls, suit carriers, briefcases, portfolios, wallets, billfolds, money belts, key cases and holders, passport holders, cheque book holders, key fobs, document holders, credit card cases and holders, folders, bags for money, duffle bags and shoulder belts” in class 18. Euro Automatic Cash : T-15/09 – Office response filed. Keywords: Board proceedings: change of an absolute grounds for refusal. Absolute grounds for refusal: descriptiveness. The case has been brought against a decision of the 4 th Board of 18.11.2008 in Case R 0070/2006-4 relating to CTM application 4.114.864, word Euro Automatic cash, applied for for a vast range of G&S in classes 9, 35, 36, 37, 38 and 42. Whereas the examiner had rejected it on the grounds of Article 7(1)(b), the Board based its rejection of the appeal on Article 7(1)(c) CTMR. Becker Avionic systems: T-263/08 – Office response filed. Keywords: Opposition: likelihood of confusion (LOC). The case has been brought against a decision of the 1st Board of 10.4.2008 in Case R 0398/2007-1, relating to CTM application 1.829.563, BECKER Avionic Systems (figurative mark), which had been applied in class 9 for radio and navigation apparatus for shipping and aircraft.
It had been opposed on the basis of an earlier right in BECKER, word, registered in class 9 for radio receivers; combined radio receivers and tape recorders; tape players for vehicles; aerials; loudspeakers; radio interference-suppressor apparatus and instruments; radio shielding units and monitoring apparatus and instruments, none for in vivo use; signalling and warning (other than alarms for vehicles); scientific apparatus and instruments all for avionics; transceivers; radio communications, navigational and radar apparatus and instruments and parts and fittings included in class 9 for all the aforesaid goods. The opposition had been allowed in full. Grain Millers-I : T-429/08 – Office response filed. Keywords: Opposition: earlier rights under Article 8(4) CTMR. Art 8(4) rights: German business identifier. The action has been initiated against a decision of the 2 nd Board of 23.7.2008 in Case R 1192/2007-2, relating to CTM application 3.638.657, Grain Millers (figurative mark), which had been applied in c lass 29 for: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; in class 30 for coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice, and in class 31 for agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.
It had been opposed under Article 8(4) CTMR on the basis of a German business identifier used in the course of trade. The opposition had been allowed against “flour” in class 30 and “agricultural [and] horticultural products and grains” in class 31. The reasoning can be summarized as follows: The rights which can be invoked under Article 8(4) CTMR must be trade-related. German Trade Mark Law protects ‘business designations' (also called company symbols, or commercial designations, firm names, business identifiers). Therefore, a German right to a business identifier is a right under Article 8(4) CTMR. Although the period of use only pre-dates the date of filing of the CTM application by a month at most, the use is genuine and sufficient to show that the opponent's unregistered sign was used in the course of trade in connection with wheat and rye during the relevant period. There is no doubt that the opponent is the holding company of the ‘network' of incorporated mills and was active in the course of commerce before the filing date of the CTM application. The use is of more than local significance. The invoices and letters show business activity in big German cities such as Bremen , Leipzig and Kassel . The press items inter alia mention Muenster, Recklinghausen and Gotha . Such business is not confined to a local area but has established a real presence across Germany together with its export and import activity based around a sea port. Section 15(2) of the German TM Act prohibits the use of a subsequent CTM if it is capable of ‘causing confusion with the protected designation' in the same trade. Grain Millers-II : T-430/08 – Office response filed. Keywords: Opposition: earlier rights under Article 8(4) CTMR. Art 8(4) rights: German business identifier. The action has been initiated against a decision of the 2 nd Board of 23.7.2008 in Case R 0478/2007-2, relating to CTM application 3.650.256, Grain Millers (figurative mark). The list of G&S is the same as in case I above. It had been opposed under Article 8(4) CTMR on the basis of the German business identifier GRAIN MILLERS, word, used on the opponent's business papers and letterheads in the course of trade. The opposition had been allowed against “preparations made from cereals, bread, pastry and confectionery” in class 30 and “forestry products and grains” in class 31. The reasoning had been the same as in case I above. Superskin : T-486/08 – Office response filed. Keywords: Absolute grounds for refusal: distinctiveness. The action has been initiated against a decision of the 4th Board of 15.9.2008 in Case R 1656/2007-4 relating to CTM application nr. 5.967.856, word SUPERSKIN. It had been applied for in classes 3, 5 and 44, namely: In class 3 for cosmetics; non-medicated toilet preparations; lotions, creams, gels and preparations for the skin; protective lotions, creams and preparations for the skin; cleansing and moisturising creams, oils, lotions and preparations; sun tanning, sun screening and sun care creams, oils, lotions and preparations; after sun creams and preparations; skin bronzing and skin colouring preparations; anti-sunburn preparations; sunburn ointments; soaps; bath gel; essential oils; lotions, creams and preparations for care of the face, body, scalp, nails and hair; bath preparations; toilet articles; shaving preparations; cleansers, toners; perfumes; antiperspirants, deodorants; dentifrice; talcs; makeup; concealers for spots and blemishes; cosmetics; conditioner; shampoo; hair colouring preparations; hair spray; eyecare preparations; depilatory and exfoliating preparations; nail varnish; nail varnish remover; artificial nails and cotton wool. In class 5 for nutraceuticals and dietetic foods; foods for babies, and in class 44 for hygienic and beauty care for human beings; cosmetic treatments for the body, face and hair; beauty counselling; cosmetic consultancy; beauty consultancy; beauty therapy; nutrition and dietetic consultancy; information, advisory and consultancy services relating to the aforementioned services. It had been rejected on the grounds that the sign gives obvious and direct information about the quality and intended purpose of the goods and services for which protection is sought, since, taken as a whole, the term SUPERSKIN immediately informs the consumer that the products concerned considerably improve the appearance of one's skin. Accordingly, the sign cannot function as an origin indicator, being both descriptive and totally devoid of distinctiveness for the purposes of the above provisions. NEW DECISIONS FROM THE BOARDS OF APPEAL Please note that the full number including slash has to be entered in our database under 'Appeal Nº', without the letter 'R'. Proof of use – evidence – translation into the language of proceedings – substantial procedural violation Decision of the First Board of 28 May 2009 in joined Cases R 1157/2007-1 & R 1163/2007-1 PharmaVie [Figurative Mark]/Pharmavit [Figurative Mark] (English) R 1157/2007-1 & R 1163/2007-1 PharmaVie [Figurative Mark]/Pharmavit [Figurative Mark] – After being invited to do so by the Opposition Division, the opponent filed proof of use of its earlier trade mark. The evidence was filed in Hungarian. The Board considers that the evidence was not self-explanatory and, consequently, the Opposition Division should have requested a translation in accordance with Rule 22(6) CTMR. Furthermore, the contested decision does not explain to which ‘other distinctive elements which alter the distinctive character of the opposing trade mark' it refers. Another procedural error was committed as it upheld the opposition for some goods which were not claimed by the applicant but appeared, due to an error, in the translation of the list of goods and services published. Furthermore, there is a clear contradiction between the reasoning and the outcome of the decision. The decision was annulled, the appeal fee reimbursed and the case remitted to the Opposition Division for further prosecution. Admissibility of the appeal – statement of grounds – right to appeal – adversely affected Decision of the First Board of Appeal in joined Cases R 1406/2007-1 & R 1449/2007-1 NOSTALGIE/NOSTALGIA ELECTRICS & NOSTALGIE (English) R 1406/2007-1 & R 1449/2007-1 NOSTALGIE/NOSTALGIA ELECTRICS & NOSTALGIE - Since the opposition was upheld, the opponent is not adversely affected by the contested decision and its appeal must be rejected as inadmissible in accordance with Article 59 CTMR and Rule 49(1) CTMIR. The appeal of the applicant is inadmissible, as well. The ‘statement setting out the grounds of appeal' must be interpreted as a statement indicating for which reasons (or ‘grounds') the contested decision is incorrect and should be annulled or reformed by the Board. Example of ‘grounds' are: an erroneous appreciation of the facts, an incorrect interpretation of the law, a procedural violation. The applicant merely asks the Board to reconsider the merits of the case but points to no ‘ground' for doing so. The Board cannot deduce from the applicant's ‘statement of grounds' the reasons for which the applicant disagrees with the contested decision and it cannot investigate ex officio these reasons. It is not sufficient to submit a piece of paper with the name ‘Statement of Grounds' on it to ensure admissibility of the appeal. A document that has the name, but not the content, of the statement envisaged in Article 60 CTMR will not prevent the appeal from being rejected as inadmissible. Decision terminating the proceedings – appealable decisions Decision of the First Board of Appeal in Case R 1695/2008-1 PINPOINT FACILITATION (English) R 1695/2008-1 PINPOINT FACILITATION - The examiner informed the applicant that it did not consider the trade mark he/she had applied for as eligible for registration and invited the applicant to file evidence concerning distinctiveness acquired through use. The examiner's invitation did not terminate the proceedings relating to the eligibility for registration of the mark applied for, and only contained a provisional refusal of that mark which could have been overcome by the applicant submitting evidence of acquired distinctiveness. It cannot therefore be considered as final. The appeal is dismissed as inadmissible. Relative Grounds of Refusal Opposition proceedings – 3D marks – distinctive character of the earlier trade mark – Decision of the First Board of Appeal of 16 July 2009 in Case R 1529/2006-1 Bottle [3D Mark]/Bottle [3D Mark] (English)
R 1529/2006-1 Bottle [3D Mark]/Bottle [3D Mark] – since both trade marks consist only of the shape of the bottle, a phonetic comparison cannot be done. Regarding the visual comparison, it must be held that both bottles consist of a green-coloured, long-neck bottle, which is commonly used with respect to the goods in question, i.e. alcoholic beverages and beer. The bottle necks look quite different, especially with respect to their form and length in comparison to the rest of the bottles. While the neck of the elder trade mark has the form of a screw, the neck of the CTM applied for moves only to the left and the right. The Board also held that, ‘to spark recognition' is not equivalent to ‘producing a conceptual link'. It may indeed be true that when looking at the trade mark applied for the consumer will be reminded of the opposing trade mark, but that does not mean that the consumer will therefore confuse one trade mark with the other or assume that they come from economically linked undertakings. The contested decision was annulled, and the CTM applied for may proceed to registration. Absolute grounds of refusal Word mark – distinctive character – descriptive character – scope of protection of a word mark Decision of the First Board of Appeal of 11 June 2009 in Case R 1761/2008-1 Probio - When examining a trade mark for absolute grounds for refusal, it must first of all be determined exactly what is to be examined. Usually, what is to be examined is the trade mark as reproduced on the application form, in particular taking into consideration the choice of trade mark category and the script. Under Rule 3(1) CTMIR, where the applicant does not claim any special graphic feature or colour, the Office usually reproduces a trade mark in normal script, neutralising all details of the application, such as inter alia the colour of the ink used, the font, the spatial arrangement of the various words, and so on. In most cases, it makes no difference whether a sign is written in capitals or in small letters. Such signs are, for the purposes of the Court's definition, identical, insofar as deviations in script from the trade mark filed are, when viewed as a whole, so insignificant that they may go unnoticed by the average consumer. Ultimately it depends on the individual circumstances in each case. If, for example, a meaning is evident only from the different upper and lower casing, the meaning of the trade mark in the form filed is decisive. Where trade marks alter their meaning depending on the distribution of upper and lower casing, the different forms cannot be regarded as being identical . For example, the word ‘BlumenTopfErde' [‘potting compost'] is not identical to ‘BlumentoPferde' [‘Blumento horses'], and PCS in the field of computing is not the same as PCs, as the meaning is altered by the different use of upper-case letters. For the German-speaking consumer there is no reason to isolate the two elements ‘pro Bio' in the trade mark ‘Probio'. The two elements are neither particularly emphasised visually nor pronounced separately. It is usual in German to combine the word ‘pro' in the sense of ‘for' with another word. Where this does happen, however, it is emphasised by a hyphen, as for example in ‘ Pro-Kopf-Einkommen ' [‘per capita income']. Not breaking down the word sign filed, ‘Probio' results in the sign being perceived conceptually by the relevant trade circles as a one-word sign which does not have the meaning indicated by the examiner. Consequently, the CTM applied for is neither descriptive nor lacks distinctive character. |
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icon in the detailed page of the CTM retrieved.
