OHIM President addresses Parliament`s “JURI” Committee

Transcription

OHIM President addresses Parliament’s “JURI”
Committee
OHIM President António Campinos has given an important
address to the European Parliament's Legal Affairs
Committee. The President was invited by Committee
Chairman Klaus-Heiner Lehne to outline OHIM's current
work and future challenges.
With the adoption of the Lisbon Treaty and the new ordinary
procedure, the Commission, the Council and the European
Parliament all have parts to play in determining the shape of
any future legislative changes in IP and the JURI committee
is expected to play an important role in the Parliament’s
deliberations.
!
The James Nurton Interview Page 4
! CTM limited on grounds of lip-care mark’s “reputation”
Page 8
!
!
New eSearch plus Service proving “popular” Page
11
E-Business roundup (2011) Page 15
!
!
Luxembourg trade mark and design news Page 20
New decisions from the Boards of Appeal Page 51
! Prior Designs on Blogs Page 9
! OHIM helping Kosovo IP Office on design guidelines
Page 16
! Protecting “traditional knowledge” Page 16
! IT experts at technical liaison meeting Page 18
! “German day” hosted by OHIM Page 19
! Monthly statistical highlights February 2011 Page207
Editorial Team:
Reg Rea, Darren Grimshaw, Mikael Wesslegard
Contributors to this edition:
Nicasio Agustina, Stéphane Beslier, Arkadiusz Gorny, James Nurton, Julio Laporta Insa, Martin Schlötelburg and
Nicolas Vigneron.
Subscribe at: subscribe@oami.europa.eu
Unsubscribe at: unsubscribe@oami.europa.eu
Page 1 of 52
OAMI - HABM - OHIM - OHMI - UAMI - Newsletter 03 - 2011
OHIM President addresses Parliament’s “JURI”” Committee
OHIM President António Campinos has given an
important address to the European Parliament's Legal
Affairs Committee. The President was invited by
Committee Chairman Klaus-Heiner Lehne to outline
OHIM's current work and future challenges.
With the adoption of the Lisbon Treaty and the new
ordinary procedure, the Commission, the Council and the
European Parliament all have parts to play in determining
the shape of any future legislative changes in IP and the
JURI committee is expected to play an important role in
the Parliament’s deliberations.
Mr Campinos’s address is carried in full below.
Speech by OHIM President, António Campinos – 22 March 2011.
I would like to thank the Committee for Legal Affairs, and particularly your Chairman, Mr Lehne, for the kind invitation to
address you on the work of the Office for Harmonization in the Internal Market and our ideas for the future.
We are at an important stage in the life of our agency. Much has been achieved, but we also have much more to do.
We are very grateful to the JURI Committee for the interest and commitment you have shown over the years in
Intellectual Property. You have always supported the process of creation of unitary Intellectual Property Rights in Europe
which is, without any doubts, one achievement of the Internal Market.
But, good as it has been, we must remember that the current system was created in the 1990s and planned decades
earlier. Right now, taking advantage of the experience gained, we are being offered a second chance to think about some
matters that are central to carrying on this success into the middle decades of the 21st century.
You have already been reflecting on the future for Intellectual Property. Just a few weeks ago you heard from my
esteemed colleague Benoît Battistelli from the European Patent Office.
Today, I would like to complete your picture of Intellectual Property in the EU in the 21st century, with a brief presentation
of the OHIM, and the challenges and opportunities that we see ahead.
IP is important
It is important not just to those of us who do it for a living. It is important to everyone who has a place in the 21st century
economy. In its different aspects, it protects brands, designs, and innovations, and allows creativity the space in which to
flourish.
It is, of course, important to the big fish – the household names whose goods and services are known in Bradford, Berlin
and Brussels.
And it is important to the little fish, those micro businesses and SMEs, which are the lifeblood of our economy: all those
with big ambitions and the need to have in place conditions that will allow them to grow.
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It is also vital to protect consumers, who need to know that they are getting what they have paid for – not cheap and even
dangerous rip-offs.
At OHIM we have, of course, our share of big names in our databases – in fact the biggest. But the largest space is filled
by the small and medium enterprises on which the future wellbeing of the European economy depends.
For those who don’t know us so well, please allow me to give a little background
The Office for Harmonization in the Internal Market is the only EU agency exclusively devoted to IP matters. We are
based in Alicante in Spain and started administering the Community trade mark in 1996 and the registered Community
design in 2003. We have around 700 European civil servants and also provide employment for between 300 and 400
sub-contractors or interim workers. That means close to 1100 people in total.
Our income is derived entirely from fees charged to users so we are not a burden on the EU’s budget. In fact, our
financial success is quite well-known. In broad terms we had a revenue of 180 million euro last year, which was
substantially in excess of our expenditure – we had a 26 million euro surplus. In previous years, before the substantial
CTM fee cut in 2009, the revenue and the annual surplus were even higher. Now, with the last fee reduction, our fee
income has decreased of about 11 million euro despite the growth of more than 11% of our CTM applications. In terms of
how we spend money, an important part, around 45%, goes on staff costs. Almost 15% goes on IT and data processing
and slightly more is spent on translations.
These figures make us one of the most important EU agencies, if not the largest, in terms of employment and income.
Our mission is, as our name suggests, to help bring about harmonization in the Internal Market. The first tasks we were
given included managing the Community Trade Mark and Community Design registration systems and many of the
objectives set out in our Work Programme for 2011 are related to making these systems work even better.
We also engage in cooperation and harmonization activities with National Offices in the EU, as well as with major IP
offices outside the EU, including our partners in the US and Japan, and WIPO. In addition, the Office maintains close
contacts with major user organisations, several of which have observer status on our administrative bodies.
The ultimate aim of all those activities is to benefit users of the CTM and of national trade mark systems by fostering
convergence among the offices, both in terms of IP practices and tools.
Some statistics and a little history may be useful
The Community trade mark was a success from the very beginning. In fact, demand in the early years was several times
higher than had been initially expected. This created a challenge to deliver the fast, high-quality service desired by
customers.
In the first year of operation of the CTM, the Office received almost 44 000 applications and by 2004, with the introduction
of the registered Community design (RCD) the previous April, we were dealing with just under 60 000 CTM applications
and more than 50 000 designs annually. At that time, it was taking 22 months on average to register a trade mark and 17
weeks for a design.
Contrast that situation with the end of last year, when CTM applications reached 98 000. I am proud to say that by then,
the time to register a CTM had dropped to 26 weeks for straightforward files – less than one-third of the time taken in
2004. For Community designs, with just under 82 000 received in 2010, the majority of files were being registered within
the target time of 45 days. In addition, for customers who adopt some simple filing rules, the Office is already making 48hour design registration a reality.
Moreover, at present something like 95% of trade mark applications and almost 70% of design applications are made
online.
In effect, 2010 was the year when the Office finally caught up in a race against generally rising demand that started when
it opened for business in 1996. In fact, later this year, probably in August or September, we expect to celebrate receiving
our one millionth CTM application.
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But while OHIM has met and overcome many of those early challenges, it must be admitted that important challenges lie
ahead of us: challenges of both internal and external dimension.
Internally, to be brief, we must recapture some knowledge and expertise supporting our IT systems. At the same time we
need to bring them under a meaningful IT architecture while cutting down the more than 80 databases and 80 IT systems
we have developed over the past years.
We also have to make sure that we rebalance our HR policy in order to bring more stability and satisfaction (in particular
in term of a friendly environment) to our main asset: the quality of our workforce.
We have, finally, to ensure that we get rid of the remaining backlogs in order to further focus on other quality measures of
our service such as consistency and predictability in drafting decisions.
With respect to the external dimension – which is one of the main reasons of my presence in this House – I would like to
turn to the forthcoming legislative process on our founding regulation on trade marks and, as we hope to see, on the
revision of the Trade Mark Directive, which was adopted more than 20 years ago.
As you must be aware, the European Commission is examining the overall functioning of the trade mark system in
Europe. In this context, a study was commissioned from the Max Planck Institute and was recently published.
This is a welcome, detailed and comprehensive study which deals in depth with the functioning and evaluation of the
Community trade mark system managed by OHIM. Hence, it is one of the elements that the Commission will take into
account in deciding the way forward.
In the context of its right to initiate legislative proposals, the Commission may carry out further consultations, if needed, in
order to prepare the forthcoming proposal on the Community trade mark system.
With the adoption of the Lisbon Treaty and the new ordinary procedure, the Commission, the Council and, of course, the
European Parliament will all have parts to play in determining the shape of any legislative changes. In this context the
JURI committee’s expertise will play a pivotal role.
Concerning the forthcoming legislative proposals, OHIM believes that the main principles should be the following:
- The unitary character of Community trade mark must be preserved. This is, as I said, one if of the most significant
achievements of the internal market in the field of IP.
- The system is working well for the benefit of users. As a result, the final outcome of the legislative process should lead
to an improvement but not to structural changes.
- As the Community trade mark system coexists with the national ones (and this intention is clearly expressed in the
recitals of the Regulation) we need to assess the system in a comprehensive way. We need to address the revision of
both the CTM regulation and the TM Directive at the same time.
As I said a revolution is not needed. An evolutionary approach is the best way forward, given the broad consensus that
the Community trade mark is currently working well. This is shown by the close to 350.000 companies and entrepreneurs
using it to protect their brands.
The result of this legislative process should not be to create a new system, but to improve, simplify and to adapt it for the
benefit of all stakeholders.
This evaluation is an opportunity to take a look at the system as a whole and address and discuss any legal issue that
should be considered important for the improvement of the system.
On simplification, efforts should be concentrated in increasing efficiency, quality and predictability, and achieving a full
implementation of electronic communications. There should be clear rules improving the functioning of the whole
registration procedure, including deadlines, a reduction of bureaucracy, and an emphasis on the harmonization of the
different regimes for the benefit of users.
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Another challenge is to increase legal certainty for customers
Let’s be clear. We feel that legislation is not the only way. A lot could be done to improve the predictability and quality of
decisions
internally
by
a
combination
of
investment
and
adopting
the
appropriate
priorities.
However, legislation can have its place in things like modernising the definition of a trade mark and incorporating the
results of jurisprudence, where this would bring more clarity.
There may also be a need to guard against external pressures on “legal certainty”, such as the question of “genuine use”
of a Community trade mark, which has attracted so much attention.
On this issue, the Office feels that the political consensus arrived at in the past, which created the Community trade mark
as a tool covering the whole of the internal market in a single registration, must not be revisited or undermined.
This is also the view expressed by both Commissioner Barnier and the European Parliament’s own Internal Market
Committee when discussing the “genuine use” issue during 2010.
Commissioner Barnier said at that time, that any new restriction to the Community trade mark could have serious
consequences for the fight against counterfeiting and would damage SMEs and business start-ups in particular.
Your own Chairman, Mr Lehne gave important and very welcome support, to the unitary character of the Community
trade mark at the IP Business Congress in Munich last year.
These things matter because, as your Chairman has said, we must work to ensure that any changes strengthen the
Community trade mark system and do not weaken it.
Of course, our Regulation should not be the only target for legislative change. In the evolution ahead we should also
take the opportunity to upgrade the Harmonization Directive which was approved 22 years ago to bring national law into
line with EU law.
Once again, it is important to realise that the Community trade mark system is only a part of the all-European trade mark
system. Every analysis that is carried out and any solution that is proposed must take account of the system as a whole
and not only consider the CTM system.
So, given the need for improved harmonization between the legal framework and practice at EU and national level, we
are happy to remark that the Commission intends to propose the revision of the Community Trade Mark Regulation and
the revision of the Directive harmonizing National Trade Mark Laws as a package. We do hope, I would dare to say
‘urge’, that they will be adopted by the Commission before the end of this year.
With regard to the harmonizing Directive, this is a real second chance – and given the slow nature of changes in this area
it may be the last chance in a generation.
We think convergence by agreement is best. This is the philosophy driving many important initiatives such as the 21
projects approved under the cooperation fund for the ultimate benefits of users, such as online and free-of- charge
searchable databases of trade marks and designs
Nevertheless, we need to harmonize further trade mark legislation in order to allow the convergence between national
trade mark systems and between these and the Community system. Only by doing so, will we be able to achieve the
mandate given to us by the legislator: creating a European trade mark and design systems where the choice of users is
not driven by the differences in the quality of the services provided but only by strategic business decisions.
Honourable members of the Parliament, we are living in interesting times and I would like to assure you that OHIM is
ready for the challenge ahead of us. We have been looking at what we need in terms of resources to play our part and
are forging a strategy in which national and Community rights are true partners, providing the alternatives needed by the
full range of businesses.
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In creating this future, I know we can count on your Committee to be fair but decisive, though I am sure you will also be
challenging. Above all, I know we can always count on your voice to speak in support for what’s best for Intellectual
Property in the EU and what’s best for the single market.
Thank you for listening to me.
The James Nurton Interview
This month James Nurton talks to Michel Jolicoeur in Italy about topical issues including the Madrid System, marks with a
reputation and why there are reasons to be optimistic about trade marks.
How did you start in trade marks?
I started working in general practice, which included some training in trade marks – though mostly in licensing rather than
prosecution. I am Canadian and was practising in Ottawa. It was happenstance that brought me to Italy and I've stayed
here ever since, working for Racheli & C in Milan.
My work right now is from clearance to prosecution, including oppositions and appeals and administrative work. But I also
coordinate foreign litigation. We act before the Italian office, OHIM and WIPO.
In fact, today a lot of our work is WIPO-oriented. So many countries are now members of the Madrid Agreement or
Protocol that a lot of work goes through the Madrid System. Usually we use an Italian trade mark application as the basis
for an international mark rather than a CTM application. That is one of the advantages of the Italian trade mark.
Then the first designation is the EU and after that it depends on the business. All of Europe and the Far East are of
particular interest to our clients at the moment. We don't use the Protocol so much for North and South America. We
would really like to see more countries in Latin America join the System.
What do you think of the Italian office?
They've made great improvements in the past four or five years, mostly with digital technology. That has helped a lot in
increasing the quality and efficiency of work. We don't have mountains of paper anymore. The office has benefited from
coaching from OHIM and the USPTO.
It means we get registrations a lot quicker and information is loaded on to the online database straightaway. In Italy
applications are only examined on formal and absolute grounds, so it is a fairly slim check. You're looking at six months to
get to registration compared to five years, which is what it used to take.
The Italian office is quite small – it only has about 80 examiners in total – but the staff seems to be younger and better
trained, and it is more efficient than it used to be.
We still don't have oppositions. The legislation has been enacted and the guidelines have been worked on, but somehow
they have yet to materialise. We are used to not having them but I think it would improve business if they were available:
a lot of trade mark owners would actively oppose rather than go through the hoopla of a court nullity action.
What do you think of OHIM?
I think OHIM provides an excellent service. It is very reliable and well staffed. Its website is a wonderful tool – probably
the best in the world. Having the file wrapper online is very useful: it means sometimes I don't even need to look up our
own internal files! My only complaint is that the sessions are too short and sometimes abort.
I would like to see e-filing extended to areas which still have to be done by fax at the moment.
My biggest problem with appeals is that there is no sense in the recovery of costs. You're not going to go running around
the world after €350 or €650. It's very hard to do even in Europe, with the European conventions, so it's practically
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impossible further afield. Is the other party going to bother trying to pursue a company in Brazil or Taiwan for a few
hundred euros? Of course not.
The answer could be that if you want to oppose or defend yourself then you should have to pay up front. OHIM would
hold the money on account and refund it after proceedings are over. We're not talking about thousands of euros and you
have to pay the official fee anyway. I think this change would also make the whole system look better and fairer.
What is the most unusual mark you have worked on?
There was a sound trade mark for Ducati for the sound of motorcycles. We ended up not filing the application for various
reasons but it was interesting to work on. There are not many sound marks around, though we have filed a number of
marks for shapes and packaging.
Do you also use Community designs?
Absolutely. We actually file a lot of registered designs for Japanese clients, particularly in the electronics area. Designs
are also important in Italy but Italian companies are more likely to rely on unregistered designs in industries such as
fashion.
There are definitely benefits in having a design registration. We had a big design infringement case in France for one of
our clients and luckily the client had filed a Community design. But the alleged infringer challenged the design, based on
a catalogue from China that would have destroyed the novelty. We lost the case at first instance. But we hired a private
investigator in China who found that someone had spilled the beans about our design there, and the catalogue was not
credible evidence. We ended up getting a good decision from the Court of Appeal in Paris.
What trends are you seeing in trade mark work?
We are seeing a lot more cases under Article 8(5). There are only a few trade mark owners that can rely on a trade mark
that has widespread reputation and are able to prove it. A lot of people put it in but then can't substantiate their rights.
These cases are very interesting and the whole analysis based on the link has to be considered on a case-by-case basis.
It's a very powerful thing because it enhances the degree of protection of the trade marks. We have had several
favourable decisions, but it is very hard to overcome the evidential burden.
What about in Italy?
Italy changed its legislation a good five years ago now to make litigation quicker. It used to be notoriously slow.
The trend before was that you could obtain evidence fairly easily, similar to a saisie in France. Then you could start an
action within 60 days. The legislation aimed to make these measures more available and effective while respecting due
process. So the alleged infringer has to have an opportunity to defend himself, even at the inspection. The effect is the
threshold has been raised for IP owners and this has had a significant impact on enforcement.
What has been the impact of the economic downturn?
2009 was a bloodbath in trade marks but 2010 saw things getting back gradually. But I think the economic crisis has led
to a permanent change in strategies: we're not going to go back. It represents a general trend in IP practice, and we have
seen it in both trade marks and patents.
It's bad news for trade mark attorneys. We've lived in a big party for 10 to 15 years but now the party's over. Many
companies are not launching as many new brands. Look at a company like Fiat, which is launching new cars but not new
brands.
Instead, companies are looking to consolidate the brands they have. This makes sense: why spend €150,000 for trade
mark protection internationally when you've already invested a lot in the marks you have?
We have noticed clients are going through their portfolio, for example, and letting the figurative marks go. Instead they are
investing in the word marks. But they need to be aware that a new label may not constitute lawful use of their trade mark
if it alters the distinctive character. You have to stay within the parameters of Article 15(2).
The impact on trade mark attorneys is that there is more consulting work and less filing work as companies want to make
more out of what they have. The question is: will the client recognise the value of this consulting work? Clients have been
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trained to pay their attorneys based on filings, and they have got advice for free. They are used to doing that so it is a big
change for everyone to move to a different model.
Would you recommend trade marks as a career today?
I'm not sure it's an expanding profession but what profession is right now? On the other hand brands are very important
and I think the continued development of instruments like the Madrid System will make the system simpler and more
efficient so there are reasons to be optimistic.
CTM limited on grounds of lip-care mark’s “reputation”
A German cosmetics company has succeeded in limiting the coverage of a similar-sounding Community trade mark due
the firm’s established reputation in lip-care products.
The two Community trade marks involved were “LABELLO”, which was registered in 1998 by Beiersdorf AG for cosmetic
products in class 3; and “LABELISSIMO”, registered by Martine Van Doorne, from Monaco , in 2007 for goods including
stationery and art supplies.
Beiersdorf, also had a similar figurative mark and an earlier International Registration for “LABELLO”, covering classes 1,
3 and 5.
The German company requested that the later CTM be ruled invalid for a range of goods in class 3 including bleaches
and laundry products, stationery and art supplies including paper, in class 16, and clothing in class 25.
Beiersdorf argued that that the use of the contested CTM would be detrimental to the distinctive character and would take
unfair advantage of the repute of its earlier marks. Furthermore, the company claimed that there was a likelihood of
confusion since the goods in class 3 were identical and all others were similar.
On distinctive character, Beiersdorf argued that the “LABELLO” marks enjoyed an excellent reputation in the EU and, in
particular, in Italy , Germany and the Netherlands . Various market surveys were supplied to support the alleged
“reputation” of the mark, particularly for lip-care products.
The invalidity applicant said that, irrespective of the likelihood of confusion, the similarity between the signs would lead
the consumer to establish a link between the respective goods. Some of the goods, namely cosmetics, were identical,
while the others in class 16 and 25 were aimed at the same public. According to the case-law, consumers were more
inclined to make connections between two signs in cases where one of these signs was well-known.
In response, the CTM proprietor argued that the word mark “LABELISSIMO” was chosen to indicate an e-commerce
portal in which luxury items are sold to registered customers, who are professional marketers and buyers. The word
element "LABEL" referred to the idea of brand or logo and therefore has nothing to do with lip-care or the “labial” concepts
behind the applicant’s marks.
The Monaco company claimed that the condition of reputation, in terms of the territorial extent of recognition required was
not satisfied and the evidence provided was limited at most to lip-care products. They also denied that the signs were
similar. However, even if the first two conditions laid down in Article 8(5) CTMR were met, there was no proof that
“LABELISSIMO” would take unfair advantage of, or be detrimental to, the distinctive character or repute of the
“LABELLO” mark.
The Cancellation Division noted that according to the combined provisions of Article 53(1)(a) and Article 8(5) CTMR, a
Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in
infringement proceedings where it is identical with or similar to an earlier trade mark and is registered for goods or
services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier
Community trade mark, the trade mark has a reputation in the Community, and where the use without due cause of the
trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the
earlier trade mark.
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For an earlier mark to be afforded the broader protection under Article 8(5) CTMR, a number of conditions must therefore
be satisfied: (i) the earlier mark and the contested CTM must be identical or similar; (ii) the earlier mark relied on must
have a reputation on the relevant territory; and (iii) there must be a risk that the use without due cause of the contested
CTM would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
The Cancellation Division, after examining the marks, ruled that they were similar and that sufficient evidence had been
given to show that the “LABELLO” marks had a reputation for lip-care products in a substantial part of the European
Community.
The Cancellation Division found that there was a high degree of similarity between lip-care products and some of the
cosmetic and body-care products, in class 3, while for others, including bleaches and cleaning preparations, a link might
be established even though the goods were dissimilar. In the case of cleaning preparations, such a link might “impair the
image” of the reputed products.
The disputed goods in class 16, covered mainly paper, stationery and art supplies, and contained no similar products, but
a link might be made with "printed matter" and "instructional and teaching material (except apparatus)" if this was used to
deliver messages about lip-care.
In class 25, covering “Clothing, footwear, headgear” consumers could also establish a link, since the goods, while not
similar, were fashionable items, targeted at the same general public interested in body care and personal health.
Hence, the Cancellation Division ruled that the contested CTM must be declared partly invalid under Article 8(5) CTMR
for the goods mentioned above. The invalidity ground of “likelihood of confusion” was rejected for the remaining goods in
class 16 since they were dissimilar.
Prior Designs on Blogs
Many applications for a declaration of invalidity of a registered Community design (RCD) include evidence for prior
designs in form of printouts from the Internet. This evidence is often rejected by the Invalidity Division of OHIM on the
ground that it does not prove the date of disclosure of the prior design (see for example ICD 7013).
One way of adding credibility to evidence from the internet is the use of the Wayback Machine (www.archive.org) giving
access to an Archive of web pages referring to the dates when the pages were published on the Internet (see ICD 3184).
Another way is to print the contents of the web pages with an indication of the date of the printing (see ICD 4570).
However, the Archive is far from being complete and the printout may be too late, namely after the date of filing of the
RCD. The problem is known not only to OHIM but also to other IP Offices, in particular the European Patent Office (EPO).
In its Guidelines for Examination the EPO dedicates an entire Section to “Internet Disclosures” and the issue of
establishing dates.
OHIM recently received an invalidity application where the novelty of RCD 1667049-0003 (drawing below, left) was
contested on the basis of evidence for a prior design (photo below, right) posted on a web blog.
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Inspired by the Guidelines of the EPO, the Invalidity Division of OHIM reasoned in its decision (ICD 7178) that “as a
matter of principle, disclosures on the Internet form part of the prior art. Information disclosed on the Internet or in online
databases is considered to be publicly available as of the date the information was publicly posted. Internet websites
often contain highly relevant information. Certain information may even be available only on the Internet from such
websites. This includes, for example, online publications of design registrations by IP Offices.
The nature of the Internet can make it difficult to establish the actual date on which information was made available to the
public: for instance, not all web pages mention when they were published. Also, websites are easily updated, yet most do
not provide any archive of previously displayed material, nor do they display records which enable members of the public
- including examiners - to establish precisely what was published and when.
It is theoretically possible to manipulate the date and content of an Internet disclosure (as it is with traditional documents).
However, in view of the sheer size and redundancy of the content available on the Internet, it is considered very unlikely
that an Internet disclosure has been manipulated. Consequently, unless there are specific indications to the contrary, the
date can be accepted as being correct.
In the present case of ICD 7178, the publication appeared on a blog with an exact indication of the date, even the time
when it was put on the blog. It lies in the nature of a blog that it is addressed to the public and that the contributions
published on a blog are dated exactly. Consequently, there is no doubt that the prior designs shown were made available
to the public prior at the date indicated in the blog which is a date more than 12 months prior to the date of filing of the
RCD.”
At the end, the Invalidity Division decided to declare the RCD invalid in view of the evidence derived from the Internet.
Page 10 of 52
New eSearch plus service proving “popular”
OHIM’s new search service combining the data in ten previous databases, eSearch plus, is already proving popular with
users.
Since the trial or “beta” version of the search service was made available on our website earlier this month, around 2,000
users per day have switched to using it. Feedback has been generally positive. One user, Frédéric Glaize from Cabinet
Plasseraud commented: “The eSearch Plus interface is very impressive.”
eSearch plus allows the easy searching and monitoring of Community trade marks and registered Community designs,
as well as looking for owners, representatives and related case-law, all via a single user-friendly interface.
The new service offers advanced features including more complete information, sorting and filtering options, and new
means of setting up "alerts" delivered via RSS.
While all the existing services such as CTM Online, RCD Online and the case-law databases will continue to be available
for some time it is planned to phase them out once eSearch plus is on final release.
The current eSearch plus service is in English only, but the final version will be made available in all the OHIM languages.
This new service is accessible at http://esearch.oami.europa.eu/copla/index. Please contribute to improving the service
by replying to the survey at : http://www.surveymonkey.com/s/CF9LJXZ
The eSearch PLUS service proves better solutions for most users’ search needs:
1. A faster and easier search
With eSearch Plus it takes just a matter of seconds to obtain integrated results on trade marks, designs, owners and
representatives.
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2. All OHIM’s databases available with one click
The new search solution sifts through all OHIM’s resources for CTM, RCD, Owners and representatives from the basic
search. In the advanced search specific databases can be selected using a “tick box”.
3. Advanced search for better search results
In the advanced search screen, powerful search queries can be built using a wide range of search criteria that can be
picked from the “Most used” and “Additional” tabs located in the bottom left of the search window. The same criteria can
be used several times and “wild character” searches are supported. A new search criterion for goods and services in all
languages has been introduced to improve users’ search experience.
4. Unlimited search results at one glance
The eSearch Plus service returns all the information found corresponding to the search criteria entered. The current limit
in CTM-ONLINE/RCD-ONLINE of displaying only the first 1000 results has been dropped.
A simple layout gives a handy overview of the results in all the main sections: trade marks, designs, owners and
representatives.
Page 12 of 52
From “Representative” or “Owner” screens, an overview of the whole CTM and RCD is provided. Search is also made
easy in the law-case database.
In eSearch Plus, the “Office Decision” section always shows all decisions related to the search query. The newly
implemented “text search” criterion runs an extended search inside the text content of all decision documents.
Searches on all decision types: refusals, oppositions, cancellations and appeals are now available form one single
screen.
5. Easy management of unlimited search results
With eSearch Plus, the search results can be easily exported into a PDF-file for printing or saving locally.
Page 13 of 52
A set of filters has been implemented to make refining the lists of results easy. The “count” column in the filter results also
provides useful statistics and serves as a quality check.
6. CTM-related correspondence easily accessible
All the publicly accessible documents which make up a CTM file are displayed in a user-friendly way. By sorting and
filtering search options, users should be able to quickly find the document they are looking for. A new feature for
downloading one or several selected documents has also been introduced.
Page 14 of 52
7. New alert system integrated to keep you informed about changes
Alerts using RSS can easily be set up to inform you of any new results matching your search. You first launch a search
and then configure a RSS feed straight from your results list, which you can then export to your feed reader.
The OHIM E-Business Roundup (2011)
Statistical summary
!
!
!
!
The use of the CTM e-filing web form is steadily around 95%.
The use of RCD e-filing is around 70%
Oppositions against CTM applications received electronically are above 25%.
MyPage users represent around 56% of CTM Applications filed.
Page 15 of 52
State of play of future projects:
Service
Status
Electronic Register
This service will provide an online platform via MyPage to carry
out the following entries in the Register:
! CTM/RCD Transfers
! Appointment/replacement/deletion of representative
! Update of personal details (address, fax, phone number,
email)
Under development
Opposition Online
Opposition Online will provide via MyPage a new way for filing
oppositions online.
Live
New search service
This new service will provide full and unified search services for
CTM, RCD related information as well as case law.
Beta version live
OHIM helping Kosovo IP Office on design guidelines
OHIM has agreed to assist the Intellectual Property Office of the Republic of Kosovo in drafting Guidelines for the
examination and registration of industrial designs.
In a project similar to the collaboration with the Turkish Patent Institute (see previous news item), Martin Schlötelburg,
Head of Legal Affairs in the Department for Designs and Register, will be working with the Kosovo IP Office during March
and April this year.
The assistance on guidelines is part of an EU-funded programme managed by the European Commission Liaison Office
in Kosovo and implemented by the European Patent Office.
The Kosovo Office was established in 2007 and since then has received over 20 000 applications for trade marks,
patents and industrial designs.
Protecting “traditional knowledge”
Traditional knowledge is a branch of intellectual property which has been getting increasing attention in recent years.
The Director General of UNESCO, Frederick Mayer, defined traditional knowledge in 1994 as an “important element of
cultural identity”. It may be formed from traditional songs, stories, artefacts or artworks, or could equally form the basis for
medical practices or treatments.
The wide spectrum covered by traditional knowledge makes it difficult to fit into the conventional framework of IP covered
by copyright and industrial property protection.
In fact, the 2009 UN report on the “State of the world’s indigenous peoples”, suggested that the cultures of indigenous
peoples had frequently been ignored when global standards on intellectual property were being set.
Page 16 of 52
There is also sometimes ambivalence towards protection, even among those with the evident sympathy for the case that
indigenous people may have been taken advantage of in the past.
Kevin Smith, Scholarly Communications Officer at Duke University, in his article, “Can we protect ‘traditional knowledge?’
Should we?” said: “It is not difficulty to find stories of how native peoples have been exploited for economic gain by
companies that will appropriate and market traditional knowledge forms - everything from music to medicine.
“Such exploitation causes one to think that there is a hole in copyright laws that needs to be filled. But any attempt to
expand the scope of our copyright protections, which already seem to cover too much and last too long, is likely to have a
detrimental effect on scholarship. Thus I find myself caught between warring impulses - respect for the intellectual
creations of native peoples versus the desire to foster widespread knowledge of different cultures.”
There are now numerous examples of steps being taken to protect traditional knowledge. In Ghana, for example, it is
necessary to get a license to use traditional textile patterns. Under the Copyright Act of 2005, a person wishing to use
folklore must apply to the government, in the form of the National Folklore Board, for permission and pay a fee. However,
some critics have suggested that this kind of law impacts most heavily on local folklore users rather than foreign
companies.
India is one of the countries taking a lead in attacking the misuse of traditional knowledge in foreign courts, starting in
2001 with a successful fight for the revocation of turmeric and basmati patents granted by United States Patent and
Trademark Office (USPTO) and a patent granted by European Patent Office (EPO) for neem, which is derived from an
evergreen tree and is used to produce an oil used in cosmetics.
Subsequently, lndia initiated its project for the creation of a Traditional Knowledge Digital Library (TKDL). This library has
been developed over a ten year period to document knowledge about traditional medical treatments contained in ancient
texts and languages.
The TKDL now contains 34 million pages in five international languages. By making this information available, via Access
and Non-Disclosure Agreements, to six major international patent offices, the TKDL, coupled with India’s global bio-piracy
watch system, has, according to Indian authorities, achieved dramatic success in preventing the grant of erroneous
patents, at minimal direct cost and in a matter of a few weeks.
The World Intellectual Property Organization (WIPO) is also very active, with work currently underway in its
Intergovernmental Committee (IGC) on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore.
WIPO’s 184 member states are negotiating an international legal instrument intended to ensure the effective protection of
traditional knowledge and traditional cultural expressions, and to regulate the interface between IP and genetic resources.
Earlier this month representatives from 35 countries took part in a conference in Delhi co-organised by WIPO and the
Indian authorities to explore how the success of the India’s TKDL library could be emulated by interested countries.
WIPO Director General Francis Gurry praised India’s leadership in taking domestic and international action to combat
misappropriation of the wealth of knowledge contained in its traditional medicine systems, such as Ayurveda, Unani,
Siddha and Yoga.
Mr. Gurry said that India’s TKDL could be a good model for others and that WIPO was ready to facilitate international
collaboration for countries which, inspired by the Indian example, were interested in establishing their own TKDLs.
He cautioned however that there is no one-size-fits-all solution and that the Indian model might need to be adapted to the
specific situation of individual countries, in particular where a community’s traditional knowledge is held orally.
The WIPO Director General said they were in consultations with the Indian Government to "internationalize" the TKDL
making available the Indian Government’s TKDL experience and know-how to other countries which plan to create their
own TKDLs. He said "WIPO is prepared to assist beneficiary countries, should they so wish, to conclude access and nondisclosure agreements with international patent offices. Beneficiary countries would own and control access to their own
TKDLs.”
Page 17 of 52
The Director General of India’s Council of Scientific and Industrial Research (CSIR) Samir K. Brahmachari and the
Director of the TKDL V.K Gupta said India was willing to work with countries interested in similar models to protect their
traditional knowledge.
Mr. Brahmachari said the challenge for the New Delhi meeting and beyond was to ensure that the great treasures
represented in a nation’s traditional knowledge were used to serve future generations.
IT experts at technical liaison meeting
Leading technical experts drawn from IP offices in the EU and the European Commission get down to work at a liaison
meeting on technical cooperation held in Alicante on 14-15 march. The meeting included workshops on project
management and a review of the next group of Cooperation Fund software projects being planned in cooperation with IP
offices and users.
Page 18 of 52
“German day” hosted by OHIM
Some of the senior German IP professionals and representatives from the industry taking part in the 6th "German Day"
hosted by OHIM and organised in conjunction with the German Patents and Trade Marks Office on 4 March. The event
included a series of presentations on OHIM's activities, office practices, and future plans, and featured a number of lively
question and answer sessions.
Monthly statistical highlights* February 2011 compared to February 2010
2011
2010
Community trade mark applications received
8 428
7 902
Community trade mark applications published
7 644
9 258
Community trade marks registered (certificates issued)
7 143
6 950
Community trade mark renewal applications
1 729
1 913
Registered Community designs received
6 547
5 957
Registered Community designs published
6 287
6 264
* Statistical data for the month in course is not definitive. Figures may vary slightly after
Page 19 of 52
Luxembourg Case Law
A: Court of Justice: Appeals from decisions of the Court, Article 63 CTMR
A-1: Court of Justice: Judgments and Orders
ENERCON: C-204/10P, appeal from T-472/07; Board's case: R0959/2006-4; OD case: B 763 666; CTMA No:
3 326 031; Order delivered on 23/11/2010 ; Language of the case: EN (Action dismissed as manifestly
inadmissible; GC stands; Office's practice confirmed)
Keywords: Community Trade mark; Opposition: likelihood of confusion (LOC): comparison of marks.
FACTS: Enercon GmbH applied to register as a CTM the word “ENERCON” with regard to goods in classes 16, 18, 24,
25, 28 and 32. Hasbro Inc. filed an opposition based on the earlier CTM “TRANSFORMERS ENERGON” for goods in
classes 16, 18, 24, 25, 28, 30 and 32. The grounds were those laid down in Article 8(1)(b) and 8(4) CTMR.
CTM application
ENERCON
Earlier CTM
TRANSFORMERS ENERGON
The Opposition Division upheld the opposition.
On appeal the Board dismissed the appeal.
The action before the GC was dismissed.
Before the CJ the opponent claims that the General Court failed to recognise the errors in the decision of the Board,
based, as it was, on the illegitimate decision of the Opposition Division. In particular there was a complete failure to
recognise (a) that the Medion judgment concerned an exceptional situation in which the usual rule that the average
consumer normally perceives a trade mark as a matter of overall impression is displaced but (b) no circumstances existed
in this case sufficient to justify such an exceptional approach. No part of the earlier mark in this case had an "independent
distinctive role". Furthermore the opponent submits that, due to the incorrect application of a Medion type principle at the
earlier stage of the assessment of similarity, no proper consideration was given to the global assessment of the likelihood
of confusion.
SUBSTANCE: The appeal is dismissed partly as unfounded and partly as manifestly inadmissible.
DSBW: C-156/10P (appeal from T-034/07); Board's case: R1330/2005-2; OD case: B 635 740; CTMA No: 2 852 143;
Order delivered on 15/12/2010 ; Language of the case: DE (Action dismissed as manifestly inadmissible; GC
stands; Office's practice confirmed)
Keywords: Community Trade mark: Opposition: likelihood of confusion: comparison of marks.
FACTS: Karen Goncharov, filed a CTMA for the word mark “DSBW” for services in classes 39, 41, 43 and 44. DSB filed
an opposition based on its earlier CTM “DSB” registered for services in various classes. It was based only on services in
classes 39, 41 and 42 and directed only against services in classes 39, 41 and 43. The grounds were those laid down in
Article 8(1)(b) CTMR.
Page 20 of 52
CTM Application
DSBW
Earlier CTM
DSB
The Opposition Division dismissed the opposition in its entirety. On appeal, the Board uphold the appeal and annulled the
OD’s decision. The Board decided that, overall, the relevant public would assume some economic link between DSB and
DSBW.
On appeal before the GJ dismissed the appeal in its entirety.
Before the CJ the applicant claims that the judgment of the GC should be set aside, because it infringes the provision on
the relative grounds for refusal of registration contained in Article 8(1)(b) CTMR. The General Court misapplied the
general principles concerning the assessment of the likelihood of confusion. In particular, it failed to take the
circumstances of the present case fully into account, by disregarding the fact that the marks at issue consist in acronyms.
The General Court bases its decision finally only on a general rule according to which the consumer usually attaches
greater weight to the first part of words. Thus, the difference in the form of the letter 'W' in the contested mark is not
sufficient to eliminate the visual and aural similarity. The General Court thereby ignored the fact that the marks in conflict
are not words, but acronyms. The reasoning of the judgment shows that the General Court failed to undertake a
comprehensive examination of the likelihood of confusion, relying instead only on a general rule, which is moreover not
applicable at all to the present case. The consumer is in fact accustomed in the case of acronyms to directing his
attention specifically to each single letter. General rules concerning word marks consisting in words may not therefore be
applied without hesitation to word marks consisting in acronyms.
SUBSTANCE: The CJ rejects the appeal as inadmissible.
A-2: Court of Justice: Developments in pending cases
Mercury: C-532/10P (appeal from T-106/09); Board's case: R1266/2007-1; OD case: B 942 757; CTMA No: 4 290
227; Office response filed on 01/02/2011 ; Language of the case: EN
Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion: goods and
services; signs
FACTS: Archer Maclean applied to register as a CTM the figurative mark shown below for goods in classes 9, 16 and 28.
adp Gauselmann GmbH filed an opposition based on the earlier German trade mark registration of the word mark
"Merkur" for goods and services in classes 6, 9, 28, 35, 37, 41 and 42. The grounds were those laid down in Article
8(1)(b) CTMR.
CTM application
Earlier German TM
Merkur
The Opposition Division dismissed the opposition.
On appeal, the Board dismissed the appeal.
Before the General Court, the opponent claimed infringement of Article 8(1)(b) CTMR as the Board wrongly concluded
that there were no visual, phonetic or conceptual identity similarities between the trade marks concerned, as well as that
there was no identity of goods for classes 9 and 28, and therefore no likelihood of confusion between the trade marks
concerned.
Page 21 of 52
The appeal before the GC was dismissed.
The applicant now appeals before the CJ.
Budweiser: C-482/09; Opinion of the Advocate General of 03/02/2011 ; Language of the case: EN
Keywords: Invalidity: Acquiescence
FACTS: According to the order for reference, Bud!jovický Budvar, národní podnik (BB) and Anheuser-Busch Inc. (AB)
first became active in the British market in 1973 and 1974 respectively. They both distribute beer under a trade mark that
consists of or includes the word ‘Budweiser’. In November 1976 BB applied for the trade mark ‘Bud’. AB filed an
opposition.
In 1979 AB sued BB for passing off, seeking an injunction to prohibit BB from using the word ‘Budweiser’. BB
counterclaimed for an injunction to prohibit AB from passing off by using the word ‘Budweiser’. During those proceedings,
the trade mark opposition proceedings were stayed. Both claim and counterclaim failed, however, since the courts
decided that neither side had made a false representation: the mark and the name had a dual reputation.
On 11 December 1979 AB applied to register the word ‘Budweiser’ for ‘beer, ale and porter’. BB opposed. On 28 June
1989 BB made a cross-application to register ‘Budweiser’, which AB opposed.
In February 2000 the Court of Appeal dismissed both oppositions, so that both sides were able to register ‘Budweiser’.
Following that decision, each party was entered in the register of trade marks on 19 May 2000 as proprietor of the word
mark ‘Budweiser’.
The consequence was that BB had two registrations, one for ‘Bud’ (application date November 1976) and one for
‘Budweiser’ (application date July 1989). AB had a registration ‘Budweiser’ (application date December 1979).
On 18 May 2005 , in other words four years and 364 days after the registration of the parties’ ‘Budweiser’ marks, AB
applied to the Trade Marks Registry for a declaration of the invalidity of the ‘Budweiser’ mark registered for BB. The
following grounds were put forward for the application: Both sides’ trade marks had been put on the register on the same
date, but AB’s was an ‘earlier trade mark’ by virtue of Article 4(2): its date of application was earlier, and that was what
mattered; the marks and the goods were identical, so that by virtue of Article 4(1)(a) BB’s mark was liable to be declared
invalid; there was no question of acquiescence because the five-year period provided for in Article 9 was not over.
The Trade Marks Registry took the view that AB was not precluded from making the application for a declaration of
invalidity, as the five-year period of acquiescence laid down in Article 9(1) of Directive 89/104 started to run from the date
of registration of the later mark. The registry therefore allowed the application for a declaration of invalidity.
BB appealed against that decision to the High Court of Justice of England and Wales . That court held in particular that
for the purposes of section 48 of the Trade Marks Act 1994 the proprietor of the earlier mark, that is, AB, had to
acquiesce in the use of a registered mark, not for example the use of a non-registered mark, registration of which had
been applied for but not carried out. Since AB had not acquiesced in the use, the court allowed the application for a
declaration of invalidity.
BB thereupon appealed to the Court of Appeal. That court expresses doubts as to the meaning of the term ‘acquiescence’
for the purposes of Article 9, with respect in particular to the question of the time from which acquiescence by the
proprietor of an earlier mark in the use of a later mark starts.
QUESTIONS for a Preliminary Ruling:
(1)
What is meant by “acquiesced” in Article 9(1) of Directive 89/104 and in particular:
(a)
is “acquiesced” a Community law concept or is it open to the national court to apply national rules as to
acquiescence (including delay or long-established honest concurrent use)?
Page 22 of 52
(b)
if “acquiesced” is a Community law concept can the proprietor of a trade mark be held to have acquiesced in a long
and well- established honest use of an identical mark by another when he has long known of that use but has been
unable to prevent it?
(c)
in any case, is it necessary that the proprietor of a trade mark should have his trade mark registered before he can
begin to “acquiesce” in the use by another of (i) an identical or (ii) a confusingly similar mark?
(2)
When does the period of “five successive years” commence and in particular, can it commence (and if so can it
expire) before the proprietor of the earlier trade mark obtains actual registration of his mark; and if so what conditions are
necessary to set time running?
(3)
Does Article 4(1)(a) of Directive 89/104 apply so as to enable the proprietor of an earlier mark to prevail even
where there has been a long period of honest concurrent use of two identical trade marks for identical goods so that the
guarantee of origin of the earlier mark does not mean the mark signifies the goods of the proprietor of the earlier and
none other but instead signifies his goods or the goods of the other user?’
PROPOSED ANSWERS:
The unrestricted application of Article 4(1)(a) to the case in the main proceedings – would have the result of extending the
directive’s temporal scope back to 1979, the year of AB’s application for registration of the mark ‘Budweiser’. The
legislature cannot, however, be supposed to have intended to cover a situation which occurred in 1979.
It must be concluded that neither the retroactive application of Article 4(1)(a) of Directive 89/104 nor the application of that
provision from the date of entry into force of the directive is possible in the main proceedings. It is thus unnecessary to
answer the individual questions referred. The Court ought therefore to give the following answer:
(1)
Article 4(1)(a) of First Council Directive 89/104/ EEC of 21 December 1988 to approximate the laws of the Member
States relating to trade marks is temporally not applicable to a situation such as that at issue in the main proceedings.
(2)
Consequently, in a case such as that at issue in the main proceedings, it must be decided in accordance with
national law whether the proprietor of an earlier trade mark may apply for a mark to be refused registration or, if
registered, to be declared invalid even where there has been long-established honest concurrent use of those marks for
identical goods.
Should the Court, contrary to the view put forward here, assume that Article 4(1)(a) of Directive 89/104 is temporally
applicable in a situation such as that at issue in the main proceedings, the questions referred would have to be answered
as follows:
– The concept of ‘acquiescence’ within the meaning of Article 9(1) of the directive is an independent concept of European
Union law which must be given a uniform interpretation in all Member States. It presumes that it is legally possible for the
proprietor of an earlier trade mark to oppose the use of a later registered mark which because of its identity with or
similarity to the earlier mark and the identity or similarity of the goods or services covered by the two marks entails a risk
of confusion on the part of the public.
– The proprietor of an earlier mark does not have to have it registered before his ‘acquiescence’ in the use of a later mark
by another person in the same Member State can start. The period of acquiescence laid down in Article 9(1) of the
directive starts running from the date on which the proprietor of the earlier mark becomes aware of the use of a later
registered mark in that Member State. The period of acquiescence can thus start on the date of registration at the earliest,
if the later mark is used from that date and the proprietor is aware of that use. The period of acquiescence can start
running, and may also end, before the proprietor of the earlier mark has had his mark registered.
– Article 4(1)(a) of the directive precludes in principle the long-established honest concurrent use of two identical marks
covering identical goods by two different proprietors of the marks.
Page 23 of 52
PORTO ALEGRE : C-541/10P (appeal from T-369/09); Board's case: R1012/2008-1; CD case: 2255C; CTMA No: 4
009 908; Office response filed on 03/02/2011 ; Language of the case: PT
Keywords: Community trade mark: Invalidity: Relative grounds for refusal: likelihood of confusion: signs
FACTS: Sociedade Quinta do Portal SA is the proprietor of a CTM for the words “ PORTO ALEGRE ”, registered for
goods in class 33. Vallegre-Vinhos do Porto SA filed an invalidity request based on, among others, an earlier Portuguese
trade mark for the words “VISTA ALEGRE” registered for goods in class 33. The grounds were those laid down in Article
53(1)(a) CTMR in combination with Article 8(1)(b) CTMR.
CTM registration
PORTO ALEGRE
Earlier Portuguese mark
VISTA ALEGRE
The Cancellation Division upheld the request and declared the CTM invalid.
The proprietor appeals before the GC claiming that the Board infringed Article 8(1)(b) CTMR.
Before the General Court, the applicant claimed infringement of Article 8(1)(b) CTMR in so far as the Board
misinterpreted that provision and, consequently, wrongly held that there was a likelihood of confusion between the marks
in question.
The applicant now appeals before the CJ.
ROI ANALYZER: C - 563/10P (appeal from T-233/08); Board's case: R1525/2006-4; CTMA No: 4 866 042; Office
response filed on 07/02/2011 ; Language of the case: DE
Keywords: Community trade mark: Examination: Absolute grounds for refusal: descriptiveness, distinctiveness
FACTS: MPDV Mikrolab GmbH, Mikroprozessordatenverarbeitung und Mikroprozessorlabor applied to register as a CTM
the expression “ROI ANALYZER” for goods and services in classes 9, 35 and 42. The examiner partly refused the
registration on the basis of Article 7(1)(b) and (c), and (2) CTMR.
Before the General Court, the applicant claimed infringement of Article 7(1)(b) and (c) CTMR in that the trade mark
applied for does not lack distinctive character and no requirement of availability exists for it.
The GC dismissed the appeal.
The applicant has appealed before the CJ.
Acumed: C-535/10P (appeal from T-575/08); Board's case: R1636/2007-2; OD case: B 1 000 548; CTMA No: 4 493
136; Office response filed on 18/02/2011 ; Language of the case: DE
Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion: signs;
goods and services
Page 24 of 52
FACTS: 4care AG applied to register as a CTM thefigurative mark shown below for goods in class 5. Laboratorios
Diafarm, SA filed an opposition based on the earlier Spanish word mark AQUAMED ACTIVE registered for goods in
Class 5. The grounds were those laid down in Article 8(1)(b).
CTM application
Earlier Spanish TM
AQUAMED ACTIVE
Before the General Court, the applicant claims infringement of Article 8(1)(b) CTMR since there is no likelihood of
confusion between the marks at issue.
The applicant has appealed before the CJ.
[guitar headstock]: C-546/10P (appeal from T-458/08); Board's case: R0078/2007-4; CTMA No: 2 639 821; Office
Keywords: Community trade mark: Examination: Absolute grounds for refusal: distinctiveness-3D
FACTS: Hans-Peter Wilfer applied to register as a CTM the figurative mark shown below for goods in class 9 and 15. The
examiner partly refused the registration on the basis of Article 7(1)(b) CTMR.
CTM application
Before the General Court, the applicant claimed infringement of Article 7(1)(b) CTMR; infringement of the principle of
examination of the facts by the Office of its own motion, including disregard for the rules concerning the burden of proof
under Article 74(1) CTMR; infringement of the requirement to state reasons for the purposes of the first sentence of
Article 73 CTMR; infringement of the principle of equal treatment.
Page 25 of 52
Before the CJ the applicant raises four pleas in support of the appeal.
Firstly, that the Court did not take documents into consideration, which had first been submitted with the application. The
appellant considers that they should have been taken into consideration as they were merely additional to the existing
application.
Secondly, the applicant alleges that the Court breached Article 7(1)(b) CTMR in failing to take account of the fact that, in
the case of three-dimensional product form marks, a distinction must be made between, on the one hand, mass products
and, on the other hand, special products. Special products are characterised by the fact that the relevant public generally
considers that they contain parts which serve the purpose of indicating origin. Accordingly, the demonstration of
distinctiveness is not subject to special requirements. In this context, with regard to such product parts, a minimum
degree of distinctive character is sufficient. Furthermore, the issue of distinctiveness was not addressed taking account of
the knowledge of the relevant public (professional or hobby musicians), who are aware of that it is common practice that
string musical instruments, including violins, such as a Stradivari, are labelled by a particular form of headstock. The
Court also did not take account of the fact that a minimum degree of distinctive character is sufficient in the case of a
figurative mark, which only reproduces a part of the goods, which is commonly used to label the goods, such as the
headstock of a guitar.
Thirdly, the applicant contends that the GC breached the principle of examination of the facts by OHIM of its own motion
under Article 74(1) CTMR in misinterpreting the general rule/exception relationship, in relation to the question as to the
extent to which the headstock can indicate the origin of a guitar.
Finally, the applicant claims that the GC also breached the principle of equal treatment by not taking account of the fact
that other Community and national trade marks also exist, which likewise reproduce only the headstock of a guitar.
C: General Court: Judgments and Orders on appeals against decisions of the OHIM, Article 63 CTMR
C-1: General Court: Judgments and Orders
GOLDEN ELEPHANT: T-303/08; Board's case: R0889/2007-1; CD case: 1304 C; CTMA No: 241 810; Judgment of
09/12/2010 ; Language of the case: EN (Action dismissed; Board and Office's practice confirmed)
Keywords: Community trade mark: Invalidity: Relative grounds for refusal: earlier non-registered trade mark
FACTS: Request for invalidity was filed against the figurative Community mark ‘Golden Elephant Brand’, registered for
goods in Class 30, namely ‘rice’. The applicant for invalidity based it on Article 53(1)(c) and Article 8(4) CTMR, claiming
that the rules on passing-off gave it the right, in the United Kingdom, to prohibit use of the contested CTM, on the basis of
the non-registered figurative mark ‘GOLDEN ELEPHANT’, which it claimed to have been using in the United Kingdom
since 1988 for rice.
Contested CTM
Page 26 of 52
Earlier sign
The Cancellation Division rejected the application for a declaration of invalidity. It found, in particular, that the invalidity
applicant had not established that the relevant public had established ‘goodwill’ to the goods associated with the earlier
mark.
The applicant for invalidity filed an appeal against the CD’s decision.
The Board of Appeal upheld the appeal and annulled the contested decision. It took the view that the conditions of Article
8(4) CTMR were met and declared the contested CTM invalid on that basis.
The applicant filed an action at the General Court.
SUBSTANCE: The GC dismisses the action.
As to Article 8(4) CTMR, the GC holds that in the present case, the law of the Member State which is applicable to the
non-registered national trade mark is the UK Trade Marks Act 1994, section 5(4) (para.92). In order to found an action
under the UK law of passing-off, the applicant seeking a declaration of invalidity must establish, first, that it has acquired
goodwill; second, that there is a misrepresentation on the part of the CTM proprietor; and, third, that damage or likelihood
of damage is caused to that goodwill (paras.92 and 93).
Then, the GC examines each of those three conditions (goodwill, paras.96 to 122; misrepresentation, paras.123 to 144;
damage, paras.145 to 150).
As concerns goodwill, the GC points out that the sales of rice of the invalidity applicant were above that de minimis
threshold since it was not a case of occasional sales of very small quantities. The invalidity applicant had sold rice
consistently under the earlier mark in the UK since 1988, that is to say, for a period of eight years prior to the date on
which the applicant filed the application for the contested CTM. The quantity of rice sold – between 42 and 84 tonnes per
year from 1988 to 1996 – cannot be regarded as totally insignificant. The mere fact that that market share was very small
in comparison with the total amount of rice imported into the UK is not sufficient to justify a finding that those rice sales
were below the de minimis threshold. It endorses that even small businesses can have goodwill (paras.112 to 115).
GAKIC: T-198/10; Board's case: R1621/2008-1; CD case: 2322C; CTMA No: 4 895 488; Order delivered on
12/01/2011 ; Language of the case: EN (Case closed; Board decision stands)
Keywords: Community trade mark: Invalidity: Absolute grounds for refusal: distinctiveness; Bad faith
FACTS: Foreign Supplement Trademark Ltd is the proprietor of a CTM for the word “GAKIC” registered for goods in
classes 5, 30 and 32. Maximuscle Ltd filed a request for invalidity on absolute grounds. The grounds were those laid
down in Article 51(1)(a) and Article 7(1)(b) and (c) CTMR.
The Cancellation Division dismissed the invalidity request.
Before the General Court, the applicant claims infringement of Article 7(1)(b) and (c) CTMR, as the Board of Appeal: (i)
repeated the error of the Cancellation Division and wrongly considered the case as if made under Article 7(1)(d), (ii)
wrongly found significance in the fact that glycine-alpha-ketoisocaproic acid, of which GAKIC is an abbreviated form, is a
patented compound in the United States, (iii) failed to consider material after the registration date, on the basis that it had
no probative value, (iv) failed to consider evidence on the basis that it related to a website connected with the applicant,
(v) had an inconsistent approach, given the finding that GAKIC was an abbreviated form of glycine-alpha-ketoisocaproic
acid, (vi) mischaracterised evidence and failed to give proper weight to evidence showing that "GAKIC" was the natural
abbreviation of glycine [(G)]-alpha [(A)]-ketoisocaproic [(KIC)] acid, and (vii) wrongly found trade mark significance in the
capitalisation of the words "GAKIC".
SUBSTANCE: The appeal has been withdrawn and the case has been closed.
Page 27 of 52
Oyster: T-437/09; Board's case: R1367/2008-1; OD case: B 836 355; CTMA No: 3 791 555; Judgment of 02/02/2011
; Language of the case: EN (Action dismissed; Board and Office's practice confirmed)
Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion: signs
FACTS: Oyster Cosmetics S.p.A. applied to register as a CTM the figurative mark shown below for goods in class 3.
Kadabell GmbH & Co. KG filed an opposition based on the earlier CTM shown below for goods in class 3. The grounds
were those laid down in Article 8(1)(b) CTMR.
CTM application
Earlier CTM
The Opposition Division partly upheld the opposition.
Before the General Court, the applicant claims that the Board infringed Article 8(1)(b) CTMR since there is no likelihood of
confusion between the signs at issue.
SUBSTANCE: The appeal is dismissed.
It is common ground between the parties that the relevant public is made up, in the territory of the whole EU, of the
general public. Those people will have an average level of attention and circumspection (para.23).
The applicant’s submissions focus exclusively on the Board’s analysis of the similarity of the marks at issue.
In respect of the visual similarity between the marks, the GC recalled the case-law about the assessment of the similarity
between complex marks and concluded, that the Board was entitled to undertake a visual comparison of the marks at
issue solely on the basis of the word elements ‘oystra’ and ‘oyster’. The GC found that the Board had correctly concluded
that those marks were visually similar, since although those marks included different word and figurative elements, the
most prominent elements were the words ‘oystra’ and ‘oyster’, both of which are written in bold black letters in the centre
of the marks. And, whilst it is true that the letters ‘r’ and ‘a’ and the letters ‘e’ and ‘r’ of those word elements are different in
nature or position, according to the case-law the consumer normally attaches more importance to the first part of words.
In the present case, the two trade marks share the first four letters ‘oyst’ (paras.23-39).
Therefore, the GC concluded that the applicant had failed to show that the Board erred in finding that the marks at issue
were visually similar (para.40).
Page 28 of 52
From a phonetic perspective, the GC considered that the “non dominant” word elements in the marks like ‘kadus’, ‘auto
stop protection’ and cosmetics’ are not likely to hold the attention of the relevant public because of the size used and/or
position within the marks. Therefore, the GC estimated that it is unlikely that these elements would be pronounced by the
consumer when referring to the conflicting marks (para.43-44).
Furthermore, the GC recalled that according to the case-law, a trade mark which includes several words will generally be
abbreviated orally to something easier to pronounce and therefore, it will be easier to refer to the earlier mark as ‘oystra’
and the mark applied for as ‘oyster’. Accordingly, the applicant cannot claim that the Board erred in undertaking a
phonetic comparison solely on the basis of the word elements ‘oystra’ and ‘oyster’ and in failing to take into account both
the phonetic differences between all of the word elements other than ‘oyst’, and the importance of the word element
‘kadus’ (paras.45-46).
The GC concluded that inasmuch as the applicant did not dispute that the first syllable ‘oys’ of the word elements ‘oystra’
and ‘oyster’ is identical and that the second syllables ‘tra’ and ‘ter’ of those word elements are similar, it has not been
shown that the Board erred in finding a degree of phonetic similarity between the marks at issue (para.47).
Conceptually, the GC noted that since the first four letters of the word ‘oystra’ are identical to the first four letters of the
word ‘oyster’ and the word ‘oyster’ is the only word in the English language which starts with the letters ‘o’, ‘y’, ‘s’ and ‘t’, it
must be considered, as did the Board, that the word element ‘oystra’ will, for the English-speaking public, call to mind that
word (para.50).
The Court does not find that the Board of Appeal erred in concluding that the marks at issue were visually and
phonetically similar and that the English-speaking public might find those marks conceptually similar (para.51).
[Yellow and grey]: T-299/09; Board's case: R1330/2008-1; CTMA No: 6 703 581
[Yellow and silver]: T-300/09; Board's case: R1329/2008-1; CTMA No: 6 703 565
Judgment of 03/02/2011 ; Language of the case: DE (Action dismissed; Board and Office's practice confirmed)
Keywords: Community trade mark: Examination: Absolute grounds for refusal: distinctiveness-colours
FACTS in: Gühring OHG ( Albstadt , Germany ) filed two CTM for the following colour marks for goods in class 7:
T-299/09
T-300/09
yellow and grey
yellow and silver
Both applications were rejected on grounds that they lacked distinctive character [7(1)(b) CTMR]. On appeal the Board of
Appeal confirmed the decisions of the examiner and dismissed the appeals. Before the General Court the applicant
claimed that the Board infringed Article 7(1)(b) CTMR, because the trade marks applied for have a distinctive character.
In addition, it claimed infringement of procedural law, in particular of Articles 75 and 76(1) CTMR.
SUBSTANCE: Both appeals are dismissed
1. Third plea: the alleged infringement of Article 75 CTMR: The infringement of the obligation to state reasons.
The GC concluded that the Board did not infringe its obligation to state reasons as it held that the description of the trade
marks did not meet the requirements established by the case law, according to which a graphical representation of one or
more colours that are represented in an abstract way and without contours, must be done by associating the colours in a
Page 29 of 52
predetermined and constant way. It noticed that the order in which the colours were applied was known but that the ratio
of each colour was not stated with precision and could vary (para.21).
The GC also added that the Board stated that, even assuming that the ratio between the colours is fixed, the marks
applied for were devoid of any distinctive character as the colours were not usual and would be seen as a quality of the of
the goods (para. 22).
Finally, as the Board stated that the registration of the colour marks in question would contravene the public interest, the
GC concluded that the reasoning of the Board was sufficient (para.23). The third plea is therefore rejected.
2. First Plea: the alleged infringement of Article 76(1) CTMR.
The GC concluded that the Board was perfectly able, on the basis of the file and without any further investigation or
hearing to rule on whether the marks applied for were devoid of any distinctive character for the goods in question
(para.38). The first plea is therefore rejected.
3. Second plea: the alleged infringement of Article 7(1)(b) CTMR:
The applicant maintains that it was wrong that the Board found that the combinations of colours in question were devoid
of any distinctive character for the listed products (para. 45).
The GC concluded, as to the perception of signs as a whole, that it is clear from the foregoing that the combinations
broom- yellow and silver gray and ocher- yellow and silver gray merge with the usual appearance of drills and therefore
do not contain elements that enable the relevant public to perceive them as identifiers of commercial origin (para.73).
Therefore the GC concluded that the Board was right in deciding that the CTM applied for was devoid of distinctive
character. The second plea is therefore rejected.
LINEAS AEREAS DEL MEDITERRANEO LAM: T-194/09; Board's case: R0107/2008-4; OD case: B 971 871; CTMA
No: 4 488 061; Judgment of 08/02/2011 ; Language of the case: ES (Action dismissed; Board and Office's practice
confirmed)
FACTS: Air Nostrum, Líneas Aéreas del Mediterráneo, SA applied to register as a CTM the Word mark "LÍNEAS
AÉREAS DEL MEDITERRÁNEO LAM" for services in class 39. Lan Airlines, SA filed an opposition based on the earlier
CTM " LAN " for services in classes 35, 39 and 43; and the Community figurative mark shown below for services in class
39. The grounds were those laid down in Article 8(1)(b) CTMR.
CTM application
Earlier CTMs
LAN
LÍNEAS AÉREAS DEL MEDITERRÁNEO LAM
Page 30 of 52
Before the General Court, the opponent claims incorrect application of Article 8(1)(b).
With regard, first, to determining the relevant territory, the applicant challenges the Board’s finding that ‘the relevant
perception in this case is that of the public of the European Community’. In the applicant’s submission, the Board should
have taken into consideration in this case only the perception of the Spanish consumer (p. 18). The Court replies that,
although the existence of a likelihood of confusion need be established only on the part of the consumer in one single
Member State for a CTM application to be refused, it should be noted that that consideration has no bearing on the issue
of determining the relevant public (p. 19).
With regard, second, to the level of attention of the relevant public, the applicant and the Court agree with the Board in
that the relevant public is made up of average consumers who are reasonably well informed and reasonably observant
and circumspect, who pay a normal level of attention (p. 20-22).
The services in class 39 are identical.
As regards the comparison of signs, the Court, first applicant claims that the Board failed to note that the element ‘lam’
was dominant in the overall impression produced by the mark applied for, since the element ‘lineas aereas del
mediterraneo’, the meaning of which will be understood by the Spanish consumer, is descriptive of the services in
question (p. 29).
The Court notes that, although as a general rule the public will not consider a descriptive element forming part of a mark
as the distinctive and dominant element in the overall impression produced by that mark, the fact remains that the low
level of distinctiveness of an element of a mark does not necessarily mean, when its size or its position in the sign are
taken into account, that that element is negligible in the overall impression produced by that mark (p. 30).
In this case, it is common ground, that the element ‘lineas aereas del mediterraneo’ is a description of some of the
transport services covered by the mark applied for as regards the Spanish public (p. 31), however, that finding alone does
not lead to the conclusion that that element is negligible in the overall impression produced by the mark. This is because,
first, within the mark it is significantly larger than the element ‘lam’ and, second, it is immediately perceptible because of
its position at the beginning of that sign (p. 32). In addition, as regards in particular the Spanish-speaking consumers, it is
noted that since the Spanish consumer will perceive the term ‘lam’ as being the acronym of the element ‘lineas aereas del
mediterraneo’, it is likely that he will retain that element, the more so when considering that marks covering air transport
services often contain word elements that are descriptive of those services and of the territories and, as a consequence,
that consumer is likely to understand that the element ‘lineas aereas del mediterraneo’ identifies the commercial origin of
the transport services provided by a specific airline (p. 33). It is found that the element ‘lineas aereas del mediterraneo’
cannot be considered to be negligible in the minds of the relevant public, be they Spanish speakers or not (p. 34).
As regards possible similarities or differences between the signs in question, it should be observed first of all that, with
regard to the visual and phonetic aspects, the term ‘lam’, which is placed at the end of the mark applied for, and the term
‘lan’ in the earlier marks are similar. However, those similarities are offset by the fact that those marks, assessed overall,
differ both visually and phonetically (p. 40)
From the conceptual point of view, the Spanish-speaking consumer will understand the element ‘lineas aereas del
mediterraneo’ as referring to air transport services in the Mediterranean and he will establish a connection between that
element and the word element ‘lam’ which is its acronym (p. 42). Therefore, it is found that whilst, for that section of the
relevant public which does not have even a minimal knowledge of Spanish, there is no conceptual difference or similarity
between the marks at issue, that section of the relevant public which has even a minimal knowledge of Spanish will
perceive a difference between the marks in conflict (p. 43).
In the light of all the foregoing findings it must therefore be found that the signs at issue, assessed overall, are different (p.
44).
Bearing in mind the lack of similarity of the signs at issue the Board was right to find that in spite of the identical nature of
the services covered there was no likelihood of confusion on the part of the relevant public between the mark applied for
and the earlier marks (p. 47).
Page 31 of 52
That conclusion is not affected by the applicant’s argument that the Board failed to examine the reputation of the earlier
marks. The reputation of an earlier mark must be taken into account in the assessment of the likelihood of confusion,
once the similarity between the marks has been established, and not in order to establish such similarity. Since it has
been concluded, that there is no similarity between the signs at issue, the Board did not err in failing to examine the
possible reputation of the earlier marks (p. 48).
INSULATE FOR LIFE : T-157/08; Board's case: R0054/2008-2; CTMA No: 5 932 827; Judgment of 08/02/2011 ;
Language of the case: EN (Action dismissed; Board and Office's practice confirmed)
Keywords: Community trade mark: Examination: Absolute grounds for refusal: distinctiveness-slogan
FACTS: The applicant, Paroc Oy AB, filed on 04/05/2004, a first application (CTMA No 003814381) for registration of the
words ‘INSULATE FOR LIFE ’, in respect of goods in Classes 6, 17 and 19. The examiner rejected the application in
respect of all of the goods pursuant to Article 7(1)(b) and (c) CTMR. The Board of Appeal (R1256/2005-2) dismissed the
appeal based on Article 7(1)(b) and (c) CTMR. The applicant did not appeal the decision before the GC.
On 24/05/2007 , the applicant filed a second application (CTMA No 5 932 827) for registration of the words ‘INSULATE
FOR LIFE ’, firstly in respect of the same goods in Classes 6, 17 and 19 as in the first application, and secondly, in
respect of ‘Building construction; repair; installation services’ (Class 37).
The examiner refused the registration on the basis of Article 7(1)(b) and (2) CTMR.
Before the General Court, the applicant claims that the Board infringed article 7(1)(b) CTMR as the mark acquired the
minimum degree of distinctiveness required to be registered.
1. Admissibility
The GC recalled that the time-limit for bringing an action against the first decision expired without the applicant having
brought such an action; therefore it became final and its legality could no longer be challenged before the Court.
In relation to the second decision, the GC noted that the subject-matter of this dispute was largely the same as in the first
decision, insofar as, in both applications for registration, the applicant sought to have the word sign INSULATE FOR LIFE
registered as a CTM in respect of goods in Classes 6, 17 and 19. The only difference being that the second application
also covered services in Class 37. In that regard, the GC noted that those services, as a group that is homogenous and
distinct from that of the goods in Classes 6, 17 and 19, are capable of being the subject of separate assessment and
reasoning with a view to determining the registrability of the sign, and so the fact that the applicant expanded its
application for registration to include those services is not a new factor, within the meaning of the case-law, as compared
with the analogous assessment and reasoning relating to those goods, as set out in the first decision.
The GC considered that none of the arguments brought by the applicant added any new factual element to the
proceedings so that it was not capable of affecting the operative part of the contested decision and the grounds
constituting the essential basis thereof.
The GC concluded that, insofar as the contested decision refused to register the sign INSULATE FOR LIFE as a CTM in
respect of goods in Classes 6, 17 and 19 on the basis of Article 7(1)(b) CTMR, it amounted to a merely confirmatory
decision. In this regard, there was no need to examine whether the confirmatory nature of that decision also extends to
the application, in the first decision, of the ground for refusal provided for in Article 7(1)(c) CTMR, since reliance – which
has become final – on just one of the grounds listed in Article 7(1) of that regulation is sufficient to refuse registration.
Therefore the GC held that the action was inadmissible insofar as it is directed against those parts of the contested
decision which merely confirm the first decision.
2. Infringment of Article 7(1)(b) CTMR
Page 32 of 52
It was not disputed that the services in Class 37 are addressed both to a specialist professional public and to a lesser
extent, to the average consume with a command of English (para.48).
The GC confirmed that when combined in the word sign INSULATE FOR LIFE , the two components ‘insulate’ and ‘for
life’ will be immediately understood as meaning that an insulation activity is long lasting or that it lasts for a lifetime. That
sign therefore does not have an unusual or ambiguous character which can lead the relevant public to make an
association of a different kind.
The Court underlined that even as a laudatory or promotional slogan the sign is not sufficiently original or resonant to
require at least some interpretation, thought or analysis on the part of the relevant, which are capable of being marketed
by any undertaking active in the construction and insulation sector.
The Board was fully entitled to find that the sign INSULATE FOR LIFE was devoid of any distinctive character within the
meaning of Article 7(1)(b) CTMR for the services in Class 37 and there was no need to decide on whether that sign was
also descriptive of those services.
ALPHAREN: T-222/09; Board's case: R1897/2007-2; OD case: B 977 530; CTMA No: 4 320 297; Judgment of
09/02/2011 ; Language of the case: EN (Action upheld)
Keywords: Community trade mark: Appeal: right to be heard; Opposition: Relative grounds for refusal: likelihood
of confusion: goods
FACTS: INEOS Healthcare Ltd applied to register as a CTM the word mark "ALPHAREN", for goods in class 5. Teva
Pharmaceutical Industries Ltd filed an opposition based on the earlier Hungarian trade mark registration of the word mark
"ALPHA D3" for goods in class 5; Lithuanian trade mark registration of the word mark "ALPHA D3" for goods in class 5;
Latvian trade mark registration of the word mark "ALPHA D3" for goods in class 5 (all were for pharmaceutical preparation
for regulating calcium). The grounds were those laid down in Article 8(1)(b) CTMR.
CTM application
ALPHAREN
Earlier TMs
ALPHA D3
Before the General Court, the applicant claimed that the Board of Appeal failed to take account of the fact that the other
party to the proceedings before it had failed to adduce evidence of similarity between the respective goods; Infringement
of Article 75 CTMR and the right to be heard as the Board of Appeal wrongly based material parts of its decision on
evidence on which the applicant was not provided with an opportunity to present its comments; Infringement of Article 76
CTMR in proceedings relating to relative grounds for refusal of registration, failed to restrict itself to an examination of the
facts, evidence and arguments provided by the parties and the relief sought; Infringement of Article 8(1)(b) CTMR as the
Board of Appeal erred in relation to the identification of the relevant public and overall in its assessment of the likelihood
of confusions.
SUBSTANCE: The appeal is upheld.
For the assessment of the case, the Court groups the contested goods into three categories:
!
!
!
pharmaceutical and veterinary preparations containing magnesium iron hydroxy carbonate or hydrotalcite or
derivatives of these compounds (‘goods in category A’)
pharmaceutical and veterinary preparations for use in renal dialysis and in the treatment of renal diseases and
kidney ailments (goods in category B)
phosphate binders for use in the treatment of hyperphosphataemia (‘goods in category C’)
1. First plea: opposing party’s failure to adduce evidence of the similarity between the goods.
Page 33 of 52
The GC concluded that there is no obligation on the opposing party, in opposition proceedings, to adduce evidence on
the similarity of the goods at issue. It also follows that the applicant’s argument concerning the probative nature of a
patient information leaflet provided to OHIM by the opposing party is devoid of relevance in the context of this plea.
Consequently, the present plea must be rejected (para.22).
2. Second and third pleas in law, alleging infringement of Article 75 and 76 CTMR
In the present case, the Board referred to the results of its internet research. More specifically, it used the definition of
hyperphosphataemia, included in the specification of the goods in category C of the mark applied for, which it found in the
online dictionary of medical terms. It also searched on an American Government internet site devoted to clinical trials for
the therapeutic indications of magnesium iron hydroxy carbonate or hydrotalcite included in the goods in category A of the
mark applied for. Finally, it referred to information on the interaction of the goods at issue, showing that they are closely
related and that they are intended for patients suffering from kidney disease, found on the internet site of a company
distinct from the applicant but part of the same group. These facts are not disputed by OHIM (para.30).
Although the results of the research in question were taken from the internet sites, which are generally accessible sites,
that fact is not sufficient in the present case for it to be considered that well-known facts are involved. They are, in fact, a
description of pharmaceutical preparations and their therapeutic indications which, having regard to their highly technical
nature, cannot in any way be regarded as information constituting well-known facts (para.31).
Accordingly, by taking account of the results of the internet searches referred to the Board of Appeal infringed Article 74
CTMR since the facts revealed by its internet research to which it referred are not well-known facts (para.32).
The GC concluded however that the contested decision would not be annulled for the research done regarding the goods
in category B, as this information merely confirmed the conclusion of the Board on the similarity of the goods at issue
(para.35).
It follows from all the foregoing that the use by the Board of the results of its internet research is vitiated by error, so that
the third plea must be accepted to the extent that the Board of Appeal confirmed, in the contested decision, the refusal to
register the sign applied for in respect of the goods in categories A and C, and it must be rejected in respect of the goods
in category B, without it being necessary for the GC to rule on the second plea (para.37).
3. Fourth plea in law: infringement of Article 8(1)(b) CTMR as regards identification of the relevant public
The GC confirmed the existing case-law by stating that even in the case of medicinal products available only on
prescription, it cannot be excluded that the average consumer form part of the relevant public. Accordingly, the Board of
Appeal rightly held that the relevant public comprised both health professionals and average consumers (para.44).
It follows that the present plea must be rejected. In the light of all the foregoing, the contested decision must be annulled
as regards the goods in category A and the goods in category C (para.46).
YORMA'S: T-213/09; Board's case: R1879/2007-1; OD case: B 471 906; CTMA No: 2 048 205; Judgment of
15/02/2011 ; Language of the case: DE (Action dismissed; Board and Office's practice confirmed)
Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion: goods and
services
FACTS: Yorma's AG applied to register as a CTM the figurative mark shown below for services in classes 35 and 42.
Norma Lebensmittelfilialbetrieb GmbH & Co. KGfiled an opposition based on the earlier CTM “Norma” for goods in
Classes 3, 5, 8, 16, 18, 21, 25, 28, 29, 30, 31, 32, 33, 34, 35 and 36 and the commercial symbol 'NORMA' used in the
course of trade in Germany, as well as the figurative sign 'NORMA. The grounds were those laid down in Article 8(1)(b)
and 8(4) CTMR.
Page 34 of 52
CTM application
Earlier CTM and sign
NORMA,
On appeal, the Board upheld the appeal and rejected the contested CTMA.
Before the General Court, the applicant claims infringement of Article 8(1)(b) and (4) CTMR.
First plea: Infringement of Article 8(1)(b) CTMR
The relevant public
The definition of the relevant public used by the Board is not disputed by the applicant. It is the relevant public is made
up, in the territory of the whole EU, of both professionals and the average consumer. However, the level of attention of
the public is disputed (para.16). The applicant disputes that the level of attentions is low even in respect of everyday
goods. The GC concluded that the Board, in saying that the level of attention of the relevant public in respect of the lowpriced everyday goods was not high, referred to a normal level of attention of the public, and not to a low level (para.24).
The comparison of the goods and services
The GC concluded that for the services in class 35 of the CTM applied for namely ‘retail services’, there was a certain
degree of similarity to the goods and services of the earlier mark (para.44) As regards the services ‘catering for guests’ in
class 42 of the CTM applied for, the GC concluded that the Board was right to consider that they were similar to the
goods and services of the earlier right due to their complementarity (para.46).
As regards the services ‘accommodation for guests’ in class 42 of the CTM applied for, the GC concluded that the Board
was right in considering that they were similar to a certain degree with ‘real estate rental’ in Class 36 of the earlier right
(para.48).
Overall, the GC concluded that there was a certain degree of similarity between the services covered by the CTM applied
for and the services covered by the earlier mark (Para.55).
The comparison of the signs
The GC concluded that, given the visual and the phonetical similarities, the Board was correct in finding that overall the
signs were similar (para.86).
The likelihood of confusion
In this case, given the similarity of the of the goods and services at issue and the similarity of the marks at issue, the
Board was correct in finding that there was a likelihood of confusion between those marks (para.88).
Page 35 of 52
F1-LIVE: T-10/09; Board's case: R0007/2008-1; OD case: B 836 249; CTMA No: 3 778 685; Judgment of 17/02/2011
Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion, reputation
FACTS: Racing - Live SA applied to register as a CTM the figurative mark shown below for goods and services in classes
16, 38 and 41. Formula One Licensing BV filed an opposition based on various national, Community and International
trade marks consisting of or including “F1” for goods and services in classes 16, 38 and 41. The grounds were those laid
down in Article 8(1)(b) and 8(5) CTMR.
CTM application
Earlier trade marks
F1
The Opposition Division upheld the opposition and rejected the CTMA.
On appeal, the Board annulled the contested decision, rejected the opposition and allowed the Community trade mark
application to proceed.
Before the General Court, the opponent claimed infringement of Article 8(1)(b) of Council Regulation 40/94 as the Board
of Appeal wrongly assessed that there was no likelihood of confusion between the trade marks concerned; infringement
of Article 8(5) of Council Regulation 40/94 as the Board of Appeal failed to find that use of the Community trade mark
concerned would without due cause take unfair advantage of, and be detrimental to, the distinctive character or the
repute of the applicant's earlier trade marks.
The first plea: infringement of Article 8(1)(b) of Regulation No 40/94
The relevant public is the average consumer in the European Union (p. 27). It is not disputed that the goods and services
are partly identical and partly similar (p. 28).
The earlier marks on which the opposition is based are the F1 Formula 1 logotype (the Community figurative trade mark)
and the national and international word marks F1 (p. 35). In the contested decision, the Board of Appeal found, first, that
the relevant public would perceive the combination of the letter ‘F’ and the numeral ‘1’ as an abbreviation of ‘Formula
One’, which is the commonly used designation of a category of racing car and, by extension, of races involving such cars.
Secondly, it found that the relevant public may perceive the ‘F1’ element of the F1 Formula 1 logotype as the trade mark
that the applicant uses in relation to its commercial activities in the field of Formula 1 motor racing. The Board of Appeal
inferred from this that it was necessary to distinguish between the ‘F1’ element as a word (a simple combination of a letter
and a numeral) and the sign F1 as a logotype (p. 38).
First, it is clear from the evidence in the file that, over the past 10 years, the applicant has promoted only the F1 Formula
1 logotype and that, when granting licences, it has emphasised that logotype by issuing guidelines and design
instructions to ensure consistent use of the marks (p. 40). However, it should be noted that the applicant has not imposed
rules regarding the use of the ‘F1’ element in forms other than the F1 Formula 1 logotype (p. 42).
Secondly, it is clear from the evidence submitted by the applicant that the public at large are not unaware that ‘F1’ is the
common abbreviation of ‘Formula 1’, which designates a category of racing car and, by extension, races involving such
cars. Furthermore, ‘Formula 1’ is used to designate, in generic terms, the sport of motor racing, which the public will not
Page 36 of 52
specifically associate with races organised by the group to which the applicant belongs, but rather with the top-end
category of motor racing in general. Indeed, there is no other appropriate word or term to designate that type of sport (p.
43). The expression ‘Formula 1’ is commonly used in everyday language to designate a category of racing car and, by
extension, races involving such cars, and that ‘F1’ is the familiar abbreviation of that term (p. 44).
In the light of those considerations and of the evidence submitted, it must be held that the relevant public will not perceive
the ‘F1’ element in the mark applied for as a distinctive element, but as an element with a descriptive function (p. 49).
–
The comparison of the mark applied for and the earlier national and international word marks “F1”
There is some degree of similarity between the signs at issue because of the ‘F1’ element common to all of them.
Nonetheless, they differ visually in length, and by virtue of the presence in the mark applied for of the word ‘LIVE’ and the
fact that the mark applied for contains a figurative element (p. 54). From a phonetic point of view, it should be observed
that the mark applied for consists of two words and the earlier marks only one. The addition of a striking extra word in the
mark applied for counterbalances, to some extent, the common element ‘F1’. Nevertheless, there is some degree of
similarity from a phonetic point of view (p. 55). From a conceptual point of view, it should be noted that the earlier marks
designate a specific category of racing car – Formula 1 cars – and can also be perceived as implicitly referring to Formula
1 races. The mark applied for carries the same message, but the addition of the word ‘LIVE’, which suggests the reporting
or broadcasting of an event in ‘real time’, makes it conceptually richer than the earlier marks. As a consequence, although
the common word element ‘F1’ makes the signs at issue to some extent conceptually similar, the degree of similarity
remains weak (p. 56).
The Court concludes by holding that since consumers will not connect the ‘F1’ element in the mark applied for with the
applicant, because the only sign that they have learned to associate with the applicant is the F1 Formula 1 logotype, and
not the sign F1 in standard typeset, and since consumers will regard ‘F1’ in ordinary typeset as an abbreviation of
‘Formula 1’ – that is to say, as a description – there is no likelihood of confusion between the marks at issue.
- The comparison of the mark applied for and the F1 Formula 1 logotype, the earlier Community figurative mark
There are obvious differences, as regards the general layout, between the mark applied for and the F1 Formula 1
logotype, the earlier Community figurative mark. It must therefore be found that there is no visual similarity between the
two marks (p. 59). From the phonetic and conceptual points of view, a comparison leads to the same result as the
examination of F1 as a word sign (p. 60).
There is no likelihood of confusion between the two marks, since the relevant public will not confuse the mark applied for
with the applicant’s logotype mark. In that connection, it should be noted that the fact that the public attributes a generic
meaning to the sign F1 means that it will understand that the mark applied for concerns Formula 1, but, because of its
totally different layout, the public will not make a connection between that mark and the activities of the applicant (p. 61).
The second plea: infringement of Article 8(5) of Regulation No 40/94
The only sign in respect of which the applicant has shown use and, possibly, reputation, is the F1 Formula 1 logotype.
Accordingly, the first question to address is whether the figurative marks at issue are identical or similar. The distinctive
character and the reputation of the logotype sign lie in the virtual fusion of the letter ‘F’ and the numeral ‘1’, presented in
sharply contrasting colours. The sole fact that the letter ‘F’ and the numeral ‘1’ are present in the mark applied for – a
presence which has no distinctive character – is insufficient to support the inference that there is a link between the two
marks. Consequently, notwithstanding a certain phonetic and conceptual resemblance, the Board of Appeal’s finding that
no element of the mark applied for reminds the public of the F1 Formula 1 logotype must be upheld, since the two signs
cannot be regarded as similar. Given that one of the three cumulative conditions set out in paragraph 65 above is not
fulfilled, there is no need to adjudicate on the question whether, in the present case, the third condition for application of
Article 8(5) CTMR (p. 67-68).
Page 37 of 52
FRIBOI: T-324/09; Board's case: R0824/2008-1; OD case: B 909 483; CTMA No: 4 126 462; Judgment of 17/02/2011
Keywords: Community trade mark: Opposition: Genuine use: assessment; Relative grounds for refusal:
likelihood of confusion: signs
FACTS: J & F Participações SA filed a CTM application for the figurative mark shown below in class 29. Fribo Foods Ltd
filed an opposition on the grounds of Article 8(1)(a) and (b) CTMR based on a various earlier national registrations. The
applicant requested the opponent to file evidence of use and the opponent filed documents to show genuine use of the
earlier marks.
CTM Application
FRIBO
The Opposition Division upheld the opposition on the basis of the opponent’s UK trade mark.
On appeal, the Board partly upheld the appeal and rejected the CTM application for part of the goods. The Board stated
that there was no genuine use of the earlier mark has been proved in relation to part of the goods, nevertheless, it still
(partly) upheld the opposition because part of the goods were identical and similar and there is a high visual and oral
similarity between the signs, whereas the conceptual comparison does not influence the assessment of similarity of the
signs.
Before the General Court, the applicant claims infringement of Articles 42 and 8(1)(b) CTMR since the evidence of use
showed no genuine use and there is no likelihood of confusion between the signs at issue.
1. Infringement of Article 42(2) and (3) CTMR
The applicant disputes the proof of genuine use of the earlier mark. It maintains that the only relevant proof of that use
provided by the opponent is invoices issued by the opponent to Plusfood UK Ltd, stating that the opponent is a company
which is part of the group Plusfood Nederland (para.17). The GC concluded however, that the Board did not err in finding,
in its global assessment of the documentation provided by the opponent that proof of genuine use of the earlier mark had
been furnished in respect of a part of the goods at issue (para.38).
2. Infringement of Article 8(1)(b) CTMR
Page 38 of 52
None of the parties disputed that the relevant public for foodstuff goods is made up of the general public in the UK
(para.45). The GC concluded that the Board was right in concluding that a part of the goods were identical or similar to
the goods covered by the earlier mark (para.47). The signs have been found highly similar (para.63). In view of the
above, taking into account the overall impression, the principle of interdependence, the partial identity and the similarity of
the goods concerned as well as the strong similarity of the signs, the GC found that the Board did not err in finding that
there is a likelihood of confusion within the meaning of Article 8(1)(b) CTMR in respect of the goods referred to above
(para.69).
ANN TAYLOR LOFT: T-385/09; Board's case: R1485/2008-1; OD case: B 816 415; CTMA No: 3 700 119; Judgment
of 17/02/2011 ; Language of the case: EN (Action upheld)
Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion
FACTS: Annco, Inc applied to register as a CTM the words “ ANN TAYLOR LOFT” with regard to goods and services in
classes 18, 25 and 35. Freche et fils associés SARL filed an opposition based on French trade mark registration of the
mark "LOFT" for goods in classes 18 and 25. The grounds were those laid down in Article 8(1)(b) CTMR.
CTM application
ANN TAYLOR LOFT
Earlier Registrations
LOFT
On appeal, the Board of Appeal dismissed the appeal in its entirety on the grounds that the goods were identical, the
marks were similar and that there is a likelihood of confusion between marks.
The applicant claims that the Board infringed Article 8(1)(b) CTMR and wrongly held that there was a likelihood of
confusion between the trade marks concerned and that it also infringed Article 75 CTMR as it wrongly relied on evidence
and reasons on which the applicant was not given the opportunity to comment.
SUBSTANCE: The appeal is upheld.
The parties did not challenge the findings that in this case the relevant public is the average consumer of leather goods
and clothing articles in France , which corresponds to a very large sample of the population (para.22).
The GC confirmed that goods were identical (para.24).
The GC upheld that there were visual and aural similarities between the signs, but that this similarity was not strong, on
the ground that the word ‘loft’ was preceded by other elements in the mark applied for (para.28).
In relation to conceptual similarity, the GC disagreed with the analysis made by the Board. The GC estimated that the
Board’s analysis’s is based on a false premise, that the sign ANN TAYLOR LOFT looked like an Anglo-Saxon person’s
full name in which ‘loft’ will be the surname and as a surname and was the dominant element of the mark applied for.
Furthermore, the Board held that ‘loft’ was distinctive, as it was a foreign word in France and it would rather be perceived
as a meaningless English noun or as a surname (paras.29-31).
The GC rejected the applicant’s argument that the ‘ann taylor’ element is dominant in the overall impression, on the
ground that the ANN TAYLOR and ANN TAYLOR LOFT signs enjoy a reputation with the public as the applicant has not
provide any evidence to show this reputation (para.33-34).
The GC considered that the word ‘loft’ included in the CTMA cannot be regarded as negligible in the overall impression
because it supplements the ‘ann taylor’ element, adding to it a characteristic that could relate, having regard to the goods
concerned, to a line of clothing that corresponds to a certain lifestyle connected to this new style of accommodation or
that adopts some of its codes. In the overall impression, the ‘ann taylor’ element is clearly, with regard to the French
public, much more distinctive than the word ‘loft’, due to the very fact that this latter word has a clear and specific
Page 39 of 52
meaning in French. Overall, taking into account the weak visual and aural similarities and the fact that the ‘ann taylor ’
component is the most distinctive element of the mark applied for, the GC concluded that the overall similarity between
the signs at issue was weak (para.34-38).
Notwithstanding the identity of the goods at issue, the GC concluded that, having regard to the existence of a weak
similarity between the signs, the target public, accustomed to the same clothing company using sub brands that derive
from the principal mark, will not be able to establish a connection between the signs ANN TAYLOR LOFT and LOFT,
since the earlier mark does not include the ‘ann taylor’ element, which is, the most distinctive element in the mark applied
for (para.48).
The GC decided that the first plea in law was upheld and, without there being any need to examine the second plea
alleging breach of the right to be heard, the contested decision should be annulled.
C-2: General Court: Developments in pending cases
ALPINE PRO: T-434/10; Board's case: R1441/2009-1; OD case: B 1 276 692; CTMA No: 5 779 351; Office response
filed on 07/01/2011 ; Language of the case: EN
FACTS: Václav Hrbek trading as BODY-HF applied for the figurative mark shown below for goods in classes 18, 24, 25
and 28.The Outdoor Group Ltd filed an opposition based on the earlier CTM “alpine” shown below for goods in classes 18
and 25. The grounds of the opposition were those laid down on Article 8(1)(b) CTMR.
The opposition was upheld partially.
The applicant’s appeal was dismissed.
Before the GC the applicant claims infringement of Article 8(1)(b) CTMR in that there is no likelihood of confusion
between the marks at issue.
TRADITION: T-508/10; Board's case: R0559/2009-4; CD case: 2572C; CTMA No: 1 762 731; Office response filed
on 09/01/2011 ; Language of the case: DE
FACTS: Seba Di"T#caret ve Nakl#yat A.S. is the registered proprietor of a CTM for the figurative sign shown below for
goods in Classe 34. Johann Wilhelm von Eicken GmbH filed a request for invalidation based on the German figurative
mark shown below for goods in Class 34. The grounds of the request for invalidation were those laid down on Article
8(1)(b) CTMR.
Page 40 of 52
The invalidity request was upheld.
The proprietor appealed and the appeal was dismissed.
Before the GC the proprietor claims infringement of Article 8(1)(b) CTMR in that there is no likelihood of confusion
AMORIKE: T-371/10; Board's case: R0619/2009-2; OD case: B 1 226 531; CTMA No: 5 518 642; Office response
filed on 11/01/2011; Language of the case: EN
goods and services
FACTS: Jablonex Group a.s. applied for a CTM for the Word “AMORIKE” for goods and services in Classes 14, 25 and
26. Amor GmbH file dan opposition based on various earlier trade mark registrations including the Word “AMOR” for
goods in Classes 9, 14, 18, 35 and 42. The grounds of the opposition were those laid down on Article 8(1)(b) CTMR.
AMOR
AMORIKE
The opposition was rejected.
The appeal was dismissed.
Page 41 of 52
Before the GC the opponent claims infringement of Article 8(1)(b) CTMR that there is a likelihood of confusion between
the marks at issue.
AJ AMICI JUNIOR: T-420/10; Board's case: R1360/2009-2; OD case: B 1 309 485; CTMA No: 6 314 462; Office
response filed on 13/01/2011 ; Language of the case: IT
FACTS: Annunziata del Prete applied for a CTM for the figurative mark shown below for goods and services in Classes 9,
25 and 35. Giorgio Armani SpA filed an opposition based on various earlier trade mark registrations including the words
“AJ Armani Jeans” and “ARMANI JUNIOR” for goods in Classes 25 and 35. The grounds of the opposition were those laid
down on Article 8(1)(b) CTMR.
CTMA
Earlier TMs
The opposition was upheld.
The applicant’s appeal was upheld.
Before the GC the opponent claims infringement of Article 8(1)(b) CTMR in that there is a likelihood of confusion between
the marks at issue.
eco-pack: T-445/10; Board's case: R1014/2009-4; OD case: B 1 134 974; CTMA No: 5 164 785; Office response
filed on 13/01/2011 ; Language of the case: DE
Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion: signs,
goods and services
FACTS: Heidi A.T. applied for the CTM shown below for goods in Class16. Herku Plast Kubern GmbH filed an opposition
based on the earlier German word mark and international registration 'ECOPAK' for goods in Class 20. The grounds of
the opposition were those laid down on Article 8(1)(b) CTMR.
ECOPACK
The opposition was dismissed.
Page 42 of 52
The appeal was dismissed.
the marks at issue.
[FINGERS CROSSED DEVICE]: T-404/10; Board's case: R1028/2009-1; CD case: 2558C; CTMA No: 4 800 389;
Office response filed on 14/01/2011 ; Language of the case: EN
Keywords: Community trade mark: Invalidity: Relative grounds for invalidity: copyright
FACTS: National Lottery Commission is the proprietor of a registered CTM for the figurative mark shown below for goods
and services in classes 9, 16, 25, 28 and 41. Mediatek Italia Srl filed a request for invalidity on Article 53(2)(c) CTMR and
Article 53(1)(c) CTMR, claiming to be the owners of a copyright protected under the Berne Convention of 1896 and of a
non-registered trademark used in the course of trade in Italy within the meaning of Article 8(4) CTMR, for “games with
prizes, scratch card games and lotteries”, in relation to the figurative sign shown below.
CTM
Earlier copyright
The Cancellation Division upheld the invalidity request.
On appeal, the Board dismissed the appeal filed by the applicant for invalidity and declared invalid the registered CTM.
Before the General Court, the proprietor claims that the contested decision infringes Article 53(2) CTMR as the Board of
Appeal erred in law in its assessment of this article and in its approach to the assessment of the facts, and failed to
exercise its powers of investigation. The applicant also considers that the Board of Appeal failed to exercise the full remit
of its powers under Article 78 CTMR
Vorfront: T-531/10; Board's case: R0570/2010-1; CTMA No: 8 278 442; Office response filed on 19/01/2011 ;
Language of the case: DE
Keywords: Community trade mark: Examination: Absolute grounds for refusal: distinctiveness, descriptiveness
FACTS: Häfele GmbH & Co. KG applied to register as a CTM the word “Vorfront” for goods in Classes 6, 7, 19 and 20.
The examiner refused the registration on the basis of Article 7(1)(b) and (c), and (2) CTMR.
Before the General Court, the applicant claims infringement of Article 7(1)(b) and (c) CTMR as the Community trade mark
in question has distinctive character and is not purely descriptive.
Page 43 of 52
Atrium : T-513/10; Board's case: R0291/2010-4; CTMA No: 8 167 884; Office response filed on 20/01/2011 ;
Language of the case: DE
Keywords: Community trade mark: Examination: Absolute grounds for refusal: descriptiveness
FACTS: Hamberger Industriewerke GmbH applied for a CTM for the Word “Atrium” for goods in classes 19 and 27. The
examiner refused the CTMA on the grounds of Article 7(1)(b) and (c) CTMR.
The applicant appealed and the appeal was dismissed.
Before the GC the applicant claims infringement of Article 7(1)(b) and (c) CTMR as the Community trade mark concerned
is distinctive and not merely descriptive.
IPH IPHONE: T-448/10; Board's case: R1084/2009-4; OD case: B 1 208 685; CTMA No: 5 562 822; Office response
Reputation
FACTS: Iphone Media, SA applied for a figurative mark "IPH IPHONE", for goods and services in classes 16, 35, 38, 41
and 42. Apple, Inc. filed an opposition based on the earlier Community trade mark registration of the word mark
"IPHONE", for goods and services in classes 9, 38 and 42. The grounds of the opposition were those laid down on Article
8(1)(b) and 8(5) CTMR.
IPHONE
The opposition was partly upheld.
The opponent filed an appeal and the appeal was dismissed.
Before the GC the opponent considers that the contested decision infringes Articles 8(1)(b) and 8(5) CTMR as the Board
of Appeal misapplied the provisions of these articles to the contested trade mark
PUKKA: T-483/10; Board's case: R1175/2008-4; OD case: B 889 792; CTMA No: 4 061 545; Office response filed
on 25/01/2011 ; Language of the case: EN
goods and services
FACTS: The Pukka Luggage Company Ltd applied to register as a CTM the word “PUKKA” for goods in class 18. Jesús
Miguel Azpiroz Arruti filed an opposition based on the earlier Spanish trade mark registration Nof the figurative mark
"PUKAS", for goods in class 18; Community trade mark registration of the figurative mark "PUKAS", for goods and
services in classes 25, 28 and 39. The grounds were those laid down in Article 8(1)(b) CTMR. The applicant requested
the opponent to file evidence of use and the opponent filed documents to show genuine use of the earlier marks.
Page 44 of 52
CTM application
Earlier TMs
PUKKA
The Opposition Division partly upheld the opposition.
Before the General Court, the applicant considers that the contested decision infringes Article 8(1)(b) CTMR as the Board
of Appeal erred in its assessment of the similarity of the goods and in its assessment of the similarity of the contested
trade mark in relation to the earlier trade mark.
se sports equipment: T-477/10; Board's case: R1393/2009-1; OD case: B 1 279 050; CTMA No: 5 920 822; Office
goods and services
FACTS: SPORT EYBL & SPORTS EXPERTS GmbH applied for a figurative mark containing the word element 'SE(c)
SPORTS EQUIPMENT' for goods in Classes 18 and 25. SE - Blusen Stenau GmbH filed an opposition based on the
earlier German word mark and international registration 'SE' for goods in Class 25 and German word marks 'SE So Easy'
and 'SE-Blusen' for goods in Classes 14, 18, 24 and 25. The grounds of the opposition were those laid down on Article
8(1)(b) CTMR.
SE
SE So Easy
SE-Blusen
The opposition was partly upheld.
The applicant appealed and the appeal was upheld.
the marks at issue
Page 45 of 52
FRUIT: T-514/10; Board's case: R1686/2008-4; CD case: 1474C; CTMA No: 745 216; Office response filed on
27/01/2011 ; Language of the case: EN
Keywords: Community trade mark: Invalidity: Genuine use: assessment
FACTS: Fruit of the Loom, Inc. is the registered proprietor of a CTM for the word “FRUIT” for goods in classes 18, 24 and
25. Blueshore Management SA filed a request for revocation on the grounds of lack of use.
The cancellation division partly revoked the attacked CTM.
Before the GC the applicant claims that the contested decision infringes Article 15(1) of Council Regulation No 207/2009,
as the Board of Appeal failed to take account of (i) the presentation and significance of the word "FRUIT" within the marks
shown in the proprietor's evidence of use, (ii) the evidence that the proprietor informally marketed its products under the
name "FRUIT", often using that mark verbally in dealings and transactions with its customers, and (iii) the evidence that
the proprietor had used the mark "FRUIT" as part of its marketing website.
David Mayer: T-498/10; Board's case: R0413/2009-1; CD case: 2514C ; CTMA No: 1 518 950; Office response filed
on 01/02/2011 ; Language of the case: IT
Keywords: Community trade mark: invalidity: Relative grounds for refusal: likelihood of confusion: signs
FACTS: David Mayer Naman is the registered proprietor of a CTM for the figurative sign shown below for goods in
Classes 18 and 25. Daniel & Mayer Srl filed a request for invalidation based on an Italian word mark 'DANIEL & MAYER
MADE IN ITALY' for goods in Class 25, and the unregistered word mark 'DANIEL & MAYER', used in Italy in relation to
the 'manufacture and sale of garments and accessories'. The grounds of the request for invalidation were those laid down
on Article 8(1)(b) and 8(4) CTMR.
DANIEL & MAYER MADE IN ITALY
The application for a declaration of invalidity was upheld in part.
Before the GC the proprietor claims infringement of Article 8(1)(b) CTMR in that there is no likelihood of confusion
DOORSA: T-500/10; Board's case: R0542/2009-4; OD case: B 1 161 225; CTMA No: 4 884 359; Office response
Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion, reputation
FACTS: Puertas Doorsa, SL applied to register as a CTM the figurative mark shown below for goods in classes 6, 9 and
19. Dorma GmbH & Co. KG filed an opposition based on the earlier German trade mark registration of the figurative mark
"DORMA", for goods and services in classes 6, 9, 16, 19 and 37; United Kingdom trade mark registration of the word
Page 46 of 52
mark "DORMA" for goods in classes 6, 7, 9, 16 and 19; International trade mark registration of the figurative trade mark
"DORMA" for goods in classes 6, 7, 9, 16 and 19. The grounds were those laid down in Article 8(1)(b) and 8(5) CTMR.
CTM application
Earlier TMs
Before the General Court, the opponent considers that the contested decision infringes Article 8(1)(b) CTMR as the Board
of Appeal misapplied the provisions of this article to the contested trade mark.
KMIX: T-444/10; Board's case: R1249/2009-2; OD case: B 1 252 958; CTMA No: 5 783 543; Office response filed on
11/02/2011 ; Language of the case: EN
FACTS: Kenwood Appliances Luxembourg SA applied for the word mark 'KMIX' for goods in Classes 7 and 11. ESGE AG
filed an opposition based on the earlier word mark 'BAMIX' for goods in Classes 7 and 40. The grounds of the opposition
were those laid down on Article 8(1)(b) CTMR.
CTMA
KMIX
Earlier TM
BAMIX
The opposition was dismissed.
The opponent’s appeal was dismissed.
the marks at issue.
HYPOCHOL: T-517/10; Board's case: R1332/2009-4; OD case: B 1 245 275; CTMA No: 5 718 069; Office response
goods and services
FACTS: Ozone Laboratories Pharma SA applied to register as a CTM the word “HYPOCHOL” for goods in class 5.
Pharmazeutische Fabrik Evers GmbH & Co. KG filed an opposition based on the earlier German trade mark registration
No 1171145 of the figurative mark "HITRECHOL", for goods in class 5. The grounds were those laid down in Article
8(1)(b) CTMR.
Page 47 of 52
CTM application
HYPOCHOL
Earlier CTM/Spanish TM and sign
HITRECHOL
Before the General Court, the opponent claims infringement of Article 8(1)(b) CTMR as the Board of Appeal wrongly
assumed that there was no likelihood of confusion between the trade marks due to a lacking similarity between the signs.
DIRECT DRIVE: T-561/10; Board's case: R1027/2010-2; CTMA No: 8 797 052; Office response filed on 17/02/2011 ;
Language of the case: EN
Keywords: Community trade mark: Examination: Absolute grounds for refusal: distinctiveness, descriptiveness
FACTS: LG ELECTRONICS INC. applied to register as a CTM the words “DIRECT DRIVE” for goods in classes 7 and 11.
The examiner refused the registration on the basis of Article 7(1)(b) and (c), and (2) CTMR.
Before the General Court, the applicant claims infringement of Article 7(1)(b) and (c) CTMR as the Community trade mark
in question has distinctive character and is not purely descriptive.
[DESSIN D'UN RECTANGLE AVEC DES ELEPHANTS]: T-424/10; Board's case: R1638/2008-4; CD case: 2086C;
CTMA No: 4 279 295; Office response filed on 22/02/2011 ; Language of the case: IT
FACTS: Sisma SpA is the proprietor of a registered CTM for the figurative mark shown below for goods in Classes 10, 16,
21, 24 and 25. Dosenbach-Ochsner AG Schuhe und Sport filed a request for invalidity on relative grounds. This request
was based on earlier international and national figurative marks representing an elephant and the national word mark
'elefanten' for goods in Classes 24 and 25. The grounds were those laid down in Article 53(1)(a) in conjunction with Article
8(1)(b) and (2)(a) CTMR.
Earlier TMs
CTM
ELEFANTEN
The Cancellation Division dismissed the invalidity request.
Page 48 of 52
Before the General Court, the applicant claims infringement of Article 53(1)(a) in conjunction with Article 8(1)(b) and (2)(a)
CTMR as the marks at issue are conceptually, visually and aurally similar and the applicant has expressly submitted that
its trade marks have acquired a highly distinctive character as a result of intensive use or their reputation.
SEIKOH GIKEN: T-519/10; Board's case: R1553/2009-1; OD case: B 1 180 124; WO designating the EC No:
W 908 461; Office response filed on 23/02/2011 ; Language of the case: EN
Keywords: International Registration designating the EU: Opposition: Relative grounds for refusal: likelihood of
confusion: signs, goods and services
FACTS: Kabushiki Kaisha Seikoh Giken designated the EU in the WO registration for the figurative mark shown below for
goods in classes 3, 7 and 9. Seiko Kabushiki Kaisha filed an opposition based on the earlier CTM of the word mark
“SEIKO”, for goods and services in classes 1 to 42. The grounds were those laid down in Article 8(1)(b) CTMR.
CTM application
Earlier CTM
SEIKO
The Opposition Division upheld the opposition and rejected the CTMA in its entirety.
Before the General Court, the applicant claims infringement of the provisions of the CTMR, by a misleading, incorrect
interpretation and inappropriate enforcement of Article 8(1)(b) CTMR and the applicable case-law.
Wolfgang Amadeus Mozart PREMIUM: T-530/10; Board's case: R0363/2008-4; OD case: B 988 248; CTMA No:
4 357 745; Office response filed on 28/02/2011 ; Language of the case: DE
Keywords: Community trade mark: Opposition: Genuine use: assessment
FACTS: Ms Anna Klusmeier applied to register as a CTM the words “Wolfgang Amadeus Mozart PREMIUM” for goods in
classes 30 and 32. Reber filed an opposition based on the earlier German figurative marks which contain the word
element 'W. Amadeus Mozart' for the following goods and sservices: bakers' wares, confectionery, chocolate
confectionery and sugar confectionery, catering in a café and teashop. The grounds were those laid down in Article
8(1)(b) CTMR. The applicant requested the opponent to file evidence of use and the opponent filed documents to show
genuine use of the earlier marks.
Page 49 of 52
CTM application
Earlier German marks
Wolfgang Amadeus Mozart PREMIUM
The Opposition Division dismissed the opposition on the ground that genuine use of the earlier marks had not been
shown.
Before the General Court, the opponent claims infringement of Article 42(2)(1) in conjunction with Article 42(3) CTMR
since the evidence of use put forward by the opponent is a concrete indication of the form of use of the mark cited in
opposition 'W. Amadeus Mozart', and of Article 15(1)(2)(a) CTMR since it was proven that the mark cited in opposition is
clearly used as a trade mark.
Page 50 of 52
New Decisions from the Boards of Appeal
The cases can be found on our website.
Please note that the full number including slash has to be entered in our database under 'Appeal Nº', without the letter 'R'.
E .g. Case R 219/2004-1 has to be entered under 'Appeal Nº' as: 0219/2004-1
Ex parte case
Article 7(1)(b) CTMR – Absolute ground for refusal – Article 7(3) CTMR – Distinctiveness acquired by used.
Decision of the Second Board of Appeal of 9 December 2010 in Case R 500/2009-2
[YELLOW FRAME (FIG. MARK)] (English).
As a preliminary remark, the Board noted, inter alia, that any discussion about geometrical shapes was unnecessary;
from a strictly mathematical point of view, the mark applied for does not form a rectangle, but two rectangles, an inner and
an outer one, joined by a stripe which is yellow in colour; however, it will be perceived by the relevant consumer (who in
this case is the general public) as a rectangular shape with bold yellow sides (a frame) i.e. a figurative trade mark and not
a colour mark per se.
With regard to inherent distinctiveness, the Board also noted that the features of the geometrical figure do not alter its
perception as being a very simple and banal design. The relevant consumer will see it first as having an exclusively
decorative function rather than it being an indication of the commercial origin of the goods and services at stake in Class
9 (inter alia, photographic apparatus and instruments; computer game programs; computer programs downloadable from
a global computer network; electronic units that identify bird species and bird calls; pre-recorded motion picture films,
video cassettes, compact discs, video discs, DVDs, etc.); Class 16 (Printed matter; photographs, stationery; instructional
and teaching material (except apparatus); magazines; books; calendars; maps; globes; posters, etc.) and Class 35 (Retail
and online store services in the fields of GPS travel devices, electronic devices, weather equipment and stations,
telecommunications apparatus, cellular and wireless telephones, etc.). The Board assessed the sign applied for as being
a simple frame that the relevant consumer cannot rely on in order to repeat a purchase since it is not capable of leaving
an impression on his or her memory as an indication of the commercial origin of the goods and services at issue. The fact
that it is depicted in colour does not add distinctiveness to it, since such a basic colour cannot be of any guidance to
consumers. There is no aspect of the sign at issue which may be easily and instantly memorized by the relevant public,
even if the latter were to be considered relatively attentive. Such geometrical forms will only function as a trade mark once
they have become fixed in the minds of consumers through intensive use. The CTM application was, therefore, devoid of
any distinctiveness within the meaning of Article 7(1)(b) CTMR. Moreover, in relation to some other similar registrations of
shapes as Community trade marks, the Board recalled that the Office and its Boards are not bound by previous
decisions.
In relation to acquired distinctiveness, the Board observed primarily that the first instance decision was essentially based
on the fact that the yellow frame had always been used in connection with the sign ‘NATIONAL GEOGRAPHIC’. It
nevertheless recalled that, according to jurisprudence, the distinctive character of a mark may be acquired as a
consequence of the use of that mark as part of or in conjunction with a registered trade mark; the sign applied for cannot
be refused just because of the fact that it was not used as an independent trade mark. The Board itself, therefore,
conducted the assessment of the evidence submitted in order to prove acquired distinctiveness. In this regard, it
underlined the fact that the evidence has to show that the mark is known to a significant proportion of the relevant section
of the public throughout the Union, that is to say, according to current case-law, proof of acquired distinctiveness in each
Page 51 of 52
of the 27 Member States of the European Union at the time of filing the application. For none of the categories of products
at issue did the evidence demonstrate enhanced distinctiveness in all the Member States. Therefore, the Board
concluded that the applicant failed to prove the acquired distinctiveness of its mark throughout the European Union.
Consequently, the appeal was dismissed.
Procedural issues
Article 75 CTMR – Statement of reasons.
Decision of the First Board of Appeal of 3 February 2011 in Case R 525/2010-1
[kinder Party (FIG. MARK) / KINDER et al.] (English).
The Opposition Division summarized the evidence presented in relation to the reputation of the earlier mark as a ‘large
amount of invoices, videos, articles from the press, pictures of packaging, samples of advertising, reports’. On the basis of
an ‘overall assessment of the evidence’ it concluded that the opponent had demonstrated ‘extensive use and reputation
of the earlier mark in France , Italy and Spain ’. This conclusion was supported by less than 15 lines of explanations about
the fulfilment of the requirements of Rule 22 CTMIR and, at the same time, of Article 8(5) CTMR. As regards nature of
use, the Opposition Division argued that use of the figurative version of the mark did not alter the distinctive character of
the word mark registrations, but no reasons were given. The requirements as regards time, place and extent of use (Rule
22 CTMIR) were all considered fulfilled for the three countries, however no details were given. The Opposition Division
then simply stated that the opponent ‘had invested an enormous amount of money to promote the mark in the relevant
territories and submitted press articles in French, Italian and Spanish magazines commenting on the reputation of the
mark’ and concluded that since ‘brand awareness has been sufficiently proven’, the opponent had proved genuine use
within the meaning of Article 42 CTMR and reputation within the meaning of Article 8(5) CTMR.
In the Board’s opinion, the reasoning of the contested decision falls short of the standards set out by Article 75 CTMR.
The contested decision is accordingly annulled for a lack of proper reasoning and the file remitted back to the Opposition
Division for further processing. However, the Board noted that browsing through the evidence may prove to be difficult
since the opponent merely sent five CD-ROMs without an accompanying explanation about what would be found therein,
how the documents were ordered, if some of the contents of the CD-ROMs proved use and others proved reputation, if
some concerned a specific country or all countries, or if some documents had specific relevance as regards the facts to
be proved, etc. The Board underlined the fact that the contents of most of the CD-ROMs were therefore not presented in
a form allowing for a reasonably time-efficient inspection. In this regard, it indicated that in the event that the Opposition
Division is unable to appraise the evidence in the file, it should call upon the concerned party to arrange it in a manner
consistent with the specific facts that must be proved, namely the indications of Rule 22 CTMIR and reputation within the
meaning of Article 8(5) CTMR.
Page 52 of 52

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