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Trade marks: Latest European case law. Mireia Curell IP Attorney, Partner CURELL SUÑOL, ES President of ECTA. Index. 1) Technical Issues - Questions of procedure 2) Substantive Law - Relative grounds for refusal Likelihood of confusion

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trade marks latest european case law

Trade marks: Latest European case law

Mireia Curell

IP Attorney, Partner CURELL SUÑOL, ES

President of ECTA

index

Index

1) Technical Issues

- Questions of procedure

2) Substantive Law

- Relative grounds for refusal

Likelihood of confusion

Reputation of the earlier mark

- Absolute grounds for refusal

Signs devoid of distinctive character

Descriptive signs

Signs that cannot constitute a mark

procedural issues

Procedural issues

T-191/04 MIP Metro Group v OHIM. 13.09.2006

METRO

Renewal of the earlier mark

decision of the cfi

Decision of the CFI

The Court recalls that the purpose of an opposition procedure is to protect the identifying function of an earlier mark. It is therefore necessary that the marks in conflict be valid at the time the decision is taken. If in the course of opposition proceedings, an earlier mark has expired, the refusal of the opposed trade mark is no longer justified (paras. 32 and 33).

procedural issues1

Procedural issues

LYOC Lyco-A

T-32/04 Lichtwer Pharma AG v OHIM.16.11.2006

This decision applies to Article 81 (4) CTMR

relating to costs.

decision of the cfi1

Decision of the CFI

The Court annuls the Board of Appeal’s decision and considers that “ the fact that an opposition is upheld, although it deprives the parallel proceedings of their purpose, does not make it in any way possible to determine which of the parties to those parallel proceedings would have been unsuccessful. Identification of the unsuccessful party in given proceedings may be based only on the purpose and factual and legal framework of those proceedings, as defined by the parties’ claims” (para. 22)

procedural issues2

Procedural issues

T-53/05 - Calavo Growers Inc. v Luis Calvo Sanz and OHIM -

16.01.2007

CALAVO

Examination of opposition - form/arguments

decision of the cfi2

Decision of the CFI

The question relates to the fact whether the OHIM could take a decision on the sole basis of the information provided within the first part of the notice of opposition, namely the marks involved and the legal basis.

The answer of the Court is affirmative: the analysis of the opposition can be done on the basis of the sole comparison between the signs and the goods.

procedural issues3

Procedural issues

T-317/05 Kustom Musical Amplification, Inc. v OHIM - Form of a Body Guitar. 07.02.2007

Article 73 CTMR -Reasoned decision

decision of the cfi3

Decision of the CFI

The Court annuls the decision of the Board of Appeal since it finds that the contested decision infringed Article 73 CTMR by failing to comply with the duty to state reasons on which decisions are based and by violating the right to be heard.

procedural issues4

Procedural issues

C-29/05 Kaul GmbH v Bayer and OHIM - (CFI T-164/02 - reversed) 13.03.2007

ARCOL CAPOL

Belated filing of evidence

decision of the court of justice

Decision of the Court of Justice

The Court states that the Board of Appeal erroneously interpreted Article 74. It also states that the Court of First Instance erroneously interpreted that the Board of Appeal should have taken the new elements into account as they had been filed “in due time”.

The Court states that the Board of Appeal, when presented with facts and evidence which are submitted late, has a discretion as to whether or not to take account of such information when making the decision which it is called upon to give.

procedural issues5

Procedural issues

LURA-FLEX

T-192/04 - Flex Equipos de Descanso v Legget & Platt and OHIM - 16.07.2007

Belated filing of evidence

decision of the cfi4

Decision of the CFI

The answer has been given by the Court of Justice in its decision of 13 March 2007 ARCOL/CAPOL: when presented with facts and evidence which are submitted late, the Board of Appeal has a discretion as to whether or not to take account of such information when making the decision which it is called upon to give.

procedural issues6

Procedural issues

T-240/05 et al The Black & Decker Corporation v Atlas Copco AB and OHIM - 15.05.2007

The applicant considers that colour representations of the earlier marks submitted after the opposition deadline had expired cannot be accepted.

decision of the cfi5

Decision of the CFI

The Court rejects this argument on the basis of Article 80 (2) which provides that «where a communication received by fax is incomplete or illegible, or where OHIM has reasonable doubts as to the accuracy of the transmission, OHIM is to inform the sender accordingly and is to invite him, within a period to be specified by OHIM, to retransmit the original by fax or to submit the original».

substantive law no likelihood of confusion

Substantive Law:No likelihood of confusion

T-153/03 Inex SA v OHIM-Robert Wiseman & Sons Ltd. 13.06.2006

decision of the cfi6

Decision of the CFI

The CFI upheldthe Board of Appeal's decision finding that the trade marks at issue were not similar as there are strong visual differences (paras 41 and 42).

Although the marks may be similar conceptually, since they both convey the idea of a cow, this similarity is limited to an element which is not distinctive in respect of the goods for which the marks are used (para. 45).

no likelihood of confusion

No likelihood of confusion

C-214/05 P - Sergio Rossi SpA v OHIM (CFI. T-169/03 confimed) 18.07.2006

MISS ROSSI SISSI ROSSI

Differences in the goods and signs confirmed by the Court of Justice, cl. 25/ cl. 18

no likelihood of confusion1

No likelihood of confusion

FERRERO FERRO

T-310/04 - Ferrero Deutschland GmbH v OHIM- 15.12.2006

Low degree of similarity in the goods; differences and similarities between the signs. Decision appealed.

no likelihood of confusion2

No likelihood of confusion

T-501/04 - Bodegas Franco-Españolas v OHIM - 15.02.2007

ROYAL FEITORIA ROYAL

Low degree of similarity between the goods -cl. 33- and low distinctive character of the word “royal”. Decision appealed.

no likelihood of confusion3

No likelihood of confusion

T-158/05 - Trek Bicycle Corp. v Audi and OHIM. 16.05.2007

TREKALLTREK

Low degree of similarity between the goods -cl. 12- and low conceptual similarity

no likelihood of confusion4

No likelihood of confusion

T-88/05 - Quelle AG v OHIM. 08.02.2007

The mere phonetic similarity does not support the conclusion that there is a likelihood of confusion

no likelihood of confusion5

No likelihood of confusion

T-353/04 - Ontex v OHIM - 13.02.2007

EURON CURON

Overall the marks are different

no likelihood of confusion6

No likelihood of confusion

COR

T-342/05 - HENKEL v OHIM. 23.05.2007

Different beginnings, short words, dissimilar visual impact

no likelihood of confusion7

No likelihood of confusion

T-167/05 - Grether v OHIM - Crisgo (Thailand)-13.06.2007

FENJAL

Different overall impression

no likelihood of confusion8

No likelihood of confusion

T-263/03 - Mülhens v Conceria Toska and OHIM -11.07.2007

TOSCA TOSKA

Different goods -cl. 3 and 18

no likelihood of confusion9

No likelihood of confusion

T-150/04 - Mülhens v Minoronzoni and OHIM - 11.07.2007

TOSCA

Different goods -cl. 3 / 18 and 25

no likelihood of confusion10

No likelihood of confusion

T-28/04 - Mülhens v Mirco Cara and OHIM - (different goods)16.07.2007

TOSCA

Different goods -cl. 3 / 18 and 25

substantive law existence of a likelihood of confusion

Substantive Law: Existence of a likelihood of confusion

T-172/05 -Armacell v OHIM - 10.10.2006

NOMAFOAM ARMAFOAM

decision of the cfi7

Decision of the CFI

The Court appreciates the existence of a likelihood of confusion regarding only part of the EU consumers, namely those that are not English speaking.

It further concludes that the goods are similar as the definition of the goods as applied for is extremely broad.

This decision has been appealed.

existence of a likelihood of confusion

Existence of a likelihood of confusion

T-483/04 - Armour Pharmaceutical Co v OHIM-17.10.2006

CALSYN GALZIN

decision of the cfi8

Decision of the CFI

The opponent registered its trade mark for “Pharmaceutical and medical preparations, more specifically calcium-based preparations”. It provided proof of genuine use for “calcium-based preparations” only. The Court considered that these goods covered a sub-category of pharmaceutical preparations.

The marks are deemed to be visually and aurally similar as well as the goods although they refer to different therapeutic indications.

existence of a likelihood of confusion1

Existence of a likelihood of confusion

T-256/04 - Mundipharma v OHIM. 13.02.2007

RESPICORT RESPICUR

decision of the cfi9

Decision of the CFI

The earlier mark was registered for “pharmaceutical and sanitary preparations; plasters” and genuine use was shown only for “multi-dose dry powder inhalers containing corticoids, available only on prescription”. The Court finds that the trade mark must be deemed to have been registered for “therapeutic preparations for respiratory illnesses” (para. 36).

The marks are deemed to be visually, phonetically and even conceptually similar, in particular for end users.

existence of a likelihood of confusion2

Existence of a likelihood of confusion

T-392/04 - Salvatore Gagliardi v OHIM and Norma Lebensmittelfilialbetrieb GmbH & Co.14.12.2006

Manou

decision of the cfi10

Decision of the CFI

The earlier mark is registered i.a. for: clothing namely stockings, tights. The owner evidenced effective use of the mark for “woman’s tights“.

The Court decides that this use is not sufficient for the category “clothing” but only for the sub-category “woman’s tights“ and possibly underwear (paras. 92 and 93 ).

However there is a similarity in the goods (clothing / woman’s tights) and a visual and aural similarity in the signs.

existence of a likelihood of confusion3

Existence of a likelihood of confusion

T-43/05 - Camper S.L. v OHIM- 30.11.2006

Brothers BROTHERS BY CAMPER

decision of the cfi11

Decision of the CFI

The dominant component of both marks is the word "brothers " ( para.61 to 64 ).

Consequently, the marks are aurally, visually and conceptually similar ( para. 71 to 80 ).

existence of a likelihood of confusion4

Existence of a likelihood of confusion

T-81, 82, 103/03 - Mast-Jägermeister v OHIM and Licorera Zacapenaca -14.12.2006

decision of the cfi12

Decision of the CFI

The marks are visually similar as they both contain the same dominant element namely the representation of the head of a reindeer, within a circle (para 92 ).

They are also aurally similar for the Spanish speaking consumer for whom the word “venado” means “reindeer”. (para 94 ).

They also refer to the same concept (para 100 ).

existence of a likelihood of confusion5

Existence of a likelihood of confusion

C-412/05 P - Alcon v OHIM and Biofarma - (CFI. T-130/03 confirmed) 26.04.2007

TRIVASTAN TRAVATAN

decision of the court of justice1

Decision of the Court of Justice

In connection with the definition of the public concerned, the Court of Justice decided that even if the medicines could only be bought on prescription, the public concerned does not only comprise the professionals but also the end consumer.

Consequently, the Court of First Instance did not err by including end-users in the definition of relevant public.

existence of a likelihood of confusion6

Existence of a likelihood of confusion

C-171/06 - Devintec Développement Innovation Leclerc S.A. v OHIM (CFI. T-147/03 confirmed) 15.03.2007

decision of the court of justice2

Decision of the Court of Justice

The Court of Justice understands that the CFI, in its global appreciation of the likelihood of confusion, did not disregard the impact of the relevant public’s indirect understanding of the earlier mark, but merely held that this impact was not sufficient to outweigh to a large extent the elements of the opposing marks which are visually and phonetically similar (para. 58), and provided the requisite level of reasoning.

existence of a likelihood of confusion7

Existence of a likelihood of confusion

T-333 & 334/04 - House of Donuts v OHIM and PANRICO - 18.04.2007

DONUTS

decision of the cfi13

Decision of the CFI

“Donuts” is a well-known trade mark in Spain. Since this term is not descriptive in said territory, the Court decides that said word dominates the overall impression which the average consumer would have when faced with the marks applied for.

existence of a likelihood of confusion8

Existence of a likelihood of confusion

C-344/05 P - OHIM v Shaker

(CFI. T-7/04 reversed) 12.06.2007

LIMONCHELO

decision of the cfi14

Decision of the CFI

The Court of First Instance held that the mark for which registration was sought contained a dominant element comprising the representation of a round dish decorated with lemons and concluded that the dominance of the figurative representation in comparison with the other components of the mark prevented any likelihood of confusion arising from a visual, phonetic or conceptual similarities between the words “limoncello” and “limonchelo”.

decision of the court of justice3

Decision of the Court of Justice

The Court of Justice annuls the decision on the ground that the CFI did not carry out a global assessment of the likelihood of confusion of the marks at issue (para.40). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (para. 42).

existence of a likelihood of confusion9

Existence of a likelihood of confusion

TERRANUS

T-322/05 - Carsten Brinkmann v Terra Networks SA and OHIM.22.03.2007

decision of the cfi15

Decision of the CFI

«TERRA» is the dominant element of the earlier mark due to its size and position, namely in front of the device element. (para. 98). Further, the design element is a simple and abstract device which is not special and attractive in the overall perception of the mark (para 36).

The marks are globally similar (para. 40).

existence of a likelihood of confusion10

Existence of a likelihood of confusion

T-491/04 - Merant GmbH v Focus Magazin Verlag GmbH and OHIM.

16.05.2007

FOCUS

decision of the cfi16

Decision of the CFI

The word “FOCUS” being the dominant element of the earlier mark (para 50 and 51), the signs are visually (para 53 to 55) and conceptually (para 56 and 57) similar. There is a low degree of aural similarity, but this difference does not neutralise the visual and conceptual similarities.

The marks are globally similar (para 60).

existence of a likelihood of confusion11

Existence of a likelihood of confusion

T-105/05 - Assembled Investments (Proprietary) v OHIM - Waterford Wedgwood- 12.06.2007

WATERFORD

decision of the cfi17

Decision of the CFI

There is a degree of complementarity between some articles of glassware and wine, in so far as the first group of products is intended to be used for drinking wine.

However, in so far as wine may be drunk from other vessels, that complementarity is not sufficiently pronounced for it to be accepted that the goods are similar (para. 34).

existence of a likelihood of confusion12

Existence of a likelihood of confusion

T-364/05 - Saint-Gobain Pam SA v Propamsa SA and OHIM. 22.03.2007

PAM FLUVIAL

decision of the cfi18

Decision of the CFI

The word element «PAM» is the main and dominant element of the earlier mark (para. 98).

The marks are therefore globally similar (para. 103).

Construction materials (class 19) as applied for by the earlier trade mark are similar and complementary to the pipes and tubes of metal (class 6) and fittings for rigid pipes and tubes, not of metal (class 17) as applied for by the contested CTM.

reputation of earlier mark

Reputation of earlier mark

T-47/06 -Antartica Srl v The Nasdaq Stock Market Inc. V OHIM -10.05.2007

NASDAQ

This case refers to Article 8 (5) CTMR

decision of the cfi19

Decision of the CFI

The Court confirms that the reputation of the mark «Nasdaq» in the EU is established in respect of the services in classes 35 and 36, also for an important subsection of the general public interested in financial matters (para. 48 to 52).

The Court concludes that NASDAQ has established prima facie the existence of a future risk, which is not hypothetical, of unfair advantage being drawn by the applicant from the reputation of the trade mark Nasdaq, by using the mark applied for (para. 61).

reputation of earlier mark1

Reputation of earlier mark

T-137/05 - Gruppo La Perla v Worldgem Brands-Gestao e Investimentos and OHIM- 16.05.2007

NIMEI LA PERLA

MODERN

CLASSIC

decision of the cfi20

Decision of the CFI

The Court annuls the decision of the Board of Appeal and recalls that when a mark with reputation is being protected, in order to determine the degree of similarity between the marks, it is sufficient that the relevant section of the public establishes a link between them.

The Court considers that as the dominant element of the earlier mark is completely included in the junior mark, there is an aural, visual and conceptual similarity that can have the effect to establish a link between both signs.

It is further considered that the goods covered by both marks (jewellery and woman’s clothes) belong to market segments which are close to each other.

absolute grounds for refusal

Absolute grounds for refusal:

Sign devoid of distinctive character

T-15/05 - Van Waele v OHIM (Shape of a sausage - 3D) 31.05.2006

decision of the cfi21

Decision of the CFI

The relevant public is composed of both consumers and professionals in the pork meat business.

The CFI upholds the OHIM's decision and finds the trademark applied for to be devoid of distinctive character within the meaning of Article 7(1)(b) CTMR.

The Court finds that the characteristics of the shape in question do not give an overall appearance specific enough to enable consumers to perceive it unambiguously as an indication of origin of the goods in question (para. 40).

sign devoid of distinctive character

Sign devoid of distinctive character

C-24/05 P - August Stork KG v OHIM (Werther’s Sweets) (CFI. T-396/02 confirmed) 22.06.2006

decision of the court of justice4

Decision of the Court of Justice

If the visual representation is not sufficient to allow consumers to clearly identify characteristics of the goods, secondary meaning cannot be proved (para. 64). The CFI did not err in law in so holding in the present case.

In order to assess whether a mark has acquired distinctive character through use, the court must take into account all the circumstances in which the relevant public is confronted with the mark (para.71).

sign devoid of distinctive character1

Sign devoid of distinctive character

C-25/05 P - August Stork KG v OHIM (Werther’s Sweets wrapper) (CFI. T-402/02 confirmed) 22.06.2006

decision of the court of justice5

Decision of the Court of Justice

Only a three-dimensional mark that departs significantly from the norms or customs of the sector can have distinctive character(para.28).This principle also applies where the trade mark applied for is a figurative mark consisting of a two-dimensional representation of a product. In this case, the mark likewise does not consist of a sign unrelated to the appearance of the goods it covers(para. 29).

The Court of Justice recalls that the holder must prove that its trade mark has acquired distinctive character through use in that part of the Community where it did not, ab initio, have such character, which area may be comprised of a single Member State(para.83).

sign devoid of distinctive character2

Sign devoid of distinctive character

T-283/04 - Georgia Pacific v OHIM (Pattern kitchen roll paper) 17.01.2007

decision of the cfi22

Decision of the CFI

The waffel effect is perceived by the consumer as an indication of the absorption capacity of the product (para. 47 to 49 ).

The waffel effect is only a variation of those usually used in the market for kitchen roll (para. 51).

The combination of the waffel effect and the design does not significantly differ from the waffel effects used by other producers (para. 54).

signs devoid of distinctive character

Signs devoid of distinctive character

T-241/05 et al - Procter & Gamble v OHIM - 3D detergent Tabs 23.05.2007

decision of the cfi23

Decision of the CFI

The level of attention paid by the average consumer to the shape and design of a washing tablet is not high.

The applicant has not established that the consumer pays particular attention to the appearance of the washing tablet or that he is accustomed to perceiving it as an indication of its commercial origin (paras. 63 and 64).

sufficient distintive character

Sufficient distintive character

T-441/05 IVG Immobilien v OHIM

(Art. 7(1) (b) CTMR) - 13.06.2007

decision of the cfi24

Decision of the CFI

The Board of Appeal decided that the mark lacked of any distinctive character because the claimed mark lacked notable specific graphic features in comparison to the standard Times New Roman character font.

The Court of First Instance considers that to that extent, the Board of Appeal deprived of all practical application the principle that Article 7 (1) (b) CTMR makes no distinction between different types of signs with regard to the requirement for distinctiveness (para. 48).

absolute grounds for refusal1

Absolute grounds for refusal:

Sign not merely descriptive

C-237/05 P - CELLTECH (CFI. T-260/03 reversed)- 19.04.2007

facts

Facts

In deciding that the existence and nature of cell technology is not a well-known fact and that it was therefore for the Board of Appeal to establish the correctness of its findings in that regard, the Court of First Instance made a finding of fact which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal(para. 45)

The Court of First Instance did not make an error of law by deciding that, by not establishing the scientific meaning of cell technology, the Board of Appeal did not show that the mark CELLTECH is descriptive of the goods and services referred to in the application for registration (para 46)

response of the court of justice

Response of the Court of Justice

In this case, it must be held that the Court of First Instance properly assessed the descriptive character of the mark CELLTECH considered as a whole and concluded that it was not established that the mark, even understood as meaning ‘cell technology’, was descriptive of the goods and services referred to in the application for registration. Therefore, it did not infringe Article 7(1)(c) CTMR (para. 81).

descriptive sign

Descriptive sign

C-108/05 - EUROPOLIS (acquired distinctiveness denied)07.09.2006 Preliminary Ruling

The registration of the mark « EUROPOLIS », filed in connection with services in classes 36 and 39, was refused by the Benelux-Merkenbureau. It was deemed to be exclusively descriptive of the services in question, as it is formed by the generic term «EURO » and the generic term « POLIS » (this term meaning contract in Dutch).

facts1

Facts

An appeal was filed at the Gerechtshof invoking mainly that the sign « EUROPOLIS » is distinctive and, subsidiarily, that it has acquired distinctiveness through its use.

The Court of Justice is asked for a preliminary ruling regarding the correct interpretation of Article 3 (3) of the First Council Directive 89/104/EEC of 21 December 1988.

response of the court of justice1

Response of the Court of Justice

The Court of Justice held that in assessing acquired distinctiveness, the only relevant situation is that prevailing in the Member State or, in the case of the Benelux territory, the part thereof where the ground for refusal existed. The Court of Justice held that if the ground for refusal exists, it is necessary to show that the mark has acquired distinctive character throughout the linguistic area. It then falls to be assessed whether the relevant public (or a significant portion thereof) within that linguistic area identifies the product or service as originating from a particular undertaking because of the trade mark.

descriptive sign1

Descriptive sign

T-190/05 - Sherwin-Williams v OHIM.12.06.2007

TWIST & POUR

decision of the cfi25

Decision of the CFI

Taken as a whole, the word mark directly describes the action in particular of opening a container with a cap which has to be turned before the liquid contents can be poured (para. 54). Therefore, the sign is devoid of any distinctive character (para. 66).

descriptive sign2

Descriptive sign

T-339/05 - MacLean-Fogg v OHIM. 12.06.2007

LOKTHREAD

decision of the cfi26

Decision of the CFI

Taken as a whole, the term “lokthread” means a thread that locks, in other words, a thread structure used in a locking mechanism (para. 48).

The mere combination of the descriptive words “lock” [lok] and “thread” is itself also descriptive (para. 51).

descriptive sign3

Descriptive sign

T-207/06 - Europig v OHIM.14.06.2007

EUROPIG

decision of the cfi27

Decision of the CFI

The mark will be considered by the relevant public as indicating that the goods applied for are taken from pigs and are originated from the European Union (para.34).It is therefore descriptive.

absolute grounds for refusal2

Absolute grounds for refusal

C-321/03 - Dyson Ltd. v Registrar of Trade Marks (clear bin) 25.01.2007

Preliminary Ruling

response of the court of justice2

Response of the Court of Justice

All the conceivable shapes of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner, is not a ‘sign’ within the meaning of Article 2 of First Council Directive 89/104/EEC of 21 December 1988. As a result, the sign as applied for is not capable of constituting a trade mark.

information

Information:

www.ecta.org

www.oami.europa.eu

www.curia.europa.eu