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
IP Attorney, Partner CURELL SUÑOL, ES
President of ECTA
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
Signs that cannot constitute a mark
T-191/04 MIP Metro Group v OHIM. 13.09.2006
Renewal of the earlier mark
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).
T-32/04 Lichtwer Pharma AG v OHIM.16.11.2006
This decision applies to Article 81 (4) CTMR
relating to costs.
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)
T-53/05 - Calavo Growers Inc. v Luis Calvo Sanz and OHIM -
Examination of opposition - form/arguments
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.
T-317/05 Kustom Musical Amplification, Inc. v OHIM - Form of a Body Guitar. 07.02.2007
Article 73 CTMR -Reasoned decision
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.
C-29/05 Kaul GmbH v Bayer and OHIM - (CFI T-164/02 - reversed) 13.03.2007
Belated filing of evidence
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.
T-192/04 - Flex Equipos de Descanso v Legget & Platt and OHIM - 16.07.2007
Belated filing of evidence
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.
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.
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».
T-153/03 Inex SA v OHIM-Robert Wiseman & Sons Ltd. 13.06.2006
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).
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
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.
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.
T-158/05 - Trek Bicycle Corp. v Audi and OHIM. 16.05.2007
Low degree of similarity between the goods -cl. 12- and low conceptual similarity
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
T-353/04 - Ontex v OHIM - 13.02.2007
Overall the marks are different
T-342/05 - HENKEL v OHIM. 23.05.2007
Different beginnings, short words, dissimilar visual impact
T-167/05 - Grether v OHIM - Crisgo (Thailand)-13.06.2007
Different overall impression
T-263/03 - Mülhens v Conceria Toska and OHIM -11.07.2007
Different goods -cl. 3 and 18
T-150/04 - Mülhens v Minoronzoni and OHIM - 11.07.2007
Different goods -cl. 3 / 18 and 25
T-28/04 - Mülhens v Mirco Cara and OHIM - (different goods)16.07.2007
Different goods -cl. 3 / 18 and 25
T-172/05 -Armacell v OHIM - 10.10.2006
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.
T-483/04 - Armour Pharmaceutical Co v OHIM-17.10.2006
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.
T-256/04 - Mundipharma v OHIM. 13.02.2007
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.
T-392/04 - Salvatore Gagliardi v OHIM and Norma Lebensmittelfilialbetrieb GmbH & Co.14.12.2006
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.
T-43/05 - Camper S.L. v OHIM- 30.11.2006
Brothers BROTHERS BY CAMPER
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 ).
T-81, 82, 103/03 - Mast-Jägermeister v OHIM and Licorera Zacapenaca -14.12.2006
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 ).
C-412/05 P - Alcon v OHIM and Biofarma - (CFI. T-130/03 confirmed) 26.04.2007
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.
C-171/06 - Devintec Développement Innovation Leclerc S.A. v OHIM (CFI. T-147/03 confirmed) 15.03.2007
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.
T-333 & 334/04 - House of Donuts v OHIM and PANRICO - 18.04.2007
“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.
C-344/05 P - OHIM v Shaker
(CFI. T-7/04 reversed) 12.06.2007
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”.
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).
T-322/05 - Carsten Brinkmann v Terra Networks SA and OHIM.22.03.2007
«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).
T-491/04 - Merant GmbH v Focus Magazin Verlag GmbH and OHIM.
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).
T-105/05 - Assembled Investments (Proprietary) v OHIM - Waterford Wedgwood- 12.06.2007
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).
T-364/05 - Saint-Gobain Pam SA v Propamsa SA and OHIM. 22.03.2007
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.
T-47/06 -Antartica Srl v The Nasdaq Stock Market Inc. V OHIM -10.05.2007
This case refers to Article 8 (5) CTMR
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).
T-137/05 - Gruppo La Perla v Worldgem Brands-Gestao e Investimentos and OHIM- 16.05.2007
NIMEI LA PERLA
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.
Sign devoid of distinctive character
T-15/05 - Van Waele v OHIM (Shape of a sausage - 3D) 31.05.2006
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).
C-24/05 P - August Stork KG v OHIM (Werther’s Sweets) (CFI. T-396/02 confirmed) 22.06.2006
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).
C-25/05 P - August Stork KG v OHIM (Werther’s Sweets wrapper) (CFI. T-402/02 confirmed) 22.06.2006
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).
T-283/04 - Georgia Pacific v OHIM (Pattern kitchen roll paper) 17.01.2007
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).
T-241/05 et al - Procter & Gamble v OHIM - 3D detergent Tabs 23.05.2007
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).
T-441/05 IVG Immobilien v OHIM
(Art. 7(1) (b) CTMR) - 13.06.2007
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).
Sign not merely descriptive
C-237/05 P - CELLTECH (CFI. T-260/03 reversed)- 19.04.2007
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)
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).
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).
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.
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.
T-190/05 - Sherwin-Williams v OHIM.12.06.2007
TWIST & POUR
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).
T-339/05 - MacLean-Fogg v OHIM. 12.06.2007
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).
T-207/06 - Europig v OHIM.14.06.2007
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.
C-321/03 - Dyson Ltd. v Registrar of Trade Marks (clear bin) 25.01.2007
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.