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of 45 OAMI - HABM - OHIM - OHMI - UAMI - Newsletter 05- 2011

0BCommission proposal on expanded OHIM “enforcement” role

The European Commission has proposed that the Office for Harmonization in the Internal Market should play a more prominent role in tasks related to the protection of intellectual property rights including supporting the European Observatory on Counterfeiting and Piracy.

According to the proposal, in carrying out these tasks, OHIM is to regularly consult experts, authorities, and stakeholders, who will assemble under the “European Observatory on Counterfeiting and Piracy”.

! The James Nurton Interview Page 3

! IR cancelled due to earlier registration in another

member state Page 5 ! Opinion of the Advocate General in Design Case

Page 6

! RCD web services coming to eSearch Plus Page7 ! E-Business roundup (2011) Page 7

! The changing landscape of brand values Page 8 ! OHIM and EPO cooperation agreement Page 10 ! Agreement with Korean Intellectual Property Office

Page 11 ! Judges’ network discusses IP crime Page 12 ! Monthly statistical highlights April 2011 Page 13

! Luxembourg trade mark and design news Page 14 ! New decisions from the Boards of Appeal Page 43

Editorial Team: Reg Rea, Edward O’Gorman, Darren Grimshaw, Mikael Wesslegard Contributors to this edition: Nicasio Agustina, Stéphane Beslier, Arkadiusz Gorny, James Nurton, Julio Laporta Insa, Martin Schlötelburg and Nicolas Vigneron.


Commission proposal on expanded OHIM “enforcement” role

The European Commission has proposed that the Office for Harmonization in the Internal Market should play a more prominent role in tasks related to the protection of intellectual property rights including supporting the European Observatory on Counterfeiting and Piracy.

According to the proposal, in carrying out these tasks, OHIM is to regularly consult experts, authorities, and stakeholders, who will assemble under the “European Observatory on Counterfeiting and Piracy”.

The proposal will be tabled to the Council and Parliament in the form of a draft regulation aimed at providing the Observatory with additional responsibilities and a sustainable structure

The role of the European Observatory, which was set up in 2009, is to focus on operational tasks such as organizing training for enforcement authorities, including customs, police, and judicial authorities. It is also involved in setting up a database of national and European case law, and fostering co-operation with countries which are particularly vulnerable to counterfeiting and piracy, and which are used by criminal networks as manufacturing and distribution bases. Under the terms of the regulation, OHIM will have the following tasks:

a. improving the understanding of the scope and impact of infringements of intellectual property rights, protected under European Union law or the national laws of the Member States, including industrial property rights, copyright, and rights related to copyright;

b. improving the understanding of the value of intellectual property; c. enhancing the knowledge of best public and private sector practices to protect intellectual property rights; d. raising citizens´ awareness of the impact of infringements of intellectual property rights; e. enhancing the expertise of persons involved in the enforcement of intellectual property rights; f. enhancing the knowledge of technical tools to prevent and combat counterfeiting and piracy, including tracking

and tracing systems; g. improving the online exchange between Member States´ authorities involved in the protection of intellectual

property rights, of information related to the protection of intellectual property rights, and fostering co-operation with and between the central industrial property offices of the Member States, including the Benelux Office for Intellectual Property;

h. fostering international co-operation with intellectual property offices in third countries to build strategies and develop techniques for the protection of intellectual property rights, skills, and tools.

Until the new regulation has been formally adopted by the European Parliament and Council, a Memorandum of Understanding, also published today, has been signed enabling OHIM to provide the Observatory with “operational and technical support”.

Welcoming the agreement, OHIM President António Campinos said that it was a logical step in the increasing collaboration required to increase the effectiveness of EU efforts to protect trade mark and design rights.

“By combining forces,” Mr Campinos said, “we can avoid overlap and help lay the groundwork for an Intellectual Property policy in the EU where both registration and enforcement work effectively. That is what trade mark and design users need, and it is also what they deserve.”

HUProposed regulationsU

HUMemorandum of UnderstandingU


The James Nurton Interview

This month James Nurton interviews Professor Charles Gielen, who was recently appointed an Officer in the Order of Orange-Nassau in the Netherlands.

Tell me about the honour you recently received. It’s a royal decoration awarded by the Queen and given to people who have made important contributions to the country that are not purely work related. It recognised some of my work in the international IP community representing the Netherlands: for example I served on the board of directors of INTA for seven years and was president of the Dutch group of AIPPI. How did you begin working in trade marks? 40 years ago I started working for a leading specialist in IP in the Netherlands, Leo Wichers Hoeth. He did a PhD in law and his book on a comparative study on use requirements in Europe is still quoted sometimes. He was my teacher and he had succeeded to the practice of Mr Bodenhausen, who went to become Director General of WIPO. Wichers Hoeth acted for many clients that I still represent, such as Coca-Cola, Johnson & Johnson and Union des Fabricants in trade mark matters. I’d been to law school but never studied IP and he inspired me to work in trade marks at a time when there were only about four specialists in the Netherlands. What have been the major changes you’ve seen in your career? The Benelux system came into effect as I was beginning my career in 1971 so it was an interesting challenge to start working on this new unified trade mark system. We got involved in some major cases before the Benelux Court of Justice. There were lots of cases on the differences between the law of the three countries and it was harmonised over time. This meant that Benelux specialists were heavily involved in the drafting of the EU Trade Marks Directive and the CTM Regulation. In fact, the first text came out of the committee chaired by the president of the Dutch Patent Office. So I got involved in that process, being on an advisory committee to the Dutch government. Have these changes been positive? In Europe harmonisation has brought about a clearer vision of what trade marks are and what constitutes use and infringement. Now you can say in the 15 older EU member states, there is a clear understanding of trade mark law although the new member states still have difficulties coping with that. For example, I’m involved in a Netherlands case involving Bulgarian law at the moment and I’m not sure even the Supreme Court there understands the harmonization process. But that’s a question of time. What does your practice involve? As well as litigation in trade marks, I do other IP work, mainly patents, unfair competition and designs. Our team in Benelux has 25 people, mainly lawyers, but we also have a prosecution practice. That is still quite unusual in the Netherlands, but we concluded we gain more by having a full-service practice than we lose in referrals from trade mark agencies. And our international clients prefer one-stop shops. What are the most interesting cases you have been involved in? I have been involved in cases up to the Court of Justice of the EU in Luxembourg. Some of the most interesting were the adidas case on three stripes, the Dior v Evora case on exhaustion of rights, the Picasso case and, more recently the Ferrero case. I have mixed feelings about the Court. I think on descriptiveness the case law is not good, for example in the Postkantoor and Biomild cases. I think they fear the monopolizing of a newly invented word consisting of two descriptive terms and this is unjustified. Similarly I think they fear for the protection of shape marks, particularly the requirement that you have to show secondary meaning all over Europe. You can no longer do that. That is a high burden compared to the low threshold on reputation in the Pago case, which I think is not consistent. Either you have to accept you are a big European Union and it’s impossible to have secondary meaning or you have to find a way to allow it.


We should no longer talk about member states. It is one market. If you want to protect a trade mark in the EU, you should use it in a genuine way in a substantial part of the market, depending on all the circumstances of the case. You should not need to show secondary meaning all over the place, but in a substantial part of the Community. That might be different for a consumer good compared to an aircraft. Saying that use in one member state per se is enough is a ridiculous rule: you shouldn’t compartmentalise the Community. The rule in Pago that you need to show reputation in a substantial part of the Community is a good rule. In that case, reputation in Austria was sufficient. I would say that is still not the right criteria because you should not talk about one member state, but in principle it can be one part of the EU. If you look at the Google AdWords cases, and I acted in Portakabin v Primakabin, those decisions are not very helpful because they give criteria that are very difficult to work in practice. Sometimes the Court of Justice and the General Court don’t realise that because they are not practitioners. I’m in favour of having a specialist court for trade marks. What do you think of the Max Planck Report? I think it makes excellent recommendations, for example on secondary meaning requirements and shape marks where they say you should remove all the exceptions to shape marks except for functionality. It would simplify things: only functionality should count. A provision that a trade mark owner can oppose the use of his mark or a similar sign for other purposes than to distinguish products is now entirely left to member states in Article 5(5) of the Directive. We apply this provision in the Benelux so you can oppose uses such as similar trade names. The Max Planck Study suggests providing for this rule in the Directive and CTM Regulation, which is good. We also need a kind of a fair use provision that is clearer than what we have now – there should be fair use under particular circumstances, so the trade mark owner cannot oppose use by journalists in a critical article or by stand-up comedians in a joke. What do you think about OHIM? I think the Office is doing a great job, improving more and more. There are always some decisions you don’t like or understand but some are very well-formulated and extremely good. Generally I would like to see more consistency in the decision-making process. Also speed is still an issue as they have so many cases pending. The biggest challenge these days is how to follow the case law of the General Court and national cases. One of my former partners in the firm was involved in setting up the DARTS-IP database which now has hundreds of thousands of cases. That’s the major challenge these days, and the volume of cases is increasing. If I’m litigating a case in the Netherlands, I need to know when there is an important decision of the German Supreme Court. If I don’t, I have a lack of knowledge. Fortunately the Dutch judges are very international. What are the big issues in the Benelux? There are a number of issues, still arising from being a harmonised jurisdiction. For example, at the moment, appeals from the Benelux Office go to either the courts in The Hague, Brussels or Luxembourg and ultimately to the Supreme Court of those three countries. Sometimes they take a totally different approach. We are now going to use the Benelux Court of Justice as the appeal instance for all decisions from the Benelux Office and that will happen in one to two years. The second major change to be introduced is to have the opportunity to request cancellation of a trade mark at the Office, as well as in court, which should make it easier to challenge trade marks. What do you think will be the big challenges in the next five to 10 years? A big challenge is a change of the classification system – having more classes or totally different distinctions. It’s now difficult to clear a trade mark for example in class 9, which covers computer software. It’s ridiculous. Someone who operates something such as computer software for use in a hospital can block everybody else so we need a system to make it easier to adopt new trade marks. The service classes are ridiculous: consider advertising – everyone advertises. We need to work on the Nice Classification, make it more specific and make it less easy for companies to acquire three classes for example. You can only get clearance at the multinational level after a lot of difficulty if you are prepared to accept manageable risks, based on assumptions from the internet and private detectives and so on.


Something that will develop is the acceptance of the protection of more functions than just origin. That was made clear in L’Oréal v Bellure. The courts will need to do more work on defining the functions and understanding them. The Google case didn’t explain why the other functions other than origin and publicity don’t play a role so it still seems to be difficult for the court. A trade mark is a sign identifying a particular product and communicating messages associated with it. Origin is not of particular relevance today for people creating brands. This is a major shift and it will develop further. There are still many more questions to be addressed, for example trade marks and designs are getting very close. You can file designs for graphic symbols which gives you exclusive rights against every kind of use. We are seeing this tested in the pending case between Louis Vuitton and the creator of the Darfur paintings, which LV has attacked based on its design rights. But I think that the design system is a great system. The unregistered design right is fantastic for SMEs and very cheap for three years’ protection. The RCD is also very cheap. What does your role as a professor involve? I have a one-day chair at the University of Groningen teaching IP generally. It came about in 1992 after I published a book in 1989 and finished a PhD in 1991. These days the students are particularly interested in internet issues such as the Google cases, dilution law, designs and some patent topics such as biotechnology.

1BIR cancelled due to earlier registration in another member state

A Romanian sportswear company has lost its International Registration (IR) covering the EU following an invalidity application by a Slovakian firm selling similar products. Both companies had pre-existing national registrations for figurative trade marks containing the word “Zajo”, which were in use before the countries joined the EU.

The Romanian firm, S.C. GOTECH S.R.L., whose national mark was the younger of the two, applied for an international trade mark designating the EU with a priority date in 2006, by which date Slovakia was a member of the EU, and was granted it in 2007, giving it the same rights and coverage as a CTM.

At the priority date, Romania was not yet a member of the EU, and hence could potentially benefit from some transitional arrangements protecting marks from any conflicting registration which became applicable as a consequence of accession.

(earlier mark) (contested CTM)

However the Slovakian company, KRALIK-ZAJO, JURAJ, asked for the IR to be declared invalid on the grounds of its pre-existing national mark. The invalidity applicant said it was the original user of the mark “Zajo”, which meant “rabbit” in Slovakian children’s language, and had been using the sign in the course of trade since 1996 – a fact well known by the CTM proprietor, with whom they had a business relationship.

The CTM proprietor, opposing the invalidity, denied they had acted in bad faith and said that the applicant failed to file an opposition when they had the opportunity. The Romanian company said that since the IR was first registered as a Romanian national mark and then as an IR designating the EU with a priority date before Romania was a member state of the European Union the applicant’s mark “Zajo” could have a priority in respect of the contested CTM only as regards Slovakia.


OHIM’s Cancellation Division examined the ground for invalidity under Article 8(1)(b) CTMR in respect of the earlier Slovakian trade mark.

The Cancellation Division ruled that while the original Romanian trade mark was registered before the date of accession of that country to the EU, and in particular, more than six months before that date, this only meant that the original Romanian registration would be protected from any conflicting registration that became applicable as a consequence of the accession. It did not mean that an IR registration based on that right was protected against an earlier right applicable within the CTM system. Since the Slovakian mark was already a national right within the CTM system it could be invoked by the applicant pursuant to Article 53(1) CTMR.

Declaring the IR invalid with respect to the EU the Cancellation Division said: “A different interpretation would lead to the consequence that the IR in question would be granted disproportionate protection against any earlier right only because Romania had not yet joined the EU at the time of the designation of the EU.”

Opinion of the Advocate General in Design Case

The Advocate General (AG) Mengozzi has delivered his HUopinionUH in the case C281/10 before the Court of Justice related to an invalidity proceeding against the registered Community designs (RCD) HU74463-0001UH (see also HUAlicante News of April 2010UH).

The opinion includes an analysis of the terms “degree of freedom of the designer” and “informed user” in Article 6(2) and 10(2) of the Community Design Regulation.

As regards the first term, the AG believes that “the constraints on creative freedom to be taken into consideration in accordance with the Regulation are exclusively those constraints which are dictated by the need for the goods to fulfil a certain function” whereas “’standard’ features which the market expects, but which are not technically necessary, cannot be regarded as constraints on the designer’s freedom.”

As regards the second term, the AG explains that “the informed user to whom the Regulation refers is not the average consumer to whom reference must be made in order to apply the rules on trade marks”. According to the AG the General Court correctly characterised the informed user as “particularly observant and has some awareness of the state of the prior art, that is to say, the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design, or, as the case may be, on the date of the priority claimed.”

The AG then turns to the question of the type of comparison which the informed user may make between the designs at issue. “The comparison could, in principle, be either an indirect comparison, based on recollection, as generally happens in the field of trade marks, or a direct comparison made by viewing the goods side by side.” In the view of the AG “both types of comparison are a legitimate possibility in the case of designs.”

In the comparison of the RCD with an earlier design, the AG considers it proper “to take account of the actual goods characterised by a specific design” since “the relevant public for assessing designs is made up of informed users, who are not experts, but simply individuals who are particularly interested in and attentive to such goods.” The AG finds it “quite right that the General Court should also have considered the goods in the form of the ‘real thing’, as seen and perceived by the informed users, who, it should be pointed out, do not usually ever see the registrations of the designs, but only their ‘practical application’, that is to say, the goods characterised by those designs.”

At the end, the AG proposes to dismiss the appeal.


RCD web services coming to eSearch Plus

OHIM is planning to add powerful new registered Community design functions to the eSearch Plus tool, which is currently in trial or “beta” version, in order to allow external users to integrate RCD data into their reporting and data management tools. Although RCD web services will form part of the free eSearch Plus service, when it is released on trial, those who are interested in testing or using the RCD web services, will be asked to sign a licence in a similar way to users of the current CTM-Download service, which disseminates data via FTP and provides the Community Trade Mark database in XML format conforming to the relevant WIPO standard. OHIM will announce later this year when the service will be more widely available. eSearch Plus already combines the data in 10 previous databases to allow 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. RCD web services represent another step in enhancing user participation and adding new features to eSearch Plus. The RCD web service, which is currently being tested with some National Offices, will be provided with RCD data sets in XML format and will consist of:

! RCD data service ! RCD image service ! RCD search service

Web services like those mentioned above are designed to further enable users to build their own systems making use of the data and therefore offer much more flexibility in integrating the information into pre-existing systems, including their own reporting and file management tools. The RCD data service should contain all RCD data entered in OHIM’s internal database. However, due to the nature of the data, it will only return the details of a design but not a design application. A new architecture will also be introduced to handle image data input and output which basically will be retrievable via integrated design ID links connected with the database.

For more information on the new RCD Web Services please contact [email protected].

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 above 70% ! Oppositions against CTM applications received electronically are above 30%. ! MyPage users represent around 56% of CTM Applications filed.


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 a new way for filing oppositions online.

Live in March

eSearch Plus This new service will provide full and unified search services for CTM, RCD related information as well as case law.

Beta version live in March

The changing landscape of brand values

The latest annual survey of global brand values reflects the wind of economic change sweeping the globe, and the increasing importance of those brands that occupy the borderless “virtual world” of the Internet and social media.

The BrandZ annual survey of the Top 100 Most Valuable Global Brands has been coming out for five years now, and is published by Millward Brown Optimor in conjunction with The Financial Times, Bloomberg and Datamonitor.

As well as providing a five-year review and analysis of how brands performed against the S&P 500, this year also offers an evaluation of the leading brands in emerging markets such as the so-called BRIC countries, and an exploration of the phenomenon of social media.

Internet and IT giants: Google, IBM, Apple, and Microsoft are the top four most valuable brands, according to the latest surveyHU

1U

H, while Coca-Cola has to content itself with fifth place, followed by McDonalds and Marlboro. China Mobile ranks eighth, GE ninth, and Vodafone is the top European entrant in 10th place.


Brand value

The survey says that the Top 100 brands are worth a total of over $2.04 trillion (€1.04 trillion) and this has grown by a massive 40% in five years. Measured against the S&P 500 over the same period, this portfolio has grown by 18.5% in value compared with a decline of 11.5% for the total value of the S&P 500.

The authors estimate that brands are one of the most valuable assets for any company, accounting for about a third of shareholder value on average.

The survey report says that technology brands experienced the sharpest growth in value over a five year period. In addition to the names already mentioned BlackBerry, which was not listed in the Top 100 five years ago, now ranks at number 14, having more than doubled in value to $30.7 billion (€21.5 billion). Over the same period, Amazon moved up 63 places from Number 78 to Number 15, reflecting a 46 percent growth to $27.5 billion (€19 billion).

In each of the 17 categories surveyed for the report, the authors say that brands struggled with cautious spending in developed markets while enjoying a more enthusiastic reception in emerging markets.

Some changes reflect the ups and downs in the financial markets. Financial institutions, which fell by 11% in value in 2008, rebounded 12% in 2010. The motor industry sector was not so fortunate. Cars experienced a 15% loss in brand value last year, as consumers continued to defer major purchases. However, despite the difficult economy, strong luxury brands such as Hermès and Louis Vuitton grew in value.

Social media

A new trend noticed by the authors was that consumers were becoming increasingly well-informed brand advocates and critics, “fortified with knowledge about price, product, and supply gained from searching the Internet and sharing information on Facebook and other social networking sites.”

This increased accent on digital social media is creating a “whirlwind impact”, particularly with regard to advertising, says the report. Advertisers are reluctant to open product presentations with a “predictable” TV campaign. While TV remains central to the mix, multi-media campaigns must now include Facebook, Twitter, YouTube, blogs and smartphone apps.

This observation is accompanied, however, with more than a word of caution: “Delivering on this expectation requires some wizardry, however, because of the revolutionary and dislocating impact that social media has had on the protocols and manners of traditional communication.

“Speed limits, access barriers and language inhibitions have been lifted. Passion and genuine expression are in; caution and circumlocution are out. The result is the purest anarchy or democracy or both”.

“Brands stand naked. That’s great if they have nothing to hide or can work comfortably with the privacy drapes open wide”, the report says.

The BrandZ data indicates that the social media is not just the domain of the young, fashionable brands. It has also been adopted by “tradition-bound categories such as banking”.

Emerging markets

Moving from the virtual world to how the boundaries of economic power are changing on map, the BrandZ survey also showcases the power of emerging markets, and in particular the growing influence of China.

An Indian brand, ICICI, India’s largest bank by market capitalization, made the Top 100 this year for the first time. This means that for the first time since its inception in 2006, the BrandZ survey includes brands from all four of the BRIC countries (Brazil, Russia, India and China). Now commentators are looking beyond the BRIC nations to the new players in the so-called Next 11 (N-11) countries (HUBangladeshUH, HUEgyptUH, HUIndonesiaUH, HUIran UH, HUMexico UH, HUNigeriaUH, HUPakistanUH, HUPhilippines UH, HUSouth KoreaUH, HUTurkeyUH and HUVietnamUH), with the Top 100 now including Telcel from Mexico.


In 2010 there were a total of 13 brands from emerging markets in the top 100, including seven from China. With a 62% growth in brand value (the second highest) the Chinese Internet search engine was valued at $9.3 billion (€6.5 billion) and is picked out as the brand with “highest momentum”.

HUThe BrandZ Top 100 most valuable global brands 2010U

HU

1U

H Brand valuation is carried out according to BrandZ’s published criteria and no independent assessment has been carried out by OHIM.

OHIM and EPO cooperation agreement

OHIM and the European Patent Office (EPO) have signed a comprehensive agreement to cooperate more closely on projects to increase the efficiency of the IP system within the EU and globally.

OHIM President Antonio Campinos said the agreement would have a profound influence on how they worked with national offices and projected the influence of the EU on intellectual property in the international arena.

EPO President Benoît Battistelli said it was important for the offices to take a global look at the interests of all IP stakeholders.

The two offices, which have previously cooperated on a number of international projects in China, Asia and the Balkans have signed a Memorandum of Understanding covering:

! Training and interchange of human resources ! Awareness-raising and promotion of the industrial property system ! Information Technology systems

The agreement, made in the presence of representatives of EU member states and IP user organisations attending the May meeting of OHIM’s Administrative Board, also allows scope for other forms of cooperation in the future which fall within the overall objectives of the Memorandum.


Mr Campinos said that if we look at Intellectual Property from an EU rather than national perspective, the EPO and OHIM both play key roles, though with somewhat different statuses.

For this reason the two organisations had a duty to try and work out how to solve any problems of cooperation and coordination.

“With so many overlaps, there is a danger of duplication, and perhaps even a kind of wasteful competition. Equally, there is a huge opportunity to pull together, combine our strengths and unlock some synergies.

“We currently cooperate closely in industrial and intellectual property projects. These include the promotion and support of IP-related education and training in the European Patent Academy and the EU-China Project on the Protection of Intellectual Property Rights, or IPR2, as it is known.

“We have also previously participated in other important common training IP projects in Asia and the Balkans, as well as in ad hoc projects in partnership with the World Intellectual Property Organization such as a training course on administrative issues in patent and trade mark procedures.

“When you look at some of the work we are doing with National Offices in the EU, there also appears to be a lot of common ground.

“This means there is lots of scope for greater experience and information-sharing. Working together will also help ensure that we are not asking too much of our partners, and should increase their capacity to respond”, he said.

See also the HUvideo interviewUH with EPO President Benoît Battistelli on OHIM’s website.

Agreement with Korean Intellectual Property Office

A Memorandum of Understanding between OHIM and the Korean Intellectual Property Office has been signed by KIPO Commissioner Lee Soowon and OHIM President Antonio Campinos.

Under the terms of the Memorandum, which was signed during a visit to Alicante by the Commission and Korean officials, it was agreed that there will be annual meetings of experts to discuss trade mark and industrial design issues. The Offices will also co-operate on the development of common statistical parameters, and exchange relevant statistical data.


There will be electronic exchange of priority documents of trade mark applications, and there may also be co-operation on matters relating to the medialess exchange of trade mark and industrial design publication data.

The Offices will also discuss the possibility of uploading each other’s registered trade mark data on to their respective trade mark search systems for use by the general public. They acknowledge that co-operating in this way will benefit the user community both in Korea and in the European Union.

In relation to electronic systems related to trade marks and industrial designs, there may also be co-operation in the development and expansion of their respective IT, automation, and modernisation schemes, including search systems for three-dimensional (3D) representations of designs.

The Offices will co-operate on intellectual property training programmes designed for members of staff or the general public. This would include seminars and workshops, e-learning courses, and study visits for staff members. Co-operation will be facilitated between KIPO´s Training Institute (IIPTI), and the OHIM Academy.

The Offices acknowledge that users would benefit from further co-operation on classification practices and tools, and that providing users with free and easy access to their respective classification databases would be an important step forward. It was also agreed that the Offices should draw up an annual implementation plan specifying all the activities. The Memorandum of Understanding will come into effect immediately, and remain in effect for five years. It does not involve the transfer of financial resources between the two Offices. The programmes, projects, and any specific activities are to be financed by both Offices jointly, or by each of them exclusively, depending on the respective budgetary limits. HU Memorandum of UnderstandingU

Judges’ network discusses IP crime

Around 50 judges, public prosecutors and legal experts from the European Commission, Eurojust and enforcement organisations such as Interpol, gathered in Alicante in May to discuss criminal aspects related to the infringement of Community trade mark rights.

The judges, most of whom are involved in criminal matters and who sit in Community trade mark and design courts in EU member states, were taking part in the latest in the current seminar series organised by OHIM for the Judges’ Network. This series of meetings is bringing over 400 senior legal experts together during 2010-2011, in a bid to reach a common understanding of enforcement issues.


Monthly statistical highlights* April 2011 compared to April 2010

2011 2010

Community trade mark applications received 9 006 8 694

Community trade mark applications published 7 614 6 534

Community trade marks registered (certificates issued) 6 146 6 391

Community trade mark renewal applications 1 633 1 819

Registered Community designs received 6 756 6 526

Registered Community designs published 5 783 7 088

* Statistical data for the month in course is not definitive. Figures may vary slightly after


Luxembourg Case Law A: Court of Justice: Appeals from decisions of the Court, Article 63 CTMR

A-2: Court of Justice: Developments in pending cases

[GRAU-ROT]: C-45/11P (appeal from T-404/09); Board's case: R0379/2009-1; CTMA No: 6 733 315; Judgment of 12/11/2010; 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: Deutsche Bahn AG applied to register as a CTM the colour mark shown below consisting of the combination of the colours grey and red for services in Class 39. The examiner refused the registration on the basis of Article 7(1)(b) CTMR.

CTM application

On appeal, the Board dismissed the appeal.

Before the General Court, the applicant claimed that in its assessment of the mark applied for, the Office applied criteria which are inconsistent with the case-law of the Court of First Instance; it was, in particular, ignored that different criteria are applicable to the registration of colour marks for services than for goods.

The General Court dismissed the appeal.

The applicant has now appealed before the CJ.

Solaria: C-67/11P (appeal from T-188/10); Board's case: R0767/2009-2; OD case: B 1 174 614; CTMA No: 5 153 325; Office response filed on 19/04/2011; Language of the case: ES

Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion: signs

FACTS: DTL Corporación, S.L. applied to register as a CTM the figurative mark shown below for services in Classes 37, 41 and 42. Gestión de Recursos y Soluciones Empresariales, S.L. filed an opposition based on the earlier Spanish TM for the figurative mark shown below registered for services in Classes 37 and 42. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application

Earlier Spanish TM


The Opposition Division partly upheld the opposition.


Before the General Court, the applicant claimed incorrect interpretation and application of Article 8(1)(b) CTMR. The appeal was dismissed.

Before the CJ the applicant claims (1) breach of procedure before the General Court which prejudices the interests of the applicant: the application to stay proceedings under Article 77(c) and (d) of the Rules of Procedure of the General Court was totally ignored (Article 58 of the Statute of the Court of Justice of the European Union); (2) Infringement of the law of the European Union by the General Court: the judgment infringes Article 8(1)(b) CTMR on the Community trade mark, by expressly stating: (a) that the word element of the Community trade mark the subject of the dispute is the dominant feature of the mark; (b) that that word element is not the dominant feature of the mark, which contradiction decisively influences the assessment of the likelihood of confusion (Article 58 of the Statute of the Court of Justice of the European Union).

B: Court of Justice: Preliminary rulings

DHL Express France – Chronopost: C-235/09; Preliminary ruling of 12/04/2011; Language of the case: FR

Keywords: Community trade mark: Article 98 CTMR

FACTS:

The preliminary ruling is referred to the Court by the Cour de Cassation (France) in a case that opposed DHL Express France SAS (DHL) to Chronopost SA (Chronopost) in relation to the infringement by DHL of Chronopost’s CTM WEBSHIPPING.

It deals with the interpretation of Article 98 CTMR.

Chronopost is the proprietor of the French and Community trade marks for the sign ‘WEBSHIPPING’, in respect of, inter alia, services relating to: logistics and data transmission; telecommunications; transport by road; collecting mail, newspaper and parcels; and express mail management (para.20).

DHL International had used the signs ‘WEB SHIPPING’, ‘Web Shipping’ and/or ‘Webshipping’ in order to designate an express mail management service accessible via the Internet.

Chronopost brought an action against DHL before the Tribunal de grande instance de Paris (Regional Court, Paris, France) – which heard the case as a Community trade mark court within the meaning of Article 91(1) CTMR – alleging, in particular, infringement of the Community trade mark WEBSHIPPING. By its judgment, that court found, inter alia, that DHL had infringed Chronopost’s French trade mark WEBSHIPPING, although it did not adjudicate upon the infringement of the Community trade mark (para.21).

The Cour d’appel de Paris (Court of Appeal, Paris) – acting as a second-instance Community trade mark court on the appeal brought against the judgment by Chronopost – prohibited DHL, subject to a periodic penalty payment in the event of infringement of the prohibition, from continuing to use the signs ‘WEBSHIPPING’ and ‘WEB SHIPPING’ in order to


designate an express mail management service accessible, inter alia, via the Internet. The Cour d’appel de Paris regarded such use as infringing the French and Community trade mark WEBSHIPPING (para.22).

The appeal in cassation which DHL Express France had brought against that judgment was dismissed by the order for reference (para.23).

However, in the course of the same proceedings before the Cour de cassation (Court of Cassation), Chronopost has brought a cross-appeal in which it submits that the judgment of the Cour d’appel infringes Articles 1 and 98 CTMR in so far as the prohibition against further infringement of the Community trade mark WEBSHIPPING, subject to a periodic penalty payment, issued by the Cour d’appel de Paris does not extend to the entire area of the European Union (para.24).

According to the Cour de cassation, it follows expressly from the grounds of the judgment of the Cour d’appel de Paris that, although the judgment does not contain any operative words expressly relating to the application to extend the prohibition issued by that court – which is subject to a periodic penalty payment – to the entire area of the European Union, that prohibition subject to a periodic penalty payment must be construed as applying only to French territory (para.25).

QUESTIONS REFERRED TO THE COURT:

Since it had doubts as to the interpretation, in that context, of Article 98 CTMR, the Cour de cassation decided to stay proceedings and to refer the following questions to the Court of Justice for a preliminary ruling (para.26): 1. Must Article 98 CTMR be interpreted as meaning that the prohibition issued by a Community trade mark court has effect as a matter of law throughout the entire area of the [European Union]?

2. If not, is that court entitled to apply specifically that prohibition to the territories of other States in which the acts of infringement are committed or threatened?

3. In either case, are the coercive measures which the court, by application of its national law, has attached to the prohibition issued by it applicable within the territories of the Member States in which that prohibition would have effect? 4. In the contrary case, may that court order such a coercive measure, similar to or different from that which it adopts pursuant to its national law, by application of the national laws of the States in which that prohibition would have effect?’

ANSWERS FROM THE COURT:

1. Article 98(1) CTMR must be interpreted as meaning that the scope of the prohibition against further infringement or threatened infringement of a Community trade mark, issued by a Community trade mark court whose jurisdiction is based on Articles 93(1) to (4) and 94(1) of that regulation, extends, as a rule, to the entire area of the European Union.

2. Article 98(1), second sentence, CTMR, must be interpreted as meaning that a coercive measure, such as a periodic penalty payment, ordered by a Community trade mark court by application of its national law, in order to ensure compliance with a prohibition against further infringement or threatened infringement which it has issued, has effect in Member States to which the territorial scope of such a prohibition extends other than the Member State of that court, under the conditions laid down, in Chapter III of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, with regard to the recognition and enforcement of judgments. Where the national law of one of those other Member States does not contain a coercive measure similar to that ordered by the Community trade mark court, the objective pursued by that measure must be attained by the competent court of that other Member State by having recourse to the relevant provisions of its national law which are such as to ensure that the prohibition is complied with in an equivalent manner.

C: General Court: Judgments and Orders on appeals against decisions of the OHIM, Article 63 CTMR


C-1: General Court: Judgments and Orders

RUN THE GLOBE: T-12/09; Board's case: R1779/2007-1; CTMA No: 5 154 521; Judgment of 07/04/2011; Language of the case: DE (Action dismissed; Board and Office's practice confirmed)

Keywords: Community trade mark: Examination: Absolute grounds for refusal: distinctiveness-slogan

FACTS: Alexander Gruber applied for the registration of the word mark ‘Run the globe’ for ‘organisation and running of sporting events’ in Class 41. The Examination Division refused the Community trade mark application on the basis of Article 7(1)(b) and (c) and Article 7(2) CTMR with respect to the services in class 41.

The applicant filed an appeal against this decision. The Board of Appeal dismissed the appeal and confirmed the contested decision.

The applicant filed an appeal before the GC claiming infringement of Articles 7(1)(b) and 7(2) CTMR.

SUBSTANCE: The appeal is dismissed.

The Board decided that the mark applied for was devoid of distinctive character because the relevant public composed of the average English-speaking consumer would understand on the spot and without further analysis that the services offered under the sign are running events around the world (paras.19-21).

The General Court confirmed that the sign is composed of three common words in English, namely 'run', "the" and "globe" combine in a manner which is consistent with the English syntax. The GC found that the expression had different possible meanings such as "to travel around the earth by foot" or "running around the planet”, which in any event, is a way of travelling around the globe on foot (paras.23-24).

The GC agreed with the Board’s finding that the sign would be perceived by the relevant public as a mere indication of the content of the services offered by the applicant, in the case at hand, sporting events consisting of races held at a number of different places around the world or which are organised as a run around the world in stages (paras.25-26). Therefore, the GC concluded that the sign applied for will provide an indication of the nature of some services and not as indicating the origin of the services (para.27).

The GC considered that the fact that the organization and conduct of sporting events may relate to sports other than racing did not change the former conclusion. As the services cover any sporting event, they also include running events taking place in several places on the planet at the same time or which are organized as a race around the world in stages (para.28). Finally, in relation to the applicant’s argument that the sign applied for has not been used neither by the relevant public nor in the advertising to describe the services, the GC recalled that the question of the proof of the use of the trade mark in a descriptive way by the public or by competitors is a relevant factor under Article 7(1)(d) CTMR, but not under Article 7(1)(b) CTMR (para.29).

The GC confirmed the Boards conclusion that the sign “Run the globe” was devoid of distinctive character for the services in question (para. 30).

COMIT: T-84/08; Board's case: R138/2006-4; OD case: B 675 803; CTMA No: 3 104 155; Judgment of 07/04/2011; Language of the case: EN (Action upheld)


FACTS: Entesa Sanpaolo filed a CTM application for the word mark “COMIT” for goods and services in Classes 16, 35, 36, 41 and 42. MIP Metro Group based its opposition on the earlier German figurative mark shown below for goods and services in Classes 9, 16, 35, 36, 41 and 42. The opposition was directed against all the goods and services of the CTM application. The opponent claimed Article 8(1)(b) CTMR.


CTM application Earlier German TM

COMIT

The Opposition Division partly upheld the opposition for the goods in Class 16.

The opponent filed an appeal is so far that the decision rejected the opposition with regard to the services in classes 35, 36, 41 and 42. The Board of Appeal allowed the appeal in part and rejected the CTM application in respect of all the services. The Board held that there was a likelihood of confusion considering that the services were identical and the visual and phonetic similarities (that had been underestimated by the Opposition Division) between the signs. As regards the applicant’s claim by ancillary appeal that the decision of the Opposition Division should be varied, the Board rejected it as inadmissible. The applicant filed an appeal before the GC.

SUBSTANCE: The decision is annulled to the extent that the Board dismissed the claim of the applicant in respect of the goods in Class 16.

1. Infringement of Article 8(3) of Regulation N° 216/96

In the present case, the applicant had the right under Article 8(3) of Regulation No 216/96 to challenge the refusal to register the trade mark applied for in respect of the goods in Class 16 and the Board was wrong to dismiss its appeal as inadmissible (para.24). The first plea in law, alleging infringement of Article 8(3) of Regulation No 216/96, is upheld. 2. Infringement of Article 8(1)(b) CTMR

As regards the relevant public, it is the average German consumer (para.33). The services at issue in Classes 35, 36, 41 and 42 are identical. The parties do not dispute that finding (para.34).

As regards the comparison of the signs, visually, the differences between the signs are minor. Phonetically, the signs at issue must be regarded as similar too. Conceptually the sings were different, but the difference was not as significant and obvious as to override the strong visual and phonetic similarities between the two signs. The signs have been found, assessed globally, similar (para.43).

In view of the above, taking into account the overall impression, 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 services referred to above (para.47).

EURO AUTOMATIC PAYMENT: T-28/10; Board's case: R0635/2009-2; CTMA No: 7 077 654; Judgment of 12/04/2011; Language of the case: FR (Action dismissed; Board and Office's practice confirmed)

Keywords: Community trade mark: examination: Absolute grounds for refusal: distinctiveness; Absolute grounds for refusal: descriptiveness

FACTS: EURO-INFORMATION - EUROPEENNE DE TRAITEMENT DE L’INFORMATION (Société par actions simplifiée) applied to register as a CTM the expression “EURO AUTOMATIC PAYMENT”, with regard to goods and services in classes 9, 35, 36, 37, 38, 42 and 45. 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 because the mark applied for is not descriptive but distinctive for all the goods and services refused for registration.



The relevant public is composed of English speaking consumers in the Community, including professionals and non professionals, which are well informed and reasonably observant and circumspect; the three verbal elements that make up the mark applied for are English words (para. 42).

The expression “euro automatic payment” does not deviate from syntactic or lexical rules in the English language but merely complies with them. The word “automatic” clearly qualifies the noun “payment” (para. 46). “Euro” can be understood as referring to the single European currency; the item “payment” refers to the delivery of an amount of money in pursuance of a pecuniary obligation; “automatic”' refers to an action that is executed without the will’s intervention (para. 47). Thus, the term “euro automatic payment” may be interpreted as referring to the operation of an automatic process for payments in Euro where the user can access it either occasionally or continuously (para. 48). Such a meaning is apparent to the relevant public, without requiring in-depth or intellectual reflections.

As regards the connection between the expression “euro automatic payment” and the goods and services applied for:

First, the cards included in class 9 have common features, among which those of allowing for the completion of payments in euro, consequently, the mark applied for is descriptive (paras. 59 to 63).

Second, the goods belonging to the fields of computing and telecommunications in class 9 target the same audience, are able to perform the registration, storage, processing, transfer and transmission of information and data, therefore, these products also form a homogeneous group of products and, insofar they allow the users to make electronic payments, the mark applied for is descriptive with regard to these products (paras. 64 to 69).

Third, “the automatic teller machines’” purpose is, precisely that of performing automatic payments; the mark applied is also descriptive of the purpose of the “counterfeit currency detectors”, “vending machines”, “distributors of tickets”, “bar code readers” and “distributors of banknotes” in the sense that these products incorporate an automatic payment mechanism, or can be incorporated into such a mechanism (para. 70 to 76).

Fourth, the "distributors of operation listings of accounts, statements of account” are closely linked to “distributors of banknotes” because these two products are incorporated into one and the same device (para. 81), thus, the relevant public will perceive the mark as descriptive of an essential characteristic of the products concerned (para. 82).

Finally, the services in Class 36 are all of them offered in the banking and finance fields, on the one hand, and on the other, all these services involve payment transactions, either through a card or electronically (para. 85). The services in this class, therefore, have common features so that they can be considered as a homogeneous group of services (para. 87). From the point of view of the relevant public there is a sufficiently direct and specific relationship between the sign “euro automatic payment” on the one hand and all the services in class 36, namely that they can perform or receive automatic payments in euro (para. 88). Therefore, the sign merely describes the nature or purpose of the services in question (para. 90).

ALDER CAPITAL: T-209/09; Board's case: R0486/2008-2; CD case: C1386; CTMA No: 2 346 575; Judgment of 13/04/2011; Language of the case: EN (Action dismissed; Board and Office's practice confirmed)

Keywords: Community trade mark: Invalidity: Genuine use: assessment; Relative grounds for refusal: likelihood of confusion

FACTS: Alder Capital Ltd is the proprietor of a registered CTM for the word “Alder Capital” for services in class 36. Halder Holdings BV filed a request for invalidity on relative grounds. This request was based on the earlier Benelux trade mark registrations of the word mark "Halder" and "Halder Investments" for services in classes 35 and 36; International registration of the word mark "Halder" for services in classes 35 and 36; and the unregistered trade and company names "Halder", "Halder Holdings", "Halder Investments" and "Halder Interest" used in the course of trade. The grounds were those laid down in Article 8(1)(b) and 8(4) CTMR. The proprietor requested the applicant to file evidence of use and the applicant filed documents to show genuine use of the earlier marks.

CTM Earlier TMs and signs Alder Capital Halder


Halder InvestmentsHalder Interest

The Cancellation Division upheld the invalidity request based on the earlier unregistered rights while considering that genuine use had not been shown as regards the earlier registered trade marks.

The proprietor appealed. In its decision, the Board considered that the evidence of use of the earlier registered trade marks was sufficient to show genuine use and upheld the invalidity request based on the earlier registered trade marks. It dismissed the proprietor’s appeal.

The proprietor appealed before the GC.


The first plea in law: infringement of Articles 57 and 58 CTMR, read in conjunction with Article 8(3) of Regulation No 216/96, as amended

Alder Capital submits that the Board infringed Articles 57 and 58 CTMR and Article 8(3) of Regulation No 216/96 by acceding to the applicant’s request that to reconsider the findings of the Cancellation Division as regards the proof of use of the earlier marks (para. 15). This plea is dismissed. The GC states that the Board was required to carry out a full examination of the application for a declaration of invalidity, in terms both of law and of fact. In that context, it was able to make a ruling in relation, not only to Article 8(4) CTMR, but also to the genuine use of the earlier marks and the potential likelihood of confusion between those marks and the registered CTM on the basis of Article 8(1)(b) CTMR (para. 25).

The third plea in law: infringement of Article 56(2) and (3) CTMR, read in conjunction with Article 15 thereof and Article 10 of Directive 2008/95, and of Rule 22(3) and (4) and Rule 40(6) of Regulation No 2868/95

The GC notes that there is use ‘in relation to goods’ when a third party affixes the sign constituting its company, trade or shop name on the goods which it markets. In addition, even where the sign is not affixed, there is use ‘in relation to goods or services’ where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party (para. 46). The GC, in assessing the evidence of use [which consists of a number of press articles dated between the year 2000 and the year 2006 – see para. 51], considers, firstly, that since the term ‘halder’ appears independently of any mention of corporate form or investment fund number in four newspaper advertisements, this is considered use as a mark for the services referred to in the advertisements (para. 52); and, secondly, that those advertisements show constant and regular use of the mark during the relevant period and that the mark Halder has been used publicly and externally in Germany, having been the subject-matter of advertisements in a German newspaper with a high circulation (para. 53).

The GC also notes that the newspaper articles in question refer to Halder either as a company or as an investment fund (para. 55) and that the use of the term ‘halder’ to designate investment funds constitutes not only a use as a company or trade name, but also as a mark for the subcategories of financial services identified in the contested decision (para. 56).

As regards the fact that the names of the funds are composed of the term ‘halder’ to which a number in Roman numerals has been added this does not call into question the conclusion on use of the mark because of their brevity, their weak distinctive character and their ancillary position (para. 58).

The GC concludes that proof of genuine use of the mark Halder has been provided as regards Germany for the relevant period (para. 60). The third plea is rejected without examining the items of evidence relating to the Benelux countries and to Italy (para. 65).

The fourth plea in law: infringement of Article 52 CTMR, read in conjunction with Article 8(1)(b) thereof

As regards the relevant public, in the case of financial services which generally put large sums at stake and require the assistance of accountants, lawyers and specialist bankers, the public concerned will be highly attentive (para. 80). The relevant territory covers Germany (para. 81).


None of the parties disputes that there is a medium degree of similarity between the services at issue (para. 82).

Given the proof of use produced by Alder Capital, the marks to be compared are Halder and ALDER CAPITAL (para. 85).

Visually, the marks differ because of the presence of the element ‘capital’ in one of them and the letter ‘H’ in Halder (para. 86), however, the element ‘capital’ will be perceived as ancillary and it is all the more unlikely to attract attention since it is the second element of the mark (para. 87). As regards the letter ‘H’, it should be noted that that difference between the signs at issue is offset by the fact that the remaining five letters of the mark Halder are the same as those of the element ‘alder’ of the mark ALDER CAPITAL. The signs compared are visually similar overall (para. 88). Phonetically, the consumer’s attention will generally be attracted by the element ‘alder’. For the German public, the ‘H’ of Halder will be pronounced softly but it will not be especially noticeable, particularly when pronounced quickly. The signs at issue are phonetically similar (para. 89). As regards the conceptual aspect, it is not possible to make a conceptual comparison (para. 90)

In the present case, the medium degree of similarity between the services and the high degree of similarity between the signs at issue create a likelihood of confusion, despite the fact that the degree of attention of the relevant public is very high (para. 93).

T TUMESA TUBOS DEL MEDITERRANEO S.A.: T-98/09; Board's case: R0518/2008-4; OD case: B 898 306; CTMA No: 4 085 098; Judgment of 13/04/2011; Language of the case: FR (Action dismissed; Board and Office's practice confirmed)

Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion: signs, goods and services

FACTS: APPLICANT applied to register as a CTM the figurative mark “T TUMESA TUBOS DEL MEDITERRANEO S.A.” for goods and services in Classes 6, 35 and 42. Tubesca filed an opposition based on earlier national and international word and figurative marks “TUBESCA” for goods in Classes 6, 19 and 20. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application

Earlier trade marks

TUBESCA


On appeal, the Board upheld the appeal and rejected the opposition.

Before the General Court, the opponent claims that there is a likelihood of confusion between the opposing marks for consumers displaying average attention or end users, especially since the marks 'TUBESCA' are well known and highly distinctive.


Given the nature of products and services covered by the marks, the relevant public consists of specialized consumers who pay a high degree of attention. Indeed, the goods covered by the earlier marks and the goods and services covered by the mark in question are aimed primarily at an audience of construction professionals (para. 37). The earlier mark is deemed to be registered for “scales of tubular steel or light alloy, tubular scaffolding trestles, ladders,


scaffolding, steps, stepladders metal steel, aluminium, fibreglass, light alloy and metal platforms”. The contested goods and services are in Classes 6, 35 and 42 (para. 45). There is little similarity between the goods covered by the earlier marks and the "portable metal structures”, very little similarity between the goods covered by the earlier marks and other goods in class 6 and a dissimilarity between the goods covered by the earlier marks and the services covered by the mark at issue (para. 67).

As regards the visual comparison, the word “tumesa” has a highly distinctive character due to the facts that it occupies a central position, further, the letter “t” has an ornamental function and the expression “tubos del mediterraneo” is in the lower part of the sign written in small print (para. 72). However, this does not mean that the other verbal and figurative elements of the sign are negligible. In fact, the combination of all the elements creates a visual impression significantly richer and different from that produced by the earlier marks (para. 74). The visual similarity between the marks is low (para. 75).

Secondly, as regards the phonetic comparison, although the words "TUMESA" and TUBESCA of the signs have the same trisyllabic structure, only the “TU” is identical. Moreover, it is necessary to take account of the expression “tubos del mediterraneo”. The pronunciation of this expression lessens the relative similarity between the signs. The degree of phonetic similarity is relatively low (para. 76).

Thirdly, conceptually, the signs in question have no meaning, so the conceptual comparison does not affect the assessment of the similarity of the signs (para. 77).

As regards the argument of the reputation of the earlier marks, it is dismissed because the opponent has failed to demonstrate that the earlier marks were widely known; the only evidence presented in support of his argument is inadmissible (para. 81).

The similarity between the goods in class 6 designated by the trademark in question and those designated by the earlier marks is low, there is a dissimilarity between the goods covered by the earlier marks and the services covered by the CTMA and the signs are only lowly similar in their visual and aural aspects. Thus, given the particularly high level of attention of the consumers concerned, any risk of confusion is excluded (para. 85).

WIR MACHEN DAS BESONDERE EINFACH: T-523/09; Board's case: R0554/2009-2; CTMA No: 7 355 902; Judgment of 13/04/2011; 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: Smart Technologies ULC applied to register as a CTM the word combination “WIR MACHEN DAS BESONDERE EINFACH” for goods in class 9. The Examination Division dismissed the application for all the goods on the basis of Article 7(1)(b) CTMR.

On appeal the Board dismissed the appeal. Before the General Court, the applicant claimed infringement of Article 7(1)(b) CTMR.


The GC recalled the relevant case-law in relation to the distinctiveness of slogans (paras.28-30) and in particular that a mark consisting of an advertising slogan must be regarded as being devoid of distinctive character if it is liable to be perceived by the relevant public as a mere promotional formula. However, such a mark must be recognised as having distinctiveness if, apart from its promotional function, it may be perceived immediately as an indication of the commercial origin of the goods or services in question (para.31).

The GC confirmed that given the technical nature of the computer goods covered by the CTMA and the fact that the mark applied for is made up of German terms, the relevant public will be made up of German speakers who are specialists in the computer field, whose level of knowledge in the area is greater than that of the general public (para.33).

The GC considered that the word combination ‘wir machen das besondere einfach’ can be translated by ‘we make special (things) simple’, thus appears to be an advertising slogan which conveys to the public the laudatory message that the computer goods covered by the application make something specialised or complicated simple (paras.34-35).


The GC agreed with the Board that the slogan follows German rules of syntax and grammar and contains no unusual variations in that regard and that the use of ‘besondere’ together with ‘einfach’ as a noun, or the absence of a comma between the two words, does not introduce any word play or elements of conceptual intrigue or surprise such as to confer distinctive character on the sign mark applied for in the minds of the relevant public (paras.36-37).

The GC recalled that the fact that an internet search did not reveal any uses of the mark applied for linked to third parties does not affect the finding that that mark is merely an advertising slogan referring to the qualities of the goods (para.39).

As to the assertion that the Board made certain statements without supporting evidence, the GC held that nothing prohibits OHIM from taking well-known facts into consideration in its assessment and that the Board’s statements, to the effect that many undertakings applying smart technologies advertise their products as being simple to use, or that consumers are accustomed to short, compact and punchy promotional messages and do not accord trade mark value to such marketing claims, clearly refer to well-known facts (para.41).

The GC recalled that the legality of Board of Appeal decisions must be assessed solely on the basis of that regulation, as interpreted by the European Union judicature, and not on the basis of a previous decision-making practice of the Boards (para.42).

[Device of a shoe]: T-202/09; Board's case: R0224/2007-4; WO designating the EC No: W 881 226; Judgment of 13/04/2011; Language of the case: DE (Action dismissed; Board and Office's practice confirmed)

Keywords: International Registration designating the EU: Examination: Absolute grounds for refusal: distinctiveness

FACTS: Deichmann SE filed an application for an international registration for the following figurative mark for goods in Classes 10 and 25.

CTM application

The examiner refused the protection of the mark in question for all products covered by the international registration designating the Community on the grounds that the mark in question was devoid of distinctive character in the sense of Article 7(1)(b) CTMR.

The applicant filed an appeal. The Board dismissed the appeal. It concluded that, in absence of any “striking feature” or any other distinctive element the average consumer perceives the sign in question as a decorative element or an element to reinforce certain parts of the shoe.

The applicant filed an appeal before the GC.


The distinctiveness of a mark must be assessed, first in relation to the goods or services for which registration or trade mark protection is sought and secondly by reference to the perception of the relevant public.

The protection has been denied for all products for which protection was claimed namely orthopaedic footwear in Class 10 and footwear in Class 25.

The relevant public consists of the average consumer, which is not disputed by the parties (para.28).


The GC concluded that the Board was right in finding that given the banal character of the sign in question, the sign has no feature likely to attract the attention of the relevant public and to distinguish it from other devices on shoes, it can therefore not be apprehended immediately as an indication of trade origin of the goods covered (para.34).

The sign in question will be seen exclusively as a decorative element or reinforcing element of the designated products and it will not enable the relevant public to identify the commercial origin of those products (para.35).

[FORME D'UN PARALLELOGRAMME]: T-159/10; Board's case: R1018/2009-2; CTMA No: 7 576 218; Judgment of 13/04/2011; Language of the case: FR (Action dismissed; Board and Office's practice confirmed)

Keywords: Community trade mark: Examination: Absolute grounds for refusal: distinctiveness

FACTS: Air France applied to register as a CTM the figurative mark shown below for goods and services in Classes 9, 14, 16, 18, 21, 24, 25, 28, 35 to 39 and 41 to 45. The examiner refused the registration on the basis of Article 7(1)(b) CTMR.

CTM application


Before the General Court, the applicant claims infringement of Article 7(1)(b) CTMR as the mark applied for has the requisite minimum level of distinctiveness.


First the GC recalled the relevant case law applied to the assessment of the distinctiveness of figurative signs (paras.12-15).

The applicant does not dispute the findings of the Board that the goods and services are for the general public, which consists of average consumers throughout the EU, expected to be reasonably well informed and reasonably observant and circumspect (para.17).

The applicant argued that the signs applied for would not be perceived by the relevant public as an excessively simple geometric shape like a decorative motif, but as an original sign with a minimum degree of distinctiveness (para.18). The applicant claimed that there was a contradiction in the Board’s statements saying that the sign applied for does not represent a geometrical form and that the sign is excessively simple (para.19). The GC considered that, in the context of the contested decision, the phrase "the sign in question is not a geometric shape" should be understood in the sense that the sign is not a faithful representation of a geometric shape such as a parallelogram, even if that mark is very close to that form. Therefore, there is no contradiction (paras.21-22).

The GC noted that to fulfil the identification function a parallelogram should contain elements which singularise it in relation to other parallelograms’ representations (para.24).

In the case at hand, the GC noted that the two characteristics of the sign are the fact that it is slightly inclined towards the right and that the base is slightly rounded and stretched out towards the left. However, the GC considered that such


nuances would not be perceived by the general consumer and therefore can not be sufficient to dismiss the objection based on Article 7(1)(b) CTMR (paras.25-28).

The GC considered irrelevant that a prize was awarded by professionals to the "corporate logo" of the applicant because it would be carrying an image and a strong identity, since, in any event, the distinctiveness must be shown with respect to the average consumer (para.29).

The GC confirmed the Boards’ finding that the sign will be perceived, by the relevant consumer, as an excessively simple pattern, essentially as an 'oblique and solid parallelogram line' (para.30).

The GC underlined that the Board’s findings could not be reversed by the applicant's argument according to which the sign in question is distinctive, as it would be identified by the relevant public as an 'essential development of the institutional logo’ [shown here below]:

The GC considered that “the institutional logo” produces an overall impression very different from that produced by the mark applied for. The GC also rejected the applicant’s argument that the mark applied for has acquired distinctiveness in consequence of its use as part of a registered trade mark. The GC recalled that the fact that the mark in question consists of an evolution of an already registered mark is irrelevant in this context (paras.31-33). In relation to the evidence produced before the examiner to prove the acquired distinctiveness of the sign (a press release, excerpts from Web pages of Air France, an excerpt from Air France magazine News etc.) the GC confirmed that it is insufficient to establish that the relevant public identifies through the "corporate logo" above, products and services in question as those from Air France (para.35).

Finally, the GC recalled that the legality of decisions of the Boards must be assessed solely on the basis of the CTMR, as interpreted by the Court and not on the basis of previous decisions (para.37).

U.S. POLO ASSN: T-228/09; Board's case: R0886/2008-4; OD case: B 1 012 337; CTMA No: 4 567 483; Judgment of 13/04/2011; Language of the case: EN (Action dismissed; Board and Office's practice confirmed)


FACTS: United States Polo Association filed a CTM application for the word sign U.S. POLO ASSN. for goods in classes 9, 20, 21, 24 and 27. Textiles CMG SA filed an opposition against the goods in class 24. It was based on the earlier Spanish national registration and earlier CTM of the sign POLO-POLO for goods in Class 24 and services in Classes 35 and 39. The opposition was based on the goods in Class 24 of the earlier trade marks and was directed against the goods in Class 24 of the CTMA. The opponent relied on Article 8(1)(b) CTMR.

CTM application Earlier Spanish TM/Earlier CTM

U.S. POLO ASSN POLO-POLO

The Opposition Division allowed the opposition.

The applicant filed an appeal. On appeal, the Board dismissed the appeal. It concluded that in view of the identity of the goods and the visual, phonetic and conceptual similarities between the signs at issue there was a likelihood of confusion on the part of the relevant public, namely the average consumer in the European Union.

The applicant filed an appeal at the GC.



The parties agreed that the relevant public, in the sector of textile goods, is composed of average consumers in the EU (para.24). The GC concluded that the Board was right in holding that the relevant public did not demonstrate a high level of attention (para.25).

The applicant did not dispute that the goods are identical (para.27).

The contested decision was not based on the dominant character of the word 'polo' and the Board did not make its assessment by comparing the signs at issue in the light of that element (para.33).

The GC concluded that the Board was right in finding that the signs at issue were visually similar to a medium degree (para.39). Phonetically, the GC found that the signs were similar to a medium degree (para.41). The GC agreed with the conclusion of the Board that the signs at issue were conceptually similar to a medium degree (para.49).

Overall, the signs were considered similar to a medium degree. The GC found that the Board was correct in finding that there was a likelihood of confusion between the marks at issue (para.60).

TORO DE PIEDRA: T-358/09; Board's case: R1117/2008-2; OD case: B 875 809; CTMA No: 4 000 501; Judgment of 13/04/2011; Language of the case: EN (Action dismissed; Board and Office's practice confirmed)


FACTS: Sociedad Agricola Requingua Ltda. filed a CTMA for the word mark “TORO DE PIEDRA” in respect of goods in class 33. Consejo Regulador de la Denominación de Origen Toro filed a notice of opposition against the CTMA mentioned before on the ground of Article 8(1)(b) CTMR. It was based on two figurative marks including the word “TORO” registered for goods in class 33.

CTM Application Earlier CTM and Spanish mark

TORO DE PIEDRA

The Opposition Division upheld the opposition for all the contested goods.

The Board dismissed the appeal considering that the goods are identical, the signs similar and that the consumers, prone to imperfect recollection and unable to see the products side-by-side, might think that the marks belong to the same trader, because the contested mark would be perceived as a simple variation of the earlier mark to designate identical goods.

SUBSTANCE: the appeal is dismissed.

1. First plea: Infringement of Article 8(1)(b) CTMR

In the present case the protection of the earlier trade mark extends to the territory of the EU. As the goods are wines, the consumer will show an average level of attention when purchasing them. It is common ground that the goods are identical (paras.28-30).


With regard to the visual comparison of the signs, the GC confirmed that the fact that the word ‘toro’ is present in both marks constitutes a particularly important factor of similarity, in view of the considerable role that it plays in the perception of each of those marks by the relevant public. Nevertheless, since the signs at issue also have word and figurative differences, the Board rightly found that there was an average level of similarity between the signs (para.34).

Due to the identical pronunciation of the word ‘toro’, the fact that the signs at issue consist of five syllables and since the other word elements of the signs are pronounced differently, the GC concluded that there is an average degree of phonetic similarity between the signs.

Conceptually, the word ‘toro’ will be perceived by a part of the relevant public – particularly Romance language speaking consumers – as a reference to an animal (bull). That impression of similarity will be reinforced at least by the Spanish language speaking public, as a reference to a stone bull, which corresponds to the figurative component present in the foreground of the earlier trade mark (paras.37-38).

The applicant claimed that in the case of the earlier trade mark the word ‘toro’ will be understood as a reference to a wine-producing region and, in the case of the trade mark applied for, it will be associated with the animal. The GC did not find that argument convincing. If such were the case, since the goods covered by the CTMA consist of wines, it should logically be concluded that the word ‘toro’ appearing in it will also be understood as a reference to a wine-producing region, which would result in the signs at issue being conceptually similar.

Consequently, given that the marks at issue are, at least for a part of the relevant public, strongly similar on a conceptual level and have an average degree of phonetic and visual similarity, the GC held that they are similar overall.

In the global assessment of the likelihood of confusion, since, first, the goods covered by the marks at issue were identical and, second, the signs at issue were similar, the Board rightly found that there is a likelihood of confusion on the part of the relevant public.

2. Second plea: Infringement of Article 75, second sentence CTMR

The GC recalled that the rights of the defence are infringed by reason of a procedural irregularity only in so far as the irregularity has actually had an effect on the ability of the person concerned to defend himself. Consequently, non-compliance with rules in force whose purpose is to protect the rights of the defence can vitiate the administrative procedure only if it is shown that the latter could have had a different outcome if the rules had been observed. As stated in the context of examining the first plea, the GC confirmed that the Board was fully entitled to find that there was a likelihood of confusion. Accordingly, the second plea in law was rejected (paras.52-54).

3. Third plea: Infringement of Article 75, first sentence CTMR

The GC recalled that it is settled case-law that that the duty to state the reasons on which decisions are based has the same scope as that laid down by Article 253 EC and its purpose is, first, to allow interested parties to know the justification for the measure adopted so as to enable them to protect their rights and, second, to enable the EU judicature to review the legality of the decision (para.57). However, the Board cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. The reasoning may therefore be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (para.58).

In the present case, the GC confirmed that the reasoning in the decision enabled the parties fully to understand the reasons for the Board’s decision and provided the Court with sufficient material for it to exercise its power of review. The contested decision is not, therefore, vitiated by any defect in the statement of the reasons on which it is based. The third plea was rejected, and therefore the action was dismissed as a whole (paras.59-61).

BINGO SHOWALL: T-179/10; Board's case: R0666/2009-2; OD case: B 1 247 412; CTMA No: 6 059 919; Office response filed on 07/07/2010; Language of the case: ES

Keywords: Community trade mark: Opposition: likelihood of confusion (LOC): comparison of goods, comparison of marks.


FACTS: Zitro IP applied to register as a CTM the word “BINGO SHOWALL” for goods and services in Classes 9, 28 and 41. Show Ball Informática filed an opposition based on the earlier CTM for the word “SHOW BALL” registered for goods and services in classes 9 and 42. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application Earlier CTM

BINGO SHOWALL



Before the General Court, the applicant claims infringement of Article 8(1)(b) CTMR since there is no likelihood of confusion between the signs at issue.

SUBSTANCE: the appeal is dismissed.

The earlier mark is a CTM, the territory against which the risk of confusion must be appreciated is the EU. The GC confirmed that the relevant public includes EU consumers who do not understand English or understand very little English; therefore the Board examined the risk of confusion only in that part of the Community in which a significant part of the relevant public understands none or very little English (para.22).

It is not disputed that the products and services in question are identical or similar (para.23)

The GC confirmed the dominant element in the CTMA is "showall" (para.30). The GC continued saying that although the initial part of word marks is likely to retain the consumer's attention more than the following parts, this consideration does not apply in all cases (para.31). In the case at hand, the term "bingo" can be understood by the relevant public as the bingo game or as an expression of surprise. Taking into account that the goods and services in question are games or game-related, the GC also considered that the element bingo had a low degree of distinctiveness.

The GC confirmed that given that the relevant public would take the word 'bingo' as secondary in relation to the element showall, phonetically, there was a moderate degree of similarity between the marks.

The GC rejected the applicant’s arguments about the different meanings of both signs. The Court considered that the relevant public, with none or little knowledge of English would not understand the meaning of the element "showall", since it is neither a common term in the languages of most Member States nor a common term in the English language. The relevant consumer will only understand the term "show", so that the element "showall" will be seen as a reference to a certain show. Therefore, the Board was right to say that term BINGO was not sufficient to counteract the visual and phonetic similarities between the signs (paras.37-41).

The GC concluded that the marks were similar, although not to a high degree (para.42).

The GC confirmed the Board conclusion that given the similarity or identity of goods and services and given the similarity of the marks for the relevant public which understands no or very little English there was a likelihood of confusion between the marks (para.44).

FIRST DEFENSE: T-362/09 (previous case T-6/05); Board's case: R0493/2002-4 (previous case R0493/2002-2); OD case: Dec. No 0722-2002; CTMA No: 643 668; Judgment of 13/04/2011; Language of the case: EN (Action dismissed; Board and Office's practice confirmed)

Keywords: Community trade mark: Opposition: Relative grounds for refusal: mark filed by an agent

FACTS: DEF-TEC technology GmbH (the applicant), was the agent of Wyoming Company, the predecessor in law of the opponent (Safariland LLC) from May 1995 until summer or beginning of autumn 1997.


In June 1996, the predecessor of the opponent (Wyoming Company), waived all its rights it held in respect of the European territory and consented to the registration of the trade marks FIRST DEFENSE and FIRST DEFENSE AEROSOL PEPPER in Europe by the applicant.

Later in 1996, the opponent purchased the assets of the Wyoming company, including the trade name, the trade marks in the United States and the defence spray product range.

After the termination of its distribution agreement, the applicant filed the CTMA for the figurative mark FIRST DEFENSE AEROSOL PEPPER PROJECTOR for goods in Classes 5, 8 and 13.

The opponent filed an opposition against the registration of the CTMA and based it opposition on Article 8(3) CTMR, on the view that DEF-TEC was its agent and that DEF-TEC had applied, without the opponent’s consent for the registration of a sign that is very similar to the following trade marks registered in the United States: the word mark FIRST DEFENSE for goods in Class 13, and two figurative marks for goods in Class 13 represented bellow.


The Opposition Division partially allowed the opposition and rejected the sign for a part of the goods in Classes 8 and 13. The applicant filed an appeal at the Board. By its first decision (R0493/2002-2) the Board dismissed the appeal.

The applicant filed an appeal at the GC (T-6/05) and the GC annulled the first decision of the Board inasmuch as the Board had failed to have regard to the validity of the consent of June 1996. The GC came to the conclusion that ‘[i]n that context, it was a matter for the Board to determine, in particular, whether the consent obtained by the applicant on 1 June 1996 had survived the purchase of the assets of the Wyoming [company]’ and that, ‘[i]f so, it ought to have examined whether, on the day of the application for registration of the mark, the opponent was still bound by that consent’. Lastly, the GC found that, ‘[i]f the opponent was no longer bound by that consent, the Board ought then to have determined whether the applicant had a valid justification which could offset the lack of such consent’.

The case was re-allocated to the fourth Board (R0493/2002-4). According to the Board of Appeal, the opponent (Safariland) could have relied on Article 8(3) CTMR only if it had itself become the applicant’s principal. Safariland does not submit that there was any contractual relationship between the parties to the opposition proceedings and such a relationship cannot be inferred from the fact that Safariland continued to behave as if no transfer of assets had taken place. In order to establish that there was a new agent-principal relationship; Safariland would have to show that the applicant was aware that it was now doing business with another company (para.28).

The Board found that, even if the applicant could be regarded as Safariland’s agent, its actions would be justified, since the conduct of Safariland – which consistently acted as if there had been no transfer and neither concluded a new business agreement with the other party nor formally revoked its predecessor’s consent – gave DEF-TEC sufficient reasons to believe that it was entitled to file the trade mark in its own name (para.29).

Having found that the opposition could not be upheld on the basis of Article 8(3) CTMR, the Board examined the other grounds and bases of opposition invoked by Safariland, namely the Well-known marks and unregistered rights in the sign FIRST DEFENSE AND DEVICE (regarded as inadmissible) and the earlier well-known mark and non-registered mark in Belgium, Germany and France FIRST DEFENSE (unsubstantiated) and the trade name FIRST DEFENSE protected in Germany (not substantiated either).



1. Second plea: Infringement of Article 65(5) CTMR

Under Article 65(6) CTMR, OHIM is required to take the measures necessary to comply with a judgment delivered by one of the Courts of the EU (para.39).

The GC concluded that the Board was under a duty to examine all the conditions required under Article 8(3) CTMR, including the condition relating to the existence of an agent principal relationship, upon which the condition of consent was necessarily predicated, in the light of the new relationship binding the new proprietor of the marks and DEF-TEC. Consequently, and contrary to the assertions made by Safariland, the Board took the measures necessary to comply with the GC’s judgment (para.49).

It follows from the foregoing that the Board did not breach Article 65(6) CTMR by examining the existence of an agent-principal relationship (para.50). The second plea must therefore be rejected (para 51).

2. First plea: Infringement of Article 8(3) CTMR

Safariland submits, in essence, that the Board breached Article 8(3) CTMR in so far as it did not accept that that provision conferred on Safariland the right to oppose the registration of the CTM by DEF-TEC in its own name.

The GC examined if, in the present case, the conditions required by Article 8(3) CTMR were satisfied.

The first condition: proprietorship of the earlier marks

Through the purchase of the Wyoming Company’s assets, Safariland acquired the American marks, which include the mark in respect of which registration has been applied for. Safariland is therefore the proprietor of the earlier marks for the purposes of Article 8(3) CTMR – a point, moreover, which DEF-TEC does not dispute (para.63).

The second condition: the existence of an agent-principal relationship

The GC concluded that, since Safariland has not furnished proof that there was an agreement with DEF-TEC of the kind which links a principal and its agent, Safariland cannot enjoy the protection conferred by Article 8(3) CTMR and oppose the registration of the disputed mark on that basis simply by virtue of its status as proprietor of the earlier marks (para.73).

In view of the foregoing, the GC held that the Board was right to find that the condition required by Article 8(3) CTMR, relating to the existence of an agent-principal relationship, was not satisfied, with the result that that provision was not applicable. The first plea must therefore be rejected without it being necessary to examine the arguments put forward by Safariland regarding the other conditions, including the arguments relating to the similarity of the goods covered by the marks at issue (para.74).

3. Third plea: Infringement of Articles 63(2), 75 and 76 CTMR

Safariland submits that the Board breached Article 63(2) CTMR in so far as it did not invite the parties to the opposition proceedings to submit their observations following the reopening of the proceedings as a result of the annulment of the first Board decision of 2004 by the GC’s judgment. Safariland further submits that the Board disregarded its right to be heard and the rights of the defence, protection of which is guaranteed by Article 75 CTMR, first, because the Board did not give Safariland the opportunity to comment on the GC’s judgment before it issued a new decision and, secondly, because the Board did not examine the arguments and evidence in their entirety (para.75).

The right of the parties to the opposition proceeding to be heard in respect of the interpretation of the General Court’s judgment

In the present case, it is common ground that, in the course of the proceedings which led to the adoption of the first Board decision, Safariland had had the opportunity to present its observations on all aspects of its opposition pursuant to Article 8(3) CTMR, including the existence of an agent-principal relationship. Furthermore, there is nothing in the second Board decision to suggest that the Board relied on matters of law and of fact different from those available to the Board at the time of its first decision (para.85).


Nor, accordingly, can it be claimed that the Board disregarded Article 63(2) CTMR, which provides that the Board is to invite the parties as often as necessary to file observations on communications issued by itself or from the other parties (para.87)

Thus, neither the second sentence of Article 75 CTMR, nor Article 63(2) of that regulation, nor Article 65(6) thereof required that Safariland be heard regarding the inferences to be drawn from the General Court’s judgment (para.88).

The statement of the reasons on which the contested decision was based

The Board did not act in breach of its obligation to state reasons by assessing the arguments put forward by Safariland and the probative value of the evidence produced in support of those arguments for the purposes of proving the existence of an agent-principal relationship between the parties to the opposition proceedings, and by rejecting them (Para 94.).

It follows that, according to the case-law cited in paragraph 92 above, the Board of Appeal did not act in breach of its obligation to state reasons. The first two parts of the third plea must therefore be rejected (para.96).

Since Safariland is alleging breach of Article 76 CTMR in a general manner, without relying on specific arguments, the third part of the present plea must be rejected as inadmissible (para.100).

In the light of the foregoing, the third plea must be rejected and, in consequence, the action must be dismissed in its entirety (para.104).

Tila March: T-433/09; Board's case: R1538/2008-2; OD case: B 1 175 280; CTMA No: 5 402 722; Judgment of 14/11/2011; Language of the case: FR (Action dismissed; Board and Office's practice confirmed)


FACTS: TTNB, Société à Responsabilité Limitée applied to register as a CTM the words “Tila March” for goods in classes 3, 18 and 25. Ms Carmen March Juan filed an opposition based on the earlier Spanish trade mark shown below registered, among others, for goods in classes 3, 18 and 25. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application

Earlier Spanish TM

Tila March

The Opposition Division dismissed the opposition.

On appeal the Board upheld the appeal.

Before the General Court, the applicant claims infringement of Article 8(1)(b) CTMR since there is no likelihood of confusion between the conflicting marks.


The goods in question are identical (para. 21) and the relevant public is in Spain (para. 22). Since the goods are products of everyday consumption, the relevant public consists of average consumers, supposed to be reasonably well informed and reasonably observant and circumspect (para. 23).

The association of “Carmen” and “March” will lead the relevant public to believe that the earlier mark consists of a name followed by surname, especially because the name “Carmen” is frequently used in Spain and the surname “March” is known to that public. In the clothing, fashion or beauty markets the use of signs consisting of names and surnames is common. The term “March”, even if it is a surname known in Spain, is rather infrequent. This element is therefore


distinctive in relation to the products concerned. Under these conditions, and insofar as the name Carmen is quite common in Spain, it must be held that the term “March” is the most distinctive element in the earlier mark (para. 30). As regards the mark applied for, the association of “Tila” and “March” may also be perceived as referring to a given name followed by surname. This is reinforced because the mark uses an initial capital in “Tila” and in “March” which is usual in the presentation of names and surnames. For the same reasons as stated before, the element “March” is distinctive. While the term “Tila” is distinctive, the term “March” is actually the most distinctive element of the mark applied for (para. 31). As regards the visual comparison, while the first word elements (the names) are completely different, the identity of the distinctive elements (the surnames) confers a degree of visual similarity (para. 34).

With regard to the aural comparison, the element “march” is positioned in the marks at issue in the same place and will be pronounced identically by the relevant public. Moreover, since the marks have both three syllables there is an identical rhythm. Further, since the sequence of letters 'arch' is not common in Spanish, especially at the end of words, the word “March” will necessarily affect the aural signs in conflict with the relevant public. The signs have an element which is aurally identical (para. 42 to 47).

As regards the comparison of the signs on the conceptual level, despite the differences between the first elements of the signs, it should be considered that the public will perceive the marks as names and followed by surname, where the common element “March” renders the marks conceptually similar (para. 49 to 53).

Given the visual, aural and conceptual similarities between the marks because of a common distinctive element, it must be concluded that the existence of a similarity between these marks is established. Furthermore, it should be noted that the products concerned are identical (para. 57).

In the relevant market the use of signs consisting of names and surnames is common. Moreover, one can assume that, in general, a rare last name, as the present one, appear less frequently than a very common surname. In these circumstances, the relevant consumer may believe in the existence of an economic link between all the owners of trademarks containing the surname “March” (para. 59).

In the light of the foregoing, it is concluded that, given the identity of the products concerned, the degree of attention of the relevant public and similarities between the conflicting signs regarding, in particular, the existence a common distinctive element, the differences between those signs are not sufficient to eliminate any risk of confusion between the marks (para. 60).

PUERTA DE LA BASTIDA: T-345/09; Board's case: R1021/2008-1; OD case: B 990 947; CTMA No: 4 473 278; Judgment of 14/04/2011; Language of the case: ES (Action dismissed; Board and Office's practice confirmed)

Keywords: Community trade mark: Opposition: Genuine use: assessment; Relative grounds for refusal: likelihood of confusion

FACTS: Bodegas y Viñedos Puerta de Labastida, SL applied for the CTM “PUERTA DE LABASTIDA” for goods and services in classes 29, 33 and 35. Unión de Cosecheros de Labastida, S. Coop. Ltda filed an opposition on the basis of various earlier registered trade marks (Spanish and CTMs) for the expression “CASTILLO LABASTIDA” for goods and services in classes 33, 35, 39 and 43. The ground of the opposition was Article 8(1)(b) CTMR. During the opposition proceedings, the applicant requested the opponent to file evidence of use and the opponent furnished documents to show such use.

CTM Application Earlier marks PUERTA DE LABASTIDA CASTILLO LABASTIDA

The Opposition Division accepted that the opponent had successfully proven use for wines and partially upheld the opposition for some of the goods and services.

The applicant appealed and the Board dismissed the appeal and confirmed the findings of the Opposition Division.


Before the GC the applicant claims infringement of Articles 42 and 8(1)(b) CTMR.


The first plea, alleging infringement of Article 42, paragraphs 2 and 3 CTMR

The opponent filed as evidence of use copies of invoices, copies of wine bottle labels bearing the mark, printouts of two Internet sites which offer wine under the earlier marks as well as a newspaper article with a reference to the marks, copies of awards won by the wines bearing the mark and undated copies of catalogues (para. 29) First, although some invoices do not specifically mention the marks “CASTILLO LABASTIDA” or “CASTILLO DE LA BASTIDA” but just the initials “CL”, these initials appear in the catalogues along with products where the marks are shown, so there is a match between the information contained in catalogues and the abbreviations in the invoices (para. 31). Some of the invoices show the sale of large amounts of wine during the relevant period (para. 35 and 36).

Second, although the catalogues are not dated, and even if they were dated outside the relevant period, it should be noted that in assessing the genuineness of the use it is possible to take into consideration circumstances happened after the end of the relevant period. Such elements may help to confirm or better assess the extent of use of the mark in the relevant period and the real intentions of the holder (para. 34).

The evidence filed shows genuine use of the earlier marks (para. 38).

The second plea, alleging infringement of Article 8, paragraph 1, letter b) CTMR

Since the goods and services (in classes 33 and 43) are for everyday consumption, the public is the average consumer who is well informed and reasonably observant and circumspect. As regards the services in classes 35 and 39 these are intended for professionals in relevant fields. The territory is that of the European Union (paras. 44 and 45).

The similarity between the goods and services

The goods in class 33 are identical (para. 49). With respect to services in Class 35, it should be emphasized that despite the discrepancy in their formulation, the "exclusive commercial representatives, wholesale and retail, export and import" in the mark applied for are, identical, or at least very similar to the services' advertising, business management, business administration, office and retailing of agricultural products, food and beverage, as well as the franchises' (para. 50).

As regards the comparison between on the one hand the applicant’s goods in class 29 "meat, fish, poultry and game, meat extracts, fruit and vegetable preserves, dried and cooked, jellies, jams , compotes, eggs, milk and milk products” and, on the other, the opponent’s “restaurant services (food)” in class 43, it is undeniable that they do not have the same nature or purpose, however, it should be noted that the products in class 29 are complementary to the services in class 43. In addition, these services can be rendered in the same outlets that sell such products. Furthermore, there is an undeniable similarity between the products covered by the mark applied for in class 29 and the opponent’s services in class 35 "retailing of agricultural products, food and beverages".

All the goods and services are either identical or similar (para. 54).

The similarity between the signs

Visually, the signs have some degree of similarity, since both include the element “Labastida” despite their initial elements (para. 58); phonetically, while the first word is pronounced differently, given the identity of the second word, there is some phonetic similarity (para. 59); finally, as regards the conceptual comparison, it should be noted that the words "PUERTA" [door] and "CASTILLO" [castle] are perfectly understood by the average Spanish consumer. Given that the common element “Labastida” is the name of a town located in northern Spain, there is a conceptual similarity (para. 60). While the consumer normally attaches more importance to the initial part of the signs (para. 61), in this case, the distinctive character of the element “Labastida” is reinforced by the syntactic structure and the presence of the preposition


“DE” [of] indicating that the term “Labastida” is a specific name where the words “PUERTA” and “CASTILLO” are generic (para. 62).

The applicant argues that the word “Labastida” is a geographical term whose use cannot be monopolized by one company (para. 63). The GC, however, notes that even assuming that the Spanish public knows that Labastida is a town in the Rioja region, nothing indicates that other consumers, such as those in Germany or the United Kingdom, will associate this term to a GI or a wine producing area. Further, the applicant has not, in any case, proven that the term “Labastida” is a geographical indication within the meaning of Article 7(1)(j). In this regard, the term “Labastida” does not appear in the list of quality wines produced in specified regions (para. 64).

In any event, even if the applicant was challenging the validity of the earlier trade marks at the light of article 7(1)(j) CTMR, the GC notes that the grounds for refusal under Article 7 CTMR are not reviewed in opposition proceedings. If the applicant considers that the registration of the earlier Community trade marks CASTILLO LABASTIDA violates the provisions of Article 7 CTMR, it should have submitted an application for annulment under Article 52 of the Regulation (para. 65).

Consequently, the signs are similar, having regard, in particular, to the identity of their most distinctive and common element (para. 66)

The likelihood of confusion

The products and services in classes 33 and 35 are identical or at least very similar and the goods included in class 29 are similar to services in classes 35 and 43. In addition, there is a similarity from an aural, visual and conceptual point of view, at least with respect to the Spanish public (para. 68), it follows from this that there is a risk of confusion (para. 70).

C-2: General Court: Developments in pending cases

PENTEO: T-585/10; Board's case: R0774/2010-1; OD case: B 1 191 782; CTMA No: 5 480 561; Office response filed on 23/03/2011; Language of the case: EN


FACTS: Aitic Penteo, SA applied to register as a CTM the word “PENTEO” for goods and services in classes 9, 38 and 42. Atos Worldline SA filed an opposition based on an earlier Benelux trade mark registration of the word mark "XENTEO" for goods and services in classes 9, 36, 37, 38 and 42; and International trade mark registration of the word mark "XENTEO" for goods and services in classes 9, 36, 37, 38 and 42. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application Earlier TMs PENTEO XENTEO

The Opposition Division upheld the opposition.


Before the General Court, the applicant considers that the contested decision infringes: (i) Article 14 of the Convention for the Protection of Human Rights and Fundamental Freedoms, which prohibits any discrimination, requiring an equal treatment accordingly with the law, (ii) Article 9 CTMR, as the Board of Appeal disregarded the prior rights of the applicant, (iii) Articles 75 and 76 CTMR as the Board of Appeal disregarded facts and evidences submitted in due time by the applicant, and (iv) Article 8(1)(b) CTMR as the Board of Appeal erred in assessment of likelihood of confusion.


[Tete de loup]: T-570/10; Board's case: R0425/2010-2; OD case: B 1 092 404; CTMA No: 4 971 511; Office response filed on 24/03/2011; Language of the case: EN

Keywords: Community trade mark: Opposition: Genuine use: assessment; Relative grounds for refusal: reputation

FACTS: Environmental Manufacturing LLP applied to register as a CTM the figurative mark shown below for goods in class 7. Société Elmar Wolf, SAS filed an opposition based on a French trade mark registration of the figurative mark "WOLF Jardin" for goods in classes 1, 5, 7, 8, 12 and 31; a French trade mark registration of the figurative mark "Outils WOLF" for goods in classes 7 and 8; an International trade mark registration of the figurative mark "Outils WOLF" for goods in classes 7 and 8; and an International trade mark registration of the figurative mark "Outils WOLF" for goods in classes 7, 8, 12 and 21. The grounds were those laid down in Article 8(1)(b) and 8(4)(5) CTMR. 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

Earlier TMs


On appeal, the Board upheld the appeal and rejected the contested CTMA.

Before the General Court, the applicant contends that the contested decision infringes Articles 42(2) and 42(3) CTMR as the Board of Appeal failed to identify within the class of products for which the earlier marks were registered a coherent sub-category capable of being viewed independently of the wider class, and therefore failed to conclude that there had only been proof that the mark has been put to genuine use in relation to part of the goods for which the marks were protected. In addition, the applicant contends that the contested decision infringes Article 8(5) CTMR as the Board of Appeal misidentified the relevant consumer, wrongly concluded that there would be a relevant link and failed to apply the criterion of an effect on the economic behaviour of the relevant consumer and the criterion that in order to be considered unfair, the mark must transfer some image or confer some marketing boost to the junior users' goods, which was not the case. Further the Board of Appeal failed to realise that the proprietor of the earlier mark had not even correctly alleged the relevant harm under Article 8(5), still less proved that it was likely, and had therefore failed to discharge the burden upon it.

GAZI HELLIM: T-535/10; Board's case: R1497/2009-4; OD case: B 1 033 770; CTMA No: 4 764 619; Office response filed on 24/03/2011; Language of the case: DE

Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion: signs, goods and services confusion between the marks

FACTS: Garmo AG applied to register as a CTM the figurative mark shown below for goods in class 29. Organismos Kypriakis Galaktokomikis Viomichanias filed an opposition based on the earlier the collective word mark 'HALLOUMI' for goods in Class 29. The grounds were those laid down in Article 8(1)(b) CTMR.


CTM application Earlier collective mark

HALLUMI



Before the General Court, the opponent claims infringement of Article 8(1)(b) CTMR as the marks and goods at issue are similar and there is a likelihood of confusion between the marks.

Mybaby: T-523/10; Board's case: R0088/2009-4; OD case: B 1 082 736; CTMA No: 4 894 416; Office response filed on 24/03/2011; Language of the case: DE

Keywords: Community trade mark: Opposition: Substantiation

FACTS: XXXLutz Marken GmbH applied to register as a CTM the figurative mark shown below for goods in class 28. Interkobo Sp. z o.o. filed an opposition based on the earlier national word mark 'MYBABY', a national figurative mark 'mybaby' and an international word mark 'MYBABY' for goods in Class 28. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application

Earlier TMs

MYBABY


On appeal, the Board annulled the decision and rejected the opposition.

Before the General Court, the opponent claims breach of Rule 20(1), in conjunction with Rule 19(2)(a)(i) and (ii) and Rule 19(3) CTMIR and infringement of the right to seek protection of legitimate expectations.

ZAPPER-CLICK: T-360/10; Board's case: R1795/2008-4; CD case: 2195C; CTMA No: 3 870 284; Office response filed on 24/03/2011; Language of the case: EN

Keywords: Community trade mark: Invalidity: Bad faith; Substantiation

FACTS: Tecnimed Srl is the proprietor of a registered CTM for the word mark "ZAPPER-CLICK" for goods in classes 5, 9 and 10. Ecobrands Ltd filed a request for invalidity on bad faith and on relative grounds. This request was based on various earlier Italian trade mark registrations for the words "CLICK", "MOUSTI CLICK", "ECO-CLICK", "ZANZA CLICK", for goods in class 10; an International trade mark registration of the word mark "MOUSTI CLICK", for goods in class 10; a Non-registered trade mark of the word mark "CLICK", protected in the United Kingdom; and a Non-registered trade mark


of the word mark "ZANZA CLICK", protected in the United Kingdom. The grounds were those laid down in Articles 52(1)(b), 53(1), 8(2) (3), (4) and (5) CTMR.

CTM Earlier rights

ZAPPER-CLICK

CLICK MOUSTI CLICKECO-CLICK ZANZA CLICK

The Cancellation Division partly upheld the invalidity request.

On appeal, the Board upheld the appeal filed by the proprietor and annulled the decision of the Cancellation Division thereby dismissing the invalidity request.

Before the General Court, the applicant claims infringement and misinterpretation of Article 52(1)(b) CTMR as the Board of Appeal wrongfully excluded "bad faith". Infringement and misinterpretation of Rules 38(2), 39(2), 39(3) and 96(2) of CTMIR, as the Board of Appeal wrongfully related inadmissibility of the ground of action to the alleged omitted translation of the documents, and as it did not consider that the translation had been provided by the applicant. Misapplication of Articles 53(1)(a) and 8(1)(b) CTMR as the Board of Appeal misused its power. Violation and misinterpretation of Articles 53(1)(b) and 8(3) CTMR as the Board of Appeal wrongfully hold that misappropriation had to be excluded since the trademarks at issue were not identical. Violation of Articles 53(1)(c) and 8(4) CTMR as the Board of Appeal wrongly excluded passing off and wrongly stated that the file does not provide evidence about the way the product was presented on the market.

Highprotect: T-565/10; Board's case: R1038/2010-1; CTMA No: 8 746 638; Office response filed on 30/03/2011; Language of the case: DE

Keywords: Community trade mark: Examination: Absolute grounds for refusal: descriptiveness, distinctiveness

FACTS: ThyssenKrupp Steel Europe AG applied to register as a CTM the word “Highprotect” for goods in Class 6. 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 since the trade mark concerned is not devoid of distinctive character and is not descriptive.

X-Undergear: T-581/10; Board's case: R1580/2009-1; OD case: B 923 435; CTMA No: 4 211 454; Office response filed on 30/03/2011; Language of the case: DE


FACTS: X Technology Swiss GmbH applied to register as a CTM the word mark 'X-Undergear' for goods and services in Classes 23 and 25. Brawn LLC filed an opposition based on various national and Community word marks 'UNDERGEAR' for goods in Class 25. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application

Earlier TMs

X-Undergear UNDERGEAR




Before the General Court, the applicant claims infringement of Article 8(1)(b) CTMR since there is no likelihood of confusion between the two marks at issue.

FLT-1: T-571/10; Board's case: R1387/2009-1; OD case: B 1 143 629; CTMA No: 5 026 372; Office response filed on 30/03/2011; Language of the case: PL


FACTS: Fabryka !o"ysk Tocznych-Kra#nik S.A. applied to register as a CTM the figurative trade mark 'F!T-1' for goods in Class 7. Impexmetal S.A. filed an opposition based on the earlier Community figurative trade marks 'F!T' and national verbal and figurative trade marks 'F!T' for goods in Class 7. The grounds were those laid down in Article 8(1)(b) CTMR.


The Opposition Division partly upheld the opposition and the CTMA was rejected in respect of several goods in Class 7 On appeal, the Board dismissed the appeal.

Before the General Court, the applicant claims breach of Article 8(1)(b) CTMR by reason of a misappraisal of the similarity of the opposing marks; failure to have regard for the fact that the trade mark applied for constitutes part of the name of the applicant company, which has been used long before the date of the application, and is a historically well-founded designation distinguishing the applicant; and failure to take account of the long-lasting and peaceful co-existence of the trade mark applied for and the trade marks cited in opposition.

TEQUILA MATADOR: T-584/10; Board's case: R1162/2009-2; OD case: B 929 465; CTMA No: 3 975 117; Office response filed on 05/04/2011; Language of the case: EN

Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion: goods and services

FACTS: Tequila Cuervo, SA de CV applied to register as a CTM the figurative mark "TEQUILA MATADOR HECHO EN MEXICO", for goods in class 33 (“Alcoholic beverages, premixed alcoholic cocktails, tequila originating in Mexico and tequila liqueurs originating in Mexico”). Mustafa Yilmaz filed an opposition based on the earlier German trade mark registration of the word mark "MATADOR" for goods in class 32; and an International trade mark registration of the word mark "MATADOR" for goods in class 32 (“beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages”). The grounds were those laid down in Article


8(1)(b) CTMR.

CTM application

Earlier DE and WO

MATADOR


On appeal, the Board upheld the appeal and dismissed the opposition.

Before the General Court, the opponent claims infringement of Article 8(1)(b) CTMR as the Board of Appeal wrongly assessed that there was no likelihood of confusion, as the trade marks in question are confusingly similar with regard to the goods for which the applied for trade mark seeks protection.

CONFORTEL AQUA 4: T-521/10; Board's case: R-1359/2009-2; OD case: B 1 134 370; CTMA No: 5 276 951; Office response filed on 05/04/2011; Language of the case: ES

Keywords: Community trade mark: Opposition: Relative grounds for refusal: likelihood of confusion: signs; goods and services

FACTS: Confortel Gestión, SA. applied to register as a CTM the word mark 'CONFORTEL Aqua 4' for services in classes 41, 43 and 44. Homargrup, SA filed an opposition based on the earlier Community word mark 'AQUA' and Community figurative mark 'A AQUA HOTEL' and Spanish word marks 'AQUAMARINA' and 'AQUATEL', and Spanish figurative mark 'AQUAMAR', for services in Class 42.. The grounds were those laid down in Article 8(1)(b) CTMR.

CTM application Earlier CTM and Spanish

CONFORTEL AQUA 4

AQUA AQUAMARINA AQUATEL




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.

FAGUMIT: T-537/10; Board's case: R1002/2009-1; CD case: 2811C; CTMA No: 3 005 980; Office response filed on 05/04/2011; Language of the case: DE

Keywords: Community trade mark: Invalidity: Relative grounds for refusal: other sign used in the course of trade; Relative grounds for refusal: mark filed by an agent; Absolute grounds for refusal: bad faith FACTS: Ursula Adamowski is the proprietor of a registered CTM for the figurative mark containing the word element 'FAGUMIT' for goods in Classes 12 and 17. Fabryka W$"y Gumowych i Tworzyw Sztucznych Fagumit Sp. z o.o. filed a request for invalidity both on relative and absolute grounds. This request was based on various earlier National figurative marks containing the word element 'FAGUMIT' for goods in Class 17. The grounds were those laid down in Article 53(1)(c) in conjunction with Articles 8(4) and Article 8(3) and Article 52(1)(b) CTMR.

CTM Earlier TMs

FAGUMIT

The Cancellation Division dismissed the invalidity request.

On appeal, the Board upheld the appeal and the CTMA was declared invalid.

Before the General Court, the proprietor claims infringement of Article 53(1)(c) CTMR in conjunction with Article 8(4) thereof, since the other party to the proceedings before the Board of Appeal failed to provide legally valid evidence that the company name 'FAGUMIT' is actually used; infringement of Article 53(1)(b) CTMR, in conjunction with Article 8(3) thereof, since the other party to the proceedings before the Board of Appeal effectively agreed to the registration of the trade mark rights associated with the name 'FAGUMIT', and infringement of Article 52(1)(b) CTMR since the applicant cannot be accused of acting in bad faith at the time when she filed her application for the contested Community trade mark

FAGUMIT: T-538/10; Board's case: R1003/2009-1; CD case: 2815C; CTMA No: 3 093 226; Office response filed on 05/04/2011; Office response filed on 05/04/2011; Language of the case: DE

Keywords: Community trade mark: Invalidity: Relative grounds for refusal: other sign used in the course of trade; Relative grounds for refusal: mark filed by an agent; Absolute grounds for refusal: bad faith FACTS: Ursula Adamowski is the proprietor of a registered CTM for the figurative mark containing the word element 'FAGUMIT' for goods in Classes 12 and 17. Fabryka W$"y Gumowych i Tworzyw Sztucznych Fagumit Sp. z o.o. filed a request for invalidity both on relative and absolute grounds. This request was based on various earlier National figurative marks containing the word element 'FAGUMIT' for goods in Class 17. The grounds were those laid down in Article 53(1)(c) in conjunction with Articles 8(4) and Article 8(3) and Article 52(1)(b) CTMR.

CTM Earlier TMs FAGUMIT FAGUMIT

The Cancellation Division dismissed the invalidity request.


On appeal, the Board upheld the appeal and the CTMA was declared invalid.

Before the General Court, the proprietor claims infringement of Article 53(1)(c) CTMR in conjunction with Article 8(4) thereof, since the other party to the proceedings before the Board of Appeal failed to provide legally valid evidence that the company name 'FAGUMIT' is actually used; infringement of Article 53(1)(b) CTMR, in conjunction with Article 8(3) thereof, since the other party to the proceedings before the Board of Appeal effectively agreed to the registration of the trade mark rights associated with the name 'FAGUMIT', and infringement of Article 52(1)(b) CTMR since the applicant cannot be accused of acting in bad faith at the time when she filed her application for the contested Community trade mark

[STOFFMUSTER V]: T-26/11; Board's case: R1317/2010-4; CTMA No: 8 423 709; Office response filed on 06/04/2011; Language of the case: DE


FACTS: V. Fraas GmbH applied to register as a CTM the figurative mark shown below for goods in classes 18, 24 and 25. The examiner refused the registration on the basis of Article 7(1)(b) CTMR.

CTM application


Before the General Court, the applicant claims infringement of Article 7(1)(b) read in conjunction with Article 7(2) CTMR since the trade mark concerned is distinctive, and infringement of Articles 75 and 76 CTMR because the Board of Appeal failed to deal with the applicant's extensive factual and legal submissions.

[STOFFMUSTER VI]: T-50/11; Board's case: R1316/2010-4; CTMA No: 8 423 667; Office response filed on 06/04/2011; Language of the case: DE



CTM application




[STOFFMUSTER VII]: T-31/11; Board's case: R1284/2010-4; CTMA No: 8 423 766; Office response filed on 06/04/2011; Language of the case: DE



CTM application




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Ex parte case

Article 7(1)(b) CTMR – Absolute ground for refusal – Collective mark – Characteristics of the G&S – Descriptiveness.

Decision of the Second Board of Appeal of 15 february 2011 in HUCase R0675/2010-2U

[BIODYNAMIC] (English).

As a preliminary point, the Board noted that the applicant indicated that the sign applied for was a collective mark in the sense of guarantee marks. ‘BIODYNAMIC’ is a new word created by a group of farmers in order to maintain production standards in farming, gardening and processing of foodstuffs. It also states that it can be compared to a seal of guarantee, because the consumer can trust in the special production and processing of the foodstuffs and the organic quality of the products. In this regard, the Board underlined that the CTMR does not recognise guarantee or certification marks. It is, in fact, specifically stated in Article 68(2) CTMR that an application for a collective Community mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a collective mark. Therefore it is at least doubtful whether the mark applied for should have been already accepted based on Article 68(2) CTMR.

In any case, it is clear that a trade mark applied for as a collective Community mark has to comply with Article 7 CTMR, the only exception to this being that, in accordance with Article 66(2) CTMR, signs or indications which may serve, in


trade, to designate the geographical origin of the goods or services may constitute collective Community marks. In the case at hand, the mark applied for does not consist of a sign or indication which may serve, in trade, to designate the geographical origin of the goods, nor has the applicant claimed that this is the case.

In this respect, the term BIODYNAMIC refers to a specific type of agriculture which is the oldest, consciously organic approach to farming and gardening and is one of the most sustainable in existence. It is founded on a holistic and spiritual understanding of nature and the human being and builds on the pioneering research work of Rudolf Steiner. As specifically stated in the list of goods applied for in Classes 1, 29, 30, 31, 32 and 33, all of the goods applied for are products meeting organic, as well as certain ecological, farm diversity and other standards and guidelines. The searches conducted on the Internet confirm these views and the fact that the term is in use in this context. The searches carried out on the Internet show that the term BIODYNAMIC is commonly used and that in the field of the goods applied for it is commonly used to refer to a type of agricultural products.

The Board is, therefore, of the opinion that BIODYNAMIC is a descriptive word in the sense that it describes significant characteristics, such as the kind and/or quality of all of the goods applied for. The word does not diverge from English word composition rules but rather complies with them. There is no unusual juxtaposition or lexical invention apparent. The Board finds no noticeable difference between the term as a whole and the sum of its parts. The mark, when considered as a whole, clearly indicates that the applicant sells goods which are produced by a specific method of agriculture commonly referred to as BIODYNAMIC. This unambiguous message is evident, without any particular mental exertion on the part of the public, whether it is a specialised public or the general public with a higher level of attention. The mark describes the characteristics of the goods in a simple and direct manner. Such a mark does not constitute an indication of a given business origin for the reference public, made up of reasonably well-informed and observant consumers. In addition, other enterprises may also be in a situation in which they legitimately wish to use such an expression in the course of trade. Therefore, it must be concluded that the sign BIODYNAMIC is descriptive for the goods at issue and that for this reason it cannot be registered under Article 7(1)(c) CTMR.

Consequently, the appeal was dismissed.

Inter partes case

Article 8(1)(b) CTMR – Relative ground for refusal – Proof of use of goods and services – Pharmaceutical goods – Use not as registered.

Decision of the Second Board of Appeal of 8 February 2011 in HUCase R0877/2010-2U

[CLENOST/CLENOSAN] (English).

In the present case, the opponent had to show that it had used its earlier mark. In the appeal, the applicant claimed that the earlier mark was not used for pharmaceutical preparations, for which it is registered, but for cosmetic products, for which it is not protected and referred to European Directives concerning medicines and cosmetics arguing inter alia that the fact that a product is sold in pharmacies is not sufficient to determine whether it is a pharmaceutical product. The Board noted that although the European Directives, namely Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to medicinal products for human use and Council Directive 76/768/EEC of 27 July 1976 on the approximation of the laws of the Member States relating to cosmetic products, and the Nice Classification do not pursue the same aim (the aim, pursued by both Directives, being protecting public health and the Nice Classification having purely administrative purposes for the registration of trade marks) the definitions given in the Directives are of interest because they define the products which are on the European market. On this basis, the Board noted on the one hand that according to the Community code relating to medicinal products for human use, a ‘Medicinal product’ is ‘(a) Any substance or combination of substances presented as having properties for treating or preventing disease in human beings; or (b) Any substance or combination of substances which may be used in or administered to human beings either with a view to restoring, correcting or modifying physiological functions by exerting a pharmacological, immunological or metabolic action, or to making a medical diagnosis’. On the other hand, according to Article 1 of the Cosmetics Directive as amended, a ‘cosmetic product shall mean any substance or mixture intended to be placed in contact with the various external parts of the human body (epidermis, hair system, nails, lips and external genital organs) or with the teeth and the mucous membranes of the oral cavity with a view exclusively or mainly to cleaning them, perfuming them, changing their appearance and/or correcting body odours and/or protecting them or keeping them in good condition’.


In the present case, the Board observed that, according to the evidence submitted, the products sold under the mark ‘CLENOSAN’ (bath gels and body hydrating milks, deodorants, hand cream and lip regenerator) fall within the category of cosmetics as defined above.

Furthermore, the fact that the products are claimed to contain active substances, does not mean that they are pharmaceuticals. Indeed according to Annex III of the Cosmetics Directive which gives a ‘list of substances which cosmetic products must not contain except subject to the restrictions and conditions laid down’, some active substances can be present in cosmetics at a low concentration.

The Board also noted that the package leaflet of the bath gel for atopic skins does not contain the usual contraindications, warnings about possible side effects or precautions that must be indicated on pharmaceuticals. Moreover, the fact that there apparently is no marketing authorization, as no such information is given on the packaging, is also an indication that the products sold are not pharmaceutical products but primarily toiletry or cleaning items with only incidental medicinal properties. Finally, the fact that the products are sold exclusively in pharmacies, according to their packaging, could be an indication that they are pharmaceuticals but does not necessarily prove that it is the case. Numerous products sold in pharmacies are not pharmaceuticals (diapers, food for babies etc.). Thus, neither medical professionals, pharmacists nor end-users will perceive the goods sold under the mark ‘CLENOSAN’ as pharmaceuticals.

Therefore, the contested decision erred in finding that use of the earlier mark had been proven for ‘pharmaceutical preparations for use in dermatology’. Furthermore, the opponent had not documented use in respect of any other goods covered by the registration on which the opposition was based.

Consequently, in light of the absence of relevant proof of use, the appeal was allowed and the opposition was rejected.

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