Trade marks: Latest European
case law
Mireia Curell
IP Attorney, Partner CURELL SUÑOL, ES
President of ECTA
Index
1) Technical Issues
- Questions of procedure
2) Substantive Law
- Relative grounds for refusal
Likelihood of confusion
Reputation of the earlier mark
- Absolute grounds for refusal
Signs devoid of distinctive character
Descriptive signs
Signs that cannot constitute a mark
Procedural issues
T-191/04 MIP Metro Group v OHIM.
13.09.2006
METRO
Renewal of the earlier mark
Decision of the CFI
The Court recalls that the purpose of an opposition
procedure is to protect the identifying function of an
earlier mark. It is therefore necessary that the marks in
conflict be valid at the time the decision is taken. If in
the course of opposition proceedings, an earlier mark
has expired, the refusal of the opposed trade mark is
no longer justified (paras. 32 and 33).
Procedural issues
T-32/04 Lichtwer Pharma AG v OHIM.
16.11.2006
LYOC
Lyco-A
This decision applies to Article 81 (4) CTMR
relating to costs.
Decision of the CFI
The Court annuls the Board of Appeal’s decision and
considers that “ the fact that an opposition is upheld,
although it deprives the parallel proceedings of their
purpose, does not make it in any way possible to
determine which of the parties to those parallel
proceedings would have been unsuccessful.
Identification of the unsuccessful party in given
proceedings may be based only on the purpose and
factual and legal framework of those proceedings, as
defined by the parties’ claims” (para. 22)
Procedural issues
T-53/05 - Calavo Growers Inc. v Luis
Calvo Sanz and OHIM 16.01.2007
CALAVO
Examination of opposition - form/arguments
Decision of the CFI
The question relates to the fact whether the OHIM
could take a decision on the sole basis of the
information provided within the first part of the notice of
opposition, namely the marks involved and the legal
basis.
The answer of the Court is affirmative: the analysis of
the opposition can be done on the basis of the sole
comparison between the signs and the goods.
Procedural issues
T-317/05 Kustom Musical Amplification,
Inc. v OHIM - Form of a Body Guitar.
07.02.2007
Article 73 CTMR -Reasoned decision
Decision of the CFI
The Court annuls the decision of the Board of Appeal
since it finds that the contested decision infringed
Article 73 CTMR by failing to comply with the duty to
state reasons on which decisions are based and by
violating the right to be heard.
Procedural issues
C-29/05 Kaul GmbH v Bayer and
OHIM - (CFI T-164/02 - reversed)
13.03.2007
ARCOL
CAPOL
Belated filing of evidence
Decision of the
Court of Justice
The Court states that the Board of Appeal erroneously
interpreted Article 74. It also states that the Court of
First Instance erroneously interpreted that the Board of
Appeal should have taken the new elements into
account as they had been filed “in due time”.
The Court states that the Board of Appeal, when
presented with facts and evidence which are submitted
late, has a discretion as to whether or not to take
account of such information when making the decision
which it is called upon to give.
Procedural issues
T-192/04 - Flex Equipos de Descanso v
Legget & Platt and OHIM - 16.07.2007
LURA-FLEX
Belated filing of evidence
Decision of the CFI
The answer has been given by the Court of Justice in
its decision of 13 March 2007 ARCOL/CAPOL: when
presented with facts and evidence which are submitted
late, the Board of Appeal has a discretion as to whether
or not to take account of such information when making
the decision which it is called upon to give.
Procedural issues
T-240/05 et al The Black & Decker
Corporation v Atlas Copco AB and
OHIM - 15.05.2007
The applicant considers that colour
representations of the earlier marks submitted
after the opposition deadline had expired
cannot be accepted.
Decision of the CFI
The Court rejects this argument on the basis of Article
80 (2) which provides that «where a communication
received by fax is incomplete or illegible, or where
OHIM has reasonable doubts as to the accuracy of the
transmission, OHIM is to inform the sender accordingly
and is to invite him, within a period to be specified by
OHIM, to retransmit the original by fax or to submit the
original».
Substantive Law:
No likelihood of confusion
T-153/03 Inex SA v OHIM-Robert
Wiseman & Sons Ltd. 13.06.2006
Decision of the CFI
The CFI upheld the Board of Appeal's decision finding
that the trade marks at issue were not similar as there
are strong visual differences (paras 41 and 42).
Although the marks may be similar conceptually, since
they both convey the idea of a cow, this similarity is
limited to an element which is not distinctive in respect
of the goods for which the marks are used (para. 45).
No likelihood of
confusion
C-214/05 P - Sergio Rossi SpA v
OHIM (CFI. T-169/03 confimed)
18.07.2006
MISS ROSSI
SISSI ROSSI
Differences in the goods and signs confirmed by the
Court of Justice, cl. 25/ cl. 18
No likelihood of
confusion
T-310/04 - Ferrero Deutschland GmbH
v OHIM - 15.12.2006
FERRERO
FERRO
Low degree of similarity in the goods; differences
and similarities between the signs. Decision
appealed.
No likelihood of
confusion
T-501/04 - Bodegas Franco-Españolas v
OHIM - 15.02.2007
ROYAL FEITORIA
ROYAL
Low degree of similarity between the goods -cl. 33- and
low distinctive character of the word “royal”. Decision
appealed.
No likelihood of
confusion
T-158/05 - Trek Bicycle Corp. v
Audi and OHIM. 16.05.2007
TREK
ALLTREK
Low degree of similarity between the goods -cl. 12- and
low conceptual similarity
No likelihood of
confusion
T-88/05 - Quelle AG v OHIM. 08.02.2007
The mere phonetic similarity does not support the
conclusion that there is a likelihood of confusion
No likelihood of
confusion
T-353/04 - Ontex v OHIM - 13.02.2007
EURON
CURON
Overall the marks are different
No likelihood of
confusion
T-342/05 - HENKEL v OHIM. 23.05.2007
COR
Different beginnings, short words, dissimilar visual impact
No likelihood of
confusion
T-167/05 - Grether v OHIM - Crisgo
(Thailand)- 13.06.2007
FENJAL
Different overall impression
No likelihood of
confusion
T-263/03 - Mülhens v Conceria
Toska and OHIM
TOSCA
- 11.07.2007
TOSKA
Different goods -cl. 3 and 18
No likelihood of
confusion
T-150/04 - Mülhens v Minoronzoni
and OHIM - 11.07.2007
TOSCA
Different goods -cl. 3 / 18 and 25
No likelihood of
confusion
T-28/04 - Mülhens v Mirco Cara
and OHIM - (different goods)
16.07.2007
TOSCA
Different goods -cl. 3 / 18 and 25
Substantive Law:
Existence of a likelihood of confusion
T-172/05 -Armacell v OHIM - 10.10.2006
NOMAFOAM
ARMAFOAM
Decision of the CFI
The Court appreciates the existence of a likelihood of
confusion regarding only part of the EU consumers,
namely those that are not English speaking.
It further concludes that the goods are similar as the
definition of the goods as applied for is extremely
broad.
This decision has been appealed.
Existence of a likelihood of confusion
T-483/04 - Armour Pharmaceutical Co
v OHIM -17.10.2006
CALSYN GALZIN
Decision of the CFI
The opponent registered its trade mark for
“Pharmaceutical and medical preparations, more
specifically calcium-based preparations”. It provided
proof of genuine use for “calcium-based preparations”
only. The Court considered that these goods covered a
sub-category of pharmaceutical preparations.
The marks are deemed to be visually and aurally
similar as well as the goods although they refer to
different therapeutic indications.
Existence of a likelihood of confusion
T-256/04 - Mundipharma v OHIM.
13.02.2007
RESPICORT
RESPICUR
Decision of the CFI
The earlier mark was registered for “pharmaceutical
and sanitary preparations; plasters” and genuine use
was shown only for “multi-dose dry powder inhalers
containing corticoids, available only on prescription”.
The Court finds that the trade mark must be deemed to
have been registered for “therapeutic preparations for
respiratory illnesses” (para. 36).
The marks are deemed to be visually, phonetically and
even conceptually similar, in particular for end users.
Existence of a likelihood of confusion
T-392/04 - Salvatore Gagliardi v OHIM and
Norma Lebensmittelfilialbetrieb GmbH & Co.
14.12.2006
Manou
Decision of the CFI
The earlier mark is registered i.a. for: clothing namely
stockings, tights. The owner evidenced effective use of
the mark for “woman’s tights“.
The Court decides that this use is not sufficient for the
category “clothing” but only for the sub-category
“woman’s tights“ and possibly underwear (paras. 92 and 93 ).
However there is a similarity in the goods (clothing /
woman’s tights) and a visual and aural similarity in the
signs.
Existence of a likelihood of confusion
T-43/05 - Camper S.L. v OHIM30.11.2006
Brothers
BROTHERS BY CAMPER
Decision of the CFI
The dominant component of both marks is the word
"brothers " ( para.61 to 64 ).
Consequently, the marks are aurally, visually and
conceptually similar ( para. 71 to 80 ).
Existence of a likelihood of confusion
T-81, 82, 103/03 - Mast-Jägermeister
v OHIM and Licorera Zacapenaca 14.12.2006
Decision of the CFI
The marks are visually similar as they both contain the
same dominant element namely the representation of
the head of a reindeer, within a circle (para 92 ).
They are also aurally similar for the Spanish speaking
consumer for whom the word “venado” means
“reindeer”. (para 94 ).
They also refer to the same concept (para 100 ).
Existence of a likelihood of confusion
C-412/05 P - Alcon v OHIM and
Biofarma - (CFI. T-130/03 confirmed)
26.04.2007
TRIVASTAN TRAVATAN
Decision of the
Court of Justice
In connection with the definition of the public
concerned, the Court of Justice decided that even if the
medicines could only be bought on prescription, the
public concerned does not only comprise the
professionals but also the end consumer.
Consequently, the Court of First Instance did not err by
including end-users in the definition of relevant public.
Existence of a likelihood of confusion
C-171/06 - Devintec Développement
Innovation Leclerc S.A. v OHIM (CFI.
T-147/03 confirmed) 15.03.2007
Decision of the
Court of Justice
The Court of Justice understands that the CFI, in its
global appreciation of the likelihood of confusion, did
not disregard the impact of the relevant public’s indirect
understanding of the earlier mark, but merely held that
this impact was not sufficient to outweigh to a large
extent the elements of the opposing marks which are
visually and phonetically similar (para. 58), and provided
the requisite level of reasoning.
Existence of a likelihood of confusion
T-333 & 334/04 - House of Donuts v
OHIM and PANRICO - 18.04.2007
DONUTS
Decision of the CFI
“Donuts” is a well-known trade mark in Spain. Since
this term is not descriptive in said territory, the Court
decides that said word dominates the overall
impression which the average consumer would have
when faced with the marks applied for.
Existence of a likelihood of confusion
C-344/05 P - OHIM v Shaker
(CFI. T-7/04 reversed) 12.06.2007
LIMONCHELO
Decision of the CFI
The Court of First Instance held that the mark for which
registration was sought contained a dominant element
comprising the representation of a round dish
decorated with lemons and concluded that the
dominance of the figurative representation in
comparison with the other components of the mark
prevented any likelihood of confusion arising from a
visual, phonetic or conceptual similarities between the
words “limoncello” and “limonchelo”.
Decision of the
Court of Justice
The Court of Justice annuls the decision on the ground
that the CFI did not carry out a global assessment of
the likelihood of confusion of the marks at issue (para.
40). It is only if all the other components of the mark are
negligible that the assessment of the similarity can be
carried out solely on the basis of the dominant element
(para. 42).
Existence of a likelihood of confusion
T-322/05 - Carsten Brinkmann v Terra
Networks SA and OHIM.
22.03.2007
TERRANUS
Decision of the CFI
«TERRA» is the dominant element of the earlier mark
due to its size and position, namely in front of the
device element. (para. 98). Further, the design element is
a simple and abstract device which is not special and
attractive in the overall perception of the mark (para 36).
The marks are globally similar (para. 40).
Existence of a likelihood of confusion
T-491/04 - Merant GmbH v Focus
Magazin Verlag GmbH and OHIM.
16.05.2007
FOCUS
Decision of the CFI
The word “FOCUS” being the dominant element of the
earlier mark (para 50 and 51), the signs are visually (para 53 to
55) and conceptually (para 56 and 57) similar. There is a low
degree of aural similarity, but this difference does not
neutralise the visual and conceptual similarities.
The marks are globally similar (para 60).
Existence of a likelihood of confusion
T-105/05 - Assembled Investments
(Proprietary) v OHIM - Waterford
Wedgwood- 12.06.2007
WATERFORD
Decision of the CFI
There is a degree of complementarity between some
articles of glassware and wine, in so far as the first
group of products is intended to be used for drinking
wine.
However, in so far as wine may be drunk from other
vessels, that complementarity is not sufficiently
pronounced for it to be accepted that the goods are
similar (para. 34).
Existence of a likelihood of confusion
T-364/05 - Saint-Gobain Pam SA v
Propamsa SA and OHIM. 22.03.2007
PAM FLUVIAL
Decision of the CFI
The word element «PAM» is the main and dominant
element of the earlier mark (para. 98).
The marks are therefore globally similar (para. 103).
Construction materials (class 19) as applied for by the
earlier trade mark are similar and complementary to
the pipes and tubes of metal (class 6) and fittings for
rigid pipes and tubes, not of metal (class 17) as applied
for by the contested CTM.
Reputation of earlier mark
T-47/06 -Antartica Srl v The Nasdaq
Stock Market Inc. V OHIM -10.05.2007
NASDAQ
This case refers to Article 8 (5) CTMR
Decision of the CFI
The Court confirms that the reputation of the mark
«Nasdaq» in the EU is established in respect of the
services in classes 35 and 36, also for an important
subsection of the general public interested in financial
matters (para. 48 to 52).
The Court concludes that NASDAQ has established
prima facie the existence of a future risk, which is not
hypothetical, of unfair advantage being drawn by the
applicant from the reputation of the trade mark Nasdaq,
by using the mark applied for (para. 61).
Reputation of earlier mark
T-137/05 - Gruppo La Perla v Worldgem
Brands-Gestao e Investimentos and OHIM16.05.2007
NIMEI LA PERLA
MODERN
CLASSIC
Decision of the CFI
The Court annuls the decision of the Board of Appeal and
recalls that when a mark with reputation is being protected, in
order to determine the degree of similarity between the
marks, it is sufficient that the relevant section of the public
establishes a link between them.
The Court considers that as the dominant element of the
earlier mark is completely included in the junior mark, there is
an aural, visual and conceptual similarity that can have the
effect to establish a link between both signs.
It is further considered that the goods covered by both marks
(jewellery and woman’s clothes) belong to market segments
which are close to each other.
Absolute grounds for refusal:
Sign devoid of distinctive character
T-15/05 - Van Waele v OHIM (Shape of a
sausage - 3D) 31.05.2006
Decision of the CFI
The relevant public is composed of both consumers
and professionals in the pork meat business.
The CFI upholds the OHIM's decision and finds the
trademark applied for to be devoid of distinctive
character within the meaning of Article 7(1)(b) CTMR.
The Court finds that the characteristics of the shape in
question do not give an overall appearance specific
enough to enable consumers to perceive it
unambiguously as an indication of origin of the goods
in question (para. 40).
Sign devoid of distinctive character
C-24/05 P - August Stork KG v OHIM
(Werther’s Sweets) (CFI. T-396/02
confirmed) 22.06.2006
Decision of the
Court of Justice
If the visual representation is not sufficient to allow
consumers to clearly identify characteristics of the
goods, secondary meaning cannot be proved (para.
64). The CFI did not err in law in so holding in the
present case.
In order to assess whether a mark has acquired
distinctive character through use, the court must take
into account all the circumstances in which the relevant
public is confronted with the mark (para.71).
Sign devoid of distinctive character
C-25/05 P - August Stork KG v OHIM
(Werther’s Sweets wrapper) (CFI. T-402/02
confirmed) 22.06.2006
Decision of the
Court of Justice
Only a three-dimensional mark that departs significantly from
the norms or customs of the sector can have distinctive
character (para.28). This principle also applies where the trade
mark applied for is a figurative mark consisting of a twodimensional representation of a product. In this case, the
mark likewise does not consist of a sign unrelated to the
appearance of the goods it covers (para. 29).
The Court of Justice recalls that the holder must prove that its
trade mark has acquired distinctive character through use in
that part of the Community where it did not, ab initio, have
such character, which area may be comprised of a single
Member State (para.83).
Sign devoid of distinctive character
T-283/04 - Georgia Pacific v OHIM
(Pattern kitchen roll paper) 17.01.2007
Decision of the CFI
The waffel effect is perceived by the consumer as an
indication of the absorption capacity of the product (para.
47 to 49 ).
The waffel effect is only a variation of those usually
used in the market for kitchen roll (para. 51).
The combination of the waffel effect and the design
does not significantly differ from the waffel effects used
by other producers (para. 54).
Signs devoid of distinctive character
T-241/05 et al - Procter & Gamble v
OHIM - 3D detergent Tabs 23.05.2007
Decision of the CFI
The level of attention paid by the average consumer to
the shape and design of a washing tablet is not high.
The applicant has not established that the consumer
pays particular attention to the appearance of the
washing tablet or that he is accustomed to perceiving it
as an indication of its commercial origin (paras. 63 and 64).
Sufficient distintive character
T-441/05 IVG Immobilien v OHIM
(Art. 7(1) (b) CTMR) - 13.06.2007
Decision of the CFI
The Board of Appeal decided that the mark lacked of any
distinctive character because the claimed mark lacked
notable specific graphic features in comparison to the
standard Times New Roman character font.
The Court of First Instance considers that to that extent, the
Board of Appeal deprived of all practical application the
principle that Article 7 (1) (b) CTMR makes no distinction
between different types of signs with regard to the
requirement for distinctiveness (para. 48).
Absolute grounds for refusal:
Sign not merely descriptive
C-237/05 P - CELLTECH (CFI. T-260/03
reversed)- 19.04.2007
Facts
In deciding that the existence and nature of cell technology is
not a well-known fact and that it was therefore for the Board
of Appeal to establish the correctness of its findings in that
regard, the Court of First Instance made a finding of fact
which, save where the facts or evidence are distorted, is not
subject to review by the Court of Justice on appeal (para. 45)
The Court of First Instance did not make an error of law by
deciding that, by not establishing the scientific meaning of
cell technology, the Board of Appeal did not show that the
mark CELLTECH is descriptive of the goods and services
referred to in the application for registration (para 46)
Response of the
Court of Justice
In this case, it must be held that the Court of First
Instance properly assessed the descriptive character of
the mark CELLTECH considered as a whole and
concluded that it was not established that the mark,
even understood as meaning ‘cell technology’, was
descriptive of the goods and services referred to in the
application for registration. Therefore, it did not infringe
Article 7(1)(c) CTMR (para. 81).
Descriptive sign
C-108/05 - EUROPOLIS (acquired
distinctiveness denied) 07.09.2006
Preliminary Ruling
The registration of the mark « EUROPOLIS »,
filed in connection with services in classes 36
and 39, was refused by the BeneluxMerkenbureau. It was deemed to be
exclusively descriptive of the services in
question, as it is formed by the generic term
«EURO » and the generic term « POLIS »
(this term meaning contract in Dutch).
Facts
An appeal was filed at the Gerechtshof invoking mainly
that the sign « EUROPOLIS » is distinctive and,
subsidiarily, that it has acquired distinctiveness through
its use.
The Court of Justice is asked for a preliminary ruling
regarding the correct interpretation of Article 3 (3) of
the First Council Directive 89/104/EEC of 21 December
1988.
Response of the
Court of Justice
The Court of Justice held that in assessing acquired
distinctiveness, the only relevant situation is that
prevailing in the Member State or, in the case of the
Benelux territory, the part thereof where the ground for
refusal existed. The Court of Justice held that if the
ground for refusal exists, it is necessary to show that
the mark has acquired distinctive character throughout
the linguistic area. It then falls to be assessed whether
the relevant public (or a significant portion thereof)
within that linguistic area identifies the product or
service as originating from a particular undertaking
because of the trade mark.
Descriptive sign
T-190/05 - Sherwin-Williams v
OHIM.12.06.2007
TWIST & POUR
Decision of the CFI
Taken as a whole, the word mark directly describes the
action in particular of opening a container with a cap
which has to be turned before the liquid contents can
be poured (para. 54). Therefore, the sign is devoid of any
distinctive character (para. 66).
Descriptive sign
T-339/05 - MacLean-Fogg v OHIM.
12.06.2007
LOKTHREAD
Decision of the CFI
Taken as a whole, the term “lokthread” means a thread
that locks, in other words, a thread structure used in a
locking mechanism (para. 48).
The mere combination of the descriptive words “lock”
[lok] and “thread” is itself also descriptive (para. 51).
Descriptive sign
T-207/06 - Europig v OHIM.14.06.2007
EUROPIG
Decision of the CFI
The mark will be considered by the relevant public as
indicating that the goods applied for are taken from
pigs and are originated from the European Union (para.
34). It is therefore descriptive.
Absolute grounds for refusal
C-321/03 - Dyson Ltd. v Registrar of
Trade Marks (clear bin) 25.01.2007
Preliminary Ruling
Sign not capable of being a mark
Response of the Court of Justice
All the conceivable shapes of a transparent bin or
collection chamber forming part of the external
surface of a vacuum cleaner, is not a ‘sign’ within
the meaning of Article 2 of First Council Directive
89/104/EEC of 21 December 1988. As a result, the
sign as applied for is not capable of constituting a
trade mark.
Information:
www.ecta.org
www.oami.europa.eu
www.curia.europa.eu