Case-Law of the Boards of Appeal 2010-ICase Law of the Boards of Appeal - 2010 2 member of staff responsible for controlling due dates could not be attributed to the fact that the

Yearly Overview Decisions of the Boards of Appeal

2010

I. Introduction

In 2010, the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) made 1787 decisions on appeal cases, 389 in ex parte proceedings and 1398 in inter partes proceedings. Another 14 appeals were closed without the need of a decision. In total, 2570 appeals were filed in 2010.

Taking into account the large number of decisions, keeping oneself informed about the development of case-law of the Boards of Appeal, can present a challenge. The 2010 overview of case-law, created by the Department of Industrial Property Policy (DIPP), is intended to help users in this task.

The overview is structured according to various legal criteria, such as procedural issues or grounds for refusal. It contains references to selected decisions of the Boards of Appeal which have been made in 2010 in these areas.

The reader can go directly to the section of interest by clicking on the relevant section in the index. All decisions of the Boards of Appeal cited in the document can be found in the database of decisions of the Boards of Appeal at the following link: http://oami.europa.eu/search/LegalDocs/la/en_BoA_index.cfm .

As a final remark, it must be mentioned that any reference to the CTMR is with respect to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ L 78 of 24.03.2009, p. 1), codifying Council Regulation (EC) No 40/94. A conversion table can be found at pages 39-42 of the said OJ and in

http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:078:0001:0042:En:PDF, page 39ff.

THE PRESENT DOCUMENT WAS ESTABLISHED UNDER THE SOLE RESPONSIBILITY OF THE DEPARTMENT FOR INDUSTRIAL PROPERTY POLICY AND IS INTENDED FOR INFORMATION PURPOSES ONLY. NO STATEMENT CAN BE CONSIDERED AS BINDING ON THE BOARDS OR HAVE IMPACT ON ANY OF THE DECISIONS TAKEN BY THEM.

Case Law of the Boards of Appeal - 2010

II

INDEX

I. INTRODUCTION ............................................................................................... I

II. PROCEDURAL ISSUES ....................................................................................... 1

A. Admissibility of the appeal........................................................1 1. Time-limits .......................................................................1

B. Restitutio in Integrum .............................................................1 C. Belated facts and evidence .......................................................2 D. Revocation of decisions............................................................4

III. ABSOLUTE GROUNDS FOR REFUSAL – EXAMINATION PROCEEDINGS AND INVALIDITY PROCEEDINGS................................................................................................ 5

A. Trade marks which shall not be registered in accordance with Articles 4, 7(1)(a) and 52(1)(a) CTMR ..............................................................5 B. Trade marks which shall not be registered in accordance with Articles 7(1)(b), (c), (d) and 52(1)(a) CTMR..........................................6

1. Word marks.......................................................................6 a.) One word ....................................................................6 b.) Combination of words .....................................................7 c.) Letters and/or numbers ...................................................9 d.) Abbreviations / acronyms – Combination of abbreviations / acronyms....................................................................... 10 e.) Slogans and expressions ................................................. 11 f.) Geographical names ..................................................... 13

2. Figurative marks............................................................... 14 a.) Words ...................................................................... 14 b.) Images...................................................................... 16 c.) Colours ..................................................................... 18 d.) Position marks ............................................................ 19

3. Three-dimensional marks .................................................... 21 a.) Shapes of products ....................................................... 21 b.) Bottles and containers................................................... 22

C. Article 7(1)(e) CTMR – Article 52(1)(a) CTMR................................. 23 D. Article 7(1)(f) CTMR – Article 52(1)(a) CTMR ................................. 24 E. Article 7(1)(g) CTMR – Article 52(1)(a) CTMR................................. 25 Pursuant to Article 7(1)(g) CTMR, trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or purpose of the goods, shall not be registered. ...................................................... 25 F. Article 7(1)(h) CTMR – Article 52(1)(a) CTMR................................ 26 G. Article 7(1)(j) CTMR.............................................................. 26 H. Article 7(3) CTMR - Article 52(2) CTMR........................................ 27

IV. RELATIVE GROUNDS FOR REFUSAL – OPPOSITION PROCEEDINGS AND INVALIDITY PROCEEDINGS.............................................................................................. 29

A. Procedural issues with respect to opposition and invalidity proceedings 29 1. Substantiation of the earlier trade mark.................................. 29 2. Renewal/validity of the earlier trade mark............................... 29 3. Translations .................................................................... 30 4. Scope of the opposition....................................................... 31

B. Relative grounds for refusal: ................................................... 32


III

1. Article 8(1)(b) CTMR .......................................................... 32 a.) Letter combinations without figurative elements or short word marks........................................................................... 32 b.) Letter, numbers, letter combinations, acronyms and abbreviations with figurative elements .................................................... 32 c.) Earlier mark identical to the CTMA or included in the CTMA and vice versa...................................................................... 33 d.) Names / surnames........................................................ 35 e.) Figurative element v. figurative element ............................ 37 f.) Three-dimensional mark v three-dimensional mark................. 37

C. Article 8(4) CTMR................................................................. 38 D. Article 8(5) CTMR................................................................. 39 E. Proof of use and use of a trade mark in a form which is different from that registered ......................................................................... 41

V. DESIGN PROCEEDINGS.................................................................................... 43

A. Individual character / Novelty.................................................. 43 B. Technical function of the design............................................... 45 C. Design in conflict with an earlier design or other distinctive sign (Art. 25(1)(d)-(e) CDR)....................................................................... 46

II. PROCEDURAL ISSUES

A. Admissibility of the appeal

1. Time-limits

In accordance with Article 60 CTMR an appeal must be filed within two months of the notification of the contested decision; within four months, the statement of grounds must be filed.

The Boards have constantly maintained that the simple filing of the appeal form is in itself not sufficient to be accepted as a statement of grounds of appeal1 (R0973/2009-1 MEDILAST SPORT [fig.] / MEDIPLAST).

The Boards have confirmed that the filing of a statement setting out the grounds of appeal within four months after the date of notification of the decision is a prerequisite for the appeal and the Regulation does not authorise derogation, at the admissibility stage, from the time limits established by in Article 60 CTMR. Consequently, the Office could not extend or suspend this deadline either ex officio or at the request of the parties concerned2 (R0303/2010-2 FIRST CHOICE; R1263/2009-2 DELTATECH CONTROLS [fig.] / DELTA CONTROL et al; R1260/2009-2 SHAPE OF BOTTLE [3D MARK]).

B. Restitutio in Integrum

Any party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to observe a time-limit vis-à-vis the Office shall, upon application, have its rights re-established if the non-observance in question has the direct consequence of causing the loss of any right or means of redress.

The purpose of Restitutio in Integrum is to provide the interested party with the possibility of remedying an omission due to the aforementioned exceptional circumstances, but not to remedy simple negligence or errors on the part of the claimant or its representative. That exceptional character means that the conditions for the application of restitutio in integrum have to be construed strictly.

In several cases, the Boards have held that the reception of notifications of important correspondence by fax transmission outside normal office hours is not an unusual event. In this sense, in case R1167/2010-1 EurAAP [fig.], the Board considered that the miscalculation of the due date for filing the notice of appeal on the part of a

1 See judgment of the General Court (GC) of 17 September 2003 in Case T-71/02 Classen Holding KG v OHIM (“Beckett

Expression”) [2003] ECR II-3181). 2 See decision of the Grand Board of 18 April 2008 in Case R 1341/2007-G KOSMO / COSMONE, at paragraph 14.


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member of staff responsible for controlling due dates could not be attributed to the fact that the transmission took place after office hours. In case R1286/2009-2 M MONNINI [fig.] / monari, the Board held that the human errors that occurred in this case because an administrative assistant wrongly date stamped the contested decision after it was notified by fax out of office hours and thus led to a miscalculation of the expiry of the deadline for filing the statement of grounds, cannot be regarded as exceptional or unforeseeable events. The system set up ought to have provided for a mechanism for detecting and correcting such errors. The Board considered the due care required by the circumstances of this case was not exercised and as a result restitutio in integrum could not be granted (see also case R0083/2010-1 Mex & Co [fig.] / MAX [fig.]).

The Board has also considered that errors in sending the notice of appeal to an incorrect fax number cannot be excused. In case R0446/2006-2 OMNICARE / OMNICARE [fig.]3, the notice of appeal was sent on the last day of the time-limit, but it was sent to an incorrect number stored in the fax machine. The Board recalled that observing time limits or deadlines, is part of the day-to-day practice of representatives. They must be aware of the importance of the observance of time-limits and should not only instruct and supervise their staff accordingly, but also create a system of control and double checking which allows for the exclusion of mistakes and finding in due time errors which may have occurred4. In this case, the applicant’s representative failed to apply all due care required under the circumstances and the applicant’s request for restitutio in integrum was, therefore, not well founded (see also case R1348/2009-2 SILVA / SILVAE).

However, in R1356/2008-4 DADA&CO / DADA III5 the Board held that the dispatch with the fastest postal delivery service available, a special courier service operated by the German Postal Service, five days before expiry of the relevant time limit was not in breach of all due care.

C. Belated facts and evidence

In accordance with the case-law of the Court of Justice (CJ) and General Court (GC)6, it is clear from the wording of Article 76(2) CTMR that, as a general rule and unless

3 By decision of 24 July 2006 in case R0446/2006-2 OMNICARE / OMNICARE [fig.], the Second Board of Appeal dismissed the

request for restitutio in intergrum as inadmissible and declared the appeal deemed not to have been filed as the Board decided that from the provisions of the CTMR, restitutio in intergrum is excluded when the unobserved time-limit is the time-limit to file an appeal. The decision of the Second Board of Appeal was subsequently annulled by the judgment of 7 May 2009 in Case T-277/06 Omnicare, Inc. v OHIM (“Omnicare”) and on 26 0f February 2010 the Second Board took a decision in order to deal with the application for restitutio in integrum.

4 See Order of the General Court of 6 September 2006, T-366/04, “Hensotherm”, paragraph 50. In the same sense decision of the Fourth Board of Appeal of 29 January 2009 in case R0452/2008-4 COMO TU QUIERAS

5 See also decision of the Second Board of Appeal of 2 September 2009 in case R0038/2009-2 INOFLEXX/ENOFLEX 180 et al. where the Board held that a party cannot be held liable for the non-compliance of a courier service with its contractual obligations.

6 Cf. judgment of the Court of Justice of 13 March 2007 in Case C-29/05 P OHIM v Kaul GmbH and Bayer AG (“Arcol”) [2007] ECR I-2213 and judgment of the General Court of 12 December 2007 in Case T-86/05 K & L Ruppert Stiftung & Co. Handels-KG v OHIM (“Corpo livre”) [2007] ECR II-4923.


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otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of the CTMR and that the OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late. However, it is equally apparent from that wording that a party has no unconditional right to have facts and evidence submitted out of time taken into consideration by the OHIM. Consequently, the Office has no discretion to accepted belated facts and evidence where the CTMR or the CTMIR precludes the taking into account of said material, such as, e.g., Rule 22(1) CTMIR foresees7 or Rule 22(2) CTMIR8 (R 1222/2010-4 GRASHOFF [fig.] / GASTHOF II [fig.]).

The Boards follow this strict approach and apply it also with respect to Rule 20(1) CTMIR (substantiation of the earlier right9). This can be seen in R1090/2009-2 LEONARDO LOFT / LEONARD where the Board rejected the evidence provided in the appeal instance as the opponent failed to provide a registration certificate or an equivalent document before the opposition Division and consequently, during the opposition proceedings, failed to prove the existence, validity and scope of protection of the earlier mark as well as its entitlement to file the opposition. In the same way in R1768/2008-2 U POWER [fig.] / POWER, the opponent failed to provide an English translation of the registration certificate and submitted it first at the appeal stage. In case R0639/2008-4 MEDILOOK / Medilog the registration certificate was submitted by the opponent for the first time before the Boards. The same occurred in case R0152/2010-4 FCB [fig.] / F.C.B. et al.

The Boards held that the deadlines concerning proof of use are not subject to the Office’s discretionary power under Article 76(2) CTMR (R0941/2009-2 PROTOOL [fig.] / PROTOOL [fig.] et al.; R0357/2009-2 PRINCE [fig.] / PRINCE SPORT; R1374/2008-4 FLEXICAPS / FLEXICAPS; R1043/2009-4 alenova desarrollos urbanos [fig.] / ARTENOVA IMMOBILIER; R1525/2009-4 OFFICEMATE / OFFICEMATE [fig.]; R0363/2008-4 WOLFGANG AMADEUS MOZART PREMIUM / W. AMADEUS MOZART [fig.] et al.). However, belated evidence which just completes admissible evidence (additional evidence) may still be admitted where “new factors emerge” in accordance with T-334/01 HIPOVITON10 (R0055/2009-2 BRAVIA / BRAVIA; R0030/2010-2 KARÉLIA [fig.] / KARELIA et al.) or, when it consisted in additional or supplementary evidence, completing the evidence already filed on time before the

7 In this respect see decision of the Grand Board R0172/2007-3 VISTA / vistar; R1781/2007-2 COSTA / Costa Coffee. 8 See also judgment of 15 March 2011 in Case T-50/09 Ifemy’s Holding GmbH v OHIM (DADA) at paragraphs 63-65 9 R0516/2009-2 LOUIS ESTERE / LOUIS where the Board rejected the evidence of the renewal of the earlier registrations enclosed for the first time with the statement of grounds. 10 See judgments of 8 July 2004 in Case T-334/01 MFE Marienfelde GmbH v OHIM (“Hipoviton”), at paragraph 56; T-86/05 K & L Ruppert Stiftung v OHIM – Lopes de Almeida Cunha and Others (CORPO LIVRE), at paragraph 50; the Decision of the Second Board of Appeal of 17 December 2008 in Case R1080/2007-2 M & K MEINE KÜCHE [fig.] / M & K, at paragraphs 49 and 51; Decision of the Second Board of Appeal of 18 June 2009 in Joined cases R0770/2008-2 and R0826/2008-2 EMIDIO TUCCI [fig.] / EMILIO PUCCI et al. [fig.].


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first instance and which is likely to affect the outcome11 (R0963/2010-2 PREMO / PREMA); R0726/2010-2 weg [fig.] / weg [fig.]; R0075/2010-2 LACTOMAIOR / LACTARMOR; R0996/2009-2 PROFLEX [fig.] / PROFEX; R1714/2008-1 AXN SCI FI [fig.] / Sci FI [fig.] et al and R1594/2008-1 AXN SCI FI / Sci FI [fig.] et al.).

Finally, the Boards have held consistently that the request for proof of use made for the first time at the appeal stage is clearly inadmissible according to the literal text of Rule 22(1) CTMIR. In 2010, the Boards rejected the request for proof of use inter alia in the following decisions: R0086/2009-2 FLACO / FLACO; R0957/2009-1 Click2Pay / Click&Pay [fig.]; R1132/2009-1 CLICK2PAY [fig.] / CLICK&PAY [fig.]; R1423/2009-2 ONET / THONET; R0856/2009-4 POWER plus [fig.] / POWERPLUS; R0874/2008-4 ZUFAL / ZURCAL.

D. Revocation of decisions

In case R0323/2008-G BEHAVIOURAL INDEXING the Grand Board decided that after a notice of appeal has been filed, jurisdiction over the case lies solely with the Boards of Appeal and the department that issued the contested decision no longer retains competence to decide the case. From that point on, only the Board may decide on the case and, after examination, possibly remit it to the appropriate department for further prosecution. The examiner who issued the contested decision may only rectify it after an appeal has been lodged under the narrow conditions of Article 61 CTMR. It follows that the examiner is bound by the revision procedure laid down in Article 61 CTMR and may not, at his discretion, choose to apply revocation provisions like that of Article 80 CTMR, which are applicable outside of the appeal proceedings framework.

In 2010, in a single member decision in case R1736/2008-1 PREKUNIL / PROKINYL L.P. the request for revocation of the First Board decision was rejected. The CTM proprietor argued that communications were not sent to the representative of the CTM proprietor but rather to the CTM proprietor itself. However, the incorrect notification does not change the content of the decision. Article 80 CTMR addresses procedural errors which lead to the taking of a decision. The decision itself did not contain an obvious procedural error. Therefore, non-compliance with Rule 61(1) CTMIR can never be the basis of the revocation of the notified decision, as the decision itself remains correct.

11 See, inter alia, decisions of the Second Board of Appeal of 20 March 2007 in Case R 299/2006-2 Budweiser/ Budweiser; decision of 25 April 2007 in Case R0932/2006-2 bebe / BEBÉ; R0465/2006-2 KAJAANI / KAJAANI PROCESS MEASUREMENTS [fig.] and of 20 November 2007 in Case R0687/2007-2 EASY PEEL / EASY PEEL; in R0663/2008-1 CONQUISTADOR / CONQUISTADOR [fig.], R0074/2008-2 Easy CHIC [fig.] / BLOCO CHIC, R1692/2008-2 PANIN G.P. [fig.] / PALMIN et al., R1534/2008-1 NAVIREL / NAVIXEN, R0898/2008-2 RENOVA EASY / RETINOVA, RENOVA, R0991/2008-1 RED BULL.


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III. Absolute Grounds for Refusal – Examination Proceedings and Invalidity Proceedings

A. Trade marks which shall not be registered in accordance with Articles 4,

7(1)(a) and 52(1)(a) CTMR

Article 7(1)(a) CTMR prevents signs which do not conform to the requirements of Article 4 CTMR from being registered as Community trade marks. Under Article 4 CTMR, a sign may be a Community trade mark if it is capable of being represented graphically and is capable of distinguishing the goods or services of one undertaking from those of other undertakings. Article 26(1)(d) CTMR requires a representation of the trade mark in order for a filing date to be accorded. The representation of a trade mark must be clear, precise, self contained, easily accessible, intelligible, durable and objective12.

In 2010, the Boards decided in three decisions about the graphical representation of the signs applied for. The Board rejected the following colour arrangement

for “toys, games, playthings and jigsaw puzzles, three dimensional

puzzles, electronic games; hand-held electronic games” in Class 28. The Board decided that a reasonably observant person would not realize that the colour mark applied for relates to the colour scheme used on the classic version of Rubik’s cube. The Board was only able to reach the conclusion that the description provided was intended to describe the systematic arrangement of colours used on Rubik’s cube as a result of the additional information provided. Therefore, the Board concluded that the applicant had failed to provide a graphic representation that is clear, concise, easily accessible and intelligible (R1475/2009-1 Colour per se).

In case R0437/2009-4 the Board decided that the trade mark applied for did not clearly indicate the subject matter of the application, but rather seek protection for a wide variety of different trade marks, with word elements that may be combined in any different form whatsoever and had not yet even been disclosed. Therefore, the representation infringed central requirements in respect of the representation of trade marks, which must be uniform and self contained and available to all through the CTM Register so that it is clearly discernible what is protected and what is not (R0437/2009-4 OASE LIVING WATER).

12 See judgment of the Court of Justice of 12 December 2002 in Case C-273/00 Ralf Sieckmann v Deutsches Patent- und

Markenamt (“Sieckmann”), at paragraph 55.

R1475/2009-1

R0437/2009-4


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The Boards considered that in cases where a sign is defined by both the graphic representation and the textual description, in order for the representation to be inter alia clear, precise, intelligible, and objective, the description must coincide with what can be seen in the graphic representation. In the case of a movement mark consisting of an animated sequence which was represented in the form of 20 images (or stills) and a textual description, the Board was of the opinion that even based on just looking at the stills as presented in the application form and read in conjunction with the textual description the movement that happens in the mark was, in fact, quite clear and the counter clockwise sequence of the motion was not that difficult to follow based on the description given. In this case, the graphic representation and the verbal description of the sign were, actually, perfectly compatible and complementary and complying with the requirements of Articles 4 and 7(1)(a) CTMR (R0443/2010-2 RED LIQUID FLOWING IN SEQUENCE OF STILLS [movement mark]).

B. Trade marks which shall not be registered in accordance with

Articles 7(1)(b), (c), (d) and 52(1)(a) CTMR

1. Word marks

The Office has to assess absolute grounds of refusal with respect to the average consumer of the goods and services at stake.

Consequently, when checking the registrability of a trade mark, the OHIM must take into account the official languages of the European Union (Article 7(2) CTMR). In 2010 the Boards took into account Catalan, a co-official language of Spain and rejected the term ESPETEC which in Catalan means “a type of sausage that is not cooked but that is left to dry in order to be eaten” for raw pork and dried meat sausages in Class 29. The Board estimated that the meaning of the term will be easily understood by those who understand Catalan, especially in those areas of Spanish territory where Catalan is used or is understood generally. The Board decided that the mark applied for consisted of a term that unequivocally describes the type of product applied for (R0312/2010-2 ESPETEC13).

a.) One word

The vast majority of decisions on absolute grounds dealt with the grounds for refusal under Article 7(1)(b) and (c) CTMR.

13 Decision appealed before the GC under case T-72/11.

R0443/2010-2


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Amongst these, the Boards have dealt with and refused laudatory terms which will be seen by the trade circles targeted as a laudatory and promotional indication of the goods and services (R0269/2010-4 ÚNICA [it is the feminine form of the Spanish adjective “único”, which means “unique, extraordinary, and excellent”] for inter alia “showers and shower cubicles; shower fittings” in Class 11; R0351/2010-2 NOVA [in Portuguese means “new”] for “apparatus and instruments for recording,

transmission, reproduction or amplification of sound or images; audio electrical and

electronic apparatus and instruments … and musical instruments; musical keyboards” in Classes 9 and 15; R0082/2010-2 NOVA for “automatic machines; tablet counting

and filling equipment; tablet line integration and ancillary equipment thereof for

the pharmaceutical, nutraceutical, health and beauty and cosmetics industries; and services of assembly, installation, maintenance and reparation of industrial

machinesbuilding materials (non-metallic) and floor coverings” in Classes 7 and 37; and R1500/2009-1 OIVA [in Finnish means “very good, excellent, and splendid”] for n “design cutlery; design household or kitchen utensils and containers; design glass

ware, porcelain and earthenware, not included in other classes” in Classes 8 and 21).

The Boards have refused or cancelled the registration of terms which serve to inform the relevant public about the intended purpose of the goods or services (R1413/2009-1 ENDURANCE [it means inter alia “the ability to stand pain, distress, fatigue, etc.; fortitude”] for “mineral and aerated waters; non-alcoholic drinks; fruit

drinks and fruit juices; syrups for making beverages; nutritionally enhanced mineral

and aerated waters” in Class 32; R0381/2010-2 ENJOY for “casinos, casino services” in Class 41; R1585/2009-4 BEBE for “shampoo; body wash; shower gel; perfume;

toilet water…” in Class 3. In case R1743/2007-1, the Board decided that VESUVIA must be declared invalid for all goods that may include roses of the Vesuvius variety, namely agricultural and horticultural products (except maize), (neither prepared, nor processed); grains (seeds) (except maize); natural plants (except maize); forestry products (neither prepared, nor processed), natural flowers Class 31, or of their characteristics (R0333/2009-1 TEQUILERO [which means “belonging to or relating to tequila”] for “alcoholic beverages and liqueurs” and “wines” in Class 33; R1415/2009-1 ANYTIME informs the English speaking public that the goods and services in Classes 9, 16, 28, 35, 36, 38, 41, 42 and 45 are available at anytime, e.g. through the Internet, through a TV connection, through a mobile connection, etc; or that they contain some feature which makes them particularly appropriate to access and use at anytime, or that they are accessories, supporting or advertising material used by an undertaking providing goods or services available at anytime; R0564/2009-2 SOLID for “chemicals; chemical preparations” in Classes 1 and 5).

b.) Combination of words

The word combination Gluco Juice was considered descriptive for goods which are or contain juices with added glucose, in Classes 5 and 32, such as pharmaceutical and


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veterinary substances and preparations for use in the treatment, diagnosis and

prevention of hypoglycaemia; syrups and other preparations for making beverages

(R1190/2009-1 Gluco Juice). LACTOFREE in relation to dietetic substances and products, lactose, milk products and preparations for making beverages in Classes 5, 29 and 32 would have an obvious and clear meaning “without lactic acid/lactose” (R0892/2009-1 LACTOFREE). EURO AUTOMATIC CASH will be perceived as referring to the designation of a product or service that enables an automatic transaction in euro. It will therefore be understood by the English speaking consumer as an indication of the nature and/or purpose of inter alia “automatic vending machines” in Class 9; “administrative and business information, consultancy and assistance for

carrying out secure payments for online business on the Internet” in Class 35; “real estate affairs, insurance” in Class 36; “installation, maintenance and repair services”

in Class 37, “telecommunications” in Class 38 (R0892/2010-2 EURO AUTOMATIC CASH14).

On the other hand, the word combination CAPA NEGRA, which in Spanish means, e.g. “an animal’s black skin or coat” was considered merely suggestive and accepted for “meat, pork; pork extracts; canned pork; pork-based preparations, prepared dishes

made with pork and charcuterie” in Class 29 since it has not been demonstrated that the expression directly alludes to any individual characteristic of the goods claimed (R1502/2009-2 CAPA NEGRA). PATENTFIRM was accepted for registration for “scientific, nautical, surveying, photographic, cinematographic, optical, …; magnetic

data carriers, recording discs; automatic vending machines and mechanisms for

coin-operated apparatus; …, data-processing equipment and computers;

fire-extinguishing apparatus;…” and the services “design and development of

computer hardware and software” in Classes 9 and 42, since “Patent attorney firm” is not a designation of the characteristic of these goods and services (R1313/2009-4 PATENTFIRM). In the same sense, the Board considered the word combination CRISIS GROUP to be suggestive to a degree; the specialized consumer for whom the goods such as “magnetic data carriers, recording discs…” and “printed matter;

photographs;…” in Classes 9 and 16 and the “association services;…” in Class 35 are made available will see the mark as an indicator pointing to goods and services provided by a political entity engaged in highly specific and top-level activities in inter alia political and humanitarian fields (R1088/2009-2 CRISIS GROUP). Furthermore, the Board confirmed the registration of betsafe for “advertising; business management; business administration; office functions; arranging,

conducting and organizing exhibitions for advertising, business, commercial and

14 However, the Board implementing judgement of 9 March 2010, T-15/09 Euro Information v OHIM (EURO AUTOMATIC CASH)

decided that the sign did not have a sufficiently direct and immediate link with the remaining goods and services, inter alia “apparatus for recording” in Class 9; “arranging newspaper subscriptions” in Class 35; “banking analysis” in Class 36; “radio communications” in Class 38; “legal services” in Class 42, for the descriptive message to be perceived by the relevant public (R0892/2010-2 EURO AUTOMATIC CASH). See also, judgment of 9 December 2010, T-307/09 Early Beauty v OHIM (Naturally Active) at paragraph 41.


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trade purposes; business advice, assistance, consultancy and information relating to

franchising; consultancy, information and advisory services relating to all the

aforesaid services” in Class 35. The Board considered that for these services the mark would probably be seen at the most as suggestive to their quality (R0853/2009-2 betsafe).

c.) Letters and/or numbers

The Court of Justice has established in relation to the distinctiveness of single letters that, particularly as it may prove more difficult to establish it distinctiveness than for other word marks, the OHIM is required to assess whether the sign at issue is capable of distinguishing the different goods and services in the context of an examination, based on the facts, focusing on those goods or services15.

The Board allowed the registration of the figurative mark letter for “transport; packaging and storage of goods; travel arrangement and services for providing food and drink; temporary accommodation” in Classes 39 and 43, as it was not shown that the European consumer uses or understands the letter “W” as an indication of a characteristic or as a generic name, in relation to the applied for services and the Board is not aware that the letter “W” may have a meaning in relation to these services (R1008/2010-2 W [fig.]).

The Board allowed the registration of the mark Greek letter alpha

for alcoholic beverages (except beers), wines, sparkling wines and beverages containing wine in Class 33 (R1839/2010-1 α [fig.]16).

However, the Board rejected the single letter “P.” for “perfumer, spectacles,

recorders, CDs, CD-ROMs, CD-I, silver and goldware, clocks and watches, jewellery,

costume jewellery, luggage, leatherware, clothing, footwear, headgear, Sporting

articles and toys” in Classes 3, 9, 14, 18, 25 and 28. The Board considered that the letter “P”, followed by a dot, which indicates that it amounts to the short form of a word starting with “P”, may have a series of different meanings depending on the territory and the language concerned. The fact that the letter “P” does not have a clear meaning could mean that it is not descriptive of specific goods or services. However, this does not mean that “P” is not per se distinctive pursuant to Article 7(1)(b) CTMR. On the contrary, the possibility that the letter “P” may be attributed many meanings by different people in various languages means that it will

15 See judgment of 9 September 2010 in Case C-265/09 P BORCO-Marken-Import Matthiesen GmbH & Co. KG v OHIM (“α”), at

paragraph 39. 16 Decision issued to continue the process of compliance with the binding judgment of the Court in Case C-265/09 P BORCO-

Marken-Import Matthiesen GmbH & Co. KG v OHIM (“α”), which confirmed the judgment of the General Court of 29 April 2009 in case T-23/07 BORCO-Marken-Import Matthiesen GmbH & Co. KG v OHIM (“α”) annulling the decision of the Fourth Board of Appeal in case R 808/2006-4.

R 1839/2010-1


10

probably not be perceived as a sign indicating a connection with a specific supplier of goods in the classes concerned (R1601/2008-1 P.).

The Board declared the invalidity of the Community Trade Mark MPAY24 for “data processing apparatus, software, hardware; printed matter, particularly magazines;

advertising and business management; financial affairs and telecommunication” in Classes 9, 16, 35, 36 and 38. The Board concluded that at first glance the consumer will realise that it is a combination of letters and numbers, not a single word, and that it refers to a system that makes it possible to pay via a mobile telephone around the clock. Therefore, the mark as a whole was descriptive and not distinctive for the above mentioned goods and services (R1102/2008-1 MPAY24).

d.) Abbreviations / acronyms – Combination of abbreviations / acronyms

The acronym “LCD” means “liquid crystal display” and thus directly communicates to the relevant public that the goods chemical detectors capable of being used for

monitoring personnel, cargo, or facilities and that can be fixed or mobile; personal

chemical detectors, including detectors that can be worn in Class 9 are apparatus and devices, being chemical detectors, which have a liquid crystal display as a feature. The Board confirmed the descriptiveness of the acronym applied for (R0304/2010-2 LCD). In the case of the sign MVP or “Mitral Valve Prolapse”, the Board decided that the sign was descriptive for the applicant’s “computer software” in Class 9 which are dedicated to “simulate endovascular and percutaneous procedures” in the treatment of “Mitral Valve Prolapse” and to the applicant’s “educational and training services” in the use of medical devices for endovascular and percutaneous procedures” in Class 41. The specialist consumer would draw the instant conclusion that such training and education would relate to “Mitral Valve Prolapse” and its diagnosis and treatment (R0103/2010-2 MVP).

The term “ECO” stands according to various decisions17 for “ecological” and is immediately recognize as such. Consequently, combining it with other clearly descriptive or non-distinctive abbreviations or terms does not render the newly formed term registrable. Consequently, the Boards rejected ECOCLEAN because the meaning “ecologically clean” refers to the quality and intended purpose of the goods or to the subject of some of the services claimed like “plunge pools for disinfecting etc. and installations; metal-washing machines; cleaning installations; electric and

electronic controls for dryers; equipment and apparatus for exhaust air purification;

installation of air-conditioning, fooling; planning and simulation of air-conditioning” in Classes 6, 7, 9, 11, 37 and 42 (R1576/2009-1 ECOCLEAN). The combination ECOMEDIA was considered to be easily understood as meaning that the contested goods in Class 9 were goods on which data can be recorded and which also respect the environment and/or goods which make it possible to supply means, including

17 See decision of the First Board of Appeal of 23 September 2009 in Case R0488/2009-1 ECOEVENTS, at paragraph 13


11

telecommunications means, aimed at being respectful of the environment. The Board concluded that the sign was descriptive and devoid of distinctive character (R0683/2009-4 ECOMEDIA).

The neologism “ECOSTAND” with respect to “filter holders; stands, test tube and vial stands” in Classes 7, 9 and 11 was considered directly descriptive of stands or supports that are ecological (R0393/2010-2 ECOSTAND). In the same line the Board considered that the neologism ECOGRIGLIATI would immediately be understood by the relevant public as ecological gratings, or gratings made using materials and techniques that respect the environment, and therefore unequivocally transmits the information that the goods and services “metal gratings; sale of metal gratings;

building construction” in Classes 6, 35 and 37 respect the environment (R0348/2009-2 ECOGRIGLIATI). However, the Board allowed the registration of the combination Ecolift for lifting and conveying equipment for water, in particular for sewage … in Class 7. The Board was not been able to establish that “ecological” is a relevant criteria for or a relevant property of the mentioned goods in Class 7 (R1559/2009-4 ECOLIFT).

The letter “e” refers to “electronic” which gives the term E-INVESTOR a descriptive meaning with respect to “apparatus for recording, transmission or reproduction of

sound or images; magnetic data carriers, recording discs; data processing equipment

and computers; and insurance; financial affairs; monetary affairs; real state affairs” in Classes 9 and 36, since the sign will be perceived consumers who are interested in investments will immediately infer from the term E-INVESTOR that they are being offered goods and services which allow them to make investments via electronic means, be it via the Internet or email tools and services (R0629/2010-1 E-INVESTOR).

e.) Slogans and expressions

In several judgments, the Courts in Luxembourg have held that a trade mark which consists of signs or indications which are also used as advertising slogans, indications of quality or incitements to purchase are not excluded from registration simply because of such use. Slogans are not subject to stricter criteria than those applicable to other types of signs (T-138/00 and C-64/02 P “Das Prinzip der Bequemlichkeit”18).

The Court has also held that because a slogan can have a number of meanings, constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered, it should be noted that although the existence of such characteristics is not a necessary condition for establishing that an

18 See judgment of the General Court of 11 December 2001 in Case T-138/00 Erpo Möbelwerk GmbH v OHIM (“Das Prinzip der

Bequemlichkeit”) [2001] ECR II-3739 and judgment of the Court of 21 October 2004 in Case C-64/02 P OHIM v Erpo Möbelwerk GmbH (“Das Prinzip der Bequemlichkeit”) [2004] ECR I-10031 and judgment of 5 December 2002 in Case T-130/01 Sykes Enterprises Incorp. V OHIM (“Real People Real Solutions”) and, most recently, judgment of the General Court of 9 July 2008 in Case T-58/07 BYK-Chemie GmbH v OHIM (“Substance for success”) [2008] ECR II-134*, and judgment of the General Court of 2 July 2008 in Case T-186/07 Ashoka v OHIM (“Dream it, do it !”) [2008].


12

advertising slogan has distinctive character. However, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character19.

In 2010, the Board allowed the registration of the slogan Small details. Big difference for goods and services in Classes 14, 18, 21, 25, 26 and 35, such as “jewellery, bags; hairbrushes; clothing and accessories, marketing and information”. In the Board’s view, the requested slogan contained an element of a play on words, where the contrasting words “small” and “big” are linked in one unit. The Board considered that the slogan also showed evidence of some degree of originality and expressiveness that makes it easy to remember (R0402/2010-2 Small details. Big difference). In case R0836/2009-1 Lost Generation, the Board decided that the mere fact that “Lost Generation” is known in connection with a generation of American writers is not sufficient to consider that the sign lacks distinctiveness, especially since no link can be identified between these writers and the rather technical services “telecommunications, providing Internet chat rooms and Internet forums” (Class 38).

However, the Boards are still very reluctant to accept slogans and have rejected the vast majority of them, such as IDEAS FOR A BETTER WORLD for “operating an online registry to offer third party intellectual property rights in an invention to potential

buyers” in Class 45 (R0859/2009-4 IDEAS FOR A BETTER WORLD) since it provides the target customer with a plain laudatory message relating to the nature of the services offered, to provide for technical improvements or other useful subject-matter the client can search for in the applicant’s database or online register. Your roof. For life was rejected for inter alia “common metals and their alloys; metal

building materials;…” in Class 6; “building materials (non-metallic); …” in Class 19; and “construction; maintenance and repair; installation services” in Class 37 since the sign applied for will rather be perceived as a laudatory statement that could apply to each and every business undertaking offering the relevant goods and services (R1099/2009-2 Your roof. For life). LA MARCA DE LAS GRANDES MARCAS was rejected for ”advertising services; business promotion services; advertising agency

services” in Class 35; the Board considered that the word sequence indicates to the consumer a characteristic of the services in question and the fact that said promotional and advertising services aspire to be those rendered to undertakings with better trade marks that have a higher profile on the market, conveying information of a promotional or advertising nature which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods and services (R1236/2009-4 LA MARCA DE LAS GRANDES MARCAS). PLAY. SHARE. TOUCH was denied protection for “mobile telephones; alarm clocks, calculators,

digital cameras, electronic address books and calendars, FM radio tuners, music and

video players, and sound and video recorders sold as component parts of mobile

19 See judgment of the Court of Justice of 21 January 2010 in Case C-398/08 P OHIM v Audi AG (“Vorsprung durch Technik”). See also judgment of 21 January 2011 in Case T-310/08, BSH Bosch und Siemens Hausgeräte GmbH v OHIM (“executive edition”).


13

telephones” in Class 9 since the relevant public will perceive it first and foremost as information, a positive message concerning the market value of the goods applied for, purely designating their features, rather than as an indication of the commercial origin of the goods (R1396/2009-1 PLAY. SHARE. TOUCH). The slogan FEEL THE DIFFERENCE was rejected for “non-medicated skin care preparations” in Class 3 as the message that the slogan applied for transmits is that when purchasing the applicant’s goods they are of such a quality that the consumers will prefer them as they will feel the difference on their skin before and after using the products or in comparison with the products of other competitors (R0715/2010-2 FEEL THE DIFFERENCE). Furthermore, SMART FOR LIFE COOKIE DIET was rejected for inter alia “vitamins and dietary and nutritional supplements, protein based nutrient dense

snack bars, cookies, mineral and aerated waters and other non-alcoholic drinks and

providing weight reduction planning” in Classes 5, 29, 30, 32 and 44 since the slogan is a banal, unimaginative, laudatory statement in plain English which tells consumers that the goods and services in question are a smart choice for people who want to enhance their quality of life by following a special diet (R0211/2010-1 SMART FOR LIFE COOKIE DIET). The Board decided that slogan “IT’S A BLESSING” is a common idiomatic expression that, as in German, expresses particular esteem for something. In relation to the services in Classes 35, 36 and 41, such as advertising, marketing,

Insurance, insurance consultancy and teaching and education the sign promises that using the claimed services will be a godsend to the customer and therefore suggests to the relevant public that these services are of a high quality. From the point of view of the relevant public, this is a purely promotional message. The fact that “Blessing” is also part of the applicant’s company name is consider by the Board to be a factor that lie outside the trade mark itself and it cannot be taken into account when assessing the distinctive character of a sign, since it is a fact that marketing strategies and trade mark proprietors can change at any time20 (R1160/2010-1 IT’S A BLESSING).

f.) Geographical names

In relation to geographical indications the Court of Justice has stated that the registration of geographical names as trade marks is prohibited where the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods in question or are liable to be used in future by the undertakings concerned as an indication of the geographical origin of that category of goods (C-108/97 and C-109/97 Windsurfing Chiemsee21).

20 See also decision of the Boards of Appeal of 3 March 2006 in Case R 18/2006-4 Schweizer Rechtsanwälte, at paragraph 14. 21 See judgment of the Court of 4 May 1999 in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions- und

Vertriebs GmbH (WSC) v Boots- und Segelzubehör Walter Huber and Franz Attenberger (“Chiemsee”) [1999] ECR I-2779 and, most recently, judgment of the General Court of 15 October 2008 in Case T-230/06 Rewe-Zentral AG v OHIM (“Port Louis”) [2008].


14

In line with this case-law, the Boards refused the term VENEZIA for “apparatus for lighting” in Class 11, and “unworked or semi-worked glass (except glass used in

building); glassware” in Class 21. The Board concluded that the average European consumer will be led to make a direct and specific association between the name “Venezia” and the place where the relevant goods are manufactured, believing that the goods are made of the famous Murano glass (R0392/2010-1 VENEZIA). The Board refused registration of the name PORTOBELLO, a street in the Notting Hill district of London, famous for its Saturday market for “retail services” in Class 35. The Board estimated that the mark “PORTOBELLO” immediately and directly informs the consumer that the applicant’s retail services are based in a unique (geographical) location, world-famous for its shops, stalls, boutiques and other retail outlets (R0841/2010-2 PORTOBELLO). The Board declared invalid the CTM PATAGONIA as being descriptive for “beers” in Class 43. The Board decided that although not protected as a geographical indication under Community law, “PATAGONIA” makes reference to an enormous region in South America in which a substantial part is dedicated to the brewing business (R1727/2007-1 PATAGONIA).

In respect of the expression GREAT CHINA WALL, the Board recognised that the GREAT CHINA WALL had an extremely high cultural and historical significance but it was not known in the Community for the presence of any facilities for the production of clothing, textile and fashion accessories. Therefore, the expression could not provoke an association in the mind of the average consumer with the origin of the category of goods concerned in Classes 18, 24 and 25 and the application for cancellation was rejected (R0281/2009-1 GREAT CHINA WALL).

2. Figurative marks

a.) Words

The Courts in Luxembourg have held that where a sign in respect of which registration as a “figurative mark” is sought consists merely of script in a normal, common font, the script will normally be devoid of any figurative character and therefore its registrability must be assessed in line with the principles governing word marks22.

Consequently, the Board assessed the figurative CTM applied for biopROtector as a word mark and considered that when applied to the goods “water treatment units

used to prevent membrane fouling in water treatment installations” in Class 11, the relevant public will immediately understand the sign as a direct reference to the kind and function of the goods in question, i.e. that they act as biological (ecological) protectors for the environment, or that they act as biological protectors of membranes in water treatment installations. The fact that the letters “RO” are in upper case in the middle of a word were

22 Judgment of the General Court of 5 December 2000 in Case T-32/00 Messe München GmbH v OHIM (“Electronica”) [2000] ECR

II-3829.

R0527/2010-2


15

not enough to give the sign applied for any distinctive character because the relevant public will not focus on this detail, but will mainly perceive the trade mark applied for as “bioprotector” (R0527/2010-2 biopROtector [fig.]).

The figurative trade mark PERLE was considered by the Board to be descriptive and not distinctive when used in connection with “wines, sparkling wines”. The term “perlé” is used in oenology to refer to a “lightly sparkling wine”. The Board concluded that this “technical” term refers to a characteristic of wines which must of necessity be familiar to some of the relevant public, in particular sector professionals such as oenologists, wine waiters, and owners and employees of wine-tasting cellars and to some consumers of the goods at issue (R1249/2010-2 PERLE [fig.]23). The figurative mark natural beauty was rejected for “cosmetics; body and beauty care products” Class 3. The Board decided that the relevant consumer will perceive it as a meaningful expression referring to preserving such combined perfection of form and charm, which is consistent with nature. It may serve to describe that the goods applied for help the consumer to preserve his or her natural beauty. The Board underlined that the figurative element is limited to the use of an ordinary typeface, the fact that both word are written one over the other and that the “b” within “beauty” is slightly bigger than the other word cannot divert consumer’s attention from the clear message conveyed by the descriptive words. Therefore, the Board concluded that these elements cannot alter the conclusion that the sign is descriptive (R0971/2010-1 natural beauty [fig.]24).

Likewise, the Courts have held that merely presenting a descriptive term inclined, in a frame, with standard ornaments or with other non-distinctive graphic elements cannot render the mark distinctive25. In this sense, the Board decided that the word “food” in white letters and in a standard typeface, written against a black, circular background for “entertainment services, television programmes and the provision of

information” in Classes 41 and 43 immediately informs consumers without further reflection that the services applied for, are entertainment services, television programmes and the provision of information all relating to food (R1055/2009-1 food [fig.]).

However, implementing the judgment of the General Court 16 September 2009 in Case T-0180/0726, the Board allowed the figurative combination MADRIDEXPORTA for a range of

23 Case appealed before the GC under T-104/11. 24 Case appealed before the GC under T-559/10. 25 See judgment of 15 December 2009 in Case T-476/08 Media-Saturn-Holding GmbH v OHIM (“Best Buy”) [2009] ECR publication

pending, at paragraphs 27 and 28. 26 Judgment of the General Court of 16 September 2009 in Case T-180/07 Promomadrid Desarrollo Internacional de Madrid, SA. v

OHIM (“MADRIDEXPORTA”).

R0971/2010-1

R1249/2010-2

R1055/2009-1

R0895/2010-4


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goods and services in Classes 16, 35, 36, 38 and 39 such as “publications, magazines;

commercial or industrial business management assistance; financial sponsorship;

communications via computer networks; arranging of tours; providing on-line

electronic publications (not downloadable); scientific and technological services and

research and design relating thereto etc.” as it did not find a relationship between the sign and the goods and services applied for which is direct and specific enough to enable the relevant public immediately to perceive in the sign, without further reflection, a description of the goods and services or of one of their characteristics. Furthermore, the Court did not indicate any other reasons why Article 7(1)(b) CTMR should apply other than those relating to the prohibition under Article 7(1)(c) CTMR (R0895/2010-4 MADRIDEXPORTA [fig.]).

b.) Images

According to the established decision-making practice of the Boards of Appeal and the Court, simple basic geometric shapes (e.g. squares, rectangles and ovals) are normally devoid of distinctive character27. Consequently, the Board rejected the shape of a simple equilateral triangle, coloured grey with a white centre for goods in Classes 7, 8, 9, 10, 11 and 14. The Board considered that even if the sign is noticed at all, it is not likely to be perceived prima facie as a trade mark. The Board estimated that in relation to at least some of those goods the sign was just as likely to be perceived as indicating the presence of a switch or as inviting the consumer to pay attention to printed information about how to use the goods correctly (R0553/2009-1 shape of a triangle [fig.]).

The Board rejected a figurative mark consisting in two rectangles, one inner and one outer, joined by a stripe of yellow colour for goods and services in Classes 9, 16, 35 and 41 such as “photographic apparatus and instruments, printed

matter; photographs, stationery, retail and online store services in the

fields of GPS travel devices, educational and entertainment services”. The Board saw the sign applied for as a simple frame. It could not be considered as one that is capable of leaving an impression on the memory of the target public as an indication of the commercial origin of the goods and services (R0500/2009-2 YELLOW FRAME [fig.]).

The Boards rejected the representation of an oblique and solid parallelogram for goods and services in Classes 9, 14, 16, 18, 21, 24, 25, 28, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45. In the Board’s view, in a context of normal use on the market, in respect of the goods and

27 See judgment of the General Court of 3 July 2003 in Case T-122/01 Best Buy Concepts Inc. v OHIM (“Best Buy”) [2003] ECR II-

2235; judgment of the Court of First Instance of 12 September 2007 in Case T-304/05 Cain Cellars Inc. v OHIM (“Pentagon”) not published in the ECR, paragraph 22; judgment of 29 September 2009 in Case T-139/08 The Smiley Company SPRL v OHIM (“Smiley”) not yet published, at paragraph 31.

R0553/2009-1

R0500/2009-2

R1018/2009-2


17

services in question, the sign will be perceived as a simple pattern. It has no aspect which may be easily and instantly memorised by an even relatively attentive relevant public and which would make it possible for it to be perceived immediately as an indicator of commercial origin in respect of the goods and services covered (R1018/2009-2 SHAPE OF A PARALLELOGRAM [fig.]28).

The Boards confirmed the rejection of several figurative signs consisting of fabric patterns29.

R0189/2010-4 R0188/2010-4 R0190/2010-4 R0191/2010-4

The Board applied the criteria developed by the case-law for assessing the distinctive character of trade marks that show the product itself. These criteria apply not only for three-dimensional marks showing a representation of the product itself, but for any trade mark application representation of which coincides with the product’s outward appearance, including the colour and the surface30.

In all cases, the Board considered that for the goods of classes 18, 24 and 25, the fabric patterns are a representation of the outward appearance of the goods themselves. The goods in respect of which objections were raised are fabrics or goods made of fabrics or with fabric surfaces. The subject of the applications were declared to be devoid of distinctive character for the mentioned goods (R0189/2010-4 Fabric pattern I [fig.]31; R0188/2010-4 Fabric pattern II [fig.]32; R0190/2010-4 Fabric pattern III [fig.]33; R0191/2010-4 Fabric Pattern IV [fig.]34).

The Boards also rejected images as non-distinctive, commonplace representations of the goods with no characteristics notably different from those commonly found in the particular commercial sector, such as the representation of a bottle of milk for “dietary food and drinks for medical use; milk and dairy products; mineral and aerated waters”

in Classes 5, 29 and 32 (R1442/2009-1 REPRESENTATION OF A BOTTLE OF MILK [fig.]) or the shape of a bread for inter alia “dietetic bread and

28 See judgment of the General Court of 13 April 2011 in Case T-159/10 Société Air France v OHIM (“SHAPE OF A

PARALLELOGRAM”), confirming the contested decision R1018/2009-2. 29 See also case R1317/2010-4 Stoffmuster V, appealed before the GC under T-26/11; case R1316/2010-4 Stoffmuster VI,

appealed before the GC under T-50/11 and R1284/2010-4 Stoffmuster VII, appealed before the GC under T-31/11. 30 See judgment of the Court of Justice of 4 October 2007 in Case C-144/06 Red and white tablet with blue centre; judgments of

the General Court of 23 May 2007 in Case T-241/05 Square white tablet with coloured floral design, at paragraph 43, and of 9 October 2002 in Case T-36/01 Glaverbel I, at paragraph 23.

31 Case appealed before the GC under T-327/10. 32 Case appealed before the GC under T-326/10. 33 Case appealed before the GC under T-190/10. 34 Case appealed before the GC under T-329/10.

R1442/2009-1


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other dietetic baked goods for medical purposes; bread, baked dough

products; and production of recipes for baking bread, baked dough

products and crunchy snacks” in Classes 5, 30, and 43 (R1130/2010-4 Form von Gebäck [fig.]).

Continuing their practice, the Boards rejected pockets design representation as non-distinctive35, see R0730/2009-4 a device of a pocket [fig.] for “trunks and travelling bags; umbrellas, parasols in Class 18 and clothing, footwear, headgear, jeans, clothing made of jeans in Class 25. The Board decided that the device was not substantially different from what is common on the market and can be expected by consumers, which would merely see in the sign applied for a decorative element and would not permit them to recognise the quality and origin of those goods unless he or she has been previously educated to do so through intensive use. In the same sense, see

R0868/2009-4 device of a pocket [fig.] considered not distinctive for “leather and imitations of leather, and goods made of these materials

and not included in other classes; etc” in Class 18, “clothing, footwear, headgear” in Class 25 and “retail services” in Class 35.

However, the Board considered distinctive a flower design for goods in Classes 18 and 25. In the Board’s view, the design of a stylised flower, such as that registered by the proprietor, was perfectly able to function as a company trade mark. It does not have any conceptual link with the goods (which are clothes and leather goods) and may be perceived by consumers as the “symbol” of a specific company. Therefore, the ground of invalidity based on the lack of distinctive character of the Community trade mark was unfounded (R1235/2009-1 FLOWER SHAPE [fig.]).

c.) Colours

In accordance with the case-law of the European Court of Justice (C-104/01 “Orange”), the reasons that may lead to the refusal of registrations of single colours include the limited number of shades of colour that the relevant consumer of the goods can actually distinguish because he is rarely in a position to compare directly products in various shades of colour with one another and the general interest factor, in not unfairly limiting the availability of colours to others operating in the market.

In 2010, the Boards of Appeal decided not to annul a colour CTM registered for “rubber teats for milking installations” because the number of goods for which the mark was registered was very restricted, the relevant market very specific and the

35 See also R1381/2010-4 Form einer Tasche [fig.].

R1130/2010-4

R0730/2009-4

R0868/2009-4

R1235/2009-1


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evidence submitted by both confirmed that the CTM proprietors’ yellow differs markedly from the colour black, which seems to be the standard colour for objects made of rubber (R0371/2009-2 YELLOW [colour mark]).

The Boards rejected several pure colour trade marks, such as (“Pantone Green C”) as the colour “green” is one of the simplest and most common colors in the sector of “sanitary installations and sanitary articles” (Classes 11, 16, 20

and 21” (R0377/2010-1 green [colour mark]) and for “pumps and their parts and

heating installation” in Class 7 (R1264/2008-4 green [colour mark]). The yellow

colour (PANTONE 809C) was rejected for goods and services connected with security. The goods “printed matter; adhesive films; chemicals compositions

containing fluorescent materials; chemical solutions of micro particles; adhesives” in Classes 1 and 16, may contain fluorescent material of the colour applied for. Therefore, fluorescent yellow will be primarily perceived as the colour of the products itself or an indication of the same on their packaging. The applicant’s services in Class 45 are specific services that belong to the field of security, crime prevention and forensics and the public is aware of the use of fluorescent colours in connection with security features (R0339/2010-1 YELLOW FLUORESCENT [colour

mark]). The colour (PMS 151 – orange) was rejected for “collets” in Classes 7 and 17 (R1200/2009-2 orange [colour mark]). Furthermore, the Board rejected the

colour combinations36 consisting of the combination of three colours (crimson, fuchsia and vermillion), which are represented in graduated form for a range of goods and services in Classes 9, 12, 16, 18, 24, 25, 28, 35, 36, 38, 39, 41 and 42. The Board held that the this sign will be perceived by the targeted public as a decorative or finishing component for the goods in question or their packaging, via the total or partial colouring thereof. That will also be the case if it is to be used, in connection with the goods in question, in advertising or in commercial papers. In the context of the claimed services, the same reasoning applied (R0317/2010-2 CARMIN, FUCHSIA ET VERMILLON [colour mark]).

d.) Position marks

There are no special criteria applying to position marks. Case-law developed for three-dimensional marks37 consisting of the shape and colours of the product itself

36 On this topic see the latest judgments of 12 November 2010 in Cases T-404/09 Deutsche Bahn v OHIM (“colours grey and red”)

and T-405/09 Deutsche Bahn v OHIM (“Vertical combination of the colours grey and red”). See also judgment of 24 June 2004 in case C-49/02 Heidelberger Bauchemie GmbH v Deutsches Patent- und Markenamt (« Blau/Gelb ») [2004] Rec. I-6129; judgment of 25 September 2002 in case T-316/00 Viking-Umwelttechnik GmbH v OHIM (« Grün/Grau ») [2002] Rec. II-3715, and of 9 July 2003 in case T-234/01 Andreas Stihl AG & Co. KG v OHIM (« Orange und Grau ») [2003] Rec. II-2867.

37 See inter alia judgments of the Court of Justice of 29 April 2004 in Joined Cases C-456/01 P and C-457/01 P Henkel KGaA v OHIM (“Tabs”) [2004] ECR I-5089; of 12 January 2006 in Case C-173/04 P Deutsche SiSi-Werke GmbH & Co. Betriebs KG v OHIM (“Standbeutel”) [2006] ECR I-551; and, most recently, judgment of the General Court of 10 October 2008 in Joined Cases T-387/06 to T-390/06 Inter-Ikea Systems BV v OHIM (“Pallet”) [2008] and judgment of the General Court of 17 December 2008 in Case T-351/07 Somm Srl v OHIM (“Copertura ombreggiante”) [2008] and judgment of the Court of 15 June 2010 in Case T-547/08, “Strumpf”, paragraph 19.


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may also be relevant if the trade mark applied for is a position mark reproducing elements of the shape of the product. In such cases, the trade mark does not consist of a sign which is independent from the appearance of the product it denotes.

As an example, in the case of the PATTERNS ON A FLASHLIGHT, the Board decided that the applied-for representation of the mark showed the shape and appearance of the claimed goods “flashlights” in Class 11. The claimed elements were considered to be neither individually nor in their combination of such a kind that there is a substantial difference over the existing shapes of flashlights. The Board concluded that it does not permit the relevant consumer to distinguish the claimed goods as to their commercial origin (R1207/2009-4 PATTERNS ON A FLASHLIGHT [position mark]).

The Board also decided that two retroreflective parallel strips

on a school satchel were not distinctive for inter alia “bags, schoolbags (satchels), travelling bags …” in Class 18 (R0283/2010-1 LINES ON A SCHOOL SATCHEL [position mark]).

The Board rejected a heart shaped pin, placed near to the right-hand edge of the back pocket of a pair of trousers for “clothing” in Class 25 (R0238/2010-2 HEART [position mark]). The Board confirmed that the ornament in question, comprised of a mundane and very simple heart shape, does not significantly differ from various basic forms which are commonly used in trade, but is simply a variant of the infinite types of ornamentation used for the goods claimed38.

38 On this topic see for example judgment of 15 June 2010 in Case T-547/08 X Technology Swiss v OHIM (“Orange colouring of the

toe of a sock”) at paragraphs 19-21.

R1207/2009-4

R238/2010-2

R238/2010-2


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3. Three-dimensional marks

a.) Shapes of products

There is, in principle, nothing to prevent a sign that consists exclusively of the shape of a product from constituting a Community trade mark provided that it is capable of being represented graphically and distinguishing the goods or services of one undertaking from those of other undertakings pursuant to Article 4 CTMR39. The Courts have stated that, while the public is used to recognizing word marks or figurative marks as signs identifying a product, this is not necessarily so when the sign is indistinguishable from the appearance of the product itself40.

The Board accepted a three-dimensional mark consisting on the shape of a loudspeaker41 for “wireless home theater systems; combined-type home theater

systems; …; speakers for home theater systems; audio-video [AV] receivers for home

theater systems; projectors for home theater systems” in Class 9. The Board concluded from the evidence provided that the loudspeaker is represented in a shape of an oar or a Champagne flute and in this shape it is striking that its main body is smoothly curved, as it becomes narrower from approximately the top third of the height to the mid-height of the shape, so as to smoothly merge into the stem. Those features distance the trade mark applied for from the customary shapes of loudspeakers which are commonly found in trade and render the sign distinctive (R0782/2010-2 SHAPE OF A LOUDSPEAKER [3D mark]).

The Board also dealt with several representations of bags applied for “bags and handbags”, in Class 18 which were rejected since the relevant public would not consider the overall shape of the handbag as a distinctive sign but as the actual design of the goods themselves.

39 See, by analogy, judgment of the Court of Justice of 18 June 2002 in Case C-299/99 Koninklijke Philips Electronics NV v

Remington Consumer Products Ltd., “Remington”, paragraph 73, [2002] ECR I-5475, and 8 April 2003 in Joined Cases C-53/01, C-54/01 and C-55/01 Linde AG, Winward Industries Inc. and Rado Uhren AG v Deutsches Patent- und Markenamt, “Linde”, paragraph 38, [2003] ECR I-3161; and, most recently, judgment of the General Court of 17 December 2008 in Case T-351/07 Somm Srl v OHIM (“Copertura ombreggiante”) [2008].

40 Judgments of the General Court of 19 September 2001 in Cases T-335/99, T-336/99, T-337/99 Henkel KGaA v OHIM (“Tabs”) [2001] ECR II-2581, 2589, 2597; judgments of the Court of 29 April 2004 in Joined Cases C-456/01 P and C-457/01 P Henkel KGaA v OHIM (“Tabs”) [2004] ECR I-5089; and, most recently, judgment of the General Court of 17 December 2008 in Case T-351/07 Somm Srl v OHIM (“Copertura ombreggiante”) [2008].

41 See also decision of the First Board in case R0497/2005-1 loudspeaker [3D Mark] annulled by the judgment of 10 October 2007 I case, T-0460/05 Bang & Olufsen A/S v OHIM, ‘Loudspeaker’, [2007] ECR II-4207.

42 Case appealed before the GC under T-409/10. 43 Case appealed before the GC under T-410/10.

R0782/2010-2

R1247/2009-142 R1539/2009-143

SHAPE OF A BAG Shape of a Bag


22

Several other applications were rejected since they were the representation of the goods in question and they did not substantially different from what is common on the market and can be expected by consumers, such as

R0771/2010-1 R0825/2010-4 R0901/2010-4 R1035/2004-144 R0942/2009-1 R1064/2009-1

SHAPE OF A CERAMIC-CUTTING MACHINE

TEXTURED WIRELESS EARPIECE

CURVED WIRELESS EARPIECE

SHAPE OF GUITAR Shape of watch Arrester plug-

in

b.) Bottles and containers

For goods which do not possess an intrinsic shape and must be packaged in order to be marketed, the packaging imposes its shape on the goods. Such is the case, for example, for goods manufactured in the form of granules, powder or liquid which, because of their very nature, lack a shape of their own. Only when the trade mark differs considerably from the norm or custom in the relevant sector can an average consumer distinguish the goods concerned from those of other undertakings45. If the overall impression is that of one usually encountered in that area of commerce and departs from the norms of the sector only by secondary features, the sign is not distinctive46.

Several bottles and containers were rejected by the Boards under Article 7(1)(b) because they did not differ form those found on the market, such as

R0299/2010-4 R0933/2009-1 R1516/2009-1 R0805/2009-1 R0172/2009-4 R0491/2010-4 R1489/2009-1

Container with lid Box Beverage bottle ILLVA SARONNO Shape of a bottle Shape of a bottle STAND-UP POUCH

44 The first Board decision in case R1035/2004-2 Shape of Guitar was annulled by the GC by judgment of 7 February 2007 in case

T-317/05. The Presidium of the Boards of Appeal referred the appeal to the Second Board ‘to take a new decision” which was taken on the 22 of July 2010.

45 Cf. Judgment of the Court of Justice of 12 February 2004 in Case C-218/01 Henkel KGaA v Deutsches Patent- und Markenamt (“Perwoll”) [2004] ECR I-1725 and of 30 June 2005 in Case C-286/04 P Eurocermex SA v OHIM (“Botella Corona”) [2005] ECR I-5797.

46 Judgment of the Court of 25 October 2007 in Case C-238/06 P Develey Holding GmbH & Co. Beteiligungs KG v OHIM (“Plastikflaschenform”) [2007].


23

However, the Board allowed the registration of a bottle (R1027/2009-2 LEX Ultra [3D mark]). The Board decided that although the applicant’s mark may not be high in distinctive character, the feature, which resembles a dagger driven into the neck of the bottle, gives a minimum degree of distinctiveness to the shape of the bottle, and it is able to be distinguished and to fulfil the essential function of a trade mark for “alcoholic beverages (except beer)” in Class 33 and “glassware, namely

bottles” in Class 21. The Board considered that, a fortiori it had the required minimum level of distinctive character for all the services in Class 35 such as “advertising; business management; business administration; office functions,

importation and exportation of alcoholic beverages; retail and wholesale services

with alcoholic beverages”.

C. Article 7(1)(e) CTMR47 – Article 52(1)(a) CTMR

The prohibition under Article 7(1)(e)(ii) CTMR against the registration of a three dimensional trade mark that produces a technical result is in accordance with the public interest of keeping technical solutions free under trade mark law48.

In 2010, the Board applied the grounds for refusal foreseen in Article 7(1)(e) CTMR to two “figurative trade marks” representing the handle of a knife. The Board considered that as the Court of Justice and General Court have held, the case-law developed in respect of three-dimensional marks consisting of the appearance of the product also applies to “figurative” marks that consist in two-dimensional representations of products. From the US Patents cited in these cases, the Board deduced that the non-skid effect is produced by the fact that the surface of the handle has been made uneven, thus allowing a better grip and the dents, therefore, are necessary to obtain a technical result, i.e. the result of preventing the hand holding the handle from accidentally slipping. Therefore, the Board declared the registration of both trade marks invalid for the goods protected in Classes 8 and 21 inter alia “cutlery, scissors, knives, forks, and household or kitchen utensils and containers (not of precious metal or coated

therewith)...” (R1235/2008-1 a surface covered with circles [fig.] and R1237/2008-1 a surface covered with circles [fig.]).

47 In relation to Article 7(1)(e)(iii) CTMR see decision of the First Board of Appeal of 10 September 2008 in case R497/2005-1,

appealed under case T-508/08, pending before the General Court. 48 See C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. (“Remington”) [2002] ECR I-5475 and

judgment of the General Court of 12 November 2008 in Case T-270/06 Lego Juris A/S v OHIM (“Lego brick”) [2008].

R1027/2009-2

R1235/2008-1 R1237/2008-1


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The Boards also cancelled a 3D mark representing the shape of an oven because the sign consisted of a shape, which was essentially designed to enable a technical result, i.e. “heating”, even if that result can be achieved by other shapes. In this case, the existence of an expired patent where the summary of the invention describes features which are visible in the CTM proprietor’s trade mark strongly support the Board’s view that the shape taken as a whole is functional (conduits placed above and below the firebox rather than on the sides; etc.) (R0808/2009-2 Shape of an oven) [3D mark]).

However, the Boards in the case of the figurative mark consisting in the shape of a

clasp lock decided that such shape was not necessary to obtain a technical result as the mechanism of a clasp lock is not visible in the device and is not affected by the trade mark applied for but merely the upper more decorative clasp in a triangular form seemingly hiding the lid and the lock that is necessary for the closing mechanism underneath. The clasp itself may take on any shape, whether rectangular, round, hexagonal or triangular. The same applies to the lower part, i.e. the lock. The shape used for the lock, a rectangle, is also not necessary to be able to use the sign as a lock which could in fact have many other different shapes. Consequently, the specific shape of the clasp lock is not necessary to obtain a technical result [R1590/2008-1 Device of a clasp lock [fig.]).

D. Article 7(1)(f) CTMR – Article 52(1)(a) CTMR

Article 7(1)(f) CTMR prohibits the registration of “trade marks which are contrary to public policy or to accepted principles of morality”. The Boards have developed some criteria to decide if a sign might be contrary to public policy or accepted principles of morality49. In assessing whether a trade mark falls under this prohibition the Office must apply the standards of a reasonable person with normal levels of sensitivity and tolerance. The Office should not refuse to register a trade mark which is only likely to offend a small minority of exceptionally puritanical citizens. The refusal to register a trade mark because of being immoral must be based on the fact that the examined trade mark is judged to be immoral because it is offensive to a substantial part of the public, whose values and moral patterns are somewhere between the extremes. It is also necessary to consider the context in which the trade mark is likely to be encountered, assuming normal use in connection with the goods and services covered by the application.

49See decision of the Grand Board of 6 July 2006 in R 495/2005-G SCREW YOU and decision of the Second Board of 5 March 2010 in

case R 1509/2008-2 DEVICE OF THE COAT OF ARMS OF THE SOVIET UNION [fig.] (appealed before the GC under T-232/10).


25

In 2010, the Boards considered that the expression “HIJOPUTA” contained in the figurative mark ¡QUE BUENU YE! HIJOPUTA applied for goods and services in Classes 33, 35 and 39 was ineligible for registration as it is an undoubtedly offensive expression in the Spanish language, and therefore, except for special circumstances, it has the intrinsic capacity to offend any normal person who perceives it and understands its meaning (R0175/2010-2 ¡QUE BUENU YE! HIJOPUTA [fig.]50).

However the Boards decided that the expression “Fucking Hell” did not fall into the prohibition of Article 7(1)(f) CTMR. The applicant argued in this case that there was a village called Fucking in Upper Austria, approximately 30 km north of Salzburg, which had been mentioned in a document for the first time as early as 1070. Its name originated from the Count Focko, and the word ‘Hell’ stood for ‘ein helles Bier’ [a pale beer]. The Board considered that there can be no objection to the idea of giving a beer speciality the name of a village plus the generic indication ‘Hell’ [pale]. In relation to the infringement of Article 7(1)(f) CTMR, the Board decided that the word combination contains no semantic indication that could refer to a certain person or group of persons. Nor does it incite a particular act. Neither could be understood as an instruction that the reader should go to hell. It is an interjection used to express deprecation, but it does not indicate against whom the deprecation is directed. The Board allowed the publication of the sign for goods in Classes 25, 32 and 33 (R0385/2008-4 Fucking Hell [fig.]).

E. Article 7(1)(g) CTMR – Article 52(1)(a) CTMR

Pursuant to Article 7(1)(g) CTMR, trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or purpose of the goods, shall not be registered.

As the Courts in Luxembourg have held, deception in this sense is particularly present if the trade mark, per se, contains an incorrect indication in relation to the product claimed, which is objectively capable of being misleading in any reasonably conceivable case in which it is used, with it being necessary to take into account the presumed expectations of an average consumer who is reasonably well informed and reasonably observant and circumspect and any social, cultural or linguistic factors51.

The Boards consider that the sign BEST MEDICAL was deceptive for “shoes and footwear” in Class 25. The designation “BEST MEDICAL” suggests that the shoes offered under this designation are of a medical nature, and this includes the idea that

50 Case R0175/2010-2 is appealed before the General Court under number T-417/10. 51 See judgment of the Court of 13 January 2000 in Case C-220/98 (“Lifting”), at paragraphs 27 and 29.

R0385/2008-4

R0175/2010-2


26

they could be used for orthopaedic treatment. In actual fact, however, shoes in Class 25 of this type. Orthopaedic shoes are included in Class 10. Therefore, the Board concluded that the sign was capable of deceiving the general public about one of the properties of the goods (R0778/2010-1 BEST MEDICAL).

F. Article 7(1)(h) CTMR – Article 52(1)(a) CTMR

According to Article 7(1)(h) CTMR which relates to symbols which are protected under the Paris Convention, trade marks containing such symbols are to be refused if the owner has not been authorised by the competent authorities52. In 2010, the Board decided not to cancel the CTM “IQNet”. The Board considered that there was nothing in this abbreviation that would refer to any connection with the European Community or its official institutions. The fact that one of its letters is constructed from stars – without a further, special emphasis, or colour effects, - is not enough to create an imitation of the European Emblem. If the consumer perceives the star motif in the CTM as a “Q” rather than a replication or imitation of the circular star design on the European Emblem (and there is no reason to see it any other way), it follows, as a matter of logic, that the CTM cannot imitate the emblem from a heraldic viewpoint. Thus, the CTM in question is not an imitation of the European Emblem from a heraldic point of view for the purposes of Article 6ter (1)(a) of the Paris Convention (R0178/2008-4 IQNet [fig.]).

G. Article 7(1)(j) CTMR

In accordance with Article 7(1)(j) CTMR, a sign shall not be registered as a trade mark for wines if it contains or consists of a geographical indication identifying wines not having that origin. The same applies to spirits. According to the Boards” case-law53 it is sufficient for the mark to contain a false geographical indication, e.g. applied to wines of a different origin, to be refused, without it being necessary to determine whether the trade mark as a whole is of such a nature so as to deceive the public by misleading the consumers as to its geographical provenance.

In 2010, the Board rejected a trade mark consisting of the terms “RIOJA” and “SANTIAGO”. Each term coincides with those of individual designations of origin protected for wines, “RIOJA” by the European Union and “SANTIAGO”, a geographical indication for a wine originating from Chile, being protected under a bilateral agreement between the European Union and the Republic of Chile published in the Official Journal (L 352 of 30 December 2002, p. 0003 – 1450). The Board decided that

52 See judgment of 21 April 2004, T-127/02 Concept - Anlagen u. Geräte nach 'GMP' für Produktion u. Labor GmbH v OHIM

(“ECA”) and judgment of 16 July 2009 C-202/08 P and C-208/08 P American Clothing Associates NV (“RW feuille d’érable”). 53 Cf. R 1220/2000-2 DUQUE DE VILLENA, R 1221/2000-2 DUQUE DE PEÑAFIEL, R 946/2002-1 MANZANILLA GONZÁLEZ PALACIOS

and R 1185/2006-1 CASABLANCA.

R0178/2008-4


27

as the protection applied for the trade mark is not limited to wines with a geographical origin in the territory corresponding to said designations of origin, the trade mark should be regarded as a false indication in the case of wines that have a geographical origin that is different from that of each of the two designations included (R0053/2010-2 RIOJA SANTIAGO).

The Board allowed the application for wines in Class 33. The Board did not consider that the existence of the geographical indications existing in Hungary (Duna Borrégió, Duna melléki and Duna-Tisza közi) could justify the application of Article 7(1)(j) CTMR in the present case. The term “DUNA” in the geographical indications in question simply refers, in Hungarian, to the Danube, but the reproduction is imperfect because the sign applied for has an acute accent on the “A” which significantly alters the pronunciation of the word in question, particularly for Hungarian speakers who are the only members of the public in the EU who are likely to understand this word. The Board concluded that the mark will not be perceived as a reference to the Danube in either Hungary or Romania nor in the rest of the EU. Therefore, the mark would not deceive consumers as to the place of origin of the wine (R0822/2010-2 VAL DUNA [fig.]).

H. Article 7(3) CTMR - Article 52(2) CTMR

According to the case-law of the European Courts the acquisition of distinctive character as a consequence of the use of a mark requires that at least a significant proportion of the relevant section of the public identifies products or services as originating from a particular undertaking54 and that the use must be demonstrated in the substantial part of the Community where the mark is devoid of any inherently distinctive character under Article 7(1)(b) to (d) CTMR55.

In relation to non-verbal marks, it can be presumed that the assessment of their distinctive character is the same throughout the Community, unless there are any specific indications to the contrary56. In 2010, the Boards decided that in the case of a figurative trade mark representing the devise of a clasp lock the CTM proprietor has failed to submit evidence for a number of Member States, such as Austria, Belgium, Czech Republic, France, Germany, Greece, Italy, Spain, Sweden, United Kingdom,

54 Cf. judgment of the General Court of 29 April 2004 Case T-399/02 Eurocermex v OHIM (“Botella Corona”) [2004] ECR II-1391,

at paragraph 42; see also, by analogy, Joined Cases C 108/97 and C 109/97 Windsurfing Chiemsee [1999] ECR I 2779, paragraph 52; and Case C 299/99 Philips [2002] ECR I 5475, paragraph 61; and, most recently, judgment of the General Court of 17 December 2008 in Case T-351/07 Somm Srl v OHIM (“Copertura ombreggiante”) [2008].

55 Cf. judgments of the General Court of 30 March 2000 in Case T-91/99 Ford Motor Company v OHIM (“Options”) [2000] ECR II-1925, paragraph 27, of 15 December 2005 in Case T-262/04 BIC SA v OHIM (“Briquet à pierre”) [2005] ECR II-5959, paragraph 62 and of 5 March 2003 in Case T-237/01 Alcon v OHIM– Dr. Robert Winzer Pharma (BSS) [2003]ECR II-411, paragraph 52; and, most recently, judgment of the General Court of 19 November 2008 in Case T-269/06 Rautaruukki Oyj v OHIM (“Rautaruukki”) [2008].

56 Judgment of the General Court of 15 December 2005 in Case T-262/04 BIC SA v OHIM (“Briquet à pierre”) [2005] ECR II-5959, paragraph 68 and most recently judgment of the General Court of 27 April 2010 in case T-109/08 Freixenet SA v. OHIM (“Bouteille émérisée blanche”).


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Denmark, Ireland, Netherlands, Portugal, Hungary, Luxemburg and Cyprus. That finding is sufficient to reject the CTM proprietor’s claim that the contested trade mark has acquired distinctiveness as a consequence of use for the goods in Classes 9, 14 and 18 (R1590/2008-1 device of a clasp lock [fig.]). Also the Board decided that the applicant had not demonstrated the acquired distinctiveness of a three dimensional sign consisting of the shape of an object consisting of two specular elements in rectangular form. The evidence provided referred exclusively to the Italian territory and not to the rest of the European Union (R0011/2010-2 SHAPE OF AN OBJECT CONSISTING OF TWO SPECULAR ELEMENTS IN RECTANGULAR FORM [3D

mark]). In case R1527/2009-2 the evidence provided related to a very small number of Member States, namely Spain, France, Portugal, the United Kingdom, Ireland and Hungary, and no proof has been adduced in connection with the remaining EU Member States (R1527/2009-2 [fig.]).

In the case of verbal signs, the distinctive character through use has to be proven in the Member state(s) where the sign lacks registrability. In case R0927/2009-1 GRÜDETA, as the word mark applied for is a term from the Lithuanian language meaning granular, the evidence needs to refer to use in Lithuania territory. When the sign is an English term, which is understood in the majority of the EU countries, the Board has ruled that the sign will be descriptive not only in the Member States of the Community where English is the official language, but in a great part of the Community. In this situation, it might happen that the evidence has to show the acquired distinctiveness even in Member States which are not English speaking countries (R0230/2010-1 ZOOM).

The evidence should relate to the sign as filed. In case R1291/2009-2 EUROFLORIST, the evidence provided by the applicant suffered from the fact that it does not relate to the graphic representation as filed. The Board concluded that the evidence as a

whole proved very consistent use of the figurative mark , reproduced in the majority of the evidence but not of the word mark applied for EUROFLORIST. For the Office, the additional figurative elements of the figurative sign actually used in trade do alter the distinctive character of the non-distinctive and descriptive word element “EUROFLORIST”, in more than insignificant details. Therefore that evidence of use of

the figurative mark , does not, in itself prove use (or distinctiveness acquired through use) of the otherwise non-distinctive and descriptive word element “EUROFLORIST”, alone. See also the decision R0401/2010-4 SHAPE OF A CAR [3D mark] where none of the items of evidence relate to the “neutral” shape of a car as would correspond to the representation of the mark as filed, but to the word mark “YARIS” or “TOYOTA”.


29

In 2010, the applicant proved the distinctiveness acquired through use of the word mark BERGE & MEER (mountains and the sea) in respect of “organizing, booking and arranging of travel and tours; transport of persons...” in Class 39 and “temporary

accommodation reservations and hotel reservations; arranging and rental of tourist

homes; advice via call centers or hotlines…” in Class 43. The evidence submitted related to the German-speaking Member States Germany and Austria (R1257/2008-4 BERGE & MEER). The Board accepted that the evidence provided had shown that the trade mark “EUROPE DIRECT” has become distinctive in relation to the services in classes 38 and 41 for which registration is requested in consequence of the use which has been made of it in France, Belgium, Luxembourg, United Kingdom, Ireland and Malta (R0232/2010-2 EUROPE DIRECT).

IV. Relative Grounds for Refusal – Opposition Proceedings and Invalidity Proceedings

A. Procedural issues with respect to opposition and invalidity proceedings

1. Substantiation of the earlier trade mark

In accordance with Rule 19 CTMIR, the opponent has to prove the existence of the earlier right with documents emanating from the administration by which the earlier trade mark was registered, unless the earlier trade mark is a CTM. Consequently, print-outs from private databases are not accepted by the Office57 (R0639/2008-4 MEDILOOK / Medilog, a printout from the private database SAEGIS does not prove the existence of the opponent’s earlier right; R1091/2009-2 LEONARDO PASSION / LEONARD, an extract from a commercial database cannot be taken into account). Printouts from the official database of the (national) office are acceptable. Consequently, printouts from ROMARIN58 (R1795/2008-4 ZAPPER-CLICK / MOUSTI CLICK), IBIS59 (R0819/2009-1 AMADO SUR / ARMADA) and from SITADEX60 (R0651/2009-2 BICOFLEX [fig.] / FLEX [fig.]; R0909/2009-4 UTS Biogas / uts [fig.]) were accepted.

Where the earlier trade mark is not a word mark, a copy of the representation must also be filed (R1082/2006-4 CLS [fig.] / GLS).

2. Renewal/validity of the earlier trade mark

With respect to renewals, Rule 19(2)(a)(ii) CTMIR provides that within the time limit specified by the Office, the opposing party has to, inter alia, file proof of the

57 See previous Board decision in case R1260/2008-2 REXOSIL / TEXODIL. 58 R0601/2008-4 and R1199/2008-4 DIPLOMATICO / DIPLOMAT. 59 The database “IBIS” is the internal database of the UK Intellectual Property Office. 60 R0843/2008-1 MATRIX / MATRIX POWER ENERGY DRINK [fig.], R1731/2007-4 Hypercool / HIPERCOR [fig.] and R1149/2008-4

BUITONI PICCOLINIS [fig.] / PICOLINIS QUELY et al.


30

existence, validity and scope of protection of its earlier mark. As the case maybe, it might also have to provide a copy of the latest renewal certificate, namely one showing that the term of protection of the trade mark extends beyond the time limit set by the Office.

In several cases, the Boards rejected the opposition because the renewal of the earlier trade mark was not proved within the time-limit or not at all61 (R0733/2009-1 PROFERTIL [fig.] / PROTHIL; R1143/2009-4 CHILI / CHILI; R1542/2009-4 CASTELLER [fig.] / Castelli [fig.]; R0963/2010-2 PREMO / PREMA).

The Board, following the case law of the Court62, has held that as the renewal of a trade mark is an important condition for the validity of an opposition. Either the Board may check the renewal of its own motion or it may invite the opponent to provide evidence of renewal. By checking the renewal on its own motion, the Board of Appeal did not go beyond the bounds of the dispute between the parties (R1736/2008-1 PREKUNIL / PROKINYL L.P.).

3. Translations

Rule 19(3) CTMIR provides that the information and evidence necessary to substantiate the opposition has to be in the language of the proceedings or accompanied by a translation. Failure to provide a translation within the time-limit set by the Office leads to the rejection of the opposition63 (inter alia R1339/2009-2 KREX [fig.]) / CRÄX; R0655/2009-2 EUROLEAGUE / EUROLIGA [fig.]; R1025/2009-2 MED FRIGO S.A. [fig.] / FRIGO [fig.]) et al.; R1091/2009-2 LEONARDO PASSION / LEONARD; R0733/2009-1 PROFERTIL (fig.) / PROTHIL; R1768/2008-2 U Power [fig.] / POWER; R0627/2010-2 SA ROTA / SAROTTI et al.; R0088/2009-4 my baby / MYBABY et al. R0511/2009-4 RTV [fig.] / RTL TELEVISION [fig.] et al.).

Irrelevant administrative indications, or parts with no bearing on the case may be omitted from the translation (R1171/2008-4 MATRIXYL / MATRIX). However, the translations should reasonably reproduce the structure and content of the original (R0818/2009-4 MiniVITAKI [fig.] / VITAKIDS; R1768/2008-2 U Power [fig.] / POWER).

The Grand Board decided that in accordance with the case-law64 the possibility for parties to proceedings before the Office to submit facts and evidence after the expiry of the period specified for that purpose is conditional upon there being no provision to the contrary. It is only if that condition is met that the Office has the discretion as

61 See former Board decisions in cases R1598/2008-4 TWINS SPECIAL / TWIN; R1372/2008-4 GEMMI / LEMMI et al.; R0516/2009-2 LOUIS ESTERE / LOUIS; R0788/2008-4 LOCKMASTER / LOCK; R0973/2007-4 ANGELES MOLINA [fig.] / MOLINA. 62 See judgment of 16 December 2008 in Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06 Budĕjovický Budvar, národní podnik v OHIM (“Bud”) [2008] ECR II-3555, at paragraph 192. 63 See previous Board decisions, i.a., R1376/2008-2 FIBO [fig.] / FERIA INTERNACIONAL DEL FITNESS BODYBUILD.FIBO; R0702/2008-4 KICO[fig.] / KID&CO; R1897/2007-2 ALPHAREN/ALPHA D3; R0431/2008-1 MUSGO REAL [fig.] / MUSGO DE SANTIAGO [fig.]. 64 Judgment of the General Court of 12 December 2007 in Case T-86/05 K & L Ruppert Stiftung & Co. Handels-KG v OHIM (“Corpo livre”) [2007] ECR II-4923, at paragraph 47.


31

regards the taking into account of facts and evidence submitted out of time. It is apparent from Rule 20(1) CTMIR, in combination with Rule 19(3) and (4) and Rule 98(2) CTMIR, that submission of the translation of the registration certificate of the earlier mark after the expiry of the period specified for that purpose results, in principle, in the rejection of the opposition without the Office having a discretion in that regard. Substantiation of the earlier mark is a preliminary matter which must accordingly be settled before a decision is taken on the merits of the opposition65 (R1752/2008-1 ULUDAG / BURSA ULUDAG). It follows that the Office and, in particular the Board, does not have discretion in this case as regards the taking into account of the translation submitted by the opponent66 (R1752/2008-1 ULUDAG / BURSA ULUDAG).

4. Scope of the opposition

The opponent has to clearly identify the earlier right and the goods and services on which its opposition is based. The scope of the opposition is only to be defined by the opponent and the Office is restricted in its examination to the facts, evidence and arguments provided by the parties, Article 76(1) CTMR. The Office has no power to substitute one of the parties on an issue which only can be decided and communicated to the Office by it.

It is not admissible, in view of the time-bound nature of the opposition, to extend the scope of the opposition later, after expiry of the opposition period (R1061/2008-4 VITASIA / INDASIA et al.). Clearly, and for reasons of legal security, the grounds of opposition may not be extended once the deadline for filing the opposition has elapsed (R0024/2010-4 BOTU-DERM / BOTOX [fig.] et al.).

In relation to the scope of the grounds of opposition established in Article 8(1) (a) and (b) CTMR, the Boards have said on different occasions that they are not envisaged as different grounds of opposition but concern the same ground – i.e., likelihood of confusion – with two variants. In variant (a) the signs and the goods are identical, so that likelihood of confusion, being in re ipsa, need not be claimed. Variant (b) concerns, in principle, less extreme cases, where the signs and the goods are just similar, so that likelihood of confusion – a possible (but not obvious) occurrence – needs to be argued. Therefore, the argument that since the opponent ticked the box “Article 8(1)(a) CTMR” on the opposition form, the Opposition Division was prevented from ruling on Article 8(1)(b) CTMR is to be dismissed (R0280/2010-1 EUROBASKET / BASKET [fig.] et al.).

65 See decision of the Grand Board of 14 October 2009 in Case R0172/2008-G VISTA / VISTAR, at paragraph 50. 66 See also decision in case R0562/2009-1 Railport / Railport.


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B. Relative grounds for refusal:

1. Article 8(1)(b) CTMR

a.) Letter combinations without figurative elements or short word marks

The Boards found a likelihood of confusion in cases of identical or almost identical letter combination, where the goods and services were considered to be similar or identical67 (R0934/2009-2 L112 / L.114; R1007/2009-2 VTQI / VTQ and R1123/2009-1 XXL / XXXL).

The Boards, according to the Court68 case-law in a case of two letter marks, has indicated that, taking into account the fact that consumers generally attach more importance to the beginnings of words and that the two signs were composed of three letters only, the difference between the first letter of each of the signs was sufficient to enable them to be visually distinguished. Also from a phonetic perspective, the first letter of each sign was pronounced differently (R0406/2009-2 awc / IWC; R0922/2009-4 CFX / FX).

b.) Letter, numbers, letter combinations, acronyms and abbreviations with figurative elements

A single letter, numeral or a simple combination of common letters, without particular figurative adornment, generally possess a low degree of inherent distinctiveness69. The inherent distinctiveness of such marks largely relies on their particular figurative representation, and thus the more adorned the letters or the more inventive their particular representation, the more distinctive the mark will be.

The Boards, found no risk of confusion in case of inherently weak single letters or numbers as figurative marks,

67 See also previous decisions R0536/2008-4 KWF / KFW and R0390/2008-1 ISDIN / ISTIN. 68 Judgment of 23 May 2007, in Case T-342/05 Henkel KGaA v OHIM (“Cor”) [2007] ECR II-52, paragraph 39 et seq.. 69 See Decisions of the Fourth Board of Appeal of 12 December 2007, R 1655/2006-4, “M”, the First Board of Appeal of 8

September 2006, R 394/2006-1, “E” and the Second Board of 26 February 2009, R 1059/2008-1 “7”.

CTM applied for

Earlier TM

Decision R1170/2008-2 R1373/2009-2 R1051/2009-1 R0867/2010-4


33

where the visual differences between the signs due to the figurative elements were capable of counteracting any phonetic or conceptual similarity, even where there was identity or high similarity between the goods.

By the same token, the Boards found no likelihood of confusion between the following acronyms or two letters combinations, even for identical goods and services.

However, where no such visual differences were considered to be present, the Boards found a likelihood of confusion. Some examples are:

CTM applied for

Earlier TM

Decision R1281/2008-170 R0821/2010-1 R0018/2009-1

c.) Earlier mark identical to the CTMA or included in the CTMA and vice versa

The comparison between marks must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components71.

- Word marks

Examples of likelihood of confusion in cases where both signs were found identical72: R0964/2009-1 Klepper / Klepper et al.; R0123/2009-4 AGUA D”OR / AGUA D”OR et al.; R0364/2009-1 OMEGA / OMEGA et al.; R1330/2009-1 REGATTA / REGATTA;

70 Decision appealed, case T-187/10. 71 Cf. judgment of the General Court of 23 October 2002 in Case T-6/01 Matratzen Concord GmbH v OHIM (“Matratzen”) [2002] ECR II-4335. Also see the judgment of the General Court of 7 July 2005 in Case T-385/03 Miles Handelsgesellschaft International mbH v OHIM (“Biker Miles”) [2005] ECR II-2665; and, most recently, of 18 December 2008 in Case T-16/07 Miguel Torres, S.A. v OHIM (“Torre de Benítez”) [2008]. 72 Decisions in precedent year see R0593/2008-2 DOMINO/domino; R0719/2008-2 Global Campus/GLOBAL CAMPUS; R0580/2008-4 UNIFLEX/UNIFLEX; R1247/2008-4 BIOPHOS/BIOPHOS; R1027/2008-1 ELCO/ELCO; R1097/2008-1 BLAST/BLAST; R1190/2008-1 HUMANA/HUMANA; R1500/2008-2 TOPCOM/TOPCOM; R0581/2008-1 RE-MODEL/REMODEL; R0994/2008-4 INNO-CLEAN/INNOCLEAN; R0306/2008-1 Cerola/Cerola; R0720/2008-4 APETITO/apetito; R0285/2008-4 MAESTRO/MAESTRO; R0047/2009-1 CLIX/CLIX.

CTM applied for

Earlier mark

Decision R1042/2009-1 R1625/2008-4 R0430/2007-4


34

R0079/2010-1 STERISAFE / STERISAFE; R0086/2009-2 FLACO / FLACO; R0456/2009-1 SIGMA / SIGMA; R0025/2010-1 RIVA / RIVA; R1015/2009-1 ZERA / ZERA; R0974/2009-2 HAPPY SCHOOL / HAPPY SCHOOL et al; R0606/2009-4 QUIX / QUIX; R1907/2007-4 SEK / SEK et al..

Examples of likelihood of confusion in cases where the sign for which registration was sought was included in the sign protected by the earlier trade mark or vice versa73: R0686/2009-1 ARIS GLOBAL / ARIS; R0142/2009-4 ALPHA BIT / ALPHA; R0455/2009-2 DYNAMIC ARCHITECTURE / DYNAMIC; R0236/2008-4 RENO 911! / RENO; R1184/2009-2 GLOBAL CAMPUS 21 / GLOBAL CAMPUS R0257/2009-4 NATAL CARE / NATAL R0266/2009-2 THAT’S AMORE / AMORE et al.; R0965/2009-2 MOVIDA / GEODAN MOVIDA; R1189/2009-2 AMADO / MALAMADO; R1171/2008-4 MATRIXYL / MATRIX; R0726/2008-4 SALVE / SALVEO; R0738/2009-1 JUMPMAN / JUMP et al.; R0379/2008-2 PROTICAL / PROTI; R1483/2008-1 SIPOREX / POREX et al.; R0722/2009-2 FEETWELL / WELL et al; R0740/2009-1 EUROMEGA / OMEGA.

Cases, where the Boards considered that there was no likelihood of confusion despite the identity or similarity of the goods (R0671/2010-1 CLEAN TWIST / TWIX; R0347/2009-2 LUXINIA / LUX et al.; R0949/2009-4 BOVIVA / VIVA; R1213/2009-2 JAN MAYEN / JAN; R0615/2010-2 CHILIVEGAS / VEGAS; R1515/2008-4 VAL DO INFERNO / VALDO) included those where the common element had only limited distinctiveness74, such as in R1467/2008-4 B-LIFT / BIO-LIFT et al; R0017/2009-4 SKIN”UP / SKIN; R0199/2008-5 REAL GARANT SHOP / REAL; R1316/2009-4 miha bodytec / bodytec; R0286/2010-1 EPSILON ROLLERS / ROLLER etc.

- Figurative marks

When it comes to the comparison of signs consisting of verbal and figurative elements, in principle the average consumer will refer more easily to the mark in question by quoting the word element rather than by describing the figurative elements75. Decisions where the Boards have decided that the dominant component is the common word element, and consequently, likelihood of confusion might arise include:

73Decisions in precedent year see R1824/2007-4 EXPLORA/SALVAT EXPLORA; R1291/2008-4 QUALIFIER/Qualifiers

2006R1557/2007-4 mtronix/Montronix; R0044/2008-4 ERGO/CERGO; R0530/2008-1 GRISI/GRISINES; R0376/2008-2 COR/CADENACOR; R1178/2008-2 BULGA/BVLGARI; R1192/2008-2 FRUCTAL/FRUCTA, R1530/2008-1 AVON MIDNIGHT/MIDNIGHT; R0115/2009-2 BIVAQ/BIVA; R0396/2008-1 POWERED BY INNOVATION/EMPOWERED BY INNOVATION; R1557/2008-4 COMPACT-ALL/ COMPAC.

74See also previous decisions in cases R0749/2007-2 SWIFT GTi/GTI; R0817/2008-4 GOLFAMEDIA/AMEDIA et al; R0233/2008-1 citydogs/CITY.

75 Cf. inter alia judgment of the General Court of 14 July 2005 in Case T-312/03 Wassen International Ltd v OHIM (“Selenium-Ace”) [2005] ECR II-2897, at paragraph 50.


35

CTM applied for

Earlier TM

Decision R1283/2009-2 R0872/2009-4 R0086/2010-1 R0060/2010-2 R1322/2009-4 R0599/2009-4

CTM applied for

Earlier TM

Decision R1449/2009-1 R1547/2009-2 R0667/2009-1 R0062/2009-2 R0590/2009-2 R0166/2010-1

However, in the following cases no likelihood of confusion was found, despite identical or similar goods and services, since the signs were considered sufficiently apart from each other, partly since the word elements were considered weak.

CTM applied

for

Earlier TM

Decision R0834/2009-1 R0745/2009-2 R0265/2008-4 R1132/2009-1 R0109/2009-1 R1037/2009-2

d.) Names / surnames

The Boards dealt with various cases concerning marks containing names for identical or highly similar goods and services where the earlier mark was in part reproduced in the CTM applied for. The Boards considered in the cases cited below that there was a likelihood of confusion as the consumer might perceive the marks as designating two different lines of products or sub-brands (in industries where product lines are usual, for example clothing76) originating from the same or linked company, see e.g., R1152/2009-4 VAN SMITH / SMITH, R0742/2009-1 GIUSEPPE / GIOSEPPO et al and R1564/2009-1 MAURO LEONE / LEONE for clothing; R1804/2008-4 ROSALÍA DE

76 Cf. judgment of the General Court of 14 February 2008 in Case T-378/04 Orsay GmbH v OHIM (“Orsay”) [2008] ECR II-21.


36

CASTRO / ROSALÍA and R0670/2009-4 JACK & JACK / JACK for alcoholic beverages; and R1264/2009-1 HUTCH / HUTCHINSON et al for goods in Class 12.

The same applies when the confronted marks are figurative or one a word mark and the other a figurative mark. In the cases below, the conceptual content of the trade marks applied for, consisting of a surname or a name identical or almost identical to that of the earlier trade mark led the Board to conclude that it may reinforce the consumers’ perception of them as sub-brands of the earlier trade marks, especially as the goods were clothing or footwear.

CTM applied

for

H.EICH

Earlier TM

DANIEL & MAYER MADE IN

ITALY et al.

Decision R0012/2009-2 R0607/2009-1 R0727/2009-2 R1065/2006-4 R1411/2009-1 R0413/2009-1

It is interesting to mention the decision of the Boards in case R0900/2010-1

(Leo Marco) / LEO, where the Board deals with the issue of the scope of protection that should be granted to a trade mark consisting of a relatively common personal name. The Board held that the use of common personal names as trade marks gives rise to certain problems due to the fact that they are, by definition, shared by many people. That inevitably limits their capacity to individualize the source of goods or services without ambiguity. If a common first name is registered and used as a trade mark for jewellery and watches, consumers will not necessarily assume that all jewellery and watches sold under a trade mark consisting of that name in conjunction with another name come from the same source. It is not impossible that such an assumption will be made but it is by no means inevitable. It is more likely that consumers will see an association between the marks if the earlier mark has built up a reputation. In this case it was decided that there would not be a risk of confusion although the goods in Class 14 were similar.


37

e.) Figurative element v. figurative element

Comparing marks composed of only figurative elements, the Boards decided that, where the goods and services were identical or similar and the differences between the signs could only be perceived when both marks were carefully examined side by side (the general visual impression of the marks being very similar), there was a likelihood of confusion.

CTM applied for

Earlier TM

Decision R0144/2010-2 R1354/2009-2 R1056/2009-2 R1320/2009-2 R0840/2009-1 R1508/2009-1

Special consideration is also given where the similarities between the signs are outweighed by the differences, resulting in no risk of confusion although the goods and services were considered to be similar or identical such as:

CTM applied for

Earlier TM

Decision R0403/2009-2 R0131/2010-4 R0819/2010-1 R0635/2010-4 R0706/2010-2

f.) Three-dimensional mark v three-dimensional mark

The Boards were again faced with cases where an opposition against a three dimensional CTM application was based on a three dimensional earlier right.

CTM applied for

Earlier TM

Decision R0343/2009-2 R1409/2008-2 R0815/2008-1


38

As the Court has observed in the context of the assessment of distinctiveness of three-dimensional marks, consumers are not in the habit to make assumptions on the trade origin of goods solely on the shape of goods or their packaging, but they rather orient themselves on word or genuinely figurative marks77. In the case of the two bottles the Board decided that the dominant elements by which consumers will refer to the respective goods are the words “AMARETTO DI SARONNO” and “AMARETTO REAL CONTI”, which are not similar, taking into account the generic nature of the term “AMARETTO”. The two signs have no visual similarities, except in the absolutely non-distinctive elements of a rectangular-shaped body and the generic word “AMARETTO”. The Board conclude that the public will not be led to believe that both products come from the same undertaking, merely because they are both presented in rectangular bottles R0108/2009-4 SHAPE OF A BOTTLE [3D mark] / SHAPE OF A BOTTLE 3D mark]). In the same sense the Board decided in a case where two golden shape of a sitting bunny were confronted that the signs were overall dissimilar. They differ in the verbal elements, namely “TERRAVITA” of the contested sign and “Lindt Goldhase” on both sides of the earlier marks and they also differ in the graphical elements. Even for identical goods (chocolate), there will not be a likelihood of confusion (R0806/2009-4 ([3D mark] / [3D mark] et al.).

C. Article 8(4) CTMR

As regards the rights referred to in Article 8(4) CTMR, the onus is on the owner of the right to state which specific laws it relies on and has to supply the actual text of the legal provision78 (R0672/2009-4 Steiff / STIEFEL et al.; R0339/2009-4 MAKRO).

Article 8(4) CTMR provides that an opposition may be based on a sign whose use in the course of trade is of more than mere local significance. The Board considered that the application of this provision depends on proof of genuine use of the sign79 (R0563/2009-1 WEARPLAY (fig.) / REPLAY et al. R0637/2009-1 MM MONTANA (fig.) / MONTANA (fig.) et al.) in a context that is not merely local80 (R0746/2009-1

77 See Judgment of 7 October 2004 in Case C-136/02, “Maglite”, at paragraph 30. 78 See decisions previous years R1155/2006-4 oceanfree.net [fig.]/OCEANO [fig.] and R0323/2007-4 oceanfree [fig.]/OCEANO [fig.], R0516/2009-2 LOUIS ESTERE/LOUIS and R0644/2008-2 PROBIAL COATED [fig.]/ Bial et al. [fig.]. 79 R0694/2008-1 MORE/ASK FOR MORE; R1086/2008-1 EL ZORRO DORADO [fig.]/SHAPE OF A FOX [fig.]; R1043/2008-4 SILICON.COM [fig.]/SILICOM; R 1062/2005-4 DIGITAL PHOTO SERVICE/PHOTO SERVICE et al. 80 However, the General Court in its judgment 16 December 2008 in Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06 Budĕjovický Budvar, národní podnik v OHIM, ECR [2008] , held that – at least with respect to geographical indications protected under the Lisbon Agreement –the concepts “use in the course of trade” and “genuine use” are different. The judgment is currently pending before the Court of Justice, C-0096/09P.

CTM applied for

Earlier TM

Outcome NO LOC NO LOC

Decision R0108/2009-4 R0806/2009-4


39

MEN”Z (fig.) / WENZ, R0060/2010-2 NATURAL LINE [fig.] / NATURAL LINE [fig.), R0059/2010-4 TOPSIT / TOPSIT, R1205/2009-1 MYPHOTOBOOK / MYPHOTOBOOK et al., R0408/2009-4 BRIGHTON / BRIGHTON et al.).

Depending on the national legislation, there could be a need to show that the earlier sign was well-known or had acquired goodwill in the eyes of consumers. With respect to the United Kingdom one of the requirements for a passing off claim to be successful is that the plaintiff’s goods or services have acquired a goodwill or reputation in the market and are known by some distinguishing feature81 (R1795/2008-4 ZAPPER-CLICK / MOUSTI CLICK; R0922/2009-4 CFX / FX; R0404/2009-4 IRISH PASTURES / IRISH MEADOWS [fig.]).

An opposition based on Article 8(4) CTMR cannot be successful if the signs are dissimilar82 (R0265/2008-4 MINISNACK BREAK SENZA ORARIO [fig.] / CADBURY”S SNACK [fig.] et al; R0381/2009-4 Bfree [fig.] / DR BROWN”S et al. [fig.]; R0959/2009-4 SPEED TO SHELF [fig.] / SPAR I [fig.] et al; R1450/2009-2 GLOBALMAIL (fig.) / Global SEGUROS (fig.) et al.).

D. Article 8(5) CTMR

Pursuant to Article 76(1) CTMR, in proceedings concerning relative grounds of refusal the Board is bound by the facts, evidence and arguments present by the parties. Consequently, it is up to the opponent to prove the reputation of its earlier mark. However Article 76(1) CTMR does not imply that the Board must be obtuse in the face of the obvious. The Board of Appeal, in addition to the facts expressly put forward by the parties, may take into consideration facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources83.

The Court of Justice recently has declared that the fact that an earlier mark has a strong reputation with regard to certain specific categories of goods or services does not necessarily imply the existence of an “automatic link” in the sense of Article 8(5) CTMR, between the contested marks84. Furthermore, there must be similarity between the signs85 (R0563/2009-1 WEARPLAY [fig.] / REPLAY et al; R1519/2008-1 DADO / DODOT et al.); this “similarity” must be based on a certain degree of similarity between the signs in the eyes of the relevant consumers86 (R1797/2008-2

81 See decisions previous years R1790/2008-1 ALIPAY/ALLPAY et al., R1547/2006-4 POWERBALL/POWERBALL. 82 See decisions previous years R0233/2006-1 B PROSUM [fig.]/FABER CASTELL SINCE 1761 et al.; R1698/2008-1 ESN / ERN et al.; R1113/2008-1 ESN (FIG: MARK) / ERN et al. 83 See judgment of the General Court of 22 June 2004 in Case T-185/02 Picasso estate v OHIM (“Picaro”) [2004] ECR II-1739, at paragraphs 29-32. See also case R0554/2008-2 NC NICKOL [fig.]/NIKE [fig.]; R1306/2008-2 artesia [fig.] / ARTE et al. 84 see judgment from the Court of Justice of 27 November 2008 in case C-252/07 Intel Corporation Inc. vs. CPM United Kingdom Ltd (“Intel”) Rec. 2008 p. I-8823, at paragraph 64. 85 R1110/2008-2 DUCCIÊ/GUCCI; R1445/2008-1 Z-plus! [fig.]/ZIPPO et al. 86 See R1089/2008-2 Bottle in the shape of a bust [3D mark] / Bottle in the shape of a bust [3D mark] and others.


40

OStCaR / OSCAR; R0986/2009-2 PENTIUM FUND / PENTIUM; R0240/2004-2 Waterford).

The Boards accepted the claim under Article 8(5) CTMR where the earlier mark was highly recognised in one Member State 87(R1781/2008-2 CAMPOS [fig.] / Campofrío), or was highly distinctive and included in the CTM applied for88.

In relation to Article 8(5) CTMR, the Boards have held in various cases, that unfair advantage or dilution seems improbable where the goods and services claimed in the CTM application are far removed from the goods and services for which the earlier right is protected (R0637/2009-1 MM MONTANA [fig.] / MONTANA [fig.] et al; with respect to clothing, leather goods and advertising and business services and meat-bases foodstuffs; in R0211/2009-2 Douglas beauty spa / SPA et al mineral waters and “advertising, business management, business administration, office functions”, as well as Class 39 services “organizing and arranging travel; arranging reservations for hotel rooms and other accommodation; escorting of travellers”; R0026/2010-2 STOLETOV / STOLICHNAYA et al. “printed matters and packaging” and “alcoholic beverages”). Where the goods are manufactured and normally offered by totally different undertakings, such a link will not be created by the relevant consumers, and consequently unfair advantage or detrimental effects will not occur (R0215/2009-4 RESOL CONTRACT [fig.] / REPSOL [fig.] et al).

In line with the case law of the CFI89 the Boards did not accept the contention that any trade mark which has a reputation is entitled to blanket protection against the use of an identical or very similar trade mark in relation to virtually any kind of product or service90. The burden of proving unfair advantage or detriment is on the opponent91 (R0040/2009-1 MILTON / MILTON; R0069/2009-1 RED DOG / RED BULL et al.).

Finally, the lack of due cause is presumed. The existence of a cause justifying the use of the trade mark applied for is a defence that the applicant, against which Article 8(5) is invoked, may raise. In this case it must be proved according to the general rule “he who asserts must prove”, which is the expression of the ancient rule ei qui affirmat incumbit probation92 (R0760/2009-2 NC NICKOL [fig.] / NIKE [fig.]; R1276/2009-2 BEATLE [fig.] / BEATLES et al; R0986/2009-2 PENTIUM FUND / PENTIUM; R0765/2009-1 BOB THE BUILDER [fig.] / BOB et al).

87 See judgment of the General Court of 9 September 2008 in Case T-363/06 Honda Motor Europe Ltd v OHIM (“Magic seat”)

[2008] ECR. See R1277/2008-1 SEAT 24 [fig.]/SEAT. 88 See decision R1072/2008-1 LOEWE/LOEWE. 89 Cf. judgment of the General Court of 25 May 2005 in Case T-67/04 Spa Monopole, compagnie fermière de Spa SA/NV v OHIM (“Spa-Finders”) [2005] ECR II-1825, at paragraph 30 and judgment of the Court of 14 September 1999 in Case C-375/97 General Motors v Yplon, General Motors v Yplon (“Chevy”) [1999] ECR I-5421, at paragraph 30. 90 Cf. R0802/1999-1 DUPLO/DUPLO. 91 See decision R0540/2008-4 PICASSO/PICASSO et al; R0580/2008-4 UNIFLEX/UNIFLEX; R0602/2008-1 Shape of 3 geometrical elements [fig.]/ Shape of 3 geometrical elements [fig.]. 92 See decision R0554/2008-2 NC NICKOL [fig.]/NIKE [fig.]; R0821/2005-1 CITIGATE/CITICORP et al..


41

E. Proof of use and use of a trade mark in a form which is different from that

registered

The General Court has stated in several judgments93 that the request for proof of use must be made to the OHIM expressly and in a timely manner94 (R0107/2009-2 MICROCOR / Micronor [fig.]). The Boards have also held that the fact that there is no express reference to the provisions in the CTM Regulation about proof of use is not decisive as the applicant uses the wording and terminology of that provision95. The Boards have constantly said that a request for proof of use filed for the first time at the appeal stage cannot be taken into consideration96 (R0148/2010-2 Biolette / LA VIOLETTE ALMENARA [fig.]; R0227/2009-4 LoKoHome / LOKOMAT; R0604/2009-4 LokoBasic / Lokomat; R0856/2009-4 POWER plus [fig.] / POWERPLUS).

The General Court has confirmed that proof of use of the earlier mark also includes use of the earlier mark in a form differing in elements which do not alter the distinctive character of the mark from the form in which it was registered97. The Boards considered that the use of the following signs did not alter the distinctive character of the sign as it was registered.

The Board held that the distinctive character of a word mark is manifestly not altered by the fact that there is a difference in the typeface such as the use of italics (R0314/2010-1 Harmonie / ARMONIA). In case R1283/2009-2 CIAO [fig.]) / CIAO [fig.], although the opponent had not provided any evidence of use of the figurative mark as registered, the Board considered the actual use of the earlier mark to be in a form which did not alter its distinctive character, because regardless of the different background and other additional elements, the word “ciao” retains its position as the distinctive and the dominant element.

93 See judgments of the General Court of 17 March 2004 in Joined Cases T-183/02 and T-184/02 El Corte Inglés, SA v OHIM,

(“Mundicor”), [2004] ECR II-965, paragraph 38; of 16 March 2005 in Case T-112/03 L”Oréal SA v OHIM, (“Flexi Air”), [2005] ECR II-949, paragraph 24, confirmed by order of the Court of Justice of 27 April 2006 in Case C-235/05 P, not published in the ECR; of 7 June 2005 in Case T-303/03 Lidl Stiftung & Co. KG v OHIM, (“Salvita”), [2005] ECR II-1917, paragraph 77; and of 18 October 2007 in Case T-425/03 AMS Advanced Medical Services GmbH v OHIM, (“AMS”), paragraph 105, not yet published); and, most recently, order of the General Court of 18 February 2008 in Case T-327/06 Altana Pharma AG v OHIM (“Pneumo Update”) [2008] ECR II-24.

94 See previous decisions, R1294/2008-4 ORDACTIN/ORTHANGIN where the Board decided that a “restricted” plea of non-use entered by the applicant did not satisfy the requirements of an effective request for the furnishing of proof of use.

95 See previous decisions R0975/2006-4 FRANKI/FRANKI. 96 See previous decisions R1365/2007-1 DON GIL DONNA/Gina Donna; R0121/2009-1 PK[fig.]/PK CHE PARKER [fig.]; R0097/2009-1 WELCOME [fig.] / WELCO2ME [fig.] et al. etc. 97 See judgment of the General Court of 9 July 2003 in Case T-156/01 Laboratorios RTB, SL v OHIM (“Giorgio Aire”) [2003] ECR II-

2789; of 24 November 2005 in Case T-135/04 GfK AG v OHIM (“Online Bus”) [2005] ECR II-4865.

Sign registered ARMONIA

eurocert

Sign used

Case R0644/2008-2 R1283/2009-2 R0665/2009-1


42

Adding a number or another word to a word mark, which is distinctive per se, does not alter the distinctive character of said trade mark98 (R0547/2009-1 CROCODILINO [fig.]) / CROCODILE et al. In this case the earlier trade mark “CROCODILE” together with the trade mark “LACOSTE” does not mean that the former is not perceived by the relevant consumers as a trade mark; R1254/2009-1 Oh ! [fig.] / Ô [fig.], where the presence of the wording “de Lancôme” does not alter the distinctive character of the earlier mark in the form registered). The same applies where the sign is used with slight figurative elements99, like a stars logo (R0665/2009-1 EUROCERT [fig.] / eurocert).

However, it was considered that altering the sign can have a significant impact on the mark which might result in considering that the use made of the trade mark has altered its nature or its distinctive character. See for example:

Sign registered

TIA ROSA EXPRESS REPAIRS

S.A. EVENTOS

Sign used

Canal+ Eventos

C+ Eventos

Case R1077/2008-4 R0133/2009-1 R0257/2010-4 R1349/2009-4

Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned100(R1528/2009-2 AQUATIC / AQUATIC COLOR [fig.]; R1567/2009-2 RUBEN LIGHTING [fig.] / RUBIN). Merely making preparations for sale is not enough; actual sales must be shown rather than presumed101. The use of the mark exclusively for exportation purposes counts as genuine use of the mark (R0031/2010-4 DEVAX / BEBAX). An affidavit produced by a party might, on its own, be sufficient to establish use102. It depends, however, on the content of the affidavit and the circumstances of the case103.

98 See previous R1247/2008-4 BIOPHOS/BIOPHOS; see Decision of the Boards of Appeal of 4 December 2009 in Case R 1596/2008-1

SCHIESS, at paragraph 41. 99 see previous R1729/2008-2 Petri/PETRUS 100 See judgment of the General Court of 12 December 2002 in Case T-39/01 Kabushiki Kaisha Fernandes v OHIM (“Hiwatt”)

[2002] ECR II-5233.See also R0006/2008-4 CENTROTHERM; R0239/2009-4 cafE CARLYLE 101 R0571/2008-2 PRIVATE 102 The CFI considered in judgment of 16 December 2008 in Case T-86/07 Heinrich Deichmann-Schuhe GmbH & Co. KG v OHIM

(“Deitech”) [2008] ECR, that an affidavit might, on its own, be sufficient to establish genuine use. 103 R1144/2008-4 BISCUIT [3D mark] / BISCUIT [fig.]


43

V. DESIGN PROCEEDINGS

In 2010, the Third Board of Appeal, responsible for appeals on the Registered Community Design (RCD), rendered 26 decisions dealing with procedural as well as substantial matters.

A. Individual character / Novelty

Most cases concerned the question of the individual character of a RCD, the novelty of the design and the design being divulgated, respectively.

In R1130/2008-3 Watches (design), in the contested RCD the standard features do not differ from those of the earlier design. In the area where the designer has greatest freedom – namely, the watch face – little use has been made of that freedom. The watch face has the same shape and configuration as in the earlier design. The conclusion is therefore that the similarities in the two designs greatly outweigh the differences. The contested RCD lacks individual character and must therefore be declared invalid.

The Board confirmed that designs which are made available to the public before the filing date of the contested design may be regarded as prior designs within the meaning of Article 7 of the Community Designs Regulation (CDR)104.

In the case R1341 /2009-3 SNACKS, the Board dealt with the degree of freedom in the design of a new product (Art. 6 CDR). That degree can be limited because (i) a lot of designs already exist and (ii) some designs are difficult to make industrially. The Board did not declare the CDR invalid.

Case R1337/2008-3 reducers105 deals with the issue of individual character (Art. 6 CDR). The contested design virtually reproduces the whole of the earlier design but contains an additional element not present in the earlier design. The decision of the Board holds that the designs produce the same overall impression on the informed user.

Designers cannot simply copy an existing design, adding a further element (especially one that would be connected to the product in question in normal use), and claim that the designs are different.

104 See previous decision R0921/2008-3 Nail files. 105 Decision appealed before the GC under case T-246/10.

RCD

Earlier design

R1130/2008-3

RCD

Earlier design

R1341 /2009-3

RCD

Earlier design

R1337/2008-3


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In R0009/2008-3 FOOTWEAR106 the RCD holder admitted that, prior to 28 May 2003 it sold around 10,000 pairs of “Crocs” clogs; it displayed the “Crocs” clogs at an exhibition; it disclosed the “Crocs” clogs on its website; but argues that these disclosures do not destroy the novelty of the RCD because they “could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community”. In the Board’s view, the RCD holder’s arguments are not persuasive. Exhibiting a new product at a fair, uploading it on the Internet and selling it on the marketplace – these activities having been furthermore carried out over a period of several months – are precisely the sort of activities that may become known “in the course of business” to anybody active in the same field. In the Board’s opinion, each of the three events destroyed the novelty of the RCD because it was of such nature and extent that it may “reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community”. The sales made prior to the relevant date are a largely sufficient reason to declare the invalidity of the RCD for lack of novelty. In addition, the contested RCD must also be declared invalid for lack of individual character, since the only differentiating element between the two designs, i.e. the presence/absence of a heel strap does not alter the overall impression made on the informed user by the two designs, which remains the same. In case R0879/2009-3 Games107, the Board held that the styling of the building bricks differs clearly. The building bricks disclosed in the items of evidence take the shape of a stairway, whereas the building bricks that make up the subject matter of the contested RCD are simple cuboids. This difference must be apparent to the informed user, because the external shape determines how they can be used in games. Even the individual characteristics of the designs are different. The appellants did not prove that the Community design lacked either novelty or individual character. In case R1451/2009-3 RADIATORI PER RISCALDAMENTO108, the Board considered that Article 5 CDR could not be invoked in respect of the contested RCD since there was no identity between the two designs and the differences were not immaterial details. The differences in collector diameter, ratio between the frontal size of the pipes and the size of the space between one pipe and the next, and ratio between collector size and pipe size, represented the outcome of different

106 Decision appealed before the GC under case T-302/10. 107 Decision appealed before the GC under case T-231/10. 108 Decision appealed before the GC under case T-83/11.

RCD

R0879/2009-3


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design choices and could not be merged with the concept of “immaterial details”. As regards the ground of invalidity based on lack of individual character, the Board held that the overall appearance of the two radiators had to be considered similar, or rather such as to not make a significantly different overall impression on the informed user whether the radiators were observed from the front, from the side or from some angle in between. Both designs represented radiators consisting of two horizontal collectors of circular section, each connected on the front and back by a row of vertical elements (heating pipes) of rectangular section, with a slight distance between them. Both of the designs used components of the same shape. The RCD’s proprietor argument based on the designer’s reduced degree of freedom was not considered convincing. A variety of different section configurations could be imagined, e.g. for the radiator pipes, namely the constructive element that most influences the overall appearance of the object. The Board concluded that the RCD therefore lacked individual character.

B. Technical function of the design

Article 8(1) CDR denies protection to features of a product’s appearance that are “solely dictated by its technical function”. The assumption has generally been made that the purpose of such provisions is to prevent design rights from being used to obtain monopolies over technical solutions without meeting the relatively stringent conditions laid down in patent law. The Board considers that those words imply that the need to achieve the product’s technical function was the only relevant factor when the feature in question was selected. It follows from the above that Article 8(1) CDR denies protection to those features of a product’s appearance that were chosen exclusively for the purpose of designing a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product’s visual appearance. These matters must be assessed objectively, from the standpoint of a reasonable observer who looks at the design and asks himself whether anything other than purely functional considerations could have been relevant when a specific feature was chosen.

In R0211/2008-3 FLUID DISTRIBUTION SYSTEM, the Board declared the contested RCD invalid under Article 25(1)(b) CDR in conjunction with Article 8(1) CDR. In the Board’s view, it has been proven that every detail of the design has been chosen with a view to enhancing the technical performance of the “intake portion of a liquid dispensing valve” as stated in the RCD holder’s description of the product in the RCD application.

RCD

Earlier design

R1451/2009-3

RCD

R0211/2008-3


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This is abundantly clear from the extracts of the European patent application filed by the RCD holder. Since the features described were solely dictated by the product’s technical function, the contested RCD must be declared.

C. Design in conflict with an earlier design or other distinctive sign (Art.

25(1)(d)-(e) CDR)

Pursuant to Article 25(1)(e) CDR a design can also be declared invalid if a distinctive sign is used in a subsequent design and the relevant national or Community legislation confers on the right holder of the earlier sign the right to prohibit use of the younger design.

In case R0584/2009-3 VEHICLES, the Board applying Article 25(1)(d) CDR decided that the examination of the two Community designs reveals that with the exception of a few insignificant details, present on the contested design and absent from the earlier design, such as the panel which connects the lower edge of the bonnet covering the dashboard to the inside edges of the headlights, or the fact that the two tubes forming the upper part of the tubular structure are apparently covered with a dark grey foam, the two designs are identical. Furthermore, the applicant for a declaration of invalidity claims that the Community design which forms the basis of his application – filed on 2 November 2007 and published on 11 December 2007, and, consequently, disclosed after the date of filing of the contested design, namely 28 June 2007 – benefits from a right of priority granted by an earlier Chinese design patent application, filed on 5 May 2007, in respect of which it provided sufficient evidence to claim priority in accordance with Article 42 CDR. Consequently, given that the earlier design is validly protected from a date prior to the date of filing of the contested Community design, the contested decision was right to annul the contested Community design under Article 25(1)(d) CDR since there is an earlier design with which the contested Community design is in conflict.

RCD

Earlier RCD

R0584/2009-3

Documents

Case-Law of the Boards of Appeal 2010-ICase Law of the Boards of Appeal - 2010 2 member of staff responsible for controlling due dates could not be attributed to the fact that the