November 2011 

GC
T-427/09
T-434/09
centrotherm Clean Solutions GmbH & Co KG v OHIM; Centrotherm Systemtechnik GmbH
Centrotherm Systemtechnik GmbH v OHIM; centrotherm Clean Solutions GmbH & Co KG
(15.09.11)

The GC allowed the appeal from the BoA’s decision to partially revoke the mark and held that the marks should be revoked in entirety under Art 51(1)(a) as genuine use had not been sufficiently proven.

When examining evidence relating to the genuine use of a mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real. In particular, account must be taken of the commercial volume of the overall use, as well as the length of the period during which the mark was used and the frequency of use. The smaller the volume of commercial exploitation, the more necessary it was to produce additional evidence to dispel any doubts as to the genuineness of its use.

As such, genuine use of a mark cannot be proven by means of probabilities or suppositions but had to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned. CS had adduced relatively weak evidence of sales compared to the statements made in the witness statement; the undated photographic evidence was from after the relevant period and the article numbers on the invoices did not match the numbers of the goods bearing the mark. On the basis of the evidence submitted, it was not possible to conclude that the relevant products had been marketed during the relevant period.

GC
T-207/09
Mustapha El Jirari Bouzekri v OHIM; Nike International Ltd
(27.09.11)

The GC annulled the BoA’s decision finding that as there was insufficient similarity between the marks for the purposes of Art 8(1)(b) they could not be sufficiently similar for the purposes of Art 8(5).

The GC held that the BoA’s assessment of the marks was contradictory. If there was a lack of similarity between the mark applied for and the earlier mark under Art 8(1)(b), then that lack of similarity precluded the application of Art 8(5) as the similarity or identity between the marks was an essential condition for a finding under Art 8(5).
 

GC
T-581/08
Perusahaan Otomobil Nasional Sdn Bhd v OHIM; Proton Motor Fuel Cell GmbH
(27.09.11)

The GC upheld the BoA’s decision that there was no likelihood of confusion under Art 8(1)(b). The BoA also rejected Perusahaan’s appeal under Art 8(5).

The relevant public for the earlier marks were average consumers and vehicle manufacturers. This differed from the target of the later mark, which was purely professional, such as automotive research centres, engineers, scientists and possibly vehicle manufacturers.  The professional public would have a particularly high degree of attention. Although the goods and services in question had the same purpose, namely to power a motor vehicle, this was not enough to conclude the goods and services in question were similar.

Perusahaan’s goods were neither in competition with Proton’s goods nor complementary. In this regard, the BoA also took account of the different distribution channels and target consumer.
On that basis, there was no likelihood of confusion under Art 8(1)(b).

In respect of Art 8(5) Perusahaan had failed to provide evidence before OHIM to show that use of the mark applied for would take advantage of the distinctive character or repute of the earlier mark. Therefore, the evidence before the GC could not be considered within the context of the appeal.

GC
T-415/09
New Yorker SHK Jeans GmbH & Co AG v OHIM; Vallis A & Co OE
(29.09.11)

The GC upheld the BoA’s decision that there was a likelihood of confusion between the two marks under Art 8(1)(b).

The BoA was correct to find that although the extent of the use of the earlier mark was quantitatively low the fact that the invoices were addressed to retailers across Greece showed sufficiently extensive use that represented an effective and genuine commercial effort. The invoices also showed a certain constancy over time. Taken as a whole, the catalogues, advertising photographs and invoices demonstrated genuine use of the earlier mark. There was no de minimis rule for establishing genuine use and small-scale use could be compatible with actual market presence.

The GC held there was only a certain degree of visual similarity between the marks and the BoA had been wrong to conclude that there was a high degree of visual similarity. The earlier mark contained additional graphical elements and included the term ‘beachwear’. Despite this, there was only a certain degree of visual similarity. However, there was a high degree of phonetic similarity since the word ‘fishbone’ was the distinctive word element of the earlier mark and there was a likelihood of confusion between the marks.

The GC upheld the BoA’s finding that there was no likelihood of confusion between the two marks under Art 8(1)(b).

Both ‘natura’ and ‘viva’ had weak distinctive character in respect of the relevant goods and services. Consequently, neither word was dominant and there was no reason to exclude the word ‘natura’ for the overall impression generated by the sign NATURAVIVA. The signs were visually and phonetically different. The difference in length and number of syllables between the two marks was sufficient to distinguish the marks.

The similarity of the goods and services could not outweigh the lack of similarity between the two marks and there was no likelihood of confusion.

The GC allowed the appeal from the BoA’s decision, finding that there was a likelihood of confusion under Art 8(1)(b).

The goods and services of the earlier marks were essential for the setting up and use of internet site hosting services. There was, therefore, a functional complementarity between the goods and services, which all belong to the field of information technology.  The average consumer would consider the goods and services similar since they all belong to the field of information technology, are complementary and use the same distribution channels. The BoA should have held that internet hosting services were connected with computer programming services.

As the marks were visually and phonetically similar, this together with the similarity of the goods and services meant that there was a likelihood of confusion under Art 8(1)(b).

The GC upheld the BoA’s decision to dismiss the opposition on the basis that adidas had failed to substantiate its earlier rights by failing to provide a translation of a certificate into English (the language of the proceedings) of the details on the Register of an earlier German mark on which it relied.

For the purposes of substantiating earlier rights, it is a matter for the discretion of the opposing party as to whether it translates parts of the certificate of registration that may be irrelevant. However, pursuant to Rules 16(3), 17(2) and 20(2) of Regulation No 2868/95 only those parts actually translated into the language of the proceedings may be taken into consideration in the opposition.

In particular, the indication of the type of the earlier mark had not been translated; this was essential in order to assess the scope of protection. In this case it was not clear if the earlier mark was three-dimensional or figurative.

In November 2007, the CFI held that the mark applied for had a minimum degree of distinctive character, (T-460/05), pursuant to Art 7(1)(b). The Presidium of the BoA reallocated the case but the BoA upheld the refusal to register the mark under different absolute grounds.

The GC upheld the BoA’s decision that, independently of other characteristics of the product, the mark consisted exclusively of a shape which gave substantial value to the goods under Art 7(1)(e)(iii).

Under Art 74(1), OHIM was required to examine of its own motion the relevant facts which may lead it to apply an absolute ground for refusal. Art 7(1), which listed the various absolute grounds for refusal, did not specify in what order the grounds should be considered.  There was no reason why the BoA could not examine the absolute ground for refusal under Art 7(1)(e)(iii) after examination of the ground arising under Art 7(1)(b).
The GC held that the design element of the goods covered by the mark was a very important factor in the consumer’s choice even if the customer considered other characteristics of the goods. The mark was of a very specific design that was an essential element of B&O’s branding. The design increased the appeal (and thus value) of the product. Furthermore, evidence from distributors’ websites and on-line auction or second-hand websites showed that the aesthetic characteristics of the shape was emphasised first such that the shape of the product was an important selling point.

On that basis, the shape of the mark independently of the other characteristics of the goods gave substantial value to the goods at issue.

The GC annulled the decision of the BoA in which the BoA held that there was no likelihood of confusion under Art 8(1)(b) on the basis that there was no similarity between the marks.  On that basis the BoA had not considered the opposition under Art 8(5).

The word ‘seven’ in the earlier marks was an important point of similarity and that its role in the overall impression created by those marks could not be overlooked. The word ‘seven’ had an average degree of distinctiveness in respect of the goods at issue. Consumers will generally pay greater attention to the beginning of a mark than to the end and the first part of a mark tends to have greater visual and phonetic impact on the consumer. Neither the presence of the additional words in the later mark nor the use of figurative elements in the earlier marks dispelled the visual similarity between the marks.
Whether as a numeral or word, the element ‘seven’ was pronounced identically and the additional words used in the later mark did not detract from the phonetic similarity.
The words ‘for all mankind’ had a low degree of distinctiveness and the conceptual scope of the marks was determined mainly by the word ‘seven’.

The GC held that the BoA had made an error in its decision by not recognising that there was a certain degree of similarity between the marks at issue under Art 8(1)(b). It was on this basis that the BoA also dismissed the claim under Art 8(5). Consequently, both provisions were infringed.

The GC upheld the BoA’s finding that there was no likelihood of confusion between the later mark and the six earlier marks under Art 8 (1)(b).

The signs were visually, phonetically and conceptually different. The dominant element of the later mark ‘G’ ‘S’ ‘S’ was very different in sound and length to the earlier marks.  GALILEO was not the dominant element in the later mark. Conceptually the public would distinguish between the marks and perceive the word GALILEO only on the rare occasions where the meaning of the abbreviation GSS was expressed in full as ‘galileo systemas y servicios’. The difference in the figurative elements of the marks, including the shape and stylised text was sufficient to demonstrate the marks were not similar.
On a global assessment, the difference between the mark applied for and the earlier marks was sufficient for a finding that the marks were not similar.

The GC upheld the BoA’s decision that the mark was descriptive under Art 7(1)(c). 

The relevant public was made up of highly-specialised English-speaking medical professionals who were particularly well-informed and attentive. The fact that the average English-speaking consumer would associate the word ‘pipeline’ with the long-distance transport of oil and gas was irrelevant.  By contrast, a medical professional involved in the treatment of aneurysms would immediately associate the mark with the characteristics of the goods it covered and therefore more easily understand the descriptive connotations of the mark.
The fact that ‘pipeline’ had other meanings that were not descriptive of the goods did not prevent the mark from falling within the scope of Art 7(1)(c). It was further irrelevant for the purposes of Art 7(1)(c) that other more generic terms such as ‘catheter’ were used in medicine to describe the product. 

The GC upheld the BoA’s decision that there was a likelihood of confusion between the mark applied for and the earlier mark under Art 8(1)(b).

The BoA did not err in finding the relevant public as being both the public and professionals throughout the EU. The BoA’s silence on the level of attentiveness was justified in light of the fact that NEC had not made submissions to the BoA regarding the OD’s assessment of the level of attention of the relevant public.

The goods were similar. The earlier mark was not restricted to mobile phone equipment, but was broad enough to cover goods used with computers. The goods had the same purpose and had a close complementary connection.

Despite the fact that the element ‘navi’ was only of weak distinctive character, the high degree of similarity between the goods and the visual and phonetic similarity between the marks meant there was a likelihood of confusion under Art 8(1)(b).