Reported Trade Mark Cases for November 2003

28 November 2003

Katharine Stephens

Trade Marks

Decisions of the Appointed Person and CFI



















Ref no.  O/215/03
Application (and where applicable, earlier mark)  

EBC – motorcycles, engines, spares and accessories (1, 7, 9, 12)

 

EBC (unregistered) -motorcycle batteries

Comment  The Hearing Officer held that use of EBC for batteries was liable to be prevented under s.5(4)(a) and consequently excluded such goods from the applicant’s specification.  On appeal, Professor Annand held that the Hearing Officer had misdirected himself in finding that EBC had goodwill such that misrepresentation and damage must follow.  She looked at the evidence afresh, but dismissed the appeal.  The opponent had proved that EBC was distinctive of batteries which set up a prima facie case which the applicant failed to rebut.
   


















Ref no.  O/279/03
Application (and where applicable, earlier mark) 

KINDER SNAPPY,

KINDER TIME,

KINDER TONUS, KINDER Cuordifrutta –

confectionary and various food products (30, 32)

Comment D. Kitchin Q.C. dismissed the appeal.  The proprietor had filed nearly 70 marks containing the word KINDER but used only 6 of them.  This fact was not explained or answered by the proprietor in evidence.  The Hearing Officer was therefore entitled to conclude that the proprietor was filing applications without any real and effective intention to use them and that therefore they were invalid under s.3(6).
   


















Ref no. O/296/03
Application (and where applicable, earlier mark) 

BEN JAMES – clothing, foot and headgear, (25)

 

BENJAMIN JAMES - clothing (25)

Comment D. Kitchin Q.C. dismissed the appeal from the decision of the Hearing Officer who had upheld an objection under s.5(2).  The overall impressions created by the application and by the earlier mark were aurally, conceptually and visually extremely similar.
   


















Ref no. O/297/03
Application (and where applicable, earlier mark) A series of 3 marks comprising 3-D cardboard surrounds, the outline of the front elevation being a circle overlaid by an isosceles trapezoid – all goods in classes 1, 16, 17, 19, 27
Comment S. Thorley Q.C. dismissed the appeal from the Hearing Officer who had upheld an objection under s. 3(1)(b).  The applicant argued that the application, and particularly the 3-D shape, was unique and memorable.  Held: the packaging did not possess any inherent capacity to distinguish the origin of the goods and could not function as a trade mark.   The fact that the application was always used with word marks defeated the premise that the packaging indicated origin.  As to the mark with the added feature of colours, the colour configuration added no relevant distinctiveness.
   


















Ref no. T-129/01
Application (and where applicable, earlier mark) 

BUDMEN – clothing (25)

 

BUD – clothing (25)

Comment The CFI upheld the decision of the OHIM Board of Appeal which in turn had upheld the Opposition Division’s decision.  The marks were confusingly similar.  The dominant element of the application was identical to the earlier mark; the suffix MEN being viewed as an ancillary element because it occupied second place in the sign and because of its descriptive connotation.
   


















Ref no. T-100/01
Application (and where applicable, earlier mark) 

SEDONIUM – medicines (5)

 

PREDONIUM – medicines (5)

Comment The opposition before OHIM was successful.  Thereafter, the parties settled the matter, but the applicant wanted the proceedings to be annulled or declared to be of no legal effect.  The CFI refused to do so as the action had become devoid of purpose.  The parties were ordered to bear their own costs and pay those incurred by OHIM.
   


















Ref no. T-71/02
Application (and where applicable, earlier mark) 

BECKETT EXPRESSION – paper goods (16)

 

EXPRESSION – paper goods (16)

Comment The Opposition Division rejected the opposition.  The opponent appealed, but lodged the grounds 2 days late on the date when the representative returned to the office after a short illness (held by the CFI to be the date on which the cause of non-compliance was removed).  An application for restitutio in integrum was made over 3 months later.  Held: the application was correctly rejected by OHIM as being outside the 2 month time limit.
   


















Ref no. T-295/01
Application (and where applicable, earlier mark) OLDENBURGER – milk, milk products (29, 30, 32)
Comment The CFI dismissed the appeal from OHIM.  The application was rejected under Art 7(1)(c).  OLDENBURGER derives directly, in its adjectival form, from the name of the German town, Oldenburg, the principal town in the district of Weser-Ems, Lower Saxony, well known as an agricultural area, in particular for its dairy, livestock and meat-processing industries.
   


















Ref no. T-311/01
Application (and where applicable, earlier mark) 

Device mark consisting of the word “STARIX” and an oval containing a small point, the effect being of an electron or satellite orbiting the word – electronic devices, telecommunications (9, 38)

 

ASTERIX – electronic devices, films (9, 41)

Comment The CFI upheld the decision of the OHIM’s Board of Appeal.  The goods/services were identical or similar, but there was no likelihood of confusion under Art 8(1)(b) because the marks were dissimilar visually, phonetically and conceptually.  The fact that the prior registered mark was well known, did not alter the risk assessment, given that finding of fact.  In commenting upon the conceptual comparison, the CFI stated that “the specific representation of a popular character, makes it extremely unlikely that there could be any confusion in the public mind between words which are more or less similar.”
   


















Ref no. T-85/02
Application (and where applicable, earlier mark) 

CASTILLO – cheese (2)

 

Device mark containing EL CASTILLO – condensed milk (29)

Comment The CFI dismissed the appeal from the OHIM’s Board of Appeal.  Under Art 8(1)(b) the goods were similar, as were the marks, such that there existed a likelihood of confusion.  The appellant had been right to criticise some of the statements made by the Board of Appeal regarding the ways in which the products were used in cooking and their substitutability, particularly for persons who were lactose intolerant, as there was no evidence for such statements.  However, that did not alter the conclusion that the goods were similar.
   

 Role of the Boards of Appeal, OHIM

Henkel KGaA v. OHIM (CFI; Case T-308/01; 23.09.03)

The applicant applied to register KLEENCARE for chemicals and detergents in classes 1 and 3.  The Opposition Division rejected the opposition, based on the mark CARCLIN for the same goods on the basis that the opponent had not furnished sufficient proof that its mark had been put to genuine use, despite the opponent filing a declaration sworn by one of its managers setting out sales figures.  This was held to be of less probative value than a statement from a third party.  Attached to the opponent’s appeal were invoices supporting the sales figures in the witness statement.  Nevertheless, the Board of Appeal dismissed the appeal on the ground that the opponent had not contested the finding that the evidence was insufficient to establish genuine use.  Further, the new evidence was rejected. 

The CFI annulled the decision.  By failing itself to examine the evidence provided in the manager’s statement, the Board of Appeal had failed to fulfil its obligations.  The Boards of Appeal may, subject only to Article 74(2) of the Regulation, allow an appeal on the basis of the facts or evidence adduced by the appellant.  Furthermore, the extent of the examination the Boards of Appeal conduct was not, in principle, determined by the grounds relied upon by the party who had brought the appeal.  The appellant only had to identify the contested decision and the extent to which it wanted amendment to or cancellation of that decision.  Accordingly, even if the appellant did not raise a specific ground of appeal, the Boards of Appeal were nonetheless bound to examine whether or not, in the light of all the relevant matters of fact and law, a new decision with the same operative part as the decision under appeal could be lawfully adopted at the time of the appeal ruling.

Descriptive Marks

OHIM v. Wm Wrigley Jr Co (ECJ; Case C-191/01; 23.10.03)

Wrigley, an international confectionery company, applied to OHIM to register DOUBLEMINT for various classes of goods including in particular chewing gum.  The application was rejected and Wrigley appealed.  The First Board of Appeal of OHIM dismissed the appeal on the ground that the word DOUBLEMINT was descriptive of certain characteristics of the goods in question and therefore could not be registered as a CTM by virtue of Article 7(1)(c). 

Wrigley then brought an action for annulment of the contested decision before the CFI (T-193/99).  The CFI concluded that the word DOUBLEMINT, when applied to the goods referred to in the application for registration, had an ambiguous and suggestive meaning open to various interpretations.  It did not enable the public concerned to immediately detect the description of a characteristic of the goods in question.  The term was not exclusively descriptive and therefore could not be refused registration.  Accordingly the CFI annulled the contested decision.

OHIM appealed to the ECJ (this case) which in line with the opinion of AG Jacobs then set aside the judgment of the CFI.  The ECJ concluded that a sign could not be registered as a CTM if one of its possible meanings is capable of designating a characteristic of the goods concerned.  Article 7(1)(c) provides that trade marks which consist exclusively of signs of indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the service, or other characteristics of the goods or service, are not to be registered.  This prohibition accords with the public interest in ensuring that descriptive signs or indications relating to the characteristics of goods or services are free for use and registration by all.  In order for OHIM to refuse to register a trade mark under Article 7(1)(c) it was not necessary that the signs and indications composing the mark were actually in use at the time of the application for registration in a way that was descriptive of the goods or services in respect which the application was filed or of their characteristics.  It was sufficient that such signs and indications could be used for such purposes.  Registration of a sign must therefore be refused if at least one of its possible meanings designates a characteristic of the goods or services concerned.  The CFI erred as to the scope of Article 7(1)(c) by applying a test based on whether the mark was exclusively descriptive, which was not the test laid down by Article 7(1)(c).  In so doing it failed to determine whether the word at issue was capable of being used by other economic operators to designate a characteristic of their goods and services.

Infringement

Adidas A.G. & Anr  v. Fitness World Trading Ltd (ECJ; Case C-408/01; 23.10.03

Adidas is an international sporting goods company.  It was the proprietor of a trade mark, registered in the Benelux, formed by a motif consisting of three vertical stripes running parallel which appeared on sports clothing.  The defendant, Fitnessworld Trading Ltd (a company established in the UK), marketed in the Netherlands certain sports clothing bearing a two-stripe motif. Adidas brought an action for infringement against the defendant before the Netherlands courts claiming a likelihood of confusion between the two motifs on the part of the public.  It further claimed that the defendant was taking advantage of the repute of the Adidas mark and impaired the exclusivity of the mark.  The defendant argued that the motif was viewed purely as an embellishment by the relevant section of the public therefore could not be an infringement of the mark.  The Supreme Court of the Netherlands referred questions to the ECJ for a preliminary ruling on the interpretation of Article 5(2) of the Directive.

In its judgment, the ECJ concluded that a proprietor of a trade mark with a reputation could not prevent the use of a similar sign which was viewed purely as a decorative motif by the relevant public; accordingly Adidas was not successful in its action in this particular case.  However, the ECJ held that where the relevant public established a link between the mark with a reputation and a similar sign, even without confusing the two, an infringement of the mark with a reputation existed.

The ECJ confirmed the ruling made in Case C-292/00 Davidoff [2003] ECR 1-389, namely that if Member States exercise their option under Article 5(2), they are bound to grant protection under that provision to marks with a reputation both in relation to goods or services which are not similar and in relation to goods or services identical or similar to those covered by the mark.

The ECJ held that Article 5(2) provided a protection for the benefit of trade marks with a reputation, which was not conditional on a finding of a degree of similarity between the mark with a reputation and the sign such that there existed a likelihood of confusion.  It was sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant public made a connection between the sign and the mark, or established a link between them, although it did not confuse them.  The existence of such a link had to be established globally, taking into account all factors relevant to the circumstances of the case.  Where, according to a finding of fact by the national court, the relevant section of the public viewed the sign purely as an embellishment, it did not necessarily establish any link with the registered mark with a reputation.  It followed that the proprietor of the mark with a reputation could not, in this case, prevent the use of that embellishment by a third party.  However the fact that a sign is viewed as an embellishment by the relevant section of the public is not of itself an obstacle to protection under Article 5(2) if the degree of similarity is nonetheless such that the relevant section of the public establishes a link between the sign and the mark.

Free Movement of Goods

Administration des Douanes et Droits Indirectes v. Rioglass S.A. & Anr (ECJ; Case C-115/02; 23.10.03)

The facts in this case were as follows: Rioglass sold a consignment of windows and window screens, lawfully produced in Spain, to a company in Poland intended for various makes of cars.  During transit through France, the goods were detained by French Customs officers under the Code de la propriété intellectuelle.  The Cours de Cassation referred a question on the free movement on goods to the ECJ.  The ECJ had previously held that Articles 28-30 EC were applicable to goods in transit through a Member State but intended for a non-member country (Case C-350/97 Monsees [1999] ECR I-2921).  In this case, the Court had to determine whether the obstacle to the free movement of goods by the detention under the Code de la propriété intellectuelle was justified by the need to ensure the protection of industrial and commercial property.  Here, goods in question were detained on suspicion of trade mark infringement.  The Court noted that the specific subject matter of a trade mark was, in particular, to guarantee to the owner that he had the exclusive right to use that mark for the purpose of putting a product on the market for the first time and thus protecting him against competitors wishing to take unfair advantage of the status and reputation of the trade mark selling products illegally bearing it (see, in particular, Case 16/74 Centrafarm [1974] ECR 1183).  Such protection was linked to the marketing of goods and the transporting between a Member State to a non-Member State by passing through one or more other Member States did not involve any marketing of the goods in question.  The Court held that, therefore, such transit was not liable to infringe the specific subject matter of the trade marks and, therefore, the detention in the main proceedings was not justified under Article 30.  Article 28 was to be interpreted as precluding the implementation, pursuant to a legislative measure of Member State (1) concerning intellectual property, of procedures for the detention by the customs authorities of goods lawfully manufactured in another Member State (2) and intended, following their transit through the territory of Member State (1) to be placed on the market in a non-member country.

Language Regime

Christina Kik v. OHIM (ECJ; Case C-361/01; 9.10.03)

The appellant was a Dutch Lawyer and trade mark agent.  Offended by the omission of the Dutch language from the (five) working languages of OHIM (namely, English, French, German, Italian and Spanish) she had filed a CTM application for the trade mark KIK in Class 42 indicating Dutch as both the first and second language. The Office had rejected the application because, under Regulation No 40/94 (Article 115), a CTM application must indicate one of the five working languages of the Office as the second language. The point of this rule is to ensure that oppositions as well as revocation and invalidity proceedings before OHIM are conducted in one of these five languages unless both parties to those proceedings agree otherwise. An appeal against this decision was rejected by the OHIM Appeal Board. The appellant then applied to the CFI claiming that the OHIM had infringed the principle of non-discrimination under Article 12 EC Treaty in not setting aside Article 115 of the and Rule 1(1)(j) (determining the official languages and the working languages of the Union). The CFI dismissed the action, finding that the OHIM could not decide not to apply the above articles and that it did not infringe the principle of non-discrimination under Article 12 EC Treaty.  In the meantime the appellant died but with the backing of the Greek government her heirs and beneficiaries appealed further to the ECJ.

The ECJ rejected the appeal in the following terms:

1.  The CFI had not erred in law in its interpretation of Article 115.  The CFI was right to conclude that the Trade Marks Regulation could not be taken in any sense to imply differentiated treatment as regards to language, given in fact that it guaranteed use of language of the application filed as the language of proceedings; and

2.  The entire language regime established by Article 115 was not unlawful and contrary to the principle of equality: it was in fact a justified and proportionate approach adopted for the legitimate purpose of reaching a solution on languages in inter partes proceedings.  It was the result of a difficult process which seeks to achieve the necessary balance between the interests of economic operators and the public interest in terms of the costs of proceedings and also between the interests of applicants for CTMs and those of other economic operators in regard to access to translations of documents which confer rights, or opposition, revocation and invalidity proceedings involving more than one economic operator.  Even if the eleven official languages of the Community (the OHIM working languages plus Danish, Dutch, Finnish, Greek, Portuguese and Swedish) were treated differently, by limiting the choice of working languages to those which are most widely known in the EU, the Council remained within the limits of what was necessary for achieving the aim in view (namely, a compromise that would allow OHIM to operate efficiently).

Reporter’s Note: 

1.  I am most grateful to my colleague Audrey Horton from Bird & Bird for assisting me in the preparation of this report.

2.  Websites at which the reported decisions can be found are as follows:

ECJ: www.europa.eu.int/index_en.htm
Appointed Person: www.patent.gov.uk/tm/legal/decisions/index.htm

CTMH STOP PRESS 11 November 2003

Advocate General Ruiz-Jarabo Colomer delivered his Opinion on November 6, 2003 in Joined Cases C-456/01 P and C-457/01 P (Henkel KGaA v OHIM),Joined Cases C-468/01 P to C-472/01 P (Procter & Gamble v OHIM) and Joined Cases C-473/01 P and C-474/01 P (Procter & Gamble v OHIM) (available on the CFI website www.curia.eu.int/jurisp/). Both companies had appealed against CFI decisions that the three-dimensional coloured shape of their detergent tablets, intended for use in washing machines or dishwashers, was devoid of distinctive character under Article 7(1)(b) CTMR.

The Opinion states that distinctiveness should be judged both at the time of application and at the time of registration. Distinctiveness at the time of registration had to be relevant because a mark is liable to be declared invalid under Article 51 CTMR if it ceases to be distinctive.

The question of distinctiveness is meant to be assessed by the Office at the examination stage, and not by the court in an infringement action. Thus the argument that OHIM did not need to carry out a strict examinationbecause the interests of competitors are protected by Article 12 of the Regulation (Article 6 of the Directive) is simply incorrect.

Furthermore, the Opinion holds that a mark cannot be said to be distinctive just because there are no other products on that market with that feature. It is not the number of products on the market that is determinative of distinctiveness. Instead, it is how the average consumer perceives them in relation to a ‘paradigm’ of the shape of the product when thinking generally of the shape of that product, explained below. Additionally, the number of products on the market is of no assistance where a mark is descriptive. The CFI's finding on the degree of attention paid to the tablets by the average consumer was a finding of fact and so could not be re-examined by the ECJ.

Readers will note an apparently new hurdle raised by the Advocate- General, at least for three-dimensional marks. The Opinion states that the CFI was right to judge distinctiveness by comparing the marks applied for with a paradigm composed of features which spring to mind if the general shape of the product, in casu, a wash tablet, is imagined; and then determining if the features that are found in the applicant's shape but not in the paradigm were distinctive, rather than comparing it to shapes of products already on the market. However, it would be more fitting to carry out such an analysis under Article 7(1)(c) (whether the sign is no more than a representation of the graphic description of the product). Conducting that analysis would also enable the examiner to look at whether there is a need to keep the shape free for other traders. In the test of comparing the applicant's shape to an obvious shape (the ideal paradigmatic concept of the product i.e. how it "instinctively comes to mind") to assess its distinctive character, the CFI had not improperly employed the "keep free" criterion.