Reported Trade Mark Cases for October 2005

01 December 2005

Katharine Stephens

Trade Marks

Appeals from OHIM

Ref no.  



Sportwetten GmbH Gera v OHIM & Intertops Sportwetten GmbH


Application (and where applicable, earlier mark) 

 - bookmaking and betting services (42)

Comment  The applicant sought a declaration that the mark was invalid, claiming that it was contrary to accepted principles of morality under Art. 7(1)(f). OHIM dismissed the application and the CFI dismissed the appeal. The prohibition on the holder of the mark from offering betting services in Germany did not mean that the mark itself was contrary to Art. 7(1)(f). The absolute grounds for refusal set out in Art. 7(1) referred to the intrinsic qualities of the trade mark applied for and not to circumstances relating to the conduct of the applicant for the trade mark.

Ref no. CFI


Citicorp v OHIM (15.9.05)

Application (and where applicable, earlier mark) LIVE RICHLY - financial and monetary services and real estate affairs (36)
Comment OHIM rejected the application under Art. 7(1)(b). The CFI dismissed the appeal. The CFI held that there had been no infringement of the applicant’s right to be heard under Art. 73, since both the examiner and the BoA had taken the same view of the relevant points. On the substantive issue, the court held (1) that despite the financial nature of the services, the relevant public were taken to be normally well-informed and aware; and (2) despite the fact that the sign could have a number of meanings, it was not distinctive of the services. The BoA had been right that the sign conveyed a clear informative message with a laudatory connotation in the context of the services and, if used alone, would be perceived as a promotional formula.

Ref no.  CFI


Cargo Partner AG v OHIM


Application (and where applicable, earlier mark) CARGO PARTNER - transport, packaging and storage of goods and travel arrangements (39)
Comment OHIM refused the application under Art. 7(1)(b). The CFI dismissed the appeal. The sign was not contrary to the grammatical rules of the English language and was not unusual in structure. The word ‘partner’ was commonly used in the supply of services to denote relationships of association or partnerships and the term ‘cargo’ indicated transport, packaging and storage of goods. CARGO PARTNER when taken as a whole did not have any additional characteristics which made it capable of distinguishing the relevant services under Art. 7(1)(b).

Ref no.  CFI


Alcon Inc v OHIM & Biofarma SA


Application (and where applicable, earlier mark) TRAVATAN – ophthalmic pharmaceutical preparations (5)


TRIVASTAN – pharmaceutical, veterinary products (5) (Italian mark)
Comment OHIM allowed the opposition under Art. 8(1)(b) and the CFI dismissed the appeal. The court held that (1) the BoA had correctly accepted that the intervener’s evidence demonstrated genuine use of the earlier mark in relation to peripheral vasodilators intended for treatment of the eye and ear; (2) the BoA had correctly not taken account of the offer to limit the specificaiton of goods because the application had not been made in accordance with the rules; and consequently (3) there was a high degree of similarity between the goods. The marks were visually and phonetically similar and, although there was no conceptual similarity, there was a likelihood of confusion between the signs.

Ref no.  CFI


Bunker & BKR SL v OHIM & Marine Stock Ltd


Application (and where applicable, earlier mark)  

-         ready-made clothing, belts, footwear, headgear (25)

BK RODS – all goods in Class 25 (Austrian mark)

Comment OHIM allowed the opposition. The CFI annulled that decision. Under Art 8(1)(b), the CFI held: (1) the relevant public were made up of average Austrian consumers; (2) the goods at issue were identical; (3) OHIM were right in regarding the dominant element of the application to be the letters BKR; but (4) the marks were not visually or aurally similar.

Decisions of the ECJ

BioID AG v. OHIM (ECJ (Third Chamber); C-37/03 P; 15.9.05)

BioID applied to register BioID (shown below) in Classes 9, 28 and 42 for products such as computer software, security services in connection with access to databases and the checking of user passwords and services such as the provision of software on the internet in connection with computer-aided identification.

Computer software, security services - databases

OHIM had refused the application and the CFI had rejected the appeal. Although the ECJ set aside the decision of the CFI, it went on to give final judgment in the matter, holding that the mark was devoid of distinctive character under Article 7(1)(b).

The ECJ broke the claim down into 4 heads. The judgment of the CFI was set aside because of the ECJ’s finding under the 4th head:

  • Overall impression produced by the mark: The CFI had applied the correct test. It did not restrict itself to examining the overall impression produced by the mark as a secondary matter (as the CFI had done in SAT.1 v. OHIM (SAT.2) C-329/02) but directed part of its reasoning to considering the mark’s distinctiveness as a whole.

  • Evidence that the mark was commonly used by the public in a descriptive sense: The ECJ held that the appeal was partly unfounded (this issue was relevant to Article 7(1)(d), not (b)) and partly inadmissible (it was a question of fact on which an appeal could not lie).

  • Account to be taken of other marks registered as CTMs: Again, the ECJ rejected this head of appeal as partly unfounded and partly inadmissible.

  • Criterion for refusal of registration: The ECJ held that the CFI was wrong to primarily accept that the mark was commonly used in trade in order to establish that it fell within Article 7(1)(b). That criterion was relevant to Article 7(1)(c), not (b).

The ECJ then gave final judgement in the matter. It held that the relevant public was one with experience in the sector of the goods and service in question, reasonably well informed, observant and circumspect. The court agreed with the CFI that the relevant public would understand BioID as being made up of the abbreviation of ‘biometrical’ and ‘identification’. Therefore the abbreviation BioID was indistinguishable from the goods and service applied for and could not guarantee to the relevant public the origin of those goods and services. The use of the Arial font and characters of differing boldness did nothing to make the mark distinctive, neither did the addition of the full stop (▪) or sign (®) alter this finding.

Medion AG v. Thomson Multimedia Sales Germany & Austria GmbH (ECJ (Second Chamber); C-120/04; 6.10.05)

Medion is the owner in Germany of the trade mark LIFE registered for leisure electronic devices. Medion commenced infringement proceedings against Thomson for use of THOMSON LIFE for TV sets, cassette players, CD players and hi-fi systems. The Landgericht Düsseldorf rejected the application. On appeal, the Oberlandesgericht Düsseldorf referred a question to the ECJ.

The ECJ held that: Article 5(1)(b) of the Directive is to be interpreted as meaning that, where the goods or services are identical, there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered trade mark which has normal distinctiveness and which, although it does not determine by itself the overall impression conveyed by the composite sign, still has an independent distinctive role therein.  

In so holding, the ECJ noted first the essential function of a trade mark as set out in the Directive and then went through its own case law on the assessment of the likelihood of confusion. It stated that the assessment should not be subject to the condition that the overall impression produced by the composite sign (here THOMSON LIFE) be dominated by the part of it which is represented by the earlier mark (here LIFE). If such a condition were imposed, the owner of the earlier mark would be deprived of the exclusive right conferred by Article 5(1). In so stating, the Court was conscious that if it had held otherwise, a widely-known mark could swamp a less well-known, earlier mark, leaving the proprietor of the earlier mark with no redress.

Parallel imports

Sportswear Company Spa & Anr v. Sarbeet Ghattaura, Sportswear Company Spa & Anr v. Stonestyle Ltd (Warren J.; [2005] EWHC 2087 (Ch); 3.10.05)

The claimants successfully sought to strike out those parts of the Defence relating to Article 81 of the EU Treaty.

The first claimant was the owner of the mark in STONE ISLAND registered for clothing and the second claimant is the UK distributor. There was no dispute that the defendants were selling genuine STONE ISLAND clothing or that the clothing had been placed on the market in the EEA by the claimants with their consent. The claimants objected to what they described as the mutilation of the clothing, that is, the labels had been defaced and/or the swing tags cut out and defaced.

The defendants’ case was that Section 12 had to be construed against the requirements of EU competition law, and in particular Article 81. They submitted that, in the light of distribution agreements made between the claimants, the claimants could not say that they had legitimate reasons to oppose further dealings in the goods (under Section 12(2)). Therefore, they, the defendants, could not be prevented from selling the clothing with the garment codes removed.

Warren J. held that there was no sufficient nexus between breaches of Article 81 (which, for the purpose of this argument, the judge assumed to be established) and the relief sort for trade mark infringement (British Leyland v. Armstrong [1984] 3 CMLR 201 followed). Further, even if the defendants could prove that the claimants were reconstructing the itinerary of their products with the purpose of preventing their dealers from supplying persons carrying on parallel trade (as it was put in Frits Loendersloot v. George Ballantine & Sons Ltd C-349/95), such arguments had nothing to do with whether the claimants were parties to an agreement which happened to infringe Article 81. Article 81 was, on that basis, irrelevant to the applicability or otherwise a Section 12(2).

In relation to the defendants’ claim that a breach of Article 81 disentitled the claimants to injunctive relief, the judge did not see how the garment codes themselves could be contrary to Article 81, nor did he consider that the instigation of these proceedings was a breach of Article 81; the proceedings were not, so far as he could see, brought pursuant to the agreements at all since there was no obligation on either party to commence proceedings.

Reporter’s note: I am grateful to my colleague at Bird & Bird, Alice Sculthorpe, for assisting me in the preparation of this report.

CFI and ECJ decisions can be found at