Reported Trade Mark Cases for December 2005

23 January 2006

Katharine Stephens

Appeals from OHIM


Ref no. 



Focus Magazin Verlag GmbH v OHIM; ECI Telecom Ltd


Application (and where applicable, earlier mark) 

HI-FOCuS – telecommunications systems and services (9 and 28)


FOCUS – goods in 24 various classes, including 9 and 28


The CFI allowed the appeal and annulled the decision of the BoA.

Focus Magazin opposed the application under Art. 8(1)(b).   The Opposition Division rejected the opposition because Focus Magazin had failed to provide a complete translation of the certificate of registration of its German mark. The BoA dismissed the appeal, refusing to take into consideration the translation which was produced before it for the first time.

The CFI held that under Art. 74, the BoA should have based its decision on all matters of fact and of law, whether they were introduced in the proceedings at first instance or on appeal. By failing to take account of the translation annexed to the appeal and produced within the time limit, the BoA had acted outside the scope of Art. 74.


Ref no. 



Biofarma SA v OHIM; Bausch & Lomb Pharmaceuticals Inc.


Application (and where applicable, earlier mark) 

ALREX – eye drops, solutions and ointments used for the treatment of eye infections and inflammations (5)


ARTEX – medicinal products against hypertension (5) (France, Benelux, Portugal)


The CFI annulled the decision of the BoA, holding that there was a likelihood of confusion between the marks within the meaning of Art. 8(1)(b).

The Opposition Division upheld the opposition on the basis that the signs, as well as the goods covered by the marks, were similar. The BoA annulled the decision, finding that there was only a vague similarity between the goods in question, despite them belonging to the same class.

Before the CFI, Biofarma argued that since the confusion of one medicinal product with another could have serious consequences, such products had to be clearly identified. Bausch submitted that since products for treatment of hypertension were only available by prescription, the relevant public were made up of experts who were more attentive than the average consumer. Therefore a lesser degree of similarity between the marks was required to create a likelihood of confusion.

The CFI held that the relevant public included patients and that the signs were very similar. Given this, the minor differences between the goods in question were not sufficient to remove a likelihood of confusion.


Ref no. 



Soffass SpA v OHIM; Sodipan SCA


Application (and where applicable, earlier mark) 

NICKY - handkerchiefs, face cloths, hand towels and kitchen towels (16)


Noky paper goods

- paper (16) (France)


Noky - household and cleaning paper goods

- paper goods for household and cleaning purposes (16) (France)


The CFI dismissed both the applicant’s and opponent’s applications.

The Opposition Division dismissed the opposition, holding that the signs were dissimilar (and therefore it was unnecessary to make a comparison of the goods). The BoA annulled the decision and referred the case back to the Opposition Division to make a comparison of the goods. The applicant applied to annual that decision and the opponent to dismiss the action.

The CFI held that there was visual similarity between the marks since four of the letters of the mark NOKY were found in the same place in NICKY. Further, the ending KY was uncommon in the French language and was therefore the dominant element of both marks.

Conceptually, it was also possible that the word NICKY could be seen by French consumers as a diminutive of the names Nicolas or Nicole, but it depended to some extent on the nature of the goods concerned and the way in which they were marketed. Therefore the BoA was right to hold that a comparison of the goods should be carried out in order to make an overall assessment of the likelihood of confusion.


Ref no. 



Simonds Farsons Cisk Plc v OHIM; Spa Monopole, compagnie fermière de Spa SA/NV


Application (and where applicable, earlier mark) 

KINJI BY SPA + device consisting of a raccoon – Fruit pulp, mineral and aerated waters and other non-alcoholic drinks containing fruit juice (29 and 32)


KINNIE – non-alcoholic drinks and preparation for making beverages (32) (CTM)


The CFI dismissed the appeal. There was no likelihood of confusion within Art. 8(1)(b). While the goods concerned were identical or very similar, the signs were visually, phonetically and conceptually dissimilar and therefore there could be no likelihood of confusion.

The CFI also rejected Simonds’ claim that by not giving the parties the opportunity comment on the ground relating to the BoA’s view of how drinks were sold in bars and restaurants, the BoA had infringed Art. 73.


Ref no. 



Sadas SA v OHIM ; LTJ Diffusion SA


Application (and where applicable, earlier mark) 

ARTHUR ET FELICIE - home purchase catalogues, fabrics, clothing and footwear (16, 24 and 25)


Clothing brands
- textile articles, boots, shoes, slippers (24 and 25) (CTM)


The CFI rejected this latest appeal, holding that the marks were sufficiently similar for there to be a likelihood of confusion under Art. 8(1)(b).

The CFI held that the word ARTHUR was the dominant element of the earlier mark. The addition of the words ET and FELICIE to the applicant’s mark did not do enough to counter the similarity created by use of the word ARTHUR. Since the applicant did not dispute the reputation of the earlier mark, there was no need to consider whether this had a weak distinctive character due to the alleged co-existence of several other similar marks for clothes.

Further, it was common in the clothing sector for the same mark to be configured in various ways, e.g. for distinguishing various lines. Therefore the BoA was right to find that the public might believe that the products designated by ARTHUR ET FELICIE formed part of a new range of products marketed by the owner of the ARTHUR mark. Accordingly, the BoA was right to conclude that there was a likelihood of confusion.


Ref no. 



GfK AG v OHIM ; BUS – Betreuungs und Unternehmensberatungs GmbH


Application (and where applicable, earlier mark) 

ONLINE BUS – drawing up statistics in the fields of economics, marketing (35)


Business Consultancy brand
- business consultancy (35)


The CFI dismissed the appeal; there was a likelihood of confusion between the signs under Art. 8(1)(b).
The intervener’s evidence of use showed the component elements differently arranged and presented in different colours (as shown below) to those in which it was registered.

Bus brand 
However, the CFI was satisfied that use of the earlier mark had been proven because the form in which it had been used did not contain any differences which altered its distinctive character for the purpose of the combined provisions of Art. 15(2)(a) and Art. 43(2) and (3).
The CFI also found that, because neither “Betreuungsverbund fur Unternehmer und Selbstandige e.V.” nor “online” had distinctive character, the word “bus” constituted the dominant verbal element in each of the two signs. This was the memorable element of each mark which also dominated its pronunciation. Given the high degree of similarity between the services in question and high degree of aural similarity between the signs the visual difference was not likely to preclude a likelihood of confusion.


Ref no. 



Erich Dranzdanksy v OHIM


Application (and where applicable, earlier mark) 

UUP’s – class 32

UP – classes 30 and 32 (CTM)

Comment By order, the CFI dismissed the action. The applicant failed to lodge the appeal against the decision of the Opposition Division (upholding the opposition) within the time limit due to an administrative error at the offices of the applicant’s representatives.

Ref no. 

AG Opinion


Muehlens GmbH & Co. KG v OHIM


Application (and where applicable, earlier mark) 

ZIRH – soaps, perfume, cosmetics, hairdressing services and beauty services (3 and 42)


SIR + device – perfume, essential oils and cosmetics (3) (CTM)


AG Ruiz-Jarabo Colomer was of the opinion that the Court ought to dismiss the appeal against the CFI Judgment in Case T-355/02. The CFI dismissed the appeal from OHIM, holding that there was no likelihood of confusion under Art. 8(1)(b). The AG rejected Muhlens’ plea of misconstruction of the concept of likelihood of confusion in Art. 8(1)(b) as unfounded.

Muhlens adduced evidence of national infringement proceeding between the two parties: the Landgericht Hamburg had ruled that there was a likelihood of confusion between the two signs. The AG commented that it was unfortunate that the national Court had given a decision in conflict with the CFI, and that he hoped an appeal court would take a decision that would mitigate the resulting legal uncertainty.



Descriptive marks

Matratzen Concord AG v Hukla Germany SA (AG Jacobs ; C-421/04 ; 24.11.04)

In the main proceedings, the Matratzen Concord sought the cancellation of the Spanish mark MATRATZEN registered for furniture and especially beds and mattresses. The Court of First Instance held that the mark was neither misleading to Spanish consumers nor generic, however many German citizens reside in Spain. On appeal, the Audiencia Provincial, Barcelona essentially asked the ECJ the following question: under what conditions can a trade mark be registered in a Member State where, in the language of another Member State, it is not distinctive but merely denotes or describes the product concerned?

AG Jacobs was of the opinion that if a word was descriptive in the language of one Member State and therefore would not be registered there under Article 3(1)(c), it may not be registered as a trade mark in another Member State where a significant proportion of traders in and consumers of that product may reasonably be expected to understand the meaning of the word or words. (It will also be recalled that in its judgment T-6/01, the CFI upheld the decision of OHIM refusing the application to register MATRATZEN MARKT CONCORD + device under Art 8(1)(b) in the face of the earlier Spanish mark MATRATZEN as the marks, in Spain, would be seen as confusingly similar.

Appeals From The UK Registry

Almighty Marketing Ltd v. Milk Link Ltd (Kitchin J; [2005] EWHC 2584 (Ch); 18.11.05)

In allowing the appeal from the decision of the hearing officer, Kitchin J. held that, in proceedings for revocation of a trade mark based on non-use, the purpose of the evidence under Rule 31(3) was to establish that the proprietor had an arguable or viable defence to the attack mounted upon the registration and to provide the applicant for revocation with sufficient information to enable him to investigate the use of the mark. The evidence did not have to be so persuasive that, if unanswered, it would necessarily discharge the burden of proof relying upon the proprietor.

Thus, in this case, an application for revocation of the trade mark MOO JUICE, the evidence, although brief, just satisfied the requirements of Rule 31(3) (the evidence exhibited labels used on the packaging of the cartons of milk and a letter from the proprietor’s accountants). As a consequence, the hearing officer was wrong in treating the opposition to the application to revoke as having been withdrawn. Although it was desirable for a proprietor to provide information such as brochures, catalogues, pamphlets, advertisements or the like (as referred to in Carte Bleue Trade Marks [2002] RPC 31) it was not incumbent on the applicant to provide such information.


Oakley Inc v Animal Ltd & ors & Secretary of State for Trade and Industry (Waller LJ, May LJ, Jacob LJ; [2005] EWCA Civ 1191; 20.10.05)

The Court of Appeal held that The Registered Design Regulations 2001, had been validly made by the Secretary of State, and were not in breach of Community law.

At first instance Peter Prescott QC held (in a dispute over infringement of a registered design) that Regulation 12 was ultra vires, but could not be severed from the rest of the Regulations, resulting in the entire Regulations being invalid. The Secretary of State appealed this decision.

The issues before the Court of Appeal centred around the true construction of Sections 2(2)(a) and (b) of the European Communities Act 1972. More specifically, the issue was whether these Sections (which allow for the implementation of EC Legislation) gave the Secretary of State jurisdiction when creating The Registered Design Regulations 2001 to choose between various options left open in European Community Directive 98/71/EC.

The Court of Appeal held that the finding of the lower court on validity should be reversed. They held that the 2001 Regulations, including the provisions in Regulation 12 relating to the continuing validity of old law, were validly passed and were not ultra vires.

The basis for the decision differed from judgment to judgment. It was common ground, however, that the obligation imposed by a Directive is to implement the Directive, not a matter of assessment of the detailed contents of the Directive to establish which parts create Community obligations and which do not. Thus, the decision to exercise the derogation (by retaining the old law on validity for existing registered designs) was clearly within the Secretary of State’s powers under section 2(2)(a) to create subordinate legislation in order to implement a Community Directive.

The Lords Justices of Appeal diverged on the correct construction of Section 2(2 (b), which gives ministers power to create subordinate legislation for the purpose of dealing with matters arising out of or related to any such obligation. This divergence leaves the scope of Section 2(2)(b) uncertain, and may require further clarification either by the Court of Appeal or the House of Lords in due course.

Since the particular design in dispute in the Oakley case was registered prior to 9 December 2001 it came under the opt-out, and was therefore subject to the old law. Further, in view of the outcome on the validity point, there was no need for the Court of Appeal to look at the severability point central to Oakley’s appeal.

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