Reported Trade Mark Cases July 2007

01 July 2007

Katharine Stephens and Zoe Fuller

Decisions of the CFI & EC


Ref no. 

C‑334/05 P
OHIM v Shaker di L. Laudato; Limiñana y Botella, SL.(12.06.2007) 

Application (and where applicable, earlier mark) 


- Alcoholic beverages (except beers) (33)

- Alcoholic beverages (except beers) (33) 


OHIM’s appeal related to the CFI’s incorrect application of Article 8(1)(b). The appeal was successful and the case was referred back to the CFI.

The CFI concluded that the round dish decorated with lemons was the dominant component of the figurative mark; the word elements were not dominant and were therefore not considered during the CFI’s analysis.

The ECJ held that the CFI had wrongly applied Article 8(1)(b). By only considering the dominant element of the figurative mark, the CFI had failed to carry out a global assessment of the likelihood of confusion.

The ECJ noted that the assessment of similarity can focus on one dominant characteristic only when all other parts of a mark are negligible. 


Ref no. 

Grether AG v OHIM; Crisgo (Thailand) Co. Ltd

Application (and where applicable, earlier mark) 


- compact powder, lipstick etc (3)

- compact powder, lipstick etc (3)


The CFI rejected the appeal and held that the figurative mark FENNEL and the earlier word mark FENJAL were not similar and consequently there was no likelihood of confusion.

Visually, the slight similarities due to the sequence of letters “fen” and “l” were offset by the difference in the configuration of the signs as a whole. The CFI noted that the letters “nn” in the middle of the mark FENNEL were in different graphics from the other letters; this attracted the consumer’s attention. In addition, the overall visual impression of the FENJAL mark was determined exclusively by its single word element whereas the impression created by the FENNEL mark was a result of the combination of the word element and its figurative element (although the CFI noted that the word elements alone were sufficiently distinct from each other).

The signs had clearly differentiated phonetic sequences; the pronunciation of the word “fennel” was characterised by the predominance of the sound “e”, whereas in the word “Fenjal” the dominant sound was the vowel “a”.

For consumers in most member states, neither word had any conceptual significance. Although the FENNEL mark had some significance in the UK, this fact did not cast doubt on the lack of similarity between the two signs.


Ref no. 

IVG Immobilien AG v OHIM

Application (and where applicable, earlier mark) 


- Various services relating to business, finance, banking, construction, transportation and architecture (classes 35, 36, 37, 39 and 42)


The CFI annulled the BoA’s decision and held that a single-letter mark “I” in royal blue that was slightly different to the Times New Roman font was not necessarily devoid of distinctiveness.

Under Article 7(1)(b) a minimal degree of distinctiveness is sufficient to overcome a refusal on absolute grounds.

The CFI criticised the BoA’s failure to examine all the relevant facts and circumstances with respect to the sign’s potential capacity to distinguish the applicant’s services from those of other undertakings.

By focussing from the outset on the sign’s standard colouring and similarity to a standard font, the BoA incorrectly took the view that the sign did not of itself have the minimum degree of distinctiveness.This view was in breach of Article 4 which expressly refers to letters and numerals.

The CFI held that a sign does not have to be unusual or striking to be distinctive. There was no requirement for a specific level of creativity or imaginativeness. Instead, the sign must have the ability to distinguish the goods and services of the applicant from those other undertakings.

The CFI noted that a totally arbitrary sign can be distinctive and that the claimed mark is the initial letter of the word “immobilier” which, in several languages of the Community, designates the sector of activities of the services in question.


Ref no. 

Assembled Investments (Proprietary) Ltd v OHIM; Waterford Wedgwood plc

Application (and where applicable, earlier mark) 


- alcoholic beverages, namely wines produced in the Stellenbosch district, South Africa (33)

- glassware etc (21)


The CFI allowed the appeal by the Applicant (Assembled Investments) against the BoA’s decision that there was a likelihood of confusion under Article 8(1)(b) between the applicant’s figurative mark and the earlier word mark.

The CFI held that when assessing a likelihood of confusion under Article 8(1)(b) the goods or services designated must be identical or similar. In particular an assessment must be made of the nature of the goods, their intended purpose, their method of use and whether they are in competition with each other or are complementary.

The parties did not dispute that the goods at issue are distinct by nature and by their use, that they are neither in competition with one another nor substitutable and that they are not produced in the same areas. Although glassware may occasionally be sold together with wine, or given away with wine for promotional purposes, there was no evidence that this was of any significant commercial importance.

The CFI held that although there is some degree of complementarity between some glassware in that they are used for drinking wine, this is not sufficiently pronounced from a consumer perspective that the goods are similar within the terms of Article 8(1)(b).


Ref no. 

Europig SA v OHIM
(Decision not yet in English)

Application (and where applicable, earlier mark) 

 - Meat, fish, poultry and game; etc (29) 
 - meat pastries and pastries (30)


The CFI upheld the decision of the BoA that the word mark EUROPIG should not be registered on the basis that it was descriptive of the goods covered by the application (Article 7(1)(c)) and that it lacked distinctive character (Article 7(1)(b)).

The CFI held that the relevant public was English speaking end-consumers (including professionals).

For marks consisting of a neologism or a word produced by a combination of elements there must be a perceptible difference in meaning between the neologism or the word and the mere sum of its parts to avoid falling foul of Article 7(1)(c).

The CFI found that the mark consisted entirely of elements (“Euro” and “Pig”) which indicated characteristics of the relevant goods: pigs of European origin. The CFI further held that the mark did not create an impression that was different from that derived from the combination of the word elements of its constituent parts and as a result, there was a direct relationship between the mark EUROPIG and the relevant goods.


Ref no. 

Maclean-Fogg Co v OHIM

Application (and where applicable, earlier mark) 

- bolts, bolts of metal, nuts, nuts of metal (6)


The CFI upheld the BoA’s ruling that the mark applied for was descriptive of the goods in question under Article 7(1)(c).

The CFI stated that each component element of the neologism LOKTHREAD (‘lok’, being phonetically identical and visually similar to ‘lock’, and ‘thread’) described characteristics of the products applied for.

There was no perceptible difference between the neologism LOKTHREAD and the mere combination of meanings lent by the two elements of which it is composed. The relevant public would consider the term to mean a thread that locks. Since bolts and nuts are among the components which make up locking mechanisms, this would also render the term descriptive.



Likelihood of confusion

Castellblanch SA v OHIM; Champagne Louis Roederer SA (ECJ (Sixth Chamber); C-131/06 P; 24.04.07)

The Spanish company, Castellblanch, SA (“the Applicant”), applied to register the figurative mark set out below as a CTM for “Spanish sparkling wines of the Cava variety” in class 33.

Cristal Castellblanch

The French company, Champagne Louis Roederer SA (“the Opponent”), opposed the application, relying on the earlier registration of the word mark CRISTAL for champagne and sparkling wines in several member states.

The Opposition Division upheld the opposition on the basis of a likelihood of confusion with the earlier mark and the BoA dismissed the appeal on the same grounds. The CFI upheld the BoA’s findings, holding that there had been genuine and effective use of the earlier mark and, given the identity of the goods and similarity of the marks, there was a likelihood of confusion on the part of the relevant public. The applicant appealed to the ECJ.

The appeal was based mainly on the following grounds:

1. The grounds of the CFI judgment were so vitiated by contradictory reasoning that it was tantamount to an error of law or defective statement of grounds.

The Applicant submitted that the CFI’s statement that consumers of wine often have a particular interest in the geographical origin of the product was contradictory to the CFI’s finding that the application being limited to goods of Spanish origin did not exclude the similarity of the goods in the context of the likelihood of confusion. The ECJ held that these two statements were not contradictory; even where geographical origin was a relevant factor for the goods in question, it was impossible to exclude all likelihood of confusion on the sole ground that they were produced in different places.

2. The CFI had erred when comparing the two marks to the extent that it firstly had not considered the nature of the use of the earlier mark when assessing its distinctive character (the Applicant submitted that the earlier mark CRISTAL had systematically been used in combination with other non-evocative and more distinctive elements and therefore did not have strong distinctive character), and secondly, had attached a greater importance to the evocative element CRISTAL than to the sign CASTELLBLANCH, to which the CFI had not attributed any meaning whatever.

The ECJ held that the CFI was not obliged to take into account the manner in which the earlier sign was used, since this was not relevant to the global assessment of the likelihood of confusion, and therefore rejected this part as unfounded. The second part was rejected as inadmissible as it related to the factual assessment undertaken by the CFI.

The appeal was dismissed. 

Interplay between descriptiveness and lack of distinctive character

The Sherwin-Williams Company v OHIM (CFI (Fifth Chamber); C-190/05; 12.06.07)

The Sherwin-Williams Company filed an application to register the word mark TWIST & POUR for containers of liquid paint in class 21. The CFI dismissed the appeal, upholding the BoA’s ruling that the mark was devoid of distinctive character under Article 7(1)(b).

The CFI upheld the decision of the BoA that the public, being the average, reasonably well-informed, English-speaking consumer, taking the word mark as a whole, would not perceive it to be distinctive from its component parts being two English verbs linked by a commonplace, typographical sign.

Contrary to the applicant’s submission that the mark merely evoked or alluded to certain characteristics of the product, the CFI held that TWIST & POUR highlighted to the consumer the specific method of use and therefore directly described a characteristic of the product. Following Koninklijke KPN Nederland (Case C-363/99), the CFI held that a word mark that is descriptive under Article 7(1)(c) is necessarily devoid of distinctive character for the same goods/service under Article 7(1)(b) (although the court noted that a mark can be devoid of distinctive character for reasons other than it being descriptive).

Although the CFI agreed that the public interest objective that signs may be freely used by all was relevant to Article 7(1)(c) and not Article 7(1)(b), it held that the BoA applied the appropriate criterion against which Article 7(1)(b) should be interpreted in relation to the need not to unduly restrict the availability of elements which are devoid of distinctive character making up the sign in question to other operators offering sale goods or services of the same type as those in respect of which registration was sought.

In response to the applicant’s argument that marks built on the verb ‘twist’ had previously been registered, the CFI stated that trade mark registrability is assessed against judicial regulation and not against previous practice of the BoA.

Descriptiveness – combinations of descriptive words

Hans-Peter Wilfer v OHIM (A.G. Sharpston for the ECJ; C-301/05; 7.06.07)

The case related to the registration of the word ROCKBASS as a CTM in relation to musical instruments (in particular, guitars) and related accessories, sound equipment and containers in classes 9, 15 and 18.

OHIM had refused the registration under Article 7(1)(b) and (c) and the BoA, and subsequently the CFI, dismissed Mr Wilfer’s appeal. Mr Wilfer appealed to the ECJ.

The AG recommended that the ECJ dismiss the appeal.

The AG rejected Mr Wilfer’s submission that the CFI had taken insufficient account of the varying meanings and grammatical permutations of the mark ROCKBASS (including the elements “rock” and “bass”) and noted that a registration must be refused if at least one of its possible meanings or grammatical permutations of the mark designates a characteristic of the goods or services concerned. Although “rockbass” had many potential meanings (including the fish, “rock bass”), at least one of its constructions was descriptive of the products.

Mr Wilfer further submitted that Article 7(1)(c) had been infringed. This part of the appeal was split into several submissions, all of which were rejected by the AG:

1. The CFI’s analysis of descriptiveness was in the wrong order.

Mr Wilfer submitted that rather than considering first the meanings of the word which could designate the characteristics of the goods, the CFI should first have considered the meaning of the word objectively (including all meanings of ROCKBASS) and only linked the word to the products in question at a second stage. The AG considered that the CFI had adopted the correct approach. The analysis was a necessary part of applying the rule that an application must be refused if it is descriptive of the products concerned.

2. The CFI had incorrectly analysed the word by considering the component parts of the mark separately rather than the general/global impression created by the mark.

The AG considered that the CFI was correct in its analysis. As a general rule, marks consisting of a neologism composed of elements, each of which descriptive of characteristics of the goods or services in respect of which registration is sought, are themselves descriptive. The AG found that the sign ROCKBASS did not diverge from the English word components and therefore did not create an impression sufficiently far removed from that produced by the combination of meanings of its elements.

3. The possibility to play “rockbass” music with one of the intended goods did not necessarily mean that it was an essential characteristic of those goods.

The AG disagreed and stated that one of the intended purposes of one of the products (bass guitar) was to play rock music. Accordingly, just because a person may buy a bass guitar for the purposes of playing a genre of music other than rock, this does not detract from the fact that “rockbass” was descriptive of one of the intended purposes.

Mr Wilfer finally submitted that the goods in class 9 were not solely or directly linked to the use of electric guitars, and therefore that “rockbass” could not be descriptive of those products. Again, the AG disagreed stating that the fact that the products in question could be used for other purposes not connected with bass guitars did not detract from the word’s descriptiveness.

Oppositions based on appellations of origin

Budějovický Budvar v OHIM (CFI (Fifth Chamber, extended composition); Joined Cases T 57/04 and T 71/04; T 53/04 to T 56/04, T 58/04 and T 59/04; and T 60/04 to T 64/04; 12.06.07)

A number of appeals by Budejovicky Budvar (Budvar) against the registration of CTMs incorporating the words Bud and Budweiser have been rejected by the CFI.

Anheuser-Busch, Inc (AB) sought to register the words BUD and BUDWEISER in relation to classes 9, 14, 16, 21, 25, 29 and 30 and in relation to BUDWEISER only, classes 35, 38, 41 and 42. In addition to these applications, registration of the following figurative trade mark was sought in relation to classes 16, 21, 25, 30.

Budweiser label

 AB withdrew its application for class 32 (beer, ale, porter, malted alcoholic and non-alcoholic beverages).

Budvar opposed these applications on the basis of appellations of origin for beer it had registered with WIPO under the Lisbon Agreement for the Protection of Origin for BUDWEISER BIER, BUDWEISER BIER – BUDVAR and BUDWIESER BUDVAR. Budwar was established in České Budějovice, a town in the Czech Republic, also known as Budwies.

The CFI rejected Budvar’s first submission (namely that the French law in question, Article L. 641 2 of the Rural Code, was not applicable in proceedings concerning the registration of a CTM as it contained a prohibition of the use of a geographical name which constitutes an appellation of origin, rather a prohibition against registering a trade mark) as unfounded. In particular, the CFI held that Article 8(4) of the CTM Regulation provides that, pursuant to the applicable national law, the sign in question must confer on its proprietor the right to prohibit the ‘use’ of a subsequent trade mark; it does not require the sign in question to confer on its proprietor the right to prohibit the ‘registration of a trade mark’.

Budvar further submitted that the conditions laid down for demonstrating a likelihood of misappropriation or weakening of reputation in relation to dissimilar goods were more restrictive in the Rural Code than the Lisbon Agreement. Budvar considered that under the Lisbon Agreement protection was automatically granted irrespective of the products covered by the subsequent mark, without it being necessary to prove the existence of any reputation or the misappropriation or weakening of that reputation.

The CFI dismissed this submission and held that protection granted by the Lisbon Agreement applied to products which were identical, or very similar, to the relevant appellation of origin. The court noted, amongst other things, that:

Under the Lisbon Agreement, an international application for registration of origin must specify “the product to which the appellation applies”.
Article 2 of the Lisbon Agreement provides that the product to which the appellation of origin attaches must draw its quality and characteristics from the geographical environment and Article 3 covers cases where the registered appellation of origin is usurped or imitated. In that framework, the protection of an appellation of origin against usurpation or imitation will apply when the products in question are identical or similar, with the intention of ensuring that the quality or the characteristics of the product concerned are not appropriated or reproduced by a party not entitled to do so.

The French Rural Code actually afforded greater protection than the Lisbon Agreement to the extent that dissimilar goods could be protected if the appellations of origin had a reputation in France. However, it was up to Budvar to furnish proof of this reputation and Budwar could not simply rely on a presumption of reputation as a result of registration under the Lisbon Agreement.

Non-use of Trade Marks

Armin Häupl v Lidl Shifting & Co. KG (ECJ (Third Chamber); C-246/05; 14.06.07)

Lidl Shifting & Co. KG (Lidl) owned a word and figurative mark “Le chef DE CUISINE”, registered in Germany in July 1993. The mark was also protected in Austria from 12 October 1993 under its international trade mark registration, which was published on 2 December 1993.

On 5 November 1998 Lidl opened its first supermarket in Austria, in which it sold ready-made meals bearing the mark “Le Chef DE CUISINE”. On 13 October 1998 Mr Häupl sought to cancel the mark in Austria on the ground of non-use. The Austrian Patent Office allowed the application and declared the mark was no longer protected in Austria as from 12 October 1998.

Lidl appealed, and the Austrian Supreme Patent and Trade Mark Adjudication Tribunal stayed the proceedings and referred two questions to the ECJ.

By its first question the Austrian Tribunal asked whether Article 10(1) should be interpreted as meaning that the “date of the completion of the registration procedure” means the start of the period of protection.

The ECJ noted that Article 10 did not determine in an unambiguous manner the beginning of the period of use and therefore the starting point of the relevant five year period. Instead, its wording defined the starting point in relation to the registration procedure, an area not harmonised by the Directive. Consequently, Member States were free to organise their registration procedure and to decide when that procedure was to be regarded as having been completed. The ECJ therefore concluded that the “date of the completion of the registration procedure” under Article 10(1) must be determined in each Member State in accordance with the procedural rules in force in that State.

The Austrian Tribunal also asked whether Article 12(1) should be interpreted as meaning that there are proper reasons for non-use of a mark if the implementation of the corporate strategy being pursued by the trade mark owner is delayed for reasons outside the control of the undertaking, or whether the trade mark owner obliged to change his corporate strategy in order to be able to use the mark in good time.

The ECJ made the following points in response to the second question:

A uniform interpretation had to be given to the concept of “proper reasons for non-use” in Article 12(1). The objective of proper reasons was to justify situations in which there was no genuine use of the trade mark, in order to avoid revocation.
Article 12 did not given any indication of the nature and characteristics of “proper reasons”. However, under the TRIPS Agreement circumstances arising independently of the will of the trade mark owner, which constituted an obstacle to the use of the mark, were to be recognised as valid reasons for non-use. The definition in the TRIPS Agreement was a factor in the interpretation of the concept under the Directive.

In light of the eighth recital, it would be contrary to the scheme of Article 12(1) to confer too broad a scope on the concept of proper reasons for non-use.
The obstacles concerned must have a direct relationship with the mark. However, the obstacles did not have to make the use of the trade mark impossible; a sufficiently direct relationship could also make its use unreasonable. As an example, the ECJ commented that the proprietor of a trade mark could not reasonably be required to sell goods in the sales outlets of its competitors.
In conclusion, the ECJ held that Article 12(1) must be interpreted as meaning that obstacles having a direct relationship with a trade mark, which make its use impossible or unreasonable and which are independent of the will of the proprietor, constitute “proper reasons for non-use” of the mark. It was for the national court or tribunal to assess the facts in the main proceedings in the light of that guidance.

Requirement to affix collecting society mark to goods

Pubblico Ministero v KJW Schwibbert (A.G. Trstenjak for the ECJ; C-20/05; 28.06.07) (Decision not yet in English)

Italian law required that CDs, CD ROMs and DVDs containing copyrighted materials are affixed with a mark of the Italian collecting society, (Società Italiana Degli Autori Ed Editori, “SIAE”) if they are to be used in trade, as the mark serves as an indication to consumers that the materials have been legally copied. Failure to do so is a criminal offence.

Mr Schwibbert was convicted of possessing CDs which had not been affixed with the SIAE mark (although they had been legally copied). The CDs in question had been manufactured in Germany and exported to Italy for sale. Mr Schwibbert submitted that the Italian law had introduced a “technical regulation” in violation of EC rules, i.e. without prior communication to the Commission of its legislative proposal. Article 8 of Council Directive 98/34 requires Member States to immediately communicate to the Commission any draft technical regulation.

The Italian court asked the ECJ whether the requirement to affix the sign SIAE was compatible with Council Directive 98/34. The AG considered that such a provision did amount to a “technical regulation” which must immediately be communicated to the Commission. This requirement to communicate to the Commission applied equally every time changes made to the draft have the effect of extending its scope. The AG further held that the national court was free to refrain from enforcing a provision in relation to which the necessary communication had not been made.

Reporter’s note: We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report: Ben Blackaby, Matilda Ekman, Rachel Fetches, James Leeson, Emilia Linde, Alice Sculthorpe and Luisa Zukowski.

ECJ and CFI decisions can be found at and the reported cases marked * can be found at