Reported Trade Mark Cases June 2007

01 June 2007

Katharine Stephens and Zoe Fuller

Decisions of the CFI


















Ref no. 

CFI
T-137/05
Gruppo La Perla S.p.A. v OHIM; Worldgem Brands – Gestao e Investimentos lda
(16.05.07)
(Decision not yet in English)

Application (and where applicable, earlier mark) 

NIMEI LA PERLA MODERN CLASSIC
 - jewelry etc (14)

"la PERLA"

- swimming costumes etc (25)
(Italian trade mark)

Comment 

The CFI allowed the appeal, and held that the word mark NIMEI LA PERLA MODERN CLASSIC was similar to the earlier figurative mark and that its use could take unfair advantage of the repute of the mark contrary to Article 8(5).

Visually, the CFI held that the marks were similar as the later mark incorporated the full word part of the earlier mark (also confirmed to be the dominant element of the later mark). The CFI further established that any figurative elements of the earlier mark were of secondary importance.

Despite the fact that the later mark contained additional word elements, the CFI held that these differences were not enough to eliminate the phonetic similarities between the two marks.   

Conceptually, the CFI held that the marks were similar in the eyes of the Italian speaking consumer, as they both evoke the idea of “pearls” in Italian. The additional word elements in the later mark did not change the conceptual meaning of the mark.

The CFI also held that it was not necessary to establish a risk of confusion under Article 8(1)(b) as the proprietor of the earlier mark had demonstrated that there was a risk that the use of the later mark could take unfair advantage of the repute of the earlier mark.

   


















Ref no. 

CFI
Case T-158/05
Trek Bicycle Corp.  v OHIM; Audi AG
(16.05.07)
(Decision not yet in English)

Application (and where applicable, earlier mark) 

ALLTREK
- Various goods and services, including motor vehicles and their parts, in classes 9, 12 and 42 

TREK
- Various goods, including bicycles and their accessories in classes 6, 9, 11, 12 and 21
(German mark)

Comment 

The CFI upheld the BoA’s decision that there was no likelihood of confusion between the two marks under Article 8(1)(b).

The relevant public was composed of the average German consumer.  As the products covered by the marks were both long-lasting and reasonably expensive, the relevant public would pay more attention to them than during an ordinary purchase.

There was only a faint similarity between the products covered by the marks.  The nature, destination and use of motor vehicles and bicycles were very different; consumers bought these products for different reasons and purposes.  These products were neither complimentary nor in competition and the relevant public would not perceive that they were from a common origin.

Visually and phonetically, there was an average level of similarity between the two marks.  Although the CFI found that the majority of consumers would emphasise the first syllable of the applicant’s mark in both English and German, the element “all” was not dominant in comparison to the element “trek”.

Finally, the CFI held that the term “alltrek” does not have a clear conceptual meaning in German as the word “trek” does not exist in German.  There was no conceptual similarity.

   


















Ref no. 

CFI
Case T‑491/04
Merant GmbH  v OHIM; Focus Magazin Verlag GmbH
16.05.07)
(Decision not yet in English)

Application (and where applicable, earlier mark) 

FOCUS
- Various data carrying and stationery goods and services in classes 9, 16, 41 and 42

"Micro focus"

- Various goods and services in classes 9, 16, 41 and 42

Comment 

The CFI overturned the BoA’s decision and found that there was a risk of confusion between the two marks under Article 8(1)(b).

The CFI agreed with the BoA that the relevant public was the average German consumer.

The applicant’s mark and the dominant element of the earlier mark were found to be visually identical.  The marks were also found to be conceptually similar; the earlier mark could be considered to be a variation of FOCUS.

Phonetically, the CFI found a slight difference between the two marks, based on the earlier mark being figurative and composed of two elements.  However, this was not sufficient to counter the visual and conceptual similarities between the marks.

The CFI held that, given the identity of the products and the similarities between the marks, there was a risk that the public would believe that these products arose from the same company (or a related one).

   


















Ref no. 

CFI
Case T‑342/05
Henkel KGaA v OHIM; Serra Y Roca, SA (SERCA)
(23.05.07)
(Decision not yet in English)

Application (and where applicable, earlier mark) 

COR
- Scouring and abrasive preparations; soaps; perfumery, essential oils, dentifrices (3) 

"DOR"

-  Materials for rinsing and washing household and kitchen utensils and bottles, cleaning products for bottles, pots and barrels, window cleaning products, grease dissolvent, products for removing cleaning and removing grease from porcelain (3)

Comment 

The CFI held that there was no likelihood of confusion between the two marks under Article 8(1)(b).

The relevant public was found to be a German consumer generally informed and reasonably attentive.

Visually, the marks only differed by their first letters “c” and “d”.  As consumers normally attach more importance to the initial part of words and since the marks were only composed of three letters, the CFI found that the difference in the first letter of each mark was sufficient to visually distinguish the two marks.  The difference between the marks was reinforced by the amplified letter “d” shown in gothic characters in the graphics of the earlier mark which was held to constitute a distinctive element.
Phonetically, the marks had a weak degree of similarity.  The first letters of each of the marks would be pronounced differently in German; the consonant “c” is guttural, whereas “d” is more lingual.  Conceptually, neither sign had any meaning in German. 
As the products in question were products of everyday consumption, usually sold in self-service shops, the CFI found that the visual perception of the marks would normally intervene before any products were bought and would therefore carry more importance when considering the likelihood of confusion.

   

3-D Marks

The Procter & Gamble Company v OHIM (CFI (Fourth Chamber); T-241/05, T-262/05 to T-264/05, T-346/05, T347/05, T-29/06 to T-31/06; 23.05.07)

The Procter & Gamble Company (“Procter & Gamble”) applied to register nine 3-D trade marks consisting of square white tablets with coloured floral designs for “washing and bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; preparations for the washing, cleansing and care of dishes; soaps” goods in class 3.

Three of the applications are reproduced below:

Square tablets
   Square white tablet                      Square white tablet                    Square white tablet
     with a lilac six-                             with a green four-                       with a blue five-
   petalled floral design                   petalled floal design                  petalled floral design

Both OHIM and the BoA took the view that the marks were devoid of any distinctive character under Article 7(1)(b).

The CFI confirmed that the criteria for assessing the distinctive character of 3-D trade marks consisting of the appearance of the product itself are no different to those applicable to other categories of trade marks (for example, a word or figurative mark that is independent of the appearance of the products it denotes), although the perception of the average consumer is not necessarily the same in both situations. In the former case, it may prove harder to establish distinctiveness, since average consumers generally do not make assumptions about the origin of products on the basis of their shape/shape of packaging alone; only a mark which departs significantly from the norm of the sector is not devoid of distinctive character under Article 7(1)(b).

The CFI rejected Procter & Gamble’s submissions that the products would be  purchased by a limited section of the public, namely consumers who shopped on a daily basis. Instead, the distinctive character of the marks had to be assessed by reference to the reasonably well informed, observant and circumspect average consumer. The attention given by the average consumer to the shape and pattern of dishwasher and washing-machine tablets was not high. Furthermore, it was appropriate to consider that such tablets were usually sold in packaging bearing the product’s name and on which there were often word marks or other features which  might include a depiction of the product. Generally, the average consumer’s level of attention to the appearance of the products marketed in this way was not high. In such circumstances, it was for the applicant to show that consumers’ habits in the relevant market were different.

All four of Procter & Gamble’s submissions (namely (i) the variety of tablets on the market and number of applications for 3-D trade marks evidenced that the get-up of products was an indicator of trade origin; (ii) that the tablets could be attached to the packaging, sold in transparent packaging or in packaging the same shape as the products; (iii) the tablets could be depicted on the packaging; and (iv) that the BoA had erred by not taking into account the price of the product and the manner in which it was advertised) were rejected by the CFI. The finding of the BoA that the level of attention paid by the average consumer to the shape and design of the washing tablet was not high was upheld.

In determining the overall impression made by the combination of each mark’s shape, colours and design, the CFI held that:

  • the shape of the tablets (square or cubic with rounded edges) was an obvious one;

  • the presence of two distinct colours did not differ from the usual presentation of the products in question;

  • adding an inlay to the upper face of a washing preparation tablet was an obvious way of combining various active ingredients. This applied equally to colour inlays; and

  • the central four-, five- or six- petalled designs were simple and differed only slightly from basic geometric shapes which are most appropriate for adding an active ingredient.

Accordingly, the CFI dismissed Procter & Gamble’s appeals.

Detriment and unfair advantage

Antartica Srl v OHIM; The Nasdaq Stock Market Inc. (CFI (Fourth Chamber); T-47/06; 10.05.05)

The case concerned an application by Antartica to register the CTM set out below (the “Figurative Mark”) for, inter alia, sports clothing, sports equipment, sports watches and ski equipment in classes 9, 12, 14, 25 and 28.

"nasdaq"

The application was opposed by the Nasdaq Stock Market which owned the CTM, NASDAQ (the “Word Mark”) registered for various stock exchange price services and financial services in classes 9, 16, 35, 36, 38 and 42. OHIM rejected the opposition on the basis that the Word Mark while used in the EU, did not have a reputation under Article 8(5).  The BoA overturned this decision and Antartica appealed.

The CFI held that the Word Mark had a reputation in the EU in respect of financial services, and as such the use of the Figurative Mark would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the Word Mark.

To demonstrate reputation, the CFI held that the Word Mark must be known by a significant part of the relevant public in relation to the goods or services covered by that mark.  The CFI considered all the relevant facts of the case, in particular the market share held by the mark, the intensity, geographical extent and duration of its use, and the investment in its promotion.  In this instance the reputation of the Word Mark was determined by reference to professionals and consumers in the EU who consulted financial information either in the course of their profession or for their personal use. The CFI was persuaded by Nasdaq’s evidence demonstrating the significant use of its name on TV and in newspapers, and by the sums spent on such promotion.

The CFI held that the Word Mark was inherently very distinctive. Following Spa Monopole v OHIM (Case T-67/0), the stronger the earlier mark’s reputation, the easier it is to accept detriment caused to it. Since the Figurative Mark had been purposely chosen to be identical to the Word Mark, there was therefore a greater chance that detriment would result. Further, Nasdaq did not need to demonstrate actual and present harm to its mark; establishing the existence of future risk was enough to show unfair advantage in relation to the reputation of its mark.

Validity of opposition notices

The Black & Decker Corporation v OHIM; Atlas Copco AB (CFI (Second Chamber); T-239/05, T-240/05, T-245/05 to T-247/05, T-255/05, T-274/05 to T-280/05; 15.05.07)

Black & Decker filed applications for 13 CTMs in class 7 goods for manually operated portable electric power tools, excluding gardening tools.  The marks included:

  • yellow and black figurative marks representing electric power tools;

  • three-dimensional representations of two yellow and black electric power tools; and

  • a representation of the juxtaposition of the two colours yellow and black.

Atlas Copco filed notices of opposition stating that under Article 8(4) it had rights in earlier non-registered trade marks and other signs used in the course of trade.

The notices of opposition were received by fax (black and white) on the last day of the opposition period and by post (colour) 2-4 days later.

OHIM rejected the oppositions stating that the black and white faxes were insufficient to clearly identify the earlier marks and signs (OHIM did not consider the originals sent by post as they were received outside the opposition period). On appeal, the BoA disagreed and held that the faxed black and white copies together with the colour originals were perfectly clear and precise. In addition, some of the power tools were clearly identified in a table showing their reference number and specification.

Black & Decker objected to this decision on two grounds:

1. The BoA incorrectly based its decision on the colour originals sent by post, even though they were received outside the opposition period.

2. The BoA was wrong to conclude that the earlier marks and signs were clearly identified in the black and white faxes.

Dismissing the first ground of objection, the Court held that the colour originals could be considered even though they were received outside the opposition period. Under Rule 80(2) of Regulation 2868/95, OHIM is obliged to notify a party whose fax transmission is incomplete or illegible and allow him a month to resend the fax or resubmit the notice in a suitable form. It would therefore be contrary to the objective of Rule 80(2) to penalise a party who took the initiative to send the originals by post, without being informed by OHIM of an erroneous fax transmission, especially as the notices were received by post so soon after the initial fax.

The Court also dismissed the second ground of objection; it was sufficiently clear from the opposition notices that the oppositions were based on the overall external appearance of the electric power tools, the shapes and models of which were varied, and the colours of which were mainly a combination of yellow and black.

Likelihood of confusion with earlier national mark

TeleTech Holdings, Inc. v OHIM; Teletech International SA (ECJ (Sixth Chamber); C-312/05P; 27.03.07) - Decision not yet in English

The ECJ dismissed TeleTech Holdings, Inc’s (“TeleTech”) appeal against the CFI’s judgment that there was a likelihood of confusion between a registered CTM and earlier French registered trade marks.

Teletech International SA began invalidity proceedings in respect of TeleTech’s CTM for TELETECH GLOBAL VENTURES, by relying on four earlier French marks for TELETECH INTERNATIONAL.

The appeal was founded on the ground that the CFI had infringed Article 52 (in combination with Article 8(1)(b)) by misconstruing that provision in breach of the principle of equivalence and coexistence between Community marks and national marks. TeleTech further criticised the CFI’s interpretation of Article 74 and the appellant’s rights of defence. Finally, TeleTech argued that the CFI’s application of the test of the “relevant consumer” referred to in Article 8(1)(b) was erroneous.

The scope of Article 74(1)

In proceedings relating to relative grounds for refusal of registration, Article 74(1) provides that OHIM is to be limited in its examination as to the evidence, facts and arguments provided by the parties and to the relief requested. Whilst the wording of that provision could possibly be understood as referring only to opposition procedures, the relative grounds for invalidity set out in Article 52 refer explicitly to Article 8, which defines the relative grounds for refusal of registration. As with the relative grounds for refusal of registration in opposition proceedings, the relative grounds for invalidity are considered by OHIM only at the request of the proprietor of the earlier mark in issue.

As a result, the ECJ held that the CFI had not infringed Articles 74 and 52 by not taking into account evidence submitted to OHIM’s Cancellation Division in support of the alleged reputation of the French trade marks (evidence which OHIM had considered to be insufficient). The ECJ concurred with the CFI in its interpretation that invalidity proceedings involving relative grounds of invalidity are, in principle, governed by the same principles as opposition proceedings. It further agreed with the CFI that it is for the parties to ensure that they adduce the necessary matters of fact and evidence. Thus, it is clear that Article 74(1) also applies to cancellation proceedings involving relative grounds of invalidity according to Article 52.

Application of the test of the “relevant consumer”

TeleTech also argued that the CFI had erred in law when ignoring the possibility that the target public (composed of directors or managers of large or small undertakings in France who have a better than average knowledge of English) would be more attentive in differentiating between the relevant marks than a less specialised consumer. However, the ECJ held that the CFI had already established in its analysis of the visual, conceptual and phonetic similarities of the marks that the relevant public would not be able to differentiate between the relevant marks. It was therefore not relevant whether the relevant consumer would have been more attentive than the less specialised consumer. As a result, the ECJ dismissed this ground and held that the CFI had not erred in law when applying the test relating to the relevant consumer.

Reporter’s note: We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report: Taliah Davis, James Leeson, Emilia Linde and Tom Snaith.

ECJ and CFI decisions can be found at http://curia.eu.int/en/content/juris/index_form.htm