Reported Trade Mark Cases March 2007

01 March 2007

Katharine Stephens and Zoe Fuller

Decisions of the CFI/ECJ


















Ref no. 

CFI
Case T-501/04
Bodegas Franco-Españolas S.A. v OHIM;  Companhia Geral da Agricultura das Vinhas do Alto Douro, SA    
(15.2.07)
(Decision not yet in English)

Application (and where applicable, earlier mark) 

ROYAL
Alcoholic beverages except beer; amended to Rioja wines (33)

ROYAL FEITORIA
Port wines (33)

Comment 

The BoA’s decision was annulled under Article 8(1)(b). Rioja wine and port wine were not identical: they differed in geographical origin, nature, intended purpose and use (e.g. different alcohol content; Rioja is drunk during meals - port either before or after). The products were not substitutable, and had only a weak similarity.

The marks were not similar. Though both marks shared the word ‘royal’, this term was not very distinctive and could not be considered the dominant element when comparing the marks. The addition of the word ‘feitoria’ (meaning ‘commercial establishment’ in Portuguese) was enough to distinguish the two marks visually, phonetically and conceptually.

The CFI held that the sole shared element of the two marks would not create a likelihood of confusion, nor would the consumer perceive the marks as belonging to the same family or range.

   


















Ref no. 

CFI
Case T-204/04
Indorata-Servicios e Gestao Lda v OHIM
(15.2.07)
(Decision not yet in English)

Application (and where applicable, earlier mark) 

HAIRTRANSFER
Beauty products such aselectric and non-electric depilation appliances; artificial and real hair; provision of training; hygienic and beauty care – hair care and treatment (8, 22, 41 and 44)

Comment 

The BoA’s decision was upheld. A mark made up of several elements, each of which described characteristics of the products/services applied for, would itself necessarily be descriptive unless the mark created a sufficiently separate impression from its elements.

The CFI held that the combination ‘hairtransfer’ was not unusual in structure; rather, it conformed to the lexical rules of English (as in ‘haircut’ and ‘hairbrush’). It did not create a sufficiently separate impression from that produced by the simple juxtaposition of the words so as to modify its meaning or connotation. There was a sufficiently direct and concrete link between the mark itself and the products/services applied for (since they all implied transfer of hair). The mark was therefore descriptive within Article 7(1)(c).

   


















Ref no. 

CFI
Case T‑353/04
Ontex N.V. v OHIM; Curon Medical Inc
(13.02.07)

Application (and where applicable, earlier mark) 

CURON
Various surgical and veterinary apparatus (10)

EURON
Surgical, medical apparatus and instruments (10)

Comment 

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

The relevant public was composed of both average and specialist consumers, although the majority was the specialist public.

Visually, the two marks differed. Any similarity created by the last four letters of each mark was outweighed by the different first letters. This was accentuated by the fact that consumers are familiar with sequence of letters “e_u_r_o”.

Although neither mark had a meaning in any of the official languages of the EU, the CFI held that both marks were close to English words and therefore had an “evocative force” (the earlier mark was similar to the word “euro” and “Europe”; the mark applied for was similar to the word “cure” and other words designating curative treatments). The phonetic similarity was not sufficient to outweigh the differences conceptually and visually between the two marks.

   


















Ref no. 

CFI
Case T‑256/04
Mundipharma AG v OHIM; Altana Pharma AG
(13.02.07)

Application (and where applicable, earlier mark) 

RESPICUR
therapeutic preparations for respiratory illnesses (5)

RESPICORT
pharmaceutical and sanitary preparations; plasters (5)

Comment 

The CFI annulled the BoA’s decision and found a likelihood of confusion between the mark applied for and the earlier mark under Article 8(1)(b).

The CFI held that the goods covered by both marks were identical. However, the CFI noted that although the category of goods for which the earlier mark was registered was sufficiently broad to be able to identify independent sub-categories, the criteria chosen by the BoA (the dosage form, active ingredient and obligation to obtain a doctor’s prescription) were inappropriate for defining a sub-category.

The marks were similar visually and phonetically.

The relevant public was composed of two groups; German healthcare professionals and German patients suffering from respiratory illnesses. Although, conceptually, the two groups would perceive the marks differently (healthcare professionals would understand earlier mark as “cure for respiratory problems” and the later mark as “corticoids intended for respiratory illnesses”; German patients would not be able to discern the conceptual references “cur” and “cort”) any conceptual differences would not be sufficient to counteract the visual and phonetic similarities.

Furthermore, the weak distinctive character of the earlier mark did not preclude a likelihood of confusion between the two marks.

   


















Ref no. 

CFI
T-230/05
Golf USA, Inc v OHIM
(06.03.07)

Application (and where applicable, earlier mark) 

GOLF USA
Various sports, clothing, golf articles and commercial retailing of golf equipment (25, 28 and 35)

Comment 

The CFI upheld the BoA’s decision and dismissed the action.

The descriptive character of the term ‘USA’ was not contested. There was a direct link between the component ‘golf’ and the goods and services at issue and therefore the CFI held that the term “golf” was descriptive under Article 7(1)(c).

Although some of the goods applied for did not have a specific use, they may also be used for playing golf and the CFI therefore held that mark was devoid of distinctive character under Article 7(1)(b).

The legality of the BoA decisions must be assessed solely on the basis of the Regulation, and not on the basis of a previous decision-making practice. If, in a previous decision involving a comparable mark, the BoA had erred in law in accepting the registrability of a sign, such a decision cannot be relied upon to support an annulment of a latter, contrary decision.

Although registrations already made in Member States are a factor which may be taken into account for the purposes of registering a CTM, such registrations cannot be binding on OHIM.

The evidence submitted by Golf USA, Inc failed to demonstrate that the mark had acquired distinctive character under Article 7(3).

   


















Ref no. 

AG Kokott for the ECJ
Case C-334/05
Shaker di L. Laudato  v OHIM
(08.03.07)
(Decision not yet in English)

Application (and where applicable, earlier mark) 

Limoncello logo

- Various food and drink goods (including alcoholic beverages)
(29, 32 and 33)

LIMONCHELO
- Alcoholic beverages (except beers) (33)

Comment 

The AG disagreed with the CFI’s finding that the dominant feature of the earlier mark was the figurative representation of a round dish decorated with lemons. The AG considered that the applicant’s mark did not contain any feature which was capable of being identified as a dominant feature in comparison to which all other features of the mark were negligible. 

The AG considered that the conflicting marks should have been submitted to a global appreciation of the likelihood of confusion under Article 8(1)(b). The AG concluded that, by not doing so, the CFI had made an error in law and the judgment should be annulled. The AG recommended that the case be referred back to the CFI for ruling.

   

 

Goods not bearing CE Marks

Commission of the European Communities v Kingdom of Belgium (A.G. Mazák for the ECJ; C-254/05; 08.02.07)

This recent opinion of the Advocate General (AG) followed a complaint to the European Commission by a UK operator who had experienced difficulties in marketing a certain type of fire detector system in Belgium.

The goods in question were automatic fire detector systems with point detectors which were lawfully manufactured in the UK, but which did not have the CE marking. Goods bearing a CE mark carry a presumption that goods are in conformity with the ‘essential requirements’ laid down in terms of results to be attained or hazards to be dealt with in the annexes of the ‘New Approach’ directives. Goods bearing the CE mark are thereby able to move freely through the EC.

Belgian law required that all designs for automatic fire detection by point detection systems, which did not have the CE mark, must comply with, and conform to, its local ‘NBN S21-100’ standards, and further must be certified by BOSEC (Belgian Organisation for Security Organisation).

Following the established principles from ‘Cassis de Dijon’, the AG held that the Belgian standard was a measure capable of having equivalent effect to a quantitative restriction on imports. As such, the standard amounted to a restriction on the free movement of goods and Belgium was declared as failing to fulfil its obligations under Art 28 of the EC Treaty.

The AG further held that the Belgian approval process at BOSEC (including tests and checks already undergone in another Member State) failed to recognise the equivalence of other Member States regulations, and was therefore also to be regarded as a measure having an equivalent effect to a quantitative restriction on imports.

The Belgium Government submitted evidence that the standards and approval process could be justified on the grounds of public security and the protection of life (under Article 30 EC Treaty). The AG didn’t agree, stating that the measures had not been shown to be necessary to achieve those objectives (particularly as they duplicated controls in other Member States), nor were they proportionate (since strict compliance to the standards was required with no flexibility in lieu of previous tests).

Details to be included in decisions on absolute grounds

BVBA Management, Training en Consultancy v Benelux-Merkenbureau (ECJ (Second Chamber); C-239/05; 15.02.07)

BVBA Management, Training en Consultancy (MT&C) applied to register ‘The Kitchen Company’ as a trade mark with the Benelux Trade Mark Office (BMB) for goods in classes 11, 20 and 21 and services in classes 37 and 42.

The BMB refused the application under Article 3(1)(c) of the Directive. The BMB did not particularise its conclusions in respect of each of the goods and services, instead it stated that the sign lacked distinctive character in respect of protection sought as a whole. MT&C appealed and the appellant court made a reference to the ECJ.

The court asked firstly whether a trade mark authority is required to separately state the conclusions for each of the individual goods and services in a refusal for registration of a trade mark. The ECJ held that, although the conclusions must be stated for each of the goods and services, where the same ground for refusal is given for a category/group of goods or services, general reasoning for all of the goods or services covered may be used.

The ECJ then considered whether the Directive must be interpreted as precluding national legislation which prevents the court reviewing a decision of the authority from ruling on the distinctive character of the mark for each of the goods and services. The ECJ held that where neither the decision nor the application related to categories of goods or services or good or services considered separately, the Directive should not be interpreted this way. In the absence of Community legislation governing a particular aspect of a matter falling within the scope of Community law, it is for the Member State to lay down the particular procedural rules. Such rules should be neither less favourable that those governing similar domestic acts nor render it virtually impossible or excessively difficult to exercise right conferred by Community law. In this instance, the ECJ was satisfied that such a limitation was not contrary to the principle of effectiveness as a party may make a fresh application for registration of the mark following an unfavourable decision.
The ECJ further held that the Directive should not be interpreted as precluding national legislation which prevents a court reviewing the decision of an authority from taking account of facts and circumstances arising after the decision had been made. The national courts must rule on the lawfulness of a decision of the authority; such a decision could only be based on the facts and circumstances which it was aware of at the time.

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

ECJ and CFI decisions can be found at http://curia.eu.int/en/content/juris/index_form.htm and the reported cases marked * can be found at http://www.bailii.org/databases.html#ew.