Reported Trade Mark Cases January 2008

21 February 2008

Katharine Stephens and Zoe Fuller

Ref no. CFI T-134/06
Xentral LLC v OHIM; Pages Jaunes SA (13.12.07)
Application (and where applicable, earlier mark) 

- printed matter, newspapers, periodicals, directories (16)
 Les pages jaunes logo

- printed matter, newspapers, periodicals, directories (16);
- other goods and services (9, 35, 38, 41, 42)
French national mark


Xentral LLC appealed a decision of the BoA rejecting the mark under Article 8(1)(b) on the basis that there was a likelihood of confusion with the figurative mark, LES PAGES JAUNES, owned by the intervener, Pages Jaunes SA. The appeal was dismissed by the CFI.

Xentral submitted that the CFI should take into account its earlier national right to the domain name of the mark. The CFI concluded that it was not for it to rule on a conflict between an earlier national trade mark or rights over earlier domain names, as such a conflict did not come within its jurisdiction.

The CFI agreed with the BoA that there was a likelihood of confusion between the earlier LES PAGES JAUNES trade mark and the mark applied for. The goods covered by the two marks were identical.   

The dominant component of both marks was “pages jaunes”; “les”, “.com” and the graphic element of the earlier mark were merely secondary. That finding could not be called into question by Xentral’s submission that the expression “pages jaunes” has no distinctive character. The weak distinctive character of an element of a complex mark does not necessarily imply that it cannot constitute a dominant element. The CFI therefore held that the marks were visually, aurally and conceptually similar.

The CFI concluded that there was a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, this is only one of a number of factors to be considered and could not be conclusive


Ref no. CFI
Miguel Cabrer Sánchez v OHIM; Industrias Cárnicas Valle, SA
(Decision not yet in English)
Application (and where applicable, earlier mark) 

charcutero artesano logo

- meat, fish, poultry and game etc (29)
- coffee, tea, cocoa, sugar etc (30)
el charcutero logo 

 - meat, ham, cooked meat, cold meet and canned meat (29)


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

The CFI agreed with the BoA that there were visual differences between the marks. The expression “el charcutero” (a type of butcher) was descriptive and was not the dominant element in either mark. The CFI considered all the constituent elements of the marks, including the differences in presentation, colour and font of the word elements of the marks and the visual impact of the addition of “artesano” to the mark applied for. The figurative elements of the marks were also found to differ and the CFI concluded that the arrangement of the mark applied for was particularly original and conspicuous in contrast to the general sobriety of the earlier mark.

Phonetically and conceptually, the marks were similar in that they included the common expression “el charcutero”. However, there were also differences due to the addition of the adjective “artesano” in the mark applied for.

The CFI concluded that the visual differences between the conflicting marks were more important than the weak phonetic and conceptual similarities of the marks. Accordingly, there was no risk of a likelihood of confusion by the average Spanish consumer.


Ref no. CFI
DeTeMedien Deutsche Telekom Medien GmbH  v OHIM
(Decision not yet in English)
Application (and where applicable, earlier mark) 

- Various telecommunication and data transmission goods and services
(9, 16, 35, 36, 38 and 42) 


The CFI dismissed the Applicant’s appeal against the BoA’s refusal to register the mark save in respect of very limited goods and services in classes 9, 16 and 35.

A minimum of distinctive character is sufficient for Article 7(1)(b) to be inapplicable.

The sign consisted of two elements: “suchen” and “.de”. In respect of “suchen”, this was a commonly understood German verb meaning to seek or to search/look for. As such it enabled the relevant public (average German-speaking consumers) to understand that it could search for something with the assistance of the relevant goods and services, or that it could search for those goods and services. Accordingly “suchen” was devoid of distinctive character in respect of those goods and services.

“.de” was generic and devoid of distinctive character; it was directly understood by the relevant public to refer to the German country code Top Level Domain and therefore to refer to a German website.

The combination of the two elements of the mark did not provide the mark with distinctive character. There was no perceptible difference between the mark applied for and the sum of its parts.

A sign will not be refused registration simply because its elements could be used to designate a domain name. However, a sign which fulfils non-trade mark functions will only be distinctive if it is also perceived as an indication of origin. The sign under appeal would not be perceived as such an indication. The average consumer, being only reasonably attentive, would not take the time to consider the various functions of the sign where the sign did not immediately indicate origin to him, as here.

The fact that a sign is not directly descriptive does not make that sign distinctive. There was no weight in the argument that the sign was necessarily distinctive of the Applicant simply because the corresponding domain name was registered to it.

Given the finding that the sign was descriptive in respect of most of the applied-for goods and services under Article 7(1)(b), there was no need to consider the appeal in respect of Article 7(1)(c).


Ref no. CFI
Portela & Companhia SA v OHIM; Juan Torrens Cuadrado et Josep Gilbert Sanz
(Decision not yet in English)
Application (and where applicable, earlier mark) 

bial logo

- Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; preparations for destroying vermin. (5)
Medical services, services related to pharmaceutical laboratories, medical and industrial research, research and development of new products; research in the field of medicine and laboratories. (42)

- Services related to chemical, clinical and veterinary research. (42) 


Gateway, Inc. v OHIM; Fujitsu Siemens Computer GmbH

The CFI upheld the BoA’s decision that there was a likelihood of confusion on the part of the relevant public (Article 8(1)(b)).

The contested decision was not vitiated by essential procedural requirements. The certificate of registration is only one way of proving the existence of an earlier mark; an extract from an official database and copy of publication in an official journal was also sufficient. Although the BoA’s costs decision was incorrect, this did not affect the substance of its decision on likelihood of confusion.

Portela’s submission based on a lack of similarity between the products and services concerned was inadmissible. Not having disputed the Opposition Division’s finding on this point before the BoA, Portela could not introduce the ground at this stage.

Portela had not provided any proof of use of its Spanish national registration for BIAL. Portela could not therefore rely on any alleged peaceful coexistence between that mark and Cuadrado/Sanz’s earlier mark in support of an absence of confusion.


Ref no. CFI
Gateway, Inc. v OHIM; Fujitsu Siemens Computer GmbH
Application (and where applicable, earlier mark) 

ACTIVY Media Gateway
- Various electronic apparatus (9)
- Gathering, storage and retrieval of data (35)
- Various technical consulting services (42)

Various earlier community and UK trade marks (word and figurative) containing the term ‘Gateway’
- IT related goods and services (9, 35, 36, 37, 38) 


The CFI dismissed the appeal, upholding the BoA’s ruling that there was no likelihood of confusion between the mark applied for and the earlier national and community marks (under Article 8(1)(b)).

The BoA was correct to find that the ‘relevant public’ in this instance were consumers within the Community that purchased computer goods/services.

Visually, the dominant element of the mark applied for was ‘ACTIVY’ by virtue of its position at the beginning of the mark and by its reproduction in capital letters. On a global assessment, there was no visual similarity between the marks in question.

The marks were also not phonetically similar.  Again, ‘ACTIVY’ was the dominant element of the mark applied for; ‘media’ and ‘gateway’, by virtue of their position in that mark, will not hold the consumer’s attention.

Conceptually, the element ‘media gateway’ of the mark applied for was highly descriptive of the products and services covered by the mark. In contrast, ‘ACTIVY’ is devoid of conceptual meaning and therefore constituted the dominant element. Therefore the BoA was correct to find no conceptual similarity between the marks.

The CFI rejected Gateway Inc’s submission that the mark applied for should not be registered under Article 8(5). As apparent from the forgoing arguments, the conflicting signs were neither identical nor similar.


Ref no. ECJ
PTV Planung Transport Verkehr AG v OHIM
(Decision not yet in English)
Application (and where applicable, earlier mark) 

- computer software (9)
- conducting training events for computer software (41)
- computer programming (42) 


The CFI had been right to uphold the BoA’s decision that the word mark application for computer software and computer programming services should be refused for being (i) non-distinctive (Article 7(1)(b)) and (ii) descriptive of the goods in question (Article 7(1)(c)).

The ECJ agreed with the CFI’s conclusion that the public interest which underlies Article 7(1)(b) is indissociable from the essential function of a trade mark (namely guaranteeing that the consumer or end-user can identify the origin of the product or service bearing the mark by allowing him, without risk of confusion, to distinguish the product or service from others which have another origin).

The CFI was correct in determining that the general public would find that the sign MAP&GUIDE was descriptive as it may serve to designate computer software and computer programming services, the function of which is to provide (city) maps and (travel) guides.



Les Éditions Albert René SARL v OHIM; Orange A/S (AG Trstenjak for the ECJ; C-16/06 P; 29.11.07)

Orange had applied to register the mark MOBILIX as a CTM for telecommunications related goods and services in classes 9, 16, 35, 37, 38 and 42.

Les Éditions Albert René SARL’s (“LEAR”), the owner of the CTM, OBELIX, registered for goods and services in classes 9, 16, 28, 35, 41 and 42, opposed the application, submitting that there was a likelihood of confusion between the two marks.

LEAR appealed the CFI’s decision to allow the registration of MOBILIX and submitted six grounds of appeal (all rejected by the AG) including, inter alia:

Article 8(1)(b): Similarity of the marks, goods and services

The AG rejected as unfounded LEAR’s submission that the CFI had erred in law by applying an incorrect legal criteria or no legal criteria but merely a line of argument containing contradictory assertions. The CFI had not made an error in law in its finding, based on detailed analysis, that the goods and services covered by the mark applied for were not similar to those designated by the existing mark. The AG concluded that the ECJ had no authority to challenge the CFI’s findings of fact and evidence.

Article 74: ‘OBELIX’ was well known and was of a highly-distinctive character

The AG considered that the CFI was entitled to reach the decision that ‘OBELIX’ was neither well-known nor distinctive. As there was no evidence of distortion in this case, LEAR could not appeal on this ground because it was not a point of law but of fact.

Referral of the case back to the BoA

The AG found that the CFI had been entitled to reject LEAR’s reformulation of the order seeking referral back to the BoA. LEAR was attempting to change the subject matter of the proceedings by submitting a new head of claim in the alternative and asking for directions to be issued to OHIM. The CFI was not entitled to issue directions to OHIM. Instead, OHIM should draw the appropriate inferences from the operative parts of the CFI judgment.

Figurative Marks

Kapman AB v OHIM (CFI (First Chamber); T-127/06; 05.12.07)
The Swedish company Kapman AB (“Kapman”) sought to register the figurative mark (reproduced below) in the colour blue corresponding to Pantone reference PMS 302U in class 8 for saw blades (for hand-operated tools).

saw blade blue
The registration was rejected under Article 7(1)(b) on the basis that the mark was a reproduction of a saw blade in the colour blue which, when applied to goods in class 8, did not represent an indication of commercial origin.  Furthermore, the use of the colour blue did not constitute a fanciful or imaginary element.

The BoA upheld the decision and Kapman appealed to the CFI.

Kapman firstly submitted that the geometric shape with the use of the colour blue made the mark inherently distinctive. The CFI rejected this; the shape of the mark copies the shape of the goods to which it applies and coloured saw blades are commonplace. Therefore use of the colour blue does not confer distinctiveness onto the mark.

Kapman further submitted that OHIM had infringed the rules on the burden of proof in that it is for OHIM to provide reasons for rejecting trade marks and not for the applicant to prove that the mark is distinctive. The CFI in dismissing this plea, held that the onus is on the applicant who is relying on the distinctive character of the mark to provide information and substantiate claims of distinctiveness, whether inherent or acquired through use.
Finally, Kapman submitted that it was entitled to believe that the mark would be registered due to OHIM’s previous practice of registering marks with a minimum degree of distinctiveness citing DaimlerChrysler v OHIM (T-128/01 [2003]). The CFI confirmed that the criteria in DaimlerChrysler that led the court to accept that the mark had a minimum degree of distinctiveness did not apply in the present case where the mark was a reproduction of a saw blade in the colour blue.
The CFI ordered that the action be dismissed as manifestly lacking any foundation in law and ordered Kapman to pay the costs.

Late filing of evidence in support of a CTM opposition

K & L Ruppert Stiftung & Co. Handels-KG v OHIM; Natália Cristina Lopes de Almeida Cunha and others (CFI (Second Chamber); T-86/05; 12.12.07)

The German company K & L Ruppert Stiftung & Co. Handels-KG (“Ruppert”) lodged an opposition against the registration by three Portuguese individuals of the figurative mark CORPO LIVRE.

Ruppert’s opposition was based on Article 8(1)(b), submitting a likelihood of confusion with two earlier marks: (i) the German work mark LIVRE in class 25; and (ii) the international word mark LIVRE with effect in Austria, France and Italy.

OHIM granted Ruppert an 8-week period expiring on 9 July 2002 in which to provide evidence of use of the earlier marks. On 9 July 2002 Ruppert’s representative submitted a fax at 16:56pm requesting an 8-week extension giving the reason that they had not yet received documents from the opposing party but would remind them to make the documents quickly available.

OHIM refused to grant the extension because the request did not provide any unforeseen or exceptional circumstances as the reason for the delay. Despite OHIM’s refusal, on 6 September Ruppert submitted documents as proof of use of the earlier marks. At the opposition proceedings, the Opposition Division did not consider the evidence submitted after the time-limit and rejected Ruppert’s opposition based on its failure to provide poof of use of the earlier marks.

The BoA upheld the Opposition Divisions decision and Ruppert appealed to the CFI making the following submissions:

i) Misapplication of Rule 71 in conjunction with Rule 22 of Regulation 2868/95.
The CFI found that Rule 71 does not provide an automatic extension of a time-limited period. It is for the party making the request who must provide OHIM with the circumstances that make an extension appropriate and in each case OHIM must remain impartial and consider the advantage such an extension may give one party over the other.

ii) Failure to apply Article 73 of Regulation 40/95 by failing to provide reasons why the request for an extension was refused.

The CFI stated that Ruppert could not criticise OHIM for failing to provide reasons why the extension was denied as none were given by Ruppert in its request. In addition, Ruppert accepted during the hearing that OHIM is under no obligation to take into account documents submitted after expiry of the time-period.

iii) Breach of Article 74(1) of Regulation 40/95 by failing to take into account evidence of use submitted after expiry of the time-limit and failure to apply Article 74(2) of Regulation 40/94 in light of the ECJ’s decision in OHIM v Kaul (C-29/05) in which it was found that OHIM enjoys a measure of discretion in its application of time-limits.

Pursuant to the judgment given in OHIM v Kaul, the CFI found that under Article 74(2) Regulation 40/94 OHIM has a measure of discretion as regards evidence submitted after an expiry of a time-limit, however, there is no unconditional obligation to exercise such discretion.

iv) Breach of Rule 71(2) Regulation 2868/95 by failing to refer the question of extension of the time-limit to the other party.

Rule 71(2) does not provide a single condition sufficient for the extension of a time-period, but adds another condition to those described in Rule 71(1) that must be satisfied.

The CFI found that OHIM correctly applied the legal conditions relating to requests for an extension of time-limits and the appeal was dismissed.


Infringement of Database Rights by Ex-Employees

Crowson Fabrics Ltd v Rider and Ors (Smith J; [2007] EWHC 2942 (Ch); 20.12.07)

On 20 December 2007, Mr Justice Peter Smith handed down his judgment in a case brought by Crowson seeking to restrain the Defendants from using confidential information and requiring them to deliver up copies of documents containing confidential information. The decision followed an expedited hearing on liability.

Crowson was a company engaged in fabric design, production and supply. The three Defendants were, respectively, two former employees of Crowson and the company which they set up in competition with Crowson. Crowson alleged that the ex-employee Defendants, while still in its employ, copied and retained various documents belonging to Crowson including customer contact details, sales figures and profit margins and suppliers' details.

Confidential information

Crowson submitted that the information copied by the Defendants was confidential. Smith J held that an ex-employee cannot be prevented from using material that was in the public domain provided that he found it from the public domain. Absent a restrictive covenant on the ex-employees, information does not become confidential merely because the parties give it that label. The Judge accepted the evidence of the two ex-employee Defendants that the information alleged to be confidential was either in the public domain, was easily discoverable by them (eg addresses and phone numbers) or was in their heads. If the information was in the public domain it is capable of being used even if it is derived from the Crowson’s documents. Accordingly, he found that the information could not be protected by confidentiality.

Citing Faccenda Chicken v Fowler & Sons [1987] 1 Ch 117, the Judge also found that it is impossible to prevent an ex-employee from using his own gathered skills and expertise earned over the period of his employment including information which is confidential (with the exception of information constituting trade secrets).

Legitimate use

The Judge held that the ex-employee Defendants had not made legitimate use of the information and were in breach of their duty of fidelity. The Defendant who had been a more senior employee was also found to be in breach of his fiduciary duty.

Database protection

Crowson submitted that the ex-employee Defendants had infringed its database rights under The Copyright and Rights in Database Regulations 1997 by a substantial extraction of information from its database into information held on the Defendant company's computer system. The Judge found that the documents satisfied the requirements in the Regulations that for there to be a right protected, the database must be arranged in a systematic or methodical way and be individually accessible by electronic or other means and that Crowson had made a substantial investment in the database.

The Judge rejected the Defendants' submission that there had been no copying of the database, pointing out that the actions admitted by the Defendants were a substantial extraction. The Defendants' submission that they had made minimal use of the extraction was not relevant to this issue. Accordingly the Judge found that Crowson had made out its claim on its database rights.


Reporter’s note:  We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report: Laura Acreman, Nick Aries, Jennifer Bryant, Taliah Davis, Emily Forsyth, Adrian Howes and Alpha Indraccolo.

ECJ and CFI decisions can be found at