Ref no. | Application (and where applicable, earlier mark) | Comment |
ECJ C-212/07 Indorata-Serviços e Gestão Lda v OHIM (13.02.08) (Order not yet in English) | HAIRTRANSFER - inter alia electrical and non-electrical epilators (8) - artificial and natural hair (22) - training (41) - hygienic and beauty care, in particular hair care (44) | The ECJ upheld the CFI’s decision to dismiss the Applicant’s appeal against the BoA’s refusal to register the sign. The CFI had found there was a sufficiently clear and direct connection between the sign applied for and the goods and services concerned for the sign to be refused registration under Article 7(1)(c). This was contested by the Applicant. However, the ECJ refused to rule on this point, being an issue involving findings of a factual nature. The Applicant submitted that the sign applied for should not be refused registration as it was not currently using the sign in relation to the goods and services for which the CFI had found that there was a sufficiently clear and direct connection. The ECJ held that this was irrelevant: it is sufficient for the purposes of Article 7(1)(c) that the sign could be used in a descriptive way. |
ECJ C-243/07 Carsten Brinkmann v OHIM; Terra Networks SA (15.02.08) (Order not yet in English) | TERRANUS - Insurance, financial, monetary and real estate affairs (36)
- Insurance, online financial affairs (36) | The CFI had upheld the opposition under Article 8(1)(b). Although the degree of similarity between the signs was not particularly high, the CFI had found that there was a risk of confusion due to (i) the fact that the services covered by the earlier mark and those covered by the sign applied for were identical and (ii) the verbal element of the earlier mark, TERRA, was wholly contained in TERRANUS. The ECJ dismissed Carsten Brinkmann’s appeal. Being issues of a factual nature, the ECJ refused to rule on the CFI’s findings in relation to the relevant public, the identity of the services covered by the signs at issue and the degree of similarity between the signs. Carsten Brinkmann submitted that there was no risk of confusion, relying on several OHIM decisions relating to marks containing the word “terra”. The ECJ rejected this argument on the basis that the registrability of a sign as a CTM must be assessed solely on the basis of the CTMR and not on the basis of previous decisions. |
ECJ C-108/07 Ferrero Deutschland GmbH v OHIM; Cornu SA Fontain (17.04.08) (Decision not yet in English) | FERRO - salted biscuits (30) FERRERO - Chocolate, including filled chocolate products; ready made cakes and wafers; sugar confectionery; spreads containing sugar; cocoa; praline; milk and/or fats (5, 29, 30, 32, 33) (German national registration) | The ECJ allowed Ferrero’s appeal against the decisions of the CFI and BoA, and held that there was a likelihood of confusion between the two marks under Article (8)(1)(b). The CFI had committed an error of law by only examining whether each individual piece of evidence submitted by Ferrero was sufficient by itself to support its contention of a high degree of distinctiveness. The Court should have looked at the bundle of evidence as a whole. The ECJ therefore annulled the CFI’s decision and proceeded to rule on the merits. The survey and market research report submitted by Ferrero, as well as the high turnover generated by products such as Raffaello and Giotto, supported the argument that the FERRERO mark was very well known in Germany at the relevant date such that it had a high level of distinctiveness. This, together with the similarity of the marks concerned, was enough to overcome the weak degree of similarity of the goods and resulted in a likelihood of confusion on the part of the public. |
CFI T-327/06 Altana Pharma AG v OHIM; Avensa AG (18.02.08) (Order not yet in English) | PNEUMO UPDATE - medicines and diagnostic preparations for medical purposes (5) PNEUMO - pharmaceutical products, in particular medicines for human purposes (5) (German national registration) | The CFI dismissed the appeal, upholding the BoA’s ruling that there was a likelihood of confusion between the two marks under Article 8(1)(b). There was no inconsistency in the BoA’s findings that, on the one hand, the earlier mark was faintly distinctive and so should get limited protection, and, on the other hand, the addition of the descriptive element UPDATE to the mark applied for did not exclude the risk of confusion. Visually and phonetically, the two marks were distinguished by the addition of the element UPDATE. However, conceptually, the BoA had not erred in finding that a large part of the relevant German public would understand the meaning of the term UPDATE so that the addition of this element would not distinguish the marks. Thus the marks were conceptually similar and this was a sufficient basis for the BoA’s decision. There was a risk that a large part of the relevant public would consider that the mark applied for was an updated version of the earlier mark. The BoA was thus correct in finding that there was a risk of confusion between the marks. |
CFI T-215/06 American Clothing Associates SA v OHIM (28.02.08) (Decision not yet in English) |
- Various goods and services (18, 25 & 40) | The CFI partially allowed the appeal to overturn the BoA’s refusal to register the mark. Article 6 ter of the Paris Convention (which is incorporated into Council Regulation 40/94/EEC at Article 7(1)(h)) prohibits the registration of trade marks comprising or containing, inter alia, state emblems. The CFI held that on a proper construction of Article 6 ter, the prohibition applied only in respect of applications for goods; service marks were excluded. Accordingly the BoA’s refusal in respect of class 40 was overturned. In respect of the goods classes, the mark should be refused. The addition of the letters RW to the maple leaf device did not stop Article 6 ter applying; that Article provides for refusal whether the protected emblem is used alone or as part of a compound mark. The small differences between the mark and the Canadian state emblem were not sufficient to distinguish the mark from the emblem from the “heraldic point of view” considered in Article 6 ter. |
CFI T-128/07 Suez SA v OHIM (12.03.08) (Decision not yet in English) | DELIVERING THE ESSENTIALS OF LIFE - chemical products; scientific equipment; paper and cardboard products; advertising services; financial services; construction; telecoms; transport; information provision; research and technical services (1, 9, 11, 16, 35, 36, 37, 38, 39, 40, 41, 42) | The CFI upheld the BoA’s refusal to register the mark on the basis that it was a promotional slogan lacking distinctive character under Article 7(1)(b). Due to the lack of reference to the commercial origin of the goods and services, the laudatory and imprecise nature of the mark, and the absence of capacity for it to educate the public to its use as a trade mark, the relevant English speaking consumer would take the sign to be a promotional slogan and would not recognise it as a mark indicating the commercial origin of the goods and services. Even if the relevant public was composed of professionals, the higher level of attention they pay is much less marked regarding promotional indications than elsewhere. The relevant public would perceive the mark to refer, in a laudatory and promotional manner, to the supply of goods and services essential to the lives of Suez’s consumers (rather than to the commercial origin). It did not matter that Suez’s competitors would not wish to use the mark, nor was it relevant that the mark had been registered in various Member States. |
CFI T-341/06 Compagnie générale de diététique SAS v OHIM (12.03.08) (Decision not yet in English) | GARUM - inter alia fish and canned fish (29) | The CFI overturned the BoA’s refusal to register the mark for fish and fish preserves as being devoid of distinctive character under Article 7(1)(b). The BoA had erred in its finding that the average consumer consisted of restaurateurs who would be familiar with the Latin term “garum” (a fish condiment used by the Romans). The CFI held that the relevant public consisted of the average consumer of everyday food products as well as the more specialised and professional restaurateur. The average consumer was not familiar with specialist Latin terms such as “garum” and the Larousse Gastronomique description of the origins of the term was addressed to a specialist and professional public. Furthermore, there was no evidence that the term was known and used in the European gastronomical sector. |
CFI T-332/04 Sebirán SL v OHIM; El Coto de Rioja, SA (12.03.08) (Decision not yet in English) |
- Various alcoholic and non alcoholic beverages (32, 33) - Transport; packaging and storage of goods (39) EL COTO - Various alcoholic and non alcoholic beverages (32, 33) COTO DE IMAZ - wines, spirits and liqueurs (33) | The CFI agreed with the BoA and held that there was a likelihood of confusion between the application and the earlier EL COTO mark under Article 8(1)(b) in relation to goods in classes 32 and 33. The CFI confirmed that the BoA was correct in concluding that the dominant elements of the marks in question were “Coto D’Arcis” in the application and “Coto” in the earlier mark. The BoA correctly held that the figurative element of the application was blurred and that the reference to a vineyard to be used in respect of wines had a very limited distinctive character. Consequently, the conflicting marks had a certain visual similarity. Phonetically the signs were held to be similar because both of them contain the word “Coto”. Conceptually, the signs were also similar as “Coto” is a Spanish term and the term “D’Arcis” lacks any meaning in Spanish. The CFI confirmed that the BoA had been correct in taking into account the notoriety enjoyed in Spain by the EL COTO mark when assessing any likelihood of confusion. The CFI concluded that the BoA had not erred when it dismissed the appeal under Article 8(5) due to a lack of evidence. |
CFI T-181/07 Eurocopter SAS v OHIM (02.04.08) (Decision not yet in English) | STEADYCONTROL - Electronic apparatus for minimising vibrations; in particular inside devices containing a rotor; accelerometers; strain gauges; force sensors; temperature sensors; side-slip sensors (9) - Helicopters and rotorcraft (12) - Communications by computer terminals (38) | The CFI dismissed the Applicant’s appeal and upheld the BoA’s refusal to register the sign under Articles 7(1)(b) and (c) save in respect of Class 38 services. The CFI found that the BoA had correctly assessed the descriptive character of the sign at issue. The CFI held that this was the case not only in relation to each component of the sign but also in relation to the sign as a whole. For these purposes, the CFI stressed that (i) a sign does not need to be exclusively descriptive; it is sufficient if it is exclusively composed of descriptive elements, and (ii) it is irrelevant whether the characteristics evoked by the sign are essential or auxiliary. The CFI also held that the fact that the sign applied for had no real technical meaning was not relevant. It is sufficient that the sign evokes a quality or characteristic which could be directly associated with the overall result obtained by the use of the goods concerned. |
CFI T-181/05 Citigroup, Inc and Citibank NA v OHIM; Citi, SL (16.04.2008) |
- Customs agencies, property valuers; real estate agents; evaluation of house contents (36) CITIBANK plus various CTM and national marks including the term “citi” - Real estate services; financial services (36) | The CFI annulled the BoA decision and held that the mark applied for was similar to the earlier CITIBANK mark and its use could take undue advantage of the reputation of the CITIBANK mark under Article 8(5). The parties agreed that the mark CITIBANK enjoyed a reputation. The CITI element was held to be the distinctive element of the CITIBANK mark. The two marks were sufficiently visually, aurally and conceptually similar for the public to be able to establish a link between them. By holding that the marks were not similar, the BoA had infringed Article 8(5). The CFI noted that Article 8(5) was designed to prevent instances of “free riding on the coat tails of a famous mark or attempting to trade on its reputation” and that the stronger the earlier mark’s distinctive character and reputation, the easier it was to establish detriment. The Court took the view that there was a high chance of free riding in this case and that, if the registration had been permitted, this could lead to Citi SL being perceived as associated with Citigroup Inc. |
CFI T-294/06 Nordmilch eG v OHIM (17.04.08) (Decision not yet in English) | VITALITY - Dairy products; tea/coffee based drinks; non-alcoholic drinks; dairy based alcoholic drinks; restaurant and catering services (29, 30, 32, 33 and 43) | The CFI upheld the decision of the BoA that the mark lacked sufficient distinctive character under Article 7(1)(b) in respect of all goods and services applied for, save for alcoholic drinks and restaurant and catering services. The CFI agreed that the average consumer would perceive the mark applied for, not as an indication of commercial origin, but as a reference to a characteristic of the product (its promise of vitality and positive influence on the energy of the consumer). This was supported by the results of internet searches which demonstrated wide use of the term in this context within the food/drinks sector. Although the VITALITE case (Sunrider v OHIM
T-24/00) held that the term VITALITE did not violate Article 7(1)(b) in respect of baby food and mineral waters, the case was not relevant as it did not properly analyse the distinctive character of the VITALITE mark either in general terms or regarding dairy products. |
CFI T-398/03 Dainicheiseika Colour & Chemicals Mfg Co Ltd v OHIM; Pelikan Vertriebsgesellschaft mbH & Co Ltd (17.04.08) |
- various goods, inter alia plastics; plastic substances semi-processed (1, 2, 17)
- various goods, inter alia chemicals used in industry; unprocessed plastics (1,2) | The CFI upheld the BoA’s decision to reject the application under Article 8(1)(b). The BoA rightly found the products to be similar: ‘Plastics; plastic substances, semi-processed’ and ‘unprocessed plastics’ are complementary and competing and might be bought by the same purchasers. Although there was a low degree of visual similarity between the marks, the marks were conceptually identical and phonetically identical or very similar. The visual differences were not sufficient to negate the likelihood of confusion, even when given greater weight due to the methods by which the goods were marketed. Although the relevant public (specialised manufacturers throughout the EU) would take care in selecting the products at issue, they might assume the products originated from the same/economically linked undertakings. |
CFI T-233/06 Casa Editorial El Tiempo SA v OHIM; Instituto Nacional de Metereologia. (22.04.08) (Decision not yet in English) | EL TIEMPO - Paper, cardboard and other stationery goods(16) - Advertising; business management; business administration; office functions (35) - Telecommunications (38) Education; providing of training; entertainment; sporting and cultural activities, including editorial services (41) TELETIEMPO - Paper, cardboard and other stationery goods, including material for instruction or teaching (16) - Telecommunications (38) (Spanish national registration) | The CFI agreed with the BoA and held that there was a likelihood of confusion under Article 8(1)(b) between the two marks. The CFI held that if Casa Editorial wanted to prove that the application and the earlier mark were used in the market place to designate different activities (a newspaper and a service offering meteorological information, respectively), it should have either indicated that in the specifications and/or requested that Instituto Nacional de Metereologia proved its use. The CFI held that the BoA had not erred in finding that the ‘material for instruction or teaching’ goods protected by the earlier mark complemented the ‘education, provision of training’ services of the application, since educational materials are necessary to perform the service of education. The CFI confirmed that the BoA had been correct in establishing that the dominant element of the signs at issue was TIEMPO. “Tele” is a mere prefix commonly used in the telecommunications sector. Therefore the Spanish public would perceive the sign TELETIEMPO as a mere juxtaposition of the noun “Tiempo” and the prefix “Tele”. The CFI also confirmed that the BoA was correct to hold that there was a conceptual similarity between the signs on the basis that the dominant element of both signs has a meteorological meaning. |
CFI T-131/06 Sonia Rykiel création et diffusion de modèles v OHIM; Cuadrado SA (30.04.08) |
- Leather and imitations of leather (18); - Clothing including headscarves, underwear, socks, stockings, footwear, headgear for men, women and children (25) 
- articles of clothing for women, men and children; footwear; headgear (25) | The BoA had upheld the opposition in relation to Class 25 goods under Articles 8(1)(a) and (b), finding that there was a likelihood of confusion between the signs and that the earlier mark had been put to genuine use within the meaning of Article 43. The CFI took the view that the use which had been made of the earlier mark could not be regarded as genuine and upheld Sonia Rykiel’s appeal. In particular, the CFI referred to the ECJ case law according to which even minimal use can be sufficient to be deemed genuine provided it is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark. In this case, the evidence submitted by Cuadrado was very limited showing minimal turnover and a very small quantity of goods sold under the mark over a relatively long period despite the goods in question being of everyday consumption sold at very reasonable prices. Accordingly, and in the absence of supporting documents or convincing explanations to demonstrate otherwise, the CFI found that use of the earlier mark could not be held to be genuine for the purposes of Article 43. |
