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).
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.
DATABASE RIGHTS
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.
Katharine Stephens and Zoe Fuller
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 http://curia.eu.int/en/content/juris/index_form.htm
