Ref no.  


Grupo Sada v. OHIM

Application (and where applicable, earlier mark)  

(device mark) –
food products and publicity services (29, 31 and 35)


food products
(29) – Spanish registration


The opponent opposed the application under Art 8(1)(b) CTMR on the basis of its earlier Spanish registration in Class 29. The Opposition Division allowed the opposition in respect of Class 29 only. The applicant appealed and the BoA upheld the decision.

On appeal, the CFI dismissed the appeal on the basis that (a) the BoA had been correct in finding that the relevant public to consider was the general Spanish public; (b) that the goods were identical and (c) that while not ignoring the graphic element and the generic word GRUPO (generally understood to mean group of companies) the dominant visual and phonetic elements to compare were the words SADA and SADIA which are the elements that the average consumer will remember and which in the CFI’s opinion are confusingly similar.

On a final point regarding the value of the coexistence of the applicant’s three other Spanish registered marks all of which predated the opponent’s mark the CFI concluded that it was not to be wholly excluded that in certain cases the coexistence in the market of an applicant’s marks which predate the opponent’s mark may be taken into account. However, this would be subject to proving before the Office that such coexistence is based on the absence of the risk of confusion on the part of the relevant public and that the coexisting marks are identical. In this case, the applicant’s earlier marks were not identical to the opponent’s mark. Furthermore, the applicant failed to prove the absence of the risk of confusion.


Ref no.  


TeleTech Holdings, Inc. v. OHIM

Application (and where applicable, earlier mark)  

TELETECH GLOBAL VENTURES – telecommunications services (35; 38)


TELETECH INTERNATIONAL – engineering services for, inter alia, the management of call centers (35; 38) (France)

Comment  This case started as an application for part-cancellation of the CTM, TELETECH GLOBAL VENTURES on the basis of an earlier French national registration for TELETECH INTERNATIONAL. The Cancellation Division partially granted the application and that decision was upheld, in part, by the BoA. The proprietor of the CTM appealed to the CFI and sought to rely on the allegation that TELETECH GLOBAL VENTURES was a well-known mark (in the sense of Art. 6bis of the Paris Convention and Art. 16 of TRIPS) in the EU and in France since before the date of registration of the earlier French national trade mark. The CFI rejected that argument and upheld the BoA’s decision on the grounds that (a) the allegedly well-known character had no influence on the determination of the question of the likelihood of confusion; (b) it was not for OHIM to invalidate the earlier French national registration on the basis of the existence of an allegedly well-known mark which priority date predates the earlier French national registration.

Ref no.  


Ampafrance SA v. OHIM

Application (and where applicable, earlier mark)  

monBeBé –
various goods intended for babies, and in particular nappies (3, 5, 8, 10, 11, 12, 16, 18, 20, 21, 22, 24, 25, 28)


BEBE – paper and textile towels for cosmetic use (16, 24) (Germany and IR designating Italy, the Benelux and Austria) 

Comment  The CFI upheld the decision of the BoA which partially granted an application for opposition under Art. 8(1)(b) against the CTM application monBeBé. The CFI considered that the goods in question were similar in that they were sold in the same outlets and could complement each other when used for the toilette of a baby. The CFI also found that the signs were similar and held that, because BEBE had acquired distinctive character in Germany, there was risk of confusion between the marks in relation to these goods.

Ref no.  
Application (and where applicable, earlier mark)  Goods and services in classes 1 to 42

Goods and services in classes 1 to 42

 Services in classes 35, 36, 38 and 42

Services in classes 35, 36, 38 and 42

Comment  Under Art. 8(1)(b), the BoA annulled the decision of the Opposition Division and rejected the opposition. The CFI dismissed the appeal. The degree of similarity between the marks was not so great as to justify a finding that there was a risk of confusion. The phonetic similarity of the marks was counteracted by the visual and conceptual differences between them. This finding was supported by the fact that the relevant public is highly specialized in the services concerned and is therefore highly likely to pay a high degree of attention when choosing those services.

Ref no.  


SA Spa Monopole v. OHIM

Application (and where applicable, earlier mark)  

SPA-FINDERS – printed publications including catalogues, magazines, newsletters, travel agency services (16, 39)


SPA – various goods and services (3, 32) (Benelux), (3, 42) (Germany)


LES THERMES DE SPA – substances for laundry use, cleaning preparations, cosmetics (3) (Benelux)

Comment  Under Art. 8(5), the Opposition Decision rejected the opposition. The BoA and CFI upheld that decision and dismissed the appeal. The parties acknowledged the similarity of the marks and the proceedings therefore turned on the other requirements of Art. 8(5). It was necessary to determine whether the use without due cause of the mark SPA-FINDERS would take unfair advantage of, or be detrimental to, the distinctive character of the mark SPA registered in Benelux for goods in class 32 (since this was the only mark in which a reputation was established). The applicant argued that the public would infer an immediate link between the marks and that such a link would be a detriment to the distinctive character of the mark SPA. Existence of such a link was not sufficient to demonstrate a risk of detriment to the distinctiveness of the mark. Since the term “Spa” was frequently used to designate other places, the risk of any detriment was limited. There was no evidence establishing that the mark SPA-FINDERS would be detrimental to the repute of the mark SPA or that the mark SPA-FINDERS would enable its owner to take unfair advantage of the distinctive character or repute of the mark SPA.

Ref no.  


Creative Technology Limited, Singapore v. OHIM

Application (and where applicable, earlier mark)  

PC WORKS – apparatus for recording, transmitting and reproducing sound or images (9)


W WORK PRO (figurative) – electronic audio equipment, loudspeakers, sound recording apparatus, radio, television and video apparatus (9) (Spain)

Comment  Under Art. 8(1)(b), the Opposition Division found that there was a likelihood of confusion between the marks. This was upheld on appeal by the BoA. The applicant did not dispute the finding of the BoA that the goods covered by the marks were similar. The CFI held that the word “work” dominated the overall visual impression of the pre‑existing mark and that the word “works” was the dominant element of the mark for which registration was sought. There was a strong visual, phonetic and conceptual similarity between the marks and there was a real risk that the relevant public may form a mistaken impression that the goods or services in question come from the same commercial undertaking. There was a risk of confusion between the marks and the appeal was dismissed.

Ref no. 


Fabia Chimica Srl v. OHIM

Application (and where applicable, earlier mark)  

FABER (figurative) – chemicals used in industry and science, paints, varnishes, bleaching preparations and other substances for laundry use, cosmetics (1, 2, 3)


NABER – chemicals and adhesives used in industry (1) (Spain)


NABER (figurative) – chemicals used in industry and science, paints, varnishes, bleaching preparations and other substances for laundry use, cosmetics (1, 2, 3) (Spain)

Comment Under Art. 8(1)(b), the BoA partly upheld and partly annulled the decision of the Opposition Division that there was no visual, aural or conceptual similarity between the marks and therefore no likelihood of confusion. The BoA held that there was no similarity between the mark applied for and the earlier figurative marks but a likelihood of confusion did exist between the mark applied for and the earlier word mark. The CFI annulled the decision of the BoA in relation to the earlier word mark.  The earlier word mark was aimed at a relevant public which consisted of industrial consumers in Spain and as such they were likely to take greater care than the average consumer in the selection of the goods in question. The comparison to be made was between the word “naber” and a figurative mark including both the word “faber” and a graphic element. There was a visual similarity between the two words but the figurative element was capable of constituting a distinguishing feature sufficient to preclude a visual similarity between the marks in the eyes of the relevant public. The BoA was wrong to conclude that the signs were similar on the ground that the “aber” at the end was “clearly discernable” in it. There was a phonetic similarity but this was not sufficient to neutralize the distinction bought about by the first letter – the sounds “F” and “N” were clearly distinct.

Ref no.  


Kruger GmbH & Co. KG v. OHIM

Application (and where applicable, earlier mark)  

CALPICO – mineral and aerated waters and other non-alcoholic drinks, fruit drinks, fruit juices (29, 30 and 32)


CALYPSO – fruit powder and non-alcoholic fruit preparations for making non-alcoholic beverages (32) (Germany)

Comment  Under Art. 8(1)(b), the BoA upheld the decision of the Opposition Division and rejected the opposition. The CFI dismissed the appeal. The characteristics of the goods were partly identical and partly similar and were not in dispute. The overall visual impression of the two signs was clearly different since the series of letters “PIC” in the mark applied for could clearly be distinguished from the series of letters “YPS” in the earlier mark. The signs were not aurally or conceptually similar. Despite the fact that the goods designated were partly identical and partly similar, the differences between the marks made it possible to preclude any likelihood of confusion between those marks on the part of the relevant public.

Ref no.  


Atomic Austria GmbH v. OHIM

Application (and where applicable, earlier mark)  

ATOMIC BLITZ – games and playthings, gymnastic and sporting articles (28)


ATOMIC – five word marks for inter alia goods in class 28 (Austria)

Comment  The BoA upheld the decision of the Opposition Division rejecting the opposition in its entirety on the ground that the applicant had failed to produce, within the specified period, evidence of the renewal of the earlier marks, proving their current validity. A certificate confirming the validity of the earlier marks, drawn up by a Patent Agent, could not be accepted as evidence equivalent to an official renewal certificate. The CFI annulled the decision of the BoA and held that OHIM was obliged to consider all evidence submitted to it in order to determine whether an applicant had proved that the earlier mark was registered or filed and could not reject evidence out of hand on the basis of the form it took. Taking account of Austrian law on the protection of trade marks and the evidence submitted, it was possible to verify the date on which protection had ended and that four out of the five marks were valid at the time of the BoA’s decision.

Ref no.  

T-128/03 & T-380/02

Success-Marketing GmbH v. OHIM

Application (and where applicable, earlier mark)  

PAN & CO – goods and services in classes 11, 30, 35, 37 and 42


PAN SPEZIALITATEN (figurative) – goods in class 30 (CTM)

Comment  The Opposition Division refused the application with regard to goods in class 30. The applicant made an application for restitutio in integrum under Art. 78, an application for access to the file and for reimbursement of costs incurred. The BoA upheld the Opposition Division’s decision to reject the application for restitutio in integrum (26 September 2002) and to refuse registration for goods in class 30 (13 February 2003). A further decision of the BoA (13 March 2003) rectified the decision of 13 February 2003 taking the view that the action had to be deemed to have never been brought. On appeal to the CFI, it was claimed (a) that the CFI should declare that OHIM was liable to effect restitutio in integrum; and (b) that either the decision of 13 February or 13 March should be annulled. It was common ground before the CFI that the application for restitutio in integrum and the action for registration of the CTM were rejected on the ground that they had not been bought within the periods provided for. OHIM had established to the requisite legal standard that they had provided notification of the opposition, of the commencement of the three-month period for submission of any observations, of the decision refusing registration of the trade mark and notice stating that an appeal could be bought against that decision within a period of two months of the date of notification. The applicant had not made its applications within the relevant time periods and the application was dismissed in its entirety.


 Napies Heraclio Fournier, S.A. v. OHIM (CFI (Third Chamber); T-160/02, T-161/02 & T-162/02; 11.5.05)

Napies was the proprietor of CTMs registered in Class 16, for playing cards, in respect of three figurative signs.  These represented, respectively, a sword, a knight on a horse (intended to represent the knight of clubs) and a king (representing the king of spades). In 1999, France Cartes applied for those registrations to be declared invalid on the ground, firstly, that the registrations were caught by the absolute grounds for refusal laid down in Art. 7(1)(b) to (e)(iii) and, secondly, that Napies had acted in bad faith when it filed the applications. OHIM’s Board of Appeal agreed that the signs were devoid of distinctive character (Art. 7(1)(b)) and were descriptive (Art. 7(1)(c)), in that they would be seen by the average user as representing characteristics of Spanish playing cards. Napies therefore brought actions before the Court for annulment of the Board of Appeal’s decision.

The CFI upheld the Board of Appeal and dismissed the appeal.  It was common ground that these signs were playing cards in common usage in Spain, although Napies also claimed to use the trade marks at issue for other types of playing cards. Spanish packs of playing cards are composed of 40 or 48 cards from the ace to the seven or nine, followed by the jack, the knight and the king. The four suits are coins, cups, clubs and swords. It was therefore common ground that two of the three marks in question represented two of the Spanish cards: the knight of clubs and the king of swords. The sword did not correspond, as such, to the representation of any card but consisted of an element, in the form of a symbol, which was used to represent the swords suit.

The target public included all potential consumers, in particular Spanish consumers, of playing cards.  The designs of the knight of clubs and the king of swords directly conjured up playing cards for the target public, even if a section of that public was not necessarily acquainted with Spanish playing cards. Since the king and the knight were frequently used symbols on playing cards, anyone who had played with any type of cards identified in those drawings the representation of a playing card.  The potential Spanish consumer would perceive each of the signs as alluding to a specific card. It followed that for the relevant public, there was a direct and specific association between the marks in question and playing cards. Furthermore, any undertaking manufacturing and marketing Spanish playing cards of necessity used the symbol of the sword to identify cards of that suit.   It was therefore appropriate to conclude that the marks in question were descriptive of the characteristics of the goods designated.

The existence of a ground of non-registrability in a part of the Community was enough to justify refusal of registration.

PepsiCo Inc v. OHIM (CFI (Fifth Chamber); T-269/02; 21.4.05)

In April 1996, PepsiCo filed an application for a CTM RUFFLES in Classes 29 and 30.  Intersnack opposed, claiming a likelihood of confusion with its earlier national trade mark RIFFELS.  The opposition was upheld.  OHIM’s First Board of Appeal dismissed PepsiCo’s appeal and PepsiCo challenged that decision before the Court of First Instance claiming that (i) there had been an infringement of its rights of defence; (ii) there had been a breach of the principle of observance of the parameters of the proceedings; and (iii) relying on the existence of its German mark RUFFLES, which preceded Intersnack’s mark, that there had been a breach of the principle of coexistence and equivalence between Community marks and national marks.

The CFI upheld the OHIM decision.  PepsiCo had not at any stage relied on the use of its German mark to prove actual coexistence of that mark with Intersnack’s mark, although such coexistence could have been a relevant factor in the assessment. Nor had PepsiCo used its earlier German mark to obtain cancellation of Intersnack’s German mark. Consequently, the existence of that mark alone was not sufficient reason for rejecting the opposition. Contrary to PepsiCo’s assertions, there was nothing absurd or anomalous in OHIM’s allowing an opposition based on an earlier national mark where the validity of the opponent’s mark was not challenged before the competent national authorities. Indeed, PepsiCo had not demonstrated that Intersnack could not challenge PepsiCo’s German RUFFLES registration on the basis of its mark RIFFELS.  OHIM’s approach was fully in keeping with the division of competence between OHIM and those national authorities.

Finally, as in the TeleTech case (see table above), Art. 106 was not applicable by analogy.

PepsiCo’s pleas of infringement of the rights of the defence and breach of the principle of the observance of the parameters of the proceedings were based on criticism of OHIM both for not having afforded it the opportunity of proving the existence of its earlier German mark and for not having taken account of that mark, the existence of which was purportedly common ground in the dispute before OHIM. Neither of these pleas, even if well founded, would justify annulment of the contested decision.

Infringement – Customs Seizures

Class International BV v. Colgate-Palmolive Company (A.G. Jacobs for the ECJ; C-405/03; 26.5.05)

SmithKlineBeecham objected to the shipping to Rotterdam from South Africa and storage in a customs warehouse of a container load of toothpaste bearing figurative Aquafresh trade marks.  They arranged a customs seizure using the procedure available to prevent shipping through the EU of counterfeit or pirate goods.  It subsequently emerged that the goods were in fact genuine and Class International claimed the release of the goods and damages.  SmithklineBeecham cross-appealed that temporary storage in a customs warehouse of original trade marked goods pending transit or transit trade of those goods to countries outside the EEA should be regarded as use of a trade mark within the meaning of Article 5 of the Directive, so that the trade mark owner had the right to oppose the goods’ introduction. 

The Dutch court referred several questions to the ECJ essentially querying this point and the ancillary questions of whether it made any difference if:

  • the final destination of the goods concerned had or had not yet been specified for example by conclusion of a purchase agreement with a customer; or

  • the trader who owned the goods in transit was established in a Member State

  • if the goods, while in storage, were offered for sale.

Finally, the Dutch court asked which party had the burden of proving the relevant factual circumstances, such as the existence or otherwise of a purchase agreement with a customer.

The Advocate General analysed the question to be in effect whether storage of goods in transit or transit trade (that is trading in them when customs formalities have not yet been completed) amounted to use of a trade mark in accordance with Article 5.  Use had previously been defined by the Court as use taking place in the context of commercial activity with a view to economic advantage and not as a private matter.  Further, the exclusive rights conferred on a trade mark proprietor were to enable him to protect specific interests as a proprietor, that is to ensure that the trade mark could fulfil its function, in particular the essential function of guaranteeing to consumers the origin of the goods.  Looked at from this perspective, the Advocate General was unable to see how the essential function of a trade mark could be compromised solely by the fact that genuine goods bearing the mark were subject to the external transit procedure and not in free circulation within the Community.   The fact that the goods in this case were not manufactured in a Member State did not affect the analysis, which was analogous to that applied by the Court in the Rioglass decision (C-115/02), nor did the trade mark proprietor’s fears that goods supposedly subject to the external transit procedure might nonetheless find their way into circulation in the Community: that was a question of the Customs Code and its implementation. 

The factors raised in the Dutch court’s ancillary question as to the existence or otherwise of a defined final destination for the goods at the point where they entered the external transit procedure did not affect the analysis and so did not make any difference.  The situation would only be different if the final specified destination were within the EEA, in which case there would be a real risk that the goods would be released into free circulation in the Community. 

The fact that the trade concerned may be established within one of the Member States did not of itself affect the analysis.  However, the issue of offering for sale required more careful analysis.  Once again, the Advocate General considered the objectives of Article 5 and concluded that these objectives and the rights they gave rise to applied only in respect of goods which were in free circulation within the Community.  This applied only once the goods had completed import procedures.  However, if the outcome of the offer for sale was that the goods were to be released into free circulation in the Community, then the trade mark proprietor would be entitled to prevent the transaction.  It was not conclusive in this connection that the purchaser of the goods, as well as the trader, may be established in a Member State if the final destination of the goods was not determined between the transacting parties.  Conversely, wherever the transacting parties were established, if the final destination was within the EEA or the trader had serious reason to believe that the final destination was such, then the trade mark proprietor should be entitled to assert his trade mark rights to prevent that delivery.  The burden of proof of these circumstances was a matter purely of national procedural rules.

Confidential Information

Competition – Parallel Imports

Syntairismo Famakopoion Aitolias v. Glaxosmithkline  (ECJ; C-53/03; 31.05.05)

GlaxoSmithKline (“GSK”) refused to supply Greek wholesalers whom they believed to be using the products not to supply Greek pharmacies but for export and parallel import into other Member States of the EU.  GSK originally refused to supply certain wholesalers at all, but then moderated its position to restrict supply at any level above national demand.  The wholesalers alleged that this was an abuse by GSK of its dominant position in the market and complained to the Greek Competition Authority, which in turn referred various questions to the ECJ. 

In essence, the questions were whether refusal to supply by a dominant undertaking is always an abuse under Article 82 of the Treaty of Rome; and if such a refusal is not always an abuse then how does one determine when it is?

The case is of particular interest to pharmaceutical companies which have increasingly resorted to controlling supply as a means of limiting parallel imports since the success of Bayer in overturning the fines, imposed upon it by the Commission for breach of Article 81 of the Treaty of Rome, in respect of its unilateral limiting of supplies of its drug Adalat to Spanish wholesalers. 

Advocate General Jacobs gave his Opinion in the case in October 2004, and was relatively positive towards the position taken by GSK.  The decision of the ECJ has therefore been eagerly awaited – and it is particularly disappointing that the ECJ has elected not to answer the questions put to it on the technical grounds that the Greek Competition Authority is not either a Court or a Tribunal of a nature competent to invoke the right to refer.  These important questions therefore remain unanswered until some future court challenge to the decision of the Greek Competition Authority raises the dispute to a level the ECJ considers worthy of its views.

Douglas & Ors v. Hello! Ltd (Court of Appeal; [2005] EWCA Civ 595; 18/05/2005)

In this long-running dispute over the right to publish unauthorised photographs of Michael Douglas and Catherine Zeta-Jones at their wedding (an event to which OK! had ‘bought the exclusive rights’), OK! won the first round, securing an interim injunction against Hello!.  Hello! then succeeded in having the injunction lifted and went to print with its ‘spoiler’ photographs ([2001] QB 967).  Once the case reached full trial at first instance the High Court ordered Hello! to pay £1.03m in damages to OK! ([2003] 3 All ER 996).  The Court of Appeal has now reversed that decision. 

The case is important for its groundbreaking consideration of the nascent law of privacy in England and Wales.  For many years the English Courts have maintained that there is no general right to privacy.  The Master of the Rolls, Lord Phillips, giving judgment on behalf of the Court of Appeal was at pains to emphasise the speech of Lord Nicholls in Campbell v. MGN ([2004] 2 WLR 1232) in which he denied the development of “some high level principle of privacy”.  But the judgment of the Court of Appeal repeatedly speaks of a “right to privacy” and, though the right has yet to be exercised by a ‘non-celebrity’, it does seem to have wide enough application to cover the general populace.

The English Courts have been reluctant to introduce a privacy right, considering that it was for Parliament to legislate for such a change in the law, but have been forced to act in order to comply with the positive obligations on public authorities under the Human Rights Act 1998, which require the protection of individual privacy.  The Court of Appeal in Douglas accordingly found that the invasion of the Douglases’ privacy constituted an actionable breach of confidence.  

The Court of Appeal placed particular emphasis on the fact that the case concerned photographs, which have a special potential to constitute an invasion of privacy.  Unauthorised photographs might reveal information which could not have been derived from the authorised ones, and photographs are by their very nature more invasive:

“they enable the person viewing the photograph to act as a spectator, in some circumstances voyeur would be the more appropriate noun, of whatever it is the photograph depicts. … Insofar as a photograph does more than convey information and intrudes on privacy by enabling the viewer to focus on intimate personal detail, there will be a fresh intrusion of privacy when each additional viewer sees the photograph and even when one who has seen a previous publication of the photograph, is confronted by a fresh publication of it.”  

Beyond this, the scope of the ‘right to privacy’ is of rather uncertain scope.  The Court stated:

“What is the nature of ‘private information?’  It seems to us that it must include information that is personal to the person who possesses it and that he does not intend shall be imparted to the general public.

On this formulation, the new right will not only impact the activities of the paparazzi; gossip columnists should also view their activities with a little more circumspection. 

However, in financial terms the Court of Appeal’s verdict was substantially a victory for Hello!  At first instance Lindsay J. had found that the commercial confidentiality in the appearance of the wedding was in some way shared or transferred to OK! by means of their exclusive publishing contract with the Douglases, and hence OK! was entitled to damages.  The Court of Appeal disagreed, determining that the ‘exclusive rights’ that OK! had bought for £1m comprised only a licence to exploit the authorised photographs that the Douglases had taken at their wedding.  Given that the ‘privacy right’ is not a right in property, it could not have been licensed or assigned to a third party.  Accordingly, the licence granted to OK! did “not carry with it the right to sue a third party for a right vested in the Douglases”.

The Court of Appeal considered that the interim injunction originally granted against Hello! should have been upheld on the basis (among others) that damages (£14,600) would not have been an adequate remedy for the Douglases.  This may provide some protection against the spoiler for the future. 

The Court of Appeal also considered the application of the economic torts to the scenario and spent some hundred paragraphs of their judgment considering the level of intent required in what the Court termed “unlawful interference with economic and other interests”.  The Court determined that for Hello!’s conduct to be actionable as such a tort, it would have been necessary for Hello! to have intended to harm the business of OK! by running the ‘spoiler’ photographs in the sense that the actions would have had to have been targeted towards or aimed at them.  Lindsay J. at first instance had found as a fact that Hello!’s primary intention was that of damage limitation, having lost the chance of securing the exclusive.  Such an intention did not constitute sufficient intent, despite it being reasonably foreseeable that the publication of the unauthorised photographs would cause damage to OK!.  The difficulty with proving the necessary level of intent will cause the economic torts to remain of little use in this sphere.

Reporter’s note: I am grateful to my colleagues at Bird & Bird Lorna Brazell, Cristina Garrigues, Celine de Andria and Clare Wilson for helping me with the preparation of this month’s report. 

All CFI and ECJ decisions can be found at