The Procter & Gamble Company v OHIM (CFI (Fourth Chamber); T-241/05, T-262/05 to T-264/05, T-346/05, T347/05, T-29/06 to T-31/06; 23.05.07)
The Procter & Gamble Company (“Procter & Gamble”) applied to register nine 3-D trade marks consisting of square white tablets with coloured floral designs for “washing and bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; preparations for the washing, cleansing and care of dishes; soaps” goods in class 3.
Three of the applications are reproduced below:
Square white tablet Square white tablet Square white tablet
with a lilac six- with a green four- with a blue five-
petalled floral design petalled floal design petalled floral design
Both OHIM and the BoA took the view that the marks were devoid of any distinctive character under Article 7(1)(b).
The CFI confirmed that the criteria for assessing the distinctive character of 3-D trade marks consisting of the appearance of the product itself are no different to those applicable to other categories of trade marks (for example, a word or figurative mark that is independent of the appearance of the products it denotes), although the perception of the average consumer is not necessarily the same in both situations. In the former case, it may prove harder to establish distinctiveness, since average consumers generally do not make assumptions about the origin of products on the basis of their shape/shape of packaging alone; only a mark which departs significantly from the norm of the sector is not devoid of distinctive character under Article 7(1)(b).
The CFI rejected Procter & Gamble’s submissions that the products would be purchased by a limited section of the public, namely consumers who shopped on a daily basis. Instead, the distinctive character of the marks had to be assessed by reference to the reasonably well informed, observant and circumspect average consumer. The attention given by the average consumer to the shape and pattern of dishwasher and washing-machine tablets was not high. Furthermore, it was appropriate to consider that such tablets were usually sold in packaging bearing the product’s name and on which there were often word marks or other features which might include a depiction of the product. Generally, the average consumer’s level of attention to the appearance of the products marketed in this way was not high. In such circumstances, it was for the applicant to show that consumers’ habits in the relevant market were different.
All four of Procter & Gamble’s submissions (namely (i) the variety of tablets on the market and number of applications for 3-D trade marks evidenced that the get-up of products was an indicator of trade origin; (ii) that the tablets could be attached to the packaging, sold in transparent packaging or in packaging the same shape as the products; (iii) the tablets could be depicted on the packaging; and (iv) that the BoA had erred by not taking into account the price of the product and the manner in which it was advertised) were rejected by the CFI. The finding of the BoA that the level of attention paid by the average consumer to the shape and design of the washing tablet was not high was upheld.
In determining the overall impression made by the combination of each mark’s shape, colours and design, the CFI held that:
- the shape of the tablets (square or cubic with rounded edges) was an obvious one;
- the presence of two distinct colours did not differ from the usual presentation of the products in question;
- adding an inlay to the upper face of a washing preparation tablet was an obvious way of combining various active ingredients. This applied equally to colour inlays; and
- the central four-, five- or six- petalled designs were simple and differed only slightly from basic geometric shapes which are most appropriate for adding an active ingredient.
Accordingly, the CFI dismissed Procter & Gamble’s appeals.
Detriment and unfair advantage
Antartica Srl v OHIM; The Nasdaq Stock Market Inc. (CFI (Fourth Chamber); T-47/06; 10.05.05)
The case concerned an application by Antartica to register the CTM set out below (the “Figurative Mark”) for, inter alia, sports clothing, sports equipment, sports watches and ski equipment in classes 9, 12, 14, 25 and 28.
The application was opposed by the Nasdaq Stock Market which owned the CTM, NASDAQ (the “Word Mark”) registered for various stock exchange price services and financial services in classes 9, 16, 35, 36, 38 and 42. OHIM rejected the opposition on the basis that the Word Mark while used in the EU, did not have a reputation under Article 8(5). The BoA overturned this decision and Antartica appealed.
The CFI held that the Word Mark had a reputation in the EU in respect of financial services, and as such the use of the Figurative Mark would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the Word Mark.
To demonstrate reputation, the CFI held that the Word Mark must be known by a significant part of the relevant public in relation to the goods or services covered by that mark. The CFI considered all the relevant facts of the case, in particular the market share held by the mark, the intensity, geographical extent and duration of its use, and the investment in its promotion. In this instance the reputation of the Word Mark was determined by reference to professionals and consumers in the EU who consulted financial information either in the course of their profession or for their personal use. The CFI was persuaded by Nasdaq’s evidence demonstrating the significant use of its name on TV and in newspapers, and by the sums spent on such promotion.
The CFI held that the Word Mark was inherently very distinctive. Following Spa Monopole v OHIM (Case T-67/0), the stronger the earlier mark’s reputation, the easier it is to accept detriment caused to it. Since the Figurative Mark had been purposely chosen to be identical to the Word Mark, there was therefore a greater chance that detriment would result. Further, Nasdaq did not need to demonstrate actual and present harm to its mark; establishing the existence of future risk was enough to show unfair advantage in relation to the reputation of its mark.
Validity of opposition notices
The Black & Decker Corporation v OHIM; Atlas Copco AB (CFI (Second Chamber); T-239/05, T-240/05, T-245/05 to T-247/05, T-255/05, T-274/05 to T-280/05; 15.05.07)
Black & Decker filed applications for 13 CTMs in class 7 goods for manually operated portable electric power tools, excluding gardening tools. The marks included:
- yellow and black figurative marks representing electric power tools;
- three-dimensional representations of two yellow and black electric power tools; and
- a representation of the juxtaposition of the two colours yellow and black.
Atlas Copco filed notices of opposition stating that under Article 8(4) it had rights in earlier non-registered trade marks and other signs used in the course of trade.
The notices of opposition were received by fax (black and white) on the last day of the opposition period and by post (colour) 2-4 days later.
OHIM rejected the oppositions stating that the black and white faxes were insufficient to clearly identify the earlier marks and signs (OHIM did not consider the originals sent by post as they were received outside the opposition period). On appeal, the BoA disagreed and held that the faxed black and white copies together with the colour originals were perfectly clear and precise. In addition, some of the power tools were clearly identified in a table showing their reference number and specification.
Black & Decker objected to this decision on two grounds:
1. The BoA incorrectly based its decision on the colour originals sent by post, even though they were received outside the opposition period.
2. The BoA was wrong to conclude that the earlier marks and signs were clearly identified in the black and white faxes.
Dismissing the first ground of objection, the Court held that the colour originals could be considered even though they were received outside the opposition period. Under Rule 80(2) of Regulation 2868/95, OHIM is obliged to notify a party whose fax transmission is incomplete or illegible and allow him a month to resend the fax or resubmit the notice in a suitable form. It would therefore be contrary to the objective of Rule 80(2) to penalise a party who took the initiative to send the originals by post, without being informed by OHIM of an erroneous fax transmission, especially as the notices were received by post so soon after the initial fax.
The Court also dismissed the second ground of objection; it was sufficiently clear from the opposition notices that the oppositions were based on the overall external appearance of the electric power tools, the shapes and models of which were varied, and the colours of which were mainly a combination of yellow and black.
Likelihood of confusion with earlier national mark
TeleTech Holdings, Inc. v OHIM; Teletech International SA (ECJ (Sixth Chamber); C-312/05P; 27.03.07) - Decision not yet in English
The ECJ dismissed TeleTech Holdings, Inc’s (“TeleTech”) appeal against the CFI’s judgment that there was a likelihood of confusion between a registered CTM and earlier French registered trade marks.
Teletech International SA began invalidity proceedings in respect of TeleTech’s CTM for TELETECH GLOBAL VENTURES, by relying on four earlier French marks for TELETECH INTERNATIONAL.
The appeal was founded on the ground that the CFI had infringed Article 52 (in combination with Article 8(1)(b)) by misconstruing that provision in breach of the principle of equivalence and coexistence between Community marks and national marks. TeleTech further criticised the CFI’s interpretation of Article 74 and the appellant’s rights of defence. Finally, TeleTech argued that the CFI’s application of the test of the “relevant consumer” referred to in Article 8(1)(b) was erroneous.
The scope of Article 74(1)
In proceedings relating to relative grounds for refusal of registration, Article 74(1) provides that OHIM is to be limited in its examination as to the evidence, facts and arguments provided by the parties and to the relief requested. Whilst the wording of that provision could possibly be understood as referring only to opposition procedures, the relative grounds for invalidity set out in Article 52 refer explicitly to Article 8, which defines the relative grounds for refusal of registration. As with the relative grounds for refusal of registration in opposition proceedings, the relative grounds for invalidity are considered by OHIM only at the request of the proprietor of the earlier mark in issue.
As a result, the ECJ held that the CFI had not infringed Articles 74 and 52 by not taking into account evidence submitted to OHIM’s Cancellation Division in support of the alleged reputation of the French trade marks (evidence which OHIM had considered to be insufficient). The ECJ concurred with the CFI in its interpretation that invalidity proceedings involving relative grounds of invalidity are, in principle, governed by the same principles as opposition proceedings. It further agreed with the CFI that it is for the parties to ensure that they adduce the necessary matters of fact and evidence. Thus, it is clear that Article 74(1) also applies to cancellation proceedings involving relative grounds of invalidity according to Article 52.
Application of the test of the “relevant consumer”
TeleTech also argued that the CFI had erred in law when ignoring the possibility that the target public (composed of directors or managers of large or small undertakings in France who have a better than average knowledge of English) would be more attentive in differentiating between the relevant marks than a less specialised consumer. However, the ECJ held that the CFI had already established in its analysis of the visual, conceptual and phonetic similarities of the marks that the relevant public would not be able to differentiate between the relevant marks. It was therefore not relevant whether the relevant consumer would have been more attentive than the less specialised consumer. As a result, the ECJ dismissed this ground and held that the CFI had not erred in law when applying the test relating to the relevant consumer.
Reporter’s note: We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report: Taliah Davis, James Leeson, Emilia Linde and Tom Snaith.
ECJ and CFI decisions can be found at http://curia.eu.int/en/content/juris/index_form.htm