Elizabeth Emanuel v Continental Shelf 128 Ltd (Decision of the Appointed Person (Professor Ruth Annand); O-317-06; 03.11.06)
Elizabeth Emanuel, the well known dress designer, registered her name as a device trade mark in Class 25 and assigned it to her business, EE Plc.
The business ran into financial difficulties and was assigned, along with the device mark, to a company eventually known as Continental Shelf 128 Ltd. Elizabeth Emanuel left the employment of this company, but the company continued under the Elizabeth Emanuel name and applied to register the name as a word mark. Elizabeth Emanuel opposed the application and applied to revoke the device mark.
The UK Hearing Officer dismissed the opposition and application for revocation, despite his finding of deception and confusion, on the ground that such deception and confusion was “lawful” and the inevitable consequence of the sale of the business and goodwill to the predecessors in title to the current applicant of the mark.
On appeal, the Appointed Person, David Kitchin QC (O-17-04) referred a number of questions to the ECJ. In summary he asked whether a trade mark is to be regarded as liable to mislead the public within the meaning of Article 3(1)(g) (prohibition on the registration of deceptive marks) or Article 12(2)(b) (revocation for misleading use) if, for a period following its assignment to the business making the goods to which it relates, the use of the mark in relation to those goods is liable to deceive the public into believing, contrary to the fact, that a particular person has been involved in designing and making those goods.
The ECJ held that, although the public interest underlying Article 3(1)(g), namely consumer protection, raised the issues of whether the average consumer would be confused, especially where the person to whose name the mark corresponded originally personified the goods bearing that mark, Article 3(1)(g) required more. It presupposed the existence of actual deceit or a sufficiently serious risk that the consumer would be deceived (Consorzio per la tutela del formaggio Gorgonzola C‑87/97). The same analysis applied to Article 12(2)(b).
Although such matters were for the national court to decide, the ECJ stated that, in this case, even if the average consumer were to be influenced into buying garments sold under the mark ELIZABETH EMANUEL by imagining that Elizabeth Emanuel designed them, the characteristics and the qualities of those garments would remain guaranteed by the trade mark owner. Consequently, the name ELIZABETH EMANUEL was not in itself deceptive as to the origin of the goods.
At the resumed appeal hearing, Elizabeth Emanuel submitted that the ECJ’s answers were not clear and a further reference to the ECJ might be necessary. Professor Ruth Annand held that the application of the ECJ’s decision in these appeals was not in doubt and dismissed both of Elizabeth Emanuel’s appeals.
Calor Gas (Northern Ireland) Limited v The Registrar (Decision of the Appointed Person (Mr Geoffrey Hobbs QC); O-340-06; 08.11.06)
Calor Gas applied to register the following two signs (filed in black and white) for use in relation to fuel gas in liquid form in class 4:
The Trade Mark consists of the colour yellow applied to the outer surface of the cylinder within which gas is contained.
The Trade Mark consists of the colour yellow applied to the outer surface of a cylinder within which gas is contained.
The Registry objected to both the first sign (on the basis that the graphical representation did not show how much of the surface is coloured yellow and in that respect the mark was not graphically represented) and the second sign (on the basis that it contained no accompanying line drawing and the description alone was insufficient as gas cylinders come in varying shapes and sizes) and issued a deficiency notice.
Calor Gas agreed to delete the second mark and amend the wording of the first mark to The Trade Mark consists of the colour yellow applied to the whole visible surface of the cylinder within which gas is contained. The Registry waived the deficiency notice and allowed the application to proceed for the first sign with its original filing date.
Nearly four years later, the Registry raised the issue that the colour yellow should have been represented in colour or the wording should have provided a specific Pantone reference for the colour. The Registry considered that the addition of a relevant Pantone reference would constitute an acceptable clarification (rather than an amendment) and therefore the application would maintain the original filing date. The Registry suggested the colour sample would be published alongside the cylinder with the wording The trade mark consists of a colour yellow applied to the whole visible surface of the cylinder as shown within which the goods are contained. The applicant has provided the Registrar with a digital image which contains an embedded sRGB colour management profile. The precise colour yellow can be viewed in a controlled environment at the Patent Office.
Calor Gas filed references for the colour, however the Registry objected as it considered the colour not close to the pure yellow applied for, but in the orange region.
The Registry subsequently filed a second deficiency notice, stating that the application did not meet the requirements of Section 32(2)(d), and invited Calor Gas to remedy the deficiency within an unextendable deadline of two months. The notice also reminded Calor Gas of its right to be heard in respect of that matter. Within the two month deadline, Calor Gas requested a hearing. The Hearing took place more than four months after the unextendable deadline had expired and the Hearing Officer held that the second deficiency notice was valid with the result that the application was deemed never to have been made on expiry of the relevant two month period.
Calor Gas appealed to the Appointed Person. Geoffrey Hobbs QC noted that he had doubts as to the legitimacy of conducting a hearing in the Registry for deciding whether the Registrar should or should not confirm the correctness of a decision which he has already made and carried into effect. The Appointed Person concluded that the fair way to proceed would be to treat the appeal as an appeal against the decision to issue the second deficiency notice.
The Appointed Person held that the Registrar was correct to regard a representation of colour expressed in terms of a reference being in principle satisfactory for the purpose of fulfilling the requirements for graphic representation. The Appointed person further held that the wording suggested by the Registry was not an appropriate way to fulfil the requirements as it did not give enough information as to the precise identity of the sign. Furthermore, he held that the colour “yellow” is ambiguous and that ambiguity is not removed by coupling it with a sample which would often be considered orange.
The Appointed Person held that the original and amplified graphic representations of colour were not clear, precise, self-contained, easily accessible, intelligible, durable, unequivocal and objective to the standard required and dismissed the appeal.
Decisions of the CFI and ECJ
|Application (and where applicable, earlier mark)|| |
- Microphones, in particular studio microphones, condenser microphones, pressure-gradient microphones and their parts (9)
The CFI upheld the decision of the BoA that a three-dimensional mark in the form of a microphone head grill lacked distinctive character under Article 7(1)(b).
The CFI held that the list of products in question covered microphones in general and was not, as submitted by Neumann, limited to studio and other expensive microphones.
The relevant public covered a narrow band of people who had a particular knowledge of microphones (including consumers who did not use microphones for professional purposes). Since microphones were goods that were used less frequently and were of higher value than everyday consumer items, there would be an increased level of attention among this group.
Following Storck v OHIM C-24/05, the CFI noted that it could be more difficult to establish distinctiveness for 3-D marks rather than word/figurative marks and held that Neumann had failed to establish that the relevant public distinguished products from different manufacturers on the basis of their shape.
Regarding the evidence submitted by Neumann as to the design of the shape at issue, the BoA was entitled to hold that consumers could consider the design of the mark as aesthetic while not viewing it as an indication of origin. Accordingly the appeal was dismissed.
Société des Produits Nestlé SA v OHIM; Quick restaurants SA (ECJ (Third Chamber); C-193/06; 20.09.07) – Decision not yet in English
Nestlé applied to register the figurative mark QUICKY set out below as a CTM for a broad range of foods and beverages in classes 29, 30 and 32.
The Belgian company, Quick restaurants, opposed the application, relying on its earlier registrations in Benelux and France for the word mark QUICKIES in classes 29, 30 and 42. OHIM allowed the opposition under Article 8(1)(b).
The CFI dismissed the appeal, holding that the verbal elements of the marks were similar and the figurative element of the figurative mark did not render the verbal elements negligible. Nestlé appealed to the ECJ which upheld the appeal in part and referred the case back to the CFI.
The ECJ held that the CFI had not performed a global assessment of the similarity of the marks for the purpose of Article 8(1)(b) (the CFI decided the likelihood of confusion only on the basis of the verbal element). The ECJ confirmed that it was only when all other elements of a complex mark were negligible that the comparison could be made solely on the basis of a dominant element. The fact that an element was not negligible did not necessarily mean that it was dominant, and vice versa.
Koipe Corporación SL v OHIM; Aceites del Sur SA (CFI (First Chamber); T-363/-4; 12.09.07)
The CFI upheld the appeal brought by the Applicant, Koipe Corporacion SL against the BoA's decision and found that there was a likelihood of confusion between the Applicant's mark and Aceites del Sur's mark. The Applicant's opposition succeeded on the basis of Article 8(1)(b).
The BoA found that there was no similarity between the marks in issue.
The opposition related to Aceites del Sur SA’s application to register the figurative mark (below, left) for edible oils and fats in class 29. The Applicant opposed the application on the basis of a likelihood of confusion with a number of earlier Spanish figurative marks and a CTM for olive oil in class 29 (below, right)
Application Earlier mark
In relation to the BoA's finding that the figurative elements had a weak distinctive character as regards olive oil, the CFI held that the figurative elements were not common place on the Spanish market for olive oil and in particular, that the figure of a seated woman in traditional costume may be distinctive of the goods concerned. The CFI found that the BoA made an assessment of the distinctive character of the figurative elements of the marks on the basis of a separate analysis of each of its components without taking account of the fact that certain components which in themselves are devoid of distinctive character may, once combined, have such a character. It found that the BoA was wrong to conclude that the figurative elements of the marks have a weak distinctive character.
In relation to the verbal components of the mark, the CFI held that the word "la Espanola", a general term in Spain, was perceived of as being descriptive of the geographical origin of the goods.
In relation to the similarity of the marks and likelihood of confusion, the CFI found that, seen as a whole, there is a visual impression of great similarity between the marks, and there is also a weak conceptual similarity. The likelihood of confusion was not diminished by the different word element. Among other things, the consumer of the olive oil products sold under the marks would give it a low level of attention, particularly given that it is purchased at a supermarket where a customer is guided more by an impression than a direct comparison of the marks. The consumer may also perceive the "La Espanola" mark to be a sub-brand of the Carbonell mark.
Aceites del Sur had attempted to argue that the application for invalidity was inadmissible under Article 55(3) on the basis of a decision of a Spanish court in relation to a Spanish mark which was equivalent to the CTM under Spanish competition law. The CFI emphasised that Article 55(3) was an exception to the principle of autonomy of the Community system and that it did not apply in the present case as it did not have the same cause of action or subject matter as the Spanish action.
Benetton Group SpA v G-Star International BV (ECJ (Sixth Chamber); C-371/06; 20.09.07)
The clothing manufacturer G-Star owned two shape marks for stitching and cut of trousers. G-Star bought an action against Benetton for trade mark infringement. Benetton sought for an annulment of the marks on the grounds that the shapes at issue determine the market value of the goods to a great extent as a result of their beauty or original character.
On appeal, the Dutch court made a referral to the ECJ and asked whether the third indent to Article 3(1)(e) prevents the shape of a product which gives substantial value to that product from being a valid trade mark under Article 3(3) if the mark became attractive as a result of recognition of it as a distinctive sign following advertising campaigns preventing the specific characteristics of the product in question.
Following Philips Electronics NV v Remington Consumer Products C-299/99, the ECJ a shape of a product which had acquired recognition in this way cannot constitute a trade mark under Article 3(3).
Genuine use and family of marks
Il Ponte Finanziaria SpA v OHIM; F.M.G. Textiles Srl (ECJ (Fourth Chamber); C-234/06 P; 13.09.07)
Marine Enterprise Projects (which later changed its name to F.M.G. Textiles Srl) applied to register as a CTM the word BAINBRIDGE with a device element consisting of a roll of cloth unfurling to form the sail of a boat for goods in classes 18 and 25.
Il Ponte Finanziaria (Il Ponte) opposed the application on the basis of a likelihood under Article 8 (1)(b) of confusion with its 11 earlier Italian registered trade marks, which all contained the word “bridge”. These marks fell into three groups:
- Four figurative marks containing variously the words BRIDGE, OLD BRIDGE and THE BRIDGE BASKET;
- The word mark THE BRIDGE;
- Six marks consisting of two 3-D marks containing the words THE BRIDGE, the word marks OVER THE BRIDGE, FOOTBRIDGE and THE BRIDGE and a figurative mark containing the words THE BRIDGE.
The ECJ dismissed Il Ponte’s appeal against the CFI’s decision to reject its opposition and held that:
- The CFI did not make an error of law in its assessment that there was no likelihood of confusion in the absence of any conceptual or visual similarities. The ECJ cannot substitute its own assessment of the facts for that of the CFI.
- In the absence of a minimum degree of similarity between the marks, the CFI could not be criticised for not applying the principle of interdependence (namely that a lesser degree of similarity between the marks may be offset by a greater similarity between the goods) in its overall assessment of the likelihood of confusion.
- A trade mark may be registered only individually, and the minimum 5 year protection afforded by the registration is conferred on it only as an individual trade mark, even where several trade marks having one or more common and distinctive elements are registered at the same time.
- In order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a 'family' or 'series', the earlier trade marks which are part of that family or series must be present on the market; otherwise no consumer will be able to detect a common element in such a family or series. As there was no proof of use of a sufficient number of those marks to be capable of constituting a family or series, the CFI was entitled to uphold the decision of the BoA to disregard the submissions by which the Il Ponte claimed protection that could be due to a mark in a series.
- The submission that the holder of a national registration who opposes a CTM application can rely on an earlier trade mark the use of which has not been established on the ground that, under national legislation, that earlier mark constitutes a 'defensive trade mark' is incompatible with the genuine use / proper reasons for non-use examination of opposition provisions in Article 43(2) and (3).
Request to invalidate reservation by Commission of .eu domain name
Galileo Lebensmittel GmbH & Co. KG v the European Commission (CFI (Second Chamber); T-46/06; 28.08.07) – Decision not yet in English
Galileo Lebensmittel GmbH (the “Applicant”) requested that the CFI should declare void the decision of the Commission to reserve the domain name “Galileo.eu” and order the Commission to allow the registry issuing top level domains (EURid) to register freely the domain name.
In support of its application, the Applicant alleged infringement of Article 9 of EC Regulation No 874/2004, and that its rights under the second paragraph of Article 2, the first subparagraph of Article 10(1), the third subparagraph of Article 10(1) and the third subparagraph of Article 12(2) of the Regulation had been infringed. These provisions outline (among other things) under what conditions .eu domain names may be allocated to parties other than EC institutions.
The Commission submitted that the CFI lacks jurisdiction to order the Commission to allow EURid to register freely the domain name “Galileo.eu” on the basis of Articles 230 and 231 of the EC Treaty. The CFI held that it had only jurisdiction to declare void the Commission’s decision and that it was incapable of imposing an order on the Commission.
The CFI rejected the Commission’s submission that the Applicant should have attempted to resolve this matter through EURid’s ADR procedure (without the Commission’s involvement). ADR would not have been a suitable recourse as the rejection of the Applicant’s domain name was a result of the Commission’s prior reservation and not a result of an autonomous decision by EURid.
The Commission finally submitted that the Applicant had failed to establish that the Commission’s decision to reserve “Galileo.eu” was of “direct and individual concern” to the Applicant (the requirements for a legal or natural person to successfully institute proceedings for the purpose of declaring void an act or decision by the Commission on the basis of Article 230 and 231 of the Treaty). The CFI held that EURid’s refusal to register the domain name “Galileo.eu” was of “direct concern” to the Applicant by virtue of the Applicant not being able to register this particular domain name. However, the Applicant was unsuccessful in establishing that the Commission’s decision to reserve “Galileo.eu” was of “individual concern” to the Applicant as it failed to prove that the Commission was aware of the Applicant’s identity and warrant of special treatment at the time of reserving “Galileo.eu”.
As a result, the CFI rejected the Applicant’s requests.
Evidence submitted out of time
Advance Magazine Publishers, Inc v OHIM; J. Capela & Irmãos, Lda (CFI (Third Chamber); T-481/04; 04.10.07)
Advance Magazine applied to register the mark VOGUE for goods and services in various classes including clothing in class 25. J. Capela & Irmãos, Lda opposed the mark (in respect of clothing in class 25) and based on a Portuguese word mark for VOGUE Portugal. The Opposition Division considered the two marks identical since the word ‘Portugal’ had formed part of the earlier trade mark under a Portuguese legal rule no longer in force which required goods to mention their Portuguese origin (the marks could now be used without that reference). It further held that the goods were similar and allowed the opposition.
Advance Magazine appealed to the BoA and lodged a statement which highlighted that it was the holder of an international registration for the word mark VOGUE (for, inter alia, ready-made clothing of all kinds, underclothing) which was registered prior to the VOGUE Portugal mark. Advance Magazine submitted that therefore the trade mark VOGUE was already protected in Portugal. The BoA dismissed the appeal and held that this statement was inadmissible because it seemed ‘wrong in principle and contrary to the wording of Article 74(2) to allow [Advance Magazine] to plead entirely new facts and arguments’.
The CFI annulled the BoA’s decision, holding that the BoA misconstrued Article 74(2); instead of exercising the discretion which it has, the BoA wrongly considered itself to be lacking any discretion as to whether to take account or not of the facts and evidence at issue. As the BoA had held Advance Magazine’s submission inadmissible, the Court could not substitute itself for OHIM in the assessment of its relevance and therefore could not rule on OHIM's reasoning in that regard.
Protected designation of origin
Consorzio per la tutela del formaggio Grana Padano; Italian Republic v OHIM; Biraghi SpA (CFI (Fourth Chamber); T-291/03; 12.09.07)
Biraghi SpA owned the CTM for GRANA BIRAGHI for its cheese products in class 11. The Applicant, Consorzio, sought a declaration that this word mark was invalid since it contravened the Protected Designation of Origin (PDO) GRANA PADANO. OHIM permitted the declaration of invalidity. Biraghi SpA appealed, and the BoA agreed that ‘grana’ was generic and descriptive of the quality of the goods. As such, the PDO GRANA PADANO did not prevent GRANA BIRAGHI from being registered as a CTM. The CFI annulled the BoA decision, and held that the BoA had erred by finding that ‘grana’ was generic and that the existence of the PDO did not preclude registration of the mark GRANA BIRAGHI. Accordingly, the CFI held that GRANA BIRAGHI may not be registered as a CTM.
Regulation 2081/92 protects registered PDOs against commercial, misleading or misuse of the name. However, where a PDO consists of several elements, one of which constitutes the generic indication of an agricultural product or foodstuff, the use of that generic name in a registered mark does not constitute a contravention of the Regulation.
The CFI held that to ascertain whether the term ‘grana’ constituted the generic name of the product it is necessary to carry out a detailed analysis of all the factors which could establish that generic character. The BoA had overlooked the criteria identified by Community case law and legislation on PDOs and had not called for any opinion polls of consumers or opinion of experts. If it had duly taken these into consideration it would have concluded that proof of the generic character had not been made out.
The CFI reviewed the development of Italian law and concluded that these supported its conclusion that the name ‘grana’ is not generic.
Reporter’s note: We are grateful to our colleagues at Bird & Bird for their assistance with the preparation of this report: Laura Acreman, Taliah Davis, Emily Forsyth, Abby Minns, Emily Peters and Alice Sculthorpe.
ECJ and CFI decisions can be found at and decisions of the Appointed Person can be found at http://www.patent.gov.uk/tm/t-decisionmaking/t-challenge/t-challenge-decision-results.htm