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EUROPEAN PERSPECTIVES

Alicante Abstracts

EUROPEAN COURT OF JUSTICE

Absolute Grounds of Rejection

We set out below all of the decisions made by the Court of First Instance (and, in one case, the European Court of Justice) to date on the registrability of trade marks before OHIM. It will be seen that seven cases are, at present, on further appeal to the ECJ from the CFI. Of these, three (Der Prinzip Der Bequemlichkeit, the German for The Principle Of Comfort, Doublemint and New Born Baby) are appeals made by OHIM against the CFI's decisions to allow these three marks for registration. In each of these cases, OHIM believes that the standard set for registrability by the CFI was too low. In the table, where the CFI's decision was to dismiss an appeal in part, this generally meant that the mark was rejected, under Article 7 of the Regulation, in relation to the goods and/or services of particular interest to the applicant.

A more detailed analysis of some of the more recent CFI decisions is set out below. Whether any consistency of approach in relation to the registrability of trade marks can be gleaned from this overview of CFI/ECJ cases is discussed in the Comment section.

European Court Decisions on Registrability (Article 7; Absolute Grounds of Rejection)

Mark Goods/Services	Grounds	Decision
Detergent tablets*3	7(1)(b)(e)	Dismissed
Soap bar (3D)	7(1)(b)(e)	Allowed
Baby-Dry**	16,25 7(1)(b)(c)	Allowed
Carcard	9, 36, 37, 38, 39, 42 7(1)(b)(c)	Dismissed+
Cine Action	9, 16, 38, 41, 42 7(1)(b)(c)	Dismissed+
Cine Comedy	9, 16, 38, 41, 42 7(1)(b)(c)	Dismissed+
Companyline*	36 7(1)(b)(c)	Dismissed
Der Prinzip Der Bequemlichkeit*	8, 12, 20 7(1)(b)(c)	Allowed
Doublemint*	3, 5, 25, 28, 30 7(1)(c)	Allowed
Easybank	36 7(1)(b)(c)	Allowed
electronica	16, 35, 41 7(1)(b)(c)	Dismissed
Ellos	24, 25, 35 7(1)(c)	Dismissed+
Eurocool	39, 42 7(1)(b)	Allowed
Eurohealth	36 7(1)(b)(c)	Dismissed+
Giroform	16 7(1)(b)(c)	Dismissed
Investorworld	36 7(1)(b)(c)	Dismissed
Lite	5, 29, 30, 32, 33, 42 7(1)(b)	Dismissed
Maglite torch	(3D) 9, 11 7(1)(b)	Dismissed
New Born Baby*	28 7(1)(b)(c)	Allowed
Options	36 7(1)(b)(c) and 7(3)	Dismissed
Streamserve	9, 16 7(1)(b)(c)	Dismissed+
Tele Aid	9, 12, 37, 38, 39, 42 7(1)(b)(c)	Dismissed+
Truckcard	9, 36, 37, 38, 39, 42 7(1)(b)(c)	Dismissed+
Trustedlink	9, 35, 38, 41, 42 7(1)(b)	Dismissed
Universaltelefonbuch*	9, 16, 41, 42 7(1)(b)(c)	Dismissed
Universal Kommunicationsverzeichnis*	9, 16, 41, 42 7(1)(b)(c)	Dismissed
Vitalite	5, 29, 32 7(1)(b)(c)	Dismissed+
Wrapped chocolates	(3D) 5, 30 7(1)(b)	Dismissed

Note:	**	Decision of full ECJ
	*	Appealed to full ECJ from CFI
	+	Dismissed in part

Turning to recent CFI decisions in this area, we shall now consider the Carcard, Der Prinzip Der Bequemlichkeit, Ellos, Eurocool, Lite, Maglite torch (3D) and Streamserve appeals.

Carcard

The applicant, Daimler Chrysler AG, applied for the trade mark Carcard in relation to a wide range of goods and services in Classes 9, 36, 37, 38, 39 and 42. The mark was rejected under Articles 7(1)(b) and (c) by both the Examiner and the Board of Appeal. Daimler Chrysler appealed to the CFI. The Court maintained the rejection of the mark in relation to certain car related goods and services, but allowed the mark to proceed in relation to certain goods and services in Classes 9, 36, 37, 38 and 42 that had no (or no immediate) connection with cars. According to the Court

There was nothing unusual about the structure of the word Carcard. It did not diverge from English word composition rules.
The applicant's allegation that the word did not have a clear and specific meaning was irrelevant. In relation to the goods and services claimed, it was clear that the word meant "a card for or relating to a car". In order to come within Article 7(1)(c), it is sufficient that at least one of the possible meanings of a word identifies a feature of the goods or services concerned.
In relation to "machine-readable data carriers equipped with programs and/or data", in particular magnetic cards and/or chip cards and/or credit cards, bearing vehicle, customer and/or repair data, the word Carcard was capable of designating both the kind and quality of such goods. The fact that the cards claimed were linked to a car must be considered to be a quality of the goods that the intended public was liable to take into account when making its decision and accordingly constituted an essential characteristic. Similar comments were made in rejecting the application in relation to the issuing of credit cards, the leasing and rental of motor vehicles, arranging fuel supplies, car maintenance and navigation and location services. Der Prinzip Der Bequemlichkeit In this case, Erpo Möbelwerk applied to register the above German slogan for tools and cutlery (class 8), land vehicles (class 12) and household furniture (class 20). The application was rejected by the Examiner. The Board of Appeal annulled this decision in relation to class 8 goods but affirmed the rejection of the application in so far as it covered goods in classes 12 and 20. Erpo appealed to the CFI. The Court ruled as follows:
The class of persons targeted is made up of average, reasonably well-informed and reasonably observant and circumspect German speaking consumers.
The Board of Appeal essentially assessed the descriptiveness of the word combination in relation to Bequemlichkeit alone and not in relation to the slogan as a whole. As regards a word sign composed of several elements, descriptiveness must be assessed on the basis of all the elements present and not just one of those elements.
Even if the Bequemlichkeit element designates, on its own, a quality of the goods concerned which may be relevant when the class of persons targeted makes the decision to purchase, the slogan as a whole cannot be regarded as consisting exclusively of signs or indications which may serve to designate the quality of the goods concerned. It followed that the mark did not fall foul of Article 7(1)(c).
The Board of Appeal had deduced lack of distinctive character from the descriptiveness of the phrase claimed and on this basis had rejected the application under Article 7(1)(b). Since the mark should not have been refused (by the Board of Appeal) under Article 7(1)(c), their reasoning under Article 7(1)(b) was based on an error and must be rejected.
A lack of distinctiveness cannot be found because of a lack of imagination or the lack of an additional element of originality. Further, it is not appropriate to apply stricter criteria to slogans than are applied to other types of sign.
The application should be allowed to proceed to registration in relation to all of the goods (classes 8, 12 and 20) claimed.

Ellos

The mark applied for is the third person plural pronoun in Spanish and is also used as a collective term designating all members of the male sex. The applicant, Ellos AB, had sought to register the mark for textiles in class 24, clothing in class 25 and mail order sales in class 35.

The application, in so far as it claimed class 25 goods and class 35 services, was rejected by the Examiner under Article 7(1)(c) and this decision was confirmed by the Board of Appeal.

Ellos appealed to the CFI. The Court dismissed the appeal in relation to class 25 goods but allowed it for class 35 services. According to the CFI:

Conveying information that clothing is intended for male customers represented an essential characteristic of the class 25 goods claimed, a fact which would be taken into account by the public targeted. This allowed the public to establish immediately, and without further thought, a specific and direct relationship between Ellos and men's clothing. Since men's clothing was included within the applicant's claim to clothing, the application should not be accepted for the class 25 goods claimed.
No categories of goods or services are subordinate or ancillary to others. It followed that the Board of Appeal's rejection of the mail order services claimed in class 35 because they were merely ancillary to clothing in class 25 was incorrect. In terms of distinctiveness etc, the class 35 services should have been examined separately and without reference to the class 25 goods.
In relation to the mail order services claimed, the sex of the customers for whom the services are intended did not constitute a relevant aspect or an essential characteristic of those services. Accordingly, the relationship between Ellos and the class 35 services was too indeterminate and vague to be caught by Article 7(1)(c).

Eurocool

Eurocool Logistik GmbH applied to register the trade mark Eurocool for services in classes 39 and 42 related to the cold storage and transport of goods. The Examiner and the Board of Appeal rejected the application under Article 7(1)(b), on the basis that Eurocool clearly designated the business of storing and transporting refrigerated goods within Europe. The applicant appealed. The CFI allowed the appeal in the following terms:

The fact that Eurocool is made up of components which may allude to certain features of the services claimed and that the combination complies with linguistic rules is not sufficient for rejection under Article 7(1)(b), unless it can also be shown that such a sign, when viewed as a whole, would not enable the relevant public to distinguish the applicant's services from those of its competitors.
The absence of distinctive character cannot arise merely from the finding that the sign in question lacks an element of imagination. A CTM is not necessarily a work of invention and is founded on its ability to distinguish rather than elements of originality or imagination.
The public targeted are well informed, observant and circumspect specialists working in the food industry or the hotel business.
Eurocool was a term that could be easily and instantly memorised by the relevant, specialist public and was therefore inherently capable of being perceived as a distinctive sign.

Lite

Rewe Zentral AG applied to register the trade mark Lite for goods in classes 5, 29, 30, 32 and 33 as well as the provision of food and drink in class 42. The application was rejected by the Examiner and the Board of Appeal under Article 7(1)(b) given the phonetic equivalence of the mark to the English word light. Rewe Zentral appealed to the CFI claiming that signs with even a very limited level of distinctiveness should be accepted for registration by OHIM. The Court disagreed and dismissed the appeal as follows:

A minimum degree of distinctive character is sufficient to overcome an objection raised under Article 7(1)(b).
The word Lite is commonly used in the English speaking part of the EU as an everyday word in the food and catering industry to identify or distinguish a quality of foodstuffs, namely goods that are low in calories, fat, alcohol, sugar, etc. The word was therefore incapable of distinguishing the goods and services of one trader from those of another.

Maglite torch (3D)

The applicant, Mag Instrument Inc, sought to register the three dimensional shape of their well known Maglite torch. The mark was rejected as non-distinctive (Article 7(1)(b)) by both the Examiner and the Board of Appeal. Mag appealed to the CFI who maintained the rejection. According to the CFI:

It was not appropriate to apply more stringent criteria or impose stricter requirements when examining 3-D marks. However, the nature of a mark might influence the perception which the relevant public would have of the mark.
The effect of the 3-D mark claimed was to indicate the nature rather than the source of the product. The novel features claimed would be taken to be variants of a common torch shape rather than shapes which indicate a given commercial origin.

It should be noted that an application to register the 3D shape of a Maglite torch (CTM 1688563) has been accepted by OHIM on the basis of evidence of acquired distinctiveness

Streamserve

In this case, Streamserve Inc. sought to register the trade mark Streamserve for certain computer related goods in class 9 and certain printed matter in class 16. The application was rejected by the Examiner under Articles 7(1)(b) and 7(1)(c), a decision maintained by the Board of Appeal. The applicant appealed to the CFI. The CFI allowed the appeal in relation to manuals and publications in class 16 but dismissed it in relation to the other class 9 and 16 goods. According to the Court:

The relevant public was an English speaking consumer who used the Internet and was interested in its audiovisual aspects.
A sign could be rejected under Article 7(1)(c), even if there was no real, current or serious need to leave a sign or indication free.
In view of the goods claimed, Streamserve would be seen as referring to a technique for transferring digital data from a server, enabling the data to be processed as a steady and continuous stream. The fact that the word serve had a number of possible meanings was irrelevant. In the present context, it would only have the meaning set out above. Further, to be caught by Article 7(1)(c), it is sufficient if at least one of the potential meanings of a word sign designates a characteristic of the goods concerned. It followed that Streamserve was directly descriptive of the intended purpose of all the goods claimed other than manuals and publications.
The existence of a UK trade mark registration for Streamserve covering class 9 goods did not alter the above findings.

Comment

It must be one of the overriding aims of OHIM to follow a consistent and predictable practice when examining trade mark applications under Article 7 of the CTM Regulation. Whilst elements of that consistency and predictability must be derived by decisions made within OHIM, it is clear that cases decided at the level of the CFI and ECJ will have a very significant influence on this aspect of the examination practice of the Office. Bearing that in mind, do the decisions reached to date by the CFI/ECJ offer any clear guidance to OHIM (and the rest of us) on the examination of CTM applications under Article 7? In relation to broad principles, the answer is yes. It is now clear that at least the following general rules apply to Article 7 examination:

Distinctiveness must be assessed in relation to the goods/services claimed and in relation to the perception of the public targeted.
In order to be registrable a mark must not immediately inform consumers of the intended purpose of the goods, neither should it be a term that is customarily used to describe the goods claimed.
Minor differences between the mark and common parlance may confer distinctive character.
If the link between the mark and the goods is only vague, an objection may be avoided.
Unimaginative marks may be acceptable.
Absence from a dictionary does not automatically render a mark distinctive.
A mark must be distinctive throughout the EU.
Articles 7(1)(b) and 7(1)(c) must be considered separately and cumulatively as they have separate spheres of application.
Appeal Boards can raise new substantive objections but they must give the applicant an opportunity to comment on the new objections.

However, in relation to the application of these broad principles to the acceptance or rejection of specific trade marks by the CFI/ECJ it is extremely difficult to discern any consistency of practice or predictability of end result. In the writer's view, it is virtually impossible to reconcile the Court's acceptance of marks such as Baby-Dry, Doublemint, Easybank and New Born Baby with their rejection of marks such as Companyline, Streamserve and Vitalite. This means that the level of distinctiveness that a mark needs to reach in order to be accepted as registrable by the CFI/ECJ (and therefore by OHIM), is, at present, very difficult to gauge. It follows that, for a wide range of marks of borderline distinctiveness, the outcome of the absolute grounds examination at OHIM (and on appeal to the European Court) remains something of a lottery. On the one hand, this is an unsatisfactory situation because it is virtually impossible for the owner of such a borderline trade mark to know whether or not his CTM application will succeed. On the other hand, it remains the case that a mark that would, almost certainly, be rejected by the UK and some other EU Trade Mark Offices (because of their more predictable examinations) may succeed at OHIM because of their less consistent approach.

This situation will continue until it becomes possible to predict the outcome of a CFI/ECJ appeal dealing with an Article 7 objection in, say, 95% of cases. In the writer's opinion, the percentage is, at present, much lower than 95%.

CTM APPEAL BOARDS

Similarity of Pharmaceutical Trade Marks

A recent decision (Medrel v Glaxo Group) suggests that the OHIM Appeal Boards at least may be pulling back from their disastrous policy of assuming that, because of the nature of the pharmaceutical industry, small differences in Class 5 marks can distinguish between products.

The mark applied for was Tempovate covering, amongst other goods, skin bleaching preparations in class 5. The CTM application was opposed by Glaxo on the basis of their prior rights in the marks Emovate and Eumovate, registered in respect of pharmaceutical preparations.

The Opposition Division dismissed the opposition on the basis of the differences between the two marks. Glaxo appealed. The appeal was allowed. According to the Board, the marks were visually and phonetically similar. Conceptually, they would all be seen as invented words. Given that, in some countries,
- Medicinal products were administered over the counter without prescriptions,
- Some consumers tended to resort to self-prescription, and
- Professionals in the medicinal area were often overworked and tended to write prescriptions with poor handwriting,
the Board concluded that the similarities between the two marks could give rise to a risk of confusion.

Comment

No doubt OHIM's Opposition Divisions will continue with their present disastrous practices, in respect of the comparison of pharmaceutical trade marks, until a definitive judgement along the lines of the above case is issued by the ECJ.

However, the Tempovate decision is still a big step in the right direction.

Comparison of Trade Marks

We have noted a number of interesting appeals in which marks of various types have been compared.

In the first case (Avex v Adolf Ahlers), the mark was a white lower case letter a in a black oval background filed in respect of inter alia clothing, footwear and headgear (CTM 863142). The mark was opposed on the basis of an earlier CTM (no. 270264) for a white lower case letter a in a black square background which covered various types of clothing.

The Appeal Board ruled in favour of the opponent and rejected the CTM application in so far as it claimed class 25 goods. They concluded that footwear (and headgear) were similar goods to clothing. They also found that the two marks were visually and conceptually similar. Further, although in view of the figurative nature of both marks, the phonetic aspect of comparison was less important, the Board found them to be phonetically identical.

In the second case (Seat Pagine Gialle v Yell), the CTM application was for Pagine Gialle plus a device in respect of class 16 goods and class 35 services. The opponent (Yell) opposed on the basis of prior UK trade mark registrations for Yellow Pages covering identical and similar goods and services. The opponent's principal argument was that Pagine Gialle was the Italian equivalent of Yellow Pages, that the two marks were therefore conceptually identical and that this overwhelmed their visual and phonetic dissimilarities.

In a related case, (Imporelo v Victor Güthoff), the CTM mark at issue was a combination of the word Kuatro and a K Device. The K device was about four times as large as the word. The opponent relied on an earlier CTM registration for Quattro. It was accepted by the Board that both kuatro and quattro meant four. The earlier registration covered goods in classes 3 and 16 that were identical or similar to certain goods claimed in the later CTM application. The Appeal Board rejected the opposition on the following basis:

Visually, the marks were not similar because the letter K dominated the mark applied for.
Phonetically, if the letter K was not taken into account, the marks were similar.
Given the meaning of Kuatro and Quattro, both marks were conceptually weak which would mean that consumers would pay more attention to the distinctive K device in the later mark.
The average consumer when confronted by both the two marks separately would recall the K Device in one mark and the word Quattro in the other mark.

The final case (Claudia Oberhauser v Petit Liberto), involved a CTM application for the trade mark Fifties covering denim clothing in class 25. The opposition was based on a Spanish trade mark registration for Miss Fifties & Device in respect of inter alia clothing. Before the Opposition Division, the two marks were found to be visually and conceptually dissimilar. However, because the Division believed that Spanish consumers would find the word Fifties to be the dominant verbal element in the earlier mark, they decided that the two marks were phonetically similar. Therefore, taking into account the identity of the goods, the possibility of imperfect recollection and the fact that clothing is often ordered verbally, the Opposition Division found that, despite the visual and conceptual dissimilarities of the marks, there was a likelihood of confusion. They therefore found for the opponent. The applicant appealed. The Board of Appeal agreed with the Opposition Division that the two marks were visually dissimilar. However, they disagreed with the Opposition Division's findings on phonetic and conceptual similarity. In the Appeal Board's view, the two marks were phonetically dissimilar, but conceptually similar. According to the Board, the dominant feature of the opponent's mark was the phrase Miss Fifties. This would be the aspect that was remembered and understood, the understanding being enhanced by the presence of a young woman in the earlier mark. This, in turn, would lead the average Spanish purchaser of clothing to think that Fifties denim clothing was sold by the same concern as that responsible for Miss Fifties clothing. On this basis, the appeal was dismissed.

This case is one of the first OHIM oppositions to be appealed further to the Court of First Instance.

Comment

In the last edition of Make Your Mark, we discussed an OHIM opposition (Northern Foods v Horace M. Ostwald), in which a CTM application for Fox's in Class 30 was successfully opposed on the basis of a German trade mark registration for Fuchs covering similar goods. The fact that fuchs is the German for fox was a major factor in that opposition being decided in favour of the opponent.

The Pagine Gialle appeal discussed above shows that, in OHIM oppositions involving two marks with the same meaning in different languages, conceptual similarity is only part of the equation. It would appear that, in order for an opposition to succeed, the earlier mark must be visually and/or phonetically similar, as well as conceptually similar, to the later mark. It is therefore submitted that, whilst an earlier UK registration for Cool Water should prevent the registration of a later CTM application for the German equivalent Kühl Wasser, an earlier UK registration for Always should not prevent the registration of a later CTM application for the German equivalent Immer (assuming, in both cases, identity of goods). Another interesting aspect of the Pagine Gialle decision is to ask what would have been the result of the opposition if the CTM application had been for Yellow Pages and the earlier right had been an Italian registration for Pagine Gialle? It appears to be a general assumption at OHIM that whilst English is well known amongst a significant proportion of the EU's population, the other EU languages, including French, German, Italian and Spanish, are not so widely known. This often leads to English language marks being placed at a disadvantage relative to marks in other languages. (See, for example, proof of acquired distinctiveness for English language marks being required in the UK, Ireland, Germany, Scandinavia and even other European countries, a requirement that is not placed on marks in other EU languages).

In the above hypothetical case therefore, it is submitted that the Opposition Division could well assume a widespread knowledge amongst Italians that yellow pages is the English for pagine gialle. This could lead, in Italy, to widespread conceptual confusion which could outweigh visual or phonetic dissimilarities. This could, in turn, lead to the opposition succeeding. Such a result would not be surprising given OHIM's past unequal treatment of English language marks.

Similarity of Goods and Services

OHIM's practice on the similarity of goods and services is still developing. In the past few months, we have noted the following decisions:

Goods/Services found similar
- Oils (class 4) similar to paints, varnishes, preservatives (class 2) (Fuchs Petrolub v Christian Bay)
- Veterinary preparations similar to pharmaceutical preparations (STADA Arzneimittel v Francisco Picas Guiu
) - Financial software similar to Financial services (Lombard Risk Systems v Lombard North Central)
- Class 18 goods similar to Class 25 goods (Camomilla v Ciro Di Natale)
- Footwear similar to clothing (Avex v Adolf Ahlers)
- Non-alcoholic beverages (class 32) similar to beer (Karlsberg Brauerei v Mystery Drinks)
- Beverages (class 32) similar to Provision of food and drink (Club Aquarius v Coca Cola)
Goods/Services found dissimilar
- Audio speakers not similar to Parts of computers (Diamond Audio Technology v Speak Software)
- Foodstuffs (classes 29 and 30) not similar to Provision of food and drink (Danske Familierestauranter v H. Redlefsen)
- Foodstuffs (classes 29 and 30) not similar to Non-alcoholic beverages (class 32) (Rudolf Wild v Industrias Revilla).

Comment

The writer has never understood this. In his view, goods/services are either similar or they are not. The nature of the earlier mark should have no effect on this. Having said which, we have to live in the world as it is, rather than the world as it should be.

In the world as it is, the above cases should therefore only be treated as indicative. In different circumstances, where the earlier mark is viewed as less distinctive, the decision on similarity of goods/services might well be different. Of course, this makes it difficult, if not impossible, for OHIM to produce a cross citation index that is of any real value to trade mark owners and practitioners.

Trade Mark Dilution

The following two OHIM Appeal Board decisions show that it is possible for an opponent with the right type of evidence to prevent the registration of a later, similar mark covering dissimilar goods.

In the first case (Pharmalife Italia v E.R. Squibb), the CTM application was for the trade mark Lipostatin in respect of goods in classes 3, 5 and 30. The opposition was based on earlier EU national trade mark registrations for Lipostat claiming pharmaceutical preparations for the reduction of blood cholesterol levels (Article 8(1)(b)), as well as the reputation of Lipostat in Ireland and the UK (Article 8(5)). The opponent's evidence, as well as including sales figures of Lipostat also showed the widespread awareness of the drug by Irish and UK medical practitioners. Further, it included statements from medical experts on the danger to public safety posed by a Lipostatin hair lotion (or similar class 3 product) or a Lipostatin food product being sold alongside a Lipostat medicinal product. Evidence that class 3 products were sold alongside class 5 products in retail pharmacies was also included.

The Opposition Division found that the two marks were similar and that the opposition succeeded under Article 8(1)(b) in respect of class 5 goods. They also rejected the CTM application in so far as it covered class 30 goods because "people familiar with Lipostat pharmaceuticals would be led to buy Lipostatin food products in the belief that they were in some way beneficial to health". However, they dismissed the opposition in respect of class 3 goods on the basis that "class 3 goods are too far away from the opponent's goods for any connection to be made between the two".

Not surprisingly, given the paucity of reasoning in the opposition decision, the opponent appealed. The appeal was allowed and the CTM application was therefore rejected in its entirety. According to the Board of Appeal:

In so far as the CTM application covered bleaching preparations and similar corrosive class 3 products, it was highly probable that the association of such (class 3) products with Lipostat anti-cholesterol products would negatively affect consumers' perception of the qualities and possible effects of their (Lipostat) medicine.
In so far as the CTM application covered perfumery, hair lotions and similar cosmetic products in class 3, their distribution was through the same trade channels as the opponent's medicine. It was therefore likely that at least part of the relevant public would assume that a Lipostatin cosmetic product had either an effect that was complementary to the medicine or at least a standard of quality comparable with Lipostat. The use of the trade mark Lipostatin on such class 3 goods would therefore take unfair advantage of the reputation of Lipostat in Ireland and the UK.

In the second case (Mühlens GmbH v Hearst Corporation), the CTM application was for the mark Cosmopolitan Cosmetics covering goods in Class 3. The application was opposed by the Hearst Corporation on the basis of their French trade mark registration for Cosmopolitan in Class 16 and their reputation in relation to Cosmopolitan magazine in France.

The evidence showed that:

In a related French Court case the Court had accepted that the CTM opponent had a considerable reputation in France in relation to printed matter and that (in France) the distinctive power of the trade mark Cosmopolitan extended beyond printed matter and, in particular, into other fields such as clothing, shoes and accessories.
The French version of Cosmopolitan magazine regularly contained a large number of advertisements for perfumery and cosmetics.
The monthly sales of Cosmopolitan magazine in France were about 240,000 copies. (This was an independent survey).
On this basis, the Opposition Division accepted that Hearst had established the necessary reputation in France. They also found, not surprisingly, that the two marks were similar. The Opposition Division then proceeded to consider the question of unfair advantage/detriment and due cause. They ruled as follows:
The use of Cosmopolitan Cosmetics on Class 3 goods was likely to damage the distinctiveness of the earlier mark Cosmopolitan by weakening its distinctive and attractive power as a reputed mark for a magazine.
The use of Cosmopolitan Cosmetics on Class 3 goods was likely to take unfair advantage of the magazine's reputation, since the general reader would be led to associate the new mark with the earlier mark, given the regular appearance of cosmetic/perfumery advertisements in the magazine.
The burden of proving that a CTM applicant could use his later mark with due cause fell upon the CTM applicant. In the present case, Mühlens had provided no such evidence.
The opposition succeeded and the CTM application should be refused in its entirety.
The applicant appealed, but the appeal was dismissed. The Appeal Board agreed with the reasoning of the Opposition Division and also commented as follows on the issues raised:
In order to establish reputation, what was relevant was how many people amongst the relevant public knew the trade mark rather than how many bought the marked product.
It was reasonable to assume that a much larger proportion of the relevant French female public knew about Cosmopolitan magazine than the circulation figures suggested. The threshold for achieving the reputation required under Article 8(5) had therefore been met.
In the absence of complete information about the French Court case, that decision had to be treated with the utmost caution.
In respect of the applicant's argument that their mark had been selected innocently and therefore with "due cause" since it was inspired by the name of their affiliated German company, Cosmopolitan Cosmetics GmbH, the Board found that the inclusion of the trade mark in the name of a company incorporated in one country (Germany) could not be regarded as due cause for using a trade mark in another country (France, where the opponent had their prior rights).

This opposition has been appealed further to the Court of First Instance.

Comment

The Cosmopolitan case shows that an opponent who can:

Establish their reputation through independent sources (a company that monitored magazine sales in France), and
Show a link between the earlier goods and the CTM goods (the link being the cosmetics/perfumery advertisements that regularly appear in Cosmopolitan magazine) has a good chance of succeeding under Article 8(5) in a CTM opposition.

The Lipostatin decision suggests that the owner of any successful medicinal product in the EU should be in a position to prevent the registration of the identical or similar mark filed at OHIM not only for class 5 goods but also class 3 and class 30 goods. It could be that the penumbra of protection for such medicinal products could even extend beyond that into classes 29, 32 and 33, particularly when the class 5 mark is an invented word. This should be borne in mind when trade mark availability searches are undertaken in these classes.

Distinctiveness of pharmaceutical product get-up

Two recent appeals have shown how difficult it is to obtain registration for the get up of pharmaceutical dosage forms before OHIM.

In the first appeal (Pfizer v OHIM), the CTM application (no. 1352418) was for blue, diamond shaped Viagra tablets. Pfizer put forward evidence of substantial sales of Viagra in the EU in the period just prior to the date of the CTM application as well as details of the acceptance of the same mark by the UK Office on the basis of acquired distinctiveness.

The Appeal Board dismissed the appeal finding that the mark was inherently non-distinctive and that the evidence of use was inadequate to overturn that finding. In the Board's view, the evidence put forward did not establish the necessary link amongst the relevant public (which was the general public of the EU as a whole) between the shape and colour of the tablets claimed and their source.

Once again, however, the appeal was dismissed. The Board simply took the view that the stripes were no more than a minor decoration of the capsule rather than an indication of origin.

Comment

It seems clear that, in order to obtain registration of the shape and colour of pharmaceutical dosage forms having usual geometric shapes combined with a single colour or a colour combination, a CTM applicant will have to conduct surveys in most, if not all, EU countries, in order to establish that the colour/shape combination alone is associated with either the product sold (e.g. Viagra or Celebrex) or with the source of that product.

The alternative, of course, is to develop a dosage form that is inherently distinctive, see, for example, the tablet protected by CTM 2226173 which is mentioned in the Snippets section of this issue of Make Your Mark (p.17).

Evidence of Use

The need to register new forms of your trade mark was illustrated in a recent OHIM opposition (Kaba Schliessysteme v Ramon Gomez). In this case, the CTM application was for the mark Kaba in respect of a wide variety of goods and services. The application was opposed under Article 8(1)(b) on the basis of an earlier Spanish trade mark registration for Raba & Device I. The opponent's registration was over five years old and therefore the opponent was asked to prove use of his mark in Spain during the relevant period.

The opponent put forward evidence of use of a similar but not identical mark (Raba & Device II). The Opposition Division decided that the opponent had not shown genuine use of his registered mark and therefore dismissed the opposition. The opponent appealed. The Appeal Board rejected the appeal. In their view, the two figurative marks varied materially one from the other. They accepted that trade mark owners modernised their marks and that it was unreasonable to expect every slight change to be re-registered. However, in this case, the change was too great and the mark in use was too different in essential elements from the registered mark to establish genuine use of the latter.

Comment

This case is a reminder to those who register and maintain figurative trade marks that they should remain aware of changes made to those marks by marketing colleagues and that they should always re-register the new forms of the marks unless the changes made are of a very minor nature.

CTM APPEAL BOARDS

Similarity of Pharmaceutical Trade Marks

Comment

It is to be hoped that this is not a rogue case. For the first time, an OHIM decision has recognised the public safety issues that surround trade marks in class 5 and the marks involved have been compared against this background. No doubt OHIM's Opposition Divisions will continue with their present disastrous practices, in respect of the comparison of pharmaceutical trade marks, until a definitive judgement along the lines of the above case is issued by the ECJ. However, the Tempovate decision is still a big step in the right direction.

Comparison of Trade Marks

We have noted a number of interesting appeals in which marks of various types have been compared.

The Appeal Board disagreed. In their view, the average UK consumer would not understand the meaning of Pagine Gialle and would therefore not make any link with the earlier mark Yellow Pages. They therefore dismissed the opposition. In a related case, (Imporelo v Victor Güthoff), the CTM mark at issue was a combination of the word Kuatro and a K Device. The K device was about four times as large as the word. The opponent relied on an earlier CTM registration for Quattro. It was accepted by the Board that both kuatro and quattro meant four. The earlier registration covered goods in classes 3 and 16 that were identical or similar to certain goods claimed in the later CTM application. The Appeal Board rejected the opposition on the following basis:

Visually, the marks were not similar because the letter K dominated the mark applied for.
Phonetically, if the letter K was not taken into account, the marks were similar.
Given the meaning of Kuatro and Quattro, both marks were conceptually weak which would mean that consumers would pay more attention to the distinctive K device in the later mark.
The average consumer when confronted by both the two marks separately would recall the K Device in one mark and the word Quattro in the other mark. The final case (Claudia Oberhauser v Petit Liberto), involved a CTM application for the trade mark Fifties covering denim clothing in class 25. The opposition was based on a Spanish trade mark registration for Miss Fifties & Device in respect of inter alia clothing. Before the Opposition Division, the two marks were found to be visually and conceptually dissimilar. However, because the Division believed that Spanish consumers would find the word Fifties to be the dominant verbal element in the earlier mark, they decided that the two marks were phonetically similar. Therefore, taking into account the identity of the goods, the possibility of imperfect recollection and the fact that clothing is often ordered verbally, the Opposition Division found that, despite the visual and conceptual dissimilarities of the marks, there was a likelihood of confusion. They therefore found for the opponent. The applicant appealed. The Board of Appeal agreed with the Opposition Division that the two marks were visually dissimilar. However, they disagreed with the Opposition Division's findings on phonetic and conceptual similarity. In the Appeal Board's view, the two marks were phonetically dissimilar, but conceptually similar. According to the Board, the dominant feature of the opponent's mark was the phrase Miss Fifties. This would be the aspect that was remembered and understood, the understanding being enhanced by the presence of a young woman in the earlier mark. This, in turn, would lead the average Spanish purchaser of clothing to think that Fifties denim clothing was sold by the same concern as that responsible for Miss Fifties clothing. On this basis, the appeal was dismissed.

This case is one of the first OHIM oppositions to be appealed further to the Court of First Instance.

Comment

Similarity of Goods and Services

OHIM's practice on the similarity of goods and services is still developing. In the past few months, we have noted the following decisions:

Goods/Services found similar
- Oils (class 4) similar to paints, varnishes, preservatives (class 2) (Fuchs Petrolub v Christian Bay)
- Veterinary preparations similar to pharmaceutical preparations (STADA Arzneimittel v Francisco Picas Guiu)
- Financial software similar to Financial services (Lombard Risk Systems v Lombard North Central)
- Class 18 goods similar to Class 25 goods (Camomilla v Ciro Di Natale)
- Footwear similar to clothing (Avex v Adolf Ahlers)
- Non-alcoholic beverages (class 32) similar to beer (Karlsberg Brauerei v Mystery Drinks)
- Beverages (class 32) similar to Provision of food and drink (Club Aquarius v Coca Cola)
Goods/Services found dissimilar
- Audio speakers not similar to Parts of computers (Diamond Audio Technology v Speak Software)
- Foodstuffs (classes 29 and 30) not similar to Provision of food and drink (Danske Familierestauranter v H. Redlefsen)
- Foodstuffs (classes 29 and 30) not similar to Non-alcoholic beverages (class 32) (Rudolf Wild v Industrias Revilla).

Comment

As a result of ECJ case law, which is followed with an almost religious zeal by OHIM, the definition of similarity of goods and services can depend, to a considerable degree, on the distinctiveness or otherwise of the earlier mark. The more distinctive the earlier mark, the wider should be the definition of the similarity of goods and services. For less distinctive marks, the definition of similarity (of goods and services) should conversely be narrower. The writer has never understood this. In his view, goods/services are either similar or they are not. The nature of the earlier mark should have no effect on this. Having said which, we have to live in the world as it is, rather than the world as it should be.

Trade Mark Dilution

The following two OHIM Appeal Board decisions show that it is possible for an opponent with the right type of evidence to prevent the registration of a later, similar mark covering dissimilar goods.

In so far as the CTM application covered bleaching preparations and similar corrosive class 3 products, it was highly probable that the association of such (class 3) products with Lipostat anti-cholesterol products would negatively affect consumers' perception of the qualities and possible effects of their (Lipostat) medicine.
In so far as the CTM application covered perfumery, hair lotions and similar cosmetic products in class 3, their distribution was through the same trade channels as the opponent's medicine. It was therefore likely that at least part of the relevant public would assume that a Lipostatin cosmetic product had either an effect that was complementary to the medicine or at least a standard of quality comparable with Lipostat. The use of the trade mark Lipostatin on such class 3 goods would therefore take unfair advantage of the reputation of Lipostat in Ireland and the UK.

The evidence showed that:

In a related French Court case the Court had accepted that the CTM opponent had a considerable reputation in France in relation to printed matter and that (in France) the distinctive power of the trade mark Cosmopolitan extended beyond printed matter and, in particular, into other fields such as clothing, shoes and accessories.
The French version of Cosmopolitan magazine regularly contained a large number of advertisements for perfumery and cosmetics.
The monthly sales of Cosmopolitan magazine in France were about 240,000 copies. (This was an independent survey).

On this basis, the Opposition Division accepted that Hearst had established the necessary reputation in France. They also found, not surprisingly, that the two marks were similar. The Opposition Division then proceeded to consider the question of unfair advantage/detriment and due cause. They ruled as follows:

The use of Cosmopolitan Cosmetics on Class 3 goods was likely to damage the distinctiveness of the earlier mark Cosmopolitan by weakening its distinctive and attractive power as a reputed mark for a magazine.
The use of Cosmopolitan Cosmetics on Class 3 goods was likely to take unfair advantage of the magazine's reputation, since the general reader would be led to associate the new mark with the earlier mark, given the regular appearance of cosmetic/perfumery advertisements in the magazine.
The burden of proving that a CTM applicant could use his later mark with due cause fell upon the CTM applicant. In the present case, Mühlens had provided no such evidence.
The opposition succeeded and the CTM application should be refused in its entirety.

The applicant appealed, but the appeal was dismissed. The Appeal Board agreed with the reasoning of the Opposition Division and also commented as follows on the issues raised:

In order to establish reputation, what was relevant was how many people amongst the relevant public knew the trade mark rather than how many bought the marked product.
It was reasonable to assume that a much larger proportion of the relevant French female public knew about Cosmopolitan magazine than the circulation figures suggested. The threshold for achieving the reputation required under Article 8(5) had therefore been met.
In the absence of complete information about the French Court case, that decision had to be treated with the utmost caution.
In respect of the applicant's argument that their mark had been selected innocently and therefore with "due cause" since it was inspired by the name of their affiliated German company, Cosmopolitan Cosmetics GmbH, the Board found that the inclusion of the trade mark in the name of a company incorporated in one country (Germany) could not be regarded as due cause for using a trade mark in another country (France, where the opponent had their prior rights).

This opposition has been appealed further to the Court of First Instance.

Comment

The Cosmopolitan case shows that an opponent who can:

Establish their reputation through independent sources (a company that monitored magazine sales in France), and
Show a link between the earlier goods and the CTM goods (the link being the cosmetics/perfumery advertisements that regularly appear in Cosmopolitan magazine) has a good chance of succeeding under Article 8(5) in a CTM opposition.

Distinctiveness of pharmaceutical product get-up

Two recent appeals have shown how difficult it is to obtain registration for the get up of pharmaceutical dosage forms before OHIM.

In the second case (G.D. Searle v OHIM), the CTM application (no. 1299833) was for Celebrex capsules which have two parallel blue stripes at either end of the capsule. The applicant put forward evidence that the use of such parallel stripes at either end of a pharmaceutical capsule was extremely unusual. Once again, however, the appeal was dismissed. The Board simply took the view that the stripes were no more than a minor decoration of the capsule rather than an indication of origin.

Comment

Evidence of Use

Comment

CTM OPPOSITION DIVISIONS

Opposition on the basis of a Family of Marks

In the last issue of Make Your Mark, we discussed an opposition (Novartis Nutrition v Lifesource International) in which the opponent unsuccessfully based the opposition on his claim to a monopoly in the suffix -source. The Opposition Division decided in that case that a claim to rights in a family of marks all containing a common feature could only be established by showing that the relevant EU public exclusively associated the common feature with the opponent in the market. Owning a series of related marks on the relevant trade mark registers was not enough.

We have noted a recent opposition (British Telecommunications v Orange Personal Communications Services) in which the opponent (Orange) succeeded, at least in part, because they were able to establish a significant reputation in the UK market in such a common feature.

In this case, the mark opposed was Talk 21 for electronic mail services in Class 38. The opponent relied primarily on:

An earlier UK trade mark registration for a series of thirty two marks, including Talk 210, each mark being a combination of the word Talk and either a two or three digit numeral. This registration claimed services identical to those claimed in the CTM application.
Survey evidence which established, to the satisfaction of the Opposition Division, that, in the UK mobile telephone market, a significant proportion of consumers associated trade marks which were a combination of Talk and either two or three numerals with Orange. The opponent had in fact used marks such as Talk 15, Talk 60, Talk 200 and Talk 360, but not Talk 210.

On this basis, the Opposition Division found that Orange's ownership of such a family of marks increased the distinctive power of their (unused) earlier mark Talk 210. Further, the fact that both Talk 21 and Talk 210 had the same structure (Talk plus a numeral) and were visually and phonetically similar, led the Opposition Division to consider the two marks confusingly similar. On this basis, the opposition was upheld.

Comment

This opposition shows that it is possible to establish trade mark rights in a common feature (Talk plus two or three numerals) before OHIM. In order to do so, however, convincing public survey evidence is, almost certainly, required which shows that the relevant public associates the common feature exclusively with the opponent.

Ideally, a survey should also be conducted aimed at proving that the applicant's mark is linked by the public with the opponent rather than the applicant.

Comparison of Marks

In this opposition (Blue Rose v gardeur) , the CTM application (no.1153741) was for a stylised letter g in a circle in respect of, amongst other goods, clothing. This application was opposed on the basis of an earlier CTM registration (no.476952) for a stylised letter g in a black rectangle covering identical Class 25 goods.

As far as the Class 25 goods were concerned, the opposition was dismissed because the Opposition Division found the marks to be distinguishable visually and conceptually even though they were phonetically identical. As far as the visual and conceptual aspects were concerned, both marks contained the letter g, but then the earlier mark would be perceived as a black square, whilst the later mark would be seen as a circle. In the case of such figurative letter marks, protection was sought for the specific manner in which the letter was represented. This ought not to lead to a monopoly in the letter per se.

Comment

This decision should be contrasted with the Avex v Adolf Ahlers appeal discussed at p.9 of this issue. The only way of reconciling these two decisions is to assume that in the Avex appeal, the fact that both marks consisted of a white letter on a black background made the difference. This does show however the somewhat unpredictable nature of oppositions based on figurative letter marks. Perhaps the most surprising feature of both cases is that all four marks were accepted as distinctive by OHIM in the first place.

CTM CANCELLATION DIVISIONS

Bad Faith

A recent action (Gillette v Warner-Lambert) seeking the invalidation of a CTM registration contained some interesting comments on bad faith. The CTM registration was for the three letter mark dlc in respect of razors and similar in Class 8. The applicant to invalidate (Warner-Lambert), sought to cancel the registration under Articles 7(1)(b), (c) and (d) of the CTM Regulation on the basis that dlc was an acronym that was commonly and widely used in the relevant trade, standing for "diamond like carbon". Warner-Lambert also provided evidence to show that such diamond like carbon was deposited as a film or coating on metals and this served to enhance the hardness of the metal, as well as its resistance to friction. This coating process was particularly useful for cutting instruments, such as razor blades.

The Cancellation Division invalidated the registration under Article 7(1)(d) in view of the well established generic meaning of the term dlc. They then proceeded to make the following comments on the filing of the CTM application for DLC by Gillette: "The CTM proprietor admits that he had been aware that the natural way of abbreviating diamond like carbon is dlc. If this is weighed against the overall background, namely that dlc was already generically established in the respective industrial sector, the only conclusion to be drawn is to hold that in such a situation it is dishonest to attempt to block the use of the term at issue for other competitors&hellip It can, however, (in this case) be left undecided whether these circumstances alone will suffice for concluding bad faith&hellip"

Comment

Under the CTM system it is not possible to oppose an application on the ground that the application was filed in bad faith. Such bad faith actions can only be brought under Article 51(1)(b) of the Regulation once the CTM has been granted. Another aspect of the CTM Regulation is that an accusation that a sign is a generic trade mark can be resisted by a CTM proprietor if he can provide evidence that the sign has acquired a trade mark significance through use made in the European Union both prior to and after registration. It is in this respect that the above remarks of the Cancellation Division are of interest. This is because a bad faith objection cannot be overcome by subsequent evidence of use of the sign as a trade mark. Thus, even if a trade mark proprietor has, through substantial use after the date of registration, turned a generic sign into an indicator of origin, it is conceivable that his CTM registration could still be invalidated if, at the date of application, the sign was a well established generic term and was therefore registered in error by OHIM. It remains to be seen whether this theory is followed generally by OHIM.