EUROPEAN PERSPECTIVES

Alicante Abstracts

This edition of Make Your Mark concentrates on the continuing development of OHIM practice before the ECJ, at the CTM Appeal Board and Opposition Division levels and also within the CTM Cancellation Division.

 

EUROPEAN COURT OF JUSTICE

Two more appeals against OHIM’s rejection of trade marks have been heard by the ECJ (Court of First Instance). In the first appeal (Messe München GmbH v OHIM), the CTM application was for electronica (in Helvetica script) covering "trade fairs, trade conferences and trade fair catalogues, all featuring electronic components and assemblies". The CTM Examiner, noting that there was a Spanish word electrónica meaning electronics, rejected the mark under Articles 7(1)(b) and (c), and this rejection was maintained by the Second Board of Appeal. The applicant appealed to the ECJ.

Before the Court, the following arguments were put forward in favour of registration:

• The mark consisted of a particular graphic representation of the word and would normally be expected to begin with a capital letter.
• An objection under Article 7(1)(b) should only be maintained if the mark possesses no distinctive character whatsoever. The onus should be on the examiner to prove this.
• In relation to trade fair services, the mark should be regarded as a fanciful term.
• An objection under Article 7(1)(c) should only apply where it is imperative that the word should remain available for public use.
• The mark applied for was not identical to the Spanish word electrónica, the accent on the letter o being missing.
• The reference language for the field of electronics was English rather than Spanish.
• The mark was registered in the Benelux, France, Italy and the (former) East Germany.

The Court, not altogether surprisingly, gave short shrift to all of these arguments. In the ECJ’s opinion

• The mark should be regarded as a word, rather than a figurative, mark.
• The mark was almost identical to the Spanish and Portuguese word electrónica meaning electronics. The absence of the accent did not render the mark capable of distinguishing the applicant’s goods and services from those of others.
• All of the goods and services claimed related to "electronic components and assemblies" and it therefore followed that the mark was both non-distinctive and a word (in Spanish and Portuguese) that describes an essential characteristic of the goods and services claimed.
• The existence of EU national registrations did not affect the issue, particularly as there was neither a Spanish nor a Portuguese registration for the mark. The CTM regime was self sufficient and applied independently of any national system.
• Since the mark was unacceptable under Articles 7(1)(b) and (c) in at least part of the EU, namely in Spain and Portugal, the application was rejected.
• An offer by the applicant to limit all of the goods and services claimed by the addition of the words, "all such goods and services for a trade fair held in Munich" was found not to affect the outcome, since all of the goods and services claimed were still related to electronics.

In the second case (Harbinger Corporation v OHIM), the mark applied for was Trustedlink and the goods and services claimed were a wide variety of "e-commerce related products in Classes 9, 35, 38, 41 and 42". The mark had been rejected as non-distinctive by the CTM Examiner, a decision that was upheld by the Third Board of Appeal. The applicant once again appealed to the ECJ.

The applicant argued against the Article 7(1)(b) objection as follows,

• The absolute grounds for refusal in Article 7 of the CTM Regulation must be interpreted in conjunction with each other, so that a trade mark should be accepted as distinctive if it is neither usual nor descriptive. Thus, if an absolute ground of refusal is to be sustained, the mark must consist exclusively of such usual or descriptive terms.
• The word trusted was not in common use in the e-commerce field. Furthermore, the word link was not a generic term in relation to information technology services. The existence of a US trade mark registration for Trustedlink covering the goods and services claimed attested to the non-generic nature of link.
• Trustedlink was an arbitrary combination of English words that was not found in any dictionary.
• The goods and services claimed were directed at sophisticated consumers rather than the ordinary public.

The ECJ rejected all of the applicant’s arguments and confirmed the Appeal Board’s decision. The Court commented as follows,

• Each of the absolute grounds for refusal has its own sphere of application. They are neither interdependent nor mutually exclusive and can therefore be applied both separately and cumulatively.
• The word link must be regarded as generic in relation to Internet or e-commerce related goods and services. It was one of the few terms available to designate the essential technical feature of this communication technology.
• The mark Trustedlink therefore simply meant a reliable link. Coupling the two words together did not alter this finding, neither did the absence of the phrase from dictionaries affect the position.
• It followed that the mark Trustedlink was devoid of any distinctive character and was unregistrable under Article 7(1)(b) of the Regulation.
• National trade mark registrations, be they within or outside the EU, do not bind OHIM. It followed that they (OHIM) were free to reach a different conclusion on the merits of this application from that reached by the US Trade Mark Office.

 

Comment

These two decisions confirm the findings of the ECJ in the three previous appeals brought against OHIM’s rejections of word marks, Baby-Dry for "nappies", Companyline for "insurance and financial affairs" and Options for "insurance, warranty, financing, hire-purchase and lease purchase services".

It is now clear, from the decisions involving the marks Options and electronica, that a trade mark will be viewed as non-distinctive by both OHIM and the ECJ if it lacks distinctiveness in one of the EU’s major languages, French in the case of Options and Spanish in the case of electronica.

Earlier CTM Appeal Board decisions, such as the rejection of Optima, meaning "the very best" in Portuguese, for Class 10 goods and Velona, meaning "needle" in Greek, for depilatory products, have shown that OHIM will also reject marks even if they are non-distinctive in only one of the EU’s minority languages. Portugal, for example, accounts for just 3% of the EU’s total population. It has still to be decided at the ECJ level whether such a rejection based on a minority language alone is justified. However, it is believed that the ECJ will also confirm OHIM’s position in relation to such "minority language" rejections. An applicant, faced with such a non-distinctiveness (or related) objection, can, of course, seek to overcome it by filing evidence of acquired distinctiveness in the relevant part of the EU. If no such evidence exists, perhaps the only argument that might overcome the objection is that the goods and/or services claimed are highly specialised and therefore aimed at sophisticated consumers. Such an argument did succeed in an appeal involving the trade mark Maxima, meaning "the greatest" in Portuguese, for medical devices.

This "sophisticated consumer" argument was, of course, run unsuccessfully in the Trustedlink case. This decision, together with the earlier Baby-Dry and Companyline cases, confirms that the average level of distinctiveness required for valid registration as a CTM should not be thought to be unreasonably low. OHIM’s approach to the examination of marks is now much more consistent and the number of unjustifiable acceptances has been considerably reduced. This is extremely important because it is likely that, in the longer term, the distinctiveness standard set by OHIM (as confirmed by the ECJ) will be followed by all the national Trade Mark Offices and, it is to be hoped, Courts in the EU.

Postscript: Just prior to going to press, five more ECJ decisions on the registrability of trade marks were published. Two of these appeals were brought by the German company Taurus — Film GmbH in relation to the marks Cine Action and Cine Comedy. These marks had been rejected by the Third Board of Appeal in relation to a wide variety of services in Classes 38, 41 and 42. The ECJ maintained the rejection for services directly associated with films or the production or transmission of such films. However, the Appeal Board’s decision was reversed in relation to the services which were of a technical, legal, management or organisational nature.

The third, recently reported ECJ decision (The Sunrider Corporation v OHIM) involved the trade mark Vitalite for various "medical, nutritional and dietetic products, as well as baby foods and mineral/aerated waters". All of these goods had been rejected by the Second Board of Appeal, under Articles 7(1)(b) and (c) of the CTM Regulation, primarily on the basis that the mark was the equivalent of the French word "vitalité" meaning "energy" or "vitality". The ECJ maintained the Article 7(1)(c) objection to the mark for the claimed medical, nutritional and dietetic products. However, it reversed the Board of Appeal’s decision and allowed the CTM application to proceed for "baby foods and mineral/aerated waters". In the ECJ’s view, the French word "vitalité" did not directly and immediately inform the consumer of any of the characteristics of the allowed goods. For these goods, the mark was merely suggestive.

In the fourth decision (Mitsubishi Hitec v OHIM), the ECJ maintained the Third Board of Appeal’s rejection of the trade mark Giroform for certain Class 16 goods including "printed matter". Given the well known meaning of "giro" as a system of credit transfer between banks and post offices and the close association of forms with this system, this decision is hardly surprising.

In the final and perhaps most interesting decision, the ECJ overturned the Office’s rejection, under Article 7(1)(c), of the trade mark Doublemint for a variety of goods including chewing gum in classes 3, 5 and 30. In the Court’s opinion, the composite term Doublemint had numerous possible meanings and therefore, when applied to the goods claimed, was ambiguous and merely suggestive. It followed that the multiplicity of possible semantic combinations precluded the consumer from remembering one of them in particular. Accordingly, the mark did not enable the relevant public immediately and without further reflection to detect the description of a characteristic of the goods claimed. For these reasons, the application was allowed to proceed to publication.

 

CTM APPEAL BOARDS

Similarity of Pharmaceutical

Trade Marks

Three Appeal Board decisions have recently been reported which considered OHIM’s policy on the comparison of pharmaceutical trade marks.

In the first case (Astra v Merckle), the CTM application was for the mark Imbun and claimed inter alia "pharmaceutical preparations". The earlier mark was Imdur and was again protected, in Denmark, Finland, Greece, Portugal and the UK, for "pharmaceutical preparations".

The CTM application had been unsuccessfully opposed by Astra, the Opposition Division taking the view that, in relation to pharmaceutical products, it could be assumed that all those involved, namely doctors, pharmacists and patients, took particular care when dealing with and distinguishing between such products. The opponent appealed. On appeal, Astra put forward the following arguments,

• Many prescriptions are still hand written and the marks Imbun and Imdur could easily be visually confused in such a situation.
• In the interest of public safety, a more stringent test should be applied when comparing the visual similarity of pharmaceutical trade marks.
• Patients are often ill or suffering pain when purchasing pharmaceuticals and their attention to detail is therefore greatly reduced.
• The use of Imbun and Imdur in close proximity to each other in hospitals and nursing homes could be confusing and could give rise to serious consequences.
• An analysis of the two marks showed an identical prefix "Im-", and letters "b" and "d" and "n" and "r" that could easily be confused, especially when handwritten.
• The EMEA (the European authority for licensing drugs) had issued draft proposals in which they stated that "as a general rule of thumb, if there is a minimum of three distinguishing letters (between trade marks), it is unlikely that it will be considered that there is a risk of confusion in writing".

In the face of these arguments, the Second Board of Appeal confirmed the findings of the Opposition Division and allowed the CTM application to proceed to registration. They stated that "the possibility of confusion is unlikely because of the intervention of doctors who prescribe the pharmaceutical products and the pharmacist who dispenses them. The average consumers of pharmaceutical products are very careful and attentive to small differences between trade marks and therefore the trade marks (Imbun and Imdur) can be tolerated without there being any risk of confusion".

In the second case (Dr. Grandel v Parke-Davis), the marks at issue were Bonolat (CTM application) and Ponalar (earlier German registration). The CTM application claimed, amongst other goods, "pharmaceutical preparations", whilst the earlier German right covered "Analgesics and anti-inflammatory pharmaceutical preparations". During the opposition proceedings, the CTM applicant excluded such "analgesics and anti-inflammatories" from his specification. The opposition was decided in favour of the CTM applicant and the opponent appealed. Once again, the Second Board of Appeal agreed with the Opposition Division and rejected the opposition. Their reasoning was similar to that set out in the Imbun/Imdur case discussed above.

In the third case, (Choay v Boehringer Ingelheim), Boehringer had filed a CTM application for the trade mark Evasil, the Class 5 specification of which was eventually restricted to "Pharmaceutical preparations and dietetics mainly consisting of plant extracts for the treatment of pre-menstrual and climactorial disorders". This application was opposed by Choay on the basis of earlier French and Portuguese registrations for Exacyl covering "Antifibrinolytic pharmaceutical products". The opposition was rejected on the basis that the two marks were not confusingly similar and that a high threshold exists before confusion can be established between marks for pharmaceutical products. The opponent appealed.

On appeal the opponent argued that

• The two products were both aimed at treating haemorrhagic disturbances and were therefore directed at the same end users.
• The two marks were visually, phonetically and conceptually similar. In the latter case because neither had any meaning.
• A likelihood of confusion should be more readily accepted when considering medicines.

The First Board of Appeal confirmed the rejection of the opposition, although in less categorical terms than the Second Board. In this case, the First Board reasoned as follows:

• The similarity of the goods should not be overestimated. Drugs to treat haemorrhaging are not identical with drugs that treat pre-menstrual or menopausal disorders. For a given medical condition, it is unlikely that the two types of product would be interchangeable. Clinical diagnosis would indicate the use of one product rather than the other.
• In the EU there are two contrasting positions taken on the consideration of similarity between pharmaceutical trade marks. In some Member States, the view is taken that a likelihood of confusion should be accepted more readily in the case of medicines because of the serious consequences that can ensue if the patient takes the wrong drug. In other countries, however, the view is taken that pharmaceutical trade marks will not be confused so easily because the consumer has the assistance of qualified professionals and is particularly attentive to differences between marks because of the importance of taking the right product. In the Board’s view, those opposing views are likely to cancel each other out in many cases, with the result that no special criteria need be applied to pharmaceutical trade marks.
• In certain cases, it is possible to envisage a patient suffering serious consequences as a result of trade mark confusion. In such instances, there would be a strong argument for requiring clear differentiation between the marks. However, given that Exacyl is a prescription only drug and Evasil is an over the counter drug, such confusion is unlikely in the present case. This was an example of a situation where the intervention of qualified professionals would reduce the likelihood of mistakes.

 

Comment

As we have argued before, the CTM Opposition Divisions’ and now the Second Board of Appeal’s practice in the Class 5 area is seriously flawed and should be reviewed as a matter of urgency at ECJ level. (It is understood that a CTM opposition involving two class 5 rights, the conflicting marks being Agarol and Acamol, has been appealed to the Court of First Instance.) The First Board of Appeal’s recognition that, in some circumstances, trade mark confusion between drugs could lead to serious consequences is some consolation, but it is not enough. Drugs are poisons, not sweets. The death of just one patient because of an avoidable instance of trade mark confusion, is one too many. The comparison between marks in the Class 5 area should always be more severe than in other commercial areas. Furthermore, a comparison of the goods in this area should also be made with caution. For example, an argument along the lines that the earlier mark is registered for an antibiotic used in geriatric medicine whilst the later CTM application is for a drug used to treat babies with breathing difficulties and therefore can be distinguished from the earlier right should always be rejected. Even though the two products undoubtedly have different end users, the administration of the wrong drug to the wrong type of patient would, in these circumstances, be catastrophic. The First Board at least appears to recognise this.

Although OHIM’s present policy in this area is unfortunate (to say the least), the research industry can take heart from the fact that no health authority with any wish to maintain public safety should agree to allow the trade marks Imbun and Imdur to co-exist on the market for prescription pharmaceuticals. The same can be said of the trade marks Ontak and Ostac (see Make Your Mark Spring 2000) which were previously found to be non-confusing by the Opposition Division. It is one thing to obtain a CTM registration for the mark, it is another thing entirely to obtain official permission to use that mark in the European Union.

 

Decisions on Distinctiveness

Large numbers of Appeal Board decisions on registrability continue to be published. Some of the most interesting are set out below.

• Two letter trade marks are now generally accepted as inherently distinctive by OHIM. However, if such a mark is an acronym with a direct reference to the goods and services claimed, it will not be viewed as distinctive if the acronym is known to a substantial part of the relevant public. On this basis, the marks HG (high grade), DS (digital signal), CR (chromium) and XD (extra dense) were refused for goods in Classes 1 and 9 and services in Class 40.
• Three digit numerals are also generally being accepted as inherently distinctive. Once again, however, they must not have any meaning in relation to the goods to proceed. Thus, an application for the trade mark 850 for motor cars and model motor cars was rejected because it was said to signify the size of a car engine. On the other hand, an application for 750 covering the same goods was allowed to proceed because this number was found not to have such significance.
• Combinations of one letter and one numeral are also now being accepted by OHIM provided they have no direct reference to the goods or services. By contrast, combinations of a non-distinctive term and a numeral fare less well. For example, an application to register CAM2 for "computer software for use in manufacturing" was rejected on the basis that CAM is an acronym for "computer aided manufacture". (This rejection was made in the face of the earlier registration of the mark X-CAM for "computer software").
• Further, the trade mark SAT.2 for services in Classes 38, 41 and 42, including broadcasting services, was rejected on the basis that SAT would be seen as an abbreviation for "satellite" and numerals were widely used in the broadcasting area.
• One type of mark that will definitely struggle to be accepted as distinctive by OHIM is a combination of Euro — and a non-distinctive element. This was confirmed recently by the rejection of the trade mark Euroline for "various types of measuring apparatus" in Class 9. The First Board found that since the English word "line" is in everyday commercial use and means a range of goods or services, the joining together of Euro- and -line does not produce a distinctive trade mark. Evidence that Euroline word marks had been registered in every EU country except Ireland did not persuade the Board to alter its view.
• Another type of mark that often fails to find favour with OHIM Examiners (and Appeal Boards) is a combination of the word Smart and a non-distinctive term. This has been confirmed by the First Board’s rejection of Smart Album for "A device to record and file digital images….". This decision also highlights the continuing inconsistencies that are found in OHIM’s examination practice, for it is noted that the following marks:

Smart (Class 12), Smart Media (Class 9), Smart Bed (Class 20), Smart Subscriber (Classes 9, 41, and 42) and Smart Clamp (Class 7) have all been registered. (These are only examples of numerous "Smart" marks that are on the OHIM Register).

• An area in which both CTM Examiners and Appeal Boards are more consistent is in their refusal to accept the get up (i.e. shape and colour) of tablets as inherently distinctive, when the shape is conventional (e.g. round or rectangular) and the tablet consists of less than three colours.

Another failed attempt, this time by Unilever, to protect such a tablet get up was recently reported. In this case, the product was a round dishwashing tablet that consisted of two concentric circles, the inner circle being darker than the outer circle.

The Applicant provided evidence that the concentric circle design was unique in the EU, all other dishwashing tablets being horizontally layered tablets. The First Board was not swayed by this argument. In the Board’s view, there was a strong interest in keeping basic shapes and colours available for use by all. Furthermore, the "concentric circle" approach was not inherently more distinctive than the "horizontal division" approach. A consumer, on seeing the applicant’s dishwashing tablet would not assume that its configuration conveyed any information about the trade origin of the product. It was more likely that the get-up would only convey the message that the tablet contained two ingredients.

• It appears that if a trade mark is found to be non-distinctive in English, the use in a substantial part of the United Kingdom and Ireland will be necessary in order to overcome that finding. This was confirmed in an appeal relating to the trade mark Only Jeans Wear for inter alia Class 25 goods. The Examiner had rejected the mark as non-distinctive for such (Class 25) goods and the applicant appealed. The First Board agreed with the Examiner. They also found that evidence of use of the mark in Ireland and Northern Ireland was not sufficient to overcome the finding of lack of distinctiveness. Finally, the Board also found that the evidence of use provided by the applicant related to a mark that was substantially different from the mark applied for. The mark that was actually in use was a device mark in which the word Only was dominant and the words Jeans Wear were used in a descriptive sense.

 

Comment

The CTM Office has now been open for five years. After an initial period in which major inconsistencies in examination practice could be identified, the situation has improved considerably. This improvement can be explained both by CTM Examiners becoming more experienced and by the numerous decisions that have been issued by the three Appeal Boards. However, inconsistencies in practice remain, as can be seen by comparing the marks that appear in the CTM Bulletin with certain Appeal Board decisions. The discussion of "Smart" marks above is merely illustrative of a broader problem.

It is clear that, in order to reduce these inconsistencies and also to assist EU trade mark practitioners when advising clients, a CTM Manual of Examination Practice is desperately needed. After five years, broad statements of examination policy are no longer adequate. It is time for specific questions of practice to be resolved and for the answers to be made widely available. OHIM certainly has the funds to produce such a manual, it must now also find the will to do so.

 

Retail Services

In the second reported Appeal dealing with the registrability of "retail services", the mark applied for was Zara. The CTM Examiner’s refusal to accept the application was again referred to the Second Board of Appeal, as in the earlier Giacomelli Sport case (see Make Your Mark, Spring 2000). The Second Board again reversed the Examiner’s decision and remitted the application for reconsideration. Once the applicant has submitted a more specific wording for its services, this application should be accepted.

 

Comment

Even though the Second Board has twice overturned the Examination Division in relation to the acceptability of "retail services", at the time of writing (31 January 2001) a general policy accepting such claims has not yet been formally implemented by OHIM at the examination level. CTM applications containing claims to such services continue to be suspended, the only alternative being to appeal and hope that the case is referred to the Second Board. The reason given by OHIM for this unsatisfactory position is that they have been seeking a consensus amongst the EU’s national trade mark offices on this matter before issuing a formal policy statement. It is understood that the French and German offices continue to refuse claims to "retail services" and, at present, it seems unlikely that they will change their position.

There are therefore two ways forward. One way would be for a French and a German applicant to appeal national refusals of "retail services" to the ECJ. If the ECJ overturned these national refusals then the French and German national offices would have to amend their practice. The other way would be for OHIM to take the lead. If they began to accept claims to "retail services", any trade mark owner wishing to protect such services in France and Germany would clearly file a CTM application rather than a national application in one of those two countries. This would put considerable pressure on the French and German offices to conform. It is to be hoped that OHIM will choose the bolder, second way forward in the very near future.

Whilst the controversy about the registrability of "retail services" continues to exercise OHIM’s policy makers, another reported case offers CTM applicants an interesting alternative option. In this case Pick Systems had applied to register the trade mark Advanced Pick for computer hardware (Class 9), printed matter (Class 16) and distributorship services for computer software (Class 42). The Examiner refused to allow the Class 42 services to proceed since they were the equivalent of "retail services".

In response the applicant sought to amend the distributorship services to "computer software" in Class 9. The Examiner did not reply to this proposed amendment and the application proceeded to registration without either "computer software" or the original Class 42 services. The applicant sought to correct the registration but this was refused.

They then appealed. The First Board of Appeal decided that the Examiner was wrong not to reply to the applicant’s proposal and was also wrong not to accept that amendment. They therefore allowed the introduction of "computer software" to Class 9.

 

Request for Proof of Use in Oppositions

In the provisions dealing with the conduct of oppositions, the CTM Regulation does not provide for a time limit to request proof of use of the earlier mark on which the opposition is based. In a recent case (Sidi Sport v Francisco Gascon), the Third Board of Appeal noted that, whilst it was open to the Opposition Division to set a time limit by which the adversarial stage of proceedings should be considered closed, the applicant had until the expiry of that deadline to request proof of use of the opponent’s mark.

 

Filing Further Evidence on Appeal

It was established at an early stage that appeals from Article 7 objections raised by a CTM Examiner in ex parte proceedings could contain further evidence, particularly evidence of use of the mark in the EU. The new evidence is remitted to the Examiner for consideration. However, it can be introduced for the first time at the appeal stage.

By contrast, a number of recent appeals against adverse opposition decisions have established that it is not possible to introduce new evidence (or arguments) at the appeal stage of such inter partes proceedings, unless the opponent can show that there was a valid reason for failing to produce the evidence within the period specified by the Opposition Division. For example, in the case of ILS Institut für Lernsysteme v ELS Educational Services, the opponent had been asked (at the opposition stage) to file evidence of use of his mark in Germany. This he had done but only in relation to "the development and running of correspondence courses". The opposition was therefore decided in the applicant’s favour and on the basis that only the "used" services were protected by the opponent’s German registration. The opponent appealed and attempted to introduce further evidence of use of its mark in Germany. The Third Appeal Board refused to admit the additional evidence and decided the appeal, once again in favour of the applicant, on the basis of the facts that had been before the Opposition Division.

In another appeal from an opposition decision (Duke International Mode v Duke University), the opposition had originally been decided in favour of the applicant (the University) on the basis that the opponent’s evidence was insufficient to establish any genuine use of their mark in the relevant jurisdiction, namely Germany. An attempt at the appeal stage to introduce better evidence was rejected along with the appeal itself. The (Third) Appeal Board also rejected the opponent’s argument that, if the evidence of use provided in the first instance by the opponent proved to be inadequate, he should be given a second opportunity by the Opposition Division to meet the standard of evidence demanded by the Office.

By contrast, in a case (Cosmetica General v International Hair Cosmetics) where the applicant filed observations that included an argument that the evidence of use provided by the opponent was inadequate but, in forwarding those observations to the opponent, the Opposition Division did not expressly draw the opponent’s attention to the applicant’s argument or expressly invite the opponent to furnish further proof of use, the opponent was allowed to bolster his original inadequate "user" evidence at the appeal stage.

 

CTM CANCELLATION DIVISIONS

Absolute Grounds for Refusal

A number of cancellation actions dealing with the validity of trade marks on absolute grounds have now been reported. Four of these decisions are discussed below.

In the first case, (Deutscher Teeverband v Projektwerkstatt), the trade mark Teekampagne (literally the German for "tea campaign") had been registered by Projektwerkstatt for tea. The application to cancel the registration was brought by an association of tea suppliers on the basis that the mark was non-distinctive (Article 7(1)(b)). Both sides had good arguments in favour of their respective cases. On the one hand, Deutscher Teeverband could point to a German Federal Patent Court decision rejecting Teekampagne on the ground that the word needed to remain available for use by competitors of the owner for use in advertising campaigns relating to tea. On the other hand, Projektwerkstatt could rely on a number of successful legal actions they had brought against German third parties who had used either Kampagne or Teekampagne as part of their marks for tea products.

Given this conflicting evidence, the First Cancellation Division took an entirely independent approach relying principally on a detailed analysis of the word kampagne. In particular, they examined twelve German mass-market magazines as well as a number of German newspapers and found the word kampagne used only twice. In neither case was it found in the context of advertising for a particular product from a particular manufacturer.

Having conducted this analysis, they then decided the case as follows:

• When considering the distinctiveness of a trade mark, account must be taken of the overall impression it makes. The division of a combination mark into its constituent elements should be considered only if one part of the mark has no or only a limited ability to distinguish the mark.
• Although the meaning of a word given in a dictionary is important when examining the distinctiveness of a trade mark, the decisive factor should be what the word means to the relevant public. In the case of "tea", the relevant public is the general public.
• The general public may see the use of a marketing term as part of a trade mark appearing on the product itself as unusual.
• The word kampagne can be regarded as an antiquated term in relation to promotion and advertising in Germany.
• The trade mark Teekampagne is therefore not totally devoid of any distinctive character in relation to "tea". It followed that the cancellation action failed.

In the second case, (Minnesota Mining and Manufacturing v Pop Up), the mark at issue was Pop Up for "adhesives for stationery or household purposes" in Class 16. 3M applied to cancel the registration on the ground that the phrase pop up was a generic term in English for stationery products. They provided

• Product catalogues (as well as internet retail sites) illustrating the generic use of the term pop up in relation to the adhesive products of a number of companies.
• Definition of the term from standard English dictionaries.
• Evidence that pop up was generally viewed as non-distinctive by the UK trade mark authorities.

In response, the proprietor argued that their product was an adhesive stick in which the adhesive was pushed up for use. It did not pop up in the traditional sense.

The First Cancellation Division found that the term pop up indicated something which either rose itself or rose from something else. It did not have a different meaning in relation to the goods at issue. It followed that the term was generic and that the registration was cancelled in relation to the Class 16 goods claimed.

In the third case (L’Oreal v Beiersdorf), an application was made to cancel a registration for the mark Poudre Libre Naturelle for "cosmetics". The evidence established that the French term "poudre libre" meant a loose powder that is used for affixing make-up foundation (cream) and that the French word "naturelle", in this context, meant the absence of artificial components. On this basis, the First Cancellation Division found that the sign Poudre Libre Naturelle failed the tests set by both Articles 7(1)(b) and (c) of the Regulation in relation to such natural loose powder. The Division proceeded to cancel the registration in its entirety, given that

• The Office should not be required to draft an amended specification of its own motion.
• A specification covering "cosmetics, except for products consisting of powder" would contain cosmetics for which the sign Poudre Libre Naturelle was deceptive within the meaning of Article 7(1)(g).
• The onus was on the proprietor to offer a positive limitation to his specification which led to a list of products that met all of the requirements of Article 7.

The final case (Societe France Cartes v Naipes Heraclio Fournier), dealing with the question of absolute grounds for refusal, involved a CTM registration for the design of a playing card taken from a Spanish pack. Such a (Spanish) pack consists of 40 or 48 cards and has four suits, coins, cups, swords and clubs. In each suit there are three court cards, namely the Jack, the Knight and the King. The CTM registration at issue related to the King. The cancellation action was based on Articles 7(1)(b), (c) and (d) of the Regulation as well as the argument that the design in question had been the subject of (now expired) copyright protection and therefore, as a matter of public policy, should not be accepted for trade mark protection.

The evidence, some of which was gathered by the members of the First Cancellation Division visiting shops in Alicante to view various sets of playing cards, established that the CTM proprietor’s design was distinguishable from those of other kings in the packs of other manufacturers. It was also established that the design at issue was never seen until the CTM proprietor’s pack of cards was opened and that it merely formed part of a pack of 48 cards.

In spite of this background, the First Cancellation Division confirmed the registration as valid. They made the following interesting comments:

• Even if the CTM proprietor did not intend to use his sign as a traditional trade mark, but merely as a picture card in a pack of playing cards, this did not mean that the mark failed to meet the criteria set by Articles 7(1)(b), (c) or (d) of the Regulation. Whether or not the actual use of the sign constituted genuine use as a trade mark was a question that had to be tested once the registration had passed its 5-year grace period. When examining a mark under Article 7, CTM Examiners enjoyed a certain degree of discretion. The Cancellation Divisions were at the same level as the Examination Division, they were not "superior". With respect to absolute grounds of refusal, cancellation proceedings provide a means of rectifying obvious mistakes. They do not provide the possibility of having a decision replaced by another, different one within the same scope of discretion.
• The CTM proprietor is not seeking to monopolise the King as an element of a Spanish pack, but only a specific design. Given that the possible range of designs for the King is not limitless, however, the scope of protection offered by the CTM must be quite narrow.
• The protection of a former copyright work as a trade mark did not alone constitute bad faith. If such dual protection is viewed as against the public interest, then the law should be amended to reflect this.

 

Comment

It is not possible to oppose a CTM application on absolute grounds, although it is possible to file written observations against the registration of a published application on such grounds (Article 41). Third parties who file such observations are not allowed to take any further part in the registration proceedings, however. Inevitably, given that the observations are reviewed by the same Examination Division that has already accepted the mark, there may be some reluctance to overturn the original decision. In the light of this and also in view of the continuing inconsistent approach of the CTM Examination Division to the examination of marks on absolute grounds, it is extremely important that the Cancellation Divisions take a robust, independent view on these matters. The equal status of the Examination and Cancellation Divisions in OHIM’s hierarchy should not inhibit the latter’s approach. From the decisions reported above, as well as earlier decisions on both bad faith and on the similarity of pharmaceutical trade marks (see Make Your Mark, Autumn 2000), it appears that the First Cancellation Division is developing a sensible approach to the examination of marks on both absolute and relative grounds. Indeed, in the case of pharmaceutical trade marks their approach is much more enlightened than that of the "superior" Appeal Boards. (See under CTM Appeal Board section).

Bad Faith

Under the CTM system, it is not possible to oppose an application on the ground of bad faith. However, once the application has been granted, it is possible, under Article 51(1)(b) of the Regulation, to seek to invalidate the registration on the basis that "the applicant was acting in bad faith when he filed the application……..". This ground can be raised before OHIM or as a counterclaim in infringement proceedings.

A recently reported case (Surene Pty Ltd v Multiple Marketing Ltd) has clarified the type of commercial activities that will be viewed by OHIM as "bad faith".

Surene is an Australian company that manufacturers certain types of confectionery and health food bars under the name Be Natural. The product was first manufactured in Australia in 1992. A year later, Surene obtained an Australian trade mark registration for the mark. Once the Be Natural product had become established in Australia, Surene began to develop a network of distributors to market the confectionery/health bars outside that country. Multiple Marketing was a part of that distribution chain in the UK.

In June 1996, Multiple Marketing filed a UK trade mark application for the trade mark Be Natural covering goods in Class 30. In response, Surene filed their own UK application for the mark and opposed their UK distributor’s filing. Undeterred, Multiple Marketing then proceeded to file the present CTM application.

In the UK, the opposition was decided in favour of Surene on the basis that the application had been filed in bad faith. This decision was issued in April 1999. Three months later, Multiple Marketing took their CTM case for Be Natural to grant. Not surprisingly, Surene then sought to cancel the CTM registration under Article 51(1)(b).

The First Cancellation Division found in favour of Surene and made the following comments on the question of bad faith:

• Bad faith should be judged at the date of the CTM application. It followed that a CTM registration could be cancelled on the ground of bad faith even if it were subsequently assigned to a third party acting in good faith.
• Bad faith is the opposite of good faith, generally implying or involving actual or constructive fraud, or design to mislead or deceive another or any other sinister motive. Bad faith can be understood as "dishonest intention". It may therefore be interpreted as unfair practices involving lack of any honest intention on the part of the CTM applicant at the time of filing.
• Bad faith may be found both in cases where the applicant intentionally submits wrong or misleadingly insufficient information to the Office and where he registers the trade mark of a third party with whom he had contractual or pre-contractual relations.

When an agent or employee applies for the mark, and

Where the applicant has copied a mark being used abroad with the intention of pre-empting the rightful proprietor who intends to trade in the UK.

• Whilst legal decisions of national Offices and Courts are not binding on OHIM, where both the law and the facts are identical, the CTM Office should not make decisions that are at variance with those of national bodies without due cause.

 

Comment

This is a sensible decision which confirms that certain commercial behaviour is unacceptable under the CTM Regulation. It remains to be seen whether the bad faith section (Article 51(1)(b)) will have any teeth in the equally important area of unjustifiably wide specifications of goods and services. This will probably only be resolved once CTM registrations start becoming the subject of counterclaims in trade mark infringement actions.

 

CTM OPPOSITION DIVISIONS

Oppositions Based on Unregistered Rights

Two recent decisions have cast some light on the type of unregistered rights that can be used in CTM oppositions, as well as on how such rights can achieve a successful outcome.

In the first case (Einstein Stadtcafé v The Hebrew University of Jerusalem), the mark applied for was Café EinStein in relation to food and beverages in Classes 30, 32 and 33. The application was opposed by the University under Article 8(4) of the CTM Regulation on the basis that they owned an earlier non-registered trade mark or another sign used in the course of trade of more than mere local significance. The earlier rights relied on were Unregistered trade mark rights in Albert Einstein throughout the EU,

The right to use Albert Einstein’s name and likeness in respect of all goods and services and, in particular, goods in Classes 30, 32 and 33.

To evidence their earlier rights, the University filed copies of part of the late scientist’s "Last Will and Testament" as well as an extract from a 1981 agreement under which all existing IP rights were assigned to the University. They argued that the EU purchasing public would associate the mark and goods applied for with Albert Einstein and thereby his successors in title.

The Opposition Division rejected the opposition. In their view, it was not clear on which type of earlier right the opponent was relying. A person’s name as such was not necessarily a "sign used in the course of trade". If it (the name) was not used in trade then it would not qualify as an earlier right within the meaning of Article 8(4). Similar comments applied to a person’s likeness. The type of signs contemplated under Article 8(4) were company names, business names or similar business and trade-related identifiers. Copyright and personality rights did not qualify as Article 8(4) "signs". These latter rights could be relied on in an application to invalidate a registration. However, they could not be invoked in an opposition.

The Opposition Division also found that the evidence provided by the opponent failed to establish any ownership of non-registered trade marks in any of the EU member states. Such non-registered rights were use based and the opponent had not shown any use of Albert Einstein (or his likeness) in the course of trade anywhere in the EU. The fact that a name was well known was immaterial unless it was well known in connection with specific goods or services.

In the second case (Interprint Rotationsdruck vs Interprint Kungens Kurva), the CTM application was for the trade mark Interprint and in respect of "printed matter" of various types. The application was opposed, under Article 8(4), on the basis of

• A non-registered trade mark Interprint used in the course of trade in Sweden for "printed matter and printing services", and
• The company name Interprint Kungens Kurva AB used in Sweden for a printing business and relatedactivities.

The opponent put forward the following evidence

• A certificate issued by the Swedish printing industry trade association indicating that the opponent’s non-registered mark IP Interprint & Device was well known and well established in Sweden for "printed matter and printing services". This certificate was not notarised.
• An earlier Swedish Court decision under which the CTM opponent had successfully opposed a Swedish trade mark application, made by the CTM applicant for the mark and goods that were also the subject of the CTM application, based on their earlier rights in the Interprint company name. In relation to this decision, the opponent filed a Swedish copy of the decision, an English translation and a certificate showing that the Swedish Court’s decision had become final.
• A certificate issued by the Swedish Companies Register attesting to the fact that the opponent had owned the company name Interprint Kungens Kurva AB since 1993.
• Extracts taken from the opponent’s 1995 and 1996 annual reports showing the use of the company name in relation to a printing business. These extracts also listed the opponent’s annual sales, as well as their 1995 acquisition of the printing of Sweden’s most widely distributed weekly publication, ICA-Kuriren.

The Opposition Division ruled in favour of the opponent and made the following comments.

• In order to satisfy the provisions of Article 8(4), the following was required

the earlier right must be a non-registered trade mark or a similar sign;

the sign must be used in the course of trade;

the use of the sign must be of more than mere local significance;

the right must be acquired prior to the filing date of the contested application; and

the opponent must be the proprietor of a sign that has the right under the terms of the national law governing this right to prohibit the use of the contested mark

• The opponent had proved their ownership of an earlier, Swedish company name.
• The extracts taken from the opponent’s annual reports illustrated use of the company name in the course of trade.
• Whether use was of more than "mere local significance" would depend on factors other than just the precise area of use. For example, the age of the earlier sign and the intensity of an opponent’s marketing under the sign should be considered. Further, the criteria for a specialist business such as the sale of musical instruments must be different from the criteria for mass consumption goods such as foodstuffs.
• Once again, the annual reports extracts served to establish the opponent’s position. The fact that the opponent was the largest deep printing company in Sweden, together with the decision of ICA-Kuriren to entrust the opponent with their business, both showed that the opponent’s use of their company name was of more than mere local significance.
• The ability of the opponent under Swedish law to prevent the use of the applicant’s mark in Sweden was a question of fact (not law). The onus was therefore on the opponent to prove their case on this point.
• Although the opponent had not filed any evidence dealing with Swedish law or practice, they had submitted details of the earlier Swedish Court decision. Given that the facts before the Swedish Court were almost identical to those before the CTM Opposition Division, the decision was an indication of the point of Swedish law and proved the scope of protection of his earlier company name.
• The mark applied for and the earlier company name were similar, as were the goods applied for and the services offered by the Swedish company. It followed that the opposition was well-founded and the application was rejected.
• It was not necessary to consider the opposition in so far as it related to an earlier non-registered trade mark.

 

Comment

It will always be more difficult, in evidential terms, to oppose a CTM application successfully on the basis of unregistered trade mark rights or signs such as company names. However, the Interprint case does show that, in the right circumstances, such an opposition can be won.

The Interprint case also confirms that, as in the case of oppositions brought under the dilution provisions of the CTM Regulation against applications for dissimilar goods, it strengthens the opponent’s hand considerably if he can point to an earlier EU Court (or Office) decision in which the opponent has already successfully invoked his rights in a case that had the same or similar facts to the later CTM opposition.