.jpg)

.jpg)
Absolute Grounds of Rejection
In the second appeal from an OHIM decision to reach the full European Court of Justice (ECJ), rather than the Court of First Instance (CFI), the Court decided that the trade mark Companyline was devoid of distinctive character (Article 7(1)(b) of the CTM Regulation) in respect of financial and insurance affairs in Class 36.
DKV Deutsche Krankenversicherung had filed their CTM application for the mark soon after OHIM had opened. The application had been rejected progressively by the CTM Examiner, the First Board of Appeal and the CFI. In the latter case, the Court ruled that the trade mark Companyline consisted of two descriptive words which, when coupled together, simply denoted a range of services intended for companies. In the absence of any graphic or semantic modification, the sign was devoid of distinctive character.
The ECJ confirmed the rejection of the application in the following terms:
Ten further appeals from OHIM refusals of trade marks on absolute grounds have also recently been decided by the CFI. In the first case, the trade mark was ‘SAT.2 for a wide variety of goods and services including certain broadcasting services in Class 38 and certain television entertainment services in Class 41. The mark was rejected by both the CTM Examiner and the Second Board of Appeal, in the latter case on the basis of Articles 7(1)(b) and 7(1)(c) of the Regulation. SAT was said to be an accepted abbreviation for satellite and therefore the mark, taken as a whole, would be seen as an obvious short form of “second satellite channel”.
The applicant (SAT.1 SatellitenFernsehen) appealed to the CFI who confirmed the rejection of the mark, but in respect of only some of the services claimed. In the Court’s view:
The second appeal to the CFI involved the mark UltraPlus in relation to plastic ovenware for use in microwave, convection and conventional ovens in Class 21. The mark had been rejected by the CTM Examiner and the First Board of Appeal under Articles 7(1)(b) and 7(1)(c) on the basis that potential consumers would perceive it as merely expressing a strong claim by the manufacturer regarding the quality of the goods.
The CFI disagreed and allowed the application to proceed. According to the Court:
The third CFI appeal related to two CTM applications for, respectively, the trade marks Kit Pro and Kit Super Pro covering parts for repairing drum brakes in land vehicles in Class 12. Both applications had been rejected by OHIM under Articles 7(1)(b) and 7(1)(c). The CFI maintained the objection under Article 7(1)(b) and, having done so, did not go on to consider Article 7(1)(c). In the Court’s view all of the elements of the two marks lacked distinctiveness in relation to the claimed goods. Further, there was no evidence that either combination was greater than the sum of its individual parts. The appearance of either Pro or Super Pro after a word such as Kit was not unusual and, in fact, was quite normal when advertising products.
In the fourth appeal to the CFI, the mark at issue was the slogan Real People, Real Solutions. The applicant, Sykes Enterprises, had sought to register the mark in respect of various information technology related services in Classes 35, 37 and 42. The mark had been rejected by OHIM as non-distinctive under Article 7(1)(b). The Board of Appeal found that the mark was a slogan which was commonly used in the IT sector and would therefore be seen by the relevant public as a mere promotional term, rather than as an indication of the origin of the services.
The applicant appealed and the CFI rejected the appeal. The Court commented as follows:
The fifth CFI appeal involved the stylised mark BioID® . for goods and services in Classes 9, 38 and 42, all of which were limited to use in relation to the computer aided identification of live organisms by reference to their biometric characteristics. Once again, OHIM rejected the application, the Board of Appeal stating that the sign constituted a shortened form of the words “biometric identification” and that the graphic elements were minimal and inadequate to endow the sign with any distinctive character. The applicant (BioID AG) appealed to the CFI.
The CFI maintained the objection raised under Article 7(1)(b) of the CTM Regulation. The Court agreed with the Board of Appeal’s analysis of the sign, given the nature of the goods and services claimed and the relevant public that would purchase such products. They also made the following, further comments:
(It should be noted that a later CTM application for Bioid (letters) in respect of broadly claimed goods and services (e.g. computer software) has now been accepted).
In the sixth appeal, the mark before the CFI was Ecopy in respect of “Software discs and associated apparatus for enabling the scanning and electronic distribution of documents over computer networks” in Class 9. The mark was rejected by OHIM under Articles 7(1)(b) and (c) on the basis that Ecopy would clearly be seen as meaning “electronic copying”. The applicant had also filed evidence of acquired distinctiveness, much of which post-dated the CTM filing date. According to the Board, this evidence failed to overcome the objections raised.
The applicant (eCopy Inc) appealed, primarily on the basis that the evidence of use after the filing date should be taken into account. Perhaps not surprisingly, the CFI rejected the appeal. The Court confirmed that, in order to be considered in respect of acquired distinctiveness, use of the mark must have taken place before the CTM filing date. The CFI also rejected an attempt by the applicant to introduce further evidence of use for the first time at the CFI appeal stage.
The next four appeals to the CFI dealt with CTM applications for more abstract trade marks. The first application, CTM773630 owned by KWS Saat, was for the colour orange filed in respect of inter alia seed treating installations in Classes 7 and 11, seeds in Class 31 and seed cultivation related services in Class 42. The application had been rejected in its entirety by both the CTM Examiner and the Second Board of Appeal under Article 7(1)(b). On further appeal to the CFI, the Court held as follows:
The second application (CTM459149) was for a combination of two colours, grey and green, and covered gardening equipment, including lawn mowers, in Class 7 (see www.viking-garden.com). Once again the application was rejected as being devoid of distinctive character (Article 7(1)(b)) by both the CTM Examiner and the First Board of Appeal. The applicant, Viking GmbH, appealed to the CFI. The Court maintained the objection in terms that were very similar to their rejection of the Class 7 and 11 goods in the orange colour case referred to above. In the Court’s view, the grey/green combination would again be seen merely as an aspect of the finish of the goods claimed, both colours being in common use for such purposes in relation to gardening products. The Court also criticised the particular form of mark applied for, which was two juxtaposed coloured rectangles, since this did not reflect the colours as they were used in practice.
The next application (CTM811281) was for a speckled, opaque design filed in respect of glass and certain products, such as showers, containing the glass (Classes 11, 19 and 21). The application was again rejected by OHIM as non-distinctive under Article 7(1)(b). In this case, the applicant put forward evidence of acquired distinctiveness but, even in the face of this evidence, the objection was maintained.
On further appeal, the CFI ruled as follows:
The final application was for the shape of a soap (CTM230680). This application had already been the subject of an appeal to the CFI in 1999 (Procter & Gamble v OHIM, T-122/99). In a decision which contained a veritable comedy of errors by all concerned, the Court had remitted the application to OHIM for further consideration.
Having considered the matter further, OHIM again rejected the soap shape as non-distinctive (Article 7(1)(b)). The applicant appealed, but this time the CFI agreed with the findings of the Board of Appeal. In the Court’s view, the presence of concave profiles did not significantly affect the outward appearance of the soap and therefore could not be accepted as constituting a perceptible difference to normal soap shapes. Furthermore, even if the concave shape of the soap did hold the consumer’s attention, he would not immediately perceive it as an indication of trade origin. According to the Court, convex or concave profiles were features which would primarily be interpreted as either a functional feature making the soap easier to grip or as an aesthetic finish.
It is very difficult to reconcile the ECJ’s ruling on the trade mark Companyline with the same Court’s acceptance of the trade mark Baby-Dry (for nappies). Further, it is not at all clear why marks such as Kit Pro and Super Kit Pro, which really are syntactically unusual juxtapositions, stand rejected when earlier CFI decisions have accepted marks such as Doublemint, Easybank and New Born Baby as distinctive for confectionery, banking services and dolls respectively. This somewhat chaotic situation means that the level of distinctiveness that a mark needs to reach to be accepted as registrable by the CFI/ECJ (and therefore by OHIM) remains difficult to gauge. When considering the registrability of such a borderline mark at OHIM therefore, the advice must remain the same as it has been since the day OHIM opened for business. File an application, because you never know what the final outcome of the examination will be. This is clearly an unsatisfactory situation, but the writer does not see it improving in the foreseeable future.
As far as the protection of colour trade marks is concerned, the KWS Saat (orange colour) case should be contrasted with the recent Advocate General’s opinion in the Libertel case. In that reference to the ECJ (Libertel Groep v Benelux Trade Mark Office), the point at issue was the registrability of colour marks per se, in particular in respect of telecommunications services. The Benelux Office had rejected Libertel’s application to register the colour orange for such services, on the basis that their (Libertel’s) evidence of acquired distinctiveness was not adequate to overturn the original objection. Libertel’s appeal finally reached the Supreme Court who put a number of questions to the ECJ including the fundamental question, can colour per se be registered as a trade mark? Even though all of the parties represented before the ECJ accepted that colour per se could be registered, the Advocate General disagreed. In his view, the EU Trade Mark Harmonisation Directive (Article 2) did not permit the registration of colour as a trade mark unless it had some form or outline. On this basis, a colour per se would never be registrable for services and would only be registrable in respect of goods in the precise manner in which it was applied to the goods. This cannot be correct and it is sincerely to be hoped that the ECJ, when reaching its decision, will ignore the Advocate General’s opinion, at least on this point. If there is any doubt on this issue, it is recommended that the ECJ conducts market surveys on the link between, for example, the colour purple and chocolate in the UK and the colour magenta and telecommunication services in Germany. If such surveys did not establish an overwhelming response of Cadburys in the former case and Deutsche Telekom in the latter case, the writer would be astonished.
Relative Grounds of Rejection
The first CFI appeals from OHIM opposition decisions have recently been published. It will be recalled that oppositions before OHIM can only be brought on the basis of relative grounds for refusal.
The first 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 OHIM’s Opposition Division and Appeal Board, the opponent succeeded. In the Appeal Board’s view the marks were visually and phonetically dissimilar, but conceptually similar. They found that 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, according to the Board, 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.
The applicant appealed to the CFI who dismissed the appeal. The Court found that:
In the second CFI appeal dealing with relative grounds for refusal (Matratzen Concord v Hukla Germany), the mark applied for was Matratzen Markt Concord & Device (CTM 395632), with Matratzen the dominant feature. The goods claimed were in classes 10, 20 and 24 and included beds for medical purposes (class 10), beds (class 20) and bed linen (class 24). The CTM application was opposed on the basis of a Spanish registration for the trade mark Matratzen covering class 20 goods including beds.
The Opposition Division, following the Canon/Cannon case, assessed the likelihood of confusion globally taking into account all of the relevant factors. These were that:
On this basis, the opposition succeeded in relation to the class 20 and class 24 goods, but failed in relation to the class 10 goods.
The applicant appealed to the Board of Appeal in respect of the rejection of goods in classes 20 and 24. The opponent also appealed in relation to the acceptance of the CTM application for class 10 goods. The Board of Appeal allowed the opponent’s appeal and dismissed that of the applicant. This led to the total rejection of the application.
The applicant filed a further appeal to the CFI based primarily on their argument that the two marks were not confusingly similar, given the borderline distinctiveness of the word Matratzen (German for Mattresses). The CFI ruled in favour of the opponent in the following terms:
In the third CFI appeal dealing with relative grounds (Institut für Lernsysteme v ELS Educational Services), the CTM application was for the mark ELS in respect of goods and services in classes 16, 35 and 41, all relating to the teaching of languages. The opposition was based on a German trade mark registration for the stylised mark iLS covering educational products in classes 9, 16 and 41. The opposition was rejected by both the Opposition Division and the Appeal Board on the basis that the two marks and the two sets of goods/services were distinguishable. During the opposition, the opponent had been asked to prove use of his mark in Germany. OHIM ruled that use in relation to only the “development and running of correspondence courses” had been established.
The opponent appealed to the Court of First Instance. The CFI ruled that the two marks were visually and (to the relevant German public) phonetically similar (neither had any conceptual meaning) and remitted the case to OHIM for a decision based on this finding. The Court made the following comments:
The fourth OHIM opposition appealed to the CFI (Mystery Drinks v Karlsberg Brauerei), involved beverages in class 32. The CTM application was for the trade mark Mystery (stylised) and claimed, amongst other goods, “non-alcoholic beer”. This was opposed by Karlsberg on the basis of their German trade mark registration for Mixery covering “beers and beverages containing beers”.
The CTM Opposition Division rejected the opposition but the Third Board of Appeal reversed this decision in relation to the class 32 goods claimed. In the Board’s view:
Perhaps not surprisingly, the CTM applicant appealed to the CFI. Rather more surprisingly, the Court agreed with the Board of Appeal’s analysis of the two marks (as well as the two sets of class 32 goods) and dismissed the appeal. They made these findings, even though they also found that the opponent’s mark did not have the high degree of distinctiveness attributed to it by the Board of Appeal.
The fifth CFI appeal from an OHIM opposition decision (K.K. Fernandes v R.J. Harrison) involved a CTM application for Hiwatt for “amplifier and speaker boxes and electrical sound effects units” in class 9. The application was published on 16 March 1998 and opposed by Fernandes on the basis of earlier French, German and Italian trade mark rights for the identical mark registered in respect of identical or very similar goods. All of the opponent’s trade mark rights were over 5 years old at the date of publication of the CTM application. The applicant therefore asked the opponent to prove use of his mark in France, Germany and Italy (Article 43 of the Regulation).
The opponent filed the following documents:
The opposition was rejected on the basis that the opponent had not established use of his mark in any of France, Germany or Italy. The Board of Appeal agreed with this analysis and the opponent appealed to the CFI. The Court dismissed the appeal in the following terms:
Since the South Cone decision in the UK (2003 RPC 101), it has become extremely difficult to overturn a decision made by the UK Trade Mark Office in opposition proceedings. Both the Appointed Person and the High Court confirm the original decision in the vast majority of cases and, in doing so, show an almost complete faith in the expertise of the UK Office’s Hearing Officers.
It would appear, from the ELS decision at least, that they will do things differently in Europe. Of course, this introduces a degree of uncertainty into the proceedings, but it does mean that there is some justification in making an appeal to the CFI. At present, it is very difficult to justify an appeal from a Trade Mark Office decision in the UK.
The Hiwatt decision merely confirms what we already knew. The level of proof required to establish use of a mark in OHIM opposition proceedings is extremely high. Essentially, if you don’t have invoices which feature the opponent’s mark and the place, date and amount of the sale during the relevant five year period, you are in trouble. How, in these circumstances, the use of a device mark or a combination of a word and a device mark can be proved has never been adequately explained by OHIM.
Finally, what can one say about the Mystery drinks decision except that the outcome is a complete Mixery? In the writer’s view, only the German equivalent of the proverbial English moron in a hurry would confuse a Mystery beverage with a Mixery beer.