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    A recent OHIM opposition decision has shown the importance, for CTM applicants and opponents based outside the EU, of being represented by an EU professional representative. In this case (Yager Development v Yaga), the CTM application was for the trade mark Yager in Class 9. It was opposed by an earlier CTM registration for Yaga covering similar goods. The opposition was successful. Yager appealed and filed a statement of grounds of appeal which was forwarded to Yaga’s German representative. The German representative replied that they no longer represented Yaga. The Appeal Board then forwarded the statement of grounds directly to Yaga and gave them two months within which to appoint an EU representative. Yaga did not reply to the Appeal Board’s letter and did not appoint a new representative within the time limit.

    The Appeal Board rejected Yaga’s opposition as inadmissible. It found that an Opponent based outside the EU must be represented by an EU representative throughout CTM opposition proceedings until they are terminated by a final decision.

    The basis for this decision was confirmed in another appeal (R578/2003-4).

    Under the new registered design legislation in the EU, it has become possible to register a wide variety of designs, including what would traditionally be viewed as a trade mark logo. The vulnerability of such “logo” designs to invalidation was illustrated by a recent OHIM decision (Hee Jung Kim v Zellweger Analytics).

    The Community Design (CD) covered a logo consisting of Midas, a slogan and a device element. The invalidity action (ICD 1485) was based on an International trade mark registration for Midas covering a variety of goods in Classes 7, 9 and 11.

    Under Article 25(1)(e) of the Community Design Regulation, a CD is to be declared invalid if the CD contains an earlier distinctive sign that can be used to prevent the use of the CD. The Invalidity Division found that the IR met these criteria and, as a consequence, declared the CD invalid.

    Two recent OHIM Appeal Board decisions with “Champagne” connections have been reported.

    In the first case (R1318/2005-2), a CTM application for the trade mark Grand Cru was refused in respect of chocolate. The Appeal Board noted the well-known use of this phrase in relation to certain high quality wines. However, they took the view that the phrase had a wider application and also referred to certain high quality foodstuffs such as chocolates. The use of the phrase Grand Cru by third party chocolate manufacturers to denote the (high) quality of their products (information gleaned by the Appeal Board from the Internet) did not assist the applicant’s case.

    In the second appeal (R0148/2004-2), a CTM application to register the colour orange for champagne wines was allowed on the back of significant evidence of use in relation to Veuve Cliquot champagne. The evidence included significant sales and a high market share in the EU, a trade declaration stating that the applicant’s use of orange was unique for champagne, a successful Belgian court case in which the applicant prevented the sale of a beer with orange coloured get-up and numerous press articles. The Appeal Board found, in line with the Have A Break case, that use of the colour orange with word and device marks, did not detract from the acquired distinctiveness of the colour orange.

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