Practical Opposition Guidelines

Official rules and practical advice to oppose a European Community trade mark

F. Peter Müller, Müller, Schupfner & Gauger, Munich, www.propat.de

I. Community trade mark regulations

Article 8 of the Community trade mark Regulation (Council Regulation (EC) No. 40/94 of December 20, 1993 on the Community trade mark) stipulates the following:

1. Upon opposition by the proprietor of an earlier trademark, the (community) trademark applied for shall not be registered:

(a) if it is identical with the earlier trademark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trademark is protected;

(b) if because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected; the likelihood of confusion includes the likelihood of association with the earlier trademark.

2. For the purposes of paragraph 1, earlier trademarks means:

(a) trademarks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trademark, taking account, where appropriate, of the priorities claimed in respect of those trademarks:

(i) Community trade marks;

(ii) trademarks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Trademark Office;

(iii) trademarks registered under international arrangements which have effect in a Member State;

(b) applications for the trademarks referred to in subparagraph (a), subject to their registration;

(c) trademarks which, on the date of application for registration of the Community trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State, in the sense in which the words well known are used in Article 6bis of the Paris Convention.

3. Upon opposition by the proprietor of the trademark, a trademark shall not be registered where an agent or representative of the proprietor of the trademark applies for registration thereof in his own name without the proprietor's consent, unless the agent or representative justifies his action.

4. Upon opposition by the proprietor of a non-registered trademark or of another sign used in the course of trade of more than mere local significance, the trademark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trademark.

5. Furthermore, upon opposition by the proprietor of an earlier trademark within the meaning of paragraph 2, the trademark applied for shall not be registered where it is identical with or similar to the earlier trademark and is to be registered for goods or services which are not similar to those for which the earlier trademark is registered, where in the case of an earlier Community trademark the trademark has a reputation in the Community and, in the case of an earlier national trademark, the trademark has a reputation in the Member State concerned and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.

II. Likelihood of confusion

According to Article 8 (1) (b) of the CTM Regulation, upon opposition by the proprietor of an earlier trademark the trademark applied for shall not be registered:

If because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected; the likelihood of confusion includes the likelihood of association with the earlier trademark.

In most opposition cases Article 8 (1) (b) of the CTM Regulation is the most important since most earlier national or international (Madrid system) trademarks are confusingly similar to the European trademark application and the goods and services of the earlier national or international trademarks are similar to the claimed goods and services of the European Community trade mark application.

Therefore, the opposition divisions of the European trademark office conduct the following steps of assessment which are identical to the common practice of the opposition divisions of the German Patent and Trademark Office. These steps are the following:

- Comparison of goods and services
- Comparison of signs
- Conclusion

1. Comparison of goods and services

In assessing the similarity of the goods and services, all relevant factors relating to those goods and services themselves should be taken into account. Those factors include, inter alia, their nature, their end users and their method of use and whether they are in competition with each other or are complementary.

Furthermore, the distribution channels of both goods and services are taken into account. Additional factors are the prices of the goods and services and at which places the goods and services are sold to which customers. These factors are of particular relevance within the pharmaceutical market since their distribution via pharmacies upon the prescription of doctors may require less distance between the goods and services of both trademarks to refuse the opposition.

2. Comparison of signs

In determining the existence of likelihood of confusion trademarks have to be compared by making an overall assessment of the

- visual,
- phonetic and
- conceptual similarities

between the marks. The comparison must be based on the overall impression given by the marks bearing in mind, in particular, their distinctive and dominant component. Therefore, a comparison of both trademarks comprises at least a three-step-procedure. If trademarks shall not be similar all three assessments must be negative.

By assessing the conceptual similarity it should be noted that such assessment is restricted to the concerned public of that member states of the European Union from which the opposition trademark originates. Since the conceptual similarity and sometimes also the phonetical similarity is assessed differently with respect to the perception of the concerned public of each of the member states of the European Union an opposition should be based on as many trademarks as possible in order not to fail during such stage of the opposition proceedings.

3. Conclusion

Persuant to Article 8 (1) (b) of the CTM Regulation the similarity of goods is a prerequisite for the ascertainment of likelihood of confusion. According to the case-law of the European Court of Justice, "there can be no likelihood of confusion where the public does not think that the goods come from the same undertaking" (cf. judgement of the Court of Justice of September 29, 1998 in Case C-39/97, Canon Kabushiki Kaisha vs. Metro Goldwyn-Mayer, Inc., OJ OHIM, No. 12/1998, p. 1419, para. 23).

Once there exists a similarity of goods the similarity of signs will be assessed in comparison with the similarity of goods and services. The less the goods and services are similar the more the signs have to be similar in order to come to the conclusion that there exists a likelihood of confusion. The less the signs are similar the more the goods and services must be similar in order to come to the conclusion that there is an existence of likelihood of confusion.

If there is no similarity of goods and services, Article 8 (5) of the CTM Regulation has to be considered:

III. Taking unfair advantage

According to Article 8 (5) of the CTM Regulation, upon opposition by the proprietor of an earlier trademark the trademark applied for shall not be registered "where it is identical with or similar to the earlier mark and is to be registered for goods or services which are not similar to those for which the earlier trademark is registered where the trademark has a reputation in the member state concerned and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark".

1. Comparison of signs

The above outlined comparison of signs must lead to an existence of likelihood of confusion by assessing the visual phonetic and conceptual similarities between the trademarks. Thereafter, the reputation of the earlier trademark must be assessed.

2. Reputation

In making the assessment of the degree of reputation of a trademark account should be taken of various factors, in particular:

- The distinctiveness of the mark
- The market share held by the mark
- How intensive, geographically widespread and longstanding use of the mark has been
- The amount invested by the undertaking in promoting the mark
- The proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking
- Statements from chambers of commerce and industry or other trade and professional associations

In accordance with Rule 16 (3), Rule 17 (2) and Rule 20 (2) of the Implementing Regulation the Office will request from the opponent to file evidence of reputation of the earlier mark wherein such evidence must be in the language of the proceedings. It should be noted that any evidence which is not filed in the language of the proceedings will not be considered by the Office.

If the opponent reserves the right to supply further translations of documents to prove the reputation of the earlier mark, if it should be requested by the Office such reservation will not be considered by the Office once the Office requested to file the proof for reputation in the language of the opposition proceedings. The Office is not obliged to further request the opponent to translate any documents which have not been filed in the language of the opposition proceedings. Furthermore, it should be noted that explanations of the opponent referring to documents of proof will not be considered as translations. These explanations are merely descriptions and are not considered as sufficient proof of usage or proof of reputation.

III. Costs

According to Article 81 (1) of the CTM Regulation, the losing party in opposition proceedings shall bear the fees incurred by the other party as well as all costs incurred by him essential to the proceedings.

According to Rule 94 (1) of the Implementing Regulation apportionment of costs shall be dealt with in the decision on the opposition.

It should be noted that the question of costs is important in the early preparation of the filing of the opposition. If the opposition is extended to goods and services which are (at least partially) not similar with the goods and services of the opposition trademark and if a reputation of the opposition trademark cannot be proved, the opposition will be (at least partially) rejected and the opponent must carry (at least partially) the costs of the applicant. F. Peter Müller Müller, Schupfner & Gauger, Munich www.propat.de