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RECENT DECISIONS of the EUROPEAN COURT OF JUSTICE (ECJ):
On June 12, 2007, in the legal case C 334/05, the European Court of Justice
set aside a decision of European Court of First Instance in the case LIMONCHELO/
LIMONCELLO. In the decision that was now overturned, the CFI ruled that
there was no visual, phonetic or conceptual similarity between the word
mark LIMONCHELO and the figurative mark LIMONCELLO DELLA COSTIERA AMALFITANA
including the graphic representation of a round dish decorated with lemons
and the further word element SHAKER with the graphic representation of
a wine glass. Limoncello - No similarity of signs due to dominant graphic element
In a decision of June 15, 2005 (case T-7/04) the Court of First Instance (CFI) ruled that there is no visual, phonetic or conceptual similarity between the word mark LIMONCHELO and the figurative mark LIMONCELLO DELLA COSTIERA AMALFITANA including the graphic representation of a round dish decorated with lemons and the further word element SHAKER with the graphic representation of a wine glass. The applicant and the opponent had agreed on the similarity of goods, amongst others alcoholic beverages, but disagreed about the similarity of signs. The applicant claimed that the element LIMONCELLO was not the dominant part in the trade mark application and that the elements DELLA COSTIERA AMALFITANA also had to be considered for the assessment of the likelihood of confusion. These words, relating to a geographical area well-known to consumers, led to a different overall impression of the marks. Furthermore, the earlier mark LIMONCHELO lacked distinctiveness because in common usage LIMONCELLO designated liqueur with lemon zest from the Amalfi Coast and LIMONCHELO was nothing but the translation thereof. The Opposition Division and the Board of Appeal of the Office for Harmonization (OHIM), however, assumed a visual and phonetic similarity of the signs due to the congruence of the two marks in the dominant elements LIMONCHELO and LIMONCELLO. The CFI held that a complex trade mark composed of different elements can only be considered similar to another trade mark if the similar element constitutes the dominant element of the complex mark. However, if the complex trade mark is visual in nature, the assessment of the overall impression of the mark and of any dominant element must be carried out on the basis of a visual analysis. The CFI assumed that, in the present case, the graphic representation
of the dish with lemons was the dominant element of the trade mark application
due to its size and its position in the mark. Contrary to the view of
OHIM, the word LIMONCELLO could not constitute the dominant element because
of its reduced visual impact in comparison with the round dish with lemons.
The CFI ruled that it was therefore not necessary to examine the phonetic
or conceptual impression of the mark. As a consequence, the CFI denied
a likelihood of confusion arising from visual, phonetic or conceptual
similarities of the mark due to the round dish with lemons. Our comments: According to the recognised case law of the European Court of Justice (ECJ), a danger of confusion can arise even if there is only a phonetic similarity. Furthermore, the CFI itself has repeatedly held that figurative elements cannot be considered when assessing the phonetic impression of a mark. Therefore, the CFI should not have denied a phonetic similarity because of the round dish with lemons as a graphic element. Instead, the CFI should have examined whether or not the word LIMONCELLO indeed lacks distinctiveness so that this word cannot constitute the dominant element of a mark. If the CFI had come to the conclusion that the element LIMONCELLO is not the dominant element of the application, the CFI should have considered the additional word elements of the trade mark application and should have determined whether theses elements lead to a different overall impression of the two trade marks.
Praktiker
- Registration of trade marks for services in retail trade A German company had filed an application for the trade mark PRAKTIKER in relation to services described as "retail trade in building, home improvement, gardening and other consumer goods for the do-it-yourself sector". The German Patent and Trademark Office rejected the application and held that the description of services as given failed to denote independent services having autonomous economic significance. Instead, the applicant should have applied for a trade mark with protection for the distributed goods in each case. The ECJ ruled that "trade" includes all activities carried out by the trader for the purpose of encouraging the conclusion of a transaction with the trader rather than with a competitor. Neither the First Directive 89/104/EEC nor any general principles of Community law preclude those services from being covered by the concept of "services" or a trader from claiming protection therefore. The ECJ then ruled that, for the purpose of registration of a trade mark for services provided in connection with retail trade, it is not necessary to specify the respective services but to provide details concerning the goods or types of goods to which those services relate. This decision meets the needs of retail traders in the course of their business activities. Therefore, retail traders should feel encouraged to register their trade marks for services in connection with retail trade.
Peak Holding ./. Axolin-Elinor Dr. Utz Kador, Kador & Partner, Munich, Germany In this reference for a preliminary ruling of 30 November 2004, the European Court of Justice (ECJ) clarified the circumstances under which exhaustion of rights conferred by a trade mark according to Article 7(1) of the First Council Directive 89/104/EEC (the Directive) occurs. In this case, the national court had inquired about whether an exhaustion of rights would occur in different circumstances, in particular in the case that the goods have not actually been sold or that the proprietor has restricted the reseller with respect to the reselling of the goods in their respective contract. The ECJ clarified that Article 7(1) of the Directive must be interpreted as meaning that goods cannot be considered to have been “put on the market” if the proprietor of the trade mark has merely imported them into the European Economic Area (EEA) in order to sell them or if he has offered them for sale in the EEA if the products have not actually been sold. As reason therefore, the ECJ states that the exhaustion of rights occurs when the economic value of the goods is realised by the proprietor. However, if the proprietor merely imports his goods in order to sell them in the EEA or offers them for sale in the EEA, he does not transfer any rights to third parties with respect to the disposal of the goods and does therefore not realise their economic value. Furthermore, Article 5(3)(b) and (c) of the Directive explicitly differentiates between offering the goods, putting them on the market, stocking them for those purposes and importing them, thus confirming that these alternatives have to be looked at separately. However, a provision in a contract between the proprietor of a trade mark and a reseller in the EEA prohibiting the reseller to resell the goods in the EEA cannot exclude a “putting on the market” of the goods and therefore an exhaustion of rights of the proprietor if the products are sold contrary to this provision. Article 7(1) of the Directive constitutes that an exhaustion of rights will occur if the products are put on the market by the proprietor of the trade mark himself or at least with his consent. Beyond that, Article 7(1) of the Directive does not require the consent of the proprietor to the reselling of the goods. In other words, the “putting on the market” already occurs when the goods are sold to the reseller. Therefore, any provisions in a contract between the proprietor of a trade mark and a reseller in the EEA with respect to territorial restrictions of the reselling of goods are only valid between the parties and cannot exclude the exhaustion of rights according to Article 7(1) of the Directive. To sum up, a “putting on the market” by the proprietor only occurs when the goods have actually been sold. However, if the goods have been sold by the proprietor or with his consent, the exhaustion of rights conferred by the trade mark does not depend on the proprietor’s consent to resell the goods in the EEA.
SAINT-HUBERT 41 ./. HUBERT Dr. Utz Kador, Kador & Partner, Munich, Germany On October 12, 2004, the European Court of Justice (ECJ) issued a decision on the opposition case SAINT-HUBERT 41 vs. HUBERT (case C-106/03 P). HUBERT had been applied for as a word and device mark by France Distribution for i.a. goods in the classes 29 and 30. An opposition against the registration of HUBERT was subsequently filed by Vedial S.A. based on the prior French registration of the word mark SAINT-HUBERT 41. The opposition was directed against goods in the classes 29 and 30, namely milk and milk products, as well as sauces and vinegar. The Opposition Division, as the first instance, rejected the opposition. Following this, the First Board of Appeal dismissed the appeal filed by Vedial. It considered in its decision that although there was a high degree of similarity between the goods in question and although the reputation of the earlier mark as demonstrated by Vedial could be taken into account, there was no likelihood of confusion between the conflicting marks, because they did not display a strong similarity. Before the European Court of First Instance (CFI), the OHIM maintained that at the date of its decision, evidence for the reputation of the prior mark had not been furnished. Therefore, the assessment of likelihood of confusion had to be made without regarding the alleged national mark’s reputation. The CFI held that the goods were similar, but that the visual, aural and conceptual differences would be sufficient to exclude a likelihood of confusion between the marks. The CFI came to these findings even though Vedial and the OHIM had agreed on at least a phonetic similarity between the conflicting marks. In its appeal to the ECJ, Vedial S.A relied on three grounds: Firstly the CFI had breached a general principal of Community law, according to which it is up to the parties to delimit the subject matter of a case. In spite of this principle, the CFI had held that there was no similarity between the marks although the OHIM and Vedial S.A. had already agreed that there was at least a phonetic similarity. Secondly, the CFI had infringed the rights of the defence, when it failed to deal with the legitimate expectation that it would accept that the parties delimit the scope of the appeal. Thirdly, the CFI had infringed the concept of likelihood of confusion within the meaning of Article 8 (1) (b) CTMR. The ECJ rejected all three grounds for the following reasons: On the first ground, the ECJ held that even on the supposition that the parties delimit the scope of argument applied in this case, it did not apply where the OHIM was the defendant and the proceedings were to resolve a dispute between the opponent and a claimant for registration. The CFI was not bound by any agreement. On the second ground, the ECJ held that even if the OHIM and Vedial S.A. had agreed to the scope of the argument, the CFI was not bound to this agreement and therefore had the duty to determine, whether the OHIM had acted in accordance with Regulation EC 40/94. Finally, the ECJ held that the CFI was correct in denying likelihood of confusion between the conflicting marks after having found that there was no similarity between the marks. In such cases where no similarity is found, likelihood of confusion cannot be given, whatever the reputation of the earlier mark may be and regardless of the degree of similarity of the goods. Our comment: It is interesting to note that in the view of the ECJ, the fact that Vedial and the OHIM agreed on the similarity between the conflicting marks did not bind the CFI, which had the duty to determine by itself, whether there was any similarity of the signs. This corresponds to the German view that higher instances such as the Federal Patent Court and the Federal Supreme Court are not bound by the opinions of previous instances on legal questions, such as the similarity of trade marks. Furthermore, it should be noted that the ECJ does not readily assume a likelihood of confusion between contentious signs if one of the trade marks in question shows additional elements creating a different overall impression of the marks, even though the corresponding elements of the trade marks are in fact identical.
DECISION ON “DAS PRINZIP DER BEQUEMLICHKEIT” Dr. Utz Kador, Kador & Partner, Munich, Germany Using slogans to promote a company’s product is not a new concept, and thus the question often arises, as to whether such slogans can be registered as a trade mark. The German Patent and Trademark Office and the German Federal Patent Court have always maintained the opinion that advertising slogans are not registrable as trade marks. The Office for Harmonization in the Internal Market (OHIM) generally has a more liberal stance. Finally, in October 2004, the European Court of Justice (ECJ) handed down its long-awaited judgement in the case OHIM vs. Erpo Möbelwerke GmbH (case C-64/02 P) on the distinctiveness of slogans. In the decision, the ECJ also points to a possible approach on how such slogans should be examined. In the case itself, Erpo Möbelwerke applied to register the Community Trade Mark “DAS PRINZIP DER BEQUEMLICHKEIT”, translated into English as “The Principle of Comfort”, in respect of various goods, inter alia land vehicles (class 12) and household furniture (class 20). The application was rejected by the Examiner on the grounds that the mark was a mere advertising slogan, which was devoid of any distinctive character under Article 7 (1) of the Counsel Regulation (EC) 40/94. The Board of Appeal upheld the refusal as far as land vehicles and furniture were concerned and argued that the mark was a promotional slogan, which did not display any element of imaginativeness or “conceptual tension which would create surprise and so make a striking impression”. Erpo Möbelwerke appealed to the Court of First Instance (CFI), who overturned the OHIM’s refusal. The CFI essentially rejected the requirement for imaginativeness or the lack of an additional element of originality. The CFI confirmed that it is not appropriate to apply criteria to slogans, which are stricter than those applicable to other types of signs. Moreover, the CFI was arguing that the OHIM had not provided any evidence that the slogan “Das Prinzip der Bequemlichkeit” is used in business communications, in particular advertising, by third parties and so could not support the allegation that the slogan lacked distinctive character. The CFI thus allowed the registration. The OHIM itself appealed to the European Court of Justice (ECJ) and argued that the CFI was wrong to rule that a slogan was distinctive, because the assessment of inherent distinctiveness should not take into account if other traders are using the applied for slogan. The ECJ agreed that the CFI reasoning was incorrect, but not that the error should result in a refusal of the slogan. The ECJ stressed that the correct test for whether a mark of any kind, including slogans, is devoid of distinctive character, was to ask whether the mark would make it possible to identify a product for which registration is applied, as originating from a given undertaking, and therefore to distinguish the product from those of other undertakings. Accordingly, the ECJ found that the contested judgement of the CFI was vitiated by an error of law, but that the error had no influence on the outcome of the dispute. The slogan was finally registered. Our comment: In our opinion, the ECJ ruling is straightforward and takes a liberal standpoint with concern to the registrability of advertising slogans as Community Trade Marks. Brand owners should thus be encouraged to file Community Trade Mark applications for their slogans, because the registration of a slogan as a trade mark, effective throughout the entire European Union, is certainly the best means to prevent competitors from using the same or similar slogans for promoting their products.
DECISION ON “THREE DIMENSIONAL TORCH SHAPES” Dr. Utz Kador, Kador & Partner, Munich, Germany The European Court of Justice (ECJ) has finally rejected the applications concerning five three-dimensional trade marks for torches by the company Mag Instrument Inc. (case C 136/02 P). The OHIM's examiner initially refused the applications on the ground that the marks applied for were devoid of any distinctive character under Article 7 (1) (b) CTMR. This decision was upheld by the Second Board of Appeal of the OHIM and by the Court of First Instance (CFI), which ruled that the marks applied for only indicated to consumers that the products were torches, but did not enable consumers to differentiate the torches in question from those of other undertakings. In its decision of October 7, 2004, the ECJ ruled that Mag Instrument’s seven grounds of appeal against the judgment of the CFI were all unfounded and/or inadmissible. According to the ECJ, the CFI had correctly considered the overall impression of the marks. In particular, the ECJ found that it could “prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark”. The more closely a shape resembles the shape of the relevant products, the more likely it would be considered to be lacking distinctiveness. Moreover, the Court said that “only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character”. Mag Instrument had presented evidence of consumer perceptions to the CFI, including examples of confusion. The company argued before the ECJ that this evidence had been neglected by the lower court. However, the ECJ ruled that such evidence “related to the perception of the marks in question by consumers at a time when the torches had already been put on the market for many years and when consumers were thus accustomed to their shape”. Thus, the evidence failed to show that the marks had distinctive character within the meaning of Article 7 (1) (b) of the CTMR. Therefore, the evidence was only “capable of establishing that those marks could become distinctive in consequence of the use made of them for the purpose” of Article 7 (3) of the CTMR. In upholding the CFI’s decision, the ECJ indicated that the lower court was entitled to use its own judgment in assessing applications such as Mag Instrument’s, even if that means reaching a different conclusion from that of expert witnesses. Mag Instrument had criticized the CFI ruling for “basing its reasoning only on general propositions, which are unsupported by any evidence“, in particular, in its finding that the shapes in question are common, that the average consumer is accustomed to them and that they are commonly found in trade. But the ECJ noted that the Second Board of Appeal had already considered this evidence, arriving at the same conclusion and also that “the members of the CFI are themselves consumers for whom torches are familiar objects”. Our comment: In our opinion, this decision is well in line with the previous decisions concerning three-dimensional marks. It shows again that although it is often emphasized that the criteria for assessing the distinctive character of three-dimensional marks are not different from those applicable to other categories of trade marks, it might prove quite difficult to get a three-dimensional trade mark registered, if the mark does not deviate significantly from that what is assumed to be the "norms or customs of the sector", a question which is always decided by the judges themselves.
“Companyline” Decision on necessary distinctiveness of a Community trade mark Dr. Utz Kador, Kador & Partner, Munich, Germany With its "Companyline" Decision of September 19, 2002, the European Court of Justice (ECJ) defined more clearly its interpretation of the requirement of Art. 7 (1) (b) CTM Regulation, which bars the registration of terms lacking distinctiveness, after the liberal "Baby-dry" decision. According to the ECJ, which confirmed the reasoning of the European Court of First Instance (CFI), “coupling the words "company" and "line" - both of which are customary in English-speaking countries - together, without any graphic or semantic modification, does not imbue them with any additional characteristic such as to render the sign, taken as a whole, capable of distinguishing the applicant's services (field of insurance and financial affairs in class 36) from those of other undertakings.” Furthermore, the Court pointed out that “As the Regulation on Community Trade Marks states that a sign is to be refused registration where it is descriptive or is not distinctive in the language of one Member State, even if it is registrable in another Member State and the Court of First Instance (CFI) had found that the sign in question was not distinctive in English-speaking areas, it was clearly not necessary for it to consider the impression it might make on speakers of other Community languages.” Accordingly, for trade marks consisting of descriptive terms only the present decision defines a borderline between cases where, as in the “Baby-dry” case, a “perceptible difference between the combination of words submitted for registration and the terms used in common parlance of the relevant class of consumers”, (and thus distinctiveness) has been recognized by the ECJ and cases where such a “perceptible difference” and hence distinctiveness is no longer recognized. Thus, in this decision the ECJ made clear that not every simple combination of descriptive words yielding a novel expression may suffice for complying with Art. 7 (1) (b) CTM Regulation.
Recent decisions of ECJ concerning olfactory and colour signs Dr. Utz Kador, Kador & Partner, Munich, Germany In two recent decisions, the ECJ gave its opinion on the registrability of a unicoloured sign and an olfactory sign based on the odour of a single chemical substance. From these decisions it can inter alia be learned that the ECJ considers the internationally recognized identification code for colours sufficient to graphically represent a specific colour, but, surprisingly, regards a chemical structure formula which unequivocally determines the nature of a (pure) chemical substance including its odour as insufficient for graphic representation. a.) Colour Mark “Orange” This case concerns an application for the colour orange in the name of the company Libertel for “telecommunications materials and services and their material, financial and technical management” in classes 9, 35 and 38. The Benelux Trade Marks Office had refused the application. After an appeal was filed by the applicant, the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) referred to the ECJ the question whether a single colour can be regarded as sufficiently distinctive to qualify for trade mark registration. On May 6, 2003, the ECJ held that “a colour per se, not spatially delimited, may, in respect to certain goods and services, have a distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of the [Harmonisation] Directive provided that, inter alia, it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective”. The Court further pointed out that a mere colour sample would not satisfy the requirement of graphical representability, because it could deteriorate with time and thus would not possess sufficient durability as required by Art. 2 of the Harmonisation Directive. Where a colour sample is supplemented with a verbal description this may, depending on the particular circumstances of the case, be appropriate as a graphical representation. Further, the Court stated that an internationally recognized identification code may also be considered to qualify as a graphical representation of a colour mark. As a consequence, we recommend that when applying for registration of a colour mark, at least the colour identification code, but if possible all three elements as cited by the Court (colour sample, verbal description and colour identification code) are filed to ensure compliance with the requirement of graphical representation. Concerning the question of distinctiveness of a colour mark, the Court expressed the view that “colours per se may be capable of distinguishing the goods and services of one undertaking from those of other undertakings”. However, in its considerations leading to this conclusion the Court made clear that colours as such “possess little inherent capacity for communicating specific information, especially since they are commonly and widely used because of their appeal, in order to advertise and market goods and services, without any specific message.” The Court further pointed out that the number of colours the public is capable of distinguishing is limited and that there is a public interest in not unduly restricting the availability of colours by registration of colour marks for the goods/services of one specific trader. In addition, the Court found that “consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in absence of any graphic or word element, because as a rule a colour per se is not, in current commercial practice, used as a means of identification.” As a conclusion, the Court stated that “in case of a colour per se distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific”. Accordingly, registration of a colour mark without proof that the mark has acquired distinctiveness by (extensive) use will be a rare exception reserved to such cases in which very good arguments can be provided to show “exceptional circumstances” as pointed out by the Court. b.) “Sieckmann” decision on registrability of olfactory signs This case was brought to the ECJ by the German Federal Patent Court for a preliminary ruling on the interpretation of Art. 2 of the Directive to approximate the laws of the Member States (“Harmonization Directive”). According to this Article, a trade mark “may consist of any sign capable of being represented graphically, ..., provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”. The ECJ in the decision first pointed out that this Article of the Harmonisation Directive has to be interpreted to mean that ”a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”. However, the Court then went on to decide that in respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, a description in words, a deposit of an odour sample or by a combination of any of these elements for the following reasons: “As regards a chemical formula, few people would recognise in such a formula the odour in question.” The Court stated further: “... a chemical formula does not represent the odour of a substance but the substance as such, and nor is it sufficiently clear and precise.” Concerning a description in words the Court held: “In respect of the description of an odour, although it is graphic, it is not sufficiently clear, precise and objective”, and finally: “As to the deposit of an odour sample, it does not constitute a graphic representation for the purpose of Article 2 of the Directive. Moreover, an odour sample is not sufficiently stable or durable.” From our perspective the Court is right to deny that the verbal description of an odour complies with the requirement of graphical representability of a trade mark according to Art. 2 of the Harmonization Directive. Such descriptions would certainly involve a strong subjective element which would render an objective determination of the true nature of olfactory marks very difficult. It can also be agreed with the finding that an odour sample is not an appropriate representation of an olfactory mark. However the Court's reasoning as concerns the non-compliance of a chemical formula with the requirement of graphical representability is hardly comprehensible, because a chemical structure formula unequivocally determines the nature of a pure chemical substance including all its physical properties. Accordingly, giving the structural formula of a chemical compound would make its odour, although indirectly, unequivocally determinable by third parties. The present decision will have severe implications on the registrability of olfactory marks, because essentially all imaginable possibilities of a graphic representation of odours have been held by the Court to be insufficient for the requirements of graphical representability. In practice, this probably means that olfactory trade marks will no longer be registrable in the EU.
Decisions on the registrability of three-dimensional trade marks Dr. Utz Kador, Kador & Partner, Munich, Germany In April 2004, the European Court of Justice (ECJ) issued several decisions relating to the registrability of three-dimensional tablets for various classes of products including, in particular, products for washing machines or dish washers (cases C-456/01P and C-457/01P, C-468/01P to C-472/01P, C-473/01P and C-474/01P). The applications in question related to rectangular detergent tablets consisting of two layers being either red and white or green and white (Henkel KGaA), to square tablets in white and pale green or square tablets in white with speckles in different colours as well as square or rectangular tablets with inlays (Procter & Gamble Company). The Office for Harmonization in the Internal Market (OHIM) had refused to register the applications as three-dimensional trade marks, the refusal being based on the lack of distinctive character of the tablets. The Court of First Instance (CFI) confirmed the OHIM`s findings. In its final decision, the ECJ dismissed the appeals of the applicants as being unfounded for the following reasons: In principle, it is clear from Art. 4 of Regulation No. 40/94 that both the shape of a product and its colours come under the signs which may constitute a Community trade mark. Therefore, a sign consisting of the three-dimensional shape of a tablet for washing machines or dish washers, in combination with the colour arrangement of the tablets may, in principle, constitute a trade mark. However, the fact that a sign is, in general, capable of constituting a trade mark within the meaning of Art. 4 of the regulation does not mean that the sign necessarily has distinctive character for the purposes of Art. 7 (1) (b) of the regulation in relation to a specific product or service. The distinctive character must be assessed, first, by reference to the products or services for which registration has been applied and second, by reference to the perception of these products by the relevant public, which consists of average consumers of the products or services in question, who are reasonably well-informed and reasonably observant and circumspect. It has been emphasised that the criteria for assessing the distinctive character of a three-dimensionally shaped product mark are not different from those applicable to other categories of trade marks. However, the relevant public's perception is not necessarily the same for a three-dimensional mark consisting of the shape and colours of the product itself, as it is for a word or figurative mark consisting of a sign, which is independent from the appearance of the products it denotes. Average consumers habitually do not make assumptions on the origin of a product based on its shape or the shape of its packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness for a three-dimensional mark than for a word or figurative mark. Therefore, the more closely the shape, for which registration is sought, resembles the shape most likely to be adopted by the product in question, the greater is the likelihood of the shape being devoid of any distinctive character for the purposes of Art. 7 (1) (b) of Regulation No. 40/94. Only a trade mark which departs significantly from the norm or customs in the field and thereby fulfills its essential function of indicating origin, is not devoid of any distinctive character for the purposes of that provision.
Decision on Sound Signs Dr. Utz Kador, Kador & Partner, Munich, Germany Following its decisions on olfactory and colour signs, the European Court of Justice (ECJ) now gave a ruling on a further category of these more “exotic” signs, namely on sound signs. First, the Court expressed its view that although sound signs are not listed expressis verbis as an example in Art. 2(a) of the Community Trade Mark (CTM) Directive, this article must be interpreted as meaning that also sounds may constitute a trade mark. In more detail, the Court stated that “sound signs must be capable of being regarded as trade marks provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings and are capable of being represented graphically.” The Court then pointed out that for a trade mark application to be treated as an application for a sound sign, it is important that this is clearly stated in the filing documents. This remark of the Court was occasioned by the fact that in several of the applications the Court had to consider this had not been done, but merely a description of a certain sound had been filed. While not further commenting on the question of distinctiveness, the Court went on to express in detail its opinion on an appropriate graphical representation form of a sound sign. It was first emphasized that, as is valid for all kinds of trade mark signs, a graphical representation must be clear, precise, self-contained, easily assessable, intelligible, durable and objective. These conditions are also binding on sound signs which, like olfactory signs, are not in themselves capable of visual perception. Several specific examples of a graphical representation for sounds were then assessed by the Court with regard to their compatibility with the above-mentioned requirements. It came to the conclusion that those requirements are not satisfied “when the sign is represented graphically by means of a description using the written language, such as an indication that the sign consists of notes going to make up a musical work, or the indication that it is a cry of an animal, or by means of a simple onomatopoeia, without more, or by means of a sequence of musical notes, without more.” The Court then continued that “on the other hand, those requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals.” In our opinion, the present decision is very well in line with the previous decisions on the graphic representation of olfactory and colour signs. In particular, the Court gave a clear guidance to the applicant that where a sound sign is applied for, this must be expressis verbis stated in the application and that a graphical representation in the form of a classical musical notation (“a stave divided into measures …” see above) complies with the requirements of graphic representation. It is interesting that in an obiter dictum, the Court pointed out that it would not deliver a ruling on the questions whether a sonogram, a sound-recording, a digital recording or a combination of those methods complies with the requirements for graphic representation as requested by e.g. the French and Austrian government in written submissions. As a reason therefore, the Court explained that the basic applications for registration of sound signs underlying the case did not contain a graphic representation in any of the above-mentioned forms. The Court thus concluded that the above questions are only hypothetical and declined to deliver an advisory opinion thereon.
“DOUBLEMINT” - Decision on Descriptive Signs Dr. Utz Kador, Kador & Partner, Munich, Germany In its “DOUBLEMINT”-decision, the European Court of Justice gave a more precise interpretation of Art. 7(1)(c) Community Trade Mark (CTM) Regulation, which prohibits the registration of trade marks consisting exclusively of descriptive terms. In its decision, the Court overruled a ruling given by the European Court of First Instance in which the term “doublemint” was found to comply with Art. 7(1)(c) CTM Regulation. In particular, the Court expressed its opinion that the Court of First Instance had applied a wrong “test” when assessing compliance of the term “doublemint” with Art. 7(1)(c) CTM Regulation. The test applied was that signs or indications whose meaning goes beyond merely descriptive are capable of being registered as Community trade marks. This lead the Court of First Instance to the interpretation of Art. 7(1)(c) CTM Regulation as precluding only the registration of trade marks which are exclusively descriptive of the goods or services or of the characteristics applied for. In contrast to this opinion, the ECJ made clear that “a sign must … be refused registration under the provision if at least one of its possible meanings designates a characteristic of the goods or services concerned”. Furthermore, the ECJ pointed out that it is not necessary that the signs and indications composing the mark must actually be used at the time of the application for registration in a way that it is descriptive, but that it is sufficient that such signs and indications could be used for such purposes. In addition to giving a more precise interpretation of Art. 7(1)(c) CTM Regulation this decision is interesting insofar as both the applicant as well as the Court of First Instance relied on the ECJ Ruling “Baby-Dry” in which the Court had expressed quite a liberal view on Art. 7(1)(c) CTM Regulation. However, in the present decision, the ECJ at no instance cited nor commented on the “Baby-Dry” decision. This can be seen as an indication that the ECJ does no longer support the reasoning of the liberal “Baby-Dry” decision although this, however, was not stated expressis verbis. In this regard, the present decision is in line with decision “Companyline” in which the Court gave a stricter ruling on Art. 7(1)(b) CTM Regulation concerning the registration of terms lacking distinctiveness as it did in decision “Baby-Dry”. It can, thus, be concluded from the present as well as the “Companyline” decision that relying on the liberal “Baby-Dry” decision will no longer be of help for applicants in proceedings before the OHIM.
RECENT DECISIONS OF THE EUROPEAN COURT of FIRST INSTANCE (CFI)
ARCOL ./. CAPOL Dr. Utz Kador, Kador & Partner, Munich, Germany This decision dated 10 November 2004 refers to the usability of evidence submitted to the Board of Appeal of the Office for Harmonization (OHIM) after a time-limit specified by the Opposition Division of the OHIM therefore. In the appeal proceedings, the opponent had for the first time claimed the highly distinctive character of the earlier trade mark CAPOL by submitting a declaration in lieu of an oath from the opponent’s managing director and a list of the opponent’s customers. The Board of Appeal of the OHIM did not consider the respective facts because they had been submitted after the time-limit specified by the Opposition Division of the OHIM. The Court of First Instance (the CFI), however, claimed that this decision was not consistent with the so-called principle of the “continuity in terms of the functions” between the departments of the OHIM. According to this principle, the Board of Appeal must consider all arguments submitted by the parties with respect to facts and legal issues, as long as these arguments have not been submitted with delay. Therefore, the continuity in terms of the functions between the departments of the OHIM does not mean that a party would be excluded with the presentation of certain arguments before the Board of Appeal if the party has not presented these arguments before the department of the first instance. Instead, the Board of Appeal must also consider arguments that have only been presented before the Board of Appeal as long as they have not been submitted with delay. In the present case however, the opponent had submitted the respective arguments in due time within the four months time-limit for the substantiation of the appeal. Therefore, the Board of Appeal could not refuse to consider the new arguments as well. As a consequence of this decision, one should not hesitate to submit further arguments with respect to facts and legal issues in the appeal proceedings that have not been presented before the Opposition Division of the OHIM in the proceedings of first instance.
HIPPOVIT Dr. Utz Kador, Kador & Partner, Munich, Germany In the “HIPPOVIT” decision of 8 July 2004, the Court of First Instance (CFI) defined more clearly which factors have to be considered in order to assess the existence of “genuine use” in the sense of Art. 43(2) CTM Regulation. After notifying both parties that no further arguments would be taken into consideration, the OHIM Opposition Division rejected the opposition, thereby ignoring certain arguments submitted by both parties after that notice. The Board of Appeal of the OHIM then rejected the appeal of the opponent because, according to the submitted evidence, the turnover achieved with products sold under the trade mark in question in the amount of DEM 12,500.00 merely represented the sale of 450 units of the respective products and was minimal in relation to the total annual turnover achieved by the opponent. The CFI firstly confirmed the general principles according to which all relevant facts and circumstances have to be considered in order to determine whether the use of a trade mark is genuine. For example, the nature of the respective goods or services has to be observed as well as the characteristics of the market and the scale and frequency of use of the trade mark. However, there is a certain interdependence between these factors according to which certain factors use may be compensated for by other factors. Consequentially, the OHIM should have taken into consideration that it may be economically justified to market a product despite the fact that only a minimal share in the annual turnover is achieved by the respective products. Also, a small percentage of annual turnover may correspond to a small amount in absolute terms for a smaller undertaking. Therefore, the ratio between the opponent’s overall turnover and that achieved by sales of the products sold under the trade mark could not suffice to determine the existence of the required genuine use. Furthermore, the OHIM had failed to consider the argument of the opponent that the products were only used in small quantities and that the number of products sold under the trade mark was rather low because the opponent had just relaunched the marketing of the respective products. Accordingly, when genuine use has to be demonstrated, we recommend to not only present the mere numbers of sold products and achieved turn over, but to also give all details necessary to clarify the economic significance of these numbers for the undertaking in question. Moreover, it should be noted that the CFI also held in this decision that that Rule 22(1) of Regulation No. 2868/95, according to which proof of use has to be supplied within the respective period specified by the OHIM, cannot be interpreted as excluding additional evidence where new factors emerge after this period. Therefore, we recommend to also submit further facts that occur after the time-limit as specified by the OHIM if they seem necessary to demonstrate genuine use.
Decision concerning genuine use of trade marks Dr. Utz Kador, Kador & Partner, Munich, Germany On December 12, 2002, the CFI in its “HIWATT” decision concerning an opposition case gave a ruling on the important questions of what is to be regarded as “genuine use” of a trade mark as required e.g. by Art. 43 (2) and (3) CTM regulation, and how such use must be proved. On the first question, the Court pointed out that “genuine use implies real use of the mark on the market concerned for the purpose of identifying the goods or services. Genuine use is therefore to be regarded as excluding minimal or insufficient use when determining that a mark is being put to real, effective use on a particular market. In that regard, even if it is the owner’s intention to make real use of his trade mark, if the trade mark is not objectively present on the market in a manner that is effective, consistent over time and stable in terms of the configuration of the sign so that it cannot be perceived by the consumers as an indication of the origin of the goods or services in question, there is no genuine use of the trade mark.” With these statements, the Court made clear that only a serious, real use of the trade mark in the market(s) relevant for the goods/services as registered will be considered “genuine use”. By that, the Court also indicated that occasional, “artificial” use for the sole purpose of maintaining the mark on the register will not be sufficient. With regard to the second question concerning the proof of genuine use, the Court held that “genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned”. This statement of the Court was occasioned by the fact that the Opponent, in order to prove the use of the mark upon which he had based his opposition, had submitted a catalogue allegedly distributed at a trade fair and a documentation of the trade fair as the only pieces of evidence. The Opponent had argued that it “was more than likely” on the basis of the evidence provided that the trade mark had been (genuinely) used. The Court went on to stress that in accordance with Rule 22 (2) of the Implementing Regulation to the CTM Regulation, for proving genuine use evidence must be submitted which proves place, time, extent and nature of use of the trade mark. Thus, the decision clearly indicates that for a successful proof of genuine use, evidence is to be submitted showing that the use of the trade mark in question in all of the above aspects (“place, time, extent and nature”) complied with the requirements for “genuine use”.
Decision in Case T-247/01 On December 12, 2002, the CFI delivered a judgement on the distinctiveness acquired through use after the date of filing with regard to a provision of the Community Trade Mark Regulation. Pursuant to this provision, absolute grounds for refusal shall not apply if the trade mark has become distinctive in relation to the goods or services for which the registration is requested. In the Courts opinion “the provision has to be interpreted as meaning that a mark must have become distinctive through use before the application was filed. Accordingly, it is irrelevant that the mark may have acquired distinctiveness through use after the application was filed but before The Community Trade Mark Office, in the form of an examiner or, where appropriate, the Board of Appeal, has determined whether there are any absolute grounds for refusing registration of the mark.” OHIM will not consider evidence of use that occurred after the date of filing. Consequently, before filing a trade mark application, which will definitely be rejected on absolute grounds and shall be based on the acquired distinctiveness one should make sure that the evidence proving the distinctiveness, is sufficient. Thus, the trade mark must have become distinctive in every country where the absolute grounds apply. However, if the absolute grounds apply within the whole EU, it is sufficient to prove the acquired distinctiveness due to turnover, expenses and publicity over 50 % in several relevant markets.
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BABY-DRY and BRAVO Two Important Decisions of the European Court of Justice in Trade Mark Matters Jennifer Clayton-Chen,
Kador & Partner, Munich, Germany, November 2001 Abstract: The European Court of Justice (ECJ) is becoming an increasingly important factor with regard to the interpretation of trade mark law in the European Community. On September 20, 2001 and on October 4, 2001 the European Court of Justice (ECJ) issued two important decisions in trade mark matters. The first one - "BABY-DRY" - is the first ECJ decision ever to deal directly with a Community trade mark. The second one - "BRAVO" - deals with the interpretation of the Trade Mark Harmonization Directive, but the specific provision is identically contained in the Community Trade Mark Regulation, so that the decision indirectly also affects the interpretation of the Community Trade Mark Regulation. As a consequence of the harmonization of trade mark law among EU Member States the two decisions are also relevant with regard to the national trade mark laws in the EU.
1. "BABY-DRY", Judgment of September 20, 2001, Case C-383/99 P This is the first ECJ judgment which deals with an appeal filed against a judgment of the Court of First Instance of the European Communities (CFI) in a CTM matter, and at the same time the first ECJ decision that deals with trade mark registrability questions. The complete texts of both the ECJ and CFI judgments can be found at the ECJ website (http://curia.eu.int) by entering the search word BABY-DRY. The main issue under review was the question of distinctiveness and descriptiveness of Community trade marks, in this case the term "BABY-DRY". The CFI had held that, since the purpose of nappies was "to keep babies dry", the term "BABY-DRY" merely conveyed to consumers the intended purpose of the goods and exhibited no additional feature to render the sign distinctive. The CFI had therefore held that "BABY-DRY" was not capable of constituting a Community trade mark. The ECJ set up much narrower criteria and in addition held that Article 7 (1) of the CTM Regulation (absolute grounds for refusal) has to be interpreted in conjunction with Article 12 (limitation of effects of a Community trade mark)."It is clear from both provisions taken together that the purpose of the prohibition of registration of purely descriptive signs or indications as trade marks is to prevent registration as trade marks of signs or indications which, because they are no different from the usual way of designating the relevant goods or services or their characteristics, could not fulfil the function of identifying the undertaking that markets them and are thus devoid of the distinctive character needed for that function". The Court went on to say that "the signs and indications referred to in Article 7(1)(c) of the Regulation are only those which may serve in normal usage from a consumer's point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought." With regard to marks composed of several words, "any perceptible difference between the combination of words submitted for registration and the terms used in common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark" (emphasis - also in other places - added). In applying these criteria to the term "BABY-DRY", the Court concluded: "While each of two words ("baby" and "dry") in the combination may form part of expressions used in everyday speech to designate the function of babies' nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics". (Emphasis was added for easier legibility.) The Court concluded that "word combinations like "BABY-DRY" cannot therefore be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive power on the mark so formed and must not be refused registration under Article 7 (1) (c) of the Regulation, and annulled the judgment of the CFI as well as the decision of the Board of Appeal of OHIM. Comments: This decision will have a considerable impact on the decision practice not only of the OHIM but also of the national Patent and Trade Mark Offices in the EU. According to ECTA flash of October 10, 2001, during a meeting in Alicante on September 3, 2001, the participants from OHIM had stated that the Opinion of the Advocate General in the BABY-DRY case (which the ECJ later followed), "had come as something of a surprise".
2. "Bravo", Judgment of October 4, 2001, Case C-517/99 This case was brought to the ECJ by the German Federal Patent Court for a preliminary ruling on the interpretation of Article 3 (1) (d) of the Trade Mark Harmonization Directive. This provision deals with grounds for refusal or invalidity in case of "trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade". The case results from a difference in opinion between the German Federal Supreme Court (BGH) and the Federal Patent Court concerning the interpretation of the cited provision and of the harmonized provision of the German Trade Marks Act, which - like some of the other harmonized laws (e.g. in Denmark and Sweden) - provides that registration is refused to "trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods and services" (emphasis added). In the case pending before the Federal Patent Court, the German Patent and Trade Mark Office had refused to register the trade mark "Bravo" for writing implements, and the Federal Patent Court had taken the view that under Article 3 (1) (d) of the Directive it was sufficient for a refusal if the word mark has become customary in the current language or in the bona fide and established practices of the trade without specifically describing the goods in question, so that the German provision would have to be applied accordingly. If this view was correct, this would, of course, provide a much broader basis for the refusal to register trade marks under Article 3 (1) (d) of the Directive, respectively the national provisions. The ECJ ruled that the purpose of Article 3 (1) (d) of the Directive is to prevent the registration of signs or indications that are not capable of distinguishing the goods or services of one undertaking from those of other undertakings, so that the question whether particular signs or indications possess distinctive character cannot be considered in the abstract and separately from the goods or services they are intended to distinguish. The Court furthermore held that, where the signs or indications concerned have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark is sought, it is immaterial whether the signs or designations in question describe the properties or characteristics of those goods or services. Comments: By confirming that the application of Article 3 (1) (d) of the Trade Mark Harmonization Directive is inherently limited to the refusal of trade marks which have become customary to designate the goods or services the marks are intended to distinguish, the ECJ has excluded the broader interpretation such as applied by the Patent and Trade Mark Office and Federal Patent Court in Germany. Since the wording of the above cited provision is identically contained in the Community Trade Mark Regulation (Article 7 (1) (d) ), the interpretation of the ECJ will not only be valid for the national Patent and Trade Mark Offices but also for the OHIM. |
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