TABLE OF CONTENTS
 
 
 
 
 
 
 
 
The Registered Community Design – Four Years On
A Look at the RCD
The registered Community design right was conceived by the EU legislators to offer designers and design-investing industries trading in the EU with a fast, efficient and, above all, inexpensive way to protect their creations in the ever expanding European Union marketplace.

Since the granting of the first registered Community designs on April 1 st four years ago, the OHIM's designs department and the design right itself have come a long way, with RCD protection becoming increasingly popular with designers and companies the world over.

In purely numerical terms, since 2003 the Office has received almost 65,000 applications to register nearly a quarter of a million new designs. Over half of these applications were for multiple designs, with an average of almost four designs per application. This feature, which enables designers to obtain protection for multiple designs without limitation in one single application, together with a progressively decreasing fee scale as the number of designs in any one application rises, has proved an immensely popular mechanism and has made the RCD more accessible than ever.

Protection for a single registered Community design costs as little as €350 for the first five years of protection in a 27 Member State EU, dropping to only €80 for any design applied for beyond the first ten designs in a multiple application.

Time and Quality Standards
Without doubt, the speed with which a registered Community design proceeds to registration and publication is the principal attraction in a rapidly evolving EU design market, allowing users to move effectively to protect their rights, certificate-in-hand, and thus ensure the protection of their rights before third party infringers.

From the outset it was hoped that a registered Community design would be registered within three months of it arriving at the Office, and this target was met and maintained from 2005 onwards.

Aware of the fundamental importance of speed in the registration procedure, internal reorganisation and increased performance from staff dealing with RCD applications has now resulted in designs being registered in under two months. Work continues to be done in this field to achieve the ultimate, though still distant, goal of almost immediate registration, within only a few days of filing.

However, these rapidly improving time standards in no way compromise the quality of the work carried out during the registration procedure, and to this end, a number of random but regular control checks are done to detect and eradicate errors, particularly in relation to possible mistakes on the Bulletin and, consequently, on the certificate. With a current error rate of under 4%, users can rest assured that the registration procedures involved in granting their design rights are carried out to the highest of standards. Nevertheless, the Office continuously improves its operations to upgrade the quality of these results.

Indeed, in the two recent User Satisfaction Surveys, the RCD related aspects of OHIM's operations were highly rated, with no elements of note having caused any significant level of dissatisfaction in the eyes of design filers.

Who Files for RCD protection?
No one single industry sector stands out significantly above the rest when it comes to RCD filings, and Community protection for designs has seen applications coming form every conceivable market segment. Nevertheless, with over 12% of all RCDs coming from the furniture industry, this sector is the most popular, though it is closely followed on slightly over 8% by designs from the textile industries. Packaging comes in third place on 7.5%.

Though popular with designers from a wide range of countries, over 75% of all registered Community designs are filed for by users based in the European Union. German based owners alone account for a quarter of all RCDs filed at the OHIM since 2003, followed by Italian design filers who make up 15% of the total. Leading the remaining 22% of non-EU deign filers is the USA, with just under 10% of the overall RCD filings.

In terms of the confidence placed in the registered Community design by users, experience shows that the validity of the RCD is rarely challenged before the Office. Less than 1% of registered designs are subject to invalidity proceedings, which speaks out for the predictability of the system.

Improvements
As well as ensuring speed, cost effectiveness and quality, the Office also looks towards implementing any other measures which might make dealing with the OHIM and filing an RCD as effortless as possible.

Improvements to an initially rudimentary and somewhat static RCD Online database have been carried out to make the searching of data easier and faster, with more search criteria available and a more organised search structure applied.

The electronic filing tool is being improved, to reduce to some extent the previous technical problems encountered when e-filing RCDs, especially when attaching representations of the designs to the application.

The Office intends to plan daily, as opposed to weekly publication of the RCD bulletin, which will make the RCD system even more dynamic, allowing the enforcement of registered rights to be effective earlier in time.

Future Prospects
The accession of the European Community to the Geneva Act, decided on by the Council of the European Union in December last year, will allow companies to obtain, by means of a single application, protection for a design not only throughout the EU, via the Community Design system, but also in the countries which are members of the Geneva Act of the Hague Agreement.

The entry into force of the Regulation is dependent on a number of different factors, particularly the drafting and approval of the Implementing Rules and the necessary adjustments to the Fee Regulation. It is foreseen that this will take place at some time in 2007, leading to an entry into force of the link to the Hague system sometime in the 1 st quarter of 2008.

The Office's more long term vision of undertaking the registration and publication procedure within only a few days of filing will form part of much of the design department's efforts over the coming months and years.

As always, providing swift, cost-effective and solid legal protection for designers operating in the EU market place will continue to be at the forefront of OHIM's design related activities, with a view to fully implementing the political mandate incorporated into the Regulation's recitals.

The James Nurton interview
James Nurton is a specialist intellectual property journalist from the UK and is currently the managing editor of the leading global magazine for IP owners, Managing Intellectual Property . He has collaborated with the OHIM for many years in the preparation, drafting and revision of editorial content for a number of the Office's publications and, in March 2007, he began publishing a monthly Alicante News interview with CTM and RCD users, giving readers a first hand-insight into how the OHIM and its services are perceived by those dealing directly with the Office.

This month, James interviews Gerhard Bauer, head of the Trademark, Design-Patent, Domain Name and IP-Contract Department of DaimlerChrysler AG, based in Stuttgart, Germany. He is Treasurer of the International Trademark Association (INTA) and is a frequent speaker on IP topics, particularly in Asia.

How many CTM applications have you made?
About 1000 applications in total. We started at the very beginning, on 1 st April 1996 . Our filings have been at a steady level since then, except on the first day when we had a whole bundle of applications that we had filed between 1 st January and 1 st April to claim seniority.

What was the first CTM you filed?
We filed a bundle of more than 100 together. Of course, the mark for Mercedes-Benz was the first. We had no trouble getting that registered.

Are you pleased with the examination of CTMs?
Overall we are satisfied – otherwise we wouldn't use the system. But there is always room for improvement. In general we are pleased with the improvements made to examination, in particular the speeding up the process of registration if there are no objections by the examiner and no oppositions filed by third parties. We hope for further improvements when national searches are abolished next year.

What improvements would you like to see?
I'm looking forward to improvements related to e-business. The Office has been actively promoting this and there are so many projects going on. The usefulness of these projects is very clear to us.

How can they be improved?
I think it is more extended than improved. We need extensions to other services. The one I would like to see most is real electronic communication for the whole procedure, between the office and the applicant or representative. MYPAGE is the first step towards this and it could be extended to give direct access to all your files.

Would you like to see fees reduced?
Absolutely, yes. I am a user of the system, spending money obtaining trade mark registrations. If I look at the situation we have that OHIM generates more income than it spends (including on HR, investment and so on) that is a clear indication that the fees should be cut. But we would like to see a practical approach – the Office must be flexible enough to adapt from year to year.

What is the most unusual mark you have registered as a CTM?
There are still some pending cases. For example, a touch mark application is pending with the Boards of Appeal. It is for the shape of a miniature seat for a car: if you move the switch on the miniature seat, the seat of the car will move in a corresponding way. A journalist had mentioned that it is a typical feature of a Mercedes-Benz car and we think this association of a feature with a brand is the indication of a trade mark. It was filed a few years ago. We are aware of just two touch mark applications at OHIM and one of them is mine!

We have also filed three-dimensional marks, colour marks and so on. These are no longer unusual, but there are still some things that are difficult – particularly the consistency of some of the decisions on these marks.

Do you use the registered Community design?
This is our general way of protecting our designs, and we have filed from day one on. It's very much part of our filing strategy. From where we come from, it's a familiar system as there is no examination of registered designs in Germany either. But we still have to see how the courts will act.

Do you use designs to protect logos as well as features?
That's a very interesting approach. Sometimes the trade mark can complement the design and vice versa. So some logos are registered as trade marks as well as designs.

You mentioned the Boards of Appeals. How well do you think they are working?
They work quite well, especially now they are aware of the problem of inconsistency, and they have improved a lot. I think the rate of confirmation/reversal by the Court of First Instance supports that.

How long have you worked in IP?
I have worked in IP since 1987 and in trade marks since 1992. IP was always of interest and my father was in the profession. I trained as an electrical engineer and I started doing patent work and prosecution, and then trade marks became really interesting: everything changed in trade marks; we had the Madrid Protocol, the Community trade mark, the national laws were harmonized. It was one of the most interesting times.

What do you like about working in trade marks?
It's the diversity of cases you have. You deal with logos, word marks, claims and 3D shapes, and you can see how powerful this tool is in a global environment with different laws and jurisdictions. You can also see the close link to design matters – I'm in charge of both trade marks and designs at DaimlerChrysler.

I think the biggest challenge is managing a big portfolio – that is, both the legal issues and also how to handle it in an effective and safe way. You have to make sure your portfolio is kept up-to-date, especially with regard to, for example, use requirements.

How big is your department?
In trade marks, we have seven people and one dealing with domain names. We have three in designs and three who handle all IP agreements, including patents, trade marks and designs. It is quite a big team so what can be done in-house is done in-house.

What trade mark developments would you like to see?
We hope for more harmonization in trade mark matters – at least in the formalities if not in substantive law. The Singapore Treaty, for example, will make life easier for trade mark owners.

We don't see any competition between the Madrid Protocol, the CTM and national marks but use them to support each other, for example extending international registrations to Community trade marks. With the Madrid system, the most interesting thing is to have more countries join – more Arabian countries and especially more central and Latin American countries.


Community Trade Mark

Decision of the Cancellation Division of 30 January 2007 in the revocation proceedings

OHIM reference number: 1020C
Community trade mark: 835033
Language of the proceedings: English

APPLICANT Osotspa Co.,
Ltd 2100 Ram Khamhaeng Road Huamak, Bangkapi Bangkok 10240 THAILAND
REPRESENTATIVE

Urquhart-Dykes and Lord LLP
30 Welbeck Street
London
W1G 8ER
UNITED KINGDOM

against

COMMUNITY TRADE MARK PROPRIETOR

Red Bull GmbH
Am Brunnen 1
A-5330 Fuschl am See
AUSTRIA

REPRESENTATIVE

LOVELLS
Bilbao , 1-5º Piso
E-03001 Alicante
SPAIN

THE CANCELLATION DIVISION

composed of: Alexandra Apostolakis, Richard Thewlis and Julio Laporta Insa has taken the following decision on 30 January 2007 : 

1•  The registration of Community trade mark No 835033 is partially revoked, namely for:

“Non-alcoholic drinks; energy and sports drinks; isotonic drinks; non-alcoholic cocktails.” (in Class 32)
“Alcoholic beverages (except beers); hot and mixed alcoholic drinks, in particular alcoholic energy drinks; alcoholic preparations for making beverages; spirit-based cocktails and aperitifs.” (in Class 33)

2. The revocation application was unsuccessful in relation to the following goods (for which, inter alia , the Community trade mark will remain registered):

 “Beers; mineral and aerated waters; fruit drinks and fruit juices; syrups and other preparations for making beverages; effervescent tablets and powders for drinks.” (in Class 32)
“Mulled wine and mixed milk drinks; wines, spirits and liqueurs; wine-based cocktails and aperitifs; beverages containing wine.” (in Class 33)

 3. The Community Trade Mark Registration also remains registered in respect of the following non-contested goods:

 “Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, edible salt, mustard; vinegar, sauces (condiments); spices; ice; coffee, tea, cocoa and chocolate drinks; coffee and cocoa preparations for the manufacture of alcoholic and non-alcoholic beverages; cereals for human consumption, in particular oat flakes and other cereal flakes; food flavourings; confectionery, sweets, fruit gums, chocolate, chocolate products, pralines with liqueur fillings; chocolate mixtures containing alcohol; chewing gum, fruit and muesli bars.” (in Class 30)

4. Each party shall bear its own costs.

 FACTS AND ARGUMENTS

(1) The Community trade mark application No 835033 for the mark “STIMULATION” was filed on 25 May 1998 and was registered on 17 May 1999 for a range of goods in classes 30, 32 and 33.

(2) On 1 October 2004 the applicant filed a request for revocation.

(3) The grounds for the request are those of Article 50(1)(b) of Council Regulation (EC) No 40/94 of 23 December 1993 on the Community trade mark (“CTMR”) (OJ OHIM 1/95, p. 53), i.e. in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered.

(4) The applicant files its request for a declaration of revocation in respect of part of the goods covered by the Community trade mark namely:

Beers; mineral and aerated waters and other non-alcoholic drinks; energy and sports drinks; isotonic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; effervescent tablets and powders for drinks; non-alcoholic cocktails. (in Class 32)

Alcoholic beverages (except beers); hot and mixed alcoholic drinks, in particular alcoholic energy drinks, mulled wine and mixed milk drinks; wines, spirits and liqueurs; alcoholic preparations for making beverages; spirit or wine-based cocktails and aperitifs; beverages containing wine. (in Class 33)

(5) On 21 January 2005 the Community trade mark proprietor was notified of the request.

(6) The CTM proprietor submitted its observations and evidence on 21 June 2005 . The applicant replied to it on 28 October 2005 and the CTM proprietor replied to the said observations on 27 March 2006 .

(7) On 7 April 2006 the parties were informed that a decision would be taken.

(8) The arguments of the parties as regards the grounds for revocation can be summarised as follows:

(9) The applicant is of the view that the mark “STIMULATION” has, in consequence of acts or inactivity of the proprietor, become a common name in the trade for the goods for which it is registered in Classes 32 and 33. In order to support this allegation the applicant submitted articles, published in European Member States, showing use of the word “stimulation” in relation to particular kinds of soft drinks, these comprise:

  • An article from the publication Beverage World dated 3/01/05 . This article discusses and compares the various kinds of soft drinks available on the German Market in 1994. It refers to the Red Bull product of the CTM proprietor as an Energy or Pep drink and refers to the invigorating “stimulation effect” of such caffeine-ingredient products. This is compared with the “slightly stimulating” effect of iced tea.
  • An article from the publication London Health, it is dated 1998 and is written by Karen Hambly B.Sc. Sports Science. She refers to the various kinds of sports drinks available on the British market and mentions the huge growth in sales over the last year of STIMULATION DRINKS such as Red Bull (the leading brand) and Cult. She goes on to say that considerable research has been conducted on the effects of caffeine and it is well proved that it stimulates the circulation and nervous systems as well as increasing stamina. This effect is compared with that of herbal-based drinks which provide a soothing, tonic effect to the body but which do not contain stimulants.
  • An article from Grocer, dated 24/04/99 , referring to a vodka based stimulation drink produced by the Dublin based Boru Vodka Company. Like Red Bull this drink contains taurine and caffeine, however, unlike Red Bull, it also contains alcohol.
  • A summary of an Adjudication in an advertising standards case within which reference is made to certain kinds of concentrated carbohydrate-based drinks (those containing caffeine, guarana, ginseng) being bought and sold as stimulation drinks.
  • Several further articles from 2000 and 2001 variously referring to: (i) Red Bull as a stimulation drink, (ii) the production by Cott beverages of products such as energy and stimulation drinks, (iii) the introduction into the Austrian market of Asian stimulation drinks by Red Bull, (iv) Red Bull's dominant presence in the stimulant drinks market, young people being the major consumers.
  • A product review, dated 25/05/2003 , for the KICK stimulation drink (containing caffeine), this being “Tesco's own version of a stimulation drink”. The writer says “I recommend this product, especially if you drink stimulation drinks.”.
  • A report published by Global Information, Inc. in September 2003 giving “a clear and practical understanding of the on trade soft drinks market in the UK ”. The report gives the following definition: “Stimulation drinks, also referred to as smart or high-intensity drinks, eg Red Bull. These are designed to stimulate both mind and body, and aim to improve concentration, reaction time and endurance, with an energy boost of up to eight hours. Stimulation drinks contain active ingredients such as caffeine and taurine, and are non-alcoholic. (This report is apparently considered by the applicant to be of great significance because he claims “that the grounds of revocation have existed since at least September 2003”).
  • Various internet print-outs including: A print-out concerning the German product “peep one”, produced since 2000 and described as one of the first in a new generation in the soft drinks area of energy-wellness-stimulation drinks.
  • A print-out concerning the company history of Antrim Hills Spring Water dated 24/09/2004 . This refers to an expansion of the company's range of products to include sports drinks, fruit juice drinks, children's drinks and a stimulation drink.
  • A print-out of a report from The Laboratory of the Liquid Arts and Sciences dated 12/07/2004 referring to stimulation drinks.
  • An article entitled “Promoting Responsible Drinking” by The Portman Group, this being a British producer-led organization responsible for establishing a Code of Practice on the Naming, Packaging and Merchandising of Alcoholic Drinks. The article refers to the introduction of a new rule into the Code in 2000 because of the sudden development of alcoholic, “energy” or “stimulation” drinks.
  • Details about a book called “The 2003-2008 World Outlook For Stimulation Drinks”; also details about a book called “Energy and Stimulant drinks” (2003) covering the UK market for such drinks.
  • A print-out from the CTM proprietor's website in which it is claimed that the Red Bull energy drink stimulates metabolism.

(10) In response to the above the CTM proprietor argued that the documents relied upon by the applicant for revocation show use of the term “Stimulation Drink” rather than the word “Stimulation” (solus). He states that the documents refer to the UK alone and to no other Member State and he alleges that almost all the documents refer to the CTM proprietor Red Bull when using the term “stimulation drink”.

(11) The CTM proprietor submits data showing sales figures of the Red Bull product in the EU for the last ten years. In the UK the proprietor's drink has been sold as RED BULL STIMULATION since August 1996. It is maintained that “Stimulation” is an uncommon and fanciful term and that it is distinctive when used in relation to the goods. It is alleged that most of the websites quoted by the applicant (in support of its view that “Stimulation” is a generic term) in fact quote the CTM proprietor, thus confirming that the consumer links this word with Red Bull.

(12) Moreover the CTM proprietor alleges that the word “Stimulation” has no descriptive meaning when used in relation to drinks given that it primarily refers either to a state of personal enthusiasm or to the chemical stimulation of drugs.

(13) Extensive evidence is given of the CTM proprietor's use of the mark “STIMULATION” in the UK . Not only does this mark appear on every can of the Red Bull drink, it is also used extensively in the marketing campaigns associated with Red Bull. Market Share figures show that Red Bull achieved in 2003 a 3.8% value share of the UK soft drinks market and a 91.1% value share of the energy drinks market. In addition the results of a UK Market Research survey are submitted. When asked the first question, whether the consumer would see in the word STIMULATION applied to energy drinks a reference to a specific company, some 38% of the 521 consumers asked in this survey answered with a “yes”. When those who thought that STIMULATION was a reference to a specific company were asked which company was using the word STIMULATION 74% referred to RED BULL.

(14) In reply to the above the applicant for revocation essentially re-asserts the descriptiveness of the mark and alleges that all the brochures and marketing material submitted demonstrate use of the mark “RED BULL STIMULATION” and not just “STIMULATION”. Moreover the applicant analyses the results of the UK Market Research survey, arguing that (i) a fairly small number of people were surveyed, (ii) the results do not conclusively demonstrate that consumers associate STIMULATION as a brand of the CTM proprietor, and (iii) in any case the replies given demonstrate that this word is understood as describing a quality of the RED BULL drink.

(15) The applicant further alleges that the CTM proprietor has misused the STIMULATION trade mark in such a way that it has become a generic word for drinks. He considers that the CTM proprietor has not properly identified STIMULATION as a trade mark, and that he has even undermined his own case by using the word in a descriptive context in some of the exhibits submitted.

(16) The CTM proprietor maintains (citing paragraph 30 of the Nestlé judgement of the European Court of Justice, C-353/03) that STIMULATION, although used as a component of a larger mark, may nevertheless have acquired a distinctive character by virtue of such use in the minds of the relevant consumers. Moreover further evidence is submitted aiming to demonstrate that third parties use the term STIMULATION only in order to refer to RED BULL.

(17) The applicant requests that the CTM registration should be partially revoked and that the CTM proprietor be ordered to pay costs.

(18) The CTM proprietor requests rejection of the application for revocation
and that the applicant be ordered to pay costs.

GROUNDS FOR THE DECISION

On the admissibility of the request

(19) The request complies with the formalities prescribed in the CTMR and in Commission Regulation (EC) No 2868/95 implementing the CTMR (“IR”) (OJ OHIM 2-3/95, p.258) and is therefore, admissible.

On the substance

(20) Pursuant to Article 50(1)(b) CTMR the rights of the proprietor of the Community Trade Mark shall be declared revoked on application to the Office if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in trade for a product or service in respect of which it is registered.

(21) Pursuant to Article 54(1) CTMR, the Community trade mark shall be deemed not to have had, as from the date of the application for revocation, the effects specified in this Regulation, to the extent that the rights of the proprietor have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties. In the present case the applicant states that he believes that the grounds for revocation have existed since at least September 2003. However, if the Office disagrees, the applicant requests that the registration should be revoked from the date of request for revocation.

(22) With regard to the meaning of the term “the common name in trade” it should firstly be stated that it is immaterial whether or not the sign in question directly describes the properties or characteristics of the goods concerned. What must be decided is whether it is in the established practice of the trade to use the mark to designate the goods for which it is registered. The question at hand is therefore not whether “STIMULATION” directly describes a quality or characteristic of certain drinks, but rather whether it has been shown that this term is actually used in the trade in order to refer to a class of drinks. In this regard it is relavant to note the reasoning adopted by the Court of Justice in Case C517/99 (Merz & Krell GmbH & Co.) in relation to Article 3(1)d of First Directive 89/104/EEC. There the Court differentiated the notion of “descriptiveness” (Article 3(1)c) from the notion of “being customary in the current language or in the bona fide and established practices of the trade” (Article 3(1)d). While these two notions may overlap, or even coincide, nevertheless descriptiveness is not a prerequisite for the application of Article 3(1)d of the Directive. By extension the present applicant for revocation is not required to demonstrate that “STIMULATION” has intrinsic descriptive meaning vis a vis the attacked goods. What must be demonstrated is that the drinks trade has come to think of this term as connoting a type of drink because its capacity to distinguish the goods of a single proprietor has been lost in consequence of acts or inactivity of the proprietor.

23) In cases where intermediaries participate in the distribution to the consumer or the end user of a product which is the subject of a registered trade mark, the relevant circles whose views fall to be taken into account in determining whether that trade mark has become the common name in the trade for the product in question comprise all consumers and end users and, depending on the features of the market concerned, all those in the trade who deal with that product commercially (See ruling in ECJ Case C-371/07 of 29 April 2004, Bostongurka ).

On the evidence provided by the applicant for revocation

(24) While the applicant for revocation claims that his evidence comprises “articles published in European Member States”, it is nevertheless clear that the lion's share of the evidence submitted refers only to the British market. Moreover, it is in relation to the British market that the applicant centres his argument that the proprietor's own acts have led to degeneration of the distinctiveness of the STIMULATION trade mark. This being the case the Office will limit its analysis to the situation prevailing in the British market.

(25) The evidence provided by the applicant tends to support the contention that the term “Stimulation Drink” has become a known term in the UK drinks trade for designating a particular kind of drink which differs from more traditional fruit or tea-based drinks (essentially for refreshment) and sports drinks (having hypotonic, isotonic or hypertonic effects). The most convincing evidence in this regard is the report published by Global Information, Inc. entitled “On-trade Soft Drinks –UK-September 2003” (details given above). This gives clear indications that the industry recognises “Stimulation Drinks” as a definite category of drinks, of which Red Bull is the foremost example. This report is aimed at marketing professionals with an interest in the drinks trade and it is designed to offer a clear and practical understanding of the on trade soft drinks market in the UK . It provides various definitions of different types of drinks and it differentiates “energy drinks” (which provide physical energy through glucose) from “stimulation drinks” which are designed to stimulate both mind and body, and which contain active ingredients such as caffeine and taurine and are non-alcoholic. Red Bull is quoted as an example of such a drink. A further strong indication that the term “stimulation drink” was known in the trade as long ago as 2003 is given in the article “Promoting Responsible Drinking” by the Portman Group, a British producer-led organisation responsible for establishing a Code of Practice in the naming, packaging and merchandising of alcoholic drinks. In March 2003 this Group extended its Code of Practice to adapt to recent changes in the market which included inter alia “the sudden development of alcoholic “energy” or “stimulation” drinks.

(26) Elsewhere in the applicant's evidence “stimulation drinks” are described as a soft drink, a pick-me-up or a mixer. They are sweet and fizzy, contain caffeine or guarana and are generally aimed at a youthful market. They are commonly drunk with vodka and may even be sold with a vodka base.

(27) It is a feature of the drinks market that intermediaries are commonly involved in the sales chain (through sales in bars/pubs/clubs etc). The views of all those who deal with the products commercially must therefore be taken into account as well as that of the end consumer. The exhibits submitted suggest that professionals in the trade would have become familiar with the term “stimulation drink” at least by 2003. The point at which the general public would have become familiar with the term is less clear. In this regard the “Kick Stimulation Drink Product Review” (dated 25/05/2003 ) is clearly directed at end-consumers and it clearly assumes a knowledge on the part of the consumer of the significance of the term “stimulation drink”: “In all, I recommend this product, especially if you drink stimulation drinks”.

(28) In addition to the above the applicant also argues that the CTM proprietor has misused the “STIMULATION” trade mark in such a way that it has become a generic word for drinks. He refers to the CTM proprietor's advertising and its continual references to the stimulating properties of the Red Bull drink. In particular he refers to an exhibit provided by the CTM proprietor (“Fridge Deal 2 – 2000 UK ”), this is an advertisement for Red Bull which says: “You don't drink Red Bull. You use it. Red Bull is THE stimulation drink with a unique combination of ingredients and effect”. Such usage by the CTM proprietor completely undermines the distinctiveness of his own mark according to the applicant.

On the evidence and arguments provided by the CTM proprietor

(29) The CTM proprietor makes little attempt to deny that “Stimulation drink” is a term used in the trade. However he argues that the use of such a different term cannot prove that “STIMULATION” as such is descriptive or that it has become a common name for drinks. He points to the massive sales of the Red Bull drink in the UK since August 1996 and states that the mark “STIMULATION” has appeared on every single can of Red Bull energy drink sold in the UK . As a result of this usage he claims the mark has acquired distinctiveness and is generally recognised as a trade mark. He says that the fact that the mark “STIMULATION” is always used in proximity to its other word mark “RED BULL” does not mean that the trade mark stimulation is not being used. Citing the European Court of Justice in Nestlé case C-353/03, 7 July 2005 , he argues that acquisition of distinctive character may result from the use of a mark which appears separately from, but in conjunction with, a registered trade mark or as a component thereof. Finally he argues that, given the goodwill residing in the “STIMULATION” mark, other traders would stand to gain an unfair advantage, free-riding upon the reputation of Red Bull, if the mark became available for general usage as a consequence of it being revoked.

(30) The CTM proprietor conducted a market survey in the UK in December 2004. This survey was carried out by the independent market research institute MillwardBrown. No details are given as to how the sample of 525 respondents was chosen, nor of where the survey was carried out. The questions asked were:

  • When you hear the word “Stimulation” in relation to energy drinks does this make you think of any specific energy drink? (38% said yes; meaning 62% said no).
  • Of those who said “yes” to the above it was asked which company or companies do you think of? (84% mentioned Red Bull, with 74% mentioning it first; 40% mentioned Lucozade with 18% mentioning it first).
  • Of those who said “yes” to the first question it was asked which on a list of named drinks respondents would associate with “Stimulation”. (90% said Red Bull, 47% said Lucozade Sport, 39% said Red Bull Sugar Free, 34% said Lucozade, 20% said Red Devil, 17% said Tesco Kick, 12% said Asda Blue Charge, 10% said Purdey's and five other drinks were associated with stimulation by a small percentage of respondents.
  • Those who named Red Bull as a company using the word “Stimulation” were asked what makes you associate Red Bull with this word? (A selection of answers was provided to this question, but no indication is given as to how this selection was made. Answers include: “They use it in their adverts” and “The advertisement speaks about the drink stimulating your body and mind”).

(31) The CTM Proprietor provides many examples of commercials used in the UK . In these commercials the expression “STIMULATION FOR BODY AND MIND” is repeatedly used and much is made of the stimulating effect of Red Bull. While the commercials themselves are light hearted and joke-like, the claims made regarding the stimulating effect of the drink are clearly intended to be taken seriously, this being the principal thrust behind the entire marketing campaign.

(32) Finally the CTM proprietor submits further evidence that third parties use the term STIMULATION to refer to Red Bull. These exhibits demonstrate that Red Bull is a very well recognised stimulation drink and they also demonstrate that other stimulation drinks exist as well as edible stimulation products.

Conclusion

(33) The degeneration of a trade mark's distinctive force is something which is always more likely to occur when a mark has some sort of suggestive aptness about it, leading others to latch on to its suitability for designating not just a particular producer's product but a particular type of product. The CTM proprietor argues that “STIMULATION” is altogether too vague a term to describe any effect that a drink could purportedly have. Nevertheless the positive connotations of this word are part and parcel of the CTM proprietor's marketing campaign, in which it is claimed that the Red Bull drink “stimulates body and mind”, “stimulates metabolism” and is “THE stimulation drink”. Although stimulation of the body and mind is itself a fairly indefinite concept, it is nevertheless a desirable result of using the goods that they deliver some kind of “pick-me-up” effect due to the stimulants (such as caffeine) in them.

(34) Against this background it is unsurprising that usage of the term “Stimulation Drink” has gradually gained ground in the drinks industry, with its meaning eventually feeding through to end consumers. Presented with the need to distinguish the different types of energy drink from each other the writers of the articles submitted by the applicant have opted for “Stimulation drink” as a suitable name for a particular class of caffeine-based drinks which aim to keep one awake and alert, as well as increasing stamina.

(35) Notwithstanding this situation the CTM proprietor maintains that the term “STIMULATION” remains a distinctive trade mark designating a single source in trade. He considers that his usage of the mark has been so widespread that consumers will understand it as having only a trade mark significance and not merely as a reference to the type of drink sold under it. In order to show the actual understanding of this word by consumers he relies upon the survey evidence summarised above.

(36) It is considered that the results of the survey in fact do little to help the CTM proprietor's case:

  • The methodology behind the survey is not clearly explained, in particular there are no details as to the means by which respondents were selected. As a rule one would expect at least rudimentary information to be provided on the group of persons interviewed and the sampling technique employed. Without such information it is impossible to know if the survey sample was representative, in other words, whether the survey findings obtained can be generalized either for the whole population or for the universe of consumers for soft drinks.
  • In any case only 38% of respondents considered that “Stimulation” had any meaning for a specific energy
    drink. Given the extent of Red Bull's market share and the extent of their advertising campaigns this seems a fairly low percentage.
  • Given Red Bull's dominant market position in the UK it is unsurprising that 74% of those respondents who considered that “Stimulation” indicated a specific energy drink named Red Bull as the company they thought of. Nevertheless it is clear that respondents did not exclusively link the mark with Red Bull. 40% of respondents mentioned Lucozade.
  • Moreover, when respondents were presented with a list of energy drinks and asked which of them they would associate with the word “stimulation” significant percentages of respondents selected “Red Devil”, “Tesco Kick” and “Asda Blue Charge”. The fact that 90% of respondents selected Red Bull certainly shows that Red Bull is the most famous stimulation drink on the market, however it does not show that this fame prevents consumers from associating the word “Stimulation” with similar but much less well known products on the market. Notwithstanding their tiny market share (relative to that of Red Bull) “Red Devil” and “Tesco Sport” are associated with the word “stimulation” by 20% and 17%, respectively, of the subsection of respondents who make any link between “stimulation” and a specific energy drink.

(37) The results of this survey suggest that Red Bull's usage of the “STIMULATION” mark has not had the effect of reinforcing it's trade mark significance in the public mind. Whereas acquisition of a distinctive character may be as a result of a mark's usage as part of a registered mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark (ECJ in Nestlé C-353/03, para 30) distinctiveness will nevertheless be contingent upon the consequence of such use being that the relevant class of persons actually perceive the product or service designated by the mark as originating from a given undertaking. In the present case the evidence brought to bear does not suggest that such a perception exists.

(38) Pursuant to Article 50(2) CTMR, where the grounds for revocation of rights exist in respect of only some of the goods or services for which the Community trade mark is registered, the rights of the proprietor shall be declared to be revoked in respect of those goods only. Taking all the evidence as a whole it is considered that the applicant for revocation has demonstrated that the trade mark has become the common name in the trade in respect of soft drinks being energy drinks and sports drinks (including any cocktail thereof) and in respect of drinks which are sold as mixtures (or cocktails) of spirits with energy drinks. The application for revocation is therefore successful in respect of:

Non-alcoholic drinks; energy and sports drinks; isotonic drinks; non-alcoholic cocktails. (in Class 32)

Alcoholic beverages (except beers); hot and mixed alcoholic drinks, in particular alcoholic energy drinks; alcoholic preparations for making beverages; spirit-based cocktails and aperitifs. (in Class 33)

(39) The application for revocation is unsuccessful in respect of:

Beers; mineral and aerated waters; fruit drinks and fruit juices; syrups and other preparations for making beverages; effervescent tablets and powders for drinks. (in Class 32)

Mulled wine and mixed milk drinks; wines, spirits and liqueurs; wine-based cocktails and aperitifs; beverages containing wine. (in Class 33)

(40) As regards the relevant date, under Article 54(1) CTMR, upon which the revocation shall be deemed applicable it is considered that this should be the date of the application for revocation, namely 1 October 2004 . Although an earlier date has been requested by the applicant it is considered that, taking the evidence as a whole, it does not indicate with sufficient precision any exact point in time at which the mark became a common name in trade both for intermediaries and for end consumers (ECJ C-371/07; Bostongurka ). In these circumstances the Office declines to determine an “earlier date” within the meaning of Article 54(1) CTMR.

COSTS

(41) Pursuant to Article 81(1) CTMR and Rule 94 of Commission Regulation (EC) No 2868/95 implementing the CTMR (“IR”) (OJ OHIM 2-3/95, p. 258), the party losing revocation proceedings shall bear the fees and costs of the other party. However, where a party fails in some elements, a different apportionment shall be decided, Article 81(2) CTMR. Since the request is successful only in part, both parties have succeed on some heads and failed on others. Consequently, each party has to bear their own costs

THE CANCELLATION DIVISION
Alexandra Apostolakis Richard Thewlis Julio Laporta Insa
Member Member Member

Notice on the availability of an appeal:

Under Article 58 of the Community Trade Mark Regulation any party adversely affected by this decision has a right to appeal against this decision. Under Article 59 of the Regulation notice of appeal must be filed in writing at the Office within two months from the date of notification of this decision and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of 800 euro has been paid.

Signing of decisions in TMCD/TMRD
Until now, decisions from the trade marks departments which were notified by registered mail carried the signature of the examiners. Decisions notified by fax were notified in accordance with Decision of the President No EX-97-01, and in principle did not carry the signature of the examiner(s).

As from 5 April 2007 , the trade mark departments will issue decisions without signatures. These will be substituted with a printed seal of the Office, as stated in Rule 55(1) CTMIR: "…They shall be signed by the official or officials, or, instead of a signature, carry a printed or stamped seal of the Office."

Irrespective of the means through which decisions taken by the Examination Division, the Opposition Division and the Cancellation Division are notified, they will carry a printed seal of the Office as from this date.

The OHIM's logo is considered to be a “printed seal of the Office”. It will be inserted as follows

1. In decisions from the Examination Division


2. In decisions from the Opposition Division


3. In decisions from the Cancellation Division


4. In decisions from the Register Service


Country Overview: Italy & the Community Trade Mark
Flag of Italy

Italy has a population of just over 58 million people and was one of the six founding members of the European Union back in 1957.

In economic terms, Italy is primarily service based (69%) followed by industry (29%) and then agriculture (2%).

Engineering products, textiles and clothing are important industrial sectors in Italy. The production of tomatoes and wine grapes is particularly important in the agricultural sector.

To date just over 43,000 Community trade mark applications have been made by applicants based in Italy , making it one of the top filers in the world.








Italian-based Community trade mark applicants file more figurative marks than any other kind - nearly 60% - and the remaining filings are principally for word marks (41%).

Goods in the clothing industry (Class 25 of the Nice Classification) can be found in nearly 9,000 CTM applications coming from Italy , accounting for around 20% of all filings. Goods in Classes 9 follow closely behind, with services in Class 35 in 3 rd place.

Italian-based CTM filers prefer to use the OHIM's online filing system when applying for CTMs, with over 80% of all Italian filings arriving at the Office in this way.

Fax filings represent only 12% of all CTM applications received, while mailed applications come in at a low 5%.

Top 10 Italian -based owners by number of CTMs filed

Company

CTMs

Intesa Sanpaolo

440

Barilla G. e R. Fratelli

315

Trudi

148

Artsana

101

Banca Monte dei Paschi di Siena

101

Cartiere Fedrigoni E C.

101

Mapei

98

Banfi

95

Pirelli Tyres

94

Ferrari

91

Top 10 representatives by number of CTMs received from Italian-based applicants

Representative

CTMs

Bugnion

6,327

Jacobacci & Partners

2,881

Modiano

2,838

Barzano & Zanardo Milano

2,570

Perani Mezzanotte & Partners

1,708

Dott. Prof. Franco Cicogna

1,402

Giambrocono & C.

1,368

Signus S.A.S. di Zanetti Giancarlo & C.

1,330

Brevetti

1,174

Racheli & C.

834



Community Design

How the filing of Registered Community Design Applications could be improved

Around 76 design applications are filed at the OHIM everyday.

The first official letter the OHIM sends as a confirmation to the applicants or their representatives is the filing receipt: a document of three pages giving basic information about the applicant, the Community design number which has been assigned, the filing date and the first view of the design(s).

It is the aim of the Designs Department to provide this information in the shortest time possible, within two or three days generally, and, of course, with complete accuracy.

However, ensuring that applications are dealt with swiftly is sometimes hindered by the fact that application forms are not filled out correctly, information is missing or incorrect information is given. This may lead to delays in sending the filing receipt since the deficiencies make further investigation necessary, such as clarifying doubts via phone calls or e-mails, etc.

Consequently, if applicants and representatives become aware of the importance of filing design applications according to the instructions the OHIM gives on its website as well as on the application form itself, and take into consideration the most frequent mistakes they tend to make, this will actively help the OHIM to deal with their files more swiftly and efficiently.

The most frequent deficiencies found in Community design application forms are set out below.

If the publication of the design is subject to deferment, it has to be ticked clearly in the appropriate box on the application form and the fee for deferment has to be added in the “fees” section of the form. In many cases, the deferment box is not marked, which makes it more difficult to detect that deferment has been requested.

In the same way, many applicants forget to mark the number of designs in the corresponding box, which is obligatory.

Some applications are still filed without a reference number. At this point, it should be emphasised that the indication of a reference number is a great advantage, since it makes searches for duplicated applications more accurate and faster. Also confirmation copies sent subsequently can be detected and assigned to the corresponding original application in a much faster way, because the reference number on the application form and the confirmation copy is the same.

Of course, the use of a reference number is also a key tool to identify fee payments by bank transfer. Since the payment of designs fees has to be done at the moment of filing, applicants cannot use as an identifier in the payment order any official RCD number assigned by the OHIM, allowing the identification of the purpose of the payment. For this reason, the reference number assigned by the applicant and/or representative is essential for the correct identification of bank payments.

As a result, the use of the reference number is highly important. Users should not use the same reference number for all their applications, since a reference number corresponding to different applications would no longer be useful. Each application filed at the OHIM should be assigned a different number by applicants.

Regarding confirmation copies, the corresponding box on the application form should only be ticked on the form which actually is the confirmation and not on the original application. The “confirmation copy” box is frequently marked already on the application which is sent to OHIM first, leading to confusion in the pre-keying in of the data and to loss of time.

In addition to this, it would be of great interest to the applicants themselves and to the persons who deal with their applications at the OHIM, if application forms were no longer filled out by hand. When letters and numbers cannot be clearly seen, errors in key-in can ensue. Filing exclusively typewritten applications would mean a real improvement leading to faster and more efficient handling of cases.

As regards applicants' and representatives' ID numbers, it has to be pointed out that, if indicated on the application form, they are very useful, enabling the key-in team to carry out a quick search of the respective persons and companies in the OHIM's databases. However, ID numbers should merely constitute complementary information and can never replace the full typing out of applicants' and representatives' names (Article 1(1)(b) and 1(1)(e) CDIR). First-time users will receive an ID No which is indicated in an annex to the notification of registration.

All applicants are encouraged to use ID numbers and should take care to double check the correct typing of the number. These numbers are also valuable search criteria in the RCD-ONLINE database, when looking for published designs.

Furthermore, national offices should always put their stamp and the date of receipt at their office on the first page of the application form. Unfortunately, this information is often not provided and wrong filing dates may be assigned to the respective applications, which afterwards need to be corrected again, causing unnecessary complications and loss of time in the OHIM' s internal procedures. So, if you file through a national office, make sure that the date is correctly stamped on the form.

Following the advice given in this article will play a crucial part in tackling current weak points in filing design applications at the OHIM and consequently lead to improvements in processing applications – to the benefit of both clients and the OHIM.


Country Overview: Italy & the Registered Community Design

Flag of Italy

Italy has a population of just over 58 million people and was one of the six founding members of the European Union back in 1957.

In economic terms, Italy is primarily service based (69%) followed by industry (29%) and then agriculture (2%).

Engineering products, textiles and clothing are important industrial sectors in Italy . The production of tomatoes and wine grapes is particularly important in the agricultural sector.

In terms of RCD filings, Italy has filed a total of 37,000 designs since the inception of the registered Community design system in 2003. Italy is the world leader in RCD filings.



Design filings coming from Italy are dominated by goods in Class 6 of the Locarno classification, with over 20% of designs including such goods. Class 2 goods are in second place, making up just under 15% of the total number of designs filed by Italian-based applicants.

Sending paper copies of registered Community design applications via mail is still the preferred option for the majority of Italian-based RCD applicants, over half of whom use this method.

Electronic filings of designs account for just over 30% of all Community designs received from Italy , with 14% arriving by fax.

Top 10 Italian-based owners by number of RCDs filed

Owner

RCDs

Thun

1,053

Calligaris

435

Miniconf

373

Roberto Cavalli

368

Magicoral

339

IMS

313

Base Up italy

282

Alberto del Biondi

265

Fiat Auto

253

Bencom

247


Top 10 representatives by number of RCDs received from Italian-based applicants

Representative

RCDs

GLP

3,026

Jacobacci & Partners

2,456

Bugnion

2,280

Studio Bonini

1,424

Modiano

1,351

Dott. Prof. Franco Cicogna

1,306

Giambrocono & C.

1,000

Studio Torta

936

Brevetti

802

Studio Legale Associato Segui Grau & Lupetti – Innova & Partners

764




Case-law

 LATEST TRADE MARK AND DESIGN NEWS FROM LUXEMBOURG

A:ECJ European Court of Justice (ECJ): Appeals from decisions of theCourt of First Instance, Article 63 CTMR

A-1: ECJ Judgments and Orders

Arcol/Capol or Kaul : C-29/05-P - Judgment of 13 March 2007 (Grand Chamber); CFI Judgment overturned (for specific formal reasons). Office practice will need to be adapted.

Keywords: OHIM: status of the Boards in relation to the operative departments (examiners) - Board of Appeal proceedings: principle of continuity – Board proceedings: presentation, for the first time, of new facts and arguments.

The action had been brought by the Office against a decision of the CFI of 10.11.2004, T-164/02, by which the CFI had annulled a decision of the 3 rd Board of 4 March 2002 in R0782/2000-3 rejecting an opposition because the opponent had presented facts and arguments before the Board which he had not previously submitted before the Opposition Division. The Grand Chamber of the ECJ (Judge Rapporteur K. Schiemann) overturned the CFI Judgment for specific formal reasons but confirmed it on substance. It appears appropriate to repeat the argumentation of the CFI first:

(a) Arguments of the CFI (paragraphs 25 to 30 of T-164/02):

(25 )  It is appropriate to note, as a preliminary point, that the evidence adduced by the applicant before the Board of Appeal consists of a declaration in lieu of an oath from the applicant's managing director and a list of the applicant's customers. (26)  Those documents, relating to the degree of use of the applicant's mark, were produced by the applicant in support of its line of argument put forward previously before the Opposition Division at that point based solely on considerations relating to the lack of distinctive character of the applicant's mark to the effect that that mark was highly distinctive and should therefore have greater protection. (27) The Board of Appeal, in paragraphs 10 to 12 of the contested decision, and then OHIM, in paragraph 30 of its response, considered that that new statement of facts could not be taken into account, because it was made after the expiry of the time-limits set by the Opposition Division.

(28) It must be stated, however, that that position is not compatible with the continuity in terms of their functions between the departments of OHIM as affirmed by the Court of First Instance as regards both ex parte proceedings (judgment in Case T-163/98 Procter & Gamble v OHIM (BABY-DRY) [1999] ECR II-2383, paragraphs 38 to 44, not overturned on this point by the Court of Justice in Case C-383/99 P Procter & Gamble v OHIM … [2001] ECR I-6251, and Case T-63/01 Procter & Gamble v OHIM (Soap bar shape) [2002] ECR II-5255, paragraph 21) and inter partes proceedings (Case T-308/01 Henkel v OHIM LHS (UK) (KLEENCARE) [2003] ECR II-3253, paragraphs 24 to 32).

(29) It has been held that it follows from the continuity in terms of their functions between the departments of OHIM that, within the scope of application of Article 74(1) in fine of Regulation No 40/94, the Board of Appeal is required to base its decision on all the matters of fact and of law which the party concerned introduced either in the proceedings before the department which heard the application at first instance or, subject only to Article 74(2), in the appeal (KLEENCARE, paragraph 32). Thus, contrary to OHIM's assertions concerning inter partes proceedings, the continuity in terms of their functions between the various departments of OHIM does not mean that a party which, before the department hearing the application at first instance, did not produce certain matters of fact or of law within the time-limits laid down before that department would not be entitled, under Article 74(2) of Regulation No 40/94, to rely on those matters before the Board of Appeal. On the contrary, the continuity in terms of functions means that such a party is entitled to rely on those matters before the Board of Appeal, subject to compliance with Article 74(2) of that regulation before the Board.

(30) Accordingly, in the present case, since the disputed factual evidence was not submitted out of time for the purposes of Article 74(2) of Regulation No 40/94, but was annexed to the statement lodged by the applicant before the Board of Appeal on 30 October 2000, that is, within the four-month time-limit laid down in Article 59 of Regulation No 40/94, that board could not refuse to take account of that evidence.”

Further, the Court of First Instance found, in paragraph 34 of that judgment, that ‘the Board of Appeal was not able, without infringing Article 74 of Regulation No 40/94, to refuse to consider the factual evidence adduced by the applicant in its statement of 30 October 2000 for the purpose of proving the highly distinctive character of the earlier mark resulting from the use, claimed by the applicant, of that mark in the market.”

(b) Considerations of the ECJ

(aa)   Article 74(2) of Regulation No 40/94

“(41) First, in order to give judgment on the ground of appeal in its entirety, it must be found that, as is apparent from the wording of Article 74(2) of Regulation No 40/94, OHIM may disregard facts which were not submitted or evidence which was not produced in due time by the parties. (42) Contrary to OHIM´s submission, it results from such wording that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of Regulation No 40/94 and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late. (43) However, it is equally apparent from that wording that a party has no unconditional right to have facts and evidence submitted out of time taken into consideration by OHIM. In stating that the latter ‘may', in such a case, decide to disregard facts and evidence, Article 74(2) of Regulation No 40/94 grants OHIM a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account.

(44) Where OHIM is called upon to give judgment in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account. (45) As rightly submitted by OHIM, if it were compelled to take into consideration, in all circumstances, the facts and evidence produced by the parties to opposition proceedings outside of the time-limits set to that end under the provisions of Regulation No 40/94, those provisions would be rendered redundant. (46) However, the interpretation set out in paragraphs 42 to 44 of this judgment in respect of Article 74(2) of Regulation No 40/94 is capable of preserving the effectiveness of those provisions while making it possible to reconcile various imperatives.

(47) It is consistent with the principle of sound administration and the need to ensure the proper conduct and effectiveness of proceedings that the parties have an incentive to respect the time-limits imposed on them by OHIM when hearing a case. The fact that the latter may, if necessary, decide to disregard facts and evidence produced by the parties outside the time-limits prescribed should, in itself, have such an incentive effect. ( 48) By preserving, nevertheless, the possibility for the department called upon to make a decision in a dispute of taking into account facts and evidence submitted late by the parties, that interpretation is, at least in respect of opposition proceedings, likely to contribute to ensuring that marks whose use could later on successfully be challenged by means of annulment proceedings or counterclaim are not registered. As the Court has already held, reasons of legal certainty and sound administration speak in favour of that approach (see, in particular, Case C-104/01 Libertel [2003] ECR I-3793, paragraph 59).”

(bb) The nature of the proceedings followed before the Board of Appeal of OHIM and Article 62(1) of Regulation No 40/94

“(49) Second, no reason of principle related to the nature of the proceedings under way before the Board of Appeal or to the jurisdiction of that department precludes it, for the purpose of giving judgment on the appeal before it, from taking into account facts and evidence produced for the first time at the appeal stage. (50) In that regard, disputes arising from an opposition to the registration of a trade mark are potentially subject to a four-tier review system. (51) A procedure is, initially, a matter for OHIM, its Opposition Divisions first of all and, then, on appeal, its Boards of Appeal which, in spite of the independence enjoyed by those departments and their members, remain nonetheless departments of OHIM. Subsequent to that procedure there exists the possibility of judicial review by the Court of First Instance and, if necessary, on appeal by the Court of Justice.

(52) As stated in Article 63(2) of Regulation No 40/94, the Court of First Instance may annul or alter a decision of a Board of Appeal of OHIM only ‘on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of [the] Regulation or of any rule of law relating to their application or misuse of power'. (53) It follows, in particular, from that provision that the Court of First Instance may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of those grounds for annulment or alteration. The Court of First Instance may not annul or alter that decision on grounds which come into existence subsequent to its adoption (Case C-416/04 P Sunrider v OHIM [2006] ECR
I-4237, paragraphs 54 and 55).

(54) It is also apparent from that provision that, as found by the Court of First Instance in a correct and consistent manner, facts not submitted by the parties before the departments of OHIM cannot be submitted at the stage of the appeal brought before that Community court. The Court of First Instance is called upon to assess the legality of the decision of the Board of Appeal by reviewing the application of Community law made by that board, particularly in the light of facts which were submitted to the latter (see, to that effect, Case C-214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 50). By contrast, that Court cannot carry out such a review by taking into account matters of fact newly produced before it. (55) In accordance with the logic of the institutional architecture referred to in paragraphs 50 and 51 of this judgment, the judicial review thus exercised by the Court of First Instance cannot consist of a mere repetition of a review previously carried out by the Board of Appeal of OHIM.

(56) It follows, in that regard, from Article 62(1) of Regulation No 40/94 that, following the examination as to the merits of the appeal, the Board of Appeal is to decide it and that, in doing so, it may ‘exercise any power within the competence of the department which was responsible for the decision appealed', that is to say, in the present case, give judgment itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or reversing the contested decision. (57) It thus follows from Article 62(1) of Regulation No 40/94 that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact. (58) As pointed out by Kaul, it also follows from Articles 61(2) and 76 of Regulation No 40/94 that, for the purposes of the examination as to the merits of the appeal brought before it, the Board of Appeal is to invite the parties, as often as necessary, to file observations on communications issued by itself and that it may also order preliminary measures, among which feature the submission of matters of fact or evidence. Article 62(2) of Regulation No 40/94 states that if the Board of Appeal remits the case for further prosecution to the department whose decision was appealed against, that department is to be bound by the ratio decidendi of the Board of Appeal, ‘in so far as the facts are the same'. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before OHIM.”

(cc) Articles 42(3) and 59 of Regulation No 40/94

“(59) Third, it is apparent from Article 42(3) of Regulation No 40/94 that a person who brings an opposition against the registration of a mark on the ground that that mark should be rejected on the basis of Article 8(1) of that regulation may submit facts, evidence and arguments in support of that opposition within the time-limit set to that end by OHIM.

(60) Unlike Article 42(3), Article 59 of Regulation No 40/94, which lays down the conditions for bringing an appeal before the Board of Appeal, does not refer to the submission of facts or evidence, but only to the filing, within a time-limit of four months, of a written statement setting out the grounds of appeal. – (61) It follows that, contrary to the finding of the Court of First Instance in paragraph 30 of the judgment under appeal, Article 59 of the regulation cannot be interpreted as starting a new time-limit for the person bringing such an appeal in which to submit facts and evidence in support of his opposition.

(62) Consequently, the Court of First Instance erred in law in finding in that paragraph that the facts and evidence were submitted ‘in due time' within the meaning of Article 74(2) and in inferring therefrom that the Board of Appeal was required to take that information into consideration in the decision which it was called upon to give on the appeal brought before it.

(63) It follows from paragraphs 41 to 43 of this judgment that, where, as in the present case, such facts and evidence have not been submitted and produced by the party concerned within the time-limit set to that end under the provisions of Regulation No 40/94, and thus not ‘in due time' within the meaning of Article 74(2) of that regulation, that party does not enjoy an unconditional right to have such information taken into account by the Board of Appeal. On the contrary, that board has a discretion as to whether or not to take such information into account when making the decision which it is called upon to give.

(64) It follows from all the foregoing that, in finding in paragraphs 29 and 30 of the judgment under appeal that the Board of Appeal is required to take account of the facts and evidence submitted for the first time by the party opposing an application for registration of a mark in the written statement lodged in support of its appeal before that board against a decision given by an Opposition Division, and in annulling the contested decision merely because the Board of Appeal refused, in this instance, to take account of such information, the Court of First Instance infringed the combined provisions of Articles 42(3), 59 and 74(2) of Regulation No 40/94.”

(dd) Particularities of the Judgment

“(65) It follows that the contested judgment must be set aside.

The action at first instance:

(66) In accordance with the first paragraph of Article 61 of the Statute of the Court of Justice, if the Court quashes a decision of the Court of First Instance, it may itself give final judgment in the matter, where the state of the proceedings so permits, or refer the case back to the Court of First Instance for final judgment. (67) In the present case, the Court finds, as did the Court of First Instance in paragraph 27 of the judgment under appeal, that, in paragraphs 10 to 12 of the contested decision, the Board of Appeal refused to take into account the facts and evidence submitted by Kaul in support of its appeal by holding, essentially, that the taking into account of such information was automatically precluded since those facts and that evidence had not been submitted earlier before the Opposition Division within the time-limit set by that division.

(68) That reasoning of the Board of Appeal, which was also adopted by OHIM both during the proceedings before the Court of First Instance and in the context of this appeal, infringes Article 74(2) of Regulation No 40/94. As is apparent from paragraphs 41 to 43 of this judgment, that provision grants the Board of Appeal, when presented with facts and evidence which are submitted late, a discretion as to whether or not to take account of such information when making the decision which it is called upon to give. ( 69) Instead of exercising the discretion which it thus has, the Board of Appeal wrongly considered itself to be lacking any discretion, in the present case, as to whether to take account or not of the facts and evidence at issue. (70) It follows that the contested decision must be annulled.

Costs: (71)  Under the first paragraph of Article 122 of the Rules of Procedure, where the appeal is well founded and the Court of Justice itself gives final judgment in the case, it is to make a decision as to costs. Under Article 69(2) of the Rules of Procedure, which by virtue of Article 118 thereof, applies to appeal proceedings, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party's pleadings. (72) In this case, it should be noted that, although the judgment under appeal has been set aside, the present judgment upholds Kaul's appeal and annuls the decision of the Board of Appeal of OHIM. It follows that OHIM must be ordered to pay the costs incurred by Kaul both at first instance and on appeal, as applied for by Kaul.”

 

Quantum/Quantième : C-171/06-P – Judgment (without an Opinion from the Advocate General) of 15 March 2007 (action dismissed; practice of the operative units of the Office confirmed since initially the Opposition Division had allowed the opposition).

Keywords: ECJ proceedings: plea in law to be put forward for the first time before the ECJ - Opposition: likelihood of confusion (LOC) – LOC/comparison of marks: issue of fact - LOC: standard criteria or particularities of the case? – LOC: assessment an issue of fact.

The case was an appeal from T-147/03 = (2006) ECR II-11 by which the CFI had annulled the decision of the 3rd Board of 30.1.2003, rejecting the opposition brought by Devinlec Développement Innovation Leclerc SA, which relied on the earlier national trade mark Quantième, against the registration of the figurative mark QUANTUM applied for by T.I.M.E. ART; in short, the CFI had allowed the opposition. The 7 th Chamber of the ECJ (Klucka, Ó Caoimh (Judge Rapporteur), Lindh) confirmed these findings.

 

CTM application

 

Watches, clocks, movements and parts thereof, watch/clock glasses, watch/clock casings, watch straps, watch chains/bracelets, watch bands, cases for watches and for clocks, in Class 14.

 

Earlier mark

 

Clock and watch making goods; jewellery, in Class 14, and leather goods, in Class 18.

(a) ECJ proceedings: putting forward for the first time a plea in law before the ECJ

“(23) To allow a party to put forward for the first time before the Court of Justice, in an appeal, a plea in law which it has not raised before the Court of First Instance would be to authorise it to bring before the Court of Justice, whose jurisdiction in appeals is limited, a case of wider ambit than that which came before the Court of First Instance.

(24) In an appeal, the jurisdiction of the Court of Justice is confined to review of the findings of law on the pleas argued before the Court of First Instance (Case C-136/92 P Commission v Brazzelli Lualdi and Others [1994] ECR I-1981, paragraphs 57 to 59).”

(b) Comparison of marks an issue of fact

“(50) By holding in this case that, as a general rule, the relevant public would not immediately attribute a precise meaning to the verbal elements of the opposing marks, the Court of First Instance was carrying out an appraisal of a factual nature.

(51) In accordance with Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice, an appeal lies on a point of law only. The appraisal of the relevant facts and the assessment of the evidence relied on thus do not, save where the facts or evidence are distorted, which is not suggested to have arisen in the present case, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, inter alia, order of 1 June 2006 in Case C-324/05 P Warenhandelsgesellschaft v OHIM [2006] ECR I-73, paragraph 28).”

(c) Assessment of LOC an issue of fact (paragraph 57). As regards the question of basing an assessment of LOC always on standard criteria or on the particularities of the case, thus, the CFI decision stands (set out hereunder as contained in the ECJ Judgment)

“(14) As regards the particular circumstances in which the goods covered by the earlier mark are marketed, the Court of First Instance held that, as a matter of principle, that criterion should not be considered when examining the likelihood of confusion.

(15) In that respect, the Court of First Instance stated as follows:

((103)) According to case-law, in the global assessment of the likelihood of confusion the respective weight to be given to the visual, phonetic or conceptual aspects may vary on the basis of the objective circumstances in which the marks may be present on the market (…). It should be noted in that respect that the “usual” circumstances in which the goods covered by the marks are marketed must be taken as a benchmark, that is, those which it is usual to expect for the category of goods covered by the marks. In this case, for watches and watch bands or straps, those conditions generally include purchase through a salesperson, without the consumer having direct self-service access to those goods. ((104)) Consideration of the objective circumstances in which the goods covered by the marks are marketed is fully justified. The examination of the likelihood of confusion which the OHIM authorities are called on to carry out is a prospective examination. Since the particular circumstances in which the goods covered by the marks are marketed may vary in time and depending on the wishes of the proprietors of the trade marks, the prospective analysis of the likelihood of confusion between two marks, which pursues an aim in the general interest, that is, the aim that the relevant public may not be exposed to the risk of being misled as to the commercial origin of the goods in question, cannot be dependent on the commercial intentions, whether carried out or not, and naturally subjective, of the trade mark proprietors. ((105)) On the other hand, the OHIM authorities are permitted to take into account the objective conditions under which the goods are marketed, in particular in order to determine the respective weight to be given to the visual, phonetic and conceptual aspects of the marks (…).”

 

A-2: ECJ: Developments in pending cases

Map&Guide : C-512/06-P – Office contribution filed (appeal from T-302/03; summary of CFI Judgment of 10 October 2006 set out below).

Keywords: Absolute grounds for refusal: nature of, in general (public interest) – Absolute grounds for refusal: relationship between the various sub-paragraphs of Article 7(1) CTMR, in particular (b) and (c) CTMR – Combination mark/absolute grounds: criteria of assessment.

Initially the action had been directed against a decision of the 2 nd Board of 1.7.2003 in R 1046/2001-2. The CTM application at issue is “map&guide” (word mark) for a range of goods and services in Classes 9, 41 and 42, inter alia for computer software and programming and providing programs for data processing. It had been rejected for everything except for Class 41, based on Article 7(1)(b) CTMR. The Second Chamber of the CFI (Pirrung, Meij, Pelikánová) had confirmed the findings. It had further confirmed that the absolute grounds for refusal exist in the public interest, that the absolute grounds within Article 7(1) CTMR must be assessed independently, but that, to a certain extent, there also is significant overlapping between certain absolute grounds. Summary of the CFI arguments:

(a) Nature of the absolute grounds within Article 7(1) CTMR

“(36) In this respect, it must be noted that the notion of general interest underlying Article 7(1)(b) of Regulation No 40/94 is manifestly indissociable from the essential function of a trade mark, which is to guarantee to the consumer or end-user the identity of the origin of the product or service bearing the mark by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (see SAT.1 v OHIM, paragraphs 23 and 27, and BioID v OHIM, paragraph 60).”

(b) Relationship between the various absolute grounds for refusal

“(33) Each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 is independent of the others and requires separate examination Moreover, it is necessary to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration when examining each of those grounds for refusal may, or even must, reflect different considerations, depending on the ground for refusal in question (see Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM [2004] ECR I-5089, paragraphs 45 and 46; Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317, paragraph 25; and Case C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraph 59).

(34)  However, there is a clear overlap in scope between the grounds for refusal set out in subparagraphs (b) to (d) of that provision (Case C-265/00 Campina Melkunie [2004] ECR I-1699, paragraph 18, and Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 67). In particular, it is clear from the case-law that a word mark which is descriptive of the characteristics of goods or services for the purposes of Article 7(1)(c) of Regulation No 40/94 is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) of the same regulation (see Campina Melkunie, paragraph 19, and Koninklijke KPN Nederland, paragraph 86).”

(c) Combination mark: criteria of assessment under Article 7(1) CTMR

“(37) As regards a mark comprised of words and a typographical sign, such as that which forms the subject-matter of this case, distinctiveness may be assessed partly in relation to each of those terms or elements separately, but must, in any event, depend on an appraisal of the whole which they comprise. That is because the mere fact that each of those elements, taken separately, is devoid of distinctive character does not mean that their combination cannot have distinctive character (Campina Melkunie, paragraphs 40 and 41; Koninklijke KPN Nederland, paragraphs 99 and 100, and SAT.1 v OHIM, paragraph 28).”

 

Aire Limpio or Air Freshener : C-488/06-P - Office response filed (ES). Appeal from T-168/04, CFI Judgment of 7 September 2006 : CFI had dismissed the action and had confirmed the Office's practice. Due to the significance of the case, a broader summary of the CFI decision is published.

Keywords: OHIM proceedings: right to be heard, Article 73 CTMR.– Opposition proceedings: scope of examination of the case – Opposition/likelihood of confusion/enhanced degree of recognition of a CTM on a national market: application, by analogy, of Article 7(2) CTMR – Enhanced recognition: acquired as part of another mark - Opposition: comparison of goods – Opposition: comparison of marks.

The action, initially, had been directed against a decision of the 2 nd Board of 15.3.2004 in R 326/2003-2 in a conflict between the two marks set out below. The CTM had been applied for perfumery and essential oils (Class 3), scented air freshener products (Class 5) and advertising etc. in Class 35. The opposition had been based on an earlier CTM for products in Class 5 and on a range of national figurative marks, almost identical with the earlier CTM, some containing verbal elements, also in Class 5. Arguments of the CFI:

 

CTM application

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Earlier CTM No 91991

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The Board had restricted its examination to the invoked earlier CTM. It had, however, taken into account documents relating to other invoked earlier national rights without directly comparing them with the CTM application. The Board had partially allowed the opposition, namely as regards the goods claimed in the CTM application, relying, inter alia, on an enhanced degree of recognition of the earlier mark on the Italian market.

  1. Opposition proceedings: scope of examination and Article 73 CTMR

“(108) The applicant argues that the contested decision was taken in breach of Article 73 of Regulation No 40/94.

(…)

(110) The Opposition Division, in its decision of 25 February 2003, and the Board of Appeal already restricted their examination, first, to the mark in respect of which registration is sought and, secondly, to Community registration No 91991 alone. However, in order to establish the existence of a relative ground for refusal within the meaning of Article 8(1)(b) of Regulation No 40/94, the Board of Appeal also relied on documents relating to other marks. Consequently, the grounds of the contested decision concern earlier marks which the Board of Appeal itself excluded from the comparative analysis in order to determine the existence of a likelihood of confusion. The grounds of the contested decision are therefore incomplete and the Board of Appeal infringed Article 73 of Regulation No 40/94.

Findings of the Court: (113) Under Article 73 of Regulation No 40/94, the decisions of the Office are to state the reasons on which they are based. In addition, Rule 50(2)(h) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) provides that the Board of Appeal's decision is to contain the reasons. In that respect, it must be considered that the scope of the duty to state reasons thus laid down is the same as that arising from Article 253 EC (Case C-447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraph 64; Joined Cases T-124/02 and T-156/02 Sunrider Corporation v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITRAKRAFT and VITA/VITATASTE and BALANCE and BALANS/META BALANCE 44) [2004] ECR II-1149, paragraph 72).

(114) It is settled case-law that the statement of reasons required under Article 253 EC must show in a clear and unequivocal manner the reasoning of the author of the act. That duty has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Community judicature to exercise its power to review the legality of the decision (Case C-350/88 DelacreandOthers v Commission [1990] ECR I-395, paragraph 15; KWSSaat v OHIM, cited in paragraph 113 above, paragraph 65; VITRAKRAFT and VITA/VITATASTE and BALANCE and BALANS/META BALANCE 44, cited in paragraph 113 above, paragraph 73).

(115) In addition, under Article 73 of Regulation No 40/94, decisions of OHIM may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision relates both to factual and legal reasons and to evidence.

(116) However, the right to be heard extends to the factual and legal factors on which the decision-making act is based, but not to the final position which the authority intends to adopt (Case T-303/03 Lidl Stiftung v OHIM – REWE-Zentral (Solevita/SALVITA) [2005] ECR II-1917, paragraph 62).

(117) In the present case, the contested decision shows in a clear and unequivocal manner the reasoning of the Board of Appeal. As is apparent from the text of the contested decision, which sets out the arguments put forward before the Board of Appeal by the applicant, the latter had an opportunity to present its comments on all the factors on which the contested decision is based and also on the use, by the Board of Appeal in its assessment, of the evidence relating to the use of the earlier marks.

(118) Consequently, infringement of Article 73 of Regulation No 40/74 is not established and the second plea must be rejected and the action in its entirety dismissed.”

(b) Likelihood of confusion: earlier CTM and its perception on a national market.

Application, by analogy, of Article 7(2) CTMR

“(68) Furthermore, even though Article 8 of Regulation No 40/94 does not contain a provision similar to Article 7(2) to the effect that an application to register a trade mark may be refused where an absolute ground for refusal obtains in only part of the Community, the same solution should be applied in the present case. It follows that registration must also be refused even where the relative ground for refusal obtains in only part of the Community (Case T-355/02 Mülhens v OHIM - ZirhInternational(Sir/ZIRH) [2004] ECR II-791, paragraph 36, and Case T-312/03 Wassen International v OHIM – Stroschein Gesundkost (Selenium Spezial A-C-E/SELENIUM-ACE [2005] ECR II-0000, paragraph 29).

(69) In the present case, the opposition to the registration was based on a number of the intervener's marks containing the representation of a fir tree. In examining that opposition, the Board of Appeal relies mainly on Community trade mark No 91991 as a mark which is representative of the other marks relied on in support of the opposition.

(70) In the contested decision, the Board of Appeal held that the conflicting marks were similar, in particular on a conceptual level and that there was a likelihood of confusion. That conclusion followed from the finding that earlier Community trade mark No 91991, protected since 1 April 1996 and, made up of the shape of a fir tree, had a particularly distinctive character in Italy . That finding was itself based on the acceptance of the prolonged use and well-known nature in Italy of the international mark ARBRE MAGIQUE, represented by the same shape of a fir tree and in addition containing a verbal element.

(71) It must therefore be examined at the outset whether the Board of Appeal legitimately held that earlier Community trade mark No 91991 had been able to acquire a particularly distinctive character owing to the prolonged use of another registered mark, namely the mark ARBRE MAGIQUE, and also because of prolonged use in Italy, and that mark could be considered to be well known there.”

(c) Enhanced recognition in the market place: criteria of assessment.
Enhanced recognition acquired as part of another mark

“(72) It must first of all be stated that the case-law accepts that a mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (SABEL, cited in paragraph 52 above, paragraph 24).

(73) Next, it should be remembered that the acquisition of the distinctive character of a mark may also be as a result of its use as part of another registered trade mark. It is sufficient that, in consequence of such use, the relevant Class of persons actually perceives the product or service, designated by the earlier marks, as originating from a given undertaking (see, to that effect, Case C-353/03 Nestlé [2005] ECR I-6135, paragraphs 30 and 32).

(74) It should therefore also be accepted that the particularly distinctive character of a mark can be acquired because of its prolonged use and its being well known as part of another registered trade mark, in so far as the target public perceives the mark as indicating the origin of the goods from a specific undertaking.

(75) In the present case, the question whether the Board of Appeal legitimately held that earlier Community mark No 91991 had been able to acquire a particularly distinctive character owing to its use as part of another registered mark must therefore be answered in the affirmative if earlier Community mark No 91991 can be regarded as part of the mark ARBRE MAGIQUE.

(76) In that respect, the Board of Appeal rightly took the view that the representation of the silhouette of the fir tree, which plays a significant or even predominant role in the mark ARBRE MAGIQUE, corresponds to the sign of earlier Community mark No 91991. Consequently, the Board of Appeal was fully entitled to hold that earlier Community mark No 91991 constituted part of the earlier mark ARBRE MAGIQUE. Accordingly, the first mark could have acquired a distinctive character following its use as part of the second mark.

(77) Consequently, the Board of Appeal rightly examined all the evidence relating to the use and well-known nature of the mark ARBRE MAGIQUE in order to establish the prolonged use, the well-known nature and, therefore, the particularly distinctive character of part of that mark, namely earlier Community mark No 91991.

(78) As regards, in the present case, the actual examination of the evidence by the Board of Appeal, the contested decision rightly states that it is apparent from the evidence in the case-file, namely essentially the documentation produced on 8 November 1999 in the opposition proceedings brought by the intervener, that, as part of a registered mark, namely the mark ARBRE MAGIQUE, earlier mark No 91991 was the subject of prolonged use in Italy, is well known there and therefore has a particularly distinctive character.

(79) The contested decision thus takes into consideration the prolonged use of the mark ARBRE MAGIQUE and the fact that annual sales of the goods marketed under that mark exceed 45 million units and sales in Italy thus represented a market share exceeding 50% in 1997 and in 1998. In addition, the contested decision takes account of the fact that the advertising costs incurred in Italy for the promotion of those goods in 1996 and 1997 exceeded 7 billion Italian lira (that is EUR 3 615 198.29).

(80) The fact that the sales figures relate to 1997 and 1998 and that the advertising expenses concern 1996 and 1997, that is to say, dates subsequent to the filing of the application for registration of the mark by the applicant, namely 30 April 1996, is not sufficient to deprive those elements of their evidential force for the purpose of finding that earlier mark No 91991 is well known.

(81) According to the case-law, data subsequent to the date of filing an application for a Community trade mark can be taken into account where it enables the drawing of conclusions on the situation as it was on that date (Case T-262/04 BIC v OHIM (shape of an electronic lighter) [2005] ECR II-0000, paragraph 82; see, to that effect, the order of the Court of Justice in Case C-192/03 P Alcon v OHIM [2004] ECR I-8993, paragraph 41, and the case-law cited). Such circumstances may make it possible to confirm or better assess the extent to which the trade mark concerned was used during the relevant period (see, by analogy, order of the Court of Justice in Case C-259/02 La Mer Technology [2004] ECR I-1159, paragraph 31).

(82) The Board of Appeal was therefore able legitimately to hold that such subsequent circumstances allowed conclusions to be drawn on the situation as it was on the date of filing the application for registration of the mark by the applicant and enabled the well-known nature of mark No 91991 on that same date to be confirmed. (…)

(85) Furthermore, it is not possible to accept the applicant's argument that the Board of Appeal was wrong to find that the earlier mark had a particularly distinctive character in Italy by relying solely on general indications regarding the volume of advertising and sales figures. Admittedly, according to the case-law relied on by the applicant, the distinctive character of a mark cannot be shown to exist solely by reference to general, abstract data, such as predetermined percentages (Case C-299/99 Philips [2002] ECR I-5475, paragraph 62). Nevertheless, it should be stated, firstly, that that case-law concerns the acquisition of the distinctive character of a mark which is the subject of an application for registration and not, as in the present case, the assessment of whether a registered mark which has already acquired distinctive character is well known. Secondly, in order to establish, in the present case, whether the mark is well known, the Board of Appeal did not only take into account general indications, such as specific percentages, but also the prolonged use of the mark ARBRE MAGIQUE, which, furthermore, the applicant did not dispute.”

 

B: ECJ Preliminary Rulings

B-1: Rulings

The Kitchen Company : C-239/05: Ruling of 15 February 2007 .

Keywords: TM Directive: absolute grounds for refusal, Article 3(1)(b),(c); (3); Article 13 – National bodies dealing with TM cases: scope of required examination of a case - Benelux TM law (UBL).

The case is a reference from the Hof van beroep te Brussel which had to deal with an appeal against rejection of an application by the Benelux TM Office (BMB); the facts of the case can be summarized as follows:

(a) Factual background

“(14) On 7 April 2000, MT & C, the applicant in the main proceedings, filed with the BMB an application for registration of the word mark ‘The Kitchen Company' as a trade mark for certain goods in Classes 11, 20 and 21 and for services in Classes 37 and 42 of the Nice Agreement.

(15) The goods and services for which trade mark protection was sought were set out for each of the Classes concerned. With regard to Class 21, the application covered kitchen utensils and household and kitchen equipment made of glass, porcelain, non-precious metals, plastic and earthenware.

(16) On 24 April 2001, the BMB notified MT & C that it was provisionally refusing registration on the ground that the word mark ‘The Kitchen Company' lacked distinctive character within the meaning of Article 6bis(1)(a) of the UBL and, on 25 February 2002, it gave notice of its definitive refusal. (17) It is apparent from the order for reference that the BMB did not formulate separate conclusions in respect of each of the individual goods and services for which protection was sought but decided, in respect of the protection sought as a whole, that the sign applied for lacked any distinctive character.”

“(19) The Hof van beroep te Brussel upheld the BMB's decision that the word mark ‘The Kitchen Company' lacks any distinctive character in respect of all of the goods and services specified in the application for registration, with the exception of certain goods in Class 21. (…)

(21) However, referring to the judgment of the Benelux Court of Justice of 15 December 2003 in Case A 2002/2 BMB v Vlaamse Toeristenbond, the BMB maintained before the Hof van beroep court that that court could not consider MT & C's subsidiary application since the latter did not seek registration only of certain goods either in its initial application or in the objection it lodged with the BMB and that the Hof van beroep could not examine applications which went beyond the decision of the BMB or which had not been made before that body.

(22) The Hof van beroep te Brussel considers, in particular, that it follows from the Judgment of the Court in Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619 that the competent authority must examine the application for registration in respect of each of the goods and services for which protection is sought and that it may, in respect of each of them, reach divergent conclusions. The Hof van beroep considers that it should logically follow that, in such a case, that authority must state those conclusions in the provisional decision refusing registration and, where appropriate, in the final decision as well.”

(b) Questions put to the ECJ

Question 1. “(26) By its first question, the Hof van beroep asks, in essence, whether the Directive must be interpreted as meaning that, when refusing registration of a trade mark, the competent authority is required to state in its decision its conclusion separately for each of the individual goods and services specified in the application for registration, regardless of the manner in which that application was formulated.”

Question 3, second part: “(39) By the second part of the third question, which it is appropriate to examine next, the Hof van beroep asks, in essence, whether the Directive must be interpreted as precluding national legislation which prevents the court reviewing the decision of the competent authority from ruling on the distinctive character of the mark for each of the goods and services considered separately.”

Question 2 and the first part of the third question: “(49) By its second question and the first part of its third question, which it is appropriate to consider together, the Hof van beroep asks essentially whether the Directive is to be interpreted as precluding national legislation which prevents the court reviewing the decision of the competent authority from taking account of facts and circumstances which arose after that decision had been taken.”

(c) Answers given by the 2 nd Chamber of the ECJ (Judge Rapporteur P. Kuris)

1. First Question:

“(38) In the light of the foregoing, the answer to the first question must be that the Directive must be interpreted as meaning that, when refusing registration of a trade mark, the competent authority is required to state in its decision its conclusion for each of the individual goods and services specified in the application for registration, regardless of the manner in which that application was formulated. However, where the same ground of refusal is given for a category or group of goods or services, the competent authority may use only general reasoning for all of the goods or services concerned.”

2. The 2 nd part of the 3 rd question:

“(48) In the light of the foregoing, the answer to the second part of the third question must be that the Directive must be interpreted as meaning that it does not preclude national legislation which prevents the court reviewing the decision of the competent authority from ruling on the distinctive character of the mark separately for each of the individual goods and services specified in the trade mark application, where neither that decision nor that application related to categories of goods or services or goods or services considered separately.”

3. Question 2 and the remainder (first part) of Question 3:

“(61) In the light of the foregoing, the answer to the second question and the first part of the third question must be that the Directive is to be interpreted as meaning that it does not preclude national legislation which prevents the court reviewing a decision of the competent authority from taking account of facts and circumstances which arose after that decision had been taken.”

 

B-2: Developments in pending cases

(-)

C: Court of First Instance (CFI): Judgments and Orders on appeals against decisions of the OHIM, Art. 63 CTMR

C-1: Judgments and Orders

VIPS or Elleni : T-215/03 – Judgment of 22 March 2007 (action allowed; impact on Office practice overlapping with that of Arcol/Capol, above, C-298/05-P).

Keywords: Opposition proceedings: scope of Article 74(1) CTMR – Board proceedings: scope of examination (examination of pleas not dealt with by the Opposition Division) - Opposition: earlier right with reputation, Article 8(5) CTMR – Reputation mark/scope of protection: criteria of a risk of dilution.

The action had been directed against a decision of the 3 rd Board of 1.4.2003 in R1127/2000-3 relating CTM application “VIPS” , applied for computers and computer programs recorded on tapes and disks, in Class 9; business consultancy, services relating to the processing of data recorded by computer, in Class 35, and computer programming relating to hotel services, restaurants, cafés, in Class 42. That application had been opposed on the basis of the Spanish word mark VIPS, for services in Class 42, namely: services in procuring food and drink prepared for consumption; restaurants; self-service restaurants, canteens, bars, cafeteria; hotel services. The opponent (and plaintiff in the present case) also maintained that the mark VIPS was well-known in Spain within the meaning of Article 6 bis of the Paris Convention for “services in procuring food and drink prepared for consumption; restaurants; cafeteria and bar services; the operation of establishments retailing consumer goods and gift articles, foodstuffs, stationery, books, audio-visual products, photographic material, perfumery, cleaning products, clothing, toys and software and offering services such as video film rental and film developing” for the purposes of Article 8(2)(c) CTMR.

The Opposition Division had partially allowed the opposition with respect to the services in Class 42 of the CTM application on the basis of Article 8(5) CTMR. The Board annulled that decision. In essence, the Board found that the opponent (and plaintiff in the case before the CFI) had proven the reputation of its earlier mark in Spain but not the additional criteria establishing a risk of dilution. In other words, it had not put forward the grounds on which the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Thus, as it failed to establish one of the premises which necessarily follow from Article 8(5) CTMR, that article could not have been applied in the present case. Furthermore, the Board found that there was no need to examine the arguments submitted, by the opponent, in the observations in response to the CTM applicant's appeal which related to the application of Article 8(1)(b) CTMR as the appeal had only been based on Article 8(5) CTMR and, therefore, the subject-matter of the proceedings could not be extended by observations in response presented before the Board. It could have been otherwise only if the opponent had filed a separate notice of appeal, under the conditions and within the period laid down in Article 59 CTMR, seeking the annulment in part of the decision of the Opposition Division.

(a) Article 8(5) CTMR: criteria of a risk of dilution

“(36) As regards, more particularly, the third of the conditions listed in paragraph 34 above, it is appropriate to analyse it as three separate types of risk, namely that the use without due cause of the mark applied for, first, is detrimental to the distinctive character of the earlier mark, secondly, is detrimental to the repute of the earlier mark or, thirdly, takes unfair advantage of the distinctive character or the repute of the earlier mark (SPA-FINDERS, paragraph 34 above, paragraphs 43 to 53; see also, by analogy, the Opinion of Advocate General Jacobs in Adidas-Salomon and Adidas Benelux, paragraph 32 above (ECR I-12540), points 36 to 39). Having regard to the wording of Article 8(5) of Regulation No 40/94, the existence of one of the above types of risk is sufficient for that provision to apply. Thus, the third of the cumulative conditions mentioned in paragraph 34 above can be divided into three alternative types of risk.

(37) So far as concerns, first, detriment to the distinctive character of the earlier mark by the use without due cause of the mark applied for, that detriment can occur where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used (SPA-FINDERS, paragraph 34 above, paragraph 43). That risk thus refers to the ‘dilution' or ‘gradual whittling away' of the earlier mark through the dispersion of its identity and its hold upon the public mind (Opinion of Advocate General Jacobs in Adidas-Salomon and Adidas-Benelux, paragraph 36 above, point 37).

(38) However, the risk of dilution appears, in principle, to be lower if the earlier mark consists of a term which, because of a meaning inherent in it, is very common and frequently used, irrespective of the earlier mark consisting of the term at issue. In such a case, re-use of the term in question by the mark applied for is less likely to result in a dilution of the earlier mark. Thus in SPA-FINDERS, paragraph 34 above, paragraph 44, the Court found that, since the term ‘spa' was frequently used to designate, for example, the Belgian town of Spa and the Belgian racing circuit of Spa-Francorchamps or, in general, places for hydrotherapy such as hammams or saunas, the risk of another mark also containing the word element ‘Spa' being detrimental to the distinctive character of the mark SPA appeared to be limited.

(39) As regards, secondly, detriment to the repute of the earlier mark by the use without due cause of the mark applied for, it must be pointed out that such detriment is made out where the goods or services covered by the mark applied for may appeal to the public's senses in such a way that the earlier mark's power of attraction is diminished (SPA-FINDERS, paragraph 34 above, paragraph 46). The risk of that detriment can, inter alia, occur where those goods or services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of its being identical or similar to the mark applied for.

(40) Lastly, the concept of the unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and ‘free-riding on the coattails' of a famous mark or an attempt to trade upon its reputation (SPA-FINDERS, paragraph 34 above, paragraph 51). In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation.

(41) That last type of risk must be distinguished from the likelihood of confusion covered by Article 8(1)(b) of Regulation No 40/94. According to settled case-law, a likelihood of confusion is defined as the likelihood that the public might believe that the goods or services covered by the mark applied for come from the same undertaking or, as the case may be, from economically-linked undertakings (Case T-104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II-4359, paragraph 25; see also, by analogy, Case C-39/97 Canon [1998] ECR I-5507, paragraph 29, and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 17). By contrast, in cases covered by Article 8(5) of Regulation No 40/94, the relevant section of the public makes a connection, that is to say, establishes a link, between the marks at issue without, however, confusing them (see, by analogy, Adidas-Salomon and Adidas Benelux, paragraph 32 above, paragraph 29). Therefore, the existence of a likelihood of confusion is not a condition for the application of that provision (see, by analogy, Case C-251/95 SABEL [1997] ECR I-6191, paragraph 20).

(42) On the basis of the foregoing, the difference between the risk of unfair advantage being taken, within the meaning of Article 8(5) (…), and the likelihood of confusion may be summarised as follows: there is a likelihood of confusion where the relevant consumer may be attracted by the product or service covered by the mark applied for by considering it to be a product or service with the same commercial origin as that covered by an earlier mark which is identical or similar to the mark applied for. By contrast, the risk that the use without due cause of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier trade mark continues to exist where the consumer, without necessarily confusing the commercial origin of the product or service in question, is attracted by the mark applied for itself and will buy the product or service covered by it on the ground that it bears that mark, which is identical or similar to an earlier mark with a reputation.”

(b) “Evidence” of a risk of confusion

“(43) Secondly, it is appropriate to examine which evidence an opposing party, who is the proprietor of an earlier mark with a reputation, must put forward in support of the ground for opposition referred to in Article 8(5) (…)

(44) In that connection, it must be borne in mind that, according to the second part of Article 74(1) of Regulation No 40/94, in proceedings relating to relative grounds for refusal of registration, OHIM's examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought. That provision has been interpreted as meaning that the departments of OHIM, including the Board of Appeal, when ruling on opposition proceedings, may base their decision only on the relative grounds for refusal which the party concerned has relied on and the related facts and evidence it has presented (Case T-308/01 Henkel v OHIM – LHS (UK) (KLEENCARE) [2003] ECR II-3253, paragraph 32, and Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-1739, paragraph 28).

(45) However, it has also been held that the restriction of the factual basis of the examination of the opposition did not preclude the taking into consideration, in addition to the facts expressly put forward by the parties during the opposition proceedings, of facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (PICARO, paragraph 44 above, paragraph 29).

(46) Furthermore, it must be noted that the purpose of Article 8(5) (…) is not to prevent registration of any mark which is identical or similar to a mark with a reputation. The objective of that provision is, notably, to enable the proprietor of an earlier mark with a reputation to oppose the registration of marks which are likely either to be detrimental to the repute or the distinctive character of the earlier mark or to take unfair advantage of that repute or distinctive character. In that connection, it should be made clear that the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. He must however adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (SPA-FINDERS, paragraph 34 above, paragraph 40).

(47) The existence of a link between the mark applied for and the earlier mark is an essential condition for the application of Article 8(5) of Regulation No 40/94. The harm referred to in that provision, where it occurs, is the consequence of a certain degree of similarity between the mark applied for and the earlier mark, by virtue of which the public concerned makes a connection between them, that is, establishes a link between them (SPA-FINDERS, paragraph 34 above, paragraph 41). The existence of that link must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see, by analogy, Adidas-Salomon and Adidas Benelux, paragraph 32 above, paragraphs 29 and 30). In that regard, the stronger the earlier mark's distinctive character and reputation the easier it will be to accept that detriment has been caused to it (see, by analogy, Case C-375/97 General Motors [1999] ECR I-5421, paragraph 30).

(48) It is apparent from the foregoing that an opposing party who wishes to rely on the relative ground for refusal referred to in Article 8(5) of Regulation No 40/94 is required to indicate the earlier mark which he is citing in opposition and to prove its alleged reputation. In the light of the considerations in General Motors, paragraph 47 above, paragraph 30, which are applicable to the present case by analogy, it is possible, particularly in the case of an opposition based on a mark with an exceptionally high reputation, that the probability of a future, non-hypothetical risk of detriment to or unfair advantage being taken of the mark cited in opposition by the mark applied for is so obvious that the opposing party does not need to put forward and prove any other fact to that end. However, it cannot be assumed that this is always the case. Indeed, it is possible that the mark applied for does not, at first sight, appear capable of giving rise to one of the three types of risk covered by Article 8(5) of Regulation No 40/94 with respect to the earlier mark with a reputation, even though it is identical with or similar to the earlier mark. In those circumstances, the opposition must be rejected as unfounded unless such a non-hypothetical, future risk of detriment or unfair advantage can be established by other evidence which it is for the opposing party to put forward and prove.”

(b)Scope of examination of an inter partes case by a Board of Appeal, “principle of party disposition” and scope of Article 74(1) CTMR

“( 95) (It) must be noted that, in claiming, in the context of this plea, infringement of its rights of defence and of the principle that it is for the parties to delimit the subject-matter of the proceedings, the (plaintiff) is in fact disputing the lawfulness of the contested decision inasmuch as the Board did not examine the ground for opposition alleging the existence of a likelihood of confusion, when it should have done because the appeal proceedings had transferred to it the power and obligation to do so. Therefore, it must be determined whether the position adopted by the Board of Appeal was in accordance with its obligations when the Board examined the decision of the Opposition Division in the appeal before it.

(96) It must be observed that, in accordance with Article 62(1) of the Regulation No 40/94, following the examination as to the merits of the appeal, the Board of Appeal is to decide on the appeal and that, in doing so, it may ‘exercise any power within the competence of the department which was responsible for the decision appealed', that is to say, in the present case, give judgment itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or reversing the decision appealed. It thus follows from Article 62(1) of Regulation No 40/94 that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact.

(97) Where the Board of Appeal considers that one of the relative grounds for refusal put forward by the opposing party in his opposition and upheld by the Opposition Division in its decision is not well founded, the new, full examination of the merits of the opposition referred to in the previous paragraph necessarily entails an examination by the Board of Appeal, before annulling the Opposition Division's decision, of whether it may be possible to uphold the opposition on the basis of another relative ground for refusal, which was put forward by the opposing party before the Opposition Division but was rejected or not examined by it.”

 

Black & Decker (7) or Yellow and Black (7) : T-273/05 - Case removed from the Court Register; Order of 6 March 2007 .

Keywords: Opposition: business identifier within Article 8(4) CTMR – Article 8(4) rights: proof of existence.

The action had been one in a series of 14 joined cases which had been directed against decisions of the First Board in (1) R0722/2004-1 (T-355/05), (2) R0723/2004-1 (T-245/05), (3) R0724/2004-1 (T-247/05), (4) R0727/2004-1 (T-239/05), (5) R0729/2004-1 (T-240/05), (6) R0730/2004-1 (T-246/05), (7) R0786/2004-1 (T-273/05) , (8) R0788/2004-1 (T-274/05), (9) R0789/2004-1 (T-275/05), (10) R0790/2004-1 (T-276/05), (11) R0791/2004-1 (T-277/05), (12) R0792/2004-1 (T-278/05), (13) R0793/2004-1 (T-279/05), and (14) R0794/2004-1 (T-280/05), concerning Community trade mark applications No 498758, No 499004, No 541581, No 541607, No 498683, No 498717, No 2297604, No 1222413, No 1222561, No 463174, No 541946, No 541680, No 1222330, and No 541623.

The corresponding CTM applications are coloured figurative marks and colour marks, the latter consisting of the colours black and yellow. In the present case, CTM application 2297604 is a colour mark (as shown below). As description of the mark, the applicant indicated that “the mark consists of the colour combination of yellow and black as applied to the major part of the visible surfaces of the power tools claimed, with yellow being the predominant colour'”. It had been applied for the following goods in Class 7: “Manually operated portable electric power tools (excluding gardening tools); drills, percussion drills, cutting tools, saws, jigsaws, circular saws, mitre saws, chop saws, routers, trimmers, planers, screwdrivers, drill/drivers, nailers, hammers, rotary hammers, pneumatic hammers, angle grinders, sanders; parts and fittings for all the aforesaid goods”.

An opposition had been lodged on the basis of Article 8(4) CTMR which initially had been rejected by the Opposition Division concerned on the grounds that the existence of the earlier rights had not been proven. The Board took the opposite view, allowed the appeal and remitted the case back to the Opposition Division. That decision had been challenged by the CTM applicant. It, however, had meanwhile informed the CFI that it wished to discontinue proceedings. The case, in consequence, was removed from the register pursuant to Article 99 ROP-CFI. In consequence, the Office will now have to re-open examination of the opposition case.

 

Sekura : T-238/06 – Struck out as inadmissible; Order of 28 February 2007 .

Keywords: CFI proceedings: formal requirements as regards the action – CFI formalities: representation by a patent attorney– CFI: striking out, Article 111 ROP-CFI.

The action had been directed against a decision of the 4 th Board of 16.7.2006 in R0703/2005-4. The plaintiff had indicated that it was represented by a German Patentanwalt (patent attorney). Requests to produce the documentation pursuant to Articles 44(3) and 5 ROP-CFI had not been answered. The 2 nd Chamber of the CFI rejected the action as inadmissible; referred Stagakis, T-101/92, ECR 1993, II-63 (No. 8).

 

Golf USA : T-230/05 - Judgment of 6 March 2007 (action dismissed; Office practice confirmed).

Keywords: Absolute grounds for refusal: descriptiveness – OHIM proceedings: impact of similar cases on the examination practice – OHIM proceedings: impact of national practice.

The action had been directed against a decision of the 2 nd Board of 25.4.2005 in R0823/2004-2 by which the Board had rejected CTM application “Golf USA” (word), applied for “sports, leisure shoes, outer clothes, trousers, pull-overs, sweaters, t-shirts, vests, three-quarter coats, jackets, headgear, caps, hats, visors” (Class 25), “sport articles, including golf clubs, golf balls, golf bags and golf gloves (Class 28) and commercial retailing services of sport articles, namely golf equipment” (Class 35). The Board had based its decision on Article 7(1)(c) CTMR, and the 2 nd Chamber of the CFI (Pirrung, Meij, Pelikánová) confirmed that conclusion. As regards the plaintiff's argument that similar cases had been accepted by the Office and that the sign at issue had been accepted by various national offices, the CFI stated:

“(57) In the light of the arguments raised by the applicant in the context of the plea alleging infringement of Article 14 of the ECHR, the Court considers that the applicant is in fact relying on the general principal of equal treatment, which constitutes a general principal of Community law. Thus, the plea will be examined accordingly.

(58) As regards the applicant's first argument that similar marks have been registered by OHIM, is sufficient to observe that, whilst factual or legal grounds contained in an earlier decision may constitute arguments to support a plea alleging infringement of a provision of Regulation No 40/94, the legality of the decisions of Boards of Appeal must nevertheless be assessed solely on the basis of this regulation, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice (STREAMSERVE, cited in paragraph 28 above, paragraph 66, and Case T-123/04 Cargo Partner v OHIM (CARGO PARTNER) [2005] ECR II-3979, paragraph 68).

(59) Two hypotheses therefore exist in that regard. If, by accepting, in a previous case, the registrability of a sign as a Community mark, the Board of Appeal correctly applied the relevant provisions of Regulation No 40/94 and, in a later case comparable to the previous one, the Board of Appeal adopted a contrary decision, the Community judicature will be required to annul the latter decision because of infringement of the relevant provisions of Regulation No 40/94. In this first hypothesis, the plea alleging breach of the principle of equal treatment is therefore ineffective (STREAMSERVE, cited above in paragraph 28, paragraph 67; Case T-323/00 SAT.1 v OHIM (SAT.2) [2002] ECR II-2839, paragraph 61; and CARGOPARTNER, cited in paragraph 58 above, paragraph 69).

(60) On the other hand, if, by accepting, in a previous case, the registrability of a sign as a Community mark, the Board of Appeal erred in law and, in a later case, comparable to the previous one, the Board of Appeal adopted a contrary decision, the first decision cannot be successfully relied on to support an application for the annulment of the latter decision. It is clear from the case-law that observance of the principle of equal treatment must be reconciled with observance of the principle of legality, according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another. In this second hypothesis, the plea alleging breach of the principle of equal treatment is therefore also ineffective (STREAMSERVE, cited in paragraph 28 above, paragraph 67; SAT.2, cited in paragraph 59 above, paragraph 61; and CARGO PARTNER, cited in paragraph 58 above, paragraph 70).

(61) The applicant's first argument must therefore be rejected. In those circumstances, it is no longer necessary to examine whether the earlier registrations of the Community trade marks pleaded by the applicant – most of which are disputed by OHIM – have identical characteristics to the mark applied for, as claimed by the applicant, or different ones, as claimed by OHIM.

(62) As regards the second argument, based on the fact that the mark applied for has already been registered as a national mark in several countries, it should be pointed out that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules so that OHIM and, as appropriate, the Community judicature are not bound by a decision given in a Member State that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) (STREAMSERVE, cited in paragraph 28 above, paragraph 47).

(63) Nevertheless, registrations already made in Member States are a factor which, without being decisive, may be taken into account for the purposes of registering a Community trade mark (Case T-122/99 Procter & Gamble v OHIM (Soap bar shape) [2000] ECR II-265, paragraph 61; Case T-24/00 Sunrider v OHIM (VITALITE) [2001] ECR II-449, paragraph 33; and Case T-337/99 Henkel v OHIM (Red and white round tablet) [2001] ECR II-2597, paragraph 58). Those registrations may thus provide analytical support for the assessment of an application for registration of a Community trade mark (Case T-222/02 HERON Robotunits v OHIM (ROBOTUNITS) [2003] ECR II-4995, paragraph 52, and Case T-129/04 Develey v OHIM (Shape of a plastic bottle) [2006] ECR II-0000, paragraph 33).

(64) The Board of Appeal admitted expressly, in paragraph 27 of the contested decision, that national registrations constituted one of the factors to be taken into account when assessing a Community trade mark application. However, as it also rightly found, such registrations cannot be binding on it in circumstances in which it considers that the sign applied for is in conflict with the absolute grounds for refusal laid down in Regulation No 40/94.

(65) The applicant's second argument must therefore be rejected.”

 

Moonspell/Moonspell : T-290/04 - Removed from the register; Order of 15 February 2007 (PT).

Keywords: Opposition: proof in relation to the earlier right – Opposition: evidence, probative value of – CFI proceedings: issue of language of proceedings.

The action had been directed, in Portuguese, against a decision, in English, of the 4 th Board of 17.4.2004, R0682/2001-4, relating to CTM application “Moonspell” (stylised word), applied for musical bands in Class 41. It had been opposed on the basis of “Moonspell” for musical bands, an alleged earlier well-known mark, or, in the alternative, a business identifier within Article 8(4) CTMR. Most of the filed evidence consisted of press clippings where the year was not visible, and where the date had been given in handwriting. The notice of opposition and the respective appeal had been rejected on the grounds that the existence of the alleged earlier right had not been shown. The plaintiff withdrew the appeal to the CFI on the basis of an out-of-court settlement.

 

LPGA : T-248/06 - Case closed; Order of 2 February 2007 .

Keywords: Opposition: comparison of marks.

The action had been initiated against a decision of the 2 nd Board of 11.7.2006 in R1087/2005-2 relating to CTM application LPGA (fig; as shown below), applied for in Classes 25, 28 and 41. It had been opposed by The Professional Golfers` Association (UK) on the basis of their earlier Community trade mark rights in the word PGA, registered in Classes 16, 25, 28, 37, 41 and 42.

The opposition had been rejected on the grounds that the marks at issue are dissimilar. The opponent had initiated court proceedings but subsequently stated that it wished to discontinue proceedings; the defendant did not object. In consequence, the case was removed from the register.

 

C-2: CFI: Developments in pending cases

Mozart : T-304/06 - Office response filed; cancellation case (DE).

Keywords: Cancellation: invalidation on absolute grounds – Absolute grounds for refusal: descriptiveness – Descriptiveness: impact of a survey – OHIM practice: impact of a national decision – OHIM practice: impact of a different decision of another unit within the Office.

The action is directed against a decision of the 2 nd Board of 8.9.2006 in R0097/2005-2 relating to cancellation proceedings 494C and CTM No. 21071 “Mozart”. The said CTM had been registered for a range of products, inter alia , chocolate goods, in Class 30. It had been declared invalid on the basis of Article 7(1)(c) CTMR in that the term “Mozartkugel” would merely describe an established chocolate specialty, or its recipe, respectively, invented in 1900 by a patisseur in Salzburg . The fact that the CTM consists only of the name Mozart cannot change the subject matter. The plaintiff itself had filed a survey showing that almost 20% of the relevant public perceives the name Mozart in relation to chocolate goods as an indication of kind, type or “recipe”. The sign at issue has already been subject of some other proceedings at the national level (Oberlandesgericht Munich) and within the Office (opposition proceedings).

 

Alumix/Alumaxx : T-307/06 - Office response filed.

Keywords: Opposition: likelihood of confusion (LOC) – LOC: comparison of goods – Comparison of goods: relevant public; awareness.

The action is directed against a decision of the 2nd Board of 12.9.2006 in R1225/2005-2 and R1397/2005-2, relating to CTM application Alumix (word), applied for gases and gas mixtures, including in liquid or soluble form, for the thermal treatment of materials; welding and cutting gases, and protective gases (Class 1) and liquid and gaseous fuels in Class 4. It had been opposed on the basis of CTM Alumaxx, registered for gases and gas mixtures for the welding, cutting and thermal spraying of aluminium and aluminium alloys in Class 1. The Board had rejected the opposition in full. Plaintiff, inter alia, claims that the awareness of the relevant public, as regards the specific products at issue, had been wrongly assessed. It also claims that the intervener (CTM applicant) had merely copied its brands; the parties are the same as in Ferromix, T-305/06 and Inomix, T-306/06, below.

 

Inomix/Inomaxx : T-306/06 - Office response filed.

Keywords: Opposition: likelihood of confusion (LOC) – LOC: comparison of goods – Comparison of goods: relevant public; awareness.

The action is directed against a decision of the 2nd Board of 12.9.2006 in R1226/2005-2 and R1398/2005-2, relating to CTM application Inomix (word), applied for gases and gas mixtures, including in liquid or soluble form, for the thermal treatment of materials; welding and cutting gases; protective gases (Class 1) and liquid and gaseous fuels (Class 4). It had been opposed on the basis of CTM Inomaxx, registered for gases and gas mixtures for the welding, cutting and thermal spraying of stainless steel in Class 1. The Board had rejected the opposition in full. The plaintiff claims, inter alia, that the awareness of the relevant public, as regards the specific products at issue, had been wrongly assessed. It also claims that the intervener (CTM applicant) had merely copied its brands; the parties are the same as in Ferromix, T-305/06.

 

Ferromix/Ferromaxx : T-305/06 - Office response filed.

Keywords: Opposition: likelihood of confusion (LOC) – LOC: comparison of goods – Comparison of goods: relevant public; awareness.

The action is directed against a decision of the 2 nd Board of 12.9.2006 in R1270/2005-2 and R1408/2005-2, relating to CTM application word Ferromix, applied for gases and gas mixtures, including in liquid or soluble form, for the thermal treatment of materials; welding and cutting gases; protective gases (Class 1) and liquid and gaseous fuels, in Class 4. It had been opposed in total on the basis of CTM Ferromaxx (word), registered for a range of goods in Class 1, namely gases and gas mixtures for the welding, cutting and thermal spraying of Carbon and ferritic alloy steels and Carbon and ferritic alloy steel alloys. The Board had rejected the opposition in full. The plaintiff claims, inter alia, that the awareness of the relevant public, as regards the specific products at issue, had been wrongly assessed.

 

Bud/Bud-2 : T-257/06 - Office response filed.

Keywords: Opposition/earlier right: effect of a negative national decision at pending opposition proceedings - Opposition: earlier rights within Article 8(4) CTMR – Article 8(4) CTMR: scope – Article 8(4) CTMR/scope: impact of a national court decision – OHIM practice: effect of an Office decision on subsequent proceedings.

The action is directed against a decision of the 2 nd Board of 28.6.2006 in R0802/2004-2 relating to CTM application No 1737121, word BUD, applied for by Anheuser-Busch Inc. for a range of services, namely Class 35: setting up databases, gathering data and information in databases; Class 38: telecommunications, namely making available and supplying data and information, supplying and communicating information stored in data bases; Class 41: education, entertainment, and Class 42: restaurant, bar and pub services; operating a database. The Czech company Budejovicky Budvar had lodged an opposition against the full CTM application, based on an earlier international registration Bud (figurative, as shown below) with effect in Austria, the Benelux and Italy for all types of light and dark beer in Class 32, and on two alleged appellations of origin.

CTM application

 

 

The first appellation of origin is BUD, registered for beer under the Lisbon agreement, with effect in France , Italy and Portugal . The other one is BUD, registered for beer in Austria under the respective bilateral agreement between that country and what was then Czechoslovakia .

Notwithstanding that the opposition had been allowed in relation to “restaurant, bar and pub services” in Class 42 by the respective opposition group, the Board had quashed that decision and had dismissed the appeal of the opponent for the rest. It had referred to the grounds given in parallel proceedings, namely in its decision of 14.6.2006 in R0234/2005-2 (pending CFI, T-225/06). In the decision referred to, the Board had stated: The international registration had been cancelled in Austria and Italy , and there is no proof of use as regards the Benelux . Whereas, in principle, a formally protected denomination or appellation of origin may be invoked within Article 8(4) CTMR, the denomination at issue must have been genuinely used in trade. That requirement had not been complied with as regards Portugal , Italy and France . It does not matter that, as regards France , the Opposition Division had held differently in a parallel case. Further, the French appellation had been cancelled at pending OHIM proceedings by a decision handed down by the Tribunal de Grande Instance de Strasbourg. It does not matter that that national decision had been appealed. As regards Austria , the Handelsgericht Wien had held, subsequent to the ECJ decision in C-216/01, that the plaintiff's mark does not make up a geographical indication of origin within the meaning of the bilateral treaty.

 

Letter E (II) : T-329/06 – Office response filed (DE).

Keywords: Absolute grounds for refusal: distinctiveness – Distinctiveness: single letters.

The action is directed against a decision of the 1st Board of 8. 9.2006 in R0394/2006-1 relating to CTM application 3817566. The sign at issue consists of the single letter E, applied for a range of goods in Classes 7, 9 and 19, mainly relating to wind energy apparatus. The application had been rejected under Article 7(1)(b) and (c) CTMR on the grounds that in this sector of products the single letter E cannot serve as a badge of origin because it is no mere than a standard abbreviation for “energy”.

 

Letter E (I) : T-302-06 - Office response filed (DE).

Keywords: Absolute grounds for refusal: distinctiveness – Distinctiveness: single letters.

The action is directed against a decision of the 4 th Board of 5.9. 006 in R0805/2006-4 relating to CTM application 4316949. The sign at issue consists of the single letter E, applied for a range of goods from the “medicinal sector” in Classes 5, 10 and 25. The application had been rejected under Article 7(1)(b) CTMR on the grounds that in this sector of products a single letter cannot serve as a badge of origin. It is very likely, instead, that the relevant public including the medicinal profession will merely perceive it as a technical indication (as to type, category, size etc.).

 


NEW DECISIONS FROM THE BOARDS OF APPEAL

The cases can be found in our website.

Please note that the full number including slash has to be entered in our database under 'Appeal Nº', without the letter 'R'.

e.g. Case R 219/2004-1 has to be entered under 'Appeal Nº' as: 219/2004-1
 

Ex-parte – Article 7(1)(b) CTMR

Absolute grounds for refusal – descriptiveness - descriptiveness acquired by use – relevant territory – figurative trade mark – position mark –average consumer – general public – public concerned

Decision of the First Board of Appeal of 28 February 2007 in Case R 1107/2006-1 (Dutch)
R 1107/2006-1
(Strepen) – as regards the clothing and shoes sector, the goods vary widely in quality and price. Whilst it is possible that the consumer is more attentive to the choice of mark where he or she buys a particularly expensive item of clothing, such an approach cannot be presumed without evidence with regard to all goods in that sector.

There is nothing about the sign applied for that endows it with distinctive character for the goods in question. The two stripes are banal and common for the goods at issue in particular for sports and leisure shoes. The lines of white rectangles do not have any additional value. The public will perceive the trade mark, which does not depart significantly from the norm or customs of the sector as a whole, as a decorative element and not as an indication of origin.

In the case of non-word marks, it may be assumed that the assessment of distinctiveness will be the same throughout the Community, unless there is concrete evidence to the contrary. Even if a significant part of the relevant public in the Netherlands in the 70's and 80's would have recognised the trade mark as an indicator of origin, the documents do not justify the same conclusion with respect to the current relevant public in the other EU countries for the goods at issue.

 

Article 7(1)(c) CTMR

Figurative trade mark – neologism – figurative element – case-law – national court – examination proceedings – absolute grounds for refusal – descriptiveness – distinctiveness

Decision of the Fourth Board of Appeal of 15 February 2007 in Case R 1504/2005-4 (German)
R 1504/2005-4 (DOG FOOD)
– the mere combination of two descriptive elements itself remains fundamentally descriptive unless, because of the unusual nature of the combination, the word at issue creates an overall impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. Even if the overall term has acquired a new meaning going beyond the mere combination of its elements, it must still be ascertained whether this is not itself also descriptive.

The sign contains an illustration of a dog's head, which is placed inside the letter O. This likewise describes the fact that the product is dog food and thus the kind of goods claimed; it does not carry any weight.

 

Figurative trade mark – neologism – figurative element – case-law – national court – examination proceedings – absolute grounds for refusal – descriptiveness – distinctiveness

Decision of the Fourth Board of Appeal of 20 February 2006 in Case R 1176/2006-4 (German)
R 1176/2006-4 (Kaufmarkt)
– bringing together two descriptive terms remains fundamentally descriptive unless the unusual nature of the combination of the terms in question creates an overall impression which is sufficiently far removed from that produced by the combination of the meanings of the parts of the term, with the result that the overall term is more than the sum of its parts. The graphic design of the sign does not go beyond the descriptive statement and is devoid of any distinctive character. It does not create a graphically striking element. Such a simple border also has no distinctive character. Websites under a domain for the Coco Inlands may also serve to prove descriptive use.

 

Inter-partes – Article 8, Article 43(2) & Article 74

Evidence – Failure to provide evidence – time limit – belated observations – substantiation of earlier right – proof of use - use – invoice

Decision of the Second Board of Appeal of 20 March 2007 in Case R 0299/2006-2 (English)
R 0299/2006-2 BUDWEISER/BUDWEISER BUDWAR
et al. – in this case the Board exercises its discretion in accordance with Article 74 CTMR in favour of admitting the evidence in question which arrived at the Office late. The reasons for this are : a) the fax transmission commenced before the expiry of the time limit; b) the fax transmission was completed a mere 44 minutes after the deadline had technically expired. The delay is insignificant; c) the evidence is likely to be relevant; d) the evidence was received 35 months before the contested decision was issued. Additionally, the trade marks were put to genuine use in Austria and Germany in the relevant five year period. Advertisements showing pictures of the opponent's beer with the trade marks and copies of invoices to customers in Austria and Germany are sufficient in the light of case C-259/02, La Mer , in which the Court stated that even minimal use by a single importer in the Member State concerned may be sufficient if the use serves a real commercial purpose.

Since the signs and the goods are identical, the CTM applied for must be rejected.

 

Inter partes – Article 52(1)(b), Article 74(2)

Cancellation proceedings – absolute grounds for invalidity – bad faith – first time on appeal – new evidence – complementary evidence

Decision of the First Board of Appeal of 2 February 2007 in Case R 31/2005-1 (English)
R 0031/2005-1 ER
– Evidence, submitted together with the statement of grounds, and which completes and confirms the earlier filed evidence shall be admissible. The concept of ‘bad faith' as mentioned in Article 52(1)(b) CTMR does not require that there exists an earlier right. It is sufficient that the applicant for cancellation is the owner of a sign used in commerce. Since the cancellation applicant has used the sign ‘ER' in a large number of countries in and outside the European Union and that the CTM proprietor has been well aware of this use, the CTM must be cancelled.

 

Inter partes – Article 50(1)(a)

Proof of use – affidavit – export – packaging – relevant territory – party to the proceedings – cancellation proceedings – revocation

Decision of the Second Board of Appeal of 28 February 2007 in Case  R 1209/2005-2 (English)
R 1209/2005-2 (Payless ShoeSource)
– the CTMR does not prohibit a legal practitioner, such as a German ‘Rechtsanwalt' or a law firm, to make a revocation request in its own name. Even if the Regulations do not foresee a transfer of the status as party to the proceedings, it is accepted practice. The Board cannot see any reason why such a transfer should not be possible for the applicant for revocation. The applicant for revocation does not have to file a detailed ‘written reasoned statement' in accordance with Article 55(2) CTMR. The Office shall examine the facts of its own motion, once the proceedings have been started by the revocation applicant. The only exception foreseen for proceedings relating to relative grounds for refusal of registration does not apply to revocation cases. The Board considers it sufficient that the revocation applicant has presented some initial evidence. It is now up to the Community trade mark owner, who is in the best situation to give evidence on use of its trade mark, to act and to come up with facts and evidence.

It is not necessary for the mark to be used everywhere in the Community. Additionally, affixing of the Community trade mark to goods or to the packaging thereof in the Community solely for export purposes constitutes trade mark use. It is of no relevance whether the Italian exporter or the Community trade mark proprietor affixes the Community trade mark before shipping them to the United States. It is not necessary to prove consent of the owner by explicit proof


E-Business at OHIM

New e-business tools available
1- Two new services for MYPAGE users:

- A new option is available to receive an e-mail notification when a new search report has been posted on MYPAGE. A similar option already exists for electronic communication users. This new option will be activated when a new user suscribes to MYPAGE . Current users have a new option available in their MYPAGE preferences.

- Online modification of personal details
MYPAGE users can modify their own personal data online via their MYPAGE account. The following details can be modified: name, address, contact details and correspondence address. Those details are automatically changed in the OHIM's internal systems. This new online tool will facilitate changes to personal data.

Furthermore, representatives may also modify the personal data of their clients via MYPAGE using the same tool.

For any further information, please consult http://oami.europa.eu/en/office/press/eb_improvements.htm#1

2- FindRep tool: a new improved CTM-AGENT

FindRep is a new search tool for CTM and RCD representatives. It significantly improves the search facilities previously available as it provides more criteria and more databases are searched.
The main features are:

  • Any type of representative before the OHIM can be found, not only OHIM professional representatives, but also associations, employees and lawyers.
  • The search tool has been harmonized with the CTM-ONLINE/RCD-ONLINE databases providing a basic and advanced search screen.
  • Complete information regarding the representative as recorded by the OHIM is provided, including all contact details available.

For further information please access FindRep
: http://oami.europa.eu/FRP/RequestManager?transition=start&source=Login.html&language=en&application=FRP

 

E-Business Workshops – a fruitful experience to be repeated.
The OHIM held the first e-business workshops on 23 and 28 March 2007 respectively in Alicante and in Brussels . The objective was to provide OHIM e-business users with practical information on the OHIM's electronic tools and, in particular, on CTM and RCD e-filing, e-opposition, MYPAGE and the CTM-ONLINE and RCD-ONLINE search systems.

Around 20 people participated in each workshop and gave their feedback on the OHIM's e-business systems. The presentations given during the e-business workshops are available on the OHIM website at: http://oamitest/en/office/events/default.htm

The issue of incidents with CTM e-filing, and MYPAGE to a lesser extent, were much commented upon. Furthermore the participants made a series of interesting suggestions such as :

- access to MYPAGE for companies with large CTM/RCD portfolios and management of electronic communication;

- various suggestions on CTM/RCD e-filing such as search by owner ID, an option to save the application in MYPAGE, among others.

This feedback is very useful for the OHIM in order to improve its e-business tools and the next version of the tools will take into consideration the comments made.

These workshops have been a fruitful experience for both the e-business users and the OHIM. Similar workshops will be held in Alicante and in Brussels in June/July.

 

The OHIM E-Business Roundup (2007)
Statistical summary

  • The use of the CTM e-filing web form is maintained at around 75%.
  • More than 10% of oppositions against CTM applications are received electronically.
  • The number of MYPAGE users has increased to over 1900, accounting for some 78% of e-communication users.


State of play of future projects:

Service

Status

B2B e-filing CTM
The objective of this service is to set up a system allowing the direct exchange of CTM applications from the IP management software used by the applicants and the OHIM systems. This tool will use a TM-XML (www.tm-xml.org) format and offer a web service for the transmission of data.

The OHIM has set up its system.

New version of e-communication
Electronic communication will be expanded to include more official communications of the OHIM.

Development has started.

New version of CTM e-filing
The current CTM e-filing service will be significantly improved.

The OHIM has completed the requirements.

New version of RCD e-filing
The current RCD e-filing service will be significantly improved with a view to solving the problem of large attachments, among other things. RCD e-filing will also be accessible through MYPAGE and changes will be made to harmonize it with CTM e-filing.

The OHIM has completed the requirements.

E-renewal RCD
The objective is to provide an electronic tool for renewing Registered Community Designs.

The OHIM has started the analysis phase.

Search for a representative for CTM or RCD procedures (FindRep)
The current CTM-AGENT database will be improved offering enhanced search criteria. MYPAGE users will have the possibility to change personal details directly.

This service is online

Online access to CTM files
CTM file documents will be viewable through CTM-ONLINE with restricted access to documents related to unpublished CTM applications. Mechanisms have been put in place to ensure confidentiality of documents indicated as such.

MYPAGE users will also have the possibility to request inspection of files electronically.

This service is being tested

E-Caveat
The objective is to provide an e-mail notification when a specific CTM status changes.

The OHIM is drafting the requirements.

Online handling of opposition procedures
Opposition proceedings will be handled electronically via MYPAGE. It will be possible for the parties to exchange documents via this new tool.

The OHIM has completed the requirements.

 

More News

BoA Design Decisions
Decisions of the Boards of Appeal on registered Community designs can now be searched for in the Boards of Appeal database. To search for design decisions, “DD-Design Department” should be selected in the field “Contested Decision”. While the software is being updated, only limited information is searchable in relation to design decisions, namely: appeal number, RCD number, decision date and nickname .”

 

Definitive OHIM Website and E-Mail Address
Following the adoption of the new .eu top level domain name by the European Parliament in April 2002, the European Commission decided in January 2005 that all EU institutions, bodies and agencies would be identified on the Internet using third level domain names under ‘ .europa.eu'.

On 9 May 2006 , in line with the Commission's decision, the OHIM's website – OAMI ONLINE – changed its address to www.oami.europa.eu .

In order to ensure a smooth transition from the old address to the new one, all requests made over a one year period using the previous ‘ .eu.int' domain name have been redirected automatically to the Office's official website. The same has been true for e-mails sent using the old format, with automatic redirection of the message to the intended recipient.

As of 9 May 2007 , this redirection service will be discontinued and the website will only be accessible using the correct www.oami.europa.eu address. Likewise, e-mails directed to the OHIM will only reach their intended recipient if addressed using the xxxx.yyyy@oami.europa.eu format.

Users of the OHIM's systems are recommended to update their OHIM contact details to ensure smooth access to OAMI ONLINE and guaranteed delivery of the e-mails they send to the Office.

 

OHIM INTA Conference
3rd INTA / OHIM CONFERENCE COMMUNITY IP RIGHTS – PRESENT & FUTURE 4 JUNE 2007
The International Trademark Association (INTA) and the Office for Harmonization in the Internal Market (OHIM) are pleased to present their third collaborative conference to trademark practitioners. Community IP Rights – Present & Future will be held at the Sheraton Brussels Hotel and Towers in Brussels, Belgium, on Monday, June 4, 2007. Geared to brand owners and advanced-level professionals in the trademark and related fields, this one-day conference will provide valuable insights and tips on enhancing your success rate in dealing with OHIM, registering your trademarks and designs, and enforcing Community trade mark rights. More information are available on the OHIM website at: http://oami.europa.eu/en/office/events/pdf/INTA_07_Brochure.pdf

 

Monthly Statistical Highlights March 2007

Monthly Statistical Highlights* - March 2007

 

Community trade mark applications received

8,410

Community trade mark applications published

4,779

Community trade marks registered (certificates issued)

4,026

Community trade mark renewal applications

1,281

 

 

Registered Community designs received

7,123

Registered Community designs published

8,029

* Statistical data for the month in course is not definitive. Figures may vary slightly after consolidation.