TABLE OF CONTENTS
 
 
 
 
 
 
 
 
The OHIM Service Charter
Over the past months and years, the OHIM has moved steadily towards becoming a more user friendly and accessible organisation, implementing a variety of initiatives to make user interaction with the office as easy as possible. Regular meetings take place with Users' Groups to ensure that the Office is aware of the relevant issues of concern, and feedback is obtained on an ongoing basis from enquiries and complaints remitted to the OHIM's Customer Care Unit.

Without doubt, the two recent surveys commissioned to gauge levels of satisfaction among users have been the focal point of this drive towards better accessibility and transparency and they have allowed the Office to concentrate its efforts in areas identified by regular users of the CTM & RCD systems as being in need of improvement. The structured feedback gleaned from the surveys has allowed the Office to adopt a more systematic approach when setting up systems to improve time and quality standards, and has made it clear to OHIM management that the implementation of clearly defined objectives is beneficial both to the organisation itself and to its users.

The most recent development in the Office's drive towards higher levels of efficiency and accountability has been the publication of the OHIM Service Charter. This Service Charter brings together and clearly defines the objectives of the Office in terms of what users can expect when dealing with the OHIM through a set of concrete and measurable standards which guides the service policy of the Office.

It identifies three main areas in which measurable standards have now been set:

Accessibility

The standards established in this area relate mainly to the availability of staff to attend telephone and e-mail enquiries as well as the accessibility of the Office's e-business services.

The objective for the end of 2007 is that 90% of calls to either the main switchboard or to the e-business hotline should be answered in less than 20 seconds. The same figure applies to the number of complaints dealt with within 15 days, and in terms of written enquiries, 80% of them should be answered in two days or less. The 24-hour-a-day availability of the Office's e-business services has been set at 99.7%.

Timeliness

These objectives involve the time taken to undertake certain aspects of the CTM & RCD registration procedures, including the time taken to issue CTM filing receipts, to conclude the examination of a CTM application or to publish a registered Community design, among others.

As yet, these standards have not yet been applied to the activities carried out by the Boards of Appeal, though work in this area has been constantly improving in recent months and pendency times have come down significantly.

Quality of Decisions

To ensure the maximum levels of quality in decisions taken by the Office in the registration of trademarks and designs, regular spot checks are carried out by legal advisors to detect errors and establish the necessary corrective measures where appropriate. For CTM decisions, 102 examination decisions are sampled and 16 opposition decisions, accounting for 7% and 15% respectively of the total amount of weekly decisions.

Examiners are notified of any errors encountered in their work, with corrections carried out where possible. Monthly reports are then generated using the results of the recorded Quality Checks. The Legal Advisor Group and the Classification Expert Group carry out monthly analyses to identify steps that can be taken to reduce the future occurrence of errors. All of the information collected is reported regularly to the Management of the Office.

The performance results of the Office against this set of standards will be posted on the OHIM's website on a quarterly basis. An annual revision of the standards set in the Charter will be carried out on the basis of the feedback provided by the users and on the basis of the results of the User Satisfaction Survey.

All of this is supported by the Quality Management System that is being put in place at the OHIM, more information on which can be found in the newly created Users' Corner of OHIM's website. This part of the website also offers users a wide range of information on the Service Charter, the User Satisfaction Survey and matters relating to the Customer Care Unit, and it can be accessed at http://oami.europa.eu/en/userscorner/default.htm.

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 Dr Eva Szigeti, director of the trade mark division and deputy managing partner of DANUBIA Patent and Trademark Attorneys in Budapest , Hungary . Eva is active in training trade mark attorneys in Hungary and is involved in a number of international organizations, such as ECTA and INTA. She is a Council member of MARQUES and part of the MARQUES Trade Mark Law and Practice Team.

How long have you been filing Community Trade marks?
When the CTM system was set up, we were able to file CTMs through attorneys and law offices in the EU. But Hungary joined the EU two years ago so it is much cheaper for applicants now. That is the main difference.

How many applications have you made?
Our firm has made about 125 filings, so that is not very many, but the industry in Hungary is not so strong. Year by year we file more than before, though.

Most of the applications we handle are for Hungarian companies but we also represent some Turkish clients and some from Israel . We have also renewed CTMs on behalf of Turkish owners.

What are the main differences between the CTM and Hungarian systems?
They are similar. The Hungarian Trade Mark Act was amended when we joined the EU. The opposition system was introduced and it is the same as the CTM, but that is new for us. We do a number of oppositions for CTMs – we have been surprised by the number of oppositions filed against our clients.

The big unexpected change was that CTMs filed before enlargement were automatically extended into Hungary so there were many more collisions in Hungary where CTM rights collide with Hungarian rights and in particular Hungarian trade names. When the CTM came, Hungarian companies who have similar trade names to registered Community trade marks didn't understand why the names collide. But in most cases we have managed to settle these disputes successfully. We expected more problems with bad faith filing, but there have been only a few problems.

Are you satisfied with examination at OHIM?
We are satisfied. Examinations are very informal and our clients are generally satisfied. We can call the examiners and they can call us.

Are there areas where you want to see improvements?
Clients are happy that the fees have gone down and hopefully they will go down further. Cost is the first question for many clients. Apart from that, I don't think there are particular areas where we want to see improvements.

Do you use electronic filing?
We use it a lot and it works well. The only problem was when we wanted to file 20 applications on the same day – which was exceptional – and we had some problems online, but the IT people at OHIM helped us. The online system has also been improved. Clients are particularly happy that online filing is cheaper.

Have you had any court cases arising from CTMs?
We have some pending but we have not received a final decision. CTM courts have been set up in Hungary , though.

Do you use the Madrid Protocol?
In most cases we file CTMs directly. Our clients prefer to choose this route as it is easier for them given their size and resources.

What are the benefits and disadvantages of the CTM and Hungarian systems?
The first thing we do is carry out a search. If business interests are in Europe , then we normally recommend the CTM but in a lot of cases our clients' business interests are only in Hungary so they choose a Hungarian application. If they want to export to the EU in the near future, then we encourage them to consider a CTM application.

How long have you worked in the trade marks field?
I started this job in 1979 and I'm an attorney-at-law. We used to represent the big pharmaceutical companies and our firm had a monopoly at that time, so we would get hard currency from the bank. In 1990 the regime changed and with the liberalization we lost some of our big Hungarian clients who could do the work on their own. We filed a lot of trade mark applications all over the world.

Before the US joined the Madrid Protocol, and when Hungary joined the EU, we filed very many national trade mark applications on behalf of US clients but we don't file so many any more, or even renew them – because clients can claim CTM seniority. But now we do much more trade mark enforcement, searches and lots of oppositions.

How has that changed the nature of your work?
The easy money has gone. We have more qualified attorneys now and we have just entered an agreement with a law office which shelp with litigation and general legal work.

How big is your team?
We have 16 people in trade marks, as well as a litigation department of about 10.

What was the first CTM you filed?
It was for the mark CREPTO for napkins in Class 16. It is a famous brand in Hungary .

What do you most like about working in trade marks?
Litigation and oppositions, especially when we manage to settle the cases. When clients are happy, I'm happy! It is very satisfying when something seems hopeless and we manage to settle.

Are there any interesting cases in Hungary at the moment?
There is a case on three-dimensional marks for LEGO bricks which is now pending at the Court of Appeal. At the moment, the Hungarian Metropolitan Court has given a different opinion to the OHIM Grand Board of Appeals in a similar case, but one of the parties has appealed in Hungary so we will see what the outcome is, maybe later this year.

You have already seen a lot of changes, but are there any further big challenges ahead?
We don't think so. We would be happy to file more applications and represent more Hungarian clients so we hope the industry will start to improve its awareness of trade marks.



Community Trade Mark

Decision of the Cancellation Division of 30/01/2007

OHIM reference number: 1104C 2534436/1
Community trade mark: 2534436


Language of the proceedings: English

APPLICANT

Societé des Produits Nestlé S.A.
Service des Marques
Case postale 353
Vevey 1800
Switzerland

REPRESENTATIVE

Nestle España S.A.
Servicios Jurídicos
Sonia Felipe López
Avinguda des Paisos
Catalans, 25-51
E-08950 Esplugas de LlobregatSpain
Fax: 93 4733934

against

COMMUNITY TRADE MARK PROPRIETOR

Lacasa S.A.
Autovia Logroño, Km. 14
50180 Utebo (Zaragoza)
Spain

REPRESENTATIVE

Javier Ungria López
Avda. Ramón y Cajal, 78
E-28043 M adrid
Spain
Fax: 914136417

THE CANCELLATION DIVISION

composed of: Wouter Verburg, Alvaro Sesma and Alexandra Apostolakis has taken the following decision on 30/01/2007:  

1.  The request for a declaration of invalidity is rejected.

2. The applicant shall bear the fees and costs of the Community Trade Mark Proprietor.

 And fixes the costs as follows

 The amount of costs to be paid by the applicant to the CTM proprietor pursuant to Article 81(6) CTMR in conjunction with Rule 94(3) IR shall be 450 EUR, corresponding to representation costs.

 FACTS AND ARGUMENTS

(1) The Community trade mark No 2534436 (three dimensional mark) was filed on 14/01/2002 and registered on 02/09/2004 for “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, mustard, vinegar, sauces (condiments), spices; ice, including chocolates, sweets, nougat, edible ices and chocolate drops“ (Class 30). The Community trade mark is represented below:

(2) The applicant bases his request on Article 52(2) (d) CTMR, and claims to be owner of an earlier registered design protected in the Benelux, Denmark, Germany, Greece, Spain, France, Italy; Netherlands, Portugal, Finland, Sweden and United Kingdom.

(3) The applicant bases its request on the following prior registered designs:

- International Design DM 47685 registered on 04/05/1999 with effects in the following countries: Benelux , France , Germany , Greece , Italy and Spain

- DK MR 19 01 202 registered on 21/11/1999
- FI No. 20837, registered on 31/12/1999
- PT No. 29.088 registered on 28/05/1999
- SE No. 65.877 registered on 11/05/1999
- UK No. 2.079.507, registered on 30/11/1998

All the aforementioned registrations cover the following design:

The invalidity is based on all goods covered by the prior design registrations, namely:

Confectionery, sweets and chocolate products, especially sweet chocolate-filled beans or lentils.

The applicant submitted a detailed analysis and extracts of the different national laws under which the design rights are protected.

(4) On 12/08/2005 the Community trade mark proprietor was notified of the request. The CTM proprietor replied to said observations on 21/12/2005 . The applicant replied on 02/06/2006 to which the CTM proprietor replied on 21/08/2006 .

(5) The applicant claims the following: The contested CTM significantly reproduces the prior design registration, which is the shape of the registered circular container, on which the registered owner has an exclusive right of use. This exclusive right implies that its owner can prevent any third party from using it without its consent. This protection extends to those articles which incorporate such design and to those designs which do not substantially differ from the registered one. That the contested CTM covers partly similar goods to those covered by the applicant's earlier design registrations. Therefore, the protection conferred by the registered design is applicable to the present case. The CTM registration contravenes Article 52(2) (d) CTMR and the Articles 9 and 12 of the Design Directive confer in all the national law the holder of the claimed design rights the right to prohibit the use of a subsequent Community trade mark.

(6) The CTM proprietor claims the following: The overall impression of the compared signs differ. The novelty and individual character stems from particular orifices, as the plain circular container is a common shape.

(7) On 29/08/2006 the parties were informed that a decision would be taken.

GROUNDS FOR THE DECISION

On the admissibility

(8) The request complies with the formalities prescribed in the CTMR and the Implementing Regulation and is, therefore, admissible.

On the substance

(9) All claimed national laws are harmonized by the Directive on the legal protection of designs (98/71/EC). Analysing Article 3, 9 and 12 of the Directive in order to have a ius prohibendi against a subsequent Commmunity trade mark on the basis of a design right covered under Article 52(2) (d) CTMR it is necessary that the overall impression of the CTM does not differ for the informed user from the earlier design. Any earlier design shall be new and have individual character in the sence of Article 4 and 5 of the mentioned Directive.

(10) Article 9 of the Directive sets down the scope of the protection conferred by a design: The scope of the protection conferred by a design right shall include any design, which does not produce on the informed user a different overall impression.

In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

(11) Article 12 of the above mentioned Directive establishes the rights conferred by the design right:

The registration of a design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

Such article establishes that the registration of a design confers on its owner the exclusive right to use it, which implicitly implies that its owner has also the right to prohibit any third party to use it, without its consent.

(12) The signs to be compared are the following:

earlier design rights challenged CTM

(13) The overall impression of the challenged CTM and the earlier registered designs is different. The informed user will see both signs as different in an overall impression. Even taking into account the degree of freedom for the designer still the overall impression is perceived as different. The informed user is usually more sensible to details and may perceive differences in the overall impression which the uninformed user does not necessarily perceive.

(14) The container which forms part of the three dimensional Community trade mark No. 2534436 does not include any of the particular elements protected by the invoked designs: there is no circular orifices obturated by two convex operculum over the upper or lower face. There are no features which could infringe the registered design: the geometric form appears more flattened in the CTM than in the earlier rights; the CTM shows graphic and verbal signs in both cases, the prior designs shows two circular clefts; the CTM shows one single hole, different in shape, situation from the clefts in the prior design. The novelty and individual character of the design on which the exclusive right is based results from the obturated orifices and not from the circular shape.

(15) It is not up to the Cancellation Division dealing with trade mark cancellation cases to question the validity of an earlier registered design. However the Cancellation Division should make an assessment on the scope of protection of the earlier designs. This requires to assess which features may justify the novelty and individual character and therefore a possible ius prohibendi against the challenged CTM.

(16) As the overall impression is different the applicant will not have a ius prohibendi against the challenged CTM on the basis of the claimed designs. As the request is based only on the earlier invoked registered design rights, the analysis is limited to said rights. The fact that the registered designs may have been used differently and may differ less with the challenged CTM should not be subject of this analysis. In relative grounds, the Office, in accordance with Article 74(1) CTMR, shall be restricted in the examination to the facts, evidence and arguments provided by the parties and the relief sought.

(17) There is no need to analyse further in detail the national law for each Member State under which the claimed designs are protected, as one basic element that applies in all national legislation of the Member States of the European Union in the light of the Design Directive is that the overall impression of the confronted signs should not differ for the informed user is not complied with.

COSTS

(18) Pursuant to Article 81(1) CTMR and Rule 94 IR, the applicant, as the party losing the cancellation proceedings shall bear the fees and costs of the CTM proprietor.

THE CANCELLATION DIVISION
Wouter Verburg Alvaro Sesma Alexandra Apostolakis
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 EUR 800 has been paid.

Notice on the review of the fixation of costs:

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. Under Rule 94 (4) of the Implementing Regulation such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2 point 30 of the Fees Regulation) has been paid.

 

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

Latvia is one of the newest members of the European Union, joining in 2004. It has a population of just over two and a quarter million people.

Its economy is primarily service based (70%), followed by industry (26%) and then agriculture (4%).

The manufacture of transport vehicles such as buses, trams and trains is an important industry sector, as are electronics and pharmaceuticals.

Latvian businesses have made 88 applications to register Community trade marks since 1996, the vast majority of which were made following their entry into the European Union.








Latvian-based Community trade mark applicants have filed the same number of figurative marks as word marks, followed by a small percentage of 3-D marks.

Goods in class five of the Nice Classification can be found in nearly 40% of all CTM applications coming from Latvia. Services in Class 35 follow closely behind, with goods in Class 16 in 3 rd place.

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

Fax filings represent only 5% of all CTM applications received, while mailed applications come in at around 11%.

Top 10 Latvian-based owners by number of CTMs filed

Company

CTMs

Grindeks, Akciju

34

Diena

4

Air Baltic

2

Latvijas valsts meþi

2

Galateja

2

Hagiteks

2

Juanalko

2

Laima

2

Patricia

2

Rigas Piensaimnieks

2



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

Representative

CTMs

Pubulis

16

Agency Tria Robit

5

Foral

3

Zivko Mijatovic & Partners

3

Kolesnika

2

Krumins

2

Strautina

2

Vasiljevs

2

Glimstedt un Partneri

1

Elzaburu

1

 

Community Design

Accession to the Geneva Act – latest news on implementing measures
Following the decision to accede to the Geneva Act made by Council in December 20061, the European Commission has convened, on 21 May 2007, a first meeting of the committee established under Article 109 of Council Regulation (EC) No 6/2002 on Community designs (“CDR”), with the view to present two draft Commission regulations providing for technical measures in order to implement the new regime instituted by the Council's decision.

The committee (known as the “committee on fees, implementation rules and the procedure of the boards of appeal of the Office for Harmonization in the Internal Market (trade marks and designs)”) is composed of Member States and serves, within the so-called “comitology” procedure2, to deliver opinions on the draft implementing measures submitted to them by the Commission.

The content of the proposals

The first draft concerns the amendments to be introduced into the Community Designs Implementing Regulation (“CDIR”). The draft includes measures to be implemented for the administration of international registrations designating the Community after they have been registered and published by WIPO. The proposal refers to the procedure of examination by OHIM of grounds of refusal in relation to international registrations (e.g. any notification of refusal will need to be addressed to WIPO not later than six months from the date of publication), to the fact that renewals of international registrations designating the EC shall be done directly at WIPO, to the obligation for OHIM to notify invalidity decisions related to international registrations designating the EC to WIPO, to the means of communication between WIPO and OHIM (preferably by electronic means) and to the obligation for OHIM to provide information on international registrations of designs designating the Community in the form of an electronic link to WIPO's database.

Also, the text includes some amendments to the system of renewals of Community designs (Article 22 CDIR). The idea is to align for practical reasons the rules on renewals for designs to those of renewals of CTMs (Rule 30 CTMIR), namely to allow OHIM to enable the implementation of “e-renewals” for designs. The reason to include these changes now is to allow a timely change of business rules to be applied when the first design renewals can be filed pursuant to Article 13 CDR (October 2007).

The second draft concerns amendments to the Community Designs Fees Regulation (“CDFR”). It mainly modifies the fee schedule to incorporate the individual designation fee payable to WIPO, based on new Article 106c CDR. The amount of the individual designation fee for an international registration will be EUR 62 per design. The designation fee for the renewal of an international registration designating the EC will be EUR 31 per design for each period of renewal. The draft text also contains provisions on means of payment. Since 22 October 2005 , cheques and cash payments are no longer acceptable means of payment for CTMs. They are, however, acceptable for Community designs. The amendment serves to align both CTM and CD texts, by suppressing these means of payment for designs. Contrary to the case for CTMs, the payment of design fees is not a condition for the grant of a filing date of a Community design application. Therefore, the impact for users will not be relevant.

The timing

The Commission intends to seek the positive endorsement of the texts by the committee by end of June 2007, with a view to formally adopt the regulations by the Commission in August 2007. This would take place by the President of the Council depositing the instrument of accession with WIPO as from the date of adoption of the Commission regulations, pursuant to Article 2(1) of Council Decision of 18 December 2006 approving the accession. Such deposit could take place in October 2007, which would imply the entry into force of the accession in relation to the EC in January 2008, pursuant to Article 28(3)(b) of the Geneva Act. However, Alicante News readers and users in general are informed that this timing is provisional and depends on the actual evolution of the work in the “comitology” procedure. The Office will continue to inform regularly on this matter.

_____________________________________________

1http://oami.europa.eu/en/office/newsletter/07001.htm
2 For a quick explanation on “comitology”, see the Commission's Register of Comitology at http://ec.europa.eu/transparency/regcomitology/aide.cfm?page=faq&CL=en

 

Designs on the Agenda for WIPO's SCT Meeting in May
During the (17 th1) session of WIPO's Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (‘SCT'), to take place this May, delegates are due to examine an initiative to reflect on the need for global harmonisation in design registration systems. In the November 2006 session, the SCT requested the Secretariat to further develop a questionnaire relating to formalities of industrial design registration and to the borderline between trade marks and designs. This questionnaire is to be examined by the SCT delegates in May, with a view to discussing whether a initiative similar to the Patent Law Treaty (harmonising formalities and procedures in the patent area) should be launched for designs. The work of the SCT on this topic is still in its early stages. Further developments should be monitored in this area. The European Commission (“EC”) regularly participates in these SCT meetings. OHIM representatives (normally the Director of DIPP) form part of the EC delegation to the meeting.

_____________________________________________

1http://www.wipo.int/meetings/en/topic.jsp?group_id=63



Country Overview: Latvia & the Registered Community Design

Flag of Latvia

Latvia is one of the newest members of the European Union, joining in 2004. It has a population of just over two and a quarter million people.

Its economy is primarily service based (70%), followed by industry (26%) and then agriculture (4%).

The manufacture of transport vehicles such as buses, trams and trains is an important industry sector, as are electronics and pharmaceuticals.

In terms of RCD filings, Latvia has filed a total of 122 designs since the inception of the registered Community design system in 2003.



Design filings coming from Latvia are dominated by goods in Class 22 of the Locarno classification, with over 16% of designs including such goods. Class 25 goods are in second place, making up just under 15% of the total number of designs filed by Latvian-based applicants.

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

Electronic filings of designs account for just over 38% of all Community designs received from Latvia, with 11% arriving by fax.

Top 10 Latvian-based owners by number of RCDs filed

Owner

RCDs

Scruples

18

Art & Craft

13

Grase

9

Poga

9

Laima

8

Latvijas Finieris

7

Nissi

5

Lakstiod

4

Pildne

4

Titâns

4


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

Representative

RCDs

Petersona Patents

20

Agency Tria Robit

19

Pucçviea

13

Latiss

7

Ludvigsone-Rudzîte

7

Aientûra Arnopatents

4

Harrison Goddard Foote

3

Foral

2

Makarova

1

Miezîtis

1


 

Case-law

 LATEST TRADE MARK AND DESIGN NEWS FROM LUXEMBOURG

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

A-1: ECJ Judgments and Orders

Travatan/Trivastan : C-412/05-P - Judgment of 26 April 2007 (appeal from T-130/03 = ECR (2005) II-3859; action dismissed; Office practice confirmed).

Keywords: ECJ proceedings: assessment of similarity of marks: issue of fact or of law? - Procedural law CFI: new plea in law – Opposition: proof of use (POU) - Opposition: likelihood of confusion (LOC) – LOC: relevant public; pharmaceutical products - LOC: comparison of goods.– LOC: comparison of marks; pharmaceutical products.

The case had initially been brought against a decision of the 3 rd Board of Appeal of 30.1.2003 in R0968/2001-1 relating to CTM application “Travatan”, word, applied for in Class 5 for ophthalmic pharmaceutical products. It had been opposed on the basis of “Trivastan”, a word mark, registered for a range of products in Class 5. Having been called on to furnish POU, the opponent did so in relation to a “peripheral vasodilator intended to treat peripheral and cerebral vascular disturbance and vascular disorders of the eye and ear”. In consequence, the opposition had been allowed in full on the grounds of a relevant similarity in respect of the goods and similar marks. Before the CFI, the plaintiff invoked, for the first time, a court decision dealing with the standards making up genuine use within the meaning of the law in force, denying that the earlier mark had in fact been genuinely used. That argument was rejected by the CFI. Overall, the CFI confirmed the findings of the Board, and so did the 3 rd Chamber of the ECJ (Rosas; Tizzano; Borg Barthet; Malenovsky; Ó Caoimh, judge rapporteur) as regards the judgment handed down by the CFI.

•  Admissibility, in the concrete case, of a plea in law introduced for the first time before the CFI

“(38) Inasmuch as, by the first part of the arguments raised under this plea, the applicant alleges that the Court of First Instance misconstrued the scope of the first subparagraph of Article 48(2) of the Rules of Procedure of that Court, it should be recalled that that provision provides that no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which come to light in the course of the procedure.

(39) In the present case, paragraphs 17 to 22 of the judgment under appeal show that the Court of First Instance held that, in the absence of any new matters of fact or law, the plea submitted by the applicant at the hearing, according to which the conditions required for the earlier mark to be regarded as having been put to genuine use were not satisfied, in particular because of the low sales volume of that mark, should be rejected as inadmissible in so far as it was a new plea for the purpose of that provision in the Rules of Procedure of the Court of First Instance. In its application, the applicant had alleged that the Board of Appeal had infringed Article 43(2) and (3) of Regulation No 40/94 not in that those conditions were not satisfied, but only in that the evidence of genuine use submitted by Biofarma did not show that the earlier mark had actually been used in respect of ophthalmic products.

(40) As the Advocate General observed in point 20 of her Opinion, the assessment made by the Court of First Instance is vitiated by an error in law. The line of argument which states that the conditions required for the earlier mark to be regarded as having been put to genuine use are not satisfied logically falls under the plea alleging that there is no evidence of such genuine use in respect of ophthalmic products. That line of argument, apart from being based on the infringement of the same provision of Regulation No 40/94 as that submitted in the plea in question, seeks, like that plea, to dispute that the earlier mark was actually used in the course of trade. Consequently, it may be regarded as amplifying that plea and must be held to be admissible (Case 306/81 Verros v Parliament [1983] ECR 1755, paragraph 9, and Case C-66/02 Italy v Commission [2005] ECR I-10901, paragraph 86).

(41) However, the error in law vitiating paragraphs 17 to 22 of the judgment under appeal is not such as to invalidate that judgment and, therefore, the arguments put forward by the applicant on this issue must be set aside as inoperative. The Court of First Instance's rejection of the line of argument relating to the conditions required for the earlier mark to be regarded as having been put to genuine use has adequate legal basis in other grounds set out in that judgment (see, to that effect, Case C-496/99 P Commission v CAS Succhi di Frutta [2004] ECR I-3801, paragraph 68, and Case C-447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraphs 46 to 51).

(42) In this connection, it is apparent from paragraphs 23 to 25 of the judgment under appeal, introduced by the phrase ‘in any event', which are the subject-matter of the second part of the arguments raised by the applicant under this plea, that the Court of First Instance held that, even if the line of argument relating to the conditions required for the earlier mark to be regarded as having been put to genuine use were to be interpreted as an argument relating to the plea put forward in the application, it should in any case be rejected on another ground to the effect that, since the purpose of the action before the Court of First Instance is to review the legality of the contested decision, in its review it cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal. In paragraph 24 of that judgment the Court of First Instance stated, in its definitive assessment of the facts (which is not to be called into question in this appeal) that, in the proceedings before OHIM, the applicant had expressly stated that it did not dispute the fact that the evidence supplied by the intervener showed genuine use of the earlier mark in respect of a particular product.

(43) Contrary to the applicant's submission, the Court of First Instance was fully entitled to reject as inadmissible the disputed arguments on this second ground. The applicant does not have the power to alter before the Court of First Instance the terms of the dispute, as delimited in the respective claims and allegations it and the party opposing the trade mark application have submitted (see, to that effect, Case C-106/03 P Vedial v OHIM [2004] ECR I-9573, paragraph 26, and KWS Saat v OHIM, paragraph 58).

44 First, under Article 63 of Regulation No 40/94, a Board of Appeal's decision may be annulled or altered only on grounds of lack of competence, infringement of an essential procedural requirement, failure to comply with the EC Treaty, with Regulation No 40/94 or with any rule of law relating to their application, or misuse of power. Accordingly, the review of that decision by the Community Courts is confined to a review of the legality of that decision, and is thus not intended to re-examine the facts which were assessed within OHIM, requiring new factual submissions made to that body to be taken into consideration (see, to that effect, Case C-214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 50, and Case C-29/05 P OHIM v Kaul [2007] ECR I-0000, paragraph 54). - 45 Secondly, it follows from Article 135(4) of the Rules of Procedure of the Court of First Instance that the parties to proceedings before that Court may not change the subject-matter of the proceedings before the Board of Appeal.”

•  LOC – Pharmaceutical products – Impact of professionals in the distribution chain

“(56) In the present case, having regard to that case-law, the Court of First Instance was fully entitled to hold, which indeed is not disputed by any party in these appeal proceedings, that the healthcare professional at issue must be included in the relevant public for the purposes of the application of Article 8(1)(b) of Regulation No 40/94, the function of the trade mark as an indication of origin being also relevant to intermediaries who deal with the goods commercially in so far as it will tend to influence their conduct in the market (see, to that effect, Case C-371/02 Björnekulla Fruktindustrier [2004] ECR I-5791, paragraphs 23 and 25).

(57)  However, contrary to what the applicant claims, the fact that intermediaries such as healthcare professionals are liable to influence or even to determine the choice made by the end-users is not, in itself, capable of excluding all likelihood of confusion on the part of those consumers as regards the origin of the goods at issue.

(58) In so far as it found in paragraph 49 of the judgment under appeal, in its definitive assessment of the facts, that the products at issue are sold in pharmacies to the end-users, the Court of First Instance was fully entitled to infer therefrom that, even though the choice of those products is influenced or determined by intermediaries, such a likelihood of confusion also exists for those consumers since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products, at various times.

(59) It is settled case-law that the perception of the marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (Lloyd Schuhfabrik Meyer, paragraph 25, and Case C-361/04 P Ruiz-Picassoand Others v OHIM [2006] ECR I-643, paragraph 38).

(60) In addition, the Court of Justice has already held that the average consumer only rarely has the chance to make a direct comparison between the different signs but must place his trust in the imperfect picture of them that he has kept in his mind (Lloyd Schuhfabrik Meyer, paragraph 26, and judgment of 23 September 2004 in Case C-107/03 P Procter & Gamble v OHIM, not published in the ECR, paragraph 44). – 61  Furthermore, since it is undisputed that the whole process of marketing the goods at issue is aimed at the end-user's acquisition of them, the Court of First Instance was entitled to hold that the role played by intermediaries, even if they are healthcare professionals whose prior intervention is required in order to sell those goods to end-users, must be in part balanced against the high degree of attentiveness which may be shown by those users, in the light of the fact that the goods at issue are pharmaceutical products, when they are prescribed and, consequently, against those users' ability to make those professionals take into account their perception of the trade marks at issue and, in particular, their requirements or preferences.”

•  Similarity of marks: issue of fact

“( 70)  The Court rejects from the outset as inadmissible the argument by which the applicant, referring to the level of evidence which should have been required from Biofarma, effectively seeks to call into question the purely factual assessment made by the Court of First Instance in paragraphs 57 to 60 of the judgment under appeal, which led that Court to rule in paragraph 61 of that judgment that the Board of Appeal did not err in finding that there was a high degree of similarity between the goods in question.

(71) The applicant cannot require the Court to substitute its own assessment for that of the Court of First Instance in that regard. It is settled case-law that the effect of Article 225 EC and the first paragraph of Article 58 of the Statute of the Court of Justice is that an appeal lies on points of law only. The Court of First Instance thus has exclusive jurisdiction to find and appraise the relevant facts and assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts and evidence are distorted, constitute a point of law which is subject, as such, to review by the Court of Justice on appeal (see Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717, paragraph 41, and Rossi v OHIM, paragraph 26).”

 

COMPUSA/COMP USA : C-196/06-P – Order of 9 March 2007 (action dismissed, partially as clearly inadmissible and partially as clearly unfounded; Office practice confirmed).

Keywords: Opposition: Comparison of goods and services - Comparison of goods and services (“G&S”): impact of national law and practice.

The case is an appeal from T-202/03, Judgment of 7 February 2006 , by which the 1 st Chamber of the CFI (Cooke, Garcia-Valdecasas, Trstenjak) had dismissed an action against a decision of the 1 st Board of 24.3.2003, R 711/2002-1, relating to a conflict between CTM application COMPUSA (fig.) in Classes 9, 37 and 42, and the earlier Spanish mark COMP USA (fig.) in Class 39.

 

CTM application

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The 1 st Board had confirmed a decision by the Opposition Division which had rejected the opposition on the grounds that there was no similarity between the goods and services at issue. The CTM application covered computer hardware and computer software in Class 9, and inspection and repair of electronic circuitry and components in computer hardware, in Class 37. The invoked earlier mark is registered for transport, packaging and storage of goods and travel arrangements, in Class 39. The plaintiff (opponent) had claimed that national law and practice must be taken into account in respect of comparison of goods and services. The CFI had reasoned as follows:

•  Impact of national law as regards comparison of goods and services

“(56) According to the first recital in the preamble to Regulation No 40/94, the purpose of the Community trade mark is to enable the products and services of undertakings to be distinguished by identical means throughout the entire Community, regardless of frontiers (Case T-122/99 Procter & Gamble v OHIM (Soap bar shape) [2000] ECR II-265, paragraph 60, and Case T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 45).

(57) Given the unitary nature of the Community trade mark, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it, and applies independently of any national system (electronica, paragraph 47). Accordingly, the validity of the Board of Appeal's decisions must be examined exclusively on the basis of the relevant Community legislation, that is to say primarily Regulation No 40/94 (Case T-219/00 Ellos v OHIM (ELLOS) [2002] ECR II-753, paragraph 53).

(58) As a result, OHIM cannot be bound by a decision given in a Member State according to which where the two marks are identical in name they are ‘incompatible' even if the goods and services covered by the signs in question are different. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 (see, as regards absolute grounds of refusal, Case T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 47).”

•  As regards comparison of the services at issue

“(38) In that context, it must be pointed out, first of all, that, as stated in Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes. Therefore, goods and services may not be regarded as being dissimilar on the sole ground that, as in the present case, they appear in different classes under that classification (judgment of 13 December 2004 in Case T-8/03 El Corte Inglés v OHIM – Pucci (EMILIO PUCCI) [2004] ECR II-0000, paragraph 40).

(39) According to settled case-law, in order to assess the similarity of the goods and services concerned, all the relevant factors which characterise the relationship between those services should be taken into account, those factors including, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (Case T-85/02 Díaz v OHIM– Granjas Castelló (CASTILLO) [2003] ECR II-4835, paragraph 32, and EMILIO PUCCI, paragraph 41; see also, by analogy, Canon, paragraph 23).

(40) Thus, in the present case, the fact relied upon by the applicant to the effect that the intervener's sales services, the sale of computer hardware and various retail services of a technological and digital nature provided by internet, are connected with the applicant's transport services, is not sufficient for those services to be regarded as similar if they otherwise differ significantly in relation to all the relevant factors which characterise the ways in which they are linked.”

 

Celltech : C-273/05-P – Judgment of 19 April 2007 (appeal from T-260/03; action dismissed; impact on Office practice as regards scope of reasoning of negative decisions).

Keywords: Absolute grounds for refusal: nature and scope of examination - Absolute grounds for refusal: descriptiveness under Article 7(1)(c) CTMR.

The action, initiated by the Office, had been directed against a CFI decision of 14.4.2005 in case T-260/03 Celltech v OHIM, [2005] ECR II-1215, by which the CFI had annulled the decision of 19.5.2003 of the 2 nd Board in R 659/2002-2, refusing registration of the word mark Celltech in Classes 5, 10 and 42. In essence, it had been held that, since the sign applied for was such as to be immediately and unambiguously perceived as a term designating activities in the field of cell technology and products, apparatus and equipment used in connection with, or resulting from, those activities, the connection between the goods and services to which the application for registration related and the trade mark was not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required. The CFI had mainly relied on the following considerations:

“(38) Admittedly, it is the case that the goods and services to which the application for registration relates are in general terms pharmaceutical goods and services and, on that account, have a connection with bodies which are composed of cells. However, the Board of Appeal did not show that the relevant public would immediately and without further reflection make a definite and direct association between the pharmaceutical goods and services claimed and the meaning of the word mark CELLTECH (see, to that effect, Case T-359/99 DKV v OHIM (EuroHealth) [2001] ECR II-1645, paragraph 35).

(39) Furthermore, even supposing that the goods and services concerned may be used for functional purposes involving cell technology, that fact would not be sufficient for a finding that the word mark CELLTECH may serve to designate their intended purpose. Such use of them constitutes at most one of many possible areas of use, but not their technical function ([Case T-356/00 DaimlerChrysler v OHIM (CARCARD) [2002] ECR II-1963,] paragraph 40).”

In essence, the 1 st Chamber of the ECJ (Jann, Ilešic ,(judge-rapporteur), Lenaerts, Juhász, Schiemann) confirmed these findings.

•  Nature and scope of examination of absolute grounds (“ex officio”)

“(38) Under Article 74(1) of Regulation No 40/94 (omissis: e contrario) , OHIM examiners and, on appeal, the Boards of Appeal of OHIM are required to examine the facts of their own motion in order to determine whether the mark applied for falls under one of the grounds for refusal of registration laid down in Article 7 of that regulation. It follows that the competent bodies of OHIM may be led to base their decisions on facts which have not been alleged by the applicant for the mark (Storck v OHIM, paragraph 50).

(39) Whilst it is in principle the task of those bodies to establish in their decisions the accuracy of such facts, such is not the case where they allege facts which are well known (Storck v OHIM, paragraph 51).

•  Application of (a) to the concrete case

(40) In this case, in paragraph 12 of the contested decision, the Board of Appeal stated that “the combination “CELLTECH” will immediately and unambiguously be perceived by the relevant consumer as designating activities in the field of cell technology and products, apparatus and equipment used in connection with or resulting from such activities”.

(41) The Board of Appeal thus implicitly held, first, that cell technology is a well-known scientific fact and, second, that the activities forming part of that scientific method or applying it enable the production or manufacture of pharmaceutical, veterinary or sanitary preparations, compounds or substances, surgical, medical, dental or veterinary apparatus or instruments and/or that such activities require the use of such preparations, compounds or substances as well as such apparatus or instruments.

(42) In so doing, the Board (…) based its decision on facts which it examined of its own motion.

(43) The Court of First Instance noted, in paragraphs 36 to 38 of the judgment under appeal, that, by not furnishing any evidence that cell technology has the scientific meaning attributed to it in the contested decision, the Board of Appeal did not establish the correctness of the findings, summarised in paragraphs 40 and 41 of the present judgment, on the basis of which it held that the mark CELLTECH is descriptive. In fact, it must be observed that the Board of Appeal made no attempt to establish the soundness of those findings, for example by referring to scientific literature.

(44) OHIM argues that the expression ‘cell technology' is sufficiently self-explanatory and, therefore, that any additional explanation and, in particular, a scientific explanation, was superfluous.

(45) However, in deciding that the existence and nature of cell technology is not a well-known fact and that it was therefore for the Board of Appeal to establish the correctness of its findings in that regard, the Court of First Instance made a finding of fact which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal (see, to that effect, Storck v OHIM, paragraph 53).

(46) Accordingly, the Court of First Instance did not make an error of law by deciding that, by not establishing the scientific meaning of cell technology, the Board of Appeal did not show that the mark CELLTECH is descriptive of the goods and services referred to in the application for registration.”

•  Absolute grounds: scope of examination by the CFI

“(53) In paragraphs 36 to 38 of the judgment under appeal, the Court of First Instance criticises the Board of Appeal for having failed to establish the existence and nature of cell technology.

(54) In those circumstances, that Court was not, a fortiori, in a position to determine whether the goods and services referred to in the application for registration can be used for functional purposes involving cell technology.

(55) It was therefore by way of hypothesis that, in paragraph 39 of the judgment under appeal, the Court of First Instance assumed that such could be the case, as is shown by the use of the words ‘even supposing' in the first sentence of that paragraph.

(56) Accordingly, the third ground of appeal appears to be directed against a ground of the judgment under appeal that was stated purely for the sake of completeness and, therefore, even on the assumption that it (the ground of appeal) is well founded, it cannot lead to that judgment's being set aside.

(57) Consequently, this ground of appeal must be rejected as ineffective.”

•  Article 7(1)(c) CTMR: nature and scope

“(73) Article 7(1)(c) of Regulation No 40/94 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service, are not to be registered.

(74) It is appropriate to interpret the grounds for refusal of registration listed in Article 7(1) of Regulation No 40/94 in the light of the general interest underlying each of them (C-37/03 P BioID v OHIM [2005] ECR I-7975, paragraph 59 and the case-law there cited).

(75) Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, which requires that signs or indications which may serve, in trade, to designate characteristics of the goods or services for which registration is sought, may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (Case C-173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I-551, paragraph 62 and the case-law there cited).

(76) In order for a mark consisting of a word produced by a combination of elements, such as the mark applied for, to be regarded as descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94, it is not sufficient that each of its components may be found to be descriptive. The word itself must be found to be descriptive (see, in respect of Article 3(1)(c) of 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), a provision identical, in essence, to Article 7(1)(c) of Regulation No 40/94, Koninklijke KPN Nederland, paragraph 96, and Case C-265/00 Campina Melkunie [2004] ECR I-1699, paragraph 37).

(77) As OHIM pointed out, it follows from the Court's case-law that, as a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics for the purposes of Article 7(1)(c) of Regulation 40/94 (Koninklijke KPN Nederland, paragraph 98, and Campina Melkunie, paragraph 39).

(78) However, the Court added that such a combination may not be descriptive, within the meaning of that provision, provided that it creates an impression which is sufficiently far removed from that produced by the simple combination of those elements (Koninklijke KPN Nederland, paragraph 99, and Campina Melkunie, paragraph 40).

(79) Accordingly, whilst, as regards a trade mark comprising words, its distinctive character may be assessed, in part, in relation to each of its elements, taken separately, it must, in any event, depend on an appraisal of the whole which they comprise (see, by analogy, concerning Article 7(1)(b) of Regulation No 40/94, SAT.1 v OHIM, paragraph 28, and BioID v OHIM, paragraph 29).”

 

Selezione Oro Barilla : C-245/06-P – Order of 9 March 2007 (only in IT and FR; action dismissed, partially as manifestly inadmissible and partially as manifestly unfounded; Office practice indirectly confirmed).

Keywords: ECJ proceedings: definition of “point of law” in trade mark matters - Opposition: comparison of goods and services – Opposition: comparison of marks – Comparison of marks: earlier mark contained in subsequent mark – Enhanced recognition on the market: post-application material – Opposition: likelihood of association.

The case was an appeal from T-344/03 and concerned a conflict between CTM application “Selezione Oro Barilla” (fig.) for certain goods in Class 30, and the earlier rights Oro and Oro Saiwa, registered for a range of products in Class 30.

CTM application

 

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The opponent (plaintiff) sought to rely, inter alia, on the notion of “association” within the provisions on oppositions. The 4 th Board had denied any similarity of marks (R0480/2002-4) and thus had rejected the appeal brought by the opponent. In a brief decision, the First Chamber of the CFI (Cooke, Garcia-Valdecasas and Labucka) had confirmed the Board's decision, relying on standard case-law (Giorgio Beverly Hills, T-162/01; Bass/Pash, T-292/01; Chufafit, T-117/02). The 7 th Chamber of the ECJ (Klucka (judge-rapporteur), Cunha Rodrigues, Arabadjiev) held that, except for the case of distortion of facts by the CFI, the assessment of filed material does not constitute a point of law (Nestlé, C-353/03 of 7.7.2005, ECR 2005 I-6135, and Medion/Thomson Life, C-120/04 of 6.10.2005, ECR 2005, I-8551, distinguished).

A-2: ECJ: Developments in pending cases

Bainbridge : C-234/06-P – Opinion of Advocate General Sharpston (appeal from T-194/03, Il Ponte Finanziaria).

Keywords: ECJ: proceedings: decision on costs – CFI proceedings: decision on costs - Opposition: proof of use – Opposition/“Defensive registration” or “Defensive trade mark”: proof of use (different criteria?) – Proof of use/national particularities: defensive trade marks - Family of marks: use requirement – Opposition/likelihood of confusion: issue of fact or law?

The action initially had been directed against a decision of the 4th Board of 17.3.2003 by which it had rejected an opposition lodged against CTM application Bainbridge (as shown below) on the basis of various earlier rights, all including “Bridge” (examples below).

CTM application

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The CTM had been applied for a range of goods in Classes 18 and 25. The earlier rights are registered, or are allegedly in force, for goods in Classes 18 and 25. The opposition had been rejected on various grounds, inter alia, as regards insufficient or no proof of use as regards specific invoked marks. The CFI had confirmed that finding; the Advocate General recommended dismissing the appeal.

(a) Assessment of LOC = issue of fact

“(53) First of all, it seems clear that this ground of appeal is inadmissible in so far as it may seek to contest the Court of First Instance's factual findings as to the ability of the average Italian consumer to apprehend the element ‘bridge' in conceptual terms or in any other regard. Article 58 of the Statute of the Court of Justice provides: ‘An appeal to the Court of Justice shall be limited to points of law.”

(b) Proof of use varying according to the type of sign and particularities under national law? Defensive trade marks and Italian law.

“(88) Second, the question of proof of grounds for opposition to an application for a Community trade mark is governed by the relevant provisions of the Community Trade Mark Regulation, not by any provision of national law adding a rider to the rule that a national trade mark is liable to revocation if it has not been put to genuine use over a period of five years.

(89) Third, there is nothing in the Trade Mark Regulation, and in particular there is nothing in Article 43(2) or (3), which explicitly or implicitly lays down any rule, principle or concept of defensive trade mark registration of the kind provided for in Italian law.”

(c) Particularities as regards costs

“(106). Having reached the view that the appeal should be dismissed, I consider that Ponte Finanziaria should be ordered to pay the costs, including those of F.M.G. Textiles, whose application for a Community trade mark has been delayed and whose conduct in the course of the proceedings has in no way justified an order that it should bear its own costs.

(107) However, an unusual point arises in that F.M.G. Textiles has applied for costs ‘incurred in the present proceedings and those incurred at first instance'.

(108)  At first instance, both OHIM and Marine Enterprise Projects (the predecessor of F.M.G. Textiles in these proceedings, and intervener at first instance) applied for costs. The relevant terms of Article 87(2) and (4) of the Rules of Procedure of the Court of First Instance are identical to those of Article 69(2) and (4) of the Rules of Procedure of the Court of Justice. In the judgment under appeal, the Court of First Instance stated, at paragraph 132: ‘Since the applicant has been unsuccessful, it must be ordered to pay the costs, as applied for by OHIM.' At point 2 of the operative part, it ordered Ponte Finanziaria ‘to pay the costs'. The costs of the intervener are not mentioned.

(109) It is thus not clear whether Ponte Finanziaria was in fact ordered to pay the intervener's costs in the judgment under appeal. The intervener has not explicitly raised that point but has asked this Court for costs at first instance.

(110) In the light of the judgment of the Court of First Instance, and of my views as to the merits of the appeal against it, it would seem to me just that Ponte Finanziaria should have been ordered to pay the intervener's costs at first instance.

(111) However, where all the grounds of an appeal (and of any cross-appeal) are unsuccessful, there does not appear to be any scope for the Court of Justice to vary the order as to costs at first instance. Indeed, under the second paragraph of Article 58 of the Statute of the Court of Justice, no appeal lies regarding only the amount of the costs or the party ordered to pay them. And the Court of Justice has held that, following an appeal, it has no jurisdiction to tax the costs incurred at first instance. 

(112)  The course to be taken, if necessary, would appear to be for F.M.G. Textiles to make an application to the Court of First Instance for interpretation of its judgment, pursuant to Article 129 of its Rules of Procedure. A rather similar situation, as regards a judgment on appeal which did not explicitly state that the order as to costs included those of the intervener, has been dealt with in that way before the Court of Justice.  No time-limit is prescribed for making such an application.”

 

B: ECJ Preliminary Rulings

B-1: Rulings

(-)

B-2: Developments in pending cases

Bubbles : C-533/06 (reference from the UK Court of Appeal; internal contribution filed with the European Commission).

Keywords: TM law and comparative advertising – Legitimate comparative advertising a defense within Article 6(1)(b) TM Directive?

Background of the case: O2 Holdings Ltd and O2(UK) Ltd (the plaintiffs) are mobile phone service providers, operating in the United Kingdom . The plaintiffs are (or one of them is) proprietor(s) of two United Kingdom trade mark registrations No 2360558 and 2298347 representing bubbles in black and white and in colour. These marks are registered, inter alia, in relation to telecommunication services.

United Kingdom TMs No 2360558 and 2298347

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United Kingdom TM No 2298347

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Hutchinson 3G UK Ltd (the defendant) is a competitor operating in the same field of mobile phone services. The defendant advertised its own services by means of comparative advertisement on TV. In the TV announcement, the price comparison is made with the services provided by the plaintiffs. The plaintiffs were identified in the TV spot by the name “O2” and by the bubbles with which this name has become associated in the public's mind. It is assumed in the reference for a preliminary ruling that the price comparison is true and that the advertisement is not misleading in any way. In particular, the advertisement does not suggest any form of trade connection between the plaintiffs and the defendant. The defendant won in first instance (High Court of Justice (Chancery Division)). The High Court held that:

The use of the bubbles images in the advertisement falls within Article 5(1)(b) of the Trade Mark Directive 89/104); the advertisement complies with Article 3a(1) of the Misleading Advertisement Directive (84/450), as amended by the Comparative Advertisement Directive (97/55) and that such compliance provides a defense within the meaning of Article 6(1)(b) of the TMD.

On appeal from the High Court, the Court of Appeal referred the following questions for a preliminary ruling regarding the interpretation to give to Article 5(1) of the TMD and of Article 3a of the CAD:

“1. Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned by a competitor for the purpose of comparing the characteristics (and in particular the price) of goods or services marketed by him with the characteristics (and in particular the price) of the goods and services marketed by the competitor under that mark in such a way that it does not cause confusion or otherwise jeopardize the essential function of the trade mark as an indication of origin, does his use fall within either (a) or (b) of Article 5 [ omissis: (1)] of Directive 89/104?

2. Where a trader uses, in a comparative advertisement, the registered trade mark of a competitor, in order to comply with Article 3a of Directive 84/450 as amended must that use be “indispensable” and if so what are the criteria by which such indispensability is to be judged?

3. In particular, if there is a requirement of indispensability, does the requirement preclude any use of a sign which is not identical to the registered trade mark but is closely similar to it?”

 

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

C-1: Judgments and Orders

Fliegen zum Taxipreis: T-325/05 - Case closed; Order of 22 March 2007 (appeal withdrawn).

Keywords: Absolute grounds for refusal: slogans – Slogans: distinctiveness within Article 7(1)(b) CTMR.

The action had been directed against a decision of the 4 th Board of 25.5.2005 in R0183/2004-4 relating to CTM application 2851681, Fliegen zum Taxipreis (lit. flying for the fare of a taxi). It had been applied for in Classes 36 and 39, in the latter mainly for services relating to travelling. The application had been rejected for all services in Class 39 on the grounds that the slogan is no more than a laudatory commercial message conveying the offer of cheap flights. Since the plaintiff withdrew the appeal, that decision stands.

 

House of Donuts : T-33/04 and T-334/04 - Judgment of 18 April 2007 (action dismissed; Office practice confirmed).

Keywords: Opposition: likelihood of confusion (LOC).

The action had been directed against two decisions of the 4 th Board of 12.5.2004 in R1034/2001-4 and R1036/2001-4 relating to CTM applications 474486 and 938670 (shown below.)

CTM application

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CTM application

 

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The goods and services in respect of which registration of the two marks had been sought fall within Classes 30, 32 and 42, namely: doughnuts, muffins, croissants, pastries, bread; baked confectionery products; and beverages included in Class 30; mineral and aerated waters; non-alcoholic drinks; fruit drinks and fruit juices, and restaurant, cafeteria and catering services. On the basis of Article 8(1)(b) CTMR, notices of opposition had been lodged, based on a group of earlier Spanish marks registered for the same classes of goods and services as those covered by the Community trade marks applied for.

Earlier rights

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The 4 th Board of Appeal had allowed the oppositions on the ground, in each case, that there was a likelihood of confusion, because of the overall similarity of the conflicting marks and the distinctiveness of the earlier marks. The 4 th Chamber of the CFI (Legal, Wisniewska-Bialecka, Moavero Milanesi) confirmed these findings, relying on standard criteria and standard case-law.

 

Lombard Direct/Lombard Risk : T-439/05 – Case removed from the register upon settlement out of court; Order of 12 March 2007 .

Keywords: Opposition: comparison of services.

The action had been directed against a decision of the 4 th Board which had dismissed an appeal by The Royal Bank of Scotland Group from a decision of an opposition division which had allowed, with one exception in Class 42, an opposition based, inter alia, on CTM “Lombard Risk” in Classes 9, 36 and 41 against CTM application “Lombard Direct” in Classes 35, 36 and 42. As regards comparison of services, the Board had held, inter alia, that “provision of training in systems integration” and “provision of training relating to technology used in financial markets” are similar to “hire, rental and lease of office machinery and apparatus”.

 

Terranus/Terra : T-322/05 – Judgment of 22 March 2007 (only in DE, FR; action dismissed, Office practice confirmed).

Keywords: Opposition: likelihood of confusion (LOC) – LOC: territorial aspects: application, by analogy, of Article 7(2) CTMR in relation to relative grounds for refusal.

The action had been directed against a decision of the 1st Board of 10.6.2005 in R1145/2004-1 relating to CTM application Terranus (word), applied for a range of services in Class 36. It had been opposed on the basis of an earlier Spanish right and a CTM in figurative mark “terra”, also in Class 36.

CTM application

 

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The Board rejected the CTM application mainly on the grounds that, given the identity of the services, there is a substantial risk of confusion on the German market. The 5 th Chamber of the CFI (Vilaras, Martin s Ribeiro, Jürimäe) confirmed that Article 7(2) CTMR is applicable, by analogy, in relation to relative grounds for refusal.

 

PAM PLUVIAL : T-364/05 – Judgment of 22 March 2007 (only in FR; action dismissed, Office practice confirmed).

Keywords: Opposition proceedings: request of proof of use - Opposition: likelihood of confusion (LOC).

The action had been directed against a decision of the 4 th Board of 15.4.2005 in R0414/2004-4 relating to CTM application “PAM PLUVIAL”, applied for a range of products in Classes 6 and 17. It had been opposed on the basis of (1) Spanish figurative trade mark PAM PAM in Class 19, (2) Spanish trade mark PAM in Class 19, and the French part of international registration PAM PAM (figurative, same as (1)) in Classes 1 and 19.

CTM application

 

 

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(Attention: the lines are indications of colours black and green; they do not form part of the mark)

The challenged CTM applicant and plaintiff in the present action had requested proof of use for the first time before the Board. The Board rejected that request on the grounds that such a request must be presented before the Opposition Division. It had further confirmed rejection of the CTM application on the grounds that the products at issue are similar (construction materials), and that the dominant word part within the CTM application and the invoked earlier marks is identical. The 5 th Chamber of the CFI (Vilaras, Dehousse, Sváby) confirmed that finding.

 

C-2: CFI: Developments in pending cases

Unicredit Wealth Management : T-337/06 - Office response filed (IT).

Keywords: Opposition: likelihood of confusion (LOC) – LOC, assessment of: family of marks.

The action is directed against a decision of the 2 nd Board of 25.9.2006 in R0456/2005-2 and R0502/2005-2, relating to CTM application 2330660, word “Unicredit Wealth Management”, applied for a range of financial services in Class 36. It had been opposed on the basis of the three earlier rights Unifonds, Unirak and UniZins, all in Class 36 (set out below in T-398/06). The Opposition Division had allowed the opposition, based on all the earlier marks and on the consideration that they form a family. The Board had confirmed the Opposition Division.

 

Unicredit/Unifonds : T-398/06 - Office response filed (IT).

Keywords: Opposition: likelihood of confusion (LOC) – LOC, assessment of: family of marks.

The action is directed against a decision of the 2 nd Board of 6.10.2006 in R0657/2005-2 ,relating to CTM application 2055069, applied for a range of financial services in Class 36. It had been opposed on the basis of the three earlier rights set out below, all registered in Class 36. The Opposition Division had allowed the opposition, based on the earlier mark UNIFONDS, and on the consideration that the mark forms part of a family. The Board had confirmed the Opposition Division.

CTM application

 

 

 

 

Boomerang TV : T-420/03 - Office filed answers to questions of the court.

Keywords: Opposition: formalities – Opposition proceedings: language requirements (translations) – Opposition: likelihood of confusion (LOC).

The action is directed against a decision of the 2 nd Board of 1.10.2003 in R0088/2003-2 by which the Board had rejected an opposition lodged against CTM application 1160050 (shown below). It had been applied for a range of services in Classes 38 and 41. The CTM application had been opposed on the basis of more than 20 earlier rights the representations of which are set out below. They are registered or applied for, respectively, in various Classes, amongst which Classes 38 and 41. In relation to the earlier figurative marks it is claimed that they are well-known within Article 6 bis PC, and as regards the Spanish market that they enjoy reputation within Article 8(5) CTMR.

CTM application

 

 

 

 


 

 

Earlier rights


 

The opponent had not filed translations into the language of the proceedings of all material attached to the opposition form, in particular of several registration certificates and/or lists of goods and services of the respective invoked earlier right. Some material had been incomplete as regards the necessary copies of the originals. The Opposition Division had rejected the opposition in its entirety, partially based on formal grounds, partially on substantive considerations, namely lack of LOC. Along with its appeal to the Board the opponent filed new material (translations) relating to the formal deficiencies and to the commercial standing of the opponent in the Spanish market place. The Board confirmed the decision of the Opposition Division in full.

 

Pallet-I or Ikea-I : T-387/06 - Office response filed.

Keywords: Absolute grounds for refusal: distinctiveness – Distinctiveness: representation of the product or part of it.

The action is directed against a decision of the 1 st Board of 26.9. 006 in R0353/2006-1 relating to CTM application 4073763, a figurative sign (set out below). It had been applied for a range of goods and services in Classes 6, 7, 16, 20, 35, 39 and 42 (also set out below).

 

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; material of metal for railway tracks; non-electric cables and wires; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal, not included in other classes; ores; stretchers for iron bands (tension links); cross beams of metal; braces of metal for handling loads; containers of metal (storage, transportation); loading pallets of metal; loading carriers and loading pallets of metal for packaging and transportation purposes; loading gauge rods of metal; bins of metal; metal tension bands for handling loads; metal transport pallets.

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; packaging machines; carriers for machine tools; apparatus for loading and unloading goods.

Class 16: Paper, cardboard and goods made from these materials not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; packaging paper; bottle packaging of cardboard or plastics; sealing material for stationery; storage boxes for stationery; covers (stationery); paper; plastic film for packaging; extensible plastic film for packing on pallets; shrink film of plastic for packaging and transportation purposes.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics; stretchers for iron bands (tension links) not of metal; braces not of metal for handling loads; packaging containers (packing) of plastic; packing of wood; containers not of metal for storage; closures for containers not of metal; containers not of metal (storage, transportations); goods pallets not of metal; loading pallets and loading carriers not of metal for packaging and transportation purposes; loading gauge rods not of metal for loading pallets; bins not of metal; transport pallets not of metal.

Class 35: Professional business consultancy regarding packing, transport and storage economy; professional business consultancy regarding design, construction and use of load carriers.

Class 39: Transport; packing, packaging and storage of articles and goods; porterage; freight forwarding; information regarding packaging, storage and transportation; advisory services regarding loading and packaging systems; professional consultation, non-business, regarding packing, transport and storage economy; unloading of goods; storage of goods; transport brokerage; transporting furniture; packaging of articles and goods; shipping of goods; rental of storage containers; rental of loading pallets, loading carriers and handling equipment for loading; delivery of goods; information and advice regarding logistics.

Class 42: Legal services; scientific, industrial and technical research; industrial analyses; computer programming; packaging and packing design; industrial design; research and development services regarding new products; copyright management; construction drafting; professional consultancy, non business, regarding design, construction and use of loading carriers; material testing; technical project studies; industrial and technical research; scientific and technological services and research and design related thereto; licensing of logistic services; patent exploitation; licensing of intellectual property.

The examiner had refused the application in its entirety pursuant to Article 7(1)(b) CTMR, on the grounds that the sign applied for was non-distinctive for the goods and services concerned. The examiner held that, in the absence of any other distinguishing characteristic, the average consumer would not perceive the sign as an indication of origin but rather as a mere representation of the goods themselves. Although pallets, like all types of goods, may very well be designed in different ways, neither their shape, nor the perforation applied to their surface is something that might be perceived or understood as a trade mark. The Board concurred with the decision of the examiner that the sign applied for was not eligible for registration under Article 7 (1) (b) CTMR and dismissed the appeal in its entirety.

 

Pallet-II or Ikea-II : T-388/06 - Office response filed.

The factual situation is the same as in Ikea-I (above) except for the representation of the sign applied for. The challenged Board decision is R0354/2006-1 of 26.9.2006.

 

 

Pallet-III or Ikea-III : T-389/06 - Office response filed.

The factual situation is the same as in Ikea-I (above) except for the representation of the sign applied for. The challenged Board decision is R0355/2006-1 of 26.9.2006.

 

Pallet-IV or Ikea-IV : T-390/06 - Office response filed.

The factual situation is the same as in Ikea-I (above) except for the representation of the sign applied for. The challenged Board decision is R0356/2006-1 of 26.9.2006.

 

Giropay : T-399/06 - Office response filed (DE).

Keywords: Absolute grounds for refusal: descriptiveness, Article 7(1)(c) CTMR.

The action is directed against a decision of the 4 th Board of 26.10.2006 in R0308/2005-4 relating to CTM application 2843514, word “Giropay”, applied for a range of products and services in Classes 9 and 36, mainly data processing apparatus for banks and financial services. It had been rejected on the grounds that it would merely describe the purpose of the goods and services applied for, Article 7(1)(c); (2) CTMR. Giroform, CFI of 31.1.2001, T-331/99, ECR 2001, II-433 referred.

 

Bateaux Mouches : T-365/06 - Office response filed.

Keywords: Absolute grounds for refusal: distinctiveness, Article 7(1)(b) CTMR - Absolute grounds for refusal: expressions which have become generic in the trade, Article 7(1)(d) CTMR.

The action is directed against a decision of the 1 st Board of 7.9. 006 in R1172/2005-1, a cancellation case, relating to CTM 1336122. It had been registered for a range of services in Classes 39, 41 and 42, amongst which transportation services by tourist boats and by leisure boats, and restaurant services on the said type of vessel. Notwithstanding that the CTM proprietor, SA Compagnie des Bateaux Mouches (Paris), had stated that it alone had been using the challenged expression since 1950, the Board had declared invalid the CTM at issue on the grounds that it had become generic in the course of trade prior to the date of application.

 

General Optica-I : T-318/06 - Office response filed.

Keywords: Relative grounds for invalidation: Article 52(1)(c) CTMR (trade name) - Relative grounds for refusal or for invalidation: Article 8(4) CTMR.

The action is directed against a decision of the 1 st Board of 8.8.2006 In R0947/2005-1 relating to cancellation case No. 827.C brought against CTM 57592 (as shown below). The challenged CTM is registered for opticians´ services in Class 42. The invoked business identifier is a Portuguese registered trade name, allegedly used in a shop in a Portuguese city in relation to import and retail sale of, inter alia, optical apparatus. The plaintiff and applicant for cancellation had produced, inter alia , a national judgment against use of the company name General Optica. That judgment, however, had not been final.

CTM

 

Invoked business identifier (trade name)

The request for invalidation had been rejected on the grounds that the requirements for prove of existence and use in the course of trade of the invoked business identifier had not been complied with. The Board had concluded that a request based on Articles 52(1)(c) and 8(4) CTMR can only be considered as well founded if the following conditions are met: (1) the rights to the sign were acquired prior to the date of application for registration of the Community trade mark (or the date of priority claimed); (2) the sign is used in the course of trade; (3) the use of the sign in the course of trade is of more than mere local significance, and (4) the sign confers upon its proprietor the right to prohibit the use of a subsequent trade mark pursuant to Community legislation or the law of the Member State governing that sign. According to the Board, the reference to the law of the Member States in Article 8 (4) CTMR is confined in subsection (a) to verification of the time at which the right was acquired and in subsection (b) to the legal consequence of that right.

 

General Optica-II : T-319/06 - Office response filed.

Keywords: Relative grounds for invalidation: Article 52(1)(c) CTMR (trade name) - Relative grounds for refusal or for invalidation: Article 8(4) CTMR.

The action is directed against a decision of the 1 st Board of 8.8.2006 in R0944/2005-1 relating to cancellation proceedings No. 828.C which had been directed against CTM 2436798 (as shown below).

As for the basis of the challenge and the content of the Board decision, the case is identical with T-318/06 (above).

 

General Optica-III : T-320/06 - Office response filed. The factual basis of this case is identical with T-318/06 above, except for the differences as regards the mark applied for as a CTM (shown below).

The action is directed against the respective decision of the 1 st Board of 8.8.2006 in R0946/2005-1 relating to cancellation proceedings No. 829.C and to CTM 2436723.

 

General Optica-IV : T-321/06 - Office response filed. The factual basis of this case is identical with T-318/06 above, except for the differences as regards the mark applied for as a CTM (shown below).

The action is directed against the respective decision of the 1 st Board of 8.8.2006 in R0945/2005-1 relating to cancellation proceedings No. 830.C and to CTM 573774.



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

Examination proceedings – absolute grounds for refusal – distinctiveness – other CTM registration - registration in third country - principle of legality

Decision of the First Board of Appeal of 19 March 2007 in Case R 1658/2006-1 (English)

R 1658/2006-1
! – en – In this case, the mark consisted merely of an ordinary exclamation mark with no additional feature or graphic elements that could be regarded as fanciful or arbitrary. The goods and services in question (Classes 9, 41 and 42) were aimed at the public at large. The Board held that the mere fact of using that exclamation mark on the package of the product (e.g. a desktop computer) does not render the sign distinctive, stating that punctuation marks are very common and widely used, and that wishes and promotional formulas often contain exclamation marks. The Board held that consumers will just perceive the sign as a plain exclamation mark and nothing else. The fact that the trade mark has already been recognised in the USA does not change the result, as, first, according to settled case-law, the CTM system is autonomous and, secondly, the distinctiveness of a sign is to be assessed purely by reference to the requirements of the CTM Regulation. As regards the other marks consisting of exclamation marks accepted by the Office, it must be noted that the Board must in each case consider the merits of a decision under appeal and cannot compare that decision with all the other decisions taken in relation to other applications. The appeal was accordingly dismissed.

 

Inter-partes – Article 8(4)

Opposition proceedings - relative grounds for refusal - sign used in the course of trade – merger - company name - used in the course of trade

R 0163/2006-4 DEKA / DETA – en – the opposition was based on a German trade name. Two years before the Opposition Division (OD) decision, the opponent merged into a new company, with a different trade name. No use was shown for the time after the merger. The Board held that, with the extinction of the original company name, the rights in that company name also lapsed, and the opposition had become ill-founded. It was not enough that the earlier right existed when the contested CTM application was filed, but the rights must continue to exist until the date of the decision on the opposition or appeal. A younger CTM application cannot be rejected on account of an earlier right that at some earlier point in time existed, but is no longer valid or in force when the decision is taken. There is no difference in this regard between rights under Article 8(4) CTMR and registered marks that have not been renewed or have been invalidated prior to the decision to be taken. This follows also from Article 8 (2) (b) CTMR (it is not enough to have an application, it must also mature to registration, if the application is, however, refused, the opposition becomes ill-founded) and Articles 92 and 96 (the counterclaim invalidates the attacking trade mark with the effect that there is no longer a basis for the claim for infringement), and has been confirmed by the Court of First Instance (Judgment of 13 September 2006, Case T-191/04, ‘Metro/Metro', paragraphs 32 and 41, expressly dismissing the theory that the date of filing of the opposition is controlling). The appeal was dismissed.

 

Procedural issues

Examination proceedings – communication – Nice classification - Decision of the President - correspondence not received – internet – time limit – failure to provide evidence – notification – burden of proof

Decision of the Second Board of Appeal of 26 March 2007 in Case R 130/2007-2 (English)

R 0130/2007-2 THE JOHN RITTER FOUNDATION FOR AORTIC HEALTH – en – i n the present case, the Office transmitted a notice of the requirement to amend, within two months of receipt of such notice, the classification of the application's services. That notice was recorded on the Office's files as having been sent by ‘e-comm.' (i.e. by MYPAGE). It was also given a mail identification number by the Office (46295515). The applicant claimed that it never received the communication. It further asserted that it had ‘difficulty with the service' provided via MYPAGE and ‘subsequently cancelled that subscription'. Rule 82 CTMIR enables the OHIM to communicate with parties by electronic means and sub-paragraph (2) thereof provides that the President of the Office is to determine the requirements, equipment, technical details and methods of such communications. The determination by the President of the details of communications notified by technical means is further underscored by Rule 65 CTMIR. By Decision No EX-04-6 of the President of the Office of 14 December 2004 concerning notification by technical means, the Office was given the option to communicate with consenting addressees by MYPAGE, an electronic direct access through the Internet, to the subscriber's mail box (‘MyMAILBOX'). Placing a communication in MyMAILBOX, is by analogy to Rule 64 CTMIR, equivalent to notification, regardless of whether it is subsequently viewed or not by the addressee (see fifth recital and Article 2 of Decision no EX-04-6). In such circumstances, actual notification is deemed to have occurred on the fifth day following that on which the document was placed on MyMAILBOX (Article 2(2) of the aforementioned Decision). From the documents on file, there is nothing to suggest that on the relevant day, or during the five days following that date, the subscription to MYPAGE had been cancelled or malfunctioned. More particularly, the applicant had not adduced any evidence, such as copies of the log of e-mails sent and received relating to the days concerned (see, Joined Cases T-380/02 and T-128/03, at paragraph 84). In view of the uncertainties surrounding the applicant's allegations and their unsubstantiated character, the Board could only conclude that the communication in question was validly notified five days after it was placed on the applicant's MyMAILBOX. It follows that the Office was entitled to reject the application in accordance with Article 28 CTMR and Rule 9(4) CTMIR for failure to comply with the deadline specified therein. The case is to be remitted to the examiner for examination of the restitutio in integrum request.

Appeal proceedings - measures to comply with judgment - fixing of costs – reasons of equity - application refused in other proceedings

Decision of the Fourth Board of Appeal of 28 March 2007 in Case R 1007/2002-4 (English)

R 1007/2002-4 LYCO-A / LYOC – en – further to the judgment of the CFI (of 16 November 2006 in Case T-32/04 Lichtwer Pharma AG v OHIM (‘Lyco-A') [2006] ECR publication pending), the Board decided that each party should bear its own costs as the contested CTM application was rejected in another opposition proceedings.


E-Business at OHIM

New feature available in My Page – E-mail notification for new search reports.

Subscribers to My Page (the personalized OHIM portal) are sent all search reports (national and community) by the Office in electronic form to their My Page account. Such search reports are archived in the Search Reports Online section for 6 months and then are removed automatically.

On several occasions, My Page users have indicated to the OHIM that there was no information mechanism to alert them that new search reports had been posted in My Page, and that such a feature will be very useful for them.

This feature is now available for both new and current My Page users. Following the schema used for electronic communication, users can choose to receive an e-mail sent automatically to their chosen e-mail address, informing them about new search reports:

For new My Page users, this feature can be set up when subscribing: current My Page users can set it up in their Search Reports Online Preferences.

Further information can be obtained from information@oami.europa.eu

 

The OHIM E-Business Roundup (2007)
Statistical summary

  • The use of the CTM e-filing web form is maintained at around 75%.
  • The use of RCD e-filing has increased to around 35%
  • More than 10% of oppositions against CTM applications are received electronically.
  • The number of MYPAGE users has increased to over 2000, accounting for some 78% of e-communication users.


State of play of future projects:

Service

Status

B2B CTM e-filing
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. CPA Software Solutions (Inprotech) has completed the tests

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

The development is ongoing

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

The OHIM has completed the formulation of requirements.

New version of electronic filing of RCD applications
The current RCD e-filing service will be significantly improved with a view to solving, inter alia, the problem of large attachments. 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 formulation of requirements.

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

The OHIM has completed the formulation of requirements.

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 of 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 tools when 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 formulation of requirements.

 

 

More News

The OHIM Annual Prize
Each year, the Office for Harmonization in the Internal Market awards a prize to post-graduate level students studying in academic centres throughout the European Union for outstanding work in the fields of the Community trade mark and the Community design. The top six entries receive a prize of €2,500, with a five-month traineeship at the OHIM offered to the top two winners.

This year's award ceremony was held in Alicante's emblematic Santa Barbara castle on March 26 th 2007, forming part of the celebrations being held to commemorate the 50 th anniversary of the signing of the Treaty of Rome.

This years top two prizes went to Mr. Balaña Vicente from the University of Barcelona in Spain and Ms. Poler from the University of Leiden in the Netherlands, both of whom will spend five months work experience at the OHIM's headquarters in Alicante as well as their monetary prize.

The four runners up were Ms. Gerdau De Borja, University of Cambridge (UK), Ms. Jaskov, University of Copenhagen (DK), Mr. Schäffner, University of Saarlandes (DE) and Mr. Smith, University of Glamorgan (UK). They each receive a prize of €2,500 for their respective works.

Specific selection criteria establishing the conditions and requirements for participation in the Award programme have been laid down in the award Regulation, published on the Office's website at http://oami.europa.eu/en/office/award/default.htm .

 

OHIM Fee Reductions
The Council of the EU has called for an immediate reduction of the fees charged by the OHIM for the application, registration and renewal of Community trade marks. For further details see:

http://www.eu2007.de/en/News/Press_Releases/May/0521BMJ.html

Monthly Statistical Highlights April 2007

Monthly Statistical Highlights* - April 2007

 

Community trade mark applications received

6,876

Community trade mark applications published

7,189

Community trade marks registered (certificates issued)

8,235

Community trade mark renewal applications

1,052

 

 

Registered Community designs received

6,404

Registered Community designs published

4,286

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