EUROPEAN PERSPECTIVES

Alicante Abstracts

This edition of Make Your Mark concentrates on the continuing development of OHIM practice before the ECJ and at the CTM Appeal Board and Opposition Division levels.

Four more appeals from OHIM have been heard recently by the ECJ (Court of First Instance). Three concerned the registrability of trade marks, the fourth related to OHIM’s language regime.

In the first and most interesting case (Bank für Arbeit und Wirtschaft AG v OHIM), the Court was faced by the rejection of the trade mark Easybank by OHIM’s Third Board of Appeal for "on-line banking services, especially electronic banking services". The Appeal Board had rejected the mark, under Articles 7(1)(b) and (c) of Regulation No. 40/94, on the basis that it exclusively and immediately indicated that the services claimed were easily accessible electronic banking services.

The ECJ overturned this decision and allowed the application to proceed. In the Court’s view,

• The suggestion of ease of access suggested by the mark applied only to the banking establishment as such. It did not make any reference to the details of a specific service or other details of the conduct of banking transactions. The mark did not give information as to how, once access had been obtained, the on-line financial transactions would be handled or the likely result of such on-line transactions for the potential customer.

• Despite the deductions made by the appeal Board as to the meaning of Easybank, the link between the term and the services claimed was too vague and indeterminate to confer a descriptive character on that term in relation to those services.

• It followed that the mark Easybank was not of an exclusively descriptive character and did not fall foul of Article 7(1)(c).

• Under Article 7(1)(b), the Examiner (and Appeal Board) were required to decide whether there appears to be no possibility that the mark in question may be capable of distinguishing, in the eyes of the public to which it is addressed, the products of the trade mark applicant from those of a different origin. In this case, the Board of Appeal did not carry out that examination. The rejection under Article 7(1)(b) was therefore waived.

 

In the second reported case (Deutsche Krankenversicherung AG v OHIM), the trade mark was EuroHealth and the services claimed were insurance and financial affairs in Class 36. The application had been rejected by the First Board of Appeal under Articles 7(1)(b) and (c). The ECJ agreed with the Appeal Board’s decision in relation to insurance services, but disagreed as far as the application claimed financial affairs. According to the Court,

• The average, reasonably well informed and reasonably observant and circumspect English speaking consumer of insurance services would establish immediately and without further reflection a definite and direct association between EuroHealth and health insurance services. Since insurance services encompassed health insurance services, the application would be rejected under Article 7(1)(c) in relation to such services.

• It was not apparent that the relevant public would make the same definite and direct association between EuroHealth and financial services. The link between the mark and financial services was, at the very most, indirect. It followed that the application should not be refused under Article 7(1)(c) for these (financial) services.

• Articles 7(1)(b) and 7(1)(c) have their own sphere of application. In the absence of any independent analysis whatever relating to the application of Article 7(1)(b) in the contested decision, the decision should be annulled in so far as it relates to the Article 7(1)(b) rejection of the mark for financial services.

 

In the third ECJ decision (Telefon & Buch Verlags GmbH v OHIM) dealing with the registrability of a trade mark, a decision rejecting Universaltelefonbuch and Universal Kommunikationsverzeichnis for certain goods and services in Classes 9, 16, 41 and 42 was confirmed by the Court. These German words mean respectively Universal telephone directory and Universal communications directory.

Turning to the ECJ appeal brought in relation to OHIM’s language regime (Christina Kiks v OHIM), the facts were these. A Dutch lawyer, offended by the omission of the Dutch language from the (five) working languages of OHIM (namely, English, French, German, Italian and Spanish) had filed a CTM application for the trade mark Kik in Class 42 indicating Dutch as both the first and second language. The Office had rejected the application because, under the Regulation (Article 115), a CTM application must indicate one of the five working languages as the second language. The point of this rule is to ensure that oppositions as well as revocation and invalidity proceedings before OHIM are conducted in one of these five languages unless both parties to those proceedings agree otherwise. An appeal against this decision was rejected by the OHIM Appeal Board. With the backing of the Greek government, Ms Kiks appealed further to the ECJ. The Court rejected the appeal in the following terms,

• Article 115 did not infringe the principle of non-discrimination between EU citizens.

• The Council must be considered to have made an appropriate and proportional choice (of language), even if the eleven official languages of the Community (the OHIM working languages plus Danish, Dutch, Finnish, Greek, Portuguese and Swedish) were treated differently. By limiting the choice of working languages to those which are most widely known in the EU, and thus avoiding the possibility of third party contentious proceedings being conducted in a language that was particularly remote, in linguistic terms, from the party attacking the CTM application or registration, the Council remained within the limits of what was necessary for achieving the aim in view (namely, a compromise that would allow OHIM to operate efficiently).

 

Comment

The Court’s decision on the trade mark Easybank is surprising and suggests that the level of distinctiveness required for registrability of a mark at OHIM may be lower than would have been surmised from earlier ECJ decisions. See, for example, their rejection of Companyline and Options, both for Class 36 services. The decision also gives hope to those who have previously tried and failed to register CTM applications for marks that consist of a combination of two English words. If either or both of the words in the mark have a variety of ordinary dictionary meanings, it can be argued that the total effect of the mark is vague and indeterminate. Previously such an argument would, almost certainly, have failed. With the support of the Easybank decision, some CTM examiners may now be persuaded.

OHIM must be breathing a huge sigh of relief that Ms Kik’s appeal was rejected. A language regime in which any one of the eleven official EU languages could be used as both a first and second language and therefore in opposition, revocation and invalidity proceedings would have reduced the Office to chaos. It would also have added significantly to the costs of the majority of CTM proprietors who would prefer to conduct contentious issues in English unless, in the case of those whose first language is not English, they can agree with the other party to the use of their own language in the proceedings.

 

CTM OFFICE PRACTICE

Re-telling retailing in the EU

The bringing together, to the amusement of others, of a variety of words, forcing readers to inconveniently try and re-assemble those words into an otherwise well-known phrase or saying…. shades of the Nice Classification definition of "retail services", which the UK Office still insists on following.

Earlier this year, the Community Trade Mark Office (OHIM) announced that it too would begin accepting marks for registration in respect of "retail services". These will be classified in Class 35. OHIM have begun the process of clearing the backlog of applications with objections to such services outstanding.

Happily, OHIM do not favour the Nice definition (although they will accept it) and consider that the term "retail services" is perfectly clear enough as it stands. Indeed, they do not even regard it as necessary for applicants to state what area of trade their retail business relates to, though they acknowledge that applicants may wish to volunteer such information in the interests of heading off possible oppositions.

So far as conflicts are concerned, OHIM are taking the view that there will generally be little risk of confusion arising between a mark for particular goods and another mark for the retailing of those goods, except in special circumstances, such as when the two marks are virtually identical or one is very well known. In line with this policy, OHIM will not be carrying out any cross searching between class 35 and the goods classes.

OHIM’s decision to accept marks for "retail services" shows welcome initiative. It has clearly not been an easy decision for OHIM to reach, not least because of the constraints on them from Community legislation and the fact that not all national regimes in the Community are in favour of such registrations. It remains to be seen, of course, what the Courts will make of these new rights. In the meantime, will we perhaps see a boom in applications claiming "retail services" as one of the three classes offered for the basic filing fee?

 

CTM APPEAL BOARDS

Evidence of Acquired Distinctiveness

In four recent decisions, the extent and nature of the evidence required to overcome a non-distinctiveness rejection of English language and 3-D marks was discussed. In the first case, the mark was Men’s Health for printed matter in Class 16 and communications services in Class 38. The mark was rejected under Article 7(1)(c). The applicant brought forward convincing evidence of acquired distinctiveness in Germany and the UK. The Appeal Board maintained the objection because of the absence of proof for the Nordic countries, where a basic knowledge of English was said to be widespread, and Ireland.

In the second case, an application to register Future Electronics for electronic components in Class 9 and related services in Class 35 was rejected under Articles 7(1)(b) and (c). The applicant appealed and filed evidence in the form of statements from independent sources testifying to the association of the mark with the applicant in France, Germany and the UK. The mark was also said to have been used in Ireland. On the basis of this third party testimony, the objections were waived and the application was allowed to proceed.

The third case related to a 3-D mark, namely packaging for ear plugs (CTM747402). The simple shape was rejected as non-distinctive and the applicant appealed. On appeal, they put forward evidence of substantial sales of products sold in the claimed packaging throughout the EU as well as the statistic that they held 51% of the relevant EU market.

The Appeal Board maintained the objection and commented as follows,

• In the case of a 3-D mark, acquired distinctiveness must be shown in the EU as a whole. It was not necessary to prove use in every Member State, but it was necessary to show that a substantial proportion of EU consumers recognised products bearing the mark as emanating from a specific commercial source.

• The product actually sold by the CTM applicant was contained in packaging that bore a number of eye catching elements, including blue and white colouring and word marks. With so much material competing for the consumer’s attention, it was difficult to accept that he would have captured the message that the shape alone indicated the commercial origin of the goods.

 

The final case related to an application to register the shape of a yoghurt pot (CTM882142). Having been rejected by the Examiner under Article 7(1)(b), the applicant appealed and filed evidence of significant sales of yoghurt sold in the pot claimed in Germany and the UK, as well as smaller sales in seven other EU countries. They also filed a UK market research survey which showed that a significant proportion of those questioned associated the yoghurt pot with the applicant.

The Board dismissed the appeal. Given the other eye-catching signs or words on the product when it was sold in the market, it was not easy to demonstrate that consumers recognised the applicant’s goods solely on the basis of the shape claimed. However, the applicant had managed to show that the pot had acquired distinctiveness in Germany and the UK. Unfortunately, that meant that the necessary level of acquired distinctiveness had not been shown elsewhere in the EU.

 

Comment

The above cases illustrate the considerable difficulties faced by a CTM applicant who is trying to register either an inherently non-distinctive English language mark or a relatively simple 3-D shape mark.

In the Men’s Health case, the requirement to prove acquired distinctiveness in the UK, Ireland and other EU countries where the knowledge of English is widespread appears to be discriminatory. Given the increasing knowledge of French, German, Italian and Spanish in the UK, shouldn’t marks that consist of non-distinctive French, German, Italian and Spanish words also be rejected if they have not acquired distinctiveness in the UK? The UK Office reject such marks, see, for example, the UK applications for Tonalite Henne and El Canal de Las Estrallas. Whatever the position, it should be consistently applied in relation to the five major languages of the EU at least. In the writer’s view, what is sauce for the English goose should also be sauce for the French, German, Italian and Spanish gander.

In contrast to the Men’s Health case, the trade mark Future Electronics was allowed to proceed on the basis of evidence in just France, Germany and the UK. However, the evidence was from independent sources in the relevant trade and this carries far more weight with OHIM than virtually any other form of evidence of acquired distinctiveness.

The two appeals involving 3-D marks show that, in the case of simple, inherently non-distinctive shape marks that form just a part of a product’s total get up, it will be necessary to conduct multinational surveys to prove that the shape itself is a trade mark that is recognised by the EU public in order to succeed. This is an extremely onerous requirement and will only be successfully achieved by those who consistently point to the trade mark nature of their product shape on their packaging and in their advertising.

Decisions on Distinctiveness

• The Office continues to reject marks with descriptive meanings in any EU official language, including one of the minority languages such as Portuguese. The latest examples of such rejections at Appeal Board level are Artigiano (Italian for craftsman) in respect of goods in Classes 21 and 25, Optima (Portuguese for excellent) in respect of goods in Class 16 and Nova (Portuguese for new) in respect of goods and services in Classes 9, 16 and 41.

 

In the Optima case, the objection was maintained in the face of a Portuguese registration for the same mark.

• It also appears that combinations of

• the letter e and a suffix which is descriptive in relation to the goods/services claimed, and

• the suffix .com and a prefix which is descriptive in relation to the goods/services claimed,

 

are not likely to be accepted at the Appeal Board level. See, for example, the decisions to reject eCHARGE (Classes 9, 36, 42) and Software.com (computer programs). As usual, however, OHIM examination practice is not entirely consistent in these areas, as can be seen from the registration of E-Travel (Class 39), E-Patent (Classes 38, 42), Eserv (Classes 9, 38), eshop (Classes 9, 35), Bikesonline.com (classes 12, 28) and Webdeveloper.com (Classes 38, 42).

• Other types of mark that are viewed unfavourably by OHIM Appeal Boards are

• Combinations of Multi- or Ultra- (as a prefix) and a non-distinctive suffix. See the recent cases involving Multi-card (Class 9), Multiphase (Class 6) and Ultraplus (Class 21), where the Examiner’s rejections were maintained.

• Combinations of —tec or —tech (as a suffix) and a non-distinctive prefix. See the Appeal Board’s rejection of Sawtec for saws.

• The word Universal, which was rejected for Class 7 goods.

 

Once again, however, there are exceptions to these rules. See, for example, the CTM registrations for Multi-writer, Multi-film, Ultra Electronics, Zinctech, Timbertech and Universal (Class 9). Having said that, the Office does appear to show a reasonable degree of consistency in these areas.

• Two Appeal Board decisions rejecting CTM applications for simple geometric devices have recently been published. The cases involved line drawings of a circle (CTM835272 for goods in Class 22) and a hexagon (CTM550392 for goods in Classes 6, 7 and 27). This is an area where OHIM’s practice varies considerably, as can be seen by the registration of other simple geometric devices such as a diamond shape (CTM838730), a triangle (CTM858886), an arrow (CTM902270) and a star (CTM879510). The key to success in this area may be to file the shape of interest in colour.

 

Comment

In the writer’s view, the rejection of a CTM application on the basis of its non-distinctive meaning in a minority EU language is unjustified. Portugal has 3% of the EU’s total population. If the mark is only non-distinctive in Portuguese, this should be treated as de minimis and the mark should be allowed to proceed. OHIM is fond of making the point that the CTM Regulation is a new system of law that is different from national trade mark laws. In the case of marks in minority languages such as Portuguese, it should therefore apply a different rule from that which the national, for example Portuguese, Trade Mark Office would apply to the examination of the same mark.

If this proves to be politically unacceptable, then, at the very least, the existence of a registration for the same mark in the country of interest (e.g. Optima registered in Portugal), should be decisive in the examination of a CTM application. It is absurd to reject a mark (Optima) when it is only believed by OHIM to be non-distinctive amongst 3% of the EU population and when that very (Portuguese) national Trade Mark Office has already registered the mark.

  

Consistency of OHIM Decisions

The mark applied for was Titan covering utensils and cooling containers in Class 21. The mark was objected to, under Articles 7(1)(c) and (g), given that titan is the German equivalent of titanium. The applicant appealed and pointed to the earlier acceptance of a CTM application for Titan covering the identical goods. The Appeal Board rejected the applicant’s argument that he was being discriminated against. If OHIM had committed an error in accepting the earlier application, this did not mean that the error should be repeated.

 

Auxiliary Request for Consideration

The Examiner had rejected the mark Hyperbaric Tunnel Construction and Diving for goods and services in Classes 9, 16, 37, 41 and 42. The applicant appealed. In the appeal, the applicant argued in favour of registration for their original specification. However, they also put forward an auxiliary request that, if their main arguments failed, the case should also be considered in relation to a much narrower list of goods and services.

The Appeal Board rejected the application in so far as it was originally filed. However, in line with the ECJ’s decision in the Trustedlink case (see Make Your Mark, Spring 2001), the Board agreed to consider the auxiliary request and allowed the application to proceed for the narrower specification.

 

Amendment of a Trade Mark

Under the CTM Regulation, it is extremely difficult to amend the trade mark applied for once the CTM application has been filed. This was confirmed in the case of the trade mark Ranier filed in respect of Class 32 goods. Having filed the application and discovered their mistake, the Belgian firm of attorneys involved attempted to amend the mark to its correct form, Rainier. The Examiner refused to allow the amendment and the applicant appealed on the basis that there had been an error in copying. They also pointed to earlier cases where the OHIM examination division had accepted amendments of marks (Marriot to Marriott and Managment Horizon to Management Horizon).

The Appeal Board rejected the appeal and commented as follows,

• Article 44(2) of the Regulation provided a two limb test in respect of requests to amend a CTM application. In order to succeed

• It must be obvious that a mistake had been made, and

• If the amendment were allowed, it would not substantially change the mark.

 

The Board accepted that, on the evidence filed, the CTM application had been made in error and the mistake was obvious. However, they believed that the differences between Ranier and Rainier were substantial visually, phonetically and conceptually. In view of this finding, they refused the application to amend.

 

Comment

This case is in line with earlier Appeal Board decisions. See, for example, the refusal to allow the amendment of Teleye to Teleeye. What is surprising to learn from the Ranier case, is that amendments of Marriot to Marriott and Managment Horizon to Management Horizon have been allowed by OHIM.

 

Evidence of Use in CTM Oppositions

Under the CTM Opposition system, if the prior national trade mark right relied on by the opponent has been registered for five years or more at the date of publication of the CTM application, then the applicant can request proof of genuine use of the registered mark in relation to the registered goods or services. If no genuine use of the mark is shown by the opponent, then the opposition is rejected.

Under Rule 22(2), the nature of the proof of use required is set out. This rule states that indications of the place, time, extent and nature of use of the opposing mark in relation to the registered goods or services must be provided.

This high level of proof has been rigorously and formalistically applied by the Opposition Divisions. Recent Appeal Board decisions suggest that the Opposition Divisions may soon be forced to operate a more flexible and realistic system.

In the first appeal of interest (Novartis Nutrition AG v Walter Stein), the opponent had opposed a CTM application for Mertina in Classes 3, 29 and 32 on the basis of its earlier International trade mark registration for Meritene in Class 5. The International registration designated Austria, Benelux, Germany, Italy and Spain and had been on the register for more than five years at the date of publication (25th May 1998) of the CTM application. The applicant therefore put the opponent to proof of use of the earlier mark. The opponent filed

• A 1998 Spanish catalogue of products, including Meritene, on sale in that country, together with a 1997 Spanish price list featuring Meritene and undated Spanish labels and advertisements for Meritene.

• Undated Meritene labels and advertisements that had been used or published in Austria, Benelux and Germany.

 

The Opposition Division decided that the Spanish evidence of use contained information on the nature, place and time of use of Meritene in Spain, but not the extent of use. The other, undated materials failed to provide information on the time or extent of use. It followed that the opponent’s evidence of use was inadequate and the opposition was rejected. The opponent appealed.

The Appeal Board decided that the opponent’s Spanish evidence proved genuine use of the mark in that country during the relevant period. The information provided gave a reliable indication of the extent of use of the mark in so far as it showed that the mark was used on the Spanish dietetic foods market for a range of products. (Similar reversals of adverse Opposition Division decisions on proof of use where the evidence before the Appeal Board was, at least to a certain extent, circumstantial are reported in CTM Official Journal 5/2001, Gilde Brauerei AG v Lindeboom Bierbrouwerij B.V. and Official Journal 12/2000, Cosmetica General S.A. v Börlind Gesellschaft für Kosmetische Erzeugnisse mbH).

In the second case (Dr Karl Thomae GmbH v Innovex Plc), the opponent was asked to prove use of its mark Mobec in Germany. It did so to the satisfaction of the applicant who accepted that genuine use had been established. The Opposition Division rejected the evidence as inadequate on the basis that it was in the form of an affidavit executed by an employee of the opponent. It was therefore given minimal weight. The opposition was therefore rejected and the opponent appealed. The Appeal Board overturned the decision on the genuine nature of the opponent’s use of the mark and remitted the case for consideration on the substantive issues. In the Board’s view, if the applicant was satisfied with the evidence, then so should be the Opposition Division. The Appeal Board’s irritation with the original decision can be inferred from their return of the appeal fee to the opponent.

The third appeal (Espe Dental AG v Chameleon Dental Products, Inc), involved a CTM application for Vision for dental materials in Class 5 and an earlier German registration for Visio for identical or very similar goods. The proprietor of the earlier right had filed evidence of use in the form of a declaration signed by the company’s product manager. It contained details of the place, time, nature and extent of use of the mark in Germany, as well as samples of product packaging. The Opposition Division did not accept that genuine use of the mark in Germany had been shown because the only evidence that they gave any significant weight to was the product packaging and that did not contain any information about the time, place or extent of use of the mark.

The evidence produced by the opponent related to use of the marks Visio®-Dispers and Visio®-Molar. The Opposition Division concluded from this that the opponent had actually used trade marks which altered the distinctive character of the registered mark. This reinforced the view that no genuine use of the mark in Germany had been made during the relevant period. As far as the presence of the ® symbol next to the word Visio was concerned, it was not clear that this referred only to the first part of the mark. The public would probably perceive the trade mark as a whole.

In view of these conclusions, the opposition was rejected. The opponent appealed and filed both observations and further evidence which consisted of product catalogues and leaflets, all showing the use of the word Visio followed by another term (e.g. Visio®-Bloc and Visio®-Form). Some of the catalogues and leaflets bore dates within the relevant five year period.

The Board annulled the Opposition Division’s decision on genuine use and remitted the case for further prosecution. They commented as follows on the opponent’s evidence:

• According to German law, a sworn, written statement from a person dealing with information gained from his own experience or observation is, in German opposition proceedings, a common means of showing evidence of genuine use. Such a statement is considered valid if it is accompanied by other evidence, in particular representations showing the nature of the use of the mark.

• The Opponent had therefore relied on the established practice in German opposition proceedings when filing its evidence at OHIM. He had therefore not acted imprudently, bearing in mind that Article 76(1)(f) of the Regulation mentioned that "statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up" are a proper means of giving evidence in OHIM proceedings.

• The Opponent may have reasonably considered, in the absence of any official information or guidelines published by the Office, that declarations made under the conditions of German law would have the same value in CTM opposition proceedings as they did before the German office. Although this conclusion is not necessarily correct, the opponent could in good faith consider that if the evidence submitted would appear to be insufficient, it would be notified thereof and would be given an opportunity to remedy the deficiency. In view of this, the Appeal Board was willing to consider the opponent’s additional evidence as well as their original submissions. On this basis, they concluded that genuine use of the mark had been shown in Germany. In reaching this conclusion they also disagreed with the Opposition Division’s view that the sale of Visio®-Dispers and Visio®Molar did not constitute genuine use of Visio itself. It was common practice to use a house mark together with another indication, in some cases linked by a hyphen. This clearly amounted to genuine use of the house mark. (This case is in line with another appeal against an adverse Opposition Division decision on genuine use in Germany, see Vivil A. Müller GmbH v Twentieth Century Fox Film Corporation).

 

The facts of the Visio/Vision case were reversed in the final case discussed here. In this appeal (Almirall Prodesfarma S.A. v MyoRx Corporation), the opponent owned a registration for the mark Omega-Farmaceutica. However, the evidence of use filed by the opponent only showed genuine use of Omega alone. The Opposition Division and the Appeal Board both agreed that the opponent’s use of the trade mark Omega did not serve to prove genuine use of their registered trade mark Omega-Farmaceutica.

 

Comment

The practice being followed by the OHIM Opposition Divisions on the question of proof of genuine use of a trade mark is inflexible, formalistic and unjustifiably onerous. At present, if an opponent cannot furnish invoices which bear the place of sale, the time of sale, the amount sold and the trade mark associated with the goods/services registered, he faces the real prospect of having his opposition thrown out. The Visio/Vision appeal therefore offers some real hope that a more commercially realistic approach may soon filter down to the Opposition Division level.

It should be perfectly acceptable for an employee of an opponent to file an affidavit (or similar) attesting to the place, time, extent and nature of use of the mark. If such an affidavit is accompanied by catalogues, product leaflets, adverts and/or product packaging illustrating the use of the mark, then this should be enough to satisfy the genuine use requirement.

At the very least it should establish a prima facie case and if the Office requires any more evidence of use they should ask for it.

 

CTM OPPOSITION DIVISIONS

Confusingly Similar Trade Marks

Two recently reported oppositions illustrate that the presence of an identical (or very similar) and distinctive element in two marks does not necessarily lead to a finding of confusion. In the first case (The Citrus Marketing Board of Israel v The Sunrider Corporation), the mark applied for was Sunrise for, amongst other goods, fruit drinks and fruit juices in Class 32. The application was opposed on the basis of Jaffa Sun Rise Label registered in respect of fresh citrus fruits in Class 31. In view of the distinctive nature of the word Jaffa and its significant reputation gained through widespread use in relation to Class 31 goods and also in view of the relatively non-distinctive nature of the word Sunrise in relation to both Class 31 goods and fruit drinks/juices in Class 32, the Opposition Division decided that the marks Sunrise and Jaffa Sunrise were not confusingly similar. It followed that the opposition was dismissed.

In the second case (LTJ Diffusion v Sadas S.A.) the opponent owned prior rights in a stylised signature form of the name Arthur for inter alia boots, shoes and slippers.

The CTM application was for the trade mark Arthur et Felicie in respect of, amongst other goods, footwear. The Opposition Division decided that the two marks were neither identical nor similar. They took the view that the two marks differed visually, phonetically and conceptually. In relation to the visual comparison, the personalising of the earlier mark Arthur as a signature heightened the distinguishing power of the earlier mark and served to avoid any possible confusion. The opposition was therefore rejected.

 

Comment

A decision on likelihood of confusion in an opposition where both marks contain an identical word or words will always depend on a number of factors including the proximity of the two sets of goods/services and any additional matter featuring in one of the marks. We have noted the following cases where an identical feature failed to lead to a finding of confusion between two marks,

• Kowa Company Ltd (Genesis) v Mentor Corporation (Contour Genesis),

• Intersnack Knabbe — Gebäck GmbH (Pom) v SPRL Roels (Bel’ pom label), and

• Tasco SA (Tequila) v Tequila Herradira S.A. (Gold Tequila el Jimador Label).

 

On the other hand, in the following cases likelihood of confusion between the two marks was found :

• Mou Dybfrost A/S (Mou) v Oriental Kitchen Sarl (Kiap Mou)

• Starter Corporation (Starter) v Industrial Starter S.p.A (Industrial Starter and Device)

• Verband der Deutschen Autobahn — Service Stationer e.v (Welcome) v S.A Stock Service (Welcome & W Device)

• Mucos Emulsions GmbH (Biozyme) v Theratase Plc (Biozyme Laboratories & bz device), and

• Hennes & Mauritz AB (Impuls) v Deutsche Behindertenhilfe Aktion Sorgenkind e.v. (Aktion Impuls).

 

Trade Mark Dilution

A recent case (Campbell Soup Company v Campbell Catering Limited) illustrates the difficulty of establishing a case before the Opposition Division based on reputation if independent evidence of such reputation is not provided.

The applicant filed for Campbell Catering Label in respect of various Class 42 services, including catering services. The application was opposed by the famous soup company on the basis of inter alia its registered rights in Campbell’s for foodstuffs in Classes 29 and 30.

The Opposition Division found that the applicant’s Class 42 services were not similar to the opponent’s foodstuffs. When this was added to the common nature of the surname Campbell, there was no likelihood that the applicant’s mark and services would be confused with the opponent’s mark and goods.

In relation to its reputation in the mark, the opponent had filed evidence of over £437 million worth of sales of Campbell’s branded foodstuffs in the UK in five years up to the filing of the opposition. However, this evidence was provided by the opponent, rather than from an independent source, and was not in the form of a sworn statement. Other evidence aimed at proving the opponent’s reputation in the mark was a print-out of their website, a list of their worldwide trade mark portfolio and a copy of the famous Andy Warhol painting of the Campbell’s soup tin.

The Opposition Division rejected the claim that the opponent had a reputation in their mark(s) and, as a result, the opposition insofar as it was based on trade mark dilution (Article 8(5)). The opponent had not produced information on market share, survey evidence or details of advertising expenditure. The evidence of sales, not being independent, was given relative (i.e. limited or no) weight.

 

Comment

In order to succeed in a CTM opposition based on dilution (Article 8(5)), an opponent must establish at least two (and preferably all three) of these criteria. They must establish their reputation in the mark through independent sources. They must point to an earlier EU court case in which their mark’s reputation was accepted. They must show a strong link between their goods/services and the goods/services in the CTM application.

Even though, in the writer’s view, there is clearly a strong link between foodstuffs and catering services, the opponent in the above opposition failed to meet either the independent evidence or the earlier court case criteria and they were therefore doomed to inevitable failure no matter how well known their mark is in fact to virtually every adult (and soup consuming child) in the EU.

 

Unregistered Trade Mark Rights in CTM Oppositions

A recent case (Disney Enterprises Inc v Pogola S.A.) has cast more light on the type of unregistered rights that can (or cannot) be used successfully in CTM Oppositions.

The CTM applicant had filed (on 1 October 1996) for the trade mark Fa Mulan for goods in Classes 16, 21, 24, 25, 28 and 32. The application was opposed by Disney on the basis of their unregistered rights in the film titles Mulan and Fa Mulan in Germany in respect of cinematographic films and film production and related merchandise. The opponent produced numerous articles and news releases concerning the film Mulan that had been published in Canada, France, Italy, UK and especially, the USA prior to 1 October 1996. The only evidence relating to Germany however was an internet website about the film that had been launched on 30 August 1996 and was accessible from Germany.

The Opposition Division rejected the opposition. They accepted that, under German trade mark law, (Paragraph 5(1)), film titles were given protection. However, this protection existed for distinctive film titles such as Mulan or Fa Mulan, either after the film had been displayed in Germany or, if the issue of the film was immediately preceded by a media announcement, from the date of that announcement. However, the mere announcement of a film in press releases was not sufficient to accrue protection for the title. In the present case, the film had been announced in the period up to the end of 1996, but the film was not released in Germany until 1998.

 

Comment

It is surprising that such a high profile trade mark owner as Disney did not protect its trade mark Mulan in the EU prior to the various announcements made about the film.

Having said that, in the writer’s view, Disney should attack Pogola’s CTM, once registered, on the ground of bad faith. The mark Mulan is highly unusual. Pogola’s CTM application was filed just one month after information on the film became available at a widely accessible internet website.

These facts should establish a prima facie case for bad faith and the onus should shift to Pogola. If they cannot provide a satisfactory explanation as to their choice of the trade mark Fa Mulan, their CTM should be cancelled.

In another case brought under Article 8(4) (Momentum Integrated Communications Ltd v McCann Erickson Advertising Ltd), the owner of prior unregistered rights in the trade mark Momentum was able to prevent the registration of the same mark for identical and similar services in Classes 35, 36 and 42. The opponent filed a substantial amount of evidence and was thereby able to show, to the Opposition Division’s satisfaction, that the CTM applicant’s use of Momentum in respect of their claimed services in the UK would amount to an act of passing off. The opposition therefore succeeded.