• EUROPEAN PERSPECTIVES

    Alicante Abstracts

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

     

    EUROPEAN COURT OF JUSTICE

    A second appeal on the level of distinctiveness required for a mark to be registered as a CTM has been heard by the ECJ (Court of First Instance). In the first case, the trade mark Baby Dry was found to be non-distinctive in relation to diapers (nappies).

    In the latest case, the mark applied for was Companyline, filed by PKV Deutsche Krankenversicherung for “insurance and financial affairs” in Class 36. The application was refused by the Examiner and then by the Appeal Board under Articles 7(1)(b) and 7(1)(c) of the Regulation. The applicant appealed to the ECJ.

    The Court dismissed the appeal, maintaining the objection under Article 7(1)(b), namely that the mark was devoid of any distinctive character. (The Court did not feel it necessary to consider Article 7(1)(c)).

    The Court noted that the mark is composed exclusively of two well known English words and that “Coupling them together without any graphic or semantic modification does not imbue them with any additional characteristic such as to render the sign, taken as a whole, capable of distinguishing the applicant’s services from those of other undertakings. The fact that the word Companyline as such does not appear in dictionaries - whether as one word or otherwise - does not in any way alter that finding”.

    The Court then confirmed that in order to fail the tests set out in Article 7 of the Regulation, the ground(s) for objection need only apply in part of the Community.

    Finally, the applicant’s argument that OHIM had misused its powers in this case by applying far more stringent criteria for acceptance of a mark than was its usual practice, was summarily dismissed as unfounded.

    Comment

    In the author’s view, this decision confirms that the average level of distinctiveness required for registration as a CTM will, almost certainly, rise over the next year or so. The number of clearly non-distinctive marks that are accepted at present by OHIM remains at a fairly high level. With ECJ decisions such as Companyline, together with the slow introduction of a more consistent approach, the number of such unjustifiable acceptances is likely to diminish.

    In the Companyline case, one of the applicant’s principal arguments could be paraphrased as “look at some of the marks that appear in the CTM Bulletin every week, our mark is more distinctive than that, why pick on us?” This must be a common reaction amongst CTM practitioners at present. It is likely to become less common, however, as time goes by.

    CTM APPEAL BOARD DECISIONS

    Next, we shall consider Appeal Board decisions listed at the OHIM website, http://oami.europa.eu/en/mark/aspects/default.htm since March 1999. As far as decisions on the distinctiveness of trade marks and the acceptance of certain services is concerned, the cases decided at Appeal Board level are set out on pages ? to ? From these decisions a number of general trends regarding the examination practice of OHIM can be deduced which, in the continued absence of an official CTM practice manual, are important to note. These trends can be summarised as follows,

    • Specific retail services may now be accepted (see Giacomelli Sport & Device). We discuss this decision in more detail below.

    • A word with a descriptive meaning in a minority language will be refused. (Velona, meaning needle in Greek, refused for depilatory products).

    • Single numerals are not accepted as inherently distinctive (7 refused for motor cars). But see CTM798173 where the word Seven is registered for motor cars.

    • Two numerals may not be accepted as inherently distinctive (90 refused for lacquer). However, this decision conflicts with public statements from OHIM officials that such two numeral marks will be accepted, unless the combination has a meaning or significance in relation to the goods or services claimed.

    • Single letters are not viewed as prima facie distinctive. This can be inferred both from public pronouncements from OHIM and the refusal of S-Series for land vehicle transmissions by the Appeal Board.

    However, the refusal of S-Series at the Appeal Board level should be contrasted with the previous acceptance of the marks 7 series, 5 series, 3 series, Z series, M series and F-Series by OHIM examiners for Class 12 goods.

    • Not all geographical names are accepted as distinctive by OHIM, see, for example, the decisions to refuse Frankfurt Motor Show, Ascot and Isle of Skye.

    • To these adverse decisions can be added the recently reported decision by the CTM Cancellation Division to cancel Windsurfing’s CTM registration for Chiemsee on the basis of its primarily geographical meaning, a decision which is under appeal. One can infer from this that OHIM may be slowly raising the standard it sets for the acceptance of geographical names as trade marks. With the UK Office slowly lowering its level for acceptance of such marks (see page ? of this issue of Make Your Mark), it is possible that the two systems may eventually meet in the middle.

    • OHIM is extremely unlikely to accept single colours as registrable trade marks in the absence of substantial use and consumer evidence. The refusal of both a rose colour (Pantone 1565C) for perfumes and a cobalt blue coloured bottle for water confirms the earlier refusals of the colours light green and yellow for chewing gum. The only single colours that have so far been accepted by the Office are CTM31336 for the lilac colour of chocolate packaging, CTM171926 for pink insulating material and CTM212787 for magenta in relation to telecommunications services.

    • Examination practice on 3D marks remains unclear. Whilst there are now a number of Appeal Board decisions refusing such marks, there are others accepting 3D marks both for the goods themselves and their packaging. The criteria for acceptance and refusal at Appeal Board level are not immediately apparent. When this situation is added to the unpredictable nature of the reaction of OHIM’s examiners to such marks, the overall position can best be described as opaque.

    • The Office will usually refuse a combination of either Euro- or Bio- and another word that is descriptive of the goods or services claimed (see EuroHealth refused for insurance services, Eurotel for telephones and telecommunications and Biotransplant for pharmaceutical preparations and medical apparatus).

    • Portmanteau words, usually combining two English words or parts thereof, are often refused despite the whole mark having no obvious meaning in relation to the goods or services claimed, see, for example, Ergostand for furniture, Worldport for computer hardware and software, Clothcraft for textiles and clothing, Powertech for motors and Proeco for synthetic oil.

    • This is one of the few types of mark that are more likely, at present, to be accepted by the UK Office than by OHIM. See, for example International (UK)656566 for Clothcraft in Class 25, UK2025440 for Powertech in Class 12 and UK1402183 for Worldport in Class 9.

    • Appeal Boards are now willing to employ the Internet to reinforce their arguments, particularly that a mark is non-distinctive (see the Klear-Trace decision).

    Turning to Appeal Board decisions of particular interest, we shall consider four in greater detail.

    Giacomelli Sport & Device (R46/1998-2)

    The applicant had claimed the mark Giacomelli Sport & Device in relation to inter alia the following Class 35 services

    “Bringing together, for the benefit of others, of a variety of goods - excluding transport - to enable consumers to view and to buy the products;”

    It was OHIM’s practice to view such services as equivalent to “retail services” and therefore to object to the services claimed under Article 28 of the Regulation, that is that the services could not be classified. The basis for this practice could be found in the Joint Statements, made by the EU Council and Commission, that accompanied the adoption of the CTM Regulation. At statement 2, dealing with Article 1(1), it was confirmed that “The Council and the Commission consider that the activity of retail trading in goods is not as such a service for which a CTM may be registered under this Regulation”.

    Accordingly, the application was refused and the applicant appealed. The Second Appeal Board recognised the importance of this appeal and therefore invited the President of OHIM to comment upon it. The main arguments against the acceptance of “retail services” made by the President were that

    • The term was not sufficiently specific to allow Trade Mark Offices and Courts to decide the precise scope of protection that such a claim would afford,

    • It would be difficult, in an administrative sense, to classify retail services, such classification being

    • necessary to examine a mark on absolute grounds and to decide opposition and cancellation actions, and The Joint Statement mentioned above was opposed to it.

    Having considered the President’s comments, as well as the applicant’s arguments, the Appeal Board decided that, in principle, a retail sales service should be accepted as registrable under the CTM system, provided the service included a reference to the field in which the service is rendered (e.g. retail services in the field of sports goods).

    They gave short shrift to the effect of the Joint Statement, commenting that it did not enjoy any legal status within the corpus of Community law. They also refused to be swayed by the President’s concerns about the proper classification of goods and services. Instead, they analysed the meaning of a “service”, finding that the CTM Regulation did not define the term. They decided that “the concept of a service should be construed widely”. Further, they found that “the activity of retailing is mutually beneficial to the retailer and the consumer. That a retailer is motivated to perform those activities by the desire to make or increase its profits, rather than to offer a service to the public, in no way alters the fact that a service is being provided”.

    Comment

    This is an important decision and should be widely welcomed by trade mark owners, especially retailers. Whether it will be followed generally by OHIM and by EU national trade mark offices and courts remains to be seen. It is submitted, however, that the reasoning of the Second Board of Appeal is impeccable and a perfect riposte to the position traditionally taken by, for example, the English Courts on this question.

    In the writer’s view, the purchasing public are perfectly well aware of the elements that constitute a retail service whether it be provided by a pharmacy, a butcher, a newsagent, a department store or a supermarket. If the public understands this, then OHIM (and UK Registry) practice should reflect this practical reality as should English High Court decisions. A trade mark owner should not have to rely on registrations covering goods or common law rights to maintain his position. He should be free to register the mark for appropriate retail services and then to use this registration to maintain his monopoly in such services.

    3-D Snack Shape (R467/1999-1)

    Bedo Import applied to register the shape of a savoury snack in Classes 29 and 30, the shape being approximately in the form of a flower with six non-uniform petals. The Examiner refused the application on the basis that the mark was “no more than a 3-D representation of how goods in Classes 29 and 30 are often presented” and therefore non-distinctive. The applicant appealed, arguing that none of their competitors use either the shape claimed or similar shapes for savoury snacks.

    Allowing the appeal and remitting the case for further examination, the Appeal Board commented as follows,

    • The Board of Appeal, which has no special knowledge of the market in savoury snacks, beyond that of ordinary consumers, can merely place on record its own belief that the shape...possesses certain features which are sufficiently arbitrary, fanciful and unusual to endow it with the minimum degree of distinctiveness required.

    • The examiner did not refer to any specific product on the market which has the...shape.

    • The shape does not result from the nature of the goods themselves, is not necessary to obtain a technical result and does not give substantial value to the goods.

    Nauta Dutilh Device (R195/1998-1)

    The Dutch law firm Nauta Dutilh applied for a CTM application covering a figurative device in Classes 36 and 42. On the application form they indicated that their legal status was that of “Maatschap”, essentially equivalent, although not in every detail, to a common law “Partnership”. The form also mentioned that the application was made by a partner of Nauta Dutilh.

    The Office informed the applicant that it was not entitled to own a CTM. In the Office’s view, a Maatschap was not a legal entity but a “society”, and therefore did not have the capacity in its own name to sue and be sued. According to the Office, the CTM should have been filed in the names of all the members of the Maatschap.

    After argument between the applicant and the Examiner, the application was refused. The applicant appealed, putting forward a broad range of evidence that a Maatschap could enter into contracts, perform other legal acts and sue and be sued, all in its own name.

    The appeal was allowed. Since a Maatschap, under Dutch law, met the criteria set out under Article 3 of the Regulation for a legal person entitled to own a CTM, the application could proceed in that name rather than in the names of the individual members of the Maatschap.

    Teleye (R219/1998-1)

    The applicant filed a CTM application on 27 May 1998 for Teleye in relation to Class 9 goods. The application form indicated that priority was claimed from a US trade mark application. On 18 June 1998, the applicant lodged a certified copy of the US application at OHIM in support of its claim for priority.

    This US application, however, was for the trade mark Teleeye (rather than Teleye). On realising their mistake, the applicant sought to amend the mark claimed in the CTM application to Teleeye, on the basis that the amendment was minor in nature and resulted from an obvious typographical error made by the US instructing agents. In the alternative, they requested that the CTM application should be given a new filing date of 18 June 1998, the date the US priority document was filed at OHIM.

    The Examiner refused to accept the amendment or to grant a new filing date. The applicant appealed on the grounds put before the Examiner as well as on the basis that, under the Paris Convention, the mark applied for at OHIM should be taken as the mark appearing in the priority application. They also argued that the error should have been brought to their attention by the Office before the end of the six month priority period.

    The appeal was dismissed. According to the Appeal Board, the two marks Teleye and Teleeye were different in visual, phonetic and conceptual terms. The amendment requested would therefore substantially change the mark applied for and be contrary to Article 44 of the Regulation. Further, it was not obvious that the mistake had been made in the CTM application, it could equally have been made in the US application.

    Finally, the Appeal Board noted that the onus is on the applicant to file an accurate CTM application, the Office could not be blamed for failing to point out the discrepancy before the end of the priority period.

    It is understood that this decision has been appealed to the ECJ.

    CTM OPPOSITION DECISIONS

    Large numbers of CTM opposition decisions continue to be posted at OHIM’s website. The decisions made on the similarity of trade marks from September to December 1999 are listed at pages ? to ? In the writer’s view, some of the decisions are surprising. We also report and comment on a selection of the more interesting cases below.

    Similarity of Pharmaceutical Trade Marks

    The following two cases illustrate the development of CTM practice in this area. In the first case, Eli Lilly filed a CTM application for the mark Ontak covering pharmaceutical preparations for the treatment of cancer in Class 5. The application was opposed by Boehringer Mannheim, on the basis of a German trade mark registration for Ostac, which covered pharmaceutical preparations at large.

    The Opposition Division rejected the opposition deciding that, although the goods were identical, the two marks were not confusingly similar. In a surprising rationale that OHIM appears to be following as a matter of general practice (see the Nulmig/Naramig case below), the Opposition Division stated that

    “Preparations for the treatment of cancer are likely to be bought and used with considerable care. Both the medical experts responsible for dispensing such medicines and the patients who consume them will be informed users. Given the importance which attaches to this field of medicine it is unlikely that such users will confuse Ostac with Ontak. Peoples’ perceptions of goods for use in the treatment of cancer are likely to be extremely acute. It is difficult to think of any area of activity where imperfect recollection is less likely to arise”.

    In the second case, the Spanish pharmaceutical company, Almirall-Prodesfarma, applied for the mark Nulmig in relation to Class 5 goods, including pharmaceutical preparations. Glaxo opposed the CTM application on the basis of its prior EU rights in the trade mark Naramig, also covering pharmaceutical preparations.

    Once again, the opposition was rejected. In finding that the marks Nulmig and Naramig were not similar, the Opposition Division commented,

    “The average consumers of pharmaceutical products are usually very careful when purchasing their products. In general they are particularly attentive to small differences between marks and therefore the acceptable degree of similarity is relatively high without any risk of confusion on the part of relevant consumers”.

    Comment

    The practice being developed by the CTM Opposition Divisions in the pharmaceutical area is unfortunate. The reasoning appears to be that, since extra care is always taken in handling, dispensing and taking medicines, trade marks can be closer to each other in Class 5, than in other classes, before they will be viewed as confusing. The writer disagrees profoundly with this reasoning. Many doctors still hand write prescriptions badly. In hospitals, drugs can be requested verbally and in pressure situations. Many patients will be elderly or infirm. Most patients take the medicines prescribed to them by their doctors without raising any concerns that they might have.

    Drugs are poisons, not sweets. Confusion between products may therefore be life threatening, not merely inconvenient. Given the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medical products from each other. The most important of these indicators is a word mark that is completely different to the trade mark of any other medicine.

    In the Ontak/Ostac case, the Opposition Division appears to have been highly influenced by the care taken by all concerned in the field of cancer treatment. But what if Ostac is not used in the cancer field, but in the field of heart failure? Further, what if both drugs are administered by injection and a hospital physician requests Ostac in an emergency situation? The closer the two trade marks, the higher the chances of a catastrophic error.

    It is submitted that, in the Class 5 area, the CTM Opposition Divisions’ practice is seriously flawed and should be reviewed as a matter of urgency.

    The Influence of Puma, Canon and Lloyd on CTM Practice

    In the Puma/Sabel and Canon/Cannon cases decided by the European Court of Justice (see Make Your Mark Winter 97/98 and Spring 99), the Court found that

    • The more distinctive the earlier mark, the greater will be the risk of confusion, and

    • The registration of a trade mark may have to be refused, despite a lesser degree of similarity between the goods and services covered, where the marks are very similar and the earlier mark, in particular its reputation, is highly distinctive.

    From this, it could also be inferred that marks with a low level of distinctiveness and little or no reputation, should be given narrow protection. As the two cases reported below illustrate, OHIM are now implementing this ECJ case law in their opposition practice.

    In the first case, a French company Eridania Beghin-Say applied to register the trade mark Actiline for goods in Classes 5, 29, 30, 31 and 32. The CTM application was opposed by Krüger GmbH on the basis of their German registration for the trade mark Activline covering goods in Classes 5, 29, 30 and 32.

    The opposition succeeded, but in part only. The Opposition Division commented as follows,

    “According to the case law of the ECJ...marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character. Although the signs in dispute are almost identical, as the earlier sign has a low distinctive character its protection shall be smaller. This finding will have repercussions in the comparison of the goods, where the similarity will have to be analysed more seriously”.

    • The overall impression of the two marks, based on visual, phonetic and conceptual comparisons, was that they were “only partly similar”, and

    • The earlier Class 20 goods covered by the Spanish registration were slightly similar to the Class 10 goods, identical or very similar to the Class 20 goods and similar to the Class 24 goods, bearing in mind the type of consumers, trade outlets, etc.

    On this basis, the opposition succeeded in relation to Class 20 and 24 goods, but failed in relation to Class 10 goods.

    Turning to the Lloyd/Loint’s case, in that decision the ECJ assessed whether a likelihood of confusion could be based solely on the phonetic (aural) similarity of the marks in question. They decided that it was possible (emphasis added) that mere phonetic similarity between trade marks could create a likelihood of confusion within the meaning of Article 5(1)(b) of the Directive. Again, OHIM are willing to follow this lead in cases such as the one set out below.

    In this case, the CTM application was for the trade mark Fifties and covered “Denim clothing” in Class 25. The opposition was based on a Spanish trade mark registration for Miss Fifties & Distinctive Device covering inter alia clothing in Class 25. The goods were, unsurprisingly, found to be identical. In relation to the two marks, the Opposition Division found that they were visually and conceptually dissimilar. However, because the Division believed that Spanish consumers would find the word Fifties to be the dominant verbal element in the earlier mark, they decided that the two marks were phonetically very similar. (Note that if a CTM opposition is based on an earlier Spanish trade mark registration, then a comparison of the two marks must be from the point of view of a Spanish consumer).

    Therefore, taking into account the identity of the goods, the close phonetic similarity of the marks, the possibility of imperfect recollection and the fact that clothing is often ordered verbally, the Opposition Division found that, despite the visual and conceptual dissimilarities of the marks, there was a likelihood of confusion. They therefore found for the opponent.

    Comment

    In the author’s view, the case law of the ECJ and the CTM practice that is being based on it, makes advising clients on the availability of trade marks for registration and use in the European Union increasingly difficult. Who would have predicted, for example, that an earlier German trade mark registration for Activline covering cocoa products would not prevent the CTM registration of Actiline for coffee and tea? As we have argued before, it is difficult to accept that the nature of the earlier registered trade mark should have any effect on the type of goods or services that are deemed to be similar to those registered. It is submitted that a decision on this question should be made only on the basis of the market conditions surrounding the buying and selling of the goods or services concerned.

    Thus, if Activline is viewed as a mark of low distinctiveness, then the result should be that fewer marks will be viewed as similar to that mark than would be the case for a distinctive trade mark. However, whatever the level of distinctiveness of Activline, this should not affect a finding that cocoa products are similar to coffee and tea (which they clearly are).

    Proof of Genuine Use of a Trade Mark

    Under the CTM Opposition system, if the prior national trade mark right being 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 (Article 43(2) and (3) and Rule 22(2)). If no genuine use of the mark is shown by the opponent, then the opposition is rejected. If genuine use is proved in relation to some of the registered goods or services, then the opposition is decided on the basis that the mark is registered for those goods and services only.

    Under Rule 22(2), the nature of the proof of use required under the CTM opposition system 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 is a high level of proof and it is being applied rigorously by the Office, as can be seen from the following case.

    A US company, R.G. Barry Corporation, applied for the mark Barry Comfort in relation to “slippers” in Class 25. The application was opposed by Berri Hosenmodelle Böhm & Rieger on the basis of their prior German trade mark registration for Berri covering a variety of goods in Classes 18 and 25. The opponent’s German registration was over five years old and therefore R.G.Barry requested proof of use of the mark in Germany during the five year period prior to the date of publication of the CTM application.

    In response Berri Hosenmodelle produced

    On this basis, the CTM application was rejected, for example, in relation to “cocoa” in Class 30 because “cocoa beverages” were covered in the earlier German registration. However, the CTM application was allowed to proceed in relation to “coffee and tea” (which were not claimed in the earlier registration), because, in view of the low distinctiveness of the earlier trade mark Activline, these goods were not viewed as similar to cocoa beverages.

    In the second case, the mark applied for was Matratzen Markt Concord & Device, with Matratzen the dominant feature. The goods claimed were in Classes 10, 20 and 24 including beds for medical purposes (Class 10), beds (Class 20) and bed linen (Class 24). The CTM application was opposed on the basis of a Spanish registration for the trade mark Matratzen covering Class 20 goods including beds.

    The Opposition Division, following the Canon/ Cannon case, assessed the likelihood of confusion globally taking into account all of the relevant factors. These were that

    • An affidavit, executed by employees of the opponent and a related company, stating that the mark Berri had been used in Germany on labels attached to nearly 2 million pairs of trousers in the relevant period. The affidavit also confirmed that, in the same period, the mark had been attached to T-shirts, sweatshirts, overgarments and socks that were sold in Germany.

    • Samples of sew-in and cardboard labels bearing the trade mark Berri.

    The Opposition Division dismissed the opponent’s evidence as inadequate and rejected the opposition. In the Opposition Division’s view, the labels did not adequately show the nature of the use of the mark Berri. In particular, they did not show how the labels were attached to the goods. Since the affidavit was executed on behalf of the opponent and not by a third party, it could only be given a relatively low weight in evidential terms. Since the labels did not support the statements set out in the affidavit, in relation to the time, place and extent of use in Germany, the evidence, taken as a whole, did not support the registration.

    Comment

    The level of evidence of genuine use that is required by OHIM is generally unreasonably high. In the above opposition, it appears that the opponent had, at the very least, established a prima facie case, which should have been enough to allow the opposition to continue. If OHIM continue to demand such a high standard of evidence, however, they should give the opponent an opportunity to overcome any alleged deficiencies in the documentation provided. At present, OHIM’s practice in this area is too harsh and too inflexible.

    Choice of Opposition Grounds

    When filing a CTM opposition, it is always wise to include all of the relative grounds. A failure to do this can lead to embarrassment as the next case illustrates.

    The CTM application was for the mark Ocean Pearl and covered “molluscs, crustaceans and fish; uncooked frozen shrimps and prawns”. The opponent based his opposition on a prior UK trade mark registration for the identical mark Ocean Pearl which claimed “fish and fish products”. However, the opposition grounds only included Article 8(1)(a), identity of marks and goods, and Article 8(5), reputation of the earlier mark. The grounds did not mention Article 8(1)(b), identity of marks and similarity of goods.

    The Opposition Division accepted the opposition in relation to fish, but rejected it in relation to the other goods claimed. They reasoned that, although “molluscs, crustaceans, shrimps and prawns” were shellfish, they were neither fish nor a fish product. It followed that these goods were therefore not identical to the earlier claimed goods and that the Article 8(1)(a) objection failed in relation to these products.

    Since the opponent was also unable to persuade the Opposition Division that they had developed sufficient reputation to sustain the Article 8(5) objection, the application was allowed to proceed for all of the published goods except fish.

    Comment

    In some CTM oppositions where no grounds at all have been identified, the Opposition Division (usually after an appeal) have been required to infer the grounds by comparing the CTM mark and goods (or services) with the earlier mark and goods (or services). It would have been sensible, in the writer’s opinion, to have done the same in the above case. A more flexible approach to these matters, shown by the CTM Opposition Divisions, would be welcomed by all users of the system.

    Trade Mark Dilution

    The CTM application was for the mark Yves Roche in relation to Class 33 goods including wines and champagnes. The opponent was the owner of inter alia an International trade mark registration for the mark Yves Rocher covering perfumes and cosmetics. The International registration designated a number of states including Germany. The opposition was based primarily on Article 8(5) of the CTM Regulation, namely the right of the owner of an earlier trade mark with a reputation to prevent the registration of a later mark for dissimilar goods if use of the later mark would take unfair advantage of or be detrimental to the earlier mark’s reputation.

    The opponent was able to establish, to the satisfaction of the Opposition Division, that they had a reputation in face-care and make-up products in Germany. (A poll amongst 1130 German women showed that 76% knew of Yves Roche). They were also able to point to a German Court decision where the owner of Yves Rocher was able to prevent the use of Yves Roche on the basis of the trade mark dilution provisions in German trade mark law.

    On this basis, the opposition succeeded. The Opposition Division found that the two marks were confusingly similar and, in relation to the other requirements of Article 8(5) stated...

    “We must conclude that irrespective of the intention of the applicant, the choice of Yves Roche for wines, champagne..., that is for artificially produced products, takes unfair advantage of the prior mark Yves Rocher which, though applied to other products, has a market reputation owing to the high quality and natural, ecological nature of the products sold under the mark...it is obvious that the present application adversely influences the well reputed prior mark”.

    Comment

    This decision was heavily influenced by the survey evidence produced by the opponent as well as the earlier German Court decision. The absence of any convincing explanation for the US based, CTM applicant’s choice of Yves Roche is a trade mark for their Class 33 goods, also counted in the opponent’s favour.