EUROPEAN PERSPECTIVES

Alicante Abstracts

This edition of Make Your Mark highlights a number of recent decisions of the European Court of Justice dealing with the question of distinctiveness and the likely effect of these rulings on trade mark practice both before OHIM and national trade mark offices.

EUROPEAN COURT OF JUSTICE

Absolute Grounds of Rejection

In the first appeal from an OHIM decision to reach the full European Court of Justice (ECJ), rather than the Court of First Instance, the Court decided that the trade mark Baby-Dry was registrable in relation to babies' nappies.

Procter & Gamble had filed their CTM application for the mark soon after OHIM had opened. The application had been rejected progressively by the CTM examiner, the First Board of Appeal and The Court of First Instance. In the latter case, the Court ruled that the trade mark Baby-Dry "merely conveyed to consumers the intended purpose of the goods, (namely to keep babies dry) but exhibited no additional feature to render the sign distinctive" (Article 7(1)(c) of the CTM Regulation (No. 40/94)). Procter & Gamble appealed to the ECJ. The ECJ allowed the appeal, commenting as follows on the registrability of word combination marks,

• As regards trade marks composed of words,&hellipdescriptiveness must be determined not only in relation to each word separately but also in relation to the whole which they form. Any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark.

• Baby-Dry does allude to the function which the goods (babies' nappies) are supposed to fulfil. Further, each of the words in the combination may form part of expressions used in everyday speech to designate that function. However, Baby-Dry is a syntactically unusual juxtaposition which is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics.

• Word combinations like Baby-Dry cannot therefore be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive power on the mark so formed and may not be refused registration under Article 7(1)(c).

Three further appeals from OHIM refusals of trade marks on absolute grounds have also recently been decided by the Court of First Instance. In the first case, the trade mark was New Born Baby for dolls and accessories for dolls. The mark had been rejected by the CTM Examiner as descriptive of the goods and devoid of any distinctive character (Articles 7(1)(b) and (c)). These objections had been maintained by the Third Board of Appeal. The applicant (Zapf Creation) appealed to the Court of First Instance who annulled the Appeal Board's decision and allowed the application to proceed. In the Court's view,

• Even if the sign New Born Baby could be regarded as descriptive of that which the dolls represent, this would not be sufficient to prove that the sign in question is descriptive of the dolls themselves.

• A sign which is descriptive of that which a toy represents cannot be considered to be descriptive of the toy itself, other than in so far as the persons targeted, when making their purchasing decision, conflate the toy and what is represents. The contested decision makes no finding to that effect.

• The Board of Appeal has not therefore shown that the persons targeted will, without further reflection, instantly take the sign New Born Baby to designate a quality or other characteristics of dolls (Article 7(1)(c)).

• Accessories for dolls in the form of playthings do not represent new born babies but other items, such as miniature clothes or shoes. They are therefore not intended for new born babies and do not designate a quality etc of such accessories.

• Lack of distinctiveness (Article 7(1)(b)) cannot be found merely because a sign is unimaginative.

The second appeal to the Court of First Instance involved a CTM application for the slogan Das Prinzip Der Bequemlichkeit (German for The Principle of Comfort). The mark had been accepted by the Third Board of Appeal in relation to tools and cutlery in Class 8, but had been rejected, under Articles 7(1)(b) and (c), in relation to land vehicles in Class 12 and household furniture in Class 20. The applicant (Erpo Möbelwerk) appealed the rejection of the Class 12 and 20 goods to the Court who, once again, reversed the Board's decision and allowed the application to proceed. The Court commented as follows:

• Even if Bequemlichkeit (Comfort) designates, on its own, a quality of the (Class 12 and 20) goods concerned which may be relevant when the class of persons targeted makes the decision to purchase, the slogan applied for, when considered on the basis of all its elements and read in its entirety, cannot be regarded as consisting exclusively of signs or indications which may serve to designate the quality of the goods concerned. The rejection under Article 7(1)(c), was therefore waived.

• It is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign.

• The Article 7(1)(b) lack of distinctiveness objection would have been justified only if it had been demonstrated that the slogan is commonly used in the relevant business' communications, in particular, its advertising. No usage had been found or even asserted by the Office. It followed that the Article 7(1)(b) objection was also waived.

The third Court of First Instance appeal concerned a non-distinctiveness (Article 7(1)(b)) objection raised against a 3-D trade mark which consisted of a square dishwashing tablet (with slightly rounded edges and corners) comprising two layers, one white, the other pale green. The Court maintained the CTM Examiner's and Board of Appeal's objection and dismissed the appeal. In the Court's view,

• Account must be taken of the fact that the perception of the relevant section of the public is not necessarily the same in relation to a 3-D mark consisting of the shape and the colours of the product itself as it is in relation to a word mark, a device mark or a 3-D mark not consisting of the product itself (e.g. product packaging). Whilst the public is used to recognising the latter marks as signs identifying the product, this is not necessarily so where the sign is indistinguishable from the appearance of the product itself

• The way in which the public concerned perceives a trade mark is influenced by the average consumer's level of attention. This is likely to vary according to the goods (services) in question. The level of attention given by the average consumer to the shape and colours of dishwashing tablets, which are everyday consumer goods, is not high.

• The 3-D mark applied for consists of a combination of obvious features typical of the product concerned. It therefore does not enable consumers to distinguish the product concerned from those having a different trade origin when they come to select a product for purchase.

• The inability of the mark applied for to indicate the product's origin is not affected by how many similar tablets are already on the market.

(This is one of 9 appeals against the rejection of the shape and colour of dishwashing tablets filed separately by Procter & Gamble and Henkel. All of the marks were rejected as non-distinctive by the Court of First Instance).

Finally, the full ECJ has considered an appeal brought by Merz & Krell against an objection raised by the German Trade Mark Office against the trade mark Bravo for writing implements. The objection had been based on Article 3(1)(d) of the Trade Marks Harmonisation Directive (89/104/EEC) which appears as Paragraph 8(2)(3) of the German Trade Marks Act. The German Court put the following question to the ECJ,

"Is Article 3(1)(d) of First Council Directive 89/104/EEC to be interpreted restrictively, contrary to the wording thereof, as meaning that only signs or indications which directly describe the specific goods and services in respect of which registration is sought, or the essential characteristics or features thereof, are affected by the bar to registration? Or is the provision to be construed as meaning that, in addition to generic signs and names, signs or indications which have become customary in the current language or in the bona fide and established practices of the trade in the relevant or a similar sector as advertising slogans, indications of quality or incitements to purchase etc, without directly describing specific characteristics of the goods or services in respect of which registration is sought, may likewise not be registered?"

The ECJ considered the two parts of the question separately. In relation to the first part the Court decided that Article 3(1)(d) of the Directive must be interpreted as only precluding registration of a trade mark where the signs or indications of which the mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods and services for which registration is sought (emphasis added).

Turning to the second part of the question the Court ruled that the scope of Article 3(1)(d) should not be limited solely to trade marks which describe the properties or characteristics of the goods (services) claimed, but should also cover marks that evoke the goods or services in the mind of the average consumer. A sign or indication could have become customary in the trade through, for example, widespread use in advertising, even if it did not describe a property/characteristic of the goods themselves. It was for the national Court to decide whether the sign was, in this sense, customary in the trade in question.

  

Comment

When OHIM first opened in 1996, the standard of distinctiveness it set when examining trade marks under Articles 7(1)(b) and (c) was very low. A series of Court of First Instance decisions, see, for example, their rejection of Companyline and Options, both for Class 36 services, had appeared to raise the standard required to a much higher level. The decisions discussed above, in which the ECJ have allowed Baby-Dry, whilst the CFI have accepted New Born Baby and Das Princip Der Bequemlicheit, seem to have significantly lowered the level of distinctiveness required to achieve registration. The ECJ's comment that "any perceptible difference between the mark applied for and common consumer parlance is apt to confer distinctive character" could apply to the vast majority of marks filed at OHIM and at EU national trade mark offices. It should therefore follow that numerous marks which, until last year, faced intractable non-distinctiveness objections raised by CTM and/or national trade mark examiners, should now be accepted simply on the basis of the magic words Baby-Dry. We shall see.

As far as the ECJ's decision in Bravo is concerned, this is written in the usual delphic form that we have come to expect from that Court. However, as the writer understands the ruling, a sign should not be rejected simply because it is widely used as, for example, an incitement to purchase or in advertising. Such a rejection should only be sustainable if such use is shown in the relevant area of trade, which in the Bravo case would be writing instruments or perhaps stationery in general.

Finally, it is clear that OHIM and now the CFI will not accept applications for 3-D marks for dishwashing (and similar) tablets which consist of a simple shape (square, round) and two or three coloured layers. If trade mark protection for such a product is required either a more imaginative shape and/or colour combination should be chosen (see, for example, CTM1860055) or a widespread advertising campaign emphasising the trade mark nature of the tablet etc must be conducted to educate the public.

 

WHAT IS IDENTICAL?

The Advocate General has recently published his opinion on questions referred to the ECJ by a French Court on the proper construction of the infringement provisions equivalent to Section 10(1) of the UK's 1994 Trade Marks Act. Section 10(1) says that a registration is infringed if use is made of a sign that is identical to the registered mark in relation to goods that are identical to those registered, without reference to any question of confusion. The issue is very important because, if the term "sign" is given a wide meaning, this gives the owner of a registration potentially very wide rights.

The French Court had been asked to rule on whether use of Arthur et Felicie infringed a registration of Arthur (in a stylised form) for the same goods. The Advocate General said in his opinion that the infringement provisions of the Directive (which governs and aims to harmonise EU national laws) are predicated on the existence of a likelihood of confusion. In Section 10(1) situations, therefore, where there is identity of marks, a likelihood of confusion can be presumed (emphasis added), without requiring proof. However, the way that the Courts have been interpreting the word "sign" could lead to situations where infringement is found, even though confusion seems unlikely. Take, for example, use of Moor Park Golf Club as a trade mark for goods. This uses the "sign" Park and would therefore presumably be held to infringe a registration of the mark Park covering identical goods, even though it is difficult to see the two marks being confused in practice. And how far does one stretch the meaning of "sign". For example, would use of Sparky infringe the Park registration?

The Advocate General's answer is that an analysis must first be made of what is being used to determine what the "sign" in question is. This must be decided on the basis of what a reasonably sensible consumer would understand it to be. In the examples mentioned above, for example, the "signs" would presumably be found to be Moor Park Golf Club and Sparky, neither of which is identical to the mark Park implying that a likelihood of confusion would have to be demonstrated for there to be infringement.

The Advocate General discusses what might happen in the case of a mark such as Imitation X, where X is a registered mark. A likelihood of confusion might be difficult to prove, yet he seems to suggest that the trade mark proprietor ought to be entitled to prevent the use of such a mark. That may be so, but the more appropriate provision for use of that sort of mark would appear to be Section 10(3), which guards against so-called "dilution". The problem with Section 10(3) is that it only applies where the use complained of is in relation to dissimilar goods.

 

AMENDMENT OF A TRADE MARK

The applicant (Signal Communications) 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.

The applicant appealed to the Court of First Instance. The CFI allowed the appeal and the amendment sought to the CTM application on the following basis.

• Where a CTM application is accompanied by a claim of priority, the right of priority becomes an essential component of the application in that it determines one of its essential features, its filing date. Further, the present request for correction of the CTM application is directly linked to the claim to priority in the sense that the corrected mark would be identical to the US priority mark.

• As a result of correspondence between the applicant and the Office, it must have been evident to OHIM in August 1998 that a typographical error had been made and that the applicant's intention was to register Teleeye.

• Given that Article 29 of the CTM Regulation (the article dealing with claims of priority) implies that the subject matter of the CTM application is identical to that of the earlier, priority application and, bearing in mind the nature of the error made in this case and the applicant's clear intention to register the US priority mark via the CTM, the correction sought is in no way abusive and does not entail substantial alteration of the trade mark.

Comment

This is a surprising decision and can only be explained by the key additional factor, namely the applicant's claim to priority. There is no doubt that the amendment of the CTM mark from Teleye to Teleeye represents a substantial change. It would not have been allowed in the absence of the US priority claim. See, for example, OHIM's refusal to allow an amendment from Ranier to Rainier, in a case where no priority was claimed.

Under the CTM Regulation there does not appear to be any provision for an adversely affected third party to object to the acceptance of an amendment to a CTM application. This should be contrasted with the UK Trade Marks Act 1994 under which (Section 39(3)) a third party objection can be raised.

 

CTM APPEAL BOARDS

Similarity of Pharmaceutical Trade Marks

There are further signs that OHIM is drawing back from its disastrous policy of assuming that, because of the nature of the pharmaceutical industry, small differences in Class 5 trade marks can distinguish between products. In a recent appeal (Almirall Prodesfarma v Mucos Emulsionsgesellschaft), the CTM application was for the mark A-Mulsin covering medicines (in Class 5). The application was opposed by the owner of the earlier trade mark Almoxin for inter alia pharmaceutical products. The Opposition Division rejected the opposition with their usual, flawed reasoning based on the presence of qualified professionals in the prescribing process and the extra vigilance of patients when dealing with such pharmaceutical products.

The opponent appealed. The Third Board of Appeal found the two marks confusingly similar and allowed the appeal. The Board stated that

• The attention paid by the end consumer (patient) depends on the specific drug and the specific purpose, need or effect. It may be that, for complicated purposes, the normal attention of an average consumer could be higher. It can also happen with medicines for mild disorders that the degree of consumer attention will be very low.

• The conclusion of the Opposition Division in this abstract matter whether the average consumer of medicines is generally attentive to differences between marks and vigilant to avoiding confusion in the field of medicines cannot be seen as correct.

• Only in special cases, for example in relation to dangerous drugs, will the pharmacist enquire about the cause and make comments or give instructions.

• All these considerations are useless and cannot hinder confusion if the two products in competition have more or less the same composition and serve more or less the same intended purpose. This possibility has to be considered when comparing marks in relation to the whole field of pharmaceutical products. A different consideration might apply if the drugs are clearly different and for totally other applications.

• Without a clear restriction of the specific kind of medicines or without the indications that they can be used only on prescription by doctors, it must be considered that the two sets of goods can meet each other on the market for the same or similar goods and the same or similar purposes.

Comment

In an appeal involving the marks Evasil and Exacyl, the First Board of Appeal recognised that, in some circumstances, trade mark confusion between drugs could lead to serious consequences. In the above case, the Third Board has recognised that, in some circumstances, the consumers of certain medicines could be less than vigilant. The industry and their advisors now have to persuade OHIM that

• Doctors and pharmacists are just as likely to be the victims of trade mark confusion as any other consumer, and

• It is potentially more dangerous to have confusing trade marks on drugs in different therapeutic areas than to have such marks on drugs aimed at the same condition. For example, consider a CTM application for the trade mark Intak covering an antibiotic which is opposed by the owner of a registration for the earlier trade mark Istac covering surfactants for the treatment of new born infants. Should this difference in end users influence the decision in favour of the applicant? If you believe the answer to this question is yes, then consider the following scenario. Both drugs are administered by injection in hospital situations and a physician requests Istac in an emergency. If both products were surfactants, the consequences of a prescribing error made under pressure would probably be less serious than the administration of Intak by mistake to the infant.

Although OHIM's Class 5 practice is slowly moving in the right direction, it is still seriously flawed and needs to be reviewed as a matter of urgency.

From a practical point of view, it seems clear that an OHIM opponent who owns an earlier Class 5 registration covering pharmaceutical products at large will generally have a greater chance of success than an opponent with a Class 5 registration restricted to a particular type of medicine.

 

Comparison of Trade Marks

Two recent appeal decisions illustrate the problems that OHIM's language regime can pose to a CTM applicant.

In the first case (Pash Textilvertrieb v Phillips Van-Heusen), the CTM application was for Bass and covered clothing. The application was opposed by the owner of a German trade mark registration for Pash also covering a variety of clothing. The Opposition Division rejected the opposition and the opponent appealed. The Third Appeal Board allowed the appeal and rejected the application. They reasoned as follows,

• Referring to a text dated 1824 (and assuming that the comments also applied today), many Germans would pronounce "B" and "P" in a way that would blur the difference.

• Many Germans would be in doubt as to how to pronounce "sh". The final sounds "ss" and "sh" could therefore be confused, especially if the "sh" is pronounced as a lisping "s-h".

• The average German consumer would probably view both words as meaningless fantasy marks. He would therefore get confused between Bass and Pash when these were applied to identical consumer goods, such as clothing.

In the second appeal (Horace M. Ostwald v Northern Foods), the mark applied for was Fox's for, amongst other goods, chocolate biscuits. The German opponent relied on an earlier German trade mark registration for Fuchs covering inter alia articles of chocolate. The Opposition Division again rejected the opposition and the opponent appealed. The Third Board of Appeal reversed the decision. In the Board's view

• The earlier and later goods were identical, not merely similar.

• The average German would pronounce Fox's as "Foks". They would pronounce Fuchs in a similar fashion.

• The letter X, though rare in the English language, would not be sufficient to render Fox's very different to Fuchs. The marks were visually similar.

• A high percentage of the German public would know that Fox is the English word for Fuchs and, even if they recognised both marks as surnames, they would not ignore the other meaning. A surname with a meaning must be treated differently to one without.

• Bearing in mind the possibility of imperfect recollection, oral recommendation, the low cost nature of the products and the limited attention that would be paid to a purchasing decision, there was a likelihood of confusion between the two marks on the part of the German public.

Comment

In the writer's view, the phonetic and conceptual similarities between Fox's and Fuchs could just about outweigh the visual differences between the two marks and therefore lead to consumer confusion. The case is borderline, but the reasoning is acceptable.

By contrast, the rejection of the CTM application for Bass because a few lisping Germans could confuse it phonetically with Pash is difficult to accept. Any slight chance of phonetic confusion would surely be overwhelmed by the visual differences between the two marks. This case does, however, illustrate the considerable difficulties that the numerous European Union languages pose a trade mark owner (and his advisor) attempting to clear a trade mark for registration and use throughout the EU.

 

Evidence of Use in CTM Oppositions

In the last edition of Make Your Mark (Autumn 2001), we noted that a series of Appeal Board decisions had appeared to relax the inflexible, formalistic and unjustifiably onerous regime that was being operated by the OHIM Opposition Divisions on the question of proof of genuine use of a trade mark. A recent case (Friedrich Wenz v J. Noach) has confirmed the more commercially realistic approach to this matter by the Appeal Boards.

The CTM application was for the trade mark Condor in Class 14. The opposition was based on two earlier German registrations for Condor in the same class. The opponent was put to proof of use of his mark in Germany in the five years prior to the publication of the CTM application. He provided

• A written affidavit signed by the Chief Executive Officer of the opponent setting out details of its sales of Condor watches in Germany during the relevant period, and

• Extracts from its 1995 and 1999 catalogues including details of Condor watches for sale in Germany.

The Opposition Division accepted that the affidavit gave information on the place, time, nature and extent of the use of Condor in Germany. However, because the document was completed by an employee of the opponent it was only given "relative" weight. On this basis, the opponent's evidence of use was deemed inadequate and the opposition was dismissed.

The opponent appealed. The Third Board of Appeal annulled the adverse decision on proof of genuine use in Germany and remitted the case to the Opposition Division for further prosecution. They made the following pronouncements on the Opposition Division's practice in this area.

• Article 76(1)(f) of the Regulation states "In any proceedings before the Office, the means of giving or obtaining evidence shall include the following&hellip(f) Statements in writing, sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up".

• CTM law expressly rejects the idea of proposing its own definition of the so-called "affidavit". To the contrary, it remits to the law of Member States for appraisal of written statements when sworn, affirmed or alike.

• The Opponent CEO's written statement was, under German law, a statement in writing affirmed or having a similar effect pursuant to Article 76(1)(f).

• The assumption that relative weight must be given to the CEO's statement only for the formal reason that it was signed on behalf of the opponent, is ungrounded and incorrect. There is no legal basis for this position in the Regulation (or Rules). The Office cannot refuse to take into account or minimise the effects of an affidavit for the sole reason that it has been signed by a party to the proceedings, even though in practice it will often be supported by or related to other means.

• The Opposition Division had not simply minimised the opponent's statement, but in fact had not given any weight to it at all.

• As the Opposition Division itself had admitted, the affidavit had given adequate evidence of use. The opposition would therefore be allowed to proceed.

Comment

This is another welcome, sensible decision by an Appeal Board in this area. 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, advertisements 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, they should ask for it.

It remains to be seen, of course, whether OHIM's Opposition Divisions will take the rulings of the various Appeal Boards to heart. In the Alice in Wonderland world that is OHIM, this should not be assumed. It should be noted, for example, that the Condor decision was dated 11th July 2001. Three weeks later, in a decision given by the Opposition Division (Colgate-Palmolive v Stafford-Miller (Ireland)), the opponent's evidence of use of the trade mark Dentagard in Germany was rejected as insufficient. In this case, the opponent had filed a Statutory Declaration executed by its legal director certifying that Dentagard was used in Germany and giving German turnover, market share and advertising/promotion expenditure for Dentagard toothpaste/mouthwash during the relevant period. It is submitted that this information alone should have been sufficient to allow the opposition to proceed. If it was not, however, the Opposition Division should have identified the omissions and given the opponent a short period within which to rectify those omissions. It is sincerely to be hoped that opposition practice will develop in this direction.

 

CTM OPPOSITION DIVISIONS

Consistency of Approach to Similarity of Trade Marks

Two recent opposition decisions illustrate a marked lack of consistency when comparing the similarity of trade marks. In the first case (The Ohio Art Company v CreCon Spiel-und Hobbyartikel), the mark applied for was Betty La Malice for, amongst other goods, games and toys. The opposition was based on an earlier German trade mark registration for Betty covering identical goods. The opposition was rejected because the marks were said to be visually, phonetically and conceptually dissimilar, particularly in view of the non-German element (La Malice) in the mark.

In the second case (Viacom International v Margarete Steiff), the CTM application was for Rocko's Modern Life in respect of inter alia toys and dolls. The opponent owned an earlier German registration for Rocco covering toy figures. Once again the goods were taken to be identical. However, in this case, the marks were found to be similar. The Opposition Division accepted that there was no visual similarity, but ruled that there was a certain element of phonetic similarity and that, because of the presence of Rocko's/ Rocco, there was a conceptual similarity in that both were names.

 

Comment

The comparison of trade marks is a subjective matter. Different people will have different approaches and may therefore reach different conclusions based on the same or very similar factual situations. Even so, an organisation such as OHIM should endeavour to establish as consistent an approach as possible to the factual situations they meet every day.

In the writer's view, the above opposition decisions are entirely and unjustifiably inconsistent. Further, they are merely illustrative of a more general malaise. A manual of office practice, available to OHIM staff and practitioners alike, would be a major step towards establishing a common approach by OHIM staff. Such a manual is desperately needed.

 

Opposition on the basis of a Family of Marks

It appears that a claim to a common trait of a number of prior marks owned by an opponent will only be accepted if two or more of those marks are in use. This practice can be inferred from an opposition (Novartis Nutrition v Lifesource International), in which the CTM application was for the trade mark Lifesource in respect of dietetic and medicinal substances in Classes 5, 30 and 32. This application was opposed on the basis of various EU trade mark registrations for six marks all having the suffix -source (e.g. Dietsource and Fibersource) and covering dietetic/medicinal substances in Class 5. The opponent claimed that he owned a family of marks having the suffix -source and that therefore the registration and use of Lifesource by an unconnected company in respect of the same or similar goods would be likely to lead to confusion. He also pointed to an earlier French court decision in which the trade mark Lifesource was found to infringe the opponent's trade marks.

The opposition was dismissed. According to the Opposition Division,

• The opponent could only succeed if he showed that the suffix -source per se enjoyed a reputation with the public and was the distinctive element which characterised the opponent's family of marks. In such a case, the opponent could be in a position to argue that indirect confusion was likely.

• Such reputation (of a suffix) could only be acquired through use.

• Since the opponent had not provided any evidence that the public recognised the suffix -source itself as indicating the source of his products, the claim to a family of marks would be rejected.

• Lifesource would therefore be compared separately with each of the opponent's earlier marks. Since, on this basis, there was no likelihood of confusion between Lifesource and any of the earlier marks, the opposition would be rejected.

Comment

This is a sensible decision. It must surely be correct that the position in the market rather than on the register should determine a claim to a monopoly to a common element of a family of trade marks. The fact that McDonald's own a host of trade mark registrations for Mc- prefixed trade marks in respect of restaurant services should not, in itself, be enough to prevent the registration of (say) McChina for the same services via the OHIM route. Only if McDonald's could show that a part of (or the whole of) the EU consuming public exclusively associated the prefix Mc- with McDonald's for restaurant services should the opposition succeed.

 

The Influence of Earlier National Decisions

OHIM claims to pay due attention to earlier EU national court or office decisions dealing with the same or very similar fact situations. However, it seems clear that such earlier decisions are only followed if they mirror OHIM's separately formed views on the matter. Otherwise, OHIM will distinguish its own decision from the earlier ruling, sometimes on the flimsiest of grounds.

An example of this practice is the opposition to Perfetti's CTM application for the trade mark Chloralit covering, amongst other goods, chewing gum in Class 30 brought by Warner-Lambert on the basis of their earlier UK trade mark registration for Clorets also covering inter alia chewing gum. The opponent drew the Opposition Division's attention to an earlier ruling of the English Court of Appeal in which Perfetti's UK trade mark application for Chloralit filed under the (old) 1938 Act was rejected on the basis of Warner-Lambert's earlier UK trade mark registration for Clorets.

The opposition was rejected. The Opposition Division reached this decision as follows:

• The UK Trade Marks Act 1938 was not in line with the Harmonisation Directive. In opposition actions under the 1938 Act, the onus was upon the applicant to show that his application could and should be registered. Under the Directive and the harmonised national laws this is not the position. The weight that should be given to the English Court decision should therefore be relative.

• Although the prefixes of both marks are phonetically identical, the two suffixes are phonetically different. When confronted with Chloralit visually, the presence of the letter "h" makes it unlikely that the public will think that Clorets and Chloralit come from the same (or linked) sources. As the goods are mainly offered to the public from counter displays or from free standing display trays, the letter "h" will be noticed. There is no reason for the public to believe that the undertaking that produces Clorets will market a new product Chloralit.

Comment

This opposition case should be contrasted with an earlier Appeal Board decision (Goldshield Group v Unilever) which accepted that the trade mark Goldshield was not confusingly similar to the earlier trade mark Shield. In that case, the CTM applicant owned an earlier, UK trade mark registration for Goldshield filed under the 1938 Act which had co-existed on the UK Register for nearly 5 years with UK trade mark registrations for Shield (also filed under the 1938 Act), by the time the CTM opposition was filed. The Appeal Board commented as follows on the relevance of the decisions of national authorities in the area of relative grounds of refusal: "It would not be logical to say that there is no likelihood of confusion between the same two marks in the same territory when the proprietor of the later one seeks to register it as a CTM. Either there is a likelihood of confusion in the relevant territory or there is not. In such a situation a decision by the Office holding that there is a likelihood of confusion would clearly imply that the two marks cannot coexist within the relevant territory."

Of course, in the Clorets/Chloralit decision, the Opposition Division distinguished their ruling from the contrary UK Court decision by stating that that decision was made under the (old) 1938 Act. It will be noted that the UK Office's decision to accept the trade mark Goldshield in the face of earlier UK registrations for Shield was also made under the 1938 Act. In the writer's view, it would also be a surprise to both the UK Office and the UK Courts that the introduction of the harmonised 1994 Trade Marks Act had changed the manner of comparing two trade marks at all or that the change of law would have led to a different outcome in the UK Clorets/Chloralit case.

OHIM's practice in this area is unsatisfactory. They should either give full weight to earlier EU national office and court decisions in the area of relative grounds objections, unless there are compelling reasons for not doing so, or they should pay no attention at all to such national decisions and make up their own mind. They should not veer between one extreme and the other depending on the specific case before them.

 

Trade Mark Dilution

The CTM application was filed by Buko Ltd on 1st April 1996 for the trade mark Buko and claimed, amongst other goods, wire baskets, supermarket trolleys and plastic boxes in Classes 6, 12 and 20. It was opposed under Article 8(5) of the CTM Regulation by MD Foods on the basis of an earlier Danish trade mark registration for Buko claiming cheese in Class 29, in combination with the opponent's alleged reputation in the earlier mark in Denmark.

The opponent filed the following evidence:

• Historical information detailing the marketing of Buko cheese in Denmark, in particular since the 1970s.

• Information on Danish TV advertisements for Buko cheese from 1994 to the date of application, together with a video of the advertisements.

• An overview of advertisements for the cheese in Danish magazines.

• Photographs of sales stands for the cheese in Danish supermarkets.

• Buko cheese packaging.

• Details of Buko cheese market share during a two year period after the application date.

• Development and marketing expenditure for the period 1993-1998. The annual marketing spend of over 5 million Danish Krone was used predominantly for TV and radio advertisements.

• Danish omnibus surveys showing that over 90% of those surveyed had heard of Buko cheese and that a similar percentage had seen a number of the TV advertisements for the product.

• Copies of invoices dated 1994 to 1998.

The applicant did not dispute the opponent's Danish reputation in the mark, but claimed that his use of Buko had coexisted with that of the opponent for over 40 years without any evidence of confusion.

The Opposition Division ruled in favour of the opponent. As the marks were identical and since over 90% of Danes over the age of 12 were familiar with Buko cheese, a large part of the Danish public would associate the CTM application with the earlier sign. Since the applicant did not show that he (or others) was also using Buko in Denmark, it would be assumed that only the opponent was using the mark in that country. The use of Buko by the applicant for goods that were not under the opponent's control might have a negative impact on the reputation acquired by the opponent in Denmark and would dilute the distinctiveness of the opponent's mark. Use of Buko by Buko Ltd in Denmark would therefore be detrimental to the distinctiveness of the opponent's mark. If the evidence filed by the opponent was sufficient to establish an unfair use without any apparent justification by the applicant, the absence of due cause must be generally presumed.

 

Comment

In the Autumn 2001 edition of Make Your Mark, we reported a CTM opposition brought by the Campbell Soup Company under Article 8(5) of the Regulation against a CTM application for Campbell's Catering Label in respect of various Class 42 services, including catering services. That opposition was rejected because of the paucity of the evidence of reputation filed by the opponent.

This should be contrasted with the above reported opposition where the distinctive nature of the opponent's mark, the identity of the applicant's mark and the opponent's impressive array of evidence of reputation, in particular its survey evidence, persuaded the Opposition Division to rule in the opponent's favour.

It is clear that OHIM do not respect alleged reputations. It follows that opponents with well known brands should not assume that their reputations go before them and that all they have to do to succeed before OHIM is to file a notice of opposition. Such companies would be wise to study the Buko cheese decision and, when necessary, provide evidence of a similar, persuasive nature.

As far as a CTM applicant involved in an Article 8(5) dispute is concerned, it is clear that the most compelling evidence he can provide is information on the coexistence of the opponent's trade mark with identical or very similar trade marks for different goods or services without any evidence of confusion.

 

CTM Oppositions Based on Unregistered Rights

Under Article 8(4) of the CTM Regulation, a CTM application can be successfully opposed on the basis of an unregistered EU right if the following requirements are satisfied:

• The earlier right must be a non-registered trade mark or another sign used in the course of trade;

• The earlier right must be of more than mere local significance;

• The right must have been acquired prior to the filing date of the opposed CTM application; and

• The proprietor of the right must be in a position under the terms of the applicable EU national law to prohibit the use of the later mark.

A number of recent CTM oppositions based on Article 8(4) have cast more light on the type of unregistered rights that can (or cannot) be used successfully in CTM oppositions.

In the first case (Budejovicky Budvar v Anheuser-Busch), the mark applied for was Budweiser for a wide variety of Class 21 goods including glassware. The application was opposed on the basis of an appellation of origin for Budweiser Budvar registered in 1967 at WIPO under the Lisbon Agreement to distinguish "beer". The opponent claimed generally that his appellation of origin was protected in all EU states on the basis of the Paris Convention, the TRIPS Agreement and Council Regulation 2081/92 (EEC). Under this Regulation (2081/92) it is possible to protect designations of origin and geographical indications on an EU wide basis. He also claimed more specifically that, according to French law, an appellation of origin constituted a "sign used in the course of trade" and that such a sign allowed the person entitled to use it in France to forbid the use of a later identical or similar trade mark in respect of all goods. The opponent also filed a considerable body of evidence setting out the legal position in France.

The Opposition Division dismissed the opposition and allowed the CTM application to proceed. In doing so, they made the following interesting comments and rulings.

• The validity of a prior appellation of origin protected by national legislation should be presumed. It was up to the CTM applicant to challenge the validity of such a right successfully before the national Court.

• The aim of opposition proceedings before OHIM was not to establish which of two parties has the overall better right, but to give third parties a swift, expeditious and low-cost procedure for preventing the registration of a CTM application.

• In an opposition based on Article 8(4), it was up to the opponent to provide proper explanation and evidence as to the national law and the origin and scope of the alleged earlier right. Where this is not done, the Office cannot be expected to investigate of its own motion the national law and whether or not the alleged right in question would entitle its proprietor to prohibit use of the later CTM application.

• The opponent's appellation of origin was a sign used in the course of trade for the purposes of Article 8(4). It could therefore form the basis for a CTM opposition filed under that Article.

• The evidence showed that the opponent had used Budweiser Budvar in 9 EU countries. The appellation of origin was therefore of more than mere local significance.

• The European Union had not ratified the Paris Convention. Any unfair competition rights derived from Article 10(bis) of that Convention therefore had to be enforced at national level. They could not be applied to OHIM.

• The TRIPS Agreement was not self-executing and therefore was not directly applicable in proceedings before OHIM.

• Geographical indications protected under Council Regulation 2081/92 do not fall under Article 8(4) of the Regulation because they are based on Community, rather than EU national, law.

• The protection conferred by the Lisbon Agreement extends to France, Italy and Portugal. The opponent had not provided detailed evidence of his protection in Italy and Portugal and, in relation to these two countries, the opposition was rejected.

• It followed from the above that the only remaining basis for the opposition was the opponent's appellation of origin rights in France. The Opposition Division decided that appellations of origin did not enjoy an exclusive right with absolute protection against all kinds of goods under French law. Such broader protection applied to those appellations of origin for which a high level of recognition could be proved. It followed that, in France, the owner of an appellation of origin could prevent the use of an identical/similar sign for identical/similar products. However he could only prevent the use of a later mark in respect of dissimilar products, if such use were likely to alienate or weaken the notoriety of the appellation of origin.

• The opponent had filed no evidence attesting to the reputation of Budweiser Budvar in France. Since the Class 21 goods applied for were not similar to beer, the opposition would be rejected.

In the second case (Franklin Mint v Mrs Shand Kydd and another), the CTM application was for a stylised form of the name Diana in respect of a wide variety of goods and services. The application was opposed under Article 8(4) on the basis of the opponent's alleged UK unregistered rights in the name Diana in respect of "collectible items". The opponent's evidence identified a number of unauthorised, commemorative articles such as coins, medallions, plates, goblets and jewellery that they had produced bearing the words Princess Diana or Diana Princess of Wales since 1981. However, there was no indication as to which UK law would afford the opponent protection or how such law would apply under the terms of Article 8(4).

Not surprisingly, the opposition was rejected. According to the Opposition Division,

• No case had been made out under national law, and

• The opponent had not used the word Diana in a trade mark sense, that is as a means of indicating the commercial origin of goods. It followed that the opponent's sign had not been used "in the course of trade" for the purposes of Article 8(4).

In the third opposition (Ercros v Norcros), a CTM application for Norcros covering Class 1 goods, including adhesives, was opposed on the basis of a Spanish trade name, Ercros. As evidence, the opponent filed two annual reports which both heavily featured the Ercros name. On this basis the Opposition Division accepted that Ercros was a Spanish trade name which had been used in the course of trade in various fields of commerce, including basic chemicals. It was also accepted that the use was of more than mere local significance.

However, since the opponent did not provide any information on the content of the applicable Spanish law or the acquisition of exclusive rights over trade names and the protection given to those signs under that law, the opposition was rejected. According to the Opposition Division,

• The laws of EU states on business identifiers other than trade marks had not been harmonised. In some countries, protection of trade names was acquired by registration only, in others by use.

• Further, the specific conditions under which a given trade name may prevent the use of a later trade mark could also vary from country to country.

• It followed that the scope of protection granted to an EU national trade name could only be assessed by reference to the relevant national law. Article 8(4) did not provide any criteria upon which a conflict between a national sign and a CTM application could be resolved.

• Therefore, the material submitted by the opponent did not show that he had the right to prohibit the use of the trade mark Norcros in Spain on the basis of his trade name Ercros.

Comment

These three cases confirm that the onus is firmly on the opponent when seeking to use unregistered trade mark rights to prevent the registration of a later mark via the CTM system. Not only must the opponent establish the existence of an earlier right which is used in the course of trade and of more than mere local significance, he must also explain the applicable national law to the satisfaction of the Opposition Division and then show how that national law can be applied in the particular case to prevent the use of the later mark. None of this will be assumed by the Tribunal. It is up to the opponent to found and then to prove his case.

The comment made by the Opposition Division in the Budweiser case that geographical indications protected under EU Regulation 2081/92 fall outside the provisions of Article 8(4) will be of considerable concern to the owners of such rights. If this interpretation of Article 8(4) is correct, it is not altogether clear upon which ground the owner of such an EU protected geographical indication can seek to oppose or apply to cancel a CTM application or registration. If this is true, then those responsible for the protection of such names should seek to register the name as a CTM collective mark or the EU national equivalents of such a collective mark as a matter of urgency.

 

Evidence of Use

In spite of the efforts of certain CTM Appeal Boards, OHIM's Opposition Divisions continue to exercise an unreasonably high level of proof in relation to the evidence of use of earlier marks, as the following case illustrates.

The CTM application was for the trade mark Iodosan in respect of goods in Classes 3, 5 and 21. It was opposed on the basis of two Spanish trade mark registrations for the mark Podosan. The opponent was requested to provide proof of use of the earlier mark in Spain. He provided

• Invoices which showed the extent, time and place of use of the mark. The invoices also bore the word mark Podosan.

• Price lists which referred to Podosan.

• Product packaging on which the mark Podosan appeared in a stylised form, the letter S being extremely elongated.

• Advertisements featuring the stylised form of Podosan.

The Opposition Division decided that the evidence did not establish use of the registered mark in Spain. The opponent's use was of a form of the mark which altered the distinctive character of the mark as registered

 

Comment

This is a poor decision. The totality of the evidence quite clearly proved use of the registered mark Podosan in Spain during the relevant period. It would be interesting to speculate on the outcome of the case if the stylised form of the mark had been registered and the invoices had still only referred to the word Podosan. Would this have established use of the stylised mark? Perhaps, in both cases, if the opponent had filed evidence from a hand writing expert that the average consumer would identify the stylised mark as Podosan, the result might have been different.

In the light of this decision, however, companies that use a figurative form of a word mark but only have a registration for the word mark itself should seriously consider obtaining additional protection for the figurative form.