Board of Appeal could not find that the three-dimensional Kitkat EU trade mark had acquired distinctive character through use without adjudicating on whether it had acquired such distinctive character in Belgium, Ireland, Greece and Portugal: it would be unreasonable to require (separate) proof for each individual Member State, the evidence submitted must however be capable of establishing such acquisition throughout all Member States of the EU, it is not inconceivable that the evidence provided is relevant with regard to several Member States, or even to the whole of the European Union.
Trade mark proprietor is entitled to oppose, on the grounds of Article 5 of the Trade Marks Directive (2008) and Article 9 of the EU Trade Mark Regulation, a third party removing all the signs identical to that mark and affixing other signs, without its consent, on products placed in the customs warehouse, with a view to importing them or trading them in the EEA where they have never yet been marketed.
The General Court was right to consider that EUIPO’s bodies could not satisfy their obligation to state reasons: Puma had raised the argument that the reputation of the earlier marks had been recognised ‘in numerous Office decisions’, the fact remains that the Board of Appeal failed to cite from among the ‘evidence submitted by the opponent’. If the Board of Appeal itself were to reach the conclusion that it could not satisfy its obligation to state reasons, without the
evidence which had been lodged in the earlier proceedings before EUIPO, it must be considered, that it would have been necessary for the Board to exercise its power to request the production of that evidence for the purposes of exercising its discretion and carrying out a full examination of the opposition.
A sign consisting of a colour applied to the sole of a high-heeled shoe is not an invalid trademark on the basis of article 3(1)(e)(iii) of the Trade Marks Directive 2008.
For the purpose of establishing that there is ‘indirect commercial use’ of a registered geographical indication, the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it: not sufficient that that element is liable to evoke some kind of association with the indication concerned or the geographical area relating thereto. For the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, the referring court is required to determine whether, when the consumer is confronted with the disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected: account is not to be taken either of the context surrounding the disputed element or the fact that that element is accompanied by an indication of the true origin of the product concerned. For the purpose of establishing that there is a ‘false or misleading indication’, as prohibited by that provision, account is not be taken of the context in which the disputed element is used.
The CJEU refers five 'Master' trade mark cases (L’ Oréal) back to the General Court: the General Court distorted the facts and arguments made by L’ Oréal and infringed Article 8(1)(b) of the EU Trade Mark Regulation. The Judgement of the General Court, stating that that the most distinctive element of the trade mark is the element 'Masters', is ambiguous and incomplete, the General Court's reasoning was insufficient and lacked the support of case-law. Furthermore, the General Court failed to provide adequate reasoning why it disregarded a comparison of all the distinctive characters of the conflicting trade marks in its likelihood of confusion analysis.
General Court was fully entitled to conclude that word mark KENZO ESTATE of which registration was applied for was similar to the earlier word mark KENZO: mark applied for consists of earlier mark + element that lacks distinctiveness. Use of appellant’s forename in mark applied for does not constitute a due cause: the weighing of the different interests involved cannot undermine the essential function of the earlier mark to guarantee the origin of the product.
Trade mark proprietor cannot oppose parallel import of a medical device in authentic inside- and outside packaging which, by its content, function, size, presentation and placement, does not give rise to a risk to the guarantee of origin of the medical device bearing the mark. Conditions from judgements Bristol-Meyers Squibb (IPPT19960711) and Boehringer (IPPT20070426) only applicable when importer has repacked product. The mere act of putting an extra label on an unprinted portion of the original packaging is not a repackaging within the meaning of these judgments. Trademark holder cannot object against parallel import of a medical tool in authentic internal- and external packaging.
No basis in EU law for the claim that the use of a national trade mark can have a legal effect after it has been renounced. Article 14 Trade Marks Directive 2008 in conjunction with Article 34 (2) EU Trade Mark Regulation precludes national legislation whereby the invalidity or revocation of an earlier national trade mark, the seniority of which is claimed for an EU trade mark, may only be established a posteriori if the trade mark can be declared invalid or null, not only at the time on which this earlier national mark was surrendered or lapsed, but also on the date on which the court's decision in which this determination takes place.
General Court has rightly found that the Board of Appeal is entitled to take account of additional evidence of use which is submitted after the time period set by the Board: addition to the evidence adduced within the time period set by EUIPO under Rule 40(6) of the Implementing Regulation which is submitted after that time remains possible, Rule 40(6) of the Implementing Regulation does not constitute a provision contrary to Article 76(2) of the EU Trade Mark Regulation, with the result that the Board of Appeal is not entitled to take account of additional evidence of use of the earlier mark in question. Cancellation Division cannot examine evidence of genuine use of the earlier mark in respect of the services for which it was considered by the Board of Appeal that that evidence had not been adduced.
The General Court correctly held that, in the context of the invalidity proceedings based on the absolute ground for refusal, the EUIPO Board of Appeal should not, in all circumstances, rule that the that evidence submitted for the first time before the Board of Appeal must be regarded as belated: it follows from case law that no reason of principle opposes to this.
Appeal against judgment of the General Court regarding genuine use of the wordmark NN dismissed by reasoned order: grounds of appeal are either manifestly inadmissible or manifestly unfounded.
The proprietor of a national trade mark cannot oppose to the import of identical goods bearing the same mark originating in another Member State in which that mark is now owned by a third party when following the assignment: the proprietor has actively and deliberately continued to promote the appearance or image of a single global trade mark thereby generating or increasing confusion on the part of the public concerned as to the commercial origin of goods bearing that mark or there exist economic links between the proprietor and that third party, inasmuch as they coordinate their commercial policies or reach an agreement in order to exercise joint control over the use of the trade mark, so that it is possible for them to determine, directly or indirectly, the goods to which the trade marks affixed and to control the quality of those goods.
National law may be applied to a claim of ownership of an EU trade mark provided that the situation concerned does not fall within those covered by Article 18 of the Community Trade Mark Regulation.
The condition laid down in Article 109(1)(a) of the EU Trade Mark Regulation as to the existence of the ‘same cause of action’ applies only in so far as those actions relate to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States. Where actions for infringement, the first on the basis of a national trade mark concerning an alleged infringement within the territory of a Member State and the second on the basis of an EU trade mark concerning an alleged infringement in the entire territory of the European Union, are brought before the courts of different Member States between the same parties, the court other than the court first seised must decline jurisdiction in respect of the part of the dispute relating to the territory of the Member State referred to in the action for infringement brought before the court first seised. The court other than the court first seised is not required to decline jurisdiction in favour of the court first seised if the actions in question no longer relate to the territory of the same Member States or if the trade marks concerned are not identical and valid for identical goods or services.
Article 99 (1) of Regulation No 207/2009 must be interpreted as meaning that an action for trademark infringement may not be dismissed on the basis of an absolute ground for invalidity, without that counterclaim for a declaration of invalidity being upheld. When the decision of the counterclaim for a declaration of invalidity has not become final, the provisions of regulation No 207/2009 do not stand in the way of an EU trade mark court dismissing an action for infringement within the meaning of article 96 a of that regulation on the basis of an absolute ground for invalidity.
Judgments CIPA v Registrar (IPPT20120619) and Praktiker Bau v Deutsche Patent und Markenamt (IPPT20050707) do not relate to earlier trade marks registered before the date of those judgments. Use of only the figurative element of a composite mark is "genuine use" if the distinctive character of the mark as registered is not altered.
Article 22(4) of Council Regulation (EC) regarding proceedings concerned with the registration or validity of an intellectual property right is not applicable to disputes about whether a person is entitled to be registered as a proprieter of a trade mark
A distinction should be made between the assessment of the conceptual differences between signs at issue and the overall assessment of their similarities, which form two distinct stages in the analysis of the overall likelihood of confusion, the being a prerequisite for the second.
IPPT20170920, CJEU, The Tea Board v EUIPO
Essential function of an EU collective mark: distinguishing the goods or services of the members of the association which is the proprietor of the trademark from those of other undertakings, and not to distinguish those goods according tot heir geographical origin. Where signs are, on the one hand, collective marks and, on the other hand, individual marks, the possibility that the public might believe that the goods and services covered by the signs at issue have the same geographical origin cannot constitute a relevant criterion for establishing their identity or similarity.
General Court did not err in law by applying to the system provided for by Regulation No 1234/2007 the principles laid down by the Court of Justice provided for by Regulation No 510/2006. General Court erred in law in holding that the protection conferred on protected designations of origins and geographical indications under Regulation No. 1234/2007 may be supplemented by the relevant national law granting additional protection. General Court was entitled to hold, without erring in law, that the mark PORT CHARLOTTE could not be regarded as using the designation of origin ‘Porto’ or ‘Port’. No error in law in judgment that the average consumer will not associate the mark with a port wine covered by the designation of origin in question.
General Court made no error in law by holding that the Board of Appeal was fully entitled - after a global assessment - to conclude that there was no likelihood of confusion between the marks at issue. Other grounds of appeal are manifestly unfounded because they concern factual assessments of the General Court or are otherwise unfounded.
The view of the General Court regarding the distinctiveness of an earlier mark is based on an error in law: it is clear from the brochures provided by Michelin that the stylised letter ‘x’ is used, in isolation or in combination with other letters, to designate a technical characteristic of Michelin tyres. Appeal dismissed in its entirely despite error in law: the operative part of the judgment is shown to be well founded on other legal grounds.
The fact that EU trade mark and national mark peacefully coexist in part of the European Union does not allow the conclusion that in another part of the European Union, where peaceful coexistence between that EU trade mark and the sign identical to that national mark is absent, there is no likelihood of confusion. The European Union trade marks court hearing an infringement action, may take into account a part of the European Union not covered by that action, provided that the market conditions and the sociocultural circumstances are not significantly different in both of those parts of the European Union.
IPPT20170706, CJEU, Moreno Marin v Abadia Retuerta
A trade mark such as LA MILLA DE ORO – which refers to a good or service with a high degree of value which is abundantly present in a single place – cannot constitute an indication of geographical origin. To indicate a geographical origin that sign must be accompanied by a name designating a geographical place so that the actual physical space may be identified. If a good or service with a high degree of value is abundantly present in a single place, is unlikely to have characteristics the use of which as a trade mark would constitute a ground for invalidity within the meaning of article 3(1)(c) of the Directive 2008/95.
The disparagement clause violates the First Amendment’s Free Speech Clause: the disparagement clause reaches any trademark that disparages any person, group, or institution, goes much further than necessary and is far too broad. The commercial market is well stocked with merchandise that disparages prominent figures and the line between commercial and non-commercial speech is not always clear.
The use of an individual EU trade mark as a label of quality is not a genuine use. An individual trade mark cannot be declared invalid, on the basis of Article 52(1)(a) and Article 7(1)(g), because the proprietor of the mark fails to ensure, by carrying out periodic quality controls at its licensees, that expectations relating to the quality which the public associates with the mark are being met. The provisions of 207/2009 on the Community trade mark cannot be applied mutatis mutandis to individual trade marks.
IPPT20170518, CJEU, Hummel v Nike
A legally distinct second-tier subsidiary, with its seat in a Member State, of a parent body that has no seat in the European Union is an ‘establishment’, within the meaning of that provision, of that parent body if the subsidiary is a centre of operations which, in the Member State where it is located, has a certain real and stable presence from which commercial activity is pursued, and has the appearance of permanency to the outside world, such as an extension of the parent body.
The General Court erred in law by stating that the goods and services covered by the application for registration of the sign ‘Deluxe’ displayed such differences as regards their nature, their characteristics, their intended use and the way in which they are marketed that they could not be considered a homogenous category enabling the Board of Appeal to adopt a general reasoning with respect to the absolute grounds of refusal: the General Court failed to have regard to the possibility that, despite their differences, all the goods and services at issue could have a common characteristic that could justify their placement within a single homogenous group.
IPPT20170511, CJEU, Yoshida v EUIPO
Ornamental and fanciful aspects do not preclude the ground for refusal under article 7(1)(e)(ii) of EU Trade Mark Regulation (exclusively the shape of goods that is necessary to obtain a technical result), in so far as those aspects do not play an important role in the shape of goods at issue, all the essential characteristics of which must perform a technical function.Distinctiveness of a mark cannot preclude the application of the refusal ground of article 7(1)(e)(ii) of EU Trade Mark Regulation.
IPPT20170504, ECJ, August Storck v EUIPO
Case law in respect to distinctiveness of three dimensional trade marks consisting of the appearance of the product itself also applies in respect of figurative marks consisting of the two-dimensional representation of the product. General Court did not err in law in applying the case law to the present case. General Court was entitled to find that the mark representing the shape of a white, grey and blue square-shaped packaging was devoid of any distinctive character.
No error of law by the General Court in demarcating Forge de Laguiole’s business sectors in order to determine the scope of protection of the earlier business name FORGE DE LAGUIOLE: General Court did not in any way generally apply its case-law by analogy with regard to the scope of protection of trademarks applied on the scope of protection of business name, the judgment of 10 July 2012 had to be taken into account as evidence that the General Court takes the intended distribution channels into account.
General Court did not commit an error in law by granting Scooters India protection for all goods listed in the alphabetical list of class 12: the rule set out in the judgment CIPA v Registrar (IPPT20120619) on the interpretation of the application for registration is not applicable to the registration of trade marks which took place before the delivery of that judgment
Based on Article 9(1)(b) of Regulation No 207/2009, read in conjunction with Articles 15(1) and 51(1)(a) of that regulation, a proprietor may, in case of likelihood of confusion, prevent third parties from using a sign identical or similar to his mark for identical or similar goods and services within five years following registration of his EU trade mark
Trade mark proprietor cannot oppose the trade of a repackaged medicine when a) the medicine cannot be marketed in the importing State in the same outer packaging as in the exporting State and b) when the importer has demonstrated that the imported product can only be marketed in a limited part of the importing State’s market.
The General Court infringed its obligation to state reasons by presenting contradicting statements on the laudatory character of the word ‘so’ in its reasoning
The General Court did not err in law by not taking in consideration the revocation of the old trademark in the decision on likelihood of confusion.
Although the General Court has erred in law regarding the admissibility of arguments put forward by Pensa Pharma, this has no impact on the operative part of the judgment under appeal
IPPT20160922, CJEU, combit Software v Commit Business
Where an EU trade mark court finds that the use of a sign creates a likelihood of confusion with an EU trade mark in one part whilst not in another part, that court must conclude to an infringement of the exclusive right for the entire area of the Union with the exception of the part where there has been found no likelihood of confusion
The General Court was able to find, without erring in law, that the principle of res judicata did not mean that the EUIPO was bound by the judgment of the tribunal de commerce de Bruxelles: The subject matter of the proceedings was different because of the exclusive competence of EUIPO’s adjudicating bodies to authorise or refuse the registration of an EU trade mark, which is different to any proceedings before a national court.
A request for renewal relating to certain classes of goods or services (art. 47(3) Regulation 207/2009) when a request for renewal concerning other classes of goods or services covered by the same mark has been submitted previously is possible.
IPPT20160622, CJEU, Nikolajeva v Multi Protect
EU trade mark court not held to prohibit from proceeding with acts of infringement of a trademark when the proprietor of such a trade mark has not applied for such an order (Article 102 CTM-Regulation). No compensation possible in respect of acts of third parties occurring before publication for registration of a trade mark (Article 9(3) CTM-Regulation). Reasonable compensation for acts of third parties committed during the period after publication of the application for registration of the mark but before publication of its registration also refers to recovery of the profits, but it is not intended to make good all the harm, including non-material harm (Article 9(3) CTM-Regulation).
Article 5(2)(b) of Directive 2001/29 does not allow financing fair compensation from the General State Budget.
Appeal dismissed: The applicant’s arguments are essentially based on a misreading of the judgment of the General Court or concern factual findings of the General Court, which do not fall within the jurisdiction of the CJEU
Third party, who is named in an advertisement on a website, which contains a sign identical or similar to a trade mark in such a way as to give the impression that there is a commercial relationship between him and the proprietor, makes no use of the mark (Article 5(1)(a) and (b) of the Trade Marks Directive 2008) when the advertisement has not been placed by a third party or on his behalf, or if that advertisement has been placed by or on behalf of the thrid party with consent of the proprietor, where the third party has expressly requested to remove the advertisement.
The General Court carried out a global assessment. To assess the degree of similarity between marks, it is necessary to determine the degree of visual, aural or conceptual similarity to between them. Once proof of the reputation of a mark has been made out, it is irrelevant to the prove the inherent distinctive character.
Unregistered license Community trade mark may bring proceedings alleging infringement
In the Securvita case, there is no general rule for assessing the ancillary nature of a sequence of letters which reproduces the first letter of each of the words in the word combination with which it is juxtaposed. The relevant public’s perception varies according to whether what is being assessed is the descriptiveness of a sign or the existence of a likelihood of confusion. In the case of identical or similar goods and services, there may be a likelihood of confusion on the part of the relevant public between an earlier mark of average distinctiveness, and a later mark which reproduces that letter sequence and which is added a descriptive combination of words, with the result that that sequence is perceived by that public as the acronym of that combination of words.
For the annulment of a shape it has to be covered by one or more grounds of refusal. Exclusion of a for a technical result necessary shape of goods, must be interpreted as referring only to the manner in which the goods are manufactured. Integration: applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for as originating from a particular company.
Mark with reputation of earlier Community mark: must have reputation in substantial part of the EU, may coincide with territory of single Member State. Criteria concerning genuine use are not relevant in order to establish the existence of a ‘reputation’. Proprietor of the earlier Community trade mark who already acquired a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, can oppose against a later national mark (1) when commercially significant part of public is familiar with the older mark and makes a connection with the later mark and there is an actual and present injury (2) or a serious risk that such injury may occur in the future.
Economic operator who is importing without the consent of the proprietor and placing those goods under duty suspension arrangement must be classified as ‘using in the course of trade any sign which is identical with the trade markt in relation to goods..’ The proprietor of a trade mark may oppose, according to Article 5 of Directive 89/104, a third party placing goods bearing that trade mark under the duty suspension arrangement after they have been introduced into the EEA and released for free circulation without the consent of that proprietor.
IPPT20150625, CJEU, Loutfi v AMJ Meatproducts
Likelihood of confusion: in the assessment of the likelihood of confusion between marks with Arabic words, the definition and pronunciation should be considered if the relevant public has knowledge of written Arabic.
EGC itself examined whether there was any concrete evidence and did not impose the burden of proving the existence of such evidence on the appellant. EGC has not failed to describe the norms and customs of the alcoholic and non-alcoholic beverages sector. The General Court rightly considered whether the contested mark departs significantly from the norm of customs of the sector. Wrongly stated that EGC when assessing distinctiveness did not examine overall impression. EGC did not confine its analysis of the three-dimensional sign at issue to a comparison of the shape of that sign with a two-dimensional feature. That the EGC would have considered that trade mark that is made up only of components which are not devoid of distinctive character in relation to the goods concerned generally leads to the conclusion that that trade mark, taken as a whole, is devoid of distinctive character.
IPPT20150319, CJEU, Mega Brands v OHIM
Purely descriptiveness: purely descriptive element does not preclude from being acknowledged as dominant for the purposes of assessing the similarity of the signs at issue.
IEPT20141120, CJEU, Intra-Presse v BHIM
Likelihood of confusion: the General Court should have determined whether the low degree of similarity was nevertheless sufficient, on account of the presence of other relevant assessment factors (such as the reputation or recognition enjoyed by the earlier mark), for the public to make a link between those two marks
IPPT20140710, CJEU, Apple v Patent und Markenamt
Layout of a store: presentation which depicts the layout of a store may constitute a trade mark, even if it does not contain any indication of the sizes and proportions of the presentation. Registration: also legitimate for services that do not form an integral part of the offer for sale of those goods.
IPPT20140710, CJEU, Netto Marken-Discount v Patent Markemant
Services: bringing together services so that the consumer can conveniently compare and purchase them may come within the concept of ‘services’ ex art. 2 Trade Marks Directive. Formulation of trade mark: formulation of application for service of the bringing together must be clear and precise so as to allow the competent authorities and other economic operators to know which services the applicant intends to bring together.
Safener must be interpreted as ‘product’ and ‘active substances’ in ABC-Vo if the substance has a toxic, phytotoxic or plant protection action of its own.
IPPT20140619, CJEU, Oberbank en Santander Consumer Bank v DSGV
Distinctive character through integration of contourless colour marks cannot be determined solely based on consumer survey with a degree of recognition of at least 70%. Invalidity: trade mark kan be declared invalid when proprietor fails to show that distinctive character was acquired prior to application for registration.
General Court is allowed to obtain information ex officio about the content, conditions and scope of application by the applicant of the annulment of invoked national rules. General Court infringed adversary proceeding by basing judgment on national law and not putting the parties in a position to submit their observations.
When examining whether a sign consists exclusively of the shape of goods which is necessary to obtain a technical result, the competent authority may take into account the actual use made of the trade mark following its registration.
Becoming a common name for end users of that product can be sufficient ground for revocation of a trade mark. The fact that the proprietor of a trade mark does not encourage sellers to make more use of a trade mark in marketing a product may be classified as ‘inactivity’ by the proprietor.
Due cause: may also relate tot the subjective interest of a third party using a sign which is identical or similar to the mark with a reputation and is intended is intended to strike a balance between the interest in question, not to resolve a conflict between a mark with reputation and a similar sign.
Article 7(1)(c) of the EU Trade Mark Regulation pursues an aim in the general interest that signs or indications which may serve to designate the characteristics of the goods or services may be freely used by all.
IPPT20140123, CJEU, OHIM v WeserGold
Likelihood of confusion: if it is determined that marks are not similar and the likelihood of confusion is therefore excluded, increased distinctiveness as a result of the use of earlier marks cannot not offset the lack of similarity between the marks at issue.
IPPT20131212, CJEU, Rivella v BHIM
Term ‘earlier national trade mark: refers to all marks that have effect in a Member State, irrespective of the national or international registration.
IPPT20131114, CJEU, Environmental Manufacturing v OHIM
Risk of dilution reputed trade mark requires evidence of a change in economic behaviour: proof that the use of the later mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered.
Change in economic behavior is an objective condition: the change cannot be deduced solely from subjective elements such as consumers’ perceptions.
Risk of dilution: required serious risk of detriment to distinctive character based on logical deductions, which must not be the result of mere suppositions, but must be founded on ‘an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case’.
IPPT20131017, CJEU, Isdin v OHIM
General reasoning ground: general reasoning ground for refusal mark insufficient in respect of non-homogeneous groups of goods or services within the same class.
IPPT20131003, CJEU, Rintisch v OHIM – Proti Snack
Evidence submitted after expiry of period specified: the submission of evidence after the expiry of the period specified for that purpose by OHIM, in order to establish the existence, validity and scope of protection of the earlier mark, entails the rejection of the opposition, and the Board of Appeal has no discretion in that regard.
Appeal: the appeal must state precisely the contested elements and legal arguments, failing which the plea is inadmissible.
IPPT20131003, CJEU, BKK v Wettbewerbszentrale
Terms of provision: terms of a provision of EU law which makes no express reference to the law of the Member States must be given an autonomous and uniform interpretation throughout the European Union, taking into account the context of the provision and the purpose of the legislation in question.
Trader: public body entrusted with a task of general interest, such as management of compulsory health insurance is a “trader” within the meaning of the Unfair Commercial Practices Directive.
IPPT20130919, CJEU, Martin Y Paz v Fabriek Maroquinerie Gauquie
- the national court may not limit exclusive right in a manner which exceeds limitations arising from Articles 5 to 7.
- upon lapse of trade mark proprietor’s consent to shared use with a third party, proprietor should be able to assert the exclusive right conferred upon it by those marks against that third party and exercise that exclusive right in respect of the goods
Harmonization: complete harmonization of trade mark rules in Articles 5 to 7 of Trademarks Directive
IPPT20130718, CJEU, Specsavers v Asda
Genuine use of registered trade mark: used only in conjunction with a word mark which is superimposed over it is possible, to the extent that the differences between used and registered do not change the distinctive character.
Association of the public: fact that significant portion of public associates a color with third party is relevant for the global assessment of (i) likelihood of confusion, (ii) unfair advantage or (iii) allegedly infringing sign.
IPPT20130718, CJEU, New-Yorker v OHIM
Submission of additional proof of use of mark permissible through use of discretion conferred upon OHIM: OHIM is in no way prohibited from taking account of evidence submitted out of time through use of the discretion conferred on it.
IPPT20130718, CJEU, Daiichi Sankyo and Sanofi Aventis v DEMO
Article 27 of the TRIPs Agreement falls within the field of the common commercial policy
Article 27 of the TRIPs Agreement concerns patentability, not the protection conferred
Pharmaceutical process patent does not, by reason of rules set out in Articles 27 and 70 TRIPs, have to be regarded from the entry into force of the agreement as covering the invention of pharmaceutical product
IPPT20130627, CJEU, Malaysia v Dairy
“Bad faith” is an autonomous concept of European law which must be given uniform interpretation. Irrelevant that the concept is optional.
No room for specific, deviating domestic systems of protection based on knowledge of foreign mark.
Knowledge of third party’s foreign use of mark which is liable to be confused insufficient to determine bad faith.
IPPT20130418, CJEU, Colloseum v Levi Strauss
Genuine use of a registered trademark constituting one of the elements of a composite mark is possible
No jurisdiction based on place where a harmful event occurred which is imputed to a presumed co-perpetrator of damage with respect to other presumed perpetrators
IPPT20130221, CJEU, FCI v FCIPPR
Opposition against a later registered Community trademark possible without the need for a declaration of invalidity beforehand
The mere fact that there are multiple trade mark registrations within the EU including the word ‘seven’ or number ‘7’ is not sufficient to establish the weak distinctive character of those marks.
Genuine use in the Community: territorial borders of Member States should be disregarded
Genuine use trademark by use in a different form without altering the distinctive character, even if different form is registered as (defensive) trademark
Communication of OHIM to opposing party that opposition is admissible, is not simply a procedural measure but a decision which may only be revoked or annulled in accordance with Trademark Regulation
Contractual partner who is solely authorised by proprietor trade mark to register eu-domain name, but not authorised to commercial use, is not a “licensee of prior rights” for purposes of eu-domain name registration
Goods and services classification needs to be sufficiently clear and precise; use of general indications of class headings not precluded, but in principle specification of particular goods and services required. Permitted test case: actual lodged application for registration of trade mark and objective need seeking national body, inherent in outcome of case pending before it.
Ruling on proper grounds that sign consisting of shape of a rabbit with red ribbon is devoid of any distinctive character. Registrations already made in Member States may be taken into account, but OHIM under no obligation to follow national assessments in relation to Community trade mark
IPPT20120524, CJEU, Formula One v OHIM
General Court has incorrectly ruled in opposition proceedings that ‘F1’ element in national trademark is generic, descriptive and devoid of any distinctive character. Validity of national trade marks not to be questioned during opposition proceedings Community trade mark. Distinctive character national trade mark is presumed
IPPT20120510, CJEU, L’Oréal v OHIM
Actual and present harm to mark is required, which can be based on prima facie evidence of a future risk, which is not hypothetical. Reputation of the trade mark Botox with respect to each of the categories comprising the relevant public. Reputation examined in relation to the entire territory of the United Kingdom
Actions relating to trade mark infringement by use of Adwords may be brought before courts of Member States in which the trade mark is registered or of the place of establishment of the advertiser
Combination of descriptive words and abbreviations is devoid of distinctive character
Nike ought to have been granted an opportunity to prove the transfer of the earlier right R10 on which it relied in order to show that it had locus standi
Service provider filling under order packaging to which the sign is affixed does not itself make use of the sign: Having regard to the foregoing considerations, the answer to the first question is that Article 5(1)(b) of Directive 89/104 must be interpreted as meaning that a service provider who, under an order from and on the instructions of another person, fills packaging which was supplied to it by the other person who, in advance, affixed to it a sign which is identical with, or similar to, a sign protected as a trade mark does not itself make use of the sign that is liable to be prohibited under that provision. Customer liable for services attributable to it
Likelihood of confusion (i) not subject to overall impression being dominated by earlier mark, (ii) but subject to signs being similar or identical. Degree of renown irrelevant to determine similarities between signs.
Article 8(5): Reputation and distinctive character relevant factors for making a link between marks not for similarity, not for assessment of similarity. Also for assessing similarity with a word mark, degree of visual and conceptual similarity needs to be determined. Existence of family or series of trade marks irrelevant for assessment of similarity, but relevant for likelihood of confusion.
Incorrect automatic exclusion of marks consisting of the appearance of the packaging of the product itself that do not contain an inscription or a word element
Essential function of indicating origin and other functions. Use of trade mark in keyword advertising may adversely affect the indication of origin function and investment function but not the advertising function. Protection of trade mark with a reputation against key word advertising in case of freeriding or tarnishment: advertising based on keyword.
Acquiescence: required that proprietor was in a position to oppose use; registration or earlier mark not required, but registration in good faith of later mark and knowledge thereof are requirements. Cancellation of later trade mark not possible in case of long period of honest concurrent use in circumstances that does not have adverse effect on the guarantee of the origin of the goods.
Trademark Law - free movement of goods: Indication of market authorisation holder responsible for repacking instead of actual repackager allowed
Refilling gas bottles generally not an infringement of trademark rights: that the holder of an exclusive licence for the use of composite gas bottles intended for re-use, the shape of which is protected as a three-dimensional mark and to which the holder has affixed its own name and logo that are registered as word and figu-rative marks, may not prevent those bottles, after consumers have purchased them and consumed the gas initially contained in them, from being ex-changed by a third party, on payment, for compos-ite bottles filled with gas which does not come from the holder of that licence, unless that holder is able to rely on a proper reason for the purposes of Arti-cle 7(2) of Directive 89/104.
Invalidation of trade mark with protected geographical indication [cognac] in case of commercial use in respect of comparable products, exploiting the reputation or misuse.Retroactive effect Regulation on geographical indications for spirit drinks regarding trade mark registrations
No use of trademark by operator of an online marketplace. Nu use "in the course of trade" when an individual sells a productthrough an online marketplace and the transaction does not take place in the context of a commercial activity. Territorial scope: Infringement if offer for sale or promotion of non-EU goods is for consumers within the Union. Sample products: not put on the market. Removal of packaging: infringement if essential information is missing or the reputation of the trade mark is damaged. Infringing use of a trademark in keyword advertisin: when the advertising is unclear or whether the goods concerned originate from the proprietor of the trade mark or from an undertaking economically linked to that proprietor or, on the contrary, originate from a third party. No liability of operator of online marketplace when there is no active role and a "notice and take-down" policy. Court order against operator of an online marketplace regarding future infringements possible.
Invalid trade mark Elio Fiorucci because of an earlier “right to a name”, broad interpretation: As regards the wording of that provision, it should be noted that the words ‘right to a name’ do not provide any support for the restrictive interpre-tation proposed by the appellant, to the effect that the provision concerns only that right as an attrib-ute of personality and does not cover commercial exploitation of a name.
Admissibility; likelihood of confusion is an ssue of fact, but failure to take all factors relevant to the case into account constitutes an error of law. Uni serial mark; Judgment of General Court on lack of association between the trade marks applied for with the earlier series of UNI-marks and likelihood of confusion insufficiently examined and substantiated
Community trade mark: as a rule European wide prohibition, unless use does not affect the functions of the trade mark. Prohibition extends, as a rule, to the entire area of the EU. Limitation of territorial scope required in case the use of the sign at issue does not affect or is not liable to affect the functions of the trade mark, for example on linguistic grounds. Periodic penalty payment community trade mark court, or equivalent national provisions, has effect in Member States to which the territorial scope of such a prohibition extends.
Opposition on ground of a sign used in the course of trade of more than mere local significance. General Court erred in holding (i) that the significance of the sign concerned, which cannot be merely local, must be evaluated exclusively by reference to the extent of the territory in which the sign is protected, without taking account of its use in that territory, (ii) that the relevant territory for the purpose of evaluating the use of that sign is not necessarily the territory in which the sign is protected and, (iii) that the use of the sign does not necessarily have to occur before the date of the application for registration of the Community trade mark.
Numerals particularly suitable to describe a characteristic e.g. content. Given that such signs are generally equated with numbers, one of the things that they can do, in trade, is to designate a quantity. Need to keep free: Actual use as usual means of designation not required. Rules governing the exercise of powers by BHIM: the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality.
Distinctive character: Whether a sign is capable of distinguishing as a trademark has to be assessed in the context of an examination, based on facts. It is not open to OHIM, without relevant justification, to rely on conjecture or mere doubts. OHIM is required to examine, of its own motion, the relevant facts – no reversal of burden of proof
IPPT20100902, CJEU, Calvin Klein v OHIM
Conduct of applicant not relevant in case of opposition ex article 8 TM Reg. Where there is no similarity the reputation or goodwill of older mark is irrelevant. No similarity because of different overall impression of mark "Creaciones Kennya". Similarity required for taking unfair advantage of or being detrimental to repute of mark
IPPT20100729, CJEU, Anheuser-Busch v BHIM - Budweiser
Burden of proof: Agency competent to require proof that an earlier mark has been renewed, but proof that an earlier mark has been renewed won’t be given spontaneously. New plea which extends the subject-matter of the dispute cannot be introuduced in appeal
IPPT20100708, CJEU, Portakabin v Primakabin
Use of key word infringing in case of adverse effect on the function of indicating origin. Use prohibited by article 5 will generally not be in accordance with honest practices in industrial or commercial matters. Exhaustion: Use of mark permitted unless there is a legitimate reason.
Assesment of conceptual similarity: the General Court erred in law in basing its assessment of the conceptual similarity of the marks on general considerations taken from the case-law without analysing all the relevant factors specific to the case, in disregard of the requirement of an overall assessment of the likelihood of confusion, taking account of all factors relevant to the circumstances of the case, and based on the overall impression produced by the marks at issue.
IPPT20100615, GCEU, X Technology Swiss v OHIM
Inherently distinctive character unsubstantiated: there is nothing to suggest that any commercial success of the applicant would have been due to the fact that the orange colouring of the toes of the socks which it manufactures would have been perceived by the relevant public as being inherently distinctive.
Bad faith EU-domain name registration: must be interpreted as meaning that bad faith can be established by circumstances other than those listed in Article 21(3)(a) to (e) of that regulation.That, in order to assess whether there is conduct in bad faith within the meaning of Article 21(1)(b) of Regulation No 874/2004, read in conjunction with Article 21(3) thereof, the national court must take into consideration all the relevant factors specific to the particular case and, in particular, the conditions under which registration of the trade mark was obtained and those under which the .eu top level domain name was registered
Consent – exhaustion – not likely in case of perfume testers with a prohibition on sale: In circumstances such as those of the main proceedings, where ‘perfume testers’ are made available, without transfer of ownership and with a prohibition on sale, to intermediaries who are contractually bound to the trade mark proprietor for the purpose of allowing their customers to test the contents, where the trade mark proprietor may at any time recall those goods and where the presentation of the goods is clearly distinguishable from that of the bottles of perfume normally made available to the intermediaries by the trade mark proprietor, the fact that those testers are bottles of perfume which bear not only the word ‘Demonstration’ but also the statement ‘Not for Sale’ precludes, in the absence of any evidence to the contrary, which it is for the national court to assess, a finding that the trade mark proprietor impliedly consented to putting them on the market.
Use of trade marks as keywords in search engine advertising service: Proprietor is entitled to prohibit in the case where that ad does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.
Use of trade marks as keywords in search engine advertising service: That the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has. No use of the sign by internet referecing service provider. Internet referencing service provider not liable when it has played a passive role.
‘Color Edition’ is normal construction of words: The association of the terms ‘color’ and ‘edition’ was not unusual but a normal construction in light of the lexical rules of the English language and the mark did not therefore create an impression sufficiently far removed from that produced by the simple juxtaposition of the verbal elements of which it was composed to alter its meaning or scope.
Advertising slogan can be a mark: Distinctive character advertising message: In particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public.
The consent to the marketing of goods bearing the mark carried out directly in the EEA by a third party who has no economic link to the pro-prietor may be implied, in so far as such consent is to be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his exclusive rights.
Trade mark with a reputation: The territory of the Member State in question may be considered to constitute a substantial part of the territory of the Community.
Opposition: Evidence of genuine use earlier trademark: The Board of Appeal referred, in particular, to advertisements showing images of Budvar beer bearing the mark BUDWEISER, to invoices sent to customers in Germany and Austria and to the fact that those advertisements and invoices related to the relevant period. Stated reasons for obvious similarities beer and malted non-alcoholic beverages.
The Court of First Instance attributed to the figurative element of the marks at issue the character of a dominant element in relation to the other elements comprising those marks, in particular the word element. That enabled it correctly to base its assessment on the similarity of the signs and on the existence of a likelihood of confusion between the marks La Española and Carbonell by giving the visual comparison of those signs an essential character.
Protection of State emblems is not subject to there being a connection, in the mind of the public, between the trade mark for which registration is sought and the emblem. Registration of a trade mark must be refused, whether the application concerns goods or services, where one of the grounds for refusal listed in Article 6ter of the Paris Convention applies to it.
No adverse affect Geographical Indications Regulation 1347/2001 on pre-existing Bavaria trademarks. Geographical Indications Regulation 1347/2001 valid
For purposes of customs action, an internationally registered trade mark and a Community trade mark have the same effects.
Unfair advantage where the third party seeks to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark. The proprietor of a trade mark is entitled to prevent the use by a third party, in an unlawful comparative advertisement even where such use is not capable of jeopardising the essential function of the mark.
Registration in bad faith: Take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application: (i) the fact that the applicant knows or must know that a third party is using an identical or similar sign (ii) the applicants intention to prevent that third party from continuing to use the sign, and (iii) the degree of legal protection enjoyed by that third party's sign and by the sign for which registration is sought.
IPPT20090507, ECJ, Waterford Wedgwood v Assembled Investments
Article 8(1)(b) – similarity between goods or services required: Since the Court of First Instance foundthat the goods in question were not similar, one of the condi-tions necessary in order to establish a likelihood of confusion was lacking
IPPT20090429, CFI, Borco-Marken v OHIM
Letters as such – without graphical ornamentations– can have distinctive character.
Concrete examination of distinctive character required. Need of availability of signs does not preclude the need of examination of capability to identify as originating from a particular undertaking
It is conceivable that the sale of luxury goods by the licensee to third parties that are not part of the selective distribution network might affect the quality itself of those goods, so that a contractual provision prohibiting such sale must be considered to be falling within the scope of Article 8(2) of the Directive. No exhaustion in the case of sale of goods bearing the trade mark in disregard of a clause in the licence agreement.
IPPT20090312, ECJ, Antarctica v OHIM - Nasdaq
Use of a mark: seeking to create or maintain an out-let for services.Taking unfair advantage of earlier mark: Required that the relevant public establishes a link between the earlier and later mark; no confusion required. Relevant public: average consumers of the goods or services for which the later mark is requested, who are reasonably well informed and reasonably observant and circumspect
Right of the proprietor of a registered mark to prevent the use by a third party of a sign which is identical to the mark. The fact that the third party at issue uses a sign which is identical with a registered mark in relation to goods which are not its own goods, in that it does not have title to them, is not relevant and can there-fore not mean by itself that that use does not fall under the concept of ‘use’ for the purpose of Article 9(1) of Regulation No 40/94.
Genuine use: Where the proprietor of a mark affixes that mark to items that it gives, free of charge, to purchasers of its goods, it does not make genuine use of that mark in respect of the class covering those items.
Where repackaging is necessary the packaging should be assessed only against the condition that it should not be liable to damage the reputation. It is for the parallel importer to furnish the proprietor of the trade mark with information to enable the latter to determine whether the repackaging is necessary. This information may not be used to enable the trade mark proprietor to detect weaknesses in his sales organisation.
Counteraction of similarities: Case-law shows that the global assessment of the likelihood of confusion implies that conceptual differences between two signs may counteract aural and visual similarities between them, provided that at least one of those signs has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately.
Genuine use by a non-profit-making association: A trade mark is put to genuine use where a non-profit-making association uses the trade mark, in its relations with the public, in announcements of forthcoming events, on business papers and on advertising material and where the association’s members wear badges featuring that trade mark when collecting and distributing donations.
Trade marks with a reputation: Interpretation of a "link" between the earlier mark and the later mark. Use which takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier trade mark
Lego trademark invalid: Essential characteristics of shape consisting exclusively of intended technical result, even if that result can be achieved by other shapes using the same or another technical solution. The essential characteristics of a shape must be determined objectively, on the basis of its graphic representation and any descriptions filed at the time of the application for the trade mark perception consumer is not relevant.
Where OHIM is unable to prove that a document has been duly notified, or if provisions relating to its notification have not been observed, but that document has reached the addressee, OHIM may produce proof of the date of receipt and that the document is deemed to have been notified on that date.
Succesful opposition: Weak inherent distinctive character does not preclude acquiring distinctive character when a mark is well known. Evidence of distinctive character: Account may be taken of evidence which, although subsequent to the date of filing the application, enables the drawing of conclusions on the situation as it was on that date.
Use of a mark in comparative advertisement is not permitted when there is likelihood of confusion. The proprietor of a registered trade mark is not entitled to prevent the use of the mark in comparative advertising where such use does not give rise to a likelihood of confusion.
Eurohypo does not have a distinctive character: No additional element to make the combination, created by the current and usual components EURO and HYPO, unusual or have its own meaning which distinguishes the services offered by the appellant from those of a different commercial origin.
The requirement of availability cannot be taken into account in the assessment of the scope of the exclusive rights of the proprietor of a trade mark, except in so far as the limitation of the effects of the trade mark defined in Article 6(1)(b) of the Directive applies.
The earlier trade mark must be well known throughout the territory of the Member State of registration or in a substantial part of it - Directive 89/104/EEC – Article 4(2)(d) – Knowledge of the trade mark – Geographical area.
It is possible not only that, because of linguistic, cultural, social and economic differences, a trade mark which is devoid of distinctive character in one Member State is not so in another Member State, but also that a mark devoid of distinctive character at Community level is not so in a Member State.
Court of First Instance based its assessment as to whether the mark applied for has distinctive character on the overall impression which is conveyed by the shape and the arrangement of the colours of that mark, and, second, that it established that that mark does not make it possible to distinguish the product from those of competitors in the sector in question.
That products coming within the definition of ‘medicinal products’ in Article 1(2) of Directive 2001/83 which are not mentioned in the Annex to Regulation No 2309/93, now replaced by the Annex to Regulation No 726/2004, must be registered under one of the procedures laid down in the aforementioned directive.
The shape of a product which gives substantial value to that product cannot constitute a trade mark where attractiveness of a shape acquired prior to the date of application for registration on account of recognition of it as a distinctive sign.
Registration of the trade mark BAINBRIDGE – Opposition by the proprie-tor of earlier national trade marks all having the component ‘Bridge’ in common – Opposition rejected – Family of trade marks – Proof of use – Concept of ‘defensive trade marks’.
Articles 5(1)(a) and 6(1)(a) of First Di-rective 89/104/EEC – Right of the proprietor of a registered trade mark to oppose the use by a third party of a sign which is identical to the mark – Use of the sign as a company, trade or shop name – Right of the third party to use his name.
Obstacles having a direct relationship with a trade mark which make its use impossible or unreasonable and which are independent of the will of the proprietor of that mark constitute ‘proper reasons for non-use’ of the mark.
Regulation (EC) No 40/94 – Article 8(1)(b) – Likelihood of confusion – Application for a figurative Community trade mark with the word elements ‘Limoncello della Costiera Amalfitana’ and ‘shaker’ – Opposition by the proprietor of the national word mark LIMONCHELO.
Regulation (EC) No 40/94 – Article 8(1)(b) – Relative ground for refusal of registration – Likelihood of confusion – Article 43(2) and (3) – Genuine use – New plea – Word mark ‘TRAVATAN’ – Opposition by proprietor of earlier national trade mark ‘TRIVASTAN’.
Repackaging of the product bearing the trade mark: the repackaging of the pharmaceutical product be necessary for its further commercialisation, as one of the conditions is directed solely at the fact of repackaging and not at the manner and style of the repackaging.
It does not follow from the Court’s case-law that the prior analysis of each of the elements of which a mark is composed is an essential step - its distinctive character may be assessed in relation to each of its elements depend on an appraisal of the whole which they comprise.
IPPT20070315, ECJ, T.I.M.E. v OHIM
Fact that earlier mark is only of weak distinctive character is not of overriding importance. Entitled to consider whether any of the marks has a clear and specific meaning. Marketing circumstances may not be taken into account since these may vary in time
The Board of Appeal is required to take account of the facts and evidence submitted for the first time by the party opposing an application for registration of a mark in the written statement lodged in support of its appeal before that board against a decision given by an Opposition Division.
Directive 89/104/EEC – Application for registration of a trade mark for a range of goods and services – Examination of the sign by the compe-tent authority – Taking account of all the relevant facts and circumstances – Jurisdiction of the national court seised of an action.
Right of a trade mark proprie-tor to prevent use by a third party of a sign identical or similar to the trade mark – Trade mark registered for motor vehicles and for toys – Reproduction of the trade mark by a third party on scale models of that make of vehicle.
Three condition for a sign: trademark must be (a) a sign; (b) that sign must be capable of being represented graphically; and (c) the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. Transparent bin or collection chamber forming part of the external surface of a vacuum cleaner.
Trademark application is a possession: a set of proprietary rights that were recognized under Portuguese law, even though they could be revoked under certain conditions.
Article 98(1) of Regulation (EC) No 40/94 – Obligation of a Community trade mark court to issue an order prohibiting a third party from proceeding with such acts – Definition of ‘special reasons’ for not issuing such a prohibition – Obligation of a Com-munity trade mark court to take such measures as are aimed at ensuring that such a prohibition is complied with – National legislation laying down a general prohibition of infringement or threatened infringement coupled with penalties.
Articles 10 EC , 81 EC and 82 EC do not pre-clude a Member State from adopting a legislative measure which approves a scale fixing a minimum fee for members of the legal profession from which there can generally be no derogation.
Trade mark proprietor can prohibit transit of goods bearing the trade mark to a Member State where the mark is not protected only if the goods are subject to the act of a third party which necessarily entails their being put on the market.
IPPT20060913, CFI, MIP Metro v OHIM – Tesco Stores
Purpose relatieve grounds and apposition. Two angels: The possibility of such a conflict must be consid-ered from two different angles. with regard to the substantive scope of the abovementioned provi-sions, the earlier mark and the mark applied for must be identical or similar, as must the goods or services des-ignated by those marks, so that confusion may arise between the two signs. Concerning the temporal scope of those provi-sions, both those marks must co-exist for a certain period. OHIM may request the opponent to submit facts, evidence and argument.
Trade mark has to acquire distinctive character through use throughout the territory of the Member State or, in the case of Benelux, throughout the part of the territory of Benelux in which there exists a ground for refusal. If the ground for refusal exists only in one of the linguistic areas, it must be established that the mark has acquired distinctive character through use throughout that linguistic area.
Accordingly, the Court of First Instance is obliged to reject as inadmissible a head of claim in an application brought before it if the essential matters of law and of fact on which the head of claim is based are not indicated coherently and intelligibly in the application itself.
That the rule of exclusive jurisdiction laid down therein concerns all proceedings relating to the registration or validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection.
The Board of Appeal did not err in law in finding that “the configuration of the mark in question (…) did not fundamentally stand out against the other usual presentations in the trade”, and, that the wrapping at issue ‘is not substantially different’ from wrappers for sweets or caramels commonly used in trade.
Likelihood of confusion – Application for Community word mark VITAFRUIT – Opposition by the proprietor of the national word mark VITAFRUT – Genuine use of the earlier trade mark – Proof of consent of the pro-prietor for the use of the earlier trade mark – Similarity of goods.
IPPT20060427, ECJ, L’Oréal v OHIM
Distinction between distinctive character earlier mark and distinctive character of an element of a complex mark dominating the overall impression of that complex mark
That Article 5(1) of Directive 89/104 must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used.
IPPT20060330, ECJ, Emanuel v CSL
Trademark not deceiving the public only because it contains the name of the designer and first manufacturer, in particular where goodwill has been assigned together with the business
IPPT20060323, ECJ, Mülhens v OHIM
Likelihood of confusion: overall impression. Mere phonetic similarity not decisive. Neutralising phentic similarity by counteracting visual or conceptual differences
Trade mark consisting of a term borrowed from the language of another Member State in which it is devoid of distinctive character and/or descriptive of the goods in respect of which the trade mark was registered.
The conceptual differences observed between those signs may counteract the visual and phonetic similarities between them. Account must be taken of the fact that, in view of the nature of the goods concerned and in particular their price and their highly technological character, the average consumer displays a particularly high level of attention at the time of purchase of such goods.
The average consumer will see the form of drinks packaging as an indication of the product’s commercial origin only if that form may be perceived immediately as such an indication.
A trade mark proprietor cannot oppose the mere entry into the Community, under the external transit procedure or the customs warehousing proce-dure, of original goods bearing that mark which had not already been put on the market in the Commu-nity previously by that proprietor or with his
Opponent free to choose evidence. OHIM may not assume essential facts relating to the protection of earlier marks
Use of the trade is necessary in order to indicate the intended purpose of a product where such use in practice constitutes the only means of providing the public with comprehensible and complete information. Use does not necessarily mean that it is presenting it as being of the same quality as, or having equivalent properties to, those of the product bearing the trade mark.
Where the goods or services are identical there may be a likelihood of confusion where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein
The notion of general interest underlying Article 7(1)(b) of Regulation No 40/94 is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service
The distinctive character of a mark referred to in Article 3(3) of the directive may be acquired in consequence of the use of that mark as part of or in conjunction with a registered trade mark.
The concept of ‘services’ referred to by the directive covers services provided in connection with retail trade in goods. For the purposes of registration of a trade mark for such services, it is not necessary to specify the actual service(s) in question. However, details must be provided with regard to the goods or types of goods to which those services relate.
No distinctive character based on the overall impression which is conveyed by the shape and the arrangement of the colours of the mark applied for.
Goods cannot be regarded as having been put on the market where the proprietor of the trade mark has imported them, without actually selling them. A prohibition on reselling in the EEA does not mean that there is no putting on the market in the EEA.
Shape of a white transparent bottle possesses required distinctiveness to be registered as a three-dimensional mark. Registrations already made in Member States are a factor which may be taken into account for the purposes of registering a community trade mark
Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor's exclusive right to the trade mark – Alleged use of the sign as a trade name
Acquiring distinctive character colourmarks by use. In that context, a colour per se may acquire, for the goods or services in respect of which registration is sought, a distinctive character in consequence of the use which has been made of it, by virtue of Article 7(3) of Regulation No 40/94.
Appeal – Community trade mark – Phrase DAS PRINZIP DER BEQUEMLICHKEIT – Absolute ground for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94
Cumulative conditions likelihood of confusion article 8(1)(b): Having found that there was no similarity be-tween the earlier mark and the mark applied for, the Court of First Instance correctly concluded that there was no likelihood of confusion, whatever the reputation of the earlier mark and regardless of the degree of identity or similarity of the goods or services concerned.
Distinctive character: the overall impression must be considered.
Only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of that provision. Evidence must show that consumers did not need to become accustomed to the mark through the use made of it, but that it immediately enabled them to distinguish the goods or services bearing the mark from the goods or services of competing undertakings.
Court of First Instance correctly found that the BSS mark had become customary for the target public concerned and the use made of the mark had not been able to confer distinctive character on it
Distinctive character: a separate analysis of each of its elements instead of on the overall perception of that word by the average consumer.
The frequent use of trade marks consisting of a word and a number in the telecommunications sector indicates that that type of combination cannot be considered to be devoid, in principle, of distinctive character.
The assessment of the existence or otherwise of the distinctive character of a trade mark constituted by a surname, even a common one, must be carried out specifically.
Trade marks – Harmonisation of laws – Directive 89/104/EEC – Signs capable of constituting a trade mark – Combinations of colours – Colours blue and yellow for certain products used in the building trade
Three-dimensional tablets for washing machines or dishwashers – Absolute ground for refusal to register – Distinctive character
The more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character.
In cases where intermediaries participate in the distribution to the consumer or the end user of a product which is the subject of a registered trade mark, the relevant classes of persons whose views fall to be taken into account in determining whether that trade mark has become the common name in the trade for the product in question comprise all consumers and end users and, depending on the features of the market concerned, all those in the trade who deal with that product commercially.
The claim that the Court, by considering separately the elements of the trade mark applied for, failed to assess globally the likelihood of confusion, taking into account all the factors relevant to the circumstances of the case, is unfounded.
Grounds for refusal to register mark - Taking account of all the relevant facts and circumstances - Prohibition on registering a mark in respect of certain goods or services if they do not possess a particular characteristic - Word made up of components each of which describes characteristics of the goods or services concerned
For three-dimensional trade marks consisting of the packaging of goods which are packaged in trade for reasons linked to the very nature of the goods, the packaging thereof may serve to designate char-acteristics of the packaged goods, including their quality, within the meaning of Article 3(1)(c) of the Directive.
IPPT20040205, ECJ, Telefon & Buch v OHIM
Signs designating characteristics of the goods and services, having several meanings: sufficient that at least one of the possible meanings of that sign be descriptive
Public interest requires that signs and indications descriptive of the characteristics of goods or services in respect of which registration is sought may be freely used by all.
A mark consisting of a neologism composed of descriptive elements is itself descriptive of those characteristics, unless there is a perceptible difference between the neologism and the mere sum of its parts.
Genuine use: when it serves a real commercial purpose, even minimal use of the mark or use by only a single importer in the Member State concerned can be sufficient to establish genuine use within the meaning of the Directive.
Transit via Euopean Community: articles 2 and 11 of Council Regulation No 3295/94 are applicable to situations in which goods in transit between two countries not belonging to the European Community are temporarily detained in a Member State by the customs authorities of that State.
The Board of Appeal erred in finding that the three-dimensional mark applied for is devoid of any distinctive character
IPPT20031127, ECJ, Shield Mark – soundmark
Graphical representation soundmark: Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, selfcontained, easily accessible, intelligible, durable and objective;
Descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. A sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned.
It is sufficient for the degree of similarity (not being likelihood of confusion) between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link be-tween the sign and the mark.
Three conditions to determine whether a colour can be a trade mark:
A colour can be a trademark if it is (i) a sign, (ii) capable of graphic representation and (iii) capable of distinguishing the goods or services of one under-taking from those of other undertakings.
The conditions for such exhaustion must, as a rule, be proved by the third party who relies on it, unless he succeeds in establishing that there is a real risk of partitioning of national markets if he himself bears that burden of proof.
No stricter national provisions on protection against misleading advertising allowed. The advertiser is in principle free to state the brand name of rival products in comparative advertising.
The presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well informed and rea-sonably observant and circumspect. When assessing the distinctiveness of a three-dimensional shape of product trade mark a stricter test must not be applied. A trade mark which consists exclusively of a sign or indication which may serve to designate the characteristics of goods or a service must be freely available to all and not be registrable.
Global appreciation likelihood of confusion: weak distinctive character earlier mark does not mean that a complete reproduction of that mark by the mark applied for, whatever the degree of simi-larity between the signs in question, is required. Neutralising: a clear and specific meaning capable of being grasped immediately required for counteracting similarities.
A sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer. Essential function of a trade mark is to guarantee the identity of origin.
Genuine use: not merely token use - use to guarantee the identity of the origin - use which is to create or preserve an outlet for the goods or services that bear the sign - use by the trade mark proprietor or a third party with authority to use the mark - use need not always be quantitatively significant.
Marks with a reputation are not to have less pro-tection where a sign is used for identical or similar goods or services than where a sign is used for non-similar goods or services. The application of Article 5(1)(b) depends on there being a likelihood of confusion.
In respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.
A Member State may, if it sees fit, and subject to such conditions as it may determine, protect a trade mark against use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
The exercise of the trademark right must be reserved to cases in which a third party's use of the sign affects the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods. It is immaterial that in the context of that use the sign is perceived as a badge of support for or loyalty or affilia-tion to the proprietor of the mark. Post-sale confusion.
Two generic terms coupled together have to possess an additional characteristic such as to confer on the sign, taken as a whole, a distinctive character. A sign is to be refused registration where it is descriptive in the language of one Member State.
The grounds for refusal have been listed in an exhaustive manner. The criteria for assessing the distinctive character are the same for all categories of trade marks. Extensive use of a sign may be sufficient to give the sign a distinctive character.
Where the essential functional characteristics of the shape of a product are attributable solely to the technical result, Article 3(1)(e), second indent, precludes registration of a sign consisting of that shape, even if that technical result can be achieved by other shapes
Purely descriptive reference in order to reveal the characteristics of the product does not infringe the exclusive right of the proprietor of the trade mark
Article 7(2) of the Directive must be interpreted as meaning that a trade mark proprietor may rely on its trade mark rights in order to prevent a parallel importer from repackaging pharmaceutical products unless the exercise of those rights contributes to artificial partitioning of the markets between Member States.
Replacement packaging of pharmaceutical products is objectively necessary if, without such repackaging, effective access to the market concerned must be considered to be hindered as the result of strong resistance from a significant proportion of consumers to relabelled pharmaceutical products.
Exhausion - consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated. Such intention will normally be gathered from an express statement of consent.
Article 3(1)(d) only precludes registration of trade marks that have become customary in the current language or in the bona fide and established practices of the trade. It is immaterial, when that provision is applied, whether the signs or indications in question are descriptive.
Descriptiveness must be determined in relation to each word separately and in relation to the whole. Any perceptible difference from the terms used in common parlance can confer distinctive character
Protection of a registered mark depends on there being a likelihood of confusion. The reputation of a mark does not give grounds for presuming the existence of a likelihood of confusion simply because of the existence of a likelihood of association in the strict sense.
The Regulation is expressly designed to ap-ply to goods passing through Community territory from a non-member country destined for another non-member country. The external transit of non-Community goods is based on a legal fiction and had a direct effect on the internal market as there is a risk that counter-feit goods placed under the external transit procedure may be fraudulently brought on to the Community market.
Replacement of a trade mark: objectively necessary to replace the original trade mark by that of the importing Member State.
Known trademark: known by a significant part of the public con-cerned, in a substantial part of that territory.
Directive does not leave it open to the Member States to provide in their domestic law for exhaus-tion of the rights conferred by the trade mark in respect of products put on the market in non-member countries.
Likelihood of confusion: it is possible that mere aural similarity between trade marks may create a likelihood of confusion.
Geographical designation of origin - Distinctive character by means of trade acceptance: a trade mark acquires distinctive character following the use which has been made of it where the mark has come to identify the product in respect of which regis-tration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings.
The purpose of informing: use of the mark for the purpose of informing the public that he carries out the repair and mainte-nance of goods is permitted, unless the mark is used in a way that may create the impression that there is a commercial connection with the trade mark pro-prietor.
IPPT19980929, ECJ, Canon v Cannon
Distinctive character older trademark relevant - Confusion likely when public encounters different places of production, but not when public can believe the undertakings are not economically-linked.
National rules providing for world-wide exhaustion are contrary to the Directive.
European designation of origin can not be changed by national provision or protected on a national level. The provision cannot constitute a sufficient basis for interpreting the 1996 regulation as meaning that, in the absence of a footnote, each constituent part of the compound name is protected
The Commission took no account whatsoever of the fact that the name 'Feta' had been used for a considerable time in certain Member States other than the Hellenic Republic, when registering that name.
The owner of trade mark rights may prevent a third party from removing and then reaffixing or replacing labels unless (I) it is established that that would contribute to artificial partitioning of the markets between Member States (II) the relabelling cannot affect the original condition of the product (III) the presentation of the relabelled product is not such as to damage the reputation of the trade mark; and (IV) the relabeller informs the trade mark owner before the relabelled products are put on sale
IPPT19971111, ECJ, Puma v Sabel
Risk of association is no alternative for the wording 'likelihood of confusion', but serves to define its scope - No risk of confusion when the public would only associate both trademarks with one another because of their analogous semantic content.
IPPT19971104, ECJ, Dior v Evora
The proprietor of a trademark or holder of a copyright can not oppose a reseller that advertises in a way that is customary for that sector of trade, unless use of the goods seriously damages the reputation of the trademark.
The holder of a patent for a pharmaceutical product cannot oppose importation by a third party of that product from another Member State before the product could be protected by a patent in that State, unless the holder of the patent can prove that he is under a legal obligation to market the product in that Member State.
Interpretation of the principle of exhaustion in line with earlier case law of the ECJ -repackaging of pharmaceuticals
Interpretation of the principle of exhaustion in line with earlier case law of the ECJ - repackaging of pharmaceuticals
Free movement of goods precludes the use of trade-mark rights in order to prevent the free movement of a product bearing a trade mark whose use is under unitary control.
Exhaustion of trademark rights free movement of goods: the proprietor of a trade mark in a Member State may oppose the importation of similar goods law-fully bearing an identical trade mark even if the mark under which the goods in dispute are imported originally belonged to a subsidiary that was acquired by a third undertaking following the expropriation of that subsidiary
Trade mark lawfully affixed to a product in a member state - repackaging by a third party and importation into another member state.
IPPT19810122, ECJ, Dansk Supermarked v Imerco
Judicial authorities may not prohibit, on the basis of a copyright or of a trade mark, the marketing of a product if that product has been lawfully marketed on the territory of another member state by the proprietor of such rights or with his consent. Mere import cannot be classiefied as unfair commercial practice, either by law or by agreement
The proprietor of a trade-mark is justified in preventing a product from being marketed by a third party even if previously that product has been lawfully marketed in another member state under another mark held in the latter state by the same proprietor.
Trade-mark proprietor can prevent repackaging, unless (i) that contributes to the artificial partitioning of the markets between member states, (ii) the repackaging cannot adversely affect the original condition of the product, (iii) the proprietor receives prior notice, and (iv) it is stated on the new packaging by whom the product has been repackaged.
IPPT19766022, ECJ, Terrapin v Terranova
Free movement of goods: Import of products of an undertaking in another member state can be prohibited by virtue of a right to a trademark and a right to a commercial name, provided that there are no agreements restricting competition and no legal or economic ties between the undertakings exist.
IPPT19760615, ECJ, EMI v CBS
Trademark owner can exercise trademark rights against products bearing the same mark, which is owned in a third country, provided that the exercise is not the result of an agreement or concerted practice to isolate or partition the common market.
IPPT19741031, ECJ, Centrafarm v Winthrop
Exercising trademark rights to prohibit sale of a product marketed in another member state with the trademark owner's consent is incompatible with the free movement of goods.
IPPT19710218, ECJ, Sirena
Prohibition on cartels is applicable to exercising a trademark right to distort import from other member states when the trademark or trademark license is aquired by means of an agreement. A trademark as such does not constitute a domi-nant position; also necessary that the proprietor should have power to impede the maintenance of effective competition over a con-siderable part of the relevant market. Price difference may be a determining factor to disclose abuse.
IPPT19660713, ECJ, Grundig v Consten
Exercising trademark rights in order to set obstacles for parallel imports, is not in accordance with the community rules on competition - Agreement concerning national registration GINT trademark, which result in unlawful obstacles for parallel imports, is prohibited under the EC Treaty.