than - Europa.eu

Transcription

than - Europa.eu

OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
TRADE MARKS DEPARTMENT
Guidelines Concerning Proceedings before the
Office for Harmonization in the Internal Market
(Trade Marks and Designs)
Part C:
OPOSITION GUIDELINES
Final version
Status: March 2004
Opposition Guidelines, Part 1 – Status: March 2004
Page 1
INDEX
PART 0
INTRODUCTION
PART 1
PROCEDURAL MATTERS
PART 2
CTMR)
IDENTITY / LIKELIHOOD OF CONFUSION (Art. 8 (1)
PART 3
TRADE MARK FILED BY AN AGENT (Art.8(3) CTMR)
PART 4
NON-REGISTERED RIGHTS (Art. 8 (4) CTMR)
PART 5
TRADE MARKS WITH REPUTATION (Art.8 (5) CTMR)
PART 6
PROOF OF USE
PART 7
TRANSITIONAL RULES
Page 2
PART 0
INTRODUCTION
This Part C of the guidelines deals with all aspects of the opposition
proceedings, comprising both procedural and substantive issues. Their
purpose is to ensure consistency among the decisions taken by the Trade
Marks Department and Administration of Trade Marks and Designs
Department of the Office and to ensure a coherent practice in the treatment of
the files. Their addressees are the staff members of the Office, not the public
or the parties of the proceedings. However, it is expected that parties of the
proceedings also take advantage of these guidelines because they make the
procedural treatment of the files and the criteria applied in decisions
transparent.
These guidelines incorporate the present Part C, Chapter 4, of the guidelines
(concerning rights falling under Article 8(4)CTMR), which have already been
adopted by Decision No EX-03-7 of the President of the Office of 20 February
2003, but for the remainder have been rewritten completely. They shall
replace the existing guidelines for Part C, Chapter 1, OJ OHIM 1997, 1019,
concerning the procedural aspects of the opposition procedure.
These guidelines must be read in conjunction with the other guidelines
concerning proceedings before the Office, in particular Part A, general
provisions on proceedings before the Office. This part of the guidelines does
not repeat what is said in other parts but at times contains additional
information dealing with aspects which are specific to the opposition
proceedings.
Examiners must take into account the case law of the Court of First Instance
and the Court of Justice, as well as decisions of the Boards of Appeal and of
their colleagues in opposition proceedings, but they must asses each case on
its own merits. These guidelines contain ample references to such
judgements and decisions, “R” referring to Boards of Appeal decisions and
numbers alone referring to decisions of the Opposition Division. Although
references to these decisions in these guidelines are frequent, they are not
meant to constitute an exhaustive overview on existent case law, nor meant to
be a commentary to the Community Trade Mark Law. Rather, they are a
compendium of practical cases that have arisen in previous proceedings and
are likely to arise in the future. Therefore, it is usually not indicated whether a
decision has been appealed, unless the appeal decision itself is material for
the text of these guidelines. Also, the references to these decisions will not be
updated as a matter of course, but only once this will be material to the
guidelines and will lead to changes in substance.
Although quite exhaustive, these guidelines cannot be complete. Even where
an issue is addressed in these guidelines, examiners must always take into
account the merits of each individual case, and when an issue is not
addressed in these guidelines, examiners shall resolve the issue, based on
the general principles which are developed in these guidelines.
Page 3
These guidelines will be updated in periodic intervals of two years following
their adoption. To this end an open forum will be created on the website of the
Office, on which organisations and individuals may submit comments.
Changes of practice which are imposed as a consequence of decisions of
higher authorities (Boards of Appeal, Court of First Instance, Court of Justice)
will be implemented as appropriate without awaiting a formal change of these
guidelines.
Page 4
Part 1, Chapter 1 and 2: INDEX
I.
II.
GENERAL OVERVIEW ..................................................................................... 12
RECEPTION OF THE OPPOSITION NOTICE AND PAYMENT....................... 14
1.
2.
3.
4.
5.
Reception of the opposition...............................................................14
1.1. Opposition notice and payment received within the opposition
period ............................................................................................14
1.2. Opposition notice late, payment within the opposition period........14
1.3. Opposition notice within opposition period, payment late..............15
1.4. Opposition notice and payment late..............................................15
Payment ............................................................................................16
2.1. Means of payment ........................................................................16
2.1.1. Current account ...........................................................................16
2.1.1.
1.When is the payment made?...........................................16
2.1.1.2. No indication/wrong indication of the amount of the opposition
fee.............................................................................................17
2.1.1.3. Operational current account ................................................17
2.1.1.4. Insufficient funds ..................................................................17
2.1.1.5. Payment of the opposition fee by debiting a current account
held by a third party ..................................................................18
2.1.2. Bank Transfer ..............................................................................18
2.1.2.
1. Late reception of the fee.................................................18
2.1.2.2. Insufficient amount ...............................................................18
2.1.2.3. Remedy ................................................................................19
2.1.3 Cheque.........................................................................................19
2.1.3.1. Late reception of the fee.......................................................19
2.1.3.2. Insufficient amount ...............................................................19
2.1.3.3. Remedy ................................................................................19
2.1.4. In cash/credit card .......................................................................19
Evidence of payment.........................................................................20
Surcharge..........................................................................................20
4.1. Communications from the opponent during this one-month period
21
4.2. Evidence filed, but surcharge not paid ..........................................21
4.3. Surcharge received late ................................................................21
Legal consequences .........................................................................21
5.1. Beginning of admissibility check ...................................................21
5.2. Deemed not entered .....................................................................21
5.3. Right to ask for a decision.............................................................22
5.4. Fee refund.....................................................................................22
5.5. No refund of surcharge .................................................................22
III. LANGUAGES AND TRANSLATIONS ............................................................... 23
1.
Opposition filed on the OHIM form ....................................................23
1.1. Translation of the official form .......................................................23
1.2. Translation of textual elements .....................................................23
2.
Opposition filed on a form “very like” the standard form ....................24
3.
Opposition filed on a form which is not the OHIM form .....................24
4.
Indication of the language of proceedings; language not yet
determined ....................................................................................24
4.1. Indication of the language of the proceedings...............................24
Page 5
4.2. In which language to communicate with the opponent?................24
IV. IDENTIFICATION OF THE CTMA..................................................................... 26
V. IDENTIFICATION OF GROUNDS..................................................................... 27
VI. IDENTIFICATION OF THE EARLIER MARKS/RIGHTS ................................... 28
1.
2.
3.
4.
5.
6.
7.
8.
Earlier trade mark registrations or applications .................................29
1.1. Absolute identification elements....................................................29
1.2. Relative identification elements.....................................................29
Earlier trade mark registrations or application with a reputation........30
Earlier well known mark ....................................................................31
Agent's mark .....................................................................................32
4.1. Absolute identification elements:...................................................32
Earlier non-registered marks .............................................................32
Earlier sign used in the course of trade .............................................33
List of goods and services.................................................................34
Representation of earlier mark/sign ..................................................35
8.1. Late information about the figurative character of a mark/sign......36
8.2. Mark/sign in colour ........................................................................36
8.3. No clear representation.................................................................36
VII. THE OPPONENT/ENTITLEMENT .................................................................... 37
1.
2.
Opponent ..........................................................................................37
Entitlement ........................................................................................37
2.1. Capacity ........................................................................................37
2.2. Change of owner (transfer of earlier mark) before the opposition is
filed ...............................................................................................38
2.2.1.
Oppositions based on an earlier CTM ................................38
2.2.2.
Opposition based on a national registration or application .38
3.
Multiple opponents ............................................................................39
3.1. Co-owners.....................................................................................39
3.2. Indication of relationships other than co-ownership ......................40
4.
Evidence ...........................................................................................41
VIII. OPPOSITION NOTICE NOT SIGNED .............................................................. 42
IX. EXTENT OF THE OPPOSITION ....................................................................... 43
X. REPRESENTATION.......................................................................................... 44
1.
2.
3.
4.
Legal effect of notifications to or by the representative .....................44
Conflict of interest .............................................................................44
Multiple representatives, common representative .............................45
Change of representative ..................................................................45
XI. AUTHORISATION ............................................................................................. 46
1.
2.
I.
II.
Authorisation for multiple opponents .................................................46
Extension of time limits......................................................................47
NOTIFICATION ................................................................................................. 48
NOTIFICATION - SPECIAL ISSUES................................................................. 50
Page 6
1.
2.
3.
4.
5.
I.
II.
“Earlier rights” that are not earlier within the meaning of Article (8)(2)
CTMR............................................................................................50
1.1. Opposition only based on a mark/ right that is not earlier .............50
1.2. Opposition based on earlier and non-earlier marks/rights.............50
Multiple oppositions...........................................................................51
Some earlier right(s) will not be taken into account ...........................51
Suspension .......................................................................................51
Notifications by mail ..........................................................................52
OUTLINE OF THE PROCEEDINGS ................................................................. 53
TRANSLATIONS / CHANGES OF LANGUAGE DURING OPPOSITION
PROCEEDINGS.......................................................................................... 54
1.
Translation of submissions other than the opposition notice .............54
1.1. Translation of facts, evidence and arguments filed by the opponent
to complete his file ........................................................................54
1.2. Translation of observations ...........................................................54
1.3. Translation of documents other than observations .......................55
1.4. Proof of use...................................................................................56
2.
Change of language during opposition proceedings .........................56
III. OBSERVATIONS BY THIRD PARTIES ............................................................ 58
IV. AMENDMENT OF APPLICATIONS / CORRECTION OF MISTAKES .............. 59
1.
2.
3.
4.
V.
Amendment of applications ...............................................................59
Correction of mistakes and errors in publications..............................59
Challenge proceedings against alteration of a CTM registration........60
Correction of mistakes in the opposition notice .................................60
TIME LIMITS ..................................................................................................... 61
1.
2.
3.
4.
General .............................................................................................61
Calculation of time limits when sending notifications.........................62
Expiry of time limits ...........................................................................64
Extension of time limits......................................................................64
4.1. Non-extendable and extendable time limits ..................................65
4.2. Request for extension ...................................................................65
4.3. Extension of the cooling off period ................................................67
4.3.1.
Calculation of time limits for the extension of the cooling off
68
4.3.2.
Problems solved .................................................................68
VI. FEES (REFUNDS) ............................................................................................ 70
1.
Fee refunds / definitive payments .....................................................70
1.1. Late payment/Opposition is not duly entered ................................70
1.2. CTMA withdrawn before the end of the cooling off period.............70
1.3. Opposition withdrawn due to restriction of CTMA within the cooling
off period .......................................................................................70
1.3.1.
When the letter withdrawing the opposition was received by
the Office before the Office had sent StandL. 222a letter to the
opponent but after the applicant's letter limiting the CTMA was
received by the Office. ..............................................................70
1.3.2.
the Office before the applicant’s letter limiting the CTMA. ........70
1.3.3.
the Office after expiry of the two-month period set in StandL
222a..........................................................................................71
Page 7
1.4. Opposition withdrawn before the end of the cooling-off period NOT
due to a restriction ........................................................................71
1.5. Opposition rejected as deemed inadmissible................................71
1.6. Agreement between parties before commencement.....................71
2.
Special cases for refunding fees .......................................................72
2.1. Opposition and withdrawal arriving on the same date...................72
2.2. 50% refund of opposition fee in cases of multiple oppositions ......72
2.3. Refund after re-publication............................................................72
3.
Special cases for NOT refunding fees...............................................73
3.1. Opposition is deemed not to be entered due to lack of authorisation
of the representative of the EU-opponent and the opponent does
not want to continue the proceedings. ..........................................73
3.2. Mistaken refund of the opposition fee due to a wrong status ........73
3.3. CTMA rejected in parallel proceedings pursuant to Articles 41,
88(2) and Rule 76(4) during the opposition proceedings ..............74
VII. RESTRICTIONS AND WITHDRAWALS ........................................................... 75
1.
Restrictions and withdrawals of CTM applications ............................75
1.1. Class headings .............................................................................75
1.2. Conditional restrictions..................................................................76
1.3. Request for restriction only partly acceptable ...............................76
1.4. Withdrawal or restriction before admissibility check is made ........77
1.5. Restrictions and withdrawals of CTM applications before the end of
the cooling-off period.....................................................................77
1.5.1.
Restriction covers whole extent of the opposition /
withdrawal.................................................................................77
1.5.2.
Restriction does not (seem to) cover the whole extent of the
opposition .................................................................................77
1.6. Restrictions and withdrawals of CTM applications after the end of
the cooling-off period.....................................................................78
1.6.1.
Restriction covers whole extent of the opposition/withdrawal
78
1.6.2.
Restriction does not (seem to) cover the whole extent of the
opposition .................................................................................78
1.7. Restrictions and withdrawals of CTM applications after a decision
has been rendered ........................................................................78
2.
Withdrawal of oppositions .................................................................79
2.1. Withdrawal of the opposition before the end of the cooling off
period ............................................................................................79
2.2. Withdrawal of the opposition after the end of the cooling off period
79
2.3 Withdrawal of the opposition after rendering a decision................79
3.
Revocation of withdrawal/restriction ..................................................79
4.
Language ..........................................................................................80
VIII. DISCLAIMERS (PROCEDURAL ISSUES)........................................................ 81
IX. FRIENDLY SETTLEMENT ................................................................................ 82
X. SUSPENSION ................................................................................................... 84
1.
2.
Introduction .......................................................................................84
Multiple oppositions...........................................................................85
2.1. Explanation ...................................................................................85
2.2. The moment to suspend ...............................................................86
Page 8
3.
4.
5.
6.
2.3. Monitoring suspended files ...........................................................86
2.4. After rejection of the CTM application ...........................................86
2.5. Resuming the proceedings ...........................................................87
The opposition is based on an application ........................................87
3.1. Explanation of the basic principle, moment to suspend ................87
3.2. Exceptions to the basic principle...................................................88
3.2.1.
Earlier CTM applications ....................................................89
3.2.2.
Earlier national applications................................................89
3.2.3.
Nuances .............................................................................90
Earlier right at risk .............................................................................91
4.1. Cases envisaged ..........................................................................91
4.2. Factors to consider .......................................................................92
4.3. Evidence .......................................................................................92
Ongoing negotiations ........................................................................93
Procedural aspects ...........................................................................94
XI. MULTIPLE OPPOSITIONS ............................................................................... 95
1.
2.
3.
4.
Multiple oppositions and limitations ...................................................95
Multiple oppositions and decisions....................................................96
Multiple oppositions and conversion .................................................97
Joinder of proceedings ......................................................................98
XII. SUBSTANTIATION OF EARLIER RIGHTS ...................................................... 99
1.
Trade mark registrations or applications ...........................................99
1.1. Certificates issued by the appropriate official body .......................99
1.2. Extracts from official databases ....................................................99
1.3. Extracts from official bulletins of the relevant national trade mark
offices and WIPO ........................................................................100
1.4. Duration of a trade mark registration...........................................101
1.5. Verification of the evidence .........................................................101
1.5.1.
Renewal certificates .........................................................102
1.5.2.
The proprietor of the earlier registered trade marks must be
the same person as the opponent. .........................................103
2.
Translations of evidence of trade mark registrations .......................104
2.1. Boards of Appeal ........................................................................105
2.2. References to OD Decisions on issues of substantiation and
translation ...................................................................................106
2.2.1.
Translation........................................................................106
2.2.2.
Decision on private records and substantiation ................106
2.2.3.
Decision on different owner and opponent and substantiation
106
3.
Substantiation of well-known marks, trade marks filed by an agent,
claims of reputation, earlier signs used in the course of trade ....107
3.1. Application by agent or representative of the real owner of the mark
that is the subject of the CTM application ...................................107
3.2. Well-known marks.......................................................................107
3.3. Marks with a reputation ...............................................................108
Page 9
3.4. Non-registered trade mark or another sign used in the course of
trade............................................................................................108
4.
Authentication of evidence and translations ....................................108
5.
When the opposition is not substantiated........................................108
XIII. ORAL PROCEEDINGS BEFORE THE OPPOSITION DIVISION ................... 110
XIV. DOCUMENTS NOT READABLE/ CANNOT BE HANDLED / REFERENCE TO
OTHER FILES........................................................................................... 111
1.
2.
3.
4.
5.
Documents not readable .................................................................111
Documents submitted in media which cannot be handled by the Office
....................................................................................................111
Original documents .........................................................................111
Confidential information...................................................................111
References made to documents in other proceedings, including
before the BoA ............................................................................112
XV. NOTIFICATION BY POST; PUBLIC NOTIFICATION ..................................... 114
1.
2.
3.
Notification by post ..........................................................................114
Public notification ............................................................................114
Procedure for public notification ......................................................115
XVI. CONVERSION ................................................................................................ 118
1.
2.
3.
Informing the applicant ....................................................................118
Requests made in observations ......................................................118
Opposition based on (to be) converted CTM(A)..............................118
XVII.
DECISION ON THE APPORTIONMENT OF COSTS/ AGREEMENT ON
COSTS...................................................................................................... 120
1.
2.
In which cases must a decision on costs be taken?........................120
In which cases a decision on costs must not be taken? ..................120
2.1. Agreement on costs ....................................................................120
2.2. Information from “potential winning party”. ..................................120
3.
Standard cases of decisions on costs .............................................121
4.
Other cases.....................................................................................121
4.1. Rejection of application pursuant to Article 88(2)........................121
4.2. Rejection of application due to third party observations ..............122
4.3. Multiple oppositions ....................................................................122
4.3.1.
Complete rejection of the CTM application.......................122
4.3.2.
Partial rejection of the CTM application ............................123
5.
Other cost issues ............................................................................124
5.1. Arguments of the parties .............................................................124
5.2. Apportionment of costs in cases of joinder..................................124
5.3. Share the costs of the opposition fee ..........................................124
XVIII.
FIXING OF COSTS................................................................................... 125
1.
Admissibility of the request..............................................................125
1.1. Signing and sending of the fixation .............................................125
1.2. Evidence .....................................................................................125
Cost of employees ..........................................................................126
Maximum amounts ..........................................................................127
Renouncement of costs...................................................................127
Currencies/ exchange rates ............................................................127
Confidentiality..................................................................................127
Review of fixings of costs ................................................................128
Fixation of costs after appeal ..........................................................128
2.
3.
4.
5.
6.
7.
8.
XIX. REVOCATION................................................................................................. 129
Page 10
XX. CHANGE OF PARTIES (Transfer, change of name, change of representative,
interruption of proceedings) ...................................................................... 130
1.
Transfer and opposition proceedings ..............................................130
1.1. Introduction and basic principle...................................................130
1.2. Transfer of earlier CTM ...............................................................130
1.2.1.
Opposition based on one CTM only .................................130
1.2.2.
Partial transfer of the only CTM on which the opposition is
based ......................................................................................131
1.2.3.
Opposition based on more than one earlier CTM .............131
1.3. Transfer of earlier national registration .......................................132
1.3.1.
Opposition based on one national registration only..........132
1.3.2.
Partial transfer of the only national registration on which the
opposition is based .................................................................133
1.3.3.
Opposition based on more than one earlier national
registration ..............................................................................133
1.4. Transfer of the contested CTMA .................................................134
1.4.1.
Partial transfer of a contested CTM application. ...............134
2.
Change of name..............................................................................135
3.
Change of representatives ..............................................................135
4.
Interruption of proceedings due to decease, legal incapacity of a party
or a representative ......................................................................136
4.1. Death or legal incapacity.............................................................136
4.2. Bankruptcy ..................................................................................136
4.3. Death or prevention for legal reasons of the representative of the
applicant/opponent before OHIM to act.......................................137
Page 11
Procedural matters: Admissibility - Notification
PART 1: PROCEDURAL MATTERS
CHAPTER 1: ADMISSIBILITY – NOTIFICATION
A. ADMISSIBILITY
I.
GENERAL OVERVIEW
When the examination of the opposition starts, and after verification whether
the notice of opposition was received within the opposition period, two
preliminary matters have to be checked. First of all, the payment of the
opposition fee, secondly if the opposition has been filed in the right language.
The examination of these matters and the consequences of non-compliance
are dealt with in the following chapters:
II. Reception of the opposition notice and payment;
III. Language and translations.
Thereafter it must be verified if the notice of opposition complies with other
formal requirements of the Regulations.
In general, two kinds of deficiencies can be distinguished:
R 18(1) IR
Absolute deficiencies, i.e. deficiencies that cannot be remedied after the expiry
of the opposition period. If the opponent does not remedy these deficiencies on
his own initiative within the opposition period, the opposition is inadmissible.
R 15, 17(1),
18(2) IR, Art.
115(5,
6)
CTMR
Relative deficiencies, i.e. deficiencies that can be remedied after the expiry of
the opposition period. The Office invites the opponent to remedy the deficiency
within two months after the receipt of the notification of these deficiencies. If
the opponent remedies the deficiencies, the opposition is considered
admissible; if not, it will be rejected on the grounds of inadmissibility.
Throughout the guidelines there are indications of whether a deficiency is
considered absolute or relative, and which standard letter (StandL) has to be
sent to the opponent and/or applicant. However, these StandL are no longer
part of these guidelines as such and no longer reproduced as an annex.
The following issues are dealt with:
IV. There is no identification of the CTMA against which the opposition is
directed;
Page 12
V. There is no indication of grounds;
VI. There is no (sufficient) identification of the earlier right(s) on which the
opposition is based, consisting of three parts, namely identification of the
earlier right(s), indication of goods and services and representation of the
signs;
VII. The opponent / entitlement;
VIII. The notice of opposition is not signed;
IX. Unclear extent of the opposition;
X. Representation;
XI. Authorisation.
Page 13
II.
RECEPTION OF THE OPPOSITION NOTICE AND PAYMENT
1.
Art. 42(1) (3)
CTMR
Reception of the opposition
The notice of opposition has to be received by the Office within 3 months of the
publication of the application; the opposition must be in writing.
On receipt, the notice of opposition is keyed into the database system
(Euromarc), and the opponent is sent a confirmation of receipt. The applicant is
informed that a notice of opposition has been filed and that it will be formally
notified once it has been accepted as admissible (StandL 201a/b).
When the key-in is done, the filenet of the CTMA must be checked to see if
new mails have arrived after publication of the CTMA (it will be at the top of the
filenet), eg. concerning limitation of g/s or a withdrawal or observations by third
parties or a request for transfer or change of representative.
In addition, it must be checked if this new mail has been dealt with by the
examiner. In all cases a copy of the new mail should be placed directly in the
opposition filenet.
R 18(1) IR
As there are different legal consequences for cases where the notice of
opposition is received after expiry of the opposition period and for cases where
the payment is received after expiry of the opposition period, the first check to
be made is when the payment of the opposition fee was received.
1.1. Opposition notice and payment received within the opposition
period
If both the notice of opposition and the payment are received within the
opposition period, the opponent has overcome the first hurdle of the
examination and the admissibility check can continue.
1.2. Opposition notice late, payment within the opposition period
R 54 IR
If the notice of opposition was received late but the payment was received by
the Office within the opposition period, the opposition is inadmissible. The
Office keeps the opposition fee. StandL. 205 must be sent. It informs the
opponent that his opposition is inadmissible and gives him two months to
comment on this finding.
If the opponent submits arguments and evidence, the Office must reconsider
Page 14
its finding and, when it is convinced that the initial finding was wrong, accept
the opposition as having been received within the opposition period. In this
case the admissibility check can continue. If the arguments and evidence
submitted by the opponent are not convincing or if the opponent does not reply
within the two months, a decision ruling the opposition inadmissible has to be
taken. When notifying the opponent of the decision, the applicant must be sent
a copy (StandL 207).
Art. 8(3) FR, R
18(1), 54 IR
1.3. Opposition notice within opposition period, payment late
If the notice of opposition was received within the opposition period but the
opposition fee was received after expiry of this period, StandL 202 must be
sent.
If the opponent responds to this letter, proves that he effected the payment
within the opposition period and, if the payment was effected within the last 10
days of the opposition period, has paid the surcharge, the opposition is
deemed entered. The admissibility check can continue.
If the opponent does not respond to the letter, or does not prove that he made
the payment within the opposition period, and/or did not pay the surcharge, the
opposition is deemed not to have been entered. StandL 203 version A has to
be sent to the opponent. The OD does not take a decision unless requested to
do so by the opponent, and the opposition fee is refunded. The applicant must
be informed if the case is closed, either by sending him a copy of the decision
or by confirming that the opposition is deemed not entered.
As the opposition notice was received within the opposition period, this
situation cannot occur if the fee is paid by current account.
R 18(1) IR
1.4. Opposition notice and payment late
If both the payment and the notice were received too late, the Office must send
StandL 203, version B. This letter informs the opponent that his opposition is
deemed not entered and that even if the opposition could be considered
entered, it would be inadmissible and that the Office will refund the opposition
fee or not debit the current account.
Page 15
2.
Payment
The Office has to receive the opposition fee of EUR 350 within the opposition
period (Art. 42 (3) CTMR). Payment of the opposition fee can be made in four
different ways (2.1.).
If the opposition fee was received after the expiry of the opposition period but
payment instructions to the bank had actually been given within the last 10
days of the opposition period, under the terms of Article 8 FR the opposition
can be saved if the opponent files evidence of having paid on time (2.2.) and
pays a surcharge of 10% of the opposition fee (2.3.). If the opposition fee has
not been received within the opposition period, or if the exception just
mentioned does not apply, the notice of opposition is deemed not to have been
entered (Rule 18 (1) IR) (2.4.).
Art. 6 FR, Com
9/98
of
27/10/98, OJ
1998, 1383
2.1. Means of payment
All payments must be made in euro. They can be made in four different ways:
Current account (2.1.1), bank transfer (2.1.2), cheque (2.1.3) and cash/credit
card (2.1.4). Each means of payment has its peculiarities. These are described
below.
2.1.1. Current account
2.1.1. 1.When is the payment made?
Art. 8(1) FR,
Art. 7(e) Dec
EX-96-1, last
amended by
Dec. EX-03-3
The payment is considered effective on the day the Office is requested to
deduct the opposition fee from the current account. This is normally the day on
which the opposition is received, since an opponent indicates in the notice of
opposition that he wishes to pay through his current account. In this case,
boxes 15 and 16 in the Opposition Form are ticked.
Since the payment is considered to have been made on the date of receipt of
the opposition, if the notice of opposition arrived late, the payment is also late.
Therefore, before checking admissibility issues the opposition must be rejected
as deemed not to have been entered.
Page 16
Com 5/96
8.8. 1996
of
2.1.1.2. No indication/wrong indication of the amount of the
opposition fee
The system of current accounts is an automatic debiting system. That means
that without any instructions and for all kind of financial transactions such
accounts may be debited by the Office.
No indication or wrong indication of the amount of the opposition fee does not
have any negative effect, because it is clear that the opponent wanted to pay
the amount of the opposition fee. For example, if the opponent indicated that
EUR 300 is to be deducted from his account, the Office will automatically
deduct EUR 350.
Even if there is no express request from the opponent, the existence of a
current account would in such a case be sufficient in order for the account to
be debited. This is true independently of the use of the opposition form or not.
The only exception to this rule is made when the holder of a current account
who wishes to exclude the use of the current account for a particular fee or
charge informs the Office thereof in writing.
2.1.1.3. Operational current account
A current account can only be debited when it is operational. This means that
within fifteen days following the opening of the account, the opponent must
deposit EUR 5 000. If he does not deposit this amount, the account will not
become operational. The opposition fee cannot be duly paid through such an
account, so the opposition is rejected as deemed not to have been entered.
2.1.1.4. Insufficient funds
If there are insufficient funds in a current account, the holder will be notified by
the Financial Department of the Office and given the possibility to fill up his
account. If he does so, the payment of the fee will be deemed to have been
received on the date the notice of opposition was received by the Office.
Page 17
2.1.1.5. Payment of the opposition fee by debiting a current account
held by a third party
Payment of the opposition fee by debiting a current account held by a third
party requires an explicit authorisation of the holder of the current account that
his account can be debited for the benefit of the particular fee. In such cases it
must be checked if there is an authorisation. If there is not, a letter is to be sent
to the opponent asking him to submit an authorisation that authorises the
Office to debit the account held by a third party.
Once the authorisation has been received, the Financial Department must be
informed in order to allow the debiting. The mail to the Financial Department
must include the authorisation.
2.1.2. Bank Transfer
The payment is considered to have been made on the day it is actually entered
in a bank account held by the Office, not on the day it was effected.
2.1.2. 1. Late reception of the fee
Art. 42(3)
CTMR, Art. 9(1)
FR
If the full amount of the fee is received after the expiry of the opposition period,
StandL 202 has to be sent. This letter informs the opponent that the fee was
received late and explains under what conditions the Office can consider the
payment as having been paid within the opposition period.
2.1.2.2. Insufficient amount
Art. 9(2) FR, - Due to an error of the opponent
Com
No If only a part of the opposition fee is received, because the opponent only paid
6/96
part and the opposition period has already expired, StandL 203 has to be sent.
The opposition is considered not entered.
Art. 9(2) FR, - Due to a bank error
Com
No If only part of the opposition fee is received because the bank deducted
6/96
transfer costs, although the opponent gave clear instructions that he would pay
the transfer costs, an adapted version of StandL 202 should be sent. Whether
this condition is met can be inferred from the amount that is received.
Since the opponent did everything in his power to ensure that the Office would
receive the full amount of the opposition fee, but his bank failed to follow his
instructions, he is given the chance to remedy the situation.
Page 18
2.1.2.3. Remedy
Art. 8(3) FR
If payment was effected in the last ten days of the opposition period but was
received by the Office after the expiry of the opposition period, the opponent
has to provide evidence that the bank order had been placed or that the
transfer had been made within those ten days, and has to pay a surcharge of
EUR 35 within one month of receiving StandL 202.
For payments effected before the last ten days of the opposition period the
opponent does not have to pay the surcharge. He only has to prove the
payment was made in due time.
2.1.3 Cheque
Art. 8(1) FR
The payment is effected on the day the cheque is received by the Office under
the condition that the cheque is met.
2.1.3.1. Late reception of the fee
Art.
42(3)
CTMR,
Art.
9(1) FR
If the full amount of the fee is received after the expiry of the opposition period,
StandL 202 must be sent.
2.1.3.2. Insufficient amount
Art. 9(2) FR,
Com No 6/96
If only a part of the opposition fee is received because the opponent only paid
part and the opposition period has already expired, StandL 203 is to be sent.
The opposition is considered not entered.
2.1.3.3. Remedy
Art. 8(3) FR
If the cheque was received by the Office after the opposition period, the
opponent has to provide evidence that the cheque was dispatched at a post
office or otherwise (for example a reliable courier service) within those ten
days, and has to pay a surcharge of EUR 35 within one month of receiving
StandL 202.
For payments effected before the last ten days of the opposition period the
opponent does not have to pay the surcharge. He only has to prove that the
cheque was sent in due time.
2.1.4. In cash/credit card
Page 19
Art. 8(1) (c)
FR, Dec No
EX-01-1
The method of payment in cash has hardly ever been used. If it is used,
payment in cash can only be effected at the seat of the Office in Alicante. It is
considered effected on the day the payment is made.
Payment can also be made by credit card, though only at the reception desk of
the Office. The payment is deemed to have been made on the date on which
the credit card transaction is effected. Where the transaction fails for whatever
reason, or where the Office refuses to accept the credit card, payment is
considered not to have been made.
3.
Art. 76 CTMR,
Art. 8(4) FR
Evidence of payment
The following are acceptable means of evidence:
- Letters from the bank where the payment was effected, certifying the day the
order was placed or the payment was made, indicating the opposition for which
it was made.
- The order for bank transfers containing stamps and date of receipt by the
bank involved
- Statements from the opponent or his representative in writing, sworn or
affirmed or having a similar effect under the law of the State in which the
statement is drawn up. Although these statements or affidavits are valid means
of evidence, if it is the only means of evidence received, it is considered
insufficient to prove that a payment was made on a certain date. Only if the
statement is supported by other evidence can it be considered sufficient.
- A post office receipt referring to a registered letter containing a cheque.
- A payment order given online through Internet or a print out of an electronic
transfer provided it contains information on the date of the transfer, on the
bank it was sent to, and that it contains information like “transfer done”. In case
of doubt, StandL 202 has to be sent asking for further evidence.
This list is not exhaustive.
The evidence provided by the opponent does not have to be in the language of
the proceedings. Rule 96(2) IR applies.
If no evidence is provided, the opposition is deemed not to have been entered.
StandL 203 is to be sent.
4.
Surcharge
Page 20
Art. 8(1), (3)
FR
When the Office informs the opponent that the payment arrived late, the
opponent is given one month in which to prove that he made the payment
within the opposition period and, if necessary, to pay a surcharge of EUR 35.
4.1. Communications from the opponent during this one-month
period
Communications sent by the opponent within the one-month period (for
example a request for clarification), without payment of the surcharge within
the same period, do not mean that the opponent has the right to pay later. In
other words, a letter from the opponent does not automatically extend the time
limit for paying the surcharge.
4.2. Evidence filed, but surcharge not paid
Art. 8(3) FR
If the requested evidence is filed, but the surcharge is not paid, the opposition
has to be rejected as not entered; StandL 203.
4.3. Surcharge received late
Art. 8(3) FR
If the surcharge is received by the Office after the expiry of the one-month
period given in StandL 202, the opposition is accepted provided the opponent
submits evidence that he gave the instruction to the bank within the time limit
to pay the surcharge.
If no such evidence is on file, a modified StandL 202 has to be sent. No
surcharge of the surcharge is requested.
5.
Legal consequences
5.1. Beginning of admissibility check
Art.
42(3)
CTMR,
R
18(1) IR
An opposition for which the payment is effected on time or can be deemed as
effected on time is considered entered. This means that the admissibility check
may begin.
5.2. Deemed not entered
An opposition for which the payment is not effected on time or cannot be
deemed as effected on time must be rejected as not entered. This means that
StandL 203 must be sent.
Page 21
A copy of this letter must be sent to the applicant for information purposes at
the same time.
If within the one-month period of StandL 202 the opponent provides evidence
that our finding concerning the loss of rights was inaccurate, and he proves
that the payment was made on time, StandL 204 has to be sent with a copy to
the applicant together with the evidence provided by the opponent.
5.3. Right to ask for a decision
R 54 IR
If it is determined that an opposition must be deemed as not entered, the
Opposition Division informs the opponent of his loss of rights. However, the
opponent has the right to request a decision. If he does so, the decision must
be sent to both parties with StandL 206a and 207, deleting from StandL 207
the indications which refer to inadmissibility.
5.4. Fee refund
Art. 9(1) FR
If an opposition is deemed as not entered, the opposition fee must be refunded
to the opponent.
5.5. No refund of surcharge
The reimbursement of the opposition fee provided for in Rule 19(3) IR does not
include any surcharge paid by the opponent on the basis of Art. 8(3) FR. The
surcharge paid is here considered as compensation for additional
administrative work carried out by the Office because of the late payment of
the opposition fee.
However, the Office will refund not solely the opposition fee but the surcharge
as well if the latter is paid definitely after the one-month period prescribed in
Art. 8(4) FR. It appears to be consistent in such a case to apply the third
sentence of Rule 18(1) IR by analogy, pursuant to which the opposition fee
shall be refunded to the opponent if it has been paid after the expiry of the
opposition period.
Page 22
III. LANGUAGES AND TRANSLATIONS
Art. 115(5), (6)
CTMR, R 17(1)
IR
BoA Ultravit R
197/2000-3
,
Nobody's
fool
R752/2000-4
According to Article 115 CTMR, the opposition has to be filed either in the
second language of the contested application, which is always one of the
languages of the Office, or, if both languages of the application are languages
of the Office, in either of these two languages. If an opposition is filed in one
of the languages of the Office that cannot be the language of the
proceedings, the opponent will have to file a translation within one month of
the expiry of the opposition period, on his own initiative.
If no translation is received within this period, StandL 208 must be sent to the
opponent allowing him a period of two months for filing a translation. As
decided by the Boards of Appeal, Rule 17 IR represents “another provision”
in terms of Rule 18(2) IR.
When the opponent files a translation of the opposition notice, the
examination can continue. If he does not file the translation within the period
of two months, the opposition has become inadmissible. StandL 207,
together with a copy of the decision, must be sent to the applicant.
Three possible cases can be distinguished, namely opposition filed on the
OHIM form, opposition filed on a form “very like” the standard form and
opposition filed on a form which is not the OHIM form.
Art.
42(3)
CTMR, R 18(1),
(2) IR, R 83(3)
IR,
R
15(2)(b)(vii)
1.
Opposition filed on the OHIM form
1.1. Translation of the official form
If an opposition is filed on the OHIM opposition form, the form itself does not
need to be translated. The Opposition Division has all the linguistic versions
of the official form. When the opposition is notified to the applicant, a blank
OHIM form in the correct language must be attached to the OHIM form filed
by the opponent.
1.2. Translation of textual elements
All textual elements in a notice of opposition must be translated into the
language of the proceedings. Names, addresses, numbers and dates cannot
and need not be translated.
If an opposition is filed on an OHIM opposition form and only contains textual
elements which cannot be translated such as names, dates etc., no
translation is needed.
Page 23
The list of goods and services has a special regime.
Explanation of grounds: When one of the boxes concerning grounds is ticked
and additionally an explanation of grounds (box 99 or annex) is furnished, this
explanation does not need to be translated at the admissibility stage.
Indications like “see annex”, “see attachment”, “will be provided later” do not
need to be translated.
2.
Opposition filed on a form “very like” the standard form
Rule 95 allows the use of standard forms in any of the official languages of
the Community provided that the form is completed in one of the languages
of the Office, as far as textual elements are concerned. Oppositions are
accepted in the “wrong language” if they are presented on the standard form
or something very like it provided that there are no textual elements in the
wrong language.
A form is considered as something very like the standard form when it has a
very similar structure to the standard form, the same codes and similar
wording.
R 83(6), R 17(1)
IR
3.
Opposition filed on a form which is not the OHIM form
If an opposition is filed on a form which is not the OHIM opposition form (or a
copy of this form or a form with the same content and format as this form),
and is in a language of the Office that cannot be a language of the
proceedings, in accordance with the above, if no translation is received within
the one month, the notice has to be fully translated into the language of the
proceedings within the two-month period set by means of StandL 208.
4.
Indication of the language of proceedings; language not yet
determined
4.1. Indication of the language of the proceedings
When there are two languages that can be the language of proceedings (eg.
FR or IT) the opponent has to indicate which language he chooses. If there is
no indication, either direct or indirect, StandL 208 has to be sent in one of the
possible languages. If no reply is received, the opposition is inadmissible.
4.2. In which language to communicate with the opponent?
Page 24
When the notice of opposition is filed in one of the five languages of the
Office which is not an appropriate language of the proceedings, (e.g.
opposition in FR, application languages NL, EN or IT, EN) and the opponent
has not yet indicated which will be his choice, the procedure is as follows.
StandL 201 and subsequent communications must be addressed to the
opponent in one of the languages available in the particular case for the
opposition (either the first or the second language of the application), and not
in the (wrong) language in which the notice was filed.
For example if the application is in NL and EN, the language of the
proceedings is already known (EN). Consequently, communications
addressed to the opponent must be in that language.
If the application is in IT and EN, communications with the opponent must be
in either of these languages, that is IT or EN. Once a choice has been made,
all communications must be in this language. This also applies to the
language of an eventual decision.
Page 25
IV. IDENTIFICATION OF THE CTMA
Art. 73 CTMR,
R 18(1) IR
If the CTMA against which the opposition is filed is not identified, the
opposition is inadmissible. StandL 205 is to be sent before rejecting it.
R 15(2)(a) IR,
R 15(2)(a)(ii)
IR
The only mandatory identification element for identifying a CTMA is the
application number.
In order to be able to eliminate possible errors in the identification of CTMA the
opponent should indicate the name of the applicant. If the indicated application
number does not correspond to the indicated name of the applicant, B-staff will
decide if it can be established without any doubt which is the contested CTMA.
If the applicant’s name is not indicated, it can be found in the publication of the
CTMA.
The date of publication is an optional indication, which helps to double-check
the identification of the CTMA. Even if it is missing, the CTMA can be
sufficiently identified through the other indications.
If the opponent has made a mistake but nevertheless by performing a search
in Euromarc it can be established without any doubt against which CTMA the
opposition is directed, the opposition is admissible on this account.
Only one CTMA can be contested in one notice of opposition.
R 18(1) IR,
Art. 73 CTMR
If the CTMA cannot be identified, this deficiency can only be remedied on the
opponent’s initiative during the three-month opposition period, otherwise the
opposition is inadmissible and StandL 205 has to be sent.
Page 26
V. IDENTIFICATION OF GROUNDS
Art. 42(3), Art.
73 CTMR, R
15(2)(d),
R
18(1) IR,
An opposition without any indication of grounds is inadmissible. However,
before rejecting it, a careful assessment of the entire notice of opposition must
be made: if it is possible to deduce the grounds from its components, the
opposition is admissible. Otherwise, StandL 205 has to be sent before
rejecting the opposition.
It must be possible to deduce the grounds of the opposition without any doubt.
It does not matter whether the grounds are indicated in the opposition form, its
annexes or its supporting documents. It is not necessary that a specific word is
indicated, as long as the ground is unequivocally clear.
BoA Pancaldi r
80/1998-3,
Nordic Gear R
103/1998-2,
Orion
R
105/1998-1,
Felix
R
181/1998-3
As laid down by the Boards of Appeal, if the marks and goods or services of
both the earlier right and the CTM application are identical, the opposition will,
even though the grounds are not expressly indicated, be accepted with Art.
8(1)(a) as a ground.
Art.
42(3)
CTMR,
R
18(1), R 83 IR
When an opposition is filed on an OHIM form, ticking one of the boxes 93-98 is
considered to be sufficient for admissibility purposes, even if the indicated
ground does not correspond to the earlier right on which the opposition is
based. An additional explanation of grounds in a “wrong” language does not
change this.
Art.
CTMR,
18(1)
When an opposition is not filed on an OHIM form, grounds must be identified.
42(3)
R
Enigma
R
165/1998-2
In any other case, it will depend on the circumstances of the case. If, for
example, no list of the goods/services of the earlier trade mark is provided, no
clear assumption can be made on the grounds of the opposition. (As the
absence of an identification of grounds is a deficiency that cannot be remedied
after the expiry of the opposition period, StandL 208 asking for the goods and
services on which the opposition is based should not be sent) In this case, the
opposition will be rejected as inadmissible (different approach in BoA, Editorial
Planeta).
At the stage of the admissibility check, the Office will not examine the
adequacy of the ground indicated by the opponent. It is a matter of substance
whether the Office should consider, for example, Article 8(1)(b) when the
opponent has invoked only Article 8(1)(a).
Page 27
VI. IDENTIFICATION OF THE EARLIER MARKS/RIGHTS
Art.
CTMR,
18(1)
8(2)
R
The earlier mark(s)/right(s) form the basis of the opposition. Their identification
is necessary, because the opposition depends on these earlier
mark(s)/right(s).
First of all, the right has to be of an earlier date than the contested CTMA.
However, even if the claimed earlier right is apparently not earlier, this is a
matter of substantiation and not of admissibility. The examination of
admissibility must proceed as normal and only at the time of notification it will
be pointed out to the opponent that the earlier right appears not to be earlier.
(See Part B, Notification of the opposition, notification of an opposition based
on a right that is not an earlier right.)
R 15(1) IR
An opposition against a CTMA can be based on one or more earlier
mark(s)/right(s) which belong to the same opponent.
Art. 73 CTMR
Each earlier mark/right has to be examined to see if it is clearly identified. If
one of them is not duly identified, both the opponent and the applicant must be
informed that this mark or right will not be taken into account. If it concerns the
only earlier right on which the opposition is based, the opposition is
inadmissible and StandL 205 is to be sent. If the opposition is based on more
than one earlier right and one of them has been correctly identified, the
opposition is partially inadmissible. The parties are informed thereof when the
opposition is notified. A paragraph is added to StandL 211, 212.
The requirements that have to be fulfilled in order to consider an earlier
mark/right as duly identified, depend on the mark/right on which the opponent
bases his opposition. A distinction is made between ‘absolute’ and ‘relative’
identification elements.
R 18(1) IR
If absolute identification elements are missing the earlier mark cannot be
identified and therefore cannot serve as a basis for the opposition. It is only
possible to remedy this deficiency within the opposition period.
R 18(2) IR
If relative identification elements are missing, it is possible to identify which
earlier mark/right is claimed, but more detailed information is necessary. If this
is the case, the opponent will be given a two-month period to remedy the
deficiency. If he does not comply within the time limit, the opposition will be
inadmissible or the mark or right in question will not be taken into account.
Absolute and relative identification elements are to be looked for not only in the
notice of opposition, but also in annexes or other documents filed together with
the opposition.
Page 28
An opposition can be based on six types of earlier rights: Earlier trade mark
registrations or applications (1), earlier trade mark registrations or applications
with a reputation (2), earlier well-known marks (3), agents' mark (4) and earlier
unregistered trade marks (5) and earlier signs used in the course of trade (6).
This chapter first deals with the identification elements of these earlier rights.
Separately, it also deals with goods and services (7) and representation of the
earlier marks/signs (8).
Art. 8(2)(a),(b)
CTMR
1.
Earlier trade mark registrations or applications
1.1. Absolute identification elements
These rights are Community trade mark registrations or applications, national
or Benelux trade mark registrations or applications (including “ex Community
trade marks” for which a request for conversion has been filed) and trade mark
registrations or applications under the international agreements, the so-called
international trade mark registrations or applications.
The absolute identification elements for these marks are:
- The registration/application number.
National applications deriving from the conversion of an earlier CTM(A) are
considered to come into existence as soon as a valid conversion request is
filed. Such rights will be properly identified for admissibility purposes under
Rule 18(1) IR if the opponent indicates the number of the CTM(A) under
conversion and the countries for which he has requested the conversion.
- The Member State where it is registered/applied for.
The indication of a Member State without indication of the type of mark can
mean that the earlier mark is a national mark or an international registration
with effect in this Member State, or, when all Member States are indicated, that
it is an earlier CTM.
If the Member State is not indicated in the opposition notice but a certificate is
attached, it is considered that the Member State is sufficiently identified, even if
the certificate is not in the language of the proceedings. A translation of the
certificate should not be asked for at this stage in the proceedings. If it
concerns a certificate of an International Registration it is assumed that the
opposition is based on this mark in all the Member States and/or the Benelux
countries indicated in the certificate.
1.2. Relative identification elements
Page 29
R 15(2)(b)(i),
(vi), (vii) IR
-Representation of the mark
If the earlier mark is a figurative mark, StandL 208 has to be sent. The (colour)
representation has to be requested as soon as the Office is informed that an
earlier mark is a figurative one. If there is a relevant indication in the notice of
opposition, StandL 208 has to be sent before notification. If the opponent
informs the Office at a later stage of the figurative character of his mark, the
representation has to be asked for at that stage. If he does not comply, his
notice will be rejected as inadmissible. (See also paragraph 8.)
-Type of mark
The possible types of mark are Community trade marks, national marks or
international registrations with effect in a Member State/Benelux countries.
- Goods and services
Indication of the goods and services on which the opposition is based: if the
opponent has not indicated them, StandL 208 is to be sent.
- Other indications
Such as the filing date, filing number, registration date: these indications can
be important in order to be able to eliminate possible errors when identifying
the earlier mark. If the absolute identification elements are complete, the
admissibility of the earlier mark as a basis of the opposition is not affected if
these elements are lacking.
2.
Earlier trade mark registrations or application with a reputation
Earlier trade mark registrations or applications with a reputation are marks that
are not only registered or applied for but for which the opponent claims that
they are reputed.
- All the elements required for a registered mark.
R 15(2)(b)(vii)
IR
- All the elements required for a registered mark;
Page 30
- Indication of the goods and services for which reputation is claimed. If nothing
is indicated, it is assumed that the reputation is claimed for all the goods and
services for which the trade mark is registered.
- Indication of the Member State in which the mark has reputation. If this
indication is missing, it is assumed that the mark has reputation in the Member
States indicated in box 60.
3.
Earlier well known mark
According to the CTM Regulation, an earlier well-known mark is a trade mark
that is well known in a Member State, in the sense in which the words well
known are used in Article 6 bis of the Paris Convention. These marks are
protected without registration in the Member State concerned. Registered
marks that are claimed to be well-known are covered by the previous
categories. (See also Part 5, Trade marks with reputation, II, 1.2)
R 15(2)(b)(iii),
(vi), R 18(1) IR
- A representation of the mark: As there is no registration/application number
which allows the Office to unequivocally identify the mark, if the owner of an
earlier well-known mark does not provide a representation of his right within
the opposition period, this right will be inadmissible as an opposition basis
(StandL 205).
- The representation can be the indication of the word if it concerns a word
mark.
- An indication of the Member State where the mark is well known: if this
indication cannot be deduced from the documents on file, the mark is
inadmissible as an opposition basis.
R 15(2)(b)(vi),
R 18(1) IR
- An indication of the goods and services on which the opposition is based. If
the opponent has not indicated them, StandL 208 is to be sent. (See further
paragraph 7.)
- If the owner of an earlier well-known mark does not provide a representation
of his right within the opposition period, this right will be inadmissible as an
opposition basis. However, if the opponent indicates as an earlier well known
mark for example “NIKE (fig)”, he will be given the possibility of remedying the
deficiency and StandL 208 is to be sent.
Page 31
4.
Art.
CTMR,
15(2)(b),
15(3) IR
8(3)
R
R
Agent's mark
An agent's mark is a mark for which the opponent claims that the applicant
who has or had a business relationship with the opponent applied for this mark
without the consent of the opponent.
4.1. Absolute identification elements:
- Registration/application number, or a representation of the unregistered trade
mark of the real owner.
- Indication of the type of his earlier mark in the country of origin (Community
mark, national mark, international registration with effect in a Member State,
well-known mark or national registration in any third country outside the
Community).
- Indication of the country of origin which can also be any third country outside
the Community.
R 15(2)(b)(vivii), R 15 (3)
IR
the opponent has not indicated them, StandL 208 is to be sent.
- Representation of a figurative mark, in colour where appropriate. If the
opponent has not submitted one, StandL 208 is to be sent.
5.
Earlier non-registered marks
This category consists of signs that are unregistered and used as trade marks.
R 15(2)(b)(v),
(vi), R 18(1) IR
- An indication of the word mark or a representation of the figurative mark. If
the owner of an earlier non-registered mark does not provide a representation
of his right within the opposition period (or an indication like "XXX" (fig), this
right will be inadmissible as an opposition basis (StandL 205).
- An indication of the Member State where the mark is protected: if this
indication cannot be deduced from the documents on file, the mark is
Page 32
R 15(2)(b)(vii)
IR
the opponent has not indicated them, StandL 208 is to be sent. (See further
paragraph 7.)
- If the owner of an earlier non-registered mark does not provide a
representation of his right within the opposition period, this right will be
inadmissible as an opposition basis. However, if the opponent indicates as an
earlier non-registered mark for example “NIKE (fig)”, he will be given the
possibility of remedying the deficiency and StandL 208 is to be sent.
6.
Earlier sign used in the course of trade
This category consists of a great number of different earlier rights, among
others rights to a company name, trade name, business sign, ensigns, titles of
protected literary/artistic work and the right to a sign under passing off.
R 15(2)(b)(vi),
R 15(2)(b)(ii),
R 18(1) IR, R
15(2)(b)(v) IR
- An indication of the sign (word) or a registration/application number of the
sign if it concerns a registered sign or, if it concerns a figurative earlier sign, a
representation of this sign. If the owner of a figurative earlier non-registered
sign used in the course of trade does not provide a representation within the
opposition period (or an indication like "XXX" (fig), this right will be inadmissible
as an opposition basis (StandL 205).
- An indication of the nature of rights: the nature of the right determines the
scope of the opposition and the applicant’s defence depends on it. “Trade
name”, “company name”, “business sign”, “passing-off”, “titles of protected
literary/artistic work” are acceptable indications of the nature of rights. On the
contrary, general terms such as “common law” and “unfair competition” without
an indication of the specific nature of the right are not accepted because they
do not identify a specific right. (This list is not exhaustive.)
However, if the opponent bases his opposition on a right that cannot be an
earlier right under 8(4) CTMR, e.g. a copyright or a design, the opposition is
admissible. However, after the proceedings have commenced the opposition
will be rejected on substance.
- An indication of the Member State where the sign is protected: if this
indication cannot be deduced from the documents on file, the sign is
Page 33
R 15(2)(b)(vii)
IR
the opponent has not indicated them, StandL 208 is to be sent.
- In cases of trade names or similar signs the opponent has to indicate the
commercial activities in the course of which the sign is used. If there is no such
indication, StandL 208 is to be sent. In the absence of a reply, the Office will
reject the opposition under Rule 18(2) IR applying Rule 15(2)(b)(vii) by
analogy.
R 15(2)(b)(vivii), R 15(3) IR
- Representation of a figurative mark or sign, in colour where appropriate. If the
opponent has not submitted one, StandL 208 is to be sent. If he has only
indicated for example “NIKE (fig)”, StandL 208 is also to be sent.
7.
R 15(2)(b)(vii)
IR, R 18(2) IR
List of goods and services
The list of goods and services in the language of the proceedings is a relative
admissibility element. Therefore, it must be checked if the opponent has
provided a list of goods and services or activities of the earlier rights on which
he bases his opposition.
The opponent can base his opposition either on all the goods and services (or
activities if it concerns an earlier sign used in the course trade) or on part of the
goods and services (activities) for which his earlier rights are registered (or
used). The list can be indicated in the opposition notice itself or in an
attachment or in a registration certificate.
Only when it is clear which goods, services or activities these are, and when
they are specified in the language of the proceedings has the opponent
complied with the requirement.
In all other cases, i.e. no list of goods and services or activities has been
provided, when this list is not in the language of the proceedings, or when the
opponent has used unclear terms (for example 'collectible items'), StandL 208
has to be sent.
Independent of whether the opponent uses the OHIM opposition form, it has to
be clear on which goods and/or services of his earlier right he bases his
opposition. Therefore, if an indication like "the opposition is based on all goods
in class 9" is used and no registration certificate is attached, StandL. 208 must
be sent. The opponent has to specify which goods these are. The Office
requires a specification in the language of the proceedings.
Only when he replies that he owns a registration with a description that
Page 34
mentions that the sign is registered for “all goods in class 9”" is this acceptable.
If the opponent has not indicated, or has not clearly indicated, on which goods
and/or services he bases his opposition, in cases where a certificate in the
language of the proceedings is attached, it is assumed that the opposition is
based on those g&s that appear in the certificate.
However, if the certificate is in a language other than the language of the
proceedings, StandL 208 is to be sent.
If an opposition is based on “all identical / similar g&s”, StandL 208 should be
sent as this wording is not sufficiently clear to identify the basis of the
opposition.
R 18(2), R
71(1) IR
BoA
Boulevard, R
844/1999-1
In the cases where StandL 208 is sent, but no list of g&s is provided within the
time limit, the opposition has to be rejected as inadmissible.
The time limit of two months set by the Office is not extendable.
8.
Representation of earlier mark/sign
R 15(2)(b)(vi),
R 18(2) IR
In order to judge the identity/similarity between two marks, a representation of
those marks/signs is indispensable. As soon as it becomes clear that a
figurative or 3D mark or sign is invoked, the Office must request a
representation of that mark/sign, even if it may later appear that the figurative
or 3D element will not play an important role in the evaluation of
identity/likelihood of confusion.
R 18(2) IR
The deficiency of a missing representation of an earlier mark/sign can be
remedied if it concerns an earlier registered mark/sign: StandL 208 is to be
sent. In this case the mark is identified through the indication of the type of
mark, the Member State and of the registration number.
When the earlier mark or sign is not registered, there is no possibility of
identifying the mark/sign with certainty if no representation is provided within
the opposition period.
If the owner of a non-registered mark or sign (an earlier well known mark/an
earlier non-registered sign used in the course of trade/an earlier non-registered
mark) does not provide a representation of his right within the opposition
period, this right will be inadmissible as an opposition basis (StandL 205).
However, if the opponent indicates as an earlier non-registered mark for
example “NIKE (fig)”, he will be given the possibility of remedying the
deficiency and StandL 208 is to be sent.
Page 35
8.1. Late information about the figurative character of a mark/sign
When after notification of the opposition it becomes clear that the earlier nonregistered mark or sign is figurative (and not a word mark as the opponent had
indicated in the notice of opposition), it will be decided in a decision on
substance that the opponent did not submit valid evidence of the respective
earlier non-registered mark or sign. However, when the differences between
"word" and "figurative" are marginal the evidence can be accepted as valid.
8.2. Mark/sign in colour
If the mark/sign is in colour, a colour representation is to be asked for.
If the opponent fails to comply with the request the opposition will be rejected
as inadmissible or the earlier mark will not be taken into account if the
opposition is based on other earlier rights as well.
A colour representation of the mark is not compulsory if the national mark was
not published (for technical reasons) in colour, as is the practice, for example,
in Spain and Portugal. In these cases we neither ask for a colour
representation nor request the opponent to file a translation of the colour
indications.
8.3. No clear representation
R 80(2),
18(2) IR
R
If the representation on file is not clear, the Office may ask for a clearer one
(StandL 208). If the representation that is received is incomplete or illegible
and the request to provide a clear one is not complied with, the representation
will be deemed not to have been received and the opposition will be rejected
as inadmissible.
Page 36
VII. THE OPPONENT/ENTITLEMENT
1.
Art.
42(1)
CTMR
R
15(2)(c)(i) IR
Opponent
The opponent can either be a natural person or a legal person. In order to be
able to identify the opponent, there should at least be an indication of his name
and an indication of where he can be reached.
Until now there have been no oppositions where the opponent was not
identified. If only the name of the opponent and for example a fax number is
indicated, StandL 208 must be sent asking the opponent to give the particulars
of his domicile.
When examining if the opponent is clearly identified, attention should be given
to the nature of the opponent, i.e. natural or legal person. If it is unclear
whether the opponent is a natural or a legal person, or when the type of legal
person (for example GmbH, KG, SA, Ltd) is not indicated, StandL 208 is to be
sent.
2.
Art.
42(1)
CTMR,
R
15(2)(c)(i-iv)
IR
Entitlement
The opponent has to indicate his entitlement to oppose. In other words, he
should indicate in what capacity he acts, if he is the owner, an authorised
licensee or a person authorised under national law.
2.1. Capacity
- If the notice of opposition is based on the grounds of Article 8(1) or 8(5)
CTMR and thus on trade mark registrations or applications, notice of
opposition may be filed by the owner and by the licensees of these
registrations or applications, provided they are authorised by the owner.
- If the notice of opposition is based on the grounds of Article 8(3) CTMR (an
agent's trade mark), it may be filed by the owner of that trade mark.
- If the notice of opposition is based on the grounds of Article 8(4) CTMR
(earlier marks or signs), it may be filed by the owner of that earlier mark or sign
and by persons authorised under the relevant national law to exercise the
rights to the earlier mark or sign.
As long as the opponent claims to own a right or registration in one of the
Member States of the European Union, he is entitled to file an opposition,
Page 37
irrespective of his country of origin.
Even though it is mandatory to indicate the entitlement in the notice of
opposition, as in the majority of cases the opposition is filed by the owner, if
nothing is indicated the opponent should be invited to specify his entitlement
with StandL. 208.
If nothing is indicated but a certificate is attached confirming the opponent as
owner, it is not necessary to send StandL 208.
2.2. Change of owner (transfer of earlier mark) before the
opposition is filed
Where the earlier mark has been transferred before the opposition is filed, a
distinction has to be made between oppositions based on an earlier CTM
(2.2.1) and oppositions based on national trade mark registrations (or
applications) (2.2.2).
2.2.1. Oppositions based on an earlier CTM
Art. 17(6), (7)
CTMR,
R
15(2)(c)(iii) IR
An opposition based on Community registrations or applications may be
entered by the successor in title of a CTM(A) only if the conditions set out in
Article 17(6) of the CTMR are met, namely, only if the opponent has filed a
request for the registration of the transfer when the opposition is filed.
(According to Article 17(7) CTMR, where there are time limits to be observed
vis-à-vis the Office, the successor in title may make the corresponding
statements to the Office once the request for registration of the transfer has
been received by the Office.) In the absence of such a request, the opposition
is inadmissible.
Rule 15(2)(c) IR indicates that where the opposition is entered by the
successor in title to the registered proprietor of a Community trade mark who
has not yet been registered as new proprietor, the opposition notice shall
contain an indication to that effect, the name and address of the opponent, and
an indication of the date on which the application for registration of the new
proprietor was received by the Office or, when this information is not available,
was sent to the Office.
It is up to the opponent to provide this information, and it will not be checked by
the examiner when doing the admissibility check. Only when the opponent in
the explanation of his opposition mentions that he is the new owner (or similar
terms), StandL 208 has to be sent asking the opponent to indicate the date the
request for registration of the transfer (was sent to or) received by the Office.
2.2.2. Opposition based on a national registration or application
Page 38
An opposition based on a national registration or application may be entered
by the 'old' owner or by the successor in title, as there are different practices in
the different Member States on the necessity of registration of the transfer in
the national trade mark register in order to be able to claim rights arising from
the registration.
In some cases the opposition is filed by opponent A whereas, after a transfer
of the earlier mark on which the opposition is based, the mark is owned by B.
As A may still appear in the relevant register as the owner, the Office
nevertheless accepts the opposition as valid with A as opponent, even though
he is no longer the owner of the earlier mark.
If the opposition is filed with B as opponent and a copy of the registration
certificate shows A as owner of the earlier mark, the opposition is accepted as
admissible on the assumption that the earlier mark was transferred to B before
the opposition was filed. (Or, if so indicated in the notice of opposition, that he
opposes in his capacity as licensee.)
3.
R 75(1) IR,
BoA, Emultech
R 623/1999-1
Multiple opponents
In some case there is more than one opponent indicated in the notice of
opposition. There are only two situations in which the Office accepts two or
more separate persons (either natural or legal) as multiple opponents, namely:
- if they are co-owners of the earlier mark or right;
- if the opposition is filed by the owner of an earlier mark or right together with
one or more licensees of these earlier marks/rights.
If there is no indication that the multiple opponents fulfill one of the two
requirements mentioned above, they are to be asked to indicate their
relationship (co-ownership or owner/licensee) or to indicate one of the multiple
opponents as the only opponent: StandL 208 is to be sent.
3.1. Co-owners
Co-ownership exists when one mark (or right) is owned by more than one
person.
In principle, if the opponents confirm that all earlier rights are registered in the
names of all (co-owned), the opposition can proceed with all of them as
opponents.
However, if the opponents inform the Office that, for example, Company A B.V.
owns five of the earlier rights and Company A PLC another five, they will have
to indicate with whom the opposition will continue. As a consequence, five out
Page 39
of the ten earlier rights will not be taken into account. If the opponents do not
respond appropriately within the two-month period set in StandL 208, the
opposition will be rejected as inadmissible.
Acceptable
Earlier trade marks
Owner
1
A/B
2
A
3
A
4
A
5
A
Earlier trade marks
Owner
1
A/B
2
A/C
3
A
4
A
5
A
The second combination is acceptable only if at least A is one of the
opponents.
Not acceptable
Earlier trade marks
Owner
1
A
2
A
3
B
4
B
5
B
The opponents will have to be asked to indicate if they want to continue the
proceedings with A or B as an opponent. (StandL 208).
Earlier trade marks
Owner
1
A/B
2
A
3
A
4
B
5
B
The opponents will have to be asked to continue the opposition either as
multiple opponents based on the first three earlier trade marks or as multiple
opponents based on the first, fourth and fifth earlier trade marks. (StandL 208).
Earlier trade marks
Owner
1
A/B
2
B/C
3
A
4
A
5
A
The opponents will have to be asked to continue the opposition either as
multiple opponents B and C based on the first and the second earlier trade
marks or as multiple opponents A and B based on the first, third, fourth and
fifth earlier trade marks. (StandL 208)
3.2. Indication of relationships other than co-ownership
Where two opponents are mentioned in the notice of opposition, one as owner
of the earlier right, and another as licensee (authorised by the owner to file
Page 40
opposition), no objections will be raised if the owner of all earlier rights on
which the opposition is based is the same legal or natural person, regardless
of how many licensees join him in the case.
In the following example the opposition is acceptable with A, B and C as
multiple opponents:
Earlier trade marks
Owner
Licensees
1
A
B
2
A
C
3
A
None
On the contrary, in the following case, although B is accepted as multiple
opponent as licensee for earlier mark 1, he cannot be accepted as multiple
opponent as owner of earlier mark 3. The Office will send StandL 208 asking
the opponents to indicate if they want to continue the opposition with A or with
B as an opponent. If the opponents do not reply, the opposition is inadmissible.
Earlier trade marks
Owner
Licensees
4.
1
A
B
2
A
C
3
B
A
Evidence
In cases where the opposition is based on earlier registered marks the most
common means to furnish evidence of co-ownership is to submit a copy of the
registration certificate. If the opposition is based on several earlier marks/rights
but the opponents have already filed evidence of co-ownership of one earlier
registered mark, the opponents will still be required to confirm the ownership of
the other earlier rights by sending StandL 208. As at this stage of the
opposition proceedings the opponents are not obliged to file evidence of their
earlier marks/rights, a statement confirming their capacity to file an opposition
together will be considered sufficient for admissibility purposes.
Page 41
VIII. OPPOSITION NOTICE NOT SIGNED
R 79(a) IR
The opposition notice must have been signed by the opponent or, if it is
submitted by a representative, by the representative.
If the signature is missing, StandL 208 must be sent. The opponent or his
representative is given two months to remedy.
Page 42
IX. EXTENT OF THE OPPOSITION
The description of the goods and services against which the opposition is
directed has to be examined to see if it is sufficiently clear. If this is not the
case, StandL 208 has to be sent. The basic rule is that is has to be absolutely
clear against which goods / services the opposition is directed.
If the opponent indicates that his opposition is directed against all the goods of
the CTM application, there are no doubts and the opposition is admissible in
this respect.
If there is no indication at all, we assume that the opposition is directed against
all the goods and services of the CTM application and the opposition is
admissible.
However, if the opponent indicates that the opposition is only directed against
part of the g&s of the CTM application (box 91 of the OHIM opposition form),
he will have to identify these goods. If he does not do so, either in the notice of
opposition or in the explanation, StandL 208 must be sent. If the deficiency is
not remedied within the deadline given, the opposition will be rejected as
inadmissible.
There are cases where, in reply to our letter asking him to identify exactly
which of the goods and services he opposes, the opponent indicates “all the
g&s which the CTM application is applied for”. In such cases, we cannot
accept this indication as valid. This is because by indicating that the opposition
is directed only against part of the goods and services of the CTM application,
the opponent has clearly limited his opposition in this respect and cannot
extend its scope after the opposition period of three months. In these rare
cases, we send a 2nd letter to the opponent explaining this legal situation and
giving two further months for filing an indication which does not contain all the
goods and services. If the opponent does not respond appropriately to this
request, the opposition will be rejected as inadmissible.
The extent of the opposition is correctly indicated where the goods are
specific goods encompassed by a broader term used in the contested
specification (e.g. opposition directed against trousers and the CTM application
is filed for clothing). There is no need to send StandL 208. However, when the
opponent uses ambiguous wording like “the opposition is directed against all
goods similar to …”, when the opponent’s goods are substituted for applicant’s
goods, or any other indication that does not clearly identify the contested
goods and services, a clarification must be asked by sending StandL 208.
Page 43
X. REPRESENTATION
Art
88,
CTMR
89
In principle, neither the opponent nor the applicant need to be represented
before the Office. However, parties to proceedings before the Office with no
domicile or seat or establishment within the EU cannot deal with the Office
directly and need to be represented by a person qualified to act as
representative before the Office.
If a natural person deals with the opposition or application himself, the Office
communicates directly with this person. If a legal person deals with the
opposition or application, this is normally done by an employee of the legal
person. Who this person may be depends on the national law that governs the
company. The entitlement to act on behalf of the party to the proceedings
depends on the law applicable to that party and will be governed by contract
law or company law, etc. Entitlement to act is not examined by the Opposition
Division, so no evidence that the person signing a notice of opposition is
actually authorised to do so under national law is required. However, if the
other party contests the capacity of the person to act on behalf of the
company, further explanations or clarifications will be required. A-staff will deal
with these cases.
If the natural or legal person wants or needs to be represented, he can choose
from two categories of persons that may act as representatives, namely legal
practitioners and professional representatives.
If the opponent/applicant has designated a representative, the Office must
always communicate with this representative.
1.
R 77 IR
Legal effect of notifications to or by the representative
Any notification of the Office sent to the duly authorised representative has the
same effect as if it had been addressed to the represented person.
Any notification or letter of the duly authorised representative sent to the Office
has the same effect as if it originated from the represented person.
2.
Art. 79 CTMR
Conflict of interest
It is not possible for the same representative to represent both the applicant
and the opponent because there would be a conflict of interests. In this case
one of the parties will have to choose a different representative. A-staff will
deal with these cases.
An exception to this rule can be made in cases where the proceedings are
Page 44
concluded with a friendly settlement before the adversarial part and before the
cooling-off period of the proceedings at the very beginning of the procedure
(admissibility stage). Only in these rare cases is it accepted that the same
representative represents the interests of both parties. However, even then it
must be obvious that there are no contradictory interests of the parties. If that
should be the case, the parties will be invited to designate their respective
representatives.
R 75 IR
3.
Multiple representatives, common representative
It is possible for each party to have more than one representative who may act
either jointly or separately. There is no fixed maximum number of
representatives.
The Office, however, will communicate only with the first named
representative. If there is more than one opponent and the notice of opposition
does not name a common representative, the opponent first named in the
opposition notice shall be considered to be the common representative.
However, if one of the opponents is obliged to appoint a professional
representative (because he is from outside the European Union), such
representative shall be considered to be the common representative, unless
the opponent first named in the opposition notice has appointed a professional
representative.
R 76(8) IR
Where there is more than one opponent/applicant, the representative of the
person named first shall be the common representative of all these persons. If
the person first named has not appointed a professional representative and
one of those persons is obliged to appoint a professional representative and
has done so, such representative shall be considered to be the common
representative for all these persons.
4.
R 76 IR
Change of representative
During the oppositions proceedings the opponent’s and the applicant’s
representative may change.
Page 45
XI. AUTHORISATION
Pursuant to Articles 88 and 89 CTMR and Rule 76 CTMIR representatives
must file a written authorisation for entry into the file, either as an individual or
as a general authorisation. Details are set out in Part A, Chapter 5, of the
Guidelines for Proceedings before the Office. Hereinafter, only the
particularities for oppositions proceedings are set out.
If a natural person represents himself, there is no need for an authorisation. If
a legal person represents itself, the person entitled to represent the company
in legal acts – manager, CEO, … - may represent the company. Furthermore,
a legal entity may authorise any of its employees to act on its behalf before the
Office. However, in this case a written authorisation, authorising this employee
to represent the legal person must be submitted.
It is the national law that determines who can represent a legal entity. The
Opposition Division does not check if the person who has signed the notice of
opposition (or the authorisation) was entitled to do so. Only if the applicant
contests the capacity of the person who has signed on behalf of the company,
the opponent will be asked to clarify. A-staff will deal with these cases.
R 76(2) IR
A general authorisation entitles the representative to represent the
applicant/opponent in all current and future proceedings before the Office,
including opposition proceedings.
An individual authorisation entitles the representative to represent the
applicant/opponent only in the indicated proceedings.
This means that an individual authorisation to register a CTM allows the
representative to act in the name of the applicant in all proceedings concerning
the registration of this mark, e.g. to file the application and to defend it in
opposition proceedings. However, this individual authorisation does not entitle
the representative to file an opposition against another CTMA, even if the
opposition is based on the earlier CTM for which he had an individual
authorisation.
1.
Authorisation for multiple opponents
If an opposition is filed by multiple opponents (for example co-owners), it
suffices that the authorisation is only signed by one of the opponents.
Rule 75 IR mentions that if the opponents do not name a common
representative, the opponent who is mentioned first is considered to be the
Page 46
representative of all the opponents. As a common representative he can
authorise a professional representative to represent all opponents.
2.
Extension of time limits
R 76(4), R An extension of the time limit to file an authorisation is possible under the
71(1), (2) IR
condition that the extension of the time limit is properly justified.
The time limit of StandL 2.10 (two months to appoint a new representative) will
not be extended.
Page 47
B. NOTIFICATION OF THE OPPOSITION
I.
R 19(1)IR
NOTIFICATION
After the expiry of the opposition period and as soon as the Office finds that
the notice of opposition is admissible, the Office communicates it to the
applicant.
According to our current experience, the notification is usually not done before
three weeks after the expiry of the opposition period, taking into account that
most part of the oppositions are received within the last five days of the
opposition period and that the Office needs time to key the opposition into
Euromarc, to do the admissibility check etc. If the notice of opposition is filed at
an early stage of the opposition period and the admissibility check is
completed even before the expiry of the three-month period, the Office will
however wait two or three weeks after the expiry of the opposition period to
notify the opposition. This time is needed to check if other oppositions against
the same CTM application have been filed.
The notification is done by using StandL 211 and 212. Two different versions
are available depending on whether the opponent will be given two months
after the end of the cooling off period to complete his file (Version A) or not
(Version B). It should be noted that Version B will only be sent when the
opponent expressly stated that the opposition is complete. As this is rarely the
case, the common practice is to send Version A. The StandL 212 to the
opponent includes an annex that advises him about the nature of the
information he should submit to the Office to substantiate the earlier rights that
he claims.
In both versions the cooling-off period will be set to expire two months from the
notification. The exact day of the expiry will be indicated, as is currently the
case. This day will always be two months from the notification date, even if this
is a day on which the Office is not open, e.g. a Saturday or Sunday.
Version A – File not complete (six months)
R 16(3), 20(2)
IR
The opponent will be given a period of two months after the expiry of the
cooling-off period to complete his file by submitting (any additional) facts,
evidence or arguments in accordance with Rule 16(3) and Rule 20(2) IR. In
actual practice, the period for submitting such additional material will be set at
four months from the date of notification. Therefore, opponents should be
aware that the period for submitting such additional material is not a period of
two months beginning after the cooling-off period has expired, but a period of
four months from the notification. The difference will be of significance when
the cooling-off period itself expires on a day when the Office is not open.
Page 48
The request to the opponent is a general invitation to complete the file within
the meaning of Rule 16(3) and Rule 20(2) of the Implementing Regulation. The
Office will not indicate the nature and type of the material necessary for a
completion of the file. Rather, it will be for the opponent to decide what he
wishes to submit. In order to facilitate the task of opponents, the Office has
prepared a list that enumerates the type of evidence generally required,
depending on the nature of each right. This list, which is annexed to StandL
212 (Annex 3), may be used by opponents as a check-list in preparing their
oppositions.
R 19(1), 20(2)
IR
The applicant will be given an additional period of two months for replying to
the opposition in accordance with Rule 19(1) and Rule 20(2) IR. Rather than
setting a separate period of two months (two months for the cooling-off period,
two months for completing the opposition, two months for replying), the period
for replying to the opposition will be set at six months from the day of
notification of the opposition. When the opponent completes his opposition any
time after the notification and before the expiry of the four months available to
him, the additional material will be forwarded to the applicant without any
change in the period available for responding to the opposition. However, if the
additional material arrives at the Office without sufficient time to forward it to
the applicant within the period set for the opponent, the additional material will
then be forwarded to the applicant together with the setting of a new time limit
of two months for replying to the opposition. This separately set two-month
period will run from the date of the receipt of the notification of the additional
material in order to ensure that the applicant always has a full period of two
months for preparing his reply.
Version B – complete file (four months)
There may be situations when the opponent wishes to accelerate the
proceedings and may not need the two months for submitting additional
material. In these cases, the opponent should submit all material together with
the notice of opposition or shortly thereafter, and in any event before the
opposition is formally notified to the applicant., If the admissibility check
reveals deficiencies that have to be remedied, the opponent will be able to
complete his file within the term available to him for remedying the
deficiencies. Only when there is an express statement from the opponent to
the effect that the opposition is complete and that he renounces to the period
of time to complete his opposition, the opponent will not be given an additional
period and the notification of the opposition to the applicant will state that the
period for replying to the opposition expires four months from the notification of
the opposition (two months cooling-off period, two months for the reply).
Page 49
II.
NOTIFICATION - SPECIAL ISSUES
1.
Art. 8(2), Art.
42(1) CTMR
“Earlier rights” that are not earlier within the meaning of Article
(8)(2) CTMR
Sometimes an opposition is based on one or more marks or other rights that
are not earlier than the CTM application, within the meaning of Article 8(2),
because they were applied for/registered later than the CTM application. Two
cases have to be distinguished:
1.1. Opposition only based on a mark/ right that is not earlier
In such cases and if the opposition is admissible a decision on substance has
to be taken. The absence of any prior rights will result in the rejection of the
opposition. As in these cases the outcome of the decision is obvious, the
Office will avoid expensive and time-consuming exchanges of observations
between the parties and will decide on the matter as soon as possible.
The practice in these cases is to notify the opposition as usual. However, in the
standard letter the parties will be informed that the Office will take a decision
after the expiry of the cooling-off period as the “earlier” right(s) on which the
opposition is/are based are not actually earlier rights within the meaning of
Article 8(2) CTMR. No time limit to file observations will be granted. However,
the opponent will have the two months of the cooling off period to react to the
letter. The opponent may choose to withdraw the opposition during the cooling
off period or he may want to put forward arguments contesting the findings.
The following paragraph should be added to StandL 211, 212:
Please note that the examination of the notice of opposition has shown that the
mark on which the opposition is based is not actually an earlier right within the
sense of Article 8(2) CTMR. Consequently the Office will issue a decision
rejecting the opposition as unfounded as soon as the cooling-off period
expires.
1.2. Opposition based on earlier and non-earlier marks/rights
Where the opposition is based on more than one right and one or more are
earlier, and some or more are not, the Office will notify the opposition as usual
and no mention will be made of the fact that one or more marks/rights are not
earlier. The issue will then be dealt with in the decision.
Page 50
2.
Multiple oppositions
When there are multiple oppositions against the same CTM application, it is
the practice of the OD to notify the applicant of them all at once. However, if for
reason of economy of proceedings, the Office decides not to notify them at the
same time (e.g. in one opposition the completion of the admissibility check is
delayed), when notifying the opposition to the applicant copies of the other
oppositions must be included for information purposes. The attachment is
limited to the notice itself without further documents. It must be assured that
the correct opposition number is written at the top of each opposition notice.
Otherwise the applicant could become confused as to the identification of the
oppositions.
3.
Art.
8(2)
CTMR,
R
18(1), R 18(2)
IR
Some earlier right(s) will not be taken into account
If the opposition is based on several earlier rights and one of them will not be
taken into account because it is inadmissible, the parties will have to be
informed of this with the StandL 211 and 212. This might be the case for
example:
When the opponent has not clearly identified one earlier right;
When the opponent did not submit the (colour) representation or the list of
goods & services and did not remedy these deficiencies within the time limit
given in StandL 208.
The following paragraph should be added to StandL 211, 212:
Please note that earlier trade mark / the earlier right …(specify) on which the
opposition is based will not be taken into account because……… (specify).
R 20(6) IR, R
21(2) IR
4.
Suspension
According to Rule 20(6), the Office “may” suspend opposition proceedings
where the opposition is based on a CTM application or national trade mark
application. Therefore, the question of suspension in these cases is always a
discretionary decision of the examiner in charge of the opposition.
After having decided that an opposition must be suspended, a second and also
discretionary question remains, namely at what point in time to suspend the
proceedings.
Opposition proceedings can be suspended before commencement of the
Page 51
adversarial part of the proceedings.
In general, the opposition(s) will be suspended when the opposition is notified
in order to “save” the cooling-off period for the time after the proceedings are
resumed. This is done by adding a paragraph to StandL 211 and 212.
5.
Notifications by mail
Whenever the fax number of the opponent and applicant (or their
representatives) is known the Office usually notifies the opposition by fax.
However, there are some exceptions to this rule. For example, if the opposition
is based on an earlier trade mark registered or applied for in colour, the
opposition will be notified to the applicant by mail.
The same applies, if for reasons of legibility the documents submitted by the
opponent should not be sent by fax. In these cases an annotation in the file
should be made.
Furthermore, if there are more than three oppositions against the same CTMA,
the practice is to notify them by mail, to make it easier for the applicant to
identify the different documents belonging to the different oppositions.
Page 52
Procedural issues
CHAPTER 2 - PROCEDURAL ISSUES
I.
OUTLINE OF THE PROCEEDINGS
Opposition proceedings start with the filing of the notice of opposition. After
examination of the opposition notice, and once it is found to be admissible, the
applicant is notified of the opposition.
The notification sets the deadlines for the proceedings. It starts with a period
during which parties can negotiate an agreement (with or without any financial
consequences), the so-called cooling-off period. Once this period has expired
the adversarial part of the proceedings begins.
The opponent is then allowed two more months to complete his file, i.e. to
submit all evidence and observations he thinks necessary to make his case.
After these two months, or once the submitted evidence and observations
have been forwarded to him, the applicant has two months to reply to the
opposition.
The applicant has basically two possible ways to defend his application. He
can question the validity of the earlier marks by filing a request for proof of use
and he can file observations and evidence in order to convince the examiner
that the opposition should fail.
If the applicant only files evidence and observations, the opponent is given two
months to comment on the submissions of the applicant and after these
exchanges the opposition is normally ready for decision.
If the applicant files evidence and observations, but also requests the
opponent to prove that the earlier marks were used, there is generally one
exchange more. The observations and the evidence of use submitted by the
opponent are forwarded to the applicant, who will be given two months to
comment. If he does so, his comments are forwarded to the opponent, who will
consequently get an opportunity to file his final comments. After that the
opposition is ready for decision.
In some other cases it may also be necessary or useful to have another
exchange of observations. This can be when the case deals with complex
issues or when the opponent raises a new point that is admitted to the
proceedings. In this case the applicant must be given a possibility of replying. It
is then up to the examiner to decide if another round should be given to the
opponent.
Page 53
Procedural issues
II.
TRANSLATIONS / CHANGES OF LANGUAGE DURING OPPOSITION
PROCEEDINGS
1.
Translation of submissions other than the opposition notice
This chapter deals with translation of submissions made by the parties during
opposition proceedings. For information on language and translation of the
notice of opposition see Chapter I.A.III above.
Submissions of the parties in opposition proceedings have to be in the
language of the opposition in order to be taken into account. For different
submissions there are different rules to be applied. The general rule is Rule 96
IR. However there are two exceptions: Rule 17(2) IR for facts, evidence and
arguments filed by the opponent and Rule 22(4) IR for evidence of use.
1.1. Translation of facts, evidence and arguments filed by the
opponent to complete his file
R 17(2) IR
Rule 17(2) IR applies to the facts evidence and arguments in support of the
opposition that the Office requests from the opponent in StandL 212, i.e.
anything the opponent brings forward to complete his file in the four months
after notification, such as certificates, observations etc.
If these submissions are not in the language of the proceedings, they must be
translated within the four-month period. (This is expressly stated in StandL
212.) Documents that have not been translated in this period are not taken into
account.
1.2. Translation of observations
R 96(1)
There is no special rule for translations of documents drawn up by the
applicant or opponent, either in reply to the notice of opposition or at a later
stage in the proceedings. Consequently for these submissions Rule 96(1) IR
applies.
This means that the applicant or opponent has one month from the date of
receipt by the Office to submit a translation of these documents that are in one
of the languages of the Office, but not in the language of the proceedings. The
Office does not request the parties to send a translation, it has to be sent on
their own initiative.
For example, the language of opposition is English and the applicant must file
observations in reply to the notice of opposition by 26/06/2002. If on
Page 54
Procedural issues
18/05/2002 he files his observations in reply to the opposition in German, he
must file his translation by 18/06/2002.
If he does not do so, the observations are not taken into account. However, as
his deadline only finishes on 26/06/2002, if he hasn't filed a translation by
18/06/2002, he can still validly file documents till 26/06/2002. If he then files
the translations before the end of the period we consider the translation as
valid observations filed in the language of the proceedings within the set
period.
This is different when the applicant files observations in the wrong language on
26/06/2002. If the applicant does not thereafter file a translation within one
month, that is by 26/07/2002, the documents are not taken into account.
Thus, if documents are received in the wrong language the end of the set
period or of the one month after filing must be awaited to see if they can be
accepted.
1.3. Translation of documents other than observations
R 96(2) IR
For all evidence other than the evidence that the opponent must provide within
the four-month period to substantiate his opposition (see above under 1.1),
Rule 96(2) applies. This evidence concerns all documents other than
observations, filed after the four-month period for the opponent to complete his
file.
Examples of this type of evidence are catalogues or magazine articles that are
submitted by the applicant together with his observations in reply to the
opposition.
For this evidence the parties are not under an automatic obligation to furnish a
translation. Rather, the Office must decide whether or not to expressly invite
the party concerned to do so.
The Office exercises its discretion as follows (this practice corresponds mutatis
mutandis to that concerning evidence of use; see below under 1.4):
In principle the Office does not ex officio require a translation. Yet it is vital that
the party to whom the documents are addressed should be able to understand
the meaning of their substantive content. If this is doubtful or contested by the
party-addressee, the Office requires a translation within a specified period.
Together with the invitation to furnish a translation, the Office will draw the
attention of the party concerned to the following.
Page 55
Procedural issues
It is up to the party to evaluate whether a complete translation of all the
evidence submitted may be necessary. However, the documents in question
will only be taken into account in so far as a translation is submitted or in so far
as the documents are self-explanatory, regardless of their word components.
Example: In the case of a national court decision it may be sufficient to
translate those parts only that are relevant for the opposition proceedings.
1.4. Proof of use
R 22(4) IR
The language regime governing proof of use is set out in Rule 22(4) IR.
According to this provision, the means of evidence may be submitted in a
language different from the language of the proceedings. However, the Office
may require the opponent to submit a translation of the evidence into the
language of the proceedings within a specified period.
Therefore, it is at the discretion of the Office whether or not to request a
translation. In exercising this discretion, the Opposition Division balances the
interests of both parties.
It is vital that the applicant should be able to understand the meaning of the
substantive content of the evidence submitted. If this is doubtful or contested
by the applicant, the Office requires a translation within a specified period.
It is then up to the opponent to evaluate whether a complete translation of all
the evidence submitted may be necessary. See under 1.3. above. However,
the means of evidence will only be taken into account in so far as a translation
is submitted or in so far as the means of evidence are self-explanatory,
regardless of their word components.
2.
Art
115(7)
CTMR,
R
17(3) IR
Change of language during opposition proceedings
According to Article 115(7) CTMR, the parties to opposition proceedings may
agree to change the procedural language and choose any official language of
the European Union for that purpose.
Rule 17(3) IR sets forth the conditions under which such a change of language
may occur. It states that the parties may agree to change the procedural
language and are required to inform the Office accordingly prior to the expiry of
the cooling-off period. A request to change the language after the expiry of the
cooling-off period is not accepted by the Office.
When, before the start of the adversarial part of the proceedings, the opponent
and the applicant agree to change the language of the proceedings, Rule 17(3)
IR requires the opponent to “file a translation of the notice of opposition in that
Page 56
Procedural issues
language”. He has to do so within one month of the expiry of the cooling-off
period.
Failure to file such a translation leads to the rejection of the opposition.
Page 57
Procedural issues
III. OBSERVATIONS BY THIRD PARTIES
Art. 41 CTMR
According to Article 41 CTMR, third parties can make observations explaining
why the CTM application the trade mark should not be registered, based on
one of the absolute grounds of Article 7 CTMR. The observations are dealt
with by the examiner in charge with the examination on absolute grounds.
When can such observations be made? Article 41 only mentions “Following the
publication of the Community trade mark application”. Consequently, these
observations can be made until the opposition proceedings are concluded.
Com No 01/00
of
25/02/00,
OJ 2000, 479,
BoA 735/20003, Serie A
As anybody may file third parties observations, it can also be the opponent.
However, if he does so, he should do so in a manner that leaves no doubt.
According to the Communication of the President of the Office of 25 February
2000, the observations must be presented in a separate submission. However,
a decision of the Boards of Appeal establishes that the “separate submission”
requirement is deemed to be satisfied when the observations are clearly
separable from the grounds and arguments supporting the opposition, even if
they are included in the same document. As long as the opponent expressly
mentions that he wishes to make observations under Article 41 CTMR they will
be dealt with, even if they are not made in a separate submission. However, if
in his observations the opponent argues that the CTM application is weak and
should have been refused under Article 7 CTMR, without any reference to the
contents of Article 41 CTMR, this argument will only be taken into account as
an argument under Article 8 CTMR. It is not regarded as observations by third
parties under Article 41 CTMR.
The observations are dealt with by the examiner responsible for the file. When
an opponent makes third party observations, the examiner will consider if the
observations raise serious doubts as to the registrability of the CTMA, or if they
will only be sent to the applicant for information.
If the observations raise serious doubts, the examiner must suspend the
opposition until a decision on the observations is taken. In cases where the
observations do not raise serious doubts (i.e. when the observations have only
been sent to the applicant for information), or do not affect the contested goods
or services, the opposition proceedings should not be suspended.
Page 58
Procedural issues
IV. AMENDMENT OF APPLICATIONS / CORRECTION OF MISTAKES
1.
Amendment of applications
Art. 44 CTMR
According to Article 44(2) CTMR, a CTM application may be amended, upon
request of the applicant, only by correcting the name and address of the
applicant, errors of wording or of copying, or obvious mistakes, provided that
such correction does not substantially change the trade mark or extend the list
of goods or services. Where the amendments affect the representation of the
trade mark or the list of goods or services and are made after publication of the
application, the trade mark application shall be published as amended.
R 13 IR
An application for amendment of the application under Article 44 CTMR must
contain all relevant data to identify the CTM application and the indication of
the element of the application to be corrected or amended, and of course, that
element in its corrected or amended version.
ATMDD deals with changes of name and address. Such applications are not
subject to the payment of a fee.
Where the amendments affect the representation of the trade mark, the
amendment is subject to the payment of a fee.
Where the amendments affect the list of goods or services, the limitation is
treated within the opposition proceedings. Such applications are not subject to
the payment of a fee.
2.
R 14 IR, Art.
42(2)CTMR
Correction of mistakes and errors in publications
Where the publication of the application contains a mistake or error attributable
to the Office, the Office shall correct the mistake or error acting on its own
initiative or at the request of the applicant. The request is not subject to the
payment of a fee.
The corrections effected under this Rule have to be published. If the correction
concerns mistakes that do not affect the opposition, it will be published when
the CTM is registered. Where the correction concerns an extension of the list
of goods or services or the representation of the mark, a new opposition period
is open.
If oppositions were filed after the “first” publication of the CTMA, the opponents
will have to be informed of the re-publication. The opponents that opposed the
Page 59
Procedural issues
“first” publication do not have to file a new opposition. The proceedings must
be suspended until the opposition period following the “second” publication has
expired.
Although it is only a remote possibility, it could be that a “first publication
opponent” wishes to withdraw his opposition as a consequence of the republication. In this case the proceedings should be closed and the opposition
fee should be refunded. (See chapter VI fees, 2.3)
3.
Art. 48 CTMR,
R 25(4) IR
Challenge proceedings against alteration of a CTM registration
Where a Community trade mark includes the name and address of the
proprietor, the alteration thereof may be registered as long as the alteration
does not substantially affect the identity of the trade mark as originally
registered.
According to Article 48(3) CTMR third parties whose rights may be affected by
the alteration of a CTM registration may challenge the registration thereof
within a period of three months following publication of the registration of the
alteration. Where the registration of the alteration is challenged, the provisions
on opposition contained in CTMR and IR shall apply mutatis mutandis (R
25(4) IR).
As registered CTMs are concerned, it is the ATMDD that deals with these
challenge proceedings.
4.
Correction of mistakes in the opposition notice
There are no special provisions in the Regulations on correction of mistakes in
the notice of opposition. Applying Article 44(2) CTMR by analogy, obvious
mistakes in the notice of opposition may be amended.
When is a mistake is an “obvious” mistake? If it is unmistakably clear what the
right indication should have been, the mistake can be deemed obvious and
may be amended.
For example, if the data of the opponent appear where the data of the
representative should appear (or the other way around), this can be
considered an obvious mistake. On the contrary, if the opponent in the notice
of opposition is Dundee Ltd, but the opponent informs the Office later on in the
proceedings that he made a mistake and that the real opponent is Dundee
PLC, this cannot be considered an obvious mistake, as the OD could never
have guessed that the opponent should have been Dundee PLC when
examining the opposition. Consequently the mistake cannot be corrected.
Page 60
Procedural issues
V. TIME LIMITS
1.
BoA
R
409/2000-4
AQUAPEL
General
Time limits are regarded as an essential tool for conducting orderly and
reasonably swift proceedings. Furthermore, “…time limits are a matter of public
policy and rigorous compliance with them is calculated to ensure clarity and
legal certainty. They are not subject to the will or discretion of the parties and it
is not for the parties to extend them at their own convenience …” .
Therefore, time limits have to be strictly observed by the parties.
Non-compliance with a given deadline will necessarily lead to the rejection of
submissions made after its expiry, meaning that belated evidence,
observations, or proof of use will not be taken into account, with all the adverse
consequences this might entail for the party concerned.
The same applies to supplementary materials attached only to the confirmation
copy of a letter that was in itself sent on time (usually by fax), where this
confirmation mail arrives after the expiry of the deadline. This is irrespective of
whether such materials are specifically mentioned in the initial letter.
Only time limits the length which is fixed by the Office may be extended,
provided the requirements set in Rule 71, or when it comes to the “cooling-off
period” in Rule 19, are fulfilled. (See paragraph 4 of this chapter.)
Examples of time limits set by the Regulation are the three-month period to file
opposition and the two months to remedy deficiencies under Rule 18(2) IR. An
example of a time limit set by the Office is the period for filing an authorisation.
R 71(1) IR
The Office is obliged to set time limits no shorter than one month for persons
who have their domicile or for companies that have their seat within the EU. A
two-month time limit has to be given to persons who have their domicile or
companies that have their seat outside the EU.
The Office normally sets time limits of two months. However, in opposition
proceedings there are also time limits of one month. For example, the time
limits to provide evidence of timely payment of the opposition fee and payment
of the surcharge in case of late receipt of payment, StandL 202.
If the last day of a time limit is a day on which the Office is closed (see section
3 of this chapter, expiry of time limits), this date remains the date that is
indicated in the communication of the Office. For example, a letter from the
Page 61
Procedural issues
Office sent to an opponent on 14/09/1999 (Tuesday) with a time limit of two
months will not change into 15/11/1999 (Monday) because 14/11/1999 is a
Sunday, even though any document received by the Office on 15/11/1999 is
deemed to be timely filed.
2.
R 61(2)(d), 62,
70, 72 IR
Calculation of time limits when sending notifications
The Opposition Division sends documents to the parties by fax or by mail.
The majority of the notifications and communications are sent by fax, either
through Euromarc or manually. Some documents are sent by mail, for example
documents containing representations in colour. When sent by mail, the party
concerned does not receive the document immediately, but only after some
days.
Calculations are made in full months. Time limits expire in the relevant
subsequent month on the day which has the same number as the day on
which the communication was received.
Thus, a period of two months granted with effect from 28 June will expire on 28
August. However where the relevant month has no day with the same number
or where the day on which the letter was sent was the last day of the month
the period in question shall expire on the last day of that month. It follows that
a period of two months starting on 31 July expires on 30 September; a period
of two months starting on 30 June expires on 31 August.
R 62 IR
Communications and notifications from the Opposition Division that are sent to
the parties by mail (always sent by registered mail or courier service), are
deemed to be delivered on the 10th day following the day of posting.
For technical reasons, the Euromarc system calculates the time limits
differently.
For any notification that sets a time limit which is sent to the parties by fax, the
Euromarc system calculates the period of time + 1 day from the generation
date of the letter: Date of generation of the letter + two months + 1 day.
For example: Date of the letter 19/02/2002 + 2 months = 19/04/2002 + 1 day =
20/04/2002
For any notification which is sent by mail that sets a time limit, the Euromarc
system calculates the period of time + 12 days from the generation date of the
letter: Date of generation of the letter + two months + 12 days.
For example: Date of the letter 19/02/2002 + 2 months = 19/04/2002 + 12 days
Page 62
Procedural issues
= 01/05/2002
In the notification letters 211 and 212 this may sometimes lead to a somewhat
strange result, but all notifications of oppositions are calculated according to
the aforementioned principle. The dates in StandL 211 must be calculated as
follows:
By fax:
Date of generation of the letter + two months + 1 day = first date (end of
cooling off)
(Date of notification letter 19/02/2002 + 2 months = 19/04/2002 + 1 day =
20/04/2002)
Date of generation of the letter + four months + 1 day = third date (end of
period of time for the opponent)
20/06/2002
Date of generation of the letter + six months + 1 day = fourth date (end of
period of time for the applicant)
20/08/2002)
By mail:
Date of generation of the letter + two months + 12 days = first date (end of
cooling off)
(Date of notification letter 19/02/2002 + 2 months = 19/04/2002 + 12 days =
01/05/2002)
Date of generation of the letter + four months + 12 days = third date (end of
period of time for the opponent)
01/07/2002)
Date of generation of the letter + six months + 12 days = fourth date (end of
period of time for the applicant)
31/08/2002)
However, this way of calculation only applies to deadlines that are set to either
of the parties for the first time. New deadlines after a request for extension of
the cooling off period have to be calculated on the basis of the old deadline +
extension.
Page 63
Procedural issues
For example, if the cooling off period expired on 20/04/2002 and an extension
of two months is requested, the following dates are to be inserted in the
extension letters:
20/04/2002 + 2months = first date (new expiry date of cooling off)
20/04/2002 + 4 months = third date (end of period of time for the opponent)
20/04/2002 + 6 months = fourth date (end of period of time for the applicant)
3.
Expiry of time limits
R 72(1) IR, R
19(1) IR
A period of time expires at midnight (24:00) of its last day.
R 72(1) IR
If the last day of a time limit for a party to submit a document is a day on which
the Office is closed (a Saturday or a Sunday, a day the Office remains closed
according to the decision of the President, or a day ordinary mail is not
delivered in Alicante) a document is still validly filed if it is received on the first
subsequent day on which the Office is open for receipt of documents.
For example, when observations due on 15/08/xx (a public holiday on which
the Office is closed), are received on 16/08/xx, they are filed within the time
limit. The same goes for an opposition for which the three-month opposition
period expires on Saturday or Sunday. It is considered on time if it was
received on the following Monday.
If the last day of a time limit is a national holiday in the Member State where
the party has its domicile or establishment, but this is not a holiday for the
Office, the time limit still expires on that last day, regardless of the fact that this
day is a holiday for one or both parties.
4.
Extension of time limits
An extension will only be possible if (a) the relevant request is made before the
expiry of the original term and (b) it is appropriate in the circumstances, or the
other party agrees with it.
If a request for extension is received by the Office after the expiry of the period
of time, StandL 215 a/b or 226 a/b have to be sent.
Time limits expressly provided for by the Regulations cannot be extended. For
example, the time limit for the opponent to send in the list of goods and
services – upon invitation within 2 months (Rule 15(2)(b), Rule 18(2) IR) (see
detailed information below).
For an extension of extendable time limits, no justification will have to be given,
as long as it is requested by both parties. In this case StandL 224a/225a are
Page 64
Procedural issues
sent.
If only one party requests the extension, this request has to be filed by the
party concerned. For example, if the applicant has to file observations in reply
to the notice of opposition, it can only be the applicant who asks for the
extension. In this case a justification has to be given. If it is the applicant who
asks for the extension, StandL 225 a/b have to be sent. If it is the opponent,
StandL 224 a/b.
If no justification is given for the request, it will be rejected: StandL 226 a/b will
have to be sent.
Finally, extensions of time limits may also be given for periods that are not full
months.
4.1. Non-extendable and extendable time limits
R 71(1) IR
Time limits length of which is set by the Regulation cannot be extended. Nonextendable time limits are:
42(1) The three month opposition period to file opposition.
Art.
CTMR
Art.
42(3)
CTMR
Art. 8(3,4) FR
R 18(2) IR
R 71(1)IR
The three month period to pay the opposition fee.
The one month period to pay the surcharge.
The two month time limit to remedy deficiencies according to Rule 18(2) IR.
Extendable time limits are time limits that according to the Regulations are to
be specified by the Office, for example the time limit to submit observations in
reply to the notice of opposition.
4.2. Request for extension
R 71(1), 79,
80(3,4),
82(3,4), 96(1)
IR
For an extension to be granted the request has to fulfil the following conditions:
- The time limit must be extendable.
- The extension has to be requested by the party concerned.
- The request has to be signed.
- The original time limit must not have expired already.
- Language regime: if the request is not in the language of the proceedings a
translation must be submitted within one month of filing, otherwise the request
will not be taken into account
- Grounds/justification: In accordance with Rule 71(1), the Office may grant an
extension “when this is appropriate under the circumstances”. It is the party
requesting the extension that has to put forward the “appropriate
circumstances”. The evaluation of these circumstances is made by the Office
on a case by case basis, taking into account not only the justification given in
the request, but also any other relevant factors, such as the number of
Page 65
Procedural issues
extensions already granted, the interest of the other party, etc.
In general, mere declarations stating that an additional period is needed (the
consequence) cannot be considered as valid justifications. It has to be
reasonably explained why a period of time was insufficient to comply with the
Office’s request (reason).
Although the practice of the Opposition Division is a flexible one, the following
examples are deemed insufficient to justify an extension, as they only state the
consequence: “An extension is needed”, “The opponent/applicant has not yet
provided instructions or is not available” or “More time is requested to gather
the evidence requested”.
Examples of justifications that can be accepted (where a reason is given):
“Evidence is being gathered from distribution channels in several Member
States/all our licensees/our suppliers”, “As there have been last minute
discussions with the other party, the observations/evidence have not yet been
completed”, “The parties started negotiations” or “the lawyer who is handling
this file is recovering from a serious illness”.
R 71(2) IR
If the parties jointly ask for an extension of a time limit, they do not need to
indicate any grounds.
Conditions for granting a further extension
The Regulations do not put any limit to the number and duration of the
extensions that can be granted by the Office. Nevertheless after having
extended a time limit once at the request of one party, the party will need to
indicate some new grounds or a further explanation when asking for another
extension. In addition, the Office always has the possibility of subjecting the
extension to the agreement of the other party (R 71(2) IR). Since this option is
time consuming, it is not frequently used. The Office will refuse to extend a
time limit when it is not appropriate under the circumstances (R 71(1) IR), see
above.
Interpretation of a request for extension
A request for extension of a time limit may be read in a favourable way for the
party requiring it. E.g. A late request to extend the cooling off period made after
the expiry of the cooling-off period, can be considered to be a request for
suspension on the basis of on-going negotiations between the parties.
Extension of a time limit by the Office on its own initiative
The Office can extend a time limit on its own initiative, if and when particular
reasons make it necessary. E.g. A request to extend a time limit without any
Page 66
Procedural issues
justification is received by the Office 20 days before the end of the period to file
observations, but it was not dealt with by the Opposition Division until after
expiry of the time limit. Because the refusal of the request after expiry of the
time limit will disproportionately harm the interests of the party who requested
the extension, the Office extends the time limit by the number of days that
were left when the party sent in his request, in this case 20 days. When
sending StandL 215a/b refusing the extension, the content will have to be
adapted. This practice is based on the rules of fair administration.
4.3. Extension of the cooling off period
An extension of the cooling off period has to be asked for by both parties,
either in a joint request or in two separate requests. It is not necessary to state
a reason for the extension. Unless a different period of time is requested,
extensions of the cooling off period are granted for 2 months. StandL 214 a/b
have to be sent.
To extend the cooling-off period the following is necessary:
R 19(2), 96(1)
IR, Art. 115(5,
6) CTMR
-A signed request from both parties. It may either take the form of two separate
requests or one joint request.
- In the language of the proceedings. The request has to be either in the
language of the proceedings or translated into that language. A translation can
be filed within one month of filing. The Office does not send any letter
requesting a translation of the request for extension.
- Request filed on or before the expiry of the cooling-off period. If one party
files the request within, but the other after expiry of the cooling-off period, the
extension is to be refused.
Any request filed after the expiry of the cooling-off by both parties in the correct
language will have to be rejected. However, if it is clear that the parties meant
to ask for an extension of a time limit or a suspension of the proceedings, it
may be interpreted and accepted as such.
R 19(2) IR
For the extension of the cooling-off period, the parties do not need to indicate
any grounds at all.
Priority has to be given to answering requests for extension of the cooling-off
period. The parties should be informed as soon as possible whether or not the
Office has accepted their request. If the request is refused, the time limits fixed
in the notification remain unchanged.
If the above mentioned conditions are fulfilled, StandL 214a/b have to be sent.
If not, StandL 215a/b.
Page 67
Procedural issues
If an extension of the cooling-off period is refused, the parties can always ask
for an extension of a time limit or for a suspension of the proceedings.
4.3.1. Calculation of time limits for the extension of the cooling off
Deadlines after a request for extension of the cooling off period have to be
calculated on the basis of the old deadline + extension.
For example, if the cooling off period expired on 20/04/2002 and an extension
of two months is requested, the following dates are to be inserted in the
extension letters:
20/04/2002 + 2months = first date (new expiry date of cooling off)
20/04/2002 + 4 months = third date (end of period of time for the opponent)
20/04/2002 + 6 months = fourth date (end of period of time for the applicant)
4.3.2. Problems solved
R 19(2) IR
Number of extensions/ Duration
Unless the parties ask for a specific number of months, the cooling-off period
will be extended by two months. The maximum number of months that can be
granted per request is six months.
Although there is no limitation in the Regulations about the number of the
extensions that the parties can request, if there are interests of third parties
involved, the parties may be invited to give some clarifications when yet
another extension of the cooling off period is requested, or even may be given
a final extension.
A request by both parties does not necessarily have to be for a period of two
months. E.g. a request for 45 days or until a specified date is acceptable.
If the requests are for different periods of time
If the requests do not refer to the same period of time, e.g. one party asks for
an extension of two months, the other for three, the cooling–off period is to be
extended by the shorter of the two periods.
The request is not signed
R 79 IR
If one of the requests is not signed, first it has to be checked if a signed
Page 68
Procedural issues
request was received later. Sometimes parties forget to sign but realise this
after having sent it, sign and send it again.
A joint request has to be signed by both parties and to be received within the
cooling-off period. A request signed by one of the representatives who assures
the Office that the other party agrees to the extension of the cooling-off period
is not acceptable. Both parties will have to sign.
If the signature of one of the parties is missing, the extension is to be rejected.
Page 69
Procedural issues
VI. FEES (REFUNDS)
1.
Fee refunds / definitive payments
When an opposition closes without a decision, it depends on the respective
circumstances whether or not the opposition fee will be refunded.
1.1. Late payment/Opposition is not duly entered
Art.
42(3)
CTMR
Art. 9(1) FR
If an opposition is deemed as not entered because of late payment, the
opposition fee must be refunded to the opponent. If a surcharge has been
charged, then it must also be refunded.
1.2. CTMA withdrawn before the end of the cooling off period
R 19(3) IR
If the applicant withdraws his CTM application (or all those goods and
services against the opposition is directed) before or during the cooling off
period, the opposition fee must be refunded.
1.3. Opposition withdrawn due to restriction of CTMA within the
cooling off period
If a link can be established between the withdrawal of the opposition and the
restriction of the CTMA in the cooling off period, the opposition fee is refunded.
As the link is not always obvious, in the following cases the opponent will also
get his money back.
1.3.1. When the letter withdrawing the opposition was received by
the Office before the Office had sent StandL. 222a letter to the
opponent but after the applicant's letter limiting the CTMA was
received by the Office.
R 19(3) IR
In this case, even if the opponent’s letter does not make a reference to the
limitation, it is the practice of the Office to refund the opposition fee. There are
two reasons for this. First of all it is assumed that there is a link between the
limitation of the CTMA and the withdrawal of the opposition, and secondly the
opponent should not be punished for submitting the withdrawal before the OD
has sent StandL 222a, giving the opponent two months to decide whether he
wants to proceed with the opposition or not.
the Office before the applicant’s letter limiting the CTMA.
Page 70
Procedural issues
R 19(3) IR
In this case, the necessary link between the withdrawal and the limitation is
missing, therefore, the opposition fee will not be refunded.
However, in instances where there is some evidence that there is a link
between a limitation and withdrawal the opposition fee will be refunded. This
will have to be evaluated on a case by case basis. A good example would be
the case where at least in one of the two letters received from the parties a
reference is made to the content of the other letter, e.g. “…the opposition is
withdrawn because of the limitation of the goods and services…..”.
the Office after expiry of the two-month period set in StandL
222a
If the opponent withdraws his opposition after the expiry of this time period he
does not get the fee back.
However, if the cooling-off period is still running (because it has been
extended) at the time of the expiry of the period for the opponent to inform the
Office whether he maintains his opposition or not (the opponent’s reply to
StandL 222a) , the opponent may still withdraw his opposition by the end of the
cooling off period and get a refund of his opposition fee. This exception
includes the following situations:
R 19(3) IR
i) the opponent does not reply to StandL 222a but subsequently withdraws his
opposition within the cooling-off period, and
ii) the opponent responds to StandL 222a by maintaining his opposition, but
nevertheless withdraws the opposition still within the cooling-off period.
1.4. Opposition withdrawn before the end of the cooling-off period
NOT due to a restriction
R 19(3) IR
If the opponent withdraws his opposition before the end of the cooling-off
period without any restriction of the application the Office neither refunds the
opposition fee nor takes a decision on costs.
1.5. Opposition rejected as deemed inadmissible
R 18 IR
In cases where the opposition is rejected as inadmissible, the Office does NOT
refund the opposition fee, but instead passes the opposition to a definitive
payment status in Euromarc.
1.6. Agreement between parties before commencement
Page 71
Procedural issues
This case is directly linked to the Euromarc status of the same name. The
opposition should be put into status 250=Agreement Between Parties Before
Commencement when the proceedings are ended by an agreement that does
NOT mention either a withdrawal or limitation. Rule 19(3) only mentions the
possibility of a refund of the opposition fee if there is either a withdrawal or a
limitation of the CTMA. If the proceedings end by an agreement, but this
agreement does not contain any mention of a withdrawal or limitation of the
CTMA (e.g. “We hereby terminate the proceedings because both parties have
reached an agreement.”), then the opposition fee is NOT refunded as this
situation is not contemplated in the IR as a reason for refunding the opposition
fee and as it means that the CTMA remains “alive”. Thus, status 250 is a
definitive payment status.
2.
Special cases for refunding fees
2.1. Opposition and withdrawal arriving on the same date
Due to the fact that a day is the smallest unit of time in opposition proceedings,
in cases where a withdrawal is filed on the same day as the notice of
opposition, the Office will deem the opposition and its withdrawal to have
occurred at the virtual second before 0:00 h., and will thus consider the filing
and withdrawal to cancel each other out at that time. In such cases, the Office
refunds the opposition fee.
2.2. 50% refund of opposition fee in cases of multiple oppositions
In certain special cases concerning multiple oppositions, it is possible to refund
50% of the opposition fee to an opponent if one of the oppositions proceeding
was terminated by the rejection of the contested CTMA in parallel opposition
proceedings. For example, if there are four oppositions A, B, C and D
(opponents A, B, C, D) against CTMA X, and CTMA X is rejected due to
opposition A, then opponents B, C and D have the possibility of receiving a
50% refund of the opposition fee.
R 21 IR
Where there are multiple oppositions and the CTM application is rejected due
to one of the oppositions, this 50% refund of the opposition fee is only given if
the other oppositions (B, C and D) have been suspended at an early stage of
the proceedings because a preliminary examination revealed that CTMA X
would probably be rejected in its entirety because of opposition A.
At an early stage has been interpreted as before the expiry of the cooling-off
period, thus before the status of definitive payment.
2.3. Refund after re-publication
Page 72
Procedural issues
If after re-publication a “first publication opponent” wishes to withdraw his
opposition as a consequence of the re-publication, the proceedings should be
closed. As the Office made a mistake with the first publication, the opposition
fee should be reimbursed.
3.
Special cases for NOT refunding fees
3.1. Opposition is deemed not to be entered due to lack of
authorisation of the representative of the EU-opponent and the
opponent does not want to continue the proceedings.
R 76(4) IR
This is the one case where the opposition fee has to be kept by the Office
notwithstanding the fact that the opposition is in either status 214=Final
Decision - Opposition Not Duly Entered or 216=No Decision - Opposition Not
Duly Entered. In this case, the opposition is deemed not to be entered
according to Rule 76(4), which means due to the lack of authorisation of the
representative of the EU-opponent and the unwillingness of the opponent to
continue with the proceedings.
These cases have to be handled as follows:
1) The opposition must be in status 218; the payment must be validated.
2) The opposition must be regeressed from Euromarc status 218 to Euromarc
status 214 or 216, depending on the possible decision issued.
3) A clear and unconditional annotation must be written in the Annotation Card
of Euromarc in order to ensure that the Opposition Fee is not refunded.
4) A mention of the “no-refund” is also to be specified either in the letter of
closure or in the final decision to the opponent.
3.2. Mistaken refund of the opposition fee due to a wrong status
There are some cases where the opposition fee has been mistakenly refunded
due to the fact that the opposition had been put in the wrong status (in
particular, when 254 letters were sent). If the opponent has a current account,
the financial department automatically redebits this account when receiving
from us the information about the mistake. In such cases we should send a
letter to the opponent explaining the situation before informing the Accounting
Department.
Page 73
Procedural issues
Art. 41, 88 (2)
CTMR, R 18,
19, 76(1) IR
3.3. CTMA rejected in parallel proceedings pursuant to Articles 41,
88(2) and Rule 76(4) during the opposition proceedings
In cases where the application is rejected in accordance with Article 41 CTMR
(observations from third parties), Article 88(2) CTMR (representation for nonEU applicants) and Rule 76(4) IR (authorisations), the opposition fee must not
be refunded as none of these situations is contemplated in the IR as a reason
for refunding the opposition fee.
Page 74
Procedural issues
VII. RESTRICTIONS AND WITHDRAWALS
1.
Art.
CTMR
44(1)
Restrictions and withdrawals of CTM applications
The applicant may at any time withdraw his Community trade mark application
or restrict the list of goods and services contained therein.
When the applicant requests a restriction of the list of goods and services of
the CTMA, he must indicate the goods and services he wants to be deleted
from the list, or which goods and services are to be replaced by which other
goods and services, it being understood that the latter must be narrower than
the original goods and services. Therefore, it has first to be considered if the
requested restriction is valid or if the restriction is actually an extension of the
list of goods and services.
A territorial restriction is not possible because of the unitary character of the
CTM.
Neither is a restriction that goes beyond the designated class acceptable. For
example, according to the Nice Classification games are classified in class 28,
whereas electronic computer games are classified in class 9. A request for
restriction of games in class 28 to electronic computer games in class 9 is not
acceptable, as electronic computer games were not covered by the original
application. The restriction would thus be an extension and extensions are not
acceptable.
Furthermore, goods and services that were not covered by the original
specification cannot be excluded. For instance, if the original specification
covers cars in class 12 and the applicant wants to add not including petrol for
cars, we do not accept this limitation, as petrol belongs to class 4 and was
never encompassed by the original specification.
If the restriction is not acceptable, StandL 262a/b have to be sent.
1.1. Class headings
Com 4/03 of
16.6.2003
If a mark has been applied for the class headings, all goods or services that
can be classified in this class are covered by the headings.
Per definition any good in a certain class falls under one of the general
indications in the class heading.
Page 75
Procedural issues
This means that when the applicant requests to restrict his application (which
consists of all the general indications of a class heading of a certain class) to
certain specific goods in that same class, the restriction is acceptable. If the
application contained only some of the general indications of the particular
class heading, it must be verified if the specific goods or services come under
these general indications.
For example, if a CTMA has been applied for the class heading of class 10
(surgical, medical, dental and veterinary apparatus and instruments, artificial
limbs eyes and teeth; orthopaedic articles; suture materials) and the applicant
subsequently requests to limit his application to condoms the limitation is
acceptable.
If the CTMA has only been applied for the general indication dental apparatus
and instruments this limitation would not be acceptable as condoms cannot be
regarded as falling under this category.
1.2. Conditional restrictions
The OD does not accept restrictions that are conditional. For example, if, in his
observations in reply to the opposition, the applicant argues that the signs are
dissimilar but should the examiner find them similar, he will limit the list of
goods and services of the CTM application, this restriction is not acceptable.
The applicant must be informed that the limitation must be express and
unconditional.
1.3. Request for restriction only partly acceptable
If a restriction is partly acceptable and partly unacceptable (for example
because it constitutes an extension), the OD accepts the restriction for the
acceptable part. However, before proceeding with the limitation, the applicant
is informed of the part that cannot be accepted and is given two months to
react (StandL 262a/b). The opponent must be sent a copy of the limitation and
the reply of the Office to the applicant. If within the two months the applicant
reacts with a corrected version that is acceptable, the limitation can be
processed. On the other hand, if the applicant does not react, the limitation is
only processed insofar as it is acceptable.
If the opponent withdraws his opposition because of an unacceptable limitation
(even before the OD has officially informed him), the withdrawal will not (yet)
be taken into account, and will be dealt with only after the limitation has
become acceptable.
If the restriction is acceptable, a confirmation is sent to the applicant: StandL
217 in case of a restriction, StandL 216 in case of a withdrawal. Depending on
the moment in the proceedings (and thus the status), the limitation or
Page 76
Procedural issues
withdrawal has different consequences, described below.
1.4. Withdrawal or restriction before admissibility check is made
When the CTMA is withdrawn or restricted to non-contested goods before
notification of the opposition, the opposition proceedings are closed unless the
opposition has already been rejected as inadmissible. In other words dealing
with the withdrawal or restriction in these cases has priority over the
admissibility.
In the case of a restriction that may still include contested goods and services,
an admissibility check is done and the opponent is invited to remedy any
deficiencies at the same time as the restriction is notified. If the opposition is
withdrawn, the opposition fee is refunded. This is the case even if irremediable
deficiencies exist.
1.5. Restrictions and withdrawals of CTM applications before the
end of the cooling-off period
1.5.1. Restriction covers whole extent of the opposition / withdrawal
R 19(1), (3)IR
If it is absolutely clear that the restriction covers the whole extent of the
opposition or when the CTMA is withdrawn, StandL 218 a/b are sent. The
opponent is refunded the opposition fee. No decision on costs will be taken.
1.5.2. Restriction does not (seem to) cover the whole extent of the
opposition
If it is not completely clear that the restriction covers the whole extent of the
opposition and when the restriction does not cover the whole extent of the
opposition, StandL 222 a/b are sent. If the opponent then agrees to the
restriction and withdraws his opposition, StandL 254 a/b are sent. The
opponent is refunded the opposition fee. No decision on costs will be taken.
The same applies when the opponent withdraws his opposition within the
period of time given to reply to the restriction but after expiry of the cooling-off
period as a consequence of a restriction made by the applicant during the
cooling-off period.
When the opposition is withdrawn after the time limit set by the 222 letter but
before the end of the cooling-off period, the opposition fee is refunded. This
refund is made in both the following cases:
If no reply to StandL 222a is received at all, however, the opposition is
subsequently withdrawn within the cooling-off period.
Page 77
Procedural issues
If the opponent responds to StandL 222a by maintaining his opposition,
however, he subsequently changes his mind and withdraws the opposition
within the cooling-off period.
However, when the opposition is withdrawn after the time limit set by the 222
letter and after the end of the cop, the opposition fee is not refunded.
If a partly acceptable and partly unacceptable limitation was received by the
Office within the cooling-off period and a corrected version is submitted after
expiry of the cooling-off period, the opponent is still refunded the opposition fee
upon withdrawal of the opposition as a consequence of the limitation.
1.6. Restrictions and withdrawals of CTM applications after the end
of the cooling-off period
1.6.1. Restriction covers whole extent of the opposition/withdrawal
R 20(5) IR
If it is absolutely clear that the restriction covers the whole extent of the
opposition, StandL 250 a/b are sent. Unless the parties submit an agreement
on costs, the Office will take a decision on costs.
1.6.2. Restriction does not (seem to) cover the whole extent of the
opposition
If it is not completely clear that the restriction covers the whole extent of the
opposition, StandL 238 a/b are sent. If the opponent then agrees to the
restriction and withdraws his opposition, StandL 254 a/b are sent. Unless the
parties submit an agreement on costs, the Office will take a decision on costs.
1.7. Restrictions and withdrawals of CTM applications after a
decision has been rendered
Occasionally the applicant withdraws his application after a decision on the
opposition has been rendered but without filing an appeal. If the decision
rejected the CTMA in full, the applicant must be informed that he cannot
withdraw as there is nothing left to withdraw. Article 57 (1) CTMR states that
an appeal has suspensive effect. This is interpreted as meaning that the
decision is final unless an appeal is filed during the appeal period.
If the decision only rejected the CTMA for part of the goods or services, the
applicant can withdraw the CTMA for the remainder of these goods and
services.
If the decision rejected the opposition, the application can at any time be
Page 78
Procedural issues
withdrawn or restricted.
2.
Withdrawal of oppositions
The opponent can withdraw his opposition at any time during the proceedings.
If he withdraws his opposition independent of any restriction of the CTM
application, three situations can arise depending on the status of the
opposition. (When the opponent withdraws his opposition because of a
restriction of the CTM application, see above.)
2.1. Withdrawal of the opposition before the end of the cooling off
period
If the opposition is withdrawn before the end of the cooling-off period, StandL
254 a/b are sent. If the opponent withdraws his opposition during the cooling
off period without any restriction of the application, the Office neither refunds
the opposition fee nor takes a decision on costs.
2.2. Withdrawal of the opposition after the end of the cooling off
period
If the opposition is withdrawn after the end of the cooling off period, StandL
254 a/b are sent. Unless the parties submit an agreement on costs, the Office
will take a decision on costs.
2.3
Withdrawal of the opposition after rendering a decision
Occasionally the opponent withdraws his opposition after a decision on the
opposition has been rendered but without filing an appeal. If the decision
rejects the opposition, the opponent must be informed that he cannot withdraw
as there is nothing left to withdraw.
Article 57 (1) CTMR states that an appeal has suspensive effect. This is to be
interpreted as meaning that the decision is final unless an appeal is filed during
the appeal period. This interpretation also applies when the opposition has
been upheld.
3.
Revocation of withdrawal/restriction
A party is only permitted to withdraw a previously submitted
withdrawal/restriction if the Office receives its letter withdrawing the earlier
withdrawal/restriction on the same day as it received the first submission.
Otherwise the previously submitted declaration of withdrawal/restriction
becomes effective upon its receipt by the Office provided that this declaration
Page 79
Procedural issues
is made without conditions or time limitations.
4.
Language
A restriction may be submitted either in the first or the second language of the
CTMA (Rule 95(a) IR). When the restriction is submitted in the first language of
the CTMA, which is not the language of proceedings, and when the restriction
does not cover the whole extent of the opposition, the restriction is forwarded
to the opponent with StandL 222a/b and 238a/b respectively requesting him to
inform the Office whether or not he maintains his opposition. If the opponent
objects to the language of the restriction and asks for a translation into the
language of proceedings, we send the restriction to Luxembourg for
translation.
Page 80
Procedural issues
VIII. DISCLAIMERS (PROCEDURAL ISSUES)
Art. 38 CTMR,
R 11(2) IR
A disclaimer means that the applicant renounces exclusive rights to a part of
the mark. The disclaimed part of the mark may either be a non-distinctive word
or a non-distinctive figurative element.
Where the trade mark contains an element that is not distinctive, the examiner
can request the applicant to disclaim any exclusive right to that element where
the inclusion of that element could give rise to real doubts as to the scope of
protection of the mark. The applicant himself may also disclaim any exclusive
right to the element.
It may happen that a disclaimer request from the applicant is received during
opposition proceedings. As it is made after the publication, it will be published
together with the registration.
If a disclaimer is filed during opposition proceedings, the OD is responsible for
the key-in.
Translations of the disclaimed element are not needed.
The OD will forward the disclaimer request to the opponent for information
purposes without giving him a deadline. He then has a chance to evaluate
whether the disclaimer is essential to him or not.
In principle the disclaimer does not affect the opposition proceedings. If an
opposition is withdrawn due to a disclaimer before commencement of
proceedings, the opposition fee is not refunded. As a disclaimer is something
different from a withdrawal or limitation, this is not a case contemplated by
Rule 19 IR.
Page 81
Procedural issues
IX. FRIENDLY SETTLEMENT
Art.
CTMR
43(4)
The Office may, if it thinks fit, invite the parties to make a friendly settlement.
The Office, as well as the parties, may therefore initiate a settlement
procedure.
To this end it may issue proposals for friendly settlement. As, in principle, the
Office cannot (and does not wish to) replace the parties, it will take action only
if a settlement between the parties appears desirable in the light of the case or
if there are good reasons for considering that the proceedings can be ended by
a settlement, in particular because one party has made known that it wishes to
negotiate.
The Office can, moreover, if expressly requested by the parties, offer
assistance with their negotiations, for instance by acting as an intermediary or
by providing them with any material resources that they need. Any costs
incurred are borne by the parties. Friendly settlement may be preceded by a
request for suspension.
The parties are free to decide on the measure that brings the opposition
proceedings to conclusion. While they can decide on the withdrawal of the
opposition, they can also simply ask the Office without giving specific reasons
to rule that the case will not proceed to judgment. It suffices to communicate
the written agreement of the parties, which does not have to include a
statement of grounds, to the Office for the proceedings to be ‘closed’ by a
decision not to proceed to judgment. The Office then takes the steps needed to
close the proceedings on the basis of this agreement (status: agreement after
commencement).
Parties that reach a friendly settlement before the commencement of the
proceedings, if the CTM application is not withdrawn or limited, are not entitled
to a fee refund.
Even though friendly settlement may be in the interest of all parties, making a
proposal is not always evident, as it is difficult to avoid giving an indication of
the outcome of the possible decision, which would mean that one of the parties
would not be interested in settlement.
An example of a proposal made by the Office could be the one made in
opposition B 7 023. In this case the CTM application was KINESYS for
Non-medicated toilet preparations; cosmetics; preparations for removing
cosmetics; soaps; shampoos; washing preparations; preparations for the care
of the skin and for the hair; anti-perspirants; deodorants for personal use;
Page 82
Procedural issues
depilatory preparations; preparations for the nails; astringent preparations; sun
screening and sun tanning preparations, and preparations for use on the skin
after sun tanning; moisturising preparations in class 3, and
Pharmaceutical preparations and substances; medicated preparations for
topical application; anti-fungal preparations; analgesic preparations; ointments;
liniments;
disinfectants;
anaesthetics;
antibiotics;
anti-inflammatory
preparations in class 5.
The CTM application was contested on the basis of the earlier registration
KINESIA, registered for
Preparations for bleaching and other substances for washing; preparations for
cleaning, brightening, degreasing and polishing; soaps; perfumery essential
oils, cosmetics, hair lotions; toothpastes in class 3.
During the proceedings the applicant submitted samples of all the goods he
intended to market. It became clear that his goods were aimed at professional,
or at least serious, athletes.
The Office then proposed the following to the parties:
I. The applicant is to restrict his application to:
Sun screening and sun tanning preparations for athletes in class 3, and
Pharmaceutical preparations and substances; medicated preparations for
topical application; anti-fungal preparations; analgesic preparations; ointments;
liniments;
disinfectants;
anaesthetics;
antibiotics;
anti-inflammatory
preparations; all the aforementioned products for athletes in class 5.
II. The opponent then withdraws his opposition.
III. Each party bears their own costs.
As this proposal apparently suited both parties the proposal was accepted, and
the opposition concluded without a decision.
Page 83
Procedural issues
X. SUSPENSION
1.
Introduction
A suspension can be decided by the Office acting ex officio, at the request of
both parties or at the request of one of the parties.
If the suspension is requested by both parties, even when no reason is given,
the Office will suspend the proceedings. In this case the parties have to
indicate the period for which the suspension is requested (although a proper
reason should be given if the period of the suspension requested is abnormally
long, e.g. one year or more). If the parties do not indicate the period, the Office
suspends the proceedings for two months.
R 21(2)
20(6) IR
IR,
If the opposition is suspended by the Office acting ex officio or at the request of
one of the parties, the decision of suspension must be based on proper
reasons. The IR contemplates two specific cases where the proceedings may
be suspended:
- multiple oppositions;
- the opposition is based on an application for registration.
Apart from these two specific cases the IR stipulates that opposition
proceedings may be suspended where circumstances are such that such
suspension is appropriate - Rule 20(6) IR. Here the IR merely gives the OD the
discretionary power to suspend the proceedings, leaving it up to the examiner
to identify the situations where this power should be exercised.
The most common unspecified cases where in principle oppositions may be
suspended are the following:
The trade mark registration on which the opposition is based is subject of
administrative or judicial proceedings that may affect the registration or the
opponent’s entitlement to it.
-
The parties are negotiating the settlement of the opposition.
There are some other situations where the suspension may also be advisable
or even necessary, such as third party observations, errors in the publication of
the contested application which require re-publication, transfer pending on
earlier CTMs/CTMAs or contested CTMA, withdrawal of the representative.
This chapter does not deal with these cases.
Page 84
Procedural issues
It should be noticed that in none of the above-mentioned four cases there is an
obligation to suspend the proceedings. The decision is at the discretion of the
Office. This means that none of the above situations, per se, confer on any of
the parties the right to have the proceedings suspended. On the other hand,
when the circumstances of the case call for a halt in the proceedings, the
examiner is expected to suspend the proceedings.
Moreover, in the case of multiple oppositions and in the case where the
opposition is based on an application for registration, the fact that the IR
contains specific rules for these particular cases does suggest that the
proceedings should be suspended or at least the possibility of suspending the
proceedings should be duly considered. The decision of suspending the
proceedings or not ultimately depends on the circumstances of the case. In the
following sections, the most common circumstances that may lead to declare
or exclude the suspension of the proceedings are explained.
2.
Multiple oppositions
When there is more than one opposition pending against the same CTMA, and
if there is a strong case which can lead to the total rejection of the CTMA (or at
least of all goods and services contested by the sum of all oppositions), OD will
regularly suspend the other proceedings until a final decision is reached.
2.1. Explanation
R 21(2), 20(6)
IR
In principle an opposition can only be considered as a very good case if it is
founded on Article 8(1) and based on a registered trade mark. Experience
shows that claims based on well known trade marks Article 8(1) - or on the
reputation allegedly achieved by registered trade marks – Article 8(5) - have
more possibilities of being rejected. Thus, suspensions are not very
appropriate in these cases - at least at the very beginning of the proceedings.
Also, an opposition cannot in principle be considered as strong, for the
purpose of suspending all the others, if it is based on an earlier application.
The opposition justifying the suspension of all others must not only be strong. It
must be “lethal”, that is, it must be directed against all the goods and services
contested by all the oppositions that are to be suspended. This means that
only “strong” oppositions directed against all the goods and services contested
by the “weaker” oppositions may be considered as “lethal”. Thus, if the CTMA
covers all goods in class 9 and the “strong” opposition (sign identical to the
CTM) only covers computers in class 9, whereas a “weaker” opposition (sign
only slightly similar to the CTM) covers all goods in class 9, the “strong” one is
not considered “lethal” and Rule 21(2) does not apply. Obviously the
opposition must be strong in relation to all the contested goods. No matter how
strong it is in relation to a particular category of goods or services, one
opposition will not lead to the suspension of all the others in cases where it is
weak in relation to some goods or services which are contested in other
Page 85
Procedural issues
oppositions.
Finally, nothing prevents the Office from suspending all oppositions except two
or more, which combined are “lethal”.
2.2. The moment to suspend
The suspension should in these cases take place at the earliest possible
stage, that is, at the time of notification of the notice of opposition. If for some
reason the opposition proceedings which are kept running do not allow us to
take a decision on substance, Rules 21 and 20(6) IR give the possibility of
subsequently resuming proceedings for the opposition/s that are deemed
appropriate.
Thus, when multiple oppositions are received, ATMDD will decide on the
suspension. If the examiner in charge of the opposition concludes that one of
the oppositions is “lethal” and that all the others are to be suspended, no
decision on suspension should be taken until this opposition is ready for
notification. As soon as the “lethal” opposition has been notified, we notify and
immediately suspend the remaining oppositions.
The Office may also suspend the oppositions at a later stage. This may
however raise the question of whether or not the opponent will be entitled to
the refund of half of the opposition fee, if his opposition is deemed to be
disposed of because of the rejection of the CTMA in other proceedings.
2.3. Monitoring suspended files
The suspension of oppositions at such an early stage also involves some risks.
The examiner must take care when dealing with withdrawals, substantiation of
earlier rights and proof of use in the active proceedings. If the “lethal”
opposition is settled or withdrawn (e.g. during the cooling-off period), the
suspension of the remaining proceedings must come to an end. If the “lethal”
opposition is not substantiated properly, the suspension of the remaining
proceedings must be reconsidered and possibly come to an end. The same
applies when the opponent fails to furnish proof of use or submits evidence
that is clearly insufficient to establish genuine use.
In any case Euromarc will generate due dates every six months for the
suspended files. These should be used to check the active file in order to
confirm that the suspension still makes sense. (Note that when an opposition is
entered through ‘modification’ and an accept is done to validate, Euromarc
automatically creates a new due date of 6 months)
2.4. After rejection of the CTM application
Page 86
Procedural issues
When the CTMA is subsequently rejected because of the “lethal” opposition,
the suspended oppositions will be deemed to have been disposed of after the
decision becomes final. Therefore, three months later a check must be made
whether any appeal has been entered against the OD decision. If the decision
has become final, the parties to the other proceedings must be informed, the
suspended oppositions will be closed and 50% of the opposition fee will be
refunded to each opponent, Rule 21(4) IR.
If an appeal has been filed against the decision the oppositions remain
suspended. If the BoA reverses the decision the other proceedings will be
resumed immediately, without having to wait for such decision to become final.
This is because the opposition in question can no longer be seen as a clear
winner. Even if the decision of the BoA is appealed, the fact is that the
proceedings to be resumed will probably come to an end before the CFI
decides on the appeal, and naturally the latter decision may also be disputed
by another appeal before the ECJ.
2.5. Resuming the proceedings
If the suspended proceedings are to be resumed, in a case where they have
been suspended at the very beginning, all the dates for the cooling-off period
and subsequent time limits will have to be set, repeating all the usual
information and warnings of StandL 211 and 212. If the suspension took place
after the end of the cooling off period, the proceedings will be resumed at the
stage in which they were at the time.
3.
The opposition is based on an application
When the opposition is based on an application, the proceedings are not
suspended. A suspension will only be required at the end of the proceedings, if
the decision cannot be issued without taking into account this earlier right.
In the following exceptional cases OD suspends at the beginning or during the
proceedings:
1 – Earlier right is a CTMA: check if the application is facing problems. If so,
consider the probable outcome of the opposition in order to decide on the
suspension.
2 – Earlier right is a national application: one of the parties requests the
suspension and brings evidence that the application is facing problems. If so,
consider the probable outcome of the opposition in order to decide on the
suspension.
3.1. Explanation of the basic principle, moment to suspend
Page 87
Procedural issues
R 20(6) IR
In principle oppositions based on applications are not to be suspended, at least
not at the very beginning of the proceedings. The assumption is that in most of
the cases the applications mature into registrations, during the proceedings.
Assuming that the opponent files sufficient evidence of ownership of a national
application, the opposition will proceed until it is ready to be decided (the same
will happen with earlier CTMAs which do not require any evidence). Before
closing the proceedings Euromarc must be checked (in cases of an earlier
CTMA) or, in the other cases, the opponent must be requested to provide
information on the status of the application. If at that stage the application is
still pending, the possibility of suspending the proceedings must be
considered.
3.2. Exceptions to the basic principle
Exceptions will only occur when two cumulative conditions are fulfilled:
(1) The earlier application is facing problems. When the Office has information
that the earlier application is facing problems the general assumption that the
application will mature to registration is no longer valid. The earlier application
is considered as facing problems when objections are raised by the trade mark
office, when oppositions are pending against it or when there is a refusal
waiting to become final.
(2) The final decision cannot be issued without taking into account the earlier
application. This is when the circumstances of the case do not allow us to say
that in any case the opposition will be rejected (e.g. because there is no
likelihood of confusion) or upheld (because there are other earlier rights that
are sufficient to reject the contested CTMA).
The second condition deserves a closer look. Does the application in question
make a difference to the outcome of the opposition?
When the answer is clearly negative, the proceedings should not be
suspended. This includes the cases where the opposition will be rejected
anyway and the opposite cases where the opposition will be successful
anyway (because the opposition is also based on other earlier rights, one or
some of which are clear “winners”). The BoA held that
When an opposition is based on an application for registration, it may be
appropriate to suspend the opposition proceedings under Rule 20(6) IR, to
await registration of the opponent’s earlier mark. Nevertheless, if an opposition
is to be rejected, either for formal or for substantive reasons, a suspension
would be meaningless and would simply prolong the proceedings
unnecessarily (paragraphs 31 and 32).
When there are no other earlier rights to take into account (because there are
Page 88
Procedural issues
no other earlier rights or they were not substantiated) or when the application
must nevertheless be taken into account (because the other earlier rights are
not “winners”), an assessment must be made of whether the opposition will be
successful on the basis of the application, in order to decide on the
suspension. Proceedings will only be suspended if it is found that the earlier
application, if registered, will lead to the total or partial rejection of the
contested CTMA.
If this assessment is done at an early stage of the proceedings, one must take
into account that a preliminary examination of the case is never as deep and
thoughtful as when the decision is being drafted. Therefore a certain degree of
precaution must be used here. In borderline cases, when the outcome is not
clear, the proceedings should in principle be suspended.
3.2.1. Earlier CTM applications
The possibility of suspending the proceedings should be considered at the
beginning of the proceedings, that is, before notification of the notice of
opposition. In this case clerical staff should make an ex officio search on the
status of the earlier CTMA. If there are problems with it, the opposition will be
suspended as long as the second condition mentioned above is fulfilled. In
order to conclude that the CTM application is fragile because it is subject to
one or more oppositions, it is not necessary to check the viability of those
oppositions.
It should be kept in mind when dealing with the adversarial part of the
proceedings that the issue of the suspension may only arise after the coolingoff has expired. For example, the opposition is based on a confusingly similar
CTMA but it is not suspended because there is another earlier right (a
registered trade mark) on the basis of which the contested application must be
rejected. If the opponent fails to substantiate this earlier right, the earlier
application, which before was not relevant to the outcome, becomes crucial for
the decision. If according to the records the earlier application is facing
problems, the opposition should be suspended.
3.2.2. Earlier national applications
When the opposition is based on a national application the opposition is not
suspended at the beginning of the proceedings, as it is not known whether the
application has a problem.
The issue of the suspension will have to be raised by the parties (normally the
applicant). In this case the party has to submit evidence that the earlier
application is facing problems. Upon such request the Office will consider
whether under the circumstances of the case it is advisable to suspend the
proceedings.
Page 89
Procedural issues
If no one raises the question the general principle applies, the Office only has
to decide on the suspension if the proceedings reach the end and there is no
information that the application has matured to registration. In this case the
opponent should be required to inform the Office on the status of his earlier
application.
3.2.3. Nuances
In any case, the question of whether to suspend the proceedings because of
earlier applications may appear in many different shapes and therefore is a
matter to be decided on a case by case basis. There are no rigid rules here
and good sense is the key.
Here are some examples where according to the general practice indicated
above the situation apparently does not require a suspension of the
proceedings, but the suspension can nevertheless be decided if the examiner
finds it appropriate:
The opposition is based on a French trade mark registration and on a CTM
application, which does not face problems, both covering the same sign and
goods, which are confusingly similar to the contested trade mark. Thus, the
opposition may be dealt with on the basis of the French trade mark only.
However, confusion can be more likely to occur in Member States other than
France (because for example the phonetic similarities are stronger in other
Member States). In such a case our decision will be more solid if based on the
CTM.
The earlier application does not make too much difference to the outcome, but
the applicant requests a suspension. If the earlier right is a CTMA and we
conclude that it is facing problems or, in case of a national application, if the
applicant files evidence that the opponent’s application is facing problems, the
proceedings may be suspended. Since in principle the applicant is the most
interested party in getting a fast decision, OD should not insist on the
continuation of the proceedings if he prefers to wait.
In the cases where the proceedings are suspended, Euromarc will create due
dates every six months. These dues dates will help us to check the status of
the earlier CTMA and check whether the suspension is still necessary.
In cases where the earlier right is an application for a national registration the
resumption of the proceedings will always depend on the initiative of the
parties, who are expected to inform the Office when the application matures to
registration or is rejected. In any case as the due dates are created
automatically by Euromarc, it must be checked whether there are any
Page 90
Procedural issues
“forgotten” links where the parties furnish information on the matter. The
opponent may also be requested to inform the Office.
When the time comes for resuming the proceedings, because the earlier
application has matured to registration or has been rejected, the parties must
obviously be informed of the time limits pending upon resumption. In a case
where the proceedings have been suspended from the very beginning, we
have to set all the dates for the cooling-off period and subsequent time limits.
4.
Earlier right at risk
When the earlier right is at risk, the opposition is suspended if the earlier right
on which the opposition is based is under attack, unless this earlier right is
irrelevant for the outcome of the opposition.
If the earlier right is a CTM and a cancellation is pending against it we suspend
ex officio from the very beginning, that is, at the time of notification of the
notice of opposition, unless this earlier right is irrelevant for the outcome of the
opposition.
R 20(6) IR
4.1. Cases envisaged
It should be noted first of all that these situations are similar to the cases where
the opposition is based on an application. In both cases there is some
uncertainty about the earlier right on which the opposition is based.
Nevertheless there are some differences between them which justify a different
section. The cases in question here can be divided in two different groups:
Case 1 - The opposition is based on a CTM that is subject to cancellation
proceedings. The status of the registration in Euromarc (CTM ONLINE does
not provide any information on pending cancellation proceedings) will have to
be checked. Here the possibility of suspending the proceedings must be
considered before the applicant is notified. In any case the applicant should be
informed of the existence of such proceedings, since the details of the earlier
CTM will be sent to him.
Case 2 – In the remaining cases the earlier right is subject to national
proceedings. Here the suspension is not decided ex officio. The suspension is
usually requested by the applicant, who is normally a party to other
proceedings where the earlier right or the opponent’s entitlement to it is at
stake. The outcome of these proceedings must have some impact on the
opposition.
Page 91
Procedural issues
The following examples come in this category:
-
the applicant (or a third party) has filed an action or a counterclaim seeking
the invalidation or revocation of the earlier registration;
the applicant (or a third party) has filed an action or a counterclaim seeking
the transfer of the earlier right to his own name.
Criminal actions brought against the opponent or actions seeking
compensation from the opponent, no matter how related to the earlier trade
mark, will not have any impact on the outcome of the opposition proceedings
and therefore do not justify suspension.
4.2. Factors to consider
If one of the parties requests the suspension or if we know that there are
cancellation proceedings against the earlier CTM, consideration must be given
whether the earlier right in question makes a difference to the outcome of the
opposition.
If the opposition is deemed to be successful or rejected anyway, regardless of
the fate of the earlier right at risk, the proceedings should not be suspended. If,
in contrast, the earlier right at risk must necessarily be taken into account in
the decision on the opposition, the proceedings will be suspended. The OD will
not judge on the possible success of the national action. Nevertheless, if the
other party argues this point, we should invite the parties to file evidence or
observations.
If it is concluded that the suspension may take place, the other party may be
given the opportunity to comment on the request, in particular if the evidence
submitted is not absolutely clear. When the other party is not invited to
comment, the examiner may still reverse his finding if the other party reacts to
the granting of the suspension.
4.3. Evidence
Be it requested by the opponent or by the applicant, the request for suspension
must be supported by evidence. This evidence must be official, clearly identify
the proceedings leading to the suspension, and indicate the relief sought.
In particular, the evidence must be clear as to the possible consequences for
the earlier right on which the opposition is based. If necessary, the party may
be requested to submit a translation of the evidence.
The insufficiency of the evidence may be remedied, if the other party is invited
Page 92
Procedural issues
to comment and does not respond or does not contest the existence of such
proceedings or their influence on the opposition.
In the cases where the proceedings are suspended, due dates must be
created every six or nine months in order to check if the parties have furnished
any new information on the state of the proceedings. The examiner may also
invite the parties to inform the Office of the state of the proceedings.
Proceedings must be resumed as soon as national proceedings come to an
end. If the decision taken in the national proceedings invalidates, revokes,
results in some other way in the extinguishment of the right, or transfers the
opponent’s earlier right, the opposition will be deemed non-substantiated
insofar as it is based on that earlier right.
5.
Ongoing negotiations
Summary of the OD practice in these cases:
If the request is signed by both parties the proceedings are suspended.
If the request is signed by one of the parties only, we do not, in principle, grant
the suspension.
R 20(6) IR
Generally, when the parties are negotiating they request that the proceedings
be suspended, in order to avoid further costs. However, as mentioned in the
introduction of this section, when both parties request the suspension they do
not have to give a specific justification. The suspension is always granted. So
the question of whether or not ongoing negotiations justify a suspension of the
proceedings is only worth considering when one party alone submits the
request.
Contrary to our practice for extensions of time, in these cases that answer is
generally no. Requests for suspension of proceedings submitted by one of the
parties based on ongoing negotiations between the parties will in principle be
rejected. Negotiations between the parties are a common occurrence during
opposition proceedings and it may be the case that the other party may wish to
negotiate provided that such negotiations do not cause any delay to the
proceedings. Thus, negotiations not give either of the parties the right to ignore
a pending time limit, to get an extension of it or to get a suspension of the
proceedings.
Page 93
Procedural issues
Thus, in these cases the request is rejected but the party in question is
informed that the Office will suspend the proceedings if both parties submit the
request.
6.
Procedural aspects
Letters suspending the proceedings should always indicate the date the
suspension takes effect, generally the date when a valid request was
submitted.
If the suspension is decided for a fixed period of time, the letters must also
indicate the date when the proceedings are resumed, and what happens after
that.
The date on which the suspension ends will be deleted from the standard
letter. It should be noted that suspension periods are not time limits. There are
therefore some differences between them.
If on 30/01 a request for a two month suspension signed by both parties and
submitted on 15/01 (five days before the expiry of the time limit of the
opponent for completing the opposition - 20/01) is dealt with, the result will be:
The Office has suspended the opposition proceedings at the request of both
parties. This suspension takes effect as from 15/01. The proceedings will be
resumed on 15/03, with no further notification from the Office. The time limit for
the opponent is now 20/03. The time limit for the applicant is now 20/05.
In principle therefore, the pending time limit will continue after resumption of
the proceedings and the days that are left until expiry are the same as those
that were left at the date of filling of the suspension request.
However, the situation is not so clear in cases where the proceedings are
suspended indefinitely. If in the example referred to above the suspension is
granted because the opposition is based on a CTM application, the period of
suspension will be undetermined. Proceedings will be resumed when the
Office says so. In this case, when a year later, after having confirmed that the
CTMA will mature into registration, we resume the proceedings, we cannot
grant the opponent only five days to complete the opposition file. This is
because the proceedings would have been stopped for a year and the
resumption would come too suddenly. Under these circumstances five days
are not enough to allow the opponent’s representative to get hold of the case
again. Thus, in situations like this it is advisable, because it is more equitable,
to give the opponent a full two-month period once again.
Page 94
Procedural issues
XI. MULTIPLE OPPOSITIONS
R 21 IR
Multiple oppositions are involved when different oppositions are filed against
the same CTM application. Around 20% of all contested applications are
opposed by more than one opposition.
When CTM applications are opposed by more than one opposition there are
some extra factors to take into account.
First of all, unless there is a major delay during the admissibility stage
concerning one of the oppositions, in case of multiple oppositions it is practice
to notify the applicant of all the oppositions at the same time. Secondly,
multiple oppositions may lead to suspension of some of them for reasons of
economy of proceedings. Thirdly, a limitation made by the applicant in the
course of one of the proceedings may have an impact on the other
oppositions. Furthermore, it may be practical to take the decisions in a certain
order and, consequently, the question if after every decision rejecting the CTM
application in part a separate letter for conversion should be sent to the
applicant should be answered.
Finally, under certain circumstances multiple opposition may be joined and
dealt with in one set of proceedings.
1.
Multiple oppositions and limitations
When there are multiple oppositions and the applicant restricts the goods &
services in one of the opposition proceedings, all the other opponents will have
to be informed by sending the appropriate letter (218 a/b, 222 a/b, 250a/b or
238a/b), insofar as the limitation concerns contested goods or services of the
other oppositions.
However, if there is no relation between the goods or services in the limitation
and the contested goods and services, the opponent should not be informed,
not even by sending StandL 213.
For example, there are four oppositions against the same CTM application,
applied for goods in classes 3, 14, 18 and 25. Opposition 1 is directed against
class 3, opposition 2 against class 25 (clothing, footwear, headgear),
opposition 3 against classes 18 and 25, and opposition 4 against classes 14
and 25. The applicant sends a limitation in opposition 2, deleting clothing and
headgear. Apart from the appropriate letters in opposition 2, the appropriate
letters should also be sent in oppositions 3 and 4. As the limitation does not
affect the contested goods of opposition 1, no action is necessary in this
opposition.
Page 95
Procedural issues
2.
Multiple oppositions and decisions
When none of the oppositions were suspended at a preliminary stage in
accordance with Rule 21(2) IR (the case of the ‘lethal’ opposition, see chapter
X), the order in which to take the decisions in the multiple oppositions is to be
determined.
Although the order is at the discretion of the examiner, the following has to be
taken into account.
If all oppositions will fail the decisions can be taken in any order, as the
rejection of the opposition does not affect the CTM application. Even if one of
the decisions were to be appealed before the others are taken, it would seem
preferable not to suspend as the procedure before the BoA can take some
time.
If all the oppositions (which are ready for decision at about the same time) will
be successful, first the opposition eliminating most goods and services of the
CTM application (the widest extent of the opposition) should be taken, followed
by decisions on the opposition contesting goods or services different from the
goods and services contested by the first. In the example mentioned above,
the first decision should either be taken in opposition 3 or in opposition 4 and
afterwards opposition 1.
Suppose the first decision is taken in opposition 4, and the CTM application is
rejected for classes 14 and 25.
If it is waited until the appeal period has expired and no appeal is filed,
opposition 2 is disposed of, as it has become without object. The opponent
should be informed and the opposition must be closed by sending an adapted
StandL 251. As the opposition was not suspended before commencement of
the adversarial part of the proceedings there will be no refund of the 50% of
the opposition fee. The case is considered to be a case that has not proceeded
to judgement within the meaning of Article 81(4) CTMR. Consequently, the
costs are at the discretion of the OD. If the parties inform the Office that they
agree on the costs, a decision on costs will not be taken. Generally, the
decision will be that each party bears their own costs.
If it is not waited until the appeal period has expired and the decisions are
taken more or less at the same time, each and every one of the four decisions
should deal with all the contested goods and services of the CTM application.
In the previous example, if opposition 4 is the first that is decided, even though
the CTM application has already been rejected for the goods in class 25, the
decision in opposition 3 should not only deal with class 18 but also with class
Page 96
Procedural issues
25.
3.
Art.
108(4)
CTMR
Multiple oppositions and conversion
According to Article 108(4) CTMR, when a CTM application is refused by a
decision of the Office which has become final, the Office shall give the
applicant a period of three months in which a request for conversion may be
filed.
If there are multiple oppositions and the OD decisions have not been taken (or
have not become final) at the same time, the question arises whether for each
final decision a separate letter (StandL 256) should be sent to the applicant or
whether it suffices to send one letter after all the decisions have become final.
This question is best illustrated with an example. Imagine a CTM application in
classes 24, 25 and 26 against which 3 oppositions were filed.
The first opposition is against the class 24 goods. After a short proceedings it
is decided to reject the CTMA for the goods in class 24. The second opposition
is against the goods in class 25. The CTMA is partly refused, namely for
footwear. A decision is rendered two years after the opposition was filed. The
third opposition is against class 26. After three years – several extensions of
the cooling off period – the OD decides to reject the CTMA for all goods in
class 26 as well. The applicant appeals and, after 1 year, the BoA confirms the
decision of the OD.
In favour of dealing with every final decision with a separate letter is the
argument that the risk of error on the part of the OD is smaller. This would also
give more security on a national level as, if the Office would wait until the last
decision has become final, many years may have passed and third parties may
be in for a nasty surprise. The situation could arise where a third party applies
for a national mark and gets it registered only to find out at a later date that the
CTM applicant requested conversion of a similar mark for similar goods with an
earlier filing date.
The argument against three separate letters is the costs for the CTM applicant
when he has to request conversion three times. (If he does not request
conversion within 3 months of receipt of our letters the request will be rejected)
Consequently he will have to pay the conversion fee at OHIM three times as
well as three national application and registration fees.
On balance, it is decided that the interests of the CTM applicant outweigh the
interests of a possible third party that may have applied for a similar mark
within the period the potential application existed. For this reason it is OD
practice to send the 256 conversion letter only once, namely after the last
opposition decision has become final.
Page 97
Procedural issues
4.
R 21(1) IR
Joinder of proceedings
Rule 21 (1) IR allows the Office to deal with multiple oppositions in one set of
proceedings. If it is decided to join the oppositions StandL 230a/b must be
sent.
Under certain circumstances the oppositions may be joined. In order to join
oppositions, they must have the same opponent or there must be an economic
link between the opponents, for example a parent and subsidiary company.
When it is decided to join the oppositions it should be verified whether the
opponents have the same representative. If not, they must be asked to appoint
one single representative. Also, the earlier rights must be identical or very
similar. If the representatives do not reply or do not want to appoint a single
representative, the oppositions must be disjoined and dealt with separately.
If at any stage these conditions are no longer fulfilled, for example the one and
only earlier right of one of the joined oppositions is transferred to a third party,
the joinder may be undone. To this end StandL. 231a/b should be sent.
Unless the joinder is dissolved before the decision is taken, only one decision
is taken.
Page 98
Procedural issues
XII. SUBSTANTIATION OF EARLIER RIGHTS
R 16, 17(2),
20(2) IR
After the applicant has been notified of the opposition, the opponent has four
months in which he may complete his file, that is, present all the evidence he
deems necessary to win his opposition. At the end of this period the opponent
must have filed evidence of the existence and validity of his earlier trade mark
registrations, evidence of reputation, evidence of the existence and the scope
of protection of his earlier sign and that it has been used etc. If he wishes to do
so he must also file evidence that supports his arguments in this period.
The evidence must be in the language of the proceedings.
1.
Trade mark registrations or applications
To prove the validity of an earlier trade mark registration or application the
opponent must provide the Office with evidence. The OD accepts the following
documents.
1.1. Certificates issued by the appropriate official body
Any certificate of registration, issued by a national office or by WIPO if it
concerns an international registration are valid evidence. If the opposition is
based on an application, the opponent must file evidence that the application
was filed at the national office or that an international application was filed with
WIPO.
An application certificate is not sufficient to prove that the trade mark has been
registered. In other words, it cannot serve to prove the existence of a trade
mark registration.
Some certificates, for example the Spanish certificates, have to be checked
carefully as the only differences between an application and registration
certificate is the registration date and official seal of the office.
1.2. Extracts from official databases
Extracts from databases are accepted only if their origin is an official database,
i.e. the official database of one of the national offices or WIPO. Extracts from
commercial database are not accepted, not even if they reproduce exactly the
same information as the official extracts.
An extract of an application is not sufficient to prove that the trade mark has
Page 99
Procedural issues
been registered. In other words, it cannot serve to prove the existence of a
trade mark registration.
Officially accepted databases are:
-
BENELUX-MERKEN (for Benelux trade marks),
-
DPINFO (for German trade marks),
-
SITADEX (for Spanish trade marks),
-
OPTICS and extracts from UKPO web site (for UK trade marks),
-
ROMARIN and MADRID EXPRESS DATABASE (for international
registrations).
Extracts from other national offices are also accepted as long as they come
from an official database. A document is being prepared that identifies
acceptable and unacceptable evidence.
Although DEMAS is not an official database, several BoA decisions have
obliged the Office to accept it.
Extracts from commercial databases are not acceptable. Examples of extracts
that are not accepted are MARQUESA, COMPUSERVE, THOMSON,
ICIMARQUES, PATLINK or COMPUMARK.
1.3. Extracts from official bulletins of the relevant national trade
mark offices and WIPO
In all Member States the trade mark application and/or registration is published
in an official bulletin. Copies of publication are accepted as long as the
document (or the accompanying observations of the opponent) indicates the
origin of the publication. If this indication is missing, the evidence is insufficient
to prove the validity of the mark.
Furthermore a copy of publication of the application is not sufficient to prove
that the trade mark has been registered. In other words, it cannot serve to
prove the existence of a trade mark registration.
Although international registrations are published as registrations, they can still
be refused by national offices of the designated countries The Office accepts
the WIPO publication as sufficient evidence of registration. Only if the applicant
contests registration of the mark in question in a territory will the opponent
Page 100
Procedural issues
have to provide evidence that the mark was not refused.
WIPO publications and WIPO’s ROMARIN extracts sometimes provide
information on provisional or definite refusals of the registration for certain
countries. The evidence for international registrations thus also needs to be
checked to see what countries the international registration covers and what
goods and services are specified; it is possible for each listed country to have
a different specification of goods and services.
1.4. Duration of a trade mark registration
The basic rule is that the registration of a mark lasts 10 years from the date of
filing. After this period has elapsed the registration of the mark has to be
renewed.
The exceptions to this rule are as follows:
International marks may be valid for either 10 or 20 years. The extract from the
bulletin will say which is the case.
In Austria, Denmark, Finland and Sweden, trade marks are valid for 10 years
counting from the date of registration.
UK trade marks which were registered (in the sense that all the formalities for
registration were completed) prior to 31/10/1994 are in force for 7 years. Marks
for which the registration procedure was completed after this date are in force
for 10 years.
Spanish trade marks applied for before 12/05/1989 lasted for 20 years. This
20-year period ran from the date of registration, not from the date of filing.
These provisions apply regardless whether the registration formalities were
completed before or after 12/05/1989.
Irish trade marks which were registered before 01/07/1996 lasted for 7 years
with a 14 year renewal period. Irish marks registered since 01/07/1996 last for
10 years with 10-year renewal periods.
1.5. Verification of the evidence
The number in square brackets is the international code number used to
identify the information on many, but not all, registration certificates. The
opponent is not obliged to submit an explanation of the codes, either for the
INID or for the national codes.
The following things should be checked:
Page 101
Procedural issues
-
The issuing authority;
The filing [210] and/or registration numbers [111] (in certain countries
these are, or were, different);
The territorial extent for international registrations ( that is, in which
countries the mark is protected and for what goods and services);
The filing [220], priority [300] and registration dates [115] (in certain
countries, e.g. France, the filing and registration dates found on the certificate
are the same);
A representation of the sign as filed or registered [531, 541, 546, 554, 556,
557, 571, 591]; These indications can indicate colours or that the mark is three
dimensional.
-
The goods and services covered [511];
-
The expiry date of the registration;
-
The owner [731, 732];
Other inscriptions affecting the legal status or the scope of protection of
the mark (e.g. disclaimers [526], limitations, renewals, transfers, pending
actions etc).
1.5.1. Renewal certificates
If the opponent has submitted a certificate of registration but one of the above
periods has expired for the mark concerned, he must file a renewal certificate
in order to prove that his registration is still in force.
Only if the renewal certificate contains all the necessary data that determines
the scope of the protection of the earlier mark, will it suffice to file the renewal
certificate without a copy of the registration certificate. It is the actual status of
the mark that counts, so it is of little importance to also have a copy of the
certificate of registration.
Nevertheless, in these cases it has to be carefully verified if the renewal
certification contains all the necessary information. Some renewal certificates
are merely confirmations that the registration was renewed without any other
data than the registration number and some dates. In these cases, for example
with Spanish and German renewals, the renewal certificate alone is insufficient
Page 102
Procedural issues
to determine the scope of the protection of the earlier mark.
However, if the opponent provides a printout from one of the above cited
official databases showing that the trade mark is in force he does not also
need to provide a renewal certificate, even if the mark was registered, for
example, fifty years ago, as long as the extract contains all the necessary data
that determines the scope of the protection of the earlier mark.
Within the period of four months to complete the file, the opponent should file
evidence that the mark(s) on which he relies is still in force. If there is no
evidence of renewal, the earlier registration will not be taken into account
(when there are other earlier rights that have been substantiated) or the
opposition will be rejected as not substantiated.
However, in order to avoid the OD taking a decision in an opposition that is
based on an earlier registration that has not been renewed, if a registration that
was validly proved expires between the end of the four month period and the
moment the decision is taken, the examiner must ask the opponent to provide
evidence that the registration has been renewed, regardless of whether or not
the applicant raises an objection. The applicant is not given a period of time to
comment.
1.5.2. The proprietor of the earlier registered trade marks must be
the same person as the opponent.
If the opponent is a corporation, the name of the corporation must be carefully
compared with the name of the corporation that is the trade mark owner. For
instance with British companies, John Smith Ltd, John Smith PLC and John
Smith (UK) Ltd are not necessarily the same legal entity.
If the opposition is filed with B as opponent and a copy of the registration
certificate shows A as owner of the earlier mark, the opposition will be rejected
as not substantiated, unless the opponent has provided evidence of the
transfer and, if already available, the registration of the transfer in the relevant
register.
Art.
42(2)
CTMR,
R
15(c) IR
An exception to the above is that a licensee of the trade mark proprietor may
be an opponent. In this case there is a discrepancy between the owner of the
earlier registration and the opponent. The extract of the registration will
normally reflect when a license has been registered. However, in some
Member States such recordals of licenses are not made. In all cases, it is up to
the licensee to demonstrate that he is authorised by the trade mark owner to
bring an opposition. As the number of oppositions filed by licensees is
extremely low, there is no practice on what evidence needs to be filed to
support such an authorisation. However, an express authorisation or a license
contract that authorises the licensee to act in defence of the mark are deemed
sufficient.
Page 103
Procedural issues
2.
R 16, 17(2),
20(2) IR
Translations of evidence of trade mark registrations
The Office can only consider evidence that is submitted in the language of the
opposition proceedings. This follows from Rule 17(2) IR, which places a clear
obligation on opponents to translate any supporting documents that are not
filed in the language of the proceedings. If the evidence is not in the language
of the proceedings, the opponent is required to file a translation into that
language, within the term fixed by the Office for the submission of further
evidence mentioned above.
Thus, both the evidence submitted by the opponent for the first time at the end
of the four-month period, as well as any other previously submitted document
or certificate, must be either in the language of the proceedings, or be
accompanied by a translation. Rule 96 IR is not applicable to such cases
because Rule 17(2) IR is a lex specialis to Rule 96.
In principle, the Office requires a translation of all the essential particulars of
the registration document, including the standard wording of certificates
showing which entry corresponds to what information. This means that in order
to enable the Office and the applicant to evaluate whether the allegations
contained in the notice of opposition are in fact well-founded, the opponent
must translate at least the information relating to (a) the issuing authority, (b)
the owner (c) the filing and registration numbers (d) the territorial extent (e) the
filing, priority & registration dates (f) the goods and services covered, as well
as (g) any other inscription affecting the scope of protection of the earlier mark
(disclaimers, limitations, renewals etc.
However, the Office accepts that no translation of the information headers in
the certificates (such as, ‘filing date’ ‘colour claim’, etc) is needed, provided
that they are also identified using standard INID codes or national codes.
Irrelevant administrative indications, or parts with no bearing on the case, may
be omitted from the translation.
The OD does not take a formalistic approach as to what may constitute an
acceptable translation. As regards the authentication of translations, it accepts
uncertified documents, but it recommends that the opponent’s representative
should add a written, dated and signed declaration stating that the submitted
translations are true to the originals. In practice, the OD even accepts handwritten inscriptions on the copies of the original certificates giving the meaning
of the various entries in the language of the proceedings, provided of course
that they cover all the essential particulars of the opponent’s case.
The Office does not consider that information already given in the language of
the proceedings in the notice of opposition, or in documents attached thereto
or submitted later (e.g. explanation of grounds, lists of earlier marks etc.)
amounts to a valid translation of a registration document, such as a registration
Page 104
Procedural issues
certificate, even where such indications have been accepted for admissibility
purposes. This is because, at admissibility stage, the opponent only has to
indicate the particulars provided for in Rule 15 IR in the language of the
proceedings, and not to translate any supporting documents with a view to
proving that these indications are true.
The Office does not make the obligation of the opponent to provide translations
of the evidence dependant on the reaction of the applicant because Rule 17 IR
does not provide for any exception to the principle that the evidence needs to
be translated. If the parties do not avail themselves of the possibility of
agreeing upon a different language of proceedings, afforded to them by Rule
17(3) IR, they will have to stick to the procedural language, and the opponent
will have to comply with the requirements of Rule 17(2) IR.
The opponent is not obliged to submit a translation of the explanation of the
INID or of the national codes in the language of proceedings.
2.1. Boards of Appeal
The 2nd and the 3rd Boards take the view that it is not compulsory for the
opponent to translate all the information contained in a certificate and that
parts which have not been properly translated in a separate document may be
taken to have been translated nevertheless by reference to the information
given in the notice of opposition, statements appended thereto or submitted
later.
BoA
R
296/1999-1
SPORTS
EXPERTS
/
SPORTS
EXPERTS
,
BoA
R
0532/2000-1
DENNIS
&
GNASHER /
DENNIS; BoA
R 47/2000-4
KRIS / CHRIS
& CHRIS
On the other hand, the 1st and the 4th Boards take the opposite view. The 1st
Board stated that:
… The translation required should reproduce the structure and the contents of
the original … the evidence required serves not just to provide the applicant
and the Office with the basic information concerning the scope of the
opponent’s claim, but also to allow them to verify whether the basic elements
of that, as indicated in the notice of opposition, correspond to the state of the
register … the opponent’s argument that the relevant elements of the
registration of its mark can be found, in the language of the proceedings, either
in the items of the opposition form, or in the attachments to that form,
disregards the very nature of the evidence to be filed, namely that it should be
a reflection of the contents of the right as registered …
The OD concurs with the view taken by the 1st and 4th Boards in their
decisions, which may be summarised as follows:
A translation of the document submitted to prove the existence of an earlier
right submitted in a language other than the language of the proceedings must
consist of a document which reasonably reproduces the structure and the
Page 105
Procedural issues
contents of the original document, so as to allow the Office and the applicant to
verify whether the information indicated in the notice of opposition or
subsequent thereto corresponds to the documentary proof.
Finally, as the OD is of the opinion that Rule 17(2) IR must be applied in a
uniform way, the possibility that the applicant will understand a certificate
without translation does not excuse the opponent from filing a translation. For
example, if the opposition is based on an earlier German registration and both
parties and their representatives are German, but the language of the
proceedings is English, the opponent still has to file a translation of the
registration certificate.
2.2. References to OD Decisions on issues of substantiation and
translation
2.2.1. Translation
Decision No 2165/2001 in B 78 453 – see para. 2, page 4, the opponent filed a
copy of the registration certificate but no translation. Paras. 3 and 4 explain
what needs to be translated and why.
Decision No 2315/2001 in B 310 161 – see paras. 8 - 10, page 4 and paras. 15, page 5. A “translation” was filed, but no original.
Decision No 1713/2001 in B 232 183 – see paras. 5-8, page 4; paras. 1-3,
page 5. Incomplete translation of official documents concerning change of
opponent’s name.
Decision No 1280/2001 in B 125 346 – see paras. 1-5, and 8, page 5. The
opponent only translated the goods and services and not the rest of the
information on the certificate.
Decision No 934/2001 in B 169 112 – see para. 4, page 4; and paras 3-4, page
5. No translations of renewal certificates.
2.2.2. Decision on private records and substantiation
Decision No 1570/2001 in B 185 746 – see paras 4, 5, page 4. We do not
accept extracts from private databases.
Different on DEMAS the BoA: R 520/2000-4 VISION / EYE’D VISION; R
750/2000-2 KINEPOLIS / KINOPOLIS; R 762/2000-3 PIKANTERIA.
2.2.3. Decision on different owner and opponent and substantiation
Page 106
Procedural issues
Decision No 1250/2001 in B 287 070 – see paras. 2-5, page 4. The owner who
appeared on the registration certificate was not the opponent and opponent did
not explain this.
3.
Substantiation of well-known marks, trade marks filed by an
agent, claims of reputation, earlier signs used in the course of
trade
3.1. Application by agent or representative of the real owner of the
mark that is the subject of the CTM application
Art.
CTMR
8(3)
This concerns the case where someone (an agent or representative) other
than the real proprietor of a mark applies for its registration at the Office. The
real proprietor can oppose the registration.
The opponent has to prove his ownership of the trade mark and the time of
acquisition of that mark. As the trade mark can be either a registered trade
mark or an unregistered trade mark, the opponent will have to submit evidence
of registration somewhere in the world or evidence of acquisition of rights
through use. The opponent also has to submit evidence of an agentrepresentative relationship.
3.2. Well-known marks
According to the CTMR, an earlier well known mark is a trade mark that is well
known in a Member State, in the sense in which the words well-known are
used in Article 6 bis of the Paris Convention. Such a mark may be
unregistered, but it may also be registered.
If the opponent invokes a registered trade mark and claims the same mark in
the same country as a well-known mark, this will in general be taken as a claim
that his registered mark has acquired a high degree of distinctiveness by use.
It is very common for opponents to confuse “well-known” marks with “marks
with a reputation” under Article 8(5) CTMR. Depending on the ground of
opposition that is indicated, the case will have to be considered under Article
8(1) and/or Article 8(5) CTMR.
The opponent needs to show that he is the owner of an earlier trade mark that
has become well-known in the relevant territory, for the goods and services on
which the opposition is based. He will have to submit evidence of use and of
the mark being well-known.
Page 107
Procedural issues
3.3. Marks with a reputation
Art.
CTMR
8(5)
An opposition under Article 8(5) CTMR is based on an earlier trade mark that
has a reputation.
The earlier trade mark in these cases is a registered trade mark. The opponent
therefore has to submit registration certificates, etc, as set out above.
In order to make his case under Article 8(5) CTMR, the opponent has to at
least substantiate his earlier right and submit evidence of reputation. In
addition the opponent has to allege and prove the potential detriment it will
suffer, or the unfair advantage that will be taken by the applicant, if the mark is
registered, or to indicate that this is probable in the ordinary course of events.
3.4. Non-registered trade mark or another sign used in the course of
trade
Art.
CTMR
8(4)
For these rights the Office applies the protection provided by the relevant
national law. Not all Article 8(4) CTMR rights are unregistered, e.g. in some
countries company and commercial names are registered. If it is a matter of a
registered right then a copy of the registration and renewal certificates, etc, is
required as set out above for trade mark registrations. In the case of
unregistered marks or signs the opponent must provide evidence of the
acquisition of the earlier right and evidence that it is of more than local
significance.
The opponent must file evidence that he has used his sign (earlier right, either
registered or not). Furthermore, he also needs to state on which national law
he bases his case and to make out his case under this law.
4.
Authentication of evidence and translations
The Office does not require signed declarations that the documents submitted
are true copies of the originals. However, as underlined in the information that
is sent to the opponents when the opposition is notified, these declarations are
highly recommended.
5.
When the opposition is not substantiated
When the evidence check reveals that none of the earlier rights on which the
opposition is based has been substantiated, i.e. the opponent has not provided
sufficient evidence to prove that he owns a valid earlier right, the opposition
must be rejected.
Page 108
Procedural issues
The practice of the Office is to inform both parties that in the absence of
sufficient evidence to prove the existence and validity of the earlier rights, the
Office will proceed with a decision on the opposition. A period of at least two
weeks after this notification must expire before taking the decision.
Page 109
Procedural issues
XIII. ORAL PROCEEDINGS BEFORE THE OPPOSITION DIVISION
Art. 75 CTMR
During the opposition proceedings, the parties may at any time ask for oral
proceedings. The Office may also summon the parties to an oral hearing on its
own initiative.
Art.
CTMR
The granting of an oral hearing is discretionary; the Office does not have to
follow such a request if it thinks that it is not expedient to do so.
75(1)
The practice of OD is that written proceedings are sufficient and that having
oral proceedings is not necessary.
Page 110
Procedural issues
XIV. DOCUMENTS NOT READABLE/
REFERENCE TO OTHER FILES
1.
R 80(2) IR
CANNOT
BE
HANDLED
/
Documents not readable
Where a communication received by telecopier is incomplete or illegible, or
where the Office has reasonable doubts as to the accuracy of the
transmission, the Office informs the sender accordingly and invites him, within
a period to be specified by the Office, to retransmit the original by telecopy or
to submit the original in accordance with Rule 79(a). Mailroom will deal with
these re-fax requests.
When this request is complied with within the period specified, the date of the
receipt of the retransmission shall be deemed to be the date of the receipt of
the original communication.
2.
Documents submitted in media which cannot be handled by
the Office
On some occasions a party submits documents or means of evidence in media
which cannot be analysed or handled by the Office itself, for instance, CD
ROMs or diskettes which cannot be opened or read without the assistance of
an expert.
In these cases, the Office will inform the party that the evidence will not be
taken into account due to technical reasons, and it will invite him to submit
within a fixed time limit, the evidence again in any of the standard formats
accepted by the Office. If he does, the Office accepts the evidence as received
within the period of time.
3.
Original documents
Original documents become part of the file and therefore cannot be returned to
the person who submitted them.
However, the party always has the possibility of obtaining a certified or
uncertified copy of the original documents, subject to the payment of EUR 30
(EUR 10 when uncertified) plus EUR 1 for each page exceeding 10.
4.
Confidential information
In some cases one of the parties requests the Office to keep certain
Page 111
Procedural issues
documents confidential even from the other party in the proceedings. Although
the Office can keep documents confidential vis-à-vis third parties (inspection of
files), it can under no circumstances keep documents confidential with regard
to the other party in inter partes proceedings.
Each party to the proceedings must always have a right to defend itself. That
means that he should have full access to all material filed by the other party.
From this it follows that all material filed by a party should be disclosed to the
other party of the proceedings. The Office has an obligation to communicate all
material received to the other party.
If in the course of opposition proceedings the OD receives documents with a
request that they be kept confidential inter partes, the sender should be
informed that the documents cannot be kept confidential with respect to the
other party to the proceedings.
To this end, a letter has to be sent, clearly explaining that he may choose
between disclosure of the documents or withdrawal of the documents. It is up
to the party to decide which of these possibilities is appropriate for his case.
If he confirms the confidentiality, the documents will not be sent to the other
party and will not be taken into account. They will have to be marked as
confidential in Filenet.
If he wants the documents to be taken into account but not available for third
parties, the documents can be forwarded to the other party, but must be
marked confidential in Filenet.
If he does not reply, the documents will not be sent to the other party and will
not be taken into account. They will have to be marked as confidential in
Filenet.
5.
References made to documents
including before the BoA
in
other
proceedings,
From time to time the Office receives observations from the opponent or
applicant in which he refers to documents filed in other opposition proceedings,
for instance to proof of use that has already been filed in a different opposition.
Such requests are accepted when the opponent/applicant clearly identifies the
documents that he refers to. Clear identification means precise indication. The
party must indicate the following: the number of the opposition he refers to, the
title of the document he refers to, the amount of pages of this document and
the date this document was sent to the Office, for instance “the statutory
Page 112
Procedural issues
declaration that was submitted to the Office on dd/mm/yy in opposition
proceedings B xxx xxx, together with exhibits 1 to 8, consisting of xx pages”.
This also includes documents submitted before the BoA, provided that such
references clearly identify the documents referred to.
However, a general reference to observations or documents submitted in other
opposition/appeal proceedings will not be accepted.
In such a situation the party referring generally to such other documents
should be invited to be sufficiently specific. The party should also be informed
that unless such specification is received within the time limit set, such other
documents will not be considered.
Page 113
Procedural issues
XV. NOTIFICATION BY POST; PUBLIC NOTIFICATION
R 61(2)(a),(d)
(e)
The Office normally communicates with the parties by fax. However, when the
party in question does not have a fax machine or when the volume of the
documents that is to be sent surpasses 40 pages, notification is done by post.
This is also the case where the colour of the marks is decisive for the outcome
of the decision. If these two ways of communicating (fax and post) fail, public
notification is the last resort.
1.
Notification by post
R 62(1) IR
When a notification is done by post, it is sent by registered mail. Only when
the notification contains elements in colour or there is no fax to send it to, will it
be notified by registered mail.
R 62(4) IR
Notification by registered letter, with or without advice of delivery, shall be
deemed to have been effected even if the addressee refuses to accept the
letter.
R 66 IR
A distinction is to be made when a notification is sent to a representative or
party within the European Union or outside it. If the notification is sent to an
address within the EU and it is returned after the first attempt, a second
attempt is made.
R 62(2) IR
If the notification is sent to an address outside the EU, it is of no importance if it
is returned. No second attempt is made, as the notification is deemed to have
been effected when the posting has taken place. This legal fiction makes
further notification or public notification unnecessary. There are only two
exceptions to this rule, namely when the Office never had any address of the
applicant or opponent at all, or when the letter is returned because of
bankruptcy.
2.
Public notification
Public notification, provided in Rule 66 IR, is only made when the address of
the addressee (applicant or opponent within the EU) cannot be established
and/or if notification pursuant to Rule 62 IR (i.e. by registered mail) has failed
after a second attempt.
According to Article 2 of Decision No EX-96-5 of the President of 30 /07/1996,
the text of these notifications consists of:
Page 114
Procedural issues
a) an indication of the proceedings to which the publication relates;
b) the file number of the Community trade mark application;
c) the file number of the proceedings;
d) the name of the addressee
e) the address of the addressee known to the Office;
f) the type of document to be notified;
g) the date of the document; and,
h) the place where the document can be inspected.
Art.
116(1)
CTMR
Article 116(1) CTMR provides that the text of the publication must be published
in all official languages of the European Community. Most OD notifications
have been translated in all official languages of the EC. These translations are
currently being collected and prepared to be put in a database so that they can
be used without having to translate.
3.
Procedure for public notification
The objective of public notification is that the party addressed understands that
the Office tried, without success, to contact him, what kind of notification is
concerned and where he can find it.
To send a public notification, first a request to the publication service must be
filled in. The request includes a cover page asking the publication service to
proceed with the public notification, followed by 20 tables (one for each
language of the EC), containing items a) to h). An example of both the request
and a table follows at the end of this chapter. The tables give key information
about the letter that was unsuccessfully sent. Each table must be completed in
its corresponding language.
First it must be checked if the data on the first page are correct: lawyer’s name,
unit’s number, opposition number, etc.
There are three kinds of information to fill in:
1. Information that applies to all the cases: a) and h). This is information
about the division and the unit;
2. Information that has to be adapted depending on which letter had been
sent unsuccessfully: f). Here the title of the letter that was sent has to be
introduced, translating it in each table to the corresponding language;
3. Information that has to be adapted to the specific letter that was sent: b),
c), d), e) and g). This concerns the CTMA and opposition numbers, the name
of the person that the OD tried to reach and the address, and the date of the
letter (if the letter has been sent twice, the date of the second letter). All this
information is to be taken from the letter that was sent in vain.
Page 115
Procedural issues
Until the database (see before) is up and running, it is useful to verify if the
letter that is to be notified publicly has been done before for previous public
notifications by one of your colleagues, so that double work is avoided.
Attention should be paid to the following indications sent to us by publication
service:
The Greek should be keyed in with font “Times New Roman” and not be
changed manually. People who do not have a PC configured for Greek will not
be able to read it.
The following format should be used for the date: dd-mm-yyyy.
Each language should be on a separate page by inserting a “page break”.
The official order of the languages is: ES-DA-DE-EL-EN-FR-IT-NL-PT-FI-SV
“Bold” fonts should not be used.
Particular attention should be paid to the Greek version. For advice, please
check with a Greek colleague for addresses in Greek etc. If there is any
problem with the Greek font, “Publication” will send it back and give indications
concerning this or other problems.
Once all the tables have been completed, the document must be saved
(preferably in the personal folder so that it can be found easily for future public
notifications, at least until the database comes into existence).
R 66(2) IR
When all the data are correct, an e-mail with the document attached must be
sent to *Publication.
Some days afterwards, *Publication replies, informing when and in which
Bulletin the public notification will be published.
The date given is important, as it is the basis for establishing the following time
limits.
According to decision No EX-96-5 of the President, the letter is deemed to be
received 1 month plus 10 days after the date of publication. This latter date
plus 2 months equals the time limit to be given. For example, if the letter is
published in the Community Trade Marks Bulletin dated 10/05/2002, it is
deemed to have been received by 20/06/2002 and the deadline to be complied
with is 20/08/2002.
As it can concern his own deadlines, for example in the case of public
notification of the notification of the opposition, the other party must be
informed about these deadlines.
Page 116
Procedural issues
EXAMPLE OF REQUEST AND TABLE PUBLIC NOTIFICATION
Note for the attention of …
O/Ref :
B xxxxxx
Subject
:
Request for public notification in the Community Trade
Marks Bulletin under Rules 61(2)(e) & 66 of the Implementing Regulation
Please proceed with the public notification of the following particulars in
respect of the above mentioned opposition proceedings, in accordance with
Decision No EX-96-5/30-07-1996 of the President of the Office.
The relevant information has been translated into all the eleven official
languages in the attached tables.
Thank you in advance for your co-operation,
Examiner’s name
Enc: 11 tables.
Copy: File
- ES NOTIFICACIÓN POR ANUNCIO PÚBLICO
Según lo previsto en la Regla 61(2) y 66 del Reglamento de Ejecución y
en la Decisión No. EX-965/30-07-1996 del Presidente de la Oficina
Procedimiento para el que se efectúa la Oposición contra la solicitud de registro
publicación:
de marca comunitaria
Solicitud nº:
0000
Oposición nº:
B 0000
Nombre del destinatario:
xxxx Limited
Dirección conocida por la Oficina:
77 xxx Avenue
xxxx
REINO UNIDO
Tipo de documento que se notifica:
Notificación de una resolución al
solicitante
Fecha del Documento:
dd/mm/yyyy
Lugar en que puede consultarse el OAMI, Division de Oposición, Unidad 6
documento:
Page 117
Procedural issues
XVI. CONVERSION
There is a chapter on conversion in the Office’s guidelines and there is also a
Guide to Conversion Procedure, both available in OAMI ONLINE. For
information on conversion in general reference is made to these guidelines.
During opposition proceedings, the applicant may file a request for conversion
where the contested CTMA is refused totally or partially – Article 108(1)
CTMR, and when he withdraws the contested CTMA - Article 108(1) CTMR.
1.
Informing the applicant
Since March 2004, it is no longer required to inform the parties about the
possibility of conversion when an OD decision has been taken. StandL 256
has become obsolete.
2.
Requests made in observations
Even though it is the Recordal Section of the Administration of Trade Marks
and Designs Department (ATMDD) that deals with conversion requests, OD
may sometimes receive requests for conversion. For example, an applicant
may in the same observations reply to the notice of opposition, restrict his CTM
application and request a partial conversion.
In these cases, RS might not have a copy of the request. Thus, we should
enquire whether a copy was dispatched to RS, by selecting the document in
QFMan, clicking “View” in toolbar and choosing “Search copies”. The list of
addressees is supposed to appear. The Registry is signalled either as RS or
IN (inscription). If RS has not received the request we must inform them by
copying the request and sending it to them.
3.
Opposition based on (to be) converted CTM(A)
National applications deriving from the conversion of an earlier CTM(A) are
considered to come into existence as soon as a valid conversion request is
filed. Such rights will be properly identified for admissibility purposes under
Rule 18(1) IR if the opponent indicates the number of the CTM(A) under
conversion and the countries for which he has requested the conversion.
When during opposition proceedings the CTM(A) on which the opposition is
based ceases to exist but at the same time a request for conversion is filed the
proceedings must be closed. This is because the earlier right on which the
Page 118
Procedural issues
opposition was based has ceased to exist and the subsequent national
applications, autonomous and independent, were never the basis of the
opposition.
Page 119
Procedural issues
XVII. DECISION ON THE APPORTIONMENT OF COSTS/ AGREEMENT ON
COSTS
1.
Art. 81 CTMR,
R 94 IR,
BoA R 677/992, RISO
In which cases must a decision on costs be taken?
A decision on costs has to be taken in all opposition proceedings that have
passed the cooling off stage, i.e. where the adversarial part of the proceedings
has started, and that have come to an end. No decision on costs is taken for
oppositions that are closed before or during the cooling off period. (BoA R
862/2000-3, Golden Lites shall not be followed, which argues that the OD has
to take a decision where the proceedings are terminated by withdrawing the
CTM application or opposition, when the opposition is admissible and when
requested by the interested party.)
If a decision on substance is taken, the decision on apportionment of costs is
given at the end of the decision. In all other cases where the registries of the
Opposition Division close the case, a separate decision on costs is issued.
2.
In which cases a decision on costs must not be taken?
2.1. Agreement on costs
Whenever the parties have settled the opposition proceedings with an
agreement that includes the costs, the Office will not issue a decision on costs.
The same is true if the Office receives information signed by both parties
stating that the parties have agreed on costs. Such a request can also be sent
in two separate letters to the Office.
If the parties sign a general agreement that does not include the cost issue and
ask the Office to decide on costs the Office will accept this request.
2.2. Information from “potential winning party”.
When the party that will potentially win the proceedings informs the Office that
he accepts each party bearing their own costs, no cost decision is necessary.
The Office will refrain from taking a decision on costs whenever the potential
“winning party” informs the Office that he agrees to share the costs even if the
“losing party” does not confirm his agreement. The latest letters from both
parties have therefore to be checked carefully before issuing a decision.
If however the potential losing party sends such a request to the Office, it will
be forwarded to the other party. Depending on the answer of the other party, a
Page 120
Procedural issues
decision will be issued.
If the parties provide the Office with an agreement on costs, StandL 257a/b are
sent.
3.
Art. 81 CTMR,
R 94 IR
Standard cases of decisions on costs
The general rule is that the losing party, or the party who terminates the
proceedings by withdrawing the CTM application or opposition, pays. Article
81(3) CTMR makes a distinction between fees and costs. If the opponent wins,
the applicant has to pay the fees and the costs of the opponent, if the applicant
wins the opponent only pays the costs. In standard cases the result is the
following.
- The applicant withdraws or restricts his application to the goods and services
the opposition is not directed at (partial withdrawal). In these cases the
applicant has to pay the costs.
- The opponent withdraws his opposition without any restriction of the CTM
application as regards the contested goods & services. The opponent has to
pay the costs. It has to be checked if the withdrawal was linked to a restriction
of the CTM application as in this case, it may be the applicant who pays, or a
different apportionment of costs is to be decided.
- Restriction of the application followed by withdrawal of the opposition. In
principle each party bears their own costs. The relevant paragraph of the costs
template reads:
In the present case the opponent withdrew his opposition following a
restriction of the applicant’s specification. Such a restriction is
equivalent to the partial withdrawal of the application. To this extent the
opponent was successful in the proceedings. However, the restriction of
the application was more limited than the scope of the opposition. To
this extent the applicant was also successful in the proceedings.
Consequently, the Office concludes that it is equitable that each party
should bear its own costs.
However, there may be cases where a different apportionment of costs is
made, e.g. if the application was only limited to a very small extent. In such
cases the Office may apply Article 81(2) CTMR.
4.
Other cases
4.1. Rejection of application pursuant to Article 88(2)
Page 121
Procedural issues
It will be very rare that a CTM application will be rejected on the grounds of
absence of authorisation. Nevertheless, the case can also arise if an existing
representative withdraws from the case and there is no representative
appointed within the time limit set.
Where the applicant does not file the requested authorisation/appoint a
representative within the allotted term, and representation is compulsory, not
only is an eventual limitation/withdrawal made without a representative
inadmissible, but the application must also be rejected, pursuant to Article
88(2) CTMR (lack of mandatory representation).
In practice, if the applicant does not respond to the letter of the Office by
appointing a representative, the application is rejected. Once the rejection
becomes final, the opposition proceedings are closed by modifying StandL 252
accordingly.
In these situations the practice of the OD on costs is as follows. If the
deficiency appeared after expiry of the cooling off period a decision on costs is
taken in accordance with Article 81(4) CTMR. This article provides that in
cases that do not proceed to judgment the costs are at the discretion of the
Office. Then the applicant should pay costs.
If on the other hand, the same situation arises before commencement of the
adversarial part, no decision on costs can be taken as the adversarial part of
the proceedings has not yet started. Neither can Rule 19 IR be applied, as this
rule only provides for a refund of the opposition fee when the application is
withdrawn or restricted and there has been no withdrawal or restriction.
4.2. Rejection of application due to third party observations
If the application is rejected due to observations of third parties and these
observations were received before commencement of the adversarial part no
costs decision can be issued.
In the cases where the CTM application has been rejected during the
adversarial part of the proceedings each party should pay their own costs.
4.3. Multiple oppositions
4.3.1. Complete rejection of the CTM application
In cases where there are multiple oppositions against the same CTM
application and one leads to the rejection of the CTM application, the Office
does not take any action in the other oppositions until the appeal period has
Page 122
Procedural issues
elapsed.
If the appeal period elapses without an appeal being filed and thus the decision
becomes final, the Office closes the other opposition proceedings and the
cases do not proceed to judgment.
Given that no decision was taken on the merits, the costs are at the discretion
of the Opposition Division (Article 81(4) CTMR). The Office is not able to
determine who is the “winning or losing party”, and therefore, applying a
principle of equity, each party will bear their own costs.
When closing an opposition after commencement of the proceedings, we
normally inform the parties that the Office will take a decision on costs in
accordance with Article 81 CTMR unless they submit an agreement differing
from the general rules in this article (see StandL 250a/b, 253a/b and 254a/b).
However, this information is not necessary when an opposition is concluded
due to a final decision in another opposition. This is because it does not make
any sense to ask the parties to submit a cost agreement in an opposition which
was neither terminated by the parties themselves, nor decided on by the
Office.
Therefore, when we close these oppositions by means of StandL 251 we do
not add the “cost agreement-paragraph”.
4.3.2. Partial rejection of the CTM application
In cases of multiple oppositions which are partially directed against the same
goods and services of the CTM application, the outcome of the decision which
is taken first might affect the other opposition.
Example: if opposition A is directed against class 1 and opposition B against
classes 1 and 2 of the CTM application, the situation may arise that first a
decision is taken in opposition A rejecting the application as regards class 1. In
this case, further processing depends on whether this decision has been
appealed or has become final.
If the decision has been appealed, a decision must be taken in opposition B
evaluating the conflict as regards classes 1 and 2 of the CTM application,
since the decision in opposition A has not become final yet.
If the decision has become final, a decision must be taken in opposition B only
evaluating the conflict as regards class 2 of the CTM application, since the
decision in opposition A has become final and class 1 of the CTM application
no longer exists.
Page 123
Procedural issues
This leads to the question of how to apportion the costs in cases where
opposition B is unsuccessful as regards the remaining class 2, but would have
been (clearly) successful as regards class 1 of the CTM application.
In spite of the fact that the opponent loses the (remaining scope of the)
opposition in total, there is in such (or similar) situations the discretionary
power to decide that, based on equity reasons in accordance with Article 81(2)
CTMR, each party bears their own costs. If such a decision is taken, the
special circumstances leading to this finding have to be sufficiently explained in
the cost-part of the decision.
5.
Other cost issues
5.1. Arguments of the parties
The Office informs both parties when it will render a decision on costs. The
parties may send arguments. The Office cannot and does not want to examine
the moral correctness of the behaviour of the parties during the proceedings.
5.2. Apportionment of costs in cases of joinder
Rule 21 IR provides for the Office to deal with multiple oppositions in one set of
proceedings. A typical example would be where there are three oppositions
against the same mark and the three opponents are related companies and
have the same representative.
When the examiner has not suspended any of the oppositions the provisions
on costs and fees of Rule 21(3) and (4) do not apply.
In cases where the opposition succeeds in its entirety the applicant should pay
the fees paid by each of the opponents. Thus in the case of the previous
example three opposition fees should be paid. As regards the costs, as the
cases are treated as one, costs should be awarded only once. However the
registries are free make a different apportionment of costs.
5.3. Share the costs of the opposition fee
BoA
R14/2000
Alpha / alfa
The BoA stated that it is equitable to order each party, pursuant to Article 81(2)
CTMR to bear their own costs incurred in the opposition proceedings and to
share the costs of the opposition fee. The OD interprets Article 81(2) CTMR as
only referring to costs and not to fees. Consequently this decision of the
Boards is not followed.
Page 124
Procedural issues
XVIII. FIXING OF COSTS
Art.
81(6)
CTMR,
R 94 IR
The registries of the Opposition Division fix the amount of costs in opposition
proceedings on request of one or both parties. Rule 94 IR establishes the
costs the losing party must pay and how much he has to pay.
1.
Art.
81(6)
CTMR,
R 94(3) IR
Admissibility of the request
The request for fixation of costs is only admissible once the decision in respect
of which the fixing of cost is required has become final. According to Rule
94(3) IR, sufficient evidence (“a bill of costs”) has to be attached. This
evidence takes the form of an invoice attached to the request.
The Regulations give no answer to the question within what period of time after
the decision has become final the interested party should ask for fixation. With
reference to ECJ case-law, it is considered that one year is not enough time to
refuse a request for fixation of costs.
1.1. Signing and sending of the fixation
Art.
81(6)
CTMR,
R 94(4) IR
In order to avoid that the same person who made the fixation of costs also
forms part of the Opposition Division that reviews it, a fixation of costs may not
be signed by the person who signed the cost decision or whose name figured
on it. StandL 258a/b should be used when sending the fixation to the parties.
1.2. Evidence
The interested party must submit a bill of costs (evidence that costs were
incurred). Normally this evidence consists of a copy of an invoice from the
representative to his client. This evidence is forwarded to the other party
together with the fixation.
A simple request without any evidence or a mere summary of monthly costs is
insufficient. The evidence must show a link between the representative, his
client and the opposition. Costs incurred when inquiring about the decision on
costs or a possible appeal are not covered by the representation costs for the
opposition and cannot be fixed.
When a request is made without a bill of costs and/or supporting evidence, the
opponent /applicant should be reminded that he should submit the evidence,
within a period of two months from receipt of the notification. The following text
can be used:
Page 125
Procedural issues
Further to your request for fixation of costs for the above opposition,
received by the Office on … , please note that this request alone is not
considered sufficient for fixation, as according to Rule 94(3) IR a bill of
costs with supporting evidence must be attached to the request.
You are therefore required to provide the Office with an invoice, addressed to
your client and referring to the opposition with respect to attorney fees or any
other evidence. The evidence must be submitted within two months of receipt
of this notification, that is; on or before … .
When the request contains only a request to refund EUR 350 for the opposition
fee, evidence will not be necessary, as it is quite clear that the opposition fee
was paid on behalf of the opponent.
The bill of costs, generally an invoice, should be addressed to the
representative’s client (the opponent or applicant).
According to Rule 96(2) IR the Office may require that a translation be supplied
within a period specified by it.
It is recommendable that the bill is specified in order to establish the nature of
the costs. A global specification where the representative distinguishes
between opposition fee and representation costs is sufficient. It should be
noted that a normal bill includes the VAT.
2.
Arti.
88(3),
89(1) CTMR,
R 54, 94(7)(f)
IR
Cost of employees
Costs of employees cannot be fixed as Rule 94(7)(f) reads: “cost of
representation within the meaning of Article 89(1) of the Regulation”. As this
article only refers to professional representatives and not to employees,
employees cannot claim representation costs. Article 81(6) CTMR and Rule
94(4) IR do not apply.
This is also the case where the employee “represents” an American company,
which has economic connections with the European company where he is
employed. This situation is possible under the terms of Article 88(3), but as it is
not mentioned in Article 89(1) and thus not covered by Rule 94(7)(f), costs
cannot be fixed at EUR 250 in this case either.
Consequently, a request for fixation of EUR 250 from a “winning” employee as
payment for his work cannot be accepted as such costs are not covered by the
wording of Rule 94(7)(f).
If a fixation request only contains costs incurred by an employee (i.e. by the
opponent or applicant himself), a letter must be sent informing the parties that
Page 126
Procedural issues
fixation of costs is not possible. The letter must also contain a paragraph
stating that the interested party can ask for a formal decision within two
months.
If the request for fixation of costs of an employee contains fees (Rule 94(6) IR)
and costs (Rule 94(7)(a)-(e) IR), the request is to be dealt with as a whole. The
fees and costs that can be granted are fixed, those that cannot are rejected. In
this case Article 81(6) CTMR and Rule 94(4) IR (revision of fixation) do apply.
3.
R 94 IR
Maximum amounts
The maximum amount that can be reimbursed to the opponent is EUR 600
(opposition fee and maximum amount for costs of representation), and to the
applicant EUR 250, since he did not pay an opposition fee.
4.
Renouncement of costs
Where the winning party in opposition proceedings is the opponent, he can
decide to only claim the opposition fee of EUR 350 and renounce the costs.
In such cases, the opponent does not have to file any supporting evidence and
the practice is to deal directly with the opponent’s request for the fixing of
costs.
In order to proceed like this, the opponent must have explicitly renounced his
claim to the other costs. If the opponent’s intention is not clear from his letter,
we must request supporting evidence in order to be able to fix the costs.
5.
Currencies/ exchange rates
In the decision to fix the costs, the amount mentioned in the bill of costs is
mentioned in the original currency used between the opponent/applicant and
his representative. It is suggested to use the official abbreviations for the
currencies and the translation of the currency in the language in which the
decision is made. For the translation of currencies the different language
versions of the Official Journal L 395 of 31.12.1998 can be consulted.
If an exchange rate has to be indicated, e.g. invoice in USD, the monthly
exchange
rate
is
indicated
(http://europa.eu.int/comm/budget/inforeuro/files.htm). This information is also
available on OHIM’s Intranet.
6.
Confidentiality
Page 127
Procedural issues
In some cases representatives do not want their tariffs to be known to third
parties. However it is not possible to keep the evidence confidential vis-à-vis
the paying party, as this party must know on what grounds the fixation is made.
If the winning party requests the Office to keep the evidence confidential, the
Office must inform the him that this is not possible. He can then decide to
maintain or withdraw the request.
7.
Art.
81(6)
CTMR,
R
94(4) IR
Review of fixings of costs
If one of the parties disagrees with the fixation of costs, he can ask for review
of the decision. The request must state the reasons and be filed within one
month after the date of notification of the fixation. It is only deemed to be filed
when the fee for reviewing has been paid.
8.
Fixation of costs after appeal
In cases where the Boards of Appeal remits oppositions to the OD for further
prosecution, the fixation of costs done by the OD must cover the two
instances, as it is more efficient to deal with the fixation of costs in a single
decision. This was decided in an internal agreement between the OD and the
BoA. The same principle applies when the Boards confirm OD decisions. In
this case, it will be the Boards whose fixation of costs will cover both
instances.
Page 128
Procedural issues
XIX. REVOCATION
On a few occasions the OD has taken a decision revoking its own decision.
On all occasions it concerned decisions where the opposition or the CTMA had
been withdrawn prior to the date the decision was rendered.
As the withdrawal that had been overlooked was valid, in the case of a
withdrawal of the opposition a decision was taken on an opposition that at the
time of decision no longer existed. In the case of a withdrawal of the CTM
application, the opposition had become without object, as the CTMA no longer
existed.
This practice is to continue under the new Article 78a CTMR (to enter into
force end 2004?)
Page 129
Procedural matters: Pending issues
XX. CHANGE OF PARTIES (Transfer, change of name, change of
representative, interruption of proceedings)
1.
Transfer and opposition proceedings
1.1. Introduction and basic principle
Art. 17 CTMR
A transfer or assignment of an earlier right is a change of ownership of this
right.
A transfer can be done in several forms, from a simple sale of an earlier mark
from A to B, to a company C that gets bought (trade marks included) by
company D, to a merger of companies E and F into company G (universal
succession), to legal succession (after the owner has died, the heirs become
the new owners).
When a transfer is made during opposition proceedings, several different
situations can arise. Whereas for earlier CTM registrations or applications on
which the opposition is based the new owner can only become party to the
proceedings (or file observations) once the request for registration of the
transfer has reached the Office, for earlier national registrations or applications
it suffices that the new owner files evidence of the transfer.
The basic principle is that the new owner substitutes the old owner in the
proceedings. The practice of the Office when dealing with transfers is
described in paragraphs 1.2 (the earlier registration is a CTM registration), 1.3
(the earlier registration is a national registration) and 1.4 (transfer of a
contested CTM application during opposition proceedings.
1.2. Transfer of earlier CTM
Art. 17(6),(7)
CTMR
Concerning earlier CTM(A's), according to Article 17(6) CTMR, as long as a
transfer has not been entered in the Register, the successor in title may not
invoke the rights arising from the registration of the CTM(A). However, in the
period between the date of reception of the request for registration of the
transfer and the date of registration of the transfer, the new owner may already
make statements to the Office with a view to observing time limits. ATMDD is
competent for dealing with requests for registration of a transfer.
1.2.1. Opposition based on one CTM only
When an opposition is based on one earlier CTM only and this CTM is/has
been transferred during the opposition proceedings, the new owner becomes
Page 130
the new opponent. The new owner will substitute the old owner.
To this end, either the old or the new owner will have to inform the Office that
the CTM on which the opposition is based has been transferred and he must
file a request for registration of the transfer. As mentioned above, as soon as
the request is received by the Office, the new owner may already make
statements. However, he only becomes party to the proceedings once the
transfer is registered.
In practice, once the OD is informed that a request for registration is received,
the proceedings can continue with the new owner. Nevertheless, the transfer
has to be registered before a decision on the opposition is taken. If the
opposition is ready for decision but the transfer has not been registered the
opposition must be suspended.
If the new owner informs the Office that he does not want to continue the
proceedings, the opposition is considered withdrawn.
If, for one reason or other, the transfer is never registered, but there is
evidence of the transfer, the opposition has become unfounded, as the
opponent is no longer the owner of the earlier right. He must be informed that
the OD will reject the opposition as such unless he withdraws the opposition.
1.2.2. Partial transfer of the only CTM on which the opposition is
based
In cases of a partial transfer one part of the earlier CTM remains with the
original owner, and another part by a new owner. To partial transfers the same
principles as for transfer of only one of more CTM registrations on which the
opposition is based apply. These principles are described in paragraph 1.2.3
below.
1.2.3. Opposition based on more than one earlier CTM
When an opposition is based on more than one earlier CTM and these marks
are/have been transferred to the same new owner during the opposition
proceedings, the foregoing applies. It becomes different when only one of the
earlier CTMs is/has been transferred. In this case the new owner may also
become opponent, so that there are two. The opposition will be kept as one. In
general both opponents have one representative.
If one of the opponents wants to withdraw, this is to be accepted independently
of whether the other wants to continue. Of course, if the proceedings are
continued it will be based only on the rights of the opponent who did not
withdraw. No separate decision on costs will be taken.
Page 131
The new opponents will be treated as “joint opponents”, meaning that the
Office will continue dealing with the case in exactly the same way as before,
i.e. as one opposition, albeit with more than one opponent. Moreover, the
Office will consider the original representative as the “common” representative
for all the opponents and will not invite the new opponents to appoint a new
one. However, the new opponents always have the option of appointing a
representative of their choice.
Common representation does not mean that opponents may not act
independently, to the extent that their earlier rights remain independent: if for
instance one of the opponents enters into a friendly settlement with the
applicant, the opposition will be treated as partially withdrawn in respect of the
earlier rights owned by this opponent.
1.3. Transfer of earlier national registration
1.3.1. Opposition based on one national registration only
When an opposition is based on one earlier national registration only and this
registration is/has been transferred during the opposition proceedings, the new
owner also becomes the new opponent. The new owner will substitute the old
owner.
To this end, either the old or the new owner will have to inform the Office that
the earlier national registration on which the opposition is based has been
transferred and must file evidence thereof, i.e. the deed of transfer. As there
are different national practices, it is not obligatory to submit a copy of the
request to register the transfer with the national office.
OD does not require the new owner to confirm that he wishes to continue the
proceedings. As long as the evidence of the transfer is in order, the new owner
is accepted as new opponent. If he informs the Office of the transfer, but does
not submit (sufficient) evidence thereof, the opposition proceedings have to be
suspended while the new owner is given two months to provide evidence of
the transfer.
Nevertheless, in those Member States where this is a requirement for a
transfer to have effect against third parties, the transfer must have been
registered before a decision on the opposition is taken. If the opposition is
ready for decision but the transfer has not been registered the opposition must
be suspended and the opponent is to be required to provide evidence of
registration of the transfer.
As it is not in the interest of the applicant if the proceedings are delayed, the
new owner must be set a reasonable time limit to provide this evidence.
Page 132
If the new owner does not provide the required evidence, the proceedings
must be continued with the old owner. If the old owner maintains that he is not
the owner anymore the opposition has become unfounded, as the opponent is
no longer the owner of the earlier right. He must be informed that the OD will
reject the opposition as such unless he withdraws the opposition.
If the new owner provides the required evidence and informs the Office that he
does not want to continue the proceedings, the opposition is considered
withdrawn.
A deed of transfer, signed by assignor and assignee, will normally be
submitted as evidence of a transfer. A full contract that shows the change of
ownership of the registration is of course also acceptable.
Although it is the OD that is in charge of the substantive implications of the
change, the changes in Euromarc are made by the ATMDD. It may be that
ATMDD informs the OD that a claim to a change of owner has been received
at the Office. It is however up to the OD to verify if evidence of the transfer has
been submitted. If not, the opposition proceedings have to be suspended while
the new owner is given two months to provide evidence of the transfer.
ATMDD will have to be informed if and when the change in Euromarc can go
ahead.
1.3.2. Partial transfer of the only national registration on which the
opposition is based
In cases of a partial transfer one part of the earlier national registration remains
with the original owner, and another part with a new owner. To partial transfers
the same principles as for transfer of only one of more national registrations on
which the opposition is based apply. These principles are described in
paragraph 1.3.3 below.
1.3.3. Opposition based
registration
on
more
than
one
earlier
national
When an opposition is based on more than one earlier national registration and
these are/have been transferred to the same new owner during the opposition
proceedings, the foregoing applies.
It becomes different when only one of the earlier national rights is/has been
transferred. In this case the new owner may also become opponent, so that
there are two. The opposition will be kept as one. In general both opponents
have one representative.
If one of the opponents wants to withdraw, this is to be accepted independently
of whether the other wants to continue. Of course, if the proceedings are
Page 133
continued it will be based only on the rights of the opponent that did not
withdraw. No separate decision on costs will be taken.
In practice, the new opponents will be treated as “joint opponents”, meaning
that the Office will continue dealing with the case in exactly the same way as
before, i.e. as one opposition, albeit with more than one opponent. Moreover,
the Office will consider the original representative as the “common”
representative for all the opponents and will not invite the new opponents to
appoint a new one. However, the new opponents always have the option of
appointing a representative of their choice.
1.4. Transfer of the contested CTMA
When during opposition proceedings the contested CTMA is/has been
transferred, the opposition follows the application, i.e. the opponent is informed
of the transfer and the proceedings continue between the new owner of the
CTMA and the opponent.
When ATMDD receives a request for registration of the transfer, it informs the
OD. As soon as the request has been received, the “new” applicant may make
statements to the Office with a view to observing time limits; there is no need
to suspend the procedure. The OD informs the opponent of the transfer and
the proceedings can continue. Of course, before a decision is taken the
transfer will have to be registered.
1.4.1. Partial transfer of a contested CTM application.
R 32(4) IR
When there has been a partial transfer of a (contested) CTMA, the Office must
create a separate file for the new registration (application) with a new
registration (application) number.
In this case, when the transfer is recorded in the Register and a new CTM
application is created, the OD also has to create a new opposition(s) file
against the new CTM application, since it is not possible to deal with one
opposition against two separate CTM applications.
Please note however that this is only the case when some of the originally
contested goods and services are maintained in the ‘old’ CTMA, and some in
the newly created CTMA. For example: Opponent X opposes all goods of
CTMA Y, applied for in class 12 for apparatus for locomotion by land and air,
and for clothing and footwear in class 25. CTMA Y is partially transferred, and
split into CTMA Y' for apparatus for locomotion by land and clothing, and
CTMA Y'' for apparatus for locomotion by air, and footwear.
Art. 17,
CTMR
23
As when the opponent filed his opposition there was only one opposition fee to
be paid, he is not requested to pay a second fee for the new opposition
Page 134
created after the split of the CTMA.
The transfer, even if it was requested before the opposition was filed, has
effect vis-à-vis third parties only after the entry in the Register. Thus the
payment of only one opposition fee was properly effected because at the time
of filing the opposition was only directed against one CTM application (the only
one). Therefore the new opposition will be created without the payment of a
new opposition fee.
Regarding the apportionment of costs, the OD will take into account the fact
that only one opposition fee was paid.
Moreover, depending on the circumstances of the case, it could be possible to
join the proceedings (e.g. when the representative of the “old” and “new”
applications is the same).
2.
Change of name
As mentioned above, a change of name does not imply a change of
ownership. ATMDD is in charge of such changes and will inform OD about any
changes in the name of the CTM applicant.
3.
Change of representatives
During the proceedings there may be changes of representatives. This can
occur in several different situations.
It can happen that either the opponent or the applicant informs the Office that
he wishes to designate a (new) representative. It can happen that the
representative himself resigns or that the representative is deleted or
suspended from the list of professional representatives. It can also happen that
due to a transfer the opponent or applicant changes and that they wish to be
represented by new representatives.
When there is a change of representative during opposition proceedings, the
other party will have to be informed by sending the other party a copy of the
letter and of the authorisation (if submitted).
Art. 88 CTMR
When a representative resigns, the proceedings are continued with the
opponent or applicant himself if they are from the EU. The other party is
informed of the resignation of the representative. If the party whose
representative has resigned is from outside the EU, a letter has to be sent
indicating that a new representative must be appointed.
Page 135
4.
Interruption of proceedings due to decease, legal incapacity of
a party or a representative
R 73 IR
Rule 73 IR deals with interruption of proceedings. Paragraph 1 distinguishes
three situations:
R 73 (1) IR
Opposition proceedings before the Office shall be interrupted:
(a) when the CTM applicant or owner has died or cannot take legal actions (for
example because he has been declared insane by a court).
(b) when the CTM applicant is prevented from continuing the proceedings
before the Office owing to legal reasons (for example when the applicant is in a
process of bankruptcy).
(c) when the representative of an applicant has died or cannot take legal
actions as a result of some action taken against his property.
Rule 73 IR only refers to the applicant and his representative and does not
mention anything about other parties, such as opponents. There are no explicit
rules concerning the opponent. In the absence of relevant provisions, the
Office applies the same rules are applicable for the opponent.
4.1. Death or legal incapacity
In cases of death of the applicant or of the person authorised by national law to
act on his behalf, because of the legal incapacity of the applicant, the
proceedings are only interrupted when this is requested by the representative
of the applicant/authorised person.
4.2. Bankruptcy
In cases of bankruptcy (Rule 73(1)(b) IR), the OD considers that the Rules
cover both the situation where a bankruptcy has been formally declared and
the situation where legal action has been initiated to declare a party bankrupt.
In practice, these cases normally start with a letter from the representative
informing the Office that he resigns as court action has been initiated to
declare his client bankrupt. Sometimes the representative further indicates who
acts as the trustee in the bankruptcy.
If there is no information as to who represents the bankrupt party, the OD has
no choice but to communicate with the bankrupt party himself. It is not up to
Page 136
the OD to investigate. Even though the bankrupt party is not allowed to
undertake binding legal acts, generally he still receives post, or, if not, the post
is delivered automatically to the trustee as long as there is one.
When the notification is returned to the Office as undeliverable, the normal
rules for public notification apply.
However, if the OD is informed who the trustee in the bankruptcy is, for
practical reasons, it should try to contact this person and explain to him about
the opposition proceedings. As the trustee cannot be accepted as party to the
proceedings without evidence that the applicant or opponent has filed for
bankruptcy and that the Court has nominated the trustee to take care of the
bankruptcy, the proceedings should be interrupted and the trustee should be
asked for evidence.
If evidence is filed, the OD should be practical. As the trustee is normally
looking for money on behalf of the bankrupt party in order to pay off debts, he
will not be interested in generating costs. Therefore, the OD should not require
the evidence to be translated into the language of the proceedings.
Once this evidence is received (and the Office is thus informed of the identity
of the person authorised to continue the proceedings before the Office), the
proceedings are resumed from a date to be fixed by the Office. The other party
must be informed.
For reasons of equity, when resuming the proceedings, new periods of time
are fixed. For example, when the proceedings were interrupted ten days before
the opponent had to file observations, when resuming he should be given a
new period of two months, not the ten days he had left at the moment of the
interruption.
4.3. Death or prevention for legal reasons of the representative of
the applicant/opponent before OHIM to act
R 73(3) IR
In the case referred to in paragraph 1(c) of Rule 73 IR, the proceedings shall
be resumed when the Office has been informed of the appointment of a new
representative of the CTM applicant.
According to Rule 73(3) IR, if the Office has not been informed of the
appointment of a new representative within three months after the beginning of
the interruption of the proceedings, it shall inform the applicant that his CTM
application is deemed withdrawn in the cases where he is obliged to have a
representative because he does not have a domicile or seat in the EU.
However, this is only the case when the applicant, after having been asked to
appoint a new representative, does not comply.
Page 137
In all other cases, the proceedings will continue with the applicant/opponent
himself.
Page 138
OPPOSITION GUIDELINES
Part 2
Chapter 1:
Identity
Opposition Guidelines – Part 2 Chapter 1, Identity - Status: March 2004
Page 139
Introduction to Part 2
Chapter 1 deals with the concept of identity, i.e. identity of the marks and the
goods and services. Some sections of this chapter lay the general
groundwork for the assessment of goods and services. These sections are
therefore also of relevance in the context of similarity of goods and services,
which is the subject of Part B of Chapter 2.
Chapter 2 focuses on the core concept of inter partes proceedings: likelihood
of confusion.
Part A deals with general aspects relating to that concept. It sets out, in
particular, the pertinent case law of the Court of Justice and explains how to
assess likelihood of confusion.
Part B addresses similarity of goods and services. It discusses the various
relevant factors, namely nature, purpose, method of use, complementary and
competitive character, channels of distribution, the relevant public, and the
usual origin of the goods and services. Part B also shows how to apply these
factors to some specific categories of goods and services.
The subject of Part C is the similarity of the signs. It covers, in particular, the
criteria that should be applied for the visual, phonetic and conceptual
comparison. Part C also specifically elaborates on signs that are partly or
wholly included in other signs.
The final Part D of Chapter 2 corresponds to the final part of decisions in
opposition cases. It explains how the global assessment of all the factors that
are relevant for determining likelihood of confusion must be made. Part D
deals with, in particular, the distinctiveness of the earlier mark, the impact of
the kind of goods and services on the assessment of the similarity between
the signs and the degree of sophistication and attention of the relevant public.
Page 140
Chapter 1: Identity
INDEX
CHAPTER 1: IDENTITY ART. 8(1)(a) CTMR..............................................142
I.
THE NOTION OF IDENTITY...........................................................142
1. Identity as a condition for the application of Article 8(1)(a)..............142
2. Identity of goods and services.........................................................142
2.1. Terminology ............................................................................142
2.2. Determining the wording of the goods and services to be
considered ..............................................................................143
2.2.1 The proper language version of the specifications ...........143
2.2.2 The relevant scope of the specifications...........................144
2.3. Determining the meaning of the wording of the goods and
services to be considered .......................................................145
2.3.1 In general .........................................................................145
2.3.2 The use of identical terms or synonyms ...........................145
2.4. The earlier mark includes the goods/services of the CTM
application...............................................................................146
2.5. The CTM application includes the goods/services of the earlier
mark........................................................................................147
2.6. One specification includes the goods/services of the other and
the broader specification uses all or part of the indications of the
class heading of one class......................................................148
2.6.1. The Office’s approach to the use of the class heading or part
of its indications ................................................................149
2.6.2. Consequences of the use of (part of) a class heading for
identity ..............................................................................149
2.7. Restrictions: Identity of goods/services required.....................150
3.1. Strict identity ...........................................................................151
3.2. Word marks ............................................................................151
3.2.1 Differences in typeface and size.......................................151
3.2.2 Differences in the use of small/capital letters ...................151
3.2.3 Use of word marks in colour .............................................152
3.2.4 Use of word marks with generic or descriptive additions ..152
3.4 3D marks ..................................................................................153
II.
IDENTITY AS A GROUND..............................................................154
Page 141
Identity and likelihood of confusion: Identity
CHAPTER 1: IDENTITY ART. 8(1)(a) CTMR
Article 8 (1)(a) CTMR provides that upon opposition by the proprietor of an
earlier trade mark, the trade mark applied for shall not be registered:
if it is identical with the earlier trade mark and the goods or services
for which registration is applied for are identical with the goods or
services for which the earlier trade mark is protected.
I.
THE NOTION OF IDENTITY
1.
Identity as a condition for the application of Article 8(1)(a)
The wording of Article 8(1)(a) requires an identity between both the signs
concerned and the goods and services covered. Whether the respective
marks are identical or not is an objective fact that can be directly established
from the proof on file. Hence, the fulfilment of this condition requires nothing
more than a simple comparison of the signs or goods in question, and identity
appears from a mere observation of the marks in question and their
specifications.
The protection conferred on the earlier mark by Article 8(1)(a) is absolute. The
wording of this provision does not make its applicability dependent on any
additional requirements. In particular, there is no need for any likelihood of
confusion to be established.
It is sometimes said that in these situations confusion is inevitable because
both the signs and the goods in dispute are identical, as the public will be in
no position to distinguish between the marks.
48/1998 GALLUP / GALLUP (EN)
However, the provision in Article 8 (1)(a) CTMR is not based on this
presumption.
The specific meaning of identity in the case of signs and goods respectively
will be discussed independently, as each context presents certain
particularities that call for a separate treatment.
2.
Identity of goods and services
2.1. Terminology
Goods and services are products, and therefore the term “products” may also
be used to refer to both goods and services. This is in line with the trade
Opposition Guidelines – Part 2 Chapter 1 – Status: March 2004
Page 142
custom that not only refers to goods as products but also to services. A
finance product, for instance, falls under the category services. In many
decisions taken by the OD in the past the term “products” is used in a
narrower sense, namely as a synonym for “goods” only.
2.2. Determining the wording of the goods and services to be
considered
2.2.1. The proper language version of the specifications
As a preliminary matter, the correct wording of the specifications under
consideration must be identified.
2.2.1.1. Community trade marks (earlier right or challenged
application)
An application for a Community trade mark shall be published in all the official
languages of the Community (Article 116(1)). Likewise, all entries in the
Register of Community trade marks shall be made in all these languages
(Article 116(2)). Publications of both applications and entries made in the
Register are made in the Community Trade Marks Bulletin (Rule 85(1) and
(2)).
In practice occasional discrepancies may be found between
-
the translation of the wording of the specification of a Community trade
mark (application or registration) published in the Community Trade Marks
Bulletin, and
the original wording as filed.
In case of such discrepancy, the text in the language of the Office in which the
application for the Community trade mark was filed is the authentic version. If
the application was filed in an official language of the European Community
other than one of the languages of the Office, the text in the second language
indicated by the applicant is authentic (see Article 116(3))
1267-2001 MOVICOM / MOBILCOM (EN),
3091/2000 HOM / XOM (FR).
2.2.1.2. Earlier national marks and international registrations
In case of doubt the original language, and not the translation into the
language of the proceedings according to Art. 115 and Rule 17(2), is
controlling.
As far as Madrid marks are concerned, the original language is always
French, as far as Protocol marks are concerned, the original language may be
either English or French or Spanish.
Page 143
2.2.2. The relevant scope of the specifications
The consideration of the goods and services must be based on the wording
indicated in the respective specifications. The actual or intended way of use of
the goods is not relevant for the examination.
503/1999 PLENUR (cl. 5) / PLENUM (cl. 5) (EN)
However, if proof of use of the earlier mark is validly requested and the
submitted evidence is sufficient only for part of the goods in the specification,
the examination is restricted to these goods. Likewise, when the opponent
shows that there have been proper reasons for non-use, only those goods or
services for which such proper reasons exist are to be compared. (See Article
43(2).)
1507/2001 DIADUR / VIADUR (EN)
Moreover, in the case of the earlier mark, only the goods and services on
which the opposition is validly based are pertinent. Hence, no account will be
taken of the goods/services that
-
cannot be taken into account for reasons of admissibility,
have not been properly substantiated (e.g. only a partial translation of the
specification was filed), or
have been expressly excluded by a formal restriction of the basis of the
opposition.
Similarly, only those goods and services of the contested application against
which the opposition is directed are taken into consideration. Consequently,
restrictions during the proceedings of either the specification of the
application, or the scope of the opposition, or of both, will limit the goods and
services to be considered.
Furthermore, a grammatical interpretation of the wording of the specification
might be required to determine the scope of the goods and services of the two
specifications that must be considered. This is especially true where terms
such as “in particular”, “namely”, or equivalents are used in order to show the
relationship of an individual product with a broader category. The term “in
particular” (or “for example”, “such as”, or other equivalent) indicates that the
specific products are only examples of items included in the category, and
that protection is not restricted to them. On the other hand, the term “namely”
(or “exclusively” or other equivalent) is exclusive and restricts the scope of the
registration only to the specifically listed goods.
For example, in the case of chemicals used in industry, namely raw materials
for plastics only the raw materials for plastics had to be compared with the
goods of the other mark.
546/1999 SYS (cl. 1) / SYSTOL (cl.1) (EN).
Page 144
2.3. Determining the meaning of the wording of the goods and
services to be considered
2.3.1. In general
Once the wording of the goods and services to be considered has been
identified, their meaning must be determined.
In some cases the exact meaning is immediately obvious from the
specification of the marks where a more or less detailed description of the
goods and services will often be given. For example, the wording belts, being
articles of clothing excludes by definition safety or industrial belts.
97/1999 MOTOR JEANS (cl.25) / MOTO (cl.25) (EN)
In cases of doubt about the exact meaning of the terms used in the
specification, these terms have to be interpreted from a commercial
perspective. For instance, both articles for gifts and shirts may be offered as
presents, but in commercial terms the goods articles for gifts are understood
as “decorative objects or memorabilia specifically designed and sold in special
outlets”, to which category shirts generally do not belong.
10/1999 M(cl.39) / M (cl.20, 22, 25) (EN),
964/1999 THE GREY LINE (cl.39) / GREYLINE (cl.18, 25, 28) (EN).
2.3.2. The use of identical terms or synonyms
Identity between the goods or services in dispute must be established on the
basis of the wording of the relevant parts of the specifications of the two
marks that have been identified in accordance with the principles set out in
the preceding section 2.2. Identity is obvious where the goods or services to
be compared are listed in both specifications in exactly the same terms.
35/1998 SIENA / LA SIRENA (FR).
Where this is not the case, the terms of the respective specifications must be
interpreted in order to show that they are in fact synonyms, i.e. that their
meaning is the same. The interpretation must be made from a commercial
perspective.
Examples:
• Interpretation of the goods or services
Bicycle is a synonym for cycle.
1548/2001 DRIVE (fig) / I-DRIVE (EN)
• Interpretation of other terms used in the specification
Page 145
The meaning of the words “articles” and “requisites” is identical. Therefore,
the goods smokers’ requisites in class 34 and smokers’ articles that are
also included in class 34 are identical.
1109/2001 EXPRESS / STATE EXPRESS (EN)
In doubt the conclusion should be against identity.
A different question arises where one of the two specifications contains
generic terms designating a broad category (e.g. vehicles) which may include
the specific goods and services of the other mark (e.g. buses). This may be
the case in respect of the earlier right or the of CTM application. This question
is discussed in detail in the following sections 2.4. and 2.5.
2.4. The earlier mark includes the goods/services of the CTM
application
Where the specification of the earlier right includes a generic term that covers
the goods or services of the contested application in their entirety, the goods
and services will clearly be identical.
Automobiles and parts and fittings thereof (CTMA) were considered to be
included in motor land vehicles and parts and fittings therefor (earlier right)
and, therefore, were considered identical.
R 969/2000-1 S-TYPE / S-CLASS (EN)
Pasta (the applicant’s specification) designates any of several variously
shaped edible preparations made from a flour and water dough, such as
spaghetti, and thus belongs to the general category of preparations made
from cereals (protected by the opponent’s trade marks). Therefore, the
conflicting goods were considered identical.
1769/2001 MEGABITE/MEGABITE (fig) (EN)
Caveat:
There are goods/services the scope of which may be defined in various
manners. Clothing, for instance, may or may not be interpreted as including
footwear. The Opposition Division holds that footwear is not included in
clothing, the essential reason being that footwear appears as a separate item
in the same class 25.
2831/2001, Underground, Underground Shoes / London Underground (fig)
(EN),
3175/2000, UNDERGROUND, Underground Shoes / London Underground
(fig) (EN).
Page 146
2.5. The CTM application includes the goods/services of the earlier
mark
If one or more goods/services specifically designated in the earlier mark are
covered by a generic term used in the CTM application, the final consequence
of the legal assessment will be the same as in the opposite situation: the
goods/services are considered identical as well. This result is based on the
following reasoning:
On the one hand, the goods or services of the earlier mark are identical to the
broad category as such, to the degree that they are included in it.
Example:
The CTM application is for articles of clothing, the earlier mark protects jeans.
R 0260/1999-3 MOTO / MOTOR (fig) (EN)
On the other hand, the fact that the goods/services protected by the earlier
mark are covered by the generic term of the CTM application does not
necessarily render the rest of the goods or services designated by the same
generic term identical to the goods and services of the earlier mark. A broadly
defined category may consist of an indefinite number of goods/services which
might be practically impossible to identify, and often the kind of link that binds
them together will not be strong enough to allow for a finding of identity, or, as
the case may be, similarity of the goods/services of the earlier mark with all
the goods/services that are included in the generic term of the CTM
application.
Nevertheless, it must be borne in mind that the application of Article 8(1)(a)
does not require that all the goods or services potentially in the same category
are identical with the goods/services of the earlier mark. The goods/services
are examined as they appear in the respective specifications and if identity
has already been ascertained between the individual goods/services and the
category as a whole, the identity requirement of the law is met. In view of
Article 74(1), the Office does not have the authority to “split up” on its own
initiative the broad term of the CTM application.
Examiners should inform the applicant that the comparison of goods and
services presents a particular problem due to the broad term used and invite
him to specify his goods or services (Article 43(4)) whenever it is reasonable
to assume from the facts of the case that such invitation could lead to a
friendly settlement. If the applicant, however, does not specify/restrict the list
of goods, or does so in an insufficient way, the Office will treat the
application’s broad term as a single unit and reject it as a whole.
In case R 0895/2000-1 ROPLAN / RUPLAN the Board of Appeal reversed the
OD’s decision, which considered development of computer programs for data
processing to be identical or similar to development of new products in class
Page 147
42. The Board amended ex officio the specification of the application to
exclude the opponent’s services. This decision is not followed by the OD.
Consequently, the practice to be followed in this context is to consider the
respective goods identical “because the specific product (X) is included in the
general category (X+). Since the Office cannot ex officio split the general
category (X+), the applicant must restrict the application by eliminating the
specific category from the specification in order to avoid a finding of identity..”
1123/1999 SETTIMA / CERTINA (EN),
1271/2000 NP / NATIONAL POWER (EN),
1267/2001 MOVICOM / MOBIL COM (EN).
Only if some of the specific goods/services included in the general category,
e.g. an item of a class heading, are also listed independently in the CTM
application, will it be necessary to extend the examination any further. In such
cases, the result of each individual comparison does not depend on the
finding concerning the general category and an identity may be denied if
some of the independently listed goods of the CTM application are not
identical to the goods of the earlier mark.
Example:
The CTM application covers vehicles (general category) as well as buses,
aircraft, trains (included in vehicles), for example as follows: “vehicles, buses,
aircraft, trains”. Where, for instance, the earlier mark is protected for buses,
identity will be found with respect to vehicles and to buses but not for aircraft
or trains.
The question arises how to proceed with the comparison of goods/services
when the list of the CTM application consists of a general category, to which
goods or services are not added independently of the general category but
only as illustrations of the general category. To cover this situation, the
example above can be amended, so that the specification of the CTM
application reads: Vehicles, in particular buses, aircraft, trains. The earlier
mark, as in the example above, is protected for buses.
The OD practice regarding this question is as follows: All specified goods
(buses, aircraft, trains) are in the general category (vehicles). If the application
is rejected for the general category, the remainder of the specified goods
(buses, aircraft, and trains) will be rejected as well. The CTM applicant can
avoid this result by deleting the general category “vehicles”, the indication “in
particular”, and the specific category “buses”.
2.6. One specification includes the goods/services of the other and
the broader specification uses all or part of the indications of
the class heading of one class
Page 148
2.6.1. The Office’s approach to the use of the class heading or part
of its indications
A special issue regarding the application of the preceding sections 2.4. and
2.5. arises where the wording of the specification consists of the class
heading provided for in the Nice Classification or one or several indications of
the class heading. The Office does not object to the use of any of the class
heading or one or several of its general indications as being too vague or
indefinite, contrary to the practice which is applied by some national offices in
the European Union and in third countries in respect of some of the general
indications of the class heading or the class heading as a whole.
The Office interprets the scope of the class heading or part of it in
specifications for Community trade marks as follows:
-
The 34 classes for goods and the 11 classes for services comprise the
totality of all goods and services. As a consequence of this the use of
all the general indications listed in the class heading of a particular
class constitutes a claim to all the goods or services falling within this
particular class.
-
Similarly, the use of a particular general indication found in the class
heading will embrace all of the individual goods or services falling under
that general indication and properly classified in the same class. For
example, the use of the general indication "pharmaceutical and veterinary
preparations" in cl. 5 will embrace all pharmaceutical preparations
regardless of their composition or indication.
-
Furthermore, where it may not be obvious under which of several general
indications particular goods or services fall, there is nevertheless a
classification-based reasoning for the proper classification. For example,
"computer software" is classified in cl. 9 because of the presence of the
general indication "data processing equipment and computers" in that
class, because computer software is seen as directly related to the
corresponding apparatus or equipment. Therefore, when a specification
contains "data processing equipment and computers" as a general
indication, this will be considered as embracing also computer software.
On the other hand, where a specification lists general indications in cl. 9
but not "data processing equipment and computers", computer software
will not be considered as falling within the specification.
2.6.2. Consequences of the use of (part of) a class heading for
identity
The rule that the use of the class heading of a particular class means that all
the goods/services within that class are included has the consequence that
when the later Community trade mark application or registration contains
goods or services properly classified in that same class, the goods or services
are identical with the goods or services in the earlier mark.
Page 149
When the specification does not include all of the general indications of a
particular class heading, but only one or some of them, identity will be found
only when the particular item falls under the general indication. For example,
when the later mark is for "computer software", and the earlier mark is
protected for "data processing equipment and computers", or when the earlier
mark is protected for "pharmaceutical preparations" and the later mark is for a
specific medicine, the goods will be identical.
These principles do not affect the practice set out above in sections 2.4. and
2.5. There is identity between a good or service covered by one specification
that falls under a class heading of the other specification. It does not matter
which specification belongs to the earlier mark and which to the later mark.
2.7. Restrictions: Identity of goods/services required
The question of whether goods/services are identical also arises where the
applicant restricts the specification. By restricting the specification, the
applicant must not extend its scope. This means that the goods/services with
which the applicant wants to replace the original goods or services must be
included in and thus be partly identical with those goods or services. (See
admissibility and procedural guidelines, Part C IX.)
Example:
Diagnostic reagents do not widen the specification of the CTMA because they
are a type of pharmaceutical preparations, which were included in the initial
version of the specification.
R 540/1999-2 GRI / GRY (EN)
Where the specification that is to be restricted comprises all or part of the
indications of a class heading, the situation is analogous to that regarding
identity that was discussed in the previous section. The following principles
apply:
It constitutes a proper restriction (and not an inadmissible extension of the list
of goods and services) when the list of goods and services of a Community
trade mark application or registration that originally contained the complete
class heading of a particular class is composed of one or more specific goods
or services properly classified in the same class and the class headings.
Similarly, it constitutes a proper restriction (and not an inadmissible extension
of the list of goods and services) if a specification is limited by deleting a
general indication and instead selecting one or more specific items falling
under the general indication. In the example cited above in section 2.6., it is
proper to restrict a specification to "computer software" when the original
specification contained "data processing equipment and computers". Yet it
would not be proper to do so when this general indication was not found in the
original specification.
Page 150
3.
Identity of signs
3.1. Strict identity
The concept of identity is interpreted strictly as regards the signs.
This approach has been confirmed by the 3rd Board of Appeal in its Decision
R-1/2000-3 of 19/06/2002 Arthur et Felicie. The Board has argued that the
concept of identity has to be defined in relation to the object of Article 8(1)(a),
bearing in mind the nature and effects of the rights encompassed by the
Community trade mark. The Board states that the protection granted by
Article 8(1)(a) CTMR is of an absolute nature because it is not conditional on
the existence of likelihood of confusion nor does it require consideration of the
dominant elements of the sign.
In the light of this automatic and absolute protection, the Board concludes that
the interpretation of the concept of ‘identity’ has to be strict in order not to
contradict the difference the Regulation has introduced between the ground of
Article 8(1)(a) CTMR and that of 8(1)(b) CTMR.
3.2. Word marks
Word marks are marks consisting of letters, numbers and other signs
reproduced in the standard typeface used by the respective office. This
means that as regards these marks no particular figurative element or
appearance is claimed.
Word marks are also such marks which, although they are registered as
figurative marks nevertheless are reproduced in a standard typeface, which is
however different from the one used by the respective office.
3.2.1. Differences in typeface and size
Therefore, trade marks that only differ in a typeface or size should be
considered identical.
This may be different however if the typeface is a particular one, such as
particular script typefaces, so that the overall appearance of the word mark is
changed to that of a figurative mark.
3.2.2. Differences in the use of small/capital letters
Changing the letter size or changing between small and capital letters is
customary when using word marks. Therefore, whenever the only difference
between the signs lies in these changes the signs will continue to be identical.
However, where the mark is registered with an unusual spelling - such as
capital letters in the middle, unusual initial small letter, etc. - and the used
Page 151
form does not have the same appearance (or vice versa), such use will be
analysed under the variation rule (Article 15(2)(a) CTMR).
314/2000
2451/2000
EN
EN
SEMCO
SAVANNAH
Semco
savannah
Identical
Identical
44/1999
36/1998
1525/1999
73/1998
EN
FR
EN
DE
TELIA
ENIGMA
NOVALLOY
Primadonna
teeli
ENIGMA ITALY
NOVALOY
PRIMADONNA
Not Identical
Not Identical
Not Identical
Not Identical
3.2.3. Use of word marks in colour
Word marks are registered in black and white. It is customary to use marks in
colour. Such use does not constitute a variant but identical sign.
3.2.4. Use of word marks with generic or descriptive additions
Where a word mark differs of another mark only in the presence of a generic
indication of the product or descriptive term that is not integrated into the
mark, this will not affect the consideration of the signs as identical.
Additions which are just indications of characteristics of the goods and
services, such as their kind, quality, quantity, intended purpose, value,
geographical origin or the time of production of the goods or of rendering of
the services, do in general not prevent concluding that two signs are identical.
3.3
Figurative marks
When comparing figurative marks, if the only difference between the sign is
the use of colour or black&white, the conclusion on identity can be maintained
unless this difference brings a change in the overall impression of the mark.
Similarly, adding word elements to a figurative mark will generally not
contradict the conclusion of identity if such word elements are descriptive or
generic indications or another (word) marks.
On the other side, any addition different to those aforementioned will lead the
signs to be considered not identical.
Page 152
31/1998
EN
92/2001
FR
1270/1999
IT
2455/2000
EN
204/2001
ES
BURGO
EPOCA
SAVANNAH
RENOVA
3.4. 3D marks
3D marks are of different types. Some 3D marks are objects used as marks
(such as figurines on the outside of cars). They are often used in varying
sizes. Such variations do not affect a conclusion on identity.
Page 153
II.
IDENTITY AS A GROUND
Where Article 8(1)(a) is the only ground claimed and an identity between the
signs and/or the goods cannot be established, the opposition will nevertheless
be examined on the ground of likelihood of confusion, Article 8(1)(b), because
the grounds in Article 8(1) are considered as so related that an opponent
claiming identity will be taken as claiming also likelihood of confusion.
The former practice of the OD, according to which the examination was
concluded and the opposition was rejected, was held to be erroneous by the
Board of Appeal.
R 165/1998-2 ENIGMA ITALY / ENIGMA (FR)
Other Board decisions have affirmed this approach.
Page 154
Part 2
Chapter 2:
Likelihood of confusion
A. General Remarks
B. Similarity of Goods and Services
Opposition Guidelines
Part 2 Chapter 2, Likelihood of confusion - Status: March 2004
Page 155
Chapter 2: Likelihood of Confusion
INDEX
CHAPTER 2 - LIKELIHOOD OF CONFUSION ...........................................160
A.
GENERAL REMARKS.........................................................................160
I.
THE STATUTORY FRAMEWORK ......................................................160
II.
THE INTERPRETATION OF THE STATUTORY FRAMEWORK BY THE
COURT OF JUSTICE..........................................................................161
1. Case C-251/95 Sabèl BV v Puma AG, Rudolf Dassler Sport [1997] OJ
OHIM 1/98.......................................................................................161
2. Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc
[1998] OJ OHIM 12/98 ....................................................................162
3. Case C-342/97 Lloyd Schuhfabrik Meyer v Klijsen Handel BV [1999],
OJ OHIM 12/99 ...............................................................................162
4. Case C-425/98 Marca Mode CV v Adidas AG and Adidas Benelux BV
[2000], OJ OHIM 9/00 .....................................................................163
III.
THE COURT’S DEVELOPMENT OF A DEFINITION OF LIKELIHOOD
OF CONFUSION .................................................................................165
1. The essential function of a Community trade mark: the guarantee of
the identity of origin .........................................................................165
2. Definition of likelihood of confusion .................................................165
2.1. The public’s attribution of the same origin to the goods or
services...................................................................................165
2.2. The origin: economically-linked undertakings .........................166
3. Global assessment of likelihood of confusion required....................167
3.1. Weight of relevant factors may vary........................................167
3.2. Relevant factors are interdependent .......................................167
4. Assessment of likelihood of confusion: Overview of the criteria ......168
5. Likelihood of confusion: questions of fact and questions of law ......169
6. Relevant public................................................................................171
6.1. Analysis of terms ....................................................................171
6.1.1. Relevant public to be defined .....................................171
6.1.2. “Public” vs. “consumers”; pre-sale and post-sale
confusion....................................................................171
6.1.3. The terms “customer” and “consumer”.......................172
6.1.4. Use of term “end users”..............................................174
Page 156
6.2. Relevant public: Meaning for the likelihood-of-confusion analysis
................................................................................................174
6.3. Likelihood of confusion for a significant part of the relevant public
is sufficient ..............................................................................175
7. Similarity of signs ............................................................................175
8. Similarity of goods/services.............................................................175
9. The relevant point in time ................................................................176
IV.
TYPES OF LIKELIHOOD OF CONFUSION........................................177
1. Confusion between the marks themselves (direct confusion) .........177
2. No confusion between the marks themselves but confusion as to
origin (indirect confusion) ................................................................177
V.
THE STRUCTURE OF OPPOSITION DECISIONS ............................178
1. Goods/services clearly dissimilar ....................................................178
2. Signs clearly dissimilar ....................................................................179
CHAPTER 2: LIKELIHOOD OF CONFUSION ............................................180
B.
SIMILARITY OF GOODS AND SERVICES.........................................180
I.
INTRODUCTION .................................................................................180
II.
THE SPECIFICATION OF GOODS AND SERVICES .........................181
1. In general ........................................................................................181
2. The Nice Classification....................................................................181
2.1. Listing of products in the same class not conclusive of similarity
................................................................................................181
2.2. The Nice Classification as a tool for interpretation of the
specification ............................................................................182
III.
THE RELEVANT TERRITORY............................................................184
IV.
SIMILARITY OF GOODS AND SERVICES: A MATTER OF DEGREE
186
1. Introduction .....................................................................................186
2. Assessment of the degree of similarity of the goods and services ..186
2.1. Express and consistent answers required ..............................187
2.2. How to make the assessment of similarity of goods and services
................................................................................................187
2.2.1. In general ...................................................................187
Page 157
2.2.2.
2.2.3.
2.2.4.
V.
Similarity of signs and distinctiveness of earlier mark:
impact on likelihood of confusion but not on similarity of
goods/services ...........................................................187
“Absolute” outer limit of similarity ...............................188
Borderline cases (remote similarity v dissimilarity).....189
SIMILARITY OF GOODS: FACTORS CONSIDERED ........................190
1. General principles ...........................................................................190
2. The specific similarity factors applied to the comparison between
goods and goods.............................................................................192
2.1. Introduction: The distinction between factors may be difficult .192
2.2. Nature .....................................................................................192
2.2.1. General considerations ..............................................192
2.2.2. The various features of goods defining their nature ...195
2.2.3. Relation to other factors .............................................198
2.3. Purpose ..................................................................................198
2.3.1. Purpose defined .........................................................198
2.3.2. Determining the proper level of abstraction................199
2.3.3. Examples of same/similar and different purposes of
goods/services ...........................................................199
2.3.4. Consequences of different purposes on the decision on
similarity .....................................................................200
2.4. Method of use .........................................................................201
2.5. How to properly distinguish the factors nature – purpose –
method of use .........................................................................203
2.6. Complementary Goods ...........................................................204
2.6.1. Principles....................................................................204
2.6.2. General examples ......................................................206
2.6.3. Accessories................................................................207
2.6.4. Complementary character defined by consumer habits
...................................................................................207
2.6.5. Auxiliary or ancillary goods.........................................208
2.6.6. Sales promotion by manufacturers of goods or providers
of services ..................................................................209
2.7. Goods in competition ..............................................................209
2.8. Distribution channels, in particular placement in the same points
of sale .....................................................................................210
2.8.1. Major categories of distribution channels ...................211
2.8.2. The relevance of the same distribution channels in
general .......................................................................211
2.8.3. The relevance of the same sales outlets in particular 211
2.9. The relevant public, i.e. the actual and potential customers ...213
2.9.1. Principles....................................................................213
2.9.2. Diverging publics weigh against similarity ..................214
2.10. Usual origin.............................................................................215
Page 158
2.10.1. Usual origin, i.e. the undertakings in control...............215
2.10.2. Same or similar production places and/or methods of
manufacture ...............................................................220
3. Similarity of goods: raw materials, ingredients and parts / components
/ fittings............................................................................................221
3.1. Raw materials .........................................................................221
3.2. Ingredients of prepared food...................................................222
3.3. Parts, components and fittings................................................223
4. The comparison of services with services .......................................224
4.1. Nature .....................................................................................224
4.2. Complementary services ........................................................225
4.2.1. Complementary character (similarity) accepted .........225
4.2.2. Complementary character (similarity) denied .............226
4.3. Services in competition ...........................................................226
4.4. The relevant public .................................................................226
4.5. Usual origin.............................................................................226
5. The comparison between goods and services ................................227
5.1. In general................................................................................227
5.2. Services usually provided to customers without the need to
purchase the corresponding goods (or vice versa) .................228
5.3. Services ancillary to goods, i.e. usually provided together with
goods (or vice versa) ..............................................................229
5.3.1. Goods and services dissimilar....................................229
5.3.2. Goods and services may be (remotely) similar ..........230
VI.
SPECIFIC GOODS AND SERVICES COMPARED ............................234
1. IT/telco goods and services.............................................................234
2. Similarity of retail services among themselves and of goods and retail
services ...........................................................................................235
3. Footwear, clothing, headgear, handbags, accessories ...................236
3.1. Footwear and clothing are similar ..........................................236
3.2. Headgear and clothing are similar .........................................236
3.3. Handbags and clothing are similar.........................................237
3.4. Specific accessories to clothing .............................................237
4. Pharmaceuticals..............................................................................237
4.1. Pharmaceuticals and pharmaceuticals ..................................237
4.2. Pharmaceuticals and cosmetics ............................................238
VII. INTERRELATION OF FACTORS........................................................239
1. Predominant Factors .......................................................................239
2. Interdependence of factors..............................................................240
VIII. CONCLUSION ....................................................................................242
Page 159
Identity and likelihood of confusion: General remarks
CHAPTER 2 - LIKELIHOOD OF CONFUSION
A.
I.
GENERAL REMARKS
THE STATUTORY FRAMEWORK
The basic legal requirements for determining likelihood of confusion under the
Community Trade Mark Regulation are laid down in Article 8(1)(b) and the 7th
recital to that Regulation.
Article 8(1)(b) states that:
Upon opposition by the proprietor of an earlier trade mark, the
trade mark applied for shall not be registered …
if because of its identity with or similarity to the earlier trade mark
and the identity or similarity of the goods or services covered by
the trade marks there exists a likelihood of confusion on the part of
the public in the territory in which the earlier trade mark is
protected; the likelihood of confusion includes the likelihood of
association with the earlier trade mark.
Likelihood of confusion constitutes the specific condition for the protection
afforded by a Community trade mark. This is expressed in the seventh recital
to the CTMR, which mentions a number of factors relevant for the
interpretation of likelihood of confusion, and lays down that the concept of
similarity must be interpreted in relation to the likelihood of confusion.
The text of the 7th recital is as follows:
Whereas the protection afforded by a Community trade mark, the
function of which is in particular to guarantee the trade mark as an
indication of origin, is absolute in the case of identity between the
mark and the sign and the goods or services; whereas the
protection applies also in cases of similarity between the mark and
the sign and the goods or services; whereas an interpretation
should be given of the concept of similarity in relation to the
likelihood of confusion; whereas the likelihood of confusion, the
appreciation of which depends on numerous elements and, in
particular, on the recognition of the trade mark on the market, the
association which can be made with the used or registered sign,
the degree of similarity between the trade mark and the sign and
between the goods or services identified, constitutes the specific
condition for such protection … (emphasis added).
Opposition Guidelines – Part 2 Chapter 2A - Status: March 2004
Page 160
II.
THE INTERPRETATION OF THE STATUTORY FRAMEWORK BY
THE COURT OF JUSTICE
The Court of Justice has interpreted the concept of likelihood of confusion on
a number of occasions in the context of the identical provision of Article
4(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to
approximate the laws of the Member States relating to trade marks (“TMD”)
(OJ EC 1989 L40, p.1; OJ OHIM 4/95, p. 511). The Opposition Division and
the Boards of Appeal consider that these principles are equally valid for the
interpretation of Article 8(1)(b) CTMR.
The principles set out in the four pertinent decisions are summarised below,
decision by decision. These principles must be applied when taking decisions
on likelihood of confusion. Where appropriate, OD should expressly refer to
those principles that are pertinent in the specific case.
1.
Case C-251/95 Sabèl BV v Puma AG, Rudolf Dassler Sport
[1997] OJ OHIM 1/98
-
The likelihood of confusion must be appreciated globally, taking
into account all the factors relevant to the circumstances of the
case (paragraph 22).
The appreciation of the likelihood of confusion depends on
numerous elements and, in particular, on the recognition of the
trade mark on the market, on the association that the public might
make between the two marks and the degree of similarity between
the signs and the goods (paragraph 22).
The global appreciation of the visual, aural or conceptual similarity
of the marks in question must be based on the overall impression
given by the marks, bearing in mind their distinctive and dominant
components (paragraph 23).
The average consumer normally perceives a mark as a whole and
does not proceed to analyse its various details (paragraph 23).
The more distinctive the earlier mark, the greater will be the
likelihood of confusion (paragraph 24).
It is not impossible that the conceptual similarity resulting from the
fact that two marks use images with analogous semantic content
may give rise to a likelihood of confusion where the earlier mark
has a particularly distinctive character, either per se or because of
the reputation it enjoys with the public (paragraph 24).
-
-
-
-
-
However, where the earlier mark is not especially well known to the
public and consists of an image with little imaginative content, the
mere fact that the two marks are conceptually similar is not
sufficient to give rise to a likelihood of confusion (paragraph 25).
The concept of likelihood of association is not an alternative to
likelihood of confusion, but serves to define its scope (paragraph
18).
Page 161
-
Mere association that the public might make between the two
marks as a result of their analogous semantic content is not in itself
a sufficient ground for concluding that there is a likelihood of
confusion (paragraph 26).
2.
Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer
Inc [1998] OJ OHIM 12/98
-
The risk that the public might believe that the goods or services in
question come from the same undertaking or, as the case may be,
from economically linked undertakings, constitutes a likelihood of
By contrast, there can be no such likelihood where the public does
not think that the goods come from the same undertaking (or from
economically linked undertakings) (paragraphs 29, 30).
In assessing the similarity of the goods and services, all relevant
factors relating to those goods or services themselves should be
taken into account (paragraph 23).
Those factors include, inter alia, their nature, the purpose for which
they are used (the translation “end users” in the official English
language version is not correct) and their method of use, and
whether they are in competition with each other or are
complementary (paragraph 23).
A global assessment of the likelihood of confusion implies some
interdependence between the relevant factors and in particular a
similarity between the marks and between these goods or services.
A lesser degree of similarity between the goods may be offset by a
greater degree of similarities between the marks and vice versa
(paragraph 17).
Marks with a highly distinctive character, either per se or because
of the reputation they possess on the market, enjoy broader
protection than marks with a less distinctive character (paragraph
18).
Registration of a trade mark may have to be refused, despite a
lesser degree of similarity between the goods or services covered,
where the marks are very similar and the earlier mark, in particular
its reputation, is highly distinctive (paragraph 19).
The distinctive character of the earlier mark and in particular its
reputation must be taken into account when determining whether
the similarity between the goods and services is enough to give
rise to the likelihood of confusion (paragraph 24).
There may be such likelihood, even if the public thinks that these
goods have different places of production (paragraph 30).
-
-
-
-
-
3.
Case C-342/97 Lloyd Schuhfabrik Meyer v Klijsen Handel BV
[1999], OJ OHIM 12/99
-
The level of attention of the average consumer, who is deemed to
be reasonably well informed and reasonably observant and
Page 162
-
-
-
-
-
4.
circumspect, varies according to the category of the goods and
services in question (paragraph 26).
However, account should be taken of the fact that the average
consumer only rarely has the chance to make a direct comparison
between the different marks but must place his trust in the
imperfect picture of them that he has kept in his mind (paragraph
26).
When assessing the degree of visual, phonetic and conceptual
similarity it can be appropriate to evaluate the importance attached
to each by reference to the category of goods and the way they are
marketed (paragraph 27).
It is possible that mere aural similarity could lead to likelihood of
In determining the distinctive character of a mark and accordingly,
in assessing whether it is highly distinctive, it is necessary to make
an overall assessment of the greater or lesser capacity of the mark
to identify the goods and services for which it has been registered
as coming from a particular undertaking (paragraph 22).
In making that assessment, account should be taken, in particular,
of the inherent characteristics of the mark, including the fact that it
does or does not contain an element descriptive of the goods or
services for it has been registered; the market share held by the
mark; how intensive, geographically widespread and long-standing
use of the mark has been; the amount invested by the undertaking
in promoting the mark; the proportion of the relevant section of the
public which, because of the mark, identifies the goods and
services as originating from a particular undertaking; and
statements from chambers of commerce and industry or other
trade and professional associations (paragraph 23).
It is not possible to state in general terms, for example by referring
to given percentages relating to the degree of recognition attained
by the mark within the relevant section of the public, when a mark
has a strong distinctive character (paragraph 24).
Case C-425/98 Marca Mode CV v Adidas AG and Adidas
Benelux BV [2000], OJ OHIM 9/00
Summary:
Even where an identity of goods, a high reputation and a possibility of
association are given, confusion cannot be presumed. There must always be
a positive finding of likelihood of confusion. A likelihood of association in the
strict sense in no way implies a presumption of likelihood of confusion.
-
The reputation of a mark does not give grounds for presuming the
existence of a likelihood of confusion in the strict sense (paragraph
41)
-
Article 5(1)(b) of the Directive cannot be interpreted as meaning
that where
Page 163
•
•
a trade mark has a particularly distinctive character, either per se
or because of the reputation it enjoys with the public, and
a third party, without the consent of the proprietor of the mark,
uses, in the course of trade in goods or services which are
identical with, or similar to, those for which the trade mark is
registered, a sign which so closely corresponds to the mark as to
give the possibility of its being associated with that mark,
the exclusive right enjoyed by the proprietor entitles him to prevent the
use of the sign by that third party if the distinctive character of the mark
is such that the possibility of such association giving rise to confusion
cannot be ruled out (emphasis added) (paragraph 42).
Page 164
III.
THE COURT’S DEVELOPMENT OF A DEFINITION OF LIKELIHOOD
OF CONFUSION
1.
The essential function of a Community trade mark: the
guarantee of the identity of origin
According to the seventh recital to the CTMR (see above, under 1.), the
function of a Community trade mark is “in particular” to guarantee the trade
mark as an indication of origin. The Court considers this function as the
essential function of a trade mark.
…according to the settled case-law of the Court, the essential
function of the trade mark is to guarantee the identity of the origin
of the marked product to the consumer or end user by enabling
him, without any possibility of confusion, to distinguish the product
or service from others which have another origin. For the trade
mark to be able to fulfil its essential role in the system of
undistorted competition which the Treaty seeks to establish, it must
offer a guarantee that all the goods or services bearing it have
originated under the control of a single undertaking which is
responsible for their quality (see, in particular, Case C-10/89 HAG
GF (HAG II) [1990] ECR I-3711, paragraphs 14 and 13) (Canon,
paragraph 28; see also Case C-299/99, Koninklijke Philips
Electronics NV v Remington Consumer Products Ltd [2002], ECR
2002, paragraph 30).
For the Court, the essential function of the trade mark is also clear from the
wording and the structure of the various provisions of the TMD concerning the
grounds for refusal of registration that are essentially replicated in the CTM
Regulation. One of these provisions, Article 4 CTMR, mandates that a trade
mark must be capable of distinguishing the goods or services of one
undertaking from those of other undertakings. See Philips v Remington, par.
31 et seq.
The portion of these Guidelines dealing with likelihood of confusion focuses
on the origin function. Other trade mark functions include goodwill/promotion
(advertising) and quality/guarantee.
2.
Definition of likelihood of confusion
2.1. The public’s attribution of the same origin to the goods or
services
For the Court it follows from the “essential” function of a Community trade
mark to serve as an indicator of origin that likelihood of confusion must be
defined by reference to the risk that the public may attribute the same origin to
the goods or services:
Page 165
... the risk that the public might believe that the goods and services in
from economically linked undertakings, constitutes a likelihood of
confusion … there can be no such likelihood where it does not
appear that the public could believe that the goods and services
come from the same undertaking or, as the case may be, from
economically-linked undertakings (Canon paragraphs 29, 30).
In these Guidelines, and in line with the case-law of the Court of Justice, the
terms “likelihood of confusion”, “risk of confusion”, “danger of confusion” will
be used as synonyms even though, from a purely semantic standpoint, they
are not exactly the same. All these terms should be understood in the sense
of a probability of confusion. It is not sufficient that confusion is merely
possible, i.e. cannot be excluded. (Cf. Marca Mode, above, under II.4.)
2.2. The origin: economically-linked undertakings
Even if the public is of the opinion that the goods or services do not come
from the same entity strictly speaking, but only from economically linked
undertakings, there will still be a risk of confusion. What matters is the
likelihood that the public believes that the control of the goods or services in
question is in the hands of a single undertaking. The Court has not yet
interpreted the term economically linked undertakings in the context of
likelihood of confusion.
The Court explained the term “economically linked undertakings” in a different
context, namely with respect to the free movement of goods and services in
the single market.
In Ideal Standard, i.e. Case C-9/93, IHT Internationale Heiztechnik GmbH and
Uwe Danzinger v Ideal Standard GmbH and Wabco Standard [1994], OJ
OHIM 4/97, p. 314, the Court held:
… A number of situations are covered: products put into circulation by
the same undertaking, by a licensee, by a parent company, by a
subsidiary of the same group, or by an exclusive distributor
(paragraph 34).
… In all the cases mentioned, control [is] in the hands of a single
body: the group of companies in the case of products put into
circulation by a subsidiary; the manufacturer in the case of products
marketed by the distributor; the licensor in the case of products
marketed by a licensee. In the case of a licence, the licensor can
control the quality of the licensee’s products by including in the
contract clauses requiring the licensee to comply with his instructions
and giving him the possibility of verifying such compliance. The origin
which the trade mark is intended to guarantee is the same: it is not
defined by reference to the manufacturer but by reference to the point
of control of manufacture (paragraph 37).
Page 166
In line with these statements, economic links will be assumed where the
public assumes that the respective goods or service are marketed under the
control of the trade mark proprietor. That control can be assumed to exist in
the case of enterprises belonging to the same group of companies
(“concern”), in the case of licensing, merchandising or distribution
arrangements as well as in any other situation where the public assumes that
the use of the mark is normally possible only with the agreement of the trade
mark proprietor.
3.
Global assessment of likelihood of confusion required
3.1. Weight of relevant factors may vary
According to the decision in Sabèl likelihood of confusion must be appreciated
globally, taking into account all the factors relevant to the circumstances of the
particular case.
Each case has to be decided on its own merits and a global assessment of all
relevant factors has to be made, including all the factors pertinent to the
particular case.
The assessment of the likelihood-of-confusion factors, such as the similarity of
goods/services and signs, or the impact of the distinctiveness of the earlier
mark will be discussed under the respective headings below. However, it must
be stressed that the various factors relevant for any given case do not have a
fixed, standard value. Rather, the value of these factors may vary depending
on the case. What matters is the degree of the similarity of the goods/services
and the signs, the degree of distinctiveness of the earlier mark and the impact
of any other relevant factor. The final result depends on a balance of the
degree (value) of each relevant factor.
The present Guidelines list a number of principles that have been derived
from practice, in particular from the cases decided by the Opposition Division
and the Boards of Appeal. While these principles must be applied in general,
it may happen that exceptions to these principles may apply depending on the
specific case. If such exceptions should be invoked and applied, the case
must be brought to the attention of Group leaders before any decision is
taken.
3.2. Relevant factors are interdependent
The Court held that a “global assessment of the likelihood of confusion implies
some interdependence between the relevant factors ... Accordingly, a lesser
degree of similarity between these goods or services may be offset by a
greater degree of similarity between the marks, and vice versa” (Canon, par.
17). The more distinctive the earlier mark, the more likely it is that the public
might be confused (Sabèl, par. 24).
The practical consequences are:
Page 167
The mere fact that similarity of both goods/services and signs is found does
not automatically lead to a likelihood of confusion. It is therefore of little avail
to state in a decision that the goods/services are similar and that the signs are
similar. What the examiner must spell out, rather, is the degree of the
respective similarity.
•
Likelihood of confusion may be found where there is a low degree of
similarity of the goods/services (signs) in question but where the degree of
similarity of the signs (goods/services) is high and/or where the earlier
mark enjoys a high degree of distinctiveness.
•
Conversely, likelihood of confusion might not be found where there is a
low degree of similarity of the goods/services (signs) even if the signs
(goods/services) are identical and/or where the earlier mark is of an
average or low degree of distinctiveness.
Example:
R 18/2001-3 Nicole / Nicole (EN): The degree of similarity between
dentifrices and certain perfume deodorants is low. Therefore, despite the
identity of signs, no likelihood of confusion was found in this regard.
Further examples:
R 924/2000-3 (EN) ECOLEX / COLEX (fig.),
R 1022/2000-2 (DE) CHIO PITTA / CHIPITA (fig.),
R 201/2001-3 CARRIBEAN TWIST / CARRIBEAN CLUB.
•
Likelihood of confusion may or may not be found where the earlier mark
enjoys a high degree of distinctiveness depending on both the degree of
similarity of the goods/services and the signs.
4.
Assessment of likelihood of confusion: Overview of the
criteria
Likelihood of confusion depends in particular on the criteria set out below.
They will be explained in greater detail below in the sections concerning
similarity of goods/services and similarity of signs as well as in the part “global
assessment – interdependence” at the end of the chapter on likelihood of
confusion.
•
Degree of similarity of the goods and services in question; where the
applicant has requested the opponent to furnish proof of use, those goods
and services have to be compared for which the opponent has established
use;
•
Degree of similarity of the signs;
•
Degree of distinctiveness (inherent or acquired), strength or reputation of
the earlier mark;
Page 168
•
The degree of sophistication and attention of the relevant public, i.e. of the
actual or potential customers of the category of goods or services in
question;
•
Coexistence of the conflicting marks on the market in the same territory;
•
Incidences of actual confusion;
•
Prior decisions by Community or national authorities involving conflicts
between the same (or similar) marks.
The question as to whether or not there is a likelihood of confusion has to be
determined in the light of the preceding factors and of any other factors that
may be relevant in the specific case.
Only where both the goods and services and the signs in question are
identical will the assessment go no further. In this case, the “absolute”
protection under Article 8(1)(a) applies, and the CTM application must be
rejected for all identical goods and services. See above, under Chapter 1.
Given the large number of factors that may be of importance for determining
likelihood of confusion, the examiner must never refer to the marks as
“confusingly similar”. Marks may be similar, but likelihood of confusion is
something which remains to be determined under the global appreciation. The
use of the term confusingly in relation to the marks gives the incorrect
impression that the finding of similarity of the signs alone establishes a
5.
Likelihood of confusion: questions of fact and questions of
law
Likelihood of confusion is a legal concept. Its assessment, however, depends
both on legal and factual criteria.
The question as to which are the relevant factors for determining likelihood of
confusion and whether they are met is a question of law. Factors that are
relevant in the view of the OD are set out above, under 3.4. They include, for
instance, the similarity of goods and services. Furthermore, the question as to
which are the relevant criteria (or sub-factors) for determining each of the
likelihood-of-confusion factors and whether these criteria are met is also a
question of law. The OD has identified the following relevant factors for the
similarity of goods and services:
Page 169
-
nature,
purpose,
method of use,
complementary character,
competitive character,
channels of distribution,
relevant public,
usual origin of the goods/services.
Finally, the question as to which are the criteria defining the likelihood-ofconfusion factors, such as nature, is also a question of law. These criteria are,
in particular, composition, functioning principle, physical condition,
appearance, and value.
On the other hand, it is a question of fact whether or not, and, in the
affirmative, to what degree the legal criteria for determining “nature” are
fulfilled.
In opposition proceedings the parties must allege and, where necessary,
prove the facts relating to the similarity of goods and services. This follows
from Art. 74(1) according to which, in proceedings relating to relative grounds
for refusal of registration, the Office shall be restricted in this examination to
the facts, evidence and arguments provided by the parties and the relief
sought.
See the following example (replicated below, at B.II. 5.2.2.(b)(i)):
Cooking fat does not have the same nature as petroleum lubricating oils and
greases even though both contain a fat base. Cooking fat is used in
connection with the preparation of dishes for human consumption, whereas
the oils and greases are applied in conjunction with machines.
Considering “nature” to be a relevant factor in the similarity analysis is a
matter of law. On the other hand, stating that cooking fat is used for dishes
and that oils and greases are used for machines is a matter of fact.
Example:
It follows from Article 74(1) that it is a matter for the opponent to state
the facts on which the claim is based. As the applicant has contested
those facts, it is also a matter for the opponent to furnish evidence that
the facts stated are correct. He has failed to furnish such evidence in
support of the alleged use of wear-resistant cast iron as a core material
for certain additions to medical implants.
It is not a matter for the Office, in inter partes proceedings, to elucidate
the question of whether wear-resistant cast iron is actually used for
medical implants or additions thereto. Such a use seemed to the Board
improbable. On the basis of the facts put to the Board, it can at any
rate not be assumed that wear-resistant cast iron is used for implants
Page 170
or additions thereto, and the Board cannot therefore find that any
similarity exists between the two sets of goods.
R 0684/2000-4 TINOX/TINOX (DE)
An admission by the applicant of legal concepts, such as likelihood of
confusion or similarity of goods and services is irrelevant. It does not relieve
the OD from analysing and deciding on these concepts. This is not contrary to
Article 74(1) which provides that in inter partes proceedings the Office is
restricted in its examination to the facts, evidence and arguments provided by
the parties and the relief sought. This provision is binding on the Office only
as regards the facts, evidence and arguments that form the basis of its
decision and does not extend to the legal evaluation of the same. Therefore,
the parties may agree as to which facts have been proved or not, but may not
determine whether or not these facts are sufficient to establish the respective
legal concepts, such as similarity of goods and services, similarity of the
signs, and likelihood of confusion.
Further guidance on the question as to which facts must be alleged and
proved if contested, as well as on the burden of proof, is given below in the
part relating to the similarity of goods and services (part B IV 2.2.1.) and, in a
more general manner, in the guidelines on admissibility and procedure (part C
II).
Since similarity is a legal concept, in order to avoid confusion between facts
and the law, the terms “similarities” and “dissimilarities” should not be used in
the context of the determination of the facts. The use of sentences such as
“the goods in dispute show similarities and dissimilarities” is therefore
discouraged. Instead, it is recommended to use language such as “there are
certain connections (or links or overlaps) between the goods in dispute”.
6.
Relevant public
6.1. Analysis of terms
6.1.1. Relevant public to be defined
According to Article 8(1)(b) it must be determined whether likelihood
confusion exists “on the part of the public”. According to the Court of Justice,
this wording shows that the perception of the marks in the mind of the
average consumer of the type of goods or services in question plays a
decisive role in the global appreciation of the likelihood of confusion (see
Sabèl, par. 23, Lloyd, par. 25).
The relevant public must therefore be defined in every opposition decision.
6.1.2. “Public” vs. “consumers”; pre-sale and post-sale confusion
Likelihood of confusion on the part of the public includes all the instances
where the public may come into contact with the earlier and the later mark or
Page 171
with both. This also follows from the fact that infringement actions are
available against use of a sign in advertising.
Thus, consideration must be given
•
to pre-sale confusion, e.g. confusion arising in the course of advertising of
goods or services;
•
to confusion at the time or in the context of purchasing the goods or
services, such as when making purchases in a supermarket, by telephone,
by mail-order, or through the Internet;
•
to post-sale confusion, i.e. to confusion arising after the goods or services
have been purchased; this is relevant for example when packaged goods
are purchased and the confusion arises only when the goods are
unpacked; or where the goods or services are purchased by
“discriminating” purchasers but are actually used by a broader category of
users (members of the family, …).
6.1.3. The terms “customer” and “consumer”
In the cases concerning likelihood of confusion, the Court has so far mainly
equated the relevant public with the average “consumer” 1. The term
“consumer” should be taken to include the “ultimate” consumer, who may be
“consuming” the goods or services in his private activity, or who may be a
professional “ultimate” consumer.
However, there are also goods/services that are bought by persons in the
production or distribution (i.e. wholesalers or retailers) chain, which are
usually not referred to as “consumers”. The broader term average “customers”
appears to be better suited to include those in the production and distribution
chain.
The average customer may be
-
the average private “ultimate” consumer customer, or
-
the average business customer, both
•
•
-
on an intermediate level in the production (e.g. processing of raw
materials) or distribution (e.g. wholesale) chain and
as a final customer, or
both of them (e.g. normal paint is sold both to painters and to private
persons for do-it-yourself purposes).
1
In the context of Article 8(5), the Court of Justice distinguishes only in very general terms between the
“public at large” and “a more specialised public”, depending on the product or service (Chevy, paragraph
24).
Page 172
As for the importance of the degree of sophistication and attention of the
average customer in the likelihood-of-confusion analysis, see below, under
section IV.5.
The distinction between consumers and business customers is generally in line with the
Joint Recommendation on well-known marks, which distinguishes between consumers
and business “circles”.
Article 2(2) of the Joint Recommendation reads as follows:
[Relevant Sector of the Public]
(a) Relevant sectors of the public shall include, but shall not necessarily be
limited to:
(i) actual and/or potential consumers2 of the type of goods and/or services to
which the mark applies;
(ii) persons involved in channels of distribution of the type of goods and/or
services to which the mark applies [refers to consumers as well; see note
2.13];
(iii) business circles [importers, wholesalers, licensees, franchisees; see note
2.14] dealing with the type of goods and/or services to which the mark
applies.
Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks
adopted by the Assembly of the Paris Union for the Protection of Industrial Property and
the General Assembly of the World Intellectual Property Organization (WIPO) at the
Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO
September 20 to 29, 1999
The consumer customers, who will often simply be referred to hereinafter as
“consumers”, may be
-
the public at large, as in the case of mass consumption goods, e.g.
foodstuffs for human consumption, or
only a section of the public at large, who are interested in purchasing
certain specific goods or services, e.g. in the case of tobacco.
23/1998 SODEXHO (cl.35, 37, 42) / SODECO (cl.35, 37, 42) (FR),
532/1999 PROTECTOR (cl.3) / LIPROTECTOR (cl.3) (EN),
20/1998 HUMICA (cl.1) / HUMIC (cl.1) (EN).
The average customers of the category of goods or services in question
constitute the relevant public. As stated, in assessing likelihood of confusion it
is the perception of the marks in the mind of the relevant public that matters.
The term customers always refers to the actual and the potential customers,
that is, the customers that currently are or in the future may be purchasing the
2
Note 2.12 on item (i) states: “The expression ‘consumers’ is to be understood in the wide sense of the
term, and should not be restricted to those persons who actually and physically consume the product.
In that respect, reference can be made to the term ‘consumer protection’ which covers all parts of the
consuming public. Because the nature of the goods or services to which a mark is applied can vary
considerably, actual and/or potential consumers can be different in each case. Groups of actual and/or
potential consumers may be identified with the help of parameters such as the target group for the
goods and services in relation to which the mark is used or the group of actual purchasers.”
Page 173
goods/services. The potential customers include those customers who, in the
usual course of events, are likely to buy the goods/services (e.g. a family
member buys a good or service he/she does not need for another family
member).
6.1.4. Use of term “end users”
The term “end users” should be used with caution, if at all, since it is
imprecise. It will always cover consumers. In addition, it may also be
considered as comprising business customers in the production chain that will
further process a product. However, it will not apply to business customers in
the distribution chain, i.e. wholesalers and retailers. It is true that the term
“end users” is mentioned in the English version of the Canon judgment:
In assessing the similarity of the goods or services concerned … all the
relevant factors relating to those goods or services themselves should be
taken into account. Those factors include, inter alia, their nature, their
end users and their method of use and whether they are in competition
with each other or are complementary (Canon, par. 23).
However, the term end users is an incorrect translation of
“Verwendungszweck” (other translations include destination (FR), destino
(ES), destinazione (IT); the language of the case was German and only this
original language is official).
The correct Canon statement would read as follows:
Those factors include, inter alia, their nature, their purpose of use
(instead of “end users”) and their method of use, and whether they
are in competition with each other or are complementary (par. 23).
Even though much time elapsed since the Canon judgment was rendered (the
date of the decision was 29 September 1998) and even though the flawed
translation has been widely used (users include the Boards of Appeal and the
Court of First Instance), the OD will in the future use the correct term in the
similarity of goods analysis.
6.2. Relevant public: Meaning for the likelihood-of-confusion
analysis
It is the practice of the Opposition Division to take the perception of the marks
in the mind of the average customer of the type of goods or services in
question into account in the final likelihood-of-confusion analysis only. The
same goes for the perception of the goods/services. The question is
discussed in greater detail in the “global assessment” part of the guidelines
(below, part IV).
However, the relevant public plays a role in the similarity-of-goods/services
analysis as well. This criterion is of relevance, in particular, where there is no,
or hardly any, overlap in the relevant public. Such a finding weighs heavily
against similarity of goods and services. See below, under B II 5.2.8.
Page 174
6.3. Likelihood of confusion for a significant part of the relevant
public is sufficient
If a significant part of the relevant public may be confused as to the origin of
the goods, this is sufficient to establish a likelihood of confusion. It is not
necessary to establish that all actual or potential customers are likely to be
confused.
There may be several distinct groups of customers for one and the same good
or service that all have a substantial size, i.e. several relevant publics. In such
a case, each of these distinct publics may have characteristics of their own.
Likelihood of confusion may then differ, depending on the respective group. If
the examiner finds likelihood of confusion with respect to one group of a
substantial size only, this will be a sufficient basis for accepting likelihood of
confusion.
7.
Similarity of signs
In the similarity-of-signs analysis the resemblances of the signs are analysed
on an objective basis. For instance, as regards the conceptual comparison,
ELISA is an abbreviation for enzyme linked immunoassay solvent assay (a
sensitive diagnostic test for a past or current exposure to an infectious agent
such as the AIDS virus).
The impact of the sophistication and attention of the relevant public on the
perception of the signs is dealt with in the final likelihood-of-confusion
analysis. In the example given, it will be taken into account in that final
analysis that the highly qualified customers of the goods in question will
recognise the meaning of ELISA.
See 1183-2002 RELISA / VARELISA (EN) and below, under D I 5.2.3.
8.
Similarity of goods/services
The similarity of the goods and services in question is assessed from a
commercial perspective. The examiner must consider the marketplace
realities that characterise the relationship of the goods and services under
comparison.
These marketplace realities will again often also play an important role in the
global assessment of likelihood of confusion. For instance, the features of the
goods may have an impact on the degree of attention of the customer: in the
cases of expensive purchases (such as cars), the degree of attention is
usually higher than where the buying behaviour is casual (e.g. sweets). See
part B IV 5.3. Furthermore, the way in which a specific category of goods or
services is marketed may increase the importance of one of the different
aspects of similarity of signs (visual, phonetic or conceptual). See part B IV 4.
Page 175
9.
The relevant point in time
The relevant moment for assessing likelihood of confusion is the time when
the decision is taken.
Where the opponent relies on enhanced scope of protection (strength) of the
earlier mark, the conditions for such an enhanced scope must have been met
by the filing date of the CTM application (or any priority date) and they still
have to be fulfilled at the time of the decision. In the practice of the Opposition
Division, it is assumed that this is the case, unless there are indications to the
contrary.
Where the CTM applicant relies on a reduced scope of protection (weakness),
only the date of the decision is of relevance. In practice, such an occurrence
will be rather exceptional since it presupposes a dramatic change of market
conditions over a relatively short period of time. An example may be the
telecommunications industry where, from Spring 2000, the market presence
of many marks previously broadly used in the “new economy” has changed
significantly. Cf. the part of the Guidelines on Article 8(5), under section III.
1.2.5.
Page 176
IV.
TYPES OF LIKELIHOOD OF CONFUSION
1.
Confusion between the marks themselves (direct confusion)
Confusion will generally be inevitable where the differences between the
marks and the goods are so small that there is a risk that the public will either
not notice them or forget or disregard them and thus confuse the marks
directly by mistaking one for the other.
2.
No confusion between the marks themselves but confusion as
to origin (indirect confusion)
The Court stressed in Sabèl that the concept of likelihood of association is not
an alternative to that of likelihood of confusion, but serves to define its scope.
In Adidas the Court added that the likelihood of confusion can never be
assumed from a mere likelihood of association, even in cases involving earlier
reputed marks.
Hence, if perception of the one mark merely brings to mind the memory of the
other, but the public remains aware of their differences and is not of the
opinion that the goods/services in connection with which the mark is used
may have the same origin (understood in the broad sense as including
economically linked undertakings), there can be no likelihood of confusion.
As stated above, the mere association that the public might make between
two marks in view of certain common features is not enough for the purposes
of Article 8(1)(b). However, in many cases the overlaps between the marks
may be sufficient to suggest a common origin even where one mark is not
mistaken for the other.
Example: 113/1998 SUNRISE / SUNSET (EN)
Accordingly, there may also be a likelihood of confusion where the relevant
public is able to distinguish between the marks themselves, but still may
believe that the goods originate from the same undertaking or economicallylinked undertakings.
One such instance is the case of a family of trade marks. House marks or
product-line identifiers are often combined with other secondary elements in a
family of marks showing common origin. Such a systematic use of a basic
component by the owner himself in various combinations of signs and in
different contexts might lead the public to disregard any secondary differences
in the case of third marks built around the same “core” element, as it will
believe that they merely indicate a new product in a product-line from the
same business entity (see point D. I. 10.2. below).
Page 177
V.
THE STRUCTURE OF OPPOSITION DECISIONS
1.
Goods/services clearly dissimilar
The examination usually opens with the comparison of goods and services. If
the goods and services are not clearly dissimilar and, thus, any likelihood of
confusion cannot be clearly excluded at this stage, the signs are also
compared. Otherwise the examination is concluded.
353/1999 POLAR / POLAR (EN),
904/1999 BOULEVARD / BOULEVARD PEDRALBES (EN).
The examination may be closed due to a dissimilarity of the compared
goods/services only if the same conclusion would have been reached in the
theoretical case where the other relevant factors of likelihood of confusion
were fulfilled to a maximum extent, in particular where the signs were identical
and the earlier mark was highly distinctive. This has to be expressly
mentioned in the decision. The following standard paragraph is proposed for
this purpose:
In the light of the above considerations, this finding of dissimilarity of the
relevant goods/services would not be different even if the other relevant
factors of likelihood of confusion were fulfilled to a maximum extent, in
particular if the signs were identical and the earlier mark was highly
distinctive. According to Article 8(1)(b) CTMR, the similarity of the
goods/services is a condition for a finding of likelihood of confusion. Since
the goods/services are clearly dissimilar, there can be no likelihood of
confusion. Consequently, it is not necessary to proceed further with the
examination, in particular with a comparison of the signs.
Example:
Beer was held to be sufficiently dissimilar to electronics, as were art
exhibitions to clothing, for the examination to be concluded without any
comparison of signs.
353/1999 POLAR (cl.32) / POLAR (cl.9) (EN)
Other examples:
904/1999 BOULEVARD (cl.25) / Bvd. PEDRALBES (cl.41) (EN),
1531/2001 Lloyd’s (cl. 18, 25) / Euro Lloyds (cl. 36),
2618/2001 Diane (cl. 5) / Diana (cl. 3, 5).
Conversely, if the connections between the goods and services found suggest
that the public may think that they come from the same or economically-linked
undertakings, the examination continues and a conclusion must be drawn as
to the degree of similarity between the goods.
1999-2001 Blû (cl 33) / BLU (cl 32) (EN).
Page 178
For determining the degree of similarity of goods/services, the pertinent
factors in each case are examined (see the following part II).
Example regarding degree:
For the Board of Appeal, instead of being “similar”, games and playthings are
“similar to a high degree”. R 0626/2000-3 (EN) IMC (fig) / IMC (fig).
In a second step, the degree of similarity of the signs is assessed. This is
done by applying the criteria set out below in part III.
In a third phase, a global assessment of all relevant factors is made, the
degree of similarity found between the marks and the goods and services, the
degree of distinctiveness of the earlier mark, the degree of sophistication and
attention of the average customer of the goods/services in question, and any
other relevant factor. The assessment of all relevant factors aims to establish
if there is a likelihood of confusion.
2.
Signs clearly dissimilar
The above scheme is reversed for practical reasons where the differences
between the signs are so clear that confusion would clearly not occur, even if
the other relevant factors of likelihood of confusion were fulfilled to a
maximum extent, in particular if the goods and services were identical and the
earlier mark was highly distinctive. In such cases, the examination starts with
the comparison of signs and is immediately concluded after demonstrating
that they are clearly dissimilar.
374/1999 DANN BEER / DÜKS (EN),
459/1999 SOFT-IN AD. KRAUTH / SOFTPEN (DE),
1628/1999 ORAL / DR.BEST (DE).
The following standard paragraph is proposed for this case:
In the light of the above considerations, this finding of dissimilarity of the
relevant signs would not be different even if the other relevant factors of
likelihood of confusion were fulfilled to a maximum extent, in particular if the
goods/services were identical and the earlier mark was highly distinctive.
According to Article 8(1)(b) CTMR, the similarity of the signs is a condition
for a finding of likelihood of confusion. Since the signs are clearly dissimilar,
there can be no likelihood of confusion. Consequently, it is not necessary to
proceed further with the examination, in particular with a comparison of the
goods/services.
In analogy to the preceding section V.1., if a likelihood of confusion cannot be
excluded due to a dissimilarity of the signs, the degree of similarity of signs is
assessed. In a second step, the degree of similarity of the goods/services is
determined. This is followed by the third phase, i.e. the global assessment.
Page 179
Identity and likelihood of confusion: Similarity of goods and services
CHAPTER 2: LIKELIHOOD OF CONFUSION
B.
SIMILARITY OF GOODS AND SERVICES
I.
INTRODUCTION
In the absence of identity of the conflicting goods and services, their similarity
is a necessary condition for a finding of likelihood of confusion under Article
8(1)(b) CTMR. The similarity of the goods and services covered by the
conflicting signs has been addressed in the case-law of the Court.
In Canon the Court stated that the similarity of goods and services is a
necessary condition for the application of Article 8(1)(b):
… even where a mark is identical to another with a highly distinctive
character, it is still necessary to adduce evidence of similarity
between the goods or services covered … the likelihood of confusion
presupposes that the goods or services covered are identical or
similar (Canon, paragraph 22).
As already said above, in section A I 2.1., goods and services are products,
and therefore the term “products” should also be used to refer to both goods
and services.. This is in line with the trade custom that not only refers to
goods as products but also to services. A finance product, for instance, falls
under the category services. In many decisions taken by the OD in the past
the term “products” is used in a narrower sense, namely as a synonym for
“goods” only.
Opposition Guidelines – Part 2 Chapter 2B - Status: March 2004
Page 180
II.
THE SPECIFICATION OF GOODS AND SERVICES
1.
In general
The chapters above in the identity section that lay the general groundwork for
the assessment of goods and services (see above, part A I 2) are also
relevant in the context of similarity of goods and services.
Concerning the use of broad categories in specifications, in particular, it
should be remembered that where a number of goods or services specifically
designated by the earlier mark are covered by a generic term used in the
CTM application, the recommended practice is to consider the respective
goods identical “because the specific good (X) is included in the general
category (X+). Since the Office cannot ex officio split the general category
(X+), the applicant restrict the application by eliminating the specific category
from the specification in order to avoid a finding of identity.” (See section
A.I.2.5. above.)
Furthermore, this applies even if there is similarity between one very specific
good/service of the earlier mark and a general category of the CTM
application. The application will have to be rejected for that general category if
the applicant does not properly restrict his specification. There is no core
theory in the sense that both specifications would have to cover about the
same amount of goods/services in economic terms.
Example:
Advisory services relating to the installation, maintenance and repair of
machines are similar to one very specific machine, namely, a laser cutter:
1390/2001 (focus (fig.) / FOCUS (cl. 7, 37) (FR)
2.
The Nice Classification
2.1. Listing of products in the same class not conclusive of
similarity
The fact that the respective products are listed in the same class of the Nice
Classification is not, by itself, an indication of similarity. According to Rule 2(4)
IR, the Nice Classification serves purely administrative purposes and as such
does not provide in itself a basis for drawing conclusions as to the similarity of
goods and services.
Thus, the argument in one case that scientific instruments are similar to
switches, sensors and controllers because they are all in class 9 was not
considered valid.
371/1999 TAMRON (cl.9) / AMRON (cl.9) (EN).
Page 181
2.2. The Nice Classification as a tool for interpretation of the
specification
Notwithstanding Rule 2(4) IR, it is important to note that, to some extent, the
classification of goods and services follows the same principles as the
analysis of similarity of goods/services. In such cases, goods or services in
the same class may indeed be similar.
The International Classification consists of the 45 classes of goods and
services indicated by general indications (“class headings”), complemented by
general remarks and explanatory notes, as well as the Alphabetical List of
goods and services contained some …. entries with the indication of the class
to which they belong. The International Classification is binding upon the
Office (Rule 2 CTMIR). Consultation of the remarks and notes will often help
in finding the proper result.
Thus, in cases where the wording of the specification is either broad or not
sufficiently clear, reference to the Nice Classification may be useful for
clarifying the kind of goods at issue, or for revealing additional features that
may be pertinent for the comparison.
For example, products for preserving food in class 1 may only be of a
chemical nature. Aperitifs in class 33 will necessarily be alcoholic and, hence,
not identical with the goods aperitifs, non-alcoholic.
546/1999 SYS(cl.1) / SYSTOL (cl.1) (EN),
1003/1999 MOROS (cl.7, 12) / MORO (cl.7, 8, 12, 37) (ES).
Alcoholic and non-alcoholic beverages containing malt in class 32 include
beer-type drinks in class 32 but not whisky-type drinks because whisky is
included in class 33.
865/2002 Bit / American Bud (fig) (DE)
The applicant’s floor coverings; vehicle carpets and mats; door mats are not
similar to the opponent’s automobiles and parts thereof. According to the
Nice Classification, the expression automobiles and parts thereof means
automobiles and the structural and essential parts of them. This is not the
case of floor coverings; vehicle carpets and mats; door mats. These goods
are not essential parts or components of cars.
R 969/2000-1 S-TYPE / S-CLASS (EN)
Furthermore, reference to the class number may serve for clarifying the kind
of goods at issue.
Example:
Wires, pins, needles and fastenings in class 17 were held to be dissimilar to
pins and needles; zippers in class 26. “Class 17 of the Nice Classification
relates to goods used in the construction business. Class 26 of the Nice
Page 182
Classification relates, on the other hand, to small articles for sewing
(haberdashery). Thus the goods are of a completely different nature and the
goods in question are neither in competition with each other nor
interchangeable”.
764-1999 ALFA / ALPHA (EN)
Jessie N. Marshall writes in her treatise “Guide to the Nice Agreement concerning the international classification of goods and
services” (published in 2000, see p. 25):
As far as the class headings are concerned, their structure is not uniform. Some headings may encompass others and cover all the
goods of the class. All the goods included in class 5, for instance, flow from the first phrase “pharmaceutical, veterinary and sanitary
preparations”.
Furthermore, the line between some class headings may blur. This is the case, for instance, with the paper goods (paper, cardboard
and goods made from these materials, not included in other classes) and printed matter in class 16. See Marshall, p. 89.
In this context it is also appropriate to note that the classes of the Nice Classification are structured according to factors that may
indeed be relevant for the similarity analysis. This is illustrated by the following examples quoted from Marshall’s textbook.
Class 1: function [i.e. one facet of “nature”]
… goods are properly included in Class 1 if their functions are based on their chemical properties rather than any specific
application to which the goods may be put.
(pp. 1 et seq.)
Class 3: purpose of the use
All items relating to cosmetics, personal hygiene (when not for medical purposes) and general cleaning or polishing are
classified in Class 3. ... There are many items that can be classified in Class 3 and another class depending on whether
the use of the item is for cosmetic or toiletry purposes as opposed to some other very specific purpose. (p. 14)
Class 18: nature, purpose of the use
Most items that are made of leather are classified in Class 18 unless they serve a purpose that is more suitably classified
in another class. (p. 101)
Classes 20 and 21: Miscellaneous goods – no indication of similarity
These classes are often confused with each other since both are sometimes referred to as the ‘catch-all’ or
miscellaneous goods classes. … each class only includes miscellaneous goods of specified material compositions.
(p.108)
Class 32: competitive goods
… the classification of beer in this class is based on its characterisation as a soft drink alternative. (p. 159)
Page 183
III.
THE RELEVANT TERRITORY
The territory where the earlier mark has been registered will also determine
the geographical extent of the comparison. This is important to the degree
that national consumer habits or trade customs may have an impact on the
way that goods are manufactured, distributed or consumed (method of use) in
the relevant territory.
R 0208/2000-3 BOWMAN’S / BOWMORE (EN),
R 0331/2001-3 (fig) / (fig) (EN),
R 0536/2001-3 & 674/2001-3 NEGRA MODELO / MODELO (EN).
According to OD practice, differences between national markets should be
taken into account in the comparison of goods and services. They may lead to
differing outcomes as to the similarity of certain goods in different territories.
This approach does not run counter to the notion of one single European
consumer. According to the Court of Justice the average consumer is deemed
to be reasonably well informed and reasonably observant and circumspect
(Lloyd, paragraph 26), irrespective of nationality or residence.
Taking into account national consumption habits, such as those relating to
beverages (e.g. the habit of mixing water and wine in Germany), does not
impinge on the “reasonably well informed and reasonably observant and
circumspect” standard. If the consumption habits were not taken into account
by the Office in a case where the earlier right is a national trade mark, the
Office could not properly assess likelihood of confusion in the Member State
concerned. By basing its decision on an artificial consumption practice, there
would be a risk that the Office would decide differently from authorities in the
Member States (trade mark offices and/or courts) that will take into account
the national consumption habits. Such a practice would contravene the goal of
having non-contradictory decisions concerning one and the same territory, no
matter whether national or Community authorities take them.
National habits may also have an impact on the consumer’s perception of the
goods and services and thus affect his attention, an issue usually dealt with in
the overall assessment of likelihood of confusion.
Example:
In 1999-2001 Blû (cl. 33) / BLU (cl. 32) (EN) it was held that consumers would mix
alcoholic and non-alcoholic drinks, especially in the German market where mixed
beverages are very popular. The distribution channels of the two products, i.e.
alcoholic beverages (except beers) and “mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices”, were also considered to be similar in
Germany. Both categories of products can be found in supermarkets and grocers’
shops close to each other on the same shelves in these outlets. Furthermore, in
Germany, it would be likely for producers of “alcoholic beverages (except beers)” to
also produce the goods covered by the other mark in suit.
Page 184
But see R 36/2002-3 Lindenhof/LINDERHOF (fig) (DE) where the Board
found only a remote similarity between sparkling wine (“Sekt”) and, in
particular, fruit juices and mineral waters in the relevant German territory. This
remote similarity was held to be insufficient for a likelihood of confusion
despite the marks being very similar aurally.
Page 185
IV.
SIMILARITY OF GOODS AND SERVICES: A MATTER OF DEGREE
1.
Introduction
Restating part of the 7th recital to the CTMR, the Court said:
… The appreciation of the likelihood of confusion depends on
numerous elements and, in particular, … on the degree of similarity
between the signs and the goods or services ... (Sabèl, paragraph
22)
It follows from this statement that the degree of the similarity between the
goods and services has to be assessed in each case. Together with the
degree of similarity of the signs, the degree of distinctiveness of the earlier
mark (see Sabèl, paragraph 24), the level of sophistication and attention of
the average consumer of the goods or services in question (see Lloyd,
paragraph 26), and any other factor relevant to the case, the degree of
similarity of the goods and services constitutes the basis for determining
whether confusion is likely to occur.
The 7th recital to the CTMR also indicates how similarity of goods and
services should be interpreted:
“An interpretation should be given of the concept of similarity in relation to the
likelihood of confusion“.
And the Court has defined likelihood of confusion as
... the risk that the public might believe that the goods or services in
from economically-linked undertakings, constitutes a likelihood of
confusion ...
... there can be no such likelihood [of confusion] where it does not
appear that the public could believe that the goods or services come
from the same undertaking or, as the case may be, from economicallylinked undertakings. (Canon paragraphs 29 & 30)
The importance of common origin (in the broad sense) for the scope of
confusion reveals the kind of similarity required as regards the goods and/or
services (products) in comparison:
The connections between the goods/services must be capable of suggesting
that they come from the same or economically linked undertakings. See CFI in
case T-99/01 MYSTERY (fig) / Mixery, para. 41 and CFI in case T-110/01
HUBERT (fig) / SAINT-HUBERT 41, para. 46 (case pending before the Court
of Justice).
2.
Assessment of the degree of similarity of the goods and
services
Page 186
2.1. Express and consistent answers required
A finding of likelihood of confusion requires an express answer in the decision
to the question of similarity of the goods/services concerned. This follows from
both Article 8(1)(b) and Article 8(5). If the goods/services are found to be
similar, the respective answer must also indicate the degree of similarity.
The answer as to whether or not the goods/services are similar (and, if so, to
what degree) is generally given in the “similarity of goods/services” part of the
decision. In borderline cases, the answer need not be given in that part but
may be given in the final part “conclusion” only (see below, under 4.2.2.d.).
Furthermore, the assessment regarding similarity of goods/services must be
consistent. This means that no divergent results must be reached in different
decisions as regards the same compared goods/services.
2.2. How to make the assessment of similarity of goods and
services
2.2.1.In general
It is necessary to base the findings on the realities of the marketplace, i.e.
established customs in the relevant field of industry or commerce. These
customs, especially trade practices, are dynamic and constantly changing.
The examiner may know the customs from the facts and evidence submitted
by the parties. Furthermore, there may be relevant facts that are “notorious”
and therefore do not need proof. What does not follow from evidence or is not
notorious cannot be taken into account (cf. Article 74(1)). On the distinction
between questions of law and questions of fact see above, under A III.5. and
the guidelines on admissibility and procedure, part C II.
It is important that the examiner refrains from any speculation concerning the
realities of the marketplace regarding, for example, machines or IT goods or
business services. Phrases like: “It may well be that certain manufacturers of
goods 1 are also engaged in the manufacture of goods 2” or words like
“perhaps” may not be used.
2.2.2.Similarity of signs and distinctiveness of earlier mark: impact
on likelihood of confusion but not on similarity of
goods/services
The similarity of the goods and services in question must be assessed without
taking into account the degree of similarity of the conflicting signs in the
concrete case or the distinctiveness of the earlier mark. This follows from the
Court’s statement in Canon that:
… even where a mark is identical to another with a highly distinctive
character, it is still necessary to adduce evidence of similarity
between the goods or services covered … the likelihood of confusion
Page 187
presupposes that the goods or services covered are identical or
similar (paragraph 22).
… the distinctive character of the earlier trade mark, and in particular
its reputation, must be taken into account when determining whether
the similarity between the goods or services covered by the two trade
marks is sufficient to give rise to the likelihood of confusion
(paragraph 24).
Any doubts about the proper interpretation of these paragraphs should have
been removed by the CFI’s statement in HUBERT (paragraph 65) clearly
confirming the view that similarity of products does not depend on the
distinctiveness of the earlier mark:
According to the case-law of the Court of Justice, the likelihood of
confusion presupposes that the signs as well as the goods and
services covered are identical or similar, and the reputation of a mark
is a factor which must be taken into account when determining
whether the similarity between the signs or between the goods and
services is sufficient to give rise to a likelihood of confusion (see, to
that effect, Canon, paragraphs 22 and 24).
2.2.3.“Absolute” outer limit of similarity
An “absolute” borderline must be drawn between goods/services that are
similar and those that are dissimilar. This means that one and the same pair
of goods and services always are either within or outside that borderline.
A definition of the outer limit is required for several reasons:
-
First, there is a need for legal certainty.
-
Second, where the products are dissimilar, the earlier mark can be a basis
for refusal of the CTM application only under the conditions set out in Art.
8(5). Those conditions confer enhanced protection on marks with
reputation. It is often difficult to establish that the conditions, which include
an unfair advantage or a detriment to the distinctive character or the
repute of the earlier mark, are met.
Third, it is desirable that the assessment of goods and services by the
Office and by the relevant authorities of the Member States run in parallel.
For Member States’ trade mark authorities it will become indispensable to
define an “absolute” outer limit in the following two situations, which makes
the need for the Office obvious to make such definition as well:
♦ Where the Member State does not provide enhanced protection for marks
with reputation, Art. 4(4)(a) of the TM Directive leaves it up to the
discretion of the Member States to do so.
♦ Furthermore, a Member State may choose to provide such enhanced
protection only for infringement but not for opposition proceedings.
(Germany, e.g., has done so.)
-
Page 188
The definition of the borderline between (remotely) similar and dissimilar
products must be based on the following test:
The products are similar if, supposing identical marks, the public could believe
that they come from the same or economically-linked undertakings.
This definition follows from the interpretation of the 7th recital to the CTMR
made above, under section 1. A narrower approach, assuming that the signs
are merely similar, would leave gaps in protection. Conversely, a broader
approach, assuming in addition to identical signs a maximum degree of
distinctiveness of the earlier mark, would blur the borderline with Art. 8(5).
Where the earlier mark enjoys a reputation, the public will hold the belief that
nearly all products come from the same or, at least, economically-linked
undertakings.
2.2.4.Borderline cases (remote similarity v dissimilarity)
In borderline cases, the answer as to whether or not the goods/services are
similar (and, if so, to what degree) may be left open in the similarity analysis
and may be given in the “conclusion” part of the decision only.
In such cases, the various relevant factors concerning the similarity of
goods/services in dispute must be discussed in the similarity part of the
decision. The question is whether, from a commercial perspective, there is a
link between the goods/services. In the example clothing (cl. 25) v perfumery
(cl. 3), it should be identified, for example, that these goods may be sold
together and may be manufactured under the responsibility of one single
undertaking.
It will then be for the likelihood-of-confusion analysis to determine whether the
link between these goods is sufficient, in the light of the similarity of the signs,
the distinctiveness (intrinsic or acquired through use) of the earlier mark and
any other relevant factor, to justify a finding of likelihood of confusion. As a
precondition for a finding of likelihood of confusion it must, at this stage, also
be expressly stated that the goods and services have been found to be
similar, and to what degree.
Page 189
V.
SIMILARITY OF GOODS: FACTORS CONSIDERED
1.
General principles
As far as the criteria for establishing similarity of goods/services are
concerned in greater detail, the Court held in Canon that:
... In assessing the similarity of the goods and services … all the
relevant factors relating to those goods or services themselves
should be taken into account. Those factors include, inter alia, their
and their method of use and whether they are
nature, their
in competition with each other or are complementary (paragraph 23).
As stated above (under B.I.3.6.1.d), the term “end users” is an incorrect
translation. The correct translation is “purpose of use”.
The term “inter alia” shows that the enumeration of the above factors by the
Court is only indicative. The similarity of goods and services cannot depend
on any number of fixed and limited criteria that could be generally determined
in advance, with a uniform effect in all cases. There may be other factors in
addition to or instead of those mentioned by the Court that may be pertinent
for the particular case.
Similarity of the goods/services in question must be determined on an
objective basis. “Objective basis”, however, does not mean abstract or
intrinsic basis. Rather, it is the commercial perspective that is of paramount
importance.
The Court held in Canon that in assessing the similarity of goods all the
relevant factors relating to those goods themselves should be taken into
account.
The most important factors are set out below and will be treated in that order
in the subsequent text:
[Canon factors:]
• nature (composition, functioning principle, appearance, value et al.)
• purpose (intended use): same or similar uses
• method of use
• complementary goods/services
• competitive / interchangeable goods/services: satisfaction of the same or a
similar demand
[additional factors:]
• channels of distribution: same or similar channels of distribution; in
particular placement in the same points of sale
• the relevant public
Page 190
•
the usual origin of the goods/services: type of undertaking controlling the
production of the goods; in particular the place of production and the
method of manufacture.
In any given case, the examiner must determine the relevant factors and the
corresponding features that characterise the relationship between the goods
and services compared, and the weight to be attributed to each of these
relevant factors.
Example:
The factors relating to “water”, in the abstract, have multi-facetted features.
Yet, only parts of these features are relevant, depending on the good that
water is compared with:
Factor
features
nature:
ground)
purposes of use:
methods of use:
transparent, freely available liquid (sea, lakes, rain,
thirst quenching, cleaning, cooling (engine) etc.
swallowing (drinking), washing machine, sponge etc.
For instance, as far as the factor “purpose” is concerned, the relevant features
are as follows:
- if water is compared with wine, it is thirst quenching;
- if water is compared with chemicals used in a laundry, it is cleaning.
The principal aim of the comparison of the goods /services is not to identify
the intrinsic or inherent features of the goods or services in question in an
abstract manner. What matters, rather, is the overlap of the factors, such as
nature, purpose and method of use etc., that characterise the specific pair of
goods and services in question. Thus, the factors and features characterising
one good or service may be of one kind in one comparison and of another
kind in another comparison involving different goods and services.
It must be noted that in many cases there will be overlaps between the factors
in the sense that where one is fulfilled another one will usually be met as well.
This question is discussed at the end of the discussion of each factor and
summarised at the end of the similarity-of-goods and services part, under
“predominant factors”.
To safeguard consistency and transparency of decisions, examiners are
instructed to use the wording of the factors above, i.e. nature, purpose etc.,
and not equivalent wordings, unless they identify this equivalence clearly. For
instance, instead of purpose of use, one could also say “destination” or
(consumers’) “needs served”. But using these terms could only lead to
confusion as to what is meant by the factor. Furthermore, using the same
concept in cumulation might suggest the presence of a higher degree of
similarity because a greater number of factors would coincide: “The purpose,
Page 191
destination and needs served are the same”. This sentence, however, simply
includes a repetition of one and the same concept, and that repetition,
obviously, should have no bearing whatsoever on the outcome of the case.
2.
The specific similarity factors applied to the comparison
between goods and goods
2.1. Introduction: The distinction between factors may be difficult
In the following sections an attempt is made at defining and illustrating the
various factors for similarity of goods and services. However, it is
acknowledged that there are cases in which a distinction between various
factors will be difficult to draw. This is particularly true as far as “nature”,
“purpose” and “method of use” are concerned. See the table under section
2.5. below. Where the examiner encounters such difficulties, he/she should
not make a great effort at distinguishing the factors but rather treat them
jointly. In such a situation, he/she could, for instance, state that the goods
compared have the same nature and the same purpose indicating the specific
facts on which this finding is based.
The final remarks on their relative importance at the end of the discussion of
each factor, in addition to chapter 8 on the interrelationship of the various
factors, should further help in delineating the boundaries between them.
The explanation of the various similarity-of-goods-and-services factors starts
with their application to goods only. The application of these factors to
services will be discussed in section V.4.
2.2. Nature
2.2.1.General considerations
(i) The main criteria for defining “nature”
A variety of criteria of the goods/services in question may be useful for
determining their nature, in particular:
-
composition,
functioning principle,
physical condition (e.g. liquid/solid),
appearance (design),
value.
These criteria are analysed below, under b.
(ii) Nature to be defined from a commercial perspective
As with all factors concerning the similarity of goods/services, the nature of
one set of goods/services must be defined from a commercial perspective in
relation to the other goods/services. It may not be necessary or even useful to
Page 192
try to define the nature of a product in an absolute, objective and abstract
manner by establishing the intrinsic nature, i.e. the inherent and identifying
features, in particular its composition. Since the nature must be determined in
respect of the specific goods and services in question, features of the
goods/services may be of importance with respect to certain goods/services
but not to others.
Page 193
Examples:
CTMA product
Features of the goods
Intrinsic
Commercial
Ice as edible ice Both:
frozen Ice-cream:
(“ice-cream”)
water
foodstuff; ice for
cooling: auxiliary
good
for
preserving
foodstuffs
Ice as edible Frozen water v Both goods are
ice (“ice-cream”) preparations
sweet foodstuffs
made
from
flour et al
Earlier
product
mark
Ice for cooling
Flour
confectionery,
rolls, biscuits
In the first example edible ice v ice for cooling, there is an overlap in the
composition of the goods, i.e. both consist (partly) of frozen water. From a
commercial point of view, however, this is obviously irrelevant. What matters
is that one is a foodstuff while the other is not. Therefore, their nature is not
similar.
In the second example as well, the composition is irrelevant. It is the fact that
both are sweet foodstuffs and typical desserts that makes their nature similar
from a commercial perspective. See BoA 795/1999-1 (Allegro / ALLEGRO):
"Edible ices" are to be compared with, in particular, "flour
confectionery", "rolls" and "biscuits". Although ... ice cream products
are frozen, they are like confectionery products, sweet foodstuffs …
[the nature]
(iii) Dictionary entries may but do not necessarily provide help
If the nature cannot already be deduced easily from the specification,
additional information may be derived from dictionary entries.
955/1999 SUPERFLAM (cl.9) / EUROFLAM (cl.9, 11) (FR)
However, since it is not the intrinsic nature that matters, the examiner must
not merely rely on dictionary entries, as case R 152/2000-3 DIPPIN’DOTS /
dippin’dots (fig) (EN), (paragraph 24) suggests:
The Board held that
the contested decision is inconsistent in the treatment of ‘ice’ and
‘ices’ in Class 30 in the application. Whilst it holds that ‘ices’ are
identical to ‘ice creams and edible ices’ and are similar to ‘frozen
yoghurts; novelty frozen water beads; frozen dessert products’, it
holds that ‘ice’ is not similar to the opponent’s goods because of
Page 194
differences in nature and purpose … Here, the Board refers to the
The New Shorter Oxford Dictionary, 1993 Edition, according to which
‘ice’ is the singular of ‘ices’ and means inter alia ‘(An) ice cream’ or
‘Icing for cakes’. It must be concluded therefore that ‘ice’ in the
application is identical to ‘ice creams and edible ices’ protected by the
earlier marks.
This quote clearly shows the pitfalls of relying on dictionary entries only. Given
the fact that both “ices” and “ice” are mentioned in the specification, OD had
correctly assumed that “ices” refers to edible ice, whereas “ice” was meant for
cooling purposes. (Both types of ice are classified in class 30 of the Nice
Classification.) Thus, OD had properly concluded that the goods differed in
nature and purpose.
(iv)
To fall under the same broad heading is not sufficient for a finding of
similar nature.
The fact that the goods/services to be compared fall under the same heading
does not mean that their nature is more than remotely similar if the heading is
comprehensive. An example of such a broad heading is foodstuffs for human
consumption.
See 1210/1999 COCOPOPS(cl.30) / COCO (cl.31) (EN), where fresh fruit
was compared with, inter alia, coffee, flour, and bread.
Case 2339/2001 LA VIE CLAIRE (fig) / La Vie Claire (fig) (EN) provides
another illustration:
Meat, fish, poultry and game are foodstuffs of animal origin. Oranges,
tangerines, lemons, grapes and all kind of fresh fruits, onions, green
vegetables and vegetables are also foodstuffs. This slight connection
does not preclude that their nature is different.
Only where the common heading is sufficiently narrow may this weigh in
favour of an identical or similar nature.
Example:
Any kind of distilled spirits (being alcoholic beverages) is similar to any other
kind of such spirits.
2.2.2.The various features of goods defining their nature
(i)
(ii)
(iii)
(iv)
(v)
Composition (raw materials, ingredients
combined),
Functioning principle
Physical condition (e.g. liquid/solid),
Appearance (design),
Value (price) of the good or service.
or
finished
materials
Page 195
The relevant criteria determining the nature of goods are those that, in relation
to the other goods or services, attract the attention of actual or potential
customers on the marketplace. The importance varies according to the good
concerned. The main relevant criterion may, for example, be
-
the composition: alcohol in alcoholic beverages (the shape of the bottle is
often of little importance) or, conversely,
the appearance: toy (the composition is often unimportant).
(i) Composition (raw materials, ingredients) of goods
An identical or similar composition of the goods in question is not per se an
indicator of the same nature.
Examples:
Cooking fat does not have the same nature as petroleum lubricating oils and
greases even though both contain a fat base. Cooking fat is used in
connection with the preparation of dishes for human consumption, whereas
the oils and greases are applied in conjunction with machines.
Similarly, despite their similar physical characteristics, dog biscuits and bread
for human consumption do not share the same nature. In particular, they have
a different taste.
In line with this latter example, the OD does not follow the decision of the 4th
Board of Appeal in S ORLANDO (fig.) / Orlando R0232/2000-4 (EN).
“The fact that ‘milk products, flour and preparations made from cereals’
(CTMA) and ‘foodstuff for animals’ (earlier German registration), are of the
same nature cannot balance the numerous differences between these goods.
The fact that the goods are destined to human or animal consumption is here
the decisive factor.” While the OD agrees with the finding in the last sentence
(assuming that the milk products etc. are for human consumption), it does not
share the view that the nature is the same. Similar to the comparison of dog
biscuits and bread for human consumption above, the OD considers
foodstuffs for humans and for animals as being of a different nature.
Generally speaking, an identical or similar composition is not conclusive for an
identical or similar nature if the raw materials of which the goods consist vary
and can be substituted. This is different, i.e. conclusive for an identical or
similar nature, where the composition characterises the good. Such will often
be the case where the material of which the good is composed is precious or
rare.
Further examples:
-
Foodstuffs
Page 196
The composition may or may not characterise foodstuffs. In the case of ice
cream v flour confectionery the goods were held to be similar despite a
different composition, in particular because both are desserts.
However, in the case below (already quoted above, under 2.2.1.(iv)) this is
different because one set of the goods are main dishes, the other desserts
and ingredients; one is of animal origin, the other is of plant origin:
Meat, fish, poultry and game are foodstuffs of animal origin. Oranges,
tangerines, lemons, grapes and all kind of fresh fruits, onions, green
vegetables and vegetables are also foodstuffs. This slight connection
does not preclude that their nature is different.
2339/2001 LA VIE CLAIRE (fig) / La Vie Claire (fig) (EN).
-
Timber v paper pulp et al.
Timber (cl. 19) has a different nature from paper pulp; cellulose pulp
for making paper; paper handkerchiefs, table cloths and serviettes,
papers, cardboards and paperboards (cl. 1, 16)
247-2000 LOYAL / ROYAL (EN)
(ii) Functioning principle
The various functioning principles of a product include mechanical functioning,
with or without engine/motor, optical, electrical, biological, or chemical
functioning.
Example of similar nature:
Magnetic, electronic or optical carriers and semi-conductor devices
(cl. 9), all incorporating digitised typefaces or printer’s fonts in class 9
are similar to magnetic tapes (cl. 9). The nature is the same, as they
all are carriers.
1623/2002 PRADO et al. / PRADO (EN) against 1298/2001 WAITEC
(fig) / Wytek (fig) (EN), which is not followed.
Examples of different nature:
-
Machines and machine tools (cl. 7) – hand operated tools (cl. 8)
1797-2000 EGA (fig) / EGA MASTER (fig) (EN),
572-2001 ROVEMA / RAVEMIA (EN)
(but opposite conclusions as to similarity)
-
There are technical differences between printing plate benders (cl. 7) and
assembly machines of cardboard boxes or like products (cl. 7).
R0610/2000-4 PROFORM / PLAFORM (EN)
Page 197
-
Washing machines using washing powder (chemical) and new washing
machines using magnetic waves for cleaning
(iii) Physical condition (e.g. liquid or solid)
Chocolate goods [bars] are of a different nature from beverages because they
are food and not drink products.
1985/2001 GIOJA / JOIA (EN)
(iv) Appearance
There are goods where the appearance and not the composition, the
functioning principles or the physical state is of paramount importance.
Example:
For certain toys it is of secondary importance whether they are of plush,
cardboard, wood, metal, or other materials (save where certain safety
standards must be met for young children). What is important for the
customers is an attractive shape.
2628/2001 JAKO-O (fig.) / JOCKO (DE) reversed on other grounds by the
BoA
(v) Value (price) of the good or service
Jewellery made of gold – fashion jewellery.
From a commercial point of view, golden or plastic earrings, for example, will
be considered different because of their divergent value.
But similarity may be found under other criteria. Therefore, caution should be
exercised in distinguishing between luxury and everyday goods because the
maker of one might well also offer the other.
2.2.3.Relation to other factors
“Nature” may overlap with “purpose”and “method of use”. The method of use
is often defined directly by nature and purpose.
2.3. Purpose
2.3.1.Purpose defined
Purpose means the intended use of the goods or services and not any
accidental use. The term purpose is tantamount to the (economic) function of
the goods/services. It shows the need satisfied (consumers) or problem
solved (business customers). Purpose is a synonym for “destination” but that
Page 198
latter term is not often used by native English speakers in this context (in
French the term destination covers both “purpose of use” and “customers”).
2.3.2.Determining the proper level of abstraction
It is sometimes difficult to determine the proper level of abstraction for the
determining the purpose. This will be illustrated by using the example
dentifrices / soap:
The nature of both goods is defined by the fact that they are for cleaning, i.e. a
basic purpose, and by their composition, which characterises the goods in
their relationship: it is not possible to use toothpaste for washing hands.
As far as purpose as a similarity factor is concerned, this cannot be the fact
that both goods are for cleaning since this feature is already part of the factor
nature. Rather, purpose as a separate factor must be defined on a higher
level of abstraction. There are the following possibilities:
(1) Cleaning different parts of the body, or
(2) Cleaning teeth v hands/body in general?
As all factors, the purpose must be determined from a commercial
perspective. Since personal hygiene is usually seen as one entity, the
purpose is “cleaning different parts of the body”. Purpose must not be
interpreted in too narrow a way. Otherwise, the criterion will lose most of its
value. This can be shown from the divergent reasoning in the two decisions
below. The OD follows LIFE (fig) / LIFE.
-
Dentifrices in cl. 3 are not similar to soaps or hand cream in cl. 3.
Dentifrices are used for teeth care and have a cleaning and hygienic
purpose. The other cl. 3 goods may have a cleaning purpose but are used
for skin care and not for teeth care.
1946/2002 Marco (fig) / Marca (fig) (EN)
-
Dentifrices have a low degree of similarity to soaps: dentifrices have some
similarities to soaps as they are all used in connection with the same
purpose: namely to clean the human body.
3043/2001 LIFE (fig) / LIFE (EN)
For an overview on the relation between the factors nature, purpose and
method of use, see below, under section 2.5.
2.3.3.Examples of same/similar
goods/services
and
different
purposes
Same/similar purpose:
Page 199
of
Veterinary preparations and preparations for veterinary medicine are like the
supplements and nutritional additives to foodstuffs for animals of the earlier
registration in that both sets of goods are designed to improve or maintain the
health of animals.
645/2001 EQUIVITE / EQUIVET (EN)
Sheets, plates and rods of plastic (class 17) and unprocessed plastics in class
1 share the same purpose.
R 0799/1999-1 RODIO / RHODIA (fig.) (EN)
Different purpose:
Cement and bituminous coatings for floors and roofing et al. (cl. 19) are
dissimilar to colours, fast dry protective coatings, lacquers et al. (cl. 2). The
purpose of the cl. 19 goods is to form the floor itself, and the purpose of the cl.
2 goods is applying a decorative or protective coating to floors, walls or
roofing.
2432-2000 ROWAKRYL/ MONACRYL (EN)
2.3.4.Consequences of different purposes on the decision on
similarity
If one of the two pgoods has a very specific purpose there may be a strong
indication of dissimilarity, as in the case of specialised software integrated in a
haemodialysis machine and multimedia software.
713/1999 ALTRA LINK (cl.9) / ULTRALINK (cl.9, 38) (EN)
(e) The relation between nature and purpose in particular
Where the nature is different but the purpose is the same, similarity is
frequently found, as the following three examples show.
Example 1: Goods used in the kitchen in cl. 21 / cutlery (cl. 8)
The goods in class 21, certain goods used in the kitchen, are similar to the
goods in class 8, namely cutlery, “… although they have a different nature and
perhaps different use. In fact they are all implements that are normally used to
carry out tasks related to household purposes and, in particular, cooking or
they are used in combination with, and at the same time as cutlery … They
are manufactured by the same enterprises and sold through the same trade
channels, targeted to the same circle of customers”.
R 0478/2001-3 CUCINA & Co (fig.) / LA CUCINA (fig.)
Example 2: Footwear / clothing
Despite a different nature, in particular because of the same purpose, the
goods are similar:
Page 200
Footwear, shoes and boots serve the same purpose, in principle, as the items
of clothing listed: they are intended for wear by humans, both as protection
from the elements and as articles of fashion.
R 634/2001-1 “a” (fig.) / “a” (fig.) (CFI case)
Example 3: Pharmaceutical substances / plasters
The goods of the application pharmaceutical and sanitary substances;
medicines; pills are drugs or substances used for treating, preventing, or
alleviating the symptoms of diseases or injuries due to accidents. Plasters are
adhesive strips of material, usually medicated, for dressing different kinds of
wounds. Materials for bandaging are therapeutic or protective materials used
for dressing wounds or for binding a broken limb. Although all of these goods
are of a different nature from the opponent’s goods, they share a similar
purpose, i.e. the cure of diseases, disabilities or injuries. 2940/2000
APEX/APEX (EN)
In general, the purpose is the most important factor. Since it defines the
intended use of the good or service, it is the easiest way for a customer to
identify such good/service. Based on the purpose, it is also possible to
determine who the actual and potential customers, i.e. the relevant public,
are.
When the purpose is similar, the goods/services will usually be in competition
and have a substantial overlap in the relevant public, i.e. the actual and
potential customers.
Furthermore, the method of use usually depends on the nature and purpose
of the goods.
2.4. Method of use
The method of use defines how the good is used to achieve its purpose. It can
usually be inferred from
•
the functioning principle of a good, i.e. the nature, and
•
from the function that the goods or services fulfil in the marketplace (need
satisfied or problem solved), i.e. purpose of its use.
Method of use, therefore, often follows directly from the nature and purpose of
use and then has no or little significance of its own in the similarity analysis.
Example:
Page 201
An iron is an electrical appliance (nature) for creating an even, wrinkle-less
surface of shirts, trousers etc. (purpose). From the nature it follows that
certain buttons must be pushed to make electrical current flow within the iron.
From the purpose one can deduce that the iron must be moved to and fro to
create the desired surface of a shirt, pair of trousers etc.
Furthermore, just as the factor nature may be defined by a basic purpose (see
above, under section 2.3.2.), a basic method of use may also co-determine
the factor nature. Example: The nature of food is defined, inter alia, as a
substance containing nutrients (composition) that can be ingested by a living
organism (basic method of use). It should be obvious that this basic method of
use cannot define the separate factor method of use because otherwise that
factor would have no significance independent of the factor nature. In the
case of vinegar, e.g., the method of use can therefore be defined by the way
vinegar is used in to season foodstuffs, in particular by moving a spoon to and
fro. Cf. below, under section 2.5.
Where the method of use is not linked to nature or purpose of a product or
service, the mere coincidence in method of use may still not have a great
importance: baby carriages and lawn mowers are both moved forward
manually but they are obviously dissimilar.
However, the method of use may be important, independent of nature and
purpose, where it characterises the goods:
-
In favour of similarity:
“Pharmaceutical preparations for treating medical conditions of the skin or of
the hair can take the form of creams or lotions. Both sets of goods have the
same method of use as cosmetics, which also include creams and lotions.”
1981/2002 VITANOV / NOVA VITA (fig) (EN)
However, even where the method of use characterises the goods under
comparison and where it is identical for both goods, this fact alone will not be
sufficient to establish similarity.
-
Against similarity:
Rubbing – pouring down
Polish is applied manually by rubbing the surface of metallic objects with
pieces of impregnated cotton or other material, whereas cleaning preparation
is poured down blocked or infected waste pipes with the purpose of cleaning
them.
456/2002 ALADDIN / ALADIN (EN)
Riding in a wheelchair – riding on a bicycle
Page 202
“A person who is riding a bicycle has to keep his balance when he is moving
with the bicycle, while a disabled person sitting in a wheelchair needs to have
a very secure and stable position while moving which include restraint
systems to avoid dangerous movements. People riding a bicycle normally
have the ability to get on and off the bicycle by themselves. In contrast, the
disabled individual using a wheelchair needs, most of the time, another
person to help them getting in and out this apparatus.” This is an example
where the method of use is conditioned by the purpose of the product.
1138/2002 PANTHER (fig.) / Panther (EN)
Relation to other factors:
Method of use often follows directly from the nature and purpose of use and
thus is usually not a very important factor.
2.5. How to properly distinguish the factors nature – purpose –
method of use
The CFI’s Hubert case (case T-110/01) is used as an example. The goods
are: “edible fats” (graisses alimentaires) v. “vinegar, sauces” (vinaigre,
sauces)
Page 203
Factor
Suggested
Suggested application of Application by the
definition of definition of factor
CFI
factor
Nature
The type of
good
(including a
basic
purpose and
a
basic
method
of
use)
Foodstuffs
Foodstuffs
Definition of foodstuff:
any material, substance,
etc., that can be used as
food
Definition of food:
any substance containing
nutrients,
such
as
carbohydrates,
proteins,
and fats, that can be
ingested by a living
organism
[basic-level
method of use] and
metabolised into energy
and body tissue [basiclevel purpose]
(definitions from Collin’s edictionary)
Purpose
Method
use
What
the Everyday
seasoning
good
is (upper-level purpose)
intended
to
be used for
of How the good Moving a bottle to and fro
is used to or moving a spoon to and
achieve
its fro
purpose
“Human
consumption”, i.e.
the basic purpose
and basic method
of use (part of
“nature”)
Everyday
seasoning
foodstuffs,
upper-level
purpose
of
i.e.
2.6. Complementary Goods
2.6.1.Principles
Goods (or services) are complementary if there is a close connection between
them, in the sense that one is indispensable or important for the use of the
other and is not merely auxiliary or ancillary. If these conditions are fulfilled,
this weighs in favour of similarity. Customers may think that the responsibility
for the production of both goods is the same. This impression is even more
likely if the goods are also offered together.
Page 204
Example: Smokers’ articles v filter cigarettes. They are of a different nature.
… However, there are various features which the respective goods
have in common: the goods concerned not only have common end
users, the smokers of cigarettes, but are, in particular, complementary
to each other since they are both used for the purpose of consuming
nicotine. This complementary character is quite strong since the use of
filter cigarettes even requires complementary articles which can be
used to light cigarettes. Therefore, the goods concerned are often
bought by the consumers at the very same moment and in connection
to each other. Furthermore, they are sold by the same retailers and, to
some extent, distributed through the same trade channels. Nowadays,
some manufacturers of filter cigarettes put lighters and matches on the
market under their cigarette brand.
500/2000 BOSS (fig) / Baldessarini HUGO BOSS (fig) (EN).
The fact that there are undertakings, which market complementary goods,
such as smokers’ articles and filter cigarettes, under the same trade mark
shows that it may be justified to infer a common origin from the
complementary nature of goods.
It further follows that the mere fact that goods are complementary may suffice
to establish similarity of the goods, even a high degree of similarity. This
factor is of importance, where the nature (in the example above, lighter –
cigarettes), the purpose (lighting – smoking), the method of use (pressing a
button – inhaling) are different and the goods are not in competition (one
cannot smoke a lighter).
If the goods are complementary, the distribution channels and customers will
often be the same.
The OD practice concerning complementary character can also be illustrated
by decision 1051/2002 DODIPETTO / dodie (fig) (EN):
The fact that the broad wording of the earlier marks includes goods for babies
[general cl. 3 goods, not restricted to babies, as well as “babies’ bottles,
babies’ bottle teats”], and that both the latter and clothing for babies can, at
least sometimes, be found in the same selling points is not enough to justify
the conclusion that they are complementary and similar.
This case is at odds with a decision taken by the Fourth Board of Appeal,
which is not followed. According to the Board, it seems that goods should be
considered complementary when they have a purpose that can be associated
with another purpose (this is apparently the meaning of the statement in the
decision that clause “a product satisfies a need that can be associated
mentally to another need”)
Page 205
A baby’s cradle satisfies a need (that the baby sleeps) that can be
associated to the need satisfied by a baby’s pyjama or body (that the
baby wears clothing for the night).
R 0674/2000-4 MAMAS & PAPAS / MAMA’S & PAPA’S (EN)
2.6.2.General examples
(i)
Complementary goods
Cameras and film are complementary since they must be used together.
Hardware – software
554/2002 QUANTUM / QUANTUM (EN)
Computers / machine-readable data carriers
398/2002 COMCONNECT / ComConnect (DE)
Handbags - clothing, footwear:
The goods handbags in class 18 are closely related to articles of
clothing; footwear in class 25, in the sense that they are likely to be
considered by the consumers as accessories to articles of outer
clothing and even to footwear (for example women’s handbags).
Even if it is not usual for clothing manufacturers to directly produce
and market handbags, it is reasonable that a significant part of the
public considers such goods to be “complementary accessories”,
because they are closely co-ordinated with outer clothing and
footwear and they may well be distributed by the same or linked
manufacturers. Moreover, these goods can be found in the same
shops.
2008/2000 WANNABE (fig) / WANNAGO (EN). See also 1440/2000
GIORGIO (fig) / GIORGIO (fig) (EN)
Towels are complementary to swimwear and beachwear in the sense that
they are normally used when going to the beach or to the swimming pool.
435/2001 LORIS / FLORIS (EN).
Belts (cl. 25) and shoes (cl. 25):
1481/2002 ROHDE / DANRHO (fig) (DE)
Preservatives against rust – paints, varnishes, lacquers
1496/2002 CASACOLOR / CAPACOLOR (DE)
Page 206
(ii) Non-complementary goods
On the other hand, if the connection is loose, the public is not likely to
establish a link between the goods at issue: electric cables and software were
not considered similar simply because they contribute to the operation of the
same kind of machine.
922/1999 RADIFLAM (cl.9) / FLAM (cl.9, 42) (EN)
Textile tissues for removing make-up are different from soaps. “It would
amount to absurdity to consider such goods to be similar on the sole fact that
they may be used together. Their nature, purpose and method of use differ.”
483/2001 MAJA / maxa (fig) (EN)
2.6.3.Accessories
(i) Similar
The goods cosmetics and soap boxes, cosmetic cases, are offered for sale
together and are always used together, and therefore may be considered as
having the same origin.
611/1999 VERI (cl.3, 21) / VERITÉ (cl.3) (ES)
Watch-cases are complementary to watches.
1850/2001 T (fig) / T (fig) (EN)
Eyeglass lens cleaning solutions, frames, and accessories, namely eyeglass
cases and chains and eyeglass lens cleaning cloths compared with contact
lenses.
1475/2002 CONTINUA / CONTINUA (EN)
(ii) Not similar
Manicure cases (cl. 8) and cosmetics (cl. 3)
1479/2002 BARATTI / Mario Barutti (DE)
Containers for the storage of drinks, in particular bottles for drinks (cl. 21) and
certain alcoholic and non-alcoholic drinks in cl. 32 and 33 (different origin,
different customers)
50/2002 la bamba (fig) / BOMBA (fig) (DE)
2.6.4.Complementary character defined by consumer habits
Page 207
Consumer habits that are often defined by tradition and local custom may also
be important. Thus, it was held that the local custom of drinking beer and
schnaps together in certain Member States was an indication of similarity.
982/1999 GIRAF (cl.33) / GIRAF GOLD (cl.32) (EN)
2.6.5.Auxiliary or ancillary goods
Certain goods or services can be considered “auxiliary” or “ancillary” in
relation to specific other goods or services. A finding of "ancillarity" will
generally not be suffice tto support a finding of similarity of the goods or
services. This auxiliary/ancillary nature may not be present with respect to
different goods/services.
Example: financial services – printed matter; the latter goods are auxiliary;
there is no similarity between these goods and financial services..However, in
relation to CD ROMs, printed matter is not auxiliary but, rather, may be in
competition.
Goods and services are not complementary and are not usually similar to the
main goods/services (examples from classes 9, 16 and 38)
(i) Class 9, 16, and 38 goods and services
Financial services are not similar to class 9 and 16 goods in particular
because these goods are only auxiliary tools and thus dependent ancillary
goods to the provision of the financial services. The mere fact that financial
services are provided by using software and data carriers does not make
these goods and services similar.
188/2002 FOCUS / FOCUS TV (fig) (DE)
Insurance and financial affairs (cl. 35) v cl. 9 goods and cl. 38 services,
namely data processing equipment and computers, computer programs;
communication services and data transmission by computer; scientific and
industrial research; computer programming:
Not similar, the cl. 9 and 38 products are only a working tool, the nature is
different.
R 518/2000-1 EUROPAY 6000 / EUROPAY (EN),
1356/2000 atlas (fig) / ATLASREISEN (EN),
1357/2000 atlas (fig) / ATLASREISEN (EN).
(ii) In particular class 16 goods
Organisation and conducting of exhibitions v paper, printed matter and other
cl. 16 goods – not similar
1444/2001 BLUMENTAL / Blumen Worldwide (fig) (EN).
Page 208
Transport; packaging and storage of goods; travel arrangement v magazines,
publications – not similar
(cl. 16) 2515-2000 NATURA (fig) / Natura Comfort (fig) (EN).
2.6.6.Sales promotion by manufacturers of goods or providers of
services
Merchandise given away for sales promotion purposes is not similar to the
goods/services to be promoted. Rather, such sales promotion is to be
considered like advertising (see below, under comparison of goods and
services, section 5.3.1.bb):
Travel arranging and conducting of travel tours and leather products, clothing,
games, sporting articles are not similar. For the purpose of considering goods
and services similar, it does not suffice that it is customary for the providers of
a service to hand over to clients goods as a complimentary gift, free of
charge.
964/1999 THE GREY LINE (cl.39) / GREYLINE (cl.18, 25, 28) (EN) (affirmed
R 72/2000-1 (EN))
Similar considerations apply where a manufacturer of goods or a provider of
services gives away goods, such as T-shirts, CDs, wallets etc., for
merchandising purposes.
The complementary factor plays its most important role where the goods are
different in respect of nature and purpose (and following therefrom, usually
also method of use) and where they are not competitive. The mere fact that
goods are complementary may suffice to establish their similarity.
If a complementary relationship is found, the distribution channels will often
be the same.
2.7. Goods in competition
The goods at issue are in competition with each other when they are offered
to the same group of customers who may choose to substitute one for the
other for the same purpose. In such a case, the goods are also defined as
economically “interchangeable”.
The price may be a criterion but not necessarily so. For instance, jewellery
made of gold and fashion jewellery compared above under nature (see sec.
5.2.1.b.(v)), are in competition even though their price (and value) greatly
differ.
Page 209
On the other hand, the price of goods in competition will often not differ
substantially if properly calculated. For instance, new car sales and car
leasing are in competition even though the price for a new car is substantially
higher than that of the monthly leasing payments. However, overall, the price
for the leasing of the car over the usual time of leasing will be in the same
range as the price for a new car.
1386/1999 ROWA (cl.19, 27) / OWA (cl.6, 17, 19) (DE)
Paper coffee filters are in competition with plastic or metallic filters, as they
have a similar size, shape and function, they cover the same needs and the
difference in price is not considerable for the average consumer, being also
justified by the longer durability of the plastic or metallic filters, so that, taking
into account the life span of these filters, they might even be cheaper overall
than the number of paper filters that would have substituted them.
44/1999 TELIA (cl.21) / Teeli (cl.21) (EN)
Goods in competition share the same actual and potential customers.
45/1999 FLORA (cl.32) / LORA DI RECOARO (cl.32, 33) (EN)
A significant part of the public will usually be familiar with both kinds of goods
and will be accustomed to seeing equivalent or interchangeable goods
coming from the same enterprise.
167/2000 MIXERY (cl. 32) / MYSTERY (cl.29, 30, 32) (DE) (CFI case)
Examples:
Wallpaper (cl. 24) and wallpaper made of textiles (cl. 27) v paints: competitive
and complementary, sold in specialised shops, therefore, the goods are
similar.
However, woven wall decoration (cl. 24) and paints are neither competitive
nor complementary and are sold in different shops. They are dissimilar.
1496/2002 CASACOLOR / CAPACOLOR (DE)
Relation to other factors:
Goods are usually competitive when they have the same purpose and are in
a similar price range.
2.8. Distribution channels, in particular placement in the same
points of sale
Page 210
2.8.1.Major categories of distribution channels
-
Direct Sales - Selling directly to the customer of the product. There is no
agent between the company and the customer. Supplying financial
planning services to individuals is an example of direct sales. Catalogue
sales or sales over the Internet are also examples of this method.
-
Indirect Sales: Retail - Selling to a retailer whose salespeople then sell to
the customer. Selling organically grown herbs to a local grocery store is an
example of indirect sales.
-
Indirect Sales: Wholesale - Selling to a wholesaler or agent who sells
goods to retailers. The wholesaler most likely represents several
companies. (It is more efficient for the retailer to have one source for many
products instead of dealing with an unwieldy number of individuals.)
Selling novelty pet accessories to wholesalers who resell to a variety of pet
care stores, animal clinics and other retail outlets is an example of selling
to wholesalers or agents.
-
Indirect Sales: Multi-level Marketing - Selling both directly to customers
and to other sales people the seller has recruited to sell products.
2.8.2.The relevance of the same distribution channels in general
If the goods are made available through the same distribution channels, the
consumer may be more likely to assume that the goods or services are in the
same market sector and are possibly manufactured by the same entity and
vice versa.
1471/1999 KALZAN (cl.5) / QANZA (cl.5) (DE),
1466/1999 FLORIDA SUN (cl.32) / FLORIDA SUN (cl.32) (EN).
2.8.3.The relevance of the same sales outlets in particular
The following quote from a WIPO document summarises the appropriate
importance to be given to identical or similar sales outlets.
Not too much emphasis should be placed on this criterion as modern
supermarkets, drugstores and department stores sell goods of all
kinds. Therefore the point of sale is less decisive when deciding
whether consumers consider that goods share a common origin
merely because they are sold at the same outlet.
Nevertheless, the criterion may be valid in cases in which goods are
sold exclusively or commonly in specialised shops. In that event,
consumers may tend to believe the origin of the goods to be the
same if they are both sold in the same specialised shops and may
tend to deny that mutual origin if they are not usually sold in the same
shops.
Page 211
(WIPO Introduction to Trademark Law and Practice, The Basic Concepts, A WIPO
Training Manual, Geneva 1993 (2d edition), 1998 reprint, Item 6.2.1.)
Coincidence of sales outlets and distribution channels may be significant
because it may show a physical proximity of the goods and marks on the
market. Where the goods are offered together in the same kind of outlet, there
is a bigger chance that the consumer will encounter them in the same shop,
often simultaneously.
1339/1999 LINOLA (cl.3) / LIOLA (cl.3) (EN)
Moreover, the kind of outlet concerned may also reveal the trade customs and
marketing techniques involved in the promotion and sale of a specific kind of
goods. Such circumstances may show for example if the consumer has the
opportunity to examine a good before buying it, if it is sold over the counter or
electronically, if it is tried on before sale etc. These considerations are,
however, relevant only in the final assessment of likelihood of confusion, not
for the similarity of goods (see, e.g., part B IV 4).
394/1999 L (cl.25) / L (cl.25) (EN)
Often, a particular good will be offered for sale in more than one way, as in
the case of shoes that may be found both in specialised traditional shoeshops and in designer or one-brand shops where they are offered for sale
together with articles of clothing and accessories. An alternative way of
marketing will have to be taken into account provided that it is an established
practice in the relevant territory.
A similar issue arises where a large number of loosely connected or clearly
different goods are sold in the same outlets, as in the case of supermarkets,
department stores, malls, commercial complexes etc.
The diversity of the goods sold and the services provided in this way on the
one hand, and the size of such premises on the other, make it less probable
that the consumer will establish a link between the goods and attribute the
same origin to them, because he is aware that goods sold in supermarkets
come from a multitude of independent producers.
Therefore, the mere fact that certain goods or services may be found in this
type of outlet is at best a weak indication that they are similar.
An additional condition will usually have to be met in these cases in order to
make a similarity of goods more plausible, namely that the goods in question
are also offered in the same section of such stores or supermarkets, where it
is common to find homogeneous goods together.
76/1998 NEGRITELLE (cl.30) / LOS NEGRITOS (cl.5, 29, 30) (EN),
1117/1999 CHATELDON (cl.32) / CHATELDON (cl.33) (EN).
Example of different sales outlets:
Page 212
Wheelchairs – bicycles, 1138/2002 PANTHER (fig.) / Panther (EN):
With regard to the distribution channels of the goods in dispute, it has
to be noted that the goods of the earlier mark are likely to be sold
either in specialist bicycle stores or in a retail store where sporting
equipment is available. On the contrary, the distribution channels of
goods from the contested application are specialised distributors of
medical equipment and devices supplying hospitals and specialised
shops where devices for disabled or physically handicapped people
are sold.
Where the distribution channels are different, the public will often be different
as well.
2.9. The relevant public, i.e. the actual and potential customers
2.9.1.Principles
The determination of the relevant public serves to reveal not only who the
customer of a particular good is and, therefore, what their degree of
sophistication and attention is. It also shows the extent to which the
purchasing public of the respective goods or services coincides. The
customers therefore constitute another factor to be dealt with in the analysis
of the similarity of the goods/services, even though the Court has not
expressly mentioned it as a criterion as such (just as it has not mentioned end
users; as stated, this is an incorrect translation of Verwendungszweck, i.e.
purpose of use).
28/1999 CHEF (cl.21) / CHEF (cl.21) (EN)
The mere fact, however, that the potential customers overlap does not
constitute an indication of similarity. One and the same group of customers
may be in need of goods or services of the most divergent origin and nature.
The fact that, for example, television sets, cars, and books are bought by the
same customers, namely the public at large, has no impact on the similarity
analysis. In many cases either one or both sets of goods are targeted at the
public at large, but the purpose (consumers’ needs covered) in each case is
different. Such circumstances weigh against similarity.
Hence, travel bags and cases for drawing instruments were not found similar,
since, even where they share the same public, they have a different purpose
(cover different consumers’ needs) and will be used in different
circumstances.
1031/1999 STARTER (cl.16) / STARTER (cl.18) (EN)
Page 213
2.9.2.Diverging publics weigh against similarity
If it could be excluded that the two different groups of purchasers would ever
be confronted by both marks in conflict, they could not be confused. However,
in practice, it will hardly ever be possible to make a finding like this. Where it
is highly unlikely that the two goods (or services) will both be encountered by
their potential purchasers in the usual course of events, the purchaser of the
respective other product, in particular a business customer, may still have a
certain knowledge of the pertinent market. Nevertheless, such a situation is a
strong indication of dissimilarity of the goods/services.
713/1999 ALTRA LINK (cl.9) / ULTRALINK (cl.9, 38) (EN)
Divergences between the relevant publics can exist where the goods of both
specification are targeted only to consumers or only to business customers.
Divergences may be present as well in the case where one relevant public
consists of consumers and the other of business customers. It should be
borne in mind, however, that even where only business customers are
targeted, this public also acts as ultimate consumers. Therefore, the
distinction between ultimate consumers and business customers is not
absolute but there are overlaps. (For a definition of the terms consumers and
business customers see above, under B I 3.6.1.c.)
The following pairs of goods are examples of widely divergent publics.
-
Consumers
Different applications of pharmaceuticals: contraceptives for women
and prostate drugs.
Wheelchairs and bicycles
1138/2002 (EN) PANTHER (fig.) / Panther
-
Business customers
Goods only bought by industry, or only sold wholesale, as in the case
of raw materials or commodities sold in bulk. Manufacturers or dealers
are traders and as such have bigger market experience and trade mark
awareness, which renders confusion less likely in their case. Thus, it
was held that insecticides are dissimilar to solvents for the lacquer
industry, since their respective consumers operate at different levels of
the market.
877/1999 SOLVENON (cl.1) / SOLVENAL (cl.5) (EN),
-
Consumers– business customers
Polishing agent intended for domestic use on the one hand, cleaning
agent addressed to the metal working industry on the other.
Page 214
456/2002 ALADDIN / ALADIN (EN)
Containers for contact lenses are small objects used for storing and
protecting contact lenses. The end users of these goods are the
average consumers whereas all the opponent’s goods [surgical,
medical, dental and veterinary apparatus and instruments, artificial
limbs, eyes and teeth; orthopaedic articles; suture materials in class
10] are targeted at surgical, medical, dental or veterinary practitioners.
The applicant’s goods are usually sold at opticians. The applicant’s
goods are not similar to any of the opponent’s goods.
2940/2000 APEX / APEX (EN)
Different price ranges are an important factor if they show that the
goods/services are chosen by entirely different groups of customers. In that
case, the products would be marketed through different distribution channels.
However, buyers of the low-priced goods/services may have heard of the
expensive products and think that the manufacturer or provider has expanded
its product line. Also, buyers of high-priced goods may also buy low-priced
goods. Depending on the case, therefore, different price ranges may or may
not weigh against similarity. (See also above, sub 5.2.2.b.(v).)
Despite different persons or creatures consuming a product, the customers
can still be the same:
The respective goods (milk products- flour and preparations made
from cereals' on one side- and 'foodstuff for animals- including nonmedicated food additives and food supplements for animals' on the
other) are not intended for different end-users. They are intended to
feed different consumers, namely human beings and animals,
respectively. However, the end user of the foodstuff for animals is not
the pet that will eat it, but the human being that takes it from the shelf.
R232/2000-4 S ORLANDO (fig.) / Orlando (EN)
Distribution channels: Where the distribution channels are different, as in
the case of different levels of the market (e.g. raw materials – finished
goods), the overlap between the customers will be small.
2.10. Usual origin
2.10.1. Usual origin, i.e. the undertakings in control
2.10.1.1. Usual origin is the same: goods/services may be similar
2.10.1.1.1. Principle
Page 215
WIPO has suggested the following test of similarity of goods and services:
As a general rule goods are similar if, when offered for sale under an
identical mark, the consuming public would be likely to believe that
they came from the same source. All the circumstances of the case
must be taken into account, including the nature of the goods, the
purpose for which they are used and the trade channels through
which they are marketed, but especially the usual origin of the goods,
and the usual point of sale.
(WIPO, Introduction to Trademark Law & Practice, Item 6.2.1.)
While it is true that the Court has not mentioned the usual origin of the goods
(or services) in conflict as one of the relevant factors for similarity, it should
follow from the 7th recital to the CTMR and the Court’s definition of likelihood
of confusion that the usual origin of the goods or services is of particular
importance for the similarity analysis.
As stated above, under B II 4.1., according to the 7th recital to the CTMR “an
interpretation should be given of the concept of similarity in relation to the
likelihood of confusion”. The Court has defined likelihood of confusion as “the
risk that the public might believe that the goods or services in question come
from the same undertaking or, as the case may be, from economically-linked
undertakings, constitutes a likelihood of confusion” (Canon, paragraph 29). It
follows that the connections between the goods and services must be capable
of suggesting that they come from the same or economically linked
undertakings.
According to the approach of the Opposition Division, the question as to
whether the origin of the goods and services is the same is assessed in the
framework of similarity on an objective basis. The question as to whether the
relevant public is aware of such origin is addressed in the final global
assessment analysis in the context of the sophistication of the customers
(B.IV.5.2.).
From the Court of Justice’s definition of likelihood of confusion it follows that,
where the compared goods and services usually have the same origin, i.e.
come from the same type of undertaking or from economically-linked
undertakings, this is a strong indication of similarity.
1195/1999 DELI / DELI CHEF (EN)
However, two provisos apply to this conclusion:
-
It is not sufficient for the criterion “usual origin” that the goods or services
in question are manufactured or offered by a limited number of
undertakings, such as big concerns that are responsible for a wide range
of goods or services in divergent business sectors. What matters, rather, is
the usual offering of the goods/services in the relevant business sector
Page 216
since only such usual offering can influence the public’s perception. As
stated, the public’s perception will be discussed in the final globalassessment analysis.
-
Nor is it the criterion “usual origin” of relevance for marques de commerce.
Such marks are frequently used to label goods that are not similar among
each other and are not manufactured by the same or economically-linked
undertakings.
The Court of First Instance has recognised that the usual origin may be of
relevance for the similarity of goods.
In ELS/ILS (case T-388/00) the Court held:
It must be observed that, in order to supply services involving the
'development and running of correspondence courses', it is both
helpful and usual to make use of 'educational textbooks and printed
materials namely student workbooks, catalogues, teaching manuals,
printed instruction materials and charts and booklets designed for
students seeking to learn English as a second language'. Thus,
undertakings offering any kind of course often hand out those products
to pupils as support learning materials (paragraph 55).
Similarly, the Court said in MYSTERY/Mixery (case T-99/01):
The Board of Appeal … found that beers and other beverages could come, in
particular in the bottling and marketing stages, from the same undertakings,
could be sold side by side and had the same destination … The Board of
Appeal therefore rightly concluded that the goods concerned in Class 32 were
similar (paragraph 40).
(Emphases added.)
Considering the same usual origin as a factor in the analysis of the similarity
of goods/services should not be misinterpreted as turning the examination of
likelihood of confusion and similarity upside down: by anticipating the outcome
of an analysis, which is supposed to be based on a number of factors (nature,
purpose etc.), which should determine the perception of usual origin in the
mind of the relevant public. Rather, the factor “usual origin” is of relevance
mainly where it can be safely established that the usual origin of the
goods/services is the same or is different.
Example 1: Clothing and footwear
Many manufacturers and designers will design and produce both. This
is especially true of retail outlet chains or chain stores, which will often
provide footwear and clothes under the same trade mark.
R 634/2001-1 “a” (fig.) / ”a” (fig) (EN) (CFI case),
2001/2002 PANAMA JOE'S GRILL-CANTINA-BAR / PANAMA JACK (EN).
Page 217
Example 2: IT, telecoms and video
A prime example for the same undertakings in control of goods and services
are the IT (information technology), telecommunications and video industries
that have been converging since the mid-90s. The same applies to the IT and
electrical engineering industries in general, especially in the area of consumer
electronics. These goods and services are therefore similar.
507/2002 T Flexitel / FLEXITEL (DE) (IT - telecoms),
192-2002 Delta Access (fig.) / DELTA (DE) (consumer electronics),
398/2002C ComConnect/comconnect (DE) (electrical engineering).
Example 3: Entertainment industry
There are manifold interrelations in the entertainment industry. They make it
possible to assume that manufacturers of recorded videocassettes are
economically linked with undertakings that rent such cassettes.
1355-2001 Prinz Dracula / Dracula (DE)
2.10.1.1.2. Established trade custom required
The need for an established trade custom as explained in the previous section
is of particular importance where manufacturers expand their businesses to
adjacent markets, e.g. from clothing to cosmetics. In such situations it is
necessary to determine whether such expansion is common in the industry or,
conversely, whether it may occur in exceptional cases only.
Example where extension has become customary:
-
The trend in the brewing industry to expand its line to alcohol-free beer.
45/1999 FLORA (cl.32) / LORA DI RECOARO (cl.32, 33) (EN),
167/2000 MIXERY (cl. 32) / MYSTERY (cl.29, 30, 32) (DE)
-
shoes – handbags
2008/2000 (EN) TJ’s (shoes) / TJ Collection (handbags),
1440/2000 (EN) Giorgio (shoes) / Giorgio (handbags).
Example where extension is not (yet) common:
-
Internet services – content
The presence of interrelations between Internet service providers and
content providers (vertical integration, e.g. AOL Time Warner or Vivendi
Universal) would make it possible to hold content, such as motion picture
production, to be similar to telecommunications services if this were an
Page 218
established commercial custom. However, it is not yet clear whether or not
this trend will stabilise. This is an example of changing business customs.
Therefore, the OD, for the time being, holds telecommunication services
and the content sent through the telecommunications network to be
dissimilar. This is illustrated by the following case:
Production of audio-visual work for television, cinema and radio (cl. 41) v
telecommunications (cl. 38). Telecommunication providers will release
these performances; however, this does not make the services similar.
Their different nature and purpose (to communicate versus to inform or
entertain) make these services different.
1305-2001 TELENOR CTMA / TNE TELENORDEST (EN)
-
Jewellery - hotel services (example Bulgari in Italy not sufficient)
Finally, it is sufficient if a substantial part of the goods/services are made or
provided by the same or economically-linked enterprises. This may be the
case, e.g., if the usual origin of the goods in question is identical only in the
upscale market segment, e.g. in the case of clothing and cosmetics. In such
cases, however, the similarity of the goods or services may only be very
remote if many other similarity factors are different, as is the case in the
example of clothing and cosmetics
1642/2002 EVOLUTION (fig) / Evolution the World of Sacred Device (EN)
2.10.1.1.3. Marketplace reality is decisive
Overlaps of origin must always be clearly established from the marketplace
reality and cannot be assumed on a theoretical basis. For instance, financial
services are not similar to automatic vending machines. Financial
establishments, or companies that are economically-linked with them, do not
usually manufacture automatic vending machines.
Decision R 518/2000-1 EUROPA 6000 / EUROPAY is therefore not followed
in this respect. The OD practice is set out in case 507/2002 T Flexitel /
FLEXITEL (DE).
It is also not possible to take theories derived from market research as a basis
for the conclusion that the goods/services in question are usually offered
under the responsibility of the same undertaking.
Research has identified the following two factors as suggesting extension of a
trade mark owner’s business activities to different fields:
-
Strength of the mark
“Level of abstraction” of the trade mark position
Example:
Page 219
The trade mark “Virgin” in the U.K. is said to be linked to “rebellion against the
establishment”. Thus, the mark can be used for many different
goods/services. The mark was initially used for mail order of records, now it is
serves, inter alia, for an airline and a financial service company.
Since no concrete business habits have been established in the sense that
the services record mail order, airlines, and financial services are usually
provided by the same or economically-linked undertakings, these goods and
services are not similar. Even if a such business habits were established, that
alone would not make the goods and services similar, given their divergences
in respect of other similarity criteria, such as nature, purpose etc.
2.10.1.2. Usual origin is different: goods/services may be dissimilar
Conversely, if the goods in question are made by different kinds of
undertakings, this weighs strongly against similarity.
304/1999 DELI-BIMBO (cl.30) / DELI CHEF (cl.30, 42) (ES)
For instance, cars and bicycles are usually made by different undertakings.
The fact that some companies, such as Peugeot, manufacture both is not
decisive because it is not an established trade custom.
Similarly, wine and coffee were held to be dissimilar because these goods
originate from different manufacturers.
3041/2001 CANALETTO (fig.) / CANALETTO (EN)
2.10.2. Same or similar production places and/or methods of
manufacture
If it cannot be clearly established whether the goods in question are
manufactured by the same kind of undertaking, it may be possible to infer
such common origin if the place or geographical zone of production of the
goods, or the time or method of manufacture are the same.
It should be noted that in Canon the Court specifically referred to the place of
production and held that, in order to demonstrate that there is no likelihood of
confusion, it is not sufficient to simply show that there is no likelihood of the
public being confused as to the place of production of the goods (Canon,
paragraph 29). This statement, however, should not be interpreted in the
opposite sense, namely that the fact that the place of production cannot be a
strong indicator that the goods/services in question come from the same
source.
It may be that despite different places of manufacture the goods are still
similar. For instance, books and electronic media (goods in competition, emedia substituting books) are both goods of a publishing house, as is the
equivalent content provided online.
Page 220
Examples regarding manufacturing sites:
-
Same sites
All kinds of chemicals: varnishes, lacquers, colorants and mordants are
normally produced in the same production enterprises, normally
specialised chemical companies,
Rentolin/RENOLIN, R 0837/2001-3 (EN)
-
Different sites
Video film cassettes, production of films for cinemas and television
organisations et al. v motion picture cameras, television filming and
recording devices (Canon)
It should be repeated that while the same manufacturing sites suggest
a common usual origin, different manufacturing sites do not exclude
that the goods come from the same or economically-linked
undertakings.
Examples regarding method of manufacture:
-
Same method
Belts (cl. 25) and shoes (cl. 25):
1481/2002 ROHDE / DANHO (fig) (DE)
-
Different method
Pharmaceutical products differ from napkins and napkin pants for
incontinence with regard to their method of production.
R 0807/2000-3 DEMARA / DEMAR ANTIBIOTICOS, S.A. (EN)
2.10.3. Relation to other factors
The factor is of relevance mainly where the usual origin can safely be
established independent of a detailed analysis of the other factors and where
it is clear that the public is aware thereof.
3.
Similarity of goods: raw materials, ingredients and parts /
components / fittings
3.1. Raw materials
Page 221
In most cases, the mere fact that one good is used for the manufacture of
another will not be sufficient in itself to show that the goods are similar, as
their nature, intended purpose and customers may be quite distinct. Raw
material is intended for use in industry rather than for direct purchase by the
final consumer. This was held in the cases of animal skins and clothing or
precious metals and jewellery.
46/1999 OXYDO (cl.25) / OXYDO LAMBFURS (cl.18) (EN),
452/1999 ECO-PEL (cl.25) / ECOPEL (cl.18) (DE),
149/2001 Arcadia (fig) (cl 14) / Arcadia (cl14),
1190/1999 FOUR SEASONS (cl.25) / 12 SEASONS (cl.24, 25) (EN).
However, the final conclusion may depend on the specific circumstances of
the case, such as the degree of transformation of the raw material, if it is the
basic component of the final good, the extent to which it determines the
overall price of the final good, whether the trade mark of the intermediate
product used “survives” in the final good, etc. The greater the significance of
the raw material for the final good, the more likely will the goods be similar.
3.2. Ingredients of prepared food
A specific example in this context is that of the basic ingredients included in
prepared foods.
As regards similarity between ingredients included in prrepared food and
prepared food itself it is OD practice The OD does not go as far as the Board
of Appeal according to whose case-law almost all foodstuffs have at least a
certain degree of similarity (see already above, under 5.2.2.b. (i)). The current
OD practice is to examine if the ingredient can be considered as a basic
component of the final product. Furthermore, the final conclusion may depend
on other factors, such as the degree of transformation, whether the public
may expect the ingredient to be produced by the same manufacturers or the
way in which the two products will be sold on the market.
- OD practice
In most cases, the mere fact that one basic ingredient is used for the
manufacture of another will not be sufficient in itself to show that the goods
are similar, as their nature, purpose and customers are generally be quite
distinct.
1955/2001 HAPPY / HAPI (EN) (eggs v ice cream; coffee, cocoa, sugar,
honey v ice cream),
1926/2001 EARTHGRAINS (fig) / EURO GRAIN (EN) (bread v flour),
241/2001 CANDY CASTLE (fig) / CANDY CARL (EN) (sugar, honey treacle v
confectionery).
However, at least a low degree of similarity can exist as long as the basic
ingredient can be considered as a main ingredient of the prepared dish.
Page 222
1955/2001 HAPPY / HAPI (EN) (milk, milk products v ice cream).
OD does not go as far as some decisions of the Boards of Appeal according
to which almost all foodstuffs have at least a certain degree of similarity (see
already above, under 5.2.2.b. (i)).
- BoA practice
The Third Board of Appeal seems to have a much more liberal approach as
regards foodstuffs. The OD position is that there may be a degree of similarity
between an ingredient and a prepared dish due to the fact that this ingredient
is one of the dominant ingredients or that the consumer may reasonably
expect to find that ingredient in the prepared dish. In contrast The Board
seems to considers that as soon as there is a possibility that an ingredient
may be included in the preparation there is a degree of similarity between the
goods. According to that logic, for example, the Third Board of Appeal will
consider that coffee, tea, cacao, sugar may be considered similar to ice cream
or confectionery.
R 152/2000-3 DIPPIN’S DOTS / DIPPIN’DOTS (fig) (EN),
R 253/2000-3 SELZ SODA (fig) / SELZ (EN).
The same Board has very often based its reasoning also on another wider
criterion, which is that foodstuffs will quite often be combined. Although they
are independent goods, they will be offered together either in restaurants or in
supermarkets (vinegar and sugar).
Following the Third Board of Appeal position, almost every foodstuff will have
at least a low degree of similarity with other foodstuffs.
The First Board seems to have taken a similar approach: concur. In R
160/2002-1 O SOLE MIO! / Sole Mio (fig), it held flour and preparations made
from cereals, bread, pastry, salt, edible oils and fats to be similar to pizzas.
The goods are similar not only because they are basic food products but also
because they are basic ingredients of pizzas.
The approach of these decisions would lead to a finding of at least some
similarity between all foodstuffs. This is however, in the view of OD, not in line
with the general principles established by the ECJ, and OD will continue to
base its decisions on the approach described above.
3.3. Parts, components and fittings
Another common case is that of the parts, fittings and components, integrated
in composite industrial products, such as machines, installations and the like.
The remarks made in respect of raw materials are to a certain extent also
valid in the case of parts and components. The mere fact that a certain good
is a component of a complex product will not necessarily be conclusive for a
finding of similarity, as held for example in the case of valve actuators and
Page 223
hydraulic machine tools. Similarity will be lacking particularly if the
components were bought owing to their technical specifications.
693/1999 MAS (cl.6, 7, 8, 9) / aMAX (cl.7, 9) (EN),
865-2001 i-scan / High-Scan (DE).
However, parts and fittings are often produced and/or sold by the same
undertaking that manufactures the final product and target the same
purchasing public, as in the case of spare or replacement parts. Depending
on the good concerned, the public may also expect the component to be
produced by, or under the control of, the “original” manufacturer, which is a
factor that suggest that the goods are similar.
In general, a variety of factors may be significant in each particular case. For
instance, if the component is also used or sold independently, or if it is
particularly important for the function of the machine, this will weigh in favour
of similarity.
In 665/2000 Eureco (cl. 12 – motor land vehicles) / Eureco (cl. 12 - tyres) it
was held that despite differences between the goods, the close proximity
between them and the complementary nature of the goods led to a low
degree of similarity. On the other hand, in 199/1999 CUPPER (cl.12) /
COOPER (cl.12) (EN) the OD concluded that the goods vehicles and tyres
are complementary but that the end users will distinguish the different origin of
the goods and that the goods belong to different markets. The degree of
similarity of vehicles and tyres is very low. For a finding of likelihood of
confusion, therefore, the signs must be identical or at least very similar.
4.
The comparison of services with services
In principle, the same factors as for comparing goods with goods are relevant
for the comparison of services with services. However, in applying these
factors, the basic differences between goods and services, and in particular
the lack of embodiment of the services, must be considered.
Below, a number of examples for the application of various similarity factors in
OD practice are given.
4.1. Nature
The nature can be defined, in particular, as the manner in which the service is
provided.
The following examples illustrate a number of specific approaches to applying
the nature criterion to services.
-
Services falling under the same broader category
Financial management has the same nature as business management
as both are management services. On the other hand, they have a
Page 224
different purpose, the first being a financial purpose, the latter a
business purpose.
1621/2002 EUROHYPO / EUROHYPO (EN)
-
Nature defined by the “composition” of a service
The service production of television programmes is similar to
entertainment because the latter service includes television
entertainment which is the outcome of a number of distinct but
complementary activities generally provided by scriptwriters, actors,
cameramen, lightning technicians, directors, makeup artists, etc. The
expression production of entertainment embraces all these services.
R 1226/2000-1 GEO TV / GEO (fig) (EN)
4.2. Complementary services
4.2.1.Complementary character (similarity) accepted
Insurance is a complementary service to banking services that might be
offered by banks themselves or other financial institutions. Furthermore, it is
not uncommon for insurance companies to also carry out bank activities and
the financial market of today is seeing an integration between banks and
insurance companies for instance through mergers and acquisitions. The
public at large, which will normally use the services for different purposes, will
associate the activities with each other since they might be offered by the
same company and even in the same premises.
R 38/2000-1 ADVANTA (fig) / ADVANTAGE (fig) (EN),
2507/2001 BAMB (fig) / BAM (EN).
Travel arrangement (cl. 39) is complementary to providing food and drink and
temporary accommodation in hotels and restaurants (cl. 42). Travelling
necessarily involves accommodation and catering. Moreover, the services are
commonly offered together by travel agencies in the form of package
holidays.
1356-2000 atlas (fig) / ATLASREISEN, 1357-2000 atlas (fig) / ATLASREISEN
(fig) (both EN)
Building services (cl. 37) and designing hotels (and/or businesses) for
entertaining and providing leisure for guests (cl. 42) are complementary.
1469-1999 INTER HOTEL (fig) / DEUTSCHE INTERHOTEL (EN)
Page 225
4.2.2.Complementary character (similarity) denied
Instruction and entertainment services and publishing services are not
complementary since the link between them is not strong enough: The
instruction and entertainment services may include publication of instruction
or entertainment materials as part of the main services. However, this is not
sufficient to render these services similar. Materials are very often published
as a support for many activities. But see below, under sec. 6.3.2.b.
712/2001 GRUPO TELEKOM (fig) / TELEKOM (fig) (EN)
4.3. Services in competition
Edition of digital and analogue recording carriers containing certain
information v publication and edition of books, newspaper and magazine (both
services in cl. 41). They are similar because publishing houses offer their
texts not only in print but also in digital or analogue form.
1198/2002 MicroFocus (fig) / FOCUS (DE)
4.4. The relevant public
Because of only a small overlap of the publics concerned, insurance and
financial affairs (cl. 36, CTMA) were held to be only very remotely similar to
the edition of multimedia chip card systems (cl. 42), or to chip cards, magnetic
cards, bar code carriers, bar code cards (cl. 9). The edition of chip card
systems is directed at business customers, not at consumer customers who
mainly use the insurance and financial affairs services. Business customers,
on the other hand, will be more attentive and recognise that insurance and
financial companies do not usually offer the technological card services or
manufacture the cards themselves. Nevertheless, a small overlap between
the relevant public does exist because business customers also act as private
individuals and, thus, as ultimate consumer customers.
2066/2001 DENCARE / DentCard (fig)(DE)
4.5. Usual origin
Auto care services v packaging and storage of goods: dissimilar.
The average consumer is aware that the relevant sectors of industry are
clearly different and thus he is not likely to attribute the same origin to them.
757-2000, SMART / SMARTRAIL (EN)
Production of audio-visual work for television, cinema and radio and
advertising: dissimilar.
In the field of advertising it is very common to produce TV
commercials (i.e. advertisements on radio or television). To that
Page 226
extent there could be a link between these services. However, the
company which renders the service of advertising, whose purpose is
the promotion of goods or services for sale, does not usually produce
the commercials themselves but subcontracts this service to a
company specialised in producing (i.e. organising, directing
supervising and presenting). Accordingly, the nature is different and
so are the users. It is unlikely that the company which needs to
promote a product or a service would direct its attention to a producer
and not to an advertiser. Therefore, in spite of the connections
between these services, they are considered different.
1305-2001 TELENOR,
TELENORDEST(fig) (EN)
TELENOR
MEDIA
España
S.A.
/
TNE
See also 477-2001 THE BOX (fig)(cl. 9) / BOXNEWS (cl. 35) (EN), 2272/2001
PICCOLINO et al. (cl. 25) / PIKOLINOS (fig) (cl. 35) (EN).
5.
The comparison between goods and services
5.1. In general
The same principles that apply for the comparison between goods & goods
and services & services apply in cases where goods are compared with
services.
As a starting point, there are numerous differences between goods and
services. By their nature goods are generally dissimilar to services. This is
because goods are articles of trade, wares, merchandise, or real estate. Their
sale usually entails the transfer of title in something physical, i.e. movables or
real estate. Services, on the other hand, consist in the provision of intangible
activities. Yet a variety of services provided over the Internet are tantamount
to goods, namely music, videos, software, and regular publications.
2607/2000 ENVIROMET, ECOMET / EnviroMed (EN)
Goods and services can, however, be complementary (e.g. maintenance may
be complementary to the good concerned). Services can also have the same
purpose, i.e. intended use, and thus be in competition with goods. For
instance, car leasing, a financial service, may be considered in competition
with cars.
It follows that, under certain circumstances, similarity between goods and
services can be found.
Two specific categories may be distinguished: services usually provided
independently of the corresponding goods or vice versa and services where
no such assumption can be made.
Page 227
5.2. Services usually provided to customers without the need to
purchase the corresponding goods (or vice versa)
A trade custom may be established according to which the same undertakings
usually provide services to customers independent of whether or not they
have purchased the corresponding goods (or vice versa). That means that the
services are not merely ancillary to the goods, such as the repair or
maintenance of a machine by the manufacturer of that machine. Such a trade
custom strongly weighs in favour of similarity.
Examples:
-
Hygienic and beauty care v cosmetics
1546-2001 Megadent / MENTADENT (DE)
-
Film rental v motion pictures; services of an optician
automatic vending machines v rental of such machines
v spectacles;
1355-2001 Prinz Dracula (fig.) / Dracula (DE)
-
Goods and services that undertakings provide independently of each
other: the information technology (IT) and telecommunications (telco)
business
Apparatus for recording, transmission or reproduction of sound, images or
data (cl. 9) are similar to telecommunications (cl. 38)
507/2002 FLEXITEL / T --- Flexitel (fig) (DE) against 1936/2002
WELCOME / WELCOME Real Time (EN) and 1642/2002 evolution (fig) /
EVOLUTION The World of Sacred Device (EN), which are not followed;
but see section 8.4. where it is stated that IT/telco goods and services are
not similar to any other (non IT/telco) goods/service simply because they
are used in conjunction with each other
-
Certain services whose object is the production of a good; example:
printed matter v publication:
Publishing services v books: The publishing services constitute a natural
part of the goods. The book would not appear on the market without the
publication. The core activity is to publish books and in reality it is more for
administrative classification reasons that there is a difference between the
goods and services. In the market they are clearly similar.
1252/2001 NOVIA / NOVIA (fig) (EN)
Page 228
See also 507/2002 FLEXITEL / T --- Flexitel (fig) (DE): printed matter (cl.
16) v publication and edition of certain manuals, brochures for teaching
purposes (cl. 41), and
1837-2001 LE MERIDIEN (fig) (cl. 16) / MERIDIANI (cl. 41) (EN) and
1252-2001 NOVA (class 16) / NOVA (fig) (cl. 41) (EN) on similarity
between printed matter and publication of printed matter due to the core
business of publishing companies.
-
Further examples:
•
Building materials and customer service with regard to the sale of
buildings and building materials: similar
9/2001 JAM (cl. 19)(fig.) / JM (fig) (class 35)(EN)
•
Fashion design services and fashion information services and
clothing: similar
1522/1999 LILLYWHITES (fig.) cl.25 / LILLY (cl. 42) (EN)
See also 2374/2001 CITY DESK (cl. 42) / citi (fig) (cl. 9) (EN),
1865/2001 VORTEC (fig) (cl. 9) / VARTEC (cl. 38) (EN).)
5.3. Services ancillary to goods, i.e. usually provided together with
goods (or vice versa)
Where services are ancillary to goods – or where goods are ancillary to
services - similarity is more difficult to establish because the public might
believe that the manufacturer of the goods is not a genuine service company,
or vice versa. A higher degree of similarity of the signs and / or an enhanced
degree of distinctiveness of the earlier mark are needed to establish a
5.3.1.Goods and services dissimilar
5.3.1.1. Usual origin of goods and services is not the same
5.3.1.1.1. Principle
If the usual origin of the goods and services is not the same or that of an
economically-linked enterprise, the goods and services are dissimilar.
5.3.1.1.2. Services of transport, packaging and storage of goods
Services of transport, packaging and storage of goods have been considered
not to be similar to goods in classes 9, 25, and 29, 32. These services are
provided by specialist transport companies whose business is not the
manufacture and sales of goods.
Page 229
297-2000
EN
743-2000
780-2000
1075-2000
EN
EN
EN
2850-2000
EN
2019-2001
EN
2061-2001
EN
FRUTTAVIVA et al
29,32)
CHIP SET (cl. 39)
EAR (fig) (cl. 9)
RAINHA et al (fig.)
25)
SPORT AUTHORITY
39)
IKKS COMPANY et
(cl. 25)
IDE (fig) (cl. 39)
(cl. FRUTA VIVA JUVER
(cl. 39)
CHIP (fig) (cl. 9)
EAR (fig) (cl. 37)
(cl. REINA DECO (fig) (cl.
39)
(cl. THE
SPORTS
AUTHORITY (cl. 25)
al. KKS (fig) (cl. 39)
/ IDEM (cl. 9)
However, similarity must be assumed between services of transport,
packaging and storage of goods and, e.g., furniture. It is common for a
furniture store to take care of the shipping, either by a fleet of vans of its own
or by an associated transport company.
5.3.1.1.3. Other cases
If the fact that the goods and services are offered together is merely
incidental, as in the case of promotional material or gifts, the connection will
not be strong enough. Thus, travel bags were found dissimilar to travel
agency services.
R 72/2000-1 (EN) affirming 964/1999 THE GREY LINE (cl.39) / GREYLINE
(cl.18, 25, 28) (EN) (affirmed)
5.3.1.2. Usual origin is the same but either good or service is not part of the
core business
When considering the similarity of goods and services it is important to take
into account the core business of the undertakings providing the respective
goods and services.
For example, the core business of advertising agencies is to provide
advertising services to other businesses. Even if the goods at issue may
appear in the advertisements, this is insufficient for finding similarity, because
the nature of advertising services is fundamentally different from the
manufacture of goods. The same reasoning will apply in cases where the
advertising services are compared with class 9 goods that can be used as a
medium for disseminating advertising.
1621/2002 EUROHYPO / EUROPHYPO (EN)
Furthermore, the fact that most undertakings rely on advertising or other
promotional tools to stimulate business does nnot make these tools similar to
the goods promoted. The reason is that companies engaged in promoting
their goods do not usually offer promotion services to third parties.
5.3.2.Goods and services may be (remotely) similar
5.3.2.1. Services provided in connection with goods
Page 230
5.3.2.1.1. Installation, maintenance and repair services
In the relation between goods and their installation, maintenance and repair,
similarity of goods and services could be sustainable if it is common in the
relevant market sector for the manufacturer of the goods to also provide such
services.
In such cases a finding of likelihood of confusion could be justified, especially
if the signs are identical or very similar and/or the earlier mark enjoys a
reputation.
-
class 9 goods
Data processing installations and computers, and components therefor
were found similar to installation and repair of electronic apparatuses.
1629-2001 EXPRESSO (cl. 37) / XPRESSO (fig) (cl 9)
On relation between installation services and class 9 goods see also:
461-1999 LIS (cl. 9) / LIS (cl. 37) (EN),
780-2000 EAR (fig) (cl. 9) / EAR (fig) (cl. 37) (EN),
1095-2001 ADCO (cl. 9) / ADCON (cl. 37) (EN) ),
1775-2001 NOHMI (cl. 9) / NOMI (fig.) (cl. 37) (EN),
352/2002 CALIFORNIA (cl. 12) / CALIFORNIA EXCLUSIVE (cl. 37) (EN).
1671/2002 ACOME (fig) / ocom (EN) repair services and data processing
equipment, computers: link found.
-
Installation, maintenance and repair of water purification apparatus and
installations v water treatment apparatus and installations: similar
1800/2002 CRISTAL / CLASSIC CRYSTAL (fig)(EN);
another example for maintenance: 40/2002 CALL ONE / ALL ONE (EN).
-
For the relation between automobiles and parts thereof and motor vehicle
maintenance and repair services see S-CLASS (cl. 12) / S TYPE (cl. 37) R
969/2000-1 (EN): similar.
Furniture and the installation of furniture: similar, 873/2002 space / space
2 (fig) (DE)
-
Weighing equipment; namely industrial weight display terminals for
weighing scales cl. 9:
It is common in the field of industrial equipment for it to be serviced and
maintained by the manufacturer or a related company. Installation,
preservation and repair services electronic apparatus are normally
provided by the manufacturer of such very specific and delicate apparatus
itself or by specialised companies which may refer to the trade mark of the
producer if it is necessary to indicate the intended purpose of a service.
Therefore, the goods and services are similar. See R 344/2001-3 LYNX /
LYNX (fig) (EN).
Page 231
5.3.2.1.2. Advisory services
Advisory services, consultancy and the like are a further example where
similarity between goods and services can be found under conditions similar
to those concerning maintenance, installation and repair.
1800/2002 (EN): consulting, advisory, and information services relating to
installation, maintenance and repair of water purification apparatus and
installations v water treatment apparatus and installations.
1390/2001 (focus (fig.) / FOCUS) (cl. 7, 37) (FR) advisory services relating to
the installation, maintenance and repair of machines v laser cutting machine.
5.3.2.2. Goods provided in connection with services
In some cases similarity between the goods and services can be found when
goods are essential for the provision of the service. Then a complementary
relationship exists between the goods and services. Thus, the goods
educational material are of central importance for education services and their
strong connection was considered an indication of similarity. But see above,
under 5.4.2.b.
1207/1999 ILS (cl. 9, 16, 41) / ELS INTERNATIONAL (cl. 35, 41) (EN),
affirmed R 75/2000-3 (EN) and, as for similarity of goods and services,
affirmed by the CFI as well. See above 2.10.1.1.1.
Further example:
Providing of travel information v audiotapes, videotapes, CDs, laser discs,
films and motion pictures, computer software, and CD-ROM; magazines,
books, newspapers, newsletters and other printed publications: “Certain
degree of similarity” between these specific services and the goods which
also encompass specific goods related to travel information because goods
could be considered as specifically made for providing such information.
880/2001 TIME / TIM (fig) (EN)
5.3.2.3. Restaurant services - foodstuffs
There is an average degree of similarity where the foodstuffs are offered
independent of restaurant services and are not merely ancillary to these
services. Foodstuffs offered independently include finished meals that may be
taken away (“for here or for to go?”) as well as certain processed or
unprocessed types of food, such as confectionery, ice cream (processed) or
meat (unprocessed) because confectioneries/bakeries, ice cream parlours
and butcher’s shops may also offer the consumption of their goods in an
adjacent fast-food restaurant or café.
On the other hand, merely ancillary goods are only remotely similar. Such
ancillary goods include semi-processed food, such as jellies, jams; preserved
and cooked fruits and vegetables, as well as certain drinks, such as coffee.
The question as to whether a likelihood of confusion can be found will depend
Page 232
on the other factors, in particular on the degree of similarity of signs and the
degree of distinctiveness of the earlier mark.
Finally, there is one category of foodstuffs that are not similar to restaurant
services at all. This category includes certain basic or unprocessed kinds of
food, such as eggs, flour, salt, as well as certain drinks, such as soft drinks.
These goods are not similar to restaurant services because even if they are
labelled with identical marks, the consumers will not believe that restaurants
are in control of their manufacturing.
The Third Board of Appeal found striking differences between services related
to bars, restaurants and night clubs, as compared with syrups, beer, soft
drinks and non-alcoholic drinks:
The services are related to the provision of meals and drinks ready to
be consumed and consist in preparing, cooking and offering the
meals. They have nothing to do with the production and marketing of
the food and drinks as such. Bars, restaurants and night clubs offer
all kind of drinks bearing their respective signs, but in these places
the client is not buying the bottle containing the beverage, but the
service of having the drink prepared and served ready to be drunk in
a specific ambience he considers comfortable and attractive.
R 536/2001-3 & R 674/2001-3 NEGRA MODELO /MODELO (EN), pending
before the CFI
5.3.2.4. Sports activities and sports clothes
Sports activities (cl. 41) and sports clothes, sports shoes (cl. 25), gymnastic
and sporting articles (cl. 28) have been found similar because of
manufacturers of goods sponsoring activities focusing on these goods. It
should be noted, however, that sponsoring activities are only one and not the
decisive criterion. Apart from that, these activities must be distinguished from
merchandising.
638/2002 CARRERA / CARRERA (fig) (DE).
Not followed: OD 2880-2000 MERLIN / LEROY MERLIN (fig)
Page 233
VI.
SPECIFIC GOODS AND SERVICES COMPARED
1.
IT/telco goods and services
IT and telecommunications goods and services, i.e. typically goods and
services included in classes 9 or 38, such as computers (cl. 9) or
telecommunication services, are similar between them.
Frequently opponents base oppositions on such goods and services arguing
that they either form part of the contested goods or that the contested
services are carried out using such goods or services.
When IT/telco goods and services are compared to other services, it is not
decisive whether such other services are performed using IT or
telecommunications technology. Thus, searching services in the field of
intellectual property are not similar to IT/telco services simply because
computer databases may be used to make such a search. The nature of the
services and their purpose (consumer needs met) are obviously different.
Therefore consumers will not expect these services to originate from the
same source as the IT/telco services which may be used in this context. They
are therefore dissimilar.
The mere fact that IT/telco goods or services are in some way connected to
other goods or the performance of other services is not sufficient to allow for a
finding of similarity.
1668/2000 T (device) (DE) (cl. 9, 16, 36, 38, 41, 42, etc.) / iti (device) (cl. 42),
2095/2001 pia (devices) (DE) (cl. 35, 41 and 42) / PIA (cl. 9, 35, 42).
When telecommunications services are compared with goods promoted by
using these services a distinction must be made between the
telecommunications media and the content disseminated using these media.
The business of a telecommunications operator is to transmit content but not
to manufacture and sell the goods whose promotion is the subject matter of
that content (e.g. cl. 3 goods, such as perfumes, in the case of an electronic
mail service). Consequently, there will be no similarity between these services
and goods.
1073-2001 SECRET PLEASURES (cl. 3) / PRIVATEPLEASURES.COM (cl.
38) (EN)
Apparatus for the transmission or reproduction of sound or images (cl. 9) are
not similar to education and training services.
996/2001 TELIA / TELENIA (EN)
The detailed discussion which follows concerning the comparison of repair,
maintenance et al. of motor land vehicles (cl. 37) and electronic databases (cl.
9) et al is in line with the above principles.
Page 234
Electronic databases and technical documentation are not any more
related to the vehicle industry than to any other product or service. The
mere fact that the sale, rental or servicing of motor cars may involve the
use of databases or the publication of catalogues or manuals cannot
lead the public to believe that such goods and services have the same
origin. Their nature is clearly distinct and even where goods and
services are used in the sale, servicing and rental of motor vehicles,
they remain ancillary to the main business activity. Moreover, operators
in the vehicle industry usually commission the development of
electronic tools and the publication of promotional and technical
publications from companies specialised in the creative part. It follows
that the goods and services are addressed to the industry itself, rather
than the purchaser of the final product. Therefore, not only are the endusers thereof different, but they also operate at different levels of the
market. Furthermore, it is self-evident that information technology and
publishing applications are not in competition with the sale, servicing
and rental of motor cars and that they are not offered through the same
commercial channels. Even where the buyer of motor cars gets
technical or promotional material as a complement of the main product,
he is not interested in the entity that carried out the creative work, and
he is not likely to confuse it with the manufacturer of the vehicle, in the
same way that he is not going to confuse, for example, the publisher of
a specialised car magazine with the manufacturer of the cars to which
such a publication refers.
469-2001 LEX et al. / LEX-COM (EN)
2.
Similarity of retail services among themselves and of goods
and retail services
In Communication No 03/01 of the President of the Office of 12 March 2001
there is an express indication regarding the conflict that may arise between
retail store services and the goods which are sold in these department stores.
As regards conflicts between services and goods, the Office takes the
view that, while a “similarity” between goods sold at retail and retail
services cannot be denied in the abstract, the risk of confusion is
unlikely between retail services on the one hand and particular goods
on the other except in very particular circumstances, such as when the
respective trade marks are identical or almost so and well-established
in the market. Each case that arises will of course be dealt with on its
own merits.
As regards the similarity of goods or services, the following principles apply:
First, retail services not limited in the specification to the sale of particular
goods are not similar to all goods that are capable of being sold at retail.
Page 235
Second, retail services related to the sale of particular goods are similar to
these particular goods.
Third, retail services related to the sale of particular goods and other goods
are not similar.
Fourth, retail services not limited in the specification to the sale of particular
goods are similar to retail services related to the sale of specific goods.
Fifth, the question whether retail services related to specific goods are similar
to retail services related to other specific goods will depend on the degree of
similarity between those goods.
It must be emphasised that a finding of similarity of the services with goods
does not lead to the conclusion that there exists likelihood of confusion. This
will depend on the other factors.
3.
Footwear, clothing, headgear, handbags, accessories
3.1. Footwear and clothing are similar
Footwear, shoes and boots serve the same purpose, in principle, as
the items of clothing listed: they are intended for wear by humans, both
as protection from the elements and as articles of fashion and are, as
such, found often in the same departments of large departmental
stores and in the same retail outlets. Consumers, when seeking to
purchase clothes, will expect to find footwear in the same department
or shop and vice versa. Moreover, many manufacturers and designers
will design and produce both. This is especially true of retail outlet
chains or chain stores, which will often provide footwear and clothes
under the same trade mark.
See R 634/2001-1 “a” (fig) / “a” (fig) (EN).
This decision confirms the OD’s practice (e.g. 1866/2002 KE ELECTRONICS
(fig) / KE (fig) (EN) for clothing – footwear – headgear).
The Third Board of Appeal now shares this view in principle. See
R0590/2000-3 B BOOMERANG / BOOMERANG (fig) (EN) and subsequently
R0494/1999-3 JELLO SCHUHPARK / Schuhpark (CFI case) against its
earlier, more restrictive decision in R 562/2000-3, WORKERS FOR
FREEDOM / WORKER'S (EN)).
3.2. Headgear and clothing are similar
The goods “headgear” of the CTM application are of an identical or
very similar nature as the goods “clothing” of the earlier mark, in
particular as regards types of clothing which is supposed to give some
protection against wind and rain. Furthermore, headgear is not only
seen as a means for protecting the head against weather influences,
but also as a fashion article which is supposed to match the outfit and,
for this reason, is sometimes chosen as a complementary item to
Page 236
clothing. Therefore, not only the end users, but also the purpose of the
respective goods are identical in this regard. Moreover, the distribution
channels of the respective goods are sometimes identical, and their
sales outlets and departments are often either the same or at least
closely connected. Taking all these factors into account, the goods
“headgear” and “clothing” are considered similar to each other.
845/2000 M. Lorenzo (fig) / (fig) (EN)
The word clothing covers a broad range of goods. A piece of cloth used as a
wrapping around the body as a dress is a form of clothing. The same item can
also be used as a shawl to cover the head or be transformed into a turban and
then amounts to “headgear”.
R 165/1998-2 ENIGMA ITALY / ENIGMA (fig) (FR)
3.3. Handbags and clothing are similar
Handbags are likely to be considered as accessories to clothing. See above,
under 5.2.5.b.
3.4. Specific accessories to clothing
In a case of absolute identity of the signs, goods in cl. 26 such as buttons,
pressure buttons, buckles, eyelets, plates or rivets may give rise to likelihood
of confusion if the earlier trade mark protects clothing and footwear in cl. 25
as those goods in cl. 26 are accessories to those of the earlier trade mark,
and the applicant’s trade mark may remain visible on the resulting garment or
shoes. Even if the final product also bears another trade mark, there is no way
of ensuring that consumers who see the final product in a shop do not
attribute responsibility for the entire product to the opponent
R 267/1999-1 ZANELLA / ZANELLA (IT)
4.
Pharmaceuticals
4.1. Pharmaceuticals and pharmaceuticals
Pharmaceuticals are generally considered to be highly similar to other
pharmaceuticals, while the degree of similarity may be lower if the different
pharmaceutical indications clearly differ.
Several similarity criteria are usually met:
Nature: specific chemical products.
Purpose: broadly speaking, healing / curing.
Distribution channels: in particular pharmacies.
Usual origin: pharmaceutical industry manufacturing a wide variety of drugs
with various therapeutic indications; consumers are aware of this.
Page 237
4.2. Pharmaceuticals and cosmetics
In the OD’s view, there is some similarity when comparing the general
categories, but the similarity may be low. The Third Board of Appeal also
considered pharmaceuticals and certain body care goods to be similar. See R
433/2002-3 TEI-FU / TAI-FUN.
‘Body care products’ of the application, namely perfumes, colognes,
cosmetics and deodorants can be manufactured by the same or
similar company which produces medicines or pharmaceuticals.
Although medicated goods are usually manufactured by
pharmaceutical companies, it is a matter of fact that nowadays
companies whose core business is body care protection produce
both medical and non-medical products. Besides, the sale outlets
and the distribution channels of the goods in dispute are sometimes
the same (for example pharmacies where non-medical products are
also sold and perfumeries where medical goods are marketed).
In contrast, the First Board of Appeal held sanitary products and cosmetics to
be dissimilar to pharmaceuticals:
Sanitary products, cosmetics and perfumes are dissimilar since both the
method of use and the relevant consumers to which they are addressed are
different. Additionally, most of the time they are also sold in different
stores. Sanitary products, cosmetics and perfumes are available for
purchase in grocery stores, supermarkets or perfumeries while
pharmaceutical products are only available in pharmacies. In the case that
they are sold in the same outlet, they would be placed on different shelves.
R 0984/2001-1 Gry / GRY (EN)
When comparing specific pharmaceuticals they may be entirely dissimilar with
cosmetics in general or specific cosmetics. In some cases, specific
pharmaceuticals and specific cosmetics were found to be similar:
Pharmaceutical preparations for treating medical conditions of the skin
or of the hair can take the form of creams or lotions. Both sets of goods
have the same method of use as cosmetics, which also include creams
and lotions.
1981/2002 VITANOV / Nova Vita (fig) (EN)
Page 238
VII. INTERRELATION OF FACTORS
1.
Predominant Factors
The particularities of each case may also suggest that a particular factor is
predominant. As stated above, there are factors that are more or less
important, depending on the facts of the case.
Hence, the evaluation of the various factors in the comparison of goods
should take account of their respective importance for the specific case. In
other words, the various factors do not have a standard value for all cases,
but rather their specific importance should be determined in the context of
each individual case.
In general, the weight of each factor will depend on the impact it has on the
origin of the goods in question. Factors clearly suggesting that the
goods/services (products) come or do not come from the same undertaking or
economically linked undertakings should take precedence over factors that
only have a secondary bearing.
R 433/2000-1 Arthur (fig.) / Arthur (fig) (EN),
R 0232/2000-4 S ORLANDO (cl 29, 30) / Orlando (cl 31)(EN),
199/2000 Three Stars / Three Stars (EN).
In assessing the similarity of products all relevant factors characterising the
relationship between the goods and services should be taken into account.
Generally strong factors are
-
the purpose - strongest factor,
-
the nature from a commercial point of view.
Conversely, factors generally less important because they do not often
characterise that relationship are:
-
-
the method of use: many different goods can be used in the same manner:
e.g. both pharmaceuticals and food/drink are consumed orally, but they
are not similar. Both baby carriages and shopping trolleys are moved in
the same way, and yet they are not similar.
the distribution channels: the sales outlets are a weak factor in general,
unless specialised stores or the same sections of supermarkets are
concerned.
the relevant public: the mere fact that the customers overlap is not an
indication of similarity. The same customers may be in need of goods and
services of the most divergent nature and origin.
However, divergent distribution channels and/or a minimal overlap of the
relevant public strongly weigh against similarity.
Page 239
2.
Interdependence of factors
Occasionally, a factor will be useful not only for the direct impact it may have
on the similarity of goods and services, but also because it may serve as an
indication that another factor is important or pertinent to a greater or lesser
extent.
This is especially true for all those secondary circumstances and indications
taken into account in the presentation of each specific factor above.
Such indications, alone or combined, may show whether and to what extent a
particular factor is applicable in each case or may serve to define its scope.
For example, the purpose (intended use) of the goods reveals their
customers; the purpose of the goods in combination with their price may
determine if such goods are in competition with each other; the place of
production and method of manufacture may point in the direction of origin
from the same or economically-linked undertakings etc.
R 0818/2000-1 Grand Trianon / Trianon (FR)
But there are no strict rules. As stated, if the purpose of the goods is the same
and their (properly calculated) price is similar, they will often be in competition,
e.g. coffee filters made of paper and coffee filters made of metal. However,
this is not inevitable, as the example cinema and bowling services shows.
Therefore, the similarity factors above have been discussed separately. The
examiner must assess them in their totality at the end of the similarity of
goods/services analysis to determine the overall degree of similarity.
Furthermore, the value of the various factors may differ widely, depending on
the case:
-
In one case the nature may be similar, but the distribution may be very
different. Even if the same or very similar characteristics of goods (i.e.
nature) would make it easy for an undertaking to produce other goods, it
might choose not do so if it faced great difficulties in finding a way to the
customers.
Example: window glass – glass for spectacles.
-
Conversely, the nature, i.e. product characteristics, might be totally
different, e.g. plastic – wood – glass, and require different production
equipment (or economic links with other companies), but if the product
design, and the purpose of use is the same as well as the the distribution,
both types of goods might still be manufactured under the control of the
same undertaking.
Example: For certain toys it is of secondary importance whether they are
of plush, cardboard, wood, metal, or other materials (save where certain
safety standards must be met for young children). What is important for
Page 240
the customers is an attractive shape. JAKO-O (fig.) / JOCKO 2628/2001
(DE) (reversed on other grounds). See above, under 2.2.2.(iv).
Page 241
VIII. CONCLUSION
The Court stressed in Canon that if it appears that the public is not of the
opinion that the goods and services come from the same undertaking or from
economically linked undertakings, there can be no likelihood of confusion.
Therefore, if after a balanced assessment of the various factors it does not
seem likely that the public will attribute the same origin to the compared
goods and services, those goods and services must be considered dissimilar.
However, before such a conclusion may be reached, account must be taken
of the principle that in assessing the likelihood of confusion, all factors are
relevant and interrelated. Consequently, the examination may be closed due
to a dissimilarity of the goods at issue only if the same conclusion would have
been reached even if the signs were identical and the earlier mark was highly
distinctive. This has to be expressly mentioned in the decision.
For example, beer was held to be sufficiently dissimilar to electronics for the
examination to be concluded without any comparison of signs, as were art
exhibitions to clothing.
353/1999 POLAR (cl.32) / POLAR (cl.9) (EN),
904/1999 BOULEVARD (cl.25) / Bvd. PEDRALBES (cl.41) (EN),
2618/2001 Diane (cl. 5) / Diana (cl. 3, 5) (EN),
1531/2001 Lloyd’s (cl. 18, 25) / Euro Lloyds (cl. 36) (ES).
Conversely, if the overlap found suggests that the public may think that the
goods and services concerned come from the same or economically-linked
undertakings, a conclusion may be drawn as to the degree of similarity
between the goods and services, and the examination continues. As stated
(above, under IV.2.2.4.), such a conclusion must in any case be drawn, no
matter whether at the end of the similarity-of-goods analysis or in the final
likelihood-of-confusion analysis.
1999-2001 Blû (cl 33) / BLU (cl 32) (EN).
Page 242
Part 2
Chapter 2:
C. Similarity of signs
Opposition Guidelines Part 2 Chapter 2C, Status: March 2004
Page 243
INDEX
C.
SIMILARITY OF SIGNS..................................................................245
I.
SIMILARITY OF SIGNS ..................................................................245
1. Principles underlying the comparison..............................................245
2. Overall impression...........................................................................245
2.1. Distinctive and dominant components ....................................245
2.2. Assessment of the overall impression ....................................246
3. Visual, phonetic and conceptual comparison ..................................249
3.1. General principles ...................................................................249
3.2. Visual comparison: practical criteria .......................................252
3.3. Phonetic comparison: practical criteria ...................................253
3.4. Conceptual comparison: practical criteria ...............................254
4. Particular issues as regards different kinds of signs........................257
4.1. Number of letters and structure ..............................................257
4.2. Length of signs .......................................................................258
4.3. Beginning of signs ..................................................................260
4.4. Sequence of syllables, rhythm and intonation.........................261
5. “Composite” signs – signs that are partly or wholly included in the
other sign ....................................................................................262
5.1. Signs containing figurative and word components..................263
5.2. “Multi-part” word signs ............................................................264
5.2.1. Predominant character of the common component ..........264
5.2.2. Distinctiveness of the earlier sign .....................................266
5.3. Names ....................................................................................266
5.3.1. (Business) names in combination with other components 266
5.3.2. First and family names .....................................................267
II.
CONCLUSION ON SIMILARITY OF SIGNS ...................................269
Opposition Guidelines Part 2 Chapter 2C, Status: March 2004
Page 244
Identity and likelihood of confusion: Similarity of signs
C.
SIMILARITY OF SIGNS
I.
SIMILARITY OF SIGNS
1.
Principles underlying the comparison
The same basic principles explained above under subpoint II. 1 for the
similarity of goods and services apply to the evaluation of similarity of signs.
Hence, the similarity of signs
- is a conditio sine qua non for a finding of likelihood of confusion;
- must be evaluated in view of the likelihood of confusion, that is in
view of the conflicting marks being capable of suggesting that the
goods or services have their origin in the same or economicallylinked undertakings;
When assessing the similarity of signs, the signs have to be compared in the
form they enjoy protection. That means that earlier registered marks and
contested CTM applications only have to be assessed in their
registered/applied for form. The actual or possible use of the registered marks
in another form is irrelevant for the comparison of signs. For the effect of
disclaimers, see IV. 2. below.
The assessment of similarity must be carried out in relation to the respective
territory where the earlier mark is protected. Where the earlier mark is a
national mark, the relevant criteria must be analysed in relation to the relevant
public in that particular country. Thus, the similarity may be different from
country to country because of differences in meaning and pronunciation.
When the earlier mark is a CTM application or registration, the analysis must
extend to whole Community, and presence of similarity in one part of it will
suffice.
2.
Overall impression
2.1. Distinctive and dominant components
The Court stated in Sabel that the global appreciation of the visual, aural or
conceptual similarity of the marks in question must be based on the overall
impression given by the marks, bearing in mind, in particular, their distinctive
and dominant components. The average consumer normally perceives a mark
as a whole and does not proceed to analyse its various details (Sabel,
paragraph 23). It should be pointed out that in that case the conflicting marks
consisted of a leaping wild animal as the earlier mark and a similar animal
together with the word SABEL in the later mark.
Opposition Guidelines, Part 2, Chapter 2C, Status: March 2004
Page 245
This finding of the Court establishes the two following basic principles:
- the assessment of similarity of signs must not only be based on
some isolated elements, but on the global appreciation of both
signs under comparison;
- the distinctive and dominant components are “in particular”
important for the evaluation of similarity between signs.
The Court has used the concept of distinctive and dominant components in a
general manner and without any further specification. It is however obvious
that the assessment of the elements forming the sign requires an agreement
as to the criteria that will be used to identify the distinctive and the dominant
elements.
The notions of distinctive and dominant describe the well-known phenomenon
that signs, unless they are unitary (such as single word, a single figure, a
single colour), are perceived in normal life by focussing on the dominant
element, that which distinguishes the sign. At a next level of analysis, beyond
the mere visual perception, judgement is involved, and it is here that
“distinctive” obtains is additional value as a tool: signs or elements of signs
which have no distinctiveness in the legal sense, i.e. are descriptive, generic
or for other reasons non-distinctive for the goods or services involved, will be
largely or totally disregarding when determining similarity in the legal sense,
however much they may, as a matter of mere perception, dominate the sign.
The perception of what is dominant or distinctive will also vary depending on
whether the analysis centers on visual, oral or conceptual similarities.
2.2. Assessment of the overall impression
The assessment of the similarity of the signs is based on the fact that the
relevant public does not tend to analyse a sign in detail when confronted by it.
The public, however, pays more attention to the distinctive and dominant
components of signs. This may be a merely unconscious reflex, since the eye
focuses on the distinctive and dominant components more readily than on the
less distinctive components. Consumers may, however, consciously focus on
the more distinctive components of a sign in order to differentiate it more
easily from the marks already known in the relevant market.
Page 246
Furthermore, the differentiation between different components of signs takes
account of the fact that consumers, in general, do not have both signs in front
of them at the time of being confronted with either of them, such as in
advertising, or when purchasing certain goods or services. When confronted
with a sign, they rather compare it with their recollection of signs already
known for the relevant area of goods and services. However, consumers do
not clearly recollect all the details of the signs, but rather their more distinctive
and dominant components. The sign at hand and the “imperfect recollection”
of another sign are the basis on which consumers evaluate whether the
respective signs are the same or similar ones or not (see Lloyd, paragraph
26).
Experience shows that similarities of signs are more significant than
dissimilarities for the outcome of this evaluation.
Therefore, comparison of signs will always have to take into account whether
some components are more distinctive and dominant than others are. This
applies to both signs under comparison. The pertinent criteria are not only
those applied when evaluating the overall distinctiveness of the sign (see
subpoint IV.2.), but also other factors, such as a different graphical
presentation or a different size of the various components.
However, the Court left open the question of what is to be regarded as a
“component” of signs. This cannot depend on whether a sign is visually
divided into different parts. Rather the perception of the sign by the relevant
public is decisive. The relevant public often regards one-word-signs as
composed of different elements, in particular, in cases where a part has a
clear and evident meaning whereas the rest is meaningless, or where there
are visual indications such as a dash or the use of different type sizes and / or
typefaces. In such cases, the elements of one-word-signs could be regarded
as “components” as mentioned by the Court.
101/1998
188/1999
268/1999
1449/1999
10/2000
2558/2000
1713/2000
2543/2001
2895/2001
674/2001
FR
EN
EN
EN
EN
EN
EN
EN
EN
EN
ÖKOVITAL
ACTILINE
GOLDSHIELD
COLORSPERSE
STAR
FEMINEX
MAXDATA
NEVADENT
POSTEX
BRANDSHAPE
VITAL
ACTIVIN
SHIELD
AROSPERSE
PetSTAR
FEMIPRES
TRAXDATA
NEODENT
POSTECS
BRANDCAST
No LoC
No LoC
No LoC
LoC
No LoC
No LoC
No LoC
No LoC
No LoC
No LoC
However, it is not appropriate to split up a sign artificially, that is, in those
cases where it is not likely that the public will perceive the sign as composed
of different elements. In this evaluation, it should be taken into account that
the average consumer normally perceives a mark as a whole and does not
proceed to analyse its various details.
Page 247
44/1999
911/1999
1450/1999
1503/1999
813/1999
confirmed by BoA
Dec. 813-1999-1
1303/1999
confirmed by BoA
Dec. 292/2000-3
1476/1999
EN
EN
EN
EN
EN
TELIA
VICO
SUN
SANIT
ATLANTIC
teeli
VICOUNT
SUNNYLINE
VASANIT
PAPETERIES DE
L’ATLANTIQUE
LoC
No LoC
No LoC
No LoC
No LoC
EN
TARAFORTE
TARKA
No LoC
EN
GENOTROPIN
GRANDITROPIN
No LoC
Less distinctive or dominant parts always have to be taken into account when
evaluating the similarity of signs. The Court made clear that the comparison of
the marks has to be based on their overall impression. The less distinctive
components have some influence on this as well. These components are of
less importance in this respect than the distinctive and dominant ones.
Nevertheless, they may be the factors which tip the balance in the evaluation
of similarity.
355/1999 (EN) CAMOMILA INTEA / INTESA, (No LoC) confirmed by BoA
Dec. 499/1999-1. (The case is pending before the CFI)
It is also important to note that in certain cases the combination of two words
which are descriptive per se may nevertheless have a certain degree of
distinctiveness, since the distinctive character may lie in the combination of
the words.
1756/2000 (EN) EUROBAIT / EUROBAITS (LoC);
MOVICOM / MOBILCOM (LoC; pending in BoA).
1267/2001
(EN)
When assessing and comparing the distinctiveness and dominance of the
various components of signs, it is necessary to distinguish the relevant
territory, since, mainly due to linguistic reasons, the perception of signs may
be different.
EN
758/1999
confirmed by BoA
R728/1999-2 and
792/1999-2
pending in the
ECJ
1982/2000
EN
confirmed by BoA
R1045/2000-2,
pending in the
CFI
248/2000
EN
MATRATZEN
MATRATZEN
CONCORD
LoC
MATRATZEN
MATRATZEN
CONCORD
LoC
ACTIVE WEAR
INTERACTIVE
WEAR
LoC
Page 248
1457/1999
377/2000
EN
EN
MEGAKID
CALCITRANS
MEGARIG
CALCITUMS
No LoC
No LoC
Furthermore, it is necessary to distinguish between the different goods and
services involved, as the finding of a descriptive meaning of a component
could affect only part of the goods. To this extent the same considerations are
pertinent as in the determination of the distinctiveness of the earlier sign as
such (see subpoint IV.2. below).
3.
Visual, phonetic and conceptual comparison
3.1. General principles
As stated by the Court in Sabel, the similarity of the signs has to be
appreciated globally, i.e. including a visual, aural and conceptual assessment
(Sabel, paragraph 23).
Therefore, it is never appropriate to assess the similarity of signs only in some
of these aspects. The similarity between signs always has to be evaluated
with respect to their visual, aural and conceptual aspects.
However, this does not mean that a finding of likelihood of confusion is only
given in cases where similarity of the signs can be found in all the aspects
mentioned.
On the contrary, the Court clarified that a mere aural similarity between trade
marks may create a likelihood of confusion, depending on the further
circumstances of the case (Lloyd, paragraph 28).
The mere aural similarity between marks has been found sufficient, according
to the particular circumstances of the case, to establish likelihood of confusion
when the goods or services involved are recommended or ordered orally,
such as clothes. (See section B. I.3.7.2.(b)).
851/1999
confirmed by CFI
309/1999
1949/2001
2032/2000
EN
FIFTIES
MISS FIFTIES
LoC
DE
DE
EN
WOOKI
HZ
OLLY GAN
WALKI
Hazet
HOOLIGAN
148/2000
1593/2001
EN
EN
COPAT
INCELL
QPAT
LINCEL
LoC
LoC
LoC;
reversed by
BoA
R1072/2000
LoC
LoC
According to the Court, it is possible that a mere conceptual similarity,
resulting from the fact that two marks use images with analogous semantic
content, may give rise to a likelihood of confusion where the earlier mark has
a particularly distinctive character, either per se or because of the reputation it
enjoys with the public (Sabel, paragraph 24).
Page 249
Likewise, a mere visual similarity between the signs may suffice, according to
the particular circumstances of the case, for a finding of likelihood of
confusion (in this respect, see also following section 3.3).
113/1998 (EN) SUNRISE / SUNSET, confirmed by BoA 109/1999-2 (LoC);
482/1999 (EN) MASTER CADENA / CHAIN MASTER (LoC);
/
1499/2000 (EN)
(LoC).
However, the finding of likelihood of confusion always depends on the specific
circumstances of each individual case. All the circumstances have to be
carefully assessed and weighted . It is always necessary to consider all
aspects of similarity together in order to determine the outcome. Additionally,
it may be decisive that one aspect of similarity is of specific importance in
respect of the goods and services involved (see subpoint IV.4. below).
Taking all these considerations into account, even a weak similarity in all the
different aspects (visual, phonetic and conceptual) may, when considered
together, lead to a finding of likelihood of confusion.
On the other hand, a strong difference between the signs in respect of only
one of the different aspects may lead to a finding that confusion is not likely, in
spite of the similarity found in respect of the other aspect(s).
As regards cases where the key difference lies in the visual element, it should
be noted that there is a need to acknowledge a strong visual difference
between the signs.
1233/2001 (EN)
/
(No LoC);
/
(the remarkable visual differences prevail
1039/2000 (EN)
over the similarity of the word part; No LoC).
Moreover, as regards cases where the key difference lies in the concept, it is
necessary that the difference is sufficiently remarkable. This implies that the
conceptual meaning of the relevant signs has to be clearly understood by the
relevant consumers.
BoA R-0048/200-3 MARCO / MARCA, reversing Decision 1279/1999 where
the importance of the conceptual difference was overestimated, as it was
considered that German consumers would understand “marca” as meaning
“Marke”.
In most of the cases where a clear conceptual difference is acknowledged, it
is because both trade marks convey very different messages.
Page 250
286/1999
651/1999
873/1999
960/1999
1443/1999
167/2000
pending in CFI
490/1999
256/2000
EN
EN
EN
EN
EN
DE
MOUNTAIN
BIG DEAL
ALTA
GUESS?
METRO
Mixery
MOUNTAIN BIKER
D.E.A.L.
ALTA FIDELIDAD
GLISS
MAESTRO
MYSTERY
No LoC
No LoC
No LoC
No LoC
No LoC
No LoC
FR
EN
PELLET
GOLDMARK
PELE
GOLD BLOCK
No LoC
No LoC
In some particular cases it may even be that a strong and clear conceptual
meaning of one of the signs under comparison is to be regarded as sufficient
to avoid likelihood of confusion. However, this approach is to be only applied
in special circumstances. Such circumstances could be given, in particular,
where the meaning of the sign has a very strong impact on its overall
impression.
1175/1999
1316/1999
109/1998
309/1999
1044/1999
1045/1999
1208/1999,
pending in CFI
EN
EN
EN
DE
EN
EN
EN
NEPAL
ODOL
Da Marco
WALKIE
ADVANTAGE
EASTPOLE
ILS
HEPAL
IDOLE
MAGOR
WOOKI
ADVANTA
EASTPAK
ELS
No LoC
No LoC
No LoC
LoC
No LoC
No LoC
No LoC
When evaluating whether a strong visual or conceptual difference between
the signs may be sufficient for a finding that confusion is unlikely, the following
should be considered:
First, such a finding is only possible under the condition that the relevant
public is able to perceive the visual or conceptual difference.
1233/2001 (EN)
/
(No LoC).
In this context it has to be taken into account that visual or conceptual
differences are sometimes totally imperceptible to the relevant public when
the signs are communicated orally. If this is the case, the effect of the
phonetic similarity on the finding of likelihood of confusion cannot be regarded
as limited by the visual or conceptual differences.
64/1998 (ES) SSI STAR SERVICES INTERNATIONAL / SSI USA (LoC);
309/1999 (DE) WOOKI / WALKI (LoC), confirmed by BoA, R 429/1999-1
Secondly, such a finding of no likelihood of confusion further requires that the
conceptual difference exist in all the geographical areas that are relevant
when comparing the signs.
Page 251
611/1999 (EN) VERITÈ / VERI (LoC);
1280/1999 (EN) MANFIELD / PENFIELD (No LoC), confirmed
120/2000-1.
by BoA
If a significant part of the relevant public is not able to understand the
meaning of the sign, the conceptual differences will not lead to a finding of
3.2. Visual comparison: practical criteria
The visual comparison is obviously decisive as regards figurative signs.
However, it may also play an important role when comparing word marks. Not
only the number of the letters is relevant in this context, but also the number
of words and the structure of the signs. Further particularities may be of
relevance, such as the existence of special letters or accents that may be
perceived as an indication of a specific language.
It should be noted that in the case of word signs, the word as such is
protected and not its written form. Therefore, it is irrelevant whether word
marks are represented in small or capital letters. The same applies to different
letter-types, at least insofar as they are common in the relevant market.
31/1999 (DE) Landana / LANDAMANN (LoC);
62/1998 (EN) Cash Guard / CASHGUARD (LoC).
As regards colour signs, the use of the same colour or colour pattern is an
argument in favour of finding visual similarity. The exact effect of colours or
colour patterns has to be assessed individually in each case, since this
depends very much on the impact of the colour on the overall impression of
the signs involved.
41/1998 (EN)
/
(fig.) (No LoC);
1019/1999 (ES)
/TPS CALL SCIENCES (LoC);
1159/1999 (EN) EUROPA/
(LoC);
In the comparison between three-dimensional signs and two-dimensional
signs the same basic principles are to be applied. Of course the particular
features of the three-dimensional sign may have a special influence usually
on the visual impact of the sign. However, this must be considered in respect
of the overall impression as usual.
2567/2000 (EN)
/
( LoC);
Page 252
or 41/1999 (ES)
(considered as 3D device) /
(considered as a 2D device) (No LoC);
As regards the comparison between three dimensional signs, a comparison
between the same devices as in case 41/1999 (cones) but this time assuming
both are 3D can also be seen in decision 787/2001.
This decision was adopted following the decision of the Boards of Appeal in
case 41/1999 that made the OD accept that the CTM application is not a 2D
drawing but just different views of a three dimensional device (BoA R174/1999-2 and subsequent decision of OD 787/2001).
In this case, as both are 3D signs, it was held that they produced a similar
impression overall. In the decision, on the one hand, the device was
considered original in relation to the relevant goods (snacks) and, on the other
hand, the simplicity of the devices was also taken into consideration (cones
or similar are generated by a rotation in space of a triangles, one of the
simplest 2D figures; LoC).
3.3. Phonetic comparison: practical criteria
The opposition may be based on earlier signs which enjoy protection in
different Member States. In such cases the different pronunciations and
intonations of the signs in all the relevant areas are to be taken into account.
In principle, when word-only signs are involved, the aural impression will be of
greater relevance than the visual impression. Word only signs could be written
using different combinations of letters that, nevertheless are pronounced very
similarly or identically.
1197/1999 (EN) KÄMPGEN / CAMPERS (LoC);
1280/1999 (EN) MANFIELD / PENFIELD (No LoC);
194/2000 (EN) eldou / VEL DOUX (LoC);
2895/2001(EN) POSTEX / POSTECS (LoC).
When a sign contains foreign words, it is possible that a significant part of the
relevant public is unfamiliar with the foreign language of the specific foreign
words used. In this case consumers would pronounce the words in
accordance with the phonetic rules of their native language.
1280/1999 (EN) MANFIELD / PENFIELD (No LoC);
146/2000 (EN) BRIDGE / OXBRIDGE (LoC);
2032/2000 (EN) OLLY GAN / HOOLIGAN (LoC; pending before CFI).
In cases where a significant part of the relevant public pronounces the foreign
word correctly, but another significant part of the relevant public applies the
rules of their mother tongue, both ways of pronunciation have to be taken into
account when assessing the phonetic similarity of the signs.
Page 253
309/1999 (DE) WOOKI / WALKIE (LoC).
The aural similarity between the marks may be offset by conceptual or visual
differences.
1158/2000 DERMO BABY / THERMOBABY (No LoC).
As far as purely figurative marks are concerned, it is, in principle, not possible
to make a phonetic comparison. A phonetic comparison could only be
possible in cases where, either because of the direct and unequivocal term
suggested by the sign or, mostly, because the owner of the trade mark has
“taught” consumers (through advertising, promotion, etc) that his trade mark is
to be pronounced in a particular way. Such cases occur where the parties
have managed to prove that the mark can be referred to orally either because
of a “training” of consumers or because there is no possible alternative way of
referring to the device. An example of the first case could be a device of a bag
with a question mark that is insistently advertised as “the trade mark of the
‘mystery bag’ ”. It also has to be taken into consideration that possible names
also depend on the different relevant languages.
Therefore, these cases are not particularly frequent and depend mostly on the
evidence submitted by the parties to support the argument of the phonetic
aspect of the figurative sign.
3.4. Conceptual comparison: practical criteria
The signs are conceptually identical or similar when the public perceives the
two signs as having the same or a similar semantic content. Conceptual
similarity is also possible between word signs in different languages or
between word and figurative signs. It is sufficient that the perception of a
common meaning of the signs is shared by a significant part of the relevant
public. This evaluation has to be carried out as regards (each of) the relevant
area(s).
131/1999
EN
348/1999
EN
confirmed by BoA
380/1999-2
476/1999
EN
482/1999
EN
758/1999,
EN
1191/1999
182/2000
3111/2000
1917/2000
2962/2001
EN
EN
EN
ES
EN
CINCO
OCEANOS
LINDENER
5 OCEANS
LoC
LINDEBOOM
LoC
NUTRIFORM
CHAIN MASTER
MATRATZEN
NUTRAFERM
LoC
MASTER Cadena LoC
LoC
RIPOLIN
LIMMIT
RED BARON
MAJORICA
OPERATION
SOURIRE
Rentolin
NO LIMITS
BARON ROJO
MINORICA
OPERATION
SMILE
No LoC
LoC
LoC
LoC
LoC
Page 254
When signs are in a foreign language, a significant part of the relevant public
may only have a limited command of the relevant foreign language and
therefore might not be able to distinguish the subtle differences between the
meaning of two signs. Already the perception of their meaning by the public
may be then to some extent blurred. This further influences their recollection
which will be less clear and less exact than the recollection of meanings
originally perceived in the native language.
113/1998 (EN) SUNRISE / SUNSET (LoC);
495/1999 (EN) SECRET PLEASURES / PRIVATE PLEASURES (LoC),
confirmed by BoA 616/1999-1;
2432/2001 (ES) BILBAO BLUE / BILBAO (LoC; BoA, CTM partially accepted
The outcome may be different in cases where one of the two signs is written
in the native language of the relevant public. The perfect understanding of its
meaning and, therefore, its better recollection may enable the relevant public
to perceive the differences in the meaning of the signs.
1121/1999 (EN) DAS GOLDENE BLATT / GOLDEN PAGES (LoC)
As regards figurative signs, the Court has stated that the more distinctive the
earlier mark, the greater will be the likelihood of confusion. It is therefore not
impossible that the conceptual similarity resulting from the fact that two marks
use images with analogous semantic content may give rise to a likelihood of
confusion where the earlier mark has a particularly distinctive character, either
per se or because of the reputation it enjoys with the public (Sabel, paragraph
24). Therefore, the underlying conceptual similarity in such cases is usually
not sufficient for a finding of confusion unless the earlier trade mark is
particularly distinctive. This means that some differences in the depiction
representation of common elements and symbols may suffice to exclude
likelihood of confusion, even if the underlying concept is not altered.
41/1998
ES
No LoC
641/199
EN
No LoC
696/1999
DE
No LoC
1368/1999
EN
No LoC
165/2000
EN
No LoC
1447/2000
DE
No LoC
Page 255
The outcome may be different when the common figurative element is
distinctive for the relevant goods/services or when the depiction of the earlier
sign has acquired some distinctiveness through use (see previous section 3).
3006/2000 (EN)
in BoA)
/
1449/2000 (EN)
and
(“deer’s head” for classes 32-33. LoC Pending
/
(LoC).
The difference in the meaning of the signs may be an argument against the
finding of a likelihood of confusion. This requires that all the significant parts of
the relevant public perceive the different meaning of the signs.
286/1999
611/1999
873/1999
1279/1999
EN
EN
EN
EN
MOUNTAIN
VERITÈ
ALTA
870/2000
EN
PLANET
276/2001
EN
PLANET
MOUNTAIN BIKER
VERI
ALTA FIDELIDAD
No LoC
LoC
No LoC
No LoC
No LoC
MIKADO PLANET
No LoC
In cases where a significant part of the relevant public, in particular due to
linguistic reasons, does not understand the different meaning of the signs, the
likelihood of confusion is not diminished in the respective territory (see
subpoint 2. above).
2920/2001 (EN)
/ SELENIUM-ACE (LoC).
It may not be sufficient for a finding of confusion if only one component of the
signs has a common meaning for the relevant public. In such cases it should
be evaluated whether the meaning of the common component is strong
enough to establish that the relevant public will assign this particular meaning
to the whole sign. In this context, it should be taken into account that the
relevant public does not tend to analyse the various parts of a sign.
55/1998
IT
359/1999
1424/1999
1784/2001
EN
EN
EN
UNCLE
WILLIAM
KINGSTON’S
VIFIT
TEQUILA
UNCLE BEN’S
No LoC
KINGSTON ESTATE
VIVITA
LoC
No LoC
No LoC
Page 256
The consequence of a finding of conceptual similarity for the evaluation of
likelihood of confusion depends on its strength and on the further
circumstances of the case. The conceptual similarity has less weight in the
evaluation of likelihood of confusion when the meaning of the signs clearly
alludes to the respective goods and services or is common in the relevant
market.
66/1999
1043/1999
1159/1999
763/2000
1139/2000
937/2001
EN
EN
EN
EN
EN
DINOKIDS
NEOLUX
EUROPA / T
XXL
SILBERQUELL
E
EN VITAL
DINO
NEOLITE
Europa
XL(device)
SILVER
SPRING
CLEAR
PHYTO-VITAL
No LoC
No LoC
No LoC
No LoC
No LoC
No LoC
As regards the conceptual aspect involved in the comparison of purely
figurative trade marks, again it is a matter of assessing the particular factual
circumstances of the case. The exercise is a bit easier than the consideration
of the aural aspect of such signs (see preceding point 3.3), as it is necessary
to consider whether a common concept can be immediately perceived in the
signs. In essence, all the considerations as regards the owner having trained
the public to associate a sign with a particular concept are also applicable.
In the following decisions, the visual similarities were the only relevant
element to consider as there was no possibility of a identifying an aural
element in either trade mark and only the second decision permitted to
additionally identify the intellectual link of a board game.
146/1999 (EN)
1202/2000 (EN)
4.
/;
(LoC);
/
(LoC).
Particular issues as regards different kinds of signs
The following criteria have been developed and applied in a multitude of
cases, in particular in the comparison of word signs. However, it should be
stressed that these criteria are neither exhaustive nor applicable in all cases.
Depending on the special circumstances of each individual case, different
criteria may be pertinent.
4.1. Number of letters and structure
Page 257
The overall visual impression produced by verbal or predominantly verbal
signs depends to a great extent on the number of letters and the structure of
the words. However, the average consumer normally perceives a sign as a
whole and does not proceed to analyse its various details. Therefore, small
differences in the (number of) letters are often not sufficient to exclude a
finding of visual similarity, particularly when the signs have a common
structure.
291/1999
444/1999
BoA/CFI (settled)
469/1999
confirmed by BoA
R 622/1999-3
476/1999
EN
EN
SUVIMAX
Sedonium
SULINAX
LoC
PREDONIUM LoC
EN
CODEROL
CODIDOL
LoC
EN
NUTRIFORM
LoC
852/1999
2044/2000
727/2001
EN
EN
EN
EVERGREEN
RESVIN
GERALDINO
1917/2000
2694/2001
EN
EN
MAJORICA
FORTIS
NUTRAFER
M
EVERDEEN
RESVERIN
GHERARDIN
I
MINORICA
FORIS
LoC
LoC
LoC
LoC
LoC,
confirmed
BoA R 0049 /
2002-4
4.2. Length of signs
The length of the signs may influence the effect of differences between the
signs. The shorter a sign, the more easily the public is able to perceive all its
single elements. Thus, small differences may frequently lead in short words to
a different overall impression. In contrast, the public is less aware of
differences between long signs.
In many relevant markets it is a common practice to use short marks which
are abbreviations of the name of the company or refer to the relevant goods
or services. In these cases the public is aware of this practice and is generally
used to distinguishing between many abbreviations and will not be easily
confused.
1316/1999
651/2001
838/2001
EN
EN
EN
ODOL
YSL
IDOLE
SL
No LoC
No LoC
No LoC
1038/2001
EN
TOM
DOM
No LoC
Page 258
There is the tendency to deny similarity between “one-letter-signs / onenumeral-signs” which are depicted in a different and imaginative style. In fact,
a single letter per se is generally devoid of distinctive character and does not,
in principle, serve in trade to distinguish the goods of one undertaking from
those of other undertakings. Therefore, for “one-letter / numeral marks”, the
protection is sought for the specific manner in which the letters are
represented graphically and not for the single letter by itself. For this very
same reason, its aural and its conceptual impression will necessarily be
identical but irrelevant to the overall impression of the sign.
This implies that, for instance, if the marks in conflict consist in different
graphic representations of the same letter, there will normally be no LoC.
10/1999
EN
No LoC
122/1999
EN
No LoC
394/1999
EN
No LoC
468/2001
EN
No LoC
1850/2001
EN
No LoC
1631/2000
FR
No LoC
Nevertheless, these signs accompanied by similar figurative elements can be
similar:
570/2000 (EN)
1087/2001 (EN)
/
/
(LoC);
(LoC).
It is necessary to clarify that a verbal representation of “one-letter / one digit
signs” is not to be considered equivalent to the sign and that, therefore, the
aforementioned arguments are not directly applicable to such cases. For
example, a fancy representation of number one is not the same sign as the
word trade mark “ONE”.
As regards trade marks built as “two letter / two digit signs”, it should be noted
that similarity has been denied when they are compared to trade marks with
different or more letters, also on the grounds of their reduced intrinsic
distinctiveness.
596/1999 (EN) PC / BC (No LoC);
337/1999 (EN) NTS / NT (No LoC);
623/1999 (ES) EO / EOS (No LoC);
1244/1999 (EN) ATS / at (No LoC);
Page 259
Finally, special considerations such as the representation of those letters in a
peculiar form can lead to likelihood of confusion:
649/2000 (EN)
/
(LoC).
To continue with the analysis of the signs that are considered weakly
distinctive because of their reduced number of letters or figures, a further step
towards the increase of distinctiveness would be that of “three-letter / threenumeral- signs”. In such cases, there seems to be a tendency to regard the
signs as similar where the only difference lies in one phonetically similar letter.
The following were found similar:
52/1999 (EN) ILC / ILS (LoC);
771/1999 (EN) Aok / Ayk (LoC);
869/1999 (EN) kza / KSA (LoC);
1536/1999 (EN) SYM / SIM ((LoC).
In contrast, the following were found dissimilar:
168/1999 (EN) jbs / TBS (No LoC);
909/2001 (EN) BRU / BLU (No LoC);
125/2001 (EN) TPS / PTS (No LoC).
However, in this context it should also be noted that there is no set approach.
Each case has to be judged on its own merits, i.e. by taking into account all its
specific circumstances.
4.3. Beginning of signs
In predominantly verbal trade marks, the first part is generally the one that
primarily catches the consumer’s attention and therefore will be remembered
more clearly than the rest of the sign. This means that, in such cases, the
beginning of a sign has a significant influence on the general impression given
by the mark and may often be capable of excluding similarity.
Nevertheless, it has to be borne in mind that the concept beginning of the sign
is undetermined, as there is no particular indication of what forms the
beginning, what is the end or even, if there is or not a middle part of the sign.
Again, this perception mostly depends on the circumstances of the case
(length of the sign, syllabic distribution, use of typeface, etc) and does not
depend on a set rule. It could even be that a sign is perceived as having a
short beginning and ending and a proportionally much bigger middle or central
part. Consequently, depending on the circumstances, the rule of the
relevance of the beginning of the sign could have less weight to the benefit of
a more relevant central part.
Page 260
560/1999
715/1999
confirmed by BoA
Dec. 731/1999-2
769/1999
confirmed by BoA
Dec. 794/1999-1
800/1999
1490/2000
2437/2000
1489/2000
EN
EN
ELTON
VOBIS
HILTON
COPIS
No LoC
No LoC
EN
PRESTA
Ersta
No LoC
DE
EN
EN
EN
YOSTNER
SINOIL
PLOVER
INOTENS
COSTNER
EMOIL
OLOVER
DUOTENS
No LoC
No LoC
No LoC
No LoC
However, the exact effect of differences at the beginnings of signs always
depends on the specific circumstances. An overall impression of similarity
may be given, nevertheless, in cases where the difference at the beginning of
the signs is visually, phonetically or conceptually not clearly perceptible, or
where other features of the signs play an important role, such as their
structure or their sequence of syllables.
65/1998
80/1999
DE
EN
BONAX
SONAX
REBEL
LoC
LoC
90/1998
592/1999
2396/2001
1670/2001
EN
EN
DE
EN
ZADOVIR
XENOVA
ASPIRIN
NORVIR
RADOVIR
RENOVA
BESPIRIN
NOVIRIO
LoC
No LoC
LoC
No LoC
In contrast, as it is usually the beginning of a sign which catches consumers’
attention, where signs only differ in their endings, this difference is often
insufficient to exclude similarity.
611/1999
685/1999
1587/1999
164/2000
174/2000
2591/2000
ES
FR
EN
EN
EN
EN
VERITÉ
QUINTON
SHAPER
Lubrigel
GASTROMIL
SATINANCE
VERI
QUINTONINE
SHAPERITE
lubrigyn
GASTROBIN
SATINESSE
LoC
LoC
LoC
LoC
No LoC
LoC
4.4. Sequence of syllables, rhythm and intonation
The overall phonetic impression produced by a sign is particularly influenced
by the number and sequence of its syllables. The common rhythm and
intonation of signs plays an important role in the phonetic perception of signs.
The Collins English Dictionary defines “rhythm” as “the arrangement of words
into a more or less regular sequence of stressed and unstressed or long and
short syllables”. “Intonation” is defined as “the sound pattern of phrases and
sentences produced by pitch variation in the voice”.
Page 261
Therefore, the key elements for determining the overall phonetic impression of
trade marks are the syllables and their particular sequence. The assessment
of common syllables is particularly important in the phonetic comparison, as a
similar overall phonetic impression will mostly be determined by the shared
syllables and their equal or similar combination.
35/1998
31/1999
35/1999
44/1999
1618/1999
FR
DE
EN
EN
DE
SIENA
LANDANA
PHOTONICA
TELIA
kuku
LA SIRENA
LANDAMANN
PHOTOKINA
teeli
KUDU
No LoC
LoC
LoC
LoC
LoC
It should also be noted that what can constitute a common part of the
opposing signs from a visual analysis can, nevertheless, produce a phonetic
impression that is not so similar or even different. This depends on the way
syllables are constructed (and, therefore, pronounced) according to the rules
of the relevant language.
Dec. 473/2000 (EN) ACTOS / ENTACTOS, (Visually there was a clear
coincidence: the last part of the CTMA reproduced the earlier sign: -ACTOS.
Nevertheless, the earlier trade mark was pronounced as |ak|-|tos|, whereas
the CTMA was NOT |ent|-|ak|-|tos| but |en|-|tak|-|tos|; (No LoC).
Furthermore, in some cases, consumers could be aware that the opposing
trade marks are formed of the same syllables in a different order, so that if
one of the words were rearranged it would be the same as the other. A clear
example of this is where marks are composed of two transposed syllables,
e.g. HOTPOT / POTHOT.
Nevertheless, the consideration of such a transformation exclusively depends
on the perception consumers will have of the signs. Only in cases where it will
be evident to consumers that the application sign is an inversion of the
syllables of the earlier trade mark (or vice versa), can the link be taken into
consideration.
In particular, when the signs are perceived as formed by two known elements,
an inversion of these elements would be clearly noticeable. 1852/2002 (EN)
SAT-COM / COM S.A.T (LoC).
On the other hand, if the perception the relevant consumers have of the signs
is that they are completely fancy terms, a syllable inversion will not be
nocitiable and, therefore, will not contribute to a conclusion of similarity.
5.
“Composite” signs – signs that are partly or wholly included
in the other sign
In these cases, an element or the whole of a sign is totally or partially included
in the other sign.
Page 262
Before reaching a conclusion on similarity it is important to establish whether
or not common component is predominant in relation to the other components
of the signs. The approach on how to evaluate distinctiveness and dominance
of components of signs has been discussed above under subpoint 1. The
public perceives the sign as a whole and, in general, does not tend to split
them up into parts. Therefore, assuming that all components have a similar
degree of distinctiveness, it is not appropriate to focus only on the common
component of the signs at issue.
Particular attention should be paid to the distinctiveness of the earlier sign. As
always, all the further circumstances of each specific case have to be
carefully evaluated.
5.1. Signs containing figurative and word components
When signs consist of both word and figurative components, the principle has
been established that the word component of the sign usually has a stronger
impact on the consumer than the figurative component. This is because the
public does not tend to analyse signs and will most readily refer to a sign by
its verbal component.
It follows from this that a similarity of signs is probable in cases where the
signs contain an identical or very similar word component, but different
figurative components. The same principle applies to signs which consist of
different figurative components, but also of a component showing an identical
number.
SSI USA
LoC
64/1998
ES
28/1999
EN
LoC
296/1999
EN
LoC
1134/1999
ES
1001/1999
FR
LoC
845/2000
EN
LoC
1432/2001
EN
911
KALMA
LoC
LoC
Page 263
On the contrary, in general the identity or similarity of the figurative
component of the signs is insufficient to establish similarity in cases where at
least one of the signs contains a further word component which is not shared
by the other sign.
692/1999
EN
No LoC
885,
886/1999
1224/1999
EN
No LoC
EN
No LoC
2576/2000
EN
No LoC
539/2001
EN
No LoC
688/2001
EN
No LoC
As always, the outcome depends on the particular circumstances in each
individual case. The finding may be different, in particular, due to the
predominant character of the common figurative component or due to the
limited distinctiveness of the word component.
583/1999 (EN) ISDN / ISDN (No LoC);
2637/2000 (EN)
/
(LoC).
In other cases, the device element may “cooperate” with the word part in
defining a particular concept and may even help the understanding of words
that, in principle, might not be widely known to consumers.
/
(LoC). The signs were
679/2001 (ES)
considered sufficiently similar for LoC based on the identity of goods as the
device of a moon, present in both signs, made the equivalence between the
Spanish and English words “LUNA” and “MOON” clearer to Spanish
consumers.
5.2.
“Multi-part” word signs
In these cases the whole sign or just one of its components is fully
incorporated in the other sign. The issues raised in the context of these cases
are very complex. Particular attention should be paid to the criteria below.
5.2.1. Predominant character of the common component
Page 264
The finding as to the predominance of the common component in the “multipart” sign(s) plays the most important role when judging on the similarity of
such marks. This question has to be evaluated bearing in mind all the relevant
geographical areas and taking into account all the relevant goods and
services (see subpoint IV.2.).
The predominant character of the common component can be based on its
more distinctive content or its special figurative presentation in comparison
with the other components of the sign(s) but, in most of the cases, it is the
joint combination of both features that produces the impression of
predominance in the sign. The distinctiveness of each of the different
components has to be evaluated and compared with the others. The location
of the common component at the beginning of the sign is relevant in this
respect, but as such is not sufficient to establish its predominant character.
66/1999
114/1999
512/1999
905/1999
1322/1999
1425/1999
1537/1999
1407/2001
EN
FR
EN
FR
EN
EN
EN
EN
DINOKIDS
DELI
MAXTECH
Arthur
PLANET
SIMPLE
ORIGINS
IBUTOP
DINO
DELIBORI
MAXDATA
ARTHUR ET FELICE
PLANET SOCCER
SIMPLE LIFE
ORIGINE WORLD
IBUSOL
No LoC
No LoC
No LoC
No LoC
No LoC
No LoC
No LoC
No LoC
Furthermore, the predominance of the common component may also be
acquired through use. The finding of acquired distinctiveness through use
depends on numerous factors which are set out below (subpoint IV.2.).
1000/1999 (ES) CRISTAL / CRISTAL CASTELLBLANCH (LoC).
If a sign as a whole is fully incorporated in the other sign, the finding of its
predominance in the other sign (compared to its further components) is
generally sufficient to establish similarity of signs.
44/1998
397/1999
425/1999
EN
EN
EN
SIMPLE
STITCHES
ILUSION
430/1999
1137/1999
625/2000
EN
ES
EN
STONES
MAS & JOVER
SUN
SIMPLE D’ANVERS
Broken Stitches
SMOOTH
ILLUSIONS
PRECIOUS STONES
JOVER
SUNPLUS
LoC
LoC
LoC
LoC
LoC
LoC
However, if the “fully incorporated sign” does not constitute the dominant
component of the other sign (e.g. because it is placed at the end of the mark
and/or because it is not particularly distinctive), in principle it is concluded that
the marks are not similar overall.
1968/2000 (EN) JAFFA SUNRISE / SUNRISE (No LoC);
2768/2000 (EN) KALISTARLITE / STARLITE (No LoC).
Page 265
Where both signs contain further elements to the common component, the
predominance of the common component in only one sign is generally
insufficient in itself for establishing similarity of signs. It rather has to be
evaluated whether the predominance of the common element can be
established in respect of both signs.
972/1999 (EN) SCRUMPY JACK / CIDER JACK (LoC);
1020/1999 (EN) ONE TOUCH / CLEAN TOUCH (LoC).
5.2.2. Distinctiveness of the earlier sign
The distinctive character of the earlier sign (or of an element or elements of it)
is a further element which plays an important role when judging on the
similarity of “multi-part” signs. This approach is in line with the finding of the
Court that the distinctiveness of the earlier sign increases the likelihood of
confusion. It follows that when the differences between components of signs
consist in their most distinctive elements, the overall impression they give will
be different. (See Part B.I likelihood of confusion, point 3.4.1. degree of
distinctiveness of the earlier mark).
5.3. Names
A special approach is justified in relation to signs which contain (business)
names, since the public may perceive and evaluate the function of their
representation differently from other components of signs.
5.3.1. (Business) names in combination with other components
If a sign contains both a (business) name and another word component, there
is the tendency to evaluate this further component as predominant. This is
because in general the public understands the further component as the
prime indicator of origin in respect of the specific goods and services. The
(business) name is regarded by the public as of subsidiary nature in such
cases.
364/1999 (FR) GATSBY BY GAT / GATSBY (LoC);
396/1999 (FR) GALA DE LOEWE / G GALA PERFUMERIES (LoC);
449/1999 (DE) DOCKERS / DockerS by Gerli (LoC);
290/2001 (EN) SPINNING made in Italy by Milena / SPINNING (LoC).
Such an assumption requires that the relevant public perceive the nature of
this component as a (business) name. This has to be evaluated as regards all
the relevant geographical areas.
177/1999 (DE) Plastoclean / PlastiClean Thyssen Schulte (No LoC);
131/2000 (EN) PEPE / PEPE CABALLERO (LoC).
Page 266
The applicability of this approach has to be carefully assessed in each
individual case. In particular, the perception of the public may be different in
cases where the further component of the mark is less distinctive or where the
use of a (business) name as indicator of origin is common in the particular
market sector.
5.3.2. First and family names
Arguments of the parties about the right to use one’s own (business) name
are not valid in opposition proceedings, since it does not influence the issue of
whether there will be likelihood of confusion on the part of the public.
Furthermore, it should be noted that the registration of trade marks does not
hinder the use of personal names due to the special protection which is
provided for in Article 12(a) CTMR and in the relevant national trade mark
laws according to Article 6(1)(a) of the Trade Mark Directive.
177/2000 (EN) GIORGI / GIORGIO (LoC).
Family names have, in principle, a higher intrinsic value as indicators of the
origin of goods or services than first names. This is because common
experience shows that the same first names may belong to great number of
people that do not have anything in common, whereas the presence of the
same surname could imply the existence of some link between them (a family
link). Therefore, consumers tend to pay more attention to family names than
to first names.
Nevertheless, this rule should not be applied automatically without having
previously assessed what would be the consumers’ perception of the signs, in
particular, and amongst other considerations, whether the public identify them
as name+surname or whether the name or the surname are common or
unusual. Only in this case could it be assumed that where two signs contain
the same family name, there will be a finding of similarity of signs despite the
presence of additional first names either in one or in both trade marks.
704/1999 (EN) REDAELLI / Giorgio Redaelli (LoC);
820/1999 (ES) Renoir / IVES RENOIR (LoC);
1477/1999 (EN) CLAUDIA BAKER / TED BAKER (LoC);
803/2000 (EN) BELTRAN / DARIO BELTRAN (LoC).
The situation is different in cases where such signs share the same first name
but there is no common surname. In general, this consideration leads to a
finding that there is no similarity of signs.
1326/1999 (EN) LAURA / LAURA MERCIER (No LoC), confirmed by BoA
R95/2000-2.
Page 267
On the contrary, in cases where the signs are not recognised as
name+surname but rather considered as fancy terms, no consideration as
regards surnames would be appropriate and, therefore, the conclusion would
usually be the opposite, namely, that the signs are similar because one of
them identically reproduces the totality of the other.
131/2000 (EN) PEPE / PEPE CABALLERO (LoC).
It has to be carefully assessed whether the above-mentioned general principle
about the different value of first and family names as indicators of origin really
fits the specific case. A different evaluation may be appropriate in cases
where, in the relevant area, the surname is quite common or the first name is
very distinctive due to its rare appearance in the relevant area or its reputation
acquired through use.
467/1999
1074/1999
1193/1999
130/2000
2264/2001
FR
EN
EN
ES
DE
ROSY
AAXEL DAVID
JOHN SMITH
PEPE
Michael
Schumacher
ROSY O’GRADY
HELEN DAVID
PAUL SMITH
PEPE CABALLERO
Sabine Schumacher
LoC
No LoC
No LoC
LoC
No LoC
As always, the special graphic representation of the components may play an
important role when assessing the effect of first and family names in the
overall impression of the signs.
Page 268
II.
CONCLUSION ON SIMILARITY OF SIGNS
The finding of likelihood of confusion always depends on all aspects of
similarity and includes all other circumstances as well (similarity of goods or
services, particular circumstances, etc.). The similarities or differences in the
different (visual, phonetic and conceptual) aspects of similarity have to be
evaluated and compared. It may be important to specify in this context the
strength (degree) of the similarity in the different aspects.
The final question on similarity of signs is whether, after an assessment of the
various aspects of similarity of signs, the signs in conflict have sufficient
elements in common, visually, orally, or conceptually, that, where the goods
or services would be identical, it seems likely that the public will think that the
goods or services marked with the signs at issue come from the same or
economically linked undertakings.
For practical reasons, it may be appropriate not to come to an overall
conclusion on similarity of signs at this stage and evaluate this question
together with the overall assessment on the finding on likelihood of confusion.
This approach avoids repeating the assessment and weighing up of the
different aspects of similarity. In particular, it should also be borne in mind that
the outcome might be influenced by the other factors of likelihood of
confusion.
Therefore, when a decision of dissimilarity of signs is taken, due account must
be taken of the principle that all factors of likelihood of confusion are
interrelated with each other. This means that a conclusion of dissimilarity of
signs, without taking into account the other factors of likelihood of confusion in
the specific case, can only be arrived at if the same conclusion would have
been reached even if the goods and services were identical and the earlier
mark was highly distinctive. This has to be expressly mentioned in the
decision.
Page 269
Part 2
Chapter 2:
D. Global assessment
Opposition Guidelines, Part 2, Chapter 2D -Status: March 2004
Page 270
INDEX
D.
GLOBAL ASSESSMENT ...............................................................272
I.
GLOBAL ASSESSMENT - INTERDEPENDENCE..........................272
1. Global assessment of all the factors ...............................................272
2. Distinctiveness of the earlier mark ..................................................272
2.1. Distinctiveness by nature – Inherent distinctiveness...............274
2.2. Distinctiveness through use ....................................................275
3. Degree of similarity between the signs and the goods and services276
4. Impact of the kind of goods and services on the assessment of
resemblances..................................................................................277
5. The degree of sophistication and attention of the relevant public....278
5.1. The average consumer ...........................................................278
5.2. Degree of sophistication of the customer................................278
5.2.1. Meaning of the criterion................................................279
5.2.2. Consumers...................................................................279
a. Mass consumption goods/services ..........................279
b. Technical or very specific goods/services ................279
5.2.3. Business customers .....................................................279
5.3. Degree of attention of the customer........................................280
5.3.1. Consumers...................................................................280
a. High degree of attention...........................................280
b. Low degree of attention............................................284
5.3.2. Business customers .....................................................284
6. Coexistence of the conflicting marks on the market in the same
territory ............................................................................................285
7. Incidences of actual confusion ........................................................286
8. Prior decisions by Community or national authorities involving
conflicts between the same (or similar) marks ................................286
8.1. Substantive aspects................................................................286
8.2. Procedural aspects .................................................................287
9. No confusion between the signs themselves, but confusion about
the origin (indirect confusion) ..........................................................288
9.1. Meaning ..................................................................................288
9.2. Series (family) marks ..............................................................288
II.
DISCLAIMERS................................................................................291
1. Nature of Disclaimers ......................................................................291
2. Exception to the general principle (disclaimer affecting the earlier
trade mark)......................................................................................292
Page 271
Identity and likelihood of confusion: Global assessment
D.
GLOBAL ASSESSMENT
I.
GLOBAL ASSESSMENT - INTERDEPENDENCE
1.
Global assessment of all the factors
As the degree of similarity that may lead to confusion is not fixed, all factors
relevant to the circumstances of the case must be considered.
As the Court stated the likelihood of confusion must be appreciated globally,
taking into account all the factors relevant to the circumstances of the case;
this appreciation depends on numerous elements and, in particular, on the
degree of recognition of the mark on the market, on the association that the
public might make between the two marks and the degree of similarity
between the signs and the goods [and services] (Sabèl, paragraph 22).
Furthermore, the global appreciation of the visual, aural or conceptual
similarity of the marks in question, must be based on the overall impression
given by the marks, bearing in mind, in particular, their distinctive and
dominant components (Sabèl, paragraph 23).
The Court added that in the assessment of the similarity of the signs a lesser
degree of similarity between the goods may be offset by a greater degree of
similarity between the marks and vice versa (Canon, paragraph 17).
These principles suggest a balanced appreciation of all the relevant factors,
and in particular, an assessment of the distinctiveness of the earlier mark, the
degree of similarity of the signs and goods at issue, and the kind of link that
the public might make between the two marks.
Hence, this stage of the examination deals with the question of whether or not
in a global assessment of all the relevant factors, the respective weight of
these factors is sufficient to give rise to a likelihood of confusion.
2.
Distinctiveness of the earlier mark
In general trade mark doctrine, and in current practice in the Office, including
the Boards, as well as in member states, a distinction is usually made
between “weak” and “strong” trade marks. “Strength” in this context is
equivalent to “degree” of distinctiveness in the ECJ language.
“Weak” trade marks are those that have only a small degree of inherent
distinctiveness.
Page 272
Marks just beyond the line of “weak” are marks that have some or an
“average” degree of inherent distinctiveness. This is about the limit to which
marks get when there is no proof of use and thus enhanced distinctiveness.
“Enhanced” distinctiveness requires recognition of the mark by the relevant
public. This enhanced distinctiveness is available both for inherently “weak”
marks and for those which are inherently distinctive.
At the upper end of the scale are marks that are well-known, and marks that
have a reputation.
Finally, there are “famous” marks, marks that are equivalent to household
words, usually singular (but not necessarily so) in the sense that there are no
competing, and even no non-competing, products on the market under such
sign.
The greater the degree of distinctiveness in accordance with the above
criteria is, the larger will be the scope of protection.
This is in line with the established case-law of the European Court of Justice.
The Court explicitly laid down that the more distinctive the earlier marks, the
greater will be the likelihood of confusion (Sabèl, paragraph 24). Therefore,
marks with a highly distinctive character, either per se or because of the
reputation they possess on the market, enjoy broader protection than marks
with a less distinctive character (Canon, paragraph 18). In determining the
distinctive character of a mark, an overall assessment has to be made of the
greater or lesser capacity of the mark to identify the goods or services for
which it has been registered as coming from a particular undertaking, and
thus to distinguish those goods or services from those of other undertakings
(Lloyd, paragraph 22).
Therefore, the distinctiveness of the earlier mark always has to be taken into
account when deciding on likelihood of confusion.
It should be further noted that the Court has made clear that the strong
distinctiveness of the earlier mark is an argument in favour of a finding of
likelihood of confusion and not an argument against it, as has sometimes
been expressed in literature on trade marks.
239/2000 ADOLFO DOMÍNGUEZ / ADOLFO (EN),
62/2001 NEXT / NEXTEYE (EN),
675/2001 VIÑA ESMERALDA / EMERALD HILL (EN).
As the Court indicated in the Lloyd case, all marks have a greater or lesser
capacity to identify the goods or services covered, and thus to distinguish
those goods or services from those of other undertakings. It follows that
marks of limited distinctive character have a lesser capacity to serve as an
indicator of origin. In view of the above-mentioned statement of the Court in
Sabèl, it can be concluded that the finding of a limited distinctive character of
Page 273
the earlier mark may serve as an argument that confusion with this mark is
less likely than with marks of stronger distinctiveness.
76/1998
188/1999
584/1999
EN
EN
ES
1043/1999
329/2000
937/2001
1789/2001
2350/2001
EN
EN
EN
EN
EN
Negritelle
ACTIVIN
LA ARGENTINA
LOS NEGRITOS
ACTILINE
CARNES
ARGENTINAS
NEOLUX
NEOLITE
BANKEUROPA
EUROBANK
VITAL
PHYTO-VITAL
MEDIA MARKT
MEDIA-SOUND
Das
leben
leicht EUROTOPS
gemacht EUROSHOP
VERSAND (fig.)
The distinctiveness of the earlier mark is not constant, but variable, depending
on the perception the public has of the mark. The perception of the public may
not only change due to the enhanced or diminished reputation of the specific
mark, but also due to other factors (all these elements can only be
considered from the evidence submitted by the parties). This might be in
particular the case where the mark or some element thereof has been used in
the meantime in a similar way by various marks in the relevant market sector.
In this context, it is also important to assess carefully whether the mentioned
situations exist in all the geographical areas and as regards all the relevant
goods and services. In general it will be sufficient to evaluate the
distinctiveness of the earlier mark at the time of the decision.
2.1. Distinctiveness by nature – Inherent distinctiveness
The Court stated that in determining the distinctive character of a mark
account should be taken of the inherent characteristics of the mark, including
the fact that it does or does not contain an element descriptive of the goods or
services for which it has been registered (Lloyd, paragraph 23). The Court has
also stated (Joined Cases C-108/97 and C-109/97, Windsurfing Chiemsee
Produktions- und Vertriebs GmbH (WSC) v Boots- und Segelzubehör Walter
Huber and Franz Attenberger, [1999] OJ OHIM 7-8/99, p. 1054, paragraph
37) that the assessment of distinctiveness also has to take into account the
degree of familiarity amongst consumers with the sign (a geographical name,
in the case), with the characteristics of the place designated by the sign, and
with the category of goods concerned.
Furthermore, the inherent distinctiveness of the earlier mark has to be
evaluated by taking into account (each of) the relevant geographical area(s).
Due to different linguistic and cultural backgrounds, the public in some of the
relevant areas might not understand the descriptive content of an earlier
mark. In such cases, the distinctiveness of the earlier mark is not to be
regarded as limited in respect of these areas.
Page 274
1191/1999
1457/1999
189/2000
1658/2000
2450/2000
EN
EN
EN
EN
EN
RIPOLIN
MEGAKID
TELEBINGO
AROMA
MARIE CLAIRE
RENTOLIN
MEGARIG
TeleBingo
2920/2001
EN
Selenium Spezial A-C- Selenium-ACE
E
It should also be carefully assessed whether the finding of descriptiveness is
valid for all the goods and services of the earlier mark. If this is not the case, a
differentiation is necessary between the relevant goods and services. This
might result in a different outcome as regards the finding of likelihood of
confusion for different goods and services.
Although not conclusive at all, an indication of an inherent descriptiveness of
the earlier mark may be the registration of a variety of marks with the same
element in the Community register or in the relevant national registries. The
presence of many registered trade marks with the same element and
protecting similar products will show, at least, that the element of choice is not
particularly original. However, only a few such registrations are not sufficient
to prove that the earlier mark has limited distinctiveness.
85/1999 LISAP / LISA (EN), 248/2000 ACTIVE WEAR / INTERACTIVE
WEAR (EN).
The fact that a mark may be inherently distinctive is not necessarily
conclusive for a finding of its “strength”. This is so because there are marks
with a low degree of distinctiveness (marks at times called “suggestive” or
“evocative”.
2.2. Distinctiveness through use
The Court has given some guidance in respect of the evaluation of
distinctiveness acquired through use of the earlier mark. The Court has laid
down the following factors to be considered: the market share held by the
mark; how intensive, geographically widespread and long standing use of the
mark has been; the amount invested by the undertaking in promoting the
mark; the proportion of the relevant section of the public which, because of
the mark, identifies the goods or services as originating from a particular
undertaking; and statements from chambers of commerce and industry or
other trade and professional associations (Lloyd, paragraph 23). This list is
not exhaustive.
The requirements for a finding of distinctiveness through use have to be
stricter in cases where the earlier mark has only a limited inherent
distinctiveness.
282/1999 CAFÈ NOIR / CARTE NOIRE (EN).
Page 275
The evidence of distinctiveness acquired through use must refer both to the
relevant geographical area and to the relevant goods and services. It has to
be precisely established for which goods and services, according to the
submitted evidence, such distinctiveness has been acquired (see part F
Article 8(5) as regards the method of assessment of such evidence)
226/1999
1000/1999
FR
ES
MIKO
CRISTAL
1193/1999
1224/1999
EN
EN
JOHN SMITH
MIK
CRISTAL
CASTELLBLANCH
PAUL SMITH
1340/1999
130/2000
62/2001
675/2001
EN
ES
EN
EN
BOSS
PEPE
NEXT
VIÑA ESMERALDA
BOSSI
PEPE CABALLERO
NEXTEYE
EMERALD HILL
3.
Degree of similarity between the signs and the goods and
services
The Court has put also forward that a lesser degree of similarity between the
goods and services may be offset by a greater degree of similarity between
the signs and vice-versa (Canon, paragraph 17). Hence, the similarities
between the signs must be assessed bearing in mind the similarities between
the goods and services and vice versa. This means that if there are lesser
similarities in one aspect they will be reinforced by stronger similarities in the
other aspect which could lead to a likelihood of confusion.
969/99 BARONIA / BERONIA (ES),
789/99 ALLEGRO / ALLEGRO (EN),
1999/2001 BLÛ / B.L.U. (EN).
Consequently, identity or close similarity of either signs or goods and services
will generally be an indication towards confusion, unless there are clear
differences in the other direction enabling the consumer to distinguish
between them.
Examples of dissimilar signs:
394/99
/
(EN), 1974/2001 DERS / SHADERS (EN)
E.g. TMS identical or very similar but G/S dissimilar:
Page 276
964/99
1031/99
1113/99??
419/99
1039/2001
1428/2001
1847/2001
1489/2001
1979/2001
4.
EN
EN
EN
EN
EN
ES
EN
EN
ES
THE GREY LINE
STARTER
AFTER DARK
FLEXI
ABM
(fig)
MARTIN LOOGAN
DOM
BRK
GREYLINE
STARTER
AFTER DARK
FLEXI
a.b.m.victoria
(fig)
MARTIN LOGAN
DOM
Impact of the kind of goods and services on the assessment
of resemblances
The Court has further stated that when evaluating the importance attached to
the degree of visual, phonetic and conceptual similarity between the signs, it
is appropriate to take into account the category of goods and the way they are
marketed (Lloyd, paragraph 27).
The category of goods and services involved may increase the importance of
one of the different aspects of similarity of signs (visual, phonetic and
conceptual). For example an aural or conceptual identity or similarity of signs
may be less important in the case of goods and services that are usually
examined visually or may be tried-on before being bought. In such cases, it is
the visual impression of the signs that counts more for the finding on
309/99 WOOKI / WALKIE (DE),
851/99 FIFTIES / MISS FIFTIES (EN) confirmed by BoA Dec. 757/1999-2,
394/99 L / L (EN),
1207/99 ILS / ELS INTERNATIONAL (EN).
Moreover, the circumstances in which the goods are marketed as well as the
country where they are marketed may play an important role. These
circumstances may enhance or diminish the ability of the public to perceive
the differences between the signs.
1999/2001 BLÛ / B.L.U. (EN)
For example, it may be common to order and buy the specific goods and
services with reference to hand-written notes. This may lead to a blurring of
subtle differences between the signs. However, in view of the principle that
the signs have to be compared in the form they enjoy protection, such findings
have to be applied very cautiously.
The phonetic perception of the sign may be influenced by factors such as the
presence of various other sounds perceived by the addressee at the same
time. In particular, this may be the case as regards sales points with an
increased noise factor, such as supermarkets or bars.
Page 277
R251-2000-3 MYSTERY / MIXERY (EN), 31/1999
Landana / LANDAMANN (DE)
5.
The degree of sophistication and attention of the relevant
public
5.1. The average consumer
For the Court, the average consumer is deemed to be reasonably well
informed and reasonably observant and circumspect (Lloyd, paragraph 26).
This general statement relates both to sophistication and to attention:
- being reasonably well informed to sophistication,
- being reasonably observant and circumspect to attention.
This qualification of the average consumer applies mutatis mutandis to the
business customers. In their case, to be reasonably well informed and
reasonably observant and circumspect will often mean a higher level of
sophistication and attention than that of consumers.
If the average customer of one product or service is the average business
customer, and the other public consists both of the average consumer
customer and the average business customer, only the average business
customer will be of relevance.
Example:
Paints in general are sold both to painters (i.e. for professional uses of these
business customers) and to consumers for do-it-yourself purposes. Paints for
industry, on the other hand, are not marketed to consumers. Therefore, when
the specifications of the two marks cover paints and paints for industry
respectively, only business customers constitute the relevant public since only
they might usually get in connection with both marks
For the Court, the “level of attention” of the average consumer varies
according to the category of the goods and services in question (Lloyd
paragraph 26). More precisely, as shown above, what matters is the “level of
sophistication and attention”.
This is not only true for goods and services, which are exclusively offered to
business customers, but also for specific categories of goods and services
that possess features affecting the sophistication and/or attention even where
the general public is targeted, as will be explained in the following sections.
The enhanced sophistication and / or attentiveness of the public as regards
the relevant goods and services either of the CTM application or of the earlier
mark will generally be a significant indication against confusion.
5.2. Degree of sophistication of the customer
Page 278
5.2.1. Meaning of the criterion
The degree of sophistication differs both between the consumers and the
business customers and within the two groups. The more sophisticated the
customer, the less likely it is that confusion will occur.
The degree of sophistication is of relevance for the customers’ capacity to
perceive the various likelihood-of-confusion factors, and in particular the
criteria for determining the similarity of the goods and services and the
similarity of the signs. For instance, a good knowledge of the market situation
relating to the goods/services in question tends to reduce likelihood of
confusion (see below, under 5.2.2.b and 5.2.3.).
5.2.2. Consumers
a.
Mass consumption goods/services
Where the consumers are the public at large, as in the case of mass
consumption goods, the degree of sophistication is that of a reasonably wellinformed consumer.
b.
Technical or very specific goods/services
In cases, where only a section of the public at large is concerned, as in the
case of technical or very specific goods/services, the level of education or
knowledge in relation to the goods and services concerned has to be taken
into account. This level can be of importance both for the perception of the
marks (e.g. foreign language terms) and for the particular type of goods or
services (e.g. financial services).
If specialised or technical knowledge is required for using a product, a more
educated public in respect of that product may be involved, even where such
products are not specifically intended for business customers but are also
available to the public at large.
Similar considerations apply to goods or services where the level of attention
is high, as discussed below. In these instances, e.g. where tobacco or
newspapers are concerned, the consumers may have a degree of
sophistication that goes far beyond the average level.
512/1999 MAXDATA / MAXTECH (EN),
1390/2001 FOCUS / FOCUS DYNAMICS (fig) (FR).
5.2.3. Business customers
Their specific professional knowledge and expertise relating to the
goods/services in question have to be taken into account.
Examples:
Page 279
The highly qualified customers of the goods in question will recognise that
ELISA is an abbreviation for enzyme linked immunoassay solvent assay (a
sensitive diagnostic test for a past or current exposure to an infectious agent
such as the AIDS virus).
1183-2002 RELISA / VARELISA (EN)
Business customers will be aware of the fact that financial institutions or
insurance companies will not be responsible for the technological aspects of
issuing magnetic or chip cards.
2066/2001 DENCARE / DentCard (fig)(DE)
5.3. Degree of attention of the customer
The Court stated: “It should also be borne in mind that the average
consumer’s level of attention is likely to vary according to the category of
goods or services in question” (Lloyd, paragraph 26). The greater the level of
attention, the lesser the likelihood of confusion.
5.3.1. Consumers
It is the level of the so-called purchase involvement which has a significant
impact on consumer choices of goods and services. The level of involvement
relates to the importance of a decision to the consumer. Thus, it corresponds
to his/her degree of attention.
a.
High degree of attention
A high degree of attention is usually connected with three types of purchases:
expensive, infrequent or risky purchases. They can be rational. The average
consumer often seeks professional assistance or advice when choosing or
buying certain types of goods/services. Examples are computers (expensive),
financial services (infrequent), or prescription drugs or pharmaceutical
products sold exclusively in pharmacies (risky). A high degree of attention can
also apply to emotional purchases, e.g. those concerning jewellery.
(A) Pharmaceuticals
(a) Practice of the Opposition Division from October 2001
(aa) Average consumer
Where pharmaceutical goods are prescribed or sold by qualified professionals
such as doctors or pharmacists, the ‘average consumers’ are, on the one
hand, specialist experts such as doctors or pharmacists and, on the other
hand, the usual consumers who do not have any specific medical and
pharmaceutical knowledge. However, even in the case of drugs which require
a prescription in certain European countries, these drugs may, in practice, be
sold by pharmacists to consumers without a prescription. Therefore, the
Page 280
consumer should always be taken into consideration when determining the
relevant public. Where the pharmaceutical goods are not prescribed or sold
by qualified professionals but are freely sold on the market, the average
consumer is mostly the patient him/herself. Furthermore, pharmaceuticals
currently available only on prescription may in the future become available as
over-the-counter (OTC) medicines.
Where the pharmaceutical goods of the CTM application are sold over the
counter and the pharmaceutical goods covered by the national registration
would probably only be available on prescription, or vice versa, the Office
must assume that the relevant public is both qualified professionals and also
patients or average consumers without any specific medical and
pharmaceutical knowledge. The Office may not limit such protection by
hypothetical considerations concerning the preparations which might be sold
under the mark.
(bb) Attention
(i) Prescription pharmaceuticals
A general rule according to which the average consumer is to be regarded as
more attentive exists only in relation to prescription pharmaceuticals, since
these are in general prescribed by a doctor and checked and handed over to
the patients by a pharmacist.
Medical persons or pharmacists, because of their professional education,
knowledge or experience, will normally be able to distinguish between drugs
with small name differences, simply because of their different therapeutic
purpose. Furthermore, a patient who is aware of the potentially detrimental
impact of pharmaceuticals will pay specific attention to the names of the
products and to their “evocative” meaning.
(ii) Non-prescription (OTC) pharmaceuticals
Summary
However, the same does not apply to non-prescription (OTC) pharmaceuticals
for two reasons:
Even though consumers should pay more attention when purchasing such
drugs, they may in fact not do so. Furthermore, their attention will depend on
the therapeutic indication.
The consequence for OD decisions is:
The attention is evaluated on a case-by-case basis. A finding of increased
attention of consumers of OTC pharmaceuticals cannot be assumed in
general but must be established from the circumstances of the case.
Therapeutic indications, in particular, matter.
Page 281
Where both marks cover prescription drugs, the attention will generally be
higher.
However, where either the earlier mark or the CTM is for OTC drugs, there
will be NO general presumption of an enhanced degree of attention. This is
because the final consumers of the prescription pharmaceuticals (who receive
them via specialists) might choose non-prescription (OTC) pharmaceuticals
themselves, which are covered by one of the marks.
Background
It cannot be claimed as a general rule that an unqualified consumer who
wants to buy an over-the-counter medicine for a specific purpose in a
pharmacy will be able to distinguish between drugs with small name
differences. The attention paid by this consumer depends on the specific drug
and the specific purpose, need or effect. It may be that for more complicated
purposes or more serious disorders the normal attention of an average
consumer could be higher. However, with regard to medicines for mild
disorders and minor afflictions such as painkillers, sleeping pills or healing
ointments, the degree of attention may be very low.
A leaflet giving all the necessary detailed information about the product is
normally provided with pharmaceutical preparations. The average consumer
will normally not read this description before or during the act of purchasing
but perhaps afterwards, and the pharmacist will not automatically provide
advice, especially in relation to non-toxic drugs, at least not without a request
from the customer. There is an increased tendency in society of self-cure,
through self-diagnosis and reliance on oral recommendations of relatives,
colleagues or friends. Only in special cases, for example in relation to
dangerous drugs, will the pharmacist enquire about the cause and make
comments or give instructions.
T 10 / 01-6 PREDONIUM / SEDONIUM (EN) ‘statement of case’
(b) Boards of Appeal
Medical persons or pharmacists can distinguish between drugs by small
differences of the names simply because of a different therapeutic purpose.
But there is no common principle that the average consumer will usually be
very careful when purchasing a drug and will in general be particularly
attentive to small differences between the marks.
The kind of attention of the normal consumer who wants to buy a nonprescribed medicine for a special indication in a pharmacy depends on the
special drug and the special purpose, need or effect.
For more complicated purposes the normal attention of an average consumer
could be higher. But regarding medicines for mild disorders, minor afflictions,
distresses, or bodily ailments, such as painkillers, sleeping pills or healing
ointments, the degree of attention may be very low.
Page 282
A-MULSIN/ALMOXIN, R 816/1999-3 (EN) (25/04/2001): l.o.c found;
R 0401/2000-3 GASTRIN / EUGASTRIM (EN) (07/06/2001)
0964/2000-3 ABACOR / ACCUCOR (EN) (12/09/2001): no l.o.c.
and
R
It must be taken into account that in some countries medicinal products are
administered over the counter, without prescriptions, some consumers tend to
resort to self-prescription and professionals are often overworked and tend to
write prescriptions with a hardly legible handwriting.
R 1178/2000-1
(14/02/2002)
TEMPOVATE
/
EMOVATE
(or)
EUMOVATE
(EN)
In the earlier case-law of the Boards of Appeal, the former OD practice that no
distinction between OTC and prescription drugs must be made was
corroborated. When buying pharmaceutical products, the average consumer
will pay a higher degree of attention with respect to these products
(independently of whether or not these are OTC).
R 303/1999-2 BONOLAT / PONALAR (DE) (02/08/2000)
(B) Expensive purchases, in particular cars
High price, in particular in the case of luxury products, is a good reason for the
consumer to be more circumspect as to the origin and the quality of the article
concerned. The attention may even be enhanced in cases where the specific
product is regarded as reflecting the social status of its owner.
Example: cars and related services
Taking into consideration the price of the cars involved, the average
consumer will only be the affluent part of the general public. It is to be
expected that the average consumer will not buy a car, either new or second
hand, in the same way as he or she would buy articles of daily use. The
average consumer will be an informed one, taking all relevant factors into
consideration, for example, price, consumption, insurance costs, personal
needs or even prestige. Besides the dealers, other sources of information can
be car magazines, colleagues and friends or the Internet.
As regards motor vehicle maintenance and repair services the average
consumer is also expected not to take the car to just any garage but to inform
themselves in advance about the garage, qualifications and specialisation.
S TYPE / S-CLASS R 969/2000-1 (EN)
The above principles, however, must not lead to the conclusion that highly
distinctive marks are not adequately protected even if the goods are identical,
merely because the goods are expensive, but may be protected against
similar goods/services which are not similarly expensive. Such a result can be
Page 283
avoided by properly assessing the reputation of the earlier mark in the global
likelihood-of-confusion analysis, which will weigh heavily in favour of likelihood
of confusion.
(C) Products with high brand loyalty: the example of tobacco
Furthermore, a high degree of attention can be the consequence of brand
loyalty, such as in the case of tobacco products and articles.
Smokers are considered particularly careful and selective as to the brand of
cigarettes they smoke, so a higher degree of brand loyalty and attention is
assumed when tobacco products are involved. Therefore, in the case of
tobacco products a higher degree of similarity of signs may be required for
confusion to occur.
R-78/1999-3 FOSTER / FROSTY (DE): even though tobacco products are
relatively cheap mass articles, the consumers have a high taste and brand
loyalty in this field and therefore recognise quickly the preferred brand.
16/1998 ARISTON / HORIZON (EN),
113/1998 SUNSET / SUNRISE (EN),
959/1999 KINGS / SUPERKINGS (EN).
Finally, it is important to mention that, in case of highly distinctive marks,
brand loyalty must not lead to a lower degree of protection. Insofar, similar
considerations as in the case of expensive purchases above apply.
b.
Low degree of attention
A low degree of attention can be associated, in particular, with habitual buying
behaviour. Rational purchase decisions in this area relate to, for example,
basic foodstuffs. Emotional decisions cover, for example, sweets.
5.3.2. Business customers
Purchases made by business customers are often more systematic than
consumer buying. They require accountability and their cost and efficiency are
often monitored. Thus, the degree of attention when making such purchases
is usually higher than that of consumer customers and the likelihood of
confusion will therefore be lesser.
300/1999 PEROX (cl.3) / PELOX (cl.1, 3) (DE),
371/1999 TAMRON (cl.9) / AMRON (cl.9) (EN).
In 1603/2002 FIBROSTEEL / FIRESTEEL (FR) it was held that the relevant
public of the goods in classes 6 and 17 consisted of professionals who are
more attentive.
Page 284
6.
Coexistence of the conflicting marks on the market in the
same territory
Evidence of co-existence of parallel marks on a national level may weigh
against likelihood of confusion.
85/1999 LISAP / LISA (EN),
1193/1999 JOHN SMITH / PAUL SMITH (EN).
However, the indicative value of co-existence should be treated with caution.
There might be different reasons why the two signs coexist on the national
level, e.g. a different legal or factual situation in the past or prior rights
agreements between the parties involved.
1340/1999 BOSS / BOSSI (EN),
537/1999 SIDE / SIDE (EN).
Moreover, such a co-existence argument requires evidence that the signs
have been used in the relevant market. Evidence of the existence of the
relevant marks on the same Register does not suffice.
105/1999 Hollywood / Hollywood (FR),
537/1999 SIDE 1 / SIDE (EN),
1584/1999 Marco / MALCO (EN).
In several decisions the Third and Fourth Boards of Appeal have emphasised
the importance of co-existence on the marketplace and not only on the
Register. The OD follows these decisions.
R 360/2000-4 NO LIMITS / LIMMIT (EN):
Coexistence of confusingly similar marks in the trade mark register is
not relevant. Article 8(1)(b) CTMR makes reference to confusion on
the part of the public, i.e. confusion on the market place. Evidence of
actual and peaceful coexistence of conflicting marks on the market is
a circumstance that the Board may take into consideration in order to
assess the likelihood of confusion in the meaning of Article 8(1)(b)
CTMR. However, the appellant has failed to supply that evidence.
The simple allegation that the respondent did not take action against
registration or use of the appellant’s mark for Spain is not sufficient.
The argument of past peaceful coexistence must be supported by
evidence of real presence of the two marks on the market place.
Coexistence should be understood as ‘co-use’, namely concurrent
use of the two (supposedly conflicting) marks, rather than ‘coregistration’, i.e. concurrent presence in a trade mark register. The
appellant did not supply evidence that his mark and the respondent’s
mark have actually been co-used in Spain.
Page 285
For the similar reasoning of the Third Board see R 0001/2002-3
CHEE.TOS/CHITOS (EN) and R 0851/2000-3 MAGIC / MAGIC BOX (EN).
Co-existence on the Register may, however, be considered as one element in
the likelihood-of-confusion analysis. But this may only be the case if it is clear
to the Office that the Member State, in which the concurrent earlier mark is on
the Register, examined relative grounds for refusal ex officio in the course of
the proceedings that led to the registration of the national mark concerned.
In GOLDSHIELD , the Board found that the marks had also coexisted on the
marketplace for several years and that the opponent had made no attempt to
challenge the validity of the national registration of the applicant’s mark. The
Board had considered in this case that coexistence may not be decisive but is
nonetheless highly persuasive of an absence of likelihood of confusion. This
latter conclusion is at odds with the OD’s practice. The OD considers that
coexistence on the marketplace may weigh against likelihood of confusion but
not as being highly persuasive of its absence.
R 0415/1999-1 GOLDSHIELD / SHIELD (EN)
Civil agreements between the parties of any kind are irrelevant in opposition
proceedings. The parties may commence legal actions on a national level
and, eventually, request a suspension of the opposition proceedings.
7.
Incidences of actual confusion
Likelihood of confusion, or the terms treated as synonyms in this Guide, i.e.
“risk of confusion” and “danger of confusion”, does not require actual
confusion but only the probability of confusion.
However, evidence of actual confusion is a factor that weighs in favour of
To properly weigh evidence on the number of occasions when actual
confusion has arisen, it must be assessed in the light of the number of
opportunities for confusion. If the business transactions are voluminous but
the instances of confusion are sparse, such evidence will have little weight in
the likelihood-of-confusion assessment.
Lack of actual confusion has been treated in the context of co-existence
above.
8.
Prior decisions by Community or national authorities
involving conflicts between the same (or similar) marks
8.1. Substantive aspects
Decisions of national courts, including Community trade mark courts, and of
national offices in parallel cases do not have a binding effect on the Office.
Page 286
However, their reasoning and outcome should be duly considered, particularly
when the decision has been taken in the Member State that is relevant to the
proceedings. National courts have a thorough knowledge of the specific
characteristics of their Member State, in particular as regards the marketplace
reality in which goods and services are marketed and the customer perception
of signs. In view of the harmonisation of the national trade mark laws, national
courts (not acting as Community trade mark courts) and offices apply
substantially the same law as the Community trade mark courts and the
Office.
However, considering the decisions of national authorities requires the
submission of sufficient information, in particular about the exact facts on
which the decision is based. Furthermore, it may be relevant whether or not a
national decision was based on a national law in which the EEC
Harmonisation Directive had been properly implemented.
80/1998
449/1999
DE
DE
ZEWA
DOCKERS
1193/1999
1389/1999
278/2000
869/2002
EN
FR
EN
DE
JOHN SMITH
Ives Rocher
SEPHORA
Bit
WEPA
DOCKERS
GERLI
PAUL SMITH
Yves Roche
Sephora
Bud
BY
(decision of the
German
Bundesgerichtshof
not followed)
R 1031/2001-3
R 552/2000-4
EN
SHAPE OF TUBES
M&M's MINIS (3-D
MARK)
COSMOPOLITAN
COSMETICS
SHAPE OF TUBES
NESTLÉ
(3-D
MARK)
COSMOPOLITAN
8.2. Procedural aspects
The OD follows the position of the Fourth Board. According to their view, the
OD is not bound in its decision to refer to or to repeat every single submission
or reference made by the applicant in the proceedings before it; provided that
it is clear from the content of its decision that it has taken into account all the
substantial issues of law and fact raised by the parties to the proceedings,
which might be material to the final resolution one way or another of the
dispute before it and that the decision is itself properly reasoned in a manner
consistent with the conclusion reached.
R 0634/2001-1 “a” (fig.) / “a” (fig.) (CFI case)
According to the Third Board, not considering a submitted decision of a
national authority in a parallel case would lead to insufficiency in the
reasoning in accordance with Article 74 CTMR.
Page 287
R 0235/2001-3 (EN) APAGARD / GARD, DENTAGARD
9.
No confusion between the signs themselves, but confusion
about the origin (indirect confusion)
9.1. Meaning
The Court has clarified that the concept of likelihood of association is not an
alternative to that of likelihood of confusion, but serves to define its scope
(Sabèl, paragraph 18). The Court has stated that a trade mark must offer a
guarantee that all the goods or services bearing it have originated under the
control of a single undertaking which is responsible for their quality.
Accordingly, the risk that the public might believe that the goods or services in
question come from the same undertaking or from economically-linked
undertakings, constitutes a likelihood of confusion (Canon, paragraph 28, 29).
This means that there is also a likelihood of confusion where the relevant
public is able to distinguish between the marks, but may believe that the
goods and services they cover are from the same undertaking or
economically-linked undertakings.
It has not been explored yet what is to be regarded as a sufficient “economical
link” in this context. The kind of link that the public might make between the
marks is particularly significant for the overall assessment of confusion as it
will show whether there is a risk that the consumer might be mistaken as to
the origin of the mark or might simply associate the marks due to certain
similarities. The final conclusion is largely a matter of degree. The connection
made on the part of the consumer must be of such an intensity as to make
him believe that the goods come from the same undertaking or from
economically linked undertakings (see subpoint I.3.3. above).
1390/2001 FOCUS / FOCUS ONE (FR),
1629/2001 XPRESSO / EXPRESSO (EN)
9.2. Series (family) marks
A sufficient degree of connection for making the consumers believe that the
goods come from the same undertaking or from economically linked
undertakings has been assumed, in particular, in cases of series or family
trade marks.
House marks or product-line identifiers are often combined with other
secondary elements in a series of marks showing common origin. The
systematic use of a basic sign in different combinations and contexts may
lead the public to disregard secondary differences, thinking that they merely
indicate a new product in a product-line from the same business entity.
Page 288
There is no need that some or all the signs forming the ‘family’ of marks enjoy
reputation in order that the ‘root’ sign is perceived the common element as a
business identifier of a certain undertaking, although it is clear that such
evidence will strongly contribute in favour of such acknowledgement.
2551/2002 (EN) Mc NUGGETS, McCRISPY, McBACON, etc / Mc BAGEL
An assumption of family marks on the part of the public requires that the
common component of the marks at issue has, by virtue of use, the necessary
distinctiveness to be able to serve, in the eyes of the public, as the principal
indicator of a product line.
In order to allow the Office to acknowledge that the different trade marks
invoked by the opponent effectively form such a family of marks, the opponent
should demonstrate not only that he is the owner of the marks, but also that
the public concerned recognises the common part of these marks as
originating from one undertaking. Such ‘recognition’ by the public can only be
inferred through submitting evidence of use of the family of trade marks.
2126/2000 BrainNet (EN) (confirmed by the BoA R 1131/2000-2),
2342/2000 PEPPER (EN),
2844/2000 LIFESOURCE (FR).
The family of marks doctrine may be regarded as a typical example of
likelihood of association. Because of the perception of a particular part of a
trade mark as originating from a specific undertaking, people will make
associations and believe that if another sign is also composed of that element,
it is another trade mark from the same undertaking in question.
Normally the trade marks constituting a “family” and used as such are all
registered marks. However, it cannot be precluded that the “family of marks”
doctrine may include non-registered trade marks as well, if this is compatible
with the provisions of the relevant national laws.
The argument that there is a ‘family of marks’ does not need to be brought
into the proceedings as a ground of opposition, but can be considered as
additional facts, evidence and arguments. Therefore, the opponent, having
based his opposition on a single earlier trade mark (registered or not) could
bring into the proceedings the argument - and the supporting evidence - that
his earlier trade mark has been used together with other trade marks, forming
a family of marks under the aforementioned substantive conditions.
It should be taken into account that there will be no assumption of a family of
marks where the common component is quite weak or where the further
components of the earlier signs are predominant in the overall impression of
these signs.
Page 289
75/1998
177/1999
EN
DE
610/1999
1222/1999
1738/2001
ES
EN
EN
SYSTEMACTION
Plastoclean
SYSTEM
PlastiClean Thyssen
Schulte
ONDA MUNDO
MUNDO Ole
QUICKSHIP
Quickstep
OPHTAL,
CROM- ALERGOFTAL
OPHTAL,
VISCOPHTAL,
PANOPHTAL
The assumption that a particular mark forms part of a family of marks requires
that the common component of the signs is nearly identical. This requirement
also applies to its presentation and location in the signs.
57/1998 BECK’s / ISENBECK (DE),
189/1999, 625/1999 LUREDIS / LUREDOX (EN).
However, minor graphical differences in the common component may not
exclude an assumption of a series of marks, since such differences may be
understood by the public as a modern presentation of the same product line.
Even a different order of the letters may be possible.
75/1998 SYSTEMACTION / SYSTEM (EN),
1265/1999 SOREL/SOLERS (EN).
On the contrary, different or additional letters concerning the common
component generally do not allow an assumption of a family of marks.
57/1998 BECK’s / ISENBECK (DE),
177/1999 Plastoclean / PlastiClean Thyssen Schulte (DE),
1738/2001
OPHTAL,
CROM-OPHTAL,
VISC-OPHTAL,
OPHTAL / ALERGOFTAL (EN).
PAN-
Furthermore, the goods and services of the applicant’s mark must be identical
or similar to the “common core” of the goods or services covered by the
earlier marks. The assumption of a family of marks is more likely where there
is a close similarity or even an identity of the goods and services in question.
136/2000 ETCH A SKETCH / SKETCH (EN).
Page 290
II.
DISCLAIMERS
1.
Nature of Disclaimers
According to Article 38(2) CTMR, disclaimers as regards CTM applications
serve for the purpose of permitting registration of a trade mark containing
elements that are not distinctive. Therefore, their effect is to publicly register a
statement informing third parties that the applicant cannot claim any exclusive
right as regards the non-distinctive element.
Consequently, in these cases, the practical treatment of a disclaimer when
assessing the overall impression of a sign will not be much different than that
of the non distinctive element if no disclaimer had been filed: the disclaimed
part will not be considered a distinctive element of the mark.
However, complications will arise when trade marks have been registered
with a disclaimer affecting distinctive parts. This could happen firstly because
national laws entitle the disclaiming of distinctive elements at the will of the
applicant (usually to overcome relative objections). But secondly, it may also
happen when the disclaimer covers several non distinctive elements that,
nevertheless, have some distinctive character in their particular combination.
And, as regards CTMAs it may even happen that a disclaimed element is
devoid of distinctive character only in a part of the EU because it is a word
only understood by those speaking a particular language or languages.
The main criteria to solve the possible combinations of disclaimers in the
earlier rights and or in the CTMA covering either non distinctive elements or
distinctive elements has to be derived from the principles on the comparison
of signs developed by the ECJ.
According to this jurisprudence, the assessment of likelihood of confusion
relies on the overall impression produced by the signs on consumers of the
relevant market. Consumers are ignorant on whether a disclaimer has been
introduced in the register or not.
A disclaimer per se does not affect the assessment on the similarity between
two trade marks within the context of opposition proceedings as provided for
by the Community trade mark system. (R 473/2000-3 confirming OD decision
398/2000
vs
)
The disclaimer is not physically reflected in the form under which the sign is
going to be used in the market. That is, the element subject to a disclaimer is
not removed from the sign. As the role of the Office in opposition proceedings
is to assess the likelihood of confusion, our decision can not artificially remove
an element that will, nevertheless, be present in the trade mark when used.
Page 291
Consequently, if the disclaimed elements are not completely devoid of
distinctive character, they can not be disregarded when comparing the signs.
1130/1999 FUERTE VENTURA / Qué Pasa Fuerteventura (EN), 203/2000
JOELFERRIN / FERRINI ITALIA (EN), 3122/2000 MEDIASAT /
,1082/2001 KINDER /
2.
(EN).
Exception to the general principle (disclaimer affecting the
earlier trade mark)
Nevertheless, in the application of the aforementioned principles it has also to
be borne in mind that the disclaimer produces legal effects as regards to the
scope of protection granted to the owner of the trade mark. By inserting a
disclaimer, the ius prohibendi of the trade mark proprietor is reduced as
regards the disclaimed element. Under these circumstances, the owner of the
earlier mark does not have any exclusive right to the disclaimed element and
cannot hinder its registration or use.
Therefore, it will not be coherent to always follow the aforementioned
approach. In such cases where the result of applying that approach would
lead to granting the opponent wider scope of protection than the one legally
recognised, an exception has to be provided.
As an example, in the following cases, the scope of protection acknowledged
was that resulting from the exclusion of the disclaimed part when comparing
the signs.
651/1999
2602/2000
BIG
DEAL/D.E.A.L.
/
(EN),
BRIGHT
773/99
FREE/FREEMAN
BROTHERS
(FR),
(EN),
708/2001
vs TRAVELCARD (EN), (The concept of likelihood of
confusion to which Art.8(1)(b) refers sets the borderline between trade mark
application that do not infringe the exclusive rights of earlier trade marks and
the ones that would do so if registered. Where there is no exclusive right [has
been disclaimed], there can not be any conflict between rights).
Page 292
Part 3
Unauthorised filing
by agents of the TM owner
(Art.8(3) CTMR)
Opposition Guidelines - Part 3, Article 8(3) CTMR – Status: March 2004
Page 293
INDEX
PART 3: UNAUTHORISED FILING BY AGENTS OF THE TM OWNER ARTICLE 8(3)……………………………………………………...295
I.
PRELIMINARY REMARKS……………………………………….295
1. Origin of Article 8(3) CTMR……………………………………….295
2. Purpose of Article 8(3) CTMR…………………………………… 296
II.
ENTITLEMENT OF THE OPPONENT…………………………..297
III.
SCOPE OF APPLICATION……………………………………….298
1. Kinds of marks covered…………………………………………...298
2. Origin of the earlier mark………………………………………….299
IV.
CONDITIONS OF APPLICATION………………………………..300
1. Agent or representative relationship……………………………..300
1.1. Nature of the relationship……………………………..…….300
1.2. Form of the agreement…………………………………..….301
1.3. Territorial scope of the agreement…………………………302
1.4. Relevant points in time………………………………………303
2. Application in the agent’s name…………………………………..303
3. Application without the owner’s consent………………………...304
4. Absence of justification on the part of the applicant…………....305
5. Applicability beyond identical signs - goods and services……..307
Page 294
Unauthorised filing by agents of the TM owner
PART 3: UNAUTHORISED FILING BY AGENTS OF THE
TM OWNER - ARTICLE 8(3)
I.
PRELIMINARY REMARKS
According to Article 8(3) CTMR, upon opposition by the proprietor of an earlier
trade mark, a trade mark shall not be registered:
“where an agent or representative of the proprietor of the trade mark
applies for registration thereof in his own name without the proprietor’s
consent, unless the agent or representative justifies his action.”
1.
Origin of Article 8(3) CTMR
Article 8(3) CTMR has its origin in Article 6septies of the Paris Convention which
was introduced into the Convention by the Revision Conference of Lisbon in
1958. The protection it affords to trade mark owners consists in the right to
prevent, cancel, or claim as their own unauthorised registrations of their marks
by their agents or representatives, as well as to prohibit use thereof, where
the agent or representative cannot justify his acts. Article 6septies reads as
follows:
(1)
If the agent or representative of the person who is the
proprietor of the mark in one of the countries of the Union applies,
without such proprietor’s authorisation, for the registration of the mark
in his own name, in one or more countries of the Union, the proprietor
shall be entitled to oppose the registration applied for, or demand its
cancellation or, if the law of the country so allows, the assignment in
his favour of the said registration, unless such agent or representative
justifies his action.
(2)
The proprietor of the mark shall, subject to the provisions of
paragraph (1) above, be entitled to oppose the use of his mark by his
agent or representative if he has not authorised such use
(3)
Domestic legislation may provide an equitable time limit within
which the proprietor of a mark must exercise the rights provided for in
this article.
Article 8(3) CTMR implements this provision only to the extent it gives the
rightful owner the right to oppose applications filed without his authorisation.
The other elements of Article 6septies PC are implemented by Articles 11, 18
and 52(1)(b) CTMR. Article 52(1)(b) gives the owner the right to cancel
unauthorised registrations, whereas Articles 11 and 18 enable him to prohibit
the use thereof and/or to request the transfer of the registration to his own
name.
Page 295
Since Article 42 CTMR provides that an opposition may only be based on the
grounds provided for in Article 8, the additional rights conferred on the owner
by the above provisions may not be invoked in opposition proceedings.
Hence, any request by the opponent, either for the prohibition of use of the
agent’s mark, or for an assignment of the application to himself, will be
dismissed as inadmissible.
2.
Purpose of Article 8(3) CTMR
The unauthorised filing of the owner’s trade mark by his agent or
representative is contrary to the general obligation of trust underlying
commercial co-operation agreements of this type. Such a misappropriation of
the owner’s mark is particularly harmful to his commercial interests, as the
applicant will be in a position to exploit the knowledge and experience he
acquired from his relationship with the opponent and thus unduly benefit from
the owner’s effort and investment.
174/2002 AZONIC/AZONIC
DEFENSE (EN)
(EN);
722/2002
FIRST
DEFENSE/FIRST
Thus, the purpose of Article 8(3) is to safeguard the legitimate interests of
trade mark owners against the arbitrary appropriation of their trade marks, by
granting them the right to prohibit registrations by agents or representatives
that are applied for without their consent.
110/2001 DAAWAT/DAAWAT (EN); 2309/2001; 244/2001 GORDON AND
SMITH/GORDON AND SMITH (EN); 174/2002 AZONIC/AZONIC (EN); 722/2002
FIRST DEFENSE/FIRST DEFENSE (EN)
Article 8(3) is a manifestation of the principle that commercial transactions
must be conducted in good faith. Article 51(1)(b) CTMR, which allows for the
declaration of invalidity of a CTM on the ground that the applicant was acting
in bad faith, is the general expression of this principle.
However, the protection granted by Article 8(3) is narrower than the one
afforded by Article 51(1)(b), because the applicability of Article 8(3) is subject
to the fulfilment of a number of additional conditions laid down in this
provision.
Consequently, the fact that the applicant filed the application in bad faith will
not be in itself sufficient for the purposes of Article 8(3). Thus, the opposition
will be rejected if it is exclusively based on the bad faith of the applicant, or if
this is the only circumstance that was established by the submitted evidence.
Such a filing may only be sanctioned under Article 51(1)(b) by requesting the
cancellation of the mark after it has been registered.
508/2000 EAST SIDE MARIO’S/EAST SIDE MARIO’S (EN), 110/2001
DAAWAT/DAAWAT (EN)
Page 296
II.
ENTITLEMENT OF THE OPPONENT
According to Article 42(1)(b) CTMR, the right to file an opposition on the
grounds of Article 8(3) is reserved only for the proprietors of the earlier trade
marks. This is in contrast both to Article 42(1)(a), which stipulates that
oppositions based on Article 8(1) or 8(5) may also be filed by authorised
licensees, and to Article 42(1)(c), which stipulates that for oppositions based
on Article 8(4) the right to file an opposition is also extended to persons
authorised by national law to exercise the relevant rights.
It follows that, since the right to oppose a CTM application on the grounds of
Article 8(3) belongs exclusively to the proprietors of the earlier trade marks,
oppositions filed in the name of third persons, be they licensees or otherwise
authorised by the relevant national laws, will be dismissed as inadmissible
due to lack of entitlement.
Likewise, if the opponent fails to prove that he was the rightful owner of the
mark when the opposition was filed, the opposition will be dismissed without
any examination of its merits due to lack of substantiation. The evidence
required in each case will depend on the kind of right relied upon.
2065/2000 RHINO LININGS/RHINO LININGS (EN)
The current proprietor may also invoke the rights of his predecessor in title, if
the agency/representation agreement was concluded between the previous
owner and the applicant.
401/1999 NORAXON(fig.)/NORAXON (EN)
Page 297
III.
SCOPE OF APPLICATION
1.
Kinds of marks covered
Article 8(3) CTMR states that it applies to earlier “trade marks” that have
been applied for as Community trade marks without their owner’s consent.
However, Article 8(2) does not apply to oppositions based on this ground, as it
only enumerates the kinds of earlier rights on which an opposition may be
entered under paragraphs (1) and (5) of the same article. It is therefore
necessary to determine in more detail the kinds of rights on which an
opposition based on Article 8(3) may be entered, both as regards their nature
and their geographical origin.
In the absence of any restriction in Article 8(3) and in view of the need to
provide effective protection to the legitimate interests of the real owner, the
term “trade marks” should be interpreted broadly and must be understood
as also encompassing pending applications, since there is nothing in this
provision restricting its scope exclusively to registered trade marks.
For the same reasons unregistered marks or well-known marks within the
meaning of Article 6bis of the Paris Convention1 also fall within the term “trade
marks” in Article 8 (3). Consequently, both registered and unregistered
trade marks are covered by this provision, to the extent of course that the
law of the country of origin recognises rights of the latter kind.
401/1999
NORAXON(fig.)/NORAXON
(EN),
2065/2000
RHINO
LININGS/RHINO LININGS (EN)
In contrast, the express reference to “trade marks” means that Article 8(3)
does not apply to mere signs used in the course of trade, other than
unregistered trade marks. Likewise, other kinds of intellectual property
rights that could be used as a basis for an invalidity action cannot be invoked
in the context of Article 8(3) either.
2065/2000 RHINO LININGS/RHINO LININGS (EN)
It is clear from the wording of Article 8(3) that the trade mark on which the
opposition is based must be earlier than the CTM application. Hence, the
relevant point in time that should be taken into account is the filing or
priority date of the contested application. The rules according to which the
priority should be determined depends on the kind of right relied upon. If the
earlier right has been acquired by registration, it is its priority date that should
be taken into account for assessing whether it precedes the application,
whereas if it is a user-based right, it must have been acquired before the filing
date of the CTM application. In the case of earlier well-known marks, the mark
must have become well-known by the time the CTMA is applied for.
1
For the applicability of Article 6septies to well-known marks see the “WIPO Guide to the application of
the Paris Convention”, by professor G.H.C. Bodenhausen, p. 127, with reference to the “Actes de
Lisbonne”, pp. 681, 761.
Page 298
AZONIC/AZONIC (EN), 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN)
2.
Origin of the earlier mark
As Article 8(2) does not apply to oppositions based on Article 8 (3), it cannot
serve to define the territorial extent of protection granted by Article 8(3). In
the absence of any other reference in Article 8(3) to a “relevant territory”, it is
immaterial whether the earlier trade mark rights reside in the Community
or not. The practical importance of this provision lies precisely in the legal
capacity it confers on holders of trade mark rights outside the Community to
defend these rights against fraudulent filings, since owners of trade mark
rights within the Community may rely on the rest of the grounds provided for in
Article 8 to defend their earlier rights from such acts.
Of course, Community trade marks or national marks, which provide a basis
for opposition pursuant to Article 8 CTMR, also qualify as earlier marks that
can be invoked as a basis for an Article 8 (3) opposition.
On the other hand, it is not clear whether an implicit restriction of scope to
trade marks rights held in a Paris Union country or WTO member must be
read in this provision. It is often argued that since the territorial requirements
of Article 6septies (proprietorship of a mark in a Paris Union country) have not
been included in the CTMR, the general rules of Article 5 CTMR should apply.
401/1999 NORAXON(fig.)/NORAXON
MARIO’S/EAST SIDE MARIO’S (EN)
(EN),
508/2000
EAST
SIDE
A further argument in support of this view could be drawn from Article 18
CTMR, according to which the owner can request the transfer of the
registration to his own name. Hence, the argument runs, if the owner may
demand the compulsory assignment of the mark to himself, he must also be a
person capable of acquiring a CTM and thus, should fulfil the requirements of
Article 5.
However, even though Articles 8(3) and 18 CTMR have the same origin, they
are independent provisions applicable in different circumstances. As Article
8(3) does not in any way restrict its application to rights originating from a
specific territory, it is immaterial where in the world the rights of the
proprietor reside.
244/2001 GORDON AND SMITH/GORDON AND SMITH (EN), 174/2002
AZONIC/AZONIC (EN), 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN)
Page 299
IV.
CONDITIONS OF APPLICATION
Article 8(3) CTMR entitles trade mark proprietors to oppose the registration of
their marks as Community trade marks, provided the following substantive
requirements are met:
1.
2.
3.
4.
5.
1.
The applicant is an agent or representative of the proprietor of
the mark;
The application is in the agent’s name;
The application was filed without the owner’s consent;
The agent or representative fails to justify his acts;
The marks are identical or similar.
Agent or representative relationship
1.1 Nature of the relationship
In view of the purpose of this provision, which is to safeguard the legal
interests of trade mark owners against the misappropriation of their trade
marks by their commercial associates, the terms “agent” and
“representative” should be interpreted broadly to cover all kinds of
relationships based on some contractual arrangement where the one party is
representing the interests of another, regardless of the nomen juris of the
contractual relationship between the principal-proprietor and the CTM
applicant.
Thus, it is sufficient for the purposes of Article 8(3) CTMR that there is some
agreement of commercial co-operation between the parties of a kind that
gives rise to a fiduciary relationship by imposing on the applicant, whether
expressly or implicitly, a general duty of trust and loyalty as regards the
interests of the trade mark owner. It follows that Article 8(3) may also extend,
for example, to licensees of the owner, or to authorised distributors of the
goods for which the mark in question is used.
401/1999 NORAXON(fig.)/NORAXON (EN), 110/2001 DAAWAT/DAAWAT
(EN), 174/2002 AZONIC/AZONIC (EN), 722/2002 FIRST DEFENSE/FIRST
DEFENSE (EN)
Given the variety of forms that commercial relationships may acquire in
practice, a case-by-case approach is applied, focusing on whether the
contractual link between the owner-opponent and the applicant is only limited
to a series of occasional transactions, or if, conversely, it is of such a duration
and content that could justify the application of Article 8(3). The material
question should be whether it was the co-operation with the owner that gave
the applicant the possibility to get to know and appreciate the value of the
mark and incited him to subsequently try to register it in his own name.
Nevertheless, some kind of agreement has to exist between the parties. If
the applicant acts completely independently, without having entered into
Page 300
any kind of relationship with the proprietor, he cannot be considered an
agent within the meaning of Article 8(3).
508/2000 EAST SIDE MARIO’S/EAST SIDE MARIO’S (EN)
Thus, a mere purchaser or a client of the owner cannot amount to an “agent
or representative” for the purposes of Article 8(3), since such persons are
under no special obligation of trust to the trade mark owner. Interestingly
enough, the initial draft of Article 6septies PC also included the wording “or
client” which was however expressly rejected by the Revision Conference of
Lisbon as being too vague2.
110/2001 DAAWAT/DAAWAT (EN)
It is irrelevant for the purposes of Article 8(3) whether an exclusive
agreement exists between the parties, or just a simple, non-exclusive
commercial relationship.
722/2002 FIRST DEFENSE/FIRST DEFENSE (EN)
Article 8(3) also applies to analogous forms of business relationships that
give rise to an obligation of trust and confidentiality between the trade mark
owner and the professional, as is the case with legal practitioners and
attorneys, consultants, trade mark agents etc.
However, the legal representative or manager of the opponent’s company
cannot be considered as an agent or representative within the meaning of
Article 8(3), given that such persons are not business associates of the
opponent. The purpose of this provision is not to protect the owner from
infringing acts coming from within his company. It may well be that such acts
can be sanctioned under the general bad faith provisions.
522/2000 HARPOON/HARPOON (ES)
1.2. Form of the agreement
It is not necessary that the agreement between the parties assumes the form
of a written contract. Of course, the existence of a formal agreement
between the parties will be of great value in determining exactly what kind of
relationship exists between the parties. As mentioned above, the title of such
an agreement and the terminology chosen by the parties should not be taken
as conclusive. What counts is the kind of commercial co-operation
established in substance and not its formal description.
Even in cases where a written contract does not exist, it may still be possible
to infer the existence of a commercial agreement of the kind required by
Article 8(3), by reference to indirect indications and evidence, such as the
commercial correspondence between the parties, invoices and purchase
2
Actes de Lisbonne, p.690
Page 301
orders for goods sold to the agent, or credit notes and other banking
instruments. Even dispute resolution agreements may be relevant, to the
extent they give sufficient information about the past relationship between the
parties.
244/2001 GORDON AND SMITH/GORDON AND SMITH (EN), 2309/2001;
2310/2001 APEX/APEX (EN), 722/2002 FIRST DEFENSE/FIRST DEFENSE (EN)
Furthermore, circumstances such as sales targets imposed on the applicant,
or payment of royalties, or production of the goods covered by the mark
under license or help in the setting up of a local distribution network, will
be strong indications in the direction of a commercial relationship of the type
covered by Article 8(3).
244/2001 GORDON AND SMITH/GORDON AND SMITH (EN)
On the other hand, the mere desire of the applicant to enter into a
commercial relationship with the opponent cannot be considered as a
concluded agreement between the parties. Prospective agents or
representatives are not covered by Article 8(3).
DAAWAT/DAAWAT (EN)
1.3. Territorial scope of the agreement
Even though the letter of Article 8(3) does not make any reference to the
territorial scope of the agreement between the trade mark proprietor and his
agent or representative, an inherent limitation to relationships covering
the EU or a part thereof must be read in this provision.
This is more in line with the economic considerations underlying Article 8(3),
which are to prevent agents or representatives from unduly exploiting a
commercial relationship covering a given territory, by filing an unauthorised
application for the principal’s mark precisely in that territory, that is, in the
territory where the applicant will be more able to benefit from the infrastructure
and know-how he possesses as a result from his prior relationship with the
proprietor. Therefore, as the filing prohibited by Article 8(3) is an application
for the acquisition of trade mark rights in the EU, the agreement must also
concern the same territory.
Hence, a purposive interpretation must be followed in this regard, according to
which Article 8(3) only applies to agreements which cover the territory of the
EU, whether in whole or in part. In practice, his means that world-wide or paneuropean agreements are covered by this provision, as are agreements
extending to one or more member states, or only covering part of their
territory, irrespective of whether they also include third territories. Conversely,
agreements exclusively applying to third territories are not covered.
Page 302
1.4. Relevant points in time
The agent-representative relationship must have been established prior to
the filing date of the CTM application. Therefore, it is immaterial whether
after that time the applicant entered negotiations with the opponent, or made
unilateral proposals with the purpose of becoming a representative or agent of
the latter.
401/1999 NORAXON(fig.)/NORAXON (EN), 508/2000 EAST SIDE
MARIO’S/EAST SIDE MARIO’S (EN), 244/2001 GORDON AND
SMITH/GORDON AND SMITH (EN), 110/2001 DAAWAT/DAAWAT (EN)
However, even if the agreement between the parties was formally concluded
after the filing date of the application, it may still be possible to deduce from
the evidence that the parties were already in some form of commercial cooperation before the signature of the relevant contract and that the
applicant was already acting as the opponent’s agent, representative,
distributor or licensee.
2309/2001; 2310/2001 APEX/APEX (EN)
On the other hand, the agreement between the parties does not have to be
technically still in force when the application is filed. The reference to a filing
made by an “agent or representative” should not be understood as a formal
requirement that must be present at the time the CTM application is filed.
Article 8(3) also applies to agreements that expired before the filing date
of the CTM application, provided that the time that has lapsed is of such
a duration that it permits to assume with good reason that the obligation
of trust and confidentiality was still present when the CTM application
was filed. This should be assessed on a case-by-case basis, and the decisive
factor should be whether it is still possible for the applicant to take commercial
advantage of his expired relationship with the trade mark proprietor by
exploiting the know-how and contacts he acquired because of his position.
174/2002 AZONIC/AZONIC
DEFENSE (EN)
2.
(EN)
722/2002
FIRST
DEFENSE/FIRST
Application in the agent’s name
According to Article 8(3) CTMR, the trade mark applied for shall not be
registered where the agent or representative applies for registration thereof in
his own name. It will usually be easy to assess whether this requirement has
been fulfilled, by comparing the name of the applicant with that of the person
appearing in the evidence as the agent or representative of the owner.
However, there may be cases where the agent or representative will try to
circumvent this provision by arranging for the application to be filed by a third
person, whom he either controls, or with whom he has entered into some form
of understanding to that effect. In such cases it is justified to adopt a more
Page 303
flexible approach. Thus, if it is clear that because of the nature of the
relationship between the person filing the application and the agent, the
situation is effectively the same as if the application had been filed by the
agent himself, it is still possible to apply Article 8(3), notwithstanding the
apparent discrepancy between the applicant’s name and the name of the
owner’s agent.
Such a case could arise if the application is filed not in the name of the
agent’s company, but in the name of a natural person that shares the same
economic interests as the agent, as for example its president, vicepresident or legal representative. Given that in this case the agent or
representative could still benefit from such a filing, it should be considered that
the natural person is bound by the same limitations as the company.
174/2002 AZONIC/AZONIC (EN)
Moreover, if the person filing the contested application had also signed the
agency agreement on behalf of the company, this would have to be
considered a strong argument in favour of the application of Article 8(3), since
in such a case the applicant cannot possibly deny a direct knowledge of the
relevant prohibitions. Similarly, if an agency agreement contained a clause
holding the management of the company personally responsible for the
observance of the contractual obligations undertaken by the agent, this would
also have to be considered a further indication that the filing of the application
is covered by the prohibition of Article 8(3).
174/2002 AZONIC/AZONIC (EN)
A similar case arises where the agent or the representative and the applicant
are distinct legal entities, but the evidence shows that they are controlled,
managed or run by the same natural person. For the reasons given above it is
appropriate to “lift the corporate veil” and apply Article 8(3) also to these
cases.
3.
Application without the owner’s consent
Even though the absence of the proprietor’s consent is a necessary
condition for the application of Article 8(3), the opponent does not have to
submit evidence which shows that the agent was not permitted to file the
CTM application. A mere statement that the filing was made without his
consent is generally sufficient. This is because the opponent cannot be
expected to prove a “negative” fact, such as the absence of consent. In these
cases the burden of proof is reversed and it is up to the applicant to prove
that the filing was authorised, or to give some other justification for his acts.
In view of the need to provide effective protection to the legitimate proprietor
from unauthorised acts of his agents, the application of Article 8(3) should be
denied only where the proprietor’s consent is sufficiently clear, specific and
unconditional.
Page 304
Thus, even if the owner has expressly authorised the filing of the CTM
application, his consent cannot be considered sufficiently clear if he has not
also explicitly specified that the application may be in the name of the agent.
Likewise, even if the proprietor has expressly authorised the filing of a CTM
application, his consent cannot be considered specific enough for the
purposes of Article 8(3) if there is no indication of the specific signs which the
applicant has permission to file as Community trade marks.
722/2002 FIRST DEFENSE/FIRST DEFENSE (EN)
It will be generally easier to assess whether the filing was authorised by the
owner where the conditions under which an agent or representative may apply
for a CTM application are adequately regulated by contract, or are given by
other kinds of direct evidence (letters, written representations etc.) In most
cases, such evidence will be sufficient to show whether the owner has given
his express consent, or if the applicant exceeds the limits of his authorisation.
In other cases a contract will either not exist, or it will be inadequate on the
subject. Although the wording of Article 8(3) is in principle broad enough to
also cover cases of tacit or implied consent, such a consent should only be
inferred if the evidence is sufficiently clear as to the intentions of the owner. If
the evidence is completely silent as to the existence of an express or
implied authorisation, the lack of consent should be generally presumed.
Even if there are indirect indications and evidence pointing to an implied
consent, any ambiguity or doubt should be interpreted in favour of the
opponent, as it will usually be quite difficult to assess whether such a consent
is sufficiently clear and unequivocal.
For example, the fact that the proprietor tolerated unauthorised applications in
the name of the agent in third jurisdictions cannot create legitimate
expectations on the part of the applicant that the owner will not object to the
filing of a CTM application either.
4.
Absence of justification on the part of the applicant
Page 305
As mentioned above, since it is not possible for the opponent to prove the
absence of consent, the burden of proof is reversed and it is up to the
applicant to show that the filing of the application was authorised by the
owner. Although Article 8(3) treats the lack of the owner’s consent and the
absence of a valid justification on the part of the applicant as two separate
conditions, these requirements largely overlap to the extent that if the
applicant establishes that the filing of the application was based on some
agreement or understanding to this effect, then he will have also provided a
valid justification for his acts.
In addition, the applicant may invoke any other kind of circumstance showing
that he was justified to file the CTM application in his own name. However, in
the absence of evidence of direct consent only exceptional reasons are
accepted as valid justifications, in view of the need to avoid a violation of
the owner’s legitimate interests without sufficient indications that his intention
was to allow the agent to file the application in his own name.
For example, it could be possible to infer that the owner has tacitly
consented to the filing of the application if he does not react within a
reasonable period of time after having been informed by the applicant that he
intends to apply for a CTM in his own name. However, even in such a case it
will not be possible to assume that the application has been authorised by the
owner if the agent had not made sufficiently clear to him in advance in whose
name he would file the application.
Another case of valid justification could be if the proprietor causes his agent
to believe that he has abandoned the mark, or that he is not interested in
obtaining or maintaining any rights in the territory concerned, for example by
suspending the use of the mark over a relatively long period of time.
The fact that the proprietor does not want to spend money on a registration of
his trade mark, does not give the agent a right to act on his own initiative, as
the proprietor might still have an interest in using his trade mark in the territory
although it is not registered. Such a business decision cannot be taken in itself
as a sign that the owner has given up the rights in his mark.
244/2001 GORDON AND SMITH/GORDON AND SMITH (EN), 174/2002
AZONIC/AZONIC (EN)
Justifications exclusively linked to applicant’s economic interests, such as
the need to protect his investment in setting up a local distribution network
and promoting the mark in the relevant territory, cannot be considered valid
for the purposes of Article 8(3).
Nor can the applicant successfully argue in his defence that he is entitled to
some financial remuneration for his efforts and expenditure in building-up
goodwill for the mark. Even if such a remuneration were well deserved or is
expressly stipulated in the agency agreement, the applicant cannot use the
Page 306
registration of the mark in his own name as a means of extracting money from
the opponent or in lieu of financial compensation, but should try to settle his
dispute with the owner either by way of agreement or by suing for damages.
244/2001 GORDON AND SMITH/GORDON AND SMITH (EN), 2309/2001;
2310/2001 APEX/APEX (EN)
5.
Applicability beyond identical signs - goods and services
Article 8(3) provides that a CTM application will not be registered where “an
agent or representative of the proprietor of the mark applies for registration
thereof in his own name”. Such an explicit reference to the principal’s trade
mark gives the prima facie impression that the CTM applied for must be the
same as the earlier mark.
Hence, a literal interpretation of Article 8(3) CTMR would lead to the
conclusion that its application is only possible where the agent or
representative intends to register a mark identical with that of the
proprietor.
It should also be noted that the text Article 8(3) does not make any reference
to the goods and services for which the application has been filed and for
which the earlier mark is protected, giving thus no guidance as to what the
exact relationship between the respective goods and services should be for it
to apply.
However, applying Article 8(3) exclusively to identical marks for identical
goods or services would render this provision largely ineffective, as it would
allow the applicant to escape its consequences by merely importing slight
modifications either to the earlier mark or to the specification of goods and
services. In such a case, the interests of the owner would be seriously
prejudiced, especially if the earlier mark is already in use and the variations
made by the applicant are not significant enough to rule out confusion. What is
more, if the application is allowed to proceed to registration despite its
similarity to the earlier mark, the applicant will be in a position to prevent any
subsequent registration and/or use of the earlier mark by the original
proprietor within the EU, by relying on Articles 8(1) or 9(1) of the CTMR, or the
equivalent provisions of national law.
Thus, in view of the necessity to effectively protect the legitimate proprietor
against unfair practices by his representatives, a restrictive interpretation of
Article 8(3) must be avoided. Article 8(3) CTMR must therefore be applied not
only where the respective signs are identical, but also where the sign applied
for by the representative or agent essentially reproduces the earlier mark
with slight modifications, additions or deletions, which do not
substantially affect its distinctiveness3.
3
The need for a liberal interpretation was also recognised by the Revision Conference that led to the
adoption of Article 6septies PC. (Actes de Lisbonne, p. 681.)
Page 307
The following are examples of conflicting signs where the Opposition Division
considered that Article 8(3) is applicable:
Earlier Mark
CTM Application
NORAXON
APEX
FIRST DEFENSE
401/1999 NORAXON (fig.) / NORAXON (EN), 2309-2310/2001 APEX / APEX
(fig.) (EN), 722/2002 FIRST DEFENSE / FIRST DEFENSE (EN)
For the same reasons, Article 8(3) does not only cover cases where the
respective specifications are strictly identical, but it also applies where the
goods and services in conflict are closely related, or equivalent in commercial
terms. In other words, what finally counts is that the goods or services of the
applicant may be perceived by the public as “authorised” products, the quality
of which is still somehow “guaranteed” by the opponent.
Page 308
Part 4
Rights under Article 8(4) CTMR
Page 309
Rights under Article 8 (4) CTMR
PART 4: RIGHTS UNDER ARTICLE 8 (4) CTMR
5.1
CTMR 8 (2), (4),
42, 52 (1), 106
INTRODUCTION
Article 8 (4) CTMR provides that, in addition to the earlier trade
marks specified in Article 8 (2) CTMR, specific non-registered earlier
rights protected at Member State level, i.e. non-registered trade
marks and other signs used in the course of trade (hereinafter also
referred to as “business identifiers”) of more than mere local
significance, can be invoked in an opposition, provided that such
rights confer on their proprietors the right to prohibit the use of a
subsequent trade mark.
Pursuant to Article 52 (1) (c) CTMR, the rights referred to in Article 8
(4) CTMR can also be invoked in a request for a declaration of
invalidity directed against a registered Community trade mark as a
relative ground for invalidation.
This part of the Guidelines deals with the earlier rights falling under
Article 8 (4) CTMR only as regards opposition proceedings.
References to invalidity proceedings are occasionally included for
purposes of clarification and delimitation.
5.2
CTMR 8 (4)
APPLICABLE RULES
Article 8 (4) CTMR reads:
“Upon opposition by the proprietor of a non-registered trade mark or
of another sign used in the course of trade of more than mere local
significance, the trade mark applied for shall not be registered where
and to the extent that, pursuant to the law of the Member State
governing that sign:
(a) rights to that sign were acquired prior to the date of application
for registration of the Community trade mark, or the date of the
priority claimed for the application for registration of the Community
trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a
subsequent trade mark.”
(Emphasis added).
310
Page
CTMR 52 (2)
In contrast to Article 8 (4) CTMR, specific other earlier rights cannot
be invoked in an opposition proceedings. Rather, they can be
invoked only, after registration of the CTM concerned, by filing a
request for a declaration of invalidity.
Article 52 (2) CTMR reads:
“A Community trade mark shall also be declared invalid on
application to the Office or on the basis of a counterclaim in
infringement proceedings where the use of such trade mark may be
prohibited pursuant to the national law governing the protection of
any other earlier right, and in particular:
(a) a right to a name;
(b) a right of personal portrayal;
(c) a copyright;
(d) an industrial property right.”
(Emphasis added).
CTMR 74 (1)
As concerns the procedure, Article 74 (1) CTMR is applicable. This
provision states that
“In proceedings before it the Office shall examine the facts of its own
motion; however, in proceedings relating to relative grounds for
refusal of registration, the Office shall be restricted in this
examination to the facts, evidence and arguments provided by the
parties and the relief sought.” (Emphasis added).
Therefore, the onus is on the party concerned to provide the Office
with all the information necessary for the decision, and as regards
rights falling under Article 8 (4) CTMR specifically, with all the
necessary information, including the applicable law, concerning the
existence of such right and its scope of protection.
Details of onus are dealt with in par. 5.4 below.
5.3.
5.3.1
CTMR 8 (4)
CONDITIONS OF ARTICLE 8 (4) CTMR
Types of rights falling under Article 8 (4)CTMR
The types of rights falling under Article 8 (4) CTMR are
•
non-registered trade marks and
•
other signs used in the course of trade.
The latter are exclusive rights of a similar character as trade marks
and include, for example, trade names and company names
(corporate names), other business designations like establishment
or store names, titles of publications or similar works, as well as any
311
Page
other similar exclusive right falling within the same category or type
of right.
The common characteristics of these rights are
CTMR 8 (4), 52 (2)
•
that they are based on use rather than on registration,
•
that they are trade or business-related and thus outside of the
sphere of mere individual or personal rights,
•
that they serve as distinguishing signs in the course of trade,
unlike patents or copyrights or design rights, which protect
technical or artistic achievements or the “appearance” as such,
•
and that they are exclusive rights conferring on their proprietors
an ownership or at least an ownership-like position.
A European standard applies with respect to the assessment of
which kind of right can be invoked under Article 8 (4) CTMR, and
which cannot.
This follows primarily from the differentiation made in the Community
Trade Mark Regulation between Article 8 (4) Article 52 (2) CTMR.
While all Article 8 (4) rights fall within the category of industrial
property rights, not all industrial property rights, even if they may
have some similarity with the Article 8 (4) rights, automatically fall
within Article 8 (4) CTMR.
“Industrial property rights” within the meaning of Article 52 (2) (d)
CTMR thus cover industrial property rights other than those set out
in Article 8 CTMR, for instance, design rights.
Since this distinction is contained in the CTMR, the qualification
under the respective national law is not decisive, and it is immaterial
whether the national law governing the respective sign or industrial
property right treats both types of rights in one and the same law, or
whether it grants the procedural right to file an opposition to the
registration of a national trade mark to the holders of such rights.
These Guidelines contain in their Annex a table which lists, with
respect to all Member States, the rights falling under Article 8 (4)
CTMR, together with their essential characteristics. This list will be
used by the Opposition Division and also by the Cancellation
Division as a “checklist” for examining Article 8 (4) cases.
312
Page
The list will be updated continuously on the basis of legislative
developments and the case law of the European Court of Justice
and the Court of First Instance and developments within the Office,
including its Boards of Appeals, as well as at national level.
5.3.2
Individual types of rights
5.3.2.1 Non-registered trade marks
Non-registered trade marks exist in almost all the Member States.
The rules and conditions governing acquisition of rights under the
relevant national law vary, from simple use to use having
established a reputation. Their scope of protection is also not
uniform, although generally quite similar to the scope of protection
under the rules in the CTMR as concerns registered trade marks.
5.3.2.2 Other signs
CTMR 8 (4), 52 (2)
As regards other signs used in the course of trade (business
identifiers), national law applies to determine
•
whether a particular right is provided for under the national law,
•
whether its holder is entitled to prohibit the use of a subsequent
trade mark, and
•
what the conditions are for the existence of the right, e.g.
regarding the kind and intensity of the required use.
The criteria of Article 8 (4) CTMR apply to determine whether the
right relates to a sign used in the course of trade and is not a right
falling under Article 52 (2) CTMR (cf. par. 5.3.1. above).
This means in particular that the various categories or classification
systems applied at national level cannot be accepted without further
examination. For instance, where the respective national law
considers titles of printed media as ‘other industrial property rights’
(which is the wording of Article 52 (2) CTMR), but protects such
signs as business identifiers and confers on the owners of such
rights the right to prohibit the use of a later trade mark, they will be
considered as a sign within the meaning of Article 8 (4) CTMR.
In order to be qualified as signs used in the course of trade within
the meaning of Article 8 (4) CTMR, the signs must be businessrelated.
Where, for instance, national law vests rights in a specific proprietor
with respect to specific signs or symbols, which have no relation with
trade or business and are thus not at all similar to trade marks or
313
Page
business identifiers in general, such signs would be excluded from
the application of Article 8 (4) CTMR. Such signs may, nevertheless,
to the extent that they may be qualified as “industrial property
rights”, be considered as other industrial property rights within the
meaning of Article 52 (2) CTMR.
As regards registration, most national business identifiers falling
within the category of earlier rights within the meaning of Article 8 (4)
CTMR will be non-registered signs. However, the mere fact that the
sign is also registered in accordance with the requirements of the
respective national law, neither bars it from being invoked under
Article 8 (4) CTMR, nor is it in itself sufficient for the application of
this provision. The sign must have been used, and this applies
independently of whether national law allows prohibition of a
subsequent trade mark on the basis of the registration of a business
identifier alone, i.e. without any requirement relating to use.
Hereafter an indication is given of the various types of rights
involved.
5.3.2.2.1 Trade names
Trade names are the names used by enterprises to identify the
enterprise as such, as distinguished from trade marks identifying the
goods or services produced or marketed by the enterprise.
The trade name is not necessarily identical with the corporate name
or commercial name as entered in a commercial register or similar
register. Trade names are protected as exclusive rights in all
Member States.
Pursuant to Article 8 of the Paris Convention trade names enjoy
protection without any requirement of registration. If national
legislation requires registration for national trade names, the
respective provision is not applicable by virtue of Article 8 of the
Paris Convention with respect to trade names held by a national of a
Member State of the Paris Convention. This applies as well in
respect of nationals of a member of the WTO Agreement.
As regards the application of Article 8 (4) CTMR to trade names,
where the trade name is invoked on the basis of the law of one of
the Member States where a registration is a condition for the
enforcement of rights in a trade name, the Office will apply this
requirement where the Member State and the nationality of the
opponent are the same, but will not apply this requirement in all
other cases because this would violate the provisions of Article 8 of
the Paris Convention.
314
Page
Article 8 (4) CTMR requires that actual use be shown, even if
national law vests in the holder of such trade name the right to
prohibit the use of a subsequent trade mark on the basis of
registration alone.
5.3.2.2.2 Corporate names
A corporate name or company name is the official designation of an
undertaking, in most cases registered on the respective national
commercial register.
Article 8 (4) CTMR requires that actual use be shown, even if
national law vests in the holder of such name the right to prohibit the
use of a subsequent trade mark on the basis of registration alone.
If under national law registration is a prerequisite for protection,
registration must be shown as well, as otherwise there would be no
right in an unregistered corporate name in the first place that the
opponent could invoke.
5.3.2.2.3 Other business identifiers
The general category of “other signs” includes other types of
“business identifiers”. The definition of what is a business identifier is
to be made according to a European standard, as explained earlier.
In order for a sign to be eligible for protection under Article 8 (4)
CTMR, it must also be considered a business identifier under
national law. Thus, there are, based on a comparative review of the
laws of the Member States, a variety of rights that fall within Article 8
(4) CTMR.
5.3.2.2.4 Titles
CTMR 8 (4), 52 (2)
(c)
Titles of magazines and other publications, or titles of similar
categories of works such as films, television series etc. fall under
Article 8 (4) CTMR if they, under the applicable national law, are
protected as business identifiers irrespective of whether they are
also protected under copyright law. This applies irrespective of
whether the copyright in a title of a work can be invoked under the
respective national law against a subsequent trade mark.
It follows from the criterion “used in the course of trade” that the
respective title must have been used in the course of trade. This will
normally require that the work to which the title relates must have
been placed on the market. Where the title relates to a service (such
as television program), that service must have been made available.
There will however be circumstances where pre-use advertising may
be sufficient to create rights, and where such advertising will
constitute “use” within the meaning of Article 8 (4) CTMR.
315
Page
5.3.2.2.5 Geographical indications
CTMR 8 (4), 142
Geographical indications are indications of the geographical origin of
goods or services in a particular political or topographical region or
place, such as in a country, region, or locality. Geographical
indications may take the form of appellations of origin, where there
exists a particular link between the geographical origin and the
quality or other characteristics of the product or service, or of
“simple” geographical indications where such a special link between
origin and quality or reputation is not present.
Geographical indications owe their protection either to a registration
or similar recognition system or to their use in the course of trade.
The protection systems in the Member States vary widely.
In addition to protection at the national level, there are geographical
indications protected at Community level pursuant to specific
legislation for the relevant sector, especially in the sector of wines
and alcoholic beverages (spirits).
At Community level there exists protection for registered
designations of of origin and geographical indications pursuant to
Regulation 2081/92. As set out in Article 142 CTMR, this Regulation
is not affected by the Community Trade Mark Regulation.
Further, some Member States are party to the Lisbon Agreement for
the Protection of Appellations of Origin and their International
Registration of 1958 (as revised at Stockholm 1967, and as
amended on September 28, 1979).
Under some legal systems, geographical indications are not
business signs within the meaning of Article 8 (4) CTMR, because
there are no individual rights that are vested in those entitled to use
a geographical indication. In these systems, the law relating to the
protection of geographical indications of origin is part of the law
providing protection of competitors and consumers against unfair or
misleading business practices. It does not matter whether these
indications are, under national law, protected against misleading or
unfair use under trade mark law, the law relating to unfair
competition, or any other set of provisions. An example for lex
specialis in this respect is the German Regulation governing the use
of the name “Solingen” for specific goods ( Verordnung zum Schutz
des Namens Solingen vom 16. Dezember 1994, Bundesgesetzblatt
Teil I Nr. 91 vom 23.12.1994, S. 3833).
Geographical indications protected under such rules cannot be
invoked under Article 8 (4) CTMR. The mere fact that the respective
national law allows an action to be brought against illegitimate use of
such a geographical indication is not sufficient because no individual
316
Page
exclusive right is vested in them.
There are within the European Community other legal systems
where the applicable national law expressly vests in a natural person
or an association an exclusive right in a geographical indication,
including the right to prohibit the use of a subsequent trade mark on
the basis of an entitlement to an indication of origin. When this is the
case such entitlement will be considered as a right to a business
identifier within the meaning of Article 8 (4) CTMR. The Office will
apply this in cases where national legislation is based on Article 8
(2) of the Lisbon Agreement.
Appellations of origin protected under the Lisbon Agreement are
registered, albeit on request by the industrial property office of a
State party to the agreement, in the name of a person, which can be
a natural person or a public or private legal entity (Article 5 (1) of the
Lisbon Agreement). Article 8 of the Lisbon Agreement provides that
legal action required for ensuring the protection of appellations of
origin protected under the Agreement may be taken under the
provisions of the national legislation either at the instance of the
competent national authority or at the request of the public
prosecutor, or by any interested party. The registered owner of such
an appellation will always be entitled to undertake such action.
Designations of origin and geographical indications registered under
Regulation 2081/92 fall under Article 8 (4) CTMR. While they are
based on Community law, and their protection is governed by Article
13 and 14 of that Regulation, the applicability of that Regulation is
expressly provided for in Article 142 CTMR. Also, these indications
are protected directly in each of the Member States pursuant to
measures adopted for their protection, and they are therefore also
protected pursuant to national law.
CTMR 8 (2), (4),
64 (2)
The above does not apply to collective marks consisting of a
geographical indication registered in the name of an association.
Such a mark constitutes a registered trade mark which can be
invoked under Article 8 (2) (a) (i), (ii) or (iii) CTMR.
5.3.3
Use in the course of trade
The criterion “used in the course of trade” contained in Article 8 (4)
CTMR has to be interpreted as a specific requirement under
European law and has as its consequence that the Office will
request proof of actual use of the invoked sign, in the absence of
which the notice of opposition will be rejected. This applies
irrespective of whether the national right is based on registration (cf.
par. 5.3.2.2 above).
The use must be “genuine” in the same sense that use of a
317
Page
Community trade mark (or a national trade mark) must be “genuine”
in order to be invoked against a later trade mark or avoid revocation.
In addition, the use must be of such a nature and intensity as to fulfil
the conditions of the coming into existence of the relevant right
under national law. For example, national law may require an
unregistered mark to be used to such an extent that market
recognition or reputation has been achieved.
As regards evidence and proof of use, reference is made to par. 5.4.
5.3.4
CTMR 8 (4), 107
Local significance
Rights falling under Article 8 (4) CTMR may only be invoked if they
are of more than mere local significance. This requirement applies
for all the rights within the scope of Article 8 (4) CTMR, i.e. both to
unregistered trade marks and to other business identifiers. The
proprietors of rights of a mere local significance retain their exclusive
rights under the applicable national law pursuant to Article 107
CTMR.
The question whether an unregistered trade mark or a business
identifier is of more than mere local significance will be answered by
applying a uniform European standard.
The notion of local significance in Article 8 (4) CTMR has to be
interpreted as a criterion of European law. It covers a wider scope
than it might have under national law.
An individual assessment must be made in view of the particularities
of each case.
In general, neither the territory of a city alone, even a big one, is of
more than mere local significance, and nor is a regional district or
province.
The assessment cannot be based on geographical criteria alone.
Rather, what is important is the economic dimension of the use of
the sign.
Consideration will be given, and the evidence must relate, to these
elements:
•
to the intensity of use (sales made under the sign);
•
to the length of use;
•
to the spread of the goods or services for which the sign is used
318
Page
(where are the customers);
•
to the advertising under such sign and the media used for such
advertising including the distribution of such advertising.
For example, in many cases a decisive element will be the intensity
of the marketing. Where, for instance, it can be shown that a sign
was used continuously over several years in two big cities of a
Member State, and provided that substantial sale was made,
partially including sale to other parts of that state, this may, in
principle, be considered as being of more than local significance. In
this respect, both geographic extent and population will be among
the criteria to be taken into account.
Where national law vests in the holder of an unregistered mark or
another business identifier a nationwide right to prohibit a
subsequent trade mark even if the sign is established on a local or
regional basis only, such sign does not automatically qualify as an
earlier right within the meaning of Article 8 (4) CTMR. It will do so
only if the European criteria relating to ‘more than mere local
significance’ are complied with. However, evidence of nation-wide
enforcement of the protection under the applicable law may be taken
as an indication of the existence of a right of more than mere local
significance.
Notwithstanding that the criterion ‘local’ shall be assessed according
to European standards, only facts relating to one and the same
Member State can be taken into account. This follows from the fact
that Article 8 (4) CTMR deals with national law, the scope of which is
the respective territory.
Thus, where a mark or another sign has cross-border significance, a
differentiation must be made with respect to each national legislation
concerned, i.e. the two or more parts cannot be added up. If none of
the geographical parts of the use of the business identifier amounts,
under each of the respective national laws, to the requisite intensity
necessary to obtain a right to prohibit a subsequent national trade
mark, such sign has to be ruled out already on those grounds. Even
if such right to prohibit should exist, for Article 8 (4) to apply still the
“more than mere local significance” hurdle must be passed.
5.3.5
CTMR 8 (2), (4),
26, 29, 31, 34
Earlier right
The right invoked under Article 8 (4) CTMR must be earlier than the
CTM application.
319
Page
In order to determine which of the conflicting rights is earlier, the
relevant dates on which the rights were obtained must be compared.
For the CTM application, this is the filing date or any priority date
validly claimed (hereinafter the “CTM date”). Seniority claims, even if
these relate to the Member State where the other earlier right is
claimed to exist, are not relevant.
As regards the right falling under Article 8 (4) CTMR, the relevant
date of acquisition of exclusive rights under the national law is
decisive.
Where under the national law mere use is sufficient, this must have
begun before the CTM date. Where recognition in the trade or
reputation are required, these must have been acquired before the
CTM date.
Where these conditions are fulfilled only after the CTM date, the
opposition will have to be rejected.
5.3.6
CTMR 8 (1), (4),
51 (1)
Scope of protection
Earlier rights falling under Article 8 (4) CTMR are protected only if
they confer on their proprietors under the applicable national law the
right to prohibit the use of a later trade mark.
This requires a finding that under the applicable national law rights
of the type involved, in the abstract, are exclusive rights enforceable
by means of an injunction vis-à-vis later marks and a finding that in
the actual case under consideration the conditions for obtaining such
injunctive relief, if the mark that is the subject of the opposed CTM
application would be used in the territory in question, are present
(scope of protection).
As regards the first issue – protection in the abstract – this will
generally be answered by using the list in the Annex, where the
applicable earlier rights are listed.
As regards the second question, this will also have to be answered
according to the applicable national law. The Community Trade
Mark Regulation does not contain any rules on the scope of
protection of unregistered trade marks or other rights. Neither do
other Community instruments. The law relating to such rights is not
harmonized. Thus, applying a “European” standard is not possible.
Applying the relevant national law also maintains the requisite
concordance between the right to register and the right to use.
Thus, the Office will apply the laws of the Member States.
320
Page
The difficulties of applying national law should not be overestimated.
Firstly, the list in the Annex provides appropriate indications, which
will be completed in the course of time. Secondly, comparative law
research has shown that for many – if not most – of these rights
criteria are applied which are quite similar to those applied in solving
conflicts between trade marks, namely likelihood of confusion or
damage to reputation or distinctiveness.
For example, unregistered marks are generally protected against
subsequent marks according to the same criteria that are applicable
to conflicts between registered marks, namely identity or similarity of
the signs, identity or similarity of the goods or services, and the
presence of likelihood of confusion. In these cases, the criteria
developed by the courts and by the Office for applying Article 8 (1)
CTMR may easily be transported into Article 8 (4) CTMR.
In any event, and even where the applicable national law provides a
scope of protection for unregistered trade marks which is different
from the criteria found in Article 8 (1) CTMR, the scope of protection
of the earlier right invoked follows from national law. If, for example,
the applicable national law grants protection to unregistered marks
also for dissimilar goods and services under certain conditions, such
national rules apply under Article 8 (4) CTMR.
In other cases where, pursuant to national legislation, a business
identifier which has not yet been established on the market may
nevertheless provide a basis for prohibiting the use of a subsequent
trade mark if certain personal requirements are met (the sign must
not only have been used prior to the subsequent mark, the holder of
the trade mark must also have been aware of the existence of the
earlier sign when applying for trade mark registration), such sign
cannot be invoked at Community level even if it can be shown that
the applicant for the Community trade mark had been aware of it
when applying for the Community trade mark. The national right to
prohibit a subsequent trade mark in such a case is not erga omnes,
it is inter-personal, and amounts in essence to a relief against a
subsequent application made in bad faith. These cases, while
outside the scope of Article 8 (4) CTMR, may fall under Article 51 (1)
(b) CTMR.
5.4
CTMR 74 (1), 76
IR 15 (2), 16, 20
(2)
EVIDENCE AND PROOF; STANDARD OF PROOF
Pursuant to Article 74 (1) CTMR, cited above under par. 5.2, in all
inter partes cases it is for the party relying on a particular proposition
or consequence to provide the Office with the necessary allegations,
facts, and arguments which are necessary to support the
conclusions sought.
321
Page
It is the national law of the country where the right is supposed to be
protected which determines whether it is an exclusive right, whether
it was validly acquired, and what scope of protection it has.
As regards the facts necessary to establish the legal consequences,
for example actual use or reputation, the general principle of Article
74 (1) CTMR is applicable from the beginning.
These facts relate to such items as
•
the requirements for obtaining protection (including use and
reputation) (national standard)
•
the requirements of use (European standard)
•
the requirements for protection being of more than mere local
significance (European standard)
•
the scope of protection (similarity of signs and goods or services,
likelihood of confusion) (national standard).
As regards the law of the Member States applicable by virtue of
Article 8 (4), the Office will treat this also as an issue of fact. The
Office is not in a position to determine with sufficient accuracy on its
own motion what the law relating to Article 8 (4) rights is in all the
Member States. Treating this as an issue of fact, subject to proof by
the party alleging such right, is in accordance with the approach of
the courts in the Member States with respect to foreign law under
their private international law principles.
Thus, as regards questions of law, i.e. the rules and norms of the
respective national law applicable to the specific case, the Office will
generally require the opponent to provide the necessary elements
for the Office to take a decision.
It is only when such elements have already been previously
established by the Office, such as through inclusion in the list in the
Annex, that such proof will not be necessary. The parties to the
procedure are, however, free to provide evidence that the
information contained in the list or otherwise established by the
Office is no longer correct or up to date.
As regards proof of the legal situation, and to the extent that this
information is not already included in the annex, the opponent will
have to provide the necessary legislation in force.
Where the opponent relies on national case law to prove his case,
he will have to provide the Office with this case law in sufficient
detail, such as by providing a copy of the decisions invoked and not
322
Page
only by reference to a publication somewhere in the legal literature.
Where cases involving the same or sufficiently similar conflicts have
already been adjudicated by a national jurisdiction (whether trade
mark authority or court), this may suffice to demonstrate both the
existence of the right and its scope of protection.
As regards the procedure, European law is applied in accordance
with the principle that procedural matters are dealt with by the “lex
fori”.
This includes the means of proving actual use; the Office cannot
apply national law in this regard. Also as regards the standard of
proof, i.e. the degree of conviction or preponderance of evidence
required, the Office will apply the same standard as in all other
opposition proceedings (in particular, as in respect of proof of use
pursuant to Article 43 (2) CTMR).
The Office will as a general rule take its decisions in a written
proceedings without oral hearing and thus without the examination
of witnesses and other similar means of evidence.
323
Page
Member
State
Austria
National rights which constitute “earlier rights” in the sense of
Article 8 (4) CTMR
A.
Unregistered TM
-
Unregistered TM which has acquired a certain degree of recognition in the course of
trade (”Verkehrsgeltung”)
§ 31, AT-TML
Acquisition through use which has led to a recognition by the relevant public that the
sign is a mark of the claimant ("Verkehrsgeltung").
Right to prohibit use of subsequent (registered) trade mark provided that unregistered
mark, at the date of application for subsequent TM, was, to a certain degree, known
to the relevant public (“als Kennzeichen gegolten hat”) and provided that the
subsequent TM had not been used prior to application for the same period as an
unregistered mark.
B.
Trade name/other business identifier
-
Trade names (the firm of an enterprise), special designations of enterprises and
special designations of printed works
Acquisition through use.
§ 32, AT-TML, § 9 (1), (3) of the Law Against Unfair Competition
To the notion of a special designation of an enterprise are assimilated ("stehen
gleich") such business signs ("Geschäftsabzeichen") or other signs designated to
distinguish the business from other businesses (including the get-up or packaging of
goods) which, within the relevant public, are considered to be the distinguishing sign
("Kennzeichen") of that business. Such other signs are acquired through use which
has led to a recognition by the relevant public that the sign is a sign of the claimant
("Verkehrsgeltung").
§ 9 (3) of the Law Against Unfair Competition
Right to prohibit use of subsequent (registered) trade mark provided that there is a
risk of confusion.
Benelux
A.
Unregistered TM
Unregistered trade marks are not recognised under the uniform Benelux law on Trade
Marks.
Article 12A, BX-TML
B.
General remark: In respect of the Benelux territory, each state must be considered
separately.
Belgium:
-
Trade name (nom commercial)
Article 12B, Uniform Benelux Law on Marks, Article 93 of 'loi du 14 juillet 1991 sur les
pratiques du commerce et sur l'information et la protection du consommateur' and
Article 1382 of the 'Code Civil' (Civil Code).
Acquisition of trade name from its first use in trade. Protection limited to geographical
area where the trade name is used.
Right to prohibit use of subsequent (registered) trade mark.
Member
State
Article 8 (4) CTMR
-
Company name (dénomination sociale)
Article 12B, BX-TML and Article 65 of 'Code de sociétés du 7 mai 1999'
Acquisition of protection as a company name, in principle, from the date of the establishment of the company. Protection extends to the whole national territory.
Luxembourg:
-
Trade Name (nom commercial)/ company name (dénomination sociale)
Article 12B, BX-TML and Article 17, alinéa f, of ‘loi du 27 novembre 1986 réglementant
certaines pratiques commerciales et sanctionnant la concurrence déloyale’.
Netherlands:
-
Trade name
Article 12B, BX-TML and Law of 5 July 1921 on trade names (Handelsnaamwet) and
Article 6:162 of the Dutch Civil Code (Burgerlijk Wetboek).
Acquisition: Right to a trade name is acquired by its use; there is a possibility to have
the trade name registered with the Trade Register at the Chamber of Commerce, but
there is no obligation to do so, and doing so does not provide any right. No particular
requirement that the trade name be distinctive and non-descriptive.
Right to prohibit use of subsequent (registered) trade mark where there is a risk of confusion.
Denmark
A.
Unregistered TM
-
TM “by commencement of use”
§ 3 (1)(ii), DK-TML
Acquisition: Right to unregistered trade mark by commencement of its use in
Denmark.
Right to prohibit use of subsequent (registered) trade mark if used for the goods or services for which it has commenced to be used and for which it is continuously used
§ 15 (4)(ii), DK-TML.
Scope of protection: The same as for Danish registered trade marks, i.e. against the
acts corresponding to those referred to in Article 9(1) (a), (b) and (c) CTMR
§ 4 (1), (2), DK-TML.
B.
-
Company name to which the person concerned has a legal title
The term “company name” is to be given an extensive interpretation and covers not
only private companies such as private firms, limited liability companies, other commercial companies, secondary trade names but equally foundations, unions, associations,
museums and public institutions.
§ 14 (iv), DK-TML
Member
State
Article 8 (4) CTMR
Acquisition: Company name protection does not require its registration.
Right to prohibit use of subsequent (registered) trade mark, where signs are identical
or similar.
-
Signs used in the course of trade
§ 15 (4)(ii), DK-TML
The term “signs used in the course of trade” is to be given an extensive interpretation
and covers, according to Danish law, any commercial meaning or symbol, which can
serve as a connecting link between a business and its customers/users. This includes, inter alia, trade marks, business names and shop-facades
Right to prohibit use of subsequent (registered) trade mark, where signs are identical
or similar.
-
Distinctive titles of protected literary and artistic works
Only titles of protected literary and artistic works fall under this provision. Whether a
literary or artistic work is protected is decided according to the Danish law on Copyright.
§ 14 (v), DK-TML
Finland
A.
Unregistered trade mark
-
Trade mark established on the market
§ 2, FI-TML
Acquisition: Use leading to the unregistered mark becoming established on the market. Shall be regarded as established if it has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietor’s
goods or services.
Scope of protection: Identical to that of a Finnish registered trade mark, i.e. against
acts corresponding to those contained in Article 9 (1)(a), (b) and (c) CTMR.
§§ 1, 2 (3), 6, 14.1 (6), FI-TML
B.
-
Trade names ((toiminimi, firma) definition: any name that a natural or legal person is
using in business activities).
these include secondary trade names ((aputoiminimi, bifirma) natural or legal person can carry out part of their business under a secondary trade name) and secondary symbols ((toissijainen tunnus, sekundärt kännetecken) sign, including figurative
signs, used in the course of trade)
-
§§ 1, 2 (2), 3 (2), 6, 14.1 (6), FI-TML
Acquisition: Use leading to the trade name becoming established on the market.
Right to prohibit subsequent trade mark, if signs can be confused and cover identical or similar goods or services.
-
Distinctive titles of protected literary or artistic work
Member
State
Article 8 (4) CTMR
Right to prohibit the use of a subsequent trade mark if it is composed of or contains
anything that is likely to give the impression of being the title of another’s protected
literary or artistic work
§ 14 (5), FI-TML
-
Name of a trader
Right to prohibit subsequent trade mark if signs can be confused and cover identical
or similar goods and services
§§ 1, 6, 14.1 (6), FI-TML
France
A.
Unregistered trade mark
Unregistered trade marks are not recognised under French law.
B.
-
Company name (dénomination sociale) or sign of a company
Article L. 711-4 (b), FR-CPI
Acquisition: Protection of the company name from completion of founding documents
of the company.
Geographical scope: In principle, a company name is protected only in the area of effective activities.
Right to prohibit use of a subsequent trade mark.
Scope of protection: Risk of confusion in the mind of the public.
-
Trade name (nom commercial)
Article L. 711-4(c), FR-CPI
Acquisition: Protection from first use in trade. Must be known throughout the French
national territory.
Scope of protection: Risk of confusion in the mind of the public
-
Business sign (enseigne)
Article L. 711-4(c), FR-CPI.
Acquisition: Protection from its first use in trade. Geographical scope: limited, in principle, to area of activity (rayonnement local).
Right to prohibit use of a subsequent trade mark only if sign is known in the whole
country (enseigne notoire).
Scope of protection: Risk of confusion in the mind of the public.
Member
State
Germany
Article 8 (4) CTMR
A.
Unregistered trade marks
Trade mark acquired by use ("Benutzungsmarke")
Acquisition through use which has led to a recognition by the relevant public that the
sign is a mark of the claimant ("Verkehrsgeltung"). The degree of recognition must be
at least 25 %.
§ 4 (2), DE-TML
Right to prohibit the use of a subsequent trade mark in the whole territory of Germany, if the recognition exists in the whole of Germany. Not, if recognition is established only for a particular locality.
§§ 12, 14, DE-TML
Scope of protection: The same as for registered German trade marks, i.e. against the
acts corresponding to the acts referred to in Article 9 (1) (a), (b) and (c) CTMR.
§ 14 (2) no. 1, 2 and 3, DE-TML
B.
Business identifiers ("geschäftliche Bezeichnungen"), namely
- business signs ("Unternehmenskennzeichen"), including special business designations ("besondere Geschäftsbezeichnungen"),
- other business signs ("Geschäftsabzeichen") or other signs designated to distinguish the business from other businesses
- work titles ("Werktitel")
§ 5 (1), DE-TML
Definition of business signs: A business sign is a sign which is used in the course of
trade as the name or firm or as the special business designation of a business establishment ("Geschäftsbetrieb") or business enterprise ("Unternehmen").
§ 5 (2), 1st sentence, DE-TML
The name or firm is the official or officially registered designation of the trader. The
special designation of business is a sign used by the trader to identify his business or
undertaking as such, which functions as the name of the business or enterprise.
Definition of other business signs ("Geschäftsabzeichen") or other signs designated
to distinguish the business from other businesses: To the notion of a special designation of a business are assimilated ("stehen gleich") such business signs
("Geschäftsabzeichen") or other signs designated to distinguish the business from
other businesses which, within the relevant public, are considered to be the distinguishing sign ("Kennzeichen") of that business.
§ 5 (2) , 2nd sentence, DE-TML
The other business signs ("Geschäftsabzeichen") or other signs designated to distinguish the business from other businesses are such signs designated to distinguish a
business which do not have a name function.
These other signs are protected only if they have become known in the course of
trade as distinctive signs, i.e., if they have acquired distinctiveness through market
recognition ("Verkehrsgeltung")
(Official Memorandum to the Trademark Bill (Amtliche Begründung), ad § 5, 1st par..)
Definition of work titles: A work title is the name or other designation of printed publications, films, musical works, stage works or other comparable works. This can be an
individual work, a series of works, or a periodical publication. Under German jurisprudence, this also includes titles of radio or television series, computer games and
video games, possibly also computer programs. It is not required that the work designated by the work title is protected under copyright law.
§ 5 (3), DE-TML
Member
State
Article 8 (4) CTMR
Acquisition of rights:
-
-
-
Business signs:
Main rule: If the sign is inherently distinctive, acquisition through use in trade as a
business sign.
If the sign is not inherently distinctive, through acquisition of market recognition
("Verkehrsgeltung").
Exception: other business signs ("Geschäftsabzeichen") or other signs designated
to distinguish the business from other businesses are protected only if they have
become known in the course of trade as distinctive signs, i.e., if they have acquired
distinctiveness through market recognition ("Verkehrsgeltung")
Work titles:
If the work title is inherently distinctive, acquisition through use in the course of trade, i.
e. normally as from the appearance of the work. The required degree of inherent distinctiveness is low.
If the work title is not inherently distinctive, acquisition through acquisition of market
recognition ("Verkehrsgeltung").
§ 5, DE-TML
Right to prohibit use:
If the business sign (except "other business signs or other signs designated to distinguish the business from other businesses") or work title is inherently distinctive, right to
prohibit the use in the whole territory of Germany.
If the business sign or work title is not inherently distinctive, right to prohibit the use of a
subsequent trade mark in the whole territory of Germany, if the market recognition exists in the whole of Germany. Not, if market recognition is established only for a particular locality.
§§ 12, 15, DE-TML
Other business signs ("Geschäftsabzeichen") or other signs designated to distinguish
the business from other businesses: right to prohibit the use of a subsequent trade
mark in the whole territory of Germany, if the market recognition exists in the whole of
Germany. Not, if market recognition is established only for a particular locality.
Scope of protection:
Against unauthorised use in a way which is likely to create confusion with the business
sign or work title.
If the business sign or work title has a reputation in Germany, also against use of the
identical or a similar business identifier in the course of trade if there is no likelihood of
confusion, if the use of the sign would be detrimental to, or take unfair advantage of,
the distinctiveness or repute of the business sign or work title. Reputation protection for
work titles difficult to establish in practice (no case law yet).
§ 15, DE-TML
Member
State
Greece
Article 8 (4) CTMR
A.
Unregistered trade marks
Introduction:
There are two sets of provisions dealing with the protection of unregistered trade
marks and related signs: (a) trade mark law confers on the owner the right to prohibit
registration of a later trade mar, whereas (b) the law on unfair competition and other
specific provisions deal with the issue of use. As the complementary application of
trade mark law for any matter not directly dealt with in other statutes is generally accepted, both sets of rules are discussed here.
Acquisition through use in the course of trade. If not inherently distinctive, they must
have also been "established in the market".
Necessary conditions of protection: Prior use, likelihood of confusion as to origin.
Article 4 (3) (a), GR-TML
Law 146/1914 on Unfair Competition, Article 13 (1)
B.
Trade name/other business identifiers
-
Company names:
Acquisition exclusively through use in the course of trade. Registration is not relevant
for protection, it only serves administrative purposes.
Civil code, Article 58
Law 1089/1980, Article 4-8, as amended by 1746/1988
-
Trade names and commercial establishment insignia:
Acquisition through use in the course of trade. If not inherently distinctive, they must
have also been "established in the market".
Law 146/1914 on Unfair Competition, Article 13 (1) (2)
-
Titles of periodical publications:
Generally regarded as sui generis exclusive rights, whether or not original enough to
be protected as literary works.
Acquisition through use in the course of trade (i.e. from date of first publication).
-
Other distinctive signs
The peculiar shape of the goods or of their packaging, as well as the peculiar get up
,
), provided they
or decoration thereof (I
are known in the relevant commercial sector as product identifiers of a given trader.
Member
State
Article 8 (4) CTMR
Acquisition through use in the course of trade. They must be capable of performing a
trade mark-like function (i.e. to possess a distinctive character afforded by a certain
degree of originality).
General note:
All the exclusive signs referred to above are also protected under Art. 1 of Law
146/1914 on "Unfair Competion", especially as regards infringing acts not covered by
the above provisions (e.g. protection of reputed signs for dissimilar goods – dilution of,
or unfair advantage to, their distinctiveness or repute, that is, where likelihood of confu-
Ireland
A.
Unregistered TM
-
Unregistered trade marks used in the course of trade
Section 10 (4)(a), IE-TMA
Right to prohibit use of subsequent TM if protected by any rule of law, in particular, the
law of passing off.
The action for passing-off is based upon goodwill acquired by use of the earlier sign.
Goodwill is sometimes called reputation. In Ireland, goodwill can be acquired without
necessarily trading in the territory of the State. The tort arises if a later sign causes a
misrepresentation likely to lead to deception or confusion, with consequent likelihood of
damage to the goodwill or business of the proprietor of the earlier sign. The law is explained in "Intellectual Property in Ireland" by Robert Clark and Shane Smyth, Butterworths, 1997, Chapter 24. Authoritative statements of the law are found in Court judgements, for example in C. & A. Modes v. C. & A. (Waterford) [1978] Fleet Street Reports
126; Adidas K.G. v. O’neill & Co. Limited [1983] Fleet Street Reports 76; and Guiness
Ireland Group v. Kilkenny Brewing Co. Limited [2000] Fleet Street Reports 112.
B.
-
Business sign used in the course of trade
Section 10 (4)(a), IE-TMA
Right to prohibit use of subsequent TM if protected by any rule of law, in particular, the
law of passing off.
On the law of passing-off, see remarks above under point A.
Member
State
Italy
Article 8 (4) CTMR
A.
Unregistered TM ("Marchio di fatto")
-
Sign known as a trade mark or as a sign which is distinctive for manufactured goods
or services which have been put on the market or rendered by others (= notorious
prior used mark)
Article 17 (1)(b), IT-TML
Right to prohibit use of a subsequent trade mark, where known by the relevant public
throughout Italy or in a substantial part of it.
Scope of protection: Identical or similar signs and identical or similar goods or services and likelihood of confusion including likelihood of association.
B.
-
Company name, corporate name, trade name or business signs adopted by others
("ditta", "denominazione sociale", "ragione sociale", "insegna")
Article 17 (1)(c), IT-TML
Right to prohibit use of subsequent trade mark, where known by the relevant public
throughout Italy or in a substantial part of it.
Scope of protection: Identical or similar signs and identical or similar goods or services and likelihood of confusion including likelihood of association.
Portugal
A.
Unregistered TM
B.
-
Trade name, company name
Articles 33 (1)(b) and 189 (1)(f), PT-CPI, Decree No 129/98 of 13.5.1998
Right to prohibit use of a subsequent trade mark, if liable to mislead or confuse consumers
Requirement of registration before the Register of Companies
-
Name or emblem of an establishment, logo
Names of establishment are:
fancy or specific designations;
historical names, with the exception of those the use of which would be detrimental or offensive to the esteem in which such names are generally held;
the name or the property or premises of the establishment, when this is
admissible or when accompanied by a distinctive element; or,
the name, trade name, company name, pseudonym or coined name of the
proprietor.
Emblems of establishments are:
any external sign composed of figures or designs, alone or combined with the
names or designations mentioned above or other words or devices, provided
that the whole constitutes a specific form or configuration as a distinctive or
characteristic element
the ornamentation of frontages and parts of shops, warehouses or factories
exposed to the public, as well as the colours of a flag, provided that perfectly
distinguish the respective establishment
Member
State
Article 8 (4) CTMR
Logos are:
Signs distinguishing an entity producing goods or rendering services, which are
composed of letters, or letters and designs, provided that the sign as a whole
constitutes a distinctive form or configuration
Articles 228 - 232, 246, 189 (1) (f), PT-CPI
Right to prohibit use of a subsequent trade mark, if liable to mislead or confuse consumers
Requirement of registration before the Portuguese Industrial Property Office
Spain
A.
Unregistered TM
-
Unregistered trade marks are not recognised under Spanish trade mark law
B.
-
Registered trade name (nombre comercial registrado)
A trade name may consist of a name or sign and, in particular, may be:
surnames, corporate names and the names of legal entities;
fanciful names;
names alluding to the object of the business activity;
anagrams and logotypes;
images, figures and designs;
any combination of such signs
Article 87, ES-TML
Acquisition:
Registration with the Spanish Patent and Trademark Office
Applications for registration at the Spanish Patent and Trademark Office are also
protected, provided that the trade name later becomes registered
Articles 7 (2), 90, ES-TML
-
-
Trade marks identical to the earlier trade name and designating goods or services which are identical to the activities covered by the trade name,
trade marks identical or similar to the earlier trade name and designating goods
or services which are identical or similar to the activities covered by the trade
name, provided that there is a risk of confusion on the part of the public which
includes a likelihood of association,
trade marks identical or similar to an earlier trade name having a reputation in
Spain and designating goods or services which are not similar to the activities
covered by the trade name where, due to the reputation of the trade name, the
use of the trade mark would indicate a connection between the goods or services
covered by the trade mark and the proprietor of the trade name, or where the use
of the trade mark, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or repute of the trade name.
Articles 7 (1)(a), 7 (1)(b), 8 (1), ES-TML
Right to prohibit use of subsequent trade mark.
Articles 7, 8, 90, ES-TML
Member
State
Article 8 (4) CTMR
-
Unregistered trade name (nombre comercial no registrado), company names
(denominación social), business names (razón social)
Definition: same as for registered trade names.
Acquisition: use or notorious knowledge throughout the territory of Spain or, in case
of foreigners to whom Article 8 of the Paris Convention applies, use or notorious
knowledge in Spain.
Article 9 (1), ES-TML
Risk of confusion due to the identity or similarity of the signs and the identity or similarity of their area of commercial application.
Right to prohibit the use of a subsequent trade mark
-
Other signs:
The former Spanish trade mark law protected business signs (rótulos de establecimiento) as rights of a mere local significance and with a protection limited to the
municipality for which they are registered. Their definition corresponded to the definition of trade names.
The new Spanish trade mark law no longer provides for such business signs and contains transitional provisions according to which existing registrations of such signs are
phased out within the next seven years and will in the future be governed by the law
against unfair competition.
Such business signs do not fall under Article 8 (4) CTMR but under Article 107
CTMR.
Sweden
A.
Unregistered TM
-
Unregistered trade marks established on the market
§ 2 (1), SE-TML
Acquisition: Use leading to the unregistered mark becoming established on the market. A sign shall be considered to have become established on the market when it is,
within a significant portion of the circle for which it is intended, known as a symbol for
the goods which are being made available under it.
Scope of protection: Identical to that of a Swedish registered TM, i.e. against acts
corresponding to those contained in Article 9(1)(a), (b), and (c) CTMR
§§ 1, 2 (3), 6, 14 (6), SE-TML
B.
-
Trade names
§§ 1, 2 (2), 3 (2), 14 (6), SE-TML
Acquisition: Use leading to the trade name becoming established on the market
Right to prohibit use of a subsequent TM, if signs can be confused and cover identical or similar goods and services
Member
State
Article 8 (4) CTMR
-
Distinctive titles of protected literary or artistic work
§ 14 (5), SE-TML
Right to prohibit use of a subsequent TM If it contains an element which is likely to
convey the impression of being the distinctive title of another person's protected literary or artistic work.
-
Name of trader
§§ 1, 6, 14 (6), SE-TML
Right to prohibit subsequent trade mark if signs can be confused identical or similar
goods or services
United
Kingdom
A.
Unregistered marks
-
Unregistered TM used in the course of trade
Unregistered TM used in the course of trade, if protected by any rule of law, including
that of passing off.
Section 5 (4)(a), GB-TMA
B.
-
Sign used in the course of trade
Sign used in the course of trade, protected by any rule of law, including that of passing
off.
Section 5 (4)(a), GB-TMA
Right to prohibit use of a subsequent trade mark
Remarks: The Olympic Symbol Protection Act 1995 contains provisions on the exclusive use for commercial purposes of the Olympic symbol and certain words associated
with the Olympic games by an individual nominated by the Secretary of State: such entitlement is not a basis for Article 8(4) CTMR.
Member
State
National rights which will fall under Article 8 CTMR, upon accession
CYPRUS
A.
Unregistered trade marks:
B.
Other rights:
-
No
A.
Non-registered sign used in the course of trade of more than mere
local significance
Article 7 (1)(g) TML
CZECH
REPBULIC
Act No. 441/2003 Coll. of 3 December 2003 on Trademarks and on
amendments to Act No. 6/2002 Coll. on judgements, judges,
assessors and state judgement administration and on amendments
to some other Acts (Act on Courts and judges) in the wording of
later regulations (came into force on 1st April 2004)
ESTONIA
B.
Other rights:
Another sign used in the course of trade of more than mere local
significance
Article 7 (1)(g) TML
A.
-
Unregistered trade marks not recognised under Estonian law
B.
Other rights:
-
Trade names (provided that the trade name has been entered in the
commercial register prior to the date of receipt of the application for
a trade mark and provided that the area of activity of the owner of
the trade name registered in the commercial register includes the
services of the later trade mark application).
§ 8 (1)(5) TML
-
Page 336
Member
State
HUNGARY
A.
-
Unregistered trade marks which have been effectively used in the
country where the use of the sign without the consent of the prior
user would be contrary to law.
Article 5 (2)(a)
B.
Other rights
-
No
A.
-
No protection of unregistered trade marks (except for well-known
trade marks.
Article 4 (4), (7) TML
B.
Other rights:
-
Commercial rights, that is rights pertaining to a trade name (commercial
designation, name of a mass medium, or other similar sign) that is used in
an identical or similar business sector, if its fair and lawful use in the
course of trade in Latvia was commenced before the date of application
for registration of the trade mark or its priority date, respectively, or to a
trade name (commercial designation, name of a mass medium, other
similar sign) of Latvia or of a foreign country that was well known in Latvia.
Article 9 (3) No. 3 TML
A.
-
Not recognised under Lithuanian law
B.
Other rights:
-
Company names
Article 7 (1)(iv) TML
LATVIA
LITHUANIA
Page 337
Member
State
MALTA
A.
-
Unregistered trade marks used in the course of trade
Article 6 (4)(a) TML
B.
Other rights:
-
Other signs used in the course of trade
Article 6 (4)(a) TML
A.
-
Not recognised under Polish law
B.
Other rights:
A.
-
Unregistered trade marks which have become characteristic through
use for at least two years prior to the filing of the opposing
application
Article 4 (d) TML
B.
Other rights:
-
Trade names entered in the Register of Companies or a similar
register
Article 4 (e) TML
POLAND
SLOVAKIA
Page 338
Member
State
SLOVENIA
A.
-
Unregistered marks not recognised according to Slovenian law
B.
Other rights:
-
No
Page 339
Trade marks with reputation
Part 5
Article 8(5) CTMR
Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004
Page 340
INDEX
PART 5: TRADE MARKS WITH REPUTATION ..................................................... 342
I.
INTRODUCTION....................................................................................... 342
1. Relevant provisions ................................................................................... 342
2. The state of case-law ................................................................................ 343
II.
SCOPE OF APPLICATION ....................................................................... 344
1. Applicability to registered marks ............................................................... 344
1.1. The requirement of registration........................................................... 344
1.2. Borders with Article 8(2)(c) CTMR...................................................... 345
2. Applicability to similar goods & services.................................................... 346
III.
CONDITIONS OF APPLICATION ............................................................. 348
1. Earlier mark with reputation ...................................................................... 348
1.1. Nature of reputation ............................................................................ 348
1.2. Scope of reputation............................................................................. 350
1.2.1. Degree of recognition................................................................ 350
1.2.2. Relevant public ......................................................................... 351
1.2.3. Goods and services covered .................................................... 352
1.2.4. Relevant territory....................................................................... 352
1.2.5. Relevant point in time ............................................................... 354
1.3. Assessment of reputation – Relevant factors ..................................... 355
1.3.1. Trade mark awareness ............................................................. 356
1.3.2. Market share ............................................................................. 357
1.3.3. Intensity of use.......................................................................... 358
1.3.4. Geographical extent of use ....................................................... 359
1.3.5. Duration of use.......................................................................... 360
1.3.6. Promotional activities ................................................................ 360
1.3.7. Other factors ............................................................................. 361
1.4. Proof of reputation .............................................................................. 363
1.4.1. Standard of proof ...................................................................... 363
1.4.2. Burden of proof ......................................................................... 363
1.4.3. Evaluation of the evidence........................................................ 364
1.4.4. Means of evidence.................................................................... 365
2. Identity – similarity of signs ....................................................................... 372
3. Detriment – Unfair advantage ................................................................... 374
3.1. Protected subject-matter..................................................................... 374
3.2. Assessment of detriment – unfair advantage ..................................... 375
3.3. Forms of detriment – unfair advantage............................................... 376
3.3.1. Detriment to distinctiveness ...................................................... 376
3.3.2. Detriment to repute ................................................................... 377
3.3.3. Taking unfair advantage of distinctiveness ............................... 379
3.3.4. Taking unfair advantage of repute ............................................ 380
3.4. Proof of detriment – unfair advantage ................................................ 381
3.4.1. Standard of proof ...................................................................... 381
3.4.2. Burden of proof ......................................................................... 382
3.4.3. Means of evidence.................................................................... 383
4. Use without due cause.............................................................................. 383
Page 341
PART 5: TRADE MARKS WITH REPUTATION
I.
INTRODUCTION
1.
Relevant provisions
According to Article 8(5) CTMR upon opposition by the proprietor of an earlier
trade mark, within the meaning of paragraph 2, the trade mark applied for
shall not be registered:
where it is identical with or similar to the earlier trade mark and is to be
registered for goods or services which are not similar to those for which
the earlier trade mark is registered, where in the case of an earlier
Community trade mark the trade mark has a reputation in the
Community and, in the case of an earlier national mark, the trade mark
has a reputation in the Member State concerned and where the use
without due cause of the trade mark applied for would take unfair
advantage of, or be detrimental to, the distinctive character or the
repute of the earlier trade mark.
The same wording is used in the parallel provisions of the Trade Mark
Directive (First Council Directive 89/104/EEC of 21 December 1988 to
approximate the laws of the Member States relating to trade marks, “TMD”),
namely Article 4(3) TMD, which deals with the protection of Community trade
marks with reputation, and Article 4(4)(a) TMD, the equivalent provision for
national marks. Even though the implementation of Article 4(4)(a) TMD was
optional, all the Member States have in fact adopted provisions granting
enlarged protection to national marks with reputation.
However, even in the hypothetical case that an acceding Country decides not
to enact an equivalent provision in its trade mark law, the independent
reference to national marks with reputation in Article 8(5) CTMR means that
they are directly protected at Community level, i.e. irrespective of whether the
national law grants them enlarged protection.
The wording of Article 8(5) CTMR is also very similar to the one used in
Articles 9(1)(c) CTMR and 5(2) TMD, i.e. the provisions determining the
exclusive rights of a trade mark proprietor, with a slight difference in the way
these refer to the condition of detriment: unlike the conditional form used by
Article 8(5), which applies where use of the application “would take unfair
advantage of, or be detrimental to the distinctiveness or repute of the earlier
mark”, Articles 9(1)(c) CTMR and 5(2) TMD read “takes unfair advantage of
or is detrimental to”. The reason for this difference is that in the first case –
Article 8(5) CTMR – registrability is at issue which may have to be decided
without any use of the later mark having been made, while in the second case
the prohibition of use is at issue. The impact of this difference on the kind of
Page 342
evidence required for proving detriment in either case is discussed in section
III.3.3.1. below.
2.
The state of case-law
The European Court of Justice has dealt so far with the protection of marks
with reputation in two preliminary rulings delivered in the context of the TM
Directive. In case C-375/97, General Motors v Yplon S.A., (“General Motors”),
the question put to the Court concerned the meaning of the term
“reputation” in the context of Article 5(2) TMD, whereas in case C-292/2000,
Davidoff & Cie SA, Zino Davidoff SA v Gofkid Ltd. (“Davidoff”), it concerned
the scope of protection afforded to marks with reputation and, more
particularly, the applicability of Article 5(2) TMD to similar goods and
services.
In view of the limited scope of the questions referred to the Court, the above
judgements did not proceed to a full-scale interpretation of Article 5(2) TMD,
saying little or nothing about similarity, detriment, unfair advantage or due
cause. Thus, they are authority only for the issues they directly address,
namely the nature, scope, territorial extent and way of assessment of
reputation.
Furthermore, there are the two opinions of Advocate General Jacobs in the
above cases, as well as the opinion of Advocate General Ruiz-Jarabo
Colomer in case C-206/2001, Arsenal Football Club plc v Mathew Reed
(“Arsenal”), which go somewhat further in the analysis of Article 5(2) TMD.
Even though opinions of Advocates General are not binding, they are useful
to the extent they provide a source of arguments and suggestions for the
interpretation and further development of the law.
Also the decisions of the Boards of Appeal are still limited in number. Only
a few decisions have dealt with the interpretation of Article 8(5) thoroughly,
whereas others only deal with specific aspects of the protection afforded to
marks with reputation.
Thus, these Guidelines are supported by authority only in some aspects,
whereas in others the current practice is developed by following standard
rules of statutory interpretation. The position taken in the text as regards the
latter issues will be adapted as the case law of the Boards of Appeal, the CFI
and ECJ develop.
Page 343
II.
SCOPE OF APPLICATION
The wording of Article 8(5) CTMR has given rise to some controversy as
regards its applicability exclusively to (a) earlier registered marks and (b)
dissimilar goods and services. As these issues directly affect the scope of its
application, it should be clarified at the outset whether it is possible to also
apply Article 8(5) to (a) unregistered/well-known marks and (b) similar goods
and services.
1.
Applicability to registered marks
1.1. The requirement of registration
Article 8(5) specifies the kinds of earlier rights on which an opposition may
be based by reference to paragraph 2 of the same Article, which, apart from
Community, international, Benelux and national registrations or applications,
includes earlier well-known marks within the meaning of Article 6bis of the
Paris Convention, that is, marks that may, or may not be registered.
It has been argued that, as a consequence of this reference, Article 8(5)
should also apply to unregistered marks, at least to the extent that these have
become well-known in the relevant territory, all the more so since the
protection of well-known marks against dissimilar goods and services is
favoured both by the WIPO Joint Recommendation Concerning Provisions on
the Protection of Well-Known Marks (WIPO Recommendations) and by Article
16(3) TRIPS.
However, such an interpretation cannot be sustained by the wording of Article
8(5) which indirectly but clearly restricts its applicability to earlier registered
marks, by prohibiting registration “where [the application] is identical or similar
to the earlier trade mark and is to be registered “for goods and services that
are not similar to those for which the earlier trade mark is registered”. It
follows that the existence of an earlier registration is a necessary condition
for the application of Article 8(5) and that, as a consequence, the reference to
Article 8(2) should be limited to earlier registrations and to earlier applications
subject to their registration.
Such a restrictive approach is not incompatible with Article 16(3) TRIPS, the
wording of which also refers to an earlier registration in a very similar manner:
“Article 6bis PC shall apply, mutatis mutandis, to goods or services which are
not similar to those in respect of which a trademark is registered, provided
that use of the of that trademark … would indicate a connection between
those goods or services and the owner of the registered trademark and
provided that the interests of the owner of the registered trade mark are
likely to be damaged by such use.”
Nor can this view be excluded by the fact that the WIPO Recommendations
do not impose any conditions for granting extended protection to earlier wellOpposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004
Page 344
known marks as they are not binding for the interpretation of the CTM
Regulation.
Therefore, Article 8(5) CTMR only applies to earlier Community, international,
Benelux and national registrations, as well as to earlier applications, subject to
their registration.
1.2.
Borders with Article 8(2)(c) CTMR
The requirement of registration thus serves to mark the borders between
Articles 8(5) and 8(2)(c) CTMR in the following manner:
On the one hand, well-known marks which are not registered in the
relevant territory, cannot be protected under Article 8(5) against dissimilar
goods. They can only be protected against identical or similar goods
pursuant to Article 8(1)(b), to which Article 8(2)(c) refers for determining the
scope of protection.
However, this is without prejudice to the fact that well-known marks, to the
extent they are not registered, are also protected under Article 8(4) CTMR.
Thus, if the relevant national law affords protection to them against dissimilar
goods and services, such enhanced protection may also be invoked under
Article 8 (4).
On the other hand, where well-known marks have been registered, either as
CTMs, or as national marks in one of the member States, they can be
invoked under Article 8 (5), but only if they also fulfil the requirements of
reputation.
Even though the terms “well-known” (a traditional term used in Article 6bis of
the Paris Convention) and “reputation” denote distinct legal concepts, there is
a substantial overlap between them, as shown by a comparison of the way
well-known marks are defined in the WIPO Recommendations, with the way
reputation has been described by the Court in General Motors.
Thus, it will not be unusual for a mark which has acquired well-known
character, to have also reached the threshold laid down by the Court in
General Motors as regards marks with reputation, given that in both cases the
assessment is principally based on quantitative considerations regarding the
degree of knowledge of the mark among the public, and that the thresholds
required for each case are expressed in quite similar terms (“known or wellknown at the relevant sector of the public1” for well-known marks, as against
“known by a significant part of the relevant public” as regards marks with
reputation).
The overlap between marks with reputation and registered well-known marks
has a repercussion on the raising of the ground of opposition, in the sense
that it should not matter for the applicability of Article 8(5) if the opponent calls
1
Article 2(2)(b) and 2(2)(c) of the WIPO Recommendations.
Page 345
his earlier registration a well-known mark instead of a mark with reputation.
For this reason, the terminology used must be carefully scrutinised, especially
where the grounds of the opposition are not clearly explained, and a flexible
approach should be taken where appropriate.
For example, if the opponent bases the opposition (a) on an earlier
registration and (b) on an identical earlier well-known mark in the same
territory and grounds it on Articles 8(1)(b), 8(2)(c) and 8(5) CTMR, the earlier
right must be examined (a) under Article 8(1)(b) as an earlier registration with
enhanced distinctiveness (in view of its well-known character) (b) under
8(2)(c) as an earlier well-known mark (which will only be useful if registration
is not proved, as otherwise the outcome is the same) and (c) under Article
8(5), as a mark with reputation, even if reputation was not claimed expressly.
R 799/1999-1 RODIO / RHODIA (FIG MARK) (EN)
Even if the opponent has not expressly grounded his opposition on Article 8(5)
CTMR, the contents of the notice (especially as regards the relationship
between the goods) and of the explanation of grounds must be carefully
analysed with a view to ascertaining whether the real intention of the
opponent was to also rely on this ground.
2.
Applicability to similar goods & services
The literal interpretation of Article 8(5) leads to the prima facie conclusion
that it only applies to dissimilar goods and services, as its wording
provides that the mark applied for will not be registered “where it is identical
with, or similar to, the earlier trade mark and is to be registered for goods and
services which are not similar to those for which the earlier trade mark is
registered”. Based on such an interpretation, a number of decisions of the
Opposition Division have regarded the dissimilarity of goods and services as a
necessary condition for the application of Article 8(5).
2096/2001 BUKO/BUKO (EN), 1458/2001 DB(fig)/db SYSTEME (EN),
1490/2001 EXIT/XITE (EN), 2094/2001 DALSY DAYSIR (EN), 1844/2001 JP
JESUS DEL POZO/JP JEAN PASCALE (EN)
However, the above interpretation has been strongly criticised for leaving a
gap in the protection of marks with reputation, because if protection may be
granted under Article 8(5) where the goods are not similar, it would seem
inconsistent to deny its application to similar goods where the rest of its
requirements are fulfilled and Article 8(1)(b) does not apply because there is
no likelihood of confusion. In such a case trade mark owners would get more
protection in the less dangerous case. For this reason, it has been suggested
that Article 8(5) should also apply, directly or by analogy, where the goods are
identical or similar.
This question was referred to the Court of Justice for a preliminary ruling in
the context of the Davidoff case, cited above.
Page 346
The Opinion of Advocate General Jacobs gave the principal arguments in
support of each view and suggested to limit the protection afforded by Articles
4(4)(a) and 5(2) TMD only to cases where the goods and services of the
later mark are not similar to those of the earlier mark. The Advocate General
considered that it was the intention of the legislator to limit the special
protection granted to marks with reputation to dissimilar goods and that there
is no real gap in the law worthy of interpreting the text in a manner contrary
to its express wording.
Even though he admitted that there might be isolated instances where it will
not be possible to apply Article 8(1)(b), he argues that in the great majority of
cases there will also be likelihood of confusion, at least in the broad sense of
the term (belief that an economic link exists between the undertakings
producing the goods). He also feared that the application of Article 8(5) to
similar goods would blur the clear outlines of the protection afforded by Article
8(1)(b), which is based essentially on the existence of likelihood of confusion,
by allowing in certain circumstances a concurrent or alternative protection
based on other criteria and thus entailing legal uncertainty.
However, the Court did not follow the suggestions of the Advocate General
and came to the conclusion that Articles 4(4)(a) and 5(2) TMD should be
interpreted “as entitling the Member States to provide specific protection for
trade marks with a reputation in cases where the later mark is intended to
be used or is used for goods or services identical with or similar to those
covered by the earlier mark”.
In reaching this conclusion, the Court observed that Article 5(2) TMD must not
be interpreted solely on the basis of its wording, but also in the light of the
overall scheme and objectives of the system of which it is a part. Thus, it
cannot be interpreted in a manner which would lead to marks with a reputation
having less protection where a sign is used for identical or similar goods or
services. The Court justified this approach as the only one consistent with its
interpretation of Articles 4(1)(b) and 5(1)(b) TMD, by referring to its findings in
Sabel and Marca Mode, where it excluded a broad interpretation of the notion
of confusion.
So far, the Opposition Division has not dealt with cases where the signs were
similar, the goods were identical or similar, the earlier mark had a reputation,
but a likelihood of confusion could not be established. Indeed, as the
Advocate General also pointed out, such a scenario will be quite exceptional.
However, as this possibility cannot be ruled out completely, if such a case
arises the principles laid down in Davidoff must be followed, by examining
whether the proprietor of the earlier mark may have a legitimate interest in
protecting the distinctiveness and the repute of his mark under Article 8(5).
Page 347
III.
CONDITIONS OF APPLICATION
The following conditions need be met for Article 8(5) to apply:
(1)
Earlier registered mark with reputation in the relevant territory;
(2)
Identity or similarity between the contested CTM application
and the earlier mark;
(3)
Use of the sign applied for must be capable of taking an unfair
advantage of, or being detrimental to the distinctiveness or
the repute of the earlier mark;
(4)
Such a use must be without due cause.
This also reflects the order the relevant requirements are usually examined in
the decisions of the Opposition Division. However, the examination often
starts with the assessment of the similarities between the signs, especially in
cases where there is little or nothing to say about it, either because the marks
are identical, or because they are patently similar or dissimilar.
105/1999 HOLLYWOOD / HOLLYWOOD (FR), 1108/1999 SNICKERS /
SNACCOS (EN), 1142/1999 CAPTAIN BIRD´S EYE / EL CAPITAN
PESCANOVA (EN), 1224/1999 (fig. “DEUTSCHE BANK LOGO”) / ARMATIC
(fig.) (EN), 314/2000 SEMCO / Semco (EN)
1.
Earlier mark with reputation
1.1. Nature of reputation
The nature and scope of reputation are not defined by either the CTM
Regulation, or the TM Directive. Furthermore, the terms used in the different
language versions of these texts are not fully equivalent to each other, which
has led to considerable confusion as to the true meaning of the term
reputation, as admitted in paragraphs 34-36 of the Opinion of Advocate
General Jacobs in General Motors.
Given the lack of statutory definition, the Court defined the nature of
reputation by reference to the purpose of the relevant provisions. In
interpreting Article 5(2) TMD the Court held that “the text of the TM Directive
implies a sufficient degree of knowledge of the earlier mark among the
public” and explained that “it is only where there is a sufficient degree of
knowledge of the mark that the public, when confronted with a later trade
mark, may possibly make an association between the two marks, and the
earlier mark may consequently be damaged”.
In view of these considerations, the Court concluded that reputation is a
knowledge threshold requirement, implying that it must be principally
Page 348
assessed on the basis of quantitative criteria (General Motors, paragraphs
22, 23).
2333-2000 TELEFONICA ON LINE / T-ONLINE (EN)
Such an interpretation of reputation diverges from what was supported by the
case-law and jurisprudence of several Member States under the regime that
preceded the adoption of the TM Directive (in addition to the mark being
known among the public at large, it was often required that the mark should
also enjoy a high degree of inherent distinctiveness, uniqueness, prestige,
quality image etc.). Thus, by exclusively focusing on the degree of
knowledge of the mark, the Court has in fact simplified the test of
reputation, compared to what was often needed in the past for accepting that
a mark enjoys a reputation.
Moreover, if reputation is to be assessed on the basis of quantitative criteria,
arguments or evidence relating to the esteem that the public might have for
the mark, rather than to its recognition, are not directly relevant for
establishing that the earlier mark has acquired sufficient reputation for the
purposes of Article 8(5). However, as the economic value of reputation is also
the protected subject-matter of this provision, any qualitative aspects
thereof are of relevance when assessing the possibility of detriment or unfair
advantage (see also section III.3.3.1. below).
105/1999 HOLLYWOOD/HOLLYWOOD (FR), 81/2000 OLYMPIC/FAMILY
CLUB BELMONT OLYMPIC (EN), 278/2000 SEPHORA/SEPHORA (fig.) (EN)
Article 8(5) protects “famous” marks not as such, but rather for the success
and renown (“goodwill”) they have acquired in the market. A sign does not
enjoy any reputation inherently, e.g. simply because it refers to a renowned
person or event, but only in connection with the goods and services it
designates and the use that has been made of it.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN)
For example, the fact that the famous pop artist Andy Warhol saw some
artistic value in the packaging of Campbell’s soup, is not sufficient in itself for
establishing that the mark enjoys reputation within the meaning of 8(5), and
this irrespective of the success and renown of the painting as a work of art.
1243/2000 CAMPBELL’S et al./CAMPBELL CATERING (EN)
It should also be noted that the kind of market recognition required for marks
which have acquired enhanced distinctiveness through use in the context
of Article 8(1)(b), and for well-known marks within the meaning of Article 6bis
PC, is of the same character as reputation, in that it is principally based on
quantitative considerations regarding the degree of knowledge the mark has
acquired among the public, without prejudice of course to the level of
threshold required in each case. This is supported both by the case-law of the
Court (in particular the judgments in Lloyds and Chiemsee), and by the WIPO
Page 349
Recommendations on the protection of well-known marks, which describe the
nature of the respective notions in very similar terms.
1.2. Scope of reputation
1.2.1. Degree of recognition
Having defined reputation as a knowledge threshold requirement, the
question that necessarily follows is how much awareness the earlier mark
must attain among the public in order to pass this threshold. The Court held in
this respect that “the degree of knowledge required must be considered to be
reached when the earlier trade mark is known by a significant part of the
public” and added that “it cannot be inferred either from the letter or the spirit
of Article 5(2) of the TM Directive that the trade mark must be known by a
given percentage of the public” (General Motors, paragraphs 25, 26).
By refraining from defining in more detail the meaning of the term “significant”
and by stating that the trade mark does not have to be known by a given
percentage of the public, the Court in substance advised against the use of
fixed criteria of general applicability, since a predetermined degree of
recognition may not be appropriate for a realistic assessment of reputation if
taken alone.
Hence, in determining whether the earlier mark is known by a significant part
of the public, account must be taken not only of the degree of awareness of
the mark, but also of any other factor relevant to the specific case. For
more about the relevant factors and their interplay, see section III.1.3. below.
However, where goods or services concern quite small groups of consumers,
the limited overall size of the market means that a significant part thereof is
also restricted in absolute numbers. Hence, the limited size of the relevant
market should not be regarded in itself as a factor capable of preventing a
mark from acquiring a reputation within the meaning of Article 8(5), as
reputation is more a question of proportions and less of absolute numbers.
The need for the earlier mark to be known by a significant part of the public
also serves to mark the difference between the notions of reputation as
necessary condition for the application of Article 8(5) and enhanced
distinctiveness through use as factor for the evaluation of likelihood of
confusion for the purposes of Article 8(1)(b).
Even though both terms are concerned with the recognition of the mark
among the relevant public, in the case of reputation a threshold exists below
which extended protection cannot be granted, whereas in the case of
enhanced distinctiveness such a threshold is absent. It follows that in the
latter case any indication of enhanced recognition of the mark should be taken
into account and evaluated according to its significance, regardless of whether
it reaches the limit required by Article 8(5). Thus, a finding of “reputation”
under Article 8(1)(b) will not necessarily be conclusive for the purposes of
Article 8(5).
Page 350
1509/2001 CAPTAIN BIRDS EYE/ CAPTAIN BYRD APERO (fig) (EN),
1807/2001 BREEZE/ARIZONA BREEZE (EN)
1.2.2. Relevant public
In defining the kind of public that should be taken into account for the
assessment of reputation, the Court held that “the public amongst which the
earlier trade mark must have acquired a reputation is the public that is
concerned by that trade mark, that is to say, depending on the product or
service marketed, either the public at large, or a more specialised public, for
example traders in a specific sector”. (General Motors, paragraph 24).
Hence, if the goods and services covered by the mark are mass
consumption products, the relevant public will be the public at large,
whereas if the designated goods have a very specific application or are
exclusively destined to professional or industrial use, the relevant public will
be limited to the specific purchasers of the products in question.
66/2000 MAGEFESA(fig)/MAGEFESA(fig) (ES), 726/2001 LA MOLINERA/LA
MOLISANA (EN), 2096/2001 BUKO/BUKO (EN)
In addition to the actual buyers of the relevant goods, the notion of relevant
public also extends to the potential purchasers thereof, as well as to those
members of the public that only come indirectly into contact with the mark,
to the extent that such consumer groups are also targeted by the goods in
question, as for example sports fans in relation to athletic gear, or regular airtravellers as regards the various air carriers etc.
102/1999 NIKE /NIKE (ES), 1381/1999 AIR ONE/AIR ONE (IT), R 472/2001-1
BIBA/BIBA (FR)
Quite often, a given product will concern various purchaser groups with
different profiles, as in the case of multipurpose goods, or of goods that are
handled by several intermediates before they reach their final destination
(distributors, retailers, end-users). In such cases the question arises whether
reputation has to be assessed within each separate group, or if it should cover
all different types of purchaser. The example given by the Court (traders in a
specific sector) implies that reputation within one single group may suffice. It
should also be noted that the same approach is taken in the WIPO
Recommendations as regards well-known marks.
Likewise, if the earlier trade mark is registered for quite heterogeneous goods
and services, different kinds of public might be concerned by each type of
goods, and, thus, the overall reputation of the mark will have to be assessed
separately for each category of goods involved.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC(fig.)
621/2001 F1 FORMULA 1(fig.)/F1 FORMULA 1 (fig.) (EN)
(EN),
Page 351
It should be stressed that the foregoing only deal with the kind of public to be
taken into account in assessing whether the earlier mark has reached the
threshold of reputation laid down by the Court in General Motors. However, a
relevant question arises when assessing detriment or unfair advantage,
namely whether the earlier mark must also be known to the public concerned
by the goods and services of the later mark, since otherwise it is difficult to
see how the public will be in a position to associate the two. This issue is
discussed in section III.3.2 below.
1.2.3. Goods and services covered
Where the earlier mark is registered for a wide range of goods and services
targeting different kinds of public, it will be necessary to assess reputation
separately for each category of goods. In such cases the earlier mark may not
have a reputation in relation to all of them, as for some of these goods it may
not have been used at all, whereas for others it may not have reached the
degree of knowledge necessary for the application of Article 8(5).
Hence, if the evidence shows that the earlier mark enjoys partial reputation,
i.e. the reputation only covers some of the goods or services for which it is
registered, it is only to that extent that this mark may be protected under
Article 8(5), and consequently, it is only these goods that may be taken into
account for the purposes of the examination.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC(fig.)
621/2001 F1 FORMULA 1(fig.)/F1 FORMULA 1 (fig.) (EN)
(EN),
1.2.4. Relevant territory
According to Article 8(5) CTMR, the relevant territory for establishing the
reputation of the earlier mark is determined by reference to the territory of
protection: the earlier mark must have a reputation in the territory where it
is registered. Therefore, for national marks the relevant territory is the
Member State concerned, whereas for CTMs the relevant territory is the
European Union.
In General Motors, the Court stated that a national trade mark cannot be
required to have a reputation throughout the entire territory of the Member
State concerned. It is sufficient if reputation exists in a substantial part of it.
For the Benelux territory in particular, the Court held that a substantial part
thereof may consist of a part of one of the Benelux countries (General
Motors, paragraphs 28-29).However, the Court has not elaborated on what
may be considered as a substantial part of the relevant territory.
In the absence of a more detailed definition, when evaluating whether the part
of the territory in question is a substantial one, account must be taken both of
the size of the geographical area concerned and of the proportion of the
overall population living there, since both these criteria may affect the overall
significance of the specific territory.
Page 352
Even though earlier CTMs are not directly covered by the above judgment,
the rule that the earlier mark cannot be required to have a reputation
throughout the entire territory in which it is registered must equally apply to
them, as there seems to be no reason why Community trade marks should be
treated differently in this respect. Thus, a reputation in a substantial part of
the Community should be sufficient.
However, it is not yet clear whether the territory of one Member State or a
substantial part thereof may be considered as a substantial part of the
Community, as the proportions change considerably between the Benelux
countries and the whole of the European Union, rendering thus the drawing of
analogies less appropriate.
On the other hand, there are two strong policy arguments in favour of the
proposition that at least the territory of a Member State should suffice,
namely the need to ensure at least the same level of protection for CTMs as
for national marks (otherwise the CTM system would be less attractive to
trade mark owners), and the necessity of giving Article 8(5) the same territorial
scope as Article 8(1)(b) (if confusion in one Member State suffices for the
rejection of a CTM application, reputation should not be treated any
differently). This approach will be followed until this issue is further clarified by
higher instances.
Opponents often indicate in the notice of opposition that the earlier mark has a
reputation in an area that extends beyond the territory of protection (e.g. a
pan-European reputation is alleged for a national mark). In such a case the
opponent’s claim must be examined with regard to the relevant territory.
102/1999 NIKE /NIKE (ES), 1762/2001 NIKKEI/NIKKEI (EN)
Similarly, the submitted evidence must specifically concern the relevant
territory. For example, if the evidence relates to Japan for instance, or to
regions not specifically defined, it will not be able to show reputation in the
Community or in a Member State. Thus, figures concerning sales in the
Community as a whole, or world-wide sales, are not apt for showing
reputation in a specific Member State, if the relevant data are not broken
down by territory. In other words, a “wider” reputation must also be specifically
proved for the relevant territory if it is to be taken into account.
R 799/1999-1 RODIO / RHODIA (FIG MARK) (EN), 81/2000 OLYMPIC /
FAMILY CLUB BELMONT OLYMPIC (EN), 373/2000 INDIGO / INDIGO (EN),
516/2000 AQUARIUS / AQUARIUS (EN), 1762/2001 NIKKEI / NIKKEI (EN),
1112/2001 CHAMPION USA / CHAMP (EN)
However, where reputation is claimed as extending beyond the territory of
protection and there is evidence to this effect, this must be taken into account
because it may re-enforce the finding of reputation in the territory of
protection.
Page 353
1.2.5. Relevant point in time
The opponent must show that the earlier mark had acquired a reputation by
the filing date of the contested CTM application, taking account, where
appropriate, of any priority claimed, on condition of course that such a claim
has been accepted by the Office.
1807/2001 BREEZE/ARIZONA BREEZE (EN); 2096/2001 BUKO/BUKO (EN)
In addition, the reputation of the earlier mark must subsist until the decision on
the opposition is taken. However, it will be in principle sufficient for the
opponent to show that his mark already had a reputation on the filing/priority
date of the CTM application, while any subsequent loss of reputation is for
the applicant to claim and prove. In practice, such an occurrence will be rather
exceptional, since it presupposes a dramatic change of market conditions
over a relatively short period of time.
Where the opposition is based on an earlier application, there is no formal
obstacle for the application of Article 8(5), which encompasses earlier
applications by reference to Article 8(2). Although in most cases the earlier
application will not have acquired sufficient reputation in so short a time, it
cannot be a priori excluded that a sufficient degree of reputation is reached in
an exceptionally rapid way. Also, the application may be for a mark which was
already in use long before the application was filed, and has had sufficient
time to acquire a reputation. In any event, as the effects of the registration are
retroactive, the applicability of Article 8(5) to earlier applications cannot be
regarded as a deviation from the rule that Article 8(5) only applies to earlier
registrations, as concluded in section II.1.1.1 above.
In general, the closer to the relevant date the evidence is, the easier it will
be to assume that the earlier mark had acquired reputation at that time. For
this reason, the materials filed with a view to proving reputation must be
dated, or at least clearly indicate when the facts attested therein took place.
It follows that undated documents, or documents bearing a date added
afterwards (e.g. hand-written dates on printed documents) will not be apt for
giving reliable information about the material time.
2195/2000 TC (FIG) / TC (FIG) (EN)
If the period elapsed between the latest evidence of use and the filing of the
CTM application is quite significant, the relevance of the evidence should be
carefully assessed by reference to the kind of goods and services concerned.
This is because changes in consumer habits and perceptions may take some
time to happen, usually depending on the particular market involved.
For instance, the clothing market is strongly tied to yearly seasons and to the
different collections issued every quarter, and this factor will have to be taken
into account in assessing a possible loss of reputation in this particular field.
Likewise, the market for Internet providers and e-commerce companies is
very competitive and knows rapid growth, as well as rapid demise, which
Page 354
means that reputation in this area may be diluted faster than in other market
sectors.
62-2001 NEXT/NEXT EYE (EN), 1562/2002 LINEONE/Link One (EN)
A similar question arises in the case of evidence that post-dates the filing
date of the CTM application. Even though such evidence will not usually be
sufficient on its own to prove that the mark had acquired a reputation when
the CTM was filed, it is not appropriate to reject it as irrelevant either. Given
that reputation is usually built up over a period of years and cannot simply be
switched on and off, and that certain kinds of evidence (e.g. opinion polls,
affidavits) are not necessarily available before the relevant date, as they are
usually prepared only after the dispute arises, such evidence must be
evaluated on the basis of its contents and in conjunction with the rest of the
evidence. For example, an opinion poll conducted after the material time but
showing a sufficiently high degree of recognition might be sufficient to prove
that the mark had acquired a reputation on the relevant date if it is also shown
that the market conditions have not changed (e.g., the same level of sales and
advertising expenditure was maintained before such opinion poll was carried
out).
531/2001 TELETHON/TELETOON (EN), 2101/2001 PYLORISET/Pyloritek,
1272/2002 TOD’S(fig.)/TOD’S (EN)
1.3. Assessment of reputation – Relevant factors
Apart from indicating that “it cannot be inferred either from the letter or the
spirit of Article 5(2) of the TM Directive that the trade mark must be known by
a given percentage of the public”, the Court also held that “all relevant facts
must be taken into consideration in assessing the reputation of the earlier
mark, and in particular the market share held by the mark, the intensity,
geographical extent and duration of its use, and the size of investment
made by the undertaking in promoting it” (General Motors, paragraphs 25 and
27).
If these two statements are taken together, it follows that the level of
knowledge required for the purposes of Article 8(5) cannot be defined in the
abstract, but should be evaluated on a case-by-case basis, taking into
account, not only the degree of awareness of the mark, but also any
other fact relevant to the specific case, that is any factor capable of giving
information about the performance of the mark in the market.
Moreover, the relevant factors should be assessed not only with a view to
establishing the degree of recognition of the mark by the relevant public, but
also in order to ascertain whether the other requirements related to
reputation are fulfilled, for example whether the alleged reputation covers a
significant part of the territory concerned, or whether the reputation had
indeed been acquired by the filing/priority date of the contested CTM
application.
Page 355
It should also be noted that the same kind of test is applied for ascertaining
whether the trade mark has acquired enhanced distinctiveness through use
for the purposes of Article 8(1)(b), or whether the mark is well-known within
the meaning of Article 6bis of the Paris Convention, since the subject-matter of
proof in all these cases is in substance the same, namely the degree to which
the mark is known by the relevant public.
1.3.1. Trade mark awareness
The statement of the Court that “it is not necessary for the mark to be known
by a given percentage of the public”, cannot be taken in itself as meaning that
figures of trade mark awareness are irrelevant for, or that they should be
given a lower probative value in, the assessment of reputation. It only implies
that percentages of awareness defined in the abstract may not be appropriate
for all cases and that, as a consequence, it is not possible to fix a priori a
generally applicable threshold of recognition, beyond which it should be
assumed that the mark is reputed.
Thus, even though not expressly listed by the Court among the factors to be
taken into account for the assessment of reputation, the degree of
recognition of the mark by the relevant public is directly relevant and can be
particularly helpful in evaluating whether the mark is sufficiently known for the
purposes of Article 8(5), provided of course that the method of its calculation
is reliable.
As a rule, the higher the percentage of trade mark awareness, the easier it
will be to accept that the mark has a reputation. However, in the absence of
a clear threshold, only if the evidence shows a high degree of trade mark
awareness, will percentages of recognition be persuasive. Percentages alone
are however not conclusive. Rather, as explained before, reputation has to be
evaluated by making an overall assessment of all the factors relevant to the
case. The higher the degree of awareness, the less additional evidence may
be required for the proof of reputation. For example, percentages showing a
degree of awareness between 87% and 97% of the interviewed persons, have
been regarded as decisive for a finding of reputation, without this meaning
that the relevant threshold should always be set so high.
R 802/1999-1 DUPLO/DUPLO, 1389/1999 YVES ROCHER/YVES ROCHE
(FR), 531/2000 GALP / GALP FOR INIMITABLE PEOPLE (FIG) (EN),
3215/2000 MON CHERI/MONTXERI (EN), 531/2001 TELETHON/TELETOON
(EN), 1082/2001 KINDER/KINDER EM-EUKAL (EN)
Where the evidence shows that the mark only enjoys a lesser degree of
recognition, it should not be automatically assumed that the mark is reputed,
which means that, most of the time, mere percentages will not be
conclusive in themselves. In such cases, only if the evidence of awareness is
coupled with sufficient indications as to the overall performance of the mark in
the market, will it be possible to evaluate with a reasonable degree of certainty
whether the mark is known by a significant part of the relevant public.
Page 356
1243/2000 CAMPBELL’S/CAMPBELL CATERING (EN), 1246/2000
MONTE/MONTE VERITAS (EN), 1756/2000 EUROBAIT/EUROBAITS (EN),
1969/2000 Club Med /Euro Med (EN), 1509/2001 CAPTAIN BIRDS
EYE/CAPTAIN BYRD APERO (EN), 1527/2001 VIA DIGITAL/VIA PLUS (ES),
441/2002 BEBE/BÉBÉ (EN), 1272/2002 TOD’S(fig.)/TOD’S (EN)
1.3.2. Market share
The market share enjoyed by the products offered or sold under the mark
and the position it occupies in the market, are valuable indications for the
assessment of reputation, as they both serve to indicate the percentage of
the relevant public that actually buys the goods and to measure the
success of the mark against competitive products.
By market share is understood the percentage of total sales obtained by a
brand in a particular sector of the market. When defining the relevant market
sector, the goods and services for which the mark has been used must be
taken into account. If such goods and services are narrower than those for
which the mark has been registered, a situation of partial reputation arises,
similar to the one existing where the mark is registered for a variety of goods,
but has acquired a reputation only for part of them. This means that in such a
case, only the goods and services for which the mark has been actually
used and acquired a reputation will be taken into account for the purposes
of the examination.
Thus, a very substantial market share, or a leader position in the market,
will usually be a strong indication of reputation, especially if combined with
a reasonably high degree of trade mark awareness. Conversely, a small
market share will in most cases be an indication against reputation, unless
there are other factors which suffice on their own to support such a claim.
2273/2000 BeachLife (fig) / BEACHLIFE (EN), 638/2001 MENTADENT /
MEDIDENT (EN)
Another reason why a moderate market share will not always be
conclusive against reputation, is that the percentage of the public that in
reality knows the mark may be much higher than the actual buyers of the
relevant goods, as for example in the case of goods that are normally used by
more than one user (e.g. family magazines or newspapers), or of luxury
goods, which many may know, but few can buy (e.g. a high percentage of
European consumers know the trade mark “Ferrari” for cars, but only few own
one). For this reason, the market share given in the evidence should be
assessed taking into account the particularities of the specific market.
R 472/2001-1 BIBA/BIBA (FR)
In certain cases it will not be easy to define the market share of the earlier
mark, as for example when the exact size of the relevant market cannot be
measured accurately, owing to peculiarities of the products or services
concerned. In such cases, other similar indications may be of relevance,
Page 357
such as TV audience rates, as in the case of car-racing events and other
spectacles of athletic or cultural nature.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN), 621/2001 F1
FORMULA 1 (fig.)/ F1 FORMULA 1 (fig.) (EN)
1.3.3. Intensity of use
The intensity of use of a mark may be shown by reference to the volume of
sales (i.e. the number of units sold) and the turnover (i.e. the total value of
those sales) attained by the opponent for goods bearing the mark. Usually,
the relevant figures correspond to sales effected in one year, but there may be
cases where the time unit used is different.
In evaluating the importance of a given turnover or volume of sales, account
should be taken of how large the relevant market is in terms of
population, as this has a bearing on the number of potential purchasers of
the products in question. For example, the relative value of the same number
of sales will be much bigger, for example, in Luxembourg than in Germany.
66/2000 MAGEFESA(fig)/MAGEFESA(fig) (ES)
Moreover, whether or not a given volume of sales or amount of turnover is
substantial will depend on the kind of product concerned. For example, it is
much easier to achieve a high volume in the case of every-day, massconsumption goods, than in the case of luxurious or durable products that are
bought rarely, without this meaning that in the former case more consumers
have come into contact with the mark, as it is likely that the same person has
bought the same product more than once. It follows that the kind, value and
durability of the goods and services in question should be taken into
consideration in determining the significance of a given volume of sales or
amount of turnover.
Figures of turnover and sales will be more useful as indirect indications that
should be assessed in conjunction with the rest of the evidence, rather than
as direct proof of reputation. In particular, such indications can be especially
helpful for completing the information given by percentages as regards
market-share and awareness, by giving a more realistic impression of the
market. For example, they may reveal a very large amount of sales behind a
not so impressive market share, which may be useful in assessing reputation
in the case of competitive markets, where it is in general more difficult for a
single brand to account for a substantial portion of the overall sales.
On the other hand, where the market share of the products for which the mark
is used is not given separately, it will not be possible to determine whether a
given turnover corresponds to a substantial presence in the market or not,
unless the opponent also submits evidence showing the overall size of the
relevant market in terms of money, so that his percentage in it may be
inferred.
Page 358
958/1999 GRANT´S/JOHN GRANT (EN), 1433/1999 OCEAN PEARL/OCEAN
PEARL (EN)
This does not mean that the importance of turnover figures or volume of sales
should be underestimated, as both are significant indications of the number
of consumers that are expected to have encountered the mark. Therefore, it
cannot be excluded that a substantial amount of turnover or volume of
sales may, in certain cases, be decisive for a finding of reputation, either
alone, or in conjunction with very little other evidence.
However, as this would be a deviation from the rule that reputation has to be
evaluated by making an overall assessment of all factors relevant to the case,
findings of reputation based almost exclusively on such figures should be
generally avoided, or at least confined to exceptional cases that would really
justify such an assumption.
R 303/2000-2 MAGEFESA/MAGEFESA (ES), R 472/2001-1 BIBA/BIBA (FR)
1.3.4. Geographical extent of use
Indications about the territorial extent of use are mainly useful for determining
whether the alleged reputation is widespread enough to cover a
substantial part of the relevant territory, in the sense given in section 1.2.3
above. In this exercise, account should also be taken of the density of
population in the respective areas, as the ultimate criterion is the proportion of
consumers knowing the mark, rather than the size of the geographical area as
such. Similarly, what is important is awareness of the public of the mark rather
than availability of products or services. A mark may therefore have a
territorially wide-spread reputation on the basis of advertising, promotion,
media reports, etc.
In general, the more widespread the use, the easier it will be to conclude that
the mark has passed the required threshold, whereas any indication showing
use beyond a substantial part of the relevant territory will be a positive sign in
the direction of reputation. Conversely, a very limited amount of use in the
relevant territory will be a strong indication against reputation, as for example
where the vast majority of the goods are exported to a third jurisdiction in
sealed containers, directly from their place of production.
726/2001 LA MOLINERA/LA MOLISANA (EN)
However, evidence of actual use in the relevant territory should not be
regarded as a necessary condition for the acquisition of reputation, as what
matters most is knowledge of the mark and not how it was acquired. Such a
knowledge may be generated by e.g. intensive advertising prior to the
launching of a new product, or in the case of important cross-border shopping
fuelled by a significant price difference in the respective markets, a
phenomenon often referred to as “territorial spill-over” of reputation from
one territory to another. However, when it is claimed that such circumstances
have occurred, the corresponding evidence must in fact demonstrate this. For
Page 359
example, it cannot be assumed, merely because of the principle of free trade
in the European Union, that goods put in the market in Member State X have
also penetrated the market of Member State Y in significant numbers.
1407/2001 IBUTOP/IBUSOL (EN)
1.3.5. Duration of use
Indications as to the duration of use are particularly useful for determining the
longevity of the mark. The longer the mark has been used in the market, the
bigger will be the number of consumers that is likely to have come into contact
with it, and the more likely it is that such consumers will have been exposed to
the mark more than once. For example, a market presence of 45, 50 or +100
years has been considered a strong indication of reputation.
105/1999 HOLLYWOOD/HOLLYWOOD (FR), 2/2000 PLANETA/PLANET-X
(ES), 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN)
The duration of use of the mark should not be inferred by mere reference to
the term of its registration. Registration and use do not necessarily coincide,
as the mark may have been put to actual use either before or after it was filed.
Thus, where the opponent invokes actual use, going beyond the term of
registration, he must prove that such use had indeed started before his mark
was applied for.
Nevertheless, a long registration period may sometimes serve as an indirect
indication of a long presence on the market, as it would be unusual for the
opponent to maintain a mark in force for many decades without any economic
interest behind it.
In the end, the decisive element is whether the earlier mark had acquired a
reputation at the time of filing of the contested application. Whether that
reputation also existed at some earlier point in time is legally irrelevant. Thus,
evidence of continuous use up to the filing date of the application will be a
positive indication in the direction of reputation.
On the other hand, if the use of the mark was suspended over a significant
period of time, or if the period elapsed between the latest evidence of use and
the filing of the CTM application is quite long, it will be more difficult to
conclude that the reputation of the mark survived the interruption of use, or
that it subsisted until the filing date of the application (see also section 1.2.4.
above).
1.3.6. Promotional activities
The nature and size of the promotional activities undertaken by the
opponent are useful indications in assessing the reputation of the mark, to the
extent that these activities were undertaken to build-up a brand image and
enhance trade mark awareness among the public Thus, a long, intensive
and widespread promotional campaign may be a strong indication that the
Page 360
mark has acquired a reputation among the potential or actual purchasers of
such goods, and may actually have become known beyond the circle of the
actual purchasers of the goods.
Even though it cannot be ruled out that a mark acquires a reputation ahead of
any actual use, promotional activities will usually not be sufficient on their own
for establishing that the earlier mark has indeed acquired a reputation (see
also section III.1.3.4. above). For example, it will be difficult to prove
knowledge by a significant part of the public exclusively by reference to
promotion or advertising, carried out as preparatory acts for the launching of a
new product, as the actual impact of publicity on the perception of the public
will be difficult to measure without reference to sales. In such situations, the
only means of evidence available to the opponent is opinion polls and similar
instruments, the probative value of which may vary depending of the reliability
of the method used, the size of the statistical sample etc. (for the probative
value of opinion polls, see also section III.1.4.4.iv. below).
The impact of the opponent’s promotional activities may be shown either
directly, by reference to the size of promotional expenditure, or indirectly,
by way of inference from the nature of promotional strategy adopted by the
opponent and the kind of medium used for the advertising of the mark.
For example, advertising on a nation-wide TV channel or in a prestigious
periodical should be given more weight than campaigns of a regional or local
scope, especially if coupled with high audience or circulation rates. Likewise,
the sponsoring of prestigious athletic or cultural events may be a further
indication of intensive promotion, as such schemes often involve a quite
considerable investment.
531/2000 GALP / GALP FOR INIMITABLE PEOPLE (FIG)(EN), 2096/2001
BUKO/BUKO (EN), 105/1999 HOLLYWOOD/HOLLYWOOD (FR)
Furthermore, the contents of the advertising strategy chosen by the
opponent can be useful for revealing the kind of image the opponent is trying
to build-up for his brand. This may be of particular importance when assessing
the possibility of detriment to, or of taking unfair advantage of, a particular
image allegedly conveyed by the mark, since the existence and contents of
such an image must be abundantly clear from the evidence submitted by the
opponent (see also section III.3. below).
R 283/1999-3 HOLLYWOOD / HOLLYWOOD (EN), 81/2000 OLYMPIC /
FAMILY CLUB BELMONT OLYMPIC (EN)
1.3.7. Other factors
The Court has made clear that the above list of the factors is only indicative
and underlined that all facts relevant to the particular case must be taken into
consideration in assessing the reputation of the earlier mark (General Motors,
paragraph 27). Other factors may be found in the case-law of the Court
dealing with enhanced distinctiveness through use, or in the WIPO
Page 361
Recommendations on the protection of well-known marks. Thus, depending
on their relevance in each case, the following may be added to the above
factors:
(i)
Record of successful enforcement
Records of successful enforcement of a mark against dissimilar goods or
services are of importance because they may demonstrate that, at least in
relation to other traders, there is acceptance of protection against dissimilar
goods or services.
Such records may consist of successful prosecution of complaints outside the
courts, such as acceptance of cease and desist requests, delimitation
agreements in trade mark cases, and the like.
Furthermore, evidence showing that the reputation of the opponent’s mark
has been repeatedly recognised and protected against infringing acts by
decisions of judicial or administrative authorities will be an important
indication that the mark indeed enjoys a reputation in the relevant territory,
especially where such decisions are recent. That effect may be re-enforced
when the decisions of this kind are substantial in number (on the probative
value of decisions, see section 1.4.4 below). This factor is mentioned in Article
2(1)(b)(5) of the WIPO Recommendations.
(ii)
Number of registrations
The number and duration of registrations and applications of the mark
around Europe or the world, is also relevant, but in itself it is a much weaker
indication of the degree of recognition of the sign by the relevant public. The
fact that the opponent has many trade mark registrations and in many classes
may indirectly attest to an international circulation of the brand, but cannot be
decisive in itself as to the existence of a reputation. This factor is mentioned in
Article 2(1)(b)(4) of the WIPO Recommendations, where the need of actual
use is made clear: the duration and geographical area of any registrations,
and/or any applications for registration, of the mark are relevant “to the extent
that they reflect use or recognition of the mark”.
2195/2000 TC (FIG)/TC (FIG) (EN)
(iii)
Certifications and Awards
Certifications, awards, and similar public recognition instruments usually
provide information about the history of the mark, or reveal certain quality
aspects of the opponent’s products, but as a rule they will not be sufficient in
themselves for establishing reputation and will be more useful as indirect
indications. For example, the fact that the opponent is a holder of a royal
warrant for many years may perhaps show that the mark invoked is a
traditional brand, but cannot give first hand information about trade mark
awareness. However, if the certification concerns facts that are related to the
performance of the mark, their relevance will be much higher. This factor has
Page 362
been mentioned by the Court in Lloyd and Windsurfing Chiemsee in relation to
the assessment of enhanced distinctiveness through use.
435/2001 FLORIS/FLORIS (EN)
(iv)
The value associated with the mark
The fact that a mark is solicited by third companies for reproduction on their
products, either as a trade mark, or as mere decoration, is a strong indication
that the mark possesses a high degree of attractiveness and an important
economic value. Thus, the extent to which the mark is exploited through
licensing, merchandising and sponsoring, as well as the importance of the
respective schemes, are useful indications in assessing reputation. This factor
is mentioned in Article 2(1)(b)(6) of the WIPO Recommendations.
621/2001 F1 FORMULA 1 (fig.)/ F1 FORMULA 1 (fig.) (EN)
1.4. Proof of reputation
1.4.1. Standard of proof
The opponent must file evidence enabling the Office to reach a positive
finding that the earlier mark has indeed acquired a reputation in the relevant
territory. The wording used in Article 8(5) CTMR and Rule 16(2) IR is quite
clear in this respect: the earlier mark deserves enlarged protection only if it is
“has a reputation”.
It follows that the evidence must be clear and convincing, in the sense that
the opponent must clearly establish all facts necessary for concluding with
safety that the mark is known by a significant part of the public. The reputation
of the earlier mark must be established to the satisfaction of the Office and not
merely assumed.
1.4.2. Burden of proof
According to the second sentence of Article 74(1) CTMR, in inter partes
proceedings the Office is restricted in its examination to the facts, evidence
and arguments provided by the parties. It follows that, in assessing whether
the earlier mark enjoys reputation, the Office may not take into account facts
known to it as a result of its own private knowledge of the market, or conduct
an ex-officio investigation, but should exclusively base its findings on the
information and evidence submitted by the opponent.
842/2000
KOALA/KOALA
KINDERJOGHURT (EN)
(ES),
2270-2000
KINDER
/
TIMI
Exceptions to this rule apply where particular facts are so well-established that
they can be considered as universally known, and thus are also presumed to
be known to the Office (e.g., the fact that a particular country has a certain
number of consumers, or the fact that food products target the general public).
Page 363
However, whether or not a mark has passed the threshold of reputation
established by the Court in General Motors is not in itself a pure question of
fact, since it requires the legal evaluation of several factual indications, and,
as such, the reputation of the earlier mark may not be simply assumed to be a
universally known fact.
Rule 16(2) IR provides that the burden of putting forward and proving the
relevant facts lies with the opponent, by expressly requiring him to provide
“evidence attesting that the earlier mark has a reputation”. According to
Rules 16(3) and 20(2) IR and the practice of the Opposition Division, such
evidence may be submitted either together with the notice of opposition, or
subsequent thereto, or, at the latest, within a period of four months from the
date of notification of the opposition to the applicant. The opponent may also
refer to facts and evidence submitted in the course of another opposition,
provided that the relevant materials are indicated in a clear and unambiguous
way, and that the language of proceedings is the same in both cases.
If the evidence of reputation is not in the correct language, it will have to be
translated into the language of the proceedings within the same period of four
months, as required by Rules 17(2), 16(3) and 20(2) IR. However, in view of
the volume of documents often needed for proving reputation, it is sufficient to
translate only the material parts of long documents or publications. Similarly, it
is not necessary to translate in their entirety documents or parts of documents
that contain mainly figures or statistics the meaning of which is evident, as is
often the case with invoices, order forms, diagrams, brochures, catalogues
etc.
1.4.3. Evaluation of the evidence
The basic rules on the evaluation of evidence are also applicable here: the
evidence should be assessed as a whole i.e. each indication should be
weighed-up against the others, whereas information confirmed by more than
one source will generally be more reliable than facts derived from isolated
references. Moreover, the more independent, reliable and well-informed the
source of the information is, the higher the probative value of the evidence will
be.
Thus, information deriving directly from the opponent is unlikely to be
enough on its own, especially if it only consists of opinions and estimates
instead of facts, or if it is of an unofficial character and lacks objective
confirmation, as for example when the opponent submits internal memoranda
or tables with data and figures of unknown origin.
1509/2001 CAPTAIN BIRDS EYE/CAPTAIN BYRD APERO(fig) (EN),
559/2001 PRINCESS MARCELLA BORGHESE/CATHERINE BORGHESE
(fig) (IT), 1978/2001 and 1977/2001 BENJAMIN/BENJAMIN(fig) (ES),
638/2001
MENTADENT/MEDIDENT
(EN),
1433/1999
OCEANS
PEARL/OCEAN PEARL (EN), 586/2000 ADIG/ADEC (EN), 1296/2000
TWIX/TWIX (EN), 441/2002 BEBE/BÉBÉ (EN), 435/2001 FLORIS/FLORIS
Page 364
(EN), 1246/2000 MONTE/MONTE VERITAS (EN), 1243/2000 CAMPBELL’S
et al./CAMPBELL CATERING (EN)
However, if such information is publicly available or has been compiled for
official purposes and contains information and data that have been
objectively verified, or reproduces statements made in public, its probative
value is generally higher.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) 314/2000
SEMCO/SEMCO (EN)
As regards its contents, the more indications the evidence gives about the
various factors from which reputation may be inferred, the more relevant and
conclusive it will be. In particular, evidence which as a whole gives little or no
quantitative data and information will not be apt to provide indications about
vital factors, such as trade mark awareness, market share and intensity of
use and, consequently, will not be sufficient to support a finding of reputation.
586/2001 INFOVIA/VIA PLUS (ES), 1527/2001 VIA DIGITAL/VIA PLUS (ES),
1531/2001 LLOYD/EURO LLOYDS (EN), 1661/2001 ARCOIRIS/RAINBOW
(EN), 1978/2001 and 1977/2001 BENJAMIN/BENJAMIN (ES), 2080/2001
TELDAT/TELDACON (EN),
1.4.4. Means of evidence
There is no direct indication in the Regulations as to which kind of evidence is
more appropriate for proving reputation, as for instance the one in Rule 22(3)
IR about evidence of use. The opponent may avail himself of all the means
of evidence of Article 76 CTMR, provided they are capable of showing that
the mark has indeed the required reputation.
The following means of evidence are more frequently submitted by opponents
in Opposition proceedings before the Office2:
(i)
(ii)
(iii)
(iv)
(v)
(vi)
(vii)
(viii)
(ix)
(x)
Sworn or affirmed statements;
Decisions of Courts or Administrative authorities;
Decisions of the Office;
Opinion polls and market surveys;
Audits and inspections;
Certifications and awards;
Articles in the press or in specialised publications;
Annual reports on economic results and company profiles;
Invoices and other commercial documents;
Advertising and promotional material.
Evidence of this kind may also be submitted under Article 8(1)(b) CTMR in
order to prove that the earlier mark has obtained a higher degree of
distinctiveness, or under Article 8(2)(c) in relation to well-known marks.
2
the listing order does not reflect their relative importance or probative value.
Page 365
(i)
Sworn or affirmed statements.
Pursuant to Article 76(1)(f) CTMR, statements in writing, sworn or affirmed or
having a similar effect under the law of the State in which they are drawn up,
are valid means of evidence. Therefore, such evidence is admissible if it
fulfils the formal requirements laid down by the relevant national law, and this
regardless of the term used by the opponent for their description or translation
(“Affidavit”, “Statutory Declaration”, “Sworn Statement” etc.). Thus, if the
national law does not make its admissibility dependent on the capacity in
which the person gives the evidence, statements of this kind are admissible
independently of whether the declaration is made by the opponent himself, or
by a director of his company, or by one of his employees.
The weight and probative value to be attached to statutory declarations is
determined by the general rules applied by the Office to the assessment of
such evidence. In particular, both the capacity of the person giving the
evidence and the relevance of the contents of the statement to the
particular case must be taken into account.
R 601/2000-3 LIFE/IT’S A WONDERFUL
THERMOVISION/THERMAL VISION LAIRD
LIFE,
R
1164/2000-3
As a rule, affidavits will be of greater value if the information they contain is
clear, it relates to specific facts and is supported by objective exhibits or
attachments, the veracity of which is also affirmed. Conversely, if the
declaration merely contains vague or unsupported statements, or
subjective evaluations and opinions, or if the source of the information is
not revealed, its probative value will be much lower.
1433/1999 OCEANS PEARL/OCEAN PEARL (EN), 1296/2000 TWIX/TWIX
(EN), 441/2002 BEBE/BÉBÉ (EN), 435/2001 FLORIS/FLORIS (EN),
1509/2001 CAPTAIN BIRDS EYES/CAPTAIN BYRD APERO (EN),
1756/2000 EUROBAIT/EUROBAITS (EN) 1446/2000 X-CEL/XCELL
TECHNOLOGY (EN), 1458/2001 DB/DB SYSTEME (EN), 1135/2001
SOFTLAN/SOFTLAN (DE)
(ii)
Decisions of national Authorities and Courts
Opponents often invoke decisions of national authorities or Courts which have
accepted the reputation of the earlier mark. Even though national decisions
are admissible evidence and may have evidentiary value, especially if they
originate from a Member State the territory of which is also relevant for the
opposition at hand, they are not binding for the Office, in the sense that it is
not mandatory to follow their conclusion.
R 34/1998-3 LASTING PERFORMANCE (EN)
Since such decisions may serve as indications of the existence of reputation
and of the record of successful enforcement of the mark, their relevance
Page 366
should be addressed and examined. Relevance should be given to the type of
proceedings involved, to whether the issue was in fact reputation in the sense
of Article 8 (5), to the level of the court, as well as to the number of such
decisions.
730/2002 BIO/BIO CLESA (ES)
It should be borne in mind that there might be differences between the
substantive and procedural conditions applicable in national proceedings
and those applied in opposition proceedings before the Office. Firstly, there
may be differences as to how the requirement of reputation is defined or
interpreted. Secondly, the weight the Office gives to the evidence is not
necessarily the same as the weight given to it in national proceedings.
Furthermore, national instances may be able to take into account ex-officio
facts known to them directly, whereas the Office may not, pursuant to Article
74 CTMR.
435/2001 FLORIS/FLORIS (EN)
For these reasons, the probative value of national decisions will be
considerably enhanced if the conditions of law and fact on the basis of
which they were taken are made abundantly clear. This is because, in the
absence of these elements, it will be more difficult both for the applicant to
exercise his right of defence and for the Office to assess its relevance with a
reasonable degree of certainty. Similarly, if the decision has not yet become
final, or if it is outdated due to the time that has lapsed between the two
cases, its probative value will be diminished accordingly.
842/2000 KOALA/KOALA (ES), 2337/2001 BREITLING/(FIG) (ES).
Consequently, the probative value of national decisions should be assessed
on the basis of their contents and it may vary depending on the case. In one
case an opinion poll showing a high degree of knowledge of the mark
amongst the public, together with two decisions of national courts were
considered sufficient to show reputation, as was in another case one decision
of a national office on its own. Conversely, in a third case two decisions of a
national trade mark office were not considered persuasive enough.
1389/1999 YVES ROCHER/YVES ROCHE (FR), 102/1999 NIKE/NIKE (ES),
2688/2000 JOHN SMITH/BETTY SMITH (EN).
(iii)
Office decisions
The opponent may also refer to earlier decisions of the Office, on condition
that such a reference is clear and unambiguous, and that the language of
the proceedings is the same. Otherwise, the opponent must also file a
translation of the decision within the four-month period to file further facts,
evidence and arguments, in order to allow to the applicant exercise his right of
defence.
Page 367
As regards the relevance and probative value of previous Office decisions, the
same rules as for national decisions apply. Even where the reference is
admissible and the decision is relevant, the Office is not bound to come to
the same conclusion and must examine each case on its own merits.
It follows that previous Office decisions only have a relative probative value
and should be evaluated in conjunction with the rest of the evidence,
especially where the reference of the opponent does not extend to the
materials filed in the first case, i.e. where the applicant has never had a
chance to comment on them, or where the time that has elapsed between the
two cases is quite long.
(iv)
Opinion polls and market surveys
Opinion polls and market surveys are the most suitable means of evidence for
providing information about the degree of knowledge of the mark, the
market share it has, or the position it occupies in the market in relation to
competitive products.
The probative value of opinion polls and market surveys is determined by the
status and degree of independence of the entity conducting it, by the
relevance and the accuracy of the information it provides, and by the reliability
of the applied method.
More particularly, in evaluating the credibility of an opinion poll or market
survey, the Office needs to know:
(a)
Whether or not it has been conducted by an independent and
recognised research institute or company, in order to determine the
reliability of the source of the evidence.
(b)
The number and profile (sex, age, occupation and background) of
the interviewees, in order to evaluate whether the results of the
survey are representative of the different kinds of potential consumers
of the products in question. In principle, samples of 1000 – 2000
interviewees are considered sufficient, provided they are
representative for the class of consumer concerned.
(c)
The method and circumstances under which the survey was carried
out and the complete list of questions included in the questionnaire.
It is also important to know how and in which order the questions
were formulated, in order to ascertain whether the respondents have
been confronted with leading questions.
(d)
Whether the percentage reflected in the survey corresponds to the
total amount of persons questioned or only to those who actually
replied.
1360/1999 CHARM/CHARMS (EN), 441/2002 BEBE/BÉBÉ (EN), 531/2001
TELETHON/TELETOON (EN), 1082/2001 KINDER/KINDER EM-EUKAL
(EN), 1272/2002 TOD’S(fig.)/TOD’S (EN)
Page 368
Unless the above indications are present, the results of a market survey or
opinion poll should not be considered of high probative value, and will not be
in principle sufficient on their own to support a finding of reputation.
Likewise, if the above indications are given, but the reliability of source and
method are questionable or the statistical sample is too small, or the
questions were leading, the credibility of the evidence will be diminished
accordingly. For example, a statistical sample consisting of 157 respondents,
concerning swimwear in the Netherlands, has been considered quite small in
relation to the overall population of that country.
2273/2000 BEACHLIFE/BEACHLIFE (EN)
Conversely, opinion polls and market surveys that fulfil the above
requirements (independence and trustworthiness of source, reasonably large
and widespread sample and reliable method) will be a strong indication of
reputation, especially if they show a high degree of trade mark awareness.
531/2000 GALP/GALP (EN), 1389/1999 YVES ROCHER/YVES ROCHE (FR),
314/2000 SEMCO/SEMCO (EN), 3215/2000 MON CHERI/MONTXERI (EN)
(v)
Audits and inspections
Audits and inspections of the opponent’s undertaking may provide useful
information about the intensity of use of the mark, as they usually comprise
data on financial results, volumes of sales, turnovers, profits etc. However,
such evidence will be pertinent only if it specifically refers to the goods sold
under the mark in question, rather than to the opponent’s activities in general.
Audits and inspections may be carried out on the initiative of the opponent
himself, or may be required by company law and/or financial regulations. In
the former case, the same rules as for opinion polls and market surveys apply,
i.e. the status of the entity conducting the audit and the reliability of the
applied method will be of essence for determining its credibility, whereas the
probative value of official audits and inspections will be as a rule much
higher, since they are usually conducted by a state authority or by a
recognised body of auditors, on the basis of generally accepted standards
and rules.
(vi)
Certifications and awards
This kind of evidence includes certifications and awards by public authorities
or official institutions, such as chambers of commerce and industry,
professional associations and societies, consumer organisations etc.
The reliability of certifications by authorities is generally high, as they
emanate from independent and specialised sources, which attest facts in the
course of their official tasks. For example, the average circulation figures for
periodicals issued by the competent press-distribution associations is
conclusive evidence about the performance of a mark in the sector.
Page 369
R 472/2001-1 BIBA/BIBA (FR)
The same applies to quality certifications and awards granted by such
authorities, as the opponent usually has to meet objective standards in order
to receive the award. Conversely, prizes and awards offered by unknown
entities, or on the basis of unspecified or subjective criteria, should be given
very little weight.
The relevance of a certification or award to the specific case largely depends
on its contents. For example, the fact that the opponent is a holder of an ISO
9001 quality certificate, or of a royal warrant, does not automatically mean that
the sign is known to the public. It only means that the opponent’s goods meet
certain quality or technical standards or that he is a supplier of a royal house.
However, if such evidence is coupled with other indications of quality and
market success, it may lead to the conclusion that the earlier mark has a
reputation.
2080/2001 TELDAT/TELDACON (EN), 435/2001 FLORIS/FLORIS (EN),
2/2000 PLANETA/PLANETA X (ES)
(vii)
Articles in the press or in specialised publications
The probative value of press articles and other publications concerning the
opponent’s mark mainly depends on whether such publications are covert
promotional matter, or if, on the contrary, they are the result of independent
and objective research.
Hence, if such articles appear in publications of a high status or are written
by independent professionals, they will have a quite high value, as for
example when the success of a specific brand becomes the object of a case
study in specialised journals or in scientific publications.
2/2000 PLANETA/PLANETA X (ES) 1203/2001 SAS/SAS & EUROBONUS
(EN), 1509/2001 CAPTAIN BIRDS EYES/CAPTAIN BYRD APERO (EN),
314/2000 SEMCO/SEMCO (EN)
(viii) Annual reports and company profiles
This type of evidence encompasses all kinds of internal publications giving
varied information about the history, activities and perspectives of the
opponent’s company, or more detailed figures about turnovers, sales,
advertising etc.
To the extent that such evidence derives from the opponent and is mainly
intended to promote his image, its probative value will mostly depend on
its contents and the relevant information should be treated with caution,
especially if it mainly consists of estimates and subjective evaluations.
Page 370
However, where such publications are circulated to clients and other
interested circles and contain objectively verifiable information and data,
which may have been compiled or revised by independent auditors (as is
often the case with annual reports), their probative value will be substantially
enhanced.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) 314/2000
SEMCO/SEMCO (EN)
(ix)
Invoices and other commercial documents
All kinds of commercial documents may be grouped under this heading such
as invoices, order forms, distribution and sponsoring contracts, samples of
correspondence with clients, suppliers or associates etc. Documents of this
sort may provide a great variety of information as to the intensity of use, the
geographical extent and duration of the use of the mark.
Even though the relevance and credibility of commercial documents is not
disputed, it will be generally difficult to prove reputation on the basis of such
materials alone, given the variety of factors involved and the volume of
documents required. Furthermore, evidence such as distribution or sponsoring
contracts and commercial correspondence are more apt for giving indications
about the geographical extent or the promotional side of the opponent’s
activities, than to measure the success of the mark in the market and thus
may only serve as indirect indications of reputation.
516/2000 AQUARIUS/AQUARIUS (EN), 531/2000 GALP/GALP (EN),
1246/2000 MONTE/MONTE VERITAS (EN), 2688/2000 JOHN SMITH/BETTY
SMITH (EN)
(x)
Advertising and promotional material
This kind of evidence may take various forms, such as press cuttings,
advertising spots, promotional articles, offers, brochures, catalogues, leaflets
etc. In general, such evidence cannot be conclusive of reputation on its own,
due to the fact that it cannot give much information about actual trade mark
awareness.
586/2001 INFOVIA/VIA PLUS (ES), 1135/2001 SOFTLAN/SOFTLAN (DE),
1527/2001 VIA DIGITAL/VIA PLUS (ES), 1531/2001 LLOYD/EURO LLOYDS
(EN), 1661/2001 ARCOIRIS/RAINBOW (EN), 1978/2001 and 1977/2001
BENJAMIN/BENJAMIN (ES), 2080/2001 TELDAT/TELDACON (EN).
However, some conclusions about the degree of exposure of the public to
advertising messages concerning the mark may be drawn by reference to the
kind of the medium used (national, regional, local) and to the audience
rates or circulation figures attained by the relevant spots or publications, if
of course this kind of information is available.
R 472/2001-1 BIBA/BIBA (FR), 2096/2001 BUKO/BUKO (EN)
Page 371
In addition, such evidence may give useful indications as regards the kind of
goods covered, the form in which the mark is actually used and the kind
of image the opponent is trying to build-up for his brand. For example, if the
evidence shows that the earlier registration for which reputation is claimed
covers a device, but in reality this device is used combined with a word
element, it would not be consistent to accept that the device by itself has a
reputation.
1835/2000 (fig. “TIGER”)/(fig. “PUMA”)
(fig.)/HYDRA FARMACOSMETICI (fig.) (EN)
•
(EN),
557/2001
SEPHORA
Conclusion
In general, the more diverse and complete the evidence is, the easier it will be
to accept that the earlier mark has indeed acquired a reputation. For example,
the following materials submitted in a case have been considered largely
sufficient for establishing the reputation of the earlier mark:
1.
background information about the history of the trade mark and
the marketing milestones since 1970;
2.
an explanation of the advertising strategy with reference to the
medium used and the audience rates reached (TV spots seen by
82% to 92% of the public in the relevant territory);
3.
a video showing different publicity spots;
4.
an assortment of advertisements in magazines;
5.
photos of diverse sales points;
6.
samples of packaging;
7.
a study showing the development in market share from 1996 to
1998;
8.
accounts of the marketing expenditure for the last 5 years;
9.
three omnibus surveys (91%, over 1 282 people questioned);
10. an assortment of invoices from various years.
Reputation was considered proved mainly through the combination of the
information given by documents 1, 2, 7, 8 and 9.
2096/2001 BUKO/BUKO (EN)
2.
Identity – similarity of signs
The Court has dealt with the notion of similarity of signs only in relation to
likelihood of confusion, but at the same time it has indicated that evidence of
confusion is not necessary for the purposes of Article 5(2) of the TMD (and
hence for Article 8(5) CTMR), as likelihood of confusion is not a condition for
its application (Sabel, paragraph 20).
Page 372
As regards protection against dissimilar goods, the Court suggested in
General Motors that a possible association of the two signs, enhanced by
the reputation of the earlier mark, may suffice for its distinctiveness or repute
to be detrimentally affected, by stating that “it is where there is a sufficient
degree of knowledge of that mark that the public, when confronted with the
later trade mark, may possibly make an association between the two trade
marks, and the earlier mark may consequently be damaged”. (General
Motors, paragraph 23). It follows that an association of this kind may suffice
for damaging the earlier mark and, thus, may entail the application of Article
8(5), even if it is not enough for giving rise to confusion.
2726/2000
PRINCE(fig)/PRINCESSE
ROUGE
(ES),
2687/2000
TORRES(fig)/TORRE ORIA(fig), 1602/2001 DIABLO/TEAM CLUDIO
CHIAPUCCI EL DIABLO(fig) (IT)
In view of these assumptions the following practice rules can be established
as regards the issue of similarity of signs in the context of Article 8(5):
Firstly, the ordinary test applied in the comparison of signs under Article
8(1)(b) for determining the extent to which the marks in dispute are similar,
visually, phonetically and conceptually, must also be used in the context of
Article 8(5).
If the signs are identical or similar, the examination thereafter is not directed to
determine whether there is a likelihood of confusion, but rather to the finding
of whether or not there is detriment or unfair advantage to the distinctiveness
or reputation. Hence, any evaluation of the various points of resemblance
between the signs carried out in the global assessment of likelihood of
confusion, is not pertinent for the purposes of Article 8(5). For example,
saying that there are enough differences between the signs to prevent the
public from being confused is not a valid assumption under 8(5), simply
because confusion is not relevant in this context.
Of course, where the marks are so similar that may be confused, they are
necessarily similar enough to also be associated with each other.
On the other hand, where the dissimilarities are such that there is no risk
that the public will associate or otherwise make a link between the two
signs, the application of Article 8(5) can be safely excluded.
Thus, the only “grey area” that appears to result from the reference to
association as the cause of detriment or unfair advantage, is the case where
although confusion per se is excluded, the marks are similar enough to be
associated, in the sense that perception of the one will bring to mind the
memory of the other. However, since such an association may suffice for
damaging the earlier mark, it should not be excluded that, under certain
circumstances, a similarity that is not enough for the application of Article
8(1)(b), may nonetheless be sufficient for the purposes of Article 8(5).
Page 373
3.
Detriment – Unfair advantage
3.1. Protected subject-matter
Article 8(5) does not protect the reputation of the earlier mark as such, in
the sense that it does not intend to prevent the registration of all marks
identical with or similar to a mark with reputation. In addition, there must be a
likelihood that use of the mark subject to opposition without due cause would
take unfair advantage of, or would be detrimental to, the distinctive character
or the repute of the earlier mark. The Court confirmed this by stating that
“once the condition as to the existence of reputation is fulfilled, the
examination has to proceed with the condition that the earlier mark must
be detrimentally affected without due cause”. (General Motors, paragraph
30).
The Court did not set out in more detail exactly what would count as detriment
or unfair advantage, even though it stated in Sabel that Article 8(5) “does not
require evidence of likelihood of confusion”, thereby stating the obvious,
namely that the enlarged protection afforded to marks with reputation is not
concerned with their origin function (Sabel, paragraph 20).
However, in a series of previous decisions3 the Court stated that, apart from
indicating origin, a trade mark may also exercise other functions worthy of
protection. More particularly, it confirmed that a trade mark can offer a
guarantee that all the goods coming from a single undertaking have the same
quality (guarantee function) and that it can serve as an advertising
instrument by reflecting back the goodwill and prestige it has acquired in the
market (advertising function).
It follows that trade marks do not only serve to indicate the origin of a product,
but also to convey a certain message or image to the consumer, which is
incorporated in the sign mostly through use and, once acquired, forms part
of its distinctiveness and repute. In most cases of reputation these features of
the trade mark will be particularly developed, as the commercial success of a
brand is usually based on product quality, successful promotion, or both and,
for this reason, they will be especially valuable to the trade mark owner. This
added value of a mark with reputation is precisely what Article 8(5) intends to
protect against undue detriment or unfair advantage.
Hence, the notion of unfair detriment extends to all cases where the use of
the application is likely to have an adverse effect on the earlier mark, in the
sense that it would diminish its attractiveness (detriment to distinctiveness), or
would devalue the image it has acquired among the public (detriment to
3
C-10/89 SA CNL-SUCAL NV v. HAG GF AG, C-427,429,436/93 Bristol-Myers Squibb v.
Paranova A/S, C-349/95 Frits Loendersloet Internationale v. George Ballantine & Son
Ltd., C-337/95 Parfums Christian Dior SA v. Evora and C-63/97 Bayerische
Motorenwerke AG v. Ronald Karel Deenik.
Page 374
repute), whereas the notion of unfair advantage covers cases where use of
the opposed mark is likely to result in a misappropriation of its attractive
powers (unfair advantage of distinctiveness) or an exploitation of its image
and prestige (unfair advantage of repute).
Given also that a very strong reputation is both easier to harm and more
tempting to take advantage of, owing to the great value it incorporates, the
Court underlined that “the stronger the earlier mark’s distinctive character and
reputation, the easier it will be to accept that detriment has been caused to it”
(General Motors, paragraph 30). Even if the Court did not say so expressly,
the same must be accepted as regards the unfair advantage that the applicant
might enjoy at the expense of the earlier mark.
3.2. Assessment of detriment – unfair advantage
The Court did not deal in General Motors with the assessment of detriment
and unfair advantage in great detail, as this issue was not part of the question
referred to it. It only stated that “it is where there is a sufficient degree of
knowledge of that mark that the public, when confronted with the later trade
mark, may possibly make an association between the two trade marks,
and the earlier mark may consequently be damaged”. (General Motors,
paragraph 23).
Even though this statement is too limited to serve as a basis for a full-scale
analysis of the condition of detriment, it gives at least an important indication,
namely that detriment or unfair advantage must be the consequence of an
association of the conflicting marks in the minds of the public, made possible
by the similarities between the marks and enhanced by the reputation of the
earlier sign.
The need for an association capable of causing detriment, has a two-fold
consequence for the assessment of detriment or unfair advantage: Firstly, if
the alleged detriment or unfair advantage is not the result of an
association between the marks, but is due to other, extraneous reasons, it is
not actionable under 8(5). Secondly, if in view of the overall circumstances of
the case, an association between the marks is not likely, the necessary link
between the use of the later mark and the detrimental effect will be missing.
Thus, the similarities between the signs and the reputation of the earlier
mark must be of such a nature and degree, as to allow for an association of
the two by the consumer, in the sense that perception of the one will bring to
mind the memory of the other.
Furthermore, as the Court observed, an association between the marks
requires that the part of the public which is already familiar with the earlier
mark is also exposed to the later mark. This will be easier to establish
where the earlier mark is known to the public at large, or where the
purchasers of the respective goods largely overlap. However, in cases where
the goods are further removed from each other and such a connection
between the respective publics is not obvious, the opponent must justify why
the marks will be associated, by reference to some other link between his
Page 375
activities and those of the applicant, as for example where the earlier mark is
exploited outside its natural market sector, e.g. by licensing or merchandising.
621/2001 F1 FORMULA 1/F1 FORMULA 1 (EN)
From the foregoing it follows that the evaluation of detriment or unfair
advantage must be based on an overall assessment of all the factors relevant
to the case (including in particular the similarity of signs, the reputation of the
earlier mark, the respective consumer groups and market sectors), with a view
to determining whether the marks may be associated in a way which may
prove injurious to the earlier trade mark, or which may allow the application to
unduly profit from it.
Until more detailed principles are developed by higher instances, the above
will provide the framework for the assessment of detriment and unfair
advantage in the context of Article 8(5) CTMR, taking also into account the
peculiarities of the various possible forms of detriment and unfair advantage
discussed below.
3.3. Forms of detriment – unfair advantage
Thus, Article 8(5) applies if any of the following four alternative
requirements is fulfilled, namely if use of the application would (a) cause
unfair detriment to the distinctiveness (b) cause unfair detriment to the repute
(c) take unfair advantage of the distinctiveness, or (d) take unfair advantage of
the repute, of the earlier mark.
3.3.1. Detriment to distinctiveness
The distinctiveness of the earlier trade mark will be detrimentally affected if
the public ceases to associate it with a given range of goods or services
originating from a single source and starts associating it with different goods,
having distinct origins. Such an association can dilute the trade mark’s
ability to identify a single undertaking, without this necessarily resulting in
confusion as to origin, and is likely to diminish its capacity to stimulate the
desire of the public to buy the products for which it is registered.
Such a situation is commonly known as “dilution by blurring”, and occurs
when the trade mark is no longer capable of evoking in the mind of the
public an immediate association with the products it covers. This capacity
may be reduced or lost by the fact that persons other than the proprietor use
the same or a similar sign for products other than those for which it is
registered. This leads to an erosion of distinctive character caused by the
proliferation of “parasitic” marks which, although not debasing the original
trade mark, are so numerous that they may deprive the trade mark of its
distinctive character and hence of its attractiveness.
Such an erosion of distinctiveness cannot simply occur where the earlier mark
has a reputation and is identical with or similar to the mark applied for, as this
would involve an automatic and indiscriminate recognition of a likelihood of
Page 376
dilution for all trade marks of repute and would negate the purpose of the
condition of proving detriment. In addition, the earlier mark must possess an
exclusive character, in the sense that it should be associated by the
consumers with a single source of origin, since it is only in this case that a
likelihood of detriment to distinctiveness may be envisaged. If the same sign,
or a variation thereof, is already in use in connection with a plethora of
different goods, there can be no immediate link with any of the products it
distinguishes, and thus there will be little or no room for further dilution. Zero
or virtually zero dilution does not suffice to establish a likelihood of dilution
within the meaning of Article 8(5) CTMR, because in such a case the
detriment would not be likely, as required by the law, but mere speculation.
R 283/1999-3 HOLLYWOOD/HOLLYWOOD (FR)
Thus, if the applicant shows that the earlier sign is commonplace and is
already used by different undertakings in various sectors of the market, he
will also have successfully refuted the existence of a likelihood of dilution.
Even the fact that the opponent did not react to other registrations of the same
or a similar sign in different classes may indicate that he is not too concerned
about whether consumers will no longer associate the mark exclusively with
his product.
Similarly, it will be difficult to accept that the attractiveness of the earlier mark
risks being diluted if its inherent distinctiveness is not very strong. If, for
example, the mark is suggestive of a characteristic shared by a wide range of
goods, the consumer is more likely to associate it with the specific feature of
the product it alludes to, rather than with another mark. This will be particularly
true where the respective goods are so far removed from each other that a
possibility of association between them is even less probable.
R 802/1999-1 DUPLO/DUPLO, R 303/2000-2 MAGEFESA/MAGEFESA (ES)
3.3.2. Detriment to repute
The notion of unfair detriment to repute, also often referred to as “dilution
by tarnishing” relates to situations where use of the application without due
cause is likely to devalue the image or the prestige that a mark with
reputation has acquired among the public. The reputation of the earlier trade
mark may be tainted or debased in this way, either when it is reproduced in an
obscene, degrading or inappropriate context, or in a context which is not
inherently unpleasant, but which proves to be incompatible with a special
image the earlier trade mark has acquired in the eyes of the public, due to the
promotional efforts of its owner.
Thus, the opponent must show, or at least convincingly argue, that use of the
applicant’s trade mark would prompt such inappropriate or negative mental
associations with the earlier trade mark, or associations conflicting with the
image it has acquired in the market. However, in the case of detriment to a
Page 377
special image vested in the mark, the opponent will also have to prove that,
apart from being known by a significant part of the public, his mark has indeed
acquired this special image by virtue of its use and promotion, which is
likely to be harmed if the application is used for the goods applied for.
105/1999 HOLLYWOOD/HOLLYWOOD (FR), 81/2000 OLYMPIC / FAMILY
CLUB BELMONT OLYMPIC (EN) R 283/1999-3 HOLLYWOOD /
HOLLYWOOD (FR)
In all such cases, there is an association, either at the level of signs, or at the
level of goods, which is injurious to the earlier trade mark and may take the
following forms:
(a)
The application sign reproduces the earlier mark in such a fashion that
its word or figurative element is amended or altered in a negative or
offensive way.
(b)
The application is used in relation to offensive goods, or covers goods
which evoke negative or unpleasant mental associations, which
conflict with those generated by the legitimate use of the earlier mark.
(c)
The application is used for goods of poor quality, or which are
incompatible with a special quality or image associated with the
earlier trade mark.
For example, it has been held that use of a famous publisher’s mark in
connection with adult material can seriously harm its prestige, especially since
the earlier mark was reproduced in the application sign in combination with
the letter “X”, i.e. together with an indication which is in itself allusive to adult
content. Likewise, it has been held that use of a mark which is reputed in the
field of pharmaceuticals in connection with substances having a corrosive
effect, such as bleaching, polishing and abrasive preparations, could have a
negative influence on its perception by the public, by creating unpleasant
associations.
2/2000 PLANETA/PLANET-X (ES), R 1007/2000-1 LIPOSTATIN/LIPOSTAT
(EN)
As regards use which is incompatible with a special image of the earlier mark,
it has been held that if a mark that is associated in the minds of the public with
an image of health, dynamism and youth is used by the applicant for tobacco
products, the negative connotation conveyed by the latter would contrast
strikingly with the image of the former. Thus, it is likely to damage the earlier
mark’s repute.
On the other hand, the tarnishing of the image of the earlier mark has not
been considered probable where the goods are so different from each other
that an association between the signs would seem highly unlikely and the
distinctive character of the earlier mark is quite low. For example, it has been
Page 378
held that use of the word “DUPLO” for office equipment could not tarnish the
image of chocolate bars of the same brand. Similarly, the use of the word
VISA for cosmetics could not harm in any way the repute of the same sign
with regard to financial services.
R 802/1999-1 DUPLO/DUPLO, 725/2001 VISA/VISA (EN)
3.3.3. Taking unfair advantage of distinctiveness
The notion of unfair advantage of distinctiveness covers cases where the
applicant benefits from the attractiveness of the earlier right by affixing on his
goods a sign which is widely known in the market, misappropriating thus its
attractive powers and advertising value. This may lead to unacceptable
situations of commercial parasitism where the applicant is allowed to take a
“free-ride” on the investment of the opponent in promoting and building-up a
goodwill for his mark, as it may stimulate the sales of the applicant’s products
to an extent which is disproportionately high in comparison with the size of his
promotional investment.
Such a misappropriation of the distinctiveness of the earlier mark
presupposes an association between the respective marks, which renders
possible the transfer of attractiveness to the application’s sign. An
association of this kind will be more likely in the following circumstances:
(a)
Where the earlier mark possesses a very strong distinctive
character, because in such a case it will be both more tempting for the
applicant to try to benefit from its value and easier to associate it with
the application sign, as such marks will be recognised in almost any
context, exactly because of their outstanding distinctiveness.
(b)
Where there is a special connection between the goods which allows
for some of the qualities of the opponent’s goods to be attributed to
those of the applicant. This will be particularly so in the case of
neighbouring markets, where a “brand extension” would seem more
natural, as in the example of pharmaceuticals the healing properties of
which may be presumed for example in cosmetics bearing the same
mark. Conversely, such a link was not found to exist between credit
card services and cosmetics, as it was thought that the image of the
former is not transferable to the latter, despite the fact that their
respective users largely coincide.
R 1007/2000-1 LIPOSTATIN/LIPOSTAT (EN), 725/2001 VISA/VISA
(EN)
(c)
Where, in view of its special attractiveness, the earlier mark may be
exploited even outside its natural market sector, e.g. by licensing or
merchandising. In this case, if the applicant uses a sign identical or
Page 379
similar to the earlier mark, for goods for which the latter is already
exploited, he will obviously profit from its de facto value in that sector.
It should be noted that the applicant’s benefit does not have to be
intentional to be sanctioned. Bad faith is not in itself a condition for the
application of Article 8(5), which only requires that the advantage be “unfair”,
in that there is no justification for the applicant’s profit. However, where the
evidence shows that the applicant is clearly acting in bad faith, there will be a
strong indication of unfair advantage. The existence of bad faith may be
inferred by various factors, such as an obvious attempt by the applicant to
imitate an earlier sign of great distinctiveness as closely as possible, or where
there is no apparent reason why he chose for his goods a mark which
includes such a sign.
R 303/2000-2 MAGEFESA/MAGEFESA (ES), 102/1999 NIKE/NIKE (ES),
1381/1999 AIR ONE/AIR ONE (IT), 81/2000 OLYMPIC/FAMILY CLUB
BELMONT OLYMPIC (EN)
Nor is it necessary for the opponent to show that the applicant’s benefit is
detrimental to his economic interests, as in most cases the “borrowed”
distinctiveness of the application’s sign will principally affect the applicant’s
direct competitors, i.e. traders dealing in identical or similar goods as him, by
putting them at a competitive disadvantage. However, the possibility of
simultaneous detriment to the opponent’s interests should not be ruled out
completely, especially in instances where use of the application’s sign could
affect the opponent’s merchandising schemes, or would hinder his plans to
penetrate a new market sector.
3.3.4. Taking unfair advantage of repute
The notion of unfair advantage of repute covers situations where the
application may profit from the renown of the opponent’s brand by unduly
exploiting its prestige. The difference from unfair advantage of distinctiveness
is that this kind of misappropriation is more concerned with the quality image
of the mark and less with its attractive force.
Such a risk will be particularly high where the earlier mark has acquired not
only a high degree of recognition amongst consumers, but also a “good” or
“special” reputation, in the sense that it reflects an image of excellence,
reliability or quality, or some other positive message, which could positively
influence the choice of the consumer as regards goods of other producers.
Such an added value to the mark’s reputation has to be abundantly clear from
the evidence on file and should not be merely assumed.
105/1999 HOLLYWOOD/HOLLYWOOD (FR), 81/2000 OLYMPIC/FAMILY
CLUB
BELMONT
OLYMPIC
(EN)
R
283/1999-3
HOLLYWOOD/HOLLYWOOD (FR)
Page 380
The applicant may benefit from the quality aspects of the opponent’s
reputation without actually harming the image of the earlier mark. Thus,
contrary to what applies to dilution by tarnishing, the applicant’s goods do not
need be of poor quality, or of an offensive character. For example, if the
earlier mark is a synonym of excellence, even the use of the application in
respect of ordinary quality products could take unfair advantage of its repute,
provided of course that the relationship between the goods is such that allows
for an association to be made between the two signs.
Finally, the statements made in the previous section in the context of unfair
advantage of distinctiveness as regards the enhanced likelihood of advantage
in cases of (a) an exceptional distinctiveness of the earlier sign, (b)
neighbouring markets, (c) exploitation through merchandising, and (d)
intentional imitation, are also pertinent here, as the mechanism for gaining
advantage is basically the same in both situations.
3.4. Proof of detriment – unfair advantage
3.4.1. Standard of proof
In opposition proceedings detriment or unfair advantage may be only
potential, as confirmed by the conditional wording of Article 8 (5), which
requires that the use of the application without due cause “would take unfair
advantage of, or be detrimental to the distinctiveness or repute of the earlier
mark”. In contrast, Article 9 (1) (c) CTMR, which uses the more positive
wording “takes unfair advantage of or is detrimental to”, does not appear to
be satisfied with a potential risk of fulfilment of the conditions envisaged. The
same discrepancy between provisions dealing with registration and provisions
regulating use can also be seen in Articles 4(3) and 5(2) of the TM Directive.
The above difference is only natural and can be easily explained from the fact
that, in opposition proceedings, actual detriment or unfair advantage will
occur only exceptionally, given that in most cases the applicant will not have
put his mark to effective use when the dispute arises. Nevertheless, such a
possibility should not be ruled out completely, and if there is evidence of
actual use or damage, it will have to be considered and given appropriate
weight.
On the other hand, the fact that detriment or unfair advantage may be only
potential does not mean that a mere possibility is sufficient for the purposes of
Article 8 (5). Detriment or unfair advantage must be probable, in the sense
that it is foreseeable in the ordinary course of events. Thus, it is not
enough to merely show that detriment or unfair advantage cannot be excluded
in general, or that it is only remotely possible.
Page 381
105/1999 HOLLYWOOD/HOLLYWOOD (FR), 1358/1999 BLANCO
NEGRO/BLANCO Y NEGRO (ES) 2/2000 PLANETA/PLANETA X (ES)
Y
3.4.2. Burden of proof
As also mentioned in section III.1.4.2. above, Article 74(1) CTMR requires the
opponent to put forward and prove all the facts on which his opposition is
based. Thus, the opponent bears the burden to show, within the period he
has for completing the substantiation of his opposition, that the actual or future
use of the application has caused, or is likely to cause, detriment to the
distinctiveness or the repute of the earlier mark, or that it has taken, or is likely
to take, unfair advantage thereof.
In doing so, the opponent cannot merely contend that detriment or unfair
advantage would be a necessary consequence flowing automatically from the
use of the sign applied for, in view of the strong reputation of his mark. Even
where the earlier mark is highly reputed, the taking of unfair advantage or the
suffering of detriment must be properly substantiated since otherwise,
marks with reputation would enjoy blanket protection against identical or
similar signs in relation to virtually any kind of product. However, this would be
clearly inconsistent with the wording and spirit of Article 8(5), as in such a
case reputation would become the sole requirement for its application, rather
than being only one of the several conditions provided for therein.
R 802/1999-1 DUPLO/DUPLO, 1082/2001 KINDER/KINDER EM-EUKAL (EN)
Thus, where the opponent claims actual detriment or unfair advantage, he
must give indications and evidence of the kind of detriment suffered, or of the
unfair advantage taken by the applicant, as well as to show that it resulted
from the use of the sign applied for. To this effect, the opponent may rely on
a variety of indications, depending on the kind of detriment or unfair
advantage argued, such as a considerable decrease in sales of the goods
bearing the mark, or a loss of clientele, or a decline of the degree of
recognition of his mark among the public.
On the other hand, in the case of potential detriment or unfair advantage the
exercise will necessarily be of a somewhat speculative nature, as the
detrimental or beneficial impact has to be evaluated ex ante. Thus, the
opponent should at least put forward a coherent line of argument, showing
what the detriment or unfair advantage would consist of and how it
would occur, which could lead to the prima facie conclusion that such an
event is indeed likely in the ordinary course of events.
R 802/1999-1 DUPLO/DUPLO, 105/1999 HOLLYWOOD/HOLLYWOOD (FR),
1358/1999 BLANCO Y NEGRO/BLANCO Y NEGRO (ES)
It follows that, as a rule, general allegations of detriment or unfair advantage
will not be sufficient in themselves for proving potential detriment or unfair
Page 382
advantage. However, considering that in such cases the subject-matter of
proof is the likelihood of a future event, and that, by definition, the opponent’s
arguments cannot in themselves amount to evidence, it will often be
necessary to base certain conclusions on legal presumptions, that is on
logical assumptions or deductions resulting from the application of the rules of
probability to the facts of the specific case. One such presumption has been
mentioned by the Court, when it stated that “the stronger the earlier mark’s
distinctive character and reputation, the easier it will be to accept that
detriment has been caused to it” (General Motors, paragraph 30). It should
also be noted that the kind of presumptions relevant here are rebuttable
presumptions (praesumptio juris) the existence of which the applicant may
always disprove by submitting appropriate evidence, and not conclusive
presumptions (praesumptio juris et de jure).
R 1007/2000-1 LIPOSTATIN/LIPOSTAT (EN), 227/1999 ABC/ABC (FR),
437/1999 VITAKRAFT/VITAGRAFT (EN), 2/2000 PLANETA/PLANETA X
(ES), R 472/2001-1 BIBA/BIBA (FR)
In addition, if the type of detriment or unfair advantage argued in the specific
case is of such a nature that presupposes the fulfilment of certain particular
conditions of fact (e.g. exclusive character of the earlier mark, qualitative
aspects of reputation, a given image etc.), these facts will also have to be
proved by the opponent, by the submission of appropriate evidence.
105/1999 HOLLYWOOD/HOLLYWOOD (FR)
3.4.3. Means of evidence
Where the opponent claims actual detriment or unfair advantage, he can use
all the means of evidence provided for in Article 76 CTMR for proving it. For
example, he may prove an actual decrease of trade mark awareness by
reference to opinion polls and other documentary evidence, or a fall in sales
by submitting concrete economic results or extracts from his official
commercial books. The rules governing the evaluation and the probative value
of such evidence are the same as the ones mentioned in sections III.1.4.3 and
4.4 above, in relation to the evidence required for proving reputation.
Even where the detriment or unfair advantage claimed is only potential, the
opponent will have to prove any conditions of fact which might be necessary
in particular cases for giving rise to a probability of detriment or unfair
advantage, by submitting evidence of the kind mentioned above.
R
283/1999-3
HOLLYWOOD/HOLLYWOOD
(FR),
R
DUPLO/DUPLO, R 1007/2000-1 LIPOSTATIN/LIPOSTAT (EN)
4.
802/1999-1
Use without due cause
The last condition for the application of Article 8(5) is that use of the sign
applied for should be without due cause. Even though this is a necessary
Page 383
condition of protection, the opponent cannot be reasonably expected to
prove a negative fact, such as the absence of due cause. It follows that as
regards this requirement the burden of proof is reversed.
Hence, in the absence of any indications on the face of the evidence
providing an apparent justification for the applicant’s acts, the lack of due
cause must be generally presumed. However, the applicant may avail himself
of the possibility of rebutting such a presumption by showing that he has a
legitimate justification that entitles him to act in this particular manner.
R
283/1999-3
HOLLYWOOD/HOLLYWOOD
(FR),
R
303/2000-2
MAGEFESA/MAGEFESA (ES), 81/2000 OLYMPIC/FAMILY CLUB BELMONT
OLYMPIC (EN)
For example, such a situation could be envisaged if the applicant had been
using the sign for dissimilar goods in the relevant territory before the
opponent’s mark was applied for, or acquired a reputation, especially where
such a coexistence has not in any way affected the distinctiveness and repute
of the earlier mark.
Another instance of legitimate excuse could be where the logo of which the
opponent’s mark consists was created by the applicant, who only gave the
opponent non-exclusive rights to register and use it for a specific set of goods,
but reserved the right to register and use it himself for the goods applied for.
However, the mere fact that the applicant is a holder of a national registration
for the mark applied for cannot as such provide him with a valid excuse,
where (a) the two marks are not identical, or (b) his registration is not earlier
than the opponent’s and (c) he has not also put the mark to effective use in
the territory concerned.
102/1999 NIKE /NIKE (ES), 105/1999 HOLLYWOOD/HOLLYWOOD (FR), R
283/1999-3 HOLLYWOOD/HOLLYWOOD (FR)
Page 384
Part 6
Proof of Use
Opposition Guidelines, Part 6, Proof of use - Status: March 2004
Page 385
INDEX
PART 6: REQUIREMENT OF USE IN OPPOSITION PROCEEDINGS ......389
I.
GENERAL CONSIDERATIONS ...................................................................389
1. Function of proof of use ..................................................................389
2. Legislative framework .....................................................................389
2.1. CTMR and CTMIR....................................................................390
2.1.1. Article 15 CTMR....................................................................390
2.1.2. Article 43 CTMR....................................................................390
2.1.3. Rule 22 CTMIR .....................................................................391
2.2. Trade Marks Directive and national law implementing the
Directive .............................................................................................392
3. Substance and procedure...............................................................392
II. SUBSTANTIVE LAW ................................................................................393
1. The principle of genuine use...........................................................393
2. Nature of use – use as a mark........................................................394
2.1. Use as a mark ..........................................................................394
2.2. Use as a trade name/trade designation/name..........................395
2.3. Use as a title of a publication ...................................................395
2.4. Use as a domain name ............................................................395
3. Use in the course of trade...............................................................395
3.1. Meaning of course of trade.......................................................396
3.2. Public use.................................................................................396
3.2.1. Private use ............................................................................396
3.2.2. Intra-enterprise use...............................................................396
3.2.3. Preparation of use.................................................................396
3.3. Use in relation to goods or services: labels, on price lists,
invoices, catalogues and other business papers.......................396
3.4. Use in advertising.....................................................................397
3.4.1. Advertising in parallel to the marketing of goods or services
..398
3.4.2. Advertising in advance of the marketing of goods or services
398
3.4.3. Advertising without any marketing of goods or services .......398
3.5. Use on the Internet...................................................................398
4. Volume (extent, amount) of use......................................................399
4.1. Criteria......................................................................................399
4.2. Examples of insufficient use.....................................................399
4.3. Examples of sufficient use........................................................400
5. Place of use ....................................................................................401
5.1. Use on the “domestic” market ..................................................401
5.2. CTMs: Use in the European Community ..................................401
5.3. National marks: Use in the relevant Member State ..................402
5.4. Use in import and export trade .................................................402
6. Use of the mark as registered – use of variations of the mark as
registered ..............................................................................................402
Page 386
6.1. Principle: Relevance of the Register ........................................402
6.2. Use of the mark as registered ..................................................402
6.2.1. Use as registered – word marks ...........................................402
6.2.2 Use as registered – figurative marks.....................................405
6.2.3 Use as registered – 3D marks...............................................405
6.2.4 Use as registered – colour marks .........................................405
6.3.Use of more than one mark..........................................................406
6.4. Acceptable and unacceptable variations .....................................407
6.4.1 Standards for determining the admissibility of a variant.........407
6.4.2 Variations of letters and words...............................................408
6.4.3 Variations of figurative marks and elements ..........................409
6.4.4 Variations of colours ..............................................................412
7. Use for the goods or services for which the mark is registered .........412
7.1. Comparison of use with specification ..........................................413
7.2. Relevance of the classification ....................................................413
7.3. Use and registration for “class headings” ....................................413
7.4. Generic/general terms in classification ........................................414
8. Use by the proprietor or on his behalf .............................................414
8.1. Use by proprietor .........................................................................414
8.2. Use by authorised third parties ....................................................415
8.3. Use of collective marks................................................................415
9. Time of use .....................................................................................416
9.1. Use within five years preceeding the date of publication.............416
9.2. Grace period of five years ...........................................................416
9.2.1 Initial grace period.................................................................416
9.2.2 Grace period after interruption of use ...................................418
9.2.3 End of grace period...............................................................418
9.3 Remaining “goodwill” ...................................................................418
10. “Legal” use .....................................................................................418
10.1. Deceptive use ..........................................................................418
10.2. Other forms of illegal use .........................................................419
11. Justification of non-use ...................................................................419
11.1. Business risks ..........................................................................419
11.2. Government intervention ..........................................................419
11.3. Force majeure ..........................................................................420
11.4. Consequences of justification of non-use.................................420
III. PROCEDURE ........................................................................................421
1. Request by the applicant ................................................................421
1.1. Time of request ........................................................................421
1.2. Nature of request – explicit, unambiguous, unconditional ........422
2.
Express invitation by the Office 422
3. Reaction of the opponent – providing proof of use .........................423
3.1. Time limit for providing proof of use ............................................423
3.2. Means of evidence ......................................................................424
3.2.1. Principle ................................................................................424
3.2.2. References............................................................................424
3.2.3. Declarations ..........................................................................425
3.3. Subject-matter of proof of use ..................................................427
3.3.1. Place of use ..........................................................................427
3.3.2. Time of use ...........................................................................427
Page 387
3.3.3. Nature of use ........................................................................428
3.3.4. Extent of use .........................................................................428
4. Reaction of the applicant ................................................................428
4.1. Forwarding of the evidence ......................................................428
4.2. Insufficient proof of use ............................................................429
4.3. No reaction of applicant............................................................429
4.4. Formal withdrawal of request ...................................................429
4.5. Relationship of request for proof of use and reply to opposition
429
5. Further reaction by the opponent....................................................430
6. Languages in proof of use proceedings ..........................................430
7. Decision: Assessment of the evidence – standard of proof ............431
7.1. Competence of the Office.........................................................431
7.2. The standard of proof ...............................................................432
7.3. Indirect or circumstantial evidence ...........................................432
7.4. Overall assessment..................................................................433
7.5. Need for decision .....................................................................436
Page 388
Proof of use
Part 6: Requirement of use in opposition proceedings
I.
General considerations
1.
Function of proof of use
Community legislation on trade marks establishes an obligation for the owner
of a registered trade mark to use that mark in a genuine manner. The reason
for this obligation of use is that it is only the position on the market actually
held by the trade mark proprietor that should be protected, and not a mere
register right that is not supported by any actual or potential goodwill.
Furthermore, requiring use of a mark as a condition for enforcing rights will
reduce the number of conflicts between marks and eventually also reduce the
number of marks maintained on the register without actually having been
used.
The Boards of Appeal have affirmed that the rationale underlying Article 43(2)
and (3) CTMR is that the trade mark register should not be blocked by trade
marks that are not being used. It would be unjust and inappropriate if persons
who wish to register Community trade marks were prevented from doing so
on account of earlier registered marks that are not in fact being used.
R 743/1999-1 MERTINA / MERITENE (ENG), R 756/1999-2 DOCTORS /
DOC& TORS, R 733/1999-1 AFFINITE / AFFINAGE (EN), R 380/1999-2
LINDEBOOM / LINDENER (IT, FR, EN, ES, DE), R 362/2000-1 HERVALIA /
HERBAPURA (IT, FR, EN, ES, DE), R 373/2000-1 GIORGIO / GIORGI (EN),
R 378/2000-1 RINASCIMENTO / RENACIMIENTO (EN), R 149/2000-3
MARKO / MAKRO (EN)
The obligation of use is not applicable immediately after registration of the
mark. Instead, the owner of a registered mark has a so-called grace period of
five years to put the relevant goods and services under this mark on the
market. Before this period elapses, the mere formal registration gives the
mark its full protection.
The Office does not inquire ex officio whether the earlier mark has been used
or not. Such examination takes place only when the CTM applicant makes a
request for proof of use. The request of the applicant, under the condition that
the legal requirements are met, triggers the procedural and substantive
consequences laid down in the CTMR and the CTMIR.
2.
Legislative framework
The legislative framework consists of provisions in the CTMR, in the CTMIR,
and in the Trade Marks Directive as implemented in the national law of the
Member States.
Page 389
Proof of use
2.1. CTMR and CTMIR
2.1.1. Article 15 CTMR
Article 15 CTMR stipulates the basic substantive requirement for the
obligation to use registered marks.
Article 15(1) CTMR reads:
If, within a period of five years following registration, the proprietor has
not put the Community trade mark to genuine use in the Community in
connection with the goods or services in respect of which it is registered,
or if such use has been suspended during an uninterrupted period of five
years, the Community trade mark shall be subject to the sanctions
provided for in this Regulation, unless there are proper reasons for nonuse.
Article 15(2), (3) CTMR stipulates forms of use which also constitute use of
the Community trade mark in accordance with Article 15(1) CTMR.
According to Article 15(2)(a) and (b) CTMR, the use of the Community trade
mark in a form differing in elements which do not alter the distinctive character
of the mark in the form in which it was registered and the affixing of the
Community trade mark to goods or to the packaging thereof in the Community
solely for export purposes, also constitute use within the meaning of Article
15(1) CTMR.
According to Article 15(3), the use of the Community trade mark with the
consent of the proprietor shall be deemed to constitute use by the proprietor.
2.1.2. Article 43 CTMR
The various possible consequences of a lack of use are dealt with in the
specific provisions of the different proceedings. Article 43(2) and (3) CTMR
contain the respective provisions for opposition proceedings.
According to Article 43(2) CTMR,
If the applicant so requests, the proprietor of an earlier Community trade
mark who has given notice of opposition shall furnish proof that, during
the period of five years preceding the date of publication of the
Community trade mark application, the earlier Community trade mark
has been put to genuine use in the Community in connection with the
goods or services in respect of which it is registered and which he cites
as justification for his opposition, or that there are proper reasons for
non-use, provided the earlier Community trade mark has at that date
been registered for not less than five years. In the absence of proof to
this effect, the opposition shall be rejected. If the earlier Community
trade mark has been used in relation to part only of the goods or
Page 390
Proof of use
services for which it is registered it shall, for the purposes of the
examination of the opposition, be deemed to be registered in respect
only of that part of the goods or services.
According to Article 43(3) CTMR,
Paragraph 2 shall apply to earlier national trade marks referred to in
Article 8(2)(a), by substituting use in the Member State in which the
earlier national trade mark is protected for use in the Community.
There is no express provision in the CTMR that such forms of use as
mentioned in Article 15(2) and (3) CTMR may also be regarded as use of
earlier national trade marks. However, the concept of the obligation to use the
registered mark is harmonised as a consequence of Article 10(2) and (3) of
First Council Directive 89/104/EEC of 21 December 1988 to approximate the
laws of the Member States relating to trade marks (the “Directive”). Hence, it
is appropriate to apply Article 15(2) and (3) CTMR to the use of earlier
national trade marks.
2.1.3. Rule 22 CTMIR
Rule 22 CTMIR lays down the procedural rules to follow and deals with
evidence to be submitted and the applicable language regime.
According to Rule 22(1) CTMIR, where, pursuant to Article 43(2) or (3) CTMR,
the opponent has to furnish proof of use or show that there are proper
reasons for non-use, the Office shall invite him to provide the proof required
within such period as it shall specify. If the opponent does not provide such
proof before the time limit expires, the Office shall reject the opposition.
According to Rule 22(2) CTMIR, the indications and evidence required in
order to furnish proof of use shall consist of indications concerning the place,
time, extent and nature of use of the opposing trade mark for the goods and
services in respect of which it is registered and on which the opposition is
based, and evidence in support of these indications in accordance with
paragraph 3.
According to Rule 22(3) CTMIR, the evidence shall, in principle, be confined
to the submission of supporting documents and items such as packages,
labels, price lists, catalogues, invoices, photographs, newspaper
advertisements, and statements in writing as referred to in Article 76(1)(f)
CTMR.
According to Rule 22(4) CTMIR, where the evidence supplied pursuant to
paragraphs 1, 2 and 3 is not in the language of the opposition proceedings,
the Office may require the opponent to submit a translation of that evidence in
that language, within a period specified by the Office.
Page 391
Proof of use
2.2. Trade Marks Directive and national law implementing the
Directive
Article 10 of the Dir. contains provisions identical to Article 15 CTMR, with
“use in the Community” being replaced by “use in the Member State”.
Article 11 and 12 of the Dir. deal with procedure in national law. They are of
no relevance in the present context.
3.
Substance and procedure
It is appropriate to distinguish between substantive provisions and procedural
provisions. These Guidelines treat first the substantive rules; and then the
procedural rules (in part, Article 43; also Rule 22).
(Article 15 and in Article 43 (2) and (3) CTMR.)
Page 392
Proof of use
II.
Substantive law
1.
The principle of genuine use
Neither the CTMR nor the CTMIR defines what is to be regarded as “genuine”
use.
Genuine use means use in trade. In general, this implies actual sales and
there must have been some sales of the goods or providing of the services
during the relevant period of time. Furthermore, use in advertising may
amount to genuine use depending on the specific circumstances (see below
point II.3.4.) However, mere preparatory steps are not to be regarded as
genuine use of a mark.
As regards the necessary volume of sales and services for passing the
threshold of genuine use, it is impossible to establish general figures which
classify “use” as “genuine”. Each case has to be seen in the light of its own
merits. The answer to this question varies depending on other criteria, such
as the specific business area and the goods and services involved. The
necessary volume of sales and services is in general set at a higher level for
mass products than for special products that meet a rather small demand.
326/1999 Carrera y Carrera / CARRERAS (EN), 1480/1999 DESATURA /
RENATURA (EN)
The Court of Justice confirmed this view in its judgement “ANSUL” where the
Court held that consideration should be given to the nature of the goods or
services at issue, the characteristics of the market concerned and the scale
and frequency of use of the mark (Judgment of 11 March 2003 in case C40/01 Ansul BV vs. Ajax Brandbeveiliging BV, par. 39).
Thus, it has to be evaluated whether, in view of the market situation in the
particular industry or trade concerned, it can be deduced from the submitted
material that the owner has seriously tried to acquire a commercial position in
the relevant market.
The wording used by European Court of Justice (judgment “ANSUL”, par. 38)
reads as follows:
“Finally, when assessing whether there has been genuine use of the
trade mark, regard must be had to all the facts and circumstances
relevant to establishing whether the commercial exploitation of the
mark is real, in particular whether such use is viewed as warranted in
the economic sector concerned to maintain or create a share in the
market for the goods or services protected by the mark.”
Fictitious acts of use for the sole purpose of safeguarding the monopoly
granted by the registration are insufficient. The Boards of Appeal have
Page 393
Proof of use
repeatedly stated that genuine use must be contrasted with token use. It
implies real use for the purpose of trading in the goods or services in question
so as to generate goodwill as opposed to artificial use designed solely to
maintain the trade mark on the register.
R 362/1999-1 HERVALIA / HERBAPURA (EN), R 380/1999-2 LINDEBOOM /
LINDENER (EN), R 474/1999-1 CARRERAS / CARRERA Y CARRERA (EN),
R 733/1999-1 AFFINAGE / AFFINITE (EN), R 821/1999-3 RENOLIN /
RENTOLIN (EN)
The volume of sales and services and the period of time of use of the mark in
the market are in general particularly important in this context. It should be
noted that these two factors are interdependent: both a short-term use of a
high volume and a continuous use of a quite modest volume may suffice to
fulfil the requirement of genuine use.
On many occasions, the Boards of Appeal have underlined that use does not
have to be continuous during the five years. It is sufficient if the use started at
the very end of the period, provided that this use was genuine.
R 362/1999-1 HERVALIA / HERBAPURA (EN), R 733/1999-1 AFFINAGE /
AFFINITÉ (EN), R 821/1999-3 RENOLIN / RENTOLIN (EN), R 786/2000-1
PARABOOT / PARAWET (EN)
Another decisive factor in the evaluation might be the way in which the mark
appears on the goods themselves or other relevant material. The Board of
Appeal considered the genuineness of use put into doubt in cases where the
mark, due to additional, very dominant use of other marks, might be perceived
as a mere decorative element.
R 833/1999-1 NIKE F.I.T. / NIKE (fig) (ES), R 880/1999-1 NIKE TRIAX
SERIES / NIKE (fig) (ES), R 16/2000-1 NIKE / NIKE (fig) (ES), R 19/2000-1
NIKE TOWN / NIKE (fig) (ES), R 73/2000-1 NIKE (fig) / NIKE (fig) (ES), (the
cases are pending before the CFI)
In order to determine whether the requirement of “genuine use” (and the other
criteria of Articles 15 and 43) have been met, it is necessary to evaluate the
separate items separately, so as to come to a final conclusion.
2.
Nature of use – use as a mark
2.1. Use as a mark
Articles 15 and 43(2) CTMR require proof of genuine use in connection with
the goods or services in respect of which the trade mark is registered and
which the opponent cites as justification for his opposition. Hence, the
opponent has to show that the mark has been used as a trade mark on the
market.
Page 394
Proof of use
As a trade mark has, inter alia, the function to operate as a link between the
goods and services and the person responsible for their marketing, the proof
of use must establish a clear link between the use of the mark and the
relevant goods and services. It is not necessary for the mark to be affixed on
the products themselves. A representation of the mark on the packaging,
catalogues, advertising material or invoices relating to the goods and services
in question may be sufficient (see below point I.3.3.).
122/2001 ATLANTIC / ATLANTIC RICHFIELD (EN)
2.2. Use as a trade name
The use of a sign as a business or trade name cannot be regarded as trade
mark use, unless the relevant goods or services themselves are identified and
offered on the market under this sign. In general, this is not the case when the
business name is merely used as a shop sign (137/1999 FILELLA / fixella
(DE)), or on the back of a catalogue (298/1999 APOMED / APOMEDICA
(EN)) or of a label (586/1999 ARKO / AKA (EN)). The presentation of the
business name at the top of order forms or invoices might present use as the
registered trade mark depending on how the sign appears on them.
1063/2001 ANASTASIA / ANASTASIA (EN)
Similarly, the use of a trade name (that is also registered as a trade mark) on
the packaging of goods, on letterheads or in advertising in connection with
goods or services may constitute use as a trade mark.
2.3. Use as a title of a publication
A trade mark used as a title of a mail order catalogue does not constitute use
within the terms of Article 43(2) CTMR for the goods which are offered for sale
within that catalogue.
3086/2000 KALEIDOSCOPE / Le Kaleidophone (EN)
2.4. Use as a domain name
Use of a sign as a domain name or as part of a domain name primarily
identifies the owner of the site. Depending on the circumstances, such use
may also be use of a service mark or trade mark.
3.
Use in the course of trade
The mark in order to be protected must be used in the course of trade.
The meaning of “in the course of trade” for use purposes is not the same as
the meaning of that term for infringement purposes. For example, the mere
stocking of goods constitutes infringement if it is done with the view of offering
Page 395
Proof of use
for sale or bringing on the market. Such use is however not “public” use in the
sense required in the present context.
3.1. Meaning of course of trade
Trade marks in order to be enforceable must be used in the course of trade.
“Course of trade” means in the context of an ongoing business. Where the
mark is protected for non-for-profit enterprises for their goods or services, and
the mark has been used, the fact that there is no profit motive behind the use
is irrelevant.
3.2. Public use
The use must be public, i.e., it must be apparent to actual or potential
customers of the goods or services.
3.2.1. Private use
Use in the private sphere is not use in the course of trade.
3.2.2. Intra-enterprise use
Use of a mark purely internally within a company or a group of companies
does not suffice because the use is not apparent to actual or potential
customers.
3.2.3. Preparation of use
Preparation of use – such as the printing of labels, producing of containers,
etc. - is internal use and thus not use in the course of trade for present
purposes.
3.3. Use in relation to goods or services: labels, on price lists,
invoices, catalogues and other business papers
Trade marks have traditionally been used on goods (printed on the goods, on
labels, etc.) or their packaging. However, the use on goods or their packaging
is not essential. It is sufficient if there is a proper connection between the
marks and the goods.
As regards services, marks cannot be directly used “on” services. Therefore,
as regards service marks, their use will generally be on business papers, in
advertising, or in any other direct or indirect relation to the services.
Thus, trade marks and service marks are often used not only – or not at all –
on the goods themselves, but on items related to them, such as price lists,
invoices or similar business papers. Where the use on such items
demonstrates genuine use, such use will be sufficient. It is generally
Page 396
Proof of use
considered sufficient if the mark is used “in relation to” the goods or services,
such as on brochures, flyers, stickers, signs in the interior of places of sale,
etc.
While such use may generally be sufficient, this does not mean that such use
will always be found to satisfy the requirement of genuine use (see below
point III.7. as regards the evaluation of evidence).
When goods are sold only by catalogues (mail-order sales) – or through the
Internet – the mark may not always also be on the goods themselves as they
are shipped to the customer. Such use – provided it is otherwise genuine –
will generally be considered sufficient. In such a situation the owner of the
mark will not have to provide proof that the mark actually appeared on the
goods themselves.
Mere use of the mark on promotional material for other goods cannot be
considered as sufficient (indirect) evidence of use for the items used. For
example, giving away articles of clothing such as T-shirts and baseball caps at
promotional events with the purpose of marketing a certain product, such as a
drink, cannot be considered as genuine use of a mark for clothing.
374/2001 MALIBU (fig) / fig (EN)
3.4. Use in advertising
Trade marks fulfil their function as indicating commercial origin of goods or
services and symbols of the goodwill of their owner not only when they are
actually used on or in relation to goods or services, but also when they are
used in advertising. In fact, the advertising function of trade marks is one of
their most important functions.
Therefore, use in advertising will generally be considered as amounting to
genuine use if the volume of advertising is sufficient to constitute genuine
public use of the mark and if a relation can be established between the mark
and the respective goods or services for which the mark is registered.
The ECJ confirmed this approach in its judgement “ANSUL” where it held that
use of the mark must relate to goods or services already marketed or about to
be marketed and for which preparation by the undertaking to secure
customers are under way, particularly in the form of advertising campaigns
(Judgment of 11 March 2003 in case C-40/01 Ansul BV vs. Ajax
Brandbeveiliging BV, par. 37).
However, the outcome in a particular case will depend very much on the
individual circumstances.
Examples:
209/2001 CRITTELS / SEA CRITTELS (FR): the opponent submitted some
brochures, letters concerning the launching of the products –perfumery and
Page 397
Proof of use
cosmetics-, excerpts from the Internet web site and advertising. The
Opposition Division considered the evidence submitted as insufficient since it
did not give any indication of the extent of use of the trade mark.
1445/2001 BLUME-LEOPOLDO BLUME / BLUMEN WORLDWIDE (EN): the
opponent submitted evidence consisting of catalogues of books and
publications, a receipt of opening of a bank account, an order bill, press notes,
copies of advertisements. The Opposition Division considered it as insufficient
to prove genuine use, since none of the submitted material proves the extent
of use.
3.4.1. Advertising in parallel to the marketing of goods or services
Where advertising is carried out in parallel to the marketing of goods and
services and there is proof of both the marketing and the advertising, the
advertising will support the genuineness of the use.
3.4.2. Advertising in advance of the marketing of goods or services
Advertising in advance of the actual marketing of goods and services – if
genuine and with a view of establishing a market for the goods or services –
will generally be considered to constitute genuine use.
3.4.3. Advertising without any marketing of goods or services
Whether mere advertising without any current or future plans to actually
market goods or services will constitute genuine use appears doubtful. As in
most other situations, the outcome will depend on the circumstances of each
case. For example, where the goods or services are available abroad, such
as vacation places or particular products, advertising alone may be sufficient
to amount to genuine use.
3.5. Use on the Internet
The mere presence of the mark on a website shows nothing more than that
the website is accessible. This is in itself not sufficient to prove genuine use.
2621/2001 ADVANCE /ADVANCE (EN); 209/2001 CRITTELS / SEA
CRITTELS (FR)
This may be different in cases where concrete evidence is submitted that the
specific web-site has been visited and, in particular, orders for the relevant
goods and services have been effected by a certain number of customers in
the relevant period.
1513/1999 BEROL / TEROL (EN)
The evidence submitted must show that the on-line transactions were
connected with the goods or services designated by the mark. Whereas the
nature of the mark and, to a certain extent, the time and place are the less
Page 398
Proof of use
complex elements to prove, the extent of the use presents more difficulties. It
should be taken into account that transactions on the Internet tend to
eliminate most of the “traditional” evidence of sales such as invoices,
turnover, taxation documents etc. New “electronic” evidence tends to
substitute, or has already substituted, them as certified means of payment,
requests and their confirmations, registrations of safe transactions etc.
4.
Volume (extent, amount) of use
4.1. Criteria
The opponent has to prove the extent of use. This does not mean that the
opponent has to reveal the respective volume of sales or turnover figures. It is
sufficient to submit evidence, which proves that the minimum threshold for a
finding of “genuine” use has been passed.
This evidence may therefore be not only given in form of the volume of sales
and the annual turnover figures, but also by other means of evidence such as
orders, invoices, price lists, promotional material. The probative value of such
evidence depends on its specific form and content.
The exact decisive threshold proving genuine use cannot be defined out of
context. It depends on the circumstances of the case, the evaluation of the
submitted evidence in its entirety, the nature and characteristics of the goods
or services, the particular area of business etc.
R 689/2000 PUMBY / PUMMY (EN)
It cannot be concluded that use is not genuine just because only one invoice
has been submitted (824/2000 KOVO / Koyo (ES) - one invoice for
DEM 338 500) or because all or a majority of invoices are in the name of one
customer or because those invoices cover a quantity which appears small in
relation to the total declared turnover of products bearing the earlier mark (R
821/1999-3 RENTOLIN / RENOLIN (EN)).
4.2. Examples of insufficient use
310/1999 GOLDNETT / GOLD (EN): the opponent submitted evidence
consisting of tax documents showing the owner’s income (without any
indication that they concern the products bearing the mark in question), labels
and one debit note for fertilisers. The Opposition Division considered the
evidence insufficient to prove genuine use.
391/1999 HOREGON / OREGON (EN): the Opposition Division found an
invoice for 180 pairs of shoes as insufficient to prove genuine use.
457/1999 FLORIA / Floriall-in (EN): evidence consisting of an invoice showing
sales of 100 roses and promotional material with no reference as to place,
extent or time was considered insufficient to prove genuine use.
Page 399
Proof of use
491/1999 FESTIVAL BY GLÄSER / FESTIVAL (EN): the Opposition Division
found invoices showing sales for 50 pieces of clothing insufficient to prove
genuine use.
587/2000 SYNDIKATE / BOARDER’s SYNDICATE (EN): to prove genuine
use of his trade mark in France and Portugal in connection with clothing the
opponent filed several invoices, many of them referring to a period other than
the relevant one. The Opposition Division considered the evidence as
sufficient to prove use of the mark in Portugal, but not in France (invoices for
only 600 polo shirts).
208/2001 LYS MINNESOTA / LYNX (fig) (EN): as evidence of use the
opponent filed 2 invoices for a total amount of 122 items of clothing and 4
undated labels with no indication of what goods they were to be affixed to.
The Opposition Division considered them insufficient to prove genuine use.
R 474/1999-1 Carrera y Carrera / CARRERAS (EN): the Board of Appeal
confirmed the view of the Opposition Division considering one invoice for a
delivery of cigarettes for a total amount of ESP 7 500 insufficient to prove
genuine use.
R 378/2000-1 RENACIMIENTO (FIG) / RINASCIMENTO (EN): The Board of
Appeal confirmed the decision of the Opposition Division that the submission
of one bill of lading showing the delivery of 40 packages of sherry is
insufficient to prove genuine use.
R 578/2000 HIPOVITON / HIPPOVIT (DE): the Board of Appeal confirmed
this finding of the Opposition Division considering evidence of 450 packages
of animal food as insufficient to prove genuine use. The case is pending
before the CFI.
R 689/2000 PUMBY / PUMMY (EN): The Board of Appeal held that the
quantity of products (toy animals) sold within the relevant period (5 694 units
in 1993, 4 952 units in 1994 and 3 373 units in 1995 – i.e. an average of 12
units per day) is insufficient, given the nature of the products, the number of
retail outlets in the relevant territory and the overall size of the German
market.
4.3. Examples of sufficient use
129/2001 TREFF / TOP-TREFF (DE): the Opposition Division regarded
evidence of sales for around 2 000 furry toy animals in the high-priced market
sector as sufficient to prove genuine use.
1086/2001 PREMIERE(fig) / PREMIER (fig) (FR): to prove use of his trade
mark in France for magazines and periodicals, the opponent submitted: copy
of financial document concerning the sales of the magazine titled
“PREMIERE” in Europe and copies of the magazine issues for each year of
the relevant period. The Opposition Division found that the opponent had
Page 400
Proof of use
sufficiently proved the genuine use having regard to the magazine issues,
although the financial document had not been taken into account since it did
not bear any specific indication of the diffusion of the magazine in France.
1390/2001 FOCUS / FOCUS DYMAMICS (FR): the opponent submitted one
invoice referring to the sale of one high-precision laser cutting machine for
FRF 565 000, a catalogue describing its performance and some photographs
depicting the product. The Opposition Division considered them as sufficient
evidence taking into account the nature of the product, the specific market
and its considerably high price.
5.
Place of use
5.1. Use on the “domestic” market
Trade marks must be used in the territory where they are protected (European
Community for CTMs, the territory of the Member States in case of national
marks).
This does not mean that they must be used everywhere in the respective
territory. Rather, partial use, provided it is genuine, is sufficient.
In view of the globalisation of trade, the seat of the owner of the mark may not
be regarded as sufficient indication that the use has taken place in that
particular country. Even though Article 15(2)(b) CTMR stipulates that the
affixing of the trade mark to goods or to the packaging thereof in the
Community solely for export purposes is considered as use of the mark, the
mere indication of the opponent’s seat as such does not constitute evidence
of such acts.
600/2000 Topolino / POCOLINO (DE), 827/2000 Marco / MARCA (EN)
5.2. CTMs: Use in the European Community
If the earlier mark is a Community mark, it must be used “in the Community”
(Article 15(1) and Article 43(2) CTMR).
It is not necessary that the mark must be used everywhere in the Community.
Genuineness of use may be found also when the mark has been used in only
one part of the Community, such as in a single Member State or in a part
thereof.
Any other rule would discriminate between small and big enterprises, and thus
be contrary to the aim pursued by the CTM system which should be open to
businesses of all kinds and sizes.
The sufficiency of use in only a part of the Community is reflected in the Joint
Statements by the Council and the Commission entered in the minutes of the
Council meeting at which the CTMR was adopted (Joint Statements by the
Page 401
Proof of use
Council and the Commission of 20.10.1995, No B. 10, OJ OHIM 1996, 615).
According to these statements, “The Council and the Commission consider
that use which is genuine within the meaning of Article 15 in one country
constitutes genuine use in the Community”.
While these statements only have an interpretative value and are not legally
binding, they will nevertheless be applied by the Trade Mark Department of
the Office.
5.3. National marks: Use in the relevant Member State
If the earlier mark is a national mark with effect in one of the Member States
of the European Union, the mark must have been genuinely used in the
country where it is protected (Article 43(3) CTMR). Use in a part of the
Member State, provided it is genuine, will be considered as sufficient.
5.4. Use in import and export trade
The mark has to be used in the relevant geographical area where it is
registered. Evidence that only relates to the importation of the goods in the
relevant area may, depending on the circumstances of the case, suffice as
proof of use in this area.
802/1999 MILES / MORE MILES (EN)
According to Article 15(2)(b) CTMR, the affixing of the Community trade mark
to goods or to the packaging thereof in the Community solely for export
purposes also constitutes use within the meaning of Articles 15(1) CTMR.
6.
Use of the mark as registered – use of variations of the mark
as registered
6.1. Principle: Relevance of the Register
Pursuant to Articles 15 and 43 CTMR, the mark must be used as registered.
Therefore, the register (Community or national) is the starting point of the
analysis.
6.2. Use of the mark as registered
6.2.1. Use as registered – word marks
Word marks are marks consisting of letters, numbers and other signs
reproduced in the standard typeface used by the respective office. This
means that as regards these marks no particular figurative element or
appearance is claimed.
Page 402
Proof of use
Word marks are also such marks which, although they are registered as
figurative marks nevertheless are reproduced in a standard typeface, which is
however different from the one used by the respective office.
It is the common characteristic of all word marks that they are considered to
be used as registered, and not as a variation, if they appear on the market in
a typeface or size which is not that appearing in the register but considered as
commonly used in the respective market.
6.2.1.1. Use of word marks in different type face
Word marks are considered used as registered if the typeface is different. It
would not be correct to analyse this type of use under the aspect of whether
the distinctive character is altered.
This may be different however if the typeface is a particular one, such as
particular script typefaces, so that the overall appearance of the word mark is
changed to that of a figurative mark.
6.2.1.2. Use of word marks in different size letters (capitals
and small letters)
Changing the letter size or changing between small and capital letters is
customary when using word marks. Therefore, such use is considered use of
the registered mark.
However, where the mark is registered with an unusual spelling – such as
capital letters in the middle, unusual initial small letter, etc. – and the used
form does not have the same appearance (or vice versa), such use will be
analysed under the variation rule (Article 15(2)(a) CTMR).
6.2.1.3. Use of word marks in colour
Word marks are registered in black and white. It is customary to use marks in
colour. Such use does not constitute a variant but use of the registered mark.
The Board of Appeal did not find the distinctive character of the word mark
“BIOTEX” altered, in spite of various stylistic changes, such as shadows
giving the impression of being three-dimensional and a different colour tip of
the letter ‘I’. The Board considers these variations minimal and routine.
R 812/2000-1 BIOTEK / BIOTEX (EN) (reversing OD decision 1518/2000)
6.2.1.4. Use of word marks with generic or descriptive
additions
Where a registered word mark (or any other mark) is used together with a
generic indication of the product or descriptive term that is not integrated into
the mark, this will be considered as use of the registered mark. Additions
which are just indications of characteristics of the goods and services, such as
Page 403
Proof of use
their kind, quality, quantity, intended purpose, value, geographical origin or
the time of production of the goods or of rendering of the services, do in
general not constitute use of a variant.
These cases have in previous practice been analysed under the variation rule,
with the variation usually considered to be immaterial. According to this
principle, the following additional elements were not considered as altering the
distinctive character of a mark:
Addition/deletion
Case
“basics”
for shoes
802/1999 MILES / MORE MILES
(EN)
Figures (describing the amount of for pharmaceuticals
the active ingredient) in QUANTOR
150, QUANTOR 300, QUANTOR ® 892/1999 QUANTOR / KONTOR 7
(fig) (EN)
150, QUANTOR ® 300
“bière sans alcool”
for beer
“bière de haute qualité”
242/2000 SILVER / SILVER COLA
(EN)
“pur malt”
“King Size” or “KS”
for cigarettes
256/2000 GOLD MARK / GOLD
BLOCK (EN)
Omission of the term “PORTUGAL” 339/2000 BIODERMA Portugal /
in the mark
Biodermal (EN) (confirmed by the
Board of Appeal in R 282/2000-4)
“cosmétique”, “cosmétique juvénile”, for beauty products
“cosmétique éternelle”, “cosmétique
2451/2000 BIODERMA Portugal /
biologique
BIODERMA (EN)
“CABERNET”, “PINOT GRIGIO for wines
TRENTINO”,
“VALDADIGE
3477/2002
IL
SCHIAVA ROSATA”, etc.
PORTALE (EN)
PORTALE
/
The Board of Appeal came to the same result in R 608/2000-4 PALAZZO /
HELADERIA PALAZZO (EN) (addition of the word “ITALIANAS”), however by
indicating that the registered mark is only not to be regarded as used in case
Page 404
Proof of use
of a “substantial” alteration. On the other hand, in case R-386/1999-1 OMEGA
/ TERTA OMEGA ANTIOXYDANTS (EN), the Board of Appeal concluded that
use of the sign “OMEGA” cannot be deemed to be use of the registered mark
“OMEGA-FARMACEUTICA”, stating that it is not possible to remove one of
the two words from a combination of two joined nouns of the same visual
importance without, as a consequence, changing the appearance of the
whole.
6.2.2. Figurative marks
Using a figurative mark registered in black and white in colour constitutes use
of the registered mark, unless it changes the overall impression of the mark
(as to figurative marks with colour elements see below point II.6.4.4).
Similarly, adding word elements to a figurative mark will generally not result in
a variant of the figurative mark, if such word elements are descriptive or
generic indications or another (word) marks.
6.2.3. 3D marks
3D marks are of different types. Some 3D marks are objects used as marks
(such as figurines on the outside of cars). They are often used in varying
sizes, and such variations usually amount to use of the registered mark.
Some 3D marks consist exclusively of the shape of goods or their packaging,
such as bottles or other containers. In the course of trade it is customary that
such shapes are also marked with word marks or descriptive indications, or
that bottles or containers also carry labels.
The question whether such use constitutes use of the 3D mark for the
purposes of maintaining trade mark rights has not yet arisen before the OD
but if it arose the mark should generally be considered to have been used as
registered.
6.2.4. Colour marks
Colour marks must be distinguished from figurative marks composed of one
or more colours. Colour marks are marks consisting of one or more colours as
such. Where the mark is a colour combination, the registration may or may
not indicate a particular distribution or proportion of the various colours.
In the course of trade it is customary that colours or colour combinations are
used on the product packaging but in combination with a distinctive word mark
and descriptive indications.
The question whether such use constitutes use of the colour mark for the
purposes of maintaining trade mark rights has not yet arisen before the OD
but if it arose the mark should generally be considered to have been used as
registered, provided the colour or colours remain prominently visible.
Page 405
Proof of use
6.3. Use of more than one mark
In each case it has to be carefully evaluated whether the added or omitted
elements represent a change to the mark or depict another mark. It is quite
common in some market areas that the goods and services bear not only their
individual mark, but also the mark of the business or product group (house
mark). In these cases the registered mark is not used in a different form, but
the two independent marks are validly used at the same time.
802/1999 Miles / More Miles (EN) (the added element was the denomination
of the specific shoe model “Basics”), 1378/2000 TERRY / MERRY (EN).
The Board of Appeal regarded the presentation of the two words “MINUTO”
and “DUBOIS” as the use of two separate marks, since the evidence
submitted by the opponent showed that “DUBOIS” is an old brand of the
opponent with its own identity, and that this mark is present on the market
with a number of accompanying signs, as it is common practice in the
labelling of the specific products (wine).
R 206/2000-3 MINU’ / MINUTO (EN)
The addition of another word does not alter the distinctive character of a mark
when the added word will be perceived as another registered mark because
of the double use of the symbol “®”.
REGISTERED FORM
CURRENT USE
Decision No
CLASSIC
NESCAFÉ®
CLASSIC®
1317/2001 (EN)
This situation is to be distinguished from cases where the symbol “®” is only
depicted once after the various word elements. In such cases, this indication
could be perceived as referring to the combination as a whole.
1391/2001 BIO / Io Bio (EN)
There is no use of two-or-more marks, but use of one composite mark where
the different elements appear as a “unitary whole”. This is the case where
they are actually merged together. However, as always, each case has to be
assessed on its own merits. The customs in the specific market sector might
play a decisive role in the evaluation.
3477/2002 IL PORTALE / PORTALE (EN), 3484/2002 CARGOBULL /
CARGOMAX (EN)
In the cases 616/2001 BIO / bio garantie (fig) (FR) and 1391/2001 BIO / Io Bio
(EN), the Opposition Division held that each of the following signs
Page 406
Proof of use
(616/2001)
(1391/2001)
form up one composite mark whose added elements affect the distinctive
character of the registered mark (the word “BIO”). However, by reversing the
decision 616/2001 of the Opposition Division, the Board of Appeal held in
decision R 389/2001-4 that in that case the word “BIO” identifies the specific
good whereas the word “DANONE” identifies the producing enterprise. In view
of the merely descriptive character of the further element “con bifidus activo”,
the Board considered the use of the registered word mark “BIO” for the
respective goods as proved.
6.4.
Acceptable and unacceptable variations
6.4.1. Standards for determining the admissibility of a variant
According to Article 15(2)(a) CTMR, the use in a form differing in elements
which do not alter the distinctive character of the mark in the form in which it
was registered, shall also constitute use of the registered trade mark. This
means that differences between the form in which the mark is used on the
market and the registered form are acceptable as long as the distinctive
character of the mark is not altered.
It is important to note that in cases where Article 15(2)(a) CTMR applies, the
later comparison of signs (under Article 8(1)(b) or 8(5) CTMR) has to be made
between the CTM application and the earlier mark in its registered form.
An absolute obligation of use of the mark in the form in which it was registered
would ignore the reality of the market, in particular the constant evolution in
the marketing of products and the needs of trade mark owners to adapt the
use of their mark in the new contexts. On the other hand, the modifications in
the use must not alter the distinctive character of the mark.
There are two questions to be answered. Firstly, it must be clarified what is to
be regarded as the distinctive character of the mark as registered. Secondly, it
must be evaluated whether the mark as used alters this distinctive character.
There is interdependence between the strength of the distinctive character of
a mark and the effect of alterations. Marks of strong distinctive character may
be less influenced by changes than marks of limited distinctiveness. On the
other hand, additional or omitted elements in the mark are more likely to affect
the distinctive character of marks of limited distinctiveness.
1391/2001 BIO / Io Bio (EN)
Where a mark is composed of several elements only one or some of which
are distinctive and have rendered the mark as a whole registrable, an
Page 407
Proof of use
alteration of that element or its omission or exchange by another element will
generally mean that the distinctive character is altered.
In order to determine whether the use of a variation of the mark should be
accepted or whether the distinctive character is altered the practices in the
respective branch of business or trade must be taken into account.
While it may be tempting to inquire into the perceptions of the public when
determining whether the distinctive character is altered, this approach
neglects that the public is aware only of the mark as used, and not as
registered, so that there is no proper basis of comparison. Thus, the
perception of the public is not relevant in this context.
One line of inquiry may be to ask whether the mark as used, in comparison to
the mark opposed, confers the same or in any event no greater protection
than the mark as registered. Where only the mark as used is in conflict with
the opposed mark, but not the mark as registered, the use of the mark should
not be considered as having the same distinctive character.
As a rule of thumb, the OD has developed the following criteria for evaluating
whether Article 15(2)(a) CTMR applies:
6.4.2. Variations of letters and words
In general, a difference in letters or even words constitutes an alteration of the
distinctive character of the mark. The following changes have been
considered as altering the distinctive character of a mark:
REGISTERED FORM
CURRENT USE
(not accepted)
Decision No
THE WARRIORS
WARRIORBELL
165/1999 (EN)
CHIO
Cihochics
271/1999 (EN)
Cihorella
BONOLI
BONOLIVA
2996/2000 (FR)
The Board of Appeal considered that the use of the words “CAPTAIN BIRDS
EYE” did not constitute use of the earlier mark “CAPTAIN” (R 89/2000-1 EL
CAPITAN PESCANOVA / CAPTAIN (EN)).
The addition or omission of insignificant prepositions does not alter the
distinctive character either:
REGISTERED FORM
CURRENT USE
Decision No
Page 408
Proof of use
CASTILLO DE
PERELADA
CASTILLO PERELADA 1714/2001 (EN)
(omission of “DE”)
6.4.3. Variations of figurative marks and elements
When the overall appearance of a figurative mark is changed, this will
generally result in a finding that the distinctive character has been affected.
Examples:
Registration
Use
Case
237/1999
(EN)
(omission of the word
MAXOR)
206/2000 (EN)
SANSON
1976/2001 (EN)
VAQUER
932/2001 (EN)
Page 409
Proof of use
As regards additions, omissions or changes of figurative elements, there is a
tendency to consider that such alterations do not affect the distinctive
character of marks that also contain word elements.
REGISTERED FORM
CURRENT USE
Decision No
COMPUTERVISION
609/1999 (EN)
ILS
1207/1999 (EN)
BIODERMA
2451/2000 (EN)
1944/2000 (EN)
This is particularly unproblematic in cases where the device element is mainly
descriptive of the relevant goods and services.
REGISTERED FORM
CURRENT USE
Decision No
for horse race journals
1308/2000 (EN)
FILDOR
for threads and textiles
682/2001 (EN)
However, the change in a figurative element alters the distinctive character of
a mark if this figurative element is dominant in the overall impression of the
mark. As regards marks with both word and figurative elements, an obvious
difference in a dominant figurative element leads to an alteration of its
distinctive character, even if the word element remains unchanged.
REGISTERED FORM
CURRENT USE
Decision No
Page 410
Proof of use
295/1999 (EN)
TACK
982/1999 (EN)
1314/1999 (EN)
(confirmed by the BoA
in R 150/2000-1)
(the circle and stave
are coloured red)
CAMPELO – C.
MINHOTO CAMPELO
926/1999 (EN)
758/2000 (EN)
POMS
776/2000 (FR)
3099/2000 (EN)
484/2001 (FR)
Page 411
Proof of use
NIKE
R 833/1999-1 NIKE F.I.T.
/ NIKE (fig) (ES), R
880/1999-1 NIKE TRIAX
SERIES / NIKE (fig) (ES),
R 16/2000-1 NIKE / NIKE
(fig) (ES), R 19/2000-1
NIKE TOWN / NIKE (fig)
(ES), R 73/2000-1 NIKE
(fig) / NIKE (fig) (ES), (the
cases are pending before
the CFI)
The use of a merely figurative mark in an inverse sense does not alter its
distinctive character.
REGISTERED FORM
CURRENT USE
Decision No
1835/2000 (EN)
6.4.4. Variations of colours
For colour marks to be considered as used they must be used with the
colours as registered. Insignificant variations in the colour shade and strength
will not alter the distinctive character. When colour marks are used only in
black and white, this will not constitute use of the mark.
Where a colour combination is registered, use in varying proportions does not
affect the distinctive character. This will be different when particular
proportions where claimed and these are substantially altered in the variant as
used.
As regards figurative marks with colour elements the use of (different) colours
is not to be regarded as an alteration of the distinctive character of the mark,
unless the presentation of the colour is a dominant element in the overall
impression of the mark.
242/2000 SILVER / SILVER COLA (EN), 1044/2000 CAFES EL CRIOLLO /
Criollo Rico (EN)
7.
Use for the goods or services for which the mark is registered
According to Article 15 CTMR, the mark must be used for the goods or
services for which it is registered in order to be enforceable. According to the
first sentence of Article 43(2) CTMR, the earlier registered mark must have
been put to genuine use in connection with the goods or services in respect of
Page 412
Proof of use
which it is registered and which the opponent cites as justification for his
opposition. The second sentence of Article 43(2) CTMR stipulates that if the
earlier trade mark has been used in relation to part only of the goods or
services for which it is registered it shall, for the purposes of the examination
of the opposition, be deemed to be registered in respect only of that part of
the goods or services.
7.1. Comparison of use with specification
It must be carefully assessed whether the goods and services, for which the
mark has been used, really fall within the category as listed for the mark.
For example, the use of the mark for “ready-to-eat pizzas and pasta meals” is
not covered by the term “preparations made of cereals” and consequently,
even though these goods can be considered as similar, no proof of use has
been submitted for “preparations made of cereals” (1196/2001 PIZZA DEL
ARTE / VELARTE (EN)).
In another case it was decided that the use relating to “napkins and napkin
pants for incontinence” does not constitute use for the registered goods
“pharmaceuticals, veterinary and disinfectant products”, even though the
specific goods might be distributed by pharmacies (1088/2000 EN DEMARA /
DEMAR ANTIBIOTICOS, S.A. (EN), confirmed by BoA in R 807/2000-3).
The evidence of use for “entertainment services” was neither regarded as
proof that the earlier mark has been genuinely use for “education services”
(3412/2002 CAI / Kay (EN)).
7.2. Relevance of the classification
It is of relevance into which particular class the goods or services for which a
mark has been used fall.
Where a mark has been used for goods falling clearly into a particular class
such as orthopaedic shoes (class 10), but the mark is registered for shoes
generally (in class 25), the fact that the common generic term is “shoes” does
not mean that the mark has been used for the registered goods (in class 25).
7.3. Use and registration for “class headings”
Where a mark is registered for all the general indications of the class
headings of a particular class and has been used for goods or services that
are properly classified in the same class, the mark will be considered used for
the specific goods or services.
On the other hand, when a mark is registered for some of the general
indications of the class headings of a particular class but has been used for
goods or services which fall under another one of the class headings of that
same class, the mark will not be considered used for the registered goods or
services.
Page 413
Proof of use
7.4. Generic/general terms in classification
In general, it is not appropriate to treat the proof of use for particular goods or
services as covering further goods and services which are listed in the
registration of the earlier mark. It should be noted that, in particular, the
reference to the concept of similarity of goods and services is no valid
consideration in this context. The second sentence of Article 43(2) CTMR
does not provide any exception in this regard.
1153/1999 VITABIT / Vitallift (DE), 3078/2000 CARIBBEAN CLUB /
CARIBBEAN TWIST (EN)
Some generalisation is however be appropriate where the earlier mark has
been registered for a broad category of goods or services, but the opponent
provides proof of use only for particular goods or services falling within this
category. This raises the question of whether the submitted proof of use is to
be regarded strictly as proof of use only for the particular goods or services,
which are as such not mentioned in the list of goods or services, or for the
broad category as listed.
The approach to this question is flexible depending both on the scope of the
broad category and on the common features of the particular goods or
services for which evidence of use has been submitted. Where the use covers
various goods or services falling under the general category, the proof of use
might be considered sufficient as regards the general category. The definition
of a distinct sub-category may be possible when the particular goods and
services share enough common features in this respect.
81/1998 EQUINOX / EQUINOX (FR), 769/1999 Ersta / PRESTA (EN)
However, such generalisations should be applied very cautiously, bearing in
mind that, as clearly stipulated in the second sentence of Article 43(2) CTMR,
the protection of the earlier mark is only justified insofar as the mark has really
been used. This means that in principle the use is to be considered as proved
only in respect of the particular goods and services. These form then the
basis for the later comparison of goods and services, regardless of the fact
that they are not mentioned as such in the list of goods and services of the
earlier mark.
1475/2000 Risi / ISI (fig) (EN), 2899/2001 TYBOX / TBOX (FR)
8.
Use by the proprietor or on his behalf
8.1. Use by proprietor
According to Articles 43(2) and 15(1) CTMR, it is in general the owner who
has to put the earlier registered mark to genuine use. These provisions cover
also the use of the mark by the previous owner during his ownership.
Page 414
Proof of use
1426/1999 QUINTA DE VENTOZELO / VINHO DO PORTO (EN)
8.2. Use by authorised third parties
According to Article 15(3) CTMR, the use of the mark with the consent of the
proprietor shall be deemed to constitute use by the proprietor. This means
that the owner must have given his consent prior to the use of the mark by the
third party. A later acceptance is insufficient.
A typical case of use by third parties is use made by licensees. Use by
companies economically related to the trade mark proprietor, such as
members of the same group of companies (affiliates, subsidiaries, etc.) is
similarly to be considered as authorised use. Where the goods are produced
by the trade mark proprietor (or with his consent), but subsequently placed on
the market by distributors at the wholesale or retail level, this is to be
considered as use of the mark.
At the evidence stage it is prima facie sufficient that the opponent only
submits evidence that a third party has used the mark. The Office infers from
such use, combined with the opponent’s ability to present proof of it, that the
use has been made with the opponent’s prior consent.
3078/2000 CARIBBEAN CLUB / CARIBBEAN TWIST (EN), 1063/2001
ANASTASIA / ANASTASIA (EN), 2308/2001 TRIVASTA / TRAVATAN (EN),
3798/2002 BISON / Bistoon (DE)
The Boards have confirmed this approach stating that it would be highly
unlikely that the opponent would rely on use by an infringer to prove that his
mark was being used in the relevant territory in the period in question.
R 733/1999-1 AFFINAGE / AFFINITE (EN), R 756/1999-2 DOC & TORS /
DOCTORS (EN)
However, if there are doubts on the part of the Office or, in general, in cases
where the applicant explicitly contests the opponent’s consent, the burden is
on the opponent to submit further evidence that he gave his consent prior to
the use of the mark. In such cases the Office gives the opponent a further
period of two months for the submission of such evidence.
391/1999 HOREGON/OREGON (EN)
8.3. Use of collective marks
Collective marks are generally used not by the proprietor but by the members
of the collective.
According to Article 68 CTMR, use by (at least) one authorised person
satisfies the user requirement, provided it is otherwise genuine.
Page 415
Proof of use
The specific characteristic of collective trade marks is that their main objective
is not to indicate the origin of the goods or services but to indicate that the
goods or services bearing this mark comply with certain characteristics or
qualities. This different function has to be taken into account when evaluating
the necessary proof of use in accordance with Article 64(3) CTMR.
In a specific case, it was therefore considered that a list showing the persons
authorised to use the mark, i.e. manufacturers, producers, suppliers of
services etc was sufficient per se for proving the extent of use. Further
requirements as to the effective use of the collective trade mark by the
authorised persons, i.e. documents showing the collective mark on the
products or invoices proving effective sale of products bearing the collective
mark, were not regarded necessary.
1392/2001 NF(fig) / MF(fig) (FR)
9.
Time of use
9.1. Use within five years preceeding the date of publication
The opponent must prove that he has used the mark during the period of five
years preceding the date of publication of the Community trade mark
application.
The five-year period is calculated retroactively from the date when the
contested application was published. For example, if an application was
published on 15th of June 2001, the opponent would have to prove genuine
use of his mark within the period beginning on 15th of June 1996 and ending
on 14th of June 2001.
The use need not have been made throughout the period of five years, but
rather within the five years. The provisions on the requirement of use do not
mandate a continuous use.
9.2. Grace period of five years
The period of five years, generally called “grace period”, is applicable both
subsequent to the initial registration and subsequent to any interruption of
genuine use.
9.2.1. Initial grace period
According to Article 43(2) CTMR, the obligation to provide proof of use
requires that the earlier registered mark, at the date of publication of the CTM
application, has been registered for not less than five years.
This means that the owners of registered marks enjoy a “grace period” of five
years following the registration of the mark. The opponent is therefore under
no obligation to prove use of his registered mark when the relevant “grace
Page 416
Proof of use
period” has not terminated at the time of publication of the CTM application.
There is no obligation of proof of use at a later stage in cases where the grace
period ends after the publication of the CTM application, but before the end of
the opposition proceedings.
9.2.1.1. Beginning of initial grace period for CTMs – date of
registration
The decisive date for the beginning of the grace period of five years is,
according to Article 15 and Article 43(2) CTMR, the “registration” of the earlier
CTM.
9.2.1.2. Beginning of the initial grace period for national
marks
As regards national marks, it is necessary to determine the date that is
equivalent to the registration date for CTMs. In interpreting this term, it should
be taken into account that there are national trade mark systems which have
an opposition procedure after registration. Furthermore, there are national
offices where registration rights are backdated to the date of filing.
In view of these differing national proceedings, the term “registration” is to be
interpreted as the “date of completion of the registration proceedings”. This is
because the owner of the respective mark cannot be expected to use his
mark in spite of examination or opposition proceedings pending against it.
This understanding is in harmony with the approach towards earlier CTMs,
since the registration date of a CTM, which is mentioned in Article 43(2)
CTMR as the decisive date for the beginning of the grace period, is always
the date of completion of the registration procedure as well. Furthermore, this
interpretation brings the use requirement of the CTMR into line with the
relevant national laws that in general contain express provisions in this
respect.
R 776/2000 NATUROME / NATUROMA (EN)
Where the national registration date dates back to the filing date, even though
the registration proceedings were terminated only later, it is the later date
which is decisive.
Chapter 12 of the Brochure “National law relating to the CTM” outlines for
each Member State which is the relevant date.
9.2.1.3. Beginning of grace period for international (Madrid)
marks
The same approach applies as regards internationally registered marks.
Under Article 5(2) of the Madrid Agreement, the national offices have a period
of twelve months after the entry of the mark in the International Registry to
issue a (provisional) refusal of protection. Under Article 5 (2)(a) and (b) of the
Madrid Protocol, that period is 12 months or 18 months from the date when
the notification of extension has been sent by the International Bureau. Under
Page 417
Proof of use
Article 5 (2)(c) of the Madrid Protocol that date may even be later under
particular circumstances.
Where (provisional) refusals have been issued under these provisions, the
registration proceedings will be considered as terminated only once the
respective proceedings have been finally concluded pursuant to the
respective national applicable in this context.
The Office will on its own motion apply the one year for Madrid marks or the
one year respectively 18 months for Madrid Protocol marks, depending on the
country to which the mark has been extended. It is for the parties to claim any
date that is later than the respective one-year or 18-months periods provided
for in the Madrid Agreement or the Madrid Protocol.
9.2.2. Grace period after interruption of use
A new “grace period” begins when genuine use has been interrupted.
Genuine must be resumed with the subsequent five years. The reasons for
the interruption of the use are irrelevant.
9.2.3. End of grace period
The “grace period” ends, when it is the initial grace period, five years after the
registration (or equivalent) date, or five years after the interruption of use.
Resuming use outside the initial (or subsequent) grace period will however be
considered sufficient.
For example, where an earlier mark has been registered for seven years at
the time of publication of the opposed CTM, and use has been initiated for the
first time in the 12 months before the publication date this is sufficient even
though the earlier mark as not been used for more than five years after
registration.
9.3. Remaining “goodwill”
Where a mark has not been genuinely used for more than five years before
the publication date, the fact that there may be remaining goodwill or
knowledge of the mark in the mind of the trade or customers does not “save”
the mark.
10. “Legal” use
Whether a mark has been used in a manner satisfying the user requirement of
Articles 15 and 43 CTMR requires a factual finding of genuine use. The use
will be “genuine” in this context even though the user may violate legal
provisions.
10.1. Deceptive use
Page 418
Proof of use
Where the use is deceptive use within the meaning of Article 7 (1)(g) or Article
50 (1)(c) CTMR or under provisions of national law does not affect the finding
of “genuine” use for purposes of asserting earlier marks in an opposition
proceedings.
The sanctions for deceptive use are invalidation or revocation, as the case
may be, or a prohibition of use (provided for pursuant to Article 106 (2)
CTMR).
10.2. Other forms of illegal use
The same principle applies where the use is made under an illegal licensing
arrangement (for example arrangements violating the competition rules of the
Treaty or national rules).
Similarly, the fact that the use may infringe rights of third parties is also
irrelevant.
11. Justification of non-use
According to Article 43(2) CTMR, the opponent may alternatively prove that
there are justifiable reasons for non-use of his earlier registered mark. These
reasons cover, as mentioned in the second sentence of Article 19(1) of the
TRIPS agreement, circumstances arising independently of the will of the
owner of the trade mark which constitute an obstacle to the use of the trade
mark.
11.1. Business risks
Financial difficulties encountered by a company as a result of an economic
recession or due to its own financial problems, such as insolvency
proceedings, bankruptcy or temporary stoppage of activities etc, are not
considered to constitute proper reasons for non-use within the meaning of
Article 43(2) CTMR. These kinds of difficulties constitute a natural part of
running a business.
120/2001 Ecros(fig) / ERCROS (EN)
11.2. Government intervention
Import restrictions or other government requirements are two examples of
proper reasons for non-use that are explicitly mentioned in the second
sentence of Article 19(1) of the TRIPS agreement. Import restrictions include
a trade embargo affecting the goods protected by the mark. Other
government requirements can be a State monopoly, which impedes any kind
of use, or a State prohibition of the sale of goods for reasons of health or
national defence. Typical cases in this respect are regulatory procedures,
which the owner has to pass before offering the relevant goods and services
on the market.
Page 419
Proof of use
1507/2001 DIADUR / VIADUR (EN) (for pharmaceuticals)
11.3. Force majeure
Further justifiable reasons for non-use are cases of force majeure which
hinder the normal functioning of the owner’s enterprise.
11.4. Consequences of justification of non-use
The existence of justified reasons does not have the result that non-use
during such period is treated as equivalent to actual use which would have the
consequence that a new grace period begins after the end of the justified
reasons.
Rather, non-use during such period merely stops the five-year period from
running. This means that the period of justified non-use is not taken into
account in calculating the grace period of five years.
In addition, the length of time during which justified reasons existed may be
significant. If such reasons for non-use only existed during a part of the fiveyear-period before publication of the CTM application, this may not always be
considered as justifiable for setting the proof of use requirement aside. In this
context, the period of time during which these reasons were pertinent and the
elapse of time since they no longer applied are of particular importance.
421/1999 I-c-zym / CEREZYME (EN)
Page 420
Proof of use
III.
Procedure
Whereas the Guidelines under II. dealt with the substantive aspects of the
user requirement, this section contains Guidelines for the procedure to be
followed.
1.
Request by the applicant
According to Article 43 (2) CTMR, the user requirement provisions only apply
in cases where the applicant requests proof of use. The institution of proof of
use is therefore designed as a defence plea of the applicant.
The Office may neither inform the applicant that he may request proof of use
nor invite him to do so. In view of its impartial status in opposition
proceedings, the Office is not allowed to suggest to one of the parties that a
specific procedural tool is at his disposal or otherwise instruct or advise the
parties. It is a general principle in adversarial proceedings before the Office
that it is left to the parties to argue and defend their respective positions as
they see fit (see second sentence of Article 74(1) CTMR).
Article 43(2) CTMR is not applicable when one of the parties submits some
kind of evidence of use of the claimed earlier mark on its own initiative. In
such cases it is irrelevant that the evidence produced might only demonstrate
a particular type or manner of use, or a use which is limited to some of the
goods or services for which the earlier mark is registered. This means that in
such cases the goods and services of the earlier mark have to be compared
as listed in the register.
1.1. Time of request
There is no specific provision stipulating a time limit for filing a request for
proof of use. The Office considers Article 74(2) CTMR as pertinent. It should
be noted that requests for proof of use are not regarded as “observations” for
which the Office sets a deadline when notifying the applicant about the notice
of opposition. Therefore, requests for proof of use filed after this deadline may
be valid.
According to Article 74(2) CTMR, the Office may disregard facts or evidence
which are not submitted in due time by the parties concerned. This principle is
also applied to the defence of non-use. It is recommended that the applicant
submit this request as early as possible in the proceedings. However, the
Office interprets Article 74(2) CTMR as only applicable in cases where the
request is submitted after the parties have already been informed in writing
that no further observations may be submitted, i.e. that the opposition is ready
for decision.
Page 421
Proof of use
1.2. Nature of request – explicit, unambiguous, unconditional
The request of the applicant is a declaration of formal character and has
important procedural consequences.
Therefore, the request has to be explicit and unambiguous. In general, the
request of use has to be expressed in a positive wording (“I request …”; “I
invite the Office to set a time limit for the opponent to prove use …”, etc). Less
than positive wordings may only be given the same effect where the
applicant’s intention to ask for proof of use is obvious. However, the intent of
making such a request will generally not be inferred from mere observations
or remarks by the applicant in respect of the use of the opponent’s mark (such
as “the opponent has used his marks only for …”, “there is no evidence that
the opponent has ever used his mark …”, etc).
1078/2001 XEPIN / XENID (FR)
Furthermore, the request has to be unconditional. Phrases such as “if the
opponent does not limit his goods/services in classes ‘X’ or ‘Y,’ we demand
proof of use”, “if the Office does not reject the opposition because of lack of
likelihood of confusion we request proof of use” or “if somehow considered by
the Office, the opponent is invited to file proof of use of his trade mark”
present conditional or auxiliary claims and are not treated as a request for
proof of use.
412/2001 PANEL Y PERFIL / HOMEPANEL (EN)
If the above-mentioned requirements are not met, the Office nevertheless
forwards the applicant’s statements to the opponent and advises both parties
of the invalidity of the request. If the request is only invalid as regards part of
the earlier rights on which the opposition is based, the Office expressly limits
the invitation to the opponent to submit proof of use to those rights that are
subject to the proof of use obligation.
2.
Express invitation by the Office
If the applicant’s request for proof of use is in accordance with Article 43(2)
CTMR and Rule 22(1) CTMIR, the Office gives the opponent two months to
submit proof of use or show that there are proper reasons for non-use.
When forwarding the applicant’s request, the Office must invite expressly the
opponent to file such proof.
If the request for proof of use already arrives during the cooling off period or
during the two months period given to the opponent for submitting for the first
time or adding facts, evidence and arguments, this does not mean that the
cooling-off period is terminated. Rather the request must be forwarded to the
opponent without delay. In cases where the request for proof of use arrives
during the cooling off period and is communicated to the opponent during that
Page 422
Proof of use
period, the deadline for submitting proof of use must coincide with the
deadline for providing for the first time or adding facts, evidence and
arguments. The time limit must be extended automatically if the cooling off
period is extended.
If the request reaches the Office before the end of the period for submitting for
the first time or adding facts, evidence and arguments and is dealt within this
period, the deadline for submitting such facts, evidence and arguments must
be extended to coincide with the deadline of two months for submitting proof
of use.
3.
Reaction of the opponent – providing proof of use
3.1. Time limit for providing proof of use
The Office gives the opponent two months in which he may submit proof of
use. The opponent may request an extension of the deadline in accordance
with Rule 71 CTMIR (see in detail below).
The deadline specified by the Office precludes the acceptance of evidence
submitted after the deadline. Any material received by the Office after expiry
of the deadline will not be taken into account, regardless of whether the
applicant objects or not.
628/2001 FREE STYLE / FREESTYLE (EN), 2295/2001 Barnet / BARNETT&
BARNET (EN)
The Boards of Appeal has repeatedly held that, in principle, time limits should
not be disregarded, and that the Office is therefore correct not to take into
consideration evidence filed outside the allocated time limit
R 378/2000-1 RINASCIMENTO / RENACIMIENTO (EN), R 786/2000-1 PARABOOT /
PARAWET (EN), R 821/1999-3 RENOLIN / RENTOLIN (EN), R 0800/1999-1
ALPHA / ALFA (EN), R 853/2000-1 PRINCESS DIANA / PRINCE (EN)
The Court of First Instance confirmed this view in its judgement “ILS / ELS”
(T-388/00 of 23/10/2002).
The opponent may request an extension of the deadline in accordance with
Rule 71 CTMIR. Such a request has to be signed and must be received by
the Office before the expiry of the deadline. Moreover, a justification must be
given for the extension of the deadline. Mere standard phrases do not suffice
in this regard (For example: “the opponent is not available”, “we have not
received instructions from our client yet”, “further time is needed to collect the
evidence required”, etc). The opponent has to explain specifically the special
circumstances of the case which result in his inability to submit the evidence
within the given period of time.
Page 423
Proof of use
According to Rule 71(2) CTMIR, the Office may, if it wishes, make the
extension of the deadline subject to the agreement of the applicant. In current
practice, the time extension is granted in such cases unilaterally without first
seeking the agreement of the applicant.
3.2. Means of evidence
3.2.1. Principle
According to Rule 22(3) CTMIR, the evidence shall, in principle, be confined
to the submission of supporting documents and items such as packages,
labels, price lists, catalogues, invoices, photographs, newspaper
advertisements, and statements in writing as referred to in Article 76(1)(f)
CTMR.
Rule 22(3) CTMIR is written in terms of recommendation or suggestion rather
than being exhaustive or mandatory. It is clear from the words “in principle”
(meaning “normally” or “usually”) in the context in which they appear in Rule
22(3) CTMIR that other forms of evidence are also acceptable. For example,
market surveys and quotations of the mark in lists and publications of
associations of the relevant profession may serve as suitable means of
evidence.
89/1999 Bilatin / VIRACTIN (DE), 892/1999 QUANTOR / KONTOR 7 (EN)
The requirement of proof of use always raises the question about the
probative value of the submitted material. The pieces of evidence submitted
must have at least a degree of reliability. The Office considers materials
produced by third parties in general as of a higher probative value than
materials produced by the owner or his representative. The reference of the
opponent to internal print-outs or hypothetical surveys or orders are
particularly problematic.
33/1999 BABY BJÖRN / BABY born (EN)
3.2.2. References
The opponent may avail himself of findings of national offices and courts in
parallel proceedings. Although the Office is not bound by findings of the
national offices and courts, such decisions must be taken into account and
may influence the decision of the Office. It is important for the Office to have
the possibility of considering the kind of evidence that led to the relevant
decision at the national level. The Office takes into account different
procedural and substantive requirements that may exist before the respective
national body.
694/2000 Buss / BOSS (DE), 389/1999 DUKE / DUKE (EN) (the decision was
confirmed by the Third Board of Appeal, R 550/1999-3), 1016/2000 DUKE /
DUKE UNIVERSITY, (EN).
Page 424
Proof of use
The opponent may wish to refer to material filed as proof of use in previous
opposition proceedings before the Office. This was confirmed by the Court of
First Instance in its judgment “ILS / ELS” (T-388/00 of 23/10/2002). The Office
accepts such references as valid under the condition that the opponent clearly
identifies the materials he refers to and the proceedings in which they were
filed. If the reference does not sufficiently identify the relevant material, the
Office requires the opponent to clearly specify the material referred to or to file
the material again.
The onus of providing proof of use is on the opponent and not on the Office or
the applicant. Therefore, a mere indication of the web site where the Office
can find further information is insufficient.
2621/2001 ADVANCE /ADVANCE (EN)
3.2.3. Declarations
Whereas the means of evidence listed, such as as packages, labels, price
lists, catalogues, invoices, photographs, newspaper advertisements, do not
present any particular problems, it is necessary to treat in some detail
declarations as referred to in Article 76 (1)(f) CTMR.
3.2.3.1. Distinction between admissibility and relevance
(probative value)
The importance of declarations has been much debated. In this regard, there
must be a clear differentiation between the admissibility and the probative
value of such evidence.
As far as the admissibility is concerned, Rule 22(3) CTMIR expressly
mentions written statements referred to in Article 76(1)(f) CTMR as admissible
means of proof of use. Article 76(1)(f) CTMR cites means of giving evidence,
amongst which are sworn or affirmed written statements or other statements
that have a similar effect according to the law of the State in which they have
been drawn up. Therefore, it has to be evaluated whether the statement
submitted constitutes a statement within the sense of Article 76(1)(f) CTMR.
In cases of doubt, it is up to the opponent to submit evidence in this regard.
The wording “other statements” refers to statements that are not sworn or
affirmed but that are given a similar effect by the applicable national law. It is
therefore apparent that the CTM law does not aim at proposing its own
definition of such statements. Rather, it remits to the law of the Member
States for appraisal of written statements when sworn, affirmed or alike.
Article 76(1)(f) CTMR does not specify by whom these statements should be
signed so that there is no reason for considering that statements signed by
the parties to the proceedings themselves are not covered by this provision.
As far as the probative value of this kind of evidence is concerned, the Office
makes a distinction between statements drawn up by the interested parties
Page 425
Proof of use
themselves or their employees and statements drawn up by an independent
source.
3.2.3.2. Declarations by the proprietor or his employees
Statements drawn up by the interested parties themselves or their employees
are generally given less weight than independent evidence. This is because
the perception of the party involved in the dispute may be more or less
affected by its personal interests in the matter.
207/1999 Original SETTLER / TENTERFIELD EST. 1870 SADDLER (EN),
451/1999 VIVIL MASH / MASH (EN), 491/1999 FESTIVAL by GLÄSER /
FESTIVAL (EN), 586/1999 ARKO / AKA (EN), 739/1999 IMBAK / IMPACT
(EN), 1347/1999 DONTOMED / DENTOMED (DE), 1582/1999 MOBEC /
NOVEX PHARMA (EN), 63/2000 PICCOLINO / POCOLINO (EN), 198/2000
PAYLESS / PAYLESS CAR RENTAL (EN), 827/2000 Marco / MARCA (EN)
This does however not mean that such statements do not have any probative
value at all. Any generalisation should be avoided, since the exact value of
such statements always depends on its concrete content. The form and
content of the statement has to be taken into account. Statements including
detailed and concrete information have a higher probative value than very
general and abstractly drafted statements.
The final outcome depends on the overall assessment of the evidence in each
individual case. In general, further material is necessary for establishing
evidence of use, since such statements have to be considered as having less
probative value in comparison to physical evidence (labels, packaging, …) or
to evidence originating from independent sources. It should be evaluated
whether the content of the affidavit is sufficiently supported by the further
material. The fact that the respective national office may have a certain
practice in assessing such kind of evidence of use does not mean that it is
applicable in the proceedings concerning Community trade marks.
1920/2001 AGRITEC / ACRITEX (EN); see also 451/1999 VIVIL MASH /
MASH (EN), 586/1999 ARKO / AKA (EN), 694/2000 Buss / BOSS (DE),
739/1999 IMBAK / IMPACT (EN), 1582/1999 MOBEC / NOVEX PHARMA
(EN), 63/2000 PICCOLINO / PICOLINO (EN), 728/2001 OCTENIDERM /
OCTIDERM (DE), 1164/2001 BECKER / BECKER (EN), R 742/1999-1
CREACIONES TERESA / THERESA (EN)
3.2.2.3. Declarations by third parties
Statements drawn up by an independent source, for example by experts,
professional organisations, Chambers of Commerce, suppliers, customers or
business partners of the opponent, are given more probative weight.
868/2000 NEWTON FRUITS / NEWTONS (EN)
Page 426
Proof of use
It should be noted that this practice is in line with the case law of the Court of
Justice in the “Chiemsee” judgment (C-108/1997 and 109/1997, OJ OHIM
1999, 1054), where the ECJ gave some indications as to the appropriate
evidence proving the acquired distinctiveness of a mark. Statements drawn up
by the parties themselves are not included among the suggested evidence.
On the contrary, all the other suggested evidence, such as opinion polls,
statements from Chambers of Commerce, or from professional organisations
or from experts, originates from third parties.
3.3. Subject-matter of proof of use
According to Rule 22(2) CTMIR, the indication and evidence required in order
to provide proof of use shall consist of indications concerning the place, time,
extent and nature of use of the opponent’s trade mark for the relevant goods
and services.
These requirements for proof of use are cumulative. This means that the
opponent is obliged not only to indicate, but also to prove each of these
requirements. However, the sufficiency of the indication and proof as to the
place, time, extent and nature of use has to be considered in view of the
entirety of the evidence submitted.
It is necessary to take into account the specific kind of the goods and services
involved when assessing the probative value of the evidence submitted. For
example, it may be common in respect of the particular market sector that the
samples of these goods and services themselves do not bear indications in
respect of some of the four aspects mentioned in Rule 22(2) CTMIR. In these
cases it is obviously not appropriate to disregard such evidence of use if
indications in this respect can be found in the further material submitted.
222/1999 ROSETA / Rosetta (FR)
3.3.1. Place of use
Proof as to the place of use is necessary in order to determine whether the
mark was actually used in the territory where it is protected.
3.3.2. Time of use
Proof as to the time of use is necessary in order to determine whether the
mark was actually used within the five years preceding the date of publication.
Each of the submitted materials has to be carefully evaluated as to whether it
really reflects the use of the relevant goods and services during the five years
period. In particular, the dates shown on orders, invoices and catalogues
should be carefully examined. Evidence showing use before or after this
period is irrelevant.
1307/2000 RFO / refo (EN)
Page 427
Proof of use
Material submitted without any indication of the date of its use can in general
not be taken into account.
R 791/2000-1 CARLISLE SYNTEC SYSTEMS / CARLISLE (EN)
However, if it is common in respect of the particular market sector that the
samples of these goods themselves do not bear indications in respect of time,
undated evidence may be relevant in the overall assessment of the evidence
submitted. This is in particular the case if the opponent indicates the relevant
date.
R 608/2000-4 PALAZZO / HELADERIA PALAZZO (EN).
3.3.3. Nature of use
Proof as to the nature of the use is necessary in order to prove that the mark
has been used as a trade mark for the goods or services for which it is
registered.
It is further necessary that the opponent submit evidence depicting the
representation of the mark as it has been used in the market. Appropriate
evidence to prove the nature of use of the mark is, apart from the products
themselves, labels, packaging, price lists, catalogues or advertisements
showing the mark and the designated goods. A mere reference to the mark in
invoices or declarations, without showing the exact representation of the mark
as used in the market, is insufficient in this respect.
204/1999 intermedia / mi intermedia (DE), 926/1999 Campelo / GRAN
CAMPELO (EN), 124/2000 NETOL / NET-TROL (EN)
3.3.4. Extent of use
Proof of use as to its extent is necessary in order to prove the genuineness of
the use.
4.
Reaction of the applicant
4.1. Forwarding of the evidence
After having received the evidence of use submitted by the opponent, the
Office forwards the complete evidence to the applicant.
An exception to this rule constitutes three dimensional evidence of which the
Office has only received one specimen. Since the Office has to keep original
evidence, the applicant is informed in such cases that this kind of evidence is
available for inspection at the premise of the Office.
3798/2002 BISON / Bistoon (DE)
Page 428
Proof of use
The Office in general gives the applicant two months to file his observations in
reply to the evidence of use (and to the opposition).
4.2. Insufficient proof of use
However, the Office may close the proceedings immediately if insufficient
proof of use has been filed within the deadline given and all the earlier rights
of the opposition are affected. The rationale behind this practice is to avoid
the continuation of the proceedings when their outcome is already known, that
is, the rejection of the opposition for lack of proof of use (principle of economy
and good administration of the proceedings). The Office does so only in cases
where the evidence submitted is clearly insufficient to constitute proof of use.
In cases where the evidence might suffice, it will be forwarded to the applicant
giving him two months to file his observations. The Office must not indicate to
the opponent that the sufficiency of the evidence is doubtful, or even invite the
opponent to file further evidence in such cases. Such acts would be against
the impartial position of the Office in adversarial proceedings.
694/2000 Buss / BOSS (DE), 1920/2001 AGRITEC / ACRITEX (EN)
4.3. No reaction of applicant
If the applicant does not react within this time limit, the Office will give a
decision on the basis of the evidence before it.
The fact that the applicant does not reply does not mean that he accepts the
submitted evidence as sufficient proof of use.
4.4. Formal withdrawal of request
Where the applicant replies to the proof of use by formally withdrawing his
request for proof of use, the issue of use will no longer be relevant. As it is the
applicant who sets in motion the proof of use, the applicant is also able to
bring an end to this part of the proceedings by formally withdrawing his
request.
4.5. Relationship of request for proof of use and reply to
opposition
The applicant maintains the right to file observations in reply by submitting a
valid request for proof of use by this deadline. This means that once the
opponent has submitted evidence of use, the applicant will be given a further
deadline in which to submit observations in reply to the evidence of use and
observations in reply to the notice of opposition. This is because the applicant
has a justifiable interest in limiting his initial response in this regard and must
not be obliged to submit his observations in reply to the notice of opposition
as long as the enforceability of the earlier mark used as basis of the
opposition is still uncertain.
Page 429
Proof of use
In view of this underlying consideration, this approach is also valid in cases
where the opposition is based on different rights and only a part of them come
under the proof of use obligation. In such cases the valid request for proof of
use vis-à-vis part of the earlier rights suffices to make the deadline for
submitting observations as such regarded as observed. This is because the
applicant may only be able to evaluate his further strategy or line of
argumentation after having a complete knowledge of the enforceable basis of
the opposition.
The request for proof of use however cannot make up for already missed
deadlines. In cases where the applicant has missed the deadline for
submitting observations to the notice of opposition before filing at a later stage
of the proceedings a valid request for proof of use, he is only entitled to file
observations on the proof of use. Observations on the notice of opposition are
not taken into account, since the respective deadline has elapsed.
5.
Further reaction by the opponent
The opponent has the right to file observations in reply to the observations of
the applicant.
This is of particular importance in cases where the decision to be taken might
be based in part on the arguments raised by the applicant to the effect that
the evidence does not prove the use of the mark.
The Board of Appeal regarded the failure to allow the opponent to comment in
such a case as a substantial procedural violation.
R 733/1999-1 AFFINAGE / AFFINITÉ (EN)
Confirmations or new declarations of the opponent in his observations in reply
referring to the use of the mark cannot be taken into account. This is because
they are submitted after the deadline to furnish the requested proof of use.
Any confirmation made by the opponent’s representatives in his observations
in reply constitutes a unilateral affirmation of the opponent himself and as
such could not constitute an objective means of proof.
R 326/1999-1 ROSETA / Rosetta (EN)
6.
Languages in proof of use proceedings
According to Rule 22(4) CTMIR, where the evidence supplied pursuant to
paragraphs 1, 2 and 3 is not in the language of the opposition proceedings,
the Office may require the opponent to submit a translation of that evidence in
that language, within a period specified by the Office.
It is left to the discretion of the Office whether the opponent has to submit a
translation of the evidence of use into the language of the proceedings. In
exercising its discretion, the Office balances the interests of both parties.
Page 430
Proof of use
It has to be borne in mind that it might be extremely costly and burdensome
for the opponent to translate the submitted evidence of use into the language
of the proceedings.
On the other hand, the applicant has the right to be informed about the
content of the evidence filed in order to be capable of defending his interests.
It is absolutely necessary that the applicant is able to assess the content of
the evidence of use submitted by the opponent. In this regard, the nature of
the submitted documents has to be taken into account. For example, it might
be considered that “standard” invoices and samples of packaging do not
require a translation in order to be understood by the applicant.
379/2000, CYCLAX / CYCLE (EN), 532/2001 TRIVASTAN / NOVASTAN
(FR), 2308/2001 TRAVATAN / TRIVASTAN (FR)
If the applicant explicitly requests a translation of the evidence in the language
of the proceedings, in principle, the Office will require a translation from the
opponent. However, a rejection of such a request is feasible in cases where it
appears that the applicant’s request, in view of the self-explanatory character
of the submitted evidence, is exaggerated or even abusive.
Where the Office requires the translation, it gives the opponent a period of two
months to submit a translation of the evidence submitted. In cases where the
evidence of use filed is quite voluminous, the Office may explicitly invite the
opponent only to translate the parts of the submitted material which it regards
as sufficient for establishing genuine use of the mark in the relevant period of
time. It is in general up to the opponent to evaluate whether a complete
translation of all the evidence submitted may be necessary. The means of
evidence will only be taken into account insofar as a translation has been
produced or insofar as the means of evidence are self-explanatory regardless
of their textual components.
7.
Decision: Assessment of the evidence – standard of proof
7.1. Competence of the Office
The Office makes its own evaluation of the evidence of use submitted. This
means that the probative value of the evidence submitted is evaluated
independently of the observations of the applicant submitted in this respect.
The assessment as to the relevance, pertinence, conclusiveness and efficacy
of evidence stays within the discretion and power of judgment of the Office,
and not with the parties, and falls outside the adversarial principle which
governs inter partes proceedings.
694/2000 Buss / BOSS (DE), R 823/1999 – SIDOLIN / SIDOL (EN)
A declaration by the applicant concluding that use has been proved does not
therefore have any effect on the finding of the Office.
Page 431
Proof of use
The request for proof of use is a defence plea of the applicant. However, once
the defence plea has been raised by the applicant, it is solely up to the Office
to carry out the following procedure and to evaluate whether the evidence
submitted by the opponent is to be regarded as of sufficient probative value.
However, the applicant has the possibility of withdrawing formally the request
for proof of use (see above point III.4.4.)
This is not contrary to Article 74(1) CTMR which stipulates that in inter partes
proceedings the Office is restricted in its examination to the facts, evidence
and arguments provided by the parties and the relief sought. This provision is
binding on the Office only as regards the facts, evidence and arguments that
form the basis of its decision and does not extend to the legal evaluation of
the same. Hence, the parties may agree as to which facts have been proved
or not, but may not determine whether or not these facts are sufficient to
establish genuine use.
1196/2001 PIZZA DEL ARTE / VELARTE (EN), 926/1999 Campelo / GRAN
CAMPELLAS (EN)
There is no coherent position within the Boards in this regard. Two different
approaches exist. One is in line with the above practice (the Third Board, see
R 823/1999-3 SIDOL / SIDOLIN (EN), R 641/2000-3 Silk Cocoon / COCOON
(EN), R 53/2000-3 CONDOR / CONDOR (EN)) while the other is not (the
Second Board, see R 68/2000-2, MOBEC / NOVEX PHARMA (EN)).
7.2. The standard of proof
The CTM Regulation requires proof of genuine use of the earlier mark.
Therefore the evidence submitted by the opponent must consist of proof, i.e.
substantial evidence that the mark has been put to genuine use. Making
merely a prima facie case is not sufficient.
The Office does not require an excessively high threshold of proof of genuine
use. The required standard of evidence has to be in harmony with the function
of opposition proceedings, which have to balance the need of expeditious
proceedings with a fair resolution of conflicts.
7.3. Indirect or circumstantial evidence
The indication and proof may be of an indirect/circumstantial nature, such as
evidence about the share in the relevant market, the import of the relevant
goods, the supply of the necessary raw material or packaging to the owner of
the mark, or the expiry date of the relevant goods. Such indirect evidence can
play a decisive role in the overall assessment of the evidence submitted. Its
probative value has to be carefully assessed.
121/2001 MARIE-CLAIRE / MARIE CLAIRE 5 (EN), 88/1999 frisan / FRISA
(DE), 348/1999 LINDEBOOM / LINDENER (EN), 802/1999 MILES / MORE
MILES (EN); 372/1999 VITASTAR / VIVASTAR (EN)
Page 432
Proof of use
7.4. Overall assessment
The Office has to evaluate the evidence submitted in an overall assessment.
All the circumstances of the specific case have to be taken into account.
Furthermore, all the materials submitted must be assessed in conjunction with
each other. Pieces of evidence may be insufficient by themselves to prove the
use of an earlier trade mark, but may contribute to proving use in combination
with other documentation and information.
982/1999 GIRAF / GIRAF GOLD (EN), 121/2001 MARIE-CLAIRE / MARIE
CLAIRE (EN)
The following cases present some of the decisions of the Office (with different
outcomes) where the overall assessment of the submitted evidence was
important:
348/1999 LINDE BOOM / LINDENER (EN): the Opposition Division accepted
circumstantial evidence in conjunction with other evidence. The circumstantial
evidence consisted of a Royal award that the opponent had received outside
the relevant five-year period. The long history and tradition of the
“LINDEBOOM” Brewery going back to 1902 was also taken into account. The
Board of Appeal (R 380/1999-2) shared confirmed this: it would be very
unlikely for the opponent upon receiving such a prestigious distinction to fail to
usefully exploit it.
759/1999 MERITENE / MERTINA (EN): the Opposition Division found that a
catalogue presenting the goods, price lists for 2 years, labels and
advertisements were insufficient evidence, since they did not contain any
information on the extent of use. The Board of Appeal (R 743/1999-1)
reversed this: the information contained in the catalogue (products offered on
the market) and the price lists (sales conditions) gives a reliable indication of
the extent of use of the mark.
878/1999 RENOLIN / RENTOLIN (EN): the opponent submitted four invoices
for industrial oils, lubricants and conservation waxes for a total amount of
DEM 2 200, a statutory declaration from the Head of the Legal Department of
the opponent’s company, labels and a brochure explaining the opponent’s
products. The Opposition Division considered the evidence as inadequate.
The Board of Appeal (R 821/1999-3) confirmed the decision only in respect of
conservation waxes. Concerning the industrial oil and lubricants, the Board
considered that the labels and the brochure, which corroborate the description
on the pre-numbered invoices, together point to genuine use. The Board also
took into account, as circumstantial evidence, the invoices’ numbers which,
for fiscal and accounting purposes, must be arranged sequentially. It
considered that all the “missing” invoices were issued for the same products.
814/1999 DOC & TORS / DOCTORS (EN): the evidence consisted of
catalogues showing the mark, 3 invoices showing sales (but after the
publication of the contested CTMA), labels, business cards and photographs.
Page 433
Proof of use
The Opposition Division found that the extent of use had not been proved. In
contrast, the Board of Appeal (R 756/1999-2) held that the standards of proof
required by the Opposition Division in this case were excessive in the
circumstances.
1205/1999 HIWATT / HIWATT (EN): a catalogue showing the mark on 3
different models of amplifiers (not indicating place, time and extent), a
catalogue of the International trade fair of Frankfurt showing that a company
called HIWATT Amplification International exhibited at that fair (not indicating
any use of the trade mark) and a copy of the 1997 HIWATT Amplification
Catalogue showing the mark on different models of amplifiers (not indicating
place or extent of use) were not considered sufficient to prove genuine use,
principally because of lack of extent of use. The Board decision R 116/2000-1
of 4/12/2000 and the Court of First Instance decision T-39/01 of 12/12/2002
confirmed the OD’s decision.
694/2000 Buss / BOSS (DE): the opponent submitted an affidavit of the
opponent’s manager and a series of undated labels and pages of catalogues.
The Opposition Division regarded the proof of use as insufficient, in particular
as regards the time and extent of use. The Board of Appeal confirmed this
finding (R 643/2000-1).
719/2000 COCOON / Silk Cocoon (EN): the opponent had to submit evidence
proving the use of his mark for clothing. He submitted extracts taken from the
mail order catalogue “LA REDOUTE”, dated 1997 and 1998, claiming that this
catalogue is notoriously known in Europe and is distributed to millions of
clients. The Opposition Division found that the information contained in these
catalogues proves the time, place and nature of the use of the mark but does
not establish the actual extent of use. The Board of Appeal (R 641/2000-3)
concluded that the material provided by the opponent was indeed very
succinct but just reached the necessary minimum standard of proof of use.
The Board mainly took into account especially the obvious notoriety of the
mail order catalogue “LA REDOUTE” in which the COCOON products were
shown. In that regard, the Board, in particular, found it sufficient that the
opponent had stated that both himself and his catalogue were clearly well
known in the field of mail-order sales, that several million copies of that
catalogue are distributed in many European countries, such as France, and
that the applicant had not contested those facts. The Court of First Instance
by decision T-174/01 of 12/03/2003 annulled the decision of the Board holding
that the Board was obliged to indicate to the party concerned that it intended
to take into account that fact in order that the party be in a position to evaluate
the usefulness, if any, of submitting substantive observations on that fact.
1164/2000 PARABOOT / PARAWET (EN): the Opposition Division accepted
genuine use in France, Germany, Italy and the Benelux countries, since the
catalogues submitted by the opponent (even if many of them were undated)
showed a link with the invoices and it could be reasonably assumed that they
refer to a time period corresponding to the period of the invoices. With regard
to Spain, the OD considered 2 invoices (one from 1995 and one from 1997)
as insufficient to prove genuine use. Confirmed by R 786/2000-1.
Page 434
Proof of use
1729/2000 PALPIPAX / SALIPAX (EN): to prove genuine use of his trade
mark for pharmaceutical preparations in France, the opponent submitted
packaging of the products, directions for use bearing the trade mark and
excerpts from 1994, 1995, 1996, 1997, 1998 editions of a French directory of
pharmaceuticals (editions VIDAL). The Opposition Division considered the
evidence submitted as insufficient since the packaging and the directions
were not issued during the relevant period while the VIDAL directory did not
give any indication of the extent of use of the trade mark.
1944/2000 tifany / TIFFANY & CO. (EN): the opponent submitted several
catalogues, only 3 of them referring to the relevant period. Bearing in mind
that whether or not the submission of three catalogues is sufficient to prove
genuine use depends on the impression given by them, the Opposition
Division, in this case, considered them sufficient. In fact, it was clear from the
form and content of the catalogues that there was no artificial use of the trade
mark designed solely to maintain it in the register, but there was real trade
mark use for the purpose of trading in the goods.
2465/2000 BOSS / BOSS, HUGO BOSS (EN): the opponent submitted: two
catalogues of local distributors establishing the long-term existence of the
earlier mark on the Benelux market; various undated labels; various undated
photos showing packages of the relevant products; invoices issued outside
the relevant period; further material concerning products other than the
relevant ones. The Opposition Division considered the evidence sufficient to
prove the genuine use with particular reference to the catalogues of the local
distributors, which clearly show the seriousness of the use.
209/2001 CRITTELS / SEA CRITTELS (FR): the opponent submitted some
brochures, letters concerning the launching of the products –perfumery and
cosmetics-, excerpts from the Internet web site and advertising. The
Opposition Division considered the evidence submitted as insufficient since it
did not give any indication of the extent of use of the trade mark.
441/2001 COLETTE KOMBI / COLETTE (EN): the opponent submitted
invoices, price lists, catalogues and packaging. The Opposition Division
considered them as insufficient to prove genuine use taking into account that
the invoices referred to a period other than the relevant one, the packaging
and the brochures did not give any indication of the extent and time of use,
and the price lists did not give information on the extent of use. Reversed by
R 418/2001-1: the submitted evidence – catalogues and price lists – was
sufficient circumstantial evidence of the use of the mark. The case is pending
before the CFI.
1445/2001 BLUME-LEOPOLDO BLUME / BLUMEN WORLDWIDE (EN): the
opponent submitted catalogues of books and publications, a receipt of
opening of a bank account, an order bill, press notes, copies of
advertisements. The Opposition Division considered it as insufficient, since
none of the submitted material proves the extent of use.
Page 435
Proof of use
1578/2001 DESCAMPS / HELENE DES CHAMPS (EN): to prove genuine use
of the mark for clothing, the opponent submitted one catalogue and
photocopies from two catalogues. The Opposition Division found that the
evidence was insufficient, taking into account that one of the catalogues
referred to a period other than the relevant one and the further material was
not able to prove that the goods were actually sold and to which extent in the
relevant country.
3224/2002 LANDMARK / LANDMARK (EN): The opponent submitted various
leaflets showing a variety of grocery products all sold under different trade
marks. The earlier mark featured underneath the shop name on the first and
last page and in the footer. The Opposition Division found this insufficient
holding that this evidence gives the impression that the opponent’s earlier
mark has been used as a name for a retail store rather than for the actual
goods. Even if it could be argued that the opponent’s mark has been used on
the goods pictured in the submitted materials, since these goods have been
put on sale in the shop featuring this name, the submitted evidence does not
show the extent of use.
7.5. Need for decision
A decision on the fulfilment of the obligation of having genuinely used the
registered mark is not always necessary. The question of proof of use is not to
be considered as a preliminary question that always has to be examined first
when taking a decision on substance. Neither Article 43(2) CTMR nor Rule
22(1) give any indication in this regard. Therefore, in some cases it may be
advisable to give priority to the examination of the grounds of opposition. In
particular, this is the case where the sufficiency of the proof of use is doubtful
and the opposition must be rejected anyway because the requirements of the
raised grounds of opposition are clearly not met.
Page 436
Transitional rules relating to enlargement
Part 7
Opposition Guidelines, Part 7, Transitional rules - Status: March 2004
Page 437
Part 7: Transitional rules relating to enlargement
1.
The treaty of accession, signed on 16.4.2003, has introduced a new
Article 142a into the CTMR with provisions relating to the enlargement of
the Community by ten new Member States. This provision becomes
effective on 1 May 2004 upon accession of the new Member States.
Article 142 a CTMR provides that all pending CTM applications and
registered CTMs are, as of 1 May 2004, extended automatically to the
new Member States but may not be refused or declared invalid on
absolute or relative grounds which would become applicable merely as a
result of the accession of new Member States.
On the other hand, the CTM applications filed on or after 1 May 2004 are
not subject to this ”grandfathering clause” and may be refused upon
opposition, or declared invalid, on account of an earlier national right
existing in a new Member State, provided that that earlier right is “earlier”
in the comparison of the two filing or priority dates.
2.
An exception to this rule is contained in Article 142a (3) CTMR: Against a
CTM application filed within the six months preceding the accession date
(i.e. between 1.11.2003 and 30.4.2004), an opposition (but not a request
for declaration of invalidity) may be based on a national earlier right
existing in a new Member State at the date of accession, provided that it
has an earlier filing or priority date than the CTM application.
3.
This has the following practical consequences:
a)
A CTM application with a filing or, if applicable, priority date of 2
May 2004 or later may be opposed or declared invalid on the basis of a
national trade mark registered in a new Member State if that mark has has
an earlier priority date under the normal rules; this comprises all national
marks filed in a new Member State prior to accession.
b)
A CTM application with a filing date of 2 May 2004 or later but with
a priority date before 2 May 2004 may be opposed or declared invalid on
the basis of a national trade mark registered in a new Member State if that
mark has a an earlier priority date under the normal rules.
c)
Against a CTM application which has a filing date (the priority date
does not matter) between 1 November 2003 and 30 April 2004, the owner
of a national trade mark registered in a new Member State may file
opposition, provided that the filing or priority date of his national mark is
earlier than the filing or priority date of the opposed CTM application and
Page 438
further provided that his national mark was not applied for in bad faith.
However, this is limited to the right of filing an opposition and does not
include the right to file a request for cancellation of relative grounds. That
means that once the opposition period has expired without an opposition
on this ground having been lodged, the CTM filed within this six months
period prior to accession will be dealt with like in the cases referred to in
the following indent.
d)
A CTM application which has a filing date which is before 1
November 2003 (the priority date does not count in this context) may not
be opposed or declared invalid on the basis of national marks registered in
the new Member States.
e)
Against CTM applications and registered CTMs having a filing date
before 1 May 2004 (irrespective of their priority date) (i.e., in the cases c)
and d) above), the owner of an earlier national trade mark registered in a
new Member State which has a filing or priority date before 1 May 2004
may exercise a right to enjoin the use of the CTM in the territory of that
Member State, irrespective of the "absolute better priority", and further
provided that his national mark was not applied for in bad faith.
f)
What is said concerning trade marks registered in the new Member
States also applies to:
applications for national marks filed in the new Member States,
provided that they subsequently become registered,
unregistered rights acquired in the new Member States falling
under Article 8 (4) CTMR with the proviso that the date of the acquisition
of the right under national law takes the place of the filing or priority date.
4.
Where an opposition is based on a national registered mark or other right
in a new Member State, the issue whether it may be validly invoked as a
ground for opposition against a CTM application is an issue of whether the
opposition is well founded, and not an issue of admissibility.
5.
To the extent that Article 142a CTMR requires that the earlier right was
acquired in good faith, procedurally, the presence of good faith will be
presumed. It will therefore be for the other party to the proceedings (the
applicant of the opposed CTM application) to establish and, in case of
doubt, prove that the owner of the earlier national right obtained in a new
Member State acted in bad faith when filing the national application or
otherwise acquiring the right.
6.
Article 142a does not contain transitional provisions concerning the use
requirement (Articles 15 and 43). In opposition proceedings, the obligation
to genuinely use the mark arises when the applicant of the opposed CTM
application requests that the opponent proves use of the earlier mark
Page 439
pursuant to Article 43 (2), (3) and Rule 22. Issues related to enlargement
arise concerning the time and place of use of the earlier mark. Two cases
can be distinguished.
6.1.
The earlier mark is a national mark registered in a new Member
State
That the opponent must prove genuine use of an earlier mark
registered in a new Member State is a situation which can only
arise in a context of an opposition directed against a CTM
application with a filing or priority date of 2 May 2004 or later, or,
pursuant to Article 142a (3) against a CTM application with a filing
date between 1 November 2003 and 1 May 2004. In this case the
earlier national mark must have been genuinely used in the territory
in which it is protected during the five years preceding the date of
publication of the opposed CTM application. In this regard it is
immaterial whether the use relates to a period during which the
respective State was already a Member of the European
Community. In other words, the proof of use may relate to the
period prior to 1 May 2004.
6.2.
The earlier mark is a CTM
If the earlier mark is a CTM, a transitional issue arises if it was used
only in a new Member State, since it suffices that genuine use of
the CTM was made in only one Member State.
Since the obligation relates to the period of five years preceding the
date of publication of the opposed CTM application, use in a new
Member State (or in several new Member States) alone can only be
taken into account if the respective State was a Member State of
the European Community at the date of publication of the opposed
CTM application and if the use in the new Member State took place
after 1 May 2004. Use prior to that date in the new Member State
was not yet in the Community.
Whether the respective State was a Member of the European
Community at the time the decision on the opposition is to be
taken, is not relevant.
7.
As concerns the opposition procedure, there are no particular transitional
problems. The right pursuant to Article 115 (7) to choose a language as
language of the proceedings which is not one of the five languages of the
Office applies as from 1 May 2004 in respect of the additional nine official
languages of the European Community.
Page 440
Page 441

than - Europa.eu

Transcription

Similar documents

Pressure grows on Lebanon chief Opposition

tonypurler.com`s Hand fight/Scramble Clinic Series

Nr.9_Malaysia_The Successful Role of the Internet _ Ibrahim

EXPERIENCE TISHA B`AB AT BEVIS MARKS SYNAGOGUE

9 House Prices - Dunsland Cross Wind Turbines

Homo habilis Postcrania

CC-130_art_173

Barrywoods Crossing - Ferguson Properties Inc

Visual Techniques

LAW SOCIETY OF UPPER CANADA TRADE MARKS 2008 – THE