Dr. Alexander v. Mühlendahl - Home - ECTA - European .... Alexander v. Mühlendahl J.D., LL.M. Rechtsanwalt Bardehle Pagenberg München Trade Mark Cases Conditions of protection -absolute

Trade Mark Cases

European Court of Justice

Court of First Instance

2006 – 2007

Highlights and Overview

2006 – 2007

Highlights and Overview

Dr. Alexander v. MühlendahlJ.D., LL.M.

Rechtsanwalt Bardehle Pagenberg

München

Trade Mark Cases

Conditions of protection - absolute grounds of refusal

Signs not capable of being marksLack of distinctivenessDescriptive characterConflict with DOs or GIsProtection with acquired distinctiveness


Dyson Ltd/Registrar of Trade Marks(Clear Bin)Case C-321/03(UK High Court)(UK High Court)Hearing 25 April 2006Advocate General Léger 14 September 2006Rapporteur A. O CaoimhDecision 25 January 2007 (Third Chamber)

Dyson LtdC-321/03

Dyson LtdC-321/03

Article 2 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the subject-matter of an application for trade mark registration … which matter of an application for trade mark registration … which relates to all the conceivable shapes of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner, is not a ‘sign’ within the meaning of that provision and therefore is not capable of constituting a trade mark within the meaning thereof.

Trade Mark Cases

Distinctiveness and descriptiveness –3D marks3D marks


August Storck KG/OHIM(„Werther‘s Bonbons“)C-24/05 P - T-396/02 („Werther‘s Bonbons“)C-24/05 P - T-396/02 Hearing 16 February 2006Advocate General Ruiz-Jarabo Colomer 23 March 2006 Decision (First Chamber) (Rapporteur Ilesic) 22 June 2006

C-24/05 P - T-396/02“Werther’s”CTM 784314

C-24/05 P - T-396/02“Werther’s Bonbons”CTM 784314

24 According to equally established case-law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark (see Henkel v OHIM, paragraph 38, Case C-136/02 P Mag Instrument v OHIM [2004] ECR I-9165, paragraph 30, and Deutsche SiSi-Werke v OHIM, paragraph 27).25 None the less, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, as it is in the case of a word or appearance of the product itself, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the products it denotes. Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark (see, in particular, Henkel v OHIM, paragraph 38, Mag Instrument v OHIM, paragraph 30, and Deutsche SiSi-Werke v OHIM, paragraph 28).


26 In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 (see, in particular, Henkel v OHIM, paragraph 39, Mag Instrument v OHIM, paragraph 31, and Deutsche SiSi-Werke v OHIM, paragraph 31). 27 Therefore, the Court of First Instance rightly took into consideration the shapes and colours of sweets commonly used in trade in assessing whether the mark applied for is, or is not, devoid of any distinctive character. devoid of any distinctive character. 28 The Court of First Instance found, in paragraph 44 of the judgment under appeal, that the shape of the sweet in question ‘is not markedly different from various basic shapes for the goods in question which are commonly used in trade’. In so far as the requirement of a marked difference goes further than the mere significant departure required by the case-law cited in paragraph 26 of this judgment, the Court of First Instance would have erred in law if it had made recognition of the distinctive character of the mark applied for subject to compliance with such a requirement.

C-24/05 P - T-396/02“Werther’s”CTM 78431429 Such is not the case, however. It is apparent from the

same paragraph of the judgment under appeal that the Court of First Instance relied on the finding that the mark applied for consists of a combination of presentational features which come naturally to mind and which are typical of the goods in question, that it is a variation of certain basic shapes commonly used in the confectionery sector, that, since the alleged differences are not readily perceptible, it follows that the shape in question cannot be sufficiently distinguished from other shapes cannot be sufficiently distinguished from other shapes commonly used for sweets and that it does not enable the relevant public to distinguish immediately and with certainty the appellant’s sweets from those of another commercial origin.30 By those findings the Court of First Instance established to the requisite legal standard that the mark applied for does not depart significantly from the norm or customs of the confectionery sector. Therefore, it did not err in law in finding that the mark is devoid of any distinctive character.


33 As regards the second part of the first ground, … the Court of First Instance did not err in law in any way by taking the shapes of sweets commonly used in trade into account in assessing whether the mark applied for is, or is not, devoid of any distinctive character.

Trade Mark Cases

3D marks in the CFI3D marks in the CFI

T-305/02Nestle Waters FranceCTM 922179

T-393/02“Kopfflasche”CTM 1162395


Van Waele/OHIM (Shape of a sausage – 3D)T-15/05 Case filed 18 January 2005Hearing 30 November 2005Case filed 18 January 2005Hearing 30 November 2005Decision (Third Chamber) 31 May 2006Refused (confirmed)

T-15/05Van Waele/OHIMCTM 3 050 531


Georgia-Pacific Sarl v. OHIM (3D Pattern)T-283/04 – R 493/2003-1Case filed 9 July 2004Hearing 4 October 2005Case filed 9 July 2004Hearing 4 October 2005Decision (First Chamber) 17 January 2007Not distinctive – confirmed

T-283/04Georgia-PacificCTM 2101277


Procter & Gamble Co. v. OHIM (3D Tabs)Joined Cases T- 241, 262, 263, 264, 346, 347/05, 29, 30, 31/06Cases filed347/05, 29, 30, 31/06Cases filedHearing 13 December 2006Decision (Fourth Chamber) 23 May 2007Not distinctive – confirmed

T-241/05Procter & GambleCTM

T-262/05Procter & GambleCTM 1683168








T-2/05Reckitt BenckiserCTM 1155712





Trade Mark Cases

Registrability issues - absolute Registrability issues - absolute grounds- figurative marks


August Storck KG v. OHIM(„Werther‘s Bonbonverpackung“)C-25/05 P - T-402/02 Case filedC-25/05 P - T-402/02 Case filedHearing 16 February 2006Advocate General Ruiz-Jarabo Colomer 23 March 2006Raporteur IlesicDecision (First Chamber) 22 June 2006

C-25/05 P - T-402/02“Werther’s”CTM 784454

C-25/05 P - T-402/02“Werther’s Bonbons Wrapper”CTM 784454

28 In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 (see, in particular, Henkel v OHIM, paragraph 39, Mag Instrument v OHIM, paragraph 31, and Deutsche SiSi-Werke v OHIM, paragraph 31).29 That case-law, which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself, also applies where, as in the present case, the trade mark applied for is a figurative mark consisting of the two-dimensional representation of that product. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the products it covers.


IVG Immobilien AG/OHIM („I“)Case T-441/05 - R 559/2004-4Case filed 16 December 2005Case filed 16 December 2005Hearing 12 January 2007Decision (Fourth Chamber) 13 June 2007Reversed

IVG Immobilien/OHIMT-441/05

Trade Mark Cases

Registrability issues – absolute grounds – word markslack of distinctive character, - lack of distinctive character, descriptiveness (Article 7 CTMR, Article 3 TMD)

C-107, 108/97Windsurfing Chiemsee

CHIEMSEECHIEMSEE

C-517/99Merz & Krell/DPMA

BRAVOBRAVO

C-265/00Campina Melkunie/BBM

BIOMILDBIOMILD

C-363/99KPN & PTT/BBM

POSTKANTOORPOSTKANTOOR

C-421/04Matratzen Concord/Hukla

MATRATZENMATRATZEN

C-383/99 P - T-163/98Procter & Gamble / OHIM

BABY-DRYBABY-DRY

C-104/00 P - T-19/99DKV / OHIM

COMPANYLINE

C-191/01 - T-193/99OHIM / Wm. Wrigley Jr.

DOUBLEMINTDOUBLEMINT

C-150/02 P - T-106/00Streamserve/OHIM

STREAMSERVESTREAMSERVE

C-326/01 - T-357/99 and 358/99Telefon und Buch VerlagsgmbH/OHIM

UNIVERSALTELEFONBUCHUNIVERSALTELEFONBUCH

UNIVERSALKOMMUNIKATIONSVERZEICHNIS

C-498/01 P - T-140/00OHIM / Zapf Creations AG

New Born BabyNew Born Baby

C-64/02 P - T-138/00OHIM / Erpo Möbelwerk

Das Prinzip der Das Prinzip der Bequemlichkeit

C-329/02 P - T-323/00SatellitenFernsehen/OHIM

SAT.2SAT.2

C-192/03 P - T-237/01Alcon Inc./OHIM

BSSBSS

C-37/03 P - T-91/01BioID/OHIM

BioID.BioID.


OHIM/Celltech R&D Limited („CELLTECH“)Case C-237/05 P – T-260/03Appeal from CFI decision 14 April 2005Case filed 30 June 2005Case filed 30 June 2005Hearing 17 May 2006Advocate General Sharpston 14 December 2006Rapporteur IlesicDecision (First Chamber) 19 April 2007

C-237/05 P – T-260/03OHIM/Celltech R&D

CELLTECHCELLTECH

C-237/05 P - T-260/03Celltech/OHIM

45 However, in deciding that the existence and nature of cell technology is not a well-known fact and that it was therefore for the Board of Appeal to establish the correctness of its findings in that regard, the Court of First Instance made a finding of fact which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal (see, to that effect, Storck v OHIM, paragraph Court of Justice on appeal (see, to that effect, Storck v OHIM, paragraph 53).46 Accordingly, the Court of First Instance did not make an error of law by deciding that, by not establishing the scientific meaning of cell technology, the Board of Appeal did not show that the mark CELLTECH is descriptive of the goods and services referred to in the application for registration.81 In this case, it must be held that the Court of First Instance properly assessed the descriptive character of the mark CELLTECH considered as a whole and concluded that it was not established that the mark, even understood as meaning ‘cell technology’, was descriptive of the goods and services referred to in the application for registration. Therefore, it did not infringe Article 7(1)(c) of Regulation No 40/94.


McLean-Fogg Co. v. OHIM (LOKTHREAD)Case T-399/05 – R 1122/2004-1Case filed 9 September 2005Case filed 9 September 2005Hearing 16 Januar 2007Decision 0f 12 June 2007 (Fifth Chamber)


LOKTHREADLOKTHREAD

LO(C)K-THREADLOKTH-READ

Trade Mark Cases

Registrability – distinctiveness and descriptivenessand descriptiveness- Acquired distinctiveness


August Storck KG/OHIM(„Werther‘s Bonbons“)C-24/05 P - T-396/02 („Werther‘s Bonbons“)C-24/05 P - T-396/02 Hearing 16 February 2006Advocate General Ruiz-Jarabo Colomer 23 March 2006 Decision (First Chamber) (Rapporteur Ilesic) 22 June 2006

C-24/05 P - T-396/02“Werther’s”CTM 784314


August Storck KG v. OHIM(„Werther‘s Bonbonverpackung“)C-25/05 P - T-402/02 Case filedC-25/05 P - T-402/02 Case filedHearing 16 February 2006Advocate General Ruiz-Jarabo Colomer 23 March 2006Raporteur IlesicDecision (First Chamber) 22 June 2006

C-25/05 P - T-402/02“Werther’s”CTM 784454

C-25/05 P - T-402/02“Werther’s Bonbons Wrapper”CTM 784454

83 It follows that a mark can be registered under Article 7(3) of Regulation No 40/94 only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it did not, ab initio, have such character part of the Community in which it did not, ab initio, have such character for the purposes of Article 7(1)(b). The part of the Community referred to in Article 7(2) may be comprised of a single Member State.


Bovemij Verzekeringen NV/BMM („EUROPOLIS“)Case C-108/05Case C-108/05HearingAdvocate General SharpstonRapporteur Cunha RodriguesDecision (First Chamber) 7 September 2006

C-108/05Bovemij Verzekeringen

23 Consequently, the answer to the first two questions must be that Article 3(3) of the Directive must be interpreted as meaning that the registration of a trade mark can be allowed on the basis of that provision only if it is proven that that trade on the basis of that provision only if it is proven that that trade mark has acquired distinctive character through use throughout the territory of the Member State or, in the case of Benelux, throughout the part of the territory of Benelux in which there exists a ground for refusal.

Trade Mark Cases

Absolute grounds- Conflict with appellations of - Conflict with appellations of origin and geographical indications


Budejovicky Budvar N.P. v. OHIM –Anheuser-Busch Inc. Anheuser-Busch, Inc. v. OHIM –Budejovicky Budvar N.P. Budejovicky Budvar N.P. („BUDWEISER“/“BUDWEISER“, „BUD“)Cases T-53, 54, 55, 56, 57, 58, 59, 60, 61, 62, 63, 64/04)Cases filedHearing 13 October 2005Three Decisions (Fifth Chamber) 12 June 2007

Budweiser, BUD v. Budweiser, BUD

BUDWEISERBUDWEISER

BUD

BUDWEISER

BUD

Trade Mark Cases

Scope of protection (Article 4 and 5 TMD, Article 8 and 9 (Article 4 and 5 TMD, Article 8 and 9 CTMR)

Trade Mark Cases

Scope of protection – likelihood of confusionComparison of signs and marksComparison of goods and servicesAll other circumstancesAll other circumstances

Trade Mark Cases

Scope of protection – likelihood of confusionDegree of similarity of the signs and

marksmarksDegree of similarity of the goods and

servicesDegree of distinctiveness of the

earlier markDegree of attention of the publicOther circumstances

C-303/03 PMatratzen Markt Concord/OHIM

MATRATZEN

C-104/03 PVedial/OHIM

SAINT HUBERT 41

C-512/04 PVitakraft-Werke/OHIM

VITAKRAFT

C-361/04 P – T-185/02Picasso/OHIM

PICAROPICASSO

C-206/04 PMülhens/OHIM

ZIRH

C-235/05 P – T-112/03L’Oreal/OHIM

FLEX FLEXI AIR

C-324/06 P – T-34/04Plus/OHIM

POWER


Sofass SpA/OHIM – Sodipan, SCA (NOKY fig/NICKY fig)C-92/06 – T-396/04 – R 699/2003-1C-92/06 – T-396/04 – R 699/2003-1Case filed 4 October 2005Hearing: no hearingAdvocate General: no opinionRapporteur SchiemannDecision (Order) (Fourth Chamber) 13 July 2006 (Appeal dismissed)

T-396/04Sofass/OHIM


Sergio Rossi SpA/OHIM – Sissi Rossi Srl (MISS ROSSI/SISSI ROSSI)C-214/05 P – T-169/03 – R 569/2002-1 Case filed 10 May 2005Case filed 10 May 2005Hearing: No hearingAdvocate General Kokott 16 March 2006Rapporteur MalenovskyDecision (Third Chamber) 18 July 2006Appeal dismissed (no LOC)

C-214/05 – T-169/03Sergio Rossi/OHIM

SISSI ROSSIMISS ROSSI


El Corte Ingles, SA v. OHIM – Emilio Pucci Srl (EMIDIO TUCCI fig/EMILIO PUCCI fig)C-104/05 – T-8/03 – R 700/2000-4 and R 746/2000-4 Appeal filed 28 February 2005 Appeal filed 28 February 2005 Hearing: No hearing Advocate General Ruiz-Jarabo Colomer: No opinionDecision (Order) (Sixth Chamber) 28 September 2006No LOC (confirmed)Goods in cl. 25 and cl. 18

C-104/05 P - T-8/03El Corte Ingles/OHIM


Devinlec Developpement Innovation Leclerc SA/OHIM – T.I.M.E. ART SA (Quantieme fig/Quantum fig)fig/Quantum fig)C-171/06 P – T-147/03 – R 109/2002-3Appeal filed 31 March 2006Hearing: No hearingAdvocate General Sharpston: No opinionDecision (Seventh Chamber) (A. O Coaimh, Rapporteur) 15 March 2007Appeal dismissed (LOC)

C-171/06 P - T-147/03Devlinec/OHIM


Alcon Inc./OHIM – Biofarma SA („TRIVASTAN“/„TRAVATAN“)C-412/05 P – T-130/03 – R 968/2001-3C-412/05 P – T-130/03 – R 968/2001-3Appeal filed 23 November 2005Hearing 27 September 2006Advocate General Kokott 26 October 2006Decision (Third Chamber) (A. O Coaimh, Rapporteur) 26 April 2007Appeal dismissed (LOC)

C- /06 P - T-130/03Alcon Inc./OHIM

TRIVASTAN TRAVATAN

C-412/05 PAlcon/OHIM

56 In the present case, having regard to that case-law, the Court of First Instance was fully entitled to hold, which indeed is not disputed by any party in these appeal proceedings, that the healthcare professional at issue must be included in the relevant public for the purposes of the application of Article 8(1)(b) of Regulation No 40/94, the function of the trade mark as an indication of origin being also the function of the trade mark as an indication of origin being also relevant to intermediaries who deal with the goods commercially in so far as it will tend to influence their conduct in the market (see, to that effect, Case C-371/02 Björnekulla Fruktindustrier [2004] ECR I-5791, paragraphs 23 and 25).57 However, contrary to what the applicant claims, the fact that intermediaries such as healthcare professionals are liable to influence or even to determine the choice made by the end-users is not, in itself, capable of excluding all likelihood of confusion on the part of those consumers as regards the origin of the goods at issue.

C-412/05 PAlcon/OHIM

58 In so far as it found in paragraph 49 of the judgment under appeal, in its definitive assessment of the facts, that the products at issue are sold in pharmacies to the end-users, the Court of First Instance was fully entitled to infer therefrom that, even though the choice of those products is influenced or determined by intermediaries, such a likelihood of confusion also exists for those consumers since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products, at various times.59 It is settled case-law that the perception of the marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global assessment of the question plays a decisive role in the global assessment of the likelihood of confusion (Lloyd Schuhfabrik Meyer, paragraph 25, and Case C-361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-643, paragraph 38). 60 In addition, the Court of Justice has already held that the average consumer only rarely has the chance to make a direct comparison between the different signs but must place his trust in the imperfect picture of them that he has kept in his mind (Lloyd Schuhfabrik Meyer, paragraph 26, and judgment of 23 September 2004 in Case C-107/03 P Procter & Gamble v OHIM, not published in the ECR, paragraph 44).

C-412/05 PAlcon/OHIM61 Furthermore, since it is undisputed that the whole process of

marketing the goods at issue is aimed at the end-user’s acquisition of them, the Court of First Instance was entitled to hold that the role played by intermediaries, even if they are healthcare professionals whose prior intervention is required in order to sell those goods to end-users, must be in part balanced against the high degree of attentiveness which may be shown by those users, in the light of the fact that the goods at issue are pharmaceutical products, when they are prescribed and, consequently, against those users’ ability to make those professionals take into account their perception of the trade marks at issue and, in particular, their requirements or preferences. marks at issue and, in particular, their requirements or preferences. 62 In this connection, it should be recalled that the Court has already ruled that where the goods or services with which the registration application is concerned are intended for all consumers, the relevant public must be deemed to be composed of the average consumer, reasonably well-informed and reasonably observant and circumspect (Joined Cases C-473/01 P and C-474/01 P Procter & Gamble v OHIM [2004] ECR I-5173, paragraph 33, and Case C-329/02 P SAT.1 v OHIM [2004] ECR I-8317, paragraph 24).63 It follows that the Court of First Instance did not err in law by including end-users in the relevant public for the purposes of applying Article 8(1)(b) of Regulation No 40/94.


OHIM/Liminana y Botella S.L. - Shaker di L. Laudato & C. Sas (LIMONCHELO/Limoncello della Costiera Amalfitana fig.)Appeal against CFI decision of 15 June 2005Appeal against CFI decision of 15 June 2005Case C-334/05 P – T—7/04Appeal filed 9 September 2005Hearing 24 January 2007Advocate General Kokott 8 March 2007Rapporteur KluckaDecision (Third Chamber) 12 June 2007

C-334/05 P – T-07/04OHIM/Liminana y Botella

LIMONCHELO

C-334/05 POHIM/Shaker

41 It is important to note that, according to the case-law of the Court, in the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see order in Matratzen Concord v OHIM, paragraph 32; Medion, paragraph 29).42 As the Advocate General pointed out in point 21 of her Opinion, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. 43 It follows that the Court of First Instance incorrectly applied Article 8(1)(b) of Regulation No 40/94.44 In those circumstances, OHIM is right to maintain that the judgment under appeal is vitiated by an error in law.


Inex SA/OHIM – Robert Wiseman & Sons LtdT-153/03 – R 106/2001-2Case filed 18 April 2003Case filed 18 April 2003Hearing 7 September 2005Decision (Second Chamber) 13 June 2006No LOC (confirmed)

T-153/03Inex SA/OHIM


Miguel Torres/OHIM – Bodegas Muga (TORRES/TORRE MUGA fig)T-247/03 – R 998/2001-1T-247/03 – R 998/2001-1Case filed 23 June 2003Hearing 7 December 2005Decision (Second Chamber) 11 July 2006No LOC (confirmed)Appeal to ECJ

T-/04Miguel Torres/OHIM

TORRES


L & D v. OHIM – Julius Sämann Ltd. (Tree silhoutte/Aire Limpio)T-168/04 – R 326/2002-2T-168/04 – R 326/2002-2Case filed 14 May 2004Hearing 12 January 2006Decision (Fourth Chamber) 7 September 2006LOC (confirmed)

T-168/04L & D/OHIM


Armacell Enterprise/OHIM – nmc SA (NOMAFOAM/ARMAFOAM)T-172/05 – R 552/2004-1T-172/05 – R 552/2004-1Case filed 29 April 2005Hearing 4 May 2006Decision (Fifth Chamber) 10 October 2006LOC (confirmed)Appeal to ECJ

T-172/05/OHIM

ARMAFOAMNOMAFOAM


Armour Pharmaceutical/OHIM – Teva Pharamceutical Industries (CALSYN/GALZIN)T-483/04 – R 295/2003-4T-483/04 – R 295/2003-4Case filed 8 December 2004Hearing 31 January 2006Decision 17 October 2006LOC (reversed)

T-483/04Armour Pharmaceutical/OHIM

GALZINCALSYN


Bitburger Brauerei/OHIM – Anheuser-Busch (BIT/BUD)T-350, 351, 352/04 – R 447, 451, 453/2002-T-350, 351, 352/04 – R 447, 451, 453/2002-2Cases filed 24 January 2004Hearing 10 January 2006Decision (Fifth Chamber) 19 October 2006No LOC (confirmed)

T-350, 351, 352/04Bitburger Brauerei/OHIM

BUD u.a.BIT u.a.


Anheuser-Busch, Inc./OHIM – Budejovicky Budvar, n.p. (Budweiser Budvar fig/BUDWEISER)fig/BUDWEISER)T-366/05 – R 514/2004-2Case filed 26 September 2005No hearingOrder (Fourth Chamber) 15 November 2006LOC (confirmed)

T-366/05Anheuser Busch/OHIM

BUDWEISER


Mast-Jägermeister AG v. OHIM – Licorera Zacapaneca SA (Hirschkopf fig – Hirschkopf VENADO fig)VENADO fig)T-81, 82, 103/03 – R 154/2002-4Cases filed 3 & 19 March 2003Hearing 13 July 2006Decision (Fifth Chamber) 14 December 2006LOC (reversed)

T-81, 82, 103/03Mast-Jägermeister/OHIM


Ferrero Deutschland GmbH v. OHIM – Cornu SA Fontain (FERRERO – FERRO)T-310/04 – R 540/2002-4T-310/04 – R 540/2002-4Case filed 26 July 2004Hearing 19 January 2006Decision (Third Chamber) 15 December 2006No LOC (confirmed) (chocolate products v. salt biscuits)Appeal to ECJ

T-310/04Ferrero Deutschland/OHIM

FERROFERRERO


Mundipharma AG/OHIM – Altana Pharma AG (RESPICORT/RESPICUR)T-256/04 – R 1004/2002-2T-256/04 – R 1004/2002-2Case filed 28 June 2004Hearing 24 January 2006Decision (Second Chamber) 13 January 2007LOC (reversed)

T-256/04Mundipharma/OHIM

RESPICURRESPICORT


Bodegas Franco-Espanolas SA v. OHIM –Companhia General da Agricultura da Vinhas (ROYAL FEITORIA – ROYAL)(ROYAL FEITORIA – ROYAL)T-501/04 – R Case filed 2005Hearing 2006Decision (Fourth Chamber) 15 February 2007No LOC (reversed) Appeal to ECJ

T-501/04Ontex NV/OHIM

ROYALROYAL FEITORIA


House of Donuts International v. OHIM –Panrico, SA (Donuts fig – House of Donuts fig)fig)T-333 & 334/04 – R 1034 & 1036/2001-4Cases filed 11 August 2004Hearing 23 November 2006Decision (Fourth Chamber) 18 April 2007LOC (confirmed)

T-333 & 334/04House of Donuts/OHIM

DONUTDONUT


Trek Bicycle Corp. v. OHIM – Audi AG (TREK –ALLTREK)T-158/05 – R 587/2004-4T-158/05 – R 587/2004-4Case filed 22 April 2005Hearing 21 September 2006Decision (Third Chamber) 16 May 2007No LOC (confirmed) (bicycles v. vehicles)

T-158/05Trek Bicycle/OHIM

ALLTREKTREK


Assembled Investments (Proprietary) Ltd v. OHIM – Waterford Wedgwood plc (WATERFORD – WATERFORD Stellenbosch)(WATERFORD – WATERFORD Stellenbosch)T-105/05 – R 240/2004-1Case filed 28 February 2005 Hearing 5 December 2006Decision (Second Chamber) 12 June 2007No LOC (reversed – dissimilar goods)

T-105/05Assembled Investments/OHIM

wine

WATERFORDglassware

Trade Mark Cases

Infringement (Article 5 TMD, Article 9 CTMR)Article 9 CTMR)Limitations

Fair useExhaustionRequirement of use

Trade Mark Cases

Infringement –Infringement –Trade mark use


Class International BV v. Unilever NV („AQUAFRESH“)Case C-405/03Case C-405/03Case filedHearingAdvocate General Jacobs 26 May 2005 Rapporteur GulmannDecision 18 October 2005

C-405/03Class/Unilever

1. Article 5(1) and (3)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1) and (2)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that a trade mark proprietor cannot interpreted as meaning that a trade mark proprietor cannot oppose the mere entry into the Community, under the external transit procedure or the customs warehousing procedure, of original goods bearing that mark which had not already been put on the market in the Community previously by that proprietor or with his consent. The trade mark proprietor cannot make the placing of the goods at issue under the external transit procedure or the customs warehousing procedure conditional on the existence, at the time of the introduction of those goods into the Community, of a final destination already specified in a third country, possibly pursuant to a sale agreement.

C-405/03Class/Unilever

2. ‘Offering’ and ‘putting on the market’ the goods, within the meaning of Article 5(3)(b) of Directive 89/104 and Article 9(2)(b) of Regulation No 40/94, may include, respectively, the offering and sale of original goods bearing a trade mark and having the customs status of non-Community goods, when the offering is done and/or the sale is effected while the goods are placed under the external transit procedure or the customs warehousing procedure. The trade mark proprietor may oppose warehousing procedure. The trade mark proprietor may oppose the offering or the sale of such goods when it necessarily entails the putting of those goods on the market in the Community.3. In a situation such as the one at issue in the main proceedings, it is for the trade mark proprietor to prove the facts which would give grounds for exercising the right of prohibition provided for in Article 5(3)(b) and (c) of Directive 89/104 and Article 9(2)(b) and (c) of Regulation No 40/94, by proving either release for free circulation of the non-Community goods bearing his mark or an offering or sale of the goods which necessarily entails their being put on the market in the Community.


Diesel Spa v. Montex Holdings Ltd („DIESEL“)Case C-281/05 (Bundesgerichtshof)Case C-281/05 (Bundesgerichtshof)Case filed 13 July 2005Hearing 4 May 2006Advocate General Poaires Maduro 4 July 2006Rapporteur KurisDecision 9 November 2006 (Second Chamber)

Montex/DieselC-48/05

1. Article 5(1) 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 is to be interpreted as meaning that the proprietor of a trade mark can prohibit the transit through a Member State in which that mark is protected (the Federal Republic of Germany in the present case) of goods bearing the trade mark and placed under the external transit procedure, trade mark and placed under the external transit procedure, whose destination is another Member State where the mark is not so protected (Ireland in the present case), only if those goods are subject to the act of a third party while they are placed under the external transit procedure which necessarily entails their being put on the market in that Member State of transit.2. It is in that regard, in principle, irrelevant whether goods whose destination is a Member State come from an associated State or a third country, or whether those goods have been manufactured in the country of origin lawfully or in infringement of the existing trade mark rights of the proprietor in that country.


Adam Opel AG v. Autec AG („OPEL BLITZ“)Case C-48/05Case filed 8 February 2005Hearing 2 February 2006Hearing 2 February 2006Advocate General Ruiz-Jarabo Colomer 7 March 2006Rapporteur IlesicDecision 25 January 2007 (First Chamber)

Adam Opel/AutecC-48/05

Adam Opel/AutecC-48/05

1. Where a trade mark is registered both for motor vehicles – in respect of which it is well known – and for toys, the affixing by a third party, without authorisation from the trade mark proprietor, of a sign identical to that trade mark on scale models of vehicles bearing that trade mark, in order faithfully to reproduce those vehicles, and the marketing of those scale models:– constitute, for the purposes of Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, a use which the proprietor of the trade mark is entitled to prevent if that use affects or is liable to affect the functions of the trade mark as a trade mark registered for toys;– constitute, within the meaning of Article 5(2) of that directive, a use which the proprietor of the trade mark is entitled to prevent –where the protection defined in that provision has been introduced into national law – if, without due cause, use of that sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark as a trade mark registered for motor vehicles.

Trade Mark Cases

Limits of protection- Requirement of useLimits of protection- Requirement of use

C-40/01Ansul/Ajax

37. It follows that „genuine use“ of the mark entails use ofthe mark on the market for the goods or services protected bythat mark and not just internal use by the undertakingconcerned. The protection the mark confers … cannotcontinue to operate if the mark loses its commercial raisond‘être, which is to create or preserve an outlet for the goodsor services … . Use of the mark must therefore relate to goodsor services … . Use of the mark must therefore relate to goodsor services already marketed or about to be marketed and forwhich preparations … to secure customers are under way,particularly in the form of advertising campaigns. … (emphasisadded)

38. Finally, when assessing whether there has been genuineuse of the trade mark, regard must be had to all the facts andcircumstances relevant to establishing whether thecommercial exploitation of the mark is real, in particularwhether such use is viewed as warranted in the economicsector concerned to maintain or create a share in the market(in FR: des parts de marché, in DE: Marktanteile) for thegoods or services protected by the mark. (emphasis added)

C-40/01Ansul/Ajax

39. Assessing the circumstances of the case may thus includegiving consideration, inter alia, to the nature of the goods orservice at issue, the characteristics of the market concernedand the scale and frequency of use of the mark. Use of themark need not, therefore, always be quantitatively significantfor it to be deemed genuine, as that depends on thefor it to be deemed genuine, as that depends on thecharacteristics of the goods or service concerned on thecorresponding market.(emphasis added)

C-40/01Ansul/Ajax

40. Use of the mark may also in certain circumstances be genuinefor the goods in respect of which it is registered that were sold atone time but are no longer available.41. That applies, inter alia, where the proprietor sells parts whichare integral to the make-up or structure of the goods previouslysold, and for which he makes actual use under the conditionspreviously described in paragraphs 35 to 39 of this judgment. Sincepreviously described in paragraphs 35 to 39 of this judgment. Sincethe parts are integral to those goods and are sold under the samemark, genuine use of the mark for those parts must be consideredto relate to the goods previously sold and to serve to preserve theproprietor‘s rights in respect of those goods.


Häupl v. Lidl Stiftung & Co. KG (LE CHEF DE CUISINE)Case C-246/05, Reference from Case C-246/05, Reference from ObP&MSenatCase filed 9 February/10 June 2005Hearing 21 September 2006Advocate General Ruiz-Jarabo Colomer 26 October 2006Rapporteur Borg BarthetDecision (Third Chamber) 14 June 2007

C-246/05Häupl/Lidl Stiftung

28 It follows that the Member States are free to organise their registration procedure and, accordingly, they can decide in particular when that procedure is to be regarded as having been completed.29 In the case of international registration, such as that at issue in 29 In the case of international registration, such as that at issue in the main proceedings, it is thus for the Member State for which the registration application has been filed to determine the time at which the registration procedure comes to an end in accordance with its own procedural rules.

Trade Mark Cases

Procedural issues

Procedure before the OfficeProcedure before the OfficeProcedure before the BoardsProcedure before the CFIProcedure before the ECJ

Trade Mark Cases

Procedural issues - OHIMRegistration and other ex parte proceedings

Acceptance or refusal – burden of proofAcceptance or refusal – burden of proof


OHIM/Celltech R&D Limited („CELLTECH“)Case C-237/05 P – T-260/03Appeal from CFI decision 14 April 2005Case filed 30 June 2005Case filed 30 June 2005Hearing 17 May 2006Advocate General Sharpston 14 December 2006Rapporteur IlesicDecision (First Chamber) 19 April 2007

C-237/05 P – T-260/03OHIM/Celltech R&D

CELLTECHCELLTECH

C-237/05 P - T-260/03Celltech/OHIM

46 Accordingly, the Court of First Instance did not make an error of law by deciding that, by not establishing the scientific meaning of cell technology, the Board of Appeal did not show that the mark CELLTECH is descriptive of the goods and services referred to in the application for registration.registration.

Trade Mark Cases

Procedural issues – Boards of Appeal Inter-partes proceedings

New facts and evidenceNew facts and evidence

C-29/05 P – T-164/02OHIM/Kau

OHIM v. Kaul GmbH – Bayer AG (CAPOL –ARCOL) C-29/05 P – T-164/02 – R 782/2000-3C-29/05 P – T-164/02 – R 782/2000-3Appeal to ECJ filed 25 January 2005Hearing Advocate General Sharpston Decision 13 March 2007 (Grand Chamber) (Rapporteur Schiemann) Reversed and remanded to OHIM (Board)

C-29/05 P – T-164/02OHIM/Kaul

Findings of the Court

40 Since both parts of the ground of appeal are closely related they will be examined together.

Article 74(2) of Regulation No 40/94

41 First, in order to give judgment on the ground of appeal in its 41 First, in order to give judgment on the ground of appeal in its entirety, it must be found that, as is apparent from the wording of Article 74(2) of Regulation No 40/94, OHIM may disregard facts which were not submitted or evidence which was not produced in due time by the parties. 42 Contrary to OHIM’s submission, it results from such wording that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of Regulation No 40/94 and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late.

C-29/05 P – T-164/02OHIM/Kaul

43 However, it is equally apparent from that wording that a party has no unconditional right to have facts and evidence submitted out of time taken into consideration by OHIM. In stating that the latter ‘may’, in such a case, decide to disregard facts and evidence, Article 74(2) of Regulation No 40/94 grants OHIM a wide discretion to decide, while Regulation No 40/94 grants OHIM a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account. 44 Where OHIM is called upon to give judgment in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where OHIM considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account.

C-29/05 P – T-164/02OHIM/Kaul

45 As rightly submitted by OHIM, if it were compelled to take into consideration, in all circumstances, the facts and evidence produced by the parties to opposition proceedings outside of the time-limits set to that end under the provisions of Regulation No 40/94, those provisions would be rendered redundant. provisions would be rendered redundant. 46 However, the interpretation set out in paragraphs 42 to 44 of this judgment in respect of Article 74(2) of Regulation No 40/94 is capable of preserving the effectiveness of those provisions while making it possible to reconcile various imperatives. 47 It is consistent with the principle of sound administration and the need to ensure the proper conduct and effectiveness of proceedings that the parties have an incentive to respect the time-limits imposed on them by OHIM when hearing a case. The fact that the latter may, if necessary, decide to disregard facts and evidence produced by the parties outside the time-limits prescribed should, in itself, have such an incentive effect.

C-29/05 P – T-164/02OHIM/Kaul

48 By preserving, nevertheless, the possibility for the department called upon to make a decision in a dispute of taking into account facts and evidence submitted late by the parties, that interpretation is, at least in respect of opposition proceedings, likely to contribute to ensuring that marks whose use could later on successfully be challenged by means of annulment proceedings or counterclaim are not registered. As the Court has already held, reasons of legal certainty not registered. As the Court has already held, reasons of legal certainty and sound administration speak in favour of that approach (see, in particular, Case C-104/01 Libertel [2003] ECR I-3793, paragraph 59).

The nature of the proceedings followed before the Board of Appeal of OHIM and Article 62(1) of Regulation No 40/94

49 Second, no reason of principle related to the nature of the proceedings under way before the Board of Appeal or to the jurisdiction of that department precludes it, for the purpose of giving judgment on the appeal before it, from taking into account facts and evidence produced for the first time at the appeal stage.

C-29/05 P – T-164/02OHIM/Kaul

55 In accordance with the logic of the institutional architecture referred to in paragraphs 50 and 51 of this judgment, the judicial review thus exercised by the Court of First Instance cannot consist of a mere repetition of a review previously carried out by the Board of Appeal of OHIM. Appeal of OHIM. 56 It follows, in that regard, from Article 62(1) of Regulation No 40/94 that, following the examination as to the merits of the appeal, the Board of Appeal is to decide it and that, in doing so, it may ‘exercise any power within the competence of the department which was responsible for the decision appealed’, that is to say, in the present case, give judgment itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or reversing the contested decision. 57 It thus follows from Article 62(1) of Regulation No 40/94 that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact.

C-29/05 P – T-164/02OHIM/Kaul

Articles 42(3) and 59 of Regulation No 40/94

59 Third, it is apparent from Article 42(3) of Regulation No 40/94 that a person who brings an opposition against the registration of a mark on the ground that that mark should be rejected on the basis of Article 8(1) of that regulation may submit facts, evidence and Article 8(1) of that regulation may submit facts, evidence and arguments in support of that opposition within the time-limit set to that end by OHIM. 60 Unlike Article 42(3), Article 59 of Regulation No 40/94, which lays down the conditions for bringing an appeal before the Board of Appeal, does not refer to the submission of facts or evidence, but only to the filing, within a time-limit of four months, of a written statement setting out the grounds of appeal. 61 It follows that, contrary to the finding of the Court of First Instance in paragraph 30 of the judgment under appeal, Article 59 of the regulation cannot be interpreted as starting a new time-limit for the person bringing such an appeal in which to submit facts and evidence in support of his opposition.

C-29/05 P – T-164/02OHIM/Kaul

62 Consequently, the Court of First Instance erred in law in finding in that paragraph that the facts and evidence were submitted ‘in due time’ within the meaning of Article 74(2) and in inferring therefrom that the Board of Appeal was required to take that information into consideration in the decision which it was called upon to give on the consideration in the decision which it was called upon to give on the appeal brought before it. 63 It follows from paragraphs 41 to 43 of this judgment that, where, as in the present case, such facts and evidence have not been submitted and produced by the party concerned within the time-limit set to that end under the provisions of Regulation No 40/94, and thus not ‘in due time’ within the meaning of Article 74(2) of that regulation, that party does not enjoy an unconditional right to have such information taken into account by the Board of Appeal. On the contrary, that board has a discretion as to whether or not to take such information into account when making the decision which it is called upon to give.

Information

OHIM website

oami.europa.eu

ECJ & CFIECJ & CFI

curia.europa.eu

Email

Alexander v. Mü[email protected]

Documents

Dr. Alexander v. Mühlendahl - Home - ECTA - European .... Alexander v. Mühlendahl J.D., LL.M. Rechtsanwalt Bardehle Pagenberg München Trade Mark Cases Conditions of protection -absolute