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    CTM Appeal Board Decisions

    The distinctiveness of product get-up

    The Unilever CFI appeal on the registrability of the get-up of a dishwasher tablet has confirmed the difficulty of obtaining CTM registrations for such trade marks.

    In a series of recent OHIM appeals, Colgate-Palmolive’s applications for the get-up of a fabric softener fared no better. In these cases, the marks (for examples see CTM1938042 and CTM1860147) were a coloured sphere which had a peripheral central band (that is a cricket ball type shape).

    All of the CTM applications were rejected as non-distinctive. In the Appeal Board’s view, the signs would not be recognised as trade marks. They would simply be seen as a solid form of the more usual liquid or powder presentation of a fabric softener. They would not strike the relevant public as indicating trade origin. The unusual ball form of the product might justify protection by registered design but, in the absence of evidence of acquired distinctiveness, it did not justify trade mark protection because it would not be seen by the average consumer, as a source indicator.

    In related cases, CTM Appeal Boards have also recently rejected a hexagonal shape pack for chocolate (CTM825149), an octagonally shaped bottle for alcoholic beverages (CTM2223360) and a transparent bottle containing two layers of blue coloured liquid (CTM1434133). In the first case, the CTM examiner relied on third party observations that hexagonal shaped chocolate packs were widely used in the industry. In the second case, the Board concluded that the bottle was not sufficiently different from other bottles used to sell alcoholic beverages to justify registration. In the third case, the Board recognised that the appearance of two liquid layers in a transparent bottle was slightly unusual. However, they concluded that this would simply lead the public to assume that the bottle contained two liquids having different densities and containing different active ingredients. It would be seen as a functional feature, rather than a source indicator.

     

    Comment

    We have discussed above, under ECJ (CFI) appeals against the rejection of shape and get-up marks as non-distinctive, that it is generally more difficult to obtain registration of such shape/get-up marks than it is registration of word marks before OHIM. If this were a practice based on public policy principles, the writer could accept it. The problem is however that OHIM does not appear to apply any general policy in this area, only a rather inconsistent examination practice. Consider, for example, the following recent prima facie OHIM acceptances, a light green/dark green layered fabric softener (CTM1932714), an octagonally shaped bottle for condiments (CTM178566) and an elongated square shaped pack for coffee (CTM2696748). None of these accepted marks appear to differ significantly from the equivalent rejected marks discussed above.

     

    Evidence of acquired distinctiveness

    A CTM application for Netstore in respect of computer data storage and protection related goods and services in classes 9, 38 and 42 was rejected by the CTM examiner on the basis of Articles 7(1)(b) and (c) of the Regulation. This rejection was made in the face of the following evidence of acquired distinctiveness:

    • Evidence that the mark had been in use for three years with annual sales in the two years prior to the CTM application date of £350,000 and £465,000.
    • Considerable media coverage of the Netstore product.
    • Three independent declarations which stated that the declarants associated Netstore with the CTM applicant.

    In the examiner’s view, the relevant public was not only the Irish and UK (English speaking) public, but also IT specialists throughout the EU, since English was the universal IT language.

    The applicant appealed and the Appeal Board allowed the appeal. In the Board’s view, the examiner had been correct to reject the mark as exclusively designating the intended purpose of the claimed goods and services (Article 7(1)(c)). However, the examiner had not given the applicant’s evidence of acquired distinctiveness, especially the independent declarations, sufficient weight. In the Board’s view, it was necessary for the applicant to show acquired distinctiveness only in the English speaking part of the EU. Elsewhere in the Community, according to the Board, Netstore would be perceived as inherently distinctive.

     

    Comment

    In an earlier CTM appeal against the rejection of a mark under Article 7(1)(c), the Appeal Board maintained an objection against the mark Men’s Health for printed matter, even though they accepted that the mark had acquired distinctiveness through use in Germany and the UK. The absence of proof of use in the Nordic countries, where a basic knowledge of English was said to be widespread, and Ireland led the continued rejection of the mark.

    It is possible to distinguish the Netstore decision from the Men’s Health decision on two grounds. First, Netstore is not a dictionary word or a simple English expression. Second, in the Netstore case, the applicant provided evidence from independent sources in the relevant trade. Such independent testimony carries far more weight with OHIM than virtually any other form of evidence of acquired distinctiveness.

     

    The registration of rude words and phrases

    Under Article 7(1)(f) of the Regulation, marks which are contrary to public policy or to accepted principles of morality should be rejected by OHIM. A recent CTM appeal has considered this issue.

    The mark applied for was Dick & Fanny for goods in classes 9, 16 and 25. The examiner rejected the application because the names were slang words referring to the “human reproductive organs” and the mark was therefore liable to offend a significant portion of English speaking consumers. The examiner noted (with surprise) the acceptance of the mark by the UK Office, but was not persuaded to waive the rejection on this basis.

    The applicant appealed, pointing to the following acceptances by the CTM Office (with apologies to those of a sensitive disposition) Billy Bastard, Crap, Bullshit, Bitch, Orgasmus and Porn Star.

    The Appeal Board found the appeal well founded. In their view, the mark had, in non-formal English usage, a rather smutty flavour but, since it did not convey any additional message and had a neutral meaning in formal English usage, it fell short of being contrary to public policy or accepted principles of morality.

     

    Comment

    This is a highly subjective area. However, the acceptance of the trade mark Tiny Penis by OHIM, after its rejection by the UK Office, does suggest a slightly more liberal approach to these matters down in Alicante compared to Newport. You know when you are getting old however, when marks of the type discussed above lead to an air of resignation about current standards of behaviour and morality, rather than a belief that the world has never been such an enlightened and amusing place.

     

    Consistency of Opposition Practice

    In the above section on European Court of Justice (CFI) decisions on OHIM appeals, we discussed the cancellation action involving the trade mark Giorgio Aire and the opposition involving the trade mark Giorgio Beverly Hills. In the commentary on those decisions, it was suggested that there was a lack of consistency in CTM practice when comparing marks which contained a common feature. The recent CTM Appeal Board decisions on oppositions set out in the Table below seem to bear this comment out.

     

    Recent CTM Appeal Board Decisions on Oppositions

    CTM Mark Earlier Mark Class Language Confusing?
    Aeroeclipse Eclipse 10 Finnish, Swedish Yes
    Baby Relax & Device Relax & Device 12, 20, 28 Spanish No
    Bellini’s An Italian Bar Marco Bellini 29, 42 Dutch, French Yes
    Coast & Device Coast Guard 25 Danish No
    Dutch Plantin Engrais Plantin & Device 1 German and others Yes
    Imperia Fois Gras & Device Imperia Pasta Facile 29 All No
    Io Bio Bio 29 Spanish No
    Lou Bega Lou 25, 26 All No
    Radiohead Head 9, 25 All except Spanish No
    Red Devil & Device Devil & Device 32 French Yes
    Goldenpizza Golden Toast & Device 30 German No
    Telecom 1 01 Telecoms 9, 16, 38, 42 All No
    Végéflore & Device Végé 3, 30, 32 Spanish Yes
    Women’s Secrets Secrets

    3, 14, 25

     

    		All No

    Comment

    What general principles can be gleaned from the above Appeal Board decisions? First, it is clear that OHIM treats prior rights in a surname, very differently to similar rights in a Christian name. The Bellini’s/Marco Bellini and Lou Bega/Lou decisions are consistent with earlier OHIM cases involving names. See, for example, the earlier oppositions in which Alexander & Device was deemed not to be confusing with Alexander McQueen, whilst Mary Green was found to be similar to Paul Green.

    Second, if the Appeal Board decides that the prior mark has very little (or even no) distinctiveness, then that mark is given a very small penumbra of protection. This explains the acceptance of Io Bio and Telecom 1 in the face of the earlier marks Bio and O1 Telecoms.

    Third, in Denmark (and presumably other Scandinavian countries) a good knowledge of the English language by the general public is assumed. See, for example, the Coast/Coast Guard decision where the ability of Danes to understand the different meanings of these two words/phrases was accepted.

    Finally, some appeal decisions are so clearly incorrect that it gives continued hope to applicants with (what should be) hopeless CTM cases. In the writer’s view, the Imperia Fois Gras and Women’s Secrets cases fall into this category. In the former case, the (Second) Board gave the term Imperia limited rights because “it is not a quirky or unusual term…and it is not capable single-handedly of causing consumers to make an immediate and unambiguous connection between the signs”.

    This reasoning is simply not understood. It is believed that Imperia is, contrary to the Board’s opinion, a strong and distinctive trade mark in relation to foodstuffs in general and pasta and fois gras in particular. Since it dominates both the earlier and the CTM mark, a likelihood of confusion as to the origin of the CTM applicant’s food product is inevitable. In the latter case, the (Second) Board concluded that, whilst Secrets alludes to know-how, expertise or good taste, Women’s Secrets alludes to the mystique of feminine beauty and elegance. It is submitted that a much more realistic approach to this opposition would have been to assume that the trade mark Secrets was used in respect of, for example, men’s watches and men’s clothing and that the appearance of Women’s Secrets watches and clothing would simply be seen as a female line extension of the Secrets range. This is not rocket science, it is simply common sense.

     

    Comparison of Pharmaceutical Trade Marks

    Three recent appeals of oppositions involving class 5 products have shed further light on OHIM’s practices in this area.

    In the first case (Shire International Licensing v Stada Arzneimittel), the CTM application was for the trade mark Dextrostat and covered prescription pharmaceuticals. The application was opposed on the basis of an Austrian trade mark registration for Ditrostad which claimed medicines.

    The Opposition Division rejected the CTM application because the two marks were likely to be confused in Austria. The applicant appealed. The (Third) Board of Appeal, in a decision which, almost wilfully ignored the importance of public safety, rejected the opposition and allowed the CTM application to proceed. According to the Board:

    • The medical profession is trained to distinguish pharmaceutical trade marks that need prescription, even if they only have minor differences. For dangerous drugs the attention of the relevant, specialised public is especially high.
    • There is no legal basis for assessing pharmaceutical trade marks to a particularly strict standard
    • The availability of the CTM goods only on prescription is a particularly decisive factor.

    It is noted that throughout this decision, the CTM mark is referred to as Dextrostad.

    In the second appeal (Dr August Wolff v Dermalabs), a CTM application for Dermophase (stylised) in respect of goods in classes 3 and 5 was opposed by a German registration for Dermowas covering a specific pharmaceutical product. The Opposition Division rejected the opposition because the prefix Dermo- was weak for skin care products and the marks could therefore be distinguished one from the other.

    The applicant appealed and once again reversed the decision, rejecting the CTM application in relation to both class 3 and class 5 goods. The important question of the similarity between class 3 goods and class 5 products was barely discussed in the appeal, it was simply assumed. The fact that there are five Dermo- prefixed pharmaceutical trade marks on sale in Germany in addition to Dermowas, does not appear to have been brought to the Opposition Division/Appeal Board’s attention.

    The final appeal (Johannes Bürger Ysatfabrik v Parfums Givenchy) involved a CTM application for Ysatis in respect of a wide range of class 3 products. This application was opposed by a German registration for Ysat claiming, amongst other goods, medicines. The Opposition Division decided that the CTM application should be rejected in so far as it covered “lotions, creams, emulsions, face and body gels and tinted creams”. These were said to be similar to medicines that could be applied to the skin. The opponent appealed. The Appeal Board confirmed the Opposition Division’s findings, but then went on to reject a wider range of class 3 goods that had a personal hygiene purpose. On the other hand, they decided that class 3 products having a purely cosmetic or perfumery purpose were not similar to the medicines of the earlier registration.

     

    Comment

    It had been thought that, after the OHIM appeal decision (Medrel v Glaxo Group) involving the trade mark Tempovate, the OHIM Appeal Boards at least had recognised the public safety issues that surround trade marks in class 5 and had begun to compare the marks involved against that background. The Dextrostat decision discussed above suggests that there is no unanimity on this point at Appeal Board level. Having said that, the Third Board of Appeal has recently been disbanded and it is to be hoped that the reconstituted Boards will take a more enlightened approach to these matters.

    It is clear from both the Dermophase and the Ysatis decisions that certain class 3 products at least are deemed to be similar to medicines (pharmaceutical products) under OHIM practice. This needs to be borne in mind when conducting EU trade mark searches in either class 3 or class 5.

     

    The Importance of language when comparing marks

    The importance of the language in which an OHIM opposition is to be decided cannot be overemphasised. This has been confirmed in a recent appeal decision (Euro Style ’94 v RCN). In this case, the CTM application was for a combination of the word Glove and a bird device. The application covered, amongst other goods, clothing in class 25. It was opposed on the basis of a number of prior rights including a Spanish trade mark registration for Globe plus a globe device claiming identical class 25 goods.

    Both the Opposition Division and the Appeal Board ruled in favour of the opponent. The average Spanish consumer would view the marks as visually very similar and phonetically almost identical. There was therefore a likelihood of confusion.

     

    Comment

    In the last edition of Make Your Mark , we discussed a number of CTM cases where marks were found to be confusing, when, to the English speaker, no confusion was remotely likely. These included the marks Annalisa & Device and Alisa and Device, Conforflex and Flex & Device, Kay and CAI and Sity by Skechers and LA CITY. To this can be added the Glove appeal decision.

    Such decisions, especially if you are on the losing side, can be extremely disconcerting. However, in a trade mark system involving 11 languages (and from May 2004, 20 languages) they must be expected. OHIM is not a British based regime run solely for the benefit of the English speaking world. It is a European regime run for the benefit of the whole world.

    Decisions such as those mentioned above are the price that has to be paid for the considerable benefits offered to trade mark owners by the CTM system.

     

    Oppositions based on unregistered rights

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

    • The earlier right must be a non-registered trade mark or another sign used in the course of trade;
    • The earlier right must be of more than mere local significance;
    • The right must have been acquired prior to the filing date of the opposed CTM application; and
    • The proprietor of the right must be in a position under the terms of the applicable EU national law to prohibit the use of the later mark.

    This was one area of CTM practice where the rules of engagement between the opponent and the applicant appeared fairly clear-cut. In particular, it seemed to be well established that, in order to succeed under Article 8(4), the opponent had to prove use of his earlier right in the course of trade. However, in the hall of mirrors that is OHIM, nothing is ever quite what it seems, as has been illustrated by a recent appeal decision (Erbapharm Laboratorios v Chassot).

    In this case, the CTM application was for the mark Herbapharm and device covering class 5 goods. It was opposed on the basis of a Spanish company name Erbapharm Laboratorios, S.L. The opponent filed evidence of the existence of the name (from the company register), together with its articles of association. It failed to file any evidence of use of the company name in Spain, however. Predictably, this led to the rejection of the opposition. Erbapharm appealed and the (Fourth) Board of Appeal decided that the appeal was well founded. In the Board’s view, proof of use of the prior right was not necessarily a mandatory requirement for success under Article 8(4) of the Regulation. They reached this conclusion on the basis of the following reasoning:

    The word “used”, that appears in the opening phrase of Article 8(4), does not introduce the requirement that the earlier right be used, but helps to circumscribe better which sorts of rights are envisaged by the norm. Whether or not the earlier right must be used, in order for it successfully to prevent a later mark from being registered, cannot be imposed by the CTM Regulation, but by the national legislation.

    • Article 8(4) involves national rights and the conditions (including the use requirement) for validly enforcing them should logically be determined in accordance with national (not Community) legislation, since that is the legal framework within which they are regulated.

    In view of this, the Board decided that the Opposition Division should consider whether, under Spanish law, it was necessary for the owner of a Spanish company name to use that name in order to accrue relevant rights that could be used to oppose a CTM application successfully. The case was therefore sent back to the Opposition Division to make this analysis.

     

    Comment

    This is a poor decision. It is sincerely to be hoped that it will not be followed by the other Appeal Boards and the Opposition Divisions. It is already difficult to identify a trade mark that is available for registration in the European Union in the face of existing registered trade marks and other signs that are in use in the EU. This situation will soon be compounded by the enlargement of the EU (to 25 countries) in May 2004. If it is now suggested that even unused company names and the like can be used, in some circumstances, to oppose a CTM application successfully, then the registration process will become even more arduous. It would be far better if OHIM were to develop a common (EU or CTM) approach to oppositions brought under rights other than registered trade marks, especially company names. In that way, a universal and consistent approach could evolve in this area. By contrast, if the Fourth Board’s decision is followed, we shall have a chaotic situation in which, for example, company names will carry more weight in some jurisdictions than they will in others. In the writer’s view, the whole point of Article 8(4) of the Regulation is to protect traders who own rights in signs that have been in use prior to the CTM application date. In the absence of such use, these traders should have no rights capable of successfully opposing a CTM application.

     

    Trade Mark Dilution

    Another CTM appeal (Chivas Brothers v Arovit Petfood) has shown that with the right evidence and in the right circumstances it is possible to prevent the CTM registration of a later, similar mark covering dissimilar goods.

    In this case, the CTM application was for the trade mark Chivas covering “foodstuffs for animals”. It was opposed on the basis of various EU national trade mark rights for Chivas and Chivas Regal registered in respect of “whisky”. There was evidence that the CTM applicant (Arovit) owned national trade mark registrations for Chivas in class 31 in Denmark, France, Germany, Greece, Italy, Portugal and Spain. These registrations coexisted with the opponent’s registrations in those countries. The CTM applicant also claimed use of Chivas for petfood in certain parts of the EU, especially Denmark, since 1994. The opponent provided copious amounts of evidence attesting to their reputation in the trade mark Chivas Regal.

    The Appeal Board ruled in favour of the opponent under Article 8(5) of the CTM Regulation.

    In the Board’s view:

    • The opponent’s evidence showed that they had a significant reputation in respect of Chivas Regal for whisky. Further, the opponent’s product was an expensive, quality drink that was at the top end of the market.
    • It was easy to see how the mark Chivas used on “foodstuffs for animals” would serve to cheapen the renown of Chivas Regal whisky. The similarity of the two marks would bring into unfortunate association, a quality whisky with animal foodstuffs. Whisky is a product that is produced with great expertise and is matured over many years to the finest perfection. By contrast, even the highest quality petfood is generally perceived to be unfit for human consumption.
    • As to the coexistence of the two marks on the register and in the market, the CTM applicant did not have registrations in a number of EU countries and their evidence of sales of Chivas petfood was not adequate to establish genuine use of that mark in the EU.

    Comment

    This decision is a good one for the owners of expensive, quality drink products. Provided that they can establish their reputation to the satisfaction of OHIM, then they should be able to prevent the registration of identical and similar marks for petfoods and possibly also for cheaper types of food and drink products available for human consumption. Thus, the owner of Moet champagne should be in a position to prevent the registration of Moet for dairy products and snack foods.

    Whether this tarnishment principle has an even broader application remains to be seen. For example, will the owner of the famous Chanel and Hermes fashion brands be able to prevent the registration of Chanel or Hermes for beer? Further, is there a reverse of tarnishment? Thus, would the food chain McDonalds be able to prevent the registration of that mark for whisky by a Scottish distillery?

     

    The effect of a national co-existence agreement on a CTM application

    This appeal (CompAir v Naber) concerned a CTM application for Compair filed in respect of goods and services in classes 7 and 37. The application was opposed by Naber on the basis of their German registration for the identical mark covering similar goods and services.

    Two years before the CTM application had been filed (in 1994), the two parties had concluded a trade mark agreement setting out their respective rights in Germany. Under the agreement, both companies were allowed to register and use the trade mark Compair in Germany for specified (and different) goods and services. The agreement also contained Naber’s undertaking not to oppose renewals of CompAir’s German registration. The applicant therefore argued that in respect of the goods/services accorded to CompAir (the CTM applicant) in Germany, Naber was precluded from opposing the CTM application successfully.

    The Opposition Division disagreed and rejected the CTM application. In their view, the Agreement was a private arrangement that was not applicable to the CTM application. CompAir’s recourse was a breach of contract case brought before the German Courts.

    CompAir appealed against this adverse decision. The Appeal Board rejected the opposition and allowed the CTM application to proceed for the goods and services covered by CompAir’s German trade mark registration. In the Board’s view, the CTM opposition was based on a German registration and the Agreement determined the parties’ respective rights in Germany. One of the assumptions of the Agreement was that, provided the two parties registered and used the mark for clearly defined and different goods and services, there would be no likelihood of confusion. It followed that the Board must have due regard to the terms of the Agreement and the CTM application would be allowed to proceed for the goods and services accorded to CompAir in that Agreement.

     

    Comment

    This is an important decision. It allows trade mark owners to broaden or consolidate their trade mark rights in the European Union in the face of conflicting prior rights, provided a trade mark coexistence agreement dealing with those prior rights exists at a national level. Potential CTM applicants and opponents should bear this in mind when operating at the regional (CTM) level.