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    CTM Opposition Division Decisions

    Application filed by an agent or distributor

    Under Article 8(3) of the CTM Regulation, the owner of a trade mark can oppose a CTM application made for that mark by an agent or representative of the trade mark owner. A recent opposition decision suggests that OHIM are interpreting this provision extremely narrowly.

    In this case, a Finnish company, Basic Fashion Oy, applied to register the trade mark Cellfood for a variety of goods including dietetic substances in class 5. The CTM application was opposed by a US company, Nu Science Corporation, who owned the trade mark Cellfood in the US. The background to the dispute was as follows:

    • The chief executive of the Finnish trade mark applicant (Mr Vahatalo) was also the managing director of the opponent’s Japanese distributor of Cellfood products.
    • The CTM application was filed on 11th May 2000. In December 1999, both Mr Vahatalo and the Vice President of the opponent (Mr Negrete) appeared in a promotional video aimed at marketing Cellfood in Japan.
    • In August and September 2000, Mr Vahatalo sought to negotiate a distributorship for Cellfood in Finland and other European countries. However, no agreement was ever reached between the parties.

    • In February 2001, the opponent requested that Basic Fashion withdraw the CTM application. This request was refused.

     

    The opposition was rejected. According to the Opposition Division, Article 8(3) of the Regulation only applied to (agent/representative) agreements that extended to some or all of the European Union. Since an agreement covering the EU had never existed in this case, Article 8(3) did not apply. The Opposition Division even suggested that, if an agreement had existed but was dated after the CTM filing date, then Article 8(3) would still not apply.

     

    Comment

    This is a very poor decision. Nowhere in Article 8(3) does it say that the agent or representative of the proprietor has to be an EU agent/representative. The Opposition Division’s narrow interpretation of the Article is therefore unfortunate.

    If this is OHIM’s general policy in this case, then it is sincerely to be hoped that, assuming Nu Science applies to cancel Basic Fashion’s CTM registration on the ground of bad faith (a ground that cannot be raised during opposition), a more enlightened approach will be taken to that objection and that Basic Fashion’s registration will be cancelled.

    This case should also remind US trade mark owners that, before seeking agents/representatives in the EU, they should file a CTM application for their mark.

     

    Recent CTM Opposition Division Decisions

    We set out in the Table below some recent OHIM Opposition Division cases decided under Article 8(1)(b).

    CTM Mark Earlier Mark Class Language Confusing?
    Aminogran Gran 5 German Yes
    Brother 2 Brother Brother 9, 16 All Yes
    Bullhound Bulldog 36 All Yes
    Camus Campus 34 German Yes
    Carpovirusine Carpo 5 All Yes
    Castin Casto-tin 6 French, German, Italian, Spanish Yes
    Dermolastin Lastin 5 Finnish, Swedish Yes
    Golden Sea Golden Sun 29 German Yes
    Hemocare Hemocue & Device 10 Danish Yes
    Iaxis Axis Communications & Device 9, 36, 42 Danish, English, German Yes
    Kangaroo Device Kanguros 16 Spanish Yes
    Neolastin Lastin 5 Finnish, Swedish Yes
    Ojega & Device Omega 7, 12 French, German, Italian Yes
    Racetown & Device Race 39, 41 Spanish Yes
    Secfinex Finex 36 German Yes
    Sharp Arp & Device 9 Spanish Yes
    Simeon Don Simon 33 Spanish Yes
    SmartBus & Device Smart Buy & Device 16 Spanish Yes
    Smith Signature Smith 25 All Yes
    Teatro Alla Scala & Device Scala 41, 42 Spanish Yes
    Casino Bio & Device Bio 29, 30, 32, 33 Spanish No
    Chococino Schokino 30 All No
    Gold Dairygold 5, 29 All No
    Impulse Spirit Spirit 3 German No
    Lisa Corti Lisa 24, 25 German No
    M & Device M & Device 18, 25 All No
    Noveggio Norvegia 29, 30 German No
    Ribomustin Ribomunyl 5 French, German No
    World Online & Device Welt Online 9, 35, 38, 41, 42 All No
    Xavier Gourmet Gourmet 29, 30, 32, 35, 42 Spanish No

     

    Comment

    In the writer’s view, some of the above opposition decisions illustrate the extreme difficulty of predicting the outcome of many oppositions brought at OHIM.

    Any OHIM opposition decision embodies the global approach required by ECJ case law, as well as the idiosyncrasies of eleven EU languages. This makes the prediction business a very treacherous one. Who, for example, would have thought that the Spanish would confuse Sharp with Arp, particularly in view of the fact that the two marks have coexisted on the Spanish trade mark register for a number of years? This case illustrates the significance of potential phonetic confusion, often overriding visual and conceptual considerations, especially if the opposition language is Spanish. By contrast, how many EU practitioners would have expected German consumers to have distinguished between World Online (& Device) and Welt Online, given the conceptual identity of these two marks and OHIM’s established practice of assuming that the German public have a good knowledge of the English language?

    These two cases are merely illustrative. A number of remaining decisions set out above would also, it is submitted, defy prediction, if viewed from an English speaking perspective. And therein lies the problem and the challenge of the CTM opposition process. It is not a British system run exclusively for English speakers. It is an EU system run for the whole world. Decisions that appear strange to the British eye are therefore inevitable. It is a price that has to be paid for the numerous advantages that the CTM system offers trade mark owners.

    Trade Mark Dilution

    Two recent oppositions have illustrated the importance of evidence and, if possible, showing a link between the earlier goods/services and the later, dissimilar goods/services in oppositions based on trade mark dilution (Article 8(5)) before OHIM.

    In the first opposition (Kodak v Music Bang), the famous photographic company opposed a CTM application for Kadoc & Device in classes 9, 25, 41 and 42. The opposition against the class 9 goods (under Article 8(1)(b)) succeeded. In relation to the opposition brought against the class 25, 41 and 42 goods and services (reputation/unfair advantage or detriment; Article 8(5)), the Opposition Division found as follows:

    • The two marks were similar.
    • Kodak had established a reputation in the EU for Kodak in respect of photographic apparatus and films.
    • The goods for which Kodak had shown a reputation had no market link with the class 25, 41 and 42 goods and services claimed by the CTM applicant.
    • Kodak had not shown that its mark (Kodak) had such an “excellent distinctiveness” that would allow the transfer of this distinctiveness to any kind of product or service due to the fact that it would be recognised in almost any context.
    • The difference between the markets for the two sets of goods and services made it impossible for the CTM applicant to take advantage of the reputation of the earlier mark or even associate the two signs.
    • The Article 8(5) opposition therefore failed.

     

    In the second opposition (Diknah v Mango Sport System), a CTM application for Mango covering “protective helmets for work, sport, leisure and D-I-Y purposes” in class 9 was opposed by Diknah on the basis of its reputation in the trade mark Mango in Spain for clothing.

    On the evidence, the Opposition Division accepted that the opponent had established a Spanish reputation in Mango for clothing. They also accepted that, in view of the identity of the two marks, the complementary nature of clothing and protective helmets and the similar end consumers (said to be young, sporty and dynamic, rather like the writer), the public would associate the CTM applicant’s products with those of the opponent. This association, according to the Opposition Division, would add value to the applicant’s mark, make it more attractive to the consumer and possibly influence the purchasing choice of that consumer. It would therefore take advantage of the distinctiveness and repute of the earlier mark. For these reasons, the Article 8(5) opposition succeeded.

    This Mango opposition, should be contrasted with another opposition (Consolidated Artists v Mango Sport System) involving the same CTM application. In this opposition, the CTM for Mango was opposed under Article 8(1)(b) (identical mark/similar goods) on the basis of a French registration for the identical mark covering clothing and headgear in class 25. The opposition was rejected because, in the opinion of the Opposition Division, protective helmets (for sport, etc) in class 9 were not similar to headgear in class 25.

    Comment

    In order to succeed in an Article 8(5) opposition before OHIM, an opponent needs to establish either some kind of commercial link between his goods or services (see Pharmalife Italia v E.R. Squibb and Mühlens GmbH v Hearst Corporation) or a likely tarnishment of his mark (see Chivas Brothers v Arovit Petfood above). Without one of these factors, even the most famous marks in the world (e.g. Kodak) will struggle to prevent the registration of at least similar marks (the rules for identical marks may be different) for dissimilar goods or services.

    As far as the Opposition Division’s decision in the Consolidated Artists’ case, that protective helmets for sport in class 9 are not similar to headgear in class 25, it is clear that the members of that Division have not visited a sports shop recently where different types of sporting headgear (e.g. baseball or cycling), some of which fall in class 9 and others of which appear in class 25, are sold side by side.