ALICANTE ABSTRACTS

EUROPEAN COURT OF JUSTICE

The registration of shapes and get-up 

The difficulty of registering the shape of a product or its packaging has been illustrated by three recent appeals to the Court of First Instance (CFI) from OHIM.

In the first case (Unilever v OHIM), the mark at issue was a dishwasher tablet having an irregular ovoid shape and speckles on its surface (CTM1417484). The applicant originally claimed a broad range of class 3 goods, but this was eventually narrowed to dishwasher preparations. The application was refused as non-distinctive (for dishwasher preparations) by the CTM examiner and the Board of Appeal. In the Board’s view, the shape of the mark applied for did not differ significantly from the shapes traditionally used for soaps and detergents. Furthermore, the appearance of speckles on such a product was commonplace.

The applicant appealed the Article 7(1)(b) rejection to the CFI. In confirming the non-distinctiveness rejection, the Court made the following points about 3-D marks of this type:

• CTM applications for 3-D marks should be examined in the same way as other (e.g. word) marks. However, during such examination, account must be taken that the relevant public does not necessarily perceive a mark, which is the 3-D shape or the get-up of the product itself, in the same way as a word mark or a logo. Whilst the public is used to recognising the latter as a source identifier, they may not view the shape or get-up of the product itself in the same way.
• It was not necessary for OHIM to provide evidence that consumers do not perceive the get-up of dishwasher tablets as an indication of origin. The burden of proof regarding consumer habits and perceptions lay with the applicant. The applicant had not provided any specific evidence to show that get-up of the tablets played an important role when a consumer made a choice between various products.
• The fact that the applicant and its competitors had chosen different shapes and colours for their dishwasher products and had generally sought to protect them as trade marks, did not necessarily lead to the conclusion that such get-up marks were perceived by the relevant public as a source indicator.
• The shape claimed was closely related to other tablet shapes that were used for detergent products, in particular round and oval tablets and, to a lesser extent, rectangular tablets. Even if it could have been established that only rectangular tablets were present on the market, the non-distinctiveness objection to the present mark would still apply. Other basic geometric shapes could become commonly used for dishwasher tablets, given that they were all obvious shapes to compress ingredients into a solid form.
• The differences between the shape applied for and earlier detergent tablet shapes was not easily perceptible. They were certainly not enough to allow the relevant public to recognise the shape applied for and to use this as a basis either for making a further purchase or for avoiding such a purchase.
• As stated by the Board of Appeal, speckles were a common feature of detergent tablets.
• If, for technical reasons, it was difficult to produce tablets having significantly different shapes, then it would be difficult to justify the trade mark registration of a shape that was similar to (but not identical with) the commonly used basic shape, because this would increase the risk of granting one manufacturer a monopoly that could severely hinder competition on a perpetual basis.

The second case (Axion and Christian Belce v OHIM) considered CTM applications for two 3-D marks, a brown, cigar shaped chocolate (CTM1565589) and chocolate packaging having the form of an upside down gold bar (CTM1408889). Both marks had been refused by both the CTM examiner and the Board of Appeal under Article 7(1)(b) of the Regulation. The Board found that the use of similar shapes was widespread on the confectionery market and that the marks were not sufficiently different from those shapes to be viewed as distinctive, particularly bearing in mind that the relevant public would only give the products fleeting attention.

The applicant appealed to the CFI and the Court maintained both Article 7(1)(b) refusals. In doing so, they expressed the following views:

• Factors such as the price of the product(s) claimed, cannot be taken into consideration in assessing a trade mark’s distinctiveness.
• The argument that the gold bar packaging was unusual because it was upside down was not persuasive. The spatial positioning of the gold bar (and its dimensions) were not part of the application for registration. These factors were therefore merely a marketing concept that was liable to be altered over time. They could therefore not have any bearing on the assessment of the mark’s registrability.
• The Board’s assessment of the market position and the similarity of the marks claimed to existing products was fair and reasonable.
• Similar comments on the registrability of 3-D marks were made by the ECJ in three appeals brought by Linde, Winward Industries and Rado Uhren against decisions made by the German Patent and Trade Mark Office to refuse trade mark applications for the 3-D shapes of respectively, a fork-lift truck (IR687375), a torch and a wrist watch (IR640196).

By contrast to the above, the CFI took a very different view to the registrability of a Jeep vehicle grille (CTM525048) filed in respect of, amongst other goods, land vehicles (DaimlerChrysler v OHIM). Once again, the application had been rejected as non-distinctive (Article 7(1)(b)) by both the CTM examiner and the Board of Appeal. These rejections were made in the face of evidence put forward by the applicant on the history of vehicle grilles, in particular the grille claimed. In this case, however, the Court reversed the Board’s decision in the following terms:

• Land vehicles are large goods for which it may be appropriate to use both word marks and, for example, device or 3-D marks, to allow the public to identify the product visually.
• Grilles have become an essential part of the look of land vehicles and a means of differentiating between existing models on the market. The fact that a grille could also serve a function, such as the ventilation of the engine or the provision of stability to the front of the vehicle, did not affect this. It was possible for a trade mark to have both a distinguishing purpose and a functional purpose (or purposes) and therefore this dual (or more) role should not have any bearing on the question of distinctiveness. This was particularly the case, if the former (distinguishing role) outweighed the latter.
• The grille in question was an unusual design giving the impression of being old-fashioned. It was not commonplace at the CTM application date. It was therefore capable of leaving an impression on the memory of the relevant public as an indicator of commercial origin. For this reason, it should be viewed as possessing the degree of distinctiveness necessary to be accepted for registration.

Comment

There is no doubt that, whatever lip service the EU authorities pay to the mantra that all marks should be examined equally, shape and colour/shape marks are generally more likely to be rejected as non-distinctive than word marks, particularly when the shape (or colour/shape combination) of the product itself is being claimed. There are good public policy reasons for this in that, whilst there is almost an infinite choice of word marks, the choice of shape and/or colour is, in practical terms at least, much more limited.

It is perhaps no coincidence that in the UK the word mark Cigar was accepted as a trade mark for chocolate products whilst, as reported above, the ECJ was rejecting a cigar shape as a trade mark for identical goods.

The owner of such a shape (or colour/shape) mark is not completely beyond hope, however, provided he uses that mark. The recent acceptances of a shaped toothbrush (CTM919159), a plastic fastener (CTM558429), the shape of Viennetta ice cream (CTM1503994) and the shape of a Bounty chocolate bar (CTM818864) by OHIM, all on the basis of acquired distinctiveness, show that, under the right circumstances, marks of this type can progress to registration.

Signs common to the trade (Article 7(1)(d))

Once a scientific acronym begins to appear as a generic term in technical dictionaries, it becomes extremely difficult for a trade mark applicant to claim trade mark rights in that term, whatever steps he may have taken to emphasise the trade mark nature of the term in the market. A recent CFI case (Alcon v Dr Robert Winzer Pharma) has confirmed the uphill struggle faced by an applicant in such circumstances.

In the case in point, Alcon had obtained a CTM registration for BSS in respect of “ophthalmic pharmaceutical preparations and sterile solutions for ophthalmic surgery”. Winzer applied to cancel the registration under Article 51(1) of the CTM Regulation. The basis of the cancellation action included the claim that BSS consisted of a sign which had become customary in the current language of the trade (Article 7(1)(d)).

The applicant to cancel produced a number of chemical and medical dictionaries in which the term BSS was listed as the generic acronym for either balanced salt solution or buffered saline solution, both products being employed in the ophthalmic market. Winzer’s evidence also showed that the term BSS was used by third parties (other than Alcon) in respect of ophthalmic products sold in Germany.

In response, Alcon showed that they had been the first company to adopt the term BSS as a trade mark (in 1959) and that they had used the mark continuously since that date. They also showed that they had a policy of monitoring and policing the use of BSS by third parties in countries such as Germany, Italy, UK and USA.

In spite of these efforts, the Cancellation Division cancelled the CTM registration under Article 7(1)(d). This decision was confirmed by both the Appeal Board and the CFI. The Court commented in the following terms on Alcon’s efforts to establish the trade mark nature of BSS:

• The relevant public was ophthalmologists and ophthalmic surgeons in the EU.
• • Confirming the ECJ’s findings in Merz & Krell, in relation to Article 7(1)(d), a sign must be assessed firstly by reference to the goods/services claimed and secondly on the basis of the target public’s perception of the sign. Article 7(1)(d) did not exclude descriptive terms from registration, but rather terms that were in current usage in the relevant trade sector.
• On the evidence, BSS was regarded as a generic term by the relevant scientific community. • The CTM registrant’s continuous use of BSS as a trade mark for 37 years did not prove that it had not become a generic term.
• • Although Alcon had evidenced its trade mark monitoring and policing policy, it had not shown whether this policy had been effective, in particular whether it had raised awareness of the trade mark nature of BSS amongst the relevant public.
• The fact that Alcon itself used BSS as Alcon BSS and BSS Plus might indicate that the CTM registrant itself did not consider that BSS alone had acquired such a sufficient degree of distinctiveness that it could be used on its own to identify a product.
• Documents submitted for the first time before the CFI would not be considered because the purpose of actions before the Court was simply to review the legality of CTM Board of Appeal decisions.

Comment

Acronyms of generic terms are not necessarily generic terms themselves. One only has to consider the recent English Court of Appeal case (Eastenders v Fuller Smith & Turner) in which the term ESB, standing for Extra Special Bitter, was found to be registrable for bitter beer. However, once the acronym begins to appear in dictionaries or, worse, to be used without challenge by unlicensed third parties, it becomes extremely difficult for a trade mark owner to maintain his monopoly in such a term.

One aspect of the CTM Regulation should not be overlooked in this context however. Article 10 gives the owner of a CTM registration the right to require that the publisher of a dictionary, encyclopaedia or similar work of reference acknowledges the trade mark nature of a term in the next edition of the publication, if the present edition fails to do so.

Although it may be too late for Alcon to maintain a monopoly in BSS, Article 10 of the Regulation does offer some ammunition to the owners of marks that are in danger of entering the everyday (generic) vocabulary of the relevant trade or public. The owners of such marks should therefore try to obtain a CTM registration, for the advantages offered by Article 10 alone.

Comparison of marks in oppositions and cancellation actions

Three further CFI cases have recently dealt with the comparison of marks in OHIM opposition and cancellation actions.

In the first appeal from an OHIM opposition decision (Durferrit v Kolene), a CTM application for Nu-Tride had been opposed on the basis of a German trade mark registration for Tufftride. The CTM application covered non-cyanide chemicals, for use in the treatment of metals, in class 1, as well as various metal treatment services in class 40. The earlier German registration protected, amongst other goods, cyanide inorganic salts, for metal treatment, in class 1 and devices for the nitriding treatment of steel in classes 7 and 11.

Both the Opposition Division and the Board of Appeal rejected the opposition on the basis that the two marks were not confusingly similar. The opponent appealed further to the CFI. The Court maintained the rejection of the opposition. In the CFI’s view:

• The relevant public was a limited number of highly specialised operators involved in the chemical treatment of metals.
• The CTM and the earlier goods were both involved in the nitriding of metals. They had the same end users and were in competition with each other. They were therefore similar.
• •On the facts before the Court, the suffix –tride had little or no distinctiveness, given its association with the nitriding of metals.
• The prefixes Nu- and Tuff- were clearly visually and phonetically different and, even to the German public, might be seen as being conceptually different. It followed that the two marks could be distinguished one from the other.

An attempt by the opponent to raise an absolute ground of refusal (Article 7(1)(f); marks contrary to public policy or accepted principles of morality) during opposition proceedings, was also thrown out by the CFI as immaterial. The opponent had attempted to argue that Article 7(1)(f) could be used in an opposition to prevent the registration of a mark that had been filed in bad faith. The Court did not accept this reasoning. In their view, Article 7(1)(f) referred to intrinsic qualities of the mark applied for and not to the alleged conduct of the applicant.

  

Comment

Although each CTM opposition must be decided on its own merits, the above case does show that if part of the earlier mark, in this instance the suffix –tride, is common to the trade, this can place at least some limitation on the breadth of the trade mark rights that can be claimed by an opponent. It is always better to illustrate this by referring to the widespread use of a prefix or suffix in the relevant market. However, in the Durferrit case, the CFI even took note of the presence of –tride suffixed marks on EU national trade mark registers.

Turning to the OHIM cancellation actions (under Article 52(1)(a) of the Regulation) that were appealed to the Court of First Instance (Laboratorios RTB v Giorgio Beverly Hills), the first featured a CTM registration for the trade mark Giorgio Aire. Laboratorios RTB had applied to cancel the CTM registration covering class 3 goods on the basis of their prior Spanish trade mark rights for the marks J. Giorgi (stylised), Miss Giorgi & Device, Air Giorgi and Giorgi Line & Device covering identical or similar class 3 goods. All of the opponent’s rights had been registered for five years at the date the cancellation action was filed and therefore Laboratorios RTB was asked to file evidence of use of their marks in Spain during the relevant period. The Cancellation Division decided that the applicant to cancel had shown genuine use of their marks Miss Giorgi & Device and Giorgi Line & Device, but not of J. Giorgi (stylised) and Air Giorgi. In view of their valid Spanish prior rights, the Cancellation Division decided that there was a likelihood of confusion between Giorgio Aire and the earlier marks.

The CTM owner (Giorgio Beverly Hills) appealed. The Appeal Board maintained the Cancellation Division’s decision on genuine use (thus excluding the earlier marks J. Giorgi (stylised) and Air Giorgi from consideration), but reversed the finding on likelihood of confusion. They therefore rejected the cancellation action.

Laboratorios RTB appealed to the CFI. The Court rejected the appeal finding themselves in general agreement with the Board of Appeal both on the question of genuine use and likelihood of confusion. On the question of genuine use, the CFI ruled that:

• There had been no use of J. Giorgi (stylised) during the relevant five year period (the five years prior to the date of the cancellation action (November 1998)). The use of the marks Miss Giorgi & Device and Giorgi Line & Device could not save the J. Giorgi (stylised) registration, because the former marks had elements which altered their distinctive character, relative to J. Giorgi (stylised).
• The sales of Air Giorgi during the relevant period had been very low and in some of the years non-existent. The evidence showed the sale of 24 units in 1994, 2160 units in 1995 and 312 units in 1996. The evidence therefore did not establish that Air Giorgi was consistently present on the Spanish market during the relevant five year period. Turning to the comparison of the CTM mark and goods and the applicant to cancel’s prior rights, the Court confirmed that the earlier and the later goods were identical or very similar. As far as the marks were concerned, the CFI found as follows:
• The fact that the earlier marks and the contested (CTM) mark contain the words Giorgi and Giorgio, which bear a certain resemblance to one another, is of little consequence in the context of a global comparison and is not in itself sufficient to justify the conclusion that the conflicting signs are visually similar.
• Because the signs contain other word elements, the overall impression conveyed by each sign is (visually) different.
• There are significant (phonetic) differences between the conflicting signs and the similarities between them are negligible by comparison. The contested mark is composed of four syllables (gior-gio-ai-re), of which only one, the syllable gior-, is the same as the syllables occurring in the earlier marks.
• The word Aire… has a semantic importance which, combined with that of the man’s first name Giorgio, produces a whole that is conceptually different from the earlier marks, and in particular from the components other than Giorgi, namely the words Line and Miss.
• In view of the prevalence of real or assumed Italian names in the perfume market, and the fact that consumers are used to trade marks which contain common names, they will not assume that every time a particular common name occurs in a trade mark, in conjunction with other elements, … that the goods in question all emanate from the same source. The signs in question are therefore conceptually different.

In a related appeal to the CFI, a CTM application for Giorgio Beverly Hills in respect of inter alia class 3 goods was opposed by Laboratorios RTB. In this opposition, they relied on the same Spanish trade mark rights as the above cancellation case, except the registration for Air Giorgi. In this case, the Opposition Division, the Appeal Board and the CFI all rejected the opposition on the ground that the conflicting marks were unlikely to cause confusion amongst the Spanish public. On the question of visual, phonetic and conceptual confusion, the CFI used reasoning that mirrored that employed in the cancellation action discussed above.

 

Comment

It is submitted that the Giorgio Aire cancellation action was incorrectly decided by the Court. In the writer’s view, the applicant to cancel provided sufficient evidence of genuine use of the trade mark Air Giorgi in Spain to allow that prior right to remain in consideration. If this is accepted, then surely there can be no doubt that the marks Giorgio Aire and Air Giorgi are confusingly similar in respect of identical or very similar class 3 goods.

In its Giorgio Aire judgement, the CFI appears to be saying that to prove genuine use of a mark in the EU, you need to show at least moderate sales of your marked product in the relevant market and these sales must be consistent during the relevant five year period. If this is added to OHIM’s already inflexible and onerous practice on the proof of genuine use, then this (use) evidence stage of an OHIM opposition or cancellation action becomes a veritable mountain to climb.

If the above represents a correct reading of the CFI’s position, it also seems to penalise a trader who has made a genuine attempt to sell his marked product in an EU state but who, for whatever reason, has only achieved limited sales. Why should such a genuine trader be prevented from maintaining his right in an opposition or cancellation action? Even worse, why should he be threatened by the loss of his right in a non-use revocation action? The law is not meant to penalise genuine, but relatively unsuccessful, traders.

The decision in the Giorgio Beverly Hills opposition is easier to understand and it is in line with an earlier CFI decision (Vedial v France Distribution) in which the marks Hubert and chef device and Saint-Hubert 41 were found to be distinguishable one from the other. However, the writer can point to numerous OHIM opposition cases where, by analogy, the Tribunal’s reasoning would be that the words Miss and Line and the phrase Beverly Hills are all non-distinctive in respect of class 3 goods. The comparison should therefore be between the distinctive elements Giorgio and Giorgi. On this basis, the marks are confusingly similar. In many cases, it therefore remains extremely difficult to predict the likely outcome of an OHIM opposition or cancellation decision. The CTM language regime, in which the marks can be compared in any one of eleven languages, is not conducive to an improvement in this situation.

 

Right to be heard

The right of a party in CTM opposition proceedings to file observations on a fact relied upon by an Opposition Division or a Board of Appeal in a CTM opposition decision has been confirmed by the CFI.

In the case in point (Jean M. Goulbourn v Redcats SA (formerly La Redoute)), a CTM application for Silk Cocoon covering clothing in class 25 was opposed by La Redoute on the basis of prior French and International trade mark registrations for Cocoon also in class 25. The international registration designated, amongst other countries, the Benelux and Italy. Both of the trade mark registrations relied on by the opponent were over five years old at the date of publication of the CTM application (20th July 1998) and therefore the opponent was asked to provide proof of use of Cocoon in Benelux, France and Italy in respect of the registered goods.

In response La Redoute filed extracts taken from its 1997 and 1998 mail order catalogues. These extracts featured Cocoon branded clothing. The applicant replied to this evidence by claiming that the catalogue extracts did not indicate the place, time or extent of use of the trade mark.

The period allowed by OHIM to provide evidence of use ended in August 1999. Seven months after this, La Redoute (by now called Redcats) filed further observations on its mail order business. At that point, OHIM closed the evidence stage of the proceedings.

The Opposition Division rejected the opposition on the basis that the opponent had not established the extent of use of the trade mark Cocoon in the relevant countries. Redcats filed a notice of appeal. In their statement of grounds, the opponent filed further evidence of use relating to their use of Cocoon in various EU countries during the relevant period.

The Appeal Board concluded that the opponent had established genuine use of the trade mark Cocoon within the meaning of Article 43(2) of the CTM Regulation. In the Board’s view, genuine use of a mark equated to real use which drew the attention of potential consumers to the goods and services offered under the mark. In reaching this decision, the Board took account of the evidence of use filed with the Opposition Division after the August 1999 deadline, but they did not refer to the evidence filed for the first time at the appeal stage.

The applicant appealed to the CFI and the Court annulled the Board of Appeal’s decision. They ruled as follows:

• Genuine use of a trade mark requires that the mark be used publicly and outwardly for the purpose of ensuring an outlet for the goods or services which it represents.
• The Board of Appeal had based its decision on the genuine use of the mark on the fact (the disputed fact) that the opponent’s (now intervener’s) sales catalogue was widely distributed under the name La Redoute in French speaking Member States. This disputed fact was filed at OHIM after the official (August 1999) deadline. Further, the applicant was not given an opportunity to comment on this additional evidence. Under Article 73 of the CTM Regulation, the Board of Appeal should have indicated at the outset that they intended to rely on the disputed fact in its decision and they should have allowed the applicant to submit relevant observations.
• In view of the Board’s failure to act in the manner required by the Regulation, the CFI annulled its decision on the question of genuine use of Cocoon.

Comment

This decision clearly sets out the right of both parties in a CTM opposition to file comments or observations on evidence produced by the other party, when that evidence forms the basis (or part of the basis) for the eventual decision.

Presumably this case will now be passed back to the Appeal Board for reconsideration. It will be interesting to see if, on reconsideration, the Board still takes into account the opponent’s additional evidence that was filed out of time, in this case after having allowed the applicant to submit observations on that (additional) evidence. If it does, it will add to the uncertainty surrounding this area of OHIM practice. Once again, the Opposition Division (who will not take into account such late filed evidence) and at least one Appeal Board will be at odds with each other.

The practice being followed by the OHIM Opposition Divisions in respect of the proof of genuine use of a trade mark remains inflexible, formalistic and unjustifiably onerous. Far too many OHIM oppositions are still decided on the basis that the evidence (of use) produced by the opponent is not sufficient to establish genuine use. In the writer’s view, the opponent should be informed by OHIM during the opposition procedure whether or not his evidence is sufficient to satisfy the use requirements. If it is not, he should be told the nature of the insufficiency (or insufficiencies) and given a short (perhaps one month) deadline to remedy the situation.

In the meantime, by far the best practice in this area is still to produce numerous invoices which bear the place of sale, the time of sale, the amount sold and the trade mark associated with the goods/services registered. Without such invoices (and plenty of them), genuine use is unlikely to be proved to the satisfaction of the Opposition Divisions.