Requirement for EU wide distinctiveness
In order to be registrable prima facie as a CTM, a mark must not have a descriptive meaning in any of the EU’s languages. This practice has been confirmed in two recent CTM appeals.
In the first case, the trade mark was Bona for wax and polish preparations in class 3 and polishing machines in class 7. The mark was rejected by the CTM examiner under Articles 7(1)(b) and (c) on the basis that bona means wax! or polish! in Swedish (that is the imperative form of the verb). The rejection under Article 7(1)(b) was confirmed on appeal. In the Board of Appeal’s view, the connection between the goods and the mark was too direct and therefore even a minimum level of distinctiveness was absent.
In the second appeal, the mark at issue was Chico’s for inter alia clothing. The examiner had rejected the application because chico means boy in Spanish. On appeal the Article 7(1)(b) objection was maintained in respect of boy’s (and men’s) clothing. However, the application was allowed to proceed for women’s clothing. The use of Chico’s in respect of women’s clothing was said to give the mark the minimum level of distinctiveness required.
These decisions merely confirm OHIM’s practice in this area and follow earlier appeal decisions where, for example, Artigiano (Italian for craftsman) was rejected in respect of goods in classes 21 and 25, Optima (Portuguese for excellent) was rejected for class 16 goods and Velona (Greek for needle) was refused for depilatory products.
It remains to be seen whether or not OHIM will continue to operate an all or nothing practice once the ten new States accede to the EU in 2004. Will a mark with a non-distinctive meaning in Maltese, for example, be rejected, when the population of Malta constitutes less than 0.1% of the total EU population or will a de minimis rule apply?
As far as the acceptance of Chico’s for women’s clothing is concerned, it is perhaps surprising that this amendment to the class 25 specification did not lead to an Article 7(1)(g) objection that the mark would be deceptive.
Registration of Geographical Indications
A recent appeal illustrates the inconsistency of OHIM’s practice in this area. The mark at issue was Richmond Specials for tobacco products in class 34. The examiner rejected the application under Articles 7(1)(b) and (c) on the basis that the US city of Richmond in the state of Virginia is an important centre for tobacco manufacture. This objection was maintained in the face of evidence that the applicant (Imperial Tobacco) owned a CTM registration for Richmond itself in respect of class 34 goods.
The Appeal Board allowed the appeal on the following basis:
This decision, and OHIM’s earlier acceptance of Richmond itself in class 34, should be contrasted with earlier Appeal Board rejections of Arcadia (a Greek department with an established wine growing industry) for class 33 goods, Ascot for ties, Frankfurt Motor Show for the organisation of exhibitions and Cambridge Energy Research for services in classes 35, 41 and 42.
It is therefore extremely difficult to discern a clear policy in this area of OHIM practice. In order to be rejected, it is assumed that a mark must have a very close association with the goods or services claimed. However, in view of the above appeals (and many other decisions on geographical indications made at examiner and Appeal Board level), it appears that even this narrow policy is not being consistently applied.
Consistency of Appeal Board decisions on distinctiveness
The following Appeal Board decisions illustrate the continuing difficulty of predicting the outcome of the CTM examination of distinctiveness.
The first case involves the trade mark m-Network for a variety of computer and communication related products in classes 9, 16 and 42. The examiner rejected the mark under Articles 7(1)(b) and (c) on the basis that the average consumer would immediately understand m as meaning mobile in respect of the goods and services claimed. This is the practice followed by the UK Trade Mark Office.
The Appeal Board disagreed with the examiner’s rejection and accepted the application. In their view:
In the second appeal, the mark was Printool and the goods were photoprinting machines (in class 9). The examiner objected to the application (Articles 7(1)(b) and (c)). In his view, the mark would immediately be seen as referring to printing apparatus (or tool). Again the Board of Appeal overturned the examiner’s objection. According to the Board, the omission of a letter t (from print tool) ensured that the mark deviated sufficiently from the normal way of indicating tools used in the printing process. The existence of a UK registration for the same mark covering the same goods was also persuasive.
By contrast, in the following cases, the examiner’s Article 7(1)(b) and/or (c) objections were maintained by the Board of Appeal:
In the face of these arguments, the examiner maintained her Article 7(1)(b) and (c) objections and the Appeal Board agreed. In their view, the sign was laudatory since it would simply be seen as meaning “the best technology” in relation to the objectionable goods and services. The widespread appearance of Ultratech on the internet reinforced this view.
The earlier acceptance of Ultratech by OHIM in class 16 was for printed matter at large. In the present case, the goods and services claimed were more technical, including manuals in class 16. The registration of the mark by EU national offices was not binding on OHIM.
In the last edition of Make Your Mark we commented that it was extremely difficult to predict whether specific trade marks would be viewed as distinctive (or otherwise) by the ECJ and CFI. The above cases show, in the writer’s view, that this problem also applies at the level of the CTM Board of Appeals. It is very difficult, for example, to reconcile the acceptance of the trade mark m-Network with the rejection of the mark @Security. Further the acceptance of Printool, because of the omission of a phonetically redundant letter t, is hard to square with the dismissal of applications for Bikenet, Smartvent and Screenready. If Baby-Dry represents a syntactically unusual juxtaposition to the ECJ and marks such as Doublemint, Easybank, Eurocool and New Born Baby are viewed as distinctive by the CFI, then the Appeal Boards’ rejection of Bikenet, Smartvent, Screenready and Ultratech is, to this commentator at least, incomprehensible. In the case of Ultratech, the earlier acceptance of the mark by the two English speaking and examining Trade Mark Offices, Ireland and the UK, should have been compelling evidence in favour of registrability before OHIM. We certainly have a long way to go before practitioners will be in a position to predict the outcome of the examination of many trade marks by OHIM (and the ECJ/CFI) on absolute grounds with any degree of certainty.
Proof of Use in Opposition Proceedings
In CTM opposition proceedings, when an opponent is asked to prove use of his mark in the five years up to the publication of the CTM application, the only sure way of meeting the Opposition Divisions’ requirements is to produce invoices which bear the mark, together with the place, date and extent of the sales.
The Appeal Boards are however endeavouring to persuade the Opposition Divisions that other forms of evidence should be accepted as adequate, as the following decisions illustrate.
In the first appeal (Classen-Papier v S.D. Warren Services), the opponent was asked to prove use of the trade mark Summaset in Germany in respect of paper in the five year period up to 22 June 1998. The opponent filed the following information:
Predictably, the Opposition Division found that this in house generated affidavit should be given “relative”, that is virtually no, weight. Further, the affidavit failed to give any indication as to the place, time and extent of the use of the mark.
The Appeal Board took a different view. In their opinion, written declarations which are sufficiently detailed and, if necessary, complemented by additional evidence, should normally be given a high weight. In the present case, this would clearly lead to the conclusion that proof of use of Summaset in respect of paper in Germany had been established.
In a similar case (Handelsonderneming P.W. Kerkhof Dongen v Liegelind), proof of use of the trade mark Piccolino (with and without a clown device) in relation to clothing and footwear in the Benelux was requested. The opponent filed:
Once again, the Opposition Division concluded that the evidence, whilst sufficient to show the time and place of use, did not establish the nature and extent of use. Although the evidence of use in this (Piccolino) appeal was less convincing than that furnished in the above (Summaset) appeal, the Appeal Board still found it to be adequate to establish the necessary use in the relevant five year period. In particular, the letter from the opponent’s accountants should have been given greater weight. (For similar appeals in which an affidavit or statutory declaration produced by the opponent has been given full and proper weight, see Promat v Scriptoria and Marco-Chemie v Aldemar).
In a further case (Leopoldo Blume Schnitzer v Donau Verlag Kriener & Potthoff), the opponent was asked to show use of the trade mark Blume in Spain in relation to publication services in the five years up to 25 May 1999. Their evidence consisted of:
The Opposition Division decided that, in the absence of, for example, invoices and details of advertising expenditure, the opponent had not established the extent of use of Blume in Spain. As in the previous two cases, the Appeal Board disagreed. When the press notes were read in conjunction with the catalogues, all of the elements required to show use of Blume in relation to publication services were present.
The above appeals should be contrasted, however, with the Deutsche Telekom v BANIF appeal. In this latter case, the opponent had to prove use of the trade mark Privilege in respect of a credit card in Portugal in the five year period to 7 September 1998. The opponent filed:
The Board of Appeal in this instance accepted that the opponent had established the place, time and nature of use in Portugal. However, the extent of use of the trade mark Privilege had not been shown. In particular, details of the number of credit cards issued by the opponent in Portugal during the relevant period were missing. Further, the only document that might have illustrated the extent of sales had the amount erased. For these reasons, the opposition was rejected.
The first three appeals discussed above are further illustrations that, on the whole, the CTM Appeal Boards take a much more sensible approach to the question of proof of use in oppositions than their counterparts in the Opposition Divisions. It should always be perfectly acceptable for an employee of an opponent to file an affidavit (or similar) attesting to the place, time, extent and nature of use of the mark. If such an affidavit is accompanied by catalogues, product leaflets, advertisements and/or product packaging illustrating use of the mark, then this should be enough to satisfy the genuine use requirement. At the very least, it should establish a prima facie case and, if the Office requires any more evidence, they should ask for it.
It remains to be seen, of course, whether OHIM’s Opposition Divisions will take the general Appeal Board policy on board. Past experience suggests, however, that they will not. Unfortunately, it is much more likely that they will fasten onto the few, less enlightened appeal decisions, such as the Privilege appeal discussed above, and use these decisions to justify the maintenance of their present, inflexible approach. It is likely therefore that, at the Opposition Division level, the production of invoices bearing the mark together with the place, time and amount of sales will remain paramount and that employee affidavits will continue to be given essentially no weight. This is the gloomy, but realistic prognosis. A prognosis that is confirmed by reference to the opposition between Perfetti and Vivil A. Muller dated 19 November 2002, in which evidence of use and evidence of reputation produced in affidavit form executed by the Managing Director of the opponent was given little or no value in relation to both issues.
The Importance of Language When Comparing Marks
Both before the Appeal Boards and the Opposition Divisions at OHIM (see below), the importance of language when comparing trade marks should never be underestimated. The following three appeals illustrate the point.
In the first case (Acyco Aceitunas y Conservas v Azienda Agricola Annalisa di Lamanna), the marks involved were Annalisa & Device (CTM) and Alisa & Device (earlier Spanish right). In both cases, the goods were foodstuffs in classes 29 and 31. The Opposition Division rejected the opposition on the basis that the marks could be distinguished one from the other. The Appeal Board disagreed. In their view, the average Spanish consumer would not recognise either mark as a name but would see both as meaningless words. It followed from this that they would be taken to be visually and phonetically similar and that therefore confusion between the two marks was likely. Since the two sets of goods were also identical and/or similar, the opposition was well founded and the CTM application was rejected.
In the next application (Jean Pierre Koubi v Fabricas Lucia Antonio Betere) a CTM application for Conforflex in respect of bedroom furniture was opposed by the owner of Spanish trade mark registrations for Flex and Device covering identical goods. Once again, the Opposition Division rejected the opposition, but the Appeal Board reversed the decision. In their view, the common presence of the word flex in both marks meant that they would be seen as conceptually very similar. This (conceptual) similarity would not be greatly affected by the presence of the element confor in the CTM mark since the average Spanish consumer would see this as referring to comfort which merely emphasised the idea of flex or flexibility. Since the strong conceptual similarities between the two marks outweighed the differences the opposition was allowed and the Appeal Board rejected the CTM application.
The final appeal (Krafft v Vitakraft-Werke Wührmann), featured a CTM application for Vitakraft covering a wide range of goods in classes 1, 3, 4, 12 and 19 and a Spanish opponent relying on Spanish trade mark registrations for various forms of the mark Krafft in Classes 1, 3, 4, 12 and 19. In this case, the Opposition Division found both the earlier and the CTM marks and goods to be similar and rejected the application. The Appeal Board agreed. In their view, a Spanish consumer would see the prefix Vita- as referring to Spanish words such as vitalidad (vitality) or vital (essential). By contrast, the word Kraft (or Krafft) would be meaningless in Spain. This meant that the Kraft (or Krafft) part of both marks was the dominant feature and this inevitably led to the conclusion that there was visual and phonetic similarity.
These appeals, together with the opposition decisions discussed below, show the difficulties that exist when marks have to be compared in up to eleven languages of the European Union. It is difficult to accept that, for example, any of the above sets of marks would have been found confusing if the comparison had been in English.
It is submitted that if the aim of the European authorities to create a common market, in which products are sold throughout the EU with a single mark, is not to be thwarted, OHIM will have to start taking a more commercially realistic view about what are and what are not confusing trade marks. If this does happen, then the already difficult job of finding an EU wide trade mark will become even harder.