A recent case before the General Court (Liz Earle Beauty v OHIM; T-307/09) has confirmed the special treatment applied to English language marks under CTM practice.
The CTM application at issue was for the mark Naturally Active in respect of goods and services in Classes 3, 5, 16, 18, 35 and 44. It was rejected by the CTM Examiner as non-distinctive in respect of all the goods and services claimed (Article 7(1)(b) CTMR).
On appeal, the Board of Appeal, in confirming the rejection, found that the sign was "a mere promotional indication of a laudatory nature". According to the Board, since the relevant public consisted of "European English-speakers including persons with only a rudimentary knowledge of English", the Article 7(1)(b) ground of refusal applied in all 27 EU countries.It followed that the evidence of acquired distinctiveness put forward by Liz Earle in Germany, Ireland and the UK did not quite match the Board's exacting standards.
Undaunted by the Board of Appeal's resounding rejection, the CTM applicant appealed further, this time to the European (General) Court. However, the Court again rejected the application in respect of most of the goods and services claimed, although they did overturn the Board's decision in relation to Class 18 goods.
When considering the parts of the EU in which an English language mark had to be distinctive (either inherently or through use), the General Court did not go quite as far as Board. They repeated their earlier finding in the New Look case (T-435/07) that such an English language sign must be distinctive, not only in Ireland and the UK, but also in Cyprus, the Nordic countries of the EU and the Netherlands, where English is widely spoken and understood, as well as in Malta whose official language is English. It followed that, although the Court seemed to lower the almost impossibly high bar set by the Board of Appeal, Liz Earle's evidence of acquired distinctiveness (in Germany, Ireland the UK) still did not overcome the non-distinctiveness objection.
A number of issues occur to the writer. First, is it not absurd to require the owner of a non-distinctive English language sign to prove acquired distinctiveness in Cyprus and Malta? Surely if the owner has established distinctiveness through use in Ireland the UK, a commercially sensible approach would be to say that they had proved their case in all of the parts of the EU where English is the mother tongue.
Second, although the ruling of the General Court appears to be somewhat more favourable to English language marks than that of the Board of Appeal, it is couched in such vague language that it leaves the way open for OHIM examiners and Boards of Appeal to continue to require proof of acquired distinctiveness of English language marks throughout the EU (that is in all 27 countries). This is an almost impossible standard to meet.
Third, English is not the only language that is widely spoken in the EU. According to official figures, about 14% of the EU population speak French and German as a second language to their mother tongue. When considering borderline French and German language marks, does OHIM require evidence of use for French signs in Belgium, Luxembourg and Italy and for German signs in Belgium, Czech Republic, Denmark, France, Hungary, Italy, Luxembourg, Poland and Romania? It is not clear from their Examination Guidelines, but one suspects not. If not, why not? Any other practice would appear to severely disadvantage English language marks at the expense of their French and German brethren.
Finally, given the problems faced by borderline distinctive (and non-distinctive) English language marks under CTM practice, the practical advice on how to protect such marks as CTMs must remain the same; file for a combination with a device element to obtain protection and then seek to enforce the combined mark against later CTM applications containing the same (borderline distinctive/non-distinctive) mark.
The CTM opposition between Novartis and Sanochemia Pharmazeutika, which recently reached the General Court (T-331/09), illustrates the disastrous path that both OHIM and the Court have gone down when considering Class 5 cases.
Sanochemia had filed a CTM application for the trade mark Tolposan in respect of (after amendment) "Muscle relaxant medicines containing tolperison; muscle relaxant veterinary preparations containing tolperison". The application was opposed by Novartis on the basis of an International trade mark right for Tonopan covering (after evidence of use) an analgesic for treating headaches and migraines. Novartis' trade mark right designated Austria and Spain.
The Opposition Division rejected the opposition on the basis that the two marks were not similar. Novartis appealed but the First Board of Appeal dismissed the appeal. According to the Board
- The relevant public (doctors, pharmacists and patients) exercised a higher degree of attention with pharmaceutical products than average consumers did with other goods and services;
- The goods at issue only had a slight degree of similarity; and
- The two signs had an average degree of visual and phonetic similarity and neither had a (conceptual) meaning.
Taking the above into account, the Board concluded that there was no likelihood of confusion.
Novartis weren't giving up that easily, so they appealed again, this time to the General Court. The Court, accepting all of the assumptions made by the Board of Appeal, confirmed the rejection of the opposition. According to the Court, when comparing two sets of pharmaceutical products for similarity, the therapeutic indications were of "decisive importance". In other words, were the products in competition with each other or complementary? Further, when assessing these issues, the fact that two medicines were (or could be) used simultaneously did not necessarily make them complementary. On this basis, the Court agreed with the Board that the two sets of goods were "at most slightly similar". When this finding was combined with the Court's ruling that the two signs only had an average degree of similarity, and would be compared by the relevant public with a heightened degree of attention, a decision that there was no likelihood of confusion became inevitable.
This is a poor decision based on flawed reasoning. First, in the writer's view, the two marks Tonopan and Tolposan are similar, both visually and phonetically. In fact, the only real way to tell them apart is to remember that Tolposan (first four letters Tolp-) contains tolperison (first four letters tolp-), that is on a conceptual basis. According to the Court, no conceptual comparison could be made. Second, muscle relaxants are in fact often used to treat certain types of headache, in particular tension headaches, so they are certainly complementary to analgesics and may even be in competition with such products. The worst part of the Court's reasoning, however, is the general assumption that, if two medicines are for the treatment of entirely different indications, that should be a major factor in deciding, on a global assessment, that there will be no likelihood of confusion. Such an assumption completely ignores the potentially disastrous outcome of a medication error. The safety of the public it seems is not to be included as part of the global assessment.
Let me give a theoretical example to illustrate the dangers associated with such assumptions. A company A sells a Tonopan antibiotic for use in the treatment of elderly patients. A company B seeks to register and use a Tolposan surfactant for use in the treatment of prematurely born infants. Both products are used exclusively in the hospital environment on a doctor's prescription. Is it difficult to imagine a mistake being made and the catastrophic outcome of such an error? Yet, according to the Court's view, it would be perfectly acceptable for these two products to be on the CTM register and, by inference, on the EU market. If, by contrast, the products at issue were sweets or alcoholic beverages, it is submitted that OHIM and/or the Court would, quite probably, find a likelihood of confusion between the two marks (Tolposan and Tonopan) and the two sets of goods.
What is trade mark law for? In the writer's view, it is a public interest law governing one area of commerce, the first aim of which should be to allow the relevant public to differentiate clearly between the different products sold by different entities in an increasingly crowded market. When the products in question are poisons (medicines) and the outcome of confusion between them potentially lethal, then, in the writer's view, it is an entirely unrealistic position to ignore those facts when making a global assessment of the situation.
Trade mark practice in the Class 5 area needs a radical overhaul so that the potential confusion of two medicines is no longer treated as less likely than, as well as less important than, the potential confusion between two types of beer or confectionery.
Two recent General Court decisions illustrate the different ways in which marks are compared under OHIM practice depending on the nature of the goods claimed.
In the first case, Vidieffe v Perry Ellis International (T-169/09), the Italian company Vidieffe applied to register the word mark Gotha as a CTM in Classes 18 and 25. The CTM application was opposed by Perry Ellis on the basis of their earlier CTM registration for gotcha and a rose device covering, amongst other goods, identical or very similar goods (in Classes 18 and 25).
The Opposition Division dismissed the opposition on the ground that the two marks were visually, phonetically and conceptually different. The Board of Appeal partially reversed this decision in relation to the identical and similar goods. In the Board's view, the strong degree of phonetic similarity between the two marks would lead to a likelihood of confusion in spite of the clear visual differences between them.
Vidieffe appealed to the General Court who reinstated the Opposition Division's original decision and rejected the opposition. According to the Court, the weight given to the visual and the phonetic comparison of marks should be determined by the way the goods at issue were sold in the EU market. When clothes were purchased, as well as footwear and accessories such as those in Class 18, the consumer relied overwhelmingly on the visual impression made by the mark. That being the case, a figurative element in a mark, such as a rose, could have as much impact on the consumer as a word. Bearing the above in mind, the Court concluded that the average EU consumer of clothing and related (Class 18 and 25) products would be able to differentiate the trade mark Gotha from the combined gotcha and rose device mark.
Contrast that decision, with the outcome of the opposition between Codorniu Napa and Bodegas Ontanon (T-35/08) where the goods at issue were "Wines produced and bottled in Napa Valley" in Class 33.
The CTM mark applied for was a wine label featuring the word Artesa, the phrase Napa Valley and a flame device. This was opposed by Bodegas Ontanon on the basis of an earlier CTM registration for a combination of the word Arteso and a centaur figure carrying a rider both of whom are holding a staff bearing amphorae.
The opposition was upheld by both the Opposition Division and the Board of Appeal. Codorniu appealed to the General Court. The Court conducted its usual analysis of the visual, phonetic and conceptual similarities of the two marks. As far as the visual comparison was concerned, the Court disagreed with the findings of the Board and decided that the figurative elements, rather than the two words, played a dominant part and that, as a result, there was only a slight degree of visual similarity between the marks.
Turning to the phonetic comparison, the Court decided that the presence of the phrase Napa Valley in the CTM applied for was insufficient to avoid a finding of a strong phonetic similarity.
Finally, in relation to the meaning of the two marks the Court concluded that consumers would not note any particular semantic connotation. The argument that the relevant public might think of a centaur bearing a rider and amphorae when considering the opponent's mark was dismissed on the ground that such a device "alludes to the mythological origins of wine and therefore refers to wine and its production". Accordingly, in the Court's opinion, the sign would evoke wine but not in a manner that would establish a conceptual difference between the two signs. (This is the type of Delphic utterance that adds so much gaiety to the judgments of the European Court).
Whatever you might think of such reasoning, it was important because it allowed the Court to conduct its overall assessment of the likelihood of confusion by reference only to the visual and phonetic impact of the two marks. They concluded that in the wine sector, unlike the non-alcoholic beverage area, "consumers usually describe and recognise wine by reference to the verbal element that identifies it, in particular in bars and restaurants, in which wines are ordered orally after their names have been seen on a wine list". This allowed the Court to attach "a particular importance to the phonetic similarity between the signs" and to find a likelihood of confusion. They consequently rejected the CTM application.
Is there really such a difference in the way clothes, soft drinks and wines are bought? Wine, in the UK at least, is bought predominantly in supermarkets and other stores for consumption at home (about 80% of the UK wine market in 2009). The choice will therefore more often than not be made visually. Further, even the wine that is bought in bars and restaurants from a wine list will be chosen by reference to the country of origin, in the above case by reference to Spain (Arteso wine is a Rioja) or the US (Napa Valley). So, once again, it will, almost certainly, be a visual choice. The writer accepts that the two word marks Artesa and Arteso are close, although the nature of the wine market, and the marked differences between their two labels (visually and conceptually), suggest that the two wines could in fact happily coexist. However, it is not accepted that there is such a significant difference, in making purchasing decisions, between different commercial sectors as is being assumed by the General Court. Modern consumer activity is predominantly (and increasingly) a visual experience. It should only be in unusual cases, and on the back of clear evidence, that the phonetic comparison of two marks is given greater weight than the much more powerful visual and conceptual comparisons.
Smartwings is a Czech airline that operates various routes throughout Europe and has done so for six years. Eurowings is a German airline that also offers services throughout Europe, including to the Czech Republic, having been established in 1993. Smartwings' parent company, Travel Service AS applied to register a stylised version of the airline's name at OHIM for a variety of goods and services including "air transport services" in Class 39. This CTM application was opposed by Eurowings on the basis of inter alia their earlier German trade mark rights in EuroWings (stylised) also covering Class 39 services.
The CTM applicant argued that the word Wings had little or no distinctive character in respect of aviation based services. Both the Opposition Division and the Board of Appeal, in finding a likelihood of confusion and rejecting the CTM application for Class 39 services, found that, even if Wings did have a weak distinctive character, this did not rule out the possibility of a likelihood of confusion. In fact, the common presence of the word Wings in both marks was decisive. Travel Service appealed to the General Court. The Court noted that the word Wings was written in a larger font than the word smart in the CTM applied for. They also ruled that the word Euro in the opponent's mark was devoid of distinctive character. By contrast, they were less dogmatic about the lack of distinctiveness of the word Wings. According to the Court (at paragraph 45), "...the possibly weak distinctive character of an element of a complex mark does not necessarily imply that that element cannot constitute a dominant element since - because, in particular, of its position in the sign - it may make an impression on consumers and be remembered by them...".
Given the identity of the two sets of Class 39 services, the Court therefore confirmed the rejection of the CTM application. The fact that the relevant public would display a higher than normal level of attention when choosing their flights (and the airline providing those flights) was deemed insufficient to rule out the possibility that they might believe that the SmartWings services had the same commercial origin as the EuroWings services.
Given the continued operation of the SmartWings airline, as well as other European airlines such as SpeedWings and, until recently, Blue Wings, as well as air travel based services such as Premiumwings, it is to be hoped that this General Court decision was made purely because of the highly stylised nature of the smartWings mark in which the word Wings dominated. Interestingly enough, a later CTM application filed by Travel Services for smartwings written in a single font, again in Class 39, was unsuccessfully opposed by Eurowings (Opposition No. B1229469). In that case however, the opponent failed to provide any proof of use of its EuroWings mark and the Opposition Division decided that the mark applied for smartwings and a second earlier mark Wingsclass owned by Eurowings were not confusingly similar.
In an unremarkable decision of the General Court (MichalaKopoulou Ktimatiki Touristiki v Free SAS; T-365/09), a CTM application for Free covering printed publications was refused on the basis of an opposition based on a French trade mark registration for a figurative mark for free La Liberté N'a Pas De Prix & Device protecting inter alia newspaper subscription and electronic mail services.
One aspect of this case is remarkable, however. What possessed OHIM's Examination Division to accept Free as inherently distinctive for printed publications when a Google search of UK websites for "free newspaper" produces one and a half million hits?
The distinctiveness of a sign under the CTM system is judged by reference to all of the official languages of the European Union. So if an application is made for the Greek word for colour (xpώμα), it would be rejected as non-distinctive for most goods or services.
What would happen however if the CTM application were for a transliteration of the Greek word for colour, namely Chroma? As so often with OHIM practice, the answer is, it depends.
In the case of Deutsche Steinzeug Cremer & Breuer's CTM application for Chroma in respect of ceramic bathroom products (Class 11) and building materials (Class 19), the Examiner raised objections under Article 7(1)(b) (non-distinctiveness) and 7(1)(c) (descriptiveness) of the CTM Regulation. The objections were maintained on appeal.
Given that there were a number of Greek national trade mark registrations for Chroma, it was perhaps not surprising that the CTM applicant appealed further to the General Court.
The Court dismissed the appeal and maintained the Article 7 objections. According to the Court, "transliterations into Latin characters of Greek words must be treated in the same way (for examination purposes) as words written in Greek". Further, in the present case, the meaning of the Chroma transliteration would be immediately and directly understood by the relevant Cypriot or Greek consumer. The mark would be seen by such consumers as meaning that the products concerned were presented in a range of colours.
As in the vast majority of earlier cases, where evidence of relevant earlier EU national trade mark registrations was presented, the Court ruled that the existence of earlier Greek trade mark registrations for Chroma was not a decisive factor. In fact, given the Court's decision, it was completely ignored It will come as no surprise to regular Make Your Mark. readers that the trade mark Chroma is already registered by OHIM for goods and services in Classes 8, 9, 21, 25 and 42. The mark Chroma TV is also registered for services in Class 38, 40 and 41, including various broadcasting services.
Whilst OHIM has refused to register the Roman transliteration of the Greek word for colour (Chroma), it appears to have no difficulty whatsoever accepting the inherent distinctiveness of the word Red for beverages in Classes 32 and 33. This has led to a battle royal developing between three well-known drinks manufacturers over the ownership of CTM rights that protect this word.
It all started in May 1999 when Red Bull filed a CTM application for Red in Classes 32 and 33. The specification included beers, fruit juices and alcoholic beverages. The application was accepted as inherently distinctive by the CTM examiner for all the goods claimed. After overcoming 5 oppositions, this CTM was eventually granted in 2005. Five years later, an individual Mr. Benito Miranbell applied to cancel this CTM registration on the grounds that the word Red was non-distinctive and descriptive of Class 32 and 33 goods. In his application to cancel, Mr. Miranbell did mention the existence of red wine, but he failed to mention redcurrant juice, red grape juice, red grapefruit juice, red ale and red beer (amongst many others). This cancellation action is pending.
A few days before their CTM registration for Red (Classes 32 and 33) became vulnerable to revocation on the ground of non-use, Red Bull filed a further CTM application for the word Red, this time only in Class 32. Even though this second application also covered beers and fruit juices it was accepted as inherently distinctive and published for opposition two months after filing. It was opposed by two companies, Britvic Soft Drinks and (after assignment) Halewood International, who also have a keen interest in the word Red. Britvic sells a Red Devil energy drink, whilst Halewood sells a Red Alert energy drink (as well as a Red Square vodka). Both of these energy drinks clearly compete with the Red Bull equivalent.
Britvic's opposition to Red Bull's second CTM application (for Red) was in response to Red Bull's opposition to Britvic's CTM application for, you've guessed it, Red which also claimed Class 32 goods. This application was also accepted by OHIM without any evidence of use. Halewood International has joined Red Bull in opposing it.
Finally, and a little belatedly, Halewood joined the fray, by filing (via their subsidiary, Red Square Beverages) their own CTM application for Red in Class 33 covering inter alia alcoholic beverages and wines. Rather strangely, this application remains pending after 7 months, with no sign of it being accepted. It couldn't possibly be that this (fourth) CTM application for Red is being examined by a CTM examiner who has heard not only of the existence of red wine, but also numerous red (coloured) cocktails and red vodka?
If anyone can explain the acceptance of any of these CTM applications by OHIM to the writer, he would be most grateful. If someone could also explain the runaway success of energy drinks such as Red Bull, Red Devil and Red Alert, he might try one in his cocoa prior to retiring to bed.
In the Autumn 2009 edition of Make Your Mark, we reported a case (Borco-Marken-Import v OHIM; C-265/09) in which the European Court ruled that it was incorrect, as a matter of practice, simply to rule that a single Greek letter (α) was inherently non-distinctive.
This rather surprising liberalisation of OHIM's letter trade mark practice has now been extended to single Roman letters. The US hotel chain, Starwood Hotels, had applied to register a (slightly stylised) letter W for services in Classes 39 and 43 including transport services, the provision of food and drink and temporary accommodation. Following OHIM's long established practice on (non-stylised) single letters, the examiner objected to the mark as non-distinctive (Article 7(1)(b) CTMR). Starwood appealed against the examiner's objection.
The Second Board of Appeal, in reversing the examiner's refusal and allowing the CTM application to proceed, ruled as follows:
The examination of trade marks by OHIM should not be carried out in the abstract. In other words, the Office should not rely on a practice which simply rejected certain types of marks, in this case single Roman letters, as non-distinctive. In particular, the examiner could not simply argue that single Roman letters should generally be kept available for use by all traders. The Office had to give specific reasons for such a rejection taking into account the nature of the goods or services claimed.
The examiner had provided no evidence that the letter W had any meaning in relation to the services claimed, for example that it was a characteristic of or a generic name for the services claimed.
The examiner's assumption that, in the absence of sufficient stylisation, a single Roman letter, by definition, lacked distinctive character, was a misapplication of Article 7(1)(b) of the CTM Regulation.
This is a surprising decision which places quite a burden on OHIM to prove that single Roman letters are non-distinctive or descriptive of the goods or services claimed. If this change of practice is more widely introduced by the Office (unlikely unless the European Court confirms this practice), then it is sincerely to be hoped that the owners of such marks will have extremely limited infringement rights. One assumes, for example, that Starwood Hotels will not be able to enforce its CTM rights in the (slightly stylised) letter W against the Best Western chain of hotels.
A recent CTM opposition decided by the General Court (Icebreaker v Gilmar; T-112/09) shows what EU practitioners are up against when trying to clear a mark for registration and use in the EU, as well as when seeking to predict the outcome of CTM oppositions.
The CTM applicant, a New Zealand clothing company, applied to register the trade mark Icebreaker for goods in Classes 9, 24 & 25. The CTM application was opposed by the Italian fashion company, Gilmar SpA, based on their earlier Italian trade mark registrations for the marks Ice and Iceberg in Class 25.
Both the Opposition Division and the Fourth Board of Appeal upheld the opposition. The key finding being that the two marks had a considerable degree of visual similarity, although it was accepted by contrast, that the two marks had a low degree of phonetic similarity.
The New Zealand CTM applicant appealed to the European (General) Court. The General Court upheld the rejection of the CTM application for Icebreaker. The Court concurred with the earlier findings on visual and phonetic similarity. As far as the conceptual comparison of the marks was concerned, the Court decided first that only part of the relevant Italian public was able to understand English and second that, although some Italians would understand the meaning of the word iceberg, very few would understand icebreaker. It followed, according to the Court, that the conceptual comparison of the marks was not decisive.
Given the established practice before the Court and OHIM that visual comparisons are the most important for Class 25 goods, see the Gotha/gotcha case discussed elsewhere in Snippets, a finding of a likelihood of confusion became inevitable.
So, now we know, a 7 letter, two syllable word ending -berg has a considerable visual similarity with a 10 letter, three syllable word ending -breaker. By contrast, the trade mark Gotha can be differentiated from the word mark gotcha because it is combined with a rose device. It can immediately be seen that the clearance of marks for registration and use in the EU, as well as the prediction of the likely outcome of CTM oppositions, has become, in many cases, a virtually impossible task. The inconsistencies in decision making, as well as the complete disregard of the sophistication of the modern consumer, by both the Court and by OHIM, has made the process a lottery. As far as the Icebreaker/Iceberg case is concerned, how can two word marks, both of which are pronounced in a perfectly normal manner, be phonetically dissimilar, yet have a considerable visual similarity? The answer is, of course, that they can't. Either they are both visually and phonetically similar or they are visually and phonetically different. There are 20 CTM registrations in Class 25 that begin with the word Ice. Only 2 of these are owned by Gilmar. Of these CTM marks, the following are in use on the EU market ICE SUMMER, ICELANDER, ICECUBE, ICEMAN, ICEBUG and ICEPORT. Clearly Ice is a word of limited distinctiveness in respect of clothing and similar. If I were Icebreaker, I would file another CTM application for my mark, in combination with my distinctive logo, and armed with the position in the EU market, I would hope for a more sensible, and commercially realistic, decision second time around. Having said that, if I were Icebreaker's trade mark advisor, I would certainly not guarantee success, even in the light of the reality of the market.
The virtual impossibility of registering colours or colour combination marks under OHIM practice has been confirmed in a series of recent decisions of the European (General) Court. The first case (CNH Global v OHIM; T-378/07) involved a CTM application (no. 3944139) to register the red, black and grey colour combination of tractors. The CTM application had been rejected as inherently non-distinctive by both the Examiner and the Board of Appeal. This decision was accepted by CNH Global on further appeal to the General Court. The argument before the Court therefore centred upon CNH Global's evidence of acquired distinctiveness.
This evidence of use consisted of the following:
Evidence of significant sales and advertising of tractors bearing the colour get-up in Western Europe, together with evidence of lower sales and advertising in Eastern Europe. The applicant argued that these lower sales (in Eastern Europe) was explained by the size of the market for tractors in those countries;
Claims to a large market share of the tractor market in the EU;
Affidavits from independent third parties in Belgium and the UK attesting to the distinctiveness of CNH tractor's colour get-up.
It was not enough to convince the Court to allow the CTM application. In a decision that puts another nail in the protection of colour marks' coffin the Court ruled as follows:
The relevant public was farmers throughout (that is, in all 25 countries) of the EU. (At the CTM filing date there were 25 Member States).
CNH had not shown any evidence of significant sales in Eastern European Member States.
The evidence of sales and advertising in Western Europe was not on its own enough to prove acquired distinctiveness in those (Western European) countries.
Affidavits, attesting to the distinctiveness of CNH's colour combination, from expert representatives of professional organisations in Belgium and the UK could not be extrapolated to the remainder of the EU.
The inconsistencies between the CTM applicant's market share evidence and the rest of their evidence meant that the market share data had little evidential value.
The fact that, in an earlier case (Pago; C-301/07), the Court had found that a trade mark's reputation in only Austria was adequate to establish a reputation "in the Community" was not relevant to the issue of acquired distinctiveness in the EU.
It would seem, although as always the Court has not made this absolutely clear, that, in order to register a colour (or colour combination) mark before OHIM, it will be necessary to file evidence of significant sales, market share and advertising of the mark in all 27 countries of the EU and to combine this with either independent expert evidence from every EU country (even Cyprus, Luxembourg and Malta?) or survey evidence from the same countries. Only the most determined of applicants will be able, or willing, to meet this nearly impossible standard.
Given that it has become so difficult to register a colour mark (or colour combination) at OHIM on the back of use, it is essentially pointless to file a CTM application for a colour mark and to rely solely on arguments to overcome the Office's official objections. This has also been confirmed in four recent General Court decisions, in which CTM applications for colour and colour combination marks, but without any evidence of use, were all refused. The marks involved were
Deutsche Bahn's livery colours (for its ICE high speed trains) of light grey and traffic red for rail transport services (CTM 6733315 and 6735401; T-404/09 and T-405/09);
Kuka Roboter's application to register a shade of orange for robots (CTM4607801; T-97/08).
In this case, the Court relied, in part, on the colour dilution theory that monopolies in colour marks would unduly restrict the commercial activities of third parties. Such a position would seem to be at odds with the Board of Appeal's position in the Starwood Hotel's W case (see elsewhere in Snippets). At no point was any evidence produced in the Kuka case to show that the colour orange was a usual colour for robots, or indeed for any other electronic (or mechanical) devices;
Guhring's application for yellow/silver colour combinations for drilling tools (machine parts) (CTM 6703565 and 6703581; T-299/09 and T-300/09);and
Federation Internationale des Logis' application for the colour green for a wide range of goods and services in 14 classes (CTM 6468789; T-282/09).
Just prior to going to press, and contrary to all of the case law discussed overleaf the writer noted that CNH had recently obtained a CTM registration (no. 9045907) for their colour get-up mark for tractors without filing any evidence of acquired distinctiveness.
It has always been difficult to register colour marks at OHIM, although not as difficult as it has recently become. However, the tide also appears to be turning against some non-traditional trade marks that previously may have been accepted by OHIM.
One recent example is Hans-Peter Wilfer's CTM application (no. 2639821) for the 3D shape of a headstock of a five string guitar. This application was rejected as non-distinctive by the Examiner, the Appeal Board and the General Court in turn. The Court found that Mr Wilfer's headstock clearly brought to mind the simplest shape under which such a guitar headstock was likely to be represented (although they produced no evidence on which to base this finding). They then compared Mr Wilfer's shape with other headstock shapes (as provided in evidence by the CTM applicant) and concluded that his mark did not differ significantly enough from such shapes to be perceived as a badge of origin. A declaration from the editor of a guitar magazine, setting out the manner in which professional guitarists recognise different guitars based on the shape of their headstocks was dismissed as a professional opinion that did not deal with the attitudes of amateur guitarists.
Another recent example (Rosenruist v OHIM; T-388/09) concerned the stitching on the pocket of jeans (CTM 6900898). There was a time when such marks were almost always accepted as inherently distinctive by OHIM (see, for example, CTM 3651205 (C.S. Group), 112862 (Levi Strauss), 3461019 (Edwin Co) and 3504263 (Wrangler)).
However, in the light of the Rosenruist decision those days now seem to have passed. A graphical representation of the mark was accompanied by the following written description:
"Two Curves Crossed in One Point Design inserted in a Pocket; the mark consists of a decorative stitching made of Two Curves Crossed in One Point Design inserted in a Pocket; one of the curves is characterized by an arched form, drawn with a fine stroke, while the second one is characterized by a sinusoidal form, drawn with a thick stroke; the unevenly broken lines represent the perimeter of the pocket to which applicant makes no claim and which serves only to indicate the position of the mark on the pocket".
The mark, which was referred to by the authorities as a "position mark" was refused as non-distinctive (Article 7(1)(b) CTMR) by both the Examiner and the Board of Appeal. On further appeal to the General Court (T-388/09), the mark was again rejected. According to the Court,
The mark applied for would be seen as decoration rather than as an indication of origin. It did not have the necessary degree of originality to attract the relevant consumers' attention.
The Board of Appeal's finding that Rosenruist's mark would not "trigger a visual stimulus" which would allow consumers to identify the origin of the goods claimed did not mean that a higher standard of distinctiveness was being applied to this position mark compared with word marks.
The earlier registration of Rosenruist's mark by EU national trade mark offices and the earlier registration (by OHIM) of numerous such stitching marks was irrelevant.
The thought does occur to the writer that the Court's regular refusal to follow the precedent cases of both EU trade mark offices and OHIM is one major reason for the lack of consistency in EU trade mark practice in many important areas. In the writer's view, it doesn't really matter what practice is applied as long as it is consistently applied. It is the lack of consistency in the trade mark decision making process that brings the authorities (administrative and judicial) into disrepute.
It is now well established that the validity of Community Designs can be challenged, under Article 25 of the CD Regulation (Regulation 6/2002/EC), on the basis of earlier CTM registrations. A recent case before the General Court (Jose Manuel Baena Grupo v Herbert Neuman and Andoni Galdeano del Sel; T-513/09) illustrates the limits of such a challenge, however.
Baeno Grupo owned a Community Design (426895-0002) for a human-like cartoon figure (see the figure on the left below) which was to be applied as ornamentation to certain types of clothing and headgear, as well as stickers.
The owners of an earlier CTM registration (no. 1312651) for a very similar human-like cartoon figure (see the figure on the right below) applied to invalidate the Community Design under Article 25(1)(b) and Article 25(1)(e) of the CD Regulation.
OHIM's Cancellation Division found in favour of the applicant to invalidate under Article 25(1)(e). In the Division's view, the mark protected by the CTM was used in the subsequent CD and the use of the CD could therefore be prohibited by the CTM owner.
Baena Grupo appealed against this decision. The Board of Appeal dismissed the appeal but under Article 25(1)(b) rather than Article 25(1)(e) of the CD Regulation. In the Board's opinion, the CD did not make use of the earlier CTM. However, according to the Board, the overall impression made by the CD was not different to that of the CTM. The CD therefore lacked the necessary individual character to be valid. The CD owner appealed again, this time to the General Court. The Court annulled the Board's decision and rejected the invalidity action. In a detailed analysis of the two cartoon characters, that would have done justice to a spot the difference competition, the Court noted, in particular, that the facial expression of the CTM character, when combined with its forward leaning position, suggested anger. This feeling of anger was absent from the CD character. The Court concluded that the relevant informed user (young consumers of t-shirts, hats and stickers) would note the feelings associated with the different characters. On this basis, the two characters created a different overall impression on the informed user in spite of the numerous similarities between the two images and the high degree of freedom of the designer of the CD, which had been accepted by the Court.
In the writer's view, there is no doubt that, if the design protected by the CD in this case had instead been protected by a CTM, then an invalidity action brought against that CTM would have succeeded, given the overall similarity between the two characters. This General Court decision suggests that different rules apply in the area of designs and that an invalidity action brought on the basis of an earlier, conflicting right (registered design or registered trade mark) will be rather more difficult to sustain.
Although Baeno Grupo may have won this particular battle there may be a price to pay further on down the line however since they should expect that their infringement rights are now significantly narrower than they might have been if this invalidity action had never been brought.
In the UK trade mark opposition between Ms. Rupinder K. Grewal and Litt Corporation, the ownership of the goodwill of a radio presenter's pseudonym was at issue.
Ms. Grewal worked for a subsidiary of Litt Corporation, Sunrise Radio, as a radio presenter under the pseudonym Suzi Mann. The terms of her contract of employment only allowed the use of Suzi Mann by Ms. Grewal in situations that were not associated with Sunrise Radio with their (Sunrise Radio's) permission. In August 2004, Ms. Grewal ceased to be an employee of Sunrise Radio but, for a period, continued to work for them as a freelance presenter, still under the name Suzi Mann. Eventually Ms. Grewal was replaced by other presenters who, to begin with, operated under the Suzi (or perhaps Suzy) Mann name. After a time however, the Suzi (Suzy) Mann name was dropped and subsequent presenters appeared under their own names (or pseudonyms).
In August 2008, Ms. Grewal applied to register the trade mark Suzi Mann for a variety of goods and services in Classes 9, 16, 25, 35, 38 and 41 including broadcasting and entertainment services. Litt opposed this UK trade mark application on the basis of their prior unregistered trade mark rights in Suzy Mann (Section 5(4)(a) of the Trade Marks Act 1994).
On the facts before him, the hearing officer decided that the name Suzi Mann (or Suzy Mann) identified a particular performer (Ms. Grewal) at Sunrise Radio and that the name therefore distinguished Ms. Grewal's presentation services.
As far as the contract of employment between Sunrise Radio and Ms. Grewal was concerned, the hearing officer decided that it represented a partial restraint of the presenter's trade. Relying on an earlier case (Hepworth Manufacturing Company v Ryott; 1920 TLR 1 Ch. 1) in which an actor (Mr. Ryott) was able to continue to use his pseudonym, Stewart Rome, after leaving the employment of the film producers that had given him the name, the hearing officer decided that the part of Ms. Grewal's contract that purported to vest the goodwill in the name Suzi (Suzy) Mann with Litt was unlikely to be unenforceable. The fact that Sunrise Radio had dropped the Suzi (Suzy) Mann name after a brief attempt to retain it showed, according to the hearing officer, that this term in Ms. Grewal's contract was not objectively necessary or reasonable for the protection of her employer. It followed from this, in the hearing officer's view, that the goodwill in Suzi (Suzy) Mann belonged to Ms. Grewal rather than Sunrise Radio. Thus, Litt's opposition to Ms. Grewal's UK trade mark application, brought on the basis of their unregistered trade mark rights (in Suzy Mann), failed.
Under the opposition practice that is presently being applied by the UK Trade Mark Office, oppositions that are based on prior trade mark rights must be brought by the owners of those prior rights. Given that, if the hearing officer had found against Ms. Grewal on the employment contract point, Sunrise Radio would have owned the goodwill in Suzi (Suzy) Mann, the hearing officer went on to consider the outcome of the opposition if such a finding had been made. His decision was that, since Sunrise was not a party to the opposition proceedings, he would still have had to reject the opposition. This was because Litt alone was not entitled to prevent Ms. Grewal's use of Suzi (Suzy) Mann and therefore was not entitled to bring the opposition in its sole name under the present UK opposition rules.
Richard Branson's Virgin Group suffered a very rare defeat in a recent opposition brought before the UK Trade Mark Office (Michael Casey v Virgin Enterprises Ltd (VEL)).
Mr. Casey had applied to register the trade mark Carbon Virgin in the UK for a variety of Class 35 services, including "advertising services". The application was accepted with disclaimers to both "carbon" and "virgin" when used on their own.
VEL opposed on the basis of a variety of earlier trade mark rights and a variety of grounds. The principle grounds however were
Section 5(2)(b) of the 1994 Act (similarity of marks/identity or similarity of services/likelihood of confusion) based on a CTM registration for Virgin covering inter alia "advertising services relating to real property"; and
Section 5(3) of the 1994 Act (reputation/unfair advantage or detriment).
Mr. Casey argued that his proposed business would involve investing in and preserving virgin tropical forests. He argued that he therefore had due cause to use his mark.
The hearing officer first considered the Section 5(2)(b) ground of opposition. He accepted that there was identity of Mr. Casey's "advertising services" and VEL's more limited "advertising services relating to real property". Turning to a comparison of the two marks (Carbon Virgin and Virgin), the hearing officer first accepted that, in view of the common presence of the word Virgin, there was a reasonable level of visual and phonetic similarity between them. As far as the conceptual comparison was concerned however, the hearing officer was persuaded that the mark Carbon Virgin would be seen as similar to a phrase, such as "political virgin", meaning "a person who is naïve or inexperienced in a particular context". By contrast, the mark Virgin on its own would have a primary, sexual connotation. The hearing officer was therefore persuaded that there was no (or virtually no) conceptual similarity between the two marks. In view of this, and in spite of the high level of distinctive character of the trade mark Virgin that VEL had established through its evidence, the hearing officer found that there was no likelihood of confusion between the two marks and he therefore rejected the Section 5(2)(b) ground of opposition.
Turning to the Section 5(3) ground, the hearing officer accepted that VEL had a reputation in the trade mark Virgin in the UK for a wide range of services, including the retail of music, holiday services and airline services. He also accepted that, in a number of cases, marks incorporating the word Virgin might lead to the relevant consumer believing that there was a link with VEL. However, returning to his key finding, the hearing officer decided that, in the case of the trade mark Carbon Virgin, given the lack of conceptual similarity and the different impressions that would be created in the mind of the consumer, when confronted by Carbon Virgin and Virgin, that consumer would not make the necessary link required for Mr. Casey's mark to take unfair advantage of VEL's mark. That being the case the hearing officer also dismissed VEL's Section 5(3) ground of opposition and, in doing so, rejected VEL's opposition. This is a very rare breach of the trade mark walls that Mr. Branson has built around the trade mark Virgin. Of the 142 UK trade mark registrations for marks containing the word Virgin, 133 are owned by VEL. Of the remainder, 4 registrations protect virgin olive oil. In view of this position, it is extremely likely that a appeal will be filed against this decision.
Carnegie Mellon University was founded in the US city of Pittsburgh by the industrialist Andrew Carnegie in 1900. Originally created to give vocational training to the sons and daughters of the working class, it is now one of America's most successful and most prestigious educational establishments, with an international reputation. It has branches in numerous US cities, as well as in Asia, Europe and the Middle East.
Leeds Metropolitan University (LMU) is an academic institution in the North of England. Founded in 1824, as Leeds Mechanics Institute, it had had a large number of different guises before finally becoming a University in 1992. One well-known part of LMU is its Carnegie faculty which specialises in the areas of education, leisure and sport.In the early part of this century, LMU embarked on an unusual programme of partnerships with external bodies. In particular, it took a majority stake in Leeds rugby union club, which became known as Leeds Carnegie, and also sponsored the British rugby league's knock out competition, the Challenge Cup, which was restyled the Carnegie Challenge Cup.
In order to recognise the importance of the Carnegie faculty in LMU's activities, in 2008 the University petitioned the UK Government to be renamed Leeds Carnegie University. However, it is reported that a decision on that petition has been put on hold which may be just as well given the outcome of the UK opposition discussed below.
LMU applied to register the names Carnegie and Leeds Carnegie, in each case with a rose device. Both UK trade mark applications covered a wide range of goods and services in 23 classes including various education and training services in Class 41.
These two UK trade mark applications were opposed by Carnegie Mellon University on a number of grounds, though principally on the basis of their earlier CTM registration for Carnegie Mellon Software Engineering Institute and Device. This CTM covered a variety of goods and services in Classes 16, 35, 41 and 42.The hearing officer found that the common presence of the name Carnegie in the earlier mark and the marks applied for meant that they were either very similar (Carnegie & Device) or moderately similar (Leeds Carnegie & Device). Turning to a comparison of the goods and services, the hearing officer decided that nearly all of those opposed by Carnegie Mellon, and all of those opposed in Class 41, were either identical with or similar to those covered by their earlier CTM.
It followed, on a global assessment, that the oppositions succeeded in respect of nearly all the goods and services opposed in Classes 16, 35, 41 and 42.
Given the aggressive commercial attitudes of Leeds Metropolitan University (and its desire to rename itself Leeds Carnegie University), as well as the expansionist plans of Carnegie Mellon University, it should be expected that this dispute will continue for some time yet. Andrew Carnegie the industrialist would probably have been proud of both parties. Andrew Carnegie the philanthropist however might have taken a different view.
It is reported that, after a 9 year campaign, the Cornish Pasty Association has finally persuaded the EU authorities to give Cornish pasties Protected Geographical Indication (PGI) status. From now on, if a pasty is to be designated Cornish, it must have the characteristic D shape and crimping, it must contain substantial quantities of beef, which may, somewhat controversially, be mince beef, as well as onion, potatoes and suede, and it must be made in Cornwall.
This ruling has caused consternation in the neighbouring county of Devon, where pasties, using the traditional Cornish recipe, have also been made for centuries. One major British baker, Greggs, is already running a Facebook campaign for a new name. One suggestion, Cornish pastiche, appears to accurately reflect the position Greggs now finds itself in.
Cornish Pasty therefore joins Melton Mowbray Pork Pie and Scotch Beef as a protected British term. To date, the UK has 79 Protected Designations of Origin (PDOs) and PGIs for foodstuffs and alcoholic drinks. We can only stand back and admire the efforts of our French agricultural counterparts however who have protected their food and drink producers much more effectively with 793 PDOs and PGIs. But then, the protection of French agriculture, which owns over a quarter of all the European Union's PDOs and PGIs was the raison d'etre of these provisions in the first place.
In the case of Villa Almé Azienda v Marques de Murrieta (T-546/08) the use of a registered trade mark as part of a complex label was viewed as adequate to sustain the earlier Spanish trade mark right relied on by the opponent.
Villa Almé applied to register the trade mark i GAI for goods in Class 33. The opponent relied on a number of earlier Spanish trade mark registrations but in particular a registration protecting the trade mark Ygay for wines. This Spanish right was outside its 5 year grace period at the date of publication of the opposed CTM application, so Villa Almé put Marques de Murrieta to proof of use of its trade mark Ygay in Spain. The opponent relied on its sales of a Rioja wine that bore a label that contained the phrase Castillo Ygay, the house mark Bodegas Marques de Murrieta and a number of pictorial elements. The Opposition Division, the Appeal Board and the General Court in turn agreed that there was no rule forcing the opponent to prove use of an earlier mark separately and independently from any other brand. It was said to be often the case in the wine sector that two or more brands were used together. It followed that the use shown of the trade mark Ygay on the Rioja label sustained the earlier Spanish trade mark registration.
Turning to the comparison of the marks, (i GAI and Ygay), these were found to be visually similar and phonetically virtually identical. Given the identity of the two sets of goods, the Court confirmed the earlier findings of the Opposition Division and the Appeal Board that there was a likelihood of confusion. They therefore upheld the opposition and refused the CTM application.